BACKGROUND

Concerns in the multilateral trading

system about counterfeiting and
piracy
Perception that the international IPR
system lacked effective rules on
enforcement predated the TRIPS
Agreement.
The TRIPS Agreement was the first
multilateral treaty with detailed rules
on the enforcement of IPRs.
 WHAT IS IPR ENFORCEMENT?
Infringement occurs when an act is
undertaken which is inconsistent with the
rights of the owner of the IPR and which is not
subject to an admissible exception. Typical
examples are:
- unauthorized reproduction of copyright-
protected material for commercial gain;
- unauthorized reproduction of trademarks
with the intention of passing off the good as a
genuine product of the trademark owner; or
- unauthorized manufacture, use or sale of a
patent-protected invention.
 WHAT IS IPR ENFORCEMENT?
 Areas concerned range from textiles and clothing,
foodstuff, automobile and aviation spare parts,
pharmaceuticals to music and software.
Potential repercussions go far beyond the mere
protection of IPR assets, given that IPR
infringement will often affect one or more of the
following aspects:
consumer safety and health,
employment,
tax and excise losses,
fair competition,
combating organized crime and
the conditions for foreign direct investment.
 WHAT IS IPR ENFORCEMENT?
Possibilityy for the owners of IPRs to stop
infringement and prevent further
infringement, as well as to recover the
losses incurred from an infringement.
Preamble to the TRIPS Agreement
recognizes the need to make available
effective and appropriate means for the
enforcement of such rights.
Need for a multilateral framework of
principles, rules and disciplines dealing
with international trade in counterfeit
goods.
 WHAT IS IPR ENFORCEMENT?

 Provisions in the TRIPS Agreement

specify:
- civil and administrative procedures and
remedies, - provisional measures,
As regards trademark counterfeiting and
copyright piracy, Members are required to
make available border measures and, when
counterfeiting and piracy is wilful and on a
commercial scale,
criminal procedures.
WHAT IS IPR ENFORCEMENT?
 APPLICATION OF BASIC PRINCIPLES?

The basic principles of the TRIPS Agreement

also apply to the provisions on enforcement of
IPRs.
Members are free, but not obliged, to implement
stricter enforcement procedures and remedies,
provided that they are TRIPS-consistent (Article
1.1),
For example, safeguards against abuse are
respected.
Free to determine the appropriate method of
implementing Part III of the TRIPS Agreement
within their own legal system and practice;
 APPLICATION OF BASIC PRINCIPLES?

Members are obliged to grant non-

discriminatory treatment to the nationals
of all other Members, i.e. national
treatment and most-favoured-nation
treatment (Articles 3 and 4),
WTO dispute settlement mechanism
(Article 64.1).
 Types of Enforcement
Two types of “Enforcement”
available under TRIPs
 National procedures and
remedies for effective
enforcement of IPRs
(“Enforcement”)
 Mechanism for settlement of
disputes between WTO Members
about compliance with TRIPS
obligations (“Dispute settlement”)10
Enforcement: General
Five sections
(1) General obligations;
(2) Civil and administrative procedures and remedies;
(3) Provisional measures;
(4) Border Measures; and
(5) Criminal procedures
Two main objectives:
 To permit effective action against IPR infringement
including
 expeditious remedies to prevent infringement

 deterrent remedies

 To avoid creation of barriers to legitimate trade and

to provide for safeguards against abuse of
procedures
11
Enforcement: General Art. 41
General obligations

 Members obliged to have procedures that permit

effective action against infringement, but should

ensure that such procedures do not impede
legitimate trade
 They must meet basic requirements of due process,

such as being fair and equitable

 They should not be unduly complicated or costly,

nor operating without unreasonable time-limits or

delays
 Members must provide for judicial review 12
Enforcement: Civil and Administrative Procedures
and Remedies: Art 42
Civil judicial procedures to be made available to
rights owners to enforce their legitimate rights
Requiring the opposing party to produce
relevant evidence
Injunctions to prevent infringement of rights

