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出處：法律顧問網·涉外11chelsea.com
時間：2010/12/1 16:39:00 |
Chapter 4
Enforcement of Intellectual Property Rights
Enforcement of Industrial Property Rights, Copyright
and Related Rights
Introduction
Enforcement of Industrial Property Rights in General
Enforcement of Patent Rights
Enforcement of Copyright and Related Rights
Activities within WIPO Concerning Enforcement
Enforcement Provisions of the TRIPS Agreement
Intellectual Property Litigation
Introduction
Review of Industrial Property Office Decisions
Infringement Actions
Remedies
Arbitration and Mediation of Intellectual Property
Disputes
Alternative Dispute Resolution
Enforcement in the International Context
WIPO Arbitration and Mediation Center
WIPO Internet Domain Name Dispute Resolution
206 WIPO Intellectual Property Handbook: Policy, Law and Use
Chapter 4 - Enforcement of Intellectual Property Rights 207
Enforcement of Industrial Property Rights, Copyright and Related Rights
Introduction
General
4.1 Accessible, sufficient and adequately funded arrangements for the protection of rights are
crucial in any worthwhile intellectual property system. There is no point in establishing a detailed
and comprehensive system for protecting intellectual property rights and disseminating information
concerning them, if it is not possible for the right-owners to enforce their rights effectively in a
world where expanding technologies have facilitated infringement of protected rights to a hitherto
unprecedented extent. They must be able to take action against infringers in order to prevent
further infringement and recover the losses incurred from any actual infringement. They must also
be able to call on the state authorities to deal with counterfeits.
4.2 All intellectual property systems need to be underpinned by a strong judicial system for
dealing with both civil and criminal offenses, staffed by an adequate number of judges with suitable
background and experience. Intellectual property disputes are in the main matters to be decided
under civil law and the judicial system should make every effort to deal with them not only fairly but
also expeditiously. Without a proper system for both enforcing rights and also enabling the grant
of rights to others to be resisted, an intellectual property system will have no value.
Avoiding Litigation
4.3 A competitor whose operations are obstructed by earlier rights will usually seek to avoid or
overcome the problem in a legitimate way, e.g. by inventing around the protected area in the case
of an earlier patent. Another approach is to seek a license or to negotiate some other agreement in
a friendly way. In coming to agreements with competitors, of course, companies must be careful
not to contravene competition policy rules aimed at avoiding distortion of competition. This
normally means that the terms of any license must not contain anti-competitive or unreasonable
provisions.
4.4 A company affected by another’s right will carefully assess what its scope is and whether or
not it is valid. This highlights a point of particular importance to the owners of patents, namely that
claims must be well drafted and properly supported by the disclosure of the invention. They must
clearly distinguish the protected subject matter from the prior art and must be neither overcovetous
nor too modest. A well drafted patent will often be enough in itself to deter potential
infringers. Similar arguments can apply to other rights such as trademarks and designs.
4.5 It is up to a right-owner to act as his own policeman. He must keep an eye on the industrial
and commercial markets in which he sells his products, or provides his services, or in which his
processes might be used. He must keep abreast of his competitor’s activities. If he becomes aware
of an apparent infringement he should not necessarily assume that the infringement is deliberate
(though if the infringing item is an exact copy or counterfeit, infringement will almost certainly have
been deliberate). He should first contact the competitor to point out the existence of his right.
Laws in a number of countries concerning patents, designs and trademarks, provide that a rightowner
may not make groundless threats against competitors or their distributors, for example
threatening a court action when there is no ground for alleging infringement or when the right
208 WIPO Intellectual Property Handbook: Policy, Law and Use
relied upon has expired, but he can send a simple letter drawing attention to the right so that the
infringer cannot subsequently argue ignorance.
4.6 Negotiation is an important aspect of protecting and enforcing rights. In negotiation, an
infringer might well be persuaded to change what he is doing. During the attempts to negotiate,
the supposed infringer may claim that he is not infringing; or he may allege that the right is of little
value and does not justify significant royalties; or he may argue against the proposed license terms.
It may well be worth suggesting that the services of a mediator be used or that the issue should be
decided by arbitration. Of course, both sides need to agree to accept an arbitrator’s decision and a
contract to that effect may be needed.
Enforcement of Industrial Property Rights in General
Action Before an Industrial Property Office
4.7 Industrial property offices frequently have quasi-judicial functions in the administration of
industrial property systems, and provide a forum for procedures for contesting rights under
consideration or granted by the office. Those procedures are often referred to as opposition
procedures.
4.8 The expression “opposition” may be construed widely, as referring to all possibilities open
to third parties to intervene before the industrial property office both in proceedings leading to the
grant of a right and in proceedings for contesting the grant after it has occurred. The possibilities
for opposition arise particularly in relation to registrable rights such as patents and trademarks,
because the registration can be disputed. The possibility of opposition rarely arises in relation to
copyright and related rights, since these rights in the great majority of jurisdictions arise
automatically on the creation of the protected work.
4.9 Why do States provide for opposition? With even the most rigorous examination system,
the State cannot guarantee that the rights which it grants are valid — there is always the possibility
that a prior right has been overlooked or a specification misunderstood. Many systems are not
particularly rigorous, which makes it all the more likely that rights might be granted in conflict with
earlier rights. Thus the owners of earlier rights must be able to object at some stage. This could of
course be before a court. However, in everyone’s interests, opposition should be a relatively
straightforward, speedy and inexpensive matter, handled as early as possible in the life of the right.
Thus many systems provide that opposition can be considered by the national industrial property
office acting in a quasi-judicial role, as well as by courts. Pre-grant opposition is invariably before
the office.
4.10 The first opportunity that others, for example competitor enterprises producing goods of
the same character as those covered by the patent application, have to become aware that a patent
which could affect their business is being applied for, is at the first publication stage, 18 months
after the priority date. Enterprises, particularly those which own patents, should keep their eye on
the activities of competitors and what is happening in the marketplace, and in particular on patent
applications made in their areas of interest, for instance by scrutinizing patent office journals and
published applications. Not only is it important to know if competitors are seeking to protect
developments which come within the scope of one’s own patents, but it is also important to be
warned if they are seeking to protect known technology or technology patented by others. One
can also learn from the search report, published with the application, of the prior art which will be
considered at the examination stage.
Chapter 4 - Enforcement of Intellectual Property Rights 209
4.11 Some systems allow for formal opposition before the grant of the patent or an opportunity
for third parties to become a party in arguments about whether or not the patent should or should
not be granted. The problem with such pre-grant opposition is that there is often very considerable
delay in achieving a grant. Delay means that a patentee who needs a granted patent in order to
pursue an infringement could not settle an action against the infringer quickly.
4.12 It can be important to bring post-grant opposition proceedings in good time. If too long a
delay occurs, the user of the later patent might argue that the owner of the earlier one has
acquiesced in the grant of the later one and as a result should not be allowed to take action. This
might make it difficult to enforce the earlier patent against products or processes covered by the
later one.
4.13 In some countries, such as the United States, there is no provision for opposition. However,
third parties concerned about a granted patent can ask for it to be re-examined by the patent
office. Such parties do not become direct parties to the procedure, but may draw prior art, which
may have been overlooked in the first examination, to the attention of the examiner. Reexamination
may result in refusal or in a more tightly drafted patent.
4.14 In many countries there is no provision at all for opposition because the industrial property
office lacks the expertise. This can be the case in those countries, such as France, where no
substantive examination is carried out. In such situations, revocation before the courts is the only
possibility for securing cancellation or amendment of a competitor’s patent.
4.15 Many countries provide for pre-registration opposition to trademark registration.
Trademarks are published in the form in which they are to be registered, and a short period is
allowed for opposition. In general, considerations are much more straightforward than those for
patents and procedures can be much more rapid. In the United Kingdom, there are few
oppositions of trademarks, probably because there is a rigorous examination involving search of
earlier rights. In other countries, for example Germany, there are more oppositions because there is
no official search against prior rights during examination; so opposition is the only way in which the
owner of an earlier trademark can induce the industrial property office to take account of this
earlier right.
4.16 After registration of a trademark, in many countries it is possible for an aggrieved party to
apply to the office for removal of the mark from the register, or to seek its modification. One of the
main grounds for this would be non-use of the mark.
4.17 As for registered designs, where there is no provision for pre-registration opposition,
interested parties may seek cancellation of registrations by the office.
Civil Court Procedures
4.18 Despite efforts to achieve friendly settlement, circumstances can and do arise where the
owner of a right feels that he must take action against an infringer in order to protect his markets,
present or future. In most jurisdictions this will be handled in the civil courts. In most situations,
there will be considerable dispute as to whether for example the claims in a patent to be enforced
should be of the scope claimed, and as to whether the alleged infringement actually falls within the
valid scope. With trademarks, arguments also concern the scope of the registration and whether
the allegedly infringing mark is confusingly similar to the earlier mark. Infringers may genuinely
believe that they have a plausible case on such aspects. Most patent infringements are not slavish
imitations but, arguably, take advantage of the protected inventive concepts of the patent and will
have to be resolved on the basis of expert opinion.
210 WIPO Intellectual Property Handbook: Policy, Law and Use
4.19 In an action for patent infringement in common-law countries (the procedure and
terminology in civil-law countries differs to some extent), the patent owner, acting through his
immediate lawyers (solicitors), arranges for a writ or complaint to be served on the alleged infringer.
In the writ the patent owner, as plaintiff, will specify the nature of the alleged infringement and the
remedy sought. Almost always, an injunction restraining the alleged infringer, the defendant, from
continuing with what he has been doing, will be requested, as well as damages. The defendant will
usually acknowledge the writ and give notice that he intends to defend. If he does not, the plaintiff
may be entitled to a final or interlocutory ruling (one which decides the issue but leaves open the
question of damages, etc.) forthwith. If the defendant does defend, and the issue is not settled out
of court or dealt with summarily, pleadings will be exchanged, on the one hand stating the material
facts of the claim and on the other the defenses or counterclaims. The purpose of pleadings is to
define precisely the issues in dispute and eliminate agreed or irrelevant matters. They go back and
forth and can take several months. A counterclaim may be an allegation that the patent is invalid;
this will have to be defended by the patent owner. Once the pleadings have been completed the
plaintiff will issue a summons for directions. Such directions, given by the judge, will deal with
discovery and inspection of documents and in general with the trial preparations. Notice to inspect
documents may be served on the other side by leave of the court. So may interrogatories, which
take the form of written questions which the other side must answer under oath, e.g. by sworn
affidavit, before the trial.
