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INTACOURTS & TRIBUNALS

SUBCOMMITTEE

CASE MANAGEMENT PROCEDURES REPORT

WITHMODEL CASE MANAGEMENT

PROCEDURES

All information provided by the Courts & Tribunals Subcommittee of the International Trademark Association in this document is provided to the public as a source of general information on trademark and related intellectual property issues. In legal matters, no publication, whether in written or electronic form, can take the place of professional advice given with full knowledge of the specific circumstances of each case and proficiency in the laws of the relevant countries. While efforts have been made to ensure the accuracy of the information in this document, it should not be treated as the basis for formulating business decisions without professional advice. We emphasize that trademark and related intellectual property laws vary from country to country, and between jurisdictions within some countries. The information included in this document will not be relevant or accurate for all countries or states.

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Table Of Contents

INTA COURTS & TRIBUNALS SUBCOMMITTEE MEMBERS 2008 - 2009 2 3INTA COURTS & TRIBUNALS SUBCOMMITTEE MEMBERS 2010 – 2012 Task Force 3 4

I INTRODUCTION 5II PROPOSED MODEL CASE MANAGEMENT PROCEDURES 9

A Scheduling /General Management 9B Trial Management 11C Alternative Dispute Resolution 12

III Background Information 14

A UNITED STATES 14B CANADA 19C THE EUROPEAN UNION 39D ENGLAND AND WALES 41E FRANCE 43F GERMANY 47G SPAIN 54H PEOPLE OF REPUBLIC OF CHINA 59I HONG KONG 67J JAPAN 71K REPUBLIC OF KOREA 76L SINGAPORE 82M THAILAND 86N INDIA 94

O AUSTRALIA102

P BRAZIL110

Q ISRAEL112

R SOUTH AFRICA114

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INTA COURTS & TRIBUNALS SUBCOMMITTEE MEMBERS, 2008-2009

Name Company Name LocationBeth Alquist Day Pitney Hartford, CTGiovanni Casucci Casucci Law Milan, ItalyPeter Chalk Blake Dawson Waldron Melbourne, AustraliaLuis Cavaleiro de Ferreira Leonel Alves' Law Firm Macau, ChinaNuno Cruz J. Pereira da Cruz Lisbon, PortugalGerard Delile Salans Paris, FrancePatti DeSimone Alberto-Culver Co. Melrose Park, ILTodd Deveau Thomas Kayden Horstemeyer & Risley Atlanta, GAClaudio DiGangi (staff liaison) INTA New York, NYTom Donovan Barnes & Thornburg Chicago, ILBurkhart Goebel Lovells Madrid, SpainJim Gumina McDonnell Boehnen Hulbert & Berghoff Chicago, ILPatty Hogan Keating Muething & Klekamp Cincinnati, OHMike Hurst (chair) Keating Muething & Klekamp Cincinnati, OHSam Ibrahim Buchanan Ingersoll & Rooney Alexandria, VAGreg Kaihoi General Mills Minneapolis, MNDavid Kane Locke Lord New York, NYLudwig Kouker Boehmert & Boehmert Bremen, GermanyPascal Lamothe Joseph Lee Kowloon, Hong KongDavid Lorenz Powley & Gibson New York, NYGreg Madera Fish & Richardson Boston, MAIgnacio Marques Baker & McKenzie Barcelona, SpainFabrizio Miazzetto Bardehle Pagenberg Dost Alternburg Alicante, SpainLuiz Montaury Montaury Pimenta Machado & Lioce Rio de Janeiro, BrazilAaron Montero E-Proint San Jose, Costa RicaAvi Ordo S. Horowitz & Co. Tel Aviv, IsraelEric Osterberg Fox Rothschild Stamford, CTDamaso Pardo Perez Alati Grondona Benites… Buenos Aires, ArgentinaScott Pivnick Pillsbury Winthrop Shaw Pittman Washington, D.C.Mike Rodenbaugh Rodenbaugh Law San Francisco, CAElisa Santucci Castello Santucci Rio de Janeiro, BrazilAndrew Simpson Knobbe Martens Irvine, CAPaul Supnik Law Office of - Beverly Hills, CAIgnacio Temino Abril Abogados Madrid, SpainKat Treiber Cooley Godward San Francisco, CAAnthony Trenton Denton Wilde Sapte London, EnglandAgustin Velazquez Mijares, Angoitia Cortes y Fuentes Mexico City, MexicoDiego Vieira Daniel Advogados Rio de Janeiro, BrazilCourtenay Williams Pollonais, Blanc de la Bastide & Jacelon Port of Spain, TrinidadJulian Zegelman Hoge Fenton San Jose, CA

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INTA COURTS & TRIBUNALS SUBCOMMITTEE MEMBERS, 2010-2012 Task Force 2

Name Firm / Company City, State / CountryNick Redfearn Rouse (Subcommittee Chair) Hong KongBeth Alquist Day Pitney LLP (task force chair) Hartford, CTRay Black SJ Berwin London, United KingdomDr. jur Ludwig Kouker Boehmert & Boehmert Bremen, GermanyLemke Christian Heissner & Struck Hamburg, GermanyFabrizio Miazzetto Salvador Ferrandis & Partners Madrid SPAINChiang Ling Li Jones Day Hong KongJames C. Gumina McDonnell Boehnen Hulbert &

Berghoff LLPChicago, IL

Betty Morgan The Morgan Law Firm P.C. Atlanta GAMaarten Haak Hoogenraad & Haak Amsterdam,the

NetherlandsScott J. Pivnick Pillsbury Washington, DCElisa Santucci Castello Santucci Rio de Janeiro, BrazilPaul D. Supnik Paul D. Supnik Beverly Hills, CARafaela Borges Walter Carneiro

Dannemann Siemsen Rio de janeiro, Brazil

Further Acknowledgements {only not members of the committee}

The Subcommittee would like to recognize the contributions of the following individuals who led this project during the 2008-9 term (asterisks denote individuals who originated this project during the 2006-2007 committee term) Beth Alquist, Peter Chalk*, Gerard Delile, Todd Deveau*, Tom Donovan, Jim Gumina, Mike Hurst*, Sam Ibrahim, Greg Kaihoi, David Kane*, Ludwig Kouker, Fabrizio Miazzetto, Avi Ordo* and Anthony Trenton*. In addition, the team would like to recognize the contributions of Lloyd Sarginson and Lou Ederer who participated in the early stages of this project during the prior term.

The Subcommittee would like to thank the following individuals who also contributed to parts of this report.

Chiang Ling Li, Luckie Hong, Chester Hui Jones Day China

Dr. Ludwig Kouker Boehmert & Boehmert GermanyAnita Leung, Chester Hui Jones Day Hong KongYasuhiro Suzuki Saegusa & Partners Japan

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Fabrizio Miazzetto, Yoon Kyo Lee Salvador Ferrandis & Partners Spain

Barbara Berdou Berdou Attorneys South AfricaDeon Bouwer Bouwers Inc. South AfricaKagisho Manyashi De Chalains Patent &

TradeMark Attorneys South AfricaMegan Reimers Spoor & Fisher South AfricaManoon Changchumni Rouse Thailand

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I. INTRODUCTIONThe Model Case Management Procedures project spans approximately three

years and represents the end product of a task first identified by the Courts & Tribunals Subcommittee’s first report sent to the Board in 2007. The Subcommittee embarked on this project in order to address several key perceived areas requiring improvement in trademark enforcement matters in courts and tribunals worldwide, namely: 1) reducing litigation costs and other significant litigation burdens for brand owners, 2) reducing the length of time cases remain pending before courts and tribunals, and 3) increasing certainty for brand owners in the enforcement context. Expediting trademark cases, as well as other cases where the injury is continuing, provides important benefits because it tolls the continuing injury at a much earlier date. Expediting also advances important public interests and benefits the consumer in general by more quickly eliminating or reducing confusion in the marketplace that generally results from trademark infringement.

Much consideration and discussion was directed, at the early stages, to the proper calibration of these Model Procedures. On the one hand, proposing specific timelines at each interval of the case was seen as directly addressing the most frequently voiced complaint regarding trademark enforcement matters – the length of time it takes to bring a case to resolution once it is filed. However, as a number of variables may contribute to these extended time periods, depending on the jurisdiction and the tribunal, strict adherence to very prescriptive timelines was seen as outside the realm of what INTA could support in the context of a resolution. On the other hand, proposing more general or idealistic procedures was seen as something that INTA could support as more applicable to a global viewpoint. However, as this path was explored further, it became clear that the procedures being discussed were so general as to have little or no impact in all but the least-developed jurisdictions. Finally, while any set of Model Case Management Procedures can obviously be applied to cases of any type, the Subcommittee was challenged by how specifically to tailor these procedures for trademark cases such that a resolution in this regard could be embraced by INTA. In the end, a compromise approach was taken where the model procedures on which the Subcommittee settled are not so prescriptive as to be fundamentally unattainable in the majority of jurisdictions but still recognize that the desired state – from the brand owner’s perspective – requires that courts and tribunals take a much more active role than perhaps is taken currently. To that end, some “aspirational” time tables were included in the Model Procedures, but only those that the Subcommittee felt were most critical to maintaining forward progress in a given trademark enforcement matter. In addition, the elements of trademark infringement are addressed at various points in an effort to give the parties “mile markers” by which they can gauge the relative merits of their respective cases.

Every case will have its own unique issues and therefore overly restrictive guidelines are disfavored. The goal is to provide guidelines that allow for the effective conduct of trial and at the same time provide the parties with a full opportunity to present their case. The parties are encouraged to do what they can to resolve their disputes without engaging the courts or other tribunals, whenever possible. The Model Procedures present the parties opportunities to enter into voluntary dispute resolution, and they allow the parties flexibility in choosing an

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ADR mechanism and in its scheduling. Where early neutral evaluation (ENE) is involved it further provides feedback to the parties on the issues and the strengths and weaknesses of their case prior to the trial phase of the trademark dispute.

It has been reported that as many as 95% of all civil cases filed in some courts are resolved without going to trial. Many alternative processes to trial have developed and continue to be developed as alternatives to trial. These alternative processes are typically less formal and less adversarial than trial. The potential advantages of using ADR include savings in time, savings in money, and increased control over the process and the outcome, and increased satisfaction (or at least decreased dissatisfaction) on both sides of the dispute. Further, since ADR can be a less adversarial and hostile way to resolve a dispute, it has the potential for better preserving the relationships between the parties.

The most commonly used ADR processes are mediation, arbitration, neutral evaluation (sometimes referred to as early neutral evaluation), and settlement conferences.

Mediation is a flexible, non-binding dispute resolution procedure in which a neutral third party (the mediator) facilitates negotiations between the parties to help facilitate settlement of their dispute. The mediation process allows the parties to expand traditional settlement discussions and broaden resolution options, often by going beyond the legal issues and dispute. Mediation sessions typically are confidential and structured to help the parties communicate as, for example, in clarifying their understanding of underlying interests and concerns, probing the strengths and weaknesses of legal positions, exploring the consequences of not settling, and generating settlement options. The mediator typically serves as a facilitator and does not issue a decision. Mediation may be particularly useful when parties have a relationship they want to preserve. Mediation can also be effective when emotions may be getting in the way of resolution of the parties’ dispute. Mediation may not be effective if one of the parties is unwilling to cooperate or compromise. Mediation also may not be effective if one of the parties has a significant advantage or leverage over the other.

Arbitration is typically an adjudicatory process in which one or more arbitrators issue a judgment or decision on the merits of the dispute after an expedited, adversarial hearing in which representatives for each party present their cases. The decision is typically non-binding on the parties, though it can be binding. The decision addresses only the disputed issues and attempts to apply legal standards. Either party may reject a non-binding decision and proceed to trial. Arbitration is less formal than a trial, and rules of evidence are often relaxed. Arbitration is often best for cases where the parties want another person to decide the outcome of their dispute for them but would like to avoid the formality, time and expense of a trial, or for purposes of confidentiality. It may also be appropriate for complex matters where the parties want a decision-maker who has training or experience in the subject matter of the dispute. Arbitration may not be appropriate, however, if the parties want to retain control over how their dispute is resolved.

Early neutral evaluation (ENE) is a non-binding ADR process designed to improve case planning and settlement prospects by providing litigants with an early

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advisory evaluation of the likely court outcome. Case planning and settlement assistance may also be offered during the session, which is typically held before much discovery has been taken. In ENE, a neutral evaluator usually holds a confidential session with the parties and their representatives or counsel early in the litigation to hear both sides of the case. The evaluator typically helps the parties clarify arguments and evidence, identifies strengths and weaknesses of the parties’ positions, and gives the parties a non-binding assessment of the merits of the dispute. The neutral evaluator is often an expert on the subject matter of the dispute. As a result, early neutral evaluation (ENE) may be most appropriate in cases in which there are technical or legal issues which require special expertise to resolve or the only significant issue in the case is the amount of damages. ENE is thought to be widely applicable to many types of civil cases, including complex disputes. ENE may not be appropriate when there are significant personal or emotional barriers to solving the dispute.

Settlement conferences may be either mandatory or voluntary. Typically the parties and their representatives or attorneys meet with a judge or a neutral person to discuss possible settlement of their dispute. The judge or neutral person does not make a decision in the case but assists the parties in evaluating the strengths and weakness of the case and in negotiating a settlement.

For more information on ADR, see generally “ADR and Settlement in the Federal District Courts (A Sourcebook for Judges & Lawyers)”, by Elizabeth Plapinger and Donna Stienstra, a joint project of the Federal Judicial Center and the CPR Institute for Dispute Resolution (1996); see also, “Alternative Dispute Resolution, Options for Resolving Your Dispute”, www.courtinfo.ca.gov/selfhelp/lowcost/documents/adr.pdf. Additional information on meditation can be located on INTA’s website at http://www.inta.org/Mediation/Pages/Mediation.aspx.

The conduct of trials, including trials of trademark cases, will vary greatly in different jurisdictions. Many different factors affect the conduct of trial, including the laws of the jurisdiction (both substantive and evidentiary), the nature of the finder of fact (judge or jury), and the nature of the local practice. Even with that background, steps can be taken to improve the efficiency of trademark trials. These guidelines do not attempt to address pre-trial procedures that may limit issues needed to be addressed at trial, but encourage such procedures to improve the costs, time and effort associated with a trial.

Many cases involving a trademark dispute are not primarily driven by monetary damages; rather, the trademark owner’s goals are to enjoin the infringing activities quickly. An efficient way to proceed, therefore, may be to condense the proceedings as much as possible. For example, the trademark owner in a United States District Court might consider bringing a verified complaint and a motion for preliminary injunction (or equivalent procedure in the jurisdiction), and then seek to have a short discovery period (where applicable), and agree to convert the motion to a permanent injunction hearing. This will have the effect of condensing the pre-trial and trial period—obtaining a judgment quickly—and will avoid having to hold two proceedings—a preliminary injunction hearing and then, later, a trial.

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https://www.inta.org/Mediation/Pages/Mediation.aspx

http://www.courtinfo.ca.gov/selfhelp/lowcost/documents/adr.pdf

In many cases, it is efficient to separate the trial of the damages case from the liability case. Such a bifurcation may reduce the need for the court to ever hear evidence associated with damages. It is acknowledged that there will be times where it is advantageous for the trademark owner not to seek a bifurcated trial, but it is important that courts and tribunals have the discretion to bifurcate where the efficiencies in doing so and interests of justice would be advanced.

These proposed Model Procedures, in Section I, will be rather uncontroversial in well-developed jurisdictions such as the United States, European Union and Australia (with Australia deserving special recognition, according to our research, for already having enacted a number of progressive case management procedures that both simplify and speed up the litigation and enforcement process) as they tend to acknowledge a lower bar than has already been set. From that standpoint, the Subcommittee perceives no issue with a jurisdiction that elects to legislate beyond the threshold that the Model Procedures seek to establish. Rather, the overall goal of these Model Procedures is to urge those jurisdictions that may fall significantly below the threshold to examine critically their existing case management procedures to determine whether brand owners are really being adequately served in their attempts to protect and enforce their valuable trademark rights.

The subcommittee gathered information on the current procedures and practices in various locations around the globe, which is in Section II: Background Information, infra. The intention was to provide a representative sampling of procedures in certain jurisdictions, but in no way is it intended to be an exhaustive listing of important jurisdictions. We invite supplemental submissions for jurisdictions not covered herein for the benefit of INTA members and interested parties.

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II. PROPOSED MODEL CASE MANAGEMENT PROCEDURESA. SCHEDULING/GENERAL MANAGEMENT

The court shall have broad authority to take the necessary steps to effectively manage the case and the parties to move them toward a swift resolution of the matter, either via trial or through settlement.

A court shall set a timetable during which a case must proceed, beginning with the time period immediately after a response to a complaint is filed and running through the beginning of the trial on the merits. Ideally, each case should find a resolution within twenty four (24) months measured from the time a complaint is served until judgment on liability is rendered by the court. The court, in its discretion, may grant the parties’ petition for an extension of any item in the timetable upon a showing of good cause. The aforementioned time table does not apply to cases where preliminary relief is sought, as those cases may proceed more quickly.

Within thirty (30) days after the filing of a response to a complaint (or the filing of a response to any counterclaims, whichever occurs later), unless the parties agree to an extension of time for the purpose of discussing settlement, the parties will convene before the court for a scheduling and case management conference for the purpose of:

(a) allowing the court to expedite the disposition of the action,(b) establishing early and continuing control over the management of the case,(c) discouraging wasteful pre-trial activities,(d) encouraging appropriate preparation of the case for trial, and(e) facilitating settlement of the case and discussing the parties’

conclusions concerning the use of Alternative Dispute Resolution (see Section C, below).

At the scheduling and case management conference, and taking into consideration the complexity of the matter, the court shall enter a scheduling order or make directions that:

(a) limit the time to join other parties to the proceeding, and file motions,(b) limit the time and scope of whatever discovery may be permitted under local rule,(c) propose a plan for dealing with discovery of electronic materials,(d) set the dates for status conferences between the parties, the final pre-

trial conference, and the date of trial

Such a schedule shall not be modified except for good cause.

Ten (10) days prior to the scheduling and case management conference, the parties shall be required to submit:

(a) a short and plain summary of the issues in the case,

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(b) their respective, preliminary positions on each issue, specifically, and at minimum:

i. ownership / validity of the plaintiff’s mark,ii. priority of registration and/or use,iii. channels of trade in which the goods/services move, andiv. sophistication of the purchasersv. significance of concurrent use, if any,vi. similarity of the marks,vii. similarity of the goods and/or services,viii. strength of the plaintiff’s mark,ix. evidence of actual confusion,x. defendant’s intent,xi. plaintiff’s damages, if any

(c) the proof that is required on each issue,(d) the discovery that will be needed on each issue,(e) the witnesses that may be called with respect to each issue, and(f) any potential problems or obstacles foreseen by the parties with

respect to any of the foregoing with which the parties may require the court’s assistance or direction.

The submission contemplated herein is not intended to be an exhaustive treatment of the issues in the case. Rather, the submission, not to exceed ten (10) pages, should merely briefly outline each party’s case so that the other party understands the issues to be determined at trial and the other party’s general position of the same. One of the goals of this exercise is to facilitate settlement.

The court is encouraged to designate a magistrate, registrar or similar officer of the court who shall be responsible for:

(a) dealing with procedural issues,(b) hearing and ruling on procedural and pre-trial motions, and(c) taking an active role in managing the case

To facilitate the orderly presentation of evidence, the Court should order the parties, no later than thirty (30) days prior to trial, to exchange appropriate information, including:

(a) exhibit lists (with objections),(b) witness lists (with objections, and including the order in which

witnesses are expected to be called),(c) pretrial papers addressing the anticipated merits of their arguments, and(d) any other information the court may deem appropriate.

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B. TRIAL MANAGEMENT

Where it is permissible and efficient to do so, a court should bifurcate the liability and damages phases of the trial, with liability being determined first, followed by a hearing on damages.

In cases tried to a jury, the court should employ special verdicts directed to trademark issues in the case, namely:

(a) ownership / validity of the plaintiff’s mark,(b) priority of registration and/or use,(c) significance of concurrent use, if any,(d) defendant’s intent,(e) likelihood of confusion (considering factors such as the similarity of the

marks, similarity of the goods, strength of the plaintiff’s mark, evidence of actual confusion, channels of trade in which the goods/services move, and sophistication of the purchasers)

In cases tried by a judge alone (or a finder of fact who is entitled to question the witness) without a jury, where local rules permit, the court should consider whether it is appropriate to have direct testimony, including expert testimony, presented in written form such as a declaration or affidavit, with the only live testimony being cross examination and rebuttal testimony.

In jury cases, issues relating to the conduct of surveys and the admissibility of the results should be handled by motion prior to trial (i.e., in limine). In cases tried by a judge alone, the court may consider accepting expert reports in lieu of live testimony where appropriate, such as upon agreement of the parties.

In all cases, but especially in cases tried to a jury, courts should encourage the parties to resolve all disputes, or rule on them where possible, in limine, in order to have a more efficient presentation of the evidence.

In cases tried by a judge alone, the court should allow the parties to submit post trial briefing in lieu of closing arguments that put the evidence presented at trial into context and fully explains the relative positions. The timing and extent of the briefing is within the discretion of the court, but such briefing shall, at most, be filed within thirty (30) days of the conclusion of the trial.

Either through motion of the party or on its own accord, consistent with local practice and rules of evidence, the court shall have substantial discretion to limit inappropriate testimony of a witness, e.g., where such testimony is not relevant or otherwise wasteful of the court’s time and resources, in order to allow for the orderly presentation of evidence and to increase the efficiency of the trial.

Consistent with local practice and rules of evidence (including whether such practice is permitted in jury trials or in cases tried by a judge alone), the court shall have the power, during trial, to directly examine and cross examine witnesses on any of the issues identified by the parties at the case management conference or subsequently identified by the parties at a status conference.

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The court shall have the authority to rule on interlocutory or preliminary matters to simplify the trial on the merits.

The court shall be entitled, upon motion of the parties, to grant preliminary relief and/or summary judgment.

C. ALTERNATIVE DISPUTE RESOLUTION

The parties to a trademark dispute proceeding shall be presented with an opportunity to enter into voluntary dispute resolution as early in the dispute as possible.

Within thirty (30) days of the defendant filing an answer to the complaint, and preferably ten (10) days prior to a scheduling and case management conference with the court under Section A. above, the parties are encouraged to discuss use of alternative dispute resolution (ADR) procedures, such as mediation, arbitration, and early neutral evaluation, and to discuss when they believe ADR would be beneficial to potentially resolving the dispute, e.g.:

(a) prior to or after the discovery phase if one is involved,(b) after deposition of the plaintiff and the defendant if depositions are to be taken,(c) at some other time during the dispute proceeding but before the trial phase

If the parties are not able to resolve the dispute early in the dispute proceeding, the parties should be encouraged to attempt ADR later, and potentially at more than one time during the dispute proceeding.

Where lack of information is considered to be an impediment to resolution of the dispute, the parties should be encouraged to discuss the information believed necessary for candid and fruitful ADR discussion and how and when such information can be exchanged.

Where the parties are unable to agree on either the timing of an ADR procedure or the information to be exchanged for such procedure or both, they should submit a report to the Court explaining why they have not been able to reach agreement.

Where the lack of exchange of information is an impediment to an ADR procedure, the Court shall have the discretion to order an exchange of information for the ADR procedure, provided:

(a) the information exchanged is considered confidential to the parties, and

(b) the ADR procedure cannot be used in the trial phase of the trademark dispute (unless the parties agree or the Court otherwise orders).

Where early neutral evaluation (ENE) is desired, the parties are encouraged to further discuss the nature and extent of the evaluation to be provided and

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whether the evaluation would include the third-party evaluator providing his/her views on the relative merits of the parties’ positions on the following:

(a) ownership / validity of the plaintiff’s mark,(b) similarity of the marks,(c) similarity of the goods/services,(d) the extent to which concurrent use, if any, has any bearing on the

case,(e) priority of registration and/or use,(f) strength of the plaintiff’s mark,(g) evidence of actual confusion,(h) defendant’s intent,(i) channels of trade in which the goods/services move,(j) sophistication of the purchasers,(k) the need for survey evidence to be introduced,(l) the need for expert testimony to be introduced,(m) whether a damage award will be sought/necessary,(n) how costs of the proceeding could be allocated between the parties

Within thirty (30) days of an early neutral evaluation, the parties are encouraged to report the following to the Court:

(a) whether the plaintiff wishes to maintain its case,(b) whether the defendant wishes to concede the case,(c) whether the parties can agree on any of the items/issues discussed in

ENE, and(d) whether settlement is possible

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III. Background InformationA. UNITED STATES

Inspiration for some of the pre-trial procedures set forth in the resolution comes from the Federal Rules of Civil Procedure in the United States, specifically Rule 16. While at first blush this may strike the Board as requiring it to take a position that is too U.S.-centric, the subcommittee nevertheless felt that culling some general principles from Rule 16 was appropriate. We arrived at this decision bearing in mind the goals of the Model Case Management Procedures, namely, to reduce litigation costs, create efficiencies and cost savings for court and tribunals, and increase certainty for brand owners in the enforcement context. Given that the U.S. legal system is inarguably the legal system most heavily burdened with litigation matters before the courts, we felt it made sense to examine the methods that U.S. practice has implemented in order to address the backlog in its courts. In addition, with respect to time tables recommended, ITC proceedings were acknowledged as setting perhaps the upper limit of speed, as these cases are generally regarded by U.S. practitioners as extremely fast, with cases targeted for completion in 12 to 15 months from the time an investigation is instituted.

1. Southern District of New York

The Subcommittee surveyed the various individual rules of the district court judges for the Southern District of New York (“SDNY”) with an eye towards identifying any trends or developments that relate to case management (i.e., the scheduling of the events that will take a case from inception through trial). As discussed below, it would appear that the more recently appointed judges and the recently appointed Chief Judge are advocating more active case management with stricter and more explicit deadlines.

Unlike other district courts (e.g., the Northern District of California with its Standing Order for case management conferences), there are no prescribed court-wide standards for addressing case management issues in the SDNY. Instead, case management issues are left to the individual judges who, if they address the issue at all, will do so in their individual rules (available in .pdf format on the SDNY website at http://www1.nysd.uscourts.gov).

Notably, the majority of judges in the SDNY do not specifically address case management in their individual rules. Rather, the individual rules for a district court judges in the SDNY typically address the following issues:

(a) Communications with chambers (i.e., approved methods for contacting the Court);

(b) Motion practice issues (i.e., the procedures for filing motions with the Court); and

(c) Pre-trial procedures (i.e., the procedures for preparing and filing of joint pre-trial orders).

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Even though a judge may not specifically address case management in the individual rules, case management issues may be raised in the judge’s order scheduling the initial case management conference, which informs the parties that a conference is being held to address case management and may suggest that the parties meet and confer prior to the conference in order to discuss a case management plan. In the alternative, the parties may be left to their own devices with respect to their compliance with Fed. R. Civ. P. 26(f).

Some judges, however, do specifically address case management issues in their individual rules. The manner in which these issues are addressed range from noting the various deadlines that counsel are expected to agree upon (see, e.g., Judge Holwell) to templates for proposed scheduling orders that note the various deadlines (see, e.g., Judge Scheindlin) to templates for proposed orders that not only note the various deadlines but also provide outside time limits for the setting of such deadlines (see, e.g., Judge Wood, Judge Castel, and Judge Crotty).

Notably, some of the most aggressive case management requirements are set forth by Judge Wood, who was appointed Chief Judge for the SDNY in 2006. Judge Wood’s proposed scheduling order states that the Court expects that all discovery shall be completed within 90 days of the first scheduling conference. While the proposed order also states that the parties may request additional time by joint letter, such extensions shall not exceed 60 days and any further extensions will be granted only after a showing of good cause that additional time is needed. In addition, Judge Wood is the only judge in the SDNY to set forth a separate template for a discovery plan. The discovery plan template sets forth additional deadlines for 26(a)(1) disclosures, the exchange of document requests, deposition notices, third-party subpoenas, and expert reports, and also requires the parties to indicate who they anticipate deposing.

