September 16, 1998
Sponsoring Committee: Remedies and Penalties Subcommittee of the Anticounterfeiting and Enforcement Committee
The Resolution and Report set out INTA's position regarding the World Intellectual Property Organization (WIPO) Model Provisions for National Laws settled by the WIPO Committee of Experts on Measures Against Counterfeiting and Piracy April 25 to 28, 1988 (document C&P/CE/2) (the Model Provisions).
WHEREAS, it is recognized that the counterfeiting of trademarks harms world trade and world economies and is therefore an issue of great concern to the international community, and that action against counterfeiting must proceed on an international level with provisions against such activities that are as uniform as possible between countries;
WHEREAS, the Agreement on Trade Related Aspects of Intellectual Property (TRIPS) incorporates in Part III of its text provisions relating to the enforcement of Intellectual Property Rights including a requirement that members subscribing to the Agreement shall provide enforcement procedures which permit effective action against any act of infringement of Intellectual Property Rights, including expeditious and deterrent remedies to prevent infringements;
WHEREAS, member countries of the World Trade Organization ('WTO') will be amending their laws to comply with TRIPS and may seek guidance as to how to interpret and implement the enforcement provisions of TRIPS; and
WHEREAS, the Model Provisions represent a valuable set of guidelines for the implementation and harmonization of legislation to combat counterfeiting and generally offer a standard of protection which goes beyond the minimum standards prescribed by TRIPS, and the following report highlights particular issues that should be considered whenever the Model Provisions are used as guidance by nations seeking to implement effective measures against counterfeiting;
BE IT RESOLVED, subject to the amendments recommended and comments made in the following report, the International Trademark Association commends the Model Provisions to all nations, whether or not members of the World Trade Organization, as providing valuable guidance and practical enforcement mechanisms for effective enforcement action against counterfeiting.
Benefits of the Model Provisions
The Model Provisions were produced by the WIPO Secretariat and subsequently debated by a WIPO Committee of Experts. The intention behind the Model Provisions was two-fold: first to make legislators, governments and the general public aware of the need to combat counterfeiting and piracy; and second to provide governments with a set of proposals that could be used as a guide when formulating national laws to tackle counterfeiting and piracy.
Since the Model Provisions were written, harmonization of legislative protection against counterfeiting has become increasingly important for those seeking to protect their intellectual property rights against ever more sophisticated and organized infringers who operate on an international level. The spread of new technologies and governmental efforts to reduce obstacles to legitimate cross-border trade make the adoption of effective and universal minimum trademark enforcement standards all the more pressing.
The TRIPS Agreement has drawn attention to the importance of harmonization of enforcement standards. By the year 2000, developing countries that are members of the World Trade Organization will be required to be in compliance with TRIPS. As a result, many nations will be in the course of drafting new or amended legislation and procedures. However, the TRIPS provisions, for the most part, set out general principles and objectives with little guidance as to the precise construction of the procedural mechanisms which may be required to meet them.
The Model Provisions represent a workable means by which the general obligations set out in Article 41 of TRIPS may be met and even go beyond the minimum standards of TRIPS in a number of respects. However, the following report recommends certain amendments to the Model Provisions and makes a number of comments intended to strengthen the ability of authorities to fight counterfeiters and to relieve trademark owners of some of the burdens they face in protecting their marks.
Summary of Recommended Amendments
For Article A of the Model Provisions (Definitions of Counterfeiting and Piracy), the Report recommends amending the definition of counterfeiting so that it is broad enough to include such matters as preparation for manufacturing of counterfeit goods, counterfeit service marks, the transportation and storage of counterfeit goods, and the organization and financing of counterfeiting activity.
Recommendations regarding Article B (Conservatory Measures) include providing for seizure of all materials and implements used to manufacture or package counterfeit goods and imprisonment as a sanction against failure to comply with a disclosure order.
The Report suggests that Article C (Civil Remedies) include a provision for trademark owners to recover costs incurred in the detection and investigation of acts of counterfeiting and that costs of destruction of counterfeit goods should not be borne by trademark owners.
For Article D (Criminal Sanctions), it is recommended that there be an express provision for making information about criminal counterfeiters available to relevant authorities in other countries. It is also suggested that courts should not focus their enforcement efforts only on counterfeit goods which represent a health or safety risk, and give equal attention to fighting other types of counterfeiting which cause economic and social harm.
Prior INTA Committee Deliberations
This Resolution and Report builds on the work of the 1995-96 Model Counterfeiting Provisions Task Force, which completed a comparative analysis of the anticounterfeiting laws and procedures of Germany, Japan, the United Kingdom and the United States as well as a comparison of the Model Provisions with the enforcement provisions of Part III of TRIPS.
Based on these comparisons, the 1996-97 and 1997-98 Remedies and Penalties Subcommittee of the Anticounterfeiting and Enforcement Committee (ACEC') reviewed, and where appropriate made recommendations for amendments to, the Model Provisions. The Subcommittee also took into account INTA's Resolutions on the enforcement provisions of the TRIPS Agreement dated November 20, 1996 and on the WCO Model Legislation dated November 19, 1997.
Upon Board approval, it is the intention of the ACEC to communicate this Resolution and Report to the World Intellectual Property Organization (WIPO) and to pursue means by which the Model Provisions may be utilized by individual nations, by WIPO, and by other bodies and associations as a guide to the introduction of practical mechanisms to combat piracy, whether in the context of TRIPS compliance or otherwise.
In addition, the Committee will forward a copy of these documents to the relevant staff members at INTA, so their content may be incorporated as appropriate in the INTA Model Law Guidelines.
Finally, the Committee will ensure that reference is made to this Resolution and Report by the TRIPS Subcommittee and other relevant committees of the TAP Group and their successors, and that it is passed to the CAR Group so that it may be made available to INTA members and others as appropriate.