4.20 It is noteworthy that only a small minority of cases actually get to the trial stage, and the
rest are settled along the way, for reasons of time, effort and expense.
4.21 Cases involving complex technology can take a very long time in court with expert witnesses
being called and subjected to examination and cross-examination by both sides. In issuing his
reasoned decision, the judge can make various awards. In addition to injunctions, the court may
also award damages in respect of the infringement, namely compensation for sales and markets lost
as a result of the infringing activity. As an alternative to damages, the owner of the patent can be
awarded an account of profits. All the profits derived by the defendant as a result of the
infringement may be surrendered to the patent owner. An order requiring the defendant to deliver
up to the patent owner, or to destroy, any products or articles incorporating the patented invention
can also be made. Finally, the patent owner can secure a declaration that the patent is valid and
infringed.
Criminal Actions: Counterfeiting
4.22 As already mentioned, patent actions are essentially civil actions for infringement. In the
case of trademarks and copyright, much of what has been explained about procedures in relation to
civil actions applies to ordinary actions for infringement, but the serious criminal offenses of
counterfeiting and piracy can also arise. A trader may knowingly manufacture, distribute or sell
goods marked with a trademark where the marking has been done without the permission of the
owner or where the goods have been illicitly copied.
4.23 There are several ways that counterfeits can come to the attention of the authorities. Rightowners
themselves may become aware of distributors or retailers trading in counterfeit goods and
bring the trade to the attention of the police. Also counterfeits may be detected by law
enforcement officers who are specifically empowered under trademark legislation to take action
against traders in counterfeit goods. Their powers may be extended to enable them to deal with
copyright offenses. On conviction, traders in counterfeit goods can face stiff penalties, and seizure
of all offending products is normal. In respect of items protected by copyright, such as sound
recordings on tape or compact disk, the police are the normal enforcement authority and will take
Chapter 4 - Enforcement of Intellectual Property Rights 211
action on the basis of a complaint by the lawful right-owner. They often need little more than
24 hours’ warning in order to secure warrants and make checks.
4.24 Another way in which action against counterfeit goods can be taken occurs at ports of entry
of imports. If a mark owner becomes aware that consignments of counterfeit goods are on their
way to the country, he can alert the customs authorities, who will keep watch for the goods and
impound them when they arrive. Action can then be taken against the importer.
Enforcement of Patent Rights
4.25 In most systems, a patent is the right enforceable in a court, usually to prevent the
manufacture, sale and use of a patented invention. It is not, as many people think, permission to
practice the patented invention, which may be subject to restrictions for other reasons such as
security or public health. Application is made to the court to stop the unauthorized manufacture,
sale or use of the invention, so that the court may grant the appropriate order and stop the
infringement. In practice, however, the process is less straightforward than it sounds.
Assessing the Scope of Patent Rights
4.26 When thinking about patent enforcement, a patentee must first assess what he has
patented. It is now a feature of just about all patent systems that a patent must include either a
specification containing claims or a description, claims or any required drawings (depending on the
terminology of the particular law). In most systems, the claims are decisive, as they define the scope
of protection sought and eventually granted through the patent. The specification or the
description and drawings may be used to interpret the claims, which must be fully supported by
them.
4.27 Most inventors use the services of a patent attorney to write the specification for them. An
inventor may not fully understand the specification, and particularly may have difficulties in
understanding the claims. Even where the patentee has some idea of the exclusive right granted to
him in his own country, it is very rare for him to know with any precision what rights he may have
in corresponding patents in other jurisdictions. The patentee’s first real understanding of the extent
of his patent rights often only comes to him when he is considering enforcement.
4.28 Thus the basis for enforcement of patent rights is established at the start of the patenting
process when the patent specification is written by the inventor or the inventor’s patent attorney.
The examination process in the Patent Office can modify the original wording. The inventor will
normally try to avoid any modification which will result in a limitation of the scope of protection, for
any reduction in the scope of protection makes it easier for a competitor to avoid infringement. If a
competitor can easily supply the market with something that is equivalent to the invention, but
does not infringe the patent, then the patent may be of limited commercial value. Patent Office
examiners should try to remember this when an applicant for a patent steadfastly resists amending
his claims in order to overcome an objection, but instead tries to deal with the objection by
argument. While acceding to an amendment might lead to the early grant of a patent on the
application, it may also lead to a patent right of doubtful commercial utility.
Evaluating Validity and Infringement of a Patent
4.29 Having assessed the scope of the patent right, the next task is for the patentee to decide if
there is infringement. Before committing himself to the financial risk of a patent case — which can
212 WIPO Intellectual Property Handbook: Policy, Law and Use
be among the most time-consuming and expensive of all forms of litigation — a patentee, unless he
is very wealthy and relaxed about money, must make some attempt to forecast whether he can be
successful.
4.30 The issue of infringement is very rarely considered on its own. Patents, like other forms of
intellectual property, do not only affect the parties to a dispute; they have an effect on the public
at large. This being the case, it is normally considered that a patent which can be shown to be
invalid cannot be enforceable. In spite of the examination of patent applications during
prosecution, no patent system guarantees the validity of a granted patent. In a patent enforcement
action, therefore, a defendant will usually add to any defense of non-infringement a further
defense, often in the form of a counterclaim, that the patent is invalid and hence not enforceable
even if infringed. In some jurisdictions, the issues of infringement and validity are heard together.
In others, the question of validity is heard separately by a different court or it may be referred to the
Patent Office.
4.31 Because of the principle that no invalid patent should be enforceable, the defendant in a
patent action is usually allowed to bring in evidence of invalidity at any stage of the proceedings,
and in some jurisdictions even during the trial itself. As a result, the position of the patentee during
patent enforcement proceedings tends to deteriorate as a defendant makes searches and often
finds evidence which is relevant to validity.
4.32 As already stated, the task of the court in the determination of infringement is the
assessment of the scope of protection defined by the patent and whether the alleged infringement
falls within that assessed scope. In the determination of validity, the court (or whatever tribunal is
considering validity) should take the same scope of protection as has been defined for the purposes
of infringement, and consider whether the evidence produced by the defendant renders the patent
invalid with respect to, and to the extent of, the scope of protection claimed by the patentee.
Different issues will almost always arise in these two assessments. The starting point for both,
however, is almost always the wording of the claims.
4.33 Frequently, there will be a problem as to whether the actual wording of the claims, if
necessary interpreted in light of the specification (or the description and any drawings), defines an
invention which includes the allegedly infringing subject matter. For example, the claim may
include as a feature “a spring.” If the allegedly infringing device does not include a spring, but
instead has a solid rubber tube which in some respects acts like a spring, can that be infringement?
Different jurisdictions may handle this kind of question differently, depending on the way in which
their law has developed the procedure for the definition of an invention. In addition, many courts
require or expect the assistance of an expert to give guidance as to the technical merit of an
argument, such as, based on the example above, that a rubber tube can be considered to fall within
the term, “spring.”
4.34 The technical content in many patent cases can be very complex indeed, and the resolution
of the technical points of dispute may not only involve one or more expert witnesses, but may need
experimental evidence as well. For instance, in a case concerning the alleged infringement of a
patent granted for an invention consisting of an air plasma cutting torch, the claim included a
feature which defined what was happening within the torch when it was operated. To prove
infringement, an experiment was necessary to define the temperature gradient of the plasmagenic
air within the torch itself. A probe inserted into the torch has the effect of modifying the air flow
through the torch, which in turn will affect the temperature gradient. A better means of evaluation
is thermal imaging, but it is expensive to set up. No sooner has one side carried out experiments,
than the other side may feel obliged to carry out experiments themselves to check the worth of the
first set of experiments or with the aim of disproving the first experiments.
Chapter 4 - Enforcement of Intellectual Property Rights 213
4.35 Assisted by arguments, which in turn are supported by expert evidence and experimental
evidence, the court will reach a conclusion about whether or not an infringement has occurred. But
most patents contain more than one claim. The inclusion of a number of claims is to give the
patentee extra chances of preventing an infringement. If one claim is held invalid, the patentee
may still succeed in restraining infringement if it is held that another claim is valid and an
infringement has occurred with respect thereto. Where the patent in suit has a number of claims
with respect to which the patentee alleges an infringement, the court will have to consider each
claim separately to see if it is infringed.
4.36 Similar expert evidence and experiments may be needed in order to deal with validity. Using
the “spring” example given above, it may be that the defendant can show that it was known
before the date of the patent to use a member having elastic properties in some respects similar to
a spring. As with the determination of infringement, the court will need to decide whether the
known information is sufficient to invalidate the claims; and that exercise needs to be carried out
for all the claims.
The Cost of Patent Litigation
4.37 Whether the submission and evidence concerning infringement and validity are made in
writing or given orally at a hearing, or a combination of both, the parties to a patent dispute will
find themselves involved in lengthy consideration of the issues and preparation of material for the
court. It is mainly the borderline cases that go to trial. This has the effect of extending the
arguments by which each side hopes to secure a decision in its favor. Where the patent dispute
occurs in a field of high commercial value, and most disputes are because of their high cost, the
parties may be inclined to drag any point into the dispute, however peripheral, if it appears to help
their case. The costs arising from all of this can become outrageous.
4.38 This is really the key point about patent enforcement. However carefully one makes an
estimate of the costs at the start of the litigation, they almost invariably have to be revised upwards
as new issues come to light during the development of the case. Patent enforcement, or defense
against enforcement, occurs because someone wishes to receive a commercial advantage, in other
words, to make money. That advantage must constantly be reviewed against the cost of the
litigation.
Enforcement of Copyright and Related Rights
Introduction
4.39 The evolution of international standards for the enforcement of copyright and related rights
has been dramatic in recent years, and this evolution has been driven principally by two factors.
