MAIN CONTENTS OF THE TRIPS AGREEMENT
Dr. Nguyen Nhu Quynh
Deputy Chief Inspector
Ministry of Science and Technology
In addition to the general provisions and basic principles, 1the TRIPS Agreement consists of the following main contents. The first is a set of standards concerning the availability, scope and use of intellectual property rights with respect to seven intellectual property objects, namely, copyright and related rights, trademarks, geographical indications, industrial designs, patents (including plant varieties), layout designs (topographies) of integrated circuits, and undisclosed information. Secondly, the TRIPS Agreement includes the provisions on intellectual property rights-related anti-competitive practices. Thirdly, the TRIPS Agreement has the detailed provisions on enforcement of intellectual property rights. Fourthly, the TRIPS Agreement makes disputes involving intellectual property matters subject to the Dispute Settlement Mechanism of the WTO2.
1. Standards Concerning the Availability, Scope and Use of Intellectual Property Rights
(a) Copyright and Related Rights
The TRIPS Agreement confirms that copyright protection shall extend to expressions and not to ideas, procedures, methods of operation or mathematical concepts as such (Article 9.2). Computer programmes, whether in source or object code, must be protected under copyright as literary works (Article 10.1). Databases and other compilations of data or other material shall be protected as such under copyright even where the databases include data that as such are not protected under copyright (Article 10.2).
Authors and their successors shall have in respect of at least computer programmes and, in certain circumstances, of cinematographic works the right to authorize or to prohibit the commercial rental to the public of originals or copies of their copyright works (Article 11).
According to Article 12, the term of protection of a work (except 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 fifty years from the end of the calendar year of authorized publication, or, failing such authorized publication within fifty years from the making of the work, fifty years from the end of the calendar year of making. The TRIPS Agreement requires the WTO Members to confine limitations or exceptions to exclusive rights to certain special cases that do not conflict with a normal exploitation of the work and do not unreasonably prejudice the legitimate interests of the rights holder (Article 13). In US- Section 110(5) Copyright Act3, the WTO Panel interpreted Article 13 in term of the scope4, the relationship with the other Articles5, and the application conditions6.
ii) Related Rights
The TRIPS Agreement consists of the provisions on the protection of performers, producers of phonograms and broadcasting organizations. Accordingly, performers shall have the possibility of preventing the unauthorized fixation of their performance on a phonogram. The fixation right covers only aural, not audiovisual, fixations. Performers must also be in position to prevent the reproduction of such fixations. They shall also have the possibility of preventing the unauthorized broadcasting by wireless means and the communication to the public of their live performance (Article 14.1). The Agreement requires the WTO Members to grant producers of phonograms an exclusive reproduction right (Article 14.2). In addition to this, they have to grant, in accordance with Article 14.4, an exclusive rental right at least to producers of phonograms. Broadcasting organizations shall have the right to prohibit the unauthorized fixation, the reproduction of fixations, and the rebroadcasting by wireless means of broadcasts, as well as the communication to the public of their television broadcasts (Article 14.3).
The term of protection is at least fifty years for performers and producers of phonograms from the end of the calendar year in which the fixation was made or the performance took place, and twenty years for broadcasting organizations from the end of the calendar year in which the broadcast took place (Article 14.5). The WTO Members are empowered to provide for conditions, limitations, exceptions and reservation to the rights conferred on performers, producers of phonograms and broadcasting organizations to the extent permitted by the Rome Convention (Article 14.6).
Regarding the issue that signs may constitute a trademark, the TRIPS Agreement provides broadly that: any sign, or any combination of signs, including visible (e.g., letters, numerals, and figurative elements) and invisible signs (e.g., sound, smell, and taste), capable of distinguishing the goods and services of one undertaking from those of other undertakings, shall be eligible for registration as a trademark (Article 15.1). ‘[A] distinctiveness acquired through use’ may be required where signs are not inherently capable of distinguishing the relevant goods or services.
