Transcript UNIVERSITY „SS CYRIL AND METHODIUS“ FACULTY OF LAW

UNIVERSITY „SS CYRIL AND METHODIUS“
FACULTY OF LAW IUSTINIANUS PRIMUS – SKOPJE
MASTER STUDIES IN INTELLECTUAL PROPERTY
CIVIL PROTECTION OF INDUSTRIAL
PROPERTY RIGHTS IN THE REPUBLIC
OF MACEDONIA
Professor Tatjana Zoroska Kamilovska PhD
Skopje, June 2012
GENERAL NOTES ON THE CIVIL
PROTECTION OF RIGHTS
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Primary and secondary efficiency of the provisions of law
The right of legal protection of the subjective rights as a
basis for the mechanism of enforcement of the rights
The legal protection of the rights arising from the corpus
of different civil relations (personal, family, trade, labor,
property and other civil relations) is conducted by the
rules of the civil court proceedings
The rights od industrial property are part of the corpus of
civil rights, and as such, they are subject to special
protection in accordance with the rules of the civil
preceedings – the litigation procedure
Can we talk about a separate litigation procedure for
resolving disputes of industrial property?
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LEGAL SOURCES OF THE CIVIL
PROTECTION OF THE RIGHTS OF
INDUSTRIAL PROPERTY
Lex specialis:
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Law on Industrial Property from 2009
Legi generali
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Law on Litigation Procedure
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Law on Security of Claims
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Law on Enforcement
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Law on the Courts
GROUNDS FOR PROVIDING PROTECTION OF THE
RIGHTS OF INDUSTRIAL PROPERTY
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Infringement of the rights of industrial property
What is considered to be an infringement of the registered and
recognised rights? – (art.291 para.2 LIP)
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Infringement of the registered and recognized rights laid down with
this Law shall be deemed any unauthorized use, availability, restriction,
imitation, association, rights harassment and the like contrary to the
provisions of this Law
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Imitation, within the meaning of paragraph (2) of this Law shall be
deemed if the average consumer of goods or services, regardless of
the type of products, may notice the difference only if he pays special
attention, or if the trademark is for the translation or transcript i.e.
transliteration.
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Harassment of the rights of industrial property???
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The need of preliminary (provisional) protection.
COMPETENCE OF THE COURTS IN DISPUTES
FOR RIGHTS OF INDUSTRIAL PROPERTY
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The person whose right acquired with this Law is infringed, shall be
entitled to protection of the right by submitting a lawsuit to the Court
which is competent to settle disputes regarding industrial property
rights (art.291 para.1 LIP)
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Which court is competent?
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Objective competence
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In first instance – the Primary courts with extended competence (totally 12
– the Primary court in Bitola, Primary court in Prilep, Primary court in
Ohrid, Primary court in Struga, Primary court in Gostivar, Primary court
in Tetovo, Primary court in Kumanovo, Primary court in Kocani, Primary
court in Veles, Primary court in Strumica, Primary court in Stip and
Primary court Skopje II Skopje)
In second instance – Appellate courts (in Bitola, Gostivar, Stip and Skopje)
In third instance – The Supreme court of the Republic of Macedonia
Territorial competence – there are no special rules, therefore the
rules on the general territorial competence and some particular
territorial competences apply
COMPOSITION OF THE COURT
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The disputes for rights of industrial property, in first
instance, shall be decided by a council, regardless of
the value of the subject matter of the dispute (art.36,
para.5 from LLP)
The Appellate courts when deciding in second instance
on session, decide in a council composed from three
judges, and when they decide in second instance at a
contention, the council of the court of second instance
is composed from two judges and three judges-jurors
When deciding on the extraordinary legal remedy revision, the Supreme court of the Republic of
Macedonia decides in a council composed from five
judges
PARTIES
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Two-party organization of the litigation procedure
in which disputes for rights of industrial property
are decided
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Claimant (plaintiff)– person/persons who claim that a
right of industrial property has been infringed or
harassed by person/persons who are set as respondent
(defendant) in the proceedings
The person that participates as a party has to
have certain characteristics:
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A capacity to be a party
Litigation capacity
Postulative capacity
Litigation authorization.
WHO CAN BE A REPRESENTATIVE
OF LITIGATION CAPABLE PARTY?
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The provisions of the LPP determining who can
be a representative in litigation procedure apply
– art.81 of LLP
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an attorney at law
a person – law graduate being employed at the party
blood relative in direct line, sibling or spouse, provided he
has full capacity to contract
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if the value of the subject of the dispute exceeds 1,000.000
denari, a representative of a legal entity can be a person who
is a law graduate with passed judicial exam and being
employed at the legal entity.
Controversy about art.279 of LIP
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In the proceedings for protection of the rights of industrial
property, the representation of the parties before the
Industrial Property Protection Office can be performed
by natural and legal persons registered in the registered
maintained by the Office.
WHO CAN SUBMIT A CLAIM FOR INFRINGEMENT
OF RIGHTS OF INDUSTRIAL PROPERTY AND
AGAINST WHOM?
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Active authorization: the submitter of the application for
protection of right; the holder of the right; the licensee of the
exclusive license, in scope in which he acquired the right to use,
on the basis of a legal matter or law; the authorized user of
geographical indication i.e. indication of the origin of the product;
and the authorized user of a group and certified trademark.
