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Commercial Crime Services

International Guide toIP Rights Enforcement

First Edition 2006

Compiled by the ICC Counterfeiting Intelligence Bureau

CIB IP Rights Enforcement Guide

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ICC COMMERCIAL CRIME SERVICESCOUNTERFEITING INTELLIGENCE BUREAU (CIB)

Counterfeiting is one of the fastest growing economic crimes worldwide. It threatens the economies of developed and developingcountries alike, undermines trading relations, scares off vital new investment, and increasingly endangers public health andsafety. What was once a “cottage industry” has developed into a sophisticated network of organised crime.

Not only clothing and other fashion accessories are affected. Counterfeiting has spread at an alarming rate to electrical andelectronic goods and components, machines and equipment, spare parts of all types, pharmaceuticals and even high technologyproducts.

Counterfeit products account for about 5% of world trade, representing about US$250 billion annually. Counterfeiting alsodestroys jobs in the industries on which it preys. Estimated job losses are 120,000 per year in the United States, and 100,000per year in Europe over the last 10 years.

PURPOSE

In response to demands from world business, the International Chamber of Commerce formed the ICC Counterfeiting IntelligenceBureau (CIB) in 1985 as a focal point for industries and other affected interests worldwide to fight this growing problem.

The CIB is unique. It is the first international business initiative to go beyond political lobbying with practical prevention andenforcement support for police and customs authorities - a vital element in the campaign against the manufacture and distributionof counterfeit goods around the world.

A non-profit making membership organisation comprising members from various countries and sectors. The CIB includes largemultinational companies, trade associations, law firms and technology producers.

KEY SERVICES

• Information on counterfeits and counterfeiting throughout the world• Investigations aimed at targeting production and shipments of counterfeits world-wide, monitoring markets and taking

enforcement action• Publications - a monthly Confidential Bulletin which deals with all aspects and issues relating to counterfeiting, including

counterfeiting techniques, anti-counterfeiting strategies, legal developments and anti-counterfeiting technologies. Inaddition, the annual CIB Anti-Counterfeiting Directory, as well as Guides and Special Reports on counterfeiting.

• Research and Consultancy Services including market surveys, authentication of documents and security hologramsand devising effective anti-counterfeiting strategies.

• Legal advice - providing legal advice and coordinating litigation in different jurisdictions against those involved incounterfeiting. Liaising with government departments and law enforcement agencies in actions against counterfeiters.

• Network access to the Counterfeiting Intelligence Bureau’s Counterforce Network of law firms throughout the worldwho specialise in intellectual property and anti-counterfeiting work. In addition, advice and assistance from the CIB’sCountertech Network who produce technologies which protect and authenticate products. Countersearch, the CIB’slatest network, brings together the resources of specialist investigators throughout the world.

• Conferences and Workshops - two conferences on counterfeiting each year - one in Europe and the other in NorthAmerica - providing education and networking opportunities. In addition, an annual intensive workshop in the UnitedKingdom.

OPERATIONS

The CIB protects industry from the damage done by international counterfeiting by gathering intelligence, making undercoverenquiries and providing expert advice and training. It conducts vigorous investigations worldwide into the sources and distributionof fake products. CIB investigators compile the criminal evidence necessary to enable national law enforcement agencies,either police or customs, to make arrests and to seize counterfeit goods.

The CIB is recognised by the British Home Office as a bona fide agency and has a formal memorandum of understanding withthe World Customs Organisation (WCO). In addition, the CIB organises regular seminars to promote awareness of the problemsposed by counterfeiting and ways in which companies can minimise their vulnerability. As part of its anti-counterfeiting operations,the Counterfeiting Intelligence Bureau operates the Hologram Image Register (HIR) for the International Hologram Manufacturers’Association (IHMA). It also encourages the use and development of anti-counterfeiting technologies which provide productauthentication and protection. The CIB provides a complete range of consultancy services, including market research andanalysis and market monitoring.

International Chamber of Commerce

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The CIB has created three world-wide networks to assist victims of counterfeiting, “Counterforce”, “Countertech” and“Countersearch.”

RECENT ACHIEVEMENTS

Since its inception, the CIB has undertaken over 600 investigations in more than 35 countries of counterfeit products rangingfrom wall coverings and furniture to alcoholic beverages and pharmaceuticals. Notably, the CIB has:

• Worked on behalf of a leading sunglass manufacturer in investigating the production and distribution of fake productsand arranging for their seizure.

• Investigated the illegal sale of French electrical components through unauthorised distributors in Hong Kong.• Monitored the sale of counterfeit sportswear in markets for a leading international sportswear manufacturer and worked

closely with local law enforcement to effect seizures.• Investigated the sale of infringing wall covering designs in China and carried out raids and seizures on infringing

manufacturers.

Such successes have earned the CIB official recognition and cooperation from many governments and international organisations.CIB investigators enjoy close professional links with senior officials in government and law enforcement agencies in manycountries.

THE ICC and the CIB

The ICC, the world business organisation, complements the practical work of the CIB through its Commission on Intellectualand Industrial Property. The commission brings together experts from business and private practice all over the world andpromotes appropriate legislation for the protection of all kinds of intellectual property, including trademarks, patents and copyrights,at regional, national and international levels.

The ICC has members in more than 130 countries and enjoys first category consultative status with the United Nations and itsagencies.

MEMBERSHIP

Membership of the CIB is offered at two levels with differing subscription scales depending on the size of the organisation inquestion. Members are entitled to unlimited access to the centralised databases of ICC Commercial Crime Services, allinvestigative and other services at reduced rates, and monthly Confidential Bulletins on recent cases and suspect persons andactivities.

PUBLICATIONS

The CIB provides members with regular information to keep them in touch with all aspects of counterfeiting world-wide. Thisincludes monthly CIB Confidential Bulletins and periodic Special Reports.

ORGANISATION

The CIB has the support of its sister organisations, the International Maritime Bureau (IMB), Commercial Crime Bureau (CCB)and, as with the CIB, they provide specialised services. The IMB looks into shipping and trading fraud, whilst the CCB advisesbanks on investment and other banking frauds. All Bureaux are supported by a Cyber Crime Unit (CCU) which looks intocomputer and internet fraud.

CIB CONTACT DETAILS

Maritime House, 1 Linton Road, Barking, Essex IG11 8HG, UNITED KINGDOMTel: 44 (0)20 8591 3000 Fax: 44 (0)20 8594 2833

Email: [email protected] Website: www.icc-ccs.org

International Chamber of Commerce


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There can be little doubt that the enforcement of intellectual propertyrights is one of the most critical aspects of the war againstcounterfeiting and piracy. It is also arguably one of the most difficult.

Over the past decade, the laws of many countries have changedsignificantly to address the modern counterfeiting crime wave andprovide new and improved weapons for intellectual property rightsholders.

This Guide will provide a useful resource for all those seeking to protectand enforce intellectual property rights throughout the world. Althoughit provides but a snapshot in time of the civil, criminal and customsprocedures that afford redress to rights owners, it will not remain frozenin time. We plan to regularly update it and expand it to jurisdictionsthat are not so far included. It will be also be widely and freely availableto all those who may benefit.

I would like to thank all the member firms of the CIB’s Counterforcenetwork of lawyers specialising in anti-counterfeiting who have sokindly contributed to this Guide and to my colleague Andy Holderwho has done such an excellent job in editing it.

Peter LowePeter LowePeter LowePeter LowePeter LoweICC CounterICC CounterICC CounterICC CounterICC Counterfeiting Intelligence Burfeiting Intelligence Burfeiting Intelligence Burfeiting Intelligence Burfeiting Intelligence Bureaueaueaueaueau11111ststststst May 2006 May 2006 May 2006 May 2006 May 2006

FOREWORD

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GermanyPresented by

Lovells

FinlandPresented by

HH Partners OY

EgyptPresented by

Ibrachy & Dermarkar

DenmarkPresented by

Plesner

Czech RepublicPresented by

Kriz & Belina

ChinaPresented by

CUIPPC

BrazilPresented by

Dannemann Siemsen Advogados

AustriaPresented by

Gassauer-Fleissner

CONTENTS

BelgiumPresented by

Gevers & Partners


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15

20

26

33

41

47

53

60


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NetherlandsPresented byVan Doorne

MalaysiaPresented by

Tay & Partners

LithuaniaPresented by

Metida law firm of Reda Zaboliene

LatviaPresented by

Agency Tria Robit

KoreaPresented by

Kims and Lees

KenyaPresented bySaifam Ltd

IndiaPresented by

Anand and Anand

HungaryPresented by

Danubia

Hong KongPresented by

Margolis & Associates

CONTENTS

65

69

73

79

85

91

98

103

112

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TaiwanPresented by

Saint Island Int Patent & Law

SwedenPresented by

Lindberg & Saxon HB

Sri LankaPresented by

John Wilson Partners

SingaporePresented by

Tay & Partners

Saudi ArabiaPresented by

Majed M Garoub

RomaniaPresented byRominvent

PortugalPresented by

Abreu Cardigos & Associados

PolandPresented by

Patpol

NigeriaPresented by

Aelex

CONTENTSCIB IP Rights Enforcement Guide

118

124

130

135

146

151

154

160

163


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United KingdomPresented byRoiter Zucker

United Arab EmiratesPresented by

Afridi & Angell

ThailandPresented by

Tilleke & Gibbins

CONTENTS

169

177

183

190 INDEX TO CONTRIBUTORS

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AUSTRIA

Introduction

Austria is mainly a country where counterfeit items are imported, shipped through and sold.Austria still is an EC-country with ‘Schengen-borders’ and therefore, the transfer of counterfeititems is clearly an issue.

In Austria, the general civil law courts have jurisdiction over infringements of trademarks andcopyrights in the first instance. With regard to patents and design rights, the CommercialCourt in Vienna (exclusively for Austria) is competent to decide on infringements due to thefact that in such cases a senate of two judges and one patent attorney hears the case.

Criminal proceedings are more advisable in copyright and trademark infringement matters.They can also be initiated in those patent infringement and design matters that resemblecounterfeiting (criminal) pirate cases and are not sophisticated patent law matters, whichclearly would be wrongly addressed to criminal judges.

On January 1, 2008, the new Austrian Criminal Procedural Act will come into force and willdiminish the procedural rights of the rights holder in criminal proceedings against criminalinfringers: house-searches etc will no longer be possible in criminal proceedings. However,according to the EC-Enforcement Directive (Directive 2004/48/EC of the European Parliamentand of the Council of April 29, 2004 on the Enforcement of Intellectual Property Rights, OfficialJournal L 2004/157, 45), this should be compensated by respective rights in civil lawproceedings.

Note: Austrian law does not distinguish whether the owner of a national (Austrian) trademark,patent, design or copyright is a domestic or a foreign right holder.


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Civil Procedures and RemediesOverviewOverviewOverviewOverviewOverview

Civil law procedures are more expensive thancriminal law procedures. Therefore, civil lawprocedures are usually initiated in those cases wherethe infringer is not a very small dealer and thedefendant can thus expect cost reimbursement.Infringements carried out by a legal entity (residentin Austria or in the EU) and not private people areusually brought before the civil law courts. Criminallaw procedures are recommended if house searchesare warranted that may lead to seizures of counterfeitgoods or further evidence against the infringer. Inorder to obtain a criminal conviction of the committer,however, intentional infringement is required. In civillaw proceedings however, it is only necessary toprove “use in the course of business” as regardstrademarks, and simple and non-culpableinfringement of patent and design rights as well ascopyright.

PrPrPrPrPre-trial re-trial re-trial re-trial re-trial relief – interim injunctionelief – interim injunctionelief – interim injunctionelief – interim injunctionelief – interim injunction

Before the civil law court, a provisional injunctioncan be rendered upon application of the plaintiff ifthe substantiation of the claim is evidenced on aprima facie basis in the sense of “making credible”and not providing entire proof. This means that theplaintiff has to provide evidence with regard to theexistence of his rights and their infringement byevidence such as registry excerpts, affidavits andother documents like an expert opinion with regardto the infringement of a design or a patent. Theinjunction only is rendered with regard to the ceaseand desist order and not for other claims (such asdamages etc.). The judge can question witnessesoffered to him by either party outside of a hearingas informants. Upon serving of the injunction to thedefendant it comes into force immediately. The courtcan burden the plaintiff with the payment of a deposit(serving as a consideration of interests between theendangerment of the plaintiff and the interferencein the legal sphere of the defendant); in such casesthe injunction comes into force upon receipt of thedeposit by the court.

In regard to injunction proceedings and particularto Austria is the fact that no particular urgency ordanger is required; and injunctive relief can berequested as long as the claim as such is not time-barred.

Certainly an injunction, when rendered, also carriesa certain risk that it is not upheld in the nextinstances. If this is the case the plaintiff has toreimburse the defendant all damages caused to himby the injunction.

As regards timescale, a decision on a preliminaryinjunction can be obtained approximately within sixto eight weeks. It has to be kept in mind that hardlyany injunctions are rendered without giving thedefendant the opportunity to file a reply. If each partyfiles another statement and the judge hearswitnesses, a certain amount of time passes until thedecision is served.

Final injunctionFinal injunctionFinal injunctionFinal injunctionFinal injunction

The main proceedings take place after terminationof the preliminary injunction proceedings (if initiated).With regard to the infringement of an intellectualproperty right such as a patent, design, trademarkor copyright, the plaintiff can not only seek a ceaseand desist order (including removal/destruction ofinfringing signs/goods), but also for the renderingof accounts, payment on the basis of the renderedaccounts, disclosure of relevant information suchas source and channel of distribution and publicationof the court order upon costs of the defendant, andfinally payment of all legal expenses (based on thelawyers’ tariff including the expenses for a patentattorney on patent and design infringement cases)and other legally necessary expenses such as travelexpenses for witnesses, fees for experts etc.

DamagesDamagesDamagesDamagesDamages

Patent, Design and TPatent, Design and TPatent, Design and TPatent, Design and TPatent, Design and Trademarks Actrademarks Actrademarks Actrademarks Actrademarks Act:The defendant is liable to pay appropriateconsideration for the unlawful use of a patent. If thepatent infringement was carried out culpably theplaintiff can, instead of the appropriateconsideration, claim damages including lost profitsor the release of the profits made with the patentinfringement by the defendant. Irrespective of anyproof of damages, the plaintiff can ask double theappropriate consideration in cases where the patentinfringement was carried out with gross negligenceor intentionally. In particular cases the plaintiff alsocan claim immaterial damages.

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Civil Procedures and Remedies

Austria

Copyright ActCopyright ActCopyright ActCopyright ActCopyright Act:Generally, the unauthorised use of a work protectedby copyright entitles the plaintiff whose consent forits use should have been obtained to claim anappropriate consideration, even if the defendant hasnot acted culpably. Irrespective of the degree ofdefault, lost profits are also to be reimbursed by thedefendant if a culpable breach of the Copyright Actwas committed. Immaterial damages can beclaimed, too. The plaintiff, whose consent shouldhave been obtained, as reimbursement of culpablycaused material damages, unless higher damagescan be evidenced, can claim double of theappropriate consideration specified in the firstsentence of this clause. In case of unauthorisedcopying or distribution of a work of literature or art,the release of profits achieved by the culpableinfringement can also be claimed.

Account of prAccount of prAccount of prAccount of prAccount of profitsofitsofitsofitsofits

All relevant acts provide for the rendering ofaccounts by the defendant. These accounts haveto contain the relevant details in order to serve asbasis for the calculation of the payment claims ofthe plaintiff.

Obtaining furObtaining furObtaining furObtaining furObtaining further inforther inforther inforther inforther informationmationmationmationmation

All laws also - more or less recently - have beencompleted by provisions granting the plaintiff theright to be provided with details regarding the sourceand channel of distribution from the defendant, suchas producer, producing country, distributors,amounts of infringing goods etc.

Time scale and costsTime scale and costsTime scale and costsTime scale and costsTime scale and costs

Specialised judges decide civil law proceedings ininfringement matters fairly quickly. Generally adecision in the first instance can be obtained withinone year, depending on the number of hearings andnecessary expert opinions, and the appealprocedure to the court. Ordinary or extraordinaryappeal proceedings to the Austrian Supreme Courttake another one to two years.

The court and lawyers fees depend on the amountin litigation. Generally the court fees (unlessexceeding EUR 72.670, - as amount in litigation) inthe first instance can be assumed to range from EUR551 to EUR 1.082, in the second instance from EUR

848 to EUR 1.592 and in the third instance from EUR1.061 to EUR2.123. The lawyer’s fees on each sideshould not exceed EUR 6.000 in the first instance,and EUR 4.000 in the second and third instancesrespectively.

Criminal Procedures and RemediesOverviewOverviewOverviewOverviewOverview

Criminal law proceedings are generally less cost-effective than civil law proceedings. Criminalproceedings are usually more advisable ifinfringements are committed by a legal entity with aplace of residence outside of the EU or a privateperson. Not only can a criminal investigatory judgeorder the seizure of infringing goods withoutinvolvement of the other party, if the other partycannot be served by any court orders, a specialforfeiture proceeding can be initiated providing forthe destruction of the counterfeit goods. In particular,in cases of huge amounts of trademark infringinggoods which, for example, are shipped throughAustria by a Chinese (for example) consignor, theright holder’s highest interest is to have the goodsseized and finally destroyed, not the obtaining of anorder by an Austrian civil law court that can neverbe executed in China.

Moreover, if further counterfeit goods are suspectedto be stored somewhere in Austria it is relatively easyto obtain a house search order, if the right and theplausibility of such presumption are evidenced tothe court. Pre-trial investigations only trigger aminimal cost burden for the right-holder (usually notmore than EUR 150 to 200). If, however, the rightholder continues the criminal proceedings aftertermination of the pre-trial investigations and theaccused is not convicted, the right holder has toreimburse the costs of the criminal proceedings andthe costs for the defence of the accused.

Criminal proceedings are more advisable incopyright and trademark infringement matters, butthey can also be initiated in patent infringement anddesign matters that resemble counterfeiting(criminal) pirate cases and are not sophisticatedpatent law matters, which clearly would be wronglyaddressed to criminal judges.

On January 1, 2008 the new Austrian CriminalProcedural Act will come into force and will diminish


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Criminal Procedures and Remediesthe procedural rights of the rights holder in criminalproceedings against criminal infringers: house-searches etc will no longer be possible in criminalproceedings; however, according to the EC-Enforcement Directive (Directive 2004/48/EC of theEuropean Parliament and of the Council of April 29,2004 on the Enforcement of Intellectual PropertyRights, Official Journal L 2004/157, 45) this shouldbe compensated by respective rights in civil lawproceedings.

CopyrightCopyrightCopyrightCopyrightCopyright

The general criminal tribunal of first instance iscompetent to decide on copyright infringementmatters. If certain infringements listed in theCopyright Act are committed intentionally, a prisonsentence up to six months or a monetary fine up to360 daily rates can be imposed. In case ofprofessional infringement a sentence of up to twoyears can be imposed.

The Copyright Act also provides for the destructionand disablement of infringing goods and infringingmeans, upon application of the right holder andirrespective of the question of by whom they areowned. The owners, however, have to be summonedand have certain legal remedies with regard to theirrights.

TTTTTrademarksrademarksrademarksrademarksrademarks

The general criminal tribunal of first instance is alsocompetent to decide on trademark infringementmatters.

Generally, a monetary fine up to 360 daily rates canbe imposed on the person who intentionally isinfringing a trademark in the course of business. Incases of professional trademark infringement asentence of up to two years can be imposed. Thesame applies if someone is using a name, a firmstyle or a particular designation of an entity or asimilar sign for marking goods and services in thecourse of business in a way that is capable ofcausing confusion.

Use can be carried out in one of the following ways:

♦ affixing the sign to the goods, to the packagingthereof, or to objects in respect of which the serviceis rendered or is to be rendered

♦ offering the goods or putting them on the marketor stocking them for these purposes under that sign,or offering or supplying services there under

♦ importing or exporting the goods under the sign

♦ using the sign on business papers, inannouncements or in advertising

The Trademarks Act does not provide a separateprovision regarding the destruction and disablementof infringing goods and infringing means. However,such forfeiture proceeding can be carried outaccording to general criminal provisions as regardsthe forfeiture of goods intended or used forcommitting a criminal offence.

Patents and DesignsPatents and DesignsPatents and DesignsPatents and DesignsPatents and Designs

The criminal county tribunal in Vienna has exclusivecompetence for criminal matters with regard topatents and designs in Austria.

A monetary fine up to 360 daily rates can be imposedon a person who is intentionally infringing a patentor design in the course of business. In case ofprofessional trademark infringement a sentence ofup to two years can be imposed.

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Customs Procedures

Austria

OverviewOverviewOverviewOverviewOverview

Council Regulation (EC) No 1383/2003 (the“Regulation”) affords an intellectual property rightsholder a further means of protecting his rights. TheRegulation was implemented into Austrian law bythe Austrian Product Piracy Act 2004 (the “Act”).

In Austria, applications of right holders have to befiled with the following Customs authority:

Competence Center Gewerblicher RechtsschutzAckerweg 199500 Villach

TTTTTelephone:elephone:elephone:elephone:elephone:+43 / (0)4242 / 3028 - 39 or+43 / (0)4242 / 3028 - 41 or+43 / (0)4242 / 3028 - 52

Fax:Fax:Fax:Fax:Fax:+43 / (0)4242 / 3028 - 71 or+43 / (0)4242 / 3028 - 73

Email:Email:Email:Email:Email:[email protected]

WWWWWebsiteebsi teebsi teebsi teebsi te: www.bmf.gv.at/zoll/wirtschaft1446/produktpiraterie2871/

Application prApplication prApplication prApplication prApplication processocessocessocessocess

The requisite application forms are available fromthe address above.

If successful, the application will remain valid for aperiod of twelve months. This period can beextended for further twelve-month periods uponsubsequent application.

Within the form the rights holder must, amongst otherthings, provide the Customs authorities with:

• evidence that he owns or is entitled to use the rightssubject to the application and the existence of therights• a sufficiently detailed and technical description ofthe goods• any specific information that he has regarding thepattern of the infringing goods’ importation• relevant contact details of the applicant and/or hisrepresentative

The Customs Authorities, in accordance with theRegulation and the Act, also require the applicantto submit an undertaking according to Article 6 ofthe Regulation as Annex I-B, under which the rightsholder agrees to pay all costs and liabilities incurredby the Customs Authorities under the Regulation andthe Act and to inform the Customs Authorities of anyloss or restriction of his rights.

The Customs Authorities can also detain suspiciousshipments of presumably counterfeited goodswithout having obtained the prior application of theright holder. The right holder, however, in such a casehas to be notified within three working days and thenhas to file a customs application as described abovewithin three working days. If these conditions arenot met, the seized goods have to be releasedimmediately.

When the Customs Authorities detain suspectedgoods they notify both the rights holder and thealleged infringer of their action and of the estimatedor actual quantity and nature of the goods. In parallelwith this the Customs Authorities set the applicant adeadline of ten working days, within which time theapplicant either has to initiate civil or criminal courtproceedings in Austria, or file a declaration of theimporter/addressee that he renounces the goods.This deadline can be extended once upon requestfor ten more working days. Upon request, theCustoms Authorities will also inform the applicantabout available information such as the name andaddress of the declarant, consignee/consignor,importer/exporter and manufacturer.

PrPrPrPrProcess once goods arocess once goods arocess once goods arocess once goods arocess once goods are seizede seizede seizede seizede seized

Unless the importer/addressee has renounced hisgoods and has not filed an objection to the seizure,the applicant has to become active and prepare theevidence necessary for a criminal or civil lawproceeding if he wants to prevent the seized goodsbeing released after the (second) ten working days.

The rights owner therefore has to examine a sampleof the seized goods, which will be provided to himby the Customs where the goods were seized.Usually a representative of the rights holder willestablish an affidavit setting out in detail why thegoods are counterfeit and not originals.

Within the deadline maximum of twenty working days


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Customs Proceduresthe applicant has to file a civil law suit or initiatecriminal trial proceedings or pre-trial investigationsand has to provide evidence of this fact to theCustoms Authorities, who will then continue to havethe goods seized. In criminal proceedings, however,the Criminal Court files an order of court seizure ofthe goods, which is then detained with the CriminalCourt until termination of the proceedings.

GrGrGrGrGrey market goodsey market goodsey market goodsey market goodsey market goods

Grey market goods are not covered by the AustrianProduct Piracy Act and therefore are not detainedby the Customs Authorities.

The Austrian Trademarks Act, however, provides forthe trademark owner’s right to pursue grey marketimports from outside the EEA.

SummarSummarSummarSummarSummaryyyyy

The law firm of Gassauer-Fleissner RechtsanwälteGmbH currently acts for several (national andinternational) companies in different fields regardingproduct piracy in Austria. Its clients are mainly activein the fields of fashion (clothing and accessories),spirits, perfumes and cosmetics, games andelectrical equipment (including computer-hardwareand cameras) as well as toner cartridges.

The firm also represents clients in cases of a singleseizure of only one item (which often happens whentourists return from holidays in Thailand, for example.Such people cannot normally be pursued becauseprivate persons owning one item will not beconvicted for intentional acting and are also notacting in the course of business). In these casesthe firm sends an information letter to the addresseewith the notification that a counterfeit was boughtand that further action could be pursued under therelevant legal Austrian provisions.

The firm says that amongst counterfeiters it iscommon knowledge which rights holdersaggressively pursue their rights and which does notcare. However, it also notes that some rights holders,in particular in the luxury goods sector, also see thecounterfeiting of famous brands as reassurance thattheir brand is “in” and demanded.

Generally, Austria is a country with a high level ofprotection of intellectual property rights asdescribed.

Gassauer-Fleissner Rechtsanwälte GmbH stronglyadvises and supports clients to file Customsapplications and to provide the Customs Authoritieswith as many details as possible, something thatcan be hard to do when secrecy is an issue.Obviously, rights holders do not like to releaseinformation about internal details on how originalscan be recognized because such information couldbe a valuable tool for sophisticated counterfeitersto make their products even more difficult to detectas counterfeits.

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BELGIUM

Introduction

Belgium is undoubtedly a platform for the trade in goods infringing intellectual property rights.This is essentially due to two factors. First, the infrastructure and the central position in theEuropean Community: Antwerp is the second largest container harbour in the Community andBelgium hosts several International Airports which serve as major hubs for airfreight transport.Furthermore, Belgian legislation on infringement of intellectual property rights is in certainaspects incomplete. For example, only infringements of trademarks and copyrights are criminallysanctioned. Infringers are well aware of this situation and turn it into profit: they do not have tofear severe sanctions in case they get caught; all they risk is losing the shipment of counterfeitgoods.

This being said, Belgian Customs are by far the most efficient within the European Communityin the fight against counterfeiting and piracy. According to the 2003 statistics, Belgian Customsseized more than 55 million infringing products, which represent nearly 60 percent of the totalamount of goods seized in the Community. This shows that despite the legal framework, afruitful cooperation between law enforcement authorities and rights holders is possible inBelgium.

Under Belgian law the civil and criminal procedures, and remedies available to rights holders,essentially depend on the intellectual property rights they own. This makes enforcementcomplex. The respective advantages of the available procedures and remedies have to beweighed against the economical interests of the rights holders. In straightforward infringementcases rights holders will, whenever possible, opt to file a criminal complaint in order to ensurethe goods are immediately taken out of the market. If the infringer is known and solvent therights holders may, in parallel, claim damages off the infringer. The major advantage of criminalprocedure is that the case is pursued by the Belgian authorities. In more complex matters, andin case the infringement is not criminally sanctioned, rights holders will have to take civil action.The obvious advantage of this is that the procedure is in the sole hands of the rights holders.However, the backlog in the Belgian courts may be viewed as a deterrent for filing civil actions.


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Civil Procedures and RemediesUnder Belgian civil procedural law the classicprocedures and remedies are available to allintellectual property rights holders.

It is also worthwhile examining in more detail theparticularities available to rights holders under theBelgian legal system: the ‘descriptive seizure’ (saisiedescription – be-schrijvend beslag) and the ‘ceaseand desist action’ (action en cessation –stakingsvordering). Both of these measures can bevery efficient weapons in the fight againstcounterfeiting and piracy.

PrPrPrPrProcedurocedurocedurocedurocedureseseseses

Regular civil proceedings on the merits (procedureau fond - bodemprocedure) are open to the ownersof all intellectual property rights. The court of properjurisdiction will however depend on the nature ofthe intellectual property right that has been infringedand the parties’ activities.

All classical remedies are available in proceedingson the merits: damages (including for lost profits,dilution of the right, costs for storage and destructionof the infringing goods, and, since a decision of theSupreme Court, reasonable attorney and expertfees), orders to cease and desist the infringement(including recall actions) coupled with a lump sumpenalty, publication of the judgement, etc. In caseswhere infringement of the intellectual property rightis committed in bad faith, the rights holder may claimthe moulds and matrices and the transfer of thecounterfeiters’ profits (the latter implies examinationof the accountancy).

The main deterrent for rights holders to make use ofproceedings on the merits is the backlog of casesin the Belgian courts.

Inter partes summary proceedings (référé – kortgeding) and ex parte summary proceedings(procédure unilatérale en extrême urgence –eenzijdig verzoek met hoogdringendheid) initiatedbefore the presidents of the courts of properjurisdiction are also available to rights holders. Inthese actions, the applicant may seek an interiminjunction based on the alleged breach of anintellectual property right. Normally these measuresinclude orders to cease and desist the infringementcoupled with a lump sum penalty and, in case of‘absolute necessity’, the sealing of the goods and

the appointment of a sequestrator and/or a judicialexpert. Obviously, inter and ex parte proceedingscan only be used when it can be shown that theclaim is absolutely necessary (ex parte proceedings)or urgent (inter partes proceedings). They may notprejudice the merits of the case, meaning that thejudge having to decide on the merits of the case isnot bound in any way by the decision handed downin summary proceedings. Finally, theoretically, adecision issued in summary proceedings ceasesto be enforceable if ‘regular’ proceedings on themerits are not initiated within a reasonable period.In practice however, the parties will very often settlethe dispute after the summary proceedings.

The ‘Descriptive SeizurThe ‘Descriptive SeizurThe ‘Descriptive SeizurThe ‘Descriptive SeizurThe ‘Descriptive Seizure’e’e’e’e’

The descriptive seizure (akin to Anton Piller orders)is a very efficient weapon that allows rights holdersto gather evidence of the existence and scope ofthe infringement of their intellectual property rights.In ex parte proceedings before the competentseizure judge, the rights holder has to establishprima facie the existence and validity of hisintellectual property right and the likelihood of aninfringement of these rights by a third party.

When deciding whether to grant or to deny thedescriptive seizure, the seizure judge will have toweigh up the parties’ respective interests (e.g. verifythat the aim of the procedure is not industrialespionage).

If he is satisfied with the rights holder’s claim, he willappoint a court expert and order him to visit thepremises where the alleged infringement is takingplace. The expert will descend on the spot togetherwith a bailiff, a locksmith, a representative of therights holder, and, if necessary, the police. Usually,the expert’s mission includes a description of theallegedly infringing items, an evaluation of thestocks, and a thorough examination of theaccountancy. In clear-cut cases, rights holders caneven obtain the effective seizure of the disputedgoods. The expert will file its report with the seizurejudge. As the descriptive seizure is only a ‘prelude’,the rights holder has 30 days from the filing of theexpert’s report to proceed on the merits. To date,the Belgian descriptive seizure is one of the mostefficient procedures, as it is carried out by an expertwith a solid background in intellectual property andaccountancy.

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Belgium

The ‘Cease and Desist Action’The ‘Cease and Desist Action’The ‘Cease and Desist Action’The ‘Cease and Desist Action’The ‘Cease and Desist Action’

The cease and desist action consists of asking thePresident of the Court of proper jurisdiction to handdown an order preventing the defendant from furtherinfringing an intellectual property right. The mainadvantage of this action is that the Presidential orderis a decision on the merits, handed down after anexpedient procedure, akin to summary proceedings.Proof of urgency is not a prerequisite. The successfulclaimant can obtain an injunction against theinfringer, coupled with a lump sum penalty. In somecases, the President has ordered publication of thejudgement. However, it is not possible to obtaindamages in a cease and desist action. This beingsaid, its expediency and effectiveness outweigh thisdisadvantage.

Under Belgian law only trademark and copyrightinfringements are sanctioned as a criminal offence.Infringements of other intellectual property rightshave to be pursued in front of the civil courts.


Trademark infringements are provided for by a lawfrom 1879 (Manufacture and Trade Marks Article 8),which establishes ‘counterfeiting’ of a trademark asan offence. This offence requires the reproductionof a mark on unlawful products which are put on themarket with a view to harming the rights holder. Onlystraightforward trademark infringements are caughtby this law. The law also applies to whoeverfraudulently uses a counterfeit trademark, whoeverfraudulently affixes a trademark belonging to a thirdparty to his own products or other commercialdevices, and whoever puts products on the marketwhich he knows are counterfeited. Being anaccomplice to these acts is also a criminal offence.

The penalties provided for fraudulent trademarkinfringements are jail terms of eight days to sixmonths and fines of EUR 143 to EUR 11,000, whichmay be doubled if further infringements on the samegrounds are committed within five years following afirst conviction.

The criminal prosecution of trademark infringementsrequires the filing of a criminal complaint. Thecomplaint can be filed by any party harmed by the

offence, which includes the trademark owner, alicensee or any prejudiced party. In the absence ofa complaint the public prosecutor may only carryout preliminary investigations and even seize thegoods. However, he may not initiate criminalproceedings or entrust the case to an investigatingmagistrate.


Copyright infringements include any ‘malicious orfraudulent infringement of a copyright orneighbouring right’. More generally, it is a criminaloffence to manufacture, distribute, import, sell, rent,or advertise for sale or rental, or hold for commercialpurposes, devices, products or components, or toprovide services designed to circumventtechnological measures, which are principallydesigned, produced adapted or manufactured, toprevent or restrict acts with respect to subject matterenjoying copyright or related right protection, withouthaving obtained the right-holder’s consent(Copyright Law 1994, Article 80).

The penalties for copyright infringement consist offines of EUR 500 to EUR 500,000 and/or jail termsof three months up to 2 years.

PrPrPrPrProcedurocedurocedurocedurocedureeeee

The criminal procedure is started by the filing of acriminal complaint, either with the law enforcementauthorities (police, public prosecutor), or the filingof a criminal complaint with constitution of injuredparty with the instructing magistrate. Once thecriminal procedure is pending it is at the entirediscretion of the authorities whether they pursue thematter or not. The main advantage of criminalproceedings is that they are inexpensive. It may beseen as a disadvantage that the initiative of theprocedure is in the hands of the authorities. It isfurthermore important to note that once criminalproceedings are pending, it is not possible to bringcivil action on the same grounds.

Criminal Procedures and Remedies



18

Belgian Customs most successfully apply bordermeasures under Regulation (EC) 1383/2003. Thisprovision allows Customs to block goods suspectedof infringing certain intellectual property rights ontheir own initiative (ex officio) or upon the filing of anapplication for action by the rights holder, in orderto allow the latter to settle the matter under thesimplified procedure or to bring an action aiming todetermine whether an intellectual property right hasbeen infringed.

ApplicationApplicationApplicationApplicationApplication

The subject matter and scope of Regulation (EC)1383/2003 are defined in Articles 1 to 3.

Article 1 makes it clear that EU Customs may takeaction against suspected goods at the externalborders whatever the customs situation of the goods,including when they are entered for release for freecirculation, export or re-export, when they are foundduring checks on goods entering or leaving theCommunity, placed under a suspensive procedure,in the process of being re-exported or placed in afree zone or a free warehouse. However, once goodsare in free circulation within the Community (internaltransit) Customs can no longer apprehend them.

In this context, it is noteworthy that the Regulation isapplied by Belgian Customs whatever the customsstatus of the goods, including transhipment,although most of the cases concern imports (75%),exports (10%) and transit (14%).

Border measures may, in accordance with Article2, be applied to goods that constitute straightforwardtrademark ‘counterfeiting’, as well as ‘pirated goods’infringing a copyright or related right, or a designright. The Regulation also applies to goods infringinga patent, supplementary protection certificate, plantvariety right, designation of origin or geographicaldesignations.

Although Belgian Customs mainly apply bordermeasures to goods infringing trademarks (71%) andcopyright (28%), they do not hesitate to take actionagainst goods infringing other rights covered byArticle 2 of the Regulation. Under Belgian law andpractice it is also possible to enforce bordermeasures against moulds and matrices designedor adapted for the manufacture of goods infringingone of the cited intellectual property rights.

Article 3 (1) of the Regulation excludes parallelimported (grey market) goods and thosemanufactured under conditions other than thoseagreed with the rights holder. In the same vein,Customs cannot act against suspected goods ofnon commercial nature in travellers’ personalbaggage, provided they fall within the duty freeallowance of EUR 175 and there is no indication thatsuggests the goods are part of a commercial traffic.

Under Belgian law there is no national legislation onborder measures which widens the scope ofRegulation 1383/2003. Therefore, it is not possiblefor rights holders to take action against parallelimported goods, overruns (cfr Article 3 of theRegulation) and/or goods infringing intellectualproperty rights not covered by Regulation 1383/2003.

Ex ofEx ofEx ofEx ofEx officio actionsficio actionsficio actionsficio actionsficio actions

Provided Customs have sufficient grounds forsuspecting that goods infringe an intellectualproperty right they may under Article 4, on their owninitiative (ex officio), block the goods for 3 workingdays in order to allow the rights holder to file anapplication for action.

Belgium Customs voluntarily take ex officio actionsin order to alert rights holders to the infringement oftheir intellectual property (60% of all Customs actionsin 2003 were taken ex officio). It is generallyexpected that rights holders will follow up thesuccessful completion of ex officio actions by filinga preventive application for action.

Application for actionApplication for actionApplication for actionApplication for actionApplication for action

According to Article 2 (2) of the Regulation anapplication for action may be filed by rights holders,including rights holders’ stricto sensu, personsauthorised to use the intellectual property right andtheir representatives.

The conditions for lodging and processing theapplication for action are laid down in Articles 5 and6. The application for action is a standardiseddocument, containing all necessary information onthe intellectual property rights and the nature of thegoods, thus allowing Customs officials to recognizesuspected goods. The application itself has to beaccompanied by a declaration accepting liability

Customs Procedures

19

(which is a standard document provided for by theimplementing regulation) and, for applications filedby representatives, by a power of attorney form. InBelgium, the application of action has to be filedwith the Central Customs Administration. Theapplicant has to respect the Belgian language laws.

Owners of a ‘Community right’, such as a Communitytrademark, design, indication of origin or a plantbreeder’s right, may file one single application foraction which is then extended to other EC MemberStates.

The application for action will be dealt with by theBelgian Central Customs Administration within 30working days of its receipt. In the event that someof the mandatory information is missing, Customswill contact the representative or the rights holderto obtain more details.

There is no need for a guarantee and noadministrative fees for the treatment of theapplication for action may be requested.

Customs interventionsCustoms interventionsCustoms interventionsCustoms interventionsCustoms interventions

Belgian Customs lead in the development of ‘riskanalysis’, which consists of selecting shipmentswhich are physically controlled on the basis of criteriasuch as name and address of the consignee andconsignor, country of origin, transport route, etc.Once they have discovered goods suspected ofinfringing intellectual property rights, Customs willvery often contact the rights holder informally in orderto ask him to confirm or infirm their suspicions. Onlyafter this will the central Customs department issuethe rights holder with an official notification with theactual or estimated quantity or the actual orsupposed nature of the goods, in accordance withArticle 9 (2) of the Regulation.

With a view to establishing whether an intellectualproperty right has been infringed, the rights holderwill, upon request, be informed of the names andaddresses of the consignee, the consignor, thedeclarant or the holder of the goods and the originand provenance of goods. This information may onlybe used in conformity with Article 12 of theRegulation. The rights holder may also examine thegoods (often Customs send digital pictures) or takesamples (cf Article 9 (3) of the Regulation).

From notification, the rights holder has 10 workingdays to initiate proceedings to determine whetheran intellectual property right has been infringedunder national law or come to a settlement underthe simplified procedure. This term may be extendedonce, by an additional period of 10 days.

Simplified prSimplified prSimplified prSimplified prSimplified procedurocedurocedurocedurocedureeeee

The optional simplified procedure provided by Article11 has not yet been implemented under Belgian law.It has, however, for many years been possible toapply a procedure akin to the simplified procedure:the rights holder files a criminal complaint with thepublic prosecutor and the latter suggests the ownerof the goods abandon them in exchange for asettlement of the criminal action. This cost efficientprocedure has proved most successful in past years.

PrPrPrPrProceedingsoceedingsoceedingsoceedingsoceedings

Proceedings aiming to determine whether anintellectual property right has been infringed includea wide arsenal of measures, including the filing of acriminal complaint with or without the filing of aninjured party, and civil procedures (cease and desistaction, regular proceedings on the merits).

Storage and destructionStorage and destructionStorage and destructionStorage and destructionStorage and destruction

Under Belgian practice, after the period of 10 days,the storage costs will de facto have to be advancedby the rights holder, with the possibility of reclaimingthem from the infringers at the outcome of the civilor criminal procedure.

At the outcome of the procedure, goods found tobe infringing intellectual property rights will normallybe destroyed, except if the judge (or in case of asettlement, the parties) decide to the contrary.

Belgium

Customs Procedures


20

BRAZIL

Introduction

Brazilian Intellectual Property Legislation allows IP owners to tackle IP violations both underthe administrative sphere (embraces Border Measures requested before the Customs andpolice inquests before Police Departments) and the judicial sphere (civil and criminal actionsand respective injunction actions for urgent claims).

In this sense, and depending on the particular infringement, it is possible for the IP owner toaddress one of the remedies available or, alternatively, a combination of these remedies inorder to cease the infringement.

Civil measures are only appropriate if taken against individuals or legal entities provided withassets that are able to endure the claimed damages, something that does not occur frequentlyin cases of piracy.

Although it is not possible to recover damages under the criminal sphere, criminal remediesare much less time consuming and also less expensive than civil ones. For example, dependingon the IP right involved, criminal procedures can be used as the main tool for anti-piracycampaigns.

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Civil Judges tend to confer restraining orderswhenever the likelihood of prevailing on the meritsand the risks of irreparable harm are demonstrated.“Ex parte” injunctions are also available and arecommonly applied. The courts often afford actualand statutory damages.

PrPrPrPrPre-trial pre-trial pre-trial pre-trial pre-trial procedurocedurocedurocedurocedureseseseses

There are some procedures that are better for aplaintiff to take before an action is commenced, asthey may support his pleadings and may help himto assert his rights. One of the most commonly usedmethods is to warn the infringing party through awarning letter or through judicial measures; that is,through the Registry of Titles and Deeds, or bymeans of a court procedure where the judge ordersthe infringing party to respond, before thecommencement of the action.

The main purpose of this warning is to evidence theplaintiff’s efforts to attempt to settle the matteramicably and also to prove that the defendant hadknowledge that he was infringing. It is common togive an infringing party 30 days to reply before theplaintiff initiates an action.

However, such warning letters are not recommendedif the plaintiff wishes to apply for an injunction toseize the defendant’s infringing products, becausesuch a letter would alert the infringer that the plaintiffwas aware of his actions.

It may be also possible to carry out an investigationat the defendant’s headquarters.

PrPrPrPrPreliminareliminareliminareliminareliminary ry ry ry ry reliefeliefeliefeliefelief

The preventative procedure is considered a veryuseful tool in Brazilian civil law.

The ordinary civil procedure is a very slow-pacedremedy and there is a risk that the IP owner may beharmed by the end of the court action whenenforcing his rights. The rationale for the preventativeprocedure is to guarantee to the plaintiff his rightsand to compel the defendant to fulfill his obligationsin advance of the final ruling. This preventativeprocedure is better known in common law jurisdictionas an injunction.

The prThe prThe prThe prThe procedurocedurocedurocedurocedureeeee

Before allowing a prohibitive preliminary injunctionthe court must apply certain guidelines. Theguidelines for the granting of the preliminaryinjunctions are:

(1) The fumus boni juris: the plaintiff must show alarge probability that he has a good right whichdeserves protection.

(2) The periculum in mora: the judge has to beconvinced that the plaintiff’s right is threatened byan activity of the defendant and could be destroyedbefore a final decision on the merits is given.

In civil law, a preliminary injunction can be requestedas soon as the complaint has been lodged, and evenbefore the defendant knows of the action. This isespecially likely where there is evidence of greatrisk to the plaintiff’s rights. The judge may even granta preliminary injunction without an express requestby the plaintiff if he considers that summoning thedefendant would be ineffective.

In granting his preliminary injunction, the judge mayrequire the plaintiff to give a bond that guaranteesthe contingent recovery by the defendant of hiscosts.

Expedited prExpedited prExpedited prExpedited prExpedited procedurocedurocedurocedurocedureseseseses

The Brazilian Civil Procedure Code allows the plaintiffto obtain the remedy claimed before a final judgmentis given.

There are certain requirements, however, before thisremedy will be allowed:

(1) There must be unequivocal proof of thetruthfulness of the plaintiff’s allegation.

(2) There is a reasonable fear that the damageinflicted is, or would be, irreparable or would be verydifficult to repair.

(3) The defendant is abusing the process of law and/or his bad intention is clear.

This order will not be granted by the judge if there isa risk that the situation following such an order willbe irreversible.

Brazil


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Financial compensationFinancial compensationFinancial compensationFinancial compensationFinancial compensation

Damages can be claimed on the basis of:

(a) the benefits that would have been gained by theinjured party if the violation of his rights had notoccurred

(b) the benefits gained by the perpetrator of theviolation of the rights;

(c) the remuneration that the violator would havepaid to the proprietor or the aggrieved party for alicense which would have legally permitted him toexploit the subject matter of the rights.

Restraining orRestraining orRestraining orRestraining orRestraining ordersdersdersdersders

If the owner of the intellectual property right files aninjunction and obtains a favorable decision, thejudge shall order the defendant to stop selling theillegal products.

DeliverDeliverDeliverDeliverDelivery-up of infringing materialy-up of infringing materialy-up of infringing materialy-up of infringing materialy-up of infringing material

Delivery-up is common. However, if the infringer winshe can reclaim his goods.

TTTTTypes of crimesypes of crimesypes of crimesypes of crimesypes of crimes

The following actions in respect of intellectualproperty constitute crimes under Brazilian criminallaw:

(a) copyright violation(b) violation of patents, utility models, designs or industrial models(c) violation of a trademark(d) violation of a trade name, title or establishment and signage(e) violation of an advertising expression(f) the practice of unfair competition

Other crimes that may apply, generally, are:

(a) larceny by fraud(b) receipt of stolen goods(c) fraud in commerce(d) tax evasion

In practice, criminal proceedings are often used inintellectual property actions.

PenaltiesPenaltiesPenaltiesPenaltiesPenalties

The penalties established in Brazilian law for crimesagainst industrial property rights are imprisonmentand payment of a fine. Imprisonment can be in aclosed or an open prison. The sentence can varyfrom one month to one year, according to the severityof the crime committed. The law also allows for thepunitive alternative of the payment of a fine. Theamount of this fine will vary depending on the crimecommitted.

There is a Bill in course before the Brazilian NationalCongress (Bill no. PLC 11/2001) proposing toincrease the penalties for these crimes from two tofour years of imprisonment.

Regarding copyright violations, a new law waspublished (Law No.10,695/2003), whereby thepenalties were increased and also the legitimacy ofthe Public Prosecutor or the IP owner was defined.

According to the new law, imprisonment must be ina closed prison. The sentence can vary from two tofour years. The law does not allow for the punitivealternative of the payment of a fine.

This new law also created another type of crime.From now on it will be considered a copyrightviolation to publicly offer - without authorization - bycable, optical fiber, satellite, waves or any othersystem which allows the user to execute theselection of the object of the copyright or the meansto receive it at a time and place established, withthe purpose of a profit.

Private criminal actionPrivate criminal actionPrivate criminal actionPrivate criminal actionPrivate criminal action

A private criminal action is one where the offendedparty or his representative files the action. It is theoffended party who decides whether the criminalaction should be filed or not and he will conduct thecriminal prosecution himself. This action is availablefor crimes against patent privileges, utility models,industrial designs or models, trademarks, tradenames, titles or establishment or signage and withunfair competition. In these cases, the publicprosecutor will act with the special purpose ofassuring that legality will prevail during the wholeproceedings.



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Public criminal actionPublic criminal actionPublic criminal actionPublic criminal actionPublic criminal action

A public action may only be filed by the publicprosecutor where there is a copyright infringementand such infringement constitutes the reproductionin full or in part of any intellectual work for thepurposes of obtaining profit without the expressauthorization of the author. Such an infringement mayalso be a reproduction of an audio recording or anaudio-visual recording.

The public prosecutor will also act against an agentwho sells, displays for sale, brings into the country,acquires, conceals, or has available for salepurposes the original or a copy of an intellectualwork, audio recording or an audio-visual recordingwhich breaches copyright. Only the publicprosecutor is entitled to file this action, regardlessof any prompting on the part of the offended partyor the Minister of Justice.

Anyone is free to provide the public prosecutor withevidence of a criminal offence.

Criminal prCriminal prCriminal prCriminal prCriminal proceedings and civil compensationoceedings and civil compensationoceedings and civil compensationoceedings and civil compensationoceedings and civil compensation

To obtain damages caused by the commitment of acriminal act, the injured party may concurrently filea civil action or enforce a civil execution.

Other measurOther measurOther measurOther measurOther measureseseseses

Other measures available within criminal Iaw havespecific objectives.

The most common are criminal search and seizureand police measures of search and seizure:

(1) Criminal search and seizure is a criminalinjunction whereby the IP owner is allowed to collectproof of the infringement and request a technicalexamination of the proof. It is a judicial proceduremainly used to support the criminal action. It iscommonly used before a private criminal actioninvolving industrial property crimes. Only samplesof the infringing goods are seized so that a technicalexamination may take place, but the IP owner mayrequest an extension of the seizure.

(2) Police measures are filed before starting theproceedings in court and give the police authorityto seize all the infringing goods and start theirinvestigation.

(3) Police inquest (police raids or police measures)is an investigation in the criminal sphere wherebythe IP owner is allowed to collect proof of theinfringement and request a technical examinationof the proof. It is an administrative procedure mainlyused to support the criminal action. It is commonlyused before a public criminal action involvingcopyrights. All counterfeit products may be seized.

RequirRequirRequirRequirRequirements for filing a criminal actionements for filing a criminal actionements for filing a criminal actionements for filing a criminal actionements for filing a criminal action

The ability to prosecute a crime must be proved inthe first instance. Therefore, the owner should submitthe proof that he owns the property, and, for instance,any respective registrations.

In a private criminal action the injured party mustfile an application for a criminal search and seizureso as to collect evidence. Without this evidence thecriminal action cannot proceed.

Criminal searCriminal searCriminal searCriminal searCriminal search and seizurch and seizurch and seizurch and seizurch and seizureeeee

Criminal search and seizure is usually carried outbefore any police or judicial procedure, or duringthe police inquest.

After the filing of all documents to prove ownershipand prior existence of a right, the judge will decidewhether he will grant the order or not. Such an orderwill mark the beginning of proceedings, as it will allowthe requesting party to seize the criminal evidencenecessary to substantiate the crime.

Once a preliminary relief order is granted, the judgeshall issue the writ to search and seize. Once thishas been issued two court officers, along with twojudicial experts appointed by the judge, carry outthe search. They will verify the existence of thegrounds for seizure contained in the injured party’srequest and they will later prepare a complete report.

Only material strictly necessary for substantiatingthe crime will be seized. During the seizure, thejudicial experts will carry out a survey of the searchsite examining and describing material found andeverything that may amount to proof of a crime.Seizure of any products will be at their discretion.

The judicial experts also have the duty of preparingan opinion containing all information necessary toascertain the level of responsibility of the defendant.


Brazil


24

The expert must present his report within three daysof carrying out the order. At the same time, the expertshall answer the questions formulated by therequesting party, the public prosecutor and thejudge. The defendant has no opportunity toformulate questions or to intervene in any way duringthis preliminary proceeding.

The opinion of the experts is fundamental to theresult of the action. Because actions concerningintellectual property rights are rare, judges tend torely very heavily on the opinion of these specialists.An expert opinion that is unfavorable to therequesting party is subject to appeal.

ComplaintComplaintComplaintComplaintComplaint

A complaint is an initial petition formulated by theparty concerned. This is how a private criminal actionbegins. It is equivalent to the accusation offered bythe public prosecutor. It is formulated by attachingthe police investigation or some other relevantinformation. It is drafted by an attorney.

A complaint based on seizure and expertexamination will be admitted only within 30 days ofthe acceptance of the expert opinion. Once these30 days have passed, the ability to punish on thebasis of the expert opinion is extinguished.

Police measurPolice measurPolice measurPolice measurPolice measureseseseses

In contrast to the criminal search and seizuremeasures carried out by two court officers and twojudicial experts, the police may carry out a policeinquiry of their own and may use search and seizuremeasures to seize all counterfeit products,interrogate suspects and all people involved.

RequirRequirRequirRequirRequirementementementementement

The police inquiry amounts to an investigation bythe police in order to establish the existence of acrime and who has committed it. It is anadministrative procedure.

In order for a police inquiry to be instigated, therequest of the party concerned must contain:

(a) the facts, the circumstances and the law(b) the identity of the defendant and the reason forpresuming or being convinced that he is the author

of the crime(c) a list of the witnesses with an explanation of whythey are relevant.

The offended party must also prove that he has areal interest in acting in this action. So, for instance,he must substantiate from the start that he is thetitle-holder of the property violated by the perpetratorof the crime.

Scope of police measurScope of police measurScope of police measurScope of police measurScope of police measureseseseses

In contrast with the remedy of criminal search andseizure, in the police raid any and all instruments orobjects connected with the criminal fact are seized.This will be important to the offended party, becausenot only will he have the material necessary forsubstantiating the offence but also he will haveeverything that characterizes the crime as well.

Such a seizure will also represent a strongerpsychological blow to the perpetrator, because thepolice themselves are carrying out the search andseizure measures and will be determining the arrest.

Multiple prMultiple prMultiple prMultiple prMultiple preliminareliminareliminareliminareliminary ry ry ry ry reliefeliefeliefeliefelief

Through multiple preliminary relief it is possible forthe injured party to conduct search and seizuremeasures against many infringers concurrently, evenif the IP Owner does not previously identify them.The raids may take place everywhere the criminalact is being committed.

Destination of prDestination of prDestination of prDestination of prDestination of productoductoductoductoduct

Once the police search and seizure have beencarried out and the criminal action has been opened,if it is possible, the judge will order the destructionof all the infringing copies and all instruments andobjects that are connected with the criminal fact.However, it is more common to order destructionafter the final decision on thee merits of the case.

Such a procedure seeks to ensure that the offendedparty will not suffer any injury.


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Customs ProceduresOverviewOverviewOverviewOverviewOverview

It is important to stress that Brazil does not have acentralized Intellectual Property rights database.There is no formal procedure for the registration ofintellectual works before the Customs’ House.

In case an effective border control in Brazil isdesired, it will be necessary for the IPR holder tolodge a petition before the COANA (Portugueseshortening for General Department of the CustomsAdministration) as well as before each Brazilian port,asking the local Customs Authorities to double-check any importation bearing the mark owned bythe petitioner.

Besides the aforementioned petition, a meeting withthe Customs Authorities is extremely advisable. Byso doing, it will be possible to clearly explain theIPR owner’s concerns and to make the CustomsAuthorities familiar with the property; for instance,the intellectual property right involved.

Although Brazilian Customs do not have acentralized record system, the Customs authoritiesare conducting much retention of counterfeit goodsand are achieving very poitive results.

PrPrPrPrProcedurocedurocedurocedurocedureseseseses

According to article 198 of the Brazilian IndustrialProperty Law (Law n° 9.279/96) and article 554 ofthe Decree n° 4.543/2002, the Customs Authorities,ex officio or at the request of an interested party,may seize, at the time of checking, any productscarrying falsified, altered or imitated marks or a falseindication of source.

Once the goods are seized, the rights owner will beinvited to examine a sample. In case the infringingis confirmed, the rights owner then has ten workingdays to refer the case to the relevant Brazilian courtand provide the Customs Authorities with evidencethat he has begun the judicial proceedings.

In cases where the IPR owner does not file a courtaction requesting the definitive seizure of the goods,the importation proceeding will cease and theproducts will be released.

Brazil


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Introduction

CHINA

A unique feature of China’s intellectual property rights enforcement mechanism is the so-called “double-track system”; one track is judicial and the other administrative.

The Chinese judicial system has three judicial bodies that take care of intellectual propertyrelated cases. These are the Public Security Bureau (PSB), the People’s Procuratorate and thePeople’s Court. Among them, the PSB and the Procuratorate are only involved in criminalactions (the PSB takes care of investigation and the Procuratorate takes cares of prosecution),and the court takes care of all hearings of civil and criminal actions.

In most intellectual property infringement cases, the claimant prefers not to go through thejudicial authorities first, particularly in those cases concerning trademarks and copyright. Theadministrative authorities handle many more cases. According to statistics from the SupremePeople’s Court of the PRC, the courts of all levels in the country tried 8,832 first-instance civilactions and 385 criminal actions in 2004. According to statistics from the State Administrationfor Industry and Commerce (AIC), which handles trademark infringement and unfair competition,AICs at all levels dealt with over 40,000 cases in 2004. The preference for administrativeenforcement is mainly because it is less time and cost consuming, and imposes a lighterburden of proof on the claimant.

Between criminal action and civil action, the claimant in theory prefers the former. However, inpractice, numerous reasons force the claimant to have to adopt a civil action. One majorreason is that there is a higher ‘threshold’ for initiating a criminal action. For example, onlycounterfeiting and piracy can be pursued through criminal procedures; the illegal businessvalue of the counterfeit products must reach a certain amount (e.g., RMB 50,000, approximatelyUSD 6,000, for an individual in counterfeiting trademark cases).

27


The People’s Court has jurisdiction over infringementof trademarks, copyright, and patents. For industrialdesign rights, there are no particular laws orregulations in China yet, so remedy is usually soughtin the form of design patents, copyright or traderedress.

Interim injunctionInterim injunctionInterim injunctionInterim injunctionInterim injunction

In order to stop an infringer from continuing withinfringement activities prior to a full hearing by thecourt, the intellectual property rights holder canapply for an interim injunction from the court.

The Supreme People’s Court has issued threejudicial interpretations regarding the interiminjunction, namely: The Supreme People’s Court’sJudicial Interpretation on Issues of Applicable Lawsin Regard to Stopping Infringement Activities ofRegistered Trademarks and Preserving Evidencesprior to Hearing; The Supreme People’s Court’sRegulations of Issues of Applicable Laws in Regardto Stopping Infringement Activities of Patents priorto Hearing; and The Supreme People’s Court’sJudicial Interpretation on Issues of Applicable Lawsin regard to Trying Copyright Civil Disputes Cases.

In accordance with the provisions of these judicialinterpretations, the court can, upon the claimant’sapplication, grant a written order to stop theinfringement activities. The order shall be enforcedonce it is granted.

The applicant of the interim injunction shall offer anundertaking for damages (a sum of guaranteemoney) when he submits the application. In theevent that the action fails at hearing, the guaranteemoney will be used to recompense the allegedinfringer for any damage he suffers during theintervening period.

Timescale and costTimescale and costTimescale and costTimescale and costTimescale and cost

In accordance with the Civil Procedural Law of thePRC, cases being heard in common procedure shallbe concluded within 6 months of the case beingfiled by the court: cases with special circumstancescan have an extension of an additional 6 monthswith the approval of the chief justice of the court.Cases requiring a further extension have to be

reported to the higher-level court to seek its approval;second-instance cases shall be concluded within 3months from the case being filed by the second-instance court. The chief justice of the court shallapprove cases with special circumstances that needa further extension. However, the law does notregulate on the timescale of cases where foreignparties are involved, i.e., there is no deadline forsuch cases.

The fee schedule of the court for cases relating totrademarks, copyright and patents infringement isas follows:

Generally, the cost is RMB50 to RMB100 (USD 6 to12) per case; if dispute of financial compensationgets involved, the cost is to be charged inaccordance with the fee schedule for the casesrelating to properties.

The fee schedule for property cases is as follows:

1) if the disputed fund is less than RMB1,000,the court charges RMB50/case2) if the disputed fund is from RMB1,000 toRMB50,000, the court charges 4% of the fund3) if the disputed fund is from RMB50,001to RMB100,000, the court charges 3% of the fund4) if the disputed fund is from RMB100,001to RMB200,000, the court charges 2% of the fund5) if the disputed fund is from RMB200,001to RMB500,000, the court charges 1.5% of the fund6) if the disputed fund is from RMB500,001to RMB1,000,000, the court charges 1% of the fund7) if the disputed fund is over RMB1,000,000,the court charges 0.5% of the fund.

Lawyer’s fees for intellectual property infringementcases are charged in various methods, mainly asfollows:

1) hourly fee: USD200/hour for example2) package fee: USD5,000/case for example3) sharing of obtained compensation according toa ratio agreed by the lawyer and his client inadvance.

RemediesRemediesRemediesRemediesRemedies

The court can grant the following remedies to thewinning intellectual property rights holder in civilactions, including: interim injunction, damages,

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recovery of expenses, disposal of infringing goodsand materials/equipment for their production. All theremedies apply equally to both domestic and foreignrights holders.

Interim InjunctionInterim InjunctionInterim InjunctionInterim InjunctionInterim Injunction

An interim injunction is applicable to all civil casesrelating to trademarks, copyright and patents. Inorder to obtain the injunction successfully, it isparticularly significant for the rights holder to offerevidence that proves infringement acts are inoperation.

Damages and calculationDamages and calculationDamages and calculationDamages and calculationDamages and calculation

Damages are applicable to all civil cases relatingtrademarks, copyright and patents.


Damages for trademark infringement are regulatedin Articles 13, 14, 15 and 16 in the Supreme People’sCourt’s Judicial Interpretation Relating to ApplicationLaw in Hearing Trademark Civil Disputes. Basically,the court may calculate the amount of compensationon the basis of the calculating formula selected bythe claimant, including:

1) the amount of gain obtained as a result ofinfringement may be calculated by multiplying thequantity of sales of the infringing goods by the unitprofit of such goods sold; if the unit profit of suchgoods cannot be ascertained, the calculation shallbe based on the unit profit of the goods bearing theregistered trademark

2) losses caused by the infringement may becalculated by multiplying the amount of salereduction of the goods suffered by the claimant asa result of the infringement, or the amount of salesof the infringing goods by the unit profit of the goodsbearing the registered trademark

3) if it is difficult to determine both the amount ofgains obtained by the infringer from his infringementand the losses resulting from the infringementsuffered by the victim of the infringement, thePeople’s Court may rely on the claimant’s requestor use its discretion pursuant to Clause 2 of Article56 of the Trademark Law to determine the amountof compensation.


