® GCRGLOBAL COMPETITION REVIEW Intellectual Property & Antitrust in 24 jurisdictions worldwide Contributing editor: Susan M Hutton 2012 Published by Getting The Deal Through in association with: Adams & Adams Albagli Zaliasnik Attorneys Anderson Mo¯ri & Tomotsune Art de Lex Law Firm Avah Legal SC Beiten Burkhardt Cugia Cuomo & Associati Debarliev, Dameski & Kelesoska Attorneys at Law Eisenberger & Herzog Rechtsanwalts GmbH Jun He Law Offices Karniol, Małecki i Wspólnicy Spk Kellerhals Attorneys at Law Kirkland & Ellis International LLP Koury Lopes Advogados Lex Orbis Lydian Nestor Nestor Diculescu Kingston Petersen O’Melveny & Myers LLP Pantazis & Associates Roca Junyent Stikeman Elliott LLP Villaraza Cruz Marcelo & Angangco (CVCLAW) White & Case LLP Yoon & Yang LLC CONTENTS ® Intellectual Austria Dieter Thalhammer and Andreas Zellhofer Property & Eisenberger & Herzog Rechtsanwalts GmbH 3 Antitrust 2012 Belgium Annick Mottet Haugaard and Maroussia Verhulst Lydian 9 Contributing editor: Susan M Hutton Stikeman Elliott LLP Brazil Tiago Machado Cortez, Ana Carolina D’Atri and Eloy Rizzo Neto Koury Lopes Advogados 14 Business development managers Allan Lee George Ingledew Canada Susan M Hutton and Alexandra Stockwell Stikeman Elliott LLP 20 Robyn Hetherington Dan White Chile Ariela Agosin and Rodrigo Marin Albagli Zaliasnik Attorneys 30 Marketing managers China Song Huang and Janet Hui Jun He Law Offices 35 Ellie Notley Sarah Walsh Alice Hazard European Union Mark Powell and Katarzyna Czapracka White & Case LLP 40 Marketing assistants Germany Matthias W Stecher, Philipp Cotta and Sebastian Heim Beiten Burkhardt 48 William Bentley Zosia Demkowicz Greece Athanasia Braimi and Dionysios Pantazis Pantazis & Associates 54 Sarah Savage India Abhai Pandey Lex Orbis 60 Marketing manager – subscriptions Rachel Nurse Italy Fabrizio Cugia di Sant’Orsola and Silvia Giampaolo Cugia Cuomo & Associati 65 subscriptions@ gettingthedealthrough.com Japan Yusuke Nakano and Koya Uemura Anderson Mo¯ri & Tomotsune 71 Assistant editor Korea Joseph Seon Hur and Wonil Kim Yoon & Yang LLC 76 Adam Myers Macedonia Emilija Kelesoska Soljakovska and Elena Miceva Editorial assistant Lydia Gerges Debarliev, Dameski & Kelesoska Attorneys at Law 84 Senior production editor Jonathan Cowie Mexico Agustin Velázquez, Ronald Prat Celis, Victor Vila Velázquez and Tomás Arankowsky-Tamés Avah Legal SC 89 Production editor Martin Forrest Philippines Divina Gracia E Pedron Villaraza Cruz Marcelo & Angangco (CVCLAW) 95 Chief subeditor Jonathan Allen Poland Rober t Małecki, Paweł Gutowski and Jan Karol Wiegner Subeditors Karniol, Małecki i Wspólnicy Spk 102 Caroline Rawson Sarah Morgan Davet Hyland Romania Georgeta Harapcea and Delia Belciu Nestor Nestor Diculescu Kingston Petersen 108 Editor-in-chief Russia Dmitry Magonya and Anna Ruzina Art de Lex Law Firm 115 Callum Campbell South Africa Alexis S L Apostolidis Adams & Adams 121 Publisher Richard Davey Spain Pedro Callol, Anna Viladàs and Jorge Manzarbeitia Roca Junyent 126 Intellectual Property & Switzerland Thomas Bähler and Daniel Emch Kellerhals Attorneys at Law 131 Antitrust 2012 Published by United Kingdom Pierre-André Dubois, Annabel Borg and Claire Callue Law Business Research Ltd 87 Lancaster Road Kirkland & Ellis International LLP 145 London, W11 1QQ, UK Tel: +44 20 7908 1188 Fax: +44 20 7229 6910 United States Kenneth R O’Rourke and Stephen McIntyre O’Melveny & Myers LLP 152 © Law Business Research Ltd 2011 No photocopying: copyright licences do not apply. ISSN 1753-0628 The information provided in this publication is general and may not apply in a specific situation. Legal advice should always be sought before taking any legal action based on the information provided. This information is not intended to create, nor does receipt of it constitute, a lawyer–client relationship. The publishers and authors accept no responsibility for any acts or omissions contained herein. Although the information provided is accurate as of December 2011, be advised that this is a developing area. Printed and distributed by Encompass Print Solutions Tel: 0844 2480 112 Law Business Research PREFace Getting the Deal Through is delighted to publish the fully revised and updated sixth edition of Intellectual Property & Antitrust, a volume in our series of annual reports, which provide international analysis in key areas of law and policy for corporate counsel, cross-border legal practitioners and business people. Following the format adopted throughout the series, the same key questions are answered by leading practitioners in each of the 24 jurisdictions featured. New jurisdictions this year include Italy, Mexico, the Philippines, Russia and Spain. Every effort has been made to ensure that matters of concern to readers are