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WTO ANALYTICAL INDEX: TRIPS

Agreement on Trade-Related Aspects of Intellectual Property Rights

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> Preamble
> Article 1
> Article 2 and Incorporated Provisions of the Paris Convention (1967)
> Article 3
> Article 4
> Article 5
> Article 6
> Article 7
> Article 8
> Article 9 and Incorporated Provisions of the Berne Convention (1971)
> Article 10
> Article 11
> Article 12
> Article 13
> Article 14
> Article 15
> Article 16
> Article 17
> Article 18
> Article 19
> Article 20
> Article 21
> Article 22
> Article 23
> Article 24
> Article 25
> Article 26
> Article 27
> Article 28
> Article 29
> Article 30
> Article 31
> Article 32
> Article 33
> Article 34
> Article 35 and Incorporated Provisions of the IPIC Treaty
> Article 36
> Article 37
> Article 38
> Article 39
> Article 40
> Article 41
> Article 42
> Article 43
> Article 44
> Article 45
> Article 46
> Article 47
> Article 48
> Article 49
> Article 50
> Article 51
> Article 52
> Article 53
> Article 54
> Article 55
> Article 56
> Article 57
> Article 58
> Article 59
> Article 60
> Article 61
> Article 62
> Article 63
> Article 64
> Article 65
> Article 66
> Article 67
> Article 68
> Article 69
> Article 70
> Article 71
> Article 72
> Article 73
> Text of the Provisions of the Paris Convention (1967) Incorporated by Article 2.1 of the TRIPS Agreement
> Text of the Provisions of the Berne Convention (1971) Incorporated by Article 9.1 of the TRIPS Agreement
> Text of the Provisions of the IPIC Treaty Incorporated by Article 35 of the TRIPS Agreement
> Text of the Declaration on the TRIPS Agreement and Public Health

 

> Analytical Index main page


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), 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)

2.     In EC — Trademarks and Geographical Indications, the Panel referred to the preamble to confirm its observation that the text of the national treatment obligation in Article 3.1 of the TRIPS Agreement combines elements both from pre-existing intellectual property conventions and GATT 1994:

“It is useful to recall that Article 3.1 of the TRIPS Agreement combines elements of national treatment both from pre-existing intellectual property agreements and GATT 1994. (…) This combination of elements is reflected in the preamble to the TRIPS Agreement which explains the purpose of the “basic principles” in Articles 3 and 4 (a term highlighted in the title of Part I)

 

“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;”(2)

3.     In EC — Trademarks and Geographical Indications, the Panel referred inter alia to the preamble to ascertain the object and purpose of the TRIPS Agreement:

“The ordinary meaning of the terms in their context must also be interpreted in light of the object and purpose of the agreement. The object and purpose of the TRIPS Agreement, as indicated by Articles 9 through 62 and 70 and reflected in the preamble, includes the provision of adequate standards and principles concerning the availability, scope, use and enforcement of trade-related intellectual property rights. This confirms that a limitation on the standards for trademark or GI protection should not be implied unless it is supported by the text.”(3)

4.     In EC — Trademarks and Geographical Indications, the Panel referred to the preamble to confirm its view that “interested parties” for the purposes of Article 22.2 can be “private parties”:

Article 1.3 provides that “Members shall accord the treatment provided for in this Agreement to the nationals of other Members”. That includes the protection provided for in Article 22.2, which obliges Members to provide legal means for “interested parties”. The interested parties must qualify as “nationals of other Members” in accordance with the criteria referred to in Article 1.3. These persons can be private parties, which is reflected in the fourth recital of the preamble to the agreement, which reads “[r]ecognizing that intellectual property rights are private rights”.”(4)

 

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) General

5.     In China — Intellectual Property Rights, the Panel considered that the overall language of Article 1.1 cannot justify derogations from the obligations Members have under the TRIPS Agreement with respect to its provisions on IP enforcement:

“The first sentence of Article 1.1 sets out the basic obligation that Members “shall give effect” to the provisions of this Agreement. This means that the provisions of the Agreement are obligations where stated, and the first sentence of Article 61 so states. The second sentence of Article 1.1 clarifies that the provisions of the Agreement are minimum standards only, in that it gives Members the freedom to implement a higher standard, subject to a condition. The third sentence of Article 1.1 does not grant Members freedom to implement a lower standard, but rather grants freedom to determine the appropriate method of implementation of the provisions to which they are required to give effect under the first sentence. The Panel agrees that differences among Members’ respective legal systems and practices tend to be more important in the area of enforcement. However, a coherent reading of the three sentences of Article 1.1 does not permit differences in domestic legal systems and practices to justify any derogation from the basic obligation to give effect to the provisions on enforcement.”(5)

(b) “Members shall give effect to the provisions of this Agreement”

6.     In EC — Trademarks and Geographical Indications (Australia), the Panel considered a claim that a WTO Member is obliged to give effect to the provisions of the TRIPS Agreement before it is able to offer more extensive protection for one particular category of intellectual property right. The Panel noted that a Member is obliged to give effect to the provisions of the Agreement with respect to each category of intellectual property right irrespective of whether it implements more extensive protection, then exercised judicial economy:

“The Panel notes that the first sentence creates an obligation for Members to give effect to the provisions of the TRIPS Agreement and the second sentence recognizes Members’ freedom to implement more extensive protection, subject to a condition. After the expiry of the transitional arrangements in Articles 65 and 66 (and 70.8 and 70.9), as applicable, a Member is obliged to give effect to the provisions of the Agreement with respect to each category of intellectual property right, irrespective of whether it implements more extensive protection in the same or another category of intellectual property right.”(6)

(c) “free to determine the appropriate method of implementing”

7.     In India — Patents (US), the Appellate Body reviewed the Panel’s finding 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.”(7)

8.     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 calculated 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 obligations 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.”(8)

9.     In EC — Trademarks and Geographical Indications (US), the Panel rejected a claim that a condition for GI protection requiring product inspections to take place not only in the country where protection was claimed, but also in the country of origin, forced other countries to adopt a particular set of rules to implement the TRIPS Agreement:

“To the extent that this claim concerns the inspection structures requirement for particular products, the Panel recognizes that these requirements may require inspections to take place not only within the European Communities but also within the territory of other WTO Members, for example, where the specifications concern production processes or other matters not related to the physical characteristics of the product itself. The evidence before the Panel does not disclose that these inspections concern other WTO Members’ system of protection but, rather, only compliance with the product specifications, which are a feature of the European Communities’ system of protection.

 

“Therefore, the evidence does not suggest that they are inconsistent with the freedom granted under the third sentence of Article 1.1. For this reason, the Panel rejects this claim.”(9)

10.     In EC — Trademarks and Geographical Indications (US), the Panel found that the European Communities was not obliged to ensure that one particular measure implemented Article 22.2:

“In accordance with Article 1.1, the European Communities is free to determine the appropriate method of implementing the provisions of the Agreement within its own legal system and practice. It is not obliged to ensure that this particular Regulation implements Article 22.2 where it has other measures that do so.”(10)

11.     In China — Intellectual Property Rights, the Panel considered the scope of the third sentence of Article 1.1:

“The third sentence of Article 1.1 does not grant Members freedom to implement a lower standard, but rather grants freedom to determine the appropriate method of implementation of the provisions to which they are required to give effect under the first sentence.”(11)

2. Article 1.2

12.     In US — Section 211 Appropriations Act, the Appellate Body disagreed with the Panel’s conclusion that the categories of intellectual property referred to in Article 1.2 are those referred to in the titles of Sections 1 through 7 of Part II:

“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.”(12)

13.     In EC — Trademarks and Geographical Indications, the Panel referred to the definition of “intellectual property” in Article 1.2 when interpreting that term as used in Article 3.1.(13)

14. In EC — Trademarks and Geographical Indications (US), the Panel also referred to the definition of “intellectual property” in Article 1.2 in relation to the obligations in Part III. See paragraph 198 below.

3. Article 1.3

(a) “Nationals of other Members”

15.     In EC — Trademarks and Geographical Indications, a dispute which concerned industrial property, the Panel found that the meaning of “nationals” in the phrase “nationals of other Members” was that understood in the Paris Convention (1967) and under public international law:

“With respect to the meaning of “nationals of other Members” for the purposes of the TRIPS Agreement, WTO Members have, through Article 1.3 of the TRIPS Agreement, incorporated the meaning of “nationals” as it was understood in the Paris Convention (1967) and under public international law. With respect to natural persons, they refer first to the law of the Member of which nationality is claimed. With respect to legal persons, each Member first applies its own criteria to determine nationality.”(14)

(b) “Criteria for eligibility for protection provided for in the Paris Convention (1967)”

16.     In EC — Trademarks and Geographical Indications, the Panel considered that Articles 2 and 3 of the Paris Convention (1967) set out “criteria for eligibility for protection” for the purposes of the TRIPS Agreement:

“In respect of the intellectual property rights relevant to this dispute, it is not disputed that the criteria for eligibility for protection that apply are those found in the Paris Convention (1967). Articles 2 and 3 of the Paris Convention (1967) provide how nationals and persons assimilated to nationals are to be treated. In the Panel’s view, these are “criteria for eligibility for protection” for the purposes of the TRIPS Agreement.”(15)

(c) Footnote 1 to Article 1.3

(i) “Separate customs territory Member of the WTO”

17.     In EC — Trademarks and Geographical Indications, the Panel interpreted the term “separate customs territory Member of the WTO” as used in footnote 1 and accepted that it did not apply to the European Communities:

“It is not disputed that the European Communities is a customs territory. The key word appears to be “separate”, which can be defined as follows:

 

“We highlight the definition “treat as distinct, (one thing)”, given that a “separate customs territory Member of the WTO” is one thing, and the word “distinct” corresponds to the term used in that phrase in the French and Spanish versions, which are equally authentic. It is not disputed that all Members of the WTO are separate, or distinct, from one another. Most Members that are not part of a customs union are a customs territory separate from other customs territories. The word “separate” would be redundant if this is all it meant. Logically, it must indicate a customs territory that is separate from another Member in some other way.

 

The context elsewhere in the WTO Agreement bears this out. The term “separate customs territory” is used in Article XXVI:5 of GATT 1994, which treats a separate customs territory as a territory for which a GATT Contracting Party, now a WTO Member, has international responsibility, and is distinguished from a metropolitan territory. It is also found in Article XXXIII of GATT 1994.

