INTA
COURTS & TRIBUNALS
SUBCOMMITTEE
CASE MANAGEMENT PROCEDURES
REPORT
WITH
MODEL CASE MANAGEMENT
PROCEDURES
All information provided by the Courts & Tribunals Subcommittee of the International
Trademark Association in this document is provided to the public as a source of general
information on trademark and related intellectual property issues. In legal matters, no
publication, whether in written or electronic form, can take the place of professional advice
given with full knowledge of the specific circumstances of each case and proficiency in the
laws of the relevant countries. While efforts have been made to ensure the accuracy of the
information in this document, it should not be treated as the basis for formulating business
decisions without professional advice. We emphasize that trademark and related
intellectual property laws vary from country to country, and between jurisdictions within
some countries. The information included in this document will not be relevant or accurate
for all countries or states.
1
Table Of Contents
INTA COURTS & TRIBUNALS SUBCOMMITTEE MEMBERS 2008 - 2009 2
INTA COURTS & TRIBUNALS SUBCOMMITTEE MEMBERS 2010 – 2012
Task Force 3
3
I
II
INTRODUCTION
PROPOSED MODEL CASE MANAGEMENT PROCEDURES
5
9
A
B
C
Scheduling /General Management
Trial Management
Alternative Dispute Resolution
9
11
12
4
III Background Information
14
A
B
C
D
E
F
G
H
I
J
K
L
M
N
O
P
Q
R
14
19
39
41
43
47
54
59
67
71
76
82
86
94
102
110
112
114
UNITED STATES
CANADA
THE EUROPEAN UNION
ENGLAND AND WALES
FRANCE
GERMANY
SPAIN
PEOPLE OF REPUBLIC OF CHINA
HONG KONG
JAPAN
REPUBLIC OF KOREA
SINGAPORE
THAILAND
INDIA
AUSTRALIA
BRAZIL
ISRAEL
SOUTH AFRICA
2
INTA COURTS & TRIBUNALS SUBCOMMITTEE MEMBERS, 2008-2009
Name
Company Name
Location
Beth Alquist
Giovanni Casucci
Peter Chalk
Luis Cavaleiro de Ferreira
Nuno Cruz
Gerard Delile
Patti DeSimone
Todd Deveau
Claudio DiGangi (staff
liaison)
Tom Donovan
Burkhart Goebel
Jim Gumina
Patty Hogan
Mike Hurst (chair)
Sam Ibrahim
Greg Kaihoi
David Kane
Ludwig Kouker
Pascal Lamothe
David Lorenz
Greg Madera
Ignacio Marques
Fabrizio Miazzetto
Luiz Montaury
Aaron Montero
Avi Ordo
Eric Osterberg
Damaso Pardo
Scott Pivnick
Mike Rodenbaugh
Elisa Santucci
Andrew Simpson
Paul Supnik
Ignacio Temino
Kat Treiber
Anthony Trenton
Agustin Velazquez
Diego Vieira
Courtenay Williams
Julian Zegelman
Day Pitney
Casucci Law
Blake Dawson Waldron
Leonel Alves' Law Firm
J. Pereira da Cruz
Salans
Alberto-Culver Co.
Thomas Kayden Horstemeyer & Risley
Hartford, CT
Milan, Italy
Melbourne, Australia
Macau, China
Lisbon, Portugal
Paris, France
Melrose Park, IL
Atlanta, GA
INTA
New York, NY
Barnes & Thornburg
Lovells
McDonnell Boehnen Hulbert & Berghoff
Keating Muething & Klekamp
Keating Muething & Klekamp
Buchanan Ingersoll & Rooney
General Mills
Locke Lord
Boehmert & Boehmert
Joseph Lee
Powley & Gibson
Fish & Richardson
Baker & McKenzie
Bardehle Pagenberg Dost Alternburg
Montaury Pimenta Machado & Lioce
E-Proint
S. Horowitz & Co.
Fox Rothschild
Perez Alati Grondona Benites…
Pillsbury Winthrop Shaw Pittman
Rodenbaugh Law
Castello Santucci
Knobbe Martens
Law Office of Abril Abogados
Cooley Godward
Denton Wilde Sapte
Mijares, Angoitia Cortes y Fuentes
Daniel Advogados
Pollonais, Blanc de la Bastide & Jacelon
Hoge Fenton
Chicago, IL
Madrid, Spain
Chicago, IL
Cincinnati, OH
Cincinnati, OH
Alexandria, VA
Minneapolis, MN
New York, NY
Bremen, Germany
Kowloon, Hong Kong
New York, NY
Boston, MA
Barcelona, Spain
Alicante, Spain
Rio de Janeiro, Brazil
San Jose, Costa Rica
Tel Aviv, Israel
Stamford, CT
Buenos Aires, Argentina
Washington, D.C.
San Francisco, CA
Rio de Janeiro, Brazil
Irvine, CA
Beverly Hills, CA
Madrid, Spain
San Francisco, CA
London, England
Mexico City, Mexico
Rio de Janeiro, Brazil
Port of Spain, Trinidad
San Jose, CA
3
INTA COURTS & TRIBUNALS SUBCOMMITTEE MEMBERS, 2010-2012 Task
Force 2
Name
Nick Redfearn
Beth Alquist
Ray Black
Dr. jur Ludwig Kouker
Lemke Christian
Fabrizio Miazzetto
Chiang Ling Li
James C. Gumina
Betty Morgan
Maarten Haak
Scott J. Pivnick
Elisa Santucci
Paul D. Supnik
Rafaela Borges Walter
Carneiro
Firm / Company
Rouse (Subcommittee Chair)
Day Pitney LLP (task force chair)
SJ Berwin
Boehmert & Boehmert
Heissner & Struck
Salvador Ferrandis & Partners
Jones Day
McDonnell Boehnen Hulbert &
Berghoff LLP
The Morgan Law Firm P.C.
Hoogenraad & Haak
Pillsbury
Castello Santucci
Paul D. Supnik
Dannemann Siemsen
City, State / Country
Hong Kong
Hartford, CT
London, United Kingdom
Bremen, Germany
Hamburg, Germany
Madrid SPAIN
Hong Kong
Chicago, IL
Atlanta GA
Amsterdam,the
Netherlands
Washington, DC
Rio de Janeiro, Brazil
Beverly Hills, CA
Rio de janeiro, Brazil
Further Acknowledgements {only not members of the committee}
The Subcommittee would like to recognize the contributions of the following
individuals who led this project during the 2008-9 term (asterisks denote
individuals who originated this project during the 2006-2007 committee term) Beth
Alquist, Peter Chalk*, Gerard Delile, Todd Deveau*, Tom Donovan, Jim Gumina,
Mike Hurst*, Sam Ibrahim, Greg Kaihoi, David Kane*, Ludwig Kouker, Fabrizio
Miazzetto, Avi Ordo* and Anthony Trenton*. In addition, the team would like to
recognize the contributions of Lloyd Sarginson and Lou Ederer who participated in
the early stages of this project during the prior term.
The Subcommittee would like to thank the following individuals who also
contributed to parts of this report.
Chiang Ling Li, Luckie
Hong, Chester Hui
Dr. Ludwig Kouker
Anita Leung, Chester Hui
Yasuhiro Suzuki
Jones Day
China
Boehmert & Boehmert
Germany
Jones Day
Hong Kong
Saegusa & Partners
Japan
4
Fabrizio Miazzetto, Yoon
Kyo Lee
Barbara Berdou
Deon Bouwer
Kagisho Manyashi
Megan Reimers
Manoon Changchumni
Salvador Ferrandis & Partners
Spain
Berdou Attorneys
Bouwers Inc.
De Chalains Patent &
TradeMark Attorneys
Spoor & Fisher
Rouse
South Africa
South Africa
5
South Africa
South Africa
Thailand
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 leastdeveloped 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
6
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.
Mediation is a flexible, non-binding dispute resolution procedure in which a
neutral third party (the mediator) facilitates negotiations between the parties to
help facilitate settlement of their dispute. The mediation process allows the parties
to expand traditional settlement discussions and broaden resolution options, often
by going beyond the legal issues and dispute. Mediation sessions typically are
confidential and structured to help the parties communicate as, for example, in
clarifying their understanding of underlying interests and concerns, probing the
strengths and weaknesses of legal positions, exploring the consequences of not
settling, and generating settlement options. The mediator typically serves as a
facilitator and does not issue a decision. Mediation may be particularly useful when
parties have a relationship they want to preserve. Mediation can also be effective
when emotions may be getting in the way of resolution of the parties’ dispute.
Mediation may not be effective if one of the parties is unwilling to cooperate or
compromise. Mediation also may not be effective if one of the parties has a
significant advantage or leverage over the other.
Arbitration is typically an adjudicatory process in which one or more
arbitrators issue a judgment or decision on the merits of the dispute after an
expedited, adversarial hearing in which representatives for each party present their
cases. The decision is typically non-binding on the parties, though it can be
binding. The decision addresses only the disputed issues and attempts to apply
legal standards. Either party may reject a non-binding decision and proceed to
trial. Arbitration is less formal than a trial, and rules of evidence are often relaxed.
Arbitration is often best for cases where the parties want another person to decide
the outcome of their dispute for them but would like to avoid the formality, time
and expense of a trial, or for purposes of confidentiality. It may also be appropriate
for complex matters where the parties want a decision-maker who has training or
7
experience in the subject matter of the dispute.
Arbitration may not be
appropriate, however, if the parties want to retain control over how their dispute is
resolved.
Early neutral evaluation (ENE) is a non-binding ADR process designed to
improve case planning and settlement prospects by providing litigants with an early
advisory evaluation of the likely court outcome. Case planning and settlement
assistance may also be offered during the session, which is typically held before
much discovery has been taken. In ENE, a neutral evaluator usually holds a
confidential session with the parties and their representatives or counsel early in
the litigation to hear both sides of the case. The evaluator typically helps the
parties clarify arguments and evidence, identifies strengths and weaknesses of the
parties’ positions, and gives the parties a non-binding assessment of the merits of
the dispute. The neutral evaluator is often an expert on the subject matter of the
dispute. As a result, early neutral evaluation (ENE) may be most appropriate in
cases in which there are technical or legal issues which require special expertise to
resolve or the only significant issue in the case is the amount of damages. ENE is
thought to be widely applicable to many types of civil cases, including complex
disputes. ENE may not be appropriate when there are significant personal or
emotional barriers to solving the dispute.
Settlement conferences may be either mandatory or voluntary. Typically the
parties and their representatives or attorneys meet with a judge or a neutral person
to discuss possible settlement of their dispute. The judge or neutral person does
not make a decision in the case but assists the parties in evaluating the strengths
and weakness of the case and in negotiating a settlement.
For more information on ADR, see generally “ADR and Settlement in the
Federal District Courts (A Sourcebook for Judges & Lawyers)”, by Elizabeth
Plapinger and Donna Stienstra, a joint project of the Federal Judicial Center and the
CPR Institute for Dispute Resolution (1996); see also, “Alternative Dispute
Resolution,
Options
for
Resolving
Your
Dispute”,
www.courtinfo.ca.gov/selfhelp/lowcost/documents/adr.pdf. Additional information
on
meditation
can
be
located
on
INTA’s
website
at
http://www.inta.org/Mediation/Pages/Mediation.aspx.
The conduct of trials, including trials of trademark cases, will vary greatly in
different jurisdictions. Many different factors affect the conduct of trial, including
the laws of the jurisdiction (both substantive and evidentiary), the nature of the
finder of fact (judge or jury), and the nature of the local practice. Even with that
background, steps can be taken to improve the efficiency of trademark trials.
These guidelines do not attempt to address pre-trial procedures that may limit
issues needed to be addressed at trial, but encourage such procedures to improve
the costs, time and effort associated with a trial.
Many cases involving a trademark dispute are not primarily driven by
monetary damages; rather, the trademark owner’s goals are to enjoin the
infringing activities quickly. An efficient way to proceed, therefore, may be to
8
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.
These proposed Model Procedures, in Section I, will be rather uncontroversial
in well-developed jurisdictions such as the United States, European Union and
Australia (with Australia deserving special recognition, according to our research,
for already having enacted a number of progressive case management procedures
that both simplify and speed up the litigation and enforcement process) as they
tend to acknowledge a lower bar than has already been set. From that standpoint,
the Subcommittee perceives no issue with a jurisdiction that elects to legislate
beyond the threshold that the Model Procedures seek to establish. Rather, the
overall goal of these Model Procedures is to urge those jurisdictions that may fall
significantly below the threshold to examine critically their existing case
management procedures to determine whether brand owners are really being
adequately served in their attempts to protect and enforce their valuable trademark
rights.
The subcommittee gathered information on the current procedures and
practices in various locations around the globe, which is in Section II: Background
Information, infra. The intention was to provide a representative sampling of
procedures in certain jurisdictions, but in no way is it intended to be an exhaustive
listing of important jurisdictions.
We invite supplemental submissions for
jurisdictions not covered herein for the benefit of INTA members and interested
parties.
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II. PROPOSED MODEL CASE MANAGEMENT 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)
(b)
case,
(c)
(d)
(e)
allowing the court to expedite the disposition of the action,
establishing early and continuing control over the management of the
discouraging wasteful pre-trial activities,
encouraging appropriate preparation of the case for trial, and
facilitating settlement of the case and discussing the parties’
conclusions concerning the use of Alternative Dispute Resolution (see
Section C, below).
At the scheduling and case management conference, and taking into
consideration the complexity of the matter, the court shall enter a scheduling order
or make directions that:
(a)
(b)
under
(c)
(d)
limit the time to join other parties to the proceeding, and file motions,
limit the time and scope of whatever discovery may be permitted
local rule,
propose a plan for dealing with discovery of electronic materials,
set the dates for status conferences between the parties, the final pretrial conference, and the date of trial
Such a schedule shall not be modified except for good cause.
Ten (10) days prior to the scheduling and case management conference, the
parties shall be required to submit:
10
(a)
(b)
a short and plain summary of the issues in the case,
their respective, preliminary positions on each issue, specifically, and
at minimum:
i.
ii.
iii.
iv.
v.
vi.
vii.
viii.
ix.
x.
xi.
(c)
(d)
(e)
(f)
ownership / validity of the plaintiff’s mark,
priority of registration and/or use,
channels of trade in which the goods/services move, and
sophistication of the purchasers
significance of concurrent use, if any,
similarity of the marks,
similarity of the goods and/or services,
strength of the plaintiff’s mark,
evidence of actual confusion,
defendant’s intent,
plaintiff’s damages, if any
the proof that is required on each issue,
the discovery that will be needed on each issue,
the witnesses that may be called with respect to each issue, and
any potential problems or obstacles foreseen by the parties with
respect to any of the foregoing with which the parties may require the
court’s assistance or direction.
The submission contemplated herein is not intended to be an exhaustive
treatment of the issues in the case. Rather, the submission, not to exceed
ten (10) pages, should merely briefly outline each party’s case so that the
other party understands the issues to be determined at trial and the other
party’s general position of the same. One of the goals of this exercise is to
facilitate settlement.
The court is encouraged to designate a magistrate, registrar or similar officer
of the court who shall be responsible for:
(a)
(b)
(c)
dealing with procedural issues,
hearing and ruling on procedural and pre-trial motions, and
taking an active role in managing the case
To facilitate the orderly presentation of evidence, the Court should order the
parties, no later than thirty (30) days prior to trial, to exchange appropriate
information, including:
(a)
(b)
(c)
and
(d)
exhibit lists (with objections),
witness lists (with objections, and including the order in which
witnesses are expected to be called),
pretrial papers addressing the anticipated merits of their arguments,
any other information the court may deem appropriate.
11
B.
TRIAL MANAGEMENT
Where it is permissible and efficient to do so, a court should bifurcate the
liability and damages phases of the trial, with liability being determined first,
followed by a hearing on damages.
In cases tried to a jury, the court should employ special verdicts directed to
trademark issues in the case, namely:
(a)
(b)
(c)
(d)
(e)
ownership / validity of the plaintiff’s mark,
priority of registration and/or use,
significance of concurrent use, if any,
defendant’s intent,
likelihood of confusion (considering factors such as the similarity of the
marks, similarity of the goods, strength of the plaintiff’s mark,
evidence of actual confusion, channels of trade in which the
goods/services move, and sophistication of the purchasers)
In cases tried by a judge alone (or a finder of fact who is entitled to question
the witness) without a jury, where local rules permit, the court should consider
whether it is appropriate to have direct testimony, including expert testimony,
presented in written form such as a declaration or affidavit, with the only live
testimony being cross examination and rebuttal testimony.
In jury cases, issues relating to the conduct of surveys and the admissibility
of the results should be handled by motion prior to trial (i.e., in limine). In cases
tried by a judge alone, the court may consider accepting expert reports in lieu of
live testimony where appropriate, such as upon agreement of the parties.
In all cases, but especially in cases tried to a jury, courts should encourage
the parties to resolve all disputes, or rule on them where possible, in limine, in
order to have a more efficient presentation of the evidence.
In cases tried by a judge alone, the court should allow the parties to submit
post trial briefing in lieu of closing arguments that put the evidence presented at
trial into context and fully explains the relative positions. The timing and extent of
the briefing is within the discretion of the court, but such briefing shall, at most, be
filed within thirty (30) days of the conclusion of the trial.
Either through motion of the party or on its own accord, consistent with local
practice and rules of evidence, the court shall have substantial discretion to limit
inappropriate testimony of a witness, e.g., where such testimony is not relevant or
otherwise wasteful of the court’s time and resources, in order to allow for the
orderly presentation of evidence and to increase the efficiency of the trial.
Consistent with local practice and rules of evidence (including whether such
practice is permitted in jury trials or in cases tried by a judge alone), the court shall
have the power, during trial, to directly examine and cross examine witnesses on
12
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 have the authority to rule on interlocutory or preliminary
matters to simplify the trial on the merits.
The court shall be entitled, upon motion of the parties, to grant preliminary
relief and/or summary judgment.
C.
ALTERNATIVE DISPUTE RESOLUTION
The parties to a trademark dispute proceeding shall be presented with an
opportunity to enter into voluntary dispute resolution as early in the dispute as
possible.
Within thirty (30) days of the defendant filing an answer to the complaint,
and preferably ten (10) days prior to a scheduling and case management
conference with the court under Section A. above, the parties are encouraged to
discuss use of alternative dispute resolution (ADR) procedures, such as mediation,
arbitration, and early neutral evaluation, and to discuss when they believe ADR
would be beneficial to potentially resolving the dispute, e.g.:
(a)
prior to or after the discovery phase if one is involved,
(b)
after deposition of the plaintiff and the defendant if depositions are to
be taken,
(c)
at some other time during the dispute proceeding but before the trial
phase
If the parties are not able to resolve the dispute early in the dispute
proceeding, the parties should be encouraged to attempt ADR later, and potentially
at more than one time during the dispute proceeding.
Where lack of information is considered to be an impediment to resolution of
the dispute, the parties should be encouraged to discuss the information believed
necessary for candid and fruitful ADR discussion and how and when such
information can be exchanged.
Where the parties are unable to agree on either the timing of an ADR
procedure or the information to be exchanged for such procedure or both, they
should submit a report to the Court explaining why they have not been able to
reach agreement.
Where the lack of exchange of information is an impediment to an ADR
procedure, the Court shall have the discretion to order an exchange of information
for the ADR procedure, provided:
(a)
the information exchanged is considered confidential to the parties,
and
13
(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:
(a)
(b)
(c)
(d)
(e)
(f)
(g)
(h)
(i)
(j)
(k)
(l)
(m)
(n)
ownership / validity of the plaintiff’s mark,
similarity of the marks,
similarity of the goods/services,
the extent to which concurrent use, if any, has any bearing on the
case,
priority of registration and/or use,
strength of the plaintiff’s mark,
evidence of actual confusion,
defendant’s intent,
channels of trade in which the goods/services move,
sophistication of the purchasers,
the need for survey evidence to be introduced,
the need for expert testimony to be introduced,
whether a damage award will be sought/necessary,
how costs of the proceeding could be allocated between the parties
Within thirty (30) days of an early neutral evaluation, the parties are
encouraged to report the following to the Court:
(a)
(b)
(c)
(d)
whether the plaintiff wishes to maintain its case,
whether the defendant wishes to concede the case,
whether the parties can agree on any of the items/issues discussed in
ENE, and
whether settlement is possible
14
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.
1.
Southern District of New York
The Subcommittee surveyed the various individual rules of the district court
judges for the Southern District of New York (“SDNY”) with an eye towards
identifying any trends or developments that relate to case management (i.e., the
scheduling of the events that will take a case from inception through trial). As
discussed below, it would appear that the more recently appointed judges and the
recently appointed Chief Judge are advocating more active case management with
stricter and more explicit deadlines.
Unlike other district courts (e.g., the Northern District of California with its
Standing Order for case management conferences), there are no prescribed courtwide standards for addressing case management issues in the SDNY. Instead, case
management issues are left to the individual judges who, if they address the issue
at all, will do so in their individual rules (available in .pdf format on the SDNY
website at http://www1.nysd.uscourts.gov).
Notably, the majority of judges in the SDNY do not specifically address case
management in their individual rules. Rather, the individual rules for a district
court judges in the SDNY typically address the following issues:
(a)
Communications with chambers (i.e., approved methods for contacting
the Court);
(b)
Motion practice issues (i.e., the procedures for filing motions with the
Court); and
15
(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).
Some judges, however, do specifically address case management issues in
their individual rules. The manner in which these issues are addressed range from
noting the various deadlines that counsel are expected to agree upon (see, e.g.,
Judge Holwell) to templates for proposed scheduling orders that note the various
deadlines (see, e.g., Judge Scheindlin) to templates for proposed orders that not
only note the various deadlines but also provide outside time limits for the setting
of such deadlines (see, e.g., Judge Wood, Judge Castel, and Judge Crotty).
Notably, some of the most aggressive case management requirements are
set forth by Judge Wood, who was appointed Chief Judge for the SDNY in 2006.
Judge Wood’s proposed scheduling order states that the Court expects that all
discovery shall be completed within 90 days of the first scheduling conference.
While the proposed order also states that the parties may request additional time
by joint letter, such extensions shall not exceed 60 days and any further extensions
will be granted only after a showing of good cause that additional time is needed.
In addition, Judge Wood is the only judge in the SDNY to set forth a separate
template for a discovery plan. The discovery plan template sets forth additional
deadlines for 26(a)(1) disclosures, the exchange of document requests, deposition
notices, third-party subpoenas, and expert reports, and also requires the parties to
indicate who they anticipate deposing.
Further, it does appear that some of the more newly appointed judges are
paying greater attention to managing cases with more strict and explicit deadlines.
Judge Castel (appointed in 2003) and Judge Crotty (appointed in 2005), for
example, have both set forth very similar templates for their case management
orders. These templates are unique because the deadlines set forth in them are
tied to the date of the initial scheduling conference. For example, while the parties
may agree upon a deadline for amendments to the pleadings, the templates for
Judge Castel and Judge Crotty provide that “absent exceptional circumstances”
such deadline may not exceed 30 days from the date of the case management plan
and scheduling order. Similarly, the templates provide that all fact discovery
should be completed within 120 days of the scheduling order “unless the Court
finds that the case presents unique complexities or other exceptional
circumstances.”
Thus, the parties are given far less leeway (and far less
opportunity for disagreement) in discussing their case management plan.
16
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.
2.
Trademark Trial and Appeal Board (TTAB)
The TTAB has recently instituted its Accelerated Case Resolution (“ACR”)
procedure. Parties seeking a final determination of their opposition or cancellation
proceeding quickly and without the time and expense are invited to consider ACR.
The following is excerpted, in pertinent part, from the TTAB’s ACR notice rule from
the Official Gazette.
ACR is a procedure akin to summary judgment in which parties can receive a
determination of the claims and defenses in their case promptly, but without the
uncertainty of result and delay typically presented by standard summary judgment
practice. Parties often file motions for summary judgment in the hope of avoiding a
costly trial, but these motions often must be denied because there is at least one
material fact in dispute. As a result, these parties spend considerable time and
expense on a motion that frequently does not in any way advance the prosecution
of the case. Apart from not obtaining a final, appealable decision, they also have
not created a record that will save time at trial, because evidence submitted in
connection with unsuccessful motions for summary judgment is of record only for
consideration of those motions. To be considered at final hearing, any such
evidence must be properly introduced in evidence during the appropriate trial
period. See, American Meat Institute v. Horace W. Longacre, Inc., 211 USPQ 712,
716 n.2 (TTAB 1981).
In order to take advantage of ACR, the parties must stipulate that, in lieu of
trial, the Board can resolve any issues of material fact. If the parties have already
17
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.
3.
U.S. International Trade Commission (ITC) Cases Under § 337
Section 337 of the Tariff Act of 1930 (19 U.S.C. § 1337) declares
infringement of certain statutory intellectual property rights and other forms of
unfair competition in import trade to be unlawful trade practices. The U.S.
International Trade Commission hears cases brought under Section 337. Most
Section 337 investigations concern patent and trademark rights.
After a complaint is filed with the Commission, the Office of Unfair Import
Investigations (OUII) examines the complaint for sufficiency and recommends to
the Commission whether the investigation should proceed.
The Commission
normally determines whether to institute an investigation within 30 calendar days
18
from filing. If the complaint is accompanied by a motion for temporary relief, the
Commission makes its determination on both matters within 35 calendar days from
filing.
Investigations are conducted pursuant to the Administrative Procedure Act
and the Commission Rules (similar to the Federal Rules of Civil Procedure). An
administrative law judge is appointed to handle the case, and the judge issues a set
of Ground Rules that provide detailed instructions on, e.g., the time for responding
to motions, the method for asserting privilege, the number of copies of exhibits, the
use of translators, the procedures for arranging telephone conferences with the
judge, etc.
Target dates for completion of the investigation are set by the presiding
judge within 45 days of the commencement of an investigation. The judge may set
target dates for completion of 15 months or less by his own order. If the Judge
seeks to set a longer target date, his Initial Determination in this regard is subject
to review by the Commission.
Commission Rules provide that an investigation can be terminated through
the parties’ agreement either to settle the case or to submit to alternative dispute
resolution.
If the case is not to be settled, a formal evidentiary hearing on the merits is
conducted by the administrative law judge, typically 6 to 7 months following the
institution of an investigation. Following the hearing, and at least 3 months prior to
the target date (4 months prior for investigations going beyond a 15 month target
