Enforcement of IP Rights Module 5 A ip

Enforcement of IP Rights Module 5 A ip 4 inno 1

Overview of Contents A. B. C. D. E. IP Rights – Outline Infringements Enforcement options How to proceed if infringement occurs? Supporting Exercises ip 4 inno 2

Overview of Contents A. B. C. D. E. IP Rights – Outline Infringements Enforcement Options How to proceed if infringement occurs? Supporting Exercises ip 4 inno 3

Context of this module in relation to IP in general • Establishing an IP right • Maintaining IP rights • Making business with IP rights • Enforcement of IP rights ip 4 inno Enforcement rounds the IP rights system off! 4

IP Rights at a Glance Rules about formality What is Protected? IP RIGHT Issued by An exclusive right to an Innovation (invention) International treaties on formalities, EU-regulation and national legislation National IP office or EPO issues. It then requires validation according to national procedure to become national patent. An exclusive right to a small Innovation (invention). National Legislation National IP office International treaties, EU-regulation and national legislation National IP office or OHIM Trademark An exclusive right to a business identifier such as a word or a logo An exclusive right to a specific design of a product International treaties, EU-regulation and national legislation National IP office or OHIM Design An exclusive right to a creative, intellectual, or artistic forms or "works". International treaties, EU-regulation and national legislation Does not require registration in many countries – but can be registered in UK and in USA. An exclusive right to present on a good a specific geographical origin as sign of quality International treaties, EU-regulation and national legislation Appropriate national office - - - Patent Utility Model Copyright Geographical indications (designation of origin) ip 4 inno Trade secrets 5

International Rules on IP Rights The seize of each of the four rings symbolises the extent on international rules. 1) Application procedure/ formalities 2) Examination at IP offices 3) Grant of right 4) Enforcement ip 4 inno 6

Counterfeiting and Piracy • Increasing problem in the world economy, being a challenge and threat to: – society → damaging to public health and safety and markets – industry → loss of sales, credibility, goodwill, investments in research – consumers → risk of poor quality, health risks • More focus and attention needed (Worldwide, Regional and National initiatives) • Raising awareness ip 4 inno 8

Overview of Contents ü B. C. D. E. IP Rights – Outline Infringements Enforcement Options How to proceed in infringement occurs? Supporting Exercises ip 4 inno 9

Infringements – Basics There are two types of infringement: • A Civil infringement which requires private prosecution or civil enforcement. • A Criminal infringement which allows public prosecution. Remember! • IP laws are territorial in scope. This is relevant to the question of infringement. • Not all civil wrongs qualify as criminal offences. Legal advice should be sought in this regard to bring a lawsuit. ip 4 inno 10

Proprietor or alleged infringer? Two situations: • The enterprise is the proprietor of an IP right being infringed • The enterprise is accused of infringing an IP right ip 4 inno 11

“Infringements/ Defences” Designs – infringing acts • An exploitation of the design without the consent of the holder AND the two contesting goods to the informed user giving the same overall impression Designs – defences (main exceptions) • Private use • Research • Quotation or educational if not particular damage to exploitation and quotation of source. ip 4 inno 16

Overview of Contents ü ü C. D. E. IP Rights – Outline Infringements Enforcement Options How to proceed in infringement occurs? Supporting Exercises ip 4 inno 18

Enforcement of Rights • Two types of enforcement: – – • Patents and Utility models: – – • are to be enforced through civil lawsuits some territories have criminal penalties (very few) Trade marks and Design: – • civil enforcement (the IP owner prosecutes) criminal enforcement (the State prosecutes) can be enforced through both private and public prosecution, it depends of the facts Copyright: – ip 4 inno can be enforced through both private and public prosecution 19

The EU Framework • Importance of Laws and Regulations – EC rules on the enforcement of IP rights – reasoning behind it ip 4 inno 21

The EU Framework The EC Directive among other things provides for: • Provisional and precautionary measures • Corrective measures • Injunctions • Alternative measures • Rules about compensation • Publication ip 4 inno 22

The EU Framework • • • Provisional and Precautionary Measures Prevent imminent infringement of IP right Forbid continuation of the alleged infringement Seizure or delivery up of the goods that constitutes an infringement Precautionary seizure of the movable and immovable property Require the IP rights holder to provide any reasonably available evidence ip 4 inno 24

