|
I. Preamble back to top
A. Text of the Preamble
Members,
Desiring
to reduce distortions and impediments to international trade, and taking
into account the need to promote effective and adequate protection of
intellectual property rights, and to ensure that measures and procedures
to enforce intellectual property rights do not themselves become
barriers to legitimate trade;
Recognizing,
to this end, the need for new rules and disciplines concerning:
(a) the applicability of
the basic principles of GATT 1994 and of relevant international
intellectual property agreements or conventions;
(b) the provision of
adequate standards and principles concerning the availability, scope and
use of trade-related intellectual property rights;
(c) the provision of
effective and appropriate means for the enforcement of trade-related
intellectual property rights, taking into account differences in
national legal systems;
(d) the provision of
effective and expeditious procedures for the multilateral prevention and
settlement of disputes between governments; and
(e) transitional
arrangements aiming at the fullest participation in the results of the
negotiations;
Recognizing
the need for a multilateral framework of principles, rules and
disciplines dealing with international trade in counterfeit goods;
Recognizing
that intellectual property rights are private rights;
Recognizing
the underlying public policy objectives of national systems for the
protection of intellectual property, including developmental and
technological objectives;
Recognizing
also the special needs of the least-developed country Members in respect
of maximum flexibility in the domestic implementation of laws and
regulations in order to enable them to create a sound and viable
technological base;
Emphasizing
the importance of reducing tensions by reaching strengthened commitments
to resolve disputes on trade-related intellectual property issues
through multilateral procedures;
Desiring
to establish a mutually supportive relationship between the WTO and the
World Intellectual Property Organization (referred to in this Agreement
as “WIPO”) as well as other relevant international organizations;
Hereby
agree as follows:
B. Interpretation and Application of the
Preamble
1. In India
— Patents (US), addressing the US claim that the Indian legal regime
for patent protection for certain products was inconsistent with the TRIPS
Agreement, the Appellate Body referred to a part of the preamble in
its interpretation of Article
70.8(a):
“The Panel’s interpretation here [of Article
70.8(a)] is consistent also with the object and purpose of the TRIPS
Agreement. The Agreement takes into account, inter alia, ‘the need to
promote effective and adequate protection of intellectual property
rights’.”(1)
Part I: General Provisions and Basic
Principles
II. Article 1
back to top
A. Text of Article 1
Article 1: Nature and Scope of Obligations
1. Members shall give
effect to the provisions of this Agreement. Members may, but shall not
be obliged to, implement in their law more extensive protection than is
required by this Agreement, provided that such protection does not
contravene the provisions of this Agreement. Members shall be free to
determine the appropriate method of implementing the provisions of this
Agreement within their own legal system and practice.
2. For the purposes of
this Agreement, the term “intellectual property” refers to all
categories of intellectual property that are the subject of Sections 1
through 7 of Part II.
3. Members shall accord
the treatment provided for in this Agreement to the nationals of other
Members.(1) In respect of the relevant intellectual property right, the
nationals of other Members shall be understood as those natural or legal
persons that would meet the criteria for eligibility for protection
provided for in the Paris Convention (1967), the Berne Convention
(1971), the Rome Convention and the Treaty on Intellectual Property in
Respect of Integrated Circuits, were all Members of the WTO members of
those conventions.(2) Any Member availing itself of the possibilities
provided in paragraph 3 of Article 5 or paragraph 2 of Article 6 of the
Rome Convention shall make a notification as foreseen in those
provisions to the Council for Trade-Related Aspects of Intellectual
Property Rights (the “Council for TRIPS”).
(footnote original)
1 When “nationals”
are referred to in this Agreement, they shall be deemed, in the case of
a separate customs territory Member of the WTO, to mean persons, natural
or legal, who are domiciled or who have a real and effective industrial
or commercial establishment in that customs territory.
(footnote original)
2 In this Agreement,
“Paris Convention” refers to the Paris Convention for the Protection
of Industrial Property; “Paris Convention (1967)” refers to the
Stockholm Act of this Convention of 14 July 1967. “Berne Convention”
refers to the Berne Convention for the Protection of Literary and
Artistic Works; “Berne Convention (1971)” refers to the Paris Act of
this Convention of 24 July 1971. “Rome Convention” refers to the
International Convention for the Protection of Performers, Producers of
Phonograms and Broadcasting Organizations, adopted at Rome on 26 October
1961. “Treaty on Intellectual Property in Respect of Integrated
Circuits” (IPIC Treaty) refers to the Treaty on Intellectual Property
in Respect of Integrated Circuits, adopted at Washington on 26 May 1989.
“WTO Agreement” refers to the Agreement Establishing the WTO.
B. Interpretation and Application of
Article 1
1. Article 1.1
(a) “free to determine the appropriate
method of implementing”
2. In India
— Patents (US), the Appellate Body reviewed the Panel’s decision
that India did not meet its obligations under the TRIPS Agreement
in that it failed to provide “a sound legal basis to preserve novelty
and priority” of certain patent applications:
“[W]hat constitutes such a sound legal basis in
Indian law? To answer this question, we must recall first an important
general rule in the TRIPS Agreement. Article 1.1 of the TRIPS
Agreement states, in pertinent part:
‘Members shall be free to determine the
appropriate method of implementing the provisions of this Agreement
within their own legal system and practice.’
Members, therefore, are free to determine how best
to meet their obligations under the TRIPS Agreement within the
context of their own legal systems. And, as a Member, India is ‘free
to determine the appropriate method of implementing’ its obligations
under the TRIPS Agreement within the context of its own legal
system.”(2)
3. In Canada
— Patent Term, the Panel examined Canada’s argument that Article
1.1 permitted it to maintain a term for patent protection of 17 years
counting from the date of grant of a patent, in spite of the minimum
requirement, under Articles 33 and
70, of granting patent protection for
a period expiring 20 years from the date of filing of such application.
The Panel noted the discretion of Members, under Article
1.1, to
determine the appropriate method of implementing their obligations under
the TRIPS Agreement, but emphasized that such discretion did not
extend to choosing which obligation to comply with:
“… Article 33 contains an obligation
concerning the earliest available date of expiry of patents, and Article
62.2 contains a separate obligation prohibiting acquisition procedures
which lead to unwarranted curtailment of the period of protection. We
recognize that some curtailment is permitted by the text of these two
provisions. However, Article 1.1 gives Members the freedom to determine
the appropriate method of implementing those two specific requirements,
but not to ignore either requirement in order to implement another
putative obligation concerning the length of effective protection.”(3)
2. Article 1.2
4. In US
— Section 211 Appropriations Act, the Panel concluded that the
categories of intellectual property covered by the TRIPS Agreement
are those referred to in Article 1.2. The Appellate Body considered that
the categories of intellectual property are not simply those that appear
in the titles of Sections 1 through 7 of Part II but other subjects as
well,:
“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. For example, in Section 5 of Part
II, entitled ‘Patents’,
Article 27.3(b) provides that Members have the option of protecting
inventions of plant varieties by sui generis rights (such as
breeder’s rights) instead of through patents….”(4)
III. Article 2 and Incorporated Provisions
of the Paris Convection (1967) back to top
A. Text of Article 2
Article 2: Intellectual Property
Conventions
1. In respect of
Parts II, III and IV of this
Agreement, Members shall comply with
Articles 1 through 12, and Article
19, of the Paris Convention (1967).(5)
2. Nothing in
Parts I to
IV of this Agreement shall derogate from existing obligations that
Members may have to each other under the Paris Convention, the Berne
Convention, the Rome Convention and the Treaty on Intellectual Property
in Respect of Integrated Circuits.
B. Interpretation and Application of
Article 2 and Incorporated Provisions of the Paris Convention (1967)
1. Article 2.1 of the TRIPS Agreement
5. In US
— Section 211 Appropriations Act, the Appellate Body disagreed with
the Panel’s interpretation that Article 2.1 obliged Members to comply
with Articles 1 through 12 and
19 of the Paris Convention (1967) only
“in respect” of what is covered by Parts II, III and
IV of the TRIPS
Agreement. Instead, it found that Members do have an obligation to
provide protection to trade names in accordance with Article 8 of the
Paris Convention (1967) as incorporated by Article 2.1 of the TRIPS
Agreement:
“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.
…
[W]e 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.”(6)
2. Article 2 of the Paris Convention (1967)
as incorporated in the TRIPS Agreement
6. With
respect to the national treatment obligation in Article 2(1) of the
Paris Convention (1967) as incorporated in the TRIPS Agreement,
see the discussion of the national treatment obligation in Article 3.1
of the TRIPS Agreement from US — Section 211 Appropriations
Act in paragraphs 19-24 below.
3. Article 6 of the Paris Convention (1967)
as incorporated in the TRIPS Agreement
7. In US
— Section 211 Appropriations Act, in the course of considering
claims under Article 6quinquies A(1) of the Paris Convention
(1967) as incorporated in the TRIPS Agreement, and under Article
15.2 of the TRIPS Agreement, the Appellate Body explained that the
general rule in Article 6(1) of the Paris Convention as incorporated in
the TRIPS Agreement reserves considerable discretion to WTO
Members but that that discretion must be exercised consistently with
internationally agreed grounds for refusing — and not refusing — trademark registration:
“In this respect, we recall, once again, that
Article 6(1) of the Paris Convention (1967) reserves to each country of
the Paris Union the right to determine conditions for the filing and
registration of trademarks by its domestic legislation. The
authority to determine such conditions by domestic legislation must,
however, be exercised consistently with the obligations that countries
of the Paris Union have under the Paris Convention (1967). These
obligations include internationally agreed grounds for refusing
registration, as stipulated in the Paris Convention (1967).