The first is the advance of technological means for the creation and use (both authorized and
unauthorized) of protected material, including, most recently, the advent of digital technology,
which makes it possible to transmit and make perfect copies of any information existing in digital
form, including works and productions protected by copyright and related rights. The second factor
is the increasing economic importance of goods and services protected by intellectual property
rights in the realm of international trade; simply put, trade in products embodying protected
intellectual property rights is now a booming, worldwide business.
214 WIPO Intellectual Property Handbook: Policy, Law and Use
Provisions on Enforcement of Rights in International Copyright and Related Rights Conventions
4.40 While the international copyright and related rights conventions administered by WIPO do
not contain extensive provisions dealing with enforcement of rights, the obligation of States to
provide adequate means for enforcement of rights is clearly present in these conventions. The
Berne Convention contains two specific provisions on the enforcement of rights, on the one hand
Article 16(1) and (2), which provides that infringing copies of a work are subject to seizure in any
country of the Berne Union where the work enjoys protection, even when the copies come from a
country where the work is not or no longer protected, and on the other hand Article 13(3), which
provides for seizure of copies of certain recordings of musical works imported without permission of
the author or other owner of copyright in the country of importation.
4.41 The Berne, Rome and Phonograms Conventions also contain provisions indirectly requiring
appropriate enforcement measures in any country party to the conventions. For example,
Article 36(1) of the Berne Convention provides that “Any country party to this Convention
undertakes to adopt, in accordance with its constitution, the measures necessary to ensure the
application of this Convention”; paragraph (2) of the same Article provides that “It is understood
that, at the time a country becomes bound by this Convention, it will be in a position under its
domestic law to give effect to the provisions of this Convention.” Similar provisions are found in
Article 26(1) and (2) of the Rome Convention. Article 2 of the Phonograms Convention obligates
each Contracting State to protect producers of phonograms against the making of duplicates
(copies) without the consent of the producers and against the importation and distribution of such
duplicates; Article 3 of the Convention leaves the implementation to the Contracting States, which
may choose one or more of the following: copyright or other specific (“related” or “neighboring”)
rights, unfair competition or penal sanctions.
Evolution of International Standards for the Enforcement of Rights
4.42 It is obvious that the above provisions of the Berne, Rome and Phonograms Conventions
cannot be respected without appropriate measures for the enforcement of rights provided under
the national laws of their member States. It has become obvious that such provisions alone do not
provide national governments with the necessary guidance concerning appropriate and modern
standards for the enforcement of rights. Thus, evolution of new standards for enforcement of
rights has taken place in a number of contexts, including the activities of WIPO.
4.43 Since the beginning of the 1980s, WIPO has devoted ever greater attention to questions
relating to the enforcement of rights. A short list is illustrative: two WIPO Worldwide Forums on
Piracy were held in 1981 and 1983; extensive and detailed recommendations for measures to
combat piracy of audiovisual works, phonograms and the printed word were developed in the series
of meetings on categories of works (1986 to 1988); a committee of experts was convened in 1988
to elaborate measures against both piracy and counterfeiting, which were included by reference in
the draft WIPO Model Law on Copyright prepared by the International Bureau and discussed by a
Committee of Experts in 1989 and 1990; a detailed chapter on enforcement of rights was included
in a draft WIPO Model Law on the Protection of Producers of Sound Recordings considered by a
Committee of Experts in 1992, which, in addition to provisions on conservatory measures, civil
remedies and criminal sanctions, contained proposed sanctions against the abuse of technical
means applied for the protection of copyright.
4.44 The experience gained in all of the above activities since the 1980s has been reflected in the
work of a Committee of Experts towards development of a Protocol to the Berne Convention,
which began in 1991, and on the development of a possible international instrument on the
protection of the rights of performers and producers of phonograms, which began in 1993.
Chapter 4 - Enforcement of Intellectual Property Rights 215
Naturally, provisions on enforcement of rights have figured prominently in the discussions of both
Committees. These deliberations were part of a process leading to a Diplomatic Conference
in 1996, which resulted in the adoption of the WIPO Copyright Treaty and the WIPO Performances
and Phonograms Treaty, dealt with in chapter 5; both contain provisions on the enforcement of
rights.
National Legislation Concerning Enforcement of Rights
4.45 The availability of appropriate provisional (conservatory) measures is an indispensable
element of any efficient mechanism for the enforcement of copyright. The most important
objectives of such measures are the prevention of acts of infringement and the seizure of infringing
copies, reproducing equipment and other implements that could be used for (further)
infringements, constitute essential evidence and could disappear if not brought under the control of
the court. These measures must be available on an ex parte basis where giving the defendant prior
notice would be counterproductive.
4.46 In particular, it should be possible for right-owners to be granted temporary preliminary
injunctions to prohibit the committing, or the continuation of the committing, of infringements.
Also, courts must be able to order the search, temporary seizure and temporary impounding of
suspected unauthorized copies of works and other protected subject matter, packaging materials,
implements for the making of such copies and documents, accounts or business papers relating to
such copies.
4.47 The purposes of civil remedies are (i) to provide compensation for the prejudice caused by
infringements, (ii) to dispose appropriately of the infringing copies (typically through destruction or
other disposal outside the normal channels of commerce), (iii) to dispose appropriately of
implements used for infringing activities and (iv) to grant injunctions to prohibit further
infringements. Such remedies should always be available irrespective of whether the infringement
has been committed willfully and/or for profit-making purposes.
4.48 Civil remedies are not always sufficient deterrents. Where infringement becomes a
business, the closing down of one plant with the assistance of courts and law enforcement
authorities may only mean that the plant will re-open somewhere else. Infringements committed
willfully and for profit-making purposes should be punished by criminal sanctions, and the level of
the sanctions must make it clear that such infringements of copyright are serious offenses. It is
normally preferable that criminal sanctions are also applicable in case of infringements committed
through gross negligence, for profit-making purposes, because it may be difficult to prove that
infringements are committed willfully. Increased punishments in cases of recidivism are also
justified. The criminal sanctions available should comprise both fines and imprisonment, and, where
merited by the case, courts should be able to impose both these sanctions on the infringer.
4.49 In certain cases, the only practical means of preventing copying is through so-called “copyprotection”
or “copy-management systems”, that is, systems containing technical devices that
either entirely prevent the making of copies or render the quality of the copies made so poor that
they are unusable. Technical devices are also used to prevent the reception of encrypted
commercial television programs except with the help of decoders, which would-be viewers have to
buy or rent. However, it is technically possible to make devices by means of which copy-protection
and copy-management systems as well as encryption systems may — although illegally — be
circumvented. Where such devices are manufactured or imported and distributed unlawfully, the
normal exploitation of the works is undermined and may cause serious prejudice to the authors of,
or other owners of copyright in, those works. Such activities are violations of the protected rights
and should be sanctioned in a way similar to that of other kinds of infringements.
216 WIPO Intellectual Property Handbook: Policy, Law and Use
Border Measures
4.50 Piracy is by no means an exclusively national activity, i.e., the production in a country of
infringing copies for sale in that country. It is also very much an international operation, with vast
quantities of infringing copies being manufactured in one country and shipped to others, often on
the other side of the world; quantities of infringing copies which are shipped to other countries
substantially undermine legitimate business to the extent that international companies often
withdraw from the market, and investment in recording and producing local talent virtually dries
up. For this reason, the power to stop infringing copies entering a market is of vital importance,
and provisions that make this possible are an essential feature of modern copyright legislation.
Much attention has been given to this subject: Articles 51 to 60 of the TRIPS Agreement (see
chapter 5 below) deal with border measures. Also, the World Customs Organization has developed
a model law for the enforcement of such measures.
4.51 Border measures are intended to prevent infringing copies — or lawful copies in violation of
the right of importation — from being brought into the country concerned. They constitute an
effective way to counter acts of infringement, because it is frequently easier to prevent the
distribution of infringing copies at the border than after the copies have already been brought into
the country and put into circulation. Border measures are usually carried out by administrative
authorities (customs authorities) and not by judicial authorities. In national legislation on this issue,
a number of safeguards and appropriate procedural rules are normally found which ensure the
fairness and effectiveness of measures applied by such authorities.
4.52 Providing for the availability of various enforcement measures may not be entirely sufficient.
It is, of course, necessary that national legislation also provide general safeguards to ensure due
procedures for the application of those measures in keeping with the principles of justice and
fairness and with the need for efficiency. For example, national legislation must ensure that
procedures for the enforcement of copyright are fair, equitable, transparent, expeditious, not
unnecessarily complicated, costly or burdensome, and do not impose unreasonable time limits, and
both plaintiffs and defendants must have equal access to information and equal possibilities to
present their case.
Anti-Piracy Measures for Phonograms, Audiovisual Works and Computer Programs
4.53 The notion of piracy covers a number of different phenomena. For example, in the field of
music, three expressions are used in common parlance which are all covered by the wider notion of
piracy as used here. Those expressions are “counterfeits,” “bootlegs” and “pirate copies.”
“Counterfeits” are usually exact copies of a sound or video disc or tape with, for instance, exactly
the same packaging as the original, usually including even the trademark. The copies could be
either tapes or — more sophisticated — industrially manufactured CDs. “Bootlegs” are copies of
recordings of a live performance or a broadcast, if the recording was made without the
authorization of the right-owner concerned. “Pirate copies,” finally, are unauthorized copies of a
sound or video recording which do not attempt to imitate the original but are generally of low
quality, with handwritten labels, etc. Those are becoming rarer because in general people prefer
recordings of higher quality. The use of the notion “piracy” in the following covers all three kinds
of infringements now mentioned.
4.54 Generally speaking, five categories of works, performances or productions are the most
exposed victims of piracy, namely:
- sound recordings;
- video recordings;
Chapter 4 - Enforcement of Intellectual Property Rights 217
- computer programs;
- broadcasts;
- books.
4.55 Particularly the first three categories of works or productions have been hit by piracy in
recent decades because they are, with modern digital reproduction technology, very easy to copy.
It takes, for instance, no great effort to make copies, by means of a personal computer, of
computer programs of the same quality as the original and with high speed and efficiency; as
computer programs are very costly to develop, uncontrolled copying hurts considerably the interests
of the right-owners.
