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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

Trademarks

Remedies for infringement

Argentina

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.

Australia

Where infringement of a registered right is established, the relief that a court may grant includes an injunction to prevent further infringement and either damages or an account of profits at the plaintiffs option, and legal costs. Registered trademark owners may also give Australian Customs Service a notice objecting to the importation of goods that infringe their registered trademarks.

If a trademark is not registered and another person uses it, a passing off action under common law or a claim for a breach of the prohibition against misleading or deceptive conduct (under the CCA) may be pursued. Successfully pursuing an action for passing off can be considerably more difficult than taking action under the TMA because an action for passing off requires proving goodwill or reputation in the trademark and proving that use of the trademark has misled or deceived consumers as to the origin of goods and services sold under the mark.

Austria

Civil remedies for infringement of trademarks include:

  • Cessation of infringement (preliminary or permanent injunction)
  • Claim for elimination of the circumstances constituting the infringement
  • Rendering of account
  • Publication of judgment
  • Monetary relief

Criminal remedies for infringement of trademarks include:

  • Monetary fine
  • Imprisonment

Registered marks can be filed with Austrian customs to prevent importation of goods that contain infringing marks.

Belgium

The remedies for trademark infringement are similar to those available for copyright infringement. See above remedies for Infringement section under Copyright.

Brazil

Criminal remedies for trademark infringement can include: imprisonment, monetary fine, seizure of infringing products and destruction of infringing trademarks.

Civil remedies for trademark infringement can include: injunction to prevent the continuation of infringements, damages. Interested parties may also file a court action requesting a cancelation of the trademark registration before the Federal Court.

Canada

The owner may seek civil remedies, including injunction, an accounting of profits, delivery up (a remedy that requires that the infringing articles must be handed over to the trademark owner), destruction, exportation or other disposition of the infringing wares or general damages.

Registered trademark owners may seek an action for trademark infringement and depreciation of goodwill under the Trademarks Act.

Owners of registered trademarks may apply to the court for an order prohibiting the importation or distribution of infringing goods. Owners may also file a Request For Assistance with the Canada Border Services Agency to help prevent the importation of counterfeit or infringing goods into Canada.

Punitive damages may be available where the infringement is particularly egregious or appalling. Criminal penalties are also available.

Chile

Owner of the Industrial Property right can generally require:

  • Cease of acts that violate the protected right
  • Indemnification of damages
  • Implementation of necessary measures to prevent the infringement from continuing

Fines that go from 25 to 1.000 UTM (approx. USD$2,000 – 73,000) may also be enforced.

China

In case of trademark infringement, the trademark owner can either file a complaint with the local administrative authority or bring a lawsuit to the People's Court.

The local administrative authority may order the infringer to cease the infringing activity immediately, confiscate and destroy the infringing goods and any instruments specifically used to manufacture the infringing goods and counterfeit the registered trademark, and may even impose a fine; where the circumstances constitute a criminal offense, criminal liability shall be imposed in accordance with the law.

The amount of damages for trademark infringement shall be the profit that the infringer has earned as a result of the infringement or the losses that the party infringed has suffered as a result of the infringement, including any reasonable expenses the infringed party has incurred for its efforts to stop the infringement. If neither the illegal profit nor the losses suffered can be determined, a statutory damage up to ¥3 million (or up to ¥5 million as of November 1, 2019 under the amended Trademark Law) shall be awarded according to the circumstances of the case.

Injunctive relief is available.

Colombia

The owner may initiate action against any third party that without his consent:

  • Uses the trademark to distinguish similar goods and services
  • Removes or alters the trademark for commercial purposes
  • Commercializes or advertises products that include the registered trademarks
  • Uses an identical or similar sign to identify other goods or services that may lead to confusion
  • Uses a similar trademark that may cause any economic or commercial harm to the owner
  • Makes public use of the trademark and such use causes a negative impact on the owner's prestige

For these purposes, the owner of a trademark may claim its right with the ordinary jurisdiction of the country in which its right has been recognized and the infringement has taken place. The Judge will request the opinion of the Andean Court of Jurisdiction of the CAN on the case prior to the taking of the decision, and will apply and consider the opinion of the Andean judge.