The right of each country of the Paris Union to
determine conditions for filing and registration of trademarks by its
domestic legislation is also constrained by internationally agreed
grounds for not denying trademark registration. This means, by
implication, that the right reserved to each country of the Paris Union
to determine, under Article 6(1), conditions for the filing and
registration of trademarks includes the right to determine by domestic
legislation conditions to refuse acceptance of filing and
registration on grounds other than those explicitly prohibited by the
Paris Convention (1967).”(7)
4. Article 6bis of the Paris
Convention (1967) as incorporated in the TRIPS Agreement
8. In the
same report, the Panel found that the obligation in paragraph 1 of
Article 6bis to prohibit the use of a well-known trademark in certain
situations did not apply to assertions of rights by an entity which had
confiscated the well-known trademark, or its successor-in-interest, who
was not considered the proper owner under national law:
“We agree with the parties that a WTO Member is
not required to give the benefit of Article
6bis to the confiscating
entity or its successor-in-interest; the competent authority of a WTO
Member may consider the well-known trademark as being the mark of the
person who owned the trademark prior to the confiscation.”(8)
5. Article 6ter of the Paris
Convention (1967) as incorporated in the TRIPS Agreement
9. At its
meeting of 11 December 1995, the Council for TRIPS decided on
arrangements that apply with respect to implementation of the
obligations under the TRIPS Agreement stemming from the incorporation of
the provisions of Article 6ter of the Paris Convention (1967)
which contains certain prohibitions relating to the registration and use
as trademarks of state emblems, official hallmarks and emblems of
intergovernmental organizations.(9)
10.
Article 3 of the Agreement between the World Intellectual Property
Organization and the World Trade Organization, done on 22 December 1995
(the “WIPO-WTO Agreement”), provides for procedures relating to
communication of emblems and transmittal of objections under Article 6ter
of the Paris Convention for the purposes of the TRIPS Agreement.(10)
6. Article 6quinquies of the Paris
Convention (1967) as incorporated in the TRIPS Agreement
11. In US
— Section 211 Appropriations Act the Appellate Body considered an
argument that Article 6quinquies A(1) applied to more than merely
the form of a trademark, and found that:
“We also agree that the obligation of countries
of the Paris Union under Article 6quinquies A(1) to accept for
filing and protect a trademark duly registered in the country of origin
‘as is’ does not encompass matters related to ownership.”(11)
7. Article 8 of the Paris Convention (1967)
as incorporated in the TRIPS Agreement
12. In US
— Section 211 Appropriations Act, the Appellate Body disagreed with
the Panel’s interpretation that Article 2.1 obliged Members to comply
with Articles 1 through 12 and
19 of the Paris Convention (1967) only
“in respect” of what is covered by Parts II, III and
IV of the TRIPS
Agreement. Instead, it found that Members do have an obligation to
provide protection to trade names in accordance with Article 8 of the
Paris Convention (1967) as incorporated by Article 2.1 of the TRIPS
Agreement:
“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….
…
[W]e 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.”(12)
13. In US
— Section
211 Appropriations Act, the Appellate Body found that Article 8 of
the Paris Convention (1967) as incorporated in the TRIPS Agreement does
not determine who does or does not own a trade name:
“We recall further our conclusion in … the
section addressing Article 16.1 of the TRIPS Agreement that
neither the Paris Convention (1967) nor the TRIPS Agreement
determines who owns or who does not own a trademark. We believe that the
Paris Convention (1967) and the TRIPS Agreement also do not
determine who owns or does not own a trade name. Given our view that
Sections 211(a)(2) and (b) relate to ownership, we conclude that these
Sections are not inconsistent with Article 2.1 of the TRIPS Agreement
in conjunction with Article 8 of the Paris Convention
(1967).”(13)
8. Article 2.2 of the TRIPS Agreement
14. In EC
— Bananas
(Article 22.6), the Arbitrators followed Ecuador’s request under
Article 22.2 of the DSU for suspension of concessions and
obligations, including certain obligations under the TRIPS Agreement.
In their award, the Arbitrators addressed, inter alia, the
relationship between the WTO Agreement and the obligations of WTO
Members to each other arising under the four conventions listed in
Article 2:
“This provision can be understood to refer to
the obligations that the contracting parties of the Paris, Berne and
Rome Conventions and the IPIC Treaty, who are also WTO Members, have
between themselves under these four treaties. This would mean that, by
virtue of the conclusion of the WTO Agreement, e.g. Berne Union members
cannot derogate from existing obligations between each other under the
Berne Convention. For example, the fact that Article 9.1 of the TRIPS
Agreement incorporates into that Agreement Articles
1-21 of the Berne
Convention with the exception of Article 6bis does not mean that
Berne Union members would henceforth be exonerated from this obligation
to guarantee moral rights under the Berne Convention.”(14)
IV. Article 3
back to top
A. Text of Article 3
Article 3: National Treatment
1. Each Member shall
accord to the nationals of other Members treatment no less favourable
than that it accords to its own nationals with regard to the protection(3)
of intellectual property, subject to the exceptions already provided in,
respectively, the Paris Convention (1967), the Berne Convention (1971),
the Rome Convention or the Treaty on Intellectual Property in Respect of
Integrated Circuits. In respect of performers, producers of phonograms
and broadcasting organizations, this obligation only applies in respect
of the rights provided under this Agreement. Any Member availing itself
of the possibilities provided in Article 6 of the Berne Convention
(1971) or paragraph 1(b) of Article 16 of the Rome Convention shall make
a notification as foreseen in those provisions to the Council for TRIPS.
(footnote original) 3 For the purposes of
Articles 3 and 4, “protection” shall include matters affecting the
availability, acquisition, scope, maintenance and enforcement of
intellectual property rights as well as those matters affecting the use
of intellectual property rights specifically addressed in this
Agreement.
2. Members may avail
themselves of the exceptions permitted under paragraph 1 in relation to
judicial and administrative procedures, including the designation of an
address for service or the appointment of an agent within the
jurisdiction of a Member, only where such exceptions are necessary to
secure compliance with laws and regulations which are not inconsistent
with the provisions of this Agreement and where such practices are not
applied in a manner which would constitute a disguised restriction on
trade.
B. Interpretation and Application of
Article 3
1. Article 3.1
(a) “treatment no less favourable than that
it accords to its own nationals with regard to the protection of
intellectual property”
15. Indonesia
— Autos concerned the consistency of Indonesia’s National Car
Programme with several WTO agreements, including claims that the
provisions of the programme discriminated against nationals of other WTO
Members with respect to trademarks, in violation of Article 3.1 (the
Panel Report was not appealed). With respect to the claim relating to
the acquisition of trademarks, the Panel rejected the United States’
claim that Indonesian law was according less favourable treatment to
foreign nationals than to Indonesian nationals. The Panel saw the
Indonesian law as merely stipulating, in a non-discriminatory manner,
that only certain signs could be used as trademarks:
“The issue to be examined therefore in regard to
the United States’ claim relating to the ‘acquisition’ of
trademarks is whether, under the Indonesian law and practice which is
before us, the treatment accorded to foreign nationals in respect of the
acquisition of trademark rights, through the applicable procedures, is
less favourable than that accorded to the Indonesian company in the
National Car Programme. We do not consider that any evidence has been
produced in this case to support such a claim…. The fact that only
certain signs can be used as trademarks for meeting the relevant
qualifications under the National Car Programme, and many others not,
does not mean that trademark rights, as stipulated in Indonesian
trademark law, cannot be acquired for these other signs in a
non-discriminatory manner.”(15)
16. Equally, with
respect to the argument that less favourable treatment was being
accorded by the regulations pertaining to the maintenance of trademarks, the Panel could not discern any less favourable treatment under
Indonesian law for foreign nationals:
“We do not accept this argument for the
following reasons. First, no evidence has been put forward to refute the
Indonesian statement that the system, in requiring a new, albeit
Indonesian-owned, trademark to be created, applies equally to
pre-existing trademarks owned by Indonesian nationals and foreign
nationals. Second, if a foreign company enters into an arrangement with
a Pioneer company, it would do so voluntarily, with knowledge of any
consequent implications for its ability to maintain pre-existing
trademark rights, as indeed the United States itself has acknowledged in
its submissions to the Panel.”(16)
17. The Panel in Indonesia
— Autos also cautioned against construing the national treatment
obligation under Article 3 of the TRIPS Agreement as addressing
also issues of tariffs, subsidies or other measures with respect to
domestic companies which could have an indirect impact on the
maintenance of trademark rights by foreign nationals:
“In considering this argument, we note that any
customs tariff, subsidy or other governmental measure of support could
have a ‘de facto’ effect of giving such an advantage to the
beneficiaries of this support. We consider that considerable caution
needs to be used in respect of ‘de facto’ based arguments of this
sort, because of the danger of reading into a provision obligations
which go far beyond the letter of that provision and the objectives of
the Agreement. It would not be reasonable to construe the national
treatment obligation of the TRIPS Agreement in relation to the
maintenance of trademark rights as preventing the grant of tariff,
subsidy or other measures of support to national companies on the
grounds that this would render the maintenance of trademark rights by
foreign companies wishing to export to that market relatively more
difficult.”(17)
18. The following
passage in Indonesia — Autos illustrates the Panel’s approach
to the relationship between Article 3 and other provisions of the TRIPS
Agreement:
“As is made clear by the footnote to Article 3
of the TRIPS Agreement, the national treatment rule set out in that
Article does not apply to use of intellectual property rights generally
but only to ‘those matters affecting the use of intellectual property
rights specifically addressed in this Agreement’. In putting forward
its claim on this point, the United States has developed arguments
relating to the use of trademarks specifically addressed by Article 20
of the TRIPS Agreement. It is the first sentence of this Article, which
is entitled ‘Other Requirements’, to which the United States has
made reference….
The main issues before us in examining this claim
of the United States are therefore: first, is the use of a trademark to
which the Indonesian law and practices at issue relates ‘specifically
addressed’ by Article 20; and, second, if so, does this aspect of the
system discriminate in favour of Indonesian nationals and against those
of other WTO Members.”(18)
19. In US
— Section
211 Appropriations Act, the Appellate Body considered a measure
that, on a plain reading, afforded “differential treatment” between
a Member’s own nationals and nationals of other countries, and quoted
from the GATT panel report in US — Section 337:
“That panel reasoned that ‘the mere fact that
imported products are subject under Section 337 to legal provisions that
are different from those applying to products of national origin is in
itself not conclusive in establishing inconsistency with Article III:4
[of GATT].’
That panel stated further that:
‘[I]t would follow … that any unfavourable
elements of treatment of imported products could be offset by more
favourable elements of treatment, provided that the results, as shown in
past cases, have not been less favourable. [E]lements of less and
more favourable treatment could thus only be offset against each other
to the extent that they always would arise in the same cases and
necessarily would have an offsetting influence on the other.’