 

The object and purpose of the TRIPS Agreement includes the conferral of intellectual property protection on the nationals of WTO Members. Footnote 1 is a deeming provision for the purposes of nationality. This confirms that the reason for the inclusion of footnote 1 was that separate customs territories do not confer nationality and, hence, a supplementary definition was required.

 

The European Communities does not form a separate part of the territory of a country. Rather, the territory of the European Communities is made up primarily of the territories in Europe, that is, where relevant, the metropolitan territories, of a group of countries, the number of which increased to 25 during this Panel proceeding. It is neither a territory part of another country, nor a separate territory for which other WTO Members have international responsibility. The European Communities has informed the Panel that it has a citizenship for natural persons, and, generally speaking, treats legal persons organized under the laws of an EC member State as EC nationals under its domestic law, as described above.

 

“Therefore, the Panel accepts the European Communities’ submission that it is not a ‘separate customs territory Member of the WTO’ within the meaning of footnote 1 to the TRIPS Agreement, and finds that its nationals, for the purposes of the TRIPS Agreement, are not defined by that footnote. The Panel would like to stress that its finding is limited solely to footnote 1 of the TRIPS Agreement and is not intended to be a finding of general application for other covered agreements.”(16)

(ii) “domiciled”; “real and effective industrial and commercial establishment”

18.     In EC — Trademarks and Geographical Indications, the Panel interpreted the criteria set out in footnote 1 as substitutes for nationality, to be understood as they were under Article 3 of the Paris Convention (1967):

“The text of the TRIPS Agreement contains a recognition that discrimination according to residence and establishment will be a close substitute for nationality. The criteria set out in footnote 1 to the TRIPS Agreement are clearly intended to provide close substitute criteria to determine nationality where criteria to determine nationality as such are not available in a Member’s domestic law. These criteria are “domicile” and “real and effective industrial or commercial establishment”. They are taken from the criteria used for the assimilation of nationals in Article 3 of the Paris Convention (1967). It is clear that, in using these terms, the drafters of footnote 1 of the TRIPS Agreement chose terms that were already understood in this preexisting intellectual property convention. Under Article 3 of the Paris Convention (1967), “domicile” is not generally understood to indicate a legal situation, but rather a more or less permanent residence of a natural person, and an actual headquarters of a legal person. A “real and effective industrial and commercial establishment” is intended to refer to all but a sham or ephemeral establishment”(17)

 

III. Article 2 and Incorporated Provisions of the Paris Convention (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).

 

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

19.     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.”(18)

2. Article 2(1) of the Paris Convention (1967) as incorporated in the TRIPS Agreement

20.     In US — Section 211 Appropriations Act, the Appellate Body examined the national treatment obligation in Article 2(1) of the Paris Convention (1967) as incorporated in the TRIPS Agreement, together with the national treatment obligation in Article 3.1 of the TRIPS Agreement: see paragraphs 3944 below.

21.     In EC — Trademarks and Geographical Indications, the Panel observed that a finding of no less favourable treatment under Article 3.1 of the TRIPS Agreement did not imply a violation of Article 2(1) of the Paris Convention (1967) as incorporated in the TRIPS Agreement because the text of the latter provision does not include those words:

“With respect to the claim under paragraph 1 of Article 2 of the Paris Convention (1967), as incorporated by Article 2.1 of the TRIPS Agreement, the Panel observes that, unlike Article 3.1 of the TRIPS Agreement, Article 2(1) of the Paris Convention (1967) refers to “the advantages that … laws now grant, or may hereafter grant” and not to “no less favourable” treatment. Therefore, the Panel has not actually reached a conclusion on this claim.”(19)

22.     Later, the Panel found that the United States had not made a prima facie case in support of its claim under Article 2(1) of the Paris Convention (1967) as incorporated by the TRIPS Agreement because it had not argued this claim separately:

“The United States has not separately argued its claim under Article 2(1) of the Paris Convention (1967), as incorporated by Article 2.1 of the TRIPS Agreement with respect to the inspection structures requirements.(20) Accordingly, the Panel concludes that, in this respect, it has not made a prima facie case in support of its claim under that provision.”(21)

3. Article 2(2) of the Paris Convention (1967) as incorporated in the TRIPS Agreement

23.     In EC — Trademarks and Geographical Indications, in considering a claim under paragraph 2 of Article 2 of the Paris Convention (1967), as incorporated by Article 2.1 of the TRIPS Agreement, that an EC Regulation contained a requirement of domicile or establishment, the Panel recalled its findings on the meaning of those terms as understood under Article 3 of the Paris Convention (1967). The Panel then rejected the claim because, although persons who used a protected GI would have a domicile or establishment in the European Communities, this was not a requirement for protection:

“We have found that the design and structure of the Regulation will operate to ensure that persons who use a protected GI, located in the European Communities, will have a domicile or establishment within the territory of the European Communities. We have also found that the availability of protection for GIs located in third countries, including WTO Members, is dependent on whether the third country in which the GI is located satisfies the conditions of equivalence or reciprocity or enters into an international agreement with the European Communities. It is irrelevant to the protection of a GI located in a third country whether or not the person who seeks protection has a domicile or establishment in the European Communities.”(22)

4. Article 3 of the Paris Convention (1967) as incorporated in the TRIPS Agreement

24.     In EC — Trademarks and Geographical Indications, the Panel interpreted the provision on assimilation of certain persons to nationals in Article 3 of the Paris Convention (1967) as incorporated in the TRIPS Agreement and found that it does not apply to persons who are nationals of WTO Members:

“The rule in Article 3 of the Paris Convention (1967) only applies to nationals of countries outside the Paris Union. According to Article 1.3 of the TRIPS Agreement, these criteria shall be understood as if “all Members of the WTO” were members of that Convention. Therefore, for the purposes of the TRIPS Agreement, that rule of assimilation only applies to persons that are nationals of a country that is not a WTO Member. It does not apply to nationals of other WTO Members, such as the United States. Therefore, it does not mean that all persons who have a domicile or a real and effective industrial and commercial establishment in a WTO Member are necessarily nationals of that WTO Member for the purposes of the TRIPS Agreement.”(23)

5. Article 6 of the Paris Convention (1967) as incorporated in the TRIPS Agreement

25.     In US — Section 211 Appropriations Act, in the course of considering claims under Article 6 quinquies 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).”(24)

6. Article 6bis of the Paris Convention (1967) as incorporated in the TRIPS Agreement

26.     In US — Section 211 Appropriations Act, 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.”(25)

7. Article 6ter of the Paris Convention (1967) as incorporated in the TRIPS Agreement

27.     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.(26)

28.     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.(27)

8. Article 6quinquies of the Paris Convention (1967) as incorporated in the TRIPS Agreement

29.     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.”(28)

9. Article 8 of the Paris Convention (1967) as incorporated in the TRIPS Agreement

30.     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.”(29)

31.      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).”(30)

10. Article 10(2) of the Paris Convention (1967) as incorporated in the TRIPS Agreement

32.     In EC — Trademarks and Geographical Indications (US), the Panel found that the provision regarding persons who may be deemed an “interested party” under Article 10(2) of the Paris Convention (1967) did not set out a criterion for eligibility for protection for the purposes of the TRIPS Agreement although it may provide guidance on the interpretation of Articles 22 and 23 of the TRIPS Agreement:

“The Panel accepts that an “interested party” is a person who is entitled to receive protection under Articles 22 and 23 of the TRIPS Agreement. However, in the Panel’s view, Article 10(2) of the Paris Convention (1967) does not set out a criterion for eligibility for protection. Article 10(2) is a deeming provision for the term “interested party” used in Article 9(3) of the Paris Convention (1967), as made applicable under Article 10(1). Once a person has qualified as a national, Article 10(2) may provide guidance on whether that person may be treated as an interested party for the purposes of Articles 22 and 23 of the TRIPS Agreement.”(31)

11. Article 2.2 of the TRIPS Agreement

33.     In EC — Bananas (Article 22.6 — EC), 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 decision, 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 121 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.”(32)

 

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) “Each Member”

34.     The Panel in EC — Trademarks and Geographical Indications examined an EC Regulation which provided for governments of countries outside the European Communities to carry out certain essential functions under its application and opposition procedures. The Panel dismissed an argument that the Regulation did not require anything that would be outside the scope of any WTO Member with a normally functioning government:

“The obligation to accord national treatment with respect to a measure of the European Communities is the obligation of the European Communities. This is highlighted in the text of Article 3.1 of the TRIPS Agreement under which “[e]ach Member” shall accord to the nationals of other Members no less favourable treatment.

 

In accordance with its domestic law, the European Communities is entitled to delegate certain functions under its measure to the authorities of EC member States. However, under the Regulation, the European Communities has purported to delegate part of this obligation to other WTO Members, who must carry out these three steps in the application procedures in order to ensure that no less favourable treatment is accorded to their respective nationals. To that extent, the European Communities fails to accord no less favourable treatment itself to the nationals of other Members.”(33)

(b) “the nationals of other Members”

35.     The Panel in EC — Trademarks and Geographical Indications referred to the definition in Article 1.3 of the phrase “the nationals of other Members” used in Article 3.1:

Article 1.3 defines “nationals of other Members” in order to determine the persons to whom Members shall accord treatment, which includes national treatment.”(34)

(c) “treatment no less favourable”

36.     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. 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.”(35)

37.     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.”(36)

38.     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 measure 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.”(37)

39.     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)’”(38)

40.     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.”(39)

41.     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.”(40)

42.     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.”(41)

43.     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.”(42)

44.     The Panel in EC — Trademarks and Geographical Indications examined an EC Regulation that contained two different sets of procedures for the registration of GIs for agricultural products and foodstuffs. The Panel found that one set applied to the names of geographical areas located in the European Communities and the other applied to the names of geographical areas located in third countries outside the European Communities. The second set contained additional conditions on the availability of protection which, the Panel found, modified the effective equality of opportunities as regards the protection of intellectual property:

“The Panel considers that those conditions modify the effective equality of opportunities to obtain protection with respect to intellectual property in two ways. First, GI protection is not available under the Regulation in respect of geographical areas located in third countries which the Commission has not recognized under Article 12(3). The European Communities confirms that the Commission has not recognized any third countries. Second, GI protection under the Regulation may become available if the third country in which the GI is located enters into an international agreement or satisfies the conditions in Article 12(1). Both of those requirements represent a significant “extra hurdle” in obtaining GI protection that does not apply to geographical areas located in the European Communities.”(43)

45.     In EC — Trademarks and Geographical Indications the two sets of procedures in the EC Regulation also contained differences as regards application procedures which required applications for GIs located in an EC member State to be filed with the EC member State government and applications for GIs located outside the European Communities to be filed with the third country government. The Panel found that this modified the effective equality of opportunities as regards the protection of intellectual property:

“An EC member State has an obligation to establish application procedures for the purposes of the Regulation. Under Community law, an EC member State has an obligation to examine an application and decide whether it is justified and, if it is justified, to forward it to the Commission. A group or person who submits an application in an EC member State may enforce these obligations through recourse to judicial procedures based on the Regulation. In contrast, a third country government has no obligation under Community law or any other law to examine an application or to transmit it or any other document to the Commission. A group or person who submits an application in a third country has no right to such treatment.

