WTO dispute settlement practice relating to the TRIPS Agreement

Journal of International Economic Law

Volumn 2, Issue 2, 1999, Pages 347-384

  Geuze, Matthijs ^a   Wager, Hannu ^b  

^a WORLD TRADE ORGANIZATION   (Switzerland)

^b NONE

Author keywords

[No Author keywords available]

Indexed keywords

EID: 0033457776     PISSN: 13693034     EISSN: None     Source Type: Journal    
DOI: 10.1093/jiel/2.2.347     Document Type: Article

References (103)

1. A comparison between the various areas of the WTO in this respect will not provide a complete picture until all WTO obligations will be fully applicable to all WTO Members as long as transitional periods can be used. Under the TRIPS Agreement, many obligations do not yet apply to developing countries and certain transition economies until 1 January 2000 and to least-developed countries until 1 January 2006.
2. See Table 1: the complaints against Ireland and Greece were also addressed to the European Communities; Japan and India have been the subject of disputes initiated by two different Members on the same matter.
3. See WTO documents under symbol WT/DS50. The documents initiating and completing dispute settlement procedures relating to the provisions of the TRIPS Agreement are circulated both in the IP/D/- and WT/DS/- series of documents. Other documents relating to such disputes are only circulated in the WT/DS/- series of documents, which are referred to in the IP/D/- documents. These documents are available in the WTO Documents On-line database, which can be accessed through the WTO web-site at http://www.wto.org.
4. The term 'mailbox system' is used in the Panel Report as shorthand for the means to be put in place which allow for the filing of patent applications for pharmaceutical and agricultural chemical products as required by Article 70.8(a) (Panel Report WT/DS/50/R, fn. 4).
5. There is not a definition of the term 'exclusive marketing rights' in the TRIPS Agreement. One of the US claims concerned what rights Article 70.9 required to be made available in respect of pharmaceutical and agricultural chemical products which are the subject of a 'mailbox' application and for which marketing approval has been obtained. However, the Panel considered a 'finding on the nature of the right to be granted under Article 70.9 unnecessary to settle this particular dispute, which concerns the current non-existence of an exclusive marketing rights system in India.' (Panel Report WT/DS50/R, para. 7.64.)
6. WTO documents WT/DS50/R and WT/DS50/AB/R.
7. See WTO documents under symbol WT/DS79.
8. As explained by the Panel in a communication to the DSB, which was circulated in document WT/DS79/4.
9. It should be noted, in this regard, that the Panel Report in the dispute between the EC and India (WT/DS79/R) contains the following concluding remarks in its para. 8.1: 'Since the matter has been addressed by India in its arguments and caused some confusion in the previous case, we would like to underline that the Panel's findings do not in any way foreshorten the transition period of until, at the latest, 1 January 2005 that India has for meeting its obligations under Articles 65.4 and 70.8(b) and (c). Rather the Panel's findings only relate to the legal basis required to give effect to the provisions of Article 70.8(a) and 70.9, which concern action to be taken during the transition period. As mentioned earlier, to come to any other conclusion would upset the delicate balance found in the Uruguay Round negotiations between these two sets of provisions.'
10. Panel Report (WT/DS50/R), paras. 7.26 and following; Appellate Body Report (WT/DS50/AB/R), paras. 56ff; Panel Report (WT/DS79/R), paras. 7.37ff.
11. Panel Report (WT/DS50/R), para. 7.35; Appellate Body Report (WT/DS50/AB/R), paras. 69 and 74.