Enforcement - Options Infringement of an IP right 1 2 3 Litigation Alternative Dispute Resolution (ADR) A combination of Litigation and ADR (Alternative Dispute Resolution) ip 4 inno 26

Organisations concerned with IP rights Enforcement • International level – United Nations (UN) – World Intellectual Property Organization (WIPO) • Inter-Governmental level – World Trade Organization (WTO) – World Customs Organization (WCO) – INTERnational POLice Organization (INTERPOL) • Regional level - European Commission – Relevant General Directorates such as DG Trade, DG Taxation and Customs Union, DG Internal Market, DG Enterprise and Industry, DG Justice Freedom and Security, DG Development, DG External Relations and DG Agriculture • National level – Interagency cooperation – Other fora ip 4 inno 27

Authorities concerned with IP rights Enforcement Primarily • National IP-offices • Relevant ministries • Police • Customs and Taxation authorities • Courts ip 4 inno 28

Overview of Contents ü ü ü D. E. IP Rights – Outline Infringements Enforcement Options How to proceed in infringement cases? Supporting Exercises ip 4 inno 29

What to do when encountering counterfeited and pirated goods? • Confirm the IP right of your product • Find out distribution channel of the counterfeited and pirated goods • Try to get copies of the counterfeited and pirated goods • Does the counterfeited and pirated good actually infringe the IP right? • Contact enforcement institutions such as customs office and the police • Plan how to act in relation to the actual infringement – litigation/ADR ip 4 inno 30

D. How to proceed in infringement cases? I. II. IP Litigation Alternative Dispute Resolution - ADR III. Domain Names Dispute resolution procedures at WIPO IV. Business Strategies V. Reducing Risk and Mitigating Consequences ip 4 inno 31

IP Litigation • How to enforce your IP right? – depends on the IP right infringed e. g. : Patent • Decision to take legal action? – – – IP rights might be questioned and declared invalid court decisions will be normative for similar conflicts court decisions are made public risk of bad publicity time and money consuming cases involving patents highly complex due to the subject-matter ip 4 inno 32

How to apply for action by the customs authorities in the EU? • National Action: – all national IP rights • Community Action: – – – community trademark community design right community plant variety right designation of origin geographical indication geographical designation protected by the Community ip 4 inno 34

Infringement and Litigation Type of infringement Method of prosecution Goal - To stop the infringement immediately - Seizure or delivery of goods - Precautionary seizure of movable and immovable property Civil Infringement Private Prosecution Outcome of enforcement Prohibitive injunction Court action to confirm To prevent the infringement from being remitted the interim injunction Recognition of the IP right validity Getting damages for the loss encountered Criminal Infringement ip 4 inno Court action for a declaration Court action for damages Public interest in punishing infringements of IP Fines and in case of rights gross infringements Public also terms of prosecution - Especially in cases of Counterfeiting and imprisonment Piracy but can be used for all IP rights 36

D. How to proceed in infringement cases? I. II. IP Litigation Alternative Dispute Resolution - ADR III. Domain Names Dispute resolution procedures at WIPO IV. Business Strategies V. Reducing Risk and Mitigating Consequences ip 4 inno 38

ADR Methods - Advantages The most commonly used ADR methods: • Arbitration • Negotiations • Mediation ip 4 inno Advantages of ADR: • • • Single procedure Party autonomy Neutrality Expertise Confidentiality Finality and enforceability of awards (arbitration) 39

Arbitration • • • Arbitration is consensual The parties choose the arbitrator(s) Arbitration is neutral Arbitration is a confidential procedure The decision of the arbitral tribunal is final and easy to enforce Source: WIPO ip 4 inno 41

Litigation vs. Arbitration Common features of IP disputes Court litigation Arbitration International Multiple proceedings under different laws, with risk of non homogeneous results Possibility of actual or perceived home court advantage of party that litigates in its own country A single proceeding under the law determined by parties Arbitral procedure and nationality of arbitrator can be neutral to law, language and institutional culture of parties Technical Decision maker might not have relevant expertise, but expert advice can always be asked for Parties can select arbitrator(s) with relevant expertise Urgent Procedures often drawn-out Injunctive relief available in certain jurisdictions Arbitrator(s) and parties can shorten the procedure WIPO Arbitration may include provisional measures and does not preclude seeking court-ordered injunction Require finality Possibility of appeal Limited appeal option Public proceedings Proceedings and award are confidential Confidential/trade secrets andip 4 inno reputation risk to 43

