Not applicable for this jurisdiction.
Mask works / topographies
Remedies for infringement
Not applicable for this jurisdiction.
The available remedies for infringement are an injunction to stop the infringing activities and either damages or an account of profits.
If the defendant's act was an innocent infringement (that is, they were not aware, and had no reasonable grounds for suspecting, that their act constituted an infringement), the plaintiff is not entitled to any damages against the defendant. In such circumstances the plaintiff is, however, entitled to an account of profits.
Additional damages may also be awarded on the same basis as additional damages for infringement of copyright under the Copyright Act 1968.
Civil remedies for infringement include:
- Cessation of infringement (preliminary or permanent injunction)
- Claim for elimination of the circumstances constituting the infringement, including the destruction of infringing copies
- Rendering of account
- Publication of judgment
- Monetary relief (adequate consideration, damages and handover of profits)
Criminal remedies include:
- Monetary fine
The remedies for infringement of rights in a semiconductor product and the principle of exhaustion are similar to those applicable to copyright infringement.
Criminal remedies for infringement of mask works include: imprisonment and monetary fine.
Civil remedies for infringement of mask works include: prohibition of the infringing act, fine and damages.
Remedies can include an injunction, the payment of royalties and the recovery of damages or profits, for punitive damages, and the disposal of any infringing integrated circuit product or any article of which an infringing integrated circuit product forms a part.
A defendant is not liable for royalties, damages, profits or punitive damages in respect of any dealings with the integrated circuit product prior to the time when the defendant had actual knowledge that the product was manufactured and sold for the first time without the consent of the owner.
A defendant has the right to dispose of any inventory of the integrated circuit product or of the article that was acquired before the defendant had that knowledge, subject to the condition that the defendant pay a reasonable royalty in respect of that inventory in such amount and at such time as the court may determine.
The owner of the topography can generally require the cessation of acts that violate the topography, the indemnification of damages, the implementation of necessary measures to prevent the infringement from continuing, and the publication of the judgment at the expense of the convicted person, through advertisements in a newspaper of the holder's choice.
The law provides for criminal penalties from 25 to 1,000 UTM (approx. 1,600 to 65,000 USD).
The holder of the right for a layout-design or any interested party (such as a licensee) may bring a law suit before the People's Court, or request the intellectual property administration department of the State Administration of Market Supervision to handle the matter. When the Intellectual Property Administration Department of the State Administration of Market Supervision handling the matter considers that the infringement is established, it may order the infringer to stop the infringing act immediately and confiscate or destroy the infringing products or articles.
Injunctive relief is available. Where any holder of the right of layout-design or interested party has evidence to prove that another person is infringing or will soon infringe the owner's exclusive right and if such infringing act is not stopped or prevented from occurring, it is likely to cause irreparable harm to the owner's legitimate rights. The owner may, before any legal proceedings are instituted, request the People's Court to adopt measures for ordering the suspension of relevant acts and the preservation of property.
The amount of compensation for the damage caused by an infringement of the exclusive right of layout-design shall be the profits that the infringer has earned through the infringement or the losses suffered by the person whose right was infringed, including the reasonable expenses paid by the infringed person for the purposes of stopping the infringement.
The designer or owner of the rights over a layout-design of an integrated circuit may claim its rights with the ordinary jurisdiction of its country. Nevertheless, the judge shall request that the Andean Court of Jurisdiction of the CAN provide an opinion on the case prior to the taking of the decision, which shall apply and consider the opinion of the Andean judge.
Finally, layout-designs of integrated circuits are protected by criminal law. Therefore, the infringements might be investigated by the general prosecutor and penalized by the criminal courts.
Possibility to claim actual damages for infringement.
Possible to seek preventing importation of infringing.
Injunctive relief is also a possible remedy.
Criminal penalties are possible.
Remedies for negligent or willful infringement include equitable and reasonable compensation for the use and compensation for losses and further injuries caused by the infringement.
It is possible to obtain a court order for destruction of infringing products. An initial step can be to obtain a preliminary court order for the confiscation of infringing products and equipment used in the manufacture thereof.
Criminal penalties are possible.
Compensation for topography infringement includes a reasonable, non-punitive compensation for the use of the topography. In case of negligence, compensation for other damages may also be awarded. Reasonable legal costs can also be demanded from the infringing party.
Injunction can be granted by a court in infringement cases, as well as destruction of infringing goods. Criminal penalties such as fines and even imprisonment are possible.
