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International Instruments Related To Intellectual Property Rights

Intellectual property has a dual nature, i.e. it has both a national and international dimension. For
instance, patents are governed by national laws and rules of a given country, while international
conventions on patents ensure minimum rights and provide certain measures for enforcement of
rights by the contracting states. Strong protection for intellectual property rights (IPR) worldwide is
vital to the future economic growth and development of all countries. Because they create common
rules and regulations, international IPR treaties, in turn, are essential to achieving the robust
intellectual property protection that spurs global economic expansion and the growth of new

Paris Convention for the Protection of Industrial Property

During the last century, before the existence of any international convention in the field of industrial
property, it was difficult to obtain protection for industrial property rights in the various countries of
the world because of the diversity of their laws. Moreover, patent applications had to be made
roughly at the same time in all countries in order to avoid a publication in one country destroying the
novelty of the invention in the other countries. These practical problems created a strong desire to
overcome such difficulties. During the second half of the last century the development of a more
internationally oriented flow of technology and the increase of international trade made
harmonization of industrial property laws urgent in both the patent and the trademark field.
The Paris Convention is one of the Intellectual Property Treaties administered by WIPO. It was
launched to provide some international harmonizing and streamlining of intellectual property
laws. Adopted on March 20, 1883 at Paris and entered into force on July 7, 1884. It provides basic
guidelines for the protection of industrial property (patents, utility models, industrial designs,
trademarks, service marks, trade names, indications of source or appellations of origin, and the
repression of unfair competition) and has substantive provisions for national treatment, right of
priority and common rules. This treaty came into force in India from December 7, 1998.
Anti-discrimination Policy
Under the Convention, a member country is obliged to give nationals of other member countries the
same protection and advantages as it grants to its own nationals. This anti-discrimination policy of
the Convention is also a fundamental tenet of many other intellectual property agreements and
National Treatment: National treatment means that, as regards the protection of industrial property,
each country party to the Paris Convention must grant the same protection to nationals of the other
member countries as it grants to its own nationals. The relevant provisions are contained in Articles
2 and 3 of the Convention. The same national treatment must be granted to nationals of countries
which are not party to the Paris Convention if they are domiciled in a member country or if they
have a real and effective industrial or commercial establishment in such a country. However, no
requirement as to domicile or establishment in the country where protection is claimed may be
imposed upon nationals of member countries as a condition for benefiting from an industrial
property right. This national treatment rule guarantees not only that foreigners will be protected, but
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also that they will not be discriminated against in any way. Without this, it would frequently be very
difficult and sometimes even impossible to obtain adequate protection in foreign countries for
inventions, trademarks and other subjects of industrial property.
Example: A French national applying for a patent in Japan will have the same patent rights and level
of protection in Japan as a Japanese national.
Framework of Priority
The other fundamental tenet of the Paris Convention is a 'framework of priority'. Under the Paris
Convention, an invention can be protected from the same point in time in a variety of countries. It is
also a means of access into national patent systems for foreign applicants. An inventor is able to
claim the filing date of his first patent application in a Convention country as an effective filing date
for further subsequent applications (for the same invention) in any other member country. However,
the later applications must be filed within 12 months of the earliest application in order to claim the
priority date.
Example: A United Kingdom patent application is lodged on 1 January, 2002. On 1 January 2003,
the same patent application is filed in Mexico. Mexico is a Convention member and as a result, the
Mexican application is treated as though it was filed on 1 January 2002.
If, without the treaty, the patent in the example was treated as though it was filed on 1 January 2003
in Mexico, the invention would likely already have been disclosed and thus un-patentable in Mexico.
The right of priority means that in the foreign Convention country, the patent application will be
filed from the earliest date of filing in the home country for purposes of cited or prior art. This is
beneficial to an inventor, as it allows the inventor to avoid detrimental effects of his or other's public
disclosure that occurred after the earliest application and before filing in foreign countries.
Example: A patent application for a video telephone is lodged in Djibouti. Eight months after
lodging the application, the inventor displays his video telephone at an international conference. As a
result of the conference worldwide publicity is generated for both the invention and the inventor, and
the specifications of the video telephone become widely known. A lot of interest is generated in
Australia and it becomes obvious to the inventor that it would be worthwhile to seek patent
protection in Australia.
In the example above, the inventor has four months in which to seek patent protection in Australia.
Even though he has publicly disclosed his invention throughout the world, he is still able to seek
protection in Australia, provided that he files an application in Australia within twelve months of
lodging his initial application in Djibouti.
Considering that obtaining patent protection can be an expensive process, the twelve month period
also provides the inventor with a reasonable period of time to determine whether his invention is
worth protecting in other countries.

