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How to protect your Intellectual Property at Trade Fairs=Experience and practice in Europe

How to protect yourIntellectual Propertyat Trade FairsExperience and practice in Europe

Prepared October 2008

It is strongly emphasised that the information provided in thispublication by no means constitutes legal advice and should notsubstitute for counsel. The information is based on the opinionof independent experts and does not claim to be either completeor definitive; but is intended merely as a guide. The relevant Euro-pean laws and other available legal and technical sources shouldbe properly consulted when seeking protection for IP rights inEurope.

This publication has been produced with the assistance of theEuropean Union. The contents of this publication are the soleresponsibility of the IPR2 implementation team and can in noway be taken to reflect the views of the European Union.

Content may be reproduced and disseminated as long as it isattributed to the original source.

Authors

It would not have been possible to produce this Study without the coordination of Giovanni Casucci from Casucci Studio Legaleand the contributions of the following lawyers:

Jean-Frédéric Gaultier - Clifford Chance (France fiche)Reinhardt Schuster - Bardehle Pagenberg Dost Altenburg Geissler (Germany fiche)

Giovanni Casucci - Casucci Studio Legale (Italy fiche)Montserrat Lopez-Bellosta - Clifford Chance (Spain fiche)

Carlos Rivadulla - Clifford Chance (Spain fiche)Johanes Jacobus Brinkhof - Brinkhof (Netherlands fiche)Philippe Azzola - Philippe P. Azzola (Switzerland fiche)


FOREWORD 1

EXECUTIVE SUMMARY 2

1 STUDY ANALYSIS 3

1.1 Issues for enforcing IPRs at Trade Fairs 3

1.1.1 Enforceable IP rights 3

1.1.2 Peculiarities of IPR enforcement issues at Trade Fairs 3

1.1.3 IP Civil and Criminal enforcement issues 3

1.2 Harmonisation of the legal framework in the EU 5

1.2.1 TRIPs agreement 5

1.2.2 Enforcement Directive (EC 2004/48) 5

1.3 Protection Mechanisms in the EU 6

1.3.1 existing IP Enforcement systems in Europe at Trade Fairs 6

1.3.2 Best alternative practices reported 7

1.4 Conclusions 9

2 COUNTRY FICHES 11

2.1 FRANCE 11

2.1.1 Presentation of the general enforcement rules 11

2.1.2 Specific enforcement alternatives for the Trade Fairs 12

2.1.3 Documents 12

2.2 GERMANY 13



2.2.3 Documents 17

2.3 ITALY 19



2.3.3 Documents 21

2.4 SPAIN 23


2.4.2 Specific enforcement alternatives for Trade Fairs 24

2.4.3 Documents 24

2.5 SWITZERLAND 25



2.5.3 Documents 27

2.6 THE NETHERLANDS 28


2.6.2 Alternative Measures 30

2.6.3 Documents 30

LIST OF ACRONYMS 31

CONTENT

FOREWORD

The Chinese government has a high regard for the protection of intellectual property, of which theprotection of IP rights during trade fairs and exhibitions is an important component. In order to furtherenhance support for this, the Ministry of Commerce, the State Administration for Industry and Commerce,the State Bureau of Copyright and the State Intellectual Property Office issued the Measures for theProtection of Intellectual Property Rights (IPRs) during Exhibitions, which came into force on 1 March2006. Meanwhile, the Ministry of Commerce with other ministries have organised a series of activitiesin concert with efficient enforcement of the Measures specialising in reinforcing IPR protection at differ-ent exhibitions.

With the rapid development of the Chinese economy, an increasing number of Chinese companies aretaking part in exhibitions abroad, which offers a platform for them to establish their brands, to promotetheir products and to realise their potential on the international market. At the same time in recentyears, Chinese companies are encountering intellectual property conflicts in exhibitions for lack ofknowledge on the protection of intellectual rights in European Union and its member countries.

With the support of EU-China IPR2 Project, the Department of Treaty and Law of the Ministry ofCommerce has completed a study on ‘How to Protect your Intellectual Property - Experience and prac-tice in Europe’ with a view of developing IPR protection abroad. The study provides a comprehensiveoverview of the enforcement system of the famous exhibitions in Europe and makes recommendationsto companies attending exhibitions. This study is a valuable reference and a strategic business tool forboth Chinese and European companies that recognise the value of IP protection.

Ministry of Commerce of People’s Republic of ChinaDepartment of Treaty and Law

10 Oct. 2008

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EXECUTIVE SUMMARY

The present study analyses and compares IPR enforcement experiences and practices in a selection ofEuropean countries, notably in France, Germany, Italy, Spain, Switzerland, and the Netherlands.

In particular, the study addresses how these European countries have developed best practices, bymeans of traditional civil, criminal and administrative (customs) enforcement mechanisms, and wherenecessary have set up alternative enforcement procedures. Such alternative procedures have been inpractice for a number of years in some European countries, more notably at the Macef trade fair inMilan, Italy for the past 7 years, and at the Baselworld trade fair in Basel, Switzerland for the past 20years.

The study is conceived in three principal sections:

- Firstly, the study approaches the general issues of IPR enforcement, highlighting the specific meansprovided by the international and European legal framework for urgent proceedings and interimmeasures.

- Secondly, it analyses the alternative measures to the normal jurisdiction offered by some countries(e.g. Italy and Switzerland) in addition to other services or initiatives offered by some exhibitionorganisers (e.g. Germany and France) in order to support IP protection.

- Last but not least, the study contains a specific country-by-country report on the legal environ-ment and practice, including local legal rules, leading cases and, if any, a description of alternativemeasures.

The principal conclusions brought by the study are as follows:

I) Even the most judicially efficient countries may experience challenges with regard to timing ornon-availability of experts;

II) Trade Fairs organisers and exhibitors perceive the need for specific management of IP-related issues;III) The list of recommendations established by UFI provides clear guidelines for trade fair exhibitors

and visitors to comply seriously with the various needs related to protecting IP at trade fairs;IV) Only few trade fairs organisers have been able to effectively implement such recommendations, at

least in part (Italy, Germany, Switzerland);V) The standardisation of such practices is needed in order to comply with the Enforcement Directive

towards harmonising procedures and to have a singular method and format of intervention; ca-pable of balancing the various interests involved.

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1 STUDY ANALYSIS

1.1 ISSUES FOR ENFORCING IPRS AT TRADEFAIRS

1.1.1 ENFORCEABLE IP RIGHTSThe large family of IP rights covers the two sub-groups of (i) Copyrights(regulated by the Berne Convention) and (ii) Industrial Property rights(regulated by the Paris Convention and usually called as “registeredrights”).

Enforceable IP rights therefore cover any copyrightable work (literary,musical, graphical, film, photographs, computer software, works ofapplied fine art, choreography, etc), Patent and Utility Models (forinnovation), Trademarks, Domain Names, Designs, Semiconductorslayouts.

Nevertheless, such a listing does not exclude the possibility of, in linewith general IP protection, acts involving unfair competition includingparasitic copies, unregistered rights (de facto trademarks or unregistereddesigns) or similar activities (including trade secrets and know-howprotection). The Paris Convention, in fact, devotes special attention toacts of Unfair Competition (art. 10bis and 10ter).

1.1.2 PECULIARITIES OF IPR ENFORCEMENT ISSUES AT

TRADE FAIRSIt is useful to understand the peculiar issues which exist at trade fairs inorder to describe and analyse why public and private interests havesought to improve IPR enforcement mechanisms at trade fairs inparticular. These issues include:

a) TIMING: Usually trade fairs are organised during a period that includesa weekend, so if enforcement is only based on the intervention ofofficial authorities there is the real risk of not being able to execute anex parte order (for lack of availability of the bailiff, for instance) and/orthe likelihood of filing a request for intervention to judge’s office toolate etc.

b) AVAILABILITY OF EXPERTS: IP owners and alleged infringers notresiding in the trade fair location may not be able to find a specialisedlawyer or an IP counsel able to intervene and assist them in time.

c) POTENTIAL PREJUDICE: There is a risk of double prejudice. Firstly forthe IP owner, in case of lack of effective intervention; secondly for thealleged infringer that may risk suffering an intervention without thesupport of an appropriate defence. The prejudice eventually suffered by

both is related to a lost of chance of business and such a prejudice isvery difficult for a judge to appreciate in the course of a subsequentlitigation on the merits.

These main concerns should be also contrasted with severalopportunities:

a) MORE EVIDENCE AVAILABLE: At any trade fair the aim of theexhibitors is to attract potential clients (not final consumers butretailers, distributors etc). So, the usual approach is to show andpromise any possible advantage in terms of qualities and characteris-tics of the products/ machines. It is therefore possible during theseevents to gather much more evidence than would otherwise be shownin a catalogue or on a web site.

b) JURISDICTION OPTION: The place of the Trade Fair (usually a city orbig town) offers another advantage in case of evidence of an allegedinfringement: the possibility to claim the jurisdiction of the town evenif the claimant and the defendant are located in different cities or evencountries.

c) PUBLIC PERCEPTION OF THE INTERVENTION: Any intervention, eventhe most apparently innocuous one (the description order) due to itsofficial execution in trade fair booths themselves generates anunderstandably deterring effect for potential clients of the entityaccused of violating an IP right. So, sometimes even light interventions(but with timely execution) may generate a quick settlement betweenthe parties involved.

In light of these issues, European countries have sought opportunities toimprove IPR enforcement mechanisms at trade fairs, both through tradi-tional civil, criminal and administrative (customs) enforcement mechanisms,and where necessary by means of alternative enforcement procedures aswill be analysed throughout this report.

1.1.3 IP CIVIL AND CRIMINAL ENFORCEMENT ISSUESUsually enforcement options are based on the civil and/or the criminalperspective. Some countries also provide some administrative ways ofenforcement (for instance, China).

The abovementioned means of enforcement (civil and criminal) are considereddifferently from country to country.

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In fact, the subjective elements (i.e. consciousness or willingness of theinfringement - mens rea, or negligence - culpa gravis) are not relevant atall in order to assess the liability of the alleged infringer and the first aimof the civil enforcement (the order to interrupt the infringement) will bepursued independently in good or bad faith by the infringer.

The subjective status of the infringer will only be taken into account inorder to evaluate the prejudice to be recognised by the IP owner and,consequently, in order to satisfy the second aim of damages assessment.

Another characteristic of Civil enforcement is the full control of theproceedings maintained by the parties: The judge is bound to the evidencesubmitted by the parties and cannot ex officio collect any other further ordifferent evidence.

The parties may always settle the case until the final discussion before theCourt decision panel.

1.1.3.2 CRIMINAL ENFORCEMENT

Criminal enforcement of IPR typically pursues:

a) a direct aim: punishment of the infringer; andb) an indirect aim: dissuasion to infringe; andc) an eventual aim: recovery of prejudice caused.

In fact, criminal enforcement is mainly directed towards enforcing IPR incases where the offence/violation is clearly evident and is difficult to denyor contest.

The sanctions and, much more, the special means of investigation of thePublic Prosecutor are powerful and serious.

Also in this case evidence of the IPR and the infringement shall besupported by the IP owner. However, the role of the Public Prosecutor isquite peculiar in the management of the case. In fact, the IP owner canonly submit his denunciation before the Public Prosecutor who is free todecide what action should be taken in order to fulfil his first aim: findsufficient evidence in order to punish the alleged infringer and to impedethe continuation of the violation. Accordingly, the Public Prosecutor canorder special initiatives involving the Criminal Police in order to collectany sort of evidence by any legal means, in any place and at any time.

Nevertheless the consequences of such a different approach are evident:the IP owner has no control over the proceeding unless the criminal

The civil route is the most diffused and is widely recognised as the mostreadily applicable to IPR enforcement.

The criminal route is frequently invoked in certain countries (for instance,France and Italy) in order to induce a deterrent effect against the infringementdiffusion, much more so in the copyright and trademarks field.

It is useful to summarise the principal issues and characteristics related tothese two possibilities, in order to better understand the various approacheshighlighted in the Country reports.

1.1.3.1 CIVIL ENFORCEMENT

Civil enforcement of IPR typically aims:

a) to interrupt the infringing acts; andb) to recover any possible damage occurred.

Civil enforcement is based normally on the need for the IP owner toprovide the Judge with evidence of the existence and ownership of the IPright and the evidence of the infringement occurred.

The only advantage offered by the IP registered rights is that evidence ofthe right invoked can be easily shown simply by providing a copy of theregistration certificate (without giving proof of the validity of thisexclusive right). Any IP registered right in fact is presumed to be validuntil the contrary can be proven by anyone contesting it.

In contrast, for non-registered rights (e.g. know how/trade secrets,copyrights, unfair competition acts, de facto trademarks, slavishimitation), there is a duty upon the IP owner to show existence andvalidity of his rights.

Concerning the infringement, there is a precise duty upon the IP owner todemonstrate conflict between the claimed exclusive right and the product/process/sign/design of the defendant. Such evidence can be easilyperceived in case of trademarks or designs but is sometimes difficult forpatented products and is very difficult for patented processes. That is whythe evidence collection means provided by the legal system can play asignificant role in order to support the IP owner in finding evidence thatwould otherwise be very difficult to find or retrieve.

