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  • Intellectual property framework

    Overview

    Intellectual property is a right protected by the Constitution of the Republic of Angola. The fundamental intellectual property framework in Angola is provided in 2 main acts: the Legal Regime for the Protection of Copyright and Related Rights and the Industrial Property Law.

  • Commercial contract framework

    Overview

    Angolan law lays down a general principle of contractual freedom, which means that parties are mostly free to establish the terms and conditions to be observed by the contracts they enter into (exceptions are made to mandatory rules legally imposed which will depend on the specific contractual relationship) and are entitled to enter into contracts provided for in the law, but also into contracts that are not provided for in the law.

    Angolan law does not establish a unitary act or set of rules applicable to all commercial contracts. Depending on the specific contractual relationship, commercial contracts may be subject to the provisions of the Civil Code, Commercial Code, Copyright and Related Rights Law, and the Industrial Property Law as well as other specific legislation.

    The aforementioned set of rules changes according to the specific contract in question.

  • Copyrights

    Nature of right

    Copyright covers original literary, scientific and artistic intellectual creations, or works. Registration is not required for the acquisition or maintenance of copyright rights; however, there are certain specific copyright-related acts subject to registration in order to be valid.

    In Angola, copyright comprises economic and moral rights.

    In the scope of economic rights, copyright owners have the exclusive right to use, enjoy and dispose of their work, or to authorize the use of the work, wholly or in part, by third parties.

    Moral rights consist in the right to claim authorship of the work, as well as the right to ensure its genuineness and integrity.

    Legal framework

    Copyrights are governed by Law No. 15/14 of July 31, which introduced the Legal Regime for the Protection of Copyright and Related Rights.

    Duration of right

    As general rule, moral copyrights are unlimited in time and, therefore, are inalienable and imprescriptible. With respect to economic copyrights, copyright protection lasts for a term of 70 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 works in collaboration, copyright expires 70 years after the death of the last surviving author. As per collective works or works originally assigned to a corporate person, copyright expires 70 years from the date of the first licit publication or disclosure, except if the individuals who create it were identified in the version of the work available to the public.

    For an anonymous work, or work that was legally published or disclosed without identifying the respective author, protection is for 70 years after publication or disclosure.

    Please note that, with respect to applied arts and photographic works, economic copyrights protection lasts for a term of 45 years, counted as of January 1 of the first year after the death of the author.

    Economic copyrights related to a broadcaster last up to 35th calendar year after the broadcast.

    Ownership / licenses

    Moral rights are inalienable.

    The copyright owner, as well as their successors or assignees, may authorize the use of the work by third parties or assign economic rights, wholly or partially.

    Granting an authorization to third parties in order for them to divulge, publish, use or explore the work does not imply the transfer of copyright rights.

    Authorization shall only be granted in writing, mandatorily including the parties involved, the title and type of the work, the rights concerned, the duration, place and price conditions.

    Please note that the assigns are only effective against third parties when registered.

    Remedies for infringement

    The copyright owner may request payment of compensation by the agent for damages and losses to repair the damage suffered as a result the infringement, as well as payment of expenses caused by that infringement, which may include legal expenses.

    The amount of the compensation is determined in accordance with the civil liability regime provided for by the Angolan Civil Code, taking into account the amount of material and moral damage suffered by the copyright owner, as well as the profit obtained by the offender.

    When it is proven that the infringing copies affect a right, the Court may order, ensuring that the penalty is proportionate to the seriousness of the offense and taking into account the legitimate interests of third parties, the destruction of those copies and their packaging or their elimination of trade channels by any other reasonable means, without compensation of any kind, in order to avoid any damage to the copyright owner.

  • Mask works / topographies

    Nature of right

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

    Legal framework

    Angolan has enacted no specific rules on protection of mask works or topographies. Although Angola is part of the WTO and has approved the TRIPS Agreement, it has not yet implemented any rules on mask works or topographies protection.

    Semiconductor technology, generally, and topographies, in particular, may be protected under the traditional intellectual property rules applicable to all types of technology, particularly 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

    Patent rights cover new inventions, in all fields of technology, provided that they are new, involve an inventive step and are susceptible of industrial application.

    An invention shall be considered new if it does not form part of the state of the art, which comprises everything, inside or outside the country, made available to the public by means of a written or oral description, by use, or in any other way, before the date of filling of the patent application.

    An invention shall be considered involving an inventive step if it is not obvious to a person skilled in the art.

    An invention shall be considered susceptible of industrial application if it can be made or used in any kind of industry, including agriculture, fishing and handicraft.

    A national patent confers on its owner the exclusive right to exploit the patented invention in Angolan territory.

