New Ideas Coming For WTO TRIPS Council; But Also Old Debate Over EU Drug Seizures 09/06/2016 by Catherine Saez, Intellectual Property Watch Leave a Comment Share this:Click to share on Twitter (Opens in new window)Click to share on LinkedIn (Opens in new window)Click to share on Facebook (Opens in new window)Click to email this to a friend (Opens in new window)Click to print (Opens in new window)The European Union presenting its new Trademark Directive during this week’s meeting of the World Trade Organization intellectual property council heard concerns of possible seizures of generic medicines transiting through Europe. Meanwhile, the new Council chair’s attempts at revitalising discussions between member states received general approval. And a new agenda item on e-commerce was launched. The WTO Council for Trade-Related Aspects of Intellectual Property Rights (TRIPS) took place from 5-6 June. The European Union presented the new EU Trademark Directive of December 2015. According to the EU statement, “the main objectives of the trademark reform were to foster innovation and economic growth by making trademark systems all over Europe more accessible, efficient and effective for businesses and to ensure and develop coexistence and complementarity between the EU and national trademark systems.” The “Recast Directive” (EU) 2015/2436 [pdf] to approximate the laws of the member states relating to trademarks entered into force on 12 January 2016, the EU delegate said, and member states need to transpose it by 14 January 2019. Regulation (EU) 2015/2424 [pdf] amending Regulation 207/2009 also entered into force on 23 March 2016, he said. The new regulation introduced clear provisions on designation and classification of goods and services, the EU delegate said. The EU also explained the prevention of counterfeit goods passing through customs. “Stronger means to fight against counterfeiting in customs situation were introduced. It is permissible for trademark owners to prevent the entry of infringing goods and their placement in all customs situations, also when such goods are not intended to be placed on the market of the relevant Member State,” he said, according to his prepared statement. “The entitlement of [the] trademark owner lapses if the declarant or holder of goods is able to prove that the trademark owner is not entitled to prohibit the placing of the goods on the market in the country of final destination,” he added. “The new EU Trademark law does not impede access by patients – and in particular those from developing and least-developed countries – to legitimately traded medicines transiting through the EU territory,” the EU said. “According to EU law, the proprietor of a trade mark would only be entitled to stop goods that bear a trade mark which is identical to the European Union trade mark: this is to say, goods could be stopped only if they infringe existing trade mark laws, which is a fraudulent activity sanctioned by all IPR systems in the world, including in India,” the delegate said, adding that the EU is fully committed to “all the efforts made to facilitate access to medicines for countries in need.” Generic Producers/Receivers Concerned over EU Legislation Despite the EU explanations, some countries expressed concern about the new legislation as not having sufficient safeguards to prevent detention of legitimate generic medicines transiting through Europe. India remarked that the Directive amended outdated provisions, increasing legal certainty and clarifying trademark rights. However, said the Indian delegate in his statement, “India feels that some of the provisions in the regulation allow EU authorities to confiscate/seize goods, originating from one country and destined for a third country, while in transit through the EU and apparently without the need for any evidence or any suspicion that it would be imported into the EU market.” “We feel that these provisions will have profound impact on the access to affordable generic medicines in many countries, as the provisions in the New Trademark Regulation could create barriers to legitimate generic medicines in transit through EU,” the statement said. From the text of the directive and regulation, India said, “it appears that an exception is being created for the purposes of ‘generics’ but the same is limited to the active ingredients with international non-proprietary names (INNs) and not to the generic medicines in transit.” India noted the abstention from voting of the Netherlands at the EU Council of Ministers in November 2015 and its statement about the provisions introducing the possibility to detain goods on account of possible infringement of a national or EU trademark, where those goods are in transit through EU territory (IPW, Europe, 10 November 2015). The new EU regulation and Directive on trademarks appears “to violate Articles 16 [Rights Conferred], 51 [Suspension of Release by Customs Authorities] and 52 [Application] of the TRIPS Agreement, to the extent that the measure in question fails to make a categorical distinction between goods in-transit that pose a risk of diversion into the EU market and those that do not,” India said. Brazil said the “issue of abuse of enforcement actions of intellectual property rights on goods in transit is unfortunately not a new one in this Council,” referring to the detained shipment by the Netherlands of generic medicines from India and destined to Brazil in December 2008 (IPW, WTO/TRIPS, 3 February 2009). “Rules in WTO Agreements treat freedom of transit as a basic tenet. While Parties may require the compliance of some provisions by goods in transit, they shall not be subject to unnecessary delays or restrictions,” the