(emphasis added)
And that panel, importantly for our purposes,
concluded that:
‘… while the likelihood of having to defend
imported products in two fora is small, the existence of the possibility
is inherently less favourable than being faced with having to conduct a
defence in only one of those fora’. (emphasis added)”(19)
20. In US
— Section
211 Appropriations Act, the Appellate Body accepted that
discriminatory treatment imposed by a measure could be offset in
practice:
“Yet, to fulfill the national treatment
obligation, less favourable treatment must be offset, and thereby
eliminated, in every individual situation that exists under a
measure. Therefore, for this argument by the United States to succeed,
it must hold true for all Cuban original owners of United States
trademarks, and not merely for some of them.”(20)
21. In the same
report, the Appellate Body dismissed an argument that certain
discriminatory treatment was offset in practice by another measure which
provided unfavourable treatment to the Member’s own nationals:
“We disagree. We do not believe that Section
515.201 of the CACR would in every case offset the discriminatory
treatment imposed by Sections 211(a)(2) and (b). For this argument by
the United States to hold true in each and every situation, the scope of
the phrase ‘having an interest in’ in Section 515.201 would
necessarily have to overlap in coverage with the scope of the phrase ‘used
in connection with’ in Sections 211(a)(2) and (b). However, the United
States was unable to point to evidence substantiating that the different
standards used in Section 515.201 and in Sections 211(a)(2) and (b)
overlap completely. We are, therefore, not satisfied that Section
515.201 would offset the inherently less favourable treatment present in
Sections 211(a)(2) and (b) in each and every case. And, because it has
not been shown by the United States that it would do so in each and
every case, the less favourable treatment that exists under the measure
cannot be said to have been offset and, thus, eliminated.”(21)
22. In the same
report, the Appellate Body dismissed an argument that certain
discriminatory treatment was offset in practice by the availability of a
particular administrative procedure:
“This [procedure] could eliminate less
favourable treatment in practice. Yet, the very existence of the
additional ‘hurdle’ that is imposed by requiring application to OFAC
is, in itself, inherently less favourable. Sections 211(a)(2) and (b) do
not apply to United States original owners; no application to OFAC is
required. But Cuban original owners residing in the ‘authorized trade
territory’ must apply to OFAC. Thus, such Cuban original owners must
comply with an administrative requirement that does not apply to United
States original owners. By virtue alone of having to apply to OFAC, even
Cuban original owners that reside in the ‘authorized trade territory’
described in Section 515.332 are treated less favourably than United
States original owners. So, in this second situation, the discrimination
remains.”(22)
23. In the same
report, the Appellate Body dismissed an argument that a discretionary
measure applicable only to nationals of foreign countries, but which had
been consistently applied in a way which offset any discrimination, did
not provide less favourable treatment. Although the Appellate Body
agreed with the Panel that it could not assume that the discretionary
executive authority would be exercised inconsistently with WTO
obligations, it found that this measure violated the national treatment
obligation in Article 2(1) of the Paris Convention (1967) (as
incorporated in the TRIPS Agreement) and Article 3.1 of the TRIPS
Agreement, for the following reason:
“The United States may be right that the
likelihood of having to overcome the hurdles of both Section 515.201 of
Title 31 CFR and Section 211(a)(2) may, echoing the panel in US — Section 337, be small. But, again echoing that panel, even
the possibility that non-United States successors-in-interest
face two hurdles is inherently less favourable than the
undisputed fact that United States successors-in-interest face only one.”(23)
24. In the same
report, the Appellate Body applied to trade names its findings with
regard to trademarks in respect of Article 2.1 of the TRIPS Agreement
in conjunction with Article 2(1) of the Paris
Convention, and Article
3.1 of the TRIPS Agreement.(24)
(b) Notification requirements
25. At its meeting of
27 February 1997, the Council for TRIPS referred to three options for
meeting obligations to notify laws and regulations that correspond to
the obligations of Articles 3, 4 and
5 of the TRIPS Agreement. It
circulated a format as a practical aid in respect of one of those
options.(25)
2. Relationship with other Articles
26. With respect to
the relationship with Article 65.2, see the excerpt from the panel
report referenced in paragraph 144 below.
3. Relationship with other WTO Agreements
27. In US
— Section
211 Appropriations Act, the Appellate Body referred to GATT
jurisprudence in interpreting Article 3 of the TRIPS Agreement
for the following reason:
“As we see it, the national treatment obligation
is a fundamental principle underlying the TRIPS Agreement, just
as it has been in what is now the GATT 1994. The Panel was correct in
concluding that, as the language of Article 3.1 of the TRIPS
Agreement, in particular, is similar to that of Article III:4 of the
GATT 1994, the jurisprudence on Article III:4 of the GATT 1994 may be
useful in interpreting the national treatment obligation in the TRIPS
Agreement.”(26)
V. Article 4
back to top
A. Text of Article 4
Article 4: Most-Favoured-Nation Treatment
With regard to the protection of intellectual property, any advantage,
favour, privilege or immunity granted by a Member to the nationals of
any other country shall be accorded immediately and unconditionally to
the nationals of all other Members. Exempted from this obligation are
any advantage, favour, privilege or immunity accorded by a Member:
(a) deriving from
international agreements on judicial assistance or law enforcement of a
general nature and not particularly confined to the protection of
intellectual property;
(b) granted in accordance
with the provisions of the Berne Convention (1971) or the Rome
Convention authorizing that the treatment accorded be a function not of
national treatment but of the treatment accorded in another country;
(c) in respect of the
rights of performers, producers of phonograms and broadcasting
organizations not provided under this Agreement;
(d) deriving from
international agreements related to the protection of intellectual
property which entered into force prior to the entry into force of the
WTO Agreement, provided that such agreements are notified to the Council
for TRIPS and do not constitute an arbitrary or unjustifiable
discrimination against nationals of other Members.
B. Interpretation and Application of
Article 4
1. General
28. In US
— Section 211 Appropriations Act, the Appellate Body applied analogous
reasoning to claims under Articles 3.1 and 4 of the TRIPS Agreement
in respect of the same measure. The measure, on its face, discriminated
as between the nationals of one other Member, and the nationals of all
other countries. The Appellate Body dismissed an argument that the
discrimination could be eliminated through an administrative procedure:
“Cuban nationals that reside in a country that
is part of the ‘authorized trade territory’, such as the Member
States of the European Communities, can apply to OFAC to be ‘unblocked’.
This implies that Cuban nationals that reside in the ‘authorized trade
territory’ face an additional administrative procedure that does not
apply to non-Cuban foreign nationals who are original owners, because
the latter are not ‘designated nationals’. Therefore, as we stated
earlier, treatment that is inherently less favourable persists.”(27)
29. In US
— Section
211 Appropriations Act, the Appellate Body dismissed an argument
that certain discriminatory treatment applied to the nationals of one
other Member was offset in practice by another measure that could
provide unfavourable treatment to the nationals of all other countries:
“The fact that Section 515.201 of Title 31 CFR could
also apply to a non-Cuban foreign national does not mean, however, that
it would offset in each and every case the discriminatory
treatment imposed by Sections 211(a)(2) and (b) on Cuban original
owners.”(28)
30. In the same
report, the Appellate Body applied to trade names its findings with
regard to trademarks in respect of Article 4 of the TRIPS Agreement.(29)
2. Article 4(d)
(a) Notification requirements
31. At its meeting of
27 February 1997, the Council for TRIPS referred to three options for
meeting obligations to notify laws and regulations that correspond to
the obligations of Articles 3, 4 and
5 of the TRIPS Agreement. It
circulated a format as a practical aid in respect of one of those
options.(30)
VI. Article 5
back to top
A. Text of Article 5
Article 5: Multilateral Agreements on
Acquisition or Maintenance of Protection
The obligations under
Articles 3 and 4 do not apply to procedures provided in multilateral
agreements concluded under the auspices of WIPO relating to the
acquisition or maintenance of intellectual property rights.
B. Interpretation and Application of
Article 5
1. Notification
32. With respect to
notifications of laws and regulations relating to Articles
3, 4 and 5 of
the TRIPS Agreement, see paragraph 25 above.
VII. Article 6
back to top
A. Text of Article 6
Article 6: Exhaustion
For the purposes of
dispute settlement under this Agreement, subject to the provisions of
Articles 3 and 4 nothing in this Agreement shall be used to address the
issue of the exhaustion of intellectual property rights.
B. Interpretation and Application of
Article 6
33. With respect to
the exhaustion of intellectual property rights, see the Declaration on
the TRIPS Agreement and Public Health, reproduced in Section LXXVIII
below.
VIII. Article 7
back to top
A. Text of Article 7
Article 7: Objectives
The protection and
enforcement of intellectual property rights should contribute to the
promotion of technological innovation and to the transfer and
dissemination of technology, to the mutual advantage of producers and
users of technological knowledge and in a manner conducive to social and
economic welfare, and to a balance of rights and obligations.
B. Interpretation and Application of
Article 7
1. Relationship with other Articles
34. With respect to
the relationship with Article 30, see the excerpt from the panel report
referenced in paragraph 101 below.
35. With respect to
the objectives and principles of the TRIPS Agreement, see the
Declaration on the TRIPS Agreement and Public Health, reproduced in
Section LXXVIII below.
IX. Article 8
back to top
A. Text of Article 8
Article 8: Principles
1. Members may, in
formulating or amending their laws and regulations, adopt measures
necessary to protect public health and nutrition, and to promote the
public interest in sectors of vital importance to their socio-economic
and technological development, provided that such measures are
consistent with the provisions of this Agreement.
2. Appropriate measures,
provided that they are consistent with the provisions of this Agreement,
may be needed to prevent the abuse of intellectual property rights by
right holders or the resort to practices which unreasonably restrain
trade or adversely affect the international transfer of technology.
B. Interpretation and Application of
Article 8
1. Relationship with other Articles
36. With respect to
the relationship with Article 30, see
paragraph 101
below.
37. With respect to
the objectives and principles of the TRIPS Agreement, see the
Declaration on the TRIPS Agreement and Public Health, reproduced in
Section LXXVIII below.