Reasons for Taking Action Against Piracy
4.56 There are several reasons for a State to take efficient measures against piracy activities.
4.57 The first and perhaps most important reason is that the rights under copyright law are
violated, which means that authors, performers and phonogram and videogram producers,
publishers, broadcasters and others suffer considerable economic loss. This is detrimental not only
to the personal economic interests of the beneficiaries but also to society as a whole because it
hampers creativity and is contrary to the interests which copyright law is there to serve, including
that of establishing domestic cultural industries.
4.58 It should be noted that piracy generally hurts the most those productions which are
successful; they are the only ones which are of interest for pirates. In the phonographic industry
only a small proportion of the productions are economically successful and it is the income from
those that makes it possible for the industry to support less successful but perhaps more valuable
productions. If this incentive is lost, the industry may not be able to continue those productions and
the output will be qualitatively lower, something which is, in the long run, detrimental to the
interests of consumers and of society as a whole.
4.59 The reasons for fighting piracy should be seen both in a short and a long-term perspective.
It is sometimes said that piracy is not a bad phenomenon because it supplies the market with
popular products at low prices. Occasionally it is added that the pirates employ a considerable
workforce and thus give increased job opportunities. Also, it is said that there are more urgent
priorities in society than combating piracy. These arguments are, naturally, not valid if a State
wants to maintain its international reputation and participate in the international exchange of
culture, information and entertainment.
Anti-piracy Measures
4.60 Various practical measures can be undertaken in order to combat piracy. To some extent
protection can be obtained through various types of copy-protection systems, that is, that
mechanisms (“spoiler signals” or “water marks” in sound or video recordings) are built in which
prevent unauthorized copying. Another measure is to have an efficient collective administration in
respect of musical works; if it is easy for users to contact and obtain authorization from the rightowners
through such an organization, the temptation to engage in piracy activities may be less.
4.61 The system of copyright and related rights is a branch of private law in that it grants
personal exclusive rights to the individual beneficiaries. Therefore, the basic approach in most
countries, is, or has been, that it is for the injured party himself to take action. Consequently, the
basic possibility for him is to take civil action.
218 WIPO Intellectual Property Handbook: Policy, Law and Use
4.62 However, there is a change in the attitude in many countries, mainly in view of the alarming
growth of the piracy activities. A number of countries have introduced heavy penal sanctions for at
least certain kinds of infringement of copyright, in particular such which would be considered as
piracy.
4.63 Penal sanctions should — and in most countries do — include both fines and imprisonment,
the maximum of which may be up to several years. If penal sanctions are to work satisfactorily, the
objective criteria for the infringement must be clearly defined. This means, in particular, that the
rights should be framed and described in a clear and unequivocal way so that it is obvious which
the act or acts are which must not be undertaken without the authorization of the author or other
right-owner. Also, the so-called subjective criteria must be determined clearly. At least in some
national laws the penal provisions for copyright violations apply not only to acts which are
committed willfully but also to those committed with gross negligence. The sanctions should be
applicable not only to the person who directly committed the violation but also to those who
contributed to it, for instance by providing equipment used for unauthorized reproduction with full
knowledge of the intended use of that equipment.
4.64 Penal sanctions have mainly a repressive function. While such a function is very important
in the interest of society and authors too in order to ensure respect for the law (and this is of course
particularly obvious in cases of piracy) at least equally important from the individual author’s point
of view is the compensatory aspect. The law has to provide the beneficiaries with real and effective
possibilities to obtain compensation for the injury caused to them by the violation of their rights.
That compensation should not be limited to a mere reparation of the direct losses inflicted on the
specific right-owner. He should also be compensated, for example, for loss of market share for the
work, possible violation of his moral rights and also other relevant elements; in short, account has
to be taken of the material and moral prejudice caused. It may sometimes be difficult to establish
the exact size of the remuneration. In many national laws there are, however, special provisions
aiming at making an equity assessment of the amount to be paid; otherwise, it has to be left to the
judges’ discretion.
4.65 If copies exist which have been produced through unlawful acts, it is important that action
is taken to prevent those copies, and their packaging, from being brought on to the market without
the consent of the copyright owner. This is particularly important in the case of pirate copies. The
desirable principle should be that such copies should be destroyed unless the injured party requests
otherwise. Alternatively, they should be surrendered to the injured party. Also, equipment used for
the manufacture of unauthorized copies should, by court order, be either destroyed or surrendered
to the injured party, at least if there is a real risk that they may be used for continued acts of
infringement. In this latter case there should exist possibilities for the courts to issue orders
expressly prohibiting the continuation of the acts, with mention of the fine to be paid in case the
order is not respected.
4.66 Another important aspect in this context are the conservatory measures which should be
available particularly in cases of piracy, where the existence on the market of the unlawful copies
can cause considerable damage. Such measures are intended to freeze or conserve the situation as
it is when the measure is ordered or taken. More specifically the purpose of such measures is
twofold: to prevent the committing, or the continuation of the committing, of acts of piracy, and
to secure evidence as to the nature, quantity, location, source and destination of the pirated copies
or the identity of the person who is suspected of having committed or being likely to commit acts of
copyright violation.
4.67 Usually such measures have to be taken only at the request of the person or legal entity
who claims to be injured or to be threatened by injury in an act of piracy. Under most laws the
Chapter 4 - Enforcement of Intellectual Property Rights 219
requesting party will be liable for damages caused by the measure and, where necessary, he should
be ordered to post a bond. The measures should include the following:
- seizure of the goods suspected to be unauthorized copies;
- sealing the premises where the unauthorized copies are being manufactured, packaged,
stored or offered for sale, rental, lending or other distribution;
- seizure of the tools that could be used to manufacture or package the unauthorized
copies, and of business documents referring to the copies;
- orde,ring the termination of the manufacture or distribution of the unauthorized copies;
- ordering the disclosure of the source of the copies suspected to be unauthorized copies.
4.68 Because of the recognized need to take efficient action against copyright piracy, some
countries have set up special enforcement units either in the Ministry responsible for copyright law
matters or within the police or customs forces. Also, in some countries, special State bodies, have
particular responsibilities in the field of enforcement. They can act on behalf of their members,
initiate investigations and bring matters to court. In most countries however the enforcement is
entrusted to the ordinary enforcement authorities, that is, the courts, the police, the public
prosecutors and the customs authorities.
Activities within WIPO Concerning Enforcement
4.69 The repression of activities such as piracy and counterfeiting, which are factors of major
economic importance, is a crucial task for WIPO.
4.70 WIPO administers many international conventions and treaties relating to intellectual
property. This aspect of WIPO’s work consists basically in ensuring the proper operation of the
bodies that govern these various international agreements and in obtaining the accession of the
largest possible number of States to them; indeed for any repression to have proper effect it is
necessary that the most uniform legal framework possible be established, comprising high-level
provisions well adapted to new circumstances and the new technological facilities available to
“pirates.”
4.71 WIPO also develops new legislative provisions, both to adapt existing provisions to the new
technologies and to reflect the progressively emerging consensus in favor of increasing the level of
these provisions. For example, the impact of digital technology on copyright and related rights is
enormous. The ability to transmit by electromagnetic waves, by cable or by satellite, musical works
that are incorporated in sound or audiovisual recordings, increases the problem of unlawful
reproduction and also of private copying, since works stored in digital form can be reproduced any
number of times without loss of quality when compared with the original from which the copies are
made.
4.72 Another basic aspect of WIPO’s activities, but not the least important, is the transfer of
know-how required to administer the international conventions. Indeed, it is of prime importance
that the provisions drawn up at the international level be applied at the national level, since
promotion of creativeness first requires suitable management and the implementation of provisions
220 WIPO Intellectual Property Handbook: Policy, Law and Use
adopted in favor of creators. WIPO’s development cooperation activities are particularly important
in this respect.
4.73 From the late 1990s until 2001, there were initially two WIPO Committees on enforcement
– the Advisory Committee on Enforcement of Industrial Property Rights and the Advisory
Committee on the Management and Enforcement of Copyright and Related Rights in Global
Information Networks. The Advisory Committee on Enforcement of Industrial Property Rights held a
meeting in October 2001, in which Member States asked the Secretariat of WIPO to initiate studies
and activities to promote more effective enforcement of industrial property rights worldwide, and
the identification of good practices and procedures with which to do so, while keeping the time
and cost burden on administrative infrastructures to a minimum. In September 2002 it was decided
that these two Committees would be merged into a single Advisory Committee on Enforcement,
responsible for all intellectual property enforcement issues. Full membership is open to Member
States of WIPO and/or the Paris and Berne Unions. It met for the first time in June 2003.
Enforcement Provisions of the TRIPS Agreement
4.74 It is worth recalling that the Agreement on Trade-Related Aspects of Intellectual Property
Rights (TRIPS), which forms part of the overall Agreement establishing the World Trade
Organization (WTO), requires the members of the WTO to ensure that effective enforcement
procedures are available. The TRIPS Agreement also includes provisions requiring action by customs
authorities against suspected counterfeit or pirated goods.
Intellectual Property Litigation
Introduction
4.75 In many intellectual property systems, it is common to have some form of internal appeal
against a patent or trademark examiner’s decision. Boards of Appeal exist for instance in the
European Patent Office and the United States Patent and Trademark Office. While in the United
Kingdom Patent and Trademark Office there is no formal internal appeal, a dispute between the
applicant and examiner can be taken to a hearing before a senior officer.
4.76 Whatever the arrangement for internal appeal may be, in most intellectual property systems
the courts play an important role in hearing appeals from decisions of the Industrial Property Office
and in adjudicating infringement actions.
Review of Industrial Property Office Decisions
Introduction
4.77 The functions of Patent Offices in most countries are administrative in character rather than
judicial. However, because Commissioners and Registrars are obliged to interpret the law in order
to carry out their functions properly, and because third parties’ rights and the public interest must
Chapter 4 - Enforcement of Intellectual Property Rights 221
be taken into account, there is at times a tendency to treat office decisions as sacrosanct. In a
number of countries, the Commissioner or Registrar is able to summon witnesses, administer oaths,
require the production of documents or articles and award costs. His functions are therefore often
referred to as “quasi-judicial.” It must not be forgotten, however, that a Patent Office decision is
administrative in character, notwithstanding that certain functions of the Commissioner or Registrar
have quasi-judicial features.
