The texts reproduced here do not have the legal standing of the original documents which are entrusted and kept at the WTO Secretariat in Geneva.
Also in this section:
- Article 1
- Article 2 and Incorporated Provisions of the Paris Convention (1967)
- Article 3
- Article 4
- Article 5
- Article 6
- Article 7
- Article 8
- Article 9 and Incorporated Provisions of the Berne Convention (1971)
- Article 10
- Article 11
- Article 12
- Article 13
- Article 14
- Article 15
- Article 16
- Article 17
- Article 18
- Article 19
- Article 20
- Article 21
- Article 22
- Article 23
- Article 24
- Article 25
- Article 26
- Article 27
- Article 28
- Article 29
- Article 30
- Article 31
- Article 32
- Article 33
- Article 34
- Article 35 and Incorporated Provisions of the IPIC Treaty
- Article 36
- Article 37
- Article 38
- Article 39
- Article 40
- Article 41
- Article 42
- Article 43
- Article 44
- Article 45
- Article 46
- Article 47
- Article 48
- Article 49
- Article 50
- Article 51
- Article 52
- Article 53
- Article 54
- Article 55
- Article 56
- Article 57
- Article 58
- Article 59
- Article 60
- Article 61
- Article 62
- Article 63
- Article 64
- Article 65
- Article 66
- Article 67
- Article 68
- Article 69
- Article 70
- Article 71
- Article 72
- Article 73
- Text of the Provisions of the Paris Convention (1967) Incorporated by Article 2.1 of the TRIPS Agreement
- Text of the Provisions of the Berne Convention (1971) Incorporated by Article 9.1 of the TRIPS Agreement
- Text of the Provisions of the IPIC Treaty Incorporated by Article 35 of the TRIPS Agreement
- Text of the Declaration on the Trips Agreement and Public Health
XXI. Article 20
Article 20: Other Requirements
The use of a trademark in the course of trade shall not be unjustifiably encumbered by special requirements, such as use with another trademark, use in a special form or use in a manner detrimental to its capability to distinguish the goods or services of one undertaking from those of other undertakings. This will not preclude a requirement prescribing the use of the trademark identifying the undertaking producing the goods or services along with, but without linking it to, the trademark distinguishing the specific goods or services in question of that undertaking.
147. The dispute in Indonesia — Autos occurred before the end of the transitional period for developing country Members to implement certain provisions of the TRIPS Agreement. However, the complaint raised Article 20 only in conjunction with two other articles to which the transitional period did not apply. With respect to the claim concerning national treatment under Article 3, the Panel did not consider the provisions of the relevant Indonesian law as “requirements” within the meaning of Article 20:
“In taking up the first of these questions, [i.e. is the use of a trademark to which the Indonesian law and practices at issue relates ‘specifically addressed’ by Article 20] the issue to be considered initially is whether the Indonesian law and practices in question constitute a special requirement that might encumber the use of the trademarks of nationals of other WTO Members in terms of Article 20 of the TRIPS Agreement. The United States has put forward two basic arguments on this question, which are similar to the arguments it has put forward also in regard to the maintenance of trademarks … The first argument is that a foreign company that enters into an arrangement with a Pioneer company would be encumbered in using the trademark that it used elsewhere for the model that was adopted by the National Car Programme. We do not accept that this argument establishes an inconsistency with the provisions of Article 20, for the reason … that, if a foreign company enters into an arrangement with a Pioneer company it does so voluntarily and in the knowledge of any consequent implications for its ability to use any pre-existing trademark. In these circumstances, we do not consider the provisions of the National Car Programme as they relate to trademarks can be construed as ‘requirements’, in the sense of Article 20.
The second United States argument is that non-Indonesian car companies are encumbered in using their trademarks in Indonesia by being put at a competitive disadvantage because the cars produced under the National Car Programme bearing the Indonesian trademark benefit from tariff, subsidy and other benefits flowing from that programme. In regard to this argument, we also feel that the points developed in our earlier discussion of the United States claims regarding the maintenance of trademarks are relevant in particular in paragraph 14.273 above. Moreover, the United States has not explained to our satisfaction how the ineligibility for benefits accruing under the National Car Programme could constitute ‘requirements’ imposed on foreign trademark holders, in the sense of Article 20 of the TRIPS Agreement.”(152)
148. The Panel made the same finding with respect to the claim concerning the commitment under Article 65.5:
“The arguments put forward by the United States in support of its claim are essentially the same as those that have been considered in paragraphs 14.277 and 14.278 above. For the reasons set out in those paragraphs above, we find that the United States has not demonstrated that measures have been taken that reduce the degree of consistency with the provisions of Article 20 and which would therefore be in violation of Indonesia’s obligations under Article 65.5 of the TRIPS Agreement.”(153)
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XXII. Article 21
Article 21: Licensing and Assignment
Members may determine conditions on the licensing and assignment of trademarks, it being understood that the compulsory licensing of trademarks shall not be permitted and that the owner of a registered trademark shall have the right to assign the trademark with or without the transfer of the business to which the trademark belongs.
No jurisprudence or decision of a competent WTO body.
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XXIII. Article 22
Article 22: Protection of Geographical Indications
1. 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.
(a) the use of any means in the designation or presentation of a good that indicates or suggests that the good in question originates in a geographical area other than the true place of origin in a manner which misleads the public as to the geographical origin of the good;
(b) any use which constitutes an act of unfair competition within the meaning of Article 10bis of the Paris Convention (1967).
3. A Member shall, ex officio if its legislation so permits or at the request of an interested party, refuse or invalidate the registration of a trademark which contains or consists of a geographical indication with respect to goods not originating in the territory indicated, if use of the indication in the trademark for such goods in that Member is of such a nature as to mislead the public as to the true place of origin.
4. The protection under paragraphs 1, 2 and 3 shall be applicable against a geographical indication which, although literally true as to the territory, region or locality in which the goods originate, falsely represents to the public that the goods originate in another territory.
150. In EC — Trademarks and Geographical Indications (Australia) the Panel interpreted the obligation to provide certain legal means “[i]n respect of” GIs, in context, as an obligation to provide for the protection of GIs and rejected a claim concerning situations that might concern GIs:
“Article 22.2 is found in Section 3 of Part II of the TRIPS Agreement. Part II sets out minimum standards concerning the availability, scope and use of intellectual property rights, which is one of the objects and purposes of the Agreement, as highlighted in paragraph (b) of the second recital in its preamble. The first seven sections of Part II contain standards relating to categories of intellectual property rights. Each Section provides for a different category of intellectual property, setting out, as a minimum, the subject matter which is eligible for protection, the scope of the rights conferred by the relevant category of intellectual property and permitted exceptions to those rights. Section 3 contains all these features for the category of GIs, as highlighted in its title, which reads “Protection of Geographical Indications”. Article 23.1 expressly provides for protection to prevent use of a GI for wines and spirits. Whilst the protection of GIs affects the protection of trademarks, as expressly recognized in Articles 22.3 and 23.2, Section 3 does not provide for trademark protection, except to the extent that trademark systems are used to protect GIs. Therefore, read in context, the obligation in Article 22.2 to provide certain legal means “in respect of” GIs, is an obligation to provide for the protection of GIs.(154) Australia’s claim does not appear to concern the protection of GIs, but rather the protection of other subject matter against the protection of GIs. Therefore, it does not disclose a cause of action under Article 22.2.”(155)
151. In EC — Trademarks and Geographical Indications (US) the Panel accepted that a “designation of origin” and “geographical indication” defined in the EC Regulation in different terms fell within the definition in Article 22.1:
“The term “geographical indications” is defined in Article 22.1 of the TRIPS Agreement. It is not disputed that registered “designations of origin” and registered “geographical indications”, as defined in the Article 2(2) of the Regulation, are a subset of “geographical indications” as defined in Article 22.1 and therefore relevant to the European Communities’ implementation of Article 22.2.”(156)
152. In EC — Trademarks and Geographical Indications (Australia) the Panel rejected a claim under Article 22.2 with respect to product names that satisfy the conditions for protection in the Member where protection is sought but which have become the so-called “international trading standard” for a product:
“[I]t suffices to note that Article 22.2 applies to geographical indications that satisfy the definition in Article 22.1. Article 22.2 does not apply to generic terms, as confirmed by Article 24.6. Each Member applies the definition of GIs with respect to its own territory so that the question whether the indication is generic or otherwise not entitled to protection in another Member’s territory is not relevant, unless the other Member is the country of origin.”(157)
153. In EC — Trademarks and Geographical Indications (US) the Panel found that the EC Regulation at issue did not implement Article 22.2 but did not consider that this necessarily meant that the European Communities had failed to implement Article 22.2:
“Turning to the Regulation, we note that it makes protection available, in the sense that it provides legal means to protect GIs. However, those legal means have not been provided to interested parties with respect to GIs located in a third country, including a WTO Member, that does not satisfy the equivalence and reciprocity conditions, and the government of which does not examine and transmit an application. These interested parties include persons who are “nationals of other Members” within the meaning of Article 1.3 of the TRIPS Agreement. Further, to the extent that the legal means may be provided to interested parties with respect to such GIs, the Regulation alone does not provide them, because protection is contingent on satisfaction of conditions and execution of certain functions by governments of third countries. Therefore, the Panel concludes that the United States has made a prima facie case in support of its claim that the Regulation does not make available the legal means to interested parties in accordance with Article 22.2 of the TRIPS Agreement.