Trademarks are protected by the criminal law. For this reason, they can be investigated by General Prosecutor and penalized by criminal courts.

Czech Republic

Possibility to claim actual damages for infringement.

Possible to seek preventing importation of infringing goods.

Injunctive relief is also a possible remedy.

Criminal penalties are possible.

Denmark

An interim injunction can be granted.

An equitable remuneration for the use of the mark and further damages can be awarded. The equitable remuneration is usually estimated to a reasonable royalty, and in case of no established license practice, it is based on an estimate. The damages are estimated on the basis of loss of sale, market disruption and internal losses. The assessment of damages is usually based on an estimate and the courts usually estimate a total amount covering both the equitable remuneration and damages.

Compensation for non-economic damages can be awarded.

A fine can be imposed in case of intent or gross negligence, and imprisonment can be sentenced in case of intent and special circumstances.

Finland

Remedies for trademark infringement include a reasonable, non-punitive compensation for the use of the trademark, typically calculated on the basis of what an applicable license would have cost. In case of negligence, compensation for other damages may also be awarded. Reasonable legal costs can also be demanded from the infringing party. An injunction can be granted by a court in infringement cases, as well as the destruction of infringing goods. Criminal penalties such as fines and even imprisonment are possible.

France

Remedies are available regardless of whether the infringement is willful. No punitive damages will be awarded, even if the infringement is wilflul.

French law prohibits both direct infringement and contributory infringement.

Trademark infringement actions may be brought before specialized courts (Paris courts having exclusive jurisdiction for EUTM's), usually after having gathered evidence via an infringement seizure (saisie-contrefaçon), by way of an action on the merits and a summary action, in order to obtain an interlocutory injunction.

An injunction against the further manufacture, import, offer, sale, use or storage of the work can be ordered with immediate enforceability and subject to 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 on request by the trademark owner, the court can set the damages as a lump sum. The lump sum must be greater than the royalties that would have been owed if the infringer had sought a licence. This amount is not exclusive of compensation for moral harm caused to the trademark owner.

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).

Before the criminal courts, an infringer faces a fine of up to €300,000 (or €750,000 in certain circumstances) and imprisonment for up to 3 years (7 years in certain circumstances).

Trademarks can be filed with French Customs to prevent importation of infringing goods, provided those goods originate from outside the European free market.

Germany

Different remedies are possible but the most commonly sought remedies are 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.

Besides that, rights holder or exclusive licensee may make a claim for recall and destruction of infringing products. Customs seizure is available to stop import into German or European territory (based on type of trademark).

Statutory costs for legal prosecution (court costs and attorney fees) are recoverable up to a cap established by the German law.

Hong Kong

The remedies for infringement include damages, an account of profits and injunctive relief, order for delivery up of infringing goods, material or articles and order for such goods, materials or articles to be forfeited, destroyed or disposed of outside the channels of commerce.

Relief for groundless threats of infringement is available, as an implementation of the TRIPS Agreement. 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.

Criminal sanctions for trademark counterfeiting under Trade Descriptions Ordinance (Cap. 362) is also available as a possible remedy.

Hungary

Article 27 of the Trademark Act contains special remedies, eg, the following can be requested from the court: establishing the infringement, claim for cease and desist, amendment declaration, providing information on the infringement, and among others confiscating or destroying the products affected by the infringement and also the tools and materials used for the infringement.

In regards to financial remedies, compensation for damages according to the civil law and restitution of the economic gains achieved through the infringement can be requested.

Attorneys' fees can be recovered, although the court has the power to reduce such fees, should they be excessive.

Injunctive relief is also a possible remedy even before initiating a lawsuit. Ex parte injunctive relief can be also requested.

India

Civil remedies include injunctive relief, civil damages, an account of profits, delivery of infringing goods for destructions and cost of legal proceedings.

