What remedies (both interim and final) are available for infringement of each of the intellectual property rights described in section A?

Intellectual Property (3rd edition)

Malaysia Small Flag Malaysia

Special damages, general damages, injunctions, account of profits, costs (partial), exemplary damages, statutory damages, declaration, an order for delivery up (if applicable).

Norway Small Flag Norway

For patents, trade secrets, designs, trademarks, business names and copyright, the same type of remedies are available. The most common types of remedies are damages and injunctive relief against on-going and future infringement.

France Small Flag France

Pursuant to the articles L. 331-1-1 (copyright), L. 521-6 (design), L.615-3 (patents) and L.716-6 of the IPC, a right owner can apply, at a preliminary stage, either ex parte or inter partes, for measures to prevent imminent infringement or to stop infringement against the alleged infringer or any intermediary whose services are being used by the infringer.

Interim remedies includes in this respect:

  • • interlocutory injunction to cease the allegedly infringing acts, eventually under a recurring penalty payment;
  • • a financial provision to the benefit of the applicant if the existence of the damage is not seriously questionable;
  • When an interim action is welcomed, French judges tend to sanction the infringer severely.
    In this regards, the following financial provision have been recently granted, relating to

  • • trademarks:

    o 30 069,72 euros (Court of appeal of Paris, March 13th 2019, RG 18/20092);
    o 150 000 euros (Court of first instance of Paris, October 11th 2018, RG 17/11217)

  • • patents:

    o 2 901 779 euros granted to the first claimant and 1 460 889 euros granted to the second claimant, for a total of 4 362 668 euros -Court of first instance of Paris, March 7th 2019, RG 17/14664);

    o 5 846 628 euros granted to the first claimant and 7 308 285 euros granted to the second claimant, for a total of 13 154 913 euros (Court of first instance of Paris, June 7th 2018, RG 16/15196)

  • • the lodging of guarantee to ensure the right holder’s compensation;
  • • the seizure of the litigious goods or their withdrawal from distribution channels.
    The interim action may be filed either before or after the action on the merits.

If filed before any action on the merits, the action on the merits must be brought within 20 business days (or 31 calendar days if longer) from the date of the Court Order. Failing that, the remedies granted will be automatically cancelled.

Decisions on interim remedies may be appealed within 15 days, unless granted by the pre-trial judge.

Should a claimant succeed in its infringement action, available final remedies would include:

  • • the issuance of a permanent injunction to cease the infringing acts;
  • • the grant of damages;
  • • the seizure or destruction of infringing goods;
  • • the withdrawal of the infringing products from distribution channels;
  • • the confiscation of the infringing products for the right holder’s benefit;
  • • the publication of the Court decision.

Concerning legal entities, under articles L.335-5 (copyright), L.521-10 (designs), and L.716-11-1 (trademarks) of the IPC, the court may also order the total or partial closure of the infringing organisation, either permanently or temporarily.

It should be noted that infringers can also face criminal sanctions (see question 16).

Just like for the interim measures, French judges tend to sanction the infringer more severely by the grant of higher damages, it being specified that French trade mark law was amended in 2014 to implement the IPR Enforcement Directive and allow for better compensation of the right-holder and ensure the grant of corrective measures including injunction for recall from the channels of commerce.

For instance, the following damages have been awarded, in relation to trademarks and designs:

  • • 460 000 euros (Court of Appeal of Paris, September 11th, 2018, RG 17/01589)
  • • 300 000 euros (Court of first instance of Paris, January 18th 2019, RG 16/12207)

Singapore Small Flag Singapore

Apart from the usual final injunctions and monetary remedies, an intellectual property rights holder may also seek the following non-exclusive remedies:

  • Statutory damages. Statutory damages are available in respect of trade mark and copyright infringement. A plaintiff may elect to receive statutory damages in lieu of damages or an account of profits to avoid having to prove actual loss.
  • Order for disposal . In the case of counterfeit goods, the Court will usually order that they be destroyed following the conclusion of the matter.
  • Search orders. The grant of a search order will enable a plaintiff’s solicitors to enter a defendant’s premises to seize infringing goods or incriminating evidence.
  • Interim injunction. An intellectual property rights holder may seek an interim injunction at time of commencement or partway through proceedings to prevent the alleged infringer from continuing its infringement.

