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q185 enforcement of ip rights

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q185 enforcement of ip rights

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									                    Q185 - Enforcement of IP Rights

                              Questionnaire

A.   Introduction


I.   Present status

     As indicated in the Report for the Congress in Geneva in summer 2004,
     the complexity and diversity of the topic “enforcement of intellectual
     property rights” requires a concentration of the Committee’s work on
     matters that are particularly critical and demand harmonization at the
     international level.

     One such matter identified by the Committee concerns the specific
     aspects of producing evidence in IP proceedings, on which, for the time
     being, the work of the Committee is specifically focused.

     Basic standards at international level are provided by the Agreement on
     Trade-Related Aspects of Intellectual Property Rights (hereinafter: TRIPS
     Agreement). Of particular importance and interest for the present
     Questionnaire is Part III, section 2 and section 3 of the TRIPS
     Agreement.

     Within the European Union, common standards have been set in
     Directive 2004/48/EC of the European Parliament and of the Council of
     April 29, 2004 on the enforcement of Intellectual Property rights
     (hereinafter: IP Directive). The Directive is supposed to set common
     minimum standards for the European Member States. It supplements the
     TRIPS Agreement regarding specific provisions, for which reason it has
     also been called “TRIPS plus”. The aspects of production of evidence
     have been particularly addressed in Article 6 “Evidence”, Article 7
     “Measures for Preserving Evidence” and Article 9 “Right of Information”
     of the IP Directive. According to Article 20 of the IP Directive, the EU
     Member States shall implement the provisions of the IP Directive, which
     are at least for the time being not directly applicable, by April 29, 2006.

     The present Questionnaire refers to TRIPS provisions as well as to the IP
     Directive. Primarily, both frameworks should be taken into account by the
     National Groups as references and guidelines for the answers to the
     questions. For states that are not members of the European Union the IP
     Directive is – obviously – only relevant and interesting from a
     comparative view and not as applicable law. Nevertheless, all National




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      Groups – i.e. with or without EU membership - are equally invited to
      highlight existing differences and discrepancies to both TRIPS and the IP
      Directive.


II.   Aim of the study

      The present study is embedded in previous achievements and results of
      the AIPPI. Of particular interest in this respect are the results of Special
      Committee Q134 and its Subcommittees encompassing a
      methodological study of national legislations. The work of Special
      Committee Q185 is continuing with the aforementioned specific
      orientation.

      The present study is aimed at analyzing the various national systems and
      is consequently focused on the identification of the existing gaps
      between these systems.

      At the international level the present study aims to elucidate in a first
      stage the status and the different ways the TRIPS Agreement has been
      implemented within the national systems. As indicated above, a
      predominant concern of this analysis is the content, requirements and
      extent of available means for collecting evidence, on the one hand, and,
      on the other hand, their limits.

      Both the IP Directive and the TRIPS Agreement contain a set of
      minimum standard rules, which may be interpreted differently from
      country to country. In particular their implementation varies from system
      to system. The aim is to identify existing problems or best practices
      regarding the application of implemented rules and to determine whether
      – in the opinion of the National Groups - there is still need for
      improvement or a further demand for implementation. Thus, the study is
      intended to illuminate gaps that still exist between national systems and
      determine whether there is a chance of reaching common standpoints in
      the AIPPI in view of further approximating national systems.

      Additionally, this study is aimed at identifying the consequences of the IP
      Directive within the states of the National Groups belonging to the
      European Union.

      The National Groups are also invited to describe any existing problems
      and/or deficiencies that may be identified within their national systems.


B.    Questions

      The present Questionnaire is based on those provisions of the TRIPS
      Agreement and of the IP Directive which are relevant for the present
      study. They are specifically quoted in the following.



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     From a general view it would be interesting if the National Groups would
     illustrate the legal way in which the TRIPS provisions are implemented in
     their national laws. Is this implementation achieved for instance by
     means of (written) legislation (or regulation) or is the implementation
     directly applied by the Courts? If there is (written) legislation, it would be
     useful for the present study if the National Groups could furnish the
     English translation of the text (if available).


I.   Article 43 TRIPS Agreement and Article 6 of the IP Directive


     Article 43 “Evidence” (TRIPS)

     1.    The judicial authorities shall have the authority, where a party has presented reasonably available
           evidence sufficient to support its claims and has specified evidence relevant to substantiation of its
           claims which lies in the control of the opposing party, to order that this evidence be produced by the
           opposing party, subject in appropriate cases to conditions which ensure the protection of confidential
           information.

