Skip to main content Accessibility help

We use cookies to distinguish you from other users and to provide you with a better experience on our websites. Close this message to accept cookies or find out how to manage your cookie settings.

Close cookie message
×
  1. Home
  2. Publications
  3. Publishing partners
  4. Intersentia
  5. Content Listing

Refine listing

Refine listing

Access:
Content type:
Publication date:
Apply   From and To filters
Subject: Show more
Journals Show more
Publishers: Show more
Societies Show more
Series: Show more
Collections: Show more

Actions for selected content:

Select all | Deselect all
  • View selected items
  • Export citations
  • Download PDF (zip)
  • Save to Kindle
  • Save to Dropbox
  • Save to Google Drive

Save Search

You can save your searches here and later view and run them again in "My saved searches".

Please provide a title, maximum of 40 characters.
Cancel
×

7719 results in Intersentia

Page 172 of 386

  • Chapter 22 - Enforcement of Intellectual Property Rights in Poland

    • By Tomasz Targosz, Attorney at Law at Traple Konarski Podrecki & Partners.
  • Edited by Flip Petillion
  • Book:
    Enforcement of Intellectual Property Rights in the EU Member States
    Published by:
    Intersentia
    Published online:
    12 April 2019
    Print publication:
    31 January 2019, pp 899-930

  • Summary

    NATIONAL LAW IMPLEMENTING THE ENFORCEMENT DIRECTIVE

    A. PRIMARY AND SECONDARY LAW

    The Enforcement Directive was implemented in Poland by the Law of May 9, 2007 amending the Copyright Act and other statutes. This law amended several statutory acts concerning intellectual property rights, i.e.

  • – The Act on Copyright and Related Rights;

  • – The Law on Industrial Property;

  • – The Act on the Protection of Databases of July 27, 2001;

  • – The Act on the Protection of Plant Varieties of June 23, 2003.

    • The Enforcement Directive had been enacted before Poland joined EU as a Members State on May 1, 2004.

    B. TRANSPOSITION ISSUES

    At the time of the Enforcement Directive's implementation, the Polish legislator believed that Polish law already met a significant part of the objectives required, mainly with regard to procedural issues. This was not always correct. The legislator seems to have, in particular, misunderstood the concept of intermediaries and the legal grounds for imposing obligations on them. The provisions on damages in copyright law have also proven problematic. For a reason that has not yet been explained satisfactorily, the Polish implementation has two distinct forms. The same provisions of the Enforcement Directive have been given different treatment in copyright law and in industrial property law. While in some cases, e.g. when it comes to damages calculated as a multiplied license fee, these differences could be traced back to the pre-existing regulations, they are more difficult to explain with regard to concepts that had not been applied in Polish law prior to the implementation. A formal reason for this divergence could have been the fact that different ministries were responsible for the implementation in copyright and in industrial property law. The differences between the Copyright Act and the Law on Industrial Property have been mirrored by the statutory acts covering other IP rights – both the Database Act and the Plant Variety Act follow the CA template (even though it can be argued that plant variety rights are in essence a type of industrial property).

    Despite the fact that the Directive contains measures that are clearly procedural in nature under Polish law, the implementation only amended statutes covering IP rights. Changes to the Code of Civil Procedure (CCP) have been extremely limited.

  • Chapter 19 - Enforcement of Intellectual Property Rights in Luxembourg

    • By Sophie Wagner-Chartier, Attorney at Law and Partner of the IP, Communication and Technology practice team at Arendt & Medernach., Julien Pétré, Associate in the IP, Communication and Technology practice team at Arendt & Medernach.
  • Edited by Flip Petillion
  • Book:
    Enforcement of Intellectual Property Rights in the EU Member States
    Published by:
    Intersentia
    Published online:
    12 April 2019
    Print publication:
    31 January 2019, pp 787-812

  • Summary

    NATIONAL LAW IMPLEMENTING THE ENFORCEMENT DIRECTIVE

    A. PRIMARY AND SECONDARY LAW

    1. Primary law

    The Directive 2004/48/CE on the enforcement of intellectual property rights (hereinaft er the “Enforcement Directive”) was implemented in Luxembourg by the law of 22 May 2009 (hereinaft er the “Law of 2009”) which amended both the law of 18 April 2001 on copyrights, neighbouring rights and databases rights (hereinaft er the “Copyright Law”) and the law of 20 July 1992 amending the rules on patents (hereinaft er the “Patent Law”).

    As well as amending the Copyright and the Patent Law, the Law of 2009 also contains a set of independent provisions (Art. 20 to 30) about evidence preservation (Art. 7 of the Enforcement Directive) and provisional and precautionary measures (Art. 9 of the Enforcement Directive). Those provisions are incorporated by reference into the Copyright and the Patent Law.

    Regarding trademark and design rights, it is worth noting that the Enforcement Directive was implemented by the Benelux Convention on Intellectual Property (hereinaft er the “Benelux Convention”).

    2. Secondary law

    No secondary law has been adopted in Luxembourg regarding the transposition of the Enforcement Directive.

    B. TRANSPOSITION ISSUES

    As the Enforcement Directive was only transposed in Luxembourg by the Law of 2009 while the deadline for transposition expired on the 29 April 2006, the Grand Duchy of Luxembourg was condemned by the Court of Justice of the European Union for its failure to transpose the Enforcement Directive within the prescribed timeframe.

