1. hobbies and interests
2. inventors and patents

How to protect your Intellectual Property at Trade Fairs=Experience and practice in Europe
How to protect your
Intellectual Property
at Trade Fairs
Experience and practice in Europe
Prepared October 2008
It is strongly emphasised that the information provided in this
publication by no means constitutes legal advice and should not
substitute for counsel. The information is based on the opinion
of independent experts and does not claim to be either complete
or definitive; but is intended merely as a guide. The relevant European laws and other available legal and technical sources should
be properly consulted when seeking protection for IP rights in
Europe.
This publication has been produced with the assistance of the
European Union. The contents of this publication are the sole
responsibility of the IPR2 implementation team and can in no
way be taken to reflect the views of the European Union.
Content may be reproduced and disseminated as long as it is
attributed to the original source.
Authors
It would not have been possible to produce this Study without the coordination of Giovanni Casucci from Casucci Studio Legale
and the contributions of the following lawyers:
Jean-Frédéric Gaultier - Clifford Chance (France fiche)
Reinhardt Schuster - Bardehle Pagenberg Dost Altenburg Geissler (Germany fiche)
Giovanni Casucci - Casucci Studio Legale (Italy fiche)
Montserrat Lopez-Bellosta - Clifford Chance (Spain fiche)
Carlos Rivadulla - Clifford Chance (Spain fiche)
Johanes Jacobus Brinkhof - Brinkhof (Netherlands fiche)
Philippe Azzola - Philippe P. Azzola (Switzerland fiche)
How to protect your Intellectual Property at Trade Fairs=Experience and practice in Europe
CONTENT
FOREWORD
1
EXECUTIVE SUMMARY
2
1
STUDY ANALYSIS
3
1.1
Issues for enforcing IPRs at Trade Fairs
3
1.1.1
Enforceable IP rights
3
1.1.2
Peculiarities of IPR enforcement issues at Trade Fairs
3
1.1.3
IP Civil and Criminal enforcement issues
3
1.2
Harmonisation of the legal framework in the EU
5
1.2.1
TRIPs agreement
5
1.2.2
Enforcement Directive (EC 2004/48)
5
1.3
Protection Mechanisms in the EU
6
1.3.1
existing IP Enforcement systems in Europe at Trade Fairs
6
1.3.2
Best alternative practices reported
7
1.4
Conclusions
9
2
COUNTRY FICHES
11
2.1
FRANCE
11
2.1.1
Presentation of the general enforcement rules
11
2.1.2
Specific enforcement alternatives for the Trade Fairs
12
2.1.3
Documents
12
2.2
GERMANY
13
2.2.1
Presentation of the general enforcement rules
13
2.2.2
Specific enforcement alternatives for the Trade Fairs
17
2.2.3
Documents
17
2.3
ITALY
19
2.3.1
Presentation of the general enforcement rules
19
2.3.2
Specific enforcement alternatives for the Trade Fairs
20
2.3.3
Documents
21
2.4
SPAIN
23
2.4.1
Presentation of the general enforcement rules
23
2.4.2
Specific enforcement alternatives for Trade Fairs
24
2.4.3
Documents
24
2.5
SWITZERLAND
25
2.5.1
Presentation of the general enforcement rules
25
2.5.2
Specific enforcement alternatives for the Trade Fairs
25
2.5.3
Documents
27
2.6
THE NETHERLANDS
28
2.6.1
Presentation of the general enforcement rules
28
2.6.2
Alternative Measures
30
2.6.3
Documents
30
LIST OF ACRONYMS
31
FOREWORD
The Chinese government has a high regard for the protection of intellectual property, of which the
protection of IP rights during trade fairs and exhibitions is an important component. In order to further
enhance support for this, the Ministry of Commerce, the State Administration for Industry and Commerce,
the State Bureau of Copyright and the State Intellectual Property Office issued the Measures for the
Protection of Intellectual Property Rights (IPRs) during Exhibitions, which came into force on 1 March
2006. Meanwhile, the Ministry of Commerce with other ministries have organised a series of activities
in concert with efficient enforcement of the Measures specialising in reinforcing IPR protection at different exhibitions.
1
With the rapid development of the Chinese economy, an increasing number of Chinese companies are
taking part in exhibitions abroad, which offers a platform for them to establish their brands, to promote
their products and to realise their potential on the international market. At the same time in recent
years, Chinese companies are encountering intellectual property conflicts in exhibitions for lack of
knowledge on the protection of intellectual rights in European Union and its member countries.
With the support of EU-China IPR2 Project, the Department of Treaty and Law of the Ministry of
Commerce has completed a study on ‘How to Protect your Intellectual Property - Experience and practice in Europe’ with a view of developing IPR protection abroad. The study provides a comprehensive
overview of the enforcement system of the famous exhibitions in Europe and makes recommendations
to companies attending exhibitions. This study is a valuable reference and a strategic business tool for
both Chinese and European companies that recognise the value of IP protection.
Ministry of Commerce of People’s Republic of China
Department of Treaty and Law
10 Oct. 2008
How to protect your Intellectual Property at Trade Fairs=Experience and practice in Europe
EXECUTIVE SUMMARY
The present study analyses and compares IPR enforcement experiences and practices in a selection of
European countries, notably in France, Germany, Italy, Spain, Switzerland, and the Netherlands.
In particular, the study addresses how these European countries have developed best practices, by
means of traditional civil, criminal and administrative (customs) enforcement mechanisms, and where
necessary have set up alternative enforcement procedures. Such alternative procedures have been in
practice for a number of years in some European countries, more notably at the Macef trade fair in
Milan, Italy for the past 7 years, and at the Baselworld trade fair in Basel, Switzerland for the past 20
years.
The study is conceived in three principal sections:
-
-
Firstly, the study approaches the general issues of IPR enforcement, highlighting the specific means
provided by the international and European legal framework for urgent proceedings and interim
measures.
Secondly, it analyses the alternative measures to the normal jurisdiction offered by some countries
(e.g. Italy and Switzerland) in addition to other services or initiatives offered by some exhibition
organisers (e.g. Germany and France) in order to support IP protection.
-
Last but not least, the study contains a specific country-by-country report on the legal environment and practice, including local legal rules, leading cases and, if any, a description of alternative
measures.
The principal conclusions brought by the study are as follows:
I)
Even the most judicially efficient countries may experience challenges with regard to timing or
non-availability of experts;
II) Trade Fairs organisers and exhibitors perceive the need for specific management of IP-related issues;
III) The list of recommendations established by UFI provides clear guidelines for trade fair exhibitors
and visitors to comply seriously with the various needs related to protecting IP at trade fairs;
IV) Only few trade fairs organisers have been able to effectively implement such recommendations, at
least in part (Italy, Germany, Switzerland);
V) The standardisation of such practices is needed in order to comply with the Enforcement Directive
towards harmonising procedures and to have a singular method and format of intervention; capable of balancing the various interests involved.
2
1 STUDY ANALYSIS
1.1 ISSUES FOR ENFORCING IPRS AT TRADE
FAIRS
both is related to a lost of chance of business and such a prejudice is
very difficult for a judge to appreciate in the course of a subsequent
litigation on the merits.
1.1.1 ENFORCEABLE IP RIGHTS
The large family of IP rights covers the two sub-groups of (i) Copyrights
(regulated by the Berne Convention) and (ii) Industrial Property rights
(regulated by the Paris Convention and usually called as “registered
rights”).
3
Enforceable IP rights therefore cover any copyrightable work (literary,
musical, graphical, film, photographs, computer software, works of
applied fine art, choreography, etc), Patent and Utility Models (for
innovation), Trademarks, Domain Names, Designs, Semiconductors
layouts.
Nevertheless, such a listing does not exclude the possibility of, in line
with general IP protection, acts involving unfair competition including
parasitic copies, unregistered rights (de facto trademarks or unregistered
designs) or similar activities (including trade secrets and know-how
protection). The Paris Convention, in fact, devotes special attention to
acts of Unfair Competition (art. 10bis and 10ter).
1.1.2 PECULIARITIES OF IPR ENFORCEMENT ISSUES AT
TRADE FAIRS
It is useful to understand the peculiar issues which exist at trade fairs in
order to describe and analyse why public and private interests have
These main concerns should be also contrasted with several
opportunities:
a) MORE EVIDENCE AVAILABLE: At any trade fair the aim of the
exhibitors is to attract potential clients (not final consumers but
retailers, distributors etc). So, the usual approach is to show and
promise any possible advantage in terms of qualities and characteristics of the products/ machines. It is therefore possible during these
events to gather much more evidence than would otherwise be shown
in a catalogue or on a web site.
b) JURISDICTION OPTION: The place of the Trade Fair (usually a city or
big town) offers another advantage in case of evidence of an alleged
infringement: the possibility to claim the jurisdiction of the town even
if the claimant and the defendant are located in different cities or even
countries.
c) PUBLIC PERCEPTION OF THE INTERVENTION: Any intervention, even
the most apparently innocuous one (the description order) due to its
official execution in trade fair booths themselves generates an
understandably deterring effect for potential clients of the entity
accused of violating an IP right. So, sometimes even light interventions
(but with timely execution) may generate a quick settlement between
the parties involved.
sought to improve IPR enforcement mechanisms at trade fairs in
particular. These issues include:
In light of these issues, European countries have sought opportunities to
a) TIMING: Usually trade fairs are organised during a period that includes
improve IPR enforcement mechanisms at trade fairs, both through traditional civil, criminal and administrative (customs) enforcement mechanisms,
a weekend, so if enforcement is only based on the intervention of
official authorities there is the real risk of not being able to execute an
and where necessary by means of alternative enforcement procedures as
will be analysed throughout this report.
ex parte order (for lack of availability of the bailiff, for instance) and/or
the likelihood of filing a request for intervention to judge’s office too
late etc.
b) AVAILABILITY OF EXPERTS: IP owners and alleged infringers not
residing in the trade fair location may not be able to find a specialised
lawyer or an IP counsel able to intervene and assist them in time.
c) POTENTIAL PREJUDICE: There is a risk of double prejudice. Firstly for
the IP owner, in case of lack of effective intervention; secondly for the
alleged infringer that may risk suffering an intervention without the
support of an appropriate defence. The prejudice eventually suffered by
1.1.3 IP CIVIL AND CRIMINAL ENFORCEMENT ISSUES
Usually enforcement options are based on the civil and/or the criminal
perspective. Some countries also provide some administrative ways of
enforcement (for instance, China).
The abovementioned means of enforcement (civil and criminal) are considered
differently from country to country.
How to protect your Intellectual Property at Trade Fairs=Experience and practice in Europe
The civil route is the most diffused and is widely recognised as the most
In fact, the subjective elements (i.e. consciousness or willingness of the
readily applicable to IPR enforcement.
infringement - mens rea, or negligence - culpa gravis) are not relevant at
all in order to assess the liability of the alleged infringer and the first aim
The criminal route is frequently invoked in certain countries (for instance,
France and Italy) in order to induce a deterrent effect against the infringement
of the civil enforcement (the order to interrupt the infringement) will be
pursued independently in good or bad faith by the infringer.
diffusion, much more so in the copyright and trademarks field.
The subjective status of the infringer will only be taken into account in
It is useful to summarise the principal issues and characteristics related to
these two possibilities, in order to better understand the various approaches
order to evaluate the prejudice to be recognised by the IP owner and,
consequently, in order to satisfy the second aim of damages assessment.
highlighted in the Country reports.
Another characteristic of Civil enforcement is the full control of the
1.1.3.1 CIVIL ENFORCEMENT
Civil enforcement of IPR typically aims:
proceedings maintained by the parties: The judge is bound to the evidence
submitted by the parties and cannot ex officio collect any other further or
different evidence.
a) to interrupt the infringing acts; and
b) to recover any possible damage occurred.
Civil enforcement is based normally on the need for the IP owner to
provide the Judge with evidence of the existence and ownership of the IP
The parties may always settle the case until the final discussion before the
Court decision panel.
1.1.3.2 CRIMINAL ENFORCEMENT
right and the evidence of the infringement occurred.
Criminal enforcement of IPR typically pursues:
The only advantage offered by the IP registered rights is that evidence of
the right invoked can be easily shown simply by providing a copy of the
a) a direct aim: punishment of the infringer; and
b) an indirect aim: dissuasion to infringe; and
registration certificate (without giving proof of the validity of this
exclusive right). Any IP registered right in fact is presumed to be valid
c) an eventual aim: recovery of prejudice caused.
until the contrary can be proven by anyone contesting it.
In fact, criminal enforcement is mainly directed towards enforcing IPR in
cases where the offence/violation is clearly evident and is difficult to deny
In contrast, for non-registered rights (e.g. know how/trade secrets,
copyrights, unfair competition acts, de facto trademarks, slavish
or contest.
imitation), there is a duty upon the IP owner to show existence and
validity of his rights.
The sanctions and, much more, the special means of investigation of the
Public Prosecutor are powerful and serious.
Concerning the infringement, there is a precise duty upon the IP owner to
Also in this case evidence of the IPR and the infringement shall be
demonstrate conflict between the claimed exclusive right and the product/
process/sign/design of the defendant. Such evidence can be easily
supported by the IP owner. However, the role of the Public Prosecutor is
quite peculiar in the management of the case. In fact, the IP owner can
perceived in case of trademarks or designs but is sometimes difficult for
patented products and is very difficult for patented processes. That is why
only submit his denunciation before the Public Prosecutor who is free to
decide what action should be taken in order to fulfil his first aim: find
the evidence collection means provided by the legal system can play a
significant role in order to support the IP owner in finding evidence that
sufficient evidence in order to punish the alleged infringer and to impede
the continuation of the violation. Accordingly, the Public Prosecutor can
would otherwise be very difficult to find or retrieve.
order special initiatives involving the Criminal Police in order to collect
any sort of evidence by any legal means, in any place and at any time.
