GATT VS. WIPO OVER INTELLECTUAL PROPERTY.

Mar 20, 1987

GATT VS. WIPO OVER INTELLECTUAL PROPERTY.

GENEVA MARCH 18 (IFDA), BY CHAKRAVARTHI RAGHAVAN. -- The U.S. and other industrial countries are expected to unveil next week some of their ideas on using GATT to secure "adequate and effective protection" of intellectual property rights of their enterprises and investors.

The negotiating group on "trade-related aspects of intellectual property rights, including trade in counterfeit goods" is due to meet on march 25 for its first meeting.

The group is to be chaired by Sweden's Ambassador, Lars E.R. Anell.

It is mandated to aim "to clarify GATT provisions and elaborate as appropriate new rules and disciplines", as well as "to aim to develop a multilateral framework of principles, rules and disciplines dealing with international trade in counterfeit goods, taking into account work already undertaken in GATT".

The objective is "to reduce distortions and impediments" to international trade, take into account the need to promote effective and adequate protection of intellectual property rights, and "to ensure that measures and procedures to enforce ... rights do not themselves become barriers to legitimate trade".

The inclusion of the subject in the negotiating agenda for the MTNS in goods was one of the controversies before Punta del Este. The two others were over the inclusion of "trade-related investment issues", and the question of "trade in services".

While the ministers at Punta del Este have included "intellectual property rights" in the agenda of the GATT MTNS, they have not settled at all the legal and jurisdictional questions, though they have circumscribed the scope of action in the MTNS by trying to relate it to a clarification of the actual GATT provisions, and elaborating appropriate new rules and disciplines.

There are only two GATT articles relating to patents, trademarks or copyrights.

The Havana Charter for an ITO, on the other hand, had an entire chapter devoted to restrictive business practices, and that included provisions relating to rights under patents, trademarks and copyrights.

GATT contained no such provision because, as prof. Jackson in his treatise on GATT has put it, GATT "was intended to apply only to goods".

One provision in GATT relating to patents, trademarks and copyright is in the general exception clause in article XX, which enables GATT CPS to take measures to secure compliance with laws or regulations, not inconsistent with the provisions of GATT, for "protection of patents, trademarks and copyrights, and the prevention of deceptive practices".

Article IX deals with "marking requirements" for imported articles, and requires MFN treatment on marking requirements for imported goods, and on CPS, in such regulations, taking care to minimise difficulties and inconveniences to commerce and industry of exporting countries.

The major thrust is to prevent the provisions for marking, or use of patents or trademarks regulations, to create a non-tariff protection against imports.

Article IX has also a provision requiring GATT CPS to cooperate with each other to prevent use of trade names in such a manner as to misrepresent the true origin of a products.

As third world sources note, the entire scheme is not to use GATT to create or buttress ancillary international instruments, but merely to make sure that the other instruments and laws (otherwise laudable and legitimate) are not turned into instruments of protection against imports.

But the U.S. objective, third world sources say, is now the other way round - to use GATT to increase protection available under the relevant international instruments and/or increase the protection and amend the existing international instruments collaterally.

Focusing this issue in GATT, and within the Uruguay Round MTNS in goods, has raised some tricky legal issues and issues of GATT's own technical competence, that have at best been side-stepped by the Ministers at Punta del Este, but not put to rest.

It has also raised some serious jurisdictional disputes between GATT and the world intellectual property organisation (WIPO), one of the 16 specialised agencies of the UN system, specifically mandated by its charters and its agreement with the UN itself, to deal with all intellectual property issues.

With its 116 members, WIPO has a more universal membership than GATT's 92 Contracting Parties, and unlike GATT, WIPO is an international organisation and a forum.

The WIPO administers a number of international conventions in the broad area of "intellectual property", and specially the Paris Union and Ancillary instruments in the field of Industrial Property (patents, trade marks and designs, etc.), as well as the Berne Convention and Ancillary instruments for Protection of Literary and Artistic Works, rights of performers, producers of phonograms and broadcasting organisations and related matters.

Though the U.S. is in the forefront of the demands for greater protection of "intellectual property rights", it never joined the Berne Convention, since for a long time U.S. laws and domestic practices either did not conform to the Berne Convention requirements or sometimes even in conflict.

In the early post-world war II era, the U.S. chose to encourage a parallel convention through UNESCO, which it joined.

Only recently, U.S. practices have come more in line with Berne Convention, though even now it still insists on the formalities for registration of copyright (not required under the Berne Convention as a precondition for protection), including providing a free copy of the copyrighted publication to the U.S. Congressional Library.

The Ministerial Declaration provides that the GATT negotiations "shall be without prejudice to other complementary initiatives that may be taken in the WIPO and elsewhere to deal with these matters".

This was inserted at the insistence of the third world countries, who suddenly found themselves having to champion the cause of WIPO and its jurisdiction, even though they themselves have been very dissatisfied with the WIPO, whose frameworks (along with those of GATT, IMF and IBRD) they consider to be far more supportive of the interests of the major industrial nations, and not an instrument for promoting development.

Within the WIPO, the third world countries have been striving to revise the Paris Conventions on patents and trade marks rights, but their nearly two decades-old efforts had been blocked by the U.S. and other major industrial countries.

