The Protection Against Unfair Competition in the WTO TRIPS Agreement : The Scope and Prospects of Article 10bis of the Paris Convention for the Protection of Industrial Property [1 ed.] 9789004313477, 9789004313484

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Protection Against Unfair Competition

World Trade Institute Advanced Studies Series Editor Thomas Cottier Editorial Board Krista Nadavukaren Schefer Debra Steger Markus Krajewski Rosa Lastra Mira Burri Joseph Francois Manfred Elsig

VOLUME 2

The titles published in this series are listed at brill.com/wtia

Protection Against Unfair Competition in the wto trips Agreement The Scope and Prospects of Article 10bis of the Paris Convention for the Protection of Industrial Property By

Christian Riffel

LEIDEN | BOSTON

Library of Congress Cataloging-in-Publication Data Names: Riffel, Christian, author. Title: Protection against unfair competition in the WTO TRIPS Agreement : the scope and prospects of Article 10bis of the Paris Convention for the Protection of Industrial Property / by Christian Riffel. Description: Leiden : Brill ; Boston : Nijhoff, 2016. | Series: World Trade Institute advanced studies ; v. 2 | Includes bibliographical references and index. Identifiers: LCCN 2016022625 (print) | LCCN 2016023146 (ebook) | ISBN 9789004313484 (hardback : alk. paper) | ISBN 9789004313477 (E-book) Subjects: LCSH: Industrial property (International law) | Competition, Unfair. | Paris Convention for the Protection of Industrial Property (1967 July 14) | Agreement on Trade-Related Aspects of Intellectual Property Rights (1994 April 15) Classification: LCC K1500.A35 R54 2016 (print) | LCC K1500.A35 (ebook) | DDC 346.04/8--dc23 LC record available at https://lccn.loc.gov/2016022625

Typeface for the Latin, Greek, and Cyrillic scripts: ‘Brill’. See and download: brill.com/brill-typeface issn 2405-9331 isbn 978-90-04-31348-4 (hardback) isbn 978-90-04-31347-7 (e-book) Copyright 2016 by Koninklijke Brill nv, Leiden, The Netherlands. Koninklijke Brill nv incorporates the imprints Brill, Brill Hes & De Graaf, Brill Nijhoff, Brill Rodopi and Hotei Publishing. All rights reserved. No part of this publication may be reproduced, translated, stored in a retrieval system, or transmitted in any form or by any means, electronic, mechanical, photocopying, recording or otherwise, without prior written permission from the publisher. Authorization to photocopy items for internal or personal use is granted by Koninklijke Brill nv provided that the appropriate fees are paid directly to The Copyright Clearance Center, 222 Rosewood Drive, Suite 910, Danvers, ma 01923, usa. Fees are subject to change. This book is printed on acid-free paper and produced in a sustainable manner.

He who wants to recognize justice must have had the right sort of doubts in the first place. Aristotle (384–322 bc)

∵

Contents Preface ix Acknowledgments xi Abbreviations xii Table of Cases xviii Source Guide  xlv Table of Documents l 1 Introduction 1 i Description of the Problem 7 ii Interpretation of wto Provisions 11 iii Course of the Legal Analysis 14 2 Article 10bis and the wto 17 i Article 2.1 of the TRIPS Agreement 17 A Incorporation of Article 10bis of the Paris Convention (1967) 17 B Static Reference 43 ii Article 10bis(1) and (2) of the Paris Convention (1967) 47 A General Issues 48 B Act of Competition 74 C Practices in Industrial or Commercial Matters 87 D Honesty Standard 88 3 Article 10bis and Core Labour Standards 107 i Breach of Law as an Act of Unfair Competition 107 A Qualification of the Breached Law 109 B Conclusion: Juridical-Economic Standard 119 ii Enforcement of Core Labour Standards by Article 10bis of the Paris Convention 121 A Mandatory Nature of Core Labour Standards 121 B Competition and Trade Relatedness of Core Labour Standards 122 C Enforcement of Core Labour Standards 127 iii Conclusions 129 4 Article 10bis and Traditional Knowledge 134 i Introduction 134 A Description of the Problem 136 B The Traditional Knowledge Debate 141

viii

Contents

ii Contract-Based Protection 159 iii Protection by Article 39 of the TRIPS Agreement 162 A  Elements of Article 39.2(a) through (c) of the TRIPS Agreement 164 B Conclusions 171 iv Protection by Article 10bis of the Paris Convention 172 A General Matters 173 B Misappropriation as an Act of Unfair Competition 185 C Defensive Protection 231 v Conclusions 242 5 Article 10bis and the European Union 250 i Introduction 250 ii Requirements Relating to the Norm 254 iii Constitutional Requirements 256 iv Requirements Relating to the Treaty 260 A Stance of the European Court of Justice 260 B Critique 264 v Conclusions 270 6 Final Conclusions 273 Bibliography 291 Index 325

Preface This book sounds out the potential of Article 10bis of the Paris Convention (1967) for the world trading system. In particular, it explores possible cases of application of the general clause in paragraph 2 to subject matters like core labour standards and traditional knowledge. Article 2.1 of the trips Agreement incorporates Article 10bis of the Paris Convention (1967) into the wto system and thus obliges the wto Members ‘to assure … effective protection against unfair competition’. This changes the perspective. To date, Article 10bis of the Paris Convention has been mainly treated by ip lawyers, not wto lawyers. The wto enforcement mechanism provides international unfair competition law with the thrust it lacks under the Paris regime. The previous weakness of international protection against unfair competition, however, does not only result from the lack of an effective enforcement mechanism. The prevailing view under the Paris regime reads paragraph 2 of Article 10bis of the Paris Convention (1967) as relating to national standards. That is to say, the competence to define ‘honest practices’ is held to be a national one. As a consequence, it seems a hopeless endeavour to take legal action against another country of the Paris Union before the International Court of Justice pursuant to Article 28 of the Paris Convention for failure to comply with Article 10bis of that Convention. It is therefore no surprise that this never happened. Considering the imperative of autonomous treaty interpretation and the approach of the wto Appellate Body since the us – Gasoline case to ‘give meaning and effect to all terms of a treaty’, it is fair to assume that the Appellate Body will approve of the normative nature of paragraph 2 of Article 10bis of the Paris Convention (1967), as incorporated into the trips Agreement, and treat it as an operative norm bringing about hard law obligations, not merely as a legal definition. The nub of the matter is, of course, which hard law obligations emerge from it. Since there is no case law (yet), wto Members are hesitant to rely on the incorporated provision. This book aims to resolve this uncertainty, and thus pave the way for making Article 10bis of the Paris Convention (1967) operational de lege lata. Mounting an a fortiori argument bolstered by a comparison of national legal orders, it makes a case for the inclusion of breach of competitionrelated rules within the ambit of paragraph 2 in conjunction with paragraph 1 of Article 10bis of the Paris Convention (1967). Construed in this way, the doctrine of unfair competition can serve as a valuable concept to tackle new legal problems ‘in the course of trade’. In national law, it has been fulfilling this purpose for a long time. The theory is put to the test with a view to examining to what extent Article 10bis of the Paris Convention (1967) can fulfil the same purpose at the international level.

x

Preface

Here, the protection of traditional knowledge takes centre stage, and the question whether Article 10bis of the Paris Convention (1967) may form a legal basis to this effect is answered; positive as well as defensive protection are addressed. The book at hand is thus intended to make a worthwhile contribution to the ongoing discussions within the trips Council and the wipo Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore. Furthermore, this book sheds light on the implications of Article 10bis of the Paris Convention (1967), read in conjunction with Article 2.1 of the trips Agreement, for the European Union. Direct effect and consistent interpretation are the keywords. The delimitation of competences between the European Union and its Member States plays a vital role in that regard.

Acknowledgments A work like this would not have been possible without the support of family and friends. I am most thankful to Prof Thomas Cottier for having given me this opportunity. For me as your student, you are a constant source of inspiration and motivation. It is true that in the long run nothing can keep us motivated like the joy we take in what we do. In this, Prof Cottier is a great example for his students. I remember very well what he said at our first meeting in Bern: that I would learn a lot during this time. How right he was, and law was only a part of it. Doing this research project has been the most significant time in my life so far, most of all because it has become clearer to me what I want to do. At the beginning I made the fundamental decision not to write in my mother tongue. From there, all other things fell into place. In retrospect, I owe a lot to the PhD system at the University of Bern, which is characterized by great freedoms, mutual trust between supervisor and doctoral candidate, and an administration one can rely on. My journey has been accompanied by the most wonderful people at the Max Planck Institute for Innovation and Competition in Munich, the script Centre at the University of Edinburgh, and last but not least the Institute of European and International Economic Law at the University of Bern. In particular, I would like to thank the Max Planck Society for granting me a scholarship; Prof Frauke Henning-Bodewig, Prof Reto Hilty and Prof Ansgar Ohly for their input and helpful advice; Emma Gondwe and Dr Jacob Jaconiah for giving me another perspective; and Dr James Harrison for the inspiring discussions at our ‘Edinburgh wto Roundtables’. Along the way I experienced friendship and love, which fills my heart with gratitude. Special thanks go to Dr Carol George and Dr Laurence Sullivan for accommodating me in Edinburgh as well as to Bobby Anderson and Lynn Whitehead from St Colm’s, where I drafted the main part of this treatise and found my love. Thanks to all who asked critical questions about my work, especially during the annual doctoral workshops, or gave me a good word when I needed it. Both helped me along.

Abbreviations acwl African Model Legislation

aippi Anti-Dumping Agreement aripo asil Audiovisual Media Services Directive

Bangui Agreement

Berne Convention Bonn Guidelines

Brazilian Law No. 13.123

Bundesgerichtshof c.j. cafta-dr cbd coica

Advisory Centre on wto Law  frican Model Legislation for the Protection of the Rights A of Local Communities, Farmers and Breeders, and for the Regulation of Access to Biological Resources International Association for the Protection of Industrial Property Agreement on Implementation of Article vi of the General Agreement on Tariffs and Trade 1994 African Regional Intellectual Property Organization American Society of International Law Directive 2010/13/eu of the European Parliament and of the Council of 10 March 2010 on the coordination of certain provisions laid down by law, regulation or administrative action in Member States concerning the provision of audiovisual media services Agreement Relating to the Creation of an African Intellectual Property Organization, Constituting a Revision of the Agreement Relating to the Creation of an African and Malagasy Office of Industrial Property Berne Convention for the Protection of Literary and Artistic Works Bonn Guidelines on Access to Genetic Resources and Fair and Equitable Sharing of the Benefits Arising out of their Utilization Law No. 13.123 of 20 May 2015 (Access and Benefits Sharing of Genetic Resources and Associated Traditional Knowledge) German Federal Court of Justice Chief Justice Dominican Republic-Central America-United States Free Trade Agreement Convention on Biological Diversity Coordinadora de las Organizaciones Indígenas de la Cuenca Amazónica

Abbreviations

xiii

eu Trade Mark Regulation

Regulation (eu) 2015/2424 of the European Parliament and of the Council of 16 December 2015 amending Council Regulation (ec) No. 207/2009 on the Community trade mark Directive 2001/29/ec of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society Council Regulation (ec) No. 6/2002 of 12 December 2001 on Community designs

Copyright Directive

Council Regulation on Community designs d.j. Database Directive

Decision No. 391 Decision No. 486 Directive on electronic commerce

Directive on privacy and electronic communications Dist. Doha Declaration on trips and Public Health Doha Ministerial Declaration drips dsb dsu e.d. ec echr

District Judge Directive 96/9/EC of the European Parliament and of the Council of 11 March 1996 on the legal protection of databases Decision 391 of the Commission of the Andean Community on a Common Regime on Access to Genetic Resources Decision 486 of the Commission of the Andean Community on a Common Intellectual Property Regime Directive 2000/31/EC of the European Parliament and of the Council of 8 June 2000 on certain legal aspects of information society services, in particular electronic commerce, in the Internal Market Directive 2002/58/EC of the European Parliament and of the Council of 12 July 2002 concerning the processing of personal data and the protection of privacy in the electronic communications sector District Declaration on the trips Agreement and Public Health, wto Doc WT/MIN(01)/DEC/2 (20 November 2001), adopted on 14 November 2001 w to Doc WT/MIN(01)/DEC/1 (20 November 2001), adopted on 14 November 2001 United Nations Declaration on the Rights of Indigenous Peoples Dispute Settlement Body Dispute Settlement Understanding Eastern District European Community/Treaty Establishing the European Community European Court of Human Rights

xiv ecj ecosoc Ethiopian Proclamation No. 482/2006 fao fta gats gatt gdr grulac gtz Havana Charter icc iccpr icescr ich Convention icj icj Statute icrier ictsd iddri ielpb igc iisd ilc ilo ilo Convention 100 ilo Convention 105 ilo Convention 111 ilo Convention 169 ilo Convention 182 ilo Declaration

Abbreviations Court of Justice of the European Union Economic and Social Council Access to Genetic Resources and Community Knowledge, and Community Rights Proclamation No. 482/2006 Food and Agriculture Organization of the United Nations Free Trade Agreement General Agreement on Trade in Services General Agreement on Tariffs and Trade German Democratic Republic Group of Countries of Latin America and the Caribbean Deutsche Gesellschaft für Technische Zusammenarbeit Havana Charter for an International Trade Organization International Chamber of Commerce International Covenant on Civil and Political Rights International Covenant on Economic, Social and Cultural Rights u nesco Convention for the Safeguarding of the Intangible Cultural Heritage International Court of Justice Statute of the International Court of Justice Indian Council for Research on International Economic Relations International Centre for Trade and Sustainable Development Institute for Sustainable Development and International Relations International Economic Law and Policy Blog Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore International Institute for Sustainable Development International Law Commission International Labour Organization Equal Remuneration Convention Abolition of Forced Labour Convention Discrimination (Employment and Occupation) Convention Indigenous and Tribal Peoples Convention Worst Forms of Child Labour Convention i lo Declaration on Fundamental Principles and Rights at Work

Abbreviations imf indecopi Indigenous Peoples’ Statement on trips ins Intro ip ipr ise itlos ito itpgrfa J. j.c.a. l.j. Lisbon Agreement Madrid Agreement Mataatua Declaration mcad

mfn mpepil nafta Nagoya Protocol

ngo nsw oecd Pacific Model Law

xv International Monetary Fund National Institute for the Defense of Competition and Protection of Intellectual Property Indigenous Peoples’ Statement on the TradeRelated Aspects of Intellectual Property Rights (trips) of the wto Agreement International News Service Introduction Intellectual property Intellectual property right International Society of Ethnobiology International Tribunal for the Law of the Sea International Trade Organization fao International Treaty on Plant Genetic Resources for Food and Agriculture Justice Judge of Court of Appeal Lord Justice Lisbon Agreement for the Protection of Appellations of Origin and their International Registration Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods Mataatua Declaration on Cultural and Intellectual Property Rights of Indigenous Peoples Directive 2006/114/EC of the European Parliament and of the Council of 12 December 2006 concerning misleading and comparative advertising (‘Misleading and Comparative Advertising Directive’) Most Favoured Nation Max Planck Encyclopedia of Public International Law North American Free Trade Agreement 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 Non-governmental organization New South Wales Organisation for Economic Co-operation and Development Model Law of the Pacific Community for the Protection of Traditional Knowledge and Expressions of Culture

xvi Panamanian Law No. 20

Paris Convention pcij Peruvian Law No. 27811

Peruvian Law No. 28216 ppms quno riaa Rio Declaration Rome Statute scm Agreement sess. Singapore Ministerial Declaration sps Agreement Swakopmund Protocol teu tfeu tk tkdl Trade Barriers Regulation

Trade Mark Directive

Treaty of Rome trips Agreement

Abbreviations Panamanian Law No. 20 on Special System for the Collective Intellectual Property Rights of Indigenous Peoples for the Protection and Defense of their Cultural Identity and their Traditional Knowledge Paris Convention for the Protection of Industrial Property Permanent Court of International Justice Peruvian Law No. 27811, introducing a Protection Regime for the Collective Knowledge of Indigenous Peoples derived from Biological Resources Peruvian Law No. 28216 on the Protection of Access to Peruvian Biological Diversity and Collective Knowledge of Indigenous Peoples Processes and production methods Quaker United Nations Office Reports of International Arbitral Awards Rio Declaration on Environment and Development Rome Statute of the International Criminal Court Agreement on Subsidies and Countervailing Measures Session w to Doc WT/MIN(96)/DEC (18 December 1996), adopted on 13 December 1996 Agreement on the Application of Sanitary and Phytosanitary Measures Swakopmund Protocol on the Protection of Traditional Knowledge and Expressions of Folklore Treaty on European Union Treaty on the Functioning of the European Union Traditional knowledge Traditional Knowledge Digital Library Regulation (EU) No. 654/2014 of the European Parliament and of the Council of 15 May 2014 concerning the exercise of the Union’s rights for the application and enforcement of international trade rules Directive (eu) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks Treaty establishing the European Economic Community Agreement on Trade-Related Aspects of Intellectual Property Rights

Abbreviations tsg Regulation

u.s.c. ucpd

udhr unccd unclos unctad undp unep unu-ias upov Var. Vienna Convention who wipo wipo Convention wipo Draft Provisions wipo Model Provisions wto Agreement

xvii Council Regulation (ec) No. 509/2006 of 20 March 2006 on agricultural products and foodstuffs as traditional specialities guaranteed United States Code Directive 2005/29/EC of the European Parliament and of the Council of 11 May 2005 concerning unfair business-toconsumer commercial practices in the internal market and amending Council Directive 84/450/EEC, Directives 97/7/ EC, 98/27/EC and 2002/65/EC of the European Parliament and of the Council and Regulation (ec) No. 2006/2004 of the European Parliament and of the Council (‘Unfair Commercial Practices Directive’) Universal Declaration of Human Rights United Nations Convention to Combat Desertification United Nations Convention on the Law of the Sea United Nations Conference on Trade and Development United Nations Development Programme United Nations Environment Programme United Nations University Institute of Advanced Studies International Union for the Protection of New Varieties of Plants Variety Vienna Convention on the Law of Treaties World Health Organization World Intellectual Property Organization Convention Establishing the World Intellectual Property Organization w ipo draft provisions for the protection of traditional knowledge against misappropriation and misuse w ipo Model Provisions on Protection Against Unfair Competition Agreement Establishing the World Trade Organization

Table of Cases Short Title

Full Case Title

wto Dispute Settlement Reports Argentina – Ceramic Tiles Panel Report, Argentina – Definitive Anti-Dumping Measures on Imports of Ceramic Floor Tiles from Italy, WT/ DS189/R, adopted 5 November 2001 Argentina – Financial Panel Report, Argentina – Measures Relating to Trade in Services Goods and Services, WT/DS453/R, circulated 30 September 2015 Argentina – Footwear (ec) Appellate Body Report, Argentina – Safeguard Measures on Imports of Footwear, WT/DS121/AB/R, adopted 12 January 2000 Argentina – Hides and Panel Report, Argentina – Measures Affecting the Export of Leather Bovine Hides and Import of Finished Leather, WT/DS155/R and Corr.1, adopted 16 February 2001 Argentina – Poultry Panel Report, Argentina – Definitive Anti-Dumping Duties Anti-Dumping Duties on Poultry from Brazil, WT/DS241/R, adopted 19 May 2003 Argentina – Textiles and Panel Report, Argentina – Measures Affecting Imports of Apparel Footwear, Textiles, Apparel and Other Items, WT/DS56/R, adopted 22 April 1998, as modified by Appellate Body Report WT/DS56/AB/R Panel Report, Australia – Subsidies Provided to Producers Australia – Automotive and Exporters of Automotive Leather – Recourse to Article Leather ii (Article 21.5 21.5 of the dsu by the United States, WT/DS126/RW and – us) Corr.1, adopted 11 February 2000 Brazil – Aircraft Appellate Body Report, Brazil – Export Financing Pro(Article 21.5 – Canada) gramme for Aircraft – Recourse by Canada to Article 21.5 of the dsu, WT/DS46/AB/RW, adopted 4 August 2000 Brazil – Aircraft Decision by the Arbitrators, Brazil – Export Financing (Article 22.6 – Brazil) Programme for Aircraft – Recourse to Arbitration by Brazil under Article 22.6 of the dsu and Article 4.11 of the scm Agreement, WT/DS46/ARB, 28 August 2000 Brazil – Desiccated Appellate Body Report, Brazil – Measures Affecting DesicCoconut cated Coconut, WT/DS22/AB/R, adopted 20 March 1997

xix

Table of Cases Short Title Brazil – Retreaded Tyres

Full Case Title

Appellate Body Report, Brazil – Measures Affecting Imports of Retreaded Tyres, WT/DS332/AB/R, adopted 17 December 2007 Canada – Aircraft Appellate Body Report, Canada – Measures Affecting the Export of Civilian Aircraft, WT/DS70/AB/R, adopted 20 August 1999 Canada – Aircraft Panel Report, Canada – Measures Affecting the Export of Civilian Aircraft, WT/DS70/R, adopted 20 August 1999, upheld by Appellate Body Report WT/DS70/AB/R Canada – Aircraft Credits Panel Report, Canada – Export Credits and Loan Guarand Guarantees antees for Regional Aircraft, WT/DS222/R and Corr.1, adopted 19 February 2002 Canada – Dairy Appellate Body Report, Canada – Measures Affecting the Importation of Milk and the Exportation of Dairy Products, WT/DS103/AB/R, WT/DS113/AB/R and Corr.1, adopted 27 October 1999 Appellate Body Report, Canada – Measures Affecting the Canada – Dairy (Article 21.5 – New Zealand and Importation of Milk and the Exportation of Dairy Products – Second Recourse to Article 21.5 of the dsu by New us ii) Zealand and the United States, WT/DS103/AB/RW2, WT/ DS113/AB/RW2, adopted 17 January 2003 Canada – Patent Term Appellate Body Report, Canada – Term of Patent Protection, WT/DS170/AB/R, adopted 12 October 2000 Canada – Patent Term Panel Report, Canada – Term of Patent Protection, WT/ DS170/R, adopted 12 October 2000, upheld by Appellate Body Report WT/DS170/AB/R Canada – Periodicals Appellate Body Report, Canada – Certain Measures Concerning Periodicals, WT/DS31/AB/R, adopted 30 July 1997 Canada – Pharmaceutical Panel Report, Canada – Patent Protection for PharmaceutiPatents cal Products, Panel Report, WT/DS114/R, adopted 7 April 2000 Chile – Alcoholic Appellate Body Report, Chile – Taxes on Alcoholic BeverBeverages ages, WT/DS87/AB/R, WT/DS110/AB/R, adopted 12 January 2000 China – Auto Parts Appellate Body Reports, China – Measures Affecting Imports of Automobile Parts, WT/DS339/AB/R, WT/DS340/AB/R, WT/DS342/AB/R, adopted 12 January 2009

xx

Table of Cases

Short Title

Full Case Title

China – Intellectual Property Rights

Panel Report, China – Measures Affecting the Protection and Enforcement of Intellectual Property Rights, WT/ DS362/R, adopted 20 March 2009 Appellate Body Report, China – Measures Affecting Trading Rights and Distribution Services for Certain Publications and Audiovisual Entertainment Products, WT/DS363/ AB/R, adopted 19 January 2010 Panel Report, China – Measures Affecting Trading Rights and Distribution Services for Certain Publications and Audiovisual Entertainment Products, WT/DS363/R, adopted 19 January 2010, as modified by Appellate Body Report WT/DS363/AB/R Appellate Body Report, China – Measures Related to the Exportation of Various Raw Materials, WT/DS394/AB/R, WT/DS395/AB/R, WT/DS398/AB/R, adopted 22 February 2012 Panel Report, European Communities – Measures Affecting the Approval and Marketing of Biotech Products, WT/ DS291/R, WT/DS292/R, WT/DS293/R, Add.1 to Add.9, and Corr.1, adopted 21 November 2006 Appellate Body Report, European Communities – ­Measures Affecting Asbestos and Products Containing Asbestos, WT/DS135/AB/R, adopted 5 April 2001 Panel Report, European Communities – Measures Affecting Asbestos and Products Containing Asbestos, WT/DS135/R and Add.1, adopted 5 April 2001, as modified by Appellate Body Report WT/DS135/AB/R Appellate Body Report, European Communities – Regime for the Importation, Sale and Distribution of Bananas, WT/ DS27/AB/R, adopted 25 September 1997 Appellate Body Reports, European Communities – Regime for the Importation, Sale and Distribution of Bananas – Second Recourse to Article 21.5 of the dsu by Ecuador, WT/DS27/AB/RW2/ECU, adopted 11 December 2008, and Corr.1 / European Communities – Regime for the Importation, Sale and Distribution of Bananas – Recourse to Article 21.5 of the dsu by the United States, WT/DS27/AB/RW/USA and Corr.1, adopted 22 December 2008

China – Publications and Audiovisual Products

China – Publications and Audiovisual Products

China – Raw Materials

ec – Approval and Marketing of Biotech Products ec – Asbestos

ec – Asbestos

ec – Bananas iii

ec – Bananas iii (Article 21.5 – Ecuador ii)/ec – Bananas iii (Article 21.5 – us)

xxi

Table of Cases Short Title ec – Bananas iii (Article 21.5 – us)

Full Case Title

Panel Report, European Communities – Regime for the Importation, Sale and Distribution of Bananas – Recourse to Article 21.5 of the dsu by the United States, WT/DS27/RW/USA and Corr.1, adopted 22 December 2008, as upheld by Appellate Body Report WT/DS27/AB/RW/USA ec – Bananas iii Panel Report, European Communities – Regime for (Ecuador) the Importation, Sale and Distribution of Bananas, Complaint by Ecuador, WT/DS27/R/ECU, adopted 25 September 1997, as modified by Appellate Body Report WT/DS27/AB/R Decision by the Arbitrators, European Communities ec – Bananas iii (Ecuador) (Article – ­Regime for the Importation, Sale and Distribution of 22.6 – ec) Bananas – Recourse to Arbitration by the European Communities under Article 22.6 of the dsu, WT/DS27/ARB/ ECU, 24 March 2000 Panel Report, European Communities – Regime for the ec – Bananas iii Importation, Sale and Distribution of Bananas, Complaint (Guatemala and by Guatemala and Honduras, WT/DS27/R/GTM, WT/ Honduras) DS27/R/HND, adopted 25 September 1997, as modified by Appellate Body Report WT/DS27/AB/R ec – Bananas iii (Mexico) Panel Report, European Communities – Regime for the Importation, Sale and Distribution of Bananas, Complaint by Mexico, WT/DS27/R/MEX, adopted 25 September 1997, as modified by Appellate Body Report WT/DS27/ AB/R ec – Bananas iii (us) Panel Report, European Communities – Regime for the Importation, Sale and Distribution of Bananas, Complaint by the United States, WT/DS27/R/USA, adopted 25 September 1997, as modified by Appellate Body Report WT/ DS27/AB/R ec – Bananas iii (us) Decision by the Arbitrators, European Communities – (Article 22.6 – ec) ­Regime for the Importation, Sale and Distribution of ­Bananas – Recourse to Arbitration by the European Communities under Article 22.6 of the dsu, WT/DS27/ARB, 9 April 1999 ec – Bed Linen (Article Appellate Body Report, European Communities – Anti21.5 – India) Dumping Duties on Imports of Cotton-Type Bed Linen from India – Recourse to Article 21.5 of the dsu by India, WT/ DS141/AB/RW, adopted 24 April 2003

xxii Short Title ec – Chicken Cuts

Table of Cases Full Case Title

Appellate Body Report, European Communities – Customs Classification of Frozen Boneless Chicken Cuts, WT/DS269/AB/R, WT/DS286/AB/R, adopted 27 September 2005, and Corr.1 ec – Computer Equipment Appellate Body Report, European Communities – Customs Classification of Certain Computer Equipment, WT/DS62/AB/R, WT/DS67/AB/R, WT/DS68/AB/R, adopted 22 June 1998 ec – Export Subsidies on Appellate Body Report, European Communities – Export Sugar Subsidies on Sugar, WT/DS265/AB/R, WT/DS266/AB/R, WT/DS283/AB/R, adopted 19 May 2005 ec – Hormones Appellate Body Report, European Communities – Measures Concerning Meat and Meat Products (Hormones), WT/DS26/AB/R, WT/DS48/AB/R, adopted 13 February 1998 ec – Hormones (Canada) Decision by the Arbitrators, European Communities (Article 22.6 – ec) – Measures Concerning Meat and Meat Products (Hormones), Original Complaint by Canada – Recourse to Arbitration by the European Communities under Article 22.6 of the dsu, WT/DS48/ARB, 12 July 1999 ec – Hormones (us) Decision by the Arbitrators, European Communities – Mea(Article 22.6 – ec) sures Concerning Meat and Meat Products (Hormones), Original Complaint by the United States – Recourse to Arbitration by the European Communities under Article 22.6 of the dsu, WT/DS26/ARB, 12 July 1999 ec – Poultry Appellate Body Report, European Communities – Measures Affecting the Importation of Certain Poultry Products, WT/DS69/AB/R, adopted 23 July 1998 ec – Sardines Appellate Body Report, European Communities – Trade Description of Sardines, WT/DS231/AB/R, adopted 23 October 2002 ec – Seal Products Appellate Body Report, European Communities – Measures Prohibiting the Importation and Marketing of Seal Products, WT/DS400/AB/R, WT/DS401/AB/R, adopted 18 June 2014 ec – Tariff Preferences Appellate Body Report, European Communities – ­Conditions for the Granting of Tariff Preferences to Developing Countries, WT/DS246/AB/R, adopted 20 April 2004

xxiii

Table of Cases  Short Title

Full Case Title

ec – Tariff Preferences

Panel Report, European Communities – Conditions for the Granting of Tariff Preferences to Developing Countries, WT/ DS246/R, adopted 20 April 2004, as modified by Appellate Body Report WT/DS/246/AB/R Panel Report, European Communities – Protection of Trademarks and Geographical Indications for Agricultural Products and Foodstuffs, Complaint by Australia, WT/ DS290/R, adopted 20 April 2005 Appellate Body Report, European Communities and Certain Member States – Measures Affecting Trade in Large Civil Aircraft, WT/DS316/AB/R, adopted 1 June 2011 Panel Report, European Communities – Measures Affecting Trade in Large Civil Aircraft, WT/DS316/R, adopted 1 June 2011 Panel Report, Definitive Anti-Dumping Measures on Steel Rebar from Turkey, WT/DS211/R, adopted 1 October 2002 Appellate Body Report, Guatemala – Anti-Dumping Investigation Regarding Portland Cement from Mexico, WT/ DS60/AB/R, adopted 25 November 1998 Panel Report, Definitive Anti-Dumping Measure on Grey Portland Cement from Mexico, WT/DS156/R, adopted 17 November 2000 Panel Report, India – Patent Protection for Pharmaceutical and Agricultural Chemical Products, Complaint by the European Communities, WT/DS79/R, adopted 22 September 1998 Appellate Body Report, India – Patent Protection for Pharmaceutical and Agricultural Chemical Products, WT/DS50/ AB/R, adopted 16 January 1998 Panel Report, Indonesia – Certain Measures Affecting the Automobile Industry, WT/DS54/R, WT/DS55/R, WT/ DS59/R, WT/DS64/R and Corr.1 and 2, adopted 23 July 1998, and Corr. 3 and 4 Appellate Body Report, Japan – Taxes on Alcoholic Beverages, WT/DS8/AB/R, WT/DS10/AB/R, WT/DS11/AB/R, adopted 1 November 1996

ec – Trademarks and Geographical Indications (Australia) ec and certain member States – Large Civil Aircraft ec and certain member States – Large Civil Aircraft Egypt – Steel Rebar

Guatemala – Cement i

Guatemala – Cement ii

India – Patents (ec)

India – Patents (us)

Indonesia – Autos

Japan – Alcoholic Beverages ii

xxiv Short Title Japan – Film

Table of Cases Full Case Title

Panel Report, Japan – Measures Affecting Consumer Photographic Film and Paper, WT/DS44/R, adopted 22 April 1998 Korea – Alcoholic Appellate Body Report, Korea – Taxes on Alcoholic BeverBeverages ages, WT/DS75/AB/R, WT/DS84/AB/R, adopted 17 February 1999 Korea – Dairy Appellate Body Report, Korea – Definitive Safeguard Measure on Imports of Certain Dairy Products, WT/DS98/ AB/R, adopted 12 January 2000 Korea – Dairy Panel Report, Korea – Definitive Safeguard Measure on Imports of Certain Dairy Products, WT/DS98/R and Corr.1, adopted 12 January 2000, as modified by Appellate Body Report WT/DS98/AB/R Korea – Procurement Panel Report, Korea – Measures Affecting Government Procurement, WT/DS163/R, adopted 19 June 2000 Korea – Various Measures Appellate Body Report, Korea – Measures Affecting Imon Beef ports of Fresh, Chilled and Frozen Beef, WT/DS161/AB/R, WT/DS169/AB/R, adopted 10 January 2001 Korea – Various Measures Panel Report, Korea – Measures Affecting Imports of Fresh, on Beef Chilled and Frozen Beef, WT/DS161/R, WT/DS169/R, adopted 10 January 2001, as modified by Appellate Body Report WT/DS161/AB/R, WT/DS169/AB/R Appellate Body Report, Mexico – Anti-Dumping Mexico – Corn Syrup (Article 21.5 – us) Investigation of High Fructose Corn Syrup (hfcs) from the United States – Recourse to Article 21.5 of the dsu by the United States, WT/DS132/AB/RW, adopted 21 November 2001 Appellate Body Report, Mexico – Tax Measures on Soft Mexico – Taxes on Soft Drinks Drinks and Other Beverages, WT/DS308/AB/R, adopted 24 March 2006 Mexico – Telecoms Panel Report, Mexico – Measures Affecting Telecommunications Services, WT/DS204/R, adopted 1 June 2004 Thailand – H-Beams Panel Report, Anti-Dumping Duties on Angles, Shapes and Sections of Iron or Non-Alloy Steel and H Beams from Poland, WT/DS122/R, adopted 5 April 2001, as modified by Appellate Body Report WT/DS122/AB/R Turkey – Textiles Appellate Body Report, Turkey – Restrictions on Imports of Textile and Clothing Products, WT/DS34/AB/R, adopted 19 November 1999

xxv

Table of Cases  Short Title

Full Case Title

Turkey – Textiles

Panel Report, Turkey – Restrictions on Imports of Textile and Clothing Products, WT/DS34/R, adopted 19 November 1999, as modified by Appellate Body Report WT/ DS34/AB/R Appellate Body Report, United States – Anti-Dumping Act of 1916, WT/DS136/AB/R, WT/DS162/AB/R, adopted 26 September 2000 Panel Report, United States – Anti-Dumping Act of 1916, Complaint by the European Communities, WT/DS136/R and Corr.1, adopted 26 September 2000, upheld by Appellate Body Report WT/DS136/AB/R, WT/DS162/AB/R Decision by the Arbitrators, United States – AntiDumping Act of 1916, Original Complaint by the European Communities – Recourse to Arbitration by the United States under Article 22.6 of the dsu, WT/DS136/ARB, 24 ­February 2004 Appellate Body Report, United States – Countervailing Duties on Certain Corrosion-Resistant Carbon Steel Flat Products from Germany, WT/DS213/AB/R and Corr.1, adopted 19 December 2002 Appellate Body Report, United States – Import Measures on Certain Products from the European Communities, WT/ DS165/AB/R, adopted 10 January 2001 Panel Report, United States – Import Measures on Certain Products from the European Communities, WT/DS165/R and Add.1, adopted 10 January 2001, as modified by Appellate Body Report WT/DS165/AB/R Panel Report, United States – Continued Suspension of Obligations in the ec – Hormones Dispute, WT/DS320/R, adopted 14 November 2008, as modified by Appellate Body Report WT/DS320/AB/R Appellate Body Report, United States – Continued Existence and Application of Zeroing Methodology, WT/ DS350/AB/R, adopted 19 February 2009 Appellate Body Report, United States – Transitional Safeguard Measure on Combed Cotton Yarn from Pakistan, WT/ DS192/AB/R, adopted 5 November 2001 Panel Report, United States – Measures Treating Export Restraints as Subsidies, WT/DS194/R and Corr.2, adopted 23 August 2001

us – 1916 Act (ec)

us – 1916 Act (ec)

us – 1916 Act (ec) (Article 22.6 – us)

us – Carbon Steel

us – Certain ec Products

us – Certain ec Product

us – Continued Suspension

us – Continued Zeroing

us – Cotton Yarn

us – Export Restraints

xxvi

Table of Cases

Short Title

Full Case Title

us – fsc

Appellate Body Report, United States – Tax Treatment for ‘Foreign Sales Corporations’, WT/DS108/AB/R, adopted 20 March 2000 Panel Report, United States – Tax Treatment for ‘Foreign Sales Corporations’, WT/DS108/R, adopted 20 March 2000, as modified by Appellate Body Report WT/DS108/ AB/R Decision by the Arbitrator, United States – Tax Treatment for ‘Foreign Sales Corporations’ – Recourse to Arbitration by the United States under Article 22.6 of the dsu and Article 4.11 of the scm Agreement, WT/DS108/ARB, 30 August 2002 Appellate Body Report, United States – Measures Affecting the Cross-Border Supply of Gambling and Betting Services, WT/DS285/AB/R, adopted 20 April 2005 Panel Report, United States – Measures Affecting the Cross-Border Supply of Gambling and Betting Services, WT/ DS285/R, adopted 20 April 2005, as modified by Appellate Body Report WT/DS285/AB/R Decision by the Arbitrator, United States – Measures Affecting the Cross-Border Supply of Gambling and Betting Services – Recourse to Arbitration by the United States under Article 22.6 of the dsu, WT/DS285/ARB, 21 December 2007 Appellate Body Report, United States – Standards for Reformulated and Conventional Gasoline, WT/DS2/AB/R, adopted 20 May 1996 Appellate Body Report, United States – Anti-Dumping Measures on Certain Hot-Rolled Steel Products from Japan, WT/DS184/AB/R, adopted 23 August 2001 Appellate Body Report, United States – Definitive Safeguard Measures on Imports of Circular Welded Carbon Quality Line Pipe from Korea, WT/DS202/AB/R, adopted 8 March 2002 Appellate Body Report, United States – Continued Dumping and Subsidy Offset Act of 2000, WT/DS217/AB/R, WT/ DS234/AB/R, adopted 27 January 2003

us – fsc

us – fsc (Article 22.6 – us)

us – Gambling

us – Gambling

us – Gambling (Article 22.6 – us)

us – Gasoline

us – Hot-Rolled Steel

us – Line Pipe

us – Offset Act (Byrd Amendment)

xxvii

Table of Cases  Short Title us – Offset Act (Byrd Amendment)

Full Case Title

Panel Report, United States – Continued Dumping and Subsidy Offset Act of 2000, WT/DS217/R, WT/DS234/R, adopted 27 January 2003, as modified by Appellate Body Report WT/DS217/AB/R, WT/DS234/AB/R Decision by the Arbitrator, United States – Continued us – Offset Act (Byrd Amendment) (ec) (Article Dumping and Subsidy Offset Act of 2000, Original Complaint by the European Communities – Recourse to Arbitra22.6 – us) tion by the United States under Article 22.6 of the dsu, WT/ DS217/ARB/EEC, 31 August 2004 us – Oil Country Tubular Appellate Body Report, United States – Sunset Reviews of Goods Sunset Reviews Anti-Dumping Measures on Oil Country Tubular Goods from Argentina, WT/DS268/AB/R, adopted 17 December 2004 us – Orange Juice (Brazil) Panel Report, United States – Anti-Dumping Administrative Reviews and Other Measures Related to Imports of Certain Orange Juice from Brazil, WT/DS382/R, adopted 17 June 2011 us – Section 110(5) Panel Report, United States – Section 110(5) of the us Copyright Act Copyright Act, WT/DS160/R, adopted 27 July 2000 us – Section 211 Appellate Body Report, United States – Section 211 Appropriations Act Omnibus Appropriations Act of 1998, WT/DS176/AB/R, adopted 1 February 2002 us – Section 211 Panel Report, United States – Section 211 Omnibus ApproAppropriations Act priations Act of 1998, WT/DS176/R, adopted 1 February 2002, as modified by Appellate Body Report WT/DS176/ AB/R Panel Report, United States – Section 301–310 of the Trade us – Section 301 Trade Act Act of 1974, WT/DS152/R, adopted 27 January 2000 us – Shrimp Appellate Body Report, United States – Import Prohibition of Certain Shrimp and Shrimp Products, WT/DS58/AB/R, adopted 6 November 1998 us – Shrimp (Article Appellate Body Report, United States – Import Prohibi21.5 – Malaysia) tion of Certain Shrimp and Shrimp Products – Recourse to Article 21.5 of the dsu by Malaysia, WT/DS58/AB/RW, adopted 21 November 2001 Panel Report, United States – Import Prohibition of Certain us – Shrimp (Article 21.5 – Malaysia) Shrimp and Shrimp Products – Recourse to Article 21.5 of the dsu by Malaysia, WT/DS58/RW, adopted 21 November 2001, upheld by Appellate Body Report WT/DS58/ AB/RW

xxviii

Table of Cases

Short Title

Full Case Title

us – Softwood Lumber iv

Appellate Body Report, United States – Final Countervailing Duty Determination with Respect to Certain Softwood Lumber from Canada, WT/DS257/AB/R, adopted 17 February 2004 Appellate Body Report, United States – Final Anti-Dumping Measures on Stainless Steel from Mexico, WT/DS344/ AB/R, adopted 20 May 2008 Panel Report, United States – Rules of Origin for Textiles and Apparel Products, WT/DS243/R and Corr.1, adopted 23 July 2003 Panel Report, United States – Measures Concerning the Importation, Marketing and Sale of Tuna and Tuna Products, WT/DS381/R, adopted 13 June 2012 Panel Report, United States – Restrictions on Imports of Cotton and Man-made Fibre Underwear, WT/DS24/R, adopted 25 February 1997, as modified by Appellate Body Report WT/DS24/AB/R Appellate Body Report, United States – Subsidies on Upland Cotton, WT/DS267/AB/R, adopted 21 March 2005 Appellate Body Report, United States – Definitive Safeguard Measures on Imports of Wheat Gluten from the European Communities, WT/DS166/AB/R, adopted 19 January 2001 Appellate Body Report, United States – Measure Affecting Imports of Woven Wool Shirts and Blouses from India, WT/DS33/AB/R, adopted 23 May 1997, and Corr.1 Panel Report, United States – Use of Zeroing in Anti-Dumping Measures Involving Products from Korea, WT/DS402/R, adopted 24 February 2011

us – Stainless Steel (Mexico) us – Textiles Rules of Origin us – Tuna ii (Mexico)

us – Underwear

us – Upland Cotton us – Wheat Gluten

us – Wool Shirts and Blouses us – Zeroing (Korea)

Italy – Agricultural Machinery us – Spring Assemblies us – Superfund

gatt Panel Reports gatt Panel, Italian Discrimination Against Imported Agricultural Machinery, L/833, adopted 23 October 1958, bisd 7S/60 gatt Panel, us – Imports of Certain Automotive Spring Assemblies, L/5333, adopted 26 May 1983, bisd 30S/107 gatt Panel, United States – Taxes on Petroleum and Certain Imported Substances, L/6175, adopted 17 June 1987, bisd 34S/136

xxix

Table of Cases  Short Title

Full Case Title

us – Tuna (eec)

gatt Panel, United States – Restrictions on Imports of Tuna, DS29/R, 16 June 1994, unadopted gatt Panel, United States – Restrictions on Imports of  Tuna, DS21/R, 3 September 1991, unadopted, bisd 39S/155

us – Tuna (Mexico)

Barcelona Traction ii Border and Transborder Armed Actions (Nicaragua v. Honduras) Continental Shelf (Tunisia/Libyan Arab Jamahiriya) Interpretation of Peace Treaties Namibia (s.w. Africa)

International Court of Justice Barcelona Traction, Light and Power Company, Ltd., Judgment, i.c.j. Reports 1970, p. 3 Border and Transborder Armed Actions (Nicaragua v. Honduras), Jurisdiction and Admissibility, Judgment, i.c.j. Reports 1988, p. 69 Continental Shelf (Tunisia/Libyan Arab Jamahiriya), Judgment, i.c.j. Reports 1982, p. 18

Interpretation of Peace Treaties (second phase), Advisory Opinion, i.c.j. Reports 1950, p. 221 Legal Consequences for States of the Continued Presence of South Africa in Namibia (South West Africa) notwithstanding Security Council Resolution 276 (1970), Advisory Opinion, i.c.j. Reports 1971, p. 16 Nicaragua v. United States Military and Paramilitary Activities in and against Nicaof America ragua (Nicaragua v. United States of America), Merits, Judgment, i.c.j. Reports 1986, p. 14 North Sea Continental North Sea Continental Shelf, Judgment, i.c.j. Reports Shelf 1969, p. 3 Nuclear Tests (Australia v. Nuclear Tests (Australia v. France), Judgment, i.c.j. Reports France) 1974, p. 253 Threat or Use of Nuclear Legality of the Threat or Use of Nuclear Weapons, Advisory Weapons Opinion, i.c.j. Reports 1996, p. 226 Permanent Court of International Justice Article 3, Paragraph 2, of the Treaty of Lausanne (Frontier between Turkey and Iraq), Advisory Opinion, Series B. – No. 12, 21 November 1925 International Commission Case Relating to the Territorial Jurisdiction of the Interof the River Oder national Commission of the River Oder, United Kingdom, Czechoslovakia, Denmark, France, Germany, Sweden v. Poland, Judgment, Series A. – No. 23, 10 September 1929 Frontier Between Turkey and Iraq

xxx

Table of Cases

Short Title

Full Case Title

Kunarac

International Criminal Tribunal for the former Yugoslavia Prosecutor v. Dragoljub Kunarac, Radomir Kovac and Zoran Vukovic, Judgment, IT-96-23-T & IT-96-23/1-T, 22 February 2001

Permanent Court of Arbitration Ireland v. United Kingdom Dispute Concerning Access to Information Under Article (ospar Arbitration) 9 of the ospar Convention, Ireland v. United Kingdom of Great Britain and Northern Ireland, Final Award, 2 July 2003 Iron Rhine Iron Rhine (‘Ijzeren Rijn’) Railway, The Kingdom of Belgium v. The Kingdom of the Netherlands, Award, 24 May 2005

Asian Agricultural Products v. Sri Lanka Island of Palmas Kronprins Gustaf Adolf Mondev v. United States Myers v. Canada Siemens v. Argentina

aetr

Anheuser-Busch

Asda Stores

International Arbitral Bodies Asian Agricultural Products Ltd. v. Republic of Sri Lanka, Award, icsid Case No. ARB/87/3, 27 June 1990 Island of Palmas case (Netherlands, usa), Award, riaa, Vol. ii, pp. 829 ff, 4 April 1928 The ‘Kronprins Gustaf Adolf’ (Sweden, usa), Arbitral Decision, riaa, Vol. ii, pp. 1239 ff, 18 July 1932 Mondev International Ltd. v. United States of America, Award, icsid Case No. ARB(AF)/99/2, 11 October 2002 S.D. Myers, Inc. v. Canada, nafta Partial Award, 13 November 2000 Siemens A.G. v. the Argentine Republic, Decision on Jurisdiction, icsid Case No. ARB/02/8, 3 August 2004 Court of Justice of the European Union Judgment of the Court of 31 March 1971, Commission of the European Communities v. Council of the European Communities, Case 22–70 Judgment of the Court of 16 November 2004, Anheuser-Busch Inc. v. Budĕjovický Budvar, národní podnik, Case C-245/02 Judgment of the Court of 13 December 2007, Asda Stores Ltd. v. Commissioners of Her Majesty’s Revenue and Customs, Case C-372/06

xxxi

Table of Cases  Short Title ataa

Full Case Title

Judgment of the Court of 21 December 2011, Air Transport Association of America, American Airlines Inc., Continental Airlines Inc., United Airlines Inc. v. Secretary of State for Energy and Climate Change, Case C‑366/10 Atlanta Judgment of the Court of 14 October 1999, Atlanta ag and others v. Commission of the European Communities and Council of the European Union, Case C-104/97 P Bergaderm and Goupil Judgment of the Court of 4 July 2000, Laboratoires ­pharmaceutiques Bergaderm S.A. and Jean-Jacques Goupil v. Commission of the European Communities, Case C-352/98 P Biret International Judgment of the Court of First Instance of 11 January 2002, Biret International S.A. v. Council of the European Union, Case T-174/00 Biret International Judgment of the Court of 30 September 2003, Biret International S.A. v. Council of the European Union, Case C-93/02 P bmw Judgment of the Court of 23 February 1999, Bayerische Motorenwerke ag (bmw) and bmw Nederland bv v. Ronald Karel Deenik, Case C-63/97 Brasserie du Pêcheur Judgment of the Court of 5 March 1996, Brasserie du Pêcheur S.A. v. Federal Republic of Germany and The Queen v. Secretary of State for Transport, ex parte: Factortame Ltd. and Others, Joined Cases C-46/93 and C-48/93 British American Tobacco Judgment of the Court of 10 December 2002, The Queen and Secretary of State for Health, ex parte: British American Tobacco (Investments) Ltd. and Imperial Tobacco Ltd., Case C-491/01 bv Diensten Groep v. Beele Judgment of the Court of 2 March 1982, bv Industrie Diensten Groep v. J.A. Beele Handelmaatschappij bv, Case 6/81 Cartagena Protocol Opinion of the Court of 6 December 2001, Cartagena Protocol, Opinion 2/00 Cassis de Dijon Judgment of the Court of 20 February 1979, Rewe-Zentral ag v. Bundesmonopolverwaltung für Branntwein, Case 120/78 Céline Judgment of the Court of 11 September 2007, Céline sarl v. Céline S.A., Case C-17/06

xxxii Short Title Chiquita Brands

Table of Cases Full Case Title

Judgment of the Court of First Instance of 3 February 2005, Chiquita Brands International, Inc., Chiquita Banana Co. bv, and Chiquita Italia, SpA v. Commission of the European Communities, Case T-19/01 Chiquita Italia Judgment of the Court of 12 December 1995, Amministrazione delle Finanze dello Stato v. Chiquita Italia SpA, Case C-469/93 Commission v. France Judgment of the Court of 7 October 2004, Commission of the European Communities v. French Republic, Case C-239/03 Commission v. Germany Judgment of the Court of 10 September 1996, Commission of the European Communities v. Federal Republic of Germany, Case C-61/94 Commission v. Ireland Judgment of the Court of 17 June 1981, Commission of the European Communities v. Ireland, Case 113/80 Commission v. Ireland, Judgment of the Court of 19 March 2002, Commission of C-13/00 the European Communities v. Ireland, Case C-13/00 Commission v. Parliament Judgment of the Court of 8 September 2009, Commisand Council sion of the European Communities v. European Parliament, Council of the European Union, Case C-411/06 Costa v. e.n.e.l. Judgment of the Court of 15 July 1964, Flaminio Costa v. e.n.e.l., Case 6/64 Daiichi Sankyo Judgment of the Court of 18 July 2013, Daiichi Sankyo Co. Ltd., Sanofi-Aventis Deutschland GmbH v. demo Anonimos Viomikhaniki kai Emporiki Etairia Farmakon, Case C‑414/11 Dassonville Judgment of the Court of 11 July 1974, Procureur du Roi v. Benoît and Gustave Dassonville, Case 8–74 De Agostini Judgment of the Court of 9 July 1997, Konsumentombudsmannen (ko) v. De Agostini (Svenska) Förlag ab and tv-Shop i Sverige ab, Joined Cases C-34/95, C-35/95 and C-36/95 De Landtsheer Emmanuel Judgment of the Court of 19 April 2007, De Landtsheer ­Emmanuel S.A. v. Comité Interprofessionnel du Vin de ­Champagne, Veuve Clicquot Ponsardin S.A., Case C-381/05 Demirel Judgment of the Court of 30 September 1987, Meryem Demirel v. Stadt Schwäbisch Gmünd, Case 12/86

xxxiii

Table of Cases  Short Title Develey v. ohim

Full Case Title

Judgment of the Court of 25 October 2007, Develey Holding GmbH & Co. Beteiligungs kg v. Office for Harmonisation in the Internal Market (Trade Marks and Designs) (ohim), Case C-238/06 P Dior Judgment of the Court of 14 December 2000, Parfums Christian Dior S.A. v. Tuk Consultancy bv and Assco Gerüste GmbH, Rob van Dijk v. Wilhelm Layher GmbH & Co. kg, Layher bv, Joined Cases C-300/98 and C-392/98 Eddline El-Yassini Judgment of the Court of 2 March 1999, Nour Eddline El-Yassini v. Secretary of State for Home Department, Case C-416/96 European Parliament v. Judgment of the Court of 2 March 1994, European ParliaCouncil ment v. Council of the European Union, Case C-316/91 Fediol Judgment of the Court of 22 June 1989, Fédération de l’industrie de l’huilerie de la cee (Fediol) v. Commission of the European Communities, Case 70/87 fiamm Judgment of the Court of 9 September 2008, Fabbrica italiana accumulatori motocarri Montecchio SpA (fiamm), Fabbrica italiana accumulatori motocarri Montecchio Technologies llc, formerly Fabbrica italiana accumulatori motocarri Montecchio Technologies Inc. (fiamm Technologies) v. Council of the European Union and Commission of the European Communities, Joined Cases C-120/06 P and C-121/06 P Francovich Judgment of the Court of 19 November 1991, Andrea Francovich and Danila Bonifaci and others v. Italian Republic, Joined Cases C-6/90 and C-9/90 Germany v. Council Judgment of the Court of 5 October 1994, Federal Republic of Germany v. Council of the European Union, Case C-280/93 Germany v. Parliament Judgment of the Court of 5 October 2000, Federal Repuband Council lic of Germany v. European Parliament and Council of the European Union, Case C-376/98 Gerolsteiner Brunnen Judgment of the Court of 7 January 2004, Gerolsteiner Brunnen GmbH & Co. v. Putsch GmbH, Case C-100/02 Gillette v. la-Laboratories Judgment of the Court of 17 March 2005, Gillette Company and Gillette Group Finland Oy v. la-Laboratories Ltd. Oy, Case C-228/03

xxxiv

Table of Cases

Short Title

Full Case Title

Gloszczuk

Judgment of the Court of 27 September 2001, The Queen and Secretary of State for the Home Department, ex parte: Wieslaw Gloszczuk et Elzbieta Gloszczuk, Case C-63/99 Judgment of the Court of 30 April 1974, R. & V. Haegeman v. Belgian State, Case 181–73 Judgment of the Court of 16 June 1998, Hermès International (a partnership limited by shares) v. fht Marketing Choice bv, Case C-53/96 Opinion of Advocate General Jacobs of 20 September 2001, Michael Hölterhoff v. Ulrich Freiesleben, Case C-2/00 Judgment of the Court of 27 September 2007, Ikea Wholesale Ltd. v. Commissioners of Customs & Excise, Case C-351/04 Judgment of the Court of 12 December 1972, International Fruit Company nv and others v. Produktschap voor Groenten en Fruit, Joined Cases 21 to 24–72 Judgment of the Court of 17 December 1970, Internationale Handelsgesellschaft mbH v. Einfuhr- und Vorratsstelle für Getreide und Futtermittel, Case 11–70 Judgment of the Court of 3 June 2008, The Queen, on the application of International Association of Independent Tanker Owners (Intertanko) and Others v. Secretary of State for Transport, Case C-308/06 Judgment of the Court of 20 May 2010, Ioannis ­Katsivardas – Nikolaos Tsitsikas oe v. Ipourgos Ikonomikon, Case C-160/09 Judgment of the Court of 12 November 1998, Italian Republic v. Council of the European Union, Case C-352/96 Judgment of the Court of First Instance of 21 September 2005, Yassin Abdullah Kadi v. Council of the European Union and Commission of the European Communities, Case T-315/01 Judgment of the Court of 3 September 2008, Yassin Abdullah Kadi, Al Barakaat International Foundation v. Council of the European Union, Joined Cases C-402/05 P and C-415/05 P Judgment of the Court of 27 September 2001, The Queen and Secretary of State for the Home Department, ex parte: Eleanora Ivanova Kondova, Case C-235/99

Haegeman Hermès

Hölterhoff v. Freiesleben Ikea Wholesale International Fruit Company Internationale Handelsgesellschaft Intertanko and Others

Ioannis Katsivardas – Nikolaos Tsitsikas Italy v. Council Kadi

Kadi

Kondova

xxxv

Table of Cases  Short Title Kupferberg

Full Case Title

Judgment of the Court of 26 October 1982, Hauptzollamt Mainz v. C.A. Kupferberg & Cie kg a.A., Case 104/81 Lego Juris v. ohim Judgment of the Court of 14 September 2010, Lego Juris A/S v. Office for Harmonisation in the Internal Market (Trade Marks and Designs) (ohim), Case C-48/09 P Lesoochranárske Judgment of the Court of 8 March 2011, zoskupenie Lesoochranárske zoskupenie vlk v. Ministerstvo životného prostredia Slovenskej republiky, Case C-240/09 L’Oréal v. Bellure Judgment of the Court of 18 June 2009, L’Oréal S.A., Lancôme parfums et beauté & Cie snc and Laboratoire Garnier & Cie v. Bellure nv, Malaika Investments Ltd., Starion International Ltd., Case C-487/07 Mars Judgment of the Court of 6 July 1995, Verein gegen Unwesen in Handel und Gewerbe Köln e.V. v. Mars GmbH, Case C-470/93 Merck Judgment of the Court of 11 September 2007, Merck Genéricos – Produtos Farmacêuticos Ldª v. Merck & Co. Inc., Merck Sharp & Dohme Ldª, Case C-431/05 Microsoft v. Commission Judgment of the Court of First Instance of 17 September 2007, Microsoft Corp. v. Commission of the European Communities, Case T-201/04 mox Plant Judgment of the Court of 30 May 2006, Commission of the European Communities v. Ireland, Case C-459/03 Mukand Judgment of the Court of First Instance of 19 September 2001, Mukand Ltd., Isibars Ltd., Ferro Alloys Corporation Ltd., Viraj Impoexpo Ltd. v. Council of the European Union, Case T-58/99 Muñoz and Superior Judgment of the Court of 17 September 2002, Antonio Fruiticola Muñoz y Cia S.A. and Superior Fruiticola S.A. v. Frumar Ltd. and Redbridge Produce Marketing Ltd., Case C-253/00 Nakajima Judgment of the Court of 7 May 1991, Nakajima All Precision Co. Ltd. v. Council of the European Communities, Case C-69/89 Order of the Court of 2 May 2001, ogt Fruchthandelsgeogt Fruchthandelsgesellschaft sellschaft mbH v. Hauptzollamt Hamburg-St. Annen, Case C-307/99

xxxvi

Table of Cases

Short Title

Full Case Title

Omega Air

Judgment of the Court of 12 March 2002, The Queen v. Secretary of State for the Environment, Transport and the Regions, ex parte: Omega Air Ltd., and Omega Air Ltd., Aero Engines Ireland Ltd., Omega Aviation Services Ltd. v. Irish Aviation Authority, Joined Cases C-27/00 and C-122/00 Opinion of the Court of 15 November 1994, Competence of the Community to conclude international agreements concerning services and the protection of intellectual property, Opinion 1/94 Judgment of the Court of 9 January 2003, Petrotub S.A. and Republica S.A. v. Council of the European Union, Case C-76/00 P Judgment of the Court of 8 April 2003, Pippig Augenoptik GmbH & Co. kg v. Hartlauer Handelsgesellschaft mbH, Verlassenschaft nach dem verstorbenen Franz Josef Hartlauer, Case C-44/01 Judgment of the Court of 9 February 1982, Polydor Limited and rso Records Inc. v. Harlequin Records Shops Limited and Simons Records Limited, Case 270/80 Judgment of the Court of 23 November 1999, Portuguese Republic v. Council of the European Union, Case C-149/96 Judgment of the Court of 7 February 1985, Procureur de la République v. adbhu, Case C-240/83 Judgment of the Court of 16 June 1998, A. Racke GmbH & Co. v. Hauptzollamt Mainz, Case C-162/96 Judgment of the Court of 12 May 2005, Regione autonoma Friuli-Venezia Giulia and Agenzia regionale per lo sviluppo rurale (ersa) v. Ministero delle Politiche Agricole e Forestali, Case C-347/03 Judgment of the Court of 13 September 2001, SchievingNijstad vof and Others and Robert Groeneveld, Case C-89/99 Judgment of the Court of 28 January 1999, Verbraucherschutzverein eV v. Sektkellerei G.C. Kessler GmbH und Co., Case C-303/97 Judgment of the Court of 7 December 2006, Sociedad General de Autores y Editores de España (sgae) v. Rafael Hoteles S.A., Case C-306/05 Judgment of the Court of 9 March 1978, Amministrazione delle Finanze dello Stato v. Simmenthal SpA, Case 106/77

