Common use of Civil and Administrative Procedures and Remedies Clause in Contracts

Civil and Administrative Procedures and Remedies. 1. Each Party shall make available to right holders17-45 civil judicial procedures concerning the enforcement of any intellectual property right. 2. Each Party shall provide that in civil judicial proceedings, its judicial authorities shall: (a) have the authority to order the infringer to pay the right holder: (i) damages adequate to compensate for the injury the right holder has suffered as a result of the infringement; and (ii) at least in the case of copyright or related rights infringement and trade xxxx counterfeiting, the profits of the infringer that are attributable to the infringement, and that are not taken into account in determining damages under subparagraph (i) 17-46. (b) in determining any order for damages made under subparagraph (a), consider, inter alia, any legitimate measure of the value of the infringed goods or services including the retail price. 3. Each Party shall provide that, except in exceptional circumstances, its judicial authorities shall have the authority to order, at the conclusion of civil judicial proceedings concerning infringement of copyright or related rights or trade xxxx counterfeiting, that the prevailing party be awarded payment of courts costs or fees and reasonable attorney’s fees by the infringing party. 4. In civil judicial proceedings concerning copyright or related rights infringement and trade xxxx counterfeiting, each Party shall provide that its judicial authorities shall have the authority, at least where necessary to prevent further infringement, to order the seizure of suspected infringing goods, related materials and implements by means of which such goods are produced. 5. Each Party shall provide that in civil judicial proceedings concerning the enforcement of intellectual property rights, its judicial authorities shall have the authority to order the infringer to provide any information that the infringer possesses regarding persons involved in the infringement and regarding the distribution channels of the infringing goods. Judicial authorities shall also have the authority to impose fines or imprisonment on infringers who do not comply with such orders, in accordance with each Party’s domestic law. 6. If a Party’s judicial or other authorities appoint technical or other experts in civil judicial proceedings concerning the enforcement of intellectual property rights, and require that the parties to the proceedings bear the costs of such experts, the Party should seek to ensure that these costs are reasonable and related appropriately to, inter alia, the quantity and nature of work to be performed, or, if applicable, based on standardised fees, and do not unreasonably deter recourse to such proceedings.

Civil and Administrative Procedures and Remedies. 1. Each Party shall make available to right holders17-45 holders civil judicial procedures concerning the enforcement of any intellectual property right.right covered in this Chapter.109 2. Each Party shall provide that its judicial authorities have the authority to order injunctive relief that conforms to Article 44 of the TRIPS Agreement, including to prevent goods that involve the infringement of an intellectual property right under the law of the Party providing that relief from entering into the channels of commerce. 3. Each Party shall provide110 that, in civil judicial proceedings, its judicial authorities shall: (a) have the authority at least to order the infringer to pay the right holder: (i) holder damages adequate to compensate for the injury the right holder has suffered as a result because of an infringement of that person‟s intellectual property right by an infringer who knowingly, or with reasonable grounds to know, engaged in infringing activity. 4. In determining the infringement; and (ii) at least in the case amount of copyright or related rights infringement and trade xxxx counterfeiting, the profits of the infringer that are attributable to the infringement, and that are not taken into account in determining damages under subparagraph (i) 17-46. (b) in determining any order for damages made under subparagraph (a)paragraph 3, each Party‟s judicial authorities shall have the authority to consider, inter aliaamong other things, any legitimate measure of value the right holder submits, which may include lost profits, the value of the infringed goods or services including measured by the market price, or the suggested retail price. 5. At least in cases of copyright or related rights infringement and trademark counterfeiting, each Party shall provide that, in civil judicial proceedings, its judicial authorities have the authority to order the infringer, at least in cases described in paragraph 3, to pay the right holder the infringer‟s profits that are attributable to the infringement.111 6. In civil judicial proceedings with respect to the infringement of copyright or related rights protecting works, phonograms or performances, each Party shall establish or maintain a system that provides for one or more of the following: 109 For the purposes of this Article, the term “right holders” shall include those authorised licensees, federations and associations that have the legal standing and authority to assert such rights. The term “authorised licensee” shall include the exclusive licensee of any one or more of the exclusive intellectual property rights encompassed in a given intellectual property. 110 A Party may also provide that the right holder may not be entitled to any of the remedies set out in paragraphs 3, 5 and 7 if there is a finding of non-use of a trademark. For greater certainty, there is no obligation for a Party to provide for the possibility of any of the remedies in paragraphs 3, 5, 6 and 7 to be ordered in parallel. 111 A Party may comply with this paragraph through presuming those profits to be the damages referred to in paragraph 3. (a) pre-established damages, which shall be available on the election of the right holder; or (b) additional damages.112 7. In civil judicial proceedings with respect to trademark counterfeiting, each Party shall also establish or maintain a system that provides for one or more of the following: (a) pre-established damages, which shall be available on the election of the right holder; or (b) additional damages.113 8. Pre-established damages under paragraphs 6 and 7 shall be set out in an amount that would be sufficient to compensate the right holder for the harm caused by the infringement, and with a view to deterring future infringements. 