Damages for trademark infringement are regulatedin the Supreme People’s Court’s JudicialInterpretation Concerning Several Issues on HearingCopyright Civil Disputes.

Article 24: The actual losses of copyright ownersmay be calculated as the multiplication of thedecreased distribution volume of the reproducedproducts due to the infringement or the sale volumeof the infringing reproduced products by the unitprofits of the reproduced products of the copyrightowners. In case the decreased distribution volumeis hard to determine, it may be determinedaccording to the market sale volume of infringingreproduced products.

PatentsPatentsPatentsPatentsPatents

Damages for trademark infringement are regulatedin Articles 20 and 21 in the Supreme People’s Court’sSeveral Regulations on the Issue of Application Lawin Hearing Patent Disputes. The court may, uponthe rights holder’s claim, calculate the amount ofcompensation on the basis of the rights holder’slosses suffered from the infringement or the infringingparty’s gains obtained from the infringement. In theevent that neither the losses of the rights holder northe gains of the infringing party can be ascertainedwhile the patent license fee is available to bereferenced, the People’s Court can consider the typeof patent, nature and circumstances of theinfringement, amount of the patent license fee,nature, scope and time of the patent license etc,and ascertain the amount of the compensation onthe basis of one to three times of the patent licensefee. If the patent license fee is unavailable or thepatent license fee is obviously unreasonable, thePeople’s Court can consider the type of patent,nature and circumstances of the infringement etc,and ascertain the amount of compensation, whichis usually between RMB5,000 and 300,000 butcannot exceed RMB500,000 maximum.

Very few cases of patent infringement go to theadministrative authority first for the sake of its weakenforcement. Instead, most patent rights holderswould rather bring a civil action to the court.


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RecoverRecoverRecoverRecoverRecovery of expensesy of expensesy of expensesy of expensesy of expenses

The reasonable expenses that the rights holder putin to conduct an investigation into the infringementin order to obtain evidence can be recovered in thecourt’s judgment. Lawyer’s fees, as long as they arecharged within the limits provided by the laws, canalso be recovered.

Article 17 of in the Supreme People’s Court’s JudicialInterpretation Relating to Application Law in HearingTrademark Civil Disputes provides that “thereasonable costs incurred to enjoin infringement asprovided for in Clause 1 of Article 56 of theTrademark Law include the reasonable costsincurred by the claimant or its authorized agent toconduct investigation and evidence collection inrespect of any infringement. At the requestpresented by the party in action or as the specificcircumstances of the case may require, the People’sCourt may include legal fees in the amount ofcompensation pursuant to the regulations of therelevant governmental departments.”

Disposal of infringing goods and equipmentDisposal of infringing goods and equipmentDisposal of infringing goods and equipmentDisposal of infringing goods and equipmentDisposal of infringing goods and equipment

Article 21 of the Supreme People’s Court’s JudicialInterpretation Relating to Application Law in HearingTrademark Civil Disputes provides that “whenhearing cases of infringement upon the exclusiveright to use registered trademarks, the People’sCourt may, pursuant to Article 134 of the GeneralPrinciples of Civil Law, Article 53 of the TrademarkLaw and the specific circumstances of the case,rule to order the infringer to bear such civil liabilitiesas to cease and desist the infringement, eliminateinterference, compensate for losses and eliminateadverse effects. It may also order such civilsanctions as fines, confiscation of the infringinggoods, counterfeit trademark representations andmaterials, tools and equipment used specifically toproduce infringing goods. The amount of fines maybe determined by reference to the ImplementingRules of the Trademark Law of the People’s Republicof China.”

The thirThe thirThe thirThe thirThe third pard pard pard pard partytytytyty

In law, there is no provision for the courts to order aguilty party to disclose the identity of any third partiesinvolved in the production and distribution ofinfringing goods and their channels of distribution.


The provisions of intellectual property relatedoffences were not written in the criminal code untilthe code was amended in 1997. The Criminal Lawof the PRC provides 7 offences in relation tointellectual property rights from Article 213 to Article219 in Section 7, Chapter 3. Among them, Articles213, 214 and 215 are related to trademarks, Article216 is related to patents, Articles 217 and 218 arerelated to copyright and Article 219 is related to tradesecrets.

Like many other countries, the pursuit of a criminalclaim is most likely in the fields of trademarks andcopyright aiming to restrict the rampant activities ofcounterfeiting and piracy. Even though there areregulations for offences concerning patents andtrade secrets, they prove very hard to implement.

Judicial authoritiesJudicial authoritiesJudicial authoritiesJudicial authoritiesJudicial authorities

As previously stated, three judicial bodies take careof intellectual property related crimes, namely: thePolice (PSB) taking care of investigation, theProcuratorate taking care of prosecution, and theCourt taking care of trials in criminal actions.

Theoretically, the PSB can act on its own initiative toinitiate a criminal investigation, but it seldom doesso in practice. Most cases are initiated in responseto complaints. In accordance with the CriminalProcedural Law of the PRC (Article 170), the rightsholder can bring a criminal prosecution directlybefore the courts. However, this is hardly everimplemented in practice; one reason being thedifficulty a rights holder has of obtaining evidence.

Criminal ofCriminal ofCriminal ofCriminal ofCriminal offencesfencesfencesfencesfences

Three criminal offences relate to the infringement oftrademark in accordance with the current Chinesecriminal code, namely:

1) Article 213: using an identical trademark on thesame merchandise without permission of itsregistered owner2) Article 214: knowingly selling merchandise undera faked trademark with a relatively large salesvolume

Civil Procedures and RemediesCriminal Procedures and Remedies

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3) Article 215: forging or manufacturing withoutauthority or selling or manufacturing without authorityother’s registered trademarks or identifications.

There are two criminal offences relating to theinfringement of copyright in accordance with thecurrent Chinese criminal code, namely:

1) Article 21: whoever, for the purpose of reapingprofits, has committed one of the following acts ofcopyright infringement and gains a fairly largeamount of illicit income, or when there are otherserious circumstances, is to be sentenced toimprisonment and/or fine: (a) copy and distributewritten, musical, movie, televised, and video works;computer software; and other works without thepermission of their copyrighters; (b) p u b l i s hbooks whose copyright are exclusively owned byothers; (c) duplicate and distribute audiovisual workswithout the permission of their producers; and (d)produce and sell artistic works bearing fakesignatures of others

2) Article 218: whoever, for the purpose of reapingprofits, knowingly sells the duplicate worksdescribed in Article 217 of this Law, and gains ahuge amount of illicit income, is to be sentenced toimprisonment and/or fine.

There is one criminal offence relating to theinfringement of patents in accordance with thecurrent Chinese criminal code, namely:

Article 216: whoever counterfeits other people’spatents, and when the circumstances are serious,is to be sentenced to not more than three years offixed-term imprisonment, criminal detention, andmay in addition or exclusively be sentenced to afine.

To implement these provisions in the criminal code,the Supreme People’s Court and the SupremePeople’s Procuratorate published a judicialinterpretation (Interpretation by the SupremePeople’s Court and the Supreme People’sProcuratorate on Several Issues of ConcreteApplication of Laws in Handling Criminal Cases ofInfringing Intellectual Property; referred to as “NewInterpretation” hereinafter) in December 2004, whichwas amended on the basis of the interpretationpublished by the Supreme People’s Procuratorateand the Ministry of Public Security (Regulations of

the Supreme People’s Procuratorate and the Ministryof Public Security on the Standard of Prosecution ofCase of Economic Crime; referred to as “OldInterpretation” hereinafter). The New Interpretationenables the articles relating to trademark offencesto be implemented soundly. For instance, itconsiderably lowers the threshold for criminalpenalty.

Criminal rCriminal rCriminal rCriminal rCriminal remediesemediesemediesemediesemedies

In accordance with Criminal Law and the NewInterpretation, offences relating to trademarks,copyright or patents can be imposed by the followingpenalties, separate or in combination, including:

1. Imprisonment or criminal detention (7 yearsmaximum for trademarks and copyright, and 3 yearsmaximum for patents);2. Monetary fines.

The criminal code does not regulate on the seizureand disposal of infringing goods and materials/equipment for their production. In practice, thecounterfeit goods, usually in the custody of the PSB,will be destroyed.

In criminal actions, the court cannot order the guiltyparty to pay compensation to the rights owner. Toclaim financial compensation, the rights owner canbring a civil action at the same time, which will becombined with the criminal action and tried by thesame court.

Administrative EnforAdministrative EnforAdministrative EnforAdministrative EnforAdministrative Enforcement Systemcement Systemcement Systemcement Systemcement System

China has a distinctively strong system ofadministrative enforcement for intellectual propertyrights. The administrative authorities include theAdministration of Industry and Commerce (AIC), theQuality Technical Supervision Bureau (QTSB or TSB),the Administration of Copyright (NAC), the PatentOffice or Intellectual Property Office (SPO), theAdministration of Tobacco Monopoly, theAdministration of Medicine etc. Among them, theAIC, TSB, NAC and SPO are the four major agencies.The functions of the AIC and TSB overlap in manyaspects concerning business administration andconsumer protection. Simply, the AIC lays particularstress on trademark and unfair competition, and theTSB on low-quality products. Moreover, the newlyenacted measures for border control have been


31

available since October 1995. The authority is theGeneral Administration of Customs, which isgenerally regarded as one of the administrativeauthorities in China. All these authorities have ageneral office in Beijing, while enforcement is mainlyconducted by their local agencies, which areadministered by the local governments.


In most cases, rights holders seek administrativeadjudication of trademark infringement becauseinvestigations can occur shortly after filing thecomplaint. Disadvantages of the administrativechannel are: the rights holder receives nocompensation for IPR infringement as a result ofadministrative adjudication; sometimesadministrative agencies refuse to investigate acomplaint due to local protectionism, corruption orlack of resources; and fines are too low to put theinfringer out of business or deter future criminalactivity.

Administrative remedies that may be imposed by alocal AIC Trademark Division include:

1. Cease and desist orders2. Confiscation and destruction of trademarkrepresentations that may be separated from thegoods, in which case the goods may be returned tothe alleged infringer3. Confiscation and destruction of counterfeit goodswhere the trademark representation cannot beseparated from the goods4. Confiscation of materials, tools and equipmentused mainly for production of infringing goods andtrademark representations5. Fines


The National Copyright Administration is agovernmental agency responsible for copyrightadministration and enforcement nationwide. In localgovernments in all provinces, autonomous regions,municipalities and certain cities, copyrightadministrative authorities are established toadminister local copyright affairs including copyrightenforcement.

The copyright administrative authority may imposea penalty of up to three times the illegal turnover of

the infringer, or RMB 100,000 (about USD 12,000) ifit is difficult to calculate the illegal turnover.


It is a distinct feature of the Chinese patent systemthat administrative authorities for patent affairs areestablished under the local governments in allprovinces, autonomous regions, municipalities andcertain cities. The function of the authorities is toadminister patent affairs and handle patent disputeswithin their jurisdiction. The authorities are notbranches of the State Intellectual Property Office anddo not accept patent applications.

The administrative authority for patent affairs isempowered to order the infringer to stop infringing,confiscate the illegal gains of the infringer, andimpose on the infringer a penalty of up to three timesthe illegal gains, or RMB 50,000 (about USD 6,000)if there are no illegal gains. However, theadministrative enforcement of patents is muchweaker than that of trademarks.


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The Regulations of the People’s Republic of Chinaon the Customs Protection of Intellectual PropertyRights, issued by the State Council (“Regulations”),contains general rules and guidelines for Customs’role in IPR enforcement. Through registration withThe General Administration of Customs (GAC) inBeijing, the Regulations may provide protection forall categories of IPR, prohibiting the import or exportof goods in violation of those rights.

In accordance with the Regulations, the Customsprovide two types of protection with respect tointellectual property rights, namely, protection underthe rights holder’s request and protection onCustom’s duty.

Customs can suspend the release of suspectedinfringing goods to be imported on its own initiative(with a rights holder’s proactive registration of theIP right) or at the request of the rights holder caseby case.

To instigate the protection procedures, the rightsholder can make the registration first with the GACor submit a request for a specific case whenidentifying the infringing goods to be imported.

Both types of Customs protection demand the rightsholder’s undertaking in the form of a bond. Shouldthe goods detained be proved legitimate, the rightsholder has to bear the losses that the importer suffersfrom the intervention.

If the goods are finally released, i.e., the goodscannot be proved as infringing, the rights holder isnot entitled to receive any information from theCustoms. Instead, he has to compensate theimporter for his losses.

If the rights holder makes a registration, the Customscan detain the suspected infringing goods on itsown initiative. After the goods are detained, Customsshall notify the right holder immediately. The rightsholder has 3 days to reply, otherwise the goods willbe released. If the rights holder does not make aregistration, he can submit a request to seize thesuspected infringing goods with a bond paid at thesame time. In this scenario, Customs will detain thegoods and hold them for 20 days maximum beforereceiving the court’s order of injunction.

If it is proven that the goods infringe the rightsholder’s rights, Customs will levy a fine on theimporter and dispose of the goods in various ways,donating to charity organizations, being purchasedby the rights holder, auctioning or destroyingdepending on the circumstances. Furthermore, therights holder can bring a lawsuit before the courtagainst the infringing party after the Customsconcludes the case.


Enforcement, in general, provides a three-tiersystem, namely, submitting a complaint to theadministrative bodies, bringing a civil action directlyto court, and using the police for criminalprosecution.

Civil procedures can drag on for years andenforcement of a judgment might be difficult. Usingthe police has to fulfill some thresholds that aregenerally big cases with a very high amount ofcounterfeits.

In contrast, the administrative authorities are easyto access, less expensive, and faster in enforcement.Moreover, they can conduct investigations bythemselves.

Thus, it is recommended that administrativeenforcement be tried first, and indeed this is the routemost often used by intellectual property rightsholders.

Customs Procedures

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CZECH REPUBLIC

Introduction

Intellectual rights protection remedies can be divided into

1) private law (civil procedures) remedies2) public law remedies

a) administrative law remediesb) criminal law remediesc) custom remedies - special administrative border measures.

Civil procedures remedies i.e. the remedies pursuant to the private law, are governed byparticular intellectual property protection laws. In cases of the copyright and related rightsconnected with it, the respective law is the Act No. 121/2000 Coll. – Copyright Act; in case ofthe trademark law - the Act No. 441/2003 Coll. – Trademark Act; in case of patents – the ActNo. 527/1990 Coll. – Inventions and Innovations Act; in case of the industrial designs – the ActNo. 207/2000 Coll. – Industrial Designs Act. Enforcement of intellectual property rights isgoverned either by these special laws or the general civil procedures pertaining to the civilcourt’s procedures, i.e. Act. No. 99/1963 Coll. – Civil Procedures Code (hereinafter referred toas the C.P.C. only).

As far as the public law (without custom procedures) is concerned, the remedies related to theprotection of intellectual property rights are applied pursuant to the Act No. 634/1992 Coll. –Consumer Protection Act; pursuant to the Act. No. 64/1986 Coll. – Czech Trade Inspection Actand pursuant to the Act No. 200/1990 Coll. – Misdemeanour Act, and pursuant to the Act No.140/1961 Coll. – Criminal Code.


34

Civil Procedures and RemediesThe title to claim a remedy for the protection ofintellectual property rights (active legitimacy) alwaysbelongs to the respective rights holder; i.e. to theauthor, to the owner of the patent or to the owner ofthe trademark.

In the case of copyright (apart from the right to claimthe authorship and the right to obtain an appropriatecompensation) this right belongs also to a holder ofan exclusive licence right to utilize the work or tothe one who has been commissioned according tothe law to perform these proprietary rights pertainingto the particular work.

In the case of a trademark, the title to claim remediesalso belongs to the licensee, after the trademark’sowner granted his/her approval (unless therespective license contract provides otherwise), orto an exclusive licensee even without the owner’sapproval provided that the owner himself does notcommence respective protection enforcementprocedures within two months after the receipt ofrespective notice from the licensee in this respect.

Liability in respect of the infringement of theintellectual property rights is apparent liability, i.e.regardless of culpability. The same also applies incases of liability to return the unjust enrichment. Asfar as liability for the damage is concerned, itrepresents the general liability pursuant to Section420 of the Civil Code (Act No. 40/1964 Coll.), whichis deemed to be a subjective liability requiring atleast negligent culpability, unless a particular casecomes under the jurisdiction of the CommercialCode, e.g. a breach of the commercial licencecontract, where the liability is the apparent one.

PrPrPrPrPreliminareliminareliminareliminareliminary injunctionsy injunctionsy injunctionsy injunctionsy injunctions

Regulated in Sections 76 – 77a of the C.P.C., andused very frequently in cases to protect rights ofaggrieved parties. The court in whose jurisdictionthe case of intellectual property rights protectionbelongs orders the preliminary injunction; i.e. thecourt to which the respective action is to be filed.

In order to secure compensation for damage, orother injury caused by the preliminary injunction thatultimately proves to be unfounded, the petitioner isobliged to deposit, not later than on the day of filinga petition in respect of the preliminary injunction, acash security deposit amounting to CZK 50,000 and

in commercial cases CZK 100,000. The court willrule on the preliminary injunction without delay, notlater than 7 days after the petition is filed. Thepreliminary injunction may order that a defendantmay not dispose of certain things or rights, orperform something, or refrain from something.

Actions brought to the court that represent a basicremedy protecting intellectual property rights canbe distinguished in the following way:

Act ions for a Declarat ion JudgmentAct ions for a Declarat ion JudgmentAct ions for a Declarat ion JudgmentAct ions for a Declarat ion JudgmentAct ions for a Declarat ion Judgment (e.g.determining the authorship pursuant to Section 40,paragraph 1, litt. a) of the Act No. 121/2000 Coll. –Copyright Act; determining rights of the previoususer of the invention pursuant to Section 17,paragraph 2 of the Act No. 527/1990 Coll. -Inventions and Innovations Act).

This action is invoked in those instances where thecourt’s verdict should stipulate to whom therespective rights belong and in those instanceswhere a lawsuit should be brought. On filing suchan action, a court fee amounting to CZK 1,000 onlyis to be paid, contrary to the court fees in cases ofactions asking for financial compensation, where thefee represents 4 per cent of the sum claimed.Contrary to the general stipulations as regulated inthe C.P.C., these types of declaratory judgments,which are governed by the special provisions of theintellectual property protection laws, do not requireproof of an immediate legal interest.

Refraining Actions Refraining Actions Refraining Actions Refraining Actions Refraining Actions (e.g. pursuant to Section 40,paragraph 1, litt. b) of the Copyright Act; pursuantto Section 8, paragraph 4 of the Act No. 441/2003Coll. - Trademark Act, etc.).

By these actions, the plaintiff (the author, the ownerof the trademark) may claim that the injunction beissued by the court prohibiting repetition orcontinuation of infringement of the plaintiff’s rights.This particular action could be also used as apreventative measure. For example, such action mayclaim that, the unauthorized production beprohibited; the unauthorized business sales beprohibited; it may demand prohibition of theunauthorized import or export of the original or copy/copies or the imitations of the protected subjectmatter; prohibition of unauthorized promotion,including the advertising and other publicity. Thisaction may be filed only when the infringement either

35

Czech Republic

lasts or the threat of infringement is really imminent.It cannot be asserted in court if the threat has alreadyceased to exist.

Removing ActionsRemoving ActionsRemoving ActionsRemoving ActionsRemoving Actionsa) withdrawal actionsa) withdrawal actionsa) withdrawal actionsa) withdrawal actionsa) withdrawal actions (e.g. pursuant to Section 40,paragraph 1, litt. d) of the Copyright Act; Section 8,paragraph 4 of the Trademark Act).

This action has a reparation role; it is aimed atremoving the consequences caused by theinfringement of the law. Unlike the previous action,the infringement or threat of the infringement neednot last; it suffices that the consequences causedby such infringement exist.

b) actions perb) actions perb) actions perb) actions perb) actions pertaining to the destrtaining to the destrtaining to the destrtaining to the destrtaining to the destroying of theoying of theoying of theoying of theoying of thecopies, prcopies, prcopies, prcopies, prcopies, products, materials and tools oducts, materials and tools oducts, materials and tools oducts, materials and tools oducts, materials and tools (e.g.Section 40, paragraph 1, litt. d), point 2 of theCopyright Act; Section 8, paragraph 7 of theTrademark Act; Section 20, paragraph 2 of theIndustrial Designs Act).

The entitled person/plaintiff may claim by this actionthat the court orders the person who infringes orthreatens the intellectual property rights shoulddestroy the products that infringed or threatened toinfringe through their production, putting them offthe market or by their storing or to destroy materialsand tools designated or used solely or predominantlyin activities infringing the rights protected by the law.

In cases of industrial property rights, the destructioncannot be ordered if the products in question arenot owned by the person against whom the actionis aimed, or if the threat to or infringement of theright could be removed otherwise and if thedestruction would be in this case an inadequate one.

Actions rActions rActions rActions rActions requiring prequiring prequiring prequiring prequiring provision of inforovision of inforovision of inforovision of inforovision of informationmationmationmationmation (e.g.Section 40, paragraph 1, litt. c) of the Copyright Act;Section 8, paragraph 6 of the Trademark Act; Section75a of the Registered Inventions and InnovationsAct).

The possibility to obtain information related to theorigin of the products (copies produced in anunauthorized manner) that have infringed intellectualproperty rights is an important prerequisite forexercising these rights by the entitled person/plaintiffand it facilitates the plaintiff’s knowledge whetherthe infringement to his/her intellectual property rights

has already taken place and whether suchinfringement is threatening or not. In cases ofcopyright or the rights connected therewith (contraryto the rights pertaining to the trademark and otherintellectual property rights) the law also provides theright to obtain information related to the manner andextent of the utilization or information related to theidentity of the persons that had participated or doparticipate in unauthorized production anddistribution of the copies or the imitations of the work.

In cases of copyright, it is therefore possible to suefor the provision of information unveiling the identityof the third person/persons participating in theunauthorized production or distribution of the copiesor of the imitations of the work.

Actions for DamagesActions for DamagesActions for DamagesActions for DamagesActions for Damages (e.g. Section 40, paragraph3 of the Copyright Act; Section 8, paragraph 5 ofthe Trademark Act; Section 75 of the Inventions andInnovations Act).

In principle, the provisions of the Civil Code governdamages by way of compensation. In cases of abreach of the commercial contract, e.g. of thelicence contract, the damages/compensation isgoverned by the provisions of the Commercial Code.By means of action for damages, the entitled person/plaintiff claims a remedy for the unfavourableconsequences that were caused to him/her by theinfringement of his/her rights. Pre-conditions fordamages liability are: (a) breach of the legalobligation resulting from the contract or from the law;(b) incurring the damage (proprietary injury, e.g. lossof profit caused by the fact that the entitled personcould not realize his/her rights on his/her own); (c)causality between the breach of the obligation andincurred damage; and (d) negligent culpability. Thisculpability is presumed, the entitled person/plaintiffis not required to prove it; it is up to the defendant toprove its absence.

In cases of damages/ compensation that aregoverned by the Commercial Code this liability isthe objective one (regardless of the culpability). Theamounts in most cases compensate for the damagecaused.

Actions for Unjust Enrichment Actions for Unjust Enrichment Actions for Unjust Enrichment Actions for Unjust Enrichment Actions for Unjust Enrichment (e.g. Section 40,paragraph 3 of the Copyright Act; Section 8,paragraph 4 of the Trademark Act). Generally, therespective provisions of the Civil Code govern unjust



36

enrichment. There exists a special regulationregarding the amount of the unjust enrichment asfar as the Copyright Act is concerned, the sum tobe refunded amounts to double the standardauthor’s fee. Unjust enrichment compensation couldbe required when the infringer’s property hasaccrued due to the infringement of the intellectualproperty rights.

Act ions in rAct ions in rAct ions in rAct ions in rAct ions in respect of the apprespect of the apprespect of the apprespect of the apprespect of the appropr iateopr iateopr iateopr iateopr iatecompensation in moral as well as financial forcompensation in moral as well as financial forcompensation in moral as well as financial forcompensation in moral as well as financial forcompensation in moral as well as financial formmmmm(e.g. Section 40, paragraph 1. litt. e) of the CopyrightAct; Section 8, paragraph 5 of the Trademark Act;Section 75, paragraph 1 of the Inventions andInnovations Act).

By means of this action, a claim for immaterial injurycompensation can be made. The form of moralcompensation may be first of all an apology.Financial compensation may be awarded only inthose cases where moral satisfaction was notdeemed sufficient. When determining the actualamount of the compensation to be provided, theseriousness of the damage suffered and thecircumstances that led to the infringement of theright are taken into consideration.

Proprietary claims (including those of charactercompensation) should be exercised within a threeyear period of limitation; this period commences torun on a day when this right might have beenexercised for the first time.

In cases of damages and unjust enrichment thereexists a subjective period of limitation that lasts twoyears and commences to run on the day when theinjured party learned about the damage or hadknowledge about the unjust enrichment taking place,and an objective period of limitation lasting 3 years,or in case of wilful culpability 10 years, thatcommences from the day when the damage orunjust enrichment actually took place. In thoseinstances when liability is governed by theCommercial Code (in cases of breach of acommercial contract e.g. the licence contract) theperiod of limitation lasts four years and commencesfrom the day when the injured party learned/couldhave learned about the damage and the liable party,and this period ends 10 years later at the latest,counted from the moment when the breach of theobligation actually took place (the same applies incase of the unjust enrichment).

Other means of pr Other means of pr Other means of pr Other means of pr Other means of protectionotectionotectionotectionotection

The right to publish the judicial decision The right to publish the judicial decision The right to publish the judicial decision The right to publish the judicial decision The right to publish the judicial decision (Section40, paragraph 2 of the Copyright Act; Section 155,paragraph 4, C.P.C.). In copyright lawsuits and inlawsuits pertaining to unfair competition, the courtmay, at the request of the plaintiff (entitled person),award the plaintiff (entitled person), whose claim hasbeen satisfied by the verdict, the right to publishthe verdict at the expense of the participant whohas not been successful in this particular lawsuit(the infringer) and to specify, according to thecircumstances of the case, also the extent, form, aswell as the manner of such publication.

PrPrPrPrPreserving Evidence/Preserving Evidence/Preserving Evidence/Preserving Evidence/Preserving Evidence/Proofsoofsoofsoofsoofs – pursuant to Section78a of the C.P.C., the evidence/proof can also bepreserved by the Notary Public Record or by theExecutor’s record that records the facts of the case;this record then represents the public deed, deemedto have the correct contents; it is suitable for examplewhen preserving the evidence via the Internet.

CourCourCourCourCourt Prt Prt Prt Prt Proceedingsoceedingsoceedingsoceedingsoceedings

The courts decide the actions and other remedialmeasures pertaining to intellectual property rightsprotection.

The court of original jurisdiction is the Regional Courtas the courts of first instance (“Krajské soudy” or“Mstský soud” in Prague). Higher Courts (“Vrchnísoudy” in Prague and Olomouc) are Courts ofAppeal.

Proceedings are commenced on the basis of anaction. Generally, the court competent to hear themerits of the case is the court within which judicialdistrict the participant (defendant) against whom theaction is aimed has its residence (seat). In theabsence of a residence/seat the competent court isthe court within which judicial district the defendantlives. In the case of a foreign person this is also theplace where that person’s business is located.

Whether the holder of the right is a local citizen or aforeigner has no legal bearing as far as applicationof the protection measures related to intellectualproperty rights are concerned. The procedure is thesame in both cases. In the Czech Republic, theEuropean Council Regulation (EC) No. 44/2001dated 22nd December 2000 on Jurisdiction and the


37

Recognition and Enforcement of the Judgments inCivil and Commercial matters can also be applied.This should be applied in determining the jurisdictionof the courts in decision-making on cross borderdisputes within the European Union.

Should the nature of the matter allow, the court maybe asked – prior to the petition/action proper beingfiled – to carry out conciliatory proceedings.

Costs and timescaleCosts and timescaleCosts and timescaleCosts and timescaleCosts and timescale

The court makes its decision based on the merits ofthe case, as well as determining who shall bear thecosts of the proceedings, i.e. the court fee, costs ofthe legal representation or other costs (costs ofcarrying out evidence/proofs, travelling costs).Generally, the court refunds costs to the party thathas been successful in the matter itself.

Specific court fees are set out in Act No. 549/1991Coll. – Court Fees Act. In actions where the financialclaim is up to CZK 15,000 the court fee is set at afixed sum of CZK 600. In cases where the financialclaim exceeds CZK 15,000, the court fee is 4 percent of the sum. In cases where the subject of theaction is non-financial the court fee amounts to CZK1000. In cases involving preliminary injunctions thecourt fee amounts to CZK 500.

As far as legal representation costs are concerned,the court applies Ministry of Justice Ordinance No.484/2000 Coll., which stipulates the lump sum ratespertaining to the legal representation fees when thelitigants are being represented by the Attorney atLaw or by the Notary Public. In cases of declarationof judgment actions the representation fee amountsto CZK 6200. In cases of preliminary injunctions thesum is CZK 1200. In cases of actions demandingfinancial compensation, the representation feessums are scaled according to the amount involved.

The amount of recovered costs awarded by the courtmay vary from the actual sum in those cases whenthe Attorney at Law’s fee pertaining to legalrepresentation has been agreed between theAttorney at Law and the proceedings participant ina legal representation contract. Most frequently anhourly fee is used, in which case the final sum of thecontractual fee very often significantly surpasses thelump sum.

The average duration of lawsuits pertaining toinfringement of copyright and lawsuits pertaining tothe Copyright Act counted from the time the actionis filed until the verdict comes into force is 11 months.

Lawsuits pertaining to industrial property rights laston average 3 years. Intellectual property caseslasting more than 3 years are not exceptional andtherefore out-of-court resolution of cases isrecommended wherever possible.

Amendment to the Copyright ActAmendment to the Copyright ActAmendment to the Copyright ActAmendment to the Copyright ActAmendment to the Copyright Act

An Amendment to the Copyright Act is beingplanned. The Amendment will also modify provisionspertaining to the protection and enforcement ofcopyright. First of all, the right to obtain informationwill be extended to a right to obtain data related tothe price of unauthorized copy or imitation of thework. The Amendment will also specify the personsthat are supposed to provide respective information.Additionally, it may be possible to claim an injunctionto provide services utilized by third persons causinginfringement or threatening the copyright etc.

Also under preparation is a Bill enfor Bill enfor Bill enfor Bill enfor Bill enforcing rightscing rightscing rightscing rightscing rightsperperperperpertaining to industrial prtaining to industrial prtaining to industrial prtaining to industrial prtaining to industrial properoperoperoperoperty rightsty rightsty rightsty rightsty rights that willimplement Directive of the European Parliament andof the Council No. 2004/48/EC dated 29th April 2004on Enforcement of Intellectual Property Rights.

In the Bill, a person entitled shall be specified asthe owner or the holder of the right pursuant to therespective law protecting industrial property rights.Further, a person is entitled pursuant to the speciallaw to use the right, namely therefore the licenseeand the professional organizations protecting theserights.

Protection remedies are divided into the right ofinformation and remedies (recalling from the market,permanent removal or destruction of the infringedproducts or materials, tools and equipment destinedor utilized solely or predominantly in activitiesinfringing or threatening to infringe the law, pecuniarycompensation/settlement, publication of the judicialdecisions, damages, return of the unjust enrichment,appropriate compensation).


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a) Czech Ta) Czech Ta) Czech Ta) Czech Ta) Czech Trade Inspectionrade Inspectionrade Inspectionrade Inspectionrade Inspection(“eská obchodní inspekce”)(“eská obchodní inspekce”)(“eská obchodní inspekce”)(“eská obchodní inspekce”)(“eská obchodní inspekce”)

Some public law measures for intellectual propertyrights protection arise from Act No. 634/1992 Coll. –Consumer Protection Act and from Act. No. 64/1986Coll. – Czech Trade Inspection Act, which regulatesinspection activities of the Czech Trade Inspectionrelated to consumer deception pertaining to theproducts that are the subject of intellectual propertyrights protection.

This inspection may be carried out under theinspector’s own initiative or under the initiative ofanother government authority, or at the initiative/request of the consumer or intellectual propertyrights holder.

If the inspection is to be carried out at the requestof the intellectual property rights holder or anotherperson who has shown an adequate legal interestin the matter, these persons are obliged to depositreasonable cash security covering the likely costsof the inspection authority in those cases when thejustifiability of such a request shall not be provenduring the inspection.

The Czech Trade Inspection may, after therespective inspection was carried out and until thesituation is rectified, prohibit putting infringing goodson the market, prohibit their distribution includingthe purchase, supply, sales or use of the infringingproducts or goods.

The respective Inspector is obliged to order thedetention of the infringing products and goods if ithas been proven that these goods were offered forsale, sold or stored. The Czech Trade Inspection isentitled to store such detained products out of thereach of the inspected person; such person isobliged to surrender these products to the Inspector,and if the products are not surrendered voluntarilysuch products can be seized. Detention lasts untila decision in respect of forfeiture of the product orin respect of its confiscation comes into force. It isthen decided whether these products are to bedestroyed or whether they can be used forhumanitarian purposes. The products may be usedfor humanitarian purposes only in those cases whereall elements including infringing intellectual propertyrights are fully removed from them.

b) Misdemeanours Actb) Misdemeanours Actb) Misdemeanours Actb) Misdemeanours Actb) Misdemeanours Act

Generally speaking, the misdemeanour representssuch culpable behaviour as infringes or threatenscommon public interest. The behaviour is specificallydefined in the Misdemeanours Act. Misdemeanoursare distinguished from criminal offences primarilyby their lower degree of danger to society. Formisdemeanours liability, negligent culpabilitysuffices, unless respective law provides that wilfulintention is necessary. Liability for committing amisdemeanour commences at 15 years of age.

The Misdemeanours Act recognizesmisdemeanours in the field of culture, e.g. theunauthorized use of an author’s work and of otherprotected objects and misdemeanours in the fieldof infringement of industrial rights and the rightspertaining to the business firm. Thesemisdemeanours are punishable by fines amountingup to CZK 15000.

Misdemeanours cases are heard by the MunicipalAuthorities. The basis for commencement ofproceedings involves the notification of rightsholders.

c) Criminal Lawc) Criminal Lawc) Criminal Lawc) Criminal Lawc) Criminal Law

During the first seven months of 2005 i.e. until July2005, there were 222 criminal offences infringingrights pertaining to trademarks and 571 criminaloffences pertaining to the infringement of copyright.

During 2002, 349 persons were sentenced forinfringement of trademarks; in 2003 the total numberof such persons was 200 and in 2004 the total was144 persons. In 2002, 137 persons were sentencedfor the criminal offence of infringement of copyright,in 2003 the number sentenced for the same offencewas 166, and in 2004 it was 126 persons. Theaverage duration of criminal proceedings in casesof copyright infringement was 331 days and in casesof infringing trademarks 441 days. According to theBusiness Software Alliance report on software piracy,its rate in the Czech Republic during 2004 was 41per cent (in 2003 it was 40 per cent). In cases ofmusic piracy the rate exceeded 50 per cent in 2004according to the IFPI.

Compared to misdemeanours, criminal offencesrepresent a heavier form of anti-social behaviour;


39

the main differentiation between both types ofoffences involves the level of danger/gravity tosociety, which must be in case of the criminal offencealways be significant. A criminal offence can becommitted by a person older than 15 years, eitheron their own or jointly with other persons. In CriminalLaw several statutory offences pertaining to theinfringement of intellectual property rights arespecified.

In Section 149Section 149Section 149Section 149Section 149 of the Criminal Law an offence ofunfair competition is specified.

Section 150 Section 150 Section 150 Section 150 Section 150 of the Criminal Law specifies offencesrelated to the infringement of the rights pertainingto the trademark, trademark, trademark, trademark, trademark, business name and protectedmarkings of the origin. As punishment for suchinfringement, Criminal Law stipulates imprisonmentof up to two years or a fine or forfeiture of the thing.(In similar fashion there shall be punished the personwho, with the aim to reach economical benefit (a)uses a business name or any markingsinterchangeable with it without authorization, or (b)without authorization puts products onto the marketwith markings of an origin to which belongs anexclusive right of another person or with markingsof origin easily interchangeable with it).

Section 151 Section 151 Section 151 Section 151 Section 151 of the Criminal Law specifies offencesrelated to the infringement of rights pertaining to theinfringement of industrial rights. As a punishmentfor such infringement the Criminal Law stipulatesimprisonment of up to two years or a fine.

Section 152 Section 152 Section 152 Section 152 Section 152 of the Criminal Law specifies theoffences related to the infringement of copyright,rights connected with copyright and the rightspertaining to databases. The perpetrator of theseoffences shall be punished by imprisonment of upto two years, or by a fine or by forfeiture of theproduct. A perpetrator who obtains considerablefinancial benefit (i.e. at least CZK 500,000 or if he/she commits the offence to a significant extent) isliable to imprisonment from six months to five years,or a fine or forfeiture of the product.

All offences are heard by the general courts in penalproceedings pursuant to Act No 141/1961 Coll –Criminal Proceedings Code (Penal Code). Theindictment can be filed with the court only by thePublic Prosecutor, not for example by the injuredparty. Prior to the criminal proceedings before the

court a preparatory pre-trial proceeding takes place,the aim of which is first of all to institute aninvestigation to be carried out by the policeauthorities under the supervision of the PublicProsecutor.

The investigation aims to ascertain whether acriminal offence has been or has not been committedand is carried out by the police authorities basedon the police’s own knowledge, complaints orsuggestions/information from other persons (e.g.injured rightholders) and authorities, after which aconclusion in reached as to whether or not a criminaloffence has been committed. The accused has theright whether or not to testify in criminal proceedings,so the courts cannot order a guilty party to disclosethe identity of any third party involved in theproduction and distribution of the infringing goodsand in respect of their channels of distribution.

PrPrPrPrPre-trial pre-trial pre-trial pre-trial pre-trial procedurocedurocedurocedurocedureeeee

As far as pre-trial procedures available for theseizure of suspected infringing goods areconcerned, the Penal Code allows the policeauthority to investigate the transfer, pursuit ofpersons and things.

The Penal Code further allows the court or PublicProsecutor to order seizure and opening of aconsignment, its substitution and pursuit. Anothermeasure used may be a house search, or search ofother space, which could take place if a well-foundedsuspicion, exists.

In pre-trial proceedings, as well as in proceedingsbefore the court itself, a person who possesses anitem important to the criminal proceedings isobligated to submit it upon the order of the court, tothe Public Prosecutor or to the police authority, andif such item is to be, for the purpose of the criminalproceedings, secured, such person is obligated tohand it over to these authorities on request. If theitem is not handed over voluntarily, it may be takenaway from the holder.

Rights holders usually act in criminal proceedingsas the injured party; they may file a motionsupplementing testimony, to inspect files, toparticipate in the trial and in the public hearing dealwith the appeals, and articulate their opinion priorto the conclusion of the case. In criminal


Czech Republic


40

proceedings, the injured party may claim damagesagainst the accused in respect of the damagecaused by the offence and the court may, in itsjudgment, impose upon the accused an obligationto compensate for such damage. In some casesthe court may refer the injured party to civilproceedings (e.g. in those cases when the damagehas not been proven and the accused has beenfound not guilty).

In exposing cases of copyright infringement, lawenforcement authorities do cooperate actively withthe subjects protecting intellectual property rights.These are first of all the intellectual propertycollective rights-management bodies (OSA, DILIA,INTERGRAM, GESTOR, OOA-S). The Penal Codeallows in certain cases that the Public Prosecutor orpolice authorities use the expert assistance of aconsultant possessing special knowledge in thisfield. These bodies are frequently addressed for thispurpose.

Enforcement of intellectual property rights protectioncan also be found in the Act in respect of themeasures related to the Import, Export and Re-export of the Goods Infringing some IntellectualProperty Rights No. 191/1991 Coll. – the so calledAnti-Piracy Law.

This law relates to the border measures and the lawwhich implements Community law, i.e. the Directiveof the Council No. 3295/1994, Directive of theCommission No. 1367/1995 and Directive of theCouncil No. 1383/2003. This Act stipulates thoseconditions under which the Customs Office canintervene against persons possessing, storing orselling goods whose production has infringedintellectual property rights on the territory of theEuropean Community. The Act sets the conditionsunder which the Customs Office is entitled to secure,destroy or exclude from the channels of commercethe infringing goods, and to hear the misdemeanoursand administrative offences breaching this Act.

The application requesting the intervention of theCustoms Office is filed by the rights holder himselfor on the decision of the Customs Office on aprescribed form, which is specified in Article 5, ofCouncil Directive No. 1383/2003, and addressed tothe Customs Directorate Hradec Králové, which

decides whether to approve or dismiss theapplication and then conveys its decision to theCustoms office that will carry out any inspection andthe rights holder.

An application requesting Customs intervention mustcontain an undertaking by the rights holder to settleall costs caused if the goods under review are notfound to infringe intellectual property rights.

The Customs office to whom the CustomsDirectorate sends its decision approving theapplication and which actually secures the goodssends, at the request of the rights holder, informationpertaining to the Customs broker, owner or holderof the goods so that the rights holder is able to claimhis/her rights in court.

The rights holder is obliged to inform the Customsoffice without delay, either in writing or electronically,that the proceedings have been commenced. ThisAct now cancels the obligation to pay a cash depositsecurity in the event that it is not proven that thegoods secured violated intellectual property rights.

If the court reaches the conclusion that the securedgoods have infringed intellectual property rights, theCustoms office is obliged to destroy the goods (atthe expense of the Customs broker, owner or holderof the goods; if these are not known then at theexpense of the rights holder).

At the request of the rights holder, the goods maybe destroyed even without a decision of the courtprovided that the Customs broker, owner or holderof the goods approves the destruction in writing, orif these persons do not raise objections to thecontemplated destruction. Instead of beingdestroyed, the goods may be used for humanitarianpurposes.

This Act specifies the misdemeanours andadministrative offences arising from a breach of thisAct; and the Customs office in which district themisdemeanour/offence has been discovered isempowered to carry out the proceeding. A penaltyamounting up to CZK 20,000,000 or forfeiture of thegoods can be imposed.

Customs Procedures

Customs Procedures

41

DENMARK

Introduction

Civil procedures and criminal procedures are usually kept separate under Danish law. In mostintellectual property cases, the intellectual property rights holder will rely on the civil processas he is often more interested in stopping infringements and identifying their extent in order todetermine the size of the claim for damages. However, if the maximum penalty for committingthe infringement is a fine and not imprisonment, e.g. in some copyright infringement cases,the rights holder will have a right to bring a claim of penalty against the alleged infringer underthe civil procedure. Only the public prosecutor has a right to take proceedings in criminalcases where the penalty can be imprisonment.

All remedies for redress discussed here apply equally to both domestic and foreign rightsholders.


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It has been seen in practice that an intellectualproperty rights holder intends to institute a civilprocedure, but then hands over the case to thepublic prosecutor if it turns out during the preliminaryinvestigations that the infringements are so severethat criminal proceedings seem appropriate andimprisonment may be applicable. In such matters,the rights holder is still able to bring a claim fordamages under the criminal case, although suchclaims are often referred to civil proceedings by thejudge if the defendant protests against the claim.


An interim (or preliminary) injunction is a remedy bywhich a plaintiff can enjoin actions by the defendantprior to a trial on the merits. An interim injunction isavailable if the plaintiff can establish a prima faciecase where the following criteria are met:

1. The actions against which the injunction isdirected are infringements of the rights of the plaintiff2. The defendant would perform the actions againstwhich the injunction is directed3. The purpose would be lost if the plaintiff had toresort to ordinary proceedings

The venue for most interim injunctions is the Bailiff’sCourt (“Fogedretten”), which is part of the city court.

There are no specialised courts to hear interiminjunctions for intellectual property disputes inDenmark: such cases are all decided by the localBailiff’s Court, typically at the venue of the infringer.There are 82 districts of such local courts, so aspecialised knowledge of IP law cannot be expectedfrom the judge in interim injunction proceedings.

An interim injunction is a means by which the rightsholder can take action relatively fast in order to stopthe infringements. However, it will depend on theresources of the relevant city court how quickly thisremedy can be obtained. It is not uncommon thatthe rights holder must wait 2-8 weeks from the filingof the application for an interim injunction before theenforcement proceedings actually take place. If thematter is very urgent, the courts may schedule theenforcement proceedings within a day or two, andthey may even be willing to rearrange their schedule.

The question of whether the injunction should begranted is a matter for the court’s discretion. Therights holder should therefore always take theappropriate legal steps as soon as infringementsare brought to his attention. If there is an unjustifieddelay, the court might find that an interim injunctionis not necessary.

The Bailiff’s Court shall condition the injunction onthe plaintiff providing security for damages etc.suffered by the defendant in the event that theinjunction is cancelled. In such cases the interiminjunction will not come into force until the securityhas been provided.

If the plaintiff is awarded an interim injunction, hemust normally bring a confirmatory action within twoweeks of the granting of the interim injunction. If theplaintiff does not file a confirmatory suit with therelevant court within the two weeks, the interiminjunction will be cancelled. The court will not acceptany excuses for exceeding this deadline.

PrPrPrPrPreservation of evidenceeservation of evidenceeservation of evidenceeservation of evidenceeservation of evidence

With effect from 1 April 2001, the DanishAdministration of Justice Act provides an intellectualproperty rights holder with an opportunity to requestthat the local Bailiff’s Court assist him in securingevidence of infringement. These rules were madeto implement TRIPS. The introduction of these ruleshas turned out to be a very effective means for rightsholders to identify the extent of the infringements,which is very useful as evidence in a subsequentaction for damages and for the possibility of gettingto the source of the infringing products.

In order for the Bailiff to make an order ofpreservation of evidence, the rights holder mustrender it probable that the defendant has infringedhis intellectual property rights and that there isreason to believe that evidence of the infringementscan be found at the defendant’s premises.

The rules in the Danish Administration of Justice Actapply to practically all IP-rights and related rightsexcept for process patents and utility models.

The Bailiff’s Court may carry out the necessarymeasures requested by the rights holder, evenwithout informing the alleged infringer beforehand(i.e. an ex parte proceeding). However, upon arrival

43

Denmark

at the premises, the Bailiff’s Court will initially askthe defendant to get an attorney and the court willsuspend the investigation until the attorney hasarrived.

All materials found at the alleged infringer’s premisesthat might be of relevance as proof of theinfringement may be investigated, includingaccounting records, transport documents, emailsand infringing goods. If necessary, the Bailiff’s Courtmay use outside assistance from independentexperts (e.g. IT experts and accountants) as wellas from the police.

Similar to the interim injunction, the Bailiff’s Courtwill normally demand that the intellectual propertyrights holder provide security in order to cover anydamages and expenses of the alleged infringer inthe event that proof of infringement fails.

A confirmatory suit must be filed with the relevantcourt within four weeks after the Bailiff’s Court hasinformed the rights holder that the investigation isfinished.

An application for preservation of evidence is oftencombined with an application for an interiminjunction so that both enforcement proceedingsmay take place in one action on the same day.However, it should be noted that there are deadlinesfor filing the respective confirmatory suits. When bothconfirmatory suits have been filed with the relevantcourt, they will be dealt with in one case.

It is possible for the rights holder to have the courtseize goods that are thought to be infringing if thereare particular reasons to believe that the interiminjunction will not be respected. The goods must bedetained by an independent party, typically aremoval company, until the case is settled or theconfirmatory suit is ended.

PerPerPerPerPermanent Injunctionmanent Injunctionmanent Injunctionmanent Injunctionmanent Injunction

Depending on which kind of intellectual propertyright is at issue and the amount involved, a lawsuitfor a permanent injunction of intellectual propertyinfringement is brought before either the City Court(for copyright infringements), the Maritime andCommercial Court (for trademark, design andDanish Marketing Practices Act infringements) orthe High Court (for patent and utility model

infringement and invalidity suits). Copyrightinfringement cases are tried at the relevant city courtunless otherwise stated in the law. If the amountinvolved exceeds DKK 1,000,000, the case mustbe referred to the High Court at the request of oneof the parties.

The Maritime and Commercial Court is the court offirst instance in cases primarily involving trademarkrights, design rights and/or violations of theMarketing Practices Act. The High Court is the courtof first instance in relation to patent and utility modelinfringements and invalidity cases.

There is no requirement that the plaintiff seek aninterim injunction before filing a lawsuit for apermanent injunction.

Time scale and costsTime scale and costsTime scale and costsTime scale and costsTime scale and costs

It is difficult to say anything conclusive about thetime scale involved in bringing a civil action fromcommencement to conclusion. It depends on anumber of factors, e.g. the complexity of the case,whether expert appraisal is necessary and whetherthe decision is appealed to the High Court and/orthe Supreme Court. Thus, a case may take severalyears. However, it is quite common that a settlementagreement is reached following an interim injunctionand/or a preservation of evidence.

The court fee for filing a writ with a Danish court inorder to get a permanent injunction depends on theamount involved. If the amount involved is less thanDKK 50,000, the court fee is only DKK 750. If theamount involved is more than DKK 50,000, the courtfee is DKK 750 + 1.2% of the amount exceedingDKK 50,000. The court fee for filing the writ cannotexceed DKK 75,000.

If the amount involved is more than DKK 50,000, anadditional court fee of the same amount asdescribed above will have to be paid when the courtassigns a day for the hearing.

Destruction of goodsDestruction of goodsDestruction of goodsDestruction of goodsDestruction of goods

The Court can order that the infringing products besurrendered for destruction to ensure the efficacyof a permanent injunction. Likewise, the court canorder the destruction of goods which have alreadybeen seized during the enforcement proceedings.



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The rights holder will have to bring a claim forsurrender and destruction for the court to make suchan order.

Damages including valuable considerationDamages including valuable considerationDamages including valuable considerationDamages including valuable considerationDamages including valuable consideration

If an IP right is infringed the rights holder is entitledto damages from the infringer. All the major IP laws(including the copyright, patent, trademark anddesign acts) provide that the rights holder is entitledto a reasonable (license) fee whether theinfringement was intentional or made negligently.The rights holder is further entitled to becompensated for any further damages caused bythe infringement. Consequently, even if there are nodocumented losses, the rights holder is entitled to areasonable fee and if a rights holder brings a claimfor valuable consideration, he will only be awardeddamages to the extent that these go beyond theamount awarded as valuable consideration. Thefurther damages may include damages for marketdisturbance (or for the costs expected to benecessary in order to make good the damage orconfusion made in relation to the goodwill of themark/product) and furthermore such other expenses(e.g. test purchases) as has been caused by theinfringement. Triple-damages and obtaining theinfringer’s profit as such is currently not an availableremedy in Denmark.

Traditionally, damages awarded by the Danishcourts are rarely very high in cases involvinginfringements of intellectual property rights. One ofthe reasons for this is that it has often been verydifficult to document or establish the size of thelosses resulting from such infringements. However,in recent years the courts have been somewhat moregenerous when awarding damages in some cases.Further, the new rules on preservation of evidenceshould also contribute to this development since itgets easier for the rights holders to substantiate thelosses suffered.


The general principle under Danish law is that theparty “losing” the trial must pay legal costs to theparty who “won”. If each party wins some and losessome, each party will typically bear their own costs.

The legal costs awarded by the courts are, however,usually very modest and will very rarely cover the

actual legal costs. However, with effect from 1 July2005, the Administration of Justice Act has beenamended in order to encourage the courts to awardsomewhat higher legal costs, but the guiding levelssuggested in connection with the change of the law,and which are based on the value of the claimsadjudicated, would still normally not cover the actuallegal costs.

All Danish intellectual property laws contain penaltyprovisions regarding infringements of intellectualproperty rights. As explained above, theinfringements of intellectual property rights will undercertain circumstances also amount to criminaloffences and the infringer might face a fine or, invery serious cases, imprisonment.

It is possible to institute a ‘private’ criminalprosecution as a part of the civil proceedings if themaximum penalty is a fine and if the relevantprovision allows for private prosecution. Such casesare quite rare as the rights holder is often moreinterested in stopping the infringements, determinethe magnitude of these in order to be able to raise aclaim for damages, and obtain information aboutthe sources of the infringing products.

The police can, at the request of the rights holder,also open criminal cases for wilful infringement ofintellectual property rights, but in practice they arereluctant to do so. It seems, however, that within thelast year the police have started investigating suchmatters more often when requested by the rightsholders.

The maximum penalty that can be imposed on aninfringer is normally up to one year for wilfulinfringements of patent, trademark or design rightsand one year and a half for wilful copyrightinfringements. However, particularly aggravatingcopyright infringements may also be covered by theDanish Criminal Code. In such cases, the maximumpenalty is six years’ imprisonment.

A criminal procedure will typically be relevant incopyright cases and trademark cases if aninfringement is of a very aggravating andprofessional character (e.g. container loads).



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Council Regulation (EC) 1383/2003 provides theintellectual property rights holder with an opportunityto request that Danish Customs take action in orderto seize infringing goods. The Council Regulationcovers many different intellectual property rightsincluding copyright, registered trademarks, patentsand design rights (both registered and EUunregistered designs). The rights holder can applyto Danish Customs for action by Customs in relationto infringing goods which enter the Community orwhich are exported or re-exported from theCommunity.

Danish Customs may also seize goods on its owninitiative if the goods are suspected of infringing anintellectual property right covered by the CouncilRegulation, and the Customs have done so in themajority of cases. In these cases the rights holdermust file an application for customs action withinthree days.

Danish Customs (unfortunately) cannot take actionin relation to grey market goods.


The national application form applies to any type ofintellectual property right that can be protected byCustoms. This form only covers action in relation toDenmark. The applicant can also request action bythe Customs authorities of one or more MemberStates other than Denmark if the applicant is theowner of a Community trademark, a Communitydesign right, a Community plant variety right, or adesignation of origin or a geographical designationprotected by the Community. If the rights holderrequires Customs action in two or more MemberStates, another Community application form mustbe used. Both forms are currently found at DanishCustoms website www.toldskat.dk.

It may take up to 30 days for Danish Customs toprocess the application.

There is no fee for filing such applications in the EU,but all applications for action must be accompaniedby a declaration signed by the rights holder in whichthe rights holder accepts liability towards the allegedinfringer if the goods are later found not to beinfringing, or if the Customs action procedure is

discontinued owing to an act or omission by therights holder. By signing the declaration, the rightsholder also agrees to pay all costs incurred byCustoms in keeping the goods under Customs’control, including storage charges and costsincurred in the destruction of the goods.

Besides the above-mentioned declaration, theapplication must contain the following:

• sufficient evidence that the rights holder owns therelevant rights• an accurate and detailed technical description ofthe goods• any specific information the rights holder may haveconcerning the type or pattern of fraud• name and address of the contact person appointedby the rights holder

The application for customs action remains in forcefor 12 months. This period can be extended forfurther 12-month periods at the rights holder’srequest.

Customs action prCustoms action prCustoms action prCustoms action prCustoms action procedurocedurocedurocedurocedureeeee

If Danish Customs detect goods suspected ofinfringing an intellectual property right covered bythe Community Regulation, Customs will detain thesuspected goods and inform the rights holder andthe alleged infringer of its action and the actual orestimated quantity and the actual or supposednature of the goods. If the rights holder has filed anapplication, Customs will at the rights holder’srequest inform him of the names and addresses ofthe consignee, the consignor, the declaring partyor the holder of the goods and the manufacturer.

Customs will also invite the rights holder to inspectthe goods. In practice, Customs will normally senda sample of the goods or digital photographs in orderto enable the rights holder to determine whether thegoods are infringing his rights.

The rights holder must within ten working days ofthe notification from Customs do either of thefollowing:

♦ provide Customs with the written agreementof the declaring party, the holder or the owner of thegoods to abandon the goods for destruction

Denmark

Customs Procedures


46

♦ file a writ with the relevant court in order todetermine whether an intellectual property right hasbeen infringed, and notify Customs thereof.

This period may be extended by ten further workingdays where warranted by circumstances.

Additional measurAdditional measurAdditional measurAdditional measurAdditional measureseseseses

In order to enable effective enforcement of the IPrights provided for by the IP acts it would bewelcomed that the preservation of evidence remedydid not exclude process patents and utility models,as is currently the case. Particularly in such cases,preservation of evidence can be necessary toenable the rights holder to determine how a productis made.

As for damage awards, a rule allowing for the profitmade by the infringer to be awarded to the rightsholder would also be reasonable and practical, asthis would often be an easier way of determiningthe size of the damage claim, instead of only allowingfor the ‘loss’ suffered by the rights holder, as iscurrently the Danish position.

Danish Customs should be enabled to take actionin relation to grey market goods, i.e. parallel importsof IP covered goods from non-EEA countries, themarketing of which the rights holder has notauthorised in the EEA.


Most cases concerning infringements of intellectualproperty rights are treated as civil actions. The policecan institute criminal cases on suspicion of wilfulinfringement of an intellectual property right, but inpractice they are often very reluctant to do so. Civilactions will therefore almost always be the mostefficient way for an intellectual property rights holderto protect his rights.

With the introduction of the rules concerningpreservation of evidence, the rights holders nowhave a very effective means to discover the extentof infringements of their rights. This preservation ofevidence enables the rights holders to betterdetermine the size of the subsequent claim fordamages in the confirmatory suit.

In practice, preservation of evidence is oftencombined with an application for an interiminjunction. That way, the rights holder will be able toget a preservation of evidence and an interiminjunction in one set of enforcement proceedings.This has proven to be both more efficient and cost-effective.

Customs action has also turned out to be a quiteefficient means of protection of intellectual propertyrights. Since the infringing goods are detained byDanish Customs at the border they will never actuallyreach the Danish market. Danish Customs is usuallyvery cooperative and proactive and will often act onits own initiative when infringing goods arrive at theborder, if an application for surveillance has notalready been made.

One drawback of the Danish legal system from arights holder’s perspective is that the damages andlegal costs awarded by the courts are rarely veryhigh in intellectual property cases.

Customs Procedures

47

EGYPT

Introduction

Intellectual Property Law (IP Law) No. 82 of 2002, replaced a collection of laws enacted overfifty years ago, with a unified body of laws that brings Egypt’s IP laws up to par with most of thedeveloped world and the various IP treaties to which it has subscribed. The IP Law addressesthe major types of IP rights. It encompasses patents, integrated circuits designs, trade secrets,trademarks and geographical indications, industrial designs, copyrights and plant variety rights.

This article provides an overview of enforcement of IP rights in Egypt, covering the variouscivil, criminal and administrative procedures available to IP owners and the possible remedies.


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IP infringement is governed by the general principlesof torts under Egyptian law. Article 163 of the CivilCode states that “whomever caused harm to anotheris liable for compensating the aggrieved party forlost profits and actual losses”. An IP owner can showthat the infringement has directly resulted in actuallosses or lost opportunities by submitting financialaudits to that effect.

To establish harm, an IP owner should prove the actof infringement itself first then provide evidence ofactual losses sustained, and potential revenue lost,as a result of the infringement. Courts haverecognized it is unfair competition for an entity toattempt to attract the consumers of anotherestablishment through the use of a confusinglysimilar mark, as an additional cause of action toaugment actions under trademark infringement.

An amendment to the law in 1999 extended theapplication of unfair competition to the unauthorizeduse of other forms of IP as well. Article 66 of theCommercial Code provides that “any act that iscontrary to customs and principles of commercialtransactions is deemed unfair competition, and inparticular the infringement of trademarks, patentsor trade secrets, the inducement of the employeesof another to divulge trade secrets… “.

InjunctionsInjunctionsInjunctionsInjunctionsInjunctions

In general, courts in Egypt are very reluctant to issueinjunctions or other interim orders. One of thereasons may be the absence of a requirement topay a bond to cover the possible losses in case theclaim of the IP owner cannot be sustained. Thismakes judges wary of disadvantaging the otherparty. That said, the law allows judges to issueinjunctions and interim orders without restrictionwhenever there is a right that may be lost due to thelength of normal procedures. Moreover, the IP lawspecifically empowers judges to issue injunctionsas follows:

♦ Article 35 allows judges, in cases of patentinfringement, to issue injunctions or interim ordersto confiscate and destroy infringing products.

♦ Article 115 allows judges, in cases oftrademark infringement, to issue interim orders to

preserve evidence, seize counterfeits, and takeofficial notes of the equipment used to make thecounterfeits.

♦ Article 179 allows judges, in cases of copyrightinfringement, to issue interim orders to take officialnotes of the equipment used to make the copies,stop publication or distribution of infringing work, orrequest proof of the revenue made from selling theinfringing copies.

Obtaining evidenceObtaining evidenceObtaining evidenceObtaining evidenceObtaining evidence

Generally, the claimant has the burden of proof. IPowners have the liberty of presenting all the evidencethey find, and may request the court to order theinfringers to produce original receipts, financialrecords, production logistics and any other relevantevidence. In most IP cases, the matter is referred toexperts, who are public servants employed by theMinistry of Justice. Experts have very wideinvestigative powers and may inspect the evidenceof both parties as well as request further evidence.Hence, discovery as a process - though notrecognized as a process that takes place beforethe trial commences, like the US model - is carriedout either by the court or the expert body throughoutthe various stages of the case. Parties are alsoallowed to present any further evidence to courtsup and until the case is reserved for judgment.Except for affidavits made by the plaintiff ordefendant, which are considered self-serving, allother evidence is allowed.


Civil actions seeking damages for IP infringementare straightforward under general principles of law.Thus, a wrongdoer should compensate theaggrieved party for actual losses, lost opportunitiesand moral harm sustained as a result of thewrongdoing.

Despite the clear procedures, civil actions fordamages suffer from four major setbacks:

(i) An Egyptian judge will more often than not referan IP matter to a government expert, who will thenwrite his or her own analysis and make theappropriate recommendation to the court. Thisprocedure delays the judicial process and is highlysusceptible to corruption, given the fact that most


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Egypt

experts have much lower salaries compared to thoseof judges. Additionally, in most cases the judgesimply affirms the report’s recommended order.

(ii) Courts usually award very low damagescompared to the requested damages. In one casethe authors were involved in, the court awardedtwenty thousand Egyptian pounds in damagesdespite the submission of documents proving actuallosses of two hundred thousand.