However, the obligation under Article 22.2 is placed on the European Communities, not on the Regulation. The TRIPS Agreement creates positive obligations in Parts II and III to accord protection according to certain minimum standards, in addition to the prohibitions against discrimination found in the basic principles under Part I. In accordance with Article 1.1, the European Communities is free to determine the appropriate method of implementing the provisions of the Agreement within its own legal system and practice. It is not obliged to ensure that this particular Regulation implements Article 22.2 where it has other measures that do so.”(158)
154. The Panel noted that there were alternative measures under which the European Communities potentially implemented its obligations under Article 22.2 and, in the circumstances, did not find that the European Communities had failed to implement those obligations:
“Nevertheless, the United States chose to challenge only the Regulation, as amended, “and its related implementing and enforcement measures”. It has not demonstrated that these alternative measures, which lie outside the Panel’s terms of reference, are inadequate to provide GI protection to for interested parties nationals of other Members as required under Article 22.2 of the TRIPS Agreement. Therefore, it has not presented sufficient evidence to raise a presumption that the European Communities (as opposed to the Regulation) does not implement its obligations under Article 22.2. Accordingly, the Panel concludes that, with respect to the equivalence and reciprocity conditions and the examination and transmission of applications under the Regulation, the United States has not made a prima facie case that the European Communities has failed to implement its obligation under Article 22.2 of the TRIPS Agreement.”(159)
155. In EC — Trademarks and Geographical Indications (US) the Panel explained that the obligation in Article 22.2 is to provide certain legal means to “interested parties” who are nationals of other Members in accordance with the criteria referred to in Article 1.3:
“Article 1.3 provides that “Members shall accord the treatment provided for in this Agreement to the nationals of other Members”. That includes the protection provided for in Article 22.2, which obliges Members to provide legal means for “interested parties”. The interested parties must qualify as “nationals of other Members” in accordance with the criteria referred to in Article 1.3. These persons can be private parties, which is reflected in the fourth recital of the preamble to the agreement, which reads “[r]ecognizing that intellectual property rights are private rights”.
Therefore, in order to determine whether the European Communities has implemented its obligation owed to other Members in Article 22.2, the Panel must examine whether it has provided the legal means required by that provision for interested parties who are nationals of other Members.”(160)
156. With respect to the meaning of the term “interested party” as used in Article 22, see also paragraph 32 above regarding Article 10(2) of the Paris Convention (1967) as incorporated in the TRIPS Agreement.
157. In EC — Trademarks and Geographical Indications the Panel rejected arguments in support of a claim under Article 22.2 that an EC Regulation failed to provide a right of objection to the registration of a GI:
“Article 22.2 does not provide for a right of objection to the registration of a GI. Although Article 15.5 provides for a right of objection to registration of a trademark, no provision in Part II of the TRIPS Agreement provides for objections to the registration of a GI.
Therefore, the Panel rejects the United States’ arguments in support of this claim insofar as they relate to objections to GI registration, including objections by trademark owners.
There are provisions on the acquisition and maintenance of intellectual property rights, including GIs, in Article 62. These specifically refer to related inter partes procedures such as opposition, revocation and cancellation, in paragraph 4, which is cross-referenced in paragraph 5, where a Member’s law provides for such procedures. The opportunity or right to object forms part of an opposition procedure. However, Article 62 lies outside the Panel’s terms of reference.”(161)
158. In EC — Trademarks and Geographical Indications the Panel found that Article 22.3 can resolve conflicts between GIs and later trademarks, but not prior trademarks:
“The Panel agrees that Articles 22.3 and 23.2 can resolve conflicts with later trademarks but they do not resolve conflicts with prior trademarks that meet the conditions set out in Article 24.5.”(162)
159. In EC — Trademarks and Geographical Indications the Panel recognized that the rights provided for in Article 22.2 and 16.1 could lead to a conflict between private parties but considered that the treaty provisions themselves did not conflict:
“Both the United States and the European Communities agree that the simultaneous exercise of two negative rights to prevent uses provided for in Articles 16.1 and 22.2 (and 23.1) can lead to a conflict between different private parties who wish to use an individual sign as a trademark and as a GI. The European Communities sees this potential for conflict as a matter which should be avoided in the interpretation of the TRIPS Agreement. The United States distinguishes this from a conflict between Members’ obligations under the Agreement, and argues that the need for a harmonious interpretation of the Agreement does not require the treaty interpreter to resolve potential conflicts between private parties.
The Panel notes that the parties do not dispute that Members may comply simultaneously with both obligations in the TRIPS Agreement. They do not allege that there are conflicting provisions in the treaty itself. The general rule of treaty interpretation requires us to interpret the treaty in accordance with the ordinary meaning to be given to its terms in their context in the light of its object and purpose. The Panel has had recourse to supplementary means of interpretation, in particular a draft text, in order to confirm the meaning resulting from the application of the general rule of treaty interpretation, which has not left the meaning ambiguous or obscure or led to a result which is manifestly absurd or unreasonable. We would not adopt an approach in treaty interpretation that produced a result that might, on one view, further the object and purpose of the Agreement, but which is not supported by the ordinary meaning to be given to its terms in their context.”(163)
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XXIV. Article 23
Article 23: Additional Protection for Geographical Indications for Wines and Spirits
1. Each Member shall provide the legal means for interested parties to prevent use of a geographical indication identifying wines for wines not originating in the place indicated by the geographical indication in question or identifying spirits for spirits not originating in the place indicated by the geographical indication in question, 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.(4)
(footnote original) 4 Notwithstanding the first sentence of Article 42, Members may, with respect to these obligations, instead provide for enforcement by administrative action.
2. The registration of a trademark for wines which contains or consists of a geographical indication identifying wines or for spirits which contains or consists of a geographical indication identifying spirits shall be refused or invalidated, ex officio if a Member’s legislation so permits or at the request of an interested party, with respect to such wines or spirits not having this origin.
3. In the case of homonymous geographical indications for wines, protection shall be accorded to each indication, subject to the provisions of paragraph 4 of Article 22. Each Member shall determine the practical conditions under which the homonymous indications in question will be differentiated from each other, taking into account the need to ensure equitable treatment of the producers concerned and that consumers are not misled.
4. In order to facilitate the protection of geographical indications for wines, negotiations shall be undertaken in the Council for TRIPS concerning the establishment of a multilateral system of notification and registration of geographical indications for wines eligible for protection in those Members participating in the system.