     2.    In cases in which a party to a proceeding voluntarily and without good reason refuses access to, or
           otherwise does not provide necessary information within a reasonable period, or significantly impedes a
           procedure relating to an enforcement action, a Member may accord judicial authorities the authority to
           make preliminary and final determinations, affirmative or negative, on the basis of the information
           presented to them, including the complaint or the allegation presented by the party adversely affected
           by the denial of access to information, subject to providing the parties an opportunity to be heard on the
           allegations or evidence.

     Article 6 “Evidence” (IP Directive)

     1.   Member States shall ensure that, on application by a party which has presented reasonably available
          evidence sufficient to support its claims, and has, in substantiating those claims, specified evidence
          which lies in the control of the opposing party, the competent judicial authorities may order that such
          evidence be presented by the opposing party, subject to the protection of confidential information. For
          the purposes of this paragraph, Member States may provide that a reasonable sample of a substantial
          number of copies of a work or any other protected object be considered by the competent judicial
          authorities to constitute reasonable evidence.
     2.   Under the same conditions, in the case of an infringement committed on a commercial scale Member
          States shall take such measures as are necessary to enable the competent judicial authorities to order,
          where appropriate, on application by a party, the communication of banking, financial or commercial
          documents under the control of the opposing party, subject to the protection of confidential information.



1.   General remarks


     From a comparison of the above provisions, it appears that Article 6 (1,
     first sentence) of the IP Directive does not go beyond Article 43 (1) of the
     TRIPS Agreement, i.e. according to both provisions, means for gathering
     evidence (which lies within the control of the opposing parties),
     regardless of the burden of proof, should be available in the national
     laws, provided that the protection of confidential information is ensured.
     Both provisions are modeled as procedural means for pending court
     proceedings.

     Article 43 (2) of the TRIPS Agreement stipulates what may be the
     consequences if the order is not fulfilled by the opposing party. A




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     comparable provision regarding the consequences of such refusal is
     missing in the IP Directive.

     According to Article 6 (2) of the IP Directive it should be possible to order
     the communication of banking or financial documents provided that the
     infringement is committed on a commercial scale. A comparable
     provision is missing in TRIPS. The IP Directive contains a definition of
     the terms “commercial scale” in item (14) of its preamble: “Acts carried
     out on a commercial scale are those carried for direct or indirect
     economic or commercial advantage; this would normally exclude acts
     carried out by end consumers acting in good faith”. It appears that this
     provision is aimed at ensuring access to information contained in such
     documents by means of which the claimant would be able to identify the
     beneficiaries of the infringement (on different distribution levels).

     In the following the questions are divided into two sections: a section with
     questions as to content, requirements and extent of the provisions of any
     national system, and a section with questions as to the limits of the
     available means identified in the national systems.


2.   Questions to be answered regarding content, requirements and
     extent

     a. Does your country already provide for a mechanism in compliance
        with Article 43 (1) of the TRIPS Agreement and/or Article 6 (1) of the
        IP Directive.
     b. How does your system work and what are its specific requirements,
        in particular:
              Are these mechanisms arranged differently as to the different
               types of IP (i.e. patents, utility models, design models,
               trademarks, copyright).
              According to Article 43 (1) of the TRIPS Agreement and Article
               6 (1) of the IP Directive, the claimant must present reasonably
               available evidence sufficient to support the claim: Is there a
               comparable requirement in the laws of your national system? If
               yes, it will be interesting to know the extent to which the
               infringement must already be proven beforehand by the
               claimant.
              How (clearly) and to what extent must the claimant “specify”
               the means of evidence to be produced that is within the control
               of the opposing party?
              Are there other requirements which must be fulfilled?
     c. Regarding the extent and enforcement of the order:




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             Is it possible to get such an order only in view of proving the
              infringement or can the order also be focused on evidence
              which may be relevant for the determination of the extent of
              damages?
             Can such order also be used to identify the possible existence
              of evidence, i.e. are there any means in your system that
              enable the claimant to search for evidence?
             How can the order be enforced?
             Is it possible by means of such an order to effectively enter the
              private sphere of the opposing party (for instance premises)?
             What are the consequences if the order is not complied with by
              the opposing party. For example: Shift of burden of proof, or a
              solution comparable to the solution of Article 43 (1) of the
              TRIPS Agreement?
             Can such order be obtained in your country based on an IP
              right registered in another country but not registered or even
              applied for in your country?
d. Does your system provide for legal presumptions comparable to the
   stipulation of the second sentence of Article 6 of the IP Directive.
   This provision apparently refers to a problem arising in cases where
   a large amount of infringing items such as optical discs are to be
   seized. Requiring detailed proof of copyright for each infringing item
   would lead to loss of time, effort and money by the right holder.
e. Questions regarding procedural aspects:
   i)         What is the competent court? Who makes the decision, an
              administrative or a judicial body?
   ii)        How costly and time-consuming are these proceedings?
   iii)       Is the order subject to appeal?
          -      by whom?
          -      within what time limit?
          -      on what grounds?
          -      before what court?
   iv)        What kind of counter-arguments may successfully be
              asserted against such an order, or what counteractive
              measures can be taken by the respondent in order to lift the
              order?
   v)         What are the implications if either claimant or respondent or
              both parties are foreigners?
   vi)        Is the order enforceable even if an appeal is pending.