Damages to be awarded against infringers to

compensate for injury as well as legal costs

Forfeiture of infringing goods, and of
materials and instruments used to produce
them, and to their disposal or destruction 13
Enforcement: Provisional Measures: Art 50- 61
Judicial authorities should be able to order
prompt and effective judicial measures to
prevent:

 any intellectual property right being

infringed
 the preservation of evidence relating to the
alleged infringement
 Under certain circumstances (irreparable
damage to the interests of the rights
holder, the imminent destruction of
evidence), measures could be taken without
a prior hearing of the views of the infringer
14
Enforcement: Provisional Measures: Art 50- 61
Prompt notice of action to be given
thereafter to the infringer
The revocation of the provisional
measures if action not commenced
by the rights owner at the request of
the infringer
Payment of compensation when
provisional measures are revoked or
no infringement found

15
Enforcement: Border Measures: Art 51
Rights owners must be capable of obtaining
the cooperation of customs authorities to
suspend release of infringing goods into free
circulation
Application must be in writing and prima
facie evidence of infringement provided to
customs. Information about the subject
goods to permit identification must also be
provided
Customs must inform the right-holder if
application has been accepted and how
long the measures will be taken
Remedies should include destruction or
disposal of the infringing goods in a way
that avoids harm to the right-holder, e.g.,16
Enforcement: Border Measures: Art 51
 Right-owner may be required to lodge
security and provide compensation
when infringement is not found
 Alleged infringers to be promptly
informed of the decision to suspend
circulation of goods and provision to
be made for the review of the decision
 Goods to be released if no follow-up
action taken to the original
application within 10-20 working days

17
Enforcement: Criminal Procedures
Criminal procedures and penalties
Remedies should include imprisonment and
fines sufficient to provide a deterrent
 Forfeiture of infringing goods, and of materials
and instruments used to produce them, disposal
or destruction
Under Art. 69 of the TRIPS Agreement, contact
points are required to be established by
Members to exchange information on trade in
infringing goods, and generally promote
cooperation between customs on trade in
counterfeit and pirated goods

18
WHAT ARE PROVISIONAL MEASURES?

Provisional measures are temporary injunctions which

constitute an important tool pending the solution of a dispute
at a trial.

The TRIPS Agreement obliges Members to allow their judicial

authorities to order prompt and effective provisional measures
to take action against alleged infringements.

Those measures aim to prevent an IPR infringement from

occurring and to preserve relevant evidence concerning the
alleged infringement.

Like in other sections on enforcement, certain procedural

requirements and safeguards against abuse are provided for.
 WHAT ARE BORDER MEASURES?

Border measures enable the right holder to obtain the cooperation of

customs administrations to intercept infringing goods at the border
and to prevent the release of such goods into circulation.

The TRIPS Agreement makes them mandatory at least for counterfeit

trademark and pirated copyright goods; Members may also make
them available for infringement of other IPRs, infringing goods
destined for exportation, goods in transit, de minimis imports and
parallel imports.

