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)
The majority of court actions related to enforcement of intellectual property rights in Russia are brought before arbitrazh courts entitled to hear commercial disputes involving legal entities and individuals registered as entrepreneurs. The disputes that do not fall under the competence of arbitrazh courts are heard by courts of common jurisdiction.
The special Intellectual Property Court is competent for first-instance resolution and cassations with regard to disputes related to intellectual property rights. In particular, the Intellectual Property Court is competent for first-instance resolution of all matters related to contesting of decisions of the Chamber for Patent Disputes of Rospatent and cancellation of trademarks due to non-use.
Usually court claims related to infringement of intellectual property rights are filed with a local (territorial) court depending on the place of residence/registration of the defendant. Decisions of first-instance courts are appealed before relevant appellate courts. Cassations against courts of appeal decisions are to be filed with the Intellectual Property Court.
Civil court proceedings are initiated by the plaintiff. Customs authorities may also initiate proceedings on administrative offences which are considered by arbitrazh courts.
The courts take decisions based upon oral court hearings.
In addition to the above, the Moscow City Court has special authority over cases of copyright and neighbouring rights infringements on the internet (except photographic works) including injunction remedies that apply before filing a court claim.
Two factors determine jurisdiction in China: where the defendant is domiciled and where the infringing act takes place.
In late 2014, China established specialist IP courts in Beijing, Shanghai and Guangzhou to hear the following IP disputes within the courts' respective jurisdictions:
- Civil and administrative actions involving patents, semiconductor topographies, plant varieties, complex trade secrets, and copyright relating to computer software;
- Administrative actions against a State Council department or a People's Government of county level or above for an administrative act involving copyright, trademark, and unfair competition; and
- Civil actions involving well-known trademarks.
Intermediate People's Courts, which sit at the same level as specialist courts, in the Beijing, Shanghai and Guangdong regions no longer accept cases concerning the abovementioned actions, with the exception of the Guangdong-based Shenzhen Intermediate People's Court, which has its own IP tribunal. District courts in these regions no longer accept actions concerning items (1) and (3) above. In regions without a specialist IP court, Intermediate People's Courts will hear (1) to (3) above.
In addition, the Beijing IP Court has jurisdiction over ﬁrst instance administrative cases relating to objections against: (a) licensing and conﬁrmation of validity of patents and trademarks; (b) compulsory licence decisions and compulsory licence fees; (c) any other act by a public authority involving licensing and conﬁrmation of intellectual property rights.
15 Specialist IP tribunals with cross-regional jurisdiction have also been established in Zhengzhou, Tianjin, Changsha, Xi’an, Hangzhou, Ningbo, Jinan, Qingdao, Fuzhou, Hefei, Shenzhen, Nanjing, Suzhou, Wuhan and Chengdu to hear IP cases in these (and adjacent) regions.
Plaintiffs must ﬁle pleadings at the court with jurisdiction. Provided the conditions to bring an action are met, the court shall place the action on its trial docket within seven days of receipt and notify the parties of its acceptance. If the conditions are not satisﬁed, the court will announce its decision not to accept the case within seven days of the case being ﬁled.
After the case is accepted by the court, the court shall send a copy of the plaintiff’s complaint to the defendant within five days, and the defendant shall file a defense, if any, within 15 days from receipt of the copy of the plaintiff’s complaint. When the defendant files a defense, the people's court shall send a copy of it to the plaintiff within five days from its receipt.
The parties will exchange evidence. If the court thinks it necessary, there will be a separate evidence exchange hearing. Usually the court will also conduct conciliation for the parties on a voluntary and lawful basis before the court hearing. If conciliation fails, the court hearing will be arranged, and the judgment will be issued accordingly.
Simple IP trials usually last 1 day, complex trials can be longer. Courts try civil cases in public, except those involving State secrets, private matters of individuals (including trade secrets), or where the law stipulates otherwise.
At trial, the court will ﬁrst verify the litigants, set out the cause of action, notify litigants of their rights and obligations and enquire whether the parties have submitted applications or abstentions. Trials begin with a court investigation which involves hearing statements by the litigants, and then examining witnesses (if any) and documentary evidence. Then the trials enter into the court debate stage, starting from oral statements by the plaintiff and his agents ad litem, then defense by the defendant and his agents ad litem, oral statement or defence by the third party and his agents ad litem (if any), and then debate between the two sides.