4.78 Generally speaking appeals can be lodged against decisions taken during or at the end of
the procedure relating to an application for a patent for invention — in the case of the former,
“pre-grant appeals,” and in the case of decisions taken after the grant of a patent for invention,
“post-grant appeals.” “Pre-grant appeals” only involve a third party, in addition to the owner of
the patent for invention and the Patent Office. Similar appeals exist in relation to decisions of the
Trademark Office.
Pre-Grant Appeals
4.79 Chronologically, the first decision of the Patent Office is the decision by which it does or
does not accord a filing date. The applicant may disagree with the date accorded and may wish to
appeal against a decision. As an example, supposing the payment of the application fee in a
particular country is one of the requirements for according a filing date, and the Patent Office and
the applicant disagree as to when the application fee was actually paid. The Patent Office alleges
that the application fee was paid two days after the date on which the documents constituting the
application were filed, whereas the applicant claims that it was paid on the same day the
application itself was filed. If the invention claimed in the application was published the day after
the application itself was filed, the decision of the Patent Office according a filing date is crucial. If
the applicant is not able to convince the Patent Office that the application fee was paid before the
publication of the invention, the application will eventually be rejected for lack of novelty of the
invention. Therefore, it is important for the applicant to have the right to appeal against the
decision according a filing date.
4.80 Another decision against which the applicant may appeal to the court is the decision, taken
during the preliminary (or formal) examination, by which the Patent Office declares that the
application is deemed to be withdrawn. Such a decision may be taken, for example, on the ground
that a formal defect in the application has not been eliminated in due time or that the invention
claimed in the application is contrary to public order or morality.
4.81 The most frequent decision against which the applicant may appeal to the court is the
decision, taken as a result of the examination of the application as to substance, by which the
Patent Office rejects the application. Such a decision may be taken, for example, on the ground
that the invention claimed in the application is not new, does not involve an inventive step or is not
industrially applicable. Another possible ground for rejection of the application might be that the
claims or the description contain substantive defects which have not been eliminated by the
applicant.
Post-Grant Appeals
4.82 After the grant of the patent for invention, there may also be cases where an appeal may be
lodged against a decision of the Patent Office. For example, the Patent Office may have declared
that the patent for invention has lapsed because an annual fee has not been paid in due time. On
the other hand, the owner of the patent for invention may allege that the annual fee was paid in
due time and, as a consequence, may wish to appeal to the court against the declaration of lapse.
In such a case, the appeal only involves the owner of the patent for invention and the Patent Office.
222 WIPO Intellectual Property Handbook: Policy, Law and Use
4.83 Another example of a “post-grant appeal” would be against a decision by the Patent Office
to grant a compulsory license. Where the law so provides, a similar appeal would also be possible
against a decision by the Patent Office to refuse to grant a compulsory license. In both cases, the
appeal would involve three parties, namely, the owner of the patent for invention, the party
requesting the grant of a compulsory license and the Patent Office.
Appeal Procedure
Introduction
4.84 Appeal procedures are usually determined by regulations or rules which may be provided for
in the patent law, in the rules of the specific court, or in the general rules of procedure of the
country.
4.85 In Japan, Germany and France, the respective intellectual property laws together with the
codes of civil procedure prevail; in common law countries such as the United Kingdom and
Canada, the rules of procedure of the appropriate courts apply.
4.86 Normally, the industrial property law sets out the time limit within which an appeal should
be filed. The rules of procedure determine when and how each step should be taken. These rules
usually give the court wide discretion so that the parties can put forth their best case. For example,
if amendment to refused claims is permitted, it is frequently possible to resolve the dispute without
a hearing.
4.87 Usually, the rules of procedure will establish the time periods for the completion of each
step of the procedure. For example, the evidence may be required to be filed with the court one
month after the “notice of appeal,” and the memorandum (or brief) on appeal may be required to
be filed within a further month.
4.88 At common law the rules of procedure will require each party — the appellant (the one
who is appealing) and the respondent (the one whose decision is being appealed) — to give the
other notice of each step it takes and to give the court proof that notice has been given. If a third
party is involved in an appeal, the same rule should apply with respect to that third party.
4.89 The rules of procedure will also usually provide for the possibility to deviate from the rules to
permit the parties to present their cases properly. For example, extensions of time may be required
if the appellant cannot give proper instructions on time. Usually, there are also rules which compel
the parties to proceed under penalty of dismissal of their case.
4.90 Whether or not deviation is permitted in each case is within the discretion of the court.
Under the common law practice, a request for the court to permit deviation is made in writing with
supporting evidence, and notice is given to the other side. The other side may consent or may
appear in court and oppose the request. A similar process exists in the continental system.
Pre-Hearing Conference
4.91 Often, under common law, provision is made for the convening of a pre-hearing conference
to resolve any question as to the procedure which is to be followed at the hearing; the question
may then be settled by the court. At the pre-hearing conference there may be questions as to who
will have the opportunity to speak and in what order, the material to be considered and what facts
will be admitted by either side.
Chapter 4 - Enforcement of Intellectual Property Rights 223
4.92 In this regard the court may perform a useful function which is sometimes unofficially called
“banging heads together.” The intervention of a third party with authority, the court, may resolve
differences between obstinate parties.
Evidence
4.93 The word “evidence” as used in judicial proceedings usually means that which may be
placed before the court to enable it to determine the issues of fact. For example, a document
executed by an inventor transferring a patent for invention to another entity or person duly
registered by the Patent Office is the best evidence that the other entity or person is the owner of
the patent for invention. This is also called “direct” evidence. If the document is lost, then a
statement by a witness that he or she saw the inventor sign such a transfer may be sufficient. This
is secondary evidence. If the document is available, then it should be submitted. If it is not, then
there is no option but to follow the second course.
4.94 The evidence put forward in pre-grant appeals will in most cases be quite different from the
evidence presented in post-grant appeals. In a pre-grant appeal where the appealed decision was
to reject the application, the main issue is usually whether what is claimed in the application is or is
not a patentable invention. The evidence on that issue will be highly technical.
4.95 In a post-grant appeal where the appealed decision was to grant or to refuse a compulsory
license, the evidence will tend to be almost exclusively commercial, relating to competition in the
marketplace, market demand or need, costs of production, research, selling or marketing, profits
and royalty rates. The requesting party will also probably submit evidence as to his technical
personnel, facilities, market costs, proposed market and selling price.
4.96 Three forms of evidence may be distinguished — ”documentary evidence,” namely
evidence supplied by writings and documents of all kinds, “real evidence,” namely evidence
supplied by things themselves rather than by a description of them, and “expert evidence,” namely
oral evidence supplied by an expert. To the extent possible, all evidence should be introduced in
writing. Oral testimony, if any is given, is usually taken down verbatim and recorded in print for
review by the authority; however, if a hearing of oral testimony is requested, it will normally be
granted.
4.97 As a general rule, statements made by parties are usually accepted as true unless they are
uncorroborated or contested. If this is the case, the court may call for further evidence. A
requirement may be made for money to be deposited to cover the costs of these proceedings prior
to their commencement. These proceedings may include hearing the parties, requests for
information, production of documents, hearing witnesses, opinions by experts, inspection and
sworn statements in writing.
4.98 In the case of oral evidence, the party or witness testifying will have to be prepared to be
subjected to questioning by the adversary or the court.
Documentary Evidence
4.99 Documentary evidence can be subdivided into three elements, namely the file history,
statements and other documentary evidence.
4.100 The file history usually comprises the patent application, including the description, drawings
and claims, the objections or observations made by the Patent Office and the observations made by
the applicant.
224 WIPO Intellectual Property Handbook: Policy, Law and Use
4.101 If the Patent Office had rejected the application because there is in the state-of-the-art a
publication which destroys the novelty of the invention, the observations by the Patent Office will
normally include that publication, together with the Patent Office comment on its significance, and
of course the decision of the Patent Office and its reasons.
4.102 The observations made by the applicant will normally include observations on the
publication, that is, comments on the structure, the mode of operation and result of the solution
disclosed in it, together with comments on how the applicant’s invention differs on each of these
points from that solution.
4.103 Sometimes the “supposed” evidence may also include statements by the inventor. The
word “supposed” is used intentionally because frequently this “evidence” is not proof but rather
argument. Statements which indicate nothing other than that the subject matter of the application
is a patentable invention are merely self-serving and are consequently not persuasive. Such
statements are no more than mere unsubstantiated opinions.
4.104 There may be other documentary evidence, for example, experimental reports, market
surveys, photographs, sales figures, unsolicited testimonials. Again, all these materials should be
introduced by showing the source, what they show, why they are presented and an explanation as
to their technical significance.
Real Evidence
4.105 Real evidence such as models, actual machines described in the state of the art and the
subject matter of the patent application, may also be shown.
Expert Evidence
4.106 In relation to the issue of validity in patent proceedings, general evidence is often received
from expert witnesses as to prior use, the commercial success of the invention, the intelligibility and
sufficiency of the patent specification to a competent technician, the utility or usefulness of the
invention, the state of common general knowledge at material dates, the meaning of technical
terms and the novel or surprising nature of the invention claimed when considered in the light of
prior art and knowledge.
Market Survey Evidence
4.107 In trademark cases in particular, evidence of the “public mind” or the state of public
opinion in relation to a particular trade name, mark or get-up is both relevant and admissible. In
recent times there have been endeavors to put into evidence the results of market surveys and
market research as evidence of the “public mind.” There is some dispute as to the effect of such
evidence. Evidence of a market survey may prove no more than that certain opinions were
expressed by individual persons interviewed. It cannot show, in the absence of direct evidence to
the court, that such opinions were genuinely held by them or how they arrived at them.
Presentation of Evidence
4.108 In common-law and some civil-law countries, evidence is presented in the form of sworn
statements, or “affidavits,” on the most important points. These statements or affidavits are
written documents which are signed by the person making them before either an officer of the
State or an officer of the court who ensures that the person signing knows the consequences and
Chapter 4 - Enforcement of Intellectual Property Rights 225
penalties for making false statements. The general law makes provision for penalties where false
statements have been made.
