Research On The Enforcement Of Intellectual Property Rights Related To Transit Goods

With the development of international trade and the strengthening of IPR border enforcement, the new issue of goods-in-transit related to IPR enforcement highlights gradually. However, with respect to transit trade, it has a long history on treaty harmonization and rich practice of law enforcement. This dissertation focuses on the theoretical discussion, obligations of treaties and cases in this regard as well as suggestions on Chinese IPR enforcement on goods-in-transit. In addition to an introduction and a conclusion, this dissertation includes four chapters.Chapter One examines several theoretical issues of the IPR enforcement on goods-in-transit. There are two main lines used to trace the evolution of issues concerning IPR enforcement on goods-in-transit, which comprises the international harmonization and development of the transit freedom, as well as the international legislations on IPR protection.In order to promote free trade, the logical evolution of the principle of transit freedom is to confer limited freedom of transit, ensuring that measures and procedures to enforce IPR on goods-in-transit will not become barriers to legitimate trade. For trade security reasons, transit country does not easily cancel the IPR enforcement on goods-in-transit. IPR border enforcement system is an indispensable part of the domestic IPR enforcement system which has been strengthened on the international treaties, the subject matter and the objects of the enforcement have been broadened, and extended to cover the goods-in-transit. In the past, the transit freedom and international trade were regarded as parallel terms, namely, transit freedom emphasizes the universality of international trade and uniform rules, while IPR protection should respect the sovereignty of the country. With the background of the stricter IPR border enforcement, the universality of the international trade and the territoriality of the IPR lead to conflicts between IPR border enforcement and trade facilitation principles inevitably. The harmonization of the conflicts relate to the balance of interests in a wide range and at multiple levels. IPR enforcement on goods-in-transit involves the trade interests of the importing, exporting and transit country at the macroscopic level, and involves the economic interest of the trade dealers, IPR right holders and consumers at the microscopic level. In general, importing and exporting countries are in favor of the transit country’s measures to cope with infringing goods-in-transit, and also have concern about the disturbances caused by the transit country’s enforcement action. Under the premise of ensuring national security, transit countries focus on improving the efficiency of customs clearance and transit service capabilities to attract more transit cargo. For the private partners related to the goods-in-transit, their most appeal is to reduce and simplify the various inspections during the transit, and enjoy the transit freedom and trade facilitation at utmost. The extension of IPR border enforcement to protect the goods-in-transit is driven by international organizations, non-governmental organization and industrial associations, corporations especially multi-national corporations with more capability and economic motivation to create and maintain the IPR. As a link between the international trade and IPR protection, anti-counterfeit promotes the shift of IPR topic from the World Intellectual Property Organization (WIPO) to the World Trade Organization (WTO), and the latest accomplishments of international harmonization proves that anti-counterfeit will be the main object of the international trade and IPR border enforcement in the future. The spread of intellectual commodities should not be limited in a particular country or region, but should enhance the welfare in different regions and countries, which requires the freedom and facilitation of international trade. Under the premise of abidance of principle of facilitation of international trade, reasonable regimes of IPR enforcement rules on goods-in-transit is conducive to ensure the legitimate international trade unaffected by IPR border enforcement.Chapter Two discusses the treaty obligations of IPR enforcement on goods-in-transit. Transit freedom derived from the freedom of the Customs transit in European countries. All the following treaties stipulate that there exists the freedom of the passage of the goods-in-transit, e.g. Convention and Statute on Freedom of Transit (1921), The General Agreement on Tariffs and Trade (GATT,1947), United Nations Convention on Transit Trade of Land-Locked States (1965), International Convention on the Harmonization of Frontier Control of Goods (1982). However, the right of transit is not an absolute right, whose fulfillment requires the approval and assistance of transit countries. Those above-mentioned treaties do not deny the power of transit countries to restrict the goods-in-transit based on IPR protection. Although the treaties administered by the WIPO mainly focus on the IPR protection, some of which contain IPR enforcement provisions, such as Paris Convention for the Protection of Industrial Property, the Berne Convention for the Protection of Literary and Artistic Works and the Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods, there are no explicit agreement or provisions on IPR enforcement of goods-in-transit in WIPO regime. Border measure on exportation is provided as an optional obligation under TRIPS agreement that member states are only encouraged to adopt such measures in its domestic legislation.As for goods-in-transit, TRIPS agreement declares that member states do not bear any treaty obligation in its footnote. According to the ACTA, as a new and comprehensive treaty to enhance the IPR enforcement, the subject matter of the IPR border enforcement has been broadened, the coverage and scope have been expanded, and the ex officio action has been strengthened by the customs authority. Among all the regional harmonization