AN OVERVIEW OF THE TRIPS AGREEMENT
Dr. Nguyen Nhu Quynh
Deputy Chief Inspector
Ministry of Science and Technology
1. History of the TRIPS Agreement
The TRIPS Agreement was negotiated as part of the Uruguay Round of Multilateral Trade Negotiations in the framework of the GATT. For the first time within the GATT, discussions on international trade-related aspects of intellectual property rights were included in the negotiations1. The results of such negotiations were embodied in the Agreement Establishing the World Trade Organization. Technically, the TRIPS Agreement is Annex 1C to the Agreement Establishing the WTO, which itself forms part of the Final Act embodying the results of the Uruguay Round of Multilateral Trade Negotiations. The TRIPS Agreement is binding on all WTO Members and was adopted at Marrakesh on 15 April 1994; it came into force on 1 January 1995. As such, the Agreement is one of the most important pillars of the WTO and intellectual property protection has become an integral part of the WTO multilateral trading system.
2. The TRIPS Agreement: Intellectual Property Rights and Free International Trade
(a) The TRIPS Agreement: the Most Comprehensive Multilateral Agreement on Intellectual Property to date
The comprehensiveness of the TRIPS Agreement, as compared to other international treaties on intellectual property, stems from the following features: (i) the result of the incorporation and consolidation of many earlier international conventions on intellectual property rights; (ii) the establishment of minimum standards of protection with specified deadlines for virtually all categories of intellectual property, namely, copyright and related rights, trademarks, geographical indications, industrial design, patents (including plant varieties), layout designs of integrated circuits, and undisclosed information; (iii) the grant of flexibilities in many areas, and (iv) the establishment of general rules of intellectual property right enforcement.
Firstly, the TRIPS Agreement incorporates the most important international pillars in the field of intellectual property law, namely the Paris, Berne, Rome Conventions and the Treaty on Intellectual Property in Respect of Integrated Circuits (as provided in Article 2 of the TRIPS Agreement). The provisions of these international conventions become compulsory even for countries that have not ratified them, except in the case of the Rome Convention, which is binding only on the States to have joined it.
The incorporation of the above-mentioned intellectual property conventions into the TRIPS Agreement has been explained in the framework of the WTO Dispute Settlement Mechanism in US-Section 211 Appropriations Act (US-Havana Club)2 and EC-Bananas (Article 22.6) (Ecuador)3. In the former, the WTO Appellate Body stated that Members do have an obligation to provide protection to trade names in accordance with Article 8 of the Paris Convention (1967) as incorporated by Article 2 of the TRIPS Agreement4.
Secondly, the TRIPS Agreement sets forth the same minimum standards of intellectual property right protection for all WTO Members, regardless of their level of development. With respect to each type of intellectual property right, the Agreement sets out minimum standards of protection that each country must provide. The main aspects of these standards are the subject matter to be protected; the permissible exclusions from the subject matter to be protected; the rights to be conferred (including the minimum duration of protection); and the permissible exceptions to the standards of protection. Those standards are established under the TRIPS Agreement in two ways. The TRIPS Agreement obliges WTO Members to comply with the substantive provisions of the Paris and Berne Conventions as incorporated by reference through the Agreement. In addition, the TRIPS Agreement places certain additional obligations on WTO Members beyond those contained in the two Conventions. All WTO Members are obliged to comply with and apply the standards set forth in the TRIPS Agreement. The Members cannot, in the case of specific issues covered by the TRIPS Agreement, confer a lower level of protection than provided for by it. At the same time, Members cannot be obliged to provide more extensive protection.‘[T]he fact is that the Agreement established what the negotiating parties deemed ‘adequate’ standards and principles in this area.’5 There is no special treatment for developing countries and least developed countries, except the provisions on transitional periods under Articles 65-676.
