Trademark Litigation: A Global Guide 2021

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Welcome to Trademark Litigation: A Global Guide 2021, the fifth edition of this indispensable resource.

For trademark professionals, litigation is usually a last resort, launched only when faced with critical brand challenges or those that have serious implications for the wellbeing of consumers. Over the past year, for example, as opportunists seek to capitalise on the covid-19 pandemic, a number of international brands have turned to trademark litigation in a bid to speedily clamp down on infringing and fake personal protective equipment goods or prevent distributors from engaging in price gouging.

When litigation is deemed necessary, it is essential to create a robust strategy, taking into account the applicable systems and procedures in the relevant jurisdiction. Reflecting this, the latest edition of Trademark Litigation: A Global Guide serves as an invaluable reference guide to the litigation regimes in 10 key jurisdictions.

Written by experts from leading firms around the globe, the guide provides a simple, easy-to-use digest of the fundamentals of litigation practice in key jurisdictions. Each chapter outlines the legislative framework in the respective jurisdiction, including insight into available venues, possible causes of action and the damages and remedies that can be obtained. In addition, each chapter examines critical issues such as the availability of alternative dispute resolution mechanisms, defences to trademark infringement or dilution, the use of survey evidence and expert witnesses, and the intricacies of the appeals process.

Alongside this in-depth analysis, the publication is complemented by a wallchart that allows for easy comparison of key litigation procedures across jurisdictions.

While Trademark Litigation: A Global Guide 2021 does not seek to offer specific legal advice and should not be read as though it does, only those firms and organisations with specialist expertise in the field of trademark litigation were invited to contribute. The authors raise a number of critical points that rights holders and their advisers should consider when constructing a litigation strategy.

My gratitude goes to all contributors for their hard work and support in this important project. If you have any feedback on the publication, please don’t hesitate to contact me.

Country chapters

Brazil

Peduti Sociedade de Advogados
Brazil is a signatory to the Paris Convention for the Protection of Industrial Property.

Canada

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

China

CCPIT Patent and Trademark Law Office
China has a comprehensive and integrated legal framework for trademark protection based on domestic legislation as well as international IP treaties and conventions.

Denmark

AWA Law
The most relevant legislation relating to trademarks is the Trademark Act (LBK 88, 29 January 2019), implementing the EU Trademarks Directive (2015/2436).

France

PROMARK
National law: Trademark law is codified in the French IP Code in Articles L711-1 to L731- 4. In addition, Article 1240 of the Civil Code prohibits unfair competition and parasitic acts.

Germany

Meissner Bolte
The Trademark Act was modified in 2019 in order to implement EU Directive 2015/2436 (known as the Trademark Modernisation Act).

Greece

Tsibanoulis & Partners Law Firm
Trademarks in Greece are regulated by Law 4679/2020, which implements the EU Trademark Directive 2015/2436 and the EU Enforcement of Intellectual Property Rights Directive (2004/48).

Serbia

Popović, Popović & Partners
The relevant legislation for trademark litigation is primarily the Law on Trademarks (6/2020), as it lists possible actions and other procedural particularities, such as available injunction measures and the securing of evidence.

Spain

ClarkeModet
Spain’s legislative framework for the protection of trademarks is fully aligned with the EU framework and establishes protection under both private and criminal law.

Sweden

Cirio Advokatbyrå AB
Swedish trademarks are governed by the Trademarks Act (2010:1877), which was updated on 1 January 2019 to implement EU Directive 2015/2436.