9. In awarding additional damages under paragraphs 6 and 7, judicial authorities shall have the authority to award such additional damages as they consider appropriate, having regard to all relevant matters, including the nature of the infringing conduct and the need to deter similar infringements in the future. 10. Each Party shall provide that, except in exceptional circumstances, that its judicial authorities shall authorities, if appropriate, have the authority to order, at the conclusion of civil judicial proceedings concerning infringement of at least copyright or related rights or trade xxxx counterfeitingrights, patents and trademarks, that the prevailing party be awarded payment by the losing party of courts court costs or fees and reasonable attorney’s fees by appropriate attorney‟s fees, or any other expenses as provided for under the infringing party. 4. In civil judicial proceedings concerning copyright or related rights infringement and trade xxxx counterfeiting, each Party shall provide that its judicial authorities shall have the authority, at least where necessary to prevent further infringement, to order the seizure of suspected infringing goods, related materials and implements by means of which such goods are produced. 5. Each Party shall provide that in civil judicial proceedings concerning the enforcement of intellectual property rights, its judicial authorities shall have the authority to order the infringer to provide any information that the infringer possesses regarding persons involved in the infringement and regarding the distribution channels of the infringing goods. Judicial authorities shall also have the authority to impose fines or imprisonment on infringers who do not comply with such orders, in accordance with each Party’s domestic Party‟s law. 611. If a Party’s Party‟s judicial or other authorities appoint a technical or other experts expert in a civil judicial proceedings proceeding concerning the enforcement of an intellectual property rights, right and require that the parties to the proceedings bear proceeding pay the costs of such expertsthat expert, the that Party should seek to ensure that these those costs are reasonable and related appropriately toappropriately, inter aliaamong other things, to the quantity and nature of work to be performed, or, if applicable, based on standardised fees, performed and do not unreasonably deter recourse to such proceedings. 12. Each Party shall provide that in civil judicial proceedings: (a) at least with respect to pirated copyright goods and counterfeit trademark goods, its judicial authorities have the authority, at the right holder‟s request, to order that the infringing goods be destroyed, except in exceptional circumstances, without compensation of any sort; 112 For greater certainty, additional damages may include exemplary or punitive damages. 113 For greater certainty, additional damages may include exemplary or punitive damages. (b) its judicial authorities have the authority to order that materials and implements that have been used in the manufacture or creation of the infringing goods be, without undue delay and without compensation of any sort, destroyed or disposed of outside the channels of commerce in such a manner as to minimise the risk of further infringement; and (c) in regard to counterfeit trademark goods, the simple removal of the trademark unlawfully affixed is not sufficient, other than in exceptional circumstances, to permit the release of goods into the channels of commerce. 13. Without prejudice to its law governing privilege, the protection of confidentiality of information sources or the processing of personal data, each Party shall provide that, in civil judicial proceedings concerning the enforcement of an intellectual property right, its judicial authorities have the authority, on a justified request of the right holder, to order the infringer or, in the alternative, the alleged infringer to provide to the right holder or to the judicial authorities, at least for the purpose of collecting evidence, relevant information as provided for in its applicable laws and regulations that the infringer or alleged infringer possesses or controls. The information may include information regarding any person involved in any aspect of the infringement or alleged infringement and the means of production or the channels of distribution of the infringing or allegedly infringing goods or services, including the identification of third persons alleged to be involved in the production and distribution of the goods or services and of their channels of distribution. 14. Each Party shall provide that in relation to a civil judicial proceeding concerning the enforcement of an intellectual property right, its judicial or other authorities have the authority to impose sanctions on a party, counsel, experts or other persons subject to the court‟s jurisdiction for violation of judicial orders concerning the protection of confidential information produced or exchanged in that proceeding. 15. Each Party shall ensure that its judicial authorities have the authority to order a party at whose request measures were taken and that has abused enforcement procedures with regard to intellectual property rights, including trademarks, geographical indications, patents, copyright and related rights and industrial designs, to provide to a party wrongfully enjoined or restrained adequate compensation for the injury suffered because of that abuse. The judicial authorities shall also have the authority to order the applicant to pay the defendant expenses, which may include appropriate attorney‟s fees. 16. To the extent that any civil remedy can be ordered as a result of administrative procedures on the merits of a case, each Party shall provide that those procedures conform to principles equivalent in substance to those set out in this Article. 17. In civil judicial proceedings concerning the acts described in Article 18.68 (TPMs) and Article 18.69 (RMI): (a) each Party shall provide that its judicial authorities have the authority at least to:114 (i) impose provisional measures, including seizure or other taking into custody of devices and products suspected of being involved in the prohibited activity; (ii) order the type of damages available for copyright infringement, as provided under its law in accordance with this Article;115 (iii) order court costs, fees or expenses as provided for under paragraph 10; and (iv) order the destruction of devices and products found to be involved in the prohibited activity; and (b) a Party may provide that damages shall not be available against a non-profit library, archive, educational institution, museum or public non-commercial broadcasting entity, if it sustains the burden of proving that it was not aware or had no reason to believe that its acts constituted a prohibited activity.