TRIPS 2.0 Flashcards

Question

Copyright:NT, Automatic & Independence of Protection

Answer 1

National Treatment: No discrimination between nationals and foreigners Automatic protection: Protection should not be made subject to any formality of registration, deposit or the like. Independence of Protection: Enjoyment and exercise of rights granted is independent of the existence of protection in the country of origin

Answer 2

What IS protected? Art. 9(2) TRIPS and Article 2 Berne Convention All forms of “expressions ” – Every production in the literary, scientific and artistic domain, whatever the mode or form of its expression Article 10 TRIPS Computer programs - Source or object code Compilations of data - Machine-readable or other form which by reason of selection or arrangement Involve intellectual creation

Answer 3

What IS NOT protected? ``` Article 9(2) TRIPS Ideas, procedures, methods of operation or mathematical concepts - ```

Answer 4

Berne Convention: Right of translation Right of reproduction Right of public performance, including communication to public Right of broadcasting, including communication to public Right of public recitation Right of adaptation, arrangement and other alteration

Answer 5

Berne Convention Reproduction in special cases Quotations and use of works by way of illustration for teaching purposes Reproduction of newspapers to report current events Ephemeral recordings TRIPS Agreement, Art. 13: Limitations/Exceptions to exclusive rights confined to Special cases which Do not conflict with normal exploitation Do not unreasonably prejudice legitimate interests of right holder

Answer 6

Berne Convention, Art. 7 Life of author + 50 years after death TRIPS Agreement, Art. 12: If term of protection calculated on basis OTHER than life of natural person >= 50 years from end of calendar year of authorised publication if no authorised publication within 50 years from making of work, 50 years from end of calendar year of making

Answer 7

Art 14. 1 TRIPS Agreement Prevent unauthorised broadcasting and communication to public of performance Prevent unauthorised fixation Prevent reproduction of fixation

Answer 8

``` Producers of Phonograms Broadcasters Right to prohibit Fixation Reproduction of fixations Rebroadcasting ```

Answer 9

Art. 14.6 TRIPS Agreement Refers to Rome Convention: Private Use Short excerpts for reporting current events Ephemeral fixation by broadcasting organisations for its own broadcasts Teaching or scientific research

Answer 10

Art. 14.5 TRIPS Agreement For Performers and Phonogram producers: >= 50 years from end of calendar year in which: Fixation was made OR Performance took place For Broadcasting Organizations: >= 20 years from end of calendar year in which broadcast took place

Answer 11

Refer to Paris Convention (1967) including Articles 4 : Priority 5. C: Use 6bis: Well-known Marks 6quinquies: Registration & eligibility for protection in countries other than country of origin 6sexies: Protection of service marks 7: Nature of goods not obstacle to registration 7bis: Registration of collective marks

Answer 12

Article 15 : SHALL obligation Definition: Sign or combination of signs Capable of distinguishing the goods or services of one undertaking from those of other undertakings Shall be capable of constituting a TM Such signs shall be eligible for registration as TMs Factors relevant to criterion of "distinctiveness"

Answer 13

Art. 15(2) – other grounds Distinctiveness is the most important factor regarding TM registrability, but Art. 15(2) of TRIPs, Members not prevented from denying registrations of TMs on other grounds (eg against morality/public order (my own example), provided they do not derogate from provisions of Paris Convention.

Answer 14

Illustrative list of signs capable of constituting a TM Inclusive List: Personal names e.g. Letters e.g. Numerals Figurative elements Combinations of colours

Answer 15

Additional Requirements for Registration Art. 15.1 : MAY provision Where signs are not inherently capable of such distinction, registrability may be made dependent on distinctiveness acquired through use Members may require, as a condition of registration, that signs be visually perceptible. Art. 15.3: MAY provision Where registrability is made dependent on use, actual use of a trademark shall not be a condition for filing an application for registration Note that Service marks must be protected in same way as marks distinguishing goods

Answer 16

Article 16.1: What can a TM owner do? Prevent 3rd parties Using In course of trade Identical/similar signs For goods/services Identical/similar to registered trademark Likelihood of confusion Likelihood of confusion PRESUMED in case of identical sign for idential goods/services

Answer 17

Article 17 Limited exceptions to exclusive rights such as: Fair use of descriptive terms Take account of legitimate interests of: Owner 3rd Parties

Answer 18

Article 19 If use is required to maintain registration, cancellation cannot take place before three years of uninterrupted non-use Circumstances beyond control of owner recognised as legitimate, e.g. import or other government restrictions Art 20: Use of the trademark shall not be unjustifiably encumbered by special requirements, such as use with another trademark, in special form, or in a manner detrimental to its capability of being distinguished from other goods or services

Answer 19

Article 18 Initial registration and each renewal: >= 7 years Renewable indefinitely

Answer 20

