Trademark Litigation 2018: A Global Guide
A comparative overview of the trademark litigation regime in key jurisdictions.
In Albania, trademarks are mainly regulated by the following legislation:
the Law on Industrial Property (9947/2008), as amended, along with its sub-legal acts;
the Civil Code (7850/1994), as amended;
the Civil Procedure Code (8116/1996), as amended;
the Criminal Code (7895/1995), as amended;
the Criminal Procedure Code (7905/1995), as amended;
the Customs Code (8449/1999), as amended; and
the Council of Ministers Decision on Implementing Provisions of the Customs Code (205/1999), as amended.
Renata Leka and Armando Bode
The Brazilian Constitution guarantees patent, trademark and copyrights as a means to secure the social and economic development of the country. Nevertheless, the use and registration of trademarks in Brazil are mainly regulated by the Industrial Property Act (Law 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
Canada has a robust system of trademark enforcement, with several available causes of action for an aggrieved owner.
Dominique Hussey and Jeilah Chan
In China, the paramount law applicable to trademarks is the Trademark Law. It entered into force in 1983, and has gone through three amendments (1993, 2001 and 2013). The Implementing Regulations of the Trademark Law set out detailed implementing provisions of the Trademark Law, and came into effect together with the most recent amended Trademark Law in 2014.
Hongbin Jiao and Fang He
At present, the main source of substantive trademark legislation in Finland is the Trademark Act (7/1964), as amended. However, in June 2016 a working group was appointed to draft a proposal for a new trademark act, implementing the 2015 EU Trademark Directive (2015/2436) and the Singapore Treaty on the Law of Trademarks. The proposal for the new trademark act will be presented to the Finnish Parliament in Autumn 2018.
Timo Skurnik and Perttu Kaikkonen
National law: Trademark law is codified in the French IP Code in Articles L711-1 to L717-16. In addition, Article 1240 of the Civil Code prohibits unfair competition and parasitic acts.
Alain Berthet, Bénédicte Devevey and Elisabeth Berthet
The relevant legislation for trademarks in Germany are the Trademark Act and the Trademark Ordinance. Since Germany is a member of the European Union, the EU Trademark Directive (2015/2436/EC) applies. EU trademarks cover Germany.
Ulrich Hildebrandt and Magnus Hirsch
Trademarks in India are governed by the Trademarks Act 1999, which supersedes the Trade and Merchandise Marks Act 1958. The Trademarks Rules 2017 supplement the Trademarks Act.
The most relevant legislation relating to trademarks is the Trademark Act (2010/8), implementing the EU Trademarks Directive (2008/95/EC), which applies to Norway as a party to the EEA Agreement (despite Norway not being a part of the European Union). Norwegian legislators are currently working on amendments to bring the Trademark Act into line with the 2015 EU Trademarks Directive (2015/2436).
Mikkel Lassen Ellingsen and Håkon Tysnes Kaasin
Opposition: Any person who believes that he or she would be damaged by the registration of a mark may file an opposition to the trademark application within 30 days of its publication. Opposition proceedings are summary in nature; thus, there is no trial and the parties must submit the necessary evidence to prove their positions.
Editha R Hechanova and Maria Leah R Lara
The laws governing trademark litigation in Poland are:
the Industrial Property Law of June 30 2000 (Journal of Laws 2013, item 1410);
the Act on Combating Unfair Competition of April 16 1993 (Journal of Laws 2003, 153, item 1503);
the Civil Procedure Code of November 17 1964 (Journal of Laws 2014.0.101); and
EU Regulation 207/2009 with regards to EU trademarks.
Beata Wojtkowska and Monika Chimiak
The main legislation regulating trademark litigation in Russia is contained in the following codified federal laws:
the Civil Code (most importantly, Part IV thereof, last amended on July 1 2017);
the Arbitration Procedure Code (last amended on July 29 2017); and
the Civil Procedure Code (last amended on July 29 2017).
Mark Chizhenok and Dmitry Makarov
In Sweden, the Trademarks Act 1877/2010 sets out the framework for trademark protection. The legislation is based on the EU Trademark Directive (2008/95/EC), which has direct effect in Sweden.
Mårten Stenström and Evelina Rosenborg
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.
Mutlu Yıldırım Köse, Uğur Aktekin and Hande Hançar Çelik
Trademark law in the United Kingdom is governed by the Trademarks Act (1994), as amended, which implements the EU Trademarks Directive (2008/95/EC) to approximate the laws of the EU member states.
Tamsin Holman, Anna Reid and Alban Radivojevic
The primary statutory framework for enforcing trademarks is set forth in federal law – namely, the Trademark Act 1946 (‘the Lanham Act’), codified at 15 USC § 1051 et seq. The Lanham Act provides for several causes of action for trademark owners, including:
Section 32 for infringement of a federally registered mark (15 USC § 1114);
Section 43(a) for false designation of origin for unregistered trademarks; and
Section 43(c) for dilution of famous marks (15 USC § 1125(c)).
Marc C Levy, Jennifer R Ashton and Russell C Pangborn
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