Enforcement of Intellectual Property Rights

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					   Enforcement of Intellectual
        Property Rights

Denis Cohen,
WIPO


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    General Obligation for Effective
      Enforcement of IP Rights
Article 41(1) of the TRIPS Agreement:
enforcement procedures must permit effective
action against any act of infringement of IP rights;
the remedies available must be expeditious to
prevent infringements and must constitute a
deterrent to further infringements
…but
No obligation to put in place a judicial system
distinct from that for the enforcement of law in
general” (Article 41(5) of the TRIPS Agreement)

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      Enforcement of IP Rights
            (Overview)
1. Action Before an Industrial Property Office
(“Opposition Procedure”)

2. Judicial procedures (Civil or Criminal
Courts)

3. Alternative Dispute Resolution (Arbitration
and mediation)
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              Avoiding Litigation
• A right-owner should first contact the
  competitor to point out the existence of his
  right. (Usually a simple letter drawing
  attention to the right)
• Advantages:
- the infringer may stop his activities, or
- cannot subsequently argue ignorance


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   Action Before an Industrial Property
                  Office
IP Offices frequently have quasi-judicial
functions in the administration of industrial
property systems, and provide a forum for
procedures for contesting rights under
consideration or granted by the office
Those procedures are referred to as
opposition procedures

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   Action Before an Industrial Property
                  Office

The expression “opposition” refers to all
possibilities open to third parties to intervene
before the IP Office both in proceedings
leading to the grant of a right and in
proceedings for contesting the grant after it
has occurred



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   Action Before an Industrial Property
                  Office
• Many countries (over 70%) provide for
opposition to trademark registration.

• Few countries provide for opposition to
patents     registrations  and/or designs
registrations (around 15%)

• Opposition is not available for copyright

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           Judicial Procedures
        Civil Court or Criminal Court?

According to Article 61 of the TRIPS, criminal
procedures must be provided for in case of
wilful trademark counterfeiting and copyright
piracy

The Agreement leaves it to Members to decide
whether to provide for criminal procedures in
other cases of infringement of IP rights

                                                 8
             Judicial Procedures

        Civil Court or Criminal Court?

Usually, 2 relevant criteria:
• Bad faith vs good faith

• Type of sanctions which may be inflicted
  (fines and imprisonment only in the case of
  criminal procedures)

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             Judicial Procedures


1. Need of an Attorney

IP Offices or WIPO are not entitled to interfere in
conflicts of law




                                                10
           Judicial Procedures
2. Need to bring evidence of the
   infringement
• “documentary evidence”
• “real evidence”
• the court may call for further evidence
   (hearing the parties, requests for
   information, production of documents,
   hearing witnesses, etc..).
• Market Survey Evidence (generally for
   trademark cases)
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           Judicial Procedures

 3. Evaluating Infringement
Most infringements are not slavish imitations
but have only a number of common features
with the IP Right

Therefore, the main task before initiating an
enforcement action is to assess whether the
alleged infringement falls within the scope of
the IP Right

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            Judicial Procedures
          (Evaluating Infringement)
Not always easy! For example, in the field of
trademarks:

  •“Lola” vs. “Louloi” (for restaurants)?
  •“Panci” vs. “Penca” (for pens)?
  •“Platini” vs. “Planet I” (for sport clothing)?
  •“Camarina” vs “Cremina” (for furniture)?

                                                    13
  Judicial Procedures
(Evaluating Infringement)




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           Judicial Procedures
      (Defense of non-infringement)
1. A defendant will usually start his defense
of non-infringement in the form of a
counterclaim: the IP right is invalid and hence
not enforceable.

The burden of the proof remains with the
defendant seeking revocation of the IP right


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            Judicial Procedures
       (Defense of Non-infringement)

2. If the IP right invoked is considered valid
  by the Court, the usual subsequent
  defense is that the alleged infringement
  simply does not fall within the scope of the
  IP Right



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        Provisional (Conservatory)
                Measures
Obligation to provide provisional measures:
Article 50 of the TRIPS Agreement: “Each
country must ensure that its judicial
authorities have the authority to order prompt
and effective provisional measures. Such
measures must be available in respect of any
intellectual property right”

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   Purpose of Provisional Measures
Provisional measures should be available in
two situations
1. to prevent infringing goods from entering
into the channels of commerce (border
measures)
2. to prevent the committing, or the
continuation of the committing, of acts of
piracy, and to secure evidence as to the
nature, quantity, location and destination of
the infringing goods
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             Border Measures

According to Article 51 of the TRIPS, border
measures must be provided at least, for
counterfeit trademark and pirated copyright
goods. The Article leaves flexibility to Member
governments on whether to include border
measures which involve other infringements of
IPRs


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              Border Measures
• The basic mechanism is that each Member must
  designate a "competent authority" (most often the
  custom authority) to which applications by right
  holders for customs action shall be lodged
  (Article 51 of the TRIPS)

• The right holder lodging an application to the
  competent authority must supply a sufficiently
  detailed description of the goods to make them
  readily recognizable by the customs authorities

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            Border Measures

The Agreement does not determine whether the
competent authorities must act upon their own
initiative or whether action must be taken on the
basis of an application from a right holder

→ It is up to each member to decide on this
issue



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               Border Measures
• In case of action of the competent authority,
  the importer and the applicant must be
  promptly notified of the detention of goods
  (Article 54)

• If the right holder fails to initiate proceedings
  leading to a decision on the merits of a case
  within 10 working days, the goods shall
  normally be released (Article 55).


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             Border Measures
Safeguards against abuse: the competent
authority may require the applicant to provide
a security or equivalent assurance sufficient
to prevent abuse.

However, such security or equivalent
assurance may not be such as to
unreasonably deter recourse to these
procedures (Article 53.1)

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 Other Type of Provisional Measures
• seizure of the goods suspected to be
  unauthorized copies
• sealing the premises where the
  unauthorized copies are being
  manufactured, packaged, stored or offered
  for sale;
• ordering the termination of the manufacture
  or distribution of the unauthorized copies;
• Border measures.
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           Provisional Measures

Inaudita altera parte. Effective use of
provisional measures may require that action
be taken without giving prior notice to the
other side. Therefore, the judicial authorities
must have the authority to adopt provisional
measures inaudita altera parte, i.e. without
prior hearing of the other side



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                  Remedies
Destruction. destruction or disposal outside
the channels of commerce of infringing
goods in such a manner as to avoid any
harm to the right holder
Publication of the decision of the court
Payment of litigation expenses (attorney
fees, expert fees, etc..)

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                   Remedies
Damages. Article 45 of the TRIPS provides
that the courts must be empowered to order
an infringer to pay the right holder adequate
damages

Common approach to assess damages:
  –on the basis of a normal license (payment of a
  royalty in respect of, for example, each infringing
  article)
  –Account of profit of the infringer

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               Remedies

Penal sanctions
• Fines
• Imprisonment, the maximum of which may
  be up to several years.




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     Contact


    www.wipo.int

denis.cohen@wipo.int




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