WTO - Intellectual Property - Overview of TRIPS Agreement
WTO - Intellectual Property - Overview of TRIPS Agreement
WTO - Intellectual Property - Overview of TRIPS Agreement
The areas of intellectual property that it covers are: copyright and related rights
(i.e. the rights of performers, producers of sound recordings and broadcasting CONTENTS:
organizations); trademarks including service marks; geographical indications > General provisions
including appellations of origin; industrial designs; patents including the > Standards of
protection of new varieties of plants; the layout-designs of integrated circuits; protection
and undisclosed information including trade secrets and test data. > Copyright
The three main features of the Agreement are: > Related rights
> Trademarks
A Standards. In respect of each of the main areas of intellectual property covered by the
TRIPS Agreement, the Agreement sets out the minimum standards of protection to be
> Geographical
provided by each Member. Each of the main elements of protection is defined, namely indications
the subject-matter to be protected, the rights to be conferred and permissible > Industrial designs
exceptions to those rights, and the minimum duration of protection. The Agreement sets > Patents
these standards by requiring, first, that the substantive obligations of the main > Integrated circuits
conventions of the WIPO, the Paris Convention for the Protection of Industrial Property > Undisclosed
(Paris Convention) and the Berne Convention for the Protection of Literary and Artistic information
Works (Berne Convention) in their most recent versions, must be complied with. With the > Anti-competitive
exception of the provisions of the Berne Convention on moral rights, all the main licences
substantive provisions of these conventions are incorporated by reference and thus
become obligations under the TRIPS Agreement between TRIPS Member countries. The > Enforcement
relevant provisions are to be found in Articles 2.1 and 9.1 of the TRIPS Agreement, which (intel2b_e.htm#enforceme
relate, respectively, to the Paris Convention and to the Berne Convention. Secondly, the
nt)
TRIPS Agreement adds a substantial number of additional obligations on matters where
> General obligations
the pre-existing conventions are silent or were seen as being inadequate. The TRIPS
(intel2b_e.htm#generalobl
Agreement is thus sometimes referred to as a Berne and Paris-plus agreement.
igs)
A Enforcement. The second main set of provisions deals with domestic procedures and > Procedures and
remedies for the enforcement of intellectual property rights. The Agreement lays down remedies
certain general principles applicable to all IPR enforcement procedures. In addition, it (intel2b_e.htm#civiland)
contains provisions on civil and administrative procedures and remedies, provisional > Provisional measures
measures, special requirements related to border measures and criminal procedures, (intel2b_e.htm#provisional
which specify, in a certain amount of detail, the procedures and remedies that must be )
available so that right holders can effectively enforce their rights. > Border measures
A Dispute settlement. The Agreement makes disputes between WTO Members about the (intel2b_e.htm#specialreq
respect of the TRIPS obligations subject to the WTO's dispute settlement procedures. uire)
> Criminal procedures
In addition the Agreement provides for certain basic principles, such as national and most- (intel2b_e.htm#criminal)
favoured-nation treatment, and some general rules to ensure that procedural difficulties in
acquiring or maintaining IPRs do not nullify the substantive benefits that should flow from > Other provisions
the Agreement. The obligations under the Agreement will apply equally to all Member (intel2c_e.htm#otherprovi
countries, but developing countries will have a longer period to phase them in. Special sions)
transition arrangements operate in the situation where a developing country does not
> Acquiring and
presently provide product patent protection in the area of pharmaceuticals.
maintaining rights
The TRIPS Agreement is a minimum standards agreement, which allows Members to provide (intel2c_e.htm#aquisition)
more extensive protection of intellectual property if they so wish. Members are left free to > Transitional
determine the appropriate method of implementing the provisions of the Agreement within arrangements
their own legal system and practice. (intel2c_e.htm#transitional
)
> Protecting existing
Certain general provisions matter
(intel2c_e.htm#protection
As in the main pre-existing intellectual property conventions, the basic obligation on each
ofexisting)
Member country is to accord the treatment in regard to the protection of intellectual
property provided for under the Agreement to the persons of other Members. Article 1.3
defines who these persons are. These persons are referred to as “nationals” but include
persons, natural or legal, who have a close attachment to other Members without
necessarily being nationals. The criteria for determining which persons must thus benefit
from the treatment provided for under the Agreement are those laid down for this purpose
in the main pre-existing intellectual property conventions of WIPO, applied of course with
respect to all WTO Members whether or not they are party to those conventions. These
conventions are the Paris Convention, the Berne Convention, International Convention for
the Protection of Performers, Producers of Phonograms and Broadcasting Organizations
(Rome Convention), and the Treaty on Intellectual Property in Respect of Integrated Circuits
(IPIC Treaty).
