ANNUAL REVIEW

Intellectual Property Litigation 2017

August 2017  |  INTELLECTUAL PROPERTY

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Given the importance of intellectual property (IP) to organisations, it is little wonder that related litigation has increased in recent years. Across many jurisdictions, litigation is often a company’s best hope of protecting its IP assets, and in turn, its competitiveness, its ability to differentiate itself in the market, and its means of generating value.

 

UNITED STATES

Michael R. Dzwonczyk

Sughrue Mion, PLLC

“Patent litigation filings are down across the board. In Q1 2017, 938 patent cases were filed – the lowest per quarter amount of any quarter since Q3 2011. This decrease may be attributable to a number of factors, including recent Supreme Court decisions that have weakened the rights of patent holders, the high rate of invalidation in IPR proceedings and a decline in jury-awarded damages in patent cases. Trademark litigation filings have only declined very slightly over the past few years. In Q1 2017, 732 cases were filed, consistent with the trend.”

 

ARGENTINA

Martín G. Chajchir

Marval, O’Farrell & Mairal

“We have not seen an increase in intellectual property (IP) litigation in the last 12 months. In terms of patent litigation, actions have actually decreased in recent years. Trademark litigation remains stable, taking into account opposition cases that are not resolved amicably between the parties and reach the courts and trademark enforcement. However, we have noted an increase of raids conducted by law enforcement agencies against illegal and ‘informal’ fairs selling counterfeit goods. As for the common causes of conflicts, we would mention trademark opposition cases, patent and trademark infringements and actions against the Patent Office due to rejection of patent applications.”

 

NETHERLANDS

Rogier de Vrey

CMS

“The past year has seen a slight drop in the number of intellectual property (IP) cases litigated, compared to previous years. Most of the procedures registered are related to copyright law, trademark law and patent law. The copyright cases primarily have dealt with online infringements such as allegedly unauthorised streaming of e-books, movies, music and other digital products. There have also been several procedures in the past year about the scope of protection under copyright law for architects, as well as the ambit of their moral rights.”

 

NORWAY

Mikkel Lassen Ellingsen

Bryn Aarflot

“In line with a general increase in attention to and awareness of intellectual property (IP), we find that the volume of IP rights has increased in recent years. Further, we have experienced a slight increase in IP litigation in Norway, across various fields and sectors, over the last four to five years. On average, over the last few years, there have been around 20 IP related court cases per year. A couple of these cases have been copyright related, and for the remaining part there is roughly a 50/50 split between patent and trademark cases.”

 

SPAIN

Miquel Montañá

Clifford Chance, SLP

“Litigation is back in Spain. As a result of the resurgence of the economy, companies are more eager to invest into protecting their strategic IP rights. We have seen this in the case of patents in sectors such as pharmaceuticals and telecoms, but also in the case of trademarks and, to a lesser extent, design. With regard to litigation in the pharmaceutical sector, the most common cause is, of course, the desire of manufacturers of generic products to try to design around the patents that protect the original product or invalidate such patents. With regard to litigation in the telecoms field, the common theme has been disagreements between parties bound by licence agreements.”

 

PORTUGAL

Ricardo Costa Macedo

Caiado Guerreiro, Sociedade De Advogados, SP, RL

“One can sense that there has been a steady increase in IP litigation in Portugal in recent years. This litigation often revolves around patent disputes, trademark disputes and copyright remuneration related disputes, but unfair competition cases are on the rise. The fact that there is now a fully functional court specialising in IP in Portugal has been an advantage and a reason why more parties choose to enforce their IP rights and bring those conflicts to court whenever necessary. In the past, the lack of a specialised and swift court sometimes deterred plaintiffs from litigating.”

 

ITALY

Elena Martini

Martini Manna Avvocati

“There has been a slight increase in intellectual property litigation in Italy over the last 12 months, but this followed a general decrease which characterised the previous years. In fact, the economic crisis led many companies to avoid litigation unless strictly necessary: if at all possible, out-of-court settlements were pursued, and in some cases companies did not take any further action where no settlement agreement was possible. The effects of the crisis are now diminishing and many companies have completely overcome them, hence litigation is increasing again.”

 

POLAND

Agnieszka Wiercinska-Kruzewska

WKB Wiercinski, Kwiecinski, Baehr sp.k.

“According to statistics, the majority of conflicts in Poland are over infringements of copyright. However, there is no established trend with respect to intellectual property litigation in Poland. The number of statements of claim brought to Polish regional courts that are competent to investigate IP cases varies considerably from year to year, however, in the last few years this had exceeded 600.”

 

RUSSIAN FEDERATION

Vladimir Biriulin

Gorodissky & Partners

“IP litigation in Russia has been rather stable in terms of numbers. If we take litigation cases to include cases with the involvement of companies and people on both sides, and administrative cases, where one of the parties is a government body, be it customs, police or antimonopoly organisations, where the IP owner can be classed as a third-party, there has been a slight increase in the number of cases over the last few years. As such, there are currently around 20,000 civil and administrative cases per year. Administrative and civil cases account for approximately 50 percent of all cases each. Of that number, most cases are concerned with copyrights and trademarks.”

 

CHINA & HONG KONG

Helen Cheng

Zhong Lun Law Firm

“The last year has seen a steady increase in intellectual property (IP) litigation in China. According to the Supreme People’s Court, first instances of IP civil cases nationwide increased by approximately 24.8 percent in 2016. Considering the recent trend toward higher damage awards, it is reasonable to expect that IP litigation will continue to increase in China. Statistics show that copyright dispute cases, trademark dispute cases and patent dispute cases respectively account for 63.7 percent, 19.9 percent and 9.1 percent of the IP cases initiated in 2016, while IP disputes over technology contracts and unfair competition account for smaller percentages.”

 

MALAYSIA

Teo Bong Kwang

Wong Jin Nee & Teo

“There are no publically available statistics for IP cases that are filed in the courts. But based on the number of reported cases emanating from the courts, both first instance and appellate courts, it appears that there has been an increase in IP litigation. Further, it appears that the bulk of reported court cases still relate mainly to trademarks and passing off. There has also been a few cases of copyright law, confidential information and patent law.”

 

SINGAPORE

Lim Siau Wen

Drew Napier

“The volume of IP litigation in Singapore has remained relatively stable over the last three years. However, there was a slight increase in patent litigation in the first half of 2017 with three reported decisions; by comparison, there were only three reported decisions in the whole of 2016 and just two in 2015. Not unexpectedly, IP rights cases attracting the most litigation continue to be trademarks, followed by copyright and patents and then registered designs. While infringement – and passing off for trademark cases – remains the predominant cause of action in all branches of IP litigation, there has been a noticeable increase in trademark opposition appeals, trademark invalidation and revocation actions.”


CONTRIBUTORS

Bryn Aarflot

Caiado Guerreiro, Sociedade De Advogados, SP, RL

Clifford Chance, SLP

CMS

Drew Napier

Gorodissky & Partners

Martini Manna Avvocati

Marval, O’Farrell & Mairal

Sughrue Mion, PLLC

WKB Wiercinski, Kwiecinski, Baehr sp.k.

Wong Jin Nee & Teo

Zhong Lun Law Firm

 


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