Activity 2.1.3 Workshops and Trainings on “Enforcement of Industrial Property Rights” October 2014

Activity 2.1.3 Workshops and Trainings on “Enforcement of Industrial Property Rights”

October 2014

2© Silvia Navares

Enforcement of IP Rights

1) Application procedure/ formalities

2) Examination at IP offices

3) Grant of right4) Enforcement

Counterfeit and Piracy cause

Loss of sales revenue Loss of tax revenue Loss of employment Decline in investment Cultural consequences – dis-incentive to

engage in creative work Risks for the health of the consumer. Dilution of the trade mark

What items are being Counterfeited?

Sports wear Tobacco Jewellery and watches Pharmaceuticals (medicines for cancer) and pesticides Foodstuffs and beverages Children’s toys Cars, car parts (pe. Airbags) , pool parts Electronics,Electrical supplies Personal care products ip4inno Module 5D: Counterfeiting and Piracy www.ip4inno.eu

Anything that can make money,especially if profit margins are

largee.g. razor blades

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What is a Violation of Intellectual Property Rights?

Intellectual property rights are property rights that belong to their owners. Therefore, only the owners of such rights or persons they have authorised are entitled to use and exploit them.

By contrast, any use of IP rights by non-authorised persons constitute an infringement of such rights and is to be condemned at Court level.

Different kinds of use are normally prohibited: strict reproduction of the IPR; imitation, manufacturing, distribution, advertising, importing goods bearing IPR without the authorisation of the right holder.

Counterfeit: IP rights infringements.

Piracy: Intelectual Property rights infringements.

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INCREASING PHAENOMENON

REPRESENTS THE SECOND TYPE OF ORGANIZED CRIME AFTER DRUG CRIME.

Counterfeit and Piracy

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Parallel Imports is not Counterfeit

Parallel import: due to the principle of territoriality, it is in principle illegal to import a real product from another country. However, this rule is not absolute. There are paralell or “grey imports” when prices are cheaper in a third country.

In certain areas, such as within the European Exchange Area that comprises the EU and the European Free Trade Agreement countries (EFTA), the principle of free movement of goods prevails and exhausts IPRs. It means that it will be possible to import products from one country to another one.

Enforcement of IPRs were traditionally addressed by national laws and not at the International level. This changed with the set of enforcement rules by the TRIPS Agreement in its Part III, in year 1994. At international level, criminal sanctions were first addressed in the TRIPS Agreement in Article 61 but in very general terms.

At European level, the EU adopted the first Customs Regulation No 3294/94 on 22 December 1994, which scope of the regulation was amended and broaden in 2003 and again in 2013 with Regulation 608/2013.

In 2004, the first harmonised remedies for IP infringements were gathered under the Directive 2004/48/EC on the enforcement of intellectual property rights.

Ongoing negotiations in the EU about drafting a Directive on criminal enforcement of IP rights.

Enforcing IPRs within the EU – A Bit of History

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“Infringements/ Defences”

Trademarks – infringing acts offering for sale goods or services bearing a mark the

same or similar to a registered mark with the intention of confusing, blocking or diverting customers from the goods and services of the trade mark owner)

Trademarks – defences (exceptions) the use of a mark in a non-trade context, like

discussing coca-cola with people but not trying to sell them a drink at the same time; using your own name (even if you are Mr McDonald); using a mark in ways OTHER than as a "badge of origin".www.ip4inno.eu. Module 5A: 01

ENFORCEMENT OF IP RIGHTS

http://www.ip4inno.eu/

Examples of Counterfeiting

Applying a trademark without the authorization of the rights holder to a product that is not manufactured by the company that holds the trademark;

Manufacturing a Disney doll (ie. Elsa from the film Frozen) that represents the main character of a well known film without the authorization of the rights holder; or

Making copies of a DVD without the authorization of the copyright owner.

ip4inno Module 5D: Counterfeiting and Piracy www.ip4inno.eu

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ENFORCEMENT

Effective Legislation Institutional Cooperation Awareness

Pillars of Enforcement

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Legislation


Civil Enforcement

Caused by a civil infringement

Private prosecution

Criminal Enforcement

Caused by a criminal infringement

Allows public prosecution

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Patents and Utility models: are to be enforced through civil lawsuits some territories have criminal penalties

Trade marks, Designs: can be enforced through both private and public

prosecution, it depends of the facts

Copyright: can be enforced through both private and public

prosecution

IP laws are territorial in scope. Special legal advice should be sought.

