Time to shop around
In this article, private practice trademark counsel from 19 jurisdictions provide a general overview of the performance of their countries’ Community trademark courts.
An attractive option
The only Community trademark (CTM) court in Austria – the Commercial Court of Vienna – is still a popular forum for the enforcement of trademark rights. There have been few changes in recent years and the advantages under the law still stand – namely:
- the possibility to formulate injunctions very broadly so that they also cover similar trademarks, which obviates the need to initiate new lawsuits in case of new infringements by the same infringer in a comparable form;
- the possibility to obtain a fully reasoned preliminary injunction, formulated just like a judgment, within four to eight weeks;
- the final resolution of the similarity of signs in preliminary proceedings, as this is to be considered as a question of law, not a question of fact;
- the possibility to enforce a preliminary injunction immediately and to obtain a final decision at second instance within five to six months, because further appeals to the Supreme Court are not usually allowed, unless new and important questions of law are involved; and
- the centralisation of prosecution at the Commercial Court of Vienna, with specialised panels of judges and the possibility to file parallel criminal infringement suits without the need to involve the public prosecutor.
The Commercial Court of Vienna does not issue statistics on cases involving CTMs, but counts all IP cases and unfair competition cases together. The impression is that the number of infringement suits involving CTMs is rising, because the CTM system is widely used by trademark owners. Preliminary procedures are relatively fast, but main proceedings may last two to three years.
Usually, the court’s decisions are well reasoned and high quality. The only real issue – the court’s narrow interpretation of genuine use, which required trademark owners to use their trademarks in exactly the same way as they are registered – has now been overcome and it has thus become easier to prove genuine use where the actual use slightly differs from the registered form.
Hans Georg Zeiner, Zeiner & Zeiner ([email protected])
Fast track on the merits
Five commercial courts were appointed to hear IP matters in Belgium (Brussels, Antwerp, Ghent, Mons and Liege). As a result, decisions have become more predictable and more consistent with European Court of Justice (ECJ) case law.
The Brussels Commercial Court has exclusive competence for all cases involving CTMs and Community designs. Belgium has become known as an ideal forum, offering interesting tools to combat IP infringements. Before initiating infringement proceedings, a rights holder may obtain additional evidence through ex parte discovery proceedings before the president of the commercial court, who may appoint an expert authorised to perform a surprise raid at the premises of the infringer. During this raid, the expert may gather evidence, including copies of documents relating to production, purchases, sales and inventory, as well as information as to the origin and distribution channels of the infringing goods. Under certain circumstances, the infringing goods may even be seized by the bailiff. The expert’s report may be used in regular proceedings on the merits – not only to substantiate the infringement, but also to calculate a claim for damages, as the profits made by the infringer are usually reported by the expert. In addition to initiating proceedings to obtain damages, Belgium allows rights holders to initiate quick and relatively inexpensive cease and desist proceedings. These expedited injunction proceedings on the merits allow rights holders to obtain, within approximately three months, an immediately enforceable cease and desist order, notwithstanding appeal, accompanied by penalties against the infringer. The court may also order accompanying measures such as publication of the judgment or destruction of the infringing goods. Moreover, if the alleged infringer lodges a counterclaim for invalidity of the invoked IP right, the same judge will assess the merits of this counterclaim, which contributes to an efficient legal system. Finally, the new Code of Economic Law foresees the possibility to introduce combined claims for unfair trade practices and IP infringement, which will most likely make the fight against, for example, lookalikes easier and more effective.
Paul Maeyaert, ALTIUS ([email protected])
The only CTM court designated for the Czech Republic, the City Court in Prague, has also been designated as the single court to hear all national trademark litigation cases. CTMs registered or applied for before May 1 2004 have been automatically extended to the territory of the Czech Republic as of May 1 2004. Under the EU CTM Regulation (207/2009) and the Czech Trademark Act, holders of earlier national rights acquired in good faith may seek a court judgment prohibiting the use of such automatically extended CTMs in the Czech Republic. Contrary to expectations, this type of litigation has not been particularly common over the past decade.
