Informed sources have provided KEI the following draft text of the IP chapter under negotiation between the European Union and India in current free trade agreement talks. KEI will provide analysis of these provisions in due course.
- One quick item is that the provision on damages eliminates the flexibility in the TRIPS (Article 44.2) and ACTA (8.2) to eliminate injunctions in certain cases, including where a liability rule is preferred. Examples of this in US law would include 28 USC 1498 (US government use of copyrights, patents, etc), certain provisions in the affordable care act on biologic patents, and provisions in US law regarding patents on nuclear energy, or Indian and Canadian rules on eliminating injunctions for infringements of architectural works under construction. This is quite important because it is the best legal basis in TRIPS to create liability rules for intellectual property rights. Another example of how injunctions can be part of a flexibility regime are cases where there are limits on the enforcement of rights, such as the U.S. rules that eliminate injunctions and damages for infringement of a patent by medical professional, or provisions in US law that eliminate injunction in some cases involving trademarks or copyrights. By eliminating flexibility on the injunctions side, India and the EU give up a lot.
- Note that Article 17.1 of the agreement references all of Part III of the WTO’s TRIPS agreement. In a sense, the rest of the chapter is TRIPS plus.
- Examples of the TRIPS plus language are the EU proposal that “An interlocutory injunction may also be issued, under the same conditions, against an intermediary whose services are being used by a third party to infringe an intellectual property right.” Article 22.1.
- The EU is also pushing for explicit language on the “precautionary seizure of the movable and immovable property of the alleged infringer, including the blocking of his/her bank accounts and other assets. To that end, the competent authorities may order the communication of bank, financial or commercial documents, or appropriate access to the relevant information.]” Article 22.3.
- The text of some of these provisions seem contrary to TRIPS Article 37, concerning LAYOUT-DESIGNS (TOPOGRAPHIES) OF INTEGRATED CIRCUITS , which givens sellers a right in some circumstances to sell infringing designs.
- Article 31 on co-operation requires the creation of an “intellectual property subcommittee to monitor the provisions of this chapter,” and to consider revisions and renegotiations of the text.
- Articles 26 on Damages and Article 27 on Legal Costs are verbatim from Article 45 of the TRIPS. Note that this text is considerably better than the aggressive ACTA text on damages.
Sub-Section 3 – Enforcement of Intellectual Property Rights
Civil remedies and procedures
Art. 17 – General Obligations
1. Both Parties reaffirm their commitments under the TRIPS Agreement and in particular its Part III, and shall provide for the measures, procedures and remedies necessary to meet their obligations therein.
2. Procedures concerning the enforcement of intellectual property rights shall be fair and equitable. They shall not be unnecessarily complicated or costly, or entail unreasonable time-limits or unwarranted delays.
3. It is understood that this sub-section does not create any obligation to put in place a judicial system for the enforcement of intellectual property rights distinct from that for the enforcement of law in general, nor does it affect the capacity of the Parties to enforce their law in general. Nothing in this sub-section creates any obligation with respect to the distribution of resources as between enforcement of intellectual property rights and the enforcement of law in general.
Art. 18 – Entitled Applicants
The Parties shall recognize the holders of intellectual property rights, licensees and professionals having a right to represent holders of IPRs in so far as permitted by and in accordance with the provisions of the applicable law, as persons entitled to seek application of measures, procedures and remedies for IPR enforcement.
Art. 19 – Evidence
The judicial authorities shall have the authority, on application by a party which has presented reasonably available evidence sufficient to support its claims and has specified evidence relevant to substantiation of its claims which lies in the control of the opposing party, to order that this evidence be produced by the opposing party, subject in appropriate cases to conditions which ensure the protection of confidential information.
Art. 20 – Measures for Preserving Evidence
[EU]The Parties shall ensure that, even before the commencement of proceedings on the merits of the case, the competent judicial authorities may, on application [by an entity who has presented reasonably available evidence to support his claims that his intellectual property right has been infringed or is about to be infringed, order prompt and effective provisional measures to preserve relevant evidence in respect of the alleged infringement, subject to the protection of confidential information. Those measures shall be taken, if necessary without the other party being heard, in particular where any delay is likely to cause irreparable harm to the right holder or where there is a demonstrable risk of evidence being destroyed
Art. 21 – Right to Information
[EU] Without prejudice to other statutory provisions which, in particular, govern the protection of confidentiality of information sources or the processing of personal data,the parties shall provide that the judicial authorities shall have the authority, unless this would be out of proportion to the seriousness of the infringement, to order the infringer to inform the right holder of the identity of third persons involved in the production and distribution of the infringing goods or services and of their channels of distribution.
