Topics handled by WTO committees and agreements
Issues covered by the WTO’s committees and agreements

REPERTORY OF APPELLATE BODY REPORTS

TRIPS Agreement


ON THIS PAGE:

Article 1.2 — Definition of “intellectual property”
Article 2.1 — Intellectual property law conventions. See also Paris Convention (1967) (P.2)
Article 15.1 — Trademarks — “protectable subject-matter”
Article 15.2 — Trademarks — Denial of protection on other grounds
Article 16.1 — Trademarks — Exclusive rights conferred on the owner
Article 16.1 — Trademarks — Determination of ownership
Article 33 — Patents — “term of protection”
Article 33 — Relationship with Article 62.2
Article 33 — Relationship with Article 70.2
Article 42 — Civil and administrative procedures and remedies
Article 70 — Relationship between paragraphs 1 and 2
Article 70.1 — Acts which occurred before the date of TRIPS application
Article 70.2 — “protection of existing subject-matter”
Article 70.8(a) — Filing of “mailbox” applications
Article 70.9 — Exclusive marketing rights


T.9.1 Article 1.2 — Definition of “intellectual property”     back to top

T.9.1.1 US — Section 211 Appropriations Act, para. 335
(WT/DS176/AB/R)

 

The Panel interpreted the phrase “ ‘intellectual property’ refers to all categories of intellectual property that are the subject of Sections 1 through 7 of Part II” (emphasis added) as if that phrase read “intellectual property means those categories of intellectual property appearing in the titles of Sections 1 through 7 of Part II”. To our mind, the Panel’s interpretation ignores the plain words of Article 1.2, for it fails to take into account that the phrase “the subject of Sections 1 through 7 of Part II” deals not only with the categories of intellectual property indicated in each section title, but with other subjects as well. …

 

T.9.1.2 US — Section 211 Appropriations Act, para. 341
(WT/DS176/AB/R)

 

… we reverse the Panel’s finding in paragraph 8.41 of the Panel Report that trade names are not covered under the TRIPS Agreement and find that WTO Members do have an obligation under the TRIPS Agreement to provide protection to trade names.

 
T.9.2 Article 2.1 — Intellectual property law conventions.
See also Paris Convention (1967) (P.2)     back to top

T.9.2.1 US — Section 211 Appropriations Act, para. 331
(WT/DS176/AB/R)

 

… the Panel interpreted the words “in respect of” in Article 2.1 as limiting the incorporation of the provisions of the Paris Convention (1967), including Article 8, to Parts II, III and IV of the TRIPS Agreement. …

 

T.9.2.2 US — Section 211 Appropriations Act, paras. 336-338
(WT/DS176/AB/R)

 

… Article 2.1 explicitly incorporates Article 8 of the Paris Convention (1967) into the TRIPS Agreement.

 

The Panel was of the view that the words “in respect of” in Article 2.1 have the effect of “conditioning” Members’ obligations under the Articles of the Paris Convention (1967) incorporated into the TRIPS Agreement, with the result that trade names are not covered. We disagree.

 

Article 8 of the Paris Convention (1967) covers only the protection of trade names; Article 8 has no other subject. If the intention of the negotiators had been to exclude trade names from protection, there would have been no purpose whatsoever in including Article 8 in the list of Paris Convention (1967) provisions that were specifically incorporated into the TRIPS Agreement. To adopt the Panel’s approach would be to deprive Article 8 of the Paris Convention (1967), as incorporated into the TRIPS Agreement by virtue of Article 2.1 of that Agreement, of any and all meaning and effect. …

 

T.9.2.3 US — Section 211 Appropriations Act, para. 341
(WT/DS176/AB/R)

 

… we reverse the Panel’s finding in paragraph 8.41 of the Panel Report that trade names are not covered under the TRIPS Agreement and find that WTO Members do have an obligation under the TRIPS Agreement to provide protection to trade names.

