TRADE RELATED ASPECTS OF INTELLECTUAL PROPERTY

RIGHTS
In international trade, the proportion of goods and services consisting of intellectual property
has increased dramatically, and if the intellectual property protection offered by countries is
inadequate or inappropriate, there is a danger of distorting the international trade order.
However, in developing countries, although systems existed for the protection of intellectual
property, there were many countries where the standard of protection was inadequate, for
example the extent of protection was limited or the period of protection was extremely short,
or enforcement of intellectual property rights could not be guaranteed to be sufficiently
effective. Even among developed nations, there were some countries with systems that gave
too much protection to intellectual property or discriminated between internal and external
sources. For these reasons, from the perspective of improving the international trade order,
there was increasing recognition of the necessity to develop a framework to ensure appropriate
protection of intellectual property.
In the intellectual property field there already existed a number of agreements for the
international protection of intellectual property, such as the Paris Convention related to
industrial property rights including patents and trademarks, and the Berne Convention
concerning copyright.
It is a not-for-profit international association composed chiefly of
trademark owners and practitioners. It is a global association. Trademark
owners and professionals dedicated in supporting trademarks and related
IP in order to protect consumers and to promote fair and effective
commerce. More than 4000 (Present 6500 member) companies and law
firms more than 150 (Present 190 countries) countries belong to INTA,
together with others interested in promoting trademarks. INTA offers a
wide variety of educational seminars and publications, including many
worthwhile materials available at no cost on the Internet (see INTA’s
home page at http://www.inta.org). INTA members have collectively
International Trademark
contributes almost US $ 12 trillion to global GDP annually. INTA
Association (INTA)
undertakes advocacy [active support] work throughout the world to
advance trademarks and offers educational programs and informational
and legal resources of global interest. Its head quarter in New York City,
INTA also has offices in Brussels, Shanghai and Washington DC and
representative in Geneva and Mumbai. This association was founded in
1878 by 17 merchants and manufacturers who saw a need for an
organization. The INTA is formed to protect and promote the rights of
trademark owners, to secure useful legislation (the process of making
laws), and to give aid and encouragement to all efforts for the
advancement and observance of trademark rights.
It was founded in 1883 and is specialized agency of the United Nations
World Intellectual whose purposes are to promote intellectual property throughout the world
Property Organization and to administer 23 treaties (Present 26 treaties) dealing with intellectual
(WIPO) property. WIPO is one of the 17 specialized agencies of the United
Nations. It was created in 1967, to encourage creative activity, to promote
 the protection of Intellectual Property throughout the world. 1893. More
than 175 (Present 188) nations are members of WIPO. Its headquarters
in Geneva, Switzerland, current Director General of WIPO is Francis
Gurry took charge on October 1, 2008. The predecessor to WIPO was the
BIRPI [Bureaux for the Protection of Intellectual Property] it was
established in WIPO was formally created by the convention (meeting)
establishing the world intellectual Property organization which entered
into force on April261970.
An international copyright treaty called the convention for the protection
of Literary and Artistic works signed at Berne, Switzerland in 1886 under
the leadership of Victor Hugo to protect literary and artistic works. It has
more than 145 member nations. The United States became a party to the
Berne Convention for
Berne Convention in 1989. The Berne Convention is administered by
the Protection of
WIPO and is based on the precept that each member nation must treat
Literary and Artistic
nation must treat nationals of other member countries like its own
Work (The Berne
nationals for purposes of copyright (the principle of “nation treatment”).
Convention)
In addition to establishing a system of equal treatment that
internationalized copyright amongst signatories, the agreement also
required member states to provide strong minimum standards for
copyrights law. It was influenced by the French “right of the author”.
It is a legal basis is the multilateral treaties Madrid (it is a city situated in
Spain) Agreement concerning the International Registration of Marks of
1891, as well as the protocol relating to the Madrid Agreement 1989. The
Madrid system provides a centrally administered system of obtaining a
Madrid Protocol bundle of trademark registration in separate jurisdiction. The protocol is
a filing treaties and not substantive harmonization treaty. It provides a
cost-effective and efficient way for trademark holder. It came into
existence in 1996. It allows trademark protection for more than sixty
countries, including all 25 countries of the European Union.
The Paris convention for the protection of Industrial Property, signed in
Paris, France, on 20th March 1883, was one of the first Intellectual
Property treaties, after a diplomatic conference in Paris, France, on 20
March 1883 by Eleven (11) countries. According to Articles 2 and 3 of
this treaty, juristic (one who has through knowledge and experience of
law) and natural persons who are either national of or domiciled in a state
party to the convention. The convention is currently still force. The
Paris Convention substantive provisions of the convention fall into three main categories:
National Treatment, Priority right and Common Rules. An applicant for
a trademark has six months after filing an application in any of the more
than 160 member nations to file a corresponding application in any of the
other member countries of the Paris Convention and obtain the benefits
of the first filing date. Similar priority is afforded for utility patent
applications, although the priority period is one year rather than six
months. The Paris Convention is administered by WIPO.