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3.   Questions to be answered regarding limits


     a. Whether and how and through what procedures can secret
        information (business information, know-how etc.) of the opposing
        party be protected in the laws of your system?

     b. In particular, are there in your system procedural possibilities to
        restrict the access to the information to specific persons involved in
        the proceedings (attorney only, neutral expert)? If so, how is this
        restriction legally implemented and ensured?

     c. How can abuses be prevented?

     d. Is it possible for the opposing party to rely on privileges such as
        attorney/client privilege?

           If so, are there different types of privileges?
           What are the possible consequences if a fact cannot be proven
            due to the invocation of a privilege?

     d. What are the consequences if it turns out that the order was
        unjustified?

     e. Is the order subject to a security bond?


4.   Questions to be answered regarding future improvements

     a. According to the opinion of your National Group, are there ambitions
        or motivations to further develop or improve your system?
     b. Are there any governmental or public ambitions in your country to
        improve or to change the existing systems?
     c. The following question is particularly addressed to the National
        Groups within the European Union: Do you think that the laws of your
        national systems are already in compliance with the said provisions
        of the IP Directive?




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II.   Article 50 TRIPS Agreement and Article 7 of the IP Directive


      Article 50 (TRIPS)

      1.   The judicial authorities shall have the authority to order prompt and effective provisional measures:
           (a) (...)
           (b) to preserve relevant evidence in regard to the alleged infringement.
      2.   The judicial authorities shall have the authority to adopt provisional measures inaudita altera parte
           where appropriate, in particular where any delay is likely to cause irreparable harm to the right holder, or
           where there is a demonstrable risk of evidence being destroyed.
      3.   The judicial authorities shall have the authority to require the applicant to provide any reasonably
           available evidence in order to satisfy themselves with a sufficient degree of certainty that the applicant is
           the right holder and that the applicant's right is being infringed or that such infringement is imminent,
           and to order the applicant to provide a security or equivalent assurance sufficient to protect the
           defendant and to prevent abuse.
      4.   Where provisional measures have been adopted inaudita altera parte, the parties affected shall be given
           notice, without delay after the execution of the measures at the latest. A review, including a right to be
           heard, shall take place upon request of the defendant with a view to deciding, within a reasonable
           period after the notification of the measures, whether these measures shall be modified, revoked or
           confirmed.
      5.   The applicant may be required to supply other information necessary for the identification of the goods
           concerned by the authority that will execute the provisional measures.
      6.   Without prejudice to paragraph 4, provisional measures taken on the basis of paragraphs 1 and 2 shall,
           upon request by the defendant, be revoked or otherwise cease to have effect, if proceedings leading to
           a decision on the merits of the case are not initiated within a reasonable period, to be determined by the
           judicial authority ordering the measures where a Member's law so permits or, in the absence of such a
           determination, not to exceed 20 working days or 31 calendar days, whichever is the longer.
      7.   Where the provisional measures are revoked or where they lapse due to any act or omission by the
           applicant, or where it is subsequently found that there has been no infringement or threat of
           infringement of an intellectual property right, the judicial authorities shall have the authority to order the
           applicant, upon request of the defendant, to provide the defendant appropriate compensation for any
           injury caused by these measures.
      8.   To the extent that any provisional measure can be ordered as a result of administrative procedures,
           such procedures shall conform to principles equivalent in substance to those set forth in this Section.