The mandatory standards set forth in the TRIPS Agreement eliminated the asymmetries to which the operation of the national treatment principle in Article 2.1 of the Paris Convention gave rise7. Specifically, according to Article 2.1, where the Convention does not itself establish minimum mandatory standards, Members of the Union are free not to grant protection to nationals of other countries of the Union provided they do not grant protection to their own nationals. Such freedom has given rise to differences in levels of protection among the Members of the Paris Union, which were, at some point, designated as asymmetries8.
Thirdly, the TRIPS Agreement does confer some flexibility on WTO Members. Apart from the matter of the minimum mandatory standards, in many areas and instances the Agreement leaves open the possibility of WTO Members conforming their national standards of intellectual property rights protection to those national public policies they respectively pursue.
According to the explanation given by the World Intellectual Property Organization (WIPO), the term ‘flexibilities’ means ‘the alternate ways through which TRIPS obligations can be transposed into national law so that national interests are accommodated and yet TRIPS provisions and principles are complied with.’9 The word ‘flexibility’ is expressly used in paragraph 6 of the Preamble of the TRIPS Agreement and it or terms equivalent to its meaning are found in a series of TRIPS articles. Within this classification, the TRIPS flexibilities may be classified under four heads10. Firstly, flexibilities as regards transitional periods that are provided for in paragraph six of the Preamable. Secondly, flexibilities as regards the method of implementation of TRIPS obligations that are provided for in Article 1.1. Thirdly, flexibilities as regards standards of protection that are provided for in Articles 6, 8.1, 17, 18, 20, 23.4, 23.5, 23.9, 24.8, 26.2, 26.3, 30, 31, 33, 37, and 38. Fourthly, flexibilities as regards enforcement that are provided for in Article 41.511.
Finally, the TRIPS Agreement is the first such convention to establish an effective enforcement mechanism of intellectual property rights. One of the most drastic differences between the TRIPS Agreement and other pre-TRIPS agreements is that it provides much more detailed rules in order to ensure the enforceability of commitments made under the Agreement. Intellectual property rights disputes covered by the TRIPS Agreement are to be resolved by a variety of measures, namely, civil and administrative procedures and remedies, provisional measures, border measures and criminal procedures12. Disputes between Members that arise out of the TRIPS Agreement are resolved pursuant to the dispute settlement procedures of WTO. This means that the WTO rules contained in the GATT and the Dispute Settlement Understanding may apply.
With all of these innovations, the TRIPS Agreement may be considered as the most comprehensive multilateral agreement on intellectual property to date13. ‘[It] constitutes the most important significance [in the] strengthening ever of global norms in the intellectual property area.’14
(b) The TRIPS Agreement: the Most Fundamental Objective is to Promote Free International Trade
In line with the purposes and objectives of the WTO, the stated objective of the TRIPS Agreement is to facilitate and promote free international trade by protecting intellectual property rights, while at the same time preventing the use of intellectual property rights protection by individual Members as trade barriers15. ‘One of the most common misunderstandings about the TRIPS Agreement is that its main objective is to enhance the protection of intellectual property. But it is not. The main – if not the only – objective of the TRIPS Agreement as well as that of the whole WTO Agreement is to promote free trade16.
As emphasized in the Preamble of the TRIPS Agreement, the first fundamental goal is ‘to reduce distortions and impediments to international trade… and to ensure that measures and procedures to enforce intellectual property rights do not themselves become barriers to legitimate trade.’ 17This goal should be read in conjunction with Articles 7 and 8 of the Agreement. Accordingly, the protection and enforcement of intellectual property rights should contribute to the promotion of technological innovation and to the transfer and dissemination of technology, to the mutual advantage of producers and users of technological knowledge and in a manner conducive to social and economic welfare, and to a balance of rights and obligations (Article 7). The WTO Members are empowered to adopt measures for public health and other public interest reasons and to prevent the abuse of intellectual property rights or practices which unreasonably restrain trade or adversely affect the international transfer of technology (Article 8).
