Enforcement under the TRIPS Agreement [Shortened version of presentation] Regional Conference – IP Enforcement Cairo, November 9, 2008 Ms. Louise van Greunen

Perry v Truefitt (1842) 6 Beav 66, 49 E.R. 749 Lord Langdale: … a man is not to sell his own goods under the pretence that they are the goods of another man; he cannot be permitted to practice such a deception…he cannot be allowed to use names, etc. by which he may induce purchasers to believe that the goods which he is selling are the manufacture of another person. I have no doubt that he has no right to use the mark for purposes of deception...

World Health Organization: IMPACT project Rome Declaration 2006: Rome Declaration 2006: “Counterfeiting medicines … is a vile and serious criminal offence that puts human lives at risk and undermines the credibility of health systems … Because of its direct impact on health … [it] should be combated and punished accordingly.” “Counterfeiting medicines … is a vile and serious criminal offence that puts human lives at risk and undermines the credibility of health systems … Because of its direct impact on health … [it] should be combated and punished accordingly.” International Medical Products Anti-Counterfeiting Taskforce (IMPACT) International Medical Products Anti-Counterfeiting Taskforce (IMPACT)

CONSUMER ATTITUDES AND BEHAVIOURS: COUNTERFEITS Moscow, Russia CIPR 19 March 2003 Coalition for Intellectual Property Rights

TRIPS AGREEMENT Why enforcement obligations? Inability of right holders to enforce IP rights around the world Inability of right holders to enforce IP rights around the world inability to obtain, preserve and present evidence inability to obtain, preserve and present evidence delays in obtaining final judgements delays in obtaining final judgements inadequate damage awards and criminal sanctions inadequate damage awards and criminal sanctions lack of enforcement at borders lack of enforcement at borders

Civil actions and remedies Effective action against any act of infringement Effective action against any act of infringement + expeditious remedies to prevent infringement + expeditious remedies to prevent infringement + remedies to deter further infringements + remedies to deter further infringements appeals appeals

Article 61 of TRIPS Criminal sanctions Criminal procedures and penalties for Criminal procedures and penalties for willful TM counterfeiting or copyright piracy on a commercial scale willful TM counterfeiting or copyright piracy on a commercial scale remedies - remedies - SHALL include: imprisonment and/or monetary fines sufficient to provide a deterrent SHALL include: imprisonment and/or monetary fines sufficient to provide a deterrent Where appropriate, shall also include seizure, forfeiture, destruction - goods and implements Where appropriate, shall also include seizure, forfeiture, destruction - goods and implements

History 1883: PARIS 1886: BERNE 1893: BIRPI 1970: WIPO 1974: Specialized Agency of the U.N. WIPO Today 184 Member States

WIPO - activities in enforcement Legislative assistance Legislative assistance cooperation at the international level cooperation at the international level assistance: formulating national enforcement strategies assistance: formulating national enforcement strategies activities with Regional Bureaus and the WIPO Worldwide Academy activities with Regional Bureaus and the WIPO Worldwide Academy Enforcement Committees Enforcement Committees

Global Congress on Combating Counterfeiting and Piracy 1 st : World Customs Organization – Brussels 1 st : World Customs Organization – Brussels 2 nd : Interpol – Lyon 2 nd : Interpol – Lyon 3 rd : WIPO – Geneva 3 rd : WIPO – Geneva 4 th : WCO - Dubai 4 th : WCO - Dubai

Advisory Committee on Enforcement (WIPO Assemblies - September 23 to October 1, 2002) One single Committee in charge of global enforcement issues with objectives: One single Committee in charge of global enforcement issues with objectives: coordination with certain organizations and the private sector to combat counterfeiting and piracy coordination with certain organizations and the private sector to combat counterfeiting and piracy public education public education assistance assistance coordinate national and regional training coordinate national and regional training exchange of information exchange of information

Sessions of the ACE 1 st Session: st Session: nd Session: the role of the judiciary and the prosecution in enforcement activities 2 nd Session: the role of the judiciary and the prosecution in enforcement activities 3 rd Session: education and awareness- building, including training 3 rd Session: education and awareness- building, including training 4 th Session: November 1 and 2, 2007 Cooperation and Coordination at the different levels (criminal enforcement) 4 th Session: November 1 and 2, 2007 Cooperation and Coordination at the different levels (criminal enforcement)

Thank you!