Negotiations • • • Requires a common understanding Voluntary Non-binding Can be done with or without legal council Does not require intervention from third parties Outcome: Can lead to business partnership and/or license agreements. ip 4 inno 44

Mediation • Non-binding procedure • Controlled by the parties • Mediator • Confidential procedure • Interest-based procedure ip 4 inno 45

Why refer IP disputes to mediation? Mediation comprises a chance to: • Preserve or enhance relationships • Maintain control over the dispute settlement process • Maintain confidentiality, or reach a speedy settlement without damaging reputation ip 4 inno 47

The WIPO Arbitration and Mediation Center • • • Mediation Arbitration Expedited Arbitration Expert Determination The WIPO Rules – appropriate for all commercial disputes – contain provisions on confidentiality – technical and experimental evidence that are of special interest to parties to intellectual property disputes ip 4 inno 48

Conclusion in relation to use of ADR In case of infringement of IP rights: ADR systems, such as negotiations, mediation or arbitration may be more appropriate dispute resolution tools than traditional litigation. Why? Think, for instance, of celerity, expertise of the third party running the ADR proceedings, cost-effectiveness or secrecy. ip 4 inno 49

D. How to proceed in infringement cases? I. II. IP Litigation Alternative Dispute Resolution - ADR III. Domain Names Dispute resolution procedures at WIPO IV. Business Strategies V. Reducing Risk and Mitigating Consequences ip 4 inno 50

Dispute Resolution Procedures • Resolution of domain name disputes: – WIPO Arbitration and Mediation Center • Legal framework: – Uniform Domain Name Dispute Resolution Policy • Disputes about: – The generic Top Level Domains (g. TLDs). Such as “. com”, “. net” and “. org” domains, also more recently introduced g. TLDs. and a large number of country code Top Level Domains (cc. TLDs). • How to file a domain name complaint: – the UDRP Administrative Procedure ip 4 inno 51

Criteria for using the UDRP Administrative Procedure The Domain Name: • Is identical or confusingly similar to a trademark or service mark • The registrant has no rights or legitimate interests • Has been registered and is being used in bad faith ip 4 inno 52

Relevant Aspects of the Procedure • Advantages of the UDRP Administrative Procedure • Use of the Procedure and taking the dispute to court • Disputes involving a domain name registered in a country-code top-level domain (such as. br, . uk, . gt) • Use of the UDRP Administrative Procedure to bring a case against someone who has threatened to sue a domain name holder • Questions about confidentiality of the Administrative Procedure • How to submit a Complaint ip 4 inno 54

D. How to proceed in infringement cases? I. II. IP Litigation Alternative Dispute Resolution - ADR III. Domain Names Dispute resolution procedures at WIPO IV. Business Strategies V. Reducing Risk and Mitigating Consequences ip 4 inno 56

Advising Businesses • IP should be part of a company’s business considerations • Uncover the company’s strategy to enforce its IP rights • Remember the costs and benefits for a company to pursue a certain tactic against an infringer ip 4 inno 57

D. How to proceed in infringement cases? I. II. IP Litigation Alternative Dispute Resolution - ADR III. Domain Names Dispute resolution procedures at WIPO IV. Business Strategies V. Reducing Risk and Mitigating Consequences ip 4 inno 58

Reducing Risk and Mitigating Consequences • Reduce the Risk – register IP rights – especially in countries where risk of infringement of IP rights is high – decide when and how to act on attempts to copy – network with enforcement agencies • Mitigate the Consequences – collect evidence – decide on tactics in the specific case – if relevant, set up a close cooperation with the national Customs and Police services ip 4 inno 59

Any Questions? ip 4 inno 60

Overview of Contents ü ü E. IP Rights – Outline Infringements Enforcement Options How to proceed in infringement cases? Supporting Exercises ip 4 inno 61