Berne Convention for the Protection of Literary and Artistic Works

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Copyright protection on the international level began by about the middle of the nineteenth century
on the basis of bilateral treaties. A number of such treaties providing for mutual recognition of rights
were concluded but they were neither comprehensive enough nor of a uniform pattern. The need for
a uniform system led to the formulation and adoption of the Berne Convention for the Protection of
Literary and Artistic Works. The Berne Convention is the oldest international treaty in the field of
copyright. It is open to all States.
Adopted on September 9, 1886 at Berne and entered into force on December 4, 1887. Originally
signed in 1886 at Berne, Switzerland, it was revised in 1914, 1928, 1948, 1967, 1971, and 1979.
This Convention on Copyrights rests on three basic principles national treatment, automatic
protection and independence of protection; it also contains a series of provisions determining the
minimum protection to be granted. India became signatory of the Berne Convention on April 1,
The Berne Convention deals with the protection of works and the rights of their authors. It is based
on three basic principles and contains a series of provisions determining the minimum protection to
be granted, as well as special provisions available to developing countries that want to make use of
The three basic principles are the following:
(a) Works originating in one of the Contracting States (that is, works the author of which is a
national of such a State or works first published in such a State) must be given the same protection in
each of the other Contracting States as the latter grants to the works of its own nationals (principle of
"national treatment") .
(b) Protection must not be conditional upon compliance with any formality (principle of "automatic"
(c) Protection is independent of the existence of protection in the country of origin of the work
(principle of "independence" of protection). If, however, a Contracting State provides for a longer
term of protection than the minimum prescribed by the Convention and the work ceases to be
protected in the country of origin, protection may be denied once protection in the country of origin

The Universal Copyright Convention (UCC)

The Universal Copyright Convention (UCC), was first created in 1952 in Geneva, as an alternative
to the Berne convention. Some countries disagreed with certain articles in the Berne Convention, and
were not prepared to sign up to the terms of the Berne Convention. Most notably the United States
who at the time only provided protection on a fixed term registration basis via the Library Of
Congress, and required that copyright works must always show the symbol. This meant that the
US needed to make several changes to its laws before it could comply with the Berne Convention.
The US finally signed up to the Berne Convention on the 1st of March 1989, and now only requires
registration for work first published in the US by US citizens. The UCC ensured that international
protection was available to authors even in countries that would not become parties to the Berne
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Convention. Berne convention countries also became signatories of the UCC to ensure that the work
of citizens in Berne Convention countries would be protected in non-Berne Convention countries.
To ensure that the existence of the UCC did not lead to a conflict with the Berne Convention, Article
17 of the UCC states that the the convention does not affect any provision of the Berne convention,
and the appendix declaration to the article goes on to state that any country that withdraws from the
Berne Convention after 1st January 1951 will not be protected by the UCC in countries of the Berne
Convention Union.
This effectively gave the Berne Convention precedence and penalises any country that withdraws
from the Berne Convention to adopt the UCC.
As with the Berne Convention, the UCC provides flexibility on how nation states implement details
of the convention, and in order to understand specific aspects, it should be read in conjunction with
national copyright laws.
The Universal Copyright Convention is of limited importance today, as most countries are now part
of the Union of the Berne Convention.