161. In the second sentence of paragraph 18 of the Doha Ministerial Declaration, adopted on 14 November 2001, Ministers “note[d] that issues related to the extension of the protection of geographical indications provided for in Article 23 to products other than wines and spirits will be addressed in the Council for TRIPS pursuant to paragraph 12 of this Declaration”.(164) On 1 August 2004, the General Council adopted a decision on “Doha Work Programme”. In its paragraph 1.d, the General Council inter alia “request[ed] the Director-General to continue with his consultative process on all outstanding implementation issues under paragraph 12(b) of the Doha Ministerial Declaration, including on issues related to the extension of the protection of geographical indications provided for in Article 23 of the TRIPS Agreement to products other than wines and spirits”.(165) In paragraph 39 of the Hong Kong Ministerial Declaration, Ministers inter alia “[took] note of the work undertaken by the Director-General in his consultative process on all outstanding implementation issues under paragraph 12(b) of the Doha Ministerial Declaration, including on issues related to the extension of the protection of geographical indications provided for in Article 23 of the TRIPS Agreement to products other than wines and spirits and those related to the relationship between the TRIPS Agreement and the Convention on Biological Diversity”, and “request[ed] the Director-General, without prejudice to the positions of Members, to intensify his consultative process on all outstanding implementation issues under paragraph 12(b)”.(166)
162. With respect to the meaning of the term “interested party” as used in Article 23, see paragraph 170 below regarding Article 10(2) of the Paris Convention (1967) as incorporated in the TRIPS Agreement.
164. In EC — Trademarks and Geographical Indications the Panel recognized that the rights provided for in Article 23.1 and 16.1 could lead to a conflict between private parties but considered that the treaty provisions themselves did not conflict (see para. 159 above).
165. In EC — Trademarks and Geographical Indications the Panel found that Article 23.2 can resolve conflicts between GIs and later trademarks, but not prior trademarks:
“The Panel agrees that Articles 22.3 and 23.2 can resolve conflicts with later trademarks but they do not resolve conflicts with prior trademarks that meet the conditions set out in Article 24.5.”(167)
166. In paragraph 34 of its Annual Report (1996), the Council for TRIPS agreed to “initiate in 1997 preliminary work on issues relevant to the negotiations specified in Article 23.4 of the TRIPS Agreement concerning the establishment of a multilateral system of notification and registration of geographical indications for wines. Issues relevant to a notification and registration system for spirits will be part of this preliminary work.”(168) This preliminary work was initiated at the Council’s meeting in February 1997.(169)
167. The first sentence of paragraph 18 of the Doha Ministerial Declaration, adopted on 14 November 2001 provides that “[w]ith a view to completing the work started in the Council for Trade-Related Aspects of Intellectual Property Rights (Council for TRIPS) on the implementation of Article 23.4, we agree to negotiate the establishment of a multilateral system of notification and registration of geographical indications for wines and spirits by the Fifth Session of the Ministerial Conference.”(170)
168. On 1 February 2002, the TNC established the Special Session of the Council for TRIPS to conduct the negotiations. On 1 August 2004, the General Council adopted a decision on “Doha Work Programme”. In its paragraph 1.f, the General Council reaffirmed Members’ commitment to progress in this area of negotiations in line with the Doha mandates.(171) In paragraph 29 of the Hong Kong Ministerial Declaration adopted on 18 December 2005, Ministers “agree[d] to intensify these negotiations in order to complete them within the overall time-frame for the conclusion of the negotiations that were foreseen in the Doha Ministerial Declaration”.(172)
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XXV. Article 24
Article 24: International Negotiations; Exceptions
1. Members agree to enter into negotiations aimed at increasing the protection of individual geographical indications under Article 23. The provisions of paragraphs 4 through 8 below shall not be used by a Member to refuse to conduct negotiations or to conclude bilateral or multilateral agreements. In the context of such negotiations, Members shall be willing to consider the continued applicability of these provisions to individual geographical indications whose use was the subject of such negotiations.
2. The Council for TRIPS shall keep under review the application of the provisions of this Section; the first such review shall take place within two years of the entry into force of the WTO Agreement. Any matter affecting the compliance with the obligations under these provisions may be drawn to the attention of the Council, which, at the request of a Member, shall consult with any Member or Members in respect of such matter in respect of which it has not been possible to find a satisfactory solution through bilateral or plurilateral consultations between the Members concerned. The Council shall take such action as may be agreed to facilitate the operation and further the objectives of this Section.
3. In implementing this Section, a Member shall not diminish the protection of geographical indications that existed in that Member immediately prior to the date of entry into force of the WTO Agreement.
4. Nothing in this Section shall require a Member to prevent continued and similar use of a particular geographical indication of another Member identifying wines or spirits in connection with goods or services by any of its nationals or domiciliaries who have used that geographical indication in a continuous manner with regard to the same or related goods or services in the territory of that Member either (a) for at least 10 years preceding 15 April 1994 or (b) in good faith preceding that date.
measures adopted to implement this Section shall not prejudice eligibility for or the validity of the registration of a trademark, or the right to use a trademark, on the basis that such a trademark is identical with, or similar to, a geographical indication.
6. Nothing in this Section shall require a Member to apply its provisions in respect of a geographical indication of any other Member with respect to goods or services for which the relevant indication is identical with the term customary in common language as the common name for such goods or services in the territory of that Member. Nothing in this Section shall require a Member to apply its provisions in respect of a geographical indication of any other Member with respect to products of the vine for which the relevant indication is identical with the customary name of a grape variety existing in the territory of that Member as of the date of entry into force of the WTO Agreement.
7. A Member may provide that any request made under this Section in connection with the use or registration of a trademark must be presented within five years after the adverse use of the protected indication has become generally known in that Member or after the date of registration of the trademark in that Member provided that the trademark has been published by that date, if such date is earlier than the date on which the adverse use became generally known in that Member, provided that the geographical indication is not used or registered in bad faith.
8. The provisions of this Section shall in no way prejudice the right of any person to use, in the course of trade, that person’s name or the name of that person’s predecessor in business, except where such name is used in such a manner as to mislead the public.
9. There shall be no obligation under this Agreement to protect geographical indications which are not or cease to be protected in their country of origin, or which have fallen into disuse in that country.
170. At its meeting of 12 May 1998, the Council for TRIPS, in its review under Article 24.2 of the application of the provisions of the section of the TRIPS Agreement on geographical indications, took note of a Checklist of Questions(173) and invited those Members already under an obligation to apply the provisions of the section on geographical indications to provide responses, it being understood that other Members could also furnish replies on a voluntary basis. Further, at its meeting of 16 July 1998, the Council for TRIPS took note of some additional questions and agreed that those questions be included in the Checklist.(174) At its meeting of 7–8 July 1999, the Council for TRIPS requested the Secretariat to prepare a paper summarizing the responses to the Checklist of Questions on the basis of an outline, on the understanding that it would be made explicit that the paper would be without prejudice to the rights and obligations of Members and that its purpose was merely to facilitate an understanding of the more detailed information that had been provided in national responses to the Checklist.(175)
171. In EC — Trademarks and Geographical Indications the Panel found that the scope of Article 24.3 was limited to the implementation of Section 3 of Part II on GIs, and did not apply to the implementation of Section 2 of Part II on trademarks:
“Article 24.3 appears in Section 3 of Part II of the TRIPS Agreement. The reference to “this Section” is therefore a reference to Section 3, which sets out standards for the protection of GIs… .
The scope of Article 24.3 is limited by the introductory phrase “[i]n implementing this Section”. It does not apply to measures adopted to implement provisions outside Section 3. Trademark owners’ rights, which Members must make available in the implementation of Article 16.1, are found in Section 2. Therefore, Article 24.3 is inapplicable.”(176)
172. In EC — Trademarks and Geographical Indications the Panel rejected an argument that the phrase “the protection of geographical indications that existed in that Member” referred to the legal framework or system of protection of GIs in a Member, interpreting it instead in terms of the protection of individual GIs:
“[T]he Panel interprets the phrase “the protection of geographical indications that existed in that Member immediately prior to the date of entry into force of the WTO Agreement” to mean the state of protection of GIs immediately prior to 1 January 1995, in terms of the individual GIs which were protected at that point in time. In the present dispute, the parties agree that no GIs were registered under the Regulation prior to 1 January 1995. Therefore, Article 24.3 is inapplicable.”(177)
“The “date of entry into force of the WTO Agreement” was 1 January 1995.”(178)
174. In EC — Trademarks and Geographical Indications the Panel interpreted Article 24.5 as an exception to GI protection, and rejected arguments that it impliedly limited trademark rights or impliedly preserved any trademark rights that it does not specifically mention:
“The objects of the principal verb in Article 24.5 are “the eligibility for or the validity of the registration of a trademark” and “the right to use a trademark”. The context indicates the relevance of these rights in Article 24.5. The choice of words “the eligibility for or the validity of the registration of a trademark” reflects the fact that these are the aspects of trademark protection which might otherwise be prejudiced by the obligations to “refuse or invalidate the registration of a trademark” and that “registration of a trademark … shall be refused or invalidated” in Articles 22.3 and 23.2. In the same way, the choice of the words “the right to use a trademark” reflects the fact that this is the aspect of trademark protection which would otherwise be prejudiced by the obligations to provide the legal means to prevent certain uses in Articles 22.2 and 23.1.