At the end of the court debate, the presiding judge shall ask each side, first the plaintiff, then the defendant, and then the third party (if any), for their final opinion respectively. Following this, the court will hear submissions from all sides. The parties may engage in mediation or settlement prior to judgment. There is no ﬁxed timeline from trial to written judgment (and, occasionally, this can take a signiﬁcant amount of time).
Once the judgment becomes effective, it is enforceable by the court of ﬁrst instance or a court at the same level as the court where the property subject to execution is located.
Judgements, Relief and Appeal
Cases concerning only domestic parties should conclude within six months of the date the case was accepted. Cases involving foreign IP owners have no ﬁxed timeline but ideally take 6-9 months.
If a party refuses to accept a judgment of first instance of a local people's court, he shall have the right to file an appeal with the people's court at the next higher level within 15 days after the date on which the written judgment was served.
In accordance with the Judicial Organization Code and the IPC:
- Paris Court of First Instance has exclusive jurisdiction over patent-related matters;
- the following Courts of First Instance have exclusive jurisdiction in relation to copyright and neighbouring rights, design, trademarks and geographical indications: Bordeaux, Lille, Lyon, Marseille, Nanterre , Nancy, Paris, Rennes, Strasbourg, Fort-de-France;
- the following Courts of First Instance have exclusive jurisdiction over plant varieties certifications related matters: Marseille, Bordeaux, Strasbourg, Lille, Limoges, Lyon, Nancy, Paris, Rennes, Toulouse.
Proceedings are initiated with the writ of summons being served by a bailiff to the defendant.
A first procedural hearing takes place during which the pre-trial judge checks whether:
- the defendant has appointed a lawyer, and
- the claimant has provided the defendant’s attorney with his exhibits (usually eight weeks after the first procedural hearing).
A second procedural hearing is set for the filing of defendant’s submissions in defence and exhibits (usually six-eight weeks from filing the writ with the Court).
A third procedural hearing is set for the filing of the defendant’s submissions in defence and exhibits in reply (approximatively six-eight weeks after the second procedural hearing).
The judge can schedule additional hearings to allow the parties to file supplementary submissions or close the debates and set a date for the final hearing (approximatively six-eight weeks after the third procedural hearing).
A final hearing is held for pleadings, the Court’s decision being usually issued between one to three months after the oral pleadings.
Appeals must be filed with the Court of Appeal within one month from the notification of the first instance decision. Foreign companies are granted an additional two months delay.
In IP matters, each of the 26 cantons have designated a Court which handles intellectual property disputes as a sole instance, with the exception of patent disputes which are handled by the Federal Patent Court.
Proceedings are initiated by filing a written submission with the competent Court. The Court will then set a deadline to the claimant to pay an advance of fees. Upon payment of these fees, the claim will be served upon the defendant with a deadline - from 30 days to 3 months - to respond. In complex matters, the Court may order and the claimant can request a second exchange of briefs. Each party has an unconditional right to take position on the other party's arguments. The Court will then set a hearing. In complex cases, the scope of the first hearing (so-called "instruction hearing") is to prepare the main hearing (discuss the matter in dispute in an informal manner, give details regarding the witnesses, etc.). In more simple cases, this instruction hearing will be immediately followed (within the same session) by the main hearing, where the taking of evidence will take place. The time to judgement depends on various factors, such as the complexity of the dispute, the number and length of submissions and evidences filed by the parties, the number of hearings held by the Court and the workload of the Court.
The decisions of the Cantonal Courts or the Federal Patent Court can be appealed to the Federal Supreme Court.
Intellectual property infringement disputes are heard by regional courts, appellate courts and the Supreme Court. Typically, the regional court having jurisdiction over the seat or place of residence of the defendant is competent for the case.
Starting proceedings requires filing a statement of claim. In IP infringement cases, it is common to include a motion for a preliminary injunction in the statement of claim, or to file it shortly before the statement of claim. The motion for preliminary injunction, if successful, allows the claimant to secure its interests for the time of trial, e.g., by restricting sales of goods suspected of patent infringement.