In addition to the Preamble, many provisions of the TRIPS Agreement embody the goal of facilitating free trade. They are, for instance, the provisions on enforcement of intellectual property rights. It is assumed that some measures and procedures to enforce intellectual property rights may themselves become barriers to trade when used in an inappropriate manner. The WTO Members are, thus, requested by the TRIPS Agreement to apply enforcement measures ‘in such a manner as to avoid the creation of barriers to legitimate trade’ as provided in Article 41. Articles 48, 50.3, 50.7, and 56, are examples of provisions that aim at preventing and remedying the misuse of enforcement measures by right holders (or alleged right holders), which might impede legitimate international trade18.
3. Principles of the TRIPS Agreement
The TRIPS Agreement, as are the other WTO agreements such as the GATT and GATS, is based on three principles, namely national treatment, most –favoured nation treatment, and transparency. 19All matters concerning the availability, scope, acquisition, use, and enforcement of trade-related intellectual property rights addressed in the TRIPS Agreement are subject to the first two principles. 20The last principle is intended to maintain the publicity, stability, and predictability of trade-related intellectual property laws and regulations.
(a) National Treatment Principle
The national treatment principle was first developed in the Paris Convention (Article 2). However, the operation of the principle laid down in the Paris Convention gave rise to differences in the levels of industrial property protection among the Members of the Paris Union and this could create barriers to exports of intellectual property right-embodied goods and services. Negotiators in the Uruguay Round, thus, agreed to a different formulation of the national treatment principle, which may be found at Article 3 of the TRIPS Agreement.
The national treatment principle under the TRIPS Agreement has been extensively scrutinized and explained in the framework of the WTO Dispute Settlement Mechanism. It is interpreted in the following cases, for instance: European Communities-Protection of Trademark and Geographical Indications for Agricultural Products and Foodstuffs, complaint by the US; European Communities-Protection of Trademark and Geographical Indications for Agricultural Products and Foodstuffs, complaint by Australia; Indonesia-Autos; and US-Section 211 Appropriations Act (US-Havana Club)21. Accordingly, the protection that a WTO Member grants to nationals of other Members is no longer the same protection it grants to its own nationals (as provided in the Paris Convention), but rather ‘no less favourable’. In other words, regardless of the level of protection that a WTO Member grant to its own nationals, the minimum standards established by the TRIPS Agreement are of mandatory application to nationals of other Members. Where the protection granted by that Member is lower than the minimum levels required by the TRIPS Agreement, the Member may only limit the protection granted to nationals of other Members to the TRIPS minimum standards. When the protection of that Member is higher than or equal to the TRIPS minimum levels, the same protection levels must be granted to nationals of other Members22.
(b) The Most –Favoured Nation Treatment Principle
The principle of most-favoured-nation treatment is provided for in Article 4 of the TRIPS Agreement. It is absent in the pre-TRIPS conventions on intellectual property rights but is found in other WTO Agreements such as GATT (Article I) and GATS (Article 2). While the national treatment principle prohibits discrimination by a WTO Member between its own nationals and the nationals of other Members, this principle prohibits discrimination by a member state between the nationals of two different Members. Article 4 of the TRIPS Agreement requires WTO Members, in intellectual property protection, to accord ‘immediately and unconditionally’ any ‘advantage, favour, privilege or immunity’ to ‘the nationals of any other country’ (including non-WTO Members) as they do to their own nationals. In regard to interpretation of this principle, see European Communities-Protection of Trademark and Geographical Indications for Agricultural Products and Foodstuffs, complaint by the US; US-Section 211 Appropriations Act (US-Havana Club)23.
