TRIPs (A Binding Global Charter of IPRs)
The TRIPs Agreement for the first time creates a multilateral framework for enforcement of all IPRs which were so far left to the nation states to carry out at their discretion under national laws.
It is a mandatory agreement attached to WTO. Every member of WTO is required to observe the provisions of TRIPs and provide minimum level of IPRs in their national laws. Failure to comply with the minimum prescribed requirement will entail penal provisions of WTO.
It was observed that widely varying standards in protection and enforcement of IPRs and lack of multilateral framework of principles, rules and discipline dealing with international trade in counterfeit goods have been a growing source of tension in international economic relations. To end that the TRIPs agreement was framed.
I. Need and Justification of TRIPs
The introductory note of TRIPs Agreement clarify the objectives of TRIPs. They may be summarized as under :
(i) To reduce distortions and impediments to international trade by taking into account the need to promote effective and adequate protection of IPRs, and to ensure that measures and procedures to enforce IPRs do not themselves become barriers to legitimate trade.
(ii) To provide a multilateral framework of principles, rules and disciplines dealing with international trade in counterfeit goods.
(iii) To cater to the special needs of the least developed countries 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.
(iv) To resolve disputes on trade-related intellectual property issues through multilateral procedures.
(v) To establish a mutually supportive relationship between the WTO and the WIPO as well as other relevant organization.
(vi) To provide for adequate standards and principles concerning the availability, scope and use of trade related Intellectual Property Rights.
(vii) To provide effective and expeditious procedure for the multilateral prevention and settlement of disputes between governments.
(viii) To provide effective and appropriate means for the enforcement of trade related intellectual property right, taking into consideration differences in national legal system.
II. Outer Framework of TRIPs
Divided into 7 parts containing 73 Articles the scheme of TRIPs can be seen at a glance as under :—
Part I. General Provisions and Basic Principles (Arts. 1-8)
Part II. Standard concerning the availability, scope and use of IPRs (minimum standards to be provided by each member country) (Arts. 9-40).
Part III. Enforcement of intellectual property rights (Arts. 41-61).
Part IV. Acquisition and maintenance of IPRs (Art. 62).
Part V. Dispute Prevention and settlement (Arts. 63-65).
Part VI. Transitional Arrangement (Arts. 66-67).
Part VII. Institutional Arrangements (Arts. 68-73).
III. Categories of Intellectual Property covered by Agreement
The Agreement specify that the term ―intellectual property ref the categories of intellectual property which are covered under Section 7 of Part II. It is therefore, worthwhile to enumerate the seven referred to in Part II. They are as under :—
Section 1. Copyright and Related Right (Arts. 9-14)
Section 2. Trademark (Arts. 15-21)
Section 3. Geographical Indications (Arts. 22-24)
Section 4. Industrial Design (Arts. 25-26)
Section 5. Patent (Arts. 27-34)
Section 6. Layout-designs of Integrated Circuits (Arts. 35-38)
Section 7. Protection of Undisclosed information (Art. 39)
Section 8. Art. 40 deals with control of anti-competitive practices in contractual licences.
Evaluation of TRIPs Agreement
We shall now discuss some important provisions of this agreement
(a) Obligation of member states
(i) Members shall give effect to provisions of this agreement. Members may, but shall not be obliged to implement in their domestic 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 methods of implanting the provisions of this Agreement within their own legal system and practice.
(ii) For the purpose of this Agreement, the terms ―intellectual property refers to all categories of intellectual property that are the subject of Sections 1 to 7 of Part II.
(iii) Members shall accord the treatment provided for in this Agreement to the nationals of other Members. 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 the Paris Convention (1967), the Berne Convention (1971), the Rome Convention and the Treaty on Intellectual Property in Respect of Integrated Circuits, all Members of the MTO members of those conventions. 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.
(b) TRIPs and other IPR Conventions
(i) In respect of Parts II, III and IV of this Agreement, members shall comply with Articles 1-12 and 19 of the Paris Convention (1967)
(ii) 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 Rome Convention and the Treaty on Intellectual Property in Respect of Integrated Circuits. (c) National Treatment
(i) Each member shall accord to the nationals of other member, treatment no less favourable than that it accords to its own nationals with regard to the protection of intellectual property, subject to the exceptions already provided in the Paris Convention (1967), Berne Convention (1971), the Rome Convention and the Treaty on Intellectual Property in Respect of Integrated Circuits, respectively. 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 and paragraph 1 (b) of Article 16 of the Rome Convention shall make a notification as foreseen in those provisions to the Council for Trade Related Aspects of Intellectual Property Rights,
(ii) Members may avail themselves of the exceptions permitted under paragraph 1 above 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,
(d) Nature and Scope of Protection available under TRIPs Agreement
As mentioned above there are 7 categories of intellectual properties mentioned in Part II. The scope and nature of protection required to be given by each member state may be discussed as follows :—
(i) Copyright and other related rights (Arts. 9-14).—The copyright protection shall extend to expression and not to ideas, procedures, and methods of operation or mathematical concepts as such. The member states shall comply with certain provisions of Berne Convention.