In general, the statement of claim is required to provide what the claimant demands from the defendant (claims), and all evidence supporting these claims. The defendant may, but usually is not required to, file a response to the statement of claim, providing the reasoning and evidence supporting its stance.
As a general rule, the parties are required to provide all evidence in their first court motions. The court may ignore late evidence.
After the first motions of the parties are filed, the court sets a hearing date. The case is considered through a number of hearings, with each one usually a few months apart from the previous one. During hearings, the parties and witnesses are heard, and expert opinions are prepared between hearings. The trial ends with a judgment.
The first instance judgment is not final and may be appealed by each of the parties. The possibility to present new evidence before the appellate court is very limited. Usually there is only one hearing before the appellate court, with parties or their attorneys heard, followed by a judgment.
The appellate court may either uphold the first instance judgment, change it, or, in case of major flaws of the first instance judgment, refer the case back to the first instance court.
It is possible to file an appeal from the appellate court judgment to the Supreme Court, but there are several requirements which the case must meet in order to be heard by the Supreme Court.
In Italy, legal disputes on IP-related matters, including copyright infringement, are entrusted to the Special Sections for Enterprises of the ordinary Court located in every Italian district (Legislative Decree No 168/2003). Italian Law does not require formalities such as a cease-and-desist letters or mediation before commencing infringement proceedings, but it is rather common in Italy for the IP rights owner to send a cease-and-desist letter as a first action, in order to reach a solution – and stop the infringement – faster and without commencing judicial action.
After this stage, a claimant that wants to bring an action, has to serve upon the counterparty a writ of summons (atto di citazione). The writ of summons is drafted and signed by legal counsel with authority (by power of attorney) to sign on behalf of his client. The writ of summons must contain all the elements necessary to identify the claim and causes of action, and must contain the vocation in ius (summons to court). Between service of the writ of summons and the date given for the first hearing, the defendant has at least 90 days (or 150 days in the case of a defendant residing abroad) to prepare its defence. The writ of summons must be filed at the court after service in order for the case to be entered on the court register and assigned to a specific judge. Italian ordinary civil proceedings are essentially “written”, based on the filing of pleadings exchanged between the parties and made up of a number of hearings fixed by law, each devoted to certain activities. After the statement of the defendant, the plaintiff can slightly modify or amend his/her claims, in the light of the objections and possible counterclaim raised by the defendant; however, the plaintiff cannot submit a completely new claim (the so- called mutatio libelli is forbidden).
As for the duration of such proceedings, see answer to question 18.
The first instance decision may be appealed before the specialised section of the competent Court of Appeal, which also has full authority to revoke the first decision on the merits.
The decisions of the Court of Appeal may be challenged before the Italian Court of Cassation only on certain grounds, therefore it is excluded a new scrutiny on the factual background of the dispute.
The Civil Courts have jurisdiction for actions for infringement and/or passing off. Proceedings can be commenced by the claimant filing a Claim Form, followed by Particulars of Claim, which outline the details of the case. Once the defendant has filed its Defence and any Counterclaim, and the claimant has had the opportunity to respond by his Response to Defence (or Defence to Counterclaim where applicable).
Following the filing of pleadings as described above, the disclosure of documents and a summary of evidence are filed by the parties and then the case is scheduled for hearing. Generally, Court proceedings can last approximately five years depending on the complexity of the matter. Appeals for infringement proceedings are to the Court of Appeal take three to four years to be heard.
The primary remedies sought in civil litigation are typically declaration that its right has been infringed, an injunction to prevent the other party infringing its rights, damages or an account of profits and legal costs, plus interest.
During the proceedings, the interim remedies that can be granted are interim injunctions, interim declarations, freezing injunctions which may also include ancillary disclosure orders, search orders and disclosure or inspection orders.
The claimant usually seeks for an interim injunction prohibiting the infringer from infringing or continuing to infringe the intellectual property right in question for as long as the proceedings are pending. The conditions which must be satisfied are the following:
- A serious question arises to be tried at the hearing.
- There appears to be “a probability” that the plaintiff is entitled to relief.
- It shall be difficult or impossible to have complete justice at a later stage without granting the interim injunction.