Part II: Standards Concerning the
Availability, Scope and Use of Intellectual Property Rights
Section 1: Copyright and Related Rights
X. Article 9 and Incorporated Provisions
of the Berne Convention (1971) back to top
A. Text of Article 9
Article 9: Relation to the Berne Convention
1. Members shall comply
with Articles 1 through 21 of the Berne Convention (1971) and the
Appendix thereto. However, Members shall not have rights or obligations
under this Agreement in respect of the rights conferred under Article 6bis of that Convention or of the rights derived therefrom.
2. Copyright protection
shall extend to expressions and not to ideas, procedures, methods of
operation or mathematical concepts as such.
The text of Articles
1-21 of the Berne
Convention and Appendix, other than Article 6bis appears in Section
LXXVI below.
B. Interpretation and Application of
Article 9 and Incorporated Provisions of the Berne Convention (1971)
1. Relationship with the Berne Convention
(1971)
38. In US
— Section
110(5) Copyright Act, in examining the consistency of certain
provisions of the US Copyright Act with the TRIPS Agreement, the
Panel made a finding on the relationship between the TRIPS Agreement
and the Berne Convention (1971):
“Articles 9-13 of Section 1 of Part II of the
TRIPS Agreement entitled ‘Copyright and Related Rights’ deal with
the substantive standards of copyright protection. Article 9.1 of the
TRIPS Agreement obliges WTO Members to comply with Articles
1-21 of the
Berne Convention (1971) (with the exception of Article 6bis on
moral rights and the rights derived therefrom) and the Appendix thereto….
We note that through their incorporation, the
substantive rules of the Berne Convention (1971), including the
provisions of its Articles 11bis(1)(iii) and
11(1)(ii), have
become part of the TRIPS Agreement and as provisions of that Agreement
have to be read as applying to WTO Members.”(31)
39. The Panel also
considered a provision of the Vienna Convention on the Law of the
Treaties with respect to the TRIPS Agreement and the Berne
Convention (1971).
“We note that Article 30 of the Vienna
Convention on the application of successive treaties is not relevant in
this respect, because all provisions of the TRIPS Agreement — including
the incorporated Articles 1-21 of the Berne Convention (1971) — entered
into force at the same point in time.”(32)
40. With respect to
the relationship of the minor exceptions doctrine under the Berne
Convention (1971) and the TRIPS Agreement, see also the excerpt
from the panel report referenced in paragraph 52 below.
41. In US
— Section
110(5) Copyright Act, the Panel emphasized the need, in the light of
general principles of interpretation, to harmoniously interpret
provisions of the TRIPS Agreement and the Berne Convention
(1971):
“In the area of copyright, the Berne Convention
and the TRIPS Agreement form the overall framework for multilateral
protection. Most WTO Members are also parties to the Berne Convention.
We recall that it is a general principle of interpretation to adopt the
meaning that reconciles the texts of different treaties and avoids a
conflict between them. Accordingly, one should avoid interpreting the
TRIPS Agreement to mean something different than the Berne Convention
except where this is explicitly provided for. This principle is in
conformity with the public international law presumption against
conflicts, which has been applied by WTO panels and the Appellate Body
in a number of cases. We believe that our interpretation of the legal
status of the minor exceptions doctrine under the TRIPS Agreement is
consistent with these general principles.”(33)
42. The Panel adopted
the same approach to the interpretation of the TRIPS Agreement
and the WIPO Copyright Treaty (“WCT”) as it had applied with respect
to the TRIPS Agreement and the Berne Convention (1971). The Panel
stated as follows:
“In paragraph 6.66 we discussed the need to
interpret the Berne Convention and the TRIPS Agreement in a way that
reconciles the texts of these two treaties and avoids a conflict between
them, given that they form the overall framework for multilateral
copyright protection. The same principle should also apply to the
relationship between the TRIPS Agreement and the WCT. The WCT is
designed to be compatible with this framework, incorporating or using
much of the language of the Berne Convention and the TRIPS Agreement.
The WCT was unanimously concluded at a diplomatic conference organized
under the auspices of WIPO in December 1996, one year after the WTO
Agreement entered into force, in which 127 countries participated. Most
of these countries were also participants in the TRIPS negotiations and
are Members of the WTO. For these reasons, it is relevant to seek
contextual guidance also in the WCT when developing interpretations that
avoid conflicts within this overall framework, except where these
treaties explicitly contain different obligations.”(34)
2. Article 11 of the Berne Convention
(1971) as incorporated in the TRIPS Agreement
(a) Scope of Article 11
43. In US
— Section
110(5) Copyright Act, the Panel was called upon to interpret Article
11 of the Berne Convention (1971). The Panel considered the scope of
Article 11 as follows:
“As in the case of Article 11bis(1) of
the Berne Convention (1971), which concerns broadcasting to the public
and communication of a broadcast to the public, the exclusive rights
conferred by Article 11 cover public performance; private performance
does not require authorization. Public performance includes performance
by any means or process, such as performance by means of recordings
(e.g., CDs, cassettes and videos).(35) It also includes communication to
the public of a performance of the work.”(36)
(b) Paragraph 1
44. In US
— Section
110(5) Copyright Act, the Panel agreed with the parties that a
particular type of communication was covered by the exclusive rights set
forth in Article 11(1) of the Berne Convention
(1971):
“We share the understanding of the parties that
a communication to the public by loudspeaker of a performance of a work
transmitted by means other than hertzian waves is covered by the
exclusive rights conferred by Article 11(1) of the Berne Convention
(1971).”(37)
45. In US
— Section
110(5) Copyright Act (Article 25.3), the Arbitrators emphasized the
difference between Members’ respective obligations under Article
11(1)(ii) of the Berne Convention (1971) and right holders’ exercise
or exploitation of rights:
“For purposes of the present dispute, this means
that the United States is under an obligation to make available to EC
right holders the exclusive rights set forth in Articles 11bis(1)(iii)
and 11(1)(ii).(38) It is important to bear in mind, however, that, while
it is for the United States to provide EC right holders
with the exclusive rights set forth in Articles 11bis(1)(iii) and
11(1)(ii), it is for EC right holders to determine whether and
how to exercise or exploit those rights.”(39)
(c) Relationship between Article 11 of the
Berne Convention (1971) and other Articles of this Convention.
46. In US
— Section
110(5) Copyright Act, the Panel found Article 11 to be a general
rule concerning the communication of performances of works, while
Article 11bis provided a specific rule concerning a
particular type of communication:
“Regarding the relationship between Articles 11
and 11bis, we note that the rights conferred in
Article 11(1)(ii)
concern the communication to the public of performances of works in
general. Article 11bis(1)(iii) is a specific rule conferring
exclusive rights concerning the public communication by loudspeaker or
any other analogous instrument transmitting, by signs, sounds or images,
the broadcast of a work.”(40)
3. Article 11bis of the Berne
Convention (1971) as incorporated in the TRIPS Agreement
(a) Paragraph 1
47. In US
— Section
110(5) Copyright Act, in interpreting Article 11bis(1), the
Panel addressed the three “separate exclusive” rights provided by
Article 11bis(1) subparagraphs (i) through (iii):
“In the light of Article 2 of the Berne
Convention (1971), ‘artistic’ works in the meaning of Article 11bis(1)
include non-dramatic and other musical works. Each of the subparagraphs
of Article 11bis(1) confers a separate exclusive right;
exploitation of a work in a manner covered by any of these subparagraphs
requires an authorization by the right holder. For example, the
communication to the public of a broadcast creates an additional
audience and the right holder is given control over, and may expect
remuneration from, this new public performance of his or her work.
The right provided under subparagraph (i) of
Article 11bis(1) is to authorize the broadcasting of a work and
the communication thereof to the public by any other means of wireless
diffusion of signs, sounds or images. It applies to both radio and
television broadcasts. Subparagraph (ii) concerns the subsequent use of
this emission; the authors’ exclusive right covers any communication
to the public by wire or by rebroadcasting of the broadcast of the work,
when the communication is made by an organization other than the
original one.
Subparagraph (iii) provides an exclusive right to
authorize the public communication of the broadcast of the work by
loudspeaker, on a television screen, or by other similar means. Such
communication involves a new public performance of a work contained in a
broadcast, which requires a licence from the right holder.”(41)
48. In US
— Section
110(5) Copyright Act (Article 25.3), the Arbitrators emphasized the
difference between Members’ respective obligations under Article 11bis(1)(iii)
of the Berne Convention (1971) and right holders’ exercise or
exploitation of rights as follows:
“For purposes of the present dispute, this means
that the United States is under an obligation to make available to EC
right holders the exclusive rights set forth in Articles 11bis(1)(iii)
and 11(1)(ii).(42) It is important to bear in mind, however, that, while
it is for the United States to provide EC right holders
with the exclusive rights set forth in Articles 11bis(1)(iii) and
11(1)(ii), it is for EC right holders to determine whether and
how to exercise or exploit those rights.”(43)
(b) Paragraph 2
49. In US
— Section
110(5) Copyright Act, the Panel addressed the authorization,
provided by Article 11bis(2), to substitute a compulsory licence
for an exclusive right under Article 11bis
(1):
“We also conclude that Article 11bis(2)
of the Berne Convention (1971) as incorporated into the TRIPS Agreement
allows Members to substitute a compulsory licence for an exclusive right
under Article 11bis(1), or determine other conditions provided
that they are not prejudicial to the right holder’s right to obtain an
equitable remuneration. Article 11bis(2) is not relevant for the
case at hand, because the United States has not provided a right in
respect of the uses covered by the present Section 110(5), the exercise
of which would have been subjected to conditions determined in its
legislation.”(44)
(c) Relationship between Article 11bis
of the Berne Convention (1971) and other Articles of the Convention
50. With respect to
the relationship between Articles 11 and
11bis of the Berne
Convention (1971) as incorporated in the TRIPS Agreement, see
paragraph 46 above.
(d) Minor exceptions doctrine
51. In US
— Section
110(5) Copyright Act, the Panel addressed the question whether the
“minor exceptions doctrine” in the context of copyrights applied
under the TRIPS Agreement. The Panel decided first to examine to
what extent this doctrine formed part of the Berne Convention (1971) acquis
and second, to assess whether that doctrine had been incorporated into
the TRIPS Agreement. With respect to the scope of the minor
exceptions doctrine under the Berne Convention (1971), the Panel held:
“The General Report of the Brussels Conference
of 1948 refers to ‘religious ceremonies, military bands and the needs
of the child and adult education’ as examples of situations in respect
of which minor exceptions may be provided. The Main Committee I Report
of the Stockholm Conference of 1967 refers also to ‘popularization’
as one example. When these references are read in their proper context,
it is evident that the given examples are of an illustrative character….
