Geography Reference
In-Depth Information
The Panel pointed out that the use of the word 'scale' was a deliberate choice
and reflects the intention of the negotiators that the limitation on the obligation
depended on the
size
of acts of counterfeiting and piracy.
22
Thus the combin-
ation of the primary definition of 'commercial' and the definition of 'scale' can
be reconciled with the context of Art 61 if it is assessed not solely according to
the nature of an activity but also in terms of relative size, as a market
benchmark.
7.28
The Panel observed that the phrase 'on a commercial scale' has been used in the
IPR legislation of various countries, particularly in patent laws which refer to
the working of inventions, or failure to work inventions, 'on a commercial
scale'.
23
The term was also used in the specific context of trade mark counter-
feiting and copyright piracy in the WIPO Committee of Experts on Measures
Against Counterfeiting and Piracy in 1988. Article A(1), (2) and (3) of the
Draft Model Provisions for National Laws included the proviso to manufactur-
ing as an act of counterfeiting or piracy that it be 'on a commercial scale'. The
explanatory memorandum advised that in deciding upon commercial scale the
courts will have to take into consideration the circumstances accompanying
the manufacture, 'the quantity of the goods manufactured, the way in which
they were, are or are intended to be used and the will to make profit'.
24
7.29
The Panel concluded that counterfeiting or piracy 'on a commercial scale' refers
to counterfeiting or piracy carried on at the magnitude or extent of typical or
usual commercial activity with respect to a given product in a given market.
25
It followed that what constitutes a commercial scale for counterfeiting or piracy of a
particular product in a particular market will depend on the magnitude or extent that is
typical or usual with respect to such a product in such a market, which may be small or
large. The magnitude or extent of typical or usual commercial activity relates, in the
longer term, to profitability.
26
7.30
The free trade agreements which the US has negotiated with Australia, Peru
and Singapore require each party to 'provide criminal procedures and penalties
to be applied at least in cases of willful trademark counterfeiting or copyright or
related rights piracy on a commercial scale.' 'Willful copyright or related rights
piracy on a commercial scale' is defined to include: '(i) significant willful
22
Ibid, at para 7.543.
23
See, eg, the Australian Patent Act 1990, s 135(1); Indian Patents Act 1970, ss 83-84; South African Patent Act
1978, s 56; UK Patent Act 1977-1988, s 50; Zimbabwean Patents Act 1971, s 31. The UK Patents and Design
Act 1919, s 27, had referred to working a patent 'on a commercial scale'.
24
WIPO document C&P/CE/2 of 18, 19 February 1988, para 17.
25
Ibid, at para 7.577.
26
Ibid.