Criminal remedies can include imprisonment for a term not less than six months and up to three years, and fine not less than INR 50,000, and up to INR 200,000.

Indonesia

Compensation, injunction or a combination of the two may be ordered by the Commercial Court as remedies for infringement. Criminial sactions are in the form of imprisonment and/or fine.

Ireland

The primary remedies available to a trade mark owner in relation to infringement are:

  • Injunctive relief
  • Damages
  • An account of profits
  • Order for erasure, removal or obliteration of the offending sign from the infringing goods, articles or materials and/or
  • An order for delivery up of the infringing goods, articles or materials

The European Union Trade Mark Regulations 2018 amended the Trade Marks Act 1996. These regulations entitle a trade mark owner to seek to stop counterfeit goods passing through Ireland and to stop infringing goods earlier in the supply chain, for example, where there is a risk that a trade mark is being used for ancillary or preparatory infringing acts (eg, being affixed on packaging, labels or tags for counterfeit goods).

Israel

Injunctive and monetary relief are both available for trademark infringement. In addition, statutory damages for passing off under the Commercial Torts Law 1999 can serve as a complementary claim to trademark infringement.

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, such as injunction and damages.

Injunctions can be granted also as preliminary measures, by way of a summary proceedings, which could stop the infringement within a very short time, and also ex parte. The court may also order the seizure of the products and of all matters related to the infringement.

Another relevant remedy is the so-called "search order," which allows patent owner to collect evidence of the infringement through a raid in the presence of a bailiff and, where necessary, of an expert appointed by the court.

A popular means of protection is the so-called "search order", which allows the patent owner to collect evidence of the infringement through a raid in the presence of a bailiff and, where necessary, of an expert appointed by the court. In order to stop the infringement, the court may also order the seizure of the works or the products and of all matters constituting an infringement of the patent.

Criminal penalties may also apply under certain circumstances.

Japan

Monetary damages can be levied. 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.

Measures are available to restore the business reputation of the trademark holder and exclusive licensee (eg, publishing an apology in a newspaper).

Each joint owner can seek a remedy for infringement without the other owner's consent.

Criminal penalties are possible for trademark infringement.

Luxembourg

The possible remedies for trademark infringement are set out in articles 2.21 and 2.22 of the Benelux Convention on Intellectual Property of February 25, 2005 as approved by the Law of May 16, 2006:

  • Compensation of material and non-material damages, which consists of:
    • Losses suffered, including costs and expenses imposed on it for the investigation and determination of the infringements and the inconveniences connected with the proceedings the trademark holder is forced to institute, loss of reputation, prejudice to the commercial value of the trademarks and loss of market share
    • Loss of profits
  • The handing over of the materials and instruments that were mainly used for the production of the infringing goods
  • In case of acts committed in bad faith, transfer of the profit enjoyed as a result of those infringing acts

Mexico

Violation 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

The possible remedies for trademark infringement are set out in Articles 2.20, 2.21 and 2.22 of the Benelux Convention on Intellectual Property, which also allow both interim and final injunctive and monetary relief.

Monetary relief also entails the possibility to set the damages as a lump sum as well as the possible conveyance to the claimant of infringing goods, and in appropriate cases, of the materials and implements principally used in the creation or manufacture of these goods. In case of a bad-faith infringement, monetary relief also includes the possibility to claim payment of unfair profits made. A number of supplementary, injunctive sanctions may be applied for, such as:

  • A recall or definitive removal from the channels of commerce 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
  • The dissemination of the decision, including the displaying and publishing of the decision, in full or in part

A European rule of exhaustion applies, which means that the trademark owner shall not be entitled to prohibit the use in relation to goods which have been put on the market in the European Community under that trademark by the trademark owner or with the owner's consent. This rule of exhaustion does not apply where there exist legitimate reasons for the trademark owner to oppose further commercialization of the goods, especially where the condition of the goods is changed or impaired after they have been put on the market.

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

The remedies available for infringement of a trade mark include damages, an account of profits and an injunction. In certain situations criminal proceedings may be commenced for trademark infringement.