Interim injunctions may be secured on an emergency basis, by an ex parte application. Delay in making an application make it less possible for an interim injunction to be awarded.
The claimant will be required to give a cross-undertaking in damages to undertake to pay the defendant in the event that the interim injunction is wrongly granted.
An appeal to the decision can be filed before the Court of Appeal.
IP litigation in Israel generally follows the basic procedures of general Israeli litigation. On average, a case involving infringement can be expected to take anywhere from six months to three years. This does not include appeals, which may take from six months to two years.
Most IP claims are brought before the District Court as they usually involve injunction orders. If they involve only a monetary remedy up to NIS 2,500,000, they will be brought before the Magistrate court. In addition, decisions of the Patent and Design Registrar (e.g., revocations, discussed below) may be appealed before the District Court.
District Court decisions may be appealed to the Supreme Court. Similarly, the District Court hears appeals from decisions of the Trademarks Registrar (e.g., regarding oppositions, as discussed below). An appeal may take from six months to two years.
In practice, a minority of cases of intellectual property infringement are actually resolved in Israeli courts. Moreover, Israeli courts almost always demand that parties submit to non-binding mediation. Approximately one-third of all Israeli claims, including claims of intellectual property infringement, are resolved through court-mandated mediation.
A large portion of patent infringement cases commence with a motion for a preliminary injunction seeking to stop the allegedly infringing activities, which is filed with the complaint for infringement. Under Israeli common practice, patent infringement trials commence not with validity questions, but rather with the issue of infringement. If the court decides that an infringement has occurred it will proceed to examine issues of validity – for example, questions related to novelty and non-obviousness. The parties rely on testimony in the form of affidavits and documents submitted to the court by witnesses. During the oral hearings, each witness is cross-examined on his or her affidavit by the other party. There is no obligation for parties to provide testimony from expert witnesses. However, due to the inherent technical aspects of most patent lawsuits, it is common to have expert witnesses in patent cases. Usually, the parties submit their experts’ opinions in the form of affidavits. The court also has the authority to appoint an expert on its own behalf for any technical matter in dispute between the parties, in which case the court-appointed expert’s opinion will carry much greater weight than those of the parties’ experts. Any expert, whether appointed by the court or the parties, may be cross-examined on his or her opinion on behalf of the other party (a court-appointed expert may be cross-examined by both parties). The average length of a patent trial, from filing of the action until a final decision, is two and a half to three years. This includes pre-trial hearings, hearings regarding preliminary injunctions, and hearings on the main subject matter of the action.
An accused infringer (or any other person) may file a petition to the district court requesting a declaratory judgment of non-infringement or invalidity. In the case of invalidity, an accused infringer may instead choose to file a request with the Registrar of Patents for revocation of the patent due to invalidity.
The civil lawsuit for the infringement of intellectual rights must be filed before the Civil Courts of Civil Matters dependent on the Court of Appeals of the residence of the defendant and is resolved in accordance with the rules of the summary procedure.
Once the claim is deduced, the court cites the parties to the hearing on the fifth business day after the last notification. In accordance with what is stated in this hearing, the court will receive evidence when it deems it necessary, or will summon the parties to hear a sentence. Once the resolution that summons the parties to hear a ruling has been issued, the court has ten days to issue its ruling.
The sentence can be challenged through an appeal, which will be heard by the corresponding Court of Appeals.
Pursuant to law 2943/2001 (articles 6-11), special divisions have been established for Community (now EU) trademarks in the civil first and second instance courts of Athens and Thessaloniki.
The specialized courts also hear national trademark infringements when they are competent ratione loci. According to the prevalent opinion in legal theory and related case law, said divisions are not competent for preliminary proceedings (temporary restraining orders and injuctions). Said proceedings are tried by local courts. If, however, the Athens and Thessaloniki’s courts are competent ratione loci, the proceedings are introduced in the EU trademark divisions.
The specialised divisions also adjudicate civil cases relating to patents, utility models, industrial designs and models, supplementary protection certificates and generally, related matters of IP law. The first instance courts of Athens, Thessaloniki and Piraeus have a special division for copyright cases.
Proceedings are initiated via an introductory writ filed with the court and served upon the defendant.