results, European Union Border Measures Regulations (BMR) unifies IPR enforcement procedures on importation, exportation and transit of the non-community goods in European countries. The North American Free Trade Agreement (NAFTA) does not provide mandatory measures of border enforcement with regard to exporting and in-transit goods.Due to the lower degree of the economic integration in the Asia-Pacific region, IPR harmonization tends to adopt soft law (guidelines and initiatives) to guide the domestic practice of the relevant countries, but the effect is limited.United States-Korea Free Trade Agreement (KORUS FTA) stipulates that, each party shall provide that its competent authorities may initiate border measures ex officio with respect to imported, exported, or in-transit merchandise, or merchandise in free trade zones. However, those obligations in the bilateral FTA have beyond the level established by the TRIPS and ACTA enforcement rules.Chapter Three analyzes the practical issues of IPR enforcement on goods-in-transit. Since the IPR border enforcement rules on in-transit goods has not been defined clearly in the international treaties, those independent customs territory has adopted different legislation rules which empower the customs authority to enforce IPR protection on in-transit goods, such as Japan, Korea, Singapore, Papua New Guinea, Hong Kong and European Union, the effects of the enforcement are variant as well.Nevertheless, there are many cases about IPR enforcement on in-transit goods in the Netherlands, Germany, France, United Kingdom and Belgium in European Union, those which are significant to clarify the identification of the in-transit goods and the criteria of the infringement determination in the European Union BMR. The active enforcement practices in the European Union are the development direction satisfied by the ACTA members, and it will provide a wealth of jurisprudential support to the implementation of the ACTA border measures. Meantime, the European Union new revised regulation proposal echoed the ACTA in terms of the coverage and scope of the border measures, and went beyond the level established in the ACTA. The latest Guidelines (Guidelines of the European Commission concerning the enforcement by European Union customs authorities of intellectual property rights with regard to goods, in particular medicines, in transit through the European Union) confirm that, European Union customs authorities have the power to control the goods in all customs procedures according to the first article of the existing regulation (EC Regualtion1383/2003). The Guidelines also follow that only infringements of intellectual property rights as conferred by the European Union law and the national law of the Member States are covered by those Regulations. The competent authorities have the power to determine that whether goods-in-transit constitute infringing goods or not, with a decision based on the circumstances of the case and in accordance with the relevant substantive intellectual property laws. Therefore, the IPR infringement may be established when, during their presence within the customs territory of the European Union without being released to free circulation (for instance, placed under a suspensive procedure), or even before their arrival in that territory, the non-community goods are the subject of a commercial act directed at the European Union market, such as a sale, offer for sale or advertising, or where it is apparent from documents (e.g. instruction manuals) or correspondence concerning the goods that their diversion to the European Union market is envisaged. These guidelines completely negate the "manufacture fiction" theory, which is derived from the interpretation of the European Union BMR by the Netherlands courts. However, in the Nokia and Philips cases (Joined Cases C-446/09and C-495/09), European Court of Justice found that, BMR are procedural rules, without any substantive rules to define the infringement of the goods-in-transit. In addition to the practices in the European Union and its member states, the signatories of the ACTA are considering implementing the ACTA with proper domestic legislation and enforcement strategy. Compared to other goods-in-transit, the border enforcement on generic medicine involves sensitive public health and human rights will be analyzed in a special section.Chapter Four explores suggestions for China to cope with the implementation of the ACTA and IPR enforcement rules on goods-in-transit. The Regulations of the People’s Republic of China for Customs Protection of Intellectual Property Rights has been in full compliance with the obligation established in the TRIPS border measures, the level of the enforcement go beyond than the TRIPS minimum standards in terms of the coverage and scope of the border enforcement, and China Customs won the recognitions and prizes for its outstanding achievement in IPR border enforcement. In practice, there is no pressure and urgency to push China to join the ACTA and to rectify the Regulations of the People’s Republic of China for Customs Protection of Intellectual Property Rights. Actually, the comprehensive coverage of the IPR is the trend on IPR border enforcement, and the scope of the WTO members’IPR border enforcement should include the goods-in-transit and goods in the Customs Supervision Zones. Although there are some obstacles in the way of the implementation of the ACTA, the ACTA members will endeavor to put the ACTA come into effect. At the same time, other international harmonization achievements, including new treaty obligation about the enforcement rules, will go beyond the minimum standards established in the TRIPS agreement and the ACTA, such as negotiating Trans-Pacific Partnership Agreement. China should prepare to enact and enforce the IPR enforcement rules on goods-in-transit. Under the premise of maintaining the existing judging standards of the IPR infringement, China should empower the customs to enforce IPR protection on goods-in-transit and goods in the Customs Special Supervision Zones.