Transcript Principles, Sources and Interpretation of international

Principles and Sources of
International Intellectual Property
Law
Master of Laws in Intellectual
Property
September 12, 2011
Thomas Cottier
7/7/2015
World Trade Institute Berne
1
References
The lecture relates to materials and cases in:
• Principles and Main Sources of International Intellectual Property Law,
Teaching Materials, September 2010 (handout)
• Frederick M. Abbott, Thomas Cottier, Francis Gurry, International
Intellectual Property in an Integrated Economy, Austin Boston: Aspen
Publishers Wolter Kluwer, 2nd ed. 2011 (IIP);
• Thomas Cottier, The Agreement on Trade-Related Aspects of
Intellectual Property Rights (TRIPs) in: The World Trade
Organization: Legal, Economic and Critical Analysis (Macroy et al
eds. 2005) (electronic handout)
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General Characteristics
• IPR Regulation: the oldest Field of
Multilateral Harmonization (Paris and
Berne Conventions, 1883, 1886)
• IPR Regulation: the youngest Field of
international and multilateral Dispute
Settlement (TRIPs Agreement: 1995)
• „Infant“ Jurisprudence in WTO: Trial and
Error
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Contrasts in Property Regime in
international law
• The Legacy of National Sovereignty:
– Real Property (land, capital) not addressed in
international law except for protection from
expropriation (compensation) and investment
protection, mainly outside WTO
• The International System of IPRs
– Extensive multilateral Treaty Network (right of
priority, registration), plus TRIPS Agreement:
global law, fully within WTO
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Main Challenges Ahead
• How much Harmonization in international IPR
law and how much Decentralization and
regulatory competition ? (Multilayered
Governance)
• Does Territoriality of IPRs still work?
• Relation to Competition Law: Minimum or
Maximum Standards for IPRs (Ceiling) ?
• Graduation for Developing Countries: How to
interface IPR protection and development?
• How much public policy enforcement of IPRs?
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Agenda of Lectures
• Legal Sources
• Common Features of General Principles
• Main Standards of Protection
– Substantive Standards
– The Scope of IPRs
– Procedural Standards
• Enforcement of IPRs
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Part I
Legal Sources of International
Intellectual Property
IIP 12-55, 110-125
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Sources of International Law
• Article 38 Statute of the International Court
of Justice
– international agreements (conventions, treaties,
executive agreements, informal agreements)
– Customary Law
– General Principles of Law
– Judicial decisions (precedents) and literature
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The Evolution of IP Treaties
• WIPO: administers 25 Agreements relating to
– Substantive rules
– International registration
– Classification
• Sources: http://www.wipo.int/aboutip/en/iprm/pdf/ch1.pdf relating to WIPO
• WTO: TRIPs Agreement
• Bilateral Agreements, mainly preferential trade
agreements
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Institutional design of IPR protection
Member States (153): Ministerial Conference (biannual)
DG & Secretariat
General Council
Training Institute
Council
GATT
Com
GATS
Com
Com
TRIPS
TPRM
WIPO:
AWP
Paris
AWP
BerneAWP
AWP
TSB
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CBFA
DSB
AB
Panels
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Relationship of TRIPs and WIPO
Agreements
• Incorporation and of Paris and Berne
Conventions, Washington Agreement, Art.
2, 9 and 35 TRIPs
• Reference to Rome Convention, Art. 2.2, 3
• U.S. - Sec. 211 Omnibus Appropriation Act:
inclusion or exclusions of trade names (Art.
8 Paris Convention)?
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Relationship WTO - WIPO
• WIPO: World Intellectual Property
Organisation; UN Special Organisation,
Geneva
• Responsible for administration of existing
treaties, and treaty-making in the field of
IPRs (substance, registration, classification)
• Registration of patents, trademarks and
designs
• Co-operation Agreement WTO-WIPO
• How does WIPO cooperate in Dispute
Settlement?
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Customary Law
• What is the role of customary international
law in IPRs?
• Investment protection?
• What is the potential of customary law in
intellectual property?
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Precedents and Doctrine
• The law of the WTO effectively duplicates the system
as required by the Statute of the ICJ and as developed
by the ICJ in its case law
• direct reference to Article 38 (1) (d) and 59 of the
Statute of the ICJ by panels and the Appellate Body
Japan - Alcoholic Beverages, AB report, para. 5.6 and Fn. 30
• adopted panel and Appellate Body reports „create
legitimate expectations“
Id., para. 5.6
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The Impact of WTO Dispute
Settlement
...
the contracting party may, with a view to the
satisfactory adjustment of the matter, make written
representations or proposals to the other contracting party
or parties which it considers to be concerned. Any
contracting party thus approached shall give sympathetic
consideration to the representations or proposals made to
it.”
