The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement)
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Introduction

The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement) was negotiated between 1986 and 1994 during the Uruguay Round of Multilateral Trade Negotiations of the General Agreement on Tariffs and Trade (GATT), which led to the establishment of the World Trade Organization (WTO) (Gervais, 2022, pp. 12‒35). Interestingly, the first major studies on the economic impact of IP were published during the Round (e.g. Mansfield, 1986) and studies focusing on the impact of intellectual property (IP) on development only later (Maskus, 2000; Gervais, 2005; Yu, 2006). Membership in the WTO includes an obligation to comply with the TRIPS Agreement, as no reservations are possible; that is, the WTO Agreements constitute a ‘single undertaking’.

The Agreement was signed at Marrakech on 15 April 1994 and entered into force on 1 January 1995, with transitional arrangements for developing and least-developed countries and countries with an economy ‘in transition’. Apart from its preamble, the Agreement has six parts. Part I contains general provisions and basic principles (arts 1–8). Part II contains the substantive IP norms for →copyright and →related rights (arts 9–14), →trademarks and →trade names (arts 15–22), →geographical indications; →industrial designs (arts 25–26); →patents (arts 27–34); integrated circuits (arts 35–38), and the protection of confidential information (art. 39). The last article of Part II deals with the control of anti-competitive practices in contractual licenses (art. 40). Part III is a detailed set of provisions on the enforcement of intellectual property rights (IPRs) before domestic courts and administrative agencies, including border measures and criminal enforcement (arts 41–61). Part IV contains a single, general article on the acquisition and maintenance of IPRs and related inter-partes procedures (art. 62). Part V integrates the TRIPS Agreement into the WTO’s dispute-settlement system (arts 63–64). The last Part contains various final provisions, including institutional arrangements: and a →national security exception mirroring those contained in the GATT and the General Agreement on Trade in Services (arts 65–73).

Instead of rewriting international IP rules from scratch, negotiators incorporated by reference most substantive provisions of the →Berne Convention for the Protection of Literary and Artistic Works (Berne Convention) and the →Paris Convention for the Protection of Industrial Property (Paris Convention), both administered by the →World Intellectual Property Organization (WIPO).

General provisions and basic principles

The TRIPS Agreement begins by stating that Members may provide for ‘more extensive protection than is required by this Agreement’ (art. 1). Like other international IP instruments, the TRIPS Agreement rests on the foundation of →national treatment (art. 3), applicable to the categories of IP covered by the Agreement. TRIPS also provides for the application of the most-favored nation principle with a few exceptions (art. 4). As negotiators were unable to agree on a single rule for →international exhaustion, the issue cannot be ‘addressed’ in a dispute brought under the Agreement (art. 6).

Unlike most of the text of the Agreement, arts 7 and 8, titled Objectives and Principles, respectively, stem from a proposed text for TRIPS submitted during the Uruguay Round by a group of 14 developing countries (Gervais 2022a, 22). They were singled out in the →Doha Declaration, which provides in part that ‘[i]n applying the customary rules of interpretation of public international law, each provision of the TRIPS Agreement shall be read in the light of the object and purpose of the Agreement as expressed, in particular, in its objectives and principles’ (Doha Declaration para. 5a). Those provisions are meant to reflect the necessary balance between the interests of producers and users of IP and the aim that IP should be welfare-enhancing. They can be used to interpret the rest of the Agreement (Gervais 2021).

Copyright and related rights

The Agreement incorporates the substantive provisions (arts 1–21) of the Berne Convention, minus →moral rights provisions in the Convention (esp. arts 6bis and 10bis(3)) (art. 9.1). Article 9.2, inspired by art. 102(b) of the 1976 Copyright Act of the →United States, excludes some subject-matter from the scope of copyright protection. The Agreement also contains: (a) a rental right on →sound recordings, →computer programs and, under certain conditions, →cinematographic (audiovisual) works (arts 11 and 14.4); (b) a minimum 50-year term of protection for certain works (art. 12); (c) a version of the →three-step test (in addition to incorporating the three-step test from art. 9(2) of the Berne Convention, which the Agreement incorporated by reference); and related rights at least for →performers and producers of →sound recordings (art 14), subject to ‘limitations, exceptions and reservations to the extent permitted by the →Rome Convention’ (art. 14.6).

