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Enforcement

Jurisdiction

Which courts are empowered to hear trademark disputes?

Any party that is adversely affected by a decision of the Boards of Appeal may bring an action before the EU General Court within two months of notification of the contested decision. A decision of the General Court may be appealed to the European Court of Justice.

For all infringement actions and, if they are permitted under national law, actions in respect of threatened infringement relating to EU trademarks, national courts and tribunals of first and second instance (the EU trademark courts) have exclusive jurisdiction. Counterclaims may be filed before the EU trademark courts.

Actions

What actions can be taken against trademark infringement (eg, civil, criminal, administrative), and what are the key features and requirements of each?

All actions regarding infringement of EU trademarks are under civil law pursuant to the EU Trademark Regulation and are heard by the EU trademark courts of the EU member states. Specific rules govern the jurisdiction and territorial scope of remedies granted by the EU trademark courts. Generally, the procedural rules of the member state involved will govern the proceedings. 

Enforcement actions under criminal law (if counterfeiting is involved) may be brought at national level under the relevant national law. Criminal law enforcement rules for trademarks have not been harmonised in the European Union. As a result, the options available at European level for criminal law enforcement vary considerably. 

Who can file a trademark infringement action?

The proprietor of an EU trademark and authorised licensees can file a trademark action. Subject to a different arrangement in the licence agreement, a licensee may bring proceedings for infringement of an EU trademark only if the proprietor consents. However, the holder of an exclusive licence may bring such proceedings if the proprietor, after formal notice, does not itself bring infringement proceedings within an appropriate period.

What is the statute of limitations for filing infringement actions?

The statute of limitations varies across the European Union. In general, the timeframe is usually between three and six years from the date of the infringement or from the date on which the proprietor knew or ought to have known the facts upon which the action is based.

What is the usual timeframe for infringement actions?

As infringement actions are heard by the EU trademark courts in individual member states, the timeframes can differ considerably. Some EU trademark courts can grant a first-instance decision in three or four months; others can take years. 

Injunctions

What rules and procedures govern the issuance of injunctions to prevent imminent or further infringement?

Application may be made to the courts of a member state ‒ not just to an EU trademark court ‒ for such provisional or protective measures in respect of an EU trademark as may be available under the law of that state in respect of a national trademark. The most common such measure is an injunction to prevent imminent or further infringement. The courts hearing the application for provisional or protective measures may have jurisdiction across the European Union and may also act even where another EU trademark court has jurisdiction as to the substance of the matter.

Remedies

What remedies are available to owners of infringed marks? Are punitive damages allowed?

Where an EU trademark court finds infringement, the primary remedy is an order prohibiting further infringement or threatened infringement, accompanied by measures aimed at ensuring that the prohibition is complied with (eg, a penalty payment).

Damages and other remedies are governed by national law and may vary. In general, there are usually quantified damages in the form of compensation of the claimant’s loss, disbursement of the profits made by the defendant or payment of hypothetical royalties. Under civil law, punitive damages are not usually awarded, but they are possible and are increasingly sought.

Other remedies include claims for seizure and destruction of the infringing products, disclosure of information, rendering of accounts and publication of the judgment.

As a rule, infringement of an EU trademark entitles the owner to remedies across the whole European Union if the relevant EU trademark court has the jurisdiction to grant pan-EU relief. However, pan-EU remedies are limited where, for linguistic or other reasons, there is no infringement in a certain part of the European Union..

Customs enforcement

What customs enforcement measures are available to halt the import or export of infringing goods?

The principle of regional exhaustion applies in the European Union, so proprietors of EU trademarks may prevent the unauthorised placing of all goods on the market in the European Union. Seizure and destruction of counterfeit goods at the European Union’s external border(s) is available. The proprietor of an EU trademark may file an application for action covering all EU member states, as a result of which customs authorities will assist in identifying, seizing and reporting infringing goods. Infringing goods in transit through the European Union may also be seized, even if they are not destined for EU consumers, unless the infringer can prove that there is no infringement in the country of final destination. Grey goods and parallel imports do not fall within the remit of the customs authorities, although the proprietors of EU trademarks can take civil action to prevent their sale for the first time in the European Union.

Defence

What defences are available to infringers?

A number of defences are available, as follows:

  • honest use of the name or address of a natural person (the ‘own name’ defence);
  • honest use of non-distinctive and descriptive signs or indications;
  • honest referential use of signs and indications regarding the intended purpose of goods or services (resale of genuine goods, indication of accessories or spare parts);
  • use of an EU trademark in relation to goods which have been put on the market in the European Economic Area under that mark by the proprietor or with its consent (exhaustion of rights);
  • use of a later EU or national trademark which has not been declared invalid;
  • use of rights acquired before the filing or priority date of the EU trademark registration;
  • tolerated use of a later sign by the EU trademark proprietor (acquiescence);
  • due cause, where reputation of the earlier EU trademark is claimed and there is unfair advantage or detriment;
  • the existence of absolute grounds for refusal (by way of invalidity action or counterclaim);
  • use or registration of a later mark, if the EU trademark was liable to be revoked for non-use at the time the later mark was adopted; or
  • evidence that the EU trademark proprietor is not entitled to prohibit the placing of goods in transit through the European Union on the market in the country of final destination.

Appeal

What is the appeal procedure for infringement decisions?

First-instance decisions of national EU trademark courts can be appealed to the EU trademark courts of second instance under the conditions determined by the national laws of the respective member state. Further appeals may be available where the member state’s judicial system has a third instance. EU trademark courts may make references on points of law (in particular on the EU Trademark Regulation) to the European Court of Justice.

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