The general goals of the TRIPS Agreement are contained in the Preamble of the Agreement,
which reproduces the basic Uruguay Round negotiating objectives established in the TRIPS
area by the 1986 Punta del Este Declaration and the 1988/89 Mid-Term Review. These
objectives include the reduction of distortions and impediments to international trade,
promotion of effective and adequate protection of intellectual property rights, and ensuring
that measures and procedures to enforce intellectual property rights do not themselves
become barriers to legitimate trade. These objectives should be read in conjunction with
Article 7, entitled “Objectives”, according to which the protection and enforcement of
intellectual property rights should contribute to the promotion of technological innovation
and to the transfer and dissemination of technology, to the mutual advantage of producers
and users of technological knowledge and in a manner conducive to social and economic
welfare, and to a balance of rights and obligations. Article 8, entitled “Principles”, recognizes
the rights of Members to adopt measures for public health and other public interest reasons
and to prevent the abuse of intellectual property rights, provided that such measures are
consistent with the provisions of the TRIPS Agreement.
During the Uruguay Round negotiations, it was recognized that the Berne Convention
already, for the most part, provided adequate basic standards of copyright protection. Thus
it was agreed that the point of departure should be the existing level of protection under the
latest Act, the Paris Act of 1971, of that Convention. The point of departure is expressed in
Article 9.1 under which Members are obliged to comply with the substantive provisions of
the Paris Act of 1971 of the Berne Convention, i.e. Articles 1 through 21 of the Berne
Convention (1971) and the Appendix thereto. However, Members do not have rights or
obligations under the TRIPS Agreement in respect of the rights conferred under Article 6bis
of that Convention, i.e. the moral rights (the right to claim authorship and to object to any
derogatory action in relation to a work, which would be prejudicial to the author's honour or
reputation), or of the rights derived therefrom. The provisions of the Berne Convention
referred to deal with questions such as subject-matter to be protected, minimum term of
protection, and rights to be conferred and permissible limitations to those rights. The
Appendix allows developing countries, under certain conditions, to make some limitations to
the right of translation and the right of reproduction.
In addition to requiring compliance with the basic standards of the Berne Convention, the
TRIPS Agreement clarifies and adds certain specific points.
Article 9.2 confirms that copyright protection shall extend to expressions and not to ideas,
procedures, methods of operation or mathematical concepts as such.
Article 10.1 provides that computer programs, whether in source or object code, shall be
protected as literary works under the Berne Convention (1971). This provision confirms that
computer programs must be protected under copyright and that those provisions of the
Berne Convention that apply to literary works shall be applied also to them. It confirms
further, that the form in which a program is, whether in source or object code, does not
affect the protection. The obligation to protect computer programs as literary works means
e.g. that only those limitations that are applicable to literary works may be applied to
computer programs. It also confirms that the general term of protection of 50 years applies
to computer programs. Possible shorter terms applicable to photographic works and works
of applied art may not be applied.
Article 10.2 clarifies that 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. Databases are eligible for copyright protection provided that
they by reason of the selection or arrangement of their contents constitute intellectual
creations. The provision also confirms that databases have to be protected regardless of
which form they are in, whether machine readable or other form. Furthermore, the provision
clarifies that such protection shall not extend to the data or material itself, and that it shall be
without prejudice to any copyright subsisting in the data or material itself.
Article 11 provides that authors shall have in respect of at least computer programs 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. With respect
to cinematographic works, the exclusive rental right is subject to the so-called impairment
test: a Member is excepted from the obligation unless such rental has led to widespread
https://www.wto.org/english/tratop_e/trips_e/intel2_e.htm#:~:text=The TRIPS Agreement requires Member,novelty%2C inventiveness and industri… 3/9
8/29/2020 WTO | intellectual property - overview of TRIPS Agreement
copying of such works which is materially impairing the exclusive right of reproduction
conferred in that Member on authors and their successors in title. In respect of computer
programs, the obligation does not apply to rentals where the program itself is not the
essential object of the rental.