Trade mark owners may also give notice to the New Zealand customs service requesting that they detain any goods in the control of customs, on which or in physical relation to which an infringing sign is used.

In addition, remedies may be sought under the Fair Trading Act 1986 for misleading and deceptive conduct as well as pursuant to the tort of "passing off."

Norway

The remedies for trademark infringement include equitable and reasonable compensation for the use and compensation for losses and further injuries caused by negligent or willful infringement. The court can also order products or materials infringing the trademark be recalled from stores, delivered to the trademark owner or destroyed.

Injunctive relief and criminal penalties are also possible remedies.

Poland

Polish law provides remedies for trademark owners to combat trademark infringement, such as demands to cease infringement, to compensate for damage incurred (also by paying a license fee), and the return of unfairly gained profits. Furthermore, under Polish law it is possible to pursue claims to prohibit actions constituting a threat of trademark infringement. The trademark owner may also seek a preliminary injunction before initiating the main proceedings, under which, for example, the infringing actions – such as manufacturing, offering and selling the infringing products – must be ceased and the infringing goods seized and held for the duration of the main infringement proceedings before the court. The possibility to file a request for information required to pursue claims against the infringer – when an infringement is highly probable – is also available to the right-holder (before the main proceedings or during the course thereof).

The same rules as in patent infringement cases apply with regard to the court order concerning costs of the proceedings.

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 trademarks, the court may, at 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 a 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 in 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.

Trademark counterfeiting is punishable as crime with imprisonment up to 3 years or a fine.

The sale of counterfeit products is punishable as crime with imprisonment up to 18 months or a fine.

Romania

Damages can include actual damages and/or loss of profits resulting from the infringement. Trademark infringement is considered a criminal offense punishable in certain conditions with imprisonment.

Costs and reasonable attorneys' fees are recoverable.

Injunctive relief is also an available remedy. The owner of the registered marks may file a request for intervention with the Romanian customs in order to prevent importation of counterfeit products.

Russia

The trademark owner or exclusive licensee is entitled to the following primary remedies:

  • Demand to stop infringement
  • Demand to redress damages in full
  • As an alternative to claiming damages, to demand the monetary compensation in the amount from 10,000 to 5,000,000 Russian Rubles, or in double amount of cost of counterfeit originals or imputed license fee
  • Demand seizure or destruction of media bearing infringing objects

Criminal or administrative 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 GCC Trademark Law stipulates certain penalties for trademark infringement depending upon the nature of the offense. For example, it is an offense to, amongst others, counterfeit or imitate a registered trademark so as to mislead or confuse the public, or to use in bad faith a trademark owned by others on goods or services (without authorization). These offenses carry a jail sentence of between one month to three years or a fine between SAR 5,000 and SAR 1 million, or both. Penalties may be doubled for repeat offenders. Additional penalties may include potential closure of the place of business for between 15 days to six months and publication of the decision at the expense of the offender. 

Singapore

Remedies available to the owner of a trademark include injunction, a monetary award (damages, an account of profits and statutory damages) and an order for erasure of the offending sign or for disposal of the infringing goods.

Slovak Republic

In the case of an unauthorized interference with the rights, the owner of a trademark 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 that may be the subject of a license agreement (such as trademark), 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

The remedies available for infringement are:

  • Criminal sanction
  • Preliminary injunction
  • Permanent injunction
  • Damages

Spain

The owner of a registered trademark may, before the jurisdictional authorities, take appropriate civil, criminal or administrative actions against those infringing his right and request the measures necessary for protection of the trademark, without any prejudice to submission of the case to arbitration, where possible.