12. Reference is made to paras. 7.31 and 7.29 in fine of the Panel Report in the dispute between the US and India (WT/DS50/R), where it is stated that it is the Panel's view that 'Article 70.8(a) requires the developing countries in question to establish a means that not only appropriately allows for the entitlement to file mailbox applications and the allocation of filing and priority dates to the application, but also provides a sound legal basis to preserve novelty and priority as of those dates, so as to take away any reasonable doubts as to whether mailbox applications and eventual patents based on them could be rejected or invalidated because, at the filing or priority date, the matter for which protection was sought was unpatentable in the country in question'. As reflected in para. 6.3 of the same Report, India took the view that the effect of the Panel's findings was to force developing countries to adopt now legislation that the TRIPS Agreement clearly required them to adopt only on 1 January 2005. The Panel did not agree, as stated in paras. 6.4 and 7.31 of its Report. This view of India was also addressed by the Panel in the dispute between the EC and India (see ftn. 9 above). The Appellate Body agreed with the Panel that '[...] India is obliged, by Article 70.8(a) to provide a legal mechanism for the filing of mailbox applications that provides a sound legal basis to preserve both the novelty of the inventions and the priority of the applications as of the relevant filing and priority dates' (WT/DS50/AB/R, para. 58). It also approved the Panel's approach to and application of the burden of proof with regard to the issue of the soundness of the legal basis as well as the Panel's assessment of the evidence and arguments put forward by the United States 'that India's "administrative instructions" pertaining to mailbox applications were legally insufficient to prevail over the application of certain mandatory provisions of the Patents Act', which assessment led to the conclusion that the Panel had 'reasonable doubts' that the 'administrative instructions' would prevail over the mandatory provisions of the Patents Act if a challenge were brought in an Indian court (WT/DS50/AB/R, para. 74). The Appellate Body did, however, not agree with the last part of the quoted sentence (from paras. 7.31 and 7.29 in fine) above.
13. In para. 7.39 of its Report (WT/DS79/R), the Panel explains why this is so.
14. In para. 7.40 of its Report (WT/DS79/R), the Panel explains how.
15. Article 1.1 of the TRIPS Agreement.
16. Appellate Body Report (WT/DS50/AB/R), para. 28 under (b).
17. Appellate Body Report (WT/DS50/AB/R), paras. 9 and 64.
18. Appellate Body Report (WT/DS50/AB/R), para. 66.
19. Appellate Body Report (WT/DS50/AB/R), para. 9.
20. Appellate Body Report (WT/DS50/AB/R), para. 59.
21. The Appellate Body refers, by way of example, to I. Brownlie, Principles of Public International Law (4th ed. Clarendon Press, 1990), at 40-42.
22. 1926, PCIJ Rep., Series A, No. 7, at 19.
23. Adopted 7 November 1989, BISD 36S/345.
24. Appellate Body Report (WT/DS50/AB/R), paras. 65-68.
25. Panel Report (WT/DS79/R), para. 1.2.
26. Appellate Body Report on Measure Affecting Imports of Woven Wool Shirts and Blouses from India, adopted on 23 May 1997 (WT/DS33/AB/R), at 16.
27. Panel Report (WT/DS50/R), para. 7.35.
28. Panel Report (WT/DS50/R), para. 7.37.
29. Appellate Body Report (WT/DS50/AB/R), para. 69.
30. India has explained the content of these 'administrative instructions' to the Panels and the Appellate Body but, as stated succinctly in the Appellate Body Report (WT/DS50/AB/R), para. 61: 'India has not provided any text of these "administrative instructions" either to the Panel or to us.' Panel Report (WT/DS79/R), paras. 7.56 to 7.58 and Panel Report (WT/DS50/R), para. 7.42 deal with this aspect in more detail.
31. Panel Report (WT/DS79/R), paras. 4.16 and 4.17.
32. Panel Report (WT/DS79/R), ftns. (58 and 59).
33. Panel Report (WT/DS50/R), paras. 2.2, 2.3, 2.9 and 7.37.
34. Panel Report (WT/DS79/R), paras. 2.1 and 7.46-7.54.
35. Panel Report (WT/DS79/R), para. 7.60.
36. Panel Report (WT/DS79/R), para. 7.61-7.63.
37. Panel Report (WT/DS79/R), paras. 7.63 and 7.73.
38. See fn. 112 to document WT/DS50/R.
39. Panel Report (WT/DS50/R), para. 4.27.
40. Panel Report (WT/DS79/R), para. 4.22.
41. According to the Panel Report in the dispute between the US and India (WT/DS50/R), para. 4.27, common sense and practical experience indicated that steps (a) to (e) above all take a long time and normally the products in question would not get on the market before the expiry of the 10-year transitional period. Provision had, therefore, been made for the grant of exclusive marketing rights of up to 5 years only to tide over the gap between the obtaining of marketing approval and the grant of patent protection for the product in question in a developing country benefiting from the 10-year transitional period, so that inventions that met the criteria for patentability on or after the date of entry into force of the Agreement would become eligible for protection in such countries by the time that protection became of commercial significance, either by the grant of a patent after the expiration of the 10-year period or by an exclusive marketing right for products getting marketing approval before that time. Moreover, in general, it simply made no commercial sense to obtain an exclusive marketing right for a five-year period unless that period was immediately followed by the grant of the exclusive rights to be conferred on patent owners under Article 28 of the TRIPS Agreement.
