Ch.7 Geographical Indications

This chapter describes how the adoption of the Trade-related Aspects of Intellectual Property Rights (TRIPS) Agreement represented an important step for the international recognition of geographical indications. Geographical indications have three basic functions. They provide information about the name of a product; the geographical origin of the product; and a given quality, reputation, or characteristics attributable to a geographical area. Although such indications were covered under some prior international conventions—such as the Paris Convention, the Madrid Agreement, and the Lisbon Agreement—the scope and membership of such conventions offered a protection considerably more limited than the one granted by the TRIPS Agreement. However, significant controversies still dominate the discussion of this issue at the World Trade Organization (WTO). In particular, disagreement exists about the modes of implementing the registration of geographical indications under Article 23.4 of the Agreement. Moreover, a number of developed and developing countries have proposed to expand to other products the special protection only available today for wines and spirits.

Ch.3 International Exhaustion of Rights

This chapter focuses on the issue of exhaustion of rights. Article 6 disclaims any intent in the Trade-related Aspects of Intellectual Property Rights (TRIPS) Agreement to limit the Members’ freedom to regulate the issue of exhaustion of rights with regard to all types of intellectual property rights (IPRs). It declares the admissibility of the international exhaustion of rights, that is, the possibility of legally importing into a country a product protected by intellectual property rights, after the product has been legitimately put on the market in a foreign market. These imports—made by a party without the authorization of the title-holder but equally legal—are generally known as ‘parallel imports’. Moreover, Article 6 of the TRIPS Agreement has left Member countries freedom to incorporate the principle of exhaustion of rights into their domestic law with a national, regional, or international reach. The issue as such cannot be the subject matter of a dispute settlement under the Agreement.

Ch.14 Acquisition and Maintenance of Intellectual Property Rights, Dispute Prevention and Settlement, Transitional and Institutional Arrangements, and Final Provisions

This concluding chapter looks at the acquisition and maintenance of intellectual property rights (IPRs), dispute prevention and settlement, transitional and institutional arrangements, and final provisions in the Trade-related Aspects of Intellectual Property Rights (TRIPS) Agreement. Different aspects relating to the procedures for the acquisition and maintenance of intellectual property rights are regulated in Article 62 of the TRIPS Agreement. Its main purpose is to ensure that the application of national legislation on this matter does not unjustifiably impair the access to and exercise of such rights. Meanwhile, Articles 63 and 64 contain rules aimed at preventing and settling disputes concerning the implementation of the TRIPS Agreement. Prevention of disputes is basically sought under the TRIPS Agreement through the rules on ‘transparency’ contained in Article 63. All WTO Members could avail themselves of one year after the date of entry into force of the WTO Agreement to comply with the obligations relating to intellectual property protection. The reason for this is quite obvious: most or all Members, including developed country Members, needed to introduce changes into their legislation in order to comply with the standards set out by the TRIPS Agreement, especially with those contained in Part II. A Council to specifically deal with TRIPS matters is established by Article 68.

Ch.11 Undisclosed Information

This chapter studies Section 7, Part II, of the Trade-related Aspects of Intellectual Property Rights (TRIPS) Agreement, which contains specific provisions on ‘undisclosed information’. This is the first international regime on undisclosed information and, in this sense, it is one of the most significant innovations brought about by the TRIPS Agreement. Article 39.1 stipulates that ‘in the course of ensuring effective protection against unfair competition as provided in Article 10 bis of the Paris Convention’, parties shall protect undisclosed information and the ‘data submitted to governments or governmental agencies’ as a condition for approving the marketing of pharmaceutical and agrochemical products. Although Article 39.1 refers to ‘undisclosed information’ and to ‘undisclosed test’ or other ‘data submitted’ to governments as two separate issues, it seems clear that in the latter case, the data also need to be ‘undisclosed’ in order to be covered under the terms of the Agreement. According to Article 1.2 of the TRIPS Agreement, undisclosed information is a category of ‘intellectual property’, like patents, trademarks, and other modalities dealt with by the Agreement.

Ch.8 Industrial Designs

This chapter focuses on industrial designs, which are generally defined as features of ornamentation applied to an article. They consist of the shape, configuration, pattern, or ornament—or a combination thereof—of a product that gives it eye-appeal. Industrial designs normally exclude those designs determined solely by their utilitarian function on an article. The protection of industrial designs is addressed in the Trade-related Aspects of Intellectual Property Rights (TRIPS) Agreement by only two Articles. Article 25 defines the requirements for protection, and Article 26 the extent of exclusive rights and the admissible exceptions. This scant treatment reflects the fact that the protection of industrial designs had a low priority in the TRIPS negotiations for the US and other countries, except perhaps the European Communities (EC), which aimed at enhancing such protection, of particular value, for instance, for fashion industries.

