Beruflich Dokumente
Kultur Dokumente
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
I INTRODUCTION 5
II PROPOSED MODEL CASE MANAGEMENT PROCEDURES 9
A UNITED STATES 14
B CANADA 19
C THE EUROPEAN UNION 39
D ENGLAND AND WALES 41
E FRANCE 43
F GERMANY 47
G SPAIN 54
H PEOPLE OF REPUBLIC OF CHINA 59
I HONG KONG 67
J JAPAN 71
K REPUBLIC OF KOREA 76
L SINGAPORE 82
M THAILAND 86
N INDIA 94
O AUSTRALIA 102
P BRAZIL 110
Q ISRAEL 112
R SOUTH AFRICA 114
2
INTA COURTS & TRIBUNALS SUBCOMMITTEE MEMBERS, 2008-2009
3
INTA COURTS & TRIBUNALS SUBCOMMITTEE MEMBERS, 2010-2012 Task
Force 2
The Subcommittee would like to thank the following individuals who also
contributed to parts of this report.
4
Fabrizio Miazzetto, Yoon
Kyo Lee
Salvador Ferrandis & Partners Spain
5
I. INTRODUCTION
The 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
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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
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.
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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.
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.
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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.
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.
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II. PROPOSED MODEL CASE MANAGEMENT PROCEDURES
A. 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) 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
Ten (10) days prior to the scheduling and case management conference, the
parties shall be required to submit:
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(a) a short and plain summary of the issues in the case,
(b) their respective, preliminary positions on each issue, specifically, and
at minimum:
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:
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B. TRIAL MANAGEMENT
In cases tried to a jury, the court should employ special verdicts directed to
trademark issues in the case, namely:
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
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any of the issues identified by the parties at the case management conference or
subsequently identified by the parties at a status conference.
The court shall be entitled, upon motion of the parties, to grant preliminary
relief and/or summary judgment.
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.:
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 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.
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(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
whether the evaluation would include the third-party evaluator providing his/her
views on the relative merits of the parties’ positions on the following:
Within thirty (30) days of an early neutral evaluation, the parties are
encouraged to report the following to the Court:
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III. Background Information
A. 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.
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:
(b) Motion practice issues (i.e., the procedures for filing motions with the
Court); and
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(c) Pre-trial procedures (i.e., the procedures for preparing and filing of
joint pre-trial orders).
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).
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.
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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
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.
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.
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
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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.
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.
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
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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.
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.
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
20
and documentary
evidence
5) Respondent serves 30 days after service of R.307
and files supporting applicant's affidavits
affidavits and
documentary exhibits
6) Cross-examinations Completed by all R.307
parties within 20 days
after the filing of the
respondent's affidavits
7) Serve and file 20 days after R.309(1)
applicant's record completion of cross-
examination
8) Serve and file 20 days after service of R.310(1)
respondent's record applicant's record
9) Applicant serves and 10 days after service of R.314(1)
files a requisition the respondent's record
requesting that a date be
set for the hearing of the
application
21
defendant served
outside Canada & U.S.)
3) Plaintiff's Reply to 10 days after service of R.205
Statement of Defense (if Statement of Defense
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 Action
Category Description Rule(s)
1) Pre-Trial Within 60 days after the close of pleadings, the R.257
Settlement solicitors for the parties must discuss the
Discussions 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.
2) Pre-Trial After the close of pleadings, a party who is not in R.258(1),
Conferences default and is ready for trial may serve and file a R.263
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.
3) Trial A judge or prothonotary before whom an R.270
Management action has been set down for trial may hold
Conference 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.
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Table 4 – Extension/Abridgement of Time Periods
Category Description Rule(s)
1) Extension A time period mandated by the general rules can R.7(1)-(3)
by Consent 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
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 / Before or after the end of the period sought to R.8(1)&(2)
Abridgement be extended, a party can bring a motion to
by Court Order extend or abridge the specific time period
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 Initiatives
ACCESSIBILITY UNIQUE PROCEDURAL ASPECTS
Description Rule Description Rule
1. STATUS REVIEW
The court will call a status Upon status review, a court can:
review IF:
Applicable to Applications 1) Dismiss the proceeding R.382(2)(
and Appeals: (unless plaintiff, applicant, or a)
appellant can show cause as to
why this should not happen)
180 days after the issuance R. 2) Enter default judgment R.382(2)(
of the Notice of Application 380(1)( (unless the defendant can show b)
(or Appeal) no requisition b) cause as to why this should not
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ACCESSIBILITY UNIQUE PROCEDURAL ASPECTS
Description Rule Description Rule
for a hearing date has been happen)
filed
Applicable to Actions Only: 3) Order that the proceeding R.382(2)(
continue as a specially managed c)
proceeding
1) 180 days after issuance R.
of the Statement of Claim 380(1)(a
pleadings are not yet )
closed
2) 360 days after issuance
of the Statement of Claim
and no party has filed a
requisition for pre-trial
Exclusion:
Status review does NOT R.380(3
apply to a specially )
managed proceeding
24
ACCESSIBILITY UNIQUE PROCEDURAL ASPECTS
Description Rule Description Rule
the rules. 6) Cease special management of
4093879 Can. Ltd. v. Mal- the case at any time
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
discovery will arise, and
the need for a judge
familiar with the case so
that speedy procedural
determinations can be
made.
