INTELLECTUAL PROPERTY

Enforcement of intellectual property rights

For the protection of intellectual property rights to be meaningful, members must give right holders the tools to ensure that their IP rights are respected. The general principles that apply to IP enforcement and the relevant procedures are comprehensively covered in the TRIPS Agreement.

 

Background

Concerns about adequate enforcement of IP rights in the multilateral trading system predate the WTO. 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 a mandate on IP rights, including the development of disciplines dealing with international trade in counterfeit goods, in the Uruguay Round negotiations.

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, provisional measures, injunctions, damages and other remedies as well as to apply measures at the border and criminal sanctions.

Understanding enforcement obligations

Basic principles

The basic objectives and principles of the TRIPS Agreement also apply to the enforcement of IP rights. WTO members are free, but not obliged, to implement strict enforcement procedures and remedies provided they are consistent with the TRIPS Agreement. Members are also free to determine the appropriate method of implementing the Agreement's enforcement obligations within their own legal system and practice. They must grant non-discriminatory treatment to the nationals of all WTO members. The Agreement's provisions on IP enforcement are also subject to the WTO dispute settlement system.

General obligations

The general obligations apply to all civil and administrative enforcement procedures. The objective is for members' laws to permit the right holder to take effective action against any infringement of IP rights while ensuring that basic principles of due process are met, that the creation of barriers to legitimate trade are avoided and that safeguards against the abuse of the procedures are provided. Members are not obliged to establish specialist IP courts. Nor are they required to review the distribution of resources regarding 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, damages and other remedies, such as the removal of infringing goods from channels of commerce or their destruction, subject to certain conditions. Administrative procedures are not an obligation but 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 imported goods immediately after customs clearance; and to preserve relevant evidence concerning an alleged infringement. The TRIPS Agreement also requires members to enable judicial authorities to adopt provisional measures without prior hearing of the alleged infringer.

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 insofar as the importing of counterfeit trademark or pirated copyright goods are concerned. It is optional for WTO members to extend border measures to goods which involve infringements of other IP rights and to infringing goods destined for export.

WTO members are not required to apply border measures to parallel imports (non-counterfeit products imported from another country without the permission of the IP owner), 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 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.

Cooperation

Among WTO members: Article 69 of the TRIPS Agreement says WTO members agree to cooperate with each other to eliminate international trade in goods that infringe IP rights. To help achieve this, members are required to establish and notify contact points.

Among international organizations: In addition to 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.

Resources

Guide to the TRIPS Agreement Module on IP enforcement

TRIPS Council

Responses to the Checklist of Issues on Enforcement
The TRIPS Council has adopted a "Checklist of Issues on Enforcement" (IP/C/5). Members are requested to submit responses to the checklist, and provide updates as necessary.

Notification of IP laws and regulations
Members are required to notify IP laws and regulations, including on the enforcement of IP rights. 

TRIPS Council reviews
The notification of laws and regulations made according to the TRIPS Agreement form the basis for the TRIPS Council's reviews of national implementing legislation. These reviews generally include members' IP enforcement laws and regulations.

Minutes of the meetings of the TRIPS Council
There is no standing item on IP enforcement on the TRIPS Council's agenda. IP enforcement has been raised under the agenda item on notifications under the TRIPS Agreement. Discussions focusing on IP enforcement have also taken place under other agenda items.

Contact points for cooperation on IP enforcement
Members have agreed to establish and notify contact points.

Trade policy review

Trade Policy Reviews
Trade policy reviews frequently contain information on members' IP enforcement regimes.

Disputes

WTO disputes involving TRIPS
Various TRIPS IP enforcement provisions have been the subject of WTO disputes.