In particular, an owner whose right to a trademark is infringed may in a civil action claim:

  • The cessation of the acts infringing his right
  • The compensation for the damage suffered
  • The adoption of the measures necessary to avoid the continuation of an infringement and in particular, the withdrawal from economic circulation of the goods, packaging, wrappers, advertising material, labels or other documents in which the infringement of a trademark has been manifested
  • The destruction or transfer for humanitarian purposes, where possible, as chosen by the party concerned and always at the expense of the guilty party, of the goods unlawfully identified with the trademark which are in the possession of the infringing party, except where the nature of the good allows the distinctive sign to be removed without affecting the good itself, or where destruction of the good would do disproportionate harm to the infringing party or owner, according to the specific circumstances of each case as determined by the court
  • The publication of a decision at the expense of the guilty party by means of announcements and notifications to the parties concerned

Sweden

The remedies for trademark infringement include equitable and reasonable compensation for the use and compensation for losses and further injuries caused by negligent or willful infringement. Costs and reasonable attorneys' fees can also be recoverable.

It is possible to file customs actions applications to prevent importation of infringing goods, and to obtain a court order for destruction or alteration of infringing products and equipment used in the manufacture thereof.

Injunctive relief is also a possible remedy.

Criminal penalties are possible.

Switzerland

Remedies for trademark infringement include declaratory actions, actions for performance, damages, confiscation and destruction.

Actual damages can be monetary loss suffered by the trademark owner or profits gained by the infringer.

Injunctive relief and publication of judgments are also possible remedies.

It is possible to seek the prevention of importation of infringing goods.

Criminal penalties are also possible.

Taiwan

Available remedies:

  • Claim for damage for economic loss and non-economic loss
  • Request to stop or prevent infringement
  • Request for destruction of infringing articles and the materials or implements used in infringing the trademark
  • Application to the customs authorities to suspend the release of import or export goods that infringe the trademark rights

In addition, criminal punishments (such as imprisonment, detention, fine, and confiscation) are possible.

Ukraine

The trademark holder or authorized person (eg, licensee) may seek the following remedies under Ukrainian law:

  • Termination of the infringement
  • Cancellation of the infringing trademark certificate
  • Reimbursement of damages (including loss of profit)
  • Recognition of a right
  • Seizure of infringing goods
  • Prohibition of import
  • Publication of the court decision on the case concerning IP rights infringement

Further, the Criminal Code of Ukraine dated April 5, 2001 contains criminal liability for infringements of intellectual property right with regard to trademarks.

United Arab Emirates

In the UAE, trademark infringement is a criminal offense. Article 37 of the Trademark Law deals with the various offenses which range from the counterfeit and imitation of trademarks to the use and sale of products bearing an imitation of a trademark.

A trademark owner can petition the judge of urgent matters on an ex parte basis for a Precautionary Measures Order on the grounds that one or more of the crimes set out in the Trademark Law is being committed. However, civil proceedings must be commenced very quickly afterwards which limits the effectiveness of this type of Order.

Involvement in counterfeiting is punishable under the Anti Commercial Fraud Law. Penalties include imprisonment and fines up to AED (one) 1 million (approx. USD 270,000) for pharmaceutical and food products and AED 250,000 (approx. USD 68,000) for other products. Penalties can be doubled in case of repeat violations.

UAE law does not explicitly provide trademark owners with the right to apply for an injunction. In practice, the UAE Courts have granted "stop" orders to successful applicants.

The court may order the destruction of goods bearing unlawful marks and/or the publication of the judgment in the Trademark Journal and in any one of the Arabic newspapers published in the UAE at the expense of the defendant.

United Kingdom

Remedies for infringement include injunctions (or interdicts in Scotland), damages, an account of profits, orders for erasure, removal or obliteration of offending sign, orders for delivery up or destruction. No statutory damages are available. The starting point for the damages calculation is generally a reasonable license fee. Criminal penalties are also possible for certain types of infringement. There is also a customs seizure regime.

There is an actionable right in the UK against those who make unjustified threats of trademark infringement including if relying on EU Trade Marks as well as UK national marks. Companies should take care when writing to a third party alleging infringement or use of a similar mark. 

United States

Damages can include actual damages or lost profits resulting from the infringement.

Treble damages are possible for willful infringement. Costs and reasonable attorneys’ fees can be recoverable for willful infringement.

Injunctive relief is also an available remedy. Registered marks can be filed with US Customs to prevent importation of goods that contain infringing marks.