Supporting Exercises • Quiz - Multiple Choice Test (Multiple choice: several options may be true!) • Little Exercise ip 4 inno 62

1. Under Community law, enforcement of IP rights covers, in general, the following rights: a) b) c) d) Patents and trade marks Community trade marks only Community trade marks and community designs Trade mark, design, patent including supplementary protection certificate, plant variety rights, geographical indications, utility models and trade names ip 4 inno 63

1. Under Community law, enforcement of IP rights covers, in general, the following rights: a) b) c) d) Patents and trade marks Community trade marks only Community trade marks and community designs Trade mark, design, patent including supplementary protection certificate, plant variety rights, geographical indications, utility models and trade names ip 4 inno 64

2. A counterfeited good is: a) b) c) d) Any good that competes unfairly with my own goods A good bearing a trade mark identical to a validly registered trade mark without authorisation A good bearing a trade mark identical to a validly registered trade mark with authorisation A good that has entered the Community without going through Customs control ip 4 inno 65

2. A counterfeited good is: a) b) c) d) Any good that competes unfairly with my own goods A good bearing a trade mark identical to a validly registered trade mark without authorisation A good bearing a trade mark identical to a validly registered trade mark with authorisation A good that has entered the Community without going through Customs control ip 4 inno 66

3. A pirated good is: a) b) c) d) The same as a counterfeit good A copy that is illegal because the VAT was not paid A good that is or contains a copy made without the consent of the holder of a copyright, related right or design right An illegal copy of the good but that does not copy the trade mark ip 4 inno 67

3. A pirated good is: a) b) c) d) The same as a counterfeit good A copy that is illegal because the VAT was not paid A good that is or contains a copy made without the consent of the holder of a copyright, related right or design right An illegal copy of the good but that does not copy the trade mark ip 4 inno 68

4. Once I have registered my Community trade mark, the Office for Harmonisation in the Internal Market (OHIM) will ensure that it is not infringed: a) b) c) d) True False True, but I will have to pay a special fee when registering True, but I will have to pay the costs related to the procedure ip 4 inno 69

4. Once I have registered my Community trade mark, the Office for Harmonisation in the Internal Market (OHIM) will ensure that it is not infringed: a) b) c) d) True False True, but I will have to pay a special fee when registering True, but I will have to pay the costs related to the procedure ip 4 inno 70

5. As proprietor of an IP right you can choose to deal with an infringement: a) b) c) d) By litigation only By mediation only By negotiation only By arbitration only ip 4 inno 71

5. As proprietor of an IP right you can choose to deal with an infringement: a) b) c) d) By litigation only By mediation only By negotiation only By arbitration ip 4 inno 72

6. In arbitration the parties: a) b) c) d) Choose the arbitrator(s) Ask for confidentiality of the procedure and its outcome Have to accept the arbitrator appointed by WIPO Can unilaterally withdraw ip 4 inno 73

6. In arbitration the parties can: a) b) c) d) Choose the arbitrator(s) Ask for confidentiality of the procedure and its outcome Have to accept the arbitrator appointed by WIPO Can unilaterally withdraw ip 4 inno 74

7. Mediation is: a) b) c) d) A non-binding procedure controlled by the parties A confidential procedure An interest-based procedure Does not require intervention from third parties ip 4 inno 75

7. Mediation is: a) b) c) d) A non-binding procedure controlled by the parties A confidential procedure An interest-based procedure Does not require intervention from third parties ip 4 inno 76

8. The Community customs territory includes: a) b) c) d) The territories of the 27 Member states The 27 Member states including Monaco, Ceuta and Melilla The 27 Member states and Monaco The 27 Member states in (continental) Europe without their islands ip 4 inno 77

8. The Community customs territory includes: a) b) c) d) The territories of the 27 Member states The 27 Member states including Monaco, Ceuta and Melilla The 27 Member states and Monaco The 27 Member states in (continental) Europe without their islands ip 4 inno 78

9. A good found to infringe an IP right at the Community borders should be: a) b) c) d) Exported Re-exported Released for free circulation in the Community Stopped to allow the customs authorities’ to take the adequate actions ip 4 inno 79