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4. Existing Litigation Procedures within the Canadian Provincial
Court System
a. Ontario
The 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.
26
Category Description Timing Rule(s)
Pleadings
2) Service of Statement a) 20 days after service R.18.01
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 10 days after service of R.25.04(3)
Statement of Defense (if Statement of Defense
appropriate) (or 20 days if also
served with a
counterclaim)
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
Action
Category Description Rule(s)
1) Extension / The court may, by order, extend or abridge any R.3.02(1)
Abridgment time period, on such terms as are just.
2) Status Rule Where an action has not been placed on a R.48.14(1),
(Action not on trial list or terminated by any means within R.48.14(5),
Trial List 2 years after the filing of the Statement of R.48.14(8)
within 2 Defense, the registrar shall serve notice on
Years) 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.
3) Offers to 1) If the Plaintiff makes an offer to settle and it is R.49.10(1)
Settle (Cost not accepted by the Defendant, and the Plaintiff
Consequences receives judgment that is as or more favorable
that Encourage than their offer, then the Plaintiff is entitled to:
Settlement) i) Partial indemnity costs from the date of
commencement to the date of the offer (per
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Category Description Rule(s)
Tariff A), and
ii) Substantial indemnity costs from the date the
offer was served onwards
2) If the defendant makes an offer that is not R.49.10(2)
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 offer
ii) The Defendant is entitled to partial indemnity
costs from the date the offer was served until the
end of the proceeding
1. PRE-TRIAL CONFERENCE
A judge MAY, at the request R.50.01 Issues to be discussed at the R.50.01
of a party or upon his/her pre-trial conference include:
own initiative, direct the settlement possibilities,
solicitors (with or without the simplification of the issues, the
parties) to appear before a possibility of obtaining
judge or officer for a pre-trial admissions, and the estimated
conference. duration of the trial.
28
ACCESSIBILITY UNIQUE PROCEDURAL ASPECTS
29
ACCESSIBILITY UNIQUE PROCEDURAL ASPECTS
30
ACCESSIBILITY UNIQUE PROCEDURAL ASPECTS
31
ACCESSIBILITY UNIQUE PROCEDURAL ASPECTS
b. British Columbia
The 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.
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Table 4 – Expeditious Initiatives Implemented within British Columbia
ACCESSIBILITY UNIQUE PROCEDURAL ASPECTS
Description Rule Description Rule
1. CONFERENCES
On a request being received, R.35(2) 1) Pre-trial conference = R.35(3)
or on his/her own initiative, Discussing simplification of the
at any stage of an action, a issues, potential amendments to
judge or master may direct pleadings, possible admissions,
that a pre-trial conference, quantum of damages, and fixing a
mini-trial, or settlement date for trial.
conference be held.
2) Mini-trial = Parties attend R.35(5)
before a judge or master who, in
private and without hearing
witnesses, gives a non-binding
opinion on the probable outcome
of a trial.
3) Settlement conference = R.35(6)
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.
33
ACCESSIBILITY UNIQUE PROCEDURAL ASPECTS
Description Rule Description Rule
then taken from there,
depending on the specifics of
the case.
Case Management of
Short Trial Actions:
Management of cases with an Practice
estimated trial length of 1 to Directio
19 days will be restricted to n, Part
those cases that are in need IV
of court management (as
selected by the Chief Justice
of the Supreme Court).
Applicability of Pre-Trial
Conferences:
Practice
Directio
n, Part
Applies to all: III, s.1
i) Civil trials 4-19 days in
length, and
ii) 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
34
ACCESSIBILITY UNIQUE PROCEDURAL ASPECTS
Description Rule Description Rule
Any party to an action may Notice
initiate mediation by to
delivering a Notice to Mediate Mediate
Form to: (General
i) All other parties to the ) Reg.,
action, and s.3
ii) The Dispute Resolution
Office in the Ministry of the
Attorney General.
c. Alberta
The 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.
1. PRE-TRIAL CONFERENCES
Civil Issues to be discussed at a pre- R.219(1
1) A conference must be held Practice trial conference include: possible )
for: Note 3 simplification of the issues,
i) Any trial set for 3 days or (March potential amendments to
longer, 25, pleadings, possibility of
ii) All matters to be heard by 2002) admissions, and any other matters
jury, and that may aid in the disposition of
iii) Cases where the court the proceeding.
orders a conference.
