UNIVERSITY „SS CYRIL AND METHODIUS“ FACULTY OF LAW IUSTINIANUS PRIMUS – SKOPJEMASTER 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

● 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?

LEGAL SOURCES OF THE CIVIL PROTECTION OF THE RIGHTS OF

INDUSTRIAL PROPERTY● Lex specialis:

– Law on Industrial Property from 2009

● Legi generali– Law on Litigation Procedure– Law on Security of Claims– Law on Enforcement– Law on the Courts

GROUNDS FOR PROVIDING PROTECTION OF THE RIGHTS OF INDUSTRIAL

PROPERTY● 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)– 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

– 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.

● Harassment of the rights of industrial property???

● The need of preliminary (provisional) protection.

COMPETENCE OF THE COURTS IN DISPUTES FOR RIGHTS OF

INDUSTRIAL PROPERTY 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)

Which court is competent?

Objective competence 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 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

Two-party organization of the litigation procedure in which disputes for rights of industrial property are decided 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: A capacity to be a party Litigation capacity Postulative capacity Litigation authorization.

WHO CAN BE A REPRESENTATIVE OF LITIGATION CAPABLE PARTY?

The provisions of the LPP determining who can be a representative in litigation procedure apply – art.81 of LLP 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 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 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?

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.

Types of claims By the type of the legal protection requested

in the claim, the claims can be declaratory, constitutive and condemnatory.

REQUESTS THAT THE CLAIMANT CAN RAISE BEFORE THE COURT ACCORDING TO LIP 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

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

Stages:1. Preparation of the main hearing

Fazes of preparation of the main hearing: Prior review of the claim Delivery of the claim to the respondent for response Pre-trial hearing Scheduling hearing for main hearing

2. Main hearing3. 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 Affirmation of the adversarial principle

Types of evidences: inspection, documents, witnesses, expert witnesses and hearing of the parties

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: 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

Decisions and judgments

Types of judgments: Declaratory, constitutive and condemnatory

Partial judgment, additional judgment and interlocutory judgment

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

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-

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: 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 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

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

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: Ban to dispose with the right Conversion in money in accordance with the

provisions for sale of movables Acquittal of the creditors.