The unauthorized copying and marketing of a registered utility model or design constitutes an infringement of industrial property rights that causes the right holder both material and moral harm. When a right holder faces this type of infringement, following a specific order and procedure when resorting to legal remedies is of great importance for the effective and swift protection of the right. This article outlines, within the framework of Law No. 6769 on Industrial Property (the “IP Law”) and Law No. 6100 on Civil Procedure (“CPL”), the steps that may be taken, in order, regarding requests for evidence discovery and interim injunctions when such an infringement is encountered.
Step One: Determining the Competent and Authorized Court
The first step in the legal process is correctly determining in which court the case should be filed. Under Article 156 of the IP Law, the competent court for cases arising from infringement of utility model and design rights is the Civil Court for Intellectual and Industrial Property Rights; in places where no such court exists, this jurisdiction is exercised by the relevant Civil Court of First Instance. As for territorial jurisdiction, the right holder may file suit either at the court of their own place of residence or at the court of the place where the infringing act was committed or where its effects were observed. In practice, the court in the location of the infringing manufacturer is most often preferred, as this facilitates both the evidence discovery process and the actual enforcement of any injunction that may be granted at that location.
Step Two: Gathering Evidence and Requesting Evidence Discovery
Once the competent and authorized court has been determined, the evidence establishing the infringement must be gathered. In many cases, however, there is a risk that the opposing party will destroy evidence or conceal the infringing products if notified in advance. To address this risk, Article 403 of the CPL allows evidence discovery to be requested without prior notice to the opposing party, provided there is a legal interest and any delay would cause harm. In practice, this method is also referred to as “raid-style evidence discovery.”
At this stage, in addition to the right holder’s registration certificate, any expert reports obtained in a prior dispute may also carry significant weight. An expert report from an earlier case against a different infringer, containing a finding of “exact imitation,” may not constitute conclusive evidence in a new infringement matter, but it can serve as a persuasive precedent and discretionary evidence that helps the court form its assessment at the next step — particularly where the newly identified product is technically identical or similar to the one at issue in the prior dispute.
Step Three: Requesting an Interim Injunction
Together with the request for evidence discovery, a request for an interim injunction may also be raised in the same petition, and it is generally advisable to submit these two requests simultaneously. Articles 159 of the IP Law and 389-393 of the CPL allow for an interim injunction to be granted in cases of infringement of industrial property rights in order to ensure the effectiveness of the eventual judgment.
Full proof is not required for an interim injunction to be granted; it is sufficient for the judge to form a conviction that the claim is highly likely to be true — that is, that the “prima facie evidence” standard has been met. For this reason, the evidence gathered in Step Two, together with any expert report carried over from a prior dispute, directly affects the likelihood that the interim injunction request in Step Three will be granted.
Step Four: Requesting the Seizure of Goods and Production Equipment
As part of the interim injunction request, under Articles 149 and 159 of the IP Law, the court may be asked to order the seizure, from the places where they are produced, sold, or found, of the products constituting the infringement, and their custody under judicial safekeeping. This request is not limited to finished products alone; it may also extend to the seizure of molds, machinery, and equipment used exclusively in the production of the infringing product.
An important matter to be observed at this stage is the “principle of proportionality.” The scope of the requested measure must be determined in a manner that does not prevent the production of the defendant’s other, non-infringing products, and must remain proportionate. For this reason, clearly and concretely specifying in the petition which tools and equipment are used exclusively in the production of the infringing product facilitates the acceptance of the request. It is also necessary to assess in advance whether the targeted products were placed on the market with the right holder’s own consent — that is, whether there is an issue under the “principle of exhaustion of rights” — since no renewed claim of infringement can be made in respect of products that entered the market with the right holder’s consent.
Step Five: Providing Security
When granting an interim injunction, the court requires the right holder to provide cash security or an unconditional bank letter of guarantee, in order to secure any potential damages the opposing party may suffer as a result of the injunction. The amount of security varies according to the specifics of the case and the discretion of the court. Under Article 159/2 of the IP Law, where the merits of the claim are clearly established (for example, where a strong expert report obtained in Step Two is available), it is also possible to request a reduction in the security amount or an exemption from this requirement.
Step Six: Having the Interim Injunction Enforced Within One Week
Obtaining an interim injunction decision from the court is not sufficient on its own; the decision must actually be enforced. Under Article 393/1 of the CPL, an application must be made to the competent enforcement office for enforcement of the decision within one week of the date the interim injunction was granted. Failure to request enforcement within this period results in the automatic lapse of the injunction. For this reason, once security has been provided in Step Five, the enforcement process in Step Six must be carried out through the enforcement office without delay.
Conclusion
The path available to a right holder in the event of infringement of utility model and design rights is not a single act but an integrated process comprising, in order, the determination of the competent and authorized court, evidence discovery, the interim injunction, the provision of security, and enforcement. Failure to properly and timely complete any of these stages may result in the lapse of the injunction and in the right not being effectively protected. For this reason, it is of great importance for a right holder facing such an infringement to follow the steps outlined above without delay and as an integrated whole. Once the evidence discovery and interim injunction decisions have been properly obtained and enforced, the right holder may, if they so wish, separately bring the underlying actions — including actions for the prevention of the infringement and the removal of its material consequences, as well as claims for material and moral damages.
This article is intended for general informational purposes. For legal advice specific to your situation, please consult a qualified lawyer.
