Trademarks under TRIPS

Historically trademarks were about goods but now services are specifically being included.  Article 15 recognizes the Paris Convention on protection of trade marks which gives as the idea of well known marks or notorious marks.

Article 16 marks must be protected for at least 7 years.  TRIPS gave minimum standards to trademarks.  It conferred certain rights to trademark owners.

Article 17 – allowed limited exceptions to the exclusive rights

Article 21 – provided general framework for licences and assignments and emphasises that there can be no compulsory licensing in the case of trademarks.  The rationale here being trademarks are about trade and to allow compulsory licensing in this area is to undermine the trademark owner. It also confirms that one can transfer their business without necessarily transferring their mark.

Trademark became a precondition of maintaining registration. If one does not use a mark for 3 years it can be expunged.  Case of Drum Magazine. 

In defence of abandoning a trademark, one can argue that where a mark had been notorious and therefore state protected.  On the other hand if the mark has not been used for 12 years, the owners have slept on their rights and equity does not protect the indolent but protects the diligent and therefore abandonment is as good as cancellation.  There can be arguments on both sides.

Trademark, copyright, patent are territorial so for example if Drum was not being used in Kenya, it can be said to have died in Kenya. 

Kenya imposes trademark protection for 10 years.    TRIPS sets a minimum protection time of 7 years.  In PATENTS it is 20 years in Kenya and in copyright it is indeterminate it is for life.

Undisclosed information – this trade secrets related to undisclosed information under Article 39.  It is also closely related to the idea of controlling Intellectual Property

Article 40 –

Geographical Indications – GIs are being debated quite a lot.  TRIPS issue that are controversial are patents and Geographical Indications this is partly because countries have realised that they did not take interest to protect their own interests.

Article 25 –

Goldstein sees a lot of advantages in TRIPS in that it seeks to address a lot of mischief in International IP law since before 1991 there were no substantive binding minimum standards in Patent, copyright, Trademark and IP Law.

Paris Convention did not bind states to have specific standards in patents.  It was not strict on issues of patent rights and we had a chaotic regime, some countries like US had 17 years before TRIPS after TRIPs  it became 20 years, US added 3 years the time they estimated it would take from application of a patent to grant.  There were no substantive issues on patenting, Japan could refuse to patent explosives but after Diamond and Chakrabaty things changed.

TRIPs has provide to criminal and civil enforcement procedures which were lacking before.  before TRIPs, if ones patent was infringed by other countries one could only try to take the matter to the UN where UN could use diplomacy to try and resolve the issue.  One could also take the matter to the ICJ but decisions of ICJ matter if all parties are willing to be bound.  TRIPs brought in procedural requirements regarding how one could acquire, maintain and register patents, trademarks etc.

Goldstein has argued that the magic or wisdom of TRIPs was that before there were no clear enforcement mechanism, now there is a Dispute Settlement Mechanism and even an Appeal.

Sihanya’s issues – some of the issues are that TRIPs is only enforcing Western Standars and Patent terms are American Standards, where is forklore, Traditional Knowledge?  There are no utility models under TRIPs.  This is partly because America said that utility models are a dilution of patents.

TRIPs is a patchwork of various agreement,  articles 9, 10, 11, 12, 13 14 dealing with © deal with Berne Principles and does not say what they want to protect, they borrow some of the Berne principles but reject moral rights.  in Patent law they adopt some of the articles of Paris but not others, it is truly a patchwork.

When TRIPs comes to form in Kenya (January 2000)  developing countries argue that they have other challenges facing them that they have to sort out before they can comply with TRIPS requirements.  They were asking for realistic standards that all countries could easily comply with instead of graduated compliance.  There has been a huge debate in the idea of compliance in that the terms of TRIPs are onerous and burdensome, they should be made less onerous to developing countries but US is saying they can only review how TRIPs can be implemented while developing countries are saying that they should make compliance less onerous.  Western want review of TRIPs and they want to add new issues. 

Implementation of TRIPs have serious implication, it requires administrative reforms and these are debatable issues, sovereign countries do not want to be told how to reform their administrative and judicial systems.  Trying to direct a country on political and judicial decision making is not easy it is tantamount to interfering with the sovereignty of a country.


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