Opinion 1/94

Petrotub

Pippig Augenoptik

Polydor v. Harlequin

Portugal v. Council Procureur de la République v. adbhu Racke v. Hauptzollamt Mainz Regione autonoma FriuliVenezia Giulia and ersa

Schieving-Nijstad Sektkellerei Kessler

sgae

Simmenthal ii

xxxvii

Table of Cases  Short Title

Full Case Title

Società Consortile Fonografici spi and sami

Judgment of the Court of 15 March 2012, Società Consortile Fonografici (scf) v. Marco Del Corso, Case C‑135/10 Judgment of the Court of 16 March 1983, Amministrazione delle Finanze dello Stato v. Società Petrolifera Italiana SpA (spi) and SpA Michelin Italiana (sami), Joined Cases 267/81, 268/81 and 269/81 The Netherlands v. Parlia- Judgment of the Court of 9 October 2001, Kingdom of ment and Council the Netherlands v. European Parliament and Council of the European Union, Case C-377/98 Touron Judgment of the Court of 10 November 1992, Exportur S.A. v. lor S.A. and Confiserie du Tech S.A., Case 3/91 Van Gend & Loos Judgment of the Court of 5 February 1963, nv Algemene Transport- en Expeditie Onderneming van Gend & Loos v. Netherlands Inland Revenue Administration, Case 26–62 Van Parys Judgment of the Court of 1 March 2005, Léon Van Parys nv v. Belgisch Interventie- en Restitutiebureau (birb), Case C-377/02 vtb-vab Judgment of the Court of 23 April 2009, vtb-vab nv v. Total Belgium nv and Galatea bvba v. Sanoma Magazines Belgium nv, Joined cases C-261/07 and C-299/07 Yves Rocher Judgment of the Court of 18 May 1993, Schutzverband gegen Unwesen in der Wirtschaft e.V. v. Yves Rocher GmbH, Case C-126/91

Mayagna (Sumo) Awas Tingni Community v. Nicaragua

Inter-American Commission on Human Rights The Mayagna (Sumo) Awas Tingni Community v. Nicaragua, Judgment of 31 August 2001, (Ser. C) No. 79 (2001)

Australian Court Decisions High Court of Australia, Mabo v. Queensland (No 2), 175 clr 1, 3 June 1992 Moorgate Tobacco v. Philip High Court of Australia, Moorgate Tobacco Co. Ltd. v. Philip Morris Morris Ltd., 156 clr 414, 22 November 1984 Mabo

Advertising Photos

Austrian Court Decisions Oberster Gerichtshof [Austrian Supreme Court of Justice], 4Ob 47/06z, 20 June 2006 reported in (2007) 38 International Review of Intellectual Property and Competition Law 622

xxxviii

Table of Cases

Short Title

Full Case Title

Medienprofessor

Oberster Gerichtshof [Austrian Supreme Court of Justice], 4Ob127/01g, 12 June 2001 reported in (2002) 51 Zeitschrift für Gewerblichen Rechtsschutz und Urheberrecht Internationaler Teil 341 Oberster Gerichtshof [Austrian Supreme Court of Justice], 4Ob 141/04w, 18 August 2004 reported in (2007) 29 European Intellectual Property Review 77

Remedy of Publication of Judgment

Guerin Kirkbi v. Ritvik Holdings

Lego v. Mega Brands

Canadian Court Decisions Supreme Court of Canada, Guerin v. The Queen, [1984] 2 s.c.r. 335, 1 November 1984 Supreme Court of Canada, Kirkbi ag v. Ritvik Holdings Inc., [2005] 3 s.c.r. 302, 17 November 2005 Dutch Court Decisions Hoge Raad [Supreme Court of the Netherlands], Lego Nederland B.V. and Lego System A/S v. Mega Brands Inc. and Mega Brands Europe N.V./S.A., Case No. 07/13142, 20 November 2009 reported in (2010) 41 International Review of Intellectual Property and Competition Law 364

German Court Decisions Bundesgerichtshof [German Federal Court of Justice], i zr 28/98, 11 May 2000 Außendienstmitarbeiter Bundesgerichtshof [German Federal Court of Justice], i zr 96/04, 11 January 2007 Baugruppe Bundesgerichtshof [German Federal Court of Justice], i zr 67/05, 10 January 2008 Charterfluggesellschaften Bundesgerichtshof [German Federal Court of Justice], i zr 222/81, 4 April of 1984 reported in (1984) 86 Zeitschrift für Gewerblichen Rechtsschutz und Urheberrecht 823 Donkey Kong Junior Oberlandesgericht Frankfurt [Frankfurt Court of Appeal], 6 U 16/83, 21 July 1983 reported in (1983) 85 Zeitschrift für Gewerblichen Rechtsschutz und Urheberrecht 757 Donkey Kong Junior ii Oberlandesgericht Frankfurt [Frankfurt Court of Appeal], 6 U 19/83, 4 August 1983 reported in (1984) 86 Zeitschrift für Gewerblichen Rechtsschutz und Urheberrecht 509 Abgasemissionen

xxxix

Table of Cases  Short Title Elektroarbeiten

Full Case Title

Bundesgerichtshof [German Federal Court of Justice], i zr 250/00, 25 April 2002 gewinn.de Bundesgerichtshof [German Federal Court of Justice], i zr 187/10, 18 January 2012 Görgülü Bundesverfassungsgericht [German Constitutional Court], 2 BvR 1481/04, 14 October 2004 Handtuchklemmen Bundesgerichtshof [German Federal Court of Justice], i zr 131/02, 24 March 2005 Hemdblusenkleid Bundesgerichtshof [German Federal Court of Justice], i zr 158/81, 10 November 1983 reported in (1984) 86 Zeitschrift für Gewerblichen Rechtsschutz und Urheberrecht 453 Klemmbausteine iii Bundesgerichtshof [German Federal Court of Justice], i zr 30/02, 2 December 2004 Knoblauchwürste Bundesgerichtshof [German Federal Court of Justice], i zr 144/06, 2 April of 2009 Kopienversanddienst Bundesgerichtshof [German Federal Court of Justice], i zr 118/96, 25 February 1999 Künstliche Blumen Reichsgericht [Supreme Court of the German Reich], 19 March 1932 reported in rgz 135, 385 LIKEaBIKE Bundesgerichtshof [German Federal Court of Justice], i zr 124/06, 28 May 2009 Lottoschein Bundesgerichtshof [German Federal Court of Justice], i zr 215/99, 17 January 2002 Makkaroni-Packung Reichsgericht [Supreme Court of the German Reich], 21 December 1934 reported in rgz 146, 247 Mietwohnzentrale.de Bundesgerichtshof [German Federal Court of Justice], i zr 216/99, 17 May 2000 Modeneuheit Bundesgerichtshof [German Federal Court of Justice], i zr 39/71, 19 January 1973 reported in (1973) 75 Zeitschrift für Gewerblichen Rechtsschutz und Urheberrecht 478 Motorboot-Fachzeitschrift Bundesgerichtshof [German Federal Court of Justice], i zr 55/89, 14 March 1991 reported in (1991) 93 Zeitschrift für Gewerblichen Rechtsschutz und Urheberrecht 616 Nelkenstecklinge Bundesgerichtshof [German Federal Court of Justice], i zr 61/57, 21 November 1958 reported in (1959) 61 Zeitschrift für Gewerblichen Rechtsschutz und Urheberrecht 240

xl

Table of Cases

Short Title

Full Case Title

Porträtfoto

Bundesgerichtshof [German Federal Court of Justice], vi zr 123/11, 20 March 2012 Bundesgerichtshof [German Federal Court of Justice], kzr 33/04, 7 February 2006 Bundesgerichtshof [German Federal Court of Justice], i zr 24/58, 27 November 1959 reported in (1960) 62 Zeitschrift für Gewerblichen Rechtsschutz und Urheberrecht 244 Bundesgerichtshof [German Federal Court of Justice], Ib zr 77/65, 4 November 1966 reported in (1967) 69 Zeitschrift für Gewerblichen Rechtsschutz und Urheberrecht 315 Bundesgerichtshof [German Federal Court of Justice], i zr 276/90, 3 December 1992 reported in (1993) 95 Zeitschrift für Gewerblichen Rechtsschutz und Urheberrecht 980 Bundesgerichtshof [German Federal Court of Justice], i zr 199/96, 6 May 1999 reported in (1999) 101 Zeitschrift für Gewerblichen Rechtsschutz und Urheberrecht 923 Bundesgerichtshof [German Federal Court of Justice], i zr 224/98, 5 October 2000 Bundesgerichtshof [German Federal Court of Justice], Ib zr 62/62, 24 May 1963 reported in (1963) 65 Zeitschrift für Gewerblichen Rechtsschutz und Urheberrecht 575

Probeabonnement Simili-Schmuck

skaicubana

Tariflohnunterschreitung

Tele-Info-cd

Verbandsklage gegen Vielfachabmahner Vortragsabend

Malaysian Court Decisions Kerajaan Negeri Selangor Kerajaan Negeri Selangor & Ors v. Sagong bin Tasi & Ors v. Sagong bin Tasi [2005] 6 mlj 289 (Court of Appeal)

Alexkor v. Richtersveld Community

South African Court Decisions Constitutional Court of South Africa, Alexkor Ltd. and Another v. Richtersveld Community and Others, (cct19/03) [2003] zacc 18, 14 October 2003

Asterix

Spanish Court Decisions Alicante Community Trademark Court, Les Editions Albert René S.A.R.L. v. Las Tabernas de Asterix sl, 15 March 2007

xli

Table of Cases  Short Title

Full Case Title reported in (2008) 39 International Review of Intellectual Property and Competition Law 364

uk Court Decisions United Kingdom House of Lords, Secretary of State For The Home Department, Ex Parte Adan v. Secretary of State For The Home Department Ex Parte Aitseguer, [2000] ukhl 67, 19 December 2000 Attorney General v. Blake United Kingdom House of Lords, Attorney General v. Blake and Another, [2000] ukhl 45, 27 July 2000 Douglas v. Hello! United Kingdom House of Lords, obg Ltd. and others (Appellants) v. Allan and others (Respondents), Douglas and another and others (Appellants) v. Hello! Ltd. and others (Respondents), Mainstream Properties Ltd. (Appellants) v. Young and others and another (Respondents), [2007] ukhl 21, 2 May 2007 Hodgkinson & Corby v. High Court of Justice (Chancery Division), Wards Mobility Services Hodgkinson & Corby Ltd. and Another v. Wards Mobility Services Ltd., [1994] 1 wlr 1564, 20 July 1994 Hotel Cipriani v. Cipriani High Court of Justice (Chancery Division), Hotel Cipriani (Grosvenor Street) srl, Hotelapa Investimento Hoteleiro S.A., Island Hotel (Madeira) Ltd. v. Cipriani (Grosvenor Street) Ltd., Giuseppe Cipriani, Cipriani International S.A., [2008] ewhc 3032 (Ch), 9 December 2008 Immigration Officer at United Kingdom House of Lords, Regina v. Immigration Prague Airport Officer at Prague Airport and another (Respondents) ex parte European Roma Rights Centre and others (Appellants), [2004] ukhl 55, 9 December 2004 Irvine v. Talksport High Court of Justice (Chancery Division), Edmund Irvine Tidswell Ltd. v. Talksport Ltd., [2002] ewhc 367 (Ch), 13 March 2002 L’Oréal v. Bellure Court of Appeal (Civil Division), L’Oréal S.A., Lancôme parfums et beauté & Cie, Laboratoire Garnier & Cie v. ­Bellure N.V, Malaika Investments Ltd., Starion International Ltd., [2007] ewca Civ 968, 10 October 2007 Merrell Dow Pharmaceuti- United Kingdom House of Lords, Merrell Dow Pharmacals v. hn Norton ceuticals Inc. v. hn Norton & Co. Ltd., [1995] ukhl 14, 26 October 1995 Adan

xlii

Table of Cases

Short Title

Full Case Title

Mogul Steamship v. McGregor

High Court of Justice (Queen’s Bench Division), Mogul Steamship Co Ltd. v. McGregor, Gow, & Co, [1889] 23 qbd 598 High Court of Justice (Chancery Division), Oren and Tiny Love Ltd. v. Red Box Toy Factory Ltd., Red Box Toy (u.k.) Ltd., Index Ltd., Martin Yaffe International Ltd., Argos Distributors Ltd., [1999] ewhc Patents 255, 1 February 1999 United Kingdom House of Lords, Russel (Earl) v. Russell (Countess), [1897] ljr 122, 16 July 1897 High Court of Justice (Chancery Division), Victor Andrew Wilson v. Yahoo! uk Ltd., Overture Services Ltd., [2008] ewhc 361 (Ch), 20 February 2008

Oren v. Red Box Toy Factory

Russell v. Russell Wilson v. Yahoo!

American Safety Table v. Schreiber Apple v. Motorola

Board of Trade of the City of Chicago v. Dow Jones Bonito Boats v. Thunder Craft Boats Cantor Fitzgerald v. Cantor Clock Spring v. Wrapmaster Cramer v. United States

Cubatabaco v. Culbro

United States Court Decisions United States Court of Appeals, 2nd Circuit, American Safety Table Company v. Schreiber, 269 F. 2d 255, decided 19 June 1959 United States District Court, n.d. Illinois, Apple, Inc. and NeXT Software Inc., ( f/k/a NeXT Computer, Inc.), v. Motorola, Inc. and Motorola Mobility, Inc., Opinion and Order of 22 June 2012 Supreme Court of Illinois, The Board of Trade of the City of Chicago v. Dow Jones & Company, Inc., Opinion, 456 N.E.2d 84, filed 21 October 1983 Supreme Court of United States, Bonito Boats, Inc. v. Thunder Craft Boats, Inc., Certiorari to the Supreme Court of Florida, 489 u.s. 141, decided 21 February 1989 Court of Chancery of Delaware, New Castle County, Cantor Fitzgerald, L.P. v. Iris Cantor et al., Opinion, 724 A.2d 571, decided 12 July 1998 United States District Court, s.d. Texas, Clock Spring, L.P., v. Wrapmaster, Inc., et al., Memorandum and Recommendation, Civil Action No. H-05-0082, 12 February 2008 Supreme Court of United States, Cramer et al. v. United States, Appeal from the Circuit Court of Appeals for the 9th Circuit, 261 u.s. 219, decided 19 February 1923 United States Court of Appeals, 2nd Circuit, Empresa Cubana del Tabaco v. Culbro Corporation, 399 F.3d 462, decided 24 February 2005

xliii

Table of Cases  Short Title Dastar v. Twentieth Century Fox Film

Full Case Title

Supreme Court of United States, Dastar Corp. v. Twentieth Century Fox Film Corp. et al., Certiorari to the United States Court of Appeals for the 9th Circuit, 539 u.s. 23, decided 2 June 2003 Decorative Aides v. Staple United States District Court, S.D. New York, Decorative Sewing Aides Aides Corp., Inc. v. Staple Sewing Aides Corp., Opinion, 497 F.Supp. 154, decided 30 June 1980 Edmonston v. A-Second Supreme Court of Louisiana, Grace Q. Edmonston v. AMortgage Co. of Slidell Second Mortgage Company of Slidell, Inc., et al., 289 So.2d 116, 14 January 1974 General Motors v. Lopez United States District Court, e.d. Michigan, General Motors Corp. and Adam Opel ag v. Jose Ignacio Lopez de Arriortua, Opinion and Order, 948 F.Supp. 684, decided 2 December 1996 Goldstein v. California Supreme Court of United States, Goldstein et al., v. California, Certiorari to the Appellate Department, Superior Court of California, County of Los Angeles, 412 u.s. 546, decided 18 June 1973 Grupo Gigante v. Dallo United States Court of Appeals, 9th Circuit, Grupo ­Gigante S.A. De cv v. Dallo & Co., Inc., Opinion, 391 F. 3d 1088, filed 15 December 2004 i.c.e. v. Armco Steel United States District Court, S.D. New York, i.c.e. ­Corporation and Intercontinental Enterprises, Ex-Und Import GmbH v. Armco Steel Corporation, 250 F.Supp. 738, 9 February 1966 International News Service Supreme Court of United States, International News Serv. Associated Press vice v. The Associated Press, Certiorari to the Circuit Court of Appeals for the 2nd Circuit, 248 u.s. 215, decided 23 December 1918 itc v. Punchgini United States Court of Appeals, 2nd Circuit, itc Limited and itc Hotels Ltd. v. Punchgini, Inc., Raja Jhanjee, Paragnesh Desai, Vicky Vij, Dhandu Ram, Mahendra Singh, Bachan Rawat, Bukhara Grill ii, Inc., 482 F.3d 135, decided 28 March 2007 Johnson v. M’Intosh Supreme Court of United States, Thomas Johnson and Graham’s Lessee v. William M’Intosh, 21 u.s. 543, decided 28 February 1823 Kellogg v. National Biscuit Supreme Court of United States, Kellogg Company v. National Biscuit Company, Certiorari to the Circuit Court

xliv Short Title

Table of Cases Full Case Title

of Appeals for the 3rd Circuit, 305 u.s. 111, decided 14 November 1938 Mattel v. mca Records United States Court of Appeals, 9th Circuit, Mattel, Inc. v. mca Records, Inc., Opinion, 296 F.3d 894, filed 24 July 2002 Medellín v. Texas Supreme Court of United States, Jose Ernesto Medellín v. Texas, 128 S.Ct. 1346 (2008), decided 25 March 2008 Metro Associated Services United States District Court, N.D. Iowa, Metro Associated v. Webster City Graphic Services, Inc. v. Webster City Graphic, Inc., 117 F.Supp. 224, 31 December 1953 Minyard v. Curtis Products Supreme Court of Louisiana, E.F. Minyard v. Curtis Products, Inc., 205 So.2d 422, 11 December 1967 National Basketball United States Court of Appeals, 2nd Circuit, The National Basketball Association and nba Properties, Inc. v. Motorola, ­Association v. Motorola Inc., Sports Team Analysis and Tracking Systems, Inc., 105 F.3d 841, decided 30 January 1997 Nike v. Kasky Supreme Court of United States, Nike, Inc., et al., v. Kasky, Certiorari to the Supreme Court of California, 539 u.s. 654, decided 26 June 2003 Overstock.com v. Supreme Court of Utah, Overstock.com, Inc. v. SmartBarSmartBargains gains, Inc., 192 P.3d 858, 19 August 2008 Sears, Roebuck v. Stiffel Supreme Court of United States, Sears, Roebuck & Co. v. Stiffel Company, Certiorari to the United States Court of Appeals for the 7th Circuit, 376 u.s. 225, decided 9 March 1964 California Court of Appeals, 3rd Dist., The People ex rel. The People v. National Stanley Mosk v. National Research Company of California et Research Company of al., 201 Cal.App.2d 765, decided 26 March 1962 California United States Golf AssoCalifornia Court of Appeals, 1st Dist., United States Golf ciation v. Arroyo Software Association v. Arroyo Software Corporation, 81 Cal.Rptr.2d 708, 26 January 1999 United States Court of Appeals, 3rd Circuit, United States United States Golf AsGolf Association v. St. Andrews System, Data-Max, Inc., sociation v. St Andrews Opinion, 749 F.2d 1028, decided 28 November 1984 System Wyer United States Court of Customs and Patent Appeals, Joseph Richard Wyer, 655 F.2d 221, 30 July 1981

Source Guide Short Title

Available at

wto Agreement Between the wipo and http://www.wto.org/english/tratop_e/trips_e/ the wto wtowip_e.htm Decision of the General Council on http://www.wto.org/english/tratop_e/trips_e/ implem_para6_e.htm the Implementation of Para 6 of the Doha Declaration on the trips Agreement and Public Health Doha declarations https://www.wto.org/english/thewto_e/ minist_e/min01_e/min01_e.htm Havana Charter http://www.wto.org/english/docs_e/legal_e/ havana_e.pdf Protocol on the Accession of the http://www.worldtradelaw.net/document. People’s Republic of China php?id=misc/ChinaAccessionProtocol.pdf Singapore Ministerial Declaration http://www.wto.org/english/theWTO_e/ minist_e/min96_e/wtodec_e.htm wto legal texts https://www.wto.org/english/docs_e/legal_e/ legal_e.htm

Central American Protocol on Access to Genetic and Biochemical Resources and Associated Traditional Knowledge Convention on Biological Diversity Guidelines Nagoya Protocol

European Union United States

Convention on Biological Diversity http://www.cbd.int/doc/measures/abs/msr-abs -cas-es.pdf

http://www.cbd.int/convention/text/ http://www.cbd.int/guidelines/default.shtml http://www.cbd.int/abs/text/default.shtml Free Trade Agreements http://ec.europa.eu/trade/policy/ countries-and-regions/ https://ustr.gov/trade-agreements/ free-trade-agreements

xlvi

Source Guide

Short Title

Available at

Beijing Declaration on Traditional Medicine who Declaration of Alma-Ata

who http://www.who.int/medicines/areas/ traditional/TRM_BeijingDeclarationEN.pdf http://www.who.int/publications/ almaata_declaration_en.pdf

Laws relating to traditional knowledge Model Provisions for National Laws on the Protection of Expressions of Folklore Against Illicit Exploitation and Other Prejudicial Actions Tunis Model Law on Copyright

wipo Draft Provisions wipo Lex wipo-Administered Treaties

Agenda 21 Andean Community Articles on Responsibility of States for Internationally Wrongful Acts Charter of Economic Rights and Duties of States European Convention on Human Rights fao International Treaty on Plant Genetic Resources for Food and Agriculture ilo legal texts International Human Rights Instruments

wipo http://www.wipo.int/tk/en/databases/tklaws/ http://www.wipo.int/wipolex/en/details. jsp?id=6714

ftp://ftp.wipo.int/pub/library/ebooks/historicalipbooks/TunisModelLawOnCopyright/TunisModelLawOnCopyright.pdf http://www.wipo.int/tk/en/igc/index.html http://www.wipo.int/wipolex/en/ http://www.wipo.int/treaties/en/ Miscellaneous International Law http://sustainabledevelopment.un.org/content/ documents/Agenda21.pdf http://www.wipo.int/wipolex/en/profile. jsp?code=CAN http://legal.un.org/ilc/texts/instruments/english/draft_articles/9_6_2001.pdf http://www.un-documents.net/a29r3281.htm http://www.echr.coe.int/Documents/Convention_ENG.pdf http://www.planttreaty.org/content/ texts-treaty-official-versions http://www.ilo.org/dyn/normlex/ en/f?p=NORMLEXPUB:1:0 http://www.ohchr.org/EN/ProfessionalInterest/ Pages/CoreInstruments.aspx

xlvii

Source Guide Short Title

Available at

Rome Statute of the International Criminal Court Statute of the International Court of Justice Swakopmund Protocol

https://www.icc-cpi.int/resource -library#legal-texts http://www.icj-cij.org/documents/index. php?p1=4 http://www.cbd.int/doc/measures/abs/msr-abs -aripo-en.pdf http://www.un.org/en/charter-united-nations/ index.html http://www.un.org/depts/los/convention_ agreements/convention_overview_convention .htm http://www.unccd.int/en/Pages/default.aspx

un Charter un Convention on the Law of the Sea un Convention to Combat Desertification unesco conventions upov Convention Vienna Convention

Directives and regulations Regulation applying a scheme of generalised tariff preferences

Treaty of Rome

u.s. Code and Constitution Uniform Trade Secrets Act California laws

Australia Canada

http://www.unesco.org/new/en/unesco/ resources/ http://www.upov.int/upovlex/en/acts.html http://www.oas.org/legal/english/docs/Vienna%20Convention%20Treaties.htm European Union http://eur-lex.europa.eu/homepage.html http://ec.europa.eu/trade/policy/ countries-and-regions/development/ generalised-scheme-of-preferences/ index_en.htm http://ec.europa.eu/archives/emu_history/ documents/treaties/rometreaty2.pdf United States of America https://www.law.cornell.edu/ http://uniformlaws.org/Act. aspx?title=Trade%20Secrets%20Act http://leginfo.legislature.ca.gov/faces/codes. xhtml Miscellaneous National Laws https://www.legislation.gov.au/ http://www.canlii.org/en/

xlviii

Source Guide

Short Title

Available at

Germany

http://www.gesetze-im-internet.de/Teilliste _translations.html http://www.irishstatutebook.ie http://www.gov.za/documents/acts http://www.boe.es/legislacion/legislacion.php http://www.legislation.gov.uk/browse

Ireland South Africa Spain United Kingdom

Declarations Related to Traditional Knowledge Bellagio Declaration http://www.cwru.edu/affil/sce/BellagioDec. html?nw_view=1428991531 Indigenous Peoples’ Statement on http://www.oikoumene.org/en/resources/ trips documents/wcc-programmes/justicediakonia-and-responsibility-for-creation/ science-technology-ethics/no-patenting-of-life Kimberley Declaration http://www.iwgia.org/environment-anddevelopment/sustainable-development/ the-kimberley-declaration/424 Non-Legally Binding Authoritative http://www.un.org/documents/ga/conf151/ Statement of Principles for a Global aconf15126-3annex3.htm Consensus on the Management, Conservation and Sustainable Development of All Types of Forests Paoakalani Declaration http://www.papaolalokahi.org/ coconut-wireless/health-resources/ Rio Declaration on Environment http://www.un.org/documents/ga/conf151/ and Development aconf15126-1annex1.htm Thammasat Resolution http://www.fao.org/docrep/w8425e/w8425e0g. htm#appendixd6thammasat resolution un Declaration on the Rights of http://www.un.org/esa/socdev/unpfii/ Indigenous Peoples documents/DRIPS_en.pdf Other declarations Posey/Dutfield, Beyond Intellectual Property: Toward Traditional Resource Rights for Indigenous Peoples and Local Communities (1996), Appendices

Code of Ethics of the American Anthropological Association

Guidelines/Codes of Conduct http://ethics.americananthro.org/category/ statement/

xlix

Source Guide Short Title

Available at

Declaration Toward a Global Ethic of the Parliament of the World’s Religions International Code of Conduct for Plant Germplasm Collecting and Transfer International Society of Ethnobiology Code of Ethics Negotiating Research Relationships Traditional Knowledge and Plant Genetic Resources Guidelines of the Southern Africa Network for Biosciences Other resources by indigenous and local community organizations Other resources for researchers and field-workers

http://www.parliamentofreligions.org/sites/ default/files/TowardsAGlobalEthic.pdf http://www.fao.org/nr/cgrfa/cgrfa-global/ cgrfa-codes/en/ http://www.ethnobiology.net/ https://www.itk.ca/publication http://www.nepadsanbio.org/resources.html

http://www.wipo.int/tk/en/databases/ creative_heritage/indigenous/ http://www.wipo.int/tk/en/databases/ creative_heritage/researchers/

Table of Documents

gatt/wto Documents

Analysis of Potential Cases of Biopiracy, wto Doc. IP/C/W/458 (7 November 2005) (Communication from Peru) Article 27.3(b), Relationship Between the trips Agreement and the cbd and Protection of Traditional Knowledge and Folklore, wto Doc. IP/C/W/441/Rev.1 (19 May 2005) (Communication from Peru) Article 27.3(b), The Relationship Between the trips Agreement and the Convention on Biological Diversity, and the Protection of Traditional Knowledge, wto Doc. IP/ C/W/400/Rev.1 (18 June 2003) (Communication from Switzerland) Australia – Certain Measures Concerning Trademarks, Geographical Indications and Other Plain Packaging Requirements Applicable to Tobacco Products and Packaging, wto Doc. WT/DS467/1 (25 September 2013) (Request for Consultations) Draft Decision to Enhance Mutual Supportiveness Between the trips Agreement and the Convention on Biological Diversity, wto Doc. TN/C/W/59 (19 April 2011) (Communication from Brazil, China, Colombia, Ecuador, India, Indonesia, Peru, Thailand, the acp Group, and the African Group) Draft Modalities for trips Related Issues, wto Doc. TN/C/W/52 (19 July 2008) (Communication from Albania, Brazil, China, Colombia, Ecuador, the European Communities, Iceland, India, Indonesia, the Kyrgyz Republic, Liechtenstein, the Former Yugoslav Republic of Macedonia, Pakistan, Peru, Sri Lanka, Switzerland, Thailand, Turkey, the acp Group and the African Group) Geographical Indications, wto Doc. WT/GC/W/547 (14 June 2005) (Communication from the European Communities) Issues Related to the Extension of the Protection of Geographical Indications Provided for in Article 23 of the trips Agreement to Products Other than Wines and Spirits and Those Related to the Relationship between the trips Agreement and the Convention on Biological Diversity, wto Doc. WT/GC/W/591 (9 June 2008) (Report by the Director-General) Issues Related to the Extension of the Protection of Geographical Indications Provided for in Article 23 of the trips Agreement to Products Other than Wines and Spirits and Those Related to the Relationship between the trips Agreement and the Convention on Biological Diversity, wto Doc. WT/GC/W/633 (21 April 2011) (Report by the Director-General) Meeting of Negotiating Group of 11, 12 and 14 December 1989, gatt Doc. MTN.GNG/ NG11/17 (23 January 1990) (Note by the Secretariat)

Table of Documents

li

Meeting of Negotiating Group of 30 October – 2 November 1989, gatt Doc. MTN.GNG/ NG11/16 (4 December 1989) (Note by the Secretariat) Minutes of Meeting, wto Doc. IP/C/M/28 (23 November 2000) Minutes of Meeting, wto Doc. IP/C/M/30 (1 June 2001) Minutes of Meeting, wto Doc. IP/C/M/43 (7 May 2004) Minutes of Meeting, wto Doc. IP/C/M/48 (15 September 2005) Minutes of Meeting, wto Doc. TN/IP/M/21 (28 May 2009) Non-Violation and Situation Complaints, wto Doc. IP/C/W/349/Rev.2 (19 October 2012) (Summary Note by the Secretariat) Note on Non-Trade Concerns, wto Doc. G/AG/NG/W/36/Rev.1 (9 November 2000) (Revision) Protection of Biodiversity and Traditional Knowledge – The Indian Experience, wto Doc. IP/C/W/198 (14 July 2000) (Submission by India) Review of Article 27.3(b) of trips Agreement, wto Doc. IP/C/W/545 (26 February 2010) (Communication from Bolivia) Review of Article 27.3(b), wto Doc. IP/C/W/228 (24 November 2000) (Communication from Brazil) Review of Implementation of the Agreement under Article 71.1: Proposal on Protection of the Intellectual Property Rights of the Traditional Knowledge of Local and Indigenous Communities, wto Doc. IP/C/W/166 (5 November 1999) (Communication from Cuba, Honduras, Paraguay and Venezuela) Review of the Provisions of Article 27.3(b) of the trips Agreement, wto Doc. IP/C/W/254 (13 June 2001) (Communication from the European Communities and their member States) Review of the Provisions of Article 27.3(b): Proposal on Protection of the Intellectual Property Rights Relating to the Traditional Knowledge of Local and Indigenous Communities, wto Doc. IP/C/W/165 (3 November 1999) (Communication from Bolivia, Colombia, Ecuador, Nicaragua, and Peru) Review of the Provisions of Article 27.3(b): Summary of Issues Raised and Points Made, wto Doc. IP/C/W/369/Rev.1 (9 March 2006) (Note by the Secretariat) Taking Forward the Review of Article 27.3(b) of the trips Agreement, wto Doc. IP/ C/W/404 (26 June 2003) (Joint Communication from the African Group) The Protection of Traditional Knowledge and Folklore: Summary of Issues Raised and Points Made, wto Doc. IP/C/W/370/Rev.1 (9 March 2006) (Note by the Secretariat) The Relationship Between the trips Agreement and the Convention on Biological Diversity: Summary of Issues Raised and Points Made, wto Doc. IP/C/W/368/Rev.1 (8 February 2006) (Note by the Secretariat) trips Non-Violation and Situation Complaints, wto Doc. WT/L/976 (21 December 2015) (Decision of 19 December 2015)

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Table of Documents

wipo Documents

Committee on Development and Intellectual Property, Scoping Study on Copyright and Related Rights and the Public Domain, 7th sess., wipo Doc. CDIP/7/INF/2 (4 March 2011) Intellectual Property and Sustainable Development: Documentation and Registration of Traditional Knowledge and Traditional Cultural Expressions, wipo Doc. WIPO/TK/ MCT/11/INF/2 (20 June 2011) (Background Paper) Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore, Glossary of Key Terms Related to Intellectual Property and Genetic Resources, Traditional Knowledge and Traditional Cultural Expressions, 28th sess., wipo Doc. WIPO/GRTKF/IC/28/INF/7 (19 May 2014) (‘Glossary’) Intergovernmental Committee on Intellectual Property and Genetic Resources, Note on the Meanings of the Term ‘Public Domain’ in the Intellectual Property System with Special Reference to the Protection of Traditional Knowledge and Traditional Cultural Expressions/Expressions of Folklore, 17th sess., wipo Doc. WIPO/GRTKF/IC/17/ INF/8 (24 November 2010) Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore, Comparative Summary of Existing National Sui Generis Measures and Laws for the Protection of Traditional Knowledge, 5th sess., wipo Doc. WIPO/GRTKF/IC/5/INF/4 (20 June 2003) Annex Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore, Composite Study on the Protection of Traditional Knowledge, 5th sess., wipo Doc. WIPO/GRTKF/IC/5/8 (28 April 2003) Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore, Consolidated Survey of Intellectual Property Protection of Traditional Knowledge, 5th sess., wipo Doc. WIPO/GRTKF/IC/5/7 (4 April 2003) (‘Consolidated Survey’) Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore, eu Contribution to the List of Issues on Traditional Knowledge Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore, Information Regarding the Disclosure Requirement in Norwegian Law, 23rd sess., wipo Doc. WIPO/GRTKF/IC/23/INF/10 (31 January 2013) Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore, List and Brief Technical Explanation of Various Forms in which Traditional Knowledge May be Found, 17th sess., wipo Doc. WIPO/ GRTKF/IC/17/INF/9 (5 November 2010) Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore, Norway: Memorandum on Documents WIPO/ GRTKF/IC/9/4 and WIPO/GRTKF/IC/9/5, 9th sess., wipo Doc. WIPO/GRTKF/IC/9/12 (20 April 2006)

Table of Documents

liii

Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore, Report, 3rd sess., wipo Doc. WIPO/GRTKF/IC/3/17 (21 June 2002) Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore, Report, 7th sess., wipo Doc. WIPO/GRTKF/IC/7/15 (10 June 2005) Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore, The Protection of Traditional Knowledge: Draft Gap Analysis: Revision, 13th sess., wipo Doc. WIPO/GRTKF/IC/13/5(b) Rev. (11 October 2008) (‘Draft Gap Analysis’) Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore, The Protection of Traditional Knowledge: Revised Objectives and Principles, 18th sess., wipo Doc. WIPO/GRTKF/IC/18/5 (10 January 2011) Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore, The Protection of Traditional Knowledge: Revised Outline of Policy Options and Legal Mechanisms, 9th sess., wipo Doc. WIPO/GRTKF/IC/9/INF/5 (27 March 2006) Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore, Traditional Knowledge and the Need to Give it Adequate Intellectual Property Protection, 1st sess., wipo Doc. WIPO/GRTKF/IC/1/5 (16 March 2001) Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore, Traditional Knowledge, Traditional Cultural Expressions and Genetic Resources: The International Dimension, 6th sess., wipo Doc. WIPO/GRTKF/IC/6/6 (30 November 2003) Permanent Committee on Cooperation for Development Related to Intellectual Property, wipo Fact-Finding Missions on Traditional Knowledge, Innovations and Practices of Indigenous and Local Communities: Progress Report, 1st sess., wipo Doc. PCIPD/1/10 (3 May 1999) Roundtable on Intellectual Property and Traditional Knowledge, wipo Doc. WIPO/ IPTK/RT/99/3 (6 October 1999)



cbd Documents

Ad Hoc Open-Ended Working Group on Access and Benefit-Sharing, Report of the Meeting of the Group of Technical and Legal Experts on Traditional Knowledge Associated with Genetic Resources in the Context of the International Regime on Access and Benefit-Sharing, 8th meeting, cbd Doc. UNEP/CBD/WG-ABS/8/2 (15 July 2009)

liv

Table of Documents

Conference of the Parties, Knowledge, Innovations and Practices of Indigenous and Local Communities: Implementation of Article 8( j), 3rd meeting, cbd Doc. UNEP/CBD/ COP/3/19 (18 September 1996) (Note by the Executive Secretary) Conference of the Parties, Mechanisms to promote the effective participation of indigenous and local communities in the work of the Convention, 10th meeting, cbd Doc. cop 10 Decision X/40 (18–29 October 2010) Hardison, Preston, The Report on Traditional Knowledge Registers (tkrs) and Related Traditional Knowledge Databases (tkdbs), cbd Doc. UNEP/CBD/WG8J/4/INF/9 (21 December 2005) Traditional Knowledge and Biological Diversity, cbd Doc. UNEP/CBD/TKBD/1/2 (18 October 1997)



Other United Nations Documents

‘Conclusions of the work of the Study Group on the Fragmentation of International Law: Difficulties arising from the Diversification and Expansion of International Law’ [2006] ii (2) Yearbook of the International Law Commission ‘Draft Articles on the Law of Treaties with commentaries’ [1966] ii(2) Yearbook of the International Law Commission ‘Report of the Commission to the General Assembly on the work of its fifty-third session’ [2001] ii(2) Yearbook of the International Law Commission ‘Summary records of the sixteenth session (11 May – 24 July 1964)’ [1964] i Yearbook of the International Law Commission Committee on Economic, Social and Cultural Rights, General Comment No. 17 (2005): The right of everyone to benefit from the protection of the moral and material interests resulting from any scientific, literary or artistic production of which he or she is the author (article 15, paragraph 1 (c), of the Covenant), 35th sess., un Doc. E/C.12/GC/17 (12 January 2006) Daes, Erica-Irene, Sub-Commission on Prevention of Discrimination and Protection of Minorities, Discrimination Against Indigenous Peoples: Protection of the heritage of indigenous people, 47th sess., un Doc. E/CN.4/Sub.2/1995/26 (21 June 1995) Daes, Erica-Irene, Sub-Commission on Prevention of Discrimination and Protection of Minorities, Discrimination Against Indigenous Peoples: Study on the protection of the cultural and intellectual property of indigenous peoples, 45th sess., un Doc. E/CN.4/ Sub.2/1993/28 (28 July 1993) General Assembly, Charter of Economic Rights and Duties of States, 29th sess., Resolution A/RES/29/3281 (12 December 1974)

Table of Documents

lv

Koskenniemi, Martti, International Law Commission, Fragmentation of International Law: Difficulties Arising from the Diversification and Expansion of International Law, 58th sess., un Doc. A/CN.4/L.682 (13 April 2006) (Report of the Study Group of the International Law Commission) Permanent Forum on Indigenous Issues, Report of the Secretariat on Indigenous traditional knowledge, un Doc. E/C.19/2007/10 (20 March 2007) Report of the Commission of Inquiry to examine the observance by Myanmar of the Forced Labour Convention, 1930 (No. 29) (2 July 1998) Sub-Commission on the Promotion and Protection of Human Rights, Intellectual property rights and human rights, 25th meeting, Resolution 2000/7 (17 August 2000) United Nations Conference on Trade and Development, Systems and National Experiences for Protecting Traditional Knowledge, Innovations and Practices, un Doc. TD/B/ COM.1/EM.13/2 (22 August 2000) (Background note by the unctad Secretariat) United Nations Conference on Trade and Development, São Paulo Consensus, un Doc. TD/410 (25 June 2004)



Miscellaneous Documents

Botschaft zur Genehmigung der gatt/wto-Übereinkommen, Schweizerisches Bundesblatt 1994 iv (19 September 1994) Deutscher Bundestag [German Parliament], Denkschrift, 12th term, Drucksache 12/7655 (neu) (24 May 1994), pp. 335 ff Deutscher Bundestag [German Parliament], Entwurf eines Gesetzes gegen den unlauteren Wettbewerb (uwg), 15th term, Drucksache 15/1487 (22 August 2003) European Commission, Guidance on the Implementation/Application of Directive 2005/29/EC on Unfair Commercial Practices, eu Doc. SEC(2009) 1666 (3 December 2009)

chapter 1

Introduction The law of the World Trade Organization (the ‘wto’) is widely considered as the translation of economics into international law.1 Commonly, its raison d’être is given on the basis of an economic theory, namely the free trade theory which stems from Ricardo’s model of comparative advantages.2 There is no doubt that the wto is about opening markets and keeping them open.3 Accordingly, the European Court of First Instance observed in Biret International that ‘[t]he purpose of the wto agreements is to govern relations between States or regional organisations for economic integration and not to protect individuals’.4 Even so, the panel in us – Section 301 Trade Act stated that ‘one of the primary objects of the gatt/wto as a whole … is to produce certain market conditions which would allow … individual activity to flourish’.5 This is particularly true of the Agreement on Trade-Related Aspects of Intellectual Property Rights (the ‘trips Agreement’).6 The present treatise centres on the economic operator. It is axiomatic that the wto is not ‘an end in itself’.7 This finds reflection in the first preambular paragraph of the Marrakesh Agreement Establishing the World Trade Organization (the ‘wto Agreement’), which commits the wto to, inter alia, ‘raising standards of living, ensuring full employment and a large and steadily growing volume of real income’, i.e. objectives whose achievement would immediately favour individuals.8 It is fair to say that wto law was ultimately designed for the 1 Lester et al., pp. 21 ff. 2 wto, Understanding the wto, p. 14; Petersmann, ‘World Trade, Principles’ in mpepil, para. 3; Oeter in Hilf/Oeter, § 1 paras. 4 f; Winham in Bethlehem et al., pp. 8 f; Niemann, pp. 60 ff; Trebilcock/Fishbein in Guzman/Sykes, p. 2; Anderson/Wager, p. 708; Kreinin/Plummer in Macrory/Appleton/Plummer, vol. ii, pp. 4 ff. 3 Cf. Petersmann in Macrory/Appleton/Plummer, vol. ii, p. 625; Cottier/Sangeeta Khorana in Cottier/Pauwelyn/Bürgi Bonanomi, p. 269; Hoekman/Kostecki, p. 584. 4 Court of First Instance, Judgment, Biret International, para. 62. 5 Panel Report, us – Section 301 Trade Act, para. 7.73. 6 See recital 2(b) and (c) of its Preamble. 7 Note on Non-Trade Concerns, wto Doc. G/AG/NG/W/36/Rev.1, Attachment 5 para. 17; Breining-Kaufmann in Cottier/Pauwelyn/Bürgi Bonanomi, p. 103. 8 Lamy, ‘Trade generates opportunities for development’ (Speech delivered at the opening of the academic year of the Geneva Graduate Institute, 3 October 2012) accessed 8 December 2015.

© koninklijke brill nv, leiden, ���6 | doi 10.1163/9789004313477_002

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benefit of economic operators and their right, under the covered agreements,9 to trade freely unless barred by overriding reasons of general interest.10 In the past, the right to trade was confined to the national market. Through the wto it has acquired an international dimension. To import and export has developed from a privilege at the discretion of national states to a guarantee under the auspices of the rule of law, cf. Section 5 of the Protocol on the wto Accession of the People’s Republic of China (‘Right to Trade’).11 One view in the literature even elevates it to the status of a human right.12 Coming from this angle, the wto sets up a regulatory framework for the exercise of economic freedom: an international marketplace.13 Economic freedom can be used either commensurate with, or contrary to, honest practices in cross-border trade.14 If freedom is exercised in such a way as to impede the personal autonomy of other economic operators, then the very purpose of law to strike a balance between conflicting interests is brought to the scene, and it must intervene.15 In this vein, economic freedom, like any freedom right, is legally limited.16 From a trade perspective, obstructive behaviour causes distortions17 which, in turn, can amount to a non-tariff barrier to trade and thus thwart the fruits of trade liberalization. A case in point is

9 10

11 12 13

14 15 16 17

Cf. the first sentence of Article 1.1 of the dsu in conjunction with Appendix 1 thereto. Panel Report, us – Section 301 Trade Act, paras. 7.73, 7.85; Qureshi/Ziegler, para. 4–004; Anderson/Wager, pp. 710, 712 f, 715 f; Petersmann in Cottier/Pauwelyn/Bürgi Bonanomi, p. 57; Petersmann in Kennedy/Southwick, p. 33; Fromm-Russenschuck/Duggal, p. 137; Charnovitz, pp. 395 f. For the freedom to trade in European Union law, see European Court of Justice, Judgment, Germany v. Council, para. 78; European Court of Justice, Judgment, Procureur de la République v. adbhu, paras. 9, 12; Herrmann/Weiß/Ohler, § 4 para. 70; Petersmann in Macrory/Appleton/Plummer, vol. ii, pp. 650 f. Contra Hilpold, pp. 456, 460 f. Petersmann in Cottier/Pauwelyn/Bürgi Bonanomi, p. 57; Cottier, ‘International Trade Law’, p. 322. See also Panel Report, us – Section 301 Trade Act, para. 7.85. Qureshi/Ziegler, para. 4–004; Anderson/Wager, pp. 710, 712 f; Petersmann in Kennedy/ Southwick, p. 54. Contra Herrmann/Weiß/Ohler, § 4 paras. 67 f. See Article iii:1, 2 of the wto Agreement and recital 3 of the Preamble to the trips Agreement. See also Panel Report, us – Section 301 Trade Act, para. 7.73; Cottier, ‘International Trade Law’, pp. 321 f; Anderson/Wager, p. 718; Petersmann in Kennedy/Southwick, p. 33. Cf. Schricker in Cheng/Liu/Wang, p. 130. Cf. de Vrey, p. 11; Petersmann in Kennedy/Southwick, pp. 56 f. Cf. Leistner in Gloy/Loschelder/Erdmann, § 4 para. 39. Schricker in Bernstein/Drobnig/Kötz, pp. 552 f; Reger, p. 301. For the specific cases of misleading and comparative advertising, see recitals 3 and 9 of the Misleading and Comparative Advertising Directive.

Introduction

3

private preshipment inspection entities to which some developing countries have recourse.18 The conflicts arising from the employment of these nonstate actors are addressed in Article 2:14 of the Agreement on Preshipment Inspection.19 The ongoing world trade talks are aimed at further liberalization.20 This will lead to increased competition if more substitute products are available in the marketplace.21 The more trade is liberalized, and in this way competition intensified, the more a control mechanism making sure that fairness is being observed by economic operators comes to the fore.22 This is the realm of the doctrine of unfair competition.23 At the national level, the doctrine is employed, inter alia, in advertising law, against misrepresentations as to the source of a product (passing off),24 misleading or aggressive practices, and trade libel.25 This list is indicative of how flexible a legal instrument ‘unfair competition law’ is.26 It covers such diverse issues as the protection of tv formats,27 misdirecting a rival’s customers to one’s own internet homepage,28 or alleged contraventions of a company’s statement on corporate social responsibility.29 18 19 20 21 22

23 24 25

26

27 28 29

See recital 2 of the Preamble to the Agreement on Preshipment Inspection. Panel Report, Argentina – Hides and Leather, para. 11.98 footnote 379. See paragraphs 13, 15, 16, 23–25 of the Doha Ministerial Declaration, recital 3 of the Preamble to the wto Agreement. Cf. European Court of Justice, Judgment, De Landtsheer Emmanuel, para. 36. wipo, Protection Against Unfair Competition, paras. 4, 6; Callmann/Altman, § 1:1; de Vrey, p. 11; Henning-Bodewig, Unfair Competition Law, pp. 2, 7; Sánchez Pichardo, p. 77. See already Smith, para. ii.ii.11. Henning-Bodewig, ‘Internationale Standards gegen unlauteren Wettbewerb’, p. 1; De Vrey, p. 11. For this tort, see Bently/Sherman, pp. 826 ff; Waelde et al., paras. 17.1 ff. Henning-Bodewig in Henning-Bodewig, International Handbook on Unfair Competition, § 1 para. 24; Cottier/Jevtic in Drexl et al., pp. 672 f; Carty, ‘The Common Law and the Quest for the ip Effect’, p. 239; Glöckner, Europäisches Lauterkeitsrecht, pp. 359 ff; de Vrey, p. 307. For United States law, see Supreme Court of Utah, Overstock.com v. SmartBargains, pp. 862 f; Westlaw, Black’s Law Dictionary Online, ‘unfair competition’. Cf. Westkamp, ‘trips Principles, Reciprocity and the Creation of Sui-Generis-Type iprs’, p. 841; Cottier/Jevtic in Drexl et al., p. 670. For Peruvian law, see Sainz de Aja in Pasquel/ Patrón/Pérez Costa, p. 51. Logan, Part 1, pp. 37 ff, Part 2, pp. 87 ff; de Vrey, p. 300. Oberster Gerichtshof [Austrian Supreme Court of Justice], Remedy of Publication of Judgment (2007) 29 European Intellectual Property Review 77. Supreme Court of United States, Nike v. Kasky, pp. 654 ff. See also Cottier/Jevtic in Drexl et al., p. 693.

4

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Unfair competition law along with anti-trust law form the field of competition law.30 Without it, market failures occur.31 Whereas anti-trust law is directed towards safeguarding the freedom of competition (e.g. by banning price fixing or abuses of a dominant position),32 the primary goal of unfair competition law is to ensure that economic operators play by the rules.33 This explains its closeness to tort law.34 Competition law is a public policy instrument.35 Together, anti-trust and unfair competition law aim to guarantee the well-functioning of competition,36 which is characterized by market adjustment processes to the effect that an economic operator not effectively marketing its products will ultimately be driven out of the market.37 A solidification of prevailing competitive structures would be at odds with the doctrine of unfair competition, which only protects from particular forms of competition, not from competition in general.38 International trade is so interwoven nowadays39 that the lack of a protective mechanism in the legal system of wto Member A may impinge upon the benefits accruing to Member B under the covered agreements if its enterprises are exposed to unfair competition when exporting to A. Considering that ‘[e]ach Member shall ensure the conformity of its laws, regulations and administrative 30 31 32 33

34 35 36 37 38

39

De Vrey, pp. 2 f, 11; Henning-Bodewig, ‘International Protection Against Unfair Competition’, p. 166 footnote 2. Hilty in Hilty/Henning-Bodewig, Law Against Unfair Competition, pp. 1 f. Leistner in Gloy/Loschelder/Erdmann, § 4 para. 40; Cottier/Germann in Takagi/Allman/ Sinjela, pp. 132, 149 ff; de Vrey, p. 11. For Swiss law, see Thouvenin, p. 507. wipo, Protection Against Unfair Competition, paras. 5, 9; Henning-Bodewig in HenningBodewig, International Handbook on Unfair Competition, § 1 paras. 21, 26; Cottier/Jevtic in Drexl et al., p. 670; de Vrey, pp. 11, 312; Fikentscher/Kunz-Hallstein, p. 43. Cf. the second sentence of recital 8 of the Unfair Commercial Practices Directive. Cf. Micklitz in Heermann/Hirsch, eg D paras. 15, 30; Henning-Bodewig, Unfair Competition Law, pp. 3 f, 7; Kaufmann, p. 9. Similarly, for intellectual property rights, Dutfield, ‘The Public and Private Domains’, p. 289. Cottier/Germann in Takagi/Allman/Sinjela, p. 137; Henning-Bodewig, Unfair Competition Law, p. 7. Hilty in Hilty/Henning-Bodewig, Law Against Unfair Competition, p. 17; de Vrey, p. 307. Cf. Leistner in Gloy/Loschelder/Erdmann, § 4 para. 20. This is why, for example, breaches of statutory provisions that bar municipalities from pursuing an economic activity in ­Germany are not considered as pertaining to the realm of unfair competition law, cf. Bundesgerichtshof, Elektroarbeiten, pp. 9 ff; Schaffert in Heermann/Hirsch, § 4 Nr. 11 uwg para. 73. Panel Reports, ec – Bananas iii (Ecuador)/(us), para. 7.50.

Introduction

5

procedures with its obligations’,40 the question arises whether this includes the repression of unfair competition, given that anti-trust policy has been dropped as a negotiating topic in the Doha Round.41 The trips Agreement contains in Article 2.1 a reference to the Paris Convention for the Protection of Industrial Property, as amended by the Stockholm Act of 1967 (the ‘Paris Convention (1967)’). The Paris Convention, adopted in the year 1883, was designed to safeguard industrial property at the international level.42 To this end, it established a Union of the contracting countries, the so-called ‘Paris Union’.43 Among others, the trips Agreement refers to Article 10bis which embodies the doctrine of unfair competition ‘in a nutshell’.44 The present version of Article 10bis of the Paris Convention is the result of the Stockholm Act of 1967 which corresponds to the Lisbon version.45 Article 10bis was introduced into the Paris Convention by the Revision Conference of Brussels in 1900.46 It extended the principle of national treatment to the repression of unfair competition.47 The drawback of this regulation was that it did not force any country to introduce a protective mechanism against unfair competition; only countries that already possessed one had to make it applicable to nationals of other countries of the Paris Union.48 Therefore, the Article was subsequently amended several times until it reached its current 40 Article xvi:4 of the wto Agreement. 41 wto, Interaction between Trade and Competition Policy (2015) accessed 8 December 2015. 42 wipo, Summary of the Paris Convention for the Protection of Industrial Property (1883) accessed 8 December 2015. 43 See Article 1(1) of the Paris Convention (1967). 44 Henning-Bodewig in Hilty/Henning-Bodewig, Law Against Unfair Competition, pp. 54, 60; Schricker/Henning-Bodewig, ‘New Initiatives for the Harmonisation of Unfair Competition Law in Europe’, p. 271. 45 Wadlow, The Law of Passing-off, para. 2–014; Cottier/Jevtic in Drexl et al., p. 673; Osterrieth, para. 59. 46 wipo, Protection Against Unfair Competition, para. 1; Bodenhausen, p. 142; Cottier/Jevtic in Drexl et al., pp. 669, 673; Höpperger/Senftleben in Hilty/Henning-Bodewig, Law Against Unfair Competition, p. 62. 47 Glöckner, Europäisches Lauterkeitsrecht, p. 287; Beater, Unlauterer Wettbewerb, § 4 para. 361; Henning-Bodewig in Hilty/Henning-Bodewig, Law Against Unfair Competition, p. 55. 48 Reger, p. 15; Henning-Bodewig, ‘International Protection Against Unfair Competition’, p. 171.

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chapter 1

form:49 At the Washington conference in 1911, it was rephrased so as to assure effective protection. The Hague Conference of 1925 later defined ‘unfair competition’. Besides, two specific prohibitions were added which now form Nos. 1 and 2 of paragraph 3. Afterwards, the list of subjects of protection in these legal examples was enlarged (at the London Revision Conference of 1934) as well as another prohibition, viz. misleading the public, was inserted (at the Lisbon Revision Conference of 1958). Moreover, the countries of the Paris Union committed themselves in The Hague to provide appropriate legal remedies to enforce Article 10bis in the guise of Article 10ter.50 Article 10bis of the Paris Convention (1967) reads as follows: (1) The countries of the Union are bound to assure to nationals of such countries effective protection against unfair competition. (2) Any act of competition contrary to honest practices in industrial or commercial matters constitutes an act of unfair competition. (3) The following in particular shall be prohibited: 1. all acts of such a nature as to create confusion by any means whatever with the establishment, the goods, or the industrial or commercial activities, of a competitor; 2. false allegations in the course of trade of such a nature as to discredit the establishment, the goods, or the industrial or commercial activities, of a competitor; 3. indications or allegations the use of which in the course of trade is liable to mislead the public as to the nature, the manufacturing process, the characteristics, the suitability for their purpose, or the quantity, of the goods. As far as wto law is concerned, the doctrine of unfair competition is a fairly untrodden path.51 In ec – Trademarks and Geographical Indications, Australia 49

50 51

For the historical development of Article 10bis of the Paris Convention, see Bodenhausen, pp. 142 f; Pflüger, pp. 31 ff; Wadlow, The Law of Passing-off, paras. 2–043 ff; Beater, Unlauterer Wettbewerb, § 4 para. 361; Henning-Bodewig, Unfair Competition Law, pp. 18 f; SchulteBeckhausen/Maaßen in Gloy/Loschelder/Erdmann, § 12 para. 2; Glöckner, Europäisches Lauterkeitsrecht, p. 287; de Carvalho, The trips Regime of Antitrust and Undisclosed Information, paras. 39.1.4 ff; Hilty/Henning-Bodewig, Law Against Unfair Competition, pp. 56, 62 f; de Vrey, pp. 12 f. Pflüger, p. 41; Schulte-Beckhausen/Maaßen in Gloy/Loschelder/Erdmann, § 12 para. 2; Bodenhausen, p. 147. Cottier/Jevtic in Drexl et al., pp. 669 f, 694.

