Answer ... The remedies for trademark infringement constitute administrative and jurisdictional actions.
From an administrative standpoint, a trademark owner can file for infringement per se, which is an action that seeks to stop undue use of a mark. The sole remedy available is the seizure and removal of infringing materials from the marketplace.
From a jurisdictional standpoint, the trademark owner may seek compensation for damages and losses and the removal of infringing materials. However, this type of action is very slow, as the courts have little knowledge of IP law, and there are no known awards of compensation for damages.
Answer ... In case of trademark dilution that affects the uniqueness of a mark, the available remedy is an opposition and/or infringement action. Dilution – that is, the blurring of the distinctive capacity of a mark – can be addressed through a preventive action such as opposition, whereby the trademark owner objects to registration of a mark that, if registered, would dilute its own earlier mark.
The other available remedy is an infringement action. While infringement entails a likelihood of confusion and dilution does not necessarily entail a likelihood of confusion, an infringement action can be used to stop use of a mark that, due to its fame, might be associated with another product.
There is no other specific provision or remedy for dilution.
Answer ... Yes, trademark law recognises other remedies besides infringement and dilution.
First, the provisions on unfair competition protect against any acts involving industrial property rights that are performed in a business environment and are contrary to proper usage and practice. Such acts include:
any act capable of creating confusion, by whatever means, as to the establishment, goods or industrial or commercial activity of a competitor; false assertions in the course of trade capable of discrediting the establishment, goods or industrial or commercial activity of a competitor; and statements or assertions the making of which in the course of trade could mislead the public as to the nature, method of manufacture, characteristics, suitability for use or quantity of the goods.
In addition, trademark law provides for the right to claim ownership of a mark. Any party that believes its ownership right has been affected by the registration of a trademark can make a claim requesting that its ownership right be recognised.
Answer ... Infringement is pursued by filing an infringement claim. Once that claim has been received and before serving the other party with the claim, the National Intellectual Property Service (SENAPI), along with a notary public and the claimant, will conduct an inspection of the market, the infringer’s premises or another place where the alleged infringement is occurring, to verify the activities or the availability of infringing material. Once this inspection has been carried out, the claim is notified to the infringer for a response. The parties can then request the opening of an evidentiary period for the submission of evidence, after which SENAPI will issue a decision.
Infringement claims can be pursued at an administrative level or at a jurisdictional level. The overwhelming choice is the administrative level, as this process is much quicker and SENAPI is better acquainted with IP provisions than the courts at the jurisdictional level.
Answer ... Typical defences in trademark litigation include some kind of right to use the trademark, such as a licence, franchise or ownership. Where the infringing mark is not identical to the allegedly infringed mark, a lack of confusing similarity is also often argued.
Defendants also sometimes attempt to avail of various procedural defences, dragging out the proceedings as long as possible by appealing decisions, filing cancellation actions with the object of stalling the infringing action, challenging the validity of bylaws or other statutes, or trying to raise constitutional issues.
Answer ... The same procedure for appealing decisions in trademark litigation applies across all actions. Once a decision has been rendered, a party has 10 working days to file a writ before the same examiner, setting out its arguments and claims against the decision. In general, there are no additional formalities to be met, as all of these will usually have been satisfied at first instance. Alongside its arguments, the appellant may sometimes submit additional evidence that has recently become available (as a general rule, however, all evidence should have been submitted during the evidentiary period at the trial level). Upon filing, the other party has an opportunity to respond, following which SENAPI will issue an appeal decision.