THE AGREEMENT ON TRADE-RELATED ASPECTS OF INTELLECTUAL PROPERTY RIGHTS (TRIPS)

A.General Remarks

(a)GATT, the WTO and the TRIPS Agreement

  1. The Uruguay Round of multilateral trade negotiations held under the framework of the General Agreement on Tariffs and Trade (GATT) was concluded on December 15, 1993. The agreement embodying the results of those negotiations, the Agreement Establishing the World Trade Organization (WTO Agreement), was adopted on April 15, 1994, in Marrakech.
  2. Those negotiations included, for the first time within the GATT, discussions on aspects of intellectual property rights which impacted on international trade. The result of those negotiations, contained in an Annex to the WTO Agreement, was the Agreement on Trade-Related Aspects of Intellectual Property Rights (the TRIPS Agreement).
  3. The WTO Agreement, including the TRIPS Agreement (which is binding on all WTO Members), entered into force on January 1, 1995. The former agreement established a new organization, the World Trade Organization (WTO), which began its work on January 1, 1995.

(b)Transitional Arrangements and Technical Cooperation (Part VI)

  1. No Member of WTO 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 Agreement Establishing the WTO (that is, before January 1, 1996) (Article 65.1). However, additional transitional periods are available for certain countries. The date on which the relevant transitional period expires for a Member is referred to as the date of application of the Agreement for that Member.
  2. Developing countries which are members of WTO, and also countries which are in the process of transformation into a market, free-enterprise economy and which are undertaking structural reform of their intellectual property systems and facing special problems in the preparation and implementation of intellectual property laws and regulations, are entitled to delay for a further period of four years (that is, until January 1, 2000) the date of application of the Agreement, except for obligations concerning national treatment and most-favored-nation treatment (Article 65.2 and 65.3).
  3. Developing countries which are obliged by the Agreementto extend product patent protection to types of products not previously patentable in that country may avail themselves of an additional five years (that is, until January 1, 2005) before applying the provisions of the agreement to such products (Article 65.4).
  4. Least-developed country Members are not required to apply the provisions of the Agreement, other than those concerning national treatment and most-favored-nation treatment, for a period of 10 years from the general date of application of the Agreement (that is, until January 1, 2006). That period will be extended upon duly motivated request (Article 66.1).
  5. The TRIPS Agreement also requires developed country Members to provide, on request and on mutually agreed terms and conditions, technical and financial cooperation in favor of developing and least-developed country Members, including assistance in preparation of laws and support regarding establishment or reinforcement of domestic offices and agencies, including training of personnel (Article 67).

(c) Institutional Arrangements (Part VII)

  1. The WTO Agreement creates a three-tiered organizational structure for the WTO. The highest tier is the Ministerial Conference, which meets at least once every two years (Article IV.1). It has the authority to take decisions on all matters under the WTO Agreement. The second tier is the General Council, consisting of representatives of all the Members, which is to meet "as appropriate" to carry out its own duties as well as those of the Ministerial Conference in the intervals between meetings of the latter body (Article IV.2). The General Council also serves as the Dispute Settlement Body (Article IV.3) and the Trade Policy Review Body (Article IV.4).
  2. The WTO Agreement (Article IV.5) also establishes a Council for Trade-Related Aspects of Intellectual Property Rights (the TRIPS Council) which, under the general guidance of the General Council, is to oversee the functioning of the TRIPS Agreement (Article IV.5). Membership in the TRIPS Council is open to representatives of all Members. Under the provisions of the TRIPS Agreement (Part VII, Article 68), the TRIPS Council is charged with monitoring the operation of the TRIPS Agreement and Members' compliance with the obligations under that Agreement. The TRIPS Council shall also review the implementation of the TRIPS Agreement after the expiration of the transitional period for developing countries (that is, after January 1, 2000), and every two years thereafter (or when amendment or modification is warranted by new developments) (Article 71.1). The first meeting of the TRIPS Council was held on March 9, 1995.