Introduction

7

invoked Article 2.1 of the trips Agreement in conjunction with Article 10bis of the Paris Convention (1967) for the first time,52 but the panel did not busy itself with going into the merits because the claimant had not made a prima facie case.53 As a consequence, international trade lawyers still lack experience on how to deal with these two norms. The questions in which cases they apply, and how a panel would interpret them await answers. i

Description of the Problem

By and large, the whole field of unfair competition law is ‘plagued by uncer­ tainty’.54 This book aims to elaborate a coherent concept of the doctrine of unfair competition for the wto system, and thus continues the work initiated by Cottier and Jevtic.55 Owing to its susceptibility to judicial adaptation, the doctrine of unfair competition constitutes a sleeping giant for purposes of international law.56 How Article 10bis of the Paris Convention (1967) operates in the wto legal order will be expounded and the potential of the norm, especially of paragraph 2, will be illustrated using possible cases of application like core labour standards or traditional knowledge. These examples were chosen because they present unresolved challenges to the international legal order. For different reasons, both come within the purview of unfair competition law. As to the former, labour standards have a bearing on competitive relationships. For instance, Article 7 of the Swiss Act Against Unfair Competition deems non-compliance ‘with the statutory or contractual working conditions that are also required of his competitors or which are customary in the trade or locality’ to be ‘an act of unfair competition’. As to the latter, the Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore (the ‘igc’) is negotiating a sui generis instrument for the protection of traditional knowledge under the auspices of wipo, which had Article 10bis of the Paris Convention as its starting point. In national legal orders too, unfair competition law is considered a stepping stone to intellectual property protection. The basic constellation to be examined is a violation complaint pursuant to  Article 64.1 of the trips Agreement in conjunction with Article xxiii:1(a) 52 53 54 55 56

Panel Report, ec – Trademarks and Geographical Indications, para. 7.719. Panel Report, ec – Trademarks and Geographical Indications, para. 7.728. Cf. United Kingdom House of Lords, Douglas v. Hello!, para. 320 (Lord Brown). Cottier/Jevtic in Drexl et al., pp. 669 ff. Cf. Cottier/Jevtic in Drexl et al., pp. 675, 681.

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of  the General Agreement on Tariffs and Trade 1994 (the ‘gatt 1994’). One ­Member claims that the benefits accruing to it directly or indirectly under the trips Agreement are being nullified or impaired as the result of the failure of another Member to carry out its obligations under Article 2.1 of the trips Agreement in conjunction with Article 10bis of the Paris Convention (1967). The complainant alleges that the respondent, by tolerating acts of unfair competition under its jurisdiction, violates its obligations under the trips Agreement, as read with Article 10bis of the Paris Convention (1967). Following the Appellate Body in us – Wool Shirts and Blouses, it is for the complainant to prove a violation of Article 10bis of the Paris Convention (1967), and once the complainant has done so, for the respondent to rebut this prima facie case.57 In accordance with Article 6.2 of the Understanding on Rules and Procedures Governing the Settlement of Disputes (the ‘dsu’), a panel request must comply with two distinct requirements, namely identification of the specific measures at issue, and the provision of a brief summary of the legal basis of the complaint (or the claims).58 (original emphasis) As for the ‘measures at issue’, some general observations can be made: as in the case of dumping,59 acts of unfair competition are committed by private entities (unless Members act in the form of state-owned enterprises),60 and it is private entities that are regularly aggrieved by such acts.61 Private entities, however, can neither violate wto law,62 nor be a party to a wto 57

58 59 60

61 62

Appellate Body Report, us – Wool Shirts and Blouses, p. 14; Appellate Body Report, Canada – Dairy (Article 21.5 – New Zealand and us ii), para. 66; Panel Report, China – Publications and Audiovisual Products, paras. 7.1 ff; Panel Report, us – Gambling, paras. 6.11 ff; Panel Report, us – Section 301 Trade Act, para. 7.14; Panel Report, Turkey – Textiles, para. 9.57; Panel Report, Argentina – Textiles and Apparel, paras. 6.34 ff. See also Mavroidis in Wolfrum/ Stoll/Kaiser, Article 11 dsu paras. 7 f. Appellate Body Report, us – Carbon Steel, para. 125; Appellate Body Report, us – Oil Country Tubular Goods Sunset Reviews, para. 160. Bossche/Zdouc, p. 677. This has to be distinguished from behaviour of a state in its regulatory/legislative capacity, cf. Wadlow, ‘Regulatory Data Protection Under trips Article 39(3) and Article 10bis of the Paris Convention’, pp. 370 ff, 401. See also Babu, p. 150. Panel Report, Japan – Film, para. 10.52; wto, Possible Object of a Complaint – Jurisdiction of Panels and the Appellate Body (2015) Dispute Settlement System Training Module, ch. 5

Introduction

9

dispute.63 Solely the signatory parties, i.e. the Members, are bound by wto rules, and it is only the Members that have standing in wto dispute settlement procedures, cf. the second sentence of Article 1.1 of the dsu (‘disputes between Members concerning their rights and obligations’).64 The trade interests of private entities are thus mediated through their home state.65 It is therefore important to note that the subject matter before a wto panel would not be the acts of unfair competition themselves, albeit they may be the ultimate cause for the litigation. Given that the wto provides ‘the common institutional framework for the conduct of trade relations among its Members’,66 merely state conduct is under scrutiny, cf. Article 3.3 of the dsu (‘measures taken by another Member’).67 Multi-layered relationships involving private and state actors are normal for the trips Agreement:68 in the event of disregard of patent protection in one Member, for instance, we find, on the non-state level, the patent owner and the infringer and, on the state level, the Member that does not ensure the patent protection and the Member of the patent owner that faces a nullification or impairment of the benefits accruing to it under the trips Agreement. The exact degree of incorporation of Article 10bis of the Paris Convention (1967) into the trips Agreement is a matter to be seen.69 If, arguendo,

accessed 8 December 2015. 63 Vecchio, ‘International Courts and Tribunals, Standing’ in mpepil, paras. 22 f; BreiningKaufmann in Cottier/Pauwelyn/Bürgi Bonanomi, p. 106; Cottier in Macrory/Appleton/ Plummer, vol. i, p. 1059; Martha, pp. 44 f. 64 Appellate Body Report, us – Shrimp, para. 101; Panel Report, Turkey – Textiles, para. 9.41; Cottier in Macrory/Appleton/Plummer, vol. i, p. 1059; Martha, pp. 36, 44, 46 f; FrommRussenschuck/Duggal, p. 103; Haas, p. 126. 65 Marceau in Abbott/Breining-Kaufmann/Cottier, p. 226; Haas, pp. 126 ff. Economic operators of the European Union and the United States have the possibility to initiate proceedings on the basis of the Trade Barriers Regulation and 19 u.s.c. § 2412, respectively. Cf. Koebele, ‘World Trade Organization, Enforcement System’ in mpepil, paras. 65 ff; Herdegen, § 10 paras. 106 f; Hörmann in Hilf/Oeter, § 8 paras. 14 ff; Stoll/Schorkopf, paras. 709 ff; Macrory/Appleton/Plummer, vol. i, pp. 1508 ff, vol. ii, pp. 656 f. For the procedure in Switzerland, see Diebold/Oesch, pp. 1534 ff. 66 Article ii:1 of the wto Agreement. 67 Martha, p. 45; wto, Possible Object of a Complaint – Jurisdiction of Panels and the Appellate Body (2015) Dispute Settlement System Training Module, ch. 5 accessed 8 December 2015. 68 Cf. The International Dimension, wipo Doc. WIPO/GRTKF/IC/6/6, para. 32. 69 See below p. 17.

10

chapter 1

paragraph 1 of Article 10bis of the Paris Convention (1967) obliged the wto Members to assure effective protection against unfair competition, a positive action would be required by the Members. The Appellate Body in Guatemala – Cement i made clear that ‘[a] measure can also be an omission or a failure to act on the part of a Member’.70 According to Brand, the wording ‘shall comply with’ in Article 2.1 of the trips Agreement implies an obligation to legislate.71 In such a situation, an infringement would be given if the responding Member did not enact the mandatory prohibitions against unfair competition or the existing prohibitions did not go far enough or they were not enforced properly in practice and thus deprived of their effectiveness.72 Hence, a panel would be called upon to scrutinize whether the respondent fails systematically to repress unfair competition contrary to the first sentence of Article 1.1 of the trips Agreement, which commits the Members to ‘give effect to the provisions of this Agreement’.73 The Appellate Body noted in the Havana Club case that the municipal law of wto Members may serve not only as evidence of facts, but also as evidence of compliance or non-compliance with international obligations. Under the dsu, a panel may examine the municipal law of a wto Member for the purpose of determining whether that Member has complied with its obligations under the wto Agreement.74 Conversely, a panel would be precluded from ruling on actual acts of competition, because in doing so it would interpret domestic law ‘as such’.75 It is not the mandate of the Dispute Settlement Body (the ‘dsb’) to police individual acts of unfair competition on behalf of foreign traders. Incidentally, this issue is

70 71 72

73 74 75

Appellate Body Report, Guatemala – Cement i, para. 69 footnote 47. See also Zdouc in Macrory/Appleton/Plummer, vol. i, p. 1242. Brand in Stoll/Busche/Arend, Article 2 para. 5. See also Dupuy, ‘International Law and Domestic (Municipal) Law’ in mpepil, para. 45. wto, Possible Object of a Complaint – Jurisdiction of Panels and the Appellate Body (2015) Dispute Settlement System Training Module, ch. 5 accessed 8 December 2015; Cottier/Jevtic in Drexl et al., p. 690; Busche in Stoll/Busche/Arend, Introduction ii para. 7. Cf. Cottier/Jevtic in Drexl et al., pp. 690 f. Appellate Body Report, us – Section 211 Appropriations Act, para. 105, confirming Appellate Body Report, India – Patents (us), paras. 65 f. Cf. Panel Report, us – Section 301 Trade Act, para. 7.18; Appellate Body Report, us – HotRolled Steel, para. 200.

Introduction

11

not to be confused with an ‘as such’ claim.76 The domestic regulation of unfair competition can be challenged ‘as such’ according to the principles laid down by the Appellate Body in us – Oil Country Tubular Goods Sunset Reviews.77 To be in a position to judge whether national unfair competition regimes are in conformity with wto law, one first has to clarify the meaning of the terms used in Article 10bis of the Paris Convention (1967).78 In particular the definition of an ‘act of unfair competition’ in paragraph 2 of that Article will take centre stage.79 Without such a blueprint, it would be impossible for a panel to detect implementation deficits in the respondent’s legal order. ii

Interpretation of wto Provisions

As no case law exists in this matter, the author uses the tool kit available to a treaty interpreter, i.e. the Vienna Convention on the Law of Treaties (‘Vienna Convention’), the tenets of effective and consistent treaty interpretation and comparative jurisprudence. Another source of law to fall back on when no more definable rules are available is general principles,80 including good faith81 and equity.82 According to Article 3.2 of the dsu, the dispute settlement system of the wto serves 76 77

78 79 80

81

82

Cf. Correa, Trade Related Aspects of Intellectual Property Rights, pp. 28 f. ‘We would … urge complaining parties to be especially diligent in setting out “as such” claims in their panel requests as clearly as possible. In particular, we would expect that “as such” claims state unambiguously the specific measures of municipal law challenged by the complaining party and the legal basis for the allegation that those measures are not consistent with particular provisions of the covered agreements’. (original emphasis), cf. Appellate Body Report, us – Oil Country Tubular Goods Sunset Reviews, para. 173. Cottier/Jevtic in Drexl et al., p. 681. Cottier/Jevtic in Drexl et al., p. 681. Gaja, ‘General Principles of Law’ in mpepil, para. 21; Mitchell, ‘The Legal Basis for Using Principles in wto Disputes’, pp. 796, 798 f, 807; Boyle/Chinkin, p. 286; Cassimatis, pp. 177 f; Kolb, ‘Principles as Sources of International Law’, pp. 30 f. Mitchell, ‘Good Faith in wto Dispute Settlement’, p. 345. Contra United Kingdom House of Lords, Immigration Officer at Prague Airport, para. 43 (Lord Steyn), in relation to good faith as a principle of interpretation, not as a general principle of law. See also International Court of Justice, Judgment, Border and Transborder Armed Actions (Nicaragua v. Honduras), para. 94, stating that ‘[t]he principle of good faith … is not in itself a source of obligation where none would otherwise exist’. International Court of Justice, Judgment, Continental Shelf (Tunisia/Libyan Arab Jamahiriya), para. 71; Boyle/Chinkin, pp. 288 f; Francioni, ‘Equity in International Law’ in mpepil, paras. 5 f, 26; Bartels, pp. 517 f.

12

chapter 1

to clarify the existing provisions of those agreements in accordance with customary rules of interpretation of public international law. This clause refers to Articles 31 ff of the Vienna Convention.83 Above all, paragraph 1 of Article 31 of the Vienna Convention is relevant, which provides as follows: A treaty shall be interpreted in good faith in accordance with the ordinary meaning to be given to the terms of the treaty in their context and in the light of its object and purpose. That some Members like the United States have not ratified the Vienna Convention is immaterial because the rules on the interpretation of treaties ‘have attained the status of rules of customary or general international law’.84 It is clear that both national and international law must be responsive to the demands of the world we live in.85 This implies applying it to yet untested situations.86 One key issue in the following will be the interplay between different regimes of law, notably in what way wto law interacts with other rules of international law. On the one hand, the Appellate Body stated in us – Gasoline that wto law ‘is not to be read in clinical isolation from public international law’.87 On the other hand, the Appellate Body in India – Patents (us) held that the ‘principles of interpretation neither require nor condone the imputation into a treaty of words that are not there or the importation into a treaty of concepts that were not intended’.88 That said, the us – Shrimp report shows that wto 83

84

85 86 87 88

Appellate Body Report, us – Gasoline, p. 17; Appellate Body Report, Japan – Alcoholic Beverages ii, p. 10; Panel Report, China – Publications and Audiovisual Products, para. 7.8; Panel Report, ec – Approval and Marketing of Biotech Products, para. 7.65; Panel Report, us – Gambling, para. 6.9; Panel Report, us – Section 110(5) Copyright Act, para. 6.43; Panel Report, ec – Asbestos, para. 8.29; van Damme in Bethlehem et al., p. 323; Boyle/Chinkin, p. 258; Pauwelyn in Macrory/Appleton/Plummer, vol. i, p. 1406. Appellate Body Report, Japan – Alcoholic Beverages ii, p. 10; Appellate Body Report, us – Gasoline, p. 17; International Court of Justice, Advisory Opinion, Namibia (s.w. Africa), para. 94; van Damme, ‘Treaty Interpretation by the wto Appellate Body’, p. 619; Fitzmaurice/Merkouris in Fitzmaurice/Elias/Merkouris, p. 159; Mitchell, ‘The Legal Basis for Using Principles in wto Disputes’, p. 807; Elfring, p. 101. Denning, p. 268. For wto law, see Boyle/Chinkin, p. 135; Lamy, pp. 969 ff; Anderson/Wager, pp. 707 ff. Higgins, p. 341; Boyle/Chinkin, p. 290. Appellate Body Report, us – Gasoline, p. 17. Appellate Body Report, India – Patents (us), para. 45.

Introduction

13

law is not blind to developments outside of its immediate purview. There, the Appellate Body endorsed a dynamic interpretive approach, which entails that the legal text is read consistently with the meaning of the terms ‘at the time of the interpretation’.89 Also, it involves filling the scope wto law gives in accordance with public international law.90 The prerequisite that the term at issue is ‘by definition, evolutionary’91 is met by terms like ‘ordre public or morality’ in Article 27.1 of the trips Agreement92 and ‘public morals’ in Articles xx(a) of the gatt 199493 and xiv(a) of the General Agreement on Trade in Services (the ‘gats’).94 It bears noting that the principle of dynamic interpretation does not ubiquitously apply to wto law but is dependent on the expression to be interpreted.95 Besides, the time of the interpretation is decisive within Article 31(3) of the Vienna Convention, too.96 The tenet of dynamic interpretation is to be welcomed because it counteracts the fragmentation of international law97 and, in doing so, strengthens the legitimacy of the wto as a whole.98 It further elucidates that wto law is no

89

Cf. International Court of Justice, Advisory Opinion, Namibia (s.w. Africa), para. 53; Permanent Court of Arbitration, Final Award, Ireland v. United Kingdom (ospar Arbitration), para. 103; Award, Island of Palmas, p. 845; Linderfalk, On the Interpretation of Treaties, pp. 74 ff, 87; Boyle/Chinkin, p. 245; Lamy, pp. 980 f. 90 Appellate Body Report, us – Shrimp, para. 131. 91 Appellate Body Report, us – Shrimp, para. 130. See also International Court of Justice, Advisory Opinion, Namibia (s.w. Africa), para. 53; unctad-ictsd Resource Book, p. 13; Boyle/Chinkin, p. 245; Marceau, ‘A Call for Coherence in International Law’, pp. 120 ff. 92 unctad-ictsd Resource Book, p. 700. 93 Howse, ‘The World Trade Organization and the Protection of Workers’ Rights’, p. 7; Trebilcock/Howse, ‘Trade Policy & Labor Standards’, p. 290. 94 Panel Report, us – Gambling, para. 6.461; Howse/Langille, p. 413. 95 Linderfalk, On the Interpretation of Treaties, pp. 87 ff; Pauwelyn, Conflict of Norms in Public International Law, pp. 267 f; Sinclair, p. 140. See also Appellate Body Report, China – Publications and Audiovisual Products, para. 396 footnote 705, referring to ‘the terms in China’s gats Schedule’. 96 For subparagraphs (a) and (b), see Peters, ch. 5 para. 20. For subparagraph (c), see Gardiner, International Law, p. 89; Pauwelyn, Conflict of Norms in Public International Law, pp. 266 ff. 97 unctad-ictsd Resource Book, p. 701; Herdegen, ‘Interpretation in International Law’ in mpepil, para. 23; Boyle/Chinkin, p. 244; Panizzon, p. 269; Pauwelyn, ‘The Role of Public International Law in the wto’, p. 578. 98 Shaffer/Trachtman, p. 131; Cameron/Gray, p. 252. Unclear, Mavroidis, ‘No Outsourcing of Law?’, pp. 472 f.

14

chapter 1

self-contained regime99 and testifies to its adaptability to ‘the real world’.100 In the final analysis, wto rules are neither ‘to be read in clinical isolation’, nor are they ‘frozen in time’.101 In this way, they ‘serve the multilateral trading system best’, as the Appellate Body observed in Japan – Alcoholic Beverages ii.102 iii

Course of the Legal Analysis

This book presents the law as it stands and on the premise that wto law does not endorse the notion of non liquet.103 Parts ii through iv discuss Article 10bis of the Paris Convention (1967) from the point of view of wto law, Part v in relation to European Union law. The following questions are dealt with: in Part ii, whether and to what extent wto law obliges the Members to repress unfair competition; in Parts iii and iv, whether Article 2.1 of the trips Agreement in conjunction with Article 10bis of the Paris Convention (1967) can be invoked with a view to protecting core labour standards and traditional knowledge, respectively; in Part v, whether Article 10bis of the Paris Convention (1967) has direct effect in European Union law; Part vi sums up the findings. Since European Union law serves as a role model for economic integration, it is worth taking a closer look even for non-European lawyers. The approach of the European Court of Justice to determine the direct effect of a norm of international law on the basis of the ‘nature and structure’ of the entire treaty containing that norm will be challenged. It is propounded to focus on the regulatory content of the individual norm instead.

99

100 101

102 103

unctad-ictsd Resource Book, p. 130; Klein, ‘Self-Contained Regime’ in mpepil, para. 13; Kaufmann, ‘Trade and Labour Standards’ in mpepil, para. 31; Boyle/Chinkin, p. 258; Hestermeyer, Human Rights and the wto, pp. 210 ff; Henckels, p. 283; Breining-Kaufmann in Cottier/Pauwelyn/Bürgi Bonanomi, p. 114; Pauwelyn in Macrory/Appleton/Plummer, vol. i, pp. 1406, 1409. Appellate Body Report, Japan – Alcoholic Beverages ii, p. 31; Marceau, ‘A Call for Coherence in International Law’, p. 108. Trebilcock/Howse, ‘Trade Policy & Labor Standards’, p. 290; Howse, ‘The World Trade Organization and the Protection of Workers’ Rights’, p. 7; Pauwelyn, ‘The Role of Public International Law in the wto’, p. 561; Riffel, p. 641. See also Kotzur, ‘Good Faith (Bona fide)’ in mpepil, para. 26. Appellate Body Report, Japan – Alcoholic Beverages ii, p. 31. Shaffer/Trachtman, p. 125; Neumann, Die Koordination des wto-Rechts mit anderen völkerrechtlichen Ordnungen, pp. 556 f. See also van Damme, Treaty Interpretation by the wto Appellate Body, pp. 119 f; Boyle/Chinkin, pp. 285 f. Contra Bagchi, pp. 1535 f.

Introduction

15

The first question relating to the incorporation of Article 10bis of the Paris Convention (1967) is answered in the affirmative in light of Article 2.1 of the trips Agreement. As a result, Members are bound to offer protection against unfair competition. This finding underscores the role of the wto as guarantor of fundamental fairness in world trade. Another example supporting this notion would be trade remedy law, such as anti-dumping or safeguard rules.104 That is, contrary to popular belief, the wto stands for more than liberalization and deregulation: it evolved from negative integration by prohibitive norms (i.e. the abolition of cross-border barriers) towards positive integration by prescriptive norms (i.e. the setting of minimum standards).105 Having said that, it is highly contentious whether hard law obligations emanate from paragraph 2 of Article 10bis of the Paris Convention (1967) and how to construe the honesty standard embodied therein. The author comes to the conclusion that paragraph 2 does not only contain a legal definition but, in conjunction with paragraph 1, constitutes a general clause. In order to evaluate possible criteria for assessing honesty in a world trade context, the underlying conflicts of interest are uncovered, having regard to the protective purpose of the doctrine of unfair competition. Employing an a fortiori argument supported by a comparison of laws, it will be shown that a breach of law comes within the ambit of paragraph 2 of Article 10bis of the Paris Convention (1967): if a departure from honest practices is prohibited, this is all the more true of a breach of law. The scope of this application would be overly broad, however, and therefore needs some limitation. Not every breach is encompassed but only breaches that are of competitive relevance and likely to cause trade distortions. This is given when the breached rule regulates competitive conduct, or more generally, establishes equal conditions of competition. This resonates with the ultimate goal of the wto of creating a ‘level playing field’. Part ii provides the theoretical background for the following two parts on  the protection of core labour standards and traditional knowledge. It forms a reference system by which adjudicators can orient themselves when 104 For anti-dumping, see Mueller/Khan/Scharf, ec and wto Anti-Dumping Law; Vermulst, The wto Anti-Dumping Agreement; Czako/Human/Miranda, A Handbook on Anti-Dumping Investigations. Critically, Trebilcock/Howse/Eliason, pp. 351 ff. For safeguards, see Piérola, The Challenge of Safeguards in the wto. 105 Petersmann in Joerges/Petersmann, p. 53; Mitchell/Voon in Bethlehem et al., p. 187; Hoekman/Kostecki, p. 370; Hestermeyer, Human Rights and the wto, pp. 197 f; Heiskanen, pp. 13 ff, 34; Weiss in Sacerdoti/Yanovich/Bohanes, p. 156; Leader in Macrory/Appleton/ Plummer, vol. ii, p. 674.

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chapter 1

navigating these uncharted waters. Thus, we set to work, bearing in mind Judge Baxter’s words: The lawyer is indeed a social engineer and in that role, he must be able to invent or to produce machinery that will assist in the resolution of disputes and differences between the States. He must be prepared to finetune the law, to exploit its capacity for adaption to the needs of the parties, and to promote movement and change.106 106 Baxter, p. 566.

chapter 2

Article 10bis and the wto i

Article 2.1 of the trips Agreement

A Incorporation of Article 10bis of the Paris Convention (1967) Before turning to the construction of Article 10bis of the Paris Convention (1967), the question as to what extent the doctrine of unfair competition has been integrated into the trips Agreement must be addressed. The panel in ec – Trademarks and Geographical Indications could leave this issue open,1 which is why it is still unsettled. Reference norms to Article 10bis of the Paris Convention (1967) can be found in Articles 2.1, 22.2(b), and 39.1 of the trips Agreement. Therefore, there can be no doubt that the doctrine of unfair competition falls within the ambit of the trips Agreement. Whereas Article 2.1 of the trips Agreement contains a general reference to the Paris Convention,2 the references in Articles 22.2(b) and 39.1 of the trips Agreement are confined to the given subjects of protection, i.e. the geographical origin of the good and undisclosed information. In consequence, Article 2.1 of the trips Agreement determines the overall scope of application of Article 10bis of the Paris Convention (1967) within the trips framework, and thus the wto Agreement in general.3 Article 2.1 of the trips Agreement reads as follows: In respect of Parts ii, iii and iv of this Agreement, Members shall comply with Articles 1 through 12, and Article 19, of the Paris Convention (1967). The wording of Article 2.1 relates, inter alia, Article 10bis of the Paris Convention (1967) with Parts ii through iv of the trips Agreement.4 Part ii comprises substantive provisions on the covered intellectual property rights; Part iii and iv, in contrast, contain enforcement and procedural provisions, respectively. Because Article 10bis of the Paris Convention (1967) contains a substantive

1 Panel Report, ec – Trademarks and Geographical Indications, para. 7.728 footnote 629. 2 Brand in Stoll/Busche/Arend, Article 2 paras. 1 f. 3 See Article ii:2 of the wto Agreement in conjunction with Annex 1C. 4 Cf. unctad-ictsd Resource Book, p. 47.

© koninklijke brill nv, leiden, ���6 | doi 10.1163/9789004313477_003

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provision,5 the introductory term ‘in respect of’ is suggestive of a connection of this Article with the substantive Part ii of the trips Agreement.6 It follows that the question as to the extent of incorporation hinges on the interpretation of ‘in respect of’. The central issue is whether a limitation of the incorporation of Article 10bis of the Paris Convention (1967) ensues from that term.7 To resolve it, we must clarify the relationship between Article 10bis of the Paris Convention (1967), on the one hand, and intellectual property rights, on the other hand, having special regard to the function of the former. We will also have to look into the structure of the cases of application of the doctrine of unfair competition. 1

Explicit Cases of Application of the Doctrine of Unfair Competition With a view to comprehending the meaning of ‘in respect of’, it is instructive to work out how cases of application of the doctrine of unfair competition are structured. To this end, we will draw on the legal examples, i.e. – paragraph 3 of Article 10bis of the Paris Convention (1967) and – Articles 22 and 39 of the trips Agreement. These cases constitute acts of unfair competition at all events. That is, their express regulation avoids the onus of having to substantiate on the basis of paragraph 2 of Article 10bis of the Paris Convention (1967) why these acts are ‘contrary to honest practices’.8 Within their scope, recourse to paragraph 2 is even barred.9 (a) Paragraph 3 of Article 10bis of the Paris Convention (1967) By stipulating, for example, that there shall be neither ‘confusion … with the establishment … of a competitor’, nor misleading ‘as to the nature … of the goods’, the contracting parties made it clear that particular subjects shall be protected from particular condemnable acts. On closer examination, the same two-element structure can be found in all Numbers of Article 10bis(3) of the Paris Convention (1967), consisting of:

5 See below p. 65. 6 See also Wadlow, The Law of Passing-off, para. 2–062. 7 Cf. Drexl in Säcker/Rixecker/Oetker, IntLautR, para. 32; Cottier/Jevtic in Drexl et al., p. 677. Pro Wadlow, The Law of Passing-off, para. 2–062. 8 Cf. wipo Model Provisions, para. 1.07. 9 See below p. 72.

Article 10bis and the wto

19

– the subjects to be protected (‘the establishment, the goods, or the industrial or commercial activities, of a competitor’, Nos. 1 and 2; ‘the nature, the manufacturing process, the characteristics, the suitability for their purpose, or the quantity, of the goods’, No. 3) and – itemized acts of competition (‘all acts of such a nature as to create confusion’, No. 1; ‘false allegations … of such a nature as to discredit’, No. 2; ‘indications or allegations the use of which … is liable to mislead the public’, No. 3). In sum, we can learn two things from paragraph 3 of Article 10bis of the Paris Convention (1967): Firstly, protection based on unfair competition law is directed against particular acts. We will see hereinafter that this has an impact on the degree of protection guaranteed.10 Secondly, the protection from undesired acts is ensured in respect of clearly defined subjects. It bears noting that Article 10bis of the Paris Convention (1967) does not presuppose that the subject to be protected is the property of the competitor. As the us Supreme Court held in International News Service v. Associated Press, ‘the question of unfair competition in business … does not depend upon any general right of property’.11 That is, Nos. 1 and 2 of Article 10bis(3) of the Paris Convention (1967) protect the establishment of a competitor against confusion and discrediting, regardless of whether it is owned by the competitor; it suffices that it can be attributed to him. This finding is confirmed when taking another covered subject into account, namely ‘the industrial or commercial activities’, where only an attribution makes sense. (b) Articles 22 and 39 of the trips Agreement The other explicit cases of application of the doctrine of unfair competition in the trips Agreement follow the same regulatory model: Article 22.2(a) of the trips Agreement protects the geographical origin of the good (the subject) against misleading the public (the act). Besides, Article 22.2(b) of the trips Agreement refers to Article 10bis of the Paris Convention (1967), and consequently incorporates that model. The legal effect of this reference is to substitute the subjects covered by Article 10bis of the Paris Convention (1967) with the subject of Article 22 of the trips Agreement. Otherwise, the reference would be futile because some of the subjects mentioned in paragraph 3 of Article 10bis of the Paris Convention (1967), such as the establishment of a competitor or the quantity of goods, cannot be correlated with intellectual property rights. As a result, the geographical origin of the good is protected 10 11

See below p. 22. Supreme Court of United States, International News Service v. Associated Press, p. 235 (Pitney J.).

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from confusion, discrediting, and misleading pursuant to Article 22.2(a) and (b) of the trips Agreement.12 Subparagraph a) had to be added for reasons of clarification because of a dispute over whether Article 10bis(3) No. 3 of the Paris Convention (1967) includes misleading as to the origin.13 Furthermore, Article 22.4 of the trips Agreement extends the scope of application to another case, viz. misrepresentation to the public.14 The same is true of Article 39 of the trips Agreement. Although being a legal category in its own right, this norm, commensurate with its first paragraph, avails itself of Article 10bis of the Paris Convention (1967) as a regulatory tool to protect two subjects, namely ‘undisclosed information … and data submitted to governments or governmental agencies’.15 As to the behavioural patterns to be prevented, footnote 10 to Article 39 of the trips Agreement draws up a list. This provision emphasizes once more that the protection against unfair competition, here ‘the possibility of preventing information … from being disclosed to, acquired by, or used by others’, is contingent upon the finding that a dishonest commercial practice is given.16 (c) Conclusions To summarize, we could ascertain that the trips Agreement employs the doctrine of unfair competition in the following ways: It Protects

Against

the geographical origin of misleading the public the good creating confusion, discrediting

According to Articles 22.2(a) and 24.8 of the trips Agreement Article 22.2(b) of the trips Agreement in conjunction with Article 10bis(3) Nos. 1 and 2 of the Paris Convention (1967)

12 Henning-Bodewig, ‘International Protection Against Unfair Competition’, p. 179. 13 Wadlow, The Law of Passing-off, para. 2–009; Brand in Stoll/Busche/Arend, Article 2 para. 111; Asland, p. 7 footnote 20. For it: Larson Guerra in gtz, p. 386; Evans/Blakeney in Westkamp, p. 267. Against it: Beater, Unlauterer Wettbewerb, § 4 para. 367; Pflüger, p. 143; ­Henning-Bodewig, Unfair Competition Law, p. 19; Micklitz, p. 468; Reger, p. 22; Ladas, vol. iii, p. 1734; Bodenhausen, p. 146. 14 unctad-ictsd Resource Book, p. 295. 15 unctad-ictsd Resource Book, pp. 521, 527, 532 f; Stoll/Busche/Arend, Introduction ii para. 48, Article 39 para. 9; Schulte-Beckhausen/Maaßen in Gloy/Loschelder/Erdmann, § 12 para. 2; Cottier in Macrory/Appleton/Plummer, vol. i, p. 1100; Correa, Trade Related Aspects of Intellectual Property Rights, pp. 367 f. 16 unctad-ictsd Resource Book, p. 528.

21

Article 10bis and the wto It Protects

undisclosed information

data submitted to ­governments or ­governmental agencies the establishment, the goods, or the industrial or commercial activities, of a competitor the nature, the manufacturing process, the characteristics, the suitability for their purpose, or the quantity, of the goods

Against

According to

misrepresenting

Article 22.4 of the trips Agreement footnote 10 to Article 39.2 of the trips Agreement

breach of contract, breach of confidence, inducement to breach unfair commercial use Article 39.3 of the trips Agreement creating confusion, discrediting

misleading the public

Article 2.1 of the trips Agreement in conjunction with Article 10bis(3) Nos. 1 and 2 of the Paris Convention (1967) Article 2.1 of the trips A ­ greement in conjunction with Article 10bis(3) No. 3 of the Paris Convention (1967)

From the legal examples, we may deduce a common pattern according to which a case of application of the doctrine of unfair competition comprises a dishonest act of competition in relation to a particular subject. Possible subjects vary and encompass any industrial or commercial activity, as evidenced by Nos. 1 and 2 of Article 10bis(3) of the Paris Convention (1967). Against this background, a preliminary result as to the meaning of ‘in respect of’ in Article 2.1 of the trips Agreement is that it connects the prohibitions of Article 10bis of the Paris Convention (1967) with the subjects falling under the trips Agreement. At the same time, it follows from Article 2.1 of the trips Agreement that Article 10bis of the Paris Convention (1967), as a matter of principle, is applicable in addition to the provisions protecting intellectual property subject matters.17 We will see hereinafter whether the doctrine of ­unfair competition is constrained to the above-mentioned subjects or whether other subjects that are not explicitly regulated in the trips Agreement, such as traditional knowledge, could be addressed by it too. At this point, it is worth recalling that Article 2.1 of the trips Agreement refers to the entire Article 10bis of the Paris Convention (1967), and not only to its paragraph 3. 17

Cf. Ladas, vol. iii, pp. 1689 f.

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2 Function of the Doctrine of Unfair Competition Above, the doctrine of unfair competition was described as a public policy instrument.18 Its flexibility makes it a suitable remedy for the solution of unsettled legal problems, such as when novel technologies emerge.19 For instance, in Germany, plant varieties,20 tape recordings,21 new fashion,22 computer programs23 and databases24 were all protected against imitation on the grounds of unfair competition law before the legislature implemented corresponding intellectual property rights.25 By the same token, one manifestation of the doctrine of unfair competition, the so-called ‘misappropriation doctrine’,26 was made use of in the United States Semiconductor Chip Protection Act of 1984 to demarcate illicit chip piracy from lawful copying.27 Unfair competition law thus appears to be a preliminary stage to intellectual property protection.28 By 18 19

See above p. 1. Abbott/Cottier/Gurry, p. 699; Cottier/Jevtic in Drexl et al., p. 694; Cottier/Germann in Takagi/Allman/Sinjela, p. 163. For German law, see Eck in Gloy/Loschelder/Erdmann, § 22 para. 17; Götting, Wettbewerbsrecht, § 1 para. 35, § 6 paras. 2, 27. For Dutch law, see de Vrey, p. 140 footnote 362. 20 Bundesgerichtshof, Nelkenstecklinge (1959) 61 Zeitschrift für Gewerblichen Rechtsschutz und Urheberrecht 240. 21 Bundesgerichtshof, Vortragsabend (1963) 65 Zeitschrift für Gewerblichen Rechtsschutz und Urheberrecht 575, 576. 22 Bundesgerichtshof, Modeneuheit (1973) 75 Zeitschrift für Gewerblichen Rechtsschutz und Urheberrecht 478; Bundesgerichtshof, Hemdblusenkleid (1984) 86 Zeitschrift für Gewerblichen Rechtsschutz und Urheberrecht 453. 23 Oberlandesgericht Frankfurt, Donkey Kong Junior ii (1984) 86 Zeitschrift für Gewerblichen Rechtsschutz und Urheberrecht 509; Oberlandesgericht Frankfurt, Donkey Kong Junior (1983) 85 Zeitschrift für Gewerblichen Rechtsschutz und Urheberrecht 757. 24 Bundesgerichtshof, Tele-Info-cd (1999) 101 Zeitschrift für Gewerblichen Rechtsschutz und Urheberrecht 923, 926. 25 Ohly, ‘The Freedom of Imitation and Its Limits’, p. 522; Westkamp, ‘Direct Appropriation, Unfair Competition and Quasi-Proprietary Rights’, pp. 75 ff. 26 Revised Outline of Policy Options and Legal Mechanisms, wipo Doc. WIPO/GRTKF/IC/9/ INF/5, Annex paras. 21 ff. 27 See 17 u.s.c. § 906. 28 Abbott/Cottier/Gurry, p. 699; Cottier/Jevtic in Drexl et al., p. 669; Cottier/Germann in Takagi/Allman/Sinjela, pp. 137, 140; Cottier/Panizzon in Biber-Klemm/Cottier, pp. 226 f; Kamperman Sanders, Unfair Competition Law, p. 9. For United States law, see Wadlow, ‘Rudolf Callmann and the Misappropriation Doctrine’, p. 50; Fujichaku, p. 439. For German law, see Eck in Gloy/Loschelder/Erdmann, § 22 para. 10; Westkamp, ‘Direct Appropriation, Unfair Competition and Quasi-Proprietary Rights’, p. 75.

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filling lacunae in the intellectual property system, it offers a legal basis to fit new needs.29 International law faces similar challenges. The legal reality is that urgent issues await solutions, but new regulations are long in coming. Even where the need for legal protection is beyond doubt, tailor-made instruments are frequently wanting. In the interim, jurisprudence must not be in denial. For those seeking justice internationally, the wto has a certain appeal because of its powerful law enforcement mechanism. Within the wto system, the doctrine of unfair competition could function as a stopgap measure until more specific rules have been put in place.30 Notably paragraph 2 of Article 10bis of the Paris Convention (1967) stands out as an appropriate tool to respond to unfulfilled needs of protection. However, one precondition for making recourse to Article 10bis of the Paris Convention (1967) in case a need cannot be addressed by existing intellectual property rights is that the Article may be applied independently. From a legalistic point of view, such a stopgap function would be feasible because of the open-texturedness of the terms used in Article 10bis of the Paris Convention (1967). What is considered ‘honest’ may change over time.31 In this regard, it is similar to ‘public morals’ about which the panel in us – Gambling stated that it ‘can vary in time and space, depending upon a range of factors, including prevailing social, cultural, ethical and religious values’.32 The innate 29

30

31

32

Ohly, ‘The Freedom of Imitation and Its Limits’, p. 506; Cottier/Jevtic in Drexl et al., p. 671; Cottier/Germann in Takagi/Allman/Sinjela, pp. 138, 145; Kors, pp. 103, 114; HenningBodewig, Unfair Competition Law, p. 5; Ghidini, p. 112; Reichman, ‘Of Green Tulips and Legal Kudzu’, pp. 1784, 1788. For German law, see Eck in Gloy/Loschelder/Erdmann, § 22 para. 10; Westkamp, ‘Direct Appropriation, Unfair Competition and Quasi-Proprietary Rights’, p. 78. For Dutch law, see de Vrey, p. 140 footnote 362. Contra England and Wales Court of Appeal (Civil Division), L’Oréal v. Bellure, para. 141 (Jacob l.j.), but see also Kamperman Sanders, Unjust Enrichment, p. 2. Cottier/Jevtic in Drexl et al., pp. 669 f, 682; Cottier, ‘Industrial Property, International Protection’ in mpepil, para. 65. Contra England and Wales Court of Appeal (Civil Division), L’Oréal v. Bellure, para. 141 (Jacob l.j.). unctad-ictsd Resource Book, p. 528; wipo, Protection Against Unfair Competition, para. 29; Cottier/Germann in Takagi/Allman/Sinjela, p. 136; Kors, p. 113; Correa, Trade Related Aspects of Intellectual Property Rights, p. 371. For European Union law, see Opinion of Advocate General Jacobs, Hölterhoff v. Freiesleben, para. 57. For German law, see Dörre in Gloy/Loschelder/Erdmann, § 44 para. 1, § 48 para. 122. Panel Report, us – Gambling, para. 6.461. Cf. Cottier/Germann in Takagi/Allman/Sinjela, p. 136.

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future-compliance of ‘honest practices’ finds further expression in the fact that the list of definitive acts of unfair competition in paragraph 3 of Article 10bis of the Paris Convention (1967) is not exhaustive, as the wording ‘in particular’ indicates.33 Given its evolutionary nature, the meaning of ‘honest’ can only be determined at a particular point in time.34 This is borne out by the ratio legis of Article 10bis of the Paris Convention (1967) ‘to assure … effective protection against unfair competition’ (emphasis added). What paragraph 1 stipulates here is a continuing obligation, and hence one that ‘cannot remain unaffected by the subsequent development of law’.35 To serve its purpose, the protective mechanism must be up to date.36 Adjudicators are called upon to safeguard today’s honest practices, not to enforce obsolete convictions. Although unfair competition law may have a ‘pacemaker’ function for intellectual property rights,37 it is conceptually different from intellectual property law.38 Intellectual property law, on the one hand, grants ‘private rights’ to a particular right holder.39 The doctrine of unfair competition, on the other hand, prohibits specific competitive behaviours so as to uphold honesty in competition.40 As a matter of principle, it does not confer a firm or exclusive

33

34 35 36 37 38

39

40

wipo, Protection Against Unfair Competition, paras. 21, 41; Pflüger, pp. 115, 138; Wadlow, The Law of Passing-off, para. 2–009; Cottier/Jevtic in Drexl et al., pp. 674 f; Cottier/Germann in Takagi/Allman/Sinjela, p. 143; Evans/Blakeney in Westkamp, p. 267; Morcom, p. 126; Henning-Bodewig, Unfair Competition Law, p. 19. unctad-ictsd Resource Book, p. 528; Ladas, vol. iii, p. 1689. See also International Court of Justice, Advisory Opinion, Namibia (s.w. Africa), para. 53. Cf. International Court of Justice, Advisory Opinion, Namibia (s.w. Africa), para. 53. See below p. 65. For German law, see Sambuc in Harte-Bavendamm/Henning-Bodewig, Einleitung G para. 220, § 4 No. 9 para. 16; Götting, Wettbewerbsrecht, § 6 para. 2. Pflüger, pp. 371 f; Wadlow, ‘Regulatory Data Protection Under trips Article 39(3) and Article 10bis of the Paris Convention’, p. 397; Henning-Bodewig in Henning-Bodewig, International Handbook on Unfair Competition, § 1 paras. 11, 14 ff, 20, 23. See recital 4 of the Preamble to the trips Agreement. See also Waelde et al., para. 1.19; Niemann, p. 7; Liebig, p. 59; Thouvenin, pp. 267 ff; Cullet et al. in Biber-Klemm/Cottier, pp. 113 ff. wipo, Protection Against Unfair Competition, para. 2; Cottier/Jevtic in Drexl et al., p. 670; de Carvalho, The trips Regime of Antitrust and Undisclosed Information, para. 39.3.49; Henning-Bodewig in Hilty/Henning-Bodewig, Law Against Unfair Competition, p. 53; de Vrey, pp. 2 f. For German law, see Sambuc in Harte-Bavendamm/Henning-Bodewig, Einleitung G para. 178, § 4 No. 9 para. 22. For Peruvian law, see Sainz de Aja in Pasquel/Patrón/ Pérez Costa, p. 51.

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legal position in the likeness of intellectual property rights.41 To put it in a nutshell: – intellectual property law protects intangible assets as such, viz. an invention (Article 27.1 of the trips Agreement), a literary and artistic work (Article 2(1) of the Berne Convention (1971)), etc.,42 while – unfair competition law protects against dishonest commercial practices, such as dishonest product marketing.43 An example makes the ramifications of this apparent: as mentioned above, the protection of undisclosed information is based on the doctrine of unfair competition.44 Paragraph 2 of this Article prohibits the dishonest disclosure, acquisition, or use of trade secrets. The information as such is only de facto ­protected as a consequence of its secrecy, i.e. due to the fact that it ‘has been subject to reasonable steps … to keep it secret’, cf. Article 39.2(c) of the trips Agreement.45 If a third party independently came up with the same ­information, be it by accident, discovery, or reverse engineering, Article 39 of the trips Agreement would afford no remedy, whereas a monopoly right in the same situation would, cf. the right to prevent use by third parties, as provided

41

42 43

44 45

unctad-ictsd Resource Book, p. 521; Wadlow, ‘Regulatory Data Protection Under trips Article 39(3) and Article 10bis of the Paris Convention’, p. 397; Cottier/Germann in Takagi/ Allman/Sinjela, p. 131; Kors, p. 103; Correa, ‘Unfair Competition Under the trips Agreement’, p. 82; Henning-Bodewig, ‘International Protection Against Unfair Competition’, p. 176. For German law, see Rittner/Dreher/Kulka, § 1 para. 103. For Swiss law, see Thouvenin, p. 548. For Peruvian law, see Sainz de Aja in Pasquel/Patrón/Pérez Costa, p. 51. Consolidated Survey, wipo Doc. WIPO/GRTKF/IC/5/7, para. 6; Hilty in Hilty/HenningBodewig, Law Against Unfair Competition, p. 23; Thouvenin, p. 559. Elfring/Arend in Stoll/Busche/Arend, Article 1 para. 18; Westkamp, ‘Direct Appropriation, Unfair Competition and Quasi-Proprietary Rights’, p. 73; Henning-Bodewig, Unfair Competition Law, p. 5. For German law, see Köhler in Köhler/Bornkamm, § 4 para. 9.4. For Swiss law, see Thouvenin, pp. 522, 543. For Spanish law, see Alicante Community Trademark Court, Asterix (2008) 39 International Review of Intellectual Property and Competition Law 364, 371 f. See Article 39.1 of the trips Agreement. See above p. 19. unctad-ictsd Resource Book, p. 527; de Carvalho, The trips Regime of Antitrust and Undisclosed Information, paras. 39.1.49, 39.2.59. De Carvalho makes a distinction for Article 39.3 of the trips Agreement and wants to afford exclusivity to ‘test or other data’ or, alternatively, compensate for the use of such data by ‘governments or governmental agencies’ for the benefit of a competitor of the originator, cf. paras. 39.3.98, 39.3.105, 39.3.108, 39.3.116 f. Contra Correa, Trade Related Aspects of Intellectual Property Rights, pp. 368, 388 ff.

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in Articles 16(1), 23(1) and 28(1) of the trips Agreement.46 That is, undisclosed information acquired in an honest manner may be used legally.47 It follows that protection on the basis of unfair competition law is not absolute.48 Moreover, when relying on unfair competition law, a plaintiff would have to prove the occurrence of dishonest behaviour by the defendant.49 By contrast, reliance on intellectual property law merely requires proof of ownership of a right, which can then simply be invoked.50 Since the threshold of proof is lower, intellectual property protection is stronger than protection under unfair competition law from a procedural point of view as well. In terms of sanctions, intellectual property law has the stricter system, considering that Part iii of the trips Agreement applies without limitation.51 Taken together, this amounts to a subsidiarity of Article 10bis of the Paris Convention (1967) to intellectual property rights to the effect that the legal analysis has to start from here.52 According to the panel in us – Section 211 Appropriations Act, ‘the ordinary meaning of the term “in respect of” is in “relation [to], connection [with], ­reference [to]”’.53 Consequently, one way of reading the ‘reference’ embodied 46

47 48

49

50

51 52

53

Varadarajan, pp. 397, 409; de Carvalho, The trips Regime of Antitrust and Undisclosed Information, paras. 39.1.49, 39.3.70; Drahos/Frankel, p. 18; Chen, p. 24. This also applies to ‘test or other data’ within the meaning of Article 39.3 of the trips Agreement, cf. de Carvalho, The trips Regime of Antitrust and Undisclosed Information, para. 39.3.117. Reger, p. 252. unctad-ictsd Resource Book, p. 528; Henning-Bodewig, ‘Internationale Standards gegen unlauteren Wettbewerb’, p. 1; Peter/Michaelis in Stoll/Busche/Arend, Article 39 paras. 8 f; Reger, p. 252. Wadlow, ‘Regulatory Data Protection Under trips Article 39(3) and Article 10bis of the Paris Convention’, p. 397; Henning-Bodewig, ‘Relevanz der Irreführung, uwg-­ Nachahmungsschutz und die Abgrenzung Lauterkeitsrecht/IP-Rechte’, p. 988; Staten, p. 235; de Vrey, p. 312; Reger, p. 252. Wadlow, ‘Regulatory Data Protection Under trips Article 39(3) and Article 10bis of the Paris Convention’, p. 397; Ladas, vol. iii, p. 1707. For the procedural difference between Article 22 and Article 23 of the trips Agreement, see Murphy, pp. 1218 f. For German law, see de Vrey, p. 193. See below p. 38. Cf. Henning-Bodewig, Unfair Competition Law, p. 5. For German law, see Ohly in Ohly/ Sosnitza, Einf D paras. 79, 81. For Spanish law, see Alicante Community Trademark Court, Asterix (2008) 39 International Review of Intellectual Property and Competition Law 364, 371 f. For Peruvian law, see Sainz de Aja in Pasquel/Patrón/Pérez Costa, p. 52. Panel Report, us – Section 211 Appropriations Act, para. 8.30 (footnote omitted); Appellate Body Report, us – Section 211 Appropriations Act, para. 331.

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in ‘in respect of’ is as an indication of the aforementioned subsidiarity. Such an outcome would be problematic, however, because ‘in respect of’ would then have different meanings depending on the Article of the Paris Convention to which Article 2.1 of the trips Agreement refers in a concrete case, as one cannot reasonably say that the intellectual property rights regulated in the Paris Convention are subsidiary to the ones in the trips Agreement. On account of their different objectives, the doctrine of unfair competition may find application independently of, or in addition to, intellectual property law, cf. Article 1(2) of the wipo Model Provisions on Protection Against Unfair Competition (the ‘wipo Model Provisions’).54 As the title suggests, the Model Provisions are not obligatory.55 Nonetheless, they may provide assistance on the interpretation.56 In the words of the panel in ec – Approval and Marketing of Biotech Products, the Model Provisions are ‘considered for their informative character’.57 On this basis, Article 10bis of the Paris Convention (1967) either stands alone or, where intellectual property rights are available, it complements their scope of protection. This finding does not yet answer the question whether the term ‘in respect of’ in Article 2.1 of the trips Agreement confines Article 10bis of the Paris Convention (1967) to supplementary protection within the trips framework. If this was the case, a treaty interpreter would always have to first check if an intellectual property right is pertinent before having recourse to Article 10bis of the Paris Convention (1967).58 In other words, a narrow reading of ‘in respect of’ would imply a precondition for the doctrine of unfair competition to apply. To what extent such an interpretation would constrain the scope of Article 10bis of the Paris Convention (1967) at the extreme is highlighted by the following: Article 10bis(3) No. 1 of the Paris Convention (1967), for example, would additionally require that the goods of the competitor with which confusion is created are predicated upon a patented invention, such as in cases of product imitation. 54 55

wipo Model Provisions, para. 1.11. Henning-Bodewig, ‘Internationale Standards gegen unlauteren Wettbewerb’, p. 8; Emmerich, p. 12; Pflüger, pp. 91, 147; Schulte-Beckhausen/Maaßen in Gloy/Loschelder/­ Erdmann, § 12 para. 3; de Vrey, p. 23. 56 Cf. wipo Model Provisions, para. 1.01; Schulte-Beckhausen/Maaßen in Gloy/Loschelder/ Erdmann, § 12 para. 3; Höpperger/Senftleben in Hilty/Henning-Bodewig, Law Against Unfair Competition, p. 73. Contra Drexl in Säcker/Rixecker/Oetker, IntLautR, para. 34. 57 Panel Report, ec – Approval and Marketing of Biotech Products, para. 7.92. 58 Cf. Wadlow, The Law of Passing-off, paras. 2–065, 2–070.

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3 Principle of In Dubio Mitius Such a narrow reading of ‘in respect of’ finds support in the principle of in dubio mitius.59 In accordance with the Appellate Body in ec – Hormones, one could argue that ‘[w]e cannot lightly assume that sovereign states intended to impose upon themselves the more onerous, rather than the less burdensome, obligation’.60 On that basis, a broad interpretation of ‘in respect of’ in Article 2.1 of the trips Agreement would be ruled out because it would entail more far-reaching obligations for the Members. In a footnote, the Appellate Body defined this principle as follows: If the meaning of a term is ambiguous, that meaning is to be preferred which is less onerous to the party assuming an obligation, or which interferes less with the territorial and personal supremacy of a party, or involves less general restrictions upon the parties.61 On the face of it, it appears convincing because it starts from the premise that parties, states or private persons,62 are only bound to the extent that they have expressed their will to be bound. It appears justified by the notion of independence,63 to wit: in the case of states, by their sovereignty,64 and in the case of private persons, by their private autonomy.65 Nonetheless, the Appellate Body has been heavily criticized for resorting to in dubio mitius, even for methodological reasons.66 One strong view vehemently rejects this principle.67 It is submitted that in dubio mitius overemphasizes the concept of sovereignty,68 and threatens to undermine the wto as a legal order.69 Even so, 59 60 61 62 63 64

65 66 67

68 69

For this principle, see Larouer, pp. 1 ff; Cameron/Gray, pp. 258 ff. Appellate Body Report, ec – Hormones, para. 165. Pro Mavroidis, ‘No Outsourcing of Law?’, p. 443. Appellate Body Report, ec – Hormones, para. 165 footnote 154. Cf. Larouer, p. 22. Arbitral Decision, Kronprins Gustaf Adolf, p. 1254. Crema, pp. 684 f; van Damme, Treaty Interpretation by the wto Appellate Body, p. 61; Linderfalk, On the Interpretation of Treaties, p. 281; Göttsche in Hilf/Oeter, § 5 para. 46; Lauterpacht, p. 58. Barta, p. 306; Duden, Recht A-Z, ‘Privatautonomie’. See also Crema, pp. 690 f. Larouer, p. 31; Lennard, p. 88. Crema, p. 682; van Damme, Treaty Interpretation by the wto Appellate Body, pp. 64 f; Vöneky, ‘Analogy in International Law’ in mpepil, para. 16; Larouer, pp. 36 ff; Jackson in Taniguchi/Yanovich/Bohanes, pp. 23, 33; Cottier/Nadakavukaren Schefer in Cottier, The Challenge of wto Law, p. 104; Lennard, pp. 63 ff; Bernhardt, p. 14; Lauterpacht, pp. 62 f. Gaeta, pp. 638 f. Larouer, p. 3.

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Hudec contends that, at that stage of development, it helped secure the existence of the Appellate Body.70 To be able to form an own opinion, one has to understand the modus operandi of the principle first, particularly with regard to wto law. In case of ambiguity, the in dubio mitius principle leads the interpretation only in one direction: partisan state interests are categorically favoured, even over the objective for which the agreement was concluded in the first place.71 It differs in this respect from the principle of judicial economy which is tantamount to an act of judicial self-restraint,72 and according to which the respective question of interpretation would be left unanswered.73 As it is equally fair to assume that the Members intended the wto Agreement to be effective, in dubio mitius is at variance with the interpretive principle of effectiveness,74 which is a corollary of the tenet of good faith in Article 31(1) of the Vienna Convention.75 Since us – Gasoline, the Appellate Body stressed that interpretation must give meaning and effect to all the terms of a treaty. An interpreter is not free to adopt a reading that would result in reducing whole clauses or paragraphs of a treaty to redundancy or inutility.76 (footnote omitted)

70 71 72 73

74 75

76

Hudec, pp. 30 f. See also Larouer, pp. 43 ff; Howse, ‘Back to Court After Shrimp/Turtle?’, p. 1350. Larouer, pp. 2, 8, 29. See also Permanent Court of Arbitration, Award, Iron Rhine, para. 53. Larouer, p. 43. Appellate Body Report, us – Wool Shirts and Blouses, p. 19; Appellate Body Report, ec – Poultry, para. 135; Appellate Body Report, Turkey – Textiles, para. 65; Göttsche in Hilf/ Oeter, § 5 para. 73; Cameron/Gray, p. 282. Larouer, pp. 23, 29, 39 f; Lennard, p. 88; Stone, pp. 353 f; Lauterpacht, p. 67. Appellate Body Report, us – Gasoline, p. 23; Appellate Body Report, Japan – Alcoholic Beverages ii, p. 12; Appellate Body Report, us – Section 211 Appropriations Act, para. 338; Panel Report, us – Gambling, paras. 6.46, 6.49 f; ‘Draft Articles on the Law of Treaties with commentaries’ [1966] ii(2) Yearbook of the International Law Commission, p. 219 para. 6; Herdegen, ‘Interpretation in International Law’ in mpepil, para. 30; Villiger, Article 31 para. 12; Correa in Macrory/Appleton/Plummer, vol. ii, p. 429; Lennard, p. 58. To be precise, the principle of effectiveness follows from the requirement of contextual interpretation, as Chase, pp. 807 f, points out. Appellate Body Report, us – Gasoline, p. 23. See also Appellate Body Report, Japan – A ­ lcoholic Beverages ii, p. 12; Appellate Body Report, Canada – Dairy, paras. 133, 136; ­Appellate Body Report, Argentina – Footwear (ec), paras. 81, 88; Appellate Body Report, Korea – Dairy, paras. 80 ff; Appellate Body Report, us – Upland Cotton, para. 549; Panel ­Report, China – Intellectual Property Rights, para. 7.538; Panel Report, us – Gambling, ­paras. 6.46, 6.49.