    Legal framework

    Patents are governed by the following:

    • Chapter II, the Industrial Property Law (Articles 2 to 14)
    • Membership of the World Intellectual Property Organization (WIPO), approved by Resolution No. 9/84 of July 20
    • Paris Convention for the Protection of Industrial Property – approved by Resolution No. 22/05 of August 19
    • Cooperation Treaty patent (PCT) approved by Resolution No. 22/05 of August 19 and
    • Membership of the World Trade Organization (WTO), hence the TRIPS Agreement (Accession November 23, 1996).

    Duration of right

    Patent protection is granted up to a maximum period of 15 years from the date of filling of the patent application.

    Ownership / licenses

    Patents can be transferred in writing, by means of public deed, whether or not for financial reward.

    Patents may also be licensed in writing, wholly or partially, whether or not for financial reward, on an exclusive or non-exclusive basis.

    Transfer of ownership and licenses shall be recorded in the Angolan Institute of Industrial Property to be effective against third parties.

    Remedies for infringement

    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 patent rights, the court may, at request of the interested party, order the 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 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 out of 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.

    Infringement of the exclusive right granted by a patent may be also punishable as crime with imprisonment up to 6 months or a fine.

  • Trademarks

    Nature of right

    A trademark is a sign that distinguishes a company's goods or services, from the goods and services provided by other companies. There are 3 types of trademarks, namely:

    • Nominative: when constituted by letter(s) or word(s)
    • Figurative: consisting of figures or images and
    • Mixed: when it includes a combination of figures and words or letters in its constitution.

    The registered trademark confers to the owner, the right to prevent third parties that do not have their consent from using in the course of trade any sign which is identical or similar to the trademark in relation to goods and/or services which are identical or similar to those for which the trademark is registered.

    Legal framework

    Trademarks are governed by the following:

    • Chapter II, the Industrial Property Law (Articles 29 to 40)
    • Membership of the World Intellectual Property Organization (WIPO), approved by Resolution No. 9/84 of July 20
    • Paris Convention for the Protection of Industrial Property – approved by Resolution No. 22/05 of August 19 and
    • Membership of the World Trade Organization (WTO), hence the TRIPS Agreement (Accession November 23, 1996).

    Angola is not a party to either the Madrid Agreement or the Madrid Protocol. As such, International Registrations (IRs) cannot be extended to Angola. Angola's accession to the Madrid Agreement and/or the Madrid Protocol is currently the subject of consultation, but the position is unlikely to change for a number of years to come.

    Duration of right

    National trademark registrations remain valid for 10 years starting from the date of filing of the application and may be indefinitely renewed for equal periods.

    Ownership / licenses

    Trademarks can be transferred in writing, wholly or partially, whether or not for financial reward. A transfer of the whole of the undertaking shall include the transfer of the trademark except where there is agreement to the contrary or circumstances clearly dictate otherwise.

    Trademarks may also be licensed in writing, wholly or partially, whether or not for financial reward, on an exclusive or non-exclusive basis.

    Transfer of ownership and licenses must be recorded in the Angolan Institute of Industrial Property to be effective against third parties.

    Remedies for infringement

    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 out of 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.

    Trademark infringement is punishable as crime with imprisonment up to 3 months or a fine.

  • Trade secrets

    Nature of right

    Trade secrets are not protected as property in Angola. However, the Angolan Industrial Property Law, in the chapter related to Crimes of Unfair Competition, characterizes as crimes certain conducts involving the unauthorized use of trade secrets. As a result, there is legal protection against the violation of trade secrets.

    Legal framework

    Trade secrets are addressed in article 73 of the Angolan Industrial Property Law.

    Duration of right

    Not applicable for this jurisdiction.

    Ownership / licenses

    Not applicable for this jurisdiction.

    Remedies for infringement

    Remedies available for infringement of trade secrets can include criminal remedies (imprisonment and monetary fine) and civil remedies (injunction to prevent the continuation of infringements and damages).

    Trade secret violation is punishable with a fine, if a more serious sanction does not apply by applying the provisions of the penal code and Law No. 9/89 (Law on Crimes Against the Economy).

  • Other key IP rights

    Nature of right

    Design

    Industrial design means any new arrangement or set of lines or colors that, for industrial or commercial purposes, can be applied to the ornamentation of a product by any manual, mechanical, chemical, simple or combined process.

    The registered design confers to the owner the right to prevent third parties that do not have their consent from using it. The aforementioned use shall cover, in particular, the making, offering, putting on the market, importing, exporting or using of a product in which the design is incorporated or to which it is applied, or stocking such a product for those purposes.

