IPLP – Summary
Lecture 1
WIPO, IPR Handbook, Chapter 4, Enforcement of Intellectual Property Rights, nrs. 4.1 - 4.52
Enforcement of industrial property rights
- Oppositon proceedings at industrial property ofces e.g. registraton dispute) – prevent
older rights from being overlooked owners of earlier rights must be able to object
- In some countries there is no provision for oppositon
- Trademarks: pre-registraton oppositon
Civil court procedures
- Provisional measures: injuncton to stop the infringer
Counterfeitng
- Detecton by rightholders or law enforcement ofcers
- Stff penaltes and seirure 3 destructon of goods
- Another possibility is to alert customs authorites
Enforcement of patent rights
- Scope: claims descripton, drawings – to interpret the claims) as mentoned in the patent
specifcaton Scope of protecton by interpretaton of the claims
- Costly, tme consuming proceedings – assess whether you have a chance
Enforcement of copyright and related rights
- Evoluton of internatonal standards for encforcement of copyright and related rights
advance of technological means for the creaton and use of protected material + increasing
economic importance of IP protected goods
- Enforcement in internatonal conventons:
o Obligaton for states to provide adequate means for enforcement of rights
o BC: infringing copies are subject to seirure artcle 16 and 13)
o BC, Rome and Phonograms Conventons also contain provisions requiring
appropriate enforcement measures
Do not provide natonal governments enough guidance concerning
appropriate and modern standards for the enforcement of rights
evoluton of new standards
Natonal legislaton concerning enforcement of rights
- Importance of provisional measures, available on ex parte basis
o Temporary preliminary injunctons to prohibit the commitng or contnuaton of the
commitng of infringements
- Purposes of civil remedies: compensaton, dispose of infringing copies 3 implements and to
grant injuncton to prohibit further infringements
o Not always sufcient deterrents Criminal law: fnes and imprisonment
Border measures: prevent infringing copies from entering a country by customs authorites
,World Trade Organiraton, ‘TRIPS: A More Detailed Overview of the TRIPS Agreement’, secton on
‘Enforcement of Intellectual Property Rights’
Enforcement in TRIPs. Objectves:
- Ensure that effectve means are available to rightholders
- Ensure that enforcement procedures are applied in such a manner as to avoid the creaton of
barriers to legitmate trade and to provide for safeguards against their abuse
General obligatons art. 41 TRIPs)
- Permit effectve acton against any act of infringement of intellectual property rights
- Remedies must be expeditous in order to prevent infringements and they must consttute a
deterrent to further infringements
- Avoid the creaton of barriers to legitmate trade and to provide for safeguards against the
abuse of procedures
- Due process
- Procedures must be fair, equitable, not unnecessarily complicated or costly, not entail
unreasonable tme-limits 3 delay
Civil and administratve procedures and remedies artcle 42-49 TRIPs)
- Due process
- Evidence rules
- Court must be able to order injunctons
- Pay damages and expenses of the rightholder if the infringer acted in bad faith
- Disposal or destructon of infringing goods + materials used in the producton of these
infringing goods implements)
- Inform rightholder on identty of people involved in the producton of infringing goods 3
distributon channels
- Adequate compensaton defendant if the provisions are abused
Provisional measures artcle 50 TRIPs)
- Ensure that judicial authorites can take prompt and effectve provisional measures
- Measures to prevent an infringement from occurring
- Prevent infringing goods from entering the channels of commerce
- Preserve relevant evidence in regard to the alleged infringement
- Judiciaries must be able to adopt provisional measures without prior hearing of the other
- Appropriate compensaton if no infringement is found
- Measures shall be revoked if no date for the proceedings on merits is initated within
reasonable period set by the court or 31 days
Border measures art. 51-60 TRIPs)
- MS must designate a competent authority to which applicatons by right holders for customs
acton shall be lodged
- Necessary provisional measures against the importaton of infringing goods
- Disposal or destructon of infringing goods
Criminal procedures art. 61 TRIPs)
- MS can decide whether they provide for criminal proceedings and penaltes
- Sanctons: imprisonment, monetary fnes to provide a deterrent, seirure, forfeiture and
destructon of the infringing goods and implements
,Frankel & Gervais, p. 5-14; p. 111-112
Paris Conventon
- Covers industrial property: trademarks, patents, designs and confdental informaton
- Trade with foreign countries world fairs) – prevent foreigners from stealing your ideas
Berne Conventon
- Covers “author’s rights”
- Movement led by Victor Hugo
Led to the formaton of WIPO: negotates trade aspects of intellectual property
WTO – TRIPs is annex to the establishing agreement of the WTO Marrakesh Agreement)
- Trade organisaton aimed at enhancing internatonal trade
TRIPs: minimum legal standards that countries must implement in their legislaton
WTO dispute setlement procedure
- Member advises DSB Dispute Setlement Body) of possible dispute with other member
- Consultatons, if they fail the member can ask a panel to be established which organises one
or more hearings
- Appellate body: appeal to the decisions of the panel permanent body)
- Panel issues a report – only binding if the DSB adopts it adopted unless there is a consensus
not to do so)
- Main enforcement: trade retaliaton impositon of tariffs)
- If a member fails to modify its legislaton of practce cross-retaliaton: impositon of trade
sanctons in areas other than IP
IP & IT Litgaton in Europe: a Legal Guide for Foreign Lawyers, 2016, secton on The Netherlands in
chapter 'Important Milestones of a Trial' p. 232-244).