date), the judge issues an Initial Determination that is certified to the Commission
along with the evidentiary record.
If preliminary relief is requested with the complaint, the Commission must
determine whether to grant the request no later than the 90th day after the
investigation is instituted, or if a case is deemed “complex”, no later than the 150th
day after the investigation is instituted.
The Commission may review and adopt, modify or reverse the Initial
Determination or opt not to review it at all.
If not reviewed, the Initial
Determination becomes the final determination of the Commission.
If the
Commission determines that § 337 has been violated, it may issue an exclusion
order barring entry of the products at issue from the United States.
The
Commission’s orders become effective within 60 days of issuance and are enforced
by the U.S. Customs Service.
19
B.
CANADA
1.
Existing Litigation Procedures within the Canadian Federal
Court System
Litigation pertaining to trade-marks is typically a very costly and timeconsuming process. The Canadian courts have recently implemented procedures
and programs in an attempt to streamline litigation in general, which in effect, has
changed the procedures related to trade-mark litigation. The goal has been to
make litigation cheaper, quicker, and generally more effective such that it is more
accessible to the public, on a practical level. The following explores some of the
general procedures and recent streamlining initiatives that are currently in place at
the Federal Court level.
2.
Standard Civil Procedures
The civil procedures for the Federal Court of Canada and the Federal Court of
Appeal are governed by the Federal Court Rules. Unless otherwise indicated, all
rules referred to below are Federal Court Rules.
a.
Applications – Which Involve Appeals From Decisions Of
The Canadian Trade-Marks Office
The main procedural steps associated with an application at the Federal
Court level are summarized within Table 1.
Table 1 – Procedural Steps for an Application Made to the Federal Court
Category
Description
Timing
Rule(s)
Bringing an
Application
Before the
Court
An appeal (in the form of
an application) lies to the
Federal Court from any
decision of the Registrar
(ex. appealing a decision
of the TM Opposition
Board)
1) Applicant files Notice
of Application
Within 2 months from
notice of the Registrar's
decision (or within such
time as the court may
allow
after
the
expiration of the 2
months)
--
R.61(2),
R.300(d),
R.56(1)
of
the TradeMarks Act
2)
Applicant
serves
Notice of Application to
other parties
3) Respondent(s) who
intend to oppose an
action serve a Notice of
Appearance
4) Applicant serves and
files supporting affidavits
10 days after issuance R.304(1)
of Notice of Application
Steps in the
Pleadings
Process
20
R.301
10 days after being R.305
served with Notice of
Application
30 days after issuance R.306
of Notice of Application
and
documentary
evidence
5) Respondent serves 30 days after service of
and
files
supporting applicant's affidavits
affidavits
and
documentary exhibits
6) Cross-examinations
Completed
by
all
parties within 20 days
after the filing of the
respondent's affidavits
7)
Serve
and
file 20
days
after
applicant's record
completion of crossexamination
8)
Serve
and
file 20 days after service of
respondent's record
applicant's record
9) Applicant serves and 10 days after service of
files
a
requisition the respondent's record
requesting that a date be
set for the hearing of the
application
b.
R.307
R.307
R.309(1)
R.310(1)
R.314(1)
Actions – Expungement/Infringement Brought Under The
Canadian Trade-Marks Act
Table 2 provides a summary of the initial procedural stages associated with
an action at the Federal Court level.
Table 2 – Initial Procedures for a Federal Court Action
Category
Description
Bringing an
Action Before
the Court
Expungement
or -infringement claims that
are to have national
juridical
effect
are
brought directly to the
Federal Court
1) Service of Statement 60 days after issuance
of Claim
Timing for
Service of
Pleadings
Timing
Rule(s)
--
R.203(1)
2) Service of Statement (a)
30
days
after R.204(a)-(c)
of Defense
service of Statement of
Claim
(if
defendant
served in Canada)
(b)
40
days
(if
defendant served in
U.S.)
(c)
60
days
(if
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
Settlement
Discussions
Within 60 days after the close of pleadings, the
solicitors for the parties must discuss the
possibility of settling any or all of the issues in
the action and of bringing a motion to refer any
unsettled issues to a dispute resolution
conference.
After the close of pleadings, a party who is not in
default and is ready for trial may serve and file a
requisition for a pre-trial conference. At the pretrial 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.
A judge or prothonotary before whom an
action has been set down for trial may hold
a conference either before or during the
trial, to consider any matter that may assist
in the just and timely disposition of the
action. Such a conference will not disqualify the
judge or prothonotary from presiding at the trial.
R.257
2) Pre-Trial
Conferences
3) Trial
Management
Conference
c.
R.258(1),
R.263
R.270
General Extension and General Abridgement
Under certain circumstances, time periods applying to either an action or an
application can be adjusted. These particular circumstances are provided in Table
4.
22
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
d.
Appeals To The Federal Court Of Appeal
A decision of the Federal Court can be appealed to the Federal Court of
Appeal without leave as a matter of right (Courts of Justice Act s.27(1). For an
interlocutory judgment, a Notice of Appeal must be filed within 10 days of the
judgment (CJA s.27(2)(a)). For a final judgment, the applicant has 30 days
following the decision to file a Notice of Appeal (CJA s.27(2)(b)).
e.
Appeals To The Supreme Court Of Canada
Appeals from the Federal Court of Appeal can be heard by the Supreme Court
of Canada, but a party must successfully get a motion for leave to appeal
(R.357(1)). A motion to appeal will be granted only in certain circumstances in
accordance with the Supreme Court of Canada's own set of rules (i.e. s.37.1 of the
Supreme Court Act).
3.
Expeditious Initiatives
ACCESSIBILITY
Description
UNIQUE PROCEDURAL ASPECTS
Rule
1. STATUS REVIEW
The court will call a status
review IF:
Applicable to Applications
and Appeals:
180 days after the issuance R.
of the Notice of Application 380(1)(
(or Appeal) no requisition b)
Description
Rule
Upon status review, a court can:
1)
Dismiss
the
proceeding
(unless plaintiff, applicant, or
appellant can show cause as to
why this should not happen)
2)
Enter
default
judgment
(unless the defendant can show
cause as to why this should not
23
R.382(2)(
a)
R.382(2)(
b)
ACCESSIBILITY
Description
UNIQUE PROCEDURAL ASPECTS
Rule
for a hearing date has been
filed
Applicable to Actions Only:
1) 180 days after issuance
of the Statement of Claim
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
apply
to
a
specially
managed proceeding
Description
Rule
happen)
R.
380(1)(a
)
3) Order that the proceeding R.382(2)(
continue as a specially managed c)
proceeding
R.380(3
)
2. SPECIALLY MANAGED PROCEEDINGS
A chief justice of the R.383,
A Case Management Judge deals
Federal Court (or Federal R.383.1
with all matters that arise prior
Court of Appeal) MAY
to trial, and may:
assign 1 or more judges to
act as a case management
1) Give any directions that are
judge (a prothonotary may
necessary for the just, most
act
in
certain
expeditious and least expensive
circumstances at the FC
determination of the proceeding
level)
on its merits
A party to a proceeding R.384
MAY bring a motion at any
2) Fix the period for completion
time
to
have
the
of subsequent proceeding steps
proceeding managed as a
specially
managed
3) Fix and conduct a dispute
proceeding
resolution conference or pre-trial
Huang v. Canada (Min. of
conference
Citizenship & Immigration)
2003 FCT 196 (Proth.) –
4) Hear and determine all
Special management is
motions prior to the assignment
neither
routine
nor
of a hearing date
automatically granted on
request. There must be a
5) Order a status review at any
substantial
reason
to
time
remove a proceeding from
the timetables set out in
24
R.385(1)(
a)
R.385(1)(
b)
R.385(1)(
c)
R.385(1)(
d)
R.385(2)
R.385(3)
ACCESSIBILITY
Description
the rules.
4093879 Can. Ltd. v. MalMart 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.
UNIQUE PROCEDURAL ASPECTS
Rule
Description
Rule
6) Cease special management of
the case at any time
3. DISPUTE RESOLUTION SERVICES
The court MAY order that a R.386(1 The
dispute
resolution
proceeding (or any issue in )
conference is conducted by a
a proceeding) be referred
case management judge or
to a dispute resolution
prothonotary, who may conduct:
conference
1) A mediation
R.387(a)
2) An early neutral evaluation of R.387(b)
a proceeding (evaluate strengths
and weaknesses of the parties
and
render
a
non-binding
opinion as to the probably
outcome)
3) A mini-trial (presiding over R.387(c)
presentation by counsel and
then rendering a non-binding
opinion as to the probably
outcome
25
4.
Existing Litigation Procedures within the Canadian Provincial
Court System
The Canadian provincial courts have recently implemented civil procedures
and programs in an attempt to streamline general litigation. In effect, these
general initiatives have changed the litigation procedures related to trade-mark
disputes. These provincial procedures are relevant to trade-marks in that a party
may choose to commence an action within a provincial court. Although most
actions for infringement of a registered trade-mark are brought in the Federal Court
of Canada, infringement actions can also be brought within provincial Superior
Courts (Trade-marks Act, s.53.2, Commentary 5.2.2). A plaintiff may elect to bring
an infringement action to provincial Superior Court (as opposed to Federal Court) if
they are seeking additional relief that falls under provincial jurisdiction (branch of
contract, tort claims, etc.). In addition, a claim for "passing off" under the common
law can be brought in a provincial court. (Note that the Federal Trade-marks Act
contains a statutory passing of provision under which the Canadian Federal Court
can entertain a passing off action.) It is important to note that a provincial court
judgment is only enforceable within the province in which the action is brought; by
contrast, a judgment rendered by the Federal Court has national juridical effect.
The aim of a number of provincial initiatives has been to make litigation cheaper,
quicker, and generally more effective and accessible to the public. The following
explores some of the relevant standard Ontario litigation rules and also the
streamlining initiatives that have been implemented in Ontario, British Columbia,
Alberta, and Nova Scotia.
a.
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.
(1)
Ontario's Relevant Standard Civil Procedures
Table 1 provides a summary of the rules governing the initial procedural
stages for an action brought before the Ontario Superior Court of Justice.
Table 1 – Initial Procedures for a Provincial Action
Category
Description
Bringing an
Action
Before the
Court
Infringement
actions -having only provincial
juridical
effect
or
common law "passingoff" actions.
1) Service of Statement 6 months after issuance
of Claim
Timing for
Service of
Timing
26
Rule(s)
Trade-Marks
Act
s.53.2,
Commentary
5.2.2
R.14.08
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 /
Abridgment
2) Status Rule
(Action not on
Trial List
within 2
Years)
The court may, by order, extend or abridge any
time period, on such terms as are just.
Where an action has not been placed on a
trial list or terminated by any means within
2 years after the filing of the Statement of
Defense, the registrar shall serve notice on
the parties that the action will be dismissed
for delay unless it is set down for trial or
terminated within 90 days after service of
the notice. Any party may request a status
hearing (before a judge) wherein the Plaintiff will
usually try and show cause as to why the action
should not be dismissed for delay.
1) If the Plaintiff makes an offer to settle and it is
not accepted by the Defendant, and the Plaintiff
receives judgment that is as or more favorable
than their offer, then the Plaintiff is entitled to:
i) Partial indemnity costs from the date of
commencement to the date of the offer (per
R.3.02(1)
3) Offers to
Settle (Cost
Consequences
that Encourage
Settlement)
27
R.48.14(1),
R.48.14(5),
R.48.14(8)
R.49.10(1)
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
(2)
Ontario's Expeditious Initiatives
Table 3 – Expeditious Initiatives Implemented within Ontario
ACCESSIBILITY
Description
UNIQUE PROCEDURAL ASPECTS
Rule
1. PRE-TRIAL CONFERENCE
A judge MAY, at the request R.50.01
of a party or upon his/her
own initiative, direct the
solicitors (with or without the
parties) to appear before a
judge or officer for a pre-trial
conference.
Description
Rule
Issues to be discussed at the R.50.01
pre-trial conference include:
settlement
possibilities,
simplification of the issues, the
possibility
of
obtaining
admissions, and the estimated
duration of the trial.
2. FULL CIVIL CASE MANAGEMENT (R.77) – STANDARD OR FAST TRACK
Designed to ultimately be a
1) At commencement of R.77.06(
province-wide
rule.
proceeding,
plaintiff 5),
Currently in effect in only
chooses the track (standard R.77.07
some
districts.
(Excludes
or fast track). The defendant
some
actions,
such
as
can change the track, but
simplified actions of low
there is a time limit for doing
monetary claims)
so.
R.77.01(1 2) Where no defense is R.77.08
)
filed, and the proceeding
has not been disposed of by
a final order within 180
days of the originating
process, the Registrar shall
dismiss the proceeding as
28
ACCESSIBILITY
Description
UNIQUE PROCEDURAL ASPECTS
Rule
Description
R.77.01(2
)
abandoned.
3) Once the defense is filed,
the case is assigned to a
case management team for
management.
4) Settlement conference is
held, wherein the possibility of
settlement is evaluated by the
parties. Fast track = 150 days
after 1st defense has been
filed, standard track = 240
days after 2nd defense is filed.
All
discovery
must
be
completed by the settlement
conference date. A trial or
hearing date is assigned at the
settlement conference.
5)
Trial
management
conference may be held at
the request of a party or on
the initiative of the trial judge,
case management judge, or
master, at any time following
the setting of a trial date.
Discussions may include, for
example: expeditious means
for
the
presentation
of
evidence and directions that
will facilitate the orderly and
expeditious conduct of trial.
6) A case management judge
(or master) may convene a
case conference at any time
on his/her own initiative or
upon
a
party's
request.
Discussions may include, for
example: exploring methods to
resolve
contested
issues,
creating a timeline for the
proceeding, and the potential
usefulness of referring an issue
to ADR.
7) The plaintiff has a duty to
file a timetable (or request
a
case
conference
to
29
Rule
R.77.09(
3)
R.77.14,
R.77.14(
1),
R.77.14(
2),
R.77.14(
7)
R.77.15(
1)
R.77.15(
3)
R.77.13(
1), (3), &
(5)
R.
77.10(2)
ACCESSIBILITY
Description
UNIQUE PROCEDURAL ASPECTS
Rule
Description
Rule
establish
a
timetable)
within 180 days after the
proceeding is commenced.
Such a timetable will set
deadlines by which specific
steps in the proceeding must
occur.
8) Provides for an informal R.77.12
motion procedure (before a
case management judge or
master).
3. MANDATORY MEDIATION (R. 24.1)
Applies
only
to
certain
1) A mediation session shall
actions
take place within 90 days after
the first defense has been filed,
unless
the
court
orders
otherwise.
However,
for
standard
track
case
management,
the
mediation
session may be postponed up to
60 days with the consent of the
parties.
2) The parties may select the
mediator
from
a
list
of
mediators compiled by the local
mediation committee, or they
may select a mediator that is
not on the list. If a mediator is
not selected in not done in time,
a mediator will be assigned.
3) The parties and their lawyers
(if represented) are required to
attend the mediation session
unless
the
court
orders
otherwise.
4) If an agreement settles the
action, the defendant shall file a
notice to that effect.
5) With consent of the parties,
the court may make an order to
have additional mediation.
30
R.24.1.
09
(1)&(3)
R.24.1.
08 (1)
R.24.1.
11 (1)
R.24.1.
15 (3)
R.24.1.
16 (1)
ACCESSIBILITY
Description
UNIQUE PROCEDURAL ASPECTS
Rule
Description
Rule
4. TORONTO CIVIL CASE MANAGEMENT PILOT PROJECT (R.78)
General Applicability:
Applies to most actions R.78.01(1
commenced in Toronto after )
December 31, 2004.
Practice
Applicability of Full Case
Management (R.77)
1) Civil cases in Toronto are
not automatically assigned to
full
(i.e.
R.77)
case
management.
2) If all of the parties
consent in writing, a judge or
case management master
may, on a party's motion,
assign one or more actions to
case
management
in
accordance with R.77
3) On a party's motion, or on
his/her own initiative, a
judge or case management
master may assign the action
to R.77 case management if
a party has taken steps that
amount
to
chronic
and
substantial obstruction of the
action.
4) At a case conference, a
master may order that the
action proceed under full
(R.77) case management.
Applicability of Partial Case
Management
1) If certain criteria are met,
the parties to an action may
make a joint request to the
administrative master asking
that the case be case
managed (typically in some
Direction
(Dec.
31/04)
R.78.12(1
)
R.78.12(3
)
R.78.09(e
)
R.78.12(1
)
Practice
Direction
(Dec.
31/04),
s.16
Practice
General Unique Procedural
Aspects:
1) The strict timelines for full
mandatory mediation (R.24.1)
do not apply. For a simplified
procedure (R.76) mediation
must be conducted within 150
days
after
the
close
of
pleadings.
For all other
actions, the parties are free to
determine the timing of the
mediation.
The
only
constraints are that the parties
must conduct a mediation
session at the earliest stage at
which it is likely to be effective,
and within 90 days after the
action is set down for trial.
2) Provides for flexible, less
formal case management in
which the parties have a
greater
responsibility
for
moving the action along (as
compared
to
fully
case
managed R.77 proceedings).
Court intervention is only
provided when needed.
R.24.1.09
.1(2)(b),
R.24.1.09
.1(2)(c)
R.78.02
R.78.09
Practice
Direction
(Dec. 31/
04), s.23
3) When a case conference is R.78.11(
held, the powers of a master 1),
assigned to a proceeding R.78.11(
include:
2)
(a)
ordering
that
the
proceeding
be
fully
case
R.78.10(
managed (under R.77)
1)
(b) establishing or reviewing a
timetable and giving directions
so that all parties are ready for Practice
Direction
trial
(c) requiring written direction (Dec.
31/04)
compliance reports, and
(d) convening a further case
31
ACCESSIBILITY
Description
less
comprehensive
form
than under R.77). One of
the following criteria must be
met: there are complex
factual or legal issues, it is a
matter of public interest,
there are numerous parties
or related proceedings, or
there
is
chronic
and
substantial obstruction to the
timely disposition of the
action.
2) If it appears to the
administrative master that a
form of case management is
warranted, a master will be
assigned to the case.
3) Where case management
is sought otherwise than at
the joint request of all
parties, it shall be by way of
motion.
b.
UNIQUE PROCEDURAL ASPECTS
Rule
Direction
(Dec.
31/04),
s.17
Practice
Direction
(Dec.
31/04),
s.17
Description
Rule
conference.
4) Parties must deal with the
non-compliance
of
another
party by taking the initiative to
bring the matter back before
the court. In such a case, the
court will usually transfer the
action to full (R.77) case
management.
5) If all parties agree in
writing,
any
direction
or
timetable set by the master at
a case conference (other than
a deadline for setting down to
trial) may be varied.
6) After an action is set down
for trial, a pre-trial conference
(R.50) must take place.
7) Once trial dates are set,
there will be no adjournments
of the trial except in the case
of an emergency.
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.
32
Table 4 – Expeditious Initiatives Implemented within British Columbia
ACCESSIBILITY
Description
UNIQUE PROCEDURAL ASPECTS
Rule
1. CONFERENCES
On a request being received, R.35(2)
or on his/her own initiative,
at any stage of an action, a
judge or master may direct
that a pre-trial conference,
mini-trial,
or
settlement
conference be held.
Description
Rule
1)
Pre-trial
conference
= R.35(3)
Discussing simplification of the
issues, potential amendments to
pleadings, possible admissions,
quantum of damages, and fixing a
date for trial.
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.
2. FAST-TRACK LITIGATION (R.66)
Applies to actions in which R.66(1)
the trial is expected to take
less than 2 days.
1) Examinations for discovery
cannot exceed 2 hours (without
consent).
2) No party is obliged to answer
interrogatories
(unless
court
orders otherwise).
3) Cannot have a trial by jury.
R.66(13
)
R.66(18
)
R.66(19
)
4) Trial date must be set by
Registrar no more than 4 months
after the application for trial date.
5) The parties must file a trial R.66(22
agenda.
)
3. CASE MANAGEMENT (Practice Direction – November 20, 1998)
When an action is case
managed, the process begins
with
an
initial
case
management
conference.
The appropriate steps are
33
Practice
Directio
n, Part
I, s.6
ACCESSIBILITY
UNIQUE PROCEDURAL ASPECTS
Description
Rule
Description
Rule
then
taken
from
there,
depending on the specifics of
the case.
Case Management of Long
Trial Actions:
All civil actions with an
estimated trial length of 20
days or more will be assigned
to a trial judge for case
management.
Case
Management
of
Short Trial Actions:
Management of cases with an
estimated trial length of 1 to
19 days will be restricted to
those cases that are in need
of court management (as
selected by the Chief Justice
of the Supreme Court).
Applicability of
Conferences:
Practice
Directio
n, Part
I
Practice
Directio
n, Part
IV
Pre-Trial
Practice
Directio
n, Part
III, s.1
Applies to all:
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
4. MEDIATION [Notice to Mediate (General) Regulation – B.C. Reg.4/2001]
34
ACCESSIBILITY
UNIQUE PROCEDURAL ASPECTS
Description
Rule
Any party to an action may
initiate
mediation
by
delivering a Notice to Mediate
Form to:
i) All other parties to the
action, and
ii) The Dispute Resolution
Office in the Ministry of the
Attorney General.
Notice
to
Mediate
c.
Description
Rule
(General
) Reg.,
s.3
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.
Table 5 – Expeditious Initiatives Implemented within Alberta
ACCESSIBILITY
Description
UNIQUE PROCEDURAL ASPECTS
Rule
1. PRE-TRIAL CONFERENCES
Civil
1) A conference must be held Practice
Note 3
for:
i) Any trial set for 3 days or (March
25,
longer,
ii) All matters to be heard by 2002)
jury, and
iii) Cases where the court
orders a conference.
Description
Rule
Issues to be discussed at a pre- R.219(1
trial conference include: possible )
simplification
of
the
issues,
potential
amendments
to
pleadings,
possibility
of
admissions, and any other matters
that may aid in the disposition of
the proceeding.
2) In any action (other than R.219(
a very long trial action), the 1)
court may direct a pre-trial
conference to occur, either
upon the application of any
party or upon the Court's
own motion.
35
ACCESSIBILITY
Description
UNIQUE PROCEDURAL ASPECTS
Rule
Description
2. CASE MANAGEMENT (Civil Practice Note 1 – August 18, 2005)
1) The parties shall apply for s.2
1) Case management judge can
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
ii) That appears to be very Alberta make any order which he/she
long trial action (i.e. likely to Rules of believes will likely promote the
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.
3) For very long trial actions (or
any other actions if the case
management judge thinks it is
appropriate), the management
judge shall convene:
i) A scheduling conference =
Addressing efficient resolution of
the action and establishing a case
timetable, and
ii) A duration conference =
Determining the number of trial
days required.
Rule
s.13
s.12,
s.14,
s.21
s.40,
s.41
s.42
s.46
2) For any action, any party s.3
may apply for, or a judge on
his/her own initiative may
recommend to the Chief
Justice, case management
where it would promote the
efficient resolution of an
action.
3. CIVIL MEDIATION PROGRAM (Civil Practice Note 11 – Sept./2004)
3.a. Mediation at the
Request of One Party:
Applies
only
to
certain
actions:
1) If one party would like to s.2
mediate, that party may serve a s.9
Request to Mediate Form upon the
other parties.
36
ACCESSIBILITY
Description
UNIQUE PROCEDURAL ASPECTS
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
mediation, if they so desire.
This requires the consent of
all parties.
d.
1) If all parties agree to go to
mediation, then the parties may
select a roster mediator and
schedule mediation directly with
the mediator.
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
Description
UNIQUE PROCEDURAL ASPECTS
Rule
Description
Rule
1. GENERAL LIST OF PROCEEDINGS FOR TRIAL (R.28.11)
1)
Each
prothonotary
maintains a General List that
lists all proceedings in which
the pleadings are closed and
yet no date for trial has been
fixed.
2) Intervention occurs when
a proceeding has been on the
General List for 3 years.
R.28.
11(1)
1) After a proceeding has been on R.28.1
the General List for 3 years, the 1(2)
prothonotary shall give the parties
notice that they have 30 days to file
a Notice of Intention to Proceed.
R.28.
11(2)
2) If a Notice of Intention to
Proceed is not filed in time, the
proceeding will be dismissed.
3) If a Notice of Intention to
Proceed is filed on time, a notice of
trial must be filed within 6 months
thereafter.
R.28.1
1(3)
R.28.1
1(4)
2. CONFERENCES (PRE-TRAIL OR PRE-HEARING)
In any proceeding, the court R.26. At the conference, issues to be R.26.0
may
itself,
or
on
the 01(1) discussed include: simplification of 1(1)(a
application of any party,
the
issues,
potential
pleading )-(e)
direct the parties to appear
amendments,
possibility
of
before it for a conference.
admissions, limitation of the number
of witnesses, and any other matter
that may aid in the disposition of
the proceeding.
38
3. HALIFAX CASE MANAGEMENT RULES (R.68)
3.a. Ordinary Process
Applies
to
all
actions
commenced within Halifax,
N.S.
1) Parties shall file and serve lists of R.68.0
documents in the times provided 2
under the
normal rules
(i.e.
R.20.01(1)).
2) Discovery of witnesses (other
than experts) must be completed R.68.0
within 6 months after the close of 2
pleadings.
3)
Discovery
of
any
expert
witnesses must be completed within R.68.0
14 months after the close of 2
pleadings.
4) May only make motions to a
judge on certain "appearance days" R.68.0
(as designated by the court). The 4(1),
Court may also order a party to Practic
appear on such days to respond to e
matters that the court advises. Memo
Appearance
days
typically 27,
s.1
commence Fridays at noon.
5) On appearance days, the court
may, for example: vary any time
limit, order sanctions for noncompliance, bring a proceeding into
the fast process, or order that the
proceeding be managed by a judge
(if the proceeding is sufficiently Practic
complex).
e
6) A court may, on its own motion, Memo
bring parties forward to discuss the 27,
status of a case when 24 months s.3
have passed since the close of Practic
e
pleadings.
7) Settlement conferences may be Memo
offered if requested by a party and 27,
consented to by all other parties to s.1
the action.
---------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------------3.b. Fast Process
1) If the plaintiff is satisfied R.68. Same rules apply as for the
that a Notice of Trial can be 03(1) Ordinary Process, except:
R.68.0
filed
within
8
months,
1) Must file and serve list of
39
plaintiff may file and serve
originating notice with the
words "FAST TRACK" on it.
2) If the court is then R.68.
satisfied that a Notice of Trial 03(2)
can be filed within 8 months,
the action will follow the Fast
Process.
C.
documents within 20 days after the
close of pleadings.
2) Discovery of witnesses must be
completed within 4 months after the
close of pleadings.
3) A court may, on its own motion,
bring parties forward to discuss the
status of a case when:
i) 10 months have passed since the
close of pleadings, or
ii) 24 months have passed since the
filing of the originating notice and
no defense has been filed.
3(1)
R.68.0
3(1)
Practic
e
Memo
27,
s.3
THE EUROPEAN UNION
Note that the European Court of Justice is an EU supra-national court to
which questions of law only are referred, in the context of trade mark infringement
proceedings. It has no jurisdiction to decide cases and will refer its decision on the
law to the referring court to apply it to the facts. Therefore, its relevance to case
management provision applicable in trade mark infringement proceedings is very
limited.
Consideration was given to making the election of an ADR proceeding
mandatory in the Model Procedures. It was noted, however, that the European
Union issued a Directive dated 21 May 2008 (Directive 2008/52/EC, OJ L 136/3,
24.05.2008) on certain aspects of mediation in civil and commercial matters that
specifically calls mediation to be a voluntary process. The EU-Directive does not
provide for substantive law but only forces the Member States to adopt national
legislations inline with the Directive within a term ending on 21 May 2011. The
Member States have to adopt the rules of the Directive as a minimum standard but
may also provide for a mandatory process of mediation or ADR. The minimum
standards to be complied with may be summarized as follows:

The Directive is limited to cross-border disputes in civil and commercial
matters, being disputes between parties of different Member States involving
rights and obligations which are at the parties’ disposal.

“Mediation” means a structured process conducted by a mediator, being an
impartial third person, who may be a judge but not the one being responsible
for any judicial proceeding concerning the dispute.

The mediation process shall be promoted and encouraged by the national
laws. Furthermore, the Member States shall encourage the training of
mediators in order to ensure an effective quality of mediation processes.

A court may at its discretion invite the parties to use mediation or at least to
attend an information session on the use of mediation, if available. Any
40
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.

The national legislation should ensure to make a written agreement between
the parties enforceable.

The national law has to warrant confidentiality of mediation. Unless the
parties agree otherwise, neither mediators nor those involved in the
administration of the mediation process shall be compelled to give evidence
regarding information arising out of or in connection with a mediation
process except where matters of public policy are concerned and where
disclosure of the content of the agreement is necessary in order to
implement or enforce the agreement.

Finally, the Member States should ensure that parties who choose mediation
are not prevented from initiating judicial proceedings or arbitration by the
expiry of limitation or prescription periods.
Based on the above mile stones of the national laws, the Commission shall
collect the experiences on the results of the laws within a 5-years-period and shall
submit to the European Parliament, the Council and the European Economic and
Social Committee a report on the application of the directive by 21 May 2016.
Though engaging in ADR is voluntary, the reporting procedures incorporated
into the report may help encourage use of ADR by the parties. The EU Directive
further calls for mediation procedures to take place in a manner which respects
confidentiality which feature is also adopted in the report.
D.
ENGLAND AND WALES
The procedure of the Courts of England and Wales is governed by the Civil
Procedure Rules (the CPR). The following highlights the key case management
provisions of the CPR.
1.
CPR 1 – The Overriding Objective
The Court must give effect to the overriding objective of dealing with all
cases justly (and the parties must assist in that). This includes; (a) ensuring the
parties are on an equal footing; (b) saving costs; (c) dealing with a case
proportionately to the amount of money involved, the importance of the case, the
complexity of the issues and the financial position of each party (d) ensuring that
the case is dealt with expeditiously and fairly; and (e) allotting an appropriate share
of the Court's resources.
The Court must further the overriding objective by actively managing cases.
Active case management includes: (a) encouraging the parties to co-operate with
each other in the conduct of proceedings; (b) identifying issues at an early stage;
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.
2.
CPR 3 – The Court's Case Management Powers
The Court's general powers of management include: (a) extending or
shortening time for compliance with any rule or court order; (b) adjourning or
bringing forward a hearing; (c) requiring a party or a party's legal representative to
attend court; (d) holding a hearing and receiving evidence by telephone; (e)
directing that any part of any proceedings can be dealt with as separate
proceedings; (f) staying the whole or part of the proceedings either generally or to
a specific date or event; (g) consolidating the proceedings; (h) trying two or more
claims on the same occasion; (i) directing a separate trial of any issue; (j) deciding
the order in which issues are to be tried; (k) excluding an issue from consideration;
(l) dismissing or giving judgment on a claim after a decision on a preliminary issue;
(m) ordering any party to file and serve an estimate of costs; and (n) taking any
other step or making any other order for the purpose of managing the case and
furthering the overriding objective.
Where a rule or enactment does not provide otherwise, the Court is able to
exercise its powers of its own initiative. This power enables the Court to react to
the particular issues of a case and move the case forward quickly and efficiently in
accordance with CPR 1.
Where a party has failed to comply with a rule, practice direction or Court
order the Court may impose sanctions.
3.
CPR 26 – Allocation to Case Management Tracks
Following completion of an allocation questionnaire a claim will be allocated
to the one of three 'tracks'; small track, fast track and multi-track. Allocation will
be based upon the value of the claim, the nature of the remedy sought, the likely
complexity of facts, law or evidence, the number of parties, the value of any
counterclaim, the amount of oral evidence that may be needed, the importance of
the claim to non-parties, the views expressed by the parties and the circumstances
of the parties.
Most trade mark infringement proceedings will be allocated to the 'multitrack' appropriate for larger cases.
42
4.
CPR 29 – Multi-track Case Management
The general rule is that claims over £15,000 will be allocated to the multitrack. Following allocation to the multi-track, the Court may give full directions for
the management of the case or order a Case Management Conference.
a.
CPR 29.3 – Case Management Conference
This takes place at an early stage in the proceedings shortly after the
allocation. The Court will review the steps that the parties have taken in the
preparation of the case, their compliance with Court orders, decide and give
directions about future steps to be taken in order to comply with the overriding
objective, and ensure that any agreements that can be made between the parties
regarding the matters at issue and the conduct of the claim are recorded. Failure
to comply with the case management procedures will not necessarily postpone the
trial but may give rise to sanctions such as making a payment of monies into Court
or having the whole or part of the case struck out.
b.
CPR 29.6 – Pre-trial Check List
This takes place at an early stage in the proceedings, shortly after the
allocation. The pre-trial check list will be sent out by the Court to be completed by
the parties no later than 8 weeks prior to trial, where the Court considers it
appropriate. The purpose of the check list is to ensure that all case management
directions have been complied with. Failure by either party to complete the check
list will result in a listing hearing, the cost of which is borne by the defaulting party.
Where neither party completes the pre-trial checklist the Court can order that the
claim, defense and any counterclaim be struck out.
c.
CPR 29.7 – Pre-trial Review
The Court may decide to hold a pre-trial review on receipt of the completed
pre-trial checklists. A review will often (but not necessarily) take place where the
trial is likely to last for more than 10 days. It will if practicable be conducted by the
trial judge. It provides further opportunity for the parties to settle prior to trial and
without incurring full trial costs or to prepare the trial agenda.
5.
CPR 31 – Disclosure and Inspection of Documents.
The general rule for disclosure is that a party is required to disclose
documents upon which it relies and those which adversely affect its case or support
the other party's case ('Standard Disclosure'). However, CPR 31.5 states that this
rule may be dispensed with or limited at the discretion of the Court.
43
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.
France has two distinct hierarchies of Courts: judicial Courts and
administrative Courts. Each Court system has its own Supreme Court (Cour de
cassation; Conseil d'Etat)
The judicial courts include civil, criminal, commercial and labor courts. Under
article L. 716-1 and articles L. 716-9 to L. 716-14 of the French Intellectual
Property Code ("CPI"), all trade mark litigations must be brought before criminal or
civil courts, with the exception of:

actions against regulations and administrative decisions (other than
decisions granting, refusing or maintaining industrial property titles,
which shall be submitted to the civil courts of appeal) of the
administration in charge of industrial property, which are attributed to
the administrative courts;

