Enforcement

Trademark enforcement proceedings

What types of legal or administrative proceedings are available to enforce the rights of a trademark owner against an alleged infringer or dilutive use of a mark, apart from previously discussed opposition and cancellation actions? Are there specialised courts or other tribunals? Is there any provision in the criminal law regarding trademark infringement or an equivalent offence?

Except for the administrative procedure in front of the Industrial Property Office and the administrative court as a second instance, the rights holder can file a lawsuit in front of the primary court (there are not specialised courts), a warrant for actions in front of the Market Inspectorate, and in front of the Coordinative Commission, which is part of the Industrial Property Office. Note that according to practice, the latter two institutions do not make a significant contribution in the fight against the infringement of intellectual property rights.

Article 285 of the Criminal Code provides that a felony is: 'the offence of infringement of industrial property rights and unauthorised use of a someone else’s company against a person who contravenes an industrial property law with the intent to deceive buyers or service users of infringing another's trademark'. However, it must be borne in mind that the prosecution is inconsistently applying or enforcing this legal norm.

Procedural format and timing

What is the format of the infringement proceeding?

Discovery, live testimony and experts are available.

In case of infringement, a state authority and the court are competent.

Depending on which institution is proceeding, the procedures may be different, but in general both procedures require:

  • filing a warrant (lawsuit);
  • submitting and exhibiting evidences;
  • carrying out an examination; and
  • issuing a decision.

There are no hearings in front of the administrative bodies.

Usually, the administrative procedure may last:

  • two to five years in first instance;
  • one to one-and-a-half years in second instance; and
  • one to one-and-a-half years in third instance.

The court procedure may last:

  • one to one-and-a-half years in first instance;
  • three months to one-and-a-half years in second instance; and
  • eight months to one-and-a-half years in third instance.

Criminal prosecution of IP infringers is provided, but in practice it is rarely used.

Burden of proof

What is the burden of proof to establish infringement or dilution?

The burden of proof falls on to the party that initiates the procedure regarding the existence of infringement.

In the case of a claim for revocation of a trademark for non-use, the burden of proof shall be borne by the rights holder.

Standing

Who may seek a remedy for an alleged trademark violation and under what conditions? Who has standing to bring a criminal complaint?

Only the rights holder. The licence holder or other authorised person, can file remedies only if there is such provision in the agreement or the authorisation.

Border enforcement and foreign activities

What border enforcement measures are available to halt the import and export of infringing goods? Can activities that take place outside the country of registration support a charge of infringement or dilution?

  • customs measures are the available measures for intellectual property rights' enforcement. To use this measure, the following requirements need customs office approval:
    • an existence of a protected right with effect in Macedonia (ie, registration of the industrial property right in Macedonia); or
    • a submitted request for customs protection, with it requiring approval by the customs office; and
  • charges of infringement or dilution of intellectual property rights outside Macedonia are not relevant.
Discovery

What discovery or disclosure devices are permitted for obtaining evidence from an adverse party, from third parties, or from parties outside the country?

Proof of evidence provided outside the country is allowed. Namely, the parties are obliged to present the facts and circumstances on which they base their claims, as well as to propose evidence that establishes those facts. However, it should be borne in mind that the court is empowered to determine on its own what evidence is relevant to the proceedings, which evidence to be examined or not.

Timing

What is the typical time frame for an infringement or dilution, or related action, at the preliminary injunction and trial levels, and on appeal?

A lawsuit with (or without) a warrant for a preliminary injunction for infringement of the rights regulated by the Law of Industrial Property may be filed within a period of three years as of the day the defendant has become aware of the infringement and of the offender, but not later than five years as of the day of the committed infringement.

Limitation period

What is the limitation period for filing an infringement action?

A lawsuit for a rights infringement (with or without preliminary injunction) regulated by the Law of Industrial Property may be filed within a period of three years as of the day the defendant has become aware of the infringement and of the offender, but not later than five years as of the day of the committed infringement.

Litigation costs

What is the typical range of costs associated with an infringement or dilution action, including trial preparation, trial and appeal?

Litigation costs are as follows:

  • costs in the first instance: €1,500 to €5,000; and
  • costs in all three instances: up to €10,000.

The losing party is obliged to settle the costs of the opposition side. In practice, there are difficulties in collecting the awarded costs.

Appeals

What avenues of appeal are available?

Industrial Property Office decisions are final; however, a lawsuit can be filed against them in front of the Administrative Court. Appeals against Administrative Court decisions can be filed in front of the Higher Administrative Court. Appeals against a first instance verdict can be filed in front of a secondary court. Revisions against a secondary court’s verdict can be filed in front of the Supreme Court.

Defences

What defences are available to a charge of infringement or dilution, or any related action?

Defences such as negotiations, mediation, appeals and remedies during the proceeding (ie, providing evidence in favour for the acquired industrial property or priority right) are available; that is, administrative and litigation.

Remedies

What remedies are available to a successful party in an action for infringement or dilution, etc? What criminal remedies exist?

Obligations' enforcement in Macedonia is carried out through authorised enforcement agents acting as executors; however, such procedures incur high and unpredictable and are generally inefficient.

If the first action of an executor is unsuccessful, the executors will take another action at the expense of the creditor.

Forced settlement of monetary claims or foreclosures are only effective if the debtor owns property.

Forced execution of orders to do or to restrain from doing, in practice, can be considered as non-executable.

Criminal prosecution against such debtors does not exist.

ADR

Are ADR techniques available, commonly used and enforceable? What are the benefits and risks?

Mediation and arbitrage do exist, but generally in theory only; in practice, they are rarely used.

The benefits are short; fast procedures lower costs and are obligatory in character, however, it seems that such methods are not trusted enough, especially since they are obligatory in character and there is no second instance against such decisions.