Justice in the field of protection of intellectual property rights
mission and objectives
Overview of practice of Intellectual property
related dispute resolution in the European Union
Elisabeth Logeais (France) UGGC Avocats
Design Rapporteur of the ICC Intellectual Property Commission
International Conference , 22 April 2013 , MOSCOW
SPECIALIZED COURT SYSTEM
 The EU framework : harmonized general rules for
determination of jurisdiction and applicable law
 2000 : Brussels Regulation on jurisdiction and enforcement of civil &
commercial judgments
 Art. 5: Special jurisdiction rules depending on the substance of the matter
torts → courts for the place where the harmful event occurred or may occur
contract matters → courts for the place of performance of the obligation in
question
 Art. 23 : a choice of jurisdiction clause is possible for disputes arising from a
specific legal relationship
 Art. 33 & al : a judgment given in a Member State is recognized in the
others
Member
States
without
any
special
procedure
 2007 : Rome II Regulation on law applicable to non-contractual obligations;
Art. 8 on infringement of IPRs : the applicable law = law of the country where
protection is claimed or for community IPRs, the law of the country in which the
act of infringement was committed
SPECIALIZED COURT SYSTEM
 The EU framework : focus on EU wide IPRs and improved
enforcement
 1993 Community Trademark Reg (now codified 2009 CTM reg.) : one single
trademark title throughout the EU with specialized court (s) in each member State
having exclusive jurisdiction for all infringement actions and counterclaims for
revocation or declaration of invalidity
 2001 Community Design Reg. (registered and non registered designs) : specialized
courts designated in a similar fashion as in the CTM reg.
 2004 IPRS Enforcement Directive : provides harmonized proceedings, measures
and remedies to protect IPRS before Member States courts
 2013 Unitary Patent Court : Court of First Instance (Central division with seat in
Paris and 2 sections in London and Munich as well as local and regional divisions) +
Court of appeal in Luxemburg
STATISTICS OF IP DISPUTES ADDRESSED BY THE EU
COURT SYSTEM*
 Court of Justice
 General Court
Completed cases in IP (2007-2011)
Completed cases in IP (2007-2011)
Number of cases
pending
December 31, 2011
361
New cases of IP (2011)
% of IP appeals decisions (2007-2011)
*mainly actions relating to CTMs for the General Court and preliminary rulings for the
Court of Justice. In 2011, IP related cases represented 30% of civil and commercial
litigation before the EU General Court (source : www.curia.europa.eu , annual report )
SAMPLE IP COURT ORGANIZATION
 French IP courts system
 10 specialized courts of first instance having exclusive jurisdiction on litigation
of IPRs + court of appeals + one High Court (Cour de cassation). Infringement
and counterclaims for nullity of the IPR are decided by same court.
 Paris court solely competent for French patents, community trademarks and
designs, and will be the seat of the central division for the Unitary Patent .
 Non IP specialized criminal courts for IP offences and residual competence of
labor and administrative courts
A 2011 report assessing the implementation of the enforcement Directive mentions
3641 IP related decisions of first instance rendered in 2009 (out of which 1802
involving patents and trademarks).
Average duration until a decision of first instance : between 15 and 22 months.
Thoughts of a fast-track IP channel for smaller cases. Limitation of the number of
pleas. Quick injunctions are available and efficient.
Mediation is rarely used. Arbitration clauses are
agreements where confidentiality matters : leaves
provisional measures ordered by national courts (In
heard 46 IP cases (39 on TM/patent licensing, 3 cases
related cases )
found in complex licensing
room to some interim and
2012, ICC Arbitration court
on know-how and 4 other IP
SAMPLE IP COURT ORGANIZATION
 English IP courts system