arbitration pursuant to the terms of articles 2059 and 2060 of the
French Civil Code
1.
General Civil Procedural Rules
In a nutshell, the defendant receives a writ which is also transmitted to the
Clerk's office. Once a copy of the writ has been put on the court docket, the case is
referred to the court. The parties exchange, under the supervision of the judge,
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
The writ is drafted by an attorney (avocat) and served by a bailiff to the
defendant in order to inform it that an action is brought against it. To be valid, the
writ must contain the following (art. 56 and 648 of the French Civil Procedure Code
– "NCPC"-): identity of the parties, court in charge of the case, presentation of
facts, purpose of the claim, list of exhibits.
b.
Submission of Briefs and Evidence
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.
Nevertheless, under the pressure of competition with other European courts
to become an attractive forum for complex intellectual property litigation,
specialized chambers of the Paris Courts are implementing a judicial procedural
schedule in order to shorten the time period between the writ and the judgment.
More generally, vigorous measures have been implemented in order to streamline
the management of procedures, including a more frequent and active use of judicial
procedural calendars agreed to by the parties (Paris commercial court) and
enforcement of shorter deadlines by granting less extensions, the judicial
disposition of procedural issues at the outset of the case to reduce delays and
multiple hearings on procedural issues in the course of preparing the case for trial.
g.
Cost Awards
Legal expenses are borne by the losing party, unless the judge, by a
reasoned decision, imposes the whole or part of it to another party (art. 699
NCPC).
Furthermore, in all proceedings, the judge orders the party bearing legal
costs or the losing party to pay to the other party the sums disbursed but not
included in the legal costs. For this purpose, the judge takes into account the rules
of equity and the financial conditions of the party ordered to pay. Therefore, he
may decide that there is no need for such order (art. 700 NCPC).
To summarize, French judges tend(ed) not to actively manage the procedure
schedule of case, but this is changing. Judges on the whole still set successive
hearings to enable the parties to submit briefs and evidence, rather than use
procedural calendars, but extensions are fewer and the use of calendars as a way
to manage cases and as a measure of performance of the court is spreading. Once
the parties have transmitted to each other their brief and documents submitted into
evidence in order to respond to the arguments raised by the other, the judge closes
the submission of briefs and evidence.
2.
General Criminal Procedural Rules
French criminal procedure is made up of two phases:
(a) an
inquisitorial preliminary phase wherein
investigative power to seek evidence; and
the
judge
has
wide
(b) an accusatory judgment phase wherein the judge acts as an arbitror
whose mission solely consists in supervising and ensuring the loyalty
of the debate.
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.
3.
Specific Procedural Rules Dealing With Trademark Litigation
a.
Appeal Against the Decisions Rendered by the Director of
the French National Institute of Industrial Property
(INPI).
Pursuant to article L. 411-4 of the CPI, decisions of the Director of the INPI
granting, refusing or maintaining industrial property titles shall be submitted to the
civil Courts of Appeal. The ten Courts of Appeal having exclusive jurisdiction on
such matters are listed in article R. 411-19 CPI. The Court can only cancel or refuse
to cancel the Director's decision. Appeals shall be exercised within one month of the
decision (the plaintiff shall file a written statement –in duplicate - with the court
Clerk's office).
b.
Courts Jurisdiction With Respect To Trademark Litigation
National trademarks:The First Level Courts (tribunaux de grande instance)
have subject matter jurisdiction for trademark civil litigation. According to this rule,
trademark infringement actions involving two merchants are excluded from the
jurisdiction of the Commercial Court (tribunal de commerce).
European trademarks: Civil proceedings relating to European trademarks
shall be heard by the Paris First Level Court (tribunal de grande instance de Paris).
c.
Specific Summary Proceeding (Art. L716-6 CPI)
The President of the court before which proceedings have been instituted,
sitting in chambers, may provisionally prohibit a continuation of the alleged
infringing acts, subject to a daily fine, or may subject such continuation to the
provision of securities for the purpose of ensuring compensation to the owner of the
trademark or to the beneficiary of an exclusive right of exploitation.
Action for prohibition or provision of securities shall be admissible only if the
case appears well-founded and proceedings were instituted within a short time
following the day on which the owner of the trademark or the beneficiary of an
exclusive right of exploitation obtained knowledge of the facts on which they are
grounded.
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.
d.
Trademark Infringement Seizure Operations
An infringement seizure operation is a specific procedure aimed at gathering
evidence of infringement. The seizure operation is carried out by a bailiff on order
of the judge (subject matter jurisdiction is granted to the first level courts – tribunal
de grande instance). There are two kinds of seizure operations: the descriptive
seizure which simply consists in the description of the infringing products (with or
without taking samples), and the effective seizure which enables to seize the
integrality of the alleged infringing products. The judge can authorize the bailiff to
be assisted by an expert. At the end of the operation, the bailiff draws up a seizure
report which must bear the mentions provided in article 648 of the NCPC. The
seizure operation is deemed null and void and the seizure report is excluded from
the debate if the claimant has not delivered a writ or filed a complaint within 15
days of the seizure operation.
F.
GERMANY
The civil court procedure in Germany is governed by the Civil Procedural Act.
It should be differentiated between ordinary court proceedings and urgent
proceedings (preliminary injunctions).
1.
Ordinary Procedure Of First Instance
a.
Basic Principles
(1)
Principle of Party Control
As the basic rule of civil proceeding it is the parties who control the life
history of the lawsuit and its subject matter. Whether at all and what kind of legal
proceedings are being established is, under German law of civil procedure, at the
disposition of the individual party, particularly the plaintiff, who determines with his
or her complaint the matter in controversy.
(2)
Principle of an Adversary System
As far as the responsibility for fact-finding is concerned, German civil
procedure adheres to an adversarial system, which is reflected in the principle of
party control over statements, allegations and proof. The opposite principle of
judicial investigation, pursuant to which the judge takes the initiative ex officio,
applies only exceptionally in special cases of family law disputes and others. Thus,
the civil procedure accepts the general constitutional principle of the autonomy and
responsibility of the individual.
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.
(4)
Principal of Orality
Another principle of civil proceedings in Germany is the principle of orality,
which is more a theoretical principle, since it is widely diluted by exemptions and
the practice of the courts. In fact, all statements and pleadings are prepared by
written arguments and observations. However, a decision of the court may only be
issued after an oral hearing has taken place, in which the written statements will
either be repeated or in which the parties simply refer to its written statements.
(5)
Principle of Continuous Oral Hearing
Being part of the principle of oral proceedings, the maxim of a continuous
oral hearing reflects the desire to bring the proceedings to an end in a single oral
hearing. In more complex cases however, it will hardly be possible to terminate a
proceeding with one hearing only. In such cases, the preliminary hearing is then
followed by the main hearing. The law considers all hearings as forming a union,
thereby representing the continuous hearing.
(6)
Principle of Immediacy
The principle of immediacy means that the oral hearing has to take place
before the same court that renders the judgment. This principle applies in
particular to the taking of evidence as only the judges being personally present to
the taking of evidence may render a judgment.
(7)
Principle of Administration of Justice in Open Court
This principle means that civil procedures are generally opened to the public
so that a court may only order the exclusion of the public in exceptional cases,
especially when safety of the State may be endangered or public morals corrupted.
Furthermore, the public may be excluded, if important business or industrial secrets
may be disclosed and the owners prejudiced.
(8)
Principle of a Speedy Trial
A speedy trial is one of the major goals of civil proceedings, although the
meaning of a speedy trial is doubtful. It basically means that the court has the
duty to promote the proceedings and to force the parties to timely complete their
written statements in order to appropriately prepare the oral hearing and the final
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.
b.
Introduction of the Claim
Civil proceedings can only be instituted by a plaintiff’s complaint and never
ex officio by a court. In the complaint, the plaintiff must allege that his or her
rights have been encroached upon. The plaintiff has to specify precisely what kind
of relief is being sought based on particular facts. Consequently, a complaint
without a distinctive claim or petition lacks an essential element and will be rejected
by the court as incomplete and therefore inadmissible. Usually, a plaintiff brings an
action for performance. Only if this will not be possible, an action for a declaratory
judgment or an action requesting a change of a legal right or status are admissible.
Except for the municipal (local) courts, the plaintiff must be represented by
attorneys admitted to practice before that court.
Furthermore, the court fees have to be paid with the filing of the complaint in
advance. The claim has to contain the names of the parties, the claim together
with the amount in controversy and the facts and evidence supporting the claim.
c.
Progress of Proceedings
If the action meets all formal requirements, the claims will be served ex
officio by the court to the defendant with the request to appoint an attorney at law
(except for the proceedings at the municipal courts) for preparing and filing an
appropriate defense. The court may adopt two different forms of procedure:
Either a written preliminary procedure or a procedure that involves an early
oral hearing. Usually, the court makes an order accordingly and sends it to the
defendant together with the writ of summons. The court should in any case chose
the procedure that brings about the quickest conclusion of the matter on the basis
of the statement of claim, thereby serving the maxim of economic proceedings.
d.
Defense
Depending on the specific procedure the court has chosen for the individual
case, the defendant has to indicate in the alternative of a written preliminary
procedure within two weeks after service of the writ of summons whether the
action will be contested. If it is to be contested, a written statement of defense
must be forwarded to the court within another two weeks. This term is extendable.
If the court chooses to invite the parties to an early oral hearing, the defense
has to be filed well-ahead before the hearing, unless the court provides for a
specific time limit.
Within the defense the defendant may raise a number of objections against
the plaintiff’s claims. These defenses may be qualified either by there merits, i.e.
substantive exceptions, or as procedural exceptions. The defendant will certainly
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
(1)
Burden Of Proof And Evaluation
As a general rule, the party who makes the claim has to produce all the facts
that support the claim and has to offer proof and evidence for these facts. The
evidence, however, will only be taken by the court if the fact is contested by the
respective other party. Therefore, all facts are regarded as true that are either
admitted by the other party or, if contested, probable pursuant to the evaluation of
the court at the end of the hearing of evidence. The evaluation of evidence is
determined by the balance of probability: The court is in general free to evaluate all
the presented evidence (principle of free evaluation of the evidence).
(2)
Admissibility of Evidence
Five different classical means of presenting evidence are admitted, each
regulated by specific provisions of the Civil Procedural Act:
-
inspection by the court;
-
witnesses;
-
expert witnesses;
-
documents;
-
interrogation of a party.
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.
(3)
Administration Of Evidence
Usually, the court decides on whether to take evidence or not after a
(preliminary) oral hearing, where the court should discuss with the parties to make
sure that the facts need to be proved, which is only necessary if the facts in dispute
are really decisive for the claim or defense. Thus, the court issues an order to take
evidence. This order has to contain the facts to be proved, the evidence and party
bearing the burden of proof.
The taking of evidence is done directly in front of the whole court, so that
only exceptionally a member of a panel can be authorized to take the evidence as a
commissioned judge.
A witness, being properly summoned, is obliged to appear at the hearing, to
make a deposition and even to make an affidavit. The taking of evidence is done
ex officio so that it is only the judge who poses the questions to the witnesses and
only after that the parties are allowed to ask additional questions. However,
German law does not provide for the option of a cross-examination.
In the case of documentary evidence the parties of the proceeding are
obliged to produce the documents in actual possession that are necessary as
evidence for the party bearing the burden of proof.
The deposition of the parties themselves is rather unusual, since it is rather
risky to apply for the deposition of the other party being the procedural opponent,
who has an essential interest in the outcome of the proceedings and therefore is
not really inclined to tell the truth.
Under special circumstances, the court is also entitled to take evidence ex
officio, i.e. without any offer of one of the parties. This, however, is limited to
depositions of the parties, expert witnesses, documentary evidence and inspection
by the court. The deposition of a witness is only admissible upon a respective offer
of one of the parties.
g.
Oral Hearing
At the main oral hearing, which can directly be continued after the taking of
evidence, the court summarizes the factual and legal issues and the arguments of
the parties by referring to their respective written submissions. Subsequently, it
has to discuss all details of the case, which are decisive for the final judgment, even
if the parties did not raise some issues in their written submission. If evidence has
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
The form of a judgment is in detail described by the Civil Procedural Act:
2.
(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.
(6)
Finally, the participating judges have to sign the document.
Only with the signature of all judges of the panel the preliminary
status of the written judgment as a draft is ended giving it full
power and authority.
Urgent Proceedings (Preliminary Injunctions)
Besides the ordinary proceeding, German civil procedural law provides for
interlocutory injunctions and provisional proceedings in special cases:
53
(1)
Trademark infringement
Preliminary injunctions are particularly sought in cases of trademark
infringement, intending to defer the defendant from continuous
infringements of the plaintiff’s rights by an appropriate court order for
injunctive relief. In cases of sufficient evidence the court’s order may
also include the defendant’s obligation to provide information as to the
source of origin of the infringing items, the volume of sales and the
like. It is up to the discretion of the court to decide the extent of the
preliminary ruling.
The same principle can apply in cases of unfair competition and
infringement of other IP-rights, including copyrights.
(2)
Procedure
Upon filing the application for a preliminary injunction it is up to the
discretion of the court (in most cases of trademark infringements of
the presiding judge only) whether to invite the parties for a short term
oral hearing or whether to grant the injunction by way of an ex-parteorder without providing the option to the defendant to provide its
evidence. It is not necessary for the plaintiff to provide full evidence
of the relevant facts according to the rules of evidence outlined in the
chapter for ordinary proceedings. It is sufficient if the facts are made
plausible, e.g., by presenting written affidavits, which may be
convincing even by those persons, who are unable to be heard as
witnesses in an ordinary proceeding.
The defendant is rightly protected, since it may claim damages, if at a
later stage the proceeding proves that the injunction was unjustified.
It is not necessary for the plaintiff to provide evidence of irreparable
harm or the like. The preliminary injunction will be granted if the judge
is convinced on a trademark infringement and if the matter is still
urgent, which is usually accepted by German courts if the plaintiff has
acted on an urgent basis, i.e. has approached the infringer with a
cease and desist request (warning letter) and filed for the preliminary
injunction, all within a period of about 4 weeks upon first knowledge of
all relevant facts of the infringement
(3)
Legal Remedies
The provisional character of the court’s order for a preliminary
injunction is underlined by the remedies available:
-
If the injunction was granted without an oral hearing, the
defeated party can raise an objection, upon which the court has
to invite the parties to a short term hearing.
54
G.
-
If the injunction was granted after a hearing, an ordinary first
appeal is applicable to the appeal court.
-
Additional special remedy is provided for the defendant, who
can force the plaintiff to establish an ordinary proceeding. If the
plaintiff does not comply with such order, the court will cancel
the preliminary injunction.
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 1/2000hereinafter 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.
1.
General Civil Procedural Rules
a.
Ordinary Proceedings
IP Civil lawsuit should be filed by the plaintiff before the competent
Mercantile Court, in accordance with the rules of internal competence or before the
Community Trademarks and Designs Court of First Instance of Alicante, in case
Community Trademark or Design rights are involved.
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).
The judge renders a decision after the main hearing.
b.
Preliminary And Precautionary Proceedings
Requests of preliminary and/or precautionary measures against alleged IP
rights infringers follow specific proceedings ruled by the Law of Civil Procedure and
Patent Law (to which Trademark Law remits).
These can be filed before, together or after the filing of the main lawsuit,
depending on the circumstances of the case.
The petition should be made by means of a written brief supported by
documentary evidence. The Court cites the defendant to appear at Court where an
oral hearing is generally held within one month from the request. The decision is
given after the hearing and, if the measure granted, an economic guarantee aimed
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.
In this respect, the Courts have an increased discretionary power, which
results in the possibility to speed up the resolution of the case when needed and
whether applicable.
(1)
Appeals
Appeals against first instance decisions are heard by the Court of Appeal of
the same city where the TM infringement proceedings have been decided
(Audiencias Provinciales). The Court of Appeal decides on the merits of the case on
the basis of the same evidence filed before the First Instance Court but it might
eventually request added evidence.
The appeal must be announced in a five-day term from the notification of the
judgment in first instance and afterwards substantiated within a new twenty-day
term when the Court requests it.
(2)
Supreme Court:
The Spanish Supreme Court is a cassation Court and only decides issues of
law. The recourse to the Supreme Court is not automatic against Appeal Court’s
decisions and the requisites to accede it are numerus clauses (Art. 477 LEC).
Appeals to the Supreme Court must be exercised within five days from the
notification of the Second Instance’s ruling and afterwards substantiated within a
term of twenty days when the Court requests it.
(3)
Timing
The necessary time to obtain a first instance decision varies from Court to
Court around the Spanish territory, depending on the backlog at each Court and the
number of Court rooms dedicated to IP sections in each city. In general, it can be
said that this has been reduced in the last years further to the reforms of the Civil
Proceedings and the creation of the Mercantile Courts.
Lawsuits in trademark cases average 12 to 16 months in first instance and 8
to 12 months in second instance. Preliminary injunctions can be granted within one
month or few days in case an inaudita parte proceedings is followed.
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.
2.
General Criminal Procedural Rules
In general, in Spain, crimes against Intellectual Property are prosecuted in a
"Simplified proceeding" (Procedimiento abreviado). This proceeding starts with a
denunciation or a criminal complaint filed by a party, or ex oficio as a consequence
of a police report sent to the Court by the Police.
The Simplified Proceeding is divided into three different phases:
(1)
Prior Proceedings or Investigation Stage (Instrucción):
During this phase, the Criminal Court carries out all the investigations
aimed to obtain the evidence needed to determine the nature and
circumstances of the crime, the people involved in its perpetration,
etc. (e.g. the Judge shall order the cross-examination of the infringer,
as well as experts reports on samples of the seized products, etc.).
The aim is to get all the necessary information to file the accusation.
Once the investigation is performed and evidence obtained, if the
Judge considers that the facts constitute a criminal offence, he/she will
order the continuation of the proceedings. To the contrary, if he/she
considers that the investigated facts do not constitute a crime or if it is
not possible to ascertain the author of that criminal offence, he/she
will order the stay of proceedings, closing the file.
(2)
Intermediate Phase:
The aim is to determine whether the proceeding must go on to the
next stage (the Trial) or not. To this end, the Judge of the Criminal
Court delivers a copy of the complete file to both the Public Prosecutor
and the private accusations, for them to request: either the opening of
the Trial, filing their accusations writ (indicating who they consider is
responsible for the crime, which are relevant facts, what is the crime
according to the Spanish Criminal Code, etc., and proposing those
evidence they want to be practiced in the Trial hearing), or the stay
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).
During the prosecution of the proceeding, the Judge may order
precautionary measures (in order, for example, to guarantee the
compensation of the potential damages that might have been caused,
or to avoid the removal of the seized products, etc.).
3.
Appeals Against Decisions of SPTO
The decisions rendered by the SPTO’s Boards of Appeals can be appealed
before the High Court of Justice, which is an Administrative Court. Decisions of this
Court could eventually be appealed before the Supreme Court.
The appeal proceeding is governed by the Law of Administrative Proceedings
and it is mainly a written procedure, with scarce possibility for the Court to reduce
the exchange of writs between the parties (the appellant on the one side and the
State General Attorney – Abogado del Estado – representing the SPTO’s interests
before the Court on the other side) and, therefore, to influence the development of
the proceeding.
H.
THE PEOPLE’S REPUBLIC OF CHINA (“PRC”)
The enforcement and protection of intellectual property rights has always
been a hot issue in the PRC, given its quick ascension to the forefront of global
trade. However, the reality is that the PRC is still a developing nation, albeit a
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 anticounterfeiting technologies, to name a few. As a result, everything from batteries,
beverages and cigarettes to electronics, pharmaceuticals and agrochemicals has
been counterfeited in the PRC.
In recognizing this dilemma, the PRC has built a large administrative
infrastructure for the administration and protection of intellectual property rights.
Amongst the administrative bodies, the State Administration for Industry and
Commerce has generally been the government agency responsible for the
supervision of business activities and general supervision of commerce, including
the enforcement of trademarks. Consequently, aggrieved parties have a variety of
options to tackle trademark infringement. Furthermore, the most effective of these
options is to rely on more than one approach (which are described below), rather
than relying solely on judicial adjudication.
In fact, in cases of trademark
infringement, aggrieved parties often first lodge administrative complaints with
local administrative authorities, then follow-up by involving the court or criminal
enforcement authorities (the PSB and the prosecutors).
1.
Overview of the Court System and its Hierarchy
The PRC court system is divided into General Courts and Special Courts. The
General Courts are structured in a four-tiered pyramid-fashion in terms of judicial
review power, which are arranged in the following ascending order: District/Trial
courts, Intermediate Courts, Higher People’s Courts and the Supreme People’s
Courts. The Special Courts include the military courts, railway courts and maritime
courts, all of which are particularly specialized. The District Courts are generally
located in municipal districts and autonomous counties, and are empowered to hear
all trial cases, except those which the law requires other courts to hear.
Intermediate Courts are typically established in capitals or prefectures at the
provincial level and the Higher Courts are generally located in autonomous regions
and municipalities directly under the Central Government. The highest judicial
organ, the Supreme People’s Court supervises the work carried out by lower courts
and often issues interpretations on questions concerning specific applications of
laws.
The PRC employs a Civil Law system, therefore the doctrine of stare decisis
which is universally applied in common law jurisdictions does not apply.
Consequently, courts are not ‘bound’ by earlier judgments and decisions from
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.
2.
Viable Enforcement Options
(a)
Administrative Enforcement
The availability of administrative relief through the administrative authorities
is a unique feature of the PRC trademark enforcement system. Administrative
enforcement recognizes that there are times where a party claiming trademark
infringement is not driven by monetary damages, but rather a desire to halt
infringing activities as quickly as possible.
In this regard, administrative
enforcement is a useful and effective remedy as it provides quick injunctive relief.
However there are questions whether infringers treat these raids and fines as a
‘cost of doing business”.
Local administrative bodies have a wide range of powers when it comes to
investigating and regulating infringement cases, including:
questioning relevant parties;
to inspect and copy relevant contracts, invoices, account books and
other relevant materials;
c)
conduct on-site inspections at the site of alleged infringement; and
d)
inspect relevant articles and seal up or impound evidence of an
infringement.
a)
b)
If the administrative body determines that there was an infringement, they
will order an immediate injunction, including the confiscation and destruction of the
infringing goods, tools specifically used to manufacture the infringing goods and
representations of the registered mark, and may impose additional fines.
Such powers of the administrative approach can be applied for in an
expeditious and flexible manner, without the need for extensive hearings or other
formal procedures. They can therefore be a good way to secure evidence of
infringement for use in a subsequent civil action.
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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.
(1)
Commencing the Proceedings/Evidentiary Hearings
To initiate civil proceedings, a civil action is filed with the intended court.
The filed action must state: (1) the nature of the claim; (2) supporting facts; (3)
evidence which will be relied on and its source; (4) witness details; and (5) details
of the plaintiff. Within five days, the court forwards the complaint to the intended
defendant, who must file a written defense to the court within 15 days of receiving
the court’s notice (the defense period is 30 days for proceedings involving a foreign
defendant who has no residence in the PRC). After receiving the defendant’s
defense, the court will forward it to the plaintiff within five days of receiving it.
At this point, parties may mutually agree on a timetable for the submission
of evidence to the court. In the absence of any agreement, the court will usually
give 30 days from the date which the plaintiff received the defendant’s defense.
Upon receiving each side’s submitted evidence, the court will forward it to the
opposing parties to help the parties’ assess the strengths of their respective
positions in hopes of earlier settlement. Hearings are then held whereby each party
may challenge the evidence submitted by opposing parties’, but in practice the
court usually takes this opportunity to question parties’ and become familiar with
the dispute. The judge manages the case in an inquisitorial manner.
(2)
Evidence
As the party initiating the litigation, the plaintiff must prove their case by
presenting evidence to support their position. Permissible evidence includes:
documentary evidence, physical evidence, audio-visual material, witness testimony,
statements made by interested parties and expert opinions.
Unlike many common law countries, PRC law does not have any meaningful
equivalent of the discovery procedure. Consequently parties are not required to
disclose all relevant documents in their possession, custody or power, and may
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
62
during the course of any administrative enforcement action may also be adduced at
court proceedings.
Moreover, there are numerous investigative agencies,
trademark agencies and consultancy firms that maintain investigative personnel
and informative networks who are able to help gather and provide evidence.
However, due to the heavy emphasis that courts place on documentary
evidence, important evidence should be notarized to make it harder to be
challenged. Any evidence that is gathered from overseas or is presented in a
language other than Chinese, must be translated, notarized, and legalized. In
practice due to the timelines much of this must be done before issuing proceedings.
(3)
Expert Opinions/Technical Experts
If the court requires further technical expertise or opinions to clarify the disputed
matters, then one or more experts may be appointed by the court.
More
experience PRC IP courts/chambers have set panels of available experts that can be
readily appointed. The parties may mutually agree on the appointment of experts,
but the court will step in and appoint the experts where they cannot agree. Parties
have the power to veto some experts on the basis of non-independence.
Thereafter, the court will select up to five experts, but will not inform the parties of
the appointments until trial, at which the experts will provide their expert opinion.
(4)
Trial/Hearing
Upon further inquisition and investigation, the court will set a date for trial.
At trial, both sides begin with their opening statements, which is followed by
debates on specific issued selected by the court. Parties then present their
arguments supported with evidence. If expert evidence is adduced, the expert may
be cross-examined by the parties or the judge.
If the court considers that additional hearings are necessary, then it may
adjourn the trial, during which it may conduct its own investigations. Throughout
and upon the conclusion of the hearing(s), before judgment is handed down, the
court may ask parties whether they wish to settle their dispute . As such, the court
is very much involved with assisting settlement efforts. If parties are able to agree
on settlement, the case may be settled outside of court whereby their case is
withdrawn and their settlement agreement is endorsed by the court.
Any
agreement endorsed in such a manner is enforceable as if it were a court judgment.
However, if parties cannot settle, the court will deliver its judgment.
If the case only involves PRC parties, the case is expected to conclude within
six months. However, extensions are possible. There are not statutory time limits if
the case involves foreign parties. In practice they take a year or so.
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(5)
Appeal
Parties may generally appeal the judgment of the first instance Court once,
and the appeal may involve a review of both law and fact. The judgment of the
appellate court is final. However, if the Supreme People’s Court or a higher court
finds an error in the final judgment, a retrial of the case may be conducted.
(6)
Preliminary Injunctions (Temporary)
With many trademark infringements, the trademark owner’s utmost priority
is to stop the infringing activities rather than to recover monetary damages. An
interested party may consider first filing a preliminary injunction against the
trademark infringers since final judicial orders may not be enforceable until a
substantial amount of time has elapsed.
There were no pre-trial injunctive reliefs under PRC law until the introduction
of such remedies prior to the PRC’s formal accession to the World Trade
Organization. Now, under the revised Trademark Law, a registered trademark
holder or materially interested party may apply for injunctive relief against the
infringing party by filing an injunctive relief application with the court.
An application by an interested party must be filed with written documents
specifying: (1) the parties and their basic particulars; (2) the specific details and
scope of the application; and (3) the reasons for the application, including a specific
explanation on how failure to immediately halt the action or infringements in
question would cause irreparable damage to the rights and interests of the
interested party.
To support such an application, the following evidentiary
documents must also be filed as well: (1) proof of the interested party’s stake in
the action; (2) evidence to prove that the respondent has carried out or is about to
carry out infringing activities which violate the applicant’s rights; and (3) the
applicant must provide security for the action, otherwise the court may reject the
application.
A decision on an application for injunction will be made within 48 hours if the
court is satisfied that sufficient evidence has been presented. In practice, the
actual time frame varies from court to court and from case to case, depending on a
multitude of factors. If the injunction is not approved, the applicant may reapply
once for reconsideration within 10 days from the date of receiving the ruling. If the
injunction is approved, it will be executed and effective immediately.
The
successful applicant must institute formal proceedings within 15 days of being given
the injunctive relief, otherwise the injunctive order would be vacated. If formal
proceedings are commenced on time, then the injunctive order can last until the
conclusion of the case at the court of first instance.
(c)
Criminal Enforcement
The following trademark activities are considered criminal in the PRC:
64
(i)
(ii)
(iii)
Using a trademark identical to a registered mark on the same type of
goods without authorization;
Selling goods knowing that they bear a counterfeit registered
trademark; and
Making or selling counterfeit labels.
Where the circumstance is ‘serious1’ or the case involves a ‘relatively large
amount2’, the offender may be fined with or without a sentence to fixed-term
imprisonment of not more than three years of criminal detention. However, if the
infringement is ‘exceptionally serious3’, or the case involves a ‘huge amount4’, the
offender may be imprisoned for a fix-term period of three to seven years.
Criminal proceedings are brought before the courts by filing a bill of
indictment of the People’s Procuratorate, along with any supporting documents or
evidence. However, before initiating any criminal proceedings, it is crucial that the
interested party gathers sufficient evidence as the court will examine the materials,
complaints and any other information they have obtained to determine if any
criminal responsibility is involved. If the court is convinced there exists criminal
responsibility, then they will initiate their own fact finding investigation, otherwise
the court will simply dismiss the case.
If the case proceeds to investigation, then the public security organ will
conduct a criminal investigation in order to locate the criminal perpetrator.
However, the time limit for holding a suspect is two months. If a case cannot be
concluded within that time limit, then the time period may be extended by one
month with the approval of the People’s Procuratorate, otherwise the case is
dismissed. As such, criminal investigations are likely to conclude within half a year
depending on the complexity of individual cases.
d.
Customs Enforcement
As a fourth method of trademark enforcement, parties may rely on customs
enforcement agencies to halt the flow of infringing goods.
China produces
countless low-labor-cost counterfeit goods and is the largest exporter in the world –
large numbers of infringing goods are guaranteed to reach the borders for export
purposes.
The PRC General Customs Administration is the national authority responsible
for the enforcement of intellectual property rights at the borders (“Customs”). In
order to utilize PRC Customs, the trademark must first be registered with the PRC
Trademark Office. Companies should also record their trademark with Customs so
that enforcement personnel are more familiar with a company’s trademark, allowing
1A
benchmark of a ‘serious’ circumstance is the use of identical marks on identical goods and generating an
illegal turnover exceeding RMB50,000
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
RMB250,000 from the sale of counterfeit goods
4A benchmark of a ‘huge amount’ is turnover exceeding RMB250,000 from the sale of counterfeit products
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.
In order to record a trademark with Customs, a written application must be
submitted to their main office in Beijing. The application must contain the following
information and documents:
(i)
(ii)
(iii)
(iv)
(v)
An applicant company’s business license (if trademark holder is a
company) or a photocopy of the applicant’s identity card (in the case of
a trademark holder being an individual);
A photocopy of the trademark’s registration certificate;
Sample photographs of the applicant’s goods showing the trademark
and relevant packaging, if applicable;
Evidence of a known import or export of infringing goods, if known or
applicable;
Other documents or evidence that PRC Customs considers necessary or
may specify (but in practice, such documents are not required).
After submitting an application, Customs will respond within 30 working days
of the submission to indicate whether they approve the application.
(1)
Enforcement via Complaint
Whenever a trademark owner suspects that infringing goods are about to exit
or enter the PRC, the mark owner can submit a written application to Customs
detailing the suspected point of entry or exit. The application must include the
following information: (1) name of the trademark holder and relevant documents
proving such trademark rights; (2) name of suspected consignor or consignee of
infringing goods; (3) any relevant information to the suspected goods; and (5)
sufficient evidence to prove infringement.
