Geography Reference
In-Depth Information
(c) Criminal sanctions
(i) Overview
Article 61 provides that Members shall provide for criminal procedures and
penalties 'to be applied at least in cases of wilful trademark counterfeiting or
copyright piracy on a commercial scale'. The expression 'at least' leaves it open
for criminal penalties to be imposed in cases concerning other IPR offences,
such as where a law might criminalise GI infringements. Among the criminal
sanctions which are listed in the Article are: 'imprisonment, and/ or monetary
fines sufficient to provide a deterrent, consistently with the level of penalties
applied for fines of a corresponding gravity'. Also in appropriate cases, Art 61
provides for 'the seizure, forfeiture and destruction of the infringing goods and
any materials and implements the predominant use of which has been in the
commission of the offence'.
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Article 61 also provides for criminal procedures and penalties to be applied in
other cases of infringement of intellectual property rights, 'in particular where
they are committed wilfully and on a commercial scale'.
(d) Border measures
(i) Introduction
A key feature of the TRIPS Agreement was the obligation of Members to
introduce border measures for the protection of intellectual property rights. It is
obviously more effective to seize a single shipment of infringing products at the
border than to await their distribution in the market. The stratagem of utilising
border seizure to control the trade in infringing goods was foreshadowed in the
Paris Convention, which in Art 9(1) provides that 'all goods unlawfully bearing
a trademark or trade name shall be seized on importation into those countries of
the Union where such mark or trade name is entitled to protection'. It was
envisaged in Art 9(3) that this seizure would take place at the request of 'the
public prosecutor, or any other competent authority, or any interested party'.
The Paris Convention contains no provisions providing for the seizure upon
importation of other intellectual property infringements.
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(ii) Suspension of release of goods by customs authorities
The key border control provision of the TRIPS Agreement is Art 51, which
requires Members to adopt procedures to enable a right holder, who has valid
grounds for suspecting that the importation of counterfeit trade mark or pirated
copyright goods may take place, to lodge an application with competent
authorities, administrative or judicial, for the suspension by the customs
authorities of the release into free circulation of such goods.
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