The owner of a registered trademark must be granted 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 must be presumed’ (Article 16.1).
The protection of well-known marks is included in Articles 16.2 and 16.3, which supplement the protection required by Article 6 bis of the Paris Convention. Firstly, the TRIPS Agreement confirms that ‘Article 6 bis of the Paris Convention (1967) shall apply, mutatis mutandis, to services’. In terms of the criteria for the evaluation of well-known marks, knowledge in the relevant sector of the public is acquired not only as a result of the use of the mark but also by other means, including as a result of its promotion. Furthermore, the protection of registered well-known marks must extend to goods or services which are not similar to those in respect of which the trademark has been registered, provided that its use would indicate a connection between those goods or services and the owner of the registered trademark, and the interests of the owner are likely to be damaged by such use.
As provided in Article 17, the WTO Members may provide limited exceptions to the rights conferred by a trademark, such as fair use of descriptive terms, provided that such exceptions take account of the legitimate interests of the owner of the trademark and of third parties. The term of trademark protection for initial registration and each renewal of registration shall be no less than seven years. The registration of a trademark shall be renewable indefinitely (Article 18).
In terms of requirement of use, the Agreement provides that: the cancellation of a mark on the grounds of non-use cannot take place before three years of uninterrupted non-use has elapsed unless valid reasons based on the existence of obstacles to such use are shown by the trademark owner. Circumstances arising independently of the will of the owner of the trademark, such as import restrictions or other government restrictions, shall be recognized as valid reasons of non-use. The use of a trademark by another person, when subject to the control of its owner, must be recognized as use of the trademark for the purpose of maintaining the registration (Article 19).
(c) Geographical Indications
A definition of geographical indication is included in Article 22.1 of the TRIPS Agreement. According to that, ‘[g]eographical indications are, for the purposes of the 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’ (Article 22.1). The WTO Members are required to have legal means to prevent use of indications that mislead the public as to the geographical origin of the good, and use that constitutes an act of unfair competition within the meaning of Article 10 bis of the Paris Convention (Article 22.2).
The interface between trademarks and geographical indications is mentioned in Article 22.3. In particular, the registration of a trademark which uses a geographical indication in a way that misleads the public as to the true place of origin must be refused or invalidated ex officio if the legislation so permits or at the request of an interested party.
It is worth noting that the TRIPS Agreement grants a special protection for geographical indications for wines and spirits at Article 23. Accordingly, the WTO Members must have the legal means to prevent the use of a geographical indication identifying wines for wines not originating in the place indicated by the geographical indication. This applies even where the public is not being misled, there is no unfair competition and the true origin of the good is indicated or the geographical indication is accompanied be expressions such as ‘kind’, ‘type’, ‘style’, ‘imitation’ or the like. Similar protection must be given to geographical indications identifying spirits when used on spirits. Protection against the registration of a trademark must be provided accordingly. The exceptions to the protection of geographical indications are provided in Article 24.
(d) Industrial Designs
The TRIPS Agreement obliges Members to provide for the protection of independently created industrial designs that are new or original and such protection may not extend to designs dictated essentially by technical or functional considerations (Article 25.1).
Stemming from the undeniable link between industrial designs and textile industry and characters of the short life cycle and sheer number of new designs in the textile sector, a special provision on industrial design protection for textiles is included in the TRIPS Agreement. The ‘protection for textile designs, in particular in regard to any cost, examination or publication, must not unreasonably impair the opportunity to seek and obtain such protection. Members are free to meet this obligation through industrial design law or through copyright law’ (Article 25.2).
Article 26.1 requires the WTO Members to grant to the owner of a protected industrial design 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. The WTO Members are allowed to 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 (Article 26.2). The duration of industrial design protection available shall amount to at least ten years (Article 26.3).
