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  • Intellectual property framework

    Overview

    Protection of intellectual property rights is required by the Federal Constitution and by several multilateral treaties. The main statutes in this area are federal statutes. However, in case of litigation, some matters are subject to federal jurisdiction, and others to provincial jurisdiction.

  • Commercial contract framework

    Overview

    Commercial contracts are governed by the Civil and Commercial Code. This code came into effect in 2015 and it replaces the previous separate Civil Code and Commercial Code. It is part of the federal legislation, but jurisdiction regarding its implementation and litigation resulting thereunder corresponds primarily to the provincial courts.

    The Civil and Commercial Code includes general provisions on contracts, which are applicable to all contractual transactions. These provisions govern matters such as the formation of contracts, offer and acceptance, possible subject matter of contracts, legal formalities, the legal effects of contracts, contract termination and others.

    In addition, the Civil and Commercial Code includes provisions applicable to specific types of contracts, such as sale agreements, leases, franchise agreements and agency agreements. More than 30 types of agreements are subject to specific provisions of this kind. These specially regulated agreements are thus subject to the general rules applicable to contracts –described above – and to the special rules applicable to the relevant type of agreement. Agreements that are not subject to special rules are nevertheless valid, and they are governed primarily by the general contract rules and – to the degree possible – by the rules applicable to analogous specially regulated contracts.

    Other laws include provisions on specific types of commercial contracts. For instance, the Copyright Law includes certain provisions of contracts related to software and to publishing; the Patent Law includes rules on license agreements; and the Insurance Law includes rules on insurance contracts. However, in all these specially regulated contracts, the general contract law rules included in the Civil and Commercial Code are also applicable.

    Commercial contracts with the federal or provincial governments or with other governmental entities are also governed by administrative law. Special rules on contracts with state entities have been included in federal or provincial laws, or have been developed by case law.

  • Copyrights

    Nature of right

    Copyright protects intellectual creations in all fields of science, art and literature. Article 1 of the Copyright Law includes a non-exhaustive list of possible intellectual works protected by copyright. These include, among others, literary and artistic works, music, architectural works and software.

    Copyright protects intellectual expressions, but not ideas. For example, the contents of a book in terms of sentences and other literary expressions are protected by copyright, but the creative idea underlying the book as a whole is not.

    Copyright results from the creation of an intellectual work. Registration is not necessary for copyright to exist, although it is necessary for the exercise of some rights by local authors. Upon creation of a protected work, copyright belongs to the original author or authors, who then may transfer their right, by contract or by the operation of certain legal rules.

    Copyright includes economic and moral rights. Economic rights consist, basically, in the exclusive right to use and exploit the protected work. The Copyright Law lists some of the elements of this exclusive right, such as the right to reproduce the relevant work, to market copies, to prepare derivative works or to have the work performed publicly.

    Moral rights include the so call "integrity right" – that is, the right to preserve the text, title and other contents of the work, even if property rights on such work have been assigned; the "paternity right," the author’s right to be named and identified as such together with the work; the "publication right," the right to decide whether the right will be published; and the "alteration right," the right to modify the work, even after it has been published. Moral rights belong to the author and they are generally non-assignable.

    Legal framework

    Copyright law is included in Law 11, 723, as amended. In addition, multiple laws and regulations govern matters such as related rights, publishers' rights and collective management societies.

    Argentina is part of the main multilateral international copyright agreements, such as the Trips Agreement, the Berne Convention and the Rome Convention. The provisions of these agreements are actively enforced by the courts.

    Duration of right

    The general rule is that copyright protection lasts for a term of seventy years, counted as of January 1 of the first year after the death of the author, as well as through the life of the author.

    In the case of work done through cooperation, the 70-year term is computed from the death of the last person who participated in the joint authorship of the work involved.

    In the case of posthumous works, the 70-year term is computed from the death of the author.

    The duration of protection of anonymous works whose copyright belongs to institutions, corporations or legal entities is 50 years from the date of publication of the work.

    Special rules on copyright duration apply to specific types of copyrightable works, such as photographs and cinematographic works.

