What other enforcement options are available in your jurisdiction for each of the intellectual property rights described in section A? For example, civil court proceedings, intellectual property office proceedings, administrative proceedings, alternative dispute resolution.

Intellectual Property (3rd edition)

Malaysia Small Flag Malaysia

Civil proceedings: Possible reliefs include injunctions, damages, search and seizure orders, account of profits and statutory damages (patents, utility innovation, trade marks, geographical indication, copyright, industrial design).

Norway Small Flag Norway

Civil court proceedings, preliminary injunctions (PI) and alternative dispute resolution are available for infringement of any intellectual property rights, although alternative dispute resolution is not a common way of settling an intellectual property case.

Singapore Small Flag Singapore

Civil court proceedings for infringement are available for all intellectual property rights. The appropriate forum depends, primarily, on the type of IPR rather than the value of the claim. Trade mark, patent, and registered design claims are properly commenced in the High Court. Copyright and passing off claims are properly commenced in the State Courts, unless their value exceeds SGD 250,000.

All pre-registration and pre-grant proceedings are heard by IPOS. IPOS may also adjudicate revocation and invalidation disputes for trade marks and patent and design revocation proceedings.

Alternative dispute resolution mechanisms are promoted by both IPOS and the Courts. WIPO operates its own Arbitration and Mediation Center in Singapore to provide mediation in respect of trade mark, patent, and registered design disputes as well as expert determination for patent proceedings.

Mexico Small Flag Mexico

IP right

Other enforcement

Inventions

 

·       Mexican PTO proceedings: cancellation, infringement and invalidation actions.

 

·       Alternative Dispute Resolutions, namely, arbitration.

Brands

Copyright

·       Civil Courts proceedings: compensation for damages derived from infringement.

 

·       Copyrights Office proceedings: invalidation and infringement actions. 

 

·       Mexican PTO proceedings: trade-related copyright infringements and preliminary injunctions or preventative measures.

 

·       Alternative Dispute Resolution, namely, arbitration and conciliation.

China Small Flag China

Civil court proceedings, administrative proceedings, customs seizure actions, meditation, tort complaint.

Ecuador Small Flag Ecuador

The other enforcement options available in our jurisdiction are: border measures, precautionary actions, administrative tutelage actions, lawsuits, intellectual property office proceedings, administrative proceedings and alternative dispute resolutions either before administrative entities or judicial courts.

South Africa Small Flag South Africa

For Patents civil claims are available and all litigation must take place in the Court of the Commissioner of Patents (which is situated in Pretoria). For all other intellectual property rights civil actions are available and can be instituted in any High Court with jurisdiction based on persons or the matter.

Cyprus Small Flag Cyprus

Any decision issued by the Registrar regarding any proceedings before it (registration, opposition, revocation, expungement, revocation, reinstatement) is an administrative decision which may be appealed against with a recourse filed in the Administrative Court. There is a strict 75-days timeframe during which a recourse must be filed.

A patent owner may file a civil action in the district court for patent infringement (past or on-going) seeking damages and/ or for the issuance of an injunction. In case of a finding of patent infringement, a court may order the infringer to refrain from repeating the offence and in case of default, the court may impose a monetary penalty not over 85,500 EUR or a prison sentence up to 3 years, or to both of these sentences.

Α copyright owner may file a civil law suit for copyright infringement and in case of a judgement in its favor, the court may order the infringer to refrain from repeating the offence in the future. In case of default, the court may impose a monetary penalty of up to 85,500 EUR or imprisonment not exceeding 3 years or to a combined sentence.

A trade mark owner may seek a declaratory judgement which would confirm the validity of the registration of the trade mark. Further, a trade mark owner may file a civil law suit for trade mark infringement and in case of a judgement in its favor, the court may order the infringer to refrain from repeating the offence in the future. In case of default, the court may impose a monetary penalty of up to 85,500 EUR or imprisonment not exceeding 3 years or to a combined sentence.

Moreover, a trade mark owner may file a passing off action (based on tort law) in a civil court.

In addition to the above, right holders may also resort to court to obtain disclosure orders, freezing orders, search orders in accordance with specific rights provided in the respective IP laws.

Japan Small Flag Japan

Infringement litigation (civil litigation) is a popular means of enforcing intellectual property rights. Neither intellectual property office proceedings nor administrative proceedings are available as a means for enforcing intellectual property rights. Alternative dispute resolution is also available, but is not a popular option.

As for border enforcement by customs, see the answer to #22.

