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IP LITIGATION
Litigation strategies for the international IP professional
Protecting non-traditional
marks in Mexico
A guide to changes
in India’s patent laws
Blocking The
Pirate Bay in Italy
Plus updates from
India
Norway
Italy
Poland
Mexico
Germany
Benelux
UK
A supplement to
Copyright
DOING
BUSINESS
IN CHINA
ISN’T GETTING
ANY EASIER.
Whether you have already taken your knocks
results to clients from around the world.
or are about to dip your toe in the water, you
Whether you’re setting up a joint venture,
need experienced and nimble legal counsel
facing a dispute, fighting counterfeiters or
to help you navigate your success. With offices
tangling with tax authorities, we’d like to be
in Beijing, Shanghai and Hong Kong, we deliver
in your corner.
BEITEN BURKHARDT · INTERNATIONAL LAW FIRM · CHINA PRACTICE
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IP LITIGATION
LITIGATION STRATEGIES FOR THE
INTERNATIONAL IP PROFESSIONAL
TRADEMARK
04 | REMFRY & SAGAR
Vikram Grover and V Mohini discuss strategies in tackling
trademark cases in India
08 |
12 |
17 |
20 |
22 |
BORENIUS & KEMPPINEN
Ben Rapinoja outlines how to use and construct cease and
desist letters to protect trademarks in Finland
IP LAW GALLI
Cesare Galli discusses the state of trademark law in Italy
and the protection against ‘parasitical’ imitations
PATPOL
Tomasz Rychlicki illustrates the case of Tiffany & Co in its
bid to protect its mark in Poland
GOODRICH RIQUELME Y ASOCIADOS
Enrique Diaz and Paolo Ordoñez discuss the scope of
non-traditional marks in Mexico
33 |
47 |
51 |
VOSSIUS & PARTNER
Georg Andreas Rauh analyses the implications of antitrust
laws on patent enforcement in Germany
TILLEKE & GIBBINS INTERNATIONAL
Areeya Ratanayu and Kawin Kanchanapairoj discuss the
course of action for patent litigation in Thailand
WITHERS & ROGERS
Nicholas Wallin gives an overview of the role of the
litigators certificate in the UK
COPYRIGHT
54 | BORENIUS & KEMPPINEN
Kristiina Harenko writes about the copyright case
involving Finland’s traditional Karelian pastries and the
computer programme used to produce them
Micaela Modiano gives an overview of IP protection
in Italy
30 |
43 |
PATPOL
Malgorzata Zielinska-Lazarowicz and Jaroslaw
Markieta offer a guide to patent litigation in Poland
VOSSIUS & PARTNER
Dr. Mathias Kleespies and Paul Kretschmar discuss the
use of preliminary injunctions as a remedy against trademark
infringement in Germany
PATENT
25 | MODIANO
28 |
38 |
57 |
Ben Rapinoja on the Merck v ratiopharm patent infringement
case in Finland and its wider implications
GOODRICH RIQUELME Y ASOCIADOS
Satoshi Yoshiki discusses the process for getting generic
drugs to the market in Mexico
KHAITAN & CO
Jose Madan and Ashish Gupta explain recent changes in
patent law in India
From the publishers of:
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TREVISAN & CUONZO
Julia Holden and Silvia Pugnale assess industry attempts
to block The Pirate Bay website in Italy
JURISDICTIONAL FOCUS
60 | VONDST ADVOCATEN
Silvie Wertwijn and Hidde Koenraad discuss the impact
of the Intel v Intelmark case in the Benelux countries
63 |
BRYN AEROFLOT AS
Lill Grimstad gives an overview of patent litigation
in Norway
Copyright
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IP Litigation | 2010 | 3
K REMFRY & SAGAR
TRADEMARK LITIGATION
Trademark suits
won at interlocutory
stage? Complexities
of trial in India
Vikram Grover and V Mohini of law firm Remfry & Sagar
discuss strategies in tackling trademark cases in India
T
he Indian judiciary’s outlook is, on
the whole, very progressive and
recent trends have gone a long
way in boosting the confidence of
businesses in the country. However, one
aspect which sullies the good work is the
huge backlog (the largest in the world) of
pending cases and the resultant delays in
concluding trials. Over thirty million cases
are pending and more often than not, it
takes years for a matter to reach trial from
the date of its institution. Intellectual
property suits are no different; these being
instituted and tried in courts engaged in,
inter alia, real estate, matrimonial,
succession and recovery issues. Very often,
it is said that Intellectual property matters
are decided at the interlocutory stage –
the losing party choosing to settle rather
than battling it out to the end. But what if
settlement cannot be achieved? What if a
litigant is dissatisfied with the outcome
at the interlocutory stage? What if
damages and a permanent injunction are
the object of the litigation? In such
cases, trial ensues with a long wait
for final resolution.
The High Court of Delhi, perhaps
having achieved the distinction of
receiving the maximum number of
trademark suits in India, may take at least
three-five years to conclude trial and
pronounce the judgment and decree.
However, there are Courts which may take
more than 10 years. This reality
underlines the importance of interim relief
4 | IP Litigation | 2010
as an immediate and effective remedy for
trademark owners – a fact which the
judiciary itself acknowledges.
The Supreme Court has held that the
grant of an interim injunction is a matter
requiring exercise of the discretion of the
court and the following tests are applied
to test the plea of interim injunction:
(i) whether the plaintiff has a prima facie
case; (ii) whether balance of convenience
is in favour of the plaintiff; and
(iii) whether the plaintiff would suffer
an irreparable injury if the defendant is
not restrained – the underlying objective
being protection of the plaintiff against
injury for which it could not be adequately
compensated in damages if the suit
were resolved in its favour at the trial.
In fact, courts in India are known to
adopt a proactive stance insofar as
reputed trademarks are concerned and
grant interim injunctions, ex parte and/or
inter parte.
Usually, trademark suits in India draw
to a close upon completion of the
interlocutory proceedings. If an interim
injunction is granted restraining the
defendant from using a trademark pending
final decision in a suit, the defendant is
quite reluctant to contest the suit up to its
conclusion. Also having successfully halted
the misuse, the plaintiff may not pursue
trial diligently. However, for a rightful
owner of a trademark who is refused
interim relief, continuing the proceedings
to their logical end is the subject matter of
www.ipworld.com
REMFRY & SAGAR
K
The High Court of Delhi, perhaps having achieved the distinction of
“
receiving the maximum number of trademark suits in India, may take
at least three-five years to conclude trial and pronounce the judgment
and decree
”
a conscious decision. It has been seen that
on refusal of interim relief, the defendant
employs various tactics to thwart and
delay trial. It is for these reasons that
trademark practitioners in India are
constrained to advise that trademark suits
are usually won (or lost) at the
interlocutory stage.
Beyond the interlocutory stage lies
the somewhat arduous world of trial,
where the rights of both parties must
be conclusively determined on the basis
of the evidence led. “Evidence” – any
species of proof which tends to prove or
disprove any matter in question – is
governed by the provisions of the Indian
Evidence Act (originally passed by the
British parliament in 1872). The statute
revolves around two types of evidence,
oral and documentary evidence. All facts
except contents of documents may be
proved by oral evidence and further,
oral evidence must in all cases be direct.
That is to say, if the evidence refers
to a fact which could be seen, it must
be the evidence of a witness who can
testify that he saw it. On the other
hand, facts in dispute may be proved
through documents as well – either by
primary or secondary evidence. Primary
evidence is the document itself produced
for the inspection of the court while
secondary evidence means and includes
certified copies of an original, copies
made from an original through a process
which ensures accuracy of the copy etc.
For example, the photograph of an
original document would constitute
secondary evidence.
Trial is preceded by ‘framing of issues’ –
an exercise crystallising the dispute in the
form of questions and pinning the burden
of proof. Caution should be exercised to
avoid coining irrelevant questions and the
onus must fall correctly. Once issues are
framed, parties are required to furnish a
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list of witnesses who would be produced in
Court to prove the respective cases of the
parties. Witnesses competent to testify,
having an understanding of the nature of
the dispute, knowledge of the relevant
facts and documents and ability to
communicate must be deliberated
beforehand. It is expected of witnesses to
prove facts which are within their
knowledge and documents that form the
basis of the claims/defence.
Next, the testimony of witnesses,
that is, examination-in-chief by a verbal
or sworn statement followed by
cross-examination by the opponent,
and re-examination at the discretion
of the litigant producing the witness,
subject to approval by the court, is
recorded. Where the witnesses cannot
travel, parties can consider having a
commission appointed which would travel
to record evidence. Such recourse may,
however, be expensive. The plaintiff ’s
emphasis should be on examination-inchief so that the facts in issue are outlined
succinctly. Cross-examination of witness
would relate to relevant facts but need not
be confined to the facts to which the
witness testifies in examination-in-chief.
Counsels over emphasise on crossexamination as it brings forth critical
evidence, especially if a witness contradicts
previous testimony. The intention is to
extract favourable facts from the witness,
or to impeach the credibility of the
witness to minimise the weight of
adverse evidence.
Counsels conducting trial revel in
technicalities frustrating the basic aim
of dispensation of justice and fair play.
Novel techniques are used and various
impediments created to slow down the
process of trial. This is more typical
of a defendant since its endeavour is
to pressurise the plaintiff into losing
interest in prosecuting its case. Judicial
notice has been taken of this fact by the
High Court of Delhi in a case where
the conduct of the defendant in delaying
trial and creating technical hurdles
in cross-examination of witnesses
(who travelled from abroad for
testimony) was frowned upon and hefty
costs imposed.
Whilst tactical moves aimed at derailing
the trial cannot be totally avoided, small
measures can go a long way in protecting
the plaintiff ’s interest if the proceedings
culminate in trial. It should always be the
endeavour of the plaintiff to place on
record the best possible documentary
evidence, in terms of quality and
admissibility, right at the inception
of the suit as any delay in producing
the same may be marred with legal and
technical complexities.
It is commonplace for a defendant to
have an issue framed on the institution
of suit especially when the plaintiff
is a corporation based outside India.
Empowering lawyers associated with
the office of the plaintiff ’s attorney
by way of a power of attorney to initiate
the suit on behalf of the plaintiff is
usual practice. This expedites signing
and filing of papers with the court.
However, such nomination may be
riddled with problems if not followed
carefully. Questions may be raised on the
veracity of the statements contained in
the document and the authority of the
persons to empower others. Further, the
court may enquire whether the lawyer –
constituted attorney of a party – is also
acting as a counsel in the matter. It is
noteworthy to point out that the Madras
High Court has recently held that a
constituted attorney who is an advocate
may act as a Counsel so long as there is no
conflict of interest in the discharge of his
professional duty and his duty as the
constituted attorney.
IP Litigation | 2010
|5
&S
A
GA R
REMF
RY
1827
Remfry & Sagar
ATTORNEYS-AT-LAW
TRADE MARK • PATENT • DESIGN • COPYRIGHT
Remfry House at the Millennium Plaza
Sector 27, Gurgaon - 122 002
New Delhi National Capital Region, India
Tel : 91-124-280 6100 Fax : 91-124-280 6101 & 257 2123
E-Mail: [email protected]
http://www.remfry.com
376-B (Old No.202)
Avvai Shanmugam Salai, Gopalapuram
Chennai - 600 086, India
Tel & Fax : 91-44-4263 7392
E-Mail : [email protected]
http://www.remfry.com
REMFRY & SAGAR
K
Beyond the interlocutory stage lies the somewhat arduous world of trial,
“
where the rights of both parties must be conclusively determined on the
basis of the evidence
”
To embroil the issue even more, the
(Indian) Code of Civil Procedure mandates
that in suits filed by or against
corporations, pleadings may be signed and
verified on behalf of the corporations by
the secretary or by any director or other
principal officer of the corporation who is
able to depose the facts of the case. It has
been observed that in trademark suits filed
by a plaintiff through a constituted
attorney, great emphasis is laid by the
opponent on the constituted attorney
being merely authorised to sign and verify
the pleadings on behalf of the plaintiff and
not institute the suit. However, another
provision of the Code of Civil Procedure
contemplates appointment of a recognised
agent to act on behalf of the appointing
party. This may come to the rescue of the
plaintiff which has chosen to appoint a
constituted attorney provided the power of
attorney (empowering the constituted
attorney) is duly executed before a notary.
The Supreme Court has also endorsed the
view that once an original power of
attorney which has been duly notarised is
produced, the court should presume that
all necessary requirements for the proper
execution of the power of attorney have
been fulfilled and the suit treated to have
been validly instituted.
It is best to avoid controversy. Plaintiffs
should either sign and verify the
Statement of Claim themselves or consider
appointing individuals from their
subsidiary/affiliate or lawyers not working
on the matter in question. The
appointment of attorneys for instituting,
signing and verifying the lawsuit should
be cased in a power of attorney which is
executed by authorised personnel before a
notary. The plaintiff, if a corporation,
could append the resolution to the power
of attorney, where the initiation of the suit
and execution of the power of attorney
therefore are recorded and approved.
It is not to say that the judiciary and/or
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the legislature are unconcerned by the
lacunae in the Indian judicial system.
The (Indian) Code of Civil Procedure
has been amended to ensure speedy
disposal. It curtails unnecessary
adjournments and envisages payment
of costs to compensate for delays caused
by adjournment to the other party. Courts
are also now doing away with oral
testimony. Not only this, post granting an
interim injunction, the Delhi High Court
has, in a few instances dispensed with the
cross-examination of witnesses and
directed the parties to prove their case on
the basis of examination-in-chief and
documentary evidence. There are other
instances where the High Court of Delhi
has refused to pass any interim orders and
directed trial to be completed within a few
months so as to decide issues once and for
all. In one such matter, cross-examination
of witnesses was waived on account of the
parties consenting that there was no
dispute on the facts included in the suit
and documents read in evidence without
formal proof.
In a very encouraging move, the
Supreme Court recently directed
subordinate courts to decide IP cases
within four months from filing.
Recognising that parties primarily litigate
on the issue of interim injunction and the
main suit languishes for years, it has been
observed that the emphasis must shift
from temporary relief (by virtue of an
interim injunction) to final settlement in
suits pertaining to trademarks, copyrights
and patents. It has also opined that the
hearing in a suit should continue
day-to-day until all witnesses in
attendance are examined.
The observations of the Supreme
Court may have a far-reaching impact
on IP litigation in the country. If the
pronouncement is followed religiously
by the courts, trial would assume
tremendous significance in that grant
of interim reliefs may be debated
intensely and not awarded easily.
The fate of litigation will boil down
to the evidence led before the court
and its appreciation. Whether or not
such change is in the offing – retarded by
insufficient infrastructure and paucity of
judges – trial should be an integral
constituent of any litigious strategy. K
AUTHORS
Vikram Grover is a
partner in the Firm and
leads the trademark
litigation team. He holds a
Bachelor Degree in
Sciences (Majoring in
Zoology) from the
University of Delhi. Conferred with a
Bachelor in Laws (Honours) from the
University of Leeds, UK and Masters in
International Commercial Law from the
University of Nottingham, UK. He is an
advocate and solicitor of the Supreme
Court of England and Wales. In over
13 years in the profession, he has gained
experience in diverse areas of Intellectual
Property and corporate laws. He regularly
attends several international conferences
and is a member of AIPPI and APAA.
V. Mohini is a senior
associate involved in
contentious trademark
work. After completing her
degree in Law in the year
2004 from the University
of Delhi, she started her
career in a litigation firm and joined Remfry
& Sagar in the year 2007. She has been
providing strategic counseling on trademark
enforcement and represents clients
before courts and Intellectual Property
Appellate Board.
|7
K BORENIUS & KEMPPINEN
Cease and desist
letters in trademark
infringement cases
in Finland
Ben Rapinoja of Borenius & Kemppinen outlines how to use and
construct cease and desist letters to protect trademarks in Finland
C
ease and desist letters (or warning
letters) are widely used and are a
practical tool for the rights holder
to react to possible infringement of its
legally protected intellectual property
rights. Protection against suspected
infringements of intellectual property
rights and reacting to such business risks
are an essential and integral part of the
business and IPR strategy in many
companies. The first step taken in
enforcement of a company’s exclusive
rights is often to inform the identified
counterpart about the rights of the
holder and the possible infringement
of that right with a request for the
counterpart to cease all suspected
infringing activities.
In most cases the right addressee for the
cease and desist letter is a competitor, but
according to Finnish case law, it may also
be possible to submit the letter to third
parties, such as the re-sellers of the
infringing products. In such situations
some further prerequisites have to be
taken into account. By sending the cease
and desist letter the holder of the right
tries to prevent the imminent or ongoing
suspected infringement. The normal
approach, especially in Finland, would be
that the letter is submitted only to the
parties that would have the legal status of
a respondent in a possible court action on
alleged infringement of intellectual
property rights.
While drafting the cease and desist
letter it should be carefully considered
whether third parties should be informed
about possible infringement before the
respondent has had the possibility and
reasonable time to respond to possible
claims of infringement.
On cease and desist letters and
trademark disputes
In trademark disputes, it is typical that a
cease and desist letter is submitted to the
suspected infringer at first. Quite often
these means are sufficient and parties settle
the matter and reach an out-of-court
solution to avoid lengthy litigation. Taking
this into account, it can be noted that a
cease and desist letter can be a very effective
IP tool for trademark holders protecting
and enforcing their exclusive rights. The
same applies to licensees of certain
trademark rights.
If the dispute cannot be solved amicably
and the cease and desist letter will not be
helpful with this regard, it may lead to
court action. The average timeframe for
court proceedings is largely identical for
registered and unregistered trademarks,
although the burden of proof that rests
upon an unregistered trademark owner
may slow down the proceedings
somewhat and make it more difficult to
obtain an injunction.
The average duration of a trademark
infringement case before the Helsinki
District Court has currently been between
one-and-a-half and two years. Decisions in
trademark infringement cases may be
appealed to the Helsinki Court of Appeal.
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K
While drafting the cease and desist letter it should be carefully
“
considered whether third parties should be informed about possible
infringement before the respondent has had the possibility and reasonable
time to respond to possible claims of infringement
”
The appeal proceedings generally take
from one to two years. District Court
decisions in injunction applications are
usually given reasonably swiftly –
sometimes even within a couple of days,
where necessary.
The swiftest (and most typical) way of
responding to unauthorised trademark use
is by seeking an injunction, which may
be initially granted on an ex parte basis.
The court may grant an injunction
either before or during the main
proceedings, to remain in force until
the main action has been finally
settled. Before an injunction can be
executed, the claimant is usually ordered
to provide adequate security for any
financial damage suffered by the defendant
as a result.
According to the Finnish Trademarks
Act, a claim for reasonable compensation
and damages can cover only a period
of five years before the filing of legal
proceedings. The right to compensation
lapses after this period. However, a
claim for damages may be brought
for infringement through use that
occurred prior to registration, provided
that the claim is brought within a
year of registration of the trademark
in question.
At the request of a right holder whose
trademark rights have been infringed, the
court may order that, where practicable,
an infringing mark attached without
authorisation on goods or their packaging,
leaflets, commercial documents or the
like be erased or altered in such a
way as ensures it can no longer be
misused. If this cannot be achieved
in any other way, the court will order
that the infringing materials be destroyed
or modified in a specified manner.
Upon request, the court may also order
that the material be surrendered to the
claimant against payment. Regardless
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of whether infringement is deliberate,
the public prosecutor or the court may
order that the offending materials be
confiscated if the plaintiff so requests
and – where considered necessary –
provides adequate security for any
financial damage suffered by the
defendant as a result.
Taking all these consequences of
full-scale trademark litigation into account,
it is clear that careful consideration
is needed for any and all cease and
desist letters.
Special attention and consideration
needed especially if the letter is
submitted to third parties
If the decision is taken to send the letter
to the third party, attention should be paid
to the drafting of the letter. According to
Finnish case law, the letter is not allowed
to state claims or demands that are
defamatory, inappropriate, misleading or
are not otherwise based on law.
Information given out in the letter has to
be relevant and requirements have to be
formulated clearly. The wording of the
letter has to be in a reasonable relation to
the probability of the alleged
infringement. The infringement
allegations should be less than definite and
should preferably be worded to express
concern regarding possible infringement.
In other words, instead of definitely
asserting that a certain product, for
example, infringes certain designated
intellectual property rights, such as a
trademark right, the letter should suggest
that the product may infringe the right of
the holder, unless the infringement is
affirmed by a final and un-appealable court
decision. In addition to this, it should be
carefully considered whether and to which
extent the grounds of the statement for
the alleged infringement are explained in
the letter.
Subcontractors, re-sellers and customers
do not necessarily have the same
capabilities to evaluate the probability
of the alleged infringement that the
manufacturer of the product has and
this may lead to significant loss in
demand of the products or services
manufactured and provided by the alleged
infringer. Therefore, the information
concerning the consequences of the
alleged infringement and the legal status
of the addressee has to be accurate and
based on law. When drafting the cease
and desist letter to re-sellers and
customers of the company particular
attention should be paid to the wording of
the text by avoiding expressions and
wordings that could lead to an overly
pressing tone. This is important especially
when the holder of the allegedly infringed
right has a dominant market position or
it has an otherwise strong position in
the specific market segment. The stronger
the market position of the company, the
more seriously must the addressee take
the message received and this can lead
to unexpected consequences for
the addressee.
It can be noted that in Finnish law, the
same principles should be applied with
the letters submitted to third parties as
well as with the letter to suspected
infringing parties.
On recent Finnish precedent regarding
cease and desist letters
It must be noted that the aforementioned
are to be taken only as a general rule
which applies to every intellectual
property right to a certain extent. When
dealing with, for example, a possible
trademark infringement, the special
requirements of the said trademark
legislation and regulation must be
carefully studied before drafting any cease
and desist letters.
|9
K
When drafting the cease and desist letter to re-sellers and customers
“
of the company particular attention should be paid to the wording of the
text by avoiding expressions and wordings that could lead to an overly
pressing tone
”
Design rights are also analogous to
trademark law in this respect. The holder
of a design right, Fiskars Ltd (also
referred to as the “Right holder” here),
sent a cease and desist letter to the
resellers of the product manufactured
by the competitor of the Right holder,
namely Rediviva Ltd (“Defendant”).
The marketing of the product in Finland
was carried out by a third party under
the licence agreement with the Defendant.
In the letter, the Right holder claimed that
the product of the Defendant infringes the
design right of the Right holder and that
the re-seller should halt sales of the
alleged infringing products to consumers.
Prior to sending the letters to re-sellers,
the Right holder had provided an opinion
from a patent agent whether their product
will be covered by design. The patent
agent had formed an opinion that the part
of rake which was manufactured by the
Defendant, was substantially similar to
the one covered by the design held by the
Right holder. Thereafter, the Right
holder sued the licensee of the
Defendant for the infringement of the
design right.
In the judgement of the Helsinki
District Court, the court held the
infringement of the Right holder’s design
but Helsinki Court of Appeals found that
the product sold by the licensee did not
infringe the design right in suit. Also the
Market Court rejected the appeal of the
Right holder, based on the grounds of
unfair business practices.
The Finnish Supreme Court stated
that even though the Right holder
had the acceptable grounds for sending
the letters, the formulation and the
contents of the letters as whole, were
likely to give an erroneous impression that
the design of the Right holder was
undisputed. The court held that actions
taken by the Right holder, the sending of
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the letters to the re-sellers of the
rake products was against fair
business practices.
According to the court the assessment
of the justification of the letters should
be done by taking into account
1) whether the reason for sending
the letter was something other than
protection of the holders right 2) if the
wording of the letters included
expressions that are false or misleading
3) if the manner of representation is
unsuitable or against good business
practices and 4) if they have been sent
to the parties that can affect the
supply and demand of the allegedly
infringing products or is likely to harm
the business of the addressee.
Inappropriate in this case seems to be
first and foremost the manner of
proceedings the Right holder used
when it approached the re-sellers of
the products and especially the
formulations of the requirements to halt
the alleged infringement and
compensation for the consequences.
The court stated that taking into account
the market position of the tight holder,
contents and tone of the letters, the
addressees may have got the wrong
impression of the actual realisation
of the infringement, the consequences
of the infringement and the status of
the addressees. As a consequence of
the actions taken by the right holder,
the re-sellers refrained from selling the
rake products. The court stated also that
the requirements for the compensation
for the damages would be fulfilled in
the case at hand. The court referred
the case to the district court for
the decision.
What can be learned from
the rake case?
After the Supreme Court ruling in the
above-discussed “rake” case it can be
noted, especially in Finnish law and
the main principles of the Finnish
Unfair Business Practices Act, that
a false or misleading expression
concerning one’s own business or the
business of another may not be used
in business if the said expression is
likely to affect the demand for or
supply of a product or harm the
business of another is valid and should
be strictly applied.
An expression that refers to irrelevant
circumstances or that is presented or
formulated in an unsuitable manner may
not be used in business if the said
expression is likely to harm the business
of another. It thus goes without saying
that careful consideration and special
attention is needed whenever a cease
and desist letter will be submitted in
Finnish jurisdiction. K
AUTHOR
Ben Rapinoja is a wellknown patent and IP litigator
in Finland and heading B&K’s
experienced IP Litigation and
Life Sciences &
Pharmaceuticals practices. Ben has particular
experience in the field of patents and
trademarks but his contentious practice covers
also many other areas of intellectual property,
marketing law and regulatory affairs as well as
disputes and arbitration proceedings related to
commercial contracts, licence agreements and
technology transactions.
Ben advises on business law related questions
and in commercial contracts and corporate
transactions with particular emphasis on
pharmaceutical and high-tech industries. Ben is
one of the leading legal experts in Finland in
the life sciences and pharmaceutical sectors.