      Article 7 “Measures for preserving evidence” (IP Directive)
      1.   Member States shall ensure that, even before the commencement of proceedings on the merits of the
           case, the competent judicial authorities may, on application by a party who has presented reasonably
           available evidence to support his/her claims that his/her intellectual property right has been infringed or is
           about to be infringed, order prompt and effective provisional measures to preserve relevant evidence in
           respect of the alleged infringement, subject to the protection of confidential information. Such measures
           may include the detailed description, with or without the taking of samples, or the physical seizure of the
           infringing goods, and, in appropriate cases, the materials and implements used in the production and/or
           distribution of these goods and the documents relating thereto. Those measures shall be taken, if
           necessary without the other party having been heard, in particular where any delay is likely to cause
           irreparable harm to the rightholder or where there is a demonstrable risk of evidence being destroyed.
           Where measures to preserve evidence are adopted without the other party having been heard, the
           parties affected shall be given notice, without delay after the execution of the measures at the latest. A
           review, including a right to be heard, shall take place upon request of the parties affected with a view to
           deciding, within a reasonable period after the notification of the measures, whether the measures shall
           be modified, revoked or confirmed.
      2.   Member States shall ensure that the measures to preserve evidence may be subject to the lodging by
           the applicant of adequate security or an equivalent assurance intended to ensure compensation for any
           prejudice suffered by the defendant as provided for in paragraph 4.
      3.   Member States shall ensure that the measures to preserve evidence are revoked or otherwise cease to
           have effect, upon request of the defendant, without prejudice to the damages which may be claimed, if
           the applicant does not institute, within a reasonable period, proceedings leading to a decision on the
           merits of the case before the competent judicial authority, the period to be determined by the judicial
           authority ordering the measures where the law of a Member State so permits or, in the absence of such
           determination, within a period not exceeding 20 working days or 31 calendar days, whichever is the
           longer.
      4.   Where the measures to preserve evidence are revoked, or where they lapse due to any act or omission
           by the applicant, or where it is subsequently found that there has been no infringement or threat of
           infringement of an intellectual property right, the judicial authorities shall have the authority to order the
           applicant, upon request of the defendant, to provide the defendant appropriate compensation for any
           injury caused by those measures.
      5.   Member States may take measures to protect witnesses’ identity.




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1.        General Remarks:


          Both provisions concern measures to preserve evidence relating to the
          alleged infringement: According to Art. 7 of the IP Directive, such
          measures should explicitly be applicable even before the commencement
          of proceedings on the merits (or preliminary injunction proceedings). This
          provision has been – as is specifically indicated in the Explanatory
          Memorandum to the proposal for the IP Directive 1 – modeled on
          provisions such as the UK’s Anton-Piller order and the French saisie
          contrefacon. Accordingly, the right holder may initiate either a detailed
          description, with or without the taking of samples, or the seizure of
          infringing goods and, in appropriate cases, he should also have access
          to the materials and implements used in the production and/or
          distribution of these goods and the documents relating thereto. It may
          even be granted in exceptional cases in “ex parte” proceedings.

          Also Article 50 obliges TRIPS member countries to grant their judicial
          authorities the power to impose provisional measures for preserving
          evidence (Article 50 (1) b) inaudita altera parte (without the defendant
          being heard) where appropriate (see Article 50 (2). However, TRIPS
          contains only few indications regarding the extent, content and
          requirements of such measures to preserve evidence.

2.        Questions to be answered regarding content, requirements and
          extent


          a. Do you have in your national law measures which could be deemed
             analogous to or comparable with the measures described above?
          b. If so, what are the differences?
          c. Regarding content, requirements and extent: Reference is made to
             the catalogue of questions under B. I., which may equally apply to
             the measures according to the above provisions and which may be
             taken as a guideline for describing content, requirements and extent
             of the available means, in particular:
                  i)       Are there differences as to the types of IP?
                  ii)      To what extent must the infringement already be proven
                           beforehand by the claimant?
                  iii)     How (clearly) and to what extent must the claimant “specify”
                           the means of evidence to be produced?


1
    COM(2003) 46 final, page 21.




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            iv)     Are there other requirements which must be fulfilled?
            v)      Is the measure only applicable in view of proving the
                    infringement or is it possible to apply it to evidence relevant
                    for the extent of damages?
            vi)     Can such an order also be applied to identify the possible
                    existence of evidence, i.e. are there any means in your
                    system enabling the claimant to search for evidence?
            vii)    How can the order be enforced? For instance, is it possible
                    by means of such an order to enter the private sphere of the
                    opposing party (for instance premises) and/or to effectively
                    seize suspected “infringing” products? Who is entitled to
                    enter the respondent's private sphere?
            viii)   What are the consequences if the opposing parties refuse
                    access?
     d. What experiences have been made in the past with such measures?


3.   Questions to be answered regarding limits


     As the focus of the measures regarding the question whether and how
     and by means of what procedures secret information (the opposing
     party's business information, know-how etc. may be protected) is the
     same as indicated above in section B. I, reference is made to the
     catalogue of measures in B. I (3), Limits). This also relates to the extent
     and limits of the measure, including the question of how privileges such
     as attorney/client privileges are to be taken into consideration in your
     national system, i.e. the questions should be taken as a guideline for
     describing the limits of the means.