Under the practice of the Czech Industrial Property Office, the existence of court decisions prohibiting the use of a CTM in the Czech Republic does not preclude that CTM from being invoked as an earlier trademark in opposition proceedings against younger applications. This also concerns new applications filed by the holder of the conflicting earlier national right – for example, when updating its mark or extending the mark series.
According to a judgment of the Prague High Court, when applying the relevant section of the Trademark Act, the court will not consider any other circumstances, such as the CTM owner’s prior unregistered rights in the Czech Republic. The court will limit its examination to the conditions laid out in the relevant provision – that is, the existence of an earlier national right acquired in good faith and the likelihood of confusion between that national right and the automatically extended CTM.
In another case the successful plaintiff – the holder of an earlier national right – sought enforcement of a judgment that prohibited the use of an automatically extended CTM in the Czech Republic. The defendant – the foreign owner of the CTM in question – had no property in the Czech Republic other than the CTM itself. The Czech Supreme Court held that the Czech courts have jurisdiction to enforce a judgment prohibiting the use of an automatically extended CTM through fines. Moreover, the Supreme Court held that the local competence of the Prague District Court 6 is based on the location of the Czech Industrial Property Office.
Michal Havlík, Všetečka Zelený Švorčík Kalenský and Partners ([email protected])
A consistent approach
The only CTM court in Denmark is the Maritime and Commercial Court, located in Copenhagen. It specialises in cases involving commercial matters, including cases related to IP rights. The court processes around 350 to 400 cases a year, 35% to 40% of which involve IP rights (trademarks, designs, patents and other exclusive rights). Because of its high level of specialisation, the court has significant expertise in IP litigation.
Most of the IP cases that come before the court concern trademarks (approximately 65% to 70%). The practice concerning trademarks in Denmark is generally based on the same ground rules as are laid out by the ECJ. Therefore, the court’s decisions are essentially very similar to those of the ECJ. The court’s significant experience with trademark cases also leads to consistent and high-quality decisions concerning CTMs.
According to the information at hand, the court issued decisions in four cases involving CTMs in the first six months of 2014. In 2013 nine cases involving CTMs were heard. The court’s decisions are at High Court level, while the appeal court is the Supreme Court. In the last 10 years 17 decisions involving CTMs have been appealed to the Supreme Court, but only three have been reversed (although five of the most recently appealed decisions have not yet been decided).
In one of the appealed cases, C 98/13 Blomqvist, the Supreme Court sought clarification from the ECJ in relation to, among other things, the interpretation of the EU CTM Regulation. Having received the response from the ECJ, the Supreme Court confirmed the decision of the Maritime and Commercial Court. Thus, the quality of decisions from the Danish CTM court is very good and aligned with the decisions of the ECJ.
The Danish Maritime and Commercial Court is a forum that litigators look to in relation to IP cases, especially trademark cases. This is primarily due to its high level of specialisation and the high quality and consistency of its decisions.
Lasse Arffmann Søndergaard Christensen, Gorrissen Federspiel ([email protected])
A single power
The single first-instance CTM court for Estonia – the Harju County Court – also decides national trademark prosecution and cancellation disputes, and most enforcement disputes. Its decisions may be appealed to the Tallinn District Court. The Supreme Court reviews decisions of the Tallinn District Court as a cassation court on points of law or procedural issues only. Therefore, trademark know-how is mainly consolidated in a single court. Ongoing reforms will ultimately establish the sole jurisdiction of the Harju County Court for all industrial property disputes.
There are currently three judges who specialise in IP matters and as a result decisions are much more consistent and predictable. However, as the second-instance appeal court has no specialisation, first-instance decisions tend to be confirmed with little real justification or, in the worst cases, overturned for poor reasoning.
The Estonian courts follow the decisions of the ECJ and judges prefer to assess the legal issues, such as likelihood of confusion, by themselves rather than relying on documentary evidence, which in most cases is rejected.
When seeking interim relief, the request must usually be filed together with the infringement action itself, which means that more effort is needed to start the infringement case. Injunction requests are reviewed within a couple of days, mostly in ex parte proceedings, and about half of them are granted without any monetary deposit to the court to back up the injunction. There are already some cases in which evidence has been collected and preserved before the infringement action has been filed.