 

Therefore, applicants for GIs that refer to geographical areas located in third countries do not have a right in the application procedures that is provided to applicants for GIs that refer to geographical areas located in the European Communities. Applicants in third countries face an “extra hurdle” in ensuring that the authorities in those countries carry out the functions reserved to them under the Regulation, which applicants in EC member States do not face. Consequently, certain applications and requisite supporting documents may not be examined or transmitted. Each of these considerations significantly reduces the opportunities available to the nationals of other WTO Members in the acquisition of rights under the Regulation below those available to the European Communities’ own nationals.”(44)

46.     However, the Panel in EC — Trademarks and Geographical Indications (Australia) did not uphold a claim that features of an EC Regulation that provided for the participation of EC member State representatives in the Regulation’s implementing procedures accorded less favourable treatment for non-EC nationals for want of evidence:

“The Panel does not consider that these features of the Regulation “as such” compel any different treatment of different GIs. Under the national treatment obligations of the TRIPS Agreement, evidence is required that, in the application of these procedures, the authorities cannot, do not or will not apply the Regulation in the same way to the nationals of other Members and the European Communities’ own nationals. Australia has not provided any such evidence.”(45)

47.     The Panel in EC — Trademarks and Geographical Indications found that, given that, on its face, certain provisions in the EC Regulation discriminated according to the location of GIs, they were formally identical vis-à-vis the nationals of different Members. However, after referring to the passage from the GATT Panel Report in US — Section 337 set out above at para. 39, and the conclusion of the Appellate Body in Korea — Various Measures on Beef that “[a] formal difference in treatment between imported and like domestic products is thus neither necessary, nor sufficient, to show a violation of Article III:4”, the Panel found that formal identity of treatment was not dispositive of a claim under Article 3.1:

“We consider that this reasoning applies with equal force to the no less favourable treatment standard in Article 3.1 of the TRIPS Agreement. In our view, even if the provisions of the Regulation are formally identical in the treatment that they accord to the nationals of other Members and to the European Communities’ own nationals, this is not sufficient to demonstrate that there is no violation of Article 3.1 of the TRIPS Agreement.”(46)

48.     The Panel in US — Section 211 Appropriations Act, in a finding with which the Appellate Body agreed, found that the appropriate standard of examination under Article 3.1 of the TRIPS Agreement was the “effective equality of opportunities” standard enunciated by the GATT Panel in US — Section 337. The Panel quoted with approval the following findings of that GATT Panel on the “no less favourable” treatment standard under Article III:4 of GATT 1947:

“The words ‘treatment no less favourable’ in paragraph 4 call for effective equality of opportunities for imported products in respect of the application of laws, regulations and requirements affecting the internal sale, offering for sale, purchase, transportation, distribution or use of products. This clearly sets a minimum permissible standard as a basis.”(47)

49.     The Panel in EC — Trademarks and Geographical Indications referred to the above passage and applied the same standard of examination in the context of Article 3.1 of the TRIPS Agreement:

“Therefore, the Panel will examine whether the difference in treatment affects the “effective equality of opportunities” between the nationals of other Members and the European Communities’ own nationals with regard to the “protection” of intellectual property rights, to the detriment of nationals of other Members.”(48)

50.     The Panel in EC — Trademarks and Geographical Indications also referred to the Appellate Body’s interpretation of the “no less favourable” treatment standard under Article III:4 of GATT 1994 in US — FSC (Article 21.5 — EC) and applied it in the context of Article 3.1 of the TRIPS Agreement:

“Under Article III:4 of GATT 1994, the Appellate Body in US — FSC (Article 21.5 — EC) has explained its approach to the examination of whether measures affecting the internal sale of products accord “treatment no less favourable” as follows:

 

“The examination of whether a measure involves ‘less favourable treatment’ of imported products within the meaning of Article III:4 of the GATT 1994 must be grounded in close scrutiny of the ‘fundamental thrust and effect of the measure itself’. This examination cannot rest on simple assertion, but must be founded on a careful analysis of the contested measure and of its implications in the marketplace. At the same time, however, the examination need not be based on the actual effects of the contested measure in the marketplace.”

 

“Similarly, in the present dispute, the Panel considers it appropriate to base its examination under Article 3.1 of the TRIPS Agreement on the fundamental thrust and effect of the Regulation, including an analysis of its terms and its practical implications. However, as far as the TRIPS Agreement is concerned, the relevant practical implications are those on opportunities with regard to the protection of intellectual property. The implications in the marketplace for the agricultural products and foodstuffs in respect of which GIs may be protected are relevant to the examination under Article III:4 of GATT 1994, considered later in this report.”(49)

51.     The Panel in EC — Trademarks and Geographical Indications then decided that it should compare the effective opportunities under the EC Regulation of all EC nationals with those of all nationals of other WTO Members, irrespective of where their respective GIs were located. It declined to compare the opportunities of EC nationals seeking to protect a GI located in the European Communities only with those of nationals of other WTO Members seeking to protect a GI located in the European Communities, or the opportunities of EC nationals seeking to protect a GI located outside the European Communities only with those of nationals of other WTO Members seeking to protect a GI located outside the European Communities:

“The Panel recalls that the standard of examination is based on “effective equality of opportunities”. It follows that the nationals that are relevant to an examination under Article 3.1 of the TRIPS Agreement should be those who seek opportunities with respect to the same type of intellectual property in comparable situations. On the one hand, this excludes a comparison of opportunities for nationals with respect to different categories of intellectual property, such as GIs and copyright. On the other hand, no reason has been advanced as to why the equality of opportunities should be limited a priori to rights with a territorial link to a particular Member.

 

The Panel therefore considers it appropriate for the purposes of this claim to compare the effective equality of opportunities for the group of nationals of other Members who may wish to seek GI protection under the Regulation and the group of the European Communities’ own nationals who may wish to seek GI protection under the Regulation. On this approach, there is no need to make a factual assumption that every person who wishes to obtain protection for a GI in a particular Member is a national of that Member.”(50)

(d) “own nationals”

52.     The Panel in EC — Trademarks and Geographical Indications, after interpreting the word “nationals” in Article 1.3 (see paragraph 15 above), considered that the way in which a Member defined its own nationals could also be subject to review:

“The meaning of “nationals” under public international law is also relevant to the meaning of a Member’s “own nationals”. Whilst the TRIPS Agreement does not create obligations for a Member to accord treatment to its own nationals, it does refer to the treatment that each Member accords to its own nationals as the benchmark for its obligation to accord national treatment under Article 3.1, as well as under the other national treatment obligations incorporated by reference, including Article 2 of the Paris Convention (1967). To that extent, the way in which a Member defines its own nationals can also be subject to review for the purposes of determining conformity with its national treatment obligations under the TRIPS Agreement.”(51)

53.     In that case the Panel accepted the European Communities’ definition that its “own nationals” were the nationals of EC member States. In the case of legal persons, nationality was determined by reference to various criteria including the place of incorporation, company seat or a combination of such criteria:

“The European Communities has explained to the Panel that, with respect to natural persons, under the domestic law of the European Communities, any person who is a national of an EC member State is a citizen of the European Union and, accordingly, an EC national. It has explained that, with respect to legal persons, the domestic law of the European Communities does not contain a specific definition of nationality, but nor does the domestic law of many other WTO Members. However, the European Communities informs the Panel that any legal person considered a national under the laws of an EC member State would also be an EC national. The criteria used by the EC member States to determine the nationality of a legal person may vary and include criteria such as the place of incorporation and the place of the seat of the company or a combination of such criteria.

 

The United States has not challenged the criteria used by the European Communities to determine nationality. The Panel notes that these criteria appear to be the same as those used in public international law. Therefore, the Panel can use them to determine which persons are “nationals” under Article 3.1 of the TRIPS Agreement.”(52)

54.     The Panel in EC — Trademarks and Geographical Indications (US) rejected an argument that product inspection requirements in an EC Regulation, under which the EC would apply the same criteria and requirements to foreign and domestic applications for GI protection, in practice accorded less favourable treatment inconsistently with Article 3.1:

“The United States argues that these provisions, in practice, accord less favourable treatment to the nationals of other Members who enjoy GI protection without inspection structures, or without inspection structures that would satisfy Article 10 of the Regulation, in the territory of other WTO Members. Specifically, it asserts that certain holders of certification marks, collective marks and common law rights would not satisfy the requirements of Article 10(3) and standard EN45011, for instance, with respect to the independence of the inspection body from the producers.

 

The Panel recalls that the European Communities’ obligation under Article 3.1 of the TRIPS Agreement is to accord no less favourable treatment to the nationals of other Members than it accords to its own nationals. The benchmark for the obligation is the treatment accorded by the European Communities to the European Communities’ own nationals. The treatment accorded by other Members to their own respective nationals is not relevant to this claim. The level of protection in the country of origin does not affect GI protection in the country where GI protection is sought under the TRIPS Agreement, except to the extent that a lack of GI protection in the country of origin provides a ground to deny GI protection in accordance with Article 24.9.

 

The Panel agrees with the European Communities that WTO Members are entitled to aim for objective assessment of product conformity, provided that they implement this objective in a WTO-consistent manner. The implication of the United States’ argument would be to oblige the European Communities to recognize forms of protection granted by the United States. This would be a kind of reverse equivalence condition.”(53)

(e) “with respect to the protection of intellectual property”

55.     In US — Section 211 Appropriations Act, 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.(54)

56.     The Panel in EC — Trademarks and Geographical Indications examined each aspect of the Regulation at issue that was the subject of a national treatment claim in terms of the definition of “protection” of intellectual property set out in footnote 3 (see para. 58 below).