A person who acquires a semiconductor product in good faith is not considered as infringing the rights in the semiconductor product topography. However, if such person wants to continue to exploit commercially such semiconductor product, this person must pay a fair indemnity.
An injunction to stop infringing acts can be ordered with immediate enforceability and impose penalties.
In determining the amount of damages to be awarded (compensatory – not punitive), French courts take into account distinctively:
- The negative or detrimental economic consequences of infringement, including lost gains and losses suffered by the rights holder
- The moral harm suffered by the rights holder and
- The profits earned by the infringer, including intellectual, tangible and promotional investments saved or not incurred by the infringer.
As an alternative and upon request of the rights holder, French courts may set the damages as a lump sum. This sum must be greater than the royalties that would have been owed if the infringer had sought a license. This amount is not exclusive of compensation for moral harm caused to the rights holder.
Remedies also include, notably, the recall, destruction or confiscation of the infringing products and the publication of the judgment.
Legal costs and attorneys' fees can be recovered (at the discretion of the judge).
Note that in case of topographies infringement, it is not possible to bring an action before the criminal courts.
Different remedies for infringement are possible with the most commonly sought remedies being injunction and damages claims. Damages may be calculated as adequate license fees, infringer's profits or lost profits of the rights holder. In order to calculate damages, the rights holder can ask for a rendering of accounts. No punitive damages are available.
In addition, a rights holder may make a claim for call-back and destruction of infringing products. Customs seizure to stop the import of infringing semiconductors is also available.
Statutory costs for legal prosecution (court costs and attorney fees) are recoverable up to a cap established by German law.
Hong Kong, SAR
Available civil remedies include damages, order for delivery up, order for disposal, an account of profits and injunctive relief. The court may award additional damages having regard to all of the circumstances of the case including the flagrancy of the infringement and any benefit accruing to the defendant by reason of the infringement.
Relief for groundless threats of infringement is available. Relief may be in the form of a declaration that the threats are unjustifiable, an injunction against the continuance of the threats or damages for any loss that has been sustained by the threats.
In the event of infringement the remedies set forth in the Hungarian Patent Act (see Patents) can be exercised.
Criminal penalties for infringement of layout-design include imprisonment for a term of up to 3 years or a fine not less than INR 50,000 and up to INR 1 million or both. Further, where a person is convicted of an offense of infringement, the court convicting him or her may direct the forfeiture to the government of all goods and things by means of, or in relation to, which the offense has been committed.
Criminal penalty for companies
If the person committing an offense is a company, the company as well as every person in charge of, and responsible to the company for the conduct of its business, at the time of the commission of the offense, will be deemed to be guilty of the offense, and liable to be proceeded against and punished accordingly.
Costs for the prosecution of an offense are also recoverable, apart from civil damages and injunctive relief. Statutory damages are not prescribed.
Compensation, injunction, or a combination of the two may be ordered by the Commercial Court as remedies for infringement. Criminal sanctions are in the form of imprisonment and/or fine.
The primary remedies available to a topography right holder in relation to infringement are:
- Injunctive relief
- An account of profits and/or
- Delivery up of the infringing material, seizure and destruction
The infringement of the rights in a layout-design constitutes a tort and the Civil Wrongs Ordinance (New Version) shall apply to it, subject to the provisions of this law.
Any person with reason to fear for the infringement of rights belonging to them, or who seeks to prevent the continuation or repetition of an infringement which has already occurred, may commence legal proceedings to ensure that their right is recognized and the infringement is put to an end. In such circumstances, the right holder will be entitled to remedies, including injunction and damages.
Monetary damages can be compensated. There are certain statutory presumptions to calculate damages but punitive damages are not available under Japanese law.
Injunctive relief, including seeking/preventing importation of infringing goods, is available as a remedy.
Each joint owner can seek a remedy without the other owner’s consent.
Criminal penalties are possible for infringement of mask works.
Compensation for infringement is governed by the same provisions of the legislation on patents for invention. (See "Patents – Remedies for Infringement").
Violation of a registered mask work may lead to payment of damages and losses, which shall be determined by a court of law based on actual damage and loss. Such payment of damages and losses will in no case be less than 40 percent of the public sale price of each product or the provision of the services that involve a violation of any of the intellectual property rights governed by the Industrial Property Law (Ley de la Propiedad Industrial).
Criminal penalties may be imposed.