Ben has been a B&K partner since 2006.
| 11
K IP LAW GALLI
Enhanced protection
of trademarks in the
Italian legal system
Cesare Galli of IP Law Galli discusses the state of trademark
law in Italy and the protection against ‘parasitical’ imitations
T
he question of the protection of
trademarks against parasitical
exploitation carried out to the
detriment of their holders by nonauthorised third parties (so-called free
riders) has become an increasingly key
issue in the debate on the protection of
these rights in Italy, so much so that
reflections on the likelihood of confusion,
especially for the latter, have become
progressively less topical. Despite
recurrent attempts at restyling, the notion
of likelihood of confusion no longer seems
able to effectively fight against all the
“new” phenomenon of the infringement
which must now be tackled, at least
for the trademarks and signs which
are the most famous and thus
most threatened.
In fact, for these trademarks it is their
very reputation which makes it highly
unlikely that the public will be mistaken as
to the origin of products which, due to the
differences between the imitators mark
and the mark to be protected, and
well-known by the public, or between
the products bearing their respective
trademarks (often of a quality which
is visibly very different or belonging
to product types and sectors famously
not frequented by the holder of the
imitated trademark), in addition to the
marketing methods employed, are patently
non-original. In relation to these
situations, it is therefore necessary to avail
ourselves of the laws which now protect
the trademark also beyond the likelihood
of confusion.
Since these rules were first introduced
into Italian law, by Legislative Decree no.
480/92 which implemented EEC Directive
89/104, their centrality has been
increasingly confirmed, so much so that
they have also imposed themselves on
rulings of the ECJ, which first broadened
the scope of trademarks to which
protection under Art. 5.2 of the Directive
is applied, covering all trademarks known
to the public in the sector in which they
are used (see ECJ, 14 September 1999,
C-375/97, General Motors); then stated that
this protection also applies when the
products bearing the conflicting
trademarks are of the same kind or of
similar kinds (see ECJ, 9 January 2003,
C-292/00, Davidoff); and finally stated that
the common requirement for protection
against unfair advantage and detriment is
that there be “a certain degree of similarity
between the mark and the sign, by virtue
of which the relevant section of the public
makes a connection between the sign and
the mark, that is to say, establishes a link
between them even though it does not
confuse them” (see ECJ, 23 October 2003,
C-408/01, Adidas/Fitnessworld). So this
connection, i.e. the calling to mind of the
other’s famous trademark, even though it
may only be psychological, seems to
emerge as the common denominator of the
two situations of advantage and detriment
considered by Art. 5.2 of the Directive,
being analogous to the “likelihood of
association”, as it was defined – prior to
implementation of the Directive – in
Benelux case law.
www.ipworld.com
IP LAW GALLI
K
The Italian courts strengthened trademark protection significantly in
“
Italy, in that they considered unlawful and forbade any parasitical activity,
even when the imitator’s sign is used only for decorative, aesthetic or
descriptive purposes
”
Extended protection of famous
trademarks in Italian case law
Going also beyond these teachings of EU
case law, the Italian courts strengthened
trademark protection significantly in Italy,
in that they considered unlawful and
forbade any parasitical activity, even when
the imitator’s sign is used only for
decorative, aesthetic or descriptive
purposes. In particular between 2006 and
2009 a number of key decisions protected
the most well-known marks against any
use in trade of a sign which is the same or
similar which can result in trading off the
renown of the imitated mark, even if there
is no likelihood of confusion, consistently
giving weight to all factors which may
influence the public’s actual perception of
the trademarks.
In this respect, a landmark case is
Bulgari s.p.a. vs Kocsis et al. (Court of
Milan, order 1 September 2006). In this
case the Specialised IP Division of the
Court of Milan ruled in favour of the
holder of one of the international level
trademark symbols of Italian creativity in
the field of luxury goods (BULGARI),
represented by our firm, in a dispute
between this trademark and a pseudonym
(Brigitta Bulgari) used by a pornographic
actress in the performance of services
relating to the world of entertainment
(cinema, shows and nude calendars). From
this point of view, the court also ruled out
the possibility of the plaintiff invoking the
exception of Art. 7.1 of EC Directive
89/104 relating to the use
of one’s own name, both because it may
operate only in relation to a real name
and not to a pseudonym, and also
because the effected use still, for what
concerns the method of use, seems
contrary to the principles of fair practice,
and thus does not comply with the limit
imposed by the final clause of Art. 7.1 of
EC Directive 89/104, as outlined by EU
www.ipworld.com
case law (see, in particular, ECJ, 17 March
2005, C-228/03). As a result the court
forbade the parties involved in
economically exploiting the actress’s
pseudonym – including the latter – to
make any use of this pseudonym in
economic activity, even should if it is
affected without a distinctive function. In
so doing the court clarified that any use in
economic activity of another’s renowned
mark which may lead to a likelihood of
confusion or damage the distinctive
character or repute of the trademark, or
allow the user to take unfair advantage of
the distinctive character or repute of the
trademark, constitutes infringement of
the mark.
Another landmark case is Ferrari s.p.a. vs
Globo s.r.l. (Court of Milan, order 6 August
2008), where the court of Milan accorded
protection as a trademark to the red
colour and overall appearance of a
product, in the case in question, the
universally renowned red colour of
Formula 1 cars of Ferrari – likewise
represented by our firm – and the equally
renowned red-white livery used by Ferrari
in some of the most recent Formula 1
championships and also registered by
Ferrari as a Community trademark.
Protection was granted against the use of
these marks for “fantasy” toys replicating
Formula 1 cars whose colour and livery
(and in some cases the affixing of stickers
with signs similar to the “prancing horse”
logo and to the marks of Ferrari’s
sponsors in the Formula 1 championship)
meant the inevitable bringing to mind of
Ferrari, if not actual confusion with the
original products made by its licensees.
The order therefore protected as a
trademark – and, in actual fact, as a
trademark with a reputation – the colour
red linked to Formula 1 cars and to toys
replicating such cars, emphasising once
more the perception of the target market,
which in this field recognises that the colour
red used as a background or, in any case, a
predominant colour for the car is a
trademark which is unequivocally linked to
Ferrari. In the same perspective with its
ruling of 20 October 2009, the court of
Milan granted a further petition to Ferrari
against another infringer (Promotive s.a.s.),
stating that this recognisability (and thus
the exclusive right of Ferrari) concerned the
entire “field of Formula 1 and car racing
championships”, with all connected
products, including clothes and
merchandising, provided that they bear any
reference to Formula 1 races.
It is worth reporting also Pin Up Stars
s.r.l. vs Sironi et al. (Court of Milan, order
27 August 2007), where the Specialised IP
Division of the Court of Milan ruled on
the question of infringement of
trademarks by marks which are only
partially similar in a case in which the
owner of one of the most famous Italian
swimming costumes and beachwear marks,
“Pin Up Star”, reported infringement of
the trademark by a casual clothing
producer using a mark (Upstar), that was
similar only to one part of the trademark,
not including all the “heart” of the
trademark. Nevertheless the Court
granted the requested protection,
enjoining use of the mark and ordering
seizure of the goods bearing the mark and
the infringer’s accounting books so that
compensation and profit restoration could
be assessed.
What is interesting about this decision
is, firstly, that more “formal” methods were
discarded in ascertaining likelihood of
confusion. These are based on abstract and
general characteristics (identification of
the “heart” of the mark, identity or
difference at a conceptual level, the extent
to which the goods bearing the marks have
a close product affinity). The decision, on
the contrary, concentrated directly on the
| 13
K IP LAW GALLI
The decision, on the contrary, concentrated directly on the consumer
“
perception of the mark, according to the settled case law of the ECJ, which
has been proposing this criterion for years in order to resolve interpretative
problems raised by EU legislation on trademark matters
”
consumer perception of the mark,
according to the settled case law of the
ECJ, which has been proposing this
criterion for years in order to resolve
interpretative problems raised by EU
legislation on trademark matters (EC
Directive 89/104 and the European
Community Trademark Regulation). In
this case, what was of particular
importance was the fact that the two
marks were used in the field of fashion, in
which it is common practice to launch
“second lines” of famous trademarks,
bearing marks which only reproduce one
part of the characterising features of the
principal mark.
Equally noteworthy is that the decision
ruled that the likelihood of confusion also
included the “linkage”, i.e. use of a mark
which is not sufficiently different to a
famous trademark and brings to mind the
latter. Protection against linkage is, in fact,
the typical protection enjoyed by
trademarks having a reputation, i.e. the
most famous marks. This was
unquestionably the case for the mark in suit
(Pin UP Star) in its field. In the case in
point, however, the court disregarded the
repute of the trademark but still held that
linkage was important as a form of
confusion or association.
This confirms that, in reality, the
traditional ‘likelihood of confusion’ is
increasingly a past scenario, or at any rate, a
scenario which concerns less famous
trademarks. The “new frontiers” of
infringement, and thus also those of the
protection of more famous brands, relate
more to the forms of parasitic exploitation
of the communication value of these marks
by non-authorised third parties.
Protection against look-alikes
The Italian Courts also granted extensive
protection against look-alikes, i.e, in cases in
which it is not the trademark but other
elements outside the trademark – the
original box of the products bearing the
trademark, its label and such like – which
are copied. A landmark case in this respect
is Ghidini Cipriano s.p.a. vs Alexander s.r.l.
(Court of Milan, decree 17th January 2006).
In this case the Specialised IP Division of
the Court of Milan, called upon by a
company operating in the field of household
utensils and world leader in the production
of wine accessories, issued an ex parte decree
(later upheld by a court order which was
not appealed against and became final),
which protected the shape of a product
against an identical copy, even though this
shape was registered neither as a trademark
nor as a design.
In fact, the court ruled that the identical
copy of a product which was well-known
on the market, albeit registered neither as
a trademark nor as a design, may be
considered unlawful, both as infringement
of an “unregistered trademark”, which is
forbidden by the IP Code, and as an act of
unfair competition, not only from the point
of view of slavish imitation (which
postulates the existence of a likelihood of
confusion), but also from that of the
appropriation of qualities, i.e. of parasitical
linkage to the renown of the imitated
product and the business image of its
producer. Before this ruling was issued the
protection was uncertain for nonregistered marks, and in particular for the
shape and external appearance of the
product and its packaging, which are
rarely registered as trademarks or designs.
When imitation gives rise to a likelihood
of confusion, it is most certainly covered
by Art. 2598, no. 1 Civil Code, on
confusing unfair competition, which also
includes slavish imitation, understood as
imitation which leads the consumer to
believe that the imitator’s product comes
from the same source as the original, or
that its production is, in any case,
authorised by the manufacturer of the
original. If, however, the consumer does
not mistake the copy for the original,
because the method of sale of the copy
makes it clear that it does not come from
the same producer, this protection may not
be invoked. This gave imitators an easy
escape route.
However, the law on unfair competition
also provides for another typical situation,
i.e. the appropriation of qualities,
disciplined by Art. 2598 no.2 of the Civil
Code, which is also considered applicable
in cases of the so-called publicity by
linkage, in which another’s mark is used in
a non-confusing way but in such a way as
to still give rise to recall to the benefit of
the imitator’s product, as happens for
example when its use is preceded by
expressions such as “type”, “model”, etc.
Many had already wondered if even nonconfusing imitation of shapes could be
connected to this situation, when we have
exploitation of the renown enjoyed by the
imitated product on the market.
This point was not even clarified by the
IP Code, which counted unregistered
marks (including the shapes of goods)
amongst IP rights, extending the typical
system of sanctions (description, seizure,
destruction order and assignment etc.)
already provided for registered trademarks
to unregistered trademarks, but without
specifying either the pre-requisites for
being given this protection or the precise
scope of protection. Legal theorists then
asked whether the same protection as that
given to registered trademarks should also
be given to unregistered trademarks,
naturally only within the limits, including
territorial limits, of the achieved renown.
The Court of Milan, in the decree
examined hereunder, responds in the
affirmative to both questions, ruling, in the
case in question, that the (unregistered)
shape of the product may be protected
against infringement, at essentially the
same conditions as those for registered
trademarks, against unfair competition,
www.ipworld.com
K
In the case in point, however, the court disregarded the repute of the
“
trademark but still held that linkage was important as a form of confusion or
association
”
precise imitation and appropriation of
qualities “with the simultaneous detriment
to the business image of the petitioner”.
Likewise the Court of Naples in the case
Deborah Italia s.p.a. vs Eurostyle s.p.a. (Court
of Naples, 6th Augist 2009) ascertained
“imitation of the exterior individuating
characteristics” of some types of cosmetics
packaging as unregistered trademarks. As
such, these rulings represent important
progress in the strengthening of the
protection of goods shape against
imitations especially from the Far East.
These imitations are now frequently
effected by tracing by means of
digitalising the original goods with an
electronic feeler or laser system, which
also makes it possible to save on costs for
the design of the moulds.
Highly efficient anti-infringement
juridical instruments
Contrary to what is often heard, Italy’s antiinfringement juridical instruments have
become highly efficient.
In particular the Italian Civil Courts
enjoy excellent levels of efficiency in
responding to infringement for what
concerns the use of urgency measures
(injunction, seizure, order to withdraw
goods from the market) and instruments of
judicial investigation of evidence
(description order, normally granted ex
parte). This has been especially the case
since 2003 when 12 Specialised IP
Divisions were set up at 12 courts and
Courts of Appeal, with exclusive
competence to decide on civil actions
relating to trademarks, patents, copyright
and unfair competition linked to these
rights and their violation. Said emergency
measures are examined and granted with
great speed (normally a few days, in the
case of measures protecting trademarks
and designs, very often granted ex parte; a
few months in the case of measures
protecting patents). An injunction is
www.ipworld.com
usually backed up by a fine for each
violation, to be paid to the holder of the
violated right. Violation of a right is also
subject to a criminal sanction (a prison
term of up to three years or a fine) under
Art. 388 CC.
Urgency measures, ordered by an
individual judge appointed for each case by
the president of the competent Specialised
Division, are re-examined by a panel of
three judges belonging to the same
Division. Said panel does not include the
first judge and it, in turn, decides very
quickly (normally one-two months). Use of
these measures very often means that first
instance proceedings may be avoided as
extra-judicial agreements can be reached
based on acceptance by the infringer of the
court order and on payment by the infringer
of a sum agreed by the parties. This is aided
by the fact that seizure and description often
also involve the accounts of the alleged
infringer and thus facilitate calculation of
any compensation.
At the end of first instance proceedings,
in addition to a final injunction and order
to withdraw counterfeit goods from the
market, always backed up by a fine, the
goods may be handed over to the holder of
the violated right or destroyed at the
expense of the infringer. The infringer is
also ordered to pay compensation and give
up profits made from the infringement.
With implementation of EC Directive
2004/48 in 2006, which amended Art. 125
CIP, the holder of a violated right may
receive a sum which corresponds either to
the infringer’s profits or to his own lost
profits, whichever is the greater.
Compensation for any further damage,
such as expenses for responding to the
infringement or damage to image, may
also be added to said sum. Compensation
for damage to image is frequently
calculated as a fraction of the advertising
expenses of the holder of the violated
right which were nullified by the
infringement, or the cost of an advertising
campaign to eradicate the negative impact
of the infringement on the public. The
judge can also order publication of his
ruling at the expense of the infringer, both
at interim stage (although this is rare) and
at the end of first instance proceedings.
These rules, together with the clear
tendency of the courts to make the
exclusive right accorded by distinctive
signs subject (and commensurate with) the
meaning which it presents to the public,
highlighting this perception of the public
as a linchpin of the system, in countrast
with formalistic interpretations, contribute
to make the Italian IP an efficient and
reliable judiciary for trademark protection
and in the fight against infringement,
which allows the owners of renowned
trademarks to re-appropriate positive
externalities connected to the messages
incorporated in their trademarks. K
AUTHOR
Head and founder of IP Law
Galli and professor of IP
Law at the University of
Parma, Cesare Galli
handles litigation regarding
all branches of IP Law, often
tackling cross-border problems too. In 1999
he obtained the first Italian final ruling on
biotech patents. Likewise in 2004 he secured
the first Italian ruling on the validity of a
computer implemented invention patent and
in 2005 and 2008 key decisions on the
extended protection of renowned
trademarks. Since 2005 he has been a
Member of Governmental Boards of
Counsels in the IP field and in 2009 was also
called to join the EU Observatory on Piracy
and Infringement.
| 15
PATPOL
K
The Polish Courts
follow EU law in
protecting reputed
trademarks
Tomasz Rychlicki of Patpol illustrates the case of Tiffany & Co
in its bid to protect its mark in Poland
T
he latest judgment of the Polish
Supreme Administrative Court in
Warsaw is an example proving that
the protection of reputed trademarks in
Poland is in accordance with EU law.
Two US companies were involved in a
dispute before Polish courts over their
trademarks with a word element TIFFANY.
The District Administrative Court in
Warsaw in its recent judgments of 24 July
2008, case numbers VI SA/Wa 237/08 and
VI SA/Wa 238/08, dismissed Tiffany &
Broadway Inc. Div. of Texpol Corporation’s
appeals against the Polish Patent Office’s
decision of 19 March 2007, case numbers Sp.
68/04 and Sp. 69/04, regarding cancellation
of the right of protection for word-figurative
trademarks TIFFANY R-128063 and
“Tiffany & Broadway Inc.” R-128064 which
were registered in class 25 for shoes.
The cancellation proceedings were started
by Tiffany & Co. from New York. The New
York company claimed not only the similarity
between the subject signs, but also a breach of
its over 150-year reputation in the field of
jewellery products. During one of the hearings
before the Polish Patent Office, Tiffany & Co.
provided evidence of a witness regarding the
reputation and common knowledge of the
Tiffany & Co. brand. The witness stressed that
although in post-World War II Poland the
Tiffany brand was not present on the market,
the press (women’s magazines and other
publications) wrote about Tiffany & Co. as a
provider of luxurious jewellery. The New
York-based company also argued that the use
of the TIFFANY trademark for goods such as
footwear was a parasitic activity consisting in
using another trademark’s reputation and
bringing unjustified financial profits to the
holder of national registrations.
www.ipworld.com
The court has confirmed the findings of
the Polish Patent Office that the TIFFANY
trademark enjoys reputation even though it
had not been registered in Poland. Judge
Olga Zurawska-Matusiak decided that
renowned signs or snobbish signs (sic!) do
not need to be generally known to the
public. It is sufficient if they are known to
the relevant group of the public, to whom
such signs are addressed, namely the
customers of luxury goods. If there is an
international reputation of a mark – it also
covers Poland.
Tiffany & Broadway Inc. Div. of Texpol
filed a cassation complaint with the
Supreme Administrative Court. The
Supreme Administrative Court, in a
judgment of 8 July 2009, case number II
GSK 1111/08, ruled that the old version of
the Polish Trade Mark Act (TMA) of 31
January 1985, Journal of Laws (Dziennik
Ustaw) No 5, item 15, with later
amendments, do not explicitly provide for
any special protection for unregistered
reputed trademarks. However, the doctrine
and Polish case law has already accepted the
concept that such protection may be
provided according to the regulations set
forth under Article 8(1) of the TMA:
A trademark shall not be registered if it
is contrary to law or to the principles of
social coexistence.
In particular, “a conflict of a trademark with
the principles of social coexistence” – as it
was commented from a subjective perspective
– means that the “contradiction/variance with
the principles of social coexistence” may
concern the conduct/ behavior of the
applicant. On the basis of such conclusions,
the registration of a sign for the goods of
| 17
in the key patent jurisdictions”
Freshfields Bruckhaus Deringer
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another kind, if the registration was intended
to use the reputation of the other trademark,
or it was a threat to such reputation, was
excluded under the subject Article. A
trademark application that was filed in
contradiction to the principles of social
coexistence shall be regarded as an
application filed in bad faith. The absolute
grounds/obstacles that are provided against
the registration of the mark, as specified
under Article 8(1) of the TMA, do not
directly refer to the relationship between the
sign that was applied for and any other
competing trademark, however, in accordance
with the accepted interpretation of that
provision, in case of infringement of the rules
of social coexistence, the obstacle could be the
inappropriate behavior of the applicant (its
actions done in bad faith). The assessment of
applicant’s actions, which was driven by the
desire to use a reputation of the other
trademark, should therefore also vary
according to the circumstances, (the
applicant’s motifs), and not only relate to the
trademark itself.
The application for the right of protection
of a trademark that was filed with the intent
to use the other trademark’s reputation should
be judged as an application that was filed in
breach of the rules of social coexistence
(application made in bad faith), regardless of
whether it concerns a reputed registered
trademark or unregistered reputed trademark.
However, when deciding on the interpretation
of Article 8(1) of the TMA, which allows for
protection of unregistered reputed trademarks
in Poland, it should also be noted that such
protection have a special character because it
applies to unregistered marks, and it is an
exception to the principle of protecting
industrial property rights by the registration
process. This involves a lot of caution, so that
the importance of trademark registration is
not depreciated without justified reasons, and
is not reduced to a purely formal procedure
that has no importance.
The Polish case law (for instance the
judgment of the Supreme Administrative
Court of 9 May 2008, case number II GSK
506/07), already established a rule that in
case of a famous trademark and its
reputation, besides its recognition, it must
also be characterised by the following
features reaching a certain level:
• Market share/participation (both quantity
and value of the goods sold);
• Range and long-lasting effect of advertising
the product bearing a trademark;
• Territorial and temporal range of use;
www.ipworld.com
PATPOL
• Licences granted for the use of the mark,
quality of goods bearing the mark;
• Value of a given sign in assessment of an
independent financial institution;
• Size and extent of expenditures spent on
promotion of a mark;
• The relationship between the prices of
subject goods;
• If (and to what extent) the mark is used by
a third party.
The Supreme Administrative Court also
noted that the Community case law provides
for several fundamental conditions for the
recognition of a trademark as a reputed one.
These are as follows:
• Knowledge of the trademark among a
significant group of customers;
• Contribution of the mark to the market,
• Intensity and geographic scope of the use,
• Intensity of associating the goods with
the sign,
• The size of expenditures on advertising
and promotion of the mark.
The Supreme Administrative Court cited
inter alia the judgment of the Court of
Justice of the European Union of 14
September 1999 in a case C-375/97 General
Motors, judgments of the Court of First
Instance (CFI) of 13 December 2004 in case
T-8/03 El Corte Ingles and the CFI
judgment of 25 May 2005 in case T-67/04
the Spa Finders.
It is also clear that the reputation of a
trademark must be assessed and established in
the country in which the protection is sought.
If one would like to qualify a given trademark
as a reputed one in Poland, then the argument
of the international reputation of a trademark
is not sufficient. A basic requirement for a
party seeking recognition of the reputation of
a mark in a specific country is provision of
information such as market share in terms of
both quantity and value of the goods sold.
The First Directive 89/104/EEC of 21
December 1988 does not preclude a possibility
of granting the protection to unregistered
reputed trademarks under the national law.
Just to keep it in order, it is worth adding that
the Polish Act of 30 June 2000 on Industrial
Property Law (IPL) of 30 June 2000, published
in the Journal of Laws (Dziennik Ustaw) of
2001 No 49, item 508, consolidated text on 13
June 2003, Journal of Laws (Dziennik Ustaw)
No 119, item 1117, with later amendments,
provides under Article 132(2)(iii) that:
A right of protection for a trademark shall
not be granted, if the trademark: (iii) is
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identical or similar to a renowned
trademark registered or applied for
registration with an earlier priority
(provided that the latter is subsequently
registered) on behalf of another party for
any kind of goods, if it, without due cause,
would bring unfair advantage to the
applicant or be detrimental to the distinctive
character or the repute of the earlier
trademark. The above provision shall apply
to well-known trademarks accordingly.
The protection of registered trademarks is
further specified under Article 4(4)(a) of the
Directive. The trademark application that
was made in bad faith shall be rejected
based on the absolute ground for refusal of
protection based on provisions of Article
131(2)(i) of the IPL.
A right of protection shall not be granted
for a sign, if (i) it has been applied for
protection with the Patent Office in bad faith.
The Supreme Administrative Court ruled
that the provisions of Article 4(4)(a) of the
Directive cannot be interpreted as the
maximum limitation for the protection of
famous marks as specified under national
law, and it would be difficult to agree with
argumentation that the First Directive
89/104 is an example of the so-called
“complete harmonisation,” as said in the
judgment of the Court of Justice of the
European Union of 9 January 2003 in case
C -292/00 Davidoff & Cie S. A.
Therefore, the Supreme Administrative
Court annulled the questioned judgment of
the District Administrative Court and
returned the case for reconsideration
according to specific guidelines. In addition,
the Polish Patent Office was ordered to pay
a sum of 1200 PLN to Tiffany & Broadway
Inc. Div. of Texpol Corporation as
reimbursement of costs of the cassation
compliant. K
AUTHOR
Tomasz Rychlicki is a
lawyer with Patpol and
patent attorney trainee. He
is a graduate of the Centre
of European Law at the
University of Gdansk. He also studied
international IP law as part of a master’s of
law programme at the Chicago-Kent College
of Law.
Mr Rychlicki handles copyright, trademark and
domain name cases, as well as customs
seizures.
| 19
K GOODRICH
The shape of a
product cannot be
exclusively protected
as a design mark
Enrique Diaz and Paolo Massimi of Goodrich Riquelme y
Asociados discusses the scope of non-traditional marks in Mexico
T
rademark protection systems
around the globe differ
substantially from each other. In
some of them, the range of protection
regarding distinctive elements is very
wide. Some systems allow the protection
of non-traditional trademarks, such as
colours, shapes, moving images and
holograms. There are even some
that allow the registration of non-visible
signs, such as sounds, fragrances, tastes
and textures.