Mexico Small Flag Mexico

Inventions

IP right

Interim remedy

Final remedy

Patents

1) Withdrawal from circulation the merchandise that infringes IP rights;

 

2) Stop the use and commercialization of infringing products;

 

3) Seizure of infringing goods; and

 

4) Closure of the establishment.

 

 

1) Fine

 

2) Temporary/permanent closure

 

3) Administrative detention

 

4) Infringement declaration

 

5) Stop the commercialization of the infringing products

 

Utility models

Industrial designs

Integrated circuits

Brands

IP right

Interim remedy

Final remedy

Trademarks

1) Withdrawal from circulation the merchandise that infringes IP rights;

 

2) Stop the use and commercialization of infringing products;

 

3) Seizure of infringing goods; and

 

4) Closure of the establishment.

 

1) Fine;

 

2) Temporary/permanent closure;

 

3) Administrative detention;

 

4) Infringement declaration; and

 

5) Order to stop the commercialization of the infringing products.

 

 

Trade names

Slogans

Appellations of Origin

Geographical Indications

 

 

Copyright and other rights

IP right

Interim remedy

Final remedy

Copyright

1) Withdrawal from circulation the merchandise that infringes IP rights;

 

2) Stop the use and commercialization of infringing products;

 

3) Seizure of infringing goods; and

 

4) Closure of the establishment.

 

Within an administrative procedure, the final remedies available are the following:

1) Fine;

 

2) Temporary/permanent closure;

 

3) Administrative detention;

 

4) Infringement declaration; and

 

5) Order to stop the commercialization of the infringing products.

 

On the other hand, if a civil action is initiated, the final remedies available would be the following:

1) Infringement declaration;

 

2) Order to stop the commercialization of the infringing products;

 

3) Order to pay damages; and

 

4) Order to pay litigation expenses.

Related rights

Reservation of rights

Plant varieties

1) Withdrawal from circulation the merchandise that infringes IP rights;

 

2) Stop the use and commercialization of infringing products; and

 

3) Seizure of goods.

 

A fine determined by the authority.

 

China Small Flag China

Remedies of court proceeding include temporary injunction before or during a trial, court judgement ordering the infringer to stop infringement and monetary compensation.

In administrative proceedings, the owner cannot get damage compensation unless the infringer volunteers to pay compensation.

In judicial proceedings, the amount of damages shall be accessed on the basis of the actual losses suffered by the right holder because of the infringement. Where it is difficult to determine the actual losses, the amount may be increased on the basis of the profits the infringer has earned because of the infringement. Where it is difficult to determine the losses the right holder has suffered or the profits the infringer has earned, the amount may be assessed by reference to the appropriate multiple of the amount of using the IP under a contractual license. Where the infringement is committed in bad faith and the circumstance is serious, the amount of damage shall be more than 1 time but less than 5 times of the amount assessed by referring to the above calculation. The amount of the damage shall also include the reasonable expenses of the right holder incurred for stopping the infringement act. Where it is difficult to determine the losses suffered by the right holder, the profits the infringer has earned and the fees of licensing, the people’s court shall grant a compensation not exceeding RMB 5,000,000 yuan.

Ecuador Small Flag Ecuador

Judgements of damages and settlements on which it is agreed to receive a compensation for the infringement.