    Ownership / licenses

    The basic rule is that ownership belongs to the author. Special rules have been developed in connection with special types of works, such as cinematographic works, derivative works and software.

    There are several types of joint ownership. It may apply to works done through cooperation, which imply a creative collaboration between different authors; to collective works, which are those created through the initiative or direction of one or more individuals, who coordinate or direct the efforts of several other individuals to achieve a joint result; and to composite works, which are the result of adding different separate works, each with a possible separate author and owner, into one final result.

    Works created by employees who have been hired for that purpose belong to the employer.

    Copyright may be subject to licenses, generally as part of broader contractual arrangements such as publishing agreements.

    Remedies for infringement

    Damages may be claimed before civil courts for all types of copyright violation. Registration of works is not necessary, except for local authors, whose rights may be suspended until registration takes place.

    It is also possible to file civil action to prevent further copyright violation, and to obtain preliminary remedies, such as injunction, in the course of civil procedures.

    Criminal remedies, particularly fines, are possible, but are not frequently applied.

  • Mask works / topographies

    Nature of right

    Mask works and topographies are not separately protected under Argentine law. They may be protected under patent law or by way of confidentiality.

    Legal framework

    Argentina has enacted no specific rules on chip protection. Although Argentina is part of the WTO and has approved the Trips Agreement, it has not yet implemented any rules on chip protection.

    The provisions on chip protection included in the Trips Agreement have not been deemed immediately applicable under Argentine law. In addition, Argentina has not ratified or implemented other multilateral treaties on chip protection, in particular the Treaty of Washington of 1989.

    Semiconductor technology, generally, and topographies, in particular, may be protected under the traditional intellectual property rules applicable to all types of technology, specially patent law and the rules on confidential information. Therefore, matters such as the duration of the relevant rights, ownership and remedies depend on the type of protection used in connection with each specific mask work or topography.

    Duration of right

    Not applicable for this jurisdiction.

    Ownership / licenses

     Not applicable for this jurisdiction.

    Remedies for infringement

    Not applicable for this jurisdiction.

  • Patents

    Nature of right

    Patents are a statutory right. The granting of patents is required by the Argentine Constitution and by different international documents, particularly the Trips Agreement. Patent rights imply an exclusive right to exploit a process or a product. The Argentine Patent Law defines the limits of these exclusive rights, on the basis of the provisions of the Trips Agreement.

    Legal framework

    Patents are governed by the Patent Law – Law 24,481, as amended. In addition, they are governed by the Trips Agreement and by the Paris Convention. Argentina is not a party to the Patent Cooperation Treaty.

    Duration of right

    The basic rule is that patents expire 20 years after the date in which the relevant patent application was filed. Argentina uses a "first to file" system, but it also applies the priority rules derived from the Paris Convention.

    Argentine law provides special rules on compulsory licenses and on patent termination due to lack of exploitation of the patented invention. Compulsory licenses may be granted in case of non-exploitation, competition law violations or sanitary emergencies, among other cases. Patent termination may result when, after a compulsory license was granted for lack of exploitation, no exploitation of the invention takes place for two years after the license was granted.

    Ownership / licenses

    Joint ownership is permissible. The Patent Law includes provisions on the exercise of patent rights by the joint owners. In addition the Civil and Commercial Code rules on joint property apply to patents.

    The Patent law includes rules on licenses. Licenses are not exclusive, unless the parties provide otherwise. Competition law rules are applicable to restrictive clauses included in license agreements.

    Remedies for infringement

    The Patent law provides both civil and criminal law remedies for cases of infringement.

    Civil remedies include the compensation of damages and termination of the infringing activities.

    A complex system of rules for preliminary remedies in patent cases is included in the Patent law. Generally, suspension of an alleged infringer's exploitation requires a preliminary procedure, with the participation of expert witnesses.

    Criminal procedures and sanctions are rare.

  • Trademarks

    Nature of right

    A trademark may consist of one or more words, with or without conceptual content, drawings, commercial symbols, monograms, engravings, prints, seals, images, stripes, color combinations, letter and number combinations, the special graphics of letters and numbers, advertisement phrases, reliefs, and any other sign with distinctive capacity.