42. India pointed out that notifications relating to the implementation of the transitional provisions that were the subject of the dispute which had been submitted to the TRIPS Council under Article 63.2 of the Agreement did not reveal that exclusive marketing rights were made available as from 1995 in the domestic law of the countries concerned (Panel Report WT/DS50/R, para. 4.27).
43. Panel Report (WT/DS50/R), para. 7.60 and 7.62; Panel Report (WT/DS79/R), para. 7.68.
44. Panel Report (WT/DS50/R), para. 7.57.
45. Panel Report (WT/DS79/R), para. 7.71 and 7.72.
46. As regards the argument that it makes no commercial sense to obtain an exclusive marketing right for a period of 5 years unless that period is immediately followed by the period of full patent protection, we simply refer to para. 7.58 of Panel Report (WT/DS50/R), where the Panel argues that India's argument is mere speculation on how economic operators might react to a specific legal situation and indicates why it is not persuaded by the economic logic of the argument either.
47. Panel Report (WT/DS50), para. 7.61; Panel Report (WT/DS79/R), paras. 7.69 and 7.70.
48. Article 26 of the Vienna Convention states: 'Every treaty in force is binding upon the parties to it and must be performed by them in good faith'.
49. Panel Report (WT/DS50/R), para. 7.22.
50. Panel Report (WT/DS50/R), paras. 7.20-7.21.
51. Panel Report (WT/DS50/R), para. 7.21.
52. Panel Report (WT/DS50/R), para. 7.18.
53. Appellate Body Report (WT/DS50/AB/R), para. 48 in conjunction with para. 34.
54. Appellate Body Report (WT/DS2/AB/R).
55. Appellate Body Report (WT/DS50/AB/R), para. 46.
56. Appellate Body Report (WT/DS50/AB/R), paras. 36-42.
57. See, for example: Working Party Report, Brazilian Internal Taxes, adopted 30 June 1949, BISD 11/181, para. 16; Panel Report, United States - Taxes on Petroleum and Certain Imported Substances, adopted 17 June 1987, BISD 34S/136, para. 5.1.9; Panel Report, Canada - Administration of the Foreign Investment Review Act, adopted 7 February 1984, BISD 30S/140, para. 6.6; Panel Report, Japanese Measures on Imports of Leather, adopted 15/16 May 1984, BISD 31S/94, para. 55; Panel Report, Japan - Customs Duties, Taxes and Labelling Practices on Imported Wines and Alcoholic Beverages, adopted 10 November 1987, BISD 34S/83, para. 5.11; Panel Report, European Economic Community - Restrictions on Imports of Apples, adopted 22 June 1989, BISD 36S/135, para. 5.25; and Panel Report, United States - Measures Affecting the Importation, Internal Sale and Use of Tobacco, adopted 4 October 1994, DS44/R, para. 99.
58. See, for example: Working Party Report, Brazilian Internal Taxes, adopted 30 June 1949, BISD 11/181, para. 16; Panel Report, United States - Taxes on Petroleum and Certain Imported Substances, adopted 17 June 1987, BISD 34S/136, para. 5.1.9; Panel Report, Canada - Administration of the Foreign Investment Review Act, adopted 7 February 1984, BISD 30S/140, para. 6.6; Panel Report, Japanese Measures on Imports of Leather, adopted 15/16 May 1984, BISD 31S/94, para. 55; Panel Report, Japan - Customs Duties, Taxes and Labelling Practices on Imported Wines and Alcoholic Beverages, adopted 10 November 1987, BISD 34S/83, para. 5.11; Panel Report, European Economic Community - Restrictions on Imports of Apples, adopted 22 June 1989, BISD 36S/135, para. 5.25; and Panel Report, United States - Measures Affecting the Importation, Internal Sale and Use of Tobacco, adopted 4 October 1994, DS44/R, para. 99.