South Africa Small Flag South Africa

For all forms of intellectual property the following remedies are available:

  1. An interdict, whether urgent, interim, or final, depending on the circumstances.
  2. An award of damages (actual damages proved to have been suffered by the IP owner or licensees).
  3. Delivery up of infringing articles for destruction.
  4. An award of costs of the litigation to the successful party (typically around 50% of the actual costs incurred)

Cyprus Small Flag Cyprus

As aforementioned, interim orders in the form of Norwich Pharmacal and Anton Piller orders, are available, along with injunctive relief in proceedings for patent, copyright, trade mark and patent infringement.

In cases where patent, copyright, trade mark and design infringement are found, the court may issue an order prohibiting the infringer from repeating the offence and in case the offender flouts this order, an order (monetary or penal or a combination of both) may be imposed.

Orders may be issued for the delivery up and destruction of infringing products, and further, an order may be made for damages or account of profits.

Japan Small Flag Japan

Injunction and compensation of damages are available as remedies for infringement. An injunction is almost automatically issued when the right owner seeks it. The amount of damage that can be awarded is limited to the compensatory damages. Any damages that exceed the compensatory damages, including punitive damages, cannot be awarded.

Switzerland Small Flag Switzerland

Available remedies include preliminary and definitive injunctions, declaratory judgements, assignment of the intellectual property rights, order to disclose the origin and quantity of infringing goods and name of the recipients, order to disclose the extent of any distribution to commercial and industrial customers and amounts received therefore, damages, publication of the judgement and/or destruction of the infringing goods and their removal from the market.

United Kingdom Small Flag United Kingdom

Interim orders and remedies

During proceedings, the most common forms of interim relief and measure that an IP right owner may seek from the court are:

Search and preservation orders: Formerly known as Anton Piller orders, a search and preservation order allows the Claimant's solicitors to search a Defendant's premises and seize any infringing articles or incriminating documents. To secure the award of this order the Claimant must show that: (i) they have a strong prima facie case, (ii) the actual or potential damage to the Claimant is very serious, and (iii) the Defendant has possession of infringing articles or incriminating documents and there is a real possibility they will dispose of or destroy them.

Norwich Pharmacal Orders: A Norwich Pharmacal order is an order compelling a Defendant to disclose the identity of the supplier of an infringing article. A failure to comply with the order may result in the Defendant being in contempt of court.

Interim Injunction (Preliminary Injunction): The IP right owner may seek an interim injunction to prevent the alleged infringer from infringing, or continuing to infringe, the IP right in question during the proceedings. Interim injunctions may be secured on an emergency basis, pursuant to an ex parte application. Interim injunction proceedings can be quick and cost efficient, particularly in trade mark cases.

In considering whether to grant an interim injunction, the court will consider whether there is a serious question to be tried, whether the balance of convenience lies in favour of granting, or not granting, the injunction, and whether granting an injunction best preserves the status quo. This will also involve consideration of whether damages would be adequate compensation for each of the parties if the interim injunction were wrongly granted or refused. The IP right owner will be required to give a cross-undertaking in damages, to undertake to pay the alleged infringer damages in the event that the interim injunction is wrongly granted (i.e. if the court ultimately determines that the IP right was not valid or not infringed).

The court will also consider the difference in time between the IP right owner knowing of the infringement and making the interim injunction application. Delay in making an application adversely affects the likelihood of an interim injunction being awarded.

If, following the trial, the court determines that the IP right is valid, and infringer, the IP right owner may seek:

Damages or an account of the infringer's profits: the IP right owner may seek either damages or an account of profits. Damages are intended to compensate the IP right owner for losses caused by the infringement. Damages may be based on the profits the IP right owner would have made but for the infringement or on the basis of a hypothetical reasonable royalty. An account of profit is based on the profits made by the infringer, rather than the harm caused to the IP right owner. The court may allow various deductions (such as a portion of overheads) and may consider the contribution of the infringement to profits (e.g. the contribution of an infringing component to the sales of a larger product).

Injunctive relief: A final injunction prohibits further infringing activity by the infringer for the duration of the right. An injunction is not an automatic entitlement and it remains at the court's discretion whether one is granted or substituted for financial compensation, for instance if the infringement is trivial or where no future threat of infringement exists.