The TRIPS Agreement requires Member countries to make patents available for any inventions, whether products or processes, in all fields of technology without discrimination, subject to the normal tests of novelty, inventiveness and industrial applicability (Article 27.1). There are three permissible exceptions to the basic rule on patentability. The first is for inventions contrary to ordre public or morality; this explicitly includes inventions dangerous to human, animal or plant life or health or seriously prejudicial to the environment (Article 27.2). Secondly, Members may exclude from patentability diagnostic, therapeutic and surgical methods for the treatment of humans or animals (Article 27.3(a)). Thirdly, Members may exclude 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, any country excluding plant varieties from patent protection must provide an effective sui generis system of protection (Article 27.3(b)).
The rights conferred on patent owners are of making, using, offering for sale, selling, and importing for these purposes. Process patent protection must give rights not only over use of the process but also over products obtained directly by the process. Patent owners shall also have the right to assign, or transfer by succession, the patent and to conclude licensing contracts (Article 28). The WTO Members may provide limited exceptions to such exclusive rights, provided that such exceptions do not unreasonably conflict with a normal exploitation of the patent and do not unreasonably prejudice the legitimate interests of the patent owner, taking account of the legitimate interests of third parties (Article 30). In Canada-Pharmaceutical Patents7, the WTO Panel interpreted the rights conferred to patent owners provided in Article 28 and the exceptions to the rights conferred on patent owners in Article 30.
The term of patent protection available shall not end before the expiration of a period of twenty years counted from the filing date (Article 33). In Canada-Term of Patent Protection8, the WTO Appellate Body found that: the patent protection term of seventeen years (counted from the date of grant) accorded to patent applications filed before 1 October 1989 and often ended before twenty years from the date of filing as provided in Section 45 of Canada’s Patent Act was inconsistent with Article 33 of the TRIPS Agreement.
Compulsory licensing and government use without the authorization of the right holder are allowed, but are made subject to conditions aimed at protecting the legitimate interests of the right holder (Article 31). Certain conditions are relaxed where compulsory licences are employed to remedy practices that have been established as anticompetitive by a legal process.
(f) Layout-Designs (Topographies) of Integrated Circuits
Under the TRIPS regime, protection of layout-designs of integrated circuits based on certain provisions of the Treaty on Intellectual Property in Respect of Integrated Circuits (Article 35) and additional provisions of the TRIPS Agreement itself (Articles 36-38). The former deal with, inter alia, the definitions of ‘integrated circuit’ and ‘layout-design (topography)’, requirements for protection, exclusive rights, and limitations, as well as exploitation, registration and disclosure9. The latter includes four remarkable points. They are: (i) the applicability of the protection to articles containing infringing integrated circuits (Article 36); (ii) the treatment of innocent infringers who perform the acts of importing, selling, or otherwise distributing for commercial purposes in respect of an integrated circuit incorporating an unlawfully reproduced layout-design or any article incorporating such an integrated circuit but she/he did not know and had no reasonable ground to know, when acquiring the integrated circuit or article incorporating such an integrated circuit, that it incorporated an unlawfully reproduced layout-design (Article 37.1); (iii) Application of Article 31 of the TRIPS Agreement, mutatis mutandis, to non-voluntary licensing of a layout-design or to its use by or for the government without the authorization of the right holder, instead of the provisions of the Treaty on Intellectual Property in Respect of Integrated Circuits on compulsory licensing (Article 37.2).
(g) Undisclosed Information
Differently from the six above-mentioned intellectual property objects, the TRIPS Agreement states clearly that the protection of undisclosed information is to ensure ‘effective protection against unfair competition’ (Article 39.1). Besides that, the Agreement defines ‘undisclosed information’ at Article 39.2. According to this provision, undisclosed information must be secret, have commercial value since it is secret, and be subject to reasonable steps to keep it secret. The Agreement also contains provisions on undisclosed test data and other data whose submission is required by governments as a condition of approving the marketing of pharmaceutical or agricultural chemical products that use new chemical entities (Article 39.3). In such a situation, the WTO Members ‘shall protect such data against unfair commercial use [and] 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.’