A decision on the merits can be expected within one year in standard cases; in more complex infringement cases the timeframe is more unpredictable and can be up to three years. There is established Supreme Court case law awarding damages on the basis of a hypothetical licence fee and claims for unjust profits. Court costs and legal fees can be claimed from the losing party. Previously, pre-set limits were imposed on the legal fees that the winning party could collect; but the Supreme Court annulled these as unconstitutional in 2014 and the court must now assess the amount of reasonable costs on a case-by-case basis.
Almar Sehver, AAA Legal Services ([email protected])
Assessing the new IP court
The newly established IP court commenced operations in September 2013. The court has exclusive jurisdiction for most IP-related matters and was also designated the sole CTM court in Finland. As yet, it is too early for a jurisprudential assessment of its work.
The court has jurisdiction over contentious IP cases and also acts as the appeal instance for decisions of the Patent and Trademark Office (PTO). In non-contentious matters the new court is trying to handle cases from start to finish in no more than a year, which is quite impressive considering that it inherited a considerable backlog of cases from the PTO Appeal Board. Once the backlog eases, handling times will hopefully be further reduced. The early indications in non-contentious cases are that the court is mostly following PTO decisions and upholding few appeals.
The new IP court acts as a court of first instance in contentious matters. So far, there have been few decisions in contentious cases, so it is impossible to evaluate the court’s jurisprudence, especially with regard to how OHIM and ECJ case law will be applied domestically. Decisions in contentious cases are appealed directly to the Supreme Court, which requires leave to appeal. This is granted in fewer than 10% of cases, so it remains to be seen whether the new court will effectively become the court of final instance or whether the Supreme Court will be forced to accept more appeals in IP matters in the future. The IP community is also expecting the court to deliver high-quality decisions. So far, the handling times in contentious cases have been under one year and the first cases are now awaiting leave to appeal at the Supreme Court.
The hope and expectations are that concentrating all IP cases in one court will improve the quality and consistency of decisions. This is of great importance given that many of the court’s decisions will be final.
Erkki Holmila, Berggren Oy Ab ([email protected])
The IP specialised court of Paris has exclusive jurisdiction over CTM, patent and Community design matters. At first instance, it has four sections, each of which has three judges; on appeal, there are two sections with three judges each. These judges specialise exclusively in IP matters. The main advantages of French CTM litigation are as follows:
- the specialisation of the judiciary;
- the infringement seizure procedure;
- a quick preliminary injunction procedure; and
- the possibility to obtain a decision on the merits within one year, or less if necessary.
In addition, there are no court fees and the process is relatively cheap and efficient.
Infringement seizure requests are presented in ex parte proceedings before one judge, who will immediately grant authorisation to proceed with the seizure. The bailiff will conduct the seizure with the assistance of a patent or trademark attorney and any other persons authorised in the order. The bailiff will seize any products and documents related to the infringement, including samples and accounting documents.
This procedure is extremely efficient, as it allows the rights holder to obtain evidence of the infringement, the number of infringing goods and their origin.
If the infringement is obvious, the rights holder may also request a preliminary injunction order prohibiting the use of the mark in dispute. When the use is so detrimental that it will cause irreparable harm, such measures may be ordered ex parte. In other cases, the procedure is inter partes. The order is granted within one day to three months.
A regular civil action on the merits takes between 12 and 18 months. In urgent cases the court may grant a fixed date for the hearing, and the decision on the infringement and damages will be granted within approximately three to six months.
If the court decides that there is infringement, it will prohibit the use of the mark in dispute within the whole of the European Union, award damages for the whole European Union and order publication of the decision and partial reimbursement of lawyers’ fees.
Caroline Casalonga, Casalonga Avocats ([email protected])
The numbers game
Germany has established 19 first-instance and 18 second-instance CTM courts in accordance with Article 95(1) of the EU Community Trademark Regulation – the largest number in Europe. This mainly corresponds to the number of federal states of Germany. The specialised chambers are competent to hear disputes involving signs, including national German marks as well as international registrations covering Germany.