9. A good found to infringe an IP right at the Community borders may be: a) b) c) d) Exported Re-exported Released for free circulation in the Community Stopped to allow the customs authorities’ to take the adequate actions ip 4 inno 80

10. The European Community is a member of the World Customs Organisation (WCO) since 1 st July 2007: a) b) c) d) True False True but since 1992 with the creation of the single market False but the European Commission has an observer status ip 4 inno 81

10. The European Community is a member of the World Customs Organisation (WCO) since 1 st July 2007: a) b) c) d) True False True but since 1992 with the creation of the single market False but the European Commission has an observer status ip 4 inno 82

11. Goods can be detained by customs authorities even though no application for action was lodged: a) b) c) d) True False True, but the right holders have to send a fax True for a certain period of time ip 4 inno 83

11. Goods can be detained by customs authorities even though no application for action was lodged: a) b) c) d) True False True, but the right holders have to send a fax True for a certain period of time ip 4 inno 84

12. The potential infringing goods contained in a traveller’s personal baggage coming from a foreign country would be admitted: a) b) c) d) Only if their value is less than 3, 000 Euro Never Only if they are of a non-commercial nature within the limits of the dutyfree allowance Only if their value is less than 5, 000 Euro ip 4 inno 85

12. The potential infringing goods contained in a traveller’s personal baggage coming from a foreign country would be admitted: a) b) c) d) Only if their value is less than 3, 000 euros Never Only if they are of a non-commercial nature within the limits of the dutyfree allowance Only if their value is less than 5, 000 euros ip 4 inno 86

13. Under Community law, an application for customs action against potential infringing goods can be made to: a) b) c) d) Customs authorities and/or the European Commission Customs authorities and the OHIM Customs authorities, the OHIM and the EPO ip 4 inno 87

13. Under Community law, an application for customs action against potential infringing goods can be made to: a) b) c) d) Customs authorities and/or the European Commission Customs authorities and the OHIM Customs authorities, the OHIM and the EPO ip 4 inno 88

14. Which are the most common counterfeited articles in the EU? a) b) c) d) Cigarettes Medicines Toys Books ip 4 inno 89

14. Which are the most common counterfeited articles in the EU? a) b) c) d) Cigarettes Medicines Toys Books ip 4 inno 90

15. With civil enforcement measures an IP right holder can obtain: a) b) c) d) Interlocutory injunctions Seizure or delivery up of the infringing goods The immediate imprisonment of the infringer Compensation for the loss encountered ip 4 inno 91

15. With civil enforcement measures an IP right holder can obtain: a) b) c) d) Interlocutory injunctions Seizure or delivery up of the infringing goods The immediate imprisonment of the infringer Compensation for the loss encountered ip 4 inno 92

Supporting Exercises • Quiz - Multiple Choice Test • Little Exercise ip 4 inno 93

1. IP rights are territorially based, therefore when an infringement occurs in several countries at the same time … 2. We are not worried at all about the eventual enforcement of our IP rights. Enforcement law and procedures are so harmonised at international level… 3. Our company is accused of infringing a patent but our lawyers affirm this patent is invalid … 4. Two of our products are counterfeited in two different countries. Shall we inform institutions such as WIPO or DG Taxation and Customs Union in the Commission? … 5. Despite the fact that we observe infringement of our trade marks from time to time we have decided not to file a suit in court so as to avoid bad publicity… ip 4 inno a. The TRIPs Agreement provides for minimum standards and, in the EU, harmonised procedures exist on the basis of the Directive 2004/48/EC. However you should be cautious; enforcement is the less harmonised IP area at international level. b. We may decide to challenge the validity of the patent in court. c. The necessary steps to enforce the rights should be taken in each country in accordance with the national rules. d. Alternative dispute resolution (ADR) systems (e. g. mediation or arbitration) can also be used, and they offer confidentiality. e. No, you should contact the qualified enforcement authorities such as police forces or customs authorities in the country (ies) where the infringement occurs. 94