•
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Dispute Settlement (Art. XXIII:2, DSU)
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Case Law Relating to TRIPS
• Complainants:
•
•
•
•
•
US 18
EC 7
Brazil: 1
Canada: 1
Australia 1
•
•
•
•
•
•
US: 4
EC: 9
LDCs: 7
Canada: 2
Japan 2
China 2
• Panels and Appellate
Body*:
• 11 major cases decided (7
upon complaint EC)
• India Patent: US/EC (2)*
• Indonesia Automobiles*
(US/EC/Japan)
• Canada Patent (EC)*
• US Copyright (EC)
• Canada Patent Term
(US/EC)*
• US Section 211 Omnibus
Act (EC)*
• US - Copyright (EC)
(Arbitration)
• EC Trade Marks GI
(US/Aus)
• China IPR Enforcement
– Defendant:
• Cases settled:
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Agreements at Issue
ADA
AoA
ATC
GATT
GATS
ILA
SA
SCM
SPS
TBT
TRIMS
TRIPS
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Statistics
• 398 WTO Complaints total since 1995
(2009) of which:
• 26 Complaints under TRIPs (6.5%)
• 11 cases decided under DSU
• North-North disputes have prevailed so far,
with important exception of China
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General Principles of Law
• General Principles of Law have not played an
important role with IPRs often perceived as a
technical field of law. Potential to explore:
– Equity, including intergenerational equity
– Maxims of equity
– Good faith, protection of legitimate expectation and
prohibition of abuse of rights
– proportionality
– res iudicata, principles of non-retroactivity
– Human Rights? (e.g in defining ordre public)
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Human Rights and IPRs
• Are IPRs natural, human rights or the result
of a interest driven process in legislation?
• There are two competing schools:
– Human Rights based IPRs (Idealism)
– Legislative Rights (Utilitarianism)
• What are the appropriate foundations in
your view?
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Human Rights
Art. 27(2) Universal Declaration
Everyone has the right to protection of moral and material interests
resulting from any scientific, literary or artistic production of which he
[or she] is the author.
Art. 15 International Convenant on Economic,
Social and Cultural Rights (1966)
The States Parties to the present Convenant recogize the right of
everyone:
(c) To benefit form the production of the moral and material interests
resulting from any scientific, literary or artistic production ow hcih he
is the author.
2. The steps to be taken by the States Parties to the present Convenant
to achieve the full realization of this right shall include those necessary
for eh conservation, the development and diffusion of science and
culture.
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Human Rights (2)
• Regional Instruments (ECHR, Protocol 1)
• Art 21 ACHR
• Art. 14 African Charter on Human Rights and Peoples
Rights
• Art. 29 Draft Declaration on Rights of Indigenous Peoples:
Indigenous peoples are entitled to the recognition of the full
ownership, control, and protection of their cultural and intellectual
property.
They have the right to special measures to control, develop and protect
their sciences, technologies and cultural manifestations, including
human and other genetic resources, seeds, medicines, knowledge of the
properties of fauna and flora, oral traditions, literatures, designs and
visual and performing arts.
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Human Rights (3)
• Discuss the legal implication of the human
rights approach?
– Are IPRs natural Rights?
– How to assess Patent Rights hold by large
Companies?
– Impact on Balancing with possible restrictions?
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Utilitarianism (2)
• What is the impact of Utilitarian thought for
shaping IPRs?
– No apriori protection albeit property rights are
considered of paramount importance for
security
– Balance of different topoi and interest
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Conclusions
• IPRs are, in my view, predominantly
founded on utilitarian thought. This also
explains the great variety of specifications
found; result from interest driven processes
• Human Rights should focus on interests of a
strong personal nature linked to the
individual, such as moral rights in copyright
law, but not extend to all IPRs
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The Impact of Human Rights on
IPRs
• Human Rights influence the shaping and
interpretation of intellectual property rights in the
context of Article 7 and 8 of the TRIPs Agreement
• Right to health, right to food in particular are
influential and shape the agenda in patents (Doha
Waiver and amendment) indication of source, and
emerging protection of traditional knowledge
• Procedural implications: participatory rights and
approach in procedures (fairness, right to be
heard)
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Part II
Common Features and Principles
of International Intellectual
Property Protection
IIP 59-106 (partly)
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Basic Objectives (Art. 7 TRIPs)
• The protection and enforcement of intellectual
property rights should contribute to the promotion
of technological innovation and the transfer and
dissemination of technology
• To mutual benefit of producers and users of
technological knowledge
• Conducive to social and economic welfare and to
the balance of rights and obligations
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National Treatment and
Reciprocity
• Art. 2 & 3 Paris, Art. 5 Bern, Art. 5 TRIC, Art.