59. See, for example: Working Party Report, Brazilian Internal Taxes, adopted 30 June 1949, BISD 11/181, para. 16; Panel Report, United States - Taxes on Petroleum and Certain Imported Substances, adopted 17 June 1987, BISD 34S/136, para. 5.1.9; Panel Report, Canada - Administration of the Foreign Investment Review Act, adopted 7 February 1984, BISD 30S/140, para. 6.6; Panel Report, Japanese Measures on Imports of Leather, adopted 15/16 May 1984, BISD 31S/94, para. 55; Panel Report, Japan - Customs Duties, Taxes and Labelling Practices on Imported Wines and Alcoholic Beverages, adopted 10 November 1987, BISD 34S/83, para. 5.11; Panel Report, European Economic Community - Restrictions on Imports of Apples, adopted 22 June 1989, BISD 36S/135, para. 5.25; and Panel Report, United States - Measures Affecting the Importation, Internal Sale and Use of Tobacco, adopted 4 October 1994, DS44/R, para. 99.
60. See, for example: Working Party Report, Brazilian Internal Taxes, adopted 30 June 1949, BISD 11/181, para. 16; Panel Report, United States - Taxes on Petroleum and Certain Imported Substances, adopted 17 June 1987, BISD 34S/136, para. 5.1.9; Panel Report, Canada - Administration of the Foreign Investment Review Act, adopted 7 February 1984, BISD 30S/140, para. 6.6; Panel Report, Japanese Measures on Imports of Leather, adopted 15/16 May 1984, BISD 31S/94, para. 55; Panel Report, Japan - Customs Duties, Taxes and Labelling Practices on Imported Wines and Alcoholic Beverages, adopted 10 November 1987, BISD 34S/83, para. 5.11; Panel Report, European Economic Community - Restrictions on Imports of Apples, adopted 22 June 1989, BISD 36S/135, para. 5.25; and Panel Report, United States - Measures Affecting the Importation, Internal Sale and Use of Tobacco, adopted 4 October 1994, DS44/R, para. 99.
61. See, for example: Working Party Report, Brazilian Internal Taxes, adopted 30 June 1949, BISD 11/181, para. 16; Panel Report, United States - Taxes on Petroleum and Certain Imported Substances, adopted 17 June 1987, BISD 34S/136, para. 5.1.9; Panel Report, Canada - Administration of the Foreign Investment Review Act, adopted 7 February 1984, BISD 30S/140, para. 6.6; Panel Report, Japanese Measures on Imports of Leather, adopted 15/16 May 1984, BISD 31S/94, para. 55; Panel Report, Japan - Customs Duties, Taxes and Labelling Practices on Imported Wines and Alcoholic Beverages, adopted 10 November 1987, BISD 34S/83, para. 5.11; Panel Report, European Economic Community - Restrictions on Imports of Apples, adopted 22 June 1989, BISD 36S/135, para. 5.25; and Panel Report, United States - Measures Affecting the Importation, Internal Sale and Use of Tobacco, adopted 4 October 1994, DS44/R, para. 99.
62. See, for example: Working Party Report, Brazilian Internal Taxes, adopted 30 June 1949, BISD 11/181, para. 16; Panel Report, United States - Taxes on Petroleum and Certain Imported Substances, adopted 17 June 1987, BISD 34S/136, para. 5.1.9; Panel Report, Canada - Administration of the Foreign Investment Review Act, adopted 7 February 1984, BISD 30S/140, para. 6.6; Panel Report, Japanese Measures on Imports of Leather, adopted 15/16 May 1984, BISD 31S/94, para. 55; Panel Report, Japan - Customs Duties, Taxes and Labelling Practices on Imported Wines and Alcoholic Beverages, adopted 10 November 1987, BISD 34S/83, para. 5.11; Panel Report, European Economic Community - Restrictions on Imports of Apples, adopted 22 June 1989, BISD 36S/135, para. 5.25; and Panel Report, United States - Measures Affecting the Importation, Internal Sale and Use of Tobacco, adopted 4 October 1994, DS44/R, para. 99.
63. See, for example: Working Party Report, Brazilian Internal Taxes, adopted 30 June 1949, BISD 11/181, para. 16; Panel Report, United States - Taxes on Petroleum and Certain Imported Substances, adopted 17 June 1987, BISD 34S/136, para. 5.1.9; Panel Report, Canada - Administration of the Foreign Investment Review Act, adopted 7 February 1984, BISD 30S/140, para. 6.6; Panel Report, Japanese Measures on Imports of Leather, adopted 15/16 May 1984, BISD 31S/94, para. 55; Panel Report, Japan - Customs Duties, Taxes and Labelling Practices on Imported Wines and Alcoholic Beverages, adopted 10 November 1987, BISD 34S/83, para. 5.11; Panel Report, European Economic Community - Restrictions on Imports of Apples, adopted 22 June 1989, BISD 36S/135, para. 5.25; and Panel Report, United States - Measures Affecting the Importation, Internal Sale and Use of Tobacco, adopted 4 October 1994, DS44/R, para. 99.
64. See, in general, E.-U. Petersmann, 'Violation Complaints and Non-violation Complaints in International Law' (1991) German Yearbook of International Law, at 175.