The Mexican trademark system, besides
being registration orientated, is a lot more
conservative when it comes to distinctive
signs that may be protected. According
to Mexican IP law, only visible signs may
be registered as trademarks, so the
protection on non-traditional trademarks
in our system is very limited. In fact, the
only real non-traditional trademark that
may be protected in Mexico is the 3-D
trademark, which by statutory provision
may refer to a package, wrapping, the
container or bottle or to the shape of a
product itself.
The Mexican market has turned into a
very competitive field, which has pushed
companies and individuals to try to protect
the shapes of their products, so they may
provide them with a very important
competitive leverage against their
competitors. They, therefore, have to be
very cautious when it comes to choosing the
correct protection method.
In practice, it is difficult to obtain the
registration of the shape of a product by
itself, namely because of the lack of
knowledge and incorrect criteria applied
by the examiners of the Mexican
Industrial Property Institute (IMPI) or
because many of the products intended to
be registered are generic and/or
descriptive. It is very important to
remember that as a general rule, in
Mexico we do not have trade dress
protection, with the exception of
franchises, and we do not have the
common law concept to acquire
distinctiveness.
If we focus exclusively on trademarks,
according to the Mexican Industrial IP law,
a product may be protected as a design
mark and/or as a 3-D trademark.
The differences regarding the protection
given by these two figures are substantial
and in most of the cases unknown by
their applicants, so it is not unusual
for corporations and individuals to
get confused about the real scope of
protection obtained with the
corresponding registrations.
It is a common need for a corporation or
individual to try to protect as strong as
possible their trademark rights regarding
the goods they commercialise, and in
Mexico, the most common concern is
related to the protection of the physical
and visual characteristics of the
products. It is here where most of the
errors are made when it comes to
trademark protection.
In the practice, we have faced several
situations in which corporations or
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GOODRICH
K
Although such a registration would provide its owner with the exclusivity
“
over the specific design, in our opinion, such right refers only to the use of
the device on a two dimensional perspective and not regarding the good’s
physical characteristics or shape
”
individuals file for a design trademark
registration intending to secure the right to
the exclusive use over their product’s design
(drawing) or shape.
Although such a registration would
provide its owner with the exclusivity over
the specific design, in our opinion, such
right refers only to the use of the device
on a two dimensional perspective and not
regarding the good’s physical
characteristics or shape. If a corporation
or individual is interested in protecting
the shape of the product, then they should
apply for a 3-D trademark.
However, controversy arises when these
two different trademark rights converge
into the same product. Namely, when a two
dimensional trademark is applied to a three
dimensional trademark.
As previously mentioned, the shape of
some products cannot be protected as 3-D
trademarks because the product by itself is
generic, descriptive or it is the common
shape of that particular product. Obtaining
a 3-D registration of the shape of a
product that it is generic and/or
descriptive and/or commonly used in
commerce, would represent unfair
competition because it would provide its
owner a right to its exclusive use and
would expose any non-authorised
user to infringement actions and
inclusively damages.
Regardless of the impossibility to
secure a 3-D registration over the
shape of a product, some corporations
and individuals are securing registrations
of the same product as a design mark.
The registration could be obtained
due to an incorrect understanding
of the protection of the chosen figure
or to try to obtain an incorrect and
unfair commercial leverage against
their competitors.
As previously mentioned, the only way
to obtain the right to the exclusive use of
a trademark is with the corresponding
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registration. However, in our opinion a
design mark (two dimensional trademark)
cannot block/prevent the use of a
product that may incorporate in its shape
some of the drawings covered by the
design trademark.
However, when marketing arises, the
product (pictures, drawings, etc.) may be
incorporated in catalogues, brochures,
magazines, etc. Therefore, regardless that
the company may not be commercialising
a design mark but a product that
inclusively could be generic and/or
descriptive, etc, its use for marketing
purposes in catalogues may incorrectly
expose it to an infringement action, so
that we think it may be easily defended
and inclusively cancelled as a
counterclaim.
Parties receiving a cease and desist
letter from a party owning a design
registration, must determine the scope of
protection of the “infringed” right prior to
determining the next course of action,
because they may not be infringing any
right, in spite of the fact that the actual
shape of their goods may look similar or
even exactly the same as the drawings
protected by the complainant’s two
dimensional design trademark
registration.
Another perspective that has to be
taken into consideration arises from
the actual use given to the two
dimensional design registrations, due to,
as previously mentioned, the fact that it is
a common mistake for trademark owners
to “use” their secured rights over
their designs to protect the shape
of their products.
In view of the above, we believe that a
design registration used in connection to
the shape of a product may even be
vulnerable to cancellation on grounds of
lack of use.
According to Mexican IP law, a
trademark registration should be used
exactly as it was granted or with slight
modifications.
Taking this into consideration, we believe
that using a design trademark registration
to protect the shape of a product would not
be sufficient to prevent the cancellation of
this registration on grounds of lack of use,
namely because the use of the product itself
would not inure into the registered mark.
Consequently, we consider that
corporations and individuals should be very
cautious when protecting their industrial
property rights in Mexico. So, when it
comes to the protection of a product by
itself, the ideal strategy would be securing
the design trademark, the three dimensional
trademark and inclusively a design and/or
three dimensional trademark including
colours; if any, to try to gain some trade
dress protection. K
AUTHORS
Enrique Diaz is junior
partner and head of
Industrial Property at
Goodrich, handling and
prosecuting over 3500
trademarks and more than
1000 patents every year. He also handles
more than 400 litigation cases in both fields
every year, including licensing, patent and
trademark infringement, counterfeiting,
pirating and unlawful duplication of computer
software.
Paolo Massimi is a 2008
attorney graduate of the
Westhill University (Mexico
City). He is presently part
of the Industrial Property
area of the firm, handling
and prosecuting trademarks,
copyrights, infringement
actions, contracts, licensing, counterfeiting,
pirating and unlawful duplication of computer
software.
| 21
K VOSSIUS & PARTNER
Preliminary injunction
proceedings in Germany
– an effective tool in IP
litigation matters
Dr. Mathias Kleespies and Paul Kretschmar of Vossius &
Partner discuss the use of preliminary injunctions as a remedy
against trademark infringement in Germany
P
reliminary injunctions are provisional
court orders requesting that a party
perform or refrain from doing certain
acts. In IP matters, preliminary injunctions
are a very effective tool to promptly stop
infringing actions without the need of time
and cost consuming main court proceedings.
Preliminary injunctions are in many cases
granted within a few days after a corresponding request has been filed. Furthermore,
in practice many injunctions are granted ex
parte, i.e. without an oral hearing or any
other prior notification to the defendant.
This cost and time efficiency as well as
the “element of surprise” has led to a great
popularity of preliminary injunction
proceedings with regard to the enforcement
of rights in all areas of intellectual property
protection in Germany, such as in
trademark, design right, patent, and
copyright as well as in unfair competition
matters. This article will focus on
preliminary injunction proceedings in
trademark matters.
Prerequisites for obtaining a preliminary
injunction and procedural aspects
Sending a warning letter to the respondent
is not a legal prerequisite for obtaining or
serving a preliminary injunction. German
case law has established the warning letter
as an instrument to resolve disputes without
the need for court proceedings. The reason
is that respondents should be given the
opportunity to immediately acknowledge
the right holder’s claims without necessarily being confronted by court proceedings.
Although such warning letters are not a
prerequisite for obtaining or serving a
preliminary injunction, it is advisable to
send a warning letter prior to serving the
injunction in order to avoid being burdened
with the costs of the proceedings. When no
prior warning letter was sent and the
respondent immediately acknowledged the
claims of the preliminary injunction, the
applicant generally has to bear the costs of
the proceedings, pursuant to Section 93
German Act of Civil Procedure.
The warning letter should contain:
• a description of the infringing action
• the assertion that the respondent’s action
has infringed a certain right
• the request to cease and desist from
continuing with the infringing action
under the threat of court proceedings
The respondent should further be requested
to sign a “Declaration to Cease and Desist”
within a short term, which can range from a
few hours to several days. In such a
declaration, the respondent must undertake
to cease and desist from continuing with the
infringing action and undertake to pay a
contractual penalty for each case of
contravention.
Motion for preliminary injunction
If the respondent does not comply with the
warning letter, e.g. does not sign the
Declaration to Cease and Desist, the next
step for the applicant could be filing a
request for a preliminary injunction with a
competent court.
If the applicant had already filed a request
for preliminary injunction which had been
granted prior to the sending of a warning
letter, the injunction could also be served
immediately after expiry of the deadline set
in the warning letter, so that the “surprise
www.ipworld.com
effect” comes into full force. Since it is the
applicant’s obligation to serve the injunction
within one month to the respondent (cf.
below item 4), the applicant can decide at
which point of time they wish to serve the
preliminary injunction during the onemonth period.
In order to obtain a preliminary
injunction the applicant has to convince the
court that the prerequisites for a
preliminary injunction are met, namely:
• that the applicant has a substantive claim
against the respondent and
• that the matter is urgent, i.e. that without
a preliminary injunction the applicant
would face difficulties to enforce its rights
by means of main court proceedings
Substantive claim for injunction
As mentioned above, preliminary
injunctions are only provisional court
decisions, with the aim of preventing
infringing acts quickly but not to give a
final verdict on the matter. The court will
only summarily examine the matter and
grant the injunction if there is a
predominant probability that the claims are
justified. This is contrary to main
proceedings, where the court has to be
convinced that the claims are justified. In
summary proceedings not all forms of
evidence are accepted. Rather, the applicant
has to furnish prima facie evidence that its
rights are valid and that an infringement is
given. Prima facie evidence can be
established by means of submitting
• all relevant documents showing that the
applicant owns valid trademark rights (e.g.
printouts from the trademark register),
• pictures or other evidence showing the
infringing use of the respondent’s
trademark as well as
• written affidavits of the applicant and/or
third parties concerning the entire
relevant facts of the case.
In case the applicant is able to furnish prima
facie evidence concerning the trademark
infringement, they are entitled to assert
several claims i.e. claims for injunctive relief
as well as a number of ancillary claims,
some of which were recently introduced into
German trademark law by implementation
of the Directive 2004/48/EC of the
European Parliament and of the Council of
29 April 2004 on the enforcement of
intellectual property rights (also known as
Enforcement Directive). Such ancillary
claims cover claims for rendering
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VOSSIUS & PARTNER
information concerning the origin and the
channels of distribution of unlawfully
marked objects, claims for presentation and
inspection of documents or objects, claims
for access, where appropriate, to banking,
financial or commercial documents under
the control of the alleged infringer, as well
as claims for sequestration in preparation of
the destruction of infringing goods. The
claim for sequestration of infringing goods
is particularly important in product piracy
cases, as it enables the applicant to ensure
that counterfeit goods will not enter the
market but will be destroyed. Besides the
claim for injunction and the ancillary claims,
however, the applicant cannot assert any
claims for damages or destruction. Since the
enforcement of such claims would be
detrimental to the preliminary character of
the summary preliminary injunction
proceedings, such claims have to be pursued
in main court proceedings.
Matter of urgency
In competition matters, urgency is assumed
by law so that the applicant does not have to
prove that a matter of urgency is given. Since
there is no consistent practice of the German
Courts with regard to the question whether
or not this competition law principle also
applies to preliminary injunction proceedings
in trademark matters, the applicant should in
any case put forward arguments and, if
possible, establish prima facie evidence that a
matter of urgency is given.
However, even if a matter of urgency was
originally given, it can be lost if the applicant
hesitates to apply for a preliminary
injunction although being aware of the
infringing act. According to the strict
practice of the District Court of Munich a
preliminary injunction is not admissible if the
applicant did not apply for a preliminary
injunction within a time frame of four weeks
as of the date on which the applicant has
obtained positive knowledge of all relevant
facts of the infringement for the first time.
Since the other German Courts tend to
follow this practice and have become stricter
with regard to the time frame in which a
motion for a preliminary injunc-tion has to
be filed, it is of utmost importance that the
right holder preserves all legal possibilities
concerning a preliminary injunction and
contacts the infringer without any delay, once
it has become aware of the infringement.
Should the infringer not be willing to sign
the requested declaration to Cease and
Desist, the right holder should therefore
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immediately file a request for a preliminary
injunction before the relevant court within
said four week deadline.
Choosing the right venue
According to Section 32 German Act of
Civil Procedure in matters relating to tort,
the courts of the venue where the harmful
event occurred are competent. Thus, in
matters where for instance an infringer has
offered counterfeit goods via the internet
also to German consumers, the applicant is
generally free to choose the venue for
requesting the preliminary injunction, i.e. a
German court which seems most willing to
grant the injunction. After a request for a
preliminary injunction has been denied by a
court (first court) and the applicant has
withdrawn the request, some applicants try
to have the same injunction granted by
another court (second court), without
informing the second court of the first
court’s hesitation to grant the preliminary
injunction (forum shopping for a positive
preliminary injunction decision). However,
such course of action can not be
recommended, as some courts consider this
as an abusive exercise of the law and argue
that a case of urgency is not given anymore
so that the request is likely to be dismissed.
Court decision
The court has three possibilities to decide
about the request for preliminary injunction.
The court can dismiss it, order an oral
hearing before granting it, or grant the
preliminary injunction ex parte, i.e. without
scheduling an oral hearing. In the last case
the respondent will not be heard before the
preliminary injunction is granted, so that
the element of surprise is given.
In practice the applicant will ask the
judge to be informed orally (via telephone)
if the court tends to not grant the
preliminary injunction ex parte but rather
plans to schedule an oral hearing. In such
cases the applicant has the possibility of
withdrawing the request for preliminary
injunction with the benefit of avoiding a
possible negative decision as well as
avoiding raising awareness of the planned
injunction with respondent.
Enforcement of the preliminary injunction
If the court grants the preliminary
injunction, it is the applicant’s obligation to
serve the injunction within one month to
the respondent (enforcement of the
preliminary injunction). If the respondent is
| 23
K VOSSIUS & PARTNER
duly represented by attorneys at law in the
preliminary injunction proceedings, the
preliminary injunction must be served on
the attorneys and not on the respondent
itself. If the term for serving the injunction
is not met or if the injunction is served on
the wrong party, the preliminary injunction
becomes unenforceable and can be revoked.
Execution of the preliminary injunction
Once the preliminary injunction has been
served (enforcement) the injunction is
legally valid and the respondent has to
immediately stop any acts which could be
considered to be in contravention of the
prohibitive injunction. If the respondent
continues e.g. to advertise and sell
infringing goods, the applicant can request
the competent court to affirm that the
respondent acted against the prohibitive
injunction and that the respondent is subject
to the payment of a fine of up to €250,000
set by the court for each case of
contravention (execution of the injunction).
Even if the respondent is located abroad, it
is still possible to execute the preliminary
injunction within Germany, if the respondent
owns assets in Germany (e.g. a branch office).
Countermeasures
On part of the respondent the only possible
remedy against an anticipated ex parte
injunction is the filing of a so called
protective letter (Schutzschrift) with the court
which is expected to grant a preliminary
injunction. Since the respondent does in many
cases not know, which court the applicant will
choose for the injunction proceedings, it is in
such cases recommendable to file protective
letters with all German trademark courts (i.e.
District Courts which have been allotted by
the governments of the Federal States of
Germany to exclusively handle litigation
concerning trademarks). In the protective
letter the respondent should bring forward
any arguments available why a possible
preliminary injunction against the respondent
would be inadmissible and/or unjustified (e.g.
that the applicant cannot derive any rights
from its trademarks, since these trademarks
are vulnerable to cancellation due to non-use
and/or that a likelihood of confusion is not
given and/or that the matter is not urgent
anymore etc.). Although the courts are not
obliged to consider the protective letter, the
competent judges might refrain from
granting an ex parte injunction and rather
schedule an oral hearing before granting the
preliminary injunction.
Opposition
German law provides for several remedies
against the injunction once it has been
granted. In particular, the respondent
might consider filing an opposition against
the decision in order to have the court
reconsider the decision and appoint an oral
hearing. Such opposition is directed at the
revocation of the preliminary injunction by
the court. After an opposition has been
filed, the court which has granted the
preliminary injunction will schedule an oral
hearing. In the oral hearing both parties
can bring forward their arguments and the
court will then decide on the validity of the
preliminary injunction i.e. will either revoke
or affirm it. Since the opposition does not
suspend the effect of the preliminary
injunction so that the applicant may
execute the preliminary injunction at any
time during the pending opposition
proceedings, it is of utmost importance for
the respondent to comply with the
injunction as long as the injunction has not
been revoked by the court.
If it later turns out that the injunction
was not justified, the respondent has a claim
against the applicant for reimbursement of
all damages suffered in connection with the
enforcement and possible execution of
the injunction.
Reimbursement of costs
A great advantage of filing a motion
for a preliminary injunction in Germany
is that Germany is one of the few
countries where the winning party
has a claim for reimbursement of costs
(court costs and lawyer’s fees) against
the losing party. This should be
considered when deciding about the venue
of possible legal actions against a
respondent in cases of pan-European
infringement actions.
Conclusion
The preliminary injunction is a very fast,
powerful, cost efficient and effective tool
for trade-mark owners to immediately stop
trademark infringements without the need
for time and cost consuming main court
proceedings and should therefore always
be kept in mind when considering
alternative legal measures. Due to the
tight timeframe, trademark owners should
not hesitate to enforce their rights but act
very quickly if they become aware of an
infringement of their trademark rights. In
view of the various pitfalls in the German
preliminary injunction proceedings,
experienced IP counsels should be
consulted prior to filing a request for
preliminary injunctions. K
AUTHORS
Dr. Mathias Kleespies was
born in Villingen in 1971. He
studied law at the University
of Saarland and at the
Westphalian WilhemsUniversity in Münster. In
1999 he passed his Second State Examination
in Berlin. Dr. Kleespies received his Ph.D. in
the field of privatisation of public sector
responsibilities, in particular Public-PrivatePartnerships. After participating in the
postgraduate program “International Studies in
Intellectual Property Law” at the University of
Exeter and the Dresden University of
Technology, a program awarded and
supported by the Founders’ Association for
German Science, he obtained his Master of
Laws degree (LL.M.). Dr. Kleespies worked for
the law firms Travers Smith and Hoffmann Eitle
in the field of trademark law, competition law,
antitrust law and copyright law before he
joined Vossius & Partner in October 2005.
Dr. Kleespies is co-editor and author of the
practitioner handbook on German, European
and International Trademark Law
“Formularkommentar Markenrecht”. He is a
member of INTA, ECTA, PTMG and GRUR.
Paul Kretschmar is a
partner of Vossius & Partner
and has been heading the
trademark department since
January 2007. He was
admitted to the bar in 2005.
He advises and represents
national and international clients in IP-related
litigation and prosecution matters with a focus
on trademark, design, domain, and unfair
competition law. He joined Vossius & Partner
in 2006. Paul studied law at the Universities of
Munich, Berlin and Barcelona, focusing on
intellectual property and copyright law. After
completing his studies, he worked as a
research assistant in the IP practice group of
the law firm Linklaters & Alliance. During his
legal clerkship he worked for the German
Embassy in South Africa as well as for a
Spanish Law firm. He is a member of the
International Trademark Association (INTA),
the European Communities Trade Mark
Association (ECTA), the German Association
for the Protection of Intellectual Property
(GRUR) as well as the German-Spanish
Lawyers Association. He is author of various
publications in the field of trademark law.
www.ipworld.com
PATENT LITIGATION
MODIANO
K
When does infringement
start in Italy?
Micaela Modiano of Modiano IP Law gives an overview of IP protection in Italy
I
n Italy, intellectual property rights
matters are ruled by the Industrial
Property Code (hereinafter “IPC”). The
IPC is therefore the starting point for
determining when an infringement activity
can be considered as having started under
Italian law.
The issue under examination here is
when effective infringement starts. In
particular: can the simple filing by a third
party of an administrative request relating
to an IP right be sufficient to consider that
infringement has started?
After all, it could be argued that the act of
filing with an administrative authority of a
request relating to a patent or trademark
owned by others might be assumed to
represent the first indication of the
commercial interest with respect to that
patent or trademark. But is this assumption
true? Can the simple filing of an
administrative request be considered as a sign
of the intention of use (and thus be potentially
considered as an infringement)? If so, can this
intention of use already be considered as an
act of infringement of third-party rights?
Taking into account that the IPC does not
regulate the various IP rights (in particular
trademarks and patents) in the same manner,
we shall evaluate each right separately.
• offering labelled goods or services, regardless
of whether the offer is for sale or other;
• placing goods bearing the sign on the
Italian market or the detention thereof for
commercial purposes;
• importing or exporting for commercial
purposes the labelled goods (also if they
are not intended to be marketed in Italy);
• using the infringing sign in advertising
and correspondence.
1. Trademarks
With regard to trademarks, article 20(1) of
the IPC provides that there is infringement
when a third party uses, in its economic
activity, a sign identical or similar to a prior
trademark to distinguish goods or services of
the same or similar kind (or, in the
exceptional case of a renowned trademark,
also to distinguish dissimilar goods/services).
Article 20(2) of the IPC specifies what
must be considered as “use”. The following
uses are prohibited:
• affixing the sign on the goods or their
packaging (regardless of whether they are
then marketed in Italy);
2. Patents
Article 66 of the IPC grants the holder of
the patent the exclusive right to implement
the patented invention and draw profit
thereof. Therefore, the following constitute
acts of infringement:
a) If the subject matter of the patent is a
product, the production (also if intended
for export), use, marketing and sale of the
patented product, and the importation of
the product for such purposes.
b) If the subject matter of the patent is a
process, the application of that process as
well as the use, marketing and sale of the
product directly obtained by the patented
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With regard to the question of whether a
simple administrative request may be
considered as an infringement, the prevailing
Italian case law has indicated that the mere
filing of an application of a subsequent mark
cannot be considered as an act of
infringement of the earlier third-party mark.
This was recently confirmed by a decision of
the Court of Rome of 12 July 2001 according
to which “the mere filing of an application for
registration of a mark lacking the requirement of
novelty does not constitute an act of infringement
of the earlier third party mark”.
In order for a use to qualify as an
infringement, therefore, the use must be
effective (or it must at least consist in the offer
on the market), while the administrative act of
filing an application for registration of a mark
is not considered as an infringement act.
process and the importation of that
product for such purposes.
According to some commentaries and
Italian case law, also the following
constitutes infringement:
• the manufacture abroad of the infringing
products while being aware that its
destination will be the Italian market;
• the conscious supply to a third party
infringer of components which are not
patented but are essential or univocally
intended for the manufacture of the
infringing finished product (so-called
indirect infringement);
• the preparation of means specifically and
univocally intended for the manufacture of
a patented invention;
• the manufacture in Italy of elements of an
infringing product which is then assembled
abroad in a territory where the product does
not enjoy patent protection, when the
activity performed in Italy can be considered
as covering a large part of the patent claim.
It can be seen from the above list of specific
activities qualifying as infringement acts
that none of these activities include the
simple filing of a patent application identical
to an earlier patent with the competent
administrative authority. Thus, it appears
that this kind of administrative request is
not considered as an act of infringement.
3. Pharmaceutical patents
Within the patent world, particular attention
should be given to pharmaceutical patents.
With the entry into force of the IPC in
2005, the provision related to experimental
activities on a third party’s patented
invention (contained in article 1(3) of the
old Invention Law and now in article 68(1)
of the IPC) was amended to insert
additional precise indications that have
proven to be quite important.
In particular, while article 1(3) of the old
| 25
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in
IP litigation
PATENTS
P
ATENTS
DESIGN
TRADEMARKS
Italy
Via
V
ia Meravigli,
avigli, 16
20123 - Milan
Tel
T
el +39 02 8590.7777
Fax +39 02 863.860
www.modiano.com
www
.modiano.com
odiano.com
INTERNET
NTERNET
T
LITIGATION
LITIGA
ATION
UNF
UNFAIR
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FAIR COMPETITION
Germany
Thierschstrasse,
se, 1
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D-80538 - Münich
nich
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fax +49 89 225.809
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LICENSING
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Spain
Avda.
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vda. Maisonnave, 30
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t l +34 965.986.540
tel
fax +34 965.133.092
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Switzerland
via Nassa, 56
CH-6900 - Lugano
t l +41 91 922.2015
tel
fax +41 91 921.3103
[email protected]
@modiano.com
PATENT LITIGATION
Invention Law merely provided that a third
party’s patent could not prohibit
experimental activities on the claimed
invention, article 68(1) of the IPC now
states that the exclusive right attributed by
the patent does not extend, whatever the
subject matter of the invention, to activities
performed experimentally “even if aimed at
obtaining, also in foreign countries, an
authorisation to market a pharmaceutical
product and the consequential practical
requirements, including the preparation and use
of the pharmacologically active raw materials
that are strictly necessary for that purpose”.
Thus, the new provision includes
experimental activities having as a goal the
achievement of a marketing authorisation
(MA) among the experimental activities
that are lawful during the patent term.
Several recent decisions of the Court of
Milan have now applied the provision in
question and have deemed that also the MA
request per se, and not only the experimental
activities whose goal is the preparation of
such request (e.g. bioequivalence studies),
lies outside the activities otherwise
constituting patent infringement.
