Trademark Litigation 2017: A Global Guide

A comparative overview of the trademark litigation regime in key jurisdictions.

Country chapters

Litigation procedures and strategies: Brazil

Kasznar Leonardos Intellectual Property

The use and registration of trademarks in Brazil is mainly regulated by the Industrial Property Act (9.279/1996), which was enacted shortly after the ratification by Brazil of the Agreement on Trade-Related Aspects of Intellectual Property Rights. Brazil is also a signatory to the Paris Convention for the Protection of Industrial Property.
Claudio Barbosa, Nancy Caigawa and Rafael Lacaz Amaral

Litigation procedures and strategies: Canada

Bennett Jones LLP

Canada’s Trademarks Act provides for the registration of trademarks and the enforcement of both registered and unregistered rights. Common law rights accrue to owners of unregistered trademarks that are used in Canada. Under the common law, these rights are limited to the geographic area where the trademark has been used. Common law rights alone can form the foundation of an infringement claim known as passing off.
Dominique Hussey, Trent Horne and Jeilah Chan

Litigation procedures and strategies: Chile

Mackenna, Irarrázaval, Cuchacovich y Paz

Depending of the cause of action, the enforcement of trademark rights can be sought through both criminal and civil proceedings. A trademark owner will have a civil cause of action when a third party infringes its exclusive right to use its trademarks in trade to distinguish the same or related products, services or business or industrial establishments as those covered by the registration. Criminal proceedings can be instituted only if the IP Law or the Criminal Code lists the infringer’s actions as a crime.
Rodrigo Marré Grez, Virgilio Topasio Maluk and Juan Avendaño Parra

Litigation procedures and strategies: China

Chofn Intellectual Property

All Chinese laws are written and passed by the Chinese People’s Congress or its Standing Committee, whereas the corresponding implementing regulations and judicial interpretations are made respectively by the State Council (ie, the central government) and by the Supreme People’s Court and the Supreme People’s Procuratorate. All these laws, regulations and interpretations are binding on the administrative bodies and the courts.
Haoyu Feng and Xiaoming Liu

Litigation procedures and strategies: Denmark

Bech-Bruun

In Denmark, trademark protection is regulated by the Trademark Act (341/1991), as amended up to March 1 2016 (Consolidated Trademarks Act 192/2016). The act implemented the EU First Trademarks Directive (89/104/EEC) (now replaced by Directive 2008/95/EC). The EU Trademark Regulation (207/2009) has direct effect in Denmark.
Claus Barrett Christiansen

Litigation procedures and strategies: Egypt

Cedar White Bradley Hazem M Wahba Advocates & Legal Consultants

Careful consideration should be given to the nature of the dispute before embarking on litigation for trademark cases. Perhaps because of the uncertainty, costs and timeframes involved in pursuing litigation for trademark disputes, in straightforward cases trademark owners frequently pursue alternative enforcement measures through administrative bodies, customs authorities or the police.
Hazem Wahba and Mohamed Allam

Litigation procedures and strategies: Finland

Krogerus Attorneys Ltd

The main piece of national trademark legislation in Finland is the Trademark Act (7/1964, as amended). Finland is an EU member state. Therefore, the EU Trademark Regulation (207/2009, as amended by Regulation 2015/2424) is directly applicable. In addition, Finland has implemented the relevant EU directives, in particular the 2008 EU Trademark Directive (2008/95/EC).
Tuukka Airaksinen and Sarita Schröder

Litigation procedures and strategies: France

PROMARK

Infringement actions are allowed when a number of conditions are satisfied with respect to both the plaintiff’s trademarks and the defendant’s infringing acts. With respect to the plaintiff’s trademarks, the basis of an allowable action is a valid registered trademark in France (through a national trademark, an EU trademark or an international trademark designating France).
Alain Berthet, Bénédicte Devevey and Elisabeth Berthet

Litigation procedures and strategies: Germany

Squire Patton Boggs (US) LLP

Within the European Union, Germany is one of the most attractive jurisdictions because its courts have a reputation for expertise and efficiency, both time and cost-wise. In addition, although the remedies available are largely harmonised throughout the European Union, rights holders enforcing their trademark rights in Germany benefit from ex parte injunctive relief through preliminary injunction on an urgent basis, which judges in other EU member states are less ready to grant.
Iliana Haleen, Jens Petry and Maren Ebner

Litigation procedures and strategies: Greece

Ballas, Pelecanos & Associates LPC

The main legislative texts governing trademarks in Greece are Law 4072/2012 (as amended by Law 4155/2013) (Articles 121 to 196), and Law 146/1914 (as amended by Law 3784/2009) on unfair competition.
George Ballas, Nicholas Gregoriades and Maria Spanos