    A trademark is normally protected by means of its registration. However, de facto trademarks, that is those that are used but not registered, are also protected in a more limited way.

    Legal framework

    Trademarks are governed by the Trademark Law – Law 22,362, as amended.

    In addition, trademarks are protected by the rules included in Trips Agreement and in the Paris Convention.

    Duration of right

    Registered trademarks are protected for a period of ten years, from the moment of registration. Trademark registration may be renewed indefinitely.

    Registration may be cancelled for lack of use during a period of five years. In addition, renewal of registration requires proof of the trademark's prior use.

    Ownership / licenses

    Ownership is acquired by means of registration. However, use of unregistered trademarks may result in certain rights for the user.

    Trademarks may be subject to joint ownership. The Trademark Law and the Civil and Commercial Code provide the rules applicable to these joint ownership relationships.

    Trademark licenses are possible. They are valid even if they are not registered with the trademark office.

    Remedies for infringement

    The Trademark Law provides both civil and criminal law remedies for cases of infringement.

    Civil remedies include the compensation of damages and the termination of the infringing activities.

    Special preliminary remedies are applicable in cases of trademark infringement. The trademark owner may obtain an injunction against the infringer, when the trademark is registered and its violation is immediately evident.

    Criminal law remedies are rarely used in practice.

  • Trade secrets

    Nature of right

    Argentine law provides protection for trade secrets and confidential information. A complex set of rules creates rights against conduct whereby access is gained illegally to confidential information, or which implies illegal use of trade secrets or confidential information or which results in the unauthorized and harmful disclosure of confidential or secret information.

    Confidential information is characterized by the fact that it is kept in a reserved manner and that it is not generally available for technicians working in the relevant technical field. Trade secrets receive a special degree of protection, particularly under criminal law.

    Legal framework

    Confidential information is governed and protected by Law 24,766. It is also protected by the Trips Agreement and by the Paris Convention.

    In addition, multiple rules and statutes protect confidential information and trade secrets. Labor law protects the confidentiality and ownership of information used in employment relationships.

    Several criminal law rules apply to special types of violations of confidentiality. In particular, disclosure of trade secrets and unfair competition by means of the illegal use or appropriation of trade secrets are subject to criminal law penalties.

    Duration of right

    Confidential information and trade secrets is protected for as long as the relevant information is kept confidential. The degree of protection diminishes if the information ceases to be objectively a secret, due to its previous disclosure or because it has been obtained independently by other parties.

    Ownership / licenses

    Ownership results from the obtention of the information, accompanied by legal or practical measures aimed at restricting access to that information by third parties. No registration requirement is applicable.

    Joint ownership is possible.

    Trade secret or know-how licenses are common and enforceable.

    Remedies for infringement

    Argentine law provides civil and criminal law remedies for cases of trade secret infringement.

    Damages caused by these violations must be compensated. It is also possible to obtain court orders requiring termination of the violation.

    Preliminary remedies include injunctions against further exploitation or disclosure of trade secrets.

    Criminal remedies are applicable in cases of disclosure of trade secrets acquired in the course of employment and other professional relationship, as well as in cases in which the violation of the rights to confidential information or trade secrets results in unfair competition.

  • Other key IP rights

    Nature of right

    Industrial designs

    Industrial models and designs are protected by special industrial property rights. An industrial model or design consists in the forms embodied in or the aspect applied to an industrial or artisan product, which confer an ornamental character to such product.

    Exclusive rights on industrial models and designs result from registration of the relevant model or design.

    Industrial designs

    Industrial designs

    Legal framework

    Industrial designs

    Industrial models and designs are protected by Decree 6673/1963, as amended. They are also protected in accordance with the Trips Agreement and the Paris Convention.

    Duration of right

    Industrial designs

    The rights derived from the registration of an industrial model or design last for a five-year period, counted from the date of filing of the relevant application. The registration may be renewed for two successive five-year period, if the owner requests such renewal.

    Ownership / licenses

    Industrial designs

    Ownership belongs to the author. There is a rebuttable presumption to the effect that the first applicant of an industrial model or design registration is the author of such industrial model or design. Joint ownership is possible, and is governed by the Civil and Commercial Code and by Decree 6673/1963 as amended.