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ACCESSIBILITY UNIQUE PROCEDURAL ASPECTS
Description Rule Description Rule
2. CASE MANAGEMENT (Civil Practice Note 1 – August 18, 2005)
1) The parties shall apply for s.2 1) Case management judge can s.13
the appointment of a case encourage mediation (but cannot
management judge for an order unless the parties consent).
action:
i) To be tried by jury 2) Case management judge can s.12,
ii) That appears to be very Alberta make any order which he/she s.14,
long trial action (i.e. likely to Rules of believes will likely promote the s.21
require more than 25 trial Court efficient resolution of the action.
days), or R.5(1)( For example, a case management
iii) Wherein case u) judge may: order steps to be
management has been taken, establish a case timetable,
ordered by a court. and convene a case management
conference at any time.
36
ACCESSIBILITY UNIQUE PROCEDURAL ASPECTS
Description Rule Description Rule
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 Form
3) 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.
3.b. Consensual
Mediation:
Parties can opt into the 1) If all parties agree to go to
mediation, if they so desire. mediation, then the parties may
This requires the consent of select a roster mediator and
all parties. schedule mediation directly with
the mediator.
d. Nova Scotia
The 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.
37
Table 6 – Expeditious Initiatives Implemented within Nova Scotia
ACCESSIBILITY UNIQUE PROCEDURAL ASPECTS
Description Rule Description Rule
38
3. HALIFAX CASE MANAGEMENT RULES (R.68)
39
plaintiff may file and serve documents within 20 days after the 3(1)
originating notice with the close of pleadings.
words "FAST TRACK" on it. 2) Discovery of witnesses must be R.68.0
2) If the court is then R.68. completed within 4 months after the 3(1)
satisfied that a Notice of Trial 03(2) close of pleadings.
can be filed within 8 months, 3) A court may, on its own motion, Practic
the action will follow the Fast bring parties forward to discuss the e
Process. status of a case when: Memo
i) 10 months have passed since the 27,
close of pleadings, or s.3
ii) 24 months have passed since the
filing of the originating notice and
no defense has been filed.
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
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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.
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.
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.
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;
41
(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)
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.
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.
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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.
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.
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.
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.
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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
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.
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:
44
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
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.
45
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.
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).
46
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.
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 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).
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.
47
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.
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).
a. Basic Principles
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.
48
(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.
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.
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.
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
49
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.
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.
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:
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
50
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
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).
- witnesses;
- expert witnesses;
- documents;
- interrogation of a party.
51
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.
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.
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
52
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
(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
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.
Besides the ordinary proceeding, German civil procedural law provides for
interlocutory injunctions and provisional proceedings in special cases:
53
(1) Trademark infringement
(2) Procedure
54
- If the injunction was granted after a hearing, an ordinary first
appeal is applicable to the appeal court.
G. SPAIN
In 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
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.
a. Ordinary Proceedings
55
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).
These can be filed before, together or after the filing of the main lawsuit,
depending on the circumstances of the case.
56
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.
(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.
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.
(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.
57
(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.
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.
58
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).
59
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.
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
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.
60
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.
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(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.
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
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
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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.
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.
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.
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(i) Using a trademark identical to a registered mark on the same type of
goods without authorization;
(ii) Selling goods knowing that they bear a counterfeit registered
trademark; and
(iii) Making or selling counterfeit labels.
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
1A benchmark of a ‘serious’ circumstance is the use of identical marks on identical goods and generating an
illegal turnover exceeding RMB50,000
2A benchmark of a ‘relatively large amount’ is turnover exceeding RMB50,000 from the sale of counterfeit
products
3A benchmark of an ‘exceptionally serious’ circumstance, generating an illegal turnover exceeding
65
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.
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.
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.
66
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
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”).
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.
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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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
Appeal and each of the lower specialized tribunals are governed by their own
respective tribunal rules.
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.
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.
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(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
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.
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.
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.
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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.
e. Trial/Judgment
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
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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.
J. JAPAN
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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.
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
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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
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 complaint
Defendant: Oral statement of answer
Plaintiff: Required to submit evidence of fame in 30 days
Defendant: Required to submit allegedly infringing products
Required to submit relevant documents in 60 days
Required to prepare arguments against
infringement
in 30 days
↓
60 days 1 Preparation for argument
st
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Court: Finalizing preparation of arguments
2nd Oral Argument in Open Court
74
5. Damages
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.
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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
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
76
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”.
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
6Youngjoon KWON, Litigation in Korea: A General Overview of the Korean Civil Procedure, Journal of Korean Law,
Vol. 7, No. 1, 2007, p.115.
77
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”.
