Trademark Litigation: A Global Guide 2019

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

Country chapters

Litigation procedures and strategies: Brazil

Peduti Sociedade de Advogados
Trademark registration may be considered null and void if granted contrary to the Industrial Property Act – for example, if the trademark lacks distinctiveness or is against the requirements of generally accepted ethical and proper practices.

Litigation procedures and strategies: Canada

Bennett Jones LLP
The Competition Act prohibits promoting a product by making a representation that is false or misleading in a material respect. This provision is typically asserted in conjunction with other causes of action under the Trademarks Act.

Litigation procedures and strategies: China

AnJie Law Firm
China has a triple track trademark protection system. Trademark administrative litigation can be brought to challenge the validity or registrability of trademarks, while civil and criminal actions are available against trademark infringement.

Litigation procedures and strategies: France

PROMARK
In France, arbitration is available for most trademark litigation. However, arbitration for the validity of a trademark remains uncertain as it may be considered a public policy matter, and there is no case law on this point.

Litigation procedures and strategies: Germany

KLEINER Rechtsanwälte PartG mbB
Alternative dispute resolution methods exist; however, they play only a minor role in Germany. One reason is Germany’s efficient court system, which allows for settling trademark conflicts quickly and at reasonable costs. 

Litigation procedures and strategies: Greece

Tsibanoulis & Partners Law Firm
A bifurcated system exists in Greece. The Trademark Office and the administrative courts are exclusively competent for all matters related to the existence and cancellation of marks, including oppositions and invalidity actions.

Litigation procedures and strategies: India

Inttl Advocare
In 2015 the Indian legislature passed a new act – the Commercial Courts Act – which came into effect in January 2016, with the objective of streamlining and expediting commercial lawsuits, including IP disputes. 

Litigation procedures and strategies: Mexico

Dumont
The relevant legislation for trademarks in Mexico is the Industrial Property Law and its recently amended regulations – the new provisions entered into force on 10 August 2018. The amendments involve substantial changes to Mexico’s IP system.

Litigation procedures and strategies: Norway

Bryn Aarflot AS
While the bar is set quite high for evidencing use-acquired trademark rights, owners of unregistered trademark rights are afforded the same courses of action as proprietors holding registration certificates from the NIPO.

Litigation procedures and strategies: Philippines

Hechanova Bugay Vilchez & Andaya-Racadio
The special commercial regional trial courts have jurisdiction over civil actions involving IP rights violations with damages claims of any amount. 

Litigation procedures and strategies: Russia

A Zalesov & Partners Patent & Law Firm LLC
The Russian court system comprises federal courts and regional courts (ie, regional constitutional courts and magistrates). IP matters are under the exclusive jurisdiction of the federal courts.

Litigation procedures and strategies: Russia

A Zalesov & Partners Patent & Law Firm LLC
The Russian court system comprises federal courts and regional courts (ie, regional constitutional courts and magistrates). IP matters are under the exclusive jurisdiction of the federal courts.

Litigation procedures and strategies: Saudi Arabia

Kadasa Intellectual Property
Under Saudi trademark law, there are clear provisions relating to the award of damages in trademark infringement cases. However, the award of damages is dictated by the principles of Islamic Sharia. 

Litigation procedures and strategies: Turkey

Gün + Partners
Turkey has no arbitral institutions that specialise in IP disputes. However, it is accepted that, regardless of their nature, trademark disputes that can be settled between the parties may be subject to arbitration.

Litigation procedures and strategies: United Kingdom

D Young & Co LLP
All parties conducting civil litigation in the United Kingdom should follow the Civil Procedure Rules, which set out how cases should be conducted before and after proceedings have been issued.

Litigation procedures and strategies: United States

Brinks Gilson & Lione
Parties to unfair competition and trademark infringement cases pending before a court, or in proceedings before the TTAB, have the option to participate in alternative dispute resolution procedures, such as arbitration or mediation.