IP/N/6/TUN/1

Tunisia

Under Article 21 of the Code of Civil and Commercial Procedure (CCCP), the jurisdiction of the courts depends on the nature and amount of the claim. Moreover, under Article 22 CCCP, where the value of the subject-matter of the proceedings cannot be determined, the court of first instance alone may hear the case and rule at first instance. Similarly, Article 40 CCCP calls for the court of first instance to hear all cases at first instance, unless expressly provided otherwise by law. As regards territorial jurisdiction, "whether he be a natural or a legal person, proceedings against the defendant must be brought before the court of his effective or elected domicile" (Article 30 CCCP) and, according to Article 31 CCCP, "if the defendant does not have a known domicile in Tunisia, proceedings shall be brought before the court of domicile of the plaintiff".

Which persons have standing to assert IPRs? Under Article 19 CCCP, an action may be brought by anyone having the standing and capacity to assert his rights before the courts. At the same time, the plaintiff must have an interest in bringing the action. The same article also states that "the court must, of its own motion, declare the action inadmissible if the file shows the plaintiff to be incompetent or to lack standing". In accordance with these provisions, any natural or legal person holding intellectual property rights may assert his rights before the courts. How may they be represented? According to Article 68 CCCP, "Representation by an attorney shall be compulsory before the court of first instance, except in matters of personal law". "The attorney’s chambers shall be regarded as his client’s elected domicile at the level of jurisdiction for which he is responsible". Moreover, in the particular case of appeals against decisions of the legal representative of the body responsible for industrial property, the industrial property legislation and, in particular, Article 44 of Law No. 2000-84 on Patents, Article 32 of Law No. 2001-20 on the Protection of Layout-Designs of Integrated Circuits, Article 22 of Law No. 2001-21 on the Protection of Industrial Designs, and Article 42 of Law No. 2001-36 of 17 April 2001 on the Protection of Trademarks, provide for the plaintiff to be represented before the court by an agent. Are there requirements for mandatory personal appearances before the court by the right holder? There are no requirements for mandatory personal appearances by the right holder.

This authority is conferred on the judicial authorities by various provisions including, in particular, Article 225 CCCP, according to which "at any stage of the proceedings, the court may, of its own motion, order a third party to be joined to the proceedings when it considers that the presence of the latter is indispensable to the assessment of the case". Moreover, under Article 101 CCCP, "if it is necessary to proceed to an expert examination and the parties are unable to agree on the choice of an expert, the expert shall be appointed by the judge".

There are numerous statutory provisions that deal with this situation: Article 168 of the Labour Code requires the members of the board and the representatives of the employees to keep secret any information of a confidential nature that they acquire during the performance of their duties, as well as anything relating to manufacturing processes. Any breach of this rule will render them liable to the penalties laid down in Articles 138 and 254 of the Criminal Code. Article 138 of the Criminal Code specifies, in addition to a fine, a two-year term of imprisonment for a factory manager, clerk or worker who discloses or communicates his company’s manufacturing secrets. Attempted disclosure or communication is also punishable. Article 61ter of the Criminal Code states that: "Any Tunisian or any foreigner who, without the prior authorization of the competent authority, delivers or communicates to a person acting on behalf of a foreign power or enterprise an invention of interest for national defence or information, research or manufacturing processes relating to an invention of interest for defence shall be guilty of a breach of external State security".