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The notion that a legislature does not make tautological or superfluous provisions is a principle known from national law (‘ut res magis valeat quam pereat’).77 A treaty interpreter not heeding it would ride roughshod over the legislative will – in this context, the will of the wto Membership.78 It is barely comprehensible how the Appellate Body can endorse both in dubio mitius and the principle of effectiveness.79 In a general sense, the principle of in dubio mitius serves to demarcate areas of responsibility between national and international law.80 Applied within the wto framework, it is geared towards safeguarding the regulatory freedom of the Members by restricting the adjudicating bodies.81 By the same token, it reinforces the Members’ responsibility to remedy shortcomings in the system. On the downside, being a knockout argument, the principle may result in a denial of justice in individual cases. When Members cannot agree on a solution, but want to come to an agreement nevertheless, they sometimes use ambiguous treaty language with a view to papering over their discord.82 In so doing, they purposely hand over the responsibility to the adjudicating bodies. If, in such a situation, the adjudicating bodies applied in dubio mitius, i.e. referred the responsibility back to the Members, the respective issue would remain unsolved, although the Members, by the conclusion of the agreement, clearly expressed their will towards a solution. We can establish that the principle of in dubio mitius is to be dealt with carefully, especially considering that it finds no reflection in the rules of interpretation of the Vienna Convention.83 Accordingly, the Appellate Body in China – Publications and Audiovisual Products hesitated to apply it.84 In dubio mitius may be an apt tool for the interpretation of unilateral declarations,85 but given that its regular application would favour the respondents in wto 77 Linderfalk, On the Interpretation of Treaties, pp. 117 ff; Villiger, Article 31 para. 12; Westlaw, Black’s Law Dictionary Online, ‘ut res magis valeat quam pereat’. 78 Cf. Shaffer/Trachtman, p. 123. 79 Larouer, pp. 29 f. 80 Cf. Permanent Court of Arbitration, Award, Iron Rhine, para. 53; Larouer, p. 49. 81 Göttsche in Hilf/Oeter, § 5 para. 46. 82 Holmes in de Búrca/Scott, p. 65; Shaffer/Trachtman, pp. 107, 110; Bagchi, p. 1541; Lennard, p. 59. 83 Permanent Court of Arbitration, Award, Iron Rhine, para. 53; icsid Decision on Jurisdiction, Siemens v. Argentina, para. 81; Herdegen, ‘Interpretation in International Law’ in mpepil, para. 29; Crema, p. 687; Larouer, pp. 6 ff; Neumann, Die Koordination des wtoRechts mit anderen völkerrechtlichen Ordnungen, p. 354. 84 Appellate Body Report, China – Publications and Audiovisual Products, para. 411. 85 International Court of Justice, Judgment, Nuclear Tests (Australia v. France), para. 44.

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proceedings, it is too undifferentiated to serve as a guide for a multilateral trading system predicated on a balance of rights and obligations.86 In any event, the present question of interpretation can be solved without recourse to the principle of in dubio mitius, as the Appellate Body shed some light on the term at issue in the Havana Club case.87 4 The Havana Club Case The relevant facts of this case are as follows: a us law barred trade names from being registered or renewed if they were previously abandoned by trade name owners whose businesses had been expropriated under Cuban law, unless the original owners consented.88 One of the legal issues was whether or not trade names, which are protected under Article 8 of the Paris Convention (1967), fall within the ambit of the trips Agreement.89 The panel denied this,90 and instead wanted to confine the covered subjects to the ones specified ‘in the titles of Sections 1 through 7 of Part ii’.91 The panel’s reasoning was primarily based upon Article 1.2 of the trips Agreement, which reads: For the purposes of this Agreement, the term ‘intellectual property’ refers to all categories of intellectual property that are the subject of Sections 1 through 7 of Part ii. In sum, it ran as follows:92 The trips Agreement only deals with intellectual property rights. What intellectual property rights are within the meaning of the trips Agreement is defined in Article 1.2 of that Agreement, cf. the ­wording 86 87

88

89 90 91

92

See Article 3.3 of the dsu. See also Van Damme, Treaty Interpretation by the wto Appellate Body, pp. 64 f; Lennard, pp. 63 ff. For this approach, see Permanent Court of International Justice, Judgment, International Commission of the River Oder, p. 26; Permanent Court of International Justice, Advisory Opinion, Frontier Between Turkey and Iraq, p. 25; Neumann, Die Koordination des wtoRechts mit anderen völkerrechtlichen Ordnungen, p. 354. Cf. Wadlow, The Law of Passing-off, para. 2–066; Hoekman/Kostecki, p. 388. For more comprehensive case summaries, see Riffel, ‘Havana Club Case’ in mpepil; Abbott in Cottier, Trade and Intellectual Property Protection in wto Law, pp. 288 ff; Heim, pp. 547 ff. Appellate Body Report, us – Section 211 Appropriations Act, paras. 320 ff. Panel Report, us – Section 211 Appropriations Act, para. 8.41. Appellate Body Report, us – Section 211 Appropriations Act, paras. 331, 335 (original emphasis). Cf. Panel Report, us – Section 211 Appropriations Act, paras. 8.24, 8.30. Similarly, Reger, p. 297. Panel Report, us – Section 211 Appropriations Act, paras. 8.23 ff.

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‘for the purposes of this Agreement’. Consequently, the reference in Article 2.1 of the trips Agreement is to be understood as relating only to intellectual property rights within the meaning of Article 1.2. It is worth noting that the panel did not resort to the principle of in dubio mitius. Applied to the present case, this line of argument would lead to a negative outcome: since the repression of unfair competition forms no explicit section of Part ii of the trips Agreement – since there is no title ‘Unfair Competition Law’ –, it is ‘not a category of intellectual property covered by the trips Agreement’.93 This view finds further support in Article 22.3(f)(iii) of the dsu which defines ‘sector’ for the purposes of suspension of trips obligations, but does not list unfair competition. The aforementioned reasoning assumes as a premise that Article 1.2 of the trips Agreement is intended to be exhaustive.94 The Appellate Body, however, rejected this: ‘the phrase “the subject of Sections 1 through 7 of Part ii” deals not only with the categories of intellectual property indicated in each section title, but with other subjects as well’.95 Likewise, the European Court of Justice observed in Dior that ‘trips contains no express definition of what constitutes an “intellectual property right”’.96 As the wording shows, Article 1.2 simply ‘refers to all categories of intellectual property’ regulated in the trips Agreement.97 In addition, the trips Agreement knows very well how to distinguish when it really wants to restrict the application of a provision. In order to limit the scope of Articles 3 and 4 of the trips Agreement regarding the exercise of intellectual property rights, the Agreement uses the formulation ‘intellectual property rights specifically addressed in this Agreement’ in footnote 3.98 Moreover, the Appellate Body emphasized in the Havana Club case that Article 2.1 explicitly incorporates Article 8 of the Paris Convention (1967) into the trips Agreement. … If the intention of the negotiators had been to exclude trade names from protection, there would have been no purpose whatsoever in including Article 8 in the list of Paris 93 94 95 96 97 98

Panel Report, us – Section 211 Appropriations Act, paras. 8.24, 8.30, 8.41; Henning-Bodewig in Hilty/Henning-Bodewig, Law Against Unfair Competition, p. 59. Cf. Panel Report, us – Section 211 Appropriations Act, para. 8.26. Appellate Body Report, us – Section 211 Appropriations Act, para. 335 (original emphasis). European Court of Justice, Judgment, Dior, para. 55. Elfring/Arend in Stoll/Busche/Arend, Article 1 paras. 2, 14. Elfring in Stoll/Busche/Arend, Article 3 para. 4; Drexl in Säcker/Rixecker/Oetker, Int LautR, para. 31 footnote 83. Correa, Trade Related Aspects of Intellectual Property Rights, p. 62, regards the incorporated intellectual property rights as encompassed by footnote 3.

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Convention (1967) provisions that were specifically incorporated into the trips Agreement.99 The European Court of Justice followed suit and acknowledged in AnheuserBusch an obligation of the Members ‘by virtue of the trips Agreement … to protect trade names’.100 As a corollary, the general question of whether there is a numerus clausus of intellectual property rights101 can remain unanswered here because Article 2.1 of the trips Agreement explicitly incorporates Article 10bis of the Paris Convention (1967) too.102 Thus, like trade names in Article 8 of the Paris Convention (1967), the establishment of a competitor or its industrial or commercial activities have become recognized subjects under the trips regime which are to be protected from specific interferences. In the Havana Club case the Appellate Body transformed the meaning of ‘in respect of’ in Article 2.1 of the trips Agreement to ‘in addition to’. On this basis, Part ii of the trips Agreement functions as an addition to and concretization of the substantive law of the Paris Convention.103 This result has been criticized as a violation of the principle of effectiveness because it makes the phrase ‘in respect of’ superfluous.104 I will comment on this hereinafter.105 It bears noting that Article 1(2) of the Paris Convention (1967) subsumes the ‘repression of unfair competition’ under ‘industrial property’,106 and that this classification is germane to the trips Agreement by virtue of Article 2.1 of that Agreement.107 Following the systematics of the Paris Convention, unfair 99 Appellate Body Report, us – Section 211 Appropriations Act, paras. 336, 338. 100 European Court of Justice, Judgment, Anheuser-Busch, para. 91. 101 Pro Glöckner, Europäisches Lauterkeitsrecht, pp. 410, 593; Leistner in Ehlers/Wolffgang/ Pünder, p. 171; unctad-ictsd Resource Book, pp. 45, 54. Contra Bratspies, p. 332; Cottier, ‘The Protection of Genetic Resources and Traditional Knowledge’, p. 572. See also Article 2(viii) of the wipo Convention. 102 Elfring, p. 58 footnote 154; Elfring/Arend in Stoll/Busche/Arend, Article 1 paras. 16 f; Gervais, ‘Agreement on Trade-Related Aspects of Intellectual Property Rights (1994)’ in mpepil, para. 19; Dutfield, ‘Protecting Traditional Knowledge’, p. 27. Contra Wadlow, The Law of Passing-off, para. 2–072, who considers the reference in Article 2.1 of the trips Agreement to be random. 103 Bossche/Zdouc, p. 961; Stoll/Raible in Prieß/Berrisch, B.iii. para. 12. 104 Wadlow, The Law of Passing-off, para. 2–070; Pflüger, p. 85. 105 See below p. 34. 106 Unlike European Union law, cf. European Court of Justice, Judgment, Commission v. I­ reland, para. 8. See Glöckner in Hilty/Henning-Bodewig, Law Against Unfair Competition, p. 80. 107 Contra Henning-Bodewig, Unfair Competition Law, p. 18.

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competition law is a category on its own, on a par with intellectual property rights.108 In a similar vein, the European Court of Justice held in Dior that a right to sue under general provisions of national law concerning wrongful acts, in particular unlawful competition, in order to protect an industrial design against copying may qualify as an ‘intellectual property right’ within the meaning of Article 50(1) of trips.109 Incidentally, this is in line with the Convention Establishing the World Intellectual Property Organization (the ‘wipo Convention’) which equates in Article 2(viii) the protection against unfair competition with intellectual property. Also, Article xx(d) of the gatt 1994 enumerates the most important intellectual property rights together with ‘the prevention of deceptive practices’.110 Micklitz makes a case for an inherent restriction of Article 10bis of the Paris Convention (1967) to ‘unfair competition related to industrial property’ in view of the fact that Article 1(1) of the Paris Convention mandates the Paris Union solely to protect industrial property.111 However, it is circular to infer that Article 10bis of the Paris Convention (1967) only protects against ‘unfair competition related to industrial property’, while according to Article 1(2) the whole field of unfair competition forms part of industrial property.112 What constitutes ‘unfair competition’ is set out in paragraph 2 of Article 10bis of the Paris Convention (1967), but the wording of this paragraph does not support such a narrow reading.113 5 Principle of Effectiveness An opposing view expressed in the literature wants to limit the application of Article 10bis of the Paris Convention (1967) to geographical indications and undisclosed information, respectively.114 This view can be countered with the 108 Pflüger in Hilty/Henning-Bodewig, Lauterkeitsrecht und Acquis Communautaire, p. 86 footnote 89; Cottier/Jevtic in Drexl et al., p. 675. Contra Henning-Bodewig, Unfair Competition Law, pp. 21 f. 109 European Court of Justice, Judgment, Dior, para. 62. 110 Cf. Panel Report, Korea – Various Measures on Beef, paras. 655, 658; Appellate Body Report, Korea – Various Measures on Beef, para. 158. 111 Micklitz, p. 467. 112 Pro Pflüger, pp. 121 ff; Pflüger in Hilty/Henning-Bodewig, Lauterkeitsrecht und Acquis Communautaire, p. 85. 113 Cottier/Jevtic in Drexl et al., pp. 675, 678. 114 Pflüger, pp. 76, 84 ff; Wadlow, The Law of Passing-off, paras. 2–060, 2–062, 2–070; Möllers/ Heinemann, p. 27; Schulte-Beckhausen/Maaßen in Gloy/Loschelder/Erdmann, § 12 para. 2; Glöckner, Europäisches Lauterkeitsrecht, pp. 289 f; Bender/Michaelis in Hilf/Oeter, § 22

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principle of effectiveness. It cannot explain why the negotiators of the trips Agreement have included the additional reference in Article 2.1 of the trips Agreement to Article 10bis of the Paris Convention (1967) in the first place. The salient point is not whether there remains a significant scope of application for Article 10bis of the Paris Convention (1967) in wto law – this is already ensured by the references in Articles 22.2(b) and 39.1 of the trips Agreement, as the opposing view correctly points out115 –, but whether the reference in Article 2.1 of the trips Agreement to Article 10bis of the Paris Convention (1967) is meaningful and effective. That is to say, in order to satisfy the principle of effectiveness, a treaty interpreter has to recognize cases of application for this reference, irrespective of Articles 22.2(b) and 39.1 of the trips Agreement. The reference would be redundant if it did not add anything to the trips Agreement. Moreover, as mentioned above, it is not possible to relate some subjects in paragraph 3 of Article 10bis of the Paris Convention (1967), such as the quantity of the goods, to intellectual property rights.116 That is why Articles 22.2(b) and 39.1 of the trips Agreement replace them with other subjects such as the geographical origin and undisclosed information/data. So that terms like ‘establishment’ and ‘quantity’ have meaning and effect, Article 2.1 of the trips Agreement in conjunction with Article 10bis of the Paris Convention (1967) must have an independent scope of application.117 All things considered, the Appellate Body report in the Havana Club case shows that the phrase ‘in respect of’ makes no conditions on the obligations arising from the incorporated provisions of the Paris Convention.118 The reproach that, in turn, ‘in respect of’ is made superfluous119 can be countered with Correa who reads Article 2.1 as a conflict clause in terms of Article 30(2) of the Vienna Convention to the effect that ‘the Articles in the Paris ­Convention mentioned therein override the trips Agreement in relation to its Parts ii– iv’.120 According to Correa, this is borne out by the fact that the reference in Article 2.1 of the trips Agreement to the Paris Convention (1967) includes para. 17; de Vrey, pp. 17 ff; Micklitz, p. 470; Reger, pp. 294 ff; Schricker in Großfeld et al., p. 986. 115 Drexl in Säcker/Rixecker/Oetker, IntLautR, para. 32; Wadlow, The Law of Passing-off, para. 2–070; Pflüger, p. 85. 116 See above p. 19. Cf. Cottier/Jevtic in Drexl et al., p. 675; Pflüger in Hilty/Henning-Bodewig, Lauterkeitsrecht und Acquis Communautaire, pp. 86 f. For the reverse argument, see Wadlow, The Law of Passing-off, para. 2–072. 117 See above p. 28. 118 Appellate Body Report, us – Section 211 Appropriations Act, para. 337. 119 See above p. 31. 120 Correa, Trade Related Aspects of Intellectual Property Rights, p. 46. See also Malbon in Malbon/Lawson/Davison, Article 2 paras. 2.45 f.

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Article 19. By implication, this Article stipulates the precedence of the Paris Convention over the trips Agreement.121 Article 2.2 of the trips Agreement containing a non-derogation clause confirms this.122 As a consequence, the trips Agreement cannot provide for the suspension of wipo provisions.123 From Article 22.3(f)(iii) of the dsu,124 all that can be deduced is that competition must be fair at all times and that a complainant is not allowed to retaliate by unfair means, not even in the event of a found wto violation. In light of the innocent consumer, this solution seems appropriate. The Appellate Body had no second thoughts to accept the incorporation of trade names into the trips Agreement, although Article 22.3(f)(iii) of the dsu makes no mention of this category either. Commensurate with the Havana Club doctrine, the question whether Article 10bis of the Paris Convention (1967) is applicable without linkage to an intellectual property right is to be answered in the affirmative. As a result, its functionality is not restricted to a supplementary protection.125 It may be true that the trips Agreement focuses on intellectual property law, but it also encompasses the repression of unfair competition as an independent subject matter, as Article 1(2) of the Paris Convention (1967), read in conjunction with Article 2.1 of the trips Agreement, elucidates. Such a broad reading of Article 2.1 of the trips Agreement is bolstered by the fact that this reference norm was attributed to Part i of that Agreement, entitled ‘General Provisions and Basic Principles’, whereas comparable norms like Articles 9.1 and 35 are found in Part ii which deals with ‘Standards Concerning the Availability, Scope and Use of Intellectual Property Rights’.126 Given that unfair competition law was not an official subject matter of the negotiations,127 it is alleged that some Members were unaware of the legal consequences that an incorporation of Article 10bis of the Paris Convention 121 Correa, Trade Related Aspects of Intellectual Property Rights, p. 46. 122 Ibid. 123 To resolve the issue of cross-retaliation, Brand in Stoll/Busche/Arend, Article 2 paras. 124 f, suggests the presumption of an implicit pactum de non petendo between the countries of the Paris Union. 124 See above p. 31. 125 Cottier/Jevtic in Drexl et al., p. 675; Pflüger in Hilty/Henning-Bodewig, Lauterkeitsrecht und Acquis Communautaire, pp. 85 ff. Contra Schricker/Henning-Bodewig, ‘New Initiatives for the Harmonisation of Unfair Competition Law in Europe’, p. 272. 126 Cf. Brand in Stoll/Busche/Arend, Article 2 para. 6. 127 Pflüger, pp. 72 ff; Pflüger in Hilty/Henning-Bodewig, Lauterkeitsrecht und Acquis Communautaire, p. 70; Schulte-Beckhausen/Maaßen in Gloy/Loschelder/Erdmann, § 12 para. 2; Wadlow, The Law of Passing-off, paras. 2–002, 2–064.

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(1967) into the trips Agreement would bring about, and for this reason might oppose it. The negotiating history, being a ‘supplementary means of interpretation’ pursuant to Article 3.2.2 of the dsu in conjunction with Article 32 of the Vienna Convention,128 is only pertinent either to confirm a found interpretative result or when Article 31 of the Vienna Convention cannot resolve the respective question of interpretation.129 At any rate, the negotiating history is not informative in the present case.130 Further inferences from the records are inadmissible in light of the panel ruling in us – Gambling: The principle of effective treaty interpretation requires that meaning and effect be given to this commitment, regardless of the motivation behind that commitment (even if the commitment may have been undertaken inadvertently).131 (emphasis added) In the same vein, Pauwelyn emphasizes that the failure not to think of something during a negotiating process may be an excuse but ‘not a valid legal argument’.132 More particularly, the political argument is put forward that the common law system would not recognize a doctrine of unfair competition.133 Furthermore, it is contended that the regulatory technique of a general clause would be abhorrent to common law countries.134 This is no longer tenable:135 Leaving aside the fact that it was the United Kingdom that originally made the proposal for what is now paragraph 1 of Article 10bis of the Paris Convention,136 the 128 Appellate Body Report, us – Section 211 Appropriations Act, para. 339; Appellate Body Report, Japan – Alcoholic Beverages ii, p. 10. 129 Appellate Body Report, ec – Computer Equipment, para. 86; unctad-ictsd Resource Book, p. 2; Villiger, Article 32 paras. 8 ff; Lennard, p. 45. 130 Cf. Brand in Stoll/Busche/Arend, Article 2 para. 4. See also Panel Report, us – Section 211 Appropriations Act, para. 8.39; Appellate Body Report, us – Section 211 Appropriations Act, para. 339. 131 Panel Report, us – Gambling, para. 6.527. 132 Pauwelyn, ‘The Role of Public International Law in the wto’, p. 538. 133 Schulte-Beckhausen/Maaßen in Gloy/Loschelder/Erdmann, § 12 paras. 6, 12; de Vrey, pp. 4, 307. 134 De Vrey, p. 6 footnote 16. 135 See also Wadlow, ‘The Emergent European Law of Unfair Competition and Its Consumer Law Origins’, p. 3. 136 Wadlow, The Law of Passing-off, para. 2–032; Henning-Bodewig, ‘Relevanz der Irreführung, uwg-Nachahmungsschutz und die Abgrenzung Lauterkeitsrecht/IP-Rechte’, p. 986; de Vrey, p. 12; Bodewig, p. 543.

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­Misleading and Comparative Advertising Directive (the ‘mcad’) was implemented into United Kingdom law by the Business Protection from Misleading Marketing Regulations 2008.137 What is more, owing to its obligation to transpose the general clause in Article 5(1) and (2) of the Unfair Commercial Practices Directive (the ‘ucpd’), the United Kingdom enacted Regulation 3(1) of the Consumer Protection from Unfair Trading Regulations 2008.138 Ireland transposed the ucpd with the Consumer Protection Act 2007 and the mcad with the European Communities (Misleading and Comparative Marketing Communications) Regulations 2007. Likewise, the doctrine of unfair competition gained acceptance in the law of the United States,139 which is not unfamiliar with a general clause, cf. 15 u.s.c. § 45(a)(1).140,141 It is true, however, that the United Kingdom and Ireland did not go beyond their obligation under Article 288(3) of the Treaty on the Functioning of the European Union (the ‘tfeu’) to transpose European directives and limited their respective general clauses to practices in the business-to-consumer relationship, as provided for in Articles 3(1), 5(1) of the ucpd.142 6 Conclusions In us – Section 211 Appropriations Act, the Appellate Body found: by virtue of Article 2.1 of the trips Agreement, … specified provisions of the Paris Convention (1967) … have been incorporated into the trips Agreement and, thus, the wto Agreement. Consequently, these ­obligations of countries of the Paris Union under the Paris Convention (1967) are also now obligations of all wto Members, whether they are countries of the

137 Office of Fair Trading, Business to business promotions and comparative advertisements, p. 2. 138 ‘Unfair commercial practices are prohibited’. See also Arnold, pp. 63 ff; Office of Fair Trading, Guidance on the Consumer Protection from Unfair Trading Regulations 2008, para. 2.1. 139 See 15 u.s.c. § 1125. 140 ‘Unfair methods of competition in or affecting commerce, and unfair or deceptive acts or practices in or affecting commerce, are hereby declared unlawful’. 141 Deutch, p. 507. Critically, Corgill, pp. 1070 f; Pflüger, pp. 260 ff. 142 Cf. Section 3(3), in conjunction with Section 2(1), of the Consumer Protection from Unfair Trading Regulations 2008; Section 41(2)(b), in conjunction with Section 2(1) and (2), of the Consumer Protection Act 2007. See also Emmerich, p. 17. Unclear, Schulte-­Beckhausen/ Maaßen in Gloy/Loschelder/Erdmann, § 12 para. 12.

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Paris Union or not, under the wto Agreement, and, thus, are enforceable under the dsu.143 (footnotes omitted) From the above considerations, it follows that Article 10bis of the Paris Convention (1967), being ‘part of the wto Agreement’, is to be treated as any other wto/trips norm.144 As a result, and in contrast to the Paris regime which does not have an enforcement mechanism,145 Article 10bis of the Paris Convention (1967) is subject to the enforcement system of the wto pursuant to Article 64.1 of the trips Agreement.146 As for the correct method of interpreting Article 10bis of the Paris Convention (1967), it is questionable whether the Vienna Convention applies because it was concluded after the entry into force of the Paris Convention. In the wake of the incorporation, however, Articles 31 ff of the Vienna Convention find application by virtue of Article 3.2.2 of the dsu despite the non-retroactivity rule in Article 4 of the Vienna Convention.147 Article 2.1 of the trips Agreement not only incorporates particular provisions but the entire Paris acquis.148 This ties in with the aim of the Uruguay Round to strengthen the protection of industrial property by building upon the existing stock, encapsulated in the expression ‘Paris plus’.149 If the framers of the trips Agreement had not wanted this outcome, they could have 143 Appellate Body Report, us – Section 211 Appropriations Act, para. 238. See also unctadictsd Resource Book, p. 50; Brand in Stoll/Busche/Arend, Article 2 paras. 1 f, 5. 144 Cf. Appellate Body Report, us – Section 211 Appropriations Act, para. 238; Malbon in Malbon/Lawson/Davison, Article 2 para. 2.04; Brand in Stoll/Busche/Arend, Article 2 paras. 5, 15; Hrbatá, p. 30; Cottier/Jevtic in Drexl et al., p. 694; Matsushita, p. 189. For the analogous incorporation of ‘the substantive rules of the Berne Convention (1971)’, see Panel Report, us – Section 110(5) Copyright Act, para. 6.18. 145 Cf. Article 28 of the Paris Convention. See below p. 49. 146 Brand in Stoll/Busche/Arend, Article 2 para. 2; Cottier/Jevtic in Drexl et al., pp. 669 f, 677; Cottier/Germann in Takagi/Allman/Sinjela, p. 142; Gervais, ‘Agreement on Trade-­Related Aspects of Intellectual Property Rights (1994)’ in mpepil, para. 51; Herrmann/Weiß/ Ohler, § 19 para. 920; Cottier/Panizzon in Biber-Klemm/Cottier, p. 209; Cottier in Macrory/Appleton/Plummer, vol. i, p. 1063; Matsushita, p. 190; Haas, p. 81. 147 Panel Report, us – Section 211 Appropriations Act, para. 8.16. 148 unctad-ictsd Resource Book, pp. 682 f; Brand in Stoll/Busche/Arend, Article 2 para. 13; Herrmann/Weiß/Ohler, § 19 para. 920; Elfring, pp. 107 f; Haas, p. 76. See also Panel Report, us – Section 110(5) Copyright Act, paras. 6.60 ff, with regard to the Berne acquis. 149 Cottier/Germann in Cottier/Véron, trips Agreement, art. 2, p. 14; Haas, pp. 76, 78, 94; Busche in Stoll/Busche/Arend, Introduction ii para. 3; Hoekman/Kostecki, p. 380; Bender/ Michaelis in Hilf/Oeter, § 22 para. 19.

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e­ asily rewritten the content of Article 10bis of the Paris Convention (1967) in a separate trips provision.150 That they decided in favour of a reference norm instead shows their intention to integrate the whole doctrine of unfair competition.151 We find support for this reading in the preparatory work of Article 9.1 of the trips Agreement, which incorporates provisions from the Berne Convention (1971): Earlier drafts of that Article referred merely to ‘the substantive provisions’ of the Berne Convention (1971), indicating that the intention was to embody the overall Berne acquis rather than just the literal wording of the individual articles. During the negotiations a preference was expressed for identifying these substantive provisions. As a result, these provisions were identified in the final version of the Article as ‘Articles 1 through 21 of the Berne Convention (1971) and the Appendix thereto’. It appears that this was done for the sake of clarity, and there is no indication in the records that there was an intention to change the aim of embodying the overall Berne acquis.152 There is no reason to assume a different intention of the framers with respect to the similar Article 2.1 of the trips Agreement.153 Because of the incorporation, Members are obliged to protect foreign traders from unfair competition in their territory as well as to provide ‘appropriate legal remedies’ to this end, cf. Article 10ter(1) of the Paris Convention (1967).154 150 Brand in Stoll/Busche/Arend, Article 2 para. 7; Haas, p. 75; Abbott in Petersmann, pp. 421 ff. 151 Brand in Stoll/Busche/Arend, Article 2 paras. 6 f; Trebilcock/Howse/Eliason, p. 192. See also Panel Report, us – Section 110(5) Copyright Act, paras. 6.62 ff, with regard to the Berne acquis. 152 Panel Report, us – Section 110(5) Copyright Act, para. 6.65 footnote 85. 153 Cottier/Germann in Cottier/Véron, trips Agreement, art. 2, p. 15; Gervais, ‘Agreement on Trade-Related Aspects of Intellectual Property Rights (1994)’ in mpepil, para. 52. 154 Pro Henning-Bodewig, ‘Internationale Standards gegen unlauteren Wettbewerb’, p. 11; Gervais, The trips Agreement, paras. 2.45 f; Brand in Stoll/Busche/Arend, Article 2 para. 16; Kennedy, p. 873; Cottier/Jevtic in Drexl et al., pp. 669 f, 676, 690 f; Cottier/Germann in Takagi/Allman/Sinjela, pp. 141 f; Cottier in Macrory/Appleton/Plummer, vol. i, pp. 1043, 1057, 1063; Cottier/Oesch, p. 924; Niemann, p. 207; de Carvalho, The trips Regime of Antitrust and Undisclosed Information, para. 39.3.63; Correa/Mashayekhi/Tuerk, p. 26; Correa/ Yusuf, pp. 21, 62 f; Correa, Trade Related Aspects of Intellectual Property Rights, pp. 38, 44 ff; Morcom, p. 127; Herrmann/Weiß/Ohler, § 19 para. 920; Elfring, p. 58 footnote 154; Deutch, p. 507; Fikentscher, p. 284; Fromm-Russenschuck/Duggal, p. 45; Dutfield, Intellectual Property, Biogenetic Resources and Traditional Knowledge, p. 32; Westkamp, ‘trips Principles, Reciprocity and the Creation of Sui-Generis-Type iprs’, pp. 834 f, 837; Rao/Guru, p. 33;

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Besides, the enforcement provisions of Part iii of the trips Agreement, in particular the fundamental procedural principles expressed therein, apply mutatis mutandis;155 except for those provisions that are explicitly confined to specific intellectual property rights like the last sentences of Articles 46 and 59 (trademarks) and the first sentence of Article 61 of the trips Agreement (trademarks and copyright). In the final analysis, a distinct violation of Article 2.1 of the trips Agreement in conjunction with Article 10bis of the Paris Convention (1967) is possible, irrespective of other reference norms like Article 22.2(b) of the trips Agreement. One way to comply with Article 10bis of the Paris Convention (1967) is to adopt the wipo Model Provisions.156 However, there is no obligation to enact a specific unfair competition statute.157 It suffices to apply tort law, cf. the third sentence of Article 1.1 of the trips Agreement and recital 2(c) of the Preamble thereto (‘taking into account differences in national legal systems’).158 Different regulatory models and hybrid forms exist in the legal systems of the Members which use, to varying degrees, elements from administrative, civil and criminal law as well as voluntary self-regulation.159 Fair trading rules can be found under the headings of advertising, consumer, or competition law.160 In a nutshell, the regulatory content of Article 10bis of the Paris Convention (1967) is that if there is competition, it shall take place in a fair manner,161 but Blakeney, Trade Related Aspects of Intellectual Property Rights, para. 3.03; Casado Cerviño/ Cerro Prada, pp. 77 f; Kur, p. 989; unctad-ictsd Resource Book, p. 682; wipo Model Provisions, para. 1.01. 155 Brand in Stoll/Busche/Arend, Article 2 para. 2. Contra Wadlow, The Law of Passing-off, para. 2–065, but see para. 2–071. 156 wipo Model Provisions, para. 1.01; Henning-Bodewig, ‘International Protection Against Unfair Competition’, p. 182; Schulte-Beckhausen/Maaßen in Gloy/Loschelder/Erdmann, § 12 para. 3; Höpperger/Senftleben in Hilty/Henning-Bodewig, Law Against Unfair Competition, pp. 68, 73. 157 Henning-Bodewig in Henning-Bodewig, International Handbook on Unfair Competition, § 2 para. 22; Wadlow, The Law of Passing-off, para. 2–022; Pflüger, pp. 116 f; Pflüger in Hilty/ Henning-Bodewig, Lauterkeitsrecht und Acquis Communautaire, p. 74; Höpperger/Senftleben in Hilty/Henning-Bodewig, Law Against Unfair Competition, p. 63. 158 Höpperger/Senftleben in Hilty/Henning-Bodewig, Law Against Unfair Competition, p. 63; Bodenhausen, p. 143. 159 Beater, Unlauterer Wettbewerb, § 5 para. 390; Cottier/Jevtic in Drexl et al., p. 672; SchulteBeckhausen/Maaßen in Gloy/Loschelder/Erdmann, § 12 paras. 4 ff, 13 ff, § 13 paras. 1 ff; de Vrey, pp. 5 f, 308. As to self-regulation see, e.g., Article 10 of the Unfair Commercial Practices Directive. 160 Schulte-Beckhausen/Maaßen in Gloy/Loschelder/Erdmann, § 12 para. 5. 161 Pflüger in Hilty/Henning-Bodewig, Lauterkeitsrecht und Acquis Communautaire, p. 84.

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it does not go so far as to prescribe the institution ‘competition’ or a particular form of competition, i.e. it is neutral in terms of economic systems.162 In other words, Members are free to determine their own economic order.163 This can be inferred from the fact that only ‘nationals of other Members’ benefit from Article 10bis of the Paris Convention (1967) pursuant to its paragraph 1, as read with Article 10ter(1) of the Paris Convention (1967) (‘nationals of the other countries’) and Article 1.3 of the trips Agreement,164 whereas own nationals cannot invoke Article 10bis and are solely subject to the national legal order.165 Discrimination against own nationals is allowed from the point of view of wto law;166 to eliminate it is a matter for national (constitutional) law.167 In conclusion, a commitment to the implementation of a free market system cannot be derived from Article 10bis of the Paris Convention. However, because not even controlled economies can exclude competition completely, socialist countries, such as China,168 which has been a member of the Paris Union since 1985, or the former gdr, have or had unfair competition laws.169

162 Henning-Bodewig in Henning-Bodewig, International Handbook on Unfair Competition, § 2 para. 40; Pflüger, p. 124; Pflüger in Hilty/Henning-Bodewig, Lauterkeitsrecht und Acquis Communautaire, p. 83; Drexl in Säcker/Rixecker/Oetker, IntLautR, para. 28. Contra Wadlow, The Law of Passing-off, para. 2–020. 163 Pflüger in Hilty/Henning-Bodewig, Lauterkeitsrecht und Acquis Communautaire, pp. 83 f. See also Article 1 of the Charter of Economic Rights and Duties of States. 164 See below p. 53. 165 Henning-Bodewig in Henning-Bodewig, International Handbook on Unfair Competition, § 2 para. 24; Wadlow, The Law of Passing-off, para. 2–011; Stoll/Busche/Arend, Article 1 para. 22, Article 2 para. 29. 166 Panel Report, ec – Trademarks and Geographical Indications, para. 7.197; Brand in Stoll/ Busche/Arend, Article 2 paras. 9, 33; Herrmann/Weiß/Ohler, § 19 para. 917. Contra Micklitz, p. 469; Reger, pp. 254, 291 f. The same is true from the point of view of the Paris Convention, cf. Klass in Teplitzky/Peifer/Leistner, Einl D para. 57; Wadlow, The Law of Passing-off, para. 2–011; Pflüger in Hilty/Henning-Bodewig, Lauterkeitsrecht und Acquis Communautaire, pp. 73 f. 167 Elfring/Arend in Stoll/Busche/Arend, Article 1 para. 22. 168 Cf. Article 1 of the Law Against Unfair Competition of the People’s Republic of China: ‘This Law is formulated with a view to safeguarding the healthy development of the socialist market economy, encouraging and protecting fair competition, repressing unfair competition acts, and protecting the lawful rights and interests of business operators and consumers.’ See also Schulte-Beckhausen/Maaßen in Gloy/Loschelder/Erdmann, § 13 paras. 142 ff. 169 Rittner/Dreher/Kulka, Einleitung para. 7.

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B Static Reference Article 2.1 of the trips Agreement refers to a particular version of the Paris Convention, namely ‘the Stockholm Act of this Convention of 14 July 1967’.170 Such a reference is called ‘static’ because succeeding updates of the legal text could not be taken into account by wto adjudicating bodies.171 The text is petrified. Since 1967, there has been only one amendment of the Paris Convention, in 1979, but it did not affect Article 10bis, so all Members are subject to the same international standard in respect of unfair competition.172 Discrepancies with wto Members not adhering to the Paris Union are therefore inconceivable.173 This raises the question of how an evolving understanding of Article 10bis of the Paris Convention (1967) within the Paris Union would affect the trips Agreement. Any subsequent practice of the countries of the Union is material for the Paris Union according to Article 31(3)(b) of the Vienna Convention. But would a wto panel be free to follow a new understanding of Article 10bis, or even be obliged to do so on legal grounds? Or does the static reference have such far-reaching ramifications as to ossify not only the legal text, but also its interpretation, to the year 1967? .

1

Jurisdiction to Construe Article 10bis of the Paris Convention (1967) To answer these questions, one first needs to clarify whether a panel may deviate from the common views in the Paris Union or whether it is bound to them as a matter of principle. This is a question of jurisdiction.174 In this context, I recall what the panel reports in ec – Bananas iii,175 confirmed by the Appellate Body,176 noted with respect to the Lomé Convention: since the gatt CONTRACTING PARTIES incorporated a reference to the Lomé Convention into the Lomé waiver, the meaning of the Lomé Convention became a gatt/wto issue, at least to that extent. Thus, we have 170 Footnote 2 to Article 1.3 of the trips Agreement. 171 Cottier/Germann in Cottier/Véron, trips Agreement, art. 2, p. 15; Brand in Stoll/Busche/ Arend, Article 2 para. 7; Mavroidis, ‘No Outsourcing of Law?’, p. 428; Elfring, pp. 105 f. 172 Henning-Bodewig, ‘International Protection Against Unfair Competition’, p. 180. 173 Brand in Stoll/Busche/Arend, Article 2 paras. 46, 115. Because of Articles 19 of the Paris Convention, 2.2 of the trips Agreement, discrepancies would arise if the Paris standard was higher than the one referred to by the trips Agreement. 174 Cf. unctad-ictsd Resource Book, p. 691. 175 Panel Reports, ec – Bananas iii, para. 7.98. 176 Appellate Body Report, ec – Bananas iii, para. 167.

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no alternative but to examine the provisions of the Lomé Convention ourselves in so far as it is necessary to interpret the Lomé waiver.177 In addition to the Lomé Convention, Article 10bis of the Paris Convention (1967) forms part of wto law by incorporation.178 This implies that the wto adjudicating bodies have comprehensive jurisdiction over this provision pursuant to Article 64.1 of the trips Agreement.179 As a consequence, they are, in principle, free in how they read it. Relating to this, the panel in us – Section 110(5) Copyright Act observed that it is a general principle of interpretation to adopt the meaning that reconciles the texts of different treaties and avoids a conflict between them. Accordingly, one should avoid interpreting the trips Agreement to mean something different than the Berne Convention except where this is explicitly provided for.180 The same would apply to the Paris Convention. Since the Paris acquis has been incorporated,181 a panel must not undercut the level of protection of 1967. This is where the benchmark is fixed. Therefore, if the development of Article 10bis, within the framework of the Paris Union, led to a decreased level of protection as compared to 1967, this would not affect the trips Agreement. That said, what would it mean for wto law if an altered understanding of Article 10bis of the Paris Convention (1967) in the Paris Union were to lead to a higher level of protection? Could a new understanding of the old text be taken into account by a panel? As a preliminary point, it bears noting that the lex posterior rule, as set out in Article 30(3) of the Vienna Convention, does not apply in relation to the Paris Convention and the trips Agreement.182 Through the incorporation, they are to be treated as one treaty.183 However, Article 71.2 of the trips Agreement might militate against a consideration. This norm, in conjunction with Article x:6 of the wto Agreement, provides for an expedient approval of ‘higher levels 177 Panel Reports, ec – Bananas iii, para. 7.98. See also Cameron/Gray, p. 268. 178 See above p. 38. 179 Busche in Stoll/Busche/Arend, Introduction ii para. 54; Haas, p. 81; Pauwelyn, ‘The Role of Public International Law in the wto’, pp. 554 f. 180 Panel Report, us – Section 110(5) Copyright Act, para. 6.66. 181 See above p. 38. 182 Cottier in Macrory/Appleton/Plummer, vol. i, p. 1063. For this rule, see Vranes, ‘Lex Superior, Lex Specialis, Lex Posterior’, pp. 391 ff. 183 Cottier/Germann in Cottier/Véron, trips Agreement, art. 2, p. 15. See above p. 38.

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of protection of intellectual property rights achieved, and in force, in other multilateral agreements and accepted under those agreements by all Members of the wto’ by the Ministerial Conference ‘on the basis of a consensus proposal from the Council for trips’. By implication, it bars the wto adjudicating bodies from ‘adjusting’ the trips Agreement to these higher levels of protection. From this vantage point, Article 71.2 of the trips Agreement epitomizes the separation of powers within the wto. At this juncture, the particularity of a general clause comes into play. As will be expounded below, to address acts of unfair competition beyond those enumerated in paragraph 3 is the very purpose of paragraph 2 of Article 10bis of the Paris Convention (1967).184 This is inherent in the nature of paragraph 2 as a general clause and would not require an amendment to the legal text. In other words, this eventuality is a priori provided for. Above, we found that for the understanding of ‘honest practices’ the time of interpretation is decisive.185 It needs to be construed ‘in the light of contemporary concerns of the community of nations’.186 This term, which stems from the Hague Revision Conference,187 is an open notion.188 Consequently, the question whether a panel may consider an evolution of unfair competition law in the Paris Union that is an interpretive result and does not involve a modification of the legal text is to be answered in the affirmative.189 It goes without saying that the subsumption of unwritten acts of unfair competition under paragraph 2 of Article 10bis of the Paris Convention (1967) is not unlimited. What these limits are will preoccupy us in the following chapters. Finally, it should be noted that the last recital of the Preamble to the trips Agreement, as well as the Preamble to the Agreement Between the wipo and the wto, call for ‘a mutually supportive relationship between them’. Therefore, without being bound to the established views in the Paris Union, panels will nonetheless have regard to them and acquire factual information from the wipo, according to Article 13 of the dsu, in order to avoid conflicting interpretations.190 This was done in ec – Trademarks and Geographical Indications,191 184 185 186 187 188 189 190

See below p. 65. See above p. 22. Cf. Appellate Body Report, us – Shrimp, para. 129. See above p. 1. Kamperman Sanders, Unfair Competition Law, p. 7. See also Panel Report, us – Section 110(5) Copyright Act, para. 6.59. See also Cottier/Jevtic in Drexl et al., p. 681; Trebilcock/Howse/Eliason, p. 192; Neumann, Die Koordination des wto-Rechts mit anderen völkerrechtlichen Ordnungen, p. 296. 191 Panel Report, ec – Trademarks and Geographical Indications, paras. 2.16 ff.

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us – Section 211 Appropriations Act,192 and China – Intellectual Property Rights.193 The incorporation can thus be deemed an attempt to keep the Paris Convention and the trips Agreement from diverging.194 They belong to one overall framework of multilateral industrial property protection.195 2 Conclusions What is ‘honest’ today may differ from what was considered ‘honest’ in 1967. A panel may take a new understanding of the 1967 text into account, provided that the ordinary meaning of the terms used in Article 10bis has changed. The ‘public international law presumption against conflicts’ referred to by the panel in us – Section 110(5) Copyright Act196 does not rule out an evolution of Article 10bis of the Paris Convention (1967) in the wto framework, starting from existing state practice.197 A fossilization of the interpretation was not intended by crafting Article 2.1 of the trips Agreement in a static manner.198 The most probable scenario, therefore, is that the impulse for the further development of Article 10bis of the Paris Convention (1967) will come from within the trips regime. The purpose of the static reference is to prevent a revision of the Paris Convention – renegotiated only by some of the Members – from being imposed upon all. If the reference norm were dynamic, it would bind all Members to the latest version of the Paris Convention, including those that have not ratified it. Making a reference static thus serves to secure the rights of these Members. In the next section, we will determine the content of Article 10bis of the Paris Convention (1967), in particular paragraphs 1 and 2 thereof. The interpretation of ‘contrary to honest practices’ takes centre stage because this phrase ultimately delineates the scope of application of the doctrine of unfair competition.

192 Panel Report, us – Section 211 Appropriations Act, paras. 1.8, 6.1 ff, 8.11 ff. 193 Panel Report, China – Intellectual Property Rights, paras. 2.7 ff, Annexes D-2, D-3, in relation to Articles 5 and 17 of the Berne Convention (1971). 194 Kaiser in Stoll/Busche/Arend, Article 64 para. 33. 195 Cf. Panel Report, us – Section 110(5) Copyright Act, paras. 6.66, 6.70, in relation to the Berne Convention; Hrbatá, p. 18. 196 Panel Report, us – Section 110(5) Copyright Act, para. 6.66. See also Panel Report, Canada – Patent Term, para. 6.45; Panel Report, Indonesia – Autos, para. 14.28; Wolfgang Weiss, p. 206. 197 See below p. 49. 198 Westkamp, ‘trips Principles, Reciprocity and the Creation of Sui-Generis-Type iprs’, p. 842.

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Article 10bis(1) and (2) of the Paris Convention (1967)

In the 19th century, Lord Justice Fry noted in relation to the English system that ‘to draw a line between fair and unfair competition, between what is reasonable and unreasonable, passes the powers of the courts’.199 In other words, such issues should be left to the legislative branch.200 Against this, the Appellate Body in China – Publications and Audiovisual Products stated with regard to wto law: the purpose of the interpretative exercise is to narrow the range of possible meanings of the treaty term to be interpreted, not to generate multiple meanings or to confirm the ambiguity and inconclusiveness of treaty obligations. Rather, a treaty interpreter is required to have recourse to context and object and purpose to elucidate the relevant meaning of the word or term.201 The rulings in Mexico – Telecoms and us – Hot-Rolled Steel testify to the fact that the wto dispute settlement system is well suited to come to grips with terms like ‘reasonable’.202 It is exactly the task of international law to bring different cultural and societal views together.203 The term ‘public morals’ in Article xiv(a) of the gats is an equally indefinite legal concept. This did not stop the panel in us – Gambling from making the following point: 199 High Court of Justice (Queen’s Bench Division), Mogul Steamship v. McGregor, 598, 625 f, quoted in United Kingdom House of Lords, Douglas v. Hello!, para. 148 (Lord Nicholls). See also England and Wales Court of Appeal (Civil Division), L’Oréal v. Bellure, para. 140 (Jacob l.j.). 200 Derek Harms, p. 454. See also High Court of Australia, Moorgate Tobacco v. Philip Morris, para. 40: ‘The rejection of a general action for “unfair competition” involves no more than a recognition of the fact that the existence of such an action is inconsistent with the established limits of the traditional and statutory causes of action which are available to a trader in respect of damage caused or threatened by a competitor. Those limits, which define the boundary between the area of legal or equitable restraint and protection and the area of untramelled competition, increasingly reflect what the responsible Parliament or Parliaments have determined to be the appropriate balance between competing claims and policies’. Similarly, Supreme Court of Illinois, Dissenting Opinion, Board of Trade of the City of Chicago v. Dow Jones, p. 124 (Simon J.). Contra Callmann, pp. 608 f, 612; Terry, p. 317. 201 Appellate Body Report, China – Publications and Audiovisual Products, para. 399. 202 Panel Report, Mexico – Telecoms, paras. 7.328 ff; Appellate Body Report, us – Hot-Rolled Steel, paras. 84 ff. 203 Francioni, ‘Equity in International Law’ in mpepil, para. 3.

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the Panel considers that, despite the inherent difficulties and sensitivities associated with interpretation of the terms ‘public morals’ and ‘public order’ in the context of Article xiv(a), we must nonetheless give meaning to these terms in order to apply them to the facts of this case. Indeed, the principle of effective treaty interpretation requires us to do so.204 (footnote omitted) The same holds for ‘honest practices’. Since this term is a constituent of the norm, a panel called upon to rule on its merits had to find a definition of ‘honest’ and elaborate an honesty standard for the trips Agreement. ec – ­Trademarks and Geographical Indications205 and the pending Plain Packaging cases206 illustrate that this is not a theoretical question. A General Issues The starting point is the tenet of autonomous treaty interpretation. This tenet requires a treaty interpreter to develop an idiosyncratic doctrine for international law, and thus pre-empts the imposition of one-sided notions of national law.207 According to Lord Steyn, autonomous treaty interpretation ‘is part of the very alphabet of customary international law’.208 In us – Softwood Lumber iv, the Appellate Body noted: Clearly, it would be inappropriate to characterize, for purposes of applying any provisions of the wto covered agreements, the same thing or transaction differently, depending on its legal categorization within the jurisdictions of different Members. Accordingly, we emphasize that municipal law classifications are not determinative of the issues raised in this appeal.209 This is also reflected in Article 31(1) of the Vienna Convention, which provides that ‘the ordinary meaning [is] to be given to the terms of the treaty in their 204 Panel Report, us – Gambling, para. 6.462. 205 Panel Report, ec – Trademarks and Geographical Indications, para. 7.719. 206 See, e.g., Australia – Certain Measures Concerning Trademarks, Geographical Indications and Other Plain Packaging Requirements Applicable to Tobacco Products and Packaging, wto Doc. WT/DS467/1, p. 2. 207 United Kingdom House of Lords, Adan (Lord Steyn); unctad-ictsd Resource Book, p. 694; Henning-Bodewig in Hilty/Henning-Bodewig, Law Against Unfair Competition, p. 57; Schricker in Großfeld et al., p. 990. 208 United Kingdom House of Lords, Adan (Lord Steyn). 209 Appellate Body Report, us – Softwood Lumber iv, para. 56.

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context and in the light of its object and purpose’.210 It does not stipulate ‘in the light of the national understanding of the contracting parties to a treaty’. Point of reference is the treaty itself.211 Given the fact that a plethora of international concepts emerged from national law, such as general principles of law, the national understanding of a legal term is relevant in the course of a legal comparison, which is a supplementary means of interpretation.212 Accordingly, it may be possible to draw inferences from the commonalities in the Members’ unfair competition systems.213 This approach is exemplified in Article 21(1)(c) of the Rome Statute of the International Criminal Court (the ‘Rome Statute’). However, before delving into the individual terms used in paragraph 2 of Article 10bis of the Paris Convention (1967), we need to address some general issues which are germane to the understanding of the norm as a whole, viz. the impact of the incorporation on the interpretation of Article 10bis of the Paris Convention (1967), its personal scope of protection, and the legal nature of paragraph 2. The last issue is very controversial. It concerns the question of whether paragraph 2 can generate any hard law obligations at all. 1 trips Standard The incorporation into the trips Agreement is not without consequences for the interpretation of Article 10bis of the Paris Convention (1967). In Canada – Pharmaceutical Patents, the panel observed that, in the framework of the trips Agreement, which incorporates certain provisions of the major pre-existing international instruments on intellectual property, the context to which the Panel may have recourse for purposes of interpretation of specific trips provisions … is not restricted to the text, Preamble and Annexes of the trips Agreement itself, but also includes the provisions of the international instruments on intellectual property incorporated into the trips Agreement …214 210 Cf. Appellate Body Report, Japan – Alcoholic Beverages ii, p. 12; Appellate Body Report, us – Shrimp, para. 114; Panel Report, us – Section 110(5) Copyright Act, para. 6.43. 211 Cf. Brand in Stoll/Busche/Arend, Article 2 para. 109; Henning-Bodewig in Hilty/HenningBodewig, Law Against Unfair Competition, p. 57. 212 Panel Report, ec – Tariff Preferences, para. 7.11; Panel Report, us – Gambling, para. 6.470; Dupuy, ‘International Law and Domestic (Municipal) Law’ in mpepil, para. 27; Mavroidis, ‘No Outsourcing of Law?’, p. 467; Hestermeyer, Human Rights and the wto, p. 134; Boyle/Chinkin, p. 223. 213 Cf. Pflüger, p. 140; Fezer, Zweiter Teil B pvü Art. 10bis para. 2; Reger, pp. 20 ff. 214 Panel Report, Canada – Pharmaceutical Patents, para. 7.14.

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It follows that, in the trips framework, ‘treaty’ within the meaning of Article 31(1) of the Vienna Convention is the trips Agreement, including the incorporated provisions.215 Moreover, the trips Agreement must be read together with ‘the preamble to the wto Agreement, which … gives colour, texture and shading to the rights and obligations of Members’.216 This begs the question whether it is the Paris Convention or the wto/trips Agreement that constitute the determining context, object and purpose when interpreting not a specific trips provision, as was the case in Canada – Pharmaceutical Patents, but the incorporated Article 10bis of the Paris ­Convention (1967).217 The main purpose of the trips Agreement is ‘to reduce distortions and impediments to international trade’,218 whereas the Paris Convention one-sidedly seeks to promote ‘the protection of industrial property’.219 This makes a difference in so far as the trips Agreement – unlike the Paris Convention220 – does not solely focus on intellectual property protection, but also envisages other public policy objectives, such as ‘the mutual advantage of producers and users of technological knowledge and … social and economic welfare’.221 Paragraph 5(a) of the Doha Declaration on trips and Public Health stresses the significance of Articles 7 and 8 of the trips Agreement, entitled ‘Objectives’ and ‘Principles’: In 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. (emphasis added)

215 Kaiser in Stoll/Busche/Arend, Article 64 para. 33. 216 Appellate Body Report, us – Shrimp, paras. 129, 155; unctad-ictsd Resource Book, pp. 2, 10, 13; von Bogdandy in Wolfrum/Stoll/Kaiser, Preamble wto Agreement para. 6; Mitchell, ‘The Legal Basis for Using Principles in wto Disputes’, pp. 814 f. 217 For this issue in general, see Klabbers, ‘Treaties, Object and Purpose’ in mpepil, para. 9. 218 Recital 1 of the Preamble to the trips Agreement. 219 Article 1(1) of the Paris Convention (1967). See also unctad-ictsd Resource Book, p. 51; Keßler in Stoll/Busche/Arend, Preamble paras. 4 f. 220 Haas, p. 72. 221 Cf. Articles 7 f of the trips Agreement, recitals 5 f of its Preamble. See also unctad-ictsd Resource Book, pp. 11, 126, 132, 695; Malbon in Malbon/Lawson/Davison, Article 2 para. 2.07; Pflüger, p. 59; Stoll/Busche/Arend, Article 1 para. 12, Article 7 para. 1, Article 8 para. 1; Cottier in Macrory/Appleton/Plummer, vol. i, pp. 1078 f; Elfring, p. 103.

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In line with this, the panel in Canada – Pharmaceutical Patents underscored the bearing of these Articles on the interpretation of the trips Agreement, though without living up to the self-imposed standard.222 These considerations show that the trips Agreement is mindful of the risks relating to intellectual property rights, given that over- and underprotection may result in ‘barriers to legitimate trade’.223 Overprotection, on the one hand, impedes the promotion of new knowledge and leads to import restrictions and monopolies. On the other hand, underprotection abroad deters right holders from consenting to the export of their technology for fear of product counterfeiting.224 Notwithstanding that, Haas advocates a maximalist interpretation of the trips Agreement that generally favours intellectual property holders.225 However, he misreads recitals 1 and 2(b) of the Preamble to the trips Agreement, which only demand ‘effective and adequate protection’ and ‘adequate standards and principles’, not optimal ones.226 Additionally, economic insights weigh heavily against a maximalist approach towards intellectual property protection.227 As opposed to the Paris Convention, the wto in general, and the trips Agreement in particular, considers the ‘different levels of economic development’,228 to the effect that, for instance, the ‘least-developed countries … will only be required to undertake commitments and concessions to the extent consistent with their individual development, financial and trade needs or their administrative and institutional capabilities’.229 Article 2.1 of the trips Agreement alters the context in which Article 10bis of the Paris Convention (1967) is embedded. As a result, the preambles of the wto Agreement and trips Agreement become crucial in a contextual interpretation.230 Although the trips context is determinative, this does not mean 222 Panel Report, Canada – Pharmaceutical Patents, para. 7.26; Stoll/Busche/Arend, Article 1 para. 12, Article 7 para. 10; Cottier in Macrory/Appleton/Plummer, vol. i, p. 1079. 223 Recital 1 of the Preamble to the trips Agreement. See also unctad-ictsd Resource Book, p. 13; Stoll/Busche/Arend, Article 1 para. 11, Article 39 para. 31. 224 Elfring/Arend in Stoll/Busche/Arend, Article 1 para. 11. 225 Haas, pp. 78 f, 93 ff. Contra Pflüger, p. 59. 226 unctad-ictsd Resource Book, p. 10; Keßler in Stoll/Busche/Arend, Preamble para. 14; Bossche/Zdouc, pp. 954 f; Elfring, pp. 108 f. 227 Shi, pp. 23, 26 ff; Hoekman/Kostecki, p. 409; Stiglitz, pp. 1700 ff; Simon, pp. 1625 ff; Petersmann in Cottier/Mavroidis, p. 31; Gould/Gruben in Maskus, pp. 596 ff. 228 Recital 1 of the Preamble to the wto Agreement. 229 Articles xi:2 of the wto Agreement, 66.1 of the trips Agreement. See also unctad-ictsd Resource Book, p. 683. 230 Brand in Stoll/Busche/Arend, Article 2 paras. 8, 10; Haas, pp. 77, 81; Neumann, Die Koordination des wto-Rechts mit anderen völkerrechtlichen Ordnungen, p. 296.

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that the wto adjudicating bodies could not have recourse to e.g. the negotiating history of the Paris Convention as supplementary means of interpretation within the meaning of Article 32 of the Vienna Convention.231 Nor does it implicate that the doctrine of unfair competition is a ‘private right’ in terms of recital 4 of the Preamble to the trips Agreement. The substantive level of protection is laid down in Article 10bis of the Paris Convention (1967) only. In sum, Article 2.1 of the trips Agreement entails that Article 10bis of the Paris Convention (1967) is to be interpreted from a wto point of view.232 That is to say, the Paris acquis is not only incorporated by reference into, but also adjusted to wto law, leaving open the possibility for further development.233 This results in an idiosyncratic trips standard.234 Such a standard is likely to achieve a higher degree of concretization than the one under the Paris regime where all revision activities stagnate in defiance of Article 18 of the Paris Convention.235 As seen, the dispute settlement system of the wto, being compulsory pursuant to Articles 1.1, 23 of the dsu,236 is applicable to Article 10bis of the Paris Convention (1967),237 whereas under the Paris regime the jurisdiction of the International Court of Justice is merely facultative, cf. Articles 28 of the Paris Convention, 36(1), 40(1) of the Statute of the International Court of Justice (the ‘icj Statute’).238 What is more, it has never come into operation.239 The repeated invocation of Article 10bis of the Paris Convention (1967) will increase its specificity,240 given that ‘the legal interpretation embodied in adopted panel and Appellate Body reports becomes part 231 Cf. Appellate Body Report, us – Section 211 Appropriations Act, paras. 145 f. See also Appellate Body Report, Canada – Patent Term, para. 54 footnote 40 (‘wider context’); Panel Report, Canada – Pharmaceutical Patents, paras. 7.15, 7.70 ff (with reference to the negotiating history of the Berne Convention); Malbon in Malbon/Lawson/Davison, Article 2 paras. 2.11, 2.20 f; Correa in Macrory/Appleton/Plummer, vol. ii, pp. 430 f. 232 Malbon in Malbon/Lawson/Davison, Article 2 para. 2.10; Haas, p. 77. 233 Brand in Stoll/Busche/Arend, Article 2 para. 8; Pflüger, p. 136; Elfring, p. 108; Haas, p. 77. 234 unctad-ictsd Resource Book, pp. 51 f; Brand in Stoll/Busche/Arend, Article 2 paras. 8, 18; Haas, p. 81. 235 Brand in Stoll/Busche/Arend, Article 2 para. 20. 236 Dani, p. 319; van Damme, Treaty Interpretation by the wto Appellate Body, pp. 5, 9 f; Lamy, p. 976. 237 See above p. 43. 238 wipo Intellectual Property Handbook, para. 5.163; Elfring, pp. 89, 94 f. 239 Henning-Bodewig in Henning-Bodewig, International Handbook on Unfair Competition, § 2 para. 68; Cottier/Wermelinger in Hilty/Henning-Bodewig, Corporate Social Responsibility, pp. 81, 91. 240 Brand in Stoll/Busche/Arend, Article 2 para. 2.