– The UK Patents County Court (PCC) has jurisdiction for patents, trademarks, designs and
copyrights disputes. The reform in force since October 2010 focused on cheaper and
quicker justice for IP disputes where damages to be awarded shall not exceed 500 000 £.
– Key features of the PCC proceedings are : the costs cap of 50 000 £ (which is the
maximum costs incurred by the winning to be borne by the loosing party) and the case
management conference with reduced length of hearings (2 days).
– 50 cases reported to have been decided in 2012 : 40 % TM, 25 % copyright, 20 % patents,
13 % designs (source : Managing IP magazine April 2013)
– A “Small Claims Tracks” opened in October 2012 for claims up to £5,000.
German IP courts system
– IP cases are handled by civil courts(Landgericht) and some courts are specialized in
particular for patent infringement (Mannheim, Düsseldorf) and one court (Munich) for
patent validity.
– Key features of German IP litigation are : bifurcation , a quick and easy grant of injunctions,
limited time to reach a first decision (10 to 18 months) and specialized technical judges.
 A general trend and effort to facilitate speedy, reliable and affordable court resolution of IP
disputes
EVIDENCE COLLECTION AND ASSESSMENT
 Articles 6-8 of IPR Enforcement
Directive : Wide
empowerment of courts to order measures for preserving
evidence , subject to compliance with the following principles :
protection of confidential information, bond posting to prevent
abuses, possibility of revocation of the order granting such
measures.
 Two main innovations introduced by the Directive : (i) the
procedure of “seizure-infringement”
after the French
practice and (ii) the new “right of information” on the origin
and distribution networks of infringing goods and services
MEASURES FOR PRESERVING EVIDENCE OF
INFRINGEMENT

“Saisie-contrefaçon”
in French (seizure-infringement)
 Efficient ex-parte order granted by the judge upon request of the IPR holder willing to
seize evidence hold by the alleged infringer or a third party
 The authorized IPR holder sends a bailiff, accompanied as the case may be by a patent
agent and the police, to visit the premises of a company where evidence of infringement of
his IPR is likely to be found
 Golden rule : the seizure operations must be carried in strict compliance with the terms of
the court order, subject to revocation of the order or cancellation of the operations (bailiff’s
report and products + documents seized cannot be used as admissible evidence of
infringement on the merits). In particular, seizure of confidential information must be
“organized” by the order and anticipated anyway on the spot of the operations
 The IPR holder must bring an infringement action on the merits within 20 working days or
31 calendar days, failing which the evidence collected during the seizure will be denied all
evidentiary weight

A very efficient mean to collect infringement evidence, which has been extended to all IPRs
(patent, trademarks, copyright, designs, also in France to indication of origin…)
MEASURES FOR PRESERVING EVIDENCE OF
INFRINGEMENT
 Right of information
 Article 8 of IPR Enforcement Directive : Courts have the power to order, upon
a justified and proportionate request of the claimant, that information on the
origin and distribution networks of infringing goods or services is
provided by the infringer and/or any person who was found in possession
of the infringing goods or using the infringing services or providing
services used in infringing activities, on a commercial scale .
 This right of information is incorporated into French IP code, yet without
reference to the concept of “commercial scale ” and with the safeguard provision
that the supply of the relevant information (names of producers, manufacturers,
distributors, suppliers , etc , quantities and prices) may not be ordered if there is
a “legitimate impediment”.
 The prevailing approach in French courts is now (i) to admit that this right of
information can be exercised before infringement is decided by the court and (ii)
to resent to authorize this right of information if the plaintiff abstained from
seeking evidence by conducting a preliminary seizure-infringement for instance
MEASURES FOR SECURING EVIDENCE OF
INFRINGEMENT
 IPR infringement can be proved by any means yet the seizure-infringement is a
preferred way. French courts tend to sanction invading means of obtaining evidence
which have not been authorized by a judge ( disguised seizures) or use of standard
civil provisions to obtain communication of evidence of infringement.

Use of experts : normally each party hires at his own costs an expert and provides
experts’ reports or consultations of professors of law . The Court may also order an
expertise and the subject matter may be determined in agreement with the parties.

In French patent litigation, between 2000 and 2009, in 12 patent cases where an
expertise on the damage was ordered, 80% of them were resolved during the
expertise as the parties settled the disputed amount.