Monetary relief also entails the possibility to claim damages as a lump sum as well as payment of infringement profits. A number of supplementary, injunctive sanctions may be applied for, such as:
- A recall from the channels of commerce, surrender to the patent holder or destruction of the infringing goods and, in appropriate cases, of the materials and implements principally used in the creation or manufacture of these goods
- The right of information, ordering the infringer to share precise information on the origin of the infringing goods or services, the distribution channels and the identity of any third parties involved in the infringement
- Appropriate measure for the dissemination of, or information on the decision
A European rule of exhaustion applies, which means that if a particular semiconductor product in which the topography is incorporated has been brought into circulation by means of transfer of ownership for the first time with the consent of the right holder within the community, then the bringing of that particular product into circulation in any other way shall not be considered as an infringement.
According to Article 1019h of the Dutch Code of Civil Procedure, generally the losing party is obliged to pay the legal costs of the winning party. However, the judge has the authority to decide that these costs will be partly compensated by the winning party. In practice, a cap is applied to the legal fees, depending on the complexity of the case.
A court may grant relief for infringement of layout design rights by way of damages, an account of profits and/or an injunction.
Where the infringement occurred, but the defendant was not aware and did not have reasonable grounds to suspect that there was an infringement of a layout design, then damages will not be available.
The court will consider the flagrancy of the infringement and benefit to the defendant when deciding whether to grant additional damages.
Potential remedies for infringements are injunctive relief, damages and criminal penalties, and illegal copies may be confiscated or destroyed.
Action for damages, including attorney’s fees and other expenses of litigation, as well as injunctive relief, is available to the creator or owner. If the damages are inadequate or cannot be ascertained with reasonable certainty, the court may award damages equivalent to reasonable royalty.
If the right to a topography is infringed (eg, it is reproduced as a whole or in part, unless for non-original part, or a copy of the protected topography is marketed), the right holder may demand:
- The cessation of the infringement
- The payment of compensation for the damage incurred – on the basis of the general provisions of Polish law or by the payment of a lump sum equivalent to the value of the license fee
- The return of unfairly gained profits
Regardless of the above, the right holder may also demand that the ruling be published in a manner ordered by the court. At the request of the right holder, the court may also decide on the future of the infringing goods and the tools and materials used for their manufacturing. In particular, it may order that they be withdrawn from the market, that they be given to the right holder or that they be destroyed.
Before the initiation of infringement proceedings, a right holder may file a request for a preliminary injunction to secure its situation for the entire duration of the civil proceedings, since the infringer may be prevented from offering and marketing the infringing products and its products would be seized and held until the civil proceedings conclude with a final judgment. A right holder may also file a request for information – also before the main proceedings, when infringement is highly probable – required to pursue claims against the infringer.
Whenever there is violation of, or justified fear that another party may cause serious and difficult-to-repair harm to an industrial property right, including a topography of a semiconductor product, the court may, at the request of the interested party, order appropriate measures to prevent any imminent violation or to prohibit continuation of the violation.
Whoever illegally violates the industrial property rights of another person with intent or by negligence shall be obliged to pay compensation to the injured party for the damages resulting from the violation.
In determining the amount of compensation for losses and damages, the court shall take into account the profit obtained by the infringer and the resulting damages and lost profits suffered by the injured party. The costs borne with the protection of the right in question and the investigation and termination of the harmful conduct shall also be taken into consideration, as well as personal injury.
If it is impossible to quantify the losses effectively suffered by the injured party, the court may, provided this is not opposed by the injured party, alternatively define a fixed amount with recourse to equity that is based, as a minimum value, on the remuneration that the injured party would have received if the infringer had requested authorization to use the industrial property rights in question and the costs borne with the protection of the industrial property right and the investigation and termination of the harmful conduct.
Infringement of the exclusive right granted by a topography of a semiconductor product is punishable as crime with imprisonment up to 3 years or a fine.
Infringement is considered a criminal offense punishable in certain conditions with imprisonment or a criminal fine.
Statutory damages are not available for owners of topography rights. The aggrieved party is entitled to claim actual damages which can be actual monetary loss suffered by the topography owner and loss of profit. Attorneys' fees and costs can be recoverable.
Injunctive relief, including the seizure of infringing goods, is also a possible remedy.
The owner of the mask work or an exclusive licensee is entitled to the following primary remedies:
- Demand to stop infringement
- Demand to redress damages in full and
- Demand seizure of media bearing infringing objects; criminal penalties may also apply under certain circumstances.