(iii) It may take up to four years until a decision isrendered.

(iv) It is very difficult to execute civil judgmentsrelating to the confiscation or destruction of theinfringing goods since the court bailiffs often refuseto do so for lack of resources. Similarly, the policerefuse to execute a judgment of a civil court thatthey fail to understand. This is clearly another areathat needs urgent reform.

It is therefore always best to pursue IP infringementvia the criminal action outlined below wheneverpossible.


Egyptian IP law penalizes a number of IPinfringements and treats them as misdemeanors,punishable by fines or imprisonment, or both. Eachof the (4) sections relating to the various forms of IPunder the IP Law defines misdemeanors relating toit.


IP Law imposes a fine ranging from twenty to onehundred thousand Egyptian pounds, which isincreased to between forty and two hundredthousand in case of repeat offences. This is inaddition to or in lieu of an imprisonment term thatdoes not exceed two years for the following offences:

1. Manufacturing a patented product2. Selling or offering to sell, importing or possessingpatented products3. Affixing labels on products that falsely state theproducts are protected by patents

The officers of the Patent Office, an agency of theMinistry of Higher Education and Research, areresponsible for enforcing the rights of the patentowner. Once a complaint is filed, the officers willinvestigate, take samples and test them to determinewhether infringement took place, then refer thematter to the district attorney to press charges. ThePatent Office also acts as an expert body in caseswhere the police or the Supply inspectors (for foodand drugs for example) are the ones investigatingthe infringing products.

RegisterRegisterRegisterRegisterRegistered Ted Ted Ted Ted Trademarksrademarksrademarksrademarksrademarks

The IP Law imposes a fine ranging from five to twentythousand Egyptian pounds, which is increased tobetween ten and fifty thousand in case of repeatoffences. This is in addition to or in lieu of animprisonment term of two months for the followingoffences:

1. Faking a trademark or using a confusingly similartrademark2. Use with bad faith a fake trademark3. Selling or offering to sell, or possession of, fakeproducts with knowledge

The Ministry of Supply and Internal Trade isresponsible for enforcing the rights of trademarkowners and protecting consumers. Once theinspectors seize samples of the counterfeits orinfringing product, they refer it to the TrademarkOffice, which acts as the expert body. The IP Lawextends the same protection awarded to registeredtrademarks to famous trademarks. The EgyptianTrademark Office (“ETO”) or the enforcementauthorities do not yet apply this, however.

Famous TFamous TFamous TFamous TFamous Trademarksrademarksrademarksrademarksrademarks

TRIPs Article 16.2 provides that Article 6bis of theParis Convention shall apply mutatis mutandis inrelation to the protection of well-known marks. Article6bis requires member countries to refuse or cancelregistration and prohibit commercial use of atrademark that is a well-known mark in the countryof registration or use. Unfortunately, the Article giveslittle guidance on how to determine what constitutesa famous mark. It does however state thatknowledge of the trademark in the relevant sectorof the public must be taken into account.




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The IP Law does not provide criteria for determiningfame although TRIPs Article 16.2 provides that indetermining whether a trademark is well known,member countries must take account of theknowledge of the trademark in the relevant sectorof the public, including knowledge in the membercountry concerned, knowledge accrued as a resultof the promotion of the trademark. Neither the IPLaw nor its Executive Regulations include this TRIPsprovision.

The Trademark Office is currently waiting for theMinistry of Internal Supply and Trade to issue aministerial decree providing guidance in determiningfame. Their understandable reluctance to issuefindings of fame presents a huge obstacle toEgyptian and foreign enterprises that introduce anew product in the market. Due to the 3 to 4 yearcurrent backlog at the ETO, products bearing afamous mark are effectively left without legalprotection until the trademark registration issues areresolved.


IP Law imposes a fine ranging from five to tenthousand Egyptian pounds, which is increased tobetween ten and fifty thousand in case of repeatoffences, in addition to or in lieu of an imprisonmentterm of three months for the following offences:

1. Selling or renting a copyrighted audio work withoutwritten authorization of the owner2. Copying any copyrighted work or sellingunauthorized copies with knowledge3. Publishing a protected work over the internet orintranets without written authorization4. Tampering with digital protection mechanisms5. Infringing the author’s moral rights

Three Ministries oversee copyright enforcement.

The Ministry of Culture oversees the enforcement ofdramatic and non-dramatic literary works, works ofvisual art, musical works, sound recordings andaudiovisual works.

The Ministry of Media oversees the enforcement ofthe rights of broadcasting organizations as aneighboring right.

The Ministry of Information and Communications

oversees the enforcement of copyrights in computersoftware and databases.

The three Ministries mentioned above have yet todetermine what is the precise extent of theirresponsibilities. Additionally, the Ministry of Supplyand Internal Trade can be involved when theinfringing product is also a counterfeit.

The Internet Investigation Unit of the Ministry ofInterior Affairs can be called upon where thecopyright infringement takes place on the internet,and the Copyright Police of the Ministry of InteriorAffairs for the infringement of any copyrighted workwhere software is involved. The work of theseMinistries and agencies overlap with little if anycoordination, making it difficult for the copyrightowner to determine where to file his or her complaint.

Instigating criminal actionInstigating criminal actionInstigating criminal actionInstigating criminal actionInstigating criminal action

The IP law allows IP owners, whose rights have beeninfringed, to file a complaint to the authorities. If theauthorities find prima facie evidence of infringementthe matter is transferred to the District Attorney, whoin turn will press charges.

Unlike other systems of law, all IP infringementincidents – not only counterfeiting - are deemedcriminal misdemeanors that may be prosecutedfollowing complaint by the IP owner.

If convicted, the accused faces a monetary penaltyand a possible imprisonment term, confiscation ofthe goods, possible closure of the entity for up tosix months and the publication of the decision indaily newspapers.

A very unique and useful feature of Egyptian law isthat the trademark owner can join the criminalproceedings as a civil claimant, and is allowed topresent evidence of harm.

Being allowed to take a proactive role in a criminalproceeding gives IP owners several advantages:first, it allows the plaintiff to support the prosecution’scase in cases where the prosecution takes toopassive a role; second, if obtained, the convictioncan be used as evidence in a civil claim fordamages; third, it affirms the public image that theIP owner is aggressive in pursuing infringers, whichcreates a deterrent effect on others.


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This course of action is preferable to a civil actionfor its shorter duration (six to twelve months) andstronger deterrent.

There have been a considerable number of suchcases recently, mainly involving copyright andtrademark infringement where the court found infavour of IP owners. This trend can continue as longas help is given to the concerned enforcementauthority to issue investigative reports.

The only cases with a low rate of success are casesinvolving an unauthorized display of a trademarkon a shop front. In most cases, Egyptian judges rulethat this practice should not be penalized if the shopsells genuine products bearing the same trademark.

Administrative actionAdministrative actionAdministrative actionAdministrative actionAdministrative action

To cancel any IP registration, an interested partyshould instigate action in the administrative courtrequesting cancellation on the basis of prior use orany other legitimate ground.

Administrative court cases proceed at a faster pacethan civil court cases, but still suffer from the samesetback mentioned earlier. Similar to civil courts,administrative courts have to refer the case to theState Commissioners for their report on the case.The latter is a fact-finding body, which recommendsto the court how the case should be decided andthe court mostly follows their report. The problem,again, is that the State Commissioners like thegeneral experts are not trained in IP law.

It is a preferred business practice to monitor thetrademark and patent public gazettes for newlyregistered trademarks, patents, and industrialdesigns and to oppose the application within thestatutory sixty days period following publication. Thismay result in a faster resolution of the matter if theETO, or the Patent Office (EPO), is convinced theyshould not proceed to registration.

Article 51 of TRIPs requires members to enable IPowners who have valid grounds for suspectingimportation of infringing goods to lodge a complaintwith the competent authorities for Customsauthorities to stop the release of the goods into thestream of commerce.

Members may also enable IP owners to suspendnot only the import but also the export of infringinggoods.

Egypt has so far only enforced the exports half ofthe provision. Thus, if the export control authoritieshave reason to believe that the products beingexported are counterfeit, they will attempt to obtaina declaration from the trademark owner that theexported products are genuine.

There is no law or regulation to date on bordermeasures for imports of infringing products. Despitethe lack of a clear set of procedures, seizures ofinfringing products at border points have taken placewith some success.

The IP owner has to file a complaint with a districtattorney requesting an order be issued to theCustoms Authority to seize the shipment until a courtdecides the matter, usually within fifteen days. Thecomplaint has to include the class of infringingproducts that have entered the country, the specificport of entry and, if available, the shipment number.

Though Articles 52 and 54 of TRIPs in such casesexpressly require a security bond, the districtattorney does not require one since there is nomechanism for accepting a bond under the law. Thedistrict attorney simply acts to prevent thecommission of a misdemeanor (namely, entry ofinfringing goods into commerce).

Many IP owners have complained about the lack ofborder measures, and a ministerial decree regardingborder measures is expected in 2006.

Egypt

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ConclusionConclusionConclusionConclusionConclusion

IP owners in Egypt face the usual challenges relatedto IP protection in a developing country.

Erratic enforcement, a lack of IP training in thejudiciary and the enforcement bodies, lack ofcoordination between the various authorities, a slowmoving legislature and partial compliance with IPtreaties such as TRIPs, are some of the issues thathave to be addressed.

On the other hand, both the industry and thegovernment have expressed a cautious interest intoimproving the level of IP protection.

Nonetheless, the key to a better IP system are IPowners themselves, who can successfully lobby thegovernment for an IP regime that best meets theirneeds, and seek vigorous enforcement of theirrights.

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FINLAND

Introduction

In the Finnish legal system, civil and criminal processes are mostly kept separate even ifpartial overlap is possible. When it comes to intellectual property rights infringements, bothmethods of redress are used.

The choice between civil and criminal measures depends entirely on the particularities ofeach case, so it is difficult to generalise as to which should be recommended.


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In Finland, the competent judicial authority inintellectual property related civil proceedings isnormally the district court of general jurisdiction. Thedefendant’s domicile situated under a certain court’sjurisdiction usually defines the competent court. Thisgeneral rule is applicable in copyright infringementmatters.

However, in certain matters, the Helsinki district courthas an exclusive competence. This is the case in allcivil proceedings concerning patent and trademarkdisputes, matters concerning utility models (pettypatents), industrial designs, topographies forintegrated circuits and plant variety rights.

The timescale under which a civil action related tointellectual property rights can be brought from thebeginning to its conclusion is at the momentapproximately between 8 to12 months. The timeobviously varies depending on the nature of thecase.

According to a basic procedural principle in Finnishlaw, legal expenses (court fees and litigation costs)are imposed on the party against whom the case isruled. This means that the losing party has to bearit’s own and the other party’s expenses, such aslawyer’s fees and witness costs. The law, however,allows the court to rule otherwise on the costs, forexample when the winning party’s costs are higherthan what is considered fair and reasonable. Theparties can also be obliged to bear their own costsif the case is considered to have been unclear fromthe beginning, or if both parties win a portion of theirclaims, and lose other parts.

Therefore, it is advisable to give all claims a thoroughconsideration when drafting a summons, in order toavoid a situation where a relevant portion of theclaims is rejected, even if the main claims areupheld.

PrPrPrPrPrecautionarecautionarecautionarecautionarecautionary measury measury measury measury measureseseseses

Finnish law includes several precautionary measuresthat can be applied at any point during a civilproceeding in a court of law. These measures canalso be applied before full hearings take place orafter the case has been closed. The function is toprevent the (alleged) infringement from causing

more damage. The court decides on the use ofprecautionary measures following the plaintiff’sdetailed petition. The court decides urgently whetheror not the precautionary measure in question is tobe applied, and issuance of an interim ruling bydefault is also possible. In intellectual propertydisputes, a court decision concerning precautionarymeasures can be obtained within a day in urgentcases. The claimant is, as a general rule, obliged toplace a security in order to cover the possibledamages caused to the defendant by an ill-foundedprecautionary measure.

According to general law on court proceedings, aprecautionary measure can, for example, oblige thedefendant to do something or not do something atthe risk of a fine, or to entitle the claimant to takecertain measures. In intellectual propertyinfringements, the negative option is used more often(for example a prohibition to continue the use of atrade mark). Specific Acts related to intellectualproperty rights also include precautionary measures.These can contain detailed rules that are to beapplied to the intellectual property right in question.

In intellectual property disputes, precautionarymeasures can effective and are commonly used.


Civil remedies for an IPR infringementIPR infringementIPR infringementIPR infringementIPR infringement vary, and tosome extent depend on the right in question. Theavailable remedies are defined in the specific Actsconcerning the various types of intellectual propertyrights. The most important remedies that arecommon for all infringements are injunction,damages, confiscation and destroying of theinfringing goods. In the Finnish system,compensation for damages cannot be higher thanthe actual damage caused; punitive damages arethus not available.

All remedies are available to both domestic andforeign rights holders.

In copyright infringementscopyright infringementscopyright infringementscopyright infringementscopyright infringements, the main civil remediesare copyright indemnification and damages. Issueof the former does not require negligence from theinfringer, and thus all kinds of infringements obligethe offender to pay copyright indemnification.Normal licensing fees are often used as a referencepoint when considering the amount of the


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Finland

indemnification, even if this is not possible in allcases. In addition to the previously mentionedindemnification, all other damages caused to therights holder must be compensated according togeneral indemnity law if the infringement is donewith gross negligence or deliberately. Based on arights holder’s petition, the court can order the workor volume infringing copyright to be disposed of,changed, or handed over to the rights holder in orderto prevent further infringements.

In patent infringementspatent infringementspatent infringementspatent infringementspatent infringements, the available civil remediesare injunction, patent indemnification, damages andthe disposing or confiscation of the infringingproducts. Upon infringement, the court can forbidthe offender to continue or to repeat his actions.

Concerning patent indemnification, theinfringements are divided into 3 categories. If theact is done with negligence or deliberately, thepatent indemnification based on the value of anormal licence agreement is followed by generaldamage compensation if such damage has beensuffered. This would be the case if the damagesuffered were bigger than the value of a normallicensing agreement. If the infringement has beencommitted with only slight negligence, thecompensation can be settled at a smaller value. Ifthe act has been committed without any negligence,the offender shall be ordered to pay compensationonly to the extent that the court considers equitable.

Patent indemnification is limited to the damagescaused under the last 5 years prior to filing thelawsuit. On the basis of the rights holder’s petition,the court can order the infringing products to bedisposed of, changed, or handed over to the rightsholder in order to avoid further infringements.

In utility model, design right and plant variety rightinfringements the civil remedies are the same asthose applicable to patent disputes explainedabove. Concerning the topographies for integratedcircuits, the remedies are in general the same aswith patents, even if there are certain exceptions indetail.

In trademark infringementstrademark infringementstrademark infringementstrademark infringementstrademark infringements, the civil remedies arein general the same as for patents. However, thedamages compensation system is based on generalindemnity law, which means that in cases where theinfringement is caused deliberately or with

negligence the rights holder is obliged to prove theexistence of a causal connection, the amount ofdamages suffered and other relevant facts. If thetrademark infringement is committed withoutnegligence, the offender can however be orderedto surrender the account of profits that he has earnedfrom the infringement during the three years beforethe proceedings. This obligation applies only to theextent that is fair and reasonable taking into accountthe offender’s financial situation.

Trademark infringement damages become barredby the statute of limitations after three years followingthe moment the rights holder learned of theinfringement and not exceeding a maximum of 10years following the infringing act.

In company name disputescompany name disputescompany name disputescompany name disputescompany name disputes the primary remedy isan injunction, which applies to both registered andunregistered business names. Damagecompensation requires negligence in all cases, andbecomes barred by the statute of limitations afterfive years.


If an infringement has been made wilfully or bynegligence the act may result in criminal liability.

Provisions for minor violations are regulated inspecific legislation concerning various intellectualproperty rights. Serious offences or violations ofintellectual property rights are prescribed in Article1 (copyright offence) and Article 2 (industrialproperty right offence) of Chapter 49 of the PenalCode.

The maximum criminal penalty for an infringementof intellectual property right is imprisonment for twoyears.

The competent judicial authority in criminalproceedings is normally the district court of generaljurisdiction. A charge of IP infringement should,therefore, as a general rule be heard by the court inthe place of commission of the offence. However,as the Helsinki district court has specific jurisdictionon IP infringements, criminal proceedings (with theexception of Copyright matters) are often referredto Helsinki.




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Relating to intellectual property penal matters, arights holder who claims to be the injured party hasthe right to bring a criminal prosecution. The publicprosecutor shall not bring charges unless the injuredparty reports the offence for prosecution.

After the complainant has requested the prosecutorto bring charges the prosecutor can run the caseand demand a penalty and monetary compensation.Rights holders can also run the whole criminalprosecution by themselves. Nevertheless, the publicprosecutor shall bring the charges even without thereport of a complainant if a very important publicinterest requires that charges be brought (the PenalCode Article 49 Chapter 3).

The timescale under which a criminal action relatedto intellectual property rights can be brought fromstart to end is at the moment approximately betweentwo to eight months.

PrPrPrPrPre-trial pre-trial pre-trial pre-trial pre-trial procedurocedurocedurocedurocedureseseseses

The use of coercive means when investigating theinfringement of an intellectual property right is bedetermined by the Coercive Criminal InvestigationMeans Act (450/1987). The authority makes adecision on the use of coercive measuresresponsible for investigating the case. In practice,this authority is the Police or Customs.

Coercive measures can be subjected to a personwho is suspected of a copyright offence or anintellectual property offence. This is possiblebecause the maximum imprisonment penalty is twoyears. The most important pre-trial procedures forthe investigation of infringements of intellectualproperty rights are seizure, house search andprecautionary measures, such as preliminaryinjunctions.


Primary remedies available for infringements ofcopyright are a penalty and liability to pay damages.Sanctions are available for both copyrights andrelated rights. Punishment for a copyright offence isprescribed in Article 1 of Chapter 49 of the PenalCode.

There are two different types of criminal actsregulated as a copyright offence in the Penal Code.

In order that the act will be sentenced as a copyrightoffence both acts require evidence of premeditationand intent to make a profit. This means that the actrequires intent to be punishable as a copyrightoffence.

Section 1- Copyright ofCopyright ofCopyright ofCopyright ofCopyright offencefencefencefencefence (1010/1995) the PenalCode(a) A person who for profit and in violation of theCopyright Act (404/1961) and in a mannerconducive to causing considerable inconvenienceor damage to the person holding a right, breachesthe right of another to:

1)a literary or artistic work2)the performance of a literary or artistic work3)a record or other device where sound hasbeen recorded4)a film or other device where moving imageshave been recorded5)a television or a radio broadcast6)a register, table, program or another similarwork referred to in the Copyright Act andcontaining the compilation of a lot ofinformation, or a database whose compilation,verification or presentation has required a lotof effort; or (251/1998)7)a photograph

shall be sentenced for a copyright offence to a fineor to imprisonment for at most two years.

(b) A person shall also be sentenced for a copyrightoffence if he/she for profit and in manner conduciveto causing considerable inconvenience or damageto the person holding a right, imports for the purposeof dissemination a sample or a copy of a work or aphotograph, a record, film or other device or aregister, table, program or another similar workcontaining the compilation of a lot of information, ora database whose compilation, verification orpresentation has required a lot of effort, as referredto in paragraph (1), while knowing that it has beenproduced or copied in circumstances under whichsaid production or copying would in Finlandpunishable under paragraph (1) or section 56a ofCopyright Act. (251/1998)

VVVVViolation of copyrightiolation of copyrightiolation of copyrightiolation of copyrightiolation of copyright is prescribed in the CopyrightAct 56a. Contrary to the offence of copyright, hereintent is not required to trigger the copyright violationbut violation of copyright results from grossnegligence. Anyone who wilfully or out of grossnegligence violates a provision issued for the


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protection of copyright in the Copyright Act, orimports into the country a copy of a work fordistribution to the public that he/she knows, or haswell-founded reason to suspect, to have beenproduced outside the country under suchcircumstances that production in Finland would bepunishable under the Copyright Act, will besentenced for a copyright violation to a fine.

This requires, of course, that the act is not punishableas a copyright offence explained above. Violationof copyright does not require that the purpose wasto make a profit or that the act caused considerableinconvenience or damage to the person holding theright. The penalty for copyright violation is a fine.

Infringements of copyrights may also cause liabilityto pay compensation. The Copyright Act Article 57Section 1 prescribes that any person who uses awork in violation of the Copyright Act will be obligedto pay the rights holder fair compensation for suchuse even if the violator has been in a good faith.

According to the Copyright Act Article 57 Section 2,liability for damages requires that the use of work iswilful or out of negligence. The infringer shall, inaddition to compensation, also pay damages for anyother loss, as well as for mental suffering or otherinjury caused by the crime.

Intellectual prIntellectual prIntellectual prIntellectual prIntellectual properoperoperoperoperty ofty ofty ofty ofty offencefencefencefencefence

The criminal sanctions relating to infringements oftrademarks, patents or design rights are regulatedin Article 2 of Chapter 49 of The Penal Code.

Severe infringements of the rights mentioned aboveare punished as an intellectual property offence. Inorder for an act to be punished as an intellectualproperty offence the act has to be committed in amanner conducive to causing considerable financialloss to the person holding a right. Intent is alsorequired. Less severe violations of intellectualproperty rights where the sanctions are only a fineare regulated in the specific intellectual propertylegislation.

Section 2 intellectual printellectual printellectual printellectual printellectual properoperoperoperoperty ofty ofty ofty ofty offencefencefencefencefence (578/1995)of the Penal Code says:A person who in violation of the Trademark Act (7/1964), the Patents Act (550/1967), the RegisteredDesigns Act (221/1971), the Act of Protection of

Semiconductor Topographies (32/1991), The UtilityModels Act (800/1991) or the Plant Variety RightsAct (789/1992), and in a manner conducive tocausing considerable financial loss to a personholding a right, breaches

1) the right to a trademark2) the exclusive right conferred by patent or3) the right to a registered design4) the right to semiconductor topography5) the right to a utility model or6) a plant variety right

shall be sentenced for an intellectual propertyoffence to a fine or to imprisonment for up to twoyears.


As previously noted, intentional infringement of atrademark is punishable by criminal law. For moreserious infringements of intellectual propertyoffences the violator can be sentenced to a fine orto imprisonment for up to two years.

According to the Trademark Act Article 39, when aninfringement of trademark is minor the violator canbe sentenced for violation of trademark to a fine. Aperson who intentionally or negligently infringes atrademark shall be liable to also pay reasonablecompensation for the exploitation of the inventionand damages for other injury caused by theinfringement. Liability to pay compensation mayoccur even if the violator has acted withoutnegligence.

A complainant generally brings charges oftrademark offences. The public prosecutor does notbring charges for offences unless a rights holderreports them. If the infringement of trademark is anintellectual property offence as prescribed in thePenal Code, the public prosecutor can bringcharges even without the request of a rights holderif a very important public interest requires thatcharges be brought. Sentencing a violator forinfringement of a registered trademark is possibleonly if the infringement took place after the date ofregistration.


Violation of a patent right is regulated in Article 57Chapter 9 of the Patent Act. Where a personintentionally infringes a patent, he shall, unless the


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act is punishable as an industrial property rightsoffence under Article 3 of chapter 49 of the PenalCode, be liable to a fine for violation of a patent right.The violation of a patent right is a complainantoffence and the public prosecutor does not bringcharges unless the injured party reports it.

Infringement of a patent right may also leave theviolator liable to pay compensation for damages.According to the Patent Act Article 58, any personwho intentionally or negligently infringes a patentshall be liable to pay reasonable compensation forthe exploitation of the invention and damages forother injury caused by the infringement. In the caseof slight negligence, the compensation may beadjusted accordingly.

Design RightsDesign RightsDesign RightsDesign RightsDesign Rights

The Registered Designs Act, Chapter 7, Article 35regulates that where the infringement of a design isintentional, the offender shall, unless the act ispunishable as an industrial right offence underSection 2 of Chapter 49 of the Penal Code, be liableto a fine for violation of the right to a design.

Violation of a patent right is a complainant offenceand the public prosecutor shall not bring the chargesunless the injured party reports it.

A violator’s possible liability to pay compensation isprescribed in the Registered Designs Act, Article36. Anyone who intentionally or through negligenceinfringes the right to a design shall pay reasonablecompensation for the use of the design, as well ascompensation for the further damage caused by theinfringement.

If the negligence was minimal, the amount of thecompensation may be reduced. Anyone whoinfringes the right to a design without intention ornegligence shall pay compensation for use of thedesign, in so far as such compensation may befound reasonable.


Council Regulation (EC) No 1383/2003 (the“Regulation”) allows the proprietor of an IP right tohave the infringing products seized as they arrive inFinnish territory, and to prevent them from going onto the market.

Under the Regulation, the rights owner can makean application to the Finnish Customs to prohibitentry into the Community and the export or re-exportfrom the Community of infringing goods. Theapplication can also be lodged in cases where therights owner does not have prior knowledge of aspecific shipment of infringing product arriving inFinland.

Further, if the Finnish Customs detects suspectedinfringing goods the authorities will ex officio havethese detained and inform the rights holder aboutthe suspected counterfeits.


The necessary application forms are available fromFinnish Customs and follow the outlines defined bythe European Commission under the Regulation.

Finnish Customs has not set out any fixed periodsfor the forms to be lodged with them. They shouldobviously be filed in good time prior to the expectedtime of the importing or exporting of suspectedinfringing goods. An application for generalsurveillance can be filed at any time, for a monitoringperiod of one year, maximum. This period can beextended for further twelve-month periods uponsubsequent application.

Within the form, the rights holder must provideCustoms with a description of the (original andsupposedly infringing) goods to enable Customs torecognise them, any specific information that heeventually has regarding the shipment, and sufficientevidence on his proprietorship of the relevant rights,such as a copy of a trademark registration certificate.

Finnish Customs does not charge the rights holderany administration fees for processing theapplication. However, the applicant is underobligation to sign an undertaking where he agrees

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to pay all costs and liabilities incurred for the actionsthat are based on his application, for example;storage charges when the suspected goods havebeen seized and are later found not to be infringing,legal costs and compensation for any loss sufferedif the goods are found not infringing; and costsincurred in the destruction of the goods.

When Customs detains suspected goods, it notifiesboth the rights holder and the alleged infringer of itsaction, as well as of the nature and quantities of thegoods in question. If the rights holder has a validapplication in force, the Customs will also providehim with the name and address of the declarant,consignee/consignor, importer/exporter andmanufacturer (if available).


In relation to any kind of detained goods, the rightsowner is invited to examine a sample, which in somecases can be delivered in the form of digitalphotographs. The rights owner then has ten workingdays from the date he is notified of the goods’detention to submit either a criminal complaint or acivil suit with an appropriate authority (the Police,criminal investigators with the Customs, court of law),setting out the reasons why the goods are infringing,and to provide Customs with evidence that he hasbegun proceedings. The Customs will, in such acase, hold the goods seized until the matter isdecided by the appropriate court of law (either incriminal or civil proceedings).

Finnish Customs is not, at the moment, entitled toissue a decision on the destruction of suspectedinfringing goods. A proposal for an amendment ofthe relevant legislation is pending (4th quarter of2005).


Section 4 of the Trade Marks Act provides atrademark holder with a means of preventing greymarket goods entering the Finnish market. Theseprovisions can be used to seize product that hasbeen parallel imported from outside the EuropeanEconomic Area, for the purpose of putting them intothe market within the EEA.

The Customs measures described above are,however, not available for the detention or seizureof such goods, even if they are intended to be putinto free circulation in the EEA.

Further, it should be pointed out that, in the light ofthe recent decision of the ECJ, case C-405/03, meretransiting of this type of goods from one non-EEAcountry to another non-EEA country through theFinnish Customs area can apparently not beprevented by other means either.

Finland

Customs Procedures


60

GERMANY

Introduction

Customs procedures, civil procedures and criminal procedures offer three separate ways ofenforcing intellectual property rights under German law. However, to obtain optimal protectionthese different procedures can be combined:

Customs procedures are a great help to detect both counterfeit and pirated goods and parallelimports. However, in particular with regard to counterfeit and pirated goods Customs only actas a warning system. It lies with the rights owner to go after the infringer and to provide for thedestruction of the goods by means of civil law.

German civil law provides an effective means to stop infringements, receive further informationand possibly damages. When it comes to injunctions, preliminary proceedings provide a quickremedy, also in the course of Customs proceedings.

Criminal proceedings are important as a deterrent and as an additional means to gatherinformation on both the infringers and the extent of an infringement. They can also be used asa threat in Customs proceedings to get the seized parts destroyed. The public prosecutor caneven order their destruction himself.

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German civil law provides two separate proceduresfor enforcing IP rights: preliminary proceedings andmain proceedings before the civil courts.

Preliminary proceedings are an effective means toquickly stop infringements and, if the infringementis obvious, to learn more about third parties involvedin the infringement and the channels of distribution.On the basis of preliminary proceedings a final andbinding amicable settlement can be reached.

Main proceedings are particularly appropriate wheredamages are sought or preliminary proceedingscannot lead to a final settlement.

PrPrPrPrPreliminareliminareliminareliminareliminary pry pry pry pry proceedingsoceedingsoceedingsoceedingsoceedings

(a)Interim injunctionInterim injunctionInterim injunctionInterim injunctionInterim injunctionIn general, the main purpose of filing an applicationfor a provisional measure is to immediately stop aninfringement. A cease and desist claim can bebased in particular upon sections 14 and 15 of theTrademark Act; section 97 Copyright Act; section139 of the Patent Act; section 42 of the Design Actand on the Act against Unfair Competition underthe aspect of passing off.

(b)SequestrationSequestrationSequestrationSequestrationSequestrationA cease and desist order can be supported by anorder for interim sequestration of assets.

(c)InforInforInforInforInformationmationmationmationmationBeyond this, the respondent can be ordered toprovide information about the number of infringinggoods and about the manufacturer, supplier and thecommercial customers of the infringing goods(section 101a Copyright Act; section 14a para. 3Design Act; section 140b Patent Act; section 19Trademark Act). It is also possible to obtain an orderthat enables the applicant to inspect the infringingitem(s). In general, and only if the infringement isobvious, the court will order the defendant to providesuch information.

(d)Urgency rUrgency rUrgency rUrgency rUrgency requirequirequirequirequirementementementementementTo obtain a provisional measure the matter needs tobe urgent. This means that the applicant must nothave delayed the matter. As a rule, an applicationfor a provisional measure should be filed within onemonth of the underlying facts of the respective claimbecoming apparent to the rights owner. However,the specific time limit may vary from case to caseand from court to court.

(e)DurationDurationDurationDurationDurationFrom filing the application to the court decision ittakes, in general, no more than a few days. Wherethe case is straightforward, in particular in trademarkor unfair competition matters, a decision will berendered without an oral hearing on an ex partebasis. The defendant can appeal against apreliminary measure. In this event, a judgment willbe rendered on the basis of an oral hearing. Therespective party can appeal before the higherRegional Court against such judgment and againsta decision rejecting the application for a preliminarymeasure. The judgment of the Higher Regional Courtcannot be appealed.

Hence, a decision by the highest judicial authorityin preliminary proceedings can be obtained withina couple of months.

(f)Liability for damages by injunctionLiability for damages by injunctionLiability for damages by injunctionLiability for damages by injunctionLiability for damages by injunctionIn the event that the court lifts a preliminaryinjunction, the applicant is liable for any damagethe defendant suffers by the injunction, e.g. loss ofprofit where goods were taken from the market andcannot be sold anymore.

(g)Contempt of courContempt of courContempt of courContempt of courContempt of courtttttWhere the defendant disobeys the injunction it willbe held in contempt of court. This is punishable bya fine or imprisonment.

(h) FeesFeesFeesFeesFeesThe amount of both court fees and statutorysolicitor’s fees depends mainly on the value of theviolated right, the extent of the infringement andwhether or not an oral hearing is held. For instance,in the case of a substantial violation of a well-knowntrademark, in the first instance, court fees in theamount of Euro 5,000 plus statutory lawyer fees inthe same amount where it comes to an oral hearingand a subsequent judgment.

The defeated party has to bear, in addition to itsown costs, the court fees and the other party’sstatutory lawyer fees.

(i)No general need to initiate main prNo general need to initiate main prNo general need to initiate main prNo general need to initiate main prNo general need to initiate main proceedingsoceedingsoceedingsoceedingsoceedingsApplying for obtaining a preliminary injunction doesnot necessarily lead to main proceedings. Theapplicant is only obliged to initiate main proceedingswhere the defendant requests it. In practice, apreliminary injunction often serves as the basis for

Germany



62

a declaration by the defendant acknowledging thepreliminary injunction as final and binding.

Main prMain prMain prMain prMain proceedingsoceedingsoceedingsoceedingsoceedings

(a)Final injunctionFinal injunctionFinal injunctionFinal injunctionFinal injunctionMain proceedings become necessary where thedefendant is not willing to acknowledge the courtdecision as final and binding. Moreover, filing a mainaction is appropriate where the matter is no longerurgent or where the matter is too complex to be dealtwith in preliminary proceedings.

(b)DestructionDestructionDestructionDestructionDestructionIn addition to injunction claims, claims for thedestruction of infringing goods and materials/equipment for their production can be raised in mainproceedings. The rights owner can claim that theinfringing items are destroyed, unless the unlawfulsituation can be cleared up by other means anddestruction would be disproportionate.

(c)DamagesDamagesDamagesDamagesDamagesFull trial is also the right place to claim damages.There are three methods to calculate the amount ofdamages:• the rights owner’s loss of profit; in practice this willoften be very difficult to specify and to prove

• the infringer’s profit; according to recent Germancase law, the profit (equal to the sales price) minusall costs directly related to the manufactured goodsin particular: material costs and labour costs; costsrelated to the infringer’s entire business (likeadvertising costs or administrative costs) are nolonger to be taken into account. Hence, in manycases, claiming the profit made by the infringer isthe most favourable solution for the rights holder

• royalty payments the infringer would have beenexpected to pay under a licence; before the abovementioned recent case law regarding the calculationof the infringer’s profit, this was the most popularmethod - the royalties were determined by case law

These alternatives cannot be claimed together.Exemplary or punitive damages are foreign toGerman law. However, under certain conditions, inaddition to the above damages, the court can grantthe rights owner a right to publish a prevailingjudgment against an infringer at the expense of theinfringer.

(d)Account of prAccount of prAccount of prAccount of prAccount of profits and furofits and furofits and furofits and furofits and further inforther inforther inforther inforther informationmationmationmationmationIn order to prepare a specified claim for damagesone can claim an account of profits. Besidesinformation on the number of infringing items,information on the manufacturer and supplier of theinfringing goods and on commercial customers canbe also requested in main proceedings.

(e)FeesFeesFeesFeesFeesThe court fees and statutory lawyer fees in the firstinstance of the main proceedings are, in general,equal to the fees incurred in preliminary proceedingscomprising an oral hearing.

(f)Security for costsSecurity for costsSecurity for costsSecurity for costsSecurity for costsRemedies under civil law apply equally to bothdomestic and foreign rights holders. However thelatter might be, under certain circumstances,requested to provide security for costs.

Legal consequences of criminal actLegal consequences of criminal actLegal consequences of criminal actLegal consequences of criminal actLegal consequences of criminal act

(a)ThrThrThrThrThreat of punishmenteat of punishmenteat of punishmenteat of punishmenteat of punishmentAn intentional trademark, copyright, design right orpatent infringement can be punished with a prisonsentence of up to three years or a fine (section 143Trademark Act; sections 106 ff. Copyright Act;sections 51, 65 of the Design Act; section 142 PatentAct). In the event of a professional infringement thepenalty can be imprisonment of up to five years or afine.

The various definitions of the respectiveinfringements are contained in the above-mentionedprovisions. These provisions refer to sections thatset out infringements under civil law. As the lattersections are relatively voluminous, they are notpresented in detail. In addition, an act of productpiracy might fall within the scope of a number ofprovisions of the Criminal Act. Above all, it mightconstitute fraud pursuant section 263 Criminal Act.

Fines are payable to the Federal Republic ofGermany. The Court cannot order the guilty party topay compensation to the defendant.

(b)InforInforInforInforInformationmationmationmationmationIn some cases criminal proceedings may be usefulto the rights owner as the public prosecutor mightreveal, with support from the police and Customs,



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Germany

Criminal Procedures and Remediesfurther details as to the infringement and theinfringers. However, the courts cannot order a guiltyparty to disclose the identity of any third partiesinvolved in the infringement or further information.

(c)ForForForForForfeiturfeiturfeiturfeiturfeiture/destructione/destructione/destructione/destructione/destructionGerman criminal law gives criminal courts thepossibility of ordering the destruction of infringingitems (section 143 para. 5 Trademark Act; section110 Copyright Act; § 142 para. 5 Patent Act; section51 para. 5 Design Act; all in connection with section74 para. 1, 2 Criminal Act).

(d)Course of prCourse of prCourse of prCourse of prCourse of proceedingsoceedingsoceedingsoceedingsoceedingsIn practice, the police, Customs or the rights ownerdetect infringements. For non-profit infringements,a criminal complaint by the rights owner is necessaryto carry on with the proceedings, unless the infringercommitted a professional infringement or theprosecution is in the public interest. Filing a criminalcomplaint does not incur any official fees and will,in general, not cause any liability of the rights ownerin case the proceedings are not continued.

If there is sufficient reason to believe an intentionalinfringement, the matter will go the publicprosecution service. The public prosecution service,supported by the police and/or Customs, will in pre-trial procedures collect evidence for/or against aninfringement. In the course of these pre-trialprocedures the police, the Customs authorities andthe public prosecution service can seize suspiciousgoods.

However, even if it is clear that an infringement hasbeen committed intentionally, a prosecution is notautomatic. Rather, especially in minor cases,prosecution is regularly abandoned. If the infringeris charged, the trial will be held before a CriminalCourt.

There are two different customs procedures: oneunder German national law, one under EC law.

National lawNational lawNational lawNational lawNational law

National law applies to parallel trade and to infringingitems coming from other EC member states. IfCustoms finds that there is an “obvious” infringementthey may seize such imported goods. In practice,the conditions for an “obvious” infringement arerelatively low. Customs will then inform the rightsowner of the kind and number of seized goods andwill provide information as to the name and addressof the importer and possessor of the goods.

The condition for such seizure is a general Customsseizure application. The rights owner must file suchan application, and provide the characteristics ofthe authorized and infringing goods. Moreover, abank guarantee, normally in the amount of roughlyEuro10,000, is necessary.

Once the goods are seized, the importer has twoweeks (starting from notification) to appeal againstthe seizure. If he does not appeal the goods will bedestroyed. If he appeals, the rights owner will haveto initiate court proceedings within a further twoweeks (starting from notification of the appeal).Within a further two weeks, the rights owner has topresent a court decision showing that the seizedgoods are infringing. Otherwise, the seizure wouldbe lifted. Usually, such a court decision is apreliminary injunction.

EC lawEC lawEC lawEC lawEC law

EC Regulation No. 1383/2003 provides for thedetention of counterfeit and pirated goods beingimported from outside the EC. Customs hold backsuspicious goods and inform the rights owner of thekind and number of infringing items and of the nameand address of the importer, exporter and/orpossessor.

For such a move a prior application is generallynecessary. A bank guarantee is not necessary: adeclaration to cover all damages in the event of anunjustified detention suffices. However, there is oneexception; Customs can hold back the goods andprovide the rights owner with information together

Customs Procedures


64

with the request to file an application within threeworking days.

Once the rights owner is informed, he has up to 20working days to file a motion with a civil court. Thismotion will be in practice an application for apreliminary injunction.

As this procedure is quite complex, the Regulationalso provides for a so-called “simplified procedure”.According to this procedure, infringing goods willbe destroyed unless the importer/exporter/possessor explicitly objects to the destruction.

However, the Regulation sets out that this procedurecan only be applied where the laws of the respectivemember state provide for such procedure.

Unfortunately, the German legislator has not yetpassed such a statutory provision. In order to bridgethis gap German Customs currently accept whenthe rights owner makes the importer/exporter/possessor apply for the destruction of the goods. Inpractice, this procedure works relatively well.


Customs procedures gain more and moreimportance. It is to be noted that Customs do notcharge any fees for their support and are extremelydedicated to supporting the rights owners. Hence,it is strongly advisable to file correspondingapplications.

Whilst parallel trade is difficult to tackle by means ofCustoms procedures in many other countries,German law provides for such conduct.

Civil proceedings are in particular an appropriateand effective means to enforce cease and desistclaims, claims for information, claims for disposaland claims for damages. In particular, with regardto the level of damages, recent case law is in favourof the rights owner.

Where civil law does not lead to a satisfying result inindividual cases, criminal law might provide a similareffect without the need for substantial efforts on therights owner’s side. Convictions, however, are ingeneral reserved for severe infringements.

Customs Procedures

65

HONG KONG

Introduction

The intellectual property law and judicial procedures of Hong Kong remain based on those ofthe UK and reference may also be had to the UK enforcement guide. UK cases continue tocarry persuasive weight in the Hong Kong Courts.

Civil, criminal and customs procedures generally tend to be reasonably effective in HongKong. Damages, awards and particularly costs are often very substantial and criminal penaltiesinclude in many cases imprisonment, even for first offenders, where the infringement is serious.

The Hong Kong judiciary remains among the most respected in Asia and tends to show arealistic appreciation of the value of intellectual property.


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JurisdictionJurisdictionJurisdictionJurisdictionJurisdiction

The High Court generally has jurisdiction overtrademark, copyright, patent and registered designinfringement

PrPrPrPrProvisional rovisional rovisional rovisional rovisional remediesemediesemediesemediesemedies

Interlocutory and preliminary injunctions, and AntonPiller orders and search and inventory orders areavailable if a sufficiently strong case is proven andif, absent of such an order, irreparable harm wouldprobably follow.

Ex parte preliminary injunctions are available butthe party so enjoined is to be given the opportunityto be heard within 10 days.

Provisional remedies may be obtained within twodays if the matter is sufficiently urgent.

Hong Kong judicial authorities are very familiar withapplications for preliminary injunctions and otherprovisional remedies.

Such remedies require strong evidence to obtain,but are still available where the common lawrequirements for such injunctions/remedies can befulfilled.

Timescale and costsTimescale and costsTimescale and costsTimescale and costsTimescale and costs

Where intellectual property infringement is proven,the remedies available include damages, injunctiverelief, payment of the infringer’s profits to the IPowner, recovery of expenses including lawyers’ fees,and an order for the destruction of the infringinggoods and of the apparatus, machinery or articlesused for their production. The law of Hong Kong inthis respect remains closely based on that of theUK, and reference may be made to UK authorities.

An infringement case may take approximately twoyears from filing of the writ until the trial decision. Incases of urgency an order for a speedy trial cansignificantly reduce this timescale. Legal fees aretypically charged on an hourly basis ranging fromUS$200 to $600 per hour depending on the level ofIP experience of the lawyer.

In addition, the court can grant a declaration of theparties’ rights and can order the delivery up ofinfringing goods and materials and implements fortheir manufacture.

The defendant’s interests are safeguarded by therequirement for the plaintiff to either post security orgive an undertaking supported by evidence of itsability to make good thereon, and by the defendant’sright to be heard within 10 days.

The above remedies are available equally todomestic and foreign right holders, except thatforeign holders are generally required to postsecurity for costs. Non-compliance with a court ordercan be sanctioned as contempt of court for whichthe penalties include fines and imprisonment.

Civil remedies are generally perceived to bereasonably effective (albeit sometimes expensive)particularly where the trader in counterfeit or piratedgoods has a fixed place of business and whereevidence of his trading in such goods can beobtained. Such procedures may not be effectiveagainst hawkers or other infringers without a fixedplace of business and without assets against whichjudgment can be executed.

Power to orPower to orPower to orPower to orPower to order disclosurder disclosurder disclosurder disclosurder disclosure of infore of infore of infore of infore of information.mation.mation.mation.mation.

A court can order an infringer to disclose the identityof third persons involved if a sufficiently strong caseof infringement is made out and if the source isindeed a direct supplier to their infringer.

Any such court order must comply with the generalrequirement that an order must be capable ofexecution i.e. it would normally have to be proventhat such information must indeed be within theknowledge of the infringer. In addition, suchdisclosure could not interfere with the infringer’s rightagainst self-incrimination in criminal proceedings.

The court can order a party to civil proceedings toproduce evidence within its control if a sufficientlystrong case is established. Such an order can begranted at the request of an opposing party whereadequate evidence is provided.


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Hong Kong

Counterfeiting is a criminal offence under both theTrade Descriptions Ordinance and the CopyrightOrdinance, both of which are modeled on UKlegislation. Consequently, the basic nature of HongKong criminal provisions is the same as that in theUK.

The Magistrate’s Court and District Court generallyhave jurisdiction over such offences. Where theprosecution seeks an imprisonment penalty of overseven years, the matter can be heard in the HighCourt.

The Intellectual Property Investigation Branch of theCustoms & Excise Department is responsible forinvestigating and prosecuting offences of trademarkcounterfeiting and copyright piracy. They sometimesact on their own initiative but more often in responseto complaints. It is possible, though extremely rare,for there to be a private prosecution for trademarkcounterfeiting or copyright piracy.

Monetary fines, imprisonment, seizure, forfeiture anddestruction of infringing goods and apparatus andarticles related to their production may be imposedas sanctions for IP infringement. The penalties fortrademark counterfeiting are set out in s.18 of theTrade Descriptions Ordinance: fines are up to$500,000 and the maximum term of imprisonmentis 5 years.

For copyright piracy the relevant provisions aress.118-120 of the Copyright Ordinance. In respectof making or dealing with infringing articles (s.118(1)) the offender can be convicted to a fine or to amaximum imprisonment of 4 years. For offences asto plates (s.118 (2)) the term of imprisonment is upto 8 years. Sanctions are similar for trademarkcounterfeiting. In criminal proceedings for IPinfringement, the fines paid are to the government,not to the rights holder.

There are two alternative procedures whereby theCustoms and Excise Department can effect pre-trialseizures of suspected counterfeit or pirated goodsand can prevent the release into Hong Kong ofimported goods that are suspected of beingcounterfeit or pirated.

Basis no 1:Basis no 1:Basis no 1:Basis no 1:Basis no 1:

Customs’ general enforcement powers. Under thesepowers, Customs can, without a court order, seize,remove, detain, or prevent the release of, goodswhich they suspect on reasonable grounds to becounterfeit or pirated. This authority arises unders.122 of the Copyright Ordinance, and ss.15 and16 of Trade Description Ordinance.

Under these provisions, Customs can act withoutwithoutwithoutwithoutwithoutthe authority of any court order and without the rightsholder posting security. In theory, Customs can acteven on a complaint of a third party. However,Customs generally act on the complaint of the rightsholder or, less frequently, on their own initiative.

The procedure for requesting Customs to act in thismatter is by filing a letter of request stating therelevant facts, together with a copy of the trademarkregistration or documentary evidence of copyrightownership. In the absence of registration ofcopyright, Customs is more reluctant to act in casesof copyright infringement.

Basis no 2:Basis no 2:Basis no 2:Basis no 2:Basis no 2:

This basis, predicated on a court-issued detentionorder, is relatively new, having been introduced intoHong Kong law expressly to comply with HongKong’s obligation under TRIPs. For goods protectedby copyright, the relevant sections are ss.135-144of the Copyright Ordinance 1997; for trademarks,the same principles apply by virtue of sections 30A-30K of the Trade Descriptions Ordinance, whichwere added by the Intellectual Property (WTOAmendments) Ordinance 1996.

The addition of this second basis does not mesheasily with Customs’ pre-existing generalenforcement authority (i.e. basis no. 1 above). This

Criminal Procedures and RemediesCustoms Procedures and pre-trialmeasures in Criminal Proceedings


68

second basis, which relates to the importation ofinfringing articles, allows a rights holder to apply tothe High Court of Hong Kong for an order requiringCustoms to detain infringing goods on or afteror afteror afteror afteror after theirimportation.

Presumably, a rights holder would do this only whereCustoms had already refused to exercise theirgeneral discretionary powers in favour of the rightsholder, because the obtaining of such a court orderwill add considerable expense. Moreover, thelegislation contemplates the posting of a bond,something that Customs does not normally requirein the exercise of its general discretion.

Note also that where the goods were made in HongKong, basis no. 2 does not avail. The court only hasjurisdiction to grant a detention order where thesubject goods are intended to be or have, at someprevious point in time, been imported into HongKong.

Such seizures can be initiated by Customsthemselves or by the rights holder making acomplaint to Customs. Initially, Customs determineswhether the evidence before them is sufficientlystrong to justify their effecting a seizure. However, ifCustoms refuses to exercise its discretion so as toeffect a seizure, the rights holder can apply to thecourt for a detention order.

Where Customs makes such a seizure based onexercising their own discretion, the rights holderdoes not incur any financial liability. If, however, therights holder has applied to court for a detentionorder, he may be ordered to pay financialcompensation to the importer, if the court afterwardorders the release of the detained articles (see s.143of the Copyright Ordinance and s.30J of the TradeDescriptions Ordinance).

Criminal procedures are generally perceived to bereasonably effective when they are indeed invokedby the Customs and Excise Department on arepeated basis. The aforementioned pre-trialmeasures allow evidence to be seized so as toprovide key decisive evidence.

Customs’ usual discretionary enforcement powersare available against exports, and under certainconditions also against transshipment. However, inthe circumstances of a detention order made by the

court requiring Customs to invoke enforcementmeasures at the order, the court can require therights holder to provide security or equivalentassurance as a pre-requisite to granting thedetention order. A rights holder will be required tocompensate damaged parties where it haswrongfully obtained a detention order from the court,(s.143 of the Copyright Ordinance and s.30J of theTrade Description Ordinance).

(a) Copyright infringement-maximum period ofCustoms detention.

If Customs seizes, removes or detains goods undertheir general discretionary powers (s.122 of theCopyright Ordinance), there is no fixed time limit;according to s.133 (1) the Commissioner has toapply to the court within a reasonable period of time,if the owner of the subject articles objects.

If, however, the court grants a detention order, therights holder has to start infringement proceedingswithin 10 days after the notice from theCommissioner.

(b) Trademark counterfeiting-maximum period ofCustoms detention.

The same principles as in (a) apply by virtue of ss.15,16, 30H(6) of the Trade Description Ordinance.

Customs has discretion as to the access to, andinformation regarding, the items seized. Wheregoods are proved to be counterfeit or pirated,Customs can destroy them.

In Hong Kong, intellectual property enforcementrests with Customs; i.e. given the small size of HongKong, Customs conducts enforcement both at theborder and internally.

Customs Procedures

69

HUNGARY

Introduction

In Hungary, amendment of the laws relating to the enforcement of IP rights is under preparationand the law containing the suggested changes in order to expedite enforcement of IP rights isexpected during 2006.

Here is how rights holders can proceed against IP infringements under the current system.


70

Civil Procedures and RemediesAccording to Hungarian proceedings law, the judicialauthorities adjudge civil actions for intellectualproperty infringement in an oral proceeding.

‘Proceedings on the merits’ start with a substantivehearing before the competent court. Demonstrationproceedings, which also comprise actions forpreserving and providing evidence, can start priorto the first substantive hearing. The writtenpreparation for substantive proceedings, in whichdocuments and other kinds of evidence andproposals of demonstration may be presented, areparticularly significant and typical in IP infringementactions.

The measures to preserve evidence relating to thealleged infringement, which are explicitly oralternatively applicable even before the substantiveproceedings on the merits of the case and/or evenbefore the commencement of the legal proceedingitself, are as follows:

Prior (or prPrior (or prPrior (or prPrior (or prPrior (or preliminareliminareliminareliminareliminary) pry) pry) pry) pry) providing of evidence /oviding of evidence /oviding of evidence /oviding of evidence /oviding of evidence /i.e.collecting evidence before starting the infringementlawsuit/ (Code of Civil Proceedings, Section 207 to211).

Upon the request of an interested party thecompetent court may order prior providing ofevidence, either prior to starting civil action or incourse of the court proceedings, if:

♦ it is likely that in the course of the civil action or ina later phase thereof the demonstration would behardly effective or significantly problematic♦ it is likely that prior providing of evidence couldhelp complete the legal proceeding within areasonable time period♦ the interested party is liable to the shortage of ares (i.e. object)♦ the preliminary providing of evidence is expresslyallowed by special law

An order for preliminary providing of evidence maybe, depending on the decision of the court, subjectto the deposit of a guarantee by the claimant.

Before making a decision on the request forpreliminary providing of evidence, the court shallhear the opposite party. If the opposite party is notknown, or in case of urgency, the court may pass adecision inaudita altera parte as well.

Any party can use the results of the preliminaryproviding of evidence in the court action.

In Hungary, the special preconditions for ordering apreliminary providing of evidence are unfortunatelynot expressly defined by the IP laws, with theexception of the guarantee. The application of priorproviding of evidence in IP infringement actions istherefore rather problematic in court practice;obtaining an order for preliminary providing ofevidence prior to starting the correspondinginfringement action is not usually possible.

P rPrPrPrPreserv ing evidence by preserv ing evidence by preserv ing evidence by preserv ing evidence by preserv ing evidence by prel iminarel iminarel iminarel iminarel iminary (ory (ory (ory (ory (orinterlocutorinterlocutorinterlocutorinterlocutorinterlocutory) injunctiony) injunctiony) injunctiony) injunctiony) injunction (Code of Civil Proceedings,Section 156).

An interlocutory injunction can only be requested inconnection with a court action (it is not allowedbefore starting the legal proceeding). In urgentcases, the plaintiff shall file his request for preliminaryinjunction simultaneously with the action on themerits.

In terms of preserving evidence, the followingmeasures can be taken by way of interlocutoryinjunction:

♦ seizure of the alleged infringing goods, materialsand implements used exclusively or primarily in theinfringement♦ order that the opposite party provide informationon relevant persons, relationships and other relevantcircumstances in connection with his allegedinfringing activity

In the course of judging a request for interlocutoryinjunction the court shall hear the opposite party. Ifthe opposite party does not respond, upon theinvitation of the court, to the preliminary injunctionclaim, the court assumes that he/she does notoppose the request. In principle, the court mightadjudge a request for a preliminary injunction in aninaudita altera parte procedure as well, but as thelaw does not define the special conditions requiredthis course of action has no real practical value.

In general Hungarian practice, when the conditionsfor interlocutory injunction have been met and thealleged infringing goods and their location can bedefined, the courts order seizure by preliminaryinjunction. Claims obliging the defendant to provide

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Hungary

relevant information by way of interlocutory injunctionare, however, almost always rejected by arguing thatsuch an obligation would result in irreparableconsequences, for which reason such claims cannotbe adjudged in the proceedings except on the meritsof the case.

PrPrPrPrPreliminareliminareliminareliminareliminary measury measury measury measury measure for obtaining evidence fre for obtaining evidence fre for obtaining evidence fre for obtaining evidence fre for obtaining evidence fromomomomomthe opposite parthe opposite parthe opposite parthe opposite parthe opposite partytytytyty (Patent Act Section 104 (6),Trademark Act Section 95 (5), Copyright Act Section94 (6)).

The special IP laws provide the possibility that, wherea party in an infringement action has alreadysubstantiated his statement to a reasonable extent,the court may at his request oblige the opposite partyto present its documents and other evidence withinits control, and also to enable official inspection.However, at present there is no definition of, orpermanent court practice for, the interpretation of‘reasonable extent’.

RemediesRemediesRemediesRemediesRemedies: the consequences of a patent, UM,copyright or trademark infringement (with the samewording in each act) are as follows:

In the event of patent/trademark/copyrightinfringement, the patent/trademark/copyrightproprietor may - in accordance with thecircumstances of the case - demand that theinfringing party provide information on parties takingpart in the manufacture of and trade in goods orperformance of services which infringe on thetrademark, as well as on business relationshipsdeveloped for the use of the infringing party;(Section94 (1) d) of Copyright Act; Section 27 (2) c) ofTrademark Act; Section 35 (2) c) of Patent Act).

These provisions fully cover the requirements of theTRIPS Agreement. Since it is up to the judge toconsider whether to order this information and, if hedoes so to what extent, it is ensured that theobligation is proportionate to the seriousness of theinfringement. However, the defendant has the rightto appeal such an order.

The criminal provision under the subtitle of‘infringement’ protects the rights of creators’ againstthe unlawful appropriation of the creation, but doesnot cover infringement of the exclusive rights ofpatent infringement, trademark infringement, theinfringement of utility model protection, and theinfringement of design protection.

Infringement in this respect means infringement bya person who indicates another’s intellectual creationis his own and thereby causes pecuniary detrimentto the rights holder. Intellectual creation meansliterary, scientific and artistic creations, inventions,utility models, designs, topographies ofmicroelectronic semiconductor products andinnovations.

The crime defined as “violation of industrial propertyrights” relates to the classical meaning ofinfringement. According to this any person, whothrough the imitation or taking over of the subjectmatter of protection, violates another’s rightconferred by patent protection, utility model ordesign protection, the protection of a topography, atrademark or a geographical indication, and therebycauses pecuniary detriment, commits an offence.The Act qualifies acts as a crime where the violationof industrial property rights is committed in abusiness-like manner and causes a significantpecuniary detriment.

Under Hungarian law, the above crimes can becommitted only intentionally, except the crime ofinfringement of copyright and related rights, whichis punishable even if committed negligently andresulting in damages. Under Hungarian law, intentis not presumed and must be proven.

In the course of criminal procedure, the publicprosecutor has to prove that all the elements of thecrime occurred, including mens rea (culpability).

The penal court ruling on criminal punishment forcounterfeiting does not have competence to decideon the validity of intellectual property rights. Relatingto industrial property rights, the issue of validity fallsunder the competence of the Hungarian PatentOffice and civil law courts. For copyright, it comesunder the competence of the civil law courts.




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Pursuant to the applicable provisions relating tocriminal procedures, the criminal court may suspendthe procedure if its decision relating to the actcommitted by the accused person depends on apreliminary issue (i.e., the validity of the intellectualproperty right), which falls under the competenceof another court or authority. In such a case, theaccused person may request the suspension of theprocedure.

The criminal court may suspend the criminalprocedure until the final and binding decisionrendered in the civil procedure, and if suchprocedure is not pending, the criminal court maycall upon the accused person to commence suchprocedure within a certain period of time.

Should the accused person not commence suchprocedure by the given deadline, the criminalprocedure shall be continued.

Rights holders may request the Customs authoritiesto suspend the release of consignments containinggoods suspected to be infringing products. Inconnection with the Customs action, the rights holderis entitled to obtain official information relating to theorigin of the goods, to the consignor and consignee,and to take photos and samples of the goods.

When the rights holder receives a notice from theCustoms authorities about the suspension of aconsignment, he may inspect the goods and takesamples thereof.

Within 10 working days from receipt of said officialnotice the rights holder has to confirm with theCustoms authorities that he has started thecorresponding infringement action with thecompetent court and requested seizure of thesuspended goods by interlocutory injunction.

If a rights holder does not start a court action, or thecourt rejects his claim, the suspension of theconsignment shall be lifted by the Customsauthorities.

Customs actions have been the most frequentlyapplied and most effective measures for preliminarypreserving evidence in trademark and copyrightcases in the past 8 years in Hungary.

Customs measures are, in principle, applicable inother IP cases such as patent, utility model anddesign matters as well, but in practice significanttechnical problems may arise, for example in apatent infringement case.


When it comes to effective means to preserveevidence, there is a need for some changes. Onthe level of judicial practice it is a negative tendencythat preliminary providing of evidence is hardly everordered, since the preconditions of the order canhardly ever be met. As far as legislation in cases ofIP infringements is concerned, the IP law should beamended to enable provisional injunctions to beordered even before the commencement of theproceeding, i.e. before filing the claim.

Customs Procedures


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INDIA

Introduction

Rights holders in India use a mix of civil and criminal remedies, often after taking into accountthe nature of the infringement and the profile of the infringer. Decisions are also restricted bythe fact that patent and design issues only have a civil remedy.

A criminal action is often considered the most robust choice, as arrests create fear in themarket and goods are seized that are kept in police custody. There has never been a focus inIndia to get convictions save for a few cases.

There are certain reasons why the civil route is preferred. The “exit” is one factor, as criminalmatters are State cases and cannot be settled by parties privately unlike civil suits. Courtshave acknowledged settlements in a few cases but this is not the norm. A criminal case usuallyrequires a complainant to appear on every date of a hearing, which is a strain on the resourcesof the rights holder considering that proceedings can take several years. The lack of an injunctionor a claim for damages or rendition of accounts is another disadvantage of a criminal action.On a practical level, the fact that in a civil action one can centralize proceedings where therights holder resides or carries on business is another factor.


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In India, Civil remedies are available to rights holdersfor Trade Marks (Trade Marks Act 1999), Copyright(Copyright Act 1957), Designs (Designs Act 2001)and Patents (Patents Act 1970). Civil remediesassume greater importance for patents and designs,as no criminal remedies are available to a rightsholder.

There is no distinction between the rights andremedies available to foreign and Indian rightsholders.

Besides the statutory rights that are vested by wayof a registered trademark, the Trade Marks Act alsorecognizes the common law principle of passing offto protect a proprietor of an unregistered trademark.Additionally, a well known trademark can be grantedprotection for unrelated goods.


The jurisdiction for adjudicating civil disputes restswith the courts and an action can be instituted byfiling a civil suit.

Courts not below the level of the District Court havethe jurisdiction to try such matters. The High Courtsin Delhi, Mumbai, Chennai, Kolkata, Jammu &Kashmir and Himachal Pradesh have originaljurisdiction whereby they entertain original suits. Thefirst four of the above named courts entertain asubstantial portion of the civil litigation for intellectualproperty in India being in metropolitan cities, withintellectual property suits in the latter two High Courtsbeing miniscule.

The basis for deciding whether to file in the DistrictCourt or the High Court in such jurisdictions is thepecuniary value of the suit. The High Courts have aminimum pecuniary valuation of suits, below whichthe District Court has jurisdiction. The Delhi HighCourt is probably the court having the most numberof filings. Several proprietors prefer to instituteproceedings in the High Court as opposed to aDistrict Court.

A significant factor in choosing a High Court for acampaign is the extension of the jurisdiction principlefor trademark and copyright violations, where a suitcan be instituted where the rights holder resides orcarries on business. Under the Civil Procedure Code,a suit can be instituted where the defendant resides

or where part of the cause of action arises. Thus, fora patent or design violation, this would be the courtwhere the infringer resides or carries on businessor the cause of the action arises (such as the sale ofinfringing products).