Before the UK Patents County Court, the expertise is included in the scale of cost
(£7,000 can be allowed to the winning party if an expertise was carried) .
PRECAUTIONARY MEASURES
 Article 9 of the IPR Enforcement Directive:
 Interlocutory injunction granted by courts upon request of the claimant to prevent
any imminent infringement of IPRs or stop the continuation of an infringement, subject
to adequate security and subsequent action on the merits
 Blocking measures : seizure or delivery up of infringing goods to prevent their entry
or movement in the channel of commerce; seizure of property of the alleged infringer
including blocking of bank accounts and other assets in the event of uncertain
recovery of damages.
Under French corresponding provisions
 Who has standing to seek an interlocutory injunction ? The IPR owner and his
exclusive licensee
 What is the preferred way : exparte or interpartes request, both being available ?
Courts favor inter partes orders.
 How does the court assess satisfaction of the requirement that the applicant provides
reasonable available evidence that the rightholder ‘s right is being infringed ?
The French approach is that only obvious nullity of the IPR makes the infringement
improbable. But the judge should not asses the likelihood of success of the
infringement action on the merits.
ASSESSMENT OF DAMAGES
 Article 13 of IPR Enforcement Directive on damages
 to calculate damages, the courts must take into account all appropriate aspects,
such as the negative economic consequences, including lost profits, any
unfair profits made by the infringer and in appropriate cases, elements other
than economic factors, such as the moral prejudice caused to the rightholder.
 The courts may as an alternative, award a lump sum corresponding at least to
the minimum royalties or fees that should have been paid to the claimant if the
infringer had requested an authorization to use the IPR.
 From compensation damages to beyond compensation damages ?
 In France the lump sum is only awarded if the rightholder asks for it
 In patent cases, a court appointed expert usually assesses the losts profits and
unfair profits , rarely in trademark cases
 Plaintiffs must submit evidence of the harm suffered (advertising expenditure,
margin, brand reputation, dilution of their image , etc )
 No refunding of damages paid by an infringer in case of subsequent nullity of the
patent (French High court)
ASSESSMENT OF COSTS



In the French system :
– The court sets discretionarily the amount of costs to be paid by the loosing party
to the winning party, taking into account fairness and economic situation of the
parties. Such amount does not depend on the claimed amount of damages and
the court considers proven expenditure including attorneys’s fees. Average costs
paid by the loosing party start from 10 0000 € up to 50 000 €. In general, courts
dismiss claims of indemnification for abusive court action (in one recent case,
the Paris court condemned the unsuccessful applicant of a preliminary injunction
to pay 100 000 euros as contribution to defendant‘s costs).
In the English system:
– In front of the PCC, the maximum amount of damages is of £500,000 and the
maximum of cost reimbursed is of £50,000. But the cost for a party can be far
more important with attorney and experts’ fees.
In the German system:
– Attorney and patentanwalt fees, plus court’s fees and eventually expert’s fees.
– All fees of the winning party are borne by the loosing party; the court and
attorney’ s fees are calculated upon a scale depending of the value of the case,
which is fixed by the patentee bringing the infringement action and
acknowledged by the defendant and finally the court.
NON MONETARY RELIEF
 Art. 10 and 11 of the IPR Enforcement directive
The courts may order :
 Recall or removal from the channels of commerce or destruction
 Injunction prohibiting the continuation of the infringement , subject to a
recurring penalty payment
 Injunction against intermediairies whose services are used by a third party
to infringe an IPR
 In practice, courts also order:
 Publication of the judgment , cancellation of a trademark or a domain
name, etc
 EU- wide injunctions for community IPRs (ECJ , DHL-Chronopost, 12 April
2011, C-235/09 available at www.curia.europa.eu)
FINAL REMARKS
 The EU Framework for protection and enforcement of IPRs permeates the
national European IP courts organization and work and contributes to
improve trust in an harmonized more efficient resolution of IP disputes
which are rarely limited to a single EU member State.
 The co-existence of national and community IPRs continues to adjust and it
compels a sound understanding of their interplay, without loosing the sense
of a wider international play ground.
 The increased worldwide importance of IPRS and the sophistication, both
technical and legal, of infringement issues, call for a dedicated involvement
and specialization of judges. We welcome the initiative by Russia to
establish a specialised IP Court.
Thank you for your attention
Elisabeth LOGEAIS, Paris
Email : e.logeais@uggc.com