4.   Questions to be answered regarding future improvements

     a. Does your system comply with the TRIPS Agreement?
     b. Are there ambitions or motivation for further developments,
        improvements etc.?
     c.   Are there any governmental or public ambitions in your country to
          change the existing systems in the near future?
     d. The following question is particularly addressed to the National
        Groups within the European Union: Do you think that the laws of your
        national systems are already in compliance with the said provision of
        the IP Directive or is there an immanent need for legal change?




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III.   Article 47 TRIPS and Article 8 of the IP Directive
       Article 47 (TRIPS)

       Right of Information
       Members may provide that the judicial authorities shall have the authority, unless this would be out of
       proportion to the seriousness of the infringement, to order the infringer to inform the right holder of the identity
       of third persons involved in the production and distribution of the infringing goods or services and of their
       channels of distribution.


       Article 8 “Right of Information” (IP Directive)
       1.    Member States shall ensure that, in the context of proceedings concerning an infringement of an
             intellectual property right and in response to a justified and proportionate request of the claimant, the
             competent judicial authorities may order that information on the origin and distribution networks of the
             goods or services which infringe an intellectual property right be provided by the infringer and/or any
             other person who:
             (a)   was found in possession of the infringing goods on a commercial scale;
             (b)   was found to be using the infringing services on a commercial scale;
             (c)   was found to be providing on a commercial scale services used in infringing activities;
             or
             (d)   was indicated by the person referred to in point (a), (b) or (c) as being involved in the production,
                   manufacture or distribution of the goods or the provision of the services.
       2.     The information referred to in paragraph 1 shall, as appropriate, comprise:
             (a)   the names and addresses of the producers, manufacturers, distributors, suppliers and other
                   previous holders of the goods or services, as well as the intended wholesalers and retailers;
             (b)   information on the quantities produced, manufactured, delivered, received or ordered, as well as the
                   price obtained for the goods or services in question.
       3.     Paragraphs 1 and 2 shall apply without prejudice to other statutory provisions which:
             (a)   grant the rightholder rights to receive fuller information;
       (b)   govern the use in civil or criminal proceedings of the information communicated pursuant to this Article;
       (c)   govern responsibility for misuse of the right of information;
        or
       (d)   afford an opportunity for refusing to provide information which would force the person referred to in
             paragraph 1 to admit to his/her own participation or that of his/her close relatives in an infringement of an
             intellectual property right;
       or
       (e)    govern the protection of confidentiality of information sources or the processing of personal data.




1.     Remarks


       According to Article 8 of the IP Directive, the infringer and/or even any
       other person found in the possession of infringing goods or using
       infringing services can be ordered to provide information on the origin
       and the distribution networks of the infringing goods or services within the
       context of proceedings concerning the infringement of an intellectual
       property right and in response to a “justified and proportionate” request
       by the claimant. Apparently a requirement of this “Right of information” is
       that the infringement has been proven.
       This Article supplements Article 47 of the TRIPS Agreement.




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2.    Questions to be answered regarding requirements, extent and
      enforcement


      a. It would be interesting to know whether and how Art 47 of the TRIPS
         Agreement is implemented in the laws of your system?
      b. Do you think that the right holder must first prove that his property
         right is infringed in order to be entitled to assert this right?
      c. Art. 8 of the IP Directive may also be directed against third parties if
         the activity is on a “commercial scale”. Consequently it would be
         interesting to know if any experiences have been made in your
         country regarding requests which are directed against third parties.
      d. Do you think that this right should also be enforceable in preliminary
         injunction proceedings?
      e. Are there any ambitions in your country to change the law in view of
         complying with the TRIPS Agreement?


3.    Questions to        be    answered      regarding     limits   and     future
      improvements


      The assertion of a right of information according to the abovementioned
      provisions may also be in conflict with the opposing party's confidential
      information. In this respect reference is made to the questions listed in B.
      I. 3. and B. II. 3. These questions may be taken into consideration in
      order to illustrate the limits to the enforcement of the right of information.


      The same applies to the questions under B I. 4. and B II. 4 as to the
      description of any national ambitions in view of improving the legal
      system.


IV.   Miscellaneous questions


      The National Groups are invited to comment on any additional aspect
      which they find relevant with regard to the foregoing questions and the
      specific aspects of the production of evidence.




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Replies should be received before


                                June 6, 2005

and should be sent by email to the following address:


                                  AIPPI General Secretariat
                                 Tödistrasse 16
                                 8027 Zurich – Switzerland
                                 E-mail: mail@aippi.org


Note: It will be helpful if the Groups follow the order of the questions in their
Reports and cite the questions and numbers for each answer.




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