The civil action starts with the filing of the lawsuit with the competent first-instance court. The plaintiff must serve the lawsuit within 30 days (or 60 days in case the defendant resides abroad) as from filing.
Parties must file their written arguments and evidence within 100 days (or 130 days for parties residing abroad) the action and a reply to each other's arguments and evidence must be filed within a further period of 15 days. Witness testimonies are submitted in the form of sworn affidavits. With the expiry of this term, the file is deemed as closed and, within another 15 days, the judge in charge of the case is appointed. The hearing of the case takes place within the next 30 days, without examination of witnesses in court, unless the bench decides that this is absolutely necessary.
The first instance decision may be appealed before the Court of Appeal within 30 days as of the notification of the decision or within 60 days as of its notification, if the party resides abroad.
In case no notification of the decision took place, the term is two years as of the publication of the decision.
An appeal in cassation, only on specific points of law, may be filed before the Supreme Court, (Areios Pagos).
The courts which have jurisdiction in intellectual property disputes in England and Wales are discussed above (see Question 17). Before commencing court proceedings, there are pre-action procedures which should be considered (see Question 23). Proceedings can then be commenced by the Claimant filing a Claim Form, followed by Particulars of Claim, which outline details of the case. In a typical case, once the Defendant has filed its Defence and any Counterclaim, and the Claimant has had the opportunity to respond, the case will then proceed to a Case Management Conference ("CMC").
At the CMC, the court will set out the timetable for the case, up to the date of trial. Between the CMC and the trial, the parties will exchange the names and evidence of their expert witnesses and fact witnesses, undertake and produce the results of any experiments, provide any models, photographs, survey evidence and any other evidence to be relied on at the trial, and give disclosure, if it is ordered.
Shortly before the trial, the court will hold a pre-trial review hearing to finalise matters such as the timetable for trial.
The trial itself will typically last 1-2 days in the IPEC and 3 to 15 days in the High Court. The trial commences with opening submissions from the parties, followed by any cross-examination of expert and fact witnesses, and closing submissions. Specialist intellectual property barristers are typically instructed to represent the parties in the Court, although in some circumstances solicitors and patent attorneys may also make submissions in Court.
An appeal is available if the judgment contains, or may contain, an error of law. An appeal will review only the law and how it has been applied - there is no re-trial of the facts of the case, and very limited ability to introduce new evidence during an appeal.
The primary remedies sought in civil litigation are typically:
- for an IP owner, a declaration that its right has been infringed, an injunction to prevent the other party infringing its rights, monetary relief (damages or an account of profits) and recovery of its legal costs, plus interest; and
- for the alleged infringer, an order that the IP right is invalid and/or that it is not infringed by the allegedly infringing acts, plus recovery of its legal costs and interest.
The jurisdiction of the court is broad and the type of relief awarded by the court therefore continues to evolve to adapt to developments in the commercial and technical environment of disputes.
Civil suits and criminal cases can be initiated before Intellectual Property Tribunals having jurisdiction which is determined by the Defendant’s place of business or residence.
The complete process of filing the suit is that it is filed along with interlocutory injunction application. After preliminary hearing, it is the discretion of the court either to grant interim injunction restraining the infringer to use the mark or issue notice to the defendant for appearing in Court. If the infringer avoids appearing in court on the said notices the court passes orders for publication of the notice in the newspaper. If the infringer attends the court usually grants time to the infringer for filing defence and objection to the injunction application and then hearing is fixed to decide the injunction application. After decision on the injunction application, the main suit proceeds, during which the court records evidence of the parties, fix it for final arguments and decision. The whole procedure takes a long time but if injunction application is allowed, then such injunction persists till final decision in the suit.
Reliefs may be sought such as injunction, delivery of infringing materials, rendition of accounts and damages.
In Criminal matters, the Tribunal issues bailable warrant of arrest against the infringer.
Yes, appeal is available to any party who is aggrieved by any order or judgment of the court.
The Administrative Court and the civil judges have the jurisdiction regarding intellectual property matters in Ecuador. Most trials have a single hearing in which the judgement is delivered, but others have two hearings in which the judgement is delivered in the second. Judgements delivered on the Administrative Court cannot be appealed, but those delivered by civil judges can.
