The shift to specialism: an international comparison

Belgium

Litigation involving Benelux trademarks and designs, copyright and appellations of origin is reserved for the commercial courts and appellate courts of Antwerp, Ghent, Brussels, Mons and Liege. Litigation involving patents, Community designs and EU trademarks is reserved for the commercial courts and appellate courts of Brussels.

In substantive proceedings on the merits, the court consists of three judges. In search and seizure proceedings, summary proceedings and expedited proceedings on the merits, the court consists of one professional judge. These judges do not necessarily have an IP background.

Under Belgian law, parties have the right to defend themselves, but this is highly unusual in IP litigation. Only lawyers can appear before the courts to represent a party.

Brazil

As a general rule, matters relating to IP infringement are analysed by state courts, while invalidity cases are heard by federal courts. When a public agency is a party to the lawsuit, the matter will be tried by a federal court.

In most cases, each lower court has one judge in charge. The composition of appeal court panels depends on the specific court. In principle, neither lower-court nor appellate judges are required to have previous experience of IP matters.

The parties to a lawsuit, always represented by their lawyers.

China

The Chinese courts are divided into four levels: basic courts, intermediate courts, high courts and the Supreme Court. The specialised IP courts in Beijing, Shanghai and Guangzhou all sit at the same level as the intermediate courts.

There are respectively 43, 14 and 13 judges in the Beijing, Shanghai and Guangzhou IP courts as of October 2016. These are experienced judges or IP professionals with at least six years' experience in handling IP cases.

The following representatives are authorised to act for clients before the IP courts: attorneys, individuals and qualified IP practitioners.

France

For civil matters, the civil court of first instance has jurisdiction to hear cases and rule on them at first instance. Appeals are lodged before the appeal court within the lower court's territorial jurisdiction. The apex of the court structure is the Supreme Court.

In the civil courts of first instance and appeal courts, each case is usually heard by a panel of three judges. Only one judge will hear the case if it is brought through interim or ex parte proceedings. Judges sitting in courts of first instance, appeal courts and the Supreme Court are professional magistrates with specialist knowledge.

Only lawyers. One specific lawyer must be appointed before the Supreme Court.

Japan

The IP High Court was established in April 2005 as a special branch court of the Tokyo High Court.

The IP High Court consists of four ordinary divisions (the panel) and one special division (the grand panel). A panel of three judges or the grand panel of five judges conducts proceedings and renders judgments. Judges at the IP High Court need have no specialised technical or scientific background.

Attorneys at law and patent attorneys can make representations before the court. A patent attorney who has passed an additional exam may be involved in IP cases as a counsel.

Russia

The IP Court consists of 18 judges, including a chairman and two deputies. On average, these judges have over 10 years' experience in jurisprudence. In addition to their legal education, some judges have technical training to help them decide complex patent disputes.

There are no special restrictions for representation before the IP Court. Theoretically, any legally capable person may act as a representative before it.

Spain

Commercial courts act as specialised IP courts in Spain. Because they are specialised, the judges in these courts have gained experience in IP matters, enabling them to respond effectively to the problems raised.

The specialised IP courts are usually composed of one judge, with appeal courts having more than one. Such judges have a specialisation in commercial matters, which involves passing tests, completing academic exercises, issuing an opinion and carrying out theoretical and practical studies.

Court attorneys, qualified lawyers (ie, members of the bar association) and legal representatives of companies (with these being usual in criminal proceedings, where the judge usually requests a declaration from the rights holder).

Sweden

On September 1 2016 two new specialised IP courts were established: the Patent and Market Court and the Patent and Market Court of Appeal. As a court of first instance, the Patent and Market Court is a division of the Stockholm District Court.

Judges with specialist legal expertise and technical or financial expertise can act in the IP courts – although the latter are necessary where a case involves technical or specialist elements. Both legally trained judges and lay judges can be involved in criminal cases.

Anyone can make representations before the court; there are no special requirements.

Switzerland

The Patent Court was created by the Patent Court Act and has had exclusive jurisdiction over patent disputes since January 1 2012.

The Patent Court has two permanent judges with legal training and a number of non-permanent judges, of whom the majority must possess technical training. All judges must have proven knowledge of patent law.

Parties and their attorneys can make representations before the Patent Court

Thailand

The Central Intellectual Property and International Trade Court (IPIT Court) was established in 1997. It is a specialised court solely responsible for IP and international trade-related cases.