Switzerland Small Flag Switzerland

IP rights holders can enforce their rights through civil or administrative actions (e.g. expedited trademark cancellation proceedings or opposition proceedings), or with the assistance of custom authorities who can seize infringing goods for a limited period of time so that that the right holder can obtain a preliminary injunction or conclude a settlement with the importer, respectively the exporter.

Since 1st January 2017, the cancellation of a trademark on the grounds of non-use can be requested through simplified/expedited administrative cancellation proceedings before the IPI.

Preliminary injunctions are available and can be filed prior or simultaneously with a claim on the merits. In case of special urgency, the Court may order ex parte preliminary injunctions, i.e. immediately without first hearing the opposing party.

Brazil Small Flag Brazil

  • Regular civil court infringement action, non-infringement declaratory action, non- cancelation/nullity declaratory action and cancellation/nullity actions
  • Preliminary injunctions
  • Writ of mandamus against the administrative decisions of BPTO/SNPC
  • Produce of evidence action
  • Proceedings before the BPTO/SNPC (including opposition and administrative nullity)
  • Alternative dispute resolution such as mediation and arbitration procedures

United Kingdom Small Flag United Kingdom

Civil court proceedings

In the UK, IP rights are most commonly enforced through civil court proceedings.

The UK has three jurisdictions: England and Wales, Scotland, and Northern Ireland. Each has its own legal system and procedures, the UK Supreme Court being the final court of appeal for all in civil cases. The overwhelming majority of IP litigation in the UK takes place in the courts of England and Wales.

The Chancery division of the High Court (now a part of the 'Business and Property Courts') is the appropriate forum for more complex and valuable IP claims of all types. Within this division, the Patents Court has jurisdiction in respect of disputes regarding patents, SPCs, registered designs, plant variety rights and semiconductor topography rights. Disputes concerning other types of intellectual property are managed in the Intellectual Property List. In the Chancery Division there is no cap on recoverable damages or costs.

For less complex and smaller value IP claims, the Intellectual Property Enterprise Court (IPEC) (also within the Chancery Division) offers a more streamlined litigation procedure, with caps on monetary compensation (£500,000) and recoverable costs (£50,000 for the liability stage and £25,000 for the quantum stage). The IPEC has jurisdiction to hear disputes regarding all types of intellectual property right and takes its jurisdiction (including in respect of the types of relief that it can award) from that of the High Court.

The IPEC also has a "small claims" track, with more limited damages (£10,000) and costs caps, in which low value disputes regarding copyright, trade mark, passing off and unregistered design right may be heard.

In addition, some County Courts with a Chancery District Registry, have jurisdiction in respect of low value intellectual property disputes (but not in respect of the types of right for which the Patents Court has jurisdiction).

UKIPO

While the UKIPO is not a court, it has some (limited) jurisdiction to hear disputes in respect of UK patents, UK registered design rights and UK registered trade marks, most notably in respect of validity and entitlement. The UKIPO is also able to provide non-binding opinions, including in respect of infringement, in some circumstances. However as the UKIPO's power to award relief is limited, it plays a very limited role in enforcement of intellectual property rights.

Alternative Dispute Resolution

Alternative dispute resolution requires the voluntary engagement of both parties (unless the parties have entered a contract which obliges them to use ADR). It is encouraged by the Civil Procedure Rules.

The most common types of ADR are:

  • Arbitration, which is similar to civil court proceedings, but the proceedings are conducted in private before a tribunal, rather than before a public court. The judgment of the arbitral tribunal is binding on the parties and can be kept confidential.
  • Expert determination, which is conducted in private and involves an expert considering and assessing submissions made by the parties. The process is more flexible than arbitration and usually much less expensive. The decision of the expert is binding.
  • Mediation, which is essentially a private commercial negotiation facilitated by a trained mediator. The parties are encouraged to find a commercial solution to the dispute, but the mediator does not give a decision and the process is not binding, so if the parties are unable to agree, the dispute will continue.



Threats

In the UK, the legislation governing patents (UK and European (UK)), trade marks (UK and EU), and designs (registered and unregistered, UK and Community) prohibits the making of an unjustified threat of infringement proceedings in respect of an act done, or proposed to be done, in the UK. IP right owners should ensure that steps taken to enforce their rights are compliant with the threats provision, and of course UK law more generally.

Israel Small Flag Israel

Customs and police enforcement is available for trademarks, registered designs and copyrights. All other enforcement is performed through litigation before civil (district and magistrate) courts.

