LAWS90094 International IP Dispute Settlement TAKE-HOME EXAMINATION March 2020
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LAWS90094 International IP Dispute Settlement
TAKE-HOME EXAMINATION
March 2020
QUESTION 1 (compulsory)
The preamble of the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights ('TRIPS Agreement') emphasizes "the importance of reducing tensions by reaching strengthened commitments to resolve disputes on trade-related intellectual property issues through multilateral procedures."
Article 23.1 of the WTO Dispute Settlement Understanding, under the heading 'Strengthening of the Multilateral System', provides:
When Members seek the redress of a violation of obligations or other nullification or impairment of benefits under the covered agreements or an impediment to the attainment of any objective of the covered agreements, they shall have recourse to, and abide by, the rules and procedures of this Understanding.
1. What is the nature of the ensuing commitment by WTO Members to resolve such disputes through multilateral procedures? Why was such a commitment considered necessary?
2. Critically review the experience of WTO members in settling such disputes in the 25 years since the TRIPS Agreement came into force, with reference to at least one decided case. Has the system been effective in settling disputes and reducing tensions?
3. Many bilateral trade agreements provide for their own dispute settlement mechanisms which cover intellectual property standards in those agreements which overlap considerably with the provisions of the TRIPS Agreement. What legal and policy issues does this practice raise?
QUESTION 2
(answer either this question or question 3)
Article 64 of the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), concerning Dispute Settlement, provides that:
1. The provisions of Articles XXII and XXIII of GATT 1994 as elaborated and applied by the Dispute Settlement Understanding shall apply to consultations and the settlement of disputes under this Agreement except as otherwise specifically provided herein.
2. Subparagraphs 1(b) and 1(c) of Article XXIII of GATT 1994 shall not apply to the settlement of disputes under this Agreement for a period of five years from the date of entry into force of the WTO Agreement.
The period referred to in Article 64.2 has since been extended to cover the present time.
The bilateral Japan-Australia Economic Partnership Agreement (JAEPA), which entered into force in January 2015, includes provisions on investment (Chapter 14) and on intellectual property (Chapter 16). Chapter 14 defines the term “investment” as "every kind of asset owned or controlled, directly or indirectly, by an investor, that has the characteristics of an investment, including such characteristics as the commitment of capital or other resources, the expectation of gain or profit, or the assumption of risk." It specifies that the forms that an investment may take include "intellectual property as defined in Article 16.2 (Intellectual Property - Definitions)." Chapter 14 establishes standards, among other things, for "Prohibition of Performance Requirements" (Article 14.9) and for "Expropriation and Compensation" (Article 14.11), in relation to investments covered by the JAEPA.
Both the investment and intellectual property chapters of JAEPA are subject to the dispute settlement provisions set out in Chapter 19 of the Agreement. Article 19.4, setting out the basis for consultations that commence dispute settlement procedures under JAEPA, provides:
1. Either Party may request consultations with the other Party if it considers:
(a) any benefit accruing to it directly or indirectly under this Agreement is being nullified or impaired as a result of:
(i) the application by the other Party of a measure which is inconsistent with this Agreement; or
(ii) the failure of the other Party to carry out its obligations under this Agreement; or
(b) any benefit accruing to it directly or indirectly under Chapter 2 (Trade in Goods), 3 (Rules of Origin), 4 (Customs Procedures), 9 (Trade in Services) or 16 (Intellectual Property) is being nullified or impaired as a result of the application by the other Party of a measure that is not inconsistent with the provisions of those Chapters, provided that the complaining Party presents a detailed justification in support of any complaint relating to that measure.
1. Describe the scope and legal foundation of disputes concerning intellectual property that can be brought
(i) under the WTO TRIPS Agreement and (ii) under the JAEPA
and, on the basis of your description, contrast the application of the two dispute settlement mechanisms to intellectual property issues.
2. Select any decided WTO TRIPS dispute and discuss whether the outcome may have been different if the case was brought under the JAEPA.
3. Comment on the policy implications of the differences between the two dispute settlement mechanisms and discuss which mechanism you find more suited to settling intellectual property disputes in the contemporary economic and political environment.
QUESTION 3
(answer either question 2 or this question)
Propinquity and Proximity are two developing countries, both longstanding members of the WTO, located in the Asian region. Local village enterprises in two regions of Proximity have for many years produced two products, designated by traditional names
o Grattan textiles, a unique style of hand-woven flax linen
o Pelham tea, traditionally made from certain herbs harvested in the Mount Pelham rainforest
The bilateral agreement
Propinquity and Proximity concluded a bilateral trade agreement in 2016 (the Propinquity and Proximity Economic Relations Agreement, or the PAPER Agreement), which has entered into legal force following the necessary domestic procedures.