Brazilian delegate said, according to his statement. Many questions arise about the EU’s recent regulations, he said. “[W]e have specific concerns as to the burden on the proprietor of legitimate goods in transit to prove that they do not infringe any trademark right,” he said. “Contrary to what would be expected in such conditions, it is the proprietor of the good that is responsible to provide evidence that the proprietor of the EU trade mark is not entitled to prohibit the placing of the goods on the market in the country of final destination.” There are few or no safeguards against the abuse of enforcement procedures in the EU Regulation, he said. “It is not clear how proprietors of goods targeted by illegal and/or illegitimate enforcement procedures should proceed in order to redress the eventual commercial damages caused by the suspension of release of such goods.” However, he said, right-holders initiating an enforcement procedure have “considerable leeway when deciding to pursue their rights or not…” China, South Africa and Indonesia also delivered expressed concerns about the EU regulations, according to a source. According to a source, the EU responded that specific provisions were included in the Trademark Directive to prevent any undue detention of pharmaceutical shipments in transit and remarked that the incident in the Netherlands in 2008 has never been repeated. The EU also remarked that other countries, for example Brazil, have similar measures allowing customs to seize illegal goods, and the Directive does not give authority to national customs agents to seize shipments in transit without evidence of illegal acts, according to the source. New Dynamic Sought by Chair in TRIPS Discussions The draft agenda of the TRIPS Council this week indicated that new TRIPS Council Chair, Amb. Modest Jonathan Mero of Tanzania, might provide suggestions on how to revitalise TRIPS Council meetings and make them more productive, according to a source. According to Mero, a different method was used this week to promote engagement of member states, in particular by using informal consultations. On all subjects, he told Intellectual Property Watch, informal discussions were held, followed by formal discussions. Member states are entrenched in their positions, he said, some for over 20 years. Those positions do not take the evolution of the world into account, he said. Informal discussions are meant to encourage member states to listen to new thinking. “This session has been very informative,” he said, as member states heard new ideas and new information and might reassess their positions as a result in the next session. “People were energised,” in the session this week, he said. According to sources from developing countries, the process might change but positions need to shift so that discussions yield progress. Non-Violation Complaints The TRIPS agenda also included further discussions on so-called non-violation complaints, in which “countries can bring cases against each other if one feels that another government’s action or a specific situation has deprived it of an expected benefit, even if no agreement has been violated,” according to the WTO. Member states are expected to find agreement on whether to permanently extend a moratorium exempting TRIPS from the non-violation complaints mechanism. According to several sources, no progress was made on this topic. The United States and Switzerland are of the opinion that such complaints should be permitted under TRIPS. Most other countries are in favour of extending the moratorium permanently. According to a source, the same positions were held this week, with Canada and South Korea voicing concern about bringing non-violation complaints under TRIPS, as well as a number of developing countries. Another source told Intellectual Property Watch that some developed countries, resisting the definite extension of the moratorium, were concerned about unfair competition issues. E-Commerce as New Subject for TRIPS Council Canada, in a communication [pdf] dated 26 May, suggested that the Council start discussion on global e-commerce. Canada said that such discussions could allow members to share national experiences and practices on IP and e-commerce issues in light of the rapid growth in digital technology and telecommunications as facilitators of commerce, according to a source. At the last session of the TRIPS Council in March, the chair remarked on the decision on e-commerce of the December 2015 Ministerial Conference, and encouraged members to consider how best to resume work on the matter, according to the minutes of the meeting [pdf]. Several delegates told Intellectual Property Watch that the suggestion by Canada had been well received. According to a source, India warned against any broad interpretation of the mandate and said the talks should be of an exploratory nature only. The source said a number of delegations did not want e-commerce to be a standing item on the TRIPS Council agenda. Mero told Intellectual Property Watch that the item could be on the agenda on an ad hoc basis, if Canada or another delegation proposes it in future sessions. Image Credits: WTO, WTO Share this:Click to share on Twitter (Opens in new window)Click to share on LinkedIn (Opens in new window)Click to share on Facebook (Opens in new window)Click to email this to a friend (Opens in new window)Click to print (Opens in new window) Related Catherine Saez may be reached at email@example.com."New Ideas Coming For WTO TRIPS Council; But Also Old Debate Over EU Drug Seizures" by Intellectual Property Watch is licensed under a Creative Commons Attribution-NonCommercial-ShareAlike 4.0 International License.