Discussion On Counterfeits With A Flavour Of Rum At WTO TRIPS Council

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Intellectual property enforcement was discussed at yesterday’s session of the World Trade Organization council on IP-related issues in two different contexts, both involving the United States. Cuba complained about the US failure to comply with a 10-year-old ruling on a Cuban rum brand name, and the US added an agenda item on enforcement against counterfeit goods, both of which created some stir.

The WTO Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) Council met on 5 June.

The US had asked for a new agenda item on the exchange of information on securing supply chains against counterfeit goods. The agenda item had to be amended, as proposed by China, according to a source, so that “goods” was replaced by “trademarks” to match footnote 14 of TRIPS Article 51 (Suspension of Release by Customs Authorities) which gives a definition of counterfeit trademark goods.

New papers on the issues and challenges posed by counterfeit goods were circulated by the United States [pdf] and Japan [pdf].

The US paper said trademark counterfeiting results in economic losses but also “can pose a serious threat to the health and safety of consumers.” According to the US paper, the aim of the agenda item is to “promote an exchange of information that can help eliminate counterfeits from the global supply chain.”

The paper from Japan aimed to share Japan’s experiences with IP rights enforcement at the border with other members and “contribute to provide some insights into Members’ border measures against counterfeits and pirated good.”

Call for No Collusion between IP Rights, Security

India, Brazil and China made statements, warning against confusion between security issues and IP enforcement issues.

In its statement [pdf], India said that “the TRIPS Agreement itself makes no connection between ‘counterfeit’ and issues of quality and safety. IP rights including trademark rights are not granted on the basis of quality and safety of a product.”

The Indian statement also challenges some findings presented by the US on the evaluation of counterfeit economic losses and notes that “the word counterfeiting has been used in a very loose fashion,” in reference to a study mentioned in the US paper. For example, India said that in a specific article cited in the paper, “what the authors mean as counterfeit is a broad category of drugs that are substandard, spurious, falsified, falsely labelled and counterfeit products where there may or may not be an infringement of the IPRs.”

This issue has come up repeatedly at the World Health Organization, and a new member state mechanism for international collaboration [pdf] was adopted at the World Health Assembly in May (IPW, WHO, 26 May 2012). The mechanism “will also address issues pertaining to the supply chain,” the Indian statement said.

The Brazilian statement [pdf] said the issue of enforcement is not a permanent agenda item of the TRIPS Council, and only appears at the request of member states. During previous sessions of the Council, the plurilateral Anti-Counterfeiting Trade Agreement (ACTA) was discussed (IPW, WTO/TRIPS, 26 October 2011). ACTA, which is being negotiated outside the WTO, was not on the agenda item of the Council for this session.

The document circulated by the US “is not confined to counterfeit goods, as defined by the TRIPS agreement and applicable to violations of trademarks,” the Brazilian statement said, adding that the document confused counterfeit goods with substandard ones. “The fact remains that counterfeit and substandard and concepts applicable to different realities that only occasionally overlap,” Brazil said.

According to a source, other developed countries shared the US and Japan’s concerns about counterfeiting and piracy, and their relation to safety, including Canada, the European Union, Korea, and Switzerland, along with Mexico.

US Alleged to Flaunt WTO Ruling, Failing to Protect Cuban Trademark

Cuba, catching the enforcement ball, under the “other business” agenda item claimed the continuous usurpation of a well-know Cuban trademark, even after a 10-year-old ruling by the WTO.

A WTO dispute settlement ruling [pdf], recommended that Section 211 of the US Omnibus Appropriations Act be brought into conformity with TRIPS and the Paris Convention for the Protection of Industrial Property. Cuba alleged that the US has not taken any action to solve the problem since then.

At stake is the Cuban “Havana Club” trademark being used by the company Bacardi within the United States. According to Cuba, the Cuban firm CUBAEXPORT obtained a trademark on the commercial name of its rum Havana Club in the US, and renewed it until 2006 at the United States Patent and Trademark Office, at which date it could not renew the trademark registration, as a consequence of the section 211 of the US Omnibus Appropriations Act.

More recently, Cuba said, on 14 May, the US Supreme Court rejected a request from CUBAEXPORT to have its case reviewed so that its mark, which had been registered in the country for over 30 years, could be registered again, the source said. Cuba added that in contrast, it has respected its obligations in the area of intellectual property, protecting over 5,000 US trademarks and patents.

According to a source, a number of countries supported Cuba, including Bolivia, China, Ecuador,Venezuela and Viet Nam. Cuba asked for the issue to be put on the agenda for the next meeting, and the source said the US is anticipating the discussion on the issue.

Brazil and the US Join Voices on Copyright

Separately, Brazil and the US each presented a briefing on the ongoing discussions at the World Intellectual Property Organization on exceptions and limitations to copyright. This followed an April visit from Brazilian president Dilma Rousseff to the United States and a joint statement by Rousseff and US president Barack Obama. Rousseff was on an official visit on 9 April 2012 to “discuss their countries’ ongoing relationship on a broad range of bilateral, regional, and multilateral issues,” according to the statement.

The joint statement stated: “The Presidents reaffirmed the commitment of both countries to the conclusion of an effective international instrument in the World Intellectual Property Organization that ensures that copyright is not a barrier to equal access to information, culture, and education for visually impaired persons and persons with print disabilities.”

Brazil in its TRIPS Council briefing [pdf] called for a potential “Diplomatic Conference to be convened with the aim of concluding the negotiation of an international instrument that will benefit persons with print disabilities.”

Discussion Idle on Relationship between TRIPS and CBD

Also at the meeting, positions were reaffirmed on the question of the relationship between TRIPS and the United Nations Convention on Biological Diversity (CBD), and discussions cut short, according to several sources. One of the major issues is a presentation to be made by the Secretariat of the CBD to the TRIPS Council on the 2010 Nagoya Protocol on Access to Genetic Resources and the Fair and Equitable Sharing of Benefits Arising from their Utilization to the Convention on Biological Diversity, requested by some developing countries, such as India and China, and resisted by other countries, such as the United States, which is not a member of the CBD.

Five countries now have ratified the Nagoya Protocol (Gabon, Jordan, Rwanda, the Seychelles, and on 16 May Mexico), according to a recent CBD press release [pdf]. The protocol will enter into force 90 days after the deposit of the fiftieth instrument of ratification. The protocol has 92 signatories. The US had argued in a previous meeting of the TRIPS Council that the instrument was a long way from entering into force, thus a presentation by the CBD Secretariat was uncalled for.

Another issue in the Council is the potential review of Article 27.3(b) of the TRIPS so that the origin of the genetic material be disclosed in patent applications. Bolivia reiterated its proposal [pdf] (in Spanish) to review the article in an effort to prohibit all forms of patenting of life at the international level.

The next TRIPS Council is expected take place from 6-7 November.

Catherine Saez may be reached at info@ip-watch.ch.

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