 

Article 3.1 — National treatment. See National Treatment, Article 3.1 of the TRIPS Agreement (N.1.14)

 

Article 4 — MFN treatment. See MFN Treatment, Article 4 of the TRIPS Agreement (M.2.3)

 
T.9.3 Article 15.1 — Trademarks — “protectable subject-matter”     back to top

T.9.3.1 US — Section 211 Appropriations Act, paras. 154-156
(WT/DS176/AB/R)

 

… To us, the title of Article 15.1 — “Protectable Subject-Matter” — indicates that Article 15.1 embodies a definition of what can constitute a trademark. WTO Members are obliged under Article 15.1 to ensure that those signs or combinations of signs that meet the distinctiveness criteria set forth in Article 15.1 — and are, thus, capable of constituting a trademark — are eligible for registration as trademarks within their domestic legislation.

 

… Identifying certain signs that are capable of registration and imposing on WTO Members an obligation to make those signs eligible for registration in their domestic legislation is not the same as imposing on those Members an obligation to register automatically each and every sign or combination of signs that are capable of and eligible for registration under Article 15.1. … In this way, the title of Article 15 expresses the notion that the subject-matter covered by the provision is subject-matter that qualifies for, but is not necessarily entitled to, protection.

 

It follows that the wording of Article 15.1 allows WTO Members to set forth in their domestic legislation conditions for the registration of trademarks that do not address the definition of either “protectable subject-matter” or of what constitutes a trademark.

 
T.9.4 Article 15.2 — Trademarks — Denial of protection on other grounds     back to top

T.9.4.1 US — Section 211 Appropriations Act, paras. 171, 174, 177
(WT/DS176/AB/R)

 

The specific reference to Article 15.1 in Article 15.2 makes it clear that the “other grounds” for denial of registration to which Article 15.2 refers are different from those mentioned in Article 15.1. Given this, the key phrase relating to the issue before us is the limitation found in the final phrase of Article 15.2, which requires that those grounds “do not derogate from the provisions of the Paris Convention (1967)”.

 

 

… the question before us with respect to Article 15.2 is the extent to which, if at all, Members are permitted to deny trademark registration on grounds other than those expressly provided for in the TRIPS Agreement and the Paris Convention (1967).

 

 

Therefore, a condition need not be expressly mentioned in the Paris Convention (1967) in order not to “derogate” from it. Denial of registration on “other grounds” would derogate from the Paris Convention (1967) only if the denial were on grounds that are inconsistent with the provisions of that Convention.

 
T.9.5 Article 16.1 — Trademarks — Exclusive rights conferred on the owner     back to top

T.9.5.1 US — Section 211 Appropriations Act, paras. 186-188
(WT/DS176/AB/R)

 

… Article 16 confers on the owner of a registered trademark an internationally agreed minimum level of “exclusive rights” that all WTO Members must guarantee in their domestic legislation. These exclusive rights protect the owner against infringement of the registered trademark by unauthorized third parties.

 

We underscore that Article 16.1 confers these exclusive rights on the “owner” of a registered trademark. As used in this treaty provision, the ordinary meaning of “owner” can be defined as the proprietor or the person who holds the title or dominion of the property constituted by the trademark. We agree with the Panel that this ordinary meaning does not clarify how the ownership of a trademark is to be determined. Also, we agree with the Panel that Article 16.1 does not, in express terms, define how ownership of a registered trademark is to be determined. Article 16.1 confers exclusive rights on the “owner”, but Article 16.1 does not tell us who the “owner” is.

 

As the United States reminds us, and as the European Communities concedes, the last sentence of Article 16.1 acknowledges that WTO Members may make the rights available “on the basis of use” of the trademark. We read this to permit WTO Members to make the “exclusive rights” contemplated by Article 16.1 available within their respective jurisdictions on the basis of registration or use. The Panel concluded that Article 16.1 contemplates that different forms of entitlement may exist under the laws of different Members, and we agree. However, the TRIPS Agreement does not establish or prescribe a regime of ownership of trademarks.

 
T.9.6 Article 16.1 — Trademarks — Determination of ownership     back to top

T.9.6.1 US — Section 211 Appropriations Act, para. 195
(WT/DS176/AB/R)

 

… we conclude that neither Article 16.1 of the TRIPS Agreement, nor any other provision of either the TRIPS Agreement and the Paris Convention (1967), determines who owns or who does not own a trademark.