“The order of these two exceptions in Article 24.5 reverses the order of the types of protection in relation to uses and in relation to registration of a trademark in Article 22.2 and 22.3 and in Article 23.1 and 23.2. However, it can be observed that the exceptions followed the same order as the corresponding rights in paragraphs 1 and 2 of the GI exceptions provision in the Brussels Draft, which were the predecessors of Article 24.4 and 24.5 in the final version. Draft paragraph 1 referred to a GI that had been “used”, “including use as a trademark”, and draft paragraph 2 only referred to “action to refuse or invalidate registration of a trademark”: see document MTN.TNC/W/35/Rev.1 dated 3 December 1990 entitled “Draft Final Act Embodying the Results of the Uruguay Round of Multilateral Trade Negotiations — Revision”, the so-called “Brussels Draft”. The phrase “including use as a trademark” was later deleted from paragraph 1, and prior trademark issues, including the right to use a trademark, were dealt with in Article 24.5 in the final version, in that order.”(179)
Therefore, according to their ordinary meaning read in context, the terms “shall not prejudice”, “the eligibility for or the validity of the registration of a trademark” and “the right to use a trademark”, as used in paragraph 5 of Article 24, indicate the creation of exceptions to the obligations to provide two types of GI protection in Section 3. Both these types of protection could otherwise affect the rights identified in paragraph 5. Indeed, the refusal or invalidation of the registration of a trademark has no other function but to extinguish the eligibility for or the validity of the registration of a trademark. paragraph 5 ensures that each of these types of protection shall not affect those rights.
Therefore, the Panel concludes that, under Article 16.1 of the TRIPS Agreement, Members are required to make available to trademark owners a right against certain uses, including uses as a GI. The Regulation limits the availability of that right for the owners of trademarks which are subject to Article 14(2). Article 24.5 of the TRIPS Agreement is inapplicable and does not provide authority to limit that right.”(180)
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XXVI. Article 25
Article 25: Requirements for Protection
1. Members shall provide for 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.
2. Each Member shall ensure that requirements for securing protection for textile designs, in particular in regard to any cost, examination or publication, do not unreasonably impair the opportunity to seek and obtain such protection. Members shall be free to meet this obligation through industrial design law or through copyright law.
No jurisprudence or decision of a competent WTO body.
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XXVII. Article 26
Article 26: Protection
1. The owner of a protected industrial design shall have the right to prevent third parties not having the owner’s consent from making, selling or importing articles bearing or embodying a design which is a copy, or substantially a copy, of the protected design, when such acts are undertaken for commercial purposes.
2. Members may provide limited exceptions to the protection of industrial designs, provided that such exceptions do not unreasonably conflict with the normal exploitation of protected industrial designs and do not unreasonably prejudice the legitimate interests of the owner of the protected design, taking account of the legitimate interests of third parties.
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XXVIII. Article 27
Article 27: Patentable Subject Matter
1. Subject to the provisions of paragraphs 2 and 3, patents shall be available for any inventions, whether products or processes, in all fields of technology, provided that they are new, involve an inventive step and are capable of industrial application.(5) Subject to paragraph 4 of Article 65, paragraph 8 of Article 70 and paragraph 3 of this Article, patents shall be available and patent rights enjoyable without discrimination as to the place of invention, the field of technology and whether products are imported or locally produced.
(footnote original) 5 For the purposes of this Article, the terms “inventive step” and “capable of industrial application” may be deemed by a Member to be synonymous with the terms “non-obvious” and “useful” respectively.
2. Members may exclude from patentability inventions, the prevention within their territory of the commercial exploitation of which is necessary to protect ordre public or morality, including to protect human, animal or plant life or health or to avoid serious prejudice to the environment, provided that such exclusion is not made merely because the exploitation is prohibited by their law.
(b) plants and animals other than micro-organisms, and essentially biological processes for the production of plants or animals other than non-biological and microbiological processes. However, Members shall provide for the protection of plant varieties either by patents or by an effective sui generis system or by any combination thereof. The provisions of this subparagraph shall be reviewed four years after the date of entry into force of the WTO Agreement.
177. In Canada — Pharmaceutical Patents, in explaining its understanding of the term “without discrimination” in Article 27, the Panel advised against using the term “discrimination” whenever “more precise standards are available”, given the potentially “infinite complexity” of the term:
“The primary TRIPS provisions that deal with discrimination, such as the national treatment and most-favoured-nation provisions of Articles 3 and 4, do not use the term ‘discrimination’. They speak in more precise terms. The ordinary meaning of the word ‘discriminate’ is potentially broader than these more specific definitions. It certainly extends beyond the concept of differential treatment. It is a normative term, pejorative in connotation, referring to results of the unjustified imposition of differentially disadvantageous treatment. Discrimination may arise from explicitly different treatment, sometimes called ‘de jure discrimination’, but it may also arise from ostensibly identical treatment which, due to differences in circumstances, produces differentially disadvantageous effects, sometimes called ‘de facto discrimination’. The standards by which the justification for differential treatment is measured are a subject of infinite complexity. ‘Discrimination’ is a term to be avoided whenever more precise standards are available, and, when employed, it is a term to be interpreted with caution, and with care to add no more precision than the concept contains.