Regarding the elements required in order to prove the infringement from
the civil perspective, it is relevant to note that the objective interference
between the claimed exclusive right is essential in order to obtain a
favourable judgement.
Nevertheless the consequences of such a different approach are evident:
the IP owner has no control over the proceeding unless the criminal
4
regulation providing the criminal sanction is based by law on the ex parte
complaint. In several jurisdictions, for instance Italy, there are also
provisions in the law providing for ex officio intervention by the Public
Prosecutor. This means that a possible settlement on legal fees and
damages between the parties would not interrupt the criminal proceedings towards a final decision.
1.2 HARMONISATION OF THE LEGAL
FRAMEWORK IN THE EU
The harmonization of the legal framework of IPR enforcement in the EU
finds its source in two principal legal documents, notably WTO TRIPS
agreement and the EC enforcement directive.
1.2.1 TRIPS AGREEMENT
Concerning the elements required to prove the infringement, it is quite
relevant to note that for the criminal perspective (in contrast with the civil
one) there are two essential requirements:
a) the objective interference between the claimed exclusive right, and
5
b) the subjective element (i.e. consciousness or willingness of the
infringement - mens rea, or negligence - culpa gravis) fully relevant in
order to assess the criminal liability of the alleged infringer.
So, it may happen that an objective infringement cannot imply a criminal
condemnation for lack of willingness or negligence and that a wilful
The World Trade Organisation’s Agreement on the TRIPS of 15 April 1994,
constitutes the standard binding point of reference for IP protection
among the WTO members states.
TRIPS harmonises the best legal practices from around the world and
provides a framework of common international rules and basic principles
for reciprocally recognising and protecting IP and enforcing IPR.
The Agreement devotes special attention to enforcement issues,
highlighting the need to guarantee not only a written basis of legal text
but also a real practice in the Law application and enforcement.
intention to infringe cannot be considered criminally relevant because of a
non-identical infringement (i.e. in case of patents, an equivalent device; in
the case of trademarks, a non-identical sign looking like the registered
The enforcement principles and measures agreed in TRIPS (art. 40-51) are
one; in the case of designs, a non-identical design not so different from
the protected one etc).
a) effectiveness of enforcement procedures,
b) expeditious remedies,
Consequently, it is very important to understand the different local
c) deterrent effect of remedies,
d) easy access to enforcement proceedings (fair, equitable, not unneces-
regulations afforded by the civil and criminal orientation in order to decide
the most appropriate way to enforce the specific IPR relative to the
sarily complicated or costly),
e) effective inunctions
infringement found.
f) reasonable damages and fees compensation
g) other remedies that have a dissuasive effect (not necessarily punitive)
1.1.3.3 ADMINISTRATIVE ENFORCEMENT
In Europe the only administrative support offered for IPR enforcement is
based on the EC Regulation 1383/03 offering the possibility to freeze the
import or the export of allegedly infringing goods at the EC external
border. According to this Regulation,
Customs Authorities are empowered to suspend entry into the European
Community territory of goods suspected of infringing certain IP rights.
Such a suspension is not an injunction nor a seizure: it is a neutral means
in order to allow the IP owner to organise the measures it will take in
order to enforce its IPR properly without losing the control over the
suspected goods. In fact such a suspension loses any effect if, within 10
days from the adoption of such a measure, the IP owner does not file any
civil or criminal action in order to confirm his intention to enforce.
as follows:
h) right of information
i) inter partes or ex parte precautionary measures, to be followed by the
ordinary action within 31 calendar days
Moreover TRIPS provides a special recommendation about border
measures (art. 51-60), and recommends the adoption of criminal
measures for intentional trademark or copyrights infringements (art. 61).
1.2.2 ENFORCEMENT DIRECTIVE (EC 2004/48)
In respect to the TRIPS Agreement the EC adopted a specific Directive on
29 April 2004 in order to oblige all EU Member States to fulfil TRIPS
recommendations in civil enforcement practice.
The criminal issues were deliberately separated by the civil ones and are
still pending as draft according to the Proposal of the Commission on 26
April, 2006 (COM 2006, 168 final) as approved on 25 April 2007 by the
How to protect your Intellectual Property at Trade Fairs=Experience and practice in Europe
European Parliament.
(a)issue against the alleged infringer an interlocutory injunction intended to
The main goal of the Enforcement Directive is to provide a uniform
prevent any imminent infringement of an intellectual property right, or to
forbid, on a provisional basis and subject, where appropriate, to a
approach in dealing with the means of enforcement. In particular, the EC
Directive represents a sort of best experience collection of different
recurring penalty payment where provided for by national law, the
continuation of the alleged infringements of that right, or to make such
jurisdictions.
continuation subject to the lodging of guarantees intended to ensure the
compensation of the right holder; an interlocutory injunction may also be
It is therefore relevant to better understand the preliminary measures now
harmonised among the EC:
issued, under the same conditions, against an intermediary whose services
are being used by a third party to infringe an intellectual property right;
a)Evidence collection means
b)Preliminary injunction and seizure orders
injunctions against intermediaries whose services are used by a third
party to infringe a copyright or a related right are covered by Directive
2001/29/EC.
6
1.2.2.1 MEANS OF EVIDENCE COLLECTION
According to the art.7 of the Directive (Measures for preserving evidence)
the Member States‘ shall ensure that, even before the commencement of
proceedings on the merits of the case, the competent judicial authorities
may, on application by a party who has presented reasonably available
evidence to support his claims that his intellectual property right has
been infringed or is about to be infringed, order prompt and effective
provisional measures to preserve relevant evidence in respect of the
alleged infringement, subject to the protection of confidential information.
Such measures may include the detailed description, with or without the
taking of samples, or the physical seizure of the infringing goods, and, in
appropriate cases, the materials and implements used in the production
and/or distribution of these goods and the documents relating thereto.
Those measures shall be taken, if necessary without the other party
having been heard, in particular where any delay is likely to cause
irreparable harm to the right holder or where there is a demonstrable risk
of evidence being destroyed.’
(b)order the seizure or delivery up of the goods suspected of infringing an
intellectual property right so as to prevent their entry into or movement
within the channels of commerce.
For the adoption of injunctions, the Directive assesses the possibility to
obtain the injunction even ex parte:
4. Member States shall ensure that the provisional measures referred to in
paragraphs 1 and 2 may, in appropriate cases, be taken without the
defendant having been heard, in particular where any delay would cause
irreparable harm to the right holder. In that event, the parties shall be so
informed without delay after the execution of the measures at the latest.
In some countries it is possible to obtain an injunction without any limit
even during trade fairs (i.e. France, Germany, UK). It is different in other
countries (i.e., as previously stated, Italy, where is only possible to obtain
an injunction before the start of the trade fair).
Such means were designed under the earlier successful Italian experience
of “Descrizione” and the French “saisie-description”.
1.3 PROTECTION MECHANISMS IN THE EU
Usually this approach is the easiest order to be granted (in a few days)
because of the non aggressive nature of the inspection. As understood by
1.3.1 EXISTING IP ENFORCEMENT SYSTEMS IN EUROPE
AT TRADE FAIRS
the wording of such a provision the adoption ex parte of the measure is a
normal way to grant it.
The need to create a harmonised system of IP protection started expressly
In some jurisdictions this type of order is the only one available during
through the Universal Expo of Paris any visitor may misappropriate the
inventions or the trademarks of the real owners in order to file (abusively)
trade fairs (i.e. Italy), while the injunction and seizure cannot be executed.
because of trade fairs. In particular the Paris Convention and the principle
of the “priority’ were designed (in 1883) in order to avoid the risk that
IP applications in their native countries.
1.2.2.2 PRELIMINARY SEIZURES AND INJUNCTIVE ORDERS
According to the art. 9 of the Directive (Provisional and precautionary
measures) the Member States “shall ensure that the judicial authorities
may, at the request of the applicant:
At present the need to guarantee to effective and efficient IPR enforcement is the key issue of government and private interest associations.
Trade fairs represent a very high risk but high opportunity for piracy and/
or counterfeiting.
judge to help determine if there is a violation or to resolve IPR disputes during
the trade fair.
Referring to “Recommendations for the Protection of Intellectual property
Rights at Exhibitions” edited by UFI (The Global Association of the
Exhibition Industry) in February 2008, the final list of recommendations
5. Organisers should provide interpreters to facilitate communication in the
case of disputes with foreign exhibitors.
expressly cites the following activities to be ensured by trade fair
organisers:
6. When appropriate and if possible, organisers should provide an on-site
“1. Before the event, organisers should provide exhibitors with information
on IPR protection via a specific brochure to be sent out with the registra-
office, a special stand or a point of contact, to deal with any IPR requests or
complaints for the entire duration of the trade fair.
tion/participation forms, on the organizer’s website, in the exhibitors’
manual, or in the tradeshow’s General Terms and Conditions. This
7. In order to protect exhibitors from counterfeiting or IPR infringement
information should contain advice to exhibitors, such as:
7
practices during trade fairs, exhibitors should be encouraged to indicate that
their products or services are protected by IP rights, where applicable.”
-Exhibitors should protect and register trademarks, patents or designs before
the tradeshow starts, to obtain a valid right (an exhibition destroys novelty)
The present study takes into consideration the most relevant countries
and to be able to make use of all the forms of legal protection, in general and
during the event.
organising trade fairs of international repute: Germany, France, Italy,
Spain.
-For that purpose, the consulting and advice of a specialized patent and
trademark attorney regarding registration alternatives, requirements,
procedures and maintenance is highly recommended.
Several EU Member States (e.g. France, Germany, Spain) do not prohibit
nor specifically support IPR enforcement at trade fairs, which is unusual
-Contact details of the person responsible for IPR issues within the organizing
company should be provided, as well as the contact details of local/national
considering the specificity of the context and the particularities of these
kinds of events.
IPR organisations, customs authorities and patent and trademark attorneys.
-Before the exhibition, an exhibitor who believes that another exhibitor will
Some other EU Member States (e.g. Italy) do not authorise the execution
infringe his rights should make an appropriate application to the customs
authorities (when applicable), who can then stop suspicious consignments,
of civil seizures during trade fairs, considering the context to be preserved
as a “safe harbour” (art. 129 Italian IP Code). Only very critical cases may
investigate them, take samples, and destroy copies.
-Exhibitors should bring to the trade fair original documents or certified
generate an intervention by the criminal authorities who will be the only
ones authorised to seize any goods infringing an IP right.
copies of their patent or trademark rights, so that a possible infringement
may be established during the event. Any verdict already obtained against
The only civil enforcement tool officially available in Italy during trade fairs
an exhibiting pirate should also be included.
is the “description order” (art. 128 Italian IP Code), an evidence collection
tool (once exclusive to Italy and France, now harmonised in the EU
2. Furthermore, in order to assist exhibitors to address IPR complaints or
infringements during trade fairs, organisers should offer a list of local IP
through the Enforcement Directive - art. 7 Dir. EC 2004/48).
attorneys willing to represent exhibitors who wish to pursue legal action
against an alleged infringer.
A general overview of the EU Members States legal rules shows a partial
lack of sensibility on the peculiarities related to the timing needs at trade
fairs in the context of appropriate IP enforcement.
3. Organisers should provide on-site or on-call experts (IP attorneys, customs
authorities) to be available during the event, so as to offer legal advice to
those affected by an IPR infringement to identify any counterfeit products
during the trade fair.
1.3.2 BEST ALTERNATIVE PRACTICES REPORTED
In light of the above mentioned peculiarities some countries have already
perceived the need to offer specific assistance in supporting IPR enforcement at trade fairs.
4. Organisers should be able to provide a neutral arbitration, arbitrator, or
1.3.2.1 SWITZERLAND
In Switzerland since 1986, the Watch and Jewellery Show at Baselworld
has set up an arbitration commission called “the Panel”. Since the
How to protect your Intellectual Property at Trade Fairs=Experience and practice in Europe
exhibitors have recognised the Panel's authority by signing the exhibitor
The defendant can provide any arguments during the Panel inspection or
contract with the management of the fair, exhibitors have to submit any
case regarding an IPR infringement by another exhibitor (the defendant) to
before the Panel begins its plenary meeting. After the notification of the
Panel decision, the defendant can appeal the Panel decision by providing
the Panel. The defendant has also the obligation to accept the Panel's
decisions. However, a non-exhibitor, as it did not sign any exhibitor
new elements during the length of the fair.
contract with the management of the fair, can choose either the
competent Court of the Canton of Basel or the Panel.
1.3.2.2 ITALY
In Italy there is a system inspired by the Baselworld experience and has
been adopted at the following events:
This Panel has its private regulation which defines the procedure, the
costs, the scope of the decision and the appeal. The decisions are based
on Swiss law and on Swiss case law. For all questions of procedure, the
a) since 2001, by MACEF, Milan (twice per year), managed by Fiera
Milano International.
local Cantonal Basel-City Civil procedure law is applicable subsidiarily.
The injured party should hold IP rights valid in Switzerland (trademarks,
b) since 2004, by EXPOCOMFORT, Milan (biannual), managed by Reed
Exibitions.
designs or patents for instance) to file a complaint (copy of the registration certificate is sufficient). The injured party can file orally a complaint
c) since 2007, by MARMOMACC, Verona (biannual), managed by
Verona Fiere.
during the length of the fair.
d) since 2008, by SAMOTER, Verona (every fourth year), managed by
Verona Fiere.