 

T.9.6.2 US — Section 211 Appropriations Act, para. 199
(WT/DS176/AB/R)

 

We recall that the European Communities contends that the Panel created an artificial distinction between the owner of a registered trademark and the trademark itself. We disagree with the apparent equation by the European Communities of trademark registration with trademark ownership. Here, again, the European Communities appears to us to overlook the necessary legal distinction between a trademark system in which ownership is based on registration and a trademark system in which ownership is based on use. As we have noted more than once, United States law confers exclusive trademark rights, not on the basis of registration, but on the basis of use. There is nothing in Article 16.1 that compels the United States to base the protection of exclusive rights on registration. Indeed, as we have also observed more than once, the last sentence of Article 16.1 confirms that WTO Members may make such rights available on the basis of use. The United States has done so. Therefore, it necessarily follows that, under United States law, registration is not conclusive of ownership of a trademark. Granted, under United States law, the registration of a trademark does confer a prima facie presumption of the registrant’s ownership of the registered trademark and of the registrant’s exclusive right to use that trademark in commerce. But, while we agree with the Panel that the presumptive owner of the registered trademark must be entitled, under United States law, to the exclusive rights flowing from Article 16.1 unless and until the presumption arising from registration is successfully challenged through court or administrative proceedings, we do not agree with the European Communities’ evident equation of registration with ownership.

 
T.9.7 Article 33 — Patents — “term of protection”     back to top

T.9.7.1 Canada — Patent Term, para. 90
(WT/DS170/AB/R)

 

We agree with the Panel that, in Article 33 of the TRIPS Agreement, the word “available” means “available, as a matter of right”, that is to say, available as a matter of legal right and certainty.

 

T.9.7.2 Canada — Patent Term, para. 91
(WT/DS170/AB/R)

 

… The fact that the patent term required under Article 33 can be a by-product of possible delays in the patent-granting process does not imply that this term is available, as a matter of legal right and certainty, to each and every Old Act patent applicant in Canada.

 

T.9.7.3 Canada — Patent Term, para. 92
(WT/DS170/AB/R)

 

To demonstrate that the patent term in Article 33 is “available”, it is not sufficient to point, as Canada does, to a combination of procedures that, when used in a particular sequence or in a particular way, may add up to twenty years. The opportunity to obtain a twenty-year patent term must not be “available” only to those who are somehow able to meander successfully through a maze of administrative procedures. The opportunity to obtain a twenty-year term must be a readily discernible and specific right, and it must be clearly seen as such by the patent applicant when a patent application is filed. The grant of the patent must be sufficient in itself to obtain the minimum term mandated by Article 33. The use of the word “available” in Article 33 does not undermine but, rather, underscores this obligation.

 

T.9.7.4 Canada — Patent Term, para. 95
(WT/DS170/AB/R)

 

The text of Article 33 gives no support to the notion of an “effective” term of protection as distinguished from a “nominal” term of protection. On the contrary, the obligation in Article 33 is straightforward and mandatory: to provide, as a specific right, a term of protection that does not end before the expiry of a period of twenty years counted from the filing date.

 
T.9.8 Article 33 — Relationship with Article 62.2     back to top

T.9.8.1 Canada — Patent Term, para. 97
(WT/DS170/AB/R)

 

… Article 62.2 deals with procedures relating to the acquisition of intellectual property rights. Article 62.2 does not deal with the duration of those rights once they are acquired. … This purely procedural Article cannot be used to modify the clear and substantive standard set out in Article 33 so as to conjecture a new standard of “effective” protection. Each Member of the WTO may well have its own subjective judgement about what constitutes a “reasonable period of time” not only for granting patents in general, but also for granting patents in specific sectors or fields of complexity. If Canada’s arguments were accepted, each and every Member of the WTO would be free to adopt a term of “effective” protection for patents that, in its judgement, meets the criteria of “reasonable period of time” and “unwarranted curtailment of the period of protection”, and to claim that its term of protection is substantively “equivalent” to the term of protection envisaged by Article 33. …

 
T.9.9 Article 33 — Relationship with Article 70.2     back to top

T.9.9.1 Canada — Patent Term, para. 77
(WT/DS170/AB/R)

 

… Article 70.2 applies the obligations of the TRIPS Agreement to “all subject matter existing. … and which is protected” on the date of application of the TRIPS Agreement for a Member. A Member is required, as from that date, to implement all obligations under the TRIPS Agreement in respect of such existing subject-matter. This includes the obligation in Article 33. We see no basis in the text for isolating or insulating the obligation in Article 33 relating to the duration of a patent term from the other obligations relating to patents that are also found in Section 5 of the TRIPS Agreement. …

