Agreement on Trade Related Aspects of Intellectual Property Rights, Including Trade in Counterfeit Goods Back to top
The agreement recognises that widely varying standards in the protection and
enforcement of intellectual property rights and the lack of a multilateral framework
of principles, rules and disciplines dealing with international trade in counterfeit
goods have been a growing source of tension in international economic relations.
Rules and disciplines were needed to cope with these tensions. To that end, the
agreement addresses the applicability of basic GATT principles and those of
relevant international intellectual property agreements; the provision of adequate
intellectual property rights; the provision of effective enforcement measures for
those rights; multilateral dispute settlement; and transitional arrangements.
Part I of the agreement sets out general provisions and basic principles, notably a
national-treatment commitment under which the nationals of other parties must be
given treatment no less favourable than that accorded to a party's own nationals
with regard to the protection of intellectual property. It also contains a
most-favoured-nation clause, a novelty in an international intellectual property
agreement, under which any advantage a party gives to the nationals of another
country must be extended immediately and unconditionally to the nationals of all
other parties, even if such treatment is more favourable than that which it gives to
its own nationals.
Part II addresses each intellectual property right in succession. With respect to
copyright, parties are required to comply with the substantive provisions of the
Berne Convention for the protection of literary and artistic works, in its latest
version (Paris 1971), though they will not be obliged to protect moral rights as
stipulated in Article 6bis of that Convention. It ensures that computer programs
will be protected as literary works under the Berne Convention and lays down on
what basis data bases should be protected by copyright. Important additions to
existing international rules in the area of copyright and related rights are the
provisions on rental rights. The draft requires authors of computer programmes
and producers of sound recordings to be given the right to authorize or prohibit
the commercial rental of their works to the public. A similar exclusive right applies
to films where commercial rental has led to widespread copying which is materially
impairing the right of reproduction. The draft also requires performers to be given
protection from unauthorized recording and broadcast of live performances
(bootlegging). The protection for performers and producers of sound recordings
would be for no less than 50 years. Broadcasting organizations would have control
over the use that can be made of broadcast signals without their authorization.
This right would last for at least 20 years.
With respect to trademarks and service marks, the agreement defines what types of
signs must be eligible for protection as a trademark or service mark and what the
minimum rights conferred on their owners must be. Marks that have become
well-known in a particular country shall enjoy additional protection. In addition,
the agreement lays down a number of obligations with regard to the use of
trademarks and service marks, their term of protection, and their licensing or
assignment. For example, requirements that foreign marks be used in conjunction
with local marks would, as a general rule, be prohibited.
In respect of geographical indications, the agreement lays down that all parties
must provide means to prevent the use of any indication which misleads the
consumer as to the origin of goods, and any use which would constitute an act of
unfair competition. A higher level of protection is provided for geographical
indications for wines and spirits, which are protected even where there is no
danger of the public's being misled as to the true origin. Exceptions are allowed
for names that have already become generic terms, but any country using such an
exception must be willing to negotiate with a view to protecting the geographical
indications in question. Furthermore, provision is made for further negotiations to
establish a multilateral system of notification and registration of geographical
indications for wines.
Industrial designs are also protected under the agreement for a period of 10 years.
Owners of protected designs would be able to prevent the manufacture, sale or
importation of articles bearing or embodying a design which is a copy of the
protected design.
As regards patents, there is a general obligation to comply with the substantive
provisions of the Paris Convention (1967). In addition, the agreement requires that
20-year patent protection be available for all inventions, whether of products or
processes, in almost all fields of technology. Inventions may be excluded from
patentability if their commercial exploitation is prohibited for reasons of public
order or morality; otherwise, the permitted exclusions are for diagnostic,
therapeutic and surgical methods, and for plants and (other than microorganisms)
animals and essentially biological processes for the production of plants or animals
(other than microbiological processes). Plant varieties, however, must be protectable
either by patents or by a sui generis system (such as the breeder's rights provided
in a UPOV Convention). Detailed conditions are laid down for compulsory licensing
or governmental use of patents without the authorization of the patent owner.