covered. However, specific legal advice should always be sought from experienced local advisers. Getting the Deal Through publications are updated annually in print. Please ensure you are referring to the latest print edition or to the online version at www.GettingTheDealThrough.com. Getting the Deal Through gratefully acknowledges the efforts of all the contributors to this volume, who were chosen for their recognised expertise. Getting the Deal Through would also like to extend special thanks to contributing editor Susan M Hutton of Stikeman Elliott LLP for her continued assistance with this volume. Getting the Deal Through London December 2011 2 Getting the Deal Through – Intellectual Property & Antitrust 2012 Anderson Mo¯ri & Tomotsune JAPAN Japan Yusuke Nakano and Koya Uemura Anderson Mo¯ri & Tomotsune 1 Intellectual property law for the Act on the Layout Design of Integrated Circuits Act and Under what legislation are intellectual property rights granted? Are the Unfair Competition Prevention Act. The Agency for Cultural there restrictions on how IP rights may be exercised, licensed or Affairs, an extra-ministerial bureau of the Ministry of Education, transferred? Do the rights exceed the minimum required by the WTO Culture, Sports, Science and Technology, is responsible for the Copy- Agreement on Trade-Related Aspects of Intellectual Property Rights right Act. (TRIPs)? Intellectual property rights are granted under: 3 Proceedings to enforce IP rights • the Patent Act (No. 121 of 1959); What types of legal or administrative proceedings are available for • the Utility Model Act (No. 123 of 1959); enforcing IP rights? • the Design Act (No. 125 of 1959); • the Trademark Act (No. 127 of 1959); In legal proceedings, civil lawsuits are available (see question 4). In • the Plant Variety Protection and Seed Act (No. 83 of 1998); administrative proceedings, the holders of a patent, utility model, • the Layout Design of Integrated Circuits Act (No. 43 of 1985); design, trademark, copyright, or neighbouring or breeders’ rights • the Copyright Act (No. 48 of 1970); and may request the customs director to initiate administrative proceed- • the Unfair Competition Prevention Act (No. 47 of 1993). ings to prohibit the importation of goods that they believe infringe their rights. If a person finds that a certain indication (such as trade For patent, utility model, design and trademark rights to be granted, names, registered or unregistered trademarks or packaging) or shape registration at the Patent Office is required. For the registration of of goods to be imported are identical or similar to the indication breeders’ rights under the Plant Variety Protection and Seed Act, regis- of his or hers, that person may also make the same request (article tration at the Ministry of Agriculture, Forestry and Fisheries (MAFF) 69-13, paragraph 1 of the Customs Act). When such goods are being is required, and for the right to the layout design of integrated cir- imported, the customs director may confiscate and discard them, or cuits, registration is required at the Software Information Centre as may order an importer to reload them (article 69-11, paragraph 2). designated by the Ministry of Economy, Trade and Industry (METI). As for copyrights and trade secrets, no registration is required. 4 Remedies Licensing of IP rights generally becomes effective upon agree- What remedies are available to a party whose IP rights have been ment between a licensor and a licensee, without registration with infringed? governmental authorities. However, the relevant acts state that an exclusive licence of the registrable rights described above shall not Available civil remedies include compensation for damages, injunc- become effective without registration with the competent authorities. tions and preliminary injunctions. An injunction may include the In reality, many licensees refrain from registering exclusive licences destruction of the objects that have been created by the act of to save registration costs. An exclusive licensee with registration may infringement, the removal of the machines and equipment used for claim the licence against third parties (for example, an infringer), the act of infringement, or other measures necessary to suspend and while an exclusive licensee without registration may only claim the prevent the infringement. Administrative remedies are also available licence against a licensor. (see question 3). An infringer may be criminally punished, but in The transfer, waiver or restriction on disposability of the reg- some cases only if the holder of relevant rights files a criminal com- istrable rights must be registered with the relevant authorities. The plaint with the investigative authorities in a timely manner. creation,