Delivery Up/Destruction of Infringing Articles: A successful Claimant may seek an order for the delivery up or destruction of the infringing articles and the courts are under an obligation to consider the proportionality of the request for such an order against the gravity of the infringement.

Declaratory Relief: Where an IP right owner has brought a claim of infringement and is successful, the court will make a declaration that the IP right has been infringed. Similarly, where a patent is held to be valid, a declaration of validity may be awarded, and accordingly, where a patent is held to be invalid, a declaration of invalidity may be ordered in conjunction with a revocation order. If part of a right is valid, for instance if some claims of a patent are invalid and some are valid, or if a trade mark is valid in relation to certain goods and services, but not others, the IP right owner may apply to amend its right, to remove the invalid aspects.

Orders for Publication: There is scope for the court to order a party, at their own cost, to publicise the outcome of a case.

Israel Small Flag Israel

Temporary injunctions may be granted in all proceedings, subject to the plaintiff filing a security for compensation of the defendant if the temporary injunction is lifted.

Permanent injunctions and compensation for damages are also available in all proceedings. Statutory damages, ranging up to ILS 100,000, are available in cases of copyright infringement and in passing off actions.

Germany Small Flag Germany

Remedies include:

  • Preliminary injunctions, for example regarding restraining orders, rendering of information and seizure of goods by the court bailiff and permanent injunctions;
  • declaratory relief;
  • injunctive relief;
  • damages;
  • disclosure of information and accounts;
  • handing over documents in the possession or property of the infringer;
  • delivery up / destruction of infringing products;
  • recall of infringing products and removal from the market;
  • publication of the decision, for example under Section 140e Patent Act, Section 24e Utility Model Act and Section 21 Act on the Protection of Trade Secrets;
  • Reimbursement of the statutory legal costs and fees for bringing the action.

Italy Small Flag Italy

According to Articles 129 and 131 of the IPC and in compliance with the rules of the ICPC concerning precautionary proceedings, a registered trademark owner could request:

  • the measure of injunction from manufacturing, trading and using anything infringing the right;
  • the seizure of any infringing goods; and
  • an order to recall of any of the same infringing goods.

The granting of preliminary measures requires two fundamental conditions. Firstly, fumus boni iuris, which implies, on the balance of probabilities, the existence of infringement and 'apparent' IP right validity.

In other words, full evidence of the infringement is not requested; in fact, fumus boni iuris implies that the claimant has to prove that he is entitled to enforce his alleged rights and that there are good reasons to believe that these rights are indeed being infringed by the defendant. Secondly, periculum in mora (urgency) needs a demonstration that the delay incurred in ordinary litigation will generate an 'irretrievable loss'. According to certain case law, periculum is in re ipsa whenever the infringement implies a concrete risk of passing off potentially irreversible and, at the same time, damage quantification is difficult.

According to general Italian civil proceeding law, the content of certain precautionary judgments can become stable without the need to start an action on the merits, upon the condition that the precautionary judgment is suitable to anticipate the content of the hypothetical final decision to be delivered by the judge at the end of a proceeding on the merits (Article 669-octies (6), (7) and (8) of the ICPC).

With specific reference to Italian IP legislation, according to some scholars, the interim injunction (which prevents an entity from keeping an unlawful behaviour concerning an IP right) falls within the scopes of application of the above-mentioned rule set forth by Article 669-octies (6), (7) and (8) of the ICPC. In particular, the content of an interim injunction (i.e., the order to stop a determined behaviour) is mostly the same as one of an injunction ordered at the end of an action on the merits and, therefore, if none of the parties starts the action on the merit, the effects of the interim injunction remain stable, as confirmed by Article 131 (1-quarter) of the IPC.

