Geography Reference
In-Depth Information
2.137
In considering requests for orders to dispose of or destroy infringing goods and
equipment used to produce such goods, the judicial authorities are required to
take into account 'the need for proportionality between the seriousness of the
infringement and the remedies ordered as well as the interests of third parties'.
In the case of counterfeit trade mark goods, Art 46 indicates that 'the simple
removal of the trade mark unlawfully affixed shall not be sufficient, other than
in exceptional cases, to permit the release of goods into the channels of
commerce'.
The language of Art 46 was addressed by the WTO dispute panel in
China -
Measures Affecting the Protection and Enforcement of Intellectual Property Rights
.
61
One question which arose was whether the reference to the judicial authorities
having 'the authority' to order the destruction of goods and implements meant
that they had to exercise that authority. The Dispute Panel ruled that the
obligation is to 'have' authority, not an obligation to 'exercise' authority.
62
The
Panel also took the view that the phrase 'shall have the authority' did not require
Members to take any action in the absence of an application or request.
63
This
was considered to be consistent with the nature of IPRs as private rights.
2.138
This determination mainly addressed the question of the disposal of goods,
rather than materials and implements outside the channels of commerce. The
Panel observed that it was not disputed that donations (ie gifts) to social welfare
bodies for their own use or for charitable distribution was outside the channels
of commerce, unless those recipients later sold goods (or presumably materials
and implements) donated to them for charitable distribution, in which case
they would not in fact be disposed of outside the channels of commerce but into
the channels of commerce.
64
On the other hand the Panel observed that if the
social welfare bodies charitably distribute goods donated to them by customs
but the goods later found their way back into the channels of commerce, this did
not alter the fact that the goods were disposed of outside the channels of
commerce, in the ordinary sense of 'disposal'.
65
2.139
The Panel noted that the passive voice in the expression that goods 'be disposed
of ' meant that there was no obligation that the relevant authorities carry out the
disposal themselves but rather they may entrust the actual disposal to another
2.140
61
Report of the Panel, WT/DS362/R, 26 January 2009.
62
Ibid, para 7.236.
63
Ibid, para 7.247.
64
Ibid, para 7.279.
65
Ibid.