From October 1 2016 IP and international trade-related cases decided by the IPIT Court can be appealed to the Specialised Court of Appeal. Any party which subsequently wishes to appeal a judgment of the Specialised Court of Appeal to the Supreme Court must request permission from the Supreme Court under the specified criteria.

There are 21 judges presiding at the IPIT Court, appointed as a result of their deep understanding of IP laws and international trade issues. The court also has around 120 associate judges.

In terms of functionality, the IPIT Court’s procedures are similar to those of general courts. An injured party and the accused – including their representatives – can make representations before the court.

Belgium

A rights holder can file a principal claim for descriptive relief, attachment measures, appointment of an expert, a cessation order, delivery up, a destruction order, publication of (part of) the judgment, penalty payments in case of non-compliance with the court order and damages.

A defendant can file a counterclaim seeking the nullity of the IP right invoked. It can also anticipate an infringement claim and file a principal claim to obtain a declaratory judgment of non-infringement.

Parties to IP infringement cases usually submit technical documents, internet extracts, marketing materials, email correspondence, affidavits, written witness statements, expert reports and case law. Witness testimony is not common in IP litigation.

No. Copies of original documents and emails are generally accepted as evidence – although if the defendant disputes their authenticity, the plaintiff may be required to submit the originals.

Yes. In patent cases, the courts often appoint independent experts to advise on the technical aspects of certain validity or infringement issues. This is because judges hearing patent disputes in Belgium tend not to have a scientific background. The reports of court-appointed experts are not binding, but are generally given considerable weight by the court. The Belgian rules of civil procedure do not provide for a particular procedure for the cross-examination of witnesses or experts. However, in exceptional circumstances, the courts sometimes ask experts questions during the trial.

In contrast, unilaterally obtained expert evidence will often be rejected by the opposing party.

Brazil

Any IP claims can be brought before the court. Most common cases involve infringement and the invalidity of IP rights.

No.

There is no mandatory disclosure in Brazil.

Yes.

China

The IP courts have jurisdiction at first instance to hear:

• civil cases involving patents, computer software, trade secrets of a technical nature, new plant varieties and integrated circuit designs;

• civil cases for the recognition of well-known trademarks; and

• administrative cases against decisions with respect to IP rights made by ministries and municipalities at and above county level.

The IP courts may also hear appeals of first-instance decisions with respect to copyright, trademarks and unfair competition made by basic courts located in their jurisdiction.

The IP courts have no jurisdiction over contractual civil cases or general first-instance civil cases involving copyright and trademarks, except for cases involving the recognition of well-known marks.

No. The IP courts apply similar rules of evidence in general civil cases. Permissible evidence which litigants may present to the court includes documentary evidence, statements from the parties, witness statements, expert statements, electronic data and judicial appraisal. Nevertheless, as a general rule, all types of evidence must be verified by the court as to their authenticity before being used as a basis for determining facts.

Except for certain evidence which requires confidentiality, there is no restriction on the evidence that can be presented before the IP courts.

Yes. In general, evidence should be presented and cross-examined during court hearings. However, evidence involving state secrets, trade secrets or an individual’s privacy should be kept confidential and should not be presented in an open hearing.

Yes. Expert evidence is allowed and can be presented as evidence. The IP courts have set up technical investigation departments composed of experts attached to the court, who will participate in litigation proceedings as judicial assistants, functioning as technical advisers to the judges.

France

Except for opposition proceedings, all IP rights claims (regardless of whether they involve copyright, trademarks, patents or designs) can be brought before the specialised courts.

There are no restrictions, save that the parties cannot use underhand methods to obtain evidence. Written affidavits are permitted, provided that certain conditions are met.

There are no restrictions or equirements, except for the aforementioned prohibition against using underhand methods to otain evidence and a further prohibition against disclosing privileged documents (eg, documents that are subject to attorney-client privilege).

Expert evidence is allowed. However, most of the time experts are not allowed to testify at the hearing.

Japan

The IP High Court deals with any and all IP cases, including certain IP cases which are subject to the exclusive jurisdiction of the Tokyo High Court (eg, appeals of patent-related litigation, suits against appeal or trial decisions of the Japan Patent Office), as well as cases concerning the infringement of copyright or business interests through acts of unfair competition.

No.

In the process of patent litigation, the court may, upon the request of either party, order the other party to produce documents to prove infringement or to calculate the damages arising from infringement. There is also a system in place to protect any trade secrets mentioned in briefs or evidence.

Yes.

