The TRIPS Provisions on Enforcement

Part III of the TRIPS Agreement is concerned with the enforcement of intellectual property rights and this Part is divided into 21 articles and five sections:

• • General Obligations (Article 41)
• • Civil and Administrative Procedures and Remedies (Articles 42-49)
• • Provisional Measures (Article 50)
• • Special Requirements Related to Border Measures (Articles 51-60)
• • Criminal Procedures (Article 61)

All of these provisions on enforcement can be said to have two basic objectives: “One is to ensure that effective means of enforcement are available to rights holders; the second is to ensure that enforcement procedures are applied in such a manner as to avoid the creation of barriers to legitimate trade and to provide for safeguards against their abuse” (World Trade Organisation 2015b). Part III as a whole also complements the substantive minimum standards of TRIPS as “from a rights holder’s perspective, substantive minimum rights are of little value if there are no effective procedures for the enforcement of such rights” (UNCTAD-ICTSD 2004, p. 575).

Section 1 of Part III outlines the general obligations relating to enforcement. The first paragraph of Article 41 outlines the main principles of enforcement, that enforcement procedures shall “permit effective action against any act of infringement of intellectual property rights covered by this Agreement, including expeditious remedies to prevent infringements and remedies which constitute a deterrent to further infringements.” Sections 2 and 3 (dealing with civil and administrative procedures and remedies and provisional measures) are applicable to all intellectual property rights infringements, whereas Sects. 4 and 5 (special requirements related to border measures and criminal procedures) apply only to trademark counterfeiting and copyright piracy.

It is significant that, in sharp contrast to the substantive provisions, the TRIPS provisions on enforcement in Part III mark a significant departure from previous intellectual property protection offered by international agreements such as the Paris and Berne Conventions by adding teeth to the substantive provisions. Under these Conventions, adoption into domestic law was seen as sufficient to discharge a state’s obligation to comply, even if the domestic law was subsequently unenforced (Reichman 1996, p. 338), whereas under TRIPS, the prescribed minimum standards of protection have to actually be implemented. Another important consideration to take into account is that Part III of TRIPS does not attempt to harmonise national enforcement procedures, but rather aims to establish general minimum standards, which can then be implemented by each member as they see fit. This approach is also laid out in the Preamble to TRIPS which states that the negotiating parties saw “the need for new rules and disciplines concerning... c) the provision of effective and appropriate means for the enforcement of trade-related intellectual property rights, taking into account differences in national legal systems” (emphasis added). This is important to remember when assessing China’s compliance; even if China’s IP system is considerably different from that of its trading partners, China could still be in compliance with TRIPS due to this inbuilt flexibility in the TRIPS Agreement.

Overall, the drafting of the TRIPS Agreement provoked controversy between the developed and developing WTO members and as a result, the final text of the Agreement reflects the compromises made in the negotiating process. This compromise is reflected most prominently in enforcement provisions in Part III. As the controversy surrounding the establishment of the TRIPS regime has now been outlined, the TRIPS Agreement will now be analysed in the context of compliance.