1. CAPACITY BUILDING TRAINING PROGRAMME ON INTELLECTUAL PROPERTY RIGHTS AND RELATED WTO ISSUES April 28-May 2, 2008 Session 3 Enforcement under the TRIPS Agreement by Atul Kaushik Adviser (Projects), CUTS International

2. 2 INTRODUCTION TRIPS one of the most intrusive agreements under the WTO Unlike most other agreements, TRIPS impacts not only trade but also investment and domestic legislation One of the few agreements of the WTO which obliged Members to install laws/regimes not yet existing in many Members TRIPS provides rules for enforcement of IPRs to prevent or remedy infringement of conferred rights

3. 3 GENERAL OBLIGATIONS Effective action against infringement No one single standard on what constitutes effectiveness Expeditious and deterrent remedies to prevent infringement No need for separate IP courts No need to allocate specific resources in their judicial system to IP cases

4. 4 CIVIL AND ADMINISTRATIVE PROCEDURES Fair and equitable procedures (normal common law precepts followed) Normal rules of evidence followed (except for process patents) Injunctions and damages have to be provided Destruction or disposal outside regular commercial channels of infringing goods Rules apply to administrative decisions also

5. 5 PROVISIONAL MEASURES Preliminary, interlocutory or interim injunctions should be possible Remedies to prevent infringement, including circulation of infringing goods Remedies to preserve evidence of infringement (Anton Pillar orders) Justice Ravinder Bhatt’s Interim Order in Roche-Cipla case

6. 6 BORDER MEASURES TRIPS requires Members to provide for suspension of release of allegedly counterfeit/pirated goods TRIPS allows Members to provide similar relief to right holders in other IPRs Authorities can ask applicant for a security deposit Suspension not more than 10 days normally All due procedures re notice, right to be heard etc. to be followed

7. 7 CRIMINAL PROCEDURES Criminal procedures obligatory in cases of wilful trademark counterfeiting and copyright piracy on a commercial scale Criminal procedures for other IPR infringements optional Remedies include fine and/or imprisonment sufficient to act as a deterrent

8. 8 ACQUISITION AND MAINTENANCE OF IPRs Procedures and formalities required to be followed by applicants to acquire and/or maintain their rights have to be reasonable Right to priority contained in Article 4 of the WIPO Paris Convention is extended to service marks Judicial or quasi-judicial review of administrative decisions necessary

9. 9 ENFORCEMENT PROVISIONS IN INDIA Normal courts deal with cases. However, jurisdiction is of District Court in patents Normal civil and administrative procedures apply (CPC, CrPC, Evidence Act etc) IPR specific enforcement procedures contained in the respective IP laws; e.g. Chapter XVIII of the Patents Act 1970 contains provisions on infringement procedures and Chapter IX on penalties, while the Trademarks Act has them in various places as well as a separate Chapter XII on offences, penalties etc.

10. 10 CHANGES DUE TO TRIPS Very few changes required in Indian IP laws to bring them in compliance with TRIPS For example, in the Patents Act, basically three changes were made 1.Shifting of burden of proof for process patents 2.Parallel imports are not an infringement 3.Powers regarding seizure/forfeiture added

11. 11 EMERGING ISSUES-I Enforcement at the international level: bilateral action and multilateral WTO dispute settlement procedures under the TRIPS provisions Enforcement at the national level: through national administrative and judicial bodies under the national laws REPEATED VIOLATIONS AT THE NATIONAL LEVEL MAY BECOME RIPE FOR INTERNATIONAL ACTION, NOT ONE OFF VIOLATIONS

12. 12 EMERGING ISSUES-II Certain developed countries trying to introduce a regular monitoring of enforcement in the TRIPS Council Effort opposed by many developing countries lead by China No dearth of capacity building assistance from developed countries for enhancing enforcement

13. 13 EMERGING ISSUES-III Of the seven decided disputes in WTO on IPRs, only two had claims relating to enforcement In both cases (EC-Trademarks/GIs case and US-Section 211 case), no violation was found Conclusion: WTO Appellate Body unlikely to intrude too much into domestic legal procedures on enforcement? Results of the US case against China awaited