Where court action is available, please provide details of which court(s) have jurisdiction, how to start proceedings, the basics of the procedure, the time to trial, the format of the trial, the time to judgment and award of relief and whether any appeal is available.

Intellectual Property (2nd edition)

Japan Small Flag Japan

For court actions concerning patents, utility models or copyrights for computer programs, the Tokyo or Osaka District Court has exclusive jurisdiction in the first instance. A plaintiff may bring a court action concerning other intellectual property rights to a court which has jurisdiction in accordance with the provisions of the Code of Civil Procedure, as well as to the Tokyo or Osaka District Court.

Lawsuit proceedings are initiated by way of a plaintiff submitting a complaint. Then the court sets the first court hearing date and the defendant has to submit a written answer by, or appear to answer the complaint at, the first court hearing. After that, both parties submit briefs and evidence several times until the suit is in condition for the court to render a final judgment. Courts often attempt to arrange a settlement before rendering a final judgment.

For the time to judgment, see 18. For the award of relief, see 31. Appeals to the Intellectual Property High Court or other courts with jurisdiction in the second instance and final appeals to the Supreme Court are also available.

UAE Small Flag UAE

Civil court action
The UAE has a Federal Court system, which consists of a Court of First Instance, Court of Appeal and Court of Cassation. However, a separate court system exists for the emirates of Dubai and Ras al Khaimeh. Would-be litigants would need to bring action in the Court which has jurisdiction as mentioned below.

In addition to the "on-shore" judicial system, some of the Free Zones which operate within the UAE also have, or in some cases will shortly have, their own Court systems, such as the Dubai International Financial Centre (DIFC), Abu Dhabi Global Markets (ADGM) and Dubai Multi Commodities Centre.

Whereas the "onshore" UAE courts are Arabic language civil law courts, the DIFC and the ADGM courts are independent English language common law courts.

The UAE courts having jurisdiction in infringement matters are:

  • The court of the domicile of the respondent, place of residence or work (absent his or her domicile in the UAE);
  • The court in the jurisdiction of which the damage occurred, or
  • The court in the jurisdiction of which the agreement was made or executed.
  • It is necessary to appoint a UAE advocate as these are the only lawyers with rights of audience in the UAE courts.
  • There is little to no oral advocacy in IP proceedings. Plaintiff files a writ with the court and shall pay court fees, the amount of which depends on the value of the claim. The writ must contain the following: identity of the parties, court in charge of the case, presentation of facts, purpose of the claim, list of documentary evidence.
  • Initially the case will be handled by the case management office, who will initially try to see if a settlement is possible. If a settlement is not possible, the Case Management Office (CMO) will set time frames in which the parties can file further written submissions and supporting materials. This can involve a number of exchanges of submissions.
  • Once the CMO will then decide when to transfer the matter to the appointed judge. The judge will then decide if further submissions are required, or whether to set the matter for a decision. This may not necessarily be a decision on the merits, but could be a decision by the judge to appoint an expert. The expert, chosen by the judge, may not have any experience in IP matters, but will be tasked by the judge to answer a series of questions put forward by the Judge. The expert will meet with the parties to help obtain information and documentation to answer the questions and prepare a report to the Court. The Expert's report is non-binding. Once the judge is satisfied that the parties have had sufficient opportunity to present their cases, the court sets a date for the final hearing and judgment. In practice, there is no hearing of oral arguments.
  • Time to judgment: see section 18 above, 6-12 months with no expert; up to 24 months if an expert is appointed
  • The Courts of First Instance decision may be appealed to the Court of Appeal. The appeal is a second trial on the merits. The Court of Appeal makes its own findings of fact and law and it usually takes 6-8 months. The appeal decision may be further appealed to the Court of Cassation. The Court of Cassation proceedings, usually last 6-12 months, but can take longer if the matter is remitted to the lower court for comments. The Court of Appeal decision will be enforceable even if an appeal is filed with cassation, unless the appellant obtains a suspension of the implementation of the ruling of the Appeal Court (which is at the discretion of the Court of Cassation). The Court of Cassation only decides issues of law. It can only cancel or refuse to cancel an appellate decision (it is not entitled to reverse the decision as a Court of Appeal would do) and remand to another lower Court of Appeal.
  • It is common for IP related court cases to be appealed to the Court of Appeal and a relatively high number are appealed to the Court of Cassation.

Criminal court action

  • Criminal complaint filed with the Police (the Dubai Police has a specialized department in charge of IP infringement) or directly with the Public Prosecutor. It is also worth noting that the Dubai Police Cybercrime Department launched in April 2018 a new platform called eCRIME that individuals and companies shall use to report any online fraud, financial fraud or other online offense.
  • The Public Prosecutor transfers the matter to the Police for investigation or, if the complaint is filed directly with the Police, the Police submit the complaint to the Public Prosecutor for approval.
  • The Police carry out an investigation, including raids and interrogations, to gather evidence of the infringement, and submit its investigation report to the Public Prosecutor.
  • The Public Prosecutor may order the Police to provide additional material evidence and information related to the criminal acts. If the Public Prosecutor finds sufficient evidence of the criminal acts, it will refer the case to the criminal court which has jurisdiction for where the crime occurred.
  • The Public Prosecutor may order the dismissal of the complaint and closure of the investigations due to lack of evidence.
  • If the claimant wishes to monitor progress of the criminal proceedings, it can file a civil claim against the defendant that is joined with the criminal proceedings (at the Public Prosecutor stage or when the matter is referred to the criminal courts). This will also allow the claimant to be officially represented at the hearing. A civil claim will be required to obtain damages.
  • Time to judgment: see section 18 above
  • Right to appeal: see section 19.1 above (there are also three levels of court in the criminal courts)

Mexico Small Flag Mexico

Court

How to start

Basics

Time to trial

Format

Time to judgement

Any available appeals?

Federal Administrative Court

By filing an initial pleading

1)In written

2)PoA required

3)No discovery

1 - 2 years; however, it would depend on the complexity and particularities of the case.

1)Initial pleading

2)Response by the defendant

3)Closing arguments

4)Revision of evidence

5)Ruling/Decision

6 - 8 months; however, this time would depend on the complexity and particularities of the case.

Yes

Civil Courts

Criminal Courts

Federal Circuit Court

Mexican Supreme Court

No

India Small Flag India

The court in question will be first determined on the basis of the location of the alleged infringement, or, alternatively, the location of the Defendant’s place of business. In a case involving trade mark and copyright infringement, a suit may be filed depending on the Plaintiff’s place of business or residence as well.

Further, on the basis of the sum of the relief claimed, the district court or the relevant High Court will have jurisdiction of the matter. These rules are determined by the various states in India and therefore there is no uniformity in terms of pecuniary jurisdiction between the various states.

A suit needs to be filed along with Interlocutory Application for temporary injunction etc., on the basis of the procedure as laid out by the court in question. Once the case has been heard on preliminary issues, the matter is admitted and then heard in detail on merits. Both parties are given time to submit both oral and written submissions, and admission and denial of documents and examination of witnesses is undertaken.

The time to formal judgment is typically between two to five years.

Relief sought (such as injunction, delivery up of infringing materials, rendition of accounts etc.) are granted along with damages. However, the quantum of damages would depend on the merits of the case.

Yes, provision of appeal is available to any party who is aggrieved by any order or judgement of the court.

Updated: June 15, 2018