Russia

As the court of first instance, the IP Court considers disputes concerning all types of IP right, assuming that these fall within its exclusive competence as prescribed by Russian law.

As an appeal court, the IP Court reviews disputes concerning all types of IP right, assuming that such disputes fall within the jurisdiction of state commercial courts. These mainly constitute disputes between legal entities and/or individual entrepreneurs where there is an economic (commercial) background.

There are no restrictions on the evidence that can be presented by the parties to the IP Court as the court of first instance, provided that it has been obtained legally. However, the judges will weigh all evidence based on their own analysis.

It is not permitted to provide evidence to the IP Court when it is acting as an appeal court.

There is no discovery (disclosure) of evidence in Russia. Therefore, it is important to ensure that as much evidence as possible is obtained before initiating court proceedings.

Yes. Since Russian judges are generally not technical specialists, they tend to rely heavily on experts and forensic examinations. Forensic examination by experts is commonly used in patent infringement cases and the outcome of litigation often depends directly on the experts’ conclusions. Although the parties are also entitled to present an expert report prepared on their own initiative, in practice such reports have much less evidentiary weight compared to the opinions of court-appointed independent forensic experts.

Spain

The Commercial Court deals, with no exclusions, with any matter relating to unfair competition, industrial property (ie, patents, trademarks and designs), intellectual property and advertising.

No, but the evidence should be relevant and useful. The Procedural Act expressly recognises the following types of evidence, as an open list: parties’ questioning, documentary evidence, expert reports, judicial recognition, the examination of witnesses and technical resources for reproducing sound and images (Article 299).

The general rule is that there is no restriction on the disclosure of documents obtained from court proceedings. However, there are restrictions on documents containing personal information (Data Protection Act (15/1999)) and sensitive or confidential information provided by the parties during the proceedings.

Yes: expert evidence is allowed, advisable and frequently used in these cases. In particular, taking into account the disparity and complexity of IP rights claims, it is usual to see expert evidence in relation to technical aspects of the case (eg, in patent-related issues) and in relation to the calculation of damages (ie, an accounting expert report).

Sweden

A wide range of IP claims can be brought before the Patent and Market Courts, including the following:

• cases involving damages and injunctions deriving from IP infringements;

• cases involving the nullification or cancellation of IP rights;

• cases relating to information injunctions, prohibitions and infringement investigations;

• matters involving the registration of trademarks or designs, and the grant of patents;

• criminal cases relating to intellectual property, such as cases involving counterfeit goods;

• cases dealing with unfair or misleading marketing practices; and

• claims regarding the unlawful use of someone’s name or image on advertising.

No.

Under civil procedural law, there is a limited duty under a court order for a defendant or third party to disclose particular documents or objects that may serve as evidence. The IP laws (the Patent Act, the Trademark Act, the Copyright Act and the Design Act) allow for infringement investigations, which is a procedure ordered by the court upon the request of a rights holder or licensee whereby the Enforcement Authority searches an alleged infringer’s premises to secure evidence of infringement. The court may also order an alleged infringer to provide certain information relating to the alleged infringement (eg, the names of suppliers, importers and buyers).

Yes. An expert can be appointed by the parties; he or she is then expected to file a written expert statement clarifying his or her position during the preparatory stage of the trial. Experts are regularly cross-examined by the counterparty during the main hearing.

Switzerland

All patent disputes may be brought before the Patent Court, with some exceptions. Decisions issued before 2012 by the Swiss IP Office involving patent registrations or third-party oppositions can be appealed to the Administrative Court only and cannot be reviewed by the Patent Court. However, the Swiss IP Office does not examine questions of novelty or non-obviousness when rendering such decisions.

No – the general rules of the Code of Civil Procedure apply.

In principle, there is no pre-trial discovery or disclosure procedure under Swiss law.

Yes – written expert opinion can be ordered by the court at the request of a party or ex officio. The parties are given an opportunity to submit their position on the opinion in writing. Where a technically trained judge possesses specific expertise, the judge’s expert opinion is entered into the court record and parties are given an opportunity to submit their position on this.

Thailand

The IP rights that fall under the court’s jurisdiction include:

• civil and criminal cases involving trademarks, copyright and patents; and

• criminal cases involving offences relating to trade under the Thai Penal Code and civil cases resulting from such offences.

No. The Act for the Establishment of the IPIT Court sets out no restrictions pertaining to evidence which can be presented or requirements for the disclosure of documents. The court relies on the provisions regarding evidence and witnesses set out in the Penal Code and the Civil Procedure Code. It also accepts electronic evidence.