``` Article 22.1 Definition: Indication Identify a good as originating in Member's territory Region or locality in that territory Quality, reputation or other characteristic of good Essentially attributable to its geographical origin ```

Answer 21

Relatively wide definition Reflected in great majority of WTO Members’ laws Only goods

Answer 22

Article 22.2(a): Applies to ALL goods and is a SHALL provision Prevent use of any means In designation or presentation of a good Indicates/suggests Good in question originates in a geographical area Other than true place of origin Manner which misleads the public as to geographical origin of the good

Answer 23

Article 22.2(b): Applies to ALL goods and is a SHALL provision Prevent any use Constitutes an “act of unfair competition” under Article 10bis Paris Convention (1967): “Act of competition contrary to honest practices in industrial or commercial matters”

Answer 24

Article 23: Additional Protection ONLY for wines and spirits

Answer 25

Article 24: 24. 4: Continuous use 24. 5: Prior trademark rights 24. 6: Generic terms 24. 8: Use of person’s name or name of person’s predecessor in business 24. 9: No/cessation of protection in country of origin OR fallen into disuse

Answer 26

Article 23.3 & 4: Facilitate protection of GIs for wines Art. 23.4: Establishment of a multilateral system of notification and registration of Geographical Indications for wines Eligible for protection in participating Members

Answer 27

Article 25.1: NO definition BUT Members SHALL provide protection: “Independently created industrial designs” Members MAY provide that NO protection: Designs dictated essentially by technical OR functional considerations

Answer 28

Article 25.1: Independently Created New or Original Significantly differ from known designs or combinations of known designs

Answer 29

Article 25.2: Requirements for protecting textile designs Shall not unreasonably impair opportunity to seek and obtain protection Industrial design law OR copyright law

Answer 30

Article 26.1: ``` Right to prevent 3rd parties from Making Selling Importing Articles embodying protected design Copy/substantially a copy of protected design For commercial purposes ```

Answer 31

Article 26.2 Limited exceptions to exclusive rights Do not unreasonably conflict with the normal exploitation Do not unreasonably prejudice legitimate interests of Owner Taking into account legitimate interests of third parties

Answer 32

Article 26.3 at least 10 years

Answer 33

Article 35: Layout-designs (topographies) of integrated circuits In accordance with Articles 2 - 7 (except Article 6(3)), Article 12 and Article 16(3) of IPIC AND to comply with additional provisions in the TRIPS Agreement

Answer 34

Article 38 - at least 10 years from Date of filing of an application for registration OR First commercial exploitation

Answer 35

Article 27.1: Members must make “patents“ available Patents must be availabe and patent rights enjoyable without discrimination as to: place of invention field of technology whether products are imported or locally produced

Answer 36

Article 27 defines “patentable subject-matter“ as: Any inventions Whether products or processes In all fields of technology

Answer 37

Article 27.1 specifies the conditions for patentability: New (i.e. novelty) Involve an inventive step (non-obvious) Capable of industrial application (useful)

Answer 38

Article 27.2: Ordre Public or Morality Inventions may be excluded from patentability if: prevention of commercial exploitation of invention is necessary within Member´s territory to protect ordre public or morality Including to: protect human, animal or plant life or health avoid serious prejudice to the environment

Answer 39

Article 27.3 (b): Other Members may exclude from patentability: plants and animals and biological process May not exclude micro-organisms such as bacteria, yeast etc. May not exclude non-biological and microbiological processes: for producing plants or animals resulting in useful substances etc.