Regarding the elements required in order to prove the infringement fromthe civil perspective, it is relevant to note that the objective interferencebetween the claimed exclusive right is essential in order to obtain afavourable judgement.

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regulation providing the criminal sanction is based by law on the ex partecomplaint. In several jurisdictions, for instance Italy, there are alsoprovisions in the law providing for ex officio intervention by the PublicProsecutor. This means that a possible settlement on legal fees anddamages between the parties would not interrupt the criminal proceed-ings towards a final decision.

Concerning the elements required to prove the infringement, it is quiterelevant to note that for the criminal perspective (in contrast with the civilone) there are two essential requirements:

a) the objective interference between the claimed exclusive right, andb) the subjective element (i.e. consciousness or willingness of the

infringement - mens rea, or negligence - culpa gravis) fully relevant inorder to assess the criminal liability of the alleged infringer.

So, it may happen that an objective infringement cannot imply a criminalcondemnation for lack of willingness or negligence and that a wilfulintention to infringe cannot be considered criminally relevant because of anon-identical infringement (i.e. in case of patents, an equivalent device; inthe case of trademarks, a non-identical sign looking like the registeredone; in the case of designs, a non-identical design not so different fromthe protected one etc).

Consequently, it is very important to understand the different localregulations afforded by the civil and criminal orientation in order to decidethe most appropriate way to enforce the specific IPR relative to theinfringement found.

1.1.3.3 ADMINISTRATIVE ENFORCEMENT

In Europe the only administrative support offered for IPR enforcement isbased on the EC Regulation 1383/03 offering the possibility to freeze theimport or the export of allegedly infringing goods at the EC externalborder. According to this Regulation,

Customs Authorities are empowered to suspend entry into the EuropeanCommunity territory of goods suspected of infringing certain IP rights.Such a suspension is not an injunction nor a seizure: it is a neutral meansin order to allow the IP owner to organise the measures it will take inorder to enforce its IPR properly without losing the control over thesuspected goods. In fact such a suspension loses any effect if, within 10days from the adoption of such a measure, the IP owner does not file anycivil or criminal action in order to confirm his intention to enforce.

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1.2 HARMONISATION OF THE LEGALFRAMEWORK IN THE EU

The harmonization of the legal framework of IPR enforcement in the EUfinds its source in two principal legal documents, notably WTO TRIPSagreement and the EC enforcement directive.

1.2.1 TRIPS AGREEMENTThe World Trade Organisation’s Agreement on the TRIPS of 15 April 1994,constitutes the standard binding point of reference for IP protectionamong the WTO members states.

TRIPS harmonises the best legal practices from around the world andprovides a framework of common international rules and basic principlesfor reciprocally recognising and protecting IP and enforcing IPR.The Agreement devotes special attention to enforcement issues,highlighting the need to guarantee not only a written basis of legal textbut also a real practice in the Law application and enforcement.

The enforcement principles and measures agreed in TRIPS (art. 40-51) areas follows:

a) effectiveness of enforcement procedures,b) expeditious remedies,c) deterrent effect of remedies,d) easy access to enforcement proceedings (fair, equitable, not unneces-

sarily complicated or costly),e) effective inunctionsf) reasonable damages and fees compensationg) other remedies that have a dissuasive effect (not necessarily punitive)h) right of informationi) inter partes or ex parte precautionary measures, to be followed by the

ordinary action within 31 calendar days

Moreover TRIPS provides a special recommendation about bordermeasures (art. 51-60), and recommends the adoption of criminalmeasures for intentional trademark or copyrights infringements (art. 61).

1.2.2 ENFORCEMENT DIRECTIVE (EC 2004/48)In respect to the TRIPS Agreement the EC adopted a specific Directive on29 April 2004 in order to oblige all EU Member States to fulfil TRIPSrecommendations in civil enforcement practice.

The criminal issues were deliberately separated by the civil ones and arestill pending as draft according to the Proposal of the Commission on 26April, 2006 (COM 2006, 168 final) as approved on 25 April 2007 by the


European Parliament.

The main goal of the Enforcement Directive is to provide a uniformapproach in dealing with the means of enforcement. In particular, the ECDirective represents a sort of best experience collection of differentjurisdictions.

It is therefore relevant to better understand the preliminary measures nowharmonised among the EC:a)Evidence collection meansb)Preliminary injunction and seizure orders

1.2.2.1 MEANS OF EVIDENCE COLLECTION

According to the art.7 of the Directive (Measures for preserving evidence)the Member States‘ shall ensure that, even before the commencement ofproceedings on the merits of the case, the competent judicial authoritiesmay, on application by a party who has presented reasonably availableevidence to support his claims that his intellectual property right hasbeen infringed or is about to be infringed, order prompt and effectiveprovisional measures to preserve relevant evidence in respect of thealleged infringement, subject to the protection of confidential information.Such measures may include the detailed description, with or without thetaking of samples, or the physical seizure of the infringing goods, and, inappropriate cases, the materials and implements used in the productionand/or distribution of these goods and the documents relating thereto.Those measures shall be taken, if necessary without the other partyhaving been heard, in particular where any delay is likely to causeirreparable harm to the right holder or where there is a demonstrable riskof evidence being destroyed.’

Such means were designed under the earlier successful Italian experienceof “Descrizione” and the French “saisie-description”.

Usually this approach is the easiest order to be granted (in a few days)because of the non aggressive nature of the inspection. As understood bythe wording of such a provision the adoption ex parte of the measure is anormal way to grant it.

In some jurisdictions this type of order is the only one available duringtrade fairs (i.e. Italy), while the injunction and seizure cannot be executed.

1.2.2.2 PRELIMINARY SEIZURES AND INJUNCTIVE ORDERS

According to the art. 9 of the Directive (Provisional and precautionarymeasures) the Member States “shall ensure that the judicial authoritiesmay, at the request of the applicant:

(a)issue against the alleged infringer an interlocutory injunction intended toprevent any imminent infringement of an intellectual property right, or toforbid, on a provisional basis and subject, where appropriate, to arecurring penalty payment where provided for by national law, thecontinuation of the alleged infringements of that right, or to make suchcontinuation subject to the lodging of guarantees intended to ensure thecompensation of the right holder; an interlocutory injunction may also beissued, under the same conditions, against an intermediary whose servicesare being used by a third party to infringe an intellectual property right;injunctions against intermediaries whose services are used by a thirdparty to infringe a copyright or a related right are covered by Directive2001/29/EC.

(b)order the seizure or delivery up of the goods suspected of infringing anintellectual property right so as to prevent their entry into or movementwithin the channels of commerce.

For the adoption of injunctions, the Directive assesses the possibility toobtain the injunction even ex parte:

4. Member States shall ensure that the provisional measures referred to inparagraphs 1 and 2 may, in appropriate cases, be taken without thedefendant having been heard, in particular where any delay would causeirreparable harm to the right holder. In that event, the parties shall be soinformed without delay after the execution of the measures at the latest.

In some countries it is possible to obtain an injunction without any limiteven during trade fairs (i.e. France, Germany, UK). It is different in othercountries (i.e., as previously stated, Italy, where is only possible to obtainan injunction before the start of the trade fair).

1.3 PROTECTION MECHANISMS IN THE EU

1.3.1 EXISTING IP ENFORCEMENT SYSTEMS IN EUROPE

AT TRADE FAIRSThe need to create a harmonised system of IP protection started expresslybecause of trade fairs. In particular the Paris Convention and the principleof the “priority’ were designed (in 1883) in order to avoid the risk thatthrough the Universal Expo of Paris any visitor may misappropriate theinventions or the trademarks of the real owners in order to file (abusively)IP applications in their native countries.

At present the need to guarantee to effective and efficient IPR enforce-ment is the key issue of government and private interest associations.

Trade fairs represent a very high risk but high opportunity for piracy and/

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judge to help determine if there is a violation or to resolve IPR disputes duringthe trade fair.

5. Organisers should provide interpreters to facilitate communication in thecase of disputes with foreign exhibitors.

6. When appropriate and if possible, organisers should provide an on-siteoffice, a special stand or a point of contact, to deal with any IPR requests orcomplaints for the entire duration of the trade fair.

7. In order to protect exhibitors from counterfeiting or IPR infringementpractices during trade fairs, exhibitors should be encouraged to indicate thattheir products or services are protected by IP rights, where applicable.”

The present study takes into consideration the most relevant countriesorganising trade fairs of international repute: Germany, France, Italy,Spain.

Several EU Member States (e.g. France, Germany, Spain) do not prohibitnor specifically support IPR enforcement at trade fairs, which is unusualconsidering the specificity of the context and the particularities of thesekinds of events.

Some other EU Member States (e.g. Italy) do not authorise the executionof civil seizures during trade fairs, considering the context to be preservedas a “safe harbour” (art. 129 Italian IP Code). Only very critical cases maygenerate an intervention by the criminal authorities who will be the onlyones authorised to seize any goods infringing an IP right.

The only civil enforcement tool officially available in Italy during trade fairsis the “description order” (art. 128 Italian IP Code), an evidence collectiontool (once exclusive to Italy and France, now harmonised in the EUthrough the Enforcement Directive - art. 7 Dir. EC 2004/48).

A general overview of the EU Members States legal rules shows a partiallack of sensibility on the peculiarities related to the timing needs at tradefairs in the context of appropriate IP enforcement.

1.3.2 BEST ALTERNATIVE PRACTICES REPORTEDIn light of the above mentioned peculiarities some countries have alreadyperceived the need to offer specific assistance in supporting IPR enforce-ment at trade fairs.

1.3.2.1 SWITZERLAND

In Switzerland since 1986, the Watch and Jewellery Show at Baselworldhas set up an arbitration commission called “the Panel”. Since the

or counterfeiting.

Referring to “Recommendations for the Protection of Intellectual propertyRights at Exhibitions” edited by UFI (The Global Association of theExhibition Industry) in February 2008, the final list of recommendationsexpressly cites the following activities to be ensured by trade fairorganisers:

“1. Before the event, organisers should provide exhibitors with informationon IPR protection via a specific brochure to be sent out with the registra-tion/participation forms, on the organizer’s website, in the exhibitors’manual, or in the tradeshow’s General Terms and Conditions. Thisinformation should contain advice to exhibitors, such as:

-Exhibitors should protect and register trademarks, patents or designs beforethe tradeshow starts, to obtain a valid right (an exhibition destroys novelty)and to be able to make use of all the forms of legal protection, in general andduring the event.-For that purpose, the consulting and advice of a specialized patent andtrademark attorney regarding registration alternatives, requirements,procedures and maintenance is highly recommended.-Contact details of the person responsible for IPR issues within the organizingcompany should be provided, as well as the contact details of local/nationalIPR organisations, customs authorities and patent and trademark attorneys.-Before the exhibition, an exhibitor who believes that another exhibitor willinfringe his rights should make an appropriate application to the customsauthorities (when applicable), who can then stop suspicious consignments,investigate them, take samples, and destroy copies.-Exhibitors should bring to the trade fair original documents or certifiedcopies of their patent or trademark rights, so that a possible infringementmay be established during the event. Any verdict already obtained againstan exhibiting pirate should also be included.

2. Furthermore, in order to assist exhibitors to address IPR complaints orinfringements during trade fairs, organisers should offer a list of local IPattorneys willing to represent exhibitors who wish to pursue legal actionagainst an alleged infringer.

3. Organisers should provide on-site or on-call experts (IP attorneys, customsauthorities) to be available during the event, so as to offer legal advice tothose affected by an IPR infringement to identify any counterfeit productsduring the trade fair.

4. Organisers should be able to provide a neutral arbitration, arbitrator, or

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exhibitors have recognised the Panel's authority by signing the exhibitorcontract with the management of the fair, exhibitors have to submit anycase regarding an IPR infringement by another exhibitor (the defendant) tothe Panel. The defendant has also the obligation to accept the Panel'sdecisions. However, a non-exhibitor, as it did not sign any exhibitorcontract with the management of the fair, can choose either thecompetent Court of the Canton of Basel or the Panel.

This Panel has its private regulation which defines the procedure, thecosts, the scope of the decision and the appeal. The decisions are basedon Swiss law and on Swiss case law. For all questions of procedure, thelocal Cantonal Basel-City Civil procedure law is applicable subsidiarily.The injured party should hold IP rights valid in Switzerland (trademarks,designs or patents for instance) to file a complaint (copy of the registra-tion certificate is sufficient). The injured party can file orally a complaintduring the length of the fair.

As soon as the exhibitor or the non exhibitor has filed a complaint, adelegation of the Panel (2 persons) accompanied by the complainantmove to the booth of the defendant for the inspection. The delegation ofthe Panel presents the case to the person in charge of the booth, takesnote of the defendant’s arguments and upon identification by thecomplainant, takes away for closer inspection in the frame of its plenarymeeting several items of the contested object.

The same day, the Panel examines the complaint based on the IP rightsand the contested objects in its plenary meeting. The Panel renders itsdecision and develops its conclusions.

The decision is notified to the parties on the following day. If aninfringement is recognised by the Panel, the defendant is invited to signan undertaking in which it commits itself not to sell, to exhibit or topromote the contested objects during the length of the fair. The losingparty has to support the administrative costs. The contested objects,which were taken away by the delegation, are handed back to thedefendant.