    The Grand Duchy of Luxembourg did not deny the failure to comply with the set deadline, but argued that, given the infl uence of Belgian and French legislations and case laws in the field of intellectual property rights in Luxembourg, it was necessary to wait for both the French and Belgian transpositions before implementing the Enforcement Directive in Luxembourg.

    In this regard, it is worth noting that the Law of 2009 is similar (if not identical) to the wording of the Belgian transposition of the Enforcement Directive in many regards.

    JURISDICTION AND COMPETENCE

    A. COMPETENCE OF LOCAL COURTS

    Competence of local courts for copyrights, neighbouring rights and databases rights legal issues (Art. 79 and 81 of the Copyright law, Art. 23, 27, 28 and 29 of the Law of 2009): – The “Tribunal d'arrondissement” of Luxembourg is competent to conduct fi rst-instance proceedings.

Enforcement of Intellectual Property Rights in the EU Member States
  • Edited by Flip Petillion
  • Published by:
    Intersentia
    Published online:
    12 April 2019
    Print publication:
    31 January 2019
  • Enforcement of Intellectual Property Rights in the EU Member States provides a timely overview and thorough analysis of intellectual property rights enforcement in the EU Member States. Taking legal action in one or several countries in the EU to enforce intellectual property rights is quite a challenge. The adoption of European Directive 2004/48/EC on the Enforcement of Intellectual Property Rights was meant to put a halt to considerable discrepancies in national legislations which caused uncertainty and a difference in enforcement between the EU Member States. The Enforcement Directive aimed to create a level playing field and to ensure a high, equivalent and homogeneous level of intellectual property protection across the EU. Over the past decade, the Enforcement Directive has been transposed into all EU Member States, in national legislation and through its application in national and EU case law. Both are essential to understand the Enforcement Directive's actual scope of application. In order to prepare and undertake an action in different countries - potentially simultaneously - knowledge of national legislation, local custom and practice, as well as procedural law, national and EU case law is essential. This book is a collaborative effort of lawyers from top tier firms from all 28 EU Member States. It is a valuable resource for both practitioners - who are active cross-border and internationally - and general counsel - who seek an in-depth analysis of the legal landscape across the EU.

  • Chapter 2 - Enforcement of Intellectual Property Rights in Austria

  • Edited by Flip Petillion
  • Book:
    Enforcement of Intellectual Property Rights in the EU Member States
    Published by:
    Intersentia
    Published online:
    12 April 2019
    Print publication:
    31 January 2019, pp 49-92

  • Summary

    NATIONAL LAW IMPLEMENTING THE ENFORCEMENT DIRECTIVE

    A. PRIMARY AND SECONDARY LAW

    The intellectual property rights, as addressed by the Directive, are all codified under the federal statutes governing Austria's respective intellectual property rights (IPRs). The relevant statutes are the Patentgesetz 1970 (Patent Act), the Halbleiterschutzgesetz 1988 (Semiconductor-Protection Act), the Markenschutzgesetz 1970 (Trademark Act) and the Urheberrechtsgesetz 1936 (Copyright Act). No implementation measures were undertaken for either the Musterschutzgesetz (Design Act) or the Gebrauchsmustergesetz (Utility Model Act), as these statutes each apply the relevant provisions of the Patent Act by reference. Consequently, this chapter on Austria contains no references to these acts, and all statements on rights arising out of a patent infringement apply vice versa to these titles.

    B. TRANSPOSITION ISSUES

    The primary source of information in the legislator's view when implementing the Enforcement Directive are the accompanying materials, which are published regularly along with any new legislation (“non-binding explanatory notes”). In these notes, the legislator took the view that Austrian law, even prior to the introduction of these amendments, already largely complied with measures required under the Enforcement Directive, in particular with regard to Article 6. Nonetheless, some provisions required changes and clarifications to avoid any doubts as to what rights are available.

    The adaptions of Austrian law were carried out through two separate legislator acts: Amendment BGBl. I No. 96/2006, entering into force on June 24, 2006, and implementing amendments and new sections to the Patent Act, the Semiconductor-Protection Act, and the Trademark Act; the same is true for the Copyright Amendment 2006 (BGBl. I No. 81/2006) concerning the Copyright Act, entering into force on June 22, 2006.

    C. ASSESSMENT REPORTS ON THE IMPLEMENTATION

    The assessment report to be conducted by Member States within three years aft er implementation, as prescribed under Article 18 Enforcement Directive, is not publicly available for Austria. However, the Support study for the ex post evaluation and ex ante impact analysis of the IPR Enforcement Directive (IPRED) issued in April 2017 by the European Commission offers some guidance as to the implementation and effects in Austria (and all other EU Member States).

  • Chapter 18 - Enforcement of Intellectual Property Rights in Lithuania

  • Edited by Flip Petillion
  • Book:
    Enforcement of Intellectual Property Rights in the EU Member States
    Published by:
    Intersentia
    Published online:
    12 April 2019
    Print publication:
    31 January 2019, pp 757-786

  • Summary

    NATIONAL LAW IMPLEMENTING THE ENFORCEMENT DIRECTIVE

    A. PRIMARY AND SECONDARY LAW Lithuania has transposed the provisions of the Intellectual Property Rights Enforcement Directive 2004/48/EC (the “Enforcement Directive”) through primary legislation. Namely, the Enforcement Directive was implemented through amendments to the Lithuanian Law on Copyright and Related Rights, Patent Law, Law on Trademarks, Law on Designs, Law on the Legal Protection of Topographies of Semiconductor Products, and Law on the Legal Protection of Plant Varieties (collectively, the “Lithuanian legal acts implementing the Enforcement Directive”).