In considering how to address these conflicting claims of discrimination, the Panel recalled that various claims of discrimination, de jure and de facto, have been the subject of legal rulings under GATT or the WTO. These rulings have addressed the question whether measures were in conflict with various GATT or WTO provisions prohibiting variously defined forms of discrimination. As the Appellate Body has repeatedly made clear, each of these rulings has necessarily been based on the precise legal text in issue, so that it is not possible to treat them as applications of a general concept of discrimination. Given the very broad range of issues that might be involved in defining the word ‘discrimination’ in Article 27.1 of the TRIPS Agreement, the Panel decided that it would be better to defer attempting to define that term at the outset, but instead to determine which issues were raised by the record before the Panel, and to define the concept of discrimination to the extent necessary to resolve those issues.”(182)
178. The Panel also attributed two different meanings to the term “de facto discrimination” under Article 27.1 in the following terms:
“[D]e facto discrimination is a general term describing the legal conclusion that an ostensibly neutral measure transgresses a non-discrimination norm because its actual effect is to impose differentially disadvantageous consequences on certain parties, and because those differential effects are found to be wrong or unjustifiable. Two main issues figure in the application of that general concept in most legal systems. One is the question of de facto discriminatory effect — whether the actual effect of the measure is to impose differentially disadvantageous consequences on certain parties. The other, related to the justification for the disadvantageous effects, is the issue of purpose — not an inquiry into the subjective purposes of the officials responsible for the measure, but an inquiry into the objective characteristics of the measure from which one can infer the existence or non-existence of discriminatory objectives.”(183)
“In sum, the Panel found that the evidence in record before it did not raise a plausible claim of discrimination under Article 27.1 of the TRIPS Agreement. It was not proved that the legal scope of Section 55.2(1) was limited to pharmaceutical products, as would normally be required to raise a claim of de jure discrimination. Likewise, it was not proved that the adverse effects of Section 55.2(1) were limited to the pharmaceutical industry, or that the objective indications of purpose demonstrated a purpose to impose disadvantages on pharmaceutical patents in particular, as is often required to raise a claim of de facto discrimination. Having found that the record did not raise any of these basic elements of a discrimination claim, the Panel was able to find that Section 55.2(1) is not inconsistent with Canada’s obligations under Article 27.1 of the TRIPS Agreement. Because the record did not present issues requiring any more precise interpretation of the term ‘discrimination’ in Article 27.1, none was made.”(184)
181. At its meeting of 1–2 December 1998, the Council for TRIPS agreed to initiate the review due under Article 27.3(b) of the provisions of that subparagraph through an information-gathering exercise. In this connection, the Council invited Members that were already under an obligation to apply Article 27.3(b) to provide information on how the matters addressed in this provision were presently treated in their national law. Other Members were invited to provide such information on a best endeavours basis. While it was left to each Member to provide information as it saw fit, having regard to the specific provisions of Article 27.3(b), the Council requested the Secretariat to provide an illustrative list of questions relevant in this regard, in order to assist Members prepare their contributions. The Council also requested the Secretariat to establish contact with the FAO, the Secretariat of the Convention on Biological Diversity and UPOV, to request factual information on their activities of relevance. It was understood that this information-gathering was without prejudice to the nature of the review provided for in Article 27.3(b).(185) At its meeting of 2 to 5 April 2001, the Council agreed that the Secretariat re-issue the illustrative list of questions and invited Members to provide their responses to it, if they had not yet done so.(186) At its meeting of 5–7 March 2002, the Council requested the Secretariat to update the synoptic tables annexed to its note with the list, based on the further information submitted by Members.(187)
182. In paragraph 19 of the Doha Ministerial Declaration, adopted on 14 November 2001, Ministers “instruct[ed] the Council for TRIPS, in pursuing its work programme including under the review of Article 27.3(b), the review of the implementation of the TRIPS Agreement under Article 71.1 and the work foreseen pursuant to paragraph 12 of this Declaration, to examine, inter alia, the relationship between the TRIPS Agreement and the Convention on Biological Diversity, the protection of traditional knowledge and folklore, and other relevant new developments raised by Members pursuant to Article 71.1.”(188) In paragraph 44 of the Hong Kong Ministerial Declaration, Ministers “[took] note of the work undertaken by the Council for TRIPS pursuant to paragraph 19 of the Doha Ministerial Declaration and agree[d] that this work shall continue on the basis of paragraph 19 of the Doha Ministerial Declaration and the progress made in the Council for TRIPS to date”. They instructed the General Council to report on its work in this regard to their next Session.”.(189)
183. In paragraph 39 of the Hong Kong Ministerial Declaration, Ministers inter alia “[took] note of the work undertaken by the Director-General in his consultative process on all outstanding implementation issues under paragraph 12(b) of the Doha Ministerial Declaration, including on issues related to the extension of the protection of geographical indications provided for in Article 23 of the TRIPS Agreement to products other than wines and spirits and those related to the relationship between the TRIPS Agreement and the Convention on Biological Diversity”, and “request[ed] the Director-General, without prejudice to the positions of Members, to intensify his consultative process on all outstanding implementation issues under paragraph 12(b)”.(190)
184. In Canada — Pharmaceutical Patents, rejecting Canada’s argument that Article 27.1 did not apply to exceptions granted under Article 30, the Panel addressed the relationship between these provisions:
“The text of the TRIPS Agreement offers no support for such an interpretation. Article 27.1 prohibits discrimination as to enjoyment of ‘patent rights’ without qualifying that term. Article 30 exceptions are explicitly described as ‘exceptions to the exclusive rights conferred by a patent’ and contain no indication that any exemption from nondiscrimination rules is intended. A discriminatory exception that takes away enjoyment of a patent right is discrimination as much as is discrimination in the basic rights themselves. The acknowledged fact that the Article 31 exception for compulsory licences and government use is understood to be subject to the non-discrimination rule of Article 27.1, without the need for any textual provision so providing, further strengthens the case for treating the non-discrimination rules as applicable to Article 30. Articles 30 and 31 are linked together by the opening words of Article 31 which define the scope of Article 31 in terms of exceptions not covered by Article 30.(191) Finally, the Panel could not agree with Canada’s attempt to distinguish between Articles 30 and 31 on the basis of their mandatory/permissive character; both provisions permit exceptions to patent rights subject to certain mandatory conditions. Nor could the Panel understand how such a ‘mandatory/permissive’ distinction, even if present, would logically support making the kind of distinction Canada was arguing. In the Panel’s view, what was important was that in the rights available under national law, that is to say those resulting from the basic rights and any permissible exceptions to them, the forms of discrimination referred to in Article 27.1 should not be present.”(192)
185. Rejecting Canada’s related arguments, the Panel also provided guidance as to the policy considerations contained in Article 27:
“Nor was the Panel able to agree with the policy arguments in support of Canada’s interpretation of Article 27. To begin with, it is not true that being able to discriminate against particular patents will make it possible to meet Article 30’s requirement that the exception be ‘limited’. An Article 30 exception cannot be made ‘limited’ by limiting it to one field of technology, because the effects of each exception must be found to be ‘limited’ when measured against each affected patent. Beyond that, it is not true that Article 27 requires all Article 30 exceptions to be applied to all products. Article 27 prohibits only discrimination as to the place of invention, the field of technology, and whether products are imported or produced locally. Article 27 does not prohibit bona fide exceptions to deal with problems that may exist only in certain product areas. Moreover, to the extent the prohibition of discrimination does limit the ability to target certain products in dealing with certain of the important national policies referred to in Articles 7 and 8.1, that fact may well constitute a deliberate limitation rather than a frustration of purpose. It is quite plausible, as the EC argued, that the TRIPS Agreement would want to require governments to apply exceptions in a non-discriminatory manner, in order to ensure that governments do not succumb to domestic pressures to limit exceptions to areas where right holders tend to be foreign producers.”(193)
186. In India — Patents (US), the Appellate Body addressed the relationship between Article 27 and Article 70.8 and held that the latter provision applies in a situation where a Member does not make available patents pursuant to the former provision:
“The introductory clause to Article 70.8 provides that it applies ‘[w]here a Member does not make available as of the date of entry into force of the WTO Agreement patent protection for pharmaceutical and agricultural chemical products commensurate with its obligations under Article 27 …’ of the TRIPS Agreement. Article 27 requires that patents be made available ‘for any inventions, whether products or processes, in all fields of technology’, subject to certain exceptions. However, pursuant to paragraphs 1, 2 and 4 of Article 65, a developing country Member may delay providing product patent protection in areas of technology not protectable in its territory on the general date of application of the TRIPS Agreement for that Member until 1 January 2005. Article 70.8 relates specifically and exclusively to situations where a Member does not provide, as of 1 January 1995, patent protection for pharmaceutical and agricultural chemical products.”(194)
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XXIX. Article 28
Article 28: Rights Conferred
(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(6) for these purposes that product;
(footnote original) 6 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.
(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.
188. In Canada — Pharmaceutical Patents, the Panel was called on to examine a complaint that a Canadian measure was in violation of Article 28.1:
“There was no dispute as to the meaning of Article 28.1 exclusive rights as they pertain to Section 55.2(2) of Canada’s Patent Act. Canada acknowledged that the provisions of Section 55.2(2) permitting third parties to ‘make’, ‘construct’ or ‘use’ the patented product during the term of the patent, without the patent owner’s permission, would be a violation of Article 28.1 if not excused under Article 30 of the Agreement. The dispute on the claim of violation of Article 28.1 involved whether Section 55.2(2) of the Patent Act complies with the conditions of Article 30.”(195)
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XXX. Article 29
Article 29: Conditions on Patent Applicants
1. Members shall require that an applicant for a patent shall disclose the invention in a manner sufficiently clear and complete for the invention to be carried out by a person skilled in the art and may require the applicant to indicate the best mode for carrying out the invention known to the inventor at the filing date or, where priority is claimed, at the priority date of the application.
2. Members may require an applicant for a patent to provide information concerning the applicant’s corresponding foreign applications and grants.
No jurisprudence or decision of a competent WTO body.
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XXXI. Article 30
Article 30: Exceptions to Rights Conferred
Members may provide limited exceptions to the exclusive rights conferred by a patent, provided that such exceptions do not unreasonably conflict with a normal exploitation of the patent and do not unreasonably prejudice the legitimate interests of the patent owner, taking account of the legitimate interests of third parties.