Further, it does appear that some of the more newly appointed judges are paying greater attention to managing cases with more strict and explicit deadlines. Judge Castel (appointed in 2003) and Judge Crotty (appointed in 2005), for example, have both set forth very similar templates for their case management orders. These templates are unique because the deadlines set forth in them are tied to the date of the initial scheduling conference. For example, while the parties may agree upon a deadline for amendments to the pleadings, the templates for Judge Castel and Judge Crotty provide that “absent exceptional circumstances” such deadline may not exceed 30 days from the date of the case management plan and scheduling order. Similarly, the templates provide that all fact discovery should be completed within 120 days of the scheduling order “unless the Court finds that the case presents unique complexities or other exceptional circumstances.” Thus, the parties are given far less leeway (and far less opportunity for disagreement) in discussing their case management plan.

While strict in setting these outside deadlines, however, the Judge Castel and Judge Crotty templates also allow the parties some flexibility with respect to the interim dates for the exchange of discovery requests. Specifically, while the templates require that the parties set forth deadlines for serving document requests, interrogatories, etc., the parties can agree without application to the

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Court to extend such deadlines provided that all discovery is completed by the outside deadline for the completion of fact discovery.

With respect to possibility of settlement, the Judge Castel and Judge Crotty templates require counsel to meet face-to-face for at least one hour to discuss settlement within 14 days of the close of fact discovery and also require counsel to discuss an informal exchange of information in aid of early settlement and discuss. Further, counsel must discuss and propose a method for alternate dispute resolution and also recommend a point in time (e.g., within 60 days, after the deposition of plaintiff, after discovery, etc.) for the alternate dispute resolution mechanism to be employed.

It is notable that 3 of the 5 judges appointed to the SDNY in the past six years (Judge Holwell, Judge Castel and Judge Crotty) pay particular attention to case management issues in their individual rules. Given Judge Wood’s similar perspective on active case management, and her role as Chief Judge, it appears likely that active case management will play an increasingly important role for cases in the SDNY.

2. Trademark Trial and Appeal Board (TTAB)

The TTAB has recently instituted its Accelerated Case Resolution (“ACR”) procedure. Parties seeking a final determination of their opposition or cancellation proceeding quickly and without the time and expense are invited to consider ACR. The following is excerpted, in pertinent part, from the TTAB’s ACR notice rule from the Official Gazette.

ACR is a procedure akin to summary judgment in which parties can receive a determination of the claims and defenses in their case promptly, but without the uncertainty of result and delay typically presented by standard summary judgment practice. Parties often file motions for summary judgment in the hope of avoiding a costly trial, but these motions often must be denied because there is at least one material fact in dispute. As a result, these parties spend considerable time and expense on a motion that frequently does not in any way advance the prosecution of the case. Apart from not obtaining a final, appealable decision, they also have not created a record that will save time at trial, because evidence submitted in connection with unsuccessful motions for summary judgment is of record only for consideration of those motions. To be considered at final hearing, any such evidence must be properly introduced in evidence during the appropriate trial period. See, American Meat Institute v. Horace W. Longacre, Inc., 211 USPQ 712, 716 n.2 (TTAB 1981).

In order to take advantage of ACR, the parties must stipulate that, in lieu of trial, the Board can resolve any issues of material fact. If the parties have already filed cross-motions for summary judgment, they may also stipulate that the Board may resolve any issues of material fact and consider the parties’ cross-motions as the parties’ final briefs in the case in lieu of a full trial. Further, where the Board finds a case a good candidate for ACR, it will so inform the parties and seek their agreement to use ACR procedures.

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A typical ACR case is anticipated to be one in which the parties are able to stipulate to many facts, or in which each party expects to rely on the testimony of only one or two witnesses and the overall record is not extensive. If the interlocutory attorney agrees that the case is appropriate for ACR, the parties will be given a period of time to complete discovery, if necessary, and to file briefs. If agreement is signaled in the settlement and discovery planning conference, the interlocutory attorney may then tailor the disclosure and discovery schedule to facilitate ACR. If agreement is provided later, i.e., early in discovery, the interlocutory attorney may then issue an order delineating limits on any remaining discovery activities and the schedule for submitting briefs. The parties may include evidence with their briefs, including written disclosures and disclosed documents, and stipulate to facts for the Board to consider. After the briefs are filed, the Board will issue a decision on the merits within 50 days, which will be judicially reviewable as set out in 37 CFR § 2.145.

Under changes to the Trademark Rules for inter partes Board proceedings effective November 1, 2007, parties to such proceedings must conference to discuss claims, defenses, settlement possibilities, and alternatives for disclosures, discovery and trial. When either party to a Board case concludes that resolution of the opposition or cancellation proceeding without extensive discovery or trial periods may be desired, the party should notify the interlocutory attorney. Preferably such notice would be provided during the required settlement and discovery conference to be held within 30 days of the close of pleadings. Then, the possible use of ACR can be discussed during the conference. However, even if the ACR option is not chosen during the conference, the parties may agree to pursue ACR after some disclosures and discovery. In such cases, the interlocutory attorney should be notified no later than two months from the opening of the original discovery period. The further the parties proceed into discovery, the less likely it is that resort to ACR will realize savings of time and resources.

3. U.S. International Trade Commission (ITC) Cases Under § 337

Section 337 of the Tariff Act of 1930 (19 U.S.C. § 1337) declares infringement of certain statutory intellectual property rights and other forms of unfair competition in import trade to be unlawful trade practices. The U.S. International Trade Commission hears cases brought under Section 337. Most Section 337 investigations concern patent and trademark rights.

After a complaint is filed with the Commission, the Office of Unfair Import Investigations (OUII) examines the complaint for sufficiency and recommends to the Commission whether the investigation should proceed. The Commission normally determines whether to institute an investigation within 30 calendar days from filing. If the complaint is accompanied by a motion for temporary relief, the Commission makes its determination on both matters within 35 calendar days from filing.

Investigations are conducted pursuant to the Administrative Procedure Act and the Commission Rules (similar to the Federal Rules of Civil Procedure). An administrative law judge is appointed to handle the case, and the judge issues a set of Ground Rules that provide detailed instructions on, e.g., the time for responding to motions, the method for asserting privilege, the number of copies of exhibits, the

19

use of translators, the procedures for arranging telephone conferences with the judge, etc.

Target dates for completion of the investigation are set by the presiding judge within 45 days of the commencement of an investigation. The judge may set target dates for completion of 15 months or less by his own order. If the Judge seeks to set a longer target date, his Initial Determination in this regard is subject to review by the Commission.

Commission Rules provide that an investigation can be terminated through the parties’ agreement either to settle the case or to submit to alternative dispute resolution.

If the case is not to be settled, a formal evidentiary hearing on the merits is conducted by the administrative law judge, typically 6 to 7 months following the institution of an investigation. Following the hearing, and at least 3 months prior to the target date (4 months prior for investigations going beyond a 15 month target date), the judge issues an Initial Determination that is certified to the Commission along with the evidentiary record.

If preliminary relief is requested with the complaint, the Commission must determine whether to grant the request no later than the 90 th day after the investigation is instituted, or if a case is deemed “complex”, no later than the 150 th

day after the investigation is instituted.

The Commission may review and adopt, modify or reverse the Initial Determination or opt not to review it at all. If not reviewed, the Initial Determination becomes the final determination of the Commission. If the Commission determines that § 337 has been violated, it may issue an exclusion order barring entry of the products at issue from the United States. The Commission’s orders become effective within 60 days of issuance and are enforced by the U.S. Customs Service.

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B. CANADA

1. Existing Litigation Procedures within the Canadian FederalCourt System

Litigation pertaining to trade-marks is typically a very costly and time-consuming process. The Canadian courts have recently implemented procedures and programs in an attempt to streamline litigation in general, which in effect, has changed the procedures related to trade-mark litigation. The goal has been to make litigation cheaper, quicker, and generally more effective such that it is more accessible to the public, on a practical level. The following explores some of the general procedures and recent streamlining initiatives that are currently in place at the Federal Court level.

2. Standard Civil ProceduresThe civil procedures for the Federal Court of Canada and the Federal Court of

Appeal are governed by the Federal Court Rules. Unless otherwise indicated, all rules referred to below are Federal Court Rules.

a. Applications – Which Involve Appeals From Decisions Of The Canadian Trade-Marks Office

The main procedural steps associated with an application at the Federal Court level are summarized within Table 1.

Table 1 – Procedural Steps for an Application Made to the Federal CourtCategory Description Timing Rule(s)Bringing an Application Before the Court

An appeal (in the form of an application) lies to the Federal Court from any decision of the Registrar (ex. appealing a decision of the TM Opposition Board)

Within 2 months from notice of the Registrar's decision (or within such time as the court may allow after the expiration of the 2 months)

R.61(2), R.300(d), R.56(1) of the Trade-Marks Act

Steps in the Pleadings Process

1) Applicant files Notice of Application

-- R.301

2) Applicant serves Notice of Application to other parties

10 days after issuance of Notice of Application

R.304(1)

3) Respondent(s) who intend to oppose an action serve a Notice of Appearance

10 days after being served with Notice of Application

R.305

4) Applicant serves and files supporting affidavits and documentary evidence

30 days after issuance of Notice of Application

R.306

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5) Respondent serves and files supporting affidavits and documentary exhibits

30 days after service of applicant's affidavits

R.307

6) Cross-examinations Completed by all parties within 20 days after the filing of the respondent's affidavits

R.307

7) Serve and file applicant's record

20 days after completion of cross-examination

R.309(1)

8) Serve and file respondent's record

20 days after service of applicant's record

R.310(1)

9) Applicant serves and files a requisition requesting that a date be set for the hearing of the application

10 days after service of the respondent's record

R.314(1)

b. Actions – Expungement/Infringement Brought Under The Canadian Trade-Marks Act

Table 2 provides a summary of the initial procedural stages associated with an action at the Federal Court level.

Table 2 – Initial Procedures for a Federal Court ActionCategory Description Timing Rule(s)Bringing an Action Before the Court

Expungement or infringement claims that are to have national juridical effect are brought directly to the Federal Court

-- --

Timing for Service of Pleadings

1) Service of Statement of Claim

60 days after issuance R.203(1)

2) Service of Statement of Defense

(a) 30 days after service of Statement of Claim (if defendant served in Canada)(b) 40 days (if defendant served in U.S.)(c) 60 days (if defendant served outside Canada & U.S.)

R.204(a)-(c)

3) Plaintiff's Reply to Statement of Defense (if

10 days after service of Statement of Defense

R.205

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appropriate)

As the standard Federal Court action progresses beyond the initial stages, there are many rules that inherently have an effect on the duration of a standard federal action. These procedures, which speed-up and/or circumvent the full litigation of an action, are provided in Table 3.

Table 3 – Standard Rules that Speed-up the Full Litigation of a Federal ActionCategory Description Rule(s)1) Pre-Trial Settlement Discussions

Within 60 days after the close of pleadings, the solicitors for the parties must discuss the possibility of settling any or all of the issues in the action and of bringing a motion to refer any unsettled issues to a dispute resolution conference.

R.257

2) Pre-Trial Conferences

After the close of pleadings, a party who is not in default and is ready for trial may serve and file a requisition for a pre-trial conference. At the pre-trial conference, solicitors of record and the parties discuss such issues as: settlement possibilities, simplification of the issues, the possibility of obtaining admissions, and/or the estimated duration of the trial.

R.258(1), R.263

3) Trial Management Conference

A judge or prothonotary before whom an action has been set down for trial may hold a conference either before or during the trial, to consider any matter that may assist in the just and timely disposition of the action. Such a conference will not disqualify the judge or prothonotary from presiding at the trial.

R.270

c. General Extension and General Abridgement

Under certain circumstances, time periods applying to either an action or an application can be adjusted. These particular circumstances are provided in Table 4.

Table 4 – Extension/Abridgement of Time PeriodsCategory Description Rule(s)1) Extension by Consent

A time period mandated by the general rules can be extended, one time only, and by up to half of the time period being extended, if all of the parties consent. There are few time periods that

R.7(1)-(3)

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cannot be extended by consent, which are those for the service of the Statement of Claim, Notice of Application, and Notice of Appeal.

2) Extension / Abridgement by Court Order

Before or after the end of the period sought to be extended, a party can bring a motion to extend or abridge the specific time period

R.8(1)&(2)

d. Appeals To The Federal Court Of Appeal

A decision of the Federal Court can be appealed to the Federal Court of Appeal without leave as a matter of right (Courts of Justice Act s.27(1). For an interlocutory judgment, a Notice of Appeal must be filed within 10 days of the judgment (CJA s.27(2)(a)). For a final judgment, the applicant has 30 days following the decision to file a Notice of Appeal (CJA s.27(2)(b)).

e. Appeals To The Supreme Court Of Canada

Appeals from the Federal Court of Appeal can be heard by the Supreme Court of Canada, but a party must successfully get a motion for leave to appeal (R.357(1)). A motion to appeal will be granted only in certain circumstances in accordance with the Supreme Court of Canada's own set of rules (i.e. s.37.1 of the Supreme Court Act).

3. Expeditious InitiativesACCESSIBILITY UNIQUE PROCEDURAL ASPECTS

Description Rule Description Rule

1. STATUS REVIEWThe court will call a status review IF:

Upon status review, a court can:

Applicable to Applications and Appeals:

1) Dismiss the proceeding (unless plaintiff, applicant, or appellant can show cause as to why this should not happen)

R.382(2)(a)

180 days after the issuance of the Notice of Application (or Appeal) no requisition for a hearing date has been filed

R. 380(1)(b)

2) Enter default judgment (unless the defendant can show cause as to why this should not happen)

R.382(2)(b)

Applicable to Actions Only: 3) Order that the proceeding continue as a specially managed proceeding

R.382(2)(c)

1) 180 days after issuance of the Statement of Claim pleadings are not yet closed

R. 380(1)(a)

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ACCESSIBILITY UNIQUE PROCEDURAL ASPECTSDescription Rule Description Rule

2) 360 days after issuance of the Statement of Claim and no party has filed a requisition for pre-trialExclusion:Status review does NOT apply to a specially managed proceeding

R.380(3)

2. SPECIALLY MANAGED PROCEEDINGSA chief justice of the Federal Court (or Federal Court of Appeal) MAY assign 1 or more judges to act as a case management judge (a prothonotary may act in certain circumstances at the FC level)

R.383, R.383.1

A Case Management Judge deals with all matters that arise prior to trial, and may:

1) Give any directions that are necessary for the just, most expeditious and least expensive determination of the proceeding on its merits

2) Fix the period for completion of subsequent proceeding steps

3) Fix and conduct a dispute resolution conference or pre-trial conference

4) Hear and determine all motions prior to the assignment of a hearing date

5) Order a status review at any time

6) Cease special management of the case at any time

R.385(1)(a)

R.385(1)(b)

R.385(1)(c)

R.385(1)(d)

R.385(2)

R.385(3)

A party to a proceeding MAY bring a motion at any time to have the proceeding managed as a specially managed proceeding

R.384

Huang v. Canada (Min. of Citizenship & Immigration) 2003 FCT 196 (Proth.) – Special management is neither routine nor automatically granted on request. There must be a substantial reason to remove a proceeding from the timetables set out in the rules.4093879 Can. Ltd. v. Mal-Mart Canada Corp. 2003 FC 1000 – Relevant considerations justifying an order for special management of a case include the parties' consent to such an order, the expectation that issues concerning the scope of

25


discovery will arise, and the need for a judge familiar with the case so that speedy procedural determinations can be made.

3. DISPUTE RESOLUTION SERVICESThe court MAY order that a proceeding (or any issue in a proceeding) be referred to a dispute resolution conference

R.386(1) The dispute resolution conference is conducted by a case management judge or prothonotary, who may conduct:

1) A mediation R.387(a)2) An early neutral evaluation of a proceeding (evaluate strengths and weaknesses of the parties and render a non-binding opinion as to the probably outcome)

R.387(b)

3) A mini-trial (presiding over presentation by counsel and then rendering a non-binding opinion as to the probably outcome

R.387(c)

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4. Existing Litigation Procedures within the Canadian Provincial Court System

The Canadian provincial courts have recently implemented civil procedures and programs in an attempt to streamline general litigation. In effect, these general initiatives have changed the litigation procedures related to trade-mark disputes. These provincial procedures are relevant to trade-marks in that a party may choose to commence an action within a provincial court. Although most actions for infringement of a registered trade-mark are brought in the Federal Court of Canada, infringement actions can also be brought within provincial Superior Courts (Trade-marks Act, s.53.2, Commentary 5.2.2). A plaintiff may elect to bring an infringement action to provincial Superior Court (as opposed to Federal Court) if they are seeking additional relief that falls under provincial jurisdiction (branch of contract, tort claims, etc.). In addition, a claim for "passing off" under the common law can be brought in a provincial court. (Note that the Federal Trade-marks Act contains a statutory passing of provision under which the Canadian Federal Court can entertain a passing off action.) It is important to note that a provincial court judgment is only enforceable within the province in which the action is brought; by contrast, a judgment rendered by the Federal Court has national juridical effect. The aim of a number of provincial initiatives has been to make litigation cheaper, quicker, and generally more effective and accessible to the public. The following explores some of the relevant standard Ontario litigation rules and also the streamlining initiatives that have been implemented in Ontario, British Columbia, Alberta, and Nova Scotia.

a. OntarioThe civil procedures followed by the Ontario Courts are generally governed

by the Rules of Civil Procedure (R.R.O. 1990, Reg. 194). Trade-mark actions are heard by the Superior Court of Justice, which is governed by these rules. Unless otherwise indicated, all rules referred to below are from the Ontario Rules of Civil Procedure.

(1) Ontario's Relevant Standard Civil ProceduresTable 1 provides a summary of the rules governing the initial procedural

stages for an action brought before the Ontario Superior Court of Justice.

Table 1 – Initial Procedures for a Provincial ActionCategory Description Timing Rule(s)Bringing an Action Before the Court

Infringement actions having only provincial juridical effect or common law "passing-off" actions.

-- Trade-Marks Act s.53.2, Commentary 5.2.2

Timing for Service of Pleadings

1) Service of Statement of Claim

6 months after issuance R.14.08

2) Service of Statement a) 20 days after service R.18.01

27

Category Description Timing Rule(s)of Defense of Statement of Claim (if

defendant served in Ontario)b) 40 days (if defendant served elsewhere in Canada or U.S.)c) 60 days (if defendant served outside Canada & U.S.)

3) Plaintiff's Reply to Statement of Defense (if appropriate)

10 days after service of Statement of Defense (or 20 days if also served with a counterclaim)

R.25.04(3)

As the standard provincial court action progresses beyond the initial stages, there are many rules that inherently have an effect on the duration of a standard provincial action. These procedures, which speed-up, slow down, and/or circumvent the full litigation of an action, are provided within Table 2.

Table 2 – Standard Rules that Affect the Duration of Litigation for a Provincial ActionCategory Description Rule(s)1) Extension / Abridgment

The court may, by order, extend or abridge any time period, on such terms as are just.

R.3.02(1)

2) Status Rule (Action not on Trial List within 2 Years)

Where an action has not been placed on a trial list or terminated by any means within 2 years after the filing of the Statement of Defense, the registrar shall serve notice on the parties that the action will be dismissed for delay unless it is set down for trial or terminated within 90 days after service of the notice. Any party may request a status hearing (before a judge) wherein the Plaintiff will usually try and show cause as to why the action should not be dismissed for delay.

R.48.14(1), R.48.14(5), R.48.14(8)

3) Offers to Settle (Cost Consequences that Encourage Settlement)

1) If the Plaintiff makes an offer to settle and it is not accepted by the Defendant, and the Plaintiff receives judgment that is as or more favorable than their offer, then the Plaintiff is entitled to:i) Partial indemnity costs from the date of commencement to the date of the offer (per Tariff A), andii) Substantial indemnity costs from the date the offer was served onwards

R.49.10(1)

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Category Description Rule(s)2) If the defendant makes an offer that is not accepted by the Plaintiff, and then the Plaintiff receives judgment that is as or less favorable than the Defendant's offer, then:i) The Plaintiff is entitled to partial indemnity costs from the date of the commencement until the date of the offerii) The Defendant is entitled to partial indemnity costs from the date the offer was served until the end of the proceeding

R.49.10(2)

(2) Ontario's Expeditious InitiativesTable 3 – Expeditious Initiatives Implemented within OntarioACCESSIBILITY UNIQUE PROCEDURAL ASPECTS


1. PRE-TRIAL CONFERENCEA judge MAY, at the request of a party or upon his/her own initiative, direct the solicitors (with or without the parties) to appear before a judge or officer for a pre-trial conference.

R.50.01 Issues to be discussed at the pre-trial conference include: settlement possibilities, simplification of the issues, the possibility of obtaining admissions, and the estimated duration of the trial.

R.50.01

2. FULL CIVIL CASE MANAGEMENT (R.77) – STANDARD OR FAST TRACKDesigned to ultimately be a province-wide rule. Currently in effect in only some districts. (Excludes some actions, such as simplified actions of low monetary claims)

1) At commencement of proceeding, plaintiff chooses the track (standard or fast track). The defendant can change the track, but there is a time limit for doing so.

R.77.06(5), R.77.07

R.77.01(1)

2) Where no defense is filed, and the proceeding has not been disposed of by a final order within 180 days of the originating process, the Registrar shall dismiss the proceeding as abandoned.

R.77.08

R.77.01(2)

3) Once the defense is filed, the case is assigned to a case management team for management.

R.77.09(3)

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ACCESSIBILITY UNIQUE PROCEDURAL ASPECTS

Description Rule Description Rule4) Settlement conference is held, wherein the possibility of settlement is evaluated by the parties. Fast track = 150 days after 1st defense has been filed, standard track = 240 days after 2nd defense is filed. All discovery must be completed by the settlement conference date. A trial or hearing date is assigned at the settlement conference.

R.77.14, R.77.14(1), R.77.14(2), R.77.14(7)

5) Trial management conference may be held at the request of a party or on the initiative of the trial judge, case management judge, or master, at any time following the setting of a trial date. Discussions may include, for example: expeditious means for the presentation of evidence and directions that will facilitate the orderly and expeditious conduct of trial.

R.77.15(1) R.77.15(3)

6) A case management judge (or master) may convene a case conference at any time on his/her own initiative or upon a party's request. Discussions may include, for example: exploring methods to resolve contested issues, creating a timeline for the proceeding, and the potential usefulness of referring an issue to ADR.

R.77.13(1), (3), & (5)

7) The plaintiff has a duty to file a timetable (or request a case conference to establish a timetable) within 180 days after the proceeding is commenced. Such a timetable will set deadlines by which specific steps in the proceeding must occur.

R. 77.10(2)

30


Description Rule Description Rule8) Provides for an informal motion procedure (before a case management judge or master).

R.77.12

3. MANDATORY MEDIATION (R. 24.1)Applies only to certain actions

1) A mediation session shall take place within 90 days after the first defense has been filed, unless the court orders otherwise. However, for standard track case management, the mediation session may be postponed up to 60 days with the consent of the parties.

R.24.1.09 (1)&(3)

2) The parties may select the mediator from a list of mediators compiled by the local mediation committee, or they may select a mediator that is not on the list. If a mediator is not selected in not done in time, a mediator will be assigned.

R.24.1.08 (1)

3) The parties and their lawyers (if represented) are required to attend the mediation session unless the court orders otherwise.

R.24.1.11 (1)

4) If an agreement settles the action, the defendant shall file a notice to that effect.

R.24.1.15 (3)

5) With consent of the parties, the court may make an order to have additional mediation.

R.24.1.16 (1)

4. TORONTO CIVIL CASE MANAGEMENT PILOT PROJECT (R.78)

General Applicability: General Unique Procedural Aspects:

Applies to most actions commenced in Toronto after December 31, 2004.

Applicability of Full Case Management (R.77)

R.78.01(1)Practice

Direction (Dec.

1) The strict timelines for full mandatory mediation (R.24.1) do not apply. For a simplified procedure (R.76) mediation must be conducted within 150 days after the close of

R.24.1.09.1(2)(b), R.24.1.09.1(2)(c)

31


Description Rule Description Rule1) Civil cases in Toronto are not automatically assigned to full (i.e. R.77) case management.2) If all of the parties consent in writing, a judge or case management master may, on a party's motion, assign one or more actions to case management in accordance with R.773) On a party's motion, or on his/her own initiative, a judge or case management master may assign the action to R.77 case management if a party has taken steps that amount to chronic and substantial obstruction of the action.4) At a case conference, a master may order that the action proceed under full (R.77) case management.

Applicability of Partial Case Management1) If certain criteria are met, the parties to an action may make a joint request to the administrative master asking that the case be case managed (typically in some less comprehensive form than under R.77). One of the following criteria must be met: there are complex factual or legal issues, it is a matter of public interest, there are numerous parties or related proceedings, or there is chronic and substantial obstruction to the timely disposition of the action.2) If it appears to the administrative master that a

31/04)R.78.12(1)

R.78.12(3)

R.78.09(e) R.78.12(1)

Practice Direction (Dec. 31/04), s.16

Practice Direction (Dec. 31/04), s.17Practice Direction (Dec. 31/04), s.17

pleadings. For all other actions, the parties are free to determine the timing of the mediation. The only constraints are that the parties must conduct a mediation session at the earliest stage at which it is likely to be effective, and within 90 days after the action is set down for trial.2) Provides for flexible, less formal case management in which the parties have a greater responsibility for moving the action along (as compared to fully case managed R.77 proceedings). Court intervention is only provided when needed.

3) When a case conference is held, the powers of a master assigned to a proceeding include:(a) ordering that the proceeding be fully case managed (under R.77)(b) establishing or reviewing a timetable and giving directions so that all parties are ready for trial(c) requiring written direction compliance reports, and(d) convening a further case conference.4) Parties must deal with the non-compliance of another party by taking the initiative to bring the matter back before the court. In such a case, the court will usually transfer the action to full (R.77) case management.5) If all parties agree in writing, any direction or timetable set by the master at a case conference (other than a

R.78.02

R.78.09

Practice Direction (Dec. 31/ 04), s.23R.78.11(1), R.78.11(2)

R.78.10(1)

Practice Direction (Dec. 31/04)

32


Description Rule Description Ruleform of case management is warranted, a master will be assigned to the case.3) Where case management is sought otherwise than at the joint request of all parties, it shall be by way of motion.

deadline for setting down to trial) may be varied.6) After an action is set down for trial, a pre-trial conference (R.50) must take place.7) Once trial dates are set, there will be no adjournments of the trial except in the case of an emergency.

b. British ColumbiaThe Supreme Court of British Columbia is British Columbia's superior trial

court. The civil procedures of the Supreme Court are governed by the Supreme Court Rules (B.C. Reg. 221/90). British Columbia has incorporated some initiatives into the Supreme Court Rules which are aimed at speeding-up the litigation process, under certain circumstances. These provincial initiatives are provided within Table 4. Unless otherwise indicated, all rules referred to below are from the Supreme Court Rules.

33

Table 4 – Expeditious Initiatives Implemented within British ColumbiaACCESSIBILITY UNIQUE PROCEDURAL ASPECTS


1. CONFERENCESOn a request being received, or on his/her own initiative, at any stage of an action, a judge or master may direct that a pre-trial conference, mini-trial, or settlement conference be held.

R.35(2) 1) Pre-trial conference = Discussing simplification of the issues, potential amendments to pleadings, possible admissions, quantum of damages, and fixing a date for trial.

R.35(3)

2) Mini-trial = Parties attend before a judge or master who, in private and without hearing witnesses, gives a non-binding opinion on the probable outcome of a trial.

R.35(5)

3) Settlement conference = Parties attend before a judge or master who shall, in private and without hearing witnesses, explore all possibilities of settlement of the issues that are outstanding.

R.35(6)

2. FAST-TRACK LITIGATION (R.66)Applies to actions in which the trial is expected to take less than 2 days.

R.66(1) 1) Examinations for discovery cannot exceed 2 hours (without consent).

R.66(13)

2) No party is obliged to answer interrogatories (unless court orders otherwise).

