|
The
texts reproduced in this section do not have the legal standing of the
original documents which are entrusted and kept at the WTO Secretariat
in Geneva.
> Go
to a basic explanation of the agreements ...
> ...or
a more technical one
> List
of Abbreviations
Contents
PREAMBLE
PART I General
Provisions and Basic Principles
PART II Standards
Concerning the Availability, Scope and Use of
Intellectual Property Rights
1. Copyright
and Related Rights
2. Trademarks
3. Geographical
Indications
4. Industrial
Designs
5. Patents
6. Layout-Designs
(Topographies) of Integrated Circuits
7. Protection
of Undisclosed Information
8. Control
of Anti-Competitive Practices in Contractual Licences
PART
III Enforcement
of Intellectual Property Rights
1. General
Obligations
2. Civil
and Administrative Procedures and Remedies
3. Provisional
Measures
4. Special
Requirements Related to Border Measures
5. Criminal
Procedures
PART
IV Acquisition
and Maintenance of Intellectual Property Rights and
Related Inter-Partes Procedures
PART
V Dispute
Prevention and Settlement
PART
VI Transitional
Arrangements
PART
VII Institutional
Arrangements; Final Provisions
|
Section
1: general obligations back to top
Article
41
1. Members
shall ensure that enforcement procedures as specified in
this Part are available under their law so as to permit
effective action against any act of infringement of
intellectual property rights covered by this Agreement,
including expeditious remedies to prevent infringements
and remedies which constitute a deterrent to further
infringements. These procedures shall be applied in such
a manner as to avoid the creation of barriers to
legitimate trade and to provide for safeguards against
their abuse.
2. Procedures
concerning the enforcement of intellectual property
rights shall be fair and equitable. They shall not be
unnecessarily complicated or costly, or entail
unreasonable time-limits or unwarranted delays.
3. Decisions
on the merits of a case shall preferably be in writing
and reasoned. They shall be made available at least to
the parties to the proceeding without undue delay.
Decisions on the merits of a case shall be based only on
evidence in respect of which parties were offered the
opportunity to be heard.
4. Parties
to a proceeding shall have an opportunity for review by a
judicial authority of final administrative decisions and,
subject to jurisdictional provisions in a Member’s law
concerning the importance of a case, of at least the
legal aspects of initial judicial decisions on the merits
of a case. However, there shall be no obligation to
provide an opportunity for review of acquittals in
criminal cases.
5. It
is understood that this Part does not create any
obligation to put in place a judicial system for the
enforcement of intellectual property rights distinct from
that for the enforcement of law in general, nor does it
affect the capacity of Members to enforce their law in
general. Nothing in this Part creates any obligation with
respect to the distribution of resources as between
enforcement of intellectual property rights and the
enforcement of law in general.
Section
2: civil and administrative procedures and remedies back to top
Article
42
Fair and Equitable Procedures
Members
shall make available to right holders (11)
civil judicial procedures concerning the enforcement of
any intellectual property right covered by this
Agreement. Defendants shall have the right to written
notice which is timely and contains sufficient detail,
including the basis of the claims. Parties shall be
allowed to be represented by independent legal counsel,
and procedures shall not impose overly burdensome
requirements concerning mandatory personal appearances.
All parties to such procedures shall be duly entitled to
substantiate their claims and to present all relevant
evidence. The procedure shall provide a means to identify
and protect confidential information, unless this would
be contrary to existing constitutional requirements.
Article
43
Evidence
1. The
judicial authorities shall have the authority, where a
party has presented reasonably available evidence
sufficient to support its claims and has specified
evidence relevant to substantiation of its claims which
lies in the control of the opposing party, to order that
this evidence be produced by the opposing party, subject
in appropriate cases to conditions which ensure the
protection of confidential information.
2. In
cases in which a party to a proceeding voluntarily and
without good reason refuses access to, or otherwise does
not provide necessary information within a reasonable
period, or significantly impedes a procedure relating to
an enforcement action, a Member may accord judicial
authorities the authority to make preliminary and final
determinations, affirmative or negative, on the basis of
the information presented to them, including the
complaint or the allegation presented by the party
adversely affected by the denial of access to
information, subject to providing the parties an
opportunity to be heard on the allegations or evidence.