4.109 In the absence of a third party to any proceedings, these sworn statements are normally
accepted as evidence of the facts to which they attest. One therefore has to be sure that they are
relevant and true.
4.110 In some countries, when a third party is involved — for example, in the case of a
compulsory license — the third party may be given the opportunity to “cross-examine” the party
who gave the statement to test the validity of the facts set out. “Cross-examination” is a procedure
in which an adverse party questions the person who gave the statement. The questions may be
directed to any matter raised in the statement and are generally directed to the accuracy of and
basis for the statement.
Final Disposition
4.111 When disposing of the appeal, the court normally has the following courses of action
available: it may refuse the appeal, it may grant the appeal, it may refer the case back to the Patent
Office for reconsideration, or, if the decision appealed against was a decision to reject the
application, it may amend the claims and give directions to the Patent Office to grant the patent for
invention. If the court refers the case back to the Patent Office, it may make recommendations for
amendment of the claims, description or drawings to overcome positions one or both parties have
taken unjustifiably. The basis for the court’s authority to act is usually in the patent law or it may be
found in other general legislative provisions.
Infringement Actions
Patent Infringement
4.112 The first task in any patent infringement action is to accurately assess the limit of the rights
granted. This will require the court to construe the patent specification. In general it is not
permitted to adduce expert evidence to construe words which are capable of an ordinary meaning
in English. The only exception is when technical words are used for which the court may require a
technical explanation. Similarly, considering the claims, it is not permissible to look into the body of
the specification so as to try and twist or strain the meaning of ordinary English words so that they
can “catch” the infringement. In fact, the court’s first task in construing the specification is to have
no regard to either the alleged infringement or what is called the “prior art.”
4.113 The next task facing the court is to decide whether the alleged infringement falls within the
scope of the claims which it has construed. This is often not easy, particularly when the defendant
has been well advised. It is in this area that expert evidence is frequently required. Moreover, in
patent infringement actions, the use of experiments is often resorted to in order to prove
infringement, the burden of which always remains with the plaintiff.
4.114 The usual defense in an infringement action is that the alleged infringement simply does not
fall within the scope of the patent in suit. But far more important than the defense will often be a
counterclaim for revocation of the patent. As in trademark infringement, there are a number of
statutory grounds by which a defendant can seek to impugn the validity of the patent: to mention
some, he may rely upon anticipation, that is lack of novelty, that the invention is obvious, that the
patentee has not sufficiently or fairly set out the manner in which the invention is to be worked,
226 WIPO Intellectual Property Handbook: Policy, Law and Use
that the invention is not useful, that it has been obtained on a false suggestion or misrepresentation
or that it has wrongfully been obtained from another. Some or all of these grounds are available in
most patent statutes in the Commonwealth. Again, this is an area where expert evidence is
important and it is not unusual for the counterclaim in a patent infringement action to take more
time than the claim itself. Naturally, the onus here is on the defendant seeking revocation of the
patent.
Copyright Infringement
4.115 The first of the acts restricted by copyright is “reproduction.” By reproduction is generally
meant the right to multiply copies of the work, the production of even one copy being an
infringement. Reproduction is not defined in any of the acts but its meaning is probably very similar
to “copy.” What is a copy will be a question of fact and degree. When the copy is not exact, the
court must examine the degree of resemblance with this in mind: that for infringement to arise,
there must be such a degree of similarity as would lead one to say that the alleged infringement is a
copy or reproduction of the original — having, in other words, adopted its essential features and
substance.
4.116 A causal connection between the copyright work or the alleged infringement is essential
and is a major distinction between the protection afforded by patents and registered designs —
both of which are full monopolies. The plaintiff must prove that directly and indirectly the
defendant has copied from the work matter in which he claims copyright. He must show that this
causal connection is the explanation of the similarity between the two. If, for example, they both
copied from a common source or they arrived at their results truly independently, there will be no
infringement.
4.117 Many statutes qualify “reproduction” with some such phrase as “or substantial
reproduction.” The question of what is “substantial” will again depend on the facts and
circumstances of each case and will be for the court to assess. It has been said in a leading case
that “the question whether the defendant has copied a substantial part depends much more on the
quality than the quantity of what he has taken.” And in another case “what is worth copying is
prima facie worth protecting.”
4.118 What the court must do is to assess whether, assuming a causal connection, the defendant
has helped himself to too liberal a portion of another’s labor or work. On the other hand, bearing
in mind particularly that copyright does not protect ideas (which may or may not be the proper
subject of a patent) but rather the way in which ideas are expressed and articulated, the court will
by way of balance always be mindful not in effect to give a plaintiff the benefit of a 50-year
protection for an idea under the guise of copyright. The two species of protection are very
different.
4.119 In view of the foregoing it is clear that the most obvious defense is that the impugned work
was independently arrived at. Other defenses may be:
- that, although there has been some degree of copying, a substantial part of the work in
issue has not been taken;
- that the work is no longer in copyright;
- certain other statutory defenses such as fair dealing and use for educational purposes.
Chapter 4 - Enforcement of Intellectual Property Rights 227
Trademark Infringement and Passing-Off
4.120 These two topics are closely related. If infringement of a registered trademark exists in a
particular case, the plaintiff will usually also plead passing-off. Historically, the action to restrain a
defendant from passing off his goods as the goods of the plaintiff was a generalized form of an
action to restrain the infringement of a trademark. When the possibility of registration of
trademarks first became available at the end of the last century, the distinction between the two
types of action arose. In spite of the co-existence of these two forms of action, passing-off has
never been abolished or allowed to slip into disuse.
Trademark Infringement
4.121 This is a statutory tort arising by virtue of registration of the trademark in issue at a national
Trademarks Registry. Trademarks may of course only be registered after satisfying specific
conditions imposed by statute and enforced by the Registry. Registration involves consideration of
such topics as distinctiveness of the proposed mark, whether it is an invented word, whether it has
any direct reference to the character or quality of the goods in respect of which registration is
sought, whether it has a geographical signification, whether it has signification as a surname, etc.
In several countries trademark registration is available in respect of both goods and services. In
some Commonwealth countries, there still exist two categories of trademark — those falling under
so-called Part A and Part B of the Register, in respect of which different considerations arise. The
concept of Part B marks was introduced so as to satisfy a somewhat lower standard of
distinctiveness for registration and as a consequence, to give a somewhat lower level of protection
in litigation.
4.122 Evidence of ownership of a trademark will generally be adduced by a duly certified copy of
the entry in the national Trademark Register. The copy certificate should, however, be scrutinized
with care for at least the following information:
- the mark itself and the exact manner in which it is represented, particularly if it is a device
mark;
- the goods in respect of which registration has been secured;
- the name and details of its proprietor;
- the date of the registration;
- whether it has been registered in Part A or Part B of the Register.
4.123 An important distinction between the action for trademark infringement and passing-off is
that whereas in passing-off it is essential that the plaintiff should by evidence prove his reputation,
this is not necessary for the purposes of proving trademark infringement. Registration may take
place before any reputation has been acquired in the mark through actual use; to secure
registration, it is enough that the mark is inherently distinctive and that the plaintiff has a bona fide
intention to use it as a trademark for the goods in question. Once registered, the registered
proprietor may proceed against infringers without the uncertainty and expense of having each time
to prove his actual trading reputation. This is the main respect in which protection of goodwill has
been made easier and more efficacious by registration.
4.124 In trademark infringement actions, the court is often faced with the likelihood of a
counterclaim for rectification of the Register of Trademarks by expunging therefrom the trademark
228 WIPO Intellectual Property Handbook: Policy, Law and Use
in issue. The various national trademark laws establish grounds on which a trademark may be so
removed and these involve in part the grounds available to an opponent at the registration stage.
In addition, further grounds are available such as the non-use of the mark.
Passing-Off
4.125 Passing-off can arise in respect of a common law trademark, a trading name or style for
either goods or services or through presentation, that is, by the addition to an article of something
that gives it a distinctive appearance — be it color, shape or packaging. In essence passing-off
concerns the wrongful appropriation of the benefit of the reputation or goodwill of another.
4.126 Any misrepresentation calculated to injure another in his trade or business may provide the
basis for a passing-off action. But in each case the plaintiff must establish two propositions before
he can succeed: the first is that he has a legal right, in the nature of a monopoly; in other words,
he must show that he has an exclusive right to a particular name for his goods or a particular trade
description or particular presentation, and secondly, that the defendant has infringed that right by
selling goods under a name or description or with a presentation which is likely to lead to
confusion, so that consumers are likely to buy the defendant’s goods in the belief that they are the
plaintiff’s goods. It should be noted that the second proposition does not arise unless and until the
plaintiff has established the first.
Registered Designs Infringement
4.127 Registered designs have a close analogy with patents. They consist of an exclusive right of
limited duration.
4.128 The United Kingdom, for instance, has the following definition of design:
“In this Act, ‘design’ means the whole or a part of a product resulting from the features of, in
particular, the lines, colours, shape, texture or materials of the product or its ornamentation”
(Section 1(2) of the United Kingdom Registered Designs Act, 1949, as amended by Article 2
of the Registered Designs Regulations 2001).
4.129 In other words the proper subject of a registered design consists of what the eye can
appreciate in its application to an article, except such features as are functional. Like a patent the
design has to be construed by the court prior to considering issues of infringement and validity. By
its nature the entire exercise here is done by the eye, that is the eye of the court. It will seldom be
appropriate to adduce evidence to assist the eye in this respect.
4.130 Apart from the obvious defense that the product in issue does not fall within the scope of
the design, the defendant will invariably counterclaim for rectification of the register of designs. As
with patents, he may choose to rely on lack of novelty, which is a fundamental requirement for a
valid design, in the light of prior art. But he may also wish to impugn the design by showing it to
be or consist of features or shapes or configurations which are dictated by the function above.
Remedies
4.131 The remedies typically available in intellectual property infringement actions are injunctions,
damages and account of profits. Most actions start with an application for some form of
preliminary or interlocutory relief, and in most cases do not get beyond this preliminary stage.