There is no specific case law of German CTM courts in their function as CTM courts, instead of ruling as ‘ordinary’ trademark courts. The courts are generally composed of experienced judges who specialise in IP matters and issue case law to a high standard. This is especially true of the most important German trademark courts, such as those in Hamburg, Dusseldorf, Frankfurt, Munich and Berlin. Decisions are rendered quickly: for example, an ex parte interlocutory injunction order may be obtained within a few days. Moreover, the costs of trademark litigation in Germany are reasonable and by far lower than those of respective proceedings in, for example, the United Kingdom.
The German trademark courts and the Federal Patent Court (in administrative opposition proceedings or proceedings regarding absolute grounds for refusal) usually refer to decisions of the European courts, and are aware of the case law and decisions of the European courts in trademark matters.
The Federal Supreme Court and the Federal Patent Court actively make requests for preliminary rulings to the ECJ on the interpretation of the EU Trademark Directive and thus contribute to the clarification of trademark law in Europe.
In trademark matters the German courts also follow ECJ case law, even where the latter has established a new concept (eg, the expanded concept of trademark functions in case of double identity). On the other hand, in rare cases the German courts explicitly refuse to follow European case law. One specific issue of disagreement between the German and European approach seems to be the principle of neutralisation in the assessment of similarity between conflicting signs. In a February 13 2014 decision (30 W (pat) 43/12) the Federal Patent Court explicitly rejected the practice of the ECJ and ruled in favour of a likelihood of confusion between pharmaceutical marks SINUVEX and CINNOVEX, due to their aural similarity, which could not be neutralised by visual differences.
Florian Schwab, Boehmert&Boehmert ([email protected])
The speed of change
In Ireland, the High Court and the Supreme Court are the designated CTM courts. In practice, this means that almost all trademark infringement proceedings are brought in the Commercial Court division of the High Court, which is a fast-track ‘case-managed’ court. The particular advantage of this jurisdiction for plaintiffs is its speed and efficiency – most matters are concluded within 20 weeks of being entered on the Commercial Court List. It is also possible to seek an expedited hearing in appropriate circumstances, which can result in a trial date within three months.
The consequence of this speed is that the usual common law pre-trial litigation procedures are also expedited, with a timetable set at the directions hearing for the delivery and a reply in each phase of the litigation through to trial. Compliance is closely monitored, both by the parties themselves and by the court, so the defendant is forced to respond proactively. One of the rationales behind the case-managed approach and a major benefit of the system is to encourage the parties to focus on the key issues between them in an effort to take a more streamlined and efficient approach to procedures such as discovery and to the hearing itself.
Commercial Court judges are familiar with IP and trademark matters, as a consequence of almost all substantive matters in the IP area being heard by this division of the court. As a result, the permanent High Court judges allocated to this division have a solid fundamental understanding of trademark and IP law principles, and their decisions are both considered and well respected. Appeals of Commercial Court decisions are currently made to the Supreme Court, which has sitting judges who were formerly very experienced commercial law practitioners with a strong track record in hearing appeals from IP cases. However, a new Court of Appeal is being set up and as of October 2014 appeals in trademark matters will be made to that court, with a right of final appeal to the Supreme Court.
Trademark owners would be well advised to utilise the Commercial Court as a forum for trademark disputes, as it provides an efficient and consistent service which facilitates the prompt disposal of cases.
Alistair Payne, Matheson ([email protected])
Affordable and efficient
The CTM courts in Italy are worth considering, even for cross-border disputes, due to the affordable costs of litigation, the high level of efficiency in the courts and their generally pro-rights holder stance – especially when well-known trademarks are concerned.
Since 2003 CTM cases in Italy have been dealt with by specialised IP divisions set up in 12 existing courts (this number increased to 21 in September 2012). Since 2014, cases involving foreign companies have been concentrated in nine courts (Bari, Cagliari, Catania, Genoa, Milan, Naples, Rome, Turin and Venice).
Urgent measures are typically examined and granted quickly (usually within a few weeks in trademark issues), and the relevant orders (injunctions; an order of withdrawal from the market, which may even be granted at a preliminary stage, compelling the infringer to buy back the illicit products; a fine for each violation, which is paid to the rights holder; and publication of the order at the infringer’s expense) may become final, with no need to start subsequent proceedings on the merits. CTM proceedings on the merits have also been expedited: the court of Turin currently seems to be the most efficient (the average duration is less than two years).