Yes.

Belgium

The court can issue an interim injunction (or interim remedies) either in the framework of summary proceedings or as a provisional measure in substantive proceedings pending a final judgment on the merits.

The court can limit penalty payments up to a certain amount. It can also decide that penalty payments will become due only from a certain point following service of the judgment. Damages typically consist of lost profits and losses incurred.

Under Belgian law, the losing party must reimburse part of the winning party's legal costs. For a non-monetary claim, the basic amount is €1,440. For monetary claims, the amounts depend on the size of the claim and vary from €180 to €36,000.

Brazil

Yes. Other measures such as search and seizure, preliminary injunctions and ex parte injunctions are also permitted under Brazilian law.

No, except for a statute of limitations of five years when it comes to damages relating to IP infringements.

Costs related to official fees for filing the complaint, payment of technical assistants and the court-appointed expert may be recovered.

China

Interim injunctions are available in trademark, copyright, patent and unfair competition disputes, either prior to or during the course of a lawsuit.

Remedies or damages will be determined according to the rights holder's economic loss, the other party's illegal income or reasonable royalties which can be supported or proved by evidence. Failing these, the courts may award statutory damages by taking into account the specific circumstances of the case.

A successful rights holder can seek the recovery of reasonable costs incurred in stopping the other party's infringing acts, including reasonable attorneys' fees.

France

Yes.

It is possible to seek only compensatory damages in relation to the real and actual prejudice suffered. Punitive damages are not available.

The court can order the losing party to reimburse part of the succesful party's attorneys’ fees and legal costs, at its own discretion.

Japan

Yes – parties can seek an interim injunction such as a provisional attachment or a provisional disposition.

There are no specific limitations on remedies or damages. Parties can seek the same remedies and damages as those which can be obtained from general courts.

In general, the losing party must pay court costs, but this does not include all the costs necessary for proceeding with the case (eg, legal fees are excluded).

Russia

Russian law provides for measures which courts can take to secure the enforcement of a decision or final court ruling in the future. These can be taken by the court on the application of a party to the proceedings, provided that they are necessary to secure the judgment's enforcement in the future.

When applying to the IP Court as the court of first instance, claimants usually seek an acknowledgement that a decision issued by the Federal Service of Intellectual Property granting protection to IP rights or terminating such protection is invalid and an obligation on the service to provide or cancel such protection.

Court costs may be recovered from the unsuccesful party. The courts usually recover state fees from the losing party on their own initiative, while the rest of the costs (eg, legal fees) may be recovered by the court at the request of the winning party up to a reasonable amount.

Spain

Yes – the IP Act allows judges to take provisional measures in relation to a defendant which might persist in infringing.

The only limitation is that damages should be realistic. Punitive damages are not allowed in Spain. However, a rights holder may be entitled to minimum compensation of 1% of the turnover that the infringer obtained through its infringing behaviour.

The general rule is that the losing party bears the costs. However, this does not apply where the judge declares reasonable doubt or where the claim is only partially upheld (Article 394 of the Procedural Act).

Sweden

Interim injunctions against future infringements may be obtained through a court order if it can be proved that an infringement has actually occurred or is occurring and there are reasonable fears that the defendant will damage the value of the intellectual property at issue.

No.

The main principle under procedural law provides for the winning party in litigation to be compensated in full by the losing party. The compensation is decided by the court in the judgment. It is up to the court to decide whether the compensation claimed is reasonable in relation to the time and effort put in by the party and its attorneys.

Switzerland

Yes, under the ordinary conditions for obtaining an interim injunction. The Patent Court is also empowered to issue interim injunctions in patent disputes before the dispute becomes pending before the court.

No – the available remedies and damages are determined by material patent law and were not altered by the Patent Court's introduction.

As a general rule, the winning party is entitled to recover party costs from the losing party. This includes the reimbursement of necessary expenses, as well as tariff-based compensation for professional legal representation, the basis of which is set by the Patent Court on a case-by-case basis.

Thailand

Yes.

There are some limitations on damages. The IPIT Court grants only actual provable damages – neither statutory or punitive damages are available and any damages that are awarded are usually quite minimal.

Attorneys' fees can be recovered. In awarding attorneys' fees, the IPIT Court relies on the schedule set out in the Civil Procedure Code. The court will use its discretion in awarding a reasonable amount of attorneys' fees as it deems fit, but the amount cannot exceed 5% of the value of the compensation in dispute.

