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Which courts are empowered to hear trademark disputes?
Trademark infringement disputes are conducted in front of the Primary Court. Trademark disputes against the decisions of the Industrial Property Office are conducted before the Administrative Court.
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 administrative actions are available in cases of trademark infringement.
An administrative action can be brought:
- against a final decision in administrative proceedings, for which the Administrative Court is competent; and
- where the Industrial Property Office has failed to reply to a request and thus failed to issue the relevant decision.
The Law on Industrial Property also provides for civil protection against infringement. Civil court proceedings normally consist of several procedural steps, including the plaintiff’s submitting a lawsuit, the defendant filing a written response to it, a preliminary oral hearing and two or more further oral hearings.
While the Law on Industrial Property does not speak of criminal liability for trademark infringement, the criminal codes of the Republic of Macedonia provide that the misuse of trademarks is a criminal act. An action can be brought before the general courts handling regular criminal court proceedings.
Who can file a trademark infringement action?
The following parties can file a trademark infringement action:
- the applicant for the trademark at issue;
- the holder of the trademark registration;
- the exclusive licensee; and
- the authorised user of a collective or certification trademark.
What is the statute of limitations for filing infringement actions?
A trademark infringement lawsuit may be filed within three years of the day the plaintiff has become aware of the infringement and of the offender, but no later than five years from the day of the infringement occurring.
What is the usual timeframe for infringement actions?
The usual timeframe is between two and three years.
What rules and procedures govern the issuance of injunctions to prevent imminent or further infringement?
A court may order:
- a provisional measure for the seizure or removal from circulation of infringing products and of the equipment used for the production of those products; and/or
- an injunction prohibiting the continuation of activities that could result in an infringement.
To obtain a provisional measure and/or an injunction order, the plaintiff must file an application requesting such measure and prove that its rights have been infringed or are about to be infringed.
What remedies are available to owners of infringed marks? Are punitive damages allowed?
The plaintiff may request that the court:
- make a determination of infringement;
- order the termination of the infringement;
- order the confiscation, exclusion from the channels of commerce, destruction or alteration of the infringing objects without any compensation;
- order the confiscation, exclusion from the channels of commerce, destruction or alteration of the tools and equipment used to manufacture the infringing objects, without any compensation;
- order the defendant to pay damages caused by the infringement and justifiable legal costs and expenses;
- publish the decision at the expense of the defendant; and
- order the defendant to provide information about third parties participating in the infringement.
Any infringer shall be liable for damages in accordance with the general rules of compensation for damages.
If the infringement was committed intentionally or by gross negligence, the plaintiff may, instead of compensation, claim up to triple the amount of the licence remuneration that it would usually receive for the use of the trademark.
Punitive damages are permitted. The Law on Industrial Property provides that the owner of a trademark that has been infringed may ask for payment of the regular compensation increased by 200%, irrespective of whether the loss caused by the infringement amounts to the same amount.
What customs enforcement measures are available to halt the import or export of infringing goods?
Customs can act ex officio or based on valid custom watches.
In case of an ex officio action, Customs will temporarily impound the goods and notify the trademark owner about the goods impounded, the suspicion that its rights are infringed, and the possibility of filing a customs watch within five working days of the date of impounding. If the mark owner files an application for customs watch, the goods remain detained by Customs until a decision is issued upon the application for the customs watch. If the customs watch is granted, the goods will be detained for another 10 working days and the procedure thereon is the same as if the customs watch had been granted prior to the impoundment.
If the customs watch was in place at the time of the impoundment, Customs will notify the representative of the trademark owner of the seized goods and request confirmation of the suspicion that the goods are infringing trademark rights. Once this is confirmed, Customs will request that the importer declare whether the goods are counterfeit or not, within 10 working days. If the importer agrees that the goods are counterfeit or if it fails to respond within the prescribed deadline, the goods can be seized by Customs and destroyed at the request of the rights holder, and at its expense. When the importer declares that the goods are not counterfeit, Customs will notify the trademark owner of this declaration. The trademark owner then has 10 working days (extendable by another 10 working days at a reasoned request) to bring an action for infringement and to inform Customs of this action.
What defences are available to infringers?
Alleged infringers can defend themselves in infringement proceedings claiming that:
- they are using their own trade name, acquired conscientiously before the priority date of the plaintiff’s trademark;
- the plaintiff’s trademark rights are exhausted;
- they are using, in accordance with good business practices, in the course of trade:
- their own name or address;
- indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, time of production or other characteristics of the goods or services; or
- a sign protected by a trademark where its use is necessary to indicate the intended purpose of the goods or services – in particular, where spare parts or accessories are concerned;
- they are using their own registered mark;
- there has been continued use or prior use of the mark in good faith and without opposition from the title holder – that is, the statute of limitations has expired;
- the marks are dissimilar and there is no likelihood of confusion; or
- the goods/services in relation to which they are using the mark are dissimilar to those covered by the plaintiff’s trademark, unless the plaintiff’s trademark is well known.
What is the appeal procedure for infringement decisions?
Either party may lodge an appeal against the first-instance decision of a civil or criminal court before the Appellate Court.
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