2. Control of intellectual Property Rights-Related Anti-competitive Practices
The TRIPS Agreement contains a number of articles dealing with intellectual property rights-related anti-competitive practices, especially Articles 8.2, 31(k), and 4010. The provisions of the Agreement on contractual restraints relating to intellectual property rights are Articles 8.2 and 40 only11. These articles recognize that certain abuses of intellectual property rights and intellectual property rights-related anti-competitive practices may restrain competition and they leave the issue up to WTO Members to deal in some cases and require the Members to follow the minimum obligations in others.
(a) Flexible Rules
Articles 8.2 and 40.2 allow WTO Member States to adopt ‘appropriate measures’ to prevent or control intellectual property right-related anti-competitive practices. With Article 8.2, the WTO Members acknowledge that there are intellectual property rights-related anti-competitive practices that need to be prevented and Members are empowered to deal with such practices. These practices are: the abuse of intellectual property rights by right holders; practices that unreasonably restrain trade, and practices that adversely affect international technology transfer.
The control of anti-competitive practices in licensing agreements is provided for by Article 40. This contains four paragraphs, of which paragraphs 1 and 2 deal with issues of substantive law whereas paragraphs 3 and 4 treat enforcement matters. Article 40, as a lex specialis provision in relation to Article 8.2, narrows the scope of Article 8.2 and covers only some of the conduct of intellectual property right-holders listed in Article 8.212. Article 40 belongs with Section 8 and the title of the section is ‘[c]ontrol of anti-competitive practices in contractual licenses’. However, Article 40.1, by referring in general terms to ‘licensing practices or conditions’, clarifies that it covers all conduct surrounding the grant and the execution of licenses. Both unilateral conduct and restrictive contract terms relating to intellectual property rights thus fall within the scope of the provision. Article 40.1 simply recognizes that ‘some licensing practices or conditions pertaining to intellectual property rights which restrain competition may have adverse affects on trade and may impede the transfer and dissemination of technology.’ Article 40.1 is, thus, ‘non-committal’ with regard to Article 8.213.
While Article 40.1 gives no list of anti-competitive licensing practices or conditions, Article 40.2 does list some examples of these, namely, ‘exclusive grant back conditions, conditions preventing challenges to validity and coercive package licensing’. However, the words ‘for example’ show that this is not an exhaustive list. This implies that WTO Members have discretion in defining the concept of ‘licensing practices and conditions’. In addition to this, Article 40.2 expressly allows WTO Members to establish and define the rules of competition law to control or prevent anti-competitive licensing practices and conditions. Article 40.2 also acknowledges Members’ authority to ‘take appropriate measures to prevent or control’ anti-competitive licensing practices and at the same time requires them to comply with certain minimum obligations.
In short, Articles 8.2, 40.1, and 40.2 leave WTO Members free to deal with intellectual property rights-related anti-competitive practices. Specifically, Members have the right to address such practices or not to do so; to define the concepts of intellectual property rights-related anti-competitive practices and of licensing practices or conditions pertaining to intellectual property rights; to establish and define the rules of competition law to control or prevent such practices, and to take appropriate measures to prevent or control such practices.