(d) Arrangements for Cooperation with WIPO

  1. Consultations to establish arrangements for cooperation and a mutually supportive relationship between the WTO and WIPO concerning intellectual property are required by the TRIPS Agreement. The Preamble of the Agreement contains the following statement: "Desiring to establish a mutually supportive relationship between the WTO and the World Intellectual Property Organization as well as other relevant international organizations ...."
  2. The TRIPS Agreement further states that the TRIPS Council, in carrying out its functions, may consult with and seek information from any source it deems appropriate and that, in consultation with WIPO, the Council is to seek to establish, within one year of its first meeting, appropriate arrangements for cooperation with bodies of WIPO (Article 68). Consultations for specific areas of cooperation between WIPO and WTO are also required by the Agreement. In particular, Article 63.2, which concerns notification of laws and regulations by Members to the TRIPS Council, states that "The Council shall attempt to minimize the burden on Members in carrying out this obligation and may decide to waive the obligation to notify such laws and regulations directly to the Council if consultations with WIPO on the establishment of a common register containing these laws and regulations are successful. The Council shall also consider in this connection any action required regarding notifications pursuant to the obligations under this Agreement stemming from the provisions of Article 6ter of the Paris Convention (1967)."
  3. To that effect, an Agreement between WIPO and WTO which provides for cooperation of the two organizations in the fields of the notification of intellectual property laws and regulations, the communication of State and other emblems, and legal-technical assistance and technical cooperation for developing countries was concluded on December 22, 1995, and entered into force on January 1, 1996.

B. General Provisions, Basic Principles and Final Provisions (Parts I and VII)

  1. A basic principle concerning the nature and scope of obligations under the TRIPS Agreement is that Members must give effect to the provisions of the Agreement and accord the treatment provided for in the Agreement to the nationals of other Members. A "national" is understood as meaning those natural or legal persons who would be eligible for protection if all Members of WTO were also bound by the Paris, Berne and Rome Conventions and by the Washington Treaty on Intellectual Property in Respect of Integrated Circuits (the IPIC Treaty).
  2. Members are free to determine the appropriate method of implementing the provisions of the TRIPS Agreement within their own legal system and practice, and may implement more extensive protection than is required, provided that such additional protection does not contravene other provisions of the Agreement (Article 1.1 and 1.3).

(a) Definition of Intellectual Property

  1. The TRIPS Agreement states that, for the purposes of the Agreement, the term "intellectual property" refers to all categories of intellectual property that are the subject of Sections 1 through 7 of Part II of the TRIPS Agreement, namely, copyright and neighboring rights, trademarks, geographical indications, industrial designs, patents, layout-designs (topographies) of integrated circuits, and undisclosed information (Article 1.2).

(b) Incorporation-by-Reference of the Paris and Berne Conventions

  1. The TRIPS Agreement is built on the century-old principles embodied in the Paris Convention for the Protection of Industrial Property and the Berne Convention for the Protection of Literary and Artistic Works. In fact, almost all the substantive provisions of these two Conventions are incorporated by reference directly into the TRIPS Agreement.
  2. Concerning industrial property, the TRIPS Agreement requires that Members comply with Articles 1 through 12, and Article 19, of the Paris Convention, in respect of Parts II, III and IV of the Agreement (Article 2.1). This includes all of the substantive provisions of the Paris Convention.
  3. In the field of copyright, Members are required to comply with Articles 1 through 21 of the Berne Convention and its Appendix. However, Members do not have rights or obligations in respect of Article 6bis of the Berne Convention concerning moral rights, or of the rights derived therefrom (Article 9.1).
  4. The TRIPS Agreement, however, stipulates that nothing in Parts I to IV of the Agreement shall derogate from existing obligations that Members may have to each other under the Paris or Berne Conventions (Article 2.2).

(c) The Principle of National Treatment

  1. TRIPS provides for the principle of national treatment, requiring that Members accord the treatment provided for in the Agreement to the nationals of other Members, the latter defined in terms, for the corresponding rights, of the relevant provisions of the Paris, Berne and Rome Conventions, and the IPIC Treaty. Exceptions provided for under the relevant conventions are respected within the context of the TRIPS Agreement. As regards industrial property and copyright, this principle applies to all rights. As regards rights in respect of performers, producers of phonograms and broadcasting organizations, the obligation only applies in respect of the rights provided under the Agreement (Article 3). Also exempted from this principle are procedures provided in multilateral agreements concluded under the auspices of WIPO relating to the acquisition or maintenance of intellectual property rights (Article 5).

(d) The Most-Favored-Nation Principle (MFN)

  1. The TRIPS Agreement contains a principle, the most-favored-nation principle, which has not traditionally been provided for in the context of intellectual property rights, at least on the multilateral level. This principle provides that any advantage, favor, privilege or immunity granted by a Member to the nationals of any other country (whether a Member or not) shall be accorded immediately and unconditionally to the nationals of all other Members, with certain specified exemptions (Article 4). As is the case for national treatment, procedures provided in multilateral agreements concluded under the auspices of WIPO relating to the acquisition or maintenance of intellectual property rights are exempted from this principle (Article 5).

