To prepare a Draft Resolution to be presented at the AIPPI ExCo Helsinki, Finland
Description of Working Question
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.