(b) Minimum Standards
In addition to providing flexible provisions on intellectual property rights-related anti-competitive practices, the TRIPS Agreement does stipulate minimum standards for measures preventing intellectual property rights-related anti-competitive practices. More specifically, the WTO Members decide whether or not to control intellectual property rights-related anti-competitive practices by domestic competition laws and regulations. If Members wish to do so, however, domestic competition laws and regulations must be ‘consistent with the provisions of the [TRIPS] Agreement’ and ‘appropriate’ to prevent the practices in question (provided for in Articles 8.2 and 40.2). In other words, the measures must meet two requirements, namely, consistency and appropriateness. Additionally, WTO Members have consultation and cooperation obligations in the control of intellectual property rights-related anti-competitive practices (provided at Articles 40.3 and 40.4). First, Articles 8.2 and 40.2 require the measures controlling or preventing intellectual property rights-related anti-competitive practices to be ‘consistent with other provisions of [the TRIPS Agreement].’ Secondly, Article 8.2 and Article 40.2 of the TRIPS Agreement require that measures controlling or preventing intellectual property right-related anti-competitive practices be ‘appropriate’ and ‘needed’. The requirement of appropriateness was reviewed in WTO documents14 and has been elaborated on by the WTO in some GATT/GATS related disputes. For instance, Korea-Measures Affecting Import of Fresh, Chilled and Frozen Beef; European Communities-Measures Affecting Asbestos-containing Products; European Communities-Trade Description of Sardines; Japan-Measures Affecting the Importation of Apples; United States-Measures Affecting the Cross-Border Supply of Gambling and Betting Services; European Communities- Measures Affecting the Approval and Marketing of Biotech Products15. Finally, Articles 40.3 and 40.4 of the TRIPS Agreement establish a basic obligation of consultation and cooperation with respect to control of intellectual property right related- anti-competitive practices in licensing agreements. This is the first multilateral agreement that sets forth an obligation of assistance in antitrust law enforcement16.
3. Enforcement of Intellectual Property Rights
(a) General Obligations
The TRIPS Agreement requires WTO Members to ensure that enforcement procedures are 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 that 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 the abuse of such procedures (Article 41.1). Moreover, enforcement procedures must be fair and equitable, not unnecessarily complicated or costly, nor entail unreasonable time limits or unwarranted delays (Article 41.2). In Canada-The term of Patent Protection17, the WTO Panel states that:
[R]equiring applicants to resort to delays such as abandonment, reinstatement, non-payment of fees and non-response to a patent examiner’s report would be inconsistent with the general principle that procedures [of intellectual property right enforcement] not be unnecessarily complicated as expressed in Article 41.218.
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).
(b) Civil and Administrative Procedures and Remedies
The TRIPS Agreement has established detailed provisions on civil and administrative procedures for enforcement of intellectual property rights. These provisions deal with the following issues: (i) requirements of fair and equitable procedures (Article 42)19; (ii) evidence (Article 43)20; (iii) injunctions (Article 44); (iv) damages (Article 45); (v) other remedies, such as the authority to order disposal of infringing goods or materials and implements used in the creation of infringing goods (Article 46); (vi) right of information (Article 47); (vii) indemnification of the defendant (Article 48), and (viii) application of the above guidelines to administrative procedures (Article 49).
(c) Provisional Measures
Provisional measures are applied in order to prevent an infringement of any intellectual property right from occurring, and in particular to prevent the entry of goods into the channels of commerce in their jurisdiction, including imported goods immediately after customs clearance; and to preserve relevant evidence in regard to the alleged infringement (Article 50.1). These measures are adopted ‘where any delay is likely to cause irreparable harm to the right holder, or where there is a demonstrable risk of evidence being destroyed’ (Article 50.2). The provisions on provisional measures contain certain safeguards against the abuse of such measures. The judicial authority may require the applicant: (i) to provide any reasonably available adequate evidence that the applicant is the right holder and that the applicant’s right is being infringed or that such infringement is imminent (Article 50.3); (ii) to provide a security or equivalent assurance sufficient to protect the defendant and to prevent abuse (Article 50.3); and (iii) to supply information necessary for the identification of the goods (Article 50.5). Further, the defendant has a right to review with a view to deciding, within a reasonable period after the notification of the measures, whether these measures shall be modified, revoked or confirmed (Article 50.4).
(d) Special Requirements Related to Border Measures
Border measures must be available at least against the importation of counterfeit trademark and pirated copyright goods (Article 51). Border measures allow customs to suspend imported counterfeit trademark and pirated copyright goods from releasing into free circulation. In accordance with Article 60, Members may exclude from the application of these procedures de minimis imports, i.e., small quantities of goods of a non-commercial nature contained in travelers’ personal luggage or sent in small consignments. The TRIPS Agreement leaves freedom for the WTO Members to apply corresponding procedures to the suspension by customs authorities of infringing goods destined for exportation from their territories (Article 51).
