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Justice in the field of protection of intellectual property rights mission and objectives Overview of practice of Intellectual property related dispute.

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Presentation on theme: "Justice in the field of protection of intellectual property rights mission and objectives Overview of practice of Intellectual property related dispute."— Presentation transcript:

1 Justice in the field of protection of intellectual property rights mission and objectives Overview of practice of Intellectual property related dispute resolution in the European Union Elisabeth Logeais (France) UGGC Avocats Design Rapporteur of the ICC Intellectual Property Commission International Conference, 22 April 2013, MOSCOW

2  The EU framework : harmonized general rules for determination of jurisdiction and applicable law  2000 : Brussels Regulation on jurisdiction and enforcement of civil & commercial judgments  Art. 5: Special jurisdiction rules depending on the substance of the matter torts → courts for the place where the harmful event occurred or may occur contract matters → courts for the place of performance of the obligation in question  Art. 23 : a choice of jurisdiction clause is possible for disputes arising from a specific legal relationship  Art. 33 & al : a judgment given in a Member State is recognized in the others Member States without any special procedure  2007 : Rome II Regulation on law applicable to non-contractual obligations; Art. 8 on infringement of IPRs : the applicable law = law of the country where protection is claimed or for community IPRs, the law of the country in which the act of infringement was committed SPECIALIZED COURT SYSTEM

3  The EU framework : focus on EU wide IPRs and improved enforcement  1993 Community Trademark Reg (now codified 2009 CTM reg.) : one single trademark title throughout the EU with specialized court (s) in each member State having exclusive jurisdiction for all infringement actions and counterclaims for revocation or declaration of invalidity  2001 Community Design Reg. (registered and non registered designs) : specialized courts designated in a similar fashion as in the CTM reg.  2004 IPRS Enforcement Directive : provides harmonized proceedings, measures and remedies to protect IPRS before Member States courts  2013 Unitary Patent Court : Court of First Instance (Central division with seat in Paris and 2 sections in London and Munich as well as local and regional divisions) + Court of appeal in Luxemburg SPECIALIZED COURT SYSTEM

4  Court of Justice Completed cases in IP (2007-2011)  General Court Completed cases in IP (2007-2011) % of IP appeals decisions (2007-2011) STATISTICS OF IP DISPUTES ADDRESSED BY THE EU COURT SYSTEM* *mainly actions relating to CTMs for the General Court and preliminary rulings for the Court of Justice. In 2011, IP related cases represented 30% of civil and commercial litigation before the EU General Court (source :, annual report ) New cases of IP (2011) Number of cases pending December 31, 2011 361

5  French IP courts system  10 specialized courts of first instance having exclusive jurisdiction on litigation of IPRs + court of appeals + one High Court (Cour de cassation). Infringement and counterclaims for nullity of the IPR are decided by same court.  Paris court solely competent for French patents, community trademarks and designs, and will be the seat of the central division for the Unitary Patent.  Non IP specialized criminal courts for IP offences and residual competence of labor and administrative courts A 2011 report assessing the implementation of the enforcement Directive mentions 3641 IP related decisions of first instance rendered in 2009 (out of which 1802 involving patents and trademarks). Average duration until a decision of first instance : between 15 and 22 months. Thoughts of a fast-track IP channel for smaller cases. Limitation of the number of pleas. Quick injunctions are available and efficient. Mediation is rarely used. Arbitration clauses are found in complex licensing agreements where confidentiality matters : leaves room to some interim and provisional measures ordered by national courts (In 2012, ICC Arbitration court heard 46 IP cases (39 on TM/patent licensing, 3 cases on know-how and 4 other IP related cases ) SAMPLE IP COURT ORGANIZATION