 
T.9.10 Article 42 — Civil and administrative procedures and remedies     back to top

T.9.10.1 US — Section 211 Appropriations Act, para. 205
(WT/DS176/AB/R)

 

Article 42 forms part of Part III on “Enforcement of Intellectual Property Rights”. Part III has broad coverage. It applies to all intellectual property rights covered by the TRIPS Agreement. According to Article 1.2 of the TRIPS Agreement, the term “intellectual property” refers to “all categories of intellectual property that are the subject of Sections 1 through 7 of Part II” of that Agreement.

 

T.9.10.2 US — Section 211 Appropriations Act, para. 206
(WT/DS176/AB/R)

 

Section 1 of Part III lays out “General Obligations” of Members. According to Article 41.1 of Section 1, Members are required to ensure that enforcement procedures as specified in Part III are available under their domestic law “so as to permit effective action against any act of infringement of intellectual property rights covered by [the TRIPS] Agreement”. These enforcement procedures must include expeditious remedies to prevent infringements and remedies which constitute a deterrent to further infringements. At the same time, these procedures must be applied in such a manner as to avoid the creation of barriers to legitimate trade and to provide safeguards against their abuse. These procedures provide for an internationally agreed minimum standard which Members are bound to implement in their domestic legislation.

 

T.9.10.3 US — Section 211 Appropriations Act, para. 207
(WT/DS176/AB/R)

 

Section 2 of Part III is entitled “Civil and Administrative Procedures and Remedies”. Article 42 deals with enforcement action in judicial proceedings, and contains detailed requirements which ensure that “civil judicial procedures” are “fair and equitable”. Like Section 1 of Part III, Section 2 introduces an international minimum standard which Members are bound to implement in their domestic legislation.

 

T.9.10.4 US — Section 211 Appropriations Act, para. 215
(WT/DS176/AB/R)

 

The first sentence of Article 42 requires Members to make certain civil judicial procedures “available” to right holders. Making something available means making it “obtainable”, putting it “within one’s reach” and “at one’s disposal” in a way that has sufficient force or efficacy. We agree with the Panel that the ordinary meaning of the term “make available” suggests that “right holders” are entitled under Article 42 to have access to civil judicial procedures that are effective in bringing about the enforcement of their rights covered by the Agreement.

 

T.9.10.5 US — Section 211 Appropriations Act, para. 216
(WT/DS176/AB/R)

 

Article 42, first sentence, does not define what the term “civil judicial procedures” in that sentence encompasses. The TRIPS Agreement thus reserves, subject to the procedural minimum standards set out in that Agreement, a degree of discretion to Members on this, taking into account “differences in national legal systems”. …

 

T.9.10.6 US — Section 211 Appropriations Act, para. 217
(WT/DS176/AB/R)

 

Pursuant to the first sentence of Article 42, civil judicial procedures must be made available to “right holders” of intellectual property rights covered by the TRIPS Agreement so as to enable them to protect those rights against infringement. … We agree with the Panel that the term “right holders” as used in Article 42 is not limited to persons who have been established as owners of trademarks. Where the TRIPS Agreement confers rights exclusively on “owners” of a right, it does so in express terms, such as in Article 16.1, which refers to the “owner of a registered trademark”. By contrast, the term “right holders” within the meaning of Article 42 also includes persons who claim to have legal standing to assert rights. …

 

T.9.10.7 US — Section 211 Appropriations Act, paras. 218-221
(WT/DS176/AB/R)

 

… we agree with the Panel that the “right holders” to whom Members must make the procedural rights of Article 42 available include trademark registrants who are presumptive owners under United States law. In our view, these procedural rights extend as well to all other “right holders”.

 

WTO Members must also guarantee to all “parties” the right to “substantiate their claims”, as required by the fourth sentence of Article 42. The use of the words “their claims” suggests that, under Article 42, the choice of which claims or how many issues to raise in civil judicial procedures is left to each party. The use of the word “substantiate” implies that litigants have the right to do more than simply initiate claims; Members must duly entitle all litigants to “give substance” to, or “give good grounds” for, their claims in order to prove the truth of a charge, and to demonstrate or verify it by evidence.