Germany Small Flag Germany

  • Regular civil court infringement, non-infringement and cancellation proceedings
  • Preliminary injunctions
  • Proceedings before the German Patents and Trademarks Office (including opposition and cancellation)
  • Alternative dispute resolution

France Small Flag France

Other options available in French jurisdictions for IPRs enforcement are:

  • Civil court proceedings : Infringement action;
    It should be noted that, the Bill of law PACTE has specified the limitation period of five years to initiate action starts, not from the day the infringement occurred, but from the day on which the right holder knew or should have known the act of infringement; Invalidity action for patents, trademarks, designs and plant varieties certificates;

Pursuant to the Bill of law PACTE, the nullity action will no longer be subject to a limitation period.

Declaration of non-infringement for patents (see question 30).

  • Administrative proceedings:

Trademark opposition proceedings. Opposition decisions can be appealed before Paris Court of Appeal within one month of the notification of the decision of the INPI (Article R.411-20 of the IPC);

Regarding trademark revocation or invalidation proceedings, pursuant to article 45 of the Directive 2015/2436, proceedings will no longer be the exclusive competence of French Courts.

By January 2023, Member States shall provide for an efficient and expeditious administrative procedure before their offices for invalidation or revocation of a trademark.

Regarding patent, pursuant to the Bill of law PACTE, opposition proceedings before the French Office should be introduced.

Italy Small Flag Italy

Under Italian Law the IP owner may react through civil, administrative remedies against the violation of its IP rights.

As for civil court proceedings see answer to question n.19.

As for administrative proceedings, Article 127 (2) IPC punishes with a fine the conduct of anyone who uses untrue words or indications on products that make people believe that there is an IP right. Moreover, unless the facts constitute a criminal offence and even if the fact does not harm third parties, Article 127 (3) IPC also punishes with a fine the conduct of anyone who deletes the trademark of the manufacturers and traders from whom he/she received the goods or uses a registered trademark declared invalid because it is contrary to public order or morality.

With specific regard to copyright, the general rule is set out in Article 174 bis ICL, which states that, without prejudice to the criminal sanctions, every copyright infringement may also be punished by means of a fine, the amount of which is double the price of the copyrighted work and is applied for every and each violation ascertained or for each counterfeit product made. This administrative sanction can be applied together with the criminal sanction at the end of the criminal proceeding. Another provision is set out in Article 174 ter ICL that shall apply residually, only if the conduct cannot be qualified as a crime. Under this rule, a third party who uses, duplicates or reproduces copyrighted works without the consent of the copyright-holder is to be punished with a fine, the seizure of the copyrighted materials and also through the publication of the administrative sanction in one or more journals. This measure, in contrast to the previous one, can be applied only if the infringement does not qualify as a crime. Finally, under Article 171 (4) ICL, an infringer who exceeds the limit established for the personal copy of protected work and does not pay the related fees, may be punished with the administrative fine and the suspension of copy or reproduction activity.

As for alternative dispute resolution, the parties to a dispute can opt for mediation through the service rendered by ADR entities. A mediation clause could also be inserted in a previous agreement concerning the licence or the assignment of an IP rights. Furthermore, in the context of a legal dispute, the judge can suspend the proceedings, ordering the party to attempt a mediation.

Currently, the predominant view that disputes concerning Italian intellectual and industrial property rights can be resolved by way of arbitration finds its bases in Italian law. This is namely the notion that IP rights are disposable and, following a recent change in law, that IP disputes no longer require the involvement of the public prosecutor. It is also possible to defer to arbitration matters involving liability in tort, subject to an agreement including a specific covenant that expressly provides that "future disputes relating to one or more specific non-contractual relationships will be deferred to arbitration." Often, however, the above wording is not included in arbitration clauses that govern trademark license agreements, which provide for arbitration exclusively in the case of disputes arising from the license agreement.

Greece Small Flag Greece

Intellectual property rights can mainly be enforced by way of civil proceedings.

In addition, trademark owners may seek protection through administrative proceedings, as previously mentioned under 8. 

Arbitration and mediation are also available to resolve intellectual property rights disputes.
Arbitration rules are included in the Greek Code of Civil Procedure (Arts. 867 et seq.).

Intellectual property rights can mainly be enforced by way of civil proceedings.

In addition, trademark owners may seek protection through administrative proceedings, as previously mentioned under 8.

Arbitration and mediation are also available to resolve intellectual property rights disputes. Arbitration rules are included in the Greek Code of Civil Procedure (Arts. 867 et seq.).