Chapter 4 - Enforcement of Intellectual Property Rights 229
Preliminary Relief: The Interlocutory Injunction
4.132 Preliminary remedies are of the utmost importance to the protection of all these intellectual
property rights. The period from the time of commencement of proceedings to the final
determination of a case can allow significant damage to be done to sales and profits and to
reputation, due to other exploitation of material and/or information. Furthermore, the nature of
the infringement or other unlawful conduct may be such as to make damages or an account of
profits an inadequate remedy. One of the reasons for this is that the defendant may be
impecunious or may disappear. But these will not be the only reasons why, in a particular case,
damages may not be an adequate remedy. More often, this is because of the nature of the
intellectual property right in question and the difficulty of reaching a precise estimate of the loss
suffered as the result of an infringement. If, in such a case, the defendant’s unlawful conduct is
restrained at the outset, the problem of damages may either disappear from the case altogether or
be very much less difficult than otherwise would be the case.
4.133 The most useful and widely used preliminary remedy is the interlocutory or interim
injunction, the main purpose of which is usually described as being to preserve the status quo until
the hearing of the main action. Although preserving the status quo as at the time of making an
application is usually the most appropriate order, this is not the main concern of the interlocutory
injunction. The primary matter with which the court is concerned in granting an interlocutory
injunction is the maintenance of a position that will most easily enable justice to be done when the
final determination is made. Thus, a court will sometimes order that an earlier position be restored,
or that the parties arrange their affairs in some other way that is more in accordance with the
requirements of justice.
4.134 In an increasing number of cases interlocutory injunctions are not sufficient to protect
intellectual property rights against the threat of continuing infringement. This is often because the
evidence needed to sustain an application for both interim and final relief is not readily available
and will not become available through the usual processes of discovery. In such a case the plaintiff
will be unlikely to obtain an interim injunction because he will not have the necessary evidence.
Sometimes the defendant will remove or destroy the infringing material. In recent years a speedy
and effective means of obtaining and preserving such evidence has been developed by courts in the
United Kingdom. The relief granted is an ex parte order for entry and inspection of premises and
removal of evidence. These orders are known as Anton Piller orders, and may be a necessary step
before an interlocutory injunction can be obtained.
4.135 Similarly, the collection of evidence and even a final judgment in favor of a plaintiff may be
to no avail if the defendant has no assets which can be used to fund any damages ordered. This is
a serious problem given the increasing resourcefulness of those attempting to avoid their
obligations, the ease with which money can be moved from one country to another and advances
in technology. In order to address this problem the courts of common law countries have
formulated and developed the Mareva injunction which operates to prevent defendants from
removing assets from the jurisdiction or from disposing or dealing with them within the jurisdiction
in such a way as to frustrate any judgment that may be entered against them.
Final Injunction
4.136 In the normal course, a successful plaintiff in an industrial property action will be entitled to
a final injunction. The grant of injunctions is discretionary and only used in unusual situations, (for
example, where the defendant is the sole source of a life-giving drug or, in a copyright case, where
there has been extreme delay) will a permanent injunction be refused. If an injunction were not
granted, for example, to a successful patent proprietor, the result would be tantamount to enabling
230 WIPO Intellectual Property Handbook: Policy, Law and Use
the defendant to take a compulsory license under the patent without having to go through the
statutory provisions relating to compulsory licenses. Should the injunction be breached, the plaintiff
can move for contempt of court, and in the field of industrial property experience shows that such
action on the part of a plaintiff is not at all infrequent.
Damages or Account of Profits
4.137 The assessment of damages in industrial property cases invariably demands as a first step an
election by the successful plaintiff as to whether he will take an inquiry as to damages on the one
hand, or an account of profits on the other. These alternatives are of course mutually exclusive
since by electing to go for an account, the plaintiff has adopted the defendant’s acts as his own.
The choice in each case will depend on the facts. Sometimes, for instance, time may be of the
essence and the trial as to liability may have itself generated enough material evidence to enable a
plaintiff to move speedily for an account. Sometimes a defendant may have been able to secure
more sales of the product in issue during the infringing period than the plaintiff could possibly have
done. In such cases, the plaintiff will again be likely to choose an account rather than an inquiry —
which will incidentally be for net profits.
4.138 Usually, however, a successful plaintiff will ask for an order that an inquiry as to damages be
taken. When this is done, in a difficult case, the plaintiff may have to endure a fresh trial almost as
substantial as the trial as to liability. For this reason, fully litigated industrial property cases seldom
go as far as a full inquiry as to damages; they tend to settle when liability has been established.
4.139 The assessment of appropriate damages in industrial property cases vary somewhat
between the several causes of action. Passing-off and trademark infringement may be considered
together as may patents and registered designs. Judicial views on the correct approach to damages
for breach of confidence have been divergent, and in copyright cases special statutory provisions
exist. There is however no universally appropriate test or formula for assessing damages. Damages
in any of these fields are notoriously difficult to assess with any degree of accuracy, and the courts
have sensibly taken this into account by declining to lay down general rules.
4.140 A common approach has been to assess damages on the basis of a notional arm’s length
license: this will arise for example when the parties are competitors and is usually appropriate to
patent and registered design cases. Damages for past infringement are then based upon a payment
of a royalty in respect of, for example, each infringing article. But problems do arise here —
particularly when in reality the plaintiff would never have granted a license. This approach has also
been used in breach of confidence and copyright infringement cases. Another approach which is
more difficult to prove is through consideration of sales lost to the plaintiff; in this case the plaintiff
is entitled to the entire lost profit.
Arbitration and Mediation of Intellectual Property Disputes
Alternative Dispute Resolution
4.141 Alternative Dispute Resolution, or ADR, refers to methods of resolving intellectual property
disputes without having to start court proceedings. There are many forms of ADR. The most
common are arbitration and mediation. Intellectual property disputes are also resolved on the basis
of expert opinions.
Chapter 4 - Enforcement of Intellectual Property Rights 231
Arbitration
4.142 Arbitration has a long history, particularly in certain areas of commerce.
4.143 Arbitration is consensual: it requires that the parties agree to have their dispute referred to
an arbitrator. The parties usually do this by including in their agreement a clause providing for the
submission of disputes to arbitration. The parties have flexibility in the powers that they permit the
arbitrator to exercise and may choose the applicable procedures, usually by including reference to
the rules of an arbitration institution.
4.144 The advantages of arbitration are generally regarded to be the speed with which a decision
can be reached, the lower cost at which this can be done, the confidentiality of the procedure, its
informal character and the facility with which an arbitral award can be enforced internationally.
The time and cost advantages of arbitration are based in part on the resolution of a multijurisdictional
dispute in one single forum, instead of a variety of courts, and on the absence of
institutional appeal. The arbitral award is final.
4.145 Arbitration is a less formal procedure than litigation, but still shares some of the elements of
a court procedure. An arbitration will normally include an exchange of written memorials, including
witness and possibly expert statements, and a hearing allowing oral argument, witness and expert
testimony, and questions by the arbitrators and the parties.
Mediation
4.146 Another form of ADR is mediation, sometimes also called conciliation. A mediator is a
neutral person who assists the parties in resolving their dispute. Again the agreement of the parties
to submit their dispute to mediation will be required. This voluntary character also applies once the
mediation is under way: each party may terminate its participation at any stage. If the mediation is
successful, the settlement has the effect of a contract between the parties.
4.147 Mediation is particularly attractive where the parties wish to preserve or develop their
relationship and resolve a dispute privately. Mediation takes account of the parties’ respective
interests, more than their legal positions.
Expert Determination
4.148 In particular in technology transfer agreements it is not unusual to find that the parties have
agreed to refer any technical disputes to an expert. Such an expert will be an independent third
party with the necessary expertise in the relevant technology field.
Enforcement in the International Context
4.149 Many technology transfer agreements are international. In the context of dispute resolution
this raises an important difficulty. If parties to an agreement are relying on the courts to resolve
their disputes, they must ensure that a judgment will be enforceable in any jurisdiction where that is
required.
4.150 The enforcement in the defendant’s jurisdiction of a court judgment obtained in the
claimant’s jurisdiction can be difficult. This problem can be overcome by initiating proceedings in
the respondent’s jurisdiction, but this may not be an acceptable option to the would-be claimant
232 WIPO Intellectual Property Handbook: Policy, Law and Use
because he is probably less familiar with the law, legal culture, courts and language of that
jurisdiction. Moreover, it would not solve the problems raised by the possible need to enforce such
a judgment in a third jurisdiction where the respondent has assets.
4.151 Generally, no such enforcement problems exist with regard to arbitral awards. Under the
terms of the widely accepted New York Convention on the Recognition and Enforcement of Foreign
Arbitral Awards, contracting States are obliged to recognize and enforce arbitral awards subject to a
limited number of specified exceptions.
WIPO Arbitration and Mediation Center
4.152 In September 1993, the WIPO General Assembly unanimously approved the establishment
of the WIPO Arbitration Center, now called the WIPO Arbitration and Mediation Center. The
Center offers services for the resolution of intellectual property disputes between private parties
through arbitration and mediation. The Center also administers special administrative procedures
for the resolution of disputes arising out of the registration of Internet domain names (see section
below).
4.153 The Center was created to bridge two areas which have recently undergone considerable
changes in parallel to, rather than in conjunction with, each other. These areas are arbitration, or
more generally ADR, on the one hand, and intellectual property on the other hand.
4.154 The number of institutions administering arbitration throughout the world has grown
considerably, as have the numbers of arbitration proceedings initiated. At the same time,
particularly in the United States of America, the types of ADR procedures available have evolved
beyond traditional arbitration and mediation to include new forms adapted from the classical model
of arbitration, mini-trials, and various combinations of procedures.
4.155 The increasingly technological basis of production, the emphasis on image and marketing
for the distribution of goods and services, and the proliferation and variety of media of
communication have all contributed to giving unprecedented prominence to intellectual property.
The increase in the number of intellectual property titles sought is mostly due to the increase in
foreign-origin applications. This reflects the internationalization of markets; as enterprises seek to
penetrate a wider geographical area, they seek wider protection for their intellectual property.