Article
44
Injunctions
1. The
judicial authorities shall have the authority to order a
party to desist from an infringement, inter alia to
prevent the entry into the channels of commerce in their
jurisdiction of imported goods that involve the
infringement of an intellectual property right,
immediately after customs clearance of such goods.
Members are not obliged to accord such authority in
respect of protected subject matter acquired or ordered
by a person prior to knowing or having reasonable grounds
to know that dealing in such subject matter would entail
the infringement of an intellectual property right.
2. Notwithstanding
the other provisions of this Part and provided that the
provisions of Part II specifically addressing use by
governments, or by third parties authorized by a
government, without the authorization of the right holder
are complied with, Members 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 under this Part shall apply or,
where these remedies are inconsistent with a Member’s
law, declaratory judgments and adequate compensation
shall be available.
Article 45
Damages
1. The
judicial authorities shall have the authority to order
the infringer to pay the right holder damages adequate to
compensate for the injury the right holder has suffered
because of an infringement of that person’s intellectual
property right by an infringer who knowingly, or with
reasonable grounds to know, engaged in infringing
activity.
2. The
judicial authorities shall also have the authority to
order the infringer to pay the right holder expenses,
which may include appropriate attorney’s fees. In
appropriate cases, Members may authorize the judicial
authorities to order recovery of profits and/or payment
of pre-established damages even where the infringer did
not knowingly, or with reasonable grounds to know, engage
in infringing activity.
Article
46
Other Remedies
In
order to create an effective deterrent to infringement,
the judicial authorities shall have the authority to
order that goods that they have found to be infringing
be, without compensation of any sort, disposed of outside
the channels of commerce in such a manner as to avoid any
harm caused to the right holder, or, unless this would be
contrary to existing constitutional requirements,
destroyed. The judicial authorities shall also have the
authority to order that materials and implements the
predominant use of which has been in the creation of the
infringing goods be, without compensation of any sort,
disposed of outside the channels of commerce in such a
manner as to minimize the risks of further infringements.
In considering such requests, the need for
proportionality between the seriousness of the
infringement and the remedies ordered as well as the
interests of third parties shall be taken into account.
In regard to counterfeit trademark goods, the simple
removal of the trademark unlawfully affixed shall not be
sufficient, other than in exceptional cases, to permit
release of the goods into the channels of commerce.
Article
47
Right of Information
Members
may provide that the judicial authorities shall have the
authority, unless this would be out of proportion to the
seriousness of the infringement, to order the infringer
to inform the right holder of the identity of third
persons involved in the production and distribution of
the infringing goods or services and of their channels of
distribution.
Article
48
Indemnification of the Defendant
1. The
judicial authorities shall have the authority to order a
party at whose request measures were taken and who has
abused enforcement procedures to provide to a party
wrongfully enjoined or restrained adequate compensation
for the injury suffered because of such abuse. The
judicial authorities shall also have the authority to
order the applicant to pay the defendant expenses, which
may include appropriate attorney’s fees.
2. In
respect of the administration of any law pertaining to
the protection or enforcement of intellectual property
rights, Members shall only exempt both public authorities
and officials from liability to appropriate remedial
measures where actions are taken or intended in good
faith in the course of the administration of that law.
Article
49
Administrative Procedures
To
the extent that any civil remedy can be ordered as a
result of administrative procedures on the merits of a
case, such procedures shall conform to principles
equivalent in substance to those set forth in this
Section.
Section
3: provisional measures back to top
Article
50
1. The
judicial authorities shall have the authority to order
prompt and effective provisional measures:
(a) to
prevent an infringement of any intellectual property
right from occurring, and in particular to prevent the
entry into the channels of commerce in their jurisdiction
of goods, including imported goods immediately after
customs clearance;
(b) to
preserve relevant evidence in regard to the alleged
infringement.
2. The
judicial authorities shall have the authority to adopt
provisional measures inaudita altera parte where
appropriate, in particular where any delay is likely to
cause irreparable harm to the right holder, or where
there is a demonstrable risk of evidence being destroyed.
3. The
judicial authorities shall have the authority to require
the applicant to provide any reasonably available
evidence in order to satisfy themselves with a sufficient
degree of certainty that the applicant is the right
holder and that the applicant’s right is being infringed
or that such infringement is imminent, and to order the
applicant to provide a security or equivalent assurance
sufficient to protect the defendant and to prevent abuse.