To present, there existed no requirement under Greek law to contact the defendant before initiating court proceedings. Law 4512/2018 initiated compulsory use of mediation in legal disputes arising from patent, trademark and industrial design infringements. However, application of said law has been suspended until 16 September 2019. Interestingly, a recent decision of the Greek Supreme Court has considered compulsory mediation in Civil procedures as contravening the requirements of the Hellenic Constitution. It remains to be seen how the new rules will be implemented and in which way this new practice will change the landscape in IP litigation.

India Small Flag India

There are broadly three types of Enforcements/Remedies for IP in India:

Civil Remedies:

Upon IP infringement civil remedies can be enforced by filing a suit for infringement and/or passing off (in case of unregistered trademarks) in the competent court. Following reliefs of civil nature can be granted:

  • Injunction
  • Anton Pillar orders/ Ex-parte orders: Anton Pillar orders, permits the plaintiff’s counsel to enter the infringer’s premises and seize evidence of infringement. This order is passed when there is a serious danger of removal/destruction of the infringing articles. Such an order is granted on an ex-parte application.
  • Orders to deliver up/surrender or seize and destroy
  • An award of costs and damages: Damages are granted to compensate the losses incurred by the plaintiff on account of defendant’s infringing act, whereas actual amounts of profits are handed over to the plaintiff as the second measure.
  • Tracing orders: Under tracing remedies, an infringer can be ordered to provide details like from where he got his supplies of infringing goods. Failure to provide such information is taken as contempt of court.
  • Rendition of Accounts or Account of Profit

Criminal Remedies:

Criminal remedies for Trademarks and Copyrights enforcement are elucidated in point 16 above. As for Patents Act, 1970 Although there are no criminal sanctions for infringement of patent per se, however, Chapter XX of the Patents Act, prescribes criminal remedies for offences in relations to patents such as falsification of entries in register, unauthorized claim of patent rights, refusal or failure to supply information etc.

Administrative remedies:

  • Opposition against a similar trademark or against registration of a Geographical Indication;
  • Pre-Grant Opposition;
  • Rectification of a registered trademark/ design; and
  • Patent Invalidation;
  • Recordal with Customs to prevent the import of infringing goods.

Peru Small Flag Peru

If any disagreements or disputes arouse between the applicant and INDECOPI, when requesting the registry of intellectual property rights, the parties have the chance to appeal the resolution issued by them. This generates a second resolution by the administrative court of our Peruvian Trademark Office (PTO) that will either confirm or deny its previous pronouncement.

After the administrative procedure in our PTO has been exhausted, we also have the option to initiate a judicial action before the Contentious Administrative Court and request the nullity of the final resolution.

Malta Small Flag Malta

Enforcement options vary across general civil procedure, lex specialis for IPRs and alternative dispute resolution methods. More information will feature on the former two types. With regard to alternative dispute methods, Maltese law caters for mediation and arbitration generally – there have not been many IP disputes which have resorted to such alternative dispute measures. The generality of matters usually gravitate towards court proceedings. It is also noteworthy to point out that the various IP laws in Malta also allow for some degree of actions before the Comptroller of Industrial Property. These include patent revocation procedures and now also trademark oppositions. One final point of note for the time being is that with regard to patents, Malta now has its own Patent Tribunal.

Civil Procedure

Considering the contentious route, the basic enforcement options are those provided by civil procedure. Chapter 12 of the laws of Malta, the Code of Organisation and Civil Procedure provides all persons who are aggrieved with a series of provisional measures or precautionary acts that can be availed of prior to – or during an – action. Primarily these are the:

a. Warrant of description

b. Garnishee order

c. Warrant of seizure and elevation

d. Warrant of prohibitory injunction

e. Warrant in procinctu

All such warrants are filed on a prima facie basis of evidence. Once a precautionary warrant is filed in court, the court shall generally immediately issue the warrant although sometimes the court may: ask for further clarifications, order a notification to the counter party or call in both parties to hear their submissions.

If the other party objects, they must seek revocation of the warrant whether in total or in part, by application to the courts.

Without prejudice to any other right which may arise under any law, the person against whom the precautionary warrant is issued may file an application in court requesting that the precautionary act be revoked, either wholly or in part. Moreover, the person against whom the warrant is filed may request both the imposition of a penalty as well as the award of damages that may have been caused as a result of the issue of the precautionary warrant. The person against whom the warrant is filed is also given the right to insist that the applicant provides security for the payment of the penalty and damages in the event that the latter does in fact become liable to the payment thereof. It is, however, within the discretion of the court whether or not to order the applicant to give such security.

