Intellectual Property and International Trade: Enforcement

and Dispute settlement

Dr Susan Isiko Strba

Customised Training Programme for Officials from Taiwan Bilateral and Multilateral Trade Agreements Negotiation and Dispute Settlement

Geneva 16 September 2013 – 13 December 2013

The Graduate Institute Executive Education Program

outline

• Introduction

• Enforcement

– In the WTO (TRIPS Provisions)

– In WIPO (Practice)

• Dispute settlement

– In the WTO (China Case)

1. Enforcement

1.1. Enforcement provisions under TRIPS

• General provisions

• Civil and Administrative Procedures

• Remedies

• Border Measures

• Criminal Procedures

General obligations (article 41 TRIPS)

• 41.1. Avail enforcement procedures under Members’ national law, so as to afford

• Effective action against any act of infringement

– Expeditious remedies to prevent infringement

– Remedies that constitute a deterrent to further infringement

• Applied in a manner to avoid creation of barriers to legitimate trade

• Provide safeguards against their abuse

General provisions (2)

• Enforcement procedures to be fair and equitable. Not unnecessarily complicated or costly, or entail unreasonable time limits or unwarranted delays

• Decisions on merits of a case to be based only on evidence in respect of which parties were offered the opportunity to be heard

General provisions (3)

• Possibility to review final administrative decisions by a judicial authority

• No obligation to put in place a judicial system for the enforcement of IPRs distinct from that for enforcement of law in general, nor

• Affect the capacity of Members to enforce their law in general

General provisions (4)

• Enforcement territorial. Requires minimum standards and not uniform standards of enforcement (article 1.1 TRIPS – Members to devise appropriate methods of implementing the provisions of the agreement; article 5.2 Berne Convention and article 9.1 TRIPS – means of redress afforded to the author to protect his rights shall be governed exclusively by the laws f the country where protection is claimed)

Civil and administrative procedures and remedies

• Article 42 TRIPS:

• Mandatory to avail civil procedures

• Must be fair and equitable

• Not be overly burdensome

• Provide means to identify and protect confidential information (if not contrary to existing constitutional requirements)

Remedies

• Injunctions – to prevent entry into channels of commerce

• Remuneration (instead of injunction) = compulsory licensing

• Other remedies, if consistent with Member’s law; otherwise

• Declaratory judgement

• Adequate compensation

Remedies (2)

• Art. 45 TRIPS. Damages adequate to compensate injury

• Expenses

• Order recovery of profits and/or

• Payment of pre-established damages

• Art. 46 TRIPS. Disposal of infringing goods outside the channels of commerce, unless contrary to existing constitutional requirements

Remedies (3)

• Dispose of materials and implements predominantly used to create infringing goods, outside the channels of commerce

• Need proportionality between seriousness of infringement and remedies orders; and

• Interests of third parties

• Removal of trademark unlawfully affixed not sufficient.

Border Measures

• Suspension by the customs authority of the release of infringing goods (article 51 TRIPS)

• Remedies under border measures (article 59 TRIPS)

– Destruction or disposal of infringing goods

– In case of counterfeit trademark goods, no re-exportation of infringing goods in an unaltered state or subject to a different customs procedure

Criminal procedures (article 61 TRIPS)

• Criminal procedures and penalties in case od wilful trademark counterfeiting or copyright piracy on a commercial scale

• Remedies: – Imprisonment and/or monetary fines sufficient to provide a

deterrent – Seizure, forfeiture, destruction of the infringing goods, material

or implements

• Criminal procedures and penalties in other cases of infringement of IPRs committed wilfully and on commercial scale

• i.e enforcement measures should be diversified in terms of categories of IPRs

1.2. Enforcement in WIPO

• Advisory Committee on Enforcement

• WIPO Development Agenda Recommendation 45

• WIPO Strategic Goal VI

WIPO Strategic Goal VI

• WIPO Advisory Committee on Enforcement

– Mechanism to coordinate work under Strategic Goal VI

• shift in focus from purely enforcement-related activities to a broader approach taking account of Member States’ socio-economic and development-oriented concerns

Development Agenda

• Development Agenda Recommendation 45. • 45. To approach intellectual property enforcement in

the context of broader societal interests and especially development-oriented concerns, with a view that “the protection and enforcement of intellectual property rights should contribute to the promotion of technological innovation and to the transfer and dissemination of technology, to the mutual advantage of producers and users of technological knowledge and in a manner conducive to social and economic welfare, and to a balance of rights and obligations”, in accordance with Article 7 of the TRIPS Agreement.

