AIPPI 2013: Alternatives to injunctions and damages
International courts and legal bodies overseeing IP infringement cases should have powers to award forms of relief other than injunctions and damages, it has been claimed.
Executive committee (ExCo) members of the International Association for the Protection of Intellectual Property (AIPPI) ruled that there should be a harmonised system for awarding additional relief in inter parte court or administrative proceedings.
Additional relief includes altering infringing goods, correcting advertising and paying monetary relief other than damages.
Making reference to article 41(1) of the World Trade Organization (WTO) TRIPS agreement, the AIPPI executive committee (ExCo) noted that there is scope for other remedies.
According to TRIPS, its members can “permit effective action against any act of infringement of IP rights covered by this Agreement, including expeditious remedies to prevent infringements and remedies which constitute a deterrent to further infringements”.
A draft resolution, compiled by an AIPPI working group and which the ExCo voted on, said there is “broad support” for proposing various forms of additional relief, adding: “Harmonising the availability of additional relief furthers the creation of effective and appropriate means for enforcement of IPRs.”
The ExCo, which has previously studied issues surrounding injunctions and damages but has never considered other forms of relief, noted in its ruling that the availability of additional relief would “reinforce an effective system for IP rights enforcement for all parties”.
Addressing the committee, Mark Guetlich, who works in international patent policy and government affairs at the US Patent and Trademark Office, said he was aware that it was a “delicate task” but added that it would help countries benefit from “some kind of harmonisation”.
“The concept of vowing to put an infringer out of businesses and spending every penny to do that sometimes goes too far. Alternatives must be carefully applied, but completely stopping an infringer could, in turn, stop potential royalties resulting from it [alternative judgment] and kill incentives for new technology,” Guetlich said.
“This discussion is an important task and I applaud AIPPI for taking this on as a topic for study.”
The resolution, passed by the ExCo, noted that all forms of additional relief should be available “in principle” for all forms of infringement.
It adds that “the decision on whether and what is awarded or refused should be made on a case-by-case basis”.
“Where the grant of additional relief is contested, courts should give reasons for awarding or refusing additional relief, such reasons being sufficient to understand the rationale.”
The resolution was passed by 96 percent of the ExCo.