As soon as the exhibitor or the non exhibitor has filed a complaint, a
delegation of the Panel (2 persons) accompanied by the complainant
move to the booth of the defendant for the inspection. The delegation of
the Panel presents the case to the person in charge of the booth, takes
note of the defendant’s arguments and upon identification by the
The Italian solution is based on the automatic adoption and recognition of
a specific “Intellectual and Industrial Property Service Regulation”
(hereinafter “Service”) for any exhibitor of the abovementioned events.
complainant, takes away for closer inspection in the frame of its plenary
meeting several items of the contested object.
Such a Regulation, created and implemented for the first time at MACEF in
The same day, the Panel examines the complaint based on the IP rights
specific system of pre-trial evidence collection.
and the contested objects in its plenary meeting. The Panel renders its
decision and develops its conclusions.
The decision is notified to the parties on the following day. If an
infringement is recognised by the Panel, the defendant is invited to sign
an undertaking in which it commits itself not to sell, to exhibit or to
promote the contested objects during the length of the fair. The losing
party has to support the administrative costs. The contested objects,
which were taken away by the delegation, are handed back to the
defendant.
September 2001 and subsequently adopted (with minor changes) in
subsequent events, is designed as a sort an arbitration regulation with a
There is no obligation for exhibitors to devolve the IP issues before the
Service but the activity of the Service and of its delegates shall be
respected and no exhibitor may refuse interventions.
An alternative to this service is only possible by requesting an evidence
collection order (description order) by the Civil Court of Milan (for Milan)
or Venice (for Verona), or to raise up a possible criminal violation asking
for a seizure by the Public Prosecutor and the Guardia di Finanza (Italian
Revenue Police).
The Panel is composed of 7 members:
The Service Regulation defines the procedure, the costs and the scope of
interventions and decisions. The decisions are based on EC laws and on
- 1 Chairman, a lawyer of Swiss nationality
EC case law.
- 2 other lawyers of Swiss nationality
- 1 patent lawyer practising in Switzerland
- 2 experts of non Swiss nationality, with special knowledge of the
watch industry
- 1expert of non-Swiss nationality, with special knowledge of the
jewellery sector
The injured party (exhibitors and non exhibitors) should hold IP rights
valid in Italy (trademarks, registered designs or patents for instance,
including copyrights and unfair competition issues) to file a complaint
giving all the pieces of evidence required. The injured party can file orally a
complaint during the length of the fair, and the delegates of the Service
8
will formalise such request in a Verbal Proceeding verifying the identity of
- 1 Coordinator of the Service
the requesting person and the existence of the IP rights invoked (through
IP databases and the analysis of the evidence provided).
- 8 Italian IP Lawyers appointed (covering by turn of 4 all the days of
the exhibition), having at least five years of experience in IP issues,
As soon as the injured party has filed a complaint, after a prima facie
- 4 Italian Senior Expert Patent Attorneys appointed in case of arbitra
tion panel, and
evaluation of the existence and the validity in Italy of the IP right invoked,
a delegation of the Service (two persons, at least) accompanied by the
- 4 Italian Senior Expert Lawyers appointed in case of arbitration panel
having all at least fifteen years of experience in IP issues.
complainant move to the booth of the defendant for inspection. The
delegation of the Service presents the case to the person in charge of the
9
1.3.2.3 GERMANY
booth, takes note of the defendant's arguments and upon identification by
the complainant, takes pictures of the items contested, without removing
Germany does not presently report any specific alternative measures in IP
enforcement but some organisers of exhibitions already prepared some
any item from the booth.
guidelines indicating the main legal issues about IP rights and the
description about the main legal proceedings, including addresses of
This activity is formalised in a Verbal Proceeding that includes the pictures
any declaration of the claimant and the defendant, signed by the two
specialised lawyers and courts.
delegates and by the defendant and issued in 3 copies (1 for the
defendant, 1 for the claimant and 1 for the Service).
In particular, two exhibition organisers have published guidelines:
Immediately after the execution of such inspection (called Protective
Service) the Claimant, after discussing the evidence collected with the
delegates, may invite the defendant to remove the items contested by the
exhibition. If the defendant refuses to do so, the Claimant may ask for the
support of the Intervention Service to obtain compulsory removal of the
contested items.
In this case, a hearing is fixed in the afternoon of the same day between
the Claimant and the Defendant before 3 Senior Experts appointed
specifically for the case and with respect to conflict of interest and
specialisation. Both parties may be assisted by their own lawyers if any.
The panel of the 3 Senior Experts examines the complaint based on the IP
rights and the contested objects in its plenary meeting. The panel renders
its decision within one hour from the ending of the hearing and the
decision is made in writing and delivered to the parties, with immediate
effect.
- FRANKFURT: “Messe Frankfurt against copying”
- COLOGNE: “No copy”
Therefore in Germany IPR enforcement at trade fairs usually relies on the
intervention of Public Authorities, and is typically very efficient in terms
of timing. It is in fact possible to obtain a Court°Øs decision within only
few days and ex parte.
Nevertheless, German IP experts have declared that the idea of having a
more developed self-disciplinary rule directly managed by trade fairs
organisers may indeed be interesting.
1.4 CONCLUSIONS
Summing up the analysis done on those countries in Europe with a higher
level of trade fair business (Germany, France, Italy, Spain and Switzerland)
reveals the following:
a) in all countries IPR enforcement at trade fair venues is considered
If an infringement is recognised by the panel, the defendant is invited to
remove the contested item immediately.
In case of refusal to execute the order, the continuation of the infringement will be considered relevant from the criminal perspective (objective
infringement assessed by the Experts and consciousness by the
defendant) and justify an immediate seizure by the Criminal Police,
usually in force at the premises of the Exhibition.
The Service is composed of the following Delegates:
relevant and is frequently invoked;
b) in the most efficient countries from the judicial point of view, the need
to have an alternative system is not frequently requested; however a
need exists to offer better support to exhibitors in order to better
exploit existing remedies, perhaps by publishing informative guidelines
(e.g. Germany, France);
c) in other countries the need for specialisation (e.g. Switzerland) or the
need to obtain more rapid and specialised interventions (e.g. Italy) has
generated alternative solutions based on an arbitration scheme
conferring specific enforcement powers to exhibitors by a panel of
independent experts.
How to protect your Intellectual Property at Trade Fairs=Experience and practice in Europe
Taking one or two exhibitions in consideraion, the level of implementation
of such recommendations is as follows:
1) Informative Brochure
Germany, Italy, Switzerland
2) List of Attorney
3) On site experts
Germany
Italy
4) Arbitration Service
5) Interpreters
Italy, Switzerland
Italy
6) Special Stand IP Service
7) Incentive to show IP existence
Italy, Switzerland
-
Accordingly, the following conclusions can be drawn:
I) even in the most judicially efficient countries some lack of timing and/
or availability of experts in the necessary moment may frustrate
effective and fair enforcement;
II) trade fair organisers and exhibitors already perceive the need to have
specific management of IP issues;
III) the list of recommendations established by UFI represent clear
guidelines for trade fair exhibitors and visitors to seriously comply
with the various needs related to IP issues at trade fairs;
IV) only a few trade fair organisers have been able to effectively implement such recommendations, at least in part (e.g. Italy, Germany and
Switzerland);
V) The standardisation of such practices is needed in order to comply
with the Enforcement Directive towards harmonising procedures and
to have a singular method and format of intervention; capable of
balancing the various interests involved.
10
2 COUNTRY FICHES
2.1 FRANCE
market, it is usually more efficient to conduct a seizure at the premises of
the company where the alleged infringing goods are on sale, since more
2.1.1 PRESENTATION OF THE GENERAL ENFORCEMENT
information will usually be available (e.g. accounting records, etc).
RULES
2.1.1.2 ADMINISTRATIVE
In France, the enforcement of IP rights can be managed through the civil,
the criminal or the administrative point of view.
2.1.1.1 CIVIL AND CRIMINAL
The IPR owner may conduct a "Saisie-contrefaon" to collect evidence of
IPR infringement at trade fairs before any civil or criminal proceedings are
initiated.
French customs agents may seize goods infringing trademark rights,
authors’ rights, neighbouring rights or registered design rights at trade
fairs, either open to the public or open with an invitation card, provided
that customs agent have first notified their intervention to the public
Prosecutor. They can intervene:
(i)
11
The claimant applies ex parte to the judge to be authorised to carry out an
investigation at the trade fair where the alleged infringing goods are likely
to be found. The claimant must only provide evidence that he owns an IP
right, mens rea is not taken into account at this stage. The judge can
authorise a mere description of the said goods (with photographs), with
or without taking of samples and relevant documents or more rarely a
seizure in rem. The judge may subject the enforcement of the measures it
at the request of IPR owner: The IPR owner needs to file a French
customs application and provide the customs agent inter alia with
(a) the IP rights on the basis of which the customs application is
founded and a list of companies authorise to make, import or market
the products (b) documentation regarding infringing products
(distinctive elements of infringing material, presumed origin and
provenance, etc.) (c) an undertaking to pay costs incurred in relation
with the withholding of goods.
orders to a guarantee on the part of the petitioner.
The “saisie contrefaçon” is affected by a bailiff, who may be assisted by an
expert designated by the IPR owner.
Evidence so collected may be used in civil or criminal proceedings and, in
some circumstances, in proceedings initiated abroad. Proceedings on the
merits in France must be initiated within 20 working days or 31 days (if
longer) of the “saisie”, failing which the “saisie” lapses, and the claimant
may be held liable for damages.
In respect of author rights, an author can also request ex parte to the
judge to suspend a scheduled exhibition if he proves that it will cause him
intolerable damage that cannot be repaired. However in practice, such a
measure is rarely ordered. In a decision of 2 March 1989, the Court of First
Instance of Paris refused to suspend an exhibition which was to be held
the same day, organised by the owner of Lardera sculptures without the
prior consent of the successors of the artist.
In practice,“saisie contrefaçon” at trade fairs is often requested as it
constitutes a fast and inexpensive way to collect evidence of IPR
infringement, especially when the product is exhibited at the trade fair
before it is launched on the market. Once the product is launched on the
If French customs agents find goods suspected of being counterfeits,
they retain them for up to 10 working days and inform the IP rights
holder. During this time period, customs agents are authorised to
disclose limited information to the IP rights holder so that he may
determine whether the goods are counterfeit. If the goods are
counterfeits, the IP rights holder has 10 days of the customs seizure
to initiate proceedings before French courts, failing which customs
will release the goods. There is of course no obligation for the IP
rights holder to initiate proceedings.
In practice, customs seizures at trade fairs are not frequently
requested by IPR owners as, usually, the quantity of goods to be
seized is little. Furthermore, customs agents are not able to establish
an infringement when products are not actually exhibited, but only
presented in catalogues on display.
(ii) at their own initiative: customs agents are empowered to seize
goods when such goods are obvious counterfeits, without any legal
action required from the IP rights-holder. They will inform the IP
rights holder and the public Prosecutor of the seizure. The IP rights
holder has 3 days from the notification to file a French custom
application, failing which customs may release the goods. When
products are obvious counterfeits, and seized quantities limited,
How to protect your Intellectual Property at Trade Fairs=Experience and practice in Europe
custom agents may take the initiative to destroy the products.
Property Code
-
Customs agent do not frequently visit trade fairs on their own
initiative as it is expensive to send a team while only small
quantities of products are usually exhibited. In addition, the effects
of the seizure will be very limited if the manufacturer is established
outside France and has no stocks in France.
ADMINISTRATIVE - Customs seizure
-
Trademarks: Article L.716-8 and seq. of the French Intellectual
Property Code
-
Author rights and Neighbouring rights: Article L.335-10 and seq. of
the French Intellectual Property Code
-
Design rights: Article L.521-14 and seq. of the French Intellectual
Property Code
2.1.2 SPECIFIC ENFORCEMENT ALTERNATIVES FOR THE
TRADE FAIRS
To the best of our knowledge, there is no trade fair that implements
alternative measures in IP protection and IPR enforcement. In any event,
alternative measures that could be proposed cannot replace the measures
Patents: Article L.615-5 and seq. of the French Intellectual Property
Code
2.1.3.2 RELEVANT COURT DECISIONS
provided for by the law; they could only be used in addition to them.
Most case law on intervention at exhibitions are related to the question
on whether the “saisie-contrefaçon” conducted by the bailiff to collect
The terms and conditions of four of the major fairs that take place in Paris
(Salon International de l’Aéronautique et de l’Espace, Salon International
evidence is, or not, valid. Indeed, in order to be valid, the “saisiecontrefaçon” must comply with the judge decision (identification of the
de l’Agriculture, Foire de Paris and Salon de l’Automobile) always refer to
French legislation. Here is an example of the terms and conditions clauses
company aimed by the “saisie”, scope of the “saisie”, etc.). Also, the
“saisie” can be declared null and void when the claimant conducts the
of the international aerospace show:
“saisie” with a view to harm the alleged infringer.
Customs: “Throughout the duration of the Show (including the installation
and dismantling period), the Show grounds shall be governed by the French
For instance, the Paris Court of Appeal, in a decision dated 13 March
1996, ruled that a “saisie” was abusive since it was conducted after three
Regulations applicable to customs warehouses. It is the responsibility of
Exhibitors to complete the required customs formalities for equipment and
other “saisie” which were already sufficient to demonstrate acts of
infringement, the fourth saisie was done only in view to discredit the
products brought into France from another country. The Organizer shall not
be liable for any difficulties arising in connection with these formalities”.
competitor.