However, with more emphasis being placed on the trade related aspects of intellectual property,
it was seen as an urgent task to attain international agreement in the context of GATT, with as
many nations as possible participating, concerning standards of protection of intellectual
property associated with trade. In this climate, the negotiations concerning Trade:Related
Aspects of Intellectual Property Rights (TRIPS) became one of the important new areas for
discussion at the Uruguay Round of GATT, begun in 1986. Along with other agreements to
come out of the Uruguay Round, the Agreement on Trade Related Aspects of Intellectual
Property Rights (the TRIPS Agreement) was finally agreed upon at the ministerial meeting in
Marrakesh, Morocco in April 1994, and came into force as part of the WTO Agreement on
January 1, 1995.
❖ Overview of the TRIPS Agreement
The TRIPS Agreement covers the issues of protection of intellectual property in trade:related
areas to a significant degree, and is seen as a comprehensive new framework prescribing
standards of intellectual property protection. Further, the TRIPS Agreement has the added
significance of being the first international agreement concerning all types of intellectual
property with numerous substantive provisions.

• Process of TRIPS entering into force

The problems of protecting intellectual property rights were first discussed as an international
trade issue at GATT during the Tokyo Round in 1978. At the Tokyo Round there was debate
and policy coordination regarding international rules for strengthening strategies against
counterfeit goods. There had also been debate about the international protection of intellectual
property at the World Intellectual Property Organization (WIPO), a specialized agency of the
UN.
However, in the context of WIPO, a number of problems were pointed out, including:
(1) Treaties are difficult to enforce, and the WIPO General Assembly can only recommend
corrective measures.
(2) Adoption of treaties is based on the principle of consensus among all Members, and whether
Member States accede to a treaty or not is left entirely up to them. In other words, in the WIPO,
if a Member State violates a treaty, prompt measures to remedy the breach are unlikely to occur.
Thus at the ministerial meeting of GATT held in September 1986 in Punta del Este in Uruguay,
it was decided to begin negotiations on TRIPS. The debate began, and in January 1987, the
decision was made to form negotiation plans and negotiation groups in 15 fields. Subsequently,
in December 1988, an interim report was put together at the ministerial meeting in Montreal,
and in April 1989 a senior officials meeting was held.
However, the first stages of TRIPS negotiations were marked by strong differences in opinion
between developed countries, which wanted discussions focused on appropriate and effective
protection of intellectual property rights, and developing countries, which argued that GATT
did not have a mandate to conduct debate on the protection of IP rights. As a result, discussions
continued with the mandate argument set aside for the time being, but there remained intense
conflict between the opinions of developed and developing countries, and negotiations made
little headway.
At first, the Uruguay Round of negotiations was supposed to conclude after 4 years at the end
of 1990, but negotiations became bogged down over issues of agriculture and other items, and
it was decided in December 1990 at the ministerial meeting in Brussels to extend and continue
negotiations. In April 1991 the negotiation groups were reorganized from 15 into 7, and in
December the same year, GATT Director General Dunkel presented a proposal for final
agreement. In November 1992, the US and Europe reached general agreement on agricultural
issues, and the debate converged, with substantive negotiations finally concluding in December
1993. In April 1994 at the ministerial meeting in Marrakesh, Morocco, agreement was reached
on all points of negotiation, and the TRIPS Agreement came into force together with the WTO
Agreement in January 1995.

FEATURES OF THE TRIPS AGREEMENT

The TRIPS Agreement is a detailed and expansive agreement consisting of 73 Articles divided
into 7 Parts.