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Authorities concerned with IP rights Enforcement

Primarily National IP-offices Relevant ministries Police Customs and Taxation authorities Courts

www.ip4inno.eu. Module 5A: 01 ENFORCEMENT OF IP RIGHTS


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Steps to take when encountering counterfeited and pirated goods

Confirm the IP right of the product (registered, valid, classes)

Does the counterfeited and pirated good actually infringe the IP right?

Find out distribution channel of the counterfeited and pirated goods

Try to get copies of the counterfeited and pirated goods (evidence)

Contact enforcement institutions such as customs office and the police (lodge application)

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How to apply for action by the customs authorities in the EU?

National Action: all national IP rights

Community Action: community trademark community design right

www.ip4inno.eu. Module 5A: 01 ENFORCEMENT OF IP RIGHTS


TRIPS Agreement.

Trade Related Aspects of Intellectual Property Rights (TRIPs) is Annex 1C of the Marrakesh Agreement Establishing the World Trade Organization (WTO), signed in Marrakesh, Morocco on 15 April 1994.

Sets out minimum levels of standards Compulsory provisions IP right holders will know across borders

what their rights are. However, sanctions on criminal activities

are not harmonised Intellectual Property Rights (include

Industrial Property Rights).

Aim: Reduce distortions and impediments to international trade, and taking into account the need to promote effective and adequate protection of intellectual property rights, and to ensure that measures and procedures to enforce intellectual property rights do not themselves become barriers to legitimate trade;

Activity 2.1.3 1. TRIPS AGREEMENT

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A. GENERAL OBLIGATIONS Enforcement procedures shall:

a) Be fair and equitableb) Not be complicated or costly, or entail unreasonable time-limits

c) Permit EFFECTIVE PROTECTION against infringementsd) Foresee remedies to prevent future infringements e) Avoid the creation of barriers to legitimate trade and provide for safeguards against their abuse.

Activity 2.1.31. TRIPS AGREEMENT

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f) Foresee the right to a review by a judicial authority

Of the final administrative decisions (but not of acquittals in

criminal cases).

g) Not mean the creation of a new judicial system just for enforcement.

claim. procedures shall not imposeNo burdensome requirements concerning mandatory

personal appearances


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B. CIVIL AND ADMINISTRATIVE PROCEDURES

For the enforcement of all Intellectual Property Rights regulated in the TRIP´s

Right to written Notice (for Defendants)that will be timely and shall contain sufficient detail of the claim.

Shall provide means to identify and protect confidential information (unless it is not constitutional).


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B. CIVIL AND ADMINISTRATIVE PROCEDURES

Evidence (Art.43)

When a party to a proceeding voluntarily and without good reason:

a) refuses access to or does not provide necessary information within a

reasonable period or b) significantly impedes a procedure relating to an

enforcement action

Judicial authorities may be given the authority to make preliminary and

final determinations, on the basis of the information presented to them,

including the complaint of the party adversely affected by the denial of

access to information, provided that the parties had the opportunity to be

heard.


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CIVIL PROCEDURES. INJUNCTIONS (Art.44)Judicial authorities may order a party to desist from an

infringement, to prevent the entry into the channels of commerce in their

jurisdiction of imported goods that involve the infringement of an IP rights,

immediately after customs clearance of such goods.

Exception: Goods acquired or ordered by a person prior to knowing or having reasonable grounds to know that they

constituted an intellectual property right infringement of an

Activity 2.1.3II. LEGISLATION ON ENFORCEMENT.