4.156 The increased resort to international protection of intellectual property opens new
possibilities for the use of ADR. The existence of more rights raises the potential for a larger
number of conflicts involving those rights. Often, however, those negotiating the licenses and
other contractual arrangements pay more attention to the successful conclusion of a potential
business arrangement than to the consequences of any breakdown thereof. The developments in
the area of arbitration have not necessarily found expression in contractual provisions directed at
the efficient resolution of possible disputes.
4.157 In addition, the existence of a multiplicity of national and regional rights covering the same
subject matter indicates the need for dispute resolution procedures which avoid recourse to
different national court actions. Even if a multiplicity of separate national claims is not involved, the
opposition of two foreign parties might require neutral dispute-resolution procedures that avoid the
court system of one of the parties.
Chapter 4 - Enforcement of Intellectual Property Rights 233
4.158 Besides the recent evolution of intellectual property protection, many of the traditional
advantages in favor of ADR apply particularly to intellectual property. The frequently multijurisdictional
character of intellectual property disputes, and the opportunity to resolve such
disputes in a single forum, have been mentioned above. Furthermore, the possibility to choose
neutrals with specialized expertise is of great importance in the highly technical and scientific
subject matter covered by patents, trade secrets, copyright and plant variety rights. While
specialized courts exist in a number of countries, and ma,y call on expert assistance, it may be more
efficient to submit a dispute to an arbitral tribunal composed of at least one expert with specialized,
relevant knowledge. In addition, the confidentiality of arbitration and other procedures offers
advantages where know-how or other confidential information may be exposed in the course of a
dispute.
4.159 Established in recognition of the developments described above, the WIPO Arbitration and
Mediation Center offers services in relation to four dispute-settlement procedures:
4.160 Mediation: a procedure in which a neutral intermediary, the mediator, at the request of the
parties to a dispute and without the power to impose a settlement, endeavors to aid the parties in
reaching a mutually satisfactory settlement on the basis of their respective interests.
4.161 Arbitration: a procedure involving the submission of a dispute, pursuant to an agreement
of the parties, to a mutually acceptable arbitrator or a tribunal of arbitrators, in accordance with the
law and procedure adopted by the parties, resulting in a binding and internationally enforceable
award.
4.162 Expedited Arbitration: an arbitration procedure where the rules limit the procedural steps in
the proceedings, in order to obtain a quicker result at a lower cost than in conventional arbitration
proceedings. The registration and administration fees are lower than those applicable to an
arbitration conducted under the WIPO Arbitration Rules. Fixed arbitrators’ fees apply to disputes of
up to 10 million US dollars. This procedure may be practical, particularly for disputes which do not
justify, in terms of personnel or financial costs, recourse to court litigation or conventional
arbitration.
4.163 The above procedures may also be combined: parties agree to try first to resolve the dispute
through mediation; if this does not produce a settlement, either party may submit the dispute to
arbitration or expedited arbitration for a binding decision.
4.164 The services that the WIPO Center provides in relation to the four procedures are essentially
of two types. The first type involves making available to parties the instruments for the resolution
of a dispute pursuant to one of the procedures administered by the WIPO Center. Model contract
clauses can be included in agreements to submit future disputes to such procedures. Alternatively,
submission agreements can be used to submit existing disputes to one of the procedures, the WIPO
Arbitration Rules, the WIPO Expedited Arbitration Rules, and/or the WIPO Mediation Rules.
4.165 The second type of service provided derives from these rules. The rules envisage that certain
functions will be performed by the WIPO Center with respect to the conduct of the
dispute-resolution procedure, such as the following:
- assistance to the parties in selecting and appointing the mediator(s) or arbitrator(s), if
necessary with reference to the Center’s database of more than 1,000 arbitrators and
mediators from more than 100 countries with experience in commercial, intellectual
property and information and communications technology dispute resolution;
234 WIPO Intellectual Property Handbook: Policy, Law and Use
- guidance regarding the application of the relevant procedural rules;
- liaising between the parties and the tribunal or mediator with a view to ensuring optimal
communications and procedural efficiency;
- assisting the parties in organizing any other support services that may be needed, such as
translation, interpretation or secretarial services;
- fixing the fees of the arbitrators and mediators, in consultation with them and with the
parties;
- administering the financial aspects of the proceedings, by obtaining a deposit from each
party of the estimated costs and paying out of the deposit the fees of the arbitrators and
mediators and any other support service or facilities, such as fees for interpreters, where
they are required;
- when the proceedings take place at WIPO in Geneva, providing a meeting room and party
retiring rooms free of charge;
- when the proceedings take place outside Geneva, assisting the parties in organizing
appropriate meeting rooms and other required facilities;
- providing such other services or functions as may be required to ensure that the arbitration
or mediation procedures are conducted efficiently and expeditiously.
4.166 The services described above may be used anywhere in the world. While the WIPO Rules
are especially suitable in an intellectual property context, such as for a licensing dispute, they lend
themselves to the resolution of all types of commercial disputes. The procedures may be applied in
any legal system in the world, in any language and under any law chosen by the parties.
4.167 In addition to offering arbitration and mediation services, the WIPO Arbitration and
Mediation Center organizes conferences on arbitration and mediation, as well as workshops for
arbitrators and mediators.
WIPO Internet Domain Name Dispute Resolution
Uniform Domain Name Dispute Resolution Policy
4.168 As a result of their growing popularity and of their commercial application, Internet domain
names have increasingly come into conflict with trademarks and other intellectual property rights.
In December 1999, the WIPO Arbitration and Mediation Center became the first provider of dispute
resolution services under the Uniform Domain Name Dispute Resolution Policy (UDRP). Adopted by
the Internet Corporation for Assigned Names and Numbers (ICANN), on the basis of
recommendations made by WIPO in the Report of the First WIPO Internet Domain Name Process,
the UDRP provides holders of trademark rights with an administrative mechanism for the efficient
resolution of disputes arising out of the registration and use in bad faith by third parties of domain
names corresponding to those trademark rights. The UDRP applies to registrations in generic toplevel
domains (gTLDs), .com, .net and .org and the more recently introduced new gTLDs, .aero, .biz,
.coop, .info, .museum, .name and .pro. Being administrative (and not arbitration), the procedure is
optional for trademark owners: instead of or in addition to availing themselves of the UDRP, they
Chapter 4 - Enforcement of Intellectual Property Rights 235
may go to court. By contrast, domain name registrants must submit to the UDRP procedure, once a
complaint has been filed concerning the domain name held by them; however, losing registrants
may also go to court.
4.169 The UDRP is limited to cases of registration and use in bad faith. For a complaint to
succeed, the complainant must establish that the following three cumulative criteria are met: (i) the
domain name is identical or confusingly similar to a trademark or service mark in which the
complainant has rights; and (ii) the registrant of the domain name has no rights or legitimate
interests in respect of the domain name; and (iii) the domain name has been registered and is
being used in bad faith. The UDRP lists several examples of such bad faith, for example, indications
that the domain name has been registered for the purpose of selling it to the trademark owner or
attracting visitors to the registrant’s site by creating a likelihood of confusion with a third party’s
trademark.
4.170 Under the UDRP, the respondent has 20 days to file a response from the date the WIPO
Center notifies the respondent of a complaint filed with the Center. The WIPO Center then
appoints an independent one- or three-member panel to decide the case. A reasoned decision is
taken two weeks later by the panel. If the panel orders the transfer or cancellation of the domain
name (these are the sole remedies available, since monetary damages in particular are excluded),
the registrar is obliged to implement the decision, except if the losing domain name registrant files a
court case against the complainant within ten days of the panel decision. The Center posts notice
of the filing of a case and the full text of decisions on its website. All WIPO UDRP decisions are also
searchable through the online index of WIPO UDRP Decisions, which allows structured access to the
large quantity of legal and other data contained in those decisions. The index, publicly available at
the Center website, allows decisions to be searched by case number, domain name, text of decision
and legal keywords.
4.171 The WIPO Center has established services especially designed for the submission and
conduct of UDRP cases. It has adopted Supplemental Rules regulating such aspects as the
applicable fees. The Center website provides parties with an efficient online infrastructure for
WIPO’s domain name dispute-resolution services. It offers extensive biographical information about
the neutral persons on the Center’s roster of panelists, who are independent trademark and
Internet specialists from a multitude of jurisdictions. In addition to source documents, a procedural
flowchart and a practical guide, the Center makes available model forms for the filing as well as the
defending of a case. These forms can be submitted to the Center as an e-mail attachment or online
through the Center website. The entire WIPO procedure is conducted and managed largely online,
providing significant time (the average case duration is less than two months) and cost benefits to
all concerned.
4.172 The simplicity of the system also extends to WIPO’s non-profit schedule of fees. The costs
of the procedure are normally borne in full by complainants, who pay a fixed amount that covers
both the Center’s services and the remuneration of the panel. Under the WIPO schedule, the actual
level of the fee depends on the number of domain names concerned and on whether the case is to
be decided by a single- or three-member panel.
New gTLDs
4.173 Registries of new gTLDs (.aero, .biz, .coop, .info, .museum, .name and .pro) have for the
most part implemented, in addition to the UDRP, dispute resolution procedures specifically geared
to conflicts arising during the initial registration phase. The purpose of these procedures is to
provide trademark owners with additional means to ensure the protection of their rights on the
introduction of these new domains. The .info Sunrise Registration Challenge Policy and the .biz
236 WIPO Intellectual Property Handbook: Policy, Law and Use
Start-Up Opposition Policy are examples of such procedures. Furthermore, registries that are
restricted to certain purposes (for example, .biz for commercial purposes) provide special
proceedings to resolve disputes concerning compliance with their respective registration conditions.
Developments
4.174 The WIPO domain name dispute resolution services are meeting with significant demand.
The Center has processed, up to the end of 2003, some 21,233 cases under the UDRP and other
applicable domain name dispute resolution policies. The possible expansion of the scope of the
UDRP to encompass domain name disputes affecting other rights related to intellectual property,
the introduction of further gTLDs, the possibility of registering domain names in different languages
and the introduction of similar dispute-resolution services at the request of certain countries’ toplevel
domain (ccTLD) registrars make it likely that the role of the Center in relation to domain name
disputes will expand further.
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