Jane Lambert

27 May 2010  Revised 29 May 2017

Countries that are party to the Agreement Establishing the World Trade Organization are obliged by art 41 of Annex 1C to that agreement (otherwise known as TRIPS) to ensure that enforcement procedures as specified in arts. 41 to 61 of that Annex are available under their law so as to permit effective action against any act of infringement of intellectual property rights covered by TRIPS, including expeditious remedies to prevent infringements and remedies which constitute a deterrent to further infringements. Those procedures must be applied in such a manner as to avoid the creation of barriers to legitimate trade and to provide for safeguards against their abuse. They must be fair and equitable and not unnecessarily complicated or costly, or entail unreasonable time-limits or unwarranted delays.

TRIPS requires three sets of enforcement mechanisms:
  • Procedures whereby IP rights holders can obtain injunctions to restrain future infringements and damages or an account of profits in respect of previous infringements and other relief (arts 42 to to 50 of TRIPS (see Civil Proceedings);
  • Detention of counterfeit goods and pirated items at the border, ports and airports (arts 51 to 60); and
  • Criminal procedures and penalties to be applied at least in cases of wilful trade mark counterfeiting or copyright piracy on a commercial scale (art 61).
The United Kingdom has implemented all those requirements. First, all intellectual property rights are essentially rights of action which may be enforced by rights holders through proceedings in the civil courts. Secondly, customs officers have power under European Union and national legislation to detain items that infringe certain IP rights at ports and airports.  Thirdly, bootlegging, counterfeiting and piracy (infringing rights in performances, trade marks or copyright on a commercial scale as well as certain registered design and registered Community design infringements) are criminal offences which are enforced by trading standards officers.

It cannot be stressed too highly that civil litigation can be expensive in the United Kingdom.  According to Taylor Wessing a typical patent infringement claim can cost between £200,000 and £1 million in England and Wales and between £200,000 and £400,000 in Scotland (see Taylor Wessing's Patent Map - European Patent Litigation Guide). For most small businesses, the best way of funding IP litigation is to take out specialist IP insurance at the time of taking out a patent, trade mark or other registered right or starting production of an item that is protected only by copyright or design right. It is uneconomic to accept instructions on a no win no fee basis and there is very little scope for the after-the-event insurance.

For further information on enforcement, call +44 (0)20 7404 5252 during office hours or send me a message through my contact form.

Further Reading

29 Jan 2017

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