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Which courts are empowered to hear trademark disputes?
The commercial courts.
What actions can be taken against trademark infringement (eg, civil, criminal, administrative), and what are the key features and requirements of each?
Civil, criminal and misdemeanour actions are available.
Civil actions: In accordance with the Trademark Act, a trademark registration holder may institute a legal action against any person that has infringed the holder’s mark, seeking:
- to establish the infringement;
- to terminate the infringement and to cease all further actions with regards to the infringement;
- the seizure and destruction of the infringing objects;
- damages, usual compensation and unjust enrichment; and
- publication of the judgment.
Criminal actions: In accordance with the Criminal Code, criminal charges may be brought against any party that, contrary to regulations on trademark protection in commerce, uses a mark that is identical to a registered trademark with regards to goods or services that are identical to those for which the trademark is registered, or a mark that is identical or similar to a registered trademark with regards to goods and services that are identical or similar to those for which the trademark is registered, where such use misleads the public as to the origin of the source of the goods or services and gives the infringer considerable economic gain or causes substantial damage to the rightful mark owner.
‘Use’ includes highlighting a mark on the product or its packaging, or offering or placing on the market or storing the product for these purposes under that mark, or offering or providing services under the sign; or importing or exporting products labelled with the sign or using the sign on business products and advertising.
Criminal infringer are liable to imprisonment of up to three years.
An attempt to commit an act that amounts to a criminal offence as described above is also punishable.
Misdemeanour actions: In accordance with the Trademark Act, any legal person that uses a sign which is identical or similar to somebody else’s trademark, reproduces or imitates it, affixes it to goods or their packaging, offers for sale the goods designated by such a sign, puts them on the market or stocks them for such purposes, imports or exports the goods designated by such a sign, uses such a sign when providing services or on business papers and in advertising, without authorisation, shall be punished.
Natural persons, legal entities, and responsible persons in the legal entities, are liable to pay different fines. The fees are:
- €2,600 to €13,000 for legal entities;
- €260 to €1,300 for natural persons;
- €650 to €1,300 for responsible persons within the legal entities; and
- €650 to €6,500 for natural persons where the infringement took place during the activities of craftsmen.
Who can file a trademark infringement action?
Under the Trademark Act the following party may file an infringement action:
- the rights holder (ie, the person authorised by the rights holder under the general provisions on representation); and
- an exclusive licensee if so authorised by the licence agreement.
What is the statute of limitations for filing infringement actions?
The general statute of limitations is five years, and three years for remedies.
What is the usual timeframe for infringement actions?
It takes three to five years from filing to obtaining a final decision.
What rules and procedures govern the issuance of injunctions to prevent imminent or further infringement?
The Trademark Act and the general provisions of the Distraint Act govern the issuance of preliminary injunctions. The Distraint Act is the general act governing preliminary injunctions, while the Trademark Act sets out specific rules. Under the Trademark Act, on the request of a trademark owner which proves that its trademark has likely been infringed or threatened to be infringed, the court may order provisional measures comprising the termination or prevention of the infringement, particularly:
- ordering the opposing party to cease or desist from the acts infringing a trademark (the court may also issue such order against an intermediary whose services are being used by a third party to infringe a trademark); and
- ordering the seizure or removal from the market of the goods unlawfully designated by a trademark.
Procedural rules within the court procedures are governed by the general Civil Procedure Act, as well as parts of the Trademark Act.
What remedies are available to owners of infringed marks? Are punitive damages allowed?
A trademark owner can request remedies based on:
- the general provisions on remedies under the Obligations Act;
- the compensations provided for in a licence agreement typical for the circumstances of the case or
- the general provisions on unjust enrichment, as set out in the Obligations Act.
The remedies are not mutually exclusive.
Punitive damages are not allowed.
What customs enforcement measures are available to halt the import or export of infringing goods?
Mark owners may request Customs to record specific trademarks on a watch register. Customs will seize any goods that they deem are infringing the trademarks on the register and subsequently notify the relevant mark owner.
What defences are available to infringers?
Alleged infringers can respond to the claims brought by marks owner or entities authorised by them in a variety of ways. An infringer can argue that:
- the marks are not similar;
- the goods or services compared are not similar;
- the earlier mark has not been continuously used for five years;
- the infringer does not have standing in Court;
- the party which has issued the action does not have active legitimation to initiate proceedings; or
- the rights on which the action is based are not valid.
In customs enforcement procedures, the alleged infringer can file a complaint against the customs authorities if Customs have seized goods and the mark owner requests their destruction. In such case, the mark owner must initiate court proceedings.
What is the appeal procedure for infringement decisions?
Appeals can be filed against first-instance decisions issued by the commercial courts. These appeals have suspensive effect, and the case is then brought to the Higher Commercial Court.
Assignment and licensing
What rules and procedures govern the assignment of trademark rights? Must an assignment be recorded to have legal effect?
The Trademark Act and the Trademark Regulations regulate the assignment of trademark rights. The assignment must be recorded in order to have legal effect towards third parties.
What rules and procedures govern trademark licensing? Must a licensing agreement be recorded to have legal effect?
The Trademark Act and the Obligations Act govern trademark licensing, while the Trademark Regulations govern the procedural requirements before the State Intellectual Property Office.
A licensing agreement has effect:
- between the parties to the agreement after the signing of the agreement; and
- towards third parties upon recordal with the State Intellectual Property Office.
What provisions are typically included in a licensing agreement (eg, quality control clauses)?
Typical provisions cover the duration of the agreement, the form of the mark as registered that may be used (eg, word or figurative), the scope of the goods or services for which the licence is granted, the territory in which the mark may be used, the quality of the goods manufactured or of the services provided by the licensee.
Can a security interest be registered over a trademark? If so, what rules and procedure apply?
A trademark may be subject to securities and distraint procedures.
On request by one of the parties, the securities shall be entered in the register. The competent court for distraint procedures shall immediately notify the State Intellectual Property Office.
Such procedures have effect against third parties after their entry in the register.
A request for entry of securities in the register shall be filed under the conditions and in the manner prescribed in the Trademark Regulations.
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