 

Litigants are also entitled under the fourth sentence of Article 42 to “present all relevant evidence” in such procedures. These words indicate that parties have the right to file “all relevant evidence” in support of their claims with the courts.

 

From all this, we understand that the rights which Article 42 obliges Members to make available to right holders are procedural in nature. These procedural rights guarantee an international minimum standard for nationals of other Members within the meaning of Article 1.3 of the TRIPS Agreement.

 

T.9.10.8 US — Section 211 Appropriations Act, para. 226
(WT/DS176/AB/R)

 

In our view, a conclusion by a court on the basis of Section 211, after applying the Federal Rules of Civil Procedure and the Federal Rules of Evidence, that an enforcement proceeding has failed to establish ownership — a requirement of substantive law — with the result that it is impossible for the court to rule in favour of that claimant’s or that defendant’s claim to a trademark right, does not constitute a violation of Article 42. There is nothing in the procedural obligations of Article 42 that prevents a Member, in such a situation, from legislating whether or not its courts must examine each and every requirement of substantive law at issue before making a ruling.

 
T.9.11 Article 70 — Relationship between paragraphs 1 and 2     back to top

T.9.11.1 Canada — Patent Term, para. 69
(WT/DS170/AB/R)

 

Like the Panel, we see Articles 70.1 and 70.2 as dealing with two distinct and separate matters. The former deals with past “acts”, while the latter deals with “subject-matter” existing on the applicable date of the TRIPS Agreement. Article 70.1 of the TRIPS Agreement operates only to exclude obligations in respect of “acts which occurred” before the date of application of the TRIPS Agreement, but does not exclude rights and obligations in respect of continuing situations. On the contrary, “subject-matter existing … which is protected” is clearly a continuing situation, whether viewed as protected inventions, or as the patent rights attached to them. “Subject-matter existing … which is protected” is not within the scope of Article 70.1, and, therefore, the “[e]xcept as otherwise provided for” clause in Article 70.2 can have no application to it. …

 

T.9.11.2 Canada — Patent Term, para. 70
(WT/DS170/AB/R)

 

We wish to point out that our interpretation of Article 70 does not lead to a “retroactive” application of the TRIPS Agreement. Article 70.1 alone addresses “retroactive” circumstances, and it excludes them generally from the scope of the Agreement. The application of Article 33 to inventions protected under Old Act patents is justified under Article 70.2, not Article 70.1. A treaty applies to existing rights, even when those rights result from “acts which occurred” before the treaty entered into force.

 
T.9.12 Article 70.1 — Acts which occurred before the date of TRIPS application     back to top

T.9.12.1 Canada — Patent Term, paras. 55-56
(WT/DS170/AB/R)

 

Article 70.1 provides that, where such “acts” “occurred” before the date of application of the TRIPS Agreement for a Member, that is to say, where such “acts” were done, carried out or completed before that date, no obligation of the TRIPS Agreement is to be imposed on a Member in respect of those “acts”. Those “acts” themselves cannot be called in question after the date of application of the TRIPS Agreement for a Member. In this regard, we note that, in this dispute, the United States has repeatedly emphasized that it is not challenging or complaining against any “act” of any Canadian public authority or private party that took place before 1 January 1996, the date of application of the TRIPS Agreement for Canada.

 

However, in the realm of intellectual property rights, it is of fundamental importance to distinguish between “acts” and the “rights” created by those “acts”. …

 

T.9.12.2 Canada — Patent Term, para. 57
(WT/DS170/AB/R)

 

With respect to Article 70.1, the crucial question for consideration before us is, therefore: if patents created by “acts” of public authorities under the Old Act continue to be in force on the date of application of the TRIPS Agreement for Canada (that is, on 1 January 1996), can Article 70.1 operate to exclude those patents from the scope of the TRIPS Agreement, on the ground that they were created by “acts which occurred” before that date?