The U.S. trade representative Clayton Yeutter has dismissed some of the legal and jurisdictional issues as "fight over turf between two international organisations".

Third world countries say that in raising some of these issues, they are not very concerned about the "turf fights", but interested in ensuring, whether at GATT or at WIPO, that any international instrument serves primarily the purpose of development rather than preservation and protection of status quo.

Though the U.S., EEC and others have been arguing about the need for improvement of the international instruments protecting patents, trade marks and other such rights, they have not initiated any moves in this direction within WIPO.

WIPO is headed by Dr. Arpad Bogsch, a U.S. National of Hungarian Extraction, who has been elected and re-elected with U.S. support.

Yet, third world delegates to WIPO say, they had the impression that the U.S. had not even bothered to consult Bogsch before deciding to take the issue to GATT, rather than proceed with it within WIPO.

And the reason the U.S. has now preferred GATT is because it can't hope to revise the Paris Conventions in WIPO without having to yield on some of the third world proposals.

According to Bogsch, "very little efforts have been made within WIPO to improve protection (of intellectual property rights), with the exception perhaps of the proposed treaty on integrated circuits (microchips)".

In an interview with IFDA, Bogsch said at no stage within the WIPO had the U.S. and others put forward any proposals for changes in the Paris Convention or other ancillary instruments either about securing greater protection for intellectual property rights or to deal with counterfeit goods in international trade.

On both these issues, Bogsch notes, the Paris Union and other connected instruments contain provisions.

And even where a country is not a party, as in the case of India, its national laws provide for protection and for punishment, civil and criminal, for violations of these rights, including counterfeiting, Bogsch points out.

Though the term "counterfeit" is not used in the Paris Union, Bogsch points out that there are many provisions in the treaty to protect trade marks and industrial designs against "Unfair Competition", and for the protection of appellations of origin and indications of geographical origin, etc.

Most of the counterfeit goods in relation to trade marks, Bogsch noted, are illegal in the Paris Convention, provided a country is a party to the Paris Convention and the trademark concerned is actually protected through various provisions.

Bogsch himself does not hazard a guess as to why the U.S. has chosen the GATT Forum.

But in the run-up to Punta del Este, and even later, the U.S. has been arguing that the Paris Conventions do not provide a speedy remedy for settling disputes, and hence its preference for actions within GATT.

In essence, third world sources say, the U.S. wants to use of GATT provisions to enable it to "retaliate" by restricting imports from a Contracting Party, on the ground it is not providing adequate protection to intellectual property rights of U.S. enterprises.

Bogsch points out that the scheme of the Paris Convention does not deal with disputes of individual parties with other states, but requires national laws to provide for these matters.

The Paris treaty has a provision for settling disputes between states through the international court of justice.

It also requires all its adherents to give equal protection, under their national laws, to the rights of nationals of other countries who are members of the Union, and this includes the rights of protection of their intellectual property rights against infringement and even "unfair practices" and counterfeiting.

The foreign owner or enterprise would be entitled to the same access to courts and other administrative procedures for protection of his rights, and to prevent and punish counterfeiting, as the nationals of the country concerned.

"Every infringement under the Paris Convention has to be prosecuted in the National Courts of the country where the infringement has occurred", Bogsch points out.

"There is of course no settlement of disputes procedure as in GATT. But it is not correct to say that there are no remedies. Remedies are available in National Courts, and in some cases before the International Court of Justice".

Third world countries note that the U.S. has preferred not to use these judicial and quasi-judicial remedies available in National Courts of WIPO members, but prefers to use its unilateral "retaliatory" power in GATT, which in reality is "jungle law".

Such a remedy is questionable even over trade policy disputes over withdrawal or infringement of mutual contractual obligations.

But its use for enforcement in foreign territories of alleged violations of copyrights or patents and trademarks rights of U.S. enterprises, even if it be after U.S. domestic proceedings before its the international trade Commission, would be an extension of the jungle law of "might is right" and force U.S. law on others.

As regards counterfeiting and WIPO, Bogsch notes that at the instance of the third world countries this issues has been in the work programme of WIPO, and an expert group has been meeting since 1985 to look at the issue, the nature of the protection and remedies available within the Paris Convention and whether anything further needs to be done.

The experts group, he said, has met over the last two years, and a third meeting is scheduled for later this year.

Bogsch revealed in the interview that WIPO has asked to be fully associated in the work of the negotiating group on trade-related intellectual property issues.

It has not sought "observer" status, though the GATT Secretariat in its documentation has so described this.

The case of WIPO in this regard, Bogsch said, is also different.

It is the only International Organisation mentioned by name in the Punta del Este Declaration.

Third world sources said that this would be one of the issues that would have to be discussed at the first meeting of the negotiating group.

The U.S. and its supporters, they said, did not want WIPO there, nor to be associated with the negotiations.

For if WIPO representatives were there, even as observers, the contentions or arguments of the U.S. and others about the factual "legal" and "technical× position in terms of the protection of these rights in the WIPO-Administered treaties could be challenged, and the WIPO representatives asked to provide authoritative clarifications.

The U.S. and others, they said, do not want this.

They want to take advantage of relative ignorance of many third world Contracting Parties on these matters, to get some code or other arrangement negotiated and effected within GATT, and use it as a "stick" against third world countries to force them to provide greater protection to the U.S. TNCS than is available within WIPO.