(f) Footnote 3

57.     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.”(55)

58.     The Panel in EC — Trademarks and Geographical Indications examined each aspect of the Regulation at issue that was the subject of a national treatment claim in terms of the definition of “protection” of intellectual property set out in footnote 3. It found that the applicability of the Regulation, the application procedures, the objection procedures, the product inspection structures and a labelling requirement all fell within the scope of footnote 3:

“The national treatment obligation in Article 3 of the TRIPS Agreement applies “with regard to the protection of intellectual property”. Footnote 3 provides an inclusive definition of the term “protection” as used in Articles 3 and 4.”(56)

“Article 12(1) refers to how the Regulation “may apply”, which is a reference to the availability of intellectual property rights in relation to “designations of origin” and “geographical indications”, as defined in the Regulation.”(57)

“[P]rocedures for the filing and examination of applications for registration are matters affecting the acquisition of intellectual property rights in relation to “designations of origin” and “geographical indications”, as defined in the Regulation.”(58)

“Procedures for objections to such applications are related to the procedures for acquisition, as recognized in the fourth paragraph of Article 62 (which uses the word “opposition”) and the title of that article. Hence, opposition procedures are also matters “affecting” the acquisition of intellectual property rights which concern the “protection” of intellectual property, as clarified in footnote 3 to the TRIPS Agreement.(59)

“[I]nspection structures ensure that products meet the requirements in the specifications. Whatever else may be the legal character of those structures, it is clear that the specifications include details of the inspection structures and these must be included in, or accompany, all applications for registration. The declaration under Article 12a(2)(b) must also accompany applications to register GIs located in third countries. Therefore, under this Regulation, the inspection structures are a matter affecting the availability and acquisition of protection for GIs.”(60)

“[T]he labelling requirement relates to the “use” of an identical GI on a product. Whatever else may be the legal character of this requirement, through its inclusion in the provisions of Article 12, which sets out the conditions on which the Regulation may apply to GIs located in third countries, it attaches a specific condition to registration of certain GIs. Therefore, under this Regulation, the labelling requirement is a matter affecting the acquisition of protection for GIs.”(61)

(g) Notification requirements

59.     At its meeting of 27 February 1997, the TRIPS Council 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.(62)

2. Relationship with other Articles

60.     With respect to the relationship with Article 65.2, see the excerpt from the panel report referenced in paragraph 291 below.

3. Relationship with other WTO Agreements

61.     In US — Section 211 Appropriations Act, the Appellate Body referred to GATT jurisprudence on Article III:4 of GATT 1994 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.”(63)

62.     The Panel in EC — Trademarks and Geographical Indications noted the similarity, and the differences, between Article 3 of the TRIPS Agreement and Article III:4 of GATT 1994:

“It is useful to recall that Article 3.1 of the TRIPS Agreement combines elements of national treatment both from pre-existing intellectual property agreements and GATT 1994. Like the pre-existing intellectual property conventions, Article 3.1 applies to “nationals”, not products. Like GATT 1994, Article 3.1 refers to “no less favourable” treatment, not the advantages or rights that laws now grant or may hereafter grant, but it does not refer to likeness.”(64)

63.     The Panel in EC — Trademarks and Geographical Indications referred to both GATT and WTO jurisprudence on the phrase “no less favourable” treatment as used in Article III:4 of GATT 1994 in interpreting Article 3 of the TRIPS Agreement (see paras. 46, 48 and 50 above) for the following reason:

“The interpretation of the “no less favourable” treatment standard under other covered agreements may be relevant in interpreting Article 3.1 of the TRIPS Agreement, taking account of its context in each agreement including, in particular, any differences arising from its application to like products or like services and service suppliers, rather than to nationals.”(65)

64.     The Panel in EC — Trademarks and Geographical Indications explained that Article 3.1 of the TRIPS Agreement and Article III:4 of GATT 1994 can co-exist and that neither overrides the other:

“The Panel notes that there is no hierarchy between the TRIPS Agreement and GATT 1994, which appear in separate annexes to the WTO Agreement. The ordinary meaning of the texts of the TRIPS Agreement and GATT 1994, as well as Article II:2 of the WTO Agreement, taken together, indicates that obligations under the TRIPS Agreement and GATT 1994 can co-exist and that one does not override the other. This is analogous to the finding of the Panel in Canada — Periodicals, with which the Appellate Body agreed, concerning the respective scopes of GATS and GATT 1994. Further, a “harmonious interpretation” does not require an interpretation of one that shadows the contours of the other. It is well established that the covered agreements apply cumulatively and that consistency with one does not necessarily imply consistency with them all.”(66)

 

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

65.     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 Members 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.”(67)

66.     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.”(68)

2. Chapeau

(a) “the protection of intellectual property”

67.     In US — Section 211 Appropriations Act,, the Appellate Body applied to trade names its findings with regard to trademarks in respect of Article 4 of the TRIPS Agreement.(69)

68.     In EC — Trademarks and Geographical Indications (US) the Panel examined each aspect of the Regulation at issue that was the subject of an MFN claim in terms of the definition of “protection” of intellectual property set out in footnote 3 (see para. 58 above with respect to the availability and acquisition of intellectual property rights):

“The MFN treatment obligation in Article 4 of the TRIPS Agreement applies “with regard to the protection of intellectual property”. Footnote 3 provides an inclusive definition of the term “protection” as used in Articles 3 and 4 (…).

 

The Panel recalls its findings (…) that the conditions of reciprocity and equivalence in Article 12(1) of the Regulation are matters affecting the availability of intellectual property rights, in relation to “designations of origin” and “geographical indications”, as defined in the Regulation, which are part of a category of intellectual property within the meaning of Article 1.2 of the TRIPS Agreement.

 

Therefore, this claim concerns the “protection” of intellectual property, as clarified in footnote 3 to the TRIPS Agreement, within the scope of the MFN treatment obligation in Article 4 of that Agreement.”(70)

(b) “any advantage, favour, privilege or immunity granted by a Member”

69.     In EC — Trademarks and Geographical Indications (US) the Panel found that the availability of GI protection constituted an “advantage, favour, privilege or immunity granted by a Member”:

“[T]he Panel found that GI protection is not available under the Regulation in respect of geographical areas located in third countries which the Commission has not recognized under Article 12(3), although GI protection under the Regulation may become available if the third country in which the GI is located enters into an international agreement or satisfies the conditions in Article 12(1).

 

This constitutes an “advantage, favour, privilege or immunity” granted by the European Communities with regard to the protection of intellectual property.”(71)

(c) “immediately and unconditionally”

70.     In EC — Trademarks and Geographical Indications (US) the Panel found that the EC subjected protection of GIs located in countries outside the European Communities to the following equivalence and reciprocity conditions:

  • “the third country is able to give guarantees identical or equivalent to those referred to in Article 4,
     
  • the third country concerned has inspection arrangements and a right to objection equivalent to those laid down in this Regulation,
     
  • the third country concerned is prepared to provide protection equivalent to that available in the Community to corresponding agricultural products or foodstuffs coming from the Community.”(72)

71.     In the Panel’s view, this showed that the relevant advantage was not accorded “immediately and unconditionally”:

“[GI protection under the Regulation] is subject to the satisfaction of the equivalence and reciprocity conditions, or the conclusion of an international agreement, or both, which indicates that it is not accorded “immediately and unconditionally”.(73)

(d) “to the nationals of any other country”

72.     In EC — Trademarks and Geographical Indications (US) the Panel exercised judicial economy on the claims under Article 4, but it noted that the European Communities had not in fact accorded the advantage at issue to the nationals of any other country:

“However, [subjecting an advantage to the satisfaction of conditions] is not sufficient to demonstrate an inconsistency with Article 4 of the TRIPS Agreement, as it must be shown that the advantage, favour, privilege or immunity is granted by a Member “to the nationals of any other country”. It is unnecessary for the purposes of this claim to re-examine the issue of how the Regulation discriminates according to nationality, considered in Section VII:B of this report, because the European Commission has not recognized any other country as satisfying the conditions under Article 12(1) under the procedure in Article 12(3).”(74)

3. Article 4(d)

(a) Notification requirements

73.     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.(75)

4. Footnote 3

74.     In EC — Trademarks and Geographical Indications (US) the Panel examined each aspect of the Regulation at issue that was the subject of an MFN claim in terms of the definition of “protection” of intellectual property set out in footnote 3 (see paragraph 58 above with respect to the availability and acquisition of intellectual property rights).

 

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

75.     With respect to notifications of laws and regulations relating to Articles 3, 4 and 5 of the TRIPS Agreement, see paragraph 59 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

76.     With respect to the exhaustion of intellectual property rights, paragraph 5(d) of the Declaration on the TRIPS Agreement and Public Health, adopted on 14 November 2001, reads as follows:

“The effect of the provisions in the TRIPS Agreement that are relevant to the exhaustion of intellectual property rights is to leave each Member free to establish its own regime for such exhaustion without challenge, subject to the MFN and national treatment provisions of Articles 3 and 4.”(76)

 

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

77.     The Panel in US — Section 211 Appropriations Act offered the following observations on Article 7:

Article 7 of the TRIPS Agreement states that one of the objectives is that “[t]he protection and enforcement of intellectual property rights should contribute… to a balance of rights and obligations.” We consider this expression to be a form of the good faith principle. The Appellate Body in United States — Shrimps stated that this principle “controls the exercise of rights by states. One application of this principle, the application widely known as the doctrine of abus de droit, prohibits the abusive exercise of a state’s rights and enjoins that whenever the assertion of a right ‘impinges on the field covered by [a] treaty obligation, it must be exercised bona fide, that is to say reasonably.’ An abusive exercise by a Member of its own treaty right thus results in a breach of the treaty rights of the other members and, as well, a violation of the treaty obligation of the Member so acting.”(77) Members must therefore implement the provisions of the TRIPS Agreement in a manner consistent with the good faith principle enshrined in Article 7 of the TRIPS Agreement.”(78)

78.     With respect to the relationship with Article 30, see the excerpt from the panel report referenced in paragraph 191 below.