189. In Canada — Pharmaceutical Patents, the Panel addressed the basic structure of Article 30, outlined the conditions for its application and then found that these conditions apply cumulatively:
“Article 30 establishes three criteria that must be met in order to qualify for an exception: (1) the exception must be ‘limited’; (2) the exception must not ‘unreasonably conflict with normal exploitation of the patent’; (3) the exception must not ‘unreasonably prejudice the legitimate interests of the patent owner, taking account of the legitimate interests of third parties’. The three conditions are cumulative, each being a separate and independent requirement that must be satisfied. Failure to comply with any one of the three conditions results in the Article 30 exception being disallowed.
The three conditions must, of course, be interpreted in relation to each other. Each of the three must be presumed to mean something different from the other two, or else there would be redundancy. Normally, the order of listing can be read to suggest that an exception that complies with the first condition can nevertheless violate the second or third, and that one which complies with the first and second can still violate the third. The syntax of Article 30 supports the conclusion that an exception may be ‘limited’ and yet fail to satisfy one or both of the other two conditions. The ordering further suggests that an exception that does not ‘unreasonably conflict with normal exploitation’ could nonetheless ‘unreasonably prejudice the legitimate interests of the patent owner’.”(196)
“In the Panel’s view, Article 30’s very existence amounts to a recognition that the definition of patent rights contained in Article 28 would need certain adjustments. On the other hand, the three limiting conditions attached to Article 30 testify strongly that the negotiators of the Agreement did not intend Article 30 to bring about what would be equivalent to a renegotiation of the basic balance of the Agreement. Obviously, the exact scope of Article 30’s authority will depend on the specific meaning given to its limiting conditions. The words of those conditions must be examined with particular care on this point. Both the goals and the limitations stated in Articles 7 and 8.1 must obviously be borne in mind when doing so as well as those of other provisions of the TRIPS Agreement which indicate its object and purposes.”(197)
192. In Canada — Pharmaceutical Patents, the Panel addressed the question whether the “stockpiling” exception was exempted under Article 30, in the light of the requirement under Article 30 that exceptions to Article 28 be “limited”. The Panel first agreed with the proposition that the “limited” character of an exception is to be assessed with respect to their impact on the rights of the patent owner:
“The Panel agreed with the EC interpretation that ‘limited’ is to be measured by the extent to which the exclusive rights of the patent owner have been curtailed. The full text of Article 30 refers to ‘limited exceptions to the exclusive rights conferred by a patent’. In the absence of other indications, the Panel concluded that it would be justified in reading the text literally, focusing on the extent to which legal rights have been curtailed, rather than the size or extent of the economic impact. In support of this conclusion, the Panel noted that the following two conditions of Article 30 ask more particularly about the economic impact of the exception, and provide two sets of standards by which such impact may be judged. The term ‘limited exceptions’ is the only one of the three conditions in Article 30 under which the extent of the curtailment of rights as such is dealt with.”(198)
193. The Panel, however, rejected suggested approaches to measure the curtailment of the patent owner’s rights by counting the number of rights impaired or by considering whether the exclusive right to sell during the patent term is affected:
“The Panel does not agree, however, with the EC’s position that the curtailment of legal rights can be measured by simply counting the number of legal rights impaired by an exception. A very small act could well violate all five rights provided by Article 28.1 and yet leave each of the patent owner’s rights intact for all useful purposes. To determine whether a particular exception constitutes a limited exception, the extent to which the patent owner’s rights have been curtailed must be measured.
The Panel could not accept Canada’s argument that the curtailment of the patent owner’s legal rights is ‘limited’ just so long as the exception preserves the exclusive right to sell to the ultimate consumer during the patent term. Implicit in the Canadian argument is a notion that the right to exclude sales to consumers during the patent term is the essential right conveyed by a patent, and that the rights to exclude ‘making’ and ‘using’ the patented product during the term of the patent are in some way secondary. The Panel does not find any support for creating such a hierarchy of patent rights within the TRIPS Agreement. If the right to exclude sales were all that really mattered, there would be no reason to add other rights to exclude ‘making’ and ‘using’. The fact that such rights were included in the TRIPS Agreement, as they are in most national patent laws, is strong evidence that they are considered a meaningful and independent part of the patent owner’s rights.”(199)
194. Subsequently, the Panel stated that while economic impact was addressed by two of the conditions under Article 30, the “limited exception” condition was not related to economic concerns:
“After analysing all three conditions stated in Article 30 of the TRIPS Agreement, the Panel was satisfied that Article 30 does in fact address the issue of economic impact, but only in the other two conditions contained in that Article. As will be seen in the analysis of these other conditions below, the other two conditions deal with the issue of economic impact, according to criteria that relate specifically to that issue. Viewing all three conditions as a whole, it is apparent that the first condition (‘limited exception’) is neither designed nor intended to address the issue of economic impact directly.”(200)
195. In Canada — Pharmaceutical Patents, the Panel addressed the meaning of the term “normal exploitation” contained in the second condition under Article 30, i.e. the phrase “do not unreasonably conflict with a normal exploitation of the patent.”
“The Panel considered that ‘exploitation’ refers to the commercial activity by which patent owners employ their exclusive patent rights to extract economic value from their patent. The term ‘normal’ defines the kind of commercial activity Article 30 seeks to protect. The ordinary meaning of the word ‘normal’ is found in the dictionary definition: ‘regular, usual, typical, ordinary, conventional’. As so defined, the term can be understood to refer either to an empirical conclusion about what is common within a relevant community, or to a normative standard of entitlement. The Panel concluded that the word ‘normal’ was being used in Article 30 in a sense that combined the two meanings.
The normal practice of exploitation by patent owners, as with owners of any other intellectual property right, is to exclude all forms of competition that could detract significantly from the economic returns anticipated from a patent’s grant of market exclusivity. The specific forms of patent exploitation are not static, of course, for to be effective exploitation must adapt to changing forms of competition due to technological development and the evolution of marketing practices. Protection of all normal exploitation practices is a key element of the policy reflected in all patent laws. Patent laws establish a carefully defined period of market exclusivity as an inducement to innovation, and the policy of those laws cannot be achieved unless patent owners are permitted to take effective advantage of that inducement once it has been defined.”(201)
196. After holding that the term “normal” referred to both what is common and to a “normative standard of entitlement”, the Panel deliberated regarding what could be considered “normal” in the specific circumstances of the case at issue:
“Canada has raised the argument that market exclusivity occurring after the 20-year patent term expires should not be regarded as ‘normal’. The Panel was unable to accept that as a categorical proposition. Some of the basic rights granted to all patent owners, and routinely exercised by all patent owners, will typically produce a certain period of market exclusivity after the expiration of a patent. For example, the separate right to prevent ‘making’ the patented product during the term of the patent often prevents competitors from building an inventory needed to enter the market immediately upon expiration of a patent. There is nothing abnormal about that more or less brief period of market exclusivity after the patent has expired.
