Dianne Daley March 31 2008 IP Rights Obligations under New EU-CARIFORUM Economic Partnership Agreement Foga Daley | Intellectual Property - Jamaica Dianne Daley Intellectual Property IntroductionInnovation and IP ComponentCopyright and Related RightsTrademarks Geographical IndicationsIndustrial DesignsPatentsUtility Models Plant VarietiesGenetic Resources, Traditional Knowledge and FolkloreEnforcement and CooperationReaction to the Economic Partnership AgreementIntroductionOn December 16 2007 Jamaica, together with the other Caribbean states that form the Caribbean Forum of African, Caribbean and Pacific States (CARIFORUM), concluded a historic economic partnership agreement with the European Union. The EU-CARIFORUM Economic Partnership Agreement, the negotiations for which were launched in 2004, is the most comprehensive trade arrangement to date between the European Union and CARIFORUM. It replaces the non-reciprocal trade preferences that were given by the European Union under the Cotonou Agreement of 2000, a 20-year partnership pact entered into between the European Union and the African, Caribbean and Pacific states based on development cooperation, trade and political dialogue. The signing ceremony for the new agreement is scheduled for later in 2008. The economic partnership agreement is intended to provide a secure basis for reciprocal trading in goods and services between the trading blocs in accordance with the rules of the World Trade Organization (WTO), and to help CARIFORUM reduce poverty and achieve economic growth through sustainable trade with Europe. The agreement covers trade in goods and services, as well as trade-related issues such as innovation and intellectual property.Innovation and IP ComponentChapter 2 of Title IV of the agreement outlines the provisions in relation to innovation and intellectual property. Section 2(1) outlines the global objectives of the chapter in relation to intellectual property, which are to improve the competitiveness of CARIFORUM countries through the development of CARIFORUM innovation systems in partnership with the European Union and through access to relevant EU support programmes. Support is also to be provided for the development of CARIFORUM intellectual property, including the development of geographical indications and the protection of traditional knowledge. Article 1.3(1) of Chapter 2 provides a non-exhaustive list of the forms of IP rights covered by the agreement, namely: “copyright, including the copyright in computer programmes and neighbouring rights; utility models; patents, including patents for bio-technological inventions; protection for plant varieties; designs; layout designs (topographies) of integrated circuits; geographical indications; trademarks for goods or services; protection for databases; protection against unfair competition as referred to in Article 10a of the Paris Convention for the Protection of Industrial Property; and protection of undisclosed confidential information on know-how.”By virtue of Article 1(2), the parties agree that an adequate and effective enforcement of IP rights should: take account of the development needs of the CARIFORUM states; provide a balance of rights and obligations between rights holders and users; and allow the European Union and the signatory CARIFORUM states to protect public health and nutrition.It is further stated that nothing in the agreement will be construed as to impair the capacity of the European Union and the signatory CARIFORUM states to promote access to medicines.Article 3 of the agreement seeks to enhance regional integration on IP rights, including:“further harmonization of IP laws and regulations, further progress towards regional management and enforcement of national IP rights, as well as the creation and management of regional IP rights, as appropriate.”The substantive requirements in relation to the various forms of IP rights are outlined in Article 3(2) under the heading "Standards Concerning IP Rights". Some of these requirements are highlighted in the ensuing paragraphs. Copyright and Related RightsArticle 4(2) of the agreement requires parties to comply with the World Intellectual Property Organization (WIPO) Copyright Treaty and the WIPO Performances and Phonograms Treaty and to use their best endeavours to accede to the Rome Convention. Jamaica has met this obligation in part by virtue of its accession to the WIPO treaties and the Rome Convention. However, no implementing legislation has yet been enacted in respect of the WIPO treaties. Article 5.2(2) requires parties to facilitate the establishment of arrangements between their respective collecting societies, with the purpose of mutually ensuring easier access and delivery of licences for the use of content at the regional level throughout the territories of the European Union and the signatory CARIFORUM states, so that rights holders are adequately rewarded for the use of such content.Trademarks Article 6.1 requires that parties make electronic databases of trademark applications and trademark registrations publicly available. Jamaica’s trademark system is only partly automated and provisions in the Trademarks Act restrict the provision of information without due process. It therefore may require some legislative or regulatory adjustments to meet this obligation fully.Article 6.2 of Chapter 2 of the Economic Partnership Agreement recalls the obligations of the European Union and the signatory CARIFORUM states under the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs) to apply the concept of well-known marks to service marks. In determining whether a trademark is well known, the parties must endeavour to apply the joint recommendation adopted by the Assembly of the Paris Union for the Protection of Industrial Property and the General Assembly of WIPO at the 34th Series of Meetings of the Assemblies of the Member States of WIPO, September 20 to 29 1999. Article 6.4 obliges the European Union and the signatory CARIFORUM states to endeavour to apply the joint recommendations concerning trademark licences adopted by the Assembly of the Paris Union for the Protection of Industrial Property and the General Assembly of WIPO at the 35th