Injunctions The judicial authorities may take various types of decisions, in the form of interim orders, payment orders, and final or other judgements. - Interim orders Under Article 201 CCCP, "interim orders may be made on urgent applications without prejudice to the main proceedings". Interim orders on urgent applications may be made by the president of the court of first instance or his deputy, or by the district judge, where so authorized by law (Article 202 CCCP). Interim orders made on urgent applications are enforceable twenty-four hours after being served, except where the court has granted an extension. The order will be enforced without security, unless the judge has ordered that security be provided (Article 207 CCCP). - Payment orders Under the terms of Article 59 CCCP, any claim for the payment of a debt, where the latter, whatever its nature, is for a specific amount and has a contractual origin, may be submitted under the payment order procedure. - Judgements The judgement will not be final if the decision can be appealed. However, it may still be made immediately enforceable, with or without security, depending on the circumstances of the case (Articles 126 and 286 CCCP). - Final judgements The final judgement brings the case to a close by deciding the question forming the subject-matter of the proceedings. Damages, including recovery of profits, and expenses, including attorney's fees Under Articles 82 and 83 of the Code of Obligations and Contracts (COC), anyone who knowingly or deliberately causes pecuniary or non-pecuniary damage to others must make good the damage, where it is established that his action was the direct cause. Moreover, it is in the same spirit that Article 82 of the Law on Patents, Article 34 of the Law on the Protection of Layout-Designs of Integrated Circuits, Article 24 of the Law on the Protection of Industrial Designs, and Article 44 of the Law on the Protection of Trademarks provide for the civil liability of the infringer. Destruction or other disposal of infringing goods and materials/implements for their production According to Article 55 of the Law on the Protection of Trademarks, Article 36 of the Law on the Protection of Layout-Designs of Integrated Circuits, and Article 26 of the Law on the Protection of Industrial Designs, if the court finds against the defendant it may order the destruction or disposal outside the channels of commerce of the products or goods found to be infringing and the forfeiture of the implements used to make them. Any other remedies Under Article 34 of the Law on the Protection of Layout-Designs of Integrated Circuits, Article 24 of the Law on the Protection of Industrial Designs, and Article 54 of the Law on the Protection of Trademarks, in every case the court may order that the entire judgement or excerpts therefrom be published, at the expense of the unsuccessful party, in the newspapers it shall specify and displayed in the places it shall designate, in particular at the main gates of factories or workshops of that party or in his shop windows.

Within the context of criminal proceedings for infringement, the judicial authority and its aides are authorized to request from the person accused any information or clarification concerning his accomplices, the beneficiaries of the infringing act and the fate of the articles to which the offence relates. Obviously, the person accused has a right to silence and may refuse to answer any questions. However, the criminal court will take such silence into consideration in assessing the penalty to be imposed, the logical consequence of which is to discourage the accused from displaying such recalcitrance. The results of the criminal investigation may be used to support a civil action, whether brought separately or concurrently with the criminal action.

Article 87 of the Law on Patents, Article 38 of the Law on the Protection of Layout-Designs of Integrated Circuits, Article 28 of the Law on the Protection of Industrial Designs, and Article 49 of the Law on the Protection of Trademarks provide that where an action for infringement is brought before the court, the judge may, provisionally and on pain of a fine, prohibit the continuation of the allegedly infringing acts or make the prohibition of continuation subject to the provision of security designed to ensure the possible indemnification of the defendant if the action for infringement subsequently proves to be unfounded. Moreover, the application for prohibition or the provision of security will only be accepted if the action on the merits is deemed to be serious and is initiated within one month of the date on which the holder of the industrial property right became aware of the facts on which it is based.

In general, the length and cost of proceedings are not fixed. Both depend on the nature and complexity of the case, the fees of the attorneys and experts, etc. However, there are several provisions that place time-limits on court proceedings. Thus, according to Article 207 CCCP, interim orders on urgent applications are enforceable twenty-four hours after being served, except where the court has granted an extension. This article also provides that in cases of extreme urgency the court may order immediate enforcement before registration. It may also order enforcement without prior service.

The Tunisian legislation does not provide for such remedies.