Before discussing the decisions of the Court
of Milan, it is worth pointing out that the
same issue had been previously addressed also
by the Court of Rome, which in a decision of
2006 had considered that the presentation of
an MA request for a pharmaceutical product
does not fall within the exception provided by
article 68(1) of the IPC, but rather “constitutes
an activity that is premonitory to the marketing of
the same and as such intends to gain that
‘economic utility’ which is mentioned in case law
of the Supreme Court…”. The decision in
question, issued in the framework of
summary proceedings, was then followed by
the preparation of a Court Expert report on
the technical merits of the case, followed in
turn by a new Court decision in which, no
longer dealing with the matter of interest, the
Court considered that the enforced patent was
partially invalid, and was not infringed in its
valid part. Following this finding on the
“technical” aspects of the matter, the judge
denied the preliminary injunction, despite
what the same judge had previously held with
regard to the request for an MA. The
preliminary injunction was then denied also
during the ensuing appeal proceedings, again
on the basis of “technical” considerations and
without reviving the MA aspect.
As already stated, in several recent cases
the Court of Milan has now adopted a
position diametrically opposite to that of the
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MODIANO
Court of Rome.
In particular, in a decision issued in 2009 in
a lawsuit on the merits, the Court of Milan
considered that the simple filing of a request
for an MA of a medicinal product “does not form
proof of an infringing activity, be it even of
preparation of such activity”. In this case, the
judges in fact expressed the opinion that the
MA request amounts only to an administrative
activity, which cannot be considered as an act
carried out in preparation for a commercial
activity, especially when there is no proof that
the alleged infringer is actually producing,
storing or marketing the product covered by
the MA. It is worth emphasising that in this
decision the Court refers to article 68(1) of the
IPC, precisely in the part relating to the
experimental activity, as a provision which in
the opinion of the same judges “seems to justify
the activity in question” – as if to say that this
article of the IPC includes the MA request,
even if acknowledged as a request of an
administrative type, among the lawful
“experimental” activities.
The decision in question is a first instance
decision, and is therefore susceptible to
revision on appeal.
Nevertheless, the same position has already
been adopted by the Court of Milan in two
even more recent decisions of 2009 issued
during appeals lying from requests for
preliminary injunctions. Both decisions have
confirmed what had been held by the judge
during the corresponding first instance
preliminary injunction proceedings. Both
decisions regarded the same patent, enforced
in two different but virtually simultaneous
preliminary injunction proceedings started
against two different generic companies. In
both cases, the preliminary injunction was
denied, both in the first instance and on
appeal, due to the lack of an imminent danger
otherwise resulting in the delay of the
injunction (so-called periculum in mora) despite
the fact that in both cases the generic MA
had already been granted when the
preliminary injunctions were first requested.
In particular, in the second of these two
appeal decisions, which dwells more on the
topic of MAs though confirming what was
expressed also in the first of these decisions,
the appeal judges considered that, on the
basis of the provisions contained in article
68(1) of the IPC, “it does not seem to be
permitted to distinguish between an experimental
activity, which is considered legal, and the
presentation of the MA request – which requires
and presupposes that experimental activity – to be
considered instead illegal”. In support of the
K
position adopted in their decision, the appeal
judges also referred to the Community
directives relating to medicinal products,
which allow third parties to perform studies,
experiments and the “consequential practical
requirements” during the life of the patent. The
appeal judges thus interpreted the
consequential practical requirements as
essentially relating to the preparations that
are necessary to obtain the generic MA,
considering therefore that the request of a
generic MA does not, per se, represent an act
of patent infringement.
The appeal judges then noted the absence
of the so-called periculum in mora,
considering that the simple request of a
generic MA is not a “fact suitable to constitute
valid proof of the imminent violation required
by the Code”, particularly in the absence of
other activities such as the actual marketing
or premonitory activity such as the
purchase of raw materials, the packaging or
stocking of the products or promotional or
informative activity in the healthcare field.
In light of this recent case law, the
current trend of the Court of Milan appears
to be that of considering that the mere
request of an MA, generic or in any event
related to a product covered by a third party
patent, does not constitute per se neither an
infringing activity nor a premonitory
activity giving rise to the so-called
periculum in mora and thereby justifying
the ordering of a preliminary injunction.
It remains to be seen whether this trend
will be confirmed in the future and whether
it will be adopted by the specialised IP
sections of other Italian Courts. K
AUTHOR
Micaela N. Modiano is a
Partner at MODIANO IP
Law. She is a qualified
European and Italian patent
attorney. Micaela holds a BSc
in Chemistry from Harvard University, USA
and an MSc in IP Law from Queen Mary and
Westfield's College in London, UK. Micaela is
specialized in the biochemical and
pharmaceutical fields and her practice focuses
on European patent prosecution and
oppositions as well as on litigation and opinion
work, including SPCs. Micaela is a member of
the EPI Council (Council of the bar association
of EP attorneys) and of the European Patent
Practice Committee. She was one of the
official lecturers appointed by the EPO and EPI
for the training program on the new European
Patent Convention EPC 2000, which entered
into force in December 2007.
| 27
PATENT LITIGATION
The evolving
landscape of patent
litigation strategies
in Finland
Borenius & Kemppinen’s Ben Rapinoja on the Merck v ratiopharm
patent infringement case in Finland and its wider implications
T
he amount of patent infringement
litigation and related injunction
proceedings in Finland has risen
substantially from the beginning of this
decade. The trend is most clear in
pharmaceuticals and life science sectors, but
also in other industry sectors – for example
electronics patent infringement cases are
becoming more and more common. Despite
the volume of the disputes the number of
decided patent cases remains relatively small
as many of the cases last long and are
settled outside the courts before the court
brings in its decision. There are still only a
few recent Supreme Court precedents in the
field of patent law in Finland. Most of the
cases date back to the 1980’s and before.
In Finland most patent disputes fought in
courts today concern the pharmaceutical
and life science sector. However, one can
also observe increasing litigation sensitivity
in the fields of electronics and ICT. This can
be explained by the strong mobile handset
driven technology sector in Finland headed
by the market leader Nokia. Nokia’s globally
outstanding position within mobile
networking technology puts it into a focal
point of high-tech development in several
sectors. New innovations in batteries,
displays, interfaces and wireless
communications are in dynamic evolvement.
In other fields, the litigation sensitivity in
the pharmaceutical field can be explained by
the fierce competition between the originators
and generic companies recently amplified by
certain important reforms of the Finnish
medical reimbursement system. Also,
historical background concerning a bar to
product patent protection for pharmaceuticals
and foodstuff has still an impact in the
Finnish business environment. Prior to 1995
a product protection for pharmaceuticals was
not available. Therefore as national
characteristics, there are patents, so-called
analogy method patents, that have been
granted for a process for the manufacture of a
new product. Many of the global blockbuster
medicines in Finland are covered by analogy
method patents, which makes Finland an
interesting market for generic competition.
The above mentioned industry specific
characteristics naturally have an impact on
the litigation strategy as well. The focus of
this article is to depict some of the most
prominent trends in patent litigation in
Finland today. As most of the patent
disputes concern the life science sector, this
article outlines some of the strategic choices
particularly present in the sector.
In general, the pharmaceutical field has
shown an increase in the use of preliminary
injunctions by the originators to block or
hinder generics’ entrance to the market. The
generic manufacturers themselves will also
often distort a declaratory non-infringement
action against the patent holder to avoid the
later possible infringement actions as well as
to secure the business activities in relation to
certain innovation and/or product.
Alongside the named developments
the ever ambiguous question of the scope of
the protection afforded for the
pharmaceutical products and processes is
gradually getting clarified.
Interpretation of the scope of
patent protection
The interpretation of the scope of patent
protection and the standing of equivalence
interpretation was clarified in a recent patent
litigation case Merck v ratiopharm. The Case in
the District Court of Helsinki concerned a
non-infringement and the adverse party’s
infringement action relating to the active
www.ipworld.com
PATENT LITIGATION
pharmaceutical ingredient losartan. The
patent-in-suit was an analogy process patent
meaning that the protection was provided for
the new product, or losartan, created through
the use of the patented process. The plaintiff
considered that ratiopharm filed an
infringement action against ratiopharm for an
alleged infringement of its patent and its
respective supplementary protection
certificate (SPC) losartan. Soon after, the
defendant responded with a declaratory noninfringement action.
In its reasoning the court significantly took
a stand on the scope of protection of the
analogy process patent building its
argumentation on the interpretation of the
Finnish Patents Act and its preparatory work
in light of article 69 of the European Patent
Convention and its Interpretation Protocol.
Under Section 39 of the Patents Act the scope
of patent protection is determined by the
claims and in order to understand the claims,
the patent description can be used. The court
stated that it was evident that ratiopharm’s
procedure did not literally infringe the
patent-in-suit but that taking into account the
analogy process nature of the patent it was
necessary to analyse whether the equivalence
interpretation could be used.
According to equivalence interpretation,
the scope of protection covers elements not
only infringing the patent claims literally, but
also the element solving the same technical
problem in a manner essentially equal with a
patent claim. The court stated that even
tough the Finnish legal text does not contain
the term equivalence, the Finnish court
practice shows a tendency to interpret patent
claims more widely than suggested by the
mere literary interpretation. In addition the
court noted that the interpretation of the
EPC and the Finnish Patents Act must be as
consistent as possible.
Referring to the Interpretation Protocol
the court clarified the status of the
equivalency interpretation by stating that it
should be done in an “element-by-element
method.” It found that when determining the
scope of protection of a patent, the premise
must be constituted by the patent claim and
the comparison must be made against each
element of the claim. The purpose of the
evaluation was to define each element of the
claim vis-à-vis the elements of the compared
process. The scope of protection was to be
defined in the overall determination on the
basis of the elements defined to be equivalent.
In its judgement the court further argued
that the elements in the ratiopharm process
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did not solve the problem of manufacturing
losartan in an essentially equivalent manner,
compared with the elements in the patent
claims. For a person skilled in the art, the
ratiopharm process did not constitute an
obvious alternative to the process described
in Merck’s patent. The ratiopharm process
to manufacture losartan was not covered by
the scope of protection of Merck’s patent
and thus did not infringe the patent.
This case illustrates the current
important role of the EPC and its impact on
interpreting the scope of protection in
Finland as the court’s reasoning was greatly
based on the interpretation of EPC and on
the overall determination. In addition the
decision confirmed that by evoking the
TRIPS agreement the scope of protection
afforded by an analogy process patent could
no be extended. In addition invoking
pioneer nature of the original invention
would also seem to be a weak argument
before the District Court of Helsinki.
Remarks on precautionary measures
As already mentioned above, interesting
developments have been seen in relation to
the use of precautionary measures as well. As
in other patent litigation, most of the
precautionary measure decisions concern the
pharmaceutical sector. While preliminary
injunction are largely deployed by the
originators there is still to date no established
praxis concerning the prerequisites for
granting an injunction. However, observing
the Helsinki District Court and the Helsinki
Court of Appeal practice under the past
decade it seems that the conditions for
obtaining a preliminary injunction are very
strict. The applications for preliminary
injunctions have almost without exception
been denied. Nevertheless, in very recent
times the courts seem to have changed their
view and in the future the attitude might be
much more pro patent-holder.
In order for a preliminary injunction to be
granted, certain basic requirements must be
fulfilled. The Finnish courts tend to follow a
three step assessment model. Firstly, the
applicant must establish the probability that
defendant’s product or process infringes
applicant’s exclusive right (prerequisite of
claim). In practice the applicant must produce
evidence that the infringement is more
probable than it is non-existence. Secondly the
applicant must prove that there is danger that
the opposing party by some manner hinders
or undermines the realisation of the patent
holder’s exclusive right or decreases
K
essentially its value or significance
(prerequisite of danger). In the third phase the
court assesses the conflicting interests of the
parties by weighing the interests and their
significance. Weighing the conflicting
interests is based on an overall assessment. In
addition the court must become convinced
that granting precautionary measure does not
cause significant harm to the defendant. In
addition it should be kept in mind that the
burden of proof is on the applicant’s side and
that the reversed burden of proof concerning
medicinal products under article 57a of the
Patent Act should not be applied to
precautionary measures according to most
recent Court of Appeals rulings.
In the process of weighing the parties’
interests certain issues are deemed important.
The fact that the defendant has issued a noninfringement action usually has an impact to
the assessment of the application. Also the
applicant’s delaying might have a negative
impact to the outcome. This was sharply
proven by the recent case of Janssen-Cilag Oy v
ratiopharm GmbH (8 May 2009, Decision no
15228, T 08/38845). What was noteworthy in
the case was that the District Court had found
that the probability of the infringement was
sufficiently established. The District Court
rejected the application, however, due to the
applicant’s delaying. The application for
preliminary injunction was posted only once
defendant’s allegedly infringing product had
already been marketed in Finland for a period
of two years and the applicant had become
aware of this already a year and a half earlier.
The case concretely proved how applicant’s
passiveness can lead to a loss of right. K
AUTHOR
Ben Rapinoja is a wellknown patent and IP litigator
in Finland and heading B&K’s
experienced IP Litigation and
Life Sciences &
Pharmaceuticals practices. Ben has particular
experience in the field of patents and
trademarks but his contentious practice covers
also many other areas of intellectual property,
marketing law and regulatory affairs as well as
disputes and arbitration proceedings related to
commercial contracts, licence agreements and
technology transactions.
Ben advises on business law related questions
and in commercial contracts and corporate
transactions with particular emphasis on
pharmaceutical and high-tech industries. Ben is
one of the leading legal experts in Finland in
the life sciences and pharmaceutical sectors.
Ben has been a B&K partner since 2006.
| 29
K GOODRICH RIQUELME Y ASOCIADOS
PATENT LITIGATION
Clinical trials for
obtaining marketing
authorisation, for
generic pharmaceutical
products in Mexico
Satoshi Yoshiki of Goodrich Riquelme y Asociados discusses the
process for getting generic drugs to the market in Mexico
T
o manufacture and sell a
pharmaceutical product in Mexico,
the manufacturer must first obtain a
marketing authorisation from the Federal
Commission for Protection against Sanitary
Risks, COFEPRIS, which is the authority in
charge of granting or rejecting the approval
for medical devices; pharmaceuticals,
complementary medicines, nutritional &
sports supplements, cosmetics, toiletries and
herbal products.
Mexican Health Law and its Regulations
related to Consumable Goods, in connection
with Mexican Industrial Property Law and
its Regulations, provide the rules to obtain
the authorisation for manufacturing and
selling pharmaceutical products. The relevant
regulation provides specific procedures to
obtain this authorisation, including clinical
tests and trials to prove that the product is
safe and effective, reviewing chemistry,
preclinical and clinical tests, providing
technical documentation, product labelling
and advertising, and submitting dossiers.
Manufacturers of generic pharmaceutical
products may obtain the marketing
authorisation, if they can show that the
generic version is bioequivalent to an
approved medicinal product, but the generic
manufacturer or seller could be liable for
patent infringement if the clinical test and
trials on a patented product are made before
the expiration of the patent.
Mexican Industrial Property Law,
provides traditional exemptions to patent
infringement for non-commercial research,
in the private or academic areas, performing
scientific or technological research activities
for purely experimental, testing or
educational purposes, as follows:
i) A third party who privately or for
academic and non-commercial purposes,
carries out research activities for
Accordingly, third
“
parties are allowed to
perform experiments
of pharmaceutical
inventions and may
request for the
marketing
authorisation only
within three years
before the expiration
of the patent, so that
it is ready to enter the
market as soon as the
patent has expired
”
experimental, testing or educational
purposes and manufactures or uses a
product or an identical process to the
patented one.
www.ipworld.com
K GOODRICH RIQUELME Y ASOCIADOS
PATENT LITIGATION
Manufacturers of generic pharmaceutical products may obtain the
“
marketing authorisation, if they can show that the generic version is
bioequivalent to an approved medicinal product, but the generic manufacturer
or seller could be liable for patent infringement if the clinical test and trials on a
patented product are made before the expiration of the patent
”
ii) Anyone, who markets, acquires or uses a
patented product or the product
obtained by means of a patented
process, after the product has been
lawfully placed on the market.
iii) Anyone who, prior to the filing date of
the patent application or, where
applicable, the recognised priority date,
uses the patented process, manufactures
the patented product or undertakes the
necessary preparations for such use or
manufacture; and
iv) A third party who, in the case of patents
relating to products consisting of living
matter, uses, brings into circulation or
markets the patented products for
purposes other than multiplication or
propagation, after said products have
been lawfully placed on the market by
the owner of the patent or by a licensee.
Also, article 167 Bis of Regulations on
Health-Related Consumable Goods provides
the so-called “Bolar exception”, for
pharmaceutical products which limits patent
rights enforcement against any third party
undertaking studies, tests, or experimental
production of patented medication, the
substance or active ingredient protected by
a patent, excluding patents protecting the
process of producing the pharmaceutical
compound or the pharmaceutical
composition/formulation containing the
pharmaceutical compound.
Article 167 Bis states that an applicant for
registration covering an allopathic medicinal
product must attach to the application
documentation showing that it is the owner
or registered licensee of the patent for the
substance or active ingredient thereof.
Alternatively, and in accordance with the
list of products contained in Article 47bis of
the Industrial Property Regulations, the
applicant may state under oath that it has
complied with the applicable provisions of
patent law regarding the substance or active
ingredient that is the subject of the
application. In this case, the Mexican Health
Office will immediately request the technical
assistance of the Mexican Institute of
Industrial Property to determine, within the
scope of its authority, within ten business days
of the reception of the request, if any valid
patent rights are infringed. If the Mexican
Institute of Industrial Property concludes that
there are subsisting patents covering the
substance or active ingredient not owned by
or licensed to the applicant, it will so inform
the Mexican Health Office to notify the
applicant. The applicant must show that it is
either the owner of the patent or a registered
licensee, within such period set by the
Mexican Health Office, of no less than five
business days counted from the effective date
of the notice. If the applicant does not remedy
the omission, the Mexican Health Office shall
reject the application and inform the applicant
of the basis for its determination, so that the
issue may be resolved by the competent
authority. The lack of a response by the
Mexican Institute of Industrial Property
within the period noted above shall be
construed as favourable to the applicant.
Notwithstanding the provisions of the
previous paragraphs, it shall be possible to
request registration of a generic with respect
to a patented medication product, substance or
active ingredient, for the purpose of
undertaking studies, tests, or experimental
production of the same, within three years
before the expiration of the patent. In such a
case, the sanitary registration shall be granted
only until the expiration of the patent.
Accordingly, third parties are allowed to
perform experiments of pharmaceutical
inventions and may request for the
marketing authorisation only within three
years before the expiration of the patent, so
that it is ready to enter the market as soon
as the patent has expired.
The three year period only relates to the
patented medication, substance or active
ingredient excluding patents protecting the
process of producing the pharmaceutical
compound or the pharmaceutical
composition/formulation containing the
pharmaceutical compound.
This exemption provided in article 167
Bis of Regulations on Health-Related
Consumable Goods includes carrying out of
chemical and biological processes suitable
for manufacturing, disposal or storing active
substances, including the manufacture or
the import of batches in quantities sufficient
to provide material for preparing
investigative batches of the pharmaceutical
product and to validate the processes to the
satisfaction of the COFEPRIS.
Also, the exemption covers the
development, testing and use of the associated
analytical techniques; the development of the
final pharmaceutical composition and
manufacturing processes for the
pharmaceutical product to be marketed,
including the making, disposal or keeping or
import of the product, in the sufficient amount
to conduct the necessary pre-clinical tests,
clinical and bioavailability trials and stability
studies of the pharmaceutical product and to
validate the processes to the satisfaction of the
COFEPRIS, and naturally, the manufacture of
samples of the active substances and the
finished product which would be provided to
the COFEPRIS. K
AUTHOR
Satoshi Yoshiki is a 2004
attorney graduate of the
Universidad Iberoamericana
(Mexico City). He is
presently associate of the
Intellectual Property area of
Goodrich Riquelme y Asociados. He is
member of the Mexican Bar Association
(IBA) and the Mexican Association for the
Protection of Industrial Property Law.
www.ipworld.com
PATENT LITIGATION
KHAITAN & CO
K
Litigation in a changing
patent regime in India
Jose Madan, Executive Director and Ashish Gupta, Senior
Associate at Khaitan & Co, explain recent changes in patent law
in India
A
lthough the Intellectual Property
system is very old in India, ever
since India signed the WTO
Agreement in 1994, there were several
landmark changes in the statutes relating
to IP designed to bring the country in
line with the stipulations in the
TRIPS Agreement.
Sections relating to the Intellectual
Property Appellate Board (IPAB) were
introduced to deal with appeals/decisions of
the Controller of Patents/Government of
India in an economical and speedy manner,
and courts have pronounced certain
landmark decisions on IP matters. On the
whole, the IP system in India is quite
efficient and effective both in terms of
procurement and enforcement.
Jurisdiction and various patent authorities and courts
Sl.
Court/
No. Authority
1. Supreme Court
www.ipworld.com
2.
High Court
3.
District Court
4.
Intellectual
Property
Appellate Board
(IPAB)
5.
Controller
Jurisdiction
a. Appeals from the High Court in infringement matters.
b. Writ Jurisdiction under Art. 32 of the Constitution (violation of fundamental
rights)
c. Special Leave Petitions and Civil Appeals over patent matters in general.
a. Matters with respect to revocation of patents when there is a counterclaim in a suit for infringement.
b. Proceedings pertaining to rectification of register already pending in the
High Court.
c. The High Courts of Delhi, Bombay (in Mumbai), Calcutta (in Kolkata) and
Madras (in Chennai) have original jurisdiction with regard to infringement
of patents.
d. Appeals – Appeals are preferred to the High Court (single judge) from an
order of the District Court. Thereafter, appeal to a larger Bench of the
High Court.
e. Writ Jurisdiction – A party aggrieved by the decision of the IPAB may file a
writ petition.
Infringement suits – A suit for infringement shall not be instituted in any court
inferior to a District Court having jurisdiction to try the suit, except in cases
where (i) where the High Courts has original jurisdiction to try the suit and (ii)
where there are counter-claims for revocation of the patent in which case,
the suit along with the counter-claim shall be transferred to the High Court
for decision.
a. Appeals – Appeals against the decision or order of the Controller in
specific matters. However, there is no appeal from a decision of the
Controller in a pre-grant opposition.
b. All cases pertaining to:
i. revocation of patents other than on a counter-claim in a suit for
infringement
ii. rectification of registers other than those pending in a High Court.
a. Pre – Grant Opposition – Where an application for a patent has been
published but a patent has not been granted, “any person” may, in writing
represent by way of opposition to the Controller against the grant of any
patent certain grounds.
b. Post – Grant Opposition – Any “person interested” can file notice of
opposition anytime after the grant of patent but before the expiry of a
period of one year from the date of publication of grant of a patent in the
Patent Office Journal. The post – grant opposition is decided by an
Opposition Board followed by a hearing and a reasoned decision is issued
by the Controller.
c. Various other matters enlisted under the Patents Act.
| 33
PATENT LITIGATION
Proceedings before the controller of
patents, the intellectual property
appellate board and the courts
Opposition proceedings
Opposition proceedings now consist of
two stages – the pre-grant oppositions and
post-grant oppositions before the
Controller of Patents.
In case of pre-grant opposition, the time
for filing a representation for opposition is
anytime before the grant or refusal to grant
and after the publication of the application,
whereas the time limit for filing a notice of
opposition for a post-grant opposition is one
year from the date of publication of grant.
Also the decision of the Controller on postgrant opposition can be appealed at the
IPAB, but a pre-grant opposition decision
cannot be appealed against in the same
manner. Further while a pre-grant
opposition can be filed by any person, a post
grant opposition can only be filed by a
“person interested”.
The amendments in the Patents Act have
led to an increase in the number of
oppositions being filed, particularly by
generic manufacturers of pharmaceutical
products challenging the patents being
conferred under the newly ushered product
patents regime.
Briefly stated, some of the grounds on
which opposition can be made include:
• Invention obtained wrongfully;
• Prior claiming;
• The subject matter of the invention is
non-patentable;
• Lack of novelty and non-obviousness;
• Anticipation by prior publication, prior use
or public knowledge in India;
• Non-disclosure of the source of biological
material in the specification; and
• The invention is anticipated by virtue of
being part of the traditional knowledge
in India.
Revocation of patents
In addition to the post-grant opposition
proceedings enumerated above, there are
revocation procedures against the patentee.
Except in case of counter-claim in suit of
infringement the revocation proceedings are
initiated before the IPAB. In cases of nonworking, the revocation proceedings may be
initiated before the Controller of Patents.
Sec. 64 of the Patents Act enumerates the
grounds which can be invoked in the
revocation of a patent in a proceeding before
the Controller and the IPAB. The following
are the grounds (in broad terms)1:
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KHAITAN & CO
• Anticipation, obviousness, prior claiming,
prior publication, prior use or public
knowledge in India;
• Wrongful obtaining;
• Insufficiency of disclosure in specification.
• Non-compliance with procedural
requirements,
• Statutory bars on patentability.
Appeals
In the abovementioned case, the court also
explained the appellate procedure to be
followed in opposition proceedings. It
stated: “The Legislature intended to provide
for two types of scrutiny followed by one
statutory appeal to the Appellate Board
against post-grant proceedings only and not
against pre-grant proceedings.
Every appeal against the decision of the
Controller or the Central Government to
the IPAB must be made within three
months from the date of the decision, order
or direction, as the case may be, or within
such further time as the IPAB may permit.
There is no statutory appeal from the
IPAB to the High Court. Remedy would lie
by way of (i) a Writ Petition to the High
Court alleging violation of a legal right, or
(ii) a Writ Petition to the Supreme Court
alleging violation of Fundamental Rights,
or (iii) a Special Leave Petition to the
Supreme Court.
Decisions of the Central Government
with respect to inventions pertaining to
defence purposes, including directions of
secrecy in respect of such inventions,
revocation if the patent is contrary to or
prejudicial to public interest, or pertains to
atomic energy, are exempted from the
purview of appeal to the IPAB2.