(c) The Transparency Principle
The transparency principle was first included in Article X of the GATT 1947. In the TRIPS Agreement, it is in Article 63. Article 63 requires WTO Members to make their intellectual property rights-related rules publicly available. The intellectual property rights-related rules are defined at Article 63.1 as laws, regulations, final judicial decisions, administrative rulings of general application, agreements between one Member’s government or a government agency and anther Member’s government or government agency. This obligation can be executed in one of three ways, namely official publication (Article 63.1), notification to the TRIPS Council (Article 63.2), and bilateral requests for information and access (Article 63.3). The objective of this stipulation is to ‘keep foreign governments and private rights holders informed about possible changes in a Member’s legislation on intellectual property rights in order to ensure and contribute to a stable and predictable legal environment.’24
It is worth noting that the TRIPS Agreement allows exceptions to the three principles. Exceptions from the national treatment are to be found in Article 3.1; from the most favoured national treatment in Articles 4 (a), (b), (c), and (d); from the transparency requirement in Article 63.4 of the TRIPS Agreement25.
1 WIPO, WIPO Intellectual Property Handbook: Policy, Law and Use, WIPO Publication No. 489 (2004), at 345, <http://www.wipo.int/about-ip/en/iprm/>; Nuno Pires de Carvalho, The TRIPs Regime of Trademarks and Designs, Kluwer Law International (2006), at 36.
2 WTO, the Panel Report, United States-Section 211 Omnibus Appropriations Acts of 1988 (US-Havana Club), WT/DS176/R, circulated on 6 August 2001.
3 WTO, the Arbitrators, EC-Bananas (Article 22.6) (Ecuador), WT/DS27/ARB/ECU, circulated on 24 March 2000.
4 WTO, the Panel Report, United States-Section 211 Omnibus Appropriation Acts of 1988 (US- Havana Club), WT/DS176/R, circulated on 6 August 2001, paras. 336, 337 and 341.
5 Carlos M. Correa, Trade Related Aspects of IPRs – A Commentary on the TRIPs Agreement, Oxford University Press (2007), at 8.
6 The World Bank criticized TRIPS’ same treatment of all countries on the basis that “one size does not fit all”. See World Bank, Global Economic Prospects and the Developing Countries, Washington DC (2001), at 129.
7 Article 2.1 of the Paris Convention reads:
Nationals of any country of the Union shall, as regards the protection of industrial property, enjoy in all the other countries of the Union the advantages that their respective laws now grant, or may hereafter grant, to nationals; all without prejudice to the rights specially provided for by this Convention. Consequently, they shall have the same protection as the latter, and the same legal remedy against any infringement of their rights, provided that the conditions and formalities imposed upon nationals are complied with.
8 WIPO, Patent Related Flexibilities in the Multilateral Legal Framework and Their Legislative Implementation at the National and Regional Levels CDIP/5/4, Committee on Development and IP, Fifth Session, Geneva, 26-30 April 2010, para. 6(ii), <http://www.wipo.int/meetings/en/doc_details.jsp?doc_id=131629>.
9 WIPO, Patent Related Flexibilities in the Multilateral Legal Framework and Their Legislative Implementation at the National and Regional Levels CDIP/5/4, Committee on Development and IP, Fifth Session, Geneva, 26-30 April 2010, para. 34, <http://www.wipo.int/meetings/en/doc_details.jsp?doc_id=131629>.
10 Nuno Pires de Carvalho, WIPO Seminar for Certain Asian Countries on Flexible Implementation of TRIPS Provisions, Singapore, 28-30 July 2008.
11 WIPO noted that, as another way of looking at flexibilities, Members may resort to them in three different (and sequential) moments: in the process of acquisition of the right; once the right has been acquired, in framing it and establishing its dimensions, and once the right has been so acquired, framed and given dimensions, in using and enforcing it. See WIPO, Patent Related Flexibilities in the Multilateral Legal Framework and Their Legislative Implementation at the National and Regional Levels CDIP/5/4, Committee on Development and IP, Fifth Session, Geneva, 26-30 April 2010, para. 35, <http://www.wipo.int/meetings/en/doc_details.jsp?doc_id=131629>.
