Trade-Related Aspects of Intellectual Property (TRIPS) is a World Trade Organization (WTO) multilateral agreement governing Intellectual Property Rights (IPR). The TRIPS agreement provides for civil remedies in its Part III, as given below-
- Other remedies
- Right of Information
- Indemnification of the Defendant
Note that these are not judicial provisions in of themselves, but guidelines that are signatories of TRIPS are expected to provide to their people under their own laws.
An injunction is a court order requiring a person or an entity to do or not to do a particular thing. TRIPS provide that “Judicial authorities” shall have the power to grant injunctions against party,
- To refrain from infringement (of IPR) and
- To prevent the entry of such imported goods, after customs clearance, in their jurisdiction (area of authority), which causes such infringement.
Member states are not obliged to provide to judicial authority the power to pass injunctions, where a person or an entity orders or acquires such goods (protected subject matter) without having prior knowledge that it would amount to such infringement.
Other conditions to such injunction power-
- Where the “use” of protected subject matter or goods is done by the Government or any third party authorized by the Government-
Here the member states, without the authorization of the right holder (federation or association having legal standing to assert such rights), may limit the remedies available against such use to payment of remuneration in accordance with subparagraph (h) of Article 31. In other cases, the remedies provided in Part III are available.
- Where the remedies available under Part III are inconsistent with the law of the member state-
Here “declaratory judgments” (defining/declaring rights and obligations of the parties) and “adequate compensation” can be made instead.
Article 45 refers to the compensation provided to cover up the loss suffered by the party whose right is violated and it is paid by the party who violated the right.
TRIPS provides that “judicial authorities” shall have the power-
- To order the infringer to pay damages to the right holder, adequate to compensate for the injury suffered by the right holder. The following conditions are to be fulfilled-
- The right holder must have suffered injuries because of infringement done by the infringer and
- Such an infringer must know (or have reasonable grounds to know) that he is violating the right of the right holder by engaging in such infringing activity.
- To order the infringer to pay expenses, which may include appropriate attorney’s fees. Here the term “expenses” seems to include the expenses incurred by the right holder in the enforcement of his right.
The member state may authorize the judicial authorities to order the recovery of profits and/or pre-established damages, even when the infringer did not engage infringing activity knowingly.
These remedies intend to create deterrents to infringement. Here, it is provided that the judicial authorities, shall have the power to order-
- That the goods they have found to be infringing, be destroyed, without any compensation, outside the channel of commerce, in such a manner so as to avoid any harm to the right holder. However, this destruction must not be contrary to the existing constitutional requirements.
- That the materials and implements which have been predominantly used in the creation of the infringing goods (or protected subject matter), be disposed of, without any compensation, outside the channels of commerce. This is done to avoid risks of further infringement.
When the judicial authorities are requested to allow (a) and (b) remedies, mentioned above, they have to consider-
- The proportionality between ‘seriousness of the infringement’ and ‘remedies ordered’ and,
- The interests of third parties.
In the case of counterfeit trademark goods, the simple removal of a trademark unlawfully affixed shall not be sufficient to permit the release of goods in the channels of commerce, except in some extraordinary circumstances.
Right of Information
Under Article 47, the member states may provide that the judicial authorities shall have the power to order the infringer, to inform the right holder about the identity of the third party who is involved in the production and distribution of the infringing goods or services and of their channel of distribution. However, such an order must be warranted by the proportion of seriousness of the infringement i.e. it must be necessary to disclose such information.
Indemnification of the Defendant
In Article 48 where the party who has abused the enforcement procedures and at whose request, the measures were taken, the judicial authority shall have the power-
- To order such a party to provide adequate compensation to the party wrongfully enjoined or restrained, for the injuries suffered by it because of such abuse.
- To order such a party to pay the defendant party, the expenses including the appropriate attorney’s fee. Here “expenses” may include the cost incurred by the defendant for defending itself.
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.
Where actions are taken or intended, in good faith, by the public authorities and officials, in the administration of law pertaining to the protection or enforcement of IPR, the member state may exempt such authorities or officials from liability from appropriate remedial measures.
The TRIPS agreement puts its faith in the judicial system of the member states for the protection and enforcement of the IPR. It has provided member states discretion in certain areas, with due consideration of all the relevant circumstances.
TRIPS intends to provide a broad outline to the member states and leave space for them to cater to the diverse situations peculiar to them. The enforcement and protection of IPR largely depend on the responsiveness and seriousness of the member states.
Author: Shubham Panwar, Legal Intern at PA Legal.
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