In recent years significant improvements were introduced in relation to damages and disgorgement of the infringer’s profits, with the assessment of relevant amounts often exceeding €1 million. Lost profits are calculated deducting only the variable costs and thus are usually high; reputational damages and reduced value of the IP assets are also considered, which in trademark infringement cases may be even more relevant than lost profits.
The quality and consistency of decisions are usually high, especially in those courts that hear a high number of cases (mainly Milan and Turin). However, while in the past decade public perception proved key in rulings, in line with the decisions of the EU courts, more recently a more formalistic approach seems to have prevailed. In any case, highly renowned marks are normally protected against any use in trade of an identical or similar sign, even where there is no likelihood of confusion, and sometimes only on the basis of the high degree of similarity between the trademark and the assumed infringing sign.
Cesare Galli, IP Law Galli ([email protected])
Experience, quality, speed
The District Court of The Hague is the sole CTM and Community design court in the Netherlands. For decades, it has been the exclusive forum for multiple issues within the IP field (eg, patent cases). Due to this exclusivity, the court has acquired extensive knowledge of trademark law and an in-depth understanding of the needs and interests of rights holders in general.
The experienced team of judges guarantees swift proceedings and high-quality decisions. Decisions in standard court proceedings may be delivered within one year, while summary injunctions may be obtained within one day, or – due to the court’s modern attitude towards electronic communications – within hours. The court has always embraced CTM rights and has applied them without hesitation. It fully appreciates their unitary character and is confident in granting EU-wide injunctions.
The District Court of The Hague is defined by its progressive, creative ideas which provide for efficient and effective proceedings. Its civil process innovation project – initiated two years ago – has proven to be a success. In designated project cases, the court was able to render a decision within as little as 16 weeks, while maintaining a high level of quality.
Because of their extensive knowledge, the judges of the District Court of The Hague are frequently called upon by other courts as deputy judges in IP-related matters. The court is also one of the few district courts in the Netherlands where protective briefs can be filed in order to request the court to hear a case in advance when ex parte measures are being sought.
Another benefit of litigating CTM rights in the Netherlands is that since the implementation of the EU IP Enforcement Directive, Dutch procedural law provides for full compensation of legal costs. This means that rights holders can claim and obtain not only an EU-wide injunction, but also full compensation for their costs.
Overall, the Dutch regime provides for a swift, modern, efficient and rights holder-friendly system, which keeps proving its value for many CTM holders.
Gregor Vos and Sebastiaan Brommersma, Klos Morel Vos & Schaap ([email protected]) ([email protected])
A decade of practice
In May Poland celebrated the 10th anniversary of its accession to the European Union. This was also the 10th year of the expansion of the CTM system to Poland. This milestone represents a good opportunity to examine one of the key factors for the proper functioning of the CTM system in Poland – the CTM court.
The CTM court is seated in Warsaw and has been headed for many years by Judge Beata Piwowarska. The court has sole jurisdiction over all cases brought before the Polish civil courts that relate to CTMs or Community designs. In practice, the court also accepts claims relating to copyright or unfair competition, but only if such claims are brought together with claims relating to CTMs or Community designs. Other IP-related cases – for instance, involving patents or national trademarks – fall within the jurisdiction of the general civil courts, as Poland has not established a specialised IP court other than the CTM court.
The general consensus is that the CTM court acts fast, especially compared to the general civil courts. A preliminary injunction will be issued within one or two days of a motion being filed; by contrast, it often takes one to two weeks – or even longer – to obtain a preliminary injunction in a general civil court. The same applies to the speed of the proceedings. In simpler cases a verdict is often issued within one to two months of the statement of claims being filed, whereas it takes around a year or more to obtain a verdict at first instance in even simple cases before a general civil court.