Patent Cooperation Treaty (PCT)

Adopted on June 19, 1970 at Washington D.C. and entered into force on January 24, 1978. It
facilitates patent protection for an invention simultaneously in a large number of countries; it came
into force in India from December 7, 1998.
The Patent Cooperation Treaty (PCT) is a Global Protection Treaty administered by WIPO. The
Patent Cooperation Treaty aims to provide a simplified and less costly method of preserving the
rights to file a patent application in member countries. It seeks to achieve this by providing what is
known as a PCT application.
The PCT Application Process
A PCT application is NOT a primary patent application. Before a PCT application can be of use, a
priority patent application for an invention must be filed in the inventor's home country. After this
priority date is obtained by the initial filing of the application, a PCT application may be used to
preserve the right to file the same invention in all Patent Cooperation Treaty member countries.
Given that PCT applications claim a priority date from the initial patent application, the PCT
application acts as a placeholder, reserving the patent rights in member states designated on the
An inventor can designate as many member states as he desires in which to preserve his filing rights
or, after 1/1/2004, all member countries are automatically chosen.
In order to obtain protection in each individual country the inventor chooses, it is necessary for the
PCT to be converted (filed) in the national patent offices of the selected countries where the
invention will be subject to an examination in order to meet the national requirements for novelty,
obviousness etc. The administrative tasks, including translation if necessary and the fees associated
with lodging patent applications in that country, must be complied with.
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The PCT application can therefore act as a way of delaying the costs of filing in multiple national
patent offices, until the inventor has decided whether it is worthwhile seeking protection in many
Example: An Indian national files a patent application on the 1/1/2003 at the Indian Patent Office.
On the 1/1/2004 he then files a PCT application with WIPO designating Brazil, Egypt and China as
contracting states. After deciding that there are commercial opportunities for his invention in Brazil,
the applicant decides to file in Brazil six months after filing a PCT application (1/7/2004). The filing
date for the Brazilian application will claim priority from the date that it was first filed in India, i.e.
1/1/2003. The 20 year term of patent protection (if granted in Brazil) will extend from the date of the
PCT application (from 1/1/2004 to 1/1/2024). The inventor still has up to 12 months remaining in
order to decide whether or not to file in Egypt and China.
Priority that stems from a PCT application can only be given in those countries which are designated
on the application. In the example above, the inventor would not be able to claim the priority date of
1/1/2003 in Japan, as Japan was not specified as a designated country on the PCT application.
However, under the changes to the PCT process which came into force in January, 2004, there is no
longer a need for countries to be designated on the application as all member countries will
automatically be chosen.
A PCT application is usually filed at any point in time up to 12 months from the initial or priority
filing in the home country. At a period of 18 months after the initial application, the PCT application
is published. It used to be that at 20 months after the initial filing date, the applicant must have
entered the national phase of the application process in the designated states or lose his right to file
claiming the earlier priority date. However, this period could be extended by a further 10 months if
the applicant requested an examination or preliminary report. The examination gives an inventor a
preliminary and non-binding opinion on the patentability of the claimed invention. He is then able to
determine whether or not he should proceed with the conversion of the PCT application into
numerous, individual national patents.
Changes to the PCT Process
We are currently in a transitional period where changes to the PCT process are underway. It is now
becoming possible in some countries for inventors to claim priority for 30 months after the initial
filing, without having to request an examination at 20 months. This has not yet been implemented in
all PCT member countries, as it requires each member country to change their national patent laws to
reflect this extension of time. There is now one set international filing fee that applies to all
applications, regardless of the number of countries that have been designated by the applicant.
Benefits of the PCT Process
Under the PCT process, an applicant can delay the expenses of filing for up to 30 months, while
evaluating the desirability of filing in a particular country or raising the funds necessary to do so.
The applicant also has the peace of mind of knowing that the application cannot be rejected on 'prior
art' that has emerged in the time between the applicant making a PCT application and filing a
national application.
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The Madrid Agreement Concerning the International Registration of Marks

