Comparative Global Overview of Preliminary Relief - International Trademark Association

With the evolution of markets, technology, globalization, and awareness of the value of intellectual property (IP), trademark owners need to file infringement actions to defend their rights. For this, preliminary injunctions are a valuable tool for trademark owners. However, obtaining them is not a streamlined process. To help trademark owners and practitioners gain an overview of the interim measures available in various jurisdictions, the Judicial Administration and Trademark Litigation (JATL) Subcommittee of INTA’s Enforcement Committee engaged in a three-year research project looking at the availability of and requirements for preliminary injunctions in trademark infringement proceedings.

As a first step, the JATL identified the main questions for determining whether or not interim relief is an effective enforcement method of trademark rights. It then examined the level of harmonization of regulations on preliminary injunctions in many countries of the world. Finally, it identified countries where INTA might be able to offer support by making adjustments to the mechanisms currently in place so they are aligned with global standards. The document highlighting the advocacy points has been presented to INTA and is currently going through a policy vetting process internally.

The JATL conducted surveys in all 27 European Union countries and about 20 non-EU countries from different parts of the world: Argentina, Australia, Brazil, Canada, Chile, China, Hong Kong, India, Japan, Mexico, Nigeria, Norway, Russia, Singapore, South Africa, South Korea, Switzerland, Turkey, and the United States.

The Enforcement Directive (2004/48/EC), which was created 15 years ago, provided a similar enforcement framework of IP rights within the EU with regards to preliminary injunctions. However, the JATL survey showed that there are still certain aspects that would benefit from further harmonization.

When it comes to the surveyed non-EU countries, the regulatory landscape governing preliminary injunctions is diverse with a moderate level of harmonization. Even though it is possible to obtain preliminary or interim injunctions in most countries, the requirements, conditions, costs, and procedures vary significantly. This makes it difficult for trademark owners to predict the outcome of injunctive proceedings and therefore ensure the effective enforcement of their rights.

The survey contained several questions and subtopics. The main questions were:

Do the laws of your country provide for preliminary injunctions or similar provisional reliefs in the context of trademark infringement? If so, is there a realistic chance to obtain such a relief in practice?
Are preliminary injunctions granted ex parte?
What is the level of evidence required to establish an IP right infringement before a preliminary injunction is granted?
Is there a requirement for “urgency,” that is, a deadline to file a preliminary injunction subsequently to the trademark owner learning about the infringement and the defendant?
Does a security deposit have to be made?
Do the laws of your country provide for seizure of goods suspected of infringing a trademark to prevent the entry of those goods into commerce?
Is it mandatory to file the main action once the preliminary injunction has been granted?
Does your jurisdiction provide for damages in case a preliminary injunction is later lifted as a result of an appeal or if the main action is refused?
What are the average costs and how long do the proceedings take?

The full survey results can be accessed here.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.