R.66(18)

3) Cannot have a trial by jury. R.66(19)

4) Trial date must be set by Registrar no more than 4 months after the application for trial date.5) The parties must file a trial agenda.

R.66(22)

3. CASE MANAGEMENT (Practice Direction – November 20, 1998)When an action is case managed, the process begins with an initial case management conference. The appropriate steps are then taken from there, depending on the specifics of

Practice Direction, Part I, s.6

34


the case.

Case Management of Long Trial Action s: All civil actions with an estimated trial length of 20 days or more will be assigned to a trial judge for case management.

Practice Direction, Part I

Case Management of Short Trial Actions:Management of cases with an estimated trial length of 1 to 19 days will be restricted to those cases that are in need of court management (as selected by the Chief Justice of the Supreme Court).

Practice Direction, Part IV

Applicability of Pre-Trial Conferences:

Applies to all:

Practice Direction, Part III, s.1

i) Civil trials 4-19 days in length, andii) Jury and priority trials less than 20 days in length,A pre-trial conference must be held before a judge or master within 30 days of the trial date

4. MEDIATION [ Notice to Mediate (General) Regulation – B.C. Reg.4/2001] Any party to an action may initiate mediation by delivering a Notice to Mediate Form to:i) All other parties to the action, and

Notice to Mediate (General) Reg., s.3

35


ii) The Dispute Resolution Office in the Ministry of the Attorney General.

c. AlbertaThe Queen's Bench of Alberta is Alberta's superior trial court. The civil

procedures of the Queen's Bench Court are governed by the Alberta Rules of Court (Alta. Reg. 390/1968). Alberta has incorporated some initiatives into the Alberta Rules of Court which are aimed at speeding-up the litigation process, under certain circumstances. These provincial initiatives are provided within Table 5. Unless otherwise indicated, all rules referred to below are from the Alberta Rules of Conduct.

Table 5 – Expeditious Initiatives Implemented within AlbertaACCESSIBILITY UNIQUE PROCEDURAL ASPECTS


1. PRE-TRIAL CONFERENCES

1) A conference must be held for:i) Any trial set for 3 days or longer,ii) All matters to be heard by jury, andiii) Cases where the court orders a conference.

Civil Practice Note 3 (March 25, 2002)

Issues to be discussed at a pre-trial conference include: possible simplification of the issues, potential amendments to pleadings, possibility of admissions, and any other matters that may aid in the disposition of the proceeding.

R.219(1)

2) In any action (other than a very long trial action), the court may direct a pre-trial conference to occur, either upon the application of any party or upon the Court's own motion.

R.219(1)

2. CASE MANAGEMENT (Civil Practice Note 1 – August 18, 2005)1) The parties shall apply for the appointment of a case management judge for an action:

s.2 1) Case management judge can encourage mediation (but cannot order unless the parties consent).

s.13

i) To be tried by juryii) That appears to be very long trial action (i.e. likely to

Alberta 2) Case management judge can make any order which he/she believes will likely promote the

s.12, s.14, s.21

36


require more than 25 trial days), oriii) Wherein case management has been ordered by a court.

Rules of Court R.5(1)(u)

efficient resolution of the action. For example, a case management judge may: order steps to be taken, establish a case timetable, and convene a case management conference at any time.

3) For very long trial actions (or any other actions if the case management judge thinks it is appropriate), the management judge shall convene:

s.40, s.41

i) A scheduling conference = Addressing efficient resolution of the action and establishing a case timetable, and

s.42

ii) A duration conference = Determining the number of trial days required.

s.46

2) For any action, any party may apply for, or a judge on his/her own initiative may recommend to the Chief Justice, case management where it would promote the efficient resolution of an action.

s.3

3. CIVIL MEDIATION PROGRAM (Civil Practice Note 11 – Sept./2004)

3.a. Mediation at the Request of One Party : Applies only to certain actions:

1) If one party would like to mediate, that party may serve a Request to Mediate Form upon the other parties.2) If a party objects to mediation, they have 30 days after service of the Request to Mediate Form to serve a Response to Request to Mediate Form3) In the case of objection, the Mediation Coordinator then conducts a situation assessment meeting (S.A.M.), wherein the mediation coordinator decides how to best proceed.

s.2s.9

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3.b. Consensual Mediation:Parties can opt into the mediation, if they so desire. This requires the consent of all parties.

1) If all parties agree to go to mediation, then the parties may select a roster mediator and schedule mediation directly with the mediator.

d. Nova ScotiaThe Supreme Court of Nova Scotia is Nova Scotia's superior trial court. The

civil procedures of the Supreme Court of Nova Scotia are governed by the Civil Procedure Rules Nova Scotia. Nova Scotia has incorporated some initiatives into the Civil Procedure Rules Nova Scotia which are aimed at speeding-up the litigation process, under certain circumstances. These provincial initiatives are provided within Table 6. Unless otherwise indicated, all rules referred to below are from the Civil Procedure Rules Nova Scotia.

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Table 6 – Expeditious Initiatives Implemented within Nova ScotiaACCESSIBILITY UNIQUE PROCEDURAL ASPECTS


1. GENERAL LIST OF PROCEEDINGS FOR TRIAL (R.28.11)1) Each prothonotary maintains a General List that lists all proceedings in which the pleadings are closed and yet no date for trial has been fixed.

R.28.11(1)

1) After a proceeding has been on the General List for 3 years, the prothonotary shall give the parties notice that they have 30 days to file a Notice of Intention to Proceed.

R.28.11(2)

2) Intervention occurs when a proceeding has been on the General List for 3 years.

R.28.11(2)

2) If a Notice of Intention to Proceed is not filed in time, the proceeding will be dismissed.

R.28.11(3)

3) If a Notice of Intention to Proceed is filed on time, a notice of trial must be filed within 6 months thereafter.

R.28.11(4)

2. CONFERENCES (PRE-TRAIL OR PRE-HEARING)In any proceeding, the court may itself, or on the application of any party, direct the parties to appear before it for a conference.

R.26.01(1)

At the conference, issues to be discussed include: simplification of the issues, potential pleading amendments, possibility of admissions, limitation of the number of witnesses, and any other matter that may aid in the disposition of the proceeding.

R.26.01(1)(a)-(e)

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3. HALIFAX CASE MANAGEMENT RULES (R.68)

3.a. Ordinary Process1) Parties shall file and serve lists of documents in the times provided under the normal rules (i.e. R.20.01(1)).2) Discovery of witnesses (other than experts) must be completed within 6 months after the close of pleadings.3) Discovery of any expert witnesses must be completed within 14 months after the close of pleadings.4) May only make motions to a judge on certain "appearance days" (as designated by the court). The Court may also order a party to appear on such days to respond to matters that the court advises. Appearance days typically commence Fridays at noon.5) On appearance days, the court may, for example: vary any time limit, order sanctions for non-compliance, bring a proceeding into the fast process, or order that the proceeding be managed by a judge (if the proceeding is sufficiently complex).6) A court may, on its own motion, bring parties forward to discuss the status of a case when 24 months have passed since the close of pleadings.7) Settlement conferences may be offered if requested by a party and consented to by all other parties to the action.

R.68.02

R.68.02

R.68.02

R.68.04(1), Practice Memo 27, s.1

Practice Memo 27, s.3Practice Memo 27, s.1

Applies to all actions commenced within Halifax, N.S.

------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------3.b. Fast Process1) If the plaintiff is satisfied that a Notice of Trial can be filed within 8 months, plaintiff may file and serve originating notice with the words "FAST TRACK" on it.

R.68.03(1)

Same rules apply as for the Ordinary Process, except:1) Must file and serve list of documents within 20 days after the close of pleadings.2) Discovery of witnesses must be

R.68.03(1)

R.68.0

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completed within 4 months after the close of pleadings.3) A court may, on its own motion, bring parties forward to discuss the status of a case when:i) 10 months have passed since the close of pleadings, orii) 24 months have passed since the filing of the originating notice and no defense has been filed.

3(1)

Practice Memo 27, s.3

2) If the court is then satisfied that a Notice of Trial can be filed within 8 months, the action will follow the Fast Process.

R.68.03(2)

C. THE EUROPEAN UNION

Note that the European Court of Justice is an EU supra-national court to which questions of law only are referred, in the context of trade mark infringement proceedings. It has no jurisdiction to decide cases and will refer its decision on the law to the referring court to apply it to the facts. Therefore, its relevance to case management provision applicable in trade mark infringement proceedings is very limited.

Consideration was given to making the election of an ADR proceeding mandatory in the Model Procedures. It was noted, however, that the European Union issued a Directive dated 21 May 2008 (Directive 2008/52/EC, OJ L 136/3, 24.05.2008) on certain aspects of mediation in civil and commercial matters that specifically calls mediation to be a voluntary process. The EU-Directive does not provide for substantive law but only forces the Member States to adopt national legislations inline with the Directive within a term ending on 21 May 2011. The Member States have to adopt the rules of the Directive as a minimum standard but may also provide for a mandatory process of mediation or ADR. The minimum standards to be complied with may be summarized as follows:

The Directive is limited to cross-border disputes in civil and commercial matters, being disputes between parties of different Member States involving rights and obligations which are at the parties’ disposal.

“Mediation” means a structured process conducted by a mediator, being an impartial third person, who may be a judge but not the one being responsible for any judicial proceeding concerning the dispute.

The mediation process shall be promoted and encouraged by the national laws. Furthermore, the Member States shall encourage the training of mediators in order to ensure an effective quality of mediation processes.

A court may at its discretion invite the parties to use mediation or at least to attend an information session on the use of mediation, if available. Any stricter approach is admissible, including making the use of mediation compulsory or subject to incentives or sanctions, provided that the national legislation does not prevent the parties from exercising their right of access to the judicial system.

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The national legislation should ensure to make a written agreement between the parties enforceable.

The national law has to warrant confidentiality of mediation. Unless the parties agree otherwise, neither mediators nor those involved in the administration of the mediation process shall be compelled to give evidence regarding information arising out of or in connection with a mediation process except where matters of public policy are concerned and where disclosure of the content of the agreement is necessary in order to implement or enforce the agreement.

Finally, the Member States should ensure that parties who choose mediation are not prevented from initiating judicial proceedings or arbitration by the expiry of limitation or prescription periods.

Based on the above mile stones of the national laws, the Commission shall collect the experiences on the results of the laws within a 5-years-period and shall submit to the European Parliament, the Council and the European Economic and Social Committee a report on the application of the directive by 21 May 2016.

Though engaging in ADR is voluntary, the reporting procedures incorporated into the report may help encourage use of ADR by the parties. The EU Directive further calls for mediation procedures to take place in a manner which respects confidentiality which feature is also adopted in the report.

D. ENGLAND AND WALES

The procedure of the Courts of England and Wales is governed by the Civil Procedure Rules (the CPR). The following highlights the key case management provisions of the CPR.

1. CPR 1 – The Overriding Objective

The Court must give effect to the overriding objective of dealing with all cases justly (and the parties must assist in that). This includes; (a) ensuring the parties are on an equal footing; (b) saving costs; (c) dealing with a case proportionately to the amount of money involved, the importance of the case, the complexity of the issues and the financial position of each party (d) ensuring that the case is dealt with expeditiously and fairly; and (e) allotting an appropriate share of the Court's resources.

The Court must further the overriding objective by actively managing cases. Active case management includes: (a) encouraging the parties to co-operate with each other in the conduct of proceedings; (b) identifying issues at an early stage; (c) deciding promptly which issues need full investigation and trial and accordingly disposing summarily of the others; (d) deciding the order in which issues will be resolved; (e) encouraging the parties to use an alternative dispute resolution procedure if the Court considers that appropriate and facilitating the use of such procedure; (f) helping the parties to settle the whole or part of the case; (g) fixing timetables or otherwise controlling the progress of the case; (h) considering whether the likely benefits of taking a particular step justify the cost of taking it; (i)

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dealing with as many aspects of the case as it can on the same occasion; (j) dealing with the case without the parties needing to attend at court; (k) making use of technology; and (l) giving directions to ensure that the trial of a case proceeds quickly and efficiently.

2. CPR 3 – The Court's Case Management Powers

The Court's general powers of management include: (a) extending or shortening time for compliance with any rule or court order; (b) adjourning or bringing forward a hearing; (c) requiring a party or a party's legal representative to attend court; (d) holding a hearing and receiving evidence by telephone; (e) directing that any part of any proceedings can be dealt with as separate proceedings; (f) staying the whole or part of the proceedings either generally or to a specific date or event; (g) consolidating the proceedings; (h) trying two or more claims on the same occasion; (i) directing a separate trial of any issue; (j) deciding the order in which issues are to be tried; (k) excluding an issue from consideration; (l) dismissing or giving judgment on a claim after a decision on a preliminary issue; (m) ordering any party to file and serve an estimate of costs; and (n) taking any other step or making any other order for the purpose of managing the case and furthering the overriding objective.

Where a rule or enactment does not provide otherwise, the Court is able to exercise its powers of its own initiative. This power enables the Court to react to the particular issues of a case and move the case forward quickly and efficiently in accordance with CPR 1.

Where a party has failed to comply with a rule, practice direction or Court order the Court may impose sanctions.

3. CPR 26 – Allocation to Case Management Tracks

Following completion of an allocation questionnaire a claim will be allocated to the one of three 'tracks'; small track, fast track and multi-track. Allocation will be based upon the value of the claim, the nature of the remedy sought, the likely complexity of facts, law or evidence, the number of parties, the value of any counterclaim, the amount of oral evidence that may be needed, the importance of the claim to non-parties, the views expressed by the parties and the circumstances of the parties.

Most trade mark infringement proceedings will be allocated to the 'multi-track' appropriate for larger cases.

4. CPR 29 – Multi-track Case Management

The general rule is that claims over £15,000 will be allocated to the multi-track. Following allocation to the multi-track, the Court may give full directions for the management of the case or order a Case Management Conference.

a. CPR 29.3 – Case Management Conference

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This takes place at an early stage in the proceedings shortly after the allocation. The Court will review the steps that the parties have taken in the preparation of the case, their compliance with Court orders, decide and give directions about future steps to be taken in order to comply with the overriding objective, and ensure that any agreements that can be made between the parties regarding the matters at issue and the conduct of the claim are recorded. Failure to comply with the case management procedures will not necessarily postpone the trial but may give rise to sanctions such as making a payment of monies into Court or having the whole or part of the case struck out.

b. CPR 29.6 – Pre-trial Check List

This takes place at an early stage in the proceedings, shortly after the allocation. The pre-trial check list will be sent out by the Court to be completed by the parties no later than 8 weeks prior to trial, where the Court considers it appropriate. The purpose of the check list is to ensure that all case management directions have been complied with. Failure by either party to complete the check list will result in a listing hearing, the cost of which is borne by the defaulting party. Where neither party completes the pre-trial checklist the Court can order that the claim, defense and any counterclaim be struck out.

c. CPR 29.7 – Pre-trial Review

The Court may decide to hold a pre-trial review on receipt of the completed pre-trial checklists. A review will often (but not necessarily) take place where the trial is likely to last for more than 10 days. It will if practicable be conducted by the trial judge. It provides further opportunity for the parties to settle prior to trial and without incurring full trial costs or to prepare the trial agenda.

5. CPR 31 – Disclosure and Inspection of Documents.

The general rule for disclosure is that a party is required to disclose documents upon which it relies and those which adversely affect its case or support the other party's case ('Standard Disclosure'). However, CPR 31.5 states that this rule may be dispensed with or limited at the discretion of the Court.

6. CPR 32 – Evidence

Under this rule the Court has wide powers to deal with evidence presented by the parties. The rule allows the Court to give directions relating to the issues for which it requires evidence, the nature of the evidence which it requires and the way in which the evidence should be placed before the Court. The Court may exclude evidence that would otherwise be admissible and it may limit cross-examination.

E. FRANCE

Historically, French judges have not taken an active role in the management of cases, but this is changing. Judges on the whole still set successive hearings to enable the parties to submit briefs and evidence, rather than use procedural

44

timetables, but extensions are fewer and the use of timetables as a way to manage cases and as a measure of performance of the court is spreading. In particular, under pressure from competition from other European courts to become an attractive forum for complex intellectual property litigation, specialized chambers of the Paris Courts are implementing a judicial procedural schedule in order to shorten the time period between the writ and the judgment. More generally, vigorous measures have been implemented in order to streamline the management of procedures, including a more frequent and active use of judicial procedural timetables agreed to by the parties (Paris commercial court) and enforcement of shorter deadlines by granting less extensions, the judicial disposition of procedural issues at the outset of the case to reduce delays and multiple hearings on procedural issues in the course of preparing the case for trial.

France has two distinct hierarchies of Courts: judicial Courts and administrative Courts. Each Court system has its own Supreme Court (Cour de cassation; Conseil d'Etat)

The judicial courts include civil, criminal, commercial and labor courts. Under article L. 716-1 and articles L. 716-9 to L. 716-14 of the French Intellectual Property Code ("CPI"), all trade mark litigations must be brought before criminal or civil courts, with the exception of:

actions against regulations and administrative decisions (other than decisions granting, refusing or maintaining industrial property titles, which shall be submitted to the civil courts of appeal) of the administration in charge of industrial property, which are attributed to the administrative courts;

arbitration pursuant to the terms of articles 2059 and 2060 of the French Civil Code

1. General Civil Procedural Rules

In a nutshell, the defendant receives a writ which is also transmitted to the Clerk's office. Once a copy of the writ has been put on the court docket, the case is referred to the court. The parties exchange, under the supervision of the judge, their briefs as well as the documents submitted into evidence (claim, counterclaim and recapitulative claim which is a comprehensive recap of the legal grounds and claims). Following the closure of submission of briefs and evidence, the judge sets a date for the hearing of oral arguments. The judge renders a decision after hearing oral arguments. The judgment is served by one party on the other.

a. The Writ

The writ is drafted by an attorney (avocat) and served by a bailiff to the defendant in order to inform it that an action is brought against it. To be valid, the writ must contain the following (art. 56 and 648 of the French Civil Procedure Code – "NCPC"-): identity of the parties, court in charge of the case, presentation of facts, purpose of the claim, list of exhibits.

b. Submission of Briefs and Evidence

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Each party submits to the other the factual and legal grounds it intends to rely on, as well as the elements it submits into evidence. The choice of evidence is free but there is a hierarchy of proof. Communication of evidence must be spontaneous and complete. To render his or her decision, the judge is not entitled to take into account arguments and/or evidence that have not been communicated on time by one party to the other.

c. Judgment

The judge renders a decision after due hearing of the parties. He or she invites the parties to present their observations on any legal grounds the court raises.

Before or after oral arguments, parties submit a litigation file which contains detailed developments of the arguments in the briefs together with supporting evidence and case law. Procedural objections (objection of lack of jurisdiction, pendency of case, invalidity, etc.) must be invoked in limine litis (before any argument on the merits or demurrer).

d. Appeal

Court of Appeal: the appeal is a second trial on the merits. The Court of Appeal makes its own findings of fact and law. The appeal must be exercised within one month of the service of process of the decision from a party to the other.

e. Supreme Court:

The French Supreme Court only decides issues of law. The Supreme Court can only cancel or refuse to cancel an appellate decision (it is not entitled to reverse the decision as a Court of Appeal would do) and remand to another Court of Appeal. The decisions of the French Supreme Court are not binding on courts of lower jurisdiction except when rendered en banc upon a second appeal to the Supreme Court. Appeals to the Supreme Court must be exercised within two months.

f. Timing

Currently, before the Paris first level civil court, lawsuits in IP cases average 18 to 24 months. Before the Paris Court of Appeal lawsuits average in IP cases two and a half to three years.

Nevertheless, under the pressure of competition with other European courts to become an attractive forum for complex intellectual property litigation, specialized chambers of the Paris Courts are implementing a judicial procedural schedule in order to shorten the time period between the writ and the judgment. More generally, vigorous measures have been implemented in order to streamline the management of procedures, including a more frequent and active use of judicial procedural calendars agreed to by the parties (Paris commercial court) and enforcement of shorter deadlines by granting less extensions, the judicial disposition of procedural issues at the outset of the case to reduce delays and multiple hearings on procedural issues in the course of preparing the case for trial.

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g. Cost Awards

Legal expenses are borne by the losing party, unless the judge, by a reasoned decision, imposes the whole or part of it to another party (art. 699 NCPC).

Furthermore, in all proceedings, the judge orders the party bearing legal costs or the losing party to pay to the other party the sums disbursed but not included in the legal costs. For this purpose, the judge takes into account the rules of equity and the financial conditions of the party ordered to pay. Therefore, he may decide that there is no need for such order (art. 700 NCPC).

To summarize, French judges tend(ed) not to actively manage the procedure schedule of case, but this is changing. Judges on the whole still set successive hearings to enable the parties to submit briefs and evidence, rather than use procedural calendars, but extensions are fewer and the use of calendars as a way to manage cases and as a measure of performance of the court is spreading. Once the parties have transmitted to each other their brief and documents submitted into evidence in order to respond to the arguments raised by the other, the judge closes the submission of briefs and evidence.

2. General Criminal Procedural Rules

French criminal procedure is made up of two phases:

(a) an inquisitorial preliminary phase wherein the judge has wide investigative power to seek evidence; and

(b) an accusatory judgment phase wherein the judge acts as an arbitror whose mission solely consists in supervising and ensuring the loyalty of the debate.

To bring a criminal action, the plaintiff can file a complaint with the public prosecutor which may bring about an investigation carried out by the investigation judge. Owing to the investigative powers of the investigation judge (intervention of the Criminal Investigation Department upon letters rogatory), the plaintiff has access to information he could not have discovered otherwise. The hearing of oral arguments occurs at the end of the investigative phase, before the Criminal Court (tribunal correctionnel).

Otherwise, criminal action can be brought via direct summons. In this case, it is up to the plaintiff to gather evidence of the alleged facts.

3. Specific Procedural Rules Dealing With Trademark Litigation

a. Appeal Against the Decisions Rendered by the Director of the French National Institute of Industrial Property (INPI).

Pursuant to article L. 411-4 of the CPI, decisions of the Director of the INPI granting, refusing or maintaining industrial property titles shall be submitted to the civil Courts of Appeal. The ten Courts of Appeal having exclusive jurisdiction on such

47

matters are listed in article R. 411-19 CPI. The Court can only cancel or refuse to cancel the Director's decision. Appeals shall be exercised within one month of the decision (the plaintiff shall file a written statement –in duplicate - with the court Clerk's office).

b. Courts Jurisdiction With Respect To Trademark Litigation

National trademarks:The First Level Courts (tribunaux de grande instance) have subject matter jurisdiction for trademark civil litigation. According to this rule, trademark infringement actions involving two merchants are excluded from the jurisdiction of the Commercial Court (tribunal de commerce).

European trademarks: Civil proceedings relating to European trademarks shall be heard by the Paris First Level Court (tribunal de grande instance de Paris).

c. Specific Summary Proceeding (Art. L716-6 CPI)

The President of the court before which proceedings have been instituted, sitting in chambers, may provisionally prohibit a continuation of the alleged infringing acts, subject to a daily fine, or may subject such continuation to the provision of securities for the purpose of ensuring compensation to the owner of the trademark or to the beneficiary of an exclusive right of exploitation.

Action for prohibition or provision of securities shall be admissible only if the case appears well-founded and proceedings were instituted within a short time following the day on which the owner of the trademark or the beneficiary of an exclusive right of exploitation obtained knowledge of the facts on which they are grounded.

Such procedure is likely to be altered because of the forthcoming transposition of the EU Directive 2004/48/EC into French law. According to the French draft, preliminary injunctions may be requested before filing a complaint on the merits and may be requested unilaterally. Reasonable available evidence creating sufficient degree of certainty of a breach of the intellectual property right would suffice to bring this action.

d. Trademark Infringement Seizure Operations

An infringement seizure operation is a specific procedure aimed at gathering evidence of infringement. The seizure operation is carried out by a bailiff on order of the judge (subject matter jurisdiction is granted to the first level courts – tribunal de grande instance). There are two kinds of seizure operations: the descriptive seizure which simply consists in the description of the infringing products (with or without taking samples), and the effective seizure which enables to seize the integrality of the alleged infringing products. The judge can authorize the bailiff to be assisted by an expert. At the end of the operation, the bailiff draws up a seizure report which must bear the mentions provided in article 648 of the NCPC. The seizure operation is deemed null and void and the seizure report is excluded from the debate if the claimant has not delivered a writ or filed a complaint within 15 days of the seizure operation.

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F. GERMANY

The civil court procedure in Germany is governed by the Civil Procedural Act. It should be differentiated between ordinary court proceedings and urgent proceedings (preliminary injunctions).

1. Ordinary Procedure Of First Instance

a. Basic Principles

(1) Principle of Party Control

As the basic rule of civil proceeding it is the parties who control the life history of the lawsuit and its subject matter. Whether at all and what kind of legal proceedings are being established is, under German law of civil procedure, at the disposition of the individual party, particularly the plaintiff, who determines with his or her complaint the matter in controversy.

(2) Principle of an Adversary System

As far as the responsibility for fact-finding is concerned, German civil procedure adheres to an adversarial system, which is reflected in the principle of party control over statements, allegations and proof. The opposite principle of judicial investigation, pursuant to which the judge takes the initiative ex officio, applies only exceptionally in special cases of family law disputes and others. Thus, the civil procedure accepts the general constitutional principle of the autonomy and responsibility of the individual.

(3) Duty of the Parties to Tell the Truth

The principles of party control and of an adversary hearing provide for the duty of the parties to disclose all relevant facts. Thus, the court must not take facts into account in the judgment that the parties did not present in its allegations and pleadings. However, this system can only work if the parties are obliged to tell the truth and to allege all relevant facts completely. This duty however does not mean that a party must investigate the truth of any fact before alleging it since it is the task of the court to evaluate the factual basis after having heard the evidence.

(4) Principal of Orality

Another principle of civil proceedings in Germany is the principle of orality, which is more a theoretical principle, since it is widely diluted by exemptions and the practice of the courts. In fact, all statements and pleadings are prepared by written arguments and observations. However, a decision of the court may only be issued after an oral hearing has taken place, in which the written statements will either be repeated or in which the parties simply refer to its written statements.

(5) Principle of Continuous Oral Hearing

Being part of the principle of oral proceedings, the maxim of a continuous oral hearing reflects the desire to bring the proceedings to an end in a single oral

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hearing. In more complex cases however, it will hardly be possible to terminate a proceeding with one hearing only. In such cases, the preliminary hearing is then followed by the main hearing. The law considers all hearings as forming a union, thereby representing the continuous hearing.

(6) Principle of Immediacy

The principle of immediacy means that the oral hearing has to take place before the same court that renders the judgment. This principle applies in particular to the taking of evidence as only the judges being personally present to the taking of evidence may render a judgment.

(7) Principle of Administration of Justice in Open Court

This principle means that civil procedures are generally opened to the public so that a court may only order the exclusion of the public in exceptional cases, especially when safety of the State may be endangered or public morals corrupted. Furthermore, the public may be excluded, if important business or industrial secrets may be disclosed and the owners prejudiced.

(8) Principle of a Speedy Trial

A speedy trial is one of the major goals of civil proceedings, although the meaning of a speedy trial is doubtful. It basically means that the court has the duty to promote the proceedings and to force the parties to timely complete their written statements in order to appropriately prepare the oral hearing and the final judgment. If the parties of the proceedings do not meet the time limits set by the court, they may be barred from any additional submissions at a later stage.

b. Introduction of the Claim

Civil proceedings can only be instituted by a plaintiff’s complaint and never ex officio by a court. In the complaint, the plaintiff must allege that his or her rights have been encroached upon. The plaintiff has to specify precisely what kind of relief is being sought based on particular facts. Consequently, a complaint without a distinctive claim or petition lacks an essential element and will be rejected by the court as incomplete and therefore inadmissible. Usually, a plaintiff brings an action for performance. Only if this will not be possible, an action for a declaratory judgment or an action requesting a change of a legal right or status are admissible.

Except for the municipal (local) courts, the plaintiff must be represented by attorneys admitted to practice before that court.