Answer 40

``` Debate spawned by Article 27.3(b): Biodiversity Traditional knowledge Farmers´ rights Recent progress in biotechnology and genetic engineering has raised many issues including whether compensation should be provided to traditional communities when inventions draw on knowledge existing in these communities. For centuries, parts of plants (roots, barks, leaves, flowers and fruits) have been used in some traditional communities to treat certain sicknesses such as malaria and arthritis, etc. ```

Answer 41

Para 12 mandates examination of: Relationship between the TRIPS Agreement and the CBD Traditional knowledge Other new developments raised under TRIPS Article 71.1 Para 12 also states that: "In undertaking this work, the TRIPS Council shall be guided by the objectives and principles set out in Articles 7 and 8 of the TRIPS Agreement and shall take fully into account the development dimension."

Answer 42

Para 4 of Doha Ministerial Declaration on the TRIPS Agreement and Public Health: "We agree that the TRIPS Agreement does not and should not prevent Members from taking measures to protect public health. Accordingly, while reiterating our commitment to the TRIPS Agreement, we affirm that the Agreement can and should be interpreted and implemented in a manner supportive of WTO Members' right to protect public health and, in particular, to promote access to medicines for all."

Answer 43

A Proposal received from a group of developing countries stresses the need to modify the TRIPS Agmt, as it contains no provisions to prevent biopiracy (illegal access and use) or ensure prior informed consent and the fair and equitable sharing of benefits.

Answer 44

Proposal that applicants for patents should be able to disclose source of origin of the biological resource & associated traditional knowledge; and evidence of prior informed consent and benefit-sharing. Developed countries, particularly EU, US & Japan opposed amendment of TRIPS Agmt as, in their view, there is no conflict between CBD and TRIPS. It is the view of the US that the disclosure requirements being demanded by developing countries would be incompatible with the TRIPS Agmt, as it would add a new condition which is not specified in the Agreement.

Answer 45

Article 28:"Rights Conferred" Products: to prevent third parties not having the owner´s consent from the acts of making, using, offering for sale, selling, or importing for these purposes that product; Processes: to prevent third parties not having the owner´s consent from the acts of using the process, and from the acts of using, offering for sale, selling, or importing for these purposes at least the product obtained directly by that process.

Answer 46

Nature of exclusive rights NEGATIVE right of the patentee to PREVENT third parties from engaging in acts without patent-holder´s authorization The patent-holder does NOT have a right to do anything he or she wants in relation to the patent!

Answer 47

Article 29: Conditions on patent applications Members shall require patent applicants to disclose invention: manner sufficiently clear and complete for invention to be carried out by man skilled in the art AND Members may require patent applicants to indicate: Best mode for carrying out the invention known to inventor

Answer 48

Article 30: Exceptions to Rights Conferred Members may provide limited exceptions to exclusive rights Exceptions cannot unreasonably conflict with normal exploitation of patent do not unreasonably prejudice the legitimate interests of the patent owner taking account of the legitimate interests of third parties.

Answer 49

Article 31: Other Use Without Authorization of the Right Holder - Compulsory Licensing Without discrimination Applications to be considered on their individual merits First, an unsuccessful attempt to reach agreement... Scope and duration to be limited to purposes for which granted Licences to be non-exclusive Predominantly for supply of domestic market (F) Right holder: adequate remuneration Decisions on grant and remuneration to be subject to judicial or other independent review

Answer 50

Is addional flexibility made available to Members Has to be seen in broader context, as part of wider national/int’l action (Doha Declaration) Only applies to narrowly defined situations Facilitates imports of medicines produced under CL elsewhere Is primarily not about local production

Answer 51

Is about addressing a HEALTH problem in the importing Member And a LEGAL problem in the exporting Member

Answer 52

Amendment to TRIPS approved by WTO Members on Dec. 6, 2005. Makes permanent a decision (“waiver”) on patents and public health 1st adopted in 2003 Makes it easier for poorer countries to obtain cheaper generics of patented medicines Enters into force when two-thirds accept. Set themselves until December 1, 2007 for that