1(3) & 3 TRIPs
• What differences do you see between these
provisions? Same treatment v. treatment no less
favourable?
• EC – Protection of Trademarks and GIs (49)
• Difference to Article III GATT?
• Why exceptions for judicial and administrative
procedures?
• Main exceptions under Rome Art. 5; cf. Art. 1(3)
TRIPs:Why?
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Most Favoured Nation
• Art. 4 TRIPs, no equivalent in WIPO
Agreements
• Rationale for introducing MFN in IPRs?
Relation to National Treatment?
• Discuss main exceptions in Art. 4:
– judicial assistance
– Reciprocity provisions in Bern (e.g. Art. 14ter)
and Rome (e.g. Art. 5)
– Rome Convention
– Grandfather Rights as notified
• Why no exception for regional integration?
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Non-discrimination in Patent
Law
• Art. 27(1) TRIPs
– ... Patents shall be enjoyable without discrimination as to the place of
invention, the field of technology and whether products are imported or
locally produced.
• Art. 5(2) Paris:
– Each country of the Union shall have the right to take legislative measures
providing for the grant of compulsory licenses to prevent the abuses which
might result from the exercise of the exclusive rights conferred by the
patent, for example, failure to work.
• Are the two provisions compatible?
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Territoriality
• Approximation and international
harmonisation of laws and joint registration
do not alter the concept that IPR protection
remains based upon national (or regional)
law and thus upon different national titles
• Art. 4bis Paris:
– Patents applied for in the various countries of the Union by nationals of
countries of the Union shall be independent of patents obtained for the
same invention in other countries, whether members of the Union or not.
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Territoriality (2)
• Validity of title to be assessed on a country
by country basis
• Implication for International Registration?
• Art. 6 quinquies Paris:
– Every trademark duly registered in the country of origin shall be accepted
for filing and protected as in the other countries of the Union, subject to
the reservations indicated in this Article. Such countries may, before
proceedings to final registration, require the production of a certificate of
registration in the country of origin, issued by the competent authority.
Not authentication shall be required for this certificate.
• U.S. - Sec 211 Omnibus Appropriation Act
(57)
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Territoriality (3)
• The territoriality of laws does not exclude to take
into account facts and evidence produced abroad
(parallel trade issue)
• Very limited extraterritorial application of laws
(US, cf. Babitt v. Dynascan, 38 F 3d 1161, (654)
• Difference to competition law (principle of
extraterritorial application)
• Is there a need to review territoriality in the age of
digital information? (from analogue to digital IPR
protection)
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Creativity, Invention and
Competition
• IPRs part of formal process of technical and
scientific innovation and advances
• Protection of innovation
• Do all forms of IPR require an intellectual
step beyond prior art (novelty, newness) ?
– Copyright (Art. 2 Bern), Art. 10 (2) TRIPs Data
Protection
– Undisclosed information (Art. 39 TRIPs)
– Trade Marks (Art. 15 TRIPs)
• Increasing Impact of Investment Protection
(Data base)
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Exclusion of Public Domain
• IPRs do not comprise information and knowledge
which is in the public domain
• Basically no retroactive effect (Art. 70 TRIPs)
• Information in Public Domain:
–
–
–
–
–
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Generic Names (trademark law)
Official Flags and Emblems (Art. 6ter Paris)
Information relating to expired IPRs
Problem of Traditional Knowledge
Problem of Rollback in Geographical Indications
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Transparency
• Grant of exclusive right by registration are
accompanied by publication of patent
applications (Art. 21 PCT) after 19 months
• Rendering information accessible to public
(search and information facilities) for
trademarks, designs etc
• Functions of publication?
• Transparency of laws (Art. 63 TRIPs), does
not cover publication of IPR titles
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Ubiquity of IPRs
• What is the main structural difference
between real property and intellectual
property?
• IPRs are contained in each copy of an IPR
protected product
• Impact on control and legal security of
down stream markets?
