AIPPI Q236: Relief in IP Proceedings Other than Injunctions or Damages, Part 1

Many readers will be familiar with AIPPI (the Association Internationale pour la Protection de la Propriété Intellectuelle, or International Association for the Protection of Intellectual Property).  For those who are not, here is a description of the organization's aims and purposes, from its website:

The International Association for the Protection of Intellectual Property, generally known under the abbreviated name AIPPI, is the world's leading International Organization dedicated to the development and improvement of the regimes for the protection of intellectual property.

It is a politically neutral, non-profit organization, domiciled in Switzerland which currently has almost 9000 Members representing more than 100 countries.

The objective of AIPPI is to improve and promote the protection of intellectual property on both an international and national basis. It pursues this objective by working for the development, expansion and improvement of international and regional treaties and agreements and also of national laws relating to intellectual property.

It operates by conducting studies of existing national laws and proposes measures to achieve harmonisation of these laws on an international basis. In this context AIPPI has become increasingly concerned with issues concerning the enforcement of intellectual property rights.

To this end, AIPPI formulates questions to which its national member groups prepare reports, and then drafts and considers resolutions for adoption.

One recent committee was No. Q236, titled "Relief in IP Proceedings Other than Injunctions or Damages."  (Here is a link to the relevant webpage, which includes the resolutions, summary reports, group reports, working guidelines, and an introductory plenary session document)  Its main task was "to prepare a draft resolution to be presented at the AIPPI ExCo Helsinki, Finland," and its working question described as follows:

The availability of relief for infringement is fundamental to the protection of intellectual property rights (IPRs). In Hyderabad last year, AIPPI adopted Resolution Q219 regarding injunctive relief in the case of infringements of IPRs. In Boston in 2008, AIPPI adopted Resolution Q203 dealing with damages in the context of trademark infringement, and notably counterfeiting and piracy of trademarks. Besides injunctive relief and damages, there are other remedies permitting ‘effective action against any act of infringement’ (Article 41 (1) TRIPS) which AIPPI has not studied so far. We propose to explore the availability of relief in IP proceedings other than injunctions or damages.

These other forms of relief include, for example, seizure of infringing goods, delivery up and destruction of infringing goods, rectification, publication of the court’s judgment and declaratory relief. In addition, there may be other forms of monetary relief than damages, e.g. account of profits where the infringer is asked to surrender the profits earned as a result of the IPR infringement. While the Working Guidelines Q203 briefly addressed account of profits, the Working Committee and, hence, the Resolution Q203 did not further consider account of profits as a separate form of monetary relief. Alternatively, the plaintiff may obtain an award of monetary reparation for moral tort or an award of reasonable royalty based on unjust enrichment law. Finally, in addition to these more general forms of relief, there are also other forms of relief which are heavily fact specific, e.g. alteration of infringing goods such as change/removal of packaging, and modifications to technology by way of a workaround.

The list of specific questions posed to the national groups, available here, included the following:

1)            What forms of Additional Relief are available in IP proceedings?

2)            Are those forms of Additional Relief available for all types of IPRs? If not, please indicate what types of Additional Relief are available for what types of IPRs. . . .

3)            Having regard to the types of Additional Relief available addressed by questions 1 and 2, what are the criteria for the grant of that relief? There may be different criteria for the different types of Additional Relief identified. Hence, the Groups are asked to address the individual criteria for each type of Additional Relief that is available in IP proceedings in their country.

4)            Is there any element of judicial discretion in relation to the grant of any form of Additional Relief addressed in questions 1 and 2? If so, how is that discretion applied?

5)            Are any particular forms of Additional Relief invariably ordered in certain circumstances? If so, what types of Additional Relief and in what circumstances? Does that occur pursuant to mandatory statutory regulation, or by reason of the practice of the relevant court (or applicable administrative body)?

6)            Are there any specific considerations relevant to particular IPR holders? If so, what considerations are relevant and in respect of what IPR holders?

7)            Can a court (or applicable administrative body) order any form of Additional Relief directly against a non‑party to an IP proceeding?

8)            If yes to question 7:

a)    in what circumstances;

b)    what forms of Additional Relief may be ordered; and

c)    in respect of what types of IPR infringement?

9)            Is a court (or applicable administrative body), in making an order for Additional Relief against an IPR infringer who is a party to the IP proceeding, obliged to consider the impact of such order on any non‑party? If so, how does the court (or applicable administrative body) fulfil that obligation?

10)         If yes to question 7 or 9, is the court (or applicable administrative body) obliged to give any relevant non‑party an opportunity to be heard? If so, how is that effected? . . .

Groups are invited to put forward proposals for the adoption of harmonised rules in relation to Additional Relief in IP proceedings. More specifically, the Groups are invited to answer the following questions:

11)         What forms of Additional Relief should be available in IP proceedings, and for what types of IPRs?

12)         What should the criteria be for the grant of the types of Additional Relief identified in response to question 11?

13)         Should there be any specific considerations relevant to particular IPR holders? If so, what should those considerations be and in respect of which IPR holders?

14)         Should any particular form of Additional Relief be mandatory in certain circumstances? If so, what types of Additional Relief and in what circumstances?

15)         Should a court (or applicable administrative body) be empowered to order any form of Additional Relief directly against a non-party to an IP proceeding?

16)         If yes, to question 15:

a)   in what circumstances;

b)   what forms of Additional Relief should a court (or applicable administrative body) be empowered to order; and

c)   in respect of what types of IPR infringement?

17)         Should a court (or applicable administrative body), in making an order against an IPR infringer who is a party to the proceeding, be obliged to consider the impact of such order on any non-party? If yes, how should the court (or applicable administrative body) fulfil that obligation?

18)         If yes to question 15 or 17, should the court (or applicable administrative body) be obliged to give any relevant non-party an opportunity to be heard? If so, how should that be effected?

19)         Please provide any other proposals in respect of harmonisation as to the types of Additional Relief that should be available in IP proceedings and the conditions in which such relief should be ordered.

Some future posts will discuss points I found interesting in some of the national group reports, as well as the resolution that was adopted on September 10, 2013.