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?

All actions regarding EUTM infringement fall under civil law pursuant to the EUTMR and are heard by the EU trademark courts of 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.

The EUTMR requires member states to designate a limited number of national courts and tribunals of first and second instance.

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 remain unharmonised across the European Union. As a result, the options available at EU level for criminal law enforcement vary considerably.

Procedural format and timing

What is the format of the infringement proceeding?

Since infringement actions are heard by the EU trademark courts in individual EU member states, the format of infringement proceedings varies according to the specific procedural rules that govern the proceedings.

Burden of proof

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

As infringement actions are heard by the EU trademark courts in individual EU member states, the procedural rules on burden of proof vary from one member state to another.

Standing

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

The proprietor of an EUTM and authorised licensees can file an infringement action. Subject to a different arrangement in the licence agreement, a licensee may bring proceedings for infringement of an EUTM 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.

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?

The principle of regional exhaustion applies in the European Union, so proprietors of EUTMs may prevent the unauthorised placing of all goods on the market in the European Economic Area. Seizure and destruction of counterfeit goods at the European Union’s external borders is available. The proprietor of an EUTM may file an application for action covering all EU member states. As a result, 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 EUTMs can take civil action to prevent their sale for the first time in the European Union.

Discovery

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

Since infringement actions are heard by the EU trademark courts in individual EU member states, the rules of discovery vary from one member state to another.

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?

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

Limitation period

What is the limitation period for filing an infringement action?

The statute of limitations varies across the European Union. In general, the time frame 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.

Litigation costs

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

Since infringement actions are heard by the EU trademark courts in individual EU member states, the range of costs related with infringements vary from one member state to another.

Appeals

What avenues of appeal are available?

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 EU member state. Further appeals may be available where the EU member state’s judicial system has a third instance. EU trademark courts may make references on points of law (in particular on the EUTMR) to the CJEU.

Defences

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

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 EUTM 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), unless the proprietor has legitimate reasons to oppose further commercialisation of the goods;
  • use of a later European Union or national trademark that has not been declared invalid;
  • use of rights acquired before the filing or priority date of the EUTM registration;
  • tolerated use of a later sign by the EUTM proprietor (acquiescence);
  • due cause, where reputation of the earlier EUTM 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 EUTM was liable to be revoked for non-use at the time the later mark was adopted; or
  • evidence that the EUTM 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.
Remedies

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

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

ADR

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

Some member states have ADR techniques available, as does the EUIPO and some national trademark offices (such as the Intellectual Property Office of the United Kingdom).