The PAPER Agreement chapter on intellectual property includes the following provision on the protection of geographical indications ('GIs'):
Article 14.2 If a Party is considering protecting or recognising a geographical indication that Party shall:
(i) publish the geographical indications proposed for protection or recognition; and
(ii) provide procedures for any interested person to object to such protection or recognition and for any such protection or recognition to be refused or otherwise not afforded. The grounds of objection available shall include the following:
… .
(c) the claimed geographical indication is a term customary in the common language as the common name for the good in the Area of the Party.
14.3 If a Party protects or recognises a geographical indication, that Party shall provide procedures for any interested person to seek cancellation or invalidation of such protection or recognition.
14.4 Each Party shall provide that if a protected or recognised geographical indication contains within it a term customary in common language as the common name for a good in the Area of a Party, that protection or recognition shall not prejudice the right of any person to use that term in the Area of that Party.
15.1 Each Party agrees to protect each of the geographical indications listed in Schedule C under its domestic law with immediate effect from the entry into force of this Agreement.
• The 'Area' of the parties is defined as the territory over which their national jurisdiction applies.
• The Agreement defines 'geographical indication' by reference to the definition in Article 22.1 of the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS).
• The list of GIs in Schedule C of the PAPER Agreement includes these two terms, specified as exclusively to be permitted for products originating in Proximity and no other location:
o Grattan, for textile products
o Pelham, for teas
These two GIs are now protected under the domestic law of both countries, following entry into force of the agreement.
Third country
Nimby is another WTO Member which shares a border with Proximity, and shares considerable historical, cultural and social links with that country – what remains of the Mount Pelham rainforest actually spans the border between the two countries.
Nimby also produces the two products identified as 'Grattan' and 'Pelham', and has for many years maintained a low level of trade throughout the region. Nimby views 'Grattan' as a customary term simply describing the traditional method for making the fabric, without any clear geographical reference. It considers 'Pelham' to be a geographical term for the same location on its border with Proximity, with shared traditions.
The Nimby Trade Promotion Authority, acting for cooperative association of traditional producers, applied for the invalidation or cancellation of the two geographical indications in Propinquity, their biggest market:
• citing the procedure mentioned in Article 14.3 of the bilateral Agreement,
• pointing out that these terms had not been published prior to their protection as GIs, in conflict with Article 14.2 of the Agreement, and
• arguing that 'Grattan' was a long-established customary term used in the trade in both countries and that 'Pelham' was a geographical term legitimately used by Nimby.
The application was refused by the Propinquity authorities on the following basis:
As the applicant is not a national of either Proximity or Propinquity, the applicant has no standing as an 'interested person' under the procedure for invalidation or cancellation of protected geographical indications implemented in accordance with Article 14.3 of the PAPER Agreement.
Recent exports of cloth marked as 'Grattan' from Nimby to Propinquity have been seized by Propinquity customs officials at the border. The Propinquity authorities have declared them illegal imports on the basis that the term 'Grattan' is now a protected GI in that territory, despite the long-established past trade. When the Embassy of Nimby in Propinquity submitted a formal complaint to the host Government, it was advised:
The right for continuing use of customary terms provided for in Article 14.4 of the bilateral PAPER Agreement is reserved for nationals of the two Parties to the Agreement and is not extended to nationals of third countries such as Nimby. The Government of Propinquity expresses its openness to enter into bilateral negotiations with the Government of Nimby concerning the status of such terms along with other matters of joint interest.
As Senior Legal Counsel for the Nimby Ministry of Trade, you are required to prepare a legal analysis for Nimby's Trade Minister for a potential response to Propinquity under the WTO dispute settlement mechanism. The brief should address:
(i) The implications for Nimby of the bilateral agreement between Propinquity and Proximity, and its implementation in Propinquity's domestic legal system.
(ii) The potential grounds for complaint relating to the WTO TRIPS Agreement under the WTO Dispute Settlement Mechanism, and the available legal arguments to support such a complaint.
(iii) Possible proposals for the pragmatic resolution of the dispute to be submitted in the course of informal consultations with the Government of Propinquity, making reference to provisions in Articles 23 and 24 of the TRIPS Agreement.
2023-07-13