Intellectual Property Rights: “It is the Exhibitor's responsibility to ensure the
protection of intellectual and/ or industrial property rights for equipment or
products exhibited, in accordance with the legislation and/ or regulations in
force in France and/or Europe and/ or the rest of the world. The Organizer
hereby informs Exhibitors that the Show is not included in the list of
exhibitions exempt from the principle of non-disclosure of inventions
provided under French Intellectual Property Law”.
2.1.3 DOCUMENTS
2.1.3.1 EXTRACTS OF LEGISLATION
Civil and criminal - "Saisie-contrefaon":
Trademarks: Article L.716-7 and seq. of the French Intellectual
-
Property Code
Author rights and Neighbouring rights: Article L.332-1 and seq. of
-
the French Intellectual Property Code
Design rights: Article L.521-4 and seq. of the French Intellectual
12
2.2 GERMANY
The claim underlying the preliminary injunction (Verfügungsanspruch) is
2.2.1 PRESENTATION OF THE GENERAL ENFORCEMENT
the claim for injunctive relief (e.g. 139 Patent Act (PatG), 14
paragraph 5 Trademark Act (MarkenG), 24 Utility Patent Act, 42
RULES
In Germany the enforcement of IP rights at trade fairs can be achieved
especially through civil but also through criminal and administrative
proceedings.
2.2.1.1 CIVIL PROCEEDINGS
2.2.1.1.1 EXTRAJUDICIAL PROCEEDINGS
It is possible to enforce IP rights in an extrajudicial way by sending to the
infringer a warning letter according to 12 paragraph 1 Act against
Unfair Competition (UWG) (analog) at his booth on the trade fair. Such
a warning letter is regularly combined with a cease-and-desist-declaration
that needs to be signed from the infringer under accepting contractual
penalty for each case of non-compliance within a certain period of time. In
13
urgent cases like a trade fair the respite can only be one day or a few
hours. If the infringer accepts the warning letter and signs the cease-anddesist-declaration unconditioned and irrevocable the presumed danger of
recurrence of the infringement is disproved. The IP right’s owner has no
reason and no need for taking legal action anymore. In each case of
recurrence the contractual penalty falls due. The costs for this extrajudicial
proceeding have to be reimbursed by the infringer, according to 12
paragraph 1 Act against Unfair Competition (UWG) or according to the
principle of agency of necessity.
If the infringer does not comply with warning letter, the right’s owner can
still try to take legal action, especially try to obtain a preliminary
injunction.
If the warning letter was unfounded, it can make the right’s owner liable
to pay compensation for damages on grounds of an illegal and culpable
interference with the right to operate an established and running
business.
2.2.1.1.2 PRELIMINARY COURT PROCEEDING
A promising way to enforce IP rights at trade fairs is via a preliminary
injunction, based on a summary examination, according to 940,
936, 916 ff German Code of Civil Procedure (ZPO). If a right holder
recognises an infringement only at the trade fair or shortly before the start
of the fair the preliminary injunction proceeding is a possibility to receive,
nevertheless, an interim court order within a very short time, sometimes
within one day (trade fairs often only last a few days).
Design Act, 97 Copyright Law, 8 Act against Unfair Competition)
and mostly the claim for information (e.g. 140b Patent Act (PatG), 19
Trademark Act (MarkenG), 24b Utility Patent Act, 46 Design Act, °Ï
99 Copyright Law, 242 Civil Code in combination with the Act against
Unfair Competition); sometimes also the claim for a sequestration for
protection of the right of discretion (e.g. 140a Patent Act, 18
Trademark Act, 24a Utility Patent Act, 43 Design Act, 98
Copyright Law) according to 938 paragraph 2 German Code of Civil
Procedure (ZPO).
Referring to the infringement of the IP right and the default of the
defendant there has to be only a reasonable likelihood of infringement
according to 920 paragraph 2, 936, 294 German Code of Civil
Procedure (ZPO) of the claimant; regarding the default it can often be
assumed that a company and competitor must know about the rights of
the claimant.
Special requirements for the following cases:
To enforce the claim for information an “obvious” infringement of the
respective right is necessary - that is the case when there are no
reasonable doubts left and a contradictory decision in a main proceeding
practically seems to be impossible.
Regarding patent rights the particularity is that broad technical facts need
to be examined which is often not possible in a summary examination.
Therefore preliminary injunctions with respect to patent infringements are
not as frequent as for other IP rights, but they are not unattainable.
Nevertheless, such cases exist and it is necessary that the validity of the
patent in suit seems to be definite (e.g. no nullity proceedings are
pending). Furthermore, the infringement of the patent right seems to be
clear and obvious.
The condition to obtain a preliminary injunction (Verfügungsgrund) must
be an urgency; according to 940 German Code of Civil Procedure
(ZPO) a reason for a preliminary injunction is given if the preliminary
decision seems to be necessary for avoiding the main disadvantages or
prevention of threatening violence or for other similar reasons. Depending
on different jurisdiction the applicant should not wait longer than e.g. one
month (Appeal Court Munich), two months (Appeal Court Düsseldorf),
six weeks to six months (Appeal Court Hamburg) or regularly five weeks
(Appeal Court Cologne) starting from his knowledge of the potential
infringement until the day of filing the application for a preliminary
How to protect your Intellectual Property at Trade Fairs=Experience and practice in Europe
injunction.
opposing counsel can be reduced).
The court that would be competent for the main proceedings is also
If the court allows the preliminary injunction it is necessary to execute
competent for the issuance of the preliminary injunction, according to 937 German Code of Civil Procedure (ZPO). This is in almost all cases a
this decision within one month, according to 929 paragraph 2, 936
German Code of Civil Procedure (ZPO). The preliminary injunction
District Court according to the value in dispute so that it is necessary to
be represented by a lawyer in the legal proceedings, according to 78
decision is per se preliminarily enforceable.
German Code of Civil Procedure (ZPO).
Service of the decision
In urgent cases, which is basically the rule regarding infringements on
trade fairs - the court can decide with only one - the presiding - judge,
The preliminary injunction is not served by the court; it has to be served
directly to the other party by a bailiff (party prosecution), according to according to 944 German Code of Civil Procedure (ZPO) and the
court/judge can decide to abstain from hearing the opponent, according
922 paragraph 2, 936, 192 ff German Code of Civil Procedure (ZPO). The
claimant receives the decision from the court and instructs a bailiff to
to 937 paragraph 2 German Code of Civil Procedure (ZPO).
serve it directly to the other party at the respective booth at the fair,
according to 25 operation guidelines for bailiffs (GVGA). (It is very
If the court concludes that it cannot decide without hearing the other
party, a date for an oral hearing will be fixed, which will often be only
rare that the other party already mandated an attorney to whom the
decision would have been to serve otherwise.)
after the close of the trade fair, especially if the fair only lasts three or four
days. More recently, courts have tried to offer an improved service and are
trying to arrange prompt oral hearings so that they can still take place
Enforcing a preliminary injunction the bailiff follows the operation
guidelines for Bailiffs (Geschaeftsanweisung für Gerichtsvollzieher
during the fair; e.g. the specialised patent chamber of the District Court
Braunschweig (responsible for the district of Hannover where manyf
(GVGA)), namely 1 ff (general rules), 11 (service), 23 ff
(service of amongst others especially preliminary injunctions), 192
important international trade fairs take place) offers an on-call duty during
those important international trade fairs in Hannover: The patent chamber
(execution of a preliminary injunction) operation guidelines for bailiffs
(GVGA). The bailiff generally fills in a standard form to prove the service
is available already very early in the morning and in very urgent cases also
willing to perform oral hearings even on the ground of the trade fair.
and the other party has to sign it at the booth. Usually the bailiff firstly
delivers the decision for purpose of execution of the preliminary
injunction.
The matter in dispute is the preliminary satisfaction of the respective
claim. The application is regularly directly combined with an application of
threat of measures of compliance for ensuring that the decision, should it
Secondly it can be the case that the bailiff at the same time obtained the
instruction for a sequestration. Then the bailiff will also enforce that claim
be enacted, can be enforced directly and as soon as possible.
according to 57 ff operation guidelines for bailiffs (GVGA). He will
search for the respective items at the booth and will take them with him,
Following the text of law, the court can command that enforcement of the
preliminary injunction is dependant from paying a security deposit before,
if possible, or will have it picked up to store it afterwards till the legal
dispute will be finalized. For the storage the bailiff regularly demands an
according to 938 paragraph 1, 921 German Code of Civil Procedure (ZPO). According to experience, however, this is hardly ever ordered
advance payment from the claimant.
in practice.
All fees and expenses of the bailiff are based upon the law of costs for
bailiffs (Gerichtsvollzieherkostengesetz (GVKostenG)).
If the court disapproves the claim for a preliminary injunction, the
opponent will not be informed, according to 922 paragraph 3, 936
Defense of the opponent
German Code of Civil Procedure (ZPO); only the claimant will be
informed (often in the statement of the claim a notice is often given to
If the opponent does not want to accept an issued and served preliminary
the judge to contact the claimant by telephone in case of any questions
or ambiguity; if the judge informs the claimant about his doubts over the
injunction, he has the following possibilities of defence:
telephone he has the possibility to revoke his application for the
preliminary injunction so that at least the court costs and cost for
Filing an objection according to 924, 936 German Code of Civil
Procedure (ZPO) to the issuing court;
14
15
Claiming at the respective court that a deadline will be fixed for the
still shows them) the right holder has to claim for an administrative
claimant to take the main action so that a final decision can be brought
about (instead of only a preliminary one), according to 926
penalty. But regarding administrative penalties preliminary proceedings
are not provided. Therefore the District Court of Düsseldorf decided that it
paragraph 1,936 German Code of Civil Procedure (ZPO); in both cases
an oral hearing will be arranged from which experience will no longer be
should be possible to achieve a second preliminary injunction following
the same aforementioned rules that concretises the order to cease and
derived from the duration of the trade fair.
desist (e.g. by ordering that the an infringing machine has to be put away
from the booth or has at least to be covered for the duration of the fair,
A claim for a temporary abandonment of the enforcement according to
769 German Code of Civil Procedure (ZPO) is usually not
District Court Düsseldorf, decision dated February 25, 1982, - 4 O 34/82
-; District Court Düsseldorf, decision dated May 11, 2004, - 4a O 195/04
successful in preliminary injunction proceedings because it would
contradict the order to cease and desist.
-; District Court Düsseldorf, decision dated February 18, 2005, - 4a O 73/
05 -, “Abraeumer”).
It is also possible to restrain the objection according to 936, 924
Arrest order regarding the costs
German Code of Civil Procedure (ZPO) only to the costs. Often it is
claimed for a preliminary injunction without sending the opponent a
If the opponent is from far abroad and it is obvious that it will be
warning letter before, so that the service of the court’s decision at the fair
will have a surprise effect. This may have the effect that the claimant have
complicated to enforce a cost’s decision regarding the costs of the
preliminary injunction proceedings in the specific foreign country, it is
to bear the costs of the proceeding, according to 93 German Code of
Civil Procedure (ZPO), if the opponent would accept the claim
immediately. Regarding the jurisdiction also in urgent cases like trade fairs
recommendable to claim for an arrest in rem according to 916 ff
German Code of Civil Procedure (ZPO) immediately after having received
the preliminary injunction that imposes the opponent to bear the costs of
it should be possible to warn the opponent before taking legal action, e.g.
by bringing the warning letter directly to the booth and giving the other
the proceeding.
party a very short deadline to put the potential infringing items away or
at least cover them and refrain from (furthermore) presenting them at the
The claim for an arrest order is basically based upon the same aforementioned rules like the claim for a preliminary injunction. An arrest order will
fair.
often also be ordered within one or two days and also has to be served by
a bailiff to the other party directly at the fair. The instruction of the bailiff
Costs and compensation
to deliver the court’s decision , which also has to be done within one
month, according to 929 paragraph 2 German Code of Civil Procedure
All costs have to be reimbursed by the opponent if he accepts the court’s
decision, including the court’s costs as well as the costs of the bailiff and
(ZPO), can be combined with an instruction of enforcement at the same
time. Usually the bailiff will be instructed according to 808 ff
naturally the attorney’s costs of the claimant, according to 91 ff
German Code of Civil Procedure (ZPO). (In case of claiming for a
German Code of Civil Procedure (ZPO) to seize movable property found
on the booth at the fair. The bailiff himself is able to estimate if the
preliminary injunction no court costs have to be paid in advance by the
claimant; if the opponent finally has to bear all costs the court addresses
property has approximately the value of the amount of money mentioned
in the arrest order, but it is also possible to name an estimation of value
the opponent directly to get the court costs reimbursed.)
e.g. of presented machines before. In most cases the bailiff demands a
payment in advance regarding his costs for the seizure.
In case of enforcement of a preliminary injunction and a contradictory
final decision of the court (e.g. after an objection of the opponent) the
Furthermore, the arrest order often already includes the aspect that also
claimant is obliged to compensate the damages to the opponent,
according to 945 German Code of Civil Procedure (ZPO).
the costs of the arrest proceeding have to be reimbursed by the opponent.
A sum of all - injunction and arrest - costs, including interest, is
Court’s decision in case of non-compliance with the injunctive relief
mentioned in the arrest order and can be deposited from the opponent as
a security at the court. In that case the bailiff is not allowed to seize
anything anymore.
Generally in case of non-compliance with a successful preliminary
injunction order (e.g. the claim for injunctive relief was successful and the
consequence is that the exhibitor is not allowed to show his items but
How to protect your Intellectual Property at Trade Fairs=Experience and practice in Europe
Police help
at least a few months or more, depending on the IP right and on the
Regarding the enforcement of preliminary injunctions at trade fairs via a
seized court. But if a defendant is an exhibitor at a German trade fair,
claimants often take advantage of having a writ served upon the
bailiff the police sometimes helps, e.g. if nobody at the opponent’s booth
wants to accept the court order and the whole staff refuses to give their
defendant at the fair. Thus, the claimant spares a formal delivery abroad,
which is expensive and can take a very long time. Furthermore, the writ
names - in such cases the bailiff can call the police and they have the
power to ask the staff to identify their selves.
does not need to be translated, because exhibiting in Germany implicates
that at least someone in the booth is able to speak German.
