PROTECTION OF INTELLECTUAL PROPERTY RIGHTS
(THE TRIPS AGREEMENT)
The Agreement on Trade-Related Aspects of Intellectual Property Rights (the TRIPS Agreement) requires WTO Member countries to protect adequately each of the main categories of intellectual property, to provide effective procedures and remedies so that right holders can enforce their rights and makes the observance of these commitments subject to the integrated dispute settlement mechanism of the WTO. It also calls for the nationals of WTO Members to be extended equal protection of their intellectual property vis-à-vis a country's own nationals or other foreign nationals (national and MFN treatment).
The report of the Council for TRIPS to the Singapore Ministerial, in addition to providing a description of the work undertaken over the last two years, focuses on three points in its section concerning issues for the attention of Ministers: implementation; technical cooperation; and the built-in agenda under the TRIPS Agreement.
The TRIPS Agreement came into force on 1 January 1995, together with the rest of the WTO Agreement, but it gives all Members a transition period to effect the necessary changes in legislation and practice. The transition period of one year accorded to developed countries has expired. They have taken on full TRIPS obligations since the beginning of 1996. Developing countries may postpone application of most provisions until the beginning of the year 2000 and least-developed countries until 2006. Countries converting to a market economy may also benefit from a transition period until 2000 subject to certain conditions.
A key function of the Council for TRIPS is to monitor the operation of the Agreement and, in particular, compliance with its obligations. The Council has undertaken this task in two main ways.
First, it has established procedures for the systematic notification of national implementing legislation and for its review by the Council. So far, these arrangements concern developed country Members who no longer enjoy a transition period. In 1996, detailed reviews in the area of copyright and related rights and in the area of trademarks, geographical indications and industrial designs were held; in 1997, reviews in the area of patents, integrated circuits and trade secrets and in the area of enforcement are planned. The second monitoring mechanism is that Members may raise specific issues concerning the implementation by other Members at meetings of the Council. A number of such questions have arisen, for example relating to the "mailbox" and exclusive marketing right provisions of Article 70.8 and 70.9 and the provisions of Article 70.2 concerning the application of the new rules to existing patents, sound recordings, etc.
In the report of the TRIPS Council to Ministers, the importance of full implementation of the TRIPS Agreement within the applicable transition periods is emphasized, as is the importance of each Member taking the steps which it considers appropriate so that the provisions of the Agreement will be applied.
In the TRIPS Agreement, developed country Members have accepted an obligation (Article 67) to provide, on request and on mutually-agreed terms, technical and financial cooperation to developing countries, in order to facilitate their implementation of the Agreement. The TRIPS Council has given particular attention to the monitoring of compliance with this obligation. It has assembled information on the technical cooperation programmes of developed countries and also of intergovernmental organizations, notably the World Intellectual Property Organization (WIPO), to ensure the availability of information on the possibilities available.
In its report to the Ministers, the TRIPS Council reaffirms the importance of the necessary provision of financial and technical cooperation by developed country Members in favour of developing country and least-developed country Members, in accordance with Article 67 of the TRIPS Agreement, in order to facilitate implementation of the Agreement.
The TRIPS built-in agenda contains six elements:
- negotiations aimed at increasing the protection of individual geographical indications under Article 23 (Article 24.1);
- the review of the application of the provisions on geographical indications (Article 24.2);
- negotiations concerning the establishment of a multilateral system for the notification and registration of geographical indications for wines (Article 23.4);
- review in 1999 of the provisions on the protection of plant and animal inventions (Article 27.3b);
- examination, within the first five years, of the scope and modalities of "non-violation" complaints pursuant to the TRIPS Agreement under the dispute settlement system (Article 64.3);
- review of the implementation of the TRIPS Agreement after 1 January 2000 (Article 71.1).
The TRIPS Council, in its report, has reaffirmed the commitment of Members to this built-in agenda, including any timeframes specified in the relevant provisions. The report also provides for analytical work and information exchange to be carried out, as and when appropriate, so as to allow Members a better prior understanding of the issues involved without prejudice to the timing or scope of the reviews or negotiations envisaged.
In connection with various aspects of the built-in agenda that concern geographical indications, the TRIPS Council has reached some more specific decisions. These concerned the arrangements for carrying out the review of the application of the provisions on geographical indications under Article 24.2; this provides for the consideration of proposals from delegations including on the issue of scope. The Council has agreed to provide a timeframe for the initiation of preliminary work on issues relevant to the negotiations concerning the establishment of the multilateral system of notification and registration of geographical indications for wines; this will be initiated in 1997. In this connection, it has also agreed that issues relevant to a notification and registration system for spirits will be part of this preliminary work.
One of the areas of intellectual property covered by the TRIPS Agreement is geographical indications. This concerns indications which identify goods as coming from a certain area and where a particular characteristic of the good, such as its quality or reputation, is essentially attributable to its geographical origin (Article 22.1). Typical examples would be Champagne and Port. Unlike most other forms of intellectual property where protection is granted only to a single person or company, all producers of the product in question in the designated geographical area may benefit from the protection. The protection of geographical indications is particularly relevant for agricultural and agriculturally-derived products. Given this and that it can serve the interests of small producers, there is widespread interest in this form of protection, in both developed and developing countries.
The basic rule in the TRIPS Agreement is that Members must provide protection against the use of a geographical indication in a manner which misleads the public or which constitutes an act of unfair competition (Article 22.2).
A higher standard of protection is required in respect of geographical indications for wines and spirits. They must be protected, in principle, against use on other wines or spirits whether or not such use satisfies the tests of misleading the public or unfair competition (Article 23.1). In addition, a Member is required to provide protection against their registration as a trademark (Article 23.2).
However, there are exceptions which recognize that, for a number of reasons, there are pre-existing situations under which geographical indications have been used in a manner contrary to the new basic obligations referred to above. These relate in particular to situations where an indication has become the generic word in the common language for referring to a type of product (Article 24.6), where there are pre-existing trademark rights acquired in good faith (Article 24.5) and other situations of previous use in a continuous manner (Article 24.4). While allowing Members to provide for exceptions in such situations, the Agreement balances this by requiring that Members agree to enter into negotiations aimed at increasing the protection of individual geographical indications and not to invoke the exceptions to refuse to conduct such negotiations or conclude bilateral or multilateral agreements (Article 24.1). It also sets up a special mechanism for the review of the applications of the provisions on geographical indications (Article 24.2).