Enforcement of intellectual property rights

Background

Concerns about adequate enforcement of IP rights in the multilateral trading system predate the entry into force of the TRIPS Agreement upon the establishment of the WTO. The Paris and Berne Conventions provide for some enforcement measures, including on infringing imports. A proposal on trade in counterfeit goods was developed in the General Agreement on Tariffs and Trade (GATT) in 1978 as part of the Tokyo Round of trade negotiations but no agreement was reached at that time. Subsequent work led to the inclusion of the Uruguay Round negotiating mandate on IP rights, which included the development of disciplines dealing with international trade in counterfeit goods: this mandate led to conclusion of the TRIPS Agreement.

The TRIPS Agreement is the only international agreement that includes a comprehensive section regarding the enforcement of IP rights. Provisions in the Agreement make it mandatory for WTO members to establish rules for obtaining evidence, for provisional court orders, for injunctions, damages and other remedies, and for measures at the border and criminal sanctions.

Understanding enforcement obligations

Basic principles

The basic objectives and principles of the TRIPS Agreement apply equally to the enforcement of IP rights. WTO members must grant non-discriminatory treatment to the nationals of all WTO members, and cannot favour their own nationals. Individual members can choose to go beyond the specific standards required by TRIPS, provided they remain consistent with the Agreement (for instance, by remaining non-discriminatory); they are also free to determine the appropriate method of implementing the Agreement's enforcement obligations within their own legal system and practice. The Agreement's provisions on IP enforcement are subject to the WTO dispute settlement system.

General obligations

The general obligations are a set of principles for fairness, transparency, due process and balance that apply to all civil and administrative enforcement procedures for IP rights covered by the TRIPS Agreement. The objective is for members' laws to permit the right holder to take effective action against any infringement of IP rights. In doing so, the basic principles of due process are to be observed, namely the application of fair and equitable procedures, the making available of the decisions on the merits of a case to the parties to ensure transparency, and the opportunity for review by a judicial authority of final decisions.

Enforcement procedures must be applied in a manner so as to avoid the creation of barriers to legitimate trade. Members are also required to provide comprehensive safeguards against the abuse of the procedures, such as the indemnification of the defendant or holder of the goods or the provision of a security or equivalent assurance by the right holder when provisional measures or border measures are applied. Members are, however, not obliged to establish specialist IP courts. Nor are they required to redistribute resources between the enforcement of IP rights and law enforcement in general.

Civil and administrative procedures and remedies

The TRIPS Agreement provides that a right holder must be able to initiate fair and equitable civil judicial procedures against an infringer of IP rights covered under the Agreement. It also contains disciplines on evidence, the right of information and indemnification of the defendant. Judicial authorities must be able to award three types of remedies: injunctions to order a party to stop its infringing action, damages to compensate for the injury caused by the infringement, as well as other remedies, such as the removal of infringing goods from channels of commerce or their destruction, subject to certain conditions.

Some national legal systems deal with certain IP enforcement cases through administrative procedures, rather than court proceedings.  If so, the TRIPS Agreement 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.

Provisional measures

WTO members are required to provide prompt and effective provisional enforcement in two situations: to prevent an infringement of IP rights from occurring, in particular to prevent goods from entering the distribution channels, including infringing goods on importation immediately after customs clearance; and to preserve relevant evidence concerning an alleged infringement. Provisional measures have to be available without prior hearing of the alleged infringer, where appropriate – for instance, where a delay would likely cause irreparable harm, or evidence may be destroyed.

Border measures

The requirements in the TRIPS Agreement on border measures enable holders of IP rights to obtain the cooperation of customs administrations to intercept infringing goods at the border and to prevent the release of these goods into circulation. The requirements are mandatory only where imports of counterfeit trademark or pirated copyright goods are concerned. Some WTO members apply border measures to goods that infringe other IP rights and to infringing goods destined for export, but this is only optional under TRIPS.