Several types of provisional measures may be taken depending on the category of the right infringed. Thus, Law No. 2000-84 of 24 August 2000 on Patents provides for a detailed description, with or without attachment, of the allegedly infringing products or processes by a bailiff assisted by an expert under an order made by the president of the court on an ex parte application. In the event of attachment, the order may require the applicant to furnish security which must be posted before the goods are attached. Similar measures can be found in: - Law No. 2001-20 of 6 February 2001 on the Protection of Layout-Designs of Integrated Circuits (Article 38); - Law No. 2001-21 of 6 February 2001 on the Protection of Industrial Designs (Article 28); and - Law No. 2001-36 of 17 April 2001 on the Protection of Trademarks (Article 50). Protective measures may also be ordered in the event of the infringement of a right attaching to indications of source or appellations of origin, in particular under Article 30 of Law No. 99-57 of 28 June 1999 according to which the officers responsible for monitoring appellations of origin and indications of source may seize products put on sale under guaranteed appellations of origin or indications of source and suspected of not coming from the geographical area designated by the appellation or indication. They may also seize products coming from the geographical area designated by the appellation or indication but not meeting the specified technical production requirements. Seizures must be made in accordance with the procedures laid down in the consumer protection legislation in force.

These measures may be ordered because of urgency or difficulties relating to the enforcement of a judgement delivered or a writ of execution. They are taken by the president of the competent court or his deputy sitting in chambers (Articles 201 and 210 CCCP).

The measure is initiated under the interim procedure by ex parte application to the president of the competent court who may prohibit, provisionally and on pain of a fine, the continuation of the allegedly infringing acts or make such continuation subject to the provision of security designed to ensure the indemnification of the owner of the mark or an exclusive right (Article 49 of the Law on the Protection of Trademarks). A similar provision is also contained in the legislation concerning patents, layout-designs of integrated circuits and industrial designs.

The length of the proceedings is generally shorter and the cost usually less than in the case of proceedings on the merits. As with proceedings on the merits, the costs of provisional proceedings are borne by the losing party.

The Tunisian legislation does not provide for any administrative provisional measures.

Apart from counterfeit trademark and pirated copyright goods, applications for suspension by the customs of the release into free circulation of goods involving infringements of intellectual property rights have also been extended to: - goods that infringe a patent; - goods incorporating a counterfeit industrial design; - goods incorporating a copied layout-design of an integrated circuit.

Competent authorities Patent owners, creators of layout-designs of integrated circuits, proprietors of protected industrial designs, owners of registered trademarks or their successors in title who have good grounds for suspecting that goods that infringe their rights are being imported may lodge an application in writing with the customs services for the suspension of the customs clearance of those goods at importation. Requirements for an application Under the terms of the provisions in force, the application must contain: - the full name/business name and address of the applicant; - evidence that the applicant is the holder of a right in the goods at issue; - a description of the goods detailed enough to enable the customs services to recognize the goods. In addition, the applicant should provide any other useful information at his disposal that might enable the customs services to take a decision in full knowledge of the facts, although the provision of this information does not constitute a condition of admissibility of the application. In particular, such information may relate to: - the location of the goods or their intended destination; - the identification of the consignment or packages; - the estimated date of arrival or warehousing of the goods; - the means of transport used; - the identity of the importer, exporter or holder of the goods. The application must also include an undertaking on the part of the applicant to assume liability in respect of the importer if it is formally proved that the goods detained by the customs services do not constitute an infringement of the protected industrial property right. The applicant must inform the customs services if his right is no longer validly registered or has expired. Various requirements related to the duration of suspension Where the customs services find, if necessary after consulting the applicant, that the goods correspond to those described in the application, they will proceed to detain those goods. The customs services will immediately inform the applicant and the importer of the action taken and give them the opportunity to inspect the goods detained and take samples for the purpose of carrying out any tests or analyses needed to establish the existence of an infringement, in accordance with the provisions of the Customs Code and without prejudice to the principle of confidentiality of information. Provided that all the customs formalities have been satisfied, the detention measure will be discharged ipso jure, unless within ten working days of being notified of the detention of the goods the applicant can show to the satisfaction of the customs services that he has initiated civil or criminal proceedings before the competent court and that protective measures have been ordered by the president of the court and security sufficient to cover his liability in respect of the persons concerned has been posted. The amount of this security is fixed by the court. Where appropriate, the above-mentioned initial period may be extended by a maximum of ten working days. Moreover, the owner of the goods, the importer and the consignee may obtain the release of the goods by posting security whose amount will be fixed by the court and must be sufficient to protect the interests of the applicant, provided that all the customs formalities are satisfied. If the detention measure is discharged, the customs services must promptly inform the owner, the importer and the consignee, together with the applicant. Security or equivalent assurance and indemnification of the importer and of the owner of the goods The detention measure will be discharged ipso jure, unless within ten working days of being notified of the detention of the goods the applicant can show to the satisfaction of the customs services that he has initiated civil or criminal proceedings and that protective measures have been ordered by the competent court and security sufficient to cover his liability in respect of the persons concerned has been posted. The amount of this security is fixed by the court. The owner of the goods, the importer and the consignee may obtain the release of the goods by providing security whose amount will be fixed by the court and must be sufficient to protect the interests of the applicant, provided that all the customs formalities are satisfied. Moreover, where the application has been accepted or where detention measures have been taken, the customs services may require the applicant to post security sufficient to ensure payment of the costs incurred as a result of keeping the goods under customs control. Right of inspection and information Upon receipt of an application drawn up in accordance with the provisions governing the lodging of applications, the customs services will examine the application and immediately inform the applicant of their decision in writing. The reasons for the decision must be duly given. Where the customs services find, if necessary after consulting the applicant, that the goods correspond to those described in the application, they will proceed to detain those goods. The customs services will immediately inform the applicant and the importer of the action taken and give them the opportunity to inspect the goods detained and take samples for the purpose of carrying out any tests or analyses needed to establish the existence of an infringement, in accordance with the provisions of the Customs Code and without prejudice to the principle of confidentiality of information. Upon production of an order made by the president of the court on an ex parte application and in order to facilitate the initiation of legal proceedings, the customs services will inform the applicant of the full names and addresses of the exporter, the importer and the consignee of the goods, if they are known to them, as well as of the quantity of the goods forming the subject of the application.