1. TRIPS AGREEMENT

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CIVIL PROCEDURES. DAMAGES (Art.45)

Judicial authorities could order the infringer to pay the right holder:

a) damages to compensate for the injury suffered because of an

Infringement caused by an infringer who knowingly, or with reasonable

grounds to know, engaged in infringing activity.

b) the right holder´s expenses (pe. attorney's fees).

And In appropriate casesc) recovery of profits and/or payment of pre-established

damages even where the infringer did not knowingly, or with reasonable grounds to know, engage in infringing activity


1. TRIPS AGREEMENT

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CIVIL PROCEDURES. Other remedies (Art.46)

Judicial authorities could order, without any compensation, and considering proportionality

between seriousness of the infringement Remedies ordered &3rd Parties Interests

that infringing goods be

a) disposed of outside the channels of commerce in such a manner as to avoid any

harm caused to the right holder or minimize the risk of further infringements.

b) destroyed (unless contrary to existing constitutional rules).

Removal of the trademark unlawfully affixed (other than in

exceptional cases) shall not be sufficient to permit release of the goods into the channels of commerce.


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CIVIL PROCEDURES. Right of Information (Art.47)Judicial authorities may be empowered, unless

unproportioned to the seriousness of the infringement, to order the

infringer to inform the right holder of:

a) the identity of third persons involved in the production and distribution of the infringing goods or services

b) their channels of distribution.


1. TRIPS AGREEMENT

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CIVIL PROCEDURES. Indemnification of the Defendant (Art.48)

Adequate compensation for the injury caused by the party at whose request measures were taken and who has abused enforcement procedures.

It may include the appropriate attorney's fees.

Public authorities and officials shall be exempted their from liability when there remedial measures where taken or intended in good faith in the course of the administration of the law.


1. TRIPS AGREEMENT

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CIVIL PROCEDURES Provisional Measures (Art.50)Prompt and effective provisional measures:a) to prevent an infringement of any IP right from occurring,

and inparticular to prevent the entry into the channels of

commerce in their jurisdiction ofgoods, including imported goods immediately after customs

clearance;b) to preserve relevant evidence in regard to the alleged

infringement.

Applicant can be required to provide reasonably available evidence.

They can be adopted inaudita altera parte where:a) delay will cause irreparable harm to the rightholder, orb) there is a demonstrable risk of evidence being destroyed.


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CIVIL PROCEDURES Provisional Measures (Art.50)

Notice.- Shall be given to the parties, at the latest after the execution of the measures.

Right for a Review.- including a right to be heard, upon request of the defendant with a view to deciding, whether these measures shall be modified, revoked or confirmed.


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CIVIL PROCEDURES. Provisional Measures (Art.50)

P. Measures shall be revoked , upon request by the defendant, if proceedings are not initiated when determined by the Member's law, but not later than 20 working days or 31 calendar days.

Appropriate compensation to the defendant, for any injury caused when the provisional measures are revoked or where they lapse due to any act or omission by the applicant, or where it is subsequently found that there has been no infringement or threat of infringement of an intellectual property right.

These principles apply to p. measures in an administrative procedure.


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SPECIAL REQUIREMENTS RELATED TO BORDER MEASURES. (Art.51)

Suspension of Release by Customs Authorities

Application for the Suspension of the Release.-

Right holder, with valid grounds for suspecting of an importation of counterfeit trademark or pirated copyright goods.

lodge an application in writing with competent authorities, administrative or judicial, for the suspension by the customs authorities of the release into free circulation of such goods.

Exhaustion of Rights.- There shall be no obligation to apply such procedures to imports of goods put on the market in another EU country by or with the consent of the right holder, or to goods in transit.

Activity 2.1.31. TRIPS AGREEMENT

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(a) "counterfeit trademark goods“: any goods, including packaging, bearing without authorization a trademark which is identical to the trademark validly registered in respect of such goods, or which cannot be distinguished in its essential aspects from such a trademark, and which thereby infringes the rights of the owner of the trademark in question under the law of the country of importation;

(b) "pirated copyright goods“: any goods which are copies made without the consent of the right holder or person duly authorized by the right holder in the country of production and which are made directly or indirectly from an article where the making of that copy would have constituted an infringement of a copyright or a related right under the law of the country of importation.