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Exhaustion of Rights
• National Exhaustion
– strict territoriality, irrlevance of action on
markets taken abroad
• International Exhaustion
– relevance of action on markets taken abroad
• Regional Exhaustion
– Combination: national exhaustion vis-à-vis
third states, international exhaustion within
customs union or FTA
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Priority: Acquisition of Rights
•
•
•
•
•
By Statutory Law
Copyright, including
moral rights
well-known and
famous marks
Undisclosed information
unfair competition
geographical
indications
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•
•
•
By Application and
Registration
Patents
Plant Variety Rights
Trademarks
[Geographical
Indications and]
Appellations of Origin
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Principle of Priority
• Interconnecting different national
registration systems
• Art. 4(1) Paris
– Any person who has duly filed an application for a patent, or for the
registration of a utility model, or of an industrial design, or of a trademark,
in one of the countries of the Union, or his successor in title, shall enjoy
for the purpose of filing in the other countries, a right of priority during
the periods thereafter fixed.
• 12 months for patents and utility models
• 6 months for trademarks and designs
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Principle Priority (2)
• Art. 11 Paris: Protection at trade fairs
• What are the functions and effects of the
priority principle?
– Preserve the novelty and newness of title
– Registration in one country allows to plan
further protection in accordance to business
needs
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Duration of Protection
• Restricted in time:
• Copyright (50 years
post mortem)
• Patents (20 years)
• Industrial Designs (at
least 10 years)
• Integrated Circuits (10
years)
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• Unlimited time:
• trade marks (at least 7,
renewals)
• geographical
indications
• trade secrets
(undislosed
information)
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Duration of Protection (2)
• Are WTO members allowed to extend
duration of protection?
• Criteria to assess appropriate length of
protection? Relation to investment?
• Alternative approaches?
• What is the impact of competition law on
defining length of protection
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Basic Obligations of Implementation
(Art. 2 TRIPs)
• Members are free to determine the appropriate
method of implementing the provisions of the
TRIPs Agreement within their own legal system
and practice
• Implementation in domestic law
• What role of international law in domestic courts
in assessing IPP-compatibility of domestic law?
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The Domestic and Constitutional
Perspective
• Dualism: International law has to be transformed into national law to be recognized
by courts (UK, Commonwealth Member
States)
• Monism: There is no difference between
national and international law. International
law is treated as national law by courts
(USA, France, Netherlands, Switzerland)
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The Doctrine of Consistent
Interpretation
• Notion:
• Where a national rule allows for different
interpretations, national law has to be construed in
accordance with international obligations
• Potential application in US law:
• „an act of Congress ought never to be construed to
violate the law of nations if any other construction is
possible.“ (Charming Betsy, 2 Cranch 64)
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Consistent Interpretation in EC
Law
• „the primacy of international agreements concluded by the
Community over provisions of secondary Community
legislation means that such provisions must, so far as
possible, be interpreted in a manner that is consistent with
those agreements.“ (Case C-61/94, Commission v
Germany)
• National procedure rule concerning subject matter
regulated in TRIPs is interpreted in the light of this
agreement (Case C-53/96, Hermès International v FHT
Marketing Choice BV)
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The Doctrine of Direct Effect
• Notion:
– In cases of explicit conflict between domestic and
international rules, a private person may challenge the
domestic provisons on the basis of the state‘s obligations under the invoked international agreement
– The concept of justiciablity
• Is the TRIPs Agreement suitable for direct effect?
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Direct Effect and US Law
– Trade agreements have historically been
granted direct effect in US courts, but:
– Recent legislation on free trade
agreements (US-Israel FTA, US-Canada
FTA, NAFTA) and WTO law contains
explicit denials of direct effect
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Direct Effect and EC Law
• FTAs
– Provisions of Association and Free Trade Agreements
enjoy direct effect, if they are unconditional and sufficiently precise (Case C-104 / 81, Hauptzollamt Mainz v
Kupferberg; Case T-115 / 94, Opel Austria GmbH v
Council)
• GATT 1947
• Provisions cannot be directly effective because:
– GATT is an instrument of negotiations, rather than
adjucation;
– GATT‘s provisions are not sufficiently precise (Case
C- 469/93, Amministrazione delle Finanze dello Stato v
Chiquita Italia SpA; Case C-280/93, Germany v Council)
– Invocation in dumping and assessment of TBR
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Perfums Christian Dior
• What are the issues in this case? (IPP 71)
• No direct effect of the WTO and of TRIPs
in particular on level of EC law (# 42-44)
• Possible direct effect in Member States
(mixed agreements) (# 48)
• Consistent interpretation (# 47)
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Part III
The Main Standards of Protection of
in Paris, Berne and TRIPs
Agreements
IPP 7-12; passim
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Forms of Protection in International
Law
• Traditional forms:
– Copyright and neighboring rights (producers and
performers rights); data base protection
– Trademarks and geographical indications, appellations
of origin
– trade names (Paris Convention)
– Industrial designs and integrated circuits
– Patents (substance and process)
– Plant variety protection (plant breeders rights)
– Protection of undisclosed information
– Relationship to unfair competition (Art. 10bis Paris)
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Patents (Art. 4-5 Paris, 27-34TRIPs)
• A patent is a right granted to the inventor of a
technological product or process which is new (or
novel), useful (or capable of industrial application)
and involves and inventive step (or is nonobvious).