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and parcel of the acquis of the wto dispute settlement system’.241 Although the Appellate Body, against the prevailing doctrine,242 refused to attribute to adopted panel reports the status of ‘subsequent practice’ within the meaning of Article 31(3)(b) of the Vienna Convention, they are nonetheless constantly referred to.243 Moreover, wto principles may provide some guidance on the interpretation of the incorporated Article 10bis of the Paris Convention (1967).244 2 Personal Scope of Protection Article 1.3 of the trips Agreement regulates the personal scope of protection. Its relevant part reads as follows: Members shall accord the treatment provided for in this Agreement to the nationals of other Members. In respect of the relevant intellectual property right, the nationals of other Members shall be understood as those natural or legal persons that would meet the criteria for eligibility for protection provided for in the Paris Convention (1967) …, were all Members of the wto members of those conventions. (emphasis added) (footnotes omitted) Footnote 1 to Article 1.3 of the trips Agreement provides as follows: When ‘nationals’ are referred to in this Agreement, they shall be deemed, in the case of a separate customs territory Member of the wto, to mean persons, natural or legal, who are domiciled or who have a real and effective industrial or commercial establishment in that customs territory. The second sentence of Article 1.3 of the trips Agreement has recourse to, inter alia, the first paragraph of Article 10bis of the Paris Convention (1967). This provision contains one of the ‘criteria for eligibility for protection’,245 as it stipulates that ‘nationals’ of countries of the Union enjoy legal protection from unfair competition. By virtue of the second sentence of Article 1.3 of the trips 241 Appellate Body Report, us – Stainless Steel (Mexico), para. 160, confirmed in Appellate Body Report, us – Continued Zeroing, para. 362. See also Bagchi, p. 1539. 242 Panizzon, pp. 358 f; Jackson, The World Trading System, p. 126; Cameron/Gray, p. 274. Contra Wolfgang Weiss, p. 190; Lennard, p. 33. 243 Appellate Body Report, Japan – Alcoholic Beverages ii, pp. 12 ff; Appellate Body Report, us – Shrimp (Article 21.5 – Malaysia), paras. 108 f; Göttsche in Hilf/Oeter, § 5 para. 21; ­Mavroidis, ‘No Outsourcing of Law?’, pp. 464 ff. 244 Brand in Stoll/Busche/Arend, Article 2 para. 2. 245 Elfring/Arend in Stoll/Busche/Arend, Article 1 paras. 23, 25.

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Agreement, ‘wto Members’ is substituted for ‘countries of the Union’ in the referred provisions of the Paris Convention (1967).246 Furthermore, the scope of protection is expanded by Article 3 of the Paris Convention (1967) to [n]ationals of countries outside the Union who are domiciled or who have real and effective industrial or commercial establishments in the territory of one of the countries of the Union. This Article only addresses nationals of non-wto Members.247 When read together, it follows that the personal scope of protection of Article 10bis of the Paris Convention (1967), as incorporated into the trips Agreement by virtue of Article 2.1 of that Agreement, comprises – nationals (natural or legal persons) of other Members as well as – persons, natural or legal, who are domiciled or who have a real and effective industrial or commercial establishment in the territory of one of the Members.248 Actor can be any natural or legal person that falls under the jurisdiction of a Member. Hence, Article 10bis of the Paris Convention (1967) obliges a Member to protect ‘nationals of other Members’ within the meaning of Article 1.3 of the trips Agreement from acts of unfair competition in its territory. That is to say, a cross-border situation is required.249 Whilst a state enterprise is naturally attributed to the owning Member,250 the practice of how to determine the home country of a private company, whether by its administrative seat or its certificate of incorporation or both, is inconsistent.251 This leads to the following dilemma: Assuming that a private company is incorporated in wto Member A which adheres to the seat theory, and subsequently transfers its registered office to wto Member B which follows the incorporation theory, Member A does not recognize the company as its national anymore (because the company no longer has its registered office in A), nor 246 Brand in Stoll/Busche/Arend, Article 2 para. 5. 247 Panel Report, ec – Trademarks and Geographical Indications, para. 7.194; Stoll/Busche/ Arend, Article 1 para. 30, Article 2 para. 29. 248 Bender/Michaelis in Hilf/Oeter, § 22 para. 18; Elfring/Arend in Stoll/Busche/Arend, Article 1 paras. 20 ff. 249 Stoll/Busche/Arend, Article 1 paras. 29 f, Article 2 paras. 9, 29. Contra Reger, p. 291. 250 Bodenhausen, pp. 27 f. 251 Elfring/Arend in Stoll/Busche/Arend, Article 1 para. 29; Herdegen, § 16 paras. 3 ff; Bodenhausen, pp. 27 f.

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does Member B (because the company was not incorporated in accordance with its law). The company would be regarded as a ‘national of another Member’ in both A and B and, as a result, would be protected in both under Article 10bis of the Paris Convention (1967).252 In the reverse case, i.e. if a company incorporated in Member B adhering to the incorporation theory transferred its registered office to Member A following the seat theory, the company would be treated as a national by A and B. As a consequence, it would face discrimination of nationals in both countries. This situation arises because national law decides independently whom it considers as a national.253 3

Normativity of Article 10bis(1) and (2) of the Paris Convention (1967) Lord Justice Fry’s pronouncement from above, although disproved for wto law,254 is enlightening nonetheless because it points out an interpretative pitfall: the interpretation of terms like ‘fair’ or ‘honest’ addresses general concepts of justice. In this respect, treaty interpreters must be mindful of the risk of drifting off into a conviction law where they substitute their own subjective convictions for the will of the legislature, in the present case the will of the wto Membership.255 Actually, it would be the task of the legislature to concretize what it considers honest in such a way that the adjudicating bodies can subsume thereunder. In the area of unfair competition law, this is not fully possible because the legislature cannot anticipate all conceivable dishonest modes of behaviour.256 One solution consists in setting up a general clause to cover ­unforeseen

252 Elfring/Arend in Stoll/Busche/Arend, Article 1 para. 29. 253 Cf. Article 1, first sentence, of the Convention on Certain Questions Relating to the Conflict of Nationality Law (‘It is for each State to determine under its own law who are its nationals’). See also Panel Report, ec – Trademarks and Geographical Indications, para. 7.197; Okowa in Evans, p. 484; Elfring/Arend in Stoll/Busche/Arend, Article 1 paras. 26, 28 f. 254 See above p. 47. 255 Keßler/Micklitz, p. 40. See also Award of the Arbitral Tribunal, Mondev v. United States, para. 119. 256 wipo, Protection Against Unfair Competition, paras. 27, 29; Sosnitza in Heermann/Hirsch, § 3 uwg para. 6; de Vrey, p. 3; Reger, p. 309; Kamperman Sanders, Unfair Competition Law, p. 23. For United States law, see California Court of Appeals, 3rd Dist., The People v. National Research Company of California, p. 772; Deutch, p. 507. For German law, see Deutscher Bundestag [German Parliament], Drucksache 15/1487, p. 16; Beater, Nachahmen im Wettbewerb, p. 60. For Peruvian law, see Ezcurra/Chávez in Pasquel/Patrón/Pérez Costa, p. 103.

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­situations.257 General clauses entail greater leeway, i.e. a shift of power towards the judiciary, as it is for the courts to give content to these clauses.258 This is intrinsic and therefore not regarded as an overstepping of the judicial authority in the national system.259 When employed at the international level, however, such a regulatory technique raises some policy concerns,260 to wit concerns about democratic feedback. This applies to democratic states subjugating themselves to an international regime like the wto which itself is not committed to democracy261 and the law of which is determined in the last instance by an independent standing body.262 Although in democratic Members national parliaments need to approve the results of world trade rounds and ratify any changes, they are not formally involved in the operation of the organization.263 Aside from the efforts of the Parliamentary Conference on the wto to make the voice of parliamentarians heard, national parliaments do not have an institutionalized say in Geneva going beyond a regular exchange of views and information.264 They only indirectly (by controlling the trade policy of the respective government) participate in the decision-making within the wto, whereas the way a Member comes to its decision on how to vote is an internal matter.265 The resulting dangers have been recognized by the world trade community, as the following statement by former Director-General Lamy shows:

257 wipo, Protection Against Unfair Competition, para. 27; Callmann, p. 609. For German law, see Deutscher Bundestag [German Parliament], Drucksache 15/1487, p. 16. For Peruvian law, see Ezcurra/Chávez in Pasquel/Patrón/Pérez Costa, p. 103. 258 Shaffer/Trachtman, pp. 110 f; Shaffer in Maskus/Reichman, p. 896; Glöckner in Schulze/ Zuleeg/Kadelbach, § 17 para. 147; Keßler/Micklitz, p. 40; Trachtman, ‘The Domain of wto Dispute Resolution’, pp. 344, 376. 259 Keßler/Micklitz, p. 40. For German law, see Eck in Gloy/Loschelder/Erdmann, § 22 para. 14. 260 Cf. Shaffer/Trachtman, p. 112. 261 Bagchi, p. 1535; Kotzur, ‘Good Faith (Bona fide)’ in mpepil, para. 23. 262 See Articles 8.2, 3, 9 and 17.3 of the dsu. See also Shaffer/Trachtman, p. 112; Petersmann in Cottier/Pauwelyn/Bürgi Bonanomi, p. 89; Moore in Macrory/Appleton/Plummer, vol. i, pp. 45 ff. 263 Oeter in Hilf/Oeter, § 1 paras. 45, 51 f; Moore in Macrory/Appleton/Plummer, vol. i, p. 46. Welcoming this, Roessler in Cottier/Mavroidis, p. 270. 264 Petersmann in Cottier/Pauwelyn/Bürgi Bonanomi, pp. 80 ff; wto, Parliamentary Conference on the wto (2015) accessed 8 December 2015; wto, Reaching out to parliamentarians (2015) accessed 8 December 2015. 265 Cf. Petersmann in Petersmann/Harrison, p. 377.

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the very credibility of national democracies is at risk if global governance fails to establish its own democratic credentials and if citizens feel that the issues that affect them on a day to day basis, having now become global issues, are beyond the control of their political will as expressed through the ballot box.266 Should wto law develop into a direction which contradicts their will, the Members have reserved ‘the exclusive authority to adopt interpretations … by a three-fourths majority’ according to Article ix:2 of the wto Agreement. Pursuant to Article 3.9 of the dsu, this right prevails over the dsu. It was never used, however, not even for the Doha Declaration on trips and Public Health.267 Generally speaking, the broader the normative content of a wto provision, the greater is the power of discretion of the wto adjudicating bodies over the regulatory freedom of the Members (their legislative bodies included).268 When called upon to interpret a norm of international law, an international court has two options: it can either exercise judicial restraint and leave it to national law to flesh it out or bring about the concretization itself. The latter amounts to a standardization which is more or less unitary, depending on how precisely the international court defines the terms contained in the norm. The question we deal with in this section is to what extent wto law pre-sets the term ‘honest practices’ or, conversely, to what extent it is at the Members’ discretion to delineate this legal concept. The task consists in drawing a line between the prevalence of the wto and the regulatory autonomy of the Members. In the context of Article 10bis of the Paris Convention (1967), arguments for both sides can be put forward: On the one hand, the Members have their own traditions on how to deal with unfair competition issues. wto law recognizes this expressly in the third sentence of Article 1.1 of the trips Agreement. On the other hand, a Member must not invoke its own law to deviate from wto obligations, cf. Article 27 of the Vienna Convention.269 The Appellate Body in Japan – Alcoholic Beverages ii remarked on wto rules in general that they ‘are 266 Lamy, ‘Global governance in the steps of William Rappard’ (Speech delivered to the Diplomatic Club of Geneva, 15 March 2010) accessed 8 December 2015. 267 Van Damme, ‘Treaty Interpretation by the wto Appellate Body’, p. 613; Mavroidis, ‘No Outsourcing of Law?’, p. 429. 268 Elfring, p. 102; Trachtman, ‘The Domain of wto Dispute Resolution’, p. 335. 269 Appellate Body Report, Brazil – Aircraft (Article 21.5 – Canada), para. 46; Panel Report, Argentina – Poultry Anti-Dumping Duties, para. 7.108; Cottier/Oesch, p. 198; Royla, p. 498.

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not so rigid or so inflexible as not to leave room for reasoned judgements in confronting the endless and ever-changing ebb and flow of real facts in real cases in the real world’.270 This is true in particular of paragraph 2 of Article 10bis of the Paris Convention (1967).271 (a) Repression of Unfair Competition under the Paris Regime The prevailing view under the Paris regime does not give much effect to paragraph 2 of Article 10bis of the Paris Convention (1967). The provision is read as referring principally to non-legal standards of the country of the Union in which legal protection is sought.272 This gives the countries of the Union vast leeway.273 The rationale is a practical, rather than a legal one: it is propounded that an international standard is simply non-existent, the consequence being that there is no alternative to this so-called ‘protectingcountry principle’.274 As a result, the protection against unfair competition under the Paris regime is basically limited to paragraph 3 of Article 10bis of the Paris Convention (1967). Courts in the United States even held that ‘the Paris Convention provides for national treatment, and does not define the substantive law of unfair competition’.275 We will examine hereinafter whether and, if so, in what way the incorporation of Article 10bis of the Paris Convention (1967) into the wto system has brought about a change in this regard. 270 Appellate Body Report, Japan – Alcoholic Beverages ii, p. 31. 271 See above p. 22. See also Cottier/Jevtic in Drexl et al., p. 675; Höpperger/Senftleben in Hilty/Henning-Bodewig, Law Against Unfair Competition, p. 66. 272 wipo, Protection Against Unfair Competition, para. 20; Pflüger, p. 129; Beater, Unlauterer Wettbewerb, § 4 para. 365; Höpperger/Senftleben in Hilty/Henning-Bodewig, Law Against Unfair Competition, p. 64; Henning-Bodewig, Unfair Competition Law, p. 9; de Vrey, p. 13; Reger, pp. 18 ff, 309; Schricker in Großfeld et al., pp. 990 ff, 995. 273 Cf. Höpperger/Senftleben in Hilty/Henning-Bodewig, Law Against Unfair Competition, pp. 64 f; Schricker in Großfeld et al., p. 992. 274 Pflüger, pp. 131 ff, 365 f; Pflüger in Hilty/Henning-Bodewig, Lauterkeitsrecht und Acquis Communautaire, pp. 78 f; Henning-Bodewig, Unfair Competition Law, p. 20; Schricker in Großfeld et al., pp. 991 f, 995. 275 United States Court of Appeals, 9th Circuit, Mattel v. mca Records, p. 908; United States Court of Appeals, 9th Circuit, Grupo Gigante v. Dallo, p. 1100; United States Court of Appeals, 2nd Circuit, Cubatabaco v. Culbro, p. 484; United States Court of Appeals, 2nd Circuit, itc v. Punchgini, pp. 161 f. Contra United States District Court, E.D. Michigan, General Motors v. Lopez, pp. 688 ff. See also Callmann/Altman, § 27:10; Pflüger, pp. 249 ff; Cottier/ Jevtic in Drexl et al., p. 678 footnote 31.

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(b) Minimum Standard Requirement First of all, ‘honest practices’ in paragraph 2 of Article 10bis of the Paris Convention (1967) is an international legal term.276 Commensurate with the principle of autonomous treaty interpretation, an international understanding follows which does not hinge upon categories of domestic law.277 A further corollary is that the correct understanding of ‘honest practices’ is a matter of law, and not merely an empirical issue.278 Moreover, the requirement of a minimum standard can be inferred from the second sentence of Article 1.1 of the trips Agreement,279 which reads as follows: Members may, but shall not be obliged to, implement in their law more extensive protection than is required by this Agreement, provided that such protection does not contravene the provisions of this Agreement. By implication, this provision prescribes a certain level of protection for the benefit of nationals of other Members, which must not be undercut.280 Relating to this, the panel in China – Intellectual Property Rights noted: The third sentence of Article 1.1 does not grant Members freedom to implement a lower standard, but rather grants freedom to determine the appropriate method of implementation of the provisions to which they are required to give effect under the first sentence.281

276 Henning-Bodewig in Hilty/Henning-Bodewig, Law Against Unfair Competition, p. 57; ­Reger, p. 23. 277 Pflüger, pp. 59, 138; Cottier/Germann in Takagi/Allman/Sinjela, p. 143; Brand in Stoll/Bu­ sche/Arend, Article 2 para. 109; Henning-Bodewig in Hilty/Henning-Bodewig, Law Against Unfair Competition, p. 57; Henning-Bodewig, Unfair Competition Law, p. 20. See also Ap­ pellate Body Report, us – Shrimp, para. 155; Panel Report, us – Gambling, para. 6.462. 278 Likewise, for German law, Plaß in Ekey et al., § 3 uwg i para. 47; Rittner/Dreher/Kulka, § 2 paras. 181 f. 279 Panel Report, China – Intellectual Property Rights, para. 7.513; Beater, Unlauterer Wettbewerb, § 4 para. 370; Correa, Trade Related Aspects of Intellectual Property Rights, p. 24; Fromm-Russenschuck/Duggal, p. 46. 280 unctad-ictsd Resource Book, pp. 17, 24; Correa/Mashayekhi/Tuerk, p. 25; Stoll/Busche/ Arend, Introduction ii para. 7, Article 1 paras. 8 ff. 281 Panel Report, China – Intellectual Property Rights, para. 7.513.

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In sum, the discretionary powers of the Members are subject to certain minimum standards.282 Importantly, these standards must not even be evaded ‘to protect public health and nutrition, and to promote the public interest in sectors of vital importance to their socio-economic and technological development’.283 The Doha Declaration on trips and Public Health has not amended this proposition.284 In us – Section  110(5) Copyright Act, the panel observed ‘that while the wto Members are free to choose the method of implementation, the minimum standards of protection are the same for all of them’.285 Similarly, the panel in China – Intellectual Property Rights held with regard to Article 61 of the trips Agreement: The minimum standard in Article 61 does not defer to China’s domestic practice on the definition of criminal liability and sanctions for other wrongful acts in areas not subject to international obligations under the trips Agreement, unless it so states.286 Where the line between national scope of discretion and international minimum standard must be drawn is an issue on which the Appellate Body is empowered to give the final ruling in a particular case without prejudice to Article ix:2 of the wto Agreement. A case in point is us – Gambling.287 Some commentators want to apply the international standards to purely domestic legal situations too.288 This view, however, does not consider that beneficiaries of the trips Agreement are only ‘nationals of other Members’ in terms of Article 282 Mitchell/Voon in Bethlehem et al., p. 187; Busche in Stoll/Busche/Arend, Introduction ii para. 7; Cottier, ‘Industrial Property, International Protection’ in mpepil, para. 42; Correa, Trade Related Aspects of Intellectual Property Rights, pp. 27 f; Elfring, p. 60; Heiskanen, p. 11. 283 Cf. the end of Article 8.1 of the trips Agreement. 284 Instead, Article 31 of the trips Agreement provides for compulsory licensing. The Decision of the General Council on the Implementation of Paragraph 6 of the Doha Declaration on the trips Agreement and Public Health waives ‘[t]he obligations of an exporting Member under Article 31(f) of the trips Agreement’, thus allowing it to export pharmaceutical products made without authorization of the patent holder, cf. paragraph 2 thereof. See also Gervais, ‘Agreement on Trade-Related Aspects of Intellectual Property Rights (1994)’ in mpepil, paras. 56 f. 285 Panel Report, us – Section 110(5) Copyright Act, para. 6.189. See also Brand in Stoll/Busche/ Arend, Article 2 para. 5. 286 Panel Report, China – Intellectual Property Rights, para. 7.514. 287 Appellate Body Report, us – Gambling, paras. 296 ff. 288 Reger, p. 291; Henning-Bodewig in Schricker/Henning-Bodewig, Neuordnung des Wettbe­ werbsrechts, p. 34.

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1.3 of the trips Agreement,289 and that wto law does not concern itself with the discrimination against nationals.290 The minimum standard requirement also applies to Article 10bis of the Paris Convention (1967).291 The wording of paragraph 3 ‘in particular’ elucidates this.292 Furthermore, a demand for a minimum standard can be read into recital 2(b) of the Preamble to the trips Agreement, which stresses the need for ‘the provision of adequate standards and principles concerning the availability, scope and use of trade-related intellectual property rights’. This preambular paragraph also bears on the incorporated provisions.293 Given that trade distortions may result from a divergent application of a common standard,294 the panel in China – Intellectual Property Rights ruled that a coherent reading of the three sentences of Article 1.1 [of the trips Agreement] does not permit differences in domestic legal systems and practices to justify any derogation from the basic obligation to give effect to the provisions on enforcement.295 Incidentally, maximal protection is not envisaged by Article 10bis of the Paris Convention (1967). In comparison, the ‘fair and equitable treatment’ standard employed in investment treaties is deemed to be ‘absolute’.296 That is, the treatment guaranteed thereunder has been fixed in advance,297 whereas the treatment guaranteed under a relative standard is contingent upon the treatment afforded 289 See above p. 53. 290 See above p. 38. 291 Wadlow, The Law of Passing-off, para. 2–027; Pflüger, pp. 56, 117; Pflüger in Hilty/HenningBodewig, Lauterkeitsrecht und Acquis Communautaire, pp. 69 f; Beater, Unlauterer Wett­ bewerb, § 4 para. 366; Brand in Stoll/Busche/Arend, Article 2 para. 109; Cottier/Jevtic in Drexl et al., pp. 673 f; Cottier/Germann in Takagi/Allman/Sinjela, p. 143; Cottier/Sangeeta Khorana in Cottier/Pauwelyn/Bürgi Bonanomi, p. 268; Schricker/Henning-Bodewig, ‘New Initiatives for the Harmonisation of Unfair Competition Law in Europe’, p. 271; Norton, pp. 240, 250 f. 292 wipo, Protection Against Unfair Competition, para. 21; Brand in Stoll/Busche/Arend, Article 2 paras. 109, 111; de Vrey, pp. 15 f; Bodenhausen, p. 145. 293 See above p. 49. 294 For European Union law, see recital 3 of the Preamble to the Unfair Commercial Practices Directive. 295 Panel Report, China – Intellectual Property Rights, para. 7.513. 296 Yannaca-Small, p. 2; unctad, Fair and Equitable Treatment (2012), p. 6. 297 Fatouros, p. 215.

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to nationals of other Members, other investments, etc.298 Examples of relative standards in this sense are the most-favoured-nation clause and national treatment.299 Some comments on Article 10bis of the Paris Convention (1967) suggest a relative standard.300 At bottom, they merely describe the indefiniteness of that Article but not its relativeness. In fact, the domestic laws of the Members must be in conformity with the minimum standard which mandates a certain level of protection.301 This speaks in favour of an absolute standard, ‘i.e. a standard that states the treatment to be accorded in terms whose exact meaning has to be determined, by reference to specific circumstances of application’.302 It further implies a uniform interpretation to the effect that, as far as the minimum standard expands, the protecting-country principle is excluded. From an absolute standard a certain harmonization of domestic laws ensues,303 not with regard to the method of implementing Article 10bis of the Paris Convention (1967),304 but in substantive terms.305 I therefore reject the view that holds Article 10bis of the Paris Convention (1967) to be subject to national treatment306 and the ensuing consequence that only as much protection is accorded to nationals of other Members as is accorded to one’s own nationals.307 A minimum standard shall precisely exclude such a dependency.308 The principle of national treatment, as enshrined in Article 3 of the trips Agreement and Article 2 of the Paris Convention (1967) in conjunction 298 Yannaca-Small, p. 2; unctad, Fair and Equitable Treatment (2012), p. 6. 299 Yannaca-Small, p. 2. 300 See above p. 58. See also Reger, p. 309. 301 Article xvi:4 of the wto Agreement; Panel Report, China – Intellectual Property Rights, paras. 7.509 f. 302 oecd, International Investment Law, p. 74. 303 Cf. Appellate Body Report, us – Section  211 Appropriations Act, para. 186 in relation to Article 16 of the trips Agreement, para. 206 in relation to Section 1 of Part iii of the trips Agreement, para. 207 in relation to Section 2 of Part iii of the trips Agreement. See also Osterrieth, para. 65. 304 Cottier/Jevtic in Drexl et al., p. 675; Pflüger in Hilty/Henning-Bodewig, Lauterkeitsrecht und Acquis Communautaire, pp. 73, 76; Busche in Stoll/Busche/Arend, Introduction ii para. 7. 305 Article 1.1 of the trips Agreement. See also Cottier/Jevtic in Drexl et al., p. 690; HenningBodewig in Hilty/Henning-Bodewig, Law Against Unfair Competition, p. 59; de Vrey, p. 15. 306 See above p. 58. 307 Cottier/Jevtic in Drexl et al., p. 678 footnote 31; Norton, pp. 250 f. See also unctad-ictsd Resource Book, pp. 62, 73 ff; Busche in Stoll/Busche/Arend, Introduction ii para. 8; Trebilcock/Fishbein in Guzman/Sykes, p. 30; Sinjela/Ramcharan, p. 13. 308 Pflüger, pp. 112 ff, 252 f; Schricker in Großfeld et al., p. 989.

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with Article 2.1 of the trips Agreement, is unable to guarantee a certain level of protection and only becomes pertinent beyond the minimum standard.309 One final remark is in order: the above said applies to the Members. The overarching tenet of non-discrimination does not bind private actors in competition who, as a matter of principle, are free to choose their contractual partners and, in doing so, discriminate.310 (c)

Legal Nature of Paragraph 2 of Article 10bis of the Paris Convention (1967) We have found that Article 10bis of the Paris Convention (1967) embodies a minimum standard which prevails over national law.311 So the only question remaining is where its agreed benchmark lies. Paragraph 2 of Article 10bis of the Paris Convention (1967) is elaborated by three prohibitions in paragraph 3 which represent the most common cases of application of the doctrine of unfair competition.312 Considering its indefiniteness, it is disputed whether Article 10bis of the Paris Convention (1967) contains any binding commitments beyond these explicit instances.313 One view considers paragraphs 1 and 2 thereof as purely hortatory in nature.314 According to this view, paragraph 2 is too vague to issue any legal orders and thus not comprised by the mandatory minimum standard.315 As a preliminary point, I call attention to two panel rulings. In China – ­Intellectual Property Rights, the panel observed: The first sentence of Article 1.1 [of the trips Agreement] sets out the ­basic obligation that Members ‘shall give effect’ to the provisions of this Agreement. This means that the provisions of the Agreement are obligations where stated …316

309 Wadlow, The Law of Passing-off, paras. 2–013, 2–027; Beater, Unlauterer Wettbewerb, § 4 para. 358; Stoll/Busche/Arend, Article 1 para. 10, Article 3 para. 2; Heiskanen, p. 12. See also Partial Award, Myers v. Canada, para. 259, on the minimum standard of treatment of the nafta. 310 For German law, see Ohly in Ohly/Sosnitza, § 4.10 uwg para. 10/17. For Peruvian law, see Eyzaguirre in Pasquel/Patrón/Pérez Costa, p. 60. 311 See above p. 59. 312 wipo, Protection Against Unfair Competition, paras. 31, 41 ff; Alkin, p. 48. 313 Chow/Lee, p. 724; Reger, p. 20. 314 Cf. Schricker in Großfeld et al., p. 988. 315 See also Baxter, pp. 550, 554, 557, 560 f; Boyle/Chinkin, p. 220. 316 Panel Report, China – Intellectual Property Rights, para. 7.513.

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The panel in ec – Trademarks and Geographical Indications, reproducing its preliminary ruling, noted that Article 10bis of the Paris Convention (1967) sets out a single obligation in paragraph (1) regarding unfair competition which is clarified in, and therefore closely related to, paragraphs (2) and (3) …317 Paragraph 1 of Article 10bis of the Paris Convention (1967) reads as follows: The countries of the Union are bound to assure to nationals of such countries effective protection against unfair competition. (emphasis added) In a word, that paragraph confers legal force on the doctrine of unfair competition. Since the Members are obliged to assure effective protection against unfair competition, paragraph 2 of Article 10bis of the Paris Convention (1967) must have meaning. So far the discussion turned on the question as to the legal nature of paragraph 2, i.e. whether it is merely a legal definition or a general clause.318 Many countries have implemented Article 10bis of the Paris Convention (1967) by incorporating a general clause in their national system.319 However, from this alone, it cannot be inferred that paragraph 2 constitutes such a clause because the countries may well go beyond the required minimum level of protection.320 Paragraph 2 undeniably defines ‘an act of unfair competition’,321 and as such sets out the essence of the doctrine of unfair 317 Panel Report, ec – Trademarks and Geographical Indications, para. 36(b) of para. 7.2. 318 In favour of a general clause: Drexl in Säcker/Rixecker/Oetker, IntLautR, para. 27; Cottier/Jevtic in Drexl et al., p. 673; de Vrey, pp. 13 f; Asland, p. 7; Micklitz, p. 467; Schricker/ Henning-Bodewig, ‘Elemente einer Harmonisierung des Rechts des unlauteren Wettbe­ werbs in der Europäischen Union’, p. 1378; Schricker in Großfeld et al., pp. 988 f, 990, 995; Henning-Bodewig, ‘International Protection Against Unfair Competition’, pp. 177, 183, 187. Against it: Pflüger, pp. 109, 114 f; Fezer, Zweiter Teil B pvü Art. 10bis para. 2; Höfinghoff, p. 116; v. Gamm in Niederleithinger/Werner/Wiedemann, p. 204. 319 See Article 5(1) and (2) of the Unfair Commercial Practices Directive; Section 3 of the German Act Against Unfair Competition; Article 2 of the Swiss Act Against Unfair Competition; Article 4(1) of the Spanish Unfair Competition Law; Article 3 of the Chilean Law No. 20.169; Article 6 of the Peruvian Law on Suppression of Unfair Competition; Article 213(i) of the Mexican Law on Industrial Property; Article 2598(3) of the Italian Civil Code. 320 Busche in Stoll/Busche/Arend, Introduction ii para. 7. See above p. 59. 321 Beater, Unlauterer Wettbewerb, § 4 para. 364; Henning-Bodewig, Unfair Competition Law, p. 19; Schulte-Beckhausen/Maaßen in Gloy/Loschelder/Erdmann, § 12 para. 2; Brand in

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c­ ompetition. All the same, that clause could accommodate unwritten cases of application of the doctrine of unfair competition. The fact that it is formulated in a definitional way does not foreclose this because the legal obligation flows from paragraph 1, as stated by the panel in ec – Trademarks and Geographical Indications, whereas paragraphs 2 and 3 are clarifications.322 This is borne out by paragraph 2 of Article 39 of the trips Agreement, which contains a formulation similar to that of paragraph 2 of Article 10bis of the Paris Convention (1967): ‘contrary to honest commercial practices’ in comparison to ‘contrary to honest practices in industrial or commercial matters’. While it is doubtful whether or not the last-mentioned norm incarnates a minimum standard, the wording of footnote 10 to Article 39.2 of the trips Agreement (‘at least’) makes it clear that the first-mentioned phrase denotes such a standard.323 Although footnote 10 is directly applicable only to undisclosed information according to its wording (‘for the purpose of this provision’), the fact that both formulations are interchangeable324 suggests that paragraph 2 of Article 10bis of the Paris Convention (1967) embodies a minimum standard too.325 (d) Requirement of Effective Protection To maintain that paragraph 2 of Article 10bis of the Paris Convention (1967) is vague and therefore not executable is all too simple. Indefiniteness of legal terms is a commonplace in judicial life;326 it does not per se deprive them of legal effect.327 It may be true that the phrase ‘honest practices’ is inherently indeterminate and needs to be fleshed out, but there is a practical reason for this: in order to afford effective protection, any protective mechanism against unfair competition must be adaptive to the dynamics of competitive (mis)behaviour.328 Given its variety and changeability, it is not possible to regulate all acts

322 323 324 325 326 327 328

Stoll/Busche/Arend, Article 2 para. 109; Bodenhausen, pp. 143 f. See also wipo Model Provisions, para. 1.02. Contra Callmann/Altman, § 27:10. See also Pflüger in Cottier/Véron, Paris Convention, art. 10bis, pp. 298 f. Peter/Michaelis in Stoll/Busche/Arend, Article 39 para. 30; Cottier in Macrory/Appleton/ Plummer, vol. i, pp. 1100 f; Reger, p. 267. De Carvalho, The trips Regime of Antitrust and Undisclosed Information, para. 39.3.86; Dessemontet in Correa/Yusuf, p. 286. Pro Wadlow, The Law of Passing-off, para. 2–027. Contra Brand in Stoll/Busche/Arend, Article 2 para. 110. Cottier/Jevtic in Drexl et al., pp. 680 f. Cf. California Court of Appeals, 3rd Dist., The People v. National Research Company of California, p. 772. wipo, Protection Against Unfair Competition, para. 11; Cottier/Jevtic in Drexl et al., pp. 671, 675; de Vrey, p. 3.

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of unfair competition in an exhaustive catalogue.329 Adjudicating bodies can react more quickly to new forms of competitive behaviour than legislators.330 This is especially true in the present case where the legislators are contracting parties to an international treaty. Against this background, it was requisite to formulate paragraph 2 of Article 10bis of the Paris Convention (1967) in an open-textured, future-compliant way so as to provide for the necessary flexibility.331 Correspondingly, wto adjudicating bodies have much discretion as to how closely they scrutinize the Members. According to paragraph 1 of Article 10bis of the Paris Convention (1967), protection against unfair competition must be effective. Paragraph 3 thereof makes clear that the way to set up an effective protection is through prohibitions. To be effective, in principle, ‘any act of competition’ which meets the requirements of paragraph 2 shall be prohibited but ‘in particular’ those listed in paragraph 3.332 In other words, a protection restricted to the three acts in paragraph 3 would not be effective within the meaning of paragraph 1. The stipulation in paragraph 1 is to be understood as a substantive order because the procedural aspects regarding the protection against unfair competition are regulated in a separate norm, to wit: Article 10ter of the Paris Convention (1967).333 The wording ‘in particular’ of the introductory clause of paragraph 3 suggests that there are more acts of unfair competition and that the ones mentioned are exemplary.334 These unwritten acts are to be measured against paragraph 2.335 If this were not true, why include paragraph 2 in the first place? 329 See above p. 55. 330 For German law, see v. Ungern-Sternberg in Gloy/Loschelder/Erdmann, § 23 para. 2; Götting, Wettbewerbsrecht, § 6 para. 2. 331 wipo, Protection Against Unfair Competition, para. 11; Henning-Bodewig in HenningBodewig, International Handbook on Unfair Competition, § 2 para. 31; Pflüger, p. 136; de Vrey, p. 66. 332 Bodenhausen, p. 143; Callmann/Altman, § 27:10. 333 Brand in Stoll/Busche/Arend, Article 2 paras. 108, 113; Fezer, Zweiter Teil B pvü Art. 10bis para. 1. 334 wipo Intellectual Property Handbook, para. 5.142; wipo, Protection Against Unfair Competition, para. 41; Pflüger in Cottier/Véron, Paris Convention, art. 10bis, p. 301; Fikentscher, p. 283. See above p. 22. 335 wipo Model Provisions, para. 1.01; Henning-Bodewig in Henning-Bodewig, International Handbook on Unfair Competition, § 2 paras. 31, 42; Henning-Bodewig, ‘Internationale Standards gegen unlauteren Wettbewerb’, p. 6; Wadlow, The Law of Passing-off, para. 2–030; Brand in Stoll/Busche/Arend, Article 2 para. 109; Höpperger/Senftleben in Hilty/ Henning-Bodewig, Law Against Unfair Competition, p. 65.

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It would have been sufficient to impose three mandatory prohibitions w ­ ithout paragraph 2. Paragraph 3 is not reliant on a general definition because it specifically lays down the criteria that establish dishonest competitive behaviour itself. An abstract definition of an act of unfair competition only makes sense if the existence of further cases within the ambit of Article 10bis of the Paris Convention (1967) is acknowledged to which this definitional provision may then apply. Assuming that there is nothing else would make paragraph 2 inutile contrary to the principle of effectiveness.336 In light of Articles 3.1 of the trips Agreement and 2(1) of the Paris Convention (1967), the same would hold true if paragraph 2 of Article 10bis of the Paris Convention (1967) was reduced to a mere reaffirmation of the principle of national treatment.337 Denham iv draws the opposite conclusion from an application of the tenet of effectiveness to Article 10bis of the Paris Convention (1967).338 He reasons that if paragraph 2 was of normative nature, it would encompass paragraph 3 and thus make it superfluous. However, this view misunderstands the regulatory technique of a general clause and the significance of examples as statutory clarifications. Commensurate with the principle of consistent treaty interpretation, paragraph 1 and 2 of Article 10bis of the Paris Convention (1967) must be read ­together.339 According to the Appellate Body rulings in Japan – Alcoholic Beverages ii and Korea – Dairy, this follows from the principle of effectiveness.340 In Korea – Dairy, the Appellate Body noted: An important corollary of this principle is that a treaty should be interpreted as a whole, and, in particular, its sections and parts should be read as a whole.341 (footnote omitted) This proposition applies to an individual treaty Article all the more.342 In us – Wheat Gluten, the Appellate Body confirmed this with respect to Article 4.2(a) and (b) of the Agreement on Safeguards: 336 Cf. Appellate Body Report, Argentina – Footwear (ec), para. 81. See above p. 28. 337 Cf. Pflüger in Hilty/Henning-Bodewig, Lauterkeitsrecht und Acquis Communautaire, p. 79. 338 Denham iv, pp. 823 f. 339 Pflüger in Cottier/Véron, Paris Convention, art. 10bis, pp. 298 f. 340 Appellate Body Report, Japan – Alcoholic Beverages ii, p. 18; Appellate Body Report, Korea – Dairy, para. 81. 341 Appellate Body Report, Korea – Dairy, para. 81. 342 Cf. Appellate Body Report, Japan – Alcoholic Beverages ii, p. 18; Cameron/Gray, p. 258.

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We believe that Articles 4.2(a) and 4.2(b) of the Agreement on Safeguards must be given a mutually consistent interpretation, particularly in light of the explicit textual connection between these two provisions.343 All in all, paragraphs 1 and 2 of Article 10bis of the Paris Convention (1967) embody not only a legal definition but also a general prohibition of acts of unfair competition344 from which the explicit cases emanate and which are therefore lex specialis to it. As a result, paragraphs 1 and 2 are normative in character and can be breached.345 This finds support in the view that subsumes the protection of trade secrets under paragraph 2 of Article 10bis of the Paris Convention (1967). Put forward during the Uruguay negotiations,346 this view is predicated on a normative understanding of paragraph 2. The resulting paragraph 1 of Article 39 of the trips Agreement presupposes the legal obligation of ‘ensuring effective protection against unfair competition as provided in Article 10bis of the Paris Convention (1967)’. Such an obligation can only arise from paragraphs 1 and 2 of Article 10bis of the Paris Convention (1967). (e) Articles 3.2 and 19.2 of the dsu As a comparison to the legal systems of the Members shows, apprehensions about the (lacking) legal clarity of paragraph 2 of Article 10bis of the Paris Convention (1967) are unfounded. Since national and international law inform one another, inter alia as regards methodology, national general clauses deserve closer attention.347 They are no less abstract, and nevertheless fully operative.348 Their everyday application proves this.349 In some Members (Italy, Belgium), Article 10bis of the Paris Convention eo ipso formed the national unfair competition law.350 343 Appellate Body Report, us – Wheat Gluten, para. 73. 344 Wadlow, The Law of Passing-off, paras. 2–030 f; Westkamp, ‘trips Principles, Reciprocity and the Creation of Sui-Generis-Type iprs’, p. 837. 345 Wadlow, The Law of Passing-off, paras. 2–030 f; Pflüger in Cottier/Véron, Paris Convention, art. 10bis, p. 298. Contra Cottier/Jevtic in Drexl et al., p. 674, but see p. 690. 346 Canada and United States in Meeting of Negotiating Group of 30 October – 2 November 1989, gatt Doc. mtn.GNG/NG11/16, paras. 19, 24; Switzerland in Meeting of Negotiating Group of 11, 12 and 14 December 1989, gatt Doc. mtn.GNG/NG11/17, para. 44. 347 Kotzur, ‘Good Faith (Bona fide)’ in mpepil, para. 12. 348 Schricker in Großfeld et al., p. 989. For Californian law, see California Court of Appeals, 3rd Dist., The People v. National Research Company of California, p. 772. 349 Schricker, p. 793. 350 Henning-Bodewig, ‘Internationale Standards gegen unlauteren Wettbewerb’, p. 3; Pflüger, p. 109.

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To concretize indefinite norms is the very task of adjudicating bodies, and national experience demonstrates: the norm at hand is open to interpretation and therefore susceptible to substantiation.351 Courts accomplish this through the creation of case law and its classification in categories (‘case groups’).352 A case group is a class of cases characterized by the same element of dishonesty, such as ‘discrediting’ or ‘misrepresenting’. Their formation enhances the consistency and predictability of the case law.353 For the most part, unfair competition law is thus judge-made law, even in the civil law tradition.354 This raises the question of whether the wto adjudicating bodies would be competent to forge case groups in the same way national courts do. According to Articles 3.2 and 19.2 of the dsu, ‘the panel and Appellate Body cannot add to or diminish the rights and obligations provided in the covered agreements’. On the other hand, panels have the role ‘to clarify the existing provisions of [the covered] agreements’ pursuant to the second sentence of Article 3.2 of the dsu.355 The essence of these two prescriptions is encapsulated in a dictum of the International Court of Justice in Interpretation of Peace Treaties: ‘It is the duty of the Court to interpret the Treaties, not to revise them’.356 It follows that, by curbing judicial activism, Articles 3.2 and 19.2 of the dsu secure the separation of powers between the Membership and the adjudicating bodies of the wto.357 Consequently, a line has to be drawn demarcating where the

351 Cf. Pflüger in Hilty/Henning-Bodewig, Lauterkeitsrecht und Acquis Communautaire, pp. 80 f. 352 Henning-Bodewig in Henning-Bodewig, International Handbook on Unfair Competition, § 1 para. 16; Hilty in Hilty/Henning-Bodewig, Law Against Unfair Competition, p. 25; Schricker, p. 793. For German law, see Gloy/Loschelder/Erdmann, § 22 paras. 14 f, § 43 para. 10; Glöckner in Schulze/Zuleeg/Kadelbach, § 17 para. 6. 353 For German law, see Lubberger in Gloy/Loschelder/Erdmann, § 43 para. 14; Götting § 6 para. 2. 354 Cottier/Jevtic in Drexl et al., p. 671; Thouvenin, p. 558. For European Union law, see Beater, Unlauterer Wettbewerb, § 5 para. 384; Glöckner in Hilty/Henning-Bodewig, Law Against Unfair Competition, p. 105. For English law, see High Court of Justice (Chancery Division), Irvine v. Talksport, para. 13. For German law following the civil law tradition, see Lubberger in Gloy/Loschelder/Erdmann, § 43 para. 9; de Vrey, p. 148; Ohly, Richterrecht und Generalklausel im Recht des unlauteren Wettbewerbs, pp. 253 ff. For Dutch law, see European Court of Justice, Judgment, bv Diensten Groep v. Beele, para. 5. For Swiss and Austrian law, see Glöckner in Schulze/Zuleeg/Kadelbach, § 17 para. 5. 355 Panel Report, us – 1916 Act (ec), para. 6.53; Appellate Body Report, us – Certain ec Products, para. 92. 356 International Court of Justice, Advisory Opinion, Interpretation of Peace Treaties, p. 229. 357 Chase, p. 809; Panizzon, p. 262; Wolfrum/Stoll/Kaiser, Article 3 dsu para. 54, Article 11 dsu para. 26.

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clarification of wto provisions changes into adding or diminishing rights and obligations. In us – Stainless Steel (Mexico), the Appellate Body noted that ‘[c]larification, as envisaged in Article 3.2 of the dsu, elucidates the scope and meaning of the provisions of the covered agreements in accordance with customary rules of interpretation of public international law’.358 That is, to give meaning and effect to paragraph 2 of Article 10bis of the Paris Convention (1967) is a judiciary task. However, ‘to adopt an interpretation which ran counter to the clear meaning of the terms would not be to interpret but to revise the treaty’, as the International Law Commission (the ‘ilc’) set forth.359 In this connection, I recall what Judge Higgins articulated in her dissenting opinion in Threat or Use of Nuclear Weapons: ‘It is exactly the judicial function to take principles of general application, to elaborate their meaning and to apply them to specific situations’.360 This is intended to promote the development of international law beyond its rudimentary state.361 The same could be said about wto law.362 Even so, the Appellate Body urged caution in us – Wool Shirts and Blouses: we do not consider that Article 3.2 of the dsu is meant to encourage either panels or the Appellate Body to ‘make law’ by clarifying existing provisions of the wto Agreement outside the context of resolving a particular dispute.363 (emphasis added) For the view that sees paragraph 2 of Article 10bis of the Paris Convention (1967) as merely a legal definition, the construction as a general clause is tantamount to an addition of rights and obligations (depending on the viewpoint) and thus a violation of Articles 3.2 and 19.2 of the dsu. Assuming that a panel or the Appellate Body would adjudicate that a certain behavioural pattern falls under paragraph 2 of Article 10bis of the Paris Convention (1967), this would de facto result in standard setting despite the inter partes effect of adopted r­ eports and despite the fact that stare decisis does not apply to panel reports.364 For, 358 Appellate Body Report, us – Stainless Steel (Mexico), para. 161. 359 ‘Draft Articles on the Law of Treaties with commentaries’ [1966] ii(2) Yearbook of the International Law Commission, p. 219 para. 6. 360 International Court of Justice, Dissenting Opinion, Threat or Use of Nuclear Weapons, para. 32 (Judge Higgins) accessed 8 December 2015. 361 Higgins, p. 341. 362 Cf. Reger, p. 284. 363 Appellate Body Report, us – Wool Shirts and Blouses, p. 19. 364 Cf. Article 59 of the icj Statute; Appellate Body Report, Japan – Alcoholic Beverages ii, p. 14; Panel Report, India – Patents (ec), para. 7.30; Kennedy, p. 45; van Damme in Bethlehem

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in doing so, the panel or the Appellate Body would ‘create legitimate expectations among wto Members’,365 and in this sense make ‘case law’.366 Concerning the impact of its own rulings, the Appellate Body held in us – Stainless Steel (Mexico) and confirmed in us – Continued Zeroing that failure to follow previously adopted Appellate Body reports addressing the same issues undermines the development of a coherent and predictable body of jurisprudence clarifying Members’ rights and obligations under the covered agreements as contemplated under the dsu. … the relevance of clarification contained in adopted Appellate Body reports is not limited to the application of a particular provision in a specific case.367 As long as the conclusions reflect ‘a correct interpretation and application of provisions of the covered agreements’, i.e. as long as panels stay within the scope of interpretation, they do not add to or diminish rights and obligations.368 If a complainant invoked paragraph 2 of Article 10bis of the Paris Convention (1967), it would be inevitable for a panel, performing its function under Article 11 of the dsu to ‘make an objective assessment of the matter before it’, to construe ‘honest practices’.369 It would be, in the words of the Appellate Body in us – Wool Shorts and Blouses, within the context of resolving this dispute. The opposite view starts from the premise that paragraph 2 of Article 10bis of the Paris Convention (1967) constitutes a legal definition. Yet, this itself is the result of an interpretive process.370

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366 367 368 369 370

et al., pp. 324 f; Brand in Stoll/Busche/Arend, Article 2 para. 14; Mavroidis, ‘No Outsourcing of Law?’, pp. 464 ff; McGrady, p. 604. For Appellate Body rulings, see Appellate Body Report, us – Stainless Steel (Mexico), para. 161; Appellate Body Report, us – Continued Zeroing, para. 362; Hughes in Bethlehem et al., pp. 289 ff. Appellate Body Report, us – Continued Zeroing, para. 362; Appellate Body Report, us – Shrimp (Article 21.5 – Malaysia), paras. 108 f; Appellate Body Report, Japan – Alcoholic Beverages ii, p. 14; Panel Report, us – Zeroing (Korea), para. 7.31. Cameron/Gray, p. 275. Appellate Body Report, us – Stainless Steel (Mexico), para. 161; Appellate Body Report, us – Continued Zeroing, para. 362. Appellate Body Report, Chile – Alcoholic Beverages, para. 79; Trachtman in Yerxa/Wilson, p. 133; Wolfgang Weiss, p. 185. Cf. Cottier/Jevtic in Drexl et al., p. 681. See above p. 63.

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(f) Conclusions In the final analysis, paragraph 2 of Article 10bis of the Paris Convention (1967) constitutes the central norm that governs the doctrine of unfair competition and ultimately defines its boundaries (by means of the term ‘honest practices’).371 Since any attempt to give ‘honest practices’ meaning in the abstract is likely to amount to an empty formula, this term will find case-by-case concretization372 similar to the phrase ‘take unfair advantage of’ in Article 4(f) of the mcad about which Advocate General Mengozzi said in L’Oréal v. Bellure that it does not lend itself to a general definition. It would appear to have been specifically intended to be applied in a flexible manner on a case-by-case basis, in the light of the factual circumstances of each case.373 The indefiniteness of paragraph 2 enables the adjudicating bodies to develop solutions for unprecedented legal situations and fill unwanted gaps.374 By specifying unwritten cases of application, they render the protection against unfair competition effective, as required by paragraph 1 of Article 10bis of the Paris Convention (1967). Indefiniteness and effectiveness are thus mutually dependent.375 wto law is not unacquainted with a case-by-case approach. In us – H ­ ot-Rolled Steel the Appellate Body, called upon to find an interpretation for the term ‘reasonable’, stated that what constitutes a reasonable period or a reasonable time, under Article 6.8 and Annex ii of the Anti-Dumping Agreement, should be defined on a case-by-case basis, in the light of the specific circumstances of each investigation.376 (emphasis added) Likewise, in ec – Asbestos and Japan – Alcoholic Beverages, the Appellate Body favoured a case-by-case approach for the determination of ‘likeness’:

371 372 373 374 375

Brand in Stoll/Busche/Arend, Article 2 para. 109. Cottier/Jevtic in Drexl et al., pp. 670, 677 f, 695. See above p. 68. Opinion of Advocate General Mengozzi, L'Oréal v. Bellure, para. 71. Cf. Höfinghoff, p. 128. Cottier/Jevtic in Drexl et al., pp. 671, 675; Henning-Bodewig, Unfair Competition Law, p. 10; Kohler, p. 60. 376 Appellate Body Report, us – Hot-Rolled Steel, para. 84.

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As in Article iii:2, in this determination, ‘[n]o one approach … will be appropriate for all cases’.377 Rather, an assessment utilizing ‘an unavoidable element of individual, discretionary judgement’378 has to be made on a case-by-case basis.379 As a matter of fact, a general clause embodies a catch-all element.380 That is, theoretically, there is no lacuna in the protection against unfair competition. On this understanding, the concept of honesty assumes the function of the concept of equity in a business context, namely to restore fairness in a given situation.381 This predestines paragraph 2 of Article 10bis of the Paris Convention (1967) to serve as a stopgap for the intellectual property system.382 As far as the scope of application of this provision is concerned, one has to bear in mind two things: Firstly, by setting up prohibitions, Article 10bis of the Paris Convention (1967) limits the scope of action of economic operators.383 As a corollary, unfair competition law has not only the potential to protect but also to stifle economic activity.384 Given that some prohibitions, such as marketing restrictions, can hinder trade between the Members, their proliferation would be counterproductive to competition.385 Commensurate with the principle of proportionality, which is recognized in wto law since us – Cotton

377 378 379 380 381

382 383 384

385

Appellate Body Report, Japan – Alcoholic Beverages ii, p. 21. Appellate Body Report, Japan – Alcoholic Beverages ii, pp. 20 f. Appellate Body Report, ec – Asbestos, para. 101. For German law, see Sosnitza in Heermann/Hirsch, § 3 uwg para. 9; Rittner/Dreher/ Kulka, § 2 para. 144. International Court of Justice, Judgment, Continental Shelf (Tunisia/Libyan Arab Jamahiriya), para. 71; Cottier/Nadakavukaren Schefer in Petersmann, p. 170; Francioni, ‘Equity in International Law’ in mpepil, para. 26; Boyle/Chinkin, p. 288. See above p. 22. Contra Köhler in Köhler/Bornkamm, Einl para. 6.12. For English law, see Court of Appeal (Civil Division), L’Oréal v. Bellure, paras. 137 ff (Jacob l.j.); High Court of Justice (Chancery Division), Hodgkinson & Corby v. Wards Mobility Services, pp. 1564, 1570. Logan, Part 2, p. 92; Cornish, p. 337. For European Union law, see Article 4 of the Unfair Commercial Practices Directive; European Court of Justice, Judgment, Mars, para. 13; v. Ungern-Sternberg in Gloy/Loschelder/Erdmann, § 25 para. 3; Glöckner in Hilty/HenningBodewig, Law Against Unfair Competition, p. 99. For English law, see Court of Appeal (Civil Division), L'Oréal v. Bellure, para. 139 (Jacob l.j.). For the chilling effect on freedom of expression caused by an overprotection against unfair competition, see Cottier/Sangeeta Khorana in Cottier/Pauwelyn/Bürgi Bonanomi, pp. 262 ff, 268 ff.

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Yarn,386 it is therefore appropriate to exercise studied restraint in the application of paragraph 2 of Article 10bis of the Paris Convention (1967), also in view of the unresolved democratic issues mentioned at the beginning.387 Secondly, recourse to it is foreclosed if an act should fall within the sphere of one of the legal examples, e.g. Article 39.2 of the trips Agreement, but does not meet its requirements.388 Otherwise, one would disregard the limiting function of the elements of that provision and undermine the value decision embodied therein.389 The legal examples in paragraph 3 of Article 10bis of the Paris Convention (1967) and Articles 22, 39 of the trips Agreement flesh out paragraph 2 of Article 10bis of the Paris Convention (1967).390 That is why their assessments reflect back on paragraph 2, forming a structural unity with it.391 Hence it is only consequent to align the unwritten cases of application of the doctrine of unfair competition with these provisions and thereby come to a coherent system.392 In fact the tenet of consistent treaty interpretation calls for a systematic interpretation in accordance with Article 31(1) and (2) of the Vienna Convention (‘context’), to the effect that the unwritten cases falling under paragraph 2 of Article 10bis of the Paris Convention (1967) must be comparable to the express ones in terms of their degree of wrongdoing.393 Having found that Article 10bis of the Paris Convention (1967) is fully incorporated in the trips Agreement, and that paragraph 2 thereof incarnates a general clause, we can now turn to the individual terms in that provision. B Act of Competition The term at issue combines ‘act’ with ‘competition’. It is possible to make some general propositions on either of the two words.

386 Appellate Body Report, us – Cotton Yarn, paras. 119 ff, confirmed in Appellate Body Report, us – Line Pipe, paras. 256 ff. See also Göttsche in Hilf/Oeter, § 5 para. 54. 387 See above p. 55. 388 See above p. 65. 389 See below p. 152. 390 Miosga, p. 110. 391 Henning-Bodewig, ‘Internationale Standards gegen unlauteren Wettbewerb’, p. 5. 392 Henning-Bodewig, ‘„Unlautere“ Geschäftspraktiken und der Bezug zu Art. 10bis pvü’, p. 1002. 393 Henning-Bodewig in Henning-Bodewig, International Handbook on Unfair Competition, § 2 para. 46; Herdegen, ‘Interpretation in International Law’ in mpepil, para. 12.

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1 Act ‘Act’ is the broadest possible term to describe human behaviour. According to the Oxford Dictionaries Online ‘act’ means ‘a thing done’,394 and according to the Merriam-Webster’s Online Dictionary ‘the doing of a thing’.395 It denotes any behaviour, including omissions.396 As a consequence, the term at issue is not confined to legal transactions. This broad understanding is due to the object of Article 10bis of the Paris Convention (1967) to prevent undesired behavioural patterns. Although Article 31(1) of the Vienna Convention provides that ‘[a] treaty shall be interpreted … in the light of its object and purpose’ (emphasis added), the wto adjudicating bodies relate this prescription to individual norms as well.397 Also, we can ascertain that the subject of examination is one particular act and, for example, not any antecedents. 2 Of Competition From the second part of the composite term ‘of competition’, it follows that only business behaviour is the yardstick for the doctrine of unfair competition.398 Hence acts for private purposes or (in case of an enterprise) internal acts with no impact on the competitive situation are ruled out.399 Relevant acts are directed at the promotion of the sales or procurement of products.400 There is a presumption that acts of an enterprise are for business purposes.401 394 Oxford Dictionaries Online, act (2015), noun No. 1 ­accessed 8 December 2015. 395 Merriam-Webster’s Online Dictionary, act (2015), noun No. 1 a accessed 8 December 2015. 396 Cf. wipo Model Provisions, para. 1.04. For European Union law, see Article 7 of the Unfair Commercial Practices Directive on misleading omissions. 397 Appellate Body Report, us – Shrimp, para. 116; Appellate Body Report, ec – Chicken Cuts, para. 238; Klabbers, ‘Treaties, Object and Purpose’ in mpepil, para. 20; van Damme, Treaty Interpretation by the wto Appellate Body, pp. 214 f. 398 Glöckner in Schulze/Zuleeg/Kadelbach, § 17 para. 4. 399 Henning-Bodewig in Henning-Bodewig, International Handbook on Unfair Competition, § 2 para. 38; Pflüger, p. 118; Cottier/Jevtic in Drexl et al., pp. 669, 674. For Swiss law, see Thouvenin, pp. 428 f; Pedrazzini/Pedrazzini, para. 1.13. For German law, see Bundesgerichtshof, Abgasemissionen, p. 12; Hasselblatt in Gloy/Loschelder/Erdmann, § 58 para. 42; Plaß in Ekey et al., § 3 uwg i para. 38. See also Glöckner, ‘Wettbewerbsbezogenes Verständnis der Unlauterkeit und Vorsprungserlangung durch Rechtsbruch’, pp. 966 f. 400 For German law, see Section 2(1) No. 1 of the German Act Against Unfair Competition; Schaffert in Heermann/Hirsch, § 4 Nr. 11 uwg para. 54; Götting, Wettbewerbsrecht, § 5 paras. 4, 9. For Spanish law, see Article 2(2) of the Spanish Unfair Competition Law. 401 For German law, see Köhler in Köhler/Bornkamm, § 4 para. 10.118.