Furthermore, the court fees have to be paid with the filing of the complaint in advance. The claim has to contain the names of the parties, the claim together with the amount in controversy and the facts and evidence supporting the claim.

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c. Progress of Proceedings

If the action meets all formal requirements, the claims will be served ex officio by the court to the defendant with the request to appoint an attorney at law (except for the proceedings at the municipal courts) for preparing and filing an appropriate defense. The court may adopt two different forms of procedure:

Either a written preliminary procedure or a procedure that involves an early oral hearing. Usually, the court makes an order accordingly and sends it to the defendant together with the writ of summons. The court should in any case chose the procedure that brings about the quickest conclusion of the matter on the basis of the statement of claim, thereby serving the maxim of economic proceedings.

d. Defense

Depending on the specific procedure the court has chosen for the individual case, the defendant has to indicate in the alternative of a written preliminary procedure within two weeks after service of the writ of summons whether the action will be contested. If it is to be contested, a written statement of defense must be forwarded to the court within another two weeks. This term is extendable.

If the court chooses to invite the parties to an early oral hearing, the defense has to be filed well-ahead before the hearing, unless the court provides for a specific time limit.

Within the defense the defendant may raise a number of objections against the plaintiff’s claims. These defenses may be qualified either by there merits, i.e. substantive exceptions, or as procedural exceptions. The defendant will certainly prepare the defense with great care regarding all the facts alleged by the plaintiff, because all facts, which are not expressly denied, are generally deemed to be admitted.

e. Procedural Irregularities

If formal requirements of the statement of claims are not obeyed, the court’s fees are not paid in advance or the plaintiff is not represented by an attorney where required, the court will either dismiss the claim as inadmissible or take no notice at all of the plaintiff’s action. But before doing so the court has to give the parties the chance to rectify the formal deficiencies.

Further sanctions should enable a speedy trial: The basic rule is that the party that did not perform a procedural act within the give time limits will be precluded from making up for it at a later stage. This applies in particular to the explicitly denoted statutory deadlines. But even where these time limits were missed it is still possible to make within two weeks a move for a restoration to one’s original position (reinstatement in the status quo ante) if the party without his or her fault was prevented to observe the time limit.

f. Evidence

(1) Burden Of Proof And Evaluation

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As a general rule, the party who makes the claim has to produce all the facts that support the claim and has to offer proof and evidence for these facts. The evidence, however, will only be taken by the court if the fact is contested by the respective other party. Therefore, all facts are regarded as true that are either admitted by the other party or, if contested, probable pursuant to the evaluation of the court at the end of the hearing of evidence. The evaluation of evidence is determined by the balance of probability: The court is in general free to evaluate all the presented evidence (principle of free evaluation of the evidence).

(2) Admissibility of Evidence

Five different classical means of presenting evidence are admitted, each regulated by specific provisions of the Civil Procedural Act:

- inspection by the court;

- witnesses;

- expert witnesses;

- documents;

- interrogation of a party.

In addition, the court may ex officio ask administrative bodies for information.

The parties accordingly have to offer at least one of the above listed evidences for each of the fact which either support the claims of the plaintiff or may form an appropriate defense for the defendant.

(3) Administration Of Evidence

Usually, the court decides on whether to take evidence or not after a (preliminary) oral hearing, where the court should discuss with the parties to make sure that the facts need to be proved, which is only necessary if the facts in dispute are really decisive for the claim or defense. Thus, the court issues an order to take evidence. This order has to contain the facts to be proved, the evidence and party bearing the burden of proof.

The taking of evidence is done directly in front of the whole court, so that only exceptionally a member of a panel can be authorized to take the evidence as a commissioned judge.

A witness, being properly summoned, is obliged to appear at the hearing, to make a deposition and even to make an affidavit. The taking of evidence is done ex officio so that it is only the judge who poses the questions to the witnesses and only after that the parties are allowed to ask additional questions. However, German law does not provide for the option of a cross-examination.

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In the case of documentary evidence the parties of the proceeding are obliged to produce the documents in actual possession that are necessary as evidence for the party bearing the burden of proof.

The deposition of the parties themselves is rather unusual, since it is rather risky to apply for the deposition of the other party being the procedural opponent, who has an essential interest in the outcome of the proceedings and therefore is not really inclined to tell the truth.

Under special circumstances, the court is also entitled to take evidence ex officio, i.e. without any offer of one of the parties. This, however, is limited to depositions of the parties, expert witnesses, documentary evidence and inspection by the court. The deposition of a witness is only admissible upon a respective offer of one of the parties.

g. Oral Hearing

At the main oral hearing, which can directly be continued after the taking of evidence, the court summarizes the factual and legal issues and the arguments of the parties by referring to their respective written submissions. Subsequently, it has to discuss all details of the case, which are decisive for the final judgment, even if the parties did not raise some issues in their written submission. If evidence has been taken by the court, it should also discuss the outcome of the evidence with the parties.

Within the oral hearing the judge is also under the obligation to attempt a settlement between the parties. This usually happens in a preliminary hearing. However, it is not uncommon that the court will quite frankly discuss the outcome of the case even after taking evidence and sometimes strongly recommend a settlement also at the main oral hearing.

If the parties do not agree to settle the case, the court may immediately deliver a judgment that terminates the lawsuit. But in practice it is more likely that the court sets a date, usually within about two weeks for the reading of the judgment.

h. Judgment

The form of a judgment is in detail described by the Civil Procedural Act:

(1) All judgments begin with “Im Namen des Volkes!” (“In the Name of the People”).

(2) Then the so-called “Rubrum” lists the parties and their procedural representatives (attorneys at law) usually with their profession, domicile and procedural status as parties. Furthermore, it refers to the names of the participating judges and the date of the last oral hearing.

(3) It follows the operative part of the judgment, being the decision on the claim, the costs of the proceedings and the provisional

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enforceability of the judgment.

(4) The facts of the case (Tatbestand) have to contain all factual details and motions forming the basis of the court decision. Thus, the court may not base its decision on facts not being mentioned in the facts written down in the judgment.

(5) Finally, the reasons for the decision give a summary of the deliberations in respect of the legal points and evidence that lead to the judgment.

(6) Finally, the participating judges have to sign the document. Only with the signature of all judges of the panel the preliminary status of the written judgment as a draft is ended giving it full power and authority.

2. Urgent Proceedings (Preliminary Injunctions)

Besides the ordinary proceeding, German civil procedural law provides for interlocutory injunctions and provisional proceedings in special cases:

(1) Trademark infringement

Preliminary injunctions are particularly sought in cases of trademark infringement, intending to defer the defendant from continuous infringements of the plaintiff’s rights by an appropriate court order for injunctive relief. In cases of sufficient evidence the court’s order may also include the defendant’s obligation to provide information as to the source of origin of the infringing items, the volume of sales and the like. It is up to the discretion of the court to decide the extent of the preliminary ruling.

The same principle can apply in cases of unfair competition and infringement of other IP-rights, including copyrights.

(2) Procedure

Upon filing the application for a preliminary injunction it is up to the discretion of the court (in most cases of trademark infringements of the presiding judge only) whether to invite the parties for a short term oral hearing or whether to grant the injunction by way of an ex-parte-order without providing the option to the defendant to provide its evidence. It is not necessary for the plaintiff to provide full evidence of the relevant facts according to the rules of evidence outlined in the chapter for ordinary proceedings. It is sufficient if the facts are made plausible, e.g., by presenting written affidavits, which may be convincing even by those persons, who are unable to be heard as witnesses in an ordinary proceeding.

The defendant is rightly protected, since it may claim damages, if at a later stage the proceeding proves that the injunction was unjustified.

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It is not necessary for the plaintiff to provide evidence of irreparable harm or the like. The preliminary injunction will be granted if the judge is convinced on a trademark infringement and if the matter is still urgent, which is usually accepted by German courts if the plaintiff has acted on an urgent basis, i.e. has approached the infringer with a cease and desist request (warning letter) and filed for the preliminary injunction, all within a period of about 4 weeks upon first knowledge of all relevant facts of the infringement

(3) Legal Remedies

The provisional character of the court’s order for a preliminary injunction is underlined by the remedies available:

- If the injunction was granted without an oral hearing, the defeated party can raise an objection, upon which the court has to invite the parties to a short term hearing.

- If the injunction was granted after a hearing, an ordinary first appeal is applicable to the appeal court.

- Additional special remedy is provided for the defendant, who can force the plaintiff to establish an ordinary proceeding. If the plaintiff does not comply with such order, the court will cancel the preliminary injunction.

G. SPAINIn Spain, IP in general and trademark cases specifically are managed by

different kind of Courts, depending on the nature of the case. Generally, Administrative Courts deal with judicial appeals against the decisions of the Spanish Patent and Trademark Office (SPTO) whereas Civil and Criminal Courts deal more specifically with litigation proceedings.

In the last few years, there have been important changes and developments at judiciary level that reflect the raising importance of IP in this country. In particular, the establishment of a new civil proceedings in year 2001 (by means of the new Law of Civil Procedure No. 1/2000 - Ley de Enjuiciamiento Civil 1/2000- hereinafter LEC), which is now led by the principle of “orality” replacing the old almost-exclusively written procedure, as well as the establishment, in 2004, of the new Mercantile Courts within the Civil Jurisdiction aimed to deal exclusively with a specific set of subjects, among them IP and Unfair Competition. The reforms have also increased the capacity of the Mercantile Courts to deal more efficiently with each case and participate more actively in the management of the same.

It is also interesting to note that the Mercantile Courts of Alicante have been appointed to deal, exclusively within the Spanish territory, with Community Trademark and Community Designs related litigations (for this purpose, they receive the name of Community Trademarks and Community Designs Court). This new situation, together with the recent amendment of provisions of material and procedural law aimed to strengthen the position of IP owners against the infringers (among others, those resulting from the transposition of Directive 2004/48), has

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resulted in a progressive specialization of the Courts in IP matters as well as in a reinforcement of the predictability of their decisions, in benefit of litigants.

On the timing side, the reforms at judicial and procedural level, and particularly the global reform of the civil procedure started in the year 2000, have also determined a notable speed in the resolution of civil proceedings and a remarkable reduction of writ exchanges between the parties.

1. General Civil Procedural Rules

a. Ordinary Proceedings

IP Civil lawsuit should be filed by the plaintiff before the competent Mercantile Court, in accordance with the rules of internal competence or before the Community Trademarks and Designs Court of First Instance of Alicante, in case Community Trademark or Design rights are involved.

The attorney at law (abogado) prepares and signs a writ that is served by the bailiff (procurador) to the Court together with all available documentary evidence. Further to a formal exam of legal requirements, the Court notifies it to the defendant, allowing it a period of twenty working days for a reply. If the defendant counterclaims (in general for nullity or revocation for non-use in trademark cases), the Court sets a new time limit for the plaintiff’s reply.

It should be noted that both plaintiff and defendant should file all the available documentary evidence together with their initial briefs and there are only a few exceptions to this rule.

Once the exchange of writs and evidence is closed, the Court sets a date for the pre-trial hearing, during which the attorneys discuss and debate, mainly, procedural issues.

Once the pre-trial hearing takes place, the Court sets a date for the main hearing, where experts, witnesses and party’s legal representatives are heard and cross-examined by the attorneys, evidence is evaluated and oral arguments are provided to the Court.

It is important to underscore that Mercantile Courts, despite the fact that all civil proceeding is inspired and subject to the Dispositive Principle, (“the parties have the power of disposition of their rights, procedural as well as substantive”), have now more discretion in the management of the case resulting in the possibility of more efficiencies. In particular, Courts can admit and/or deny the discovery of evidence, propose new one when they feel it is important in order to ascertain relevant facts and they can, in general, impulse the speed of the whole procedure by reducing the timeframe between each phase (but in this last case this mainly depends on the workload at each Court).

The judge renders a decision after the main hearing.

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b. Preliminary And Precautionary Proceedings

Requests of preliminary and/or precautionary measures against alleged IP rights infringers follow specific proceedings ruled by the Law of Civil Procedure and Patent Law (to which Trademark Law remits).

These can be filed before, together or after the filing of the main lawsuit, depending on the circumstances of the case.

The petition should be made by means of a written brief supported by documentary evidence. The Court cites the defendant to appear at Court where an oral hearing is generally held within one month from the request. The decision is given after the hearing and, if the measure granted, an economic guarantee aimed to compensate possible damages to the other party should be provided. Also, the main lawsuit should be filed within one month from the decision in order to maintain the measures taken during the course of the ordinary proceedings.

Fumus boni Iuris (appearance of good right) and periculum in mora (danger in delay) are the main requisites in order to obtain a positive ruling. Added requisites, consisting on the existence of a specific urgency (different from periculum in mora) and/or the danger of citing the defendant (e.g., because of concern about spoliation of evidence during the course of the “normal” preliminary proceedings), are requested in case the plaintiff pretends to obtain a faster injunction without hearing the other side.

In this respect, the Courts have an increased discretionary power, which results in the possibility to speed up the resolution of the case when needed and whether applicable.

(1) Appeals

Appeals against first instance decisions are heard by the Court of Appeal of the same city where the TM infringement proceedings have been decided (Audiencias Provinciales). The Court of Appeal decides on the merits of the case on the basis of the same evidence filed before the First Instance Court but it might eventually request added evidence.

The appeal must be announced in a five-day term from the notification of the judgment in first instance and afterwards substantiated within a new twenty-day term when the Court requests it.

(2) Supreme Court:

The Spanish Supreme Court is a cassation Court and only decides issues of law. The recourse to the Supreme Court is not automatic against Appeal Court’s decisions and the requisites to accede it are numerus clauses (Art. 477 LEC).

Appeals to the Supreme Court must be exercised within five days from the notification of the Second Instance’s ruling and afterwards substantiated within a term of twenty days when the Court requests it.

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(3) Timing

The necessary time to obtain a first instance decision varies from Court to Court around the Spanish territory, depending on the backlog at each Court and the number of Court rooms dedicated to IP sections in each city. In general, it can be said that this has been reduced in the last years further to the reforms of the Civil Proceedings and the creation of the Mercantile Courts.

Lawsuits in trademark cases average 12 to 16 months in first instance and 8 to 12 months in second instance. Preliminary injunctions can be granted within one month or few days in case an inaudita parte proceedings is followed.

(4) Cost awards

Legal expenses are borne by the losing party, unless the judge, by a reasoned decision, imposes half of them to each party (e.g., In case a specific question of law is not pacific at jurisprudential level).

The Court might also order the party bearing legal costs or the losing party to pay to the other party the sums disbursed in order to obtain the necessary evidence (expert reports, investigations, etc.) but not included in the legal costs.

The costs’ award are calculated on the basis of general Bar’s Fees, which vary according to the amount of claims finally granted but this seldom reflects the real costs afforded by the party, unless the claim amount, are high enough.

2. General Criminal Procedural Rules

In general, in Spain, crimes against Intellectual Property are prosecuted in a "Simplified proceeding" (Procedimiento abreviado). This proceeding starts with a denunciation or a criminal complaint filed by a party, or ex oficio as a consequence of a police report sent to the Court by the Police.

The Simplified Proceeding is divided into three different phases:

(1) Prior Proceedings or Investigation Stage ( Instrucción ) :

During this phase, the Criminal Court carries out all the investigations aimed to obtain the evidence needed to determine the nature and circumstances of the crime, the people involved in its perpetration, etc. (e.g. the Judge shall order the cross-examination of the infringer, as well as experts reports on samples of the seized products, etc.). The aim is to get all the necessary information to file the accusation.

Once the investigation is performed and evidence obtained, if the Judge considers that the facts constitute a criminal offence, he/she will order the continuation of the proceedings. To the contrary, if he/she considers that the investigated facts do not constitute a crime or if it is not possible to ascertain the author of that criminal offence, he/she will order the stay of proceedings, closing the file.

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(2) Intermediate Phase:

The aim is to determine whether the proceeding must go on to the next stage (the Trial) or not. To this end, the Judge of the Criminal Court delivers a copy of the complete file to both the Public Prosecutor and the private accusations, for them to request: either the opening of the Trial, filing their accusations writ (indicating who they consider is responsible for the crime, which are relevant facts, what is the crime according to the Spanish Criminal Code, etc., and proposing those evidence they want to be practiced in the Trial hearing), or the stay and closing of the proceedings, or (exceptionally) the practice of additional investigative evidence, which may be necessary to file the accusation.

If the Judge decides to open the Trial stage, s/he will give a term to the defendant's Attorney, for him/her to submit the defense writ.

(3) Trial:

This third phase of the proceeding does not take place before the Criminal Court, but (usually) before the Trial Court. In case of more severe penalties, it will be practiced before the Court of Appeal. In the Trial hearing, the infringer shall appear with its Attorney. Thus, the Trial hearing shall be attended by the defendant, the Public Prosecutor and the private accuser, if any. At the Trial hearing, all the evidence requested by the parties in the accusation and defense writs is performed and evaluated–provided it is accepted by the Court.

After the Trial, the Judge issues the first instance ruling. This Ruling can be appealed before the Court of Appeal (or before the Supreme Court, if the Trial hearing took place before the Court of Appeal).

During the prosecution of the proceeding, the Judge may order precautionary measures (in order, for example, to guarantee the compensation of the potential damages that might have been caused, or to avoid the removal of the seized products, etc.).

3. Appeals Against Decisions of SPTO

The decisions rendered by the SPTO’s Boards of Appeals can be appealed before the High Court of Justice, which is an Administrative Court. Decisions of this Court could eventually be appealed before the Supreme Court.

The appeal proceeding is governed by the Law of Administrative Proceedings and it is mainly a written procedure, with scarce possibility for the Court to reduce the exchange of writs between the parties (the appellant on the one side and the State General Attorney – Abogado del Estado – representing the SPTO’s interests

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before the Court on the other side) and, therefore, to influence the development of the proceeding.

H. THE PEOPLE’S REPUBLIC OF CHINA (“PRC”)

The enforcement and protection of intellectual property rights has always been a hot issue in the PRC, given its quick ascension to the forefront of global trade. However, the reality is that the PRC is still a developing nation, albeit a rapidly improving nation, and its intellectual property enforcement system is still in its infancy. Furthermore, the PRC also faces a significantly different set of intellectual property enforcement problems that few other nations can claim to have. These problems include mushrooming underground counterfeit organizations, improved means of transportation and access to sophisticated anti-counterfeiting technologies, to name a few. As a result, everything from batteries, beverages and cigarettes to electronics, pharmaceuticals and agrochemicals has been counterfeited in the PRC.

In recognizing this dilemma, the PRC has built a large administrative infrastructure for the administration and protection of intellectual property rights. Amongst the administrative bodies, the State Administration for Industry and Commerce has generally been the government agency responsible for the supervision of business activities and general supervision of commerce, including the enforcement of trademarks. Consequently, aggrieved parties have a variety of options to tackle trademark infringement. Furthermore, the most effective of these options is to rely on more than one approach (which are described below), rather than relying solely on judicial adjudication. In fact, in cases of trademark infringement, aggrieved parties often first lodge administrative complaints with local administrative authorities, then follow-up by involving the court or criminal enforcement authorities (the PSB and the prosecutors).

1. Overview of the Court System and its Hierarchy

The PRC court system is divided into General Courts and Special Courts. The General Courts are structured in a four-tiered pyramid-fashion in terms of judicial review power, which are arranged in the following ascending order: District/Trial courts, Intermediate Courts, Higher People’s Courts and the Supreme People’s Courts. The Special Courts include the military courts, railway courts and maritime courts, all of which are particularly specialized. The District Courts are generally located in municipal districts and autonomous counties, and are empowered to hear all trial cases, except those which the law requires other courts to hear. Intermediate Courts are typically established in capitals or prefectures at the provincial level and the Higher Courts are generally located in autonomous regions and municipalities directly under the Central Government. The highest judicial organ, the Supreme People’s Court supervises the work carried out by lower courts and often issues interpretations on questions concerning specific applications of laws.

The PRC employs a Civil Law system, therefore the doctrine of stare decisis which is universally applied in common law jurisdictions does not apply. Consequently, courts are not ‘bound’ by earlier judgments and decisions from

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higher courts are followed only to the extent that the circumstances in the disputed cases are similar. Nevertheless, judicial interpretations and guidance opinions issued by the Supreme Court still serve as gap fillers for lower courts where the law is unclear.

In the administration of cases, the PRC adopts a finality system whereby a case is finally decided after two trials. The effect of this is that a party may only bring an appeal once to a higher court, which is usually the court directly above the deciding court in terms of judicial authority. The judgment of the appellate court shall be final and cannot be appealed further under the PRC’s civil procedure rules. However, parties may challenge the final decision through the trial supervision procedure whereby the dissatisfied litigant appeals to the appellate court or the higher court. Despite this procedure, re-trial via the supervision procedure does not suspend the effect of the previous court’s judgment.

In recent times, China has created specialized tribunals that are devoted solely to handling and processing intellectual property cases, which are spread amongst the Higher Courts and the Intermediate courts. Within each court, there are usually several divisions, such as civil, economic, administrative and enforcement divisions. Specialized intellectual property divisions were created to provide better quality and speedier judgments in intellectual property disputes.

2. Viable Enforcement Options

(a) Administrative Enforcement

The availability of administrative relief through the administrative authorities is a unique feature of the PRC trademark enforcement system. Administrative enforcement recognizes that there are times where a party claiming trademark infringement is not driven by monetary damages, but rather a desire to halt infringing activities as quickly as possible. In this regard, administrative enforcement is a useful and effective remedy as it provides quick injunctive relief. However there are questions whether infringers treat these raids and fines as a ‘cost of doing business”.

Local administrative bodies have a wide range of powers when it comes to investigating and regulating infringement cases, including:

a) questioning relevant parties;b) to inspect and copy relevant contracts, invoices, account books and

other relevant materials;c) conduct on-site inspections at the site of alleged infringement; andd) inspect relevant articles and seal up or impound evidence of an infringement.

If the administrative body determines that there was an infringement, they will order an immediate injunction, including the confiscation and destruction of the infringing goods, tools specifically used to manufacture the infringing goods and representations of the registered mark, and may impose additional fines.

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Such powers of the administrative approach can be applied for in an expeditious and flexible manner, without the need for extensive hearings or other formal procedures. They can therefore be a good way to secure evidence of infringement for use in a subsequent civil action.

(b) Judicial Enforcement

Enforcing trademark rights via judicial means in the PRC tends to take longer and is more costly than administrative proceedings, but the successful party can claim damages which are not afforded by administrative enforcement unless the administrative authorities agree to assist the parties with mediation on the damages issues.

There are recent changes where local courts’ jurisdiction over IP cases has expanded. Because there are now hundreds of courts are situated all over China, with varying experience and expertise concerning trademark infringements, accordingly, the quality of the judgments varies between courts. Therefore, selection of courts for initiating litigation in China is a critical aspect of litigating in China and Chinese civil procedure rules allow a certain degree of forum shopping.

(1) Commencing the Proceedings/Evidentiary Hearings

To initiate civil proceedings, a civil action is filed with the intended court. The filed action must state: (1) the nature of the claim; (2) supporting facts; (3) evidence which will be relied on and its source; (4) witness details; and (5) details of the plaintiff. Within five days, the court forwards the complaint to the intended defendant, who must file a written defense to the court within 15 days of receiving the court’s notice (the defense period is 30 days for proceedings involving a foreign defendant who has no residence in the PRC). After receiving the defendant’s defense, the court will forward it to the plaintiff within five days of receiving it.

At this point, parties may mutually agree on a timetable for the submission of evidence to the court. In the absence of any agreement, the court will usually give 30 days from the date which the plaintiff received the defendant’s defense. Upon receiving each side’s submitted evidence, the court will forward it to the opposing parties to help the parties’ assess the strengths of their respective positions in hopes of earlier settlement. Hearings are then held whereby each party may challenge the evidence submitted by opposing parties’, but in practice the court usually takes this opportunity to question parties’ and become familiar with the dispute. The judge manages the case in an inquisitorial manner.

(2) Evidence

As the party initiating the litigation, the plaintiff must prove their case by presenting evidence to support their position. Permissible evidence includes: documentary evidence, physical evidence, audio-visual material, witness testimony, statements made by interested parties and expert opinions.

Unlike many common law countries, PRC law does not have any meaningful equivalent of the discovery procedure. Consequently parties are not required to disclose all relevant documents in their possession, custody or power, and may

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freely decide which documents to disclose. Although the court may act as fact finder and generally take an active inquisitorial role in proceedings, evidence is usually gathered and presented by the parties’ themselves. Evidence obtained during the course of any administrative enforcement action may also be adduced at court proceedings. Moreover, there are numerous investigative agencies, trademark agencies and consultancy firms that maintain investigative personnel and informative networks who are able to help gather and provide evidence.

However, due to the heavy emphasis that courts place on documentary evidence, important evidence should be notarized to make it harder to be challenged. Any evidence that is gathered from overseas or is presented in a language other than Chinese, must be translated, notarized, and legalized. In practice due to the timelines much of this must be done before issuing proceedings.

(3) Expert Opinions/Technical Experts

If the court requires further technical expertise or opinions to clarify the disputed matters, then one or more experts may be appointed by the court. More experience PRC IP courts/chambers have set panels of available experts that can be readily appointed. The parties may mutually agree on the appointment of experts, but the court will step in and appoint the experts where they cannot agree. Parties have the power to veto some experts on the basis of non-independence. Thereafter, the court will select up to five experts, but will not inform the parties of the appointments until trial, at which the experts will provide their expert opinion.

(4) Trial/Hearing

Upon further inquisition and investigation, the court will set a date for trial. At trial, both sides begin with their opening statements, which is followed by debates on specific issued selected by the court. Parties then present their arguments supported with evidence. If expert evidence is adduced, the expert may be cross-examined by the parties or the judge.

If the court considers that additional hearings are necessary, then it may adjourn the trial, during which it may conduct its own investigations. Throughout and upon the conclusion of the hearing(s), before judgment is handed down, the court may ask parties whether they wish to settle their dispute . As such, the court is very much involved with assisting settlement efforts. If parties are able to agree on settlement, the case may be settled outside of court whereby their case is withdrawn and their settlement agreement is endorsed by the court. Any agreement endorsed in such a manner is enforceable as if it were a court judgment. However, if parties cannot settle, the court will deliver its judgment.

If the case only involves PRC parties, the case is expected to conclude within six months. However, extensions are possible. There are not statutory time limits if the case involves foreign parties. In practice they take a year or so.

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(5) Appeal

Parties may generally appeal the judgment of the first instance Court once, and the appeal may involve a review of both law and fact. The judgment of the appellate court is final. However, if the Supreme People’s Court or a higher court finds an error in the final judgment, a retrial of the case may be conducted.

(6) Preliminary Injunctions (Temporary)

With many trademark infringements, the trademark owner’s utmost priority is to stop the infringing activities rather than to recover monetary damages. An interested party may consider first filing a preliminary injunction against the trademark infringers since final judicial orders may not be enforceable until a substantial amount of time has elapsed.

There were no pre-trial injunctive reliefs under PRC law until the introduction of such remedies prior to the PRC’s formal accession to the World Trade Organization. Now, under the revised Trademark Law, a registered trademark holder or materially interested party may apply for injunctive relief against the infringing party by filing an injunctive relief application with the court.

An application by an interested party must be filed with written documents specifying: (1) the parties and their basic particulars; (2) the specific details and scope of the application; and (3) the reasons for the application, including a specific explanation on how failure to immediately halt the action or infringements in question would cause irreparable damage to the rights and interests of the interested party. To support such an application, the following evidentiary documents must also be filed as well: (1) proof of the interested party’s stake in the action; (2) evidence to prove that the respondent has carried out or is about to carry out infringing activities which violate the applicant’s rights; and (3) the applicant must provide security for the action, otherwise the court may reject the application.

A decision on an application for injunction will be made within 48 hours if the court is satisfied that sufficient evidence has been presented. In practice, the actual time frame varies from court to court and from case to case, depending on a multitude of factors. If the injunction is not approved, the applicant may reapply once for reconsideration within 10 days from the date of receiving the ruling. If the injunction is approved, it will be executed and effective immediately. The successful applicant must institute formal proceedings within 15 days of being given the injunctive relief, otherwise the injunctive order would be vacated. If formal proceedings are commenced on time, then the injunctive order can last until the conclusion of the case at the court of first instance.