General Provisions and Basic Principles

Article 1: Nature and Scope of Obligations
Article 2: Intellectual Property Conventions
Article 3: National Treatment
Article 4: Most-Favored Nation Treatment
Part 1
Article 5: Multilateral Agreement on Acquisitions or Maintenance of
Protection
Article 6: Exhaustion
Article 7: Objectives
Article 8: Principles
All Categories of Intellectual Property
Section 1: Copyrights and Related Rights
Section 2: Trademarks
Section 3: Geographical Indications
Part II
Section 4: Industrial Designs
Section 5: Patents
Section 6: Layout Designs (Topographies) of Integrated Circuits
Section 7: Protection of Undisclosed Information
Enforcement of Intellectual Property Rights
Section 1: Agreement Contains Detailed Provisions Regarding General
Obligations
Part III Section 2: Civil and Administrative Procedures and Remedies
Section 3: Provisional Measures
Section 4: Special Requirements Related to Border Measures
Section 5: Criminal Procedures
Provisions Regarding Acquisition and Maintenance of Intellectual
Part IV
Property Rights and Related Inter-Partes Procedures
Part V Dispute Prevention and Settlement
Part VI Provisional Arrangements
 Part VII Institutional Arrangements and Final Provisions

CONTENT OF THE TRIPS AGREEMENT

• Standards Concerning the Availability, Scope, and Use of Intellectual Property
Rights
Section 1: Copyrights and
Related Rights
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 6 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.
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.
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.
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.
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.
Section 2: Trademarks

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.
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 6 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 6 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.
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.

Section 3: Geographical
Indications
Protection of Geographical Indications
1. Geographical indications are, for the purposes of this Agreement,
indications which identify a good as originating in the territory of a
Member, or a region or locality in that territory, where a given quality,
reputation or other characteristic of the good is essentially attributable
to its geographical origin.
2. In respect of geographical indications, Members shall provide the
legal means for interested parties to prevent:
(a) the use of any means in the designation or presentation of a good
that indicates or suggests that the good in question originates in a
geographical area other than the true place of origin in a manner which
misleads the public as to the geographical origin of the good;

(b) any use which constitutes an act of unfair competition within the
meaning of Article 10bis of the Paris Convention (1967).
3. A Member shall, ex officio if its legislation so permits or at the
request of an interested party, refuse or invalidate the registration of a
trademark which contains or consists of a geographical indication with
respect to goods not originating in the territory indicated, if use of the
indication in the trademark for such goods in that Member is of such
a nature as to mislead the public as to the true place of origin.
4. The protection under paragraphs 1, 2 and 3 shall be applicable
against a geographical indication which, although literally true as to
the territory, region or locality in which the goods originate, falsely
represents to the public that the goods originate in another territory.

Additional Protection for Geographical Indications for Wines and

Spirits
1. Each Member shall provide the legal means for interested parties
to prevent use of a geographical indication identifying wines for wines
not originating in the place indicated by the geographical indication in
question or identifying spirits for spirits not originating in the place
indicated by the geographical indication in question, even where the
true origin of the goods is indicated or the geographical indication is
used in translation or accompanied by expressions such as “kind”,
“type”, “style”, “imitation” or the like. (4)
2. The registration of a trademark for wines which contains or
consists of a geographical indication identifying wines or for spirits
which contains or consists of a geographical indication identifying
spirits shall be refused or invalidated, ex officio if a Member’s
legislation so permits or at the request of an interested party, with
respect to such wines or spirits not having this origin.
3. In the case of homonymous geographical indications for wines,
protection shall be accorded to each indication, subject to the
provisions of paragraph 4 of Article 22. Each Member shall determine
the practical conditions under which the homonymous indications in
question will be differentiated from each other, taking into account the
need to ensure equitable treatment of the producers concerned and that
consumers are not misled.
 4. In order to facilitate the protection of geographical indications for
wines, negotiations shall be undertaken in the Council for TRIPS
concerning the establishment of a multilateral system of notification
and registration of geographical indications for wines eligible for
protection in those Members participating in the system.
Section 4: Industrial
Designs
Requirements for Protection
1. Members shall provide for the protection of independently
created industrial designs that are new or original. Members may
provide that designs are not new or original if they do not
significantly differ from known designs or combinations of known
design features. Members may provide that such protection shall not
extend to designs dictated essentially by technical or functional
considerations.
2. Each Member shall ensure that requirements for securing
protection for textile designs, in particular in regard to any cost,
examination or publication, do not unreasonably impair the
opportunity to seek and obtain such protection. Members shall be
free to meet this obligation through industrial design law or through
copyright law.
Protection
1. The owner of a protected industrial design shall have the right to
prevent third parties not having the owner’s consent from making,
selling or importing articles bearing or embodying a design which is
a copy, or substantially a copy, of the protected design, when such acts
are undertaken for commercial purposes.
2. Members may provide limited exceptions to the protection of
industrial designs, provided that such exceptions do not unreasonably
conflict with the normal exploitation of protected industrial designs
and do not unreasonably prejudice the legitimate interests of the
owner of the protected design, taking account of the legitimate
interests of third parties.
3. The duration of protection available shall amount to at least 10
years.
Section 5: Patents