For trademark and copyright offences, it is open tothe rights holder to institute proceedings where therights holder resides or carries on business and thisprovision is often used to the convenience of therights holder in centralizing actions and also makinginfringers defend outside their own local jurisdiction.


The interim injunction is an extremely important andeffective tool used in intellectual property litigationin India. A vast majority of cases are settled afterthe interim injunction is decided. It is axiomatic thatthe interim injunction (or appeal therein) decides thefate of the suit.

Some courts regularly grant interim injunction exparte, thereby putting a halt to the activities of theinfringer before putting the infringer on noticethereof. However, in such a situation the defendantis at liberty to institute an application to vacate theinjunction.

The courts rely on the principles of the rights holderproving that it has a prima facie case; the balanceof convenience is in favour of the rights holder whowill suffer irreparable loss or injury if the injunction isnot granted.

Over the last few years, courts have beenconsidering the comparative strength of the partiesas opposed to merely a prima facie case beingestablished by the rights holder. While grantinginterim injunctions, there have been very fewinstances where the courts have asked the rightsholder to give an undertaking in relation to security,though there have been some such orders.

Interim orders remain in force until the suit is decided(unless of course it is set aside or modified at somestage or taken to the appeal court) and a violationby the defendant will result in contempt of courtproceedings being initiated.


75

India

Anton Piller orAnton Piller orAnton Piller orAnton Piller orAnton Piller orderderderderder

Anton Piller orders are fairly regularly used inintellectual property cases and will be typicallygranted along with an interim injunction.

In such cases the Court appoints a Commissionerto visit the premises of the defendants and searchand seize all infringing products and make aninventory. Representatives of the rights holder’slawyers usually accompany the commissioners.Commissioners are usually directed to sign booksof accounts available with the defendant includingledgers, sales books and other such records of thedefendants. The commissioners that are appointedare usually advocates or court staff. In order toeffectively enforce such orders the local police aredirected to render all assistance to thecommissioner.

An Anton Piller order is often sought in cases wherethe goods are pure counterfeit and therefore thesource of origin is not indicated to link a defendantto the product. Additionally, seizure of the productensures that the goods don’t go into circulation andthis puts pressure on defendants to settle mattersquickly. The commissioner is directed by the courtto file a report which details the activities of thedefendant

John Doe orJohn Doe orJohn Doe orJohn Doe orJohn Doe ordersdersdersdersders

A John Doe order has been used in India in a fewselect instances where the time frame of the right islimited, such as the live broadcast of a footballmatch.

Typically, a court appoints a Commissioner, muchlike an Anton Pillar order but without the restrictionson defendant or premises; the restrictions largelybeing event based.

In such cases the commissioner is free to visit anypremises where he is of the opinion that the infringingactivities are taking place to serve the parties withthe summons and interim injunction order, and carryout the commission. Once the commissioner filesthe report, notice is issued to the various parties tobe included as defendants in the suit.

PerPerPerPerPermanent Injunctionmanent Injunctionmanent Injunctionmanent Injunctionmanent Injunction

A permanent injunction is granted after trial. Asmentioned earlier, a vast majority of intellectualproperty cases are settled after the decision in theinterim injunction. A permanent injunction is usuallygranted if the rights holder can prove title, eventhough it is an equitable relief and equities may lieagainst the grant of such an injunction. Exceptionsto the grant of injunction include instances such asacquiescence, but by and large the courts havebeen very liberal in protecting rights holders evenwhen there have been delays of several years.

MarMarMarMarMareva Injunctioneva Injunctioneva Injunctioneva Injunctioneva Injunction

The Mareva injunction can be applied to freeze theassets of an infringer if it is thought that the infringerwill dispose of them, thereby making an account ofprofit or damages claim by the rights holderinfructuous. The Mareva injunction is not commonlyused in the enforcement of intellectual propertyrights in India but is still a remedy that is available inappropriate circumstances.


The quick settlement of disputes after the interiminjunction has prevented the growth of a ‘damagesculture’ for intellectual property cases. This iscompounded by the fact that the time involved inthe completion of a case after a complete trialdiscourages rights holders to proceed to getdamages.

However, in the last year courts are graduallyrecognizing that damages are integral to the growthof intellectual property protection in India and adeterrent to infringers. There have been a severaljudgments pronounced by the Delhi High Court thathave recognized the need for the grant of damagesand this is expected to be a trend that will continueand will help the development of intellectual propertyenforcement.

Rendition of AccountsRendition of AccountsRendition of AccountsRendition of AccountsRendition of Accounts

Much like damages, the development of renditionof accounts has been hampered by the fact thatmost matters are settled after the interim application.Courts have been granting Rendition of Accountsorders in some cases. The Copyright Act entitles a



76

rights holder to claim both rendition of accounts anddamages, while in cases of trademarks, patents anddesigns the proprietor is required to elect one of thetwo remedies.

DeliverDeliverDeliverDeliverDelivery Upy Upy Upy Upy Up

The relief of delivery up of all infringing material forerasure or destruction is available to the rights holderafter a trial. The Anton Piller order is often used atthe interim stage to ensure that the infringing goodsare secured for this purpose.

DiscoverDiscoverDiscoverDiscoverDiscovery of Namesy of Namesy of Namesy of Namesy of Names

Rights holders can apply to the court calling on theinfringer to disclose sources. This is not usuallyapplied for in civil litigation and such details arenormally made available to the court with the filingof the report in relation to Anton Pillar orders.

TimescaleTimescaleTimescaleTimescaleTimescale

The focus of intellectual property litigation in Indiahas been on interim injunctions and Anton Pillarorders. An interim injunction, if granted ex parte,can be granted within one day of filing the suit. Ifthe court prefers to hear the opposite party beforegranting an interim injunction it could take betweenthree months and a year to decide the interiminjunction subject to the court’s diary. As mentionedearlier most matters are settled at this stage. A finalconclusion to proceedings after trial can takebetween three to five years for a decision. The Codeof Civil Procedure has been amended to decreasethe life of the litigation and one expects this to havean impact in due course.

CostsCostsCostsCostsCosts

The Indian courts have a system of awarding coststo the successful party. However, usually these costsare not based on the actual amount spent but onamounts fixed several years ago, and consequentlythe recovery is usually a fraction of actual costs.Most parties recover their costs or part thereofthrough a settlement after the interim injunction.

Criminal remedies are available to rights holders fortrademark and copyright offences, but not forpatents and designs.

The practice and procedures for copyright offencesdiffers marginally from that of trademark offences,and consequently the present chapter is divided intoseparate sections for copyright and trademarkoffences.

In India the conviction rate is extremely low. Therehave only been a handful of cases where an infringerhas been ultimately convicted. The focus of criminalactions has largely been the seizing of goods withthe infringer being in custody for a few days untilbail is granted. There have been some rights holderswho have assisted the police and public prosecutorsfor successful results but these cases have beenvery few.

Copyright ofCopyright ofCopyright ofCopyright ofCopyright offencesfencesfencesfencesfences

A copyright offence is cognizable, which means thatthe police can act without requiring a warrant fromthe courts. This is the most robust enforcementmethod and consequently rights holders often claimelements of copyright in their products to fall withinthe ambit of such an action. An example of this wouldbe to claim a logo or label as an artistic work withinthe meaning of the Copyright Act.

Under Indian law registration of copyright is notnecessary, but often serves as probative value forthe police to base the action on and thereafter serveas evidence when the matter goes to trial. Typicallythe police act on a complaint made by the rightsholder, though it is possible for the police to takesteps on their own to investigate these offences. Nocourt inferior to that of a Metropolitan Magistrate ora Judicial Magistrate of the First Class shall try suchoffences.


Any person who knowingly infringes or abets theinfringement of (a) the copyright in a work or (b) anyother right conferred under the Copyright Act(except offences relating to non payment of dues tothe author, in case of re-sale share rights in original


77

copies of a painting, sculpture or drawing or originalmanuscript of literary or dramatic work or musicalwork) shall be punishable with imprisonment for aterm which shall not be less than six months butwhich may extend to three years and with fine whichshall not be less than fifty thousand rupees (ApproxUS $ 1100) which may extend to two hundredthousand rupees (approx US $ 4500). The fine ispayable to the State and not to the rights holder.

In cases where the infringement was not made forgain in the course of business or trade, a court may,while mentioning adequate and special reasons inthe judgment, impose a sentence for a term lessthan six months or a fine of less than fifty thousandrupees.

There is an enhanced penalty for second andsubsequent convictions, which extends from oneyear to three years (as opposed to six monthsminimum) and a fine which ranges from one hundredthousand rupees (Approx US $ 2250) to two hundredthousand rupees (as opposed to a minimum of fiftythousand rupees).

Additionally, any person who knowingly makes, orhas in his possession, any plate for the purpose ofmaking infringing copies of any work in whichcopyright subsists shall be punishable withimprisonment, which may lead to two years and shallalso be liable to a fine.

A person who knowingly makes use on a computerof an infringing copy of a computer program shallbe punishable with imprisonment to a term whichshall not be less than seven days but which mayextend to three years, and a minimum fine of fiftythousand rupees that could go up to two hundredthousand rupees. In the event that the computerprogram has not been used for gain or in the courseof trade or business, the court may, while mentioningadequate and special reasons, not impose anysentence of imprisonment and may impose a fineup to fifty thousand rupees.

Delivery of copies to rights holders

A court while trying an offence can order that allcopies of the work or all plates in the possession ofthe alleged offender, which appeared to be infringingcopies or plates for this purpose, be delivered tothe owner of the copyright. Any person publishing a

sound recording or a video film without setting outparticulars as contained in the Act shall bepunishable with imprisonment which may extend tothree years and shall also be liable to fine.

Liability of companiesLiability of companiesLiability of companiesLiability of companiesLiability of companies

In relation to companies, every person who was incharge of, and responsible to, the company at thetime of commencement of the offence shall bedeemed to be guilty of such offence unless suchperson can prove that the offence was without hisknowledge or that he exercised all due diligence toprevent the commission of such an offence. Such aperson can also be liable for acts of negligence.


DirDirDirDirDirectly with Policeectly with Policeectly with Policeectly with Policeectly with PoliceThe Trade Marks Act of 1999 aims to provideenhanced punishment for offences relating totrademarks on a par with the Copyright Act toprevent the sale of spurious goods.

The Act authorizes any police official not below therank of a Deputy Superintendent of Police, orequivalent, to search and seize without a warrantpremises where the officer has reason to believethat offence is being or is likely to be committed.However, the said officer requires the opinion of theRegistrar on facts involved in the offence relating totrademark and the police officer shall abide by theopinion so obtained.

While the Act gives the Registrar a time period ofseven days to respond, considering the fact thatthere are only five offices of Trade Marks Registry inIndia and that the opinion requires to be in writing, aconsiderable period of time does take place in finallyobtaining such opinion and consequently this is nota preferred route and is rarely used. Additionally, aDeputy Superintendent of Police is not alwaysavailable to be present during a raid and hence thisadds to the uncertainty of execution.

In certain cases one could avoid taking the opinionif one goes under the Copyright Act as well. Therehave been cases where parties have tried to rely onfiling a complaint including the elements of cheatingwhich would authorize the police to act directly, butthis approach has not been judicially tested in anyreported proceeding.

India



78

Magistrates OrMagistrates OrMagistrates OrMagistrates OrMagistrates Ordersdersdersdersders

The preferred mode for a trademark criminal actionis for the party to apply to a Magistrate under theCriminal Procedure Code asking, inter alia, fordirections to the police to investigate the offences.

A Magistrate then issues directions to the local policeto investigate the parties involved in activities relatingto counterfeit goods and the police investigate, seizeproducts and ultimately file their report to theMagistrate.

Typically, a Magistrate can only authorize police ina particular territory, such as New Delhi, and thesame warrant cannot be used for any territory ofIndia.

The Magistrate may authorize the police to makearrests but this is usually not granted. Once thepolice file their report the Magistrate can summonthe accused and the trial proceeds accordingly.


Any person who falsifies any trademark or falselyapplies to goods or services any trademark ormakes, disposes of, or has in his possession, anydie, block, machine, plate or other instrument forthe purpose of falsifying or of being used forfalsifying, a trademark; or applies any false tradedescription to goods or services; applies to anygoods to which an indication of the country or placein which they were made or produced or the nameand address of the manufacturer or person for whomthe goods are manufactured is required to beapplied shall be punishable with imprisonment for aterm which shall not be less than six months butwhich may extend to three years and with a finewhich shall not be less than fifty thousand rupees(US $ 1100) but which may extend to two lakh rupees( US $ 4400).

The Customs route is rarely used in the combatingof piracy in the Indian scenario. One of the reasonsis that there are more that 40 ports of entry in Indiaand the authorities do not have an effective centraldatabase. This is being worked on and one expectswhen this is ready this route would be used moreoften.

For a trademark infringement, the proprietor of atrademark should inform the Collector of Customsof its trademark rights and call upon the Customs toprohibit importation of goods that would constitutean infringement. Additionally, use of a trademark forthe purposes of export shall constitute use of thetrademark within India.

Similarly, under the Copyright Act the Registrar ofCopyrights has the authority to order that infringingcopies are not imported into India.

There is no format for the filing of such complaintsbefore the Customs authorities and by and largeparties who are aware of consignments use the civilcourts to get an injunction and serve this onCustoms.

Customs Procedures


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Introduction

KENYA

Kenya accords civil remedies and criminal sanctions to persons in event of infringement ofintellectual property rights.

Criminal sanctions are available mainly under the Intellectual Properties Act 2001, Trade MarksAct, & Copyright Act. A claimant may wish to pursue these remedies in tandem with civilredress.

The vast majority of claimants rely upon the civil process for redress. This decision is principallydictated by the fact that the civil remedies available to the claimant are more useful to him thanpunishment of the offender in the name of the State, which is not compensatory. In addition,when there is a certain overlap between criminal offences and the assertion of intellectualproperty rights in the civil sphere, the claimant will ordinarily prefer the latter.


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Civil Procedures and RemediesMost claimants choose civil remedies for a numberof reasons. Firstly, there have been fundamentalweaknesses in enforcement due to the generalattitude of the Government and especially theprosecutorial agencies in that it is presumed thatintellectual property is a personal and private affairrequiring minimal intervention of the state if any. Mostprosecutors and police officers regard intellectualproperty infringement as less serious than othercrimes like murder, robbery and personal injury: theirreason, “nobody is bleeding”.

Secondly, the claimant is not able to obtain anyinterim relief pending the court’s final decision in acriminal trial.

Thirdly, the criminal process does not present anyopportunity to extract information from the accusedprior to the trial in the same way as disclosurepermits within the civil process.

Finally, the claimant must overcome a higher burdenof proof: guilt beyond reasonable doubt, which ismandatory in order to convict in criminal cases asopposed to proving infringement on the balance ofprobabilities.

Civil remedies available to a claimant forinfringement are:

1. Injunctions2. Damages3. Account of profits4. Delivery up5. Expuncture and erasure6. Obtaining evidence of infringement7. Discovery of names.


A court can grant different types of injunction asredress for infringement of intellectual propertyrights. These are classified as:

i. Mandatory injunctions and Prohibitory injunctionsii. Interlocutory injunctions and permanent injunctionsiii. Quia-timet injunctions

An injunction is an order of the court that dictatesthe future conduct of a party to litigation. In the eventthat the party wilfully disobeys the order, it will be

held in contempt of court. This is punishable by fine,imprisonment or sequestration of assets.

A mandatory injunction compels the personinfringing intellectual property rights to undertake aparticular act, while a prohibitory injunction is anorder to refrain from doing a particular act. Aprohibitory injunction acts as a bar to futureinfringement. It operates to protect the claimant fromincurring further damage/loss by requiring theinfringer to stop repeating or continuing with hisaction. This is true of infringement of copyright,trademark, design right, patent and any otherintellectual property right which is afforded the statusof “property”.

An interim/interlocutory injunction is one that isgranted by the court pending the full hearing anddetermination of a matter. This type of injunction canrepresent an effective and inexpensive means ofobtaining redress for an intellectual property rightsholder, prior to a full hearing of issues. The injunctioncan prevent the alleged infringer from beginning orcontinuing with a particular course of action untilthe matter comes to full trial. The question of whetheran interim injunction should be granted is always amatter for the court’s discretion, since injunctionsare equitable remedies.

The rights holder must take steps to instigate therelevant proceedings as soon as he becomes awareof the alleged infringement in accordance with theequity maxim that equity protects the vigilant notthe indolent. The rights holder’s prospects ofsuccess of obtaining the order will also invariablybe contingent upon him being able to offer a cross-undertaking in damages. He ought to be ready torecompense the alleged infringer for any damagehe suffers in the intervening period in the event thatthe rights holder’s case fails at trial.

In exercising its discretion, the court must first applythe test applied in other civil matters before grantingthe interlocutory injunction. The court has to satisfyitself that:

i. Others is a prima facie case with a probability of success

ii. Irreparable damage will be occasioned to the claimant if the interlocutory injunction is not granted

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Kenya

iii. The balance of convenience

If the evidence demonstrates that the award ofdamages at full trial will adequately compensate therights holder and that the alleged infringer will beable to pay these, an interim injunction will notordinarily be granted. If damages are unlikely to fullycompensate the rights holder, the court must thenconsider the adequacy of the damages (payableunder the cross-undertaking) to compensate thealleged infringer in the event that the rights holderis not successful at trial. Where the damages underthe cross undertaking are sufficient, the injunctionwill ordinarily be granted. Where there are questionmarks over the adequacy of damages tocompensate both the rights holder and the allegedinfringer, the court will weigh up all relevant factorsin arriving at the most equitable decision.

Most interim injunctions in intellectual property casesend up being permanent/final injunctions. However,the sole or non-exclusive licencee (persons to whompermission has been granted under a contract toutilize a certain intellectual property by the owner)may only obtain an interim but not final injunctionbecause their interests are transient rather thanpermanent.

Final/PerFinal/PerFinal/PerFinal/PerFinal/Permanent Injunction.manent Injunction.manent Injunction.manent Injunction.manent Injunction.

Once an intellectual property rights holder hasestablished a case of infringement at full trial, hewill usually be able to obtain an injunction thatprohibits the infringer from repeating or continuingwith its action.

Quia-timet InjunctionQuia-timet InjunctionQuia-timet InjunctionQuia-timet InjunctionQuia-timet Injunction

In intellectual property this injunction is granted torestrain a person from committing any acts in thefuture that would amount to infringement where it isanticipated that this may happen. Injunctions aremore appropriate in intellectual property case sincein these cases infringement even for a short periodof time, may be irreversible or disastrous.


Damages may be compensatory or punitive.Compensatory damages are intended to put theinjured party in the same position as he would havebeen had the infringement not occurred. Sometimes

damages may include the royalties, which the rightsholder would have earned had the intellectualproperty (e.g. patent) been licensed to the infringeror others, in which case damages would have to becomputed.

In civil cases the rationale is to compensate the rightsholder for the harm caused by the infringement butnot to punish the infringer for his aggression, asopposed to criminal cases where the main intentionis to punish the infringer. Notwithstanding this,punitive damages, though rarely, may be awardedwhere the infringing conducted is abhorrent. Forinstance, where the co-inventor or exclusive licenceeinfringes a patent by posing as the inventor.

Under copyright law punitive damages may beawarded where the conduct is scandalous: forinstance, if a photographer published photos of aprivate wedding without permission to do so or thepublishing of a copyrighted diary.

In the vast majority of cases of intellectual propertyrights infringement there is no contractualrelationship between the rights holder and theinfringer. Consequently any damages will berecoverable in forts. These damages compensatethe rights holder for any foreseeable loss whichresults directly from the infringement. Ordinarily, thecourt in declining to award damages, considerswhether the rights holder and infringer are genuinecompetitors. If so, the court further considerswhether the rights holder would have been likely togrant a licence to the infringer to use its rights. If theanswer to this question is in the affirmative, thedamages payable by the infringer will represent theroyalty payment he would have expected to payunder the licence. Alternatively, the damages willrepresent the rights holder’s actual losses sufferedas a consequence of the infringer’s unlawfulcompensation.

Account of PrAccount of PrAccount of PrAccount of PrAccount of Profitsofitsofitsofitsofits

An account of profits is an equitable remedy that isavailable to an intellectual property rights holder atthe court’s discretion. This may be a better remedythan damages. It is intended to prevent unjustenrichment or misappropriation. The infringer iscalled upon to declare all the income derived fromthe infringement. The rights holder is entitled toreceive the particular amount that the infringer states



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as his income from the infringement. This is analternative remedy to damages and is based onactual rather than potential profits. It has beenargued that this remedy would be suitable becausethe infringer may have better financial, technical ormarketing capacity to realise higher returns from theintellectual property than the rights holder himself.

It has been argued that damages, and to someextent account of profits, may not be sufficient inKenya, partly because they are difficult to compute.Moreover, in the case of copyright, the court hasdiscretion to award only upto Sh. 800,000: somelawyers and (potential) infringers describe this asloose change or petty cash.

DeliverDeliverDeliverDeliverDelivery upy upy upy upy up

An order may be granted requiring the defendantto deliver up all infringing material including allequipment and contraptions. This can represent auseful means for a rights holder to ensure theefficacy of any injunctions he obtains. That which isinfringing may either be delivered up to the rightsholder for destruction or be destroyed by theinfringer, who is required to undertake to do so underoath. Delivery up is an equitable remedy and isdiscretionary.

ExpuncturExpuncturExpuncturExpuncturExpuncture/Erasure/Erasure/Erasure/Erasure/Erasureeeee

This is usually in relation to trademarks. A mark thatis registered but infringes on the rights of atrademark, which though unregistered hasestablished itself such as to be termed as notorious,may be erased from the register, e.g. in the case ofSAAC Vs SKEL the infringing trade mark of SKELwas expunged.

Obtaining evidence of infringementObtaining evidence of infringementObtaining evidence of infringementObtaining evidence of infringementObtaining evidence of infringement

More often than not the rights holder will, withoutsufficient evidence, suspect that a certain person isinfringing his rights. In order to effectively institutelegal proceedings against the infringer with a higherprobability of success the rights holder will requiremore evidence. An Anton Piller order provides sucha means for the rights holder to obtain additionalproof of infringement.

DiscoverDiscoverDiscoverDiscoverDiscovery of namesy of namesy of namesy of namesy of names

In certain cases of infringement, the only informationwhich an intellectual property rights holder has isthe identity of a distributor or middleman throughwhom the infringing goods are passing. This personmight not himself have infringed the owner’s rightsor even be aware that others are doing so. However,his actions are facilitating the infringement of theowner’s (civil and /or criminal) rights. In suchcircumstances, the court has discretion to ordersuch a person to disclose the names of theconsignors or recipients of the goods. Suchdisclosure enables the rights holder to identifyagainst whom he must bring any related action.

Section 109 of the Intellectual Properties’ Act 2001declares infringement of patents to be criminal andone would be liable to a fine of not less than Sh.10,000.00 and not more than Sh. 50,000.00 or to a jailterm of not less than 3 years but not exceeding 5years or to both.

One of the rationales for criminal sanctions is thefact that the state should assist innovators inprotecting or enforcing their inclusions. This is arecognition that bringing patent, trademark andcopyright law and infringement under the auspicesof public or criminal law would assist in raising theprofile of intellectual property and help reduce orstigmatize infringement. The state has betterfinancial, technical and human resources than theinnovator on whom the burden of protection andenforcement has traditionally rested.

Offences created by the statutes on intellectualproperty are largely aimed at restricting the activitiesof pirates and counterfeiters. However, there arecertain offences created by the various statutesrelating to the various procedures for registration ofintellectual property.


Copyright is currently one of the most controversialaspects of IP. Developments in the field ofinformation and technology (eg. the Internet,cyberspace, software etc) have raised a lot ofinterest as well controversy in copyright doctrine and



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practice. It is not quite clear what the proper limitsand extent of copyright are. There is equallyextensive argument on the relationship betweenfreedom of expression and the right of intellectualproperty. Copyright protects the expression of anidea (information, facts, knowledge or concepts)rather than the idea per se (in itself). The idea maybe expressed in bottles, music, drawing, broadcastor other related modes of expression. Copyrightsubsists automatically upon creation of the workunlike patents or trademarks, which have to beregistered.

Copyright subsists in an original work that has beenexpressed in a physical, material or tangiblemedium. Section 22(3)(b) of the Copyright Actrequires that the work be one that is written down,recorded or otherwise reduced to material form. Tobe precise, it must be in a tangible form. Ideas inthe mind do not count as copyright.

In Kenya, copyright lasts for life, plus 50 yearsstarting from the year after the original owner’s death,as provided for under Section 23 of the CopyrightAct. This however, does not apply to secondaryworks like audio-visual works, photos, soundrecordings and broadcasts, whose copyright lastsfor 50 years. Section 23(2) of the Copyright Actexempts them from this.

Infringement of CopyrightInfringement of CopyrightInfringement of CopyrightInfringement of CopyrightInfringement of Copyright

Infringement is the dealing with a work that iscontrolled by copyright in a manner that is contraryto the interest of the owner of the copyright withoutthe owner’s authority consent, licence or permission.The defendant’s conduct must be seen tocontravene the reserved rights, which include theright to reproduce, communicate to the public,broadcast and perform the copyrighted work.

To prove infringement of copyright it must be shownthat:

i. There is similarity between the infringing material and the copyrighted material.

ii. There is evidence of access of the infringer to the copyrighted material

iii. The material copied must be copyrightable.

NB.NB.NB.NB.NB. Section 22(4) of Copyright Act provides thatthe fact that a piece or work has infringed anotherdoes not mean that the work is not copyrightable.This is mainly because copyright recognizesderivative works and if infringement happens thenit has to be substantial for it to count, which may notalways be the case.


Trademarks have traditionally referred to marks ongoods whereby they have historically been applied,appended to, affixed to, used in advertising goodsor generally used in connection with goods. Theyare affixed to containers, labels, packages, invoices,receipts or other marketing and promotionalmaterials. Currently, trademarks are no longer limitedto these but they also focus on the identity of aproduct and the goodwill the trademark hasgathered. They also refer to secure marks eg.Windows, KTN, KBC, University of Nairobi etc, whichare names associated with services. Trademarksencompass:

i.i.i.i.i. Signs and signatures eg. Coca Cola, Cadburys,Kodak.ii.ii.ii.ii.ii. Smell, scent mainly for perfumes or foodstuffs.iii.iii.iii.iii.iii. Letters or numerals used as trademarks eithersingularly or in a contribution of letters and numerals.iviviviviv..... Coloured marks used in words or letters eg. pinkand the word Yes, for Kencel and green with thephrase “The Better Option” for Safaricom.vvvvv..... Audible signs ie. Sound marks. This may betranscribed in musical notes or songs eg. Cell phonetunes.vi.vi.vi.vi.vi. 3 dimensional signs e.g. Mercedes sign, PeugeotLion etc, or the shape of certain products orpackages e.g. the coca-cola bottle.vii.vii.vii.vii.vii. Headings, tithe or device. These may emphasizedrawings and 2 dimensional representations of theproduct on paper.

In Kenya, registration of a trademark is mandatoryfor an action to be brought against a person for itsinfringement. Section 5 of the Trade Marks Actprovides this for. However, a passing-off action isalways maintainable even in such circumstances ofnon-registration of a trademark.

After registration one is under an obligation to usethe trademark and if there is a failure to do so theregistered trademark may be taken off the register

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according to Section 29 of the Trade Marks Act i.e.5 years after registration if there has been no bonafide use of the trademark.

Infringement of trademarksInfringement of trademarksInfringement of trademarksInfringement of trademarksInfringement of trademarks

This is the use of a trademark in the trademark sensewithout the licence of the trademark owner. Asmentioned earlier, for one to allege infringement thetrademark must be one that has been registered.However, marks that have received notoriety canbe protected even if not registered.

DefencesDefencesDefencesDefencesDefences

i. Lack of title to the trademark.

ii. Non-registration of mark – This applies mainlywhere the trademark does not have notoriety i.e. itsnot famous thus has not developed good will. If themark is notorious then this defence does not holdany water.

iii. Non-use of trademark – The defendant may pleadthis as a defence where the mark has not been usedas a trademark.

iv. Confusion – the defendant may argue that theplaintiff’s trademark is likely to cause confusion. Thisis so if the trademark is neither distinctive norcapable of distinguishing the product.

ReliefsReliefsReliefsReliefsReliefs

i. Damages.

ii.Account of profits.

iii.Destruction of the infringing material or mark.

iv. Erasure or expunction. This could be under 2different circumstances (a) where there is aninfringing trademark and the infringing mark isexpunged from the register, (b) when a trademarkfor a period of 5 years from the time of registration itis erased from the register.

v. Self-help. This can be both defence and a remedy.The proprietor of the trademark may, for instance,do advertisements and promotional campaigns tocreate awareness among his customers that thereis a counterfeit in the market. He may also write a

demand notice to the infringer to cease and desistfrom further infringement.


Infringement: Patent infringement is the unauthorizeduse of, and dealing with, a patented product/processcontrary to the intents of the patentee and withoutthe patentee’s consent, authority, licence orpermission.

Infringement of a patent entails either the selling ofa patented product without a licence or the selling/manufacturing of another product that closelyresembles the patented product. In the former, focusis on the identity of the infringer, while in the latterfocus is on the nature of the technology and howthe two technologies are related, rather than identityof the infringer.

Defences available in patent infringement casesinclude:

a) The invention had been published and thereforelacks novelty.

b) Absence of specificity in the claims in that theclaims are not specific enough.

c) Non-patentability of the subject matter due toexclusion by statute.

Unlike in the case of copyright, independentinvention is not a defence in patents. This is due tothe fact that when a patent is registered in the patentsoffice (KIPI) this act constitutes constructive noticeto the world and ignorance of the law is no defence.Remedies are as stated earlier.


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KOREA

Introduction

In Korea, most foreign IP rights owners start with a criminal complaint rather than initiating civilactions against infringers. This is because the discovery system is not allowed in Korea andbecause actual damage is hard to prove.

Most infringement cases, whether civil or criminal, result in a settlement, which can be filed byeither defendant or plaintiff during the course of the suit. The costs incurred in the successfulsettlement are borne by each party unless otherwise specifically agreed upon between theparties. However, if compromise is unsuccessful, the costs are borne by the applicant of thesettlement.

Overall, as Korea has gradually reinforced its IP enforcement policies, foreigners now havemore diverse ways of protecting their IP rights, including resorting to the Korean IntellectualProperty Office.


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Korea is a continental law country and both civil andcriminal procedures are available for IP infringementcases. Usually, where an infringement of intellectualproperty is found, the rights owner issues a warningletter to the alleged owner. This warning is generallysent by certified mail in order to be useful evidencein future court proceedings. It is intended to warnthe party that he or she is infringing or has infringedupon the owner’s rights and urge that party tovoluntarily cease and desist from such action. Basedon the reaction of the infringer, the rights owner maydetermine whether to lodge a civil or a criminalaction.

However, due to the lack of pre-trial discovery andthe difficulty of proving damages, most foreign IPrights owners do not initiate civil damage actionsagainst infringers unless they have clear evidenceof infringement and damages.

Judicial authoritiesJudicial authoritiesJudicial authoritiesJudicial authoritiesJudicial authorities

A trial (district) court handles infringement cases asa court of first instance. An action is subject to thejurisdiction of the court situated at the place ofgeneral forum of the defendant. The defendant’sdomicile shall determine the general forum of aperson. A legal action arising out of a wilful act maybe brought in the court at the place where the actwas committed. A party who is dissatisfied with thejudgment of a district court on any question of factor law may appeal to a high court. Appeals againstthe rulings or judgments of a high court must befiled with the Supreme Court, where only questionsof law may be heard.


In order to promptly suspend violations of IPinfringement, the rights owner may file for preliminaryinjunction. A court will grant an injunction if it believesthat a change in the status quo would make itimpossible or very difficult to remedy. A court willalso grant an injunction for the purpose ofprovisionally settling disputes in cases of lastingconflicts over rights; if necessary, for example, toavert substantial prejudice or prevent imminentviolence.

In addition to the provisional remedies of preliminary

injunction, administrative remedies are availablesuch as a trial for confirmation of the scope of atrademark right before the Industrial PropertyTribunal Patent Court.

TimeframeTimeframeTimeframeTimeframeTimeframe

Trial level: The process from filing a trial (a trial canbe filed at any time, provided infringement isongoing) to reaching the time limit for preparatorypleadings, followed by evidentiary search/experts’opinions, rendering a decision and final transmittalof a decision, takes about one year.Appellate level: Appeals must be filed within fourteendays from the date on which the decision of the trialjudge’s decision is transmitted.Supreme Court level: When filing an appeal (withinfourteen days from the date on which an appealdecision is transmitted), a notice of reasons forappeal can be submitted within twenty days fromthe date on which the appeal is filed.

CostsCostsCostsCostsCosts

Injunction:Injunction:Injunction:Injunction:Injunction: First instance including preparation: USD7,000 – 10,000;Second instance: USD 5,000 –10,000; Provisional Injunction: USD 5,000 – 10,000Compensation:Compensation:Compensation:Compensation:Compensation: First instance including preparation:USD 7,000 – 15,000; Second instance: USD 10,000or more.Criminal prCriminal prCriminal prCriminal prCriminal prosecution:osecution:osecution:osecution:osecution: USD 3,000 or more

DisclosurDisclosurDisclosurDisclosurDisclosure re re re re requirequirequirequirequirementementementementement

Patent Law Article 132, and its parallel provisionTrademark Law Article 70 state that: “in litigationrelated to the infringement of a patent (trademark)right or exclusive license, the court may, upon therequest of a party, order the other party to submitdocuments necessary for assessing the damagescaused by the infringement, unless the personpossessing the documents has a justifiable reasonfor refusing to submit them.”

Moreover, Civil Procedure Code Article 344stipulates the obligation of the adverse party or thirdparties to submit the documents in their possessionupon receipt of an order by court; and Article 352stipulates the voluntary submission of documentsby the third-party holder of a document. In caseswhere it is unclear who holds evidentiary documents,a general request for submission of the documentsis available.

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Korea

Contrary to the UK and US legal systems, an adverseparty is not obliged to disclose evidence in Korea.Accordingly, it is very difficult to obtain evidenceproviding infringement, damages or invalidity. In aneffort to overcome this difficulty, the law allows forthe burden of proof to be lightened or transferredentirely to the adverse party.


1. Patent Civil Litigations1. Patent Civil Litigations1. Patent Civil Litigations1. Patent Civil Litigations1. Patent Civil LitigationsDamages:Damages:Damages:Damages:Damages: Where a patentee or exclusive licenseeclaims compensation for damages from a personwho has wilfully or negligently infringed a patent rightor exclusive license by assigning (selling) infringingarticles, the amount of damages is calculated asthe number of assigned articles multiplied by theprofit per unit of the articles that the patentee orexclusive licensee might have sold in the absenceof the infringement.

The compensation may not exceed the amountcalculated as follows: the estimated profit per unitmultiplied by the number of products that thepatentee or exclusive licensee could have producedsubtracted by the number of articles sold. However,where the patentee or exclusive licensee was unableto sell the product for circumstances other thaninfringement, a sum based on the number of articlessubject to these circumstances must be deducted.(Article 128, Paragraph 1 of the Patent Act).

Undue PrUndue PrUndue PrUndue PrUndue Profit : of i t : of i t : of i t : of i t : In cases where a patentee orexclusive licensee demands damageindemnification against a person who has willfullyor negligently infringed upon the patent right orexclusive license, the amount of the undue profitearned by the infringement shall be presumed tobe the damages sustained by the patentee or theexclusive licensee (Article 128, Paragraph 2 of thePatent Act).

Royalty: Royalty: Royalty: Royalty: Royalty: In cases where a patentee or exclusivelicensee claims damages indemnification against aperson who has willfully or negligently infringed uponthe patent right or exclusive license, the amount hewould receive as a reasonable royalty for workingthe patented invention may be demanded as theamount of damages. However, if the damagesexceed the amounts payable as a reasonableroyalty, such excess may be further demanded. Inthis connection, if the infringer was in good faith or

was not grossly negligent, the court shall take thisinto consideration in deciding the damages awarded(Article 128, Paragraphs 3 and 4 of the Patent Act).

Intervention of the CourIntervention of the CourIntervention of the CourIntervention of the CourIntervention of the Court:t:t:t:t: In litigation related to apatent right or exclusive license, where the courtrecognizes that the nature of the case makes itdifficult to provide evidence proving the amount ofdamage that has occurred, the court may determinea reasonable amount based on examination of theevidence and review of all the arguments (Article128, Paragraph 5 of the Patent Act).

PerPerPerPerPermanent Injunctions: manent Injunctions: manent Injunctions: manent Injunctions: manent Injunctions: The patentee or exclusivelicensee may request that one who has infringed oris likely to infringe upon that party’s rights ceaseand desist from continuing the infringing actions ortake measures for preventing infringements. In thiscase, the patentee or exclusive licensee maydemand that products constituting infringement bedestroyed, that facilities used for the infringementbe removed, or that measures for the prevention betaken. (Article 126 of the Korea Patent Law)

Restoration of Business Reputation:Restoration of Business Reputation:Restoration of Business Reputation:Restoration of Business Reputation:Restoration of Business Reputation: Upon therequest of a patentee or exclusive licensee, the courtmay, in lieu of damages or in addition to thedamages, order the person who has injured thebusiness of the patentee or exclusive licensee bywillfully or negligently infringing the patent right orexclusive license, to take necessary measures torestore the business reputation of the patentee orexclusive licensee (Article 131 of the Patent Act).

2.T2.T2.T2.T2.Trademark Civil Litigationsrademark Civil Litigationsrademark Civil Litigationsrademark Civil Litigationsrademark Civil LitigationsDamages:Damages:Damages:Damages:Damages: Damage suffered by the plaintiff will begiven upon showing proof of actual damage beingsuffered. Since actual damage may be difficult toshow to a court, it may be hard to recover actualdamages in Korea.

Undue PrUndue PrUndue PrUndue PrUndue Profit:ofit:ofit:ofit:ofit: The profits gained by an intentionalor negligent infringer are presumed to be the amountsustained by the owner of the mark or by theexclusive licensee. Profits the infringer shouldnormally have gained may also be claimed.

Reasonable Royalty:Reasonable Royalty:Reasonable Royalty:Reasonable Royalty:Reasonable Royalty: Where the owner of atrademark right or an exclusive licensee claimscompensation for damages from a person who hasintentionally or negligently infringed the trademarkright or the exclusive license, the profits gained by



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the infringer from the infringement are consideredto be the amount of damage suffered by the ownerof the trademark right or exclusive licensee.

PerPerPerPerPermanent Injunctions:manent Injunctions:manent Injunctions:manent Injunctions:manent Injunctions: Article 65 of the TrademarkLaw states that the owner of a trademark right or anexclusive licensee may request a person who isinfringing or is likely to infringe on the trademarkright or exclusive license to discontinue or refrainfrom the infringement. The owner may demand thedestruction of the infringing articles, the removal ofthe facilities used for the act of infringement, or othermeasures necessary to prevent the infringement.

Restoration of Business Reputation:Restoration of Business Reputation:Restoration of Business Reputation:Restoration of Business Reputation:Restoration of Business Reputation: Upon requestof the owner, an intentional or negligent infringer mayalso be ordered to take whatever measures arenecessary to restore the owner’s businessreputation. An intentional or negligent infringementmeans that the infringer had actual or impliedknowledge of the registration. An infringer ispresumed knowledgeable that the mark is registeredif an indication, i.e. “Registered Mark” is used.

3. Recover3. Recover3. Recover3. Recover3. Recovery of Expensesy of Expensesy of Expensesy of Expensesy of Expenses, including Lawyers’ FeesBeing either the defendant or the plaintiff, thesuccessful party can claim reimbursement of legalcosts incurred during the proceedings as a principle.Attorney’s fees, and other analyzing fees, however,are not easy to get reimbursement for in Korean legalpractice. Where judgment is given for the defendant,he/she can seek a complaint for compensation ofdamages in a separate lawsuit so as to recoveractual expenses, financial losses in business, creditand mental damages.

4. Applications to for4. Applications to for4. Applications to for4. Applications to for4. Applications to foreign rights holderseign rights holderseign rights holderseign rights holderseign rights holdersAny patent rights owner, whether foreign ordomestic, who has the patent registered in Koreaor its exclusive licensee, is entitled to seek remediesin Korea. Any trademark owner, whether foreign ordomestic, who has registered his/her trademark inKorea, or if not registered, who owns a trademarkwell known in Korea, is entitled to seek remedies.The well-known status of a mark is determined onthe basis of period, quantity, manner and method ofits use. However, the regulation only applies toactivities taking place within the jurisdiction of theRepublic of Korea, which includes importation andexportation of the infringed goods.


To be aligned with international IPR standardsincluding WTO/TRIPs Agreement, the Koreangovernment takes vigorous measures to protectintellectual property. Not only the Prosecutor’s Officeand the police, but also the Korean IntellectualProperty Office investigates cases of counterfeitgoods.

Jurisdictional authoritiesJurisdictional authoritiesJurisdictional authoritiesJurisdictional authoritiesJurisdictional authorities

The infringed party may enforce its right by lodgingan action against an alleged infringer to the policeand prosecutors. When, and if, the prosecutioninstitutes a public action for the case after fullinvestigation and interrogation of the accusedinfringer, criminal proceedings can commence in thedistrict court. A party who is dissatisfied with thejudgment of a district court on any question of factor law may appeal to a high court. Appeals againstthe rulings or judgments of a high court must befiled with the Supreme Court, where only questionsof law may be heard.

Investigations and prInvestigations and prInvestigations and prInvestigations and prInvestigations and prosecutionsosecutionsosecutionsosecutionsosecutions

Public prosecutors and the police investigatecounterfeiters and distributors of counterfeit goodsto maintain social and trade order.

Their anti-counterfeiting activities are focused onpunishing violators. In particular, the JointInvestigative Center on IPR Violations in the SupremePublic Prosecutor’s Office and the Regional JointInvestigation Teams in 21 major district publicprosecutor’s office have been operating in thiscapacity since 1993.

In addition, the Korean Intellectual Property Officehas the “Industrial Property Protection Division” toinvestigate the distribution status of counterfeitgoods. When this division receives reports oncounterfeit goods it warns dealers to cease thedistribution of counterfeit goods and destroysplagiarized trademarks. A patent prosecution iscommenced only upon accusations by theconcerned party. However, in trademarkprosecution, the accusation by the concerned partyis not necessary.


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1. PatentArticle 225 of the Korean Patent Law stipulates:Any person falling within any of the followingcategories shall be punished with penal servitudeof up to seven years and/or by a fine of up to ahundred million won(a) Anyone who has infringed on a patent right orexclusive license right.(b) Anyone who has infringed upon the provisionalright during and after the period of publication of apatent application provided, however, that thisprovision should apply only where a patent right hasbeen recorded.

2. TrademarkAny person who has infringed a trademark right issubject to imprisonment not exceeding seven yearsor to a fine not exceeding a hundred million won.Where a representative of a legal entity or an agent,an employee or any other servant of a legal entity ora natural person, the legal entity or the natural personis sentenced to a fine not exceeding three hundredmillion won.

3. CopyrightAny person who has committed any act of infringingcopyrights shall be punishable by imprisonment fora term of not more than three years or a fine of notmore than thirty million won, or shall be punishableby both imprisonment and a fine:

Other prOther prOther prOther prOther procedural issuesocedural issuesocedural issuesocedural issuesocedural issues

Successful criminal conviction will result in adefendant being imprisoned or fined, which doesnot include ordering compensation to the infringedparty. Furthermore, even though prosecutors areallowed to seize the infringed goods and interrogatethe defendant with regard to the distributionchannels, the court order of disclosing any thirdparties involved in the production and distributionof infringing goods and their channels of distribution,is not available, and the guilty parties are notrequired to disclose the information thereof.

PrPrPrPrPretrial pretrial pretrial pretrial pretrial procedurocedurocedurocedurocedureseseseses

As noted above, the Korean Intellectual PropertyOffice has the “Industrial Property ProtectionDivision” to investigate the distribution status of

counterfeit goods. When this division receivesreports on counterfeit goods it warns dealers tocease the distribution of counterfeit goods, anddestroys plagiarized trademarks. Once the infringedparty has reported to the “Counterfeit Goods ReportCenter”, the “Investigation Division” at the KoreanIntellectual Property Office will launch on aninvestigation and crackdown. In addition, theCustoms service has power to detain the suspectedinfringing goods. When Korean Customs discoversthe suspected goods, Customs will detain the goodsand report to the rights holder.

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As a member state of WTO Agreement, TRIPs, theKorean Customs service strictly prohibits importsand exports of trademark infringement goods. Thismechanism enhances the prevention of counterfeitmerchandise at the earliest possible stage.

Trademark holders of goods who have registered atthe Korean Intellectual Property Office and haverecorded his/her registered trademark rights with theCustoms service, may demand detention of goodsfor 10 days in cases where it is suspected infringedgoods are being imported or exported. Further, whenKorean Customs discovers the suspected infringinggoods, Customs shall detain the goods and reportto the trademark holder even without the request ofthe trademark owner.

ApplicationThe revised Korean Customs Regulation providesthat Customs shall suspend the clearance of goodsthat are shown to infringe a trademark right orcopyright recorded at the Customs.

The effective period of recordation of a mark atCustoms has been extended from three years toten years, so that the rights holder does not have torenew the recordation every three years.

The new regulation has made it easier for intellectualproperty rights holders to take advantage of theborder enforcement measure. Under the newregulation, a request at one District Office for thesuspension of infringing goods shall be effective withall District Offices, without having to post anyadditional bond. Moreover, the new regulation alsoallows the use of a legal representative or agent,where as the older regulation only allowed personalappearances before the Customs.

However, with respect to patented rights, Customshas no obligation to prevent the importation of goodsthat violate a patent, unless requested to do so bythe Korean Intellectual Property Office or the KoreanTrade Commission.

Customs ProceduresPrPrPrPrProcess when goods arocess when goods arocess when goods arocess when goods arocess when goods are seizede seizede seizede seizede seized

When the Customs collector has sufficient reasonto believe that the declared goods infringe anintellectual property right the goods will be detainedfor 10 days, and a notice shall be delivered to theindividuals who declared the goods before aCustoms Office and applied for the suspensionthereto. However, if the applicant for the suspensionproves his/her right within 10 days after he/she hasbrought the case before the court, the detention maybe extended.

Meanwhile, the person who declared the goodssuspended at entry, may request the release of thegoods when he/she provides the Customs collectorwith a security and documents proving a pertinentright. The Customs collector should notify the above-mentioned fact to the interested parties and decidewhether to release or suspend the goods within 15days from the date of the applicant’s application.

91

LATVIA

Introduction

Civil procedures are the most common way to protect intellectual property rights in Latvia andrights holders tend to choose this way and build their strategies based on the system of civilremedies.

Latvian legislation also recognises that infringement of intellectual property rights can be acriminal offence as well, and the country’s Criminal Law establishes criminal liability for violationof invention rights and design rights, infringement of copyright and neighbouring rights,unauthorised use, and the counterfeiting of trademarks and other distinguishing marks. CriminalIP offences come under the jurisdiction of the general court system.


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Civil Procedures and RemediesRiga Regional Court is exclusively the first instancecourt for infringement cases of trademarks, designsand patents. However, copyright infringement casesfall under general jurisdiction, as do designinfringement cases if the designer is seekingremedies under copyright legislation.


Two kinds of provisional remedies are availableunder the Civil Procedure Law of Latvia, namely:security of evidence and security of claim. Theseprovisional remedies provide an effective andinexpensive way of securing a positive outcome ofthe case or execution of judgement.

Security of evidenceSecurity of evidenceSecurity of evidenceSecurity of evidenceSecurity of evidence is admissible in cases wherethe claimant considers that later submittal ofevidence might be impossible or burdensome.Usually the security of evidence is decided with bothparties present at the hearing. However, in cases ofcopyright, sui generis databases, trademarks,patents and designs, as well as other IP rights, thejudge may decide upon security of evidence expartes or in the presence of the claimant only.

Security of evidence is permissible prior to the timewhen court proceedings are initiated, as well asduring any stage of the adjudication of the matter.

If the court ultimately rejects the claim, the rightsholder is obliged to cover the losses that thedefendant has suffered due to enforcing thesecuring of evidence.

Security of claimSecurity of claimSecurity of claimSecurity of claimSecurity of claim is admissible in cases where theclaimant considers that the execution of thejudgement might be impossible or burdensome.Usually, the judge decides upon security of claimex partes. Security of claim is permissible prior tothe time when court proceedings are initiated, aswell as during any stage of the adjudication of thematter.

If the security of claim is demanded before initiatingthe court proceeding, the possible claimant isobliged to submit evidence that the possibledefendant (the debtor) has the purpose of avoidingperformance of their obligation. If the court allowssecuring of a claim prior to action being brought, ajudge may require that the potential claimant securelosses which the defendant may suffer because of

the claim enforcement, by assigning a certain sumof money to be deposited in the bailiff’s depositaccount.

Moreover, the rights holder has an obligation to coverthe losses that the defendant has suffered as a resultof securing of the claim, if the claim is later rejected.

Timescale and costsTimescale and costsTimescale and costsTimescale and costsTimescale and costs

The timescale of civil proceedings from initiating anaction until final judgement is indeterminable andmay vary widely depending on the circumstances.For instance, both parties may come to an amicabledispute settlement or the court proceedings maycontinue until the case is heard in all three Courtinstances. This may continue for up to 3 years.Regarding costs, an average estimate for the wholeprocess is EUR 2000-3500, including both theprofessional and court fees.


The holder of intellectual property rights may askthe court to provide several kinds of remedies. Someof them can be asked separately, otherscumulatively. Usually the remedies in civilproceedings are aimed at stopping the infringementand reimbursing damage or loss rather thanpunishing the infringer. The judgment of the courtmay provide measures to prevent furtherinfringement of the intellectual property rights.

In some cases the rights holder has the right to claimdamages for lost profits. However, the claimant hasan obligation to prove the amount of lost profit withsubstantial credibility, which in practice tends to bedifficult to establish.

Alternatively, the court may hand down judgementthat the defendant has an obligation to return thecounterfeiting goods at cost or free of charge to theowner of the intellectual property rights or thelicensee. The law allows counterfeit goods to beused for charitable purposes if the owner agreesand it is possible to guarantee that they will not returnto commercial circulation.

The law provides for all remedies irrespective of thenationality of the intellectual property rights holder.

Latvian IP legislation does not give the courts powers

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Latvia

to oblige a guilty party to disclose the identity of anythird party involved in the production or distributionof infringing goods, or their channels of distribution.However, the intellectual property rights holder hasrights to use general civil remedies for achieving asimilar result.

The law grants the possibility to recover litigationexpenses, such as court fees, the fees paid torepresentatives and other expenses as prescribedby Civil Procedure Law. Although the representativeof the claimant can be a sworn advocate and aPatent Attorney (in cases of industrial propertyrights), Civil Procedure Law provides recovery oflegal costs only for sworn advocates.


The Law on Trademarks and Indications ofGeographical Origin (“Trademark Law”) providesseveral remedies when someone infringes theexclusive rights of a trademark holder. Liability forunlawful use of a trademark shall arise if the fact ofinfringement is proved. The burden of proof lies withthe owner of the trademark or the licensee.

When infringement is proven, the owner of thetrademark may request the court to make ajudgment including one or more of the followingremedies:

1) cessation of the unlawful use of the trademark2) payment of damages for losses suffered as aresult of the unlawful use of the trademark, includinglost profits3) recovery of court costs, including payment of thelitigation expenses provided for by law, as well asthe fees paid to the representative

Moreover, the court may provide the followingadditional remedies:

♦ preventing further infringement of the trademark♦ destroying goods with the unlawful marking orreturning them at cost to the owner of the trademark(his or her successor in interest) or the licensee ifthe owner so agrees♦ donate them for use for charitable purposes

Besides these, the trademark owner has the right toseek remedies preventing further infringement of thetrademark. The court may prohibit the followingactions:

1) use (affixing, attachment) of the said signs on thegoods or on the packaging thereof2) offering the goods for sale, or putting them onthe market or stocking them for these purposesunder the said signs3) providing services or offering them under the saidsigns4) importing or exporting the goods under the saidsigns5) using the said signs on business documents andin advertising


Holders of copyright and related rights (includingcollecting societies) and other representatives maydemand the following remedies:

1) recognition of their rights by the infringer2) prohibition of the use of their works3) renewing the status prior to the infringement ofthese rights, and that the illegal activity be stoppedor that creative work not be threatened4) compensation for losses, including lost profits orcompensation pursuant to the discretion of the court5) destroying the infringing copies6) stopping the actions of intermediaries whoseservices have been used in order to infringe therights of the holders of copyright and of neighbouringrights, or who have made it possible to perform suchan infringement

Furthermore, the court may, pursuant to a petitionby the claimant, make a judgement that the materialsand equipment used for making of infringing copies,may be removed to compensate the losses incurredto the rights holders, or also that such materials andequipment is given for use for charitable purposesor confiscated. By any means, the infringing copiesshall be destroyed.

Some of the remedies can be applicable separatelyor cumulatively

The rights holders in such cases are exempted fromthe State fee when resorting to the courts.


The Law on Patents provides several remedies whensomeone infringes exclusive rights arising frompatent. Civil liability for breach of a patent arises if



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the fault of infringer is proved. The burden of proofof infringement and fault of the infringer lies with theowner of the patent or the licensee.

When infringement is proven, the owner of the patentmay request the court to make a judgment includingone of the following remedies:

1) interruption of the unlawful use of the invention2) seizure of the patented articles or articles thatthe patented articles are integral parts of, as well asawarding these articles to the patent holder3) compensation for losses suffered as a result ofthe breach, including lost profits4) allocation to the claimant of the profits that theinfringer has received as a result of the illegal use ofthe invention, completely or in part5) recovery of court costs, including payment oflitigation expenses provided for by law, as well asthe fees paid to the representative

However, the law does not allow an injured party toapply simultaneously for compensation for lossesand an allocation of the infringer’s profits receivedas a result of the illegal use of the invention, for thesame breach.

DesignsDesignsDesignsDesignsDesigns

The Law on Designs recognises a few remedies forinfringement of design rights, including infringementof a designer’s moral rights. When the fact ofinfringement of the design rights is proven, the ownerof the design rights may request several remedies.The main remedy is interruption of the unlawful useof the design and probation to do it the future, aswell as compensation of damages.

Moreover, the court shall determine measures foravoiding further infringement. In addition, the courtmay determine several obligations. For instance, theobligation to destroy infringing goods or return themto the design rights holder (his or her successor ininterest) or the licensee if the owner so agrees, ordonates them for use in charitable purposes. Inaddition, the court may establish an obligation todestroy tools and materials mainly used or tailoredfor the purpose of producing the infringing goods.

Some remedies, such as recovery of court costsetc., are applicable only as general remedies undergeneral provisions of the Civil Law and the CivilProcedure Law.


Jurisdiction and investigationJurisdiction and investigationJurisdiction and investigationJurisdiction and investigationJurisdiction and investigation

Only intentional infringement of intellectual propertyrights is a subject for criminal liability. This strictprecondition of the Criminal Law is the main problemfor criminal investigation. The prosecutor has anobligation to prove that a person intentionallycommitted infringement of intellectual propertyrights. Fact of the infringement per se is the subjectof civil liability only.

Police and prosecutors investigate and prosecuteoffences of intellectual property rights infringementunder general rules of procedure. However, there isa special department dealing with criminalinvestigations related to the violation of intellectualproperty rights. The relevant authorities may act ontheir own initiative as well as in response tocomplaints from rights holders. This is in fact theusual way of initiating criminal proceedings.

The qualification of criminal offences and possiblesentences are contained in Criminal Law.

VVVVViolation of Invention and Design Rightsiolation of Invention and Design Rightsiolation of Invention and Design Rightsiolation of Invention and Design Rightsiolation of Invention and Design Rights

The following intentional actions qualify as anoffence:1) disclosure of an invention or design without theconsent of the owner of the invention right or designrights holder prior to the application for a patent.2) appropriation of authorship or compelling of jointauthorship of an invention or design.

For such offences the law determines the followingsentences:

♦ deprivation of liberty for a term not exceedingthree years, or♦ custodial arrest, or♦ a fine not exceeding fifty times the minimummonthly wage (currently about Euro 115).

If the violation of invention or design rights iscommitted by means of violence, threats of violenceor blackmail:

1) the renouncing of an invention or design, or2) compelling of joint authorship,the applicable sentence is deprivation of liberty for


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a term not exceeding five years, or custodial arrest,or a fine not exceeding one hundred times theminimum monthly wage.


If a person commits intentional infringement ofcopyright and related rights, such as infringementof the rights of an author to publishing orcommunication, or to use of the work, or by infringingthe rights of the owners of related rights, the CriminalLaw establishes the sentence for such an offenceis:

♦ community service, or♦ a fine not exceeding sixty times the minimummonthly wage, with or without confiscation ofproperty.

If a person commits the same acts repeatedly or itis committed by a group of persons pursuant to prioragreement, the applicable sentence is:

♦ deprivation of liberty for a term not exceedingfive years, or♦ custodial arrest, or♦ a fine not exceeding one hundred times theminimum monthly wage, with or without confiscationof property.

If a person commits appropriation of copyright orcompelling, by means of violence, threats of violenceor blackmail, the renouncing of authorship orcommits compelling of joint authorship, the lawdetermines the following sentence:

♦ deprivation of liberty for a term not exceedingfive years, or♦ a fine not exceeding one hundred and sixty timesthe minimum monthly wage, with or withoutconfiscation of property.

The Criminal Law separately regulates criminalliability for unlawful acts with objects of copyrightand neighbouring rights.

If a person unlawfully sells objects of copyright andneighbouring rights, or derives other financial benefitfrom the use of such objects, as are published,communicated, performed in public or otherwiseused, infringing copyright or neighbouring rights,the applicable sentence is:

♦ deprivation of liberty for a term not exceedingtwo years, or♦ custodial arrest, or♦ a fine not exceeding eighty times the minimummonthly wage, with or without confiscation ofproperty.

For a person who commits the same acts repeatedlyor if they have been committed by a group ofpersons pursuant to prior agreement, or if they havebeen committed on a large scale, the applicablesentence is:

♦ deprivation of liberty for a term not exceedingfive years, or♦ custodial arrest, or♦ a fine not exceeding one hundred and fifty timesthe minimum monthly wage, with confiscation ofproperty.

The Criminal Law separately determines criminalliability for a person who acquires copyrightedobjects and neighbouring rights for the purposes ofsale, storage or concealment. The court maysentence an offender to community service, or afine not exceeding forty times the minimum monthlywage, with or without confiscation of property.


If the court establishes that a person used orcounterfeited a trademark or other distinguishingmark for goods or services of another rights holder,or knowingly used or circulated a counterfeit mark,the applicable sentence for such offence is:

♦ deprivation of liberty for a term not exceedingone year, or♦ custodial arrest, or♦ community service, or♦ a fine not exceeding fifty times the minimummonthly wage.

If substantial harm is caused thereby to the State,or to rights and interests protected by law of a personas the result of repeated illegal offensive acts, thecourt is allowed to hand down the followingsentence:

♦ deprivation of liberty for a term not exceedingfive years, or♦ a fine not exceeding eighty times the minimummonthly wage.


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The criminal procedure allows the court to obligethe guilty party to compensate the rights holder fordamages if the rights holder submits acorresponding claim. The court has right to applyother civil remedies within criminal procedure.

The trial of a case regarding IP rights offencesproceeds in accordance with the general rules ofcriminal procedure. The Criminal Procedure Coderequires that the prosecutor prove that each productis counterfeit. Since expertise is needed to provethat the product is counterfeit, this can beburdensome, costly and in some cases almostimpossible (e.g. in cases of large cargos withcounterfeit CDs, each piece of music needs toreceive an expert’s statement; the same is true incases of large cargoes of counterfeit clothing). Thenew Law on Criminal Procedure introduces the legalpresumption of an offence in relation to intellectualproperty rights. The potential infringer has anobligation to prove they obtained the intellectualproperty legally.

Administrative prAdministrative prAdministrative prAdministrative prAdministrative procedurocedurocedurocedurocedures and res and res and res and res and remediesemediesemediesemediesemedies

A peculiarity of the Latvian legal system is thatbesides the criminal remedies for infringement ofintellectual property rights there exists a system ofadministrative remedies as well. These areconsidered ‘lighter’ than criminal punishments.

Administrative fines are imposed for certaininfringements of copyright and neighbouring rightsand trademark infringements, as well as for applyingCustoms procedures for counterfeit and piratedproducts.

Infringements of copyright that may cause theapplication of an administrative fine are acquisition,storage and hiding illegally distributed objects ofcopyright and neighbouring rights. The maximumfine for these infringements is EUR 400 withconfiscation of counterfeit goods and carrier.

Using a trademark contrary to the rules of legal useof trademark qualifies as a trademark infringement.The maximum fine for this breach is EUR 150 andconfiscation of the counterfeit goods.

The maximum fine for applying Customs proceduresfor counterfeit and pirated products is EUR 400 fornatural persons and EUR 8000 for legal persons.The goods are confiscated and EC Regulation 1383/2003 is applied.

Customs procedures in Latvia are processed inaccordance with Council Regulation 1383/2003concerning Customs action against goodssuspected of infringing certain intellectual propertyrights and the measures to be taken against goodsfound to have infringed such rights.

The main aim of this Regulation is to provide aprocedure in order to prevent counterfeit and piratedproducts crossing the external border of theEuropean Union. Besides this, the Regulation alsoexplains what kind of actions a rights holder needsto take in order to initiate procedures againstcounterfeited goods.

If the rights holder wants to protect their intellectualproperty rights they must submit an application toCustoms. The Regulation determines two types ofapplication – a national and a community-wideapplication. The National Application only coversLatvia, whereas the Community Application couldcover several or even all EU countries.

Regulation 1891/2004 establishes the applicationforms. Intellectual property rights holders are obligedto provide information such as:

(1) a detailed description of the goods so thatCustoms can recognise them(2) any specific information the rights holder mayhave regarding the flow of the counterfeited goods(3) evidence that he owns the relevant rights

Customs may review the application within 30 daysand, if it will be successful, the applicant will begranted special Customs protection for up to 12months. Moreover, the terms of the application maybe extended later.

