E

WIPO/IP/JU/RYD/04/9 ORIGINAL: English DATE: October 2004

KINGDOM OF SAUDI ARABIA

WORLD INTELLECTUAL PROPERTY ORGANIZATION

WIPO NATIONAL WORKSHOP FOR JUDGES

organized by the World Intellectual Property Organization (WIPO) in cooperation with the overnment of the ingdom of audi rabia

Riyadh, December 13 to 15, 2004

TH T I

prepared by Mr. Henry Olsson, Judge at the Court of Appeal and Special Government Adviser, Ministry of Justice, Stockholm

What is T I

T I is The greement on Trade- elated spects of Intellectual roperty ights, Including Trade in ounterfeit oods. T I is one of the 14 multilateral trade agreements within the World Trade rganization and one result of the ruguay ound within TT.

Why T I

eason 1: Intellectual property had become important in international trade relations eason 2: xisting conventions in the I field lacked efficient enforcement provisions against counterfeitng and piracy.

The ruguay ound

trade negotiations ound within TT. ain results: stablishing WT 14 multilateral trade agreements (incl.T I ) eneral greement on ervices 4 plurilateral agreements

What is the WT ?
World Trade rganization = WT : an intergovernmental organization with now 146 members ot a specialized agency under the Was set up as a result of the ruguay ound. tarted functioning on January 1, 1995

What is the WT ..
esult of ruguay ound = one package. embership of WT = binding as regards all the multilateral agreements o opt-out possibility as regards e.g. T I .

T I

: eneral

1. tandards for the substantive protection of all essential I rights 2. rovisions on basic principles (national treatment and ost- avoured- ation t.) 3. tandards on enforcement 4. rovisions on dispute settlement 5. Transitional/institutional arrangements

T I

: Industrial property standards

rovisions on the contents of the rights in respect of patents trademarks geographical indications industrial designs lay-out designs of integrated circuits protection of undisclosed information (trade secrets)

T I

: opyright tandards

1. eneral obligation ompliance with art. 1-21 of the erne onvention (result: e.g. T I dispute settlement procedures applicable in case of breach) This does not apply to moral rights (which are consequently outside the scope of T I ).

T I

: opyright tandards..

eneral principle: opyright protection applies only to expressions and not to ideas, procedures, methods of operation or mathematical concepts as such.

T I

: opyright tandards..

pecial obligations: 1) omputer programs in both source code and object code shall be protected as literary works under the erne onvention. 2) ompilations of data which by means of the selection and arrangement of their contents are intellectual creations shall be protected as such.

T I

: opyright tandards..

3) ental right at least as regards - computer programs (except where the program is not the essential object of the rental) - cinematographic works (subject to the material impairment test). - (phonograms

T I

: opyright standards..

4) pecial provision on term of protection for anonymous works (if not published, the term shall be calculated from the year of the making of the work)

T I

: opyright standards..

5) Three-step test as regards limitations a) certain special cases b) no conflict with a normal exploitation of the work, and c) no unreasonable prejudice of the legitimate interests of the author

T I

: elated ights standards

eatures: 1) oncern performing artists, phonogram producers and broadcasters. 2) o reference to the ome onvention, but self-standing. 3) eal only with sound performers and not audiovisual performers

T I

: elated ights standards

ound performers: ossibility of preventing (not exclusive right) a) fixation of unfixed performances, b) reproduction of sound recordings of performances, c) wireless broadcasting + communication to the public of live performances. othing about right of remuneration for public performance of sound recordings

T I

: elated ights standards..

ound performers: Term of protection: 50 years from performance or fixation of it.

T I

: elated ights standards

honogram producers: ight to authorise or prohibit: direct or indirect reproduction of recordings right of commercial rental (no remuneration right for public perform) Term of protection: 50 years from fixation

T I

: elated ights standards..

ound radio and TV broadcasters: ight to prohibit (no exclusive right): a) fixation of broadcasts, b) reproduction of fixations, c) wireless rebroadcasting broadcasts. Term of protection: 20 years from year of broadcast.