Notwithstanding the rules concerning the provision of security to cover any liability of the applicant in respect of the importer in the event of it being duly proved that the goods detained do not infringe the protected right and those concerning the posting of security with the customs services to ensure the payment of costs incurred as a result of keeping the goods under customs control, the border measure procedure is always applicable.

The customs services may on their own initiative suspend the customs clearance of goods that infringe a protected industrial property right. In this case: - the customs services will immediately inform the right holder or his successors in title who must lodge an application in accordance with the above-mentioned application procedure within three days of being notified by the customs services whereupon the provisions concerning suspension will apply ipso jure; - a detention measure applied in the context of an action undertaken by the customs services on their own initiative will be discharged ipso jure if the holder of the protected industrial property right or his successor in title fails to lodge an application in accordance with the application procedure within three days of being notified by the customs services.

If, by virtue of a final judgement, the goods are found to be infringing, the court will decide the fate of those goods, namely either: - destruction under customs control; - or disposal outside the channels of commerce, provided that the rights of the holder of the protected industrial property right are not infringed.

In criminal cases, as in civil proceedings, the question of which court has jurisdiction will be decided by the nature and the amount of the claim (Article 21 CCCP). Thus, criminal proceedings are brought before the court of first instance which, under the terms of Article 40 CCCP, hears all cases at first instance, unless expressly provided otherwise by law. As regards territorial jurisdiction, "whether he be a natural or a legal person, proceedings against the defendant must be brought before the court of his effective or elected domicile" (Article 30 CCCP) and, according to Article 31 CCCP, "if the defendant does not have a known domicile in Tunisia, proceedings shall be brought before the court of domicile of the plaintiff".