6  English IP courts system –The UK Patents County Court (PCC) has jurisdiction for patents, trademarks, designs and copyrights disputes. The reform in force since October 2010 focused on cheaper and quicker justice for IP disputes where damages to be awarded shall not exceed 500 000 £. –Key features of the PCC proceedings are : the costs cap of 50 000 £ (which is the maximum costs incurred by the winning to be borne by the loosing party) and the case management conference with reduced length of hearings (2 days). –50 cases reported to have been decided in 2012 : 40 % TM, 25 % copyright, 20 % patents, 13 % designs (source : Managing IP magazine April 2013) –A “Small Claims Tracks” opened in October 2012 for claims up to £5,000.  German IP courts system –IP cases are handled by civil courts(Landgericht) and some courts are specialized in particular for patent infringement (Mannheim, Düsseldorf) and one court (Munich) for patent validity. –Key features of German IP litigation are : bifurcation, a quick and easy grant of injunctions, limited time to reach a first decision (10 to 18 months) and specialized technical judges.  A general trend and effort to facilitate speedy, reliable and affordable court resolution of IP disputes SAMPLE IP COURT ORGANIZATION

7  Articles 6-8 of IPR Enforcement Directive : Wide empowerment of courts to order measures for preserving evidence, subject to compliance with the following principles : protection of confidential information, bond posting to prevent abuses, possibility of revocation of the order granting such measures.  Two main innovations introduced by the Directive : (i) the procedure of “seizure-infringement” after the French practice and (ii) the new “right of information” on the origin and distribution networks of infringing goods and services EVIDENCE COLLECTION AND ASSESSMENT

8  “ Saisie-contrefaçon” in French (seizure-infringement)  Efficient ex-parte order granted by the judge upon request of the IPR holder willing to seize evidence hold by the alleged infringer or a third party  The authorized IPR holder sends a bailiff, accompanied as the case may be by a patent agent and the police, to visit the premises of a company where evidence of infringement of his IPR is likely to be found  Golden rule : the seizure operations must be carried in strict compliance with the terms of the court order, subject to revocation of the order or cancellation of the operations (bailiff’s report and products + documents seized cannot be used as admissible evidence of infringement on the merits). In particular, seizure of confidential information must be “organized” by the order and anticipated anyway on the spot of the operations  The IPR holder must bring an infringement action on the merits within 20 working days or 31 calendar days, failing which the evidence collected during the seizure will be denied all evidentiary weight  A very efficient mean to collect infringement evidence, which has been extended to all IPRs (patent, trademarks, copyright, designs, also in France to indication of origin…) MEASURES FOR PRESERVING EVIDENCE OF INFRINGEMENT

9  Right of information  Article 8 of IPR Enforcement Directive : Courts have the power to order, upon a justified and proportionate request of the claimant, that information on the origin and distribution networks of infringing goods or services is provided by the infringer and/or any person who was found in possession of the infringing goods or using the infringing services or providing services used in infringing activities, on a commercial scale.  This right of information is incorporated into French IP code, yet without reference to the concept of “commercial scale ” and with the safeguard provision that the supply of the relevant information (names of producers, manufacturers, distributors, suppliers, etc, quantities and prices) may not be ordered if there is a “legitimate impediment”. The prevailing approach in French courts is now (i) to admit that this right of information can be exercised before infringement is decided by the court and (ii) to resent to authorize this right of information if the plaintiff abstained from seeking evidence by conducting a preliminary seizure-infringement for instance MEASURES FOR PRESERVING EVIDENCE OF INFRINGEMENT

10  IPR infringement can be proved by any means yet the seizure-infringement is a preferred way. French courts tend to sanction invading means of obtaining evidence which have not been authorized by a judge ( disguised seizures) or use of standard civil provisions to obtain communication of evidence of infringement.  Use of experts : normally each party hires at his own costs an expert and provides experts’ reports or consultations of professors of law. The Court may also order an expertise and the subject matter may be determined in agreement with the parties.  In French patent litigation, between 2000 and 2009, in 12 patent cases where an expertise on the damage was ordered, 80% of them were resolved during the expertise as the parties settled the disputed amount.  Before the UK Patents County Court, the expertise is included in the scale of cost (£7,000 can be allowed to the winning party if an expertise was carried). MEASURES FOR SECURING EVIDENCE OF INFRINGEMENT