Belgium

They are seen as more effective than the general courts.

First, over time, judges will gain experience in IP matters and become truly specialised. Second, there is a special type of expedited proceeding especially for IP litigation and unfair trade practices. Third, search and seizure proceedings are available only in relation to (suspected) IP infringements, but the expert's report can also be used in other domestic and foreign legal proceedings.

A plaintiff normally has no choice in the matter. If an IP right is involved, the IP courts have exclusive jurisdiction to hear the entire case, including any non-IP related issues and claims.

Brazil

Specialised courts are seen as more effective. General courts often have judges who are not familiar with IP matters.

Due to the smaller number of cases in some states where specialised courts are available, litigation tends to be quicker. Judges tend to be more familiar with the subject matter, while court-appointed experts are usually more familiar and have more expertise on IP matters.

This will depend on the specifics of the jurisdiction. Under the Civil Procedure Code, complaints follow the general rule of being filed in the defendant's city, the place where the damages occured or the place where the contract was signed.

China

The IP courts are considered more effective than the general courts for handling IP cases. A specialised court can make quicker, more effective decisions because the experienced judges are more familiar with the legal issues and can keep up with new developments.

Advantages include increased efficiency, greater consistency in applying the law and higher-quality judgments.

In practice, if an IP dispute falls under the jurisdiction of the IP court, claimants generally prefer to docket the case together with the specialised court, given the advantages. A claimant may elect not to resort to the IP court if it has the alternative of opting for a more convenient jurisdiction.

France

Specialised courts have exclusive jurisdiction to hear IP cases. Thus, there is no choice available between specialist and general courts. However, criminal courts do have jurisdiction to hear infringement cases under the criminal provisions of the IP Code.

As only civil specialised courts or criminal courts have jurisdiction to hear IP cases, there is no advantage to using a specialised court. The real advantage is to have a civil specialised court.

Never in civil matters – this is possible only in criminal cases.

Japan

Yes – the special IP divisions of the Tokyo District Court and the Osaka District Court, as well as the IP High Court, are considered to handle IP-related matters more effectively than the general courts, due to their specialised structure and know-how.

Specialised decisions based on expert knowledge of technology and increased efficiency and effectiveness of court proceedings.

A claimant cannot choose whether to use the IP High Court.

Russia

Yes – the IP Court, which has considerable expertise in hearing complicated IP disputes, is much more effective than the general state commercial courts. It continually develops solid judicial practice, facilitating rights holders' protection of their IP rights, which the lower courts should follow when considering similar cases.

IP specialisation allows the court to provide an in-depth review of complex and high-profile IP disputes, which is quite difficult to obtain from the lower state commercial courts. Court proceedings at the IP Court are more precise, faster and more predictable, while judicial practice on IP disputes is harmonising and IP disputes are becoming increasingly predictable.

The claimant cannot choose whether to use the IP Court, since the IP Court is the state court with exclusive jurisdiction over IP disputes.

Spain

The specialist courts are seen as more effective. Judges handling commercial matters have been shown to take a more precise and effective approach to IP matters.

Key advantages include the following:

• High-quality judgments are issued by judges with relevant expertise and deep and specific knowledge of the subject matter;

• Specialised courts tend to issue judgments faster; and

• There is more coherence and unity in the interpretation of standards.

In the Spanish system, and according to Article 86ter(2)(a) of the Judiciary Act: “The Commercial Courts will hear claims on unfair competition, industrial property, intellectual property and advertising.” Therefore, a claimant may not choose whether to use a specialist court for an IP dispute.

Sweden

One of the main aims of the new IP court system is the more efficient handling of IP cases. However, it is too early to say yet whether this is working in practice.

Judges specialising in IP law, the efficient handling of cases and the possibility of combining claims involving both IP and marketing law in the same proceeding.

If a case or matter involves intellectual property, it must be tried by an IP court – it is not possible to have the case or matter tried in another court.

Switzerland

The Federal Patent Court is seen as more specialised than the ordinary civil courts at the cantonal level, which formerly handled patent disputes.

The Patent Court is not elective. However, compared to the situation pre-2012, it affords the unique advantage of concentrating all patent disputes in a specialised court with both legally and technically trained judges.

This does not apply, as the Patent Court is not elective.

Thailand

The IPIT Court is seen as more effective than the general courts.

The judges at the IPIT Court have a greater understanding of IP issues than those at the general courts.

If the claim involves IP issues, it must be heard by the IPIT Court.