and the Protocol Relating to that Agreement Introduction
The system of international registration of marks is governed by two treaties, the Madrid Agreement
Concerning the International Registration of Marks, which dates from 1891, and the Protocol
Relating to the Madrid Agreement, which was adopted in 1989, entered into force on December 1,
1995, and came into operation on April 1, 1996. Common Regulations under the Agreement and
Protocol also came into force on that last date. The system is administered by the International
Bureau of WIPO, which maintains the International Register and publishes the WIPO Gazette of
International Marks. The reason for the much more recent Protocol, following the original Madrid
Agreement of 1891 (last amended at Stockholm in 1967), was the absence from the Madrid Union of
some of the major countries in the trademark field for example, Japan, the United Kingdom and
the United States of America. The Protocol is intended to make the Madrid system acceptable to
more countries. It differs from the Agreement in offering such options as:
a choice for the applicant, allowing international registrations to be based on national
applications and not only on national registrations;
a period of 18 months, instead of one year, for Contracting Parties to refuse protection, with the
possibility of a longer period in the case of a refusal based on an opposition;
the possibility for the office of a designated Contracting Party to receive, instead of a share in
the revenue from the standard fees, an individual fee whose amount may not be higher than
the fees it charges for national or regional registration or renewal, the said amount being
diminished by the savings resulting from the international procedure;
the transformation of an international registration which is no longer protected because the
basic mark has ceased to have effect in the country of origin, international or regional
applications in some or all of the designated Contracting Parties, with the filing date, and where
applicable the priority date, of the international registration;
The possibility for the Protocol to be joined not only by States, but in addition by any
intergovernmental organization which has an office for registering marks with effect in its
An application for international registration (international application) may be filed only by a natural
person or legal entity having a connection through establishment, domicile or nationality with a
Contracting Party to the Agreement or the Protocol. A mark may be the subject of an international
application only if it has already been registered with the trademark office of the Contracting Party
with which the applicant has the necessary connections (referred to as the office of origin). However,
where all the designations are effected under the Protocol (see below), the international application
may be based simply on an application for registration filed with the office of origin. An
international application must be presented to the International Bureau of WIPO through the
intermediary of the office of origin
The International Application
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An application for international registration must designate one or more Contracting Parties in which
protection is sought. Further designations can be effected subsequently. A Contracting Party may be
designated only if it is party to the same treaty as the Contracting Party whose office is the office of
origin. The latter cannot itself be designated in the international application.
The designation of a given Contracting Party is made either under the Agreement or the Protocol,
depending on which treaty is common to the Contracting Parties concerned. If both Contracting
Parties are party to the Agreement and the Protocol, the designation will be governed by the
International applications can be filed in English, French or Spanish, irrespective of which treaty or
treaties govern the application, unless the office of origin restricts that choice to one or two of these
The filing of an international application is subject to the payment of a basic fee (which is reduced to
10 per cent of the prescribed amount for international applications filed by applicants whose country
of origin is an LDC, in accordance with the list established by the United Nations), a supplementary
fee for each class of goods and/or services beyond the first three classes, and a complementary fee
for each Contracting Party designated. However, a Contracting Party to the Protocol may declare
that, when it is designated under the Protocol, the complementary fee is replaced by an individual
fee, whose amount is determined by the Contracting Party concerned but may not be higher than the
amount that would be payable for the registration of a mark, at the national level, with its office.
International Registration
Once the International Bureau receives an international application, it carries out an examination for
compliance with the requirements of the Agreement, the Protocol and their Common Regulations.
This examination is restricted to formalities, including the classification and comprehensibility of the
list of goods and/or services. If there are no irregularities in the application, the International Bureau
records the mark in the International Register, publishes the international registration in the WIPO
Gazette of International Marks (hereinafter referred to as "the Gazette"), and notifies it to each
designated Contracting Party. Any matter of substance, such as whether the mark qualifies for
protection or whether it is in conflict with a mark registered previously in a particular Contracting
Party, is determined by that Contracting Party's trademark office under the applicable domestic
legislation. The Gazette is available in electronic form (e-Gazette) on the Madrid system website.
Grant of Protection or Refusal of Protection
The office of each designated Contracting Party shall issue a statement of grant of protection.
However, when designated Contracting Parties examine the international registration for compliance
with their domestic legislation, and if some substantive provisions are not complied with, they have
the right to refuse protection in their territory. Any such refusal, including an indication of the
grounds on which it is based, must be communicated to the International Bureau, normally within 12
months from the date of notification. However, a Contracting Party to the Protocol may declare that,
when it is designated under the Protocol, this time limit is extended to 18 months. That Contracting
Party may also declare that a refusal based on an opposition may be communicated to the
International Bureau even after the 18-month time limit. The refusal is communicated to the holder
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of the registration or the holder's representative before the International Bureau, recorded in the
International Register and published in the Gazette. The procedure subsequent to a refusal (such as
an appeal or a review) is carried out directly by the competent administration and/or court of the
Contracting Party concerned and the holder, without the involvement of the International Bureau.
The final decision concerning the refusal must, however, be communicated to the International
Bureau, which records and publishes it.
Effects of an International Registration
The effects of an international registration in each designated Contracting Party are, from the date of
the international registration, the same as if the mark had been deposited directly with the office of
that Contracting Party. If no refusal is issued within the applicable time limit, or if a refusal
originally notified by a Contracting Party is subsequently withdrawn, the protection of the mark is,
from the date of the international registration, the same as if it had been registered by the office of
that Contracting Party. An international registration is effective for 10 years. It may be renewed for
further periods of 10 years on payment of the prescribed fees. Protection may be limited with regard
to some or all of the goods or services or may be renounced with regard to some only of the
designated Contracting Parties. An international registration may be transferred in relation to all or
some of the designated Contracting Parties and all or some of the goods or services indicated.
Advantages of the Madrid System
The Madrid system offers several advantages for trademark owners. Instead of filing a separate
national application in each country of interest, in several different languages, in accordance with
different national or regional procedural rules and regulations and paying several different (and often
higher) fees, an international registration may be obtained by simply filing one application with the
International Bureau (through the office of the home country), in one language (English, French or
Spanish) and paying one set of fees.
Similar advantages exist for maintaining and renewing a registration. Likewise, if the international
registration is assigned to a third party, or is otherwise changed, such as a change in name and/or
address, this may be recorded with effect for all designated Contracting Parties by means of a single
procedural step.
To facilitate the work of the users of the Madrid system, the International Bureau publishes a Guide
to the International Registration of Marks under the Madrid Agreement and the Madrid Protocol.

