The Disposal of the IP Infringing Goods National Seminar – IP Protection and Enforcement relating to the Automotive Spare Parts – Topic 11 Bucharest, Romania May 25, 2017 Xavier Vermandele Senior Legal Counsellor, Building Respect for IP Division

Legal framework The legal framework under the TRIPS Agreement Art. 46 TRIPS Art. 59 TRIPS Art. 61 TRIPS The WTO panel report in the US/China dispute (DS 362) The legal framework under Enforcement Directive No. 2004/48/EC (IPRED) Art. 10 (“Corrective Measures”) + Art. 12 (“Alternative Measures”)

TRIPS, Article 46 Inserted into Section 2 (“Civil and Administrative Procedures and Remedies”). Applicable to the enforcement of any IPR covered by TRIPS. Dedicated to “Other Remedies”, next to injunctions (Art. 44) and damages (Art. 45).

TRIPS, Article 46 Article 46 sets principles (see Article 59: “[…] competent authorities shall have the authority to order the destruction or disposal of infringing goods in accordance with the principles set out in Article 46”). Common objective of these principles: to create an effective deterrent to infringement

TRIPS, Article 46 Judicial authorities shall have the authority to order: that goods that they have found to be infringing be disposed of outside the channels of commerce (to avoid harm to the right holder); or be destroyed, unless contrary to existing constitutional requirements In such a manner has to avoid any harm to the right holder that materials and implements predominantly used to create infringing goods be disposed of outside the channels of commerce in such a manner as to minimize the risks of further infringements. Without compensation of any sort

TRIPS, Article 46 Judicial authorities shall consider: the need of proportionality between the seriousness of the infringement and the remedies ordered, and the interests of third parties.

EU: Enforcement Directive No. 2004/48 (IPRED) Article 10 (“Corrective measures””): “1. Without prejudice to any damages due to the rightholder by reason of the infringement, and without compensation of any sort, Member States shall ensure that the competent judicial authorities may order, at the request of the applicant, that appropriate measures be taken with regard to goods that they have found to be infringing an intellectual property right and, in appropriate cases, with regard to materials and implements principally used in the creation or manufacture of those goods. Such measures shall include: recall from the channels of commerce; definitive removal from the channels of commerce; or destruction. 2. The judicial authorities shall order that those measures be carried out at the expense of the infringer, unless particular reasons are invoked for not doing so. 3. In considering a request for corrective measures, the need for proportionality between the seriousness of the infringement and the remedies ordered as well as the interests of third parties shall be taken into account.”

Other Provisions in TRIPS, Part III Article 59 (Border Measures) Refer. Art. 46 (simplified procedures – e.g., EU Customs Reg. No. 608/2013, Art. 23) Article 61 (Criminal procedures and penalties) At least for wilful trademark counterfeiting or copyright piracy on a commercial scale “[…] In appropriate cases, 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 […]”.

US/China dispute (DS 362) WTO Panel: Report on January 26, 2009 – important interpretation of, inter alia, Articles 46 and 59 TRIPS: http://www.wto.org/english/tratop_e/dispu_e/cases_e/ds362_e.htm

Concrete Challenges What happens after seizure? Who is responsible for storage, disposal, destruction? recycling open air burning shredding crushing burying in landfill donation for humanitarian relief Who pays?

Concrete Challenges Source: IllicitTrade.com by TechTrace SA

Concrete Challenges Disposal procedures are becoming more technically complex, costly and onerous for governments and rights holders; Counterfeit products increasingly present a direct threat to consumers and the wider environment.

Concrete Challenges Consumer protection concerns The range of infringing goods that present a direct or indirect threat to consumers is increasing; They include: pharmaceuticals, household products, foodstuffs, automotive/aircraft parts, industrial electrical wiring/relays, fire extinguishing equipment, refrigerants, security products, alcohol, consumer electrical goods, cigarettes, etc.; Disposal procedures must be effective and 100% secure to ensure that they are not re-introduced into the channels of commerce.

Concrete Challenges Environment concerns Growing consciousness of the need to manage the environmental impact of infringing goods; Some counterfeit goods present a direct and toxic threat to the environment: insecticides, pesticides, ozone depleting substances, etc.; Requirement to use careful, environmentally friendly, destruction methods; Maximize the use of recycling.

Concrete Challenges Environment concerns: The methods adopted depend on the nature of the goods requiring disposal as well as the availability of appropriate disposal facilities. Quid transport hazardous IP infringing goods to countries with appropriate disposal facilities? Legislation? Customs regulations? Compliance with multi-lateral environment agreements (e.g., Montreal protocol on Substances that Deplete the Ozone Layer; Basel Convention on the Control of Transboundary Movements of Hazardous Wastes and Their Disposal)?

Environmentally Safe Disposal of IP Infringing Goods – ACE Discussions WIPO/ACE/5/7 “Addressing Costs and Balancing Rights,” Mr. Ronald Brohm, Amsterdam, Netherlands, November 2009 WIPO/ACE/6/8 “A Study Relating to Existing Methods of Disposal and Destruction of Counterfeit Goods and Pirated Goods within the Asia Pacific Region,” Mr. David Blakemore, Executive Director, Asia Pacific Secretariat, IPR Business Partnership Next ACE in September 2017: Study on Environmentally Safe Disposal of IP Infringing Goods http://www.wipo.int/enforcement/en/ace

Environmentally Safe Disposal of IP Infringing Goods – Joint Initiatives WIPO-UN ESCAP-UNEP Regional Workshop on the Environmentally Safe Disposal of Intellectual Property-Infringing Goods, Bangkok, November 21-22, 2013

18 WIPO Magazine: “Disposing of Counterfeit Goods: Unseen Challenges” http://www.wipo.int/wipo_magazine/en/2012/06/article_0007.html EU Observatory: “Observatory Update on Storage and Destruction” https://oami.europa.eu/ohimportal/documents/11370/80606/Observatory+update+on+storage+and+destruction

Multumesc! xavier.vermandele@wipo.int www.wipo.int/enforcement