The Impact of the TRIPS-Agreement on Border Measures in the English Law
by Hendrik Meier
Although counterfeit products have been known for ages, the phenomenom of unauthorized copy and distribution of products that are protected by intellectual property rights has in particular expanded since the 1970s. Whereas in former times, in the first instance, books, luxury and fashion products were targeted by so-called product pirates, nowadays goods from almost every economic branch are subject to counterfeit production and trade. This does not only affect the holders of the original intellectual property rights that suffer direct and indirect losses (e.g., in addition to reduced sales, in many cases they also face a damage to their image by the minor quality of counterfeit products). Also customers have to cope with products that do not meet the quality they expect from the original product. In some cases, even the customer´s health is endangered by counterfeit goods (e.g. when pharmaceuticals or spare parts for vehicles are counterfeit). Moreover, the trade in counterfeit goods has reached a dimension that is recognizable in terms of national economics. According to some estimates, trade in counterfeit products amounts to up to 10 % of the world trade. As a result, jobs are destroyed and the incentive to develop new products and techniques is lowered.
Amongst others (e.g. civil law damages or criminal law sanctions), one means in order to combat the trade in counterfeit products is to seize them at the border. As regards to goods protected by a trade mark, this measure was incorporated in the Law of the United Kingdom as soon as 1845. Several traditional international multilateral agreements seeking the protection of intellectual property rights contain provisions for border measures, too. For example, the first international agreement in this field of law, the Paris Convention from 1883, provides for the seizure of goods unlawfully bearing a trade mark.
Nevertheless, the provisions of the traditional conventions are not binding for the member states. Thus, those member states that decide not to transform the border measure provisions into their national law or to directly apply them face no sanctions. In contrast to this, the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS-Agreement), that is part of the Agreement Establishing the World Trade Organization (WTO-Agreement) from 1994, sets up provisions for border measures that are binding for its member states. A member state that rejects to transform the rules into national law or to directly enforce them may be subject to sanctions under the WTO-Agreement. Hence it follows that the TRIPS-Agreement is the first international multilateral agreement that contains truly binding rules for border measures as a means for the protection of intellectual property rights.
This dissertation aims to show the impact of the border measure provisions of the TRIPS-Agreement on the Law of the United Kingdom.
To accomplish this, the research presents the TRIPS-Agreement in general. Here, inter alia, the reasons that lead to this agreement are considered as well as its historic background. In the next part, the relationship between the TRIPS-Agreement, European Law and the Law of the United Kingdom is explained. At this point, in particular the question of the direct applicability of the provisions of the TRIPS-Agreement is looked at. Following this, the individual intellectual property rights are described as protected by the TRIPS-Agrement, the Law of the European Community and the Law of the United Kingdom. After that, the general principles of the TRIPS-Agreement are presented. In this connection, the author grants an overview over the enforcement rules of the TRIPS-Agreement, of which the border measures form part.
In a next step, the border measures of the TRIPS-Agreement, the Community Law and the Law of the United Kingdom are analyzed in detail. With respect to the protected goods, the conditions for the border measures set up by customs law and the procedures of the border measures, the differences of the provisions at these three levels are pointed out. This is especially important as the United Kingdom has not directly transformed the provisions of the TRIPS-Agreement into national law. Instead, Parliament seems to have relied on the European Community to fulfil this obligation by passing a Community Regulation. Hence, emphasis in this part of the dissertation is laid on the Regulation EC 3295/94 that expressively aims to comply with the provisions of the TRIPS-Agreement. Here, the rules of the TRIPS- Agreement, this Regulation and the Law of the United Kingdom at the time when the Regulation came into force are compared. In addition, the following developments of the border measures in Community Law and the Law of the United Kingdom are explained as well.
The author draws the conclusion that the TRIPS-Agreement only had an indirect impact on the border measures under the Law of the United Kingdom. The transformation of the border measure provisions of the TRIPS-Agreement only took place by way of the aforesaid Community Regulation. However, this lead to a more intensive protection of intellectual property rights through border measures. This was further improved by following Community Regulations. It can thus be said that the TRIPS-Agreement was the initial reason for the European Community to improve its system of protection of intellectual property rights through border measures. Due to the binding character of Community Regulations, the protection in the United Kingdom was improved in the same way. As another consequence of this, nowadays only in few cases can counterfeit products still be seized on the sole basis of the national law.