4. Where
provisional measures have been adopted inaudita altera
parte, the parties affected shall be given notice,
without delay after the execution of the measures at the
latest. A review, including a right to be heard, shall
take place upon request of the defendant with a view to
deciding, within a reasonable period after the
notification of the measures, whether these measures
shall be modified, revoked or confirmed.
5. The
applicant may be required to supply other information
necessary for the identification of the goods concerned
by the authority that will execute the provisional
measures.
6. Without
prejudice to paragraph 4, provisional measures taken on
the basis of paragraphs 1 and 2 shall, upon request
by the defendant, be revoked or otherwise cease to have
effect, if proceedings leading to a decision on the
merits of the case are not initiated within a reasonable
period, to be determined by the judicial authority
ordering the measures where a Member’s law so permits or,
in the absence of such a determination, not to exceed 20
working days or 31 calendar days, whichever is the
longer.
7. Where
the provisional measures are revoked or where they lapse
due to any act or omission by the applicant, or where it
is subsequently found that there has been no infringement
or threat of infringement of an intellectual property
right, the judicial authorities shall have the authority
to order the applicant, upon request of the defendant, to
provide the defendant appropriate compensation for any
injury caused by these measures.
8. To
the extent that any provisional measure can be ordered as
a result of administrative procedures, such procedures
shall conform to principles equivalent in substance to
those set forth in this Section.
Section
4: special requirements related to border measures back to top
Article
51
Suspension of Release by Customs Authorities
Members
shall, in conformity with the provisions set out below,
adopt procedures (13)
to enable a right holder, who has valid grounds for
suspecting that the importation of counterfeit trademark
or pirated copyright goods (14)
may take place, to lodge an application in writing with
competent authorities, administrative or judicial, for
the suspension by the customs authorities of the release
into free circulation of such goods. Members may enable
such an application to be made in respect of goods which
involve other infringements of intellectual property
rights, provided that the requirements of this Section
are met. Members may also provide for corresponding
procedures concerning the suspension by the customs
authorities of the release of infringing goods destined
for exportation from their territories.
Article
52
Application
Any
right holder initiating the procedures under Article 51
shall be required to provide adequate evidence to satisfy
the competent authorities that, under the laws of the
country of importation, there is prima facie an
infringement of the right holder’s intellectual property
right and to supply a sufficiently detailed description
of the goods to make them readily recognizable by the
customs authorities. The competent authorities shall
inform the applicant within a reasonable period whether
they have accepted the application and, where determined
by the competent authorities, the period for which the
customs authorities will take action.
Article
53
Security or Equivalent Assurance
1. The
competent authorities shall have the authority to require
an applicant to provide a security or equivalent
assurance sufficient to protect the defendant and the
competent authorities and to prevent abuse. Such security
or equivalent assurance shall not unreasonably deter
recourse to these procedures.
2. Where
pursuant to an application under this Section the release
of goods involving industrial designs, patents,
layout-designs or undisclosed information into free
circulation has been suspended by customs authorities on
the basis of a decision other than by a judicial or other
independent authority, and the period provided for in
Article 55 has expired without the granting of
provisional relief by the duly empowered authority, and
provided that all other conditions for importation have
been complied with, the owner, importer, or consignee of
such goods shall be entitled to their release on the
posting of a security in an amount sufficient to protect
the right holder for any infringement. Payment of such
security shall not prejudice any other remedy available
to the right holder, it being understood that the
security shall be released if the right holder fails to
pursue the right of action within a reasonable period of
time.
Article
54
Notice of Suspension
The
importer and the applicant shall be promptly notified of
the suspension of the release of goods according to
Article 51.
Article
55
Duration of Suspension
If,
within a period not exceeding 10 working days after the
applicant has been served notice of the suspension, the
customs authorities have not been informed that
proceedings leading to a decision on the merits of the
case have been initiated by a party other than the
defendant, or that the duly empowered authority has taken
provisional measures prolonging the suspension of the
release of the goods, the goods shall be released,
provided that all other conditions for importation or
exportation have been complied with; in appropriate
cases, this time-limit may be extended by another 10
working days. If proceedings leading to a decision on the
merits of the case have been initiated, a review,
including a right to be heard, shall take place upon
request of the defendant with a view to deciding, within
a reasonable period, whether these measures shall be
modified, revoked or confirmed. Notwithstanding the
above, where the suspension of the release of goods is
carried out or continued in accordance with a provisional
judicial measure, the provisions of paragraph 6 of
Article 50 shall apply.