79.     With respect to the objectives and principles of the TRIPS Agreement, paragraph 5(a) of the Declaration on the TRIPS Agreement and Public Health, adopted on 14 November 2001, reads as follows:

“In applying the customary rules of interpretation of public international law, each provision of the TRIPS Agreement shall be read in the light of the object and purpose of the Agreement as expressed, in particular, in its objectives and principles.”(79)

80.     Paragraph 19 of the Doha Ministerial Declaration, adopted on 14 November 2001, provides that, “[i]n undertaking [the work referred to in that paragraph], the TRIPS Council shall be guided by the objectives and principles set out in Articles 7 and 8 of the TRIPS Agreement.”(80)

 

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. Article 8.1

81.     In EC — Trademarks and Geographical Indications, in the course of explaining why the TRIPS Agreement did not contain a general exceptions provision, the Panel referred to the principles of the Agreement set out in Article 8.1:

“These principles reflect the fact that the TRIPS Agreement does not generally provide for the grant of positive rights to exploit or use certain subject matter, but rather provides for the grant of negative rights to prevent certain acts. This fundamental feature of intellectual property protection inherently grants Members freedom to pursue legitimate public policy objectives since many measures to attain those public policy objectives lie outside the scope of intellectual property rights and do not require an exception under the TRIPS Agreement.”(81)

2. Relationship with other Articles

82.     With respect to the relationship with Article 30, see paragraph 191 below.

83.     With respect to the objectives and principles of the TRIPS Agreement, paragraph 5(a) of the Declaration on the TRIPS Agreement and Public Health, adopted on 14 November 2001, reads as follows:

“In applying the customary rules of interpretation of public international law, each provision of the TRIPS Agreement shall be read in the light of the object and purpose of the Agreement as expressed, in particular, in its objectives and principles.”(82)

84.     Paragraph 19 of the Doha Ministerial Declaration, adopted on 14 November 2001, provides that, “[i]n undertaking [the work referred to in that paragraph], the TRIPS Council shall be guided by the objectives and principles set out in Articles 7 and 8 of the TRIPS Agreement”.(83)

 

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 121 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)

85.     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 913 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 121 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.”(84)

86.     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 121 of the Berne Convention (1971) — entered into force at the same point in time.”(85)

87.     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 101 below.

88.     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.”(86)

89.     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.”(87)

2. Article 5(1) of the Berne Convention (1971) as incorporated in the TRIPS Agreement

(a) Scope of Article 5(1)

90.     In China — Intellectual Property Rights, the Panel was called upon to interpret Article 5(1) of the Berne Convention (1971). The Panel considered the scope of Article 5(1) as follows:

Article 5(1) of the Berne Convention (1971) provides for the enjoyment of two overlapping sets of rights that have been described as “the twin pillars on which protection under the Convention rests”. First, there are “the rights which their respective laws do now or may hereafter grant to their nationals”.(88) This is a national treatment obligation… .

 

Second, there are “the rights specially granted by this Convention”. This term is not defined. However, Article 5(1) refers to rights that authors shall enjoy in respect of works. Articles 6bis, 8, 9, 11, 11bis, 11ter, 12, 14, 14bis and 14ter all provide for such rights.(89) Nevertheless, the incorporation of provisions of the Berne Convention (1971), including Article 5, is subject to the terms of Article 9.1 of the TRIPS Agreement …. Therefore, “the rights specially granted by this Convention” as used in Article 5(1) of that Convention, as incorporated by Article 9.1 of the TRIPS Agreement, do not include the rights referred to in Article 6bis of the Berne Convention (1971). This Report refers to these rights in that sense.”(90)

91.     The Panel in China — Intellectual Property Rights further elaborated on the categories of “works” the two sets or rights under Article 5(1) of the Berne Convention relate to:

“The categories of “works” in respect of which authors shall enjoy the rights specially granted by the Convention vary according to the terms of each Article granting the relevant right. For example, the rights of reproduction (Article 9) and of broadcasting (Article 11bis) are granted to authors of “literary and artistic works”. That expression is defined, in a non-exhaustive manner, in Article 2(1) of the Berne Convention (1971).”(91)

3. Article 11 of the Berne Convention (1971) as incorporated in the TRIPS Agreement

(a) Scope of Article 11

92.     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).(92) It also includes communication to the public of a performance of the work.”(93)

(b) Paragraph 1

93.     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).”(94)

94.     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).(95) 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.”(96)

(c) Relationship between Article 11 of the Berne Convention (1971) and other Articles of this Convention.

95.     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.”(97)

4. Article 11 bis of the Berne Convention (1971) as incorporated in the TRIPS Agreement

(a) Paragraph 1

96.     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) subparagraph (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.”(98)

97.     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).(99) 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.”(100)

(b) Paragraph 2

98.     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.”(101)

(c) Relationship between Article 11bis of the Berne Convention (1971) and other Articles of the Convention

99.     With respect to the relationship between Articles 11 and 11bis of the Berne Convention (1971) as incorporated in the TRIPS Agreement, see paragraph 95 above.

(d) Minor exceptions doctrine

100.     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 noncommercial character of the use in question is not determinative provided that the exception contained in national law is indeed minor… .”(102)

101.     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.”(103)

(e) Relationship between Article 11bis(2) of the Berne Convention (1971) and Article 13 of the TRIPS Agreement

102.     With respect to the relationship between Article 11bis(2) of the Berne Convention (1971) and Article 13 of the TRIPS Agreement, see paragraphs 110112 below.

5. Article 17 of the Berne Convention (1971) as incorporated in the TRIPS Agreement

(a) Scope of Article 17

103.     In China — Intellectual Property Rights, Article 17 of the Berne Convention (1971) was invoked as a defence to a claim of a violation of Article 5(1) of the Berne Convention (1971). Article 17 provides that the provisions of the Berne Convention cannot affect the rights of its members “to permit, to control, or to prohibit, by legislation or regulation, the circulation, presentation, or exhibition of any work or production in regard to which the competent authority may find it necessary to exercise that right.” With respect to the scope of Article 17, the Panel in China — Intellectual Property Rights concluded as follows:

“The right of a government “to control, or to prohibit” the “circulation, presentation, or exhibition” of any work or production clearly includes censorship for reasons of public order.(104) … The Panel accepts that the three terms “circulation, presentation, or exhibition” are not necessarily an exhaustive list of the forms of exploitation of works covered by Article 17. However, a noticeable feature of these three terms is that they do not correspond to the terms used to define the substantive rights granted by the Berne Convention (1971), although they may be included within some of those rights(105) or they may refer to acts incidental to the exercise of some of those rights.(106) The word ‘exhibition’ is not even used in the provisions setting out the substantive rights granted by the Convention.(107) Therefore, it cannot be inferred that Article 17 authorizes the denial of all copyright protection in any work.”(108)

104.     The Panel in China — Intellectual Property Rights, further elaborated on the scope of Article 17 as follows:

“A government’s right to permit, to control, or to prohibit the circulation, presentation, or exhibition of a work may interfere with the exercise of certain rights with respect to a protected work by the copyright owner or a third party authorized by the copyright owner. However, there is no reason to suppose that censorship will eliminate those rights entirely with respect to a particular work.

 

With respect to those rights that are granted by the Berne Convention (1971), China is unable to explain why Article 4(1) of its Copyright Law provides for the complete denial of their protection with respect to particular works. Without prejudice to the range of rights that are granted by the Berne Convention (1971), it suffices to note that they are mostly exclusive rights of authorizing certain acts with respect to protected works. An exclusive right of authorizing necessarily entails the right to prevent others from carrying out the relevant acts with respect to protected works. China is unable to explain why censorship interferes with copyright owners’ rights to prevent third parties from exploiting prohibited works.

 …

The Panel notes that copyright and government censorship address different rights and interests. Copyright protects private rights, as reflected in the fourth recital of the preamble to the TRIPS Agreement, whilst government censorship addresses public interests.”(109)

6. Article 20 of the Berne Convention (1971) as incorporated in the TRIPS Agreement

105.     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.”(110)

7. Appendix to the Berne Convention (1971) as incorporated in the TRIPS Agreement

106.     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.”(111)

 

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

107.     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.”(112)

108.     With respect to the scope of Article 13, see paragraph 110 below.

109.     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.”(113)

(b) Relationship with other Articles

110.     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.”(114)

111.     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.”(115)

112.     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.”(116)

113.     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 207.

(c) “certain special cases”

114.     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.”(117)

115.     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’.(118) 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.”(119),(120)

116.     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.”(121)

(d) “do not conflict with a normal exploitation of the work”

117.     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.”(122)

118.     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.”(123),(124)

119.     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.”(125)

120.     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.”(126)

121.     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.”(127)

(e) “do not unreasonably prejudice the legitimate interests of the right holder”

122.     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’.”(128)

123.     The Panel then proceeded to examined 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’.”(129)

124.     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.”(130)

125.     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.”(131)

126.     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.”(132)

 

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.

 

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

127.     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.”(133)

2. Article 15.2

128.     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… .”(134)

 

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

129.     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 170 below.

2. Article 16.1

(a) “The owner”

130.     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.”(135)

(b) “the exclusive right”

131.     In EC — Trademarks and Geographical Indications the Panel interpreted the exclusive right which must be conferred under Article 16.1 as a negative right that belongs to the owner of the registered trademark alone to prevent certain uses by “all third parties” not having the owner’s consent, subject to certain exceptions:

“The right which must be conferred on the owner of a registered trademark is set out in the first sentence of the text. There are certain limitations on that right which relate to use in the course of trade, the signs, the goods or services for which the signs are used and those with respect to which they are registered and the likelihood of confusion. The ordinary meaning of the text indicates that, basically, this right applies to use in the course of trade of identical or similar signs, on identical or similar goods, where such use would result in a likelihood of confusion. It does not specifically exclude use of signs protected as GIs.

 

The text of Article 16.1 stipulates that the right for which it provides is an “exclusive” right. This must signify more than the fact that it is a right to “exclude” others, since that notion is already captured in the use of the word “prevent”. Rather, it indicates that this right belongs to the owner of the registered trademark alone, who may exercise it to prevent certain uses by “all third parties” not having the owner’s consent. The last sentence provides for an exception to that right, which is that it shall not prejudice any existing prior rights. Otherwise, the text of Article 16.1 is unqualified.