    B. TRANSPOSITION ISSUES

    Lithuania did not face any significant issues in the transposition of the Enforcement Directive. The transposition did not require sweeping changes because almost all of the remedies and measures referred to in the Enforcement Directive could be applied prior to the implementation of the Enforcement Directive (this was due to Lithuania's obligation to bring its legislation in line with the enforcement-related provisions of the TRIPS). The really new aspects that had to be transposed were the following issues: the right of information and publication of judicial decisions.

    In general, Lithuania implemented all of the Enforcement Directive's mandatory provisions as well as its non-mandatory provisions with regard to alternative measures. Furthermore, by reference to the Enforcement Directive's favourability clause (Art. 2(1)), Lithuania went beyond the Enforcement Directive's provisions to introduce certain, more stringent, measures: (i) multiple awards for infringements committed in bad faith; (ii) precautionary seizure of movable and immovable property of the alleged infringer, including the blocking of his/her bank accounts and other assets, for all infringements, i.e. beyond the “commercial scale” requirement; and (iii) a special rule on the burden of proof in the cases of recovery of profi t from the infringer.

    C. ASSESSMENT REPORTS ON THE IMPLEMENTATION

    As can be seen from the Commission's report on the application of the Enforcement Directive, Lithuania submitted an assessment report on the implementation of the Enforcement Directive to the Commission that was quite extensive and contained not only general information on the national situation, but also information on stakeholders’ perceptions. The report is not publicly available.

  • Chapter 5 - Enforcement of Intellectual Property Rights in Croatia

  • Edited by Flip Petillion
  • Book:
    Enforcement of Intellectual Property Rights in the EU Member States
    Published by:
    Intersentia
    Published online:
    12 April 2019
    Print publication:
    31 January 2019, pp 193-222

  • Summary

    NATIONAL LAW IMPLEMENTING THE ENFORCEMENT DIRECTIVE

    A. PRIMARY AND SECONDARY LAW

    Copyright and Related Rights:

  • – Copyright and Related Rights Act and Act on Amendments to the Copyright and Related Rights Act (OG No. 167/2003, 79/2007, 80/2011, 141/2013, 127/2014, 62/2017)

  • – Regulations on the Professional Criteria and Procedures for Granting Authorizations for Performing Collective Management of Rights and on Remunerations for the Work Done by the Council of Experts and Regulations on Amendments to the Regulations on the Professional Criteria and Procedures for Granting Authorizations for Performing Collective Management of Rights and on Remunerations for the Work Done by the Council of Experts (OG No. 72/2004, 151/2008, 90/2013)

    • Patents:

  • – Patent Act and the Act on amending the Patent Act (OG No. 173/2003, 87/2005, 76/2007, 30/2009, 128/2010, 49/2011, 76/2013, 46/2018)

  • – Patent Regulations and Regulations on Amendments to the Patent Regulations (OG No. 117/2007, 3/2011, 66/2011, 145/2012, 85/2013)

    • Trademarks:

  • – Trademarks Act and the Act on Amendments to the Trademarks Act (OG No. 173/2003, 76/2007, 30/2009, 49/2011, 46/2018)

  • – Trademark Regulations and Regulations on Amendments to the Trademark Regulations (OG No. 117/2007, 66/2011)

    • Industrial Designs:

  • – Industrial Design Act and the Act on Amendments to the Industrial Design Act (OG No. 173/2003, 76/2007, 30/2009, 49/2011, 46/2018)

  • – Regulations on Industrial Designs and Regulations supplementing the Industrial Design Regulations (OG No. 72/2004, 117/2007, 66/2011)

    • Geographical Indications and Appellations of Origin:

  • – Act on Geographical Indications and Designations of Origin of Products and Services and Act amending and supplementing the Geographical Indications and Designations of Origin of Products and Services Act (OG No. 173/2003, 76/2007, 49/2011, 46/2018)

  • – Regulations on Geographical Indications and Designations of Origin of Products and Services and Regulations supplementing the Regulations on Geographical Indications and Designations of Origin of Products and Services (OG No. 72/2004, 117/2007, 66/2011)

    • B. TRANSPOSITION ISSUES

    Thus far, no transposition issues have occurred in Croatia regarding the Directive on Enforcement of Intellectual Property Rights.

    C. ASSESSMENT REPORTS ON THE IMPLEMENTATION

    Croatian State Intellectual Property Office (CSIPO) has not compiled a report on this matter.

    JURISDICTION AND COMPETENCE

    A. COMPETENCE OF LOCAL COURTS Courts are state organs that exercise judicial authority autonomously and independently within the limits of their lawful competences and jurisdiction. When it comes to the civil protection of IP, the competent courts are the commercial courts.