Series of Meetings of the Assemblies of the Member States of WIPO, September 25 to October 3 2000.By virtue of Article 6.5, parties are to use their best endeavours to accede to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (1989) and the revised Trademark Law Treaty (2006). Jamaica is not a member of either the Madrid Protocol or the Trademark Law Treaty. Various local interest groups have put forward for the government’s consideration the possible impact that adherence to the Madrid Protocol may have on the administration of the trademarks system and the economy as a whole. Geographical IndicationsArticle 7.1(2) of Chapter 2 requires the signatory CARIFORUM states to establish a protection system by no later than January 1 2014. In addition, parties must cooperate through the CARIFORUM-EU Trade and Development Committee towards the development of geographical indications in the territories of the CARIFORUM states. This involves submitting for consideration by the committee a list of prospective geographical indications originating in the CARIFORUM states for its discussion and comments within six months of the agreement entering into force.Article 7.2(1) stipulates that the protection afforded in respect of geographical indications in the European Union and the signatory CARIFORUM states is to be granted in accordance with the legal system and practice of the European Union or the relevant signatory CARIFORUM state as the case may be, and will be indefinite. Further, Article 7.2(2) states that such protection must ensure that the use of geographical indications of goods protected pursuant to Article 7.2(1) is exclusively reserved in the European Union and the signatory CARIFORUM states to goods originating in the geographical area concerned and produced in accordance with the relevant product specifications.Article 7.3(2) declares that nothing in this section will require the European Union and the signatory CARIFORUM states to apply the protection of geographical indications referred to in Article 7.2 with respect to products of the vine, plants or animals for which the relevant indication is identical to the name of a grape variety, plant variety or animal breed existing in the territory of that signatory as of the date of entry into force of the agreement. Article 7.4 provides that a geographical indication will not be registered in the European Union or the signatory CARIFORUM states where, in the light of a trademark’s reputation and renown and the length of time for which it has been used, registration is liable to mislead the consumer as to the true identity of the product.Jamaica has already enacted legislation for the protection of geographical indications. However, protection under the law strictly complies with the standards laid out in the TRIPs Agreement and does not contemplate the ‘TRIPS-plus’ elements incorporated in the economic partnership agreement. In particular, Article 7.2(3) goes beyond Articles 22 and 23 of the TRIPs Agreement by providing uniform protection against false and misleading uses and non-misleading uses, irrespective of the class of goods in respect of which the geographical indication is used. ‘Non-misleading uses’ refers to: “any use of the protected names for goods in the same class of product as the geographical indication which do not originate in the geographical area indicated, even where: the true origin of the good is indicated; the geographical indication in question is used in translation; and the name is accompanied by terms such as 'kind', 'type', 'style', 'imitation', 'method' or other expressions of the sort.”Jamaica has yet to bring its geographical indications law into operation by way of the promulgation of necessary regulations.Industrial DesignsBy virtue of Article 8.1 of Chapter 2, the parties agree to use their endeavours to accede to the Hague Agreement for the International Registration of Industrial Designs (1999). Under Article 8.5, parties are obliged to provide protection by registration for at least five years, renewable at a cost for consecutive five-year periods for up to 25 years from the date of filing. Unregistered designs must be protected for at least three years from the date on which the design is made available to the public in one of the signatories.Jamaica provides protection for industrial designs through a registration system for a term of 15 years, non-renewable. Protection for artistic designs is provided by way of the Copyright Act. Protection of industrial designs is under revision in Jamaica by way of a draft bill which has so far been geared towards compliance with the standards of protection as outlined by the TRIPs Agreement.PatentsArticle 9.1 of Chapter 2 requires CARIFORUM states to accede the Patent Cooperation Treaty (Washington, 1970, last modified in 1984) and the Budapest Treaty on the International Recognition of the Deposit of Micro-organisms for the Purposes of Patent Procedure (1977, amended in 1980). The signatory CARIFORUM states should also endeavour to accede to the Patent Law Treaty (Geneva, 2000). Jamaica is a member of none of these treaties. However, implementation of the Patent Cooperation Treaty has been contemplated by the government in its revision of the Patent Act, which has been under discussion for a number of years, through the above-mentioned draft bill to revise both the Patent Act and the Designs Act.By virtue of Article 9.2, the parties give recognition to the importance of the Doha Declaration on the TRIPs Agreement and Public Health adopted on November 14 2001 by the Ministerial Conference of the WTO and the decision of the WTO General Council of August 30 2003 on Paragraph 6 of the Doha Declaration on the TRIPs Agreement and Public Health, and agree to take the necessary steps to accept the protocol amending the TRIPs Agreement, agreed upon at Geneva on December 6 2005. The above-mentioned draft bill contemplates the inclusion of provisions to implement the protocol.Utility Models Article 10 of Chapter 2 embodies provisions concerning the protection of utility models (also known as petty patents), which are similar to patents. The criteria for protection are that they must be new, involve some degree of