Trademarks and trade names

The TRIPS Agreement incorporates the Paris Convention provisions (art. 2.1) and: (a) adds a definition of what can constitute a trademark, with the limitation that WTO Members may ‘require, as a condition of registration, that signs be visually perceptible’ (art. 15) and that Members may make registrability dependent on use; (b) provides for rights, including broader rights in →well-known marks (art. 16); (c) allows exceptions to trademark rights based on a truncated version of the three-step test (art. 17); (d) provides that the ‘use of a 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’ (art. 20); and (e) prohibits the →compulsory licensing of trademarks.

By its incorporation of many provisions of the Paris Convention, the Agreement also applies to trade names.

Geographical indications

The TRIPS Agreement provides a two-tier system of protection, namely a trademark-like minimum level of protection for most geographical indications (art. 22) and a higher level of protection for wines and spirits (art. 23). Members also agreed to negotiate the creation of a ‘multilateral system of notification and registration’ (arts 23.4 and 24.1), but those negotiations have stalled, especially with the adoption in 2015 of the Geneva Act to the →Lisbon Agreement for the Protection of Appellations of Origin and Their International Registration, which updated the functioning of the →Lisbon system (Gervais, 2017).

Industrial designs

The TRIPS Agreement incorporates the relevant provisions of the Paris Convention (art. 2.1) adds a definition of what may constitute an industrial design, allowing for both →novelty and →originality-based systems (art. 25). It provides a set of rights and term of protection and applies a version of the three-step test to limitations to the rights of an industrial design owner (art. 26).

Patents

The Agreement incorporates the relevant provisions of the Paris Convention (art. 2.1) and adds: (a) a definition of →patentable subject-matter, including a list of applicable criteria (art. 27.1) and possible exclusions such as →diagnostic methods or inventions the ‘commercial exploitation of which’ must be prevented to protect →ordre public and some →immoral inventions; (b) a list of rights of a patent owner (art. 28); (c) an obligation to disclose the invention ‘in a manner sufficiently clear and complete’ in a patent application (art. 29); and (d) two sets of provisions that limit the flexibility of WTO Members in limiting the rights of patent owners. The first is a version of the three-step test (art. 30). The second is a list of conditions that apply to the issuance of compulsory licenses (art. 31). One of such conditions is that the license must be ‘predominantly for the supply of the domestic market of the Member authorizing such use’ (art. 31(f)). Based on the Doha Declaration, WTO Members adopted in 2003 a Decision and then in 2006 an amendment to modify the application of art. 31(f) in particular for Members wishing to export pharmaceutical products to least-developed countries, now contained in art. 31bis and accompanying documents. In June 2022, the WTO Ministerial Conference also adopted a ‘waiver’ allowing Members to issue compulsory licenses and other instruments with similar effect for the ‘production and supply of COVID-19 vaccines’ (WTO, 2022). As of 2023, negotiations about an extension of the waiver to other products were underway.

The Agreement also provides a minimum term of protection (art. 33) and a reversal of the burden of proof for →process patent (claim) infringement (art. 34).

Integrated circuits

This mostly obsolete form of IP protection is protected in the Agreement by incorporating the →Washington Treaty on Intellectual Property in Respect of Integrated Circuits, which never entered into force, and adding provisions to it, in particular in respect of compulsory licensing and term of protection (arts 35–38).

Confidential information

The TRIPS Agreement incorporates the relevant provisions of the Paris Convention (art. 2.1), in particular art. 10bis, and adds protection for information often referred to as →trade secrets and protection of information submitted to governments for certain products, such as pharmaceuticals, requiring marketing approval (art. 39). See →test data protection.

Control of anti-competitive practices in contractual licenses

The Agreement provides for some application of competition (→antitrust) law to the categories of IPRs protected under the Agreement (art. 40), in particular to cases of abuse of IPRs.

Enforcement

Other than provisions on seizure of infringing items, neither the Berne Convention nor the Paris Convention contain detailed provisions on the →enforcement of IPRs before national courts or other governmental entities. The Agreement added an entire part dedicated to this topic, containing: (a) a set of general provisions applicable to enforcement procedures (art. 41); (b) detailed provisions on procedures and remedies (damages, attorneys’ fees, injunctions) available in civil judicial procedures (arts 42–48), which are also applicable to equivalent administrative procedures (art. 49); (c) a provision on provisional (interlocutory) judicial measures (art. 50); (d) very detailed provisions on seizure of infringing goods at the point of importation (arts 51–60); and a provision on criminal enforcement at least in the case of ‘trademark counterfeiting or copyright piracy on a commercial scale’ (art. 61).

Acquisition and maintenance of Intellectual Property Rights

The Agreement deals mostly with substantive IPRs and their enforcement. It only provides general principles concerning procedures to acquire or maintain rights (such as patent or trademark applications), including a right of review by a judicial or quasi-judicial authority of ‘final administrative decisions’ (art. 62).