T I

: elated ights standards..

imitations: ame as permitted under ome onvention. Three-step test not applicable.

T I

: asic operational princples

ational treatment: each Member shall accord to the nationals of other Members treatment no less favourable than it accords to its own nationals with regard to the protection of intellectual property ( rt. 3)

T I

: asic operational principles..

ational treatment application: opyright: applies to all rights, also if not mentioned in T I elated ights: this obligation applies only in respect of the rights provided under this Agreement ( rt. 3).

T I

: asic operational principles..

ost- avoured- ation Treatment. rt 4: With regard to the protection of intellectual property, any advantage, favour, privilege or immunity granted by a Member to the nationals of any other country shall be accorded immidiately and unconditionally to the nationals of all other Members

T I

: nforcement standards

Why enforcement provisions ? iscontent as to the way in which counterfeiting and piracy was dealt with in national laws and applied.

T I

: nforcement standards..

eneral obligations, and pecific obligations. art of the T I greement; breach may entail panel procedures and trade sanctions.

T I

: enforcement standards..

eneral obligations: enforcement procedures must be available; must include expeditious and deterrent remedies; procedures to be fair and equitable; must not be unnecessarily complicated or costly or entail unwarranted dealys; possibility must exist for judicial review of final administrative decisions.

T I

: nforcement standards..

o obligation to - create a judicial I enforcement system different from enforcement in general. - re-distribute resources between I enforcement and enforcement in general.

T I

: nforcement standards..

pecial obligations as regards: - ivil and administrative procedures - roder measures - riminal procedures

T I

: nforcement standards

ivil and administrative procedures: 1) fair and equitable procedures 2) vidence 3) Injunctions 4) amages 5) isposal of infringing goods 6) ight of information

T I

: nforcement standards..

ivil and administrative procedures (cont.) 7) Indemnification of the defendant 8) rovisional measures

T I

: nforcement standards..

order easures: ain provision: rocedures on the suspension for 10 working days of the release of suspected counterfeit trademark goods or pirated copyright goods.

T I

: nforcement standards..

riminal procedures to be applied at least in respect of wilful trademark counterfeiting or copyright piracy on a commercial scale. emedies: imprisonment or fines or both. ust be strong enough to constitute a deterrent.

T I

: ispute settlement.

Why provisions on dispute settlement ? eason: when states were in breach international I conventions the only remedy was referral to the International ourt of Justice in the Hague. ever used. onsequently, only diplomatic pressure was available.

T I

: ispute settlement..

T I system: prevention of disputes through provisions on transparency settlement of disputes through panel procedures and decisions andtrade sanctions in case decisions are not adhered to.

T I

: ispute settlement..

ispute prevention: transparency, e.g. notification of I laws to the T I ouncil.

T I

: ispute settlement..

ispute settlement: egislative framework: ispute ettlement nderstanding ( ) ispute ettlement ody ( ).

T I

: ispute settlement..

teps: 1) onsultations 2) anel and anel eports 3) ossibly recourse to tanding ppellate ody 4) decision on anel eport 5) uspension of concessions (trade sanctions).

T I

: ispute settlement..

east- eveloped ountries: articular consideration to be given to situation; due restraint in raising matters and in requesting concessions/trade sanctions.

T I

: pplication in time.

1) eneral application of T I : by January 1, 1996 2) eveloped ountries and ountries in Transition: by January 1, 2000 (special rules on T and and certain provisions on patents in new areas).

T I

: pplication in time..

east- eveloped ountries: pon request the T I ouncil to postpone application to January 1, 2006 oha inisterial eclaration: patent protection for pharmaceuticals only from January 1, 2016 rovisions on incentives to promote technology transfer. rovisions on technical cooperation

WT /T I

ain bodies

upreme body of WT : the inisterial onference In between: the eneral ouncil T I : The T I ouncil