 

T.9.12.3 Canada — Patent Term, para. 58
(WT/DS170/AB/R)

 

… An “act” is something that is “done”, and the use of the phrase “acts which occurred” suggests that what was done is now complete or ended. This excludes situations, including existing rights and obligations, that have not ended. …

 

T.9.12.4 Canada — Patent Term, para. 59
(WT/DS170/AB/R)

 

A contrary interpretation would seriously erode the scope of the other provisions of Article 70, especially the explicit provisions of Article 70.2. Almost any existing situation or right can be said to have arisen from one or more past “acts”. For example, virtually all contractual and property rights could be said to arise from “acts which occurred” in the past. If the phrase “acts which occurred” were interpreted to cover all continuing situations involving patents which were granted before the date of application of the TRIPS Agreement for a Member […] then Article 70.1 would preclude the application of virtually the whole of the TRIPS Agreement to rights conferred by the patents arising from such “acts”. This is not consistent with the object and purpose of the TRIPS Agreement, as reflected in the preamble of the Agreement.

 

T.9.12.5 Canada — Patent Term, para. 60
(WT/DS170/AB/R)

 

We conclude, therefore, that Article 70.1 of the TRIPS Agreement cannot be interpreted to exclude existing rights, such as patent rights, even if such rights arose through acts which occurred before the date of application of the TRIPS Agreement for a Member. …

 
T.9.13 Article 70.2 — “protection of existing subject-matter”     back to top

T.9.13.1 Canada — Patent Term, para. 65
(WT/DS170/AB/R)

 

… We can deduce, therefore, that the “subject-matter”, for purposes of Article 70.2, is that which is “protected”, or “meets the criteria for protection”, under the terms of the TRIPS Agreement. As, in the present case, patents are the means of protection, then whatever patents protect must be the “subject-matter” to which Article 70.2 refers.

 

T.9.13.2 Canada — Patent Term, para. 66
(WT/DS170/AB/R)

 

… These Articles [28, 31 and 34] confirm that inventions are the relevant “subject matter” in the case of patents, and that the “subject-matter” in Article 70.2 means, in the case of patents, patentable or patented inventions. Article 70.2 thus gives rise to obligations in respect of all such inventions existing on the date of application of the TRIPS Agreement for a Member. …

 

T.9.13.3 Canada — Patent Term, para. 77
(WT/DS170/AB/R)

 

… Article 70.2 applies the obligations of the TRIPS Agreement to “all subject matter existing. … and which is protected” on the date of application of the TRIPS Agreement for a Member. A Member is required, as from that date, to implement all obligations under the TRIPS Agreement in respect of such existing subject matter. …

 
T.9.14 Article 70.8(a) — Filing of “mailbox” applications     back to top

T.9.14.1 India — Patents (US), para. 58
(WT/DS50/AB/R)

 

… we do not agree with the Panel that Article 70.8(a) requires a Member to establish a means “so as to eliminate any reasonable doubts regarding whether mailbox applications and eventual patents based on them could be rejected or invalidated because, at the filing or priority date, the matter for which protection was sought was unpatentable in the country in question”. India is entitled, by the “transitional arrangements” in paragraphs 1, 2 and 4 of Article 65, to delay application of Article 27 for patents for pharmaceutical and agricultural chemical products until 1 January 2005. In our view, India is obliged, by Article 70.8(a), to provide a legal mechanism for the filing of mailbox applications that provides a sound legal basis to preserve both the novelty of the inventions and the priority of the applications as of the relevant filing and priority dates. No more.

 

T.9.14.2 India — Patents (US), paras. 70-71
(WT/DS50/AB/R)

 

… we are not persuaded that India’s “administrative instructions” would survive a legal challenge under the Patents Act. And, consequently, we are not persuaded that India’s “administrative instructions” provide a sound legal basis to preserve novelty of inventions and priority of applications as of the relevant filing and priority dates.

 

For these reasons, we agree with the Panel’s conclusion that India’s “administrative instructions” for receiving mailbox applications are inconsistent with Article 70.8(a) of the TRIPS Agreement.

 
T.9.15 Article 70.9 — Exclusive marketing rights     back to top

T.9.15.1 India — Patents (US), para. 84
(WT/DS50/AB/R)

 

… we agree with the Panel that India should have had a mechanism in place to provide for the grant of exclusive marketing rights effective as from the date of entry into force of the WTO Agreement, and, therefore, we agree with the Panel that India is in violation of Article 70.9 of the TRIPS Agreement.

 


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