Time of judgement depend on the dates the judges decide to hold the hearing, which are usually around three to five months after filling the lawsuit or after the first hearing (if applicable).
Federal courts have jurisdiction over patent law under the Patent Act, enforcement of trademarks (registered and unregistered) under the Lanham Act, and federally-registered copyrights under the Copyright Act. Complaints are filed in federal district court where venue is proper. After a complaint has been filed and served on the defendant, the defendant files an answer and discovery begins. The amount of time that passes between filing of the complaint and judgment from the court can vary between one to three years, depending on the docket of the court. Trials can be carried out before ultimately resolving the matter and the trials are decided by a jury or by the judge in a bench trial if the right to a jury trial has been waived. Intellectual property owners may be entitled to monetary damages, injunctive relief, or both. Litigants in a patent dispute have the right to an appeal to the Court of Appeals for the Federal Circuit, which usually provides a decision within twelve to eighteen months. Otherwise, final judgments can be appealed to a geographically-located court of appeals.
The High Court has jurisdiction. Nature of the dispute will determine if the dispute is to be by way of a Writ or Originating Summons.
Writ: Witness testimony through trial.
Originating Summons: affidavit evidence only.
Time to judgment is approximately 9-12 months.
Reliefs available depend on the subject matter and generally includes damages, injunctions and costs. Appeal is possible to the Court of Appeal and finally to the Federal Court.
Civil cases involving intellectual property violations are cognizable by the Regional Trial Court designated by the Supreme Court as a Special Commercial Court. The action may be filed with the proper court with territorial jurisdiction over the complainant’s residence or the residence of the prospective defendant, although venue is purely a matter of procedure and may thus be waived by both parties through prior agreements such as venue clauses, or by the defendant failing to object to an improper venue.
The proceedings are initiated by the filing of a Complaint and the payment of the required docket fees. The Complaint must be under oath and must also contain: (1) a Certificate of Non-Forum Shopping, or essentially a sworn declaration that the complainant has not initiated a case involving the same facts, issues, and parties in any other court or tribunal (e.g. the IPO), and (2) affidavits, in question-and-answer form, attesting to the allegations. If there is no Special Commercial Court designated in the place where the action is filed, the Complaint is raffled to the proper branch. After the raffle, summons must be issued by the court within five (5) days.
Upon receipt of the summons, the defendant must file an Answer to the Complaint, which should likewise include affidavits of the same format supporting the defense. Unlike in ordinary civil actions, the failure to file an Answer allows the court on its own (motu proprio or ex mero motu) to render judgment as may be warranted by the allegations of the Complaint and the evidence or affidavits on record.
Within thirty days after the filing of the Answer (or upon joinder of the issues of the case), either party may resort to discovery. Five (5) days thereafter (or from the lapse of the allowed period for discovery), the court shall set the case for pre-trial and, afterwards, mediation and judicial dispute resolution, if necessary. If said alternative modes of dispute resolution fail, pre-trial is terminated. If the parties decide to submit the case on the basis of position papers, the parties may file the same for the consideration of the court. On the other hand, if there are matters to be clarified, the court may set the case for clarificatory hearings and afterwards require the submission of position papers. If the court deems a trial necessary, trial then proceeds, with the affidavits above substituting for direct examination of witnesses, and culminates with the order for the parties to submit their respective draft decisions. The court will then proceed to render judgment.
A party aggrieved by the decision of the court is not allowed to seek its reconsideration, since a motion for reconsideration is a prohibited pleading. Instead, it must appeal the decision of the court to the Court of Appeals.
For criminal cases, the case is initiated by filing a complaint-affidavit with the Department of Justice or the office of the prosecutor that has jurisdiction over the offense charged. The rules then follow the general rules of procedure for criminal cases, except that the parties must appear for mediation over the civil aspect (i.e. damages) of the criminal action. Under Philippine law, however, the criminal liability itself cannot be settled or compromised.
In either case, a deposition of a witness abroad may be taken upon application by the interested party and within six (6) months from the date of the order allowing the deposition.
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.
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)
How to start
Time to trial
Time to judgement
Any available appeals?
Federal Administrative Court
By filing an initial pleading
1 - 2 years; however, it would depend on the complexity and particularities of the case.