(c) Criminal Enforcement

The following trademark activities are considered criminal in the PRC:

(i) Using a trademark identical to a registered mark on the same type of goods without authorization;

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(ii) Selling goods knowing that they bear a counterfeit registered trademark; and

(iii) Making or selling counterfeit labels.

Where the circumstance is ‘serious1’ or the case involves a ‘relatively large amount2’, the offender may be fined with or without a sentence to fixed-term imprisonment of not more than three years of criminal detention. However, if the infringement is ‘exceptionally serious3’, or the case involves a ‘huge amount4’, the offender may be imprisoned for a fix-term period of three to seven years.

Criminal proceedings are brought before the courts by filing a bill of indictment of the People’s Procuratorate, along with any supporting documents or evidence. However, before initiating any criminal proceedings, it is crucial that the interested party gathers sufficient evidence as the court will examine the materials, complaints and any other information they have obtained to determine if any criminal responsibility is involved. If the court is convinced there exists criminal responsibility, then they will initiate their own fact finding investigation, otherwise the court will simply dismiss the case.

If the case proceeds to investigation, then the public security organ will conduct a criminal investigation in order to locate the criminal perpetrator. However, the time limit for holding a suspect is two months. If a case cannot be concluded within that time limit, then the time period may be extended by one month with the approval of the People’s Procuratorate, otherwise the case is dismissed. As such, criminal investigations are likely to conclude within half a year depending on the complexity of individual cases.

d. Customs Enforcement

As a fourth method of trademark enforcement, parties may rely on customs enforcement agencies to halt the flow of infringing goods. China produces countless low-labor-cost counterfeit goods and is the largest exporter in the world – large numbers of infringing goods are guaranteed to reach the borders for export purposes.

The PRC General Customs Administration is the national authority responsible for the enforcement of intellectual property rights at the borders (“Customs”). In order to utilize PRC Customs, the trademark must first be registered with the PRC Trademark Office. Companies should also record their trademark with Customs so that enforcement personnel are more familiar with a company’s trademark, allowing

1A benchmark of a ‘serious’ circumstance is the use of identical marks on identical goods and generating an

illegal turnover exceeding RMB50,0002A benchmark of a ‘relatively large amount’ is turnover exceeding RMB50,000 from the sale of counterfeit

products3A benchmark of an ‘exceptionally serious’ circumstance, generating an illegal turnover exceeding

RMB250,000 from the sale of counterfeit goods4A benchmark of a ‘huge amount’ is turnover exceeding RMB250,000 from the sale of counterfeit products

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them to more readily recognize the mark during random checks. Additionally, Customs is empowered to detain goods they suspect to be infringing if the trademark is recorded with Customs.

In order to record a trademark with Customs, a written application must be submitted to their main office in Beijing. The application must contain the following information and documents:

(i) An applicant company’s business license (if trademark holder is a company) or a photocopy of the applicant’s identity card (in the case of a trademark holder being an individual);

(ii) A photocopy of the trademark’s registration certificate;(iii) Sample photographs of the applicant’s goods showing the trademark

and relevant packaging, if applicable;(iv) Evidence of a known import or export of infringing goods, if known or

applicable;(v) Other documents or evidence that PRC Customs considers necessary or

may specify (but in practice, such documents are not required).

After submitting an application, Customs will respond within 30 working days of the submission to indicate whether they approve the application.

(1) Enforcement via Complaint

Whenever a trademark owner suspects that infringing goods are about to exit or enter the PRC, the mark owner can submit a written application to Customs detailing the suspected point of entry or exit. The application must include the following information: (1) name of the trademark holder and relevant documents proving such trademark rights; (2) name of suspected consignor or consignee of infringing goods; (3) any relevant information to the suspected goods; and (5) sufficient evidence to prove infringement.

However, due to the arduous difficulties in obtaining such information, most Customs enforcement does not happen this way and is initiated by Customs themselves, as described below.

(2) Enforcement Commenced by Customs

Provided that a company has recorded their trademark with Customs, local enforcement may also detain goods on their own accord during random checks. Due to the difficulties of obtaining information on the flow of infringing goods, most customs enforcement takes place in this manner.

If Customs comes across infringing goods during random checks, enforcement officers will contact the person provided in the relevant recordal application. Subsequently, the contacted person must within three working days, apply for border enforcement and pay a bond as follows: (1) a bond equivalent to the value of the goods if the goods detained is valued less than RMB20,000; (2) a bond equivalent to 50% of the value of the goods but not less than RMB20,000 if

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the goods detained is valued between RMB20,000 and RMB200,000; or (3) a bond equivalent to RMB100,000 if the value of the goods detained exceeds RMB200,000.

After detaining the goods, Customs will investigate whether the goods are infringing within thirty working days and will confiscate them if it determines the goods are infringements or counterfeits. If Customs cannot make a determination, it will notify the trademark holder. In such a case, the notified trademark owner should apply to court for determination of infringement and also obtain an evidence preservation order to continue to hold the goods, otherwise Customs must release the goods.

I. HONG KONG

Hong Kong’s civil justice system was first developed during British colonial rule, and as such it follows a common law regime. Although Hong Kong has been reintegrated as a special administrative region of the People’s Republic of China since 1997, it retained its common law legal system and continues to operate much as it did prior to 1997. However, in 2009, it significantly overhauled its civil litigation procedures by implementing the Civil Justice Reform (“CJR”).

The CJR was implemented to adjudicate disputes in court more expeditiously and economically by requiring parties to more clearly define their contentions from the outset, adhere to stricter timetables during a case’s progression and promote settlement whenever possible. These aims are mainly achieved with the introduction of the underlying objectives (“Underlying Objectives”), which are considered by the courts when making any decision.

1. Court System and its Hierarchy

Hong Kong’s court system is arranged in a three-level hierarchy, starting with the Court of Final Appeal at the top, then the High Court (which consists of the Court of Appeal and the Court of First Instance) and then the District Court5. The Court of Final appeal has appellate jurisdiction over matters arising out of the High Court, and the Court of Appeal has appellate jurisdiction over the Court of First Instance and the District Court.

A case is first brought in either the Court of First Instance, or the District court depending on the nature of the case and the pecuniary amount involved. The District court has jurisdiction to hear monetary disputes of values between HKD$50,000 and HKD$1 million. The Court of First Instance on the other hand, has unlimited jurisdiction and may act as an appellate court to cases emanating from the specialized tribunals.

The rules of civil procedure and the litigation process in the High Court and District Court are governed by the Rules of the High Court (“RHC”) and the Rules of the District Court (“RDC”) respectively, both of which are largely similar. Civil procedure in the Court of Final Appeal is governed by the Rules of the Court of Final

5There are also several specialized tribunals in addition to the District Court, including the copyright tribunal, labor tribunal,

lands tribunal, small claims tribunal, etc.

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Appeal and each of the lower specialized tribunals are governed by their own respective tribunal rules.

2. The Underlying Objectives

Hong Kong’s revised civil procedure rules now includes an additional set of considerations known as the Underlying Objectives which the court will apply and give effect to whenever exercising its powers. The Underlying Objectives place a positive burden on parties and their legal representatives to actively assist the court in furthering the Underlying Objectives.

The six Underlying Objectives are:

(i) increasing the cost-effectiveness of any practice and procedure to be followed in relation to proceedings before the Court;

(ii) ensuring that a case is dealt with as expeditiously as is reasonably practicable;

(iii)promoting a sense of reasonable proportion and procedural economy in the conduct of proceedings;

(iv) ensuring fairness between the parties;(v) facilitating the settlement of disputes; and(vi) ensuring that the resources of the Court are distributed fairly.

a. Commencing Civil Proceedings

(1) Initiating Proceedings

Both civil proceedings in the Court of First Instance and the District Court are initiated by filing one of the following documents with the court’s respective registry: (a) writ of summons; (b) originating summons; (c) originating motion; or (d) petition. The more commonly used methods of commencement are the writ of summons and originating summons. However, the originating summons is usually only appropriate when there is unlikely to be any dispute of fact or the disputed issue is one of interpreting legislation or a law. In contrast, originating motions and petitions are very specialized and are only used where the law expressly requires so.

Every writ must be endorsed with a statement of claim, which includes a concise statement of the claim together with the facts relied on and the relief sought. Furthermore the writ must be filed together with a statement of truth at the Registrar. After filing, the writ, an acknowledgement of service form and a Form 16 must be served together by the plaintiff on the defendant. They may be served personally, by registered post, or by inserting it in the defendant’s letterbox; where the defendant is a limited company, service is achieved by leaving the writ at or sending it by registered posted to the company’s registered office.

(2) Acknowledgement of Defense/Counterclaims/Default Judgment

A defendant who receives the writ must fill out the accompanying acknowledgement of service form to indicate whether he/she intends to defend the

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action and file it with the Court Registry within 14 days of service. Failure to file the acknowledgement of service form on time, allows the plaintiff to file for default judgment. If the defendant wishes to defend the allegation, then a statement of defense and a statement of truth must be filed with the Court Registry within 28 days after the time limit for acknowledgement of service expires; a counterclaim should be filed concurrently with the statement of defense, if applicable.

Furthermore, since the CJR’s implementation, it is no longer sufficient for a party to rely on bare denials in response to a plaintiff’s allegation. Denials in a defense must be backed by substantive reasons as well as setting out the defendant’s version of the case. This requirement helps discourage vexatious litigation by setting out disputable issues early on, so that merit-less arguments are less likely to be relied on by defendants.

b. Statement of Truth

With the implementation of the CJR, all pleadings, witness statements, and expert reports must be accompanied by a statement of truth, which is a declaration that the facts or opinions stated in the relevant document are true and are an honestly held belief. The statement of truth is signed by the person making the statement, but where a party is a corporate body or a group of persons, it must be signed by a person holding a senior position within that group.

If the statement of truth cannot be verified, then the relevant document it was supporting risks being struck out or held inadmissible in evidence. Moreover, anyone who makes a false statement in a document which is verified by a statement of truth without honestly believing the statement, risks being liable for contempt of court.

c. Discovery

The discovery process ensues with the close of pleadings, whereby parties involved must produce to each other documents within their possession, custody or power which are relevant to the issue being contested. Parties may also apply for further discovery on specific issues, though the Court has discretion on whether to grant such an order. After all such disclosures, both sides must allow other parties to inspect the actual documents.

Discovery is an ongoing obligation that never ceases, and is designed to assist all parties in assessing the strengths and weaknesses of their cases before trial.

d. Case Management Conference

Within 28 days of the close of pleadings, each party must serve a timetabling questionnaire on the other party (parties). The questionnaire’s purpose is to help the Court and parties involved to review the progress of the case.

Parties must then file a case management summons within 14 days of receiving the timetabling questionnaire from the other party (parties). The Court will then set down a date for a case management conference. Seven days prior to

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the conference, the parties must submit a listing questionnaire which details time estimates for their opening submissions, evidence-in-chief, cross-examination, and closing. During the case management conference, the Court will determine the timetable for future pre-trial reviews or trial.

e. Trial/Judgment

Prior to trial, parties are required to exchange written statements of the factual witnesses they intend to call. At trial, the Court will hear both parties’ submissions as well as their witness testimonies. The plaintiff, being the party that initiated proceedings must prove their case against the defendant.

f. Appeal

For civil matters that are of the monetary amount of HKD$1 million or more, an appeal from the Court of Appeal to the Court of Final Appeal lies as of right. Additionally, appeals also generally lie as of right from a ruling in a Court of First Instance judgment to the Court of Appeal. The Court of First Instance acts as an appellate court for the district court and other tribunals.

However, the appellate courts will usually only consider questions of law, and will not decide on questions of fact. It is only when there is a blatant mistake of fact when appellate courts may reconsider the facts found in lower courts.

g. Costs/Sanctioned Offers

A Court’s decision on costs will also be affected by whether or not parties reasonably rejected sanctioned offers. Sanctioned offers are settlement proposals whereby parties may pay sums into court throughout the proceedings, offering to settle the case for those amounts. If the receiving party rejects an offer and fails to do better at trial, then the Court has discretion to award costs against that party as well as penalizing them with interest, up to 10%, on any judgment awarded.

h. Alternative Dispute Resolution

The reformed civil litigation procedures place a heavy emphasis on alternative dispute resolution, particularly mediation. Nowadays, prior to litigating in court, parties are obligated to make a good faith attempt at considering mediation as a means of alternative dispute resolution. As an added incentive to promote mediation, parties are assured that all communications during the mediation process are “without prejudice” and are protected by privilege. However, if a case is appropriate for mediation and a party does not attempt mediation, the court may award costs against the successful party after trial if it considers that the refusal to mediate was unreasonable.

Additionally, arbitration is also often encouraged by Hong Kong’s courts, but the courts may only refer parties to arbitration if the litigating parties mutually consent to arbitration or if there exists an underlying contract containing an arbitration clause. Provided that either of the aforementioned conditions are satisfied, the court will likely stay the litigation proceedings in favor of arbitration which may be conducted on an ad hoc basis or administered by a recognized

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arbitral institution situated in Hong Kong, such as the Hong Kong International Arbitration Center or the International Chamber of Commerce.

3. Criminal Proceedings & Customs Enforcement

Apart from civil litigation, trademark infringement also constitutes a criminal offense under the Trade Descriptions Ordinance which broadly prohibits the use of false trade descriptions, as well as the use of misleading and unauthorized trademarks. A party enforcing their right under this ordinance may request the Commissioner of the Customs and Excise Department to take enforcement action and seize the infringing goods. The Customs and Excise Department (“Customs”), has powers to search, seize, remove or detain any goods that they reasonably suspect to be an infringing good.

To request Customs to take enforcement action against trademark counterfeiting activity, the trademark owner should making a complaint to the department and provide the following information:

a) relevant trademark certificate as proof of trademark ownership in Hong Kong;

b) a sample of the genuine product and information on the offending goods involved;

c) name and address of the suspected offender; andd) an appointment letter, whereby the trademark owner authorizes an

officer to take enforcement action, including conducting seizure identification, giving evidence and testifying in court.

After making a complaint, Customs will immediately report to their front-line which will conduct an investigation. If Customs finds evidence of counterfeiting, they will take enforcement action accordingly. However, since the length of time required for investigations vary from case to case, there is no set time period for when enforcement action would take place.

J. JAPAN

The litigation process in intellectual property-related lawsuits in Japan has been considerably expedited in the past 10 years as a result of the efforts made by courts, legislators and practitioners under the overall judicial system reform that started in the late 1990s. The average duration of trials in the first instances has been shortened from 25 months in 1998 to 13.4 months in 2009 (12.5 months in 2006) whereas the counterpart in the second instances have been reduced more slowly but kept under 10 months or less. Behind these improvements are the new Code of Civil Procedure entered into force in 1998, amended in 2003, and in particular the introduction of keikaku shinri or planned proceedings mandated by Article 147bis and 147ter of this law.

1. Trial on the Merits

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The two most common claims in trials on the merits of trademark cases are for permanent injunctions and damages. Provisional injunction is discussed below because it is a legal procedure separate from trials on the merits.

a. Jurisdiction

The new CCP has enabled a trademark owner and/or its exclusive licensee to bring an action by choice to either a district court of jurisdiction or the Tokyo or Osaka District Court depending on whether the primary jurisdiction would fall within the eastern or western part of Japan. Both district courts have specialized intellectual property departments as with the Intellectual Property High Court established in 2005 as the center of the judicial system reform. An appeal against the ruling made by a district court shall be brought to the IPHC if further deliberations would require specialized knowledge and expertise. This report will not discuss appeal proceedings in the IPHC, however.

b. Keikaku Shinri under the New Code of Civil Procedure

The general principle of the new CCP is provided for in Article 2 to read “(t)he court shall endeavor to conduct civil proceedings fairly and expeditiously; the interested parties shall perform civil proceedings in good faith.” Keikaku shinri seeks to organize the proceedings systematically by setting a timetable and scheduling the respective periods during which to 1) narrow down points of dispute and evidence, to 2) examine witnesses and the other party, and to 3) close oral arguments and render a judgment. To secure speedy processing, Article 157 further enables the court to restrain submission of new claims and defenses if they are presented in an untimely manner. Where necessary, the court can change the plan in consultation with both parties pursuant to Article 147ter(4). While keikaku shinri is carried out at the initiative of the court, it may be possible only in cooperation with the parties involved.

c. Case Management Model of the Osaka District Court

Under these initiatives, the Osaka District Court prepared case management models in 2000 and has since managed the proceedings accordingly whereas the Tokyo District Court announced “Proposals on Management of Intellectual Property Litigation” in the same year and has complied therewith. The ODC’s Case Management Model for Design, Trademark and Unfair Competition Matters, as amended in 2004, anticipates the period starting from filing a complaint to handing down the court’s opinions on infringement (liability) to be 160 days and sets intervals between phases of the litigation process accordingly. The flow of the model proceedings and intervals in trials on the merits are shown below:Adequate preparation of litigation by the parties

↓Day 1 Filing a Complaint

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Submitting evidentiary materials (gazette, trademark register, goods bearing registered mark, material on fame, prior negotiation documents, etc.)

↓30 days 1st Oral Argument in Open Court

Plaintiff: Oral statement of complaintDefendant: Oral statement of answer

Plaintiff: Required to submit evidence of fame in 30 daysDefendant: Required to submit allegedly infringing products

Required to submit relevant documents in 60 daysRequired to prepare arguments against

infringementin 30 days

↓60 days 1st Preparation for argument

Plaintiff: Completing evidence of fameDefendant: Submitting 1st brief on dissimilarity of marks, distinctive

parts, etc.Preparing evidentiary materials

↓90 days 2nd Preparation for Argument

Plaintiff: Submitting 1st briefDefendant: Completing evidentiary materials

↓120 days 3rd Preparation for Argument

Plaintiff: Supplementing arguments and evidentiary materialsDefendant: Supplementing arguments and evidentiary materials

↓160 days 4th Preparation for Argument

Court: Finalizing preparation of arguments2nd Oral Argument in Open Court

Court: Opinions on infringement (liability) →Conclusion Settlement-------------------------------------------------------↓---------------------------------------------------------------------

Deliberations on damages10 days Plaintiff: Preparing arguments, requesting

defendant’ssubmission of document and appraisal of

damages20 days Defendant: Denial and counterargument; preparation of

evidence (balance sheets, invoices, etc.)↓

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190 days 3rd Oral Argument in Open CourtDefendant: Submitting additional documents

220 days 4th Oral Argument in Open Court 　　→ Conclusion SettlementThe ODC requests both parties to prepare adequately for litigation before a

complaint is filed. This is facilitated by Articles 132bis to 132quater of the CCP, which allow the prospective plaintiff and defendant to mutually request information that will obviously be necessary in the intended litigation, provided that the subject matter of the litigation has been substantially communicated between the two parties in advance.

d. Bifurcation and Typology of Claims and Defenses

The courts in Japan have predominantly bifurcated the infringement and damages phases of the trial by initially considering infringement of trademark rights. According to the model of the ODC, the court and the parties will convene for a total of four times to determine facts, points of disputes and evidentiary materials relating to infringement after the first oral hearing and before the second oral hearing. In this phase of the litigation process, typological classification of arguments that have been made during this phase of the past similar proceedings assists the court in expediting the deliberations.

The typical points of claim to be made by the plaintiff may be broken down as below.

1. Ownership of plaintiff’s registered mark2. Defendant’s use of a mark for particular goods3. Similarity between the two marks4. Similarity between the designated goods and Defendant’s goods5. Damages

The typical points of defense to be made in response by the defendant may be broken down as below:

I. Invalidity of plaintiff’s registered markII. Use of Defendant’s name, generic mark or descriptive markIII. Honest concurrent useIV. Use of Defendant’s registered markV. Tacit license agreementVI. Abuse of trademark rightsVII. Parallel importing

e. Simplified Quantification of Damages

If it is decided that infringement has occurred and the complaint included damages as well, then the court will proceed to decide whether or not and/or to what extent damages have been caused by the act of infringement on the basis of the claims and counterclaims as substantiated by evidence.

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While negligence on the part of the infringer is a requirement for claiming damages, negligence shall be presumed under the Trademark Law. In addition, since it is extremely difficult to establish the causal relation between the act of infringement and lost earnings on the part of the plaintiff, the Trademark Law was amended in 1998 to alleviate the burden of proof by allowing trademark owners to claim damages based on the number of infringing products sold by the defendant, to be multiplied by the profits that would have been gained by selling the plaintiff’s goods.

At the request of the plaintiff, the court may also order that the defendant submit documents necessary to quantify the damages caused. Furthermore, the court may entrust qualified appraisers with the quantification of the damages. If it remains difficult, the court can decide a reasonable amount of damages on the basis of the whole oral proceedings and examination of evidence.

f. Termination of Proceedings

Pursuant to Article 89 of the CCP, the court may seek to facilitate settlement between both parties regardless of the phases of the proceedings they are in. According to the statistics of November 2008, forty-four (44) percent of intellectual property-related lawsuits had been settled in court whereas only thirty-four (34) percent had gone to trial. Although the timing of settlement in court varies from case to case and in some cases parties may be urged to consider acceptable terms of possible settlement at the first oral hearing, it seems most likely that the court will discuss possible settlement after the points of dispute have been clarified.

When a settlement is reached, the court proceedings are terminated and the settlement terms will be put on record, which shall have the same effect as a final ruling of the court. According to a research conducted by a judge of the Tokyo District Court, the rate of settlement in trademark cases in favor of plaintiffs is ninety-five (95) percent. This seems to show that settlement is more important in trademark enforcement matters than in other civil proceedings and that plaintiffs as well as defendants are highly motivated to settle matters amicably.

2. Provisional Injunction

The owner of a trademark right may apply for a provisional injunction to preserve the right to seek injunction under Article 36 of the Trademark Law. It has long been believed that a provisional injunction procedure is much shorter than trials on the merits because a provisional disposition order may be obtained by simply submitting prima-facie evidence and shall become effective as soon as it is served by the court. In view of the tremendous impact such disposition order will have on the other party, however, provisional injunction procedures tend to be carried out more cautiously than before and may last as long as does a trial on the merits. This tendency applies to other intellectual property-related litigations as well.

3. Alternative Dispute Resolution

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The most commonly-used dispute resolution process before going to trial is “judicial compromise” or settlement in court mentioned above. If this should be excluded from ADR by definition, there are no popular alternative mechanisms through which trademark disputes have been effectively resolved in Japan. Among the numerous ADR mechanisms including those provided by administrative agencies, private associations and bar associations, Japan Intellectual Property Arbitration Center (JIPAC) established in 1998 by the Federation of Bar Associations in cooperation with the Patent Attorneys Association has dealt with a relatively large number of trademark disputes at a relatively high rate.

According to the statistics available on the website of JIPAC, trademark matters account for twenty-two (22) percent of all the 107 intellectual property-related mediation and arbitration cases entrusted to JIPAC in the past 12 years. Mediation, arbitration and consultation processes provided by JIPAC are closed to the public and managed by two mediators or arbitrators appointed from the list of candidates consisting of lawyers, patent attorneys and academics specialized in IP matters. In ninety-five (95) percent of the above 107 cases, mediation was chosen as a possible

K. REPUBLIC OF KOREA

In general terms, Korean judges have always taken an active role in the management of cases according to the Korean Civil Procedure Act (hereinafter the KCPA). Section 136 of the KCPA, dating back to July 1960 established the active intervention of courts to clarify pleadings by parties as well as setting forth limitations. Therefore, judges in civil proceedings of first instance are able to seek information and facts about the case from the parties. To clarify facts or pleadings, a presiding judge has the authority to take suitable measures ordering the submission of answers to questions formulated or explanations of facts to clarify issues.The KCPA was amended in 2001. With the New Case Management Model in operation at Korean Courts since March 2001 and the New Civil Procedure Act from July 1, 2002, a major improvement in civil proceeding has been achieved. According to Youngjoon KWON, “the amendments focus on enhancing the efficiency by requiring timely measures of the party at each phase of proceedings and minimizing the number of hearing dates supported by substantial pre-trial pleadings6”.

Typically, Republic of Korea has two distinct proceedings (judicial and administrative) related to Intellectual Property matters: judicial courts, which include civil cases and criminal cases and Intellectual Property’s Administrative Courts, which include Intellectual Property Tribunal and the Patent Court of Korea which manage appeals against administrative decisions rendered by the Korean Intellectual Property Office (KIPO).

6Youngjoon KWON, Litigation in Korea: A General Overview of the Korean Civil Procedure, Journal of Korean Law,

Vol. 7, No. 1, 2007, p.115.

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The judgments of civil courts can be revised by High Courts (Appeal Courts). The judgments of the Intellectual Property Tribunal can be reviewed by the Patent Court of Korea.The judgments of High Courts and the Patent Court of Korean only can be reviewed by the Supreme Court of the Republic of Korea.

It should be clarified that the Intellectual Property Tribunal and Patent Courts of Korea have jurisdiction in cancellation proceedings, validation or invalidation of rights.

Civil and Criminal courts have exclusive jurisdiction in relation to all the infringements cases regarding Patents, Trademarks and Copyright.

1. Civil Proceeding

The civil proceedings begin when a plaintiff or his attorney at law files a complaint with a District Court, a Branch Court, or a Municipal court.

a. Complaint

A complaint is a written document containing the plaintiff’s allegations and it is the requirement sine qua non to start a civil proceeding. In principle, a complaint is necessary to initiate the civil proceeding except in the cases of Small-claim cases which we will explain after. A complaint must contain identity of the parties, the relief sought as purpose of the claim, the facts and the evidence (which does not need to be included or enclosed in the complaint, despite this is recommended because it can facilitate the court and the defendant to clarify claims).

The purpose of an action can be a performance claim, a declaratory claim or a formation claim which create or modify a legal relationship by order of the court.

b. Formal Proceeding

According to the Section 254 of the KCPA, the presiding judge shall conduct the plaintiff to amend or correct the requirements failed or formal mistakes within the designated time. If a complaint amends them or the formal complaint has met the requirements, the court serves the defendant with a duplicate of the same and requires him/her to file a written answer within 30 days. “If the defendant fails to file a written answer within the cited time limit, the court may render a judgment without hearings/pleading. If the defendant submits a written answer, the court holds the pleading process (proceeding whereby both parties, in writing, enter an offense and defense on allegations and evidence) and the hearings (proceedings hereby both parties appear before the court to clarify their respective positions on disputed issues as well as to examine witnesses)7”.

c. Legal Representative Or Attorney At Law

The plaintiff as well as the defendant can be represented by an attorney before the court. When the amount of the litigation does not exceed 50,000,000 7Information of the Official website of Korean Supreme Court: www.ccourt.go.kr

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Won (approximately US$ 51,000), the Court allows that parties can be counseled by a person who is not attorney at law.

d. Pre-Trial Proceeding

After filing the complaint and the defendant responds, the preparatory stage before the trial initiates. In this stage, the presiding judge has discretionary power to require the parties to submit documents, evidence or information needed to clarify relevant facts.

With the New Case Management model, there are now one or two hearings instead of five or six under the old procedure.

e. Pre-Trial Conference

As last step of the Pre-trial proceeding, the presiding judge can hold a pre-trial conference. During the conference, the judge, together with the parties, tries to better understand the facts and discusses how and when the hearing will be performed. The presiding judge acts as a conductor of the proceeding and has authority to order procedural matters, may ask questions to the parties, gives the opportunity to submit expert opinions and added evidence, etc. The judge can give a recommendation to come to a settlement if he considers appropriate to find a mutual solution to the parties.

f. Evidence

As mentioned before, evidence may not be submitted with the complaint but, in general, each party usually submits documents to the other party together with the factual and legal grounds it intends to rely on. The cited documents do not require any attestation or legalization.

g. Hearing

Each party can orally argue their claims before the Court.

h. The Expert Commissioner System (ECS)

This system was recently introduced in July 2007 with the amendments to the Civil Code. It is supposed to enhance the quality of the proceedings and resulting judgments in areas which require skilled professionals in technical disputes involving construction, medical and intellectual property rights issues. The view point of the Korean Supreme Court is that Expert Commissioners will be able to advise a fair and neutral viewpoint based their professional qualification and expertise to the trial.

i. Judgment

The judge renders a decision after the Hearing phase and deliberation. On time limits, the KCPA suggests a judge renders a decision within five (5) months after the institution of the lawsuit, and within two (2) weeks after the conclusion of hearing of the parties.