On the other hand, a different doctrine retains that the above-mentioned rule contained in the IPC breaches the principles set forth in the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs Agreement), where it is stated that measures taken on an interim basis shall "cease to have effect, if proceedings leading to a decision on the merits of the case are not initiated within a reasonable period, to be determined by the judicial authority ordering the measures where a Member's law so permits or, in the absence of such a determination, not to exceed 20 working days or 31 calendar days, whichever is the longer" (Article 50 (6), TRIPs Agreement). Therefore, on the basis of the here mentioned theory, the party that obtained an IP interim injunction should go on the merits to try to stabilize the effects of the same injunction, in order to comply fully with the provisions of the TRIPs Agreement.

The final remedies are regulated by Articles 124-127 of the IPC and they include (i) final injunctive relief and/or withdrawal from the market of the products with the infringing sign, with possible penalty for each day of delay in the enforcement of the measure; (ii) seizure or destruction of the counterfeiting products; and (iii) publication of the decision in the Italian press.

The owner may also claim for damages.

They can include the actual damage and the loss of profits, and could be quantified in three alternatives as follows:

  • damages award to be evaluated (often after appointment of a court expert) on the basis of the following criteria (or combination of them): all negative economic consequences, including loss of profits suffered by the right-holder; counterfeiter’s profits and benefits; and, in appropriate cases, non-economic factors, such as moral damages;
  • as an alternative, a lump sum based on equity (without the appointment of a court expert), but an award for loss of profits cannot be lower than a reasonable royalty; and
  • in any event, a trademark owner's right to ask for the full recovery of the counterfeiter’s profits instead of compensation for damages (for loss of profits) or to the extent to which they exceed such damages.

Greece Small Flag Greece

Both interim and final relief measure are available for intellectual property rights infringement, which are broadly similar for all types of IP rights.

In the context of injunctive relief, the rights holder is entitled to claim, inter alia:

• Temporary cessation of the infringement;
• Temporary withdrawal of the infringing products from the market;
• Provisional seizure of infringing products, and
• Publication of the injunction order in the press and/or online.

The related decision may also provide for penalties (in the form of financial penalties and personal incarceration) in case of contempt of the decision and for each violation of its provisions.

It is worth noting that the rights holder may request measures to preserve evidence and has the right to information.

A Petition for injunction is granted if the element of urgency is prevalent in the circumstances of a particular case.

Upon the filing of the injunction application, the rights holder may apply for a temporary restraining order (TRO), which is granted in cases where the petitioner proves the existence of a prima facie serious infringement as a matter of exceptional urgency. The TRO usually remains in force until the Petition for Injunction hearing takes place but can be extended until the issuance of the decision on the injunction application.

In the context of the main infringement action, the rights holder may request:

• Permanent cessation of the infringing activities;
• Destruction of the infringing products;
• Moral and/or material damages, and
• Publication of the judgement in the press or online, at the expense of the infringer.

In the calculation of damages, the negative economic consequences suffered by the rights holder, including loss of profits, as well as profits made by the infringer, must be taken into account.

Damages may also be calculated on the basis of hypothetical royalties.

India Small Flag India

Patents

In case of infringement of patents, the following interim and final remedies are available in India:

  • Temporary or interim injunction
  • Damages and account of profits:
  • Reasonable royalty
  • Permanent injunctions:
  • Ex parte injunctions:
  • Other remedies include seizure of infringing goods etc

Designs

A registered proprietor can institute a suit for infringement in a district court or a high court, depending on the pecuniary jurisdiction, for temporary or permanent injunction and/or recovery of damages against any person engaged in the piracy of design. Any person involved in the piracy of design is liable to pay the registered proprietor of design and the proprietor may also bring a suit for recovery of damages for such contravention and for an injunction against the repetition.

The remedy of passing off is also available under the laws of designs. However, the remedy of passing off cannot be combined with the remedy of infringement.

Copyright and Trademarks: In case of copyright infringement, the following civil and criminal remedies are available:

Civil remedies: Interlocutory injunctions, pecuniary remedies in the form of damages and account of profits, Anton Pillar orders, Mareva injunctions.