In addition, the Regulation requires that the rightsholder signs a declaration (Model Undertaking bythe Applicant) wherein he agrees to cover expensesrelated to the costs incurred under this Regulationfrom keeping the goods under Customs control,including the costs occasioned by the destructionof goods infringing an intellectual property right.

Furthermore, the rights holder has to notify Customsof any alteration to or forfeiting of his intellectualproperty rights.

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Customs Authorities may detain goods suspectedof infringing intellectual property rights on their owninitiative. In this case the rights holder has anobligation to submit a Customs Application within 3days, otherwise the goods will be released. Inaddition, the rights holder has an obligation to servea statement regarding the counterfeited nature ofdetained goods (i.e. whether counterfeit or not).

In cases where the rights holder has alreadysubmitted the application, he has to submit thestatement on the nature of goods within 10 daysafter notification that the goods have been detained.

The rights holder may request Customs to disclose,if it is known, the names and addresses of theconsignee, the consignor, the declarant or the holderof the goods and the provenance of goodssuspected of infringing an intellectual property right.

If the goods are found to be counterfeit, Customsshall initiate an administrative or criminal procedure.Ordinarily, Customs initiate administrative action. Asa result, the infringer receives a fine and thecounterfeit goods are confiscated and destroyed.The infringer has the right to challenge decision ofthe Customs in court.


Latvian legislation provides for different kinds ofremedies for infringement of intellectual propertyrights – civil, criminal and administrative.

Civil actions are more frequent than criminal oradministrative. This is probably due to the increasedlevel of independence to choose the possibleremedies, resulting in more effective protection ofintellectual property rights. However, criminalremedies are preferable if the infringement is seriousor damage is substantial.

Recent developments show that police andprosecution offices are more prepared and willingto investigate and prosecute infringement ofintellectual property rights. Nevertheless,administrative remedies, such as the Customsprocedures, tend to become more and moreeffective. They are faster and rather cheaper thatcivil or criminal actions. Hence, since the goods aredetained, it is easy to ensure the destruction of thegoods.

Each of the possible actions (civil, criminal oradministrative) has its advantages anddisadvantages. In some cases it is possible tocombine remedies from different procedures.Therefore the rights holder can choose the approachthat he considers to be the most useful and effective.

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LITHUANIA

Introduction

Even though it is possible in Lithuania to have civil as well as criminal cases against infringersof intellectual property rights, the civil procedure still gets priority as it is easier to prove theguilt referring to civil liability: it is presumed that the person is guilty if he was not careful andcautious as required under the respective circumstances. Also, contrary to the criminal law,the fault is presumed. Moreover, the civil procedure provides more opportunities for the victimto secure the protection of his rights - measures for preserving evidences, provisional andprecautionary measures).

It also should be noted that both civil and Customs remedies applied in Lithuania ensure arather efficient protection of intellectual property rights.

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Lithuania


Vilnius District Court is the only court of first instancefor civil cases regarding violation of the rights ofproprietors of trademarks, patents and designs.Such cases are heard under appellate procedureby the Lithuanian Court of Appeals.

Cases of copyright infringement are heard in allcircuit courts according to the domicile (office) ofthe defendant. The appeal instance for such casesis the district courts of Lithuania. The Supreme Courtof Lithuania is the ultimate court of cassationinstance for all cases.

Lithuanian laws do not limit the duration of theproceedings. Although pursuant to the new Codeof Civil Procedure (which came into force on 1January 2003) the possibilities of delay are limited,as the court has the right to refuse to acceptevidence if such evidence could have beensubmitted earlier and if its later submission coulddelay the hearing of the case.

The Code of Civil Procedure also consolidates theprinciple of proceedings concentration, whichprovides that courts may employ any proceduralremedy to prevent delay of the proceeding. Courtsmay also seek to hear the case during one courtsession if it has no negative impact on the properhearing of the case.

In non-property related cases the stamp duty is EUR29 for each claim. However, if cases regarding theinfringement of intellectual property rights have anissue on the adjudgement of damages orcompensation, a percentage of the claim amounthas to be paid (e.g. if the claim amount is less thanEUR 29,000, 3% of this amount must be paid).

Attorney’s fees are not subject to regulation andapproximately amount to EUR 150-200 per hour. Thelosing party has to reimburse litigation costs incurredby the other party. Recommendations on themaximum amount of attorney’s fees that can beadjudged in a civil case have been adopted.However, these amounts are rather small, and inreality much larger amounts are usually beingadjudged.

The following remedies can be applied in Lithuaniaduring civil proceedings in cases regarding theinfringement of intellectual property rights:

Remedies for prRemedies for prRemedies for prRemedies for prRemedies for preserving evidenceeserving evidenceeserving evidenceeserving evidenceeserving evidence

A request to preserve evidence is possible in caseswhere it is presumed that the future presentation ofsuch evidence is impossible or aggravated. It ispossible to file the request for preservation ofevidence before filing a claim (in this case the courthas to set the deadline for filing a claim notexceeding 14 days), and also after the claim hasbeen filed. The court may order the personrequesting the remedies to pay the deposit. Thesafeguarding of evidence may be enacted promptlywithout notifying the other party.

PrPrPrPrProvisional and provisional and provisional and provisional and provisional and precautionarecautionarecautionarecautionarecautionary ry ry ry ry remediesemediesemediesemediesemedies

A request for application of provisional orprecautionary remedies is possible if the executionof the court’s decision would be aggravated orbecome impossible without the application of suchremedies.

The Code of Civil Procedure provides several typesof provisional and precautionary remedies, such as:

♦ recording a prohibition on the transfer of the titlein the public registry♦ detention of goods♦ seizure of movable and immovable property,monetary funds, property rights♦ prohibition of participation in certain transactions♦ preventing the transfer of property to thedefendants♦ obligation to act by preventing the occurrence orincreasing further damages, etc.

This list of provisional and precautionary remediesis not exhaustive and other remedies or theircombination may be applied. However, their totalamount may not exceed the amount of the claim.

The application of provisional or precautionaryremedies may be ordered by the court in order todefend the public interest or by the parties of theproceeding request. The court has to make adecision on the request within 3 days of receiving it.It is possible to ask the court to apply the saidremedies after the claim has been filed and before


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filing a claim, and in this case the court must set thedeadline for filing a claim. The court may impose afine of up to EUR 290 in case of violation of theassigned prohibition. After a court decision to rejectthe claim comes into effect, the defendant has theright to require the plaintiff to recover the damagescaused by the applied provisional or precautionaryremedies.

CorrCorrCorrCorrCorrective rective rective rective rective remediesemediesemediesemediesemedies

After the court decides the case, it may apply suchremedies re-establishing the situation that existedbefore the infringement:

♦ obligation to recover damages made to theproprietor of the trademark♦ requirement to re-establish the situation thatexisted before the infringement♦ obligation to remove the unlawfully affixedtrademarks from the goods, if necessary, to destroygoods, to seize other devices and equipment usedfor the production of such goods and if necessary,to destroy them.

According to the laws of Lithuania, the followingtypes of damages exist:

1) losses (direct losses, which are the loss or injuryto personal property, and their related expenses;indirect losses and other types of losses: reasonableexpenses for the prevention or reduction ofdamages; for the establishment of civil liability andevaluation of damages and for the recovery ofdamages outside the court)2) compensation3) non-economic damage

The Civil Code provides the conditions for recoveringof damages, such as: illegal acts, damages, causallinks between illegal acts and their damages; fault.According to the Lithuanian laws, fault is presumedand it may be qualified as intentional or negligent.It is presumed that the person is guilty in cases wherehe did not exercise such care as was appropriateto the circumstances of the case.

It should be noted that trademark and design lawand the copyright law regulate compensationdifferently. In trademark and design law, thecalculation of compensation is based on the lawfulsale price. This is the retail market price, which is

the ultimate price of the goods including taxesmultiplied by the number of products sold. The lawfulsale price must be indicated by the plaintiff, whereasthe defendant may argue that the stated sale priceis unlawful. In copyright law, the amount ofcompensation is fixed by the law and ranges fromEUR 362 to EUR 36,202.


Types of injunction according to Lithuanian laws areas follows:

♦ Obligation to terminate all actions which infringeor may infringe the rights of the proprietor of thetrademark (these include the prohibition of puttinggoods on the market or importing and exportingthem). In case the court decision on such prohibitionis not exercised, the fine of EUR 290 may beimposed.♦ Prohibition to perform actions that may causeimminent danger of actual damage in the future(preemptive claim).

It should be noted that in copyright law the infringersmust promptly provide all information about theorigin of illegal goods, especially the names andaddresses of manufacturers, suppliers andcustomers, illegal distribution channels of goods andthe quantity of illegal copies at the request of thecourt.

Moreover, in protecting their rights copyright holdershave the right to apply to court and request that itprohibit the mediator from providing services throughthe computer network to a third party using the saidservices in violation of the copyright.

All the discussed remedies can be applied for byboth national and foreign entities.


In Lithuania, the criminal or administrative liabilitycan be applied in addition to the civil liability for theinfringement of intellectual property rights.

The administrative liability is a milder form of liabilityapplied by various administrative authorities. Thisliability is imposed on copyright infringers for illegal



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use of a work for profit. The punishment for suchinfringement may consist of a fine or the seizure ofillegal copies and of the equipment used for themanufacturing of such copies. Administrative casesshall be heard by circuit courts.

Criminal cases regarding the infringement ofintellectual property rights shall be heard in courtsof general jurisdiction according to the venue of thecrime. Police shall carry out a pre-trial investigationof such cases based on personal complaints or onthe notice of the prosecutor or police. Thus, thepolice may commence a pre-trial investigation attheir own initiative as well as on submittedcomplaints.

In Lithuania, criminal liability for copyrightinfringement arises when illegal copies are usedcommercially and when the scope is large (the valueof copies exceeds EUR 3,620). The followingpenalties can be imposed: community service, afine, restriction of liberty, detention or imprisonmentof up to two years.

A fine, detention or imprisonment of up to two yearsmay be imposed for infringing the rights of theproprietor of patents or design.

A criminal liability may also arise for extensive useof someone else’s trademark or for causing bigdamages, and the following penalties may beimposed: a ban on engaging in certain types ofactivities, a fine, restriction of liberty or imprisonmentfor up to two years.

Criminal liability for the infringement of intellectualproperty rights may be applied to legal entities aswell. In this case the following penalties may beimposed: a fine, the restriction of activities or windingup.

It should be emphasised that once a criminal caseis pending before a court, a civil claim can also befiled regarding the payment of material or non-material damages; such claim will be investigatedtogether with the criminal case.

After Lithuania’s accession to the EU on 1 May 2004,two principal EU regulations on the protection ofintellectual property with the help of Customssurveillance measures are applicable in Lithuania,i.e. Council Regulation (EC) No. 1383/2003 andCommission Regulation No. 1891/2004.

Pursuant to the above mentioned regulations,intellectual property rights holders have the right toapply to the Customs Department under the Ministryof Finance of the Republic of Lithuania regardingthe protection of their rights. The term of suchapplication is one year; it may be renewed for anunlimited number of times.

When the goods in question are detained byCustoms authorities, the rights holders are providedwith ten working days (this period may be extendedby another ten working days) during which thefollowing actions may be taken:

1. The Customs authorities are informed that goodsare legal and instructions are issued for their release.

2. Agreement is reached with the owner of the goodsto destroy such goods using a simplified procedure,which does not require the court’s decision.

However, in this case the costs related to thedestruction of the goods shall be paid by theintellectual property rights holder, unless agreedotherwise.


Such protection of rights is currently becoming morefrequent and the procedure is as follows:

The infringer is informed about the intendeddestruction of goods; if the infringer agrees, thegoods may be destroyed within the said ten workingdays. If the infringer fails to submit his objection,and also fails to inform the Customs authorities abouthis agreement with the destruction of goods, thegoods shall be destroyed following a simplifiedprocedure only after the expiration of the said tenworking days.

1. Pursuant to the approved Rules of Destruction ofGoods, goods can be destroyed in Lithuania by


Lithuania

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companies registered with the Waste ManagementCompany Register and holding respective permits.If the waste is not hazardous and its application issafe for both the environment and human health, itcan be destroyed by the infringer itself or by theholder of the intellectual property rights.

2. Claim is filed with the court to destroy goods ifthe holder of intellectual property rights does notwish to follow a simplified procedure or if the infringerdoes not agree with the destruction of goodsfollowing a simplified procedure.

When goods are detained, the holder of intellectualproperty rights shall have the right to inspect thedetained goods and to take samples. The rightsholder shall also have the right to request informationabout the owner of the goods, the route of thetransportation of goods, and the whole informationprovided by the infringer when filling in the Customsdeclaration form.

According to Article 4 of Council Regulation (EC)No. 1383/2003, Customs authorities may inform theholder of intellectual property rights of a possibleinfringement even before an application has beenlodged, if during a Customs inspection there aresufficient grounds for suspecting that goods infringeintellectual property rights.

According to the Law on Customs (Article 80), theCustoms authorities may, before informing the holderof intellectual property rights of the possibleinfringement, ask the rights holder to provide themwith any information they may need to confirm theirsuspicions.

Since 2001, Customs authorities have initiated thedetention of goods in question 13 times (twice in2001, twice in 2002, four times in 2003 and five timesin 2004).

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MALAYSIA

Introduction

Intellectual property rights (IPR) may be enforced by way of civil and/or criminal proceedings in Malaysia.

The civil and criminal methods of redress are separate and distinct.


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Civil actions for infringement are started in the HighCourt. This applies in respect of actions forinfringement of trademark, copyright, registeredindustrial design and patent. The locality of the HighCourt in which the action is to be brought dependson a number of factors, including the place wherethe defendant is located, although as a general rulethe action can be brought in any State where thereis infringement.

The civil process, from initial filing to completion oftrial, is usually lengthy and can be costly. Legal feesare usually charged based on time costs. Hourlycharges depend on the seniority, level of experienceand skill of the lawyer. A lawyer having more than10 years standing at the Bar with experience inlitigating an IPR dispute / action will generally chargebetween RM900 to RM2000 an hour (US$1 =RM3.80).

Cases involving IPR are heard together with othercases in the High Court. Due to a shortage of Judgesand limited available hearing dates in view of thevast number of cases handled by the judiciary, thishas resulted in cases taking a long time to bedisposed of. It is not unusual for an action to takemore than 5 years to be tried and disposed of.Expeditious hearing of a case is also sometimeshampered when the hearing Judge has little or noworking knowledge of intellectual property laws.

Interested groups lobbied the Government for anIP Court. Recognising the importance of IP to thegrowth of Malaysia’s economy, future developmentand well-being, the Government announced inSeptember 2005, that steps are being implementedto set up an IP Court. The IP Court, which is expectedto come into existence within the next 2 years, willbe dedicated to hearing IP and IPR related cases.Judges of the IP Court are also expected to haveexperience in, or at least a good working knowledgeof, intellectual property laws. The IP Court, when itcomes into being, should allow for more expeditiousdisposal of IP cases.

Not all infringement actions need a full trial. If thecase is clear cut with no triable issue, the rightsowner may apply for judgment summarily. Anapplication for summary judgement is heard basedon affidavit evidence. It can take less than 12 months

from commencement of the action for the summaryjudgment application to be heard and disposed of.

Relief available to a rights owner upon a successfulaction include a permanent injunction, declaration,damages, delivery up of infringing articles and costs.

The remedies mentioned below apply equally to bothdomestic and foreign right holders.

There is a right of appeal from the decision of theHigh Court to the Court of Appeal. There is anavenue for further appeal from the Court of Appealto the Federal Court, subject to permission beinggranted by the Federal Court. The discretion of theFederal Court is exercised in favour of grantingpermission if the intending appellant can show thatthere is a point of general principle which the FederalCourt has not previously decided, or a point ofimportance which if decided would be to publicadvantage, and there is a prima facie case forsuccess in the appeal.

InterlocutorInterlocutorInterlocutorInterlocutorInterlocutory Injunctiony Injunctiony Injunctiony Injunctiony Injunction

An injunction, whether permanent or interlocutory,is an equitable remedy and granted at the discretionof the Court. An application for an injunction istherefore governed by equitable principles. Thisincludes that the applicant must come to Court withclean hands and must make full and frankdisclosure.

It is common for a rights owner to apply for aninterlocutory injunction pending trial. The object isto give to the rights owner temporary protectionagainst injury by continuing violation of his rights forwhich he cannot be adequately compensated indamages in the action. In considering theapplication, the Court will weigh the needs of theplaintiff against the corresponding needs of thedefendant.

The order sought can be a combination of prohibitoryand mandatory injunctions. For example, thedefendant can be restrained from further engagingin the acts complained of and be required to deliverup all moulds used in the manufacture of theinfringing articles, as well as supply and salesdocuments.

Application for interlocutory injunction is made to

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Malaysia

the High Court and is heard based on affidavitevidence. To succeed, the plaintiff must show thatthere are serious issues to be tried and further, thatthe balance of convenience is in favour of grantingthe injunction. If damages are an adequate remedyfor the applicant, then it is not a case for the grant ofinterlocutory injunctive relief. Additionally, theapplicant must act equitably. If, for example, it isshown that the applicant did not come to Court withclean hands or has behaved inequitably, that canbe grounds for the Court to refuse aid to theapplicant.

An application for interlocutory injunction can bemade ex-parte (without presence of the other party)or inter partes (both parties are present). Anapplication ex-parte is suitable in cases where theinjunctive relief is needed urgently or there is fearthat evidence will be destroyed should the otherparty gets wind of the application. An interlocutoryinjunction obtained ex-parte is valid for only 21 days.The Court will usually give a return date within thattime to hear both parties.

The affidavit supporting the ex-parte applicationmust give clear and concise statements as to –

(a) the facts giving rise to the claim against thedefendant(b) the facts giving rise to the claim for theinterlocutory relief(c) the facts relied on as justifying the applicationex-parte, including details of any notice given to thedefendant or, if none has been given, the reason forgiving none(d) any answer asserted by the defendant (or whichhe is thought likely to assert) either to the claim inthe action or to the claim for interlocutory relief(e) any facts known to the applicant which mightlead the Court not to grant relief ex-parte(f) whether any previous similar ex-parte applicationhas been made to any other Judge, and if so, theorder made in that previous application; and(g) the precise relief sought.

If interlocutory injunctive relief is required, it isimperative for the rights owner to act without delayupon becoming aware of the infringement.Unexplained or unreasonable delay will militateagainst the grant of an interlocutory injunction. Therationale is that if the rights owner can wait so longafter becoming aware that his rights are being

encroached, then, the status quo can remainpending trial.

Before an interlocutory injunction will be granted,the applicant must give an undertaking to makegood any damages that may have been sufferedby the alleged infringer due to the injunction shouldthe applicant fail at trial. The undertaking is anundertaking given to the Court. The applicant willtherefore need to establish its ability to honour theundertaking. This is done by producing evidence ofthe applicant’s current financial ability andsteadfastness, as well as in the immediate past(usually going back by about 2 years).

Disobedience or failure to comply with an injunctiveorder or any order of Court can attract proceedingsfor contempt of Court. A person found liable forcontempt is punishable by fine and/or imprisonment.

Final InjunctionFinal InjunctionFinal InjunctionFinal InjunctionFinal Injunction

If the plaintiff succeeds in the application forsummary judgment or at trial, final or permanentinjunction will usually also be granted in addition todamages and costs. In some cases, the injunctionmay no longer be necessary by the time the case isfinally resolved due to developments in the case ora change in circumstances. Evidence at trial mayalso show inequitable behaviour on the part of theplaintiff, which may lead to the refusal of a permanentinjunction.


Damages represent compensation to a plaintiff whohas suffered loss or injury due to the infringement.The purpose is compensatory only, to put the plaintiffin the same position he would have been had thewrong not been sustained.

In framing the amount for relief in an action forinfringement, it is usual for a plaintiff to seek aninquiry for damages or alternatively an account ofprofits. It is not possible to seek both an inquiry andcompensation by way of account of profits.

If the choice is for an inquiry, this will take place byway of separate proceedings before the High CourtRegistrar. Such proceedings are heard by way ofaffidavit evidence, although a party may seek tocross-examine a deponent of an affidavit or any other



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witness. The Registrar’s decision is subject to appealto the High Court Judge.

The party claiming will be awarded those damageswhich he can prove and needs to set out the basisor method of assessment leading to the amountclaimed. The figures used to arrive at the quantifiedamount need to be supported by accountingreports, records and such other relevant documents.

Generally, these are the following main headings inseeking damages:

(i) loss of sales or business profits(ii) costs and expenses actually incurred (forexample, if the plaintiff had to take outadvertisements to warn the public about thedefendant’s offending products, the costs of thoseadvertisements is claimable)(iii) injury to reputation and goodwill, if such injuryhas been suffered.

There are various methods of assessment. If thesituation is one where the plaintiff would have beenwiling to grant a licence, then the licence fee payablecould be the basis of assessment. If the claimant’ssales have been directly affected by the infringingproducts, this could form the basis of assessment.

The Copyright Act 1987 has express provision forthe award of additional damages. A successfulplaintiff may seek additional damages if, havingregard to the flagrancy of the infringement and anybenefit shown to have accrued to the defendant byreason of the infringement (and all other materialconsiderations), effective relief would not otherwisebe available. In such a case, the Court has powerto award such additional damages as it considersappropriate in the circumstances.

Account of PrAccount of PrAccount of PrAccount of PrAccount of Profitsofitsofitsofitsofits

An order for account of profits requires the defendantto give an account of the profits made from theinfringing activities. The purpose is to deprive thedefendant of unjust enrichment. The account islimited to profits actually made. Overheads and othercosts reasonably expended to earn the profits canbe deducted to arrive at the true profits.

An account of profits is an equitable remedy andthe Court has discretion whether or not to grant it.

Thus, the court can refuse to grant an account if, forexample, the plaintiff has significantly delayedbringing action after becoming aware of theinfringement and it would be inequitable to order anaccount against the defendant.

DeliverDeliverDeliverDeliverDelivery Upy Upy Upy Upy Up

It is within the inherent jurisdiction of the Court toorder that all articles which have been created inviolation of the plaintiff’s rights be delivered up fordestruction. This jurisdiction extends not only to theinfringing articles themselves but to articles andmaterials brought into being by an infringement ofthe plaintiff’s rights.


The general rule is that the losing party is liable tobear the costs of the winning party and any otherexpense that the Court may order. The amount ofcosts payable is ascertained by a taxation process.The party awarded costs prepares a bill of costs forfiling in Court that is taxed by the Registrar inaccordance with the scale of costs contained inOrder 59 of the Rules of High Court 1980.

The scale allows fixed amounts for specific items. Italso allows certain items to be taxed at the discretionof the Registrar. Items with fixed amounts are usuallyfor drawing, issuing, filing and service of causepapers and letters, conducting searches anddisbursements incurred - such as for making copiesof documents. Costs for preparing and attending totrial and hearings are taxable at the Registrar’sdiscretion.

In exercising his discretion, the Registrar shall haveregard to all relevant circumstances and in particularto –

(a) the complexity of the item or of the cause of thematter in which it arises and the difficulty or noveltyof the questions involved(b) the skill, specialised knowledge andresponsibility required of, and the time and labourexpended by, the solicitor or counsel(c) the number and importance of the documentsprepared or perused(d) the place and circumstances in which thebusiness involved is transacted(e) the importance of the cause of matter to the client


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Obtaining evidenceObtaining evidenceObtaining evidenceObtaining evidenceObtaining evidence

Evidence obtained by way of entrapment and trappurchases are commonly used and relied upon ininfringement cases. Such evidence is open toscrutiny. If the evidence was obtained fairly and therewas nothing done that might induce someone to fallinto the trap set, the Court will generally accept suchevidence.

An Anton Piller order is also available. It is an ex-parte interlocutory mandatory injunction which, inmost cases, basically orders the defendant to allowthe plaintiff to enter his premises for the purposesof searching for, inspecting and seizing propertyinfringing the plaintiff’s rights, or documents relevantto the plaintiff’s claim against the defendant. It ismost valuable when speed and secrecy are vital toprevent the destruction or disposal of relevantevidence and documents. In this sense, it is a formof discovery order that may enable the plaintiffaccess to evidence which will allow it to prove itscase.

Like other interlocutory injunctive relief, the plaintiffwill need to give a cross-undertaking as to damagesand satisfy the Court of its ability to make good onthe undertaking.

Due to the draconian nature of an Anton Piller order,an onerous burden has to be discharged before theCourt will grant the order. The following conditionsmust be fulfilled before an Anton Piller order can begranted:

(a) there is a strong prima facie case for infringement(b) there is serious damage to the plaintiff or a realrisk of serious damage(c) there is persuasive evidence that the defendantpossesses the incriminating evidence(d) there is a real possibility that the defendant maydestroy or dispose of such incriminating evidencebefore the application for an inter partes injunctioncan be heard(e) the grant of such relief will not be more damagingthan if the order was not granted

As it is an ex-parte application, the applicant has toensure that the statements in its supporting affidavitmeet the requirements mentioned above.Supervising solicitors must be appointed and arerequired to be present when the Anton Piller order

is executed. If the order is to be executed at a placewhere it can be expected that only women and/orchildren will be present, then care must be taken toensure that at least the executing solicitor or thesupervising solicitor is female. Force is not permittedto be used when executing an Anton Piller order. Ifthere is refusal to comply with the order, theapplicant’s recourse is to file proceedings forcommittal and not to use force to gain entry.

Identity of thirIdentity of thirIdentity of thirIdentity of thirIdentity of third pard pard pard pard partiestiestiestiesties

The Court has inherent power and discretion to orderdisclosure of the identity and whereabouts of a thirdparty (such as a distributor, middleman, importer,supplier or manufacturer) who is facilitating theinfringement. The Court may also order thedisclosure of related documents such as deliveryorders, bills of lading or other purchase and supplydocuments.


The Ministry of Domestic Trade and ConsumerAffairs (“the Ministry”) has responsibility toinvestigate and take action against acts in relationto intellectual property rights which are madecriminal offences.

The Enforcement Office of the Ministry has widepowers to enter premises, search and seize anyinfringing copy, contrivance used or intended to beused for making infringing copies or capable ofbeing so used and any other article, vehicle ordocument related to the commission of an offenceunder the relevant legislation.

The rights owner may initiate action by filing acomplaint with the Enforcement Office. If satisfiedthat an offence has been committed, is beingcommitted or is about to be committed, theEnforcement Office will take raid and seizure action.

The rights owner and/or its representatives may bepresent as observers during the action. The actionis by the Ministry and not the rights owner. Thus, therights owner has little say in the conduct of the actionand how it proceeds. At the same time, the rightsowner bears no responsibility towards the personbeing raided.


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Administrative raid actions can be very useful asinfringing articles can be quickly and effectivelyremoved or prevented from flooding the market.There is no requirement to obtain a court order orgive undertakings as to damages. This meansspeed, and also that lawyers’ fees will be significantlylower. Administrative raid actions are particularlyuseful when infringers are rampant and pursuingthem individually by way of civil action will be undulycostly and cumbersome.


Under the Trade Descriptions Act 1972 (“TDA”), anyperson who in the course of trade or business,applies a false trade description to any goods orsupplies or offers to supply any goods to which afalse trade description is applied is guilty of anoffence.

Use of a trademark identical or closely similar to thetrademark of another without permission in relationto unauthorized goods is a false trade description.If the offending mark in question is not identical butclosely similar, the rights owner will need to applyfirst to the court for a trade description order (TDO)to declare the offending mark a false tradedescription. In applying for a trade description order,it is mandatory to identify the infringing mark withprecision. A TDO is valid for 5 years.

The TDA provides for enforcement by the Ministry.Enforcement powers may be exercised if theauthority “has reasonable cause to suspect that anoffence under this Act has been committed.” TheEnforcement Office is usually alerted to an offenceby the trademark owner. However, actions are alsoconducted by the Enforcement Office based on itsown initiatives and investigations, particularly whenthe trademark in question has been the subject ofcomplaints lodged by the owner with the Officepreviously.

Enforcement officers have the power to enterpremises (apart from dwellings) and inspect andseize goods and documents suspected to be relatedto any offence under the Act. Such a seizure isusually the precursor to further investigations by theMinistry, which is authorized to prosecute or tocompound the infringers upon verification by therights owner that the goods seized are in factcounterfeits. The Controller or Deputy Controller maycompound any offence under the TDA.

For premises used only as a dwelling, a court warrantshould be obtained before entering unless theAssistant Controller has reasonable grounds forbelieving that by reason of the delay in obtainingthe warrant, any goods, books or documents in thepremises will likely be removed or destroyed.


If found guilty of an offence under the TDA, thepenalty is a fine not exceeding RM100,000 and/or 3years imprisonment. The penalties are doubled fora repeat offender.

If the infringer is a corporate body, the maximumfine is RM250,000 and double that amount for asubsequent offence. If an offence by a corporatebody is proved to have been committed with theconsent and connivance of, or to be attributable toany neglect on the part of, any director, manager,secretary or other similar officer of the company, heand that company shall both be guilty of that offenceand shall be liable to be proceeded against andpunished accordingly as an offence committed byan individual.

All goods seized under the TDA are liable to forfeitureand disposal in accordance with the directions ofthe Controller unless an order for the release of thegoods is made by the court.


The following are criminal offences under Malaysiancopyright law:

(a) make for sale or hire any infringing copy(b) sells, lets for hire or by way of trade, exposes oroffers for sale or hire any infringing copy(c) distribute infringing copies(d) possesses, otherwise than for private anddomestic use, any infringing copy(e) exhibits in public any infringing copy by way oftrade(f) imports into Malaysia, other than for private anddomestic use, an infringing copy(g) makes or has in possession any contrivanceused or intended to be used for the purposes ofmaking infringing copies(h) circumvent or cause the circumvention of anyeffective technological measures(i) remove or alter any electronic rights managementinformation without authority


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(j) distribute, import for distribution or communicateto the public, without authority, works or copies ofworks in respect of which electronic rightsmanagement information has been removed oraltered without authority

The Copyright Act 1987 grants powers to Ministryenforcement officers and any police officer not belowthe rank of Inspector to enter, by warrant issued bythe Magistrate, any premises to search for and seizeany articles believed to have infringed copyright. Inmaking the application for the warrant, informationhas to be given on oath that infringing activities arereasonably suspected to be taking place or havetaken place.

The Ministry’s enforcement officers and the policeare also empowered to carry out investigations andarrest without warrant any person reasonablybelieved to have committed or attempting to commitan offence. The filing of proceedings in court,however, requires the written consent of the publicprosecutor. Prosecution of proceedings in court maybe conducted by officers of the Ministry or the publicprosecutor.


If found guilty of an offence under paragraphs (a) to(f) above, the penalty is a fine not less than RM2000and not more than RM20,000 for each infringingcopy, and/or imprisonment not exceeding 5 years.For a repeat offender, the penalties are doubled.Minimum fines were recently stipulated in the Act toaddress dissatisfaction with unrealistically lowpenalties meted out by the Courts for offences underthe Copyright Act.

Penalties for offences under paragraphs (g) to (j)above are higher, with maximum fines up toRM250,000 and a jail term not exceeding 10 years.There is also provision for penalties to be doubledfor a repeat offender.

Unless an order for release is made by the court,any article, vehicle, book, document, copy orcontrivance seized by the Ministry is liable toforfeiture and is to be delivered up to the CopyrightController for disposal in a manner he deems fit.Alternatively, the seized items may be delivered upto the copyright owner. In practice, the disposal ofseized goods is made by the Ministry in consultation

with the complainant. If destruction of the seizedgoods requires special means, the complainant maybe asked to bear the costs. It is common for theMinistry to publicise the destruction to help raiseawareness and for purposes of public education.

Optical Discs Act 2000Optical Discs Act 2000Optical Discs Act 2000Optical Discs Act 2000Optical Discs Act 2000– Additional Enforcement Power

The Optical Discs Act 2000 was enacted to regulatethe manufacture of optical discs. “Optical discs”means compact discs, digital versatile discs (DVD),laser discs (LD), mini discs (MD), compact disc-audio, compact disc-video, CD-ROM, CD-I,compact disc-photo, compact disc-recordable,compact disc-rewritable, DVD-R and DVD-RW. Italso covers any other medium or device on whichdata may be stored in digital form and read bymeans of a laser.

A manufacturer of optical discs must be licensed.Conditions are imposed on the licence to preventpiracy activities and to protect the rights of copyrightowners.

As part of the licensing requirement, it is mandatoryfor the manufacturer to mark each optical discmanufactured by him with the code assigned to him.This is to help trace optical discs used in makinginfringing copies to their source.

Unlicensed manufacturing of optical discs is anoffence punishable, in the case of a corporate body,to a fine not exceeding RM500,000. For an individual,the liability is a fine not exceeding RM250,000 and/or imprisonment for not more than 3 years. Penaltiesare doubled if the offence is repeated.

Under the Optical Discs Act, there is power, amongstothers, for the authority to conduct surprise checkson licensed premises to ensure compliance with thelicensing conditions. It is also empowered to enterand search any premises suspected to havecommitted an offence under the Act with a warrantissued by the Magistrate. Similarly, with the powersauthorized under the Copyright Act, enforcementofficers may seize any article, optical disc, book,document or thing found to be relevant to theinvestigation under the Act. All items seized are liableto forfeiture and disposal unless a claim has beenmade or there is an order for release from the court.


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It is an offence under the Patents Act 1983 to falselyrepresent that anything disposed of for value is apatented product or process, or that a patent hasbeen applied for when no such application has beenmade or such application has been refused orwithdrawn. The penalty is a fine of not more thanRM15,000 and/or imprisonment not exceeding 2years.

A warrant may be issued by a Magistrate to permitany authorized officer or police officer (no rankspecified) to enter any premises, search and seizeall documents and articles suspected to be relatedto an offence under the Act, or which containsinformation as to such an offence.

The authorized officer or police officer may arrestwithout warrant any person whom he sees or findsto be committing or attempting to commit an offenceif such person refuses to furnish his name andresidence or is reasonably believed to be providingfalse information or is likely to abscond.

The authorized officer or police officer has the powerto investigate the offence. If no criminal proceedingsare instituted within 4 weeks of the seizure, the thingsseized must be returned to the owner.

This provision differs from those under copyright andtrade description laws, which deem goods seizedto be forfeited after the expiration of 1 calendarmonth from the date of seizure unless a claim ismade before then.


Provisions on border measures in our Trade MarksAct 1976 came into force on 1 August 2001. Theseprovisions are not applicable to goods in transit.

ApplicationApplicationApplicationApplicationApplication

Under the Act, when counterfeit goods aresuspected to be imported into Malaysia, thetrademark owner may submit an application (FormTM 30) to the Registrar of Trade Marks. Theapplication must be supported by an affidavit and afee of RM300. The affidavit must identify theregistered trademark of the applicant, thatcounterfeit goods are expected to be imported andthat he objects to such importation. Furtherinformation required includes particulars of theimporter, the expected arrival time of the counterfeitgoods, registration number of the shipment, vehicleor aircraft and place of origin of the counterfeitgoods.

Upon approval of the application, the Trade MarksRegistrar will inform the applicant and the authorisedofficer (a Customs officer or any public officer). Theapplicant is required to deposit payment as securityto reimburse the Government for any liability,expenses or compensation ordered against it. Theamount of security is decided by the Registrar takinginto account various factors including the estimatedvalue of the imported goods objected to by theapplicant. The Registrar’s approval lasts for 60 daysfrom the day it was given.

When an approval has been given and has notlapsed or been withdrawn, the importation of anycounterfeit trademark goods into Malaysia shall beprohibited.

Suspension of goodsSuspension of goodsSuspension of goodsSuspension of goodsSuspension of goods

If imported goods are detained, the Customs officemust notify the Registrar, importer and the applicant,including the place where the detained goods arestored. The notice will also state that the goods willbe released unless an action for infringement isinstituted by the applicant within a specified periodfrom the date of the notice. The period specified isextendable upon the applicant’s application.

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Infringement actionInfringement actionInfringement actionInfringement actionInfringement action

The Court may, depending on the circumstances ofthe case, order the following relief in addition to thatapplied for in the action:-

i) release the goods on conditionsii) release the goods at the end of specified periodiii) forfeit the goods and direct the disposal of themin a suitable manner

If no action is taken by the applicant or the action isdismissed or discontinued, the detained goods arereleased and the defendant or person aggrievedby the applicant’s action may seek to be awardedcompensation.

To date, there has been little or no use of the bordermeasure provisions under the Trade Marks Act dueto the information that is required to be providedwhen making the application. The informationrequired is, in most cases, simply not available tothe trademark owner.

The Trade Descriptions Act also contains provisionsto prohibit the importation of goods bearing a falseindication of origin, which indication may include atrademark.


A copyright owner may seek to prohibit theimportation of infringing copies. ‘Infringing copies’is any copy of a work made outside Malaysia, themaking of which was carried out without the consentor licence of the copyright owner.

An application is made to the Controller requestingthat during the period specified in the applicationcopies of the work be treated as ‘infringing copies’.A security sum specified by the Controller is requiredto be deposited by the applicant.

If the application is approved, the importation of anyinfringing copies of the work for the durationspecified in the Controller’s notice shall beprohibited. While the notice is in force, the authority(being the Ministry’s enforcement officer, policeofficer not below the rank of Inspector or any officerof Customs) may enter premises to search and seizeany infringing copy prohibited by the notice.

This administrative remedy is available only at theinstance of the copyright owner, unlike the ex-officioaction provision under the Trade Marks Act.

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Introduction

The NETHERLANDS

Intellectual property protection in The Netherlands is laid down in several laws providing abroad spectrum of protection of rights and in general each intellectual property law has thesame structure.

Dutch intellectual property legislation is partly harmonized by European and other internationallegislation (e.g. TRIPs Agreement, Berne Convention, Paris Convention, etc). Importantharmonization also arose regarding enforcement provisions.

The litigation system of the Netherlands is competent, effective, expedient and relativelyinexpensive. As a result, it hosts a lot of (international) intellectual property litigation.

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Netherlands

Civil Procedures and RemediesThe courThe courThe courThe courThe court systemt systemt systemt systemt system

Organization of the court system in the Netherlandsis virtually the same in civil and criminal courts, andis based on the administration of justice in threesteps.

CourCourCourCourCourt of first instancet of first instancet of first instancet of first instancet of first instance

Intellectual property proceedings in first instance aregenerally conducted before the district court. Thereare nineteen district courts in the Netherlands. Thedistrict courts in the larger cities have judges withintellectual property expertise and the district courtin The Hague (as well as the court of appeal in TheHague) has a specialized intellectual propertychamber (see jurisdiction).

The nineteen districts are divided into five sectors,each with its own appeal court: The Hague andAmsterdam in the west, Arnhem in the east,Hertogenbosch in the south and Leeuwarden in thenorth. These courts of appeal deal with cases wherean appeal has been lodged against a judgmentpassed by a district court.

AppealAppealAppealAppealAppeal

Appeal is in principle a full retrial of the case, but isnot limited to assessing the correctness of thejudgment in first instance. However, the court ofappeal will only consider matters against which theparty commencing appeal proceedings has acomplaint, although it is also possible for therespondent to cross appeal to put forwardcomplaints.

In appeal it is possible to bring up new facts, suchas a change of claim, new defences (unless it iscovered in first instance, meaning that a partywaived certain defences) and new evidence. Thecourt of appeal re-examines the facts of the caseand reaches its own conclusions.

CassationCassationCassationCassationCassation

In most cases it is possible to contest the court ofappeal’s decision by appealing in cassation to theSupreme Court located in The Hague. At this stage,the facts of the case as established by the lowercourt are no longer subject to discussion. TheSupreme Court is limited to considering

misapplication of law and/or non-compliance withprocedural requirements (mainly failure to complywith the duty of justification). Next to appeal, theappeal in cassation fulfils an important function inpromoting unity of law.


The district court of the domicile or registered officeof one or more of the defendants has jurisdictionover most proceedings on the merits. In intellectualproperty proceedings this general rule does notoften apply. In case of infringement throughout theNetherlands the plaintiff generally has the option toselect any one of the nineteen district courts in theNetherlands, enabling forum shopping. Furthermore,various intellectual property laws have specific rulesof jurisdiction - trademark, design and patent cases.There are no specific rules of jurisdiction in copyrightcases.

TTTTTrademarks and designsrademarks and designsrademarks and designsrademarks and designsrademarks and designs

The Uniform Benelux Trademarks Act and theUniform Benelux Designs Law provide similarjurisdiction rules. Unless otherwise expresslystipulated by contract, jurisdiction in respect ofBenelux trademarks and designs shall bedetermined by the domicile of the defendant or bythe place where the undertaking giving rise to thelitigation originated, or was or is to be performed.

As stated above, this often leads to forum shopping:the plaintiff in infringement proceedings has a choicebetween the domicile of the defendant or the placewhere the infringement took place.

The place where a Benelux trademark or design wasfiled or registered can on no account serve in itselfas a basis for the determination of jurisdiction. If thecriteria laid down hereinabove should be insufficientfor the determination of jurisdiction, then the plaintiffmay file the action before the court of his domicileor residence, or, if he has no domicile or residencewithin the Benelux territory, before the courts ofBrussels, The Hague or Luxembourg, at his option.

In cases where the public prosecutor acts as theplaintiff in revocation proceedings, the judges inBrussels, The Hague or Luxemburg have exclusivejurisdiction.


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The district court of The Hague and the president ofthe district court of The Hague (in case ofinterlocutory proceedings) have the exclusivejurisdiction over most community trademark anddesign proceedings.


The district court of The Hague and the President ofthe district court of The Hague (in case ofinterlocutory proceedings) have the exclusivejurisdiction over European and national patentcases. The Dutch Patent Act provides for a restrictivelist of patent disputes that fall under the jurisdictionof the aforementioned court. It contains almost everypossible patent dispute.

Civil prCivil prCivil prCivil prCivil procedurocedurocedurocedurocedureeeee

In the Netherlands, judgement is rendered on thebriefs, which are filed during the docket sessions ofthe court, and (if requested) after a limited and quitebrief hearing of oral arguments. To sue an infringer,the holder of an intellectual property right has achoice - apart from the possibility provided by someacts to seize the infringing object - betweeninterlocutory proceedings and proceedings on themerits. In addition to this, Dutch law has a specialprocedure for patent litigation, which is discussedlater.

SeizurSeizurSeizurSeizurSeizureeeee

Most Dutch intellectual property laws contain thepossibility to seize infringing goods as preliminaryrelief before commencement of court proceedings.Other than the Dutch Copyright Act, the UniformBenelux Trademarks Act and the Uniform BeneluxDesigns Law, the Dutch Patents Act does notexplicitly provide for such a possibility. However,Dutch professional literature points out that it shouldalso be possible to seize goods that infringe patents.

The holder of an intellectual property right maypetition the court for the right to seize the infringinggoods. In general, the court does not hear theopposite party, so in most cases the opposite partyis not aware of the threat of seizure. The holder ofthe intellectual property right must initiate courtproceedings within eight days after the goods havebeen seized. Interlocutory proceedings are sufficientto satisfy this requirement.

InterlocutorInterlocutorInterlocutorInterlocutorInterlocutory pry pry pry pry proceedingsoceedingsoceedingsoceedingsoceedings

In the Netherlands, the majority of infringementmatters are dealt with in interlocutory proceedings(“kort geding”) before a single-judge court.Interlocutory proceedings are short, informalproceedings with a totally different character to thatof proceedings on the merits.

The plaintiff in interlocutory proceedings has todemonstrate an urgent interest. The judge is inclinedto accept this urgent interest easily. In infringementproceedings an urgent interest is almost alwaysassumed, especially if the infringement is continuing.This could be different when the holder of anintellectual property right has known about theinfringement for a considerable time and has nottaken any action against it.

Interlocutory proceedings are instituted by servinga writ of summons upon the defendant. Thereaftera short oral hearing takes place. After the oralhearing the judge announces when the parties mayexpect the interlocutory decision. Most interlocutoryproceedings take about six weeks, but can also takea few days in very urgent cases or a few months incomplicated patent cases.

The judgement by the judge in interlocutoryproceedings is always provisional, in the sense thatthe judge hearing the proceedings on the merits ofthe case is not bound to it. The provisional nature ofthe judgement in interlocutory proceedings meansthat the judgement may not be declaratory(confirmation of a legal status) or constitutive. Aconstitutive judgement means that the judge ininterlocutory proceedings may not, for example,dissolve contracts due to breach of contract.


Different remedies are available in interlocutoryproceedings over intellectual property matters. Thefollowing are the most common remedies:

1. an injunction2. interlocutory decision of non-infringement3. providing a list of all infringing products storedand revendication of infringing products4. destruction of the infringing products and/or theapparatus used to make them5. providing a list of suppliers and handing over all


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information to identify the suppliers6. providing a list of customers7. recall of infringing products from the market8. rectification letters to customers9. publication of a press release on the finding ofinfringement, or publication of the judgement10. advance payment of damages11. advance payment of profits made from theinfringement12. imposing an immediately payable penalty forbreach of the aforementioned remedies (except forthe advance payments under no. 10 and 11)

PrPrPrPrProceedings on the meritsoceedings on the meritsoceedings on the meritsoceedings on the meritsoceedings on the merits

In cases concerning provisional measures within thescope of article 50 section 1 of the TRIPs Agreement,provisional measures cease to have effect in caseproceedings on the merits that have not beeninstituted within a reasonable time and the defendantfiles notice for that purpose with the court registry.

The term for instituting proceedings on the meritscan be determined by the judge in interlocutoryproceedings. In case the judge in interlocutoryproceedings does not set a term, the term forinstituting legal proceedings is at least 31 days,containing at least twenty working days. To avoidproceedings on the merits, parties often enter intoa settlement agreement determining the legalrelationship between the parties.

Proceedings on the merits are instituted by servinga writ of summons upon the defendant, which isfollowed by a statement of defence by thedefendant. It is possible that the district court willset a date for a personal appearance of the partiesbefore the district court for the parties to giveinformation or to try to reach a settlement. If suchan informal hearing is set, the district court mayrender its decision thereafter. Instead of setting adate for an informal hearing or in stead of renderingits decision, the district court may allow a statementof reply followed by a rejoinder. Thereafter, it ispossible that a short oral hearing takes place. Atthe end the district court renders its decision.Proceedings on the merits take approximatelyeighteen months.


Next to the possible remedies in interlocutory

proceedings, the following remedies can be claimedin proceedings on the merits:

1. nullification of a filing2. declaration of non-infringement3. damages4. payment of profits made from the infringement

Special prSpecial prSpecial prSpecial prSpecial procedurocedurocedurocedurocedureeeee

There is also a special procedure for patent litigation;the accelerated short-term proceeding on the meritsin which the judge sets the dates for the filing ofbriefs and the oral hearing before the writ ofsummons is served to the defendant. Acceleratedshort-term proceedings generally lead to a finaljudgement within a year.

Dutch law provides for criminal sanctions in the eventof infringement of almost all intellectual propertyrights, provided that there is cognizance on the sideof the infringer. Enforcement of intellectual propertyrights is generally conducted through civilproceedings as the holder of an intellectual propertyright has virtually no influence on the course ofcriminal proceedings. The holder may lodge a formalcomplaint, but eventually the public prosecutordecides whether or not to institute criminalproceedings against the infringer. In practice, thepublic prosecutor rarely prosecutes infringement ofintellectual property rights.

Sentences and punishmentsSentences and punishmentsSentences and punishmentsSentences and punishmentsSentences and punishments

The Dutch Penal Code provides the followingprinciple sentences: imprisonment, detention,community service order and payment of a fine.Additional punishments are: deprivation of specificrights, forfeiture and publication of the courtdecision.

Specific intellectual property acts also containcriminal law provisions. An overview of the criminallaw provisions for patents, trademarks, designs andcopyright follows.


The Dutch Patents Act provides for a penal sanctionstating that any person who deliberately infringes

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the rights of the patent proprietor shall be punishedwith imprisonment of no more than six months or afine of the fourth category (Euro 11,250).

TTTTTrademarks and designsrademarks and designsrademarks and designsrademarks and designsrademarks and designs

As far as trademark law and design law isconcerned, article 337 of the Dutch Penal Code isof main interest. The trademark provision states thata person who intentionally imports, re-exports,exports, sells, offers for sale, delivers, gratuitouslyhands out or has in stock false, falsified or unlawfullymanufactured brands, is liable to a term ofimprisonment of not more than one year or a fine ofthe fifth category (Euro 45,000).

The design law provision states that a person whointentionally imports, re-exports, exports, sells, offersfor sale, delivers, gratuitously hands out or has instock goods or parts thereof which constitute aninfringement of model and design rights, will besentenced with a maximum imprisonment of oneyear or a fine of the fifth category.

The offender is liable to a term of imprisonment ofnot more than four years or a fine of the fifth category,where the offender commits these serious offencesas his profession or business. The same penalsanction applies where, as a result of the seriousoffence, a general danger to persons or propertymight have been expected to ensue from the act.


The criminal enforcement of copyright is settled inarticles 31 - 36 b of the Dutch Copyright Act. Amongother things, the Dutch Copyright Act provides for apenal sanction stating that a person who intentionallyinfringes another person’s copyright or a person whointentionally publicly offers for distribution, has in hispossession for the purpose of reproduction ordistribution, imports, re-exports, exports or keepsfor profit an object containing a work infringinganother person’s copyright is liable to a term ofimprisonment of not more than six months or a fineof the fourth category (Euro 11,250).

Reproductions declared forfeit by the criminal courtshall be destroyed. The court may, however, providein its judgment that they be handed over to the holderof the copyright if the latter applies to the office ofthe clerk within one month of the judgment becomingfinal and conclusive.

The right of Customs to take action in the event ofthe infringement of certain intellectual property rightsis based on Council Regulation (EC) no. 1383/2003of 22 July 2003. Customs may take action uponrequest of the holder of an intellectual property rightor without such a request (ex officio).


When the holder of an intellectual property rightsuspects that his right is being infringed, the holdercan request Customs in writing through a standardapplication form to take action for a specified period,up to a maximum of one year. Customs can onlytake action if the goods are under Customs control.If the goods are not under Customs control, theFiscal and Economic Crime Service (FIOD-ECD) isthe appropriate authority to investigate a possiblecounterfeit.

It is essential to enclose proof of entitlement to theintellectual property right with the standardapplication form. It is also essential to provideCustoms with as much information about theinfringing products as possible to enable Customsto intercept the infringing products. The standardapplication form contains a field in which the holderof the intellectual property right needs to give asufficiently detailed description of the infringinggoods.

The applicant indemnifies Customs against allliability arising from the action they take and bearsall costs resulting from detaining goods orsuspending the release of goods.

Within thirty working days after receiving theapplication, Customs will inform the holder of theintellectual property right whether the applicationcontains the right information and whether thesupported documents give adequate information togrant the request.

Notification by CustomsNotification by CustomsNotification by CustomsNotification by CustomsNotification by Customs

Customs notifies the holder of the intellectualproperty right as well as the alleged infringer if itdiscovers possible infringing products. Thisnotification contains information about the quantityand nature of the products. The holder of the

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intellectual property right may request Customs toprovide him with the name and address of thereporting party, consignee, consignor, importer,exporter and manufacturer. The holder of theintellectual property right may also examine samplesof the products.

The holder of the intellectual property right has toinstitute legal proceedings within ten working days,or, if an extension of time has been granted byCustoms, within twenty working days. If no legalproceedings are instituted within this time limit, thegoods will be released.

If Customs comes across possible infringing goodswithout an application being filed by the relevantholder of the intellectual property right, Customs willnotify the holder of the intellectual property right.The holder of the intellectual property right then hasthree working days to submit a standard applicationform as outlined above. Thereafter the proceduredescribed above applies.

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NIGERIA

Introduction

Nigerian civil and criminal procedures for the redress of intellectual rights infringement areconsistent with the country’s common law legacy. However, Nigeria has not kept pace withrecent developments in intellectual property law. Representations have been made to theauthorities for the amendment of the laws and important changes are expected, especially onthe Trade Marks Act which is currently under review.

Civil action for injunction and damages is still the preferred choice of most rights holders. Civilactions are more flexible than criminal proceedings, and they afford the rights holder and hiscounsel more control over the proceedings. Very effective orders of interim injunction andsearch-and-seizure can be obtained early in the proceedings. This partly compensates forconcerns over court congestion and other delays associated with the justice delivery system.

Criminal proceedings on the other hand have several institutional and procedural drawbacks.The rights holder has little or no control over criminal proceedings. He is at the mercy of lawenforcement agents who may be inefficient or indifferent to the outcome. Besides, many rightsholders do not care for the imprisonment of the infringer. Even when fines are imposed, theyare notoriously too low to act as effective deterrents.

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Applicable law and jurisdictionApplicable law and jurisdictionApplicable law and jurisdictionApplicable law and jurisdictionApplicable law and jurisdiction

Intellectual property rights are matters on theexclusive legislative list under the NigerianConstitution, and are therefore governed by federallegislation. Trademarks are governed by the TradeMarks Act, Chapter T13, Laws of the Federation ofNigeria, 2004; Copyright by the Copyright Act,Chapter C28, Laws of the Federation of Nigeria,2004; and Patents and Designs by the Patents andDesigns Act, Chapter P2, Laws of the Federation ofNigeria, 2004. By the provisions of section 251(1)(f) of the 1999 Constitution, and section 7(1) (f) ofthe Federal High Court Act, jurisdiction over civilcauses and matters relating to intellectual propertyis vested exclusively in the Federal High Court.However, the States’ High Courts have jurisdictionto entertain the common law action of passing offsimpliciter.


In an action for the infringement of an intellectualproperty right, provisional remedies such as interimand interlocutory orders of injunctions, and thesearch-and-seizure-type Anton Piller order may begranted in deserving cases. The Anton Piller orderhas been well received in Nigeria. Application forsuch interim relief is made and granted ex parte.The applicant is required to file his writ of summonsand two applications simultaneously – his ex parteapplication for interim injunction and a furtherapplication on notice for interlocutory injunction. Theaffidavit in support of the ex parte application forinterim injunction must be cogent and compelling.

The applicant must satisfy the court that time is ofthe essence to the application. Time is of theessence where delay arising from putting thedefendant on notice in the usual way will causeirretrievable or serious mischief. The courts have,however, insisted that only real, as opposed to selfinduced, urgency will suffice in the circumstances.

These interim reliefs are particularly effective inintellectual property rights infringement actionswhere infringers usually cause material evidence toquickly disappear at the slightest hint of legalproceedings. In trademark and copyrightinfringement actions for example, many such actionsdo not proceed to trial after an Anton Piller order isexecuted against an infringer.

Conditions for the grant of rConditions for the grant of rConditions for the grant of rConditions for the grant of rConditions for the grant of reliefeliefeliefeliefelief

An interim injunction is an equitable relief and isgranted at the discretion of the court. An applicantmust satisfy the following conditions before aninjunction can be granted:

(a) The applicant has a legal right which isthreatened.

(b) There is a serious question to be tried. Theapplicant is not required at this stage to show thatthe action will succeed. The courts have interpretedthis requirement to mean that there is a disputebetween the parties.

(c) The balance of convenience is in favour ofgranting the application as the award of damageswould not be an adequate remedy for the applicant.

(d) The applicant will suffer irreparable damage orinjury which cannot be compensated in damages ifthe defendant’s acts are not restrained.

(e) The conduct of the parties. Delay in commencingproceedings, for example, may defeat theapplication as the relief is an equitable remedy.

UnderUnderUnderUnderUndertaking as to damagestaking as to damagestaking as to damagestaking as to damagestaking as to damages

Because there is a possibility that the grant of aninjunction may occasion grave hardship to thedefendant, an undertaking as to damages is usuallyimposed on the applicant as a condition for its grant.The applicant may be required to back up hisundertaking by depositing money into the court, orto swear to an affidavit of means. Deposit of moneyis usually resorted to where the applicant is notresident in Nigeria.


Where an applicant wants to ensure that an infringerdoes not conceal, destroy or dispose of infringingproducts and incriminating documents or othermaterial evidence in the infringer’s possession, theapplicant may apply for an Anton Piller order. Theorder is a specie of injunction, and the conditionsfor its grant are virtually the same as those for aninterim injunction, except that the applicant mustadditionally satisfy the court that the infringer has inhis possession incriminating evidence and that there


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is a real likelihood that the infringer may dispose of,conceal or destroy such material evidence if hebecomes aware of the action. A request for an AntonPiller order and order of interim injunction are usuallycontained in the same ex parte application. In someinstances the application will be heard ex parte and‘in camera’.

There is no specific provision in court rules for theAnton Piller order. The provision of the rules for thegrant of injunction for the detention, custody orpreservation of the subject matter of an action isrestricted to applications on notice to the other party.However, Nigerian courts have recognised andapplied the order in the exercise of their equitablejurisdiction. The clearest statutory provision for anAnton Piller order is found in section 25 (1) of theCopyright Act which provides as follows:

In any action for infringement of any right under thisAct, where an ex parte application is made to thecourt, supported by affidavit, that there is reasonablecause for suspecting that there is in any house orpremises any infringing copy or any plate, film orcontrivance used or intended to be used for thepurpose of making copies of any article, book ordocument by means of or in relation to which anyinfringement under this Act has been committed,the court may issue an order upon such terms as itdeems just, authorising the applicant to enter thehouse or premises at any reasonable time by dayor night accompanied by a police officer not belowthe rank of an Assistant Superintendent of Police,and:

(a) seize, detain and preserve any suchinfringing copy or contrivance;

(b) inspect all or any document in the custodyor under the control of the defendant relatingto the action.

Goods seized pursuant to an Anton Piller order areusually kept in the custody of the deputy sheriff ofthe Federal High Court pending the determinationof the action. However, in some instances, the courtmay grant custody of the goods to the applicantupon such terms as the court may deem fit.

The Anton Piller order is a potent weapon in thehands of intellectual property rights holders ininfringement actions. The order can compel aninfringer to inform the applicant where the infringing

goods in his possession are, and so far as he isaware, to disclose among others, the following:

(a) the names and addresses of everyone who hassupplied him, or offered to supply him the infringinggoods; and

(b) details of the dates and quantities of every suchsupply or offer.

Where the search discloses the existence of otherinfringers the applicant is permitted to apply to thecourt to have them joined as defendants. Informationon the infringer’s volume of trade and earnings inthe infringing activity, where obtained, may berelevant in the assessment of damages at trial. Thereare concerns, however, that this order is open toserious abuse by litigants and their counsel, andtherefore the courts usually impose strict conditionsfor its grant.

Application for interlocutorApplication for interlocutorApplication for interlocutorApplication for interlocutorApplication for interlocutory injunctiony injunctiony injunctiony injunctiony injunction

An order of interim injunction granted ex parte ismeant to last for a few days – usually between oneto two weeks – pending the hearing of the applicationfor interlocutory injunction. The main purpose of thislatter application is to restrain the infringing activityuntil the determination of the action, and the sameconsiderations for the grant of the order of interiminjunction apply.

TTTTTrial rrial rrial rrial rrial relief availableelief availableelief availableelief availableelief available

At trial, the plaintiff bears the burden of proving theinfringement complained of on a balance ofprobabilities. In order to succeed in his action theplaintiff must establish the following:

(i) his title to the intellectual property right beinginfringed

(ii) the infringement, or threatened infringement ofthe right; and

(iii) the injury or loss where special damages areclaimed

In the event of success at trial, the applicant will beentitled to relief which includes perpetual injunction,damages, account for loss of profit (in appropriatecases), and costs. Consequential orders may also


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be made by the court for the disposal of infringingproducts, or of relevant documents seized duringthe execution of the Anton Piller order. Such ordersmay include the destruction or handing over of theinfringing products to the holder of the infringed right.Damages are compensatory and may be nominal ifno loss or damage is proved.

With respect to costs, Nigerian courts tend to awardnominal costs only. The awards cover the cost ofthe filing processes and for other out-of-pocketexpenses. Counsel’s fees are not recovered as costsincurred in the action.

Time scales and miscellaneous issuesTime scales and miscellaneous issuesTime scales and miscellaneous issuesTime scales and miscellaneous issuesTime scales and miscellaneous issues

It is difficult to set a time scale from thecommencement to conclusion of civil actions inNigeria. The country is large and the conditionsaffecting justice delivery differ widely. Some partsof the country suffer from acute court congestion,resulting in a long delay for actions.

Metropolitan cities like Lagos, Abuja, Port Harcourtand Kano that have concentrations of population,business and commercial activities, are particularlyaffected by the problem of court congestion. In otherparts of the country where population, economic andcommercial activities are not so concentrated, casestend to move relatively faster, though delays are alsocommon. On average, however, a case could lastfrom between one to three years at the Federal HighCourt in Nigeria.

The Federal High Court (Civil Procedure) Rules,2000, has some innovative provisions including the“front-loading” of evidence requirement, under whichparties must file copies of all relevant documentaryevidence together with their pleadings. It is hopedthat with more commitment from the Bench and theBar, the Rules will deliver more expeditious justiceto litigants.

FeesFeesFeesFeesFees

Filing fees are moderate and are graduateddepending on the amount of money claimed in theaction. The maximum amount payable at the FederalHigh Court for filing any claim is N50,000 (Fiftythousand naira). Filing fees for actions where nomonetary claims are made are usually modest.

Lawyers’ fees are usually the subject of negotiationbetween the client and the lawyer. The fees couldbe on an hourly rate, payable according to agreedstages, or for a fixed sum. Many of the leading lawfirms adopt some or all the three methods incharging their fees. The more common practice,however, is a fixed sum charge for the whole case,and payment in stages.

Regardless of the method adopted, fees are usuallynegotiated with consideration given for such issuesas the complexity of a cause or matter, its likelyduration, the financial status of the client and thelawyer’s or firm’s reputation or ability.

Under the provisions of several intellectual propertyrights and other federal statutes, the infringementof intellectual property rights may give rise to bothcivil action and criminal prosecution, and a rightsholder is permitted to pursue the two optionssimultaneously.


Sections 3, 10 and 14 of the Merchandise MarksAct, Chapter M10, Laws of the Federation of Nigeria,2004, created several offences with respect totrademarks. Under these sections, it is an offenceto: (i) forge a trademark

(ii) falsely apply to goods any trademark orany marks so nearly resembling a trademark as tobe calculated to deceive

(iii) make, dispose of or be in possession ofany die, block, machine or other instrument for thepurpose of forging, or of being used for forging atrademark

(iv) apply any false trade description to goods

(v) sell or have in one’s possession for sale orany purpose of trade or manufacture any goods orthings to which any forged trademark is applied

(vi) counsel, aid or abet the commissionoutside Nigeria, of any act which if committed inNigeria would be an offence under the Act



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(vii) import into Nigeria any goods which if sold,would be liable to forfeiture under the Act; or

(viii) import into Nigeria any goods bearing thename or trademark of any manufacturer or trader inthe United Kingdom unless such name or trademarkis accompanied by a definite indication of thecountry in which the goods were made or produced.