• Object essentially is a technical rule
(reproduction)
• [Petty patents for utility inventions]
• Invention v. discovery
• Possible Exclusions Art 27:2
• Limited time (20 years as of filing) plus
Supplementary Protection in Pharma
• Registration
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Current Developments in Patent Law
Harmonization
• 1991 Draft Patent Harmonization Treaty WIPO
largely failed
• Draft Substantive Patent Law Treaty (SPLT), Sept.
30, 2003 (still under discussion)
• Disclosure of origin for TK protection (under
discussion)
• WIPO Development Agenda (under discussion)
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Plant Variety Protection (UPOV)
• Most countries protect plant varieties by a
special system (Agriculture)
• Protection of new Plant Varieties which are
new, distinct, uniform and stable (not wild
races and informal breeding) for at least 20
years, 25 for trees and vines
• Breeders exemption
• Farmers Privilege
• Registration
• Sui generis systems (Art. 27:3:b TRIPs)
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Industrial Designs (Art.25 TRIPs)
• “[The] protection of independently created industrial designs that are
new or original. Members may provide that designs are not new or
original if they do not significantly differ from known designs or
combinations of known design features. Members may provide that
such protection shall not extend to designs dictated essentially by
technical or functional considerations.”
• Originality, differentiate products with of
similar technology
• Duration at least 10 years
• Fair Use exemptions (Art. 26:2)
• Registration
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Topographies and Integrated
Circuits (Art. 35 TRIPs)
• Special Design Protection (Washington
Agreement, as incorporated)
• Deposit (surface)
• Exemptions (Art. 37)
• Protection: at least 10 years
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Copyright (Art. 9-14 TRIPs, Berne)
• Unlike patent does not protect content but form of
expression only; ideas and thoughts remain in the
public domain
• Minimal level of creative expression
• Moral Rights (excluded in Art. 9 TRIPs)
• Includes software protection and electronic data
collections
• Duration 50 years post mortem, 70 in many
countries
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Related Rights (Neighbouring
Rights) (TRIPs Art. 14)
• Rights of Performers, Phonogram & Film
Producers, Broadcasting Stations
• Rome Convention Rules not universal
• Protection of phonograms for 50 years, 20
years for broadcasts
• Collecting Societies
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Harmonization of Copyright Law
• WIPO Copyright Treaty, adopted December
20, 1996
• WIPO Performances and Phonogram
Treaty, adopted December 20, 1996
(Digital Rights Treaties)
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Trademarks (Art. 6-9 Paris Art. 1521
TRIPs)
• “Any sign, or any combination of signs, capable of distinguishing the goods or
services of one undertaking from those of other undertakings, shall be capable
of constituting a trademark. Such signs, in particular words including personal
names, letters, numerals, figurative elements and combinations of colours as
well as any combination of such signs, shall be eligible for registration as
trademarks. ...”.
•
•
•
•
Distinction of Products (Goods and Services)
Indirect Protection of Goodwill and Investment
Unlimited Protection (renewable)
Protection of Trade Names (Art. 8 Paris
Convention (US – Section 211 Omnibus
Appropriation Act of 1998, handout p. 17)
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Geographical Indications (Art. 22
TRIPs)
• Geographical indications are, for the purposes of this Agreement,
indications which identify a good as originating in the territory of a
Member, or a region or locality in that territory, where a given quality,
reputation or other characteristic of the good is essentially attributable
to its geographical origin.