(e) Protection of Existing Subject Matter

  1. The TRIPS Agreement contains specific provisions regarding the effect of the Agreement on the subject matter of intellectual property rights that exists on the date of application of the Agreement in a Member. While the Agreement does not give rise to obligations in respect of acts which occurred before the date of application of the Agreement for the Member in question (Article 70.1), the Agreement does give rise to obligations in respect of all subject matter existing and protected at the date of application of the Agreement, or which meets or comes subsequently to meet the criteria for protection under the terms of the Agreement (Article 70.2). However, copyright obligations with respect to existing works and obligations with respect to the rights of producers of phonograms and performers in existing phonograms are determined solely under Article 18 of the Berne Convention (Article 70.2).
  2. A member may provide for limited remedies for acts which become infringing as a result of the implementation of the Agreement and which were commenced, or in respect of which a significant investment was made, before the date of acceptance of the Agreement. These must include at least the payment of equitable remuneration (Article 70.4).
  3. There are certain exceptions to these general rules. In particular, there is no obligation to restore protection to subject matter which has fallen into the public domain (Article 70.3). In addition, certain obligations concerning computer programs, cinematographic works and phonograms (Articles 11 and 14.4) need not be applied with respect to originals or copies purchased prior to the date of application of this Agreement (Article 70.5). Further, provisions concerning guidelines for use without authorization (Article 31) and non-discrimination as to the field of technology (Article 27.1) need not be applied to use without the authorization of the right holder where authorization for such use had been granted by the government before the date the Agreement became known (Article 70.6).
  4. Applications for protection of intellectual property rights which are pending on the date of application of the Agreement may be amended to claim any enhanced protection provided under the Agreement, but such amendments may not include new matter (Article 70.7).

(f) Reservations

  1. Reservations may not be entered in respect of any of the provisions of the Agreement without the consent of the other Members (Article 72).

(g) Security Exceptions

  1. The Agreement provides a general exception for matters which are deemed to be essential to national security interests. In particular, a Member is not required to furnish any information if it considers disclosure to be contrary to its essential security interests. In addition, it may take any action which it considers necessary for the protection of its essential security interests relating to fissionable materials or the materials from which they are derived, relating to traffic in arms, ammunition and implements of war and to such traffic in other goods and materials as is carried on directly or indirectly for the purpose of supplying a military establishment, or taken in time of war or other emergency in international relations. It may also take any action in pursuance of its obligations under the United Nations Charter for the maintenance of international peace and security (Article 73).

C. Standards Concerning the Availability, Scope and Use of Intellectual Property Rights (Part II)

  1. Part II of the TRIPS Agreement provides minimum standards concerning the availability, scope and use of intellectual property rights. This Part contains eight sections relating, respectively, to copyright and related rights, trademarks, geographical indications, industrial designs, patents, layout-designs (topographies) of integrated circuits, protection of undisclosed information and control of anti-competitive practices in contractual licenses (the latter subject is not contained in the definition of intellectual property of Article 1.2).

(a) Copyright and Related Rights (Section 1)

  1. The essential elements of the standards concerning the availability, scope and use of copyright and related rights include the following:

    2. - Members must comply with Articles 1 to 21 of the 1971 Paris Act of the Berne Convention and, where applicable, with the Appendix to that Act (containing special provisions for developing countries). However, Members do not have rights or obligations under the Agreement concerning the subject matter of Article 6bis of the Berne Convention (concerning moral rights), or of the rights derived therefrom (Article 9.1);

    - Copyright protection shall extend to the expression and not to ideas, procedures, methods of operation or mathematical concepts as such (Article 9.2);

    - Computer programs, whether in source or object code, must be protected as literary works under the Berne Convention (Article 10.1);

    - 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." The protection does not extend to, but is without prejudice to any copyright subsisting in, the data or material itself (Article 10.2);

    - A commercial rental right is provided in respect of at least computer programs except where the program itself is not the essential object of the rental, and to cinematographic works; however, Members are excepted from the latter obligation unless such rental has led to widespread copying which materially impairs the exclusive right of reproduction in a Member (Article 11);