The Panel is composed of 7 members:

- 1 Chairman, a lawyer of Swiss nationality- 2 other lawyers of Swiss nationality- 1 patent lawyer practising in Switzerland- 2 experts of non Swiss nationality, with special knowledge of the

watch industry- 1expert of non-Swiss nationality, with special knowledge of the

jewellery sector

The defendant can provide any arguments during the Panel inspection orbefore the Panel begins its plenary meeting. After the notification of thePanel decision, the defendant can appeal the Panel decision by providingnew elements during the length of the fair.

1.3.2.2 ITALY

In Italy there is a system inspired by the Baselworld experience and hasbeen adopted at the following events:

a) since 2001, by MACEF, Milan (twice per year), managed by FieraMilano International.

b) since 2004, by EXPOCOMFORT, Milan (biannual), managed by ReedExibitions.

c) since 2007, by MARMOMACC, Verona (biannual), managed byVerona Fiere.

d) since 2008, by SAMOTER, Verona (every fourth year), managed byVerona Fiere.

The Italian solution is based on the automatic adoption and recognition ofa specific “Intellectual and Industrial Property Service Regulation”(hereinafter “Service”) for any exhibitor of the abovementioned events.

Such a Regulation, created and implemented for the first time at MACEF inSeptember 2001 and subsequently adopted (with minor changes) insubsequent events, is designed as a sort an arbitration regulation with aspecific system of pre-trial evidence collection.

There is no obligation for exhibitors to devolve the IP issues before theService but the activity of the Service and of its delegates shall berespected and no exhibitor may refuse interventions.

An alternative to this service is only possible by requesting an evidencecollection order (description order) by the Civil Court of Milan (for Milan)or Venice (for Verona), or to raise up a possible criminal violation askingfor a seizure by the Public Prosecutor and the Guardia di Finanza (ItalianRevenue Police).

The Service Regulation defines the procedure, the costs and the scope ofinterventions and decisions. The decisions are based on EC laws and onEC case law.

The injured party (exhibitors and non exhibitors) should hold IP rightsvalid in Italy (trademarks, registered designs or patents for instance,including copyrights and unfair competition issues) to file a complaintgiving all the pieces of evidence required. The injured party can file orally acomplaint during the length of the fair, and the delegates of the Service

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will formalise such request in a Verbal Proceeding verifying the identity ofthe requesting person and the existence of the IP rights invoked (throughIP databases and the analysis of the evidence provided).

As soon as the injured party has filed a complaint, after a prima facieevaluation of the existence and the validity in Italy of the IP right invoked,a delegation of the Service (two persons, at least) accompanied by thecomplainant move to the booth of the defendant for inspection. Thedelegation of the Service presents the case to the person in charge of thebooth, takes note of the defendant's arguments and upon identification bythe complainant, takes pictures of the items contested, without removingany item from the booth.

This activity is formalised in a Verbal Proceeding that includes the picturesany declaration of the claimant and the defendant, signed by the twodelegates and by the defendant and issued in 3 copies (1 for thedefendant, 1 for the claimant and 1 for the Service).

Immediately after the execution of such inspection (called ProtectiveService) the Claimant, after discussing the evidence collected with thedelegates, may invite the defendant to remove the items contested by theexhibition. If the defendant refuses to do so, the Claimant may ask for thesupport of the Intervention Service to obtain compulsory removal of thecontested items.

In this case, a hearing is fixed in the afternoon of the same day betweenthe Claimant and the Defendant before 3 Senior Experts appointedspecifically for the case and with respect to conflict of interest andspecialisation. Both parties may be assisted by their own lawyers if any.The panel of the 3 Senior Experts examines the complaint based on the IPrights and the contested objects in its plenary meeting. The panel rendersits decision within one hour from the ending of the hearing and thedecision is made in writing and delivered to the parties, with immediateeffect.

If an infringement is recognised by the panel, the defendant is invited toremove the contested item immediately.

In case of refusal to execute the order, the continuation of the infringe-ment will be considered relevant from the criminal perspective (objectiveinfringement assessed by the Experts and consciousness by thedefendant) and justify an immediate seizure by the Criminal Police,usually in force at the premises of the Exhibition.

The Service is composed of the following Delegates:

- 1 Coordinator of the Service- 8 Italian IP Lawyers appointed (covering by turn of 4 all the days of

the exhibition), having at least five years of experience in IP issues,- 4 Italian Senior Expert Patent Attorneys appointed in case of arbitra

tion panel, and- 4 Italian Senior Expert Lawyers appointed in case of arbitration panel

having all at least fifteen years of experience in IP issues.

1.3.2.3 GERMANY

Germany does not presently report any specific alternative measures in IPenforcement but some organisers of exhibitions already prepared someguidelines indicating the main legal issues about IP rights and thedescription about the main legal proceedings, including addresses ofspecialised lawyers and courts.

In particular, two exhibition organisers have published guidelines:

- FRANKFURT: “Messe Frankfurt against copying”- COLOGNE: “No copy”

Therefore in Germany IPR enforcement at trade fairs usually relies on theintervention of Public Authorities, and is typically very efficient in termsof timing. It is in fact possible to obtain a Court°Øs decision within onlyfew days and ex parte.

Nevertheless, German IP experts have declared that the idea of having amore developed self-disciplinary rule directly managed by trade fairsorganisers may indeed be interesting.

1.4 CONCLUSIONSSumming up the analysis done on those countries in Europe with a higherlevel of trade fair business (Germany, France, Italy, Spain and Switzerland)reveals the following:

a) in all countries IPR enforcement at trade fair venues is consideredrelevant and is frequently invoked;

b) in the most efficient countries from the judicial point of view, the needto have an alternative system is not frequently requested; however aneed exists to offer better support to exhibitors in order to betterexploit existing remedies, perhaps by publishing informative guidelines(e.g. Germany, France);

c) in other countries the need for specialisation (e.g. Switzerland) or theneed to obtain more rapid and specialised interventions (e.g. Italy) hasgenerated alternative solutions based on an arbitration schemeconferring specific enforcement powers to exhibitors by a panel ofindependent experts.

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Taking one or two exhibitions in consideraion, the level of implementationof such recommendations is as follows:

1) Informative Brochure Germany, Italy, Switzerland2) List of Attorney Germany3) On site experts Italy4) Arbitration Service Italy, Switzerland5) Interpreters Italy6) Special Stand IP Service Italy, Switzerland7) Incentive to show IP existence -

Accordingly, the following conclusions can be drawn:

I) even in the most judicially efficient countries some lack of timing and/or availability of experts in the necessary moment may frustrateeffective and fair enforcement;

II) trade fair organisers and exhibitors already perceive the need to havespecific management of IP issues;

III) the list of recommendations established by UFI represent clearguidelines for trade fair exhibitors and visitors to seriously complywith the various needs related to IP issues at trade fairs;

IV) only a few trade fair organisers have been able to effectively imple-ment such recommendations, at least in part (e.g. Italy, Germany andSwitzerland);

V) The standardisation of such practices is needed in order to complywith the Enforcement Directive towards harmonising procedures andto have a singular method and format of intervention; capable ofbalancing the various interests involved.

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2 COUNTRY FICHES

2.1 FRANCE

2.1.1 PRESENTATION OF THE GENERAL ENFORCEMENT

RULESIn France, the enforcement of IP rights can be managed through the civil,the criminal or the administrative point of view.

2.1.1.1 CIVIL AND CRIMINAL

The IPR owner may conduct a "Saisie-contrefaon" to collect evidence ofIPR infringement at trade fairs before any civil or criminal proceedings areinitiated.

The claimant applies ex parte to the judge to be authorised to carry out aninvestigation at the trade fair where the alleged infringing goods are likelyto be found. The claimant must only provide evidence that he owns an IPright, mens rea is not taken into account at this stage. The judge canauthorise a mere description of the said goods (with photographs), withor without taking of samples and relevant documents or more rarely aseizure in rem. The judge may subject the enforcement of the measures itorders to a guarantee on the part of the petitioner.

The “saisie contrefaçon” is affected by a bailiff, who may be assisted by anexpert designated by the IPR owner.

Evidence so collected may be used in civil or criminal proceedings and, insome circumstances, in proceedings initiated abroad. Proceedings on themerits in France must be initiated within 20 working days or 31 days (iflonger) of the “saisie”, failing which the “saisie” lapses, and the claimantmay be held liable for damages.

In respect of author rights, an author can also request ex parte to thejudge to suspend a scheduled exhibition if he proves that it will cause himintolerable damage that cannot be repaired. However in practice, such ameasure is rarely ordered. In a decision of 2 March 1989, the Court of FirstInstance of Paris refused to suspend an exhibition which was to be heldthe same day, organised by the owner of Lardera sculptures without theprior consent of the successors of the artist.

In practice,“saisie contrefaçon” at trade fairs is often requested as itconstitutes a fast and inexpensive way to collect evidence of IPRinfringement, especially when the product is exhibited at the trade fairbefore it is launched on the market. Once the product is launched on the

market, it is usually more efficient to conduct a seizure at the premises ofthe company where the alleged infringing goods are on sale, since moreinformation will usually be available (e.g. accounting records, etc).

2.1.1.2 ADMINISTRATIVE

French customs agents may seize goods infringing trademark rights,authors’ rights, neighbouring rights or registered design rights at tradefairs, either open to the public or open with an invitation card, providedthat customs agent have first notified their intervention to the publicProsecutor. They can intervene:

(i) at the request of IPR owner: The IPR owner needs to file a Frenchcustoms application and provide the customs agent inter alia with(a) the IP rights on the basis of which the customs application isfounded and a list of companies authorise to make, import or marketthe products (b) documentation regarding infringing products(distinctive elements of infringing material, presumed origin andprovenance, etc.) (c) an undertaking to pay costs incurred in relationwith the withholding of goods.

If French customs agents find goods suspected of being counterfeits,they retain them for up to 10 working days and inform the IP rightsholder. During this time period, customs agents are authorised todisclose limited information to the IP rights holder so that he maydetermine whether the goods are counterfeit. If the goods arecounterfeits, the IP rights holder has 10 days of the customs seizureto initiate proceedings before French courts, failing which customswill release the goods. There is of course no obligation for the IPrights holder to initiate proceedings.

In practice, customs seizures at trade fairs are not frequentlyrequested by IPR owners as, usually, the quantity of goods to beseized is little. Furthermore, customs agents are not able to establishan infringement when products are not actually exhibited, but onlypresented in catalogues on display.

(ii) at their own initiative: customs agents are empowered to seizegoods when such goods are obvious counterfeits, without any legalaction required from the IP rights-holder. They will inform the IPrights holder and the public Prosecutor of the seizure. The IP rightsholder has 3 days from the notification to file a French customapplication, failing which customs may release the goods. Whenproducts are obvious counterfeits, and seized quantities limited,

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Property Code- Patents: Article L.615-5 and seq. of the French Intellectual Property

Code

ADMINISTRATIVE - Customs seizure- Trademarks: Article L.716-8 and seq. of the French Intellectual

Property Code- Author rights and Neighbouring rights: Article L.335-10 and seq. of

the French Intellectual Property Code- Design rights: Article L.521-14 and seq. of the French Intellectual

Property Code

2.1.3.2 RELEVANT COURT DECISIONS

Most case law on intervention at exhibitions are related to the questionon whether the “saisie-contrefaçon” conducted by the bailiff to collectevidence is, or not, valid. Indeed, in order to be valid, the “saisie-contrefaçon” must comply with the judge decision (identification of thecompany aimed by the “saisie”, scope of the “saisie”, etc.). Also, the“saisie” can be declared null and void when the claimant conducts the“saisie” with a view to harm the alleged infringer.

For instance, the Paris Court of Appeal, in a decision dated 13 March1996, ruled that a “saisie” was abusive since it was conducted after threeother “saisie” which were already sufficient to demonstrate acts ofinfringement, the fourth saisie was done only in view to discredit thecompetitor.

custom agents may take the initiative to destroy the products.

Customs agent do not frequently visit trade fairs on their owninitiative as it is expensive to send a team while only smallquantities of products are usually exhibited. In addition, the effectsof the seizure will be very limited if the manufacturer is establishedoutside France and has no stocks in France.

2.1.2 SPECIFIC ENFORCEMENT ALTERNATIVES FOR THE

TRADE FAIRSTo the best of our knowledge, there is no trade fair that implementsalternative measures in IP protection and IPR enforcement. In any event,alternative measures that could be proposed cannot replace the measuresprovided for by the law; they could only be used in addition to them.

The terms and conditions of four of the major fairs that take place in Paris(Salon International de l’Aéronautique et de l’Espace, Salon Internationalde l’Agriculture, Foire de Paris and Salon de l’Automobile) always refer toFrench legislation. Here is an example of the terms and conditions clausesof the international aerospace show:

Customs: “Throughout the duration of the Show (including the installationand dismantling period), the Show grounds shall be governed by the FrenchRegulations applicable to customs warehouses. It is the responsibility ofExhibitors to complete the required customs formalities for equipment andproducts brought into France from another country. The Organizer shall notbe liable for any difficulties arising in connection with these formalities”.