Criminal Remedies for Copyright: Any person who knowingly infringes or abets the infringement of copyright in any work commits criminal offence under S. 63 of the Copyright Act. The minimum punishment for infringement of copyright is imprisonment for six months with the minimum fine of INR 50,000 (USD 780 approx), In the case of a second and subsequent conviction the minimum punishment is imprisonment for one year and fine of INR 1 lakh (USD 1580 approx.).

Criminal remedies for trademarks: The Trade Marks Act provides sanctions for falsifying and falsely applying trademarks, which is punishable with imprisonment for a term between six months and three years, and fine between INR 50,000 (USD 780 approx.) and INR 3 lacs (USD 4670 approx.).

Peru Small Flag Peru

The IP right holder may request to the Peruvian Intellectual Property Office the following:

  • Cessation of all acts that constitute the infringement.
  • Withdrawal from commercial channels of all products resulting from the infringement, including materials or implements.
  • Prohibition against the importation or exportation of the products, or their materials or implements.
  • Destruction of the products or their materials or implements, or the temporary or definitive closure of the business belonging to the accused.
  • Publication of the guilty verdict and notification of interested parties at the infringer’s expense.

They are able to sue for compensation for damages before the Civil Court.

Malta Small Flag Malta

Please see the answer to question 17 as this was elaborated in more detail there.

Essentially, a number of interim and final remedies are available to rights holders, some of which are based on general civil law, while others are based on the laws regulating the enforcement of IPRs or in the specific acts of law dedicated to each IPR.

Brazil Small Flag Brazil

Remedies include:

  • Preliminary Injunctions, for example regarding restraining orders, rendering of information and seizure of goods by the court bailiff and permanent injunctions;
  • declaratory relief;
  • injunctive relief;
  • damages;
  • disclosure of information and accounts;
  • delivery up / destruction of infringing products;
  • recall of infringing products and removal from the market.

Saudi Arabia Small Flag Saudi Arabia

Following remedies are available under different IP laws of Saudi Arabia:

  1. Interim Injunction
  2. Permanent Injunction
  3. Monetary damages
  4. Award of adequate compensation
  5. Order to destroy infringing products.

Australia Small Flag Australia

Interim remedies

Some of the forms of interim relief available for infringement of intellectual property rights are:

1. Search order – search, or Anton Piller orders are issued to permit the applicant’s lawyers to enter the respondent’s premises to search for and remove infringing goods and documents which evidence infringement. For a search order to be granted, the applicant must establish that: (i) there is a strong prima facie case of infringement; (ii) the potential or actual damage will be very serious for the applicant; and (iii) there is compelling evidence that the respondent has incriminating material in their possession and that there is a likelihood that material bearing infringing marks or relevant documents will be destroyed. The applicant must also establish that the balance of convenience will favour the award of interlocutory relief.

2. Freezing order – freezing, asset preservation or Mareva orders are issued to restrain the respondent from disposing of or dissipating their assets which may be required to satisfy the applicant’s pending claim. For a freezing order to be granted, the applicant must establish that: (i) there is a prima facie cause of action against the respondent; and (ii) a danger that, due to the respondent absconding or disposing of their assets, the applicant will not be able to have the judgment satisfied if successful.

3. Interim or interlocutory injunction – interim (granted until a named date, usually for a short period of time) or interlocutory (granted until the hearing or further order) injunctions are usually awarded to preserve the status quo pending the determination of the proceedings and to restrain the respondent from doing the complained act. The objective is to protect the applicant from continued infringement of their rights in circumstances in which damages would not be an adequate remedy. In order to for an injunction to be granted, the Court must be satisfied that: (i) there is a serious question to be tried; (ii) damages would not be a sufficient remedy; and (iii) the balance of convenience favours the grant of an injunction.