  • Chapter 16 - Enforcement of Intellectual Property Rights in Italy

  • Edited by Flip Petillion
  • Book:
    Enforcement of Intellectual Property Rights in the EU Member States
    Published by:
    Intersentia
    Published online:
    12 April 2019
    Print publication:
    31 January 2019, pp 673-720

  • Summary

    NATIONAL LAW IMPLEMENTING THE ENFORCEMENT DIRECTIVE

    A. PRIMARY AND SECONDARY LAW

    The Enforcement Directive was implemented in Italy through the legislative decree No. 140 of March 26, 2006, which modified and introduced several provisions to the already existing laws on copyright, industrial property and public security. In particular, the Enforcement Directive was implemented by modifying the following pieces of legislation:

    Law No. 633 of April 22, 19411 (also known as the “Copyright Act”);

    b) Legislative Decree No. 30 of February 10, 20052 (also known as the “Industrial Property Code”);

    c) Royal Decree No. 733 of June 18, 1931 (also known as “Consolidated Law on Public Security”).

    The Legislative Decree 140/2006 also modified the consolidated law on public security by introducing Article 85bis. This law prohibits the introduction, installation or any other use in any public place of devices or equipment used to record, reproduce, transmit or fi x on any technical support, any work that is protected by intellectual property rights. Furthermore, the owner or manager of the public place or his agent must “give warning of the prohibition” by positioning “an appropriate number of clearly visible signs” in the public place in which the performance takes place.

    B. TRANSPOSITION ISSUES

    The Italian legislator implemented the Enforcement Directive by enacting the Legislative Decree No. 140/2006 amending several provisions of both the CIP and the CA. Although the Enforcement Directive appears to be mostly implemented, some of its provisions are lacking in the Italian regulation. Specifically:

  • – as to the matter of damages, Article 158 of the CA does not specifically grant the rightholder the possibility to obtain recovery of profi ts made by the infringer even though this principle can be deducted implicitly from the wording of this Article;

  • – as to the right of information, the Italian legislator did not implement Article 8, para. 3, of the Enforcement Directive with particular regard to “the protection of confi dentiality of information sources or the processing of personal data”;

  • – as to provisional and precautionary measures, the Italian regulation concerning the timeframe within which the parties shall initiate the proceeding on the merits partially differs from the provision provided for by Article 9, para. 5, of the Enforcement Directive (for further information on that issue, see below paragraph IX.L);

  • Chapter 15 - Enforcement of Intellectual Property Rights in Ireland

  • Edited by Flip Petillion
  • Book:
    Enforcement of Intellectual Property Rights in the EU Member States
    Published by:
    Intersentia
    Published online:
    12 April 2019
    Print publication:
    31 January 2019, pp 639-672

  • Summary

    NATIONAL LAW IMPLEMENTING THE ENFORCEMENT DIRECTIVE

    A. PRIMARY AND SECONDARY LAW

    1. Primary legislation

    There is no primary legislation implementing the Enforcement Directive as many of the remedies are already captured in Statute or in the common law (i.e. judge made law).

    2. Secondary legislation

    The European Communities (Enforcement of Intellectual Property Rights) Regulations, 2006 (SI No 360 of 2006) (the “Transposing Regulations”) transposed Articles 5, 8, 10 and 15 of the Enforcement Directive into Irish law as these measures were not previously provided for under Irish law.

    B. TRANSPOSITION ISSUES

    Although Ireland transposed Articles 5, 8, 10 and 15 of the Enforcement Directive, it missed the deadline by over two months. However, it is worth noting that very few Member States transposed the Enforcement Directive before the deadline.

    The Enforcement Directive requires that EU Member States provide for measures, procedures and remedies to ensure enforcement of intellectual property rights. The measures must be fair and equitable, not unnecessarily complicated or costly, or entail unreasonable time limits or unwarranted delay. In Ireland, the requirements under Articles 2 and 3 of the Enforcement Directive fell under the jurisdiction of the Courts and did not need any specific legislative measures in Irish law.

    The transposition of the Enforcement Directive into Irish law was completed in collaboration with the Attorney General's office. The EU Commission examined the transposition of the Enforcement Directive in all Member States and published a Report on the Enforcement of Intellectual Property Rights in 2010 analysing the transposition and implementation of the Enforcement Directive in all EU Member States. In its Report, the Commission did not raise any issues in relation to Ireland's transposition and implementation of the Enforcement Directive.

    C. ASSESSMENT REPORTS ON THE IMPLEMENTATION

    The Commission did not raise any issues in its Report in relation to Ireland's transposition and implementation of the Enforcement Directive.

    The National Report on the Implementation of Directive 2004/48EC on the Enforcement of Intellectual Property Rights (the “National Implementing Report”) was compiled by the Intellectual Property Unity of the Irish Department of Enterprise, Trade and Employment in March 2009.

  • Chapter 8 - Enforcement of Intellectual Property Rights in Denmark

  • Edited by Flip Petillion
  • Book:
    Enforcement of Intellectual Property Rights in the EU Member States
    Published by:
    Intersentia
    Published online:
    12 April 2019
    Print publication:
    31 January 2019, pp 303-338

  • Summary

    NATIONAL LAW IMPLEMENTING THE ENFORCEMENT DIRECTIVE

    A. PRIMARY AND SECONDARY LAW

    Directive 2004/48/EC on the Enforcement of Intellectual Property Rights (the “Enforcement Directive”) has been implemented into the Danish Administration of Justice Act (Retsplejeloven) and into the following Danish intellectual property acts:

  • – The Danish Copyright Act (Ophavsretsloven)

  • – The Danish Trade Marks Act (Varemarkeloven)

  • – The Danish Patents Act (Patentloven)

  • – The Danish Utility Models Act (Lov om brugsmodeller)

  • – The Danish Designs Act (Designloven)

  • – The Danish Act on the Protection of Topographies for semiconductor products (Lov om beskyttelse af halvlederprodukters udformning)

  • – The Danish Foodstuffs Act (Fodevareloven)

  • – The Danish Plant Novelty Act (Plantenyhedsloven)

    • B. TRANSPOSITION ISSUES

    The applicable Danish Acts were, to a large extent, found to be in conformity with the Enforcement Directive, and the implementation of the Enforcement Directive did not entail fundamental changes in the enforcement of intellectual property rights in Denmark.