Infringement proceedings
A suit for infringement shall not be
instituted in any court inferior to a District
Court having jurisdiction to try the suit. In
appropriate cases, certain High Courts
exercise original jurisdiction in a suit for
infringement of patents. However, where the
defendant files a counter-claim for
revocation of patent, the suit is transferred
to the High Court for decision. The
procedure followed in such suits is governed
by the provisions of the CPC, 1908.
A suit for infringement can be instituted
only after the patent has been granted.
When a specification has been accepted and
published i.e., during the period when
opposition has been called and is being
decided, the applicants cannot institute a
K
suit for infringement, but damages sustained
due to the infringement, committed during
the period i.e., between the date of
publication of the application and the date of
grant may be claimed in a separate suit for
damages, but not suit for infringement.
When the term of the patent has
expired and infringement occurred during
the term of the patent, a suit can be
instituted during the term or even after
the expiry of the term.
When a patent was obtained wrongfully
by a person and later granted to the true
and first inventor, no suit for infringement
can be instituted for any infringement
occurring before the period of such grant to
the true and first inventor.
The plaintiff is not obliged to give a
notice to the defendant before instituting a
suit. An infringement suit has to be
instituted within three years from the date
of alleged infringement.
The following persons are entitled to sue
by virtue of having a right in the patent:
(1) The patentee
(2) The exclusive licencee if the license is
registered
(3) A compulsory licencee when the
patentee refuses or neglects to institute
proceedings
(4) A licencee other than the above two
licencees can bring an action for
infringement upon the terms of the
contract between the licensor and
licencee
(5) Assignee – can sue only after the
application for registration of the
assignment in his favour has been filed.
If a patent is assigned after the
commencement of action, the assignee is
to be joined as a co-plaintiff. An assignee
cannot sue for infringement which
occurred prior to assignment.
All the grounds which can be used in a
revocation proceeding (enumerated above)
can be invoked by a defendant in a suit
for infringement.
Sec. 107 – A (a) of the Patents Act
incorporates the Bolar provision. It states
that the following acts shall not be
considered as infringement: any act of
making, constructing, using, selling or
importing a patented invention solely for
uses reasonably related to the development
and submission of information required
under any law for the time being in force,
in India, or in a country other than India,
that regulates the manufacture,
| 35
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PATENT LITIGATION
KHAITAN & CO
construction, use, sale or import of
any product.
This provision may be considered to be
a benevolent piece of legislation as the
eventual object is to enable the public to
easily access and afford drugs, particularly
lifesaving drugs. This provision was
extensively discussed in the Bayer v.
Cipla case3.
The “Gillette” plea, which derives its
origin from a landmark English case4, has
been duly accepted by the Indian courts5.
This plea enables its invoker to state that
the invention claimed was not novel and
that the defendant’s use of the patented
product is old and obvious when compared
to the patentee.
The Patents Act states that the
importation of patented products by any
person from a person (who is duly
authorised under the law to produce and
sell or distribute the product) shall
not be considered as an infringement of
patent rights6.
Innocent infringement, though not a
defence to refute liability, will still be a
factor in the determination of whether an
account of profits and damages should be
granted. It is recommended that in order
to avoid one’s patent from being infringed
and the infringer from claiming innocent
infringement, the patentee publishes the
number of the patent and not just the
word or words “patent”, “patented” or any
word or words expressing or implying
that a patent has been obtained for
the article.
The general rules governing the grant of
injunction in so far as patents are concerned
are contained in Sec. 36 to Sec. 42 of the
Specific Relief Act, 1963. Injunctions are of
two kinds – temporary and permanent
(limited to the term of the patent).
Temporary injunctions are to continue until
a specified time, or until the further order of
the court. They may be granted at any
period of a suit, and are regulated by the
Code of Civil Procedure.
The plaintiff is entitled to the remedy of
either damages or account of profits and is
given the option to elect one of them. The
remedy of damages or account of profits
may be granted in addition to the remedy
of injunction.
Where the plaintiff elects only the
remedy of account of profits, he will be
entitled to claim only the profit which was
earned by the defendant by using the
invention of the plaintiff.
Generally, in cases where interlocutory
or temporary injunctions are not granted,
the courts may order the defendants to
maintain correct and regular accounts of
their business in respect of the alleged use
of the patented invention and file
periodically a copy of the accounts (of the
profits that the defendants have received)
Innocent
“
infringement, though
not a defence to
refute liability, will
still be a factor in
the determination of
whether an account
of profits and
damages should
be granted
”
in the court, along with a copy to
the plaintiff.
Seizure, forfeiture or destruction
of infringing goods or materials
and instruments/articles which
are predominantly used in the
creation of infringing goods may be
ordered by the court in addition to the
other reliefs.
Aspects of court litigation in India
with latest trends
In a recent judgment which could have
far-reaching consequences, in the Bajaj v.
TVS7 DTS-i engine dispute, the Supreme
Court observed that suits relating to
patents, trademarks and copyrights remain
pending for a number of years and
litigation between the parties is fought
mainly on temporary injunctions. The
court made a reference to observations
made in M/s. Shree Vardhman Rice & Gen
Mills vs. M/s. Amar Singh Chawalwala8 in
which it was stated that matters dealing
with patents, trademarks and copyrights
ought to be decided at the earliest and that
experience had indicated that litigation in
such matters had invariably been fought
about temporary injunctions with hardly
any final decisions forthcoming on
the same.
The court directed all courts and
tribunals in India to, inter alia, strictly
comply with the provisions set out in
Order XVII Rule 1(2) of the CPC in
matters of patents, trademarks and
copyrights and conduct the hearing on a
day-to-day basis and give the final
judgment within four months from the
date of filing of the suit. The court
directed all the courts and tribunals
dealing with patents, trademarks and
copyrights in the country to carry out the
directions in this order punctually and
faithfully.
It can be said that injunctions form a
crucial part of most patent litigations in
India. The Supreme Court, in the two
abovementioned judgments, has observed,
inter alia, that suits relating to patents,
trademarks and copyrights remain pending
for a number of years and litigation between
the parties is fought mainly on temporary
injunctions. All that can be said is that once
a party is able to establish the essential
ingredients (enumerated below) required for
the grant of an injunction, the courts will
grant the same.
In the context of the Indian patent
regime, cases relating to pharmaceuticals
have arguably attracted more attention
than any other class of patent cases. The
legislature, the courts and the patents
authorities in India have all been of the
view that public health ought not to be
compromised in order to confer monopoly
rights to patentees. These authorities have
upheld the primacy of public health over
the grant of monopoly rights. Some of the
case laws where this practice was followed
are the (i) AIDS patients’ case before the
Madras High Court9 (in which a petition
was filed challenging the grant of a patent
alleging, inter alia, the violation of the
right to life under Art. 21 of the
Constitution), (ii) the Bayer v. Cipla
judgment10 (rejecting the concept of patent
linkage and protecting the working of the
Bolar provision in India so as to encourage
quick access to the post patent markets for
generic medicines), (iii) F.Hoffman LaRoche Ltd. and Anr. V. Cipla Ltd.11 (where
the Court stated that public interest in
greater public access to a life saving drug
will have to outweigh the public interest in
granting an injunction to the patent
holder) and (iv) the Novartis case12
(upholding the constitutionality of Sec. 3
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PATENT LITIGATION
(d) of the Patents Act which prevents
ever-greening).
The 2005 Amendment led to the
introduction of product patents with respect
to food, agricultural and pharmaceutical
products. There have been several
applications made with regard to these
products and several oppositions have been
filed against the grant of the same.
A significant milestone was reached in the
history of patent protection in India when
Roche India Pvt Ltd, the Indian arm of F
Hoffmann La Roche, received the first
product patent to be granted to a life
sciences company in India for its biotech
drug Pegasys.
Courts the world over have recognised the
concept of equivalents. Indian courts, too,
have recognised this concept, albeit through
another name, i.e., the doctrine of ‘pith and
marrow’. The Delhi High Court13 and more
notably, the Division Bench of the Madras
High Court in TVS Motor Company Limited
v. Bajaj Auto Limited14 have recognised the
doctrine of pith and marrow with regard to
patent matters.
Courts in India do not recognise a patent
to be valid only because of a grant or
sealing of a patent by the Controller or
Patents Office. Patentee litigants will have
to establish before a court of law that they
are entitled to a valid patent. In Bishwanath
Prasad Radhey Shyam15, it was held that
there is no presumption in favour of the
validity of a patent by ‘the mere grant or
sealing of the patent’. This is now expressly
provided in Section 13(4) of the Act of
1970. In the recent Hoffman v. Cipla16 case,
the High Court of Delhi held that the
Patent Act does contemplate multiple
challenges to the validity of a patent and
that mere registration of the patent does
not guarantee its resistance to subsequent
challenges. A patent which survives the
pre-grant and post-grant challenges can
still be made vulnerable on grounds
different from the ones raised at
those stages.
This co-relation has been recognised in
several cases, most notably in Bilcare v.
Supreme Industries17, where the court
stated that it is a rule of judicial practice
that a mere challenge at the bar would be
quite sufficient for a refusal of a temporary
injunction if a patent is a new one. This
decision stated that a court is to proceed
upon the presumption of validity of a
patent if it is more than six years old and
there has been actual use. The court
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KHAITAN & CO
(having regard to the facts before it) also
went on to state a patent less than six years
old cannot be said to be sufficiently old and
moreover, tangible grounds were made out
for suspicion of alleged invention based on
evidence rendered by respondents and
therefore an interim injunction could not
be granted.
This principle was also relied upon in the
TVS v. Bajaj18 case before the High Court of
Madras. The court held that in IPR cases,
apart from a prima facie case, balance of
convenience and irreparable injury; the
mere registration of the patent alone would
not be sufficient and the court must look at
the whole case, i.e. the strength of the
case of the plaintiff and the strength of
the defendant.
Despite India being the hub of the global
software industry and in spite of the fact
that there has been considerable
development of patent jurisprudence in
other fields in India, there have been no
significant developments either by way of
court litigation or Patent Office decisions
with respect to software patentability19.
Courts in India generally do not impose
heavy costs in patent cases, unless there
exists a prima facie case meriting such
imposition. One such instance is the
Bayer v. Cipla20 case, where the Delhi High
Court imposed heavy costs, totalling
Rs.675,000 on Bayer, as the Court felt
that it had indulged in speculative and
vexatious litigation and had attempted to
tweak public policy through court
mandated regimes. K
Notes
1. Please refer to Sec. 64 for the entire list of
grounds of revocation.
2. IPAB (Procedure)Rules, 2003 (“Rules”)
3. Bayer Corporation and Ors. v. Cipla, Union of
India (UoI) and Ors., W.P. (C) No. 7833/ 2008
(Delhi High Court): MANU/DE/1756/2009.
4. Gillette Safety Razor Co. v. Anglo-American
Trading Co. Ltd., 30 RPC 465.
5. Hindustan Lever Ltd. v. Godrej Soaps Ltd., AIR
1996 Cal 367; Raviraj Gupta v. Acme Glass
Mosaic Industries, (1994) 56 DLT 673.
6. Sec. 107A.
7. Bajaj Auto Limited v. TVS Motor Company
Limited, Civil Appeal No. 6309 of 2009 (Arising
out of S.L.P. NO. 13933 of 2009).
8. M/s. Shree Vardhman Rice & Gen Mills vs. M/s.
Amar Singh Chawalwala, S.L.P. (C) No. 21594
of 2009.
9. Indian Network for People living with HIV/AIDS
and Others v. Union of India and Others, Writ
10.
11.
12.
13.
14.
15.
16.
17.
18.
19.
20.
K
Petition No. 24904 of 2008 and M.P. Nos. 2 and
3 of 2008: MIPR 2009 (2) 36.
Bayer Corporation and Ors. v. Cipla, Union of
India (UoI) and Ors., W.P. (C) No. 7833/ 2008
(Delhi High Court): MANU/DE/1756/2009.
MIPR2009(2)1.
Novartis AG v. Union of India and Ors., (2007)
4 MLJ 1153.
Raj Prakash v. Mangat Ram Chowhary, AIR 1978
Del 1.
MIPR2009 (2) 139
[1979] 2 SCR 757; approved in F. Hoffman-La
Roche and Anr. v. Cipla Ltd., MIPR 2009 (2) 1 and
Bilcare v. Amartara and Bilcare v. Supreme
Industries, 2007 (34) PTC 444 (Del)
F. Hoffmann-LA Roche Ltd. and Anr. v. Cipla Ltd.,
159(2009)DLT243, MIPR2009(2)1
2007(34) PTC 444 (Del)
MIPR2009(2)139, 2009(40)PTC689(Mad)
Please refer to the blog – Guest Post on
Software Patenting in India, http://spicyipindia.
blogspot.com/search/label/software%20patent.
Supra at 4.
AUTHOR
Jose Madan heads the
Intellectual Property (IP)
practice of the Firm. He is
an IP Professional with well
over three decades of
varied and extensive experience in IP. He has
received practical training in European IP
laws with a reputed German IP law firm.
Prior to joining Khaitan, he was the head and
in charge of the Mumbai office of one of the
oldest and well reputed boutique IP law
firms in India.
Ashish Gupta is a patent
professional having experience
in the field of technology as
well as law. He has been an
invited speaker on several
occasions in academia and
industry on various interdisciplinary topics in
technology law. Mr Gupta has received
advanced training under a leading Intellectual
Property law firm in the US on patenting as well
as licensing issues. He specialises in drafting,
prosecution and oppositions.
The authors would like to thank Mr Ganapathy
Subbiah, Intern at Khaitan & Co for his
research on the topic.
| 37
K PATPOL
PATENT LITIGATION
Patent enforcement
strategies in Poland – a
guide for the uninitiated
Malgorzata Zielinska-Lazarowicz and Jaroslaw Markieta of
Patpol offer a guide to patent litigation in Poland
P
atent infringement matters are
decided by common civil courts in
accordance with general provisions
of the civil proceedings. There are no
“special” patent courts in Poland. Certain
exceptions to the general proceedings are
specified under the Industrial Property
Law of 30 June 2000 as amended in
consequence of implementation into Polish
law of the Directive 2004/48/EC of the
European Parliament and the Council of 29
April 2004 on enforcement of intellectual
property rights. Pursuant to Polish law, no
criminal penalties are available for
infringement of a patent.
In patent infringement cases the parties
may be represented in court by professional
representatives, i.e. attorneys at law, legal
counsels or patent attorneys. A legal entity
may also be represented by its employee.
The only exception is a cassation to the
Supreme Court, which may be brought only
by an attorney at law or a legal counsel.
Pre-trial measures
There is no obligation to undertake any
type of mediation/arbitration prior to
bringing a case before the court, however
conducting negotiations is always
recommended when patent infringement
becomes an issue. According to the general
rule of the civil proceedings, only where
both litigating parties (the patent holder
and the alleged infringer) are enterprises,
the patent holder is obliged to send a cease
and desist letter to the alleged infringer
before initiating the litigation. A cease and
desist letter is a final call to abandon the
infringing practices and satisfy demands of
the patent holder voluntarily. A copy of the
cease and desist letter along with the reply
of the alleged infringer should be attached
to the statement of claim lodged with the
court. The cease and desist letter is
perceived as an evidence of the plaintiff ’s
goodwill to settle the matter amicably. In
practice, alternative means of resolving
patent disputes (arbitration or mediation)
are not commonly used in Poland.
Before filing a lawsuit with the court it is
also advisable to request a preliminary
injunction in order to restrain the alleged
infringer from infringing the patent further.
A preliminary injunction is granted for the
duration of the court proceedings. The
Damages for patent
“infringement
may be
calculated either in
accordance with the
general principles of
Polish law, or be
awarded as an
equivalent of the sum
corresponding to the
licensing royalties
”
request for an interim injunction may be
filed before initiating the court proceedings,
or simultaneously with filing a lawsuit with
the court. If a preliminary injunction is
requested before initiating the court
proceedings, together with a decision on the
preliminary injunction the court will
appoint a maximum two week deadline for
filing a lawsuit. If the lawsuit is not filed
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K PATPOL
PATENT LITIGATION
According to the so-called rule of evidence preclusion, all statements
“
relevant to the case have to be mentioned in the statement of claim, and all
evidence has to be filed to support those statements
”
with the court in due time, the preliminary
injunction will lapse. In order to obtain a
preliminary injunction it is necessary to:
• indicate legal interest in requesting
preliminary injunction (e.g. exclusive
rights of the holder; unlawful practices of
the infringer);
• justify the grounds for filing the request
for injunction, and
• indicate how the injunction should be
effected (e.g. seizure of goods in the
infringer’s warehouse, ban on further
sale, etc.).
infringer agrees on destruction of the
infringing goods detained by the Customs
Office, the patent holder may drop his
further claims relating to the infringement.
However, a simplified procedure set forth
under the Council Regulation (EC) No
1383/2003 to enable destruction of the
infringing goods without the need to
initiate court proceedings, was
implemented into the national law in a
strictly formal way, and requires an explicit
written consent of the infringer for
destruction of infringing goods.
When requesting a preliminary injunction,
the right holder is obliged to prove his
rights with the official documents, as well as
to define precisely the infringer and his
infringing practices. At this stage of the
proceedings it is not required to prove one’s
claims. The patent holder must certify his
patent rights through an official document
and announce that those exclusive rights
have been infringed. Preliminary injunctions
do not aim to satisfy the plaintiff ’s claims,
but in practice they often lead to a court
order requesting the alleged infringer to
stop its activities for the duration of the
court proceedings under threat of
compulsory enforcement of the order. If the
plaintiff loses the lawsuit, or decides to
withdraw from court action before issuing a
decision, the alleged infringer is entitled to
demand compensation for damages arising
from the preliminary injunction.
Another effective way to stop patent
infringers are border measures undertaken
in accordance with the Council Regulation
(EC) No 1383/2003 concerning customs
action against goods suspected on
infringing intellectual property rights, and
measures against goods found to have
infringed such rights. It is important to
mention that border measures do not
substitute for the requirement of initiating
civil court proceedings if the patent
infringement takes place. If the alleged
Claims concerning patent infringement
A patent holder, or any person enjoying
the same status (e.g. exclusive licensee
recorded in the register of patents), whose
patent has been infringed may demand the
following remedies:
• cessation of infringement;
• surrender of unlawfully obtained profits;
• compensation for damages if the
infringement was deliberate.
At the plaintiff ’s request, the court may
order announcement to the public of the
court decision on infringement, either in
whole or in part. The court may also decide
what further action is taken with regard to
the infringing products and/or other means
and materials used for manufacturing them.
In particular, the court may order to
withdraw the infringing products from the
market and to destroy them.
Damages for patent infringement may be
calculated either in accordance with the
general principles of Polish law, or be
awarded as an equivalent of the sum
corresponding to the licensing royalties, or
other suitable remuneration which would be
due to the patent holder. According to the
general rules, compensation for damages
shall include the actual lost earnings, as
well as any profits, which the patent holder
would have achieved, should the
infringement have not occurred. The
plaintiff has to prove the direct causal
relationship between the damage that he has
suffered and the infringing activities and
that the monetary remedies have a
compensatory rather than punitive
character. Under Polish law there are no
punitive damages for patent infringement.
Claims for patent infringement shall be
enforceable after the grant of a patent.
Where the infringer has not acted in bad
faith, claims for infringement of a patent
shall be enforceable in respect of the
period following the date of publication by
the Patent Office of a patent application. If
the infringer is earlier notified by the
holder about the filing of a patent
application, claims are enforceable from
the date of notice.
The period of raising claims for patent
infringement shall last three years. The
period concerned shall run, separately in
respect of each individual infringement,
from the date where the right holder has
learned about the infringement of his patent
and the actions of the infringer. However, in
any case, claims can no longer be raised
after the passing of five years from the date
on which the infringement has occurred.
Patent infringement proceedings in
Poland may continue from approximately
one up to two years until issuance of a
decision in first instance, depending on the
complexity of the case, strategy undertaken
by the parties, and the number of cases
pending examination before the court.
However, there is no general rule and in
some cases it may take longer to complete
the proceedings. A general strategy to
divide the proceedings into two phases,
namely the first focused on proving
infringement (secured by preliminary
measures) and the second related to proving
the scale of damages and potential
compensation, makes the proceedings less
complicated for the courts, and allows the
plaintiff to obtain a satisfactory court
decision earlier.
www.ipworld.com
PATENT LITIGATION
Evidentiary proceedings
The court proceedings related to
enforcement of patent rights in Poland are
regulated by strict formal requirements. In
general, it rests with the plaintiff to
submit all the relevant evidentiary
materials to prove that the infringement
has taken place. According to the so-called
rule of evidence preclusion, all statements
relevant to the case have to be mentioned
in the statement of claim, and all evidence
has to be filed to support those statements.
It is generally not allowed to submit
further evidence once the proceedings have
commenced. The plaintiff is allowed to
submit further evidence during the course
of the court proceedings only when the
PATPOL
be chosen from among registered Polish
patent attorneys, or any other highqualified specialists in the relevant field.
The court is also entitled to ask a scientific
institute to conduct research, or provide an
expert’s opinion. The expert’s opinion is
usually requested in writing. The expert
may be further examined by the court at
the hearing to verify his opinion. The role
of the expert is to explain all technical
aspects of the invention and the allegedly
infringing products/method. In particular,
experts may be asked to compare the
invention covered by the patent with the
infringing product, or other infringing
activities of the defendant, so that the
court is able to assess whether the acts of
K
said that the more complex and
sophisticated the patent, the more difficult
it may be to enforce.
The assessment of infringement is the
court’s domain, but in practice the court
relies on the opinion of expert witnesses.
Pre-trial discovery and mechanisms for
obtaining evidence from the opposing party,
or from third parties, were introduced to the
law on industrial property as a result of
adaptation of Polish law to the
aforementioned Enforcement Directive.
Accordingly, a patent owner may demand
that the court should oblige the defendant,
or a third party, to provide information
regarding in particular the following:
• the origin of the infringing goods;
Pre-trial discovery and mechanisms for obtaining evidence from the
“
opposing party, or from third parties, were introduced to the law on
industrial property as a result of adaptation of Polish law to the
aforementioned Enforcement Directive
”
evidence is unlikely to have been known at
the moment of bringing the action, or
where the evidence relevant to the case
occurred after the action had been started.
Documents, experts’ opinions, crossexamination of witnesses, testimonies of
parties can be used as evidentiary materials.
Under the Polish civil procedure a witness
testimony refers to the facts of the matter.
Any facts that may be relevant to the
litigation may be subject to witness
testimonies. The party calling a witness is
obliged to define precisely all facts which
are to be testified by that witness. A witness
testifies at the trial. At first, the court (a
judge) may ask a witness general questions
about the case, following that a witness
shall testify by responding to questions
asked by the parties. Each witness testifies
individually. The witnesses, whose
testimonies are in contradiction to each
other, may be confronted by the court.
Court-appointed experts play an
important role in patent litigation in
Poland. The proceedings related to patent
infringement frequently involve experts’
opinions. The judges examining patent
infringement matters usually have no
technical background and often need an
opinion of a person qualified in the
relevant field of technology. An expert may
www.ipworld.com
the alleged infringer fall within the scope
of patent protection.
According to Polish law, particular
emphasis should be placed on clear and
unequivocal wording of patent claims when
assessing the scope of protection of the
patent. However, the strict interpretation of
patent claims is incompatible with the
concept of interpretation of patent
exclusivity set out in the protocol on
interpretation of Article 69 of the European
Patent Convention (EPC). Given that the
EPC is binding in Poland, the practices of
the Polish Patent Office (PPO) and the
courts should be consistent with the
practice set forth under the EPC. In
particular, enforcement of rights to
software patents may be difficult, as the
PPO is reluctant to grant protection to
patents of this kind. Such patents may thus
be more susceptible to invalidation by the
PPO. Pending invalidation proceedings are
frequently quoted by defendants as an
argument to suspend the proceedings
regarding infringement. Another problem
is a high level of specialisation, which the
court does not frequently have, required to
assess the infringement of such patents. It
is also difficult to find an expert specialised
in the relevant field of technology able to
provide an opinion. In general, it can be
• distribution network of the infringing
goods;
• the name and addresses of manufacturers
and suppliers;
• the amount and price of the goods which
have been manufactured, sold or put on
the market.
During the court proceedings the court may
also summon any party to submit any
relevant documents in their possession,
unless the documents contain state secrets.
If any party to the proceedings refers to
trade books, the court may require
submission of these books.
As a rule, Polish courts are not bound by
the opinions and decisions of other courts
which have issued decisions in similar cases.
The exceptions are decisions of the Supreme
Court and the Supreme Administrative Court.
In practice, the opinions and decisions of
other courts concerning similar issues are
frequently taken into consideration and
quoted by courts when examining analogous
cases. Consistent and uniform court rulings
guarantee certainty and reliability of the law.
The Polish courts are not bound by the
reasoning of foreign courts that have tried
similar cases either. However, foreign court
judgments on similar legal problems may be
presented as auxiliary arguments.
| 41
K PATPOL
The costs of the proceedings
It is difficult to predict the level of costs
associated with the infringement
proceedings. The costs depend on the
complexity of the matter and the value of
the subject of litigation. The costs
connected with preparing and lodging
suitable documents, translation, attending
the court hearings by professional
representatives as well as the official fees, all
have to be taken into account.
It is the losing party that is burdened
with the costs of the court proceedings. The
costs of the court proceedings cover the
court fees and the costs of representation.