2.2.1.1.3 PRESERVATION OF EVIDENCE PROCEEDING
2.2.1.2 CRIMINAL PROCEEDINGS
If the right holder discovers a probably-infringing item at the trade fair
but is not too sure about the fact of infringement a possibility to
In Germany penal provisions of infringement proceedings of IP rights are
rare, because the Public Prosecution Office hardly sees any public interest
obtain certainty is the preservation of evidence directly on the fair;
especially if the assumed infringer comes from far abroad and it seems
regarding the criminal prosecution of an infringer of IP rights. Although
there are existing German penal rules in the law of IP rights: 142
to be difficult or very expensive to order the respective item as an
example later on.
Patent Act (PatG), 25 Utility Patent Act (GebrMG), 14 Design Act
(GeschmMG), 143, 144 Trademark Act (MarkenG), 106 -108a
Copyright Act (UrhG).
485 ff German Code of Civil Procedure (ZPO) rule the so called
independent proceedings for the taking of evidence - independent from
and in the run-up to the main action. The right’s owner can claim for the
Sometimes an IP right owner reports an offence to the police to - in the
short-term - attain a search or confiscation of certain items according to
order of an inspection of the item by an expert according to 809
German Civil Code (BGB). A certain probability of an infringement is
105 ff German Code of Criminal Procedure (StPO) by the Public
Prosecution Service or the police on the fair.
sufficient for such a claim.
2.2.1.3 ADMINISTRATIVE PROCEEDINGS
In case of urgency, which is basically always the case regarding an
inspection on trade fairs, the right’s owner can claim for the indepen-
Confiscation / border confiscation by customs
dent proceedings for the taking of evidence in the shape of the
aforementioned preliminary injunction proceedings according to Moreover, an application of a border confiscation by the customs is
940, 936, 916 ff German Code of Civil Procedure (ZPO).
It can also be claimed for the attendance of a specific lawyer and patent
attorney that have to be named in the claim. But in cases of trade fairs the
court sometimes refuses the attendance with respect to the interests of
the assumed infringer- it is his justifiable interest that the inspection is
effected without attracting too much attention.
Such a court order regarding the inspection of an item by an expert also
includes the interdiction for the defendant to make modifications or
changes. The expert is usually allowed per court order to take photos and
make notes and e.g. to ask, if necessary, to start the operation of a
machine. The defendant can take notice of the written expert’s opinion
afterwards and gets the opportunity to inform the court about interests of
nondisclosure. The court then has to decide whether the expert’s opinion
can be handed out to the claimant.
2.2.1.1.4 MAIN COURT PROCEEDING
Enforcing IP rights in a main legal proceeding in Germany regularly takes
possible according to the European Regulation Nr. 1383/2003 or
according to the - subordinate - national German regulations for
confiscation, 142 a Patent Act (PatG), 25a Utility Patent Act
(GebrMG), 55 ff Design Act (GeschmMG), 146 ff Trademark Act
(MarkenG), 111b Copyright Act (UrhG).
The application should happen best in advance; in the run-up to the fair.
But under the requirements of article 4 of the European Regulation
customs can exceptionally get active before the application or before the
concession of the application. Customs cannot only be active at the
borders but also in Germany, especially concerning goods that are only
temporarily imported from a third state for presentation at a German fair,
which can be confiscated by German customs, if a suspicion of an
infringement of IP rights is given.
In Germany the contact for border confiscation is the ZGR (Zentralstelle
Gewerblicher Rechtsschutz). Representatives of the ZGR are recently often
present a famous international trade fairs in Germany to inform exhibitors
about their rights and legal options.
16
2.2.2 SPECIFIC ENFORCEMENT ALTERNATIVES FOR THE
TRADE FAIRS
List of trade fairs offering a self disciplinary system of IP enforcement
German trade fair organisers do not on the whole have their own legal
resources, but they try to help exhibitors as best as they can in cases of IP
infringements; also beforehand, and to give as much information as
possible. In some cases they actively help. In detail:
The Frankfurt trade fair management recently included a clause in their
application form (that needs to be signed by each exhibitor in the
beginning of a fair) that in case the respective exhibitor receives a German
court order prohibiting the offering or presentation of certain items at the
exhibition and in case the exhibitor refuses to follow the court order, the
trade fair management reserves its right to suspend the exhibitor from the
fair or at least from subsequent trade fairs.
Evenso, trade fair management explain that their help and information
To the best of our knowledge and inquiries no German trade fair,
respectively exhibition corporation, offers a self disciplinary system of IP
enforcement, especially not in the manner of written rules that have to be
cannot substitute for professional legal advice, especially on the question
of whether an IP right is actually infringed or not and what the resulting
claims, rights and procedures for their enforcement are.
fulfilled (e.g. by the employees of the trade fair).
2.2.3 DOCUMENTS
According to the telephone information of the exhibition corporations in
general each trade fair company tries to be neutral towards all exhibitors
2.2.3.1 EXTRACTS OF LEGISLATION
at each fair. They try to assure a convenient as possible succession of the
fair for all exhibitors.
2.2.3.1.1 CIVIL
German Code of Civil Procedure
17
But that can also include, as far as the management of the fair gets
940, 935, 936, 916 ff preliminary court proceedings
informed about infringement proceedings on the fair ground at all, the
exhibition management in single cases trying to help to for example,
920 paragraph 2, 936, 924 probable case to be shown only
940 urgency
observe the compliance with a preliminary injunction order (e.g. if
infringing machines stay covered for the duration of the respective fair).
937 paragraph 1 competent court
937 paragraph 2 no hearing of defendant
But often, even for the legal department of the fair, it is hard to evaluate
whether an infringement is actually given so that the fair generally leaves
944 decision of presiding judge
929 paragraph 2, 936 execution of enacted injunction/service
this decision to the courts.
924, 926, 936 possible defense of opponent
945 compensation of damages
In general, the trade fair management advises contacting a lawyer as soon
as possible. Each fair management is regularly available to give informa-
916 ff arrest order
485 ff independent proceedings for taking of evidence
tion to the exhibitors as to how to proceed in the case of an infringement
discovery or in case they receive a court order by a bailiff. A few legal
German Act against Unfair Competition
departments have already prepared guidelines outlining the main legal
steps and describing the main legal proceedings, including addresses of
lawyers and courts (e.g. the Fair in Frankfurt “Messe Frankfurt against
copying” and Cologne “NO COPY”). These guidelines also give general
information on how certain rights can be protected.
Moreover, exhibitors can generally ask trade fair management about the
availability of fair photographers or other administrative assistance (e.g.
for certain addresses).
12 warning letter
2.2.3.1.2 CRIMINAL
142 German Patent Act (PatG)
25 German Utility Patent Act (GebrMG)
14 German Design Act (GeschmMG)
143, 144 German Trademark Act (MarkenG)
106 -108a German Copyright Act (UrhG)
105 ff German Code of Criminal Procedure (StPO) Prosecution
Service or police on trade fairs
It is also in the interest of the trade fair management that as little
infringement proceedings as possible disturb the process of a fair.
Therefore, the management does try to raise the exhibitor awareness of IP
rights.
2.2.3.1.3 ADMINISTRATIVE
Confiscation / Border confiscation by customs
European Regulation No. 1383/2003
How to protect your Intellectual Property at Trade Fairs=Experience and practice in Europe
142 a German Patent Act (PatG)
Appeal Court Frankfurt, decision dated May 3, 1984, - 6 W 58/84 -, in
25a German Utility Patent Act (GebrMG)
55 ff German Design Act (GeschmMG)
GRUR 1984, 693 ff, “Messe-Abmahnung”;
146 ff German Trademark Act (MarkenG)
111b German Copyright Act (UrhG)
Even if a trademark infringement is discovered first at a fair also in such
urgent cases sending a warning letter before claiming for a preliminary
contact: ZGR (Zentralstelle Gewerblicher Rechtsschutz)
injunction is generally reasonable, as the case may be an oral warning
directly at the booth can be sufficient.
2.2.3.2 RELEVANT COURT DECISION
Appeal Court Cologne, decision dated April 6, 2000, - 6 W 42/00 -, in
2.2.3.2.1 LIST OF ENCLOSED CASES
Düsseldorf Court of Appeals, decision dated April 8, 1982, - 2 U 102/81 -,
in IIC 1984, 538 ff, “Right of Inspection”;
NJWE-WettbR 2000, 303 ff;
Sending a warning letter before claiming for a preliminary injunction is not
reasonable if the applicant also claims for a sequestration in the preliminary
Order for preservation of evidence
injunction because he fears that the specific probable infringing items will be
stashed by the infringer after receiving the warning letter (here: Trademark
Federal Supreme Court (Bundesgerichtshof), decision dated January 8,
Law).
1985, - X ZR 18/84 -, in IIC 1987, 108 ff, “Pressure Beam (Right of
Inspection II) Druckbalken”;
Appeal Court Schleswig, decision dated April 4, 2000, - 6 W 7/00 -, in
NJWE-WettbR 2000, 248 ff;
Details regarding the right to demand production and inspection of an item
Munich Court of Appeals, decision dated August 19, 1999, - 6 U 4043/
99 -, in IIC 2001, 333 ff, “Omeprazol-Ratiopharm”;
Requirements for preliminary injunction proceedings in patent cases
Also with respect to a legally represented major enterprise and an extremely
urgency sending a pre-judicial warning letter is not dispensable if modern
means of communication are at disposal.
District Court Mannheim, decision dated December 23, 2005, - 7 O 282/
05 -, in GRUR-RR 2006, 348 ff, “Etikettiermaschine”;
Frankfurt Court of Appeals, decision dated November 22, 2001, - 6 U
153/01 -, in IIC 2002, 980 ff, “urgency in patent cases”;
Details regarding the requirements for preliminary injunction proceedings in
patent cases
2.2.3.2.2 LIST OF CASES AUTHORISING INTERVENTION AT TRADE
FAIRS (ONLY AVAILABLE IN GERMAN LANGUAGE)
Requirements for decree of a preliminary injunction in patent cases: no
preliminary proceedings if the evaluation of the question of infringement
causes difficulties and there are doubts with regard to the protectability of the
main claim.
Appeal Court Düsseldorf, decision dated March 1, 2007, - 2 U 98/06 -, in
GRUR-RR 2007, 219 ff, “Kleinleistungsschalter”;
Appeal Court Düsseldorf, decision dated June 13, 1995, - U (Kart) 15/95 -,
in NJW-RR 1996, 123 ff;
Doubts regarding the validity of the patent in suit can only be pleaded in
Requirements for urgency according to 940 German Code of Civil
preliminary injunction proceedings if a nullity or opposition proceeding is
actually pending; exceptions may exist.
Procedure (ZPO)
Appeal Court Hamburg, decision dated November 23, 2006, - 5 W 167/
06 -, in BeckRS 2007 08988, “Dringlichkeitssch?dliches Warten”;
It requires an overall view of the single case to decide whether waiting for a
certain time argues against urgency according to 940 German Code of
Civil Procedure (ZPO).
18
2.3 ITALY
This order has been available in Italy even before 1979. The “descrizione” is
2.3.1 PRESENTATION OF THE GENERAL ENFORCEMENT
an order granted by the President of the competent court authorising the
plaintiff (assisted by the bailiff, eventually by a court expert and usually
RULES
In Italy the enforcement of IP rights can be managed through the civil and
the criminal point of view1.
2.3.1.1 CIVIL
Civil enforcement is dealt with through 12 specialised IP courts located in
the Italian territory .
The usual practice of IPR enforcement involves two possible actions that
can be also combined:
a) ordinary action (on the merit)
concept of “evidence of the infringement” more broadly, extending the
power of the bailiff even to the collection of the documental and
accountancy evidence of the business related to the alleged infringement.
Such approach is particularly useful and significant in the enforcement
strategies because it offers the opportunity to collect ex parte all the
elements to quantify the damages suffered, without the risk of any
alteration that is typical during the main proceedings. Such an approach is
perfectly in line with the policy envisaged by EC Directive 48/2004, Sec. 7,
that de facto represents a codification of the Italian institute. The oral
proceedings will contain a detailed description of the operation and the
b) interim procedures (evidence collection tool, seizures and injunctions).
evidence collected. The aim and use of this procedure is to collect official
evidence of infringement for the purpose of using it in the trial. Normally,
Firstly, it should be noted that in order to start a litigation (via ordinary or
urgent proceedings) in Italy, the granting of a Patent is not requested: it is
the order can be obtained ex parte (inaudita altera parte) if there is a risk
that the defendant may remove all evidence of the allegedly infringing
goods. The order is granted quite rapidly (within 2-5 days) and normally
sufficient that the application shall be deemed public (even if in Italy there
is no official publication made by the Italian Patent Office) or simply
19
with a photographer) to inspect and describe the allegedly infringing
products/processes. The Italian case law recently started to interpret the
notified to the counterpart (art. 132 Italian IP code). So, in the case of a
European patent application, it is sufficient to file an Italian translation of
the application before the Italian Patent Office. Such a possibility offers a
remarkable competitive advantage with respect to other countries where
the litigation shall be initiated only after the granting of the Patent Right.