Anyone who infringes industrial property rights is liable to criminal prosecution and sanctions. Thus, infringement is punishable by: - a fine of 5,000 to 50,000 dinars (Articles 82 and 83 of Law No. 2000-84 of 24 August 2000 on Patents); - a fine of 1,000 to 50,000 dinars (Article 34 of Law No. 2001-20 of 6 February 2001 on the Protection of Layout-Designs of Integrated Circuits); - a fine of 5,000 to 50,0000 dinars (Article 24 of Law No. 2001-21 of 6 February 2001 on the Protection of Industrial Designs); - a fine of 5,000 to 50,000 dinars (Article of Law No. 2001-36 of 17 April 2001 on the Protection of Trademarks). It should also be noted that in all these cases of infringement repeat offenders will be liable to imprisonment for one to six months and the doubling of the fine.

Under Article 1 of the Code of Criminal Procedure (CCP), any offence gives grounds for the commencement of criminal proceedings with a view to the imposition of penalties and, if damage has been caused, a civil action for damages. Criminal proceedings may be instituted against the perpetrator of the offence, his co-principals or accessories. They are initiated and conducted by the judges or the officers to whom they are entrusted by law. However, Article 83 of the Law on Patents, Article 34 of Law No. 2001-20 on the Protection of Layout-Designs of Integrated Circuits, and Article 24 of Law No. 2001-21 on the Protection of Industrial Designs provide for criminal proceedings to be commenced by the Public Prosecutor’s Office only upon a complaint by the injured party.

Anyone who considers his protected rights to have been infringed has standing to initiate criminal proceedings in accordance with the rules of the Code of Criminal Procedure.