The quality and predictability of decisions issued by the CTM court are also high, especially when compared to those of the general civil courts. One reason for this is that the judges at the CTM court are truly interested in intellectual property and have deep knowledge of the law and jurisprudence, both Polish and European. Since the judges in the general civil courts deal with many different cases, few of which relate to intellectual property, they rarely have the same expertise.
Marcin Fijalkowski, Baker & McKenzie Krzyzowski i Wspolnicy spk ([email protected])
An encouraging start
In recent years Portugal has made concerted efforts to strengthen the judicial enforcement of IP rights and, in particular, the judicial enforcement of CTMs and Community designs. A major step forward in this context was the creation of the specialised IP Court, based in Lisbon, with exclusive nationwide jurisdiction over invalidity and infringement actions involving all sorts of IP rights. This court also has jurisdiction over appeals of decisions of the Portuguese Industrial Property Office.
The IP Court, which began operations on March 30 2012, has replaced the Lisbon Commercial Court in the functions that the EU CTM Regulation entrusts to the CTM courts. It became the only (first-instance) Portuguese CTM court with exclusive nationwide jurisdiction over CTM infringement and validity matters.
In the first two years of its existence about 1,500 judicial actions were filed with the court, of which more than 400 were proceedings for interim injunctions. The IP Court’s performance in its two first years of operation has been satisfactory and undoubtedly represents a major improvement on the situation that existed before its creation. The IP Court has demonstrated its capacity to adjudicate interim injunctions within four to five months and to hand down judgments in ordinary trademark infringement proceedings within 15 months (albeit with an occasional backlog). More importantly, however, through the quality of its decisions, the IP Court has significantly improved the enforcement of IP rights in Portugal and reduced the related costs and uncertainties.
CTM owners and stakeholders have good reason to believe that Portugal – even while it has been struggling with a severe economic crisis that has affected most of its public servants, including judges and all of those who dedicate their lives to the judiciary – has made remarkable progress in strengthening the enforcement of IP rights and has definitely become an IP-friendly jurisdiction.
João Miranda de Sousa, Garrigues ([email protected])
The impact of the new Civil Procedural Code
Even after the recent legislative changes following the entry into force of the new Civil Procedural Code, the Romanian CTM courts with jurisdiction over non-interim CTM infringement procedures are still:
- the Bucharest High Court at first instance;
- the Bucharest Court of Appeal at second instance; and
- the Supreme Court, as the final court.
The CTM courts for interim injunctions in infringement proceedings are:
- the Bucharest High Court at first instance; and
- the Bucharest Court of Appeal as the final court.
The new Civil Procedural Code provides for a special appeal which can be filed in very limited circumstances (more limited than before) expressly provided for by law, thus accelerating proceedings.
The advantages of the Romanian legal system are as follows:
- It is cost friendly, as the official fees for obtaining a decision in CTM infringement proceedings are minimal (unless damages are claimed, when the official court fees are then a percentage of the requested amount) and attorneys’ fees are sensible.
- The CTM courts are favourable towards rights holders.
- Romania has had specialised IP courts since 2005, which in 2007 were designated as CTM courts; this specialist experience means that judges are knowledgeable in the field.
- In simple cases a first-instance decision on the merits can be obtained within about six months. More complex cases take between 12 and 18 months. Given that appeals may be brought only in very limited circumstances, a final decision may thus be obtained within about 12 months in simple cases and 24 months in complex cases.
- Damages and legal costs can be obtained in court.
- Decisions are fairly consistent.
Andra Musatescu, Andra Musatescu Law & Industrial Property Offices ([email protected])
A significant issue in relation to CTM enforcement in Slovakia – which is common to the enforcement of all IP rights – is the limited amount of tried cases in this regard. About 100 unfair competition and industrial property cases have been filed annually in recent years; however, a significant number of these were not infringement disputes per se, but mostly actions required by the legal regulations relating to customs measures.
This – combined with the fact that, of the three sets of courts (first instance and appellate) in Slovakia that deal with industrial property and unfair competition cases, only one (the Banska Bystrica District Court) encourages judicial specialisation in intellectual property (all other judges handling CTM cases in Slovakia are general commercial judges) – has had a significant impact on the relative lack of experience of courts with IP enforcement. As a result, court proceedings tend to involve a certain element of unpredictability.