• Protection limited to unfair competition and
trade marks in most countries, except EC
which allows for registration of such rights
• Duration unlimited
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Geographical Indications (2)
• Additional protection for wines and spirits:
• “.... even where the true origin of the goods
is indicated or the geographical indication is
used in translation or accompanied by
expressions such as “kind”, “type”, “style”,
“imitation”, or the like” (Art. 23:1)
• Negotiations on registration system still
uncompleted
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Undisclosed Information
(Art. 39 TRIPs)
• Natural and legal persons shall have the possibility of preventing
information lawfully within their control from being disclosed to,
acquired by, or used by others without their consent in a manner
contrary to honest commercial practices* so long as such information:
– (a) is secret in the sense that it is not, as a body or in the precise
configuration and assembly of its components, generally known among or
readily accessible to persons within the circles that normally deal with the
kind of information in question;
– (b) has commercial value because it is secret; and
– (c) has been subject to reasonable steps under the circumstances, by the
person lawfully in control of the information, to keep it secret.
• *
For the purpose of this provision, "a manner contrary to honest commercial
practices" shall mean at least practices such as breach of contract, breach of confidence
and inducement to breach, and includes the acquisition of undisclosed information by
third parties who knew, or were grossly negligent in failing to know, that such practices
were involved in the acquisition.
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Test Data Protection
(Art. 39:3 TRIPs)
• 3. Members, when requiring, as a condition of approving the
marketing of pharmaceutical or of agricultural chemical products
which utilize new chemical entities, the submission of undisclosed test
or other data, the origination of which involves a considerable effort,
shall protect such data against unfair commercial use. In addition,
Members shall protect such data against disclosure, except where
necessary to protect the public, or unless steps are taken to ensure that
the data are protected against unfair commercial use.
• Protection from Generic Producers
• Unlimited in time
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Part VI
The Scope of Rights
ITT passim
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The Scope of Rights
• Rights conferred not addressed in a uniform
manner, vary from form to form
• Cf. Articles 11, 14, 16, 22, 26, 28, 36 TRIPs
• Cf. Articles 6bis, 8, 9, 11, 11bis, 11term 12,
Art. 13 Berne
• Right to prevent, authorise .... third parties
not having the consent (defensive rights)
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Rights Conferred
• Example Copyright:
– fixation of unfixed performance, reproduction
of performance, rebroadcasting by wireless
means, communication to the public (Art. 14),
right to prevent renting (“Rental Rights”), Art.
13.
• Example Patents
– making, using, offering for sale, selling, or
importing (Art. 28, and FN 6)
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Exhaustion in TRIPs
• Art. 6 TRIPs Agreement
– For the purpose of dispute settlement under this
Agreement, subject to the provisions of Articles
3 and 4 nothing in this agreement shall be used
to address the issue of exhaustion of intellectual
property rights.
• Discuss the scope of this provision
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Exhaustion in Patents
• How does Article 6 relate to the right to
control imports in Articles 28(1)(a) TRIPs
in patents?
1. A patent shall confer on its owner the following exclusive rights:
(a) where the subject matter of a patent is a product, to prevent third
parties not having the owner’s consent from the acts of: making,
using, offering for sale, selling, or importing* for these purposes that
product;
(b) where the subject matter of a patent is a process, to prevent third
parties not having the owner’s consent from the act of using the
process, and from the acts of: using, offering for sale, selling, or
importing for these purposes at least the product obtained directly by
that process.
*This right, like all other rights conferred under this Agreement in respect
of the use, sale, importation or other distribution of goods, is subject to
the provisions of Article 6.
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Exhaustion in Trademarks
• How does Article 6 relate to Art. 16 TRIPs
on trade trademarks ?
• The owner of a registered trademark shall have the exclusive
right to prevent all third parties not having the owner’s consent
from using in the course of trade identical or similar signs for
goods or services which are identical or similar to those in
respect of which the trademark is registered where such use
would result in a likelihood of confusion. In case of the use of
an identical sign for identical goods or services, a likelihood of
confusion shall be presumed. The rights described above shall
not prejudice any existing prior rights, nor shall they affect the
possibility of Members making rights available on the basis of
use.
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Contractual Licensing
• IPRs as private rights are at the disposition
of rightholders (alienable, except moral
rights)
– granting, selling, renting = licensing,
franchising (trademarks)
• Licensing agreements are civil, private law
contracts between rightholder and licensee
– Price, conditions, duration, benefit sharing etc
• Licensing Agreements subject to Anti-trust
laws (US Guidelines, EC: block
exemptions, individual exemptions)
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Exceptions: Principles (Art. 8
TRIPs)
• Right to adopt measures necessary to protection
public health and nutrition, and to promote the
public interest in sectors of vital importance to
socio-economic and technological development
• Provided that such measures are consistent with
the provisions of TRIPs
• Measures can be taken against abuse of rights,
unreasonably restrain trade or adversely affect
transfer of technology
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Fair Use Exceptions
• Legislators may adopt exceptions from
protection for public policy purposes
• Articles 13, 17, 30 TRIPs, Art. 2bis 10,
10bis Bern, Art. 15 Rome:
– Legal and statutory licenses in particular for
private use and education
– Scope of exceptions is subject to WTO
disciplines: case law (Canada-Patent, USCopyright Act) (189; 459)
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What is fair Use?