Computer programmes, whether in source or object, Code shall be protected as literary book under the Berne Convention (1971). Similarly the producers of phonogram and broadcasting organization will have exclusive rights and enjoy right to prohibit reproduction of their programme, previous unauthorised fixation, broadcast or reproduction of live performance. The terms of protection shall be for a minimum period of 50 years.
(ii) Trademark (Arts. 15-21).—The owner of registered trademark shall have the exclusive right to prevent all third parties not having his consent from using identical or similar signs for goods or services. However this agreement also recognizes right available on the basis of prior use. The term of trademark shall be for an initial term of 7 years and may be renewed indefinitely.
(iii) Geographical Indications (Arts. 22-24).—In respect of geographical indications, the agreement lays down that all parties must provide means to prevent the use of any indication which misleads the consumer as to the origin of goods, and any use which would constitute an act of unfair competition. A higher level of protection is provided for geographical indications for wines and spirits, which are protected even where there is no danger of the public being misled as to the true origin. Exceptions are allowed for names that have already become generic terms, but any country using such as exception must be willing to negotiate a view to protecting the geographical indications in question. Furthermore, provision is made for further negotiations to establish a multilateral system of notification and registration of geographical indications for wines.
(iv) Industrial Design (Arts. 25-26).—Industrial designs are also protected under the agreement for a period of 10 years. Owners of protected designs would be able to prevent the manufacture, sale or importation of articles bearing or embodying a design which is a copy of the protected design.
(v) Patent (Arts. 27-34).—As regards patents, there is a general obligation to comply with the substantive provisions of the Paris Convention (1967). In addition, the agreement requires that 20 years patent protection be available for all inventions, whether of products or process, in almost all fields of technology. Inventions may be excluded from patentability if their commercial exploitation is prohibited for reasons of public order or morally; otherwise, the permitted exclusions are for diagnostic, therapeutic and surgical methods, and for plants and (other than micro organisms) animals and essentially biological processes for the production of plants and animals (other than mirco-biological processes). Plant varieties, however, must be protectable either by patents or by a sui generis system (such as the breeder‘s rights provided in a UPOV Convention). Detailed conditions are laid down for compulsory licensing or governmental use of patents without the authorization of the patent owner. Rights conferred in respect of patents for processes must extend to the products directly obtained by the process. Under certain conditions alleged infringers may be ordered by a court to prove that they have not used the patented process.
(vi) Lay out Designs (Arts. 35-38).—With respect to the protection of layout designs of integrated circuits, the agreement requires parties to provide protection on the basis of the Washington Treaty on Intellectual Property in Respect of Integrated Circuits which was opened for signature in May 1989, but with a number of additions. Protection must be available for a minimum period of 10 years.
(vii) Protection of undisclosed information information (Trade Secrets) (Art. 39).—Trade secrets and know-how, which have commercial value, must be protected against breach of confidentiality and other acts contrary to honest commercial practices. The member states are required to protect trade secrets in respect to pharmaceutical, agriculture and chemical products.
Enforcement of IPRs
Part III of the TRIPs on ―Enforcement of Intellectual Property Rights contains a total of 21 Articles (Arts. 41-61), divided into five sections :
General Obligations (Art. 41);
Civil and Administrative Procedures and Remedies (Arts. 42- 49);
Provisional Measures (Art. 50);
Special Requirements Related to Border Measures (Arts. 51-60); and
Criminal Procedures (Art. 61).
Together these provisions are aimed at first, on the measures that the holders of IPRs may require from the judicial, administrative and customs authorities to take against infringements and threatened infringements of their rights, and second, the procedures by which such measures may be obtained. These measures may be civil as well as criminal in nature to terminate and restrain infringements of IPRs.
(a) Dispute Settlement System
The Dispute Settlement Body (DSB) is one of the most powerful yet controversial body in WTO. It is a central element in providing security and predictability to multilateral trading system. In fact, prompt, just and fair settlement of trade dispute is essential to the effective functioning of WTO. The DSB is empowered to establish panels, constitute appellate body, and adopt panel reports and exercise surveillance and compliance with its decisions.
The DSB can take help of following bodies for investigations of a complaint. They are :
(i) Working groups;
(ii) Panel;
(iii) Permanent expert group; and
(iv) Arbitration
(b) Different Stages of Dispute Settlement
There are mainly six stages involved in settling disputes. Each stage has its elaborate procedure and fixed time frame. They are :
(i) Consultation.—The first stage of settling dispute is holding consultation between disputing states. Consultation aims to provide solution, which is mutually agreed. It is confidential and does not prejudice the right of members to further proceedings. The process of consultation should begin within 30 days of the request and should be completed within 60 days.
(ii) Establishment of a Panel.—If consultation process fails to bring any solution within 60 days, the complainant can ask the DSB to establish a panel. It consists of 3 to 5 experts. In case of dispute between developed and developing countries one of the panel expert from developing countries should be included. These panelist serve in their individual capacity and not in their official position.