Proceedings in IP
- Preliminary kort geding)
o Urgent interest infringement implies an urgent interest
o Only preliminary measures to be awarded
o Both partes can argue their case
o Substantve proceedings should be started within a reasonable period afer an
injuncton has been obtained
- Substantve proceedings bodemprocedure)
o Procedural documents
o Further briefs
o Oral proceedings
Milestones of the civil lawsuit
- Competence
o Absolute: district court or sub-district court claims with a maximum of 25000)
o Relatve: region: domicile of the defendant
- Writen pleadings in frst instance
- Oral hearing in frst instance
- Judgment in frst instance
- Appeal
, - Cassaton
Preliminary ruling can be requested at the CJEU.
Judge can impose all lawyer fees in IP cases) – costs should be realistc
Damages or surrender of profts can be requested in substantve proceedings not in preliminary
proceedings)
- Damages only awarded if the defendant can be held responsible for the IP infringement and3
or has acted in bad faith
- Actual damages difcult to calculate)
- Awarding punitve damages or awarding double 3 triple damages is not possible under Dutch
law
Evidence
- Burden of proof on the plaintff, but can be shifed when reasonable
- Preliminary proceedings: assertons do not have to indisputable but sufciently plausible
- Witnesses and experts are possible
Lecture 1
WIPO, IPR Handbook, Chapter 4, Enforcement of Intellectual Property Rights, nrs. 4.1 - 4.52
Enforcement of industrial property rights
- Oppositon proceedings at industrial property ofces e.g. registraton dispute) – prevent
older rights from being overlooked owners of earlier rights must be able to object
- In some countries there is no provision for oppositon
- Trademarks: pre-registraton oppositon
Civil court procedures
- Provisional measures: injuncton to stop the infringer
Counterfeitng
- Detecton by rightholders or law enforcement ofcers
- Stff penaltes and seirure 3 destructon of goods
- Another possibility is to alert customs authorites
Enforcement of patent rights
- Scope: claims descripton, drawings – to interpret the claims) as mentoned in the patent
specifcaton Scope of protecton by interpretaton of the claims
- Costly, tme consuming proceedings – assess whether you have a chance
Enforcement of copyright and related rights
- Evoluton of internatonal standards for encforcement of copyright and related rights
advance of technological means for the creaton and use of protected material + increasing
economic importance of IP protected goods
- Enforcement in internatonal conventons:
o Obligaton for states to provide adequate means for enforcement of rights
o BC: infringing copies are subject to seirure artcle 16 and 13)
o BC, Rome and Phonograms Conventons also contain provisions requiring
appropriate enforcement measures
Do not provide natonal governments enough guidance concerning
appropriate and modern standards for the enforcement of rights
evoluton of new standards
Natonal legislaton concerning enforcement of rights
- Importance of provisional measures, available on ex parte basis
o Temporary preliminary injunctons to prohibit the commitng or contnuaton of the
commitng of infringements
- Purposes of civil remedies: compensaton, dispose of infringing copies 3 implements and to
grant injuncton to prohibit further infringements
o Not always sufcient deterrents Criminal law: fnes and imprisonment
Border measures: prevent infringing copies from entering a country by customs authorites
,World Trade Organiraton, ‘TRIPS: A More Detailed Overview of the TRIPS Agreement’, secton on
‘Enforcement of Intellectual Property Rights’
Enforcement in TRIPs. Objectves:
- Ensure that effectve means are available to rightholders
- Ensure that enforcement procedures are applied in such a manner as to avoid the creaton of
barriers to legitmate trade and to provide for safeguards against their abuse
General obligatons art. 41 TRIPs)
- Permit effectve acton against any act of infringement of intellectual property rights
- Remedies must be expeditous in order to prevent infringements and they must consttute a
deterrent to further infringements
- Avoid the creaton of barriers to legitmate trade and to provide for safeguards against the
abuse of procedures
- Due process
- Procedures must be fair, equitable, not unnecessarily complicated or costly, not entail