non-obviousness and be capable of industrial application. Exclusions are similar to those in respect of patents as outlined in the TRIPs Agreement. Utility models are to be protected for a minimum of five years or a maximum of 10 years from the filing date or the priority date, as the case may be. Article 10.3 provides that: “All other conditions and flexibilities provided for patents in Section 5 of the WTO TRIPs Agreement shall apply mutatis mutandis [the necessary changes having been made] to utility models; in particular, any that might be required to ensure public health.”Provision is to be made for the conversion of a patent to an application for utility model protection as long as the request for conversion is made before the patent has been granted. Although existing Jamaican law does not grant protection for utility models, the above-mentioned draft bill includes provisions for such protection.Plant VarietiesArticle 11 of Chapter 2 requires the European Union and the signatory CARIFORUM states to provide for the protection of plant varieties in accordance with the TRIPs Agreement and to consider in this connection accession to the International Convention for the Protection of New Varieties of Plants (Act of 1991). The article also allows for exceptions to exclusive rights granted to plant breeders “to allow farmers to save, use and exchange protected farm-saved seed or propagating material”. Jamaican law does not yet provide protection for new plant varieties and such protection is not contemplated under the proposed revisions to the Patent Act. However, it is anticipated that new plant varieties will be protected under new or sui generis legislation in Jamaica.Genetic Resources, Traditional Knowledge and FolkloreArticle 12(1) of Chapter 2 outlines the commitment of the parties, subject to their domestic legislation, to: respect, preserve and maintain knowledge, innovations and practices of indigenous and local communities embodying traditional lifestyles relevant for the conservation and sustainable use of biological diversity; promote their wider application with the involvement and approval of the holders of such knowledge, innovations and practices; and encourage the equitable sharing of the benefits arising from the utilization of such knowledge, innovations and practices.By virtue of Article 12(2), the European Union and the signatory CARIFORUM states agree to continue working towards the development of internationally agreed sui generis models for the legal protection of traditional knowledge and to implement the patent provisions and the Convention on Biological Diversity in a mutually supportive way.The exchange of views and information on relevant multilateral discussions such as the issues dealt with in the framework of the WIPO Inter-governmental Committee on Genetic Resources, Traditional Knowledge and Folklore and those concerning the relationship between the TRIPs Agreement and the Convention on Biological Diversity, the protection of traditional knowledge and folklore is also mandated by Article 12.5. Article 12 is to be reviewed within the joint CARIFORUM-EU Council at the request of the European Union or a signatory CARIFORUM state further to the conclusion of these multilateral discussions.Enforcement and CooperationChapter 2(3) outlines detailed provisions on the enforcement of IP rights similar to the TRIPs Agreement and Chapter 2(4) outlines provisions on cooperation “directed at supporting implementation of the commitments and obligations undertaken”.Reaction to the Economic Partnership AgreementSince the completion of the negotiations, questions have been raised about the care with which the economic partnership agreement was negotiated, as well as about the consultations that preceded the formulation of regional positions adopted in the negotiations. In this respect, the heads of CARIFORUM agreed on a negotiating strategy and under their guidance, the Caribbean Community (CARICOM) Council for Trade and Economic Development and the region’s negotiators were able to arrive at negotiating positions reflective of the combined interests of stakeholders across the region. A wide range of actors participated in this process, including government representatives, private sector agents and non-state actors. The overall strategy was formulated from the combined inputs of the participating stakeholder groups obtained from the national consultations and the national technical working groups. This strategy was then implemented by the Economic Partnership Agreement College of Negotiators and Caribbean Regional Negotiating Machinery (CRNM) technical negotiating staff.Principal negotiator for CARIFORUM and CRNM’s Director General Ambassador Dr Richard Bernal described the conclusion of the economic partnership agreement as “a momentous and proud achievement for the region”. According to Bernal, the agreement has secured opportunity for trade expansion, economic development and the improvement of the welfare of the CARIFORUM people. Further, the flexibilities secured “will give CARIFORUM countries the time to adjust to the brunt of liberalization”. At the 19th Inter-sessional Meeting of the Conference of Heads of Government of CARICOM held in Nassau, Bahamas on March 7 and 8 2008, the heads noted that: “a number of member states were still examining the text of the Economic Partnership Agreement, which in some cases would require the tabling of this agreement in national parliaments, and committed themselves to take the necessary steps to complete these internal consultations in a timely manner to facilitate signature and provisional applications of the agreement by June 30 2008.”The economic partnership agreement provisions on intellectual property will take effect when the agreement comes into force. The implementation of the IP commitments in Jamaica will undoubtedly require revision of existing legislation and possibly the enactment of new legislation. The full impact of the agreement on the IP rights regime in Jamaica therefore remains to be seen.For further information on this topic please contact Dianne Daley at Foga Daley & Co by telephone (+876 927 4371) or by fax (+876 927 5081) or by email ([email protected]).