The Panel considered that Canada was on firmer ground, however, in arguing that the additional period of de facto market exclusivity created by using patent rights to preclude submissions for regulatory authorization should not be considered ‘normal’. The additional period of market exclusivity in this situation is not a natural or normal consequence of enforcing patent rights. It is an unintended consequence of the conjunction of the patent laws with product regulatory laws, where the combination of patent rights with the time demands of the regulatory process gives a greater than normal period of market exclusivity to the enforcement of certain patent rights. It is likewise a form of exploitation that most patent owners do not in fact employ. For the vast majority of patented products, there is no marketing regulation of the kind covered by Section 55.2(1), and thus there is no possibility to extend patent exclusivity by delaying the marketing approval process for competitors.”(202)
197. In this context, the Panel found that “normal exploitation” could not simply refer back to the general concern to protect Article 28 exclusionary rights as such:
“The Panel could not agree with the EC’s assertion that the mere existence of the patent owner’s rights to exclude was a sufficient reason, by itself, for treating all gains derived from such rights as flowing from ‘normal exploitation’. In the Panel’s view, the EC’s argument contained no evidence or analysis addressed to the various meanings of ‘normal’ — neither a demonstration that most patent owners extract the value of their patents in the manner barred by Section 55.2(1), nor an argument that the prohibited manner of exploitation was “normal” in the sense of being essential to the achievement of the goals of patent policy. To the contrary, the EC’s focus on the exclusionary rights themselves merely restated the concern to protect Article 28 exclusionary rights as such. This is a concern already dealt with by the first condition of Article 30 (‘limited exception’) and the Panel found the ultimate EC arguments here impossible to distinguish from the arguments it had made under that first condition.”(203)
198. In Canada — Pharmaceutical Patents, with respect to the term “legitimate interests” in the third condition “do not unreasonably prejudice the legitimate interests of the patent owner, taking account of the legitimate interests of third parties” under Article 30, the Panel first acknowledged the difficulty for Canada in proving a negative proposition:
“The third condition of Article 30 is the requirement that the proposed exception must not ‘unreasonably prejudice the legitimate interests of the patent owner, taking into account the legitimate interests of third parties’. Although Canada, as the party asserting the exception provided for in Article 30, bears the burden of proving compliance with the conditions of that exception, the order of proof is complicated by the fact that the condition involves proving a negative. One cannot demonstrate that no legitimate interest of the patent owner has been prejudiced until one knows what claims of legitimate interest can be made. Likewise, the weight of legitimate third party interests cannot be fully appraised until the legitimacy and weight of the patent owner’s legitimate interests, if any, are defined. Accordingly, without disturbing the ultimate burden of proof, the Panel chose to analyse the issues presented by the third condition of Article 30 according to the logical sequence in which those issues became defined.”(204)
199. The Panel then proceeded to examine whether the Canadian regulatory review’s exception was compatible with the third condition under Article 30 — i.e. whether it did not ‘unreasonably prejudice the legitimate interests of the patent owner, taking account of the legitimate interests of third parties’. The exception at issue was an exception applicable specifically to producers of generic pharmaceuticals, enabling such producers to complete the burdensome and time-consuming marketing authorization procedure (up to two and a half years) prior to the expiration of the patent term of the relevant original product:
“The ultimate issue with regard to the regulatory review exception’s compliance with the third condition of Article 30 involved similar considerations to those arising under the second condition (‘normal exploitation’) — the fact that the exception would remove the additional period of de facto market exclusivity that patent owners could achieve if they were permitted to employ their rights to exclude ‘making’ and ‘using’ (and ‘selling’) the patented product during the term of the patent to prevent potential competitors from preparing and/or applying for regulatory approval during the term of the patent. The issue was whether patent owners could claim a ‘legitimate interest’ in the economic benefits that could be derived from such an additional period of de facto market exclusivity and, if so, whether the regulatory review exception ‘unreasonably prejudiced’ that interest.”(205)
“The word ‘legitimate’ is commonly defined as follows:
(a) Conformable to, sanctioned or authorized by, law or principle: lawful; justifiable; proper;
(b) Normal, regular, conformable to a recognized standard type.
Although the European Communities’ definition equating ‘legitimate interests’ with a full respect of legal interests pursuant to Article 28.1 is within at least some of these definitions, the EC definition makes it difficult to make sense of the rest of the third condition of Article 30, in at least three respects. First, since by that definition every exception under Article 30 will be causing ‘prejudice’ to some legal rights provided by Article 28 of the Agreement, that definition would reduce the first part of the third condition to a simple requirement that the proposed exception must not be ‘unreasonable’. Such a requirement could certainly have been expressed more directly if that was what was meant. Second, a definition equating ‘legitimate interests’ with legal interests makes no sense at all when applied to the final phrase of Article 30 referring to the ‘legitimate interests’ of third parties. Third parties are by definition parties who have no legal right at all in being able to perform the tasks excluded by Article 28 patent rights. An exceptions clause permitting governments to take account of such third party legal interests would be permitting them to take account of nothing. And third, reading the third condition as a further protection of legal rights would render it essentially redundant in light of the very similar protection of legal rights in the first condition of Article 30 (‘limited exception’).”(206)
201. After expressing its disagreement with the suggested definition of “legitimate interests” as “legal interests”, as proposed by the European Communities, the Panel put forth its own definition of “legitimate interests”:
“To make sense of the term ‘legitimate interests’ in this context, that term must be defined in the way that it is often used in legal discourse — as a normative claim calling for protection of interests that are ‘justifiable’ in the sense that they are supported by relevant public policies or other social norms. This is the sense of the word that often appears in statements such as ‘X has no legitimate interest in being able to do Y’. We may take as an illustration one of the most widely adopted Article 30-type exceptions in national patent laws — the exception under which use of the patented product for scientific experimentation, during the term of the patent and without consent, is not an infringement. It is often argued that this exception is based on the notion that a key public policy purpose underlying patent laws is to facilitate the dissemination and advancement of technical knowledge and that allowing the patent owner to prevent experimental use during the term of the patent would frustrate part of the purpose of the requirement that the nature of the invention be disclosed to the public. To the contrary, the argument concludes, under the policy of the patent laws, both society and the scientist have a ‘legitimate interest’ in using the patent disclosure to support the advance of science and technology. While the Panel draws no conclusion about the correctness of any such national exceptions in terms of Article 30 of the TRIPS Agreement, it does adopt the general meaning of the term ‘legitimate interests’ contained in legal analysis of this type.
The text of the present, more general version of Article 30 of the TRIPS Agreement was obviously based on the text of Article 9(2) of the Berne Convention. Berne Article 9(2) deals with exceptions to the copyright holder’s right to exclude reproduction of its copyrighted work without permission. The text of Article 9(2) is as follows:
‘It shall be a matter for legislation in the countries of the Union to permit the reproduction of [literary and artistic] works in certain special cases, provided that such reproduction does not conflict with a normal exploitation of the work and does not unreasonably prejudice the legitimate interests of the author.’(207)
The text of Berne Article 9(2) was not adopted into Article 30 of the TRIPS Agreement without change. Whereas the final condition in Berne Article 9(2) (‘legitimate interests’) simply refers to the legitimate interests of the author, the TRIPS negotiators added in Article 30 the instruction that account must be taken of ‘the legitimate interests of third parties’. Absent further explanation in the records of the TRIPS negotiations, however, the Panel was not able to attach a substantive meaning to this change other than what is already obvious in the text itself, namely that the reference to the ‘legitimate interests of third parties’ makes sense only if the term ‘legitimate interests’ is construed as a concept broader than legal interests.”(208)
202. Another claim put forth in Canada — Pharmaceutical Patents called attention to the fact that patent owners whose innovative products are subject to marketing approval requirements suffer a loss of economic benefits to the extent that delays in obtaining government approval prevent them from marketing their product during a substantial part of the patent term (the same government approval which producers of generic pharmaceuticals, under the above-mentioned regulatory review exception, were able to obtain prior to the date of the expiry of the patent term). The Panel considered the relevant practice by some Members to ascertain whether the European Communities’ policy concern was “a widely recognized policy norm”:
“The Panel therefore examined whether the claimed interest should be considered a ‘legitimate interest’ within the meaning of Article 30. The primary issue was whether the normative basis of that claim rested on a widely recognized policy norm.
The type of normative claim put forward by the EC has been affirmed by a number of governments that have enacted de jure extensions of the patent term, primarily in the case of pharmaceutical products, to compensate for the de facto diminution of the normal period of market exclusivity due to delays in obtaining marketing approval. According to the information submitted to the Panel, such extensions have been enacted by the European Communities, Switzerland, the United States, Japan, Australia and Israel. The EC and Switzerland have done so while at the same time allowing patent owners to continue to use their exclusionary rights to gain an additional, de facto extension of market exclusivity by preventing competitors from applying for regulatory approval during the term of the patent. The other countries that have enacted de jure patent term extensions have also, either by legislation or by judicial decision, created a regulatory review exception similar to Section 55.2(1), thereby eliminating the possibility of an additional de facto extension of market exclusivity.”(209)
203. While finding some support for the European Communities’ claim in the practice of a certain number of Member governments who had granted compensatory adjustment for the effective diminution of patent holder rights, the Panel held that such practice has not been universal:
“This positive response to the claim for compensatory adjustment has not been universal, however. In addition to Canada, several countries have adopted, or are in the process of adopting, regulatory review exceptions similar to Section 55.2(1) of the Canadian Patent Act, thereby removing the de facto extension of market exclusivity, but these countries have not enacted, and are not planning to enact, any de jure extensions of the patent term for producers adversely affected by delayed marketing approval. When regulatory review exceptions are enacted in this manner, they represent a decision not to restore any of the period of market exclusivity due to lost delays in obtaining marketing approval. Taken as a whole, these government decisions may represent either disagreement with the normative claim made by the EC in this proceeding, or they may simply represent a conclusion that such claims are outweighed by other equally legitimate interests.