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Members may also provide for procedures concerning the suspension by

Customs authorities of the release of infringing goods destined for

exportation from their territories.


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Application

Any right holder initiating the procedures of suspension of the release of

the infringing goods shall be required to provide:

a) Evidence that, apparently there is an IP right infringement (under the laws of the country of importation).

b) A sufficiently detailed description of the goods to make them recognizable by the customs authorities.

Authorities will inform if the application is accepted and the period for which the customs authorities will take action.


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Security or Equivalent Assurance

To be provided by the applicant to protect the defendant and prevent abuse.


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Notice of Suspension (Art.54)

Prompt notification of the suspension of the release of goods to the

importer and the Applicant.

Duration of Suspension (Art.55)

Max. 10 working days (could be extended to 10 more working days)

since the applicant has been served notice of the suspension, and

proceedings leading to a decision of the merits have not been initiated.

Goods shall be released, provided that all other conditions for importation or exportation have been complied with;


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Review.- If proceedings leading to a decision on the merits of the case have been initiated, Defendant has right for a review, including a right to be heard, with a view to deciding, whether measures shall be modified, revoked or confirmed.


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Indemnification of the Importer and of the Owner of the Goods(Art.56)

By wrongful detention of goods Relevant authorities upon request Compensate injuries caused to importer, consignee and the owner of the goods.

Right of Inspection and Information (Art.57)

Without prejudice to the protection of confidential information, right holder (for substantiation of his claims) and Importer could have the opportunity to inspect the goods detained by customs authorities-

Where a positive determination has been made on the merits of a case, competent authorities could inform the right holder of the names and addresses of the consignor, the importer and the consignee and of the quantity of the goods in question.


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Ex Officio Action (Art.58)

Competent authorities acting upon their own initiative Suspend the release of goods where acquired evidence

that an IP right is being infringed Competent authorities may seek from the right holder any

information Prompt notification of the suspension to the importer and

right holder. Exemption from liability of public authorities and officials

if appropriate remedial measures where actions are taken or intended in good faith.


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Remedies (Art.59)

Competent authorities could order the destruction or disposal of infringing

Goods (considering proportionality between the seriousness of the

infringement, the remedies ordered and the interests of third parties)

without prejudice to other rights of action open to the right holder and the

right for de Defendant to seek judicial review

In regard to counterfeit trademark goods, authorities shall not allow re-

exportation of infringing goods in an unaltered state or subject them to a

different customs procedure, (other than in exceptional circumstances).


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De Minimis Imports (Art.60)

Small quantities of goods of a non-commercial nature contained in

travellers' personal luggage or sent in small consignments can be excluded.

Ex Officio Action (Art.58)By suspension of the release of goods suspected of infringing IP

rights when authorities acting upon their own iniciative: (a) authorities may seek from the right holder any

information for their assistance.b) importer and right holder shall be promptly notified of the

suspension. (c) public authorities and officials shall be exempted from

liability whereappropriate remedial measures were taken or intended in

good faith.


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SECTION 5: CRIMINAL PROCEDURES (Art. 61)

Members shall provide for criminal procedures and penalties to be applied at least in cases of wilful trademark counterfeiting or copyright piracy on a commercial scale (could be extended to other IP rights when infringement commited wilfully and on commercial scale).

Remedies:a) imprisonment and/orb) monetary fines sufficient to provide a deterrent, corresponding to the gravity. c) (in appropriate cases) seizure, forfeiture and destruction of infringing goods and materials and implements the predominant use of which has been in the commission of the offence


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Directive 48/2004

The EC Directive among other things provides for:

Provisional and precautionary measures Corrective measures Injunctions Alternative measures Rules about compensation Publication of the decision + publicity

measureswww.ip4inno.eu. Module 5A: 01 ENFORCEMENT OF IP RIGHTS


Access to Evidence (Art.6)

In the case of infringement committed on a commercial scale Member States, judicial authorities can order the infringer to provide the information he may have like banking, financial or commercial documents.

