1 digital spark 2010 2 september 2010 remedies and sanctions under the ip enforcement directive...
TRANSCRIPT
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Digital Spark 2010
2 September 2010
Remedies and Sanctions under the IP Enforcement Directive
Enrico Bonadio - Lecturer in LawDundee Business School
Universty of Abertay Dundee
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Enforcement of IPRs
EC Directive 2004/48: “Enforcement Directive”
First Directive aiming at harmonising all IPRs
Form of horizontal harmonisation Earlier directives on IP: vertical
harmonisation
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Enforcement of IPRs
Subjects entitled to ask for remedies Art. 4 Dir: subjects entitled are (a) the IPR holders (b) the persons authorised by the said
holders (e.g. licensees) (c) collective rights management
bodies (d) professional defence bodies
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Enforcement of IPRs It is often difficult to gather evidence of IPRs violation Art. 6.1 Dir: courts may order that an evidence (in
control of the opposing party) be presented in court by defendant
Art. 6.2 Dir: in case of infringement committed on a commercial scale, courts may order the defendant to communicate banking/financial/commercial docs under his control
Bank accounts records/invoices/delivery notes/warehouse receipts
Subject to protection of confidential information
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Enforcement of IPRs
Gathering evidence is not enough It is also important to preserve evidence Art. 7 Dir: court may order provisional
measures to preserve evidence in respect of the alleged infringement
Application of the injured party Subject to protection of confidential
information
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Enforcement of IPRs Eg: “description” of the infringing goods
(similar to UK Anton Pillar orders) It is carried out by a court bailiff It is often necessary when it is not
possible to buy a sample of the infringing product (eg trade fair)
… and in case of infringement of process patents (and the violation is not detectable by examining the final product)
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Enforcement of IPRs
Obtaining information on (i) involvement of third parties and (ii) origin of infringing goods
Art. 8 Dir: info on origin of goods and distribution networks used by defendant
Eg: name/address of producers, distributors, suppliers, wholesalers, retailers, etc.
Eg: information on quantities produced, delivered, received or ordered and on price of goods/services
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Enforcement of IPRs
Provisional measures to stop infringing activities (Art. 9)
a) Interlocutory injunctions and b) seizures
a) Interlocutory injunctions prevent any imminent infringement of IPR or forbid the continuation
Rapid and cheap way of procuring temporary redress
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Enforcement of IPRs
b) Seizures aims at seizing/delivering up goods suspected of infringing IPR
Purposes: preventing the entry into channel of commerce
of infringing goods therefore avoiding further circulation of
infringing products Carried out by a court bailiff Right holders can participate to seizure
operations
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Enforcement of IPRs
Art. 9.3 Dir: to obtain provisional measures, right owners must show evidence:
(i) they are right holders (ii) their IPRs are being infringed
(or infringement is imminent)
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Enforcement of IPRs
Provisional measures may be ordered inaudita altera parte (without the other party having been heard)
… where delay is likely to cause irreparable harm to IPR holder (Art. 9.4 Dir)
so-called ex parte orders (eg UK Anton Piller orders) After execution of the measure, the parties effected
must be given notice … … and a review (including a right to be heard)
should take place … … to give the respondent a chance to challenge the
lawfulness of the injunction/seizure
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Enforcement of IPRs
Remedies at the end of a proceedings on the merit
“Corrective measures” (Art. 10 Dir): (i) recall from the channels of commerce of
infringing products (ii) definitive removal from the channels of
commerce (i) destruction The aim is to “correct” the infringement and
eliminate infringing products
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Enforcement of IPRs
Art. 11 Directive Final injunction: one of the most important measures
obtainable by IPR holders … … as it prevents the continuation of the
infringing activity Non compliance with injunction orders is
subject to penalties … … with a view to ensuring compliance Penalties aim at strenghtening the
injunction order
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Enforcement of IPRs
Damages are awarded with the decision on the merits of the case
Money damages are the most important Art. 13.1 Dir: just infringers who
knowingly engaged in infringing activities may be ordered by courts to pay damages
Damages can be invoked in case of wilful and/or negligent acts
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Enforcement of IPRs
Compensation based on objective criteria
Overriding principle: an injured party must be restored to the position it would have been in before its IPR was infringed
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Enforcement of IPRs
When quantifying damages, all factors must be taken into account:
(i) Negative economic consequence which the injured party has suffered
(ii) Any unfair profits made by the infringer
(iii) Reasonable royalty rate (iv) Moral prejudice caused to IPR
holder by the infringement
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Enforcement of IPRs (i) Negative economic
consequence which the injured party has suffered– (a) Damnus emergens: actual
loss suffered by the injured party– (b) Lucrum cessans: lost profits
suffered by right holder
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Enforcement of IPRs
(ii) Any unfair profits made by the infringer
It is possible that IPR owners has not recorded lost profits
Nonetheless, they are entitled to damages compensation
Art. 13.1: any unfair profits made by the infringer must be taken into consideration
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Enforcement of IPRs
(iii) Reasonable royalty rate Royalties which would have been due
if the infringer had requested authorization to use IPR
Such method may be a successful approach …
… if the right holder shows in court to have granted licences in the past
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Enforcement of IPRs
(iv) Moral prejudice caused to IPR holder by the infringement
Art. 13.1 Dir: also moral damage should be compensated
Such damages are usually requested by companies renowed for quality/reliability of goods/services
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Enforcement of IPRs
Publication of judicial decisions Art. 15 Dir: courts may order – at the
request of applicant and expenses of infringer – appropriate measures for dissemination of information concerning the decision …
… including displaying the decision and publishing it (in full or in part) on newspapers or specialized magazines
It aims at giving a message to trade and avoiding market distortions
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Enforcement of IPRs
Thanks for your attention!