AGREEMENT ON
TRADE-RELATED ASPECTS
OF INTELLECTUAL
PROPERTY RIGHTS
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Intellectual property:
protection and enforcement
⦿ The WTO’s Agreement on Trade-Related Aspects of
Intellectual Property Rights (TRIPS), negotiated in the
1986-94 Uruguay Round, introduced intellectual
property rules into the multilateral trading system for the
first time.
⦿ The TRIPS Agreement is Annex 1C of the Marrakesh
Agreement Establishing the World Trade Organization
signed in Marrakesh, Morocco on 15 April 1994.
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⦿ The WTO’s TRIPS Agreement is an attempt to
narrow the gaps in the way these rights are
protected around the world, and to bring them
under common international rules.
⦿ It establishes minimum levels of protection that
each government has to give to the intellectual
property of fellow WTO members.
⦿ In doing so, it strikes a balance between the long
term benefits and possible short term costs to
society.
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⦿ Society benefits in the long term when intellectual
property protection encourages creation and
invention, especially when the period of protection
expires and the creations and inventions enter the
public domain.
⦿ Governments are allowed to reduce any short term
costs through various exceptions, for example to
tackle public health problems. And, when there are
trade disputes over intellectual property rights, the
WTO’s dispute settlement system is now available
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⦿ The agreement covers five broad issues:
⦿ How basic principles of the trading system
and other international intellectual property
agreements should be applied?
⦿ How to give adequate protection to
intellectual property rights?
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⦿ How countries should enforce those rights
adequately in their own territories?
⦿ How to settle disputes on intellectual
property between members of the WTO?
⦿ special transitional arrangements during
the period when the new system is being
introduced
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⦿ the main international agreements of the World
Intellectual Property Organization (WIPO)that
already existed before the WTO was created:
⦿ the Paris Convention for the Protection of
Industrial Property(patents, industrial designs
⦿ the Berne Convention for the Protection of Literary
and Artistic Works (copyright).
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⦿ Some areas are not covered by these
conventions. In some cases, the standards of
protection prescribed were thought inadequate. So
the TRIPS agreement adds a significant number of
new or higher standards.
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Types of intellectual
property
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Copyright and related rights
Trademarks, including service marks
Geographical indications
Industrial designs
Patents
Layout-designs (topographies) of
integrated circuits
Undisclosed information, including
trade secrets
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Copyright
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⦿ Copyright protection shall extend to expressions
and not to ideas, procedures, methods of
operation or mathematical concepts as such.
⦿ The TRIPS agreement ensures that computer
programs will be protected as literary works under
the Berne Convention and outlines how databases
should be protected.
⦿ It also expands international copyright rules to
cover rental rights.
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⦿ Authors of computer programs and producers
of sound recordings must have the right to
prohibit the commercial rental of their works to
the public.
⦿ A similar exclusive right applies to films where
commercial rental has led to widespread
copying, affecting copyright-owners’ potential
earnings from their films.
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⦿ The agreement says performers must also
have the right to prevent unauthorized
recording, reproduction and broadcast of
live performances (bootlegging) for no less
than 50 years.
⦿ Producers of sound recordings must have
the right to prevent the unauthorized
reproduction of recordings for a period of 50
years.
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Trademarks
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⦿ The agreement defines what types of signs
must be eligible for protection as
trademarks, and what the minimum rights
conferred on their owners must be. It says
that service marks must be protected in the
same way as trademarks used for goods.
Marks that have become well-known in a
particular country enjoy additional
protection.
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Geographical
indications
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⦿ A place name is sometimes used to identify
a product. This “geographical indication”
does not only say where the product was
made. More importantly, it identifies the
product’s special characteristics, which are
the result of the product’s origins.
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⦿ Well-known examples include
“Champagne”, “Scotch”, “Tequila”, and
“Roquefort” cheese. Wine and spirits
makers are particularly concerned about
the use of place-names to identify
products, and the TRIPS Agreement
contains special provisions for these
products. But the issue is also important for
other types of goods.
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⦿ Using the place name when the product was
made elsewhere or when it does not have the
usual characteristics can mislead consumers,
and it can lead to unfair competition.
⦿ The TRIPS Agreement says countries have to
prevent this misuse of place names.
⦿ For wines and spirits, the agreement provides
higher levels of protection, i.e. even where
there is no danger of the public being misled
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⦿ Some exceptions are allowed, for example
if the name is already protected as a
trademark or if it has become a generic
term. For example, “cheddar” now refers to
a particular type of cheese not necessarily
made in Cheddar, in the UK.
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⦿ But any country wanting to make an
exception for these reasons must be willing
to negotiate with the country which wants
to protect the geographical indication in
question.
22
⦿ The agreement provides for further
negotiations in the WTO to establish a
multilateral system of notification and
registration of geographical indications for
wines.
⦿ These are now part of the Doha
Development Agenda and they include
spirits. Also debated in the WTO is whether
to negotiate extending this higher level of
protection beyond wines and spirits.