Even if the three considerations are established, the Court, retaining its discretion, may nonetheless decline to grant the injunction. Relevant factors include: the balance of convenience in the circumstances, taking into account matters such as the strength of the applicant’s case, the delay in applying for an interlocutory injunction and the effect of an interlocutory injunction on the parties and third persons; the adequacy of damages, and the possibility and adequacy of other remedies; and any undertakings which the respondent may be prepared to give. For example, the Court may conclude from the circumstances of the delay that the matter is not sufficiently urgent or that the anticipated damage is not sufficiently serious to justify the grant of interlocutory relief.

Final remedies

If the applicant is successful in their claim, the Court may award the following final remedies:

  1. Damages - the applicant may generally be awarded damages at their election, provided that the applicant is able to demonstrate the damages they have suffered as a consequence of the respondent’s actions. Whether or not the respondent made profits from the infringing actions is an irrelevant consideration when assessing damages. The purpose is to restore the applicant to the position as if the infringement had not occurred. Whilst the quantum of damages is assessed liberally, it is not intended to be punitive to the respondent. The applicant may be able to claim damages for loss of profit as a result of infringing sales that they would otherwise have made, lost licensing fees and loss of goodwill. The Court may also decide to award additional damages if considered appropriate, having regard to matters including the flagrancy of the infringement, conduct of the respondent and the benefit accrued to the respondent. In cases of innocent infringement (e.g. copyright), the applicant is not entitled to damages, but is entitled to an account of profits in respect of the infringement, whether any other relief is granted or not.
  2. Account of profits – in the alternative to damages, and at the election of the applicant, the Court may award the applicant with an account of profits and thus order the respondent to pay a sum equivalent to the profits made from using the IP. The objective is to prevent the unjust enrichment of the respondent. In determining the final sum payable, the Court may deduct applicable costs and overheads from the total profits made from the infringing goods.
  3. Delivery up – the Court may order the respondent to deliver relevant infringing materials to the applicant for destruction.
  4. Final injunction – final injunctions are granted to restrain further infringement of the IP right. For the Court to award a final injunction in the exercise of its discretion, it must be satisfied that there is some threat of the commencement, continuation, or repetition of an act which constitutes infringement. An applicant may also seek a ‘springboard injunction’ to restrain the respondent from using a benefit produced by a prior infringing act in the future, even if that future conduct may not be infringing and otherwise be lawful. For example, a springboard injunction may be granted to limit the advantage that an employee has accrued through misuse of the employer’s confidential information.

United States Small Flag United States

At the outset of an infringement case, a party may file for a temporary restraining order (“TRO”) or a preliminary injunction (“PI”). This type of relief is usually sought to bar an accused infringer from continuing its infringement while the case is pending. In order to successfully make out a case for a TRO or PI, a party must show that they have a likelihood of success on the merits of the underlying case, and that absent an injunction, irreparable harm would occur. Finally, the party seeking a TRO or PI must show that the balance of hardships favors the movant.

Traditional remedies for intellectual property infringement include damages. For patent infringement, depending on the circumstances and specifics of a case, a party may be able to seek lost profits, price erosion, or a reasonable royalty on the intellectual property right. If, in the context of patent infringement, the infringement was willful, then damages may be multiplied.  For trademark infringement, a plaintiff may in some circumstances be able to obtain the defendant’s profits and the damages may be multiplied if it can be shown that the defendant intentionally used counterfeit marks.  In some cases statutory damages are available for counterfeit marks.  15 U.S.C. § 1117.  For copyright infringement, a plaintiff may be able to obtain actual damages, profits of the infringer, or statutory damages.  17 U.S.C. § 504.

A plaintiff may also be able to seek injunctive relief to bar future infringement depending on the context of a case. In order to succeed on a request for injunctive relief, the plaintiff must show that it has suffered an irreparable injury, monetary damages would be insufficient, the balance of hardships weighs in the movant’s favor, and the public service would not be disserved by the grant of an injunction.

At the International Trade Commission, the only remedy available is to block the importation of infringing goods into the United States.

Updated: September 12, 2019