    Industrial models or designs may be the subject matter of license agreements. No registration is necessary for the validity of these agreements.

    Remedies for infringement

    Industrial designs

    Civil and criminal law remedies are applicable in case of infringement. Civil remedies include the compensation of damages and termination of the violation.

    Preliminary injunctions and remedies are possible in accordance with general procedural rules.

    Criminal sanctions have been recently reinforced, but they are rarely applied.

  • Intellectual property in employment context

    Employees

    Special rules on employee inventions are included in the Patent Law and in the Labor Contract Law.

    There are basically three types of invention, from the perspective of employer-employee relationships. First, inventions made in technological areas for which the employee was hired as a researcher or developer belong to the employer. The employee may be entitled to a special compensation if he or she develops a patented invention which exceeds the normal scope of the employee's work. Second, inventions related to the employee's work or related to the employer's know-how or activities belong to the employee, but allow the employer to exercise an option to acquire rights over the invention. If the option is exercised, the employee is entitled to a payment reflecting the value of the invention. Third, inventions that do not fall into the two previous categories belong to the employee.

    Similar rules are applicable in the case of other types of technology or intellectual property rights. In the case of software, the law applies the “work for hire” doctrine, but allows the parties to agree to different contractual rules.

    Consultants / contractors

    The law is not explicit about the rights of consultants and contractors, who do not qualify as employees, with regard to technology and other intellectual property they develop. Generally, the parties may agree as to the rules which will apply to such rights. In the absence of a contractual framework, the technology or intellectual property generated by a consultant or contractor who was hired with the purpose of developing such items that will belong to the person paying for such work.

  • Key commercial contract considerations

    Registration of commercial agreements

    The general rule is that commercial agreements are not registered, and that their validity and effect is not subject to registration requirements. However, certain types of agreement must be registered to be effective or to have full effects against third parties. Agreements subject to registration include business association agreements, certain publishing agreements, certain chattel mortgages and certain agreements related to real estate. International transfer of technology agreements are subject to registration for tax purposes.

    Recognized language of commercial agreements

    Agreements are generally entered in Spanish. However, it is legally possible to enter agreements written in other languages. These agreements must be translated when presented in court. Spanish language may be necessary in consumer transactions.

    Country-specific issues for online content

    Argentina has ratified the WIPO conventions applicable online content and practices. However, enforcement of these conventions is weak.

    Enforceability of online/clickwrap/shrinkwrap terms

    The general rule is that acceptance of terms included in online, click wrap or shrink wrap elements is valid and effective, provided such acceptance is clearly stated and applies to terms that were known to the person giving the acceptance. However, several rules may limit the effects of agreements entered by these mechanisms, particularly consumer protection rules and rules on adhesion contracts.

    Governing law

    The basic rule is that the parties may agree as to the law that will govern their contractual rights and as to the applicable jurisdiction in case of dispute. This freedom of election is subject to several limitations. Non-Argentine law will not be enforced in Argentine courts if it  is contrary to Argentine public policy. Also, certain matters are necessarily governed by Argentine law. For example, if a business association is created in Argentina, its organization and other corporate aspects will be governed by Argentine law. Decisions made by non-Argentine courts or arbitration tribunals are enforceable in Argentina only after going through a special procedure before the Argentine courts, in the context of which the decision will only be enforced if it complies with certain rules, particularly not violating Argentine public policy. In addition, certain matters – ie, deciding the validity of a patent issued in Argentina – are necessarily subject to Argentine jurisdiction.

  • Key commercial contract terms

    Enforceability of warranty disclaimers

    Argentine law provides certain warranties, generally applicable to all types of contracts implying the transfer of rights. These warranties apply, in particular, to the validity of the rights being transferred and to the fitness of the goods regarding which rights are transferred.

    The general rule is that these warranties may be limited or eliminated by agreement between the parties. However, these disclaimers are totally or partially invalid in several types of cases: if the transferor had prior knowledge of the invalidity of the transferred rights or of the deficiency of the goods involved; if the transferor is a merchant and the parties waiving his or her rights are not; and if the warranty disclaimer is included in a consumer or adhesion contract.