Rights conferred in respect of patents for processes must extend to the products
directly obtained by the process; under certain conditions alleged infringers may be
ordered by a court to prove that they have not used the patented process.
With respect to the protection of layout designs of integrated circuits, the
agreement requires parties to provide protection on the basis of the Washington
Treaty on Intellectual Property in Respect of Integrated Circuits which was opened
for signature in May 1989, but with a number of additions: protection must be
available for a minimum period of 10 years; the rights must extend to articles
incorporating infringing layout designs; innocent infringers must be allowed to use
or sell stock in hand or ordered before learning of the infringement against a
suitable royalty: and compulsory licensing and government use is only allowed
under a number of strict conditions.
Trade secrets and know-how which have commercial value must be protected
against breach of confidence and other acts contrary to honest commercial
practices. Test data submitted to governments in order to obtain marketing
approval for pharmaceutical or agricultural chemicals must also be protected
against unfair commercial use.
The final section in this part of the agreement concerns anti-competitive practices
in contractual licences. It provides for consultations between governments where
there is reason to believe that licensing practices or conditions pertaining to
intellectual property rights constitute an abuse of these rights and have an adverse
effect on competition. Remedies against such abuses must be consistent with the
other provisions of the agreement.
Part III of the agreement sets out the obligations of member governments to
provide procedures and remedies under their domestic law to ensure that
intellectual property rights can be effectively enforced, by foreign right holders as
well as by their own nationals. Procedures should permit effective action against
infringement of intellectual property rights but should be fair and equitable, not
unnecessarily complicated or costly, and should not entail unreasonable time-limits
or unwarranted delays. They should allow for judicial review of final administrative
decisions. There is no obligation to put in place a judicial system distinct from that
for the enforcement of laws in general, nor to give priority to the enforcement of
intellectual property rights in the allocation of resources or staff.
The civil and administrative procedures and remedies spelled out in the text
include provisions on evidence of proof, injunctions, damages and other remedies
which would include the right of judicial authorities to order the disposal or
destruction of infringing goods. Judicial authorities must also have the authority to
order prompt and effective provisional measures, in particular where any delay is
likely to cause irreparable harm to the right holder, or where evidence is likely to
be destroyed. Further provisions relate to measures to be taken at the border for
the suspension by customs authorities of release, into domestic circulation, of
counterfeit and pirated goods. Finally, parties should provide for criminal
procedures and penalties at least in cases of wilful trademark counterfeiting or
copyright piracy on a commercial scale. Remedies should include imprisonment and
fines sufficient to act as a deterrent.
The agreement would establish a Council for Trade-Related Aspects of Intellectual
Property Rights to monitor the operation of the agreement and governments'
compliance with it. Dispute settlement would take place under the integrated GATT
dispute-settlement procedures as revised in the Uruguay Round.
With respect to the implementation of the agreement, it envisages a one-year
transition period for developed countries to bring their legislation and practices into
conformity. Developing countries and countries in the process of transformation
from a centrally-planned into a market economy would have a five-year transition
period, and least-developed countries 11 years. Developing countries which do not
at present provide product patent protection in an area of technology would have
up to 10 years to introduce such protection. However, in the case of
pharmaceutical and agricultural chemical products, they must accept the filing of
patent applications from the beginning of the transitional period. Though the patent
need not be granted until the end of this period, the novelty of the invention is
preserved as of the date of filing the application. If authorization for the marketing
of the relevant pharmaceutical or agricultural chemical is obtained during the
transitional period, the developing country concerned must offer an exclusive
marketing right for the product for five years, or until a product patent is
granted, whichever is shorter.
Subject to certain exceptions, the general rule is that the obligations in the
agreement would apply to existing intellectual property rights as well as to new
ones.