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Industrial designs
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⦿ Under the TRIPS Agreement, industrial designs
must be protected for at least 10 years.
⦿ Owners of protected designs must be able to
prevent the manufacture, sale or importation of
articles bearing or embodying a design which is
a copy of the protected design.
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Patents
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⦿ The agreement says patent protection must
be available for inventions for at least 20
years.
⦿ Patent protection must be available for both
products and processes, in almost all fields
of technology.
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⦿ Governments can refuse to issue a patent
for an invention if its commercial
exploitation is prohibited for reasons of
public order or morality.
⦿ They can also exclude diagnostic,
therapeutic and surgical methods, plants
and animals (other than microorganisms),
and biological processes for the production
of plants or animals (other than
microbiological processes).
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⦿ Plant varieties, however, must be
protectable by patents or by a special
system (such as the breeder’s rights
provided in the conventions of UPOV —
the International Union for the Protection of
New Varieties of Plants).
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⦿ The agreement describes the minimum
rights that a patent owner must enjoy. But it
also allows certain exceptions. A patent
owner could abuse his rights, for example
by failing to supply the product on the
market.
⦿ To deal with that possibility, the agreement
says governments can issue “compulsory
licensees”, allowing a competitor to
produce the product or use the process
under license.
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⦿ But this can only be done under certain
conditions aimed at safeguarding the
legitimate interests of the patent-holder.
⦿ If a patent is issued for a production
process, then the rights must extend to the
product directly obtained from the process.
Under certain conditions alleged infringers
may be ordered by a court to prove that
they have not used the patented process.
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⦿ An issue that has arisen recently is how to
ensure patent protection for pharmaceutical
products does not prevent people in poor
countries from having access to medicines
— while at the same time maintaining the
patent system’s role in providing incentives
for research and development into new
medicines.
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⦿ Flexibilities such as compulsory licensing
are written into the TRIPS Agreement, but
some governments were unsure of how
these would be interpreted, and how far
their right to use them would be respected.
⦿ A large part of this was settled when WTO
ministers issued a special declaration at
the Doha Ministerial Conference in
November 2001.
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⦿ They agreed that the TRIPS Agreement
does not and should not prevent members
from taking measures to protect public
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Integrated circuits
layout designs
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⦿ The basis for protecting integrated circuit
designs (“topographies”) in the TRIPS
agreement is the Washington Treaty on
Intellectual Property in Respect of
Integrated Circuits, which comes under the
World Intellectual Property Organization.
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⦿ This was adopted in 1989 but has not yet
entered into force. The TRIPS agreement
adds a number of provisions: for example,
protection must be available for at least 10
years.
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Undisclosed
information and trade
secrets
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⦿ Trade secrets and other types of
“undisclosed information” which have
commercial value must be protected
against breach of confidence and other
acts contrary to honest commercial
practices.
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⦿ But reasonable steps must have been
taken to keep the information secret.
⦿ Test data submitted to governments in
order to obtain marketing approval for new
pharmaceutical or agricultural chemicals
must also be protected against unfair
commercial use.
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Curbing
anti-competitive
licensing contracts
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⦿ The owner of a copyright, patent or other
form of intellectual property right can issue
a license for someone else to produce or
copy the protected trademark, work,
invention, design, etc.
⦿ The agreement recognizes that the terms
of a licensing contract could restrict
competition or impede technology transfer.
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⦿ It says that under certain conditions,
governments have the right to take action
to prevent anti-competitive licensing that
abuses intellectual property rights.
⦿ It also says governments must be
prepared to consult each other on
controlling anti-competitive licensing.
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Enforcement: tough but
fair
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⦿ Having intellectual property laws is not
enough. They have to be enforced. This is
covered in Part 3 of TRIPS.
⦿ The agreement says governments have to
ensure that intellectual property rights can
be enforced under their laws, and that the
penalties for infringement are tough
enough to deter further violations.
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⦿ The procedures must be fair and
equitable, and not unnecessarily
complicated or costly.
⦿ They should not entail unreasonable
time-limits or unwarranted delays.
People involved should be able to ask a
court to review an administrative
decision or to appeal a lower court’s
ruling.
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⦿ The agreement describes in some detail
how enforcement should be handled,
including rules for obtaining evidence,
provisional measures, injunctions,
damages and other penalties.
⦿ It says courts should have the right, under
certain conditions, to order the disposal or
destruction of pirated or counterfeit goods.
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⦿ Willful trademark counterfeiting or copyright
piracy on a commercial scale should be
criminal offences. Governments should
make sure that intellectual property rights
owners can receive the assistance of
customs authorities to prevent imports of
counterfeit and pirated goods.
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Technology transfer
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⦿ Developing countries in particular, see
technology transfer as part of the bargain in
which they have agreed to protect
intellectual property rights.
⦿ The TRIPS Agreement includes a number
of provisions on this. For example, it
requires developed countries’ governments
to provide incentives for their companies to
transfer technology to least-developed
countries.
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