Intellectual Property Rights: “It is the Exhibitor's responsibility to ensure theprotection of intellectual and/ or industrial property rights for equipment orproducts exhibited, in accordance with the legislation and/ or regulations inforce in France and/or Europe and/ or the rest of the world. The Organizerhereby informs Exhibitors that the Show is not included in the list ofexhibitions exempt from the principle of non-disclosure of inventionsprovided under French Intellectual Property Law”.

2.1.3 DOCUMENTS

2.1.3.1 EXTRACTS OF LEGISLATION

Civil and criminal - "Saisie-contrefaon":- Trademarks: Article L.716-7 and seq. of the French Intellectual

Property Code- Author rights and Neighbouring rights: Article L.332-1 and seq. of

the French Intellectual Property Code- Design rights: Article L.521-4 and seq. of the French Intellectual

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2.2 GERMANY


RULESIn Germany the enforcement of IP rights at trade fairs can be achievedespecially through civil but also through criminal and administrativeproceedings.

2.2.1.1 CIVIL PROCEEDINGS

2.2.1.1.1 EXTRAJUDICIAL PROCEEDINGSIt is possible to enforce IP rights in an extrajudicial way by sending to theinfringer a warning letter according to � 12 paragraph 1 Act againstUnfair Competition (UWG) (analog) at his booth on the trade fair. Sucha warning letter is regularly combined with a cease-and-desist-declarationthat needs to be signed from the infringer under accepting contractualpenalty for each case of non-compliance within a certain period of time. Inurgent cases like a trade fair the respite can only be one day or a fewhours. If the infringer accepts the warning letter and signs the cease-and-desist-declaration unconditioned and irrevocable the presumed danger ofrecurrence of the infringement is disproved. The IP right’s owner has noreason and no need for taking legal action anymore. In each case ofrecurrence the contractual penalty falls due. The costs for this extrajudicialproceeding have to be reimbursed by the infringer, according to � 12paragraph 1 Act against Unfair Competition (UWG) or according to theprinciple of agency of necessity.

If the infringer does not comply with warning letter, the right’s owner canstill try to take legal action, especially try to obtain a preliminaryinjunction.

If the warning letter was unfounded, it can make the right’s owner liableto pay compensation for damages on grounds of an illegal and culpableinterference with the right to operate an established and runningbusiness.

2.2.1.1.2 PRELIMINARY COURT PROCEEDINGA promising way to enforce IP rights at trade fairs is via a preliminaryinjunction, based on a summary examination, according to �� 940,936, 916 ff German Code of Civil Procedure (ZPO). If a right holderrecognises an infringement only at the trade fair or shortly before the startof the fair the preliminary injunction proceeding is a possibility to receive,nevertheless, an interim court order within a very short time, sometimeswithin one day (trade fairs often only last a few days).

The claim underlying the preliminary injunction (Verfügungsanspruch) isthe claim for injunctive relief (e.g. � 139 Patent Act (PatG), � 14paragraph 5 Trademark Act (MarkenG), � 24 Utility Patent Act, � 42Design Act, � 97 Copyright Law, � 8 Act against Unfair Competition)and mostly the claim for information (e.g. � 140b Patent Act (PatG), 19Trademark Act (MarkenG), � 24b Utility Patent Act, � 46 Design Act, °Ï99 Copyright Law, � 242 Civil Code in combination with the Act againstUnfair Competition); sometimes also the claim for a sequestration forprotection of the right of discretion (e.g. � 140a Patent Act, 18Trademark Act, � 24a Utility Patent Act, � 43 Design Act, � 98Copyright Law) according to � 938 paragraph 2 German Code of CivilProcedure (ZPO).

Referring to the infringement of the IP right and the default of thedefendant there has to be only a reasonable likelihood of infringementaccording to �� 920 paragraph 2, 936, 294 German Code of CivilProcedure (ZPO) of the claimant; regarding the default it can often beassumed that a company and competitor must know about the rights ofthe claimant.

Special requirements for the following cases:

To enforce the claim for information an “obvious” infringement of therespective right is necessary - that is the case when there are noreasonable doubts left and a contradictory decision in a main proceedingpractically seems to be impossible.

Regarding patent rights the particularity is that broad technical facts needto be examined which is often not possible in a summary examination.Therefore preliminary injunctions with respect to patent infringements arenot as frequent as for other IP rights, but they are not unattainable.Nevertheless, such cases exist and it is necessary that the validity of thepatent in suit seems to be definite (e.g. no nullity proceedings arepending). Furthermore, the infringement of the patent right seems to beclear and obvious.

The condition to obtain a preliminary injunction (Verfügungsgrund) mustbe an urgency; according to � 940 German Code of Civil Procedure(ZPO) a reason for a preliminary injunction is given if the preliminarydecision seems to be necessary for avoiding the main disadvantages orprevention of threatening violence or for other similar reasons. Dependingon different jurisdiction the applicant should not wait longer than e.g. onemonth (Appeal Court Munich), two months (Appeal Court Düsseldorf),six weeks to six months (Appeal Court Hamburg) or regularly five weeks(Appeal Court Cologne) starting from his knowledge of the potentialinfringement until the day of filing the application for a preliminary

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injunction.

The court that would be competent for the main proceedings is alsocompetent for the issuance of the preliminary injunction, according to �937 German Code of Civil Procedure (ZPO). This is in almost all cases aDistrict Court according to the value in dispute so that it is necessary tobe represented by a lawyer in the legal proceedings, according to � 78German Code of Civil Procedure (ZPO).

In urgent cases, which is basically the rule regarding infringements ontrade fairs - the court can decide with only one - the presiding - judge,according to � 944 German Code of Civil Procedure (ZPO) and thecourt/judge can decide to abstain from hearing the opponent, accordingto � 937 paragraph 2 German Code of Civil Procedure (ZPO).

If the court concludes that it cannot decide without hearing the otherparty, a date for an oral hearing will be fixed, which will often be onlyafter the close of the trade fair, especially if the fair only lasts three or fourdays. More recently, courts have tried to offer an improved service and aretrying to arrange prompt oral hearings so that they can still take placeduring the fair; e.g. the specialised patent chamber of the District CourtBraunschweig (responsible for the district of Hannover where manyfimportant international trade fairs take place) offers an on-call duty duringthose important international trade fairs in Hannover: The patent chamberis available already very early in the morning and in very urgent cases alsowilling to perform oral hearings even on the ground of the trade fair.

The matter in dispute is the preliminary satisfaction of the respectiveclaim. The application is regularly directly combined with an application ofthreat of measures of compliance for ensuring that the decision, should itbe enacted, can be enforced directly and as soon as possible.

Following the text of law, the court can command that enforcement of thepreliminary injunction is dependant from paying a security deposit before,according to �� 938 paragraph 1, 921 German Code of Civil Proce-dure (ZPO). According to experience, however, this is hardly ever orderedin practice.

If the court disapproves the claim for a preliminary injunction, theopponent will not be informed, according to �� 922 paragraph 3, 936German Code of Civil Procedure (ZPO); only the claimant will beinformed (often in the statement of the claim a notice is often given tothe judge to contact the claimant by telephone in case of any questionsor ambiguity; if the judge informs the claimant about his doubts over thetelephone he has the possibility to revoke his application for thepreliminary injunction so that at least the court costs and cost for

opposing counsel can be reduced).

If the court allows the preliminary injunction it is necessary to executethis decision within one month, according to �� 929 paragraph 2, 936German Code of Civil Procedure (ZPO). The preliminary injunctiondecision is per se preliminarily enforceable.

Service of the decision

The preliminary injunction is not served by the court; it has to be serveddirectly to the other party by a bailiff (party prosecution), according to ��

922 paragraph 2, 936, 192 ff German Code of Civil Procedure (ZPO). Theclaimant receives the decision from the court and instructs a bailiff toserve it directly to the other party at the respective booth at the fair,according to � 25 operation guidelines for bailiffs (GVGA). (It is veryrare that the other party already mandated an attorney to whom thedecision would have been to serve otherwise.)

Enforcing a preliminary injunction the bailiff follows the operationguidelines for Bailiffs (Geschaeftsanweisung für Gerichtsvollzieher(GVGA)), namely �� 1 ff (general rules), �� 11 (service), �� 23 ff(service of amongst others especially preliminary injunctions), � 192(execution of a preliminary injunction) operation guidelines for bailiffs(GVGA). The bailiff generally fills in a standard form to prove the serviceand the other party has to sign it at the booth. Usually the bailiff firstlydelivers the decision for purpose of execution of the preliminaryinjunction.

Secondly it can be the case that the bailiff at the same time obtained theinstruction for a sequestration. Then the bailiff will also enforce that claimaccording to � 57 ff operation guidelines for bailiffs (GVGA). He willsearch for the respective items at the booth and will take them with him,if possible, or will have it picked up to store it afterwards till the legaldispute will be finalized. For the storage the bailiff regularly demands anadvance payment from the claimant.

All fees and expenses of the bailiff are based upon the law of costs forbailiffs (Gerichtsvollzieherkostengesetz (GVKostenG)).

Defense of the opponent

If the opponent does not want to accept an issued and served preliminaryinjunction, he has the following possibilities of defence:

Filing an objection according to �� 924, 936 German Code of CivilProcedure (ZPO) to the issuing court;

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Claiming at the respective court that a deadline will be fixed for theclaimant to take the main action so that a final decision can be broughtabout (instead of only a preliminary one), according to �� 926paragraph 1,936 German Code of Civil Procedure (ZPO); in both casesan oral hearing will be arranged from which experience will no longer bederived from the duration of the trade fair.

A claim for a temporary abandonment of the enforcement according to�� 769 German Code of Civil Procedure (ZPO) is usually notsuccessful in preliminary injunction proceedings because it wouldcontradict the order to cease and desist.

It is also possible to restrain the objection according to �� 936, 924German Code of Civil Procedure (ZPO) only to the costs. Often it isclaimed for a preliminary injunction without sending the opponent awarning letter before, so that the service of the court’s decision at the fairwill have a surprise effect. This may have the effect that the claimant haveto bear the costs of the proceeding, according to � 93 German Code ofCivil Procedure (ZPO), if the opponent would accept the claimimmediately. Regarding the jurisdiction also in urgent cases like trade fairsit should be possible to warn the opponent before taking legal action, e.g.by bringing the warning letter directly to the booth and giving the otherparty a very short deadline to put the potential infringing items away orat least cover them and refrain from (furthermore) presenting them at thefair.

Costs and compensation

All costs have to be reimbursed by the opponent if he accepts the court’sdecision, including the court’s costs as well as the costs of the bailiff andnaturally the attorney’s costs of the claimant, according to �� 91 ffGerman Code of Civil Procedure (ZPO). (In case of claiming for apreliminary injunction no court costs have to be paid in advance by theclaimant; if the opponent finally has to bear all costs the court addressesthe opponent directly to get the court costs reimbursed.)

In case of enforcement of a preliminary injunction and a contradictoryfinal decision of the court (e.g. after an objection of the opponent) theclaimant is obliged to compensate the damages to the opponent,according to � 945 German Code of Civil Procedure (ZPO).

Court’s decision in case of non-compliance with the injunctive relief

Generally in case of non-compliance with a successful preliminaryinjunction order (e.g. the claim for injunctive relief was successful and theconsequence is that the exhibitor is not allowed to show his items but

still shows them) the right holder has to claim for an administrativepenalty. But regarding administrative penalties preliminary proceedingsare not provided. Therefore the District Court of Düsseldorf decided that itshould be possible to achieve a second preliminary injunction followingthe same aforementioned rules that concretises the order to cease anddesist (e.g. by ordering that the an infringing machine has to be put awayfrom the booth or has at least to be covered for the duration of the fair,District Court Düsseldorf, decision dated February 25, 1982, - 4 O 34/82-; District Court Düsseldorf, decision dated May 11, 2004, - 4a O 195/04-; District Court Düsseldorf, decision dated February 18, 2005, - 4a O 73/05 -, “Abraeumer”).

Arrest order regarding the costs

If the opponent is from far abroad and it is obvious that it will becomplicated to enforce a cost’s decision regarding the costs of thepreliminary injunction proceedings in the specific foreign country, it isrecommendable to claim for an arrest in rem according to �� 916 ffGerman Code of Civil Procedure (ZPO) immediately after having receivedthe preliminary injunction that imposes the opponent to bear the costs ofthe proceeding.

The claim for an arrest order is basically based upon the same aforemen-tioned rules like the claim for a preliminary injunction. An arrest order willoften also be ordered within one or two days and also has to be served bya bailiff to the other party directly at the fair. The instruction of the bailiffto deliver the court’s decision , which also has to be done within onemonth, according to � 929 paragraph 2 German Code of Civil Procedure(ZPO), can be combined with an instruction of enforcement at the sametime. Usually the bailiff will be instructed according to �� 808 ffGerman Code of Civil Procedure (ZPO) to seize movable property foundon the booth at the fair. The bailiff himself is able to estimate if theproperty has approximately the value of the amount of money mentionedin the arrest order, but it is also possible to name an estimation of valuee.g. of presented machines before. In most cases the bailiff demands apayment in advance regarding his costs for the seizure.

Furthermore, the arrest order often already includes the aspect that alsothe costs of the arrest proceeding have to be reimbursed by the opponent.A sum of all - injunction and arrest - costs, including interest, ismentioned in the arrest order and can be deposited from the opponent asa security at the court. In that case the bailiff is not allowed to seizeanything anymore.