    Industrial designs

    Industrial designs

    Legal framework

    Design

    Designs are governed by Chapter III of the Industrial Property Law (Articles 15 to 28).

    Duration of right

    Design

    Designs registrations remain valid for 5 years starting from the date of filing of the application and may be renewed for 2 consecutive times of 5 years each.

    Ownership / licenses

    Design

    Designs may be licensed in writing, wholly or partially, whether or not for financial reward, on an exclusive or non-exclusive basis.

    Transfer of ownership and licenses must be recorded in the Angolan Institute of Industrial Property to be effective against third parties.

    Remedies for infringement

    Design

    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 designs, 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 out of 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.

    Infringement of the exclusive right granted by a registered design may be punishable with a fine.

  • Intellectual property in employment context

    Employees

    As a general rule, the copyright over a work made under a labor agreement or in compliance with functional obligations is determined by agreement between the parties. In case no agreement exists, it is presumed that the ownership over the work belongs to the respective intellectual creator. In cases where there is a service provision contract, the property rights over the work are transferred to the contractor or entity represented by it.

    The right to patent shall belong to the inventor or their successors in title. Notwithstanding, if an invention was made during the performance of an employment contract in which inventive activity is provided for, the right to the patent belongs to the employer.

    Consultants / contractors

    In principle, consultants and contractors will retain ownership of the intellectual property developed by them, unless otherwise agreed by the parties or provided for in the law.

  • Key commercial contract considerations

    Registration of commercial agreements

    There are no general registration requirements for commercial contracts under Angolan law; however, certain exceptions may arise. Furthermore, Industrial Property Rights licenses are subject to registration within the Angolan Industrial Property Institute (IAPI) in order to be enforceable against third parties.

    Recognized language of commercial agreements

    There are no general requirements under Angolan law that provide that contracts must be written in Portuguese. However, in certain cases – for instance, contracts with consumers – the Portuguese language is mandatory, and, if the contract is to be used in specific situations – for example, for purposes of evidence in court or used with public authorities – translation to Portuguese is required.

    Country-specific issues for online content

    Electronic contracts are regulated under Presidential Decree No. 202/11 of July 22.

    Enforceability of online/clickwrap/shrinkwrap terms

    Contracts may be concluded electronically, provided that it does not affect its validity or effectiveness due to the use of this medium. Please note that general contractual clauses requiring electronic conclusion of consumer contracts are prohibited.

    The provider shall make available to the recipients, before the conclusion, unambiguous minimum information including (i) the contract conclusion process, (ii) whether or not the contract is stored by the service provider and accessibility by the recipient, (iii) the language or languages in which the contract may be concluded, (iv) the technical means which the provider makes available so that errors of introduction which may be contained in the order form may be identified and corrected, (v) the contractual terms and general clauses of the contract to be concluded, (vi) the codes of conduct subscribed and information on how to consult them electronically  and (vii) the effective technical means which allows the recipient to identify and correct inserted errors.

    Governing law

    The interpretation and enforceability of contracts is a matter of governing law. The choice of law by the parties is accepted as a general principle, except when otherwise provided for by law; please, however, note that, in certain cases, there are rules of mandatory application – for instance, in the scope of contracts concluded with consumers.

  • Key commercial contract terms

    Enforceability of warranty disclaimers

    This will depend on the specific warranty. Notwithstanding, the law may provide some restrictions on the enforceability of warranty disclaimers (eg, for reasons of consumer protection).

    Enforceability of exclusions/limitations of liability indemnification

    As general rule, the enforceability of exclusions or limitation of liability is limited under Angolan law. According to civil law, limitation of liability or exclusion of liability concerns the grounds of liability itself and the damages and losses. The law is not absolutely clear when dealing with the matter; therefore, some hold the opinion that the law does not prevent clauses limiting or excluding liability for acts of mere negligence, while others suggest that all clauses of exclusion or limitation are completely null and void.

    Indemnification

    Indemnification clauses in contracts are, in principle, enforceable, but may be subject to restrictions provided for in the law. It is relatively common to stipulate in commercial agreements that the indemnifying party will indemnify and hold harmless the other party against claims of third parties related to the subject matter of the agreement.

    Electronic signatures

    According to Angolan law, a qualified electronic signature is equivalent to an autographic signature in paper documents. An electronic document shall only be deemed to be signed for purposes of evidence where it meets the requirements set by the law on electronic signature and certification.

  • Key contacts
    Murillo Costa Sanches
    Murillo Costa Sanches
    Of Counsel DLA Piper [email protected] T +351 213 583 659 View bio
    Joni Garcia
    Joni Garcia
    Associate DLA Piper ADCA Angola [email protected] T +244 926 612 525

Trademarks

Remedies for infringement

Angola

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 out of 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.