According to the general rule contained in Article 7(1) of the Berne Convention as
incorporated into the TRIPS Agreement, the term of protection shall be the life of the author
and 50 years after his death. Paragraphs 2 through 4 of that Article specifically allow shorter
terms in certain cases. These provisions are supplemented by Article 12 of the TRIPS
Agreement, which provides that whenever the term of protection of a work, other than 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 50 years from the end of the calendar year of
authorized publication, or, failing such authorized publication within 50 years from the
making of the work, 50 years from the end of the calendar year of making.
Related rights
Broadcasting organizations shall have, in accordance with Article 14.3, 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. However, it is not necessary to grant such rights to broadcasting organizations,
if owners of copyright in the subject-matter of broadcasts are provided with the possibility
of preventing these acts, subject to the provisions of the Berne Convention.
The term of protection is at least 50 years for performers and producers of phonograms,
and 20 years for broadcasting organizations (Article 14.5).
Article 14.6 provides that any Member may, in relation to the protection of performers,
producers of phonograms and broadcasting organizations, provide for conditions,
limitations, exceptions and reservations to the extent permitted by the Rome Convention.
Trademarks
The basic rule contained in Article 15 is that any sign, or any combination of signs, capable of
distinguishing the goods and services of one undertaking from those of other undertakings,
must be eligible for registration as a trademark, provided that it is visually perceptible. Such
signs, in particular words including personal names, letters, numerals, figurative elements
and combinations of colours as well as any combination of such signs, must be eligible for
registration as trademarks.
Where signs are not inherently capable of distinguishing the relevant goods or services,
Member countries are allowed to require, as an additional condition for eligibility for
registration as a trademark, that distinctiveness has been acquired through use. Members are
free to determine whether to allow the registration of signs that are not visually perceptible
(e.g. sound or smell marks).
Members may make registrability depend on use. However, actual use of a trademark shall
not be permitted as a condition for filing an application for registration, and at least three
years must have passed after that filing date before failure to realize an intent to use is
allowed as the ground for refusing the application (Article 14.3).
The Agreement requires service marks to be protected in the same way as marks
distinguishing goods (see e.g. Articles 15.1, 16.2 and 62.3).
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 TRIPS Agreement contains certain provisions on well-known marks, which supplement
the protection required by Article 6bis of the Paris Convention, as incorporated by reference
into the TRIPS Agreement, which obliges Members to refuse or to cancel the registration,
and to prohibit the use of a mark conflicting with a mark which is well known. First, the
provisions of that Article must be applied also to services. Second, it is required that
knowledge in the relevant sector of the public acquired not only as a result of the use of the
mark but also by other means, including as a result of its promotion, be taken into account.
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 (Articles 16.2 and 3).
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 (Article 17).
Initial registration, and each renewal of registration, of a trademark shall be for a term of no
less than seven years. The registration of a trademark shall be renewable indefinitely
(Article 18).
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
It is further required that use of the trademark in the course of trade shall not be unjustifiably
encumbered by special requirements, such as use with another trademark, use in a special
form, or use in a manner detrimental to its capability to distinguish the goods or services
(Article 20).
Geographical indications
Geographical indications are defined, for the purposes of the Agreement, as 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). Thus, this definition specifies
that the quality, reputation or other characteristics of a good can each be a sufficient basis
for eligibility as a geographical indication, where they are essentially attributable to the
geographical origin of the good.
In respect of all geographical indications, interested parties must have legal means to
prevent use of indications which mislead the public as to the geographical origin of the
good, and use which constitutes an act of unfair competition within the meaning of
Article 10bis of the Paris Convention (Article 22.2).
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 (Article 22.3).
Article 23 provides that interested parties 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 registration of a trademark must be provided accordingly.
Industrial designs
Article 25.1 of the TRIPS Agreement obliges Members to provide for the protection of
independently created industrial designs that are new or original. Members may provide that
designs are not new or original if they do not significantly differ from known designs or
combinations of known design features. Members may provide that such protection shall
not extend to designs dictated essentially by technical or functional considerations.
Article 25.2 contains a special provision aimed at taking into account the short life cycle and
sheer number of new designs in the textile sector: requirements for securing protection of
such 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 26.1 requires Members to grant 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.
Article 26.2 allows Members 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.
