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In-Depth Information
more nor less than; mere, pure' and thus a situation in which a trade mark is
removed from a good and no other action is taken constituted 'simple' removal
of the trade mark.
103
This was because where counterfeit trade mark goods are
released into the channels of commerce after the simple removal of the trade
mark unlawfully affixed, an identical trade mark could be produced or imported
separately and unlawfully reaffixed, often with relative ease, so that the goods
would infringe once again.
104
The Panel noted that this problem applied to counterfeit trade mark goods in
particular because, as provided in the definition of 'counterfeit trademark goods'
in footnote 14(a) to the TRIPS Agreement, a counterfeit trade mark is
identical
to a valid trade mark or cannot be distinguished in its essential aspects from the
valid trade mark.
105
It was observed that counterfeit trade mark goods are more
likely to imitate the appearance of genuine goods in their overall appearance
and not simply in the affixing of a counterfeit trade mark, as the likelihood that
a counterfeit trade mark good will confuse a consumer is related to the degree to
which all its features, infringing and non-infringing, resemble the genuine
good. Thus even where the counterfeit trade mark was removed, the resulting
state of the goods could still so closely resemble the genuine good that there was
a heightened risk of further infringement by means of re-affixing a counterfeit
trade mark. The Panel commented that 'the negotiators evidently considered
that the heightened risk of further infringement warranted additional measures
to create an effective deterrent to further infringement'.
106
It concluded that in
light of the objective of the provision, the 'simple' removal of the trade mark was
principally a reference to the fact that the state of the goods is not altered in any
other way so that the absence of the trade mark is not an effective deterrent to
further infringement and that the removal of the trade mark was not 'simple' if
the state of the goods is altered sufficiently to deter further infringement.
107
7.204
The Panel noted that the fourth sentence of Art 46 was not limited to an action
to render goods non-infringing, which the simple removal of the trade mark
would achieve, but imposed an additional requirement beyond rendering the
goods non-infringing in order to deter further acts of infringement with those
goods. Therefore, it was insufficient, other than in exceptional cases, to show
that goods that had already been found to be counterfeit were later
unmarked.
108
The Panel observed that the procedure for seeking comment by
7.205
103
Ibid, at para 7.369.
104
Ibid, at para 7.373.
105
Ibid, at para 7.374.
106
Ibid.
107
Ibid, at para 7.375.
108
Ibid, at para 7.379.