 

Other exceptions to the right under Article 16.1 are provided for in Article 17 and possibly elsewhere in the TRIPS Agreement. However, there is no implied limitation vis-à-vis GIs in the text of Article 16.1 on the exclusive right which Members must make available to the owner of a registered trademark. That right may be exercised against a third party not having the owner’s consent on the same terms, whether or not the third party uses the sign in accordance with GI protection, subject to any applicable exception.”(136)

132.     In EC — Trademarks and Geographical Indications the Panel clarified that the right to be conferred under Article 16.1 is a negative right:

Article 16.1 of the TRIPS Agreement only provides for a negative right to prevent all third parties from using signs in certain circumstances.”(137)

133.     The Panel in EC — Trademarks and Geographical Indications (Australia) did not uphold a claim that the right provided for in Article 16.1 includes a right to object to GI registration:

Article 16.1 of the TRIPS Agreement sets out the minimum right which Members must provide to the owners of registered trademarks and which they may also make available on the basis of use. It is a right for trademark owners to prevent certain uses. The Panel takes note that trademark owners are not able to exercise their right to prevent use of a GI after GI registration. However, Australia has not explained why the trademark owner’s right to prevent use implies a right to object to GI registration.

 

Article 15.5 provides for a right of objection to registration of a trademark but there is no corresponding provision in Part II regarding the registration of a GI. There are provisions on the acquisition and maintenance of intellectual property rights, including GIs, in Article 62. These specifically refer to related inter partes procedures such as opposition, revocation and cancellation, in paragraph 4, which is cross-referenced in paragraph 5. The opportunity or right to object forms part of an opposition procedure. However, Article 62 lies outside the Panel’s terms of reference.”(138)

(c) “a likelihood of confusion shall be presumed”

134.     The Panel in EC — Trademarks and Geographical Indications (Australia), explained that the second sentence of Article 16.2 clarifies the first sentence:

Article 16.1 of the TRIPS Agreement, in its first sentence, provides for a right that refers to “identical or similar” “signs” and “goods or services” and depends on a “likelihood of confusion”. In its second sentence, it provides for a presumption of a “likelihood of confusion” with respect to use of an “identical sign for identical goods or services”. Therefore, the second sentence clarifies how the first sentence is implemented, in particular circumstances.”(139)

(d) “making rights available on the basis of use”

135.     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.”(140)

 

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

1. General

(a) “Limited exceptions”

136.     In EC — Trademarks and Geographical Indications the Panel interpreted the phrase “limited exceptions” to refer to a narrow exception to the rights conferred by a trademark, rather than to an exception that affected only few trademarks or few trademark owners. It considered that the limitation should be assessed as a legal, rather than an economic, matter:

“The first issue to decide is the meaning of the term “limited exceptions” as used in Article 17. The United States interprets this in terms of a small diminution of rights. The European Communities does not disagree with this approach. The Panel agrees with the views of the Panel in Canada — Pharmaceutical Patents, which interpreted the identical term in Article 30, that “[t]he word ‘exception’ by itself connotes a limited derogation, one that does not undercut the body of rules from which it is made”.(141) The addition of the word “limited” emphasizes that the exception must be narrow and permit only a small diminution of rights. The limited exceptions apply “to the rights conferred by a trademark”. They do not apply to the set of all trademarks or all trademark owners. Accordingly, the fact that it may affect only few trademarks or few trademark owners is irrelevant to the question whether an exception is limited. The issue is whether the exception to the rights conferred by a trademark is narrow.

 

There is only one right conferred by a trademark at issue in this dispute, namely the exclusive right to prevent certain uses of a sign, provided for in Article 16.1. Therefore, it is necessary to examine the exception on an individual “per right” basis. This is a legal assessment of the extent to which the exception curtails that right. There is no indication in the text of Article 17 that this involves an economic assessment, although economic impact can be taken into account in the proviso. In this regard, we note the absence of any reference to a “normal exploitation” of the trademark in Article 17, and the absence of any reference in Section 2, to which Article 17 permits exceptions, to rights to exclude legitimate competition. Rather, they confer, inter alia, the right to prevent uses that would result in a likelihood of confusion, which can lead to the removal of products from sale where they are marketed using particular signs, but without otherwise restraining the manufacture, sale or importation of competing goods or services.”(142)

137.     In EC — Trademarks and Geographical Indications the Panel took into account, in determining whether an exception could be considered a “limited exception”, the fact that it prevented a trademark owner from exercising its exclusive right to prevent use only against persons using a GI on goods in accordance with its registration:

“[T]he European Communities has emphasized that the trademark owner retains the right to prevent the use of a name registered as a GI by any person in relation to any goods which originate in a different geographical area or which do not comply with the specifications, and that the positive right to use the GI extends only to the linguistic versions that have been entered in the register and not to other names or signs which have not been registered. Accordingly, on the basis of the terms of the GI Regulation and of the Community Trademark Regulation, and the explanation of them provided by the European Communities, the Panel finds that not only may the trademark continue to be used, but that the trademark owner’s right to prevent confusing uses is unaffected except with respect to the use of a GI as entered in the GI register in accordance with its registration.

 

“Furthermore, the European Communities has explained that the use of a name registered as a GI is subject to the applicable provisions of the food labelling and misleading advertising directives so that the ways in which it may be used are not unlimited.”(143)

(b) “such as fair use of descriptive terms”

138.     In EC — Trademarks and Geographical Indications the Panel extrapolated from the example of “fair use of descriptive terms” in interpreting the term “limited exception” for the purposes of Article 17:

“The example in the text, “fair use of descriptive terms”, provides guidance as to what is considered a “limited exception”, although it is illustrative only. Fair use of descriptive terms is inherently limited in terms of the sign which may be used and the degree of likelihood of confusion which may result from its use, as a purely descriptive term on its own is not distinctive and is not protectable as a trademark. Fair use of descriptive terms is not limited in terms of the number of third parties who may benefit, nor in terms of the quantity of goods or services with respect to which they use the descriptive terms, although implicitly it only applies to those third parties who would use those terms in the course of trade and to those goods or services which those terms describe. The number of trademarks or trademark owners affected is irrelevant, although implicitly it would only affect those marks which can consist of, or include, signs that can be used in a descriptive manner. According to the text, this is a “limited” exception for the purposes of Article 17.”(144)

(c) “legitimate interests”

139.     In EC — Trademarks and Geographical Indications the Panel considered that “legitimate” interests were different from the enjoyment of legal rights:

“Limited exceptions must satisfy the proviso that “such exceptions take account of the legitimate interests of the owner of the trademark and of third parties” in order to benefit from Article 17. We must first establish what are “legitimate interests”. Read in context, the “legitimate interests” of the trademark owner are contrasted with the “rights conferred by a trademark”, which also belong to the trademark owner. Given that Article 17 creates an exception to the rights conferred by a trademark, the “legitimate interests” of the trademark owner must be something different from full enjoyment of those legal rights. The “legitimate interests” of the trademark owner are also compared with those of “third parties”, who have no rights conferred by the trademark. Therefore, the “legitimate interests”, at least of third parties, are something different from simply the enjoyment of their legal rights. This is confirmed by the use of the verb “take account of”, which is less than “protect”.”(145)

(d) “take account of the legitimate interests of the owner of the trademark”

140.     In EC — Trademarks and Geographical Indications the Panel found that an EC Regulation took account of the legitimate interests of the owner of the trademark because it took account of the owner’s interest in preserving the distinctiveness, or capacity to distinguish, of its trademark so that it could distinguish the goods and services of its undertaking in the course of trade:

“The legitimacy of some interest of the trademark owner is assumed because the owner of the trademark is specifically identified in Article 17. The TRIPS Agreement itself sets out a statement of what all WTO Members consider adequate standards and principles concerning trademark protection. Although it sets out standards for legal rights, it also provides guidance as to WTO Members’ shared understandings of the policies and norms relevant to trademarks and, hence, what might be the legitimate interests of trademark owners. The function of trademarks can be understood by reference to Article 15.1 as distinguishing goods and services of undertakings in the course of trade. Every trademark owner has a legitimate interest in preserving the distinctiveness, or capacity to distinguish, of its trademark so that it can perform that function. This includes its interest in using its own trademark in connection with the relevant goods and services of its own and authorized undertakings. Taking account of that legitimate interest will also take account of the trademark owner’s interest in the economic value of its mark arising from the reputation that it enjoys and the quality that it denotes.”(146)

141.     In EC — Trademarks and Geographical Indications the Panel considered that a limited exception can permit a certain degree of likelihood of confusion that may affect the distinctiveness of the trademark:

“Where Articles 7(4) and 14(3) of the Regulation are unavailable, and a trademark is subject to Article 14(2), there remains the possibility that its distinctiveness will be affected by the use of the GI. We do not consider this fatal to the applicability of Article 17 given that, as a provision permitting an exception to the exclusive right to prevent uses that would result in a likelihood of confusion, it presupposes that a certain degree of likelihood of confusion can be permitted. In the light of the provisions of Articles 7(4) and 14(3), we are satisfied that where the likelihood of confusion is relatively high, the exception in Article 14(2) will not apply. In any event, even where the exception does apply, Article 14(2) expressly provides that the trademark may continue to be used, on certain conditions.

 

We also note that the proviso to Article 17 requires only that exceptions “take account” of the legitimate interests of the owner of the trademark, and does not refer to “unreasonabl[e] prejudice” to those interests, unlike the provisos in Articles 13, 26.2 and 30 of the TRIPS Agreement and Article 9(2) of the Berne Convention (1971) as incorporated by Article 9.1 of the TRIPS Agreement. This suggests that a lesser standard of regard for the legitimate interests of the owner of the trademark is required.”(147)

(e) “legitimate interests of … third parties”

142.     In EC — Trademarks and Geographical Indications the Panel considered that “third parties” include consumers:

“The parties to this dispute agree that “third parties” for the purposes of Article 17 include consumers. The function of a trademark is to distinguish goods and services of undertakings in the course of trade. That function is served not only for the owner, but also for consumers. Accordingly, the relevant third parties include consumers. Consumers have a legitimate interest in being able to distinguish the goods and services of one undertaking from those of another, and to avoid confusion.”(148)

143.     In EC — Trademarks and Geographical Indications the Panel also considered that “third parties” may include GI users:

“The European Communities submits that “third parties” for the purposes of Article 17 include persons using a GI in accordance with a GI registration. The Panel agrees. Article 17 permits an exception to the rights conferred by a trademark which include, according to Article 16.1, a right to prevent “all third parties” from using certain signs. The basis of the complainant’s claim is that those third parties include GI users. It is logical that, if GI users are included in the third parties subject to the trademark owner’s right, they are also included in the third parties taken into account in assessing the availability of an exception to that right.