Similarly, WTO members are not required to apply border measures to parallel imports (non-infringing products but on the market in another country with the IP owner's permission), to goods in transit, or to the importing of small quantities of goods of a non-commercial nature. As a general rule, the right holder must request the customs authorities to take action; there is no obligation on customs authorities to act on their own initiative (ex officio), although members may provide for this.

Criminal procedures

Under the TRIPS Agreement, criminal procedures and penalties are only mandatory in cases of wilful trademark counterfeiting or copyright piracy carried out on a commercial scale. Members may, but are not obliged to, provide for criminal procedures to be applied in other cases of infringement of IP rights, in particular where those are committed wilfully and on a commercial scale.

WTO activities

Work in the WTO that is directly relevant to the enforcement of IPRs addresses a wide range of issues and is taken up in different WTO bodies.

The transparency processes set up by the TRIPS Agreement offer a vast information resource for the public at large and create the basis for an informed exchange of views among members. The purpose is three-fold: to promote transparency and predictability of laws and policies on the protection and enforcement of IPRs that members have put in place, to monitor the operation of the TRIPS Agreement and to facilitate cooperation between members' competent authorities aimed at eliminating trade in infringing goods.

Members are requested to notify and regularly update relevant legislative measures. They also have to submit responses  to a Checklist of Issues on Enforcement  that explain key elements of their enforcement regimes.

Members' notified laws and regulations on IP enforcement

Members' responses to the Checklist of Issues on Enforcement

In line with their undertaking under Article 69 of the TRIPS Agreement to cooperate on the elimination of international trade in IP infringements, members have established and notified contact points  in national administrations for the exchange of information and cooperation regarding trade in counterfeit trademark goods and pirated copyright goods.

Contact points on IP enforcement cooperation

The TRIPS Council reviews  and discusses the implementing legislation and enforcement measures notified by members. It also offers a unique forum for ad hoc discussions on enforcement-related topics, either under a dedicated agenda item or as part of considerations of a broader theme, such as the link between intellectual property and innovation.

TRIPS Council reviews of implementing legislation

The technical assistance programmes in the area of TRIPS provided by the WTO Secretariat, responding to demand from WTO members, cover aspects of IPR enforcement as required. It is an aspect of TRIPS that has been covered in diverse ways in a range of Geneva-based, national and regional activities. Technical assistance can take the form of specialized capacity building, or can form part of a broader training activity. The purpose is to promote a better understanding of the enforcement section in the TRIPS Agreement that supports the implementation of a balanced regime.  In view of the growing and diverse experience of implementing TRIPS principles by courts in the developing world, these activities have covered the specific role of the courts, and the practical experience of judges in giving effect to the substantial and procedural requirements of the TRIPS Agreement.

Beyond the TRIPS Council, a wide range of enforcement-related issues are regularly addressed when members' trade policies are reviewed by the Trade Policy Review  Body. Trade Policy Reviews, as well as questions and answers taken up by members during the review, frequently include information on the member's enforcement regime.  This work has provided extensive insights into the nature of enforcement of IP rights in the digital environment.

Finally, concerns related to members' rights and obligations regarding the enforcement of IPRs can also be brought to the Dispute Settlement Mechanism. A number of dispute settlement  cases have provided guidance on the interpretation of certain key provisions in the enforcement section of the TRIPS Agreement.

Cooperation

Alongside the WTO, other international organizations that undertake work on IP enforcement include the Hague Conference on Private International Law, the International Telecommunication Union, Interpol, the Organisation for Economic Co-operation and Development, the South Centre, the United Nations Conference on Trade and Development, the United Nations Interregional Crime and Justice Research Institute, the World Customs Organization and the World Intellectual Property Organization.  Coordination and cooperation with other multilateral partners are integral to the work of the WTO Secretariat in this area of TRIPS, as with other dimensions. Details of this technical cooperation are reported periodically to the TRIPS Council.