Similarly to provisional measures, for the purpose of preventing abuse of border measures, many types of safeguards are provided for in the TRIPS Agreement. The competent authority may require the applicant to provide a security or equivalent assurance sufficient to protect the defendant and the competent authorities and to prevent abuse. The importer and the applicant must be promptly notified of the detention of goods (Article 54). If the right holder fails to initiate proceedings leading to a decision on the merits of a case within ten working days, the goods shall normally be released (Article 55). Where goods involve the alleged infringement of industrial designs, patents, layout-designs or undisclosed information, the importer must be entitled to obtain their release on the posting of a security sufficient to protect the right holder from any infringement, even if proceedings leading to a decision on the merits have been initiated (Article 53.2).
In regard to remedies, the competent authorities must have the power to order the destruction or disposal outside the channels of commerce of infringing goods in such a manner as to avoid any harm to “other rights of action open to the right holder” (Article 59).
(e) Criminal Procedures
The TRIPS Agreement requires that Members provide for criminal procedures and penalties to be applied at least in cases of wilful trademark counterfeiting or copyright piracy on a commercial scale. They also have to provide for remedies such as imprisonment, monetary fines and seizure, forfeiture and destruction of the infringing goods and of any materials and implements predominantly used for the commission of the offence (Article 61).
4. Dispute Settlement
Settlement of intellectual property-related disputes under the WTO Dispute Settlement Mechanism is one of the most important contents of the TRIPS Agreement.
The dispute settlement system of the WTO is a central element in providing security and predictability to the multilateral trading system…[and] serves to preserve the rights and obligations of Members under the covered agreements, and to clarify the existing provisions of those agreements in accordance with customary rules of interpretation of public international law21.
Its operation involves the Dispute Settlement Body (DSB) panels, the Appellate Body, the WTO Secretariat, arbitrators, independent experts and several specialized institutions.
The TRIPS Agreement itself invokes the provisions of Articles XXII and XXIII of GATT 1994, as elaborated by the WTO Understanding on Rules and Procedures Governing the Settlement of Disputes (DSU), which applies to consultations and the settlement of disputes under the TRIPS Agreement (Article 64.1). As a result, intellectual property matter-related disputes covered by the TRIPS Agreement subject to the Dispute Settlement Mechanism of the WTO. After a period of five years from the date of entry into force of the WTO Agreement (i.e., by 1 January 1 2000), the same mechanism should have been available for settling non-violation and situation disputes (Article 64.2).
1 The contents of Part I have already been mentioned in subsection 2: an overview of the TRIPS Agreement.
2 It should be noted that there are other contents in the TRIPS Agreement. They are: (i) acquisition and maintenance of intellectual property rights and related inter-partes procedures (Part IV); (ii) transitional agreements (Part VI); and (iii) institutional agreements: final provisions (Part VII). In the context of this textbook, nevertheless, these contents are not regarded as the main contents of the TRIPS Agreement.
3 WTO, the Panel Report, US-Section 110(5) of the US Copyright Act, WT/DS160/R, circulated on 15 June 2000.
4 WTO, the Panel Report, US-Section 110(5) of the US Copyright Act, WT/DS160/R, circulated on 15 June 2000, para. 6.80.
5 WTO, the Panel Report, US- Section 110(5) of the US Copyright Act, WT/DS160/R, circulated on 15 June 2000, paras. 6.94, 6.87-6.89, and 6.90.
6 WTO, the Panel Report, US-Section 110(5) of the US Copyright Act, WT/DS160/R, circulated on 15 June 2000, paras. 6.112, 6.165, 6.166-6.167, 6.222, 6.223-6.225.