Prosecution is commenced by making a complaintto the police, and offences are triable summarily atthe magistrates’ courts, or on information at theStates’ High Courts. Penalties on conviction includeimprisonment of up to two years, a fine and/orforfeiture of the infringing goods.


Actions that constitute civil infringement and criminalinfringement are closely related. Accordingly, section24 of the Copyright Act provides specifically that itshall be permissible for both civil and criminalactions to be taken simultaneously in respect of thesame infringement. Some of the major offences arecontained in sections 20 and 30 of the Act.

Under section 20, a person commits an offence ifhe: (a) makes for sale or hire any infringing copyof a work in which copyright subsists

(b) imports into Nigeria a copy of any workwhich if it had been made in Nigeria would be aninfringing copy

(c) makes or has in his possession for thepurpose of trade any plate, machine, equipment orcontrivance for making infringing copies

(d) sells or lets for hire any infringing copy inwhich copyright subsists

(e) distributes for the purpose of trade anyinfringing copy of such work

(f) possesses any infringing copy of any suchwork otherwise than for his private use

(e) possesses, sells, lets for hire any copy ofa work which, if it had been made in Nigeria, wouldbe an infringing copy

In section 30, which deals with the infringement of aperformer’s right, a person commits an offence ifhe, without the performer’s consent in writing:

(a) records a live performance

(b) broadcasts live, or includes live in a cableprogramme, the whole or a substantial part of thelive performance

(c) performs in public the whole or asubstantial part of the performance

(d) shows or plays in public the whole or asubstantial part of the performance for commercialpurposes

(e) broadcasts a performance by means ofrecording which, to his knowledge is made withoutthe performer’s consent

(f) imports into Nigeria otherwise than for hisprivate use a recording of a performer’s work whichis an infringing recording; or

(g) sells, lets for hire, distributes or displaysfor sale a recording of a performer’s work which isan infringing recording

The Federal High Court is conferred with exclusivejurisdiction over copyright infringement offences.Prosecution is commenced by making a complaintto the police. The police can search the premises ofthe infringer under a search warrant. Similarly, theAnton Piller order-like provision of section 25 of theAct can be invoked to obtain evidence ofinfringement. Penalties on conviction includeimprisonment for between two to five years, a fineor both imprisonment and a fine. In addition, thecourt is empowered, whether the infringer isconvicted or not, to order all copies of the works,plates, master tapes, machines, equipment andcontrivances in the possession of the infringer to bedestroyed or delivered up to the owner of thecopyright, or otherwise dealt with as the court maydeem fit.

Patents and designsPatents and designsPatents and designsPatents and designsPatents and designs

There is no offence of infringement of a holder’s rightunder the Patents and Designs Act.


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There is no Customs procedure for the enforcementof intellectual property rights in Nigeria.

The Nigeria Customs Service has very wide powersof examination, search, seizure, forfeiture ordestruction of certain classes of imported orexported goods under the Customs and ExciseManagement Act, Chapter C45, Laws of theFederation, 2004. Yet there is no specific provisionin the Act dealing with intellectual property rightsprotection, or their infringement prevention. In theabsence of a court order, or the intervention of thepolice or the regulatory agencies in charge ofregulated products, the Customs service is notcompelled to act upon the complaint of a rightsholder of the existence of infringing goods that arearriving or leaving the ports.

Consequently, intellectual property rights holderswho become aware of the presence of goodsinfringing their rights seek the aid of the court, thepolice, the Customs, and the relevant regulatoryagencies in order to inspect and/or get such goodsimpounded.

Regulatory agencies such as the National Agencyfor Food and Drug Administration and Control(NAFDAC), the Standards Organisation of Nigeria,and the Nigerian Copyright Commission areempowered to operate at the air and sea ports, andto impound counterfeit and substandard regulatedproducts. This current practice is unwieldy andunsatisfactory. Some times these institutions andagencies work at cross purposes rather than incooperation.

Customs Procedures

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POLAND

Introduction

Polish law provides the holders of intellectual property rights (especially the holders of patents, trademarks,industrial designs and copyright) with a set of weapons to protect and enforce their rights.

There are two basic types of procedures under which it is possible to enforce one’s rights, namely civil andcriminal. The extent of actions available under each procedure depends on the kind of rights that wereinfringed, and the circumstances under which the infringement took place. Using a civil or criminal procedureis not the only solution for IP rights holders to protect themselves. It is also possible to seek additionalprotection under the Customs procedure, which by its nature is not independent, and constitutes onlya preliminary step before proceeding with further legal actions, civil or criminal, depending on the rightsholder’s choice.

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Poland


Cases involving IP rights infringement are examinedby common courts. There are no separate courtsfor the examination of IP rights infringement cases,irrespective of whether the infringement concernsIP rights in general, or it was committed in respectof a specific kind of IP rights, e.g. the rights to apatent.

If the case concerns a dispute between twocompanies on the grounds of their business activity,it will be examined by a commercial court underspecial procedure. Apart from this, other cases areexamined by common courts under generalprocedure.

The distinction regarding this kind of procedure hasthe following impact on the parties. As to theprinciple, the requirements regarding proceedingsbefore commercial courts are stricter than if acommon court deals with the case. In particular,there are some restrictions regarding the filing ofevidence (the principle of so-called ‘evidencepreclusion’). Pursuant to this principle, it isfundamentally necessary for the plaintiff to mentionin the statement of claim all statements relevant tothe case and attach all evidence to support thosestatements, under the penalty of being precludedfrom serving the court with more evidentiarymaterials after the proceedings have started.

Another requirement typical in proceedings beforea commercial court is the obligation to serve the so-called ‘warning letter’ on the infringer beforecommencing court action. The aim of the warningletter is to inform the opposite party that it hascommitted an act of infringement, and to requestthat party to fulfill the harmed person’s claimsvoluntarily. The warning letter, along with theinfringer’s response, must be attached to thestatement of claim filed with the court.

PrPrPrPrPreliminareliminareliminareliminareliminary injunctiony injunctiony injunctiony injunctiony injunction

In civil proceedings the owner of the infringed IPrights may obtain a decision on a preliminaryinjunction, the aim of which is to secure monetaryand non-monetary claims. The rights owner mustdo two things in order to obtain the decision of thecourt on a preliminary injunction. Namely, it isnecessary to justify one’s claims and provide

evidence of one’s legal interest. In order to justifyclaims, evidence has to be produced confirmingownership of the infringed rights, and that theinfringement has indeed been committed in respectof the goods covered by the right of protection.Regarding legal interest, it shall exist where the lackof preliminary injunction prevents, or seriouslyimpedes, the effectuation of the court decision inthe subject case, which has to be evidenced by theparty requesting the preliminary injunction. The courtthat decides on the preliminary injunction has to takeinto consideration the interests of both sides - IPrights owner and defendant - to the extent that theinfringed IP rights are sufficiently secured, but atthe same time ensuring the other side is notburdened with more responsibility than necessary.

A request for preliminary injunction may be filedbefore filing the statement of claim - that is beforestarting court proceedings - as well as once theproceedings have been started. If the request forpreliminary injunction is filed before courtproceedings start, the court, upon issuing a decisionon granting a preliminary injunction, designates adeadline, before which the statement of claim hasto be filed on pain of nullity of the injunction. Thedeadline cannot exceed two weeks.

Under current regulations, the request for preliminaryinjunction has to be examined immediately: not laterthan within a week from the date it is filed with thecourt. In practice, if the request is examined at aclosed session of the court (such sessions takeplace in respect of non-monetary claims), the courtdecision on preliminary injunction may be obtainedwithin 10-14 days. If the request requires an opencourt hearing because it is in respect of monetaryclaims, the term of the hearing should be designatedwithin a month from the date the request is filed. Inpractice, the said term can be extended up to twomonths.


Under civil procedure IP rights owners, especiallythe holders of patents, industrial designs ortrademarks, may obtain the following main remediesfrom the infringer:

♦ Cessation of the infringement and redress of its consequences♦ Surrender of unlawfully obtained profits


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♦ Payment of compensatory damages according to general principles♦ Publication of the relevant statement in the press♦ Payment of the appropriate sum to the benefit of an IP promoting organization, if the infringement was caused by fault

In addition, if the court finds that infringement hastaken place, upon the request of the rights holder,the court may also decide about further dispositionof the infringing goods, as well as the goods usedin the manufacturing process or marking thereof. Ina civil case, rights holders may also demand thecessation of actions that may potentially result ininfringement.

Owners of copyright may obtain the followingremedies under civil procedure:

♦ Cessation of the infringement and redress of its consequences, particularly through publication of the relevant statement in the press♦ Surrender of the unlawfully obtained profits, or payment of a twofold compensation, or even threefold, if the infringement was caused by fault, in remuneration of damages sustained by the copyright owner♦ Reparatory damages caused by the infringement, if the infringement was caused by fault

In addition, the court may order the forfeiture ofunlawfully produced copies of the works protectedby the copyright to the benefit of the State Treasury.The court may also order the forfeiture of any objectsillegally used to produce the copies of worksprotected by the copyright to the benefit of the StateTreasury or, at the harmed person’s request, theforfeiture of the said objects to the harmed person’sbenefit.

OrOrOrOrOrder to cease infringementder to cease infringementder to cease infringementder to cease infringementder to cease infringement

If, in a given case, the IP rights owner has provenhis rights and the fact that infringement has indeedtaken place, he may request that the court issue anofficial order upon the infringer to cease the infringingactions and refrain from committing the same actionsspecified by the court in the future. However, thisdoes not guarantee that the infringer will definitelyrefrain from committing other infringing actionsagainst the owner of the subject rights.

OrOrOrOrOrder to rder to rder to rder to rder to redredredredredressessessessess

Such orders are issued upon the request of theplaintiff after they have proved their claims ina lawsuit. The owner of the infringed rights maydemand the redress of consequences, which arenormal, direct and exclusive results of theinfringement affecting the owner. These mainlyconsist of ordering the infringer to withdraw fromthe market and destroy the goods made or markedillegally. It seems impossible to order the infringerto conclude e.g. a license agreement with the rightsowner.

SurrSurrSurrSurrSurrender of unlawfully obtained prender of unlawfully obtained prender of unlawfully obtained prender of unlawfully obtained prender of unlawfully obtained profitsofitsofitsofitsofits

This remedy can be obtained by the rights ownerirrespective of the extent of damages he hassustained. It is only necessary for the rights ownerto assess and prove the volume of material profitsmade by the infringer. However, in the course of thecourt proceedings, in many cases IP rights ownersencounter difficulties in making an accurateassessment of the profits made by the infringer.

If copyright was infringed, the court may order theinfringer to provide information and documentsregarding the profits made from infringement.

ReparatorReparatorReparatorReparatorReparatory damagesy damagesy damagesy damagesy damages

Obtaining reparatory damages from the infringer ispossible independently of the surrender of theunlawfully obtained profits. Conditions for obtainingreparatory damages are as follows:

♦ providing evidence confirming that infringement has taken place♦ evidencing damages sustained by the rights owner♦ evidencing direct impact of the infringer’s actions upon the harmed person♦ proving guilt of the infringer

In principle, the burden of proof rests with the rightsowner. However, in case of copyright infringementthe court may also request the infringer to giveinformation and provide evidentiary materialsspecified by the court which are essential to theproceedings.

These remedies are available both for Polish andforeign parties.


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IP criminal offences are in general under thejurisdiction of the relevant Police Departmentshandling matters related to commercial crimes. Theactivity of the Police Departments in this field (similarto other cases) is supervised by the PublicProsecutor’s Office. After filing the indictment act,IP offences are examined by the common criminalcourts (the District Criminal Courts).

As to the principle, prosecution of criminal offencescommitted against IP rights is initiated by the abovementioned authorities only upon the motion (themotion for prosecution), which should be filed bythe rights owner. After filing the motion forprosecution the criminal proceedings are handledby the suitable authorities ex officio.

Moreover, if a criminal court decides that the goodsare counterfeit, irrespective of having sentenced theperpetrator, the court is obliged to issue a decisionon the forfeiture of such goods to the benefit of theState Treasury.

The right for information and compensation, as tothe principle, is not enforceable in Polish criminalproceedings.

With regard to patents and registered designs, thereare no criminal offences relating to infringement ofan IP holder’s rights. However, there are certainoffences relating to the procedure of registration ofboth patents and designs.


In certain cases infringement of the right ofprotection to a trademark shall also be treated as acriminal act. According to the provisions of Polishcriminal law, it is equally considered a criminal actto introduce onto the market goods bearing acounterfeit trademark, as well as even to affix acounterfeit trademark to goods with the intention ofintroducing them onto the market.

A perpetrator performing either type of criminal actnoted above (that is to say, either affixing acounterfeit trademark to goods with the intention ofintroducing them onto the market, or physicallyintroducing these goods on the market) is subjectto a pecuniary penalty, a penalty of liberty restriction,

or a penalty of liberty deprivation up to 2 years. Inorder to commence prosecution, a criminal act hasto be committed intentionally - in other words, thereis the so-called ‘intentional guilt’ requirement for theprosecution to be started.

As far as penal law is concerned, there is animportant feature concerning the trademarkinfringement proceedings: namely, a victim has tofile a motion for prosecution - only after filing themotion can the proceedings can be started andcontinued ex officio.

The only exception is when a person committing acrime in respect of a registered trademark obtainspermanent profits from his criminal activity, orintroduces into the market significant amounts ofcounterfeit goods bearing the trademark. In suchcases, the perpetrator is subject to a more seriouspenalty and shall be liable to imprisonment for aperiod from 6 months to 5 years. In such casesproceedings are started ex officio - it is notnecessary to file the motion for prosecution of theperpetrators.


As to the principle, the majority of copyright offencesare prosecuted upon the motion for prosecution filedby the IP owner. According to Polish Copyright Lawthe following behaviors are recognized as criminaloffenses:

1.1.1.1.1. The usurpation of authorship or misleading othersas to the authorship of a whole or part of anotherperson’s work or another person’s artisticperformance – the perpetrator is liable to fine,restriction of liberty or deprivation of liberty of up to3 years. The same penalty shall be imposed onanyone who disseminates, without indicating thename or the pseudonym of the author, someoneelse’s work in the original or derivative version, orpublicly disfigures such work, artistic performance,phonogram, videogram or broadcast. Anyone whoin order to obtain economic profits violates copyrightin any other way than described above is liable to afine, restriction of liberty and deprivation of libertyof up to 1 year.

2.2.2.2.2. Unlawful, or breaking the agreed conditions,dissemination of someone else’s work in the originalversion or the elaboration of work, the artistic


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performance, phonogram, videogram orbroadcasting – the perpetrator is liable to fine,restriction of liberty and deprivation of liberty of upto 2 years.

If the perpetrator commits these offences in orderto obtain economic profits, he is liable to deprivationof liberty up to 3 years. If the perpetrator obtainspermanent profits from his criminal activityconnected with the offences described above,organizes or leads this activity, he is liable todeprivation of liberty from 6 months up to 2 years.In such cases criminal proceedings are initiated exofficio (without the necessity of filing the motion forprosecution by the IP rights owner). If the perpetratoracts unintentionally, he is liable to a fine, restrictionof liberty and deprivation of liberty up to 1 year.

3.3.3.3.3. Unlawful use, or breaking the conditions, in orderto disseminate, record or copy someone else’s workin the original version or the elaboration of work, theartistic performance, phonogram, videogram orbroadcasting – the perpetrator is liable to a fine,restriction of liberty and deprivation of liberty of upto 2 years.

If the perpetrator obtains permanent profits from hiscriminal activity connected with this offence,organizes or leads this activity he is liable todeprivation of liberty for up to 3 years. In such acase criminal proceedings are initiated ex officio(without the necessity of filing the motion forprosecution by the IP owner).

Unlawful or breaking the conditions for purchasingor providing assistance during the process ofpurchasing an item which is the carrier of the work,the artistic performance, phonogram, videogramdisseminated or copied without permission orbroadcasting leave a perpetrator liable todeprivation of liberty from 3 months up to 3 years. Ifthe perpetrator obtains permanent profits from hiscriminal activity connected with the offence,described above, organizes or leads this activity,he is liable to deprivation of liberty from 1 year up to5 years. In such a case criminal proceedings areinitiated ex officio (without the necessity of filing themotion for prosecution by the IP Owner).

4.4.4.4.4. Manufacturing any equipment or componentsthereof designated for illegal removal orcircumvention of effective technological protection

measures preventing from presentation, recordingor reproducing work or objects of neighboring rights,or trading in such equipment or components thereofor advertising them for sale or rental, renders theperpetrator liable to a fine, restriction of liberty anddeprivation of liberty of up to 3 years. A perpetratorwho possesses keeps or uses any of the abovementioned equipment or components is liable to afine, restriction of liberty and deprivation of libertyup to 1 year.

5.5.5.5.5. Preventing the exercise of a right to control theuse of a work, artistic performance, a phonogramor a videogram renders the perpetrator liable to afine, restriction of liberty and deprivation of libertyof up to 1 year.

On July 1, 2004, the Council Regulation (WE) No.1383 dated July 22, 2003 came into effect in theterritory of the European Union, also includingPoland, determining the actions of Customsauthorities against goods deemed to be infringingsome IP rights, as well as measures to be taken byCustoms authorities in respect of such goods.

In addition, the territory of Poland, as a member stateof the EU, is subject to an additional regulation,namely Council Regulation (WE) No. 1891/ 2004dated October 21, 2004, which came into effect withretroactive date on July 1, 2004 and sets executiveregulations to the aforesaid Council Regulation (WE)No. 1383/ 2003.

Under the Regulation, rights owners can file anapplication (request for granting Customsprotection) to the Main Custom Chamber in Warsawto prohibit entry into the territory of Poland as amember state and export from Poland of theinfringing goods.

The regulation concerns trademarks patents,copyrights, and registered designs as well asunregistered designs.

The actions before the Customs authorities can besplit into two types depending on the type of appliedprocedure; that is, national of community.

This request has to be made on a special form thatmeets the requirements of Council Regulation 1891/


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2004 and be filed along with the following:

! documents confirming the IP rights (i.e. a copyof the decision on registration or its publication inthe Patent Office’s Official Journal)

! visual representations of the original goods(digital photos)

! a written obligation covering the costs relatedthe seizure in the event the case is lost in court (both,criminal and civil), or in case it is proved that theseized goods are genuine

! an indication of the person or company whois able to assist the Customs authorities during theprocess of examining the goods and determiningwhether or not they are counterfeit

Customs protection is granted for a period of oneyear, with a possibility of renewal.

If, upon filing the relevant request, the Main CustomsChamber in Warsaw grants protection, the Customsauthorities in all the outposts located in different partsof Poland are served with the right to seize and stopany suspect goods which might be counterfeit orpirated copies of the goods that have acquiredCustoms protection for 10 working days (which canbe extended by another 10 days if justified properly).

Grant of Customs protection entitles the rights holderto officially contact in a given seizure case theCustoms office at which the goods have been seizedand ask for detailed information (full name of theperson or firm, its address, commercial registernumber, data concerning the recipient of the goods,the amount seized, the samples of the goods etc.)about the entity or person who declared the goodsfor Customs clearance.

In the event of seizure, the rights holder is obligedto provide the Customs authorities with a decisionwhether to institute an investigation, a decision onthe subject of material evidence (criminalproceedings), or a decision on securing claims –preliminary injunction (civil proceedings) within 10working days from the date of the Customs seizure.It should be noted that the first 10 working days startto be counted from the date the rights holder isnotified in writing about the seizure.

The decision of the Main Customs Chamber ongranting protection in respect of trademarks,copyrights, patents etc. is disseminated to all 14territorial Customs divisions located all over Poland.Each territorial Customs chamber has an IP expert,also called a Customs IP coordinator. An IPcoordinator is a Customs officer specially trained tofocus on the protection of intellectual property. AllCustoms coordinators dealing with IP matters arehighly qualified professionals.

According to Council Regulation 1383/03, PolishCustoms Authorities are also entitled to seize goodsthat have not been granted Customs protection(seizures ex officio). Such seizures are made onlyfor 3 working days in order to create a possibility forthe IP owner to file a request for Customs protection.Otherwise the goods are released by the Customsoffice.

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Through the agency of the Main Customs Chamberin Warsaw, the owners of Community trademarksand designs may also apply for Customs protectionin the entire territory of the European Union.

In such cases, the request, which is filed with theMain Customs Chamber in Warsaw on a special form(it is an appendix to the Council Regulation No 1891/2004) in addition to identical documents for nationalprotection, must be supplied with documentscontaining information about persons or institutionsin the respective EU member states who are able tohelp Customs authorities distinguish between theoriginal goods and the counterfeit ones.

The request, following a decision by the MainCustoms Chamber in Warsaw, is then disseminatedto all Customs authorities in all the EU memberstates.

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PORTUGAL

Introduction

In Portugal, the most effective way for rights holders to prevent infringement of their rights is to have aCustoms notice filed with the Customs Office addressed to the Customs and Special Consumer TaxesDirector-General (Director-General das Alfândegas e dos Impostos Especiais sobre o Consumo, Direcçãodos Serviços de Regulação Aduaneira), and whenever goods are seized to file a criminal complaint and,eventually, a civil claim within such proceedings.

Where goods are not imported, they are generally seized in raids executed by the criminal police (IGAE)and the general proceedings described overleaf applicable.

The most relevant disadvantage in pursuing remedies in court is the fact that litigation is relatively slowmoving in Portugal, and for that reason is usually only used for particularly large or important matters. Thedelay is due to a backlog of proceedings and partly due to the fact that the system is adversarial in nature,with each side being entitled to call its own witnesses and to cross-examine witnesses called by the otherside. Litigation is also conducted on a ‘cards on the table basis’, with the parties required to disclose awide range of documents early in the case.

Also, in order for a criminal prosecution to take place, and to try to ensure success, the rights holder willneed to provide assistance and file a formal complaint and assist the District Attorney in order to prove thecase against the infringer.

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Civil Procedures and RemediesIn case of violation of intellectual property rights inrespect of trademarks, copyright, patents anddesign rights, the main pre-trial remedies availablein Portugal are:

An interim injunction interim injunction interim injunction interim injunction interim injunction (an order that the allegedinfringer must not engage in certain conduct) maybe granted, under article 339 of the IndustrialProperty Code, at the Court’s discretion if it isconvinced that the rights holder would suffersubstantial and irreparable loss if the injunction wasnot granted until the end of a full trial. It is not veryeasy to convince a Court of this. If the rights holderis granted an interim injunction, the Court mayrequire an undertaking to pay for any loss sufferedby the alleged infringer as a result of the injunctionif the injunction is later overturned at trial.

A searsearsearsearsearch and seizurch and seizurch and seizurch and seizurch and seizure ore ore ore ore order der der der der may be granted, underarticle 340 of the Industrial Property Code. This mayallow entering the premises of the alleged infringerto search for documents and articles to help provethe case. This type of order may be obtained withoutgiving notice to the alleged infringer. However, suchprocedure is not applicable to patents.

Cases of intellectual property infringement arejudged in commercial courts. The rights holder hasthree years to commence civil proceedings andclaim an indemnity for the damages caused fromthe date he has knowledge of the violation of hisrights.

Courts in Portugal have powers to grant the followingremedies: injunctions, delivery up and/or destructionof infringing items, a declaration that the intellectualproperty right is valid and has been infringed, anddamages suffered by the rights holder taking intoaccount the profits made by the infringer.

In terms of trial remedies, civil litigation is relativelyslow moving in Portugal and for that reason is usuallyonly used for particularly large or important matters.Whereas an interim injunction and a search andseizure order may be obtained in a relativelyreasonable period of time, a civil lawsuit may takeseveral years.

Official court fees are exclusively dependant on theamount claimed (the minimum court fee being Euro89, which corresponds to a claim of up to Euro 500),to which court expenses are added.

Lawyer’s fees are difficult to predict and dependmainly on the number of sessions of trial and thelocation of the trial.

All remedies apply equally to both domestic andforeign rights holders.

In a civil proceedings trial, according to article 519of the civil procedure code, both parties as well asthe witnesses are obliged to answer all questionsthat are asked truthfully and to submit themselvesto any inspection ordered by the court in order tofind the truth of the facts necessary for a decisionregarding the dispute.

However, no one is obliged to answer with the truthif it relates to a fact that constitutes a crime.Moreover, anyone may allege that he has no recordsor memory of the exact identification of the peopleinvolved and may not be forced to do so.

If one does not cooperate with the court, he may besentenced to a fine or, ultimately, sentenced toimprisonment for the crime of disobedience. If theperson that refuses to cooperate is one of the parties,such refusal will be taken into account in terms ofevidence. Refusal is however possible if it relates tothe moral or physical integrity of persons and familyor private life privacy, as well as to professionalsecrecy and privacy in telecommunications andmailing.

Violation of intellectual property rights in respect oftrademarks, copyright, patents and design rights isconsidered as a semi-public crime, i.e., it dependson the filing of a formal criminal complaint at theCourt by the rights holder.

Cases of intellectual property infringement arejudged in general criminal courts. The rights holderhas six months from the date he has knowledge ofthe facts to file a formal criminal complaint, whichwill lead to a criminal procedure prosecuted by theDistrict Attorney, with or without the assistance ofthe rights holder.

If a rights holder does not file a formal criminalcomplaint and decides only to initiate civilproceedings, this is considered a forfeiture of theright to file criminal complaint against the infringer.



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If the rights holder decides to file a formal criminalcomplaint, the indemnity petition claiming anindemnity for the damages caused must be madewithin the penal proceedings.

Once a criminal or civil action is filed before a court,the goods are in the custody of the Court and onlythe Court can decide what to do with them and wherethey are stored. Nevertheless, article 342 of thePortuguese Industrial Property Code states thatgoods that are confirmed as counterfeits are alwaysseized and according to article 330 of same Codethey must be destroyed.

If the rights holder is successful in criminal and/orcivil proceedings and the Court decides that thegoods are counterfeit they will order the destructionof those goods (or donate them to charitableinstitutions if the rights holder does not object). Ifthe rights holder is not successful in criminal and/orcivil proceedings Customs will release the goods

Besides Customs Offices, the entities that inspectcriminal cases in Portugal are the General Inspectionof Economic Activities (IGAE – Inspecção Geral dasActividades Económicas) in respect of trademarks,patents and design rights, and the GeneralInspection of Cultural Activities (IGAC – InspecçãoGeral das Actividades Económicas) in respect ofcopyright.

Official court fees are Euro 178 to intervene in thecriminal proceedings.

Lawyer’s fees are difficult to predict and dependmainly on the number of sessions of trial and thelocation of the trial.


The penalties stipulated in the law for offencesrelating to intellectual property rights are:

Trademarks – Up to 3 years of imprisonment or a360 day fine which can be converted into a monetaryfine

Copyright - Up to 3 years imprisonment or a 150 to250 day fine which can be converted into a monetaryfine. Negligence is punishable with a 50 to 150 dayfine which can be converted into a monetary finePatents and design right infringement - Up to 3 years

of imprisonment or a 360 day fine which can beconverted into a monetary fine

In accordance with article 82º-A of the criminalprocedure code, the court may order the guilty partyto pay compensation for the damages suffered tothe rights holder in case no civil claim is made withinthe criminal proceedings, although this is not likelyto occur since the law only stipulates this possibilityfor cases where special protection of the victim isnecessary.

The defendant is only obliged to answer with thetruth to facts concerning his identification and pastcriminal records. In what concerns the facts relatingto the crime he is not obliged to answer. It may,therefore, be very difficult to prove that the defendantis lying, unless substantial evidence is available.

When Customs detect goods which it suspectsinfringe an IP right and these are covered by a validCustoms application, the procedure is as follows:

Customs will detain the goods and notify both theimporter and the person(s) listed in the Customsapplication.

Customs will inform the importer and the person(s)listed in the Customs Notice about the actual orestimated quantity and the actual or supposednature of the detained goods. Customs willcommunicate to the rights holder, upon request andif known, the names and addresses of theconsignee, the consignor, the importer of the goodsand the origin and provenance of suspectedinfringing goods.

The rights holder and any persons involved in theimport or export of the goods will be given anopportunity to inspect the goods.

In practice, although not always possible, Customswill generally agree to send a sample or digitalphotograph of the goods so that the rights holder ora product expert can examine them.

If the rights holder determines that the goods infringehis IP rights and wants Customs to seize them, therights holder (or his representative) must provide awritten expertise report to Customs stating that this

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is the case and giving reasons why the goodsinfringe the IP rights within 10 working days (or threeworking days in the case of perishable goods) as ofthe date of Customs detention of the goods.Customs will usually send the rights holder astandard declaration form to fill in and sign.

The rights holder also has to initiate criminalproceedings by filing a formal complaint with theDistrict Attorney of the competent Court, in the same10 working days term as the Customs detention ofthe goods, and give knowledge of this to Customs(in practice a simple statement of intention toproceed with criminal charges within the followingsix months has been sufficient). In the case ofcopyright and rights in performances, the DistrictAttorney will commence criminal proceedings on hisown and no statement or filing is needed.

An extension of a further 10 working days can beobtained provided the rights holder is able to giveappropriate reasons for the delay. Whether thereasons are acceptable in any particular case willdepend on the circumstances and the Customsofficer involved. Customs will not consider that anextension of time to allow the rights holder to extracta royalty payment from the importer is an acceptablereason.

If the rights holder does not file a formal criminalcomplaint and decides only to initiate civilproceedings, this is considered to be a forfeiture ofthe right to present criminal charges against theinfringer.

If the rights holder decides to file a formal criminalcomplaint, the indemnity petition claiming anindemnity for the damages caused must be madewithin the penal proceedings (in the case ofcopyright and rights in performances the indemnitypetition is also only possible within the criminalproceedings).

In the alternative, where Customs has detained orsuspended the release of goods which aresuspected of infringing a trademark, copyright orrights in performances, the rights holder may informCustoms in writing within 10 working days (or threeworking days in the case of perishable goods) ofreceiving notification of detention of the goods thatthe goods infringe a trademark, copyright or rightsin performances and that the rights holder wishes

to have them destroyed. In order to have the goodsdestroyed, rights holders’ also need to provideCustoms with the written permission of the declarantor importer of the goods (which may in practice bedifficult to obtain). An extension of a further 10working days can be obtained provided the rightsholder is able to give appropriate reasons for thedelay. The destruction of the goods will be carriedout at the rights holder’s expense and Customs willtake samples of the goods in case they are neededfor later proceedings.

If the rights holder does not provide a written opinionto Customs confirming that the goods infringe IPrights, followed by either a formal criminal complaint(or statement of intention, subject to the limitationset out above) or civil proceedings within 10 workingdays, or 20 days if the rights holder has been givenan extension (or three working days, non extendable,in the case of perishable goods), Customs willrelease the goods to the importer.

If the rights holder has filed formal criminal chargesor initiated civil proceedings and given notice of thisto Customs, from this moment on, the goods are inthe custody of the Court, and only the Court candecide what to do with them and where they arestored.

In the case of patents and rights in a design,Customs may release the goods, at the importers’request, through the rendering of a guarantee whichmust be of an amount sufficient to cover the rightsof the rights holder as long as: Customs has beeninformed that a legal procedure to determine if thegoods are infringed was initiated; the court has notordered any interim measures; all Customsformalities have been complied with.

If the rights holder commences civil proceedingshe must provide Customs with evidence that thishas been done by giving Customs a copy of theclaim form and evidence that this has been servedon the alleged infringer. Once it has received thisevidence, Customs will deal with the goods inaccordance with any orders made by the Court.

Only after a final decision by the Court can Customsdecide what to do with the goods that have beenseized.

The burden of proof in both civil and criminal

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proceedings is on the rights holder alone (civilproceedings) or assisting the District Attorney(criminal proceedings). This means that the rightsholder has to prove that the goods infringe his IPrights.

The rights holder is required to run or support thecase, e.g., by providing witness statementsexplaining how he can tell that the goods infringehis IP rights and attending condemnation hearingsto provide oral evidence.

If the rights holder is successful in penal and/or civilproceedings and the Court decides that the goodsare counterfeit and/or pirated goods, this will havethe following consequences: to prohibit thecirculation of those goods, their export, re-export,placement under a suspension regime, or placementin a free-trade zone and to admit as the only possibledestination for those goods the abandonment ordestruction of those goods (or donate them tocharitable institutions).

If a rights holder obtains a favourable settlementfrom the importer he can discontinue the penal orcivil proceedings and destroy the goods.

If the rights holder does not commence civilproceedings, or does not provide Customs withevidence that he has done so within 10 days (or 20days if given an extension) Customs will release thegoods to the importer.

If the rights holder is not successful in penal and/orcivil proceedings Customs will release the goods tothe importer. The rights holder is likely to be liablefor the importer’s legal costs and may also be liablefor any loss suffered by the importer as a result ofhis action and the detention of the goods.

LimitationsLimitationsLimitationsLimitationsLimitations

However, there are some limitations to Customsactions:

1. Customs will not stop goods that have enteredinto and cleared Customs anywhere else within theEuropean Community.

2. Customs cannot stop non-EEA parallel goods,even if they have detailed information about them.

3. Customs cannot stop parallel goods and goodswhich are genuine but unlicensed i.e., factoryoverruns.

4. Customs cannot share information aboutimporters and other infringers with otherenforcement bodies.

5. Customs do not have powers in respect of all ofthe IP rights that exist in Portugal. For example, theycannot assist in the protection of unregisteredtrademark rights or trade secrets.

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ROMANIA

Introduction

In the Romanian legal system cases involving intellectual property rights, counterfeits andunfair competition are regulated only as infractions (criminal offences). Such protection isprovided by a legal system consisting of the Penal Code and the special laws regulating theserights.

Thus, in accordance with Romanian law, a majority of intellectual property rights infringementcases represent infractions, are defined as such and punished accordingly by the provisionsof the laws referred to above. However, in spite of this the number of cases forwarded by theprosecution department to the criminal courts is still very small for two main reasons: thedifficulty in providing pertinent evidence useful to the case, and the difficulty in establishingthe guilt of the parties involved, who are most often the ones who sell the incriminated productsand who are at the visible end of networks originating from foreign producers.

Yet, it is obvious that both counterfeit and unfair competition may also involve exclusively civil,penal or contractual liability: with the victim of counterfeiting or of unfair competition having thepossibility to lay claims either by a penal or civil action when the infringement has a criminalnature, or by a civil action when the infringement is in a criminal act.

Since the trademark is a distinct, visible sign, actions in trademark counterfeit cases seem tobe easier than in other intellectual property rights cases. However, appearances may bemisleading, as assessment of the prejudice caused by the counterfeit is difficult..The possibility of investigation with professionalism and efficient results is also still limited inRomania. Nevertheless, the existence within Romania of a specific legal frame in the field ofintellectual property that is well harmonized with European standards represents an optimisticdetail for future developments.


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Civil Procedures and RemediesPrPrPrPrPre-trial re-trial re-trial re-trial re-trial relief – interim injunctionelief – interim injunctionelief – interim injunctionelief – interim injunctionelief – interim injunction

In accordance with the provisions of the special lawsthat regulate intellectual property rights, IP rightsholders may request the court to order certainprotective measures when it is deemed there is arisk that third parties might infringe such rights, ifthe infringement is threatening to cause anirretrievable prejudice, or if there is a risk of theevidence being destroyed.

Protective measures refer especially to cessation ofthe acts of infringement on the intellectual propertyrights, as well as to conservation of the evidence, inorder to prove the origin of the counterfeitedproducts.

To order such protective measures, the court mayrequest the plaintiff to form a sufficient guarantee toprevent the infringement.

The order of protective measures is governed bythe provisions of articles 581 and 582 of theRomanian Civil Procedure Code, regarding thepresidential ordinance procedure, providing that “thecourt may order temporary measures in urgentcases ...”.

For a presidential ordinance to be admissible, theconditions set forth in article 581 of the RomaniaCivil Procedure Code must be fulfilled, namely:urgency, temporary character of the measure soughtin this way and the condition that the measure mustnot settle the merits of the case.

The court competent to settle an application for apresidential ordinance is the same court that iscompetent to settle the merits of a case.


New regulations regarding competence in thesettlement of intellectual property cases that havebeen in force since 2004 have establishedspecialised courts to settle these matters.

To settle counterfeit actions, exclusive territorialcompetence has been instituted for the BucharestMunicipal Court of Law, as the court of first instance.

In the Romanian system of acquiring intellectualproperty rights based on registration priority,

although the intellectual property rights arerecognized retroactively from the date of theapplication, they are opposable only from the dateof publication of the trademark, geographicindication or patent.

Any acts prior to the publication of the applicationfor registration (of a trademark, geographicindication, design and industrial model or of aninvention patent) cannot be deemed asinfringements.

When determining whether to introduce an actionfor trademark counterfeiting and trying to judge itsadmissibility it is important to note that aninfringement of the holder’s rights or the possibilityof public confusion, even if this does not materialise,is usually sufficient grounds.

A trademark counterfeiting action may be filed onlyafter publication of the trademark by the applicant,or after the trademark has been entered into theNational Register of Trade Marks by the holder ofthe mark.

An action for trademark counterfeiting may also beintroduced by the assignee of a trademark, evenwhen the assignment is partial, as well as by theholder of an exclusive license. However, the holderof an exclusive license may introduce a civil actiononly after having notified the holder of the trademarkand if the holder does not take action within the termrequested by the licensee.

When the action is introduced by the trademarkholder, any of the licensees may intervene in thesuit, claiming remedy for the prejudice caused bycounterfeit of the trademark.

Neither the licensee, nor the assignee can introducean action for counterfeiting unless the license orassignment, as the case may be, has been enteredinto the National Register of Trade Marks.

The purpose of an action for trademarkcounterfeiting may be not only the remedy for thematerial prejudice sustained by the holder of thetrademark, but also an obligation on the infringersto cease their acts of assertion of the trademark (e.g.by publication of the injunction).

Moreover, by the injunction rendered in an action

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for counterfeiting, the court may order the supposedcounterfeiters to stop their import, export, storage,distribution, sale or any other activities in relation tothe marketing of the counterfeited products.

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The holder of the infringed rights may ask thecompetent court of law to order confiscation ordestruction, as the case may be, of the counterfeitedproducts, as well as of the materials and equipmentdirectly used in the counterfeit.


As for the prejudice, the relevant laws (regardingdesigns and industrial models, trademarks,copyrights, patents) are limited to the rule accordingto which ‘for the prejudice caused by acts ofcounterfeit, the persons found guilty may be orderedto pay damages in accordance with the ordinarylaw’.

In cases of copyright infringement, the owner mayrequest the court to order, for coverage of theprejudice, the return of the amounts collected onaccount of the wrongful act.

For an action for trademark counterfeiting to beintroduced the holder of the trademark or of theexclusive right to use it need not necessarily havesustained damage, nor is it necessary that theprejudice be actual. The right in a trademark is adepriving right and any infringement of it must bepunished.

If the trademark holder actually sustained a materialprejudice, it may be remedied. It is worth mentioningthat in establishing the amount of the prejudice, onlythe ordinary customers and not the potentialcustomers are taken into account.

Further, if the action for counterfeiting was introducedby the holder, any of the licensees may intervene inthe suit and claim remedies for the prejudice causedby counterfeit of the trademark.

For acts of counterfeiting subsequent to thepublication of the trademark or patent, the title forpayment of the damages is enforceable only afterthe date of registration of the trademark or after thedate of delivery of the patent, respectively.

EvidenceEvidenceEvidenceEvidenceEvidence

The court may request that the plaintiff provide anypiece evidence available in order to prove that he/she/it is the holder of the right infringed or whoseinfringement is inevitable.

In the event that the evidence in support of theplaintiff’s claims is under the respondent’s control,the court can order that such evidence be producedby the respondent, subject to the observance of theconfidentiality of such information, in accordancewith the law.

Particularly in cases where the rights of a procedurepatent holder have been infringed, evidence of thefact that the procedure used in the manufacture ofan identical product is different from the patentedproduct shall be provided by the person presumedto have had infringed the patent rights.

When contrary evidence is produced by the patentholder, the court takes into account the legitimateinterests related to the manufacturing secrets andthe commercial secrets of the person presumed tohave had infringed the patent rights.


The court may order the person who infringed therights appertaining to a registration certificate toimmediately provide information about the sourceand circuits of distribution of the counterfeitedgoods, as well as information about the identity ofthe manufacturer or trader, about the quantity ofcounterfeited goods received or ordered, providedthat such measure is not excessive as related to thegravity of the prejudice caused to the holder of theinfringed rights.



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These are the provisions of the laws in force inconnection with infractions against intellectualproperty rights:


This domain is ruled by Law No. 8/1996 regardingCopyright and related rights.

Infringement of the rights recognised andguaranteed by this law shall result in legalresponsibility under the civil or penal law. Theprocedural provisions are the ones stipulated herein,in addition to the ordinary law.

Holders of infringed rights may request the courtsof law or other competent bodies, as the case maybe, for recognition of their rights, ascertainment oftheir infringement and remedy of the prejudice inaccordance with the laws.

In case of infringement of the rights recognised andprotected by this law, the holders of such rights mayrequest the courts of law or other competent bodiesto order forthwith certain measures to preventimminent damages or to remedy them, asapplicable.

Further, holders of the infringed rights may requestthe court of law to order enforcement of any of thefollowing measures:

(a) remittal, for coverage of the prejudice sustained,of the monies collected as a result of the illicit act or,if such prejudice cannot be remedied in this manner,remittal of the goods resulting from the illicit act, forthe purpose of their capitalisation, up to the fullcoverage of the prejudice caused

(b) destruction of the equipment and means toinfringe the property, whose sole or main purposewas that of producing the illicit act

(c) recall from the commercial circuit, by seizure ordestruction, of the copies made illegally

(d) communication of the court order in the media,at the infringer’s expense

The provisions of paragraph (c) are not applicableto architectural constructions, unless destruction isrequired by the circumstances of the specific case.

It constitutes a criminal offence that is punished byone month to two years of imprisonment, or a finefrom 200,000 to 3,000,000 ROL, if such act doesnot constitute a more serious criminal offence, theact of a person who, without authorisation or consent,as applicable, of the holder of the rights recognisedby this law:

• brings a work to public knowledge: performs onstage, recites, enacts or presents directly, in anypublic manner, a work;

• allows public access to the computer databasescontaining or constituting protected works

• translates, publishes in collections, adapts ortransforms a work, in order to obtain a derivativework

• records on a device the performance of an artistor a performer

• broadcasts or transmits by radio or television aperformance, recorded or not, or retransmits it bywireless or wired means, by cable, satellite or anyother similar method or any other communicationmeans, to the public

• presents in a public place the sound records of aproducer

• broadcasts or transmits by radio or television thesound records of a producer or retransmits them bywireless or wired means, by cable, satellite or anyother similar method or any other communicationmeans, to the public

• records radio or television programmes orretransmits them by wireless or wired means, bycable, satellite or any other similar method or anyother communication means, to the public

• presents radio or television programmes in a publicplace against entrance fee

It constitutes a criminal offence that is punished bythree months to five years of imprisonment, or a finefrom 500,000 to 10,000,000 ROL, the act of a personwho wrongfully appropriates the quality of author ofa work or the act of a person who brings to publicknowledge a work under another name than the onedecided by the author, if such act does not constitutea more serious criminal offence.


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It constitutes a criminal offence that is punished bythree months to three years of imprisonment, or afine from 700,000 to 7,000,000 ROL, if such act doesnot constitute a more serious criminal offence, theact of a person who, without having the consent ofthe holder of the rights recognised by this law:

• reproduces, fully or partially, a work

• broadcasts a work

• imports, for the purpose of marketing in Romania,copies of a work

• exhibits to the public a work of fine arts, appliedarts, photographic art or architecture

• projects to the public a cinematographic work orother audiovisual work

• broadcasts a work by means of wirelesspropagation of signals, sounds or images, satellitesincluded

• transmits a work by means of wireless propagationof signals, sounds or images, satellites included

• re-transmits a work by means of wirelesspropagation of signals, sounds or images, satellitesincluded, or re-transmits a work by wire, cable, opticfibre or any other similar procedure

• broadcasts or transmits, in a public place, a workbroadcast by radio or television

• reproduces the performance of an artist or aperformer

• broadcasts the performance of an artist or aperformer

• reproduces the sound records of a producer

• broadcasts the sound records of a producer, bymeans of rental included

• imports, for the purpose of marketing in Romania,the sound records of a producer

• reproduces radio or television programmesrecorded on any kind of device

• broadcasts, by rental included, radio or televisionprogrammes recorded on any kind of device

• imports, for the purpose of marketing in Romania,radio or television programmes recorded on any kindof device

It constitutes a criminal offence that is punished bythree months to two years of imprisonment, or a finefrom 500,000 to 5,000,000 ROL, if such act doesnot constitute a more serious criminal offence, theact of a person who:

• makes available to the public, by sale or by anyother means of transmission for valuableconsideration or free of charge, technical means forunauthorized erasure or suppression of thetechnical devices that protect computer software

• refuses to declare to the competent authorities thesource of copies of a work or the sources of thedevices carrying the records of a performance or ofa radio or television programme protected underthis law, in the possession of such person for thepurpose of broadcasting

A criminal action in cases of the offences referredto above starts with a prior complaint made by theperson prejudiced within the meaning of this law.


This domain is ruled by Law No. 64/1991 regardingpatents.

Unlawful assumption, in any way, of the status ofinventor shall constitute an offense and shall bepunished with imprisonment for six months to twoyears or with a fine of 50,000,000 to 100,000,000Lei.

The unauthorized manufacture, use or putting intocirculation of, the subject matter of a patent, or anyother infringement of the rights conferred under thefirst paragraph of Article 33(*) of the Patent Law,provided that such infringement occurred after thedate of publication of the patent application, shallconstitute the offense of infringement under this Lawand shall be punished with imprisonment for threemonths to two years or with a fine of 100,000,000 to300,000,000 Lei.

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Criminal proceedings are initiated by the preliminaryfiling of a complaint by the aggrieved party.

The patent owner shall be entitled, for prejudicecaused to him, to damages as provided for in civillaw, and he may request the competent law court order the infringing products be confiscated ordestroyed, as the case may be. These provisionsshall also apply to the materials and equipment thatdirectly served to the perpetration of thecounterfeiting offense.

Any infringement by third parties of rights underArticle 34(**) of the Patent Law shall make theinfringers liable for damages under civil law, andthe entitlement to the payment of damages shall beenforceable after the grant of the patent.

(*) It is prohibited to perform the following actswithout the owner’s consent:

a)a)a)a)a) manufacturing, using, offering for sale, selling orimporting for the purposes of using, offering for saleor selling, where the subject-matter of the patent isa product.

b)b)b)b)b) using the process and using, offering for sale,selling or importing for those purposes of theproduct directly obtained by the patented process,where the subject-matter of the patent is a process.

(**) From the date of its publication a patentapplication shall provisionally confer protection tothe applicant according to the Patent Law, exceptingthe cases where the patent application has beenrefused, withdrawn or declared as deemed to bewithdrawn.

Where, before the date of publication of the patentapplication, the acts referred to in the first paragraphof Article 58(***) of the Patent Law continue to bedone after summoning, the law court may, uponrequest, order such acts be discontinued until thedecision of the ROPTO becomes final andirrevocable. Such measures may be ordered subjectto payment by the applicant of a security fixed bythe law court.

(***) The unauthorized manufacture, use or puttinginto circulation of the subject matter of a patent, orany other infringement of the rights conferred bythe law provided that such infringement occurred

after the date of publication of the patent application,shall constitute the offense of infringement underthis Law and shall be punished with imprisonmentfor three months to two years or with a fine of100,000,000 to 300,000,000 Lei.

In the case of infringement of the rights of a processpatent owner, provided for in the second paragraphunder b) of Article 33, the burden of proof inestablishing the fact that the process used to obtainan identical product is different from the patentedprocess shall be incumbent upon to the allegedinfringer of said right.

In applying the provisions of paragraph 1, anyidentical product when produced without theconsent of the patent owner shall, in the absenceof proof to the contrary, be deemed to have beenobtained by the patented process in at least one ofthe following circumstances:

a)a)a)a)a) if the product obtained by the patented processis new

b)b)b)b)b) if there is a substantial likelihood that the identicalproduct was made by the process and the owner ofthe patent has been unable through reasonableefforts to determine the process actually used

Upon presentation of proof to the contrary by thepatent owner, the legitimate interests related to themanufacturing and business secrets of the allegedinfringer shall be taken into account.

Disclosure, by the staff of the ROPTO and also bypersons doing work in connection with inventions,of the information contained in patent applicationsprior to the publication thereof shall constitute anoffence and shall be punished with imprisonmentfor three months to two years or with a fine of15,000,000 to 50,000,000 Lei.

The ROPTO shall be answerable to the inventor forprejudice caused as a result of the offense referredto in the first paragraph above.

Any litigation concerning the status of an inventoror patent owner, concerning other rights arising fromthe patent, including the inventor’s economic rightsunder assignment or licensing contracts, orconcerning failure to comply with the provisions ofthe Patent Law shall be within the jurisdiction of thelaw courts.


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The interested person shall communicate the courtdecision to ROPTO within 30 days from the date onwhich the decision became final and irrevocable, inorder to be entered in the National Register of FiledPatent Applications or in the National Register ofPatents and published in the Official Bulletin ofIndustrial Property. In the absence of publication inthe Official Bulletin of Industrial Property, the decisionshall not be opposable to third parties.

The patent owner may request the law court:

a)a)a)a)a) to order withholding measures when there existsthe risk of infringing on the rights arising from apatent and if such infringement risks causingirreparable prejudice or if there exists the risk ofdestroying the probative elements

b)b)b)b)b) to order, after the grant of Customs clearance,certain measures for stopping the acts ofinfringement on the rights arising from a patent,performed by a third party on the occasion of puttingcertain imported goods into the commercialcircuit, causing thus damages to such rights

The court may decide that the infringer of the rightsarising from the patent should inform the patentowner of the identity of third parties who took part inproducing and distributing the goods concerned,and of the distribution circuits as well.

The insuring measures may be ordered subject topayment by the plaintiff of a security established bythe law court.

To order the withholding measures the provisions ofthe civil law shall be applicable.

The court may demand that the plaintiff supply anyprobative elements available to him in order to provehimself the owner of the infringed patent or of apatent the infringement of which is unavoidable.


This domain is ruled by Law No. 84/1998 regardingtrademarks.

The main provisions of this law regarding criminalaspects are:

ArArArArArt. 83t. 83t. 83t. 83t. 83. The following shall constitute an infringement

liable to imprisonment of between three months andthree years or a fine of 15 million Lei:

(a) (a) (a) (a) (a) infringement, imitation or unlawful use of atrademark with the intent of misleading the publicas to the quality of the goods or services to whichthe trademark applies

(b) (b) (b) (b) (b) the unlawful marketing of a product under atrademark that is identical with or similar to atrademark registered for identical or similar products,causing prejudice to the owner of the registeredtrademark

(c) (c) (c) (c) (c) marketing a product under a geographicalindication suggesting that the product concernedoriginates from a geographical region other than itstrue region of origin with the intent of misleading thepublic as to the geographical origin of the product

The performance of any act referred to in the secondparagraph of Article 35(*) by a person not havingthe consent of the owner of the registered trademarkshall constitute an infringement.

None of the acts referred to in the second paragraphof Article 35 shall constitute an infringement if carriedout prior to the date of publication of the mark.

The owner of a mark may institute infringementproceedings only after the date on which the markwas entered in the National Trademark Register.Proceedings will be instituted on a prior complaintby the injured party.

(*) The registration of a mark shall confer on its owneran exclusive right in that mark.

The owner of the mark may request the competentjudicial body to prohibit any person not having hisconsent from using in the course of trade:

(a) (a) (a) (a) (a) any sign which is identical with the mark inrelation to goods or services which are identical withthose for which the mark is registered

(b) (b) (b) (b) (b) any sign where, because of its identity with orsimilarity to the mark or the identity or similarity ofthe goods or services on which the sign is affixedwith the goods or services for which the mark isregistered, there exists a likelihood of confusion onthe part of the public, including the likelihood ofassociation between the sign and the mark

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(c)(c)(c)(c)(c) any sign which is identical with or similar to themark in relation to goods or services which are notsimilar to those for which the mark is registered,where the latter has a reputation in Romania andwhere use of that sign without due cause could takeunfair advantage of the distinctive character or therepute of the mark or where such use would causeprejudice to the owner of the mark

The owner of the mark may request that any otherperson be prohibited, under the second paragraph,from performing, in particular, the following acts:

(a)(a)(a)(a)(a) affixing the sign to goods or to their packaging(b)(b)(b)(b)(b) offering the goods, putting them on the marketor stocking them for such purposes under that sign,or offering or supplying services there under(c)(c)(c)(c)(c) importing or exporting the goods under that sign(d)(d)(d)(d)(d) using the sign on business papers and inadvertising

The owner of a trademark or, as appropriate, theMinistry of Agriculture and Food, may apply to thecompetent judicial body to order confiscation or, asappropriate, destruction of products on which thetrademarks or geographical indications referred toin Article 83 have been affixed.

The provisions of the preceding paragraph shallapply to the material and equipment used directlyto carry out the infringements referred to in Article83.

The persons found guilty may be required to paydamages, in accordance with the general rules oflaw, for the prejudice caused by the performanceof the acts referred to in Article 83.

Any use of the trademarks or the geographicalindications contrary to honest practice in industrialor commercial activities, with an attempt to misleadconsumers, shall constitute an act of unfaircompetition and shall be liable to imprisonment ofbetween one month and two years or a fine of 15million Lei.

Criminal proceedings shall be instituted on a priorcomplaint by the injured party.

The owner of the trademark or, where appropriate,the Ministry of Agriculture and Food may requestthe judicial body to order withholding measures if

there is the likelihood of infringement by otherpersons of rights in the trademark or protectedgeographical indication and if such infringement isliable to cause an irreparable prejudice or lead tothe destruction of evidence.

Such withholding measures may be ordered for thepurpose of putting a stop to the acts that infringethe rights referred to in the preceding paragraphand to safeguarding evidence of the origin of thegoods or services on which a trademark or aprotected geographical indication is unlawfullyaffixed.

The general rules of law on seizure shall apply toacts that infringe rights in a trademark or a protectedgeographical indication.

Where the court orders withholding measures, it mayrequire the plaintiff to pay security of an amount thatit shall determine. The court may require the plaintiffto furnish any evidence at his disposal to prove thathe is the holder of the right that has been infringedor of which infringement is unavoidable.

Where evidence submitted in support of the plaintiff’sclaims is in the possession of the defendant, thecourt may order the defendant to furnish theevidence subject to a guarantee of confidentialityof information in accordance with the law.

The court may order the plaintiff to refund to thedefendant any damages obtained as a result of anabusive institution of proceedings in relation to atrademark or protected geographical indication.

The owner of a trademark, or where appropriate,the Ministry of Agriculture and Food, may requirethe infringer to provide recent information on theorigin and distribution channels of merchandise towhich the trademarks are unlawfully affixed andinformation on the identity of the manufacturer ormerchant and on the quantity of merchandisemanufactured, delivered, received or ordered.

In cases referred to in Article 83, the Customsauthorities may order, ex officio or at the request ofthe rights holder, the suspension of customsclearance on import or export of goods on whichtrademarks or geographical indications are affixed.

The General Directorate of Customs shall have


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authority to enforce the rights to trademarks andprotected geographical indications at the borders,in accordance with the law.

Industrial designIndustrial designIndustrial designIndustrial designIndustrial design

This domain is ruled by Law No. 129/1992 regardingindustrial design.

Unlawful assumption, in any way, of the status ofauthor of an industrial design shall constitute anoffence and shall be punished by imprisonment ofbetween six months and two years or by a fine of 15million to 30 million lei.

In cases where a court decision established that aperson other than the one mentioned in theapplication for registration or in the certificate ofregistration is entitled to be granted the certificateof registration, ROPTO shall issue the certificate ofregistration to the entitled person and shall publishthe change of owner.

The unlawful reproduction of an industrial designfor the purpose of manufacturing products of anidentical appearance, the manufacture, offering forsale, selling, importing, using or the storing of suchproducts for the purpose of putting into circulationor using them, without having the consent of theowner of the certificate of registration of the industrialdesign, during the period of validity thereof, shallconstitute the offence of counterfeiting the industrialdesign and shall be punishable by imprisonmentbetween six months and two years or by a fine of15 million to 30 million lei. Criminal proceedings shall be initiated by thepreliminary filing of a complaint by the prejudicedparty or ex officio.

For the prejudices caused, the owner is entitled todamages according to Common Law, and mayapply to the competent law court to order the seizure,or, as the case may be, the destruction of thecounterfeited products. These provisions shall alsoapply to materials and equipment that was directlyused for committing the offence of counterfeiting.The owner of a registered industrial design may askthe court:

a)a)a)a)a) to order insurance measures, when there is a riskof infringement of the rights in a registered industrial

design and if this infringement is likely to cause anirreparable prejudice or if there is a risk of destructionof evidence

b)b)b)b)b) to order, immediately after the customs clearanceprocedures, measures for ceasing the infringementof the rights in an industrial design committed by athird party when putting onto the market importedgoods that imply a prejudice to these rights.

For ordering insurance measures, the provisions ofthe Common Law are applicable. In taking theinsurance measures ordered by the law court, aguarantee sufficient to prevent the abuses may berequested by the plaintiff.

The court shall ask the plaintiff to provide anypossible evidence in order to prove his status asowner of the infringed right or of a right whoseinfringement is unavoidable.

If the evidence to support of the plaintiff’s claims isunder the control of the defendant, the court mayorder that the defendant produce the evidenceunder confidential conditions, in accordance withthe law.

The court may order that the infringer of the rightsconferred by the certificate of registration shouldprovide immediate information regarding the originand the distribution circuits of the counterfeitedgoods, as well as the identity of the manufacturer orof the merchant, on the condition that this measureshould not be exaggerated against the gravity ofthe prejudice caused to the owner’s right.

The Customs authorities may order, either ex officioor at the request of the owner of the registeredindustrial design, the suspension of the customsclearance procedures on the importation of thegoods in the cases referred above, until the courtdelivers its decision. Certificates of registration of industrial designs inforce represent intangible assets and may beregistered in the patrimony of the owner as a legalentity.

At the request of the court, ROPTO is obliged toforward the necessary acts, documents andinformation for judgment of the cause submitted toit.

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TTTTTopography of integrated ciropography of integrated ciropography of integrated ciropography of integrated ciropography of integrated circuitscuitscuitscuitscuits

This domain is ruled by Law No.16 /1995 on theProtection of Topography of Integrated Circuits.

Infringement of the proprietor’s rights by theexploitation of a registered topography without theproprietor’s authorization shall be deemed aninfringement or, where appropriate, a sale ofcounterfeit goods and is punished by imprisonmentfrom three months to three years or by a fine from500,000 to 1,000,000 lei. Prosecution shall beinitiated upon the complaint of the injured party.

The proprietor is entitled, for prejudice caused tohim, to damages as provided for in civil law, andthe counterfeit products may be confiscated asprovided for in criminal law.

Disputes concerning authorship or ownership or therights deriving from the registration of topographies- creators’ patrimonial rights included - or fromassignment or license contracts shall be settled bythe law courts.

Where the final and irrevocable decision of the courtstates that a person, other than the owner of acertificate for registration, is entitled to the protectionof the topography, the ROPTO will issue thecertificate of registration to the entitled person, shallwrite the change concerning the owner in theNational Register of Topographies and shall publishit in its official bulletin.

If the rights of a registered topography have ceasedto exist over a certain period of time as a result ofthe renunciation to the protection, of the forfeitureor of the cancellation of the registration, thecompensations and other patrimonial rights of theowner, corresponding to the above - mentionedperiod, shall be returned by him to the persons fromwhom he got them.


Practice shows that most counterfeited goods comefrom abroad and are imported into Romania. Forthis reason, Law 202 regarding certain measures toenforce observance of the intellectual property rightsin the clearing operations was enacted in 2000, and

amended in August 2002 by Ordinance No. 59.

Enacting this law enables the holders of intellectualproperty rights to request the General CustomsDepartment to check the authenticity of all goodsbearing certain intellectual property rights.


For actions to be taken by the Customs authorities,the holder of the intellectual property rights shallsubmit an application to the General CustomsDepartment specifying his/her capacity related tothe intellectual property right, requesting suspensionof clearance and withholding of the goodssuspected to infringe the protected rights.

To do this, the law requires the submission from theholder of the intellectual property rights or his/herrepresentative of an application for Customsintervention (annexed to the law) containing: theapplicant’s identification data, information regardingidentification of the authentic goods bearing theintellectual property rights, information regardingidentification of the suspected goods and proof thatthe applicant is the holder of the intellectual propertyrights.

Within 10 days of this application being registeredthe General Customs Department shall notify theapplicant in writing about approval of the applicationor about additional documents or informationrequired, if applicable.

If the application is accepted, it becomes effectivefrom the date the applicant submitted proof ofpayment to the General Customs Department’saccount of a fee in an amount in RON equivalent to100 Euro, at the exchange rate established inaccordance with the provisions of the Customs Codeof Romania.


Based on such applications, the Customs authoritiessuspend clearing of all products susceptible toinfringe any intellectual property rights. Suspensionof clearing is made by the issuing of a Decision bythe National Customs Authority, containing dataabout the quantity of goods whose clearing wassuspended, their origin, importer, exporter, rightssupposed to be infringed and place where the goods


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were withheld. Such a Decision shall be served tothe holder of the intellectual property rights who,within 10 days (for maintenance of the suspensionmeasure) shall produce proof of introduction of acourt action for counterfeit, as well as proof ofissuance of a letter by a bank confirming the worthof the goods suspended.

The bank guarantee represents a conservationmeasure for coverage of contingent prejudice - tobe established by the final court judgement -sustained by the importer, owner or recipient of thegoods, as the case may be, and for payment of theexpenses related to the goods not being cleared.

The term of 10 days is a short time even forRomanian applicants to respond, not to mention theforeigners who represent, at least in the field oftrademarks, the majority of applications and whohold notorious trademarks in Romania that are pre-eminently counterfeited.