Precautionary warrants filed before the institution of proceedings on the merits of the case require an action to be instituted within the relevant time-limit as specified by law (20 days from the Court decree confirming the warrant), it shall be lawful for the other party to seek and obtain the revocation of such warrant.

Enforcement Directive

The EU’s Intellectual Property Rights Enforcement Directive was transposed into Maltese law by Chapter 488, the Enforcement of Intellectual Property Rights (Regulation) Act. Chapter 488 creates a number of other measures that rights-holders may avail of – some are similar to those existing under Civil Procedure (such as the measures preserving evidence), while others are novel to the Maltese system (such as the measures to disclose evidence).

The injured party may file an application to have recourse to these measures, with the Maltese courts now having enough experience to appreciate that such measures are to be dealt with the same urgency as the civil precautionary warrants.

For a person to avail themselves of the measures under Chapter 488, the applicant must have reasonably available evidence to support the claims made in the application. In conjunction with the filing of applications, the applicant must also lodge security to ensure compensation for any prejudice the other party may suffer. Finally, similarly to the procedure under Civil law, the applicant must, 31 days from the issuing of the measures, file proceedings in Court for the case on the merits to be heard.

Customs action

Malta having such an important port of entry into the EU also has a robust IP Office within Malta Customs. Maltese law relating to customs action provides for two procedures for action – the first is action based on the right-holder’s application for action filed with Malta Customs informing them of the rights to be monitored; while the second is ex officio action by Malta Customs when they intercept any goods which may be infringing. Customs enforcement actions may be based on Chapter 414, Intellectual Property Rights (Cross-Border Measures) Act and EU Regulation 608/2013 concerning customs enforcement of intellectual property rights.

Enforcement proceedings

Over and above what has been discussed so far, each act dedicated to an IPR provides for how infringement is dealt with and what enforcement proceedings may be instituted in its regard.

Saudi Arabia Small Flag Saudi Arabia

A trademark owner can initiate enforcement actions using any of the following two routes:

  1. Administrative Action before the Anti-Commercial Fraud Department (ACFD) in Riyadh. A complaint should be filed in writing with all evidence of infringement and registered rights over the trademark. The location of infringing goods should also be provided to the ACFD.
  2. The Commercial Court also has jurisdiction over trademark infringement matters. A statement of claims must be filed before the court in writing. There are no pre-trial procedures. In few cases, the Commercial Court refused to accept its jurisdiction over trademark infringement matters however these decisions are challenged before the higher courts.

In case of Patent and Industrial Design infringement, a statement of claim shall be filed with Saudi Patent Committee along with evidence. Saudi Patent Committee has exclusive jurisdiction to adjudicate Patent infringement cases. There are no administrative procedures in case of patent infringement.

Australia Small Flag Australia

Civil court proceedings involving intellectual property rights are heard primarily in the Federal Court of Australia, including appeals from decisions of the relevant intellectual property office. Less complex intellectual property proceedings may be heard in the Federal Circuit Court (not including patent proceedings). The High Court of Australia hears appeals from the Federal Court of Australia.

Oppositions may also be brought before the Trade Marks, Patent, Designs and Plant Breeder’s Rights Offices. The Copyright Tribunal also has jurisdiction to hear matters relating to statutory and voluntary licences.

Alternative dispute resolution (ADR) processes, including arbitration and mediation, may be considered appropriate in the early stages of dispute that has been filed in either the Federal or Federal Circuit Court. In some cases, a judge may order that the parties attempt to mediate the issues before allowing the case to proceed.

Unjustified threats provisions – the Patents, Designs and Plant Breeder’s Rights Acts provide penalties for unjustified threats of infringement. The Copyright and Trade Mark Acts include similar provisions for ‘groundless threats’ of legal proceedings in relation to trade mark copyright infringement. Accordingly, a rights owner should ensure that any allegation of infringement is justified, before putting another party on notice.

United States Small Flag United States

For patent and copyright issues, federal courts are the main jurisdiction to decide substantive issues of law. State courts, which exist in parallel to the federal courts, can decide issues such as ownership of the intellectual property, assignment, and license disputes. For trademark and trade secret disputes, an owner can pursue civil action in federal or state court depending on the rights they are seeking to enforce.

Owners may also pursue action at the International Trade Commission to exclude the importation of goods involved in “unfair methods of competition,” encompassing each of the intellectual property rights described in section A. Although not enforcement, but related to patent litigation, a party may also challenge the validity of a patent at the USPTO. For alternative dispute resolution, the U.S. code does provide a “voluntary arbitration” provision, but ADR may be included in an agreement.

Updated: September 12, 2019