However, due to the arduous difficulties in obtaining such information, most
Customs enforcement does not happen this way and is initiated by Customs
themselves, as described below.
(2)
Enforcement Commenced by Customs
Provided that a company has recorded their trademark with Customs, local
enforcement may also detain goods on their own accord during random checks.
Due to the difficulties of obtaining information on the flow of infringing goods, most
customs enforcement takes place in this manner.
If Customs comes across infringing goods during random checks,
enforcement officers will contact the person provided in the relevant recordal
application. Subsequently, the contacted person must within three working days,
apply for border enforcement and pay a bond as follows: (1) a bond equivalent to
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”).
The CJR was implemented to adjudicate disputes in court more expeditiously
and economically by requiring parties to more clearly define their contentions from
the outset, adhere to stricter timetables during a case’s progression and promote
settlement whenever possible.
These aims are mainly achieved with the
introduction of the underlying objectives (“Underlying Objectives”), which are
considered by the courts when making any decision.
1.
Court System and its Hierarchy
Hong Kong’s court system is arranged in a three-level hierarchy, starting
with the Court of Final Appeal at the top, then the High Court (which consists of the
Court of Appeal and the Court of First Instance) and then the District Court5. The
Court of Final appeal has appellate jurisdiction over matters arising out of the High
Court, and the Court of Appeal has appellate jurisdiction over the Court of First
Instance and the District Court.
A case is first brought in either the Court of First Instance, or the District
court depending on the nature of the case and the pecuniary amount involved. The
District court has jurisdiction to hear monetary disputes of values between
HKD$50,000 and HKD$1 million. The Court of First Instance on the other hand, has
unlimited jurisdiction and may act as an appellate court to cases emanating from
the specialized tribunals.
5There
are also several specialized tribunals in addition to the District Court, including the copyright tribunal, labor tribunal,
lands tribunal, small claims tribunal, etc.
67
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.
2.
The Underlying Objectives
Hong Kong’s revised civil procedure rules now includes an additional set of
considerations known as the Underlying Objectives which the court will apply and
give effect to whenever exercising its powers. The Underlying Objectives place a
positive burden on parties and their legal representatives to actively assist the court
in furthering the Underlying Objectives.
The six Underlying Objectives are:
(i) increasing the cost-effectiveness of any practice and procedure to be
followed in relation to proceedings before the Court;
(ii) ensuring that a case is dealt with as expeditiously as is reasonably
practicable;
(iii)
promoting a sense of reasonable proportion and procedural economy
in the conduct of proceedings;
(iv)
ensuring fairness between the parties;
(v) facilitating the settlement of disputes; and
(vi)
ensuring that the resources of the Court are distributed fairly.
a.
Commencing Civil Proceedings
(1)
Initiating Proceedings
Both civil proceedings in the Court of First Instance and the District Court are
initiated by filing one of the following documents with the court’s respective
registry: (a) writ of summons; (b) originating summons; (c) originating motion; or
(d) petition. The more commonly used methods of commencement are the writ of
summons and originating summons. However, the originating summons is usually
only appropriate when there is unlikely to be any dispute of fact or the disputed
issue is one of interpreting legislation or a law. In contrast, originating motions and
petitions are very specialized and are only used where the law expressly requires
so.
Every writ must be endorsed with a statement of claim, which includes a
concise statement of the claim together with the facts relied on and the relief
sought. Furthermore the writ must be filed together with a statement of truth at
the Registrar. After filing, the writ, an acknowledgement of service form and a
Form 16 must be served together by the plaintiff on the defendant. They may be
served personally, by registered post, or by inserting it in the defendant’s letterbox;
where the defendant is a limited company, service is achieved by leaving the writ at
or sending it by registered posted to the company’s registered office.
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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.
Furthermore, since the CJR’s implementation, it is no longer sufficient for a
party to rely on bare denials in response to a plaintiff’s allegation. Denials in a
defense must be backed by substantive reasons as well as setting out the
defendant’s version of the case. This requirement helps discourage vexatious
litigation by setting out disputable issues early on, so that merit-less arguments are
less likely to be relied on by defendants.
b.
Statement of Truth
With the implementation of the CJR, all pleadings, witness statements, and
expert reports must be accompanied by a statement of truth, which is a declaration
that the facts or opinions stated in the relevant document are true and are an
honestly held belief. The statement of truth is signed by the person making the
statement, but where a party is a corporate body or a group of persons, it must be
signed by a person holding a senior position within that group.
If the statement of truth cannot be verified, then the relevant document it
was supporting risks being struck out or held inadmissible in evidence. Moreover,
anyone who makes a false statement in a document which is verified by a
statement of truth without honestly believing the statement, risks being liable for
contempt of court.
c.
Discovery
The discovery process ensues with the close of pleadings, whereby parties
involved must produce to each other documents within their possession, custody or
power which are relevant to the issue being contested. Parties may also apply for
further discovery on specific issues, though the Court has discretion on whether to
grant such an order. After all such disclosures, both sides must allow other parties
to inspect the actual documents.
Discovery is an ongoing obligation that never ceases, and is designed to
assist all parties in assessing the strengths and weaknesses of their cases before
trial.
69
d.
Case Management Conference
Within 28 days of the close of pleadings, each party must serve a timetabling
questionnaire on the other party (parties). The questionnaire’s purpose is to help
the Court and parties involved to review the progress of the case.
Parties must then file a case management summons within 14 days of
receiving the timetabling questionnaire from the other party (parties). The Court
will then set down a date for a case management conference. Seven days prior to
the conference, the parties must submit a listing questionnaire which details time
estimates for their opening submissions, evidence-in-chief, cross-examination, and
closing. During the case management conference, the Court will determine the
timetable for future pre-trial reviews or trial.
e.
Trial/Judgment
Prior to trial, parties are required to exchange written statements of the
factual witnesses they intend to call. At trial, the Court will hear both parties’
submissions as well as their witness testimonies. The plaintiff, being the party that
initiated proceedings must prove their case against the defendant.
f.
Appeal
For civil matters that are of the monetary amount of HKD$1 million or more,
an appeal from the Court of Appeal to the Court of Final Appeal lies as of right.
Additionally, appeals also generally lie as of right from a ruling in a Court of First
Instance judgment to the Court of Appeal. The Court of First Instance acts as an
appellate court for the district court and other tribunals.
However, the appellate courts will usually only consider questions of law, and
will not decide on questions of fact. It is only when there is a blatant mistake of
fact when appellate courts may reconsider the facts found in lower courts.
g.
Costs/Sanctioned Offers
A Court’s decision on costs will also be affected by whether or not parties
reasonably rejected sanctioned offers. Sanctioned offers are settlement proposals
whereby parties may pay sums into court throughout the proceedings, offering to
settle the case for those amounts. If the receiving party rejects an offer and fails to
do better at trial, then the Court has discretion to award costs against that party as
well as penalizing them with interest, up to 10%, on any judgment awarded.
h.
Alternative Dispute Resolution
The reformed civil litigation procedures place a heavy emphasis on
alternative dispute resolution, particularly mediation. Nowadays, prior to litigating
in court, parties are obligated to make a good faith attempt at considering
mediation as a means of alternative dispute resolution. As an added incentive to
promote mediation, parties are assured that all communications during the
70
mediation process are “without prejudice” and are protected by privilege. However,
if a case is appropriate for mediation and a party does not attempt mediation, the
court may award costs against the successful party after trial if it considers that the
refusal to mediate was unreasonable.
Additionally, arbitration is also often encouraged by Hong Kong’s courts, but
the courts may only refer parties to arbitration if the litigating parties mutually
consent to arbitration or if there exists an underlying contract containing an
arbitration clause. Provided that either of the aforementioned conditions are
satisfied, the court will likely stay the litigation proceedings in favor of arbitration
which may be conducted on an ad hoc basis or administered by a recognized
arbitral institution situated in Hong Kong, such as the Hong Kong International
Arbitration Center or the International Chamber of Commerce.
3.
Criminal Proceedings & Customs Enforcement
Apart from civil litigation, trademark infringement also constitutes a criminal
offense under the Trade Descriptions Ordinance which broadly prohibits the use of
false trade descriptions, as well as the use of misleading and unauthorized
trademarks. A party enforcing their right under this ordinance may request the
Commissioner of the Customs and Excise Department to take enforcement action
and seize the infringing goods. The Customs and Excise Department (“Customs”),
has powers to search, seize, remove or detain any goods that they reasonably
suspect to be an infringing good.
To request Customs to take enforcement action against trademark
counterfeiting activity, the trademark owner should making a complaint to the
department and provide the following information:
a)
relevant trademark certificate as proof of trademark ownership in
Hong Kong;
b)
a sample of the genuine product and information on the offending
goods involved;
c) name and address of the suspected offender; and
d)
an appointment letter, whereby the trademark owner authorizes an
officer to take enforcement action, including conducting seizure
identification, giving evidence and testifying in court.
After making a complaint, Customs will immediately report to their front-line
which will conduct an investigation. If Customs finds evidence of counterfeiting,
they will take enforcement action accordingly. However, since the length of time
required for investigations vary from case to case, there is no set time period for
when enforcement action would take place.
J.
JAPAN
The litigation process in intellectual property-related lawsuits in Japan has
been considerably expedited in the past 10 years as a result of the efforts made by
courts, legislators and practitioners under the overall judicial system reform that
71
started in the late 1990s. The average duration of trials in the first instances has
been shortened from 25 months in 1998 to 13.4 months in 2009 (12.5 months in
2006) whereas the counterpart in the second instances have been reduced more
slowly but kept under 10 months or less. Behind these improvements are the new
Code of Civil Procedure entered into force in 1998, amended in 2003, and in
particular the introduction of keikaku shinri or planned proceedings mandated by
Article 147bis and 147ter of this law.
1.
Trial on the Merits
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
72
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
Plaintiff:
Completing evidence of fame
Defendant: Submitting 1st brief on dissimilarity of marks, distinctive
st
parts, etc.
Preparing evidentiary materials
↓
90 days
2 Preparation for Argument
Plaintiff:
Submitting 1st brief
Defendant: Completing evidentiary materials
nd
↓
120 days
3rd Preparation for Argument
Plaintiff:
Supplementing arguments and evidentiary materials
Defendant: Supplementing arguments and evidentiary materials
↓
160 days
4th Preparation for Argument
73
Court: Finalizing preparation of arguments
2nd Oral Argument in Open Court
Court: Opinions on infringement (liability) →Conclusion
Settlement
-------------------------------------------------------↓-------------------------------------------------------------------Deliberations on damages
10 days
Plaintiff:
Preparing arguments, requesting
defendant’s
submission of document and appraisal of
damages
20 days
Defendant: Denial and counterargument; preparation of
evidence (balance sheets, invoices, etc.)
↓
190 days
3rd Oral Argument in Open Court
Defendant: Submitting additional documents
220 days
4th Oral Argument in Open Court
→ Conclusion
Settlement
The ODC requests both parties to prepare adequately for litigation before a
complaint is filed. This is facilitated by Articles 132bis to 132quater of the CCP,
which allow the prospective plaintiff and defendant to mutually request information
that will obviously be necessary in the intended litigation, provided that the subject
matter of the litigation has been substantially communicated between the two
parties in advance.
d.
Bifurcation and Typology of Claims and Defenses
The courts in Japan have predominantly bifurcated the infringement and
damages phases of the trial by initially considering infringement of trademark
rights. According to the model of the ODC, the court and the parties will convene
for a total of four times to determine facts, points of disputes and evidentiary
materials relating to infringement after the first oral hearing and before the second
oral hearing. In this phase of the litigation process, typological classification of
arguments that have been made during this phase of the past similar proceedings
assists the court in expediting the deliberations.
The typical points of claim to be made by the plaintiff may be broken down
as below.
1.
Ownership of plaintiff’s registered mark
2.
Defendant’s use of a mark for particular goods
3.
Similarity between the two marks
4.
Similarity between the designated goods and Defendant’s goods
74
5.
Damages
The typical points of defense to be made in response by the defendant may
be broken down as below:
mark
e.
I.
II.
Invalidity of plaintiff’s registered mark
Use of Defendant’s name, generic mark or descriptive
III.
IV.
V.
VI.
VII.
Honest concurrent use
Use of Defendant’s registered mark
Tacit license agreement
Abuse of trademark rights
Parallel importing
Simplified Quantification of Damages
If it is decided that infringement has occurred and the complaint included
damages as well, then the court will proceed to decide whether or not and/or to
what extent damages have been caused by the act of infringement on the basis of
the claims and counterclaims as substantiated by evidence.
While negligence on the part of the infringer is a requirement for claiming
damages, negligence shall be presumed under the Trademark Law. In addition,
since it is extremely difficult to establish the causal relation between the act of
infringement and lost earnings on the part of the plaintiff, the Trademark Law was
amended in 1998 to alleviate the burden of proof by allowing trademark owners to
claim damages based on the number of infringing products sold by the defendant,
to be multiplied by the profits that would have been gained by selling the plaintiff’s
goods.
At the request of the plaintiff, the court may also order that the defendant
submit documents necessary to quantify the damages caused. Furthermore, the
court may entrust qualified appraisers with the quantification of the damages. If it
remains difficult, the court can decide a reasonable amount of damages on the
basis of the whole oral proceedings and examination of evidence.
f.
Termination of Proceedings
Pursuant to Article 89 of the CCP, the court may seek to facilitate settlement
between both parties regardless of the phases of the proceedings they are in.
According to the statistics of November 2008, forty-four (44) percent of intellectual
property-related lawsuits had been settled in court whereas only thirty-four (34)
percent had gone to trial. Although the timing of settlement in court varies from
case to case and in some cases parties may be urged to consider acceptable terms
of possible settlement at the first oral hearing, it seems most likely that the court
will discuss possible settlement after the points of dispute have been clarified.
75
When a settlement is reached, the court proceedings are terminated and the
settlement terms will be put on record, which shall have the same effect as a final
ruling of the court. According to a research conducted by a judge of the Tokyo
District Court, the rate of settlement in trademark cases in favor of plaintiffs is
ninety-five (95) percent. This seems to show that settlement is more important in
trademark enforcement matters than in other civil proceedings and that plaintiffs as
well as defendants are highly motivated to settle matters amicably.
2.
Provisional Injunction
The owner of a trademark right may apply for a provisional injunction to
preserve the right to seek injunction under Article 36 of the Trademark Law. It has
long been believed that a provisional injunction procedure is much shorter than
trials on the merits because a provisional disposition order may be obtained by
simply submitting prima-facie evidence and shall become effective as soon as it is
served by the court. In view of the tremendous impact such disposition order will
have on the other party, however, provisional injunction procedures tend to be
carried out more cautiously than before and may last as long as does a trial on the
merits. This tendency applies to other intellectual property-related litigations as
well.
3.
Alternative Dispute Resolution
The most commonly-used dispute resolution process before going to trial is
“judicial compromise” or settlement in court mentioned above. If this should be
excluded from ADR by definition, there are no popular alternative mechanisms
through which trademark disputes have been effectively resolved in Japan. Among
the numerous ADR mechanisms including those provided by administrative
agencies, private associations and bar associations, Japan Intellectual Property
Arbitration Center (JIPAC) established in 1998 by the Federation of Bar Associations
in cooperation with the Patent Attorneys Association has dealt with a relatively
large number of trademark disputes at a relatively high rate.
According to the statistics available on the website of JIPAC, trademark
matters account for twenty-two (22) percent of all the 107 intellectual propertyrelated mediation and arbitration cases entrusted to JIPAC in the past 12 years.
Mediation, arbitration and consultation processes provided by JIPAC are closed to
the public and managed by two mediators or arbitrators appointed from the list of
candidates consisting of lawyers, patent attorneys and academics specialized in IP
matters. In ninety-five (95) percent of the above 107 cases, mediation was chosen
as a possible
K.
REPUBLIC OF KOREA
In general terms, Korean judges have always taken an active role in the
management of cases according to the Korean Civil Procedure Act (hereinafter the
KCPA). Section 136 of the KCPA, dating back to July 1960 established the active
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”.
Typically, Republic of Korea has two distinct proceedings (judicial and
administrative) related to Intellectual Property matters: judicial courts, which
include civil cases and criminal cases and Intellectual Property’s Administrative
Courts, which include Intellectual Property Tribunal and the Patent Court of Korea
which manage appeals against administrative decisions rendered by the Korean
Intellectual Property Office (KIPO).
The judgments of civil courts can be revised by High Courts (Appeal Courts).
The judgments of the Intellectual Property Tribunal can be reviewed by the Patent
Court of Korea.
The judgments of High Courts and the Patent Court of Korean only can be reviewed
by the Supreme Court of the Republic of Korea.
It should be clarified that the Intellectual Property Tribunal and Patent Courts
of Korea have jurisdiction in cancellation proceedings, validation or invalidation of
rights.
Civil and Criminal courts have exclusive jurisdiction in relation to all the
infringements cases regarding Patents, Trademarks and Copyright.
1.
Civil Proceeding
The civil proceedings begin when a plaintiff or his attorney at law files a
complaint with a District Court, a Branch Court, or a Municipal court.
a.
Complaint
A complaint is a written document containing the plaintiff’s allegations and it
is the requirement sine qua non to start a civil proceeding. In principle, a complaint
is necessary to initiate the civil proceeding except in the cases of Small-claim cases
which we will explain after. A complaint must contain identity of the parties, the
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”.
c.
Legal Representative Or Attorney At Law
The plaintiff as well as the defendant can be represented by an attorney
before the court. When the amount of the litigation does not exceed 50,000,000
Won (approximately US$ 51,000), the Court allows that parties can be counseled
by a person who is not attorney at law.
d.
Pre-Trial Proceeding
After filing the complaint and the defendant responds, the preparatory stage
before the trial initiates. In this stage, the presiding judge has discretionary power
to require the parties to submit documents, evidence or information needed to
clarify relevant facts.
With the New Case Management model, there are now one or two hearings
instead of five or six under the old procedure.
e.
Pre-Trial Conference
As last step of the Pre-trial proceeding, the presiding judge can hold a pretrial 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.
7Information
of the Official website of Korean Supreme Court: www.ccourt.go.kr
78
f.
Evidence
As mentioned before, evidence may not be submitted with the complaint but,
in general, each party usually submits documents to the other party together with
the factual and legal grounds it intends to rely on. The cited documents do not
require any attestation or legalization.
g.
Hearing
Each party can orally argue their claims before the Court.
h.
The Expert Commissioner System (ECS)
This system was recently introduced in July 2007 with the amendments to
the Civil Code. It is supposed to enhance the quality of the proceedings and
resulting judgments in areas which require skilled professionals in technical
disputes involving construction, medical and intellectual property rights issues. The
view point of the Korean Supreme Court is that Expert Commissioners will be able
to advise a fair and neutral viewpoint based their professional qualification and
expertise to the trial.
i.
Judgment
The judge renders a decision after the Hearing phase and deliberation. On
time limits, the KCPA suggests a judge renders a decision within five (5) months
after the institution of the lawsuit, and within two (2) weeks after the conclusion of
hearing of the parties.
j.
Appeal Proceedings
The losing party can appeal the judgment rendered by the Trial Court within
two (2) weeks from the date the judgment is served before the High Court.
The appeal proceeding is similar to the first instance proceeding and the
party has the opportunity to submit new allegations and evidence.
k.
Trial proceedings in Small Claim Cases
A small claim case is a case in which the plaintiff claims compensation of
money, fungibles, or securities not exceeding 20 million won (approximately US$
20,600). A District Court, a Branch Court, and a Municipal court take charge of
small claim suits, which amount to over 70% of all civil suits. This proceeding is
expeditious and, generally, cheaper.
The proceeding starts with an oral claim by the plaintiff before the Court
Clerk, instead of filing a written petition to the court. “The court may first render a
decision recommending the defendant or respondent to perform her liability based
on the complaint, without waiting for the response of the defendant. If the
defendant does not want to accept the recommendation as it is, she may raise an
79
objection to the decision. Practically speaking, a great portion of the small claims
cases are resolved at the stage of recommendations8”.
l.
Civil Conciliation Proceedings
A Civil Conciliation is encouraged by the Supreme Court and it is a method
for dispute resolution consisting of hearing allegations of the parties in dispute
before a judge or a committee, who can advise the parties to make mutual
concessions and seek a compromise or he can render a compulsory decision.
2.
Criminal Proceedings
a.
Investigation and Accusation
In the Republic of Korea, the Prosecutors and Judicial Police Officers take
charge of criminal investigations. The Public Prosecutor has authority to investigate
criminal cases and is entrusted with exclusive authority to initiate criminal
procedures by indicting the offenders.
The Public Prosecutors have the following authority under Korean Law:
1.
2.
3.
4.
5.
Authority to inspect the place of arrest or detention
Right to request the Judge to issue an arrest warrant
Right to approve an urgent arrest made by a Judicial police officer
Right to coordinate the Judicial Police Officers in connection with
disposal of the seized articles
Judicial Police Officer’s duty to report to the prosecutor
As the only prosecuting authority, Korean Prosecutors have the power to
decide whether or not to prosecute a suspect. In case a Prosecutor chooses to
indict a person, the Prosecutor has the duty to participate in the trial and maintain
indictment until a final court judgment has been rendered. Under Korean Criminal
Procedural Law, indictment by a private person is not allowed and only the
government can indict a suspect.
In addition, Prosecutors have the discretionary power to suspend the
prosecution of the case even if there is sufficient evidence to maintain prosecution.
Prosecutors suspend prosecution when they think the benefit of non-prosecution is
greater than the cost of prosecution. It enables Prosecutors to take into account
criminal policy factors when deciding whether to prosecute a suspect.
It is important to highlight that in Korea there is not an investigating judge.
The investigations are merely managed by public prosecutors.
b.
Judgment
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.
3.
Specific Procedural Rules Dealing With Patent And Trademark
Litigation
a.
Korean Intellectual Property Tribunal (KIPT)
As mentioned above, appeals against decisions rendered by the Director of
the Korean Intellectual Property Office (KIPO) in relation to the grant/rejection of a
trademark or its cancellation can be submitted to the Korean Intellectual Property
Tribunal (KIPT). This Tribunal, composed of a panel of three/five specialized
members also manages cases relating to invalidation of patents/designs.
The process is fast and the time limit set for issuing a decision is four
months. The pleading or hearing can be oral or written and the decision of the KIPT
can be revoked only by the Patent Court of Korea (PCK).
b.
Patent Court of Korea (PCK)
Decisions of the KIPT can be reviewed by the Patent Court of Korea. The
Patent Court is a specialist IP Court of second instance with jurisdiction over all
cancellation appeals rendered by the trial board of KIPT. It is necessary to
emphasize that the Court’s jurisdiction is limited to determining the validity and the
scope of a patent and other registered rights (such as trademarks and designs).
An important characteristic of the Patent Court is its technical board of
examiners. There are examiners specializing in different fields of science and
technology who assist the judges in technical matters. They participate in the
hearing to examine the parties and/or their witnesses.
Any appeal against the Patent Court's decisions should be brought directly to the
Supreme Court.
c.
Supreme Court of Korea
On 26 April 2010 the Supreme Court has introduced a new electronic EAppeal system (Patent E-Court) with the aim to give an effective and speedy
service to citizens and the parties.
The electronic filing system enables submission, acceptance, and service of
document through electronic devices and a modernized courtroom equipped with
sophisticated technology. The kind of move is expected to ease the inconvenience
caused by logistical problems, which are inevitable when a court exercises territorial
jurisdiction over the entire nation, as well as to contribute to the establishment of a
paper-free court, according to the Korean Supreme Court’s website.
L.
SINGAPORE
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.
1.
Courts and their Structure
Singapore’s judiciary is comprised of both the Supreme Court and the
Subordinate Courts. The Supreme Court is comprised of the Court of Appeal and
the High Court, whereas the Subordinate Courts include the District Court, the
Magistrate’s Court, the Small Claims Tribunal and several specialized courts. The
Court of Appeal is Singapore’s apex court which has appellate jurisdiction over
matters emanating from the High Court as well as the Subordinate Courts. The
High Court is the court of first instance for civil claims beyond the pecuniary limits
of the Subordinate courts with unlimited jurisdiction to hear any claim. The District
Court, Magistrate Court and the Small Claims Tribunal generally have jurisdiction to
hear pecuniary claims, and are limited to the monetary limits of S$250,000,
S$60,000, and S$20,000 respectively.
Both the Supreme Court and the Subordinate Courts (except the Small
Claims Tribunal) utilize the same set of civil procedure rules which provide the
litigation process’s procedural framework and is set out in the Rules of Court. The
Small Claims Tribunal on the other hand, is governed by its own specific rules and
applies an informal process when adjudicating disputes.
2.
Overview of civil proceedings
a.
Court’s Case Management Powers
At any time, the Court has the power to facilitate case management by
giving directions to secure a just, expeditious and economical disposal of the
matters in dispute. Typically, the Court makes “unless” orders against disobedient
parties’, which usually provides that unless the party complies within a stated
period, the action will be dismissed or the defense struck out.
Furthermore, parts of or an entire pleading may be struck out at any stage of
the proceedings if it: (a) discloses no reasonable cause of action or defense; (b) is
frivolous or vexatious; (c) may prejudice, embarrass or delay the fair trial of the
action; or (d) amounts to abuse of the Court. In addition, where no fresh step in
the proceedings has been taken for over a year, the Court may discontinue the
proceeding altogether.
b.
Originating Process
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.
d.
Discovery and Evidence
The overriding and guiding principle in Singapore’s litigation process is that
no party should be surprised by another. Therefore, parties are obligated to
provide discovery of all relevant documents by filing lists of documents, verified by
affidavit, to ensure that each party knows the case thoroughly before the trial
commences. To that end, parties are entitled to inspect and take copies of each
other’s documents which have been in their possession, custody or power.
Additionally, a party may even apply for discovery against a non-party, provided
they adduce an affidavit specifying the documents being sought, how such
documents are relevant and evidence that those documents are likely in the third
party’s possession, custody and or power.
If witnesses are to be called at trial, then the party calling the witness must
identify the witnesses which they intend to call at trial and detail the evidence that
each witness intends to give. All such details will be by affidavit and will stand as
their testimony at the trial, on which they will be cross-examined on. These
statements are exchanged before trial.
e.
Pre-trial Conferences
9Also known as ‘appearing’
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.
g.
Alternative Dispute Resolution
The Singaporean Court system provides a large variety of court-annexed
alternative dispute resolution services capable of handling both large and small
claims alike, including mediation and arbitration. Litigation in the Subordinate
Courts is most commonly referred to the Primary Dispute Resolution Center, which
provides both an evaluative and mediatory process. Such mediation is generally
consensual, is conducted free of charge, and is guided by an experienced
settlement judge who provides a neutral perspective on the legal issues involved
and suggests possible settlement options. Such court-annexed mediation may be
requested by either party at anytime after the commencement of proceedings and
up until the point in time before trial.
Additionally, more formal mediation processes are also available through the
Singapore Mediation Center, and arbitration may be conducted on an ad hoc basis
84
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.
l.
Exception: Well-known Trade Marks
For foreign proprietors of unregistered trademarks, Singapore’s Trademark
Act conforms to international standards as set out in the Paris Convention and the
World Intellectual Property Organization’s Joint Recommendations regarding the
protection of well-known marks. Consequently, a trademark’s proprietor may apply
for an injunction to restrain the use of an infringing trademark if the mark is
deemed to be well-known in Singapore.
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3.
Criminal Proceedings
In addition to civil remedies, trademark rights may also be enforced via
criminal proceedings.
Under Singapore’s Trademarks Act, the following infringing acts may result in
criminal liability:
(a)
(b)
(c)
(d)
Counterfeiting a registered trademark;
Falsely applying a registered trademark to goods or services;
Making or possessing articles for committing offenses; and
Importing or selling goods with falsely applied trademarks.
Criminal actions may be brought by filing a complaint with the Magistrate.
Complaints must be filed together with an affidavit, and if the magistrate is satisfied
that the application is complete, he/she may:
(a)
(b)
(c)
Issue a notice to involved parties;
Issue a summons to the respondent (the accused); or
Direct police to conduct an investigation into the complaint.
If an investigation is ordered, it will likely be conducted by the police force’s
Specialized Crime Division which typically handles intellectual property disputes.
After the investigation, the Magistrate will fix a date for criminal mediation which all
involved parties must attend. Should parties be unable to settle, then the case
proceeds to a hearing where the respondent is asked to enter a plea of guilty or not
guilty. If the plea is not guilty, then a trial is held and each side presents their case
before a judge. Since the length of time required for investigations vary from case
to case, there is no set time period for when an investigation is considered
complete. However, once a proceeding moves beyond criminal mediation, it can be
expected to be adjudicated on within six months.
M.
THAILAND
Following recognition of the complexity and sophistication of intellectual
property and international trade cases, the Ministry of Justice has established the
Central Intellectual Property and International Trade Court (CIPIT). The court
began its service in 1997 with the goals of ensuring convenience, expediency and
fairness in judicial proceedings.
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.
1.
Sui Generis System of the CIPIT Court
As mentioned earlier, the CIPIT has introduced many new litigation practices
into Thai judicial proceedings. It can be said that this new approach towards
litigation provides a more “user-friendly” forum. Particular points to note are:
a.
Continuous Hearing
For the purpose of expediency, the hearing in the CIPIT proceeds without
adjournment until the hearing is over, save in the case of unavoidable necessities.
After the hearing is over, the court must promptly render a judgment or order.
b.
Discovery
The common law concept of “Discovery” has been introduced into the CIPIT
with the objective of providing convenience, expediency and fairness in judicial
proceedings. By disclosure of evidence before the day of taking evidence, the
parties and the court are able to determine the relevant issues in the case as well
as agree upon certain facts, saving time and costs by shortening the hearings
The disclosure of evidence includes witness statements which the CIPIT is
currently applying as a rule, leaving the traditional way of examining witnesses as
an exception. The court usually gives orders to the parties to submit their witness
statements in advance in order to encourage them to pursue this procedure.
c.
Preliminary Injunction
Preliminary injunctions in IP litigation can be requested prior to filing the
statement of claim or prosecution.
The Rules of the court allows the injured party to request a preliminary (or
preventive) injunction upon condition that he proves to the court that there exists
reasonable grounds to file a case against the prospective defendant as well as
sufficient grounds for the court to grant injunction. Moreover, the prospective
plaintiff should provide eyewitness testimony to support his request.
The court only grants preliminary injunctions where it finds:
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(1)
(2)
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
the damage incurred cannot be restituted by monetary compensation
or indemnity of any kind, or the prospective defendant is not in a
position to compensate the prospective plaintiff for the damage, or it
might be difficult to enforce the judgment against the prospective
defendant.
d.
Anton Piller Order
Anton Piller order originated from the English case Anton Piller KG v.
Manufacturing Process Ltd. 1976 with the idea that no person should be able to
frustrate the process of justice by destroying subject matter evidence of the case.
This procedure of early taking of evidence applies where a person
apprehends that the evidence he may have to rely in the future will be lost or
become difficult to adduce in court or at a later stage, before or after the civil suit is
filed.
The Act of Establishment together with the Rules of the court sets out the
requirements for the applicant to satisfy as follows:
(1)
(2)
(3)
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
There is clear evidence that the alleged party is incriminating evidence
in his possession and
If the alleged party is notified before hand, the evidence will be
destroyed or difficult to adduce in at a larger stage.
After satisfying these conditions, the applicant is entitled to enter into the
premises of the other party to search and inspect, as well as make copies of
evidence according to the circumstances of the case.
This ex parte application is usually made by the plaintiff after issuing his writ
but before he has served it on the defendant. Nevertheless, in practice the court is
not likely to grant such an order. This is because the conditions set forth are
difficult to satisfy and the court has to weigh the balance between protection of the
owner’s exclusive rights and prevention of abuse of such rights.
e.
Power to Issue Procedural Rules of the Court
Conventionally, Thai procedural law can only be amended through the
amendment Act to the Procedural Code. This process usually takes many years to.
The Act for the Establishment provided a new procedure for the Chief Justice of the
CIPIT, subject to the approval of the President of the Supreme Court, to be able to
issue Rules of the court on proceedings and hearing of evidence in intellectual
88
property and international trade cases provided that such provisions do not impair
defendants’ rights.
Such amendments shall be for the purpose of convenience, expediency and
fairness of the proceedings and shall come into force after their publication in the
Government Gazette. Unlike the traditional way of procedural amendments, this
process takes only a few months.
In addition, the flexibility of this “user – friendly” forum can be seen through
the following provisions:




2.
Communication with other court may be carried out via facsimile,
electronic media or other information technology (IT) media or
together with express mail service.
Video conference for witness examination.
An English translation can be omitted if such evidence is not related to
the main issue of the case.
Information taken from a computer network can be used as an
evidence of a case.
Case Management Procedures
a.
Pre-trial Conference
The judge in the CIPIT is empowered to conduct any proceedings or issue
any orders, in addition to the adjudication. In this regard the judge may determine
the course of proceedings before an examination of witness with the presence of
the parties. The course of proceedings may include the following:
(1)
Mediating for settlement or applying arbitration rules;
It has become a common practice in the CIPIT to find out if the case
brought before it can be settled by mediation or applying arbitration
rules, not only to save time and money but also maintain the
commercial relationship between parties. Where the parties cannot
find common interests to settle the case, they shall be able to exercise
their rights further in the proceedings of the court.
The CIPIT also provides a list of specialized mediators to support the
process, amongst these are associate judges. Statistically, from 2002
– 2007 there were 429 cases brought to settlement by mediation and
by applying arbitration rules. However, only 4 of these cases were
brought to settle by arbitration.
(2)
Scheduling dates and times for the proceeding;
(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;
(4)
(5)
Determining details and durations regarding technical or scientific
experiment to prove the facts of the case;
Determining expert evidence
Parties are allowed to file a request to the court to take judicial proceedings
according to any steps that the parties have agreed upon. If the court finds that the
request is for the purpose of convenience, expediency and fairness and it is not
against public morality or public order, the court may grant such request.
3.
Additional Taking of Evidence
Although the CIPIT may adopt some common law practices for the
convenience and expediency of the case, the uniqueness of inquisitorial system in
civil law practices still exists. Especially when the court deems it necessary to take
other evidence relevant to the case from either one of the parties for additional
examination. Then the court by itself, is able to proceed with taking of evidence,
which also includes re-examining witnesses who have already been heard.
4.
Judges
There are two types of judges operating in the CIPIT court. First, career
judges appointed from the judicial officers according to the Rules of Judicial
Officers. Second, associate judges appointed from judicial officers with a field of
specialization in intellectual property and international trade. The associate judges
are in the position for a period of five years.
A quorum consists of at least two career judges and one associate judge. The
decision is granted according to the majority’s vote.
5.
Civil Procedure Rules
Civil cases brought at the CIPIT may be for trade mark, copyright, patent,
design, trade secret and other IP-related cases.
The structure of the civil procedure can be divided into two categories
according to the parties in dispute i.e. a private party against another private party,
and a private party against the department of intellectual property.
a.
Private vs. Private
This trademark dispute between private parties usually derives from
infringement or challenges against a mark sought for registration.
90
In infringement cases, civil action start after issuing a cease and desist letter,
demanding inter alia, that the infringer undertakes not to deal with infringing
products, pays agreed sum of damages and costs, discloses the source of these
counterfeit products, and possibly publication of apology notice in the newspapers. In
not complied with a case is filed at the CIPIT.
In disputes over a mark sought for registration, a person who believes he has
better rights to the mark may file for an opposition within 90 days of the publication
of the mark. After the applicant has received notification of the opposition, the
applicant then has 90 days to counterclaim the opposition from the day of the
receipt of notification by the trademark registrar. The trademark registrar then
issues a decision in which the discontented party may appeal to the Trademark
Board within 90 days after the acknowledgement of the decision. The losing party
may bring the case to the CIPIT within 90 days after his understanding of the
Trademark Board’s decision. After the CIPIT has granted a decision or an order, an
appeal against the judgment or order may be brought directly to the Supreme
Court, whose decision is final.
b.
Private vs. Department of Intellectual Property (DIP)
Disputes between a private party and the DIP often arise when an applicant
views that the decision of the registrar or the Trademark Board regarding the
trademark registrability is clearly unreasonable. Under these circumstances, the
case maybe brought to the CIPIT and appeal to the Supreme Court with the same
procedure as mentioned above.
The procedural steps are illustrated below.
91
6.
Criminal Cases
Apart from claiming damages and compensations in civil cases, the injured
party may also file a complaint in criminal proceedings or file a civil case in
connection with an offence. Trademark infringements are public offences; the
injured party therefore does not have to incriminate.
The Thai Criminal Procedural Code provides three alternatives for an injured
party to exercise his rights in judicial proceedings as follows;
a.
Public Prosecutor
Through this process, the injured person files a compliant to the inquiry
officer who then will make an opinion and report to the public prosecutor. The
public prosecutor will then take the case to the court.
The procedural steps are illustrated below.
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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).
c.
Public Prosecutor and Injured Persons
Intellectual property infringement cases allow the injured person to join with
the public prosecutor in the prosecution by applying for a motion to associate
himself with the prosecutor at any stage of the proceedings before the
pronouncement of Judgment of the Court in the first instance.
7.
Appeal
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
93
opinion or has certified that there is reason to appeal or a written approval by the
Chief Justice of the CIPIT court.
N.
INDIA
Current Rules of Procedure in INDIA as Governed Under the Code of
Civil Procedure (CPC)
Case management procedures in the form of statutory rules/legislations are yet
to be introduced in India. In the absence of these, procedural aspects of civil
litigation in India are governed under the Code of Civil Procedure (CPC), 1908.
The CPC lays down the procedures that courts are required to follow. A civil suit
commences with the plaintiff filing the Plaint (claim) and the defendant then
filing its written statement (response to the Plaint).
Briefly the procedural rules governing litigation in India are as follows:I.
PLEADING (Order VI)
II.
‘Pleading’ means Plaint or Written Statement and contains material facts
and not evidence.
PLAINT (Order VII)
A Plaint is a claim and should include the following:a) the name of the Court in which the suit is brought;
b) the name, description and place of residence of the plaintiff;
c) the name, description and place of residence of the defendant, so
far as they can be ascertained;
d) where the plaintiff or the defendant is a minor or a person of
unsound mind, a statement to that effect;
e) the facts constituting the cause of action and when it arose;
f) the facts showing that the Court has jurisdiction;
g) the relief which the plaintiff claims;
h) where the plaintiff has allowed a set-off or relinquished a portion of
his claim, the amount so allowed or relinquished; and
i) a statement of the value of the subject-matter of the suit for the
purposes of jurisdiction and of court-fees, so far as the case
admits.
In case, a plaintiff wishes to seek interim injunction (till the disposal of
the suit), it may file an application under Order XXXIX Rules 1 & 2 CPC
along with the Plaint.
Additionally, under Order VII Rule 14 CPC, a plaintiff is required to file
all relevant documents along with a list at the time of presenting the
suit.
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III.
IV.
V.
VI.
VII.
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.
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.
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.
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.
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:
Once pleadings (Plaint, WS, Replication) are complete, issues
are framed under Order XIV CPC. Issues are questions which a
Court is called upon to adjudicate and may include questions of
fact and law.
VIII. Under Order XIV Rule 1, the parties are required to file all original
documents (photocopies whereof were filed along with the Plaint/Written
Statement) before framing of the issues. If a plaintiff or defendant wishes
to file any additional documents, it may do so with the liberty of the Court
95
(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.
Under Order XVIII Rule 4 CPC, the examination-in-chief of a witness
can be led by way of an affidavit. The purpose of examination-in-chief
is to give an opportunity to the parties to prove their respective
claims/defenses by way of oral and documentary evidence.
Thereafter, the opposite party has the right to cross-examine the
witness. The purpose of cross-examination is to verify the veracity of
the witnesses’ statement.
The parties also have the option to seek liberty from the Court to reexamine the witness.
X.
Once parties have led their respective evidence, the matter is fixed for
Final Arguments.
XI.
JUDGMENT AND DECREE:
The Court after hearing the arguments of both the parties, passes a
judgment in the suit under Order XX and a formal Decree (i.e. the
formal expression of adjudication by a Court which conclusively
determines the rights of the parties with regard to the matters in
controversy in the suit) is drawn.
TRADEMARK INFRINGEMENT SUITS
With specific reference to trade mark infringement suits, it may be mentioned
that Section 134 of the Trade Marks Act, 1999 allows for the institution of
trademark infringement suits before the District Courts in India. In case of
infringement of a registered trademark a trade mark infringement suit may be
filed. Where an unregistered trademark is infringed, a passing off action may be
filed.
CIVIL REMEDIES
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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:a) Injunctions restraining further use of the infringing mark. These include: Interlocutory/Interim Injunction;
 Permanent/Perpetual Injunction;
[In some instances, courts have also granted relief in the form of
Mareva Injunctions and Anton Piller Orders]
b) Damages or an account of profits;
c) An order for delivery up of infringing labels and marks for destruction or
erasure.
Of the above mentioned remedies, the role of injunctions is crucial in suits
relating to trademark infringement. Indian Courts have recognized this in the
past and have often been liberal in granting interim injunctions (ex parte or
otherwise), to help preserve evidence as well as to injunct the defendants from
continuing the unauthorized infringing acts.
PROPOSED AMENDMENTS
A proposal aimed to expedite disposal of commercial disputes with high
pecuniary value has been recently envisaged by ‘The Ministry of Law and
Justice’, in the form of The Commercial Division of High Courts Bill, 2009 [Bill
No. 139 of 2009]. The Bill is based on the recommendations of the 188th Report
of the Law Commission of India. The Bill has already seen safe passage through
the Lok Sabha, the Lower House of the Indian Parliament. The Bill as passed by
the Lok Sabha was referred to the select Committee of the Rajya Sabha (the
Upper House of the Indian Parliament) on December 22, 2009 and the
Committee presented its report on July 29, 2010. Currently, the Bill is pending
consideration and passing before the Rajya Sabha.
i.
A Background - The 188th Report of the Law Commission of
India.
The 188th Report of the Law Commission of India was prepared in the backdrop
of sharp criticism offered by U.S. Courts while adjudicating a series of cases
involving claims filed in the American courts involving Indian parties. While
doing so, the U.S. courts passed deeply critical judgments highlighting the
‘deplorable’ state of its Indian counterpart.
In cases such as Bhatnagar Vs Surendra Overseas Ltd.10 Justice Lewis J.
approved the continuance of the case in the American courts in view of the
10
(1995) 52, F.2.d. 1220(3rd Cir)
97
tremendous backlog of cases in the Indian district courts which could take ‘a
quarter of a century to resolve this litigation if it were filed in India’.
Similarly, in Shin-ETSU Chemical Co. Ltd. Vs. ICICI Bank (dated August 5,
2003), Judge Ira Gammerman of the Supreme Court of the State of New York
observed – ‘at some point, the prospective judicial remedy becomes so
temporarily remote that it is no remedy at all and may render (an) alternative
forum so ‘clearly unsatisfactory’ as to be inadequate….. Thus the plaintiff could
very well be deprived of its day in Court if required to litigate in India’.
Also in Modi Enterprises Vs ESPN Inc. (dated March 4, 2003) the same judge
made specific reference to the Delhi High Court where claims could be heard for
decades which did not make India an adequate forum to pursue such litigation.
In view of the above, in December 2003, this Report recommended constitution
of High-Tech Fast-Track commercial divisions in High Courts in India similar to
the Commercial Courts of New York, UK and Singapore to provide cost effective,
efficient solutions to expedite the resolution of commercial disputes.
ii.
The Commercial Division of High Courts Bill, 2009
The salient features of the Bill are as follows:1.
Each High Court is to constitute a commercial division of that High
Court specifically for adjudicating commercial disputes valued at Rs 5
crore (USD 1131075 approximately) and above, thereby conferring
original jurisdiction upon the High Court to hear such cases.
2. The Commercial Division refers to a Division Bench which would
comprise High Court judges to be appointed by the Chief Justice.
3. The definition of the term ‘commercial disputes’ contained in the
proposed Bill is relevant as it includes intellectual property disputes
within the ambit of Section 2 of the Bill. According to Section 2 (a) “commercial dispute” means a dispute arising out of ordinary
transactions of merchants, bankers and traders such as those relating
to enforcement and interpretation of mercantile documents, export or
import of merchandise, affreightment, carriage of goods, franchising,
distribution and licensing agreements, maintenance and consultancy
agreements, mercantile agency and mercantile usage, partnership,
technology development in software, hardware, networks, internet,
website and intellectual property such as trademark, copyright, patent,
design, domain names and brands and such other commercial disputes
which the Central Government may notify.
4. Case management procedures are reflected in Section 9 of the Bill
where time limits have been imposed on the Parties during various
stages of a lawsuit. As per Section 9(2) of the proposed Bill, a plaintiff
98
will have to file the following pleadings and evidence along with the
Plaint at the very initial stage of the lawsuit:
 the documents on which he sues or relies;