•
•
•
•
•
Research exemption (Bolar exemption)
Regulatory Approval
Stockpiling?
Photocopying for educational purposes?
Music played in small restaurants and
shops?
• Downloading of music internet, personal
copies?
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Compulsory Licensing
• IPR laws provides for licensing against the
will of the rightholder for public policy
purposes
• CL law shapes the conditions for voluntary
licensing by reinforcing bargaining powers
of governments
• CL is subject to a number of conditions
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Article 31 TRIPs
• Most comprehensive provision on CL
• No definition of public policy goal,
governments are free to pursue policies e.g.
under Articles 7 and 8 of the Agreement
• Main conditions: negotiations with
rightholder, compensation, judicial review
• Art. 31 (f) predominantly for domestic
consumption; waived for essential drugs
• Art. 31 (k) required for purposes of
competition law
• Decision on Implementing Art. 6 Doha
Declaration on Health, Art. 31bis TRIPs
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Relationship of Trips to
Competition Law
• Exclusive rights entail exclusion of
competition
• IPRs are necessary but not sufficient
conditions of competition
• IPRs prevail except in the case of abuse of
rights; recourse to CL main tool
• Article 40 TRIPs including consultation
procedures (OECD)
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The Enforcement of IPRs
ITT 717-803
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Domestic Enforcement of IPRs
• Value of IPRs closely related to judicial
system
• Enforcement of IPRs was entirely left to
domestic civil, administrative and penal law
prior to the TRIPs Agreement
• TRIPs Agreement provides for minimal
standards in judicial and administrative
enforcement
• Combining U.S. and European traditions
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Basic Obligations and Problems
• Members obliged to give effect to the provisions in accordance with
domestic legal system (Art. 2)
• Members obliged to permit effective action against infringements of
IPRs (Art. 41:1)
• Members are not obliged to introduce a special system of legal
enforcement of the purposes of IPRs (Art. 41:5)
• Lack of resources and of tradition of strong legal enforcement of IPRs
in DCs
• Enhanced bilateral obligations in FTA
• Efforts of industrialized countries to strengthen enforcement (AntiCounterfeiting Trade Agreement) outside of multilateral trading
system
• Welfare effects of counterfeiting and combating it unclear
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Procedural Rules
• Fair and Equitable Procedures (Art. 42): due
process obligations
• Obligation to produce evidence (Art. 43)
• Obligation to inform right holder of identity of
infringer (Art. 47)
• Injunctions and Provisional Measures (Art. 44 and
50)
• Rules apply to civil and administrative procedures
(Art. 49)
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Sanctions and Damages
• Disposal or destruction of counterfeit and
pirated products, taking into account
proportionality (Art. 46, Art. 59)
• Damages to right holder (Art. 45)
• Indemnification of defendant in cases of
wrongful accusations (Art. 48)
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Border Measures
• Right to apply for measures to be taken by
customs authorities (Art. 51, 52)
• Right of right holder to inspect goods (Art. 57)
• Obligation to provide security or equivalent
assurances (Art. 53)
• Suspension of measure after ten working days,
subject to initiation of law suit on merits (Art. 55)
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Ex officio Measures
• Members may require authorities to act ex officio,
subject to conditions (Art. 58):
– Prima facie evidence required
– Right to seek information from right holder
– Prompt notification of importer of suspension of
customs clearance
– Exemptions of public liability only in cases of action
taken in good faith
– Personal travel items may be exempted from such
protection (Art. 60)
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Criminal Sanctions
• TRIPs only WTO agreement requiring
Members to impose minimal criminal
sanctions (Art. 61) at least for:
– Willful trademark counterfeiting and copy right
piracy on commercial scale
– Imprisonment and/or monetary fines
– Seizure, forfeiture and destruction of
counterfeit goods and implements
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China –Measures affecting the Protection and
Enforcement of Intellectual Property Rights
WT/DS/362/R (26.1.2009)
•
Concluded that "the United States has not
established that the criminal thresholds
[under Chinese law] are inconsistent with
… the first sentence of Article 61 of the
TRIPS Agreement.“
•
Source: WorldTradeLawNet
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China –Measures affecting the Protection and
Enforcement of Intellectual Property Rights
WT/DS/362/R (26.1.2009)
•
Concluded that, notwithstanding Article 17 of
the Berne Convention (1971), Article 4(1) of
China's Copyright Law is inconsistent with Article
5(1) of the Berne Convention (1971) (as
incorporated by TRIPS Agreement Article 9.1),
because it provides that "[w]orks the publication
and/or dissemination of which are prohibited by
law shall not be protected by [the Copyright]
Law"; also concluded that Article 4(1) of the
Copyright Law is inconsistent with TRIPS
Agreement Article 41.1.