A wronged party can seek damages/compensation for infringement of its rights and harm suffered. In addition, the Patents Law stipulates certain penalties for infringement (without prejudice to further liability which may arise from other laws), including:
- An injunction
- A fine of up to SAR 100,000 (which may be doubled for a repeat offender)
- A possible jail term (including referral to the Board of Grievances)
- Naming and shaming in two daily newspapers and the Official Gazette (the cost of which is borne by the party in breach)
- Any other prompt measures considered necessary to prevent damages resulting from the infringement
Under the Layout-Designs of Integrated Circuits Act, the owner has the right to prevent the copying and commercial exploitation of an original layout-design. The owner may take whatever proceedings and seek whatever remedies are available for any other property rights. The usual remedies are damages, injunctions and an account of profits. In addition, the court may award additional damages depending on the circumstances of the case, including the flagrancy of the infringement and any benefit obtained by the defendant by reason of the infringement.
The court may make an order for delivery up to the owner of any infringing integrated circuit or any article used to make integrated circuits in which a protected layout-design is incorporated. An order for the disposal or destruction of the infringing articles may also be awarded.
In the case of an unauthorized interference with the rights, the owner of a topography is entitled mainly to seek prohibition of unlawful interference of the rights or threats to the rights and removal of the consequences of such interference. If due to such interference with the owner's rights any damage has been caused, the owner shall have the right to damages including loss of profits. If non-pecuniary damage has occurred, the owner has the right to reasonable compensation, including financial compensation. Right to unjust enrichment is not affected.
Pursuant to the Civil Code, in the case of a breach or threat of an intellectual property right which may be the object of a license agreement (such as topography), the amount of damages shall be at least equal to the remuneration for a license granted at the time of unauthorized interference with the right.
In addition, criminal sanctions pursuant to the Criminal Code shall apply.
A person who infringes the layout-design right or exclusive license is subject to imprisonment for a term of up to three years or a fine of up to KRW30 million (US$30,000). This offense may be prosecuted only upon filing of a criminal complaint by the holder of a layout-design right.
A preliminary or permanent injunction may be sought against infringers of the layout-design right.
Compensation for damages may also be sought in a civil action.
The owner of a topography may exercise its rights before the courts of ordinary jurisdiction.
Any person entitled to protection who can prove that another person has fraudulently reproduced or commercially exploited or imported for that purpose a topography created by him during the period between its first fixation or encoding and the coming into existence of the exclusive rights may exercise before the courts the appropriate action for unfair competition.
Remedies for infringement include equitable and reasonable compensation for the use and compensation for additional damage caused by negligent or willful infringement. Costs and reasonable attorneys' fees can also be recoverable.
It is possible to obtain court order for destruction of infringing products and equipment used in the manufacture thereof, as well as to file customs actions applications to prevent importation of infringing goods.
Injunctive relief is also a possible remedy.
Criminal penalties are available.
Remedies are the same as for copyright infringement. They include declaratory actions, actions for performance, damages, or destruction. Also, actions for confiscation of unlawfully produced topographies can be sought, except for products acquired in good faith.
Injunctive relief and publication of judgments are also possible remedies.
It is also possible to seek the prevention of importation of infringing goods.
Criminal penalties are also possible.
- Claim for damages
- Request to stop or prevent infringement
- Request for destruction of the articles containing the infringing circuit layouts
- Request for publication of all or part of the court judgment in a newspaper
The owner of exclusive rights to a topography or the authorized person (eg, licensee) may seek the following remedies under Ukrainian law:
- Termination of the infringement
- Cancellation of the infringing certificate for topography
- Reimbursement of damages, including loss of profit
- Recognition of a right and
- Publication of the court decision on the case concerning IP rights infringement.
In addition, the Criminal Code of Ukraine dated April 5, 2001 provides for criminal liability for infringements of intellectual property right with regard to topographies.
United Arab Emirates
Principal remedies are injunctions (or interdicts in Scotland), damages or an account of profits, delivery up, seizure or destruction of infringing goods. No statutory damages are available. The starting point for the damages calculation is usually a reasonable license fee. Aggravated damages for flagrancy are possible.
It is also possible to prevent the import of infringing copies.
Statutory damages can be up to US$250,000 for each work. Actual damages can be actual monetary loss suffered by the mask work owner and profits gained by infringer. Attorneys' fees and costs can be recoverable.
Injunctive relief is also a possible remedy, including the ability to enjoin importation of infringing goods.
Criminal penalties are possible under certain circumstances.