    - The term of protection for works other than photographic works or works of applied art, where the term is calculated on a basis other than the life of a natural person, shall be no less than 50 years from the end of the calendar year of authorized publication or, if publication has not taken place within 50 years from the making of the work, 50 years from the end of the calendar year of the making of the work (Article 12);

    - Limitations or exceptions to exclusive rights are confined to cases which do not conflict with normal exploitation of the work and do not unreasonably prejudice the legitimate interests of the right holder (Article 13);

    - With respect to related rights, performing artists shall have the right to prevent the fixation and reproduction of their unfixed performances on phonograms, and the wireless broadcasting and communication to the public of their live performances (Article 14.1);

    - Producers of phonograms shall have the right to authorize or prohibit the direct or indirect reproduction of their phonograms (Article 14.2);

    - Broadcasting organizations (or, if such rights are not granted to broadcasting organizations, the owners of copyright in the subject matter of broadcasts) shall have the right to prohibit the fixation, reproduction, wireless rebroadcasting and communication to the public by television broadcast (Article 14.3);

    - A rental right is provided for producers of, and certain other right holders in, phonograms; Members may maintain systems, in existence on April 15, 1994, of equitable remuneration in respect of the rental of phonograms, provided such system does not materially impair exclusive rights of reproduction (Article 14.4);

    - The term of protection for performers and producers of phonograms is at least 50 years from the end of the calendar year of fixation or performance, and for broadcasters at least 20 years from the end of the calendar year of broadcast (Article 14.5);

    - The conditions, limitations, exceptions and reservations permitted by the Rome Convention may be applied to certain related rights (under paragraphs 14.1 to 14.3) granted in the TRIPS Agreement; however, the provisions of Article 18 of the Berne Convention apply, mutatis mutandis, to the rights of performers and producers of phonograms in phonograms (Article 14.6).

(b) Trademarks (Section 2)

  1. The essential elements of the standards concerning the availability, scope and use of trademark rights include the following:

    2. - Any sign capable of distinguishing the goods or services of one undertaking from those of other undertakings (thus including service marks) shall be eligible for registration as a trademark (Article 15.1);

    - Registrability may be conditional upon visual perceptibility and, for signs which are not inherently distinctive, on distinctiveness acquired through use (Article 15.1);

    - Registrability may be conditional upon use (Article 15.2), but use may not be a condition for filing and an application may not be refused solely on the ground that intended use has not taken place within three years of the filing date (Article 15.3);

    - The nature of the goods or services to which a trademark is to be applied may not be an obstacle to the registration of the mark (Article 15.4);

    - Members shall publish each trademark and afford a reasonable opportunity for petitions to cancel the registration, and may afford an opportunity to oppose the registration (Article 15.5);

    - The rights conferred by registration shall include the exclusive right to prevent third parties from using identical or similar signs for identical or similar goods or services, where such use would result in a likelihood of confusion, the latter to be presumed where the goods or services are identical (Article 16.1), subject to certain allowable exceptions such as the fair use of descriptive terms (Article 17);

    - Certain rights are provided for the owners of well-known trademarks and service marks (Article 16.2 and 16.3);

    - The term of initial registration and renewals shall be no less than seven years, renewable indefinitely (Article 18);

    - If a showing of use is required for the maintenance of a registration, the registration may be canceled only after an uninterrupted period of at least three years of non-use, unless valid reasons for non-use are shown (Article 19.1);

    - Certain restrictions on use are not permitted (Article 20);

    - Compulsory licensing of trademarks is not permitted (Article 21);

    - Trademarks may be assigned with or without the transfer of the business to which the trademark belongs (Article 21).

(c) Geographical Indications (Section 3)

  1. The essential elements of the standards concerning the availability, scope and use of rights involving geographical indications include the following:

    -"Geographical indications" are defined as 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 (Article 22.1);

    -Members must provide the legal means for interested parties to prevent the use of indications that misleadingly indicate or suggest that a good originates in a geographical area other than the true place of origin (Article 22.2(a));

    -Members shall refuse or invalidate the registration of a trademark which consists of a misleading indication (Article 22.3), and provide means to prevent any use which constitutes an act of unfair competition within the meaning of Article 10bis of the Paris Convention (Article 22.2(b));

    -Protection shall be applicable against a geographical indication which is literally true but misleading (Article 22.4) and, in the case of wines or spirits, 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', or 'style', 'imitation' or the like (Article 23.1);