The ordinary action is usually started only when all the pieces of evidence
are already available and there is no matter of urgency (in Italy this means
no bond is requested. Requests for a search are frequently made during
expositions or trade fairs because no civil seizure is allowed in these
places. After the order for a search is issued, the plaintiff has 30 days to
summon the defendant for in ordinary trial. If this deadline is missed, all
the evidence collected will be invalid and cannot be used for any future
procedure. The collected evidence, in order to be used shall be officially
authorised by the judge to be admitted into the main proceeding. After
such a moment (usually after the second hearing), this evidence can be
used in any other context (i.e. parallel proceedings abroad).
that at least 9 months has already passed from the official knowledge of
the allegedly infringing event).
b) seizure and injunctive order.
The aim of the ordinary action is to obtain a declaratory statement by the
The Italian IP code expressly provides the “sequestro” (art. 129 Italian IP
code) and “inibitoria” (art. 129 Italian IP code) as interim relief.
court assessing the infringement, ordering the definitive interruption of
the infringing activities and to assign damages in favour of the defendant.
In Italy the ordinary proceeding usually last for 3-4 years at the first
instance and another 2-3 years for an appeal, if filed.
The seizure is and order with the aim to seize all the infringing goods and
also any possible good or tool that may univocally permit the
infringement.
There are two interim measures in Italy:
The inibitoria is an injunction order to cease and desist from using the
a) evidence collection tool (descrizione)
product or process allegedly infringing the patent by manufacture,
promotion, distribution, etc.
Such orders are subjected to the presence of two requirements:
1
In order of importance (due to the case workload): Milan, Rome, Venice, Turin, Naples, Blologna,
Florence, Genoa, Catania, Palermo,Bari, Trieste
i) urgency
How to protect your Intellectual Property at Trade Fairs=Experience and practice in Europe
ii) likelihood of reason
Two elements are essentially required for both provisions:
The first one implies the evidence that a irreparable harm will be
i) clearly objective infringement
suffered by the IP owner during the delay of the ordinary proceeding.
Moreover the reaction of the claimant to the infringing actions shall be
ii) consciousness to violate a third party IP right (mens rea)
shown in a timely way: a delay of more than 6 months from the date of
the awareness may lead to a rejection of the application for the interim
The usual practice of the IP criminal enforcement involves two possible
actions, frequently combined:
relief for lack of interest to an urgent measure.
a) the ordinary action
The second one implies evidence that the infringement can quite likely
be assessed on a preliminary basis. In the patent field such evidence
b) the evidence gathering procedures (“sequestro probatorio”) or
preliminary seizures (“sequestro preventivo”).
may be very difficult to assess on a summary basis. Anyway, the
judges usually decide to grant a preliminary measure after the
The aim of the ordinary action is to condemn and punish those who
appointment of a Court Expert, who has the task of assessing the
likelihood of the infringement limiting his report to a summary analysis
consciously infringed upon an IP right. The duration of an ordinary action
is about 4-5 years.
of the validity/infringement issues.
In the majority of the cases, however, a criminal case starts with the
The orders may be granted ex parte, but, actually, the IP courts very
rarely grant ex parte injunctions. The judge usually fixes a hearing in
order to discuss the preliminary issues and in patent cases appoints a
Court Expert in order to receive a technical support in order to decide
the case.
The court can also be requested to impose “astraintes” (monetary
fines) in case of a delay in complying with the order. Contempt of an
injunction granted by the court also constitutes a criminal offence.
As stated before, the abovementioned interim relief is not available
during trade fairs in Italy. The article 129.3 of the Italian IP code
expressly provides that:
application for an evidence gathering procedure asking for a seizure for of
evidence purpose on one sample of product. Where the infringement is so
evident that does not require any specific technical support (in general for
trademarks and designs) then is possible to proceed with a preliminary
seizure.
20
Usually such measures are adopted ex parte, within a very limited time
frame (2/5 days) and shall be confirmed by the Public Prosecutor within
48 hours, if adopted ex officio by the police.
Criminal measures may be enforced also during the trade fair. Criminal
enforcement is limited to clear cut cases of “copies”; cases of likelihood of
confusion or of not confusing similarity are normally proposed only via
the civil way.
“Except for the needs of criminal justice, the objects deemed to infringe an
industrial property right may not be seized but only described as long as
they are displayed within the fence of an exhibition, whether official or
2.3.2 SPECIFIC ENFORCEMENT ALTERNATIVES FOR THE
TRADE FAIRS
officially recognised, taking place in the territory of the Country or being
moved from, or to, such exhibition.”
In Italy, there is a system that is inspired by the Baselworld experience
It will only be possible to obtain the interim relief before the trade fair
e) since 2001, by MACEF, Milan (twice per year), managed by Fiera Milano
International
in order to rid the exhibition of the allegedly infringing goods or simply
ask for a description order to be executed during the trade fairs.
2.3.1.2 CRIMINAL
There are few provisions related to criminal enforcement:
and has been adopted by the following events:
f) since 2004, by EXPOCOMFORT, Milan (biannual), managed by Reed
Exibitions,
g) since 2007, by MARMOMACC, Verona (biannual), managed by Verona
Fiere
h) since 2008, by SAMOTER, Verona (biannual), managed by Verona Fiere
- art. 473 and 474 of the Criminal Code (ex officio)
- art. 127 of the Italian IP code (under party complaint)
The Italian solution is based into the automatic adoption and recognition
of a specific “Intellectual and Industrial Property Service Regulation”
Just after the execution of such inspection (called Protective Service) the
(hereinafter “Service”) for any exhibitor of the abovementioned events.
Claimant after discussed the evidence collected with the delegates may
invite the defendant to remove the items contested by the exhibition. If
Such a Regulation, created and implemented for the first time in the
MACEF of September 2001 and subsequently adopted (with minor
the defendant will refuse to do that, then the Claimant may ask the
Intervention Service, in order to obtain the compulsory removal of the
changes) in the other subsequent events, is designed as a sort an
arbitration regulation with a specific system of pre-trial evidence
contested items.
collection.
In this case, a hearing is fixed in the afternoon of the same day between
the Claimant and the Defendant before 3 Senior Experts appointed
There is no obligation for the exhibitors to devolve the IP issues before the
Service but the activity of the Service and of its delegates shall be
specifically for the case and with respect to conflict of interest and
specialisation. Both parties may be assisted by their own lawyers if any.
respected and no exhibitor may refuse interventions.
The panel of the 3 Senior Experts examines the complaint based on the IP
An alternative to such service may be only the request of a evidence
collection order (description order) by the Civil Court of Milan (for Milan)
rights and the contested objects in its plenary meeting. The panel renders
its decision within 1 hour from the end of the hearing and the decision is
or Venice (for Verona), or to raise up a possible criminal violation asking
for a seizure by the Public Prosecutor and the Guardia di Finanza (Italian
made in writing and delivered to the parties with immediate effect.
Revenue Police).
If an infringement is recognised by the panel, the defendant is invited to
remove the contested item immediately from the exhibition.
The Service Regulation defines the procedure, the costs, the scope of the
21
interventions and decisions. The decisions are based on EC laws and on
EC case law.
In case of refusal to execute the order, the continuation of the infringement will be considered relevant by the criminal point of view (objective
The injured party (exhibitors and non exhibitors) should hold IP rights
infringement assessed by the Experts and consciousness by the
defendant) and justify an immediate seizure by the Criminal Police,
valid in Italy (trademarks, registered designs or patents for instance,
including copyrights and unfair competition issues) to file a complaint
usually in force at the premises of the trade fair.
giving all the pieces of evidence required. The injured party can file orally a
complaint during the length of the fair, and the delegates of the Service
The Service is composed of the following delegates:
- 1 Coordinator of the Service
will formalise such request in a Verbal Proceeding verifying the identity of
the requesting person and the existence of the IP rights invoked (through
- 8 Italian IP lawyers appointed (covering by turn of 4 all the days of
the exhibition)
IP databases and the analysis of the evidence provided).
- 4 Italian SENIOR Expert Patent Attorneys appointed in case of
arbitration panel
As soon as the injured party has filed a complaint, after a prima facie
evaluation of the existence and the validity in Italy of the IP right invoked,
- 4 Italian SENIOR Expert Lawyers appointed in case of arbitration
panel
a delegation of the Service (2 persons, at least) accompanied by the
complainant move to the booth of the defendant for the inspection. The
2.3.3 DOCUMENTS
delegation of the Service presents the case to the person in charge of the
booth, takes note of the defendant's arguments and upon identification by
2.3.3.1 EXTRACTS OF LEGISLATION
the complainant, takes pictures of the items contested, without taking
away from the booth any item.
2.3.3.1.1 CIVIL
Italian IP Code
Such an activity is formalised in a Verbal Proceeding that includes pictures
and any declaration of the claimant and the defendant, signed by the two
delegates and by the defendant and issued in 3 copies (1 for the
Art. 120 - Jurisdiction
Art. 124 - Measures and sanctions
defendant, 1 for the claimant and 1 for the Service).
Art. 125 - Damage assessment and evaluation
Art. 126 - Publication of the decision
How to protect your Intellectual Property at Trade Fairs=Experience and practice in Europe
Art. 128 - Description order
Art. 129 - Seizure
Art. 130 - General provisions
Art. 131 - Injunction
2.3.3.1.2 CRIMINAL
Italian IP Code
Art. 127 - Criminal enforcement and administrative sanctions
Criminal Code
Art. 473 - Infringement of any IP right
Art. 474 - Introduction into Italian territory of any infringing IP right
2.3.3.2 RELEVANT COURT DECISIONS
Case law on intervention at trade fairs basically refers to cases of
description orders before the IP specialised Courts (first instance level) in
relation to the right to inspect the exhibition booth of the alleged
infringer in order to file a complaint.
In this regard, the following may be cited: Court of Milan, 23 April 2004
case Perspexlandia s.r.1. v. Adreani Bijoux s.n.c. and Adreani Fiorella and
Pamela, Judge De Sapia affirmed that “It is not iIlegal to activate the Service
of Information and Protection of the IP rights provided by Fiera Milano
International”. Accordingly, the evidence collected through the MACEF
“Service” was full legally valid and usable for other further proceedings
before the normal jurisdiction. Such a decision confirms the complete
legal validity of the evidence collected through alternative systems at
trade fairs.
22
2.4 SPAIN
Therefore, Preliminary Proceedings may be initiated against a potential
2.4.1 PRESENTATION OF THE GENERAL ENFORCEMENT
defendant whose intention is to exhibit a particular product at a trade fair.
In addition, the Patent Act (also applicable to trademark and industrial
RULES
In Spain the enforcement of IP rights can be managed from a civil and a
criminal point of view. Additionally, administrative law can also be used
in relation to customs seizures.
2.4.1.1CIVIL
design cases) provides for special Proceedings for the Verification of Facts.
The Proceedings for the Verification of Facts consist of the Judge physically
visiting the identified premises (for example, a trade fair) to determine
whether the machinery, devices, samples, products or facilities inspected
could serve to carry out the alleged IP infringement.
Civil enforcement is dealt with through specialised mercantile courts
(with jurisdiction in IP matters) located in the provincial capitals of
Alternatively to any judicial action, right-holders may also request the
Spanish territory.
presence of a Notary Public to officially certify that a particular product
has been exhibited at a trade fair. The right-holder may ask the Notary
The usual practice for IP enforcement involves two possible actions that
can be also combined:
Public to visit the trade fair and certify the facts and information being
shown at the trade fair. A Notary Public's Certificate may be used as
evidence in future judicial actions.
a)ordinary action (on the merit)
b)interim procedures (evidence collection tools, seizures and injunctions).
2.4.1.2 CRIMINAL
There are only a few provisions relating to criminal enforcement:
The ordinary action is usually started only when all the pieces of evidence
are already available and there is no matter of urgency. The aim of the
ordinary action is to obtain a declaratory statement by the Court
assessing the infringement, ordering the definitive interruption of the
infringing activities and to assign damages in favour of the plaintiff
23
In Spain, ordinary proceedings usually last 1-2 years at the first instance,
and another 1-2 years for the appeal, if filed.
In addition, civil legislation provides the right holder with the possibility
of requesting from the Court i) interim injunctions, as well as ii)
preliminary proceedings and proceedings for the verification of facts.
- art. 273-277 of the Criminal Code (ex officio)
- the Spanish Criminal Procedure Act provides with the legal measure for
the retention, gathering of evidence or even the destruction of the
goods seized.
In both kinds of provisions, two elements are essentially required:
i)clear objective infringement
ii)awareness of infringing a third-party IP right (mens rea)
The usual practice of IP criminal enforcement also involves two possible
actions, frequently combined:
Interim injunctions are aimed at obtaining a judicial order prohibiting,
inter alia, the exhibition or offer for sale of specific potentially infringing
products. Thus, the right holder may ask the Court in advance to prohibit
a particular product from being exhibited at a trade fair.
On the other hand, Preliminary Proceedings (“Diligencias Preliminares”)
are a preliminary procedure prior to the main proceedings in which the
a) the ordinary action
b) evidence gathering procedures or preliminary seizures, in order to
ensure the gathering of evidence or the ceasing of the infringement.
These measures may include the destruction of the goods seized,
although some samples should be kept for further investigations, if
required.
plaintiff simply requests that the defendants provide certain information.
The aim of the ordinary action is to condemn and punish those who
Law 19/2006 introduced a new “diligencia” consisting of allowing access
to financial, commercial, banking and Customs-related documents that
are controlled by the alleged offender of the IP rights on a commercial
scale.
consciously infringe an IP right. The duration of an ordinary action is
about 2 years.