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16

Police help

Regarding the enforcement of preliminary injunctions at trade fairs via abailiff the police sometimes helps, e.g. if nobody at the opponent’s boothwants to accept the court order and the whole staff refuses to give theirnames - in such cases the bailiff can call the police and they have thepower to ask the staff to identify their selves.

2.2.1.1.3 PRESERVATION OF EVIDENCE PROCEEDINGIf the right holder discovers a probably-infringing item at the trade fairbut is not too sure about the fact of infringement a possibility toobtain certainty is the preservation of evidence directly on the fair;especially if the assumed infringer comes from far abroad and it seemsto be difficult or very expensive to order the respective item as anexample later on.

�� 485 ff German Code of Civil Procedure (ZPO) rule the so calledindependent proceedings for the taking of evidence - independent fromand in the run-up to the main action. The right’s owner can claim for theorder of an inspection of the item by an expert according to � 809German Civil Code (BGB). A certain probability of an infringement issufficient for such a claim.

In case of urgency, which is basically always the case regarding aninspection on trade fairs, the right’s owner can claim for the indepen-dent proceedings for the taking of evidence in the shape of theaforementioned preliminary injunction proceedings according to ��

940, 936, 916 ff German Code of Civil Procedure (ZPO).

It can also be claimed for the attendance of a specific lawyer and patentattorney that have to be named in the claim. But in cases of trade fairs thecourt sometimes refuses the attendance with respect to the interests ofthe assumed infringer- it is his justifiable interest that the inspection iseffected without attracting too much attention.

Such a court order regarding the inspection of an item by an expert alsoincludes the interdiction for the defendant to make modifications orchanges. The expert is usually allowed per court order to take photos andmake notes and e.g. to ask, if necessary, to start the operation of amachine. The defendant can take notice of the written expert’s opinionafterwards and gets the opportunity to inform the court about interests ofnondisclosure. The court then has to decide whether the expert’s opinioncan be handed out to the claimant.

2.2.1.1.4 MAIN COURT PROCEEDINGEnforcing IP rights in a main legal proceeding in Germany regularly takes

at least a few months or more, depending on the IP right and on theseized court. But if a defendant is an exhibitor at a German trade fair,claimants often take advantage of having a writ served upon thedefendant at the fair. Thus, the claimant spares a formal delivery abroad,which is expensive and can take a very long time. Furthermore, the writdoes not need to be translated, because exhibiting in Germany implicatesthat at least someone in the booth is able to speak German.

2.2.1.2 CRIMINAL PROCEEDINGS

In Germany penal provisions of infringement proceedings of IP rights arerare, because the Public Prosecution Office hardly sees any public interestregarding the criminal prosecution of an infringer of IP rights. Althoughthere are existing German penal rules in the law of IP rights: � 142Patent Act (PatG), � 25 Utility Patent Act (GebrMG), � 14 Design Act(GeschmMG), �� 143, 144 Trademark Act (MarkenG), �� 106 -108aCopyright Act (UrhG).

Sometimes an IP right owner reports an offence to the police to - in theshort-term - attain a search or confiscation of certain items according to�� 105 ff German Code of Criminal Procedure (StPO) by the PublicProsecution Service or the police on the fair.

2.2.1.3 ADMINISTRATIVE PROCEEDINGS

Confiscation / border confiscation by customs

Moreover, an application of a border confiscation by the customs ispossible according to the European Regulation Nr. 1383/2003 oraccording to the - subordinate - national German regulations forconfiscation, � 142 a Patent Act (PatG), � 25a Utility Patent Act(GebrMG), � 55 ff Design Act (GeschmMG),�� 146 ff Trademark Act(MarkenG), � 111b Copyright Act (UrhG).

The application should happen best in advance; in the run-up to the fair.But under the requirements of article 4 of the European Regulationcustoms can exceptionally get active before the application or before theconcession of the application. Customs cannot only be active at theborders but also in Germany, especially concerning goods that are onlytemporarily imported from a third state for presentation at a German fair,which can be confiscated by German customs, if a suspicion of aninfringement of IP rights is given.

In Germany the contact for border confiscation is the ZGR (ZentralstelleGewerblicher Rechtsschutz). Representatives of the ZGR are recently oftenpresent a famous international trade fairs in Germany to inform exhibitorsabout their rights and legal options.


TRADE FAIRS

List of trade fairs offering a self disciplinary system of IP enforcement

German trade fair organisers do not on the whole have their own legalresources, but they try to help exhibitors as best as they can in cases of IPinfringements; also beforehand, and to give as much information aspossible. In some cases they actively help. In detail:

To the best of our knowledge and inquiries no German trade fair,respectively exhibition corporation, offers a self disciplinary system of IPenforcement, especially not in the manner of written rules that have to befulfilled (e.g. by the employees of the trade fair).

According to the telephone information of the exhibition corporations ingeneral each trade fair company tries to be neutral towards all exhibitorsat each fair. They try to assure a convenient as possible succession of thefair for all exhibitors.

But that can also include, as far as the management of the fair getsinformed about infringement proceedings on the fair ground at all, theexhibition management in single cases trying to help to for example,observe the compliance with a preliminary injunction order (e.g. ifinfringing machines stay covered for the duration of the respective fair).But often, even for the legal department of the fair, it is hard to evaluatewhether an infringement is actually given so that the fair generally leavesthis decision to the courts.

In general, the trade fair management advises contacting a lawyer as soonas possible. Each fair management is regularly available to give informa-tion to the exhibitors as to how to proceed in the case of an infringementdiscovery or in case they receive a court order by a bailiff. A few legaldepartments have already prepared guidelines outlining the main legalsteps and describing the main legal proceedings, including addresses oflawyers and courts (e.g. the Fair in Frankfurt “Messe Frankfurt againstcopying” and Cologne “NO COPY”). These guidelines also give generalinformation on how certain rights can be protected.

Moreover, exhibitors can generally ask trade fair management about theavailability of fair photographers or other administrative assistance (e.g.for certain addresses).

It is also in the interest of the trade fair management that as littleinfringement proceedings as possible disturb the process of a fair.Therefore, the management does try to raise the exhibitor awareness of IPrights.

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The Frankfurt trade fair management recently included a clause in theirapplication form (that needs to be signed by each exhibitor in thebeginning of a fair) that in case the respective exhibitor receives a Germancourt order prohibiting the offering or presentation of certain items at theexhibition and in case the exhibitor refuses to follow the court order, thetrade fair management reserves its right to suspend the exhibitor from thefair or at least from subsequent trade fairs.

Evenso, trade fair management explain that their help and informationcannot substitute for professional legal advice, especially on the questionof whether an IP right is actually infringed or not and what the resultingclaims, rights and procedures for their enforcement are.

2.2.3 DOCUMENTS


2.2.3.1.1 CIVIL

German Code of Civil Procedure�� 940, 935, 936, 916 ff � preliminary court proceedings�� 920 paragraph 2, 936, 924 � probable case to be shown only�� 940 � urgency� 937 paragraph 1 � competent court� 937 paragraph 2 � no hearing of defendant� 944 � decision of presiding judge�� 929 paragraph 2, 936 � execution of enacted injunction/service�� 924, 926, 936 � possible defense of opponent� 945 � compensation of damages�� 916 ff � arrest order�� 485 ff � independent proceedings for taking of evidence

German Act against Unfair Competition� 12 � warning letter

2.2.3.1.2 CRIMINAL� 142 German Patent Act (PatG)� 25 German Utility Patent Act (GebrMG)� 14 German Design Act (GeschmMG)�� 143, 144 German Trademark Act (MarkenG)�� 106 -108a German Copyright Act (UrhG)�� 105 ff German Code of Criminal Procedure (StPO) � ProsecutionService or police on trade fairs

2.2.3.1.3 ADMINISTRATIVEConfiscation / Border confiscation by customsEuropean Regulation No. 1383/2003


Appeal Court Frankfurt, decision dated May 3, 1984, - 6 W 58/84 -, inGRUR 1984, 693 ff, “Messe-Abmahnung”;

Even if a trademark infringement is discovered first at a fair also in suchurgent cases sending a warning letter before claiming for a preliminaryinjunction is generally reasonable, as the case may be an oral warningdirectly at the booth can be sufficient.

Appeal Court Cologne, decision dated April 6, 2000, - 6 W 42/00 -, inNJWE-WettbR 2000, 303 ff;

Sending a warning letter before claiming for a preliminary injunction is notreasonable if the applicant also claims for a sequestration in the preliminaryinjunction because he fears that the specific probable infringing items will bestashed by the infringer after receiving the warning letter (here: TrademarkLaw).

Appeal Court Schleswig, decision dated April 4, 2000, - 6 W 7/00 -, inNJWE-WettbR 2000, 248 ff;

Also with respect to a legally represented major enterprise and an extremelyurgency sending a pre-judicial warning letter is not dispensable if modernmeans of communication are at disposal.

District Court Mannheim, decision dated December 23, 2005, - 7 O 282/05 -, in GRUR-RR 2006, 348 ff, “Etikettiermaschine”;

Requirements for decree of a preliminary injunction in patent cases: nopreliminary proceedings if the evaluation of the question of infringementcauses difficulties and there are doubts with regard to the protectability of themain claim.

Appeal Court Düsseldorf, decision dated March 1, 2007, - 2 U 98/06 -, inGRUR-RR 2007, 219 ff, “Kleinleistungsschalter”;

Doubts regarding the validity of the patent in suit can only be pleaded inpreliminary injunction proceedings if a nullity or opposition proceeding isactually pending; exceptions may exist.

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� 142 a German Patent Act (PatG)� 25a German Utility Patent Act (GebrMG)�� 55 ff German Design Act (GeschmMG)�� 146 ff German Trademark Act (MarkenG)� 111b German Copyright Act (UrhG)contact: ZGR (Zentralstelle Gewerblicher Rechtsschutz)

2.2.3.2 RELEVANT COURT DECISION

2.2.3.2.1 LIST OF ENCLOSED CASESDüsseldorf Court of Appeals, decision dated April 8, 1982, - 2 U 102/81 -,in IIC 1984, 538 ff, “Right of Inspection”;

Order for preservation of evidence

Federal Supreme Court (Bundesgerichtshof), decision dated January 8,1985, - X ZR 18/84 -, in IIC 1987, 108 ff, “Pressure Beam (Right ofInspection II) Druckbalken”;

Details regarding the right to demand production and inspection of an item

Munich Court of Appeals, decision dated August 19, 1999, - 6 U 4043/99 -, in IIC 2001, 333 ff, “Omeprazol-Ratiopharm”;

Requirements for preliminary injunction proceedings in patent cases

Frankfurt Court of Appeals, decision dated November 22, 2001, - 6 U153/01 -, in IIC 2002, 980 ff, “urgency in patent cases”;

Details regarding the requirements for preliminary injunction proceedings inpatent cases

2.2.3.2.2 LIST OF CASES AUTHORISING INTERVENTION AT TRADE

FAIRS (ONLY AVAILABLE IN GERMAN LANGUAGE)Appeal Court Düsseldorf, decision dated June 13, 1995, - U (Kart) 15/95 -,in NJW-RR 1996, 123 ff;

Requirements for urgency according to � 940 German Code of CivilProcedure (ZPO)

Appeal Court Hamburg, decision dated November 23, 2006, - 5 W 167/06 -, in BeckRS 2007 08988, “Dringlichkeitssch?dliches Warten”;

It requires an overall view of the single case to decide whether waiting for acertain time argues against urgency according to � 940 German Code ofCivil Procedure (ZPO).

2.3 ITALY


RULESIn Italy the enforcement of IP rights can be managed through the civil andthe criminal point of view1.

2.3.1.1 CIVIL

Civil enforcement is dealt with through 12 specialised IP courts located inthe Italian territory .

The usual practice of IPR enforcement involves two possible actions thatcan be also combined:

a) ordinary action (on the merit)b) interim procedures (evidence collection tool, seizures and injunctions).

Firstly, it should be noted that in order to start a litigation (via ordinary orurgent proceedings) in Italy, the granting of a Patent is not requested: it issufficient that the application shall be deemed public (even if in Italy thereis no official publication made by the Italian Patent Office) or simplynotified to the counterpart (art. 132 Italian IP code). So, in the case of aEuropean patent application, it is sufficient to file an Italian translation ofthe application before the Italian Patent Office. Such a possibility offers aremarkable competitive advantage with respect to other countries wherethe litigation shall be initiated only after the granting of the Patent Right.

The ordinary action is usually started only when all the pieces of evidenceare already available and there is no matter of urgency (in Italy this meansthat at least 9 months has already passed from the official knowledge ofthe allegedly infringing event).

The aim of the ordinary action is to obtain a declaratory statement by thecourt assessing the infringement, ordering the definitive interruption ofthe infringing activities and to assign damages in favour of the defendant.In Italy the ordinary proceeding usually last for 3-4 years at the firstinstance and another 2-3 years for an appeal, if filed.