Infringements of industrial property rights, as defined by the industrial property legislation, are subject, under that same legislation, to the following penalties: - Patents Any violation of the rights of a patent owner, as defined in Article 46, shall constitute an infringement and shall render the infringer civilly and criminally liable. - Infringements shall be punishable with a fine of 5,000 to 50,000 dinars. - In the event of a repeat offence, a term of imprisonment of one to six months may be imposed in addition to a fine, the amount of which shall be doubled. - Anyone who improperly assumes the status of owner of a patent application or patent shall be liable to a fine of 1,000 to 5,000 dinars. - In the event of a repeat offence, the fine shall be doubled. - Persons entitled to bring an action for infringement may, under an order made by the president of the court on an ex parte application, have a bailiff assisted by an expert undertake a detailed description, with or without attachment, of the allegedly infringing goods or processes. Where attachment is authorized, it shall be confined to the seizure of any samples necessary to prove the infringement. Where goods are attached, the order may require the applicant to provide security which must be posted before any goods are seized (Article 86 of Law No. 2000-84). - Layout-designs (topographies) of integrated circuits Any violation of the rights of the holder of a layout-design registration, as defined in Article 17, shall constitute an infringement and render the infringer civilly and criminally liable. - Anyone who knowingly infringes such rights shall be liable to a fine of 1,000 to 50,000 dinars. - Anyone who causes to appear on his business documents, his advertising or his products words that tend to encourage the belief that a layout-design of an integrated circuit has been registered under this law when in fact it has not or the registration has been cancelled or expired shall be liable to a fine of 500 to 2,000 dinars. - Repeat offenders shall be liable to a term of imprisonment, in addition to a fine, which shall be doubled. - In the event of a guilty verdict, the court may order the destruction of the infringing goods or their disposal outside the channels of commerce, together with the forfeiture of the implements used for making them (Article 36). - The injured party may, even before publication of the registration, cause a detailed description, with or without attachment, of the infringing articles or implements to be undertaken under an order made by the president of the competent court, upon submission of an application and production of the registration certificate. - The president of the court may require the applicant to provide security, which the latter must post before having the action mentioned in the preceding subparagaph of this article undertaken (Article 38). - The court may order that the judgement be displayed, at the expense of the guilty party, in the places it shall determine and published, in its entirety or in the form of excerpts, in the newspapers it shall designate (Article 34). - Industrial designs Any violation of the rights of the owner of an industrial design, as defined in Article 4 of this law, shall constitute an infringement and render the infringer civilly and criminally liable. - Anyone who knowingly infringes such rights shall be liable to a fine of 5,000 to 50,000 dinars. - Anyone who causes to appear on his business documents, his advertising or his products words that tend to encourage the belief that an industrial design has been registered under this law when in fact it has not or the registration has been cancelled or expired shall be liable to a fine of 1,000 to 5,000 dinars (Article 24). - Repeat offenders shall be liable to imprisonment for one to six months, in addition to a fine, which shall be doubled (Article 25). - In the event of a guilty verdict, the court may order the forfeiture of the implements used for making the infringing articles (Article 36). - The injured party may have a bailiff undertake a detailed description, with or without attachment, of the infringing articles or implements under an order made by the president of the competent court, upon submission of an application and production of proof of registration (Article 28). - The court may order that the judgement be displayed, at the expense of the guilty party, in the places it shall determine and published, in its entirety or in the form of excerpts, in the newspapers it shall designate (Article 24). Trademarks Any violation of the rights of the owner of a trademark shall constitute an infringement rendering the infringer civilly and criminally liable. - Violation of the provisions of Articles 22 and 23 of the law shall constitute an infringement of the rights in the mark (Article 44). - Anyone who brings an action for infringement under Article 48 of the law may have undertaken, in any place, by a bailiff assisted by an expert and under an order made by the president of the competent court, a detailed description, with or without the taking of samples, or the attachment of goods or services allegedly marked, offered for sale, delivered or supplied, to his detriment or in violation of his rights. - Where attachment is authorized, it shall be confined to the seizure of samples necessary to prove the infringement. The president of the court may make attachment subject to the provision by the applicant of security sufficient to compensate for any injury suffered by the defendant if the action for infringement subsequently proves to be unfounded (Article 50). - Subject to the penalties provided by special legislation, anyone who: - reproduces, copies, uses, affixes, removes or alters a mark in violation of the rights conferred by its registration and the resulting prohibitions, or - imports or exploits goods presented under a counterfeit mark shall be liable to a fine of 5,000 to 50,000 dinars (Article 51). - If one of the offences defined in Articles 51 and 52 of the law is repeated, the offender shall be liable to imprisonment for one to six months, in addition to a fine, which shall be doubled (Article 53). - If the defendant is found guilty of infringing the provisions of Article 51, 52 or 53, the court may order the forfeiture of the goods and of the implements used for committing the offence. - The court may also order the destruction of the goods (Article 55). - In every case, the court may order that the judgement, in its entirety or in the form of excerpts, be published, at the expense of the guilty party, in the newspapers it shall designate and displayed in the places it shall determine, in particular at the main gates of the factories or workshops of the guilty party or in his shop windows. - Indications of source and appellations of origin The officers responsible for monitoring appellations of origin and indications of source may seize products put on sale under guaranteed appellations of origin or indications of source and suspected of not coming from the geographical area designated by the appellation or indication. They may also seize products coming from the geographical area designated by the appellation or indication but not meeting the specified technical production requirements (Article 30 of Law No. 99-57 of 28 June 1999 on guaranteed appellations of origin and indications of source of agricultural products). Notwithstanding the penalties provided for by the Decree of 10 October 1919 on the repression of fraud in trade in goods and the manufacture of foodstuffs and agricultural or natural products and by Law No. 91-44 of 1 July 1991 on the organization of the distributive trades, as amended by Law No. 92-117 of 7 December 1992 on consumer protection, and the seizure provided for in Article 30 of this law, anyone who infringes the provisions of Articles 9, 16 and 16 (paragraph 2), 26 and 27 of this law shall be liable to a fine ranging from 1,000 to 20,000 dinars. In the event of a repeat offence, this penalty shall be doubled.

The rules in force are described above. In general, the length and cost of proceedings are not fixed and depend on numerous factors. Moreover, according to Article 191 of the Code of Criminal Procedure "the costs of the proceedings shall be ordered against the person convicted" and according to Article 192 of the Code of Criminal Procedure "the party claiming damages shall always be ordered to pay court fees to the State, subject to recourse against third parties".