Thus cooperation between the Customs authoritiesand the holders of intellectual property rightsbecomes extremely important right from receipt ofthe decision to suspend clearing until the action forcounterfeiting is introduced. A decision regarding acourt action for counterfeiting can be made only afterthe rights holder has seen the products andassessed whether they are or are not counterfeited.In the event that the holder of the intellectual propertyrights is a foreigner, examination of the product isimpossible without the help of the Customsauthorities.

During the past two years the practice of the NationalCustoms Authority has improved greatly. Along withthe decision to suspend clearing, the NationalCustoms Authority also provides digital photographsof the products withheld. Thus, the holder of theintellectual property rights can rapidly make adecision whether or not to take court action forcounterfeiting.

If the court dismisses a rights holder’s action by afinal and irrevocable judgement or does not takeinto account the complaint, the Customs authorityclears the goods. If the court admits by final andirrevocable judgement the action of the rights holder,the Customs authority, at the request of the holderof such rights, shall either destroy the goods, ordonate them to institutions of social protection, non-

profit humanitarian organizations, sports clubs orinstitutes of education. The organization taking overthe goods, for consumption or use, shall be boundnot to sell or alienate the goods.

As for the penalties, Law 202 provides that, in caseof admission of the action for counterfeit by the court,the National Customs Authority shall impose on thecounterfeiter a fine under the law of torts.

Of course, the holder of the infringed rights mayrequest damages for the prejudice sustained, eitherby an action for counterfeit, by a separateapplication, or by a separate action for damages.

On own initiative Customs actionsOn own initiative Customs actionsOn own initiative Customs actionsOn own initiative Customs actionsOn own initiative Customs actions

Based on the records kept by the Romanian Patentand Trade Mark Office and by other organizationsof collective management of proprietary and relatedrights sent to the Customs authorities, the GeneralCustoms Department has the ex officio initiative tosuspend clearing operations or to withhold goodssuspected of infringing an intellectual property right.

The General Customs Department immediatelynotifies in writing the holder of the intellectualproperty right and the party who submitted theCustoms declaration that clearing has beensuspended and the goods withheld, as well as aboutthe date and the Customs office where the goodsare to be found. To maintain the suspensionmeasure, the holder of the intellectual property rightshall submit, within 3 days from receipt of thenotification, an application of Customs intervention.The procedure then continues as described above.


Romanian laws do not contain express provisionsregarding prohibition of parallel imports. For thisreason, the Customs Authorities cannot take anymeasure against sales of such categories ofproducts. The General Customs Departmentimmediately notifies in writing the holder of theintellectual property right and the party whosubmitted the Customs declaration aboutsuspension of clearing and withholding of the goods,as well as about the date and the Customs officewhere the goods are to be found.

Customs Procedures

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SAUDI ARABIA

Introduction

Infringement of Intellectual Property in Saudi Arabia may include the following rights:

1. Trademarks2. Copyright3. Patents and Design Rights

This article looks at each in turn.

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Saudi Arabia

TRADEMARKS LATRADEMARKS LATRADEMARKS LATRADEMARKS LATRADEMARKS LAWWWWW

The Concerned Judicial Authority:[The Grievances Board]:The Grievances Board determines all civil andcriminal cases in addition to disputes pertaining toimplementation of the trademarks law and imposesthe penalties stipulated in regard to violation of itsrules.

Public Investigation and Prosecution:[The Criminal Case]:The Public Investigation and ProsecutionCommission represents the public right in thecriminal case in respect of the Public Right Lawviolations.

Civil RemediesCivil RemediesCivil RemediesCivil RemediesCivil Remedies

Any person incurring damages as a result of anyviolation stipulated in the Trademarks Law shall havethe right to claim an appropriate remedy for suchdamages from the perpetrator.

The defendant shall take the legal proceduresagainst the bad faith claimant (plaintiff) for remedythat may be entitled as a result of taking theprovisional procedures stipulated in the TrademarksLaw within ninety (90) days from the expiration dateset for therein if the plaintiff did not claim or from thedate of the final judgment in the attachment case inregard to the trademark.

In general, it is impermissible to pay the warranty tothe attacher prior to the final judgment in respect ofthe attachment case against the defendant or uponexpiration date specified for filing the case unlessthe judgment of the attachment case is incorporatingdetermination of the warranty issue.

PrPrPrPrProvisional Provisional Provisional Provisional Provisional Procedurocedurocedurocedurocedureseseseses

The trademark rights holder has the right at any time(even prior to lodging any civil or criminal case) toobtain (pursuant to a petition supported by an officialcertificate of the trademark registration) an orderissued by the Grievances Board for taking thenecessary provisional procedures particularly asfollows:

a.a.a.a.a. To prepare an inspection report and detaileddescription of the machines and devices used orwhich may be used in the violation acts in additionto the local and imported products, goods or papersthat the counterfeited trademark may be affixed to.

b.b.b.b.b. To attach the items mentioned in paragraph‘a’ provided that the attachment shall not be madeunless the claimant has furnished a preliminaryguarantee estimated by the Grievances Board forcompensating the defendant if necessary. Also, it ispermissible (upon attachment) to contest sufficiencyof the guarantee furnished by the claimant. Inaddition, the Grievances Board order mayincorporate assignment of an expert or more forassistance of the authority specified under theImplementation Rules.

The provisional procedures taken by the trademarkrights holder shall be considered null and void unlessit is succeeded by a civil or criminal case againstthe defendant within ten days from thecommencement date of the provisional proceduresunder the Trademarks Law.


With respect to any civil or criminal case, theGrievances Board has the right to adjudgeconfiscation of the seized items or those items seizedthereafter for deducting its price from theindemnifications or fines or for any disposal thereof.

Also, the Grievances Board may order publicationof the adjudication in one or more newspapers atthe violator’s expense in addition to destruction ofcounterfeited trademarks that are affixed or usedunlawfully.

Moreover, the Grievances Board (if necessary) maydestroy the items holding such trademarks even if itis determined that the accused violator is innocent.

If the violator repeats the violation, the Ministry ofCommerce shall prepare an announcement of theresolution content to be published at the violator’sexpense in a conspicuous space in two dailynewspapers with a widespread circulation, providedthat one of them is issued in the district of theviolator’s headquarters (if any).


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Elapse of the public right claimElapse of the public right claimElapse of the public right claimElapse of the public right claimElapse of the public right claim

The public right claim shall elapse upon expirationof (5) five years from the violation date without takingany procedure of the investigation or trial. Such anelapse of the public right claim does not impair anyof the private rights.

Judicial contrJudicial contrJudicial contrJudicial contrJudicial contrololololol

Employees nominated by the Minister of Commerceshall be empowered with the judicial control in regardto enforcement of the provisions stipulated underthe Trademark Law.

These employees are authorized severally and jointlyto control all violations under the Trademark Lawand its Implementation Rules, whether pursuant toa claim submitted by any person or through passingin the markets and in commercial shops. In suchcases, an incident control report is prepared by theemployee to be signed by him and the commercialshop owner or his representative at the control time.

COPYRIGHT LACOPYRIGHT LACOPYRIGHT LACOPYRIGHT LACOPYRIGHT LAWWWWW

The concerned judicial authority:All violations of this law are considered by acommission formed in accordance with the Ministerof Culture & Information under chairmanship of theMinistry undersecretary.

The Violations Settlement Commission membersshall not be less than three (3) three membersincluding one legal consultant.

The commission resolutions are issued by majorityupon summons and hearing of the violator or hisproxy. Also, the commission may summon and hearany other third party or seek expertise thereof.

Commission resolutions are not final unlessapproved by the Minister.

Any violator punished under the copyright law maysubmit a grievance before the Grievances Boardwithin (60) sixty days from the notification date ofthe resolution thereof.

Crimes and penaltiesCrimes and penaltiesCrimes and penaltiesCrimes and penaltiesCrimes and penalties

Without prejudice to any harsher penalty stipulatedunder any other law, the violator of any provisionunder the copyright law shall be punished with afine that shall not exceed (50,000) fifty thousandSaudi Riyadh or have his commercial shop/facilityclosed for a period that shall not exceed two monthsor by final closure of his commercial shop/facility.

The penalty shall be determined by the Ministerbased on the commission recommendation.


Any newspaper that has attributed an untruestatement to any person or which has publishedincorrect news is required to correct such astatement or news free of charge (upon request ofthe respective parties) in the first issue following thecorrection request.

Such a correction shall be published in the samespace as the news or statement was previouslypublished therein, or in a conspicuous place. Also,any damages occurred to any party shall grant theright to claim compensation.

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The Ministry (if necessary) shall withdraw all issuesof the newspaper that incorporate any inconformitywith Islamic Shariah rules pursuant to thecommission resolution.

The Ministry shall withdraw the copyright undercirculation (whether inside or outside the kingdomof Saudi Arabia) in the following two cases:

1. If its circulation is classified.2. If it is banned and incorporating some unlawfulitems. The commission shall consider such a banas is appropriate under its own discretion throughits destruction with no compensation or throughdesignation of the respective party to return thesame to outside kingdom at his expense if it wasexternal.

Judicial contrJudicial contrJudicial contrJudicial contrJudicial contrololololol

Control officials of the General Directorate ofcopyright and its branches who are in charge ofmedia facilities and markets control are empoweredwith judicial authority in applying the law and itsimplementation rules in addition to its relatedevidence.

Such officials can seek the assistance andcooperation of the police (if necessary) for theirsupport in performing their tasks and the violationcontrol.

PPPPPAAAAATENTS AND LATENTS AND LATENTS AND LATENTS AND LATENTS AND LAYYYYY-OUT DESIGNS OF-OUT DESIGNS OF-OUT DESIGNS OF-OUT DESIGNS OF-OUT DESIGNS OFINTEGRAINTEGRAINTEGRAINTEGRAINTEGRATED CIRCUITS,PLANT SPECIESTED CIRCUITS,PLANT SPECIESTED CIRCUITS,PLANT SPECIESTED CIRCUITS,PLANT SPECIESTED CIRCUITS,PLANT SPECIESAND INDUSTRIAL DESIGNSAND INDUSTRIAL DESIGNSAND INDUSTRIAL DESIGNSAND INDUSTRIAL DESIGNSAND INDUSTRIAL DESIGNS

Concerned Judicial Authority:A commission is formed of three officials and twotechnicians of not less than grade 12.

Members of the commission are nominated by thePresident of King Abdul Aziz City for science andtechnology.

Formation of the commission is finalized by aresolution issued by the Council of Minister for (3)three years, renewable for one period only. TheMinisters Council appoints the commission chairmanfrom one of the officials.

The commission is in charge of the following tasks:

1.1.1.1.1. Settlement of all disputes and appeals ofall resolutions pertaining to the protection ofdocuments.

2.2.2.2.2. Criminal cases with respect to violations ofthe law and its implementation rules.

Litigants shall be notified with regard to all suitssubmitted to the commission pursuant to theimplementation rules.

Crimes and penaltiesCrimes and penaltiesCrimes and penaltiesCrimes and penaltiesCrimes and penalties

Any act of exploitation stipulated under the rules ofeach protection subject performed by any personin the kingdom without written approval registeredin the department by the protection document holdershall be considered infringement of the protectionsubject.

The commission (acting for the protection documentholder and any other interested party) shall preventthe infringement and order payment of the necessaryindemnification.

Moreover, the commission shall impose against theinfringer a fine that shall and exceed (100,000) onehundred thousand Saudi Riyals. Such a fine isdoubled if the infringer repeats the violation.

Furthermore, if the commission determines thatimprisonment should be imposed against theinfringer, he shall be referred from the beginning to

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the Grievances Board. In addition, the commissionshall take necessary urgent measures in order toavoid damages incurred by the infringement.

In such cases, the commission resolution ispublished in the official gazette and in the bulletin inaddition to (2) two daily newspapers at the infringer’sexpense.

The penalty under this article does not prejudiceany harsher penalty under any other law.

Without prejudice to the aforementioned, any violatorof any provision stipulated in this law shall bepunished by a fine that shall not exceed (50,000)fifty thousand Saudi Riyals. The maximum penaltyis doubled if the violator repeats the violation.

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Introduction

SINGAPORE

Generally, the Singapore IP enforcement regime can be broadly classified under:

1. civil enforcement2. criminal enforcement3. border enforcement

The effectiveness of each enforcement mechanism depends on the nature of the counterfeitingproblem.


152

The civil enforcement mechanism is very similar tothe system available under the English judicialsystem. A rights owner can commence actionagainst an infringer by way of a writ of summons forall acts of infringement of copyright, trademarks,patents and design rights committed in Singapore.The rights owner has the option of pursuinginterlocutory remedies, including:

a. interlocutory injunctionsb. Anton Piller orders


Rights owners can apply for an interlocutoryinjunction to prevent further infringement. Theinterlocutory injunction may be a mandatory order(delivery up) or a prohibitory order (cessation oftrade of infringing products). In most cases, therights owner usually applies for both mandatory andprohibitory orders. It is common to include an orderfor discovery of source in an application for aninterlocutory injunction.

The rights owner has to undertake to pay damagesto the defendant should the defendant succeed inits defence of the civil action. In urgent cases, therights owner may take up an ex-parte applicationfor an interlocutory injunction. In this regard, therights owner is under the obligation of full and frankdisclosure.


An Anton Piller is usually granted if the rights ownerhas a very strong prima facie case, potential oractual damage is serious and there is a high risk ofdestruction of evidence. The rights owner must firstfile its case by way of a writ in the High Court togetherwith the Summons in Chambers application. Theapplication must be supported by affidavits settingout the facts supporting the above points. The rightsowner is also under a duty of full and frankdisclosure. The rights owner must also undertaketo indemnify the defendant for damages if thedefendant succeeds in its defence of the case.

Final rFinal rFinal rFinal rFinal remediesemediesemediesemediesemedies

In the event that the rights owner succeeds in itscase at trial, the court generally grants one or moreof the following remedies in favour of the rightsowner:

a. damages or account of profitsb. delivery-upc. permanent injunctiond. destruction of the infringing items

In cases of copyright infringement, the court hasthe power to grant aggravated damages as well asstatutory damages. Statutory damages are alsoavailable for trademark infringement cases.

Copyright and trademark infringement, undercircumstances, attracts criminal liabilities.Historically, Section 136 of the Copyright Actimposes criminal liabilities against the commercialexploitation of infringing works. With effect from 1January 2005, the Copyright Act also imposesliability against end-user infringement if theinfringement is significant or the infringer obtains acommercial advantage from the infringement. Inaddition, any person who wilfully circumventstechnological protection measures, makes sells ordistributes devices which circumvent technologicalmeasures for the purpose of obtaining a commercialadvantage or private financial gain, would attractcriminal liabilities.

As in the Copyright Act, the Trade Marks Actcriminalizes counterfeiting as well as the commercialexploitation of counterfeit goods. A person whocounterfeits a registered trademark commits anoffence under Section 46 of the Trade Marks Act.Similarly, a person who applies a counterfeittrademark on goods or services is guilty of anoffence under Section 47 of the Act. Section 48makes it an offence to manufacture or possess anarticle specifically designed or adapted for makingcopies of registered trademarks. Section 49 relatesto offences regarding the commercial exploitationof counterfeit products.

Unlike the sections for offences under the CopyrightAct, it is not necessary for the prosecution to proveintention or knowledge before liability is established.



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Singapore

In addition, for the commercial distribution ofcounterfeit products under Section 49 of the Act, aperson is prima facie liable if he is found to sell orbe in possession of counterfeit products for thepurpose of trade. The person can then raise thedefence that:

(1)(1)(1)(1)(1) he had taken all reasonable precautions againstcommitting an offence under this section, he had,at the time of the commission of the alleged offence,no reason to suspect the genuineness of the markand on demand made by or on behalf of theprosecution, he gave all the information in his powerwith respect to the persons from whom he obtainedthe goods; or

(2)(2)(2)(2)(2) he had acted innocently.

EnforEnforEnforEnforEnforcement rcement rcement rcement rcement regimeegimeegimeegimeegime

The Intellectual Property Rights Branch (IPRB) ofthe police is responsible for the execution of IP raidsin Singapore. In criminal infringement cases, a rightsowner can lodge a complaint with the IPRB relatingto the infringement. Depending on the scale ofinfringement, the IPRB may initiate its owninvestigations with a view to conducting a successfulraid and criminal prosecution against the infringer.

As the investigation resources of the IPRB arelimited, it is practically very difficult for the IPRB topursue every complaint lodged.

Hence, rights owners could utilise the self-helpsystem where a rights owner, through its solicitorsor representatives, can apply for a search warrantbefore a Magistrate with a view of conducting a raidagainst the infringer. Upon obtaining the warrant,the rights owner would procure the assistance ofthe IPRB to execute the search warrant. In suchcases, the IPRB’s role will generally be limited to theexecution of the search warrants and would not betaking any active role in the investigation of theinfringement. In such cases, upon a successful raid,the rights owner is expected to apply for anauthorization from the Attorney-General’s Chambersto initiate a criminal prosecution against the infringer.In the event of a successful prosecution, the infringeris likely to face a fine or imprisonment. The infringingproducts seized are destroyed at the completion ofthe prosecution.

Under the Copyright Act and Trade Mark Act, theSingapore Customs is empowered to detaininfringing products entering Singapore. A rightsholder may file a notice with the Director-General ofCustoms and Excise for the detention of a particularshipment of goods which infringes the rights holder’srights. The rights holder has to deposit a sum ofmoney with the Customs and Excise office forsecurity and such money will be used to indemnifythe Government for any liability and expenses arisingfrom the seizure. Upon the filing of the notice anddeposit of the sum, the Customs and Excisedepartment will seize the infringing goods. The rightsowner has to initiate legal action in relation to theseizure within 10 days, failing which the seizure shallbe released by Customs.

Ex-OfEx-OfEx-OfEx-OfEx-Officio actionficio actionficio actionficio actionficio action

Under the Copyright Act and the Trade Marks Act,the Customs and Excise department may on its owndetain goods which are reasonably suspected tobe counterfeit. Upon detaining the goods, theCustoms and Excise department has to inform theimporter as well as the rights owner relating to thedetention. The rights owner then has to initiate legalaction in relation to the seizure within 10 days, failingwhich the seizure shall be released by the Customs.

Customs Procedures



154

SRI LANKA

Introduction

In Sri Lanka, all Intellectual Property matters are governed by the Intellectual Property Act No.36 of 2003 (the Act). The National Intellectual Property Office headed by the Director-Generaladministers Intellectual Property matters.

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Sri Lanka


The Commercial High Court of the province wherethe defendant resides or the cause of action arosehas jurisdiction over infringements of trademarks,copyright, patents and designs. An appeal routeexists from the High Court to the Supreme Court.

The Act provides that any party whose rights areaffected may seek and obtain an injunctionrestraining any person who is threatening to infringeor who has infringed that party’s rights or isperforming acts which make it likely that infringementwill occur, from commencing or continuing suchinfringement or performing such acts.


Provisional remedies are available such as anenjoining order and an interim injunction (enjoiningorders being obtainable ex parte in the first instance)and permanent injunctions are possible.

Three main principles govern the granting ofenjoining orders/interim injunctions. Firstly, a partyseeking an enjoining order or an interim injunctionmust have a good chance of winning the case, orthere should be a prima facie case to succeed.Secondly, if a prima facie case has been made out,the court should consider where the balance ofconvenience lies. Thirdly, the party seeking anenjoining order or interim injunction must make thefullest possible disclosure of all the facts. The courtalso has power to make ex parte orders as interimprotection measures and in circumstances wherethere is demonstrable risk of evidence beingdestroyed or where delay would be likely to causeirreparable harm.

Having obtained an enjoining order, the plaintiff willhave to move to extend the enjoining order in termsof the Civil Procedure Code at the end of the periodfor which it was issued. A party against whom anenjoining order has been obtained can object to theextension of the enjoining order.

In most cases the court orders the rights holder todeposit security in cash to compensate the allegedinfringer in the event of the action failing.

The Act also provides that an injunction may begranted along with an award of damages and that

injunctive relief will not be denied merely becausean applicant is entitled to damages.

Any owner of rights protected by the Act may electat any time before final judgment to recover, insteadof proved actual damages, an award of statutorydamages for any infringement involved in the actionof a sum of not less than Rupees 50,000(approximately US$ 500) and not more than Rupees1,000,000 (approximately US$ 10,000) as the courtmay consider just and appropriate.

Appeals can take several years before a finaldecision is made as there are enormous backlogsof appeals pending in all types of cases and eachcase has to take its turn depending on the date offiling of the appeal.

Timescale and costTimescale and costTimescale and costTimescale and costTimescale and cost

The timescale in bringing a civil action to itsconclusion in the original court (High Court) isapproximately nine months, or more if there arepostponements on various grounds.

Costs depend on the number of dates of trial. SeniorCounsel (President’s Counsel) normally chargesapproximately £500 per appearance and JuniorCounsel one third to half of the Senior Counsel’s fee.Senior Counsel is required to have a Junior. Counselwill be retained and briefed by an InstructingAttorney-at-Law (who carries out functions similarto those of a Solicitor and who will retain and briefCounsel). The Instructing Attorney’s fees willgenerally be around two thirds of Senior Counsel’sfees for appearances. Preliminary work by theInstructing Attorney such as filing the necessarypapers etc. in court is charged separately at a fixedfee or on a time cost basis. Instructing Attorney’sfees exclude disbursements such as translating theplaint etc. into Sinhala, which will be paid for by theclient. Counsel’s fees for drafting papers for filing incourt depend on the complexity of the matter, timespent and the seniority of Counsel, and could for arenowned President’s Counsel be in the region of£1000 plus Junior’s fees as indicated above. Thelevel of counsel’s fees depends on the seniority ofSenior Counsel. Enforcement of the judgment ischarged separately by the Instructing Attorney. Theabove are a rough estimate of the lawyer’s fees whichmay be more or less than the amounts mentioned.



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The court fees (stamp duty) depend on the amountof the claim. If the rights holder is resident abroadand has no assets in Sri Lanka the defendant couldmake an application to court to have the rights holderdeposit security for costs in the event of the actionfailing.

Unfair competitionUnfair competitionUnfair competitionUnfair competitionUnfair competition

Any act or practice carried out or engaged in, in thecourse of industrial or commercial activities that iscontrary to honest practices constitutes an act ofunfair competition. Any person or enterprise orassociation of producers, manufacturers or tradersaggrieved by any act of unfair competition mayinstitute proceedings in court to prohibit thecontinuance of such act and obtain damages forlosses suffered as a result of such act. The aboveprovisional and other remedies available in casesof infringement apply mutatis mutandis to unfaircompetition.

Any act or practice, in the course of industrial orcommercial activities, that results in the disclosure,acquisition or use by others, of undisclosedinformation without the consent of the rights holderand in a manner contrary to honest commercialpractices shall constitute an act of unfaircompetition. Where a person proves to thesatisfaction of the court that any person isthreatening to infringe or has infringed his rights oris performing acts which makes it likely that aninfringement will occur, the court may grant aninjunction restraining any such person fromcommencing or continuing such infringement orperforming such acts and may order damages andsuch other relief as the court may deem just andequitable.

The court has the power to order the infringer topay the rights holder such damages as are adequateto compensate him for the loss suffered by him byreason of the infringement, in addition to the recoveryof any profits, and the infringing goods will bedisposed of outside the channels of commerce ordestroyed without payment of any compensation.The court may also make an order in respect ofmaterials and implements used in the creation ofthe infringing goods.

In making such orders the need for maintaining abalance between the seriousness of the infringement

and the remedies ordered, as well as the interestsof third parties, shall be taken into consideration.

The court may, other than in an instance where itwould not be in proportion to the seriousness of theinfringement, order the infringer to inform the rightsholder of the identity of the persons involved in theproduction and distribution of the infringing goodsor services and of channels of distribution used bythem.

The court shall have power to order interim measuresrelating to protection, ex parte where appropriate,in particular where any delay is likely to causeirreparable harm to the rights holder or where thereis a demonstrable risk of evidence being destroyed.Where interim measures have been ordered exparte, the parties affected shall be given notice andshall on receipt of such notice be entitled to be heardas to whether the interim measures ordered shouldbe modified or revoked.

The court will also make an order for payment oftaxed or incurred costs in favour of the successfulparty. For the purpose of taxation a bill of costs hasto be tendered by the successful party to court,which will be taxed. The taxed costs are generallyabout one third the actual incurred costs.

Other avenues available to protect a trademark ordesign are to oppose the registration within threemonths of the statutory notice of the applicationbeing published in a Government Gazette or suchextended period as may be allowed by the Director-General on application made by the opponent onsufficient grounds acceptable to the Director-General. The inquiry proceedings into objections,submissions and counter-submissions are a lengthyprocess that can drag on for two to three yearsbefore an order is given by the Director-General.

An application can be made to court to have anoffending mark that has been registered struck offthe register, provided the owner of the mark canprove to the satisfaction of the court that his markhas been copied. The court will make an order withina reasonable period of the conclusion of the trial,but it can take several years to get the Director-General to strike the mark off the register.

The above remedies apply equally to both domesticand foreign rights holders.


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The Magistrate’s Court has jurisdiction over offencesinvolving infringements of trademarks, copyrights,patents and design rights. The rights holdercomplains of the infringement to the police who may,with the assistance of the Attorney-General’sDepartment, prosecute the offender. The rightsholder may himself launch a private prosecution.

If the infringer is convicted the penalties are asfollows:-

Disclosing undisclosed inforDisclosing undisclosed inforDisclosing undisclosed inforDisclosing undisclosed inforDisclosing undisclosed informationmationmationmationmation

Any person who wilfully and without lawful authoritydiscloses any undisclosed information shall be guiltyof an offence and shall on conviction after trial beforea Magistrate be liable to a fine not exceeding Rupees500,000 or to imprisonment for a term not exceedingsix months or to both a fine and imprisonment.


A fine not exceeding Rupees 500,000 orimprisonment for a term not exceeding six monthsor both. In the case of a second or subsequentconviction this penalty may be doubled. Any personknowing or having reason to believe that copies havebeen made in infringement of the protected rightsand who sells, displays for sale or has in hispossession for sale or rental or any other purposeof trade such copies, will be liable if convicted tothe same penalties as above.

Any person likewise having access to a computerprogram infringing the rights of another person andwillfully makes use of such program for commercialgain will also be liable to the same penalties as aboveon conviction after trial.

The magistrate may, whether the alleged offenderis convicted or not, order that all copies of the workand all implements used for the infringement or allplates in the possession of the alleged offender, bedestroyed or delivered up to the rights holder or beotherwise dealt with in such manner as themagistrate may think fit.

Industrial DesignsIndustrial DesignsIndustrial DesignsIndustrial DesignsIndustrial Designs

Any person who wilfully infringes the rights of anyregistered owner of an industrial design shall beguilty of an offence and shall be liable on convictionafter trial before a Magistrate to the same penaltiesas in the case of copyright.

Any person who for industrial or commercialpurposes makes a representation:

(a) that an industrial design is registered when ithas not been registered(b) that a registered industrial design is registeredin respect of any product regarding whichregistration has not been carried out(c) that the registration of an industrial design givesan exclusive right to its use when the registrationdoes not give that right

will be liable to the same penalties as in the case ofcopyright.


Any person who wilfully infringes the rights of anyregistered owner, assignee or licensee of a patentis be liable on conviction to the same penalties asabove and in the case of a second or subsequentconviction to double the penalty. Any person issimilarly liable If they, for industrial or commercialpurposes, make a representation:

(a) that a patent is registered whereas in fact this isnot so(b) that a registered patent is registered in respectof any product or process regarding whichregistration has not been carried out(c) that the registration of a patent gives an exclusiveright to the use thereof when the registration doesnot give that right


The penalty for infringement is the same as above,including double such penalty in the case of asecond or subsequent conviction.


Sri Lanka


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Any person is similarly liable - as in the case ofpatents - who for industrial or commercial purposesmakes a representation:

(a) that a trademark is registered whereas in factthis is not so(b) that a registered trademark is registered inrespect of any goods or services regarding whichregistration has not been carried out(c) that the registration of a trademark gives anexclusive right to the use thereof when theregistration does not give that right

ForgerForgerForgerForgerForgeryyyyy

Any person who

(a) forges any mark or(b) falsely applies to goods any mark so nearlyresembling a registered mark as to be likely tomislead or(c) makes any dye, seal block, machine or otherinstrument for the purpose of forging a mark or(d) applies any false trade description to goods or(e) disposes of or has in his possession any dye,seal block, machine or other instrument for thepurpose of forging a mark or(f) causes any of the above to be done shall unlesshe proves that he acted without intent to defraud

is guilty of an offence unless he proves that he actedwithout intent to defraud.

Any person who sells or exposes for sale or has inhis possession for sale, any goods to which anyforged mark or false trade description is applied orto which any mark so nearly resembles a registeredmark that it is likely to mislead, is guilty of an offenceunless he proves:

(a) that all reasonable precautions againstcommitting an offence have been taken and that hehad no reason to suspect the genuineness of themark or trade description.(b) that on demand made by or on behalf of theprosecutor he gave all the information in his powerwith respect to the persons from whom he obtainedsuch goods or things(c) that otherwise he had acted innocently.

The penalties on conviction are the same asmentioned earlier.

Additional inforAdditional inforAdditional inforAdditional inforAdditional informationmationmationmationmation

The Magistrate may, whether the alleged offenderis convicted or not, order that every item in respectof which the offence has or might have beencommitted shall be destroyed or declared forfeit tothe State or otherwise dealt with as he may think fit.

Any person who, being within Sri Lanka, abets thecommission outside Sri Lanka of any act which ifcommitted in Sri Lanka would be an offence, is, bythe Act, deemed to be guilty of the offence.

Upon receipt of information of an offence beingcommitted, a Magistrate may issue either asummons requiring the person involved to appearin court and show cause or where such person failsto appear issue a warrant for his arrest.

The Magistrate may, upon being satisfied byinformation on oath that there are reasonablegrounds to believe that any goods or things used inrelation to an offence are in a house or premises ofthe offender, issue a warrant.

The Act provides that it is lawful for any police officeror other person named or referred to in the warrantto enter such house or premises at any reasonabletime of the day and to search for and seize suchgoods and things. It is further provided that suchgoods and things must be brought before theMagistrate for the purpose of determining whethersuch goods are liable to forfeiture.

If the owner of the goods and things is unknown orcannot be found, the Magistrate may cause noticeto be published requiring reasons to be shown byany person to the contrary why such goods or thingsshould not be forfeited. If the owner or any personfails to show cause to the contrary, the Magistratemay order such goods or things to be forfeited.Every such order is subject to an appeal.

Any goods or things forfeited may be destroyed orotherwise disposed of in such manner as theMagistrate may direct. The proceeds realized by thedisposition of such goods may be awarded to aninnocent party for any loss such party may havesustained in dealing with such goods.

The court may order costs to be paid by the accusedor to the accused as if it were a fine.


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No prosecution can be commenced after theexpiration of three years after the commission of theoffence charged or two years after the discoverythereof by the prosecutor, whichever expiration firstoccurs.

Under the Act the Customs Ordinance was amendedto prohibit the importation and exportation ofcounterfeit trademark goods or pirated copyrightgoods.

Counterfeit trademark goods are defined as anygoods including packaging, bearing withoutauthorization a trademark which is identical to atrademark validly registered in respect of suchgoods or which cannot be distinguished in itsessential aspects from such a trademark and whichthereby infringes the rights of the owner of thetrademark.

Pirated copyright goods are defined as any goodswhich are made without the consent of the copyrightholder or person duly authorized by the copyrightholder in the country of production, and which aremade directly or indirectly from an article where themaking of that copy would have constituted aninfringement of a copyright or a related right.

A rights holder who has valid grounds to believethat the importation of a counterfeit trademark orpirated copyright goods or of any other goods incontravention of the right holder’s rights is takingplace, may make an application in writing to theDirector-General of Customs requiring him tosuspend the release of such goods into freecirculation. The Director-General of Customs mayrequire the rights holder to provide security to protectthe defendant and to prevent any abuse.

The rights holder and the importer will then benotified by the DG of Customs that the release ofthe goods has been suspended and the rights holderhas ten days to institute legal action against theimporter and must notify the DG of Customsaccordingly or the goods will be released.

In practice this is very new legislation in Sri Lankaand only time will tell how effectual this will be.Regulations have yet to be gazetted.


Sri Lanka

Customs Procedures


160

SWEDEN

Introduction

Under the Swedish judicial system the routes for obtaining civil and criminal redress in casesof an infringement of a copyright are not always kept separately. Rights holders may choose toreport the infringement to the police or seek to obtain civil redress. Claimants also have thepossibility to bring a civil action for damages in tandem with the criminal process.

Most rights holders rely on the civil process because it is usually faster. Civil redress meansthe possibility of obtaining both compensation and injunctions (interim and final).

Any criminal procedure will probably be long and it is rather difficult to invoke coercive measuressuch as seizure. Also, the burden of proof is higher in the criminal sphere and the criminaloffence must be shown beyond reasonable doubt, while in the civil sphere infringement on thebalance of probabilities is the case.

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Sweden


In cases of alleged infringement the civil court may,at the application of a claimant, decide that aninvestigation shall be carried out by the competentauthorities at premises where there may be evidenceof the infringement [Sw: intrångsundersökning].

To obtain such a decision, the claimant must provethere is a certain probability that an infringement isat hand. The court must also consider the balanceof what may be achieved and the possibleinconvenience caused to the alleged infringer mustbe redeemed by the reasons for the investigation.

The claimant is normally obliged to offer a guaranteecovering the compensation to the alleged infringerfor any damages he may suffer because of theinvestigation in the event that the claimant’s case isdisallowed in the subsequent trial.

The decision on the investigation is executed by theSwedish Enforcement Administration [Sw:kronofogdemyndigheten]. There will be no notice tothe alleged infringer before such action is taken, butthe alleged infringer has the right to have a counselpresent when the investigation is conducted. Thereason why there is no notice is to avoid any chancethat the alleged infringer destroys or gets rid of therelevant material beforehand.

If the rights holder claims an injunction, final orinterim, this must also include the guaranteementioned above to cover possible damages. If aninjunction is claimed, no intent or negligence has tobe shown. It is sufficient that the rights holder canshow it is reasonable to believe an infringement isat hand and that it is still going on or at least maycontinue. In the event the opposite party disobeysthe injunction order, they may be punished by a fineor imprisonment. If the rights holder cannot offer aguarantee, the court may exempt him from thisobligation.

If the court deems that the rights holder hasestablished a case of infringement at a trial, it mayalso in the final verdict grant an injunction (a finalinjunction) which prohibits the infringer fromrepeating or continuing with its action.

There may be injunctions about redemption of theintellectual property. Infringing goods may be

destroyed, altered, or returned to the rights holderin exchange for compensation. Infringing goods orassisting facilities may also be seized. The rightsholder might claim that in return for financialcompensation, the infringing goods are returned tohim or made accessible to the general public.

To bring a civil action, the rights holder has to payan application fee of SEK 450 to the Court. The costof legal counsel varies but is similar to that in otherjurisdictions in continental (western) Europe. Legalcounselling costs a minimum of SEK 1,300 an hour.The losing party usually has to compensate thewinning party for its legal costs in a civil action.

The same rules described above protect the rightsof both Swedish citizens and others having theirpermanent residence in Sweden. According to theInternational Copyright Regulation, the sameprotection also applies to all the citizens of countriesin the European Union.

Compensation and damagesCompensation and damagesCompensation and damagesCompensation and damagesCompensation and damages

Adequate compensation for the use or misuseconstituting the infringement shall in all cases bepaid by the infringer. To determine the compensationcommon rates, collective agreements and commongrounds in the business are used. If there is intentor negligence the rights holder also has the right todamages. Under the Swedish judicial system thereare two kinds of damages; damages for the losscaused (in addition to compensation for the use ofthe rights, mentioned above); and damages due tosuffering and other kinds of prejudice. Damages forlosses caused include all direct and indirect losses.

Also, when an infringement does not constituteunauthorized use, the rights holder may still have aright to damages. An example is authorized use ofthe rights without naming the author (droit depaternité).

The aim of the redress is only to compensate therights holder and not to punish the infringer. Therights holder is put in the same financial situation asif an infringement never had occurred. The losscaused must be foreseeable and a direct result ofthe infringement to be able to compensate. However,this is not applicable to damages due to sufferingand other kinds of prejudice. If it is not possible todetermine the damages, the court has to estimatethe size of the damages.


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In Sweden, the most common way for a rights holderto seek redress when his rights are breached isthrough civil action.

However, there is also a possibility to seek criminalredress. Unfortunately, copyright crimes are not apriority for regional public prosecution offices or thepolice. This means it will usually take quite sometime before the process is instigated and beforecoercive measures, for example seizures, will beinvoked. Thus the breaches may continue for a longtime and cause great damage to the rights holderbefore any action is taken.

Also, it is more difficult to obtain criminal redressbecause the burden of proof is higher compared tocivil cases. Guilt must be shown beyond reasonabledoubt, instead of infringement on the balance ofprobabilities. If the charges are dropped ordisallowed the rights holder doesn’t have to pay anycosts that may be due, for example seizure.

It is only possible to take legal proceedings againstan alleged infringer if the rights holder brings aprivate action against the alleged infringer, or if legalproceedings are required from a public point of view.

A criminal offence assumes intent or grossnegligence. According to the Swedish Copyright Act[Sw: upphovsrättslagen], the Swedish RegisteredDesigns Act [Sw: Mönsterskyddslagen], theSwedish Patent Act [Sw: Patentlagen], as well asthe Swedish Trademark Act [Sw: varumärkeslagen],criminal offences are punishable by imprisonmentfor up to two years, or by fines.


Customs may, under certain conditions, seize andretain infringing products and pirated goods as theyarrive into the European Union.

This possibility is due to Council Regulation (EC)No 1383/2003.

Under this regulation the rights holder can make anapplication to the Customs in order to preventproducts going onto the market. If Customsdiscovers suspected infringing goods they maysuspend the release of the goods and the goodsmay also be detained and the rights holder will becontacted.

Customs Procedures

163

TAIWAN

Introduction

In Taiwan, the Patent Law is enacted to cover three categories of patents, namely, invention,utility model and design patents. Trademark rights and copyrights are respectively governedby the Trademark Law and the Copyright Law. While civil and criminal actions can be filed fortrademark or copyright infringement, only civil action can be filed for patent infringement,which has been decriminalized since April 2, 2003.

The most effective way to stop trademark or copyright infringement is to take criminal action,which may include a police raid on the premises of the alleged infringer in order to seize thesuspected infringing goods and related evidence. Before filing a petition for a police raid, it isadvisable to conduct a private investigation to collect evidence, especially the names of themanufacturers, distributors, retailers, and the places where the suspected infringing goodsare being manufactured and stored.

The civil remedies provided in the CCP for enforcement of intellectual property rights areadequate. The available civil remedies – injunction, damage claims, destruction or dispositionof infringing goods, machinery or tools used for producing the infringing goods are an effectivemeans of enjoining further acts of infringement. In view of the decriminalization of patentinfringement since April 2003, filing a motion for preliminary injunction has become a trend inpatent infringement cases to enjoin alleged infringers from further infringement of the patent-in-suit. Under the current CCP, the motion for preliminary injunction is tried on an inter partebasis, instead of ex parte basis.

Under current practice, there are not many cases of border enforcement of intellectual propertyrights, partly because the Customs House would require the deposit of security bond once thepetition for detention of the suspected infringing goods filed by a rights holder is accepted.Hence, it is recommended that a trademark or copyright holder initiate a criminal action withthe court so that a police raid can be conducted at the Customs House to detain the suspectedinfringing goods, rather than file a request for the detention of the suspected infringing goodswith the Customs House directly. If this route is taken, the trademark or copyright holder canbe spared the burden of depositing a security bond while achieving the same goal.


164

Civil Procedures and RemediesPrPrPrPrPreliminareliminareliminareliminareliminary injunctiony injunctiony injunctiony injunctiony injunction

Before or during the prosecution of a civil lawsuit, arights holder may file a motion for preliminaryinjunction to enjoin the alleged infringer fromcontinuing any acts of infringement until the mattercomes to full trial, provided that there is an urgentneed for relief of irreparable injury or imminentdanger. And in view of the decriminalization of patentinfringement, filing a motion for preliminary injunctionhas become a common, effective means in a patentinfringement action.

Under the current judicial system, the granting ordenial of a motion for preliminary injunction is amatter committed to the sound discretion of thejudges, since there are no clear-cut precedents orenforcing guidelines that shed light on whatconstitutes “irreparable injury” and/or “imminentdanger” necessitating an urgent need for relief.Some judges adopt a more stringent attitude inexamining the “urgent need” for relief, but otherstend to skip the substantial examination procedureon the strength of the evidentiary documentssubmitted in support of the “urgent need” for reliefas required by law and put more weight on theadequacy of the security bond premium.

In most cases, upon issuance of an order forpreliminary injunction, the court will request the rightsholder to place a security bond (the security bondpremium is determined by the court based on thepotential loss suffered by the alleged infringer if thepreliminary injunction is proved unjust) within thirtydays of receipt of the court’s decision to grant thepreliminary injunction. In the past, it was rare for acourt to accept placement of a counter-securitybond in exchange for waiver of an order forpreliminary injunction. However, current recordsreveal that acceptance of a counter-security bondis on the rise.

Under the old Code of Civil Procedure (hereinafterreferred to as CCP), where the ex parte system wasadopted, the court may issue an order for preliminaryinjunction, if deemed appropriate, in a few weeksfrom receipt of the motion filed by the rights holderwithout giving notice to the alleged infringer.However, with the adoption of the inter-parte systemunder the new CCP implemented since September1, 2003, unless the court deems it inappropriate,the rights holder and the alleged infringer are both

given the opportunity to be heard before issuanceof an order for preliminary injunction. As a result, itmight take several months to obtain an order forpreliminary injunction.

PrPrPrPrPreserving evidence of infringementeserving evidence of infringementeserving evidence of infringementeserving evidence of infringementeserving evidence of infringement

Unlike in a criminal action, there is no search andseizure procedure in a civil action. However, the CCPprovides a “preservation of evidence” procedure,by virtue of which the rights holder may request thecourt to seize in public places the suspectedinfringing products and the materials or equipmentutilized in the manufacturing of the products, as wellas the relevant documents. In private premises, theseizure may be conducted only if consent isobtained from the alleged infringer.

Since no criminal action can be filed for claims ofpatent infringement, the patent owner may only takeadvantage of the “preservation of evidence”procedure in obtaining and preserving evidence ofuse in a patent infringement action.

PrPrPrPrProvisional attachmentovisional attachmentovisional attachmentovisional attachmentovisional attachment

Provisional attachment is an effective means tofreeze the alleged infringer’s property for potentialauction, as well as to speed up the process ofrecovery of damages by a rights holder in case amonetary award is finally obtained. The motion foran order of provisional attachment can be filed withthe deposit of a security bond (the security bondpremium is determined by the court and is generallyequivalent to one third of the damages claimed bythe right holder). On the other hand, the allegedinfringer could deposit a counter-security bondequivalent to the full amount of damages claimedby the rights holder for waiver of the order ofprovisional attachment. While a decision may berendered in a week after the motion is filed with thecompetent district court, an order for provisionalattachment is usually enforced without a prior noticeto the alleged infringer.

Civil lawsuitCivil lawsuitCivil lawsuitCivil lawsuitCivil lawsuit

A rights holder may initiate a civil lawsuit bysubmitting a complaint with a district court havingjurisdiction over the area where the defendantresides, has a place of business, or where thedefendant has committed an infringing act. Thecomplaint should contain the names and addresses

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Taiwan

of the rights holder /plaintiff and the alleged infringer/defendant, and information, including remediessought and causes of action, along with a power ofattorney, court fee, and supporting evidence (e.g.,sample(s) of infringing articles, sales receipt thereof,and expert opinion about infringement). In mostcases, the losing party may appeal from the DistrictCourt to the High Court and further to the SupremeCourt.

Unlike in the US, there is no discovery procedure inthe judicial system in Taiwan. During the hearings,both parties may respectively present their writtenarguments and evidence and the judge may attendto the fact-finding procedure by interrogating thewitnesses regarding the issues raised, inspectingthe lodged and preserved evidence, etc. Normally,it takes fourteen (14) to eighteen (18) months for adistrict court to render a decision on a civil lawsuit.Attorneys’ fees normally range between US$5,000and US$20,000. The court fee, which is borne bythe losing party but has to be prepaid by the plaintiff,is around 1.1% of the claimed damages and/orbenefits obtainable from an order for final injunction.

In cases where the alleged infringer/defendant takesa counter action by filing an invalidation petition withthe Intellectual Property Office (IPO) against thepatent/trademark-in-suit, the court may stay the trialpending the outcome of the invalidation petition. Itusually takes around one year for the IPO to rendera decision on invalidation. In addition, the losingparty may seek remedial actions against the decisionof the IPO, including appeal and administrativelitigation, which would take another three years.


1. Final injunction1. Final injunction1. Final injunction1. Final injunction1. Final injunction. Once an infringement case isestablished, and an order for final injunction isobtained, the infringer/defendant shall be enjoinedfrom committing any further act of infringement.

2. Damages2. Damages2. Damages2. Damages2. Damages. A patent, trademark or copyrightholder may select either of the following methodsfor calculation of damages:

a). According to the loss actually suffered, asstipulated in Article 216 of the Civil Code. However,when the rights holder is unable to provide evidenceof the actual loss suffered, damages may becalculated by subtracting the amount of profit gainedafter infringement from that the rights holder wouldhave gained by the practice of its right.

b).According to the profit gained by theinfringer as a result of his infringement. However,when the infringer is unable to providedocumentation proving the production cost, or othernecessary expenditures, the total gross sales of theinfringing articles shall be deemed to be theinfringer’s profit.

Aside from the above, in a patent infringementlawsuit, if the infringing act is committed intentionallythe court may increase the award of damages to asum in excess of the claimed damages, dependingon the gravity of the infringing act. The award ofdamages shall, however, not increase to a sum inexcess of three times the claimed damages. Inaddition, the patent holder may claim damages forhis loss of business reputation as a result ofinfringement.

In a trademark infringement lawsuit, the damagesmay alternatively be calculated by multiplying theretail unit price of the detained infringing goods by500 to 1,500; however, in case the number of thedetained infringing goods exceeds 1,500 pieces,the total selling price of the infringing goods shallbe deemed as damages.

In a copyright infringement lawsuit, if the rightsholder has difficulty proving its actual loss suffered,it may request the court to award damages in anamount of no less than 10,000 New Taiwan Dollarsor no more than 1,000,000 New Taiwan Dollarsdepending on the gravity of infringement. If the actof infringement is determined by the court to beintentional and grave, damages could increase upto 5,000,000 New Taiwan Dollars.

3. Destruction3. Destruction3. Destruction3. Destruction3. Destruction or disposition in other reasonablemeans of the infringing goods, materials orequipment in the possession of the alleged infringer,which were utilized to commit the act of infringement.

4. Placement4. Placement4. Placement4. Placement4. Placement of a public announcement of thecourt’s decision in the newspaper.

The above-mentioned remedies are available forboth domestic and foreign rights holders.

Under the current practice, although the rightsholder may request the alleged infringer/defendantto disclose the identity of other infringers, the allegedinfringer/defendant is not obliged to fulfill the requestsince this is not required by law.



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Only trademark or copyright infringers are criminallyliable. In Taiwan, trademark and copyright rightsholders are prone to file criminal actions since apolice raid would normally exert greater pressureon the alleged infringer and therefore increase thechances of enjoining infringement, and/or obtainingrecovery of damages by way of an out-of-courtsettlement.

Criminal lawsuit and police raidCriminal lawsuit and police raidCriminal lawsuit and police raidCriminal lawsuit and police raidCriminal lawsuit and police raid

A criminal lawsuit against trademark or copyrightinfringement and a request for a police raid can befiled with any of the following authorities:

1. the District Court having jurisdiction overthe alleged infringer, or the prosecutors’ officeof said District Court

2. the police authorities or the Bureau ofInvestigation; and

3. the Anti-Counterfeiting Committee of theMinistry of Economic Affairs (ACC).

Generally speaking, a police raid, if approved, canbe conducted within ten days from the date therequest is filed. No official fee for the police raid isneeded. After detention of the suspected infringinggoods and the relevant evidence, the police willpresent the same to the prosecutors’ office of thedistrict court, and the prosecutor will then hold aseries of hearings to investigate the case, which willtake about six months to a year. If the allegedinfringer is suspected of being guilty, the prosecutorwill indict the alleged infringer and refer the case tothe district court. The court, thereafter, will try thecase by holding a series of hearings and render adecision in about 8 to 16 months.

The court has no right to order the alleged infringerto identify the source of the infringing goods ordisclose information on other infringers. However, itis provided in the relevant Copyright Law thatpunishment may be reduced if a person, found guiltyof distributing or publicly displaying or possessingwith the intent to distribute the reproduction of a workwhich infringes upon another’s economic rights inthe work, has divulged the relevant information onthe source of the infringing goods, leading to captureof the supplier(s) of the infringing goods.

PunishmentsPunishmentsPunishmentsPunishmentsPunishments

An alleged infringer, if found guilty by the court, shallbe punishable according to the relevant penalprovisions in the Trademark Law or Copyright Law.It is not mandatory under the applicable laws inTaiwan for a defendant to pay compensation to thecomplainant in case of establishment of a criminallawsuit.

TTTTTrademark infringementrademark infringementrademark infringementrademark infringementrademark infringement

Any person found guilty of using a mark identicalwith or similar to a registered trademark in respectof the same or related goods/services and thus likelyto engender confusion among the relatedconsumers, shall be sentenced to imprisonment ordetention of no more than three years, and a fine ofno more than 200,000 New Taiwan Dollars may belevied in lieu thereof or in addition thereto.

Any person found guilty of knowingly selling,displaying with intent to sell, exporting or importinggoods bearing a trademark identical with or similarto a registered trademark, shall be sentenced toimprisonment or detention of no more than one year,and a fine of no more than 50,000 New TaiwanDollars may be levied in lieu thereof or in additionthereto.

In addition to the above, any manufactured, sold,displayed, exported or imported goods identifiedas infringing others’ registered marks shall besubject to confiscation, regardless of whether or notthey belong to the offender.

Copyright infringementCopyright infringementCopyright infringementCopyright infringementCopyright infringement

Any person found guilty of infringing upon another’seconomic rights in a work by means of unauthorizedreproduction, shall be sentenced to imprisonmentor detention of no more than three years, and a fineof no more than 750,000 New Taiwan Dollars maybe levied in lieu thereof or in addition thereto.

Any person found guilty of infringing upon another’seconomic rights in a work by means of unauthorizedreproduction with intent to sell or rent, shall besentenced to imprisonment or detention of no lessthan six months and no more than five years, and afine of no less than 200,000 and no more than 2million New Taiwan Dollars may be levied in addition.


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Any person found guilty of infringing upon another’seconomic rights in a work by means of unauthorizedreproduction of the work on an optical disk with intentto sell or rent, shall be sentenced to imprisonmentor detention of no less than six months and no morethan five years, and a fine of no less than 500,000and no more than 5 million New Taiwan Dollars maybe levied in addition thereto.

Any person who distributes the original or thereproductions of a work by means of an unauthorizedtransfer of ownership, which infringes upon another’seconomic rights in the work, shall be sentenced toimprisonment or detention of no more than threeyears and a fine of no more than 500,000 New TaiwanDollars may be levied in lieu thereof or in additionthereto.

Any person who knowingly distributes or publiclydisplays or possesses with the intent to distributethe reproduction of a work which infringes uponanother’s economic rights in the work, shall besentenced to imprisonment or detention of no morethan three years and a fine of no less than 70,000and no more than 750,000 New Taiwan Dollars maybe levied in addition thereto.

Any person who knowingly distributes or publiclydisplays or possesses with the intent to distributethe reproduction of an optical disk which infringesupon another’s economic rights in the work, shallbe sentenced to imprisonment or detention of noless than six months and no more than three yearsand a fine of no less than 200,000 and no more than2 million New Taiwan Dollars may be levied inaddition thereto. However, a person who importswithout the consent of the copyright holder theoriginal or legal reproduction of optical disk is notcriminally liable.

Punishment may be reduced if a person found guiltyof distributing or publicly displaying or possessingwith the intent to distribute, the reproduction of awork which infringes upon another’s economic rightsin the work, has divulged the relevant informationon the source of the infringing goods, leading tocapture of the supplier(s) of the infringing goods.

Any person found guilty of infringing upon another’seconomic rights in a work by means of publicrecitation, public broadcasting, public presentation,public performance, public transmission, public

display, adaptation, compilation, or rental, shall besentenced to imprisonment or detention of no morethan three years and a fine of no more than 750,000New Taiwan Dollars may be levied in lieu thereof orin addition thereto.

Any person found guilty of removing or alteringelectronic rights management information, ormanufacturing, importing, offering to the public foruse of any equipment, device, component,technology or information for disarming, destroying,or circumventing technological protection measures,shall be sentenced up to one year imprisonment ordetention, and a fine of no less than 20,000 and nomore than 250,000 New Taiwan Dollars may belevied in lieu thereof or in addition thereto.


A rights holder who has obtained an order forpreliminary injunction from the court to ban theimport/export of said suspected infringing goodsmay provide the Customs House with detailedshipping information on the suspected infringinggoods, such as the arrival/departure date, vesselor flight numbers, loading/destination port, numberof bill of lading, etc. and request temporary detentionof the suspected infringing goods.

TTTTTrademark monitoring on exporrademark monitoring on exporrademark monitoring on exporrademark monitoring on exporrademark monitoring on exporttttt

A trademark holder may record its registered marks,including details and duration term of the marks andits licensees with the Board of Foreign Trade (BOFT)based upon the “Trademark Monitoring Systems onExports” implemented in 1994 for the purposes ofbanning any suspected infringing goods fromexport.

Once an application for recordation is accepted bythe BOFT, the information supplied by the trademarkholder will be entered into a database accessible tovarious offices of the Customs House for checkingpurposes.

As such, the Customs House may conduct aclearance search if any commodity ready for exportbears a trademark identical with or similar to anyregistered mark recorded in respect of the same orrelated commodities according to the C.C.C. code.

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BorBorBorBorBorder enforder enforder enforder enforder enforcementcementcementcementcement

The Customs House may suspend release of anysuspected infringing goods ex officio, or at therequest of a trademark or copyright holder or itslicensee(s), or any relevant authorities. However,before so proceeding, the Customs House shallnotify the trademark or copyright holder to appearat the Customs House to examine if the detainedgoods are suspected infringing goods.

If the detained goods are identified as suspectedinfringing goods by the trademark or copyrightholder, the Customs House will detain the suspectedinfringing goods upon deposit of a security bond(the security bond premium is determined by theCustoms House and is generally equivalent to thetax paying value of the total imported goodssuspected of infringement or the FOB price of thetotal exported goods suspected of infringement) bythe trademark or copyright holder. Alternatively, theimporter/exporter may submit a counter securitybond to request release of the detained goods.

In any of the following situations, the Customs Houseshall cease detention of the suspected infringinggoods if:

1. The trademark or copyright holder fails to notifythe Customs House within twelve (12) days from thedate of notification of the acceptance of the requestfor detention of the suspected infringing goods thata merit lawsuit has been filed.

2. The merit lawsuit in relation to the detained goodsfiled by the trademark holder has been dismissedby the court irrevocably.

3. The detained goods are found by the court in afinal judgment not to have infringed the allegedtrademark or copyright right.

4. The trademark or copyright holder applies forcessation of detention of the suspected infringinggoods.

If the detained goods are found by the court in afinal judgment not to have infringed the allegedtrademark right, the trademark or copyright holdershall compensate the importer/exporter the losssuffered from the unjust detention of goods ordeposit of a counter security bond.

Other prOther prOther prOther prOther procedurocedurocedurocedurocedures for anti-smugglinges for anti-smugglinges for anti-smugglinges for anti-smugglinges for anti-smuggling

Except for parallel imported genuine goods, theCustoms House shall ex officio impose a fine of 1 to3 times the value of the imported or exported goodsdeclared at the Customs suspected of infringementof patent, trademark or copyright and shall detainsaid goods, in accordance with the regulationintroduced in January 2005 to the “CustomsRegulations for Anti-smuggling”.

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THAILAND

Introduction

The Thai Central Intellectual Property and International Trade Court (IP&IT Court) has exclusivejurisdiction over matters involving intellectual property rights (IPR) infringement. The ThaiDepartment of Intellectual Property (DIP) is the government body primarily responsible foradministration of IP registration and development of enforcement policy.

Criminal action is generally the most cost-effective method of IPR enforcement in Thailand.Unfortunately, due to the backlog of criminal IP infringement cases on the court docket, thereis a call at this time by many judges to de-criminalize IP infringement offences. For the timebeing, an IPR owner may still seek criminal prosecution of offenders in Thailand.

Civil action is generally not cost-effective if compensation is the desired remedy. Thai courtsrequire strict proof of actual damages; essentially forcing a plaintiff to rule out any theoreticalcause for the loss claimed other than the infringement. The infringer’s profits are not a measureof damages. Moreover, it is not difficult for a defendant to evade enforcement of a damagesjudgment by fraudulently hiding/transferring assets to become judgment proof. Civil action isonly recommended when the defendant has significant assets and authorized directors arereputable responsible persons.

The recent enforcement measures implemented by Royal Thai Customs are effective in termsof intercepting inbound shipments of fake goods. Exports and trans-shipment of fake goods isstill a serious issue for Thailand because Thailand’s policies generally favor unfettered accessto export markets as Thailand’s economy is based largely on its ability to export goods.


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Thailand’s legal system is based on civil law butborrows liberally from common law jurisdictions.Foreign companies are not treated differently by thelegal system except that certain formalities arerequired for a Thai Court to accept documents asevidence in proceedings (i.e., notarization andlegalization of documents, certification of copies,translations, etc.). Foreign registered patentsgenerally receive no protection. Protection is onlyoffered to inventions and designs registered locallyunder the Thai Patent Act. Remedies under theTrademark Act are available only for marksregistered in Thailand.

Only judges preside over trials regardless of thesubject matter. In IP proceedings, two judges of thelaw are assisted by a lay judge with subject matterexpertise in deciding the case.

Emergency interim rEmergency interim rEmergency interim rEmergency interim rEmergency interim reliefeliefeliefeliefelief

When faced with the immediate risk that evidenceof infringement of intellectual property rights will bedestroyed, tampered with or concealed, an AntonPillar Order, also known as a Writ of Prohibition anda Writ of Seizure, may be obtained to preserve theevidence for when a civil action is initiated.

Prior to filing a motion for an Anton Pillar order, anIPR owner should first file a motion with theIntellectual Property & International Trade (IP&IT)Court to take evidence in advance, to ensure thatall evidence related to the infringement will bemaintained and recorded into the court’s file for whena full civil action is filed. A motion to take evidencein advance is prescribed in Section 28 of The ActFor The Establishment of And Procedure ForIntellectual Property And International Trade CourtB.E. 2539 (1996).

In addition to a motion to take evidence in advance,the IPR owner may also move the IP&IT Court for anOrder to seize or attach the very same evidence,known as the Anton Pillar order. The provision for anAnton Pillar order is Section 29 of The Act For TheEstablishment of And Procedure For IntellectualProperty And International Trade Court B.E. 2539(1996). The IPR owner can simultaneously seek apreventative injunction under Article 50(1) (a) of theTRIPs Agreement, which is implemented in Thailand,

for example, in the case of patent infringement ortrade secret infringement under Section 77 bis ofthe Thai Patent Act (second amendment 1992), theCivil Procedure Code of Thailand Section 254, orthe Trade Secrets Act B.E. 2545 (2002) Section 8,respectively, to halt the infringing party from itsunlawful activities.

Preventative injunctions are also addressed in theRules of The Intellectual Property And InternationalTrade Court B.E. 2540 (1997). When consideringan application for an injunction, Rule 13 requiresthe IP&IT Court to consider several factors includingthe extent of damages both parties may incur, aswell as difficulty to enforce the judgment against theprospective defendant. In considering theapplication for an injunction, Rule 13 of the Rules ofthe IP&IT Court B.E. 2540 (1997) states that: thecourt shall grant the application if it is satisfied that

(1) There is reasonable ground for theapplication and the time the application is filed, aswell as sufficient reasons for the court to grant suchapplication, and

(2) The nature of the damage incurred by theapplication is such that the damage cannot beredressed by monetary measures or any other formof indemnity, or the prospective defendant is not ina position to compensate the applicant for hisdamage, or it might be difficult to enforce thejudgment against the prospective defendantafterwards.

In considering the application, the court shall takeinto account the balance of the extent of damagethat might be incurred by both parties….”

While Section 29 of the Act for the Establishment ofand Procedure for Intellectual Property andInternational Trade Court B.E. 2539 (1996), statesthat;

“Where a person apprehends that the evidence onwhich he may have to rely in the future will be lost orbecome difficult to produce when an intellectualproperty or international trade case is filed, or wherea party to a case apprehends that the evidence onwhich he intends to rely will be lost before he canadduce it in court or become difficult to adduce at alater stage, such person or party may apply to thecourt by petition or motion for an order directing suchevidence to be taken at once.”

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Civil Procedures and RemediesMaterial supporMaterial supporMaterial supporMaterial supporMaterial supporttttt

To support a motion for a preventative injunction andan Anton Pillar order, testimony, photographs anddocumentation about the intellectual property rightsat stake must be submitted to the IP&IT Court. Ininstances involving patent infringement,documentation and testimony would include theregistration of the patent in dispute, the investigationand development of the evidentiary documents, ananalysis of the appearance, functionality andsimilarity of the disputed product, a description of awitness’ background and experience with thepatented invention, the development of the invention,the components of the accused device claimed tohave been infringed, and statements showing thatthe infringing product would be immediately sold,offered or possessed for sale.

When seeking an injunction or an Anton Pillar order,the execution officers charged with enforcing suchorders are typically concerned about liability for thevalue of the infringing product sought to be attached,since officials are potentially liable for damagesunder Thai law to the accused person(s) if thecharges are later shown to lack merit and the claimagainst the accused is ultimately unsuccessful.Therefore, it is extremely helpful to first have aTrademark Registrar or Patent Examiner skilled inthe art of the product at issue to analyze the accusedinfringing product and to have the Registrar orExaminer provide the court and/or execution officerwith a statement confirming that there is aninfringement.