7 WTO, the Panel Report, Canada-Patent Protection of Pharmaceutical Products, WT/DS114/R, circulated on 17 March 2000.
8 WTO, the Report of the Appealate Body, Canada-The term of Patent Protection, WT/DS170/AB/R, circulated on 18 September 2000.
9 See Articles 2, 3, 6, and 7 of the Treaty on Intellectual Property in Respect of Integrated Circuits.
10 To some extent, Articles 6, 31(c), and 37.2 of the TRIPS Agreement may be also regarded as competition provisions.
11 Article 31(k) relates to unilateral conduct of intellectual property right abuses, not to contractual relationships.
12 UNCTAD-ICTSD Project on IPRs and Sustainable Development, Resource Book on TRIPS and Development, Cambridge University Press (2005), at 554. Besides the view that Article 40 is a lex specialis provision in relation to Article 8.2, some argue that Article 8.2 contains a policy statement only and is implemented by Article 40. See Daniel Gervais, The TRIPS Agreement: Drafting History and Analysis, Sweet and Maxwell (1998), at 68, para. 2.49.
13 Gervais, Daniel, The TRIPS Agreement: Drafting History and Analysis, Sweet and Maxwell (1998), para. 191; Heinemann, ‘Antitrust Law of Intellectual Property in the TRIPS Agreement of the World Trade Organization’, in Beier, Schricker (ed.), From GATT to TRIPS), Weinheim (1996), at 245.
14 For example, see WTO Working Party on Domestic Regulation, “Necessity Test” in the WTO, Note by the Secretariat, S/WPDR/W/27, 2 December 2003, para. 4.
15 For example, see WTO, Korea-Measures Affecting Import of Fresh, Chilled and Frozen Beef, WT/DS161/AB//R and WT/DS169/AB/R, circulated on 11 December 2000; WTO, European Communities-Measures Affecting Asbestos-containing Products, WT/DS135/AB/R, circulated on 12 March 2001, paras. 168-175; WTO, European Communities- Trade Description of Sardines, WT/DS231/AB/R, circulated on 26 September 2002, paras. 285-291; WTO, Japan-Measures Affecting the Importation of Apples, WT/DS245/R, circulated on 15 July 2003, paras. 8.180-8.198; and WT/DS245/AB/R, circulated on 26 November 2003, para. 163-165; WTO, United States- Measures Affecting the Cross-Border Supply of Gambling and Betting Services, WT/DS285/AB/R, circulated on 7 April 2005, paras. 309-311; WTO, European Communities-Measures Affecting the Approval and Marketing of Biotech Products, WT/DS291/R, WT/DS292/R, and WT/DS293/R, circulated on 29 September 2006, para. 7.1423.
16 UNCTAD-ICTSD Project on IPRs and Sustainable Development, Resource Book on TRIPS and Development, Cambridge University Press (2005), at 561-562.
17 WTO, the Report of the Appellate Body, Canada-The term of Patent Protection, WT/DS170/AB/R, circulated on 18 September 2000.
18 WTO, the Appellate Body Report, Canada-The term of Patent Protection, WT/DS170/AB/R, circulated on 18 September 2000, paras. 6.117-6.118.
19 Article 42 contains certain principles aiming at ensuring due process for ‘right holders’. In US-Section 211 Appropriations Act (US-Havana Club), the Appellate Body considered that the term ‘right holders’ included not only persons who had been established as owners of rights, but also persons who claimed to have legal standing to assert rights. See WTO Panel Report, United States-Section 211 Omnibus Appropriations Acts of 1988 (US- Havana Club), WT/DS176/R, circulated on 6 August 2001, para. 217.
20 This provision was interpreted in the framework of the WTO Dispute Settlement Mechanism, see: WTO, the Panel Report, India-Patents (EC), WT/DS79/R, circulated on 24 August 1998.
21 Article 3.2 of the WTO Understanding on Rules and Procedures Governing the Settlement of Disputes (words omitted and added).