November 20, 1996
Counterfeiting and Enforcement Committee
WHEREAS, it is the finding of the Counterfeiting and Enforcement Committee's Remedies and Penalties Subcommittee that Part III of the TRIPS Agreement generally represents an advance in setting minimum standards for the enforcement of rights of trademark owners;
WHEREAS, countries are required to implement legislation and/or promulgate regulations to comply with the TRIPS Agreement by the year 2000 if they wish to remain a member of the World Trade Organization; and
WHEREAS, it is in the interest of trademark owners to have the strongest enforcement mechanisms possible to protect their trademarks from potential infringement and confusion;
BE IT RESOLVED, that the International Trademark Association encourages nations to enact legislation and/or promulgate regulations that go beyond the minimum enforcement standards contained in Part III of the TRIPS Agreement, specifically:
- Decisions on the merits of a case should be in writing and should set forth the rationale for the decision. (See Art. 41.3)
- All parties to a dispute shall be required to produce all relevant and reasonably available evidence that is in its control (subject to confidentiality protections) which is needed to establish a prima facie case for the party's claims or defenses. (See Art. 43.1)
- Victims of infringement shall have an absolute right to obtain information regarding the identities of possible infringers. (See Art. 47)
- Innocent infringers and/or government authorities should not be permitted to dispose of or circulate infringing goods into the marketplace. (See Art. 44.1)
- There should be provisions for both imprisonment and fines as available criminal sanctions for willful infringement. (See Art. 61)
Each nation should include search and seizure provisions as additional enforcement measures. (See Art. 50)
Poor enforcement and the subsequent growth in counterfeiting and piracy were the principal motivations behind the Trade-Related Aspects of Intellectual Property Rights Agreement (the TRIPS Agreement). The enforcement provisions contained in Part III are at the heart of the basic principles set forth in the TRIPS.
Part III of the TRIPS Agreement includes:
- provisions relating to general obligations (e.g. fairness and equity)
- civil and administrative procedures and remedies (e.g. evidentiary proof, injunctive relief, damages, right of information, indemnification of defendants)
- special requirements related to border measures (e.g. notice and duration of suspension, indemnification)
- criminal procedures (e.g. imprisonment and fines)
Over a 2-year period, the Subcommittee undertook an analysis of Part III of the TRIPS Agreement to determine whether it provides adequate minimum standards for protection of the rights of trademark owners. The Subcommittee found that the enforcement provisions constitute a very substantial step forward in ensuring that intellectual property rights are enforceable and enforced, and in providing a platform for the international business and legal communities to raise intellectual property standards worldwide.
However, members did find that there are several weaknesses in Part III which some countries may choose to exploit in order to avoid implementation of effective enforcement measures. Accordingly, the Resolution makes recommendations on how countries should go beyond specific enforcement standards contained in Part III of TRIPS.
A. Article 41.3
Article 41.3 states: "Decisions on the merits of a case shall preferably be in writing and reasoned. They shall be made available at least to the parties to the proceeding without undue delay. Decisions on the merits of a case shall be based only on evidence in respect of which parties were offered the opportunity to be heard."
Comments: Decisions on the merits of a case should always be in writing and should set forth the rationale for the decision. This requirement should not be optional. Without written decisions, countries that are disinclined to enforce intellectual property rights can easily side-step scrutiny of their commitment to enforcement. Moreover, the right to appeal is greatly hampered if the appellant does not know the grounds for the decision against him.
B. Article 43.1
Article 43.1 states: "The judicial authorities shall have the authority, where a party has presented reasonably available evidence to support its claims and has specified evidence relevant to the 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 to appropriate cases to conditions which ensure the protection of confidential information."