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j. Appeal Proceedings

The losing party can appeal the judgment rendered by the Trial Court within two (2) weeks from the date the judgment is served before the High Court.

The appeal proceeding is similar to the first instance proceeding and the party has the opportunity to submit new allegations and evidence.

k. Trial proceedings in Small Claim Cases

A small claim case is a case in which the plaintiff claims compensation of money, fungibles, or securities not exceeding 20 million won (approximately US$ 20,600). A District Court, a Branch Court, and a Municipal court take charge of small claim suits, which amount to over 70% of all civil suits. This proceeding is expeditious and, generally, cheaper.

The proceeding starts with an oral claim by the plaintiff before the Court Clerk, instead of filing a written petition to the court. “The court may first render a decision recommending the defendant or respondent to perform her liability based on the complaint, without waiting for the response of the defendant. If the defendant does not want to accept the recommendation as it is, she may raise an objection to the decision. Practically speaking, a great portion of the small claims cases are resolved at the stage of recommendations8”.

l. Civil Conciliation Proceedings

A Civil Conciliation is encouraged by the Supreme Court and it is a method for dispute resolution consisting of hearing allegations of the parties in dispute before a judge or a committee, who can advise the parties to make mutual concessions and seek a compromise or he can render a compulsory decision.

2. Criminal Proceedings

a. Investigation and Accusation

In the Republic of Korea, the Prosecutors and Judicial Police Officers take charge of criminal investigations. The Public Prosecutor has authority to investigate criminal cases and is entrusted with exclusive authority to initiate criminal procedures by indicting the offenders.The Public Prosecutors have the following authority under Korean Law:

1. Authority to inspect the place of arrest or detention2. Right to request the Judge to issue an arrest warrant3. Right to approve an urgent arrest made by a Judicial police officer4. Right to coordinate the Judicial Police Officers in connection with

disposal of the seized articles5. Judicial Police Officer’s duty to report to the prosecutor

8Youngjoon KWON, Litigation in Korea: A General Overview of the Korean Civil Procedure, Journal of Korean Law,

Vol. 7, No. 1, 2007, p.114

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As the only prosecuting authority, Korean Prosecutors have the power to decide whether or not to prosecute a suspect. In case a Prosecutor chooses to indict a person, the Prosecutor has the duty to participate in the trial and maintain indictment until a final court judgment has been rendered. Under Korean Criminal Procedural Law, indictment by a private person is not allowed and only the government can indict a suspect.

In addition, Prosecutors have the discretionary power to suspend the prosecution of the case even if there is sufficient evidence to maintain prosecution. Prosecutors suspend prosecution when they think the benefit of non-prosecution is greater than the cost of prosecution. It enables Prosecutors to take into account criminal policy factors when deciding whether to prosecute a suspect.

It is important to highlight that in Korea there is not an investigating judge. The investigations are merely managed by public prosecutors.

b. Judgment

If guilt has not been proved beyond reasonable doubt, the Court declares the accused not guilty. The court may find the accused guilty of the charge against the accused if it constitutes a crime and evidence is sufficient for conviction. Both the accused and the public prosecutor may file an appeal against the judgment within seven days after the decision is published.

3. Specific Procedural Rules Dealing With Patent And Trademark Litigation

a. Korean Intellectual Property Tribunal (KIPT)

As mentioned above, appeals against decisions rendered by the Director of the Korean Intellectual Property Office (KIPO) in relation to the grant/rejection of a trademark or its cancellation can be submitted to the Korean Intellectual Property Tribunal (KIPT). This Tribunal, composed of a panel of three/five specialized members also manages cases relating to invalidation of patents/designs.

The process is fast and the time limit set for issuing a decision is four months. The pleading or hearing can be oral or written and the decision of the KIPT can be revoked only by the Patent Court of Korea (PCK).

b. Patent Court of Korea (PCK)

Decisions of the KIPT can be reviewed by the Patent Court of Korea. The Patent Court is a specialist IP Court of second instance with jurisdiction over all cancellation appeals rendered by the trial board of KIPT. It is necessary to emphasize that the Court’s jurisdiction is limited to determining the validity and the scope of a patent and other registered rights (such as trademarks and designs).

An important characteristic of the Patent Court is its technical board of examiners. There are examiners specializing in different fields of science and technology who assist the judges in technical matters. They participate in the hearing to examine the parties and/or their witnesses.

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Any appeal against the Patent Court's decisions should be brought directly to the Supreme Court.

c. Supreme Court of Korea

On 26 April 2010 the Supreme Court has introduced a new electronic E-Appeal system (Patent E-Court) with the aim to give an effective and speedy service to citizens and the parties.The electronic filing system enables submission, acceptance, and service of document through electronic devices and a modernized courtroom equipped with sophisticated technology. The kind of move is expected to ease the inconvenience caused by logistical problems, which are inevitable when a court exercises territorial jurisdiction over the entire nation, as well as to contribute to the establishment of a paper-free court, according to the Korean Supreme Court’s website.

L. SINGAPORE

As a former British colony, Singapore’s civil justice system is largely based on the English Common Law system. However, in the 1990s, Singapore introduced new court procedures to reduce litigation costs and expedite the resolution of disputes. These rules emphasize stricter case management and strongly endorses alternative dispute resolution, particularly mediation. Judges have powers to manage cases by enforcing cost provisions to ensure that parties’ act reasonably and they do not excessively delay proceedings. Moreover, parties have ample opportunities and are encouraged to consider mediation and settlement throughout the proceedings as a means to promote speedier dispute resolution.

1. Courts and their Structure

Singapore’s judiciary is comprised of both the Supreme Court and the Subordinate Courts. The Supreme Court is comprised of the Court of Appeal and the High Court, whereas the Subordinate Courts include the District Court, the Magistrate’s Court, the Small Claims Tribunal and several specialized courts. The Court of Appeal is Singapore’s apex court which has appellate jurisdiction over matters emanating from the High Court as well as the Subordinate Courts. The High Court is the court of first instance for civil claims beyond the pecuniary limits of the Subordinate courts with unlimited jurisdiction to hear any claim. The District Court, Magistrate Court and the Small Claims Tribunal generally have jurisdiction to hear pecuniary claims, and are limited to the monetary limits of S$250,000, S$60,000, and S$20,000 respectively.

Both the Supreme Court and the Subordinate Courts (except the Small Claims Tribunal) utilize the same set of civil procedure rules which provide the litigation process’s procedural framework and is set out in the Rules of Court. The Small Claims Tribunal on the other hand, is governed by its own specific rules and applies an informal process when adjudicating disputes.

2. Overview of civil proceedings

a. Court’s Case Management Powers

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At any time, the Court has the power to facilitate case management by giving directions to secure a just, expeditious and economical disposal of the matters in dispute. Typically, the Court makes “unless” orders against disobedient parties’, which usually provides that unless the party complies within a stated period, the action will be dismissed or the defense struck out.

Furthermore, parts of or an entire pleading may be struck out at any stage of the proceedings if it: (a) discloses no reasonable cause of action or defense; (b) is frivolous or vexatious; (c) may prejudice, embarrass or delay the fair trial of the action; or (d) amounts to abuse of the Court. In addition, where no fresh step in the proceedings has been taken for over a year, the Court may discontinue the proceeding altogether.

b. Originating Process

A civil claim may be commenced either by a writ of summons or an originating summons. The writ of summons is appropriate when there exists a dispute of fact, and an originating summons is typically used where there is no likely dispute of fact or the dispute issue is one of interpreting legislation or law. The claim is filed electronically with the Court Registrar and must either include a general endorsement, or more commonly, be endorsed with a Statement of Claim.

The Statement of Claim must contain details of the plaintiff’s claim, the material facts relied on by the plaintiff in making their claim, and the remedies which they seek.

c. Appearing/Filing a Defense

A defendant who intends to defend a plaintiff’s claim must inform both the Court and the plaintiff of his/her intention to do so by entering a Memorandum of Appearance9. In instances of a writ being served within Singapore and outside of Singapore, the Memorandum of Appearance must be filed within 8 days and 21 days, respectively, of the writ’s service. If the defendant defaults by failing to file a Memorandum of Appearance on time, then the plaintiff may apply for default judgment on their claim.

If the defendant wishes to defend the claim, then a defense must be served within 14 days after the time limit for appearing; a counterclaim may also be filed concurrently, if applicable. A defense must state the material facts relied on and must contain the necessary particulars of any defense or matter pleaded.

d. Discovery and Evidence

The overriding and guiding principle in Singapore’s litigation process is that no party should be surprised by another. Therefore, parties are obligated to provide discovery of all relevant documents by filing lists of documents, verified by affidavit, to ensure that each party knows the case thoroughly before the trial commences. To that end, parties are entitled to inspect and take copies of each other’s

9Also known as ‘appearing’

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documents which have been in their possession, custody or power. Additionally, a party may even apply for discovery against a non-party, provided they adduce an affidavit specifying the documents being sought, how such documents are relevant and evidence that those documents are likely in the third party’s possession, custody and or power.

If witnesses are to be called at trial, then the party calling the witness must identify the witnesses which they intend to call at trial and detail the evidence that each witness intends to give. All such details will be by affidavit and will stand as their testimony at the trial, on which they will be cross-examined on. These statements are exchanged before trial.

e. Pre-trial Conferences

Once a matter is set down for trial, a pre-trial conference is held between the parties and the Court Registrar, to determine the status of the proceedings and fix appropriate dates for trial. It also helps ensure that parties have taken all necessary steps in the proceedings and it is moving along swiftly and expediently; if settlement is possible, that parties settle. Accordingly, the Registrar may issue ‘unless orders’, directing parties to comply with additional procedures in the interest of efficiency.

If a case is more complex and expert evidence will likely be adduced at trial, parties may write to the Court requesting further pre-trial conferences to discuss expert evidence, to agree on the appointment of a joint expert to save costs, or to agree on the scope of expert evidence. Generally, a trial date will be fixed within 28 days from the date of the latest pre-trial conference.

f. Trial

As the party who initiated the proceedings, the plaintiff bears the burden of proof to prove their case. Accordingly, the plaintiff’s witnesses give their evidence first, and will be cross-examined by the defendant. However, cross-examination is not limited to issues raised in the witness’s affidavit or oral testimony, provided that such cross-examined issues are relevant to the dispute before the Court. The plaintiff will then get an opportunity to re-examine their own witnesses, but is limited to matters which were raised in the cross-examination. Then the defendant’s witnesses get their opportunity to testify and are cross-examined in the same manner as the plaintiff’s witnesses.

Witnesses must attend trial, otherwise their evidence given in the affidavits may be rejected by the Court. Accordingly, if it is necessary to compel the attendance of a witness at trial, a party may apply to subpoena a witness. Three types of subpoenas may be issued. The first requires a witness to attend Court to give oral evidence, the second requires a witness to produce documents without the obligation to attend personally, and the third is a combined subpoena that requires the witness to give evidence in Court and to produce documents.

g. Alternative Dispute Resolution

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The Singaporean Court system provides a large variety of court-annexed alternative dispute resolution services capable of handling both large and small claims alike, including mediation and arbitration. Litigation in the Subordinate Courts is most commonly referred to the Primary Dispute Resolution Center, which provides both an evaluative and mediatory process. Such mediation is generally consensual, is conducted free of charge, and is guided by an experienced settlement judge who provides a neutral perspective on the legal issues involved and suggests possible settlement options. Such court-annexed mediation may be requested by either party at anytime after the commencement of proceedings and up until the point in time before trial.

Additionally, more formal mediation processes are also available through the Singapore Mediation Center, and arbitration may be conducted on an ad hoc basis or administered by a recognized arbitral institution such as the Singapore International Arbitration Center.

h. Timing

From an action’s inception till conclusion, the entire litigation process usually takes around 12 to 18 months (including the time required for appeals). Since judicial case management was introduced in Singapore, Courts have generally denied adjournments once a trial date is fixed. Only in exceptional circumstances can trial dates be moved.

i. Judgment

After the defendant’s witnesses have finished giving their testimonies, each party will make their closing submissions, which may be written or oral depending on the complexity of the case. The Court may make a decision immediately after the closing submissions, or if more time is required to consider the case, the Court may reserve their judgment and parties will be notified of the decision at a later time.

j. Appeal

In the Supreme Court, parties dissatisfied with decisions of the High Court may appeal to the Court of Appeal as of right, if the subject matter at trial exceeds S$250,000. If the monetary amount involved is S$250,000 or less, then the Court’s approval must be obtained in order to seek further appeal. Similarly, appeal lies as of right if the subject matter in dispute is S$50,000 or more in the Subordinate Courts, otherwise leave is required. Appeals should be filed within 14 days from pronouncement of the judgment in either Court.

k. Costs

The Courts have power to order costs, which are usually awarded in favor of the winning party. Such costs may include disbursements, fees, expenses and compensation. However, the amount of any such award of costs is determined at the sole discretion of the Court.

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l. Exception: Well-known Trade Marks

For foreign proprietors of unregistered trademarks, Singapore’s Trademark Act conforms to international standards as set out in the Paris Convention and the World Intellectual Property Organization’s Joint Recommendations regarding the protection of well-known marks. Consequently, a trademark’s proprietor may apply for an injunction to restrain the use of an infringing trademark if the mark is deemed to be well-known in Singapore.

3. Criminal Proceedings

In addition to civil remedies, trademark rights may also be enforced via criminal proceedings.

Under Singapore’s Trademarks Act, the following infringing acts may result in criminal liability:

(a) Counterfeiting a registered trademark;(b) Falsely applying a registered trademark to goods or services;(c) Making or possessing articles for committing offenses; and(d) Importing or selling goods with falsely applied trademarks.

Criminal actions may be brought by filing a complaint with the Magistrate. Complaints must be filed together with an affidavit, and if the magistrate is satisfied that the application is complete, he/she may:

(a) Issue a notice to involved parties;(b) Issue a summons to the respondent (the accused); or(c) Direct police to conduct an investigation into the complaint.

If an investigation is ordered, it will likely be conducted by the police force’s Specialized Crime Division which typically handles intellectual property disputes. After the investigation, the Magistrate will fix a date for criminal mediation which all involved parties must attend. Should parties be unable to settle, then the case proceeds to a hearing where the respondent is asked to enter a plea of guilty or not guilty. If the plea is not guilty, then a trial is held and each side presents their case before a judge. Since the length of time required for investigations vary from case to case, there is no set time period for when an investigation is considered complete. However, once a proceeding moves beyond criminal mediation, it can be expected to be adjudicated on within six months.

M. THAILAND

Following recognition of the complexity and sophistication of intellectual property and international trade cases, the Ministry of Justice has established the Central Intellectual Property and International Trade Court (CIPIT). The court began its service in 1997 with the goals of ensuring convenience, expediency and fairness in judicial proceedings.

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Since 1997, many cases have been brought to the Court. In 2002 there were 5,023 cases brought. In 2007, the number increased to 8,072 cases and maintained the comparable figure of 8,431 cases in 2009. Most of the cases brought to the court and most decisions granted, have been criminal cases.

As a specialized court, the CIPIT exercises in a sui generis system set forth in The Rules of the Intellectual Property and International Trade Cases 1997 (hereinafter referred to as “the Rules of the court”) and the Act for the Establishment of and Procedure for the Intellectual Property and International Trade Court 1996 (hereinafter referred to as “Act of Establishment”). The practices of the Court as will be elaborated later, introduced not only new court litigation procedures but also common law practices in a civil law country.

The CIPIT has exclusive jurisdiction to hear both criminal and civil cases arising out of intellectual property disputes. However, the CIPIT does not have the power to decide on its own jurisdiction. This power rests within the Supreme Court, whose decision is final.

1. Sui Generis System of the CIPIT Court

As mentioned earlier, the CIPIT has introduced many new litigation practices into Thai judicial proceedings. It can be said that this new approach towards litigation provides a more “user-friendly” forum. Particular points to note are:

a. Continuous Hearing

For the purpose of expediency, the hearing in the CIPIT proceeds without adjournment until the hearing is over, save in the case of unavoidable necessities. After the hearing is over, the court must promptly render a judgment or order.

b. Discovery

The common law concept of “Discovery” has been introduced into the CIPIT with the objective of providing convenience, expediency and fairness in judicial proceedings. By disclosure of evidence before the day of taking evidence, the parties and the court are able to determine the relevant issues in the case as well as agree upon certain facts, saving time and costs by shortening the hearings

The disclosure of evidence includes witness statements which the CIPIT is currently applying as a rule, leaving the traditional way of examining witnesses as an exception. The court usually gives orders to the parties to submit their witness statements in advance in order to encourage them to pursue this procedure.

c. Preliminary Injunction

Preliminary injunctions in IP litigation can be requested prior to filing the statement of claim or prosecution.

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The Rules of the court allows the injured party to request a preliminary (or preventive) injunction upon condition that he proves to the court that there exists reasonable grounds to file a case against the prospective defendant as well as sufficient grounds for the court to grant injunction. Moreover, the prospective plaintiff should provide eyewitness testimony to support his request.

The court only grants preliminary injunctions where it finds:

(1) there is a reasonable ground for the application and the filing of the application, as well as sufficient reasons for the court to grant such an application, and

(2) the damage incurred cannot be restituted by monetary compensation or indemnity of any kind, or the prospective defendant is not in a position to compensate the prospective plaintiff for the damage, or it might be difficult to enforce the judgment against the prospective defendant.

d. Anton Piller Order

Anton Piller order originated from the English case Anton Piller KG v. Manufacturing Process Ltd. 1976 with the idea that no person should be able to frustrate the process of justice by destroying subject matter evidence of the case.

This procedure of early taking of evidence applies where a person apprehends that the evidence he may have to rely in the future will be lost or become difficult to adduce in court or at a later stage, before or after the civil suit is filed.

The Act of Establishment together with the Rules of the court sets out the requirements for the applicant to satisfy as follows:

(1) If an action has not yet been instituted, there is a strong prima facie case on the merits of the claim that the applicant is likely to suffer serious actual or potential damage and

(2) There is clear evidence that the alleged party is incriminating evidence in his possession and

(3) If the alleged party is notified before hand, the evidence will be destroyed or difficult to adduce in at a larger stage.

After satisfying these conditions, the applicant is entitled to enter into the premises of the other party to search and inspect, as well as make copies of evidence according to the circumstances of the case.

This ex parte application is usually made by the plaintiff after issuing his writ but before he has served it on the defendant. Nevertheless, in practice the court is not likely to grant such an order. This is because the conditions set forth are difficult to satisfy and the court has to weigh the balance between protection of the owner’s exclusive rights and prevention of abuse of such rights.

e. Power to Issue Procedural Rules of the Court

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Conventionally, Thai procedural law can only be amended through the amendment Act to the Procedural Code. This process usually takes many years to. The Act for the Establishment provided a new procedure for the Chief Justice of the CIPIT, subject to the approval of the President of the Supreme Court, to be able to issue Rules of the court on proceedings and hearing of evidence in intellectual property and international trade cases provided that such provisions do not impair defendants’ rights.

Such amendments shall be for the purpose of convenience, expediency and fairness of the proceedings and shall come into force after their publication in the Government Gazette. Unlike the traditional way of procedural amendments, this process takes only a few months.

In addition, the flexibility of this “user – friendly” forum can be seen through the following provisions:

Communication with other court may be carried out via facsimile, electronic media or other information technology (IT) media or together with express mail service.

Video conference for witness examination. An English translation can be omitted if such evidence is not related to

the main issue of the case. Information taken from a computer network can be used as an

evidence of a case.

2. Case Management Procedures

a. Pre-trial Conference

The judge in the CIPIT is empowered to conduct any proceedings or issue any orders, in addition to the adjudication. In this regard the judge may determine the course of proceedings before an examination of witness with the presence of the parties. The course of proceedings may include the following:

(1) Mediating for settlement or applying arbitration rules;It has become a common practice in the CIPIT to find out if the case brought before it can be settled by mediation or applying arbitration rules, not only to save time and money but also maintain the commercial relationship between parties. Where the parties cannot find common interests to settle the case, they shall be able to exercise their rights further in the proceedings of the court.

The CIPIT also provides a list of specialized mediators to support the process, amongst these are associate judges. Statistically, from 2002 – 2007 there were 429 cases brought to settlement by mediation and by applying arbitration rules. However, only 4 of these cases were brought to settle by arbitration.

(2) Scheduling dates and times for the proceeding;

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(3) Determining date & time, procedures and steps necessarily applied to the proceeding, for example, numbers and details of witnesses, affidavits, expert witnesses, documentary evidence and evidence summoned from the other party or the third party as well as the taking of evidence out of court and commissioning to another court;

(4) Determining details and durations regarding technical or scientific experiment to prove the facts of the case;

(5) Determining expert evidence

Parties are allowed to file a request to the court to take judicial proceedings according to any steps that the parties have agreed upon. If the court finds that the request is for the purpose of convenience, expediency and fairness and it is not against public morality or public order, the court may grant such request.

3. Additional Taking of Evidence

Although the CIPIT may adopt some common law practices for the convenience and expediency of the case, the uniqueness of inquisitorial system in civil law practices still exists. Especially when the court deems it necessary to take other evidence relevant to the case from either one of the parties for additional examination. Then the court by itself, is able to proceed with taking of evidence, which also includes re-examining witnesses who have already been heard.

4. Judges

There are two types of judges operating in the CIPIT court. First, career judges appointed from the judicial officers according to the Rules of Judicial Officers. Second, associate judges appointed from judicial officers with a field of specialization in intellectual property and international trade. The associate judges are in the position for a period of five years.

A quorum consists of at least two career judges and one associate judge. The decision is granted according to the majority’s vote.

5. Civil Procedure Rules

Civil cases brought at the CIPIT may be for trade mark, copyright, patent, design, trade secret and other IP-related cases.

The structure of the civil procedure can be divided into two categories according to the parties in dispute i.e. a private party against another private party, and a private party against the department of intellectual property.

a. Private vs. Private

This trademark dispute between private parties usually derives from infringement or challenges against a mark sought for registration.

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In infringement cases, civil action start after issuing a cease and desist letter, demanding inter alia, that the infringer undertakes not to deal with infringing products, pays agreed sum of damages and costs, discloses the source of these counterfeit products, and possibly publication of apology notice in the newspapers. In not complied with a case is filed at the CIPIT.

In disputes over a mark sought for registration, a person who believes he has better rights to the mark may file for an opposition within 90 days of the publication of the mark. After the applicant has received notification of the opposition, the applicant then has 90 days to counterclaim the opposition from the day of the receipt of notification by the trademark registrar. The trademark registrar then issues a decision in which the discontented party may appeal to the Trademark Board within 90 days after the acknowledgement of the decision. The losing party may bring the case to the CIPIT within 90 days after his understanding of the Trademark Board’s decision. After the CIPIT has granted a decision or an order, an appeal against the judgment or order may be brought directly to the Supreme Court, whose decision is final.

b. Private vs. Department of Intellectual Property (DIP)

Disputes between a private party and the DIP often arise when an applicant views that the decision of the registrar or the Trademark Board regarding the trademark registrability is clearly unreasonable. Under these circumstances, the case maybe brought to the CIPIT and appeal to the Supreme Court with the same procedure as mentioned above.

The procedural steps are illustrated below.

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6. Criminal Cases

Apart from claiming damages and compensations in civil cases, the injured party may also file a complaint in criminal proceedings or file a civil case in connection with an offence. Trademark infringements are public offences; the injured party therefore does not have to incriminate.

The Thai Criminal Procedural Code provides three alternatives for an injured party to exercise his rights in judicial proceedings as follows;

a. Public Prosecutor

Through this process, the injured person files a compliant to the inquiry officer who then will make an opinion and report to the public prosecutor. The public prosecutor will then take the case to the court.

The procedural steps are illustrated below.

b. Injured Person

The injured person may also choose to file the prosecution directly to the court. In this case, the court will order a preliminary examination in order to determine that there exists a cause of action to initiate a lawsuit (since there has not been any preliminary inquiry before being brought to court).

c. Public Prosecutor and Injured Persons

Intellectual property infringement cases allow the injured person to join with the public prosecutor in the prosecution by applying for a motion to associate himself with the prosecutor at any stage of the proceedings before the pronouncement of Judgment of the Court in the first instance.

7. Appeal

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Once the CIPIT has granted any judgment or order, an aggrieved party may appeal the case directly to the Supreme Court within one month from the date of its pronouncement. This leap – frog procedure is an attempt to redress delay.

Like any other proceedings of the court, there are limitations for an appeal. In criminal cases, the appellant may not appeal a question of fact where the minimum of penalty prescribed by law does not exceed three years imprisonment or sixty thousand Baht (approximately 1,875 USD) fine or both. There are exceptions to this rule, if the accused is sentenced to imprisonment or is detained in lieu of imprisonment, or the convicted is suspended from imprisonment or the sentence, or the accused is fined more than five thousand baht.

As for civil cases, where the value of the asset or the amount in dispute on appeal does not exceed two hundred thousand baht or the amount prescribed by the royal decree, no party shall be able to appeal to Supreme Court with respect to the question of facts unless the judge who sat in the case has made a dissenting opinion or has certified that there is reason to appeal or a written approval by the Chief Justice of the CIPIT court.

N. INDIA

Current Rules of Procedure in INDIA as Governed Under the Code of Civil Procedure (CPC)

Case management procedures in the form of statutory rules/legislations are yet to be introduced in India. In the absence of these, procedural aspects of civil litigation in India are governed under the Code of Civil Procedure (CPC), 1908. The CPC lays down the procedures that courts are required to follow. A civil suit commences with the plaintiff filing the Plaint (claim) and the defendant then filing its written statement (response to the Plaint).

Briefly the procedural rules governing litigation in India are as follows:-

I. PLEADING (Order VI)

‘Pleading’ means Plaint or Written Statement and contains material facts and not evidence.

II. PLAINT (Order VII)

A Plaint is a claim and should include the following:-

a) the name of the Court in which the suit is brought;b) the name, description and place of residence of the plaintiff;c) the name, description and place of residence of the defendant, so

far as they can be ascertained;d) where the plaintiff or the defendant is a minor or a person of

unsound mind, a statement to that effect;e) the facts constituting the cause of action and when it arose;

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f) the facts showing that the Court has jurisdiction;g) the relief which the plaintiff claims;h) where the plaintiff has allowed a set-off or relinquished a portion of

his claim, the amount so allowed or relinquished; andi) a statement of the value of the subject-matter of the suit for the

purposes of jurisdiction and of court-fees, so far as the case admits.

In case, a plaintiff wishes to seek interim injunction (till the disposal of the suit), it may file an application under Order XXXIX Rules 1 & 2 CPC along with the Plaint.

Additionally, under Order VII Rule 14 CPC, a plaintiff is required to file all relevant documents along with a list at the time of presenting the suit.

III. SUMMONSUnder Order V Rule 1 CPC, when a suit is duly instituted, the Court may issue summons of the suit to the defendant. Under Order V, Rule 5 CPC, service of summons can be affected in either or all of the following modes- (a) hand delivery by officers of the Court (provided the defendant resides within the territorial jurisdictions of the Court); (b) Registered A/D; (c) Courier; (d) Email; (e) Fax.

IV. Under Order XXXIX Rule 3 CPC, if the Court is satisfied that the object of granting interim injunction would be defeated by delay, then it may grant an ex-parte injunction against the defendant.

V. WRITTEN STATEMENT:Under Order VIII Rule 1 CPC, the defendant is obliged to file its Written Statement within 30 days from the date of service of summons. This period is extendible to a further period specified by the Court but not exceeding 90 days from the date of service of the summons.Please, however, note that the Supreme Court of India in Kailash Vs Nanhku and Ors. [AIR 2005 SC 2441] has held that the provisions of Order VIII Rule 1 are directory and not mandatory. As such, the Courts have the discretion to extend the period to file Written Statement beyond 90 days. This discretion is, however, exercised in exceptional circumstances.