In the majority of cases, however, a criminal case starts with the
application for an evidence-gathering procedure asking for a seizure of one
How to protect your Intellectual Property at Trade Fairs=Experience and practice in Europe
sample of the product for evidence purposes. Where the infringement is
que se aprueba el Texto Refundido de la Ley de Propiedad Intelectual,
so evident that it does not require any specific technical support (in
general, for trademarks and designs), then is possible to proceed with a
regularizando, aclarando y armonizando las disposiciones legales
vigentes sobre la materia)
preliminary seizure.
All of the above regulations were amended by Ley 19/2006, de 5 de
junio, por la que se amplicacioen los medios de tutela de los derechos
Usually such measures are adopted ex parte, within a very limited time
frame, and should be confirmed by the Public Prosecutor if adopted ex
de propiedad intelectual e industrial y se establecen normas procesales
para facilitar la aplicacioen de diversos reglamentos comunitarios,
officio by the police.
implementing in Spain Directive 2004/48/EC of the European Parliament
and of the Council of 29 April 2004 on the enforcement of intellectual
The criminal measures may be also enforced at trade fairs. The real limit of
the criminal enforcement is that limited to clear-cut cases of “copies”.
property rights.
Cases of likelihood of confusion or of non-confusing similarity are
normally proposed only via the civil procedure.
2.4.3.1.2 CRIMINAL
2.4.1.3 ADMINISTRATIVE
Regulations on Customs, such as Council Regulation (EC) No. 1383/2003
of 22 July 2003 (concerning customs actions against goods suspected of
- Criminal Procedure Act (Ley de Enjuciamiento Criminal de 14 de
septiembre de 1882)
- Criminal Code (Ley Orgaenica 10/1995, de 23 de noviembre, del Cdigo
Penal)
infringing certain IPRs and the measures to be taken against goods found
to have infringed such rights) may also be used for the retaining or
Case law on intervention at Expos basically refers to interim injunction
suspension of the release of goods to be shown at a trade fair or Expo. IP
right-holders may use the proceedings provided in Council Regulation
cases before the Spanish Commercial Courts (first instance level) in
relation to the prohibition on exhibiting a product at an Expo.
1383/2003 to retain and suspend the release of potentially infringing
goods trying to enter Spain to be exhibited at a trade fair.
In this regard, the following may be cited:- Ruling 302/2006 (interim
2.4.2 SPECIFIC ENFORCEMENT ALTERNATIVES FOR
2.4.3.2 RELEVANT COURT DECISIONS
injunction) of Commercial Court of Barcelona no. 1, of 11 May 2006. In
this case, the right-holder had previous information that a particular
There are no specific provisions regarding any intervention in IP enforce-
infringing industrial design was to be exhibited at a motorcycle fair in
Barcelona. Although the potentially infringing product had already been
ment during trade fairs. The law merely provides, in general, that
interventions may be requested and granted should they comply with the
on the market, the exhibition of such infringing design at a major fair may
have had a significant impact on the market.
legal requirements provided in the Civil Procedure Act and the relevant
regulation (Patent, Trademark, Design or Copyright law), as well as the
Narrowing the interim injunction application on banning the defendant
TRADE FAIRS
Criminal Procedure Act and the Criminal Code, should this be the case.
from promoting the product at that particular trade fair, the Court upheld
the request and prohibited the exhibition of such infringing design only
2.4.3 DOCUMENTS
for that particular fair, but not from other commercial activities, as they
had already been carried out. In addition, regarding customs actions, there
2.4.3.1 EXTRACTS OF LEGISLATION
have been some cases in which the right holder has prevented the
potentially infringing goods from being exhibited at a trade fair in Spain by
2.4.3.1.1 CIVIL
retaining the products at customs under Council Regulation 1383/2003.
- Civil Procedure Act (Ley 1/2000, de 7 de enero, de Enjuiciamiento Civil)
- Trademark Act (Ley 17/2001, de 7 de diciembre, de Marcas)
- Patents and Utility Models Act (Ley 11/1986, de 20 de marzo, de
Patentes de Invencioen y Modelos de utilidad)
- Protection of the Industrial Design Act (Ley 20/2003, de 7 de julio, de
proteccioen jurîdica del disno industrial)
- Copyright Act (Real Decreto Legislativo 1/1996, de 12 de abril, por el
24
2.5 SWITZERLAND
party to keep the entire inventory as it was listed. The sale and the
2.5.1 PRESENTATION OF THE GENERAL ENFORCEMENT
exhibition of the contested goods listed are forbidden. Furthermore, the
Court order could also include the seizure of all documents, such as
RULES
In Switzerland, the enforcement of IP rights can be organised through civil
and criminal actions. There are no specific provisions regarding the
enforcement of IP rights during exhibitions. Therefore, all the legal means
foreseen by the IP Swiss Laws and by the Criminal Swiss Code as well as
by certain General Provisions can be used by the right holder (see
paragraph 3.4.3.1).
invoices, balance sheet, credit card receipt, account books, accounting
software and all data regarding the production and the distribution of the
counterfeiting goods.
The judge may ask for a security (bank guarantee, usually between CHF
10,000.- to CHF 100,000.) to insure possible damages suffered by the
adverse party in case the interlocutory injunction is pronounced "ex parte"
but not confirmed by the court after hearing the adverse party.
During exhibitions, all means of action (civil and criminal measures, see
the aforesaid articles) are at the disposal of the right holders without any
limitation. However, since the infringement of the IP rights is limited to
the length of the exhibition, the interlocutory injunctions, foreseen in the
aforesaid laws, are the most effective ways to enforce the IP rights. The
Criminal provisions can be used only if the intention of the counterfeiter
can be ascertained.
After the interlocutory injunction is pronounced, the Court will hear in a
very short time the adverse party, which will be authorized to present its
defence. The Court will confirm or not its interlocutory injunction. If such
interlocutory injunction is confirmed, it should be followed by a procedure
on the merits.
2.5.1.2 CRIMINAL
2.5.1.1 CIVIL
Interlocutory Injunction
Each IP Law provides criminal provisions (see paragraph 3.4.3.1) without
mentioning the provision of the Criminal Swiss Code specifically related to
IP infringements.
The injured party can file an interlocutory injunction at the Court of the
Canton where the exhibition is located (Switzerland is divided into 26
Cantons with 26 different codes of civil procedure).
As the procedure is different from a Canton to another, it is impossible to
25
describe precisely the sequence of such interlocutory injunction.
Nevertheless such procedure can be summarized as follows:
In case of IP infringement (depending on the degree), the accused may be
fined and/or sentenced to up to three days imprisonment until five years,
if he acted on a professional basis. In such case, he is prosecuted “ex
officio”. Otherwise, the right owner has to file a complaint in front of the
competent authority usually at the District Attorney's Office or at the
Police Department Office, where the infringement takes place or where the
result of the infringement occurred.
The request for the interlocutory injunction should be addressed to the
High Court of the Canton (usually the second degree of jurisdiction of the
Canton). In its request, the injured party has to give all evidences to
demonstrate its IP rights, a serious likelihood of a violation of its IP rights,
an urgency to get an immediate measure and to stop any further
damages. Furthermore, the request shall be granted "ex parte" to avoid the
risk the adverse party removes or destroys evidences including counterfeited products. This procedure allows the Court to give an interlocutory
injunction which forbids the adverse party to infringe the IP rights and
which forces it to withdraw all products infringing the IP rights proposed
at the exhibition. The decision is taken without any delay and without
hearing the adverse party (ex parte interlocutory injunction).
Either the court decides to seize any products infringing the IP rights or to
have an inventory of such products, with the obligation for the adverse
The Swiss criminal provisions also foresee the seizure and the destruction
of the counterfeiting goods.
The accused can only be sentenced if the prosecutor can demonstrate that
he acted with the consciousness and the intention to infringe the third
party IP right.
The criminal measures may be enforced also at the trade fair.
2.5.2 SPECIFIC ENFORCEMENT ALTERNATIVES FOR THE
TRADE FAIRS
2.5.2.1 GENERAL COMMENTS
The exhibition organisers (management of the fair) and the exhibitors may
agree that any IP infringement during the fair should exclusively be
How to protect your Intellectual Property at Trade Fairs=Experience and practice in Europe
submitted to an arbitration commission set up by the management body
of the fair.
3. The same day, the Panel examines the complaint and renders its
decision and develops its conclusions.
The organisation and the functioning of the arbitral commission are
determined by the parties as any contractual relationship. The procedure
4.
is also set by the parties. The parties elect the Swiss law (the aforesaid
Federal laws) and the sentence shall have only validity during the length
infringement is recognized by the Panel, the defendant is invited to sign
an undertaking in which it commits itself not to sell, to exhibit or to
and within area of the fair.
promote the contested objects during the length of the fair. The losing
party has to support the administrative costs. The contested objects,
The private solution to designate an arbitration commission regarding IP
rights is widely accepted in Switzerland and has not been contested by
which were taken away by the delegation, are handed back to the
defendant.
The decision is notified to the parties on the following day. If an
any Courts or any legal writings.
The Panel is composed of 7 members:
To our knowledge, only one exhibition in Switzerland has set up an
arbitration commission to resolve the IP litigation, described below.
- 1 Chairman, a lawyer of Swiss nationality
2.5.2.2 EXAMPLE OF THE PANEL DURING BASELWORLD
- 2 other lawyers of Swiss nationality
- 1 patent lawyer practising in Switzerland
Since 1985, the Watch and Jewellery Show Baselworld has set up an
arbitration commission called “the Panel”. Since the exhibitors have
recognised the Panel's authority by signing the exhibitor contract with the
management of the fair, exhibitors have to submit any case regarding IP
infringement by an other exhibitor (the defendant) to the Panel. The
defendant has also the obligation to accept the Panel's decisions.
However, a non-exhibitor, as it did not sign any exhibitor contract with
the management of the fair, can choose either the competent Court of the
Canton of Basel or the Panel, as the exhibitor is committed to accept the
jurisdiction of the Panel.
- 2 experts of non Swiss nationality, with special knowledge of the
watch industry
- 1expert of non-Swiss nationality, with special knowledge of the
jewellery sector
The defendant can provide any arguments during the Panel inspection or
before the Panel begins its plenary meeting. After the notification of the
Panel decision, the defendant can appeal the Panel decision by providing
new elements during the length of the fair.
2.5.2.3 EFFECTIVENESS OF THE PANEL PROCEDURE
This Panel has its private regulation (see the enclosure) which defines the
The effectiveness of the Panel has been established through its 24 years of
procedure, the costs, the scope of the decision and the appeal. The
decisions are based on the Swiss laws and on the Swiss case law. For all
existence:
questions of procedure, the local Cantonal Basel-City Civil procedure law
is applicable subsidiarily.
As the whole watch and jewellery industry is concentrated in Basel for
one week, right holders can check their competitors and intervene against
1.
any infringement of their IP rights without risking all the usual problems
related to obtaining a Court order from the Tribunal.
The injured party should hold IP rights valid in Switzerland
(trademarks, designs or patents for instance) to file a complaint (copy of
the registration certificate is sufficient). The injured party can file orally a
It is a very useful tool to enforce IP rights, quite inexpensive for right
complaint during the length of the fair.
holders. The Panel takes its decisions in 24 hours. The fees of the
procedure are around =C1,200. There are 35 to 50 complaints each year,
2. As soon as the exhibitor or the non exhibitor has filed a complaint, a
delegation of the Panel (2 persons) accompanied by the complainant
meaning from beginning of the Panel a law practice consisting in more
than 800 cases.
move to the booth of the defendant for the inspection. The delegation of
the Panel presents the case to the person in charge of the booth, takes
2.5.2.4 SCOPE OF THE DECISIONS OF THE PANEL
note of the defendant's arguments and upon identification by the
complainant, takes away for closer inspection in the frame of its plenary
Since the Panel decision is limited to the length of the fair, if it wishes, the
right holder can enforce its IP rights "outside" the fair. It may settle the
meeting several items of the contested object.
case by an amicable agreement which shall apply worldwide, or it may
26
proceed at the Basel- Court, as according to the Swiss Federal Law on the
rights of privacy, for instance the rights on the family name, the right of
Jurisdictions, the place of the infringement of IP rights determines the
jurisdiction of the Court (forum).
publicity or the right of image, while the protection for the trade name is
granted by the Swiss Obligations Code (article 956 CO).
In this perspective, the decision of the Panel could be provided as
Article 155 of the Swiss Criminal Code regarding the manufacture, the
evidence that the contested objects were indeed exhibited during the fair
and as a presumption of an IP's infringement.
importation and the distribution of counterfeiting goods deceiving the
consumers or/and the competitors.
A decision of the Panel, which recognizes the IP infringement, is an
2.5.3.2 RELEVANT COURT DECISIONS
important element in the file. On the contrary, if the Panel does not
confirm the IP infringement, it could be detrimental to the right owner as
As the Panel decision is a decisive element in the file, most of the time
the parties will find an extrajudicial agreement after the show. However,
the adverse party will not fail to produce the Panel decision during the
civil proceeding, especially considering that such decision has been
in few cases, the right holder may be obliged to file a civil action in front
of the Civil Court of the Canton of Basel to enforce its rights outside the
rendered by expert in IP rights.
fair.
2.5.3 DOCUMENTS
For instance, in a recent case (ATF 130 III 636 dated July 13, 2004), the
Swiss Federal High Court confirmed the decision of the Panel. All the
2.5.3.1 EXTRACTS OF LEGISLATION
analyses and comments of the Panel have been taken into consideration
by the High Court. Of course, the Swiss Federal High Court was not
Federal Law on Copyright and Neighbouring Rights
bound by the Panel decision and freely examined the case.
