Enforcement under the Enforcement under the

TRIPS AgreementTRIPS Agreement [Shortened version of presentation][Shortened version of presentation]

Regional Conference – IP Enforcement Regional Conference – IP Enforcement

Cairo, November 9, 2008Cairo, November 9, 2008

Ms. Louise van GreunenMs. Louise van Greunen

Perry v Truefitt (1842)Perry v Truefitt (1842)6 Beav 66, 49 E.R. 7496 Beav 66, 49 E.R. 749

Lord Langdale: … a man is not to sell his own Lord Langdale: … a man is not to sell his own goods under the pretence that they are the goods under the pretence that they are the goods of another man; he cannot be permitted goods of another man; he cannot be permitted to practice such a deception…he cannot be to practice such a deception…he cannot be allowed to use names, etc. by which he may allowed to use names, etc. by which he may induce purchasers to believe that the goods induce purchasers to believe that the goods which he is selling are the manufacture of which he is selling are the manufacture of another person. I have no doubt that he has no another person. I have no doubt that he has no right to use the mark for purposes of deception right to use the mark for purposes of deception ......

World Health Organization: IMPACT World Health Organization: IMPACT projectproject

Rome Declaration 2006: Rome Declaration 2006: ““Counterfeiting medicines … is a vile and Counterfeiting medicines … is a vile and

serious criminal offence that puts human lives serious criminal offence that puts human lives at risk and undermines the credibility of health at risk and undermines the credibility of health systems … Because of its direct impact on systems … Because of its direct impact on health … [it] should be combated and health … [it] should be combated and punished accordingly.”punished accordingly.”

International Medical Products Anti-Counterfeiting Taskforce (IMPACT)International Medical Products Anti-Counterfeiting Taskforce (IMPACT)

CONSUMER ATTITUDES CONSUMER ATTITUDES AND BEHAVIOURS:AND BEHAVIOURS:

COUNTERFEITSCOUNTERFEITS

Moscow, RussiaMoscow, Russia

CIPRCIPR19 March 200319 March 2003

Coalition for Intellectual Property Rights

TRIPS AGREEMENTTRIPS AGREEMENTWhy enforcement obligations? Why enforcement obligations?

Inability of right holders to enforce IP rights Inability of right holders to enforce IP rights around the worldaround the world

inability to obtain, preserve and present inability to obtain, preserve and present evidenceevidence

delays in obtaining final judgementsdelays in obtaining final judgements inadequate damage awards and criminal inadequate damage awards and criminal

sanctionssanctions lack of enforcement at borderslack of enforcement at borders

Civil actions and remediesCivil actions and remedies

Effective action against any act of Effective action against any act of infringementinfringement

+ expeditious remedies to prevent + expeditious remedies to prevent infringement infringement

+ remedies to deter further infringements+ remedies to deter further infringements appealsappeals

Article 61 of TRIPSArticle 61 of TRIPSCriminal sanctionsCriminal sanctions

Criminal procedures and penalties forCriminal procedures and penalties for willful TM counterfeiting or copyright piracy willful TM counterfeiting or copyright piracy

on a commercial scaleon a commercial scale remedies -remedies -

• SHALL include: imprisonment and/or monetary SHALL include: imprisonment and/or monetary fines sufficient to provide a deterrentfines sufficient to provide a deterrent

• Where appropriate, shall also include seizure, Where appropriate, shall also include seizure, forfeiture, destruction - goods and implementsforfeiture, destruction - goods and implements

History

1883: PARIS

1886: BERNE

1893: BIRPI

1970: WIPO

1974: Specialized Agency of the U.N.

WIPO Today

184 Member States

WIPO - activities in enforcementWIPO - activities in enforcement

Legislative assistanceLegislative assistance cooperation at the international levelcooperation at the international level assistance: formulating national enforcement assistance: formulating national enforcement

strategiesstrategies activities with Regional Bureaus and the activities with Regional Bureaus and the

WIPO Worldwide AcademyWIPO Worldwide Academy Enforcement CommitteesEnforcement Committees

Global Congress on Combating Global Congress on Combating Counterfeiting and PiracyCounterfeiting and Piracy

11stst: World Customs Organization – Brussels: World Customs Organization – Brussels 22ndnd: Interpol – Lyon: Interpol – Lyon 33rdrd: WIPO – Geneva: WIPO – Geneva 44thth: WCO - Dubai: WCO - Dubai

http://www.ccapcongress.net/http://www.ccapcongress.net/

Advisory Committee on EnforcementAdvisory Committee on Enforcement(WIPO Assemblies - September 23 to October 1, 2002)(WIPO Assemblies - September 23 to October 1, 2002)

One single Committee in charge of global One single Committee in charge of global enforcement issues with objectives:enforcement issues with objectives:• coordination with certain organizations and the coordination with certain organizations and the

private sector to combat counterfeiting and piracyprivate sector to combat counterfeiting and piracy• public educationpublic education• assistanceassistance• coordinate national and regional trainingcoordinate national and regional training• exchange of informationexchange of information

Sessions of the ACESessions of the ACE

11stst Session: 2003 Session: 2003 22ndnd Session: 2004 - the Session: 2004 - the role of the judiciaryrole of the judiciary

and the prosecution in enforcement activities and the prosecution in enforcement activities 33rdrd Session: 2006 - education and awareness- Session: 2006 - education and awareness-

building, including trainingbuilding, including training 44thth Session: November 1 and 2, 2007 Session: November 1 and 2, 2007

Cooperation and Coordination at the different Cooperation and Coordination at the different levels (levels (criminal enforcementcriminal enforcement))

www.wipo.intwww.wipo.int

Thank you!Thank you!