    Enforceability of exclusions/limitations of liability indemnification

    Exclusions or limitations of liability indemnification are valid if they meet the general conditions applicable to contractual. However, they may be unenforceable in the following cases: when they extend to willful violations or defaults, or to violations or defaults resulting from gross negligence; when they are imposed in adhesion or consumer contracts; or when they result in the violation or annulment of rights that may not be removed or limited contractually.

    Indemnification

    The basic rule under Argentine law if full indemnification of economic or moral damages caused by illegal conduct, whether that conduct constitutes a contractual or a tort violation.

    The parties are free to include contractual rules as to the extent of their indemnification obligations.

    Penalty clauses and liquidated damages clauses are acceptable, but they may be limited or amended by the courts if their terms are deemed abusive.

    In the absence of contractual provisions, the indemnification's extent will depend on circumstances such as the willful or negligent nature of the violation, foreseeability of the damages caused and the comparative fault of the parties.

    Electronic signatures

    Electronic signatures are valid and effective under Argentine law. However, certain legal effects require that the signature comply with a special certification regime.

  • Key contacts
    Guillermo Cabanellas
    Guillermo Cabanellas
    Senior Partner DLA Piper (Argentina) [email protected] T +5411 41145500 View bio

Mask works / topographies

Remedies for infringement

Argentina

Not applicable for this jurisdiction.

Australia

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.

Austria

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
  • Imprisonment

Belgium

The remedies for infringement of rights in a semiconductor product are the same as those available for copyright infringement. See above remedies for Infringement section under Copyright.

Brazil

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.

Canada

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.

Chile

No text yet.

China

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.

Colombia

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 integrate circuits are protected by the criminal law. Therefore, the infringements might be investigated by the General Prosecutor and penalized by the criminal courts.

 

Czech Republic

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.

Denmark

Remedies for infringement include equitable and reasonable compensation for the use and compensation for losses and further injuries caused by negligent or willful 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.

Finland

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.

France

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
  • 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.

Germany

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

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.

Hungary

In the event of infringement the remedies set forth in the Hungarian Patent Act (see Patents) can be exercised.

India

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.

Civil remedies

Costs for the prosecution of an offense are also recoverable, apart from civil damages and injunctive relief. Statutory damages are not prescribed.

Indonesia

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. There are four criminal provisions under the Layout Design Law.

Ireland

The primary remedies available to a topography right holder in relation to infringement are:

  • Injunctive relief
  • Damages
  • An account of profits and/or
  • Delivery up of the infringing material, seizure and destruction

Israel

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.

Italy

Any person having reason to fear for the infringement of rights belonging to him, or who seeks to prevent the continuation or repetition of an infringement which has already occurred, may commence legal proceedings to ensure that his 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.

Japan

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.

Luxembourg

Compensation for infringement is governed by the same provisions of the legislation on patents for invention. (See "Patents – Remedies for Infringement").

Mexico

Violation of a registered mask work may lead to the payment of damages and losses, which shall be determined by a court of law based on actual damage and loss.

Criminal penalties may be imposed.

Netherlands

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 or definitive removal 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.

New Zealand

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.

Norway

Potential remedies for infringements are injunctive relief, damages and criminal penalties, and illegal copies may be confiscated or destroyed.

Poland

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.

Portugal

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.

Romania

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.

Russia

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
  • Demand seizure of media bearing infringing objects; criminal penalties may also apply under certain circumstances

Saudi Arabia

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

Singapore

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.

Slovak Republic

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.

South Korea

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.

Spain

The owner of a topography may exercise its rights before the courts of ordinary jurisdiction the civil actions and measures provided for in Law 11/1986 on Patents.

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.

Sweden

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.

Switzerland

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.

Taiwan

Available civil remedies:

  • Claim for damage for economic loss and non-economic loss
  • Request to stop or prevent infringement
  • Request for the destruction of integrated circuits containing the infringing circuit layouts
  • Request for publication of the contents of the court judgment, in whole or in part, in a newspaper

Ukraine

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
  • Publication of the court decision on the case concerning IP rights infringement

Further, 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

Not applicable.

United Kingdom

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.

United States

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.