On balance, the Panel concluded that the interest claimed on behalf of patent owners whose effective period of market exclusivity had been reduced by delays in marketing approval was neither so compelling nor so widely recognized that it could be regarded as a ‘legitimate interest’ within the meaning of Article 30 of the TRIPS Agreement. Notwithstanding the number of governments that had responded positively to that claimed interest by granting compensatory patent term extensions, the issue itself was of relatively recent standing, and the community of governments was obviously still divided over the merits of such claims. Moreover, the Panel believed that it was significant that concerns about regulatory review exceptions in general, although well known at the time of the TRIPS negotiations, were apparently not clear enough, or compelling enough, to make their way explicitly into the recorded agenda of the TRIPS negotiations. The Panel believed that Article 30’s ‘legitimate interests’ concept should not be used to decide, through adjudication, a normative policy issue that is still obviously a matter of unresolved political debate.”(210)
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XXXII. Article 31
Article 31: Other Use Without Authorization of the Right Holder
Where the law of a Member allows for other use(7) of the subject matter of a patent without the authorization of the right holder, including use by the government or third parties authorized by the government, the following provisions shall be respected:
(footnote original) 7 “Other use” refers to use other than that allowed under Article 30.
(b) such use may only be permitted if, prior to such use, the proposed user has made efforts to obtain authorization from the right holder on reasonable commercial terms and conditions and that such efforts have not been successful within a reasonable period of time. This requirement may be waived by a Member in the case of a national emergency or other circumstances of extreme urgency or in cases of public noncommercial use. In situations of national emergency or other circumstances of extreme urgency, the right holder shall, nevertheless, be notified as soon as reasonably practicable. In the case of public noncommercial use, where the government or contractor, without making a patent search, knows or has demonstrable grounds to know that a valid patent is or will be used by or for the government, the right holder shall be informed promptly;
(c) the scope and duration of such use shall be limited to the purpose for which it was authorized, and in the case of semi-conductor technology shall only be for public non-commercial use or to remedy a practice determined after judicial or administrative process to be anti-competitive;
(g) authorization for such use shall be liable, subject to adequate protection of the legitimate interests of the persons so authorized, to be terminated if and when the circumstances which led to it cease to exist and are unlikely to recur. The competent authority shall have the authority to review, upon motivated request, the continued existence of these circumstances;
(k) Members are not obliged to apply the conditions set forth in subparagraphs (b) and (f) where such use is permitted to remedy a practice determined after judicial or administrative process to be anti-competitive. The need to correct anti-competitive practices may be taken into account in determining the amount of remuneration in such cases. Competent authorities shall have the authority to refuse termination of authorization if and when the conditions which led to such authorization are likely to recur;
(l) where such use is authorized to permit the exploitation of a patent (“the second patent”) which cannot be exploited without infringing another patent (“the first patent”), the following additional conditions shall apply:
(i) the invention claimed in the second patent shall involve an important technical advance of considerable economic significance in relation to the invention claimed in the first patent;
(ii) the owner of the first patent shall be entitled to a cross-licence on reasonable terms to use the invention claimed in the second patent; and
(iii) the use authorized in respect of the first patent shall be non-assignable except with the assignment of the second patent.
205. With respect to the grant of compulsory licences and what constitutes a national emergency or other circumstances of extreme urgency, paragraphs 5(b) and (c) of the Declaration on the TRIPS Agreement and Public Health, adopted on 14 November 2001, read as follows:
(a) Each Member has the right to grant compulsory licences and the freedom to determine the grounds upon which such licences are granted.
(b) Each Member has the right to determine what constitutes a national emergency or other circumstances of extreme urgency, it being understood that public health crises, including those relating to HIV/AIDS, tuberculosis, malaria and other epidemics, can represent a national emergency or other circumstances of extreme urgency.(211)
206. On 30 August 2003, the General Council adopted a decision on “Implementation of Paragraph 6 of the Doha Declaration on the TRIPS Agreement and Public Health”. It grants waivers from the obligations set out in paragraphs (f) and (h) of Article 31 of the TRIPS Agreement with respect to pharmaceutical products.(212)
207. On 6 December 2005, the General Council adopted a decision on “Amendment of the TRIPS Agreement”. In accordance with the Protocol Amending the TRIPS Agreement attached to the decision, the TRIPS Agreement shall be amended as set out in an Annex to the Protocol by inserting Article 31bis after Article 31 and by inserting an Annex to the TRIPS Agreement after Article 73.
209. The original deadline for acceptance of the Protocol was 1 December 2007. On 18 December 2007, the General Council took the Decision on an Extension of the Period of for the Acceptance by Members of the Protocol Amending the TRIPS Agreement (WT/L/711), extending the period for acceptance until 31 December 2009. On 21 December 2009, the General Council extended the deadline to 31 December 2011 (WT/L/785).
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XXXIII. Article 32
Article 32: Revocation/Forfeiture
An opportunity for judicial review of any decision to revoke or forfeit a patent shall be available.
No jurisprudence or decision of a competent WTO body.
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XXXIV. Article 33
Article 33: Term of Protection
The term of protection available shall not end before the expiration of a period of twenty years counted from the filing date.(8)
(footnote original) 8 It is understood that those Members which do not have a system of original grant may provide that the term of protection shall be computed from the filing date in the system of original grant.
211. In Canada — Patent Term, Canada argued that although it was making available a patent protection period of only 17 years from the date of the grant of the patent, contrary to the requirement under Article 33 of a 20-year protection period counting from the date of the filing of the patent application, the relevant Canadian law was not inconsistent with Article 33, because — due to the length of the application procedures — the effective patent protection period was in fact equal to 20 years, as required by Article 33. The Panel rejected this argument and found a violation of Article 33. On appeal, the Appeal Body first considered the ordinary meaning of Article 33:
“In our view, the words used in Article 33 present very little interpretative difficulty. The ‘filing date’ is the date of filing of the patent application. The term of protection ‘shall not end’ before twenty years counted from the date of filing of the patent application. The calculation of the period of ‘twenty years’ is clear and specific. In simple terms, Article 33 defines the earliest date on which the term of protection of a patent may end. This earliest date is determined by a straightforward calculation: it results from taking the date of filing of the patent application and adding twenty years. As the filing date of the patent application and the twenty-year figure are both unambiguous, so too is the resultant earliest end date of the term of patent protection.”(214)
212. As Article 33 requires that a Member “make available” a patent protection period of 20 years, the Appellate Body then considered the meaning of the term “available”:
“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.
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.”(215)
213. The Appellate Body agreed with the Panel that Article 33 does not embody a notion of “effective” protection:
“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.”(216)
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XXXV. Article 34
Article 34: Process Patents: Burden of Proof
1. For the purposes of civil proceedings in respect of the infringement of the rights of the owner referred to in paragraph 1(b) of Article 28, if the subject matter of a patent is a process for obtaining a product, the judicial authorities shall have the authority to order the defendant to prove that the process to obtain an identical product is different from the patented process. Therefore, Members shall provide, in at least one of the following circumstances, that any identical product when produced without the consent of the patent owner shall, in the absence of proof to the contrary, be deemed to have been obtained by the patented process:
(b) if there is a substantial likelihood that the identical product was made by the process and the owner of the patent has been unable through reasonable efforts to determine the process actually used.
2. Any Member shall be free to provide that the burden of proof indicated in paragraph 1 shall be on the alleged infringer only if the condition referred to in subparagraph (a) is fulfilled or only if the condition referred to in subparagraph (b) is fulfilled.
No jurisprudence or decision of a competent WTO body.