Trademark infringement is punishable as crime with imprisonment up to 3 months or a fine.

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 and the principle of exhaustion are similar to those applicable to copyright infringement.

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

The owner of the trademark can generally require the cessation of acts that violate the trademark, the indemnification of damages, the implementation of necessary measures to prevent the infringement from continuing, and the publication of the judgment at the expense of the convicted person, through advertisements in a newspaper of the holder's choice.

The law provides for criminal penalties from 25 to 1,000 UTM (approx. 1,600 to 65,000 USD).

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 or
  • 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 shall request the opinion of the Andean Court of Jurisdiction of the CAN on the case prior to the taking of the decision and shall apply and consider the opinion of the Andean judge.

Furthermore, trademarks are protected by criminal law. For this reason, the infringements may be investigated by the general prosecutor and penalized by the criminal courts with fines and prison sentences between 4 and 8 years.

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 willful.

French law prohibits both direct infringement and contributory infringement.

Trademark infringement actions may be brought before specialized courts (Paris courts having exclusive jurisdiction for EUTMs), 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.

Since 2020, the National Institute of Industrial Property (INPI) has exclusive jurisdiction for trademarks cancellation and revocation actions, when such actions are brought as a principal claim and are based on an absolute ground for nullity, or a relative ground for nullity related to the existence of certain prior rights, or a ground for revocation of any kind. French courts remain competent for other types of actions.

Since 2019, such actions generally need to be brought within 5 years of the acts concerned, provided such action is not subject to any other statutes of limitations (except for well-known trademarks).

In determining the amount of damages to be awarded (compensatory – not punitive), French courts take into

account distinctively:

  1. The negative or detrimental economic consequences of infringement, including lost gains and losses suffered by the rights holder
  2. The moral harm suffered by the rights holder and
  3. 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 license. 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 EUR300,000 (or EUR750,000 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, SAR

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. Criminal sanctions 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 with reason to fear for the infringement of rights belonging to them, or who seeks to prevent the continuation or repetition of an infringement which has already occurred, may commence legal proceedings to ensure that their right is recognized and the infringement is put to an end. In such circumstances, the right holder will be entitled to remedies, 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 the trademark owner to collect evidence of the infringement through access to the infringer’s premises (or other places where the goods are stored) at the presence of a bailiff and, where necessary, of an expert appointed by the court.

Criminal sanctions 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 25 February 2005 as approved by the Law of 16 May 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 payment of damages and losses, which shall be determined by a court of law based on actual damage and loss. Such payment of damages and losses will in no case be less than 40 percent of the public sale price of each product or the provision of the services that involve a violation of any of the intellectual property rights governed by the Industrial Property Law (Ley de la Propiedad Industrial).

Criminal penalties may be imposed.

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. In practice, a cap is applied to the legal fees, depending on the complexity of the case.

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.

Philippines

The owner of a registered mark may recover damages from any person who infringes their rights, and the measure of the damages suffered shall be either (i) the reasonable profit which the complaining party would have made, had there been no infringement, or (ii) the profit which the infringer actually made out of the infringement. In the event such measure of damages cannot be readily ascertained with reasonable certainty, then the court may award as damages a reasonable percentage based upon the amount of gross sales of the infringer or the value of the services in connection with which the mark or trade name was used in the infringement of the rights of the complaining party.

The award of damages may be doubled in cases where actual intent to mislead the public or to defraud the owner is shown.

Injunction and impoundment are also available remedies.

In any suit for infringement, the owner of the registered mark shall not be entitled to recover profits or damages unless the acts have been committed with knowledge that such imitation is likely to cause confusion, cause mistake or deceive. Such knowledge is presumed if the registrant gives notice that their mark is registered by displaying with the mark the words ‘”Registered Mark” or the letter R within a circle ® or if the defendant had otherwise actual notice of the registration.

Criminal action is also available, independently of civil and administrative sanctions.

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:

  1. Demand to stop infringement
  2. Demand to redress damages in full
  3. As an alternative to claiming damages, to demand the monetary compensation in the amount from RUB10,000 to RUB5 million, or in double the amount of the cost of counterfeit originals or imputed license fee and
  4. 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, China

  • Claim for damages
  • Request to stop or prevent infringement
  • Request for destruction of infringing articles, materials and implements used in infringing the trademark

  • Apply to the Customs authorities for tentatively seizing the imported or exported goods that infringe the trademark rights

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

In addition, 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 using infringing marks.