Protection of confidential information.

Activity 2.1.3 2. DIRECTIVE 2004/48 ON THE ENFORCEMENT OF INTELLECTUAL PROPERTY RIGHTS

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Preservation of Evidence (Art.7)

Even before the commencement of proceedings, the competent judicial authorities may order prompt and effective provisional measures for the preservation of the evidence, such as: detailed description or physical seizure of the infringing goods, the materials and implements used in the production and/or distribution of the goods, and the documents relating thereto.


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Right of Information (Art.8)

On the origin and distribution networks of the infringing goods or services. The judicial authorities can order that information to be provided by the infringer.

Type of Information:- Names and addresses of the producers, distributors, …- Sums of the goods being produced, handed in, received or

ordered as well as their economic return.

Confidentiality of personal data.


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Provisional and Precautionary Measures (Art.9)

Judicial authorities may, at the request of the applicant order: interlocutory injunction intended to prevent any

imminent infringement of an IPR, or to forbid the continuation of the alleged infringements of that right; fines could be agreed in case there is a continuation. As well it could be permitted to continue by giving a guarantee to the Ipr holder.

interlocutory injunction against an intermediary whose services are being used by a third party to infringe an IPR;

and seizure or delivery up of the goods suspected of infringing an IPR so as to prevent their entry into or movement within the channels of commerce.


2. DIRECTIVE 2004/48 ON THE ENFORCEMENT OF INTELLECTUAL PROPERTY RIGHTS

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Provisional and Precautionary Measures (Art.9) II.

By risk of not being awarded with the damages, the Judicial authorities could order the freezing of the bank accounts or other assets of the infringer.

Can be adopted without the other part being heard. Can be adopted with the lodging of a security for possible

damages to the defendant. revoked or cease to have effect, upon request of the

defendant, if the applicant does not institute, proceedings in the period

where the law of a Member State so permits but not exceeding 20 working

days or 31 calendar days, whichever is longer.



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Corrective measures (Article 10).

judicial authorities may order, at the request of the applicant, and on the defendants expenses, that appropriate measures be taken with regard to goods that they have found to be infringing an intellectual property right and, in appropriate cases, with regard to materials and implements used in the manufacture of those goods, including

A) destructionB) recallC) definitive removal of the goods from the

channels channels of commerce.



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Injunctions (Article 11).

The judicial authorities may issue against the infringer an injunction aimed at prohibiting the continuation of the infringement. Right holders may also apply for an injunction against intermediaries whose services are used by a third party to infringe an IPR.



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Alternative Measures (Article 12).

The competent judicial authorities may order pecuniary compensation to be paid to the injured party instead of measures mentioned above, in case of unintentional and non-negligent infringement, if execution of the measures would cause disproportionate harm and if pecuniary compensation to the injured party appears reasonably satisfactory.



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Damages (Article 13).

Competent judicial authorities, on application of the injured party, can order the infringer who knowingly, or with reasonable grounds to know, engaged in an infringing activity, to pay the right holder damages appropriate to the actual prejudice suffered by him/her as a result of the infringement. The judicial authorities shall take into account aspects such as the negative economic consequences, including lost profits, any unfair profits made by the infringer, the moral prejudice. In appropriate cases, damages may be set as a lump sum.



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Legal Costs (Article 14).

The legal costs and other expenses incurred by the successful party shall, as a general rule, must be borne by the unsuccessful party, unless equity does not allow this.



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Publication of Judgements (Article 15).

Judicial authorities may order, at the request of the applicant and at the expense of the infringer, appropriate measures for the dissemination of the information concerning the decision, including displaying the decision and publishing it in full or in part.



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Codes of conduct (Art.17)

Promotion of codes of conduct (ie. recommending the use on optical discs

of a code enabling the identification of the origin of their manufacture)

Makes the product more difficult to copy

Makes the product more easily identifiable as authentic to the consumer

Marking the goods with tracing devices (chips) enables tracking.

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Thank you!

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Documents

Activity 2.1.3 Workshops and Trainings on “Enforcement of Industrial Property Rights” October 2014