 

The legitimacy of the interests of GI users is reflected in the TRIPS Agreement itself, to which all WTO Members have subscribed. Under Section 3 of Part II, all WTO Members agree to provide certain protection to GIs, although they remain free to determine the appropriate method of implementing those provisions in accordance with Article 1.1. The definition of a GI in Article 22.1 reflects a legitimate interest that a person may have in identifying the source and other characteristics of a good by the name of the place where it is from, if the name would serve that purpose. Nevertheless, as “legitimate interests”, the interests of GI users as third parties within the meaning of Article 17 would be different from the legal protection provided for in Articles 22 and 23.”(149)

(f) Burden of Proof

144.     In EC — Trademarks and Geographical Indications the Panel followed the approach of the Panels in US — Section 110(5) Copyright Act and Canada — Pharmaceutical Patents to exception’s provisions, namely that the party asserting that its measure is covered by the exception in Article 17 bears the burden of proving that assertion, as this approach was not contested:

“The United States submits that the European Communities, as the party asserting that its measure is covered by the exception in Article 17, bears the burden of proving that assertion. The European Communities does not contest this position. Therefore, the Panel will follow this approach in the present dispute.”(150)

(g) Relationship with other Articles

145.     In EC — Trademarks and Geographical Indications the Panel noted the differences between Article 17, on the one hand, and Articles 13, 26.2 and 30 of the TRIPS Agreement, as well as Article 9(2) of the Berne Convention (1971) as incorporated by Article 9.1 of the TRIPS Agreement, on the other hand. Although the Panel did refer to jurisprudence on “limited exceptions” and “legitimate interests” under Article 30 of the TRIPS Agreement, it expressed caution in referring to these other provisions when interpreting Article 17:

“The structure of Article 17 differs from that of other exceptions provisions to which the parties refer. It can be noted that Articles 13, 26.2 and 30 of the TRIPS Agreement, as well as Article 9(2) of the Berne Convention (1971) as incorporated by Article 9.1 of the TRIPS Agreement, also permit exceptions to intellectual property rights and all contain, to varying degrees, similar language to Article 17. However, unlike these other provisions, Article 17 contains no reference to “conflict with a [or the] normal exploitation”, no reference to “unreasonabl[e] prejudice” to the legitimate interests” of the right holder or owner, and it not only refers to the legitimate interests of third parties but treats them on par with those of the right holder. It is also the only one of these provisions which contains an example. Further, Article 17 permits exceptions to trademark rights, which differ from each of the intellectual property rights to which these other exceptions apply. Therefore, whilst it is instructive to refer to the interpretation by two previous panels of certain shared elements found in Articles 13 and 30, it is important to interpret Article 17 according to its own terms.”(151)

146.     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 also footnote 207.

 