    -Protection is not required in respect of a geographical indication of another Member which is identical with the common name for goods or services, or, for products of the vine, which is identical with the customary name of a grape variety existing in the territory of that Member as of the date of entry into force of the WTO Agreement (Article 24.6);

    -There is no obligation to protect geographical indications which are not or cease to be protected in their country of origin, or which have fallen into disuse in that country (Article 24.9);

    -Guidelines are provided for additional protection for geographical indications for wines and spirits (Article 23), including concurrent protection of homonymous geographical indications for wines (Article 23.3), certain exceptions to substantive rights such as prior rights (Article 24.4) and the right to use personal names (Article 24.8), and time limits for registration in certain cases (Article 24.7);

    -In order to facilitate the protection of geographical indications for wines, negotiations are to be undertaken in the TRIPS Council concerning the establishment of a multilateral system of notification and registration of geographical indications for wines which would be effective for those Members participating in the system (Article 23.4).

(d) Industrial Designs (Section 4)

  1. The essential elements of the standards concerning the availability, scope and use of industrial design rights include the following:

    -Members shall provide protection for independently created industrial designs that are original or new, certain standards for determining protectability being allowed (Article 25.1);

    -Requirements for protection of textile designs, which may be provided through industrial design or copyright law, shall not unreasonably impair the opportunity to obtain protection, particularly in regard to any cost, examination or publication (Article 25.2);

    -Exclusive rights shall include the right to prevent third parties from making, selling or importing, for commercial purposes, articles bearing or embodying a protected industrial design (Article 26.1), subject to certain allowable exceptions (Article 26.2);

    -The duration of protection shall amount to at least 10 years (Article 26.3).

(e) Patents (Section 5)

  1. The essential elements of the standards concerning the availability, scope and use of patent rights include the following:

    -Patents shall be available for products and processes in all fields of technology, provided they are new, involve an inventive step and are capable of industrial application (Article 27.1), except that Members may exclude inventions, the prevention within their territory of the commercial exploitation of which is necessary to protect ordre 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 (Article 27.2); and Members may further exclude diagnostic, therapeutic and surgical methods for the treatment of humans or animals, 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 (Article 27.3); 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 (Article 27.3);

    -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 (Article 27.1);

    -Exclusive rights shall include, for products, the right to prevent third parties from making, using, offering for sale, selling or importing the patented product, and for processes, the right to prevent third parties from using the process and from using, offering for sale, selling or importing for those purposes the product obtained directly by that process (Article 28.1), subject to certain allowable exceptions (Article 30);

    -Patents shall be assignable, transferable and shall be available for licensing (Article 28.2);

    -Certain conditions are imposed concerning the disclosure of the invention in a patent application (Article 29);

    -Any use allowed without the authorization of the right-owner (commonly known as a compulsory license), and such use by the government, is made subject to certain enumerated conditions (Article 31); such use in the case of semi-conductor technology is limited to certain enumerated purposes (Article 31(c) );

    -Judicial review shall be available for any decision to revoke or forfeit a patent (Article 32);

    -The term of protection shall be at least 20 years from the date of the filing of the application (Article 33);

    -The burden of proof concerning whether a product was made by a patented process shall in certain cases be placed on the alleged infringer (Article 34).

  2. In addition to the foregoing obligations, where a Member had not made available, as of the date of entry into force of the WTO Agreement (that is, January 1, 1995), patent protection for pharmaceutical and agricultural chemical products commensurate with its obligations under Article 27, that Member must provide as from that date a means by which applications for patents for such inventions can be filed. The Member must, as of the date of application of the Agreement, apply to such applications the criteria for patentability as if those criteria were being applied on the filing date or priority date of the application. If the subject matter of the application meets the criteria for protection, the Member must provide patent protection for the remainder of the patent term counted from the filing date (Article 70.8).
  3. Where such an application is filed, exclusive marketing rights must be granted for a period of five years after the obtaining of marketing approval or until a product patent is granted or rejected in that Member, whichever period is shorter, provided that, subsequent to the entry into force of the WTO Agreement, a patent application has been filed and a patent granted for that product in another Member and marketing approval obtained in that other Member (Article 70.9).