VI. Under Order VIII Rule 10 CPC, if Written Statement is not filed within the prescribed period, then the Court may close the defendant’s opportunity to file Written Statement and pass decree in terms of the prayers sought in the Plaint.

VII. While under CPC there is no provision to file a response to the Written Statement, the plaintiff may seek leave of the Court to file a Replication to rebut the defenses raised by the defendant in the Written Statement.

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i. ISSUES:

Once pleadings (Plaint, WS, Replication) are complete, issues are framed under Order XIV CPC. Issues are questions which a Court is called upon to adjudicate and may include questions of fact and law.

VIII. Under Order XIV Rule 1, the parties are required to file all original documents (photocopies whereof were filed along with the Plaint/Written Statement) before framing of the issues. If a plaintiff or defendant wishes to file any additional documents, it may do so with the liberty of the Court (Under Order VII Rule 14(3) and Order VIII Rule 1A(3) CPC respectively explaining the reasons why the same could not be filed earlier).

IX. TRIALParties are then called upon to lead evidence in support of their respective claims and defenses. The trial is governed under the Evidence Act, 1872 and is broadly classified as follows:-

a) Examination-in-chief;b) Cross Examinationc) Re-examination

Under Order XVIII Rule 1 CPC, the plaintiff has the right to begin.

Under Order XVIII Rule 4 CPC, the examination-in-chief of a witness can be led by way of an affidavit. The purpose of examination-in-chief is to give an opportunity to the parties to prove their respective claims/defenses by way of oral and documentary evidence.

Thereafter, the opposite party has the right to cross-examine the witness. The purpose of cross-examination is to verify the veracity of the witnesses’ statement.

The parties also have the option to seek liberty from the Court to re-examine the witness.

X. Once parties have led their respective evidence, the matter is fixed for Final Arguments.

XI. JUDGMENT AND DECREE:The Court after hearing the arguments of both the parties, passes a judgment in the suit under Order XX and a formal Decree (i.e. the formal expression of adjudication by a Court which conclusively determines the rights of the parties with regard to the matters in controversy in the suit) is drawn.

TRADEMARK INFRINGEMENT SUITS

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With specific reference to trade mark infringement suits, it may be mentioned that Section 134 of the Trade Marks Act, 1999 allows for the institution of trademark infringement suits before the District Courts in India. In case of infringement of a registered trademark a trade mark infringement suit may be filed. Where an unregistered trademark is infringed, a passing off action may be filed.

CIVIL REMEDIES

In case of an infringement action, the following reliefs are available to the plaintiff under Section 135 of the Trade Marks Act, 1999:-

a) Injunctions restraining further use of the infringing mark. These include:- Interlocutory/Interim Injunction; Permanent/Perpetual Injunction;

[In some instances, courts have also granted relief in the form of Mareva Injunctions and Anton Piller Orders]

b) Damages or an account of profits;

c) An order for delivery up of infringing labels and marks for destruction or erasure.

Of the above mentioned remedies, the role of injunctions is crucial in suits relating to trademark infringement. Indian Courts have recognized this in the past and have often been liberal in granting interim injunctions (ex parte or otherwise), to help preserve evidence as well as to injunct the defendants from continuing the unauthorized infringing acts.

PROPOSED AMENDMENTS

A proposal aimed to expedite disposal of commercial disputes with high pecuniary value has been recently envisaged by ‘The Ministry of Law and Justice’, in the form of The Commercial Division of High Courts Bill, 2009 [Bill No. 139 of 2009]. The Bill is based on the recommendations of the 188th Report of the Law Commission of India. The Bill has already seen safe passage through the Lok Sabha, the Lower House of the Indian Parliament. The Bill as passed by the Lok Sabha was referred to the select Committee of the Rajya Sabha (the Upper House of the Indian Parliament) on December 22, 2009 and the Committee presented its report on July 29, 2010. Currently, the Bill is pending consideration and passing before the Rajya Sabha.

i. A Background - The 188 th Report of the Law Commission of India.

The 188th Report of the Law Commission of India was prepared in the backdrop of sharp criticism offered by U.S. Courts while adjudicating a series of cases involving claims filed in the American courts involving Indian parties. While doing

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so, the U.S. courts passed deeply critical judgments highlighting the ‘deplorable’ state of its Indian counterpart.

In cases such as Bhatnagar Vs Surendra Overseas Ltd.10 Justice Lewis J. approved the continuance of the case in the American courts in view of the tremendous backlog of cases in the Indian district courts which could take ‘a quarter of a century to resolve this litigation if it were filed in India’.

Similarly, in Shin-ETSU Chemical Co. Ltd. Vs. ICICI Bank (dated August 5, 2003), Judge Ira Gammerman of the Supreme Court of the State of New York observed – ‘at some point, the prospective judicial remedy becomes so temporarily remote that it is no remedy at all and may render (an) alternative forum so ‘clearly unsatisfactory’ as to be inadequate….. Thus the plaintiff could very well be deprived of its day in Court if required to litigate in India’.

Also in Modi Enterprises Vs ESPN Inc. (dated March 4, 2003) the same judge made specific reference to the Delhi High Court where claims could be heard for decades which did not make India an adequate forum to pursue such litigation.

In view of the above, in December 2003, this Report recommended constitution of High-Tech Fast-Track commercial divisions in High Courts in India similar to the Commercial Courts of New York, UK and Singapore to provide cost effective, efficient solutions to expedite the resolution of commercial disputes.

ii. The Commercial Division of High Courts Bill, 2009

The salient features of the Bill are as follows:-

1. Each High Court is to constitute a commercial division of that High Court specifically for adjudicating commercial disputes valued at Rs 5 crore (USD 1131075 approximately) and above, thereby conferring original jurisdiction upon the High Court to hear such cases.

2. The Commercial Division refers to a Division Bench which would comprise High Court judges to be appointed by the Chief Justice.

3. The definition of the term ‘commercial disputes’ contained in the proposed Bill is relevant as it includes intellectual property disputes within the ambit of Section 2 of the Bill. According to Section 2 (a) - “commercial dispute” means a dispute arising out of ordinary transactions of merchants, bankers and traders such as those relating to enforcement and interpretation of mercantile documents, export or import of merchandise, affreightment, carriage of goods, franchising, distribution and licensing agreements, maintenance and consultancy agreements, mercantile agency and mercantile usage, partnership, technology development in software, hardware, networks, internet, website and intellectual property such as trademark, copyright, patent,

10(1995) 52, F.2.d. 1220(3rd Cir)

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design, domain names and brands and such other commercial disputes which the Central Government may notify.

4. Case management procedures are reflected in Section 9 of the Bill where time limits have been imposed on the Parties during various stages of a lawsuit. As per Section 9(2) of the proposed Bill, a plaintiff will have to file the following pleadings and evidence along with the Plaint at the very initial stage of the lawsuit:

the documents on which he sues or relies; as many copies of the plaint and documents as to the number of

defendants; an affidavit containing his statement of examination-in-chief; affidavits containing statements of other witnesses in examination-in-

chief; brief issues that are likely to arise; list of interrogatories, if any; application for discovery and production of documents, if any,

maintaining their relevancy; such other material as the plaintiff may consider necessary; full address, including e-mail, fax and telephone number of all the claimants

and defendants to the extent known to the plaintiff;

Further, the Bill lays down the following:-

a) The defendants shall, within a period of one month from the date of receipt of the copy of the plaint along with all the relevant documents file his written statement along with all documents except copies of plaint referred to;

b) The defendants shall, along with the written statement, also file counter-claim, if any, along with all documents except the copies of plaint or documents ;

c) The defendants shall also send copies of written statement and all documents filed along with the written statement, to the plaintiff;

d) The plaintiff shall, at the time of trial, file affidavit containing evidence in examination-in-chief of other witnesses, if any;

e) The plaintiff may, within fifteen days of service of the written statement, apply to the Commercial Division for granting leave for filing of rejoinder;

f) The plaintiff shall file rejoinder within one month from the date of the order of the Commercial Division granting leave to file such rejoinder;

g) Where the Commercial Division allows any application for discovery of documents, the plaintiff and the defendants, as the case may be, shall be permitted to file supplementary statements, within a period as may be specified by the Commercial Division;

h) For the purposes of recording of statements in cross-examination and re-examination of parties and witnesses, the Commercial Division may appoint an advocate not less than twenty years standing at Bar or a Judicial Officer not below the rank of Senior Civil Judge as Commissioner;

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i) All parties shall file written submissions before the commencement of oral submissions;

j) The time limits for making submissions (including oral submissions) shall be fixed in advance, at the case management conference;

The Bill also empowers a single judge of the Commercial Division to hold case management conferences, fix schedules for finalization of issues, cross-examination of witnesses, filing of written statements and oral submissions, record evidence and appoint Commissioners. Further, all parties must file the written submission before commencement of oral submissions.

Such Commercial Division is required to pronounce the judgment within 30 days of the conclusion of the argument and an appeal shall lie to the Supreme Court against any decree passed by the Commercial Division.

ii. Critique

The above proposals contained in the Bill are aimed to allow a fast-track procedure for the disposal of the cases and are a step in the right direction. The Bill is currently pending before a Joint Parliamentary Committee. The Committee received a number of representations from its relevant stakeholders including lawyers/law-firms and also invited representations from these to make submissions before it. Some of the criticisms voiced against the Bill include the following:-

a) With reference to Section 2 of the Bill, the definition of “commercial disputes” needs to be re-examined as it ignores significant types of contractual and commercial disputes such as disputes arising out of or related to joint venture agreements.

b) The incorporation of “intellectual property” into the definition of commercial disputes does not seem to be appropriate as it gives rise to the following issues:-

(1) All IP disputes which go to court need not be based on any commercial relationship but are rather a result of infringement of statutory or legal rights not founded in any contract.(2) There would be an eminent problem regarding the valuation of the subject-matter of disputes in cases of intellectual property in light of the fact that valuation of IP is still ambiguous in India.(3) Mostly Intellectual Property suits pertain to Permanent and Mandatory Injunctions and/or Damages, which the aggrieved person seeks from the infringer, and such suits usually would not come under the purview of such a high pecuniary jurisdiction of the Commercial Division.(4) The skill sets required for dealing with IP matters are very specific and ideally ought to be dealt with by specialist IP Divisions.

c) The judicial structure as envisaged by the Bill proposes only one appellate authority namely the Supreme Court. On the other hand, insignificant commercial disputes would have at least two if not three appellate levels.

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d) The expression ‘market value’ of immoveable property contained in Section 8(1)(d) of the Bill is ambiguous and amenable to dispute because of which market valuation should not be a mandatory statutory requirement.

e) With reference to the fast track procedure outlined in Section 9(2)(a) of the Bill, in our view, the same is contrary to the principles of natural justice. For instance, the provision requires that at the time of filing of the suit the plaintiff should file “Brief issues that are likely to arise”. Doing so before the defendant lays out his case is impractical.

f) Sections 11 and 12 of the Bill propose a complete transfer of all cases falling within the pecuniary jurisdiction of the Commercial Division. Such a transfer would in all practicality over-burden the existing infrastructure of the High Courts. This issue can be tackled to a great extent by a procedural change to the effect that from a specified date only new commercial disputes are to be filed in the Commercial Division. The older pending matters may continue to be dealt with by the earlier courts that could be directed to deal with them on an expedited basis.

iv. MISCELLANEOUS

The Bill has also faced some strong opposition from retired Supreme Court Justice V. R. Krishna Iyer and Senior Counsel Prashant Bhushan both of whom questioned the constitutional validity of the Bill.

According to Justice V.R. Krishna Iyer the Bill was contradictory to the provisions of Article 14 of the Indian Constitution relating to fundamental right of equality as it was based on the principle of facilitation in favour of the richer among litigants. He states – “To divide social justice into two categories, the rich being given special facilities for early justice and the not-so-rich being forced to wait is violative of Article 14…….. The legislation classifies litigation into two categories. The poor litigant will wait for the somnolescent process and leisurely pronouncement and the wealthy litigant will have his case speedily terminated. If this be the differentiation, it is horrendous and outrageous in a socialist democracy.”

v. CURRENT STATUS

It is difficult to estimate when the Commercial Division of High Courts Bill will come into force. For the moment, the Bill has been passed by the Lower house of Parliament and is expected to be debated and voted upon by the Upper House of Parliament later this year.

Notwithstanding the above, it is hoped that the Commercial Division of High Courts Bill, will ultimately withstand the constitutionality of the Indian laws and other criticisms in order to facilitate the introduction of further case management procedures in India.

O. AUSTRALIA

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The following information is taken from the Australian Notice to Practitioners – Directions for the Fast Track List

There will be a panel of three judges in the Victoria District Registry to manage and hear cases in a "Fast Track List".

1. Preliminary

These Directions may be cited as the "Fast Track List Directions."

These Directions shall operate concomitantly with the Federal Court Rules. That is, the judges will administer cases in the Fast Track List in accordance with these Directions.

2. Eligible Proceedings

The proceedings that can be entered on the Fast Track List are proceedings arising out of or relating to:

(a) commercial transactions;(b) an issue that has importance in trade or commerce;(c) the construction of commercial documents;(d) an issue that has importance in personal insolvency;(e) intellectual property rights apart from patents;(f) such other commercial matters as the presiding judge may direct; but

excluding proceedings –

that would otherwise be allocated to the:

i. admiralty panel;ii. corporations panel;iii. taxation panel.

the trial of which is likely to exceed eight (8) days.

3. Time

a. Reckoning

In calculating the time provided for by these Directions or by the Federal Court Rules or by any order fixing, extending or abridging time, the period from 24 December to 2 January next following is excluded. The period from 3 January to 14 January shall, unless otherwise ordered, be included.

4. Commencement of Fast Track Proceedings

a. Commencement by Application

Except as otherwise provided in these Directions, proceedings shall be commenced in the Fast Track List by the filing of an application clearly marked

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"FAST TRACK LIST APPLICATION" in the upper right-hand corner of the first page of the application.

b. Commencement by Agreement

If all parties to an existing case agree that the case would be appropriate for the Fast Track List and the case is eligible for entry, the parties may, by agreement, move the case to the Fast Track List.

c. Commencement by Judicial Referral

If, either on his or her own motion or at the request of one of the parties, a judge forms the view that a case could be fairly and adequately resolved on the Fast Track List, the judge may, after consultation with a judge who is a member of the Fast Track List panel, order that the case be transferred to the Fast Track List.

d. Removal

If, either on the judge's own motion or at the request of the respondent, a judge who is a member of the panel forms the view that a case in the Fast Track List would be more appropriately dealt with otherwise than in the list, the judge may order that the case be removed from the list.

5. Case Summaries

a. Pleadings

There will be no pleadings. Instead, there will be statements of a party's claim or cross-claim, points of defense and points in reply (collectively referred to as "case summaries").

b. C ase summaries

All case summaries shall, avoiding undue formality, state in summary form:

(1) the basic elements of the party's claim or defense, as the case may be;(2) where applicable, the relief sought;(3) the issues which the party believes are likely to arise;(4) the principal matters of fact upon which the party intends to rely; and(5) the party's contentions (including the legal grounds for any relief

claimed) and the leading authorities supporting those contentions.

c. Times For Filing And Service Of Fast Track Case

Summaries

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(1) Application and statement of the applicant's claim – The application and a statement of the applicant's claim shall be served upon the respondent within seven (7) days of filing the application.

(2) Points of Defense and Cross-claim – Points of defense and any statement of cross-claim against the applicant shall be filed and served within thirty (30) days after service of the statement of the claim.

(3) Cross-Claim against third party – Any statement of cross-claim against a third party shall be filed and served within five (5) days after service of points of defense.

(4) Defense to Cross-Claim – Where a statement of cross-claim is served and the cross-respondent is already a party to the action the cross-respondent shall file and serve points of defense to the cross-claim within ten (10) days after the service of the cross-claim. Where the cross-respondent is not already a party to the action the cross-respondent shall file and serve points of defense to the cross-claim within twenty-one (21) days after the service of the cross-claim.

(5) Reply - Where a respondent or cross-respondent serves points of defense to which a reply is needed, the applicant or cross-claimant, as the case may be, must file and serve points in reply within five (5) days after service of points of defense.

d. Non-Compliance

Failure to adhere to the foregoing requirements may result in removal of the case from the Fast Track List, adverse costs orders or, in an extreme case, dismissal of the claim or rejection of the defense.

6. Initial Directions Hearing / Scheduling Conference

a. Date for Scheduling Conference

An initial directions hearing, which shall be known as the "Scheduling Conference", shall be set down not less than forty-five (45) business days from the date of the filing of the application. In urgent cases the Scheduling Conference may be set down earlier.

b. Endorsement

The date for the Scheduling Conference shall be obtained from the Registry, and shall be stated on the application.

c. Attendance

The lawyers acting for each party are expected to attend the Scheduling Conference.

d. Initial Witness List

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Each party must bring to the Scheduling Conference an initial witness list with the name of each witness the party intends to call at trial. The list is to include a very brief summary of each witness's expected testimony and, unless it is otherwise obvious, state the relevance of the witness's evidence. Each party will provide a copy of the initial witness list to the presiding judge and to all other parties. The initial witness lists will be combined to create the "Preliminary Witness List". The parties shall have an ongoing obligation to update the Preliminary Witness List by adding any new witnesses that they expect to call, or removing witnesses that they no longer expect to call. The parties must, in a timely manner, notify both the Court and all other parties of any updates to the Preliminary Witness List.

e. Narrowing of Issues

At the Scheduling Conference the parties will be asked to outline the issues and facts that appear to be in dispute

f. Fixed Trial Date

At the Scheduling Conference the presiding judge will set a trial date for the case which, except in urgent cases, shall be between two (2) and five (5) months from the date of the Scheduling Conference, depending on the relative complexity of the case. Urgent cases will be heard on shorter notice. The judge will also determine whether the trial will be a "trial by affidavit" or whether it will be a "trial by witnesses" with summaries of the expected evidence of each witness.

g. Pre-trial Schedule

With the assistance of the lawyers, the presiding judge will establish a pre-trial schedule for all interlocutory steps needed to bring the proceeding to trial to which the parties shall strictly adhere, including (when appropriate) a time by which the parties shall submit to and attempt mediation. Failure to adhere to the timetable may result in sanctions, including adverse costs orders, rejection of late filings, removal from the Fast Track List and, in exceptional cases, dismissal of the claim or rejection of the defense.

h. Pre-trial Exchange of Affidavits

For the purposes of pre-trial scheduling, the applicant shall be responsible for first providing copies of all witness affidavits or summaries of evidence to the respondent. The respondent shall have time to review the affidavits or summaries of evidence and then shall provide copies of any witness affidavits or summaries to the applicant. Exact dates will be set by the presiding judge in the Pre-trial Scheduling Order.

i. Notification of Opposition

If a party decides not to call or is unable to call a witness whose affidavit or summary of evidence has been delivered, the party must forthwith notify all other

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parties, so as not to surprise those parties or otherwise deprive the parties of an expected opportunity to cross-examine.

j. Alteration of Dates

Applications for adjournment of a trial or other hearing date shall not be granted on the mere agreement of the lawyers. No adjournment will be granted other than for good cause and upon such terms as the Court may impose.

7. Discovery

a. Limited Discovery

Except where expanded or limited by the presiding judge, discovery in cases in the Fast Track List will, as regards liability, be confined to documents in the following categories:

(1) documents on which a party intends to rely; and (2) documents that have significant probative value adverse to a party's case.

b. Reasonable Search Effort

(1) Parties are required to provide discovery of any document within the Limited Discovery categories that a party knows of at the time of the Scheduling Conference, or that the party becomes aware of at a later point in the pre-trial or trial process, or that the party discovers in the course of a good-faith, proportional search of its documents and records.

(2) A "good-faith proportionate search" is a search undertaken by a party in which the party makes a good-faith effort to locate discoverable documents, while bearing in mind that the cost of the search should not be excessive having regard to the nature and complexity of issues raised by the case, including the type of relief sought and the quantum of the claim.

(3) If requested by any party, a party must describe briefly the kind of good faith proportionate search it has undertaken to locate discoverable documents.

c. Additional Discovery

A party may require additional discovery in relation to discrete issues, such as the quantification of damages. In that event the judge will make a separate order for that purpose. The order may include a requirement that discovery be by inspection alone.

d. Discovery Disputes

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Before filing any application relating to a discovery dispute, the parties shall meet and confer and attempt to resolve the dispute in good faith. If the parties are unable to resolve the dispute, any application about the issue must contain a certificate by the moving party's lawyer that the "meet and confer" requirement was completed, though unsuccessful. Failure to so certify will result in the application being immediately refused.

8. Interrogatories

a. Elimination of Interrogatories

Interrogatories will not be permitted in cases in the Fast Track List except in exceptional circumstances.

9. Interlocutory Applications / Motions

a. Briefs Required

Interlocutory applications, whether or not made by motion shall, unless otherwise directed, be in writing and shall be accompanied by a written brief (not exceeding five (5) pages) setting forth a concise statement of the facts (if necessary verified by affidavit) and supporting arguments, with a citation of the authorities upon which the moving party relies. The opposing party shall file a responsive brief (not exceeding five (5) pages) and such supporting documents as are appropriate within five (5) days after service of the moving party's brief. The moving party may file a short rebuttal brief within two (2) days after service of the opposing party's response brief.

b. Exceptions to Brief Requirement

Briefs need not accompany applications for simple directions.

c. Determination of Applications Without Oral Hearing

If a party would like to be heard orally on any interlocutory application, the party may request an oral hearing. The request will be granted in applications for injunctions or the appointment of receivers. Otherwise, oral hearings will only be granted where the judge determines that an oral hearing would specifically add to, or further clarify or explain, the issues and arguments in a way that the written briefs cannot. An oral hearing will probably be unnecessary in most instances.

d. Extensions of Time

A request for an extension of time relating to an interlocutory application must be in writing and, in general, will be looked upon with disfavour.

10. Pre-trial Conference

a. Time of Pre-trial Conference

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A pre-trial conference shall be held approximately three (3) weeks prior to the scheduled trial date with the presiding judge, the lawyers involved in the case and all parties attending. The pre-trial conference is an opportunity for the parties and the judge to deal with any outstanding matters or applications before the start of the trial.

b. Agreed Facts

At the pre-trial conference the parties will be required to identify the material facts that are agreed and the material facts in dispute.

c. Final Witness List

At the pre-trial conference, the parties will, with the assistance of the presiding judge, finalize the list of witnesses to be called at trial. The judge may refuse permission to a party to call a potential witness. The judge reserves the authority to revisit the final witness list at any time to discuss any issues or concerns arising during the trial. Witnesses that are not on the final witness list will not, save in exceptional circumstances, be permitted to give evidence.

d. Objections To Evidence

At the pre-trial conference the parties should be ready to deal with any objections to the evidence proposed to be tendered. The judge will rule on those objections, unless they are more conveniently dealt with at the trial.

e. Joint Exhibit List

At the pre-trial conference, the parties will jointly submit a numbered list of the exhibits the parties intend to use at trial. The list will include a copy of the exhibit and, where not obvious, a short description of the exhibit and a statement of its relevance. The judge will examine the list with the parties and discuss any perceived issues or concerns with the proposed exhibits. The judge reserves the authority to revisit the joint exhibit list at any time to discuss any issues or concerns arising during the trial. Exhibits that are not on the joint exhibit list will not, save in exceptional circumstances, be permitted to be tendered at trial.

f. Trial Length

At the pre-trial conference, based on the legal and factual issues raised by the case and based on the number of witnesses to be called, the judge will determine the total time that each party will be allocated at trial to present its case, with due allowance being made for questions from the presiding judge. Each party shall receive a fixed block of time for its oral submissions; a fixed block of time to present its case-in-chief, cross-examination, and any re-examination; and a small amount of flexible time to be used as needed. It shall be counsels' responsibility to determine how to allocate and best use each party's available time. When a party's allocated time has expired, the party will not, except in exceptional circumstances,

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be permitted to present further evidence and/or make further submissions, as the case may be.

11. Trial

a. Tri al Timing

The trial of a case on the Fast Track List will be conducted in so-called "chess clock" style. Cases will be heard from 10.00am until 4.30pm daily, with a one hour break for lunch and a morning and afternoon recess of fifteen (15) minutes each. The judge's associate will be responsible for keeping track of each party's time used and time available. At the conclusion of each day of the hearing, the parties and the judge will confirm how much time each party has used and how much time each party has remaining.

b. Judicial Time

Time taken by the judge in questioning a witness at the end of the witnesses' evidence will be divided equally between the parties, as will time taken during the hearing to deal with procedural matters. Time taken by the judge in questioning a witness during their evidence will be treated as time taken by the party who was questioning the witness immediately prior to the judge's question.

c. Objections

Incidental objections during trial will be handled by debiting the time taken to deal with the objection from the party who is unsuccessful in either making or resisting the objection. Any outstanding major objections (see 10.d. will be dealt with at the beginning or the end of the day's hearing.

d. C losing Statements

A party may in substitution for or supplementary to its closing submission, file a written submission. The written submission shall not exceed 15 pages. It shall include each finding of fact that the party contends should be made and, where appropriate, references to the evidence that supports that finding. The submission shall be filed with the Court and served on all other parties in a short case within two (2) days and in a long case within four (4) days of the conclusion of the trial. For the purposes of this rule only, trials concluding on Thursday or Friday will have any further submissions due on the Tuesday immediately following. In an exceptional case a party may be given permission to file an answering submission.

12. Judgment

In urgent matters the Court will deliver judgments quickly, if necessary with reasons to follow. In all other cases, the Court will endeavour to deliver judgment within six (6) weeks.

P. BRAZIL

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In Brazil, lawsuits involving trademark matters may be tried before two types of courts: the Federal Courts, if what is being questioned is a decision issued by the Brazilian Trademark Office (decisions granting, refusing or maintaining industrial property titles) or Civil State Courts, if what is being tried is an alleged act of trademark infringement or unfair competition by a private party.

If the case is being tried before the Federal Courts, more likely than not there will be 2 defendants: the Trademark Office is one, and the party that obtained a trademark registration is the other. If the decision being discussed does not involve another party, then the Trademark Office will stand alone as a defendant.

According to the rules of our Code of Civil Procedure, in both courts the parties are given a formal opportunity to settle the case prior to the judge’s ruling - this is called a “conciliatory hearing”.

Brazilian judges do not play an active role in the management of cases, they simply follow the rules set by the Brazilian Code of Civil Procedure. There are no deadlines imposed on the judges but only on the parties. The deadlines are either of 5, 10 or 15 days and it is not uncommon to see foreign parties surprised to hear that they have to decide how they wish to move forward within such short notice. Even though the deadlines are short, the judges seem to take forever to do their “homework,” which they blame on the amount of cases they have to decide.

As the Brazilian Patent and Trademark Office is located in Rio de Janeiro, most suits involving the BPTO are filed before the Federal Courts of Rio de Janeiro. Even though both the Federal Courts as well the State Courts of Rio de Janeiro are specialized in intellectual property, there have been no rules implemented to accelerate the proceedings or to streamline the management of procedures.

Even though Brazilian trademark owners would very much appreciate improvements in trademark enforcement before Brazilian courts and tribunals, such as reducing litigation costs and reducing the length of time cases remain pending, most of the Model Case Management Procedures described on pages 9-13 of this study are not applicable to Brazil.

First, according to the Brazilian rules of civil procedure, never will a trademark case be submitted to a jury trial - only criminal offenses that result in the death of a person are subject to a jury trial. Second, as it happens in most civil law countries, we do not have discovery procedures. Third, in Brazil, as commented above, the deadlines available for the parties to present their briefs and motions are already strict enough. Fourth, the analysis of the liability and the assessment of damages (when applicable) are already divided in two phases, liability being established first. Therefore, a trademark owner’s main goal, which is to stop the infringement, can be accomplished earlier.

As far as Alternative Dispute Resolution procedures are concerned, in Brazil, ADR procedures are only likely to be followed by the parties if the parties commit to them prior to taking the matters to courts (e.g., as it happens when the parties execute an agreement).