The costs of representation are limited to
one representative and are calculated in
accordance with the official rates provided
by the law. The losing party may also be
obliged to reimburse the expenses incurred
by the winning party (e.g. the costs of
sworn translation of documents, notarised
copies of documents), provided that the
reimbursement of expenses is requested by
the winning party in due time.
Appeal proceedings
A judgment of the court of first instance
may be subject to an appeal to a court of
second instance by both parties. After the
judgment is announced by the court of
first instance, the parties have seven days
to request service of the written
justification of the judgment. The appeal
should be filed within two weeks from the
date of service on the party of the
judgment with written justification. The
court of second instance examines all
substantive and procedural issues, the
breach of which may provide grounds for
the appeal. In general, the court of appeal
reviews the case within the limits of the
appeal. Only nullity of the appealed court
decision is considered ex officio. It may
take approximately one year before a
decision in the appeal proceedings
is issued.
Under some circumstances explicitly set
forth under the law, a decision of a court of
second instance may be subject to a
cassation filed with the Supreme Court. A
cassation is an extraordinary legal remedy
and may be based only on breach of
substantive law, involving incorrect
interpretation or incorrect application of
substantive law, or breach of procedural
provisions, which might have had relevant
effect on the result of the case. The
cassation should be filed within two months
PATENT LITIGATION
from the date of service of the appealed
judgment upon the interested party.
Means of defence
The alleged infringers have certain means
on hand to defend their position.
One of the most common ways of
delaying a court case by the defendant is
to start litigation proceedings before the
Polish Patent Office (PPO) seeking
invalidation of the patent in question.
Infringement and invalidation cases are
tried in Poland by different authorities.
While the infringement cases are
examined in civil proceedings by civil
courts, the invalidation proceedings are
examined in administrative proceedings by
the Litigation Division of the PPO.
Decisions of the PPO may be subject to
complaints to administrative courts. In
practice, a pending case on validity of a
patent may effectively influence the
infringement proceedings. If the defendant
(alleged infringer) claims invalidity of the
patent at issue in the course of the
infringement proceedings, the civil
court may suspend the infringement
proceedings until the question of patent
validity is cleared. The plaintiff can
respond to such delaying tactics by, for
example, trying to convince the court that
the invalidation claim is inappropriate, or
that it constitutes a misuse of law. The
court is obliged to respect the final
decision on the grant of a patent until the
patent is held valid. Under those
circumstances, it is questionable whether
the court should suspend the infringement
proceedings on the basis of pending
infringement proceedings.
Another way of delaying or even blocking
an infringement case by the alleged
infringer is to anticipate the infringement
claim by filing his own claim in separate
court proceedings for determining that the
alleged infringer is exploiting his own
rights, and consequently does not infringe
third parties’ rights. If the patent holder
does not file its claim in time, the
infringement case will be blocked by statute
until the first case is resolved. One way to
avoid such a situation is to file a preliminary
injunction, or the infringement claim as
soon as possible (after sending a cease and
desist letter first).
Summary
Enforcement of patent rights in Poland
involves significant amount of time and
substantial resources. High dependence of
courts on court-appointed experts in order
to assess whether patent infringement has
taken place or not, results in long-lasting
but frequently ineffective court proceedings.
Even a well prepared strategy of the
plaintiff supported by a technical opinion
that the plaintiff obtains on his own,
together with measurement reports and
convincing argumentation, will be put into a
standard scheme of civil procedure, and
probably examined by a judge that is more
familiar with contractual obligations or
unpaid invoices, rather than patent claims
and IP law in general.
Legal framework for IP law enforcement
in Poland is under heavy criticism both
from patent right holders and IP
practitioners. However, as long as there
are no specialised IP courts in Poland,
visible changes may hardly be expected in
the near future in respect to the way in
which patent infringement matters are
decided by civil courts. K
AUTHORS
Malgorzata ZielinskaLazarowicz has a master’s
of law degree from Warsaw
University, where she also
completed postgraduate
studies in IP and European
law. Since 2008 she has been a patent and
trademark attorney at Patpol focusing on
litigation proceedings and enforcement of
industrial property rights. Mrs ZielinskaLazarowicz specializes in patents, designs and
trademarks. Being a member of the legal
department at Patpol, she also has
experience in rendering professional advice
on combating unfair competition and
copyright issues, as well as EU law.
Jaroslaw Markieta is a
patent attorney at Patpol.
He obtained his technical
education at the Warsaw
University of Technology
having completed with a
degree in electrical
engineering, specialisation in
Robotics. He proceeded with legal studies at
the University of Warsaw focusing on
Industrial Property Law. As a patent attorney
he specialises in patent litigation and
coordination of border detention
programmes in the field of consumer
electronics. He is also involved in patent
prosecution of computer implemented
inventions and disputes with the Polish
Patent Office before Administrative Courts.
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PATENT LITIGATION
VOSSIUS & PARTNER
K
The defence of
compulsory licence
under antitrust law
– an obstacle to
the enforcement
of patents?
Georg Andreas Rauh of Vossius & Partner, analyses the
implications of antitrust laws on patent enforcement in Germany
O
ne of the issues often
controversially discussed in
patent law in Germany within
the last few years is the question whether
a potential patent infringer can defend
himself in patent infringement proceedings
against the patentee’s claim for injunctive
relief by pleading that he is entitled to a
claim for the grant of a licence on
reasonable terms on account of antitrust
standards. As legal basis for this defense
under antitrust law, reference is made both
to Sections 19, 20 GWB [German Act
against Restraints of Competition] as well as
Article 82 of the EC Treaty. The
situations decided by the court rulings so
far are mostly based on the fact that the
patentee wants to enforce a standardrelevant patent, while the patent infringer
pleads that he has no other possibility than
to infringe the claimant’s patent on
account of his standard-abidance and,
therefore, depends on being granted a
license on FRAND (fair, reasonable and
non-discriminatory) terms for
manufacturing and marketing his products.
The discussion has also gathered pace
within the last few years because of the
emergence of so-called patent trolls.
Commonly, the term patent troll is used
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mostly for companies and in individual
cases also for private persons which/who
acquire patents and aim at achieving as
high income returns as possible by outlicensing without intending to ever apply
the technical invention underlying the
patent themselves. In order to enforce
their economic interests and induce third
parties to pay royalties for the technology
underlying the acquired industrial
property rights, such companies, upon
failure of license negotiations, in the end
often resort to the enforcement of their
claim for injunctive relief by legal action
in order to be able to enforce their
oftentimes exaggerated demands in
subsequent license negotiations by means
of the thus obtained title. In such factual
constellations often the question arises
whether the grant of injunctive relief is
reasonable. This is due to the fact that, in
the event that the defendant’s interest in
using the patented technology is not so
high that he yields to the troll’s often
exaggerated royalty demands, the patented
technology is being used by no
undertaking in the end, which is of no use
but ultimately of detriment to technical
progress and the general public. In
Germany this question arises in particular
| 43
K VOSSIUS & PARTNER
because the claim to injunctive relief as
primary characteristic of the sole and
exclusive right conferred by a patent is not
subject to any powerful defences of the
potential patent infringer except for the
restrictions immanent in patent law, such
as, for example, the right based on prior
use or the scientific research privilege.
Other than in the US, where a preliminary
or permanent injunction is generally only
considered when the patentee will suffer
irreparable harm that cannot be
compensated for by monetary damages, the
German legal opinion is that the claim to
injunctive relief is the patentee’s most
fierce weapon against illegal exploitation
of his sole and exclusive right. In this
interplay of contrary interests, the
admission of the defence of license under
antitrust law is of particular significance.
Both under German antitrust law, cf.
Section 20 GWB, as well as according to
European antitrust law in Article 82 of the
EC Treaty, it is forbidden to a dominant
undertaking to directly or indirectly
hinder in an unfair manner another
undertaking in business activities which is
usually open to similar undertakings, as
well as to directly or indirectly treat it
differently from similar undertakings
without any objective justification. Thus, a
dominant undertaking must not
discriminate another undertaking nor
hinder it in an unfair manner in the area of
its dominant position. It should be borne
in mind that the effect of the sole and
exclusive right conferred by an industrial
property right, for example a patent,
naturally cannot entail that an
undertaking upon denial of the grant of
licences to another undertaking readily
discriminates or hinders the latter in an
unfair manner if licences have already been
granted to other undertakings. This is
because it is generally accepted that the
exclusive effect of an industrial property
right and copyright does not constitute an
abuse of a dominant position under
antitrust law. Ultimately, it is the very
characteristic of the sole and exclusive
right that the proprietor of the industrial
property right – for example the patentee
– can decide to exploit the protected
product in a monopolistic manner or can
select any third-party undertakings to
which he grants licences in respect of the
protected technology. Indeed, he does not
have to grant every third party the
permission to use the subject-matter of the
PATENT LITIGATION
protected right. However, it is not
excluded that, in addition to the mere
exclusive effect of, for example, a patent,
there are further circumstances which turn
the refusal of the grant of licences into an
unfair hindrance or inappropriate
discrimination. If this is the case, a
potential patent infringer generally could
use this defence in patent infringement
proceedings against the asserted claims of
a patentee.
Such a license under antitrust law must
not be mistaken for the grant of a
compulsory licence possible under German
patent law according to Section 24 PatG
[German Patent Act]. The latter differs from
a “compulsory” licence under antitrust law
both formally and substantially. Therefore,
great care should be taken when dealing
with the similar concepts in order to avoid
confusions in this field. On account of the
bifurcated court system in patent matters in
Germany, it is not possible in formal terms
to assert a compulsory licence according to
Section 24 PatG as defence in patent
infringement proceedings before it has been
granted since, in terms of the subjectmatter, the decision about its grant comes
under the competence of the Federal Patent
Court and not of the patent infringement
court. In theory, however, it would be
possible that, upon the respective request in
the patent infringement proceedings, the
defence of a necessary compulsory licence
grant – analogically to the defence of nullity
– leads to a stay of the infringement suit. In
terms of its subject-matter, a compulsory
licence under Section 24 PatG depends on
the public interest in its grant, which may
in particular include technical, economic,
socio-political and medical aspects that may
exist irrespective of an abusive exploitation
of the patent right by the patentee. A
“compulsory” licence under antitrust law,
however, does not necessarily depend on the
public interest.
The Federal Patent Court decided on the
question of the defence of compulsory
licence under antitrust law in its decision
Orange-Book-Standard1 in May 2009 after
it left this question open in the past with
respect to the claim for injunctive relief2.
This decision is based on the following
facts:
The plaintiff is the proprietor of a
standard-relevant patent for the production
of data carriers of the type CD-R and CDRW. Due to this standard relevance, the
grant of licences under the patent
constitutes a preceding, independent market
as regards the subject-matter wherein, on
account of his patent, the plaintiff is the sole
provider in this market and thus dominant
within the meaning of Section 19 GWB.
The plaintiff has already granted licences to
numerous undertakings. The defendant
produced data carriers according to the
patent without a licence and subsequently
defended himself in the infringement
proceedings by putting forward that the
claim for injunctive relief was deemed bad
faith since the plaintiff had been obligated
under antitrust law to grant a licence.
In its decision, the Federal Patent Court
makes three fundamental statements, which
are also reflected in the head-notes of the
decision:
(1) In patent infringement proceedings, the
defendant can generally put forward the
defence that the patentee abuses his
dominant position if he refuses to
conclude a patent licence agreement with
the defendant on non-discriminatory and
non-hindering terms.
(2) However, this defence is only justified if
the defendant made to the patentee an
unconditional offer of concluding a
licence agreement based on FRAND
terms and the defendant – as far as he is
already using the subject-matter of the
patent – meets the obligations that the
licence agreement to be concluded
attaches to the use of the licensed
subject-matter.
(3) If the royalties demanded by the patentee
are abusively exaggerated or the patentee
refuses to indicate an amount of the
royalties to be paid, the offer of concluding
a licence agreement is sufficient in which
the licensor is permitted to determine the
assessment of the amount of the royalties
in his fair judgment.
Thus, the court generally allows the
possibility of this defence also against an
asserted claim for injunctive relief, but makes
it conditional on strict exigencies. It is
already clear from the aforementioned
“Standard-Spundfass” decision from the year
2004 that there must be further
circumstances in addition to the sole and
exclusive right conferred by the patent to the
patentee in order to assume an abusive
exploitation of a dominant position in case of
the refusal to grant a licence to (specific) third
parties. Such a circumstance may consist, for
example, in that the patent is relevant for an
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PATENTS I TRADEMARKS I DESIGNS I COPYRIGHT I COMPETITION LAW
MUNICH I BERLIN I BASEL
K VOSSIUS & PARTNER
existing industry standard, wherein it is not
important whether the patentee himself
initiated this standard, assisted therein or
approved of it. When, on account of this
standard, a market participant can put no or
only slightly marketable products on the
market without infringing the patent of the
plaintiff in the infringement proceedings, the
refusal of the conclusion of a licence
agreement can basically represent a behaviour
in conflict with antitrust law.
However, an abusive behaviour comes only
into consideration on two conditions. On the
one hand, the defendant must have made an
unconditional offer of a conclusion of a licence
agreement, which means that he must not
make the offer only on the condition that the
infringement court actually declares the
infringement. This is because the patentee
only has to agree to such offers which he
would also agree to in the ordinary course of
business. The second condition is also based
on this train of thought. Since a licence has
only a future effect so that the patented
subject-matter cannot be used before the
conclusion of a licence agreement and since a
licensee does not only get the entitlement to
use the patented subject-matter but also the
obligation to pay the royalties agreed upon, a
patentee must only accept the defence of a
licence under antitrust law if the one who
already uses the patented subject-matter
behaves in a way as if he had already obtained
the licence on FRAND terms. Therefore
payments of reasonable royalties would
already have to be made.
The second prerequisite, in particular,
naturally encounters practical difficulties
because the potential patent infringer, who
primarily aims at defending himself by stating
that his embodiment does not at all infringe
the patent, would have to pay an oftentimes
not inconsiderable amount of royalties –
although he only auxiliarily relies on the
defence of compulsory licence under antitrust
law. This is, of course, a risk for the defendant
that is not to be underestimated. By way of
example, the problems are mentioned that
could arise in case of the patentee’s insolvency
if it turns out later that the defendant did not
infringe the asserted patent at all. The
Federal Patent Court tries to account for
these practical problems in that it allows that,
instead of being directly paid to the patentee,
these royalties can be deposited by the
defendant at a depository, waiving the right of
revocation. If the patentee is silent on the
amount of the royalties, it is sufficient that the
defendant deposits a reasonable amount.
PATENT LITIGATION
The decision of the Federal Patent Court is
welcome because it presents an answer in a
field absolutely demanding clarification and
practically being extremely relevant.
Furthermore, it is absolutely fair that the one
who – since acting in a discriminatory
manner or a manner unfairly hindering a
third party – abusively exploits a dominant
It is already clear...
“that
there must be
further circumstances
in addition to the
sole and exclusive
right conferred by
the patent to the
patentee in order to
assume an abusive
exploitation of a
dominant position in
case of the refusal to
grant a licence to
third parties
”
position, cannot benefit from his behaviour.
However, for the purpose of an effective
enforcement of industrial property rights, the
criteria established by the Federal Patent
Court should be rated as strict bounds for the
recognition of the defence of a licence under
antitrust law. Thus, it should in particular be
clear that in the “normal” situation of an
infringement of a right, in which no standardrelevant patent is asserted or in which there
are no other circumstances that make the
enforcement of the sole and exclusive right
conferred by a patent look abusive, an
antitrust defence should be excluded from the
very beginning. In these cases, an asserted
defence should further not entail that the
patent infringement proceedings
unnecessarily drag on. The courts are asked
in this connection to pay no inappropriate
attention to inadmissible licence defences.
On account of the above mentioned
relatively great obstacles for asserting the
licence defence as well as on account of the
practical demands forcing the potential
infringer, despite the patentee’s refusal to
grant a license on reasonable terms, to
comply with a kind of fictively concluded
licence agreement by offering a reasonable
royalty payment and depositing reasonable
royalties, the legal enforcement for patentees
from Germany and from abroad should not
face any increased demands in Germany in
future even after the Orange-Book-Standard
decision. The proprietors of standard-relevant
patents, however, should bear in mind the
possibility of an antitrust defence already
prior to a potential commencement of an
action. Especially with respect to patent
trolls, the alternative to raise an antitrust
defence in a patent infringement proceeding is
a welcome defence possibility for potential
defendants in order to go against excessive
royalty requests and to obtain licences based
on FRAND conditions. K
Notes
1. Federal Patent Court decision of May 6, 2009,
GRUR [official journal of the association for the
protection of industrial property and copyright]
2009, 694 et seqq. – Orange-Book-Standard.
2. Cf. Federal Patent Court decision of July 13, 2004,
GRUR 2004, 966, 970 – Standard-Spundfass.
AUTHOR
Georg Andreas Rauh, born
in 1980, studied law at the
Ludwig Maximilian University
in Munich from the years
2000 to 2004. After finishing
his legal clerkship in May 2007, he wrote his
doctoral thesis as a scholarship holder under
the supervision of Prof. Joseph Straus at the
Max Planck Institute of Intellectual Property,
Competition and Tax Law on the subject
“Indirect Patent Infringement – a comparative
view on law,” in which he compared the
German/European law with the law in the US
and Japan. During his legal clerkship, Georg
Andreas Rauh worked in a law firm in Munich
operating on an international basis in the fields
of “intellectual property protection” and
“company law”. During his study and his legal
clerkship, he additionally worked in legal
offices in Madrid and Buenos Aires, specialised
in the field of protection of intellectual
property. Since 2008, Georg Andreas Rauh has
been a member of the Patent Litigation Team
of Vossius & Partner and is a consultant for
national and international clients in all fields of
patent law and protection of intellectual
property. He is author of several judicial
publications and speaks German and Spanish as
a native speaker as well as English.
www.ipworld.com
PATENT LITIGATION
TILLEKE & GIBBINS
K
Patent litigation
in Thailand – the
law as it stands
Areeya Ratanayu and Kawin Kanchanapairoj of Tilleke &
Gibbins International discuss the course of action for patent
litigation in Thailand
S
tatistics show that the number of civil
suits concerning patent infringement
cases tried by the Central Intellectual
Property and International Trade Court
(IP&IT Court), a branch of the Court of
Justice in Thailand responsible for all cases
involving intellectual property rights in
Thailand, have increased in recent years. A
total of 32 cases concerning infringement of
both patents and petty patents have been filed
in 2009, while back in 2002 there were only
nine such cases. How did the number of civil
suits on patent infringement jump from nine
to 32 cases?
We could simply address the question by
referring to the corresponding number of
patent applications filed to the Patent Office,
which has steadily risen each year, and claim
that the higher the number of patents, the
more frequent the commercialisation and
subsequent need to enforce such patent
rights. However, if we look deeper into the
law, we can furnish that another answer may
lie in the provisions of the law which make
civil suits on patent infringement
worthwhile to pursue. In this column, we
will look at what the law and the courts
have to offer for patent owners who wish to
pursue a civil action against an infringer.
The basics: civil v criminal actions
Patent infringement in Thailand is a
criminal offence. The patentee therefore has
the option to file a civil suit or a criminal
action, or both.
Ordinarily the plaintiff, as the patent owner
in a civil suit, requests the court to issue a
permanent injunction against the defendant,
as the infringer, in order to stop the
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infringement and also request damages. The
court grants a permanent injunction on the
finding that the defendant infringed the
plaintiff ’s exclusive rights in the patent and
also grants compensation based on the actual
damage incurred by the plaintiff.
For a patent owner who wants the
infringing activities to cease as soon as
possible, this may seem to be somewhat
ineffective because of the time the litigation
takes. If granted, a permanent injunction
can be enforced when the case is final, which
could be up to three years after the case was
initiated. Furthermore, damages granted by
the court are based on the actual damage,
which is rather difficult to prove in even the
best of jurisdictions enjoying detailed
discovery to assist with such calculations.
To serve the patentees’ goal in abating
infringement, criminal action against the
patent infringer comes into play. By filing a
complaint with the local authorities, a raid
seizure of infringing products is helpful to
obtain the evidence for further prosecution by
the public prosecutor. This method
theoretically seems to be a perfect remedy for
the patentee whose goal is to mitigate the loss
while the civil case is pending with the court.
However, unlike trademark and copyright
infringement, patent infringement normally
involves complicated technical issues
concerning infringement assessment and
patent validity, making it difficult to go
through the investigation stage and request a
search warrant from the court. Therefore, the
remaining options are the court proceedings,
namely to apply for an interim injunction
before the judgment of the Court of First
Instance, in this case the IP&IT Court.
| 47
PATENT LITIGATION
TILLEKE & GIBBINS
K
The court is generally cautious in considering applications and granting
“
preliminary injunctions, as it needs to maintain a balance between the
protection of exclusive rights of the patent owner and prevention of abuse of
exclusive rights in a patent
”
Injunction at the earliest stage
Realising that the continuation of
infringement could cause damage to the
patent owner beyond what could reasonably
be compensated, in 1991 policymakers
amended the Patent Act of 1979 to establish
the right of the patent owner to request the
court to grant injunctions before
commencing a lawsuit against the alleged
patent infringer, commonly known as a
preliminary injunction.
The provision constituting this right in the
Patent Act (Section 77bis) was amended in
1999 to grant the same right to the holder of
a petty patent. The provision created the
condition that the patent holder can request
the court to order the alleged infringer to
stop or refrain from committing such alleged
infringement if there is clear evidence that the
alleged infringer is committing or about to
commit any act of infringement.
To set forth the conditions for granting a
preliminary injunction, the rules on
consideration of an application requesting a
preliminary injunction were also
incorporated in the Rules for Intellectual
Property and International Trade Cases
1997, issued by the Chief Judge of the
IP&IT Court.
Apart from presenting clear evidence to
the court that a patent infringement is being
committed or about to be committed, the
prospective plaintiff needs to induce the
court that (1) there is a reasonable ground
for the application and the filing of the
application, as well as sufficient reasons for
the court to grant such an application, and
(2) the damage incurred by the prospective
plaintiff, as patent owner, cannot be
restituted by monetary measures or any
other form of indemnity, or the prospective
defendant, the alleged infringer, is not in a
position to compensate the prospective
plaintiff for the damage, or it might be
difficult to enforce the judgment against the
prospective defendant.
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Since the establishment of the IP&IT
court in 1997, few applications for
preliminary injunctions for patent
infringement claims have been filed to the
court. The court is generally cautious in
considering applications and granting
preliminary injunctions, as it needs to
maintain a balance between the protection
of exclusive rights of the patent owner and
prevention of abuse of exclusive rights in a
patent. However, by presenting sufficient
evidence and information to the court,
obtaining a preliminary injunction order is
not beyond the reach of the patent owner.
A good example of a preliminary
injunction granted by the IP&IT court is
from the case GSI Group Inc. v. Almin
Enterprise Co., Ltd. et al. Before the plaintiff
initiated a civil suit against the defendants,
the plaintiff filed an application for a
preliminary injunction when the defendants
were displaying their products at an
exhibition in Bangkok, as the products were
believed to infringe the plaintiff ’s patent. In
fulfilling the requirements set by the Patent
Act and the Rules, the plaintiff, or at that
time the prospective plaintiff, brought
forward witnesses and evidence to explain
to the court how the prospective defendants’
products being displayed at the exhibition
infringed the prospective plaintiff ’s patent.
The prospective plaintiff also contended
that two of the prospective defendants were
foreign entities incorporated in another
country and another prospective defendant,
which was a Thai company, could not
compensate the prospective plaintiff on its
own. In the end, the IP&IT court rendered
its decision, which is now the substantive
case law in this regard, as follows:
The alleged infringing product has the
same character as the product protected
under the patent of the applicant; the
applicant thus has the ground to file an
action against the alleged infringers.
Since the alleged infringing product is
being sold at an exhibition by the alleged
infringers, there is a reasonable ground
for the application and sufficient reasons
for the court to grant such application.
Furthermore, two of the alleged
infringers are juristic persons
incorporated in another country and
another alleged infringer is merely a
distributor of the product, although it is
a Thai company; therefore, it might be
difficult to enforce the judgment against
the alleged infringers. The Court hereby
orders the alleged infringers to stop or
refrain from sale, possession for sale, offer
for sale, or import into the country of the
alleged infringing product.
Injunction prior to the judgment
The Civil Procedural Code of Thailand,
which applies to all civil suits heard by the
Court of Justice, allows plaintiffs to apply
for interim injunction at the time of filing
the complaint or any time before the
judgment is announced, and includes those
who file patent infringement suits. The
plaintiff can file an application to restrain
the defendant from repeating or continuing
a patent-infringing act. Much like a
preliminary injunction, the plaintiff would
need to fulfil the requirements for granting
the temporary interim injunction set forth
by the Code.
In order for the court to grant a
temporary injunction, the plaintiff must
prove that (1) its case is prima facie, or in
other words that there is sufficient evidence
of the patent infringement committed by the
defendant, and (2) the defendant intends to
repeat or continue the infringing activities
or the plaintiff has sustained and continues
to sustain injury because of the
infringement committed by the defendant,
as the infringing products are about to be
transferred or the defendant intends to
transfer, sell, or dispose of the infringing
products in order to impede the plaintiff.
| 49
K TILLEKE & GIBBINS
PATENT LITIGATION
Under the law, an aggrieved intellectual property owner can request the
“
order and thereby seize or confiscate the evidence either before or after a
civil suit is filed
”
Anton Piller order
In patent litigation, presentation of strong
evidence proving the infringement, which in
most cases is in the possession of the
alleged infringer, may become difficult or
not possible at a later stage after the suit is
initiated because the evidence may not be in
the condition that the plaintiff can obtain by
itself or the defendant may discontinue the
production or distribution of the infringing
products for any reasons. In such cases, it
would become difficult during the trial for
the plaintiff to prove the infringement
committed by the defendant. A tool which
the plaintiff can use to get though this
difficulty is the very nuclear and stronglyeffective Anton Piller order, as it is
commonly referred to in both common law
and civil jurisdictions.