Article
56
Indemnification of the Importer and of the Owner of the
Goods
Relevant
authorities shall have the authority to order the
applicant to pay the importer, the consignee and the
owner of the goods appropriate compensation for any
injury caused to them through the wrongful detention of
goods or through the detention of goods released pursuant
to Article 55.
Article
57
Right of Inspection and Information
Without
prejudice to the protection of confidential information,
Members shall provide the competent authorities the
authority to give the right holder sufficient opportunity
to have any goods detained by the customs authorities
inspected in order to substantiate the right holder’s
claims. The competent authorities shall also have
authority to give the importer an equivalent opportunity
to have any such goods inspected. Where a positive
determination has been made on the merits of a case,
Members may provide the competent authorities the
authority to inform the right holder of the names and
addresses of the consignor, the importer and the
consignee and of the quantity of the goods in question.
Article
58
Ex Officio Action
Where
Members require competent authorities to act upon their
own initiative and to suspend the release of goods in
respect of which they have acquired prima facie
evidence that an intellectual property right is being
infringed:
(a) the
competent authorities may at any time seek from the right
holder any information that may assist them to exercise
these powers;
(b) the
importer and the right holder shall be promptly notified
of the suspension. Where the importer has lodged an
appeal against the suspension with the competent
authorities, the suspension shall be subject to the
conditions, mutatis mutandis, set out at
Article 55;
(c) Members
shall only exempt both public authorities and officials
from liability to appropriate remedial measures where
actions are taken or intended in good faith.
Article
59
Remedies
Without
prejudice to other rights of action open to the right
holder and subject to the right of the defendant to seek
review by a judicial authority, competent authorities
shall have the authority to order the destruction or
disposal of infringing goods in accordance with the
principles set out in Article 46. In regard to
counterfeit trademark goods, the authorities shall not
allow the re-exportation of the infringing goods in an
unaltered state or subject them to a different customs
procedure, other than in exceptional circumstances.
Article
60
De Minimis Imports
Members
may exclude from the application of the above provisions
small quantities of goods of a non-commercial nature
contained in travellers’ personal luggage or sent in
small consignments.
Section
5: criminal procedures back to top
Article
61
Members
shall provide for criminal procedures and penalties to be
applied at least in cases of wilful trademark
counterfeiting or copyright piracy on a commercial scale.
Remedies available shall include imprisonment and/or
monetary fines sufficient to provide a deterrent,
consistently with the level of penalties applied for
crimes of a corresponding gravity. In appropriate cases,
remedies available shall also include the seizure,
forfeiture and destruction of the infringing goods and of
any materials and implements the predominant use of which
has been in the commission of the offence. Members may
provide for criminal procedures and penalties to be
applied in other cases of infringement of intellectual
property rights, in particular where they are committed
wilfully and on a commercial scale.
< Previous Next >
|
Read a summary
of the TRIPS Agreement
Download
full text in:
> Word format
(31 pages;
150KB)
> pdf format
(33 pages;
193KB)
Notes
11. For
the purpose of this Part, the term “right
holder” includes federations and associations having
legal standing to assert such rights. back to text
12. Where
a Member has dismantled substantially all controls over
movement of goods across its border with another Member
with which it forms part of a customs union, it shall not
be required to apply the provisions of this Section at
that border. back to text
13.
It is understood that there shall be no obligation to
apply such procedures to imports of goods put on the
market in another country by or with the consent of the
right holder, or to goods in transit. back to text
14. For
the purposes of this Agreement:
(a) “counterfeit
trademark goods” shall mean any goods, including
packaging, bearing without authorization a trademark
which is identical to the trademark validly registered in
respect of such goods, or which cannot be distinguished
in its essential aspects from such a trademark, and which
thereby infringes the rights of the owner of the
trademark in question under the law of the country of
importation;
(b) “pirated
copyright goods” shall mean any goods which are
copies made without the consent of the right holder or
person duly authorized by the right holder in the country
of production and which are made directly or indirectly
from an article where the making of that copy would have
constituted an infringement of a copyright or a related
right under the law of the country of importation. back to text
|