Border measures are subject to certain procedural requirements and

safeguards against abuse, similar to those applying to provisional
measures. As regards remedies, the competent authorities must be
empowered to order the destruction or disposal outside the channels
of commerce of infringing goods.
 EXERCISES
Would you advise a right holder to use IPR
enforcement procedures in the following
situations:
a) unauthorized reproduction of trademarks with
the intention of passing off the good as a genuine
product of the trademark owner;
a) Yes. This is a typical case of an infringing
act, since the trademarks are used without
the consent of the trademark owner. The
right holder could therefore consider using
enforcement procedures to put an end to the
infringement.
 EXERCISES
Would you advise a right holder to use
IPR enforcement procedures in the
following situations:
b) production of a patent-protected
invention under a compulsory licence;
b) No. In this case, an exception in
form of a compulsory licence applies
to the patent right. Therefore, there is
no infringing act and there are no
rights to enforce.
 EXERCISES
Would you advise a right holder to use IPR
enforcement procedures in the following
situations:
c) unauthorized sale of a patent-protected
invention?
c) Yes. The sale of the patent-protected
invention has not been authorized by
the right holder and constitutes an
infringing act. He may therefore rely on
enforcement procedures to make sure
that his rights are respected.
 EXERCISES
 Company A has obtained a voluntary licence from patent
right holder B to produce a drug X. A produces X and wants
to sell it. Can B obtain an injunction to prevent A from
manufacturing and sale of X, claiming that the use of his
invention by A is an infringement of his patent rights and
should therefore be stopped?
 No. IPR infringement does not occur where the use of
the patented invention has previously been authorized
by the right holder. Therefore, the enforcement
provisions do not apply in this case.
 Does "making available" of enforcement procedures imply
that the competent government authorities are to act upon
their own initiative?
 No. "Making available" means that the Member is only
required to put certain procedures and measures at the
disposal of the right holder. The onus is on him or her
to take the necessary steps to ensure the proper IPR
enforcement.
 EXERCISES
Please identify which of the following measures /
procedures are to be made available by Members:
a) provisional measures for all IPR infringements;
b) border measures for the infringement of
patents;
c) criminal procedures for the infringement of
industrial designs.
a) Yes. Provisional measures must be made
available for all IPR infringements.
b) No. Border measures are only mandatory for
trademark counterfeiting and copyright piracy.
c) No. Criminal procedures are only mandatory for
trademark counterfeiting and copyright piracy.
 EXERCISES
Can country A, Member of the WTO, provide for the
application of criminal sanctions only for patent
rights held by its own nationals, whereas the
infringement of patents owned by nationals from
other Member would not be subject to such
sanctions?
No. The basic principle of national treatment (Article
3) requires Members to accord to nationals of other
Members the same treatment than that granted to
their own nationals. The optional application of
criminal sanctions to patent infringements must
therefore be available on a non-discriminatory basis
to nationals of all Members.
 EXERCISES
Is the right to effective enforcement
procedures limited to the right holder?
No. Article 42 and relevant WTO
jurisprudence have clarified that
procedural rights are extended to
other persons who have the legal
standing to assert rights, such as
the presumptive owner of a
trademark, federations and
associations.
 EXERCISES
Do injunctions have to be applicable
to cases of innocent infringement?
No. Article 44.1 says that there
is no obligation for Members to
make injunctions available where
infringing products have been
acquired or ordered in good
faith.
 EXERCISES
Do the judicial authorities always have to
give prior notice to the defendant before
stopping an alleged infringement?
No. In cases of urgency, they can act
without prior notice (Article 50.2).
The parties affected must, however, be
given notice without delay, at the
latest after the execution of the
measures.
 EXERCISES
Are border measures mandatory in the following
situations:
a) goods destined for exportation;
b) goods in transit;
c) importation of small quantities of goods of a non-
commercial nature?
a) to c) There is no obligation to apply border
measures to any of the above situations. They are
mandatory as regards the importation of counterfeit
trademark and pirated copyright goods. Other types
of IPR infringement, as well as goods destined for
exportation or in transit can, but must not be
covered by such border measures. In a similar vein,
border measures are optional for the importation of
i) small quantities of goods of a non-commercial
nature, and ii) goods put on a third country market
by or with the consent of the right holder.
 EXERCISES
Are there typical safeguards against
abuse, which apply both to provisional and
border measures?
Yes. To prevent abuse, the right
holder may be required to provide a
security or equivalent assurance. In
actual cases of abuse or failure to act
within the time limits, the right holder
may be asked to compensate the
defendant.
 EXERCISES
Can the competent authorities act
upon their own initiative without
prior request by the right holder?
Yes. Article 58 provides for the
possibility, but not obligation, to
permit ex officio action by the
competent authorities, subject to
certain rules.