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, India — Patents (US), para. 57. back to text
2. Panel Reports, EC — Trademarks and Geographical Indications (US), para. 7.131, and (Australia), para. 7181. back to text
3. Panel Reports, EC — Trademarks and Geographical Indications (US), para. 7.620, and (Australia), para. 7.620. back to text
4. Panel Report, EC — Trademarks and Geographical Indications (US), para. 7.742. See also Panel Reports, EC — Trademarks and Geographical Indications (US) para. 7.682 and (Australia), para. 7.680. back to text
5. Panel Report, China — Intellectual Property Rights, para. 7.513. back to text
6. Panel Report, EC — Trademarks and Geographical Indications (Australia), para. 7.755. back to text
7. Appellate Body Report, India — Patents (US), para. 59. back to text
8. Panel Report, Canada — Patent Term, para. 6.94. back to text
9. Panel Report, EC — Trademarks and Geographical Indications (US), paras. 7.766–7.767. back to text
10. Panel Reports, EC — Trademarks and Geographical Indications (US), para. 7.746. See also Panel Reports, EC — Trademarks and Geographical Indications (US) para. 7.682, and (Australia), para. 7.680. See further para. 112. back to text
11. Panel Report, China — Intellectual Property Rights, para. 7.513. back to text
12. Appellate Body Report, US — Section 211 Appropriations Act, para. 335. back to text
13. Panel Reports, EC — Trademarks and Geographical Indications (US), paras. 7.126–7.128 and (Australia), paras. 7.176–7.178. back to text
14. Panel Reports, EC — Trademarks and Geographical Indications (US), para. 7.147, and (Australia), para. 7.197. back to text
15. Panel Reports, EC — Trademarks and Geographical Indications (US), para. 7.142 and (Australia), para. 7.192. back to text
16. Panel Report, EC — Trademarks and Geographical Indications (US), paras. 7.162–7.167. back to text
17. Panel Reports, EC — Trademarks and Geographical Indications (US), para. 7.198, and (Australia), para. 7.234. back to text
18. Appellate Body Report, US — Section 211 Appropriations Act, paras. 336, 337 and 341. back to text
19. Panel Reports, EC — Trademarks and Geographical Indications (US), paras. 7.216 and (Australia), paras. 7.252. back to text
20. See United States’ rebuttal submission, paras. 49 and 60, which refer to no less favourable treatment. back to text
21. Panel Reports, EC — Trademarks and Geographical Indications (US), paras. 7.432. back to text
22. Panel Report, EC — Trademarks and Geographical Indications (US), paras. 7.216 and (Australia), para. 7.253. back to text
23. Panel Report, EC — Trademarks and Geographical Indications (US), para. 7.144. back to text
24. Appellate Body Report, US — Section 211 Appropriations Act, paras. 175–176. back to text
25. Panel Report, US — Section 211 Appropriations Act, para. 8.120. back to text
26. Decision of the Council for TRIPS, document IP/C/7. back to text
27. The text of the Agreement can be found in IP/C/6. back to text
28. Appellate Body Report, US — Section 211 Appropriations Act, para. 147. back to text
29. Appellate Body Report, US — Section 211 Appropriations Act, paras. 338 and 341. back to text
30. Appellate Body Report, US — Section 211 Appropriations Act, para. 359. back to text
31. Panel Report in EC — Trademarks and Geographical Indications (US), para. 7.170. See also Panel Report in EC — Trademarks and Geographical Indications (Australia), para. 7.203. back to text
32.  Decision by the Arbitrators, EC — Bananas (Ecuador) (Article 22.6 — EC), para. 149. back to text
33. Panel Reports, EC — Trademarks and Geographical Indications (US), paras. 7.274–7.275, and (Australia), paras. 7.309–7.310. See also, with respect to objection procedures, para. 7.342 and para. 7.375, respectively. back to text
34. Panel Reports, EC — Trademarks and Geographical Indications (US), para. 7.141, and (Australia), para. 7.191. See paras. 15 and 16 above. back to text
35. Panel Report, Indonesia — Autos, para. 14.268. back to text
36. Panel Report, Indonesia — Autos, para. 14.271. back to text
37. Panel Report, Indonesia — Autos, para. 14.273. back to text
38. Appellate Body Report, 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
39. Appellate Body Report, US — Section 211 Appropriations Act, para. 286. back to text
40. Appellate Body Report, US — Section 211 Appropriations Act, para. 294. back to text
41. Appellate Body Report, US — Section 211 Appropriations Act, para. 289. back to text
42. Appellate Body Report, US — Section 211 Appropriations Act, para. 265. back to text
43. Panel Reports, EC — Trademarks and Geographical Indications (US), para. 7.139, and (Australia), para. 7.189, citing the Appellate Body Report in US — Section 211 Appropriations Act, para. 268. back to text
44. Panel Reports, EC — Trademarks and Geographical Indications (US), paras. 7.271–7.272, and (Australia), paras. 7.306–7.307. See also, analogous findings with respect to objection procedures in the EC Regulation, (US) paras. 7.340–7.341, and (Australia) paras. 7.373–7.374, and with respect to government participation in inspection structures under the EC Regulation, (US) paras. 7.426–7.428. back to text
45. Panel Report, EC — Trademarks and Geographical Indications (Australia), para. 7.400. back to text
46. Panel Reports, EC — Trademarks and Geographical Indications (US), para. 7.176, and (Australia), para. 7.210. back to text
47. Panel Report, US — Section 211 Appropriations Act, para. 8.131, citing the GATT panel report in US — Section 337, at para. 5.11, and see Appellate Body Report, US — Section 211 Appropriations Act, para. 258. back to text
48. Panel Reports, EC — Trademarks and Geographical Indications (US), para. 7.133, and (Australia), para. 7.184. back to text
49. Panel Reports, EC — Trademarks and Geographical Indications (US), paras. 7.136 and 7.137, and (Australia), paras. 7.186–7.187, quoting the Appellate Body Report, US — FSC (Article 21.5 — EC), para. 215. back to text
50. Panel Reports, EC — Trademarks and Geographical Indications (US), paras. 7.181–7.182, and (Australia), paras. 7.217–7.218. back to text
51. Panel Reports, EC — Trademarks and Geographical Indications (US), para. 7.148. back to text
52. Panel Reports, EC — Trademarks and Geographical Indications (US), paras. 7.149–7.150, and (Australia), paras. 7.199–7.200. back to text
53. Panel Report, EC — Trademarks and Geographical Indications (US), paras. 7.412–7.413. back to text
54. Appellate Body Report, US — Section 211 Appropriations Act, paras. 352 to 356. back to text
55. Panel Report, Indonesia — Autos, paras. 14.275–14.276. back to text
56. Panel Reports, EC — Trademarks and Geographical Indications (US), para. 7.126, and (Australia), para. 7.176. back to text
57. Panel Reports, EC — Trademarks and Geographical Indications (US), para. 7.128, and (Australia), para. 7.178. See also with respect to Article 4: (US), para. 7.700. back to text
58. Panel Reports, EC — Trademarks and Geographical Indications (US), para. 7.262, and (Australia), para. 7.298. See also with respect to Article 4: (US), para. 7.719. back to text
59. Panel Reports, EC — Trademarks and Geographical Indications (US), para. 7.329, and (Australia), para. 7.364. See also with respect to Article 4: (US), para. 7.719. back to text
60. Panel Reports, EC — Trademarks and Geographical Indications (US), para. 7.403. back to text
61. Panel Reports, EC — Trademarks and Geographical Indications (US), para. 7.486. back to text
62. IP/C/M/12, paras. 10–16. The format can be found in IP/C/9. back to text
63. Appellate Body Report, US — Section 211 Appropriations Act, para. 242. back to text
64. Panel Reports, EC — Trademarks and Geographical Indications (US), para. 7.131, and (Australia), para. 7.181. back to text
65. Panel Reports, EC — Trademarks and Geographical Indications (US), para. 7.135, and (Australia), para. 7.185, citing the Panel Report, US — Section 211 Appropriations Act at para. 8.129 and Appellate Body Report at para. 242. back to text
66. Panel Reports, EC — Trademarks and Geographical Indications (US), para. 7.208, and (Australia), para. 7.244, citing the Panel Report, Canada — Periodicals, at para. 5.17, and Appellate Body Report, Canada — Periodicals, DSR 1997:I, 449, at 465, the Appellate Body Reports, Argentina — Footwear (EC), para. 81, and Korea — Dairy, para. 74, and the Panel Reports in EC — Bananas III, para. 7.160. back to text
67. Appellate Body Report, US — Section 211 Appropriations Act, para. 314. back to text
68. Appellate Body Report, US — Section 211 Appropriations Act, para. 317. back to text
69. Appellate Body Report, US — Section 211 Appropriations Act, paras. 352, 353 and 357. back to text
70. Panel Report, EC — Trademarks and Geographical Indications (US), paras. 7.699–7.701. back to text
71. Panel Report, EC — Trademarks and Geographical Indications (US), paras. 7.703–7.704. back to text
72. Panel Report, EC — Trademarks and Geographical Indications (US), para. 7.58. back to text
73. Panel Report, EC — Trademarks and Geographical Indications (US), para. 7.704. back to text
74. Panel Report, EC — Trademarks and Geographical Indications (US), para. 7.705. back to text
75. See document IP/C/9. back to text
76. The text of the Declaration can be found in document WT/MIN (91)/DEC/2, reproduced in Section LXXVIII below back to text
77. (footnote original) Appellate Body Report, United States–Shrimps, para. 158. back to text
78. Panel Report, US — Section 211 Appropriations Act, para. 8.57. back to text
79. The text of the Declaration can be found in document WT/MIN (91)/DEC/2, reproduced in Section LXXVIII below back to text
80. The text of the Declaration can be found in WT/MIN(01)/DEC/1. back to text
81. Panel Reports, EC — Trademarks and Geographical Indications (US), para. 7.210, and (Australia), para. 7.246. back to text
82. The text of the Declaration can be found in document WT/MIN (91)/DEC/2, reproduced in Section LXXVIII below back to text
83. The text of the Declaration can be found in WT/MIN(01)/DEC/1. back to text
84. Panel Report, US — Section 110(5) Copyright Act, paras. 6.17–6.18. back to text
85. Panel Report, US — Section 110(5) Copyright Act, para. 6.41. back to text
86. Panel Report, US — Section 110(5) Copyright Act, para. 6.66. back to text
87. Panel Report, US — Section 110(5) Copyright Act, para. 6.70. back to text
88. (footnote original) The Panel notes that this provision, as incorporated by Article 9.1 of the TRIPS Agreement, is distinct from Article 3.1 of that Agreement. back to text
89. (footnote original) This enumeration is without prejudice to other such rights. back to text
90. Panel Report, China — Intellectual Property Rights, paras. 7.106–7.107. back to text
91. Panel Report, China — Intellectual Property Rights, para. 7.115. back to text
92. (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
93. Panel Report, US — Section 110(5) Copyright Act, para. 6.24. back to text
94. Panel Report, US — Section 110(5) Copyright Act, para. 6.51. back to text
95. 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
96. Award of the Arbitrator on US — Section 110(5) Copyright Act (Article 25.3), para. 3.15. back to text
97. Panel Report, US — Section 110(5) Copyright Act, para. 6.25. back to text
98. Panel Report, US — Section 110(5) Copyright Act, paras. 6.20–6.22. back to text
99. 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
100. Award of the Arbitrator on US — Section 110(5) Copyright Act (Article 25.3), para. 3.15. back to text
101. Panel Report, US — Section 110(5) Copyright Act, para. 6.95. back to text
102. Panel Report, US — Section 110(5) Copyright Act, paras. 6.57–6.58. back to text
103. Panel Report, US — Section 110(5) Copyright Act, paras. 6.60 and 6.63. back to text
104. (footnote original) Even the right of a government ‘to permit’ the circulation, presentation, or exhibition of a work could be exercised for reasons of public order, such as the publication or broadcast by the police of a photograph of a wanted criminal: see Masouyé, C., Guide to the Berne Convention, (World Intellectual Property Organization, 1978) (“WIPO Guide to the Berne Convention”), para. 17.3. The Panel notes that, as stated in its preface, this Guide is not intended to be an authentic interpretation of the provisions of the Berne Convention since such an interpretation is not within the competence of the International Bureau of WIPO. back to text
105. (footnote original) For example, the term “la représentation” is expressly included in the French text in Article 17 as well as in Articles 11(1)(i) (ii), 14(1)(ii) and 14bis(2)(b) in the phrase “la représentation et l’exécution”, rendered as “performance” in the English text. back to text
106. (footnote original) For example, the word “la circulation” used in Article 17 of the French text is also used in provisions on possible limitations on the rights of translation and reproduction in Articles I(4), II(6), II(8), III(2)(b), III(4)(d), III(6) and IV(5) of the Appendix, rendered as “circulation” in the English text in Articles II(8) and III(4)(d) of the Appendix and “distributed” or “distribution” elsewhere. back to text
107. (footnote original) The word “exhibition” in Article 17 is also used in the definition of “published works” in Article 3(3) which provides inter alia that “the exhibition of a work of art … shall not constitute publication.” Article 3(3) of the French text also uses the word “la représentation” of certain categories of works for the same purpose. back to text
108. Panel Report, China — Intellectual Property Rights, paras. 7.126–7.127. back to text
109. Panel Report, China — Intellectual Property Rights, paras. 7.132–7.133 and 7.135. back to text
110.  Panel Report, US — Section 110(5) Copyright Act, para. 6.82. back to text
111. IP/C/M/19, para. 8; IP/C/14. back to text
112. Panel Report, US — Section 110(5) Copyright Act, para. 6.80. back to text
113. Panel Report, US — Section 110(5) Copyright Act, para. 6.97. back to text
114. Panel Report, US — Section 110(5) Copyright Act, para. 6.94.  back to text
115. Panel Report, US — Section 110(5) Copyright Act, paras. 6.87–6.89. back to text
116. Panel Report, US — Section 110(5) Copyright Act, para. 6.90. back to text
117. Panel Report, US — Section 110(5) Copyright Act, para. 6.112. back to text
118. (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
119. (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
120. Panel Report, US — Section 110(5) Copyright Act, para. 6.111. back to text
121. Panel Report, US — Section 110(5) Copyright Act, para. 6.113. back to text
122. Panel Report, US — Section 110(5) Copyright Act, para. 6.165. back to text
123. (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 120. As reproduced in the Berne Convention Centenary, p. 197. back to text
124. Panel Report, US — Section 110(5) Copyright Act, paras. 6.166–6.167. back to text
125. Panel Report, US — Section 110(5) Copyright Act, para. 6.173. back to text
126. Panel Report, US — Section 110(5) Copyright Act, paras. 6.178 and 6.180. back to text
127. Panel Report, US — Section 110(5) Copyright Act, paras. 6.183–6.184 and 6.187–6.188. back to text
128. Panel Report, US — Section 110(5) Copyright Act, para. 6.222. back to text
129. Panel Report, US — Section 110(5) Copyright Act, paras. 6.223–6.225. back to text
130. Panel Report, US — Section 110(5) Copyright Act, paras. 6.226–6.229. back to text
131. Panel Report, US — Section 110(5) Copyright Act, para. 6.235. back to text
132. Panel Report, US — Section 110(5) Copyright Act, paras. 6.236 and 6.249. back to text
133. Appellate Body Report, US — Section 211 Appropriations Act, paras. 156 and 165. back to text
134. Appellate Body Report, US — Section 211 Appropriations Act, paras. 171, 177 and 178. back to text
135. Appellate Body Report, US — Section 211 Appropriations Act, paras. 186, 187 and 195. back to text
136. Panel Reports, EC — Trademarks and Geographical Indications (US), paras. 7.601–7.603, and (Australia), paras. 7.601–7.603. back to text
137. Panel Reports, EC — Trademarks and Geographical Indications (US), footnote 558 to para. 7.611 and (Australia), footnote 564 to para. 7.611. back to text
138. Panel Report, EC — Trademarks and Geographical Indications (Australia), paras. 7.699–7.700. back to text
139. Panel Report, EC — Trademarks and Geographical Indications (Australia), para. 7.691. back to text
140. Appellate Body Report, US — Section 211 Appropriations Act, para. 199. back to text
141. Panel Report, Canada — Pharmaceutical Patents, para. 7.30. back to text
142. Panel Reports, EC — Trademarks and Geographical Indications (US), paras. 7.650–7.651, and (Australia), paras. 7.650–7.651. back to text
143. Panel Reports, EC — Trademarks and Geographical Indications (US), paras. 7.659–7.660, and (Australia), paras. 7.659–7.660. back to text
144. Panel Reports, EC — Trademarks and Geographical Indications (US), para. 7.654, and (Australia), para. 7.654. back to text
145. Panel Reports, EC — Trademarks and Geographical Indications (US), para. 7.662, and (Australia), para. 7.662. back to text
146. Panel Reports, EC — Trademarks and Geographical Indications (US), para. 7.664, and (Australia), para. 7.664. back to text
147. Panel Reports, EC — Trademarks and Geographical Indications (US), paras. 7.670–7.671, and (Australia), paras. 7.670–7.671. back to text
148. Panel Reports, EC — Trademarks and Geographical Indications (US), para. 7.676, and (Australia), para. 7.675. back to text
149. Panel Reports, EC — Trademarks and Geographical Indications (US), paras. 7.681–7.682, and (Australia), paras. 7.679–7.680. back to text
150. Panel Reports, EC — Trademarks and Geographical Indications (US), para. 7.645, and (Australia), para. 7.645. However, the Panel made some observations about this approach in a footnote to these paragraphs ((US), footnote 578 to para. 7.645 and (Australia), footnote 583 to para. 7.645. back to text
151. Panel Reports, EC — Trademarks and Geographical Indications (US), para. 7.649, and (Australia), para. 7.649. back to text

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