•
Source: WorldTradeLawNet
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China –Measures affecting the Protection and
Enforcement of Intellectual Property Rights
WT/DS/362/R (26.1.2009)
•
Concluded that the United States has not
established that China's Customs measures are
inconsistent with TRIPS Agreement Article 59,
insofar as this provision incorporates the
principles set out in the first sentence of TRIPS
Agreement Article 46; however, concluded that
the Customs measures are inconsistent with
Article 59, insofar as this provision incorporates
the principle set out in the fourth sentence of
Article 46.
•
Source: WorldTradeLawNet
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2010 Draft Anti-Couterfeiting Trade
Agreement
• Effort led by Industrialized Countries to
strengthen enforcement of IPRs
• No Participation of Developing Countries
• TRIPs plus elements
• Emphasis on new penal sanctions
• Draft Agreement released November 15,
2010 adopted
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ARTICLE 2.14: CRIMINAL OFFENSES
1.35 Each Party shall provide for criminal procedures and penalties
to be applied at least in cases of willful trademark counterfeiting or
copyright or related rights piracy on a commercial scale.36 Willful
copyright or related rights piracy on a commercial scale includes:
[(a) significant willful copyright or related rights infringements
that have no direct or indirect motivation of financial gain; and
(b) willful copyright or related rights infringements for purposes of
commercial advantage or financial gain.37]
[2. Each Party shall provide for criminal procedures and penalties
to be applied in cases of [willful], [unauthorized] [importation] and
[or] [domestic] [trafficking] [conducted] [use in the course of
trade] [on a commercial scale] of labels [or packaging],
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(a) to which a mark has been applied [without consent of the right
holder] which is identical to or cannot be distinguished [in its
essential aspects] from a trademark registered in [its territory] [the
Party in respect of certain goods or services], and
(b) which are intended to be used [by the importer or user or, by a
third party with the knowledge of the importer or user, for willful
trademark counterfeiting] [on [either] the goods or [in relation to]
services [for which is registered] [which are identical to goods or
services for which the trademark is registered.]
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WIPO Advisory Committee on
Enforcement
• WIPO/ACE/5/6 (August 26, 2009):
• Counterfeiting estimated to amount to 2% of
World Trade (200 Bio USD) (OECD 2007)
• Data unclear: “educated guess” (Carsten Fink)
• 79% of all counterfeits in EU originating in China
(2006)
• Welfare effects of counterfeiting and combating it
is unclear, in particular for DCs
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An Issue of Competition
• Industrialized countries “fundamentally
view IPRs infringements as a direct
competitive threat as firms in labor
abundant countries copy the latest
technologies and undermine what is
perceived to be their remaining competitive
edge”
• Carsten Fink, WIPO/ACE/5/6/ para 8.
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An Issue of Level of Protection
• Actual patent and copyright regimes are often the outcome
of history, rules of thumb, and the influence of vested
interests. Economic optimization hardly plays a ruole – not
least because the social benefits of inventive and creative
activities are unknown ex ante. If the degree of protection
as inscribed in laws is too strong, some levels of IPRs
violations will increase welfare. If the degree of protection
is too weak, any IPRs violation will invariably lower
welfare”
• Carsten Fink, WIPO/ACE/5/6/ para. 31
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Welfare Effects of Enforcement
• Welfare effects of counterfeiting and
combating depend upon sector and context
• Carsten Fink offers the following synposis
(WIPO/ACE/5/6) table 1:
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Discussion of Possible Policy
Recommendations
• General Effort depends on level of social and economic
development and priorities set and level of institutional
development (court system)
• Public combating counterfeiting should focus on harmful
and misleading products
• Enhanced costs for counterfeit actions based upon treaty
obligations should essentially be borne by right-holders
(fee structure)
• Short term incarceration not effective, criminal sanctions
should focus on organized crime of commercial scale
• Investment in lawful jobs – moving away from black
economy structures
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THE END
Thank you for your attention!
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