Since 1 June 2016 it is mandatory to serve the potential infringer with a 30-day prior cease and desist letter before filing a claim with the court. This requirement applies to civil law cases between legal entities and individual entrepreneurs, except for a limited number of cases, including non-use cancellation actions. The rule does not apply to administrative and criminal cases.
For the parties it means that they would need to be able to present to the court evidence of their pre-trial discussion. Based on the literal wording of the law, the claimant will most likely be required to attach to the civil claim a copy of the warning letter together with the registered mail/courier confirmation that the letter was dispatched. The law does not require that the claimant provides evidence of receipt of a warning letter by the defendant but we may expect that in practice the defendants would try to claim non-receipt of the letter and consequent impossibility to cure the infringement at a pre-trial stage as a part of the strategy to delay court proceedings.
In the event that a pre-trial procedure was not complied with, the civil claim is not considered by the court. Also where non-compliance with the pre-trial stage is revealed when the claim has already been accepted by the court, the court shall issue a ruling on leaving the court claim without consideration.
Given the above legislative development, reviewing IP enforcement strategy in the region is highly recommended to ensure that efficiency of administrative and criminal actions via police and customs is not affected by the warning letters circulated by the IP right holders in parallel civil proceedings.
Where should you enforce, and how? Do you have a strategy in place to protect your global brand? How do other businesses in your industry protect their trademarks? To answer these questions and more please access our suite of brand and trademark protection and enforcement guides here.