Ch.9 Patents

This chapter explores the issue of patentability. Article 27.1 of the Trade-related Aspects of Intellectual Property Rights (TRIPS) Agreement stipulates that ‘patents shall be available for any inventions’. As with most patent laws in the world, the Agreement does not define what an invention is. The plain wording of Article 27.1 suggests that Members have been left room to define ‘invention’ within their legal systems, in good faith, subject only to the application of the method of interpretation set out by the Vienna Convention. However, the interpretation of the obligation to patent ‘any inventions’ raises many important policy issues, such as the extent to which Members are bound to confer patents over discoveries, particularly over substances found in nature such as genes. Although Members can adopt a more expansive concept at the national level, they are not obliged to grant patents to what is not ordinarily considered an ‘invention’. Thus, they are not obliged to grant patents over genes.

Ch.10 Layout-Designs (topographies) of Integrated Circuits

This chapter demonstrates how World Trade Organization (WTO) Members are bound to accord the treatment provided for in the Trade-related Aspects of Intellectual Property Rights (TRIPS) Agreement to the natural or legal persons that meet the criteria of eligibility for protection provided for under the 1989 Washington Treaty on Intellectual Property in Respect of Integrated Circuits, subject to the exceptions to the national treatment principle provided for therein (Article 3.1 of the TRIPS Agreement). Section 6, Part II, of the TRIPS Agreement essentially obliges Members to comply with the Washington Treaty. This obligation applies irrespective of the fact that the Treaty never entered into force. The protection of integrated circuits is the newest chapter in the intellectual property field. The first country to introduce a sui generis regime with that purpose was the US in 1984, followed by Japan in May 1985. With Section 6 of the TRIPS Agreement, the US and Japan obtained what they were unable to reach with the negotiation of the Washington Treaty. The Agreement gave them an opportunity to correct what they deemed weaknesses of the Washington Treaty, notably, the provisions relating to compulsory licenses, importation of products containing infringing semiconductors, and innocent infringement.

Ch.6 Trademarks

This chapter addresses Section 2, Part II, of the Trade-related Aspects of Intellectual Property Rights (TRIPS) Agreement, which relates to trademarks. In addition to the substantive rules contained in said section, the Agreement incorporates provisions to ensure the enforcement of rights (Part III) and, particularly, procedures to be followed by customs authorities with regard to counterfeit trademark goods (Part III, Section 4). This section significantly strengthens the rights of trademark owners as compared to those available under the Paris Convention. The main innovation brought about by the TRIPS text in the trademark area probably relates to the expanded protection conferred on well-known trademarks. Another area of potential significant impact is the limitation and conditions imposed with regard to the use requirement to maintain registration, and the flexibility accorded to assign trademarks unrelated to the respective business. The enforcement rules in Part III are likely to be, however, the most significant components of the Agreement in terms of impact on trademark law.

Ch.12 Control of Restrictive Practices in Contractual Licences

This chapter discusses Article 40 of the Trade-related Aspects of Intellectual Property Rights (TRIPS) Agreement, which is the outcome of a proposal originally made by developing countries, which were concerned about the impact of strengthened intellectual property rights (IPRs) on the conditions of voluntary licenses. Article 40.1 recognizes that some licensing practices pertaining to intellectual property rights which restrain competition ‘may have adverse effects on trade and impede the transfer and dissemination of technology’. Meanwhile, unlike most provisions of the TRIPS Agreement, Article 40.2 does not contain specific obligations. It expressly allows countries to adopt measures to control or prevent certain practices or conditions relating to licensing agreements. Judgement of whether they should be controlled or prevented is based on three elements. Contractual practices or conditions should: be examined in each particular case; constitute an ‘abuse’ of intellectual property rights; and have an ‘adverse effect on competition in the relevant market’.

Ch.4 Objectives and Principles

This chapter looks at the objectives and principles of the Trade-related Aspects of Intellectual Property Rights (TRIPS) Agreement. The primary objective of the proponents of the Agreement was to secure the rights of intellectual property owners to exploit their protected assets in the jurisdiction of all parties to the General Agreement on Tariffs and Trade (GATT). They emphasized the role of the protection of intellectual property rights (IPRs) as incentives for innovation, and were keen to leave issues relating to the exploitation of the rights to the discretion of title-holders. In contrast, developing countries feared that a strengthened IPR protection would give too much power to title-holders and limit access to, and transfer of, technology to those countries. Article 7 of the Agreement, based on a proposal submitted by developing countries, represents a compromise between these two positions. It states that IPRs should contribute to the promotion of technological innovation and to the transfer and dissemination of technology.