Dispute-settlement

The TRIPS Agreement forms part of the WTO single undertaking and disputes under the Agreement can be brought to the WTO Dispute Settlement Body (art. 64.1), with some limitations. Members also agreed to transparency obligations, in particular to make their ‘laws and regulations, and final judicial decisions and administrative rulings of general application’ available (art. 63).

Final provisions

The Agreement applies in full to all WTO Members except least-developed countries, which are exempted from complying with most of its provisions for the foreseeable future (arts 65–66). The Agreement also contains provisions on cooperation especially with least-developed Members (arts 66–67), a provision on the application of the Agreement to subject-matter in existence at the time of entry into force in a Member, and a national security exception (arts 70 and 73).

Post-trips

The TRIPS Agreement was negotiated at the same time as the North American Free Trade Agreement (NAFTA), now superseded by the →US-Mexico-Canada Agreement. While the Agreement can be said to be ‘Paris-Plus’ and ‘Berne Plus’ (except, in the latter case, with respect to →moral rights), many IP chapters in this and other trade agreements are ‘TRIPS Plus’. Given the contentious nature of IP negotiations, especially in the face of global pandemics, it is unclear whether the Agreement will ever be comprehensively revised. Since 1995, only one amendment (art. 31bis) has been adopted. TRIPS is likely to remain a point of reference for negotiators of other agreements, and it has also been referred to in post-TRIPS WIPO treaties, such as the →Marrakech VIP Treaty.

Conclusion

The TRIPS Agreement has served as a point of reference in the negotiation of most of, not all, IP treaties and trade agreements with an IP chapter since 1995. The incorporation of the Agreement into the WTO dispute-settlement system means that Members may bring disputes and obtain the right to retaliate against Members who do not bring their legislation in conformity with their obligations, though as of early 2024, the future of that system remained in a state of flux. The incorporation of the Berne Convention and Paris Convention into TRIPS means that WTO dispute-settlement panels and the Appellate Body can be called upon to interpret those conventions.

References

  • Gervais, Daniel (2005), ‘Intellectual Property and Development: The State of Play74 Fordham Law Review 505.

  • Gervais, Daniel (2017), ‘A Look at the Geneva Act of the Lisbon Agreement’ in Irene Calboli and Ng Loy Wee Loon (eds), Geographical Indications at the Crossroads of Trade, Development and Culture(s) (Cambridge University Press).

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  • Gervais, Daniel (2021), ‘TRIPS Pluralism21(2) World Trade Review 1.

  • Gervais, Daniel (2022), The TRIPS Agreement: Drafting History and Analysis (5th edn, Sweet & Maxwell).

  • Mansfield, Edwin (1986), ‘Patents and Innovation: An Empirical Study32(2) Management Science 173.

  • Maskus, Keith (2000), ‘Lessons from Studying the International Economics of Intellectual Property Rights53(6) Vanderbilt Law Review 2219.

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  • World Trade Organization (2022), Ministerial Decision on the TRIPS Agreement, adopted on 17 June 2022 (WT/MIN(22)/30).

  • Yu, Peter K. (2006), ‘TRIPs and Its Discontents10 Marquette Intellectual Property Law Review 369.

  • Gervais, Daniel (2005), ‘Intellectual Property and Development: The State of Play74 Fordham Law Review 505.

  • Gervais, Daniel (2017), ‘A Look at the Geneva Act of the Lisbon Agreement’ in Irene Calboli and Ng Loy Wee Loon (eds), Geographical Indications at the Crossroads of Trade, Development and Culture(s) (Cambridge University Press).

    • Search Google Scholar
    • Export Citation
  • Gervais, Daniel (2021), ‘TRIPS Pluralism21(2) World Trade Review 1.

  • Gervais, Daniel (2022), The TRIPS Agreement: Drafting History and Analysis (5th edn, Sweet & Maxwell).

  • Mansfield, Edwin (1986), ‘Patents and Innovation: An Empirical Study32(2) Management Science 173.

  • Maskus, Keith (2000), ‘Lessons from Studying the International Economics of Intellectual Property Rights53(6) Vanderbilt Law Review 2219.

    • Search Google Scholar
    • Export Citation
  • World Trade Organization (2022), Ministerial Decision on the TRIPS Agreement, adopted on 17 June 2022 (WT/MIN(22)/30).

  • Yu, Peter K. (2006), ‘TRIPs and Its Discontents10 Marquette Intellectual Property Law Review 369.