Passive authorization - a person infringing the rights
Solidarity of the parties - When any right of industrial
property is infringed, each of the holders of that right may in
respect of any third party demand protection of the right as he
was a single holder, and conversely when a person violating the
right fulfils the requirements of one of the holders of the same
right, its obligation towards the other holders of the right shall
cease as well.
In case of ongoing legal proceeding, the holders of the same
right shall be deemed as the only co-participants in the
litigation.
COMMENCEMENT OF THE PROCEEDINGS
Filing a claim
 Contents of the claim (obligatory and
facultative elements)
 Time-limits for filing the claim – three years
after the claimant has found out of the
infringement and the perpetrator, but not later
than five years from the day the infringement was
committed.
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Types of claims
 By the type of the legal protection requested in
the claim, the claims can be declaratory,
constitutive and condemnatory.
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REQUESTS THAT THE CLAIMANT CAN RAISE
BEFORE THE COURT ACCORDING TO LIP
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Determination that there is violation of the right;
A ban for the actions set in the claim that are violating the right;
Reimbursement of damages occurred by violation of rights
intentionally or by negligence;
Confiscate or destruction of the products produced or in
circulation by violation of the right and assets used for their
production;
the defendant to provide information about the identity of third
parties involved in production and distribution of goods or
services violating the rights, as well as about their distribution
channels;
Submission of the documentation and the data of the person
violating the right;
Publication of the judgment on the expense of the respondent;
Civil punishment;
Other requirements.
OTHER TYPES OF CLAIMS IN ACCORDANCE
WITH LIP
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Claim for pronouncement of the patent holder i.e.
the industrial design
Claim for recognition of the inventor i.e. the
author of industrial design
Claim for disputing the trademark right
COURSE OF THE PROCEEDINGS OF FIRST
INSTANCE
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Stages:
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Preparation of the main hearing
Fazes of preparation of the main hearing:
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Prior review of the claim
Delivery of the claim to the respondent for response
Pre-trial hearing
Scheduling hearing for main hearing
Main hearing
Deliberation of an award
The procedure on the lawsuit for violation of the rights,
the denial of rights, interim measures and other security
measures is urgent.
EVIDENCE PROCEEDINGS
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Affirmation of the adversarial principle
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Types of evidences: inspection, documents, witnesses,
expert witnesses and hearing of the parties
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LIP contains special provision for procurement of
evidences in the course of the litigation proceedings
(art.315 LIP)
Preserving evidences.
Ex parte procedure for preserving evidences including:
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preparation of detailed description of the goods proving that it has violated specific right
with or without taking a sample;
Seizure of the goods which is believed that violates a specific right;
Seizure of materials and means used for preparation and distribution of goods believed
that violate a specific right, as well as related documentation.
TYPES OF AWARDS
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Decisions and judgments
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Types of judgments:
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Declaratory, constitutive and condemnatory
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Partial judgment, additional judgment and
interlocutory judgment
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Non-contradictory judgments – judgment due to not
filing a response to the claim, judgment due to
absence, judgment based on denying, judgment based
on admitting and judgment without holding a
contention
REGULAR AND EXTRAORDINARY LEGAL
REMEDIES
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Against the awards rendered in the proceedings
for a dispute of right of industrial property, the
parties may submit all legal remedies prescribed
in the litigation proceeding (regular and
extraordinary), whereupon there are some special
rules due to the specificities of the rights of
industrial property
In the disputes for rights of industrial property
revision is always allowed, regardless of the
value of the subject matter of the dispute
INTERIM (PRELIMINARY) PROTECTION
-PRELIMINARY MEASURES
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Conditions for granting preliminary measures in accordance with LIP
According to LIP, the person who may lodge a lawsuit for violation of the
rights laid down in LIP, if he provides evidence that will prove that his
right has been violated or will be violated, the court upon his proposal,
may determine interim measures to secure his requests.
The LIP exemplary states the following preliminary measures:
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Prohibiting all acts of infringement and their continuation;
Seizure, exclude from commerce and preserve the infringing products and the means of
manufacturing them, as well as documents connected with infringement.
other similar measures.
The interim measures may also be granted without notifying and
hearing the opposing party, if it is made presumable that the interim
measure will not be effective or that there is a risk to make irreparable
harm.
Duration of the interim measures.
In accordance with Directive 2004/48/EC on the Enforcement of
Intellectual Property Rights (IPRED).
CIVIL PUNISHMENT
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When violating the rights of industrial property, if the
violation is made intentionally or with ultimate
negligence, the holder of the right may ask for
payment of the regular compensation increased to
200%, irrespective if due to the violation he has
suffered property loss to this amount.
Circumstances taken in account when determining the
civil punishment:
the level of guilt of the defendant,
 the amount of the regular reimbursement
 the preventive aim of the punishment
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If the property loss is higher than the punishment, the
holder of the right shall be entitled to demand the
difference up to full reimbursement
ENFORCEMENT OVER RIGHTS OF
INDUSTRIAL PROPERTY
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For the collection of monetary claim of the
creditor, enforcement can be conducted on rights
of industrial property in accordance with the Law
on enforcement
Enforcement is conducted with:
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Ban to dispose with the right
Conversion in money in accordance with the
provisions for sale of movables
Acquittal of the creditors.