Comments: This Article apparently only applies where the plaintiff "has specified evidence...". Any party to an intellectual property enforcement action should be required to produce, at a minimum, any relevant and reasonably available evidence in its control (subject to confidentiality protections) needed to establish a prima facie case or defense. The duty to produce supporting evidence should not be limited to evidence that the other party is able to specify. One of the greatest frustrations in enforcing intellectual property rights in many developing countries is that the alleged counterfeiter or infringer is permitted to make assertions without producing any supporting evidence and which cannot be countered by the plaintiff, because the evidence in question is wholly in the control of the defendant and/or because the plaintiff would be required to prove a negative. All parties should at least produce reasonably available evidence in support of their claims and defenses. Without such a requirement, the opportunity for abuse and fraud is too great.
C. Article 47
Articles 47 states: "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."
Comments: There is no reason for judicial authorities to have the discretion as to whether the names of third persons are to be divulged to the trademark owner. The right holder should have an absolute right to investigate such a third person if it so desires. However, the judicial authorities may then have some discretion in fashioning remedies to be granted against these people.
Another loophole appears with the phrase "...unless this would be out of proportion to the seriousness of the infringement...". It may be considered that a small trader has only committed a minor case of infringement and that he may be at the end of a very long chain. Nonetheless, the information should be disclosed to the plaintiff in order to reveal a potentially major source of supply of counterfeit goods.
D. Article 44.1
Article 44.1 states: "The judicial authorities shall have the authority to order a party to desist from an infringement, inter alia to prevent the entry into the channels of commerce in their jurisdiction of imported goods that involve the infringement of an intellectual property right immediately after customs clearance of such goods. Members are not obliged to accord such authority in respect to protected subject matter acquired or ordered by a person prior to knowing or having reasonable grounds to know that dealing in such subject matter would entail the infringement of intellectual property right."
Comments: It is not clear what will ultimately happen to imported goods which are prohibited from entering "channels of commerce." In the absence of an obligation to destroy the goods, it leaves open the possibility of the goods being sold off by customs authorities and therefore being recirculated in the marketplace. Infringing goods should be destroyed regardless of the innocence of the importer.
Additionally, Article 44.1 provides members with the discretion as to whether injunctive relief is available against an innocent infringer. Where infringement has been found, injunctive relief should always be obtainable unless substantial equitable concerns dictate otherwise.
E. Article 61
Article 61 states: "Members shall provide for criminal procedures and penalties to be applied at least in cases of willful trademark counterfeiting or copyright piracy on a commercial scale. Remedies available shall include imprisonment and/or monetary fines sufficient to provide a deterrent, consistently with the level of penalties applied for crimes of a corresponding gravity. In appropriate cases, remedies available shall also include the seizure, forfeiture and destruction of the infringing goods and of any materials and implements the predominant use of which has been in the commission of the offense. Members may provide for criminal procedures and penalties to be applied in other cases of infringement of intellectual property rights, in particular where they are committed willfully and on a commercial scale."
Comments: Article 61 provides for imprisonment and/or monetary fines. This gives authorities the option of providing only fines and not imprisonment as a penalty. Both imprisonment and fines should be available as penalties with the court having the discretion as to what penalty to impose.
F. Article 50
Article 50 states: "The judicial authorities shall have the authority to order prompt and effective provisional measures:
a) to prevent an infringement of any intellectual property right from occurring, and in particular to prevent the entry into the channels of commerce in their jurisdiction of goods, including imported goods immediately after customs clearance;
b) to preserve relevant evidence in regard to the alleged infringement." Comments: While article 50 provides that members shall have the authority "to preserve relevant evidence", there is no particular reference to the availability of "search and seizure" orders. Article 50 therefore leaves open the prospect of a court merely ordering a defendant to deliver infringing articles to the courts -- premises or to their lawyers -- premises, thereby providing a defendant with the opportunity of possibly destroying the evidence.
While Part III of the TRIPS Agreement cannot be amended in view of the significant and lengthy negotiations that were involved, individual countries should recognize that these standards are only minimum requirements. Accordingly, legislation and/or regulations to implement Part III of the TRIPS Agreement should be strengthened and supplemented as proposed by INTA, in order to more fully protect the rights of trademark owners.