Geography Reference
In-Depth Information
7.224
4. Penalties
7.225
Article 30 provides that the Member States shall ensure that the holders of
decisions comply with the obligations set out in this Regulation, including,
where appropriate, by laying down provisions establishing penalties. The penal-
ties provided for shall be effective, proportionate and dissuasive.
7.226
The Member States shall notify those provisions and any subsequent amend-
ment affecting them to the Commission without delay.
7.227
The TRIPS Agreement does not refer to the effectiveness of penalties, nor to
the requirement that penalties be proportionate and dissuasive. However, Art
61 of the TRIPS Agreement states that the criminal remedies available shall
'include imprisonment and/or monetary fines sufficient to provide a deterrent,
consistently with the level of penalties applied for crimes of a corresponding
gravity'. Article 61 then goes on to speak of 'appropriate cases' in which the
remedies available shall also include 'the seizure, forfeiture and destruction of
the infringing goods and of any materials and implements the predominant use
of which has been in the commission of the offence'. Article 61 was addressed
in the WTO's Dispute Panel determination in relation to the US complaint
about copyright enforcement in China.
117
Australia argued that Art 61 created
an obligation of result, namely to put in place penalties that are sufficient to
actively discourage others from engaging in such acts and that the question
whether punishments were sufficient to provide such a deterrent was to be
assessed in light of the circumstances in a Member's territory.
118
This submis-
sion was not assessed by the Panel, which decided the question on other
grounds.
7.228
The issue of deterrence is also mentioned in Art 41.1 of TRIPS, which requires
that enforcement procedures specified in the Agreement are 'available' so as to
permit 'effective action' against any act of infringement of the IPRs covered by
the Agreement, including 'remedies which constitute a deterrent to further
infringements'. The Dispute Panel's determination in relation to the US
complaint about copyright enforcement in China suggested that enforcement
procedures under Art 41 permitted effective action if they were 'available'.
119
Article 46 of TRIPS, which refers to 'other remedies', provides that in order to
'create an effective deterrent to infringement', the judicial authorities 'shall have
117
China -Measures Affecting the Protection and Enforcement of Intellectual Property Rights
, WT/DS362, 26 January
2009, paras 7.670ff.
118
Ibid, at para 7.672.
119
Ibid, at paras 7.177-7.181.