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.
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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.
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.
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.
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
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objection to the decision. Practically speaking, a great portion of the small claims
cases are resolved at the stage of recommendations8”.
2. Criminal Proceedings
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:
b. Judgment
8Youngjoon KWON, Litigation in Korea: A General Overview of the Korean Civil Procedure, Journal of Korean Law,
Vol. 7, No. 1, 2007, p.114
80
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.
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).
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).
L. SINGAPORE
81
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.
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.
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.
b. Originating Process
82
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.
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
83
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.
Additionally, more formal mediation processes are also available through the
Singapore Mediation Center, and arbitration may be conducted on an ad hoc basis
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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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3. Criminal Proceedings
Under Singapore’s Trademarks Act, the following infringing acts may result in
criminal liability:
M. THAILAND
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
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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.
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
c. Preliminary Injunction
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.
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(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.
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.
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.
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property and international trade cases provided that such provisions do not impair
defendants’ rights.
In addition, the flexibility of this “user – friendly” forum can be seen through
the following provisions:
a. Pre-trial Conference
(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
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summoned from the other party or the third party as well as the taking
of evidence out of court and commissioning to another court;
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.
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.
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.
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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.
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.
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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.
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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).
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
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
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opinion or has certified that there is reason to appeal or a written approval by the
Chief Justice of the CIPIT court.
N. INDIA
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III. SUMMONS
Under 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.
i. ISSUES:
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
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(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. TRIAL
Parties 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 Examination
c) Re-examination
Under Order XVIII Rule 1 CPC, the plaintiff has the right to begin.
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.
CIVIL REMEDIES
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In case of an infringement action, the following reliefs are available to the
plaintiff under Section 135 of the Trade Marks Act, 1999:-
PROPOSED AMENDMENTS
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 so, the U.S. courts passed deeply critical judgments highlighting the
‘deplorable’ state of its Indian counterpart.
10
(1995) 52, F.2.d. 1220(3rd Cir)
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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.
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will have to file the following pleadings and evidence along with the
Plaint at the very initial stage of the lawsuit:
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;
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;
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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.
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:-
(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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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.
O. AUSTRALIA
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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 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:
i. admiralty panel;
ii. corporations panel;
iii. taxation panel.
3. Time
a. Reckoning
a. Commencement by Application
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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.
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
b. Case 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.
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Summaries
d. Non-Compliance
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.
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d. Initial Witness List
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
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.
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
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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
parties, so as not to surprise those parties or otherwise deprive the parties of an
expected opportunity to cross-examine.
j. Alteration of Dates
7. Discovery
a. Limited Discovery
(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
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d. Discovery Disputes
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.
a. Briefs Required
d. Extensions of Time
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a. Time of Pre-trial Conference
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.
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.
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
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allocated time has expired, the party will not, except in exceptional circumstances,
be permitted to present further evidence and/or make further submissions, as the
case may be.
11. Trial
a. Trial 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. Closing Statements
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.
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P. BRAZIL
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.
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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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(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.
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.
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.
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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.
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Q. SOUTH AFRICA
1. Court Structure
South 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.
a. Relevant Tribunal
In 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.
b. Procedure
South 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
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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.
c. Case Management
In 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.
3. Costs
The 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.
a. General
Proceedings 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).
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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.
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.
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. Judgment
Once 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. Discovery
Usually 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.
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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:
(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.
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 is of such a nature that it can be
dispute. dealt with on the papers before the
Court.
Commences with the issuing of Summons Commences with the issuing of a Notice
by the Plaintiff. of Motion and supporting Founding
Affidavit by the Applicant.
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ACTION APPLICATION
After the exchange of Pleadings, a stage There is no written preparation for trial
called the preparation for trial follows. stage.
Certain preparatory steps are then taken
such as the discovery of documents and
expert notices.
The Action procedure ends in the trial The Application procedure ends in the
Court where mainly oral evidence by the motion Court. In principal no oral
parties and their witnesses is presented. 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. General
Applications 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 Affidavit
The 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
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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:
(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.
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 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
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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. Judgment
Once 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
and documents submitted by the parties and presented by the parties’ advocates
(legal representatives) in Court.
d. Discovery
Application 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. General
Action 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 Stage
A 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
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oral evidence to prove and/or substantiate the factual allegations made in the
Pleadings.
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.
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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) Discovery
Although, 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.
(i) General
Under 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
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real dispute thus saving the Courts’ time and costs. The parties may also agree to
have the merits and damages to be adjudicated separately.
(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 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
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(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.
The practice directive for the South Gauteng High Court has set the following
case management standards and procedures applicable within its jurisdiction:
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.
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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.
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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(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. Appeals
It 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.
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 Applications
It 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.
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10. Anti-Counterfeiting proceedings
Measures 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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