    However, the applicable Danish Acts did lack provisions regarding the publication of judicial decisions (Art. 15) and rights of information (Art. 8). Such provisions have now been implemented into the applicable Danish Acts.

    The implementation of the Enforcement Directive also entailed amendments to the applicable provisions on damages, corrective measures and search proceedings.

    In addition, the implementation of the Enforcement Directive required that the presumption rule of s. 7 of the Danish Copyright Act be amended.

    C. ASSESSMENT REPORTS ON THE IMPLEMENTATION

    In 2009, the Danish Patent and Trademark Office issued a report entitled “Report on Denmark's implementation of EC Directive 2004/48/EC regarding the enforcement of intellectual property rights”.

    The report describes the implementation of the Enforcement Directive into Danish law and contains the results of a public hearing held regarding the implementation of the Enforcement Directive.

    In 2011, the Danish Government issued a response to the Commission's Report on the application of the Enforcement Directive. The aforementioned response, among other things, considers the increasing problem of IPR infringement in the digital environment and the limits of the provisional measures with respect to confi dential information.

    JURISDICTION AND COMPETENCE

    A. COMPETENCE OF LOCAL COURTS

    In Denmark, cases concerning infringement of intellectual property rights will usually be submitted to the district courts.

  • Annex: Directive 2004/48/EC

  • Edited by Flip Petillion
  • Book:
    Enforcement of Intellectual Property Rights in the EU Member States
    Published by:
    Intersentia
    Published online:
    12 April 2019
    Print publication:
    31 January 2019, pp 1231-1243

  • Summary

    THE EUROPEAN PARLIAMENT AND THE COUNCIL OF THE EUROPEAN UNION,

    Having regard to the Treaty establishing the European Community, and in particular Article 95 thereof,

    Having regard to the proposal from the Commission,

    Having regard to the opinion of the European Economic and Social Committee,

    Aft er consulting the Committee of the Regions,

    Acting in accordance with the procedure laid down in Article 251 of the Treaty,

    Whereas:

  • The achievement of the internal market entails eliminating restrictions on freedom of movement and distortions of competition, while creating an environment conducive to innovation and investment. In this context, the protection of intellectual property is an essential element for the success of the internal market. The protection of intellectual property is important not only for promoting innovation and creativity, but also for developing employment and improving competitiveness.

  • The protection of intellectual property should allow the inventor or creator to derive a legitimate profi t from his/her invention or creation. It should also allow the widest possible dissemination of works, ideas and new know-how. At the same time, it should not hamper freedom of expression, the free movement of information, or the protection of personal data, including on the Internet.

  • However, without effective means of enforcing intellectual property rights, innovation and creativity are discouraged and investment diminished. It is therefore necessary to ensure that the substantive law on intellectual property, which is nowadays largely part of the acquis communautaire, is applied effectively in the Community. In this respect, the means of enforcing intellectual property rights are of paramount importance for the success of the internal market.

  • At international level, all Member States, as well as the Community itself as regards matters within its competence, are bound by the Agreement on trade-related aspects of intellectual property (the TRIPS Agreement), approved, as part of the multilateral negotiations of the Uruguay Round, by Council Decision 94/800/EC3 and concluded in the framework of the World Trade Organisation.

  • The TRIPS Agreement contains, in particular, provisions on the means of enforcing intellectual property rights, which are common standards applicable at international level and implemented in all Member States. This Directive should not affect Member States’ international obligations, including those under the TRIPS Agreement.

  • Chapter 4 - Enforcement of Intellectual Property Rights in Bulgaria

    • By Vasil Pavlov, Attorney at Law, Patent and Trademark Attorney and European Trademark and Design Attorney at Pavlov & Co., Momchil Lazarov, Attorney at Law, Industrial property representative and European Trademark and Design Attorney at Pavlov & Co.
  • Edited by Flip Petillion
  • Book:
    Enforcement of Intellectual Property Rights in the EU Member States
    Published by:
    Intersentia
    Published online:
    12 April 2019
    Print publication:
    31 January 2019, pp 153-192

  • Summary

    NATIONAL LAW IMPLEMENTING THE ENFORCEMENT DIRECTIVE

    A. PRIMARY AND SECONDARY LAW

    Copyright:

  • – Law on Copyright and Related Rights (LCRR)

  • – Law on Administrative Regulation of the Manufacturing and Trading of Optical Discs, Matrices and Other Carriers, Holding Subjects to Copyright

    • Industrial Property:

  • – Law on Patents and Utility Model Registration (LPUMR)

  • – Law on Trademarks and Geographical Indications (LTGI)

  • – Law on Industrial Design (LID)

  • – Law on the Protection of New Plant Varieties and Animal Breeds

  • – Law on Topography of Integrated Circuits

    • B. TRANSPOSITION ISSUES

    Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights (“the Enforcement Directive”) came into force for Bulgaria as from January 1st 2007 – the date of the country's accession to the European Union. Nevertheless, the national legislation was harmonised with the Enforcement Directive far prior to accession, as part of the pre-accession process. Thus, the amendments of the Law on Copyright and Related Rights (LCRR) implementing the Enforcement Directive came into force as from January 1st 2006, the amendments of the Law on Trademarks and Geographical Indications (LTGI) and the Law on Industrial Design (LID) implementing the Enforcement Directive came into force as from October 6th 2006, the amendments of the Law on Patents and Utility Model Registration (LPUMR), implementing only Section 3 of the Enforcement Directive, came into force as from November 9th 2006. The Law on Administrative Regulation of the Manufacturing and Trading of Optical Discs, Matrices and Other Carriers, Holding Subjects to Copyright entered into force even before those mentioned above – on October 13th 2005.