Art. 22 – Provisional and Precautionary Measures
[EU]: 1. The Parties shall ensure that the judicial authorities may, at the request of the applicant issue an interlocutory injunction intended to prevent any imminent infringement of an intellectual property right, or to forbid, on a provisional basis and subject, where appropriate, to a recurring penalty payment where provided for by domestic law, the continuation of the alleged infringements of that right, or to make such continuation subject to the lodging of guarantees intended to ensure the compensation of the right holder. An interlocutory injunction may also be issued, under the same conditions, against an intermediary whose services are being used by a third party to infringe an intellectual property right.
2. An interlocutory injunction may also be issued to order the seizure or delivery up of the goods suspected of infringing an intellectual property right so as to prevent their entry into or movement within the channels of commerce.
3. In the case of an infringement committed on a commercial scale, the Parties shall ensure that, if the applicant demonstrates circumstances likely to endanger the recovery of damages, the judicial authorities may order the precautionary seizure of the movable and immovable property of the alleged infringer, including the blocking of his/her bank accounts and other assets. To that end, the competent authorities may order the communication of bank, financial or commercial documents, or appropriate access to the relevant information.]
EU: Art. 22 bis – Liability of internet service providers
Art. 23 – Corrective Measures
In order to create an effective deterrent to infringement, the judicial authorities shall have the authority to order that goods that they have found to be infringing be, without compensation of any sort, disposed of outside the channels of commerce in such a manner as to avoid any harm caused to the right holder, or, unless this would be contrary to existing constitutional requirements, destroyed. The judicial authorities shall also have the authority to order that materials and implements the predominant use of which has been in the creation of the infringing goods be, without compensation of any sort, disposed of outside the channels of commerce in such a manner as to minimize the risks of further infringements. In considering such requests, the need for proportionality between the seriousness of the infringement and the remedies ordered as well as the interests of third parties shall be taken into account. In regard to counterfeit trademark goods, the simple removal of the trademark unlawfully affixed shall not be sufficient, other than in exceptional cases, to permit release of the goods into the channels of commerce.
Art. 24 – Injunctions
The judicial authorities shall have the authority to issue injunctions against a party to prohibit the continuation of the infringement of an intellectual property right by that party.
[EU] The Parties shall also ensure that the measures referred to in this provision may also apply against those whose services have been used to infringe IPR to the extent they have been involved in the process
EU: Art. 25 – Alternative Measures
[EU] The Parties may provide for measures to order reasonable pecuniary compensation to be paid to the injured party in case a person has acted unintentionally and without negligence, in appropriate cases where no other measures are enforced and in so far as permitted under the applicable law of the Parties
Art. 26 – Damages
The judicial authorities shall have the authority to order the infringer to pay the right holder damages adequate to compensate for the injury the right holder has suffered because of an infringement of that person’s intellectual property right by an infringer who knowingly, or with reasonable grounds to know, engaged in infringing activity.
Art. 27 – Legal Costs
The judicial authorities shall also have the authority to order the infringer to pay the right holder expenses, which may include appropriate attorney’s fees. In appropriate cases, Parties may authorize the judicial authorities to order recovery of profits and/or payment of pre-established damages even where the infringer did not knowingly, or with reasonable grounds to know, engage in infringing activity.
Art. 28 – Publication of Judicial Decisions
Parties shall ensure that, in legal proceedings instituted for infringement of an intellectual property right, the judicial authorities may order, the publication of the decisions based on the rules of reporting of judgments generally followed in the territory of that Party.
Art. 29 – Presumption of Ownership
For the purpose of instituting any infringement proceedings provided for under this Agreement in relation to the enforcement of copyright and related rights, the name of the person appearing on the work shall be presumed to be the first owner of rights unless the contrary is proved. However this presumption will not be applicable in case of sound recording or other related rights if the dispute is with the author of the works.
Art. 30 – Border Measures
[EU]
1. Consistency with GATT and TRIPS Agreement
In implementing border measures for the enforcement of intellectual property rights, whether or not covered by this article, the Parties shall ensure consistency with their obligations under the GATT and TRIPS agreements and, in particular, with Article V of GATT agreement, Article 41 and Section 4 of the Part III of TRIPs agreement.
2. Definitions
For the purposes of this Article,
(a) “Imported goods” means any goods brought into the territory of one of the parties from a place outside that territory but does not include:
– goods which have been cleared for home consumption in that territory; and
– goods which are intended for sale or use in that territory.
(b) “Exported goods” means any goods which are to be taken out of the territory of one of the parties to a place outside that territory but it does not include goods which are re-exported after being imported in that territory without having been put in sale or used in that territory.
(c) “Goods in transit” means goods the passage of which across the territory of a Party, with or without trans-shipment, warehousing, breaking bulk, or change in the mode of transport or conveyance , is only a portion of a complete journey beginning and terminating beyond the frontier of the contracting party across whose territory the traffic passes.