The Anton Piller order originated from
an English court case, Anton Piller KG v.
Manufacturing Processes Ltd. (1976). Under
such an order, the applicant may enter the
premises of the alleged infringer to search
and inspect for relevant evidence and make
copies or seize such evidence.
Thai law also provides the power to the
court to issue orders similar to an Anton
Piller order. The requirements for issuing
such orders are constituted under the Act
for the Establishment of and Procedure for
Intellectual Property and International
Trade Court 1996 together with the Rules
for Intellectual Property and International
Trade Cases 1997. Under the law, an
aggrieved intellectual property owner can
request the order and thereby seize or
confiscate the evidence either before or after
a civil suit is filed. However, such request
can be made only when the patent owner
also applies for the taking of evidence in
advance. That is, in a situation where the
evidence the patent owner wishes to present
to the court will not be possible or difficult
to adduce after the civil suit is filed or at a
later stage of the civil suit, the patent owner
may request the court to hold a hearing to
take such evidence immediately.
In order to obtain the court’s order to seize
or confiscate the evidence, the applicant must
also pass the requirements for the taking of
evidence in advance. Therefore, the applicant
must prove that (1) if an action has not yet
been instituted, there are grounds on which
the applicant may take an action against the
alleged patent infringer, (2) the evidence he
wishes to rely on in the future will otherwise
be lost or become difficult to adduce, and (3)
there is an emergency situation under which if
the alleged infringer or related party is to be
notified beforehand, the evidence will be
damaged, lost, destroyed, or, for some
reason or other, difficult to be adduced at a
later stage.
In GSI Group Inc. v. Almin Enterprise Co.,
Ltd. et al., apart from the successful
application for preliminary injunction, the
plaintiff also filed an application with the
IP&IT court for an order to seize or
confiscate the evidence upon which the
plaintiff wished to rely.
Since the applicant already persuaded the
court that there were grounds on which the
applicant may take an action against the
alleged patent infringer in order to obtain the
preliminary injunction, the applicant only had
two remaining requirements to prove to the
court. In doing so, the applicant brought
forward a witness to present the fact that after
the exhibition was over, all evidence proving
the infringement would be brought back to
the other country or sold or destroyed.
In such case, the applicant itself could not
obtain the evidence as it would need to place
an order with the alleged infringer in advance
and the alleged infringing product was sold at
a very high price. Based on the facts
presented, the court rendered the decision
that: “As today [the day that the court issued
the order] is the last day of the exhibition,
the evidence proving the infringement may be
lost or difficult to produce at a later stage, and
there is an emergency circumstance. The
court therefore grants the order to seize the
evidence at the exhibition as requested by
the applicant.”
Conclusion
Even though applications for preliminary
injunctions, interim injunctions and Anton
Piller–type orders are not everyday motions
that patent owners or other intellectual
property owners file to the IP&IT court,
and even though obtaining any of these
orders can be exceptionally challenging for
patent owners and attorneys, it is not
impossible for these orders to be
successfully argued and ordered.
As the court would strictly follow the
requirements set by the law for each type of
application, patent owners need to be
mindful and attentive to the evidence and
more creative in gathering the evidence that
may fulfil the requirements. As long as the
gathering and assembling of such evidence
does not constitute a defeating delay, Thai
judges will be accommodating. With more
and more of these applications filed to the
court each year, intellectual property
owners and their local counsel are gaining
more experience in terms of relevancy and
judicial scrutiny. In time, these applications
will, as in other jurisdictions, become more
common and more frequently granted and
used. Consequently, we believe that the
application for these orders has made civil
suits on patent infringement more
worthwhile to pursue. K
AUTHORS
Areeya Ratanayu is an IP
attorney of Tilleke &
Gibbins International Ltd in
Bangkok. She provides legal
advice to a variety of highprofile IPR owners both
locally and internationally and to several
world-leading pharmaceutical companies and
technology-based companies.
Kawin Kanchanapairoj is
an attorney-at-law in the
Intellectual Property
Department of Tilleke &
Gibbins International Ltd.
www.ipworld.com
PATENT LITIGATION
WITHERS & ROGERS
K
Patent Attorney
Litigators – a
personal perspective
Nicholas Wallin, a partner at Withers & Rogers LLP and a
Patent Attorney Litigator, gives an overview of the role of the
litigators certificate in the UK
I
n many countries, a title such as Patent
Attorney Litigator would make no sense
– normally the title patent attorney is
enough. In the US, for example, a patent
attorney is as equally qualified to conduct
patent prosecution before the USPTO as
patent litigation in front of the appropriate
district court. (Whether an individual does
both, however, is another matter that I will
come back to.) Likewise in Germany, Japan,
or Korea – patent attorneys in those
countries often conduct court proceedings
relating to patent validity, with matters
relating to infringement being restricted to
general lawyers. In the UK, however, the
situation is different, and in this article I
will introduce an additional qualification
that some UK patent attorneys hold, known
as a Litigator’s Certificate.
What’s a PAL?
Let’s deal with the basic stuff first – what is
a PAL, how does one become one, and
what’s the difference between a PAL and a
normal patent attorney?
Upon qualifying, patent attorneys in the
UK become a Chartered Patent Attorney,
and may add the letters CPA after their
names. Likewise, on passing the EPO’s
qualifying exam the title European Patent
Attorney is also added, as are the letters
EPA. On obtaining CPA status a UK patent
attorney obtains the right to conduct patent
litigation in one IP court, known as the
Patents County Court (hereafter PCC), but
not in the primary court in which most IP
disputes are conducted, being the Patents
Court, part of the Chancery Division of the
High Court. Moreover, in practice, UK
patent attorney training regimes and the
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qualifying examinations are directed at
prosecution practice, rather than litigation.
Neither does the training for the European
Qualifying Examination (EQE) necessary
for practice before the EPO remedy this the EQE and the training for it are directed
squarely at patent prosecution in front of
the EPO, post-grant litigation matters being
“a matter of National Law”. It would thus be
a bold, newly-qualified UK patent attorney
who attempted to actually exercise his or
her right to litigate in the PCC without any
additional training.
However, such additional training is
available, as is also an entire additional
professional qualification, in the form of a
so-called Litigator’s Certificate. This
certificate entitles the holder to use of the
protected title Patent Attorney Litigator
(PAL), and, more importantly, to conduct
“intellectual property litigation” in both the
High Court and PCC, and on appeal from
either to the Court of Appeal. Intellectual
property litigation is defined as including
“any matter relating to the protection of any
invention, design, technical information, or
trademark, or similar rights, or as to any
matter involving passing-off, or any matter
ancillary thereto”1.
I would stress at this point that this is not
the same as the traditional UK solicitors
qualification for general lawyers. In the UK
solicitors attend law school for one or two
years, and then undertake a two-year course
of training within a firm before qualifying,
at which point they are entitled to practice
and conduct litigation in any area of law. In
practice, individuals then typically specialise
in a particular area, although the ambit of
many solicitors’ areas of practice is typically
| 51
K WITHERS & ROGERS
much wider and varied than that of a patent
attorney. The PAL qualification, on the
other hand, is more specialised in that its
scope is limited to IP. In fact, as I will
discuss later, for my own practice I limit the
scope to patents only, and even then only in
selected technical fields.
The route to obtain the PAL qualification
is not really one that should be undertaken
lightly, as it is long. Without going into too
much detail, it involves undertaking the
prescribed training course, which at present
is the LLM in Intellectual Property
Litigation, run by Nottingham Law School.
This is a part-time course run over two
years that touches upon almost all aspects of
the litigation process, and is taught by
practitioners as well as academics. In
parallel with this course is a black-letter
course known as the Certificate in Patent
Litigation, which covers the actual
procedural rules, as well as legal
methodology and general contract, tort, and
EU law in some detail. The LLM in
particular takes a “learning by doing”
approach, and is full of practical sessions,
often involving role play, whereas the
accompanying certificate course has a series
of closed-book exams at the end of it.
After obtaining the formal qualifications
it is then necessary to undertake six
months of actual litigation-related work,
supervised by someone already qualified to
undertake such litigation (such as a
solicitor, or other patent attorney
litigator). After that the prospective PAL
than applies to CIPA with details of the
training that he has undertaken, and, if the
relevant committee (the so-called
Litigators Accrediting Board (LAB))
agree, voila! High Court here we come!
Of course, I have neglected to mention in
the two short paragraphs above that it takes
about three years to complete the training
from start to finish. And this on top of the
four-to-five-years normally necessary to
qualify as a patent attorney in the first
place. Put another way, you won’t find a
PAL who is still in his or her twenties! At
the present time, as far as I am aware, there
are about 70 UK patent attorneys with the
PAL qualification, although a large number
of these qualified under so-called
“grandfather” provisions that meant they
didn’t need to undertake the LLM and
Certificate courses. The “grandfather”
provisions expired in 2001, however, so
since that time any new PAL needs to have
qualified the hard way2.
PATENT LITIGATION
Practicing as a PAL
I was invited to write this article because I
have actually used my qualification to
conduct patent litigation in all the available
UK courts, as well as in the UKIPO, and the
EPO (of which more later). However, it was
never a case of “let’s litigate anything”.
Instead, in conjunction with my partner and
In deciding what
“
cases to undertake,
we took the view
that we should stick
to what we know
well, as that is
where we would
add most value
for the client
”
fellow PAL at Withers & Rogers LLP, Dave
Croston, and with the mandate of our fellow
partners, we first sat down and thought
very carefully about whether we would
litigate at all, and if so, what sort of cases
we would take.
This moment of reflection was important
for three very important reasons. The first
of these was that we wished and still wish,
as a firm, to maintain good relationships
with the various firms of solicitors with
which we have mutually beneficial
relationships of cross-referrals of client
work. Obviously, undertaking IP litigation
work would put us in competition with
people who had been our friends. The issue
to be resolved (and which we think we have
resolved) was whether there were any types
of cases we could take while still being able
to have a good flow of referrals out to our
solicitor friends.
The second issue is simply one of
resource. Even in a relatively large patent
attorney firm there are simply not the
spare bodies to throw large numbers of
experienced people at matters at short
notice, as is often required in large
litigation cases, and as the large law firms
are able to do. One might say that even a
medium-sized patent attorney firm will
typically have more IP specialists than
even a large law firm (given that everyone
in a patent attorney firm is an IP
specialist), but the fact remains that most
of those people are engaged in day-to-day
patent prosecution, and are almost
invariably extremely busy.
Moreover I have discussed above the
issues of patent attorney training – even if
the people were available, they typically
haven’t had any formal training in litigation
practice.
The third issue is that of expertise. Patent
attorneys practice day-to-day in the area of
patent law, usually in a particular technical
field, or spread of related fields.
For example, in my prosecution practice I
deal day-to-day with validity and
infringement matters in electronics,
telecoms, and software-related subject
matter, general mechanical cases, and in the
field of designs. My fellow PALs at my firm
have experience in different fields. However,
in deciding what cases to undertake, we
took the view that we should stick to what
we know well, as that is where we would
add most value for the client.
The upshot of considering these three
issues is that we developed a detailed
protocol that we follow in deciding
whether to take a contentious matter
forward ourselves, or whether we refer it
out. For example, we will typically only
handle cases in our core areas of expertise
and in particular in areas in which patent
attorneys traditionally practice. In
addition, we will only take cases for which
we think the scope for expansion of the
matter into other non-core areas is small.
Similarly the case has to be of a size (and
hence attendant value) such that we can
handle it within our “contentious practice
group” of three PALs, without requiring
significant support from other members of
the firm. Applying these principles means
that so far we have dealt mostly with
patent revocation actions in the mechanical
field, registered and unregistered design
infringement cases, appeals from various
decisions of the UKIPO, and EPO
oppositions.
Appeals from decisions of UKIPO
I would single out the last two topics for
particular attention, as they are the places
where we see particular benefit for our
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WITHERS & ROGERS
PATENT LITIGATION
clients in having a contentious practice
group within our firm that is able to take a
case all the way from UKIPO to the Court
of Appeal, or which has had significant
litigation experience for EPO purposes.
Traditionally UK patent attorneys have
handled all matters in the UKIPO, and have
had the right to appeal decisions of UKIPO
to the High Court. However, there was no
right for further appeal to the Court of
Appeal; the case had to be handed over to
solicitors. In addition, the appeal
proceedings in the High Court and Court of
Appeal are just that – appeal proceedings.
They rely on the same evidence as used at
first instance, and new evidence can only be
introduced on application and provided
certain conditions are met. However, as
noted, normal patent attorney training in
the UK does not typically cover the
practicalities of how to prepare a case for
use in court. In addition, the (in practice)
relatively relaxed procedure employed in
UKIPO is very forgiving of patent
attorneys who do not present their case and
supporting evidence appropriately.
The same cannot be said for the High
Court or Court of Appeal, however. The
governing procedural rules allow for
draconian case management outcomes up to
and including summary dismissal if the
procedural rules are not met (particularly in
the Court of Appeal). Moreover, proper legal
methodology must be applied. One’s case has
to be clear, with a delineation between facts,
law, and argument, appropriate evidence
relating to the facts relied upon, and a clear
case theory fitting the facts to the law. As
noted above, this evidence needs to be in at
first instance to be guaranteed of being
considered on appeal.
I believe one of the real advantages of
being a practicing PAL is possessing the
additional specialist legal knowledge and
skills to be able to analyse a case properly
and prepare the case papers in the proper
format for use in the UKIPO, but which also
meet the requirements for use in the High
Court and Court of Appeal, if necessary. For
example, for UKIPO hearings we typically
prepare the case bundles to court standards.
One might say that must add to the cost, but
in our experience the opposite is true – one is
not re-inventing the wheel every time, but
instead using tried and tested procedures
that result in a good set of working papers
that everyone can use. After all, the papers
have to be presented somehow, so why not do
it properly?
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Use of evidence in UKIPO and
EPO proceedings
In addition, my experience as a PAL has
shown me the advantages in having the
right evidence to support one’s arguments,
and this is a technique that I have made
extensive use of in proceedings in both the
UKIPO, and the EPO. In particular, I have
used it in cases where either inherent
patentability of an invention has been
challenged, or objections of lack of
inventive step have been received. I have
found that evidence relating to the technical
working of the invention, what effects are
achieved, and what would happen if the
invention was not present have been very
helpful, particularly on appeal to the court.
For example, in the well-known Symbian
case (EWCA/2008/1066) that I handled
regarding software patentability, we put in
technical evidence that was accepted by the
High Court and Court of Appeal relating to
the above issues, and that placed the issue
of whether the invention was technical
beyond argument.
The ability to prepare properly-directed
evidence is also very useful in front of the
EPO, particularly during opposition
proceedings, and Board of Appeal
proceedings. It almost goes without saying
that opposition proceedings are contentious
proceedings, and hence additional case
analysis, management, and preparation
training and skills are of great help there. I
find it astounding that UK national and
EP(UK) patents are litigated in meticulous
detail at great expense, whereas some
patent attorneys treat EPO opposition
proceedings almost as an extension of
prosecution, and spend far too little
time analysing the case and preparing
opposition notices, responses and
arguments. Of course, if one wins at the
EPO (especially as opponent), then a patent
right that covers a market 10 times greater
than any individual European national right
is knocked out. Yet often an EPO
opposition will be conducted with a tenth
(or even less) work than would need to be
devoted to corresponding national
proceedings. Some sort of balance between
these two extremes needs to be struck, and
I believe the additional skills of a PAL
provide such a balance. When selecting a
European Patent Attorney to conduct
opposition proceedings, any savvy
client should definitely consider
instructing a PAL with EPO and national
litigation experience.
K
Future developments
There is one potential future development
in the UK that I think may well be a boon
for PALs, and that is the proposed reforms
of the PCC. A working group comprising
several of the existing patent judges
recently published a document
recommending that PCC procedure be
overhauled to allow for a much more
streamlined procedure, with less evidence
being required, and caps on costs (£50k
max recoverable) and damages recoverable
(£500k max). Interestingly, the procedure
has many commonalities with EPO
opposition procedure, and is lightweight
enough that it addresses many of the
concerns noted above regarding deciding
which cases to take. In our view it is ideal
to be used by PALs on behalf of their
smaller clients.
Conclusions
Being a PAL does not mean that one
undertakes large, multinational patent
litigation – that is the province of large,
multinational law firms, and likely always
will be. However, there is a definite niche of
lower value, smaller cases that are
eminently suitable to be handled by patent
attorney litigators, and particularly if the
proposed PCC changes come off. In
addition, the benefits that are brought to
day-to-day practice before the EPO and
UKIPO are well worth having, and feed
through to better results at lower costs
for clients. K
Notes
1. CIPA Higher Courts Qualification Regulations
2007.
2. Although the regulations allow dual-qualified
solicitor/barrister patent attorneys to obtain a
Litigator’s certificate without undertaking the
prescribed course.
AUTHOR
Nicholas Wallin is a patent
attorney litigator, and a
partner in the Electronics,
Physics, and Computing
group of Withers & Rogers
LLP. Based in London, he
divides his time between patent drafting,
prosecution, and contentious matters.
| 53
COPYRIGHT LITIGATION
The evolving landscape of copyright
litigation in Finland
Kristiina Harenko of Borenius & Kemppinen writes about the
copyright case involving Finland’s traditional Karelian pastries and
the computer programme used to produce them
K
arelian pastries are traditional
Finnish pastries from the Eastern
region of Karelia. These rustic
pies come with rye crust, rice or potato
filling and they are seen as a symbol of the
Finnish Cuisine and are a popular snack
throughout the country. The pastry in
question is characterised by a special
shape, the rye crust is always shaped along
both edges of the pie in order to form a
fine pleat. This “pleating” is considered to
be a fine handicraft tradition mastered
only by the ones skilled in the art.
Naturally today, as these pastries are
produced in masses, the pleating is done
industrially with special machinery
intended for this purpose.
Karelian pastries and “pleating” were the
core issue under dispute in a recent Finnish
Supreme Court copyright case KKO
2008:45.1 The case concerned a machine for
the dispensing and pleating of Karelian
pastries to be used in a Karelian pastry
production line. The machine constituted a
computer programme which was installed
into a piece of logistics equipment which
would monitor mechanical fingers doing the
actual pleating. The logistics equipment and
the computer programme together
constituted a so-called embedded system.
The case dealt essentially with two
questions of legal relevance – whether the
computer programme inside the logistics
equipment was considered to reach the level
of originality required for copyright
protection and whether the person who has
acquired the computer programme was
allowed to alter the computer programme.
Background
In 1985, a bakery company called Eho Oy
(“EHO”) acquired a machine for the
dispensing and pleating of Karelian
pastries to be installed in its Karelian
pastry production line. The machine was
monitored by a computer programme
The court argued
“that
the original
computer programme
installed in the
logistics equipment
formed an essential
and significant part of
the new programme
loaded in the new
computer that
monitors the
functioning of
the machine
”
installed inside a piece of logistics
equipment. In 1995, EHO commissioned a
third company to alter the whole machine
by replacing the logistics equipment with
a more developed, up-dated model. The
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K
The case dealt essentially with two questions of legal relevance – whether
“
the computer programme inside the logistics equipment was considered to
reach the level of originality required for copyright protection and whether
the person who has acquired the computer programme was allowed to alter
the computer programme
”
new logistics equipment required a new
updated computer programme and, hence,
a new, altered programme was installed
inside the new logistics equipment. For the
purpose of creating an altered programme,
the old computer programme was first
downloaded from the equipment.
This programme version and an older
version of the programme were exploited
when programming a new computer
programme. The new program consisted
of certain features from the old
programme and of some alterations
that were necessitated by the new
logistics equipment.
The proceedings
In 2003, the creator of the computer
programme took legal action against EHO
requesting the District Court to declare
that he was an exclusive holder of
copyright of the computer programme
including all the altered versions intended
to be used for dispensing and pleating in a
Karelian pastry production line. The
plaintiff demanded the court to rule that
the new, altered computer programme
commissioned by the EHO and created by
a third company was infringing his
copyright to the computer programme.
What the third company had done under
EHO’s orders was to execute an alteration
in which the pleating and dispensing
equipment working with a hydraulic
system had been replaced with a
servomotor. In conjunction with this, the
logistics equipment type Omron S6
monitoring the pleating equipment was
changed into the logistics equipment type
Omron CQM 1, as the latter was a more
developed model. In addition, a new
altered computer programme was installed
into the new logistics equipment type
Omron CQM 1.
In examining the case, the District
Court first considered the level of
originality of the computer programme.
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Taking into consideration the opinion of
the Copyright Council2 and witness
statements it considered that the plaintiff
had failed to prove that the computer
programme monitoring the machine
including the alterations made until 1990
would be an original and independent
work protected by the Finnish Copyright
Act (404/1961) and, therefore, it did not
examine any further whether an
infringement had occurred.
The plaintiff appealed the decision. The
Court of Appeal stayed the District
Court’s decision, but it found, however,
that the computer programme was a
protected work under the Copyright Act.
As interpreting the requirement of the
level of originality under Section 1(2) of
the Copyright Act, the Court of Appeal
strongly invoked the principles set out in
the Computer Directive (Council Directive
91/250/EEC of 14 May 1991 on the
legal protection of computer programmes)
and interpreted the national
legislation accordingly.
The plaintiff appealed the decision again
and the Supreme Court granted a leave
to appeal.
With regard to the level of originality, the
Supreme Court referred to the Court of
Appeal’s findings and stated them to be
valid in this case. Its reasoning mainly
concentrated on the question of whether the
alteration of the computer programme was
allowed in the case in question.
The Supreme Court first examined the
meaning of the alteration by invoking the
recitals of the Computer Directive.
According to the Computer Directive, a
computer programme differs from other
subject matters protected by copyright
since the technical use of the computer
programme requires reproduction of the
programme. This implies in particular that
when a copy of the programme has been
sold, any act necessary for the use of the
copy of a programme may be performed by
the person who has lawfully acquired the
copy in accordance with its intended
purpose. The court also pointed out that,
under Article 5(1) of the Directive, in the
absence of specific contractual provisions,
permanent or temporary reproduction or
alteration shall not require authorisation
by the right holder if these acts are
necessary for the use of the computer
programme by the lawful acquirer in
accordance with its intended purpose,
including for error correction.
When assessing what was meant by the
intended purpose, the Supreme Court
stressed that it would be important to
asses what kind of functional purpose the
programme was originally acquired for
and what was its normal use in this
context. According to the court, a
computer programme could be acquired
for specific purposes and programmed for
this by the user. A programme can also
form an entity together i.e. with
production equipment or machinery, in
which neither can function independently,
meaning that the two entities are
interdependent (an embedded system). The
court found that the machine for
dispensing and pleating was meant to form
a part of the Karelian pastry production
line. It considered that the logistics
equipment and the computer programme
included thereto formed an embedded
system. The logistics equipment and the
computer programme included thereto
filled only a minor but necessary task in
the functioning of the machine for the
dispensing and pleating of Karelian
pastries as the machine itself formed only
one part of the entire pastry machinery. In
the court’s view, the computer programme
did not have an independent function.
The court also held that it was relevant
to take into account that both parties’
intention had been to assign the
machinery as a functional block. In fact
the programme had been modified and
| 55
According to the Computer Directive, a computer programme
“
differs from other subject matters protected by the copyright since the
technical use of the computer programme requires reproduction of
the programme
”
altered several times before the alterations
that were commissioned by EHO in 1995
in order to meet the requirements of
maintenance and development. The court
essentially stated that the alterations made
in 1995 to the machine for dispensing and
pleating were merely technical in their
nature and concerned the mechanics of the
machinery. These alterations as such did
not exactly mean intervening with the
computer programme monitoring the
function of the machine. In conjunction
with the alteration of the machine, the
logistics equipment was changed as well;
the court also considered this change
technical in nature. The court argued that
the original computer programme
installed in the logistics equipment formed
an essential and significant part of the new
programme loaded in the new computer
that monitors the functioning of the
machine. In other words, the old
programme formed a basis of the new one.
The commands in the new programme had
been slightly modified compared to the
ones in the old programme to correspond
to the requirements of the new logistics
equipment, but otherwise the new
programme had a corresponding power of
command, sequences and data with the old
one. In addition, a new interface (IN –
OUT programme sequence) was created to
comply with the new servo system.
In its judgement the Supreme Court
held that the defendants have had the
right to make the alterations needed for
the programme. The alterations did not
infringe the copyright to the computer
programme in the logistics equipment as
claimed in the infringement action. The
court based its decision essentially on the
following facts – The purpose of the
machine for dispensing and pleating for
Karelian pastries’ and the related computer
programme was to form a part of the
pastry machine. Despite necessary
alterations made for operation power, the
purpose of use of the machine for
dispensing and pleating for Karelian
pastries had not changed. The alterations
commissioned by EHO in 1995 had only
improved the function but had not changed
its original intended purpose of use.
Furthermore, the court pointed out that
an infringement of copyright was not at
hand as the plaintiff had not claimed that
the defendant would not have had a right
to use the machine in a manner it
considered to be mechanically the most
advantageous.
