Trademark Litigation: A Global Guide 2018

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

Country chapters

Litigation procedures and strategies: Albania

Boga & Associates
In Albania, the Law on Industrial Property, being the main applicable law, has been subject to various amendments. We look at the key changes, and how they affect prosecution and enforcement strategies.

Litigation procedures and strategies: Brazil

Kasznar Leonardos Intellectual Property
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.

Litigation procedures and strategies: Canada

Bennett Jones LLP
Canada has a robust system of trademark enforcement, with several available causes of action for an aggrieved owner.

Litigation procedures and strategies: China

King & Wood Mallesons
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.

Litigation procedures and strategies: Finland

NORDIA Attorneys at Law
In June 2016 a working group was appointed to draft a proposal for a new trademark act in Finland, implementing the 2015 EU Trademark Directive (2015/2436) and the Singapore Treaty on the Law of Trademarks.

Litigation procedures and strategies: France

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.

Litigation procedures and strategies: Germany

SKW Schwarz Rechtsanwälte
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.

Litigation procedures and strategies: India

Inttl Advocare
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.

Litigation procedures and strategies: Norway

Bryn Aarflot AS
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).

Litigation procedures and strategies: Poland

Kulikowska & Kulikowski
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.

Litigation procedures and strategies: Philippines

Hechanova & Co
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.

Litigation procedures and strategies: Russia

Ivanov, Makarov & Partners
The main legislation regulating trademark litigation in Russia is contained in the following codified federal laws: the Civil Code; the Arbitration Procedure Code (last amended on July 29 2017); and the Civil Procedure Code (last amended on July 29 2017).

Litigation procedures and strategies: Sweden

Advokatfirman NORDIA KB
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.

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.

Litigation procedures and strategies: United Kingdom

D Young & Co LLP
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.

Litigation procedures and strategies: United States

Seed Intellectual Property Law Group LLP
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)).