(f) Layout-Designs (Topographies) of Integrated Circuits (Section 6)

  1. The TRIPS Agreement incorporates nearly all of the substantive provisions, with a few exceptions, of the IPIC Treaty. The IPIC Treaty provides for a regime of legal protection for layout-designs (topographies) of integrated circuits, and includes provisions on, inter alia, protectable subject matter, the legal form of protection, national treatment, scope of protection, exploitation, registration, disclosure and duration of protection. The requirements of the TRIPS Agreement are as follows:

    -Members must provide protection for the layout-designs (topographies) of integrated circuits in accordance with Articles 2 through 7 (other than Article 6(3), which contains provisions on compulsory licenses), Article 12 and Article 16(3) of the IPIC Treaty (Article 35);

    -The TRIPS Agreement substitutes a minimum term of ten to 15 years for the minimum term of eight years provided in Article 8 of the IPIC Treaty (Article 38);

    -The TRIPS Agreement contains an additional prohibited act to those listed in the IPIC Treaty, namely any act relating to an article incorporating an integrated circuit, but only in so far as it continues to contain an unlawfully reproduced layout-design (Article 36);

    -The TRIPS Agreement provides that certain acts engaged in unknowingly will not constitute infringement (Article 6(4) of the IPIC Treaty explicitly allows such exclusions, but that a reasonable royalty shall be payable with respect to stock on hand after notice is given (Article 37.1).

(g) Protection of Undisclosed Information (Section 7)

  1. The TRIPS Agreement provides that, in the course of ensuring effective protection against unfair competition as provided in Article 10bis of the Paris Convention, Members shall protect undisclosed information and data submitted to governments or governmental agencies in accordance with the following provisions (Article 39.1):

    -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 (Article 39.2);

    -Such protection is required for information which is secret (that is, not generally known among or readily accessible within the circles that normally deal with such information), which has commercial value because it is secret, and which has been subject to reasonable steps to keep it secret (Article 39.2);

    -Certain undisclosed test or other data submitted as a condition of approving the marketing of pharmaceutical or agricultural chemical products which utilize new chemical entities, shall be protected against unfair commercial use and, under certain circumstances, against disclosure (Article 39.3).

(h) Control of Anti-Competitive Practices in Contractual Licenses (Section 8)

  1. Recognizing that some licensing practices or conditions pertaining to intellectual property rights which restrain competition may have adverse effects on trade and may impede the transfer and dissemination of technology (Article 39.1), the TRIPS Agreement provides that Members may specify in their national laws licensing practices or conditions which may, in particular cases, constitute an abuse of intellectual property rights having an adverse effect on the competition in the relevant market, and that they may adopt appropriate measures to control or prevent such practices (Article 40.2).
  2. Members agree to enter into consultations with each other, upon request, to secure compliance with laws in this regard (Article 40.3) or where their nationals are subject to such proceedings in other Members (Article 40.4).

D. Enforcement of Intellectual Property Rights (Part III)

(a) General Obligations (Section 1)

  1. The TRIPS Agreement requires that specified enforcement procedures be available to permit effective action against any act of infringement of intellectual property rights covered by the Agreement, including expeditious remedies to prevent infringements and remedies which constitute a deterrent to further infringements. The procedures must be applied in such a manner as to avoid the creation of barriers to legitimate trade and to provide for safeguards against their abuse (Article 41.1).
  2. Enforcement procedures are to be fair and equitable, not be unnecessarily complicated or costly, nor entail unreasonable time-limits or unwarranted delays (Article 41.2). Decisions on the merits of a case shall preferably be in writing and reasoned, shall be made available at least to the parties to the proceeding without undue delay, and shall be based only on evidence in respect of which parties were offered the opportunity to be heard (Article 41.3). Parties to a proceeding shall have an opportunity for review of final administrative decisions and of at least the legal aspects of initial judicial decisions on the merits of a case (except for acquittals in criminal cases) (Article 41.4).
  3. However, Members have no obligation to put in place a judicial system for intellectual property enforcement distinct from that for the enforcement of law in general, nor with respect to the distribution of resources as between enforcement of intellectual property rights and the enforcement of law in general (Article 41.5).

(b) Civil and Administrative Procedures and Remedies (Section 2)

  1. The TRIPS Agreement establishes guidelines concerning civil and administrative procedures which must be followed with respect to enforcement of intellectual property rights, including provisions on fair and equitable procedures (Article 42), evidence (Article 43), injunctions (Article 44), damages (Article 45), other remedies such as the authority to order that infringing goods or that materials and implements used in the creation of infringing goods be disposed of (Article 46), right of information, for example the authority to order that the infringer inform the right owner of the identity of third persons involved in the production and distribution of infringing goods or services and of their channels of distribution (Article 47), indemnification of the defendant (Article 48), and application of the above guidelines to administrative procedures (Article 49).

