Trademark infringement

 

Any party who uses another party's trademark or a mark confusingly similar thereto, commits trademark infringement.

The proprietor of the trademark has the following civil remedies against the infringer:

• the right to petition the courts for a declaration of infringement,

• the right to seek an injunction against present and future infringement,

• the right to demand the infringer to deliver information relating to the parties participating in the manufacturing and distribution of the infringing goods or services, and concerning the business relations established in this regard, - the right to demand satisfaction from the infringer by way of declaration: if necessary, the declaration shall be made public by the infringer or at his expense,

• the right to demand restitution of the enrichment gained by the trademark infringement,

• the right to seek a court order for seizure, recall or destruction of the instruments, material, packaging used for the infringement and of the infringing products.

The right holder may also demand that the customs authority take appropriate measures in order to prevent unlawful importation and exportation of products carrying the protected mark.

The court can order the destruction of products and packaging bearing the infringing mark.

If the trademark infringement has caused material damage, damages shall be paid in accordance with the relevant provisions of the Civil Code.

 

Legal proceeding against the infringement can be initiated at the Metropolitan Court. A preliminary injunction can be requested in advance or at the same time when submitting the claim.

According to the latest amendment of the Code of Civil Procedure, before the trademark dispute between companies is brought to court, the trademark holder as plaintiff shall seek out-of-court settlement by sending a cease and desist letter to the infringer.

Against judgment of the Metropolitan Court an appeal can be lodged to the Metropolitan Appeal Court.

 

Preliminary Injunctions

A request for preliminary injunction can be accepted by the court if the owner can make probable the commitment of trademark infringement and can verify his fair and equitable interests concerning the cessation of the infringement. According to the Trademark Act, the fair and equitable interest of the right holder shall be established if the entitlement to the trademark is duly verified and the petition for preliminary injunction is submitted within six months from the start of the unlawful act or within 60 days from the date the right holder has obtained information thereof.

If the plaintiff has supported his claims to the satisfaction of the court, upon his request the defendant can be obliged by the court to present his documents, evidences, enable inspections on site or to provide the plaintiff with financial, commercial and bank data, present documents thereof.

 

The right holder may request the court to order, under the conditions applicable to provisional measures:

• protective measures, if able to verify that any subsequent attempt for the recovery of profits made by the infringement or the payment of damages is in jeopardy;

• the infringer to notify of and to present bank, financial or commercial information and documents for the purpose of ordering the protective measures referred to in Paragraph a);

• the provision of security if, in exchange, the trademark proprietor agrees for the infringer to continue the alleged acts of infringement. The court upon the petition of the defendant may oblige the plaintiff to provide a security deposit before ordering the preliminary injunction.

The general requirements of requesting preliminary injunction are the same as in the case of patent matters.

 

Protection for Geographical Indications and Appellations of Origin

The law includes a protection system for these categories, i.e. in a special application procedure protection for geographical indication and designation of origin can be obtained.