There are two interim measures in Italy:

a) evidence collection tool (descrizione)

This order has been available in Italy even before 1979. The “descrizione” isan order granted by the President of the competent court authorising theplaintiff (assisted by the bailiff, eventually by a court expert and usuallywith a photographer) to inspect and describe the allegedly infringingproducts/processes. The Italian case law recently started to interpret theconcept of “evidence of the infringement” more broadly, extending thepower of the bailiff even to the collection of the documental andaccountancy evidence of the business related to the alleged infringement.Such approach is particularly useful and significant in the enforcementstrategies because it offers the opportunity to collect ex parte all theelements to quantify the damages suffered, without the risk of anyalteration that is typical during the main proceedings. Such an approach isperfectly in line with the policy envisaged by EC Directive 48/2004, Sec. 7,that de facto represents a codification of the Italian institute. The oralproceedings will contain a detailed description of the operation and theevidence collected. The aim and use of this procedure is to collect officialevidence of infringement for the purpose of using it in the trial. Normally,the order can be obtained ex parte (inaudita altera parte) if there is a riskthat the defendant may remove all evidence of the allegedly infringinggoods. The order is granted quite rapidly (within 2-5 days) and normallyno bond is requested. Requests for a search are frequently made duringexpositions or trade fairs because no civil seizure is allowed in theseplaces. After the order for a search is issued, the plaintiff has 30 days tosummon the defendant for in ordinary trial. If this deadline is missed, allthe evidence collected will be invalid and cannot be used for any futureprocedure. The collected evidence, in order to be used shall be officiallyauthorised by the judge to be admitted into the main proceeding. Aftersuch a moment (usually after the second hearing), this evidence can beused in any other context (i.e. parallel proceedings abroad).

b) seizure and injunctive order.

The Italian IP code expressly provides the “sequestro” (art. 129 Italian IPcode) and “inibitoria” (art. 129 Italian IP code) as interim relief.

The seizure is and order with the aim to seize all the infringing goods andalso any possible good or tool that may univocally permit theinfringement.

The inibitoria is an injunction order to cease and desist from using theproduct or process allegedly infringing the patent by manufacture,promotion, distribution, etc.

Such orders are subjected to the presence of two requirements:

i) urgency1 In order of importance (due to the case workload): Milan, Rome, Venice, Turin, Naples, Blologna,

Florence, Genoa, Catania, Palermo,Bari, Trieste

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ii) likelihood of reason

The first one implies the evidence that a irreparable harm will besuffered by the IP owner during the delay of the ordinary proceeding.Moreover the reaction of the claimant to the infringing actions shall beshown in a timely way: a delay of more than 6 months from the date ofthe awareness may lead to a rejection of the application for the interimrelief for lack of interest to an urgent measure.

The second one implies evidence that the infringement can quite likelybe assessed on a preliminary basis. In the patent field such evidencemay be very difficult to assess on a summary basis. Anyway, thejudges usually decide to grant a preliminary measure after theappointment of a Court Expert, who has the task of assessing thelikelihood of the infringement limiting his report to a summary analysisof the validity/infringement issues.

The orders may be granted ex parte, but, actually, the IP courts veryrarely grant ex parte injunctions. The judge usually fixes a hearing inorder to discuss the preliminary issues and in patent cases appoints aCourt Expert in order to receive a technical support in order to decidethe case.

The court can also be requested to impose “astraintes” (monetaryfines) in case of a delay in complying with the order. Contempt of aninjunction granted by the court also constitutes a criminal offence.

As stated before, the abovementioned interim relief is not availableduring trade fairs in Italy. The article 129.3 of the Italian IP codeexpressly provides that:

“Except for the needs of criminal justice, the objects deemed to infringe anindustrial property right may not be seized but only described as long asthey are displayed within the fence of an exhibition, whether official orofficially recognised, taking place in the territory of the Country or beingmoved from, or to, such exhibition.”

It will only be possible to obtain the interim relief before the trade fairin order to rid the exhibition of the allegedly infringing goods or simplyask for a description order to be executed during the trade fairs.

2.3.1.2 CRIMINAL

There are few provisions related to criminal enforcement:

- art. 473 and 474 of the Criminal Code (ex officio)- art. 127 of the Italian IP code (under party complaint)

Two elements are essentially required for both provisions:

i) clearly objective infringementii) consciousness to violate a third party IP right (mens rea)

The usual practice of the IP criminal enforcement involves two possibleactions, frequently combined:

a) the ordinary actionb) the evidence gathering procedures (“sequestro probatorio”) or

preliminary seizures (“sequestro preventivo”).

The aim of the ordinary action is to condemn and punish those whoconsciously infringed upon an IP right. The duration of an ordinary actionis about 4-5 years.

In the majority of the cases, however, a criminal case starts with theapplication for an evidence gathering procedure asking for a seizure for ofevidence purpose on one sample of product. Where the infringement is soevident that does not require any specific technical support (in general fortrademarks and designs) then is possible to proceed with a preliminaryseizure.

Usually such measures are adopted ex parte, within a very limited timeframe (2/5 days) and shall be confirmed by the Public Prosecutor within48 hours, if adopted ex officio by the police.

Criminal measures may be enforced also during the trade fair. Criminalenforcement is limited to clear cut cases of “copies”; cases of likelihood ofconfusion or of not confusing similarity are normally proposed only viathe civil way.


TRADE FAIRSIn Italy, there is a system that is inspired by the Baselworld experienceand has been adopted by the following events:

e) since 2001, by MACEF, Milan (twice per year), managed by Fiera MilanoInternational

f) since 2004, by EXPOCOMFORT, Milan (biannual), managed by ReedExibitions,

g) since 2007, by MARMOMACC, Verona (biannual), managed by VeronaFiere

h) since 2008, by SAMOTER, Verona (biannual), managed by Verona Fiere

The Italian solution is based into the automatic adoption and recognition

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of a specific “Intellectual and Industrial Property Service Regulation”(hereinafter “Service”) for any exhibitor of the abovementioned events.

Such a Regulation, created and implemented for the first time in theMACEF of September 2001 and subsequently adopted (with minorchanges) in the other subsequent events, is designed as a sort anarbitration regulation with a specific system of pre-trial evidencecollection.

There is no obligation for the exhibitors to devolve the IP issues before theService but the activity of the Service and of its delegates shall berespected and no exhibitor may refuse interventions.

An alternative to such service may be only the request of a evidencecollection order (description order) by the Civil Court of Milan (for Milan)or Venice (for Verona), or to raise up a possible criminal violation askingfor a seizure by the Public Prosecutor and the Guardia di Finanza (ItalianRevenue Police).

The Service Regulation defines the procedure, the costs, the scope of theinterventions and decisions. The decisions are based on EC laws and onEC case law.

The injured party (exhibitors and non exhibitors) should hold IP rightsvalid in Italy (trademarks, registered designs or patents for instance,including copyrights and unfair competition issues) to file a complaintgiving all the pieces of evidence required. The injured party can file orally acomplaint during the length of the fair, and the delegates of the Servicewill formalise such request in a Verbal Proceeding verifying the identity ofthe requesting person and the existence of the IP rights invoked (throughIP databases and the analysis of the evidence provided).

As soon as the injured party has filed a complaint, after a prima facieevaluation of the existence and the validity in Italy of the IP right invoked,a delegation of the Service (2 persons, at least) accompanied by thecomplainant move to the booth of the defendant for the inspection. Thedelegation of the Service presents the case to the person in charge of thebooth, takes note of the defendant's arguments and upon identification bythe complainant, takes pictures of the items contested, without takingaway from the booth any item.

Such an activity is formalised in a Verbal Proceeding that includes picturesand any declaration of the claimant and the defendant, signed by the twodelegates and by the defendant and issued in 3 copies (1 for thedefendant, 1 for the claimant and 1 for the Service).

Just after the execution of such inspection (called Protective Service) theClaimant after discussed the evidence collected with the delegates mayinvite the defendant to remove the items contested by the exhibition. Ifthe defendant will refuse to do that, then the Claimant may ask theIntervention Service, in order to obtain the compulsory removal of thecontested items.

In this case, a hearing is fixed in the afternoon of the same day betweenthe Claimant and the Defendant before 3 Senior Experts appointedspecifically for the case and with respect to conflict of interest andspecialisation. Both parties may be assisted by their own lawyers if any.

The panel of the 3 Senior Experts examines the complaint based on the IPrights and the contested objects in its plenary meeting. The panel rendersits decision within 1 hour from the end of the hearing and the decision ismade in writing and delivered to the parties with immediate effect.

If an infringement is recognised by the panel, the defendant is invited toremove the contested item immediately from the exhibition.

In case of refusal to execute the order, the continuation of the infringe-ment will be considered relevant by the criminal point of view (objectiveinfringement assessed by the Experts and consciousness by thedefendant) and justify an immediate seizure by the Criminal Police,usually in force at the premises of the trade fair.

The Service is composed of the following delegates:- 1 Coordinator of the Service- 8 Italian IP lawyers appointed (covering by turn of 4 all the days of

the exhibition)- 4 Italian SENIOR Expert Patent Attorneys appointed in case of

arbitration panel- 4 Italian SENIOR Expert Lawyers appointed in case of arbitration

panel

2.3.3 DOCUMENTS


2.3.3.1.1 CIVILItalian IP Code

Art. 120 - JurisdictionArt. 124 - Measures and sanctionsArt. 125 - Damage assessment and evaluationArt. 126 - Publication of the decision

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Art. 128 - Description orderArt. 129 - SeizureArt. 130 - General provisionsArt. 131 - Injunction

2.3.3.1.2 CRIMINALItalian IP Code

Art. 127 - Criminal enforcement and administrative sanctions

Criminal Code

Art. 473 - Infringement of any IP rightArt. 474 - Introduction into Italian territory of any infringing IP right


Case law on intervention at trade fairs basically refers to cases ofdescription orders before the IP specialised Courts (first instance level) inrelation to the right to inspect the exhibition booth of the allegedinfringer in order to file a complaint.

In this regard, the following may be cited: Court of Milan, 23 April 2004case Perspexlandia s.r.1. v. Adreani Bijoux s.n.c. and Adreani Fiorella andPamela, Judge De Sapia affirmed that “It is not iIlegal to activate the Serviceof Information and Protection of the IP rights provided by Fiera MilanoInternational”. Accordingly, the evidence collected through the MACEF“Service” was full legally valid and usable for other further proceedingsbefore the normal jurisdiction. Such a decision confirms the completelegal validity of the evidence collected through alternative systems attrade fairs.

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2.4 SPAIN


RULESIn Spain the enforcement of IP rights can be managed from a civil and acriminal point of view. Additionally, administrative law can also be usedin relation to customs seizures.

2.4.1.1CIVIL

Civil enforcement is dealt with through specialised mercantile courts(with jurisdiction in IP matters) located in the provincial capitals ofSpanish territory.

The usual practice for IP enforcement involves two possible actions thatcan be also combined:

a)ordinary action (on the merit)b)interim procedures (evidence collection tools, seizures and injunctions).

The ordinary action is usually started only when all the pieces of evidenceare already available and there is no matter of urgency. The aim of theordinary action is to obtain a declaratory statement by the Courtassessing the infringement, ordering the definitive interruption of theinfringing activities and to assign damages in favour of the plaintiff

In Spain, ordinary proceedings usually last 1-2 years at the first instance,and another 1-2 years for the appeal, if filed.

In addition, civil legislation provides the right holder with the possibilityof requesting from the Court i) interim injunctions, as well as ii)preliminary proceedings and proceedings for the verification of facts.

Interim injunctions are aimed at obtaining a judicial order prohibiting,inter alia, the exhibition or offer for sale of specific potentially infringingproducts. Thus, the right holder may ask the Court in advance to prohibita particular product from being exhibited at a trade fair.

On the other hand, Preliminary Proceedings (“Diligencias Preliminares”)are a preliminary procedure prior to the main proceedings in which theplaintiff simply requests that the defendants provide certain information.

Law 19/2006 introduced a new “diligencia” consisting of allowing accessto financial, commercial, banking and Customs-related documents thatare controlled by the alleged offender of the IP rights on a commercialscale.

Therefore, Preliminary Proceedings may be initiated against a potentialdefendant whose intention is to exhibit a particular product at a trade fair.In addition, the Patent Act (also applicable to trademark and industrialdesign cases) provides for special Proceedings for the Verification of Facts.

The Proceedings for the Verification of Facts consist of the Judge physicallyvisiting the identified premises (for example, a trade fair) to determinewhether the machinery, devices, samples, products or facilities inspectedcould serve to carry out the alleged IP infringement.

Alternatively to any judicial action, right-holders may also request thepresence of a Notary Public to officially certify that a particular producthas been exhibited at a trade fair. The right-holder may ask the NotaryPublic to visit the trade fair and certify the facts and information beingshown at the trade fair. A Notary Public's Certificate may be used asevidence in future judicial actions.

2.4.1.2 CRIMINAL

There are only a few provisions relating to criminal enforcement:

- art. 273-277 of the Criminal Code (ex officio)- the Spanish Criminal Procedure Act provides with the legal measure for

the retention, gathering of evidence or even the destruction of thegoods seized.

In both kinds of provisions, two elements are essentially required:

i)clear objective infringementii)awareness of infringing a third-party IP right (mens rea)

The usual practice of IP criminal enforcement also involves two possibleactions, frequently combined:

a) the ordinary actionb) evidence gathering procedures or preliminary seizures, in order to

ensure the gathering of evidence or the ceasing of the infringement.These measures may include the destruction of the goods seized,although some samples should be kept for further investigations, ifrequired.