… On the basis of the information provided to
us, we are not in a position to determine that the minor exceptions
doctrine justifies only exclusively non-commercial use of works and that
it may under no circumstances justify exceptions to uses with a more
than negligible economic impact on copyright holders. On the other hand,
noncommercial uses of works, e.g., in adult and child education, may
reach a level that has a major economic impact on the right holder. At
any rate, in our view, a non-commercial character of the use in question
is not determinative provided that the exception contained in national
law is indeed minor….”(45)
52. As the second step
in its “minor exceptions analysis”, the Panel examined to what
extent this doctrine under the Berne Convention (1971) had been
incorporated into the TRIPS Agreement:
“Having concluded that the minor exceptions
doctrine forms part of the ‘context’ of, at least, Articles 11bis
and 11 of the Berne Convention (1971) by virtue of an agreement within
the meaning of Article 31(2)(a) of the Vienna Convention, which was made
between the Berne Union members in connection with the conclusion of the
respective amendments to that Convention, we next address the second
step of our analysis …
…
… we conclude that, in the absence of any
express exclusion in Article 9.1 of the TRIPS Agreement, the
incorporation of Articles 11 and
11bis of the Berne Convention
(1971) into the Agreement includes the entire acquis of these
provisions, including the possibility of providing minor exceptions to
the respective exclusive rights.”(46)
(e) Relationship between Article 11bis(2)
of the Berne Convention (1971) and Article 13 of the TRIPS Agreement
53. With respect to
the relationship between Article 11bis(2) of the Berne Convention
(1971) and Article 13 of the TRIPS Agreement, see paragraphs 59-61 below.
4. Article 20 of the Berne Convention
(1971) as incorporated in the TRIPS Agreement
54. In US
— Section
110(5) Copyright Act, the Panel declined to address Article 20 of
the Berne Convention (1971), because — contrary to the European
Communities’ argument — the United States was not claiming that the TRIPS
Agreement authorizes exceptions inconsistent with the Berne
Convention (1971):
“In regard to the argument of the European
Communities that the US interpretation of Article 13 is incompatible
with Article 20 of the Berne Convention (1971) and
Article 2.2 of the
TRIPS Agreement because it treats Article 13 of the TRIPS Agreement as
providing a basis for exceptions that would be inconsistent with those
permitted under the Berne Convention (1971), we note that the United
States is not arguing this but rather that Article 13 clarifies and
articulates the standards applicable to minor exceptions under the Berne
Convention (1971). Since the EC arguments in relation to these
provisions would only be relevant if a finding that would involve
inconsistency with the Berne Convention (1971) were being advocated, we
do not feel it is necessary to examine them further.”(47)
5. Appendix to the Berne Convention (1971)
as incorporated in the TRIPS Agreement
55. At its meeting of
16 July 1998, the Council for TRIPS took note of the following statement
by its Chairperson, in the light of informal consultations on the
calculation of renewable periods of ten years under Article I(2) of the
Appendix to the Berne Convention (1971):
“The provisions of Article I(2) of the Appendix
as incorporated into the TRIPS Agreement can be understood so that, for
the purposes of the TRIPS Agreement, the relevant periods are calculated
by reference to the same date, i.e. 10 October 1974, as for the purposes
of the Berne Convention. This would mean that renewable periods of ten
years would be the same for the purposes of both Agreements, and that,
also under the TRIPS Agreement, the period of ten years currently
running would expire on 10 October 2004.”(48)
XI. Article 10
back to top
A. Text of Article 10
Article 10: Computer Programs and
Compilations of Data
1. Computer programs,
whether in source or object code, shall be protected as literary works
under the Berne Convention (1971).
2. Compilations of data or
other material, whether in machine readable or other form, which by
reason of the selection or arrangement of their contents constitute
intellectual creations shall be protected as such. Such protection,
which shall not extend to the data or material itself, shall be without
prejudice to any copyright subsisting in the data or material itself.
B. Interpretation and Application of
Article 10
No jurisprudence or decision of a competent WTO
body.
XII. Article 11
back to top
A. Text of Article 11
Article 11: Rental Rights
In respect of at least
computer programs and cinematographic works, a Member shall provide
authors and their successors in title the right to authorize or to
prohibit the commercial rental to the public of originals or copies of
their copyright works. A Member shall be excepted from this obligation
in respect of cinematographic works unless such rental has led to
widespread copying of such works which is materially impairing the
exclusive right of reproduction conferred in that Member on authors and
their successors in title. In respect of computer programs, this
obligation does not apply to rentals where the program itself is not the
essential object of the rental.
B. Interpretation and Application of
Article 11
No jurisprudence or decision of a competent WTO
body.
XIII. Article 12
back to top
A. Text of Article 12
Article 12: Term of Protection
Whenever the term of
protection of a work, other than a photographic work or a work of
applied art, is calculated on a basis other than the life of a natural
person, such term shall be no less than 50 years from the end of the
calendar year of authorized publication, or, failing such authorized
publication within 50 years from the making of the work, 50 years from
the end of the calendar year of making.
B. Interpretation and Application of
Article 12
No jurisprudence or decision of a competent WTO
body.
XIV. Article 13
back to top
A. Text of Article 13
Article 13: Limitations and Exceptions
Members shall confine
limitations or exceptions to exclusive rights to certain special cases
which do not conflict with a normal exploitation of the work and do not
unreasonably prejudice the legitimate interests of the right holder.
B. Interpretation and Application of
Article 13
1. General
(a) Scope
56. In US
— Section
110(5) Copyright Act, the Panel rejected a suggested limitation of
the scope of Article 13:
“In our view, neither the express wording nor
the context of Article 13 or any other provision of the TRIPS Agreement
supports the interpretation that the scope of application of Article 13
is limited to the exclusive rights newly introduced under the TRIPS
Agreement.”(49)
57. With respect to
the scope of Article 13, see paragraph 59 below.
58. In interpreting
Article 13, the Panel in US — Section 110(5) Copyright Act
outlined its interpretative approach to this provision, specified the
conditions for limitations or exceptions to exclusive rights and found
that these conditions apply cumulatively:
“Article 13 of the TRIPS Agreement requires that
limitations and exceptions to exclusive rights (1) be confined to
certain special cases, (2) do not conflict with a normal exploitation of
the work, and (3) do not unreasonably prejudice the legitimate interests
of the right holder. The principle of effective treaty interpretation
requires us to give a distinct meaning to each of the three conditions
and to avoid a reading that could reduce any of the conditions to ‘redundancy
or inutility’. The three conditions apply on a cumulative basis, 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 13 exception being disallowed. Both parties agree on the
cumulative nature of the three conditions. The Panel shares their view.
It may be noted at the outset that Article 13 cannot have more than a
narrow or limited operation. Its tenor, consistent as it is with the
provisions of Article 9(2) of the Berne Convention
(1971), discloses
that it was not intended to provide for exceptions or limitations except
for those of a limited nature. The narrow sphere of its operation will
emerge from our discussion and application of its provisions in the
paragraphs which follow.”(50)
(b) Relationship with other Articles
59. In US
— Section
110(5) Copyright Act, the Panel made a finding on the scope of
application of Article 13 with respect to individual subparagraphs of
Articles 11 and 11bis of the Berne Convention
(1971):
“We conclude that Article 13 of the TRIPS
Agreement applies to Articles 11bis(1)(iii) and
11(1)(ii) of the
Berne Convention (1971) as incorporated into the TRIPS Agreement, given
that neither the express wording nor the context of Article 13 or any
other provision of the TRIPS Agreement supports the interpretation that
the scope of application of Article 13 is limited to the exclusive
rights newly introduced under the TRIPS Agreement.”(51)
60. The Panel also
clearly distinguished the different situations covered by Article 11bis(2)
of the Berne Convention (1971) and Article 13 of the TRIPS Agreement,
respectively:
“We believe that Article 11bis(2) of the
Berne Convention (1971) and Article 13 cover different situations. On
the one hand, Article 11bis(2) authorizes Members to determine
conditions under which the rights conferred by Article 11bis(1)(i-iii)
may be exercised. The imposition of such conditions may completely
replace the free exercise of the exclusive right of authorizing the use
of the rights embodied in subparagraphs
(i-iii) provided that equitable
remuneration and the author’s moral rights are not prejudiced.
However, unlike Article 13 of the TRIPS Agreement,
Article 11bis(2)
of the Berne Convention (1971) would not in any case justify use free of
charge.
On the other hand, it is sufficient that a
limitation or an exception to the exclusive rights provided under
Article 11bis(1) of the Berne Convention (1971) as incorporated
into the TRIPS Agreement meets the three conditions contained in its
Article 13 to be permissible. If these three conditions are met, a
government may choose between different options for limiting the right
in question, including use free of charge and without an authorization
by the right holder. This is not in conflict with any of the paragraphs
of Article 11bis because use free of any charge may be permitted
for minor exceptions by virtue of the minor exceptions doctrine which
applies, inter alia, also to Article 11bis.
As regards situations that would not meet the
above-mentioned three conditions, a government may not justify an
exception, including one involving use free of charge, by Article 13 of
the TRIPS Agreement. However, also in these situations Article 11bis(2)
of the Berne Convention (1971) as incorporated into the TRIPS Agreement
would nonetheless allow Members to substitute, for an exclusive right, a
compulsory licence, or determine other conditions provided that they
were not prejudicial to the right holder’s right to obtain an
equitable remuneration.”(52)
61. In the same
context, the Panel considered that a reading of Articles 11bis(2) of the
Berne Convention (1971) and Article 13 of the TRIPS Agreement which did
not differentiate the situations covered respectively by these
provisions, would render Article 13 “somewhat redundant”:
“We believe that our interpretation gives
meaning and effect to Article 11bis(2), the minor exceptions doctrine as
it applies to Article 11bis, and
Article 13. However, in our view, under
the interpretation suggested by the European Communities this would not
be the case, e.g., in the following situations. If any de minimis
exception from rights conferred by Article 11bis(1)(i-iii) were subject
to the requirement to provide equitable remuneration within the meaning
of Article 11bis(2), no exemption whatsoever from the rights recognized
by Article 11bis(1) could permit use free of charge even if the three
criteria of Article 13 were met. As a result, narrow exceptions or
limitations would be subject to the three conditions of Article 13 in
addition to the requirement to provide equitable remuneration. At the
same time, broader exceptions or limitations which do not comply with
the criteria of Article 13 could arguably still be justified under
Article 11bis(2) as long as the conditions imposed ensure, inter
alia,
equitable remuneration. Such an interpretation could render Article 13
somewhat redundant because narrow exceptions would be subject to all the
requirements of Article 13 and Article 11bis(2) on a cumulative basis,
while for broader exceptions compliance with Article 11bis(2) could
suffice. Both situations would lead to the result that any use free of
charge would not be permissible. These examples are illustrative of
situations where the terms and conditions of Article
13, Article 11bis(2) and the minor exceptions doctrine would not be given full
meaning and effect.”(53)
62. With respect to
the relationship of Article 13 to Article 9(2) of the Berne Convention
(1971) and Articles 17, 26.2 and
30 of the TRIPS Agreement, see footnote
104.