Patentable Subject Matter

1. Subject to the provisions of paragraphs 2 and 3, patents shall be
available for any inventions, whether products or processes, in all
fields of technology, provided that they are new, involve an inventive
step and are capable of industrial application. (5) Subject to
paragraph 4 of Article 65, paragraph 8 of Article 70 and paragraph 3
of this Article, patents shall be available and patent rights enjoyable
without discrimination as to the place of invention, the field of
technology and whether products are imported or locally produced.
2. Members may exclude from patentability inventions, the
prevention within their territory of the commercial exploitation of
 which is necessary to protect public or morality, including to protect
human, animal or plant life or health or to avoid serious prejudice to
the environment, provided that such exclusion is not made merely
because the exploitation is prohibited by their law.
3. Members may also exclude from patentability:
(a) diagnostic, therapeutic and surgical methods for the treatment of
humans or animals;

(b) plants and animals other than micro-organisms, and essentially

biological processes for the production of plants or animals other than
non-biological and microbiological processes. However, Members
shall provide for the protection of plant varieties either by patents or
by an effective sui generis system or by any combination thereof. The
provisions of this subparagraph shall be reviewed four years after the
date of entry into force of the WTO Agreement.

Rights Conferred
1. A patent shall confer on its owner the following exclusive rights:
(a) where the subject matter of a patent is a product, to prevent third
parties not having the owner’s consent from the acts of: making, using,
offering for sale, selling, or importing (6) for these purposes that
product;

(b) where the subject matter of a patent is a process, to prevent third

parties not having the owner’s consent from the act of using the
process, and from the acts of: using, offering for sale, selling, or
importing for these purposes at least the product obtained directly by
that process.
2. Patent owners shall also have the right to assign, or transfer by
succession, the patent and to conclude licensing contracts.
Term of Protection
The term of protection available shall not end before the expiration
of a period of twenty years counted from the filing date (8)

Section 6: Layout Designs

(Topographies) of
Integrated Circuits Relation to the IPIC Treaty
Members agree to provide protection to the layout-designs
(topographies) of integrated circuits (referred to in this Agreement as
“layout-designs”) in accordance with Articles 2 through 7 (other than
paragraph 3 of Article 6), Article 12 and paragraph 3 of Article 16 of
the Treaty on Intellectual Property in Respect of Integrated Circuits
and, in addition, to comply with the following provisions.

Term of Protection
 1. In Members requiring registration as a condition of protection, the
term of protection of layout-designs shall not end before the expiration
of a period of 10 years counted from the date of filing an application
for registration or from the first commercial exploitation wherever in
the world it occurs.
2. In Members not requiring registration as a condition for protection,
layout-designs shall be protected for a term of no less than 10 years
from the date of the first commercial exploitation wherever in the
world it occurs.
3. Notwithstanding paragraphs 1 and 2, a Member may provide that
protection shall lapse 15 years after the creation of the layout-design.

Section 7: Protection of 1. In the course of ensuring effective protection against unfair

Undisclosed Information competition as provided in Article 10 of the Paris Convention (1967),
Members shall protect undisclosed information in accordance with
paragraph 2 and data submitted to governments or governmental
agencies in accordance with paragraph 3.
2. Natural and legal persons shall have the possibility of preventing
information lawfully within their control from being disclosed to,
acquired by, or used by others without their consent in a manner
contrary to honest commercial practices (10) so long as such
information:
(a) is secret in the sense that it is not, as a body or in the precise
configuration and assembly of its components, generally known
among or readily accessible to persons within the circles that normally
deal with the kind of information in question;

(b) has commercial value because it is secret; and

(c) has been subject to reasonable steps under the circumstances, by

the person lawfully in control of the information, to keep it secret.
3. Members, when requiring, as a condition of approving the
marketing of pharmaceutical or of agricultural chemical products
which utilize new chemical entities, the submission of undisclosed test
or other data, the origination of which involves a considerable effort,
shall protect such data against unfair commercial use. In addition,
Members shall protect such data against disclosure, except where
necessary to protect the public, or unless steps are taken to ensure that
the data are protected against unfair commercial use.