The aim of the ordinary action is to condemn and punish those whoconsciously infringe an IP right. The duration of an ordinary action isabout 2 years.

In the majority of cases, however, a criminal case starts with theapplication for an evidence-gathering procedure asking for a seizure of one

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sample of the product for evidence purposes. Where the infringement isso evident that it does not require any specific technical support (ingeneral, for trademarks and designs), then is possible to proceed with apreliminary seizure.

Usually such measures are adopted ex parte, within a very limited timeframe, and should be confirmed by the Public Prosecutor if adopted exofficio by the police.

The criminal measures may be also enforced at trade fairs. The real limit ofthe criminal enforcement is that limited to clear-cut cases of “copies”.Cases of likelihood of confusion or of non-confusing similarity arenormally proposed only via the civil procedure.


Regulations on Customs, such as Council Regulation (EC) No. 1383/2003of 22 July 2003 (concerning customs actions against goods suspected ofinfringing certain IPRs and the measures to be taken against goods foundto have infringed such rights) may also be used for the retaining orsuspension of the release of goods to be shown at a trade fair or Expo. IPright-holders may use the proceedings provided in Council Regulation1383/2003 to retain and suspend the release of potentially infringinggoods trying to enter Spain to be exhibited at a trade fair.

2.4.2 SPECIFIC ENFORCEMENT ALTERNATIVES FOR

TRADE FAIRSThere are no specific provisions regarding any intervention in IP enforce-ment during trade fairs. The law merely provides, in general, thatinterventions may be requested and granted should they comply with thelegal requirements provided in the Civil Procedure Act and the relevantregulation (Patent, Trademark, Design or Copyright law), as well as theCriminal Procedure Act and the Criminal Code, should this be the case.

2.4.3 DOCUMENTS


2.4.3.1.1 CIVIL- Civil Procedure Act (Ley 1/2000, de 7 de enero, de Enjuiciamiento Civil)- Trademark Act (Ley 17/2001, de 7 de diciembre, de Marcas)- Patents and Utility Models Act (Ley 11/1986, de 20 de marzo, de

Patentes de Invencioen y Modelos de utilidad)- Protection of the Industrial Design Act (Ley 20/2003, de 7 de julio, de

proteccioen jurîdica del disno industrial)- Copyright Act (Real Decreto Legislativo 1/1996, de 12 de abril, por el

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que se aprueba el Texto Refundido de la Ley de Propiedad Intelectual,regularizando, aclarando y armonizando las disposiciones legalesvigentes sobre la materia)All of the above regulations were amended by Ley 19/2006, de 5 dejunio, por la que se amplicacioen los medios de tutela de los derechosde propiedad intelectual e industrial y se establecen normas procesalespara facilitar la aplicacioen de diversos reglamentos comunitarios,implementing in Spain Directive 2004/48/EC of the European Parliamentand of the Council of 29 April 2004 on the enforcement of intellectualproperty rights.

2.4.3.1.2 CRIMINAL- Criminal Procedure Act (Ley de Enjuciamiento Criminal de 14 deseptiembre de 1882)- Criminal Code (Ley Orgaenica 10/1995, de 23 de noviembre, del CdigoPenal)


Case law on intervention at Expos basically refers to interim injunctioncases before the Spanish Commercial Courts (first instance level) inrelation to the prohibition on exhibiting a product at an Expo.

In this regard, the following may be cited:- Ruling 302/2006 (interiminjunction) of Commercial Court of Barcelona no. 1, of 11 May 2006. Inthis case, the right-holder had previous information that a particularinfringing industrial design was to be exhibited at a motorcycle fair inBarcelona. Although the potentially infringing product had already beenon the market, the exhibition of such infringing design at a major fair mayhave had a significant impact on the market.

Narrowing the interim injunction application on banning the defendantfrom promoting the product at that particular trade fair, the Court upheldthe request and prohibited the exhibition of such infringing design onlyfor that particular fair, but not from other commercial activities, as theyhad already been carried out. In addition, regarding customs actions, therehave been some cases in which the right holder has prevented thepotentially infringing goods from being exhibited at a trade fair in Spain byretaining the products at customs under Council Regulation 1383/2003.

party to keep the entire inventory as it was listed. The sale and theexhibition of the contested goods listed are forbidden. Furthermore, theCourt order could also include the seizure of all documents, such asinvoices, balance sheet, credit card receipt, account books, accountingsoftware and all data regarding the production and the distribution of thecounterfeiting goods.

The judge may ask for a security (bank guarantee, usually between CHF10,000.- to CHF 100,000.) to insure possible damages suffered by theadverse party in case the interlocutory injunction is pronounced "ex parte"but not confirmed by the court after hearing the adverse party.

After the interlocutory injunction is pronounced, the Court will hear in avery short time the adverse party, which will be authorized to present itsdefence. The Court will confirm or not its interlocutory injunction. If suchinterlocutory injunction is confirmed, it should be followed by a procedureon the merits.

2.5.1.2 CRIMINAL

Each IP Law provides criminal provisions (see paragraph 3.4.3.1) withoutmentioning the provision of the Criminal Swiss Code specifically related toIP infringements.

In case of IP infringement (depending on the degree), the accused may befined and/or sentenced to up to three days imprisonment until five years,if he acted on a professional basis. In such case, he is prosecuted “exofficio”. Otherwise, the right owner has to file a complaint in front of thecompetent authority usually at the District Attorney's Office or at thePolice Department Office, where the infringement takes place or where theresult of the infringement occurred.

The Swiss criminal provisions also foresee the seizure and the destructionof the counterfeiting goods.

The accused can only be sentenced if the prosecutor can demonstrate thathe acted with the consciousness and the intention to infringe the thirdparty IP right.

The criminal measures may be enforced also at the trade fair.


TRADE FAIRS

2.5.2.1 GENERAL COMMENTS

The exhibition organisers (management of the fair) and the exhibitors mayagree that any IP infringement during the fair should exclusively be

2.5 SWITZERLAND


RULESIn Switzerland, the enforcement of IP rights can be organised through civiland criminal actions. There are no specific provisions regarding theenforcement of IP rights during exhibitions. Therefore, all the legal meansforeseen by the IP Swiss Laws and by the Criminal Swiss Code as well asby certain General Provisions can be used by the right holder (seeparagraph 3.4.3.1).

During exhibitions, all means of action (civil and criminal measures, seethe aforesaid articles) are at the disposal of the right holders without anylimitation. However, since the infringement of the IP rights is limited tothe length of the exhibition, the interlocutory injunctions, foreseen in theaforesaid laws, are the most effective ways to enforce the IP rights. TheCriminal provisions can be used only if the intention of the counterfeitercan be ascertained.

2.5.1.1 CIVIL

Interlocutory Injunction

The injured party can file an interlocutory injunction at the Court of theCanton where the exhibition is located (Switzerland is divided into 26Cantons with 26 different codes of civil procedure).

As the procedure is different from a Canton to another, it is impossible todescribe precisely the sequence of such interlocutory injunction.Nevertheless such procedure can be summarized as follows:

The request for the interlocutory injunction should be addressed to theHigh Court of the Canton (usually the second degree of jurisdiction of theCanton). In its request, the injured party has to give all evidences todemonstrate its IP rights, a serious likelihood of a violation of its IP rights,an urgency to get an immediate measure and to stop any furtherdamages. Furthermore, the request shall be granted "ex parte" to avoid therisk the adverse party removes or destroys evidences including counter-feited products. This procedure allows the Court to give an interlocutoryinjunction which forbids the adverse party to infringe the IP rights andwhich forces it to withdraw all products infringing the IP rights proposedat the exhibition. The decision is taken without any delay and withouthearing the adverse party (ex parte interlocutory injunction).

Either the court decides to seize any products infringing the IP rights or tohave an inventory of such products, with the obligation for the adverse

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submitted to an arbitration commission set up by the management bodyof the fair.

The organisation and the functioning of the arbitral commission aredetermined by the parties as any contractual relationship. The procedureis also set by the parties. The parties elect the Swiss law (the aforesaidFederal laws) and the sentence shall have only validity during the lengthand within area of the fair.

The private solution to designate an arbitration commission regarding IPrights is widely accepted in Switzerland and has not been contested byany Courts or any legal writings.

To our knowledge, only one exhibition in Switzerland has set up anarbitration commission to resolve the IP litigation, described below.

2.5.2.2 EXAMPLE OF THE PANEL DURING BASELWORLD

Since 1985, the Watch and Jewellery Show Baselworld has set up anarbitration commission called “the Panel”. Since the exhibitors haverecognised the Panel's authority by signing the exhibitor contract with themanagement of the fair, exhibitors have to submit any case regarding IPinfringement by an other exhibitor (the defendant) to the Panel. Thedefendant has also the obligation to accept the Panel's decisions.However, a non-exhibitor, as it did not sign any exhibitor contract withthe management of the fair, can choose either the competent Court of theCanton of Basel or the Panel, as the exhibitor is committed to accept thejurisdiction of the Panel.

This Panel has its private regulation (see the enclosure) which defines theprocedure, the costs, the scope of the decision and the appeal. Thedecisions are based on the Swiss laws and on the Swiss case law. For allquestions of procedure, the local Cantonal Basel-City Civil procedure lawis applicable subsidiarily.

1. The injured party should hold IP rights valid in Switzerland(trademarks, designs or patents for instance) to file a complaint (copy ofthe registration certificate is sufficient). The injured party can file orally acomplaint during the length of the fair.

2. As soon as the exhibitor or the non exhibitor has filed a complaint, adelegation of the Panel (2 persons) accompanied by the complainantmove to the booth of the defendant for the inspection. The delegation ofthe Panel presents the case to the person in charge of the booth, takesnote of the defendant's arguments and upon identification by thecomplainant, takes away for closer inspection in the frame of its plenarymeeting several items of the contested object.

3. The same day, the Panel examines the complaint and renders itsdecision and develops its conclusions.

4. The decision is notified to the parties on the following day. If aninfringement is recognized by the Panel, the defendant is invited to signan undertaking in which it commits itself not to sell, to exhibit or topromote the contested objects during the length of the fair. The losingparty has to support the administrative costs. The contested objects,which were taken away by the delegation, are handed back to thedefendant.

The Panel is composed of 7 members:

- 1 Chairman, a lawyer of Swiss nationality- 2 other lawyers of Swiss nationality- 1 patent lawyer practising in Switzerland- 2 experts of non Swiss nationality, with special knowledge of the

watch industry- 1expert of non-Swiss nationality, with special knowledge of the

jewellery sector

The defendant can provide any arguments during the Panel inspection orbefore the Panel begins its plenary meeting. After the notification of thePanel decision, the defendant can appeal the Panel decision by providingnew elements during the length of the fair.

2.5.2.3 EFFECTIVENESS OF THE PANEL PROCEDURE

The effectiveness of the Panel has been established through its 24 years ofexistence:

As the whole watch and jewellery industry is concentrated in Basel forone week, right holders can check their competitors and intervene againstany infringement of their IP rights without risking all the usual problemsrelated to obtaining a Court order from the Tribunal.

It is a very useful tool to enforce IP rights, quite inexpensive for rightholders. The Panel takes its decisions in 24 hours. The fees of theprocedure are around =C 1,200. There are 35 to 50 complaints each year,meaning from beginning of the Panel a law practice consisting in morethan 800 cases.

2.5.2.4 SCOPE OF THE DECISIONS OF THE PANEL

Since the Panel decision is limited to the length of the fair, if it wishes, theright holder can enforce its IP rights "outside" the fair. It may settle thecase by an amicable agreement which shall apply worldwide, or it may

rights of privacy, for instance the rights on the family name, the right ofpublicity or the right of image, while the protection for the trade name isgranted by the Swiss Obligations Code (article 956 CO).

Article 155 of the Swiss Criminal Code regarding the manufacture, theimportation and the distribution of counterfeiting goods deceiving theconsumers or/and the competitors.


As the Panel decision is a decisive element in the file, most of the timethe parties will find an extrajudicial agreement after the show. However,in few cases, the right holder may be obliged to file a civil action in frontof the Civil Court of the Canton of Basel to enforce its rights outside thefair.

For instance, in a recent case (ATF 130 III 636 dated July 13, 2004), theSwiss Federal High Court confirmed the decision of the Panel. All theanalyses and comments of the Panel have been taken into considerationby the High Court. Of course, the Swiss Federal High Court was notbound by the Panel decision and freely examined the case.

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proceed at the Basel- Court, as according to the Swiss Federal Law on theJurisdictions, the place of the infringement of IP rights determines thejurisdiction of the Court (forum).

In this perspective, the decision of the Panel could be provided asevidence that the contested objects were indeed exhibited during the fairand as a presumption of an IP's infringement.

A decision of the Panel, which recognizes the IP infringement, is animportant element in the file. On the contrary, if the Panel does notconfirm the IP infringement, it could be detrimental to the right owner asthe adverse party will not fail to produce the Panel decision during thecivil proceeding, especially considering that such decision has beenrendered by expert in IP rights.