1. IP rights are territorially based, therefore when an infringement occurs in several countries at the same time … 2. We are not worried at all about the eventual enforcement of our IP rights. Enforcement law and procedures are so harmonised at international level… 3. Our company is accused of infringing a patent but our lawyers affirm this patent is invalid … 4. Two of our products are counterfeited in two different countries. Shall we inform institutions such as WIPO or DG Taxation and Customs Union in the Commission? … 5. Despite the fact that we observe infringement of our trade marks from time to time we have decided not to file a suit in court so as to avoid bad publicity… ip 4 inno 1. The TRIPs Agreement provides for minimum standards and, in the EU, harmonised procedures exist on the basis of the Directive 2004/48/EC. However you should be cautious; enforcement is the less harmonised IP area at international level. 2. We may decide to challenge the validity of the patent in court. 3. The necessary steps to enforce the rights should be taken in each country in accordance with the national rules. 4. Alternative dispute resolution (ADR) systems (e. g. mediation or arbitration) can also be used, and they offer confidentiality. 5. No, you should contact the qualified enforcement authorities such as police forces or customs authorities in the country (ies) where the infringement occurs. 95

6. Most of the infringements are not criminalised, as they are of concern only for business-to-business disputes … 7. We know that a product we were about to sell is already pirated and we would like to solve the problem quickly, preferably before its release … 8. When we decided to open a web site to sell our products online we discovered that our trade mark was used as a domain name in several cc. TLDs. What could we do? … 9. Some containers coming from Asia with pirated goods will be delivered soon in a European harbour. Can we stop it before the goods are introduced in the market? … 10. Latest statistics show that the number of cases taken by customs involving goods infringing IP rights is stabilised and is now well controlled by enforcement authorities. Therefore business should focus more on innovation than on enforcing its IP rights … ip 4 inno f. No, nowadays the authorities are largely involved in criminal enforcement to track down counterfeited products on a massive and commercial scale. g. If the registrars of these cc. TLDs have accepted ICANN’s Uniform Domain Name Dispute Resolution Policy (the UDRP Policy) or a similar one, a particular procedure to demonstrate abusive registration may be possible. h. In certain cases, expedited arbitration can be used to carry out a procedure more rapidly and with reduced costs. i. No. The number of articles seized continue to increase. Therefore it is very important to being active with enforcement. j. Yes, the judicial authorities may deliver against the alleged infringer an interlocutory injunction to prevent any imminent infringement of an IP right. 96

6. Most of the infringements are not criminalised, as they are of concern only for business-to-business disputes … 7. We know that a product we were about to sell is already pirated and we would like to solve the problem quickly, preferably before its release … 8. When we decided to open a web site to sell our products online we discovered that our trade mark was used as a domain name in several cc. TLDs. What could we do? … 9. Some containers coming from Asia with pirated goods will be delivered soon in a European harbour. Can we stop it before the goods are introduced in the market? … 10. Latest statistics show that the number of cases taken by customs involving goods infringing IP rights is stabilised and is now well controlled by enforcement authorities. Therefore business should focus more on innovation than on enforcing its IP rights … ip 4 inno f. No, nowadays the authorities are largely involved in criminal enforcement to track down counterfeited products on a massive and commercial scale. g. If the registrars of these cc. TLDs have accepted ICANN’s Uniform Domain Name Dispute Resolution Policy (the UDRP Policy) or a similar one, a particular procedure to demonstrate abusive registration may be possible. h. In certain cases, expedited arbitration can be used to carry out a procedure more rapidly and with reduced costs. i. No. The number of articles seized continue to increase. Therefore it is very important to being active with enforcement. j. Yes, the judicial authorities may deliver against the alleged infringer an interlocutory injunction to prevent any imminent infringement of an IP right. 97

Relevant Links • EU - Info on Copyright and Neighbouring Rights: http: //ec. europa. eu/internal_market/copyright/index_en. htm • EU – Enforcement Directive: http: //ec. europa. eu/internal_market/copyright/enforcement/enforcem ent_en. htm • WIPO: http: //www. wipo. int • WIPO Arbitration and Mediation Center: http: //www. wipo. int/amc/en/ • WIPO Domain Name Dispute Resolution Service: http: //www. wipo. int/amc/en/domains/ • WTO/TRIPs - Agreement: http: //www. wto. org/english/tratop_e/trips_e. htm ip 4 inno 98

Thank you for your attention! ip 4 inno 99