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.
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.
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.
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.
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.
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.
The special commercial regional trial courts have jurisdiction over civil actions involving IP rights violations with damages claims of any amount.
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.
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.
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.
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.
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.
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.
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.
In the first of a new series, we shed light on how this pharmaceutical giant's trademark holdings have contributed to its business strategy.