11  Article 9 of the IPR Enforcement Directive:  Interlocutory injunction granted by courts upon request of the claimant to prevent any imminent infringement of IPRs or stop the continuation of an infringement, subject to adequate security and subsequent action on the merits  Blocking measures : seizure or delivery up of infringing goods to prevent their entry or movement in the channel of commerce; seizure of property of the alleged infringer including blocking of bank accounts and other assets in the event of uncertain recovery of damages. Under French corresponding provisions Who has standing to seek an interlocutory injunction ? The IPR owner and his exclusive licensee What is the preferred way : exparte or interpartes request, both being available ? Courts favor inter partes orders. How does the court assess satisfaction of the requirement that the applicant provides reasonable available evidence that the rightholder ‘s right is being infringed ? The French approach is that only obvious nullity of the IPR makes the infringement improbable. But the judge should not asses the likelihood of success of the infringement action on the merits. PRECAUTIONARY MEASURES

12  Article 13 of IPR Enforcement Directive on damages  to calculate damages, the courts must take into account all appropriate aspects, such as the negative economic consequences, including lost profits, any unfair profits made by the infringer and in appropriate cases, elements other than economic factors, such as the moral prejudice caused to the rightholder.  The courts may as an alternative, award a lump sum corresponding at least to the minimum royalties or fees that should have been paid to the claimant if the infringer had requested an authorization to use the IPR. From compensation damages to beyond compensation damages ? In France the lump sum is only awarded if the rightholder asks for it In patent cases, a court appointed expert usually assesses the losts profits and unfair profits, rarely in trademark cases Plaintiffs must submit evidence of the harm suffered (advertising expenditure, margin, brand reputation, dilution of their image, etc ) No refunding of damages paid by an infringer in case of subsequent nullity of the patent (French High court) ASSESSMENT OF DAMAGES

13  In the French system : –The court sets discretionarily the amount of costs to be paid by the loosing party to the winning party, taking into account fairness and economic situation of the parties. Such amount does not depend on the claimed amount of damages and the court considers proven expenditure including attorneys’s fees. Average costs paid by the loosing party start from 10 0000 € up to 50 000 €. In general, courts dismiss claims of indemnification for abusive court action (in one recent case, the Paris court condemned the unsuccessful applicant of a preliminary injunction to pay 100 000 euros as contribution to defendant‘s costs).  In the English system: –In front of the PCC, the maximum amount of damages is of £500,000 and the maximum of cost reimbursed is of £50,000. But the cost for a party can be far more important with attorney and experts’ fees.  In the German system: –Attorney and patentanwalt fees, plus court’s fees and eventually expert’s fees. –All fees of the winning party are borne by the loosing party; the court and attorney’ s fees are calculated upon a scale depending of the value of the case, which is fixed by the patentee bringing the infringement action and acknowledged by the defendant and finally the court. ASSESSMENT OF COSTS

14  Art. 10 and 11 of the IPR Enforcement directive The courts may order :  Recall or removal from the channels of commerce or destruction  Injunction prohibiting the continuation of the infringement, subject to a recurring penalty payment  Injunction against intermediairies whose services are used by a third party to infringe an IPR  In practice, courts also order:  Publication of the judgment, cancellation of a trademark or a domain name, etc  EU- wide injunctions for community IPRs (ECJ, DHL-Chronopost, 12 April 2011, C-235/09 available at NON MONETARY RELIEF

15  The EU Framework for protection and enforcement of IPRs permeates the national European IP courts organization and work and contributes to improve trust in an harmonized more efficient resolution of IP disputes which are rarely limited to a single EU member State.  The co-existence of national and community IPRs continues to adjust and it compels a sound understanding of their interplay, without loosing the sense of a wider international play ground.  The increased worldwide importance of IPRS and the sophistication, both technical and legal, of infringement issues, call for a dedicated involvement and specialization of judges. We welcome the initiative by Russia to establish a specialised IP Court. Thank you for your attention FINAL REMARKS Elisabeth LOGEAIS, Paris Email :

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