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Moreover, the requirement of a competitive relationship can be deduced.402 This becomes apparent in particular from a comparison to Article 1(1)(a) of the wipo Model Provisions which abandons the requirement ‘of competition’.403 The deduction is buttressed by paragraph 3 of Article 10bis of the Paris Convention (1967) which speaks of ‘a competitor’ and ‘in the course of trade’, respectively.404 Two economic operators compete with one another when they do business in the same market,405 which generally means that they have the same customer or supplier base.406 However, a competitive relationship is also conceivable between traders that operate at different economic stages.407 It was already stated above that the person aggrieved by the act must be a national of another Member.408 Hereinafter, we will show that, in order to fulfil the requirement of a competitive relationship, it is necessary and sufficient when competitive opportunities of nationals of other Members are impaired.409 The question arises whether a competitive relationship must have existed before the committal of the act or whether it suffices that the act itself establishes the competitive relationship, such as an act that hampers the market access of foreigners. In China – Intellectual Property Rights, the panel observed: ‘Even if the measure at issue has had no actual impact on foreign works to date, it has a potential impact on works of wto Member nationals’.410 Likewise, the Appellate Body in ec – Bananas iii (Article 21.5 – us) was satisfied with a potential export interest of the United States in order to establish the

402 Pro Pflüger, pp. 127, 363; Drexl in Säcker/Rixecker/Oetker, IntLautR, para. 28; Glöckner, Europäisches Lauterkeitsrecht, p. 288; Höpperger/Senftleben in Hilty/Henning-Bodewig, Law Against Unfair Competition, p. 65; Reger, p. 319; Henning-Bodewig, ‘International Protection Against Unfair Competition’, pp. 177, 183, 188; Höfinghoff, p. 116. Contra de Vrey, p. 13 footnote 11; Logan, Part 2, p. 90. 403 Cf. wipo Model Provisions, para. 1.06; Henning-Bodewig in Henning-Bodewig, International Handbook on Unfair Competition, § 2 para. 75; Glöckner, Europäisches Lauterkeitsrecht, p. 288. 404 Pflüger, pp. 127, 142. 405 For European Union law, see European Court of Justice, Judgment, De Landtsheer Emmanuel, para. 28. For German law, see Ohly in Ohly/Sosnitza, § 4.9 para. 9/31. 406 De Carvalho, The trips Regime of Antitrust and Undisclosed Information, para. 39.1.13; Ladas, vol. iii, p. 1688. For German law, see Deutscher Bundestag [German Parliament], Drucksache 15/1487, p. 16 left col.; Götting, Wettbewerbsrecht, § 5 para. 20. 407 Ladas, vol. iii, p. 1689. 408 See above p. 53. 409 See below p. 78. For German law, see Götting, Wettbewerbsrecht, § 5 para. 29. 410 Panel Report, China – Intellectual Property Rights, para. 7.138 (emphasis added).

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­presumption of nullification or impairment under Article 3.8 of the dsu.411 In these two rulings, the wto adjudicating bodies said nothing other than that a potential competitive relationship is sufficient in wto law.412 So as to avoid inconsistencies, the same must apply to Article 10bis of the Paris Convention (1967). This finding is corroborated by a conclusion drawn by the gatt panel in us – Superfund, namely that a particular gatt provision ‘protects expectations on the competitive relationship between imported and domestic products’.413 The Superfund report, adopted in 1987, belongs to the gatt acquis and thus provides guidance for the interpretation of wto provisions pursuant to Article xvi:1 of the wto Agreement.414 As a result, it is not necessary for the aggrieved (natural or legal) person to have actually been engaged in competition with the actor at the time of review.415 That it could enter the respective market ‘at any time’ suffices.416 Otherwise, one would exclude acts of monopolists from the ambit of Article 10bis of the Paris Convention (1967) because they currently have, by definition, no competitors.417 Incidentally, a broad interpretation of the term ‘act of competition’ accords with the modern understanding of unfair competition law as market behaviour regulation.418 If a Member dispenses with the requirement of a competitive relationship in its unfair competition system such as Spain,419 this will not make its domestic law inconsistent with wto law, for the abandonment of a restrictive requirement will only extend the scope of application of the doctrine of unfair 411 Appellate Body Reports, ec – Bananas iii (Article 21.5 – Ecuador ii)/ec – Bananas iii (Article 21.5 – us), paras. 464 ff, 476. 412 Cf. Cottier/Jevtic in Drexl et al., p. 675. Similarly, for German law, Bundesgerichtshof, Lottoschein, pp. 8 f. 413 gatt Panel, us – Superfund, para. 5.1.9 (emphasis added). 414 Panel Report, us – fsc, para. 7.78, confirmed in Appellate Body Report, us – fsc, para. 115. See also Mavroidis, ‘No Outsourcing of Law?’, pp. 462 f; Panizzon, p. 358; van den Broek in Wolfrum/Stoll/Kaiser, Article xvi wto Agreement paras. 3, 5, 7. 415 Cf. Köhler in Köhler/Bornkamm, Einl para. 1.20. 416 Cf. Appellate Body Reports, ec – Bananas iii (Article 21.5 – Ecuador ii)/ec – Bananas iii (Article 21.5 – us), para. 469. For German law, see Bundesgerichtshof, Charterfluggesellschaften (1984) 86 Zeitschrift für Gewerblichen Rechtsschutz und Urheberrecht 823; Götting, Wettbewerbsrecht, § 5 para. 21. 417 Cottier/Jevtic in Drexl et al., p. 675; Henning-Bodewig, Unfair Competition Law, p. 1. 418 Cf. Hilty in Hilty/Henning-Bodewig, Law Against Unfair Competition, pp. 4 f, 8, 27, 47, 50 f; Micklitz in Heermann/Hirsch, eg D para. 15; Henning-Bodewig, Unfair Competition Law, p. 1. For German law, see Köhler in Köhler/Bornkamm, Einl para. 1.7. For Swiss and Austrian law, see Glöckner in Schulze/Zuleeg/Kadelbach, § 17 para. 3. 419 Article 3(2) of the Spanish Unfair Competition Law.

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competition.420 The second sentence of Article 1.1 of the trips Agreement explicitly allows the grant of ‘more extensive protection’.421 3 Detrimental Effect Above, we ascertained that in order to be an ‘act of competition’, the behaviour at issue must make an impact on competitive processes. In addition, some legal orders require the occurrence of damage.422 Paragraph 2 of Article 10bis of the Paris Convention (1967) is silent on this point. It is therefore questionable whether such a requirement is inherent in the concept ‘act of competition’, and if so, how to qualify it. Does the incorporation of Article 10bis of the Paris Convention (1967) into the trips Agreement imply that an act of competition must have a deterrent effect on cross-border trade? Considering the context, one might assume that to be pertinent, an act must have ramifications on international trade to the effect that it impinges on the foreign trade balance of the complainant. At this juncture, recourse to the de minimis rule (‘de minimis non curat lex’),423 which has been a legal maxim since Roman times and is deducible from the principle of proportionality,424 would not help because it only relates to the amount of detriment, but it does not make a point on whether ‘detriment’ is a relevant element of the norm in the first place. It is the other way around: once ‘detriment’ is established as an element of the norm, a de minimis hurdle may result from this requirement excluding petty acts from the scope of Article 10bis of the Paris Convention (1967).425 The issue of whether acts of competition must have a detrimental effect is preceded by the question as to the protected interests, which, in turn, depends upon the protective purpose of Article 10bis of the Paris Convention (1967). These points are interrelated.

420 Pflüger, p. 128; Pflüger in Hilty/Henning-Bodewig, Lauterkeitsrecht und Acquis Communautaire, p. 88. 421 Bender/Michaelis in Hilf/Oeter, § 22 para. 33; Correa, Trade Related Aspects of Intellectual Property Rights, pp. 24 f. 422 Cf. Article 5 of the Chinese Law Against Unfair Competition. 423 ‘The law does not concern itself with trifles’, cf. Westlaw, Black’s Law Dictionary Online, ‘de minimis non curat lex’; ‘the law does not take notice of minimal matters’, cf. Appellate Body Report, us – Carbon Steel, para. 77 footnote 74. 424 See, e.g., the second sentence of recital 6 of the Preamble to the Unfair Commercial Practices Directive. 425 Cf. de Vrey, p. 67. See below p. 114.

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(a) Purpose of Article 10bis of the Paris Convention (1967) The trips Agreement in general is directed at individual rights, cf. recital 4 of the Preamble to that Agreement (‘private rights’) and the first sentence of Article 1.3 thereof (‘nationals of other Members’). While Nos. 1 and 2 of Article 10bis(3) of the Paris Convention (1967) expressly protect ‘a competitor’, i.e. individual interests,426 No. 3 makes mention of ‘the public’, which, however, refers to the prospective purchaser.427 Although not specified explicitly in paragraph 2 of Article 10bis of the Paris Convention (1967), the requirement of a competitive relationship points towards the norm protecting competitors.428 This ties in with the personal scope of protection of that Article, cf. paragraph 1 thereof (‘to assure to nationals of such countries … protection’).429 The alignment of the doctrine of unfair competition with individual interests is due to its origin in tort law.430 From this, one can draw the conclusion that Article 10bis of the Paris Convention (1967) on the whole protects individual interests which, in light of the context, must be economic interests.431 On a related note, the protection of economic interests may involve the protection of other interests, such as worker protection.432 Besides, by protecting the public from misleading, No. 3 of paragraph 3 implicitly safeguards market transparency.433 The same is true of No. 1.434 Commensurate with its individual protective purpose, which incidentally is in line with the national systems of the Members,435 the protection under 426 Pflüger, p. 119; Pflüger in Hilty/Henning-Bodewig, Lauterkeitsrecht und Acquis Communautaire, p. 86; de Vrey, p. 45. 427 Pflüger, p. 145; Peter/Arend in Stoll/Busche/Arend, Article 22.2 para. 1; Schricker, p. 786. 428 Cf. Wadlow, The Law of Passing-off, para. 2–023; Drexl in Säcker/Rixecker/Oetker, Int LautR, para. 28; wipo, Protection Against Unfair Competition, para. 34. 429 See above p. 53. 430 See above p. 1 431 Henning-Bodewig, ‘Internationale Standards gegen unlauteren Wettbewerb’, p. 8; Henning-Bodewig, ‘Relevanz der Irreführung, uwg-Nachahmungsschutz und die Abgrenzung Lauterkeitsrecht/IP-Rechte’, p. 988; Glöckner, Europäisches Lauterkeitsrecht, p. 476. For instance, the first sentence of recital 6 of the Unfair Commercial Practices Directive only speaks of ‘economic interests’ of consumers and competitors. 432 See below p. 114. 433 Cf. wipo Intellectual Property Handbook, para. 5.145. 434 Ohly, ‘The Freedom of Imitation and Its Limits’, pp. 512 f; Kamperman Sanders in Bently/ Maniatis, p. 227. 435 Hilty in Hilty/Henning-Bodewig, Law Against Unfair Competition, p. 27; Glöckner, Europäisches Lauterkeitsrecht, p. 426. For German law, see the first sentence of Section 1 of the Act Against Unfair Competition; Lubberger in Gloy/Loschelder/Erdmann, § 45 para.

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­Article 10bis of the Paris Convention (1967) is only triggered when the identified acts impinge upon nationals of other Members. There is no legitimate interest in the prosecution of acts with no ramifications.436 Legal protection needs to be provided, and in view of the fact that a prohibition of unfair competition may even have counterproductive effects on competition, is only justified when the interests at stake are in danger of being impaired.437 In short, the individual protective purpose necessitates a detrimental effect. (b) Article 3.8 of the dsu Another argument in the same direction can be derived from Article 3.8 of the dsu, which reads as follows: In cases where there is an infringement of the obligations assumed under a covered agreement, the action is considered prima facie to constitute a case of nullification or impairment. This means that there is normally a presumption that a breach of the rules has an adverse impact on other Members parties to that covered agreement, and in such cases, it shall be up to the Member against whom the complaint has been brought to rebut the charge. The panel in China – Intellectual Property Rights clarified that the dsu is applicable to claims brought under the trips Agreement: The application of the rules and procedures of the dsu to the settlement of disputes under the trips Agreement is confirmed by Article 1.1 of the dsu, in conjunction with Appendix 1 of the dsu which lists the trips Agreement as a ‘covered agreement’.438 Before making any substantive deductions from Article 3.8 of the dsu, we must first expand upon this provision with a view to better understanding its meaning. According to Article 64.1 of the trips Agreement, the Article xxiii:1 of the gatt 1994, as elaborated and applied by Article 3.8 of the dsu, is applicable to violation complaints under the trips Agreement. Starting from the text, a violation complaint consists of two components: the unjustifiable infringement 11; Micklitz in Heermann/Hirsch, eg D para. 30. For Peruvian law, see Article 7.2 of the Law on Suppression of Unfair Competition. 436 For German law, see Köhler in Köhler/Bornkamm, § 3 para. 114. 437 See above p. 72. For German law, see Köhler in Köhler/Bornkamm, § 3 para. 114. 438 Panel Report, China – Intellectual Property Rights, para. 7.500.

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of a wto obligation and, as a result, the nullification or impairment of other Members’ benefits under the covered agreements. With this in mind, the panel in Guatemala – Cement ii stated that ‘we will address the issue of nullification or impairment after we have considered whether Guatemala has acted consistently with its obligations …’.439 Although a finding that the presence of a detriment is a constituent of an ‘act of competition’ would be an element of the infringement, Article 3.8 of the dsu may, nonetheless, provide some assistance to the interpretative task before us because wto rules interact.440 Fitzmaurice points out that ‘treaties are to be interpreted as a whole’.441 In light of legal unity and coherence, this also applies to the wto Agreement plus Annexes, cf. Article ii:2 of the wto Agreement (‘integral parts of this Agreement’).442 Read together, the two sentences of Article 3.8 of the dsu imply that the measure at issue must have an adverse impact on other Members. If the respondent is able to prove that the infringement of its wto obligations did not have an adverse impact, it will win the dispute.443 The existence of an adverse impact is consequently a precondition. This hurdle, however, is set low. In ec – Bananas iii (Article 21.5 – us) the Appellate Body made it clear that the impairment of a potential export interest is sufficient.444 The rationale for this can be found in the panel report: ‘wto rules are not concerned with actual trade, but rather with competitive opportunities’.445 They do not protect trade flows.446 With respect to the opening question, the panel held that ‘there is not a requirement to show actual trade effects’.447 Although the decision concerned gatt rules, the aforementioned quote holds true for wto rules in general. As a side note, the control of market structures belongs to the area of anti-trust law, cf. Article 40.1 of the trips Agreement (‘adverse effects on trade’).448 439 440 441 442

443 444 445 446 447 448

Panel Report, Guatemala – Cement ii, para. 8.25. Lennard, p. 25. Fitzmaurice/Merkouris in Fitzmaurice/Elias/Merkouris, p. 155. Marceau in Sacerdoti/Yanovich/Bohanes, p. 340; Hedley in Degeling/Edelman, p. 102; Niemann, p. 367; Wolfgang Weiss, p. 205. See also Appellate Body Report, Argentina – F­ ootwear (ec), para. 81. Gazzini, p. 741. Appellate Body Reports, ec – Bananas iii (Article 21.5 – Ecuador ii)/ec – Bananas iii (Article 21.5 – us), paras. 469, 476. See also Gazzini, pp. 734 f. Panel Report, ec – Bananas iii (Article 21.5 – us), para. 8.7 (quoting Panel Reports, ec – Bananas iii (Ecuador)/(us), para. 7.50) (emphasis added). Panel Report, Argentina – Hides and Leather, para. 11.20; Appellate Body Report, Japan – Alcoholic Beverages ii, p. 16; Appellate Body Report, Korea – Alcoholic Beverages, para. 119. Panel Reports, ec – Bananas iii (Ecuador)/(us), para. 7.50. See above p. 1.

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Since a potential export interest is almost always conceivable, it is fair to say that an infringement of wto law is tantamount to an impairment of benefits. This elucidates why no responding Member, bearing the burden of proof in this respect pursuant to Article 3.8,449 ever succeeded in rebutting the presumption.450 Thus, in practice, the presumption in Article 3.8 of the dsu has virtually become an automatism451 or, in the language of a gatt Panel, ‘an irrefutable presumption’.452 Accordingly, the Appellate Body rejected453 the attempt of the European Communities in ec – Bananas iii to ‘rebut the presumption of nullification or impairment … on the basis that the United States has never exported a single banana to the European Community, and therefore, could not possibly suffer any trade damage’.454 It should be noted, however, that this presumption is true only in one direction: it would be erroneous to conclude an infringement from the nullification or impairment of benefits, as the existence of non-violation complaints under Article xxiii:1(b) of the gatt 1994 shows.455 What follows from the foregoing for our case? I submit that the automatic effect of the presumption that failure to assure effective protection against unfair competition causes nullification or impairment is only justifiable if the capacity to bring about such a result can be ascribed to acts of unfair competition. In other words, they must have the potential to hinder nationals of other Members from realizing their competitive opportunities.456 The actual adverse impact may often occur only after some time.457 This finding is borne out by paragraph 3 of Article 10bis of the Paris Convention (1967) whose No. 3, for 449 Appellate Body Reports, ec – Bananas iii (Article 21.5 – Ecuador ii)/ec – Bananas iii (Article 21.5 – us), para. 468; Panel Report, Argentina – Ceramic Tiles, para. 6.105. 450 wto, Legal basis for a dispute (2015) Dispute Settlement System Training Module, Ch. 4 accessed 8 December 2015; wto, Understanding on Rules and Procedures Governing the Settlement of Disputes (2015) wto Analytical Index, Article 3.8 paras. 90 ff accessed 8 December 2015. 451 unctad-ictsd Resource Book, pp. 666 f. Contra Gazzini, p. 733. 452 gatt Panel, us – Superfund, para. 5.1.7. 453 Appellate Body Reports, ec – Bananas iii (Article 21.5 – Ecuador ii)/ec – Bananas iii (Article 21.5 – us), para. 469. 454 Appellate Body Report, ec – Bananas iii, para. 250. 455 Appellate Body Report, us – Wool Shirts and Blouses, p. 13. Actual recourse to non-violation complaints has been barred under the trips Agreement, see below p. 95. 456 For German law, see Köhler in Köhler/Bornkamm, § 4 para. 10.6. For Peruvian law, see Articles 1, 7.2 of the Law on Suppression of Unfair Competition. 457 Cf. Köhler in Köhler/Bornkamm, § 3 para. 116.

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instance, is satisfied with the liability to mislead.458 In particular, the Spanish text version evidences that no damage is required, but that the capacity of the act to cause a detrimental effect suffices. It reads, in relevant parts, as follows: 1. 2. 3.

cualquier acto capaz de crear una confusión …; las aseveraciones falsas … capaces de desacreditar …; las indicaciones o aseveraciones cuyo empleo … pudieren inducir al público a error … (emphasis added)

The panel in ec – Asbestos pointed out that ‘[a]s the wto Agreement is a treaty with authentic texts in three languages, it is also important to bear in mind the spirit underlying the provisions of Article 33 [of the Vienna Convention]’.459 It may be true that Article 29(1)(c) of the Paris Convention stipulates that ‘the French text shall prevail’,460 but this does not apply to Article 10bis of the Paris Convention (1967), as incorporated into the trips Agreement, for which the authenticating clause in the wto Agreement is authoritative. Naturally, Article 2.1 of the trips Agreement does not include Article 29 of the Paris Convention (1967),461 with the consequence that the French and Spanish version, ‘­together with the English version, are equally authentic’.462 Even so, it is legitimate to highlight the Spanish text here. Similarly, the Appellate Body resorted in ec – Tariff Preferences to the Spanish and French versions to confirm a finding because of ‘the stronger, more obligatory language’ contained therein.463 It can be inferred from the panel report in Turkey – Textiles that the crucial question is not whether the aggrieved competitor can still export to the same extent as it did before the committal of the act, but whether it exports now (at the time of review) to the same extent as it could do without the committal of the act.464 There, the panel stated verbatim:

458 Cf. Pflüger, p. 145; Correa, Trade Related Aspects of Intellectual Property Rights, p. 229. For No. 1, see Cottier/Germann in Takagi/Allman/Sinjela, p. 144. 459 Panel Report, ec – Asbestos, para. 8.29. 460 Cf. Wadlow, The Law of Passing-off, para. 2–016. 461 Brand in Stoll/Busche/Arend, Article 2 para. 13. 462 Appellate Body Report, ec – Asbestos, para. 91. 463 Appellate Body Report, ec – Tariff Preferences, para. 147. See also Mavroidis, ‘No Outsourcing of Law?’, p. 446. 464 Gazzini, p. 734; wto, The process – Stages in a typical wto dispute settlement case (2015) Dispute Settlement System Training Module, Ch. 6 accessed 8 December 2015. Critically, Spamann, pp. 45 ff.

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even if Turkey were to demonstrate that India’s overall exports of clothing and textile products to Turkey have increased from their levels of ­previous years, is would not be sufficient to rebut the presumption of nullification and impairment caused by the existence of wto incompatible import restrictions. Rather, at minimum, the question is whether exports have been what they would otherwise have been, were there no wto incompatible quantitative restrictions against imports from India.465 This ties in with Article 3.4 of the Agreement on Implementation of Article vi of the General Agreement on Tariffs and Trade 1994 (the ‘Anti-Dumping Agreement’) which includes in the ‘examination of the impact of the dumped imports on the domestic industry concerned … an evaluation of all relevant economic factors and indices having a bearing on the state of the industry, including actual and potential decline in sales, profits, output, market share, productivity, return on investments, or utilization of capacity’ (emphasis added). (c) Result An act of competition within the meaning of paragraph 2 of Article 10bis of the Paris Convention (1967) presupposes the capacity to impair competitive opportunities of nationals of other Members. Although this requirement is not stipulated explicitly, it results from the following considerations: First, acts of competition are not prohibited for prohibition’s sake.466 In view of the individual protective purpose of Article 10bis of the Paris Convention (1967), there is no legitimate interest in legal protection if the act in question has no impact on others, and is consequently insignificant. Second, to justify the presumption in Article 3.8 of the dsu, the act must be liable to impair competitive opportunities of nationals of other Members. The liability is sufficient, as a comparison with paragraph 3 of Article 10bis of the Paris Convention (1967) elucidates. Third, mindful that the prohibition of unfair competition can also hinder trade between Members,467 such a requirement limits excessive prohibitions on the basis of paragraph 2 of Article 10bis of the Paris Convention (1967). What shall be protected is competitive opportunities. An impairment will be regularly given when the act in dispute is directed against a foreign trader and is likely to influence its market behaviour, whereby it is sufficient for a 465 Panel Report, Turkey – Textiles, para. 9.204. See also Decision by the Arbitrator, us – Gambling (Article 22.6 – us), para. 3.25. 466 For German law, see Köhler in Köhler/Bornkamm, § 3 para. 114. 467 See above p. 72.

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complainant to make a prima facie case.468 The actual level of potential export losses is then a matter for Article 22.6 arbitration.469 The Appellate Body in ec – Bananas iii (Article 21.5 – us) affirmed that the question whether nullification or impairment exists within the meaning of Article 3.8 of the dsu, and the question of what level of suspension of concessions is equivalent to the level of nullification or impairment under Article 22.6, are distinct.470 As a rule, market players seek their advantage. That said, because the impairment of competitive opportunities suffices, the actor need not gain an actual competitive advantage over its rivals.471 Besides, a gain of this sort would not necessarily imply the impairment of competitive opportunities of others (e.g. in the case of a growing market).472 It is therefore immaterial for Article 10bis of the Paris Convention (1967) whether the actor actually improved its competitive situation and, for example, enlarged its customer base. What matters is the effect of the act at issue on other market participants.473 It follows that the perspective of the aggrieved person is decisive.474 This conclusion corresponds with the above-mentioned individual protective purpose of Article 10bis of the Paris Convention (1967).475 Furthermore, the impairment of competitive opportunities of one national of another Member is enough. It would not be appropriate to make its protection contingent upon the finding that others are affected in the same way.476

468 According to the Appellate Body, ‘a prima facie case is one which, in the absence of effective refutation by the defending party, requires a panel, as a matter of law, to rule in favour of the complaining party presenting the prima facie case’, cf. Appellate Body Report, ec – Hormones, para. 104; Appellate Body Report, us – Continued Zeroing, para. 331. 469 Babu, p. 150. 470 Appellate Body Reports, ec – Bananas iii (Article 21.5 – Ecuador ii)/ec – Bananas iii (Article 21.5 – us), para. 475. 471 For German law, see Köhler in Köhler/Bornkamm, § 4 para. 11.56. 472 Cf. Köhler in Köhler/Bornkamm, Einl para. 1.6. 473 Henning-Bodewig, Unfair Competition Law, pp. 9 f. 474 Cf. Pflüger in Cottier/Véron, Paris Convention, art. 10bis, p. 299. For Article 10bis(3) No. 3 of the Paris Convention (1967), see wipo, Protection Against Unfair Competition, para. 71; Pflüger in Cottier/Véron, Paris Convention, art. 10bis, p. 304. 475 See above p. 79. 476 For German law, see Köhler in Köhler/Bornkamm, § 3 para. 131.

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4 Causality In accordance with general principles, there must be a causal link between the act, on the one hand, and the impaired competitive opportunities of a national of another Member, on the other hand. One can derive this requirement from Argentina – Hides and Leather and ec – Poultry. In the first-mentioned report, the panel stated with regard to Article xi:1 of gatt 1994: Even if it emerges from trade statistics that the level of exports is unusually low, this does not prove, in and of itself, that that level is attributable, in whole or in part, to the measure alleged to constitute an export restriction. Particularly in the context of an alleged de facto restriction and where, as here, there are possibly multiple restrictions, it is necessary for a complaining party to establish a causal link between the contested measure and the low level of exports. In our view, whatever else it may involve, a demonstration of causation must consist of a persuasive explanation of precisely how the measure at issue causes or contributes to the low level of exports.477 (footnotes omitted) The panel justified this finding by referring to the ec – Poultry case where the Appellate Body required ‘a causal relationship between imposition of the ec licensing procedure and the claimed trade distortion’,478 and argued: ‘While this interpretation related to a claim under the Agreement on Import Licensing Procedures, it is not apparent why the logic should be any different in the case of a claim under Article xi:1 of the gatt 1994’.479 I cannot see any reason why the same logic should not apply to a claim under Article 2.1 of the trips Agreement in conjunction with Article 10bis of the Paris Convention (1967). 5 Conclusion ‘Act of competition’ within the meaning of paragraph 2 of Article 10bis of the Paris Convention (1967), as incorporated into the wto system, is any behaviour of an economic operator which impairs, actually or potentially, competitive opportunities of a national of another Member. Examples are acts that impair sales or procurement opportunities of nationals of other Members. 477 Panel Report, Argentina – Hides and Leather, para. 11.21. 478 Appellate Body Report, ec – Poultry, para. 127. 479 Panel Report, Argentina – Hides and Leather, para. 11.21 footnote 339.

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C Practices in Industrial or Commercial Matters The expression ‘industrial or commercial matters’ marks out the material scope of application of Article 10bis of the Paris Convention (1967). We found above that, by virtue of its incorporation into the trips Agreement, the ‘context for the purpose of the interpretation’ of this Article within the meaning of Article 31 of the Vienna Convention is decisively determined by world trade law.480 A corollary of this is that ‘industrial or commercial matters’ reference cross-border trade. ‘Practices in industrial or commercial matters’ are consequently those ‘established in international trade’.481 National practices not shared by a majority of Members (and therefore not deducible by means of the comparative law method as ‘established’ in the wto community) cannot ensure the required uniformity of a minimum standard.482 That said, according to the second sentence of Article 1.1 of the trips Agreement, Members are not precluded from implementing ‘more extensive protection’ against unfair competition based on purely national practices. The term ‘practice’ is defined in the Merriam-Webster’s Online Dictionary as ‘a repeated or customary action’ and ‘the usual way of doing something’,483 and in the Oxford Dictionaries Online as ‘the customary, habitual, or expected procedure or way of doing of something’.484 It thus denotes mainstream behaviour; a single act cannot establish a practice.485 What a practice is in concreto arises from relevant business circles.486 It goes without saying that practices differ depending on the economic sector.487 Since a majority can also behave in a way detrimental to competition as a whole, the word ‘honest’ was added

480 See above p. 49. 481 Cf. Brand in Stoll/Busche/Arend, Article 2 para. 109; Henning-Bodewig in Hilty/HenningBodewig, Law Against Unfair Competition, p. 57; Micklitz, pp. 467 f; Bodenhausen, p. 144. 482 See above p. 59. 483 Merriam-Webster’s Online Dictionary, practice (2015), noun No. 1 b, c accessed 8 December 2015. 484 Oxford Dictionaries Online, practice (2015), noun No. 2 accessed 8 December 2015. 485 Wadlow, The Law of Passing-off, para. 2–025; Pflüger in Hilty/Henning-Bodewig, Lauterkeitsrecht und Acquis Communautaire, p. 77. For European Union law, see Glöckner, ‘The Scope of Application of the ucp Directive’, p. 588. 486 Wadlow, The Law of Passing-off, para. 2–030; Schricker in Großfeld et al., p. 991. 487 Henning-Bodewig, ‘„Unlautere“ Geschäftspraktiken und der Bezug zu Art. 10bis pvü’, p. 1005; Pflüger, pp. 130 f; Pflüger in Hilty/Henning-Bodewig, Lauterkeitsrecht und Acquis Communautaire, pp. 77 f.

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so as to indicate that customary (but dishonest) acts can be prohibited.488 From this it follows that an application of Article 10bis of the Paris Convention (1967) to practices regulated, e.g., in the Consolidated icc Code of Advertising and Marketing Communication Practice489 is not ruled out.490 Importantly, such codes are not legally binding, nor do they take account of all interests at stake.491 Moreover, unconventional competitive behaviours such as new marketing strategies must be allowed.492 Otherwise, Article 10bis of the Paris Convention (1967) would, contrary to its purpose,493 limit the dynamics of competition.494 As stated above, this Article is directed at market behaviour control;495 to fossilize the traditional ways of doing business is not intended.496 Given that its scope is not restricted in terms of business sectors, Article 10bis of the Paris Convention (1967) applies to new business sectors, too, where no customs or conventions have materialized yet. This leads to the conclusion that conventionality was not imposed as a legal norm by virtue of Article 10bis of the Paris Convention (1967).497 What seems clear is that ‘honest’ is the central term on which we will focus our efforts next. D Honesty Standard Competition is generally defined as the striving of various economic operators for the same goal.498 This involves, as a rule, economic operators seeking to promote their own sales and procurement.499 Commonly, this will go at 488 Pflüger, p. 131; Wadlow, The Law of Passing-off, para. 2–025; Henning-Bodewig in Hilty/ Henning-Bodewig, Law Against Unfair Competition, p. 57; Henning-Bodewig, Unfair Competition Law, p. 9. 489 icc, Codes Centre for Advertising & Marketing (2011) accessed 8 December 2015. 490 Cf. Wadlow, The Law of Passing-off, para. 2–025. 491 Pflüger, pp. 92 f; Micklitz, p. 478. See below p. 199. 492 For German law, see Köhler in Köhler/Bornkamm, § 4 para. 12.12. 493 See above p. 1. 494 For German law, see Bundesgerichtshof, Probeabonnement, para. 19; Bundesgerichtshof, Motorboot-Fachzeitschrift (1991) 93 Zeitschrift für Gewerblichen Rechtsschutz und Urheberrecht 616, 617. 495 See above p. 22. 496 For German law, see Köhler in Köhler/Bornkamm, § 4 paras. 12.5, 12.12. 497 For German law, see Bundesgerichtshof, Probeabonnement, para. 19. 498 Götting, Wettbewerbsrecht, § 1 para. 1. For the different conceptions of competition, see Leistner in Gloy/Loschelder/Erdmann, § 4 paras. 2 ff. 499 For German law, see Köhler in Köhler/Bornkamm, Einl paras. 1.1, 1.5. For English law, see United Kingdom House of Lords, Douglas v. Hello!, para. 142 (Lord Nicholls).

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the e­ xpense of others.500 In this way, competition fulfils a selection function, which leads in the long run to lower prices and better quality of products.501 Hence, depriving another competitor of a competitive advantage, even driving it out of the market, is inherent in competition and cannot be objected to per se.502 By implication, intentions to that effect cannot be material.503 This does not imply, however, that there are no limits as to the means employed by economic operators.504 It just follows that from the effect or intention of an act alone, it cannot be inferred whether the act is ‘contrary to honest practices’. The loss of competitive advantages merely indicates that the act at issue had an adverse effect, which may make it an act of competition but not yet an act of unfair competition.505 Similarly, a change in a competitive relationship is only treated ipso facto as ‘a case of nullification or impairment’ of benefits within the meaning of Article 3.8 of the dsu if the change is contrary to wto rules.506 The word ‘honest’ itself, defined by the Oxford English Dictionary Online as meaning ‘[g]ained or earned by fair means, without cheating or stealing’,507 suggests that it is the admissibility of the means employed that is determinative.508 On balance, an overall assessment of the behaviour in dispute is necessary with respect to effect (in order to answer the question whether an act of competition is given) and means (in order to answer the question whether the act at issue is dishonest).509 Precisely which means are prohibited depends on the construction of the key term ‘honest’. We will expound on its meaning hereinafter. 500 For German law, see Götting, Wettbewerbsrecht, § 12 para. 2. For English law, see United Kingdom House of Lords, Douglas v. Hello!, para. 142 (Lord Nicholls). For an exception, see p. 85. 501 Hilty in Hilty/Henning-Bodewig, Law Against Unfair Competition, p. 29; de Vrey, p. 1; Götting, Wettbewerbsrecht, § 2 paras. 7 f. See above p. 1. 502 Ladas, vol. iii, p. 1689. For German law, see Köhler in Köhler/Bornkamm, § 4 paras. 10.186, 12.12; Hasselblatt in Gloy/Loschelder/Erdmann, § 57 paras. 1 f, 4 f. 503 See below p. 104. 504 For English law, see United Kingdom House of Lords, Douglas v. Hello!, para. 143 (Lord Nicholls). 505 For German law, see Hasselblatt in Gloy/Loschelder/Erdmann, § 57 para. 5. 506 gatt Panel, us – Superfund, para. 5.1.9. 507 Oxford English Dictionary Online, honest (2013), a. No. 4. b. accessed 8 December 2015. 508 Ladas, vol. iii, p. 1689. 509 For European Union law, see the last sentence of recital 7 of the Unfair Commercial Practices Directive. For German law, see Bundesgerichtshof, Verbandsklage gegen V ­ ielfachabmahner, p. 12; Götting, Wettbewerbsrecht, § 6 para. 20.

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1 Recourse to Other Provisions At the outset, the question arises as to whether a treaty interpreter might not simply have recourse to footnote 10 to Article 39.2 of the trips Agreement or the wipo Model Provisions. The footnote reads as follows: For the purpose of this provision, ‘a manner contrary to honest commercial practices’ shall mean at least practices such as breach of contract, breach of confidence and inducement to breach, and includes the acquisition of undisclosed information by third parties who knew, or were grossly negligent in failing to know, that such practices were involved in the acquisition. Brand wants to apply this legal definition directly to paragraph 2 of Article 10bis of the Paris Convention (1967).510 However, this would disregard the introductory wording explicitly confining the scope of footnote 10 to Article 39.2 of the trips Agreement, thereby ruling out a recourse. As for the wipo Model Provisions which contain in Articles 2 through 6 recommendations as to the construction of Article 10bis of the Paris Convention (1967), it suffices to call to mind here that they are not legally binding.511 It follows that the solution is not entirely straightforward. Once more, Article 31(1) of the Vienna Convention has to lead the way. Relating to this, the Appellate Body made clear in us – Shrimp: A treaty interpreter must begin with, and focus upon, the text of the particular provision to be interpreted. It is in the words constituting that provision, read in their context, that the object and purpose of the states parties to the treaty must first be sought.512 The emphasis on the text aims to foster the predictability and legitimacy of the dispute settlement system.513 2 Ordinary Meaning Since there is no consensus on the exact meaning of ‘honest’, save that it is dishonest to create confusion, to discredit and to mislead,514 it is not possible 510 511 512 513

Brand in Stoll/Busche/Arend, Article 2 para. 109. Drexl in Säcker/Rixecker/Oetker, IntLautR, para. 34; Asland, pp. 7 f. See above p. 22. Appellate Body Report, us – Shrimp, para. 114. See also Villiger, Article 31 paras. 9, 30. Cf. the first sentence of Article 3.2 of the dsu. See also Mitchell, ‘The Legal Basis for Using Principles in wto Disputes’, p. 795. Shaffer/Trachtman, pp. 116 f, add welfare and participation considerations. 514 See paragraph 3 of Article 10bis of the Paris Convention (1967).

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to simply subsume under this elusive term.515 The word stems from honour and is, in principle, a moral term.516 At the same time, it is a legal concept.517 As epitomized by human rights,518 it is not unusual in international law that a legal concept has a moral foundation. Pursuant to the Merriam-Webster’s Online Thesaurus, ‘honest’ means, inter alia, ‘conforming to a high standard of morality or virtue’, ‘following the accepted rules of moral conduct’, ‘free from any intent to deceive or impress others’, or ‘guided by or in accordance with one’s sense of right and wrong’.519 The French version applying the words ‘usages honnêtes’ reinforces this impression of a moral underpinning of ‘honest’, given that the Larousse dictionary equates ‘honnête’ with ‘[c]onforme aux règles de la morale et de la probité’.520 Accordingly, it is fair to assume that ‘honest practices’ conceptualizes public morals for industrial or commercial matters. (a) Standard of Right and Wrong Conduct The panel report in us – Gambling defines ‘public morals’ in Article xiv(a) of the gats as ‘standards of right and wrong conduct’,521 a conclusion upheld by the Appellate Body.522 The concepts of ‘honest practices’ and ‘public morals’ appear to be congruent in so far as both concepts relate to cultural and societal convictions.523 This explains why both are so difficult to grasp. But their congruence is a starting point. From the discussion so far we can deduce that the phrase ‘honest practices in industrial or commercial matters’ denotes standards of right and wrong competitive conduct. This is reminiscent of the principle of equity, as employed in investment treaties, to wit: ‘fair and equitable standards of treatment

515 Miosga, p. 109. 516 Beater, Unlauterer Wettbewerb, § 4 para. 365; Ladas, vol. iii, p. 1685. For the etymology, see Merriam-Webster’s Online Dictionary, honest (2015), Origin of HONEST accessed 8 December 2015. 517 See above p. 59. See also Henning-Bodewig, ‘International Protection Against Unfair Competition’, p. 177. 518 Cf. Habermas in Deflem, pp. 141 f. 519 Merriam-Webster’s Online Thesaurus, honest (2015), adjective Nos. 2–4, 6 accessed 8 December 2015. 520 Larousse dictionary, honnête, last bullet point accessed 8 December 2015. 521 Panel Report, us – Gambling, para. 6.465. 522 Appellate Body Report, us – Gambling, paras. 296 ff. 523 See above p. 22.

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of foreign economic interest’.524 One must bear in mind, however, that, firstly, investment law governs the relationships between foreign investors and host states (whereas unfair competition law governs private-law relationships),525 and secondly, that the majority of arbitral awards limits these ‘fair and equitable treatment’ standards to due process and due diligence obligations of the host state.526 Notably, Article 5(2)(a) of the Unfair Commercial Practices Directive defines a contradiction ‘to the requirements of professional diligence’ as one element of an unfair commercial practice.527 We will verify in the following whether ‘contrary to honest practices’ is tantamount to ‘contrary to equitable treatment’, but before coming to that, we need to tackle another aspect of the us – Gambling ruling. In order to flesh out the concept of ‘public morals’, the panel referred to national parameters: decisive shall be the ‘conduct maintained by or on behalf of a community or nation’.528 This was upheld by the Appellate Body.529 In support of its conclusion, the panel gave the following reasons: Members, in applying similar societal concepts, have the right to determine the level of protection that they consider appropriate. … More particularly, Members should be given some scope to define and apply for themselves the concepts of ‘public morals’ and ‘public order’ in their respective territories, according to their own systems and scales of values.530 (footnote omitted) The panel, however, did not stop at this point but went on to carry out a comparison of laws.531 By and large, this corresponds with the approach taken under the Paris regime with respect to ‘honest practices’.532 Above, we could demonstrate that the minimum standard requirement includes paragraph 2 of Article 10bis of the Paris Convention (1967).533 This 524 Francioni, ‘Equity in International Law’ in mpepil, para. 21; unctad, Fair and Equitable Treatment (2012), pp. 5 ff; Yannaca-Small, pp. 5 ff. 525 Yannaca-Small, p. 2. 526 icsid Award, Asian Agricultural Products v. Sri Lanka, para. 69; Boyle/Chinkin, p. 300; Yannaca-Small, p. 40. See also Vadi, pp. 844 ff. 527 See below p. 95. 528 Panel Report, us – Gambling, para. 6.465 (emphasis added). 529 Appellate Body Report, us – Gambling, paras. 296 ff. 530 Panel Report, us – Gambling, para. 6.461. See also Diebold, pp. 51 ff, 67, 74. 531 Panel Report, us – Gambling, paras. 6.471, 6.473 footnote 914. See also Wu, pp. 232 f; Marwell, p. 817. 532 See above p. 58. See also Correa, ‘Unfair Competition Under the trips Agreement’, p. 77. 533 See above p. 63.

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is where the present case distinguishes itself from the exceptions in Articles xiv(a) of the gats and xx(a) of the gatt 1994: a minimum standard is mandatory,534 whereas exception provisions are designed with a view to facilitating national policies.535 Although the Members have significant regulatory autonomy when it comes to the implementation of the trips Agreement,536 a mandatory minimum standard calls for a uniform interpretation as far as its remit goes.537 (b) Good Faith In light of the title of Article 10bis of the Paris Convention (1967) (‘Unfair Competition’), ‘honest’ may be equated with ‘fair’.538 In China – Raw Materials, the Appellate Body stressed the importance of the title for the interpretation of a provision.539 That finding is corroborated by the dictionary meaning of ‘fair’. The Merriam-Webster’s Online Dictionary, for instance, defines this term as meaning ‘marked by impartiality and honesty’ and ‘conforming with the established rules’.540 Remarkably, this is synonymous with the dictionary meaning of ‘equitable’, which according to the Oxford Dictionaries Online signifies ‘fair and impartial’.541 Hence the dictionaries suggest a correlation between ‘honest’, ‘fair’, and ‘equitable’.542 Equity and good faith are interrelated in the sense that both principles are aimed at coordinating conflicting interests.543 In the present case, a balance has to be struck between the interest in pursuing an economic activity and the interest in remaining unaffected by an improper activity.544 The panel in us – Offset Act (Byrd Amendment) described ‘the principle of good faith as a general rule of conduct in international relations’,545 and the Colombian delegate Ypes

534 535 536 537 538 539 540 541 542 543 544 545

See above p. 59. Diebold, p. 54. Article 1.1, third sentence, of the trips Agreement. See above p. 59. For the title of a norm as contextual element, see Gardiner, Treaty Interpretation, pp. 200 ff. Appellate Body Report, China – Raw Materials, para. 320. Merriam-Webster’s Online Dictionary, fair (2015), adjective No. 6 a and b accessed 8 December 2015. Oxford Dictionaries Online, equitable (2015), adjective No. 1 accessed 8 December 2015. See also Kamperman Sanders, Unfair Competition Law, p. 8. Kotzur, ‘Good Faith (Bona fide)’ in mpepil, paras. 7, 22 f; Francioni, ‘Equity in International Law’ in mpepil, para. 26; Göttsche in Hilf/Oeter, § 5 para. 70. For German law, see Gloy/Loschelder/Erdmann, § 4 para. 39, § 23 para. 16. Panel Report, us – Offset Act (Byrd Amendment), para. 7.64.

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at the un Charter Conference in San Francisco ‘as a normative principle of conduct for peoples’.546 Since good faith, interchangeably called bona fides,547 does not only apply to states,548 but also to private actors,549 one can view paragraph 2 of Article 10bis of the Paris Convention (1967) – following the Appellate Body’s reasoning with respect to paragraph 2 of Annex ii of the Anti-Dumping Agreement – as an expression of the general principle of good faith, which is, at once, a general principle of law and a principle of general international law, that informs the provisions of the … covered agreements.550 (footnote omitted) This is borne out by the Larousse dictionary meaning according to which somebody is ‘honnête’ that is ‘de bonne foi’.551 Conversely, a ‘dishonest act’ denotes ‘[c]onduct involving bad faith’ pursuant to the Black’s Law Dictionary Online.552 The Oxford Dictionaries Online defines ‘good faith’ as meaning ‘honesty or sincerity of intention’,553 and more specifically, the us Uniform Commercial Code defines it as ‘honesty in fact and the observance of reasonable commercial standards of fair dealing’.554 Incidentally, European Union,555 German,556 Swiss,557 Spanish,558 Chilean,559 Peruvian560 and Mexican561 law accord with this reading. 546 Kotzur, ‘Good Faith (Bona fide)’ in mpepil, para. 7, quoting the Documents of the United Nations Conference on International Organization, vol. 6, Doc. 1123 I/8, p. 8. 547 Mitchell, ‘Good Faith in wto Dispute Settlement’, p. 340. 548 Cf. Article 26 in conjunction with Article 2(1)(g) of the Vienna Convention. 549 Panizzon, p. 124; Kotzur, ‘Good Faith (Bona fide)’ in mpepil, paras. 25 f. 550 Appellate Body Report, us – Hot-Rolled Steel, para. 101. See also Kotzur, ‘Good Faith (Bona fide)’ in mpepil, paras. 3, 20; Kamperman Sanders, Unfair Competition Law, p. 88. 551 Larousse dictionary, honnête, third bullet point accessed 8 December 2015. 552 Westlaw, Black’s Law Dictionary Online, ‘fraudulent act’. 553 Oxford Dictionaries Online, good faith (2015) accessed 8 December 2015. 554 § 1-201(b)(20) of the us Uniform Commercial Code. 555 Article 5(2)(a), read in conjunction with Article 2(h), of the Unfair Commercial Practices Directive. 556 Section 3(2), read in conjunction with Article 2(1) No. 7, of the German Act Against Unfair Competition. 557 Article 2 of the Swiss Act Against Unfair Competition. 558 Article 4(1) of the Spanish Unfair Competition Law. 559 Article 3 of the Chilean Law No. 20.169. 560 Article 6.2 of the Peruvian Law on Suppression of Unfair Competition. 561 Article 213(i) of the Mexican Law on Industrial Property; Sánchez Pichardo, p. 202.

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The openness to good faith considerations is already embedded in the general provisions of the trips Agreement, viz. Article 7 (‘a balance of rights and obligations’), interpreted by the panel in us – Section 211 Appropriations Act ‘to be a form of the good faith principle’.562 Following this, Article 10bis of the Paris Convention (1967), as incorporated into the trips Agreement, embodies good faith for ‘industrial or commercial matters’.563 Corresponding to other areas, good faith creates trust in competitive relationships by preventing obligations from being circumvented564 and rights from being abused.565 At the same time, it facilitates the ‘gap-filling function’ of the doctrine of unfair competition with regard to intellectual property law.566 As a result, we can state – analogous to the Appellate Body in us – Hot-Rolled Steel: The word ‘honest’, which qualifies the word ‘practices’, indicates essentially that the ‘practices’ must conform to the dictates of the basic principles of good faith and fundamental fairness.567 (c) Protection of Legitimate Expectations In the foregoing, the connection between the principle of good faith and honest practices was acknowledged.568 This is important but does not narrow down the term at issue yet. Good faith and fairness are abstract concepts.569 It would be of little assistance for the solution of a concrete case to substitute one vague term for another.570 Having said that, the principle of good faith leads to the concept of legitimate expectations.571 This concept stems from the gatt 1947 practice,572 and typically refers to ‘conditions of competition’.573 562 Panel Report, us – Section  211 Appropriations Act, para. 8.57. See also Panizzon, p. 113; ­Biber-Klemm et al. in Biber-Klemm/Cottier, p. 75. 563 Cottier/Germann in Takagi/Allman/Sinjela, pp. 131, 135. For national law, see Hilty in Hilty/Henning-Bodewig, Law Against Unfair Competition, p. 9. 564 Kotzur, ‘Good Faith (Bona fide)’ in mpepil, para. 14. 565 Kotzur, ‘Good Faith (Bona fide)’ in mpepil, paras. 17, 22; Kiss, ‘Abuse of Rights’ in mpepil, paras. 1 ff, 10. See also Appellate Body Report, us – Shrimp, para. 158. 566 Cf. Kotzur, ‘Good Faith (Bona fide)’ in mpepil, paras. 7, 26. See above p. 22. 567 Cf. Appellate Body Report, us – Hot-Rolled Steel, para. 193. 568 See also Mitchell, ‘Good Faith in wto Dispute Settlement’, p. 340. 569 Kotzur, ‘Good Faith (Bona fide)’ in mpepil, paras. 23, 26; Suranovic, pp. 305 f. 570 Cf. Mitchell, ‘Good Faith in wto Dispute Settlement’, pp. 340, 344. 571 Van Damme, Treaty Interpretation by the wto Appellate Body, p. 65; Kotzur, ‘Good Faith (Bona fide)’ in mpepil, para. 26; Cottier/Germann in Takagi/Allman/Sinjela, p. 135; Cottier/Schefer in Bronckers/Quick, pp. 50, 53. 572 gatt Panel, Italy – Agricultural Machinery, para. 13; Appellate Body Report, India – Patents (us), para. 41. 573 Panel Report, us – Underwear, para. 7.20; Panizzon, pp. 97 f, 128 ff; Cameron/Gray, p. 261.

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However, the Appellate Body restricted the application of the doctrine of legitimate expectations to non-violation complaints,574 which are not (yet) admissible under the trips Agreement because the moratorium under Article 64.2 of the trips Agreement has been extended several times.575 In India – Patents (us), the Appellate Body stated that ‘[t]he legitimate expectations of the parties to a treaty are reflected in the language of the treaty itself’.576 Hereby, the Appellate Body sought to forestall a creeping introduction of nonviolation complaints into the trips Agreement.577 Moreover, in ec – Computer Equipment, the Appellate Body noted: The purpose of treaty interpretation under Article 31 of the Vienna Convention is to ascertain the common intentions of the parties. These common intentions cannot be ascertained on the basis of the subjective and unilaterally determined ‘expectations’ of one of the parties to a treaty.578 (original emphasis) In these cases, the Appellate Body referred to the expectations of ‘the parties to a treaty’. By contrast, the term ‘honest practices’ relates to the expectations of private actors, i.e. market participants in the aggregate, concerning conditions of competition. On account of the different point of reference, the restrictive rulings of the Appellate Body do not apply here. Considering that a particular ‘practice’ establishes an expectation to that effect, and that the Merriam-Webster’s Online Dictionary579 as well as the Oxford English Dictionary Online580 equate ‘honest’ with ‘legitimate’, it is reasonable to conceive of ‘honest practices’ as the legitimate expectations of market participants. The term 574 Appellate Body Report, ec – Computer Equipment, para. 80; Panizzon, pp. 98 f, 238 f; Stoll in Wolfrum/Stoll/Kaiser, Article 3 dsu paras. 50 ff. 575 trips Non-Violation and Situation Complaints, wto Doc. WT/L/976; Non-Violation and Situation Complaints, wto Doc. IP/C/W/349/Rev.2, para. 5; Gervais, ‘Agreement on TradeRelated Aspects of Intellectual Property Rights (1994)’ in mpepil, para. 55. See also Appellate Body Report, India – Patents (us), para. 42; Hrbatá, p. 16. 576 Appellate Body Report, India – Patents (us), para. 45. See also Gad in Correa/Yusuf, pp. 362 f. 577 unctad-ictsd Resource Book, p. 697. 578 Appellate Body Report, ec – Computer Equipment, para. 84, confirmed in Appellate Body Report, ec – Chicken Cuts, para. 239; Panel Report, us – Orange Juice (Brazil), para. 7.129. Pro van Damme, Treaty Interpretation by the wto Appellate Body, pp. 67 f; Lennard, p. 67. 579 Merriam-Webster’s Online Dictionary, honest (2015), adjective No. 1 a accessed 8 ­December 2015. 580 Oxford English Dictionary Online, honest (2015), a. No. 4. c. accessed 8 December 2015.

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thus ­describes what market participants can legitimately expect from one another, i.e., in good faith. This interpretation finds support in English case law according to which ‘[h]onest has to be gauged against what is reasonably to be expected by the relevant public’.581 Incidentally, the same formulation as in Article 10bis(2) of the Paris Convention (1967) can be found in Article 14(1) of the Trade Mark Directive. In this respect, the European Court of Justice held that ‘[t]he condition of honest practice constitutes in substance the expression of a duty to act fairly in relation to the legitimate interests of the trade mark owner’.582 It is self-evident that the interests of a trademark owner differ from those in a competitive relationship.583 What can be generalized, however, is the finding of the Court that the concept of ‘honest practices’ is related to the ‘legitimate interests’ of whom it concerns. This linkage is borne out by Article 2(d) of the ucpd, which defines ‘professional diligence’, one of two elements to assess whether a commercial practice is unfair under Article 5(2) of the ucpd, as ‘the standard of special skill and care which a trader may reasonably be expected to exercise towards consumers, commensurate with honest market practice and/or the general principle of good faith in the trader’s field of activity’. (d) Topical Approach The finding that ‘honest’ is an expression of good faith and directed at the protection of legitimate interests of market participants does not yet make a point as to the yardstick by which it is decided when interests are legitimate. Article 10bis of the Paris Convention (1967) sets up prohibitions of unfair competition based on value judgments. The criteria that are determinative of these value judgments are unclear. Moral, economic or legal criteria come into consideration. On the whole, this leads to a topical approach which is characterized by the identification of indicative criteria which alone or in their entirety shape the concept at issue.584 Since competitive behaviour is dynamic by nature, it will not be possible to give a conclusive list, though.585 581 Mills, p. 134. See also Prince, p. 146. 582 European Court of Justice, Judgment, Gerolsteiner Brunnen, para. 24. See also European Court of Justice, Judgment, Céline, para. 33; European Court of Justice, Judgment, Gillette v. la-Laboratories, para. 41; European Court of Justice, Judgment, Anheuser-Busch, para. 82; European Court of Justice, Judgment, bmw, para. 61. 583 Erdmann in Gloy/Loschelder/Erdmann, § 38 para. 10. For the interests of the trademark owner, see Micklitz in Heermann/Hirsch, eg N paras. 103 f. 584 For this method, see Viehweg, pp. 14, 17, 24, 31 ff. For German law, see Lubberger in Gloy/ Loschelder/Erdmann, § 44 para. 1. 585 See above p. 65.

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In the same vein, the Appellate Body used topoi when developing the concept of ‘likeness’ in paragraphs 2 and 4 of Article iii of the gatt 1994.586 In ec – Asbestos, it explained: These general criteria … provide a framework for analyzing the ‘likeness’ of particular products on a case-by-case basis. These criteria are, it is well to bear in mind, simply tools to assist in the task of sorting and examining the relevant evidence. They are neither a treaty-mandated nor a closed list of criteria that will determine the legal characterization of products.587 Following this route, we need to agree on the determining criteria first. In particular, it is questionable whether ‘honest’ must be understood in a moral or legal sense. Does an act of unfair competition within the meaning of paragraph 2 of Article 10bis of the Paris Convention (1967) feature a contradiction of legal or moral norms or both? As a side note, the understanding of ‘contrary to’ is unproblematic: it means ‘in conflict with’.588 Ergo, a contradiction of honest practices implies the violation of a behavioural norm. The conflict is caused by ambiguous dictionary meanings of ‘honest’. In addition to the above-mentioned entries, the Oxford English Dictionary Online describes an honest person as ‘law-abiding’.589 The dictionary even claims law-abidance to be the ‘prevailing modern sense’ of the term. Similarly, ‘fair’ is defined by the Oxford Dictionaries Online as ‘in accordance with the rules or standards; legitimate’.590 The dictionaries frequently name ‘legitimate’ as a synonym of ‘honest’.591 ‘Legitimate’ means pursuant to the Merriam-Webster’s Online Dictionary ‘accordant with law or with established legal forms and requirements’ and ‘conforming to recognized principles or accepted rules and

586 Appellate Body Report, Japan – Alcoholic Beverages ii, p. 20; Appellate Body Report, ec – Asbestos, para. 101; Appellate Body Report, Canada – Periodicals, p. 21. 587 Appellate Body Report, ec – Asbestos, para. 102. 588 Merriam-Webster’s Online Dictionary, contrary to (2015) accessed 8 December 2015. 589 Oxford English Dictionary Online, honest (2013), a. No. 3. c. accessed 8 December 2015. 590 Oxford Dictionaries Online, fair (2015), adjective No. 1 accessed 8 December 2015. For the definition of this term in the Merriam-Webster’s Online Dictionary, see above p. 93. 591 See above p. 95.

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standards’.592 Pursuant to the Oxford Dictionaries Online, ‘legitimate’ is synonymous with ‘conforming to the law or to rules’.593 The Appellate Body observed on other occasions that ‘dictionary meanings leave many interpretive questions open’.594 The resolution of the present problem necessitates an appraisal of the relationship between legal and moral norms. It is not the case that moral norms belong to one corpus and legal norms to another, separate, one.595 They are not in opposition to one other. They rather overlap,596 which manifests itself most clearly in criminal law. Many moral norms have been legislated and thus become legal norms,597 such as the maxim of pacta sunt servanda in Article 26 of the Vienna Convention.598 However, not everything that is immoral is unlawful at the same time. What should be shown here is that a moral and a legal concept are not mutually exclusive.599 In fact, a moral concept may encompass a legal one.600 It follows that, though having its origin in morality, the term ‘honest’ may accommodate non-moral considerations.601 This is buttressed by the fact that ‘honest’ is entwined with the principle of good faith and that good faith constitutes a legal proposition, not merely a moral one.602 Indeed, several aspects militate against a moral understanding of ‘honest’ in this context, as will be set out momentarily. One view expressed in the literature already queries whether selected morals can claim authority at all in a pluralistic society.603 Within the framework of the wto, this consideration has even more weight because as a global organization it must not espouse any singular moral convictions. If a wto adjudicating body attempted to align the interpretation of paragraph 2 of Article 592 Merriam-Webster’s Online Dictionary, legitimate (2015), adjective Nos. 3 a, 4 accessed 8 December 2015. 593 Oxford Dictionaries Online, legitimate (2015), adjective No. 1 accessed 8 December 2015. 594 Appellate Body Report, ec – Asbestos, para. 92; Appellate Body Report, Canada – Aircraft, para. 153. 595 Kelsen, pp. 570 ff. See also Jestaedt, pp. 25 f. 596 Kelsen, p. 571. 597 Habermas, pp. 230, 274. 598 Kotzur, ‘Good Faith (Bona fide)’ in mpepil, para. 19; ‘Summary records of the sixteenth session’ [1964] I Yearbook of the International Law Commission, p. 29. 599 Cf. Dworkin, p. 96; Habermas, pp. 246, 264. 600 Cf. Habermas in Deflem, pp. 139 f; Habermas, pp. 226, 228, 230, 233, 252 f, 269. 601 Cf. Habermas, p. 247. 602 Cf. Kotzur, ‘Good Faith (Bona fide)’ in mpepil, para. 22. 603 Schünemann in Harte-Bavendamm/Henning-Bodewig (2nd ed.), § 3 para. 142.