    The Law on the Protection of New Plant Varieties and Animal Breeds and Law on Topography of Integrated Circuits have not yet been harmonised with the Enforcement Directive, but bearing in mind the vertical direct effect of the Enforcement Directive, it might has direct implementation in these fields too.

    JURISDICTION AND COMPETENCE

    A. COMPETENCE OF LOCAL COURTS

    In contrast to some EU Member States, Bulgaria chose to have no centralised IP court, but to instead follow specialisation only with respect to some IP objects, such as patents, trademarks and industrial designs. Furthermore, the specialisation relates only to civil procedures, not to criminal or administrative ones.

  • Chapter 23 - Enforcement of Intellectual Property Rights in Portugal

  • Edited by Flip Petillion
  • Book:
    Enforcement of Intellectual Property Rights in the EU Member States
    Published by:
    Intersentia
    Published online:
    12 April 2019
    Print publication:
    31 January 2019, pp 931-958

  • Summary

    NATIONAL LAW IMPLEMENTING THE ENFORCEMENT DIRECTIVE

    A. PRIMARY AND SECONDARY LAW

    Directive 2004/48/EC was transposed by Law No. 16/2008, of 1 April, amending the Copyright and Related Rights Code (CRRC) and the Industrial Property Code (IPC). This implementation resulted in the third amendment to the IPC, the seventh amendment of the CRRC, and the second amendment of Decree- Law No. 332/97, of 27 November, which tangentially approaches certain related rights to copyright, in relation to intellectual property (IP) matters.

    Generally, the transposition of Directive 2004/48/EC was reasonably straightforward, although there were some particular translation inaccuracies, which are described in more detail below.

    B. TRANSPOSITION ISSUES

    Under Article 20 of Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights (the “Enforcement Directive”), Member States had until 29th April 2006 to take all necessary steps to implement it. Portugal missed the deadline by almost two years and only implemented the Enforcement Directive under threat of infringement proceedings by the European Commission. The provisions of the Enforcement Directive are clear, precise and unconditional and certainly had vertical direct effect aft er the implementation date had passed. It could be argued that it also had horizontal direct effect, given that it deals with matters that should be considered general principles of EU law.3

    There were some major issues in implementing the Enforcement Directive, due to the confl icting interests of many parties, thus various draft s were drawn up: one by the Portuguese Bar Association's Intellectual Property Working Group, two by the Ministry of Culture's Copyright Office, and one by the Portuguese Institute of Industrial Property, which is overseen by the Ministry of Justice, as well as by the opposition parties. Eventually, the Copyright Office's second draft was merged with the draft of the National Institute of Industrial Property and amended in the discussion with the opposition parties, giving rise to the fi nal wording of Law No. 16/2008, of 1 April.

    As part of that process, Portuguese lawmakers considered some unfortunate ideas, such as two-speed implementation, where copyright but not industrial property provisions would change, or the minimalistic approach in the fi rst draft, which likely infringed the principle of primacy of EU law over state law and the principle of loyalty.

  • Chapter 29 - Enforcement of Intellectual Property Rights In the United Kingdom

    • By Matthew Harris, joint Managing Partner and co-head of the IP and IT litigation team at Waterfront Solicitors.
  • Edited by Flip Petillion
  • Book:
    Enforcement of Intellectual Property Rights in the EU Member States
    Published by:
    Intersentia
    Published online:
    12 April 2019
    Print publication:
    31 January 2019, pp 1161-1230

  • Summary

    INTRODUCTION

    The United Kingdom comprises a number of separate jurisdictions. In broad terms these are England and Wales, Scotland and Northern Ireland.

    Substantive rules of intellectual property (IP) law are generally harmonised in the UK but procedural regimes can vary somewhat, with particular differences in procedure between England and Wales on the one hand, and Scotland on the other.

    References to the UK, England and Scotland in this chapter should be understood accordingly (with references to England covering both England and Wales). The terms “United Kingdom” (“UK”) and “England” are not synonymous. Procedurally, the focus of this chapter is on England and Wales, as the UK jurisdiction in which the majority of IP litigation takes place. Scotland remains a significant jurisdiction, however, and there may be cases where Scotland is the appropriate jurisdiction for IP infringement proceedings, particularly where Scotland is the location of the acts of alleged infringement in question.

    NATIONAL LAW IMPLEMENTING THE ENFORCEMENT DIRECTIVE

    A. PRIMARY AND SECONDARY LAW

    Changes to substantive UK law to ensure implementation of the Enforcement Directive were implemented by the Intellectual Property (Enforcement, etc.) Regulations 2006 (SI 2006 No. 1028) (the “IP Enforcement Regulations 2006”), which came into force on 29th April 2006.