Litigation procedures and strategies: India

Inttl Advocare

Trademark owners have two causes of action available against wrongful use of their marks by other traders: infringement and passing off. The right to sue for infringement arises from the violation of the statutory right conferred by a trademark registration to use a trademark exclusively. The right to sue for passing off arises from deceit involving use of a trademark or get-up that is likely to cause confusion/deception leading to the passing off of goods of one for those of another.
Hemant Singh

Litigation procedures and strategies: Latvia

Agency TRIA ROBIT

n Latvia, the legal framework for trademarks consists of international agreements, EU directives and regulations, and domestic laws and ordinances. Latvia is a party to all major international IP agreements, including the Paris Convention for the Protection of Industrial Property and the Agreement on Trade-Related Aspects of Intellectual Property Rights.
Vladimir Anohin, Bronislavs Baltrumovics and Katerina Grishina

Litigation procedures and strategies: Poland

Kulikowska & Kulikowski

The IP Law provides the causes of action for infringement of national trademarks and international trademarks designating Poland under the Madrid Protocol; the EU Trademark Regulation provides the causes of action for infringement of EU trademarks. Where the unauthorised use also meets the criteria for unfair competition, the Act on Combating Unfair Competition applies as well.
Beata Wojtkowska and Monika Chimiak

Litigation procedures and strategies: Romania

Mușat & Asociații

Romanian trademarks are governed by Law 84/1998 regarding trademarks and geographical indications (the Trademarks Law). Although the law is based on the EU First Trademarks Directive (89/104/EEC), it has been amended several times to reflect Romania’s EU and international obligations. The most significant amendment occurred in May 2010, but several other more limited amendments have taken place since then.
Anca Buta Mușat and Paul George Buta

Litigation procedures and strategies: Russia

Gorodissky & Partners

Russia has a civil law legal system with the Constitution at its core. Federal constitutional laws are subordinate to the Constitution and are adopted in relation to matters clearly specified by the Constitution (eg, the Federal Constitutional Law on State Commercial Courts). A number of codes have the status of federal laws (eg, Civil Code, Criminal Code).
Anton Melnikov

Litigation procedures and strategies: Saudi Arabia

Cedar White Bradley Nidal Kadasa Advocates & Legal Consultants

The Saudi legal system is based on Sharia (Islamic law), an uncodified set of rules and principles derived primarily from the Quran and from the practices and sayings (Sunnah) of the Prophet Muhammad. The interpretation of Sharia varies across different schools of Islamic jurisprudence that have emerged over time.
Nidal Nassir Kadasa

Litigation procedures and strategies: Switzerland

Walder Wyss Ltd

Swiss trademark law is governed by the Federal Act on the Protection of Trademarks and Indications of Origin (the Trademark Protection Act, SR 232.11) and the Ordinance on the Protection of Trademarks (SR 232.111). By ‘indications of origin’, the Trademark Protection Act means geographical indications.
Markus Frick and Magda Streuli-Youssef

Litigation procedures and strategies: Turkey

Gün + Partners

Turkey is a party to most major international treaties relating to intellectual property, including the Agreement on Trade-Related Aspects of Intellectual Property Rights and the Paris Convention for the Protection of Industrial Property. Turkey is also a member of international organisations such as the World Trade Organisation that have a connection with intellectual property.
Uğur Aktekin, Hande Hançer Çelik and Mutlu Yıldırım Köse

Litigation procedures and strategies: United Arab Emirates

Cedar White Bradley

With the exception of the Dubai International Financial Centre free zone in Dubai, the legal framework in the United Arab Emirates is very much a civil law system, which affects the way in which trademark owners seek to enforce their rights against third parties and cases are pled and progress through the courts.
David Harper and Khalid A Altamimi

Litigation procedures and strategies: United Kingdom

Nabarro LLP

The United Kingdom has highly developed court systems, but parties are expected to make reasonable efforts to settle a dispute without the need for litigation. A party that acts unreasonably may be penalised by way of a costs order when the case reaches trial.
David Parrish and Oscar Webb

Litigation procedures and strategies: United States

Fish & Richardson PC

In general terms, once ownership of protectable trademark rights is shown, the key legal question in a federal or state law infringement claim is whether ordinary consumers are likely to be confused as to the source or origin of the goods or services, or misled into believing that there is an affiliation, connection or association between the parties.
R David Hosp, Sheryl Koval Garko and Mark Puzella

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Issue 69