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10bis of the Paris Convention (1967) with moral criteria, it would be faced with the dilemma of finding a common moral denominator among the Members, the existence of which is doubted, even within the territory of one Member.604 It is true that modern international law acknowledges the prevalence of an ‘international public order’ which embodies a set of common values605 that might be the nucleus for the required common denominator. Furthermore, the Declaration Toward a Global Ethic of the Parliament of the World’s Religions explicitly deals with honesty in business relations under Section iii:2(a).606 Overall, however, this is insufficient to realize an honesty standard. The existing common understanding of fairness is already reflected in the concept of equity.607 Beyond that, a world-wide code of ethics or common decency to which ‘honest practices’ might relate cannot be ascertained.608 Moreover, an international minimum standard calls for uniformity.609 Moral convictions, by contrast, are formed by cultural peculiarities and therefore quite diverse, which makes the concept formation on a moral basis even more difficult.610 What people regard as dishonest in one country may be accepted in another.611 For instance, some societies consider the categories of ‘parasitic acts’ and ‘slavish imitations’ as highly problematic,612 whereas others treat it more or less laxly, notably common law countries.613 604 Hilty in Hilty/Henning-Bodewig, Law Against Unfair Competition, p. 15; Correa, Trade Related Aspects of Intellectual Property Rights, p. 388; Correa, ‘Unfair Competition Under the trips Agreement’, pp. 77, 82; Schricker in Großfeld et al., pp. 991 f. 605 Tomuschat, p. 236; Mosler, pp. 17 ff. For the wto regime, see Oeter in Hilf/Oeter, § 1 paras. 54 ff. 606 ‘In the great ancient religious and ethical traditions of humankind we find the directive: You shall not steal! Or in positive terms: Deal honestly and fairly! Let us reflect anew on the consequences of this ancient directive: No one has the right to rob or dispossess in any way whatsoever any other person or the commonweal. Further, no one has the right to use her or his possessions without concern for the needs of society and Earth.’ 607 Francioni, ‘Equity in International Law’ in mpepil, para. 3. 608 Pflüger, pp. 131 f, 367; Cottier/Jevtic in Drexl et al., p. 675; Micklitz, p. 467. 609 See above p. 59. 610 Pflüger in Cottier/Véron, Paris Convention, art. 10bis, p. 300; Correa, Trade Related Aspects of Intellectual Property Rights, p. 388; Schricker in Großfeld et al., p. 991. 611 Correa, ‘Unfair Competition Under the trips Agreement’, pp. 77, 82; Bodenhausen, p. 144. 612 Cf. Article 5(c) of the Swiss Act Against Unfair Competition; Article 2(1)(iii) of the Japanese Unfair Competition Prevention Act. 613 wipo, Protection Against Unfair Competition, para. 115; aippi, Question 115, paras. 10.1 ff; Ohly, ‘The Freedom of Imitation and Its Limits’, pp. 520 f; Glöckner, Europäisches Lauterkeitsrecht, pp. 417 ff; Heath, pp. 629 f; Heath in Heath/Kamperman Sanders, pp. 207 ff. See also the differing rulings relating to Lego bricks, cf. de Vrey, pp. 293 ff; European Court of

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According to the first sentence of Article 3.2 of the dsu, the wto dispute settlement system shall provide ‘security and predictability to the multilateral trading system’. A moral standard, however, would bring about the opposite results. First of all, it could not offer any tangible guidance for the assessment of competitive conduct, which would make the prediction of the outcome of a case virtually impossible. This, in turn, would entail legal uncertainty, amplified by the fact that, even after the issuance of a panel report, the reasoning would not be verifiable. In consequence, a moral standard would promote subjectivism in law, and thus increase the risk of arbitrary rulings – hardly acceptable to the Members. Against the background that an adopted report expounding on paragraph 2 of Article 10bis of the Paris Convention (1967) would serve as a role model,614 it is essential that the found standard be manageable. A Member, obliged to implement the respective ruling pursuant to Articles 19.1 and 21 of the dsu, needs to know what the protection against unfair competition requires of it. That is to say, the findings and recommendations must be clear. It is rather to be doubted whether this could be achieved on the basis of a moral standard. It follows from the above considerations that an honesty standard resorting to morals would not be justiciable at an international level and, as a corollary, be without effect contrary to paragraph 1 of Article 10bis of the Paris Convention (1967). This calls for a rationalization of the application of Article 10bis of the Paris Convention (1967) and ultimately an objective standard.615 National unfair competition law has already anticipated this change in understanding.616 On a related note, it was not even possible within the European Union to agree on a common denominator for ‘legal requirements related to taste and decency’, which is why this area has been excluded from the so far most comprehensive harmonization measure in the field of unfair competition law, the

Justice, Judgment, Lego Juris v. ohim, para. 61; Supreme Court of Canada, Kirkbi v. Ritvik Holdings, paras. 3, 40, 52, 54 f, 61, 69; Hoge Raad [Supreme Court of the Netherlands], Lego v. Mega Brands (2010) 41 International Review of Intellectual Property and Competition Law 364; Corte di Cassazione [Italian Supreme Court], Mega Bloks v. Lego (2008) 3 Journal of Intellectual Property Law & Practice 759; Bundesgerichtshof, Klemmbausteine iii, pp. 11 ff; Supreme Court of Hungary, Lego Bricks (1998) 29 International Review of Intellectual Property and Competition Law 364. For an assessment of imitation in general, see Beater, Nachahmen im Wettbewerb, pp. 344 ff. 614 See above p. 49. 615 Henning-Bodewig, ‘„Unlautere“ Geschäftspraktiken und der Bezug zu Art. 10bis pvü’, p. 1005; Leistner in Gloy/Loschelder/Erdmann, § 4 para. 18; Ladas, vol. iii, pp. 1688 f. 616 For German law, see Sosnitza in Heermann/Hirsch, § 3 uwg para. 80.

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Unfair Commercial Practices Directive.617 The rationale given in recital 7 of the Directive speaks volumes: they ‘vary widely among the Member States’.618 All things considered, panellists would be ill-advised to set about defining a sort of business ethics for the wto.619 This remains the prerogative of the Members. 3 Context and Object Although ‘the words of the treaty form the foundation for the interpretive process’, as the Appellate Body observed in Japan – Alcoholic Beverages ii,620 the interpretation does not end at this juncture.621 Article 31(1) of the Vienna Convention calls upon a treaty interpreter to take account of other aspects too, and thus forecloses a purely textual or positivistic approach.622 Notably, the context is significant to the interpretation,623 as highlighted by the panel in us – Section 301 Trade Act: In reality it is always some context, even if unstated, that determines which meaning is to be taken as ‘ordinary’ and frequently it is impossible to give meaning, even ‘ordinary meaning’, without looking also at objectand-purpose.624 (footnote omitted) This is particularly true of the term at issue.625 It stands in the immediate context of ‘act of competition’ and ‘industrial or commercial matters’. Besides, there is the title ‘Unfair Competition’626 and paragraph 3 which refers to ‘a 617 Cf. v. Ungern-Sternberg in Gloy/Loschelder/Erdmann, § 23 paras. 45 ff; Hilty in Hilty/ Henning-Bodewig, Law Against Unfair Competition, p. 263; Micklitz in Heermann/Hirsch, eg E paras. 118 ff; Stuyck/Terryn/Dyck, pp. 122 f. 618 Abbamonte in Weatherill/Bernitz, p. 15. For the interpretation of this exemption, see Sosnitza in Heermann/Hirsch, § 3 uwg para. 39. 619 Pflüger in Cottier/Véron, Paris Convention, art. 10bis, p. 300. Contra Henning-Bodewig, Unfair Competition Law, pp. 9, 60. 620 Appellate Body Report, Japan – Alcoholic Beverages ii, p. 11. 621 unctad-ictsd Resource Book, p. 704. 622 Mavroidis, ‘No Outsourcing of Law?’, pp. 446 f; Macrory/Appleton/Plummer, vol. i, pp. 1064 f, vol. ii, p. 432. For the difference between ‘text-first’ and ‘text-only’ methods, see Panizzon, p. 247. 623 Van Damme, Treaty Interpretation by the wto Appellate Body, pp. 213 ff; Cottier/Jevtic in Drexl et al., p. 671; Lennard, pp. 22 ff. 624 Panel Report, us – Section  301 Trade Act, para. 7.22. See also Appellate Body Report, China – Auto Parts, para. 151. 625 Henning-Bodewig, Unfair Competition Law, pp. 9 f; Denham iv, p. 798. 626 For the status of the titles in the Paris Convention, see Wadlow, The Law of Passing-off, para. 2–017.

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competitor’ as well as ‘in the course of trade’. Against this backdrop, A ­ rticle 10bis of the Paris Convention (1967) does not appear to be a moral commandment but a regulatory instrument for competitive processes.627 From this, we can ­conclude that the criteria to flesh out ‘honest’ must be related to ­competition.628 This finding is borne out by the object of Article 10bis of the Paris Convention (1967) to ‘assure … protection against unfair competition’.629 In the field of competition law, the European Commission pursues a ‘more economic approach’ that focuses on the functioning of competition.630 A similar approach recommends itself with respect to Article 10bis of the Paris Convention (1967)631 and, considering the flexibility of the norm,632 is also feasible. At any rate, a fallback to the underlying economic policies seems inevitable in matters of wto law.633 In sum, a contextual interpretation confirms what we have found above: morality is not the subject of protection of Article 10bis of the Paris Convention (1967).634 4 Conclusion Although a concept with no finite contours, we found that the honesty standard in Article 10bis of the Paris Convention (1967) denotes the legitimate ­expectations of market participants. We came to this conclusion by linking ‘honest’ to the protection of legitimate expectations via the principle of good faith. This link is possible because the honesty standard embodies good faith for ‘industrial or commercial matters’. The dictionary meaning of the terms as well as a comparison to the legal concept of ‘public morals’ support such a reading. We further found that the criteria to flesh out this concept must be objective and, considering the context, competition-related. In this sense, Article 10bis of the Paris Convention (1967) establishes a minimum standard of right and wrong competitive conduct. Next, we will examine whether a subjective element is necessary to turn an ‘act of competition’ into an ‘act of unfair competition’. 627 Wadlow, The Law of Passing-off, paras. 2–025, 2–030 f. 628 For German law, see Bundesgerichtshof, Abgasemissionen, p. 15; Götting, Wettbewerbs­ recht, § 6 para. 4. 629 Paragraph 1 of Article 10bis of the Paris Convention (1967). 630 Glöckner in Schulze/Zuleeg/Kadelbach, § 17 para. 62; Leistner in Gloy/Loschelder/­ Erdmann, § 4 para. 16; Micklitz in Heermann/Hirsch, eg E paras. 115 f. 631 Cf. Leistner in Gloy/Loschelder/Erdmann, § 4 para. 41; Pflüger, pp. 470 f. 632 See above p. 65. 633 Matsushita in Taniguchi/Yanovich/Bohanes, pp. 287 f; Shaffer/Trachtman, pp. 137 f. 634 See above p. 97.

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E Subjective Element Generally speaking, it suffices if the actor knew of the factual circumstances that led to the assumption of dishonesty, or was grossly negligent in failing to know them, and acted nonetheless.635 This ties in with footnote 10 to Article 39.2 of the trips Agreement. Beyond that, paragraph 2 of Article 10bis of the Paris Convention (1967) does not contain any subjective requirements, such as malice or ill intentions,636 and since the provision is about interests and the functioning of competition,637 one cannot read requirements of this sort into it.638 We noted at the beginning that the intention to outdo a competitor, even to drive him out of the market, is inherent in competition and therefore immaterial for the determination of dishonesty.639 The purpose of Article 10bis of the Paris Convention (1967) is the regulation of competitive behaviour.640 It shall be ensured that particular undesirable acts do not occur, regardless of the motivation of the actor, which is insignificant to the aggrieved person in any event.641 It follows that the decisive factor is the objective behaviour and its detrimental effect on the competitive opportunities of others.642 As a corollary, a lawful act of competition does not become a prohibited act of unfair competition for the sole reason that it was done with an intention to harm a competitor.643 The opposite is true as well: an act of unfair competition is not deprived of its qualification simply because the actor did not wish to inflict damage on the competitor’s business;644 for consciousness of dishonesty is not required either.645 635 For German law, see Ohly in Ohly/Sosnitza, § 4.10 para. 10/11. 636 Wadlow, The Law of Passing-off, para. 2–028; Pflüger, pp. 119 f. 637 See above p. 1. Cf. wipo Model Provisions, para. 4.05. 638 Pflüger in Cottier/Véron, Paris Convention, art. 10bis, p. 301; Ladas, vol. iii, p. 1688. 639 See above p. 88. 640 See above p. 22. 641 Wadlow, The Law of Passing-off, para. 2–028; Höfinghoff, p. 132. For German law, see Bundesgerichtshof, Außendienstmitarbeiter, para. 21; Gloy/Loschelder/Erdmann, § 44 para. 5, § 56 paras. 156 ff. 642 Pflüger in Cottier/Véron, Paris Convention, art. 10bis, p. 300. Cf. the first sentence of A ­ rticle 11(2) of the Unfair Commercial Practices Directive; Article 4(1) of the Spanish Unfair Competition Law; Articles 6.2, 7.1 of the Peruvian Law on Suppression of Unfair Competition. For German law, see Höfinghoff, p. 138. 643 For English law, see United Kingdom House of Lords, Douglas v. Hello!, para. 144 (Lord Nicholls). For German law, see Ohly in Ohly/Sosnitza, § 4.10 para. 10/11. 644 For German law, see Bundesgerichtshof, Außendienstmitarbeiter, para. 21. 645 For German law, see Ohly in Ohly/Sosnitza, § 4.10 para. 10/11.

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The foregoing is corroborated by a comparison to paragraph 3 of Article 10bis of the Paris Convention (1967). The examples listed therein do not have a subjective element.646 In order to meet the requirements of paragraph 3, an act must be capable of either creating confusion (No. 1), discrediting (No. 2), or misleading (No. 3), as the Spanish text elucidates.647 This capacity is an objective property of an act.648 Pursuant to Article 33(3) of the Vienna Convention, ‘[t]he terms of the treaty are presumed to have the same meaning in each authentic text’.649 Ergo, the relevant passages in the English version ‘of such a nature as to’ and ‘is liable to’ are to be understood as introducing objective features of the act itself, and not as pointing to subjective intentions of the actor.650 It is self-evident that the more requirements are imposed for the invocation of the doctrine of unfair competition, the lesser the protection granted. This begs the question of whether a Member violates its wto obligations under Article 10bis of the Paris Convention (1967) by making mandatory in its domestic regime a subjective element. Motives and intents of the actor describe internal processes, only deducible from external circumstances, and are therefore difficult to prove.651 The second sentence of Article 1.1 of the trips Agreement allows Members only to ‘implement in their law more extensive protection than is required by this Agreement’, not less. An infringement would be consequently possible in the exceptional event that a Member annuls the protective effect of Article 10bis of the Paris Convention (1967) by setting the hurdle for the assertion of the doctrine of unfair competition before national courts excessively high.652 In this connection, I once more call to mind paragraph 1 of Article 10ter of the Paris Convention (1967), as incorporated into the trips Agreement by virtue of Article 2.1 of that Agreement, that assures to nationals of other Members

646 Pflüger in Cottier/Véron, Paris Convention, art. 10bis, p. 301; Wadlow, The Law of Passing-off, para. 2–028. For No. 1, see wipo, Protection Against Unfair Competition, para. 43; Pflüger, p. 140; Cottier/Germann in Takagi/Allman/Sinjela, p. 144. For No. 2, see wipo, Protection Against Unfair Competition, para. 89; Wadlow, The Law of Passing-off, para. 2–029; Pflüger, p. 142; Henning-Bodewig in Henning-Bodewig, International Handbook on Unfair Competition, § 2 para. 60. For No. 3, see wipo, Protection Against Unfair Competition, paras. 81 f; Pflüger, p. 145. 647 See above p. 80. 648 Cf. Wadlow, The Law of Passing-off, para. 2–029. 649 See also Villiger, Article 33 para. 8; Linderfalk, On the Interpretation of Treaties, p. 356. 650 Cf. wipo Model Provisions, para. 4.05. 651 Götting, Wettbewerbsrecht, § 12 para. 19. 652 Cf. Alkin, p. 51.

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appropriate legal remedies effectively to repress all the acts referred to in Articles 9, 10, and 10bis. (emphasis added) An excessive subjective prerequisite could make it overly burdensome for a competitor aggrieved by a dishonest commercial practice to make out its case because, in accordance with general principles, the burden of proof for it would be on the claimant (‘onus probandi actori incumbit’). Experience shows that high demands for proof can render a legal remedy ineffective. Such an outcome, however, would only be conceivable if the excessive subjective element were requisite for all instances in the unfair competition regime of a Member. It is settled that Members are required to implement their wto prescriptions in good faith.653 Correspondingly, Members implementing a subjective element in their domestic legal system are under an obligation to make sure that such a requirement does not thwart the effectiveness of Article 10bis of the Paris Convention (1967). It would be inconsistent with wto law to establish in the domestic law criteria for protection that make it excessively burdensome or even impossible to invoke the minimum protection guaranteed by the trips Agreement. One way to implement Article 10bis of the Paris Convention (1967) correctly is to juxtapose a general clause to specialized tort claims containing a subjective element. The European Union, for instance, adopted this approach in Article 5 of the ucpd. In the following Chapter 3, we will apply the found results to the issue of core labour standards. The question to be answered will be whether Article 10bis of the Paris Convention (1967), notably paragraph 2 thereof, may serve as a tool to enforce them. 653 Appellate Body Report, us – Section 211 Appropriations Act, para. 259; Appellate Body Report, us – Offset Act (Byrd Amendment), paras. 296 f. See also Panizzon, pp. 60 f, 84 ff; Mitchell, ‘Good Faith in wto Dispute Settlement’, p. 345.

chapter 3

Article 10bis and Core Labour Standards i

Breach of Law as an Act of Unfair Competition

To start with, I will briefly summarize our conclusions so far. We found above that Article 10bis of the Paris Convention (1967) embodies a standard of right and wrong competitive conduct that is directed at the protection of the legitimate interests of market participants. Next, we inferred that, for practical as well as legal reasons, purely moral-based criteria are out of the question for determining right and wrong competitive conduct. It would therefore be inappropriate to argue that a particular commercial practice is immoral per se, and on this account should be prohibited. Instead, we have established a requirement of objectivity. The English text version facilitates a juridical understanding to be given to the term ‘honest’, which would meet this requirement. Such an interpretation would be covered by the Romance language versions too, given that a moral notion may concurrently encompass a legal concept. Moreover, we noted that the meaning of ‘honest practices’ can only be developed on a case-by-case basis.1 As a consequence, it is difficult to make abstract statements about this term. Nonetheless, it is possible to draw the following conclusion: if, according to paragraph 2 of Article 10bis of the Paris Convention (1967), a contradiction of honest practices constitutes an act of unfair competition, then a violation of rules having binding effect does so all the more (argumentum a fortiori).2 In other words, the phrase ‘honest practices’ comprises at least ‘lawful practices’. wto law cannot tolerate unlawful commercial practices. A different reading would make a mockery of Article 10bis of the Paris Convention (1967). Mestmäcker and Schweitzer emphasize that unlawful competition does not deserve protection.3 In the same vein, Callmann and Altman maintain that ‘[e]qual submission to generally prevailing rules should be the identifying feature of any competitive order that is worthy of the name’.4

1 See above p. 72. 2 Cf. Linderfalk, On the Interpretation of Treaties, pp. 297 f. For another example of an application of the a fortiori argument in wto law, see Appellate Body Report, Argentina – Footwear (ec), para. 81. 3 Mestmäcker/Schweitzer, § 11 para. 100. 4 Callmann/Altman, § 16:1.

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Hence, it is ‘contrary to honest practices’ not to observe the (legal) rules.5 This conforms to the dictionary meaning of ‘honest’.6 That a breach of law may constitute an act of unfair competition is also recognized in the legal orders of the Members, cf. Section 4 No. 11 of the German Act Against Unfair Competition,7 Article 15(1) of the Spanish Unfair Competition Law,8 § 17200 of California’s Business and Professions Code.9,10 In this way, particular rules of law are enforced by means of unfair competition law. This does not mean that non-legal standards are foreclosed from informing honesty, but they would go beyond what is mandatory in terms of paragraph 2 of Article 10bis of the Paris Convention (1967).11 A key question will be to identify the rules of law that fall within the ambit of paragraph 2. Article 10bis of the Paris Convention (1967) cannot sanction any unlawful act,12 for this would turn the Article into a general law enforcement tool which is not its function, nor that of wto law at large. The following example, taken from English law, illustrates the problem: a courier service [gains] an unfair and illicit advantage over its rival by offering a speedier service because its motorcyclists frequently exceed speed limits and ignore traffic lights.13 What can be said already is that relevant rules of law must embody ‘practices in industrial or commercial matters’. Furthermore, it is clear from the considerations regarding the necessity of a subjective element that an objective breach of law is sufficient.14 5 6 7 8 9 10

11 12 13 14

For German law, see Keller in Harte-Bavendamm/Henning-Bodewig, § 2 para. 182. See above p. 97. ‘Unfairness shall have occurred in particular where a person infringes a statutory provision that is also intended to regulate market behaviour in the interest of market participants.’ ‘Se considera desleal prevalerse en el mercado de una ventaja competitiva adquirida mediante la infracción de las leyes. La ventaja ha de ser significativa.’ ‘[U]unfair competition shall mean and include any unlawful, unfair or fraudulent business act or practice …’. For United States law in general, see Callmann/Altman, § 16:1 ff. See Thouvenin, pp. 239 ff, 430, 435 f. For European Union law, see European Court of Justice, Judgment, Muñoz and Superior Fruiticola, paras. 29 ff; Beater, Unlauterer Wettbewerb, § 8 paras. 711 f. For English law, see Bodewig, p. 557. For Belgian law, see Dessard, p. 22. See also p. 83. For German law, see Deutscher Bundestag [German Parliament], Drucksache 15/1487, p. 19 left col.; Hasselblatt in Gloy/Loschelder/Erdmann, § 58 para. 12. United Kingdom House of Lords, Douglas v. Hello!, para. 160 (Lord Nicholls). See above p. 104. For German law, see Eck in Gloy/Loschelder/Erdmann, § 56 para. 209. Different from the English tort of causing loss by unlawful means, see United Kingdom

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A Qualification of the Breached Law 1 Rules of International Law Considering that within the purview of the minimum standard ‘practices in industrial or commercial matters’ means commercial practices in international trade,15 it becomes evident that the phrase ‘contrary to honest practices’ – in our reading ‘contrary to lawful practices’ – relates to internationally accepted rules.16 The wto is about the regulation of cross-border trade and is not concerned with the transgression of national rules. In us – Gambling, the panel held that ‘[t]he primary purpose of treaty interpretation is to identify the common intention of the parties’.17 Accordingly, under no circumstances could a national regulation, not shared by the great majority of Members, determine the ordinary meaning of a wto term.18 Otherwise, one would vest in one Member the definitional power over wto law, and thereby contravene the tenet of autonomous treaty interpretation.19 It is important to note that paragraph 2 of Article 10bis of the Paris Convention (1967) does not set up ‘honest practices’ itself. What is unlawful in a given case cannot be determined from this provision eo ipso but is laid down elsewhere. In other words, in order to assess competitive conduct, one has to rely on other sources outside the framework of Article 10bis of the Paris Convention (1967).20 This entails for a panel that, in the course of its legal analysis, it would have to adjudicate on a breach of non-wto law. It is disputed whether a wto panel has the competence to apply law different from the covered agreements.21 In the wake of the Appellate Body ruling in Mexico – Corn Syrup (Article 21.5 – us), jurisdictional questions must not be omitted.22 According to Article 7.1 of House of Lords, Douglas v. Hello!, paras. 62 ff, 93 (Lord Hoffmann), 164 ff (Lord Nicholls); Carty, ‘The Economic Torts in the 21st Century’, pp. 653 ff. 15 See above p. 87. 16 Wadlow, The Law of Passing-off, para. 2–027; Bodenhausen, p. 144. See also wipo Model Provisions, para. 1.02. 17 Panel Report, us – Gambling, para. 6.53 (original emphasis). 18 See above p. 55. 19 See above p. 48. 20 Critical of the doctrine of unfair competition for this reason, Varadarajan, p. 412. 21 Cf. Marceau in Abbott/Breining-Kaufmann/Cottier, p. 182. 22 Appellate Body Report, Mexico – Corn Syrup (Article 21.5 – us), para. 36. See also Appellate Body Report, us – 1916 Act, para. 54 footnote 30; Petersmann, ‘World Trade, Principles’ in mpepil, para. 18; van Damme, Treaty Interpretation by the wto Appellate Body, pp. 172, 174; Vranes, ‘Jurisdiction and Applicable Law in wto Dispute Settlement’, p. 272; Pauwelyn, ‘The Role of Public International Law in the wto’, p. 556.

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the dsu, the terms of reference of a panel are to examine the matter before it ‘in the light of the relevant provisions in … the covered agreement(s)’. The Appellate Body clarified in Brazil – Desiccated Coconut that the terms of reference ‘establish the jurisdiction of the panel by defining the precise claims at issue in the dispute’.23 Pursuant to Article 1.1 of the dsu, the jurisdiction of panels is confined to the ‘covered agreements’.24 As a corollary, the wto adjudicating bodies can only enforce wto law, including the incorporated provisions.25 In line with this, the Appellate Body in Mexico – Taxes on Soft Drinks declined to decide ‘whether the United States has acted consistently or inconsistently with its nafta obligations’.26 Article 7.2 of the dsu stipulates that ‘[p]anels shall address the relevant provisions in any covered agreement or agreements cited by the parties to the dispute’. Grammatically, it is not clear whether the attributive adjective ‘covered’ also refers to ‘agreements’ or whether the second alternative is to be read as meaning non-covered agreements. The panel in Korea – Procurement noted that nothing definitive can be inferred from Article 7.1 of the dsu and the fact that the standard terms of reference speak of ‘the covered agreement(s) cited by the parties to the dispute’.27 The wording in Article 7.2 of the dsu would be unambiguous if it stated ‘or any agreement cited’. On the face of it, the use of the plural speaks in favour of the first solution, indicating that the parties may cite one or several covered agreements. However, this regulatory result is already contained in the first alternative by the determiner ‘any’ which according to the Oxford Dictionaries Online is ‘used to refer to one or some of a thing or number of things, no matter how much or many’.28 Hence, limiting the second alternative to covered agreements would render it superfluous. As a result, one can deduce from the juxtaposition of ‘any covered agreement’, on the one hand, and ‘agreements’, on the other, that panels may address agreements that

23 24 25

26 27 28

Appellate Body Report, Brazil – Desiccated Coconut, p. 22. Cottier/Pauwelyn/Bürgi Bonanomi, p. 212; Pauwelyn, Conflict of Norms in Public International Law, p. 443; Bartels, pp. 502 f. Van Damme in Bethlehem et al., p. 300; Henckels, p. 284; Pauwelyn in Macrory/Appleton/Plummer, vol. i, pp. 1409 f; Vranes, ‘Jurisdiction and Applicable Law in wto Dispute Settlement’, p. 268; Marceau, ‘wto Dispute Settlement and Human Rights’, pp. 763, 775, 813 f; Bartels, p. 518. Appellate Body Report, Mexico – Taxes on Soft Drinks, para. 56. Panel Report, Korea – Procurement, para. 7.101 footnote 755. Contra Hestermeyer, Human Rights and the wto, pp. 216 f. Oxford Dictionaries Online, any (2015), determiner & pronoun No. 1 accessed 8 December 2015.

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are not covered, i.e. non-wto agreements.29 An argument to the contrary cannot be derived from the possibility provided for in Article 7.3 of the dsu to agree on other than standard terms of reference. For systematic reasons, one view in the literature sees this as a limitation of the standard terms of reference.30 Against it, the Study Group of the International Law Commission on the Fragmentation of International Law points out that one has to distinguish the issue of jurisdiction (i.e. the issue of what sort of claims may be brought before the wto) from the issue which norms may be addressed to solve a dispute.31 As observed by the Appellate Body in Brazil – Desiccated Coconut, the terms of reference merely concern the jurisdiction of a wto panel.32 Pauwelyn puts it in a nutshell: ‘The dsu limits the jurisdiction of wto panels and the Appellate Body. It does not limit the potentially applicable law before them’.33 Judicial practice confirms this.34 For instance, in Brazil – Desiccated Coconut, the Appellate Body applied the principle of non-retroactivity as a general principle of international law – importantly, without making recourse to ­Article 31(1)(c) of the Vienna Convention.35 The same is true of the principle of 29

Pro Pauwelyn, ‘The Role of Public International Law in the wto’, pp. 561 f; Bartels, p. 505. Contra Trachtman in Yerxa/Wilson, p. 139; Trachtman, ‘Conflict of Norms in Public International Law’, p. 858; Wolfgang Weiss, p. 193. 30 Böckenförde, pp. 426 ff. 31 Koskenniemi, Fragmentation of International Law, paras. 45, 423. See also van Damme in Bethlehem et al., p. 299; Pauwelyn, ‘Fragmentation of International Law’ in mpepil, para. 34; Trachtman in Yerxa/Wilson, p. 135. 32 Appellate Body Report, Brazil – Desiccated Coconut, p. 22. 33 Pauwelyn, ‘The Role of Public International Law in the wto’, p. 561. Contra Trachtman in Yerxa/Wilson, pp. 136 ff; Marceau, ‘wto Dispute Settlement and Human Rights’, pp. 777 f. 34 Van Damme, Treaty Interpretation by the wto Appellate Body, pp. 15 ff. 35 Appellate Body Report, Brazil – Desiccated Coconut, p. 15, confirmed in Appellate Body Reports, ec – Hormones, para. 128, Canada – Patent Term, paras. 71 ff. See also Panel Report, Canada – Aircraft, paras. 9.42 f. Pro Pauwelyn, ‘Fragmentation of International Law’ in mpepil, para. 31; Pauwelyn in Macrory/Appleton/Plummer, vol. i, pp. 1413 f; Bossche/ Zdouc, pp. 56 f; Petersmann, ‘Justice as Conflict Resolution’, pp. 280 f. Contra Wolfgang Weiss, p. 200; Hestermeyer, Human Rights and the wto, pp. 225 f, who denies a case of application of general international law in light of Appellate Body Report, ec – Sardines, para. 200, which speaks of an ‘interpretation principle’ in relation to the principle of non-retroactivity. Differentiating between principles of substantive and procedural law, Mitchell, ‘The Legal Basis for Using Principles in wto Disputes’, pp. 828, 832 ff. The issue as to whether the principle of non-retroactivity is applied independently or only within the constraints of Article 31(3)(c) of the Vienna Convention remained unanswered in Panel Report, ec and certain member States – Large Civil Aircraft, para. 6.22. Since the requirements of Article 31(3)(c) of the Vienna Convention would be met at any rate (the principle

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proportionality in us – Cotton Yarn.36 Also, the panel in Korea – Procurement stated with respect to customary international law: [It] applies generally to the economic relations between the wto Members. Such international law applies to the extent that the wto treaty agreements do not ‘contract out’ from it.37 Additionally, the ilc Study Group on the Fragmentation of International Law stressed that ‘[i]t is in the nature of “general law to apply generally”’.38 Nevertheless, Böckenförde views sentence three of Article 3.2 of the dsu as excluding the application of non-wto law because, in his view, any application of non-wto law would either add to or diminish the rights and ­obligations provided in the covered agreements.39 He subsequently defines ‘application’, as distinct from ‘interpretation’, as the addition to or diminution of the regulatory content of wto provisions.40 This line of reasoning is circular and must be rebutted. First of all, as for the application of non-wto law, the abovementioned examples show that it is requisite to fill lacunae in the Vienna Convention as well as the wto legal order; both are incomplete.41 Secondly, it is questionable whether Article 3.2 of the dsu deals with the issue of applicable law at all.42 Articles 3.2.3 and 19.2 of the dsu are generally taken as an interdiction to exercise judicial activism.43 However, when the wto adjudicating bodies fall back on non-wto law to determine the ordinary meaning of a wto term, they only delineate what rights and obligations there are in the covered ­agreements. Logically this question comes first. According to B ­ öckenförde, of non-retroactivity constitutes a general principle of law, cf. Appellate Body Report, ec and certain member States – Large Civil Aircraft, para. 672), this issue is unproblematic indeed with respect to non-retroactivity. 36 Appellate Body Report, us – Cotton Yarn, para. 120; Pauwelyn in Macrory/Appleton/Plummer, vol. i, p. 1408. 37 Panel Report, Korea – Procurement, para. 7.96; Panel Report, us – Continued Suspension, para. 7.336. See also Mavroidis, ‘No Outsourcing of Law?’, pp. 436 ff; Pauwelyn in Macrory/ Appleton/Plummer, vol. i, pp. 1407 f. 38 Koskenniemi, Fragmentation of International Law, para. 185. Pro Babu, p. 149. 39 Böckenförde, pp. 431 f. 40 Böckenförde, p. 439. 41 Cf. Mavroidis, ‘No Outsourcing of Law?’, pp. 469, 473; van Damme in Bethlehem et al., p. 318. 42 Answering in the negative, van Damme, ‘Treaty Interpretation by the wto Appellate Body’, p. 647. 43 See above p. 68.

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an interpretation in the light of non-wto law that adds to or diminishes the content of a wto provision amounts to an application of non-wto law.44 His fallacy is that one can only assess whether something has been added or diminished if the content is clear beforehand. The crux of the matter is that many wto provisions are unclear.45 In my understanding, the present case must be contrasted with the situation in Article 31(3)(c) of the Vienna Convention, which is about whether or not to take account of non-wto law as interpretative guidance.46 Here, the necessity to address non-wto law is provided for in wto law itself, as the contradiction of honest practices is a constituent element of paragraph 2 of Article 10bis of the Paris Convention (1967). To put it another way, the term ‘honest practices’ imports a reference to other rules of law.47 Thus, by adjudicating on a violation of ‘honest practices’ or rules embodying such practices, a panel merely fulfils its mandate, which is [t]o examine, in the light of Article 2.1 of the trips Agreement in ­conjunction with Article 10bis of the Paris Convention (1967), the matter referred to the dsb … It is further debatable whether all Members or only the parties to a dispute must be bound by the breached rule. Mindful that paragraph 2 of Article 10bis of the Paris Convention (1967) contains a minimum standard which calls for a uniform application,48 the question is which obligations emerge therefrom towards all Members. Consequently, within the purview of the minimum standard, only such rules come into consideration that are applicable to all Members. For the same reason, pertinent rules must be mandatory. As far as mandatory rules of international law are concerned, Article 38(1)(a) through (c) of the icj Statute contains an authoritative statement.49 Soft law, which is by definition non-binding,50 is not encompassed by the compulsory minimum s­ tandard. At first glance, this seems counter-intuitive because ‘honest ­practices’ may be laid 44 45 46 47 48 49 50

Böckenförde, p. 439. Mavroidis, ‘No Outsourcing of Law?’, p. 425. See below p. 189. See also McLachlan, p. 312; Lubberger in Gloy/Loschelder/Erdmann, § 44 para. 11; Kamperman Sanders, Unfair Competition Law, pp. 95 f. See above p. 59. Janis in Bernhardt, p. 76. See also Kammerhofer, pp. 541 f. Boyle/Chinkin, p. 212.

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down in soft law.51 The term ‘practice’ does not imply legal force.52 Besides, it is often coincidental whether a topic is regulated in the form of soft or hard law.53 A breach of soft law can therefore have ramifications on competition as adverse as the breach of hard law.54 In this connection, I recall what the panel in ec – Approval and Marketing of Biotech Products noted with respect to Article 31(3)(c) of the Vienna Convention: it is not apparent why a sovereign State would agree to a mandatory rule of treaty interpretation which could have as a consequence that the interpretation of a treaty to which that State is a party is affected by other rules of international law which that State has decided not to accept.55 (footnote omitted) The same line of thought applies here. It is not apparent why Members would agree to mandatory provisions like Articles 2.1 of the trips Agreement and 10bis of the Paris Convention (1967), if these provisions led to soft law becoming legally binding upon them and enforceable under the dsu. This finding does not preclude commerce from developing trading practices, but Members are not under a wto obligation to enforce such practices. That said, a breach of soft law may have indicative meaning.56 2 Competition and Trade Relatedness For a breach of law to be tantamount to an act of unfair competition within the meaning of paragraph 2 of Article 10bis of the Paris Convention (1967), the breach must first of all constitute an ‘act of competition’, i.e. implicate an impairment of competitive opportunities of traders of other Members.57 Furthermore, a contextual and purposive interpretation lead to the conclusions that the criteria to concretize the legal concept of ‘honest’ must be related to competition,58 and that the breached law must refer to ‘practices in industrial or commercial matters’.59 Just as wto law aims at combating barriers to 51 52 53 54 55 56 57 58 59

See above p. 107. See above p. 87. For German law, see Hasselblatt in Gloy/Loschelder/Erdmann, § 58 para. 116. Ibid § 58 para. 117. Panel Report, ec – Approval and Marketing of Biotech Products, para. 7.71. See below p. 199. See above p. 86. See above p. 102. See above p. 107.

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trade,60 Article 10bis of the Paris Convention (1967) aims at combating barriers to competition.61 The trips Agreement in general, cf. recital 1 of the Preamble to that Agreement,62 and the doctrine of unfair competition in particular, are both directed at the prevention of distortions,63 defined by the wto Glossary as a situation ‘[w]hen prices and production are higher or lower than levels that would usually exist in a competitive market’.64 It may be difficult to measure them accurately, given that this implies a counterfactual forecast of competitive behaviour of economic operators.65 From the objective of Article 10bis of the Paris Convention (1967) to ensure undistorted competition, it follows that only breaches of law are relevant that are liable to distort competition.66 This is the case with rules that govern competitive behaviour, notably the bearing in the market,67 or determine conditions of competition and thus level the playing field (par conditio concurrentium).68 A ‘level playing field’ is how the wto understands fairness.69 60

See recital 3 of the Preamble to the wto Agreement. See also von Bogdandy in Wolfrum/ Stoll/Kaiser, Preamble wto Agreement paras. 19 f. 61 See above p. 1. 62 ‘Desiring to reduce distortions and impediments to international trade’. See also Keßler in Stoll/Busche/Arend, Preamble para. 6; Lester et al., p. 64. 63 Henning-Bodewig in Henning-Bodewig, International Handbook on Unfair Competition, § 1 paras. 12 f; Hilty in Hilty/Henning-Bodewig, Law Against Unfair Competition, p. 19; Henning-Bodewig, Unfair Competition Law, pp. 7 ff. For European Union law, see the Preamble to Protocol (No 27) on the Internal Market and Competition; Article 5(2)(b) of the Unfair Commercial Practices Directive; European Court of Justice, Judgment, Yves Rocher, para. 22; Glöckner in Hilty/Henning-Bodewig, Law Against Unfair Competition, p. 79; v. UngernSternberg in Gloy/Loschelder/Erdmann, § 23 para. 33. For German law, see the second sentence of Section 1 of the German Act Against Unfair Competition. For Swiss law, see Article 1 of the Swiss Act Against Unfair Competition. For Spanish law, see Article 4 of the Spanish Unfair Competition Law. 64 wto Glossary, distortion accessed 8 December 2015. 65 Decision by the Arbitrator, us – Gambling (Article 22.6 – us), para. 3.25. 66 Cf. de Vrey, p. 13 footnote 11; Mestmäcker/Schweitzer, § 11 para. 100. 67 For German law, see Lubberger in Gloy/Loschelder/Erdmann, § 44 para. 7. 68 Henning-Bodewig in Henning-Bodewig, International Handbook on Unfair Competition, § 1 para. 12. For German law, see Section 4 No. 11 of the German Act Against Unfair Competition; Bundesgerichtshof, Abgasemissionen, pp. 1 f, 18, 20; Hasselblatt in Gloy/Loschelder/ Erdmann, § 58 paras. 31, 57; Glöckner, ‘Wettbewerbsbezogenes Verständnis der Unlauterkeit und Vorsprungserlangung durch Rechtsbruch’, pp. 964 f, 967. For Spanish law, see Article 15 of the Spanish Unfair Competition Law; Höfinghoff, p. 137. 69 Cf. wto, Overview (2015) accessed 8 December 2015; Cottier/Jevtic in Drexl et al., p. 682; Bossche/Zdouc, p. 674. See

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It is immaterial whether the respective rules are formulated as a prohibition, commandment, or in any other form.70 Moreover, commensurate with the de minimis doctrine, Article 10bis of the Paris Convention (1967) is not pertinent where the distortion, actual or potential, is negligible.71 Whether there is any relation to competition as described above depends on the ratio legis of the breached rule as well as on the effects of the breach on other economic participants.72 This explains why Article 10bis of the Paris Convention (1967) would not be applicable in the English example from above:73 traffic rules are aimed at regulating traffic behaviour, not competitive conduct.74 It is not required, however, that the regulation of competitive behaviour is the sole or main purpose of the rule in question.75 In other words, non-competitive interests can be protected as well under paragraphs 1 and 2 of Article 10bis of the Paris Convention (1967) as long as the necessary connection to competition exists.76 This is reflected in paragraph 3. For example, the prohibition of indications that are liable to mislead the public as to the characteristics of a drug on the basis of No. 3 of paragraph 3 not only protects the economic interests of the consumer but, primarily, his health. In this context, it is to be doubted whether it is worthwhile for a respondent to argue that nationals of other Members commit the same breaches, and so the acts by one’s own nationals simply level the playing field.77 To counter this argument, it would be sufficient to find one law-abiding competitor.78 Besides, to sustain such an objection would promote a wild west attitude,79 and ultimately call into question the authority of wto law. I recall that paragraph 2 of Article 10bis of the Paris Convention (1967) only requires an objective breach of law.80 Law-abidance by others, by contrast, is no element of the norm.

70 71 72 73 74 75 76 77

78 79 80

also Appellate Body Report, ec – Seal Products, para. 5.101 (‘effective equality of competitive opportunities’). Cf. Köhler in Köhler/Bornkamm, § 4 para. 11.24. Cf. the second sentence of Article 15(1) of the Spanish Unfair Competition Law. See above p. 88. See above p. 107. For German law, see Hasselblatt in Gloy/Loschelder/Erdmann, § 58 para. 108; Schaffert in Heermann/Hirsch, § 4 Nr. 11 uwg para. 67. For German law, see Section  4 No. 11 of the German Act Against Unfair Competition; Köhler in Köhler/Bornkamm, § 4 para. 11.35d. See below p. 114. For the similar discussion in German law, see Köhler in Köhler/Bornkamm, § 4 paras. 11.56, 11.58, on the one hand, and Hasselblatt in Gloy/Loschelder/Erdmann, § 58 para. 52, on the other hand. Höfinghoff, p. 138. Höfinghoff, p. 138. See above p. 107.

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The title of the trips Agreement indicates that its object is the regulation of ‘trade-related aspects of intellectual property rights’.81 From the fact that only trade-related aspects should have been included, one can infer that the criteria fleshing out paragraph 2 of Article 10bis of the Paris Convention (1967) must be trade-related as well.82 Thus, aside from its competitive relevance, the breached rule must be of such a quality as to affect international trade, i.e. the import and export of goods and services. Again, the potential to do so suffices, since wto law is about safeguarding competitive opportunities, not actual trade flows.83 The incorporation of Article 10bis of the Paris Convention (1967) into the wto regime entails that the doctrine of unfair competition serves to maintain ‘the negotiated balance of rights and obligations’84 between the Members. Therefore, breaches of law are pertinent that threaten to upset this balance, and hence are tantamount to a non-tariff barrier to trade. This conforms to the general objective of the wto, as set out in recital 3 of Preamble to the wto Agreement, to substantially reduce ‘tariffs and other barriers to trade’. Indeed, in an interdependent world economy,85 many rules will meet the criterion of trade relatedness, ranging from environmental to social standards.86 A broad understanding of trade relatedness corresponds to present state practice.87 Article 9(1) in conjunction with Annex viii of the eu Regulation applying a scheme of generalised tariff preferences, for instance, makes the grant of preferences contingent upon the adherence to international conventions on environmental protection, and Article 19 of the us-Korea Free Trade Agreement obliges the Parties to abide by core labour standards.88 This shows how easily trade relatedness can be established. It is rather a matter of political will than a legal issue. Consequently, the main focus of the legal analysis is on the competitive relevance of the breached rule. 3 Implicit Procedural Requirement In the constellation ‘breach of law’, Article 10bis of the Paris Convention (1967) appears as a ‘piggy-back tort’89 because it relies on the violation of another rule. 81 82 83 84

85 86 87 88 89

Cf. Elfring, p. 108; Haas, pp. 80, 99 f. Brand in Stoll/Busche/Arend, Article 2 paras. 8, 109. See above p. 49. See above p. 80. Appellate Body Report, ec – Bananas iii, para. 136; Panel Report, ec – Bananas iii (Article 21.5 – us), para. 8.7; both quoting Panel Reports, ec – Bananas iii (Ecuador)/(us), para. 7.50. Panel Reports, ec – Bananas iii (Ecuador)/(us), para. 7.50. Cf. Hrbatá, p. 34. See also Hoekman/Kostecki, p. 583. See also Granger/Siroën, pp. 831 ff. Cf. United States District Court, s.d. Texas, Clock Spring v. Wrapmaster, p. 8.

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It is contentious whether and to what extent the wto should show deference to enforcement mechanisms other than its own, in view of the fact that Article 23.1 of the dsu commits the Members to resort to the dsu when seeking ‘the redress of a violation of obligations or other nullification or impairment of benefits under the covered agreements or an impediment to the attainment of any objective of the covered agreements’. Abbott contends in this regard that the theory that a Member is legally precluded from exercising rights under the Dispute Settlement Understanding because of … supplementary overlapping treaties would undermine the effective operation of wto dispute settlement.90 I agree with Abbott subject to the proviso that the sanctions are not comprehensively and conclusively regulated in those other treaties. If so, recourse to paragraph 2 of Article 10bis of the Paris Convention (1967), in order to remedy a breach of law, should be ruled out. Paragraph 2 is distinguished from other wto provisions by its immense scope. Because of this, the wto is liable to interfere with other legal regimes, depending on how broadly the requirement of a competitive nexus of the breached rule is construed.91 Such conflicts of jurisdictions could be observed to occur in domestic law.92 If special regimes have specialized courts in place, such as the International Tribunal for the Law of the Sea (the ‘itlos’), which deals with breaches of the un Convention on the Law of the Sea (the ‘unclos’),93 a treaty interpreter should have regard to the built-in limitations of these regimes.94 To that end, it is necessary to constrain 90

91 92

93 94

ictsd, Bridges Weekly Trade News Digest, vol. 12, No. 2 of 2008, 23 January 2008 accessed 8 December 2015. See above p. 114. For German law, see Gloy/Loschelder/Erdmann, § 14 paras. 41 ff, § 66 paras. 50 ff, 61 ff, 80, 86 (as to the demarcation from administrative jurisdiction); v. Jagow in Harte-Bavendamm/Henning-Bodewig, § 4 No. 11 para. 33 (as to the demarcation from employment jurisdiction). For Peruvian law, see Article 14(2)(a) of the Law on Suppression of Unfair Competition. Cf. Articles 288 of the unclos, 21 of Annex vi thereto. Henckels, p. 286; Pauwelyn in Cottier/Pauwelyn/Bürgi Bonanomi, pp. 223 f. Contra Trachtman in Yerxa/Wilson, p. 140; Marceau, ‘A Call for Coherence in International Law’, pp. 136 f. In Chile – Swordfish, the parties themselves resolved the conflict of jurisdictions between the dsb and the itlos by withdrawing the case and settling it out of court, cf. Herdegen, § 10 para. 131; Stoll/Vöneky, pp. 21 ff. See also Neumann, ‘Die materielle und prozessuale Koordination völkerrechtlicher Ordnungen’, pp. 529 ff.

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the application of paragraph 2 of Article 10bis of the Paris Convention (1967) in the proposed way. This solution is evocative of a principle of inter-organizational comity of which we can find some indication in recital 8 of the Preamble to the trips Agreement (‘Desiring to establish a mutually supportive relationship between the wto and … other relevant international organizations’).95 It corresponds to a holistic approach to international law, whereas the opposing view fosters its fragmentation by isolating wto law.96 Apart from that, the wto is free to attach legal consequences to infringements of other regimes, as the panel in Argentina – Poultry Anti-Dumping Duties clarified in relation to the mercosur. There, it stated that it is neither ‘estopped from pursuing the present wto dispute settlement proceedings’97 nor ‘bound by the ruling of the mercosur Tribunal’.98 B Conclusion: Juridical-Economic Standard For written law to ensure justice, positivist propositions are not enough. There may be hardship cases or rules entirely missing. This problem, unknown to natural law, is remedied in modern legal orders, be they national or international, by making recourse to equity, good faith and other general principles of law. The legal families, however, differ in their concrete implementation. For instance, while civil law systems conceive of equity as a norm, i.e. an integral part, equity is for common law something on top of it, i.e. a supplement. Paragraph 2 of Article 10bis of the Paris Convention (1967) conceptualizes this for ‘industrial or commercial matters’. Despite the origin of the term, a moral or ethical definition of ‘honest practices’ was rejected. Instead, we circumscribed honesty in legal terms with a view to providing structure and predictability. ‘Unlawfulness’ is an objective criterion which reins in an overstretching of the legal concept at hand and gives a foothold to the wto adjudicating bodies. Without such legal entrenchment, the doctrine of unfair competition would involve the danger of unbridled growth, which, in turn, would bring incoherence to the trips Agreement.99 In short, cross-border competition shall not take place in defiance of vital interests of the Membership, as expressed in universal rules. That is why 95

96 97 98 99

See also Foltea, p. 45; Simma, pp. 271, 285 f; Kotzur, ‘Good Faith (Bona fide)’ in mpepil, paras. 8, 26; Henckels, p. 286; Petersmann, ‘Justice as Conflict Resolution’, p. 355; Neumann, Die Koordination des wto-Rechts mit anderen völkerrechtlichen Ordnungen, pp. 397 ff. Contra Niemann, p. 267. See also Hrbatá, p. 38. Panel Report, Argentina – Poultry Anti-Dumping Duties, para. 7.39. Ibid para. 7.42. See below p. 173.

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­paragraph 2 of Article 10bis of the Paris Convention (1967) covers only conduct that distorts international trade and therefore constitutes a non-tariff barrier to trade. Here lies the justification for the legal intervention in market forces.100 It is important to note that, by means of Article 10bis of the Paris Convention (1967), no national standards are imposed upon other Members but mandatory international standards are enforced. In this way, the intrusion into national law is curtailed. This is a first step in the development of an international unfair competition law on the basis of Article 10bis of the Paris Convention (1967). As elaborated, tensions exist between the interest in pursuing an economic activity, on the one hand, and the interest in repressing improper practices, on the other hand.101 In addition, there is the general interest in a functioning competition.102 In this sense, ‘honest’ amounts to finding the proper balance between conflicting interests.103 Should the outcome of the weighing of interests be determined by international law, a treaty interpreter must not substitute his own sense of justice for the given outcome, but must fall back upon the given law. On that account, I support an objective legal understanding of ‘honest practices’ that is premised upon competition-related rules of international law. Instead of moralizing, this approach reveals the crucial point, namely whether the interests involved are worthy of protection with a view to undistorted competition. To summarize, paragraph 2 of Article 10bis of the Paris Convention (1967) comprises a minimum standard according to which practices shall be prohibited that violate competition-related rules of international law, provided that the violation is liable to distort cross-border trade. I will refer to this as the juridical-economic standard because it contains a legal element (the violation) and an economic element (the trade distortion). All in all, the doctrine of unfair competition has the following structure: a particular subject is protected from certain behaviours such as creating confusion (No. 1 of paragraph 3), discrediting (No. 2 of paragraph 3), misleading (No. 3 of paragraph 3), or breach of law (paragraph 2). The Paris Convention and the trips Agreement explicitly mention as subjects of protection: − the establishment, the goods, or the industrial or commercial activities, of a competitor (Article 10bis(3) Nos. 1 and 2 of the Paris Convention); 100 101 102 103

Hilty in Hilty/Henning-Bodewig, Law Against Unfair Competition, p. 42. See above p. 93. See above p. 1. wipo, Protection Against Unfair Competition, para. 37; Cottier/Jevtic in Drexl et al., p. 671; Henning-Bodewig, Unfair Competition Law, p. 10. For German law, see Bundesgerichtshof, Mietwohnzentrale.de, p. 8; Leistner in Gloy/Loschelder/Erdmann, § 4 para. 39; Sack, p. 533.

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− the nature, the manufacturing process, the characteristics, the suitability for their purpose, or the quantity, of the goods (Article 10bis(3) No. 3 of the Paris Convention); − the geographical origin of the goods (Article 22 of the trips Agreement); − undisclosed information (Article 39.2 of the trips Agreement); − data submitted to governments or governmental agencies (Article 39.3 of the trips Agreement); as well as − the respective subject of protection of the breached law (Article 10bis(2) of the Paris Convention). Norms that might meet the juridical-economic standard are core labour standards, as laid down in paragraph 2 of the ilo Declaration on Fundamental Principles and Rights at Work (‘ilo Declaration’), to wit: (a) the freedom of association and the effective recognition of the right to collective bargaining, (b) the elimination of forced or compulsory labour, (c) the abolition of child labour and (d) the elimination of discrimination in respect of employment and occupation. In the next section we will examine whether they do meet the above-described standard. ii

Enforcement of Core Labour Standards by Article 10bis of the Paris Convention

A Mandatory Nature of Core Labour Standards The wording of paragraph 2 of the ilo Declaration (‘all Members, even if they have not ratified the Conventions in question, have an obligation arising from the very fact of membership’) makes it clear that the core labour standards are legally binding upon all Members because all wto Members are at the same time ilo Members.104 The wto Members avowed their ‘commitment to the observance of internationally recognized core labour standards’ in paragraph 8 of the Doha Ministerial Declaration, read in conjunction with paragraph 4 104 Cf. ilo, Alphabetical list of ilo member countries (187 countries) (24 November 2015) accessed 8 December 2015; wto, Members and Observers (2015) accessed 8 December 2015.

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of the Singapore Ministerial Declaration. As I expounded elsewhere,105 core labour standards have achieved the status of customary international law whereby the ilo Declaration, restating fundamental ilo Conventions, cf. paragraph 1(b) of that Declaration,106 serves ‘as evidence of a general practice accepted as law’ within the meaning of Article 38(1)(b) of the icj Statute.107 Furthermore, these standards are recognized by the International Covenant on Economic, Social and Cultural Rights (the ‘icescr’) in its Articles 6, 7(a) (i), (c), 8, 10(3); by the International Covenant on Civil and Political Rights (the ‘iccpr’) in its Articles 8(3), 22; by the Universal Declaration of Human Rights (the ‘udhr’) in its Articles 7, 23; by the Convention on the Elimination of All Forms of Discrimination against Women in Article 11; as well as by the Convention on the Rights of the Child in Article 32.108 Some view the prohibition of forced/compulsory labour and child labour as jus cogens,109 even the prohibition of discrimination.110 In sum, it can be established that paragraph 2 of the ilo Declaration embodies a mandatory international minimum standard.111 B Competition and Trade Relatedness of Core Labour Standards Core labour standards are equivalent to the regulation of non-product related processes and production methods (ppms).112 As to that, one view maintains that ‘[t]he wto agreements are interpreted to say … trade restrictions cannot 105 Riffel, pp. 625 f. 106 Those fundamental Conventions are: C87 Freedom of Association and Protection of the Right to Organise Convention, C98 Right to Organise and Collective Bargaining Convention, C29 Forced Labour Convention, C105 Abolition of Forced Labour Convention, C138 Minimum Age Convention, C182 Worst Forms of Child Labour Convention, C100 Equal Remuneration Convention, C111 Discrimination (Employment and Occupation) Convention. For the relationship between core labour standards and the corresponding ilo Conventions, see Alston, pp. 490 ff. 107 See also Asian Development Bank, Core Labour Standards Handbook, p. 12; Boyle/Chinkin, pp. 212, 219 f; Petersmann in Petersmann/Harrison, p. 370; Kokott in Nobel, p. 26. Contra Kaufmann, ‘Trade and Labour Standards’ in mpepil, para. 17. 108 For the meaning of repetitious statements for the development of customary international law, see Hestermeyer, Human Rights and the wto, pp. 125 ff. 109 Report of the Commission of Inquiry to examine the observance by Myanmar of the Forced Labour Convention, 1930 (No. 29), para. 203; Humbert, pp. 114 ff; Weber/Weber, p. 905. 110 Doehring, paras. 987 f; Remiro Brotóns et al., p. 72. 111 Trebilcock/Howse/Eliason, pp. 721 ff; Wolffgang/Feuerhake, p. 892. 112 Puth in Hilf/Oeter, § 28 para. 14; Kaufmann, ‘Trade and Labour Standards’ in mpepil, para. 33; International Institute for Sustainable Development, pp. 54, 56. For a general overview see Conrad, Processes and Production Methods (ppms) in wto Law.

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be imposed on a product purely because of the way it has been produced’.113 There is a lengthy academic discourse concerning this matter which relates to one of the core issues of wto law at large, namely the degree of interference with national autonomy.114 On this score, the Appellate Body noted in China – Publications and Audiovisual Products: the wto Agreement and its Annexes … operate to, among other things, discipline the exercise of each Member’s inherent power to regulate by requiring wto Members to comply with the obligations that they have assumed thereunder.115 The dispute revolves around the correct reading of ‘like’ in Articles I:1, iii:2 and iii:4 of the gatt 1994 and the question of whether differing ppms make two otherwise identical products unlike for the purposes of market entry.116 The first-mentioned view stems back to two unadopted gatt panel reports dealing with domestic fishing practices, and was primarily developed in the context of trade-related environmental measures.117 The us – Shrimp case and especially the us – Tuna ii (Mexico) case have brought about a change in thinking in this regard.118 Importantly, the present case distinguishes itself by the fact that no domestic regulation shall be imposed on another Member, but it is about the enforcement of internationally agreed and accepted standards.119 Extraterritoriality is consequently no issue here.120 The question is rather whether an 113 wto, Understanding the wto, p. 66. Contra Howse in Najam/Halle/Meléndez-Ortiz, pp. 73 ff. 114 Hörmann in Hilf/Oeter, § 27 para. 27; Lester et al., p. 307; Weber/Weber, p. 905; International Institute for Sustainable Development, pp. 54 ff. 115 Appellate Body Report, China – Publications and Audiovisual Products, para. 222. 116 Kaufmann, ‘Trade and Labour Standards’ in mpepil, paras. 32 f; Trebilcock/Howse/Eliason, pp. 666 f; Qureshi/Ziegler, para. 12–014. 117 gatt Panel, us – Tuna (Mexico), paras. 5.1 ff; gatt Panel, us – Tuna (eec), paras. 5.2 ff; Puth, pp. 64 ff; Howse in Najam/Halle/Meléndez-Ortiz, pp. 73 f; Marceau, ‘wto Dispute Settlement and Human Rights’, p. 807. 118 International Institute for Sustainable Development, p. 55; Marceau, ‘A Call for Coherence in International Law’, p. 105; Pauwelyn, ‘Tuna: The End of the ppm distinction? The Rise of International Standards?’ on Trachtman/Lester, International Economic Law and Policy Blog (22 May 2012) accessed 8 December 2015. 119 See above p. 119. See also Jansen/Lee, p. 66; Leader in Macrory/Appleton/Plummer, vol. ii, p. 677; Breining-Kaufmann in Cottier/Pauwelyn/Bürgi Bonanomi, p. 117. 120 See below p. 127.