as many copies of the plaint and documents as to the number of
defendants;
 an affidavit containing his statement of examination-in-chief;

affidavits containing statements of other witnesses in examination-inchief;
 brief issues that are likely to arise;
 list of interrogatories, if any;

application for discovery and production of documents, if any,
maintaining their relevancy;
 such other material as the plaintiff may consider necessary;
 full address, including e-mail, fax and telephone number of all the
claimants and defendants to the extent known to the plaintiff;
Further, the Bill lays down the following:a) The defendants shall, within a period of one month from the date of
receipt of the copy of the plaint along with all the relevant documents
file his written statement along with all documents except copies of
plaint referred to;
b) The defendants shall, along with the written statement, also file
counter-claim, if any, along with all documents except the copies of
plaint or documents ;
c) The defendants shall also send copies of written statement and all
documents filed along with the written statement, to the plaintiff;
d) The plaintiff shall, at the time of trial, file affidavit containing evidence
in examination-in-chief of other witnesses, if any;
e) The plaintiff may, within fifteen days of service of the written
statement, apply to the Commercial Division for granting leave for
filing of rejoinder;
f) The plaintiff shall file rejoinder within one month from the date of the
order of the Commercial Division granting leave to file such rejoinder;
g) Where the Commercial Division allows any application for discovery of
documents, the plaintiff and the defendants, as the case may be, shall
be permitted to file supplementary statements, within a period as may
be specified by the Commercial Division;
h) For the purposes of recording of statements in cross-examination and
re-examination of parties and witnesses, the Commercial Division may
appoint an advocate not less than twenty years standing at Bar or a
Judicial Officer not below the rank of Senior Civil Judge as
Commissioner;
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, crossexamination of witnesses, filing of written statements and oral submissions,
record evidence and appoint Commissioners. Further, all parties must file the
written submission before commencement of oral submissions.
Such Commercial Division is required to pronounce the judgment within 30
days of the conclusion of the argument and an appeal shall lie to the
Supreme Court against any decree passed by the Commercial Division.
ii.
Critique
The above proposals contained in the Bill are aimed to allow a fast-track
procedure for the disposal of the cases and are a step in the right direction. The
Bill is currently pending before a Joint Parliamentary Committee. The Committee
received a number of representations from its relevant stakeholders including
lawyers/law-firms and also invited representations from these to make
submissions before it. Some of the criticisms voiced against the Bill include the
following:a) With reference to Section 2 of the Bill, the definition of “commercial disputes”
needs to be re-examined as it ignores significant types of contractual and
commercial disputes such as disputes arising out of or related to joint
venture agreements.
b) The incorporation of “intellectual property” into the definition of commercial
disputes does not seem to be appropriate as it gives rise to the following
issues:(1) All IP disputes which go to court need not be based on any commercial
relationship but are rather a result of infringement of statutory or legal rights
not founded in any contract.
(2) There would be an eminent problem regarding the valuation of the
subject-matter of disputes in cases of intellectual property in light of the fact
that valuation of IP is still ambiguous in India.
(3) Mostly Intellectual Property suits pertain to Permanent and Mandatory
Injunctions and/or Damages, which the aggrieved person seeks from the
infringer, and such suits usually would not come under the purview of such a
high pecuniary jurisdiction of the Commercial Division.
(4) The skill sets required for dealing with IP matters are very specific and
ideally ought to be dealt with by specialist IP Divisions.
c) The judicial structure as envisaged by the Bill proposes only one appellate
authority namely the Supreme Court. On the other hand, insignificant
commercial disputes would have at least two if not three appellate levels.
d) The expression ‘market value’ of immoveable property contained in Section
8(1)(d) of the Bill is ambiguous and amenable to dispute because of which
market valuation should not be a mandatory statutory requirement.
100
e) With reference to the fast track procedure outlined in Section 9(2)(a) of
Bill, in our view, the same is contrary to the principles of natural justice.
instance, the provision requires that at the time of filing of the suit
plaintiff should file “Brief issues that are likely to arise”. Doing so before
defendant lays out his case is impractical.
the
For
the
the
f) Sections 11 and 12 of the Bill propose a complete transfer of all cases falling
within the pecuniary jurisdiction of the Commercial Division. Such a transfer
would in all practicality over-burden the existing infrastructure of the High
Courts. This issue can be tackled to a great extent by a procedural change to
the effect that from a specified date only new commercial disputes are to be
filed in the Commercial Division. The older pending matters may continue to
be dealt with by the earlier courts that could be directed to deal with them on
an expedited basis.
iv.
MISCELLANEOUS
The Bill has also faced some strong opposition from retired Supreme Court
Justice V. R. Krishna Iyer and Senior Counsel Prashant Bhushan both of whom
questioned the constitutional validity of the Bill.
According to Justice V.R. Krishna Iyer the Bill was contradictory to the provisions
of Article 14 of the Indian Constitution relating to fundamental right of equality
as it was based on the principle of facilitation in favour of the richer among
litigants. He states – “To divide social justice into two categories, the rich being
given special facilities for early justice and the not-so-rich being forced to wait is
violative of Article 14…….. The legislation classifies litigation into two categories.
The poor litigant will wait for the somnolescent process and leisurely
pronouncement and the wealthy litigant will have his case speedily terminated.
If this be the differentiation, it is horrendous and outrageous in a socialist
democracy.”
v.
CURRENT STATUS
It is difficult to estimate when the Commercial Division of High Courts Bill will
come into force. For the moment, the Bill has been passed by the Lower house
of Parliament and is expected to be debated and voted upon by the Upper House
of Parliament later this year.
Notwithstanding the above, it is hoped that the Commercial Division of High
Courts Bill, will ultimately withstand the constitutionality of the Indian laws and
other criticisms in order to facilitate the introduction of further case
management procedures in India.
O.
AUSTRALIA
The following information is taken from the Australian Notice to Practitioners
– Directions for the Fast Track List
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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 may be cited as the "Fast Track List Directions."
These Directions shall operate concomitantly with the Federal Court Rules.
That is, the judges will administer cases in the Fast Track List in accordance with
these Directions.
2.
Eligible Proceedings
The proceedings that can be entered on the Fast Track List are proceedings
arising out of or relating to:
(a)
(b)
(c)
(d)
(e)
(f)
commercial transactions;
an issue that has importance in trade or commerce;
the construction of commercial documents;
an issue that has importance in personal insolvency;
intellectual property rights apart from patents;
such other commercial matters as the presiding judge may direct; but
excluding proceedings –

that would otherwise be allocated to the:
i.
ii.
iii.