Comments on the Decision
The Supreme Court ruling in question
cast light on important questions with
legal relevance, which deserves a closer
look. By invoking the recitals of the
Directive, the court clarified the rights of
the person who has legally acquired a
computer programme. The court held that
especially in a case where a copy of a
computer programme is sold to a person
who has lawfully acquired the programme,
the person shall be entitled to make such
copies of the programme and such
alterations to the programme as may be
necessary for its use for the intended
purpose. The lawful acquirer of the
computer programme is comparable to the
purchaser of any goods. The right in
Section 25 j of the Copyright Act is not
limited in time. In this case, EHO has
purchased the original computer
programme in 1985 and the disputed
alterations were made in 1995. The user’s
right to make alterations under Section 25
j of the Copyright Act may be
contractually limited, but in absence of
specific contractual provisions, the
lawful acquirer of the computer
programme has the alteration right.
In this regard, this specific rule differs
from the general principles applied
to the transfer of copyright. In accordance
with Section 28 of the Copyright Act,
the transferee of copyright may not alter
the work unless otherwise agreed between
the parties. K
Notes
1. Supreme Court’s decision on 8 May 2008 in
matter S2006/688.
2. Copyright Councils statement 1997:12 on
13 June 2007.
AUTHOR
Kristiina Harenko advises
on intellectual property and
information technology
related questions as well as
on European Community
law. She also serves as a
panellist on the World Intellectual Property
Organisation (WIPO) for international
domain name disputes.
Prior to joining B&K, Kristiina worked from
1997 to 2000 as an in-house lawyer for the
Finnish Composers’ Copyright Society,
specialising in legal matters related to new
media and licensing.From 1990 to 1997,
Kristiina worked for the Ministry of
Education where her areas of responsibility
were copyrights and copyright legislation.
Kristiina has acted as a representative of the
Finnish government in the activities of the
EU, the Council of Europe and other
international organisations (WIPO, WTO) on
intellectual property right issues.
Kristiina, along with B&K partner Pekka
Tarkela and Valtteri Niiranen, are the authors
of an 800-paged book that provides
comprehensive commentary on the
Copyright Act of Finland. The book is called
Tekijänoikeus – Kommentaari ja Käsikirja
(Copyright Law – Commentary and Handbook)
(WSOYpro).
Kristiina frequently lectures and writes
articles on subjects relates to her areas
of expertise.
www.ipworld.com
TREVISAN & CUONZO
K
Pirate Bay under
siege in Italy
Julia Holden and Silvia Pugnale of Trevisan & Cuonzo assess
industry attempts to block The Pirate Bay website in Italy
I
nternet music and film piracy sites are
the cause of massive losses for the music
and film industry as rights holders see
their rights eroded due to the presence of
thousands of unlawful copies of multimedia, film and music works on the
internet. One such site, The Pirate Bay,
through its very name, openly declares itself
a copyright ‘pirate’ – thus directly
challenging the lawfulness of the
reproduction of music and film online.
The Italian courts have been faced with
rulings on these issues, however, for the time
being the legal position is still somewhat
uncertain for both the music and film
industry. More legal clarity is needed here –
particularly in light of a recent Supreme
Court decision, which seems to point
matters back in favour of rights owners.
In a decision on 1st October 2009, the
Criminal Section of the Italian Supreme
Court invalidated a much-criticised order of
the District Review Court of Bergamo
issued on 24 September 2008 which had
permitted re-access to The Pirate Bay, the
well-known Swedish tracker website. The
Italian Supreme Court’s decision has not yet
been published in full but there are a
number of reports circulating on the
internet based on the information provided
in the Supreme Court decision head note.
For the time being the Pirate Bay website is
still fully accessible as the Supreme Court
was not in a position to decide the issue on
the merits but only to invalidate the
wrongful order of the Review Court.
The facts
In the early summer of 2008, the Italian
Financial Police, further to an order issued
www.ipworld.com
by the Prosecuting Office of the Court of
Bergamo, shut down access to the Pirate
Bay website in Italy. The order was based
on the fact that the website infringed Italian
copyright law and the creators of the
In particular, the
“investigating
judge
emphasised that the
criminal offence was
serious, particularly
given the function of
the website – namely
to allow users to share
files protected by
copyright, but also did
so in a devious
manner
”
website were charged with conspiracy to
commit a criminal offence. The order,
issued by the Prosecutor’s Office, stated that
all the Italian Internet providers set up IP
and DNS blocks to prevent access to the
Swedish website in the Italian territory and
this was confirmed by a decision issued by
the investigating judge of the Court of
Bergamo on 1 August 2008.
In particular, the investigating judge
emphasised that the criminal offence was
| 57
K TREVISAN & CUONZO
As far as the charge for conspiracy to commit a crime by the
“
website creators was concerned, the court held that it did not have
judicial competence to answer that question, even though the court
recognised the validity of the case
”
serious, particularly given the function of the
website – namely to allow users to share files
protected by copyright (such as movies and
music files), but also did so in a devious
manner. In practice, files were not stored on
one computer (which would have allowed the
identification of the system) but used a Bit
Torrent tracker, a technology which splits up
files over a large number of host computers.
As result, any user was able to share data
with other users through a “peer-to peer”
system effectively multiplying the violations
of copyright law which were occurring.
The website allowed users to use the
“torrent” complex alphanumerical codes,
which are able to identify single files and
enable the registered users to share full or
partial copies of them. As a consequence,
data were available outside of the regular
commercial networks in absence of the
copyright holders’ consent.
The decision of the Court of Bergamo of 1
August confirmed that the website infringed
Italian copyright laws and in particular Art.
171ter of the Italian Copyright law no.
633/1941 which penalises persons who
reproduce, transmit or spread in whole or any
part of literary, dramatic, scientific,
educational, musical, drama-musical or other
multi-media works among the public through
any means, even when they are a part of a
collective work or database, when the use of
such works is not for mere personal use. The
penalty may include a fine which may range
from €2,500 to €15,500 and/or imprisonment
from six months to three years.
As far as the charge for conspiracy to
commit a crime by the website creators was
concerned, the court held that it
did not have judicial competence to
answer that question, even though the court
recognised the validity of the case. This was
because the organisational structure of the
website was based and operated outside
Italian jurisdiction (the server was first
placed in Sweden and then in the
Netherlands). As a result the Italian court
held that it was not competent to decide on
the merits of the case, as the necessary
criteria relating to the Italian jurisdiction
were not fulfilled. On the other hand the
Italian court could decide the issue of
criminality with regard to the unlawful data
sharing since it involved Italian users.
The above decision was overturned by
the District Review Court of Bergamo on
24 September 2008.
In particular, the Review Court found
an 'error in procedural form' in the order
issued by the investigating judge, since,
in the view of the Review Court, this
decision could not be included in the types
of decisions permitted by Italian
procedural law.
According to the Review Court the order
issued by the investigating judge had
stopped Italian internet providers (which
were not party to the criminal offence) from
offering access The Pirate Bay website. The
Review Court found that this order was
‘atypical’ (since it enjoined undefined
persons – i.e. all Italian Internet Providers
from offering services) and did not take the
format or follow the requirements for
'seizure orders' as provided by law. For these
reasons the Bergamo Review Court
invalidated the seizure order which had been
granted by the District Court of Bergamo.
In October of this year the Italian Supreme
Court held that the decision of the Review
Court of Bergamo was incorrect. However, it
was no longer in a position to re-block the
sites which are currently still accessible.
Copyright owners will now have to await a
further decision of the Bergamo Court which
will most likely shutdown access. Although
the full decision of the Supreme Court has not
yet been published, it is viewed with some
degree of relief by copyright owners.
Initial reactions
FIMI, the Italian Federation for the Italian
Musical Industry, in an online press release
on its website www.fimi.it, affirmed that it
was satisfied with the outcome of the
proceedings In particular FIMI stated that
it was confident that the decision, issued by
the Supreme Court, would once again allow
police authorities to take effective action to
block access to the Pirate Bay website.
FIMI also filed proceedings with a request
for an indemnity payment of over one €1m
due from the website creators and managers
to its rights holder members, based on the
findings of the criminal proceedings of the
Court of Bergamo, which declared that The
Pirate Bay was in violation of Italian
copyright law.
The Pirate Bay is acclaimed to be in the
top one hundred most highly visited
websites all over the world, with over 20
million visits per month, 2% of which
(450,000) are allegedly from Italy. FIMI's
reaction is in line with many similar
statements issued by commentators
representing rights holders in the music and
film industry. K
AUTHOR
Julia Holden is jointly
qualified as an English
solicitor and Italian
Avvocato. She is a partner
at the law firm, Trevisan &
Cuonzo Avvocati, a leading Milanese law firm
with a strong focus on Intellectual Property,
Information Technology and Life Sciences.
She has been working with the firm since its
establishment in 1993.
Silvia Pugnale specialises
in the law on advertising
and communication issues,
trademarks and unfair
competition. She provides
advice on packaging and
labelling for food products,
cosmetics and other consumer goods. Silvia
joined Trevisan & Cuonzo in 2006, having
gained significant experience in a law firm
specialising in intellectual property and
advertising law.
www.ipworld.com
K VONDST ADVOCATEN
JURISDICTIONAL FOCUS: BENELUX
The ECJ Intel decision: a nightmare
for trademark holders in the
Benelux or not?
Silvie Wertwijn and Hidde Koenraad of Vondst Advocaten, discuss the impact of the Intel v
Intelmark case in the Benelux countries
I
n the Intel Corporation Inc v. CPM United
Kingdom Limited case1, the European
Court of Justice (ECJ) has provided
guidance on what holders of reputable
trademarks will have to prove in order to
stop others from using an identical or
similar mark for different goods or services.
In its decision the ECJ inter alia ruled
that in order to prove that the use of a later
mark is detrimental to the distinctive
character of the earlier mark, evidence is
required of a change in the economic behaviour
of the average consumer of the goods or
services for which the earlier mark was
registered consequent on the use of the later
mark, or a serious likelihood that such a
change will occur in the future.
In that respect, in the Benelux, the Intel
decision has been mostly described as a
nightmare, since it would impose a difficult
new hurdle for trademark owners to
overcome. Also in other European countries,
the decision caused consternation and
concern. On the face of it, this is not so
strange when you reflect deeper on the
question how a change in the economic
behaviour of the average consumer is to be
proved? Will market analyses and sales
figures be needed? How can you be sure
that a decline in such figures will be caused
by harm to the mark? Some even claim that
it impossible to prove this at all, since
consumer spending patterns are determined
by an inextricable knot of potential
variables. The shock-effect in the
Netherlands was even greater when the
president of the District Court in The
Hague shortly after the Intel decision
considered that the criteria given in this
decision should be taken literally.2
Intel-decision
Intel is the proprietor of numerous UK and
Community INTEL trademarks for
computers and related goods and services.
Intel sought to invalidate the later
INTELMARK trademark which was
registered for marketing and telemarketing
services in class 35. According to Intel the
INTELMARK trademark brought INTEL
to mind and would thus take unfair
advantage of Intel’s earlier trademarks
(free-riding) or would be detrimental to the
distinctive character and reputation of these
reputable marks (dilution).
Intel was unsuccessful with the UK
Intellectual Property Office and also in the
High Court. Subsequently, the case came
before the Court of Appeal. This court
acknowledged that the INTELMARK
trademark would bring Intel’s marks to
mind. However, the Court of Appeal was
not convinced that bringing to mind alone
constituted the necessary link required by
the ECJ. Hence, the proceedings were stayed
and the Court of Appeal referred questions
to the ECJ.
In short, the UK Court of Appeal
wondered whether the mere bringing to mind
of an earlier mark with a reputation would
be enough to prevent a registration (or to
establish an infringement) by the defendant
for (the use of) a later mark for dissimilar
goods or services. Furthermore, the Court
of Appeal wanted to know what is required
in order to satisfy the element of detriment
to distinctive character of the earlier mark
and more specifically, whether this element
requires an effect on the economic behaviour
of the consumer.
The ECJ ruled that the question
whether there is a link between the earlier
mark with a reputation and the later mark,
must be assessed globally, taking into
account all factors relevant to the
circumstances of the case. By summing up
the criteria to be taken into account3, in its
decision the ECJ provides a clear set of
instruments which must be used when
assessing whether there is indeed a link
between the earlier mark and the later
mark/sign. The ECJ holds that the
existence of a mere link is nonetheless
insufficient to establish that the use of the
later mark takes or would take unfair
advantage of, or is or would be
detrimental to, the distinctive character or
the repute of the earlier mark.
According to the ECJ the question
whether the use of the later mark takes or
would take unfair advantage of, or is or
would be detrimental to, the distinctive
character or the repute of the earlier mark
The ECJ ruled that
“
the question whether
there is a link between
the earlier mark with
a reputation and
the later mark, must
be assessed globally,
taking into account
all factors relevant to
the circumstances of
the case
”
must be assessed globally, taking into
account all factors relevant to the
circumstances of the case. These factors
concern inter alia: the reputation of the
mark for certain specific types of goods or
services, the degree of similarity of the
good or services involved, the uniqueness
of the earlier mark and the link between
the later mark/sign and the earlier mark.
The ECJ ruled that these factors in
themselves are not sufficient to establish
that the use of the later mark takes or
would take unfair advantage of, or is or
www.ipworld.com
JURISDICTIONAL FOCUS: BENELUX
would be detrimental to, the distinctive
character or the repute of the earlier mark.
According to the ECJ, the use of the later
mark may be detrimental to the distinctive
character of the earlier mark with a
reputation even if that mark is not unique.
Furthermore, and this is the most
remarkable part of the judgment,
according to the ECJ the proof that the
use of the later mark is or would be
detrimental to the distinctive character of
the earlier mark requires evidence of a
change in the economic behaviour of the
average consumer of the goods or services
for which the earlier mark was registered
consequent on the use of the later mark, or
a serious likelihood that such a change will
occur in the future.
Post-Intel Benelux case law
Besides a lot of panic commentary, more
subtle views were also pronounced. Some
scholars argued that the Intel decision
does not demand the trademark owner to
provide economic evidence of change in the
economic behaviour of the consumer, but
merely legal evidence. The criterion change
in the economic behaviour of the consumer
would be no more than a further clarifying
side note for establishing dilution (besides
the known criteria such as conformity,
similarity, distinctiveness, reputation etc.)
and not a revolution. However, at the same
time it is argued that this legal evidence
must have at least a certain economic
realism to it.
In our opinion a strict interpretation of
the Intel judgement may make dilution
very hard to prove in practice. The
distinctiveness of a (famous) trademark
can still be harmed, even if a trademark
holder cannot prove change in the
economic behaviour of its consumers.
Moreover, we doubt whether the damage
to the distinctiveness of a trademark will
lead to an immediate economical effect.
Consequently it is likely to be impossible
to gather convincing evidence of a change
or serious likelihood of a change in the
economic behaviour of the average
consumer until dilution has already
taken place, in which case it is arguably
too late.
Therefore, we kept track of post-Intel
decisions to see what interpretation the
Benelux courts would give to the required
proof of change in the economic behaviour of
the consumer.
As mentioned, only two weeks after the
www.ipworld.com
VONDST ADVOCATEN
Intel decision, the president of the court of
The Hague4 decided, that according to the
Intel judgment, proof of the detriment to
the distinctive character of a famous
trademark requires evidence of a change in
the economic behaviour of the average
consumer, or a serious likelihood that such a
change will occur in the future. The court
argued that this is a fairly high hurdle and
that real evidence must be put forward to
clear it. Thereupon the court judged that
the alleged concern felt by some retailers of
the trademark holder and their reported
expressions of similar concerns by some
consumers are not sufficient.
In April 2009 the court of Leeuwarden5
subsequently argued in the same strict line6
and the Benelux held its breath: was the
outcome of Intel really a blow for brand
owners hoping to secure extended
protection for famous brands?
Recently, the court in The Hague seemed
to hold a slightly less strict view on the
Intel case7.
Following the above mentioned judgment
in interlocutory proceedings, the court now
rendered an interlocutory judgment in
proceedings on the merits concerning the
above mentioned battle between G-Star and
Pepsico. On 25 November 2009 the Court
argued that if G-Star is able to prove that
its trademark RAW is a famous trademark,
it still has to prove that the relevant public
creates, or is likely to create, a link between
G-Star’s RAW and Pepsico’s PEPSI RAW.
Further, the court argued that in case
G-Star succeeds to substantiate the
required reputation and link, dilution of
the RAW trademark is given as Pepsico
only uses the element RAW in
combination with its own famous
trademark PEPSI. The court is of the
opinion that it is to be expected that the
relevant public will then associate the
trademark RAW with the very famous
trademark PEPSI, instead of G-Star’s
goods! However, G-Star still has to
provide evidence and the court ordered
G-Star to prove:
• that the trademark RAW is a famous
trademark in the European Community;
• that the public creates a link between the
alleged infringing trademarks and the
trademark RAW;
• facts and circumstances which show that
unfair advantage is taken of or detriment
is caused to the distinctive character of GStar’s trademark RAW.
So, most likely the near future will give
K
more guidance as to whether the Intel
judgment is indeed a nightmare for holders
of famous trademarks in the Benelux. So far,
we are not aware of any relevant post-Intel
case law in Belgium or Luxembourg.
However the recent developments in the
Netherlands seem to be promising. K
Notes
1. ECJ 27 November 2008, C-252/07.
2. President of the Court of the Hague, 15
December 2008, G-Star / Pepsico (preliminary
judgment).
3. par. 42-48.
4. See footnote (2).
5. The Netherlands.
6. Court of Leeuwarden, 29 April 2009, Huis &
Hypotheek / DSB.
7. Court of the Hague, 25 November 2009,
G-Star / Pepsico (proceedings on the merits).
AUTHOR
Silvie Wertwijn has been a
practising lawyer since 2000
and has previously worked
with NautaDutilh and
Steinhauser Hoogenraad.
Ms Wertwijn deals with
intellectual property in a broad sense, with a
focus on trademarks, pharmaceuticals and
patents. She is an active member of the
Amsterdam Bar. She was a member of the
Board of the Amsterdam Young Bar for two
years, first as secretary and later as chairman.
In the field of trademarks, Ms Wertwijn is a
member of various professional associations,
including INTA, BMM (Benelux Association of
Trademarks and Design law) and AIPPI.
Hidde Koenraad has been a
practicing lawyer since 2001
and worked at the IT/IP
department of an
international firm in
Amsterdam before joining
Vondst. From the start of his
career, Hidde advises and litigates in the field
of ICT, E-business and intellectual property,
focusing on copyright law, design law, database
law and trademark law. Furthermore, Hidde
specialises in national and community plant
variety rights and has experience with litigating
before the Community Plant Variety Office in
Angers, France. Hidde is a member of the
Netherlands Association for Information
Technology and Law, the Netherlands
Copyright Association, the Benelux Association
of Trademarks and Design Law (BMM) and the
Netherlands Agriculture Law Association.
| 61
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JURISDICTIONAL FOCUS: NORWAY
BRYN AARFLOT AS
K
Patent litigation
in Norway
Lill Grimstad, partner at Bryn Aarflot, gives an overview of
patent litigation in Norway
I
rrespective of how the rest of the
world views Scandinavia as a single
entity from a commercial perspective,
this is not necessarily a true reflection
when it comes to IP protection,
enforcement and litigation.
One could imagine that the European
Union as more or less homogenous
when discussing Intellectual Property
law and litigation, but there are
major differences.
Norway became a member of the
European Patent Convention from
1 January 2008. Hence Norway is
included among the designated states in
European patent applications filed on or
after that date. The legal framework has
continuously been revised to harmonise
with the EPC. The legal framework with
respect to enforcement and litigation is,
however, not harmonised. As a non-EU
member state, Norway is not bound by the
provisions of Directive 2004/48/EC of
the European Parliament and of the
Council of April 29 2004 on the
Enforcement of IP rights.
With respect to patents, the Norwegian
legislation was enacted in the late 1960s and
was based on a Nordic experts’ report from
1963. The laws of the Nordic countries were
very similar as well as the case law.
However, Sweden, Denmark and Finland
joined the European Patent Convention and
became EU member states and there are
today also in the Nordic countries
differences both in the procedural systems
and the court systems.
From the point of view of enforcement
and litigation, IP owners must treat Norway
as a separate jurisdiction.
In Norway, judicial review takes place in
the general courts, and we do not have
specialised IP courts as in several other
countries. As a consequence, all cases
www.ipworld.com
related to disputes in the field of IP e.g.
judicial reviews of Patent Office refusals to
grant patents, invalidity and infringement
proceedings, are enforced in the district
courts as first instance. Decisions may be
appealed to the appeal court and then to
the Supreme Court. The Supreme Court
hears cases on appeal from the appeals
court; here a leave to appeal is required
and such leave is very rarely granted.
as
“suchDiscovery
does not
exist in Norway.
However, according
to civil procedural
law there can be a
limited duty for an
opponent or a third
party to disclose
certain documents
or objects that may
serve as evidence
”
Historically the Supreme Court has tried
very few patent cases.
Patent trials follow the same procedures
as other civil trials. The trial commences
with the filing of a writ of summons in
which the case is outlined and evidences
are presented. During the preparatory
stage legal arguments, defences and
additional evidences are presented and
commented on, mostly in writing by
| 63
P A T E N T
T R A D E M A R K
D E S I G N
L E G A L
LOOKING
TO NORWAY?
We successfully serve Norwegian
and international companies
Highly qualified IP Professionals
European Patent Attorneys
Spesialist trademark attorneys
Lawyers covering all IP fields, including litigation
BRYN AARFLOT AS Kongens gate 15, P.O. Box 449 Sentrum, NO-0104 Oslo, Norway
Telephone +47 46 90 30 00 – Telefax +47 22 00 31 31 – [email protected]
www.baa.no
JURISDICTIONAL FOCUS: NORWAY
BRYN AARFLOT AS
K
The main principle under procedural law is that the winning party
“
is entitled to compensation from the losing party in litigation.
Compensation is decided by the court in the judgement, but it is up
to the court to decide whether the compensation claimed is reasonable
exchange of briefs. The trial ends with a
main hearing where evidences and
arguments are presented to a panel of
judges, usually consisting of one legal
judge and two technical judges in the
district court and three legal judges and
two technical judges in the appeal court.
The judges will review the case based on
the documents and the live testimony.
Affidavits are allowed, but they cannot be
expected to be relied on more than to a
limited extent.
Discovery as such does not exist in
Norway. However, according to civil
procedural law there can be a limited duty
for an opponent or a third party to disclose
certain documents or objects that may serve
as evidence.
Expert/skilled witnesses on the relevant
technology are widely used and are of
importance. Cross-examination of witnesses
is permitted.
The doctrine of equivalence was
recently recognised in Norway by a
decision from the Supreme Court. The
recent decision HR-2009-1735-A, concerns
the interpretation of Section 39 of the
Patents Act an in particular the doctrine
of equivalence in relation to an
analogy method patent. Based on normal
principles of interpretation, the starting
point for claim interpretation is the
wording of the claims. The decision uses
the three principles of equivalence:
(1) solve the same problem, (2) obvious for
a skilled person, and (3) method must
not belong to the prior art, as an
adequate starting point. The decision
confirms that it is the method according to
the claims that is protected also for
analogy method patents. The teaching of
equivalence is an aid to widen the scope of
protection to methods which are fairly
identical, and which represent
modifications of the method according to
the claims. The assessment as to whether a
www.ipworld.com
method is sufficiently close to be
characterised as fairly identical, are
specific considerations that must be made
in each specific case.
The litigation timetable is always of
interests, and the Norwegian courts are
efficient. A patent case will generally take a
year in the first instance and another year
maximum in the appeal court.
Remedies available are injunctions,
interlocutory injunction, fines, damages
and compensation, securing evidence,
right of information, temporary recall
of goods, destruction of goods, and
custom watch.
The main principle under procedural law
is that the winning party is entitled to
compensation from the losing party in
litigation. Compensation is decided by the
court in the judgement, but it is up to the
court to decide whether the compensation
claimed is reasonable.
In terms of enforcing IP rights, there are
some alternatives to litigation.
Firstly, all district and appellate courts
offer a service called judicial mediation,
which is brought up very early during the
preparation phase of any first instance or
appeal case. The mediation can be
terminated at any time, in which case the
litigation will continue. The Mediator –
who may be a judge – will assist the
parties in resolving the conflict. A similar
procedure is available before the hearing
begins, but it requires the consent of
both parties.
Secondly, arbitration is in general a way
to resolve civil disputes, but this is not
often used in IP cases. However,
arbitration is an efficient way of setting
disputes, and it is recommended in cases
where the parties wish to avoid publicity
and in cases where the dispute needs to be
decided quickly.
Finally, with respect to invalidating
patents, a powerful tool may be to request
”
an administrative review before the
Norwegian Industrial Property Office
(NIPO). Anyone may file a request for
an administrative review of a
Norwegian patent, requesting the
patent to be declared invalid in full
or in part by a decision made by the NIPO.
It is important to notice that the request
for an administrative review cannot be
filed as long as legal proceedings
regarding the patent are pending before
the courts. Such an administrative review
may result in invalidation of the patent in
full or in part, and a decision to declare a
patent invalid will take effect from the
filing date. The administrative review
process is simple and less expensive that
filing a request for invalidation of a patent
before the courts.
When identifying the best strategy of a
successful litigation, the local counsel has to
be selected at an early stage of the
conflict/case. The litigation strategy will
vary from conflict to conflict and it is
difficult to give any general
recommendation. K
AUTHOR
Lill A Grimstad is a
partner at Bryn Aarflot AS
and the Head of Legal
Department. She has more
than 10 years of IP
experience and specialises in IP litigation.
She has advised on a broad range of IP
matters and her work covers consulting
and litigation relating to IP law and business
law, centred on prosecution and litigation
of IP rights in the fields of trademark,
design, patent, copyright and unfair
competition law.
| 65
Covington & Burling LLP
E
im E py
la R o
C F c
ur le
yo mp
sa
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