2)Response by the defendant
4)Revision of evidence
6 - 8 months; however, this time would depend on the complexity and particularities of the case.
Federal Circuit Court
Mexican Supreme Court
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.
The proceedings start when an action is filed with the Patent and Market Court, which has exclusive jurisdiction for proceedings regarding intellectual property rights. After this, exchange of documents follows where the arguments and evidence are first presented in writing and later at the hearing, orally. Decisions rendered by the Patent and market Court can be appealed to the Patent and Market Court of Appeal at second instance and to the Supreme Court at third instance. From the date of trial it takes about six weeks for the judgment to be made available.
An action brought due to a breach of the Act on Protecting of Trade Secrets is tried before a general court since the Patent and Market court does not have jurisdiction in these matters.
Patents - The time period for the submission of a claim to a court for a patent infringement is three years from the time when the patent owner knew or should have known that his rights had been violated. A decision of the first instance court can be appealed to the Riga Regional Court as a court of appeal. Decisions of the lower courts might be reviewed by the Supreme Court. A written statement of claim must be submitted to the court along with payment of fees to commence proceedings. The standard court fee is 220 EUR. On average, it takes 6-8 months to reach a trial.
- Trade marks - An action should be brought in the Vidzeme Suburb Court of Riga City. The standard civil proceedings apply to these cases. The proceedings are oral. One instance usually takes around 12 months to be accomplished, however it may take longer due to postponement if asked by parties. Decision of the court is appealable with the Riga District Court. Costs recovery is available only for Attorney’s at Law.
- Copyright (including database rights) - An action should be brought in the civil court by general jurisdiction. The standard civil proceedings apply to these cases. The proceedings are oral. One instance usually takes around 12 months to be accomplished, however it may take longer due to postponement if asked by parties. Decision of the court is appealable with higher instance Court. Costs recovery is available only for Attorney’s at Law.
The fact that Vietnam has not yet established any specialized intellectual property court (IP court) up to now results in the practice that all IP disputes are deemed as civil or commercial ones of which jurisdiction of first instance hearing would belong to district-level courts and provincial courts nationwide. However, where the profit purpose are all aimed by both plaintiff and defendant or the dispute has foreign elements (one of the litigants are foreigner/foreign entity), jurisdiction of first instance hearing shall bestow upon provincial courts, otherwise it belongs to district-level courts. The jurisdiction of court by territories is determined to be the court of the locality of residence or work by defendant (natural person) or the locality of head office of defendant (organisation or legal person). The mode of hearing in Vietnam is still physical one also known as in-person hearing (traditional style) meaning no other means of hearing (eg. in a UDRP case, no in-person hearing is conducted) are available.
Time limit for acceptance of the case: 5 working days.
The time limit for hearing an instance judgment: 2 months counting from the date of acceptance of the case.
In practice, it may take 6 months to 12 months to receive a first instance judgement.
Interim and/or permanent injunctions are available in the IP Law. Interim injunction also known as provisional urgent measures may be awarded by a court upon or after the initiation of a lawsuit and before hearing the counter-opinion by the party that will be affected by such interim injunction if one of the following cases occurs:
(a) There is a danger of irreparable damage to such intellectual property right holder;
(b) Goods suspected of infringement of intellectual property rights or evidence related to the act of infringement of industrial property rights are likely to be dispersed or destroyed unless they are protected in time.
Upon release of first instance judgement, one of the litigants is entitled, within a period of 15 days from the date of judgment, to appeal against it. In case of appealing against a decision of temporary suspension or suspension of a proceeding made by the court of first instance, the time limit for lodging an appeal shall be 7 days from the date on which the appellant receives the decision.
For patents, utility models, trademarks, designs, copyright and unfair competition, the relevant pieces of legislation concentrate court proceedings with specified courts in each Federal State.
Proceedings are initiated by a complaint. The court may then order written proceedings or schedule an early oral hearing.
The time to trial depends on the procedure chosen by the court in regular proceedings, and can vary from a few months until the oral hearing to over a year. Following the oral hearing, the court will close the proceedings and issue a decision in due course.
Remedies available include injunctive relief, disclosure of information and rendering of accounts, damages, destruction of goods, publication of the decision etc.