    In addition, changes to the Civil Procedure Rules (“CPR”), applicable to proceedings in England and Wales (and in particular changes to Rule 25 dealing with interim remedies), were introduced as part of the 41st update of those Rules (the Civil Procedure (Amendment No. 4) Rules 2005 (SI 2005/1315)), which came into force on 6th April 2006.

    B. TRANSPOSITION ISSUES

    According to the UK government, the provisions of the Enforcement Directive, although representing EU best practice were in large part derived from UK law, thus the changes necessary to implement the Enforcement Directive were relatively minor.

    No express provision was made for any change in the law by reason of Articles 2, 3, 6, 7, 11, 12, 14 and 17 to 22 of the Enforcement Directive.

    The Regulations did provide for changes to the Registered Designs Act 1949, granting an exclusive licensee of a UK-registered design the same rights and remedies as the proprietor.

  • Chapter 1 - Genesis, Adoption and Application of European Directive 2004/48/EC

  • Edited by Flip Petillion
  • Book:
    Enforcement of Intellectual Property Rights in the EU Member States
    Published by:
    Intersentia
    Published online:
    12 April 2019
    Print publication:
    31 January 2019, pp 1-48

  • Summary

    PART I. FRAMING THE ENFORCEMENT DIRECTIVE

    The legislative harmonisation of Intellectual Property (IP) rights in the European Union (EU) has been a work-in-progress since the publication of the Preliminary Draft Convention on a European Patent Law in 1962. Almost a century before that, two international initiatives, the Paris Convention for the Protection of Industrial Property (Paris Convention) and the Berne Convention for the Protection of Literary and Artistic Works (Berne Convention), already strived to overcome the obstacles that diverging national IP laws posed for increasing globalisation and international economic and cultural transactions. Belgium has stood at the forefront in all of these initiatives.

    While these two conventions and subsequent international and European initiatives introduced a significant harmonisation of substantive IP rights, they only provided for general enforcement standards. This resulted in disparities between national IP enforcement mechanisms. Directive 2004/48/ EC (Enforcement Directive), adopted on 29 April 2004, aimed to resolve these disparities by harmonising the legislative systems of the European Member States with a view to ensuring a high, equivalent and homogenous level of IP protection throughout the internal market. The Enforcement Directive put forward a legal framework for protection, based on best practices of the Member States, which required the implementation of specific effective, proportionate and dissuasive enforcement measures. Its specific purpose was to tackle wide-scale piracy and counterfeiting infringements and to create a level playing field for IP rightholders in the EU. The adopted provisions of the Enforcement Directive were oft en based on already existing enforcement principles contained in the TRIPS Agreement, but also in existing legislation of several Member States.

    Although the legislative adoption procedure of the Enforcement Directive was swift, it was not without controversy. The initial proposal by the European Commission provoked serious public concern, with several civil rights organisations opposing it. The proposed directive was subsequently amended, taking into account the main points of criticism, especially with regard to the right of information and to the criminal sanctions proposed. Without delay and without requiring further reading of the document, the European Parliament and Council adopted the Enforcement Directive little more than a year after the publication of the Commission's initial proposal.

  • Chapter 10 - Enforcement of Intellectual Property Rights in Finland

  • Edited by Flip Petillion
  • Book:
    Enforcement of Intellectual Property Rights in the EU Member States
    Published by:
    Intersentia
    Published online:
    12 April 2019
    Print publication:
    31 January 2019, pp 371-402

  • Summary

    NATIONAL LAW IMPLEMENTING THE ENFORCEMENT DIRECTIVE

    A. PRIMARY AND SECONDARY LAW

    The Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004, the “Enforcement Directive”, is implemented into Finnish legislation with amendments to the following Finnish acts:

  • – the Copyright Act 404/1961, as amended,

  • – the Trademarks Act 7/1964, as amended,

  • – the Registered Designs Act 221/1971, as amended,

  • – the Company Names Act 128/1979, as amended,

  • – the Patents Act 550/1967, as amended,

  • – the Act on Utility Model Rights 800/1991, as amended,

  • – the Act on the Exclusive Right in the Layout-Design of an Integrated Circuit 32/1991, as amended,

  • – the Plant Breeder's Right Act 1279/2009, as amended,

  • – the Act to Safeguard the Evidence in Civil Actions Concerning Intellectual Property Rights 344/2000, as amended.

    • B. TRANSPOSITION ISSUES

    When the amendments required by the Enforcement Directive were prepared in Finland, the adopted legislative starting point was minimum implementation. According to the Government Bill 2006/26, the Enforcement Directive should have a practical impact on the Finnish legislation only to the extent that the provisions of the Enforcement Directive extend beyond the scope of the TRIPS Agreement implemented in Finland. The Government Bill 2006/26 contained only moderately minor amendments to the Finnish intellectual property right, “IPR”, legislation at that time.

    The central amendments necessitated by the Enforcement Directive concern 1) orders to provide the necessary information on the origin and distribution network of the infringing goods or services in civil IPR cases, 2) orders against an intermediary, i.e. teleoperator, to block access to infringing content and 3) publication of IPR related decisions.

    The amendments entered into force on 29 April 2009, as required by the Enforcement Directive. However, the amendments included several transitional provisions, which are not explained in detail here.