(c) Provisional Measures (Section 3)

  1. The TRIPS Agreement establishes guidelines concerning provisional measures to prevent an infringement of any intellectual property right from occurring, and in particular to prevent the entry into the channels of commerce in their jurisdiction of goods, including imported goods immediately after customs clearance, and to preserve relevant evidence in regard to the alleged infringement, and to adopt provisional measures inaudita altera parte where delay is likely to cause irreparable harm or where there is a risk of evidence being destroyed (Article 50).

(d) Special Requirements Related to Border Measures (Section 4)

  1. The TRIPS Agreement provides for certain procedures concerning enforcement related to border measures to enable a right holder who has valid grounds for suspecting that the importation of counterfeit trademark or pirated copyright goods may take place to lodge an application for the suspension by the customs authorities of the release into free circulation of such goods. Guidelines are established with respect to suspension of release by customs authorities (Article 51), application for such procedures (Article 52), security or equivalent assurance (Article 53), notice of suspension (Article 54), duration of suspension (Article 55), indemnification of the importer and of the owner of the goods (Article 56), right of inspection and information (Article 57), ex officio action (Article 58), remedies (Article 59) and de minimis imports (Article 60).

(e) Criminal Procedures (Section 5)

  1. The TRIPS Agreement requires that Member provide for criminal procedures and penalties to be applied at least in cases of willful trademark counterfeiting or copyright piracy on a commercial scale, and that they make available remedies such as imprisonment, monetary fines and seizure, forfeiture and destruction of the infringing goods and of any materials and implements the predominant use of which has been in the commission of the offense.

E. Acquisition and Maintenance of Intellectual Property Rights and Related Procedures (Part IV)

  1. The TRIPS Agreement provides general language relating to principles concerning procedures for acquisition and maintenance of industrial property rights. Members may require, as a condition of the acquisition or maintenance of the industrial property rights covered by the Agreement (except protection of undisclosed information), compliance with reasonable procedures and formalities consistent with the Agreement (Article 62.1). Any procedures for grant or registration must permit the granting or registration of the right within a reasonable period of time so as to avoid unwarranted curtailment of the period of protection (Article 62.2). Procedures concerning acquisition, maintenance, administrative revocation and inter partes procedures are to be governed by the guidelines applicable to enforcement (Article 62.4, referring to Article 41.2 and 41.3), and most final administrative decisions are subject to judicial or quasi-judicial review (Article 62.5).
  2. The Agreement also stipulates that Article 4 of the Paris Convention concerning the right of priority shall apply, mutatis mutandis, to service marks.

F. Dispute Resolution and Settlement (Part V)

(a) Transparency

  1. The TRIPS Agreement requires that laws and regulations, final judicial decisions, administrative rulings of general application and bilateral agreements pertaining to the subject matter of the Agreement be published or made publicly available by Members (Article 63.1).
  2. Members are further required to notify such laws and regulations to the TRIPS Council. The Council, in turn, is to attempt to minimize this burden on Members by engaging in consultations with WIPO on the possible establishment of a common register containing these laws and regulations (Article 63.2).

    The TRIPS Council will also consider, in this connection, any action required regarding notifications pursuant to the obligations under the Agreement stemming from the provisions of Article 6ter of the Paris Convention.

(b) Dispute Settlement

  1. A particularly important element of the TRIPS Agreement is the system of dispute settlement established under the WTO Agreement. The TRIPS Agreement itself invokes the provisions of Article XXII and XXIII of GATT 1994 (the WTO Agreement), as elaborated by the WTO Understanding on Rules and Procedures Governing the Settlement of Disputes (included as an Annex to the WTO Agreement), which applies to consultations and the settlement of disputes under the TRIPS Agreement (Article 64.1).
  2. However, subparagraphs 1(b) and 1(c) of Article XXIII of GATT 1994, which refer to so-called "non-violation" dispute settlement cases, are not to apply to the settlement of disputes under the TRIPS Agreement for at least five years from the date of entry into force of the WTO Agreement (i.e., at least until January 1, 2000). Any extensions of that period are to be decided in the Ministerial Conference by consensus (Article 64.2 and 64.3).