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­obligation to conform to core labour standards emanates from Article 10bis(1) and (2) of the Paris Convention (1967) in conjunction with Article 2.1 of the trips Agreement. In this constellation, the roles are reversed: the violator of core labour standards is the responding party, whereas in the classical ppm case the Member violating some environmental or human rights standard would be the one to take legal action against a trade measure. It is straightforward to presume that core labour standards are related to production costs.121 All other things being equal, labour costs as part of production costs will be significantly lower in a country with no labour standards as compared to a country in which core labour standards are being observed.122 Non-compliance with paragraph 2 of the ilo Declaration thus facilitates the undercutting of prices leading to distortions which, in turn, impair the competitive opportunities of traders of other Members.123 The drafters of the Havana Charter started from the same premise, as evidenced by Article 7(1) thereof. The Article reads, in relevant part, as follows: The Members recognize that unfair labour conditions, particularly in production for export, create difficulties in international trade … This fact remains, although the Havana Charter did not enter into force.124 Similarly, the first sentence of Article 6.2 of the us-Jordan Free Trade Agreement stipulates: The Parties recognize that it is inappropriate to encourage trade by relaxing domestic labour laws.125 It bears mentioning that, counter-intuitively, an oecd study from 2000 ­contradicts the above finding.126 This study is, however, repudiated by more 121 Chantal in Choi/Hartigan, p. 109; Palley, p. 27. 122 Barry/Reddy, pp. 31 ff; Granger/Siroën, p. 819; Wolffgang/Feuerhake, pp. 885, 887; Motinga, p. 9; Suranovic, p. 289. See also Asian Development Bank, Core Labour Standards Handbook, p. 11. Contra Mansoor, p. 149. 123 Cf. Puth in Hilf/Oeter, § 28 para. 15; Koul, p. 539; Wolffgang/Feuerhake, pp. 887, 896; Palley, p. 27. See also Weber/Weber, pp. 901, 903; Granger/Siroën, pp. 820 f. 124 For this use of the Havana Charter in wto dispute settlement proceedings, see Panel Report, Mexico – Telecoms, para. 7.236; Mavroidis, ‘No Outsourcing of Law?’, p. 428 (‘supplementary means of interpretation’). 125 Similar provisions can be found in other free trade agreements of the United States, cf. Articles 17.2.2 of the us-Singapore fta, 18.2.2 of the us-Chile fta, 18.2.2 of the us-Australia fta, 16.2.2 of the cafta-dr. 126 oecd, International Trade and Core Labour Standards, pp. 33 f.

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recent voices.127 In addition, paragraph 5 of the ilo Declaration as well as the fourth sentence of paragraph 4 of the Singapore Ministerial Declaration affirm the link between trade and core labour standards by assuming that there is a comparative advantage that ‘should/must in no way be called/put into question’.128 In the final analysis, the trade relatedness of core labour standards is given.129 What is controversial is their competition relatedness. One German view negates this with the argument that labour standards constitute practices which precede ‘competition’.130 Following this view, a breach of core labour standards would lack the quality of an act of competition. In particular, Köhler contends that it is not the function of unfair competition law to offset competitive disadvantages of the domestic economy that result from a higher wage level.131 I respectfully disagree. Core labour standards are based on competition as well as human rights grounds; their entrenchment in the human rights covenants and the udhr proves this.132 In my view, the solution depends on the correct understanding of the phrase ‘industrial or commercial matters’ which delimits the scope of Article 10bis of the Paris Convention (1967). Industrial or commercial matters are not only those regarding the marketing of a product. As the existence of Article 39 of the trips Agreement shows, the doctrine of unfair competition even applies to acts in the product development stage and tackles issues such as industrial espionage or the enticement of employees.133 127 Chantal in Choi/Hartigan, p. 118; Pearson in Macrory/Appleton/Plummer, vol. ii, p. 181, but see also p. 185. 128 Critically as to the linkage between trade and core labour standards, Brown/Stern, pp. 333, 355. In favour in principle, Collier/Bamu, pp. 346 f. 129 Granger/Siroën, p. 835; Wolffgang/Feuerhake, pp. 887, 899. 130 Bundesgerichtshof, Abgasemissionen, pp. 15 f, 18; Köhler, ‘Der Rechtsbruchtatbestand im neuen uwg’, p. 384; Ullmann, pp. 822, 824. Differentiating, Ohly in Ohly/Sosnitza, § 4 paras. 10/93, 11/17, with respect to statutory minimum wage regulations, cf. Bundesge­ richtshof, Tariflohnunterschreitung (1993) 95 Zeitschrift für Gewerblichen Rechtsschutz und Urheberrecht 980, 982. 131 Köhler in Köhler/Bornkamm, § 4 paras. 10.186 f. 132 German Federal Ministry for Economic Cooperation and Development, Background: Minimum social standards are human rights (2015) accessed 8 December 2015; oecd, Core labour standards accessed 8 December 2015; Asian Development Bank, Core Labour Standards Handbook, pp. 11 f; Kaufmann, ‘Trade and Labour Standards’ in mpepil, paras. 15 f; Palley, pp. 23 f; Motinga, pp. 5 f; Wolffgang/ Feuerhake, pp. 884 ff, 889 ff, 900; Maskus, pp. 1, 4 f. 133 Article 6(2) of the wipo Model Provisions; wipo, Protection Against Unfair Competition, paras. 100 ff, 134; Peter/Michaelis in Stoll/Busche/Arend, Article 39 para. 32; de Carvalho,

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In short, there is competition not only in the sales market but also in the procurement market, including the labour market.134 The German view excludes an area from paragraph 2 of Article 10bis of the Paris Convention (1967) where protection is most needed. Price undercutting facilitated by a breach of law is different from other comparative cost advantages resulting from varying ppms or a generally low wage level in one Member (e.g. because of lower living costs).135 Against this, it is submitted that it is not about the significance of the interests at stake, but only about their competition-relatedness.136 There is no doubt that core labour standards create obligations of action and omission for the benefit of workers and thus principally protect their interests. In this respect, the situation is comparable to the protection of consumers, which one view considers as encompassed by the scope of Article 10bis of the Paris Convention (1967).137 Here and there, the economic interests of the competing employers/vendors are affected at the same time, notably their interest in the maintenance of equal conditions of competition. Because of this external dimension, a breach of core labour standards cannot be classified as a merely internal process.138 Within their purview, they establish equal conditions of competition in terms of freedom from forced labour, freedom from child labour, etc. This is the difference to the above-mentioned example concerning traffic rules: whereas the obligations arising from labour standards are directed at competing entrepreneurs, i.e. competition-relevant actors, traffic rules apply more generally to all road users. What is more, labour standards are always related to production costs, and not only under certain circumstances. In sum, Article 10bis of the Paris Convention (1967) must not turn a blind eye to a breach of law at the production phase if that breach has a direct impact on the

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The trips Regime of Antitrust and Undisclosed Information, para. 39.1.49; Correa, Trade Related Aspects of Intellectual Property Rights, pp. 371, 388. For Swiss law, see Article 2 of the Swiss Act Against Unfair Competition. For German law, see Köhler in Köhler/Bornkamm, § 4 para. 11.38; Ohly in Ohly/Sosnitza, § 4.10 para. 10/7. Contra Schaffert in Heermann/Hirsch, § 4 Nr. 11 uwg para. 54. Cf. Hoekman/Kostecki, pp. 625, 628. For German law, see Sosnitza in Ohly/Sosnitza, § 3 para. 57. No. 3 of Article 10bis(3) of the Paris Convention (1967) protects both, consumer and trader, at the same time: the consumer because he is saved from mispurchasing, the honest trader from losing customers owing to misinformation, wipo, Protection Against Unfair Competition, paras. 21, 64; Sánchez Pichardo, p. 87; Ladas, vol. iii, pp. 1686 f, 1733. For the interpretation of ‘the public’ within Article 22.2(a) of the trips Agreement, see unctadictsd Resource Book, pp. 292 f. See above p. 75.

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competitive relationship of the violator to a law-abiding competitor, because it enables the violator to produce at a lower cost.139 C Enforcement of Core Labour Standards Compliance with core labour standards is not only in the interest of employees, but also in the general interest. That is to say, it is not exclusively left to the employees to defend them. One view in the literature infers from the ilo Declaration a general exclusion of trade sanctions in the event of non-compliance with core labour standards.140 In my opinion, this overstates the legal effects the Declaration produces. It is true that paragraph 5 of the ilo Declaration forestalls the use of core labour standards ‘for protectionist trade purposes’. However, it is equally true that paragraph I(A)(iv) of the ilo Declaration on Social Justice for a Fair Globalization stresses that the violation of fundamental principles and rights at work cannot be invoked or otherwise used as a legitimate comparative advantage … If a wto panel or the Appellate Body should find an infringement of Article 2.1 of the trips Agreement in conjunction with Article 10bis(1) and (2) of the Paris Convention (1967) because of violations of core labour standards by the responding Member, and if the Member concerned should fail to bring its domestic law in conformity with paragraph 2 of the ilo Declaration, the legal basis for the subsequently imposed trade sanctions would be an authorization by the dsb pursuant to Articles 3.7.6 and 22.6.1 of the dsu. According to the introductory paragraph of the Annex to the ilo Declaration, the Follow-up of the Declaration aims ‘to encourage the efforts made by the Members of the Organization to promote the fundamental principles and rights’. The fact that the objective is ‘of a strictly promotional nature’141 does not militate against an application of core labour standards by the wto adjudicating bodies, given that paragraph 2 of Article 10bis of the Paris Convention (1967) refers to other sources of international law that establish ‘honest practices’ in international trade.142 139 See Article 7 of the Swiss Act Against Unfair Competition; Article 15(3) of the Spanish ­Unfair Competition Law. See also Abbey, pp. 333 ff, who advocates the application of ­unfair competition law to the issue of hiring illegal immigrants. 140 Neumann, Die Koordination des wto-Rechts mit anderen völkerrechtlichen Ordnungen, pp. 392, 403. 141 Paragraph i.2. of the Annex to the ilo Declaration. 142 See above p. 109.

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Against this, Neumann contends that the regime referred to could foreclose its enforcement by means of another treaty regime.143 It is already controversial whether the ilo Declaration could bind the wto in this regard.144 At any rate, the restriction to promotional measures stipulated in the Annex to the ilo Declaration only bears on the follow-up procedure. The ilo Declaration, reflecting international custom, has no further implications, certainly not for those labour standards held to be jus cogens.145 Although the scope of international customary law may alter with a change in the opinio juris,146 it is rather doubtful that the ilo Declaration constitutes a sufficient expression to this effect. In view of the language of intent used in paragraph 5 (‘should’) and the Annex (‘encourage’) in comparison to paragraph 2 (‘have an obligation’), the necessary conviction seems to be lacking.147 Furthermore, as set out, the feared conflict of jurisdictions would only arise if the sanctions were comprehensively and conclusively regulated by the ilo or the international covenants on human rights making reference to core labour standards.148 This is not the case. Neither has the ilo a sanction mechanism at its disposal (apart from a reporting system and the attendant pressure of public opinion),149 nor have the international covenants on human rights,150 cf. Article 44 of the iccpr.151 Either way, the consideration of customary international law, as evidenced in paragraph 143 Neumann, Die Koordination des wto-Rechts mit anderen völkerrechtlichen Ordnungen, pp. 396, 403. 144 See above p. 117. 145 Article 53 of the Vienna Convention. See Peters, Ch. 4 para. 33. 146 Peters, Ch. 4 para. 15; Doehring, para. 295; Kammerhofer, pp. 531 f. 147 Cf. Peters, Ch. 4 paras. 11, 13. 148 See above p. 117. 149 See the Annex to the ilo Declaration and Articles 19(5)(e), 19(6)(b), (d), 19(7)(b)(iv), (v), 22 of the ilo Constitution. See also Asian Development Bank, Core Labour Standards Handbook, pp. 116 ff; Manfred Weiss, pp. 9 f; Weissbrodt, ‘Slavery’ in mpepil, paras. 48 ff; Trebilcock, p. 182; Collier/Bamu, p. 330; Kirschner, pp. 404 f; Hoekman/Kostecki, p. 625. For the Myanmar case and the use of Article 33 of the ilo Constitution, see Villalpando, ‘Forced Labour/Slave Labour’ in mpepil, para. 8. 150 See Tomuschat, ‘International Covenant on Civil and Political Rights (1966)’ in mpepil, para. 35; Riedel, ‘International Covenant on Economic, Social and Cultural Rights (1966)’ in mpepil, paras. 18 ff; Cassimatis, pp. 101 f, 183; Remiro Brotóns et al., pp. 1191 ff; Dommen in Abbott/Breining-Kaufmann/Cottier, pp. 123 f; Doehring, paras. 995 f; Gardiner, International Law, pp. 276 f. 151 ‘The provisions for the implementation of the present Covenant … shall not prevent the States Parties to the present Covenant from having recourse to other procedures for settling a dispute in accordance with general or special international agreements in force between them’.

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2 of the ilo Declaration, under wto law would not contest the position of the ilo as ‘the constitutionally mandated international organization and the competent body to set and deal with international labour standards’.152 To the contrary, it would manifest that the ilo is being taken seriously in its role. It follows that Article 10bis of the Paris Convention (1967) can be applied to the issue of core labour standards. The above considerations, however, do not hold true for paragraph 2(d) of the ilo Declaration with regard to ilo Convention 111, as labour costs, production costs and trade distortions do not correlate in the same way here: non-compliance with this Convention does not impair competitive opportunities of foreign competitors, considering that discrimination in respect of employment and occupation (apart from remuneration)153 does not result in lower labour costs.154 This is because (in relation to access to the job market) discrimination artificially restricts the pool from which employers recruit, and (in relation to access to vocational training) it reduces the number of available skilled workers, cf. Article 1(3) of ilo Convention 111. The discriminators rather accept higher labour costs for non-economic reasons, such as ethnic, racial, or religious ones.155 Therefore, the element ‘act of competition’ has to be denied in case of a violation of ilo Convention 111 (and affirmed in case of ilo Convention 100). iii Conclusions We have found that core labour standards (barring the aforementioned exception) belong to the group of norms that qualify for the juridical-economic standard under paragraph 2 Article 10bis of the Paris Convention (1967), as elaborated above.156 That is, non-compliance with paragraph 2 of the ilo Declaration constitutes an act of unfair competition.157 As a result, labour standards are a factor to compete on only beyond the minimum set by paragraph 2 of the ilo Declaration. Within its scope, human rights considerations limit the policy discretion of the Members. wto law thus provides a tool for the better enforcement of core labour standards in the guise of Article 10bis(1) and (2) of the Paris Convention (1967), read in conjunction with Article 2.1 of the trips 152 Recital 6 of the Preamble to the ilo Declaration. 153 See ilo Convention 100. 154 Brown in Narlikar/Daunton/Stern, p. 704; Granger/Siroën, p. 819. 155 Article 1(1)(a) of ilo Convention 111. See also Maskus, p. 4. 156 See above p. 119. 157 Critically, Trebilcock/Howse/Eliason, pp. 719 f.

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Agreement.158 This is borne out by the objective of ‘raising standards of living’ in recital 1 of the Preamble to the wto Agreement.159 It is well established that the Preamble to the wto Agreement also informs the trips Agreement.160 Given that people generally spend most of their time at work, the realization of that objective must encompass this area of life in order for it to be fruitful.161 This finding is not at odds with paragraphs 5 of the ilo Declaration and 4 of the Singapore Ministerial Declaration because calling for the observance of core labour standards is not the same as demanding higher wages in developing countries. As suggested above, there is more than one reason why a country has low wages and thereby a comparative advantage.162 Incidentally, the misconduct of the importer who knew, or was grossly negligent in failing to know, that the imported products were produced in violation of core labour standards may be addressed by national unfair competition law.163 Some convey the impression that it is unfair to enforce international obligations, such as core labour standards, when the obliged party is a developing country.164 This is equivalent to saying that commitments undertaken by developing countries are not to be taken seriously contrary to Article 26 of the Vienna Convention. That developing countries need technical assistance with the implementation of their international obligations is a different matter,165 and cannot deprive these obligations of their legal force. Otherwise, one would threaten the foundations of international law. The ilo itself underlines that the core labour standards apply ‘regardless of the level of economic development’.166 It bears emphasizing that wto panels would enforce Article 10bis of the Paris Convention (1967), as incorporated into the trips Agreement by virtue of Article 2.1 of that Agreement; the enforcement of core labour standards is through these wto provisions due to their quality as ‘honest practices in industrial or commercial matters’.167 A panel reasoning in this way would 158 Contra Kirschner, pp. 406 f; Hoekman/Kostecki, p. 629, but without having particular regard to Article 10bis of the Paris Convention (1967). 159 Wolffgang/Feuerhake, p. 886. Contra Hoekman/Kostecki, pp. 626 f, who expect a worsening of the situation of workers if core labour standards were enforced by means of trade sanctions. 160 Appellate Body Report, us – Shrimp, para. 129. See above p. 49. 161 See also Petersmann in Cottier/Pauwelyn/Bürgi Bonanomi, p. 32. 162 See above p. 122. 163 Weber/Weber, pp. 900 ff. 164 International Institute for Sustainable Development, p. 56. 165 See paragraph 3(a) of the ilo Declaration, Annex i.2, iii. 166 ilo, About the Declaration accessed 8 December 2015. 167 See Marceau, ‘A Call for Coherence in International Law’, p. 112.

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remain within the boundaries of its mandate because the claim is based on the trips Agreement, the relevant covered agreement here in terms of Article 11 of the dsu.168 In a nutshell, paragraph 2 of Article 10bis of the Paris Convention (1967) serves as a gateway to the inclusion of mandatory non-wto rules in wto law, provided that they feature the required competitive relevance. This being the case, it can be employed to overcome particular enforcement deficiencies in international law. As a last point, it bears noting that paragraph 2(b) and (c) of the ilo Declaration comprises different forms of slavery.169 This entails that the competitive relevance of slavery is given for the same reasons.170 Also, the prohibition of slavery, as laid down in Articles 4 of the udhr and 8(1), (2) of the iccpr, constitutes a peremptory norm within the meaning of Article 53 of the Vienna Convention.171 In Part iv, we will deal with another potential case of application of Article 10bis of the Paris Convention (1967), to wit: the issue of traditional knowledge. The search for the appropriate forum as well as form of traditional knowledge protection is accompanied by a critical debate,172 in the course of which the trips Agreement caught the eye of the proponents of such protection because of its enforcement mechanism.173 In the event of failure to bring national law into conformity with the trips Agreement, as recommended pursuant to Article 19.1 of the dsu, the dsb may authorize the suspension of concessions or other obligations in accordance with Article 22 of the dsu. The arbitrators in 168 See above p. 109. 169 See recital 4 of the Preamble to ilo Convention 105, Article 3(a) of ilo Convention 182. See also Asian Development Bank, Core Labour Standards Handbook, pp. 23, 39, 41; Maskus, p. 3. 170 See above p. 122. 171 ‘Report of the Commission to the General Assembly on the work of its fifty-third session’ [2001] ii(2) Yearbook of the International Law Commission, p. 85 para. 5, p. 112 para. 4; ‘Draft Articles on the Law of Treaties with commentaries’ [1966] ii(2) Yearbook of the International Law Commission, p. 248 para. 3, p. 261 para. 1; Frowein, ‘Ius cogens’ in mpepil, paras. 6 f; Peters, Ch. 4 para. 30; Kamminga/Scheinin, pp. 6, 145; Bianchi, p. 495; Linderfalk, ‘The Effect of Jus Cogens Norms’, p. 856 footnote 16; Emmerich-Fritsche, p. 444; Tomuschat/ Thouvenin, pp. 48, 87, 99, 103. 172 The Protection of Traditional Knowledge and Folklore, wto Doc. IP/C/W/370/Rev.1, paras. 13 ff; The Relationship Between the trips Agreement and the cbd, wto Doc. IP/C/W/368/ Rev.1, para. 17; Weeranworawit in Bellmann/Dutfield/Meléndez-Ortiz, pp. 157 ff. 173 The Protection of Traditional Knowledge and Folklore, wto Doc. IP/C/W/370/Rev.1, para. 15; Taking Forward the Review of Article 27.3(b) of the trips Agreement, wto Doc. IP/ C/W/404 (Joint Communication from the African Group), p. 5; unctad-ictsd Resource Book, p. 399; Varadarajan, p. 374; Hrbatá, pp. 25 ff; Biber-Klemm/Cottier, pp. 69, 233; Cottier/Panizzon, p. 399.

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ec – Bananas iii (Ecuador) (Article 22.6 – ec) clarified that Article 22 of the dsu applies to disputes under the trips Agreement despite Article 2.2 of this Agreement which excludes a derogation from the incorporated wipo treaties, but does not encompass Article 64 of the trips Agreement.174 The latter declares the dsu applicable. As a corollary, the problem of enforceability of traditional knowledge protection would be solved from the outset, even though it may be difficult to gauge the actual level of nullification or impairment in a given case.175 The arbitrator in ec – Bananas iii (us) (Article 22.6 – ec) observed that The presumption of nullification or impairment in the case of an infringement of a gatt provision as set forth by Article 3.8 of the dsu cannot in and of itself be taken simultaneously as evidence proving a particular level of nullification or impairment allegedly suffered by a Member …176 (original emphasis) In order to produce this evidence, the Member requesting authorization to suspend concessions under Article 22 of the dsu shall ‘submit a “methodology paper” describing how it arrived at the level of countermeasures it proposes’.177 Moreover, the arbitrator in ec – Hormones (us) (Article 22.6 – ec) found that ‘[t]his involves a quantitative – not a qualitative – assessment of the proposed suspension’.178 Of the trips provisions, Article 10bis of the Paris Convention (1967) stands out as a possible legal basis for the protection of traditional knowledge in light of its capacity to reconcile conflicting interests.179 Just as this Article found 174 Decision by the Arbitrators, ec – Bananas iii (Ecuador) (Article 22.6 – ec), para. 150. See above Chapter 2 footnote 123. 175 Cf. Anderson, para. 3.6.4.3. See Article 22.4 of the dsu. See Decision by the Arbitrators, ec – Bananas iii (us) (Article 22.6 – ec), para. 7.1; Decision by the Arbitrators, ec – Bananas iii (Ecuador) (Article 22.6 – ec), para. 12; Decision by the Arbitrator, us – Offset Act (Byrd Amendment) (ec) (Article 22.6 – us), paras. 4.20 ff. 176 Decision by the Arbitrators, ec – Bananas iii (us) (Article 22.6 – ec), para. 6.10. 177 Decision by the Arbitrators, Brazil – Aircraft (Article 22.6 – Brazil), para. 2.9; Decision by the Arbitrators, ec – Hormones (us) (Article 22.6 – ec), para. 11; Decision by the Arbitrators, ec – Hormones (Canada) (Article 22.6 – ec), para. 11. 178 Decision by the Arbitrators, ec – Hormones (us) (Article 22.6 – ec), para. 20 (original emphasis). 179 Cottier/Jevtic in Drexl et al., p. 686; Cottier/Panizzon in Biber-Klemm/Cottier, p. 209; Janke, pp. 99 f, 177, 178 para. 17.2. Note that the general prohibition of unfair competition, as set out in Article 10bis of the Paris Convention (1967) in conjunction with Article 2.1 of the trips Agreement, could not be suspended because it is not included in Article 22.3(f)(iii) of the dsu, see above p. 34.

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application to geographical indications or undisclosed information in the trips Agreement, its scope could extend to traditional knowledge as well. By its very nature, the norm is adaptable so that the level of protection can be adjusted depending on the particular circumstances of the case.180 Considering that overprotection is liable to restrict competition and result in a barrier to trade,181 the doctrine of unfair competition might constitute a reasonable middle ground between the two extremes of no protection at all and strong intellectual property protection.182 The fact that it is not contingent upon formalities might turn out to be particularly advantageous to holders of traditional knowledge.183 In addition, it would be without prejudice to the existing intellectual property system.184 Against this background, it is no surprise that Norway proposed in the igc to make use of Article 10bis of the Paris Convention.185 Other states like the United States186 or the Members States of the European Union187 have proved to be open to this proposal. Some Members, such as Peru, Hungary, Republic of Korea and Portugal, already put it into practice within their national legal system.188 Accordingly, the negotiators in the igc took Article 10bis of the Paris Convention (1967) as their starting point.189 In the following part, the central question will be whether traditional knowledge qualifies for legal protection under Article 10bis of the Paris Convention (1967) de lege lata, since it is not a given that the states can agree on a sui generis legal instrument for the international protection of traditional knowledge. To this end, we will have to specify carefully why this subject matter should merit protection and against what.

180 See Cottier/Jevtic in Drexl et al., p. 686. 181 Recital 1 of the Preamble to the trips Agreement. See above p. 49. 182 See Ohly, ‘The Freedom of Imitation and Its Limits’, p. 523; Arezzo, pp. 406 ff, 413; Abbott, p. 695. See above p. 22. 183 wipo Publication No. 785, p. 55; Arezzo, p. 409. 184 Arezzo, pp. 409 f. 185 Report, wipo Doc. WIPO/GRTKF/IC/3/17, para. 227. See also Norway, wipo Doc. WIPO/ GRTKF/IC/9/12, para. 38. 186 Report, wipo Doc. WIPO/GRKTF/IC/6/14, para. 76. 187 igc, eu Contribution to the List of Issues on Traditional Knowledge, p. 4 accessed 8 December 2015. 188 Revised Outline of Policy Options and Legal Mechanisms, wipo Doc. WIPO/GRTKF/IC/9/ INF/5, Annex para. 22 footnote 3. 189 Revised Objectives and Principles, wipo Doc. WIPO/GRTKF/IC/18/5, Annex pp. 35 ff; Kiene, The Legal Protection of Traditional Knowledge in the Pharmaceutical Field, pp. 252, 254; Taubman/Leistner in von Lewinski, pp. 110 f; Cottier/Panizzon in Biber-Klemm/ Cottier, p. 212. See also Cottier/Jevtic in Drexl et al., pp. 686 f.

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Article 10bis and Traditional Knowledge i Introduction While on a research stay at the Max Planck Institute for Innovation and Competition in Munich, Jacob Jaconiah, a Tanzanian colleague and friend, told me about a healer in his home country who knows of a special remedy for curing typhoid. When sick people consult this man, he chops up some special leaves, adds eggs and other ingredients and eventually administers the tincture to his patients. Apparently, this natural method of healing is so effective that it even works when conventional therapies fail. From a legal perspective, the question of legal protection for this kind of knowledge arises. It is commonly referred to as ‘traditional knowledge’ because of its origin: it originates from a traditional context within which it is handed down – in many cases orally – from one generation to another.1 A universally accepted definition does not yet exist, but it is fair to say that the term denotes the intellectual achievements of indigenous and local communities.2 Importantly, it is not limited in terms of content but encompasses any kind of knowledge from agricultural and environmental knowledge to medicinal knowledge, including knowledge associated with genetic resources.3 1 Cf. Article 2(1), (2)(d) of the ich Convention; Section 2.1 of the adopted Swakopmund Protocol. See also who/wipo/wto, p. 93; wipo Publication No. 933, p. 8; Permanent Forum on Indigenous Issues, Report of the Secretariat on Indigenous traditional knowledge, un Doc. E/C.19/2007/10, para. 2; Drahos/Frankel, p. 18; Nijar, ‘Incorporating Traditional Knowledge in an International Regime on Access to Genetic Resources and Benefit Sharing’, p. 462; Kiene, The Legal Protection of Traditional Knowledge in the Pharmaceutical Field, p. 145; Stoll/von Hahn in von Lewinski, p. 20; Curci, pp. 15 f; Garcia, p. 7. 2 Glossary, wipo Doc. wipo/grtkf/ic/28/inf/7, Annex p. 40; who/wipo/wto, pp. 90, 93; Muńoz Téllez/Zografos Johnsson in Gervais, pp. 316 f; Drahos/Frankel, pp. 9 ff; Varadarajan, p. 373; Curci, p. 92; Gopalakrishnan/Nair/Babu, pp. 8 f. ‘Indigenous and local communities’ is the expression used in the cbd, the Bonn Guidelines, and the Nagoya Protocol to describe the holders of traditional knowledge, cf. in particular recital 23 of the Preamble to the Nagoya Protocol. 3 The Protection of Traditional Knowledge and Folklore, wto Doc. ip/C/W/370/Rev.1, para. 38 first bullet; Bubela/Gold, pp. 1, 4 f; Kiene, The Legal Protection of Traditional Knowledge in the Pharmaceutical Field, pp. 21 f, 143; Varadarajan, p. 373; Nijar, ‘Incorporating Traditional Knowledge in an International Regime on Access to Genetic Resources and Benefit Sharing’, p. 462; Alikhan/Mashelkar, p. 67; Curci, p. 92.

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Its key determinant is the custodians4 or holders of such knowledge.5 The addition of ‘local’ indicates that the holdership of traditional knowledge is not confined to indigenous peoples, as set out e.g. in Article 1(1)(b) of the Indigenous and Tribal Peoples Convention (ilo Convention 169).6 Furthermore, the qualifier ‘traditional’ does not imply that the knowledge is outdated, as the example of a herbal remedy developed by Blackfoot healers against some of the symptoms of diabetes illustrates.7 The Four Directions Council, an ngo of Canadian indigenous peoples, submits in this regard that ‘[w]hat is “traditional” about traditional knowledge is not its antiquity, but the way it is acquired and used.’8 Several legal instruments acknowledge the continuing significance of traditional knowledge for sustainable development and biodiversity.9 The frequent reference to traditional knowledge manifests the international community’s conviction of the necessity to safeguard it.10 Mindful that traditional knowledge has proved its value for time immemorial, preambular paragraph 8 of the unesco Convention on the Protection and Promotion of the Diversity of Cultural Expressions recognizes the importance of traditional knowledge as a source of intangible and material wealth, and in particular the knowledge systems of indigenous peoples, and its positive contribution to sustainable development, as well as the need for its adequate protection and promotion. 4 5 6

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For this term, see Glossary, wipo Doc. wipo/grtkf/ic/28/inf/7, Annex p. 8. Critically, Gervais, The trips Agreement, para. 1.91. Almeida in Sinjela, pp. 213 f. See also Varadarajan, pp. 377 f; Antons in Heath/Kamperman Sanders, p. 50. For the definition of ‘indigenous peoples’, see Kingsbury, ‘Indigenous Peoples’ in mpepil, paras. 3 ff. Four Directions Council, quoted in Implementation of Article 8( j), cbd Doc. unep/ cbd/cop/3/19, para. 80; Ebermann, p. 119; Kiene, The Legal Protection of Traditional Knowledge in the Pharmaceutical Field, pp. 26, 145; Galloway McLean, p. 13; Sunder, pp. 109 f. Four Directions Council, quoted in Implementation of Article 8( j), cbd Doc. unep/cbd/cop/3/19, para. 79. See also Gervais, The trips Agreement, para. 1.91; Kiene, The Legal Protection of Traditional Knowledge in the Pharmaceutical Field, pp. 25 f, 145; Taubman/Leistner in von Lewinski, pp. 59 f. Principle 22 of the Rio Declaration; paragraph 26.3(a)(iii) of the Agenda 21; Article 8(j) of the cbd; recital 11 of the Preamble to the drips; recital 22 of the Preamble to the Nagoya Protocol. Blakeney, ‘Bioprospecting and the protection of traditional medical knowledge of indigenous peoples’, p. 303.

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Also, the value of traditional knowledge extends to medicine and food security, cf. Articles vii.7 of the who Declaration of Alma-Ata and 9.2(a) of the fao International Treaty on Plant Genetic Resources for Food and Agriculture (the ‘itpgrfa’).11 Farmers in industrialized countries testify to the difficulties they experience in cultivating traditional medicinal herbs, and to the extent of know-how it requires.12 Against this backdrop, the worthiness of protection of traditional knowledge is generally accepted, even though the best method to protect it may be controversial.13 Various national and regional protection schemes are in force.14 On the international plane, the Parties to the United Nations Convention to Combat Desertification (the ‘unccd’) undertook, in Article 18(2)(b), to ensure that such technology, knowledge, know-how and practices are adequately protected … This obligation is fairly weak because it is contingent upon the ‘respective capabilities’ of the Parties, and ‘subject to their respective national legislation and/or policies’. That said, the Convention has reached wide acceptance, considering that it has presently 196 parties, including the United States of America and the European Union. A Description of the Problem Manifold specialist literature is available on traditional knowledge.15 The present chapter focuses on the question of whether the appropriation or use of 11

who Report, p. 28; The Protection of Traditional Knowledge and Folklore, wto Doc. ip/ C/W/370/Rev.1, para. 9 first and third bullet; Muńoz Téllez/Zografos Johnsson in Gervais, pp. 316 f, 319; Unnikrishnan/Suneetha, pp. 14 f; Enete et al., p. 12; Tobin in Kamau/Winter, pp. 104 f; Taubman/Leistner in von Lewinski, p. 63. 12 Schweikert, ‘Mit Blumen Schwein gehabt’, Südwest Presse (online), 9 November 2010 accessed 8 December 2015. See also Curci, p. 59. 13 unctad, Systems and National Experiences for Protecting Traditional Knowledge, Innovations and Practices, un Doc. td/B/com.1/em.13/2, para. 4; L.T.C. Harms, p. 503; Hilty, p. 885; Manley, p. 131; Brush, pp. 105 f. 14 wipo, Laws and Legislative Measures accessed 8 December 2015. 15 Dagne, Intellectual Property and Traditional Knowledge in the Global Economy; Drahos/ Frankel, Indigenous Peoples’ Innovation; Bubela/Gold, Genetic Resources and Traditional Knowledge; Ebermann, Patents as Protection of Traditional Medical Knowledge?; Kiene, The Legal Protection of Traditional Knowledge in the Pharmaceutical Field; Anderson,

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traditional knowledge without authorization of its holder (referred to as ‘misappropriation’ in the following)16 is prohibited. Relating to this, the wipo Secretariat presented the following fact pattern: A community has developed a range of useful applications for a medicinal plant, and has developed a systematic understanding of how that plant should be cultivated, harvested and then used (including in synergistic combination with other plant extracts) to treat a range of diseases. This system of knowledge is distinctively associated with that community and is maintained within the community through customary practices.17 Appropriation in this context amounts to the copying of a method or the utilization of information. The term ‘holder’ is used here in a non-technical way and is not supposed to predetermine any proprietary relationship.18 Given that there are diverse forms of traditional knowledge, a multifaceted approach suggests itself. Because it is a prominent example susceptible to commercial application (and thus misappropriation),19 the research question will be examined with special attention to traditional knowledge associated with genetic resources. It gave rise to recent law-making activity within the framework of the Convention on Biological Diversity (the ‘cbd’), which in 2014 led to the entry into force of the Nagoya Protocol on Access to Genetic Resources and

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Indigenous/Traditional Knowledge & Intellectual Property; Curci, The Protection of Biodiversity and Traditional Knowledge in International Law of Intellectual Property; Antons, Traditional Knowledge, Traditional Cultural Expressions, and Intellectual Property Law in the Asia-Pacific Region; Food and Agriculture Organization of the United Nations, fao and Traditional Knowledge; Kamau/Winter, Genetic Resources, Traditional Knowledge and the Law; von Lewinski, Indigenous Heritage and Intellectual Property; Biber-Klemm/ Cottier, Rights to Plant Genetic Resources and Traditional Knowledge. Cf. the definition of ‘biopiracy’ in the Third Supplementary Provision of the Peruvian Law No. 28216: ‘Biopiracy means unauthorized and non-remunerated access to and use of biological resources or collective knowledge of indigenous peoples by others, without the relevant authorization and in contravention of the principles established in the Convention on Biological Diversity and the rules in force on the matter. Such appropriation may occur by means of physical control, through ownership rights to products which incorporate such elements that were illicitly obtained or in some cases through invocation of such elements.’ See also Dagne, ‘The Protection of Traditional Knowledge in the Knowledge Economy’, pp. 141 f; Robinson in Drahos/Frankel, p. 79. Draft Gap Analysis, wipo Doc. wipo/grtkf/ic/13/5(b) Rev., Annex i para. 85. Cf. Dutfield, ‘The Public and Private Domains’, p. 279. Henninger in gtz, p. 293; Unnikrishnan/Suneetha, p. 58; Gopalakrishnan/Nair/Babu, p. 47; Twarog/Kapoor, pp. 67, 85, 285.

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the Fair and Equitable Sharing of Benefits Arising from their Utilization (the ­‘Nagoya Protocol’). The term denotes knowledge regarding the possible ‘cultivation and application of genetic resources’,20 such as the knowledge about the medicinal properties of plants and herbs.21 An example would be the A ­ ndean Cosmovision of the Kallawaya.22 Traditional knowledge associated with genetic resources has vast economic potential for different branches of industry, such as agriculture, cosmetics, and pharmaceuticals.23 By 2015, revenues from herbal medicines are estimated to amount to usd 90 billion.24 Yet, it is mostly companies in developed Members that reap the profit, notwithstanding that their research may have been directed by traditional knowledge.25 Neem, a tree native to India known for its pesticidal applications,26 and pozol, a Mayan drink,27 are cases in point. In both instances, traditional knowledge led to the extraction of the active (antifungal or anti-bacterial) properties.28 Thus, in addition to helping the pharmaceutical industry save research costs, traditional knowledge may also provide the basis for a tradable product,29 and on this account is at great risk of being 20 21

22 23

24 25

26 27 28

29

Cf. Article 2 of the cbd. Bubela/Gold, pp. 4 f; Stoll in Stoll/Busche/Arend, Introduction i para. 36. See the definition in Article 3(7) of the eu Regulation No. 511/2014 on compliance measures for users from the Nagoya Protocol. unesco, Andean cosmovision of the Kallawaya accessed 8 December 2015. who/wipo/wto, pp. 89, 91; Muńoz Téllez/Zografos Johnsson in Gervais, p. 319; Taubman/Leistner in von Lewinski, pp. 62 f; Srinivas, p. 86; Biber-Klemm/Szymura Berglas in Biber-Klemm/Cottier, p. 22; Coombe, ‘Protecting Traditional Environmental Knowledge and New Social Movements in the Americas’, pp. 115 f. Unnikrishnan/Suneetha, p. 13. See also who/wipo/wto, p. 89. who/wipo/wto, p. 91; Dutfield in Bubela/Gold, pp. 94 ff; Ebermann, p. 177; Meyers/ Owoeye, pp. 61 f; Nijar, ‘Traditional Knowledge Systems, International Law and National Challenges’, pp. 1206 f; Kiene, The Legal Protection of Traditional Knowledge in the Pharmaceutical Field, pp. 24, 153; Muńoz Téllez/Zografos Johnsson in Gervais, p. 320; Claudie et al. in Drahos/Frankel, pp. 34, 36; Varadarajan, p. 372; Cabrera Medaglia, p. 24; Alikhan/ Mashelkar, pp. 80 f. Ebermann, pp. 2 f; Khan, pp. 120 f; Arezzo, pp. 369 f; Cullet et al. in Biber-Klemm/Cottier, p. 136. Garcia, pp. 8 f; Arewa, p. 176. A positive example is the benefit-sharing agreement relating to the plant Homalanthus nutans which the us National Cancer Institute has concluded with indigenous peoples, cf. Kiene, The Legal Protection of Traditional Knowledge in the Pharmaceutical Field, pp. 20 f. The Protection of Traditional Knowledge and Folklore, wto Doc. ip/C/W/370/Rev.1, para. 9 first bullet; wipo Technical Study, p. 37; Nijar, ‘Incorporating Traditional Knowledge in an

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exploited.30 The case of Duboisia shows that this is no modern phenomenon: in the 19th century, aboriginal knowledge enabled an Australian doctor to substitute Duboisia essences for atropine.31 The magnitude at stake is illustrated by the following example: In 1991, Merck, a multinational pharmaceutical company, entered into a bioprospecting agreement with the Costa Rican Association Instituto Nacional de Biodiversidad (INBio) a non profit organisation. Under the agreement, over a two year period, Merck received 10,000 plant samples. The samples were supplied with information about their traditional use. Merck has paid a reported us $1.35 million for the 10,000 samples, and has agreed to pay a royalty of between 2%–3%. Currently, three of the drugs that Merck sells earn over us $1 billion each. If one of the 10,000 samples becomes a billion dollar drug then Merck has agreed to pay 20–30 million dollars in royalties. Conceivably, the royalties from the 10,000 samples could earn Costa Rica well in excess of us $100 million per annum.32 In this context, it should be noted that the protection of traditional knowledge associated with genetic resources has to be distinguished from the protection of the genetic resources themselves, which comes within the ambit of the cbd.33 Aside from traditional knowledge, wipo – under the aegis of the igc – deals with so-called ‘traditional cultural expressions’34 and ‘expressions of folklore’,35 a topic which will be omitted here. These subjects may find protection under copyright and related rights, as set out in Articles 9 ff of the trips Agreement, given that they constitute ‘literary and artistic works’ within the meaning of Article 9.1 of the trips Agreement in conjunction with Article

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International Regime on Access to Genetic Resources and Benefit Sharing’, p. 462; Mhame in Twarog/Kapoor, pp. 17, 19; Bodeker, pp. 785 f. who/wipo/wto, p. 93; Ebermann, pp. 22 f, 101, 129, 133 f; Kiene, The Legal Protection of Traditional Knowledge in the Pharmaceutical Field, p. 153; Alikhan/Mashelkar, pp. 80 f; Kariyawasam, p. 85; Almeida in Sinjela, pp. 209, 212 f. Blakeney, ‘Bioprospecting and the protection of traditional medical knowledge of indigenous peoples’, p. 298. Roundtable on Intellectual Property and Traditional Knowledge, wipo Doc. wipo/iptk/ rt/99/3, p. 9. See also Zerda Sarmiento, p. 25. Articles 3, 15 of the cbd. See also Kiene, The Legal Protection of Traditional Knowledge in the Pharmaceutical Field, p. 24. For this term, see Glossary, wipo Doc. wipo/grtkf/ic/28/inf/7, Annex p. 39. Antons in Antons, pp. 3 f.

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2(1) of the Berne Convention (1971).36 Furthermore, wipo and unesco elaborated ‘Model Provisions for National Laws on the Protection of Expressions of Folklore Against Illicit Exploitation and Other Prejudicial Actions’.37 Traditional knowledge stricto sensu does not fall under copyright law because it is, by its very nature, either an invention or a discovery.38 On a related note, the economic and moral rights of performers of folklore are covered by the wipo Performances and Phonograms Treaty and, once in force, the Beijing Treaty on Audiovisual Performances.39 Coming back to our introductory example, national, regional and international protection against the unauthorized use of traditional knowledge is conceivable. Tanzania is a member of the African Regional Intellectual ­Property Organization (the ‘aripo’), but has not signed the Swakopmund Protocol on the Protection of Traditional Knowledge and Expressions of Folklore (the ‘­Swakopmund Protocol’), which was negotiated under the auspices of the aripo. In any event, the Protocol is not in force yet.40 At the same time, the national law of Tanzania does not provide sui generis protection either.41 The Traditional and Alternative Medicines Act contains professional rules for ­traditional and alternative health practitioners, but does not provide protection for traditional medicine as such. Even if Tanzania had a sui generis scheme, its remit would end at the border, i.e., a Tanzanian act could not guarantee the 36

37 38 39 40 41

Cf. Sections 1(3), (5bis), 6, 18(iv) of the Tunis Model Law on Copyright; The Protection of Traditional Knowledge and Folklore, wto Doc. ip/C/W/370/Rev.1, para. 31 first bullet; unctad, Systems and National Experiences for Protecting Traditional Knowledge, Innovations and Practices, un Doc. td/B/com.1/em.13/2, para. 43; wipo Publication No. 933, pp. 23 f; Lukose, pp. 142 ff; Biber-Klemm et al. in Biber-Klemm/Cottier, p. 76; Sinjela/Ramcharan, p. 12; Simon, p. 1637. Contra Salako, p. 326; Weeranworawit in Bellmann/Dutfield/Meléndez-Ortiz, p. 159; Hilty, pp. 908 ff; Lucas-Schloetter in von Lewinski, pp. 383 ff; Westkamp, ‘The Recognition and Status of Traditional Knowledge in the Conflict of Laws’, pp. 701 ff; RaoRane, p. 829, 835 ff, 851 f; Ragavan, pp. 16 ff. For Australian copyright law in relation to traditional cultural expressions and expressions of folklore, see Board of Studies nsw, Protecting Australian Indigenous Art, pp. 25 ff. For related rights, see Lucas-Schloetter in von Lewinski, pp. 356 f, 398. wipo Publication No. 933, p. 29; Antons in Antons, p. 42; Lucas-Schloetter in von Lewinski, pp. 447 ff. See below p. 227. Article 2(a) of the respective Treaty. wipo, Other ip Treaties accessed 8 December 2015. wipo, United Republic of Tanzania wipo Lex accessed 8 December 2015.

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protection of Tanzanian traditional knowledge abroad.42 However, Tanzania joined the wto in 1995. As a wto Member, the country is bound by the trips Agreement. While it is true that this Agreement does not make any express reference to traditional knowledge,43 it was shown above that the Members are obliged, by virtue of paragraph 1 of Article 10bis of the Paris Convention (1967), to assure ‘effective protection against unfair competition.’44 This raises the question of whether the misappropriation of traditional knowledge constitutes an ‘act of unfair competition’ within the meaning of paragraph 2 of that Article.45 B The Traditional Knowledge Debate The debate on traditional knowledge results from an imbalance in the protection of inventive and creative achievements from industrialized countries, on the one hand, and traditional intellectual achievements mainly originating in developing countries, on the other hand.46 Western countries have long used intellectual property rights in order to protect their intellectual achievements, in fact since the 15th century.47 The wipo eventually adopted the Western protection system which has subsequently become the worldwide standard.48 In 1993, scholars from different countries signed the so-called ‘Bellagio Declaration’ in which they made the following assertion: Contemporary intellectual property law is constructed around a notion of the author as an individual, solitary and original creator, and it is for this figure that its protections are reserved. Those who do not fit this model – custodians of tribal culture and medical knowledge, collectives practicing traditional artistic and musical forms, or peasant cultivators of valuable seed varieties, for example – are denied intellectual property protection. 42 43 44 45 46 47 48

See below p. 159. Cottier/Panizzon, pp. 378 f. See above p. 38. Cf. Taubman/Leistner in von Lewinski, pp. 111, 176. Bhaur, p. 353; Bratspies, pp. 325 ff, 335; Arezzo, p. 399; Biber-Klemm/Cottier, pp. 159, 205; Subbiah, pp. 530, 540, 559. Cullet et al. in Biber-Klemm/Cottier, p. 151; Gervais, ‘Intellectual Property, Trade & Development’, p. 515; Janke, p. 1. Permanent Forum on Indigenous Issues, Report of the Secretariat on Indigenous traditional knowledge, un Doc. E/C.19/2007/10, para. 20; Kiene, The Legal Protection of Traditional Knowledge in the Pharmaceutical Field, p. 142; Varadarajan, p. 379; Anderson, para. 1.1.3; von Lewinski, p. 516.

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The trips Agreement incorporated the substantive provisions of the wipo-­ administered treaties and extended them in part.49 Additionally, by means of the wto dispute settlement mechanism, the Western intellectual property model has become globally enforceable.50 1 Protection by Conventional Intellectual Property Rights For a number of reasons, the protection of traditional knowledge on the basis of intellectual property rights, as provided for in the trips Agreement, is problematic:51 First of all, there are practical obstacles, such as holders of traditional knowledge being unaware of their legal options, procedures being document-intensive, or legal expenses (e.g. for the application for or defence of a patent) being high.52 In the vast majority of cases, holders would need help to describe their knowledge in technical or scientific terms, as required by patent offices.53 Apart from that, it may be difficult to identify the right holder(s), especially when, as is the case more often than not, the knowledge is spread across a community or several communities.54 Besides, barring geographical indications, collective trademarks and collecting societies, the established

49 50 51

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Articles 2.1, 9.1.1, 35 of the trips Agreement. See Gervais, The trips Agreement, para. 2.45. See above p. 38. Cf. Article 64.1 of the trips Agreement. See Strydom, ‘Environment and Indigenous Peoples’ in mpepil, para. 15; Varadarajan, p. 381; Seuba in Correa/Yusuf, p. 389. The Protection of Traditional Knowledge and Folklore, wto Doc. ip/C/W/370/Rev.1, para. 32; wipo Publication No. 933, p. 30; Draft Gap Analysis, wipo Doc. wipo/grtkf/ic/13/5(b) Rev., Annex ii pp. 3 ff; Dagne, ‘The Protection of Traditional Knowledge in the Knowledge Economy’, pp. 147 f; von Lewinski, pp. 82, 522. The Protection of Traditional Knowledge and Folklore, wto Doc. ip/C/W/370/Rev.1, para. 32 fourth bullet; unctad, Systems and National Experiences for Protecting Traditional Knowledge, Innovations and Practices, un Doc. td/B/com.1/em.13/2, para. 35; Dagne, Intellectual Property and Traditional Knowledge in the Global Economy, p. 4; Gubarev, pp. 91 f; Kiene, The Legal Protection of Traditional Knowledge in the Pharmaceutical Field, p. 53; Varadarajan, p. 384; de Werra, p. 157. Cf. Article 29.1 of the trips Agreement. See Garcia, p. 18; Subbiah, p. 546. The Protection of Traditional Knowledge and Folklore, wto Doc. ip/C/W/370/Rev.1, para. 32 first and third bullet; List and Brief Technical Explanation of Various Forms in which Traditional Knowledge May be Found, wipo Doc. wipo/grtkf/ic/17/inf/9, Annex paras. 43 ff; Permanent Forum on Indigenous Issues, Report of the Secretariat on Indigenous traditional knowledge, un Doc. E/C.19/2007/10, para. 32; Dagne, Intellectual Property and Traditional Knowledge in the Global Economy, p. 4; Bubela/Gold, p. 3; Ruiz Muller, p. 9; Varadarajan, p. 384; von Lewinski, p. 509; Kiene, The Legal Protection of Traditional Knowledge in the Pharmaceutical Field, p. 152.

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­intellectual property system does not grant communitarian rights.55 It is therefore contended that the trips Agreement serves more the interests of commercial entities than communities.56 (a) Patents Concerning patent protection, one has to bear in mind that traditional knowledge, as the name suggests, evolved over a long period of time, in some instances up to millenniums.57 Even though traditional knowledge continues to develop,58 for the most part, the intellectual added value was not achieved by the living generation of custodians but by their ancestors, which is why a demonstrable contribution is difficult to prove.59 In consequence, it is rather doubtful whether this kind of knowledge constitutes an invention that is ‘new’ within the meaning of Article 27.1 of the trips Agreement.60 Correspondingly, Section  3(p) of the Indian Patents Act declares unpatentable ‘an invention which, in effect, is traditional knowledge or which is an aggregation or duplication of known properties of traditionally known component or components.’61 What is more, ethnopharmacologists or ethnobotanists have largely published on the application of traditional knowledge associated with genetic resources.62 Indeed, they are requested to document its use according to Article 10.4 of the fao’s International Code of Conduct for Plant Germplasm Collecting and 55

Draft Gap Analysis, wipo Doc. wipo/grtkf/ic/13/5(b) Rev., Annex i paras. 86 ff; Cottier/ Panizzon in Biber-Klemm/Cottier, pp. 218 f; Kaushik in Twarog/Kapoor, p. 86. 56 Review of Article 27.3(b) of trips Agreement, wto Doc. ip/C/W/545, para. 19; Bratspies, p. 331; Arewa, p. 166; Sinjela/Ramcharan, p. 15; Cottier/Panizzon, p. 381. 57 Protection of Biodiversity and Traditional Knowledge, wto Doc. ip/C/W/198, para. 13; Muńoz Téllez/Zografos Johnsson in Gervais, p. 317; Lukose, p. 71; Unnikrishnan/Suneetha, p. 34. For Hawaiian traditional knowledge, see paragraph 11 of the Paoakalani Declaration. 58 Cf. Article 2(1), (2)(d) of the ich Convention (‘intangible cultural heritage … is constantly recreated by communities and groups’). See also Bubela/Gold, p. 3; Ruiz Muller, p. 8; Kiene, The Legal Protection of Traditional Knowledge in the Pharmaceutical Field, pp. 151 f. 59 Dagne, Intellectual Property and Traditional Knowledge in the Global Economy, p. 4; Ebermann, pp. 119 f; Gubarev, p. 91; Kuanpoth in Malbon/Lawson, p. 79. 60 The Protection of Traditional Knowledge and Folklore, wto Doc. ip/C/W/370/Rev.1, para. 32 second bullet; unctad-ictsd Resource Book, p. 59; Dagne, ‘The Protection of Traditional Knowledge in the Knowledge Economy’, pp. 147 f; Ebermann, pp. 118 ff; Kiene, The Legal Protection of Traditional Knowledge in the Pharmaceutical Field, pp. 51 f; Kuanpoth in Malbon/Lawson, p. 79; Khan, p. 88. 61 Cf. Taubman/Leistner in von Lewinski, p. 92, but see also pp. 96, 124 f. 62 Roundtable on Intellectual Property and Traditional Knowledge, wipo Doc. wipo/iptk/ rt/99/3, p. 9; Kiene, The Legal Protection of Traditional Knowledge in the Pharmaceutical Field, p. 52; Oviedo/Gonzales/Maffi in Twarog/Kapoor, p. 71.

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Transfer.63 Further, the Beijing Declaration on Traditional Medicine calls for the wide communication of traditional medicine. The ensuing disclosure deprives traditional knowledge of its novelty within the meaning of patent law.64 In view of the intergenerational aspect of traditional knowledge, patent protection may not even be sought by the custodians, given that patents are limited in time.65 The term of protection guaranteed by Article 33 of the trips Agreement (at least ‘a period of twenty years counted from the filing date’) is not satisfactory for the hereditary needs of traditional knowledge holders.66 Moreover, according to Article 27.3(a) of the trips Agreement, ‘diagnostic, therapeutic and surgical methods for the treatment of humans or animals’ may be excepted from patentability.67 This provision is broad enough to exclude traditional medicinal methods or new therapeutic uses of known healing plants.68 (b) Plant Varieties Should traditional knowledge be used to develop a new plant variety, this plant variety (not the traditional knowledge that led to its development) may find protection under the International Convention for the Protection of New Varieties of Plants (the ‘upov Convention’).69 Some commentators, however, have doubts whether plant varieties of indigenous and local communities meet the requirements of uniformity and stability, as set out in Articles 5, 8 f of the 63

‘For this purpose, as much as local knowledge about the resources (including observations on environmental adaptation and local methods and technologies of preparing and using the plant) should be also documented; photographs may be of special value.’ 64 Kiene, The Legal Protection of Traditional Knowledge in the Pharmaceutical Field, p. 52; de Carvalho, The trips Regime of Antitrust and Undisclosed Information, para. 39.2.53. See below p. 164. Incidentally, this is why the African Model Legislation makes clear in Article 23(4) that ‘[t]he publication of a written or oral description of a biological resource and its associated knowledge and information, or the presence of these resources in a genebank or any other collection, or its local use, shall not preclude the local community from exercising its community intellectual rights in relation to those resources.’ 65 Basic point 7 of the coica Statement. See Dagne, Intellectual Property and Traditional Knowledge in the Global Economy, p. 4; Bubela/Gold, p. 6; Kiene, The Legal Protection of Traditional Knowledge in the Pharmaceutical Field, p. 51. 66 Dagne, ‘The Protection of Traditional Knowledge in the Knowledge Economy’, p. 148. 67 unctad-ictsd Resource Book, pp. 384 ff. 68 Ibid p. 387. 69 Cf. the second sentence of Article 27.3(b) of the trips Agreement. See Review of the Provisions of Article 27.3(b), wto Doc. ip/C/W/369/Rev.1, paras. 53, 67; Lukose, p. 149; Kiene, The Legal Protection of Traditional Knowledge in the Pharmaceutical Field, p. 53; Sinjela/ Ramcharan, p. 12.

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1991 Act.70 That said, the novelty requirement in Articles 5(1)(i), 6 makes the upov Convention a tool for defensive protection against third-party breeders’ rights.71 (c) Geographical Indications It has been submitted that, considering the dynamism of traditional knowledge and its linkage to local communities, geographical indications might play a major part in its protection.72 The advantages for traditional knowledge holders are as follows: First, the term of protection is not limited, which accommodates their wish for protection over generations.73 Second, geographical indications do not presuppose novelty or an inventive step like patents, but relate to the geographical origin of a product, the consequence being that the personal scope of protection can comprise a whole community located in one place.74 Third, an indication in the form of a symbol is sufficient; a ‘geographical name’ is not required.75 Accordingly, the second sentence of Article 164(2) (c) of the cariforum-eu Economic Partnership Agreement provides: the ec Party and the Signatory cariforum States shall pay particular attention to promoting and preserving local traditional knowledge and biodiversity through the establishment of geographical indications. As a side note, the geographical origin within the meaning of Article 22.1 of the trips Agreement is confined to ‘the territory of a Member, or a region or 70

71 72

73 74 75

Given the differing demands of these communities in terms of variability. See Adam, pp. 67 f; Kiene, The Legal Protection of Traditional Knowledge in the Pharmaceutical Field, pp. 53 f; Correa, ‘Traditional Knowledge and Intellectual Property’, p. 6. wipo Publication No. 920, p. 15. For defensive protection, see p. 231. The Protection of Traditional Knowledge and Folklore, wto Doc. ip/C/W/370/Rev.1, para. 31 last bullet; Intellectual Property and Sustainable Development, wipo Doc. wipo/tk/mct/11/inf/2, para. 66; Dagne, Intellectual Property and Traditional Knowledge in the Global Economy, pp. 209 f; Dagne, ‘The Identity of Geographical Indications and Their Relation to Traditional Knowledge in Intellectual Property Law’, p. 283; Drahos/ Frankel, pp. 135 ff, 186; Kiene, The Legal Protection of Traditional Knowledge in the Pharmaceutical Field, pp. 54 f; Taubman/Leistner in von Lewinski, pp. 90