To enforce an Anton Pillar order, a separate anddistinct petition to execute the IP&IT Court warrantmust be filed with the Execution Department at theMinistry of Justice. The petition must be filed withthe original court warrant. A Court Execution Officerwill be present to witness securing and attachmentof the infringing product and to affix the Court Orderand Court Seal onto the infringing product. Theprocess is complete after the inventory preparedby the court officials and execution of the CourtOrders is acknowledged by the accused person.

This type of emergency relief can be granted andexecuted in as little as one to three days, dependingon logistics (such as the distance between the court,the Execution Office, the location of the infringingdevice and the location of the warehouse where the

seized goods will be kept for trial). Time and trafficare also very real factors that can play havoc withexecution of an order for emergency relief, as theExecution Officer generally will not execute the orderafter sundown or on weekends.

Time and costsTime and costsTime and costsTime and costsTime and costs

A litigant involved in a civil action for infringement ofIPR should expect the case to proceed to judgmentin the Court of First Instance (IP&IT Court) within15-24 months, depending on the complexity of theissues involved in the case. If appealed, the casemay be extended for another 1-2 years to obtainjudgment from the Thai Dika Supreme Court.

A litigant seeking damages from an infringer shouldexpect to pay up to US$5000 as a deposit againstcourt fees. Legal fees and expenses for a civil actionfor IPR infringement should be in the range ofUS$10,000 for a straightforward matter to US$15,000and up for a complex matter. Experienced litigatorsgenerally charge between US$200-$300 per hourfor services rendered.

Recovery of expenses, including lawyer’s fees, ispossible but is limited by court rule to a statutoryschedule of fees, which are nominal for all practicalpurposes

All remedies apply equally to both domestic andforeign rights holders.

Note: It is not usual for the courts to order a guiltyparty to disclose the identity of any third partiesinvolved in the production and distribution ofinfringing goods and their channels of distribution.There is no discovery procedure in Thailand. Thecourts do have contempt power, but there is norecord of any case where a litigant has been forcedto disclose information in respect to an infringer’ssupply chain.

RecoverRecoverRecoverRecoverRecoveryyyyy

The following is a list of theories of recovery inThailand:

♦ Rights holders have protection under specificlegislation, such as the Patent Act, Trademark Act,Copyright Act, etc., rather than case law


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♦ Statutory remedies including damages,injunction, forfeiture, criminal liability, andcancellation are available under specific legislationfor IPR

♦ Civil and Commercial Code provides for tortrecovery for “wrongful act” of infringement

There is debate over whether one may assert atheory based on applied work of art under theCopyright Act to protect and enforce unregistereddesigns in Thailand.

Resolving disputesResolving disputesResolving disputesResolving disputesResolving disputes

The process of settling an IP dispute not intendedto go to trial includes the following steps:

♦ Send a demand letter to the infringer directingthem to cease their infringing activity. This is followedby settlement negotiations and execution ofUndertaking.

♦ If the infringer refuses to voluntarily settle,decide whether to pursue a civil action, injunction,attachment of evidence by Anton Pillar order, orconduct a criminal raid on the infringer’s premises ifthere is sufficient evidence of infringement to seizethe infringing products.

♦ The raid or Anton Pillar seizure is followed byfiling criminal charges or a civil lawsuit based onevidence seized during raid.

There is no meaningful system of discovery inThailand legal system

Filing a civil infringement lawsuit in Thailand involvesuncovering the infringement by investigation, filingcivil complaint listing a basic statement of facts andcause of action with IP&IT Court, and preparing andsubmitting witness affidavits, supporting documentsand evidence, and a list of witnesses that will testifyto the court. It is often helpful to have a localdistributor to testify in Thai about the impact ofinfringing goods on the market and consumerconfusion. The Patent or Trademark Examiner mayalso be useful to testify as an expert about particularaspects of the infringing goods as compared to thegenuine branded goods, or, in the case of patents,the patented claims of the invention or design.

There are several other basic reference points ofwhich readers should be aware.

! Only 10 to 20 civil patent infringement casesare filed each year in the Thai courts

! Business method patents have not beensuccessfully granted by the Thai Patent Office.

! Courts and practitioners lack the technicalexpertise to try cases involving sophisticatedpatented technology

! No truly professional Patent Bar exists; patentlawyers and agents often do not have a science ortechnical background.

! Thai patentees most commonly try to registerand enforce design or petty patents, because theexpense is less

! The most common defense to a patentinfringement lawsuit is to challenge the validity ofthe patent.

! In cases involving claims of infringement ofprocess claims, the patentee merely must prove thatthere are similar or identical end-products and theburden of proof is reversed so that the accused mustprove he or she used a different process than thepatented process.

Foreign court judgements against Thai companiesare generally unenforceable in Thailand, so it is notrecommended that choice of law or forum be set inany jurisdiction other than Thailand when dealingwith a Thai party in a transaction involving patentedtechnology.

Generally, private IPR owners and their legalrepresentatives act to initiate a criminal inquiry byfiling a complaint. Law enforcement officialsgenerally do not act on an ex officio basis toinvestigate and prosecute infringement cases,although there are exceptions.

Generally private investigators and law firms areretained by IPR owners to conduct investigationsseeking to identify the source of supply of infringinggoods. Law enforcement officials are generally not



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viewed as effective in carrying out suchinvestigations.

In most cases, IPR owners’ representatives file acomplaint with a police unit (relevant police teamsinclude those from the Department of SpecialInvestigation (DSI), Economic Crime InvestigationDivision (ECID), Crime Suppression Bureau (CSB),Bangkok Metropolitan Police, and other localprovincial police units.

Thai Criminal Procedure Code does allow a privateparty to initiate and prosecute a private criminalcomplaint in the event that police or publicprosecutors are not involved in a criminalprosecution.


Theoretically, prison terms of up to four years areauthorized by Thai IP laws, but in practice prisonterms are almost always suspended and very fewinfringers actually spend any time in prison.

Courts are authorized to impose fines of up to800,000 Baht (approximately US$20,000) forinfringement of IPR. Fines imposed depend on theright infringed and the scale of the infringing activity.

Goods seized as a result of a criminal raid aredestroyed following a sentence of conviction.

Community service may be ordered in appropriatecases.

In a private criminal prosecution where the IPR ownerfiles a private criminal complaint and has its ownlegal representative act as the prosecutor,compensatory damages may be awarded. If thecase is handled by police or public prosecutors,damages are not recoverable. In a criminal copyrightinfringement case, one-half of any fine imposedagainst the infringer by the court is awarded to thecopyright owner. Copyright infringement is viewedas a violation of a personal right, while other IPRinfringements are viewed as crimes against the state.

In a criminal case, police obtain a search warranton an ex parte basis, and then seize all suspectedinfringing goods from the infringer’s premises priorto further investigation and trial. If the police andIPR holder are acting in good faith at the time of

applying for the search warrant, they are generallyimmune to any liability arising from the seizure inthe event that the criminal prosecution fails. If thepolice or IPR holder are reckless or negligent inseeking a search warrant, and the prosecution fails,both the police and the IPR holder may be held liablefor damages based on a theory of trespass and/orconversion, although countersuits are quite rare.

In Thailand a trademark owner, in effect, has threeoptions in detaining suspect shipments of counterfeitgoods using the Royal Thai Custom’s Recordal/Notification Procedures:

Option 1: General RecorOption 1: General RecorOption 1: General RecorOption 1: General RecorOption 1: General Recordal/Notificationdal/Notificationdal/Notificationdal/Notificationdal/Notificationto Departo Departo Departo Departo Department of Intellectual Prtment of Intellectual Prtment of Intellectual Prtment of Intellectual Prtment of Intellectual Properoperoperoperoperty (DIP)ty (DIP)ty (DIP)ty (DIP)ty (DIP)

This is the most formal procedure available andresults in long-term cooperation between theDepartment of Intellectual Property, Customs andthe brand owner/legal representative. In order toavail this option to enable Customs to monitor anddetain suspected cross border shipments of fakegoods, a trademark owner must first establish itslegal rights in accordance with the Notification ofNotification ofNotification ofNotification ofNotification ofMinistrMinistrMinistrMinistrMinistry of Commery of Commery of Commery of Commery of Commerce 1987ce 1987ce 1987ce 1987ce 1987. This is achieved bydirectly filing an application with the TrademarkRegistrar. The application will be submitted to thecompetent authorities at the Department ofIntellectual Property (DIP), notifying the TrademarkRegistrar of the trademark owner’s request to prohibitthe importation/exportation of the products bearingthe counterfeit mark. The trademark owner is obligedto submit the following documentary evidencetogether with the application:

1.) A certified copy of the Trademark RegistrationCertificate or a certified copy of the TrademarkRegistration Official Record2.) An original Power of Attorney when authorizinga person to act on behalf of the trademark owner3.) The original copy of the Juristic Person Certificateissued not more than six months from the date ofissuance of the certificate when the owner of thetrademark is a juristic person4.) Letter from the trademark owner assumingresponsibility for any damages that may arise dueto the application for protection5.) Sample of actual trademark label used with thetrademark owner’s products.


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In the event the trademark owner is not domiciled inThailand and the documents listed in (2) and (3)were executed in a foreign country, these documentsmust be certified by both a notary public andlegalized by the Thai Consulate or Thai Embassy inthat country.

Any trademark owner who is not domiciled inThailand but wishes to apply for protection musthave a local office or representative (i.e., Tilleke)where he/she can be contacted by the Registrar.

After the trademark owner has notified the TrademarkRegistrar by submitting all the evidence asprescribed by the Notification, the TrademarkRegistrar will officially forward the request and allsupporting documents to the Customs Departmentfor its records.

Option 2: PrOption 2: PrOption 2: PrOption 2: PrOption 2: Procedurocedurocedurocedurocedure in Select Casese in Select Casese in Select Casese in Select Casese in Select Casesbeforbeforbeforbeforbefore Customs Authoritye Customs Authoritye Customs Authoritye Customs Authoritye Customs Authority

This procedure is more of a case by case procedureand presupposes that the trademark owner hascomplied with option 1 above. It is available in caseswhere the trademark owner has specificallyidentified a counterfeit shipment that it knows is dueto arrive in Thailand or be shipped from Thailand,and the trademark owner has grounds to show thatgoods are counterfeit. In such an instance, thetrademark owner can petition the Customs Office toinspect incoming or outgoing shipments prior to therelease or delivery of the goods. Along with thepetition, the trademark owner is required to provideCustoms officials with specific and detailedinformation regarding the shipment, i.e. name oridentity of the vessel suspected of carrying theforged or imitation goods, time of the vessel’s arrivalin Thailand, the place where the forgery or imitationgoods are to be kept, and the name of the importer.A letter of indemnity for possible damages issometimes selectively required by Customs, whichis payable only if the petition is found to have beenmade in bad faith or has resulted from grossnegligence.

Upon receiving the request from the trademarkowner for inspection of the suspect imported orexported goods, Customs officials will first checktheir records to verify that the trademark owner hasduly filed a request with the Trademark Registrar fortrademark protection.

Under the Code of Customs Practices andRegulations 1987 and the Notification of the CustomsDepartment No. 6/2531, the Customs official mustverify/examine:

♦ whether the petition contains all of the requiredinformation and whether the applicant is the lawfultrademark owner or an assignee; and♦ whether the applicant has provided thedocumentary evidence of trademark ownership,which has been certified by the Trademark Registrar.

In order to verify the validity of the petition, theCustoms official will consider the applicant’sdocuments and the evidence that has beenforwarded by the Trademark Registrar. In addition,the Customs official may also question the applicantor his/her representative to clarify why he/shesuspects that goods bearing forgeries or imitationsof his/her trademark are being imported or exported.If the Customs official finds the petition credible, thenan inspection or examination of the suspectcounterfeit goods will be conducted in the presenceof the applicant.

Option 3: ShorOption 3: ShorOption 3: ShorOption 3: ShorOption 3: Short Fort Fort Fort Fort Form Recorm Recorm Recorm Recorm Recordal Prdal Prdal Prdal Prdal Procedurocedurocedurocedurocedureeeeebeforbeforbeforbeforbefore Customs Authoritye Customs Authoritye Customs Authoritye Customs Authoritye Customs Authority

As it is often difficult for a trademark owner to providevery specific dates and times of a suspected vessel’sarrival or the name of the importer or exporter of thecounterfeit goods, this form of recordal wasdeveloped by Tilleke and Customs to create a“WATCH LIST” for particular marks under ourrepresentation. Tilleke entered into an MOU with ThaiCustoms in September 2003, and agreed to providea 24 hour/7day hotline to support Customs in theevent they have reason to suspect a shipmentcontains fake goods bearing our clients’ trademarks.

In recent times we have lobbied Royal Thai Customsto become much more proactive and Customs havenow assumed a greater role in clamping down onimports and exports of infringing materials. Muchof the impetus for these new efforts is a direct resultof a government campaign to ensure thatgovernment departments coordinate their efforts toclampdown on piracy and counterfeiting.

This option is available to you and could be asubstitute procedure in place and instead of filingthe more formal application with the Trademark

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Registrar (per Option 1). In this short form procedure,an expedited application is submitted to Customscomprising a letter requesting specific cooperationcalling for monitoring and seizure of shipments ofspecific goods or goods bearing a specifictrademark. It is advisable to include a generalexplanation on product identification, allowingCustoms to detect the tell-tale differences betweenthe counterfeit and genuine goods. We also typicallyadvise Customs who our clients’ authorizedimporters are so that Customs may screenshipments more efficiently. The letter of request willthen be copied to each Customs port of entry andexit around Thailand. This way, Customs will paymore attention to the specified goods during theirinspections and “watch” for shipments of goodsbearing the notified marks.

If the seized goods are confirmed to be counterfeit,the Customs official will file a claim against theimporter based on importing restricted andprohibited goods, in violation of Section 27 of theCustoms Act and Section 110 (1) of the TrademarkAct. The Customs Committee has the authority tofine an importer an amount that is one time the valueof the seized goods. If the importer does not complywith The Customs Committee’s order, the case willbe referred to the Intellectual Property andInternational Trade Court (IP&IT Court). The courthas the authority to fine an importer an amount upto four times the value of the seized goods. The courtusually reduces the fine upon the amount of thecounterfeit goods. The fine will then be given to theState. On the other hand, the importer/exporter willhave a criminal record and can face maximumsentences if they re-offend. The seized goods willbe kept in custody and be destroyed later.

To proceed under Section 27 of the Customs Actand Section 110 (1) of the Trademark Act,cooperation from the trademark owner (orrepresentative) is necessary. With our hotline,Customs call us and tell us there is a shipment thathas been detained. Then, we have a limited amountof time (24-72 hours, sometimes extended) for thetrademark owner or representative to attend the portand inspect and confirm whether the seized goodsare counterfeit and submit documents to prove thatthe TM owner is the rightful owner of the trademark.Documents to be submitted include a Power ofAttorney and the Certification of TrademarkRegistration.

InforInforInforInforInformation/documents rmation/documents rmation/documents rmation/documents rmation/documents requirequirequirequirequirededededed

Typically, when making a recordal Customs’ WatchList (as per Option 3) the following documents andinformation are required:

(a) A list of the trademarks and the goods coveredby the registration for which a watch is to bemaintained

(b) Certified copies of the relevant trademarkregistration certificates (which evidence title of therights)

(c) A copy of the Power of Attorney (the original ofwhich should be notarised and also legalised)

(d) Details and other information as to how togenerally identify or pinpoint a counterfeit versionof the product, and relevant details as to how todistinguish such fakes from authentic products (wedo not give commercially sensitive product securityinformation because of the danger of leaks)

(e) Information as to where the genuine productsare manufactured

(f) Details of any suspected or known unauthorisedimporters (only if this information is known)

(g) Details of the relevant authorised importers/Thaidistributors/suppliers. It should be noted that evenif Customs are aware of the name of the authorisedlocal distributor/importer, there is always the dangerthat legitimate imports can still be detained due toCustoms lack of experience in product identification.This danger derives from the fact that numerousCustoms officials are involved with checking importsand it may occur that an inspecting officer may notbe aware of all information submitted. In the eventthat genuine goods imported by authorised andlegitimate importers have been detained, we canconfirm with Customs that such goods may bereleased. This type of occurrence is rare, but it doeshappen

It is usually beneficial to present Customs with asmuch information as a brand owner is comfortablewith so as to allow them to make a clear and informedjudgement in cases of suspect goods. For somebrand owners, we have provided Customs officialswith training in product identification and that type

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of support is well-received. However, for someproducts such hands-on training may not benecessary: enough information being given in theform of photographs and information of specificproduct attributes which can clearly demonstratethe authenticity of a product. Generally, a notifyingparty is free to provide Customs with whateverinformation is believed to be most useful.

TimescalesTimescalesTimescalesTimescalesTimescales

Option 3 typically takes about three to four weeks,while options 1 and 2 take longer, usually in theregion of 2-3 months.

According to the letter of Customs’ regulations,Customs authorities have only 24 hours from the dateof detention to obtain confirmation that the goodsare counterfeit. If the goods are not inspected withinthe 24-hour deadline, the suspected counterfeititems are subject to release to the importer. Not onlydoes this encourage the importer to continueshipping counterfeit products, but also, mostimportantly, the reputation of the genuine product isjeopardized.

We have worked out an arrangement for someflexibility with Customs, allowing detention in somecases up to 10 days (in compliance with TRIPS).However, in practice, Customs still require us torespond within 2-3 days provided we can assurethem we are able to quickly produce proof ofauthority to act on behalf of the trademark owner(usually a Power of Attorney). Our hotline usuallyensures that these deadlines can be met.

The most time and cost-effective option is to have arepresentative from the IP owner’s local licensee/distributor attend the port with the legalrepresentative. The local distributor should of coursebe familiar with the products and should be able toreadily identify whether they are counterfeit goods.

If the local distributor is unable to assist, the legalrepresentative can still act provided specificknowledge is to hand with respect to productidentification so as to be able to explain how todetermine the differences between counterfeit orgenuine products. Customs may in some instancespermit samples to be removed for inspection. Wesimply photograph the goods in high resolutiondigital photos and send the photos to the trademarkowner for examination.

RecommendationsRecommendationsRecommendationsRecommendationsRecommendations

IPR owners generally should consider implementinga holistic program to address cases of sustainedinfringement. Ad hoc strategies are generally noteffective. Sustained campaigns should include amixture of criminal actions at the retail, wholesaleand manufacturing levels, civil actions against largevolume wholesalers, importers and manufacturerswith assets, customs recordals, targeted cease anddesist letters, negotiation for compensation inappropriate cases and warning advertisements inmedia.

When possible, criminal charges in addition to IPrelated offences should be brought againstoffenders, such as tax avoidance, immigration,labour, and other regulatory offences. Only bycreating a maximum and sustained level ofdeterrence will an IPR owner suppress infringementof its IP over the long term.

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UNITED ARAB EMIRATES

Introduction

Laws relating to intellectual property rights are relatively recent the United Arab Emirates (UAE).Prior to 1992, there were no specific IP laws in the UAE. However, in 1992, the UAE promulgatedthree main IP laws: UAE Copyright Law No. 40 of 1992, UAE Trademark Law No. 37 of 1992and UAE Patent and Design Law No. 44 of 1992.

In 2002, the UAE amended its IP laws by issuing:(a) Federal Law No.7 of 2002 concerning Copyright and other Associated Rights (the “CopyrightLaw”), which repealed the UAE Copyright Law No. 40 of 1992.(b) Federal Law No. 17 of 2002 concerning Patents and Industrial Designs and Models (the“Patent and Design Law”), which repealed UAE Patent and Design Law No. 44 of 1992.(c) Federal Law No. 8 of 2002, which amended certain provisions of the UAE Trademark LawNo. 37 of 1992 (collectively referred to as the “Trademark Law”).

The UAE has also adopted the following international IP conventions/treaties/agreements:(a) WIPO Convention (Federal Decree No. 21 of 1975)(b) Paris Convention for the Protection of Industrial Property (Federal Decree No. 20 of 1996)(c) Patent Co-operation Treaty (Federal Decree No. 84 of 1998)(d) Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) (Federal Decree No. 21 of 1997)(e) WIPO Copyright Treaty (Federal Decree No. 10 of 2004)(f) Berne Convention for the Protection of Literary and Artistic Works (Federal Decree No. 10 of 2004)

The Federal laws provide, inter alia, for registration, enforcement procedures and penalties.Each of these laws has empowered a UAE Federal Ministry to implement its provisions.Administrative, civil and/or criminal action may be taken by the affected party, provided suchparty is the registered holder of such right in the UAE, where the right relates to trademark orpatents and designs. However, as regards copyrights, non-registration of the right or non-deposit of the work shall not prejudice the author’s rights for protection under the CopyrightLaw.


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Civil Procedures and RemediesAdministrative actionAdministrative actionAdministrative actionAdministrative actionAdministrative action

For infringement of copyrights, a complaint can befiled with the Ministry of Information and Culture.

For infringement of patents and designs, a complaintcan be filed with the Department of IndustrialProperty in the Ministry of Finance and Industry.

For infringement of trademark, a complaint can befiled in the Emirates of Dubai and Sharjah with thelocal administrative/licensing authority, being theDubai Department of Economic Development andthe Sharjah Municipality respectively. In the Emirateof Abu Dhabi and the Emirate of Ras Al Khaimah, acomplaint can be filed with the Ministry of Economyand Commerce.

A complaint can be made by submitting a letteraccompanied by the requisite documentaryevidence (e.g. invoices, samples of the originalproducts and the counterfeit products etc.).

Thereupon, the inspectors of such Ministry/administrative authority will conduct a raid and seizethe offending products. They may also seize anydocuments relating to the products such as bills oflading, invoices or other documents that mayindicate the origin of the products or their place ofmanufacture. Representatives of the complainantmay be present during such raids to assist theinspectors in locating and identifying the infringingproducts.

The seized goods will be transferred to the Ministry’s/authorities’ warehouse for further inspection andpossible ultimate destruction. Depending upon thenature of the offence, the Ministry/authorities mayrefer the matter to the Public Prosecutor’s office inthe UAE courts for criminal investigation.

Nominal fees are charged by the Ministry/administrative authority for taking action on acomplaint.

Civil actionCivil actionCivil actionCivil actionCivil action

There are no specialized IP courts in the UAE. Acivil action can be filed in a UAE civil court followingthe administrative action as mentioned above orsimultaneously therewith. The most common reliefsavailable in civil actions under the IP laws aresuspension, seizure, account for profits, disposaland/or destruction of the counterfeit products. Asfor damages, the courts, in general, are reluctant toaward substantial damages. Proceedings are longdrawn and interim reliefs are generally difficult toobtain.


Under Article 34 of the Copyright Law, the court may,upon a petition by an affected party, order:

(a) preparation of a detailed description of thecounterfeit work

(b) suspension of publication, exhibition orreproduction of the counterfeit work

(c) seizure of the counterfeit work and copies thereof,including any materials/equipment used in thisregard

(d) prohibition of continuation of public performance

(e) determination of the income derived from suchcounterfeit work and freeze such incomes

(f) appoint an expert to assist the bailiff (such expertfees are to be deposited in advance in the court’streasury by the petitioner). The petitioner is requiredto commence a civil suit on merits within fifteen (15)days of the date of issue of the order.

Under Article 35 of the Copyright Law, the personagainst whom the order under Article 34 has beenissued may submit a petition within twenty (20)working days from the date of the order under Article34.

The court may, thereafter, uphold the order issuedunder Article 34, cancel it wholly or partially, ornominate an officer of the court to re-publish, exploit,exhibit or manufacture the disputed work anddeposit the income therefrom in the court’s treasuryuntil final judgement.

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The Copyright Law does not make any directreference to the award of damages though the penalsections in the Copyright Law are “without prejudiceto any other severer punishments to be imposed byany other laws”.

TTTTTrademarkrademarkrademarkrademarkrademark

Under Article 40 of the Trademark Law, any personwho suffers damages as a result of another personcounterfeiting, imitating, unlawfully using or affixingsuch trademark on his products or selling suchproducts or using a trademark that is prohibitedunder the Trademark Law for registration or entersstatements on his trademarks that lead to a beliefthat they have been registered, may file a claim inthe civil courts against the other for compensationof the damages caused.

Under Article 41 of the Trademark Law, the ownerof a trademark may obtain a precautionaryattachment over the counterfeit products from acompetent court, in the course of a civil or criminalcase (or prior to filing thereof) in connection withany act of infringement. An applicant forprecautionary attachment must, if deemednecessary, provide a financial guarantee in anamount to be determined by the court tocompensate the person whose products have beenattached. The precautionary attachment shall beconsidered null and void unless the ownercommences a civil suit on merits within eight (8) daysof the date of issue of the order.

Under Article 42 of the Trademark Law, the personwhose products have been attached may file a claimfor compensation after the expiry of the eight (8)day period, or within ninety days (90) of the finaljudgment rejecting the applicant’s claim on themerits.

Under Article 43 of the Trademark Law, the courtmay order confiscation of the infringing productsand deduct their price from the fines orcompensation or order disposal thereof in anymanner deemed fit by the court, includingdestruction of the products, packing materials and/or machines/instruments used in the act ofinfringement. The court may order all of the aboveactions even in the case of acquittal of the defendant.


Under Article 60 of the Patent and Design Law, theaffected party may obtain a precautionaryattachment of infringing inventions, industrialmodels, designs or facilities, in the course of a civilor a criminal action (or prior to filing thereof) inconnection with any act of infringement or unlawfulactivity in contravention of the Patent and DesignLaw, or any contracts or licenses granted inaccordance with its provisions.

Under Article 61 of the Patent and Design Law, anapplicant for precautionary attachment must providea financial guarantee in an amount determined bythe court prior to issuance of the attachment orderand must commence a civil suit on merits within eight(8) days of the date of issue of the order. The personwhose products have been attached may file a claimfor compensation after the expiry of the eight (8)day period, or within ninety (90) days after a finaljudgment rejecting the applicant’s claim on themerits.

Under Article 15 of the Patent and Design Law theholder of a Patent or Inventor’s Certificate has theright to obtain an injunction preventing others, whohave not taken his prior approval, from exploitationof the right.

Under Article 63 of the Patent and Design Law, thecourt may order the export or other disposal of theattached items, including destruction of instrumentsor tools used for infringement. The court may orderall of the above actions even in the case of acquittal.

A civil action may take six months to two years tofinalise before the civil courts.



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The initiation of an administrative action and/or civilaction does not prevent the affected party from filinga police complaint.

A complaint can also be filed with the police directlywithout first filing a complaint with the Ministry/administrative authority or such complaint may befiled with the police after the raids have been carriedout by the inspectors of the Ministry/administrativeauthority. No fees are payable for pursuing actionthrough the police directly.

The police will conduct a raid and seize the offendingproducts, if this has not already been done by theinspectors of the Ministry/administrative authority.Thereafter, the police will call the owners of the raidedoutlets, take their statements and refer the matter tothe Public Prosecutor’s office in the UAE courts forcriminal investigation.

At the Public Prosecutor’s office, both parties willbe heard again and if the Public Prosecutor issatisfied that a case exists, he will instituteproceedings against the offending party.

The remedies provided for criminal offences relatingto copyrights, patents and designs and trademarkare generally as follows:


Under Article 37 of the Copyright Law, anyone whoinfringes any of the literary or economic rights ofthe author or the holder of the associated right eitherby making available on the computer, internet,information or communication nets or other meansor by sale, rental or putting in circulation any work,performance, phonogram or broadcasting programprotected under the Copyright Law, shall bepunished with imprisonment for a period of not lessthan two (2) months and/or payment of fine of notless than UAE Dirhams ten thousand (AED 10,000)and not more than UAE Dirhams fifty thousand (AED50,000) – 3.673 Dirhams = US$1.

This penalty may be doubled depending upon thenumber of infringed works, performance,phonograms or broadcasting programs. In case ofrepeat offenders, the penalty will be imprisonmentfor a period of not less than six (6) months andpayment of fine of not less than UAE Dirhams fiftythousand (AED 50,000).

Under Article 38 of the Copyright Law, anyone whoillegally manufactures or imports for sale or rental,any equipment, instruments or apparatus forpurposes of committing fraud against anytechnology used by the author or holder of theassociated right or who tampers with anytechnological protection provided or who loads/stores unauthorised copies of programs,applications or databases shall be punished withimprisonment for a period not less than three (3)months and/or payment of fine of not less than UAEDirhams fifty thousand (AED 50,000) and not morethan UAE Dirhams five hundred thousand (AED500,000).

In the case of repeated offenders, the penalty willbe imprisonment for a period of not less than nine(9) months and a fine of not less UAE Dirhams twohundred thousand (AED 200,000).

Further, under Article 39 of the Copyright Law,anyone using computer programs or its applicationwithout prior permission from the author or hissuccessors shall be punished with payment of fineof not less than UAE Dirhams ten thousand (AED10,000) and not more than UAE Dirhams thirtythousand (AED 30,000) for each such computerprogram, application or database.

In the case of repeated offenders the penalty willbe not less than UAE Dirhams thirty thousand (AED30,000).

Without prejudice to the fines and imprisonmentprovided, the court, under Article 40 of the CopyrightLaw, is also empowered to order:

(a) confiscation of the forged copies or the onesderived from such forged copies

(b) destruction of such copies

(c) confiscation of the equipment and instrumentsused in committing the forgery.

The court, in instances where such forgery has beencommitted for not more than six (6) months, couldalso order the closure of the entity indulging in suchactivities.


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Under Article 37 of the Trademark Law, anyone whoinfringes a trademark by counterfeiting, imitating,unlawfully using or affixing such trademark on hisproducts or selling such products shall be punishedwith imprisonment and/or payment of fine of lessthan UAE Dirhams five thousand (AED 5,000).

Under Article 38 of the Trademark Law, anyone whouses a trademark that is prohibited under theTrademark Law for registration or enters statementson his trademarks that lead to a belief that they havebeen registered shall be punished with imprisonmentfor a period not more than one (1) year and/orpayment of fine of not less than UAE Dirhams fivethousand (AED 5,000) and not more than UAEDirhams ten thousand (AED 10,000).

In the case of repeated offenders, besides the abovementioned penalties the court could order theclosure of the entity indulging in such activities for aperiod of not less than fifteen (15) days and not morethan six (6) months.

In addition to the specific remedies for criminaloffences, the protections under Article 43 (discussedabove under the section Civil Action) are alsoavailable in a criminal action.


Article 62 of the Patent and Design Law providesfor imprisonment of up to two (2) years, and for finesof not less than UAE Dirhams five thousand (AED5,000) to be imposed on violators of the Patent andDesign Law.

Violations include the submission of false or forgeddocuments in order to obtain a Patent, Investor’sCertificate or Know-how protection in addition to thecopying of protected inventions, processes,industrial designs or models, or elements of know-how or the intentional infringement of any rightprotected by the Patent and Design Law.

In addition to the specific remedies for criminaloffences, the protections under Article 60 and 63(discussed above under the section Civil Action) arealso available in a criminal action.

There is no Federal Customs Law. Each Emirate inthe UAE has its own Customs law. For example, inthe Emirate of Dubai Customs Law No. 4 of 1998addresses the issue of counterfeit and piratedgoods. According to this Customs Law, counterfeitor pirated goods are considered prohibited goodsthat shall not be imported or exported from or to theUAE. The Customs Law has given Customs officialswide and flexible powers when dealing with anycounterfeit or pirated goods.

The major disadvantage of this option is that detailsof the shipment must be given by the owner of theIP rights to the Customs authorities. Whereupon,Customs officials will inspect the goods and send asample to the criminal laboratory in order to confirmthat they are indeed counterfeit or pirated goods.The Customs authority may then either decide todestroy the counterfeit or pirated goods or maytransfer the matter to Public Prosecutor’s office forcriminal prosecution.

Under Article 36 of the Copyright Law, Customsauthorities may upon an application by the authoror holder of the right, suspend the release of thegoods for a maximum period of twenty (20) days. Adeposit of an appropriate amount, to be decidedby the Customs authorities must be made by thecomplainant to confirm the seriousness of theapplication. The Customs authorities shall decidethe application within three (3) days from the dateof presentation of the complete application.

There are no fees charged for filing a complaint withthe Customs authorities for IP infringement.

CourCourCourCourCourt feest feest feest feest fees

Court fees are payable on filing the claim and willbe based on the amount claimed for damages orassessed by the court. Normally, the court will makean order for the payment of court fees upon deliveryof the judgment.

The amount of court fees to be paid differs fromEmirate to Emirate. Court fees are required to bepaid separately at every stage of litigation, i.e. Courtof First Instance, Court of Appeal, Court ofCassation, for Attachments and for Executions. Inthe Emirate of Dubai, court fees are normally subject

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to a maximum of AED 30,000 and a minimum ofAED 10. In all the other Emirates, court fees arenormally subject to a maximum of AED 10,000 anda minimum of AED 50.

Counsel’Counsel’Counsel’Counsel’Counsel’s feess feess feess feess fees

Arab counsel normally charge a percentage of theasserted claim as their fees. Counsel fees aregenerally payable in advance. They generally donot charge by the hour. Legal consultants, whoprepare the entire brief and do most of the ‘spadework’, charge hourly rates which vary from US$ 250to US$ 500 depending on the complexity of the caseand the seniority of the lawyer dealing with thematter. Court fees and fees incurred on legalconsultants are not recoverable.

ConclusionConclusionConclusionConclusionConclusion

Administrative action is normally very fast andefficient. However, administrative action is availableonly in the Emirates of Dubai, Abu Dhabi, Ras AlKhaimah and Sharjah.

Civil actions have been found slow and expensive.The courts are conservative in awarding damages.During the pendency of a criminal action a civil courtwill not proceed to hear the case until the criminalaction is finally settled.

The preferred course in the UAE is to commencecriminal proceedings, which are both effective andexpeditious.

The UAE has been taking, and is continuing to take,significant steps in carrying out enforcement activityfor the protection of intellectual property and thecourts have granted protection where infringementis established.

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Under the English judicial system the routes for obtaining civil and criminal redress are, for themost part, kept separate.

When it comes to the enforcement of intellectual property rights, the vast majority of claimantsrely on the civil process. This decision is principally dictated by the fact that the civil remediesavailable to the claimant - damages and injunctions (both interim and final) are more useful tothe claimant than punishment of the offender in the name of the State.

However, there are certain criminal offences relating to the infringement of intellectual propertyrights that a claimant might wish to pursue in tandem with civil redress. If the prosecution issuccessful, the accused’s conviction could well serve as a useful deterrent to other potentialinfringers.

Overall, the true value of each type of intellectual property right protected under English Lawis dictated to a significant degree by the range and efficacy of the civil remedies available forits infringement.

Introduction

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When it comes to the enforcement of intellectualproperty rights, the vast majority of claimants relyupon the civil process. Even where there is a certainoverlap between criminal offences and the assertionof intellectual property rights in the civil sphere, theclaimant will ordinarily prefer the latter. This is for anumber of reasons. Firstly, the claimant is not ableto obtain any interim relief pending the court’s finaldecision in a criminal trial. Secondly, the criminalprocess does not present any opportunity to extractinformation from the defendant prior to the trial inthe same way as disclosure permits within the civilprocess. Thirdly, the claimant must also overcomea higher burden of proof within the criminal sphere:guilt beyond reasonable doubt, rather thaninfringement on the balance of probabilities.

PrPrPrPrPre-trial re-trial re-trial re-trial re-trial relief – interim injunctionelief – interim injunctionelief – interim injunctionelief – interim injunctionelief – interim injunction

An injunction is an order of the Court which dictatesthe future conduct of a party to litigation. In the eventthat the party wilfully disobeys the order, it will beheld in contempt of court. This is punishable by afine, imprisonment or sequestration of assets. Aninjunction can be both mandatory – an order topositively undertake a particular act or prohibitory –an order to refrain from doing a particular act. Thelatter type is most common within the sphere ofintellectual property rights infringement.

An interim injunction can represent an effective andinexpensive means of obtaining redress for anintellectual property rights holder, prior to a fullhearing of the issues. The injunction can preventthe alleged infringer from beginning or continuingwith a particular course of action until the mattercomes to full trial.

The question of whether an interim injunction shouldbe granted is always a matter for the court’sdiscretion. The rights holder must take steps toinstigate the relevant proceedings as soon as hebecomes aware of the alleged infringement. Anydelay for which there is no reasonable explanationwill prejudice his chances of obtaining relief.

The rights holder’s prospects of success of obtainingthe order will also invariably be contingent upon himbeing able to offer a cross-undertaking in damages.This is essentially a promise to recompense the

alleged infringer for any damage he suffers in theintervening period, in the event that the rightsholder’s case fails at trial.

In exercising its discretion, the Court must firstdecide whether or not there is a serious question tobe tried. Once the court is satisfied of this fact, itmust then consider the ‘balance of convenience’. Ifthe evidence demonstrates that the rights holder willbe adequately compensated by the award ofdamages at full trial and that the alleged infringerwill be able to pay these, an interim injunction willnot ordinarily be granted. If damages are unlikely tofully compensate the rights holder, the court mustthen consider the adequacy of the damages(payable under the cross-undertaking) tocompensate the alleged infringer in the event thatthe rights holder is not successful at trial. Where thedamages under the cross-undertaking are sufficient,the injunction will ordinarily be granted. Where thereare question marks over the adequacy of damagesto compensate both the rights holder and the allegedinfringer, the court will weigh up all relevant factorsin arriving at the most equitable decision.


Once an intellectual property rights holder hasestablished a case of infringement at full trial, hewill usually be able to obtain an injunction whichprohibits the infringer from repeating or continuingwith its action. This is true of infringement ofcopyright, trade mark, design right, patent and anyother intellectual property right which is afforded thestatus of ‘property’ at common law. Indeed, weredamages a rights holder’s only remedy, he wouldessentially be forced into the compulsory licensingof his rights to all third parties.

However, it should be born in mind that an injunctionis an equitable remedy. As such, the question of itsgrant is always at the discretion of the court. Incertain cases, there will be special circumstanceswhich override the presumption that an injunctionshould be granted. There might be no realisticprospect of the infringer repeating his actions.Equally, the rights holder might have committedsome act which would render the award of theinjunction inequitable. This might be a representationto the infringer that he would not pursue aninjunction.

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United Kingdom

Civil Procedures and RemediesDeliverDeliverDeliverDeliverDelivery upy upy upy upy up

‘Delivery up’ can represent a useful means for arights holder to ensure the efficacy of any injunctionwhich he obtains. In each case, the Court hasdiscretion to order delivery up to the rights holder ofall infringing articles for destruction. Alternatively,the court can order the infringer to undertake thedestruction of the articles himself under oath. Ingeneral, delivery up is an equitable remedy and, insimilar fashion to an injunction, its grant is at thecourt’s discretion.

However, in the cases of copyright and unregistereddesign right, delivery up is governed by statute.Under the relevant provisions, the Court can orderdelivery up not only of infringing articles but alsothe infringer’s apparatus which he has used to makethe relevant copies.


The underlying rationale for an award of damagesin a civil action is to compensate the rights holderfor the harm caused by the infringement. Thepurpose of damages is not to punish the infringerfor his transgression. Indeed, under English Lawthere is a general prohibition (with limited exceptions)on the imposition of exemplary or punitive damages.

In the vast majority of cases of intellectual propertyrights infringement there is no contractualrelationship between the rights holder and theinfringer. Consequently, any damages will berecoverable in tort. These damages compensate therights holder for any foreseeable loss which resultsdirectly from the infringement.

Although the courts have to repeatedly deal withcases of broadly similar nature, the precise detailswill invariably differ. Therefore, any judicial statementon the approach to damages tends to serve asguidance only. However, one approach is for thecourt to decide whether the rights holder andinfringer are genuine competitors. If this is so, thecourt then considers whether the rights holder wouldhave been likely to grant a licence to the infringer touse its rights. If the answer to this question is yes,the damages payable by the infringer will representthe royalty payment he would have been expectedto pay under the licence. However, if the rights holderwould not have granted a licence (and ordinarily he

is under no obligation to do so), the damages willrepresent his actual losses suffered as aconsequence of the infringer’s unlawful competition.

Account of prAccount of prAccount of prAccount of prAccount of profitsofitsofitsofitsofits

An account of profits is an equitable remedy that isavailable to an intellectual property rights holder atthe court’s discretion. Rather than simply allowingthe rights holder to recover compensation for thedamage sustained, this remedy entitles him torecover the actual profit which the infringer has madeas a result of the infringement. An account will usuallyrepresent an attractive option where the infringer hasmade profits which would not have been availableto the rights holder.

In each case of infringement, the rights holder mustelect whether he wishes to recover damages or anaccount. He is not entitled to both recompense andreimbursement for the same infringement.

Obtaining evidence of infringementObtaining evidence of infringementObtaining evidence of infringementObtaining evidence of infringementObtaining evidence of infringement

Frequently, an intellectual property rights holder willsuspect that a particular third party is infringing hisrights. However, the rights holder will not be certainof this and will require further evidence beforeembarking upon the potentially expensive processof litigation. An “Anton Piller” order provides such ameans for the rights holder to obtain additional proofof infringement.

Under this procedure, the rights holder applies tothe High Court or the Patents Court without givingany notice to the alleged infringer. The applicationwill be for an order that the alleged infringer permitsthe rights holder (together with his lawyer) to inspectthe premises of the alleged infringer and to seize,copy or photograph material relating to the allegedinfringement. In addition, the order can require thealleged infringer to deliver up or retain infringinggoods and/or incriminating documentation and toprovide names of the suppliers and/or recipients ofthe goods.


In certain cases of infringement, the only informationthat an intellectual property rights holder has is theidentity of a distributor or middleman through whomthe infringing goods are passing. This person might


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not himself have infringed the owner’s rights or evenbe aware that others are doing so. However, hisactions are facilitating the infringement of the owner’s(civil and/or criminal) rights. In such circumstances,the court has discretion to order such a person todisclose the names of the consignors or recipientsof the goods. Such disclosure enables the rightsholder to identify against whom he must bring anyrelated action.


There are certain criminal offences relating to theinfringement of intellectual property rights which aclaimant might wish to pursue in tandem with civilredress.

The pursuit of a criminal claim is most likely in thefields of copyright and trade marks, where there area number of offences largely aimed at restrictingthe activities of pirates and counterfeiters. Withregard to patents and registered designs, there areno criminal offences relating to infringement of aholder’s rights (this is also true of unregistereddesigns). However, there are certain offencesrelating to the procedure for registration of bothpatents and designs. In each case, it is an offenceto secure false entries in the register and to make afalse claim that a particular item is protected byregistration.


The criminal offences for copyright infringementbroadly reflect the secondary civil infringements ofcopyright. However, there is no equivalent criminalpenalty to the civil infringement of permitting the useof premises for an infringing performance of aliterary, dramatic or musical work. By contrast, theprimary civil infringement of copying is reflected inthe criminal offence of making copies for sale orhire.

The key criminal offences are contained in sectionsectionsectionsectionsection107 (1) of the Copyright, Designs and Patents107 (1) of the Copyright, Designs and Patents107 (1) of the Copyright, Designs and Patents107 (1) of the Copyright, Designs and Patents107 (1) of the Copyright, Designs and PatentsAct 1988 (the “CDPAct 1988 (the “CDPAct 1988 (the “CDPAct 1988 (the “CDPAct 1988 (the “CDPA”)A”)A”)A”)A”). This stipulates that:

A person commits an offence who, without thelicence of the copyright owner:

(a) makes for sale or hire; or

(b) imports into the UK otherwise for his privateand domestic use; or

(c) possesses in the course of business witha view to committing any act infringingthe copyright; or

(d) in the course of a business, sells or lets forhire or offers or exposes for sale or hireor exhibits in public or distributes; or

(e) distributes otherwise than in the courseof business to such an extent as toaffect prejudicially the owner of the copyright;

an article which is, and which he knows or hasreason to believe is, an infringing copy of a copyrightwork.

The offences which relate to making, importing ordistributing (whether or not in the course of business)are triable either-way i.e. in the Crown Court or in amagistrates’ court.

The maximum penalty that can be imposed onThe maximum penalty that can be imposed onThe maximum penalty that can be imposed onThe maximum penalty that can be imposed onThe maximum penalty that can be imposed onan infringer in the Cran infringer in the Cran infringer in the Cran infringer in the Cran infringer in the Crown Courown Courown Courown Courown Court is a tert is a tert is a tert is a tert is a term ofm ofm ofm ofm ofimprisonment not exceeding two years, or a fineimprisonment not exceeding two years, or a fineimprisonment not exceeding two years, or a fineimprisonment not exceeding two years, or a fineimprisonment not exceeding two years, or a fineor bothor bothor bothor bothor both. There are no upper limits on the fines whichcan be imposed by the Crown Court.

In a magistrates’ courIn a magistrates’ courIn a magistrates’ courIn a magistrates’ courIn a magistrates’ court, the maximum penalty ist, the maximum penalty ist, the maximum penalty ist, the maximum penalty ist, the maximum penalty issix months’ imprisonment, or a fine not exceedingsix months’ imprisonment, or a fine not exceedingsix months’ imprisonment, or a fine not exceedingsix months’ imprisonment, or a fine not exceedingsix months’ imprisonment, or a fine not exceedingthe statutorthe statutorthe statutorthe statutorthe statutory maximum (curry maximum (curry maximum (curry maximum (curry maximum (currently £5,000) or bothently £5,000) or bothently £5,000) or bothently £5,000) or bothently £5,000) or both.Each of the other offences can only be tried in amagistrates’ court.

FurFurFurFurFurther ofther ofther ofther ofther offences arfences arfences arfences arfences are contained in sections 107e contained in sections 107e contained in sections 107e contained in sections 107e contained in sections 107(2) and (3) of the CDP(2) and (3) of the CDP(2) and (3) of the CDP(2) and (3) of the CDP(2) and (3) of the CDPA.A.A.A.A.

Under subsection (2), a person is guilty of an offenceif he makes an article specifically designed oradapted for making copies of a particular copyrightwork or has such an article in his possession. Thisis subject to the infringer having a similar mens reaor intention as set out in subsection (1), in that theinfringer must know or have reason to believe thatthe article is to be used for making infringing copies.



187

Subsection (3) includes an offence relating to thepublic performance (otherwise than by the receptionof a broadcast or cable programme) of a literary,dramatic or musical work, or by the playing orshowing in public of a sound recording or film.

Both of the offences under subsections (2) and (3)are triable in a magistrates’ court only.

Under section 109 of the CDPUnder section 109 of the CDPUnder section 109 of the CDPUnder section 109 of the CDPUnder section 109 of the CDPAAAAA, an intellectualproperty rights owner can use a pre-trial searchwarrant to obtain evidence of infringement in relationto all categories of copyright works. A search warrantcan be obtained from a justice of the peace uponapplication by a constable. The search warrant willbe granted if the justice of the peace is satisfied bythe information provided by the constable (on oath)that there are reasonable grounds for believing thatany of the section 107 triable either-way offenceshave been, or will be imminently committed and thatevidence of such activity can be found on therelevant premises.

Section 108 of the CDPSection 108 of the CDPSection 108 of the CDPSection 108 of the CDPSection 108 of the CDPAAAAA also provides for deliveryup of infringing articles in criminal proceedings. TheCourt can make the order by its own volition or uponapplication by the prosecutor.


The principal criminal offences relating to theinfringement of trade marks are contained in sectionsectionsectionsectionsection92 of the T92 of the T92 of the T92 of the T92 of the Trade Marks Act 1994rade Marks Act 1994rade Marks Act 1994rade Marks Act 1994rade Marks Act 1994. These can besummarised as follows:

1. Applying a sign identical to (or likely to bemistaken for the registered trademark) to goods ortheir packaging; selling, hiring, offering or exposingfor sale or hire or distributing such goods; havingsuch goods in his possession, custody or control inthe course of business with a view to selling, hiringetc, whether by himself or another. (section 92 (1))(section 92 (1))(section 92 (1))(section 92 (1))(section 92 (1))

2. Applying a sign identical to (or likely to bemistaken for the registered trademark) to materialintended to be used for labelling or packaginggoods, as a business paper in relation to goods, orfor advertising goods; using in the course ofbusiness such a sign in the same fashion; havingsuch material in his possession, custody or controlin the course of a business with a view to makingsuch use of the sign. (section 92 (2))(section 92 (2))(section 92 (2))(section 92 (2))(section 92 (2))

3. Making an article specifically designed or adaptedto make copies of a sign identical to (or likely to bemistaken for the registered trademark), or havingsuch an article in his possession, custody or controlin the course of a business. (section 92 (3))(section 92 (3))(section 92 (3))(section 92 (3))(section 92 (3))

The offences are framed in terms of being with aview to gain for the accused or another or, with intentto cause loss to another, and without the consent ofthe proprietor.

In order for the offences in section 92 to apply, thetrademark owner will usually have to establish thatthe infringing goods are within a category for whichthe mark is registered. If this is not the case, thetrademark owner must prove that his mark has areputation in the United Kingdom and the accused’suse of the sign takes unfair advantage of, or isdetrimental to, the distinctive character or the reputeof his mark.

On indictment, the maximum penalty for each ofthe maximum penalty for each ofthe maximum penalty for each ofthe maximum penalty for each ofthe maximum penalty for each ofthe section 92 ofthe section 92 ofthe section 92 ofthe section 92 ofthe section 92 offences is ten years imprisonmentfences is ten years imprisonmentfences is ten years imprisonmentfences is ten years imprisonmentfences is ten years imprisonmentor a fine or bothor a fine or bothor a fine or bothor a fine or bothor a fine or both. If tried summarily, the maximumpenalty is six months imprisonment and/or a finenot exceeding the statutory minimum.

Section 92 (5)Section 92 (5)Section 92 (5)Section 92 (5)Section 92 (5) provides some protection for a traderwho is not a pirate but who simply misjudges howclose he can come to mimicking a registered trademark. This states that it is a defence for the accusedto show that he believed on reasonable grounds thathis use (or intended use) of the sign was not aninfringement of the mark. The availability of thisdefence supports the view that the criminal offencesrelating to trademarks are primarily concerned withcounterfeit or pirate activity.

Section 97Section 97Section 97Section 97Section 97 empowers the court to order forfeitureof infringing goods, material or articles which havecome into the possession of any person inconnection with the investigation or prosecution ofany relevant offence.


United Kingdom


188

Customs ProceduresOverviewOverviewOverviewOverviewOverview

Council Regulation (EC) No 1383/2003Council Regulation (EC) No 1383/2003Council Regulation (EC) No 1383/2003Council Regulation (EC) No 1383/2003Council Regulation (EC) No 1383/2003 (the‘Regulation’) affords an intellectual property rightsholder a further means of protecting his rights. Thismechanism can be used to seize infringing productas it arrives into the European Community and toprevent it going onto the market. Under theRegulation the rights owner can make an applicationto HM Customs to prohibit entry into the Communityand the export or re-export from the Community ofinfringing goods. The Regulation covers anextremely broad spectrum of intellectual propertyrights including trade marks, copyright, patents anddesign rights (both registered and unregistered).

Naturally there will be instances where the rightsowner does not have prior knowledge of infringingproduct arriving into the UK. Where HM Customsdiscovers suspected infringing goods these will bedetained and the rights holder contacted. He willthen have three working days to submit the relevantapplication.


The requisite application forms are available fromHM Customs. ForForForForForm C1340m C1340m C1340m C1340m C1340 (Intellectual PropertyRights Application) covers action in relation to theUK only. ForForForForForm C1340Am C1340Am C1340Am C1340Am C1340A (Community IntellectualProperty Rights Application) is appropriate wherethe rights holder requires Customs action in two ormore Member States.

ForForForForForms should be lodged with HM Customs byms should be lodged with HM Customs byms should be lodged with HM Customs byms should be lodged with HM Customs byms should be lodged with HM Customs bythe rights holder thirthe rights holder thirthe rights holder thirthe rights holder thirthe rights holder thirty working days prior to whenty working days prior to whenty working days prior to whenty working days prior to whenty working days prior to whenhe expects the infringing goods to be imporhe expects the infringing goods to be imporhe expects the infringing goods to be imporhe expects the infringing goods to be imporhe expects the infringing goods to be importedtedtedtedtedor exporor exporor exporor exporor exported, or beforted, or beforted, or beforted, or beforted, or before he wants the monitoringe he wants the monitoringe he wants the monitoringe he wants the monitoringe he wants the monitoringprprprprprocess to beginocess to beginocess to beginocess to beginocess to begin. If successful, the application willremain valid for a period of twelve months. Thisperiod can be extended for further twelve-monthperiods upon subsequent application. Within theform the rights holder must, amongst other things,provide HM Customs with:♦ a sufficiently detailed description of the goodsas to enable HM Customs to recognise them.

♦ any specific information that he has regardingthe pattern of the infringing goods’ importation; and

♦ sufficient evidence that he owns the relevantrights.

HM Customs does not charge the rights holder anadministration fee for processing his application.However, anyone contemplating an applicationshould be mindful of the undertaking which he mustgive in Annex III of the form. Under this, the rightsholder agrees to pay all costs and liabilities incurredby HM Customs under the Regulation. Such chargescan include:

♦ storage charges when HM Customs havecorrectly seized suspected goods which aresubsequently found not to be infringing

♦ storage charges where the detention or seizureof the goods results is contested and the partiesare awaiting the outcome of proceedings

♦ legal costs and compensation for any losssuffered if the rights holder or the courts confirmthat the goods are not infringing; and

♦ costs incurred in the destruction of the goods

When HM Customs detains suspected goods, itnotifies both the rights holder and the allegedinfringer of its action. It also notifies both parties ofthe estimated or actual quantity and nature of thegoods. Where the rights holder has a validapplication in force, HM Customs will also, at hisrequest, provide him with the name and address ofthe: declarant, consignee/consignor, importer/exporter and manufacturer.


A distinction is drawn here between counterfeit andpirated goods and those which infringe otherintellectual property rights. For the purposes of therelevant legislation, counterfeit goods are definedas goods (including packaging) bearing, without theowner’s consent, a trademark which is identical , orcannot be distinguished in its essential aspects fromvalidly registered UK or EC trademarks for the sametype of goods. Pirated goods are defined as goodswhich are (or embody) copies made without theconsent of the holder of the copyright or right inperformance or design right (whether registered orunregistered).

In relation to counterfeit or pirated goods, the rightsowner is invited to examine a sample.The rightsowner then has ten working days from the date he

189

Customs Procedures

United Kingdom

is notified of the goods’ detention to submit a writtenopinion to HM Customs, setting out the reasons asto why the goods are infringing. Once HM Customsis satisfied that the goods are indeed infringing, itwill seize them.

In the case of goods which infringe other intellectualproperty rights, again the rights owner is invited toexamine a sample. The rights owner then has tenworking days to refer the matter to the relevant UKcourt and to provide HM Customs with evidencethat he has begun proceedings. HM Customs willdeal with the goods in accordance with any relevantorder made by the Court. The rights holder is thenunder an obligation to actively pursue proceedings.

Of course there will be instances where the detainedgoods are suspected to be counterfeit or piratedand also to infringe some other intellectual propertyright. In this instance the rights holder has tenworking days from the date of notification in whichto inform HM Customs of the approach he wishesto take.

An interested party is entitled to notify HM Customsof its objection to a seizure within the one-monthappeal period. In this event, HM Customs is underan obligation to commence court proceedings todetermine the status of the relevant goods.


Section 89 of the TSection 89 of the TSection 89 of the TSection 89 of the TSection 89 of the Trade Marks Act 1994rade Marks Act 1994rade Marks Act 1994rade Marks Act 1994rade Marks Act 1994 andsection 111 of the CDPsection 111 of the CDPsection 111 of the CDPsection 111 of the CDPsection 111 of the CDPA 1988A 1988A 1988A 1988A 1988 provide intellectualproperty rights holders with a means of preventinggrey market goods entering the UK market. Theseprovisions can be used to seize product which hasbeen parallel imported from outside the EuropeanEconomic Area (the ‘’EEA”) or from within the EEAbut which has not been put into free circulation bythe rights holder.

In similar fashion to the EU Regulation, the rightsowner lodges the appropriate application with HMCustoms. Again the rights holder indemnifies HMCustoms against any liability for its dealings withthe seized product.


190

INDEX to CONTRIBUTORSAustria

Wallnerstrasse 4A1010 WienTel: +43 1 205 206 120Fax: +43 1 205 206 125Email: [email protected]: www.gassauer.at

Belgium

Brazil

China

Czech Republic

Denmark

Egypt

Finland

GEVERS & PARTNERSIntellectual Property HouseHolidaystraat 5B-1831Diegem (Brussels)Tel: +32 2 7153711Fax: +32 2 7153700Email: [email protected]: www.gevers.com

Rua Marquês de Olinda, 70Rio de Janeiro22251-040 RJTel: +55 21 2553 1811Fax: +55 21 2553 1812Email: [email protected]: www.dannemann.com.br

Room 7024Beijing International Convention CenterNo 8 Beichendong RoadChaoyang DistrictBeijing 100101Tel: +86 10 8498 9898Fax: +86 10 6499 1919Email: [email protected]: www.cuippc.com

Diouha 13110 00 Praha 1Tel: +420 224 819 336/7Fax: +420 224 8 9 343Email: [email protected]: www.akkb.cz

Amerika Plads 372100 Copenhagen 0Tel: +45 33 12 11 33Fax: +45 33 12 00 14Email: [email protected]: www.plesner.com

IBRACHY & DERMARKAR16 Hussein Wassef StreetMessaha-Dokki-CairoTel: +20 2 760 4592Fax: +20 2 760 4593Email: [email protected]: www.ibrachy-dermarkar.com

P O Box 232FIN-00101 HelsinkiTel: +358 9 177 613Fax: +358 9 653 873Email: [email protected]: www.hhpartners.fi

PLESNER SVANE GRØNBORG LAW FIRM

191


INDEX to CONTRIBUTORSGermany

Hong Kong

Hungary

India

Kenya

Korea

Warburgstr 50D-20354 HamburgTel: +49 40 419 93 0Fax: +49 40 419 93 200Email: [email protected]: www.lovells.com

Suite 1901Pacific Plaza410 Des Voeux Road WestTel: +852 2517 3900Fax: +852 2549 9600E-mail: [email protected]

DANUBIAP O Box 198H-1368 BudapestTel: +36 1 318 1111Fax: +36 1 338 2304Email: [email protected]: www.danubia.com

ANAND AND ANANDB-41 Nizamuddin EastNew Delhi 110 013Tel: +91 11 2435 3148Fax: +91 11 2435 4243E-mail: [email protected]

SAIFAM LTDC/o LAFAFSI LTDP O Box 1296Victoria, Mahe,SEYCHELLESTel: +248 513169Fax: USA +1 917 591 6754Email: [email protected]: www.lafafsi.com

8th Floor Dongduk Building 151-8Kwanhoon-DongJongro-GuSeoul 110-300Tel: +82 2 733 9991Fax: +82 2 733 6351Email: [email protected]: www.kimsandlees.com

Latvia

Lithuania

AGENCY TRIA ROBIT5 Vilandes StreetLV 1010 RigaTel: +371 7 321 300Fax: +371 7 325 600Email: [email protected]: www.triarobit.com

Malaysia

METIDA LAW FIRM OF REDA ZABOLIENEGedimino 45-601109 VilniusTel: +370 5 24 90 830Fax: +370 5 24 90 833E-mail: [email protected]: www.metida.lt

Netherlands

MALAYSIA TAY & PARTNERS6th Floor, Plaza See Hoy ChanJalan Raja Chulan50200 Kuala LumpurTel: +603 2050 1888Fax: +603 2072 6354Email: [email protected]: www.taypartners.com.my

Jachthavenweg 1211081 KM AmsterdamP O Box 752651070 AG AmsterdamTel: +31 20 6789 229Fax: +31 20 6789 589E-mail: [email protected]: www.van-doorne.com


192

7th Floor, Marble House1 Kingsway RoadP O Box 52901Ikoyi, LagosTel: +234 1 461 7321Fax: +234 1 269 2072Email: [email protected]: www.aelex.com

P O Box 16800-950 WarszawaTel: +48 22 644 9657Fax: +48 22 644 4402Email: [email protected]: www.patpol.com.pl

ABREU, CARDIGOS & ASSOCIADOSAv das Forcas Armadas 125-121600-079 LisbonTel: +351 21 723 1800Fax: +351 21 723 1899Email: [email protected]: www.abreucardigos.com

ROMANIA ROMINVENT SA35 Ermil Pangratti Str1st Floor, Sector 1Bucharest 011882Tel: +40 21 231 2515Fax: +40 21 231 2454Email: [email protected]: rominvent@ro

Nigeria

Poland

Saudi Arabia

Romania

Portugal

MAJED M GAROUBHarasani Building 2nd Floor10 Osaman Bin Affan StreetP O Box 18623Jeddah 21425Tel: +966 2 651 8222Fax: +966 2 651 8333Email: [email protected]: www.lawgaroub.com

Singapore

Sri LankaJOHN WILSON PARTNERS365 Dam StreetColombo 12Tel: +94 11 2324579Fax: +94 11 2446954Email: [email protected]: www.srilankalaw.com

Sweden

TAY & PARTNERS6th Floor, Plaza See Hoy ChanJalan Raja Chulan50200 Kuala LumpurTel: +603 2050 1888Fax: +603 2072 6354Email: [email protected]: www.taypartners.com.my

LINDBERG & SAXON HBP O Box 7712SE-103 95 StockholmTel: +46 8 5620 8000Fax: +46 8 5620 8001Email: [email protected]: www.linsax.com

INDEX to CONTRIBUTORS

193

TaiwanSAINT ISLAND INTERNATIONALPATENT & LAW OFFICES7th Floor, No 248, Section 3Nanking East RoadTaipei 105Tel: +886 2 2775 1823Fax: +866 2 2731 6377Email: [email protected]: www.saint-island.com.tw

Regent House5-7 Broadhurst GardensSwiss CottageLondon NW6 3RZTel: +44 (0)20 7328 9111Fax: +44 (0)20 7644 8953Email: [email protected]: www.roiterzucker.co.uk

Thailand

United Arab Emirates

United Kingdom

TILLEKE & GIBBINSTilleke & Gibbins Building64/1 Soi Tonson,Ploenchit RoadBangkok 10330Tel: +66 2263 7700Fax: +66 2652 1833Email: [email protected]: www.tillekeandgibbins.com

AFRIDI & ANGELLP O Box 9371Emirates TowersLevel 35, Sheikh Zayed RoadDubaiTel: +971 4 330 3900Fax: +971 4 330 3800Email: [email protected]

INDEX to CONTRIBUTORSCIB IP Rights Enforcement Guide