unreasonable tme-limits 3 delay
Civil and administratve procedures and remedies artcle 42-49 TRIPs)
- Due process
- Evidence rules
- Court must be able to order injunctons
- Pay damages and expenses of the rightholder if the infringer acted in bad faith
- Disposal or destructon of infringing goods + materials used in the producton of these
infringing goods implements)
- Inform rightholder on identty of people involved in the producton of infringing goods 3
distributon channels
- Adequate compensaton defendant if the provisions are abused
Provisional measures artcle 50 TRIPs)
- Ensure that judicial authorites can take prompt and effectve provisional measures
- Measures to prevent an infringement from occurring
- Prevent infringing goods from entering the channels of commerce
- Preserve relevant evidence in regard to the alleged infringement
- Judiciaries must be able to adopt provisional measures without prior hearing of the other
- Appropriate compensaton if no infringement is found
- Measures shall be revoked if no date for the proceedings on merits is initated within
reasonable period set by the court or 31 days
Border measures art. 51-60 TRIPs)
- MS must designate a competent authority to which applicatons by right holders for customs
acton shall be lodged
- Necessary provisional measures against the importaton of infringing goods
- Disposal or destructon of infringing goods
Criminal procedures art. 61 TRIPs)
- MS can decide whether they provide for criminal proceedings and penaltes
- Sanctons: imprisonment, monetary fnes to provide a deterrent, seirure, forfeiture and
destructon of the infringing goods and implements
,Frankel & Gervais, p. 5-14; p. 111-112
Paris Conventon
- Covers industrial property: trademarks, patents, designs and confdental informaton
- Trade with foreign countries world fairs) – prevent foreigners from stealing your ideas
Berne Conventon
- Covers “author’s rights”
- Movement led by Victor Hugo
Led to the formaton of WIPO: negotates trade aspects of intellectual property
WTO – TRIPs is annex to the establishing agreement of the WTO Marrakesh Agreement)
- Trade organisaton aimed at enhancing internatonal trade
TRIPs: minimum legal standards that countries must implement in their legislaton
WTO dispute setlement procedure
- Member advises DSB Dispute Setlement Body) of possible dispute with other member
- Consultatons, if they fail the member can ask a panel to be established which organises one
or more hearings
- Appellate body: appeal to the decisions of the panel permanent body)
- Panel issues a report – only binding if the DSB adopts it adopted unless there is a consensus
not to do so)
- Main enforcement: trade retaliaton impositon of tariffs)
- If a member fails to modify its legislaton of practce cross-retaliaton: impositon of trade
sanctons in areas other than IP
IP & IT Litgaton in Europe: a Legal Guide for Foreign Lawyers, 2016, secton on The Netherlands in
chapter 'Important Milestones of a Trial' p. 232-244).
Proceedings in IP
- Preliminary kort geding)
o Urgent interest infringement implies an urgent interest
o Only preliminary measures to be awarded
o Both partes can argue their case
o Substantve proceedings should be started within a reasonable period afer an
injuncton has been obtained
- Substantve proceedings bodemprocedure)
o Procedural documents
o Further briefs
o Oral proceedings
Milestones of the civil lawsuit
- Competence
o Absolute: district court or sub-district court claims with a maximum of 25000)
o Relatve: region: domicile of the defendant
- Writen pleadings in frst instance
- Oral hearing in frst instance
- Judgment in frst instance
- Appeal
, - Cassaton
Preliminary ruling can be requested at the CJEU.
Judge can impose all lawyer fees in IP cases) – costs should be realistc
Damages or surrender of profts can be requested in substantve proceedings not in preliminary
proceedings)
- Damages only awarded if the defendant can be held responsible for the IP infringement and3
or has acted in bad faith
- Actual damages difcult to calculate)
- Awarding punitve damages or awarding double 3 triple damages is not possible under Dutch
law
Evidence
- Burden of proof on the plaintff, but can be shifed when reasonable
- Preliminary proceedings: assertons do not have to indisputable but sufciently plausible
- Witnesses and experts are possible