Building respect for IP

• Education

• Training

• Build awareness and understanding of IP

• Strengthen capacity for enforcement

• Support empirically-based discussion on enforcement issues

• Technical assistance

Training and awareness-rising in the field of building respect for IP

• Various activities and forums, a variety of target groups

• Assistance in developing national strategies for building respect for IP

• Regional workshops on building Respect for IP

• Participation in the Annual Congress on Combating Counterfeiting and Piracy

• Workshops on enforcement of IP

Training and awareness-rising (2)

• Training courses on the enforcement of IPRs

• Workshops on building respect for IP for judges and law enforcement officials (prosecutors, police, customs officials)

• WIPO-WTO advanced course on IP for Government officials (enforcement of IP)

• More than just training and awareness-rising

The Reach of WIPO enforcement

• Works in partnership: – National or regional IP offices – International organizations eg WCO, INTERPOL – Regional IP organizations eg ARIPO, OAPI – Regional economic organizations, eg ECOWAS,

UEMOA (West African Economic and Monetary Union) – Universities – Public and private organizations

• Varied audience and target groups • Goes beyond TRIPS, eg on internet, e-commerce,

etc

Border measures

• Procedure - TRIPS article 52 • “Any right holder initiating the procedures under Article 51

shall be required to provide adequate evidence to satisfy the competent authorities that, under the laws of the country of importation, there is prima facie an infringement of the right holder’s intellectual property right and to supply a sufficiently detailed description of the goods to make them readily recognizable by the customs authorities. The competent authorities shall inform the applicant within a reasonable period whether they have accepted the application and, where determined by the competent authorities, the period for which the customs authorities will take action.”

• Capacity building regarding goods identification • Various countries in transition reported that customs

officers do not always have sufficient experience in dealing with IP enforcement cases, especially with a view to effective identification of goods.47 In addition, the Hungarian customs administration explained that customs officers’ IT knowledge was not always sufficient to take action against infringements through the Internet. As this was considered a universal problem, further training programs for the sharing of knowledge provided by right holders were proposed.

Legal costs in civil and administrative proceedings

• Article 45.2, first sentence, of the TRIPS Agreement requires the authority “to order the infringer to pay the right holder expenses, which may include appropriate attorney’s fees.

Simplified procedure

• Article 11, EU Regulation No. 1283/2003

• an out-of-court procedure, enabling customs authorities that have detained goods suspected of infringing IPRs to dispose of those goods without there being a need to establish whether an IPR has been infringed under national law.

Simplified procedure

• Legal ground for disposal under this procedure:

• (i) a written agreement by the declarant, the holder or the owner of the goods “to abandon the goods for destruction”

• (ii) a presumption of such agreement, if the declarant, the holder or the owner of the goods has not specifically opposed the destruction within a prescribed period.

• Less time-consuming and more cost-effective

Follow up procedures

• Duration of court proceedings long

• lengthy proceedings would discourage the use of the legal system

• long follow-up procedures might incur high storage costs for right holders and/or customs administrations

• the long duration of criminal proceedings, combined with relatively lenient sentences had a limited deterrent effect.

Follow up procedures

• Capacity building

• the judiciary does not always have sufficient experience in adjudicating IP-related cases, including civil, administrative and criminal procedures and sanction

• training programs to improve such knowledge was is essential to improve IP litigation

Counterfeiting and piracy over the internet: problems

• An increasing and serious problem?

• Almost impossible to take action against infringement outside own jurisdiction – need cooperation

• a lack of technical and IT knowledge as well as the necessary technical equipment (e.g., Internet access) discouraging the competent authorities from dealing with such cases

2. Dispute Settlement – China Case

Participation of developing countries in WTO IP Dispute settlement

• Not many – mostly as third parties

• Lack of expertise

• Cost – 2m USD just to file a complaint

• Governments as political filters – reluctant to file cases