Civil action: Articles 61 to 66
Criminal action: Articles 67 to 73
Federal Law on the Protection of Trademarks and Indications of Source
Civil action: Articles 52 to 60
Criminal action: Articles 61 to 69
27
Federal Law on Designs
Civil action: Articles 33 to 40
Criminal action: Articles 41 to 45
Federal Law on Patents for Inventions
Civil action: Articles 66 to 71 and 72 to 80
Criminal action: Articles 66 to 71 and 81 to 86
Federal Law against Unfair Competition
Civil action: Articles 9, 12 to 14
Criminal action: Articles 23 to 27
General Provisions
Furthermore, the Swiss Civil Code (articles 28 and 29 CC) protects the
How to protect your Intellectual Property at Trade Fairs=Experience and practice in Europe
2.6 THE NETHERLANDS
infringement can not reasonably be denied, unless the alleged infringer
2.6.1 PRESENTATION OF THE GENERAL ENFORCEMENT
can demonstrate that there is a serious, not to be neglected chance that a
Court deciding on the merits will rule otherwise, for instance will rule
In the Netherlands there are no specific rules for IPR enforcement during
that a patent or trade mark is invalid. It is up to the defendant to provide
these invalidity arguments. A judge in summary proceedings can only give
trade fairs. No distinction is made as to where the measures are applied.
For IP enforcement during trade fairs the general rules for enforcement of
a preliminary assessment, which is not binding to the Court in subsequent proceedings on the merits. A decision in summary proceedings
IP rights are applicable.
lapses if the plaintiff does not initiate proceedings on the merits within a
certain term, usually one to six months after passing the summary
As a rule, IP rights are enforced by right holders themselves, i.e. by civil
enforcement. Criminal and administrative enforcement are possible as
judgment.
well. However, only in very exceptional situations IP enforcement based
on criminal and administrative regulations occurs.
When the injunctive relief decision is overruled at a later stage, in appeal
or in proceedings on the merits, and has been enforced in the meantime,
In the Netherlands, most proceedings regarding patents are exclusively
the defendant is entitled to compensation of damages from the claimant,
which have to be claimed in separate damage proceedings.
RULES
held before the District Court and Court of Appeal in The Hague. These
Courts have a number of judges with extensive experience in IP law and
with considerable technical knowledge.
2.6.1.1.2 EX PARTE PRELIMINARY INJUNCTION
The IP right owner can also file a request for an ex parte injunction, i.e.
the defendant will not be heard on the request. Ex parte injunctive relief is
The general rules allow for enforcement by (preliminary) injunctions,
available in pressing matters, in particular if the IP right owner will
otherwise suffer “irreparable damage”. The relief is temporary. It lapses if
seizures of infringing products or by measures for preserving evidence
(samples, documents and the like). The fact that the enforcement takes
the plaintiff does not initiate proceedings on the merits within a certain
period as determined by the Court in the grant of the request.
2.6.1.1 CIVIL
place at a trade fair does not affect the applicability of the general rules.
For ex parte injunctive relief, the IP right owner must file a request with
In preliminary injunction proceedings, a Court may grant provisional
the District Court. In the request he must explain why the other party is
infringing or threatens to do so. If the claim appears prima facie valid to
measures in urgent matters. IP infringement is normally considered
urgent. Summary proceedings usually only consist of a writ of summons
the Court and the “pressing matter” requirement is considered to be met,
the Court will grant the request, generally on the same day or the day
and an oral hearing. The plaintiff will request the Court to set a date for
the oral hearing before serving a writ of summons upon the defendant.
after it was filed.
The date for the oral hearing is usually scheduled between 2 and 4 weeks
after service of the writ.
The defendant can request a revision of the ex parte decision in summary
proceedings. In general it will take a couple of days or more to obtain a
The defendant may file a statement of answer (but is not obliged to do so)
date for a hearing of the case in Court. In recent ex parte decisions, the
Court has often reserved a date for a hearing on the revision on
and each party may file exhibits as they like, provided that the rules of due
process are observed, meaning that a party must have a “reasonable
beforehand, should the party against whom the preliminary injunction
has been granted wish to request such a revision.
2.6.1.1.1 INTER PARTES PRELIMINARY INJUNCTION
opportunity” to respond to the other party’s exhibits.
As is the case with an injunction granted after inter partes proceedings,
The oral hearing, which can be rather informal, is presided by a single
judge. Both parties get an opportunity to plead their case and often the
when the ex parte injunctive relief decision is overruled at a later point in
time and has been enforced in the meantime, the defendant is entitled to
judge will ask the parties to clarify any issues unclear to him. Usually, a
decision is rendered 2 to four weeks later.
compensation of damages.
Proceedings on the merits
The chance that an IP right owner obtains injunctive relief is high when
As stated above, preliminary injunctive proceedings are to be followed by
28
regular proceedings on the merits to prevent the lapse of a preliminary
measure. Regular proceedings on the merits are the most extensive legal
procedures. They can also be initiated without prior preliminary
uncommon.
2.6.1.3 ADMINISTRATIVE
proceedings.
The most important administrative measure regarding IP enforcement is
the seizure of goods by the customs authorities. This measure can be
In general, regular proceedings can take up to about one year before a first
(interim) decision is rendered. For patent proceedings it is possible to file
taken with respect to any infringing products brought into the
Netherlands, also against products that are intended to be shown at trade
so called “accelerated proceedings on the merits”. In accelerated
proceedings a first (interim) decision is rendered in less than a year.
fairs.
2.6.1.1.3 CIVIL SEIZURE OF GOODS
Regulation 1383/2003/EC sets out the conditions for action by the
customs authorities against products suspected to infringe upon
The IP right owner can seize allegedly infringing goods wherever they are
in the Netherlands. He must file a request with the District Court,
intellectual property rights a.o. when they enter the European Union. This
Regulation has been implemented in all European countries (Member
asserting that the products at issue infringe the owner’s rights. The Court
will in principle grant a request for seizure on the presumption that the IP
States) and thus also in the Netherlands. In the event of infringement the
action can only be taken against products suspected of infringement of IP
right owner’s allegation is correct. The allegedly infringing party will not
be heard.
rights valid in the Member State where the application for customs action
is made. This means that the Dutch customs can only take action against
products suspected to infringe an IPR valid in the Netherlands.
The seized goods will have to remain where they are, or will be kept by a
third party (often a bailiff). The allegedly infringing party can at any time
request the Court in summary proceedings to lift the seizure. The seizure
The main requirements for applying for a customs action are the
submission by the applicant (the IP right owner) of a description of the
is lifted if the alleged infringer can show that it does not infringe or that
there is likelihood that the IP right at issue is invalid.
alleged infringing products of sufficient detail in order to make it possible
for the authorities to identify the goods when they are submitted for
The Court which grants the seizure will set a term (usually 15 to 30 days
clearance by customs. The authorities do not check whether the rights
invoked by the applicant are valid or whether these rights are actually
for foreign companies), starting on the day of the first attachment by the
bailiff, within which the IP right owner is to start infringement
infringed.
proceedings. If proceedings are not started in time, the seizure will be
lifted automatically.
When customs authorities discover products according to the description
they will suspend the release thereof. Customs shall then inform the
2.6.1.1.4 PRESERVATION OF EVIDENCE
29
If there is evidence available to reasonably support an infringement claim,
the Court may order provisional measures to preserve relevant evidence,
applicant and the declarant of the products of the suspension. The
applicant gets the opportunity to inspect the products.
The law of the Member State where the suspension took place determines
such as the description of a process or (samples of) infringing goods. In
the context of infringement proceedings, the Court may also order that
whether an IP right has been infringed.
information on the origin and distribution networks of the goods is
provided to a bailiff.
Unless the applicant and the declarant or the owner of the products agree
that these may be destroyed, the applicant must inform the customs
The confidentiality of the seized evidence must be guaranteed, the
authorities within a period of 10 working days of receipt of the notification of suspension that infringement proceedings have been initiated. This
requesting party does not get access to it. Separate proceedings have to
be initiated in order to obtain access to any information thus preserved.
period may be extended by another 10 working days. If such notification
is not received the suspension will be terminated.
2.6.1.2 CRIMINAL
The Dutch Penal Code and the separate IP Acts contain provisions that
make infringement of IP rights punishable as a criminal offence. Enforcement of the criminal provisions regarding IP rights however, is very
In general, an IP right owner in the Netherlands will make use of the
possibility under Dutch procedural law to request a civil seizure of the
alleged infringing products before the above described period of 10-20
working days has expired.
How to protect your Intellectual Property at Trade Fairs=Experience and practice in Europe
2.6.2 ALTERNATIVE MEASURES
Art. 30b, 31 - 36b AW (Copyright Act)
Trade fair organisations do not offer alternative measures for IP
Art. 21 - 30 WNR (Neighbouring Rights Act)
enforcement. There is no legislation or case law prohibiting alternative
Art. 79 ROW 1995 (Patent Act)
measures.
Art. 7 Hnw (Trade Names Act)
2.6.2.1 CURRENT PRACTICE
Administrative
IP enforcement at trade fairs is often chosen because in some cases this is
the first occasion an infringing product is presented to the public. The
public relations efforts surrounding trade fairs can bring infringing
activities to the attention not only of the public, but also of the right
holder. Furthermore, trade fairs allow for easy access to products of
foreign parties, whose activities normally do not take place in the
Netherlands. Finally, a seizure at a public venue like a trade fair can have
considerable PR value for the right holder.
2.6.2.2 CONSEQUENCES OF IP ENFORCEMENT
Regulation 1383/2003/EC
2.6.3.2 RELEVANT COURT DECISIONS
For IP enforcement measures in the Netherlands no distinction is made as
to where the measures are applied. As noted above, no specific rules exist
that cover trade fair situations. Consequently, there is no case law on
legal issues connected with enforcement at trade fairs, although the fact
that enforcement took place at a certain venue might be mentioned in the
representation of the factual circumstances of a case.
It is again pointed out that in the Netherlands there are no specific rules
for IPR enforcement during trade fairs. Virtually all enforcement is done by
the right holders themselves and no (further) intervention by authorities
is required.
On the basis of the general rules, a defendant can object to the measures
requested by the right owner and can request a review of the decision
allowing the measures. In view of the urgency that is usually present in
cases of IP enforcement, such a request will be dealt with quickly by a
summary proceedings judge. A decision can be obtained within days, and
sooner if necessary.
2.6.3 DOCUMENTS
2.6.3.1 EXTRACTS OF LEGISLATION
Civil
Preliminary proceedings: Art. 254 ff. Rv (Code of Civil Procedure)
Civil seizure: Art. 700 ff. Rv
IP enforcement: Art. 1019 ff. Rv
Art. 26 ff. AW (Copyright Act)
Art. 13 ff. WNR (Neighbouring Rights Act)
Art. 2.19 ff. BVIE (Benelux Treaty on Intellectual Property)
Art. 70 ff. ROW 1995 (Patent Act)
Art. 6 Hnw (Trade Names Act)
Criminal
Art. 326b, 337 WvS (Penal Code)
30
LIST OF ACRONYMS
31
ATF
Recueil des Arréts du Tribunal Fédéral Suisse (Official Collection of the Decisions of the Federal Tribunal of Switzerland)
BGB
Buergerliches Gestzbuch (German Civil Code)
BVIE
Benelux Verdrag inzake de Intellectuele Eigendom (Benelux Convention on IP)
CHF
Swiss Franc
CC
Swiss Civil Code
CDPA
Copyright, Designs and Patents Act of the United Kingdom (of 1988)
EU
European Union
EC
European Community
GRUR
Gewerblicher Rechtsschutz und Urheberrecht (German sociery on industrial property rights and copyrights)
IP
Intellectual Property
IPR
Intellectual Property Rights
MACEF
Milan International Home Show
NJW
Neue Juristische Wochenschrift
NJWE
NJW-Entscheidungsdienst
NEC
National Exhibition Centre
PR
Property Rights
NJW-RR
Neue Juristische Wochenschrift - Rechtsprechungs-Report (German Law Journal - Report on Jurisprudence)
TRIPS
Trade-Related Aspects of Intellectual Property Rights
UFI
Union des Foires Internationales (Global Association of the Exhibition Industry)
UK
United Kingdom
UWG
Gesetz Gegen Unlauteren Wettbewerb (Unfair Competition Act of Germany)
WTO
World Trade Organisation
WNR
Wet Naburige Rechten (Neighbouring Rights Act of the Netherlands)
WIPO
World Intellectual Property Organisation
ZPO
Zivilprozessordnung (German Code of Civil Procedures)
How to protect your Intellectual Property at Trade Fairs=Experience and practice in Europe
NOTES
This publication is prepared under the EU-China Project on the Protection of Intellectual Property Rights (IPR2) and aims to
inform industry on how to protect its intellectual property in the context of trade fairs. For other publications and information
visit www.ipr2.org or contact IPR2 ([email protected]).
IPR2 is a partnership project between the EU and the Peoples Republic of China on the protection of intellectual property
rights in China. This is done by providing technical support to, and building the capacity of the Chinese legislative, judicial and
administrative authorities in administering and enforcing intellectual property rights; improving access to information for users
and officials; as well as reinforcing support to right holders. IPR2 targets the reliability, efficiency and accessibility of the IP
protection system, aiming at establishing a sustainable environment for effective IPR enforcement in China.
The European Patent Office (EPO) is the European implementing
The Department of Treaty and Law of the Ministry of Commerce
organisation for IPR2, with the support of the EPO Member States in
specific fields and the Office for the Harmonisation of the Internal
(MOFCOM) is the IPR2 Chinese implementing organisation.
www.mofcom.gov.cn
Market (OHIM) on trademark and design.
www.epo.org
www.oami.europa.eu
This publication has been produced with the assistance of the European Union.