(c) “certain special cases”
63. In
US — Section
110(5) Copyright Act, the Panel interpreted the meaning of the phrase
“certain special cases”, the first condition in Article 13:
“In our view, the first condition of Article 13
requires that a limitation or exception in national legislation should
be clearly defined and should be narrow in its scope and reach. On the
other hand, a limitation or exception may be compatible with the first
condition even if it pursues a special purpose whose underlying
legitimacy in a normative sense cannot be discerned. The wording of
Article 13’s first condition does not imply passing a judgment on the
legitimacy of the exceptions in dispute. However, public policy purposes
stated by law-makers when enacting a limitation or exception may be
useful from a factual perspective for making inferences about the scope
of a limitation or exception or the clarity of its definition.”(54)
64. The Panel also
addressed the relevance of whether the measure at issue had as its
declared aim a legitimate public policy:
“As regards the parties’ arguments on whether
the public policy purpose of an exception is relevant, we believe that
the term ‘certain special cases’ should not lightly be equated with
‘special purpose’.(55) It is difficult to reconcile the wording of
Article 13 with the proposition that an exception or limitation must be
justified in terms of a legitimate public policy purpose in order to
fulfill the first condition of the Article. We also recall in this
respect that in interpreting other WTO rules, such as the national
treatment clauses of the GATT and the GATS, the Appellate Body has
rejected interpretative tests which were based on the subjective aim or
objective pursued by national legislation.(56)”(57)
65. The Panel
subsequently applied the above quoted standard under Article 13 to
examine whether the United States’ measure at issue in US — Section
110(5) Copyright Act met the first condition of “certain special cases”:
“[W]e first examine whether the exceptions have
been clearly defined. Second, we ascertain whether the exemptions are
narrow in scope, inter alia, with respect to their reach. In that
respect, we take into account what percentage of eating and drinking
establishments and retail establishments may benefit from the business
exemption under subparagraph
(B), and in turn what percentage of
establishments may take advantage of the homestyle exemption under
subparagraph (A). On a subsidiary basis, we consider whether it is
possible to draw inferences about the reach of the business and
homestyle exemptions from the stated policy purposes underlying these
exemptions according to the statements made during the US legislative
process.”(58)
(d) “do not conflict with a normal
exploitation of the work”
66. In
US — Section
110(5) Copyright Act, in examining the second condition under Article
13, i.e. “do not conflict with a normal exploitation of the work”,
the Panel first sought a definition for the term “exploitation” :
“The ordinary meaning of the term ‘exploit’
connotes ‘making use of’ or ‘utilising for one’s own ends’. We
believe that ‘exploitation’ of musical works thus refers to the
activity by which copyright owners employ the exclusive rights conferred
on them to extract economic value from their rights to those works.”(59)
67. The Panel then
proceeded to provide an interpretation of the term “normal”:
“We note that the ordinary meaning of the term
‘normal’ can be defined as ‘constituting or conforming to a type
or standard; regular, usual, typical, ordinary, conventional …’. In
our opinion, these definitions appear to reflect two connotations: the
first one appears to be of an empirical nature, i.e., what is regular,
usual, typical or ordinary. The other one reflects a somewhat more
normative, if not dynamic, approach, i.e., conforming to a type or
standard. We do not feel compelled to pass a judgment on which one of
these connotations could be more relevant. Based on Article 31 of the
Vienna Convention, we will attempt to develop a harmonious
interpretation which gives meaning and effect to both connotations of
‘normal’.
If ‘normal’ exploitation were equated with
full use of all exclusive rights conferred by copyrights, the exception
clause of Article 13 would be left devoid of meaning. Therefore, ‘normal’
exploitation clearly means something less than full use of an exclusive
right.(60)”(61)
68. The Panel then
endorsed a differentiated examination of whether a limitation or an
exception conflicts with the normal exploitation of a work:
“We agree with the European Communities that
whether a limitation or an exception conflicts with a normal
exploitation of a work should be judged for each exclusive right
individually.”(62)
69. The Panel also
indicated that when assessing the meaning of “normal exploitation”,
it would consider both empirical and normative criteria:
“In our view, this test [whether there are areas
of the market in which the copyright owner would ordinarily expect to
exploit the work, but which are not available for exploitation because
of this exemption] seems to reflect the empirical or quantitative aspect
of the connotation of ‘normal’, the meaning of ‘regular, usual,
typical or ordinary’. We can, therefore, accept this US approach, but
only for the empirical or quantitative side of the connotation. We have
to give meaning and effect also to the second aspect of the connotation,
the meaning of ‘conforming to a type or standard’. We described this
aspect of normalcy as reflecting a more normative approach to defining
normal exploitation, that includes, inter alia, a dynamic element
capable of taking into account technological and market developments.
The question then arises how this normative aspect of ‘normal’
exploitation could be given meaning in relation to the exploitation of
musical works.
…
Thus it appears that one way of measuring the
normative connotation of normal exploitation is to consider, in addition
to those forms of exploitation that currently generate significant or
tangible revenue, those forms of exploitation which, with a certain
degree of likelihood and plausibility, could acquire considerable
economic or practical importance.”(63)
70. After exploring
the two different connotations of the term “normal exploitation”,
the Panel then set forth a test for “normal exploitation” based on
the consideration of “economic competition” and “market conditions”:
“We believe that an exception or limitation to
an exclusive right in domestic legislation rises to the level of a
conflict with a normal exploitation of the work (i.e., the copyright or
rather the whole bundle of exclusive rights conferred by the ownership
of the copyright), if uses, that in principle are covered by that right
but exempted under the exception or limitation, enter into economic
competition with the ways that right holders normally extract economic
value from that right to the work (i.e., the copyright) and thereby
deprive them of significant or tangible commercial gains.
In developing a benchmark for defining the
normative connotation of normal exploitation, we recall the European
Communities’ emphasis on the potential impact of an exception rather
than on its actual effect on the market at a given point in time, given
that, in its view, it is the potential effect that determines the market
conditions.
…
We base our appraisal of the actual and potential
effects on the commercial and technological conditions that prevail in
the market currently or in the near future. What is a normal
exploitation in the market-place may evolve as a result of technological
developments or changing consumer preferences. Thus, while we do not
wish to speculate on future developments, we need to consider the actual
and potential effects of the exemptions in question in the current
market and technological environment.
We do acknowledge that the extent of exercise or
non-exercise of exclusive rights by right holders at a given point in
time is of great relevance for assessing what is the normal exploitation
with respect to a particular exclusive right in a particular market.
However, in certain circumstances, current licensing practices may not
provide a sufficient guideline for assessing the potential impact of an
exception or limitation on normal exploitation. For example, where a
particular use of works is not covered by the exclusive rights conferred
in the law of a jurisdiction, the fact that the right holders do not
license such use in that jurisdiction cannot be considered indicative of
what constitutes normal exploitation. The same would be true in a
situation where, due to lack of effective or affordable means of
enforcement, right holders may not find it worthwhile or practical to
exercise their rights.”(64)
(e) “do not unreasonably prejudice the
legitimate interests of the right holder”
71. In
US — Section
110(5) Copyright Act, in examining the third condition under Article
13,
i.e. the phrase “do not unreasonably prejudice the legitimate
interests of the right holder”, the Panel distinguished several steps
in the analysis of this requirement:
“We note that the analysis of the third
condition of Article 13 of the TRIPS Agreement implies several steps.
First, one has to define what are the ‘interests’ of right holders
at stake and which attributes make them ‘legitimate’. Then, it is
necessary to develop an interpretation of the term ‘prejudice’ and
what amount of it reaches a level that should be considered ‘unreasonable’.”(65)
72. The Panel then
proceeded to examine each of these terms in turn and began with their
ordinary meaning:
“The ordinary meaning of the term ‘interests’
may encompass a legal right or title to a property or to use or benefit
of a property (including intellectual property). It may also refer to a
concern about a potential detriment or advantage, and more generally to
something that is of some importance to a natural or legal person.
Accordingly, the notion of ‘interests’ is not necessarily limited to
actual or potential economic advantage or detriment.
The term ‘legitimate’ has the meanings of
‘(a) conformable to,
sanctioned or authorized by, law or principle; lawful; justifiable;
proper;
(b) normal, regular,
conformable to a recognized standard type.’
Thus, the term relates to lawfulness from a legal
positivist perspective, but it has also the connotation of legitimacy
from a more normative perspective, in the context of calling for the
protection of interests that are justifiable in the light of the
objectives that underlie the protection of exclusive rights.
We note that the ordinary meaning of ‘prejudice’
connotes damage, harm or injury. ‘Not unreasonable’ connotes a
slightly stricter threshold than ‘reasonable’. The latter term means
‘proportionate’, ‘within the limits of reason, not greatly less or
more than might be thought likely or appropriate’, or ‘of a fair,
average or considerable amount or size’.”(66)
73. After considering
the ordinary meaning of the individual terms of the phrase “do not
unreasonably prejudice the legitimate interests of the right holder”,
the Panel considered these terms more specifically:
“Given that the parties do not question the ‘legitimacy’
of the interest of right holders to exercise their rights for economic
gain, the crucial question becomes which degree or level of ‘prejudice’
may be considered as ‘unreasonable’. Before dealing with the
question of what amount or which kind of prejudice reaches a level
beyond reasonable, we need to find a way to measure or quantify
legitimate interests.