World Intellectual Property Organization (WIPO)

The World Intellectual Property Organization (WIPO) is an international organization dedicated to
facilitating worldwide protection of the rights of creators and owners of intellectual property.
Adopted on July 14, 1967 at Stockholm and entered into force on April 26, 1970. WIPO was
established under this Convention with two main objectives - to promote the protection of
intellectual property worldwide and to ensure administrative cooperation among the intellectual
property Unions established by the treaties that WIPO administers. India became a member on May
1, 1975.
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WIPO's origin dates back to 1884 when the Paris Convention entered into force with 14 member
States, which set up an International Bureau to carry out administrative tasks, such as organizing
meetings of the member States. Like the Paris Convention, the Berne Convention set up an
International Bureau to carry out administrative tasks. In 1893, these two small bureaux united to
form an international organization called the United International Bureaux for the Protection of
Intellectual Property (best known by its French acronym BIRPI). Based in Berne, Switzerland, with
a staff of seven, this small organization was the predecessor of the World Intellectual Property
Organization of today - a dynamic entity with 185 member States, a staff that now numbers some
938, from 95 countries around the world, and with a mission and a mandate that are constantly
growing. This International Bureau evolved over time to become known in 1970 as WIPO. In 1974,
WIPO became a specialized agency of the United Nations and in 1996, WIPO expanded its role into
globalized trade by entering into a cooperation agreement with the World Trade Organization.
WIPO, administers 25 treaties (three of those jointly with other international organizations) and
carries out a rich and varied program of work, through its member States and secretariat, that seeks

to harmonize national laws and procedures on intellectual property;

to provide an international registration service for industrial property;
to exchange information about intellectual property
to provide legal and technical assistance to the developing countries and others;
to assist the settlement for disputes on intellectual properties among individuals;
to use information technology as an instrument to keep, access and exploit valuable
information about intellectual property.

World Trade Organization (WTO)