    C. ASSESSMENT REPORTS ON THE IMPLEMENTATION

    The Constitutional Law Committee, as well as the Law Committee, published reports 15/2006 and 6/2006 concerning the Government Bill 2006/26 implementing the Enforcement Directive before the amendments were enacted. No authoritative assessment reports have been published aft er the implementation.

    No significant external reports concerning the implementation of the Enforcement Directive exist in Finland.

    JURISDICTION AND COMPETENCE

    A. COMPETENCE OF LOCAL COURTS

    The Market Court is a special court located in Helsinki that has exclusive jurisdiction in IPR cases. In addition, the Market Court hears market law, competition law and public procurement matters in Finland.

  • Foreword

  • Edited by Flip Petillion
  • Book:
    Enforcement of Intellectual Property Rights in the EU Member States
    Published by:
    Intersentia
    Published online:
    12 April 2019
    Print publication:
    31 January 2019, pp v-vi

  • Summary

    Original and new intellectual creations and innovations merit protection. The obviousness of this insight was already apparent in earlier times when the system of intellectual property law, in the sense we understand it today, was not yet in existence. By way of example, I refer to Ancient Greece, and in particular the colony ‘Sybaris’ (Magna Graecia in Italy) that enacted one of the first intellectual property protection acts in history in relation with … dishes! In this city – where inhabitants were reputable gourmets – a law was issued that granted chefs a one year monopoly on the preparation of an outstanding dish. This example is somehow at odds with our current copyright system in view of the recent decision of the Court of Justice that the taste of food does not qualify as protectable subject matter under EU Copyright law (case Levola, C-310/17). Yet, it serves to showcase the more general viewpoint that original and novel achievements of individuals were worth protecting. In the sector of trademark law, reference is usually made to ancient Egypt, Greece and Rome where potters themselves made sure that their craftsmanship would be recognised by applying a distinctive sign on their pottery. As regards novel inventions, an initiative of the Italian City State of Venice comes to mind where it was decided, in the 1470s, to grant a 10-year-patent to anyone who would make a new and ingenious contrivance in the city of Venice.

    Although these historical examples do not actually testify of the existence of a system serving the same purposes as modern IP law, they already implicitly confirm the importance of a regulatory scheme that enables rightholders to reap the benefits of investments into new inventions and creations.

    However, as is commonly agreed on today, intellectual property assets can only lead to benefits when the acquired intellectual property rights can be efficiently enforced. For many years now, counterfeiting and piracy have become an international, oft en professional, market with significant negative economic and social consequences. More in general, infringements to intellectual property rights pose a serious threat not only to individual rightholders, but also to companies’ assets and the overall economy. It is therefore of paramount importance to link any IP protection scheme to an efficient enforcement system.

  • Chapter 14 - Enforcement of Intellectual Property Rights in Hungary

    • By Miklós Sóvári, IP Lawyer, European Patent Attorney and Partner at Danubia Patent and Law Office LLC.
  • Edited by Flip Petillion
  • Book:
    Enforcement of Intellectual Property Rights in the EU Member States
    Published by:
    Intersentia
    Published online:
    12 April 2019
    Print publication:
    31 January 2019, pp 595-638

  • Summary

    INTRODUCTION

    In the field of intellectual property rights, including the provisions of the enforcement of IP rights, Hungarian national law had been essentially in line with the international and EU standards even before the implementation of the European Union Enforcement Directive, enabling a potent enforcement position for intellectual property rightholders.

    As a party to the TRIPS Agreement for over twenty years, Hungary's national IP laws have long been providing effective enforcement measures in the fields of copyright and related rights, trademarks and geographical indications, industrial designs, patents, layout-designs (topographies) of integrated circuits, those enforcement measures comprising civil and administrative procedures and remedies, including provisions relating to the presentation of information and evidence, injunctions, provisional measures, compensation of damages and compensation of the rightholders’ enforcement expenses, as well as border measures (actions by the customs authorities) and even criminal procedures in cases of the violation of IP rights.

    Nevertheless, the implementation of the European Union Enforcement Directive has brought significant novelties into the national law, including some that support the rightholders’ ability to obtain more effective enforcement of their IP rights, and defi nitely completed the harmonisation of the national legal surrounding in the field of the enforcement of IP rights with the EU standards, in all related fields.

    Hungary is one of the few Member States that duly transposed the Enforcement Directive by the deadline.

    NATIONAL LAW IMPLEMENTING THE ENFORCEMENT DIRECTIVE

    A. PRIMARY AND SECONDARY LAW

  • – Act No CLXV of 2005 on the revision of certain laws in relation with the enforcement of industrial property rights and copyrights

  • – Act No CXXX of 2017 on the revision of certain laws in relation with the entry into force of Act No CXXX of 2016 on the Code of Civil Proceeding

    • B. TRANSPOSITION ISSUES

    Including issues related to Article 3 of the Enforcement Directive

  • – Act No XXXIII of 1995 on the Patent Protection of Inventions [‘Patent Law’], Section 119(1) (b), re: Sections 35, 104(2)-(14)

  • – Act No XI of 1997 on the Protection of Trademarks and Geographical Indications [‘Trademark Law’], Section 122(1)(a), re: Sections 27, 95(2)-(14)

  • – Act No LXXVI of 1999 on Copyright [‘Copyright Law’], Section 113 (f), re: Sections 94, 94/A, 94/B, 98(1), 99, 106(8)

  • – Act No LIII of 1994 on Judicial Enforcement, Section 317, re: Sections 184/A, 187(1)(b)

Page 172 of 386