In our view, one — albeit incomplete and thus
conservative — way of looking at legitimate interests is the economic
value of the exclusive rights conferred by copyright on their holders.
It is possible to estimate in economic terms the value of exercising,
e.g., by licensing, such rights. That is not to say that legitimate
interests are necessarily limited to this economic value.
In examining the second condition of Article
13,
we have addressed the US argument that the prejudice to right holders
caused by the exemptions at hand are minimal because they already
receive royalties from broadcasting stations. We concluded that each
exclusive right conferred by copyright, inter alia, under each
subparagraph of Articles 11bis and
11 of the Berne Convention (1971),
has to be considered separately for the purpose of examining whether a
possible conflict with a ‘normal exploitation’ exists.
The crucial question is which degree or level of
‘prejudice’ may be considered as ‘unreasonable’, given that,
under the third condition, a certain amount of ‘prejudice’ has to be
presumed justified as ‘not unreasonable’. In our view, prejudice to
the legitimate interests of right holders reaches an unreasonable level
if an exception or limitation causes or has the potential to cause an
unreasonable loss of income to the copyright owner.”(67)
74. The Panel
indicated that the “reasonableness” of the prejudice to the right
holder should not be assessed only with respect to the parties of the
dispute at hand:
“However, given our considerations above, our
assessment of whether the prejudice, caused by the exemptions contained
in Section 110(5), to the legitimate interests of the right holder is of
an unreasonable level is not limited to the right holders of the
European Communities.”(68)
75. With respect to
its methodology for examination of the existence of a prejudice, the
Panel stated that it would consider information on market conditions and
consider both actual and potential effects:
“We will consider the information on market
conditions provided by the parties taking into account, to the extent
feasible, the actual as well as the potential prejudice caused by the
exemptions, as a prerequisite for determining whether the extent or
degree of prejudice is of an unreasonable level. In these respects, we
recall our consideration above that taking account of actual as well as
potential effects is consistent with past GATT/WTO dispute settlement
practice.
…
[I]n considering the prejudice to the legitimate
interests of right holders caused by the business exemption, we have to
take into account not only the actual loss of income from those
restaurants that were licensed by the CMOs at the time that the
exemption become effective, but also the loss of potential revenue from
other restaurants of similar size likely to play music that were not
licensed at that point.”(69)
XV. Article 14
back to top
A. Text of
Article 14
Article 14: Protection of Performers,
Producers of Phonograms (Sound Recordings) and Broadcasting
Organizations
1. In respect of a
fixation of their performance on a phonogram, performers shall have the
possibility of preventing the following acts when undertaken without
their authorization: the fixation of their unfixed performance and the
reproduction of such fixation. Performers shall also have the
possibility of preventing the following acts when undertaken without
their authorization: the broadcasting by wireless means and the
communication to the public of their live performance.
2. Producers of phonograms
shall enjoy the right to authorize or prohibit the direct or indirect
reproduction of their phonograms.
3. Broadcasting
organizations shall have the right to prohibit the following acts when
undertaken without their authorization: the fixation, the reproduction
of fixations, and the rebroadcasting by wireless means of broadcasts, as
well as the communication to the public of television broadcasts of the
same. Where Members do not grant such rights to broadcasting
organizations, they shall provide owners of copyright in the subject
matter of broadcasts with the possibility of preventing the above acts,
subject to the provisions of the Berne Convention (1971).
4. The provisions of
Article 11 in respect of computer programs shall apply mutatis mutandis
to producers of phonograms and any other right holders in phonograms as
determined in a Member’s law. If on 15 April 1994 a Member has in
force a system of equitable remuneration of right holders in respect of
the rental of phonograms, it may maintain such system provided that the
commercial rental of phonograms is not giving rise to the material
impairment of the exclusive rights of reproduction of right holders.
5. The term of the
protection available under this Agreement to performers and producers of
phonograms shall last at least until the end of a period of 50 years
computed from the end of the calendar year in which the fixation was
made or the performance took place. The term of protection granted
pursuant to paragraph 3 shall last for at least 20 years from the end of
the calendar year in which the broadcast took place.
6. Any Member may, in
relation to the rights conferred under paragraphs
1, 2 and
3, provide
for conditions, limitations, exceptions and reservations to the extent
permitted by the Rome Convention. However, the provisions of Article 18
of the Berne Convention (1971) shall also apply, mutatis mutandis, to
the rights of performers and producers of phonograms in phonograms.
B. Interpretation and Application of
Article 14
No jurisprudence or decision of a competent WTO
body.
Section 2: Trademarks
XVI. Article 15
back to top
A. Text of Article 15
Article 15: Protectable Subject Matter
1. Any sign, or any
combination of signs, capable of distinguishing the goods or services of
one undertaking from those of other undertakings, shall be capable of
constituting a trademark. Such signs, in particular words including
personal names, letters, numerals, figurative elements and combinations
of colours as well as any combination of such signs, shall be eligible
for registration as trademarks. Where signs are not inherently capable
of distinguishing the relevant goods or services, Members may make
registrability depend on distinctiveness acquired through use. Members
may require, as a condition of registration, that signs be visually
perceptible.
2.
Paragraph 1 shall not
be understood to prevent a Member from denying registration of a
trademark on other grounds, provided that they do not derogate from the
provisions of the Paris Convention (1967).
3. Members may make
registrability depend on use. However, actual use of a trademark shall
not be a condition for filing an application for registration. An
application shall not be refused solely on the ground that intended use
has not taken place before the expiry of a period of three years from
the date of application.
4. The nature of the goods
or services to which a trademark is to be applied shall in no case form
an obstacle to registration of the trademark.
5. Members shall publish
each trademark either before it is registered or promptly after it is
registered and shall afford a reasonable opportunity for petitions to
cancel the registration. In addition, Members may afford an opportunity
for the registration of a trademark to be opposed.
B. Interpretation and Application of
Article 15
1. Article 15.1
76. In
US — Section
211 Appropriations Act, the Appellate Body rejected an argument that
Members must register trademarks that meet the requirements of Article
15.1:
“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.
…
In our view, Article 15.1 of the TRIPS Agreement
limits the right of Members to determine the ‘conditions’ for filing
and registration of trademarks under their domestic legislation pursuant
to Article 6(1) [of the Paris Convention (1967) as incorporated in the
TRIPS Agreement] only as it relates to the distinctiveness requirements
enunciated in Article 15.1.”(70)
2. Article 15.2
77. In
US — Section
211 Appropriations Act, the Appellate Body found that paragraph 2 of
Article 15 permits Members to deny trademark registration on grounds
other than those expressly provided for in the TRIPS Agreement and the
Paris Convention (1967):
“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….
…
… 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.
[We] conclude also that ‘other grounds’ for
the denial of registration within the meaning of Article 15.2 of the
TRIPS Agreement are not limited to grounds expressly provided for in the
exceptions contained in the Paris Convention (1967) or the TRIPS
Agreement….”(71)
XVII. Article 16
back to top
A. Text of Article 16
Article 16: Rights Conferred
1. The owner of a
registered trademark shall have the exclusive right to prevent all third
parties not having the owner’s consent from using in the course of
trade identical or similar signs for goods or services which are
identical or similar to those in respect of which the trademark is
registered where such use would result in a likelihood of confusion. In
case of the use of an identical sign for identical goods or services, a
likelihood of confusion shall be presumed. The rights described above
shall not prejudice any existing prior rights, nor shall they affect the
possibility of Members making rights available on the basis of use.
2. Article 6bis of the
Paris Convention (1967) shall apply, mutatis mutandis, to services. In
determining whether a trademark is well-known, Members shall take
account of the knowledge of the trademark in the relevant sector of the
public, including knowledge in the Member concerned which has been
obtained as a result of the promotion of the trademark.
3. Article 6bis of the
Paris Convention (1967) shall apply, mutatis mutandis, to goods or
services which are not similar to those in respect of which a trademark
is registered, provided that use of that trademark in relation to those
goods or services would indicate a connection between those goods or
services and the owner of the registered trademark and provided that the
interests of the owner of the registered trademark are likely to be
damaged by such use.
B. Interpretation and Application of
Article 16
1. General
78. In its review
under Article 24.2 concerning the application of the provisions from the
Section of the TRIPS Agreement on geographical indications, the Council
for TRIPS invited Members to respond to a Checklist of Questions, some
of which relate to Article 16. See paragraph 87 below.
2. Article 16.1
(a) “The owner”
79. In
US — Section
211 Appropriations Act, the Appellate Body found that the TRIPS
Agreement does not contain a provision that determines who owns or who
does not own a trademark:
“As we read it, 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.
…
[W]e 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.”(72)
(b) “making rights available on the basis of
use”
80. In
US — Section
211 Appropriations Act, the Appellate Body rejected an argument that the
holder of a trademark registration must, under Article 16.1, be
considered the owner of the trademark until such time as it ceases to
hold the registration:
“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.”(73)
XVIII. Article 17
back to top
A. Text of Article 17
Article 17: Exceptions
Members may provide
limited exceptions to the rights conferred by a trademark, such as fair
use of descriptive terms, provided that such exceptions take account of
the legitimate interests of the owner of the trademark and of third
parties.
B. Interpretation and Application of
Article 17
81. With respect to
the relationship of Article 17 to Article 9(2) of the Berne Convention
(1971) and Articles 13, 26.2 and
30 of the TRIPS Agreement, see footnote
104.
XIX. Article 18
back to top
A. Text of Article 18
Article 18: Term of Protection
Initial registration, and
each renewal of registration, of a trademark shall be for a term of no
less than seven years. The registration of a trademark shall be
renewable indefinitely.
B. Interpretation and Application of
Article 18
No jurisprudence or decision of a competent WTO
body.
XX. Article 19
back to top
A. Text of Article 19
Article 19: Requirement of Use
1. If use is required to
maintain a registration, the registration may be cancelled only after an
uninterrupted period of at least three years of non-use, unless valid
reasons based on the existence of obstacles to such use are shown by the
trademark owner. Circumstances arising independently of the will of the
owner of the trademark which constitute an obstacle to the use of the
trademark, such as import restrictions on or other government
requirements for goods or services protected by the trademark, shall be
recognized as valid reasons for non-use.
