Flashcards in Intro Deck (39)
protects literary and artistic works (including software)
- protects signs which are capable of distinguishing the goods or services of
one company (from those of other companies)
- √: products, processes, …
- ≠: laws of nature, algorithms, naturally occurring substances
Protects innovative shapes of products
IP similar rights
- Trade secrets
- Image rights
Mission: promote the protection of IP rights worldwide and extend the
benefits of the international IP system to all member States (art. 3 i
Convention establishing WIPO 1967)
- Areas: all IP Rights
• Protecting IP through Services
• Resolving Disputes
• Norm Setting
International intergovernmental organization
- Mission: provide « the common institutional framework for the conduct of
trade relations among its Members » (art. II para. 1 of the Marrakech
Agreement establishing WTO 1994)
- Three areas (regulated by « Multilateral Trade Agreements »)
• Multilateral Agreements on Trade in Goods (Ann.1A)
• General Agreement on Trade in Services (Ann.1B)
• Agreement on Trade-Related Aspects of IP Rights (Ann. 1C)
Law facing the network (internet)
- global use v. local regulation
- new digital assets
New legal appoaches
law is code
- code is law
- law is code
- commons approach vs proprietary approach
Principles of International Intellectual Property Law
I. National treatment
III. Well-known trademark
V. Exception to protection
I. National Treatment
- Works originating in one of the member states must be protected in each
member state in the same way that such state protect the works of their
- Legal basis
• Art. 5 para. 1 BC
• Art. 2 para. 1 PC
• Art. 3 TRIPS
- Most favored nation (MFN)
• MFN and National Treatment : Art. 4 TRIPS
• MFN and Free Trade Agreement: cf. Free Trade Agreement between
Switzerland and China (2013)
- An IPR has only effect in the country where it is registered. Beyond this
country, anyone can use this IPR without authorization
- Legal basis: Art. 5 para. 2 BC; Art. 6 PC (// 4bis PC)
- Reminder: global use v. local regulation
1. Industrial property
Pursuant to Articles 2 and 3 of the Paris Convention, protection is granted in the case of industrial propertyto natural or legal persons who:
* are nationals of a Member;
* are domiciled in a Member; or
* have real and effective industrial or commercial establishments in a Member.
Pursuant to Article 5 of the IPIC Treaty, similar criteria for determining eligible beneficiaries are applied in
relation to layout-designs or integrated circuits.
2. Copyright and related rights
Pursuant to Articles 3 and 4 of the Berne Convention, protection is granted to authors of literary or artistic works who:
* are nationals of a Member;
* have their habitual residence in a Member;
* have their works first (or simultaneously) published in a Member;
* are authors of cinematographic works the maker of which has his headquarters or habitual residence in a Member; or
* are authors of works of architecture erected in a Member or of other artistic works incorporated in a building or other structure located in a Member.
* b) Performers
Pursuant to Article 4 of the Rome Convention, protection is granted to performers whose:
* performance takes place in another Member;
* performance is incorporated in a phonogram as defined below; or
* performance is covered by a broadcast as defined below.
Non-discrimination: NationalTreatment and MFN
These principles can be found in Articles 3 to 5of the Agreement.
Non-discrimination is a fundamental principle of theWTO. The principle of non-discrimination has twocomponents: (i) the national treatment principle; and(ii) the most-favoured nation (MFN) principle.
in the context of TRIPS, the subject of protection is “nationals”,which as mentioned before, include natural and legalpersons – who are the owners of the IPRs.
the MFN treatmentclause forbids discrimination among the nationals ofWTO Members. The MFN principle requires to accord tonations of WTO Members any advantage given tonationals of any other country - Member or not of theWTO.
Copy right till person is alive and 50 years more after the death (in some cases it possible to extend this period).