Adopted on April 15, 1994 at Marrakesh and entered into force on January 1, 1995. WTO was
established to provide the common institutional framework for the conduct of trade relations among
its Members in matters related to the agreements and associated legal instruments. India became a
member to this agreement on January 1, 1995.
Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement)
The Uruguay Round of multilateral trade negotiations held in the framework of the General
Agreement on Tariffs and Trade (GATT) was concluded on December 15, 1993. The agreement
embodying the results of those negotiations, the Agreement Establishing the World Trade
Organization (WTO Agreement), was adopted on April 15, 1994, in Marrakech. Those
negotiations included, for the first time within the GATT, discussions on aspects of intellectual
property rights related to international trade. The result of those negotiations, contained in an Annex
to the WTO Agreement, was the Agreement on Trade-Related Aspects of Intellectual Property
Rights (the TRIPS Agreement). The WTO Agreement, including the TRIPS Agreement (which is
binding on all WTO Members), entered into force on January 1, 1995. The former agreement
established a new organization, the World Trade Organization, which began its work on January 1,
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1995. Member States of WTO were given certain periods of time after the entry into force of the
Agreement establishing WTO before being obliged to apply the TRIPS Agreement. Trade-Related
Aspects of Intellectual Property Rights (TRIPS) is arguably the most important and comprehensive
international agreement on intellectual property rights. Member countries of the WTO are
automatically bound by the agreement. The Agreement covers most forms of intellectual property
including patents, copyright, trademarks, geographical indications, industrial designs, trade secrets,
and exclusionary rights over new plant varieties.
Obligations under the TRIPS Agreement
The TRIPS agreement outlines several important trade related aspects of intellectual property. More
specifically, it requires signatory countries to adhere to its criteria for intellectual property monopoly
grants of limited duration, along with requiring adherence to the Paris Convention, Berne
Convention and other WTO Conventions. The criteria are minimum standards for granting a
monopoly over any type of IP, as well as duration limits, enforcement provisions and methods of IP
dispute settlements.
When the TRIPS Agreement took effect on January 1, 1995, all developed countries were given
twelve months from the date of signing the agreement to implement its provisions. Developing
countries and transition economies (under certain conditions) were given five years, until 2000.
Least developed countries (LDCs) were given 11 years, until 2006, to comply. Some countries have
indicated that a longer period should obtain. For pharmaceutical patents in these LDCs, the term for
compliance has been extended to 2016. There are currently 30 LDCs within the WTO organization
bound by TRIPS and another 10 LDCs are waiting accession.
The Most-Favoured-Nation Principle (MFN) - The TRIPS Agreement contains the mostfavoured-nation principle, which has not traditionally been provided for in the context of intellectual
property rights on the multilateral level. This principle provides that any advantage, favour, privilege
or immunity granted by a Member to the nationals of any other country (whether a Member or not)
shall be accorded immediately and unconditionally to the nationals of all other Members, with
certain specified exemptions. As is the case for national treatment, procedures provided in
multilateral agreements concluded under the auspices of WIPO relating to the acquisition or
maintenance of intellectual property rights are exempted from this principle.
Enforcement of IPR - The Agreement was not only aimed at providing minimum standards for
protecting IPR but it was also aimed at providing the enforcement of the same. The Agreement
provides minimum standards for the enforcement of IPR that allows right holders to protect their
legitimate interests through civil court or administrative proceedings. Part III of the Agreement on
Enforcement of IPR sets out the obligations of member nations to establish administrative and
judicial mechanisms through which IPR holders can seek effective protection of their interests. The
general obligation of member nations to provide enforcement mechanisms requires that enforcement
procedures should be available under their national law so as to permit effective action against any
act of infringement of IPR covered by the Agreement, including expeditious remedies to prevent
infringements and remedies which constitute a deterrent to further infringements. Member nations
are obligated to ensure that enforcement procedures are fair and equitable, and not unnecessarily
complicated or costly, or entail unreasonable time limits or unwarranted delays. Regarding the civil
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administrative procedures and remedies, the Agreement provides for equal rights for both the
defendant and complaining parties. The rules of the Agreement provide that both parties should have
the opportunity to present and contest evidence, and that adequate remedial measures should be
available. The Agreement permits member nations to exclude the grant of injunctions in
circumstances involving compulsory licenses and other uses. The Agreement obligates member
nations to make provision for the ordering of prompt and effective provisional measures to prevent
entry of infringing goods into channels of commerce and preserve evidence against such infringing
goods and their traders. This means that the IPR holder should be entitled to seek a prompt action
against the infringement, whether or not the party alleged to be acting in an infringing manner can be
notified and given opportunity to be heard. With respect to Border Measures, the Agreement requires
member nations to allow certain right holders to prevent release by customs authorities of infringing
goods into circulation especially, with respect to counterfeit trademarks and pirated copyright goods.
The Agreement also provides for certain Criminal Measures (penalties) for trademark counterfeiting
and copyright piracy on a commercial scale.

It is suggested to go through class notes also.

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