2.5.3 DOCUMENTS


Federal Law on Copyright and Neighbouring Rights

Civil action: Articles 61 to 66Criminal action: Articles 67 to 73

Federal Law on the Protection of Trademarks and Indications of Source


Federal Law on Designs


Federal Law on Patents for Inventions

Civil action: Articles 66 to 71 and 72 to 80Criminal action: Articles 66 to 71 and 81 to 86

Federal Law against Unfair Competition

Civil action: Articles 9, 12 to 14Criminal action: Articles 23 to 27

General Provisions

Furthermore, the Swiss Civil Code (articles 28 and 29 CC) protects the


2.6 THE NETHERLANDS


RULESIn the Netherlands there are no specific rules for IPR enforcement duringtrade fairs. No distinction is made as to where the measures are applied.For IP enforcement during trade fairs the general rules for enforcement ofIP rights are applicable.

As a rule, IP rights are enforced by right holders themselves, i.e. by civilenforcement. Criminal and administrative enforcement are possible aswell. However, only in very exceptional situations IP enforcement basedon criminal and administrative regulations occurs.

In the Netherlands, most proceedings regarding patents are exclusivelyheld before the District Court and Court of Appeal in The Hague. TheseCourts have a number of judges with extensive experience in IP law andwith considerable technical knowledge.

2.6.1.1 CIVIL

The general rules allow for enforcement by (preliminary) injunctions,seizures of infringing products or by measures for preserving evidence(samples, documents and the like). The fact that the enforcement takesplace at a trade fair does not affect the applicability of the general rules.

2.6.1.1.1 INTER PARTES PRELIMINARY INJUNCTIONIn preliminary injunction proceedings, a Court may grant provisionalmeasures in urgent matters. IP infringement is normally consideredurgent. Summary proceedings usually only consist of a writ of summonsand an oral hearing. The plaintiff will request the Court to set a date forthe oral hearing before serving a writ of summons upon the defendant.The date for the oral hearing is usually scheduled between 2 and 4 weeksafter service of the writ.

The defendant may file a statement of answer (but is not obliged to do so)and each party may file exhibits as they like, provided that the rules of dueprocess are observed, meaning that a party must have a “reasonableopportunity” to respond to the other party’s exhibits.

The oral hearing, which can be rather informal, is presided by a singlejudge. Both parties get an opportunity to plead their case and often thejudge will ask the parties to clarify any issues unclear to him. Usually, adecision is rendered 2 to four weeks later.

The chance that an IP right owner obtains injunctive relief is high when

infringement can not reasonably be denied, unless the alleged infringercan demonstrate that there is a serious, not to be neglected chance that aCourt deciding on the merits will rule otherwise, for instance will rulethat a patent or trade mark is invalid. It is up to the defendant to providethese invalidity arguments. A judge in summary proceedings can only givea preliminary assessment, which is not binding to the Court in subse-quent proceedings on the merits. A decision in summary proceedingslapses if the plaintiff does not initiate proceedings on the merits within acertain term, usually one to six months after passing the summaryjudgment.

When the injunctive relief decision is overruled at a later stage, in appealor in proceedings on the merits, and has been enforced in the meantime,the defendant is entitled to compensation of damages from the claimant,which have to be claimed in separate damage proceedings.

2.6.1.1.2 EX PARTE PRELIMINARY INJUNCTIONThe IP right owner can also file a request for an ex parte injunction, i.e.the defendant will not be heard on the request. Ex parte injunctive relief isavailable in pressing matters, in particular if the IP right owner willotherwise suffer “irreparable damage”. The relief is temporary. It lapses ifthe plaintiff does not initiate proceedings on the merits within a certainperiod as determined by the Court in the grant of the request.

For ex parte injunctive relief, the IP right owner must file a request withthe District Court. In the request he must explain why the other party isinfringing or threatens to do so. If the claim appears prima facie valid tothe Court and the “pressing matter” requirement is considered to be met,the Court will grant the request, generally on the same day or the dayafter it was filed.

The defendant can request a revision of the ex parte decision in summaryproceedings. In general it will take a couple of days or more to obtain adate for a hearing of the case in Court. In recent ex parte decisions, theCourt has often reserved a date for a hearing on the revision onbeforehand, should the party against whom the preliminary injunctionhas been granted wish to request such a revision.

As is the case with an injunction granted after inter partes proceedings,when the ex parte injunctive relief decision is overruled at a later point intime and has been enforced in the meantime, the defendant is entitled tocompensation of damages.

Proceedings on the merits

As stated above, preliminary injunctive proceedings are to be followed by

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regular proceedings on the merits to prevent the lapse of a preliminarymeasure. Regular proceedings on the merits are the most extensive legalprocedures. They can also be initiated without prior preliminaryproceedings.

In general, regular proceedings can take up to about one year before a first(interim) decision is rendered. For patent proceedings it is possible to fileso called “accelerated proceedings on the merits”. In acceleratedproceedings a first (interim) decision is rendered in less than a year.

2.6.1.1.3 CIVIL SEIZURE OF GOODSThe IP right owner can seize allegedly infringing goods wherever they arein the Netherlands. He must file a request with the District Court,asserting that the products at issue infringe the owner’s rights. The Courtwill in principle grant a request for seizure on the presumption that the IPright owner’s allegation is correct. The allegedly infringing party will notbe heard.

The seized goods will have to remain where they are, or will be kept by athird party (often a bailiff). The allegedly infringing party can at any timerequest the Court in summary proceedings to lift the seizure. The seizureis lifted if the alleged infringer can show that it does not infringe or thatthere is likelihood that the IP right at issue is invalid.

The Court which grants the seizure will set a term (usually 15 to 30 daysfor foreign companies), starting on the day of the first attachment by thebailiff, within which the IP right owner is to start infringementproceedings. If proceedings are not started in time, the seizure will belifted automatically.

2.6.1.1.4 PRESERVATION OF EVIDENCEIf there is evidence available to reasonably support an infringement claim,the Court may order provisional measures to preserve relevant evidence,such as the description of a process or (samples of) infringing goods. Inthe context of infringement proceedings, the Court may also order thatinformation on the origin and distribution networks of the goods isprovided to a bailiff.

The confidentiality of the seized evidence must be guaranteed, therequesting party does not get access to it. Separate proceedings have tobe initiated in order to obtain access to any information thus preserved.

2.6.1.2 CRIMINAL

The Dutch Penal Code and the separate IP Acts contain provisions thatmake infringement of IP rights punishable as a criminal offence. Enforce-ment of the criminal provisions regarding IP rights however, is very

uncommon.


The most important administrative measure regarding IP enforcement isthe seizure of goods by the customs authorities. This measure can betaken with respect to any infringing products brought into theNetherlands, also against products that are intended to be shown at tradefairs.

Regulation 1383/2003/EC sets out the conditions for action by thecustoms authorities against products suspected to infringe uponintellectual property rights a.o. when they enter the European Union. ThisRegulation has been implemented in all European countries (MemberStates) and thus also in the Netherlands. In the event of infringement theaction can only be taken against products suspected of infringement of IPrights valid in the Member State where the application for customs actionis made. This means that the Dutch customs can only take action againstproducts suspected to infringe an IPR valid in the Netherlands.

The main requirements for applying for a customs action are thesubmission by the applicant (the IP right owner) of a description of thealleged infringing products of sufficient detail in order to make it possiblefor the authorities to identify the goods when they are submitted forclearance by customs. The authorities do not check whether the rightsinvoked by the applicant are valid or whether these rights are actuallyinfringed.

When customs authorities discover products according to the descriptionthey will suspend the release thereof. Customs shall then inform theapplicant and the declarant of the products of the suspension. Theapplicant gets the opportunity to inspect the products.

The law of the Member State where the suspension took place determineswhether an IP right has been infringed.

Unless the applicant and the declarant or the owner of the products agreethat these may be destroyed, the applicant must inform the customsauthorities within a period of 10 working days of receipt of the notifica-tion of suspension that infringement proceedings have been initiated. Thisperiod may be extended by another 10 working days. If such notificationis not received the suspension will be terminated.

In general, an IP right owner in the Netherlands will make use of thepossibility under Dutch procedural law to request a civil seizure of thealleged infringing products before the above described period of 10-20working days has expired.

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2.6.2 ALTERNATIVE MEASURES

Trade fair organisations do not offer alternative measures for IP

enforcement. There is no legislation or case law prohibiting alternativemeasures.

2.6.2.1 CURRENT PRACTICE

IP enforcement at trade fairs is often chosen because in some cases this isthe first occasion an infringing product is presented to the public. Thepublic relations efforts surrounding trade fairs can bring infringingactivities to the attention not only of the public, but also of the rightholder. Furthermore, trade fairs allow for easy access to products offoreign parties, whose activities normally do not take place in theNetherlands. Finally, a seizure at a public venue like a trade fair can haveconsiderable PR value for the right holder.

2.6.2.2 CONSEQUENCES OF IP ENFORCEMENT

It is again pointed out that in the Netherlands there are no specific rulesfor IPR enforcement during trade fairs. Virtually all enforcement is done bythe right holders themselves and no (further) intervention by authoritiesis required.

On the basis of the general rules, a defendant can object to the measuresrequested by the right owner and can request a review of the decisionallowing the measures. In view of the urgency that is usually present incases of IP enforcement, such a request will be dealt with quickly by asummary proceedings judge. A decision can be obtained within days, andsooner if necessary.

2.6.3 DOCUMENTS


Civil

Preliminary proceedings: Art. 254 ff. Rv (Code of Civil Procedure)

Civil seizure: Art. 700 ff. Rv

IP enforcement: Art. 1019 ff. RvArt. 26 ff. AW (Copyright Act)

Art. 13 ff. WNR (Neighbouring Rights Act)

Art. 2.19 ff. BVIE (Benelux Treaty on Intellectual Property)Art. 70 ff. ROW 1995 (Patent Act)

Art. 6 Hnw (Trade Names Act)

Criminal

Art. 326b, 337 WvS (Penal Code)

Art. 30b, 31 - 36b AW (Copyright Act)

Art. 21 - 30 WNR (Neighbouring Rights Act)Art. 79 ROW 1995 (Patent Act)

Art. 7 Hnw (Trade Names Act)

Administrative

Regulation 1383/2003/EC

2.6.3.2 RELEVANT COURT DECISIONSFor IP enforcement measures in the Netherlands no distinction is made asto where the measures are applied. As noted above, no specific rules existthat cover trade fair situations. Consequently, there is no case law onlegal issues connected with enforcement at trade fairs, although the factthat enforcement took place at a certain venue might be mentioned in therepresentation of the factual circumstances of a case.

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LIST OF ACRONYMS

ATF Recueil des Arréts du Tribunal Fédéral Suisse (Official Collection of the Decisions of the Federal Tribunal of Switzerland)

BGB Buergerliches Gestzbuch (German Civil Code)

BVIE Benelux Verdrag inzake de Intellectuele Eigendom (Benelux Convention on IP)

CHF Swiss Franc

CC Swiss Civil Code

CDPA Copyright, Designs and Patents Act of the United Kingdom (of 1988)

EU European Union

EC European Community

GRUR Gewerblicher Rechtsschutz und Urheberrecht (German sociery on industrial property rights and copyrights)

IP Intellectual Property

IPR Intellectual Property Rights

MACEF Milan International Home Show

NJW Neue Juristische Wochenschrift

NJWE NJW-Entscheidungsdienst

NEC National Exhibition Centre

PR Property Rights

NJW-RR Neue Juristische Wochenschrift - Rechtsprechungs-Report (German Law Journal - Report on Jurisprudence)

TRIPS Trade-Related Aspects of Intellectual Property Rights

UFI Union des Foires Internationales (Global Association of the Exhibition Industry)

UK United Kingdom

UWG Gesetz Gegen Unlauteren Wettbewerb (Unfair Competition Act of Germany)

WTO World Trade Organisation

WNR Wet Naburige Rechten (Neighbouring Rights Act of the Netherlands)

WIPO World Intellectual Property Organisation

ZPO Zivilprozessordnung (German Code of Civil Procedures)31

How to protect your Intellectual Property at Trade Fairs=Experience and practice in EuropeN

OTES

This publication is prepared under the EU-China Project on the Protection of Intellectual Property Rights (IPR2) and aims to

inform industry on how to protect its intellectual property in the context of trade fairs. For other publications and information

visit www.ipr2.org or contact IPR2 ([email protected]).

IPR2 is a partnership project between the EU and the People�s Republic of China on the protection of intellectual property

rights in China. This is done by providing technical support to, and building the capacity of the Chinese legislative, judicial and

administrative authorities in administering and enforcing intellectual property rights; improving access to information for users

and officials; as well as reinforcing support to right holders. IPR2 targets the reliability, efficiency and accessibility of the IP

protection system, aiming at establishing a sustainable environment for effective IPR enforcement in China.

The European Patent Office (EPO) is the European implementingorganisation for IPR2, with the support of the EPO Member States inspecific fields and the Office for the Harmonisation of the InternalMarket (OHIM) on trademark and design.www.epo.orgwww.oami.europa.eu

The Department of Treaty and Law of the Ministry of Commerce(MOFCOM) is the IPR2 Chinese implementing organisation.www.mofcom.gov.cn

This publication has been produced with the assistance of the European Union.