The duration of protection available shall amount to at least 10 years (Article 26.3). The
wording “amount to” allows the term to be divided into, for example, two periods of five
years.
Patents
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. It is also
required that patents be available and patent rights enjoyable without discrimination as to
the place of invention and whether products are imported or locally produced (Article 27.1).
There are three permissible exceptions to the basic rule on patentability. One 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. The use
of this exception is subject to the condition that the commercial exploitation of the
invention must also be prevented and this prevention must be necessary for the protection
of ordre public or morality (Article 27.2).
The second exception is that Members may exclude from patentability diagnostic,
therapeutic and surgical methods for the treatment of humans or animals (Article 27.3(a)).
The third is that 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.
Moreover, the whole provision is subject to review four years after entry into force of the
Agreement (Article 27.3(b)).
The exclusive rights that must be conferred by a product patent are the ones 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).
Members may provide limited exceptions to the exclusive rights conferred by a patent,
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).
The term of protection available shall not end before the expiration of a period of 20 years
counted from the filing date (Article 33).
Members shall require that an applicant for a patent shall disclose the invention in a manner
sufficiently clear and complete for the invention to be carried out by a person skilled in the
art and may require the applicant to indicate the best mode for carrying out the invention
known to the inventor at the filing date or, where priority is claimed, at the priority date of
the application (Article 29.1).
If the subject-matter of a patent is a process for obtaining a product, the judicial authorities
shall have the authority to order the defendant to prove that the process to obtain an
identical product is different from the patented process, where certain conditions indicating
a likelihood that the protected process was used are met (Article 34).
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. The conditions are mainly contained in Article 31. These include the
obligation, as a general rule, to grant such licences only if an unsuccessful attempt has been
made to acquire a voluntary licence on reasonable terms and conditions within a reasonable
period of time; the requirement to pay adequate remuneration in the circumstances of each
case, taking into account the economic value of the licence; and a requirement that
decisions be subject to judicial or other independent review by a distinct higher authority.
Certain of these conditions are relaxed where compulsory licences are employed to remedy
practices that have been established as anticompetitive by a legal process. These conditions
should be read together with the related provisions of Article 27.1, which require that patent
rights shall be enjoyable without discrimination as to the field of technology, and whether
products are imported or locally produced.
Article 35 of the TRIPS Agreement requires Member countries to protect the layout-designs
of integrated circuits in accordance with the provisions of the IPIC Treaty (the Treaty on
Intellectual Property in Respect of Integrated Circuits), negotiated under the auspices of
WIPO in 1989. These provisions 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 disclosure. An “integrated circuit” means a product, in
its final form or an intermediate form, in which the elements, at least one of which is an
active element, and some or all of the interconnections are integrally formed in and/or on a
piece of material and which is intended to perform an electronic function. A “layout-design
(topography)” is defined as the three-dimensional disposition, however expressed, of the
elements, at least one of which is an active element, and of some or all of the
interconnections of an integrated circuit, or such a three-dimensional disposition prepared
for an integrated circuit intended for manufacture. The obligation to protect layout-designs
applies to such layout-designs that are original in the sense that they are the result of their
creators' own intellectual effort and are not commonplace among creators of layout-
designs and manufacturers of integrated circuits at the time of their creation. The exclusive
rights include the right of reproduction and the right of importation, sale and other
distribution for commercial purposes. Certain limitations to these rights are provided for.
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 which use new chemical entities. In such a
situation the Member government concerned must protect the data against unfair
commercial use. In addition, Members must 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.
Article 40 of the TRIPS Agreement recognizes that some licensing practices or conditions
pertaining to intellectual property rights which restrain competition may have adverse
effects on trade and may impede the transfer and dissemination of technology (paragraph 1).
Member countries may adopt, consistently with the other provisions of the Agreement,
appropriate measures to prevent or control practices in the licensing of intellectual property
rights which are abusive and anti-competitive (paragraph 2). The Agreement provides for a
mechanism whereby a country seeking to take action against such practices involving the
companies of another Member country can enter into consultations with that other Member
and exchange publicly available non-confidential information of relevance to the matter in
question and of other information available to that Member, subject to domestic law and to
the conclusion of mutually satisfactory agreements concerning the safeguarding of its
confidentiality by the requesting Member (paragraph 3). Similarly, a country whose
companies are subject to such action in another Member can enter into consultations with
that Member (paragraph 4).