Answer 53

In December 2007, extended to Dec. 31, 2009, then to Dec. 2011 In Nov 2011, extended again to Dec. 2013, then to Dec. 2015 Again extended to Dec. 2017 Entered into force January 2017 As at March 2018, applies to 125 WTO Members Nov. 30, 2017, GC extended to Dec. 31, 2019

Answer 54

Two types of “Enforcement” available under TRIPs National procedures and remedies for effective enforcement of IPRs (“Enforcement”) Mechanism for settlement of disputes between WTO Members about compliance with TRIPS obligations (“Dispute settlement”)

Answer 55

Five sections (1) General obligations; (2) Civil and administrative procedures and remedies; (3) Provisional measures; (4) Border Measures; and (5) Criminal procedures Two main objectives: To permit effective action against IPR infringement including expeditious remedies to prevent infringement deterrent remedies To avoid creation of barriers to legitimate trade and to provide for safeguards against abuse of procedures

Answer 56

General obligations Members obliged to have procedures that permit effective action against infringement, but should ensure that such procedures do not impede legitimate trade They must meet basic requirements of due process, such as being fair and equitable They should not be unduly complicated or costly, nor operating without unreasonable time-limits or delays Members must provide for judicial review

Answer 57

Civil judicial procedures to be made available to rights owners to enforce their legitimate rights Requiring the opposing party to produce relevant evidence Injunctions to prevent infringement of rights Damages to be awarded against infringers to compensate for injury as well as legal costs Forfeiture of infringing goods, and of materials and instruments used to produce them, and to their disposal or destruction

Answer 58

Judicial authorities should be able to order prompt and effective judicial measures to prevent: any intellectual property right being infringed the preservation of evidence relating to the alleged infringement Under certain circumstances (irreparable damage to the interests of the rights holder, the imminent destruction of evidence), measures could be taken without a prior hearing of the views of the infringer Prompt notice of action to be given thereafter to the infringer The revocation of the provisional measures if action not commenced by the rights owner at the request of the infringer Payment of compensation when provisional measures are revoked or no infringement found

Answer 59

Rights owners must be capable of obtaining the cooperation of customs authorities to suspend release of infringing goods into free circulation Application must be in writing and prima facie evidence of infringement provided to customs. Information about the subject goods to permit identification must also be provided Customs must inform the right-holder if application has been accepted and how long the measures will be taken Remedies should include destruction or disposal of the infringing goods in a way that avoids harm to the right-holder, e.g., goods may not be re-exported unaltered De minimis provision Right-owner may be required to lodge security and provide compensation when infringement is not found Alleged infringers to be promptly informed of the decision to suspend circulation of goods and provision to be made for the review of the decision Goods to be released if no follow-up action taken to the original application within 10-20 working days

Answer 60

Criminal procedures and penalties should be available to deal with wilful trademark counterfeiting or copyright piracy on a commercial scale. Remedies should include imprisonment and fines sufficient to provide a deterrent Forfeiture of infringing goods, and of materials and instruments used to produce them, and to their disposal or destruction Note that under Art. 69 of the TRIPS Agreement, contact points are required to be established by Members to exchange information on trade in infringing goods, and generally promote cooperation between customs on trade in counterfeit and pirated goods

Answer 61

1 January 1995: Entry into force 1 January 1996: Developed countries 1 January 2000: Developing countries & Economies in Transition 1 January 2006: Least-developed countries (possibility of extension). For pharmaceutical patents, extended to 2016 (subsequently to 2033). For others, to 2013 June 2013, extended to “July 2021, or until such a date on which they cease to be LDC, whichever is earlier”

TRIPS 2.0 Flashcards

(85 cards)