(d) “Counterfeit goods” means “counterfeit trade mark goods and counterfeit geographical indication goods.
(e) “Pirated goods” means “pirated copyright goods” and “pirated design goods”
(f) “Counterfeit trademark goods” means any goods, including packaging, which are the subject of an infringement under the trademark law in the territory of the Party where the goods are and bear without authorization a trademark which is identical to the trademark validly registered in respect of such goods, or which cannot be distinguished in its essential aspects from such a trademark.
(g) “Pirated copyright goods” means any goods which are the subject of an infringement under the copyright or related rights law in the territory of the Party where the goods are, and
– Which are copies made in that territory without the consent of the right holder or of a person duly authorized by the right holder in that territory, or
– In the case of an article imported in that territory without the license or consent of the owner of the copyright or related right in that territory, copies the making of which was carried out in the country of production without the consent of the owner of the copyright in the country of importation and would infringe copyrights if made in that country of importation.
(h) “Pirated design goods” means any goods which are the subject of an infringement under the design rights law in the territory of the Party where the goods are, and
– Which are copies or fraudulent or obvious imitations of registered designs made in that territory without the consent of the right holder or of a person duly authorized by the right holder in that territory, or
– In the case of goods made or produced beyond the limits of that territory and having applied a design without the licence or consent of the owner of the registered design in that territory, copies or fraudulent or obvious imitations or registered designs the making of which was carried out in the country of production without the consent of the owner of the design right in the country of importation.
(i) Counterfeit geographical indication goods means any goods, including packaging which are the subject of an infringement under the law of geographical indications in the territory of the party where the goods are and which are goods having applied thereto a false geographical indication.
3. Scope of Border Measures
Each Party shall adopt or maintain procedures with respect to imported and exported goods, under which a right holder may request its competent authorities to detain suspected counterfeit or pirated goods.
Each Party shall adopt or maintain procedures with respect to imported and exported goods under which its customs authorities may act upon their own initiative to detain suspected counterfeit or pirated goods.
4. Cooperation
4.1 The Parties agree to cooperate with each other with a view to eliminating international trade in counterfeit and pirated goods. For this purpose, they shall establish and notify contact points in their administrations and be ready to exchange information on trade in infringing goods. They shall, in particular, promote the exchange of information and cooperation between customs authorities with regard to trade in counterfeit trademark goods and pirated copyright goods.
4.2 In particular, for goods in transit through the territory of a Party destined for, or originating in, the territory of the other Party, the former Party shall cooperate, upon request or upon its own initiative, to provide relevant available information to the latter Party to enable effective enforcement against shipments of counterfeit or pirated goods.
Art. 31 – Co-operation
The Parties agree to cooperate in the areas of capacity building, human resource development and awareness generation in the field of intellectual property rights.
[EU] Subject to the provisions of Article ?, horizontal art. on assistance/co-operation issues of this Agreement, the Parties agree to co-operate with a view to monitor the agreed regime under this
chapter.
Areas of cooperation are, amongst others, the following:
(a) exchange of information on the legal framework concerning intellectual property rights and relevant rules of protection and enforcement; exchange of views and experiences in the European Union and the India on legislative progress;
(b) exchange of experiences in the European Union and the India on enforcement of intellectual property rights; co-ordination to prevent the flows of counterfeit goods, including with other countries;
(c) capacity-building; exchange and training of personnel;
(d) promotion and dissemination of information on intellectual property rights in, inter alia, business circles and civil society; public awareness of consumers and right holders;
(e) enhancement of institutional co-operation, for example between intellectual property offices];
(f) actively promoting awareness and education of the general public for intellectual property rights policies. for instance by collaborating in the formulation of effective strategies to identify key audiences and create communication programmes to increase consumer and media awareness on the impact of intellectual property violations, including the risk to health and safety.
2. The Parties recognize the benefits from their existing cooperation agreement in the customs area and recognize the importance of exchanging of information and the coordination between the relevant customs authorities.
3. Without prejudice and as a complement to paragraphs 1 & 2, the Parties agree to establish and maintain an intellectual property subcommittee to monitor the provisions of this chapter, to discuss on newly developed intellectual property related issues and to address other relevant topics including geographical indications. Revision clause of the IPR chapter
[EU] Each Party shall accord to the nationals of the other party treatment no less favourable than that it accords to its own nationals with regard to the protection of intellectual property in conformity with Article 3 of TRIPS. Any development of future legislation in the area on intellectual property shall be consistent with the above principle.
The Parties shall enter into negotiations to review this chapter ? years after the entry into force of this agreement with a view to enhance protection and enforcement of Intellectual Property Rights. In the meantime Parties agree to maintain a dialogue and exchange views in order to determine the elements subject to renegotiations.