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The idea of encouraging the parties to “discuss use of alternative dispute resolution (ADR) procedures, such as mediation, arbitration, and early neutral evaluation” after court procedures have been initiated are likely to fail since the bulk of the fees charged by trademark attorneys are paid for studying and preparing the case prior to its submission before courts. Hardly will the plaintiff agree to turn to ADR after he/she has paid a considerable amount of money to see his/her case filed in court.

According to the Brazilian rules of civil procedure, there is an opportunity for the parties to settle after court procedures have been initiated, at the so-called “conciliatory hearing”. For the purposes of preparing the parties for the “conciliatory hearing”, which takes place before the judge, I believe number 5 of the General Management Rules would be very helpful. Indeed, the idea of summarizing each parties’ arguments, more clearly show their weaknesses and strengths and enhances the chances of leading to an amicable solution.

In order to be applicable to Brazil, there are only two minor changes to be promoted to the original text:

8. Ten (10) days prior to the scheduled and case management conference conciliatory hearing, the parties shall be required to submit:

(a) a short and plain summary of the issues in the case,(b) their respective, preliminary positions on each issue, specifically, and

at minimum:

i. ownership / validity of the plaintiff’s mark,ii. priority of registration and/or use,iii. significance of concurrent use, if any,iv. plaintiff’s damages, if anyv. similarity of the marks,vi. similarity of the goods and/or services,vii. strength of the plaintiff’s mark,viii. evidence of actual confusion,ix. defendant’s intent,x. channels of trade in which the goods/services move, andxi. sophistication of the purchasers

(c) the proof that is required on each issue,(d) the discovery that will be needed on each issue,(e) the witnesses that may be called with respect to each issue, and(f) any potential problems or obstacles foreseen by the parties with respect to any of the foregoing with which the parties may require the court’s assistance or direction.

The submission contemplated herein is not intended to be an exhaustive treatment of the issues in the case. Rather, the submission, not to exceed ten (10) pages, should merely briefly outline each party’s case so that the other party understands the issues to be determined at trial and the other party’s general position of the same. One of the goals of this exercise is to facilitate settlement.

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Q ISRAEL

The Israeli law does not contain specific provisions dealing with the management of trademark-related cases, as distinct from the management of civil actions in general. Nevertheless, Israeli law and practice contains provisions that assist in furthering and expediting proceedings. These provisions equally apply to trademark cases. Referred below are the relevant provisions.

In many cases, the Court recommends that the parties refer to alternative dispute resolution mechanisms, such as arbitration, mediation and empowering the court to award a judgment by way of settlement (namely – without reasoning). However, in practice, such alternative mechanisms are hardly used in trademark-related cases.

Regulation 369 of the Civil Law Procedure Regulations, 1984 (“the Regulations”) empowers the Court with the authority to order that the time for hearing an action to be advanced, instead of hearing an application for provisional remedies filed in the framework of such action, if the Court concluded that this can make the hearing more effective and save the Court's and the parties' time. In practice, this Regulation is more often applied in patent-related cases rather than trademark cases.

Subject to the parties' consent, the Court may order that the decision in an application for provisional remedies will serve as a judgment in the main action. In practice, the parties tend to agree to such procedure, as in any case, most trademark-related cases are determined de facto according to the decision in the application for provisional remedies.

According to Regulation 373 of the Regulations the Court shall render its decision in the application for provisional remedies when the hearing of the application ends, and at latest within 15 days after the hearing ended.

There is no automatic right of appeal on a decision rendered in an application for provisional remedies and a leave to appeal must first be requested.

Regulation 241(d) of the Regulations entitles the Court to render a decision based on the written application and any response thereto, without the need for cross-examining the affiants on behalf of the parties. However, in case that a party insists on cross examinations, the court must accede to such request.

According to the Trade Marks Ordinance [New Version], 1972 a trademark's registration certificate constitutes prima facie evidence as to the validity of the trademark. Based on this provision, it was held in case law that where an application for interim remedies is

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based on a registered trademark, the court will usually not deal with the issue of the validity of a trademark in such stage.

In addition, the Courts tend to limit the scope of examinations, arguments and summations, and thus contribute to expedite the proceedings.

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Q. SOUTH AFRICA

1. Court StructureSouth Africa has four distinct hierarchies of Courts: the Magistrates Courts,

the High Courts of South Africa, the Supreme Court of Appeal and the Constitutional Court, each of which is governed by its particular Rules of Court.

Generally, the Magistrates Courts deal specifically with matters that fall within the scope of the Magistrates Court as detailed in the Magistrates Court Act and include criminal matters and civil matters with a monetary jurisdiction of less than R100,000 (one hundred South African rands – approx. US$14,000).

The High Court is divided into thirteen geographical divisions. These divisions have general jurisdiction over defined geographical areas in which they are situated, and their decisions are binding on Magistrates Courts within their areas of jurisdiction. The High Court divisions have jurisdiction over all matters in their geographical area, but have exclusive jurisdiction over intellectual property matters including trade marks, patents and designs in which interdictory relief, such as preventing the infringement of a registered right or common law right, is sought.

The Supreme Court of Appeal functions only as a Court of appeal and may decide on any matter on appeal, and is, except for constitutional matters (where the Constitutional Court is the ultimate Court), the highest Court of appeal.

2. Procedures in trade mark matters - overview

a. Relevant TribunalIn broad terms, recourse can be had either to the Courts or to the Registrar of

Trade Marks.

For trade mark oppositions, recourse must be had to the Trade Marks Registrar.

For trade mark cancellations, the interested party can have recourse either to the Trade Marks Registrar or to the High Court.

In the event the infringement of a registered trade mark, or of a trade mark which is entitled to protection under the Paris Convention as a well-known trade mark, relief may be sought from any High Court having jurisdiction (competence) to hear the matter. The High Court may also be approached for relief for the unauthorised use of a mark which has not proceeded to registration on the basis of the laws of “passing off.”

b. ProcedureSouth Africa does not have procedures dedicated solely to trade mark

infringement matters, and the general laws of civil procedure apply. Accordingly the aggrieved party will have to approach the High Court in the prescribed manner for the enforcement of trade mark rights and related disputes. The standard period within which a matter could be finalized ranges from two to four years.

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The conduct of Court proceedings in South Africa is regulated in accordance with the Uniform Court Rules. These rules are applicable in all divisions of the High Court and are often supplemented by practice directives which may vary from division to division. The purpose of these directives is to speed up the litigation process.

c. Case ManagementIn the spirit and purpose of the rules, the Courts do have the discretion to

alter the time-limits imposed by the rules and/or to condone any non-compliance with the rules depending on relevant circumstances before the Courts.

The Courts have traditionally not played an active role in case management. The role of the Courts has been limited to ensuring that legislated procedures and time lines are followed and to passing judgment on the merits of disputes.

Arbitration and mediation is available to parties to a dispute, but only by agreement. Although Judges are empowered to explore the possibility of referring the matter to alternative dispute resolution, the Courts play no role in arbitration and mediation and these mechanisms are used only if both parties have agreed that dispute resolution will be resolved in this way in a prior written agreement or if, after the dispute arises, both parties indicate their preference to take the arbitration route. This happens very seldom in trade mark disputes.

3. CostsThe general rule applicable to the costs of legal proceedings is that the

unsuccessful party is usually required to pay the so-called party and party costs of the successful party. Such costs are the parties’ reasonable costs calculated in accordance with an official standard tariff and they generally amount to approximately 30% - 50% of the parties’ actual costs.

A foreign litigant may be required to provide security for legal costs in legal proceedings, unless immovable property is owned in South Africa.

4. Procedure Before the Trade Marks Registrar

a. GeneralProceedings before the Registrar of Trade Marks are similar in nature to

Application proceedings in the High Court of South Africa (dealt with in section 6 below).

The Opponent is required to file a Notice of Opposition in which its grounds of opposition are briefly set out and this notice is accompanied by an Affidavit setting forth and providing evidence in support of the grounds of opposition.

The Trade Mark Applicant will then have one month from the date of the Notice of Motion to file its Notice of Intention to Oppose.

If the Trade Mark Applicant decides to oppose the Application it will have a further two months to file its Answering Affidavit.

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The Opponent will then have one month to file its Replying Affidavit (if any).

Any of the aforementioned time periods may be extended with the consent of the other party and, if the other side refuses to consent to the extension, the party requiring an extension must apply to the Registrar for condonation.

b. Closing of Pleadings and HearingAs soon as the evidence has been filed, the Pleadings will close and the

matter will be set down for a hearing before the Registrar of Trade Marks. Unfortunately, due to a backlog at the Trade Marks Office, delays of several months are currently being experienced before an actual hearing date is allocated.

Once a hearing date has been allocated, counsel (which is the South African equivalent of a barrister) will be required to prepare and file heads of argument (based on the papers filed and the relevant case law) 10 days prior to the hearing date.

The matter is argued before the Registrar on the papers filed. There are no witnesses or cross-examination and there are no prescribed conferences between the parties.

c. JudgmentOnce the arguments have been heard, the Registrar will consider the matter

and hand down the ruling. Delays of at least several months are, unfortunately, also being experienced before a ruling is received due to the backlog at the Trade Marks Office.

d. DiscoveryUsually proceedings before the Registrar will follow the course outlined

above. However, the proceedings could be delayed in circumstances where the Trade Mark Applicant requests discovery of certain documents before being able to provide its answering Affidavit.

The proceedings are stayed until such time as the requested documents are discovered. If the Opponent disputes the necessity to discover certain documents, the Trade Mark Applicant can file an interlocutory Application to compel discovery.

5. High Court ProceedingsProceedings before the High Court of South Africa are heard before a Judge -

South Africa does not have a jury system. Because South Africa subscribes to an adversarial system of law where the role of the Court is primarily that of an impartial referee between the disputing parties, the Applicant / Plaintiff has the election, based on the circumstances of the matter to either bring a Action or Application before the Court as there is a large amount of party control in civil matters and the matters are administered by the parties to a great extent.

Proceedings in civil litigation before the High Court take on two forms, namely:

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(i) the Action procedure, where there is a dispute of fact and where oral evidence is heard at trial; and

(ii) the Application procedure which is argued on the papers put before the Court and set out the facts and evidence upon which the parties’ claim or defence is based.

In instances where the Action procedure is applied, the litigating parties are referred to as the Plaintiff and Defendant. In Application proceedings the parties are known as the Applicant and the Respondent.

An Application is less costly and more expeditious than a trial Action, but is inappropriate to decide real and substantial disputes of fact which fall for decision by trial Action. The basic test is whether there is a substantial dispute of fact. Broadly, in trade mark proceedings, an Application will be used for obtaining an interdict (injunction), while trial Action will be used for a damages claim.

It is possible to bring both forms of proceedings, for example an Application for an interdict against infringing activity, which will be heard by the Court relatively quickly, and then an Action for damages resulting from such infringement.

These two proceedings are dealt with in more detail in sections 6 and 7 below. The distinction between the Action and Application procedures and the most important differences are briefly indicated below:

ACTION APPLICATION

Parties are called Plaintiff and Defendant. Parties are called Applicant and Respondent.

Deals primarily with a substantial factual dispute.

Dispute is of such a nature that it can be dealt with on the papers before the Court.

Commences with the issuing of Summons by the Plaintiff.

Commences with the issuing of a Notice of Motion and supporting Founding Affidavit by the Applicant.

Further Pleadings are exchanged by the parties and include:

- The Defendant’s Plea (response) and counterclaim;

- The Plaintiff’s Reply to the Defendant’s Plea; and

- The Plaintiff’s Plea to the Defendant’s Counterclaim.

Further Affidavits are exchanged, including:

- Opposing Affidavit by the Respondent; and

- The Replying Affidavit (if applicable) by the Applicant.

After the exchange of Pleadings, a stage called the preparation for trial follows. Certain preparatory steps are then taken such as the discovery of documents and

There is no written preparation for trial stage.

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ACTION APPLICATION

expert notices.

The Action procedure ends in the trial Court where mainly oral evidence by the parties and their witnesses is presented.

The Application procedure ends in the motion Court. In principal no oral evidence is presented and the parties do not testify. The case is argued by the parties’ legal representatives on the papers before the Court.

6. Application Proceedings

a. GeneralApplications are brought in one of two ways:

(i) on notice to the Registrar of the High Court, and any other person affected by the Application (dealt with below); or

(ii) on notice to the Registrar of the High Court only, where no other person is affected.

(1) Notice of Motion and Founding AffidavitThe Applicant commences proceedings by issuing a Notice of Motion, which is

drafted by an attorney. briefly setting out its grounds of complaint and the relief sought. This notice is accompanied by a Founding Affidavit setting forth and providing evidence in support of the grounds of the Application.

The Notice of Motion serves to inform the Respondent and the Court that an Application will be made on a specified date to the specified Court and the legal relief set out therein will be requested. To be valid, the Notice of Motion must comply with the relevant rules contained in the Rules of Court, and must, amongst others, set out the identity of the parties, nature of the Application and the relief sought as well as appoint an address at which the Respondent can serve documents in the matter.

The purpose of Founding Affidavit is to record the facts of the matter under oath. Although there is not standard prescribed form for a Founding Affidavit, it should generally contain the name and addresses of the Applicant and Respondent, the fact that the Court has jurisdiction, the material facts upon which the Application is based as well as any evidence in support thereof and a request that the Court grants the relief set out in the Notice of Motion.

The Notice of Motion is issued at the High Court in order to obtain a case number and to open an official file at the High Court. Once the case number has been obtained the document must be served by a Sherriff on the Respondent.

(2) Respondent:

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(i) The Respondent has 5 days from the date of service of the Notice of Motion to file its Notice of Intention to Oppose.

(ii) If the Respondent fails to file its Notice of Intention to Oppose within the prescribed time period, the Applicant may apply for a hearing date 10 days after the date of service.

(iii) If the Respondent files its Notice of Intention to Oppose, it has 15 days within which to file its Answering Affidavit wherein the Respondent answers the Applicant’s allegations set out in the Founding Affidavit, as well as sets out the basis of any Counterclaim.

The Applicant then has 10 days to file its Replying Affidavit (if any), Replying to or addressing any allegations contained in the Respondent’s Answering Affidavit.

b. Closing of Pleadings and Hearing DateIf either of the parties fails to file the required documents within the

prescribed periods, the other party may apply for a hearing date within 5 days of the date on which the other party was required to file the relevant document.

Once the aforementioned documents have been filed, Pleadings close and the Applicant may apply for a hearing date within 5 days.

If the Applicant fails to apply for a hearing date within the prescribed period the Respondent may apply for a hearing date immediately on expiry of the time allowed for the Applicant.

Once again, as with proceedings before the Registrar, any of the aforementioned time periods may be extended with the consent of the other party and, if the other side refuses to consent to the extension, the party requiring an extension must apply to the High Court for condonation.

A hearing date is allocated immediately based on the nature of the proceedings and depending on the backlog at the High Court. Hearing dates in opposed matters are currently expected to be between 9 months and one year from the date of requesting the hearing date.

Once a hearing date has been allocated, an advocate (which is the South African equivalent of a barrister) will be required to prepare and file heads of argument (based on the papers filed and the relevant case law) 10 days prior to the hearing date.

At the hearing date the matter will be argued before a Judge on the papers filed. There are no witnesses or cross-examination and there are no prescribed conferences between the parties. The arguments presented by the parties’ advocates are limited to the submissions contained in the Affidavits, meaning that as a general rule oral evidence is not heard.

c. JudgmentOnce the arguments have been heard, the Judge will consider the matter and

hand down the ruling. The Judge renders a decision on the basis of the evidence

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and documents submitted by the parties and presented by the parties’ advocates (legal representatives) in Court.

There is no obligation on a Judge to hand down Judgement within a specific time period, but the High Court Judges endeavour to hand down judgments as soon as possible, and have, on occasion, been known to do so immediately on conclusion of the hearing of an Application. However, delays of at least several months are also being experienced before a judgment is received.

d. DiscoveryApplication proceedings may be delayed in circumstances where the

Respondent requests discovery of certain documents before being able to provide its answering Affidavit.

In such circumstances, the proceedings are stayed until such time as the requested documents are discovered. If the Applicant disputes the necessity to discover certain documents, the Respondent can file an interlocutory Application to compel discovery.

7. Action Proceedings

a. GeneralAction proceedings are usually initiated in circumstances where there is an

actual dispute of fact between the parties. This means that the matter cannot be resolved on the papers filed and oral evidence by way of cross-examination of witnesses is allowed. These proceedings would not usually be used in trade mark matters.

Trade mark matters ordinarily require a Combined Summons which has the Particulars of Claim annexed to the Summons setting out the material facts.

b. Pleadings StageA Pleading is a document wherein substantial facts upon which a party’s

bases its claim or defence. The allegations contained in a Pleading are not made under oath and this, do not amount to evidence. At the trial a party must present oral evidence to prove and/or substantiate the factual allegations made in the Pleadings.

(1) The SummonsThe Action commences with the issuing of a Summons by the Plaintiff,

accompanied by the Particulars of Claim, which sets out the basic cause of Action and relief sought.

The Summons is a process of Court that is drafted signed and stamped by the Plaintiff or his attorney and is issued by the Registrar or the Clark of the Court, as the case may be, wherein the matter is allocated a case number, and served on the Defendant by a Sheriff.

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The Summons is issued at the High Court in order to obtain a case number and to open an official file at the High Court. Once the case number has been obtained the document must be served by a Sherriff on the Defendant.

(2) Defence(I) The Defendant has 10 days from the date of service to file its Notice of

Intention to Defend.(II) If the Defendant fails to file its Notice of Intention to Defend within the

prescribed time period, the Plaintiff may request the Court to grant Default Judgement.

(III) If the Defendant files its Notice of Intention to Defend, it has 20 days within which to file its Plea. The Defendant sets out its defence to the Plaintiff’s claim in the Plea, which is a paragraph by paragraph Reply on the merits of the Plaintiff’s claim as set out in the Summons.

(iv) If the Defendant brings a counter claim against the Plaintiff, the Counterclaim will accompany the Plea. This is often referred to as a Claim in Reconvention and the Plaintiff acts as the Defendant in reconvention and vice versa.

The Plaintiff has 15 days from the day of service of the Defendant’s Plea to deliver its Replication (if necessary). The Plaintiff must respond to any Counterclaim by filing a Plea, which is referred to as a Plea in reconvention (essentially the Pleading procedure will then fall into two categories, the first being the main Pleading in relation to the Plaintiff’s Claim in Convention and secondly the ancillary Pleading based on the Defendant’s Claim in Reconvention).

Further Pleadings may be delivered by either party within 10 days but are seldom required in practice.

(3) Closing of Pleadings and Trial DateOnce Pleadings have closed, the matter will be set down for trial but the trial

date will once again depend on the backlog at the High Court.

In Action proceedings, counsel (which is the South African equivalent of a barrister) will not only be required to prepare and file heads of argument (based on the papers filed and the relevant case law) prior to the trial date, but will also be required to attend a Pre-Trial Conference (discussed in paragraph f below), and consult with relevant witnesses in cases where oral evidence will be led.

(4) DiscoveryAlthough, as a general rule, a party does not have to inform its opponent of

the evidence that it intends to present at trial, the opponent is entitled to be informed of all documentary evidence (including tape recordings) that the other party wishes to use at trial. Accordingly the Rules of Court make provision for a discovery procedure, the purpose of which is to enable parties to prepare for trial, and provide for, amongst others, what, when and how it must be discovered. This procedure requires both parties to depose a Discovery Affidavit containing a list of all documents in their possession. The fact that a document has been listed in such an Affidavit merely indicates that the document may potentially be used at trial.

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Unlike Application proceedings, discovery of documents in Action proceedings is mandatory and documents which have not been discovered cannot be relied upon at the trial.

(5) Notice of Expert EvidenceGenerally a witness’ opinion will be inadmissible, however, an expert’s

opinion will be allowed in circumstances where the expert has specific knowledge in a field that is outside the knowledge of the Court. A party wishing to call a witness to give evidence as an expert must, not less than 15 days before the hearing, deliver a notice of its intention to call such a witness and, not less than 10 days before the hearing, deliver a summary of the expert’s opinion with the reasons therefore to its opponent.

(6) Pre-Trial Conference

(i) GeneralUnder the Uniform Court Rules, the Pre-Trial Conference serves as a case

management system in South Africa. In general terms, there is however, less active involvement by Judges in the pre-trial process. In most instances, only the parties and their respective legal representatives are involved in the Pre-Trial Conference.

It is mandatory in all divisions of the High Court for the legal representatives of the opposing parties to attend a Pre-Trial Conference. which must take place no later than 6 weeks prior to the trial date.

At the Pre-Trial Conference parties are encouraged to get rid of many issues as possible by making formal admissions with the purpose of limiting issues that are in dispute. In this way the matter will only proceed to trial where there exist a real dispute thus saving the Courts’ time and costs. The parties may also agree to have the merits and damages to be adjudicated separately.

The purpose of such a meeting is to attempt to negotiate agreement on some of the issues, particularly administrative details, in order to shorten the length of the trial.

(i) After a date for the trial has been set and a notice thereof has been delivered to the Defendant, the Plaintiff is required to deliver a notice to the Defendant indicating the date, place and time for a Pre-Trial Conference,

(ii) Furthermore, in Action proceedings there is a mandatory Pre-Trial Conference. Relevant provisions regulating the Pre-Trial Conference are set out in the paragraphs below.

Each party shall, not later than 10 days prior to the Pre-Trial Conference, furnish every other party with a list of:

(i) the admissions which it requires;(ii) the enquiries which it will direct and which are not included in a

request for particulars for trial; and

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(iii) other matters regarding preparation for trial which he will raise for discussion.

The minutes of the Pre-Trial Conference shall be prepared and signed by or on behalf of every party and the following shall appear therefrom:

(i) The date, place and duration of the conference and the names of persons present;

(ii) if a party feels that he is prejudiced because another party has not complied with the rules of Court, the nature of such non-compliance and prejudice;

(iii) that every party claiming relief has requested his opponent to make a settlement proposal and that such opponent has reacted thereto;

(iv) whether any issue has been referred by the parties for mediation, arbitration or decision by a third party and, on what basis it has been referred;

(v) whether the case should be transferred to another Court;(vi) which issues should be decided separately;(vii) the admissions made by each party;(viii) any dispute regarding the duty to begin or the onus of proof;(ix) any agreement regarding the production of proof by way of an

Affidavit;(x) which party will be responsible for the copying and other preparation

of documents; and(xi) which documents or copies of documents will, without further proof,

serve as evidence of what they purport to be, which extracts may be proved without proving the whole document or any other agreement regarding the proof of documents.

The minutes shall be filed with the Registrar not later than five weeks prior to the trial date.

(ii) Court practiceIn certain divisions such as the South Gauteng High Court (sitting in

Johannesburg) no trial date will be allocated without signed minutes of a Pre-Trial Conference.

The practice directive for the South Gauteng High Court has set the following case management standards and procedures applicable within its jurisdiction:

1. Any party to a trial who is of the opinion that by reason of its complexity, long duration or any other reason, the trial requires case management, shall deliver a letter to the registrar marked for the attention of the Deputy Judge President. The letter must set out:-

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the names of the parties to the trial and the case number;

the nature of the dispute;

an estimate of the probable duration of the trial,

the reason why that party is of the opinion that the trial requires case management.

2. Any party who is in receipt of such letter and who wishes to make representations in respect thereof may do so forthwith delivering a letter to the registrar marked for the attention of the Deputy Judge President. A copy of the letter must be delivered to all other parties to the trial and proof thereof must be provided

3. The Registrar will advise the parties of the outcome of the request.

4. In the event of the request for case management being granted, the Deputy Judge President shall appoint a Judge to undertake the case management of the trial.

5. On the appointment of the Judge aforesaid:

all interlocutory Applications relating to the trial, will, as far as possible, be heard by that Judge.

any party to the trial, on notice to all other parties to the trial, may apply to the Judge for directions as to the conduct of the trial. The Judge may furnish such directions or direct that an interlocutory Application be brought.

the appointed Judge may direct that one or more Pre-Trial Conference be held before him or in his absence.

(iii) Role of the JudgeA Judge, who need not be the Judge presiding at the trial, may, if he deems it

advisable, at any time at the request of a party or mero motu, call upon the attorneys or counsels for the parties to hold or to continue with a conference before a Judge in chambers and may direct a party to be available personally at such conference.

The Judge may, with the consent of the parties and without any formal Application, at such conference or thereafter give any direction which might promote the effective conclusion of the matter including the granting of condonation.

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Although there is lack of uniformity in conducting Pre-Trial Conferences, different division of the Courts encourages – through practice directives – for litigants to approach the Courts for relief with genuine triable issues.

Various commentators are calling for a comprehensive procedural structure with active involvement by the Judges which will allow efficient pre-trial procedures and ultimately fair civil trials.

(iv) Costs ConsequencesAt the hearing of the matter, the Court shall consider whether or not it is

appropriate to make a special order as to costs against a party or his attorney, because he or his attorney:

(i) did not attend a Pre-Trial Conference; or(ii) failed to a material degree to promote the effective disposal of the

litigation.(v) Trial

The trial process is actively controlled by the parties and their legal counsel. The proceedings are recorded on tape so as to record the evidence, arguments and judgment.

The various phases of the trial are usually:

(i) the Plaintiff’s legal representative commences with an opening address, which provides the Judge with an overview of the case;

(ii) examination of witnesses called by the Plaintiff, consisting of examination in chief by Plaintiff, cross-examination by Defendant and re-examination by Plaintiff;

(iii) after the Plaintiff has closed its case, the Defendant’s legal representative is entitled to examination witnesses called by the Defendant, consisting of examination in chief by Defendant, cross-examination by Plaintiff and re-examination by Defendant;

(iv) closing arguments are delivered by both the Plaintiff and the Defendant’s legal representatives; and

(v) the presiding Judge delivers judgment.The Judge renders a decision on the basis of the evidence presented by the

parties and their respective witnesses and judgment is granted.

8. AppealsIt is possible to appeal a decision from the Trade Marks Registrar to the High

Court. A decision in the High Court can be appealed to the Supreme Court of Appeal. In circumstances where there is a possible breach of the Constitution a party can appeal a decision from the Supreme Court of Appeal to the Constitutional Court.

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A party may appeal the decision of the High Court by requesting leave to appeal at any time during delivery of the judgment or within 15 Court days after the date of the delivery of the judgment. The Application for leave to appeal is set down by the registrar of the Court, who gives written notice of the date to the parties, and usually heard by the same Judge. If leave to appeal is granted in the High Court, the appeal will be heard by a full bench of the High Court. An appeal is essentially a re-evaluation of the original judgment and the Court of appeal is limited to deciding on the record of the initial proceedings alone.

The Supreme Court of Appeal will only hear appeals where a party is granted leave to appeal a decision of the full bench of the High Court or where a Judge who granted leave to appeal directs that the appeal must be heard directly by the Supreme Court of Appeal. The Supreme Court can receive further evidence, remit the matter for further hearing by the Court whose judgment forms the subject of the appeal as well as confirm, vary or set aside the original judgment or give any other judgment.

9. Urgent ApplicationsIt is possible to make Applications on an urgent basis, where the above time

periods are waived. However, it is unusual that the Courts would allow a matter which is based on trade mark infringement to proceed on an urgent basis. The reasons given for urgency must be significant and there should be a clear and dramatic financial implication to the party seeking the urgency before it would be allowed to proceed on this basis.

10. Anti-Counterfeiting proceedingsMeasures to prevent trade in counterfeit goods are regulated by the

Counterfeit Goods Act 37 of 1997. The purpose of this act is to enable trade mark owners to take speedy Action to protect their brands against counterfeiters. The Act authorises certain officials to obtain a search and seizure warrant prior to formally instituting proceedings in the High Court. Search and seizure raids are conducted based on the warrant and suspected counterfeit goods are seized and detained.

Once the raid has been conducted the complainant can institute High Court proceedings against the suspect- usually by way of a Court Action as outlined above- or lay criminal charges against the suspect.

11. Acknowledgments

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