Enforcement of Intellectual Property Rights under the TRIPS Agreement
An Intellectual Property Right gives the owner the “exclusive right”, i.e. owner is entitled to prevent others from dealing with his Intellectual Property without his/her authorization. It prevents infringement of Intellectual Property.
TRIPS Agreement on Enforcement of IPRs:
The TRIPS Agreement is by its coverage, the most comprehensive international instrument on intellectual property rights dealing with all types of IPRs. It stipulates specific obligations related to the administrative and judicial procedure including, inter alia, the provision on evidence, injunction, damage, measures at the border against counterfeiting and penalties in case of infringement.
- TRIPS Provisions (Articles 41 to 61):
Section 1 to 5 of Part III of TRIPS Agreement is detailed in 21 Articles regarding enforcement procedures that are made available by the Members for effective action against infringement of Intellectual Property Rights covered under the Agreements.
Civil, Criminal and Administrative Remedies
Civil and Administrative Procedure and Remedies
The obligations of Members with respect to civil and administrative procedures on the merits of a case, as well as any resulting remedies, are addressed in Section 2 of Part III of the
TRIPS Agreement (Articles 42 to 49).
- Fair and Equitable Procedures:
Civil and administrative procedures must be fair and equitable (Article 42).
Article 49 requires the same principles to be applicable to them to the extent that civil remedies can be ordered as a result of administrative procedures on the merits of a case.
Article 43 describes how the rules on evidence should be applied in civil and administrative procedures. Where evidence that is likely to be important for one party is in the possession of the opposing party, the judicial authorities must be empowered to order that the evidence be produced. Any such order is, however, subject to conditions ensuring the protection of confidential information; this could, for example, be relevant where the production of evidence risks revealing trade secrets.
Judicial authorities must have the authority to award three types of remedies: injunctions, damages, and other remedies.
Article 44.1 says that the judicial authorities must be empowered to order injunctions, i.e. to order a party to stop any action that infringes Intellectual property rights.
Article 45.1 says that where the infringer acted in bad faith, the judicial authorities must be empowered to order an infringer to pay the right holder:
- adequate damages to compensate for the injury that the right holder suffered due to the infringement of his or her intellectual property rights; and
- expenses, which may include appropriate attorney fees.
- Right to Information:
With a view to assisting the right holder to find the source of infringing goods and to take appropriate action against other persons in the distribution channels, judicial authorities may be authorized 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
- their channels of distribution (Article 47).
- Indemnification of the defendant:
Article 48.1 requires courts to have the authority to order an applicant who has abused enforcement procedures to pay adequate compensation to the defendant who has been wrongfully enjoined or restrained.
Article 48.2 applies to the actions of public authorities and officials in the administration of any law pertaining to the protection or enforcement of Intellectual property rights.
Article 50 of the TRIPS Agreement requires Members to provide provisional enforcement measures to permit effective and expeditious action against alleged infringements.
The Agreement takes into account that enforcement at that point may not be possible where imported goods are involved and therefore incorporates special procedures regarding enforcement of Intellectual property rights at the border. These special requirements are contained in Articles 51 to 60 of the Agreement.
- Scope and Coverage:
The goods subject to border enforcement procedures must include at least counterfeit trademark and pirated copyright goods (Article 51).
- Procedural requirements and safeguards against abuse:
(a) Application, including evidence and description of goods: (Article 52).
(b) Notice of suspension: (Article 54).
(c) Duration of suspension: (Article 55).
(d) Posting of security/Payment of compensation: (Article 53.1 and Article 56).
- Right of inspection and Information:
Where goods have been found infringing as a result of a decision on merits, the Agreement leaves it to Members to decide whether the right holder should be enabled to be informed of other persons in distribution channel so that appropriate action could also be taken against them (Article 57).
Under Article 59, the competent authorities must have the power to order destruction or disposal outside the channels of commerce of infringing goods in such a manner as to avoid any harm to the right holder.
- Special Rules for ex officio action:
Providing for ex-officio action by competent authorities is not mandatory under the TRIPS Agreement. However, where Members provide for the competent authorities to act upon their own initiative and to suspend the release of goods on the basis of prima facie evidence of IPR infringement, certain additional rules apply (Article 58).
Article 61 stipulates that criminal procedures and penalties are only mandatory in cases of willful acts; of trademark counterfeiting or copyright piracy; carried out on a commercial scale.
Criminal sanctions include imprisonment or monetary fines sufficient to provide a deterrent, with the penalties applied for crimes of a corresponding gravity.
Dispute Settlement Mechanism
IP disputes, being high valued, need effective and prompt provisions for protection against infringement and for providing remedies for such infringement, an efficient dispute resolution mechanism. The Alternative Dispute Settlement Mechanism has been a part of the dispute resolution mechanism in the absence of the well-established judicial system. It is an effective mode to resolve the disputes in the IP world, both in developed and developing countries.
The Dispute Settlement Body (DSB) is hereby established to administer the rules and procedures and the consultation.
The Dispute Settlement Body shall have authority to establish panels, adopt panel and Appellate Body reports, maintain surveillance of implementation of rulings and recommendations, and authorize the suspension of concessions and other obligations under the covered agreements.
- Where more than one Member requests establishment of a panel related to the same matter, a single panel may be established to examine these complaints taking into account the rights of all Members concerned.
- The single panel shall organize its examination and present its findings to the DSB and If one of the parties to the dispute so requests, the panel shall submit separate reports on the dispute concerned.
- If more than one panel is established to examine the complaints related to the same matter, to the greatest extent possible the same persons shall serve as panellists on each of the separate panels and the timetable for the panel process in such disputes shall be harmonized.
Scope of DSB
- The Dispute Settlement Body shall inform the relevant WTO Councils and Committees of any developments in disputes related to provisions of the respective covered agreements.
- The Dispute Settlement Body shall meet as often as necessary to carry out its functions within the time-frames provided in this Understanding.
Dispute Settlement Body under WIPO
WIPO Arbitration and Mediation Center were established in 1994 as an important and independent part of the WIPO, as an intergovernmental and not for profit organization. It aims to promote settlement of IP disputes through Alternative Dispute Resolution Mechanism.
Role of the WIPO Arbitration and Mediation Center:
- It maintains the database for matters;
- It assists the parties to the proceedings in commencing and handling of the proceedings;
- It assists in drafting the clauses of various contracts;
- It administers the financial matters regarding proceedings, and other fees by consulting the parties to the proceedings;
Functions of the WIPO Arbitration and Mediation Center:
- It assists the parties to the proceedings in the selection of the dispute resolution mechanism as well as the arbitrators, mediators or other experts, etc.;
- It publishes various documents and circulars regarding the settlement of Intellectual Property disputes;
- It provides for practical training in international commercial law, for conducting arbitration proceedings under the WIPO Arbitration and Expedited Arbitration Rules;
- It provides an option for online administration of cases at no cost, to save time and money, where the information regarding the cases filed in eADR is protected and encrypted ensuring confidentiality;
Advantages of Dispute Resolution Procedures offered by the WIPO Arbitration and Mediation Center:
- It ensures the confidentiality of the information submitted;
- It is time, money and cost-saving as compared to the other judicial systems;
- It provides for flexible procedures;
- It has a single forum;
Concluding, the TRIPS agreement is the most important agreement with respect to the international legal framework. It lays down the principles governing the Intellectual Properties and their enforcement by providing for effective remedies.