12 See Articles 41-61 of the TRIPS Agreement.
3 On the role of the TRIPS Agreement, see Carlos M. Correa, IPRs, the WTO and Developing Countries: The TRIPS Agreement and Policy Options, Zed Books Ltd. (2000); Carolyn Deere, The Implementation Game: The TRIPS Agreement and the Global Politics of Intellectual Property Reform in Developing Countries, Oxford University Press (2009); Gary W. Smith, ‘IPRs, Developing Countries, and TRIPS: An Overview of Issues of Consideration during the Millennium Round of Multilateral Trade Negotiations’, Journal of World Intellectual Property, Vol. 2, Issue 6 (1999), at 969; WTO, Overview: the TRIPS Agreement, <http://www.wto.org/english/tratop_e/trips_e/intel2_e.htm>.
14 Keith E. Maskus, IPRs in the Global Economy, Institute for International Economics, Washington, DC (2000), at 16.
15 The TRIPS Agreement, Preamble.
6 Nuno Pires de Carvalho, The TRIPs Regime of Trademarks and Designs, Kluwer Law International (2006), at 47.
7 The first paragraph of the Preamble, the TRIPS Agreement (words omitted).
8 Nuno Pires de Carvalho, The TRIPs Regime of Trademarks and Designs, Kluwer Law International (2006), at 44.
9 Articles 3, 4, and 63 of the TRIPS Agreement; Articles III, I, and X of the GATT; Articles 17, 2, and 3 of the GATS.
20 See Note 3, the TRIPS Agreement; Daniel Gervais, The TRIPS Agreement: Drafting History and Analysis, Sweet and Maxwell (1998), at 45-59; UNCTAD-ICTSD Project on IPRs and Sustainable Development, Resource Book on TRIPS and Development, Cambridge University Press (2005), at 61-91.
21 WTO, European Communities-Protection of Trademark and Geographical Indications for Agricultural Products and Foodstuffs, complaint by the US, WT/DS174/R, 15 March 2005 and WT/DS174/23, 25 April 2005; WTO, European Communities-Protection of Trademark and Geographical Indications for Agricultural Products and Foodstuffs, complaint by Australia, WT/DS290/R, 15 March 2005 and WT/DS290/21, 25 April 2005; WTO, the Panel Report, Indonesia-Autos, WT/DS54/R, WT/DS55R/, WT/DS59/R, WT/DS64/R, circulated on 2 July 1998; WTO, the Panel Report, United States-Section 211 Omnibus Appropriations Acts of 1988 (US- Havana Club), WT/DS176/R, circulated on 6 August 2001.
22WTO, Principles of trading system, <http://www.wto.org/english/theWTO_e/whatis_e/tif_e/fact2_e.htm#national>.
23 WTO, European Communities-Protection of Trademark and Geographical Indications for Agricultural Products and Foodstuffs, complaint by the US, WT/DS174/R, 15 March 2005; WTO, the Panel Report, United States-Section 211 Omnibus Appropriations Acts of 1988 (US-Havana Club), WT/DS176/R, circulated on 6 August 2001.
24 UNCTAD-ICTSD Project on IPRs and Sustainable Development, Resource Book on TRIPS and Development, Cambridge University Press (2005), at 641. For further understanding of the transparency principle, see UNCTAD-ICTSD Project on IPRs and Sustainable Development, Resource Book on TRIPS and Development, Cambridge University Press (2005), at 637-650; WTO, Transparency, Working Group on the Relationship between Trade and Investment, Noted by the WTO Secretariat, WT/WGTI/W/109, 27 March 2002.
25 For further details, see UNCTAD-ICTSD Project on IPRs and Sustainable Development, Resource Book on TRIPS and Development, Cambridge University Press (2005), at 75 (for the principle of national treatment); at 78-82 (for the principle of most-favoured national treatment); at 646 (for the principle of transparency).