Trade mark 10 years and can be renewal after
Industrial design: The term of protection under industrial design laws is generally five years, with
the possibility of further periods of renewal up to, in most cases, 15 years.
works from a MS must be protected in each member state in the same that such state protects the works of their own nationals (i.e. equal treatment of nationals and foreigners in all MS) (BC Art 5.1, PC Art 2.1, TRIPS Art 3)
- Exception: term of protection for copyright (BC Art 7.8): no national treatment unless reciprocity
- “Publication” under BC does not take place when interested parties can only take notice of the work; rather, the author must release it for distribution and make it accessible to the public at large (Gold Rush)
- Posting of a photo on an overseas website is not a simultaneous publication in the US that triggers the need to complete a US copyright registration before suing for infringement (Moberg)
An IP right has effect only in the country where it is registered (PC Art 6, BC Art 5.2)
Copyright protection under Art 3 of BC
1. Nationality of author
2. Place of publication of work
3. “Published” works
4. “Simultaneously published” works (Gold Rush case)
EXCEPTIONS TO TERRITORIALITY
Well-known trademark (Art 16.2 TRIPS, PC Art6bis1)
- Definition of a well-known trademark (WIPO Recommendations)
- TRIP TRAP Case
Doctrine of exhaustion achieves an appropriate balance between the interests of the dealer/user and the patent holder (Kodak II)
- To offer consumer protection and facilitate consumer interests and free market for goods while also balancing exploitation rights of the patent holder
- First sale doctrine: exclusive right of the rightholder to the first commercialization and distribution of a good is exhausted once the product is on the market
o Only if by the rightholder or with his/her consent
o Exhausted only in relation to the product, not the IP itself
National exhaustion for PATENTS in Switzerland, Italy, France, and Germany (Kodak II).
International Exhaustion for TRADEMARK in Germany (Kodak II)
EU Regional Exhaustion (Trademark Directive 89/104/ECC Art 7, Copyright Directive 2001/29/ECC Art 4)
- Silhouette case: it’s all EU regional exhaustion. No to Austria wanting to implement international exhaustion. It is not open to MS of the Trademark Directive to provide in their domestic law for international exhaustion in respect of products placed on the market outside the EEA
o Laserdisken: same principle for the Copyright Directive
- Davidoff: the trademark owner can consent to international exhaustion (instead of the usual regional exhaustion in EEA) with an express statement I nteh distribution agreement OR the consent can be implied
- Allposters: even if the copyright of posters has been exhausted by the first sale in the EU with the consent of the copyright owner, the exhaustion does not apply to the modified reproduction of the same image (i.e. no digital exhaustion)
- Copyright: international exhaustion (ATF 124 III 321, JT 1999 I 423, Nintendo)
- Trademark: international exhaustion (ATF 122 III 469, Chanel)
- Patent: regional exhaustion (national in Kodak, Swiss Patent Act Art 9a al 1 – regional now because part of EEA)
o Justified to treat patents differently because protected for only 20 years but high investment
- Complex products with trademark AND patent: apply the national exhaustion regime only if the patented part is the most significant part of the good (Swiss Patent Act Art 9a al 4)
work originating in 1 member state must be protected in each member state the same way that such state protects the work of their own nationals.
art 5 (1) BC
art 2 (1) PC
art 3 TRIPS
protects literary and artistic work
is the VISIBLE sign, protects signs which are capable of distinguishing the goods or services of one company from other companies
is any technical solution to the problem in any field of human activity which is new and it must involve inventive steps and is industrially applicable.
Whatever favor, allowance, considerations, privilege or immunity a member state grants to the national of another country, is immediately and unconditionally accorded to nationals of other member states.
Protects innovative shapes of product
Enforcement of IPRs
without it IP law is useless, no natural protection because of intangible ("неосязаемый", нематериальный, выраженный в правах (об имуществе)
) nature of IPRs
what type of Infringement?
1. classical counterfeiting cases
2. Complex infringement cases
3. Creative uses
What types of enforcement measures?
1. Criminal measures
2. Administrative measures ( border measures)
3. Civil measures ( injunctions, seizure, demages)
art 61 TRIPS
- criminalization limited to TM counterfeiting (= imitation) and copyright piracy (copy)
art 61 TRIPS
1) Remedies available shall include" imprisonment and/or monetary fines sufficient to provide a deterrent effect
2) " in appropriate cases" seizure, forfeiture, destruction of the infringing goods and of any material.
What ( art 51 -60 TRIPS)
Make available procedure that leads to suspension of release by customs authorities.
Mandatory for trademark & copyright
- evidence of prima facie infringement
- detailed description of the goods required