65. This is codified in Article 26.1(b) of the DSU.
66. Panel Report (WT/DS50/R), paras. 3.1 under (e) and 4.31.
67. Panel Report (WT/DS50/R), paras. 3.2 under (f) and 4.32.
68. Status Report by India (WT/DS50/10/Add.1).
69. Reference was made to the Mutually Agreed Solution notified in the dispute between the United States and Pakistan (IP/D/2/Add.1), which we discuss below.
70. Panel Report (WT/DS50/R), paras. 3.1 under (g) and 4.36.
71. Panel Report (WT/DS50/R), para. 8.2.
72. Panel Report (WT/DS50/R), para. 7.66.
73. Recourse to Article 21.5 of the DSU (WT/DS50/11).
74. See WTO documents under symbol WT/DS59.
75. Many countries provide in their national legislation that failure to use a trademark during a certain period of time (under the TRIPS Agreement a minimum of three years) may lead to the cancellation of the registration of the mark. The purpose is to avoid the trademark register becoming clogged with unused marks. Various provisions of the TRIPS Agreement relate to this matter, notably Article 19.
76. As reflected in para. 11.32 of the Panel Report, the United States had submitted that 'a requirement that a trademark owner use a different trademark from that which it uses in the rest of the world to obtain a special advantage in Indonesia could put the regular mark at risk of cancellation for non-use in Indonesia. Because the trademark owner would be choosing to use the unique Indonesian mark, it would not be able to argue that its non-use arose independently of its will.'
77. Document WT/DS114/1.
78. Document WT/DS114/5.
79. Documents WT/DS114/2-4.
80. In section 5 above, we have referred to such a case.
81. See Article 3.7 DSU.
82. Cf. para. 18 of the Report (1996) of the Council for TRIPS contained in document IP/C/8.
83. Document WT/DS28/1.
84. Document WT/DS42/2.
85. Document WT/DS28/4.
86. Document WT/DS42/4.
87. On 25 August 1997, Japan notified these amendments to the Council for TRIPS by submitting a complete text of the Copyright Law as amended by Law No. 117 of 1996. See document IP/N/1/JPN/C/1/Rev.1.
88. Document WT/DS36/1.
89. Document WT/DS36/3.
90. WT/DS36/4.
91. Pakistan notified the Ordinance to the Council for TRIPS by means of a communication dated 5 March 1997. It can be found in document IP/N/1/PAK/1.
92. Document WT/DS37/1.
93. Document WT/DS37/2.
94. Document WT/DS86/1.
95. Document WT/DS86/2. On 14 May 1997, the United States requested consultations with Denmark on a similar matter. This request can be found in document WT/DS83/1. These consultations are still pending.
96. Documents WT/DS82/1 and WT/DS115/1 respectively.
97. Document WT/DS83/1.
98. Documents WT/DS124/1 and WT/DS125/1 respectively.
99. Document WT/DS153/1.
100. Document WT/DS160/1.
101. Notifications under Article 63.2 of the Agreement are circulated as WTO documents, which can be found in the Documents On-line database, that can be accessed through the WTO web site at http://www.wto.org. This database can be searched by using e.g. country names or document symbols. Information on the symbols used for the TRIPS Council documents can be found on the topical pages on intellectual property on the WTO website. The texts of the laws and regulations attached to notifications under Article 63.2 of the Agreement are not contained in the Documents On-line database, since they have not generally been put into machine-readable form by the WTO Secretariat. However, as provided in Article 2(4) of the Agreement between the WIPO and the WTO, the WTO Secretariat transmits to the International Bureau of WIPO copies of such texts, and the International Bureau places such copies in its collection. WIPO is preparing to make this information available through a full-text database.
102. Document IP/C/5.
103. The records of the introductory statements made by delegations, the questions put to them and the responses given, including follow-up questions and responses thereto, are circulated in, respectively, the IP/Q/COUNTRY/- (copyright and related rights), IP/Q2/COUNTRY/- (trademarks, geographical indications and industrial designs), IP/Q3/COUNTRY/- (patents, layout-designs of integrated circuits, undisclosed information and the control of anti-competitive practices in contractual licences) and IP/Q4/COUNTRY/- (enforcement) series of documents. The responses to the Checklist of Issues on Enforcement are circulated in the IP/N/6/COUNTRY series of documents.