In preliminary injunction proceedings, a decision can be obtained within 24 to 48 hours. Remedies available include, depending on the IP right involved, injunctive relief, a very limited claim for disclosure of certain information, surrender of goods to a sequester, right to inspection.
IPR infringement action must be filed by sworn application before the First Hall of the Civil Court, which is a court of superior jurisdiction. However, patent infringement and revocation actions must be filed before the Patents Tribunal (there exists another procedure for revocation actions to be filed, as previously mentioned, with the Comptroller of Industrial Property).
When the claim is a monetary claim for damages, the competence of the Maltese courts will be decided on an ad valorem basis and therefore the case may be heard before the courts of inferior jurisdiction or the courts of superior jurisdiction, according to the value of the claim. Therefore, if filing a strict IP infringement claim for a declaration of infringement, and this accompanied by a claim for damages, such an application for action would have to be filed before the First Hall of the Civil Courts or the Patents Tribunal according to the lex specialis applicable in each case.
Once an application for a case on the merits is filed it is usually appointed for a first hearing within a few weeks of application. The court case before the First Hall of the Civil Court starts off with a first hearing in which the parties give an introduction to the case and declare what type of evidence they wish to file – whether documentary or viva voce witnesses or both. The next court sessions will be dedication to the hearing of witnesses, starting with the plaintiff’s witnesses and followed by defendant’s witnesses and cross-examinations. Should there be any preliminary pleas, these will also be heard at the beginning of proceedings. The length of proceedings would usually depend on this stage. Following evidence, the case usually proceeds to the parties submitting a note of submissions which may be accompanied by oral submissions held before the court.
Following that, the court will then pass judgment, with any of the parties having the right to file an appeal to the Court of Appeal if they feel aggrieved. If judgement awards damages, the losing party will usually pay same together with the award of costs given by the court – this is usually dealt with in the same decision. Should the losing party fail to pay that which was awarded by the courts, executive warrants may be filed, such as the executive garnishee order to freeze and deposit into court any assets held by the losing party equivalent to the amount awarded.
The Federal venue has jurisdiction for reviewing decisions taken by the BPTO or SNPC, in terms of granting or not granting an IP right. On the other hand, the State venue has jurisdiction over determining the infringement of an IP right, as well as in non-infringement declaratory actions.
After a complaint has been filed and served to the defendant, the parties can choose whether or not to take up preliminary mediation procedures. In case it doesn’t occur or the mediation doesn’t have positive results, the defendant needs to submit an answer and the discovery begins. After discovery phase, there may be a phase for production of expert witness report. After that, the judge will enter into judgement, without the need for jury trial, and issue a ruling. The defeated party may appeal to request a review of the ruling to the Court of Appeals. The Court’s decision may be further appealed to the superior courts if a federal law or the Constitution itself is disregarded during the hearing of the appeal. The appeals to Superior Courts will be heard only if admitted by the Courts, which is rarely the case.
The time elapsed from filing to ruling hugely varies depending on the IP right involved. For patents, for instance, time to the first judgement can take between 3 and 5 years. On the other hand, the award of relief may be conceded shortly after the complaint is filed, if the judge understands that the requisites for granting the injunction are present.
Prior to the proceedings, the rights holder will typically send a cease and desist letter to the alleged infringer. Should the alleged infringer disregard the warning letter, the rights holder may initiate legal proceedings. Legal proceedings will typically be initiated by a writ of summons. For a case brought before the ordinary courts, an average time in the first instance is somewhere around 6-8 months.
The Oslo District Court is the mandatory legal venue for patents, trademarks, designs, copyright protected works and plant variety rights cases relating to actions concerning a review of a decision made by the KFIR and actions concerning invalidity and infringement.
Requests for a preliminary injunction follow the ordinary rules of venue. A request for preliminary injunction may therefore be filed with the district court of the ordinary venue of the defendant, or with the district court where the business enterprise's head office is located, according to the Register of Business Enterprises.
However, if an infringement or revocation action is already pending, the request for a preliminary action must be filed with the court handling the ongoing action.
From the date of trial it takes about six weeks for the judgment to be made available, whereinafter an appeal must be filed within one month.