3.
admiralty panel;
corporations panel;
taxation panel.
the trial of which is likely to exceed eight (8) days.
Time
a.
Reckoning
In calculating the time provided for by these Directions or by the
Federal Court Rules or by any order fixing, extending or abridging time, the
period from 24 December to 2 January next following is excluded. The
period from 3 January to 14 January shall, unless otherwise ordered, be
included.
4.
Commencement of Fast Track Proceedings
a.
Commencement by Application
Except as otherwise provided in these Directions, proceedings shall be
commenced in the Fast Track List by the filing of an application clearly marked
102
"FAST TRACK LIST APPLICATION" in the upper right-hand corner of the first page of
the application.
b.
Commencement by Agreement
If all parties to an existing case agree that the case would be appropriate for
the Fast Track List and the case is eligible for entry, the parties may, by agreement,
move the case to the Fast Track List.
c.
Commencement by Judicial Referral
If, either on his or her own motion or at the request of one of the parties, a
judge forms the view that a case could be fairly and adequately resolved on the
Fast Track List, the judge may, after consultation with a judge who is a member of
the Fast Track List panel, order that the case be transferred to the Fast Track List.
d.
Removal
If, either on the judge's own motion or at the request of the respondent, a
judge who is a member of the panel forms the view that a case in the Fast Track
List would be more appropriately dealt with otherwise than in the list, the judge
may order that the case be removed from the list.
5.
Case Summaries
a.
Pleadings
There will be no pleadings. Instead, there will be statements of a party's
claim or cross-claim, points of defense and points in reply (collectively referred to
as "case summaries").
b.
Case summaries
All case summaries shall, avoiding undue formality, state in summary form:
(1)
(2)
(3)
(4)
(5)
the basic elements of the party's claim or defense, as the case may
be;
where applicable, the relief sought;
the issues which the party believes are likely to arise;
the principal matters of fact upon which the party intends to rely; and
the party's contentions (including the legal grounds for any relief
claimed) and the leading authorities supporting those contentions.
c.
Times For Filing And Service Of Fast Track Case
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Summaries
(1)
(2)
(3)
(4)
(5)
Application and statement of the applicant's claim – The application
and a statement of the applicant's claim shall be served upon the
respondent within seven (7) days of filing the application.
Points of Defense and Cross-claim – Points of defense and any
statement of cross-claim against the applicant shall be filed and served
within thirty (30) days after service of the statement of the claim.
Cross-Claim against third party – Any statement of cross-claim against
a third party shall be filed and served within five (5) days after service
of points of defense.
Defense to Cross-Claim – Where a statement of cross-claim is served
and the cross-respondent is already a party to the action the crossrespondent shall file and serve points of defense to the cross-claim
within ten (10) days after the service of the cross-claim. Where the
cross-respondent is not already a party to the action the crossrespondent shall file and serve points of defense to the cross-claim
within twenty-one (21) days after the service of the cross-claim.
Reply - Where a respondent or cross-respondent serves points of
defense to which a reply is needed, the applicant or cross-claimant, as
the case may be, must file and serve points in reply within five (5)
days after service of points of defense.
d.
Non-Compliance
Failure to adhere to the foregoing requirements may result in removal of the
case from the Fast Track List, adverse costs orders or, in an extreme case,
dismissal of the claim or rejection of the defense.
6.
Initial Directions Hearing / Scheduling Conference
a.
Date for Scheduling Conference
An initial directions hearing, which shall be known as the "Scheduling
Conference", shall be set down not less than forty-five (45) business days from the
date of the filing of the application. In urgent cases the Scheduling Conference
may be set down earlier.
b.
Endorsement
The date for the Scheduling Conference shall be obtained from the Registry,
and shall be stated on the application.
c.
Attendance
The lawyers acting for each party are expected to attend the Scheduling
Conference.
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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
f.
Fixed Trial Date
At the Scheduling Conference the presiding judge will set a trial date for the
case which, except in urgent cases, shall be between two (2) and five (5) months
from the date of the Scheduling Conference, depending on the relative complexity
of the case. Urgent cases will be heard on shorter notice. The judge will also
determine whether the trial will be a "trial by affidavit" or whether it will be a "trial
by witnesses" with summaries of the expected evidence of each witness.
g.
Pre-trial Schedule
With the assistance of the lawyers, the presiding judge will establish a pretrial schedule for all interlocutory steps needed to bring the proceeding to trial to
which the parties shall strictly adhere, including (when appropriate) a time by which
the parties shall submit to and attempt mediation. Failure to adhere to the
timetable may result in sanctions, including adverse costs orders, rejection of late
filings, removal from the Fast Track List and, in exceptional cases, dismissal of the
claim or rejection of the defense.
h.
Pre-trial Exchange of Affidavits
For the purposes of pre-trial scheduling, the applicant shall be responsible for
first providing copies of all witness affidavits or summaries of evidence to the
respondent. The respondent shall have time to review the affidavits or summaries
of evidence and then shall provide copies of any witness affidavits or summaries to
the applicant. Exact dates will be set by the presiding judge in the Pre-trial
Scheduling Order.
i.
Notification of Opposition
105
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
Applications for adjournment of a trial or other hearing date shall not be
granted on the mere agreement of the lawyers. No adjournment will be granted
other than for good cause and upon such terms as the Court may impose.
7.
Discovery
a.
Limited Discovery
Except where expanded or limited by the presiding judge, discovery in cases
in the Fast Track List will, as regards liability, be confined to documents in the
following categories:
(1)
documents on which a party intends to rely; and
(2)
documents that have significant probative value adverse to a party's
case.
b.
(1)
(2)
(3)
Reasonable Search Effort
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.
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.
If requested by any party, a party must describe briefly the kind of
good faith proportionate search it has undertaken to locate
discoverable documents.
c.
Additional Discovery
A party may require additional discovery in relation to discrete issues, such
as the quantification of damages. In that event the judge will make a separate
order for that purpose. The order may include a requirement that discovery be by
inspection alone.
106
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.
9.
Interlocutory Applications / Motions
a.
Briefs Required
Interlocutory applications, whether or not made by motion shall, unless
otherwise directed, be in writing and shall be accompanied by a written brief (not
exceeding five (5) pages) setting forth a concise statement of the facts (if
necessary verified by affidavit) and supporting arguments, with a citation of the
authorities upon which the moving party relies. The opposing party shall file a
responsive brief (not exceeding five (5) pages) and such supporting documents as
are appropriate within five (5) days after service of the moving party's brief. The
moving party may file a short rebuttal brief within two (2) days after service of the
opposing party's response brief.
b.
Exceptions to Brief Requirement
Briefs need not accompany applications for simple directions.
c.
Determination of Applications Without Oral Hearing
If a party would like to be heard orally on any interlocutory application, the
party may request an oral hearing. The request will be granted in applications for
injunctions or the appointment of receivers. Otherwise, oral hearings will only be
granted where the judge determines that an oral hearing would specifically add to,
or further clarify or explain, the issues and arguments in a way that the written
briefs cannot. An oral hearing will probably be unnecessary in most instances.
d.
Extensions of Time
A request for an extension of time relating to an interlocutory application
must be in writing and, in general, will be looked upon with disfavour.
10.
Pre-trial Conference
107
a.
Time of Pre-trial Conference
A pre-trial conference shall be held approximately three (3) weeks prior to
the scheduled trial date with the presiding judge, the lawyers involved in the case
and all parties attending. The pre-trial conference is an opportunity for the parties
and the judge to deal with any outstanding matters or applications before the start
of the trial.
b.
Agreed Facts
At the pre-trial conference the parties will be required to identify the material
facts that are agreed and the material facts in dispute.
c.
Final Witness List
At the pre-trial conference, the parties will, with the assistance of the
presiding judge, finalize the list of witnesses to be called at trial. The judge may
refuse permission to a party to call a potential witness. The judge reserves the
authority to revisit the final witness list at any time to discuss any issues or
concerns arising during the trial. Witnesses that are not on the final witness list will
not, save in exceptional circumstances, be permitted to give evidence.
d.
Objections To Evidence
At the pre-trial conference the parties should be ready to deal with any
objections to the evidence proposed to be tendered. The judge will rule on those
objections, unless they are more conveniently dealt with at the trial.
e.
Joint Exhibit List
At the pre-trial conference, the parties will jointly submit a numbered list of
the exhibits the parties intend to use at trial. The list will include a copy of the
exhibit and, where not obvious, a short description of the exhibit and a statement
of its relevance. The judge will examine the list with the parties and discuss any
perceived issues or concerns with the proposed exhibits. The judge reserves the
authority to revisit the joint exhibit list at any time to discuss any issues or
concerns arising during the trial. Exhibits that are not on the joint exhibit list will
not, save in exceptional circumstances, be permitted to be tendered at trial.
f.
Trial Length
At the pre-trial conference, based on the legal and factual issues raised by
the case and based on the number of witnesses to be called, the judge will
determine the total time that each party will be allocated at trial to present its case,
with due allowance being made for questions from the presiding judge. Each party
shall receive a fixed block of time for its oral submissions; a fixed block of time to
present its case-in-chief, cross-examination, and any re-examination; and a small
amount of flexible time to be used as needed. It shall be counsels' responsibility to
determine how to allocate and best use each party's available time. When a party's
108
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
A party may in substitution for or supplementary to its closing submission,
file a written submission. The written submission shall not exceed 15 pages. It
shall include each finding of fact that the party contends should be made and,
where appropriate, references to the evidence that supports that finding. The
submission shall be filed with the Court and served on all other parties in a short
case within two (2) days and in a long case within four (4) days of the conclusion of
the trial. For the purposes of this rule only, trials concluding on Thursday or Friday
will have any further submissions due on the Tuesday immediately following. In an
exceptional case a party may be given permission to file an answering submission.
12.
Judgment
In urgent matters the Court will deliver judgments quickly, if necessary with
reasons to follow. In all other cases, the Court will endeavour to deliver judgment
within six (6) weeks.
109
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.
As the Brazilian Patent and Trademark Office is located in Rio de Janeiro,
most suits involving the BPTO are filed before the Federal Courts of Rio de Janeiro.
Even though both the Federal Courts as well the State Courts of Rio de Janeiro are
specialized in intellectual property, there have been no rules implemented to
accelerate the proceedings or to streamline the management of procedures.
Even though Brazilian trademark owners would very much appreciate
improvements in trademark enforcement before Brazilian courts and tribunals, such
as reducing litigation costs and reducing the length of time cases remain pending,
most of the Model Case Management Procedures described on pages 9-13 of this
study are not applicable to Brazil.
First, according to the Brazilian rules of civil procedure, never will a
trademark case be submitted to a jury trial - only criminal offenses that result in
the death of a person are subject to a jury trial. Second, as it happens in most civil
law countries, we do not have discovery procedures. Third, in Brazil, as commented
above, the deadlines available for the parties to present their briefs and motions
are already strict enough. Fourth, the analysis of the liability and the assessment of
damages (when applicable) are already divided in two phases, liability being
established first. Therefore, a trademark owner’s main goal, which is to stop the
infringement, can be accomplished earlier.
110
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).
The idea of encouraging the parties to “discuss use of alternative dispute
resolution (ADR) procedures, such as mediation, arbitration, and early neutral
evaluation” after court procedures have been initiated are likely to fail since the
bulk of the fees charged by trademark attorneys are paid for studying and
preparing the case prior to its submission before courts. Hardly will the plaintiff
agree to turn to ADR after he/she has paid a considerable amount of money to see
his/her case filed in court.
According to the Brazilian rules of civil procedure, there is an opportunity for
the parties to settle after court procedures have been initiated, at the so-called
“conciliatory hearing”. For the purposes of preparing the parties for the “conciliatory
hearing”, which takes place before the judge, I believe number 5 of the General
Management Rules would be very helpful. Indeed, the idea of summarizing each
parties’ arguments, more clearly show their weaknesses and strengths and
enhances the chances of leading to an amicable solution.
In order to be applicable to Brazil, there are only two minor changes to be
promoted to the original text:
8.
Ten (10) days prior to the scheduled and case management
conference conciliatory hearing, the parties shall be required to submit:
(a)
(b)
i.
ii.
iii.
iv.
v.
vi.
vii.
viii.
ix.
x.
xi.
(c)
(d)
(e)
a short and plain summary of the issues in the case,
their respective, preliminary positions on each issue, specifically, and
at minimum:
ownership / validity of the plaintiff’s mark,
priority of registration and/or use,
significance of concurrent use, if any,
plaintiff’s damages, if any
similarity of the marks,
similarity of the goods and/or services,
strength of the plaintiff’s mark,
evidence of actual confusion,
defendant’s intent,
channels of trade in which the goods/services move, and
sophistication of the purchasers
the proof that is required on each issue,
the discovery that will be needed on each issue,
the witnesses that may be called with respect to each issue, and
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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.
The submission contemplated herein is not intended to be an exhaustive treatment
of the issues in the case. Rather, the submission, not to exceed ten (10) pages,
should merely briefly outline each party’s case so that the other party understands
the issues to be determined at trial and the other party’s general position of the
same. One of the goals of this exercise is to facilitate settlement.
Q
ISRAEL
The Israeli law does not contain specific provisions dealing with the
management of trademark-related cases, as distinct from the management of civil
actions in general. Nevertheless, Israeli law and practice contains provisions that
assist in furthering and expediting proceedings. These provisions equally apply to
trademark cases. Referred below are the relevant provisions.

In many cases, the Court recommends that the parties refer to
alternative dispute resolution mechanisms, such as arbitration,
mediation and empowering the court to award a judgment by way of
settlement (namely – without reasoning). However, in practice, such
alternative mechanisms are hardly used in trademark-related cases.

Regulation 369 of the Civil Law Procedure Regulations, 1984 (“the
Regulations”) empowers the Court with the authority to order that
the time for hearing an action to be advanced, instead of hearing an
application for provisional remedies filed in the framework of such
action, if the Court concluded that this can make the hearing more
effective and save the Court's and the parties' time. In practice, this
Regulation is more often applied in patent-related cases rather than
trademark cases.

Subject to the parties' consent, the Court may order that the
decision in an application for provisional remedies will serve as a
judgment in the main action. In practice, the parties tend to agree to
such procedure, as in any case, most trademark-related cases are
determined de facto according to the decision in the application for
provisional remedies.

According to Regulation 373 of the Regulations the Court shall
render its decision in the application for provisional remedies when
the hearing of the application ends, and at latest within 15 days after
the hearing ended.

There is no automatic right of appeal on a decision rendered in an
application for provisional remedies and a leave to appeal must first
be requested.
112

Regulation 241(d) of the Regulations entitles the Court to render a
decision based on the written application and any response thereto,
without the need for cross-examining the affiants on behalf of the
parties. However, in case that a party insists on cross examinations,
the court must accede to such request.

According to the Trade Marks Ordinance [New Version], 1972 a
trademark's registration certificate constitutes prima facie evidence
as to the validity of the trademark. Based on this provision, it was
held in case law that where an application for interim remedies is
based on a registered trademark, the court will usually not deal with
the issue of the validity of a trademark in such stage.

In addition, the Courts tend to limit the scope of examinations,
arguments and summations, and thus contribute to expedite the
proceedings.
113
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.
2.
Procedures in trade mark matters - overview
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.
In the event the infringement of a registered trade mark, or of a trade mark
which is entitled to protection under the Paris Convention as a well-known trade
mark, relief may be sought from any High Court having jurisdiction (competence)
to hear the matter. The High Court may also be approached for relief for the
unauthorised use of a mark which has not proceeded to registration on the basis of
the laws of “passing off.”
b.
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
114
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.
The conduct of Court proceedings in South Africa is regulated in accordance
with the Uniform Court Rules. These rules are applicable in all divisions of the High
Court and are often supplemented by practice directives which may vary from
division to division. The purpose of these directives is to speed up the litigation
process.
c.
Case 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.
Arbitration and mediation is available to parties to a dispute, but only by
agreement. Although Judges are empowered to explore the possibility of referring
the matter to alternative dispute resolution, the Courts play no role in arbitration
and mediation and these mechanisms are used only if both parties have agreed
that dispute resolution will be resolved in this way in a prior written agreement or
if, after the dispute arises, both parties indicate their preference to take the
arbitration route. This happens very seldom in trade mark disputes.
3.
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.
4.
Procedure Before the Trade Marks Registrar
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).
The Opponent is required to file a Notice of Opposition in which its grounds of
opposition are briefly set out and this notice is accompanied by an Affidavit setting
forth and providing evidence in support of the grounds of opposition.
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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.
b.
Closing of Pleadings and Hearing
As soon as the evidence has been filed, the Pleadings will close and the
matter will be set down for a hearing before the Registrar of Trade Marks.
Unfortunately, due to a backlog at the Trade Marks Office, delays of several months
are currently being experienced before an actual hearing date is allocated.
Once a hearing date has been allocated, counsel (which is the South African
equivalent of a barrister) will be required to prepare and file heads of argument
(based on the papers filed and the relevant case law) 10 days prior to the hearing
date.
The matter is argued before the Registrar on the papers filed. There are no
witnesses or cross-examination and there are no prescribed conferences between
the parties.
c.
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.
5.
High Court Proceedings
Proceedings before the High Court of South Africa are heard before a Judge South Africa does not have a jury system. Because South Africa subscribes to an
adversarial system of law where the role of the Court is primarily that of an
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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.
It is possible to bring both forms of proceedings, for example an Application
for an interdict against infringing activity, which will be heard by the Court
relatively quickly, and then an Action for damages resulting from such
infringement.
These two proceedings are dealt with in more detail in sections 6 and 7
below. The distinction between the Action and Application procedures and the most
important differences are briefly indicated below:
APPLICATION
ACTION
Parties are called Plaintiff and Defendant.
Parties are called Applicant and
Respondent.
Deals primarily with a substantial factual
dispute.
Dispute is of such a nature that it can be
dealt with on the papers before the
Court.
Commences with the issuing of Summons
by the Plaintiff.
Commences with the issuing of a Notice
of Motion and supporting Founding
Affidavit by the Applicant.
Further Pleadings are exchanged by the
parties and include:
Further Affidavits are exchanged,
including:
-
The Defendant’s Plea (response)
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-
Opposing Affidavit by the
APPLICATION
ACTION
and counterclaim;
-
The Plaintiff’s Reply to the
Defendant’s Plea; and
-
The Plaintiff’s Plea to the
Defendant’s Counterclaim.
Respondent; and
-
The Replying Affidavit (if
applicable) by the Applicant.
After the exchange of Pleadings, a stage
called the preparation for trial follows.
Certain preparatory steps are then taken
such as the discovery of documents and
expert notices.
There is no written preparation for trial
stage.
The Action procedure ends in the trial
Court where mainly oral evidence by the
parties and their witnesses is presented.
The Application procedure ends in the
motion Court. In principal no oral
evidence is presented and the parties do
not testify. The case is argued by the
parties’ legal representatives on the
papers before the Court.
6.
Application Proceedings
a.
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.
b.
Closing of Pleadings and Hearing Date
If either of the parties fails to file the required documents within the
prescribed periods, the other party may apply for a hearing date within 5 days of
the date on which the other party was required to file the relevant document.
Once the aforementioned documents have been filed, Pleadings close and the
Applicant may apply for a hearing date within 5 days.
If the Applicant fails to apply for a hearing date within the prescribed period
the Respondent may apply for a hearing date immediately on expiry of the time
allowed for the Applicant.
Once again, as with proceedings before the Registrar, any of the
aforementioned time periods may be extended with the consent of the other party
and, if the other side refuses to consent to the extension, the party requiring an
extension must apply to the High Court for condonation.
A hearing date is allocated immediately based on the nature of the
proceedings and depending on the backlog at the High Court. Hearing dates in
opposed matters are currently expected to be between 9 months and one year from
the date of requesting the hearing date.
Once a hearing date has been allocated, an advocate (which is the South
African equivalent of a barrister) will be required to prepare and file heads of
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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.
There is no obligation on a Judge to hand down Judgement within a specific
time period, but the High Court Judges endeavour to hand down judgments as soon
as possible, and have, on occasion, been known to do so immediately on conclusion
of the hearing of an Application. However, delays of at least several months are
also being experienced before a judgment is received.
d.
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.
(1)
The Summons
The Action commences with the issuing of a Summons by the Plaintiff,
accompanied by the Particulars of Claim, which sets out the basic cause of Action
and relief sought.
The Summons is a process of Court that is drafted signed and stamped by
the Plaintiff or his attorney and is issued by the Registrar or the Clark of the Court,
as the case may be, wherein the matter is allocated a case number, and served on
the Defendant by a Sheriff.
The Summons is issued at the High Court in order to obtain a case number
and to open an official file at the High Court. Once the case number has been
obtained the document must be served by a Sherriff on the Defendant.
(2)
Defence
(I)
The Defendant has 10 days from the date of service to file its Notice of
Intention to Defend.
(II)
If the Defendant fails to file its Notice of Intention to Defend within the
prescribed time period, the Plaintiff may request the Court to grant
Default Judgement.
(III)
If the Defendant files its Notice of Intention to Defend, it has 20 days
within which to file its Plea. The Defendant sets out its defence to the
Plaintiff’s claim in the Plea, which is a paragraph by paragraph Reply
on the merits of the Plaintiff’s claim as set out in the Summons.
(iv)
If the Defendant brings a counter claim against the Plaintiff, the
Counterclaim will accompany the Plea. This is often referred to as a
Claim in Reconvention and the Plaintiff acts as the Defendant in
reconvention and vice versa.
The Plaintiff has 15 days from the day of service of the Defendant’s Plea to
deliver its Replication (if necessary).
The Plaintiff must respond to any
Counterclaim by filing a Plea, which is referred to as a Plea in reconvention
(essentially the Pleading procedure will then fall into two categories, the first being
the main Pleading in relation to the Plaintiff’s Claim in Convention and secondly the
ancillary Pleading based on the Defendant’s Claim in Reconvention).
Further Pleadings may be delivered by either party within 10 days but are
seldom required in practice.
(3)
Closing of Pleadings and Trial Date
Once Pleadings have closed, the matter will be set down for trial but the trial
date will once again depend on the backlog at the High Court.
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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.
Unlike Application proceedings, discovery of documents in Action proceedings
is mandatory and documents which have not been discovered cannot be relied upon
at the trial.
(5)
Notice of Expert Evidence
Generally a witness’ opinion will be inadmissible, however, an expert’s
opinion will be allowed in circumstances where the expert has specific knowledge in
a field that is outside the knowledge of the Court. A party wishing to call a witness
to give evidence as an expert must, not less than 15 days before the hearing,
deliver a notice of its intention to call such a witness and, not less than 10 days
before the hearing, deliver a summary of the expert’s opinion with the reasons
therefore to its opponent.
(6)
Pre-Trial Conference
(i)
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.
The purpose of such a meeting is to attempt to negotiate agreement on some
of the issues, particularly administrative details, in order to shorten the length of
the trial.
(i)
After a date for the trial has been set and a notice thereof has been
delivered to the Defendant, the Plaintiff is required to deliver a notice
to the Defendant indicating the date, place and time for a Pre-Trial
Conference,
(ii)
Furthermore, in Action proceedings there is a mandatory Pre-Trial
Conference. Relevant provisions regulating the Pre-Trial Conference
are set out in the paragraphs below.
Each party shall, not later than 10 days prior to the Pre-Trial Conference,
furnish every other party with a list of:
(i)
the admissions which it requires;
(ii)
the enquiries which it will direct and which are not included in a
request for particulars for trial; and
(iii)
other matters regarding preparation for trial which he will raise for
discussion.
The minutes of the Pre-Trial Conference shall be prepared and signed by or
on behalf of every party and the following shall appear therefrom:
(i)
The date, place and duration of the conference and the names of
persons present;
(ii)
if a party feels that he is prejudiced because another party has not
complied with the rules of Court, the nature of such non-compliance
and prejudice;
(iii)
that every party claiming relief has requested his opponent to make a
settlement proposal and that such opponent has reacted thereto;
(iv)
whether any issue has been referred by the parties for mediation,
arbitration or decision by a third party and, on what basis it has been
referred;
(v)
whether the case should be transferred to another Court;
(vi)
which issues should be decided separately;
(vii)
the admissions made by each party;
(viii)
any dispute regarding the duty to begin or the onus of proof;
(ix)
any agreement regarding the production of proof by way of an
Affidavit;
(x)
which party will be responsible for the copying and other preparation
of documents; and
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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.
(xi)
(ii)
Court practice
In certain divisions such as the South Gauteng High Court (sitting in
Johannesburg) no trial date will be allocated without signed minutes of a Pre-Trial
Conference.
The practice directive for the South Gauteng High Court has set the following
case management standards and procedures applicable within its jurisdiction:
1.
Any party to a trial who is of the opinion that by reason of its
complexity, long duration or any other reason, the trial requires case
management, shall deliver a letter to the registrar marked for the
attention of the Deputy Judge President. The letter must set out:-

the names of the parties to the trial and the case
number;

the nature of the dispute;

an estimate of the probable duration of the trial,

the reason why that party is of the opinion that the
trial requires case management.
2.
Any party who is in receipt of such letter and who wishes to make
representations in respect thereof may do so forthwith delivering a
letter to the registrar marked for the attention of the Deputy Judge
President. A copy of the letter must be delivered to all other parties to
the trial and proof thereof must be provided
3.
The Registrar will advise the parties of the outcome of the request.
4.
In the event of the request for case management being granted, the
Deputy Judge President shall appoint a Judge to undertake the case
management of the trial.
5.
On the appointment of the Judge aforesaid:

all interlocutory Applications relating to the trial, will,
as far as possible, be heard by that Judge.
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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.
(iii)
Role of the Judge
A Judge, who need not be the Judge presiding at the trial, may, if he deems
it advisable, at any time at the request of a party or mero motu, call upon the
attorneys or counsels for the parties to hold or to continue with a conference before
a Judge in chambers and may direct a party to be available personally at such
conference.
The Judge may, with the consent of the parties and without any formal
Application, at such conference or thereafter give any direction which might
promote the effective conclusion of the matter including the granting of
condonation.
Although there is lack of uniformity in conducting Pre-Trial Conferences,
different division of the Courts encourages – through practice directives – for
litigants to approach the Courts for relief with genuine triable issues.
Various commentators are calling for a comprehensive procedural structure
with active involvement by the Judges which will allow efficient pre-trial procedures
and ultimately fair civil trials.
(iv)
Costs Consequences
At the hearing of the matter, the Court shall consider whether or not it is
appropriate to make a special order as to costs against a party or his attorney,
because he or his attorney:
(i)
did not attend a Pre-Trial Conference; or
(ii)
failed to a material degree to promote the effective disposal of the
litigation.
(v)
Trial
The trial process is actively controlled by the parties and their legal counsel.
The proceedings are recorded on tape so as to record the evidence, arguments and
judgment.
The various phases of the trial are usually:
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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, crossexamination 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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