2. When subject to the
control of its owner, use of a trademark by another person shall be
recognized as use of the trademark for the purpose of maintaining the
registration.
B. Interpretation and Application of
Article 19
No jurisprudence or decision of a competent WTO
body.
Footnotes:
1. Appellate Body Report on
India — Patents (US), para. 57. back to text
2. Appellate Body Report on
India — Patents (US), para. 59.
back to text
3. Panel Report on Canada — Patent Term, para. 6.94.
back to text
4. Appellate Body Report on US — Section 211 Appropriations
Act,
para. 335. back to text
5. The text of Articles
1-12 and 19 of the Paris Convention
appears in Section LXXV. back to text
6. Appellate Body Report on US — Section 211 Appropriations
Act,
paras. 336, 337 and 341. back to text
7. Appellate Body Report on US — Section 211 Appropriations
Act,
paras. 175-176. back to text
8. Panel Report on US — Section 211 Appropriations Act, para.
8.120. back to text
9. Decision of the Council for TRIPS, document IP/C/7.
back to text
10. The text of the Agreement can be found in IP/C/6.
back to text
11. Appellate Body Report on US — Section 211 Appropriations
Act,
para. 147. back to text
12. Appellate Body Report on US — Section 211 Appropriations
Act,
paras. 338 and 341. back to text
13. Appellate Body Report on US — Section 211 Appropriations
Act,
para. 359. back to text
14. Decision by the Arbitrators on EC — Bananas (Ecuador)
(Article 22.6 — EC), para. 149. back to text
15. Panel Report on Indonesia — Autos, para. 14.268.
back to text
16. Panel Report on Indonesia — Autos, para. 14.271.
back to text
17. Panel Report on Indonesia — Autos, para. 14.273.
back to text
18. Panel Report on Indonesia — Autos, paras. 14.275-14.276.
back to text
19. Appellate Body Report on US — Section 211 Appropriations
Act,
paras. 261-263, quoting from GATT Panel Report, US — Section 337, paras.
5.11, 5.12 and 5.19. back to text
20. Appellate Body Report on US — Section 211 Appropriations
Act,
para. 286. back to text
21. Appellate Body Report on US — Section 211 Appropriations
Act,
para. 294. back to text
22. Appellate Body Report on US — Section 211 Appropriations
Act,
para. 289. back to text
23. Appellate Body Report on US — Section 211 Appropriations
Act,
para. 265. back to text
24. Appellate Body Report on US — Section 211 Appropriations
Act,
paras. 352-356. back to text
25. IP/C/M/12, paras. 10-16. The format can be found in IP/C/9.
back to text
26. Appellate Body Report on US — Section 211 Appropriations
Act,
para. 242. back to text
27. Appellate Body Report on US — Section 211 Appropriations
Act,
para. 314. back to text
28. Appellate Body Report on US — Section 211 Appropriations
Act,
para. 317. back to text
29. Appellate Body Report on US — Section 211 Appropriations
Act,
paras. 352, 353 and 357. back to text
30. See document IP/C/9. back to text
31. Panel Report on US — Section 110(5) Copyright Act, paras.
6.17-6.18. back to text
32. Panel Report on US — Section 110(5) Copyright Act, para.
6.41. back to text
33. Panel Report on US — Section 110(5) Copyright Act, para.
6.66. back to text
34. Panel Report on US — Section 110(5) Copyright Act, para.
6.70. back to text
35. (footnote original) However, public performance by means of
cinematographic works is separately covered in Article 14(1)(ii) of the
Berne Convention. Public performance of a literary work or communication
to the public of the recitation is covered by Article 11ter of the Berne
Convention. back to text
36. Panel Report on US — Section 110(5) Copyright Act, para.
6.24. back to text
37. Panel Report on US — Section 110(5) Copyright Act, para.
6.51. back to text
38. (footnote original) Article 1.1 of the TRIPS Agreement
makes clear that “Members shall give effect to the provisions of the
[TRIPS] Agreement.” Members must, therefore, implement in their
domestic law the protection required by the TRIPS Agreement. Moreover,
Article 1.3 of the TRIPS Agreement provides in relevant part that “Members
shall accord the treatment provided for in this Agreement to the
nationals of other Members.” (footnote omitted) This confirms that the
exclusive rights conferred by Articles 11bis(1)(iii) and
11(1)(ii) must
be granted to EC right holders. back to text
39. Award of the Arbitrator on US — Section 110(5) Copyright Act
(Article 25.3), para. 3.15. back to text
40. Panel Report on US — Section 110(5) Copyright Act, para.
6.25. back to text
41. Panel Report on US — Section 110(5) Copyright Act, paras.
6.20-6.22. back to text
42. (footnote original) Article 1.1 of the TRIPS Agreement
makes clear that “Members shall give effect to the provisions of the
[TRIPS] Agreement.” Members must, therefore, implement in their
domestic law the protection required by the TRIPS Agreement. Moreover,
Article 1.3 of the TRIPS Agreement provides in relevant part that “Members
shall accord the treatment provided for in this Agreement to the
nationals of other Members.” (footnote omitted) This confirms that the
exclusive rights conferred by Articles 11bis(1)(iii) and
11(1)(ii) must
be granted to EC right holders. back to text
43. Award of the Arbitrator on US — Section 110(5) Copyright Act
(Article 25.3), para. 3.15. back to text
44. Panel Report on US — Section 110(5) Copyright Act, para.
6.95. back to text
45. Panel Report on US — Section 110(5) Copyright Act, paras.
6.57-6.58. back to text
46. Panel Report on US — Section 110(5) Copyright Act, paras.
6.60 and 6.63. back to text
47. Panel Report on US — Section 110(5) Copyright Act, para.
6.82. back to text
48. IP/C/M/19, para. 8; IP/C/14. back to text
49. Panel Report on US — Section 110(5) Copyright Act, para.
6.80. back to text
50. Panel Report on US — Section 110(5) Copyright Act, para.
6.97. back to text
51. Panel Report on US — Section 110(5) Copyright Act, para.
6.94. back to text
52. Panel Report on US — Section 110(5) Copyright Act, paras.
6.87-6.89. back to text
53. Panel Report on US — Section 110(5) Copyright Act, para.
6.90. back to text
54. Panel Report on US — Section 110(5) Copyright Act, para.
6.112. back to text
55. (footnote original) We note that the term “special
purpose” has been referred to in interpreting the largely similarly
worded Article 9(2) of the Berne Convention
(1971). See Ricketson, The
Berne Convention, op. cit., p. 482. We are ready to take into account
“teachings of the most highly qualified publicists of the various
nations” as a “subsidiary source for the determination of law”. We
refer to this phrase in the sense of Article 38(d) of the Statute of the
International Court of Justice which refers to such “teachings” (or
in French “la doctrine”) as “subsidiary means for the
determination of law”. But we are cautious to use the interpretation
of a term developed in the context of an exception for the reproduction
right for interpreting the same terms in the context of a largely
similarly worded exception for other exclusive rights conferred by
copyrights. back to text
56. (footnote original) See Appellate Body Report on Japan
— Alcoholic Beverages, pp. 19-23, for the rejection of the so-called “aims
and effects” test in the context of the national treatment clause of
Article III of GATT 1994. See also the Appellate Body Report on EC
— Bananas III, paras. 241, 243, 246, for the rejection of the “aims-and-effects”
test in the context of the national treatment clause of Article XVII of
GATS. back to text
57. Panel Report on US — Section 110(5) Copyright Act, para.
6.111. back to text
58. Panel Report on US — Section 110(5) Copyright Act, para.
6.113. back to text
59. Panel Report on US — Section 110(5) Copyright Act, para.
6.165. back to text
60. (footnote original) In the context of exceptions to
reproduction rights under Article 9(2) of the Berne Convention (1971)
— whose second condition is worded largely identically to the second
condition of Article 13 of the TRIPS Agreement — the Main Committee I of
the Stockholm Diplomatic Conference (1967) stated:
“If it is considered that reproduction
conflicts with the normal exploitation of the work, reproduction is not
permitted at all. If it is considered that reproduction does not
conflict with the normal exploitation of the work, the next step would
be to consider whether it does not unreasonably prejudice the legitimate
interests of the author. Only if such is not the case would it be
possible in certain special cases to introduce a compulsory licence, or
to provide for use without payment. A practical example may be
photocopying for various purposes. If it consists of producing a very
large number of copies, it may not be permitted, as it conflicts with a
normal exploitation of the work. If it implies a rather large number of
copies for use in industrial undertakings, it may not unreasonably
prejudice the legitimate interests of the author, provided that,
according to national legislation, an equitable remuneration is paid. If
a small number of copies is made, photocopying may be permitted without
payment, particularly for individual or scientific use.”
See the Records of the Intellectual Property
Conference of Stockholm, 11 June — 14 July 1967. Report on the Work of
the Main Committee I (Substantive Provisions of the Berne Convention:
Articles 1-20). As reproduced in the Berne Convention Centenary, p. 197.
back to text
61. Panel Report on
US — Section 110(5) Copyright Act, paras.
6.166-6.167. back to text
62. Panel Report on US — Section 110(5) Copyright Act, para.
6.173. back to text
63. Panel Report on US — Section 110(5) Copyright Act, paras.
6.178 and 6.180. back to text
64. Panel Report on US — Section 110(5) Copyright Act, paras.
6.183-6.184 and 6.187-6.188. back to text
65. Panel Report on US — Section 110(5) Copyright Act, para.
6.222. back to text
66. Panel Report on US — Section 110(5) Copyright Act, paras.
6.223-6.225. back to text
67. Panel Report on US — Section 110(5) Copyright Act, paras.
6.226-6.229. back to text
68. Panel Report on US — Section 110(5) Copyright Act, para.
6.235. back to text
69. Panel Report on US — Section 110(5) Copyright Act, paras.
6.236 and 6.249. back to text
70. Appellate Body Report on US — Section 211 Appropriations
Act,
paras. 156 and 165. back to text
71. Appellate Body Report on US — Section 211 Appropriations
Act,
paras. 171, 177 and 178. back to text
72. Appellate Body Report on US — Section 211 Appropriations
Act,
paras. 186, 187 and 195. back to text
73. Appellate Body Report on US — Section 211 Appropriations
Act,
para. 199. back to text
|