(iii) Panel Examination.—The panel chosen in consultation with the parties examines the complaint. The panel should complete its exercise him six months and give its final report containing findings and recommendations. However, in case of urgency, the time for giving final sport can be reduced to three months. But in no case should the period from establishment of the panel to the submission of the final report exceed nine months.
(iv) Adoption of Panel Report.—The DSB adopts the panel report 60 days after it is issued. However, the DSB can invite objection from the disputing members and can consider them before finally adopting the report.
(v) Appellate Review.—Any party to the dispute can file an appeal against panel report before the Appellate Body. A Standing Appellate Body is set up by the DSB to hear all appeals. The Appellate Body is composed of seven persons who are representative of WTO membership. The appeal proceedings are to be completed within 60 days but in no case they shall exceed 90 days.
(vi) Implementation.—It is the final stage of settlement system. Effective and proper implementation of the ruling of DSB is necessary for the satisfactory resolution of the dispute. Thirty days after the adoption of the panel or Appellate Body report, the party concerned must inform the DSB of its intention with regard to implementation of the ruling. In case of difficulty the member can be granted a reasonable time to implement the ruling. Failure to implement the ruling within granted time can result into suspension of concession. State found guilty of breach can also settle the claim by paying compensation.
Implementation of TRIPs Agreement
Since the TRIPs Agreement required major changes in national laws of several countries, especially the group of developing and least developing countries, therefore a transitional arrangement was made giving relaxation by prescribing outer time limit for enforcement of provisions of TRIPs.
(a) Transitional Arrangements :
1. No member shall be obliged to apply the provisions of the TRIPs Agreement before the expiry of a general period of one year following the date of entry into force of the WTO Agreement.
2. A developing country Member (India is one of them) is entitled to delay for a further period of four years the date of application of the TRIPs Agreement. Thus, developing countries were given time till 1st January, 2000.
3. Any other member which is in the process of transformation from a centrally-planned into a market, free-enterprise economy and which is undertaking structural reform of its intellectual property system and facing special problems in the preparation and implementation of intellectual property laws and regulations may also benefit from a period of delay of four years i.e. upto 1st January, 2000.
4. To the extent that a developing country Member is obliged by this Agreement to extend product patent protection to areas of technology not so protectable in its territory on the general date of application of this Agreement for that Member, as defined in paragraph 2, it may delay the application of the provisions on product patents of Section 5 of Part II to such areas of technology for an additional period of five years. i.e. upto 1 January, 2005.
5. A member availing itself of a transitional period under Article shall ensure that any changes in its laws, regulations and practice made during that period do not result in a lesser degree of consistency with the provisions of TRIPs Agreement (Art. 65).
(b) Least-Developed Country Members :
1. In view of the special needs and requirements of least-developed members, their economic, financial and administrative constraints, and their need for flexibility to create a viable technological base, such members shall not be required to apply the provisions of the TRIPs Agreement, for a period of 10 years from the date of applications as defined under paragraph 1 of Article 65 i.e. till 1st January, 2006. The Council for TRIPs shall, upon duly motivated request by a least developed country member, accord extensions of this period.
2. Developed country member shall provide incentives to enterprises and institutions in their territories for the purpose of promoting and encouraging technology transfer to least-developed country members in order to enable them to create a sound and viable technological base (Art. 66).
(c) Council for TRIPs :
The Council for TRIPs shall monitor the operation of TRIPs Agreement, in particular, members‘ compliance with their obligations hereunder, and shall afford members the opportunity of consulting on matters, relating to the TRIPs. It shall carry out such other responsibilities as assigned to it by the members, and it shall, in particular, provide any assistance requested by them in the context of dispute settlement procedures. In carrying out its functions, the Council for TRIPs may consult with and seek information from any source it deems appropriate. In consultation with WIPO, the Council shall seek to establish, within one year of its first meeting, appropriate arrangements for cooperation with bodies of that Organisation (Art. 68).
(d) Review and Amendment :
1. The Council for TRIPs shall review the implementation of the TRIPs Agreement after the expiration of the transitional period referred to in paragraph 2 of Article 65. The Council shall, having regard to the experience gained in its implementation, review it two years after that date, and at identical intervals thereafter. The Council may also undertake reviews in the light of any relevant new developments which might warrant modification or amendment of the TRIPs Agreement.
2. Amendments merely serving the purpose of adjusting to higher levels of protection of intellectual property rights achieved, and in force, in other multilateral agreements and accepted under those agreements by all members of the WTO may be referred to the Ministerial Conference for action in accordance with paragraph 6 of Article 10 of the WTO Agreement on the basis of a consensual proposal from the Council of TRIPs (Art. 71).
A detailed study of WTO and TRIPs agreement made in this chapter reveal that IPRs have assumed vital importance in international economic life. The world community has realized the greater need to create a global legal regime of Intellectual Property Rights with effective enforcement mechanism.
Comments