The way that cases are assigned also affects the length of proceedings and makes it difficult to estimate how long it will take to obtain a final judgment. There are significant differences between the respective CTM courts in Slovakia, and it can take from 24 months (in Banska Bystrica ) to several years (elsewhere, especially Bratislava, which has the heaviest caseload of any court) to obtain a final decision in main proceedings. However, the protracted nature of court proceedings is to some extent mitigated by an efficient preliminary injunction regime.
Peter Kružliak, Brichta & Partners ([email protected])
A route to damages
In Slovenia, the Ljubljana Circuit Court at first instance and the Ljubljana Higher Court at second instance have exclusive jurisdiction over all disputes concerning intellectual property, including CTM cases pursuant to the EU CTM Regulation. Although there is no official specialised IP court or department, all IP cases are distributed between seven or eight judges in the Commercial Law Department of the Ljubljana Circuit Court. The concentration of IP cases among a relatively small number of judges allows them to specialise in trademark law and follow EU trademark case law. Thus, the judges handling trademark matters are well informed and experienced.
It usually takes more than a year and sometimes up to three years to obtain a judgment at first instance. However, recently the proceedings for temporary measures (eg, preliminary injunctions or temporary seizure and storage of suspect goods) have become quite efficient, so rights holders can now prevent infringement quite quickly (within two to six months) by filing a request for temporary measures alongside or before the filing of an action.
Recently, it has become easier to obtain damages in infringement cases. Even where the rights holder cannot prove the extent of the infringement in order to apply the licence analogy for damages (eg, because the defendant did not provide the court with the requested information and documents), the courts are now more willing to award damages by exercising their discretionary right to determine the extent of the infringement by themselves.
Jasna Habič, ITEM doo ([email protected])
A success story
The figures speak for themselves. Ten years on, the Spanish CTM courts have heard more than 600 CTM and Community design-related cases, adjudicating interim injunctions within around two months and handing down judgments in ordinary infringement proceedings within 12 months, reduced to two months at second instance.
The select, highly specialised and experienced team of judges sitting in the Spanish CTM courts boasts a track record that is difficult to match by other courts operating in Spain. In operation since 2004, the Alicante Commercial Court and Provincial Court, designated as CTM courts of first and second instance, are a good example of how an EU member state can set up structures that efficiently and cost-effectively grant judicial protection to rights directly afforded by EU institutions, ensuring the proper implementation and enforcement of EU legislation in its territory.
The impressive performance of the Spanish CTM courts and the equally impressive levels of user satisfaction over the past 10 years have proven that entrusting the enforcement of European IP rights to national courts was no mistake – contrary to certain initial criticisms within IP circles. The success story of the Spanish CTM courts mainly results from the concentration of exclusive jurisdiction for CTM infringement and invalidity actions in a single court located in Alicante. The court’s physical proximity to the OHIM headquarters and participation in its networking programmes, the specialised training of its judges and the judicial selection process have been key factors behind the success of the Spanish CTM courts.
Over the last 10 years, the Spanish CTM courts have made several significant contributions to the consolidation of the European trademark system. The most spectacular was the burial of the so-called ‘immunity effect’ that many Spanish courts persistently attributed to the registration of a trademark. Thanks to a request for a preliminary ruling made to the ECJ by the Spanish CTM court (Case C 561/11 Fédération Cynologique Internationale), it is now crystal clear – even in Spain – that the registration of a trademark does not grant its holder any immunity in respect of enforcement actions eventually taken against the use of that trademark by holders of prior (conflicting) trademarks. As a result of this request, the ECJ ruled once and for all that the exclusive right of the proprietor of a Community trademark to prohibit third parties from using, in the course of trade, signs that are identical or similar to its trademark extends to a third-party proprietor of a later registered Community trademark, without the need for that later trademark to have been declared invalid beforehand.
Undoubtedly, the Spanish CTM courts have empowered rights holders by providing access to a speedy, cost-effective dispute resolution system, with consistent and predictable decisions. In short, the courts have positioned themselves at the forefront of IP enforcement in Europe. Thanks to their performance, Alicante – arguably one of the European IP capitals – is an excellent forum in which to resolve CTM disputes.
João Miranda de Sousa, Garrigues ([email protected])
Establishing a specialised court
The Stockholm District Court is the sole designated court for disputes regarding CTM infringement in Sweden. In addition, the court regularly handles other IP matters as well as matters of unfair competition, resulting in a highly specialised court with experienced judges and well-reasoned judgments. The duration of main proceedings differs depending on the complexity and extent of the dispute. Less extensive proceedings may be resolved within a few months, while the most extensive proceedings may take several years.
The duration of appeal proceedings likewise differs; however, the court aims to resolve disputes within six months of filing of the appeal. Decisions regarding leave to appeal to the Supreme Court are usually announced approximately six months after filing of the appeal. The duration of the entire procedure, from appeal to judgment, is approximately 18 months, but in practice is often longer.
The plaintiff may request interim measures – including orders of sequestration and injunctions on penalty of a fine, as well as information orders and infringement investigations – in order to force the defendant to provide detailed information regarding the presumed infringement and to secure evidence. Decisions are normally announced within a few weeks, provided that all conditions are met. Decisions regarding infringement investigation are normally announced within a few days.
Remedies in disputes regarding CTM infringement include a prohibition on penalty of a fine, damages and destruction of infringing property and implements used in connection with the infringement. The plaintiff may also request that the defendant fund publication of the judgment to the public. The winning party is normally granted compensation for litigation expenses. Furthermore, trademark infringement is a criminal offence in Sweden and may result in fines or imprisonment.
Reasonable compensation corresponds to a hypothetical licence fee, which is determined by estimating the compensation that the parties would have agreed to in the event of a voluntary agreement. In addition, the infringing party is required to provide compensation for further damages which the plaintiff has suffered. When determining the compensation, special consideration will be given to lost profits, profits made by the infringing party, damage to the reputation of the trademark, moral damage and the particular plaintiff’s interest in preventing future infringement.
The Swedish government recently announced a proposition to establish a specialised IP and competition court, as well as an equally specialised court of appeal, which is expected to result in even higher-quality and more consistent judgments. The change is estimated to take effect on July 1 2015, although no exact date has been confirmed.
Christina Berggren and Nazanin Esfandiari, MAQS Law Firm ([email protected]) ([email protected])
A choice of forums
In the United Kingdom, both the High Court and the Intellectual Property Enterprise Court (IPEC) are designated as CTM courts of first instance. This provides a degree of choice to would-be litigants. The IPEC is aimed at small and medium-sized enterprises that wish to enforce their CTM rights. It has a more streamlined procedure and will permit disclosure or cross-examination of witnesses only in exceptional circumstances. Cases take around six months from commencement to trial and the CTM infringement trial lasts no more than two days. However, the IPEC Court will hear cases only where the value of the claim is less than £500,000. In addition, the recovery of costs by a successful party in the IPEC is capped at £50,000. Another advantage of the IPEC is that the judge will always be an IP specialist. The current permanent judge is Judge Hacon, who was previously a barrister specialising in intellectual property.
The alternative forum, which sees the majority of CTM infringement cases, is the High Court. CTM infringement cases can take nine to 12 months to reach a trial, with the trial itself usually taking between three and seven days.
The High Court has both disclosure and cross-examination of witnesses. One area that has improved recently is that, following the decisions in Interflora v Marks & Spencer, there is likely to be less reliance on survey evidence in CTM infringement cases. This is likely to lower the costs of High Court CTM infringement litigation (as will the recent introduction of compulsory cost budgeting) and shorten trial lengths. The rationale for this decision is that the question of whether there is likelihood of confusion is a question for the judge.
As a consequence, there may be an increase in the use of the High Court summary judgment procedure in straightforward CTM infringement claims involving likelihood of confusion, which will speed up the time to judgment in such cases. There is no cap on the size of claim that can be brought in the High Court and the losing party will usually be ordered to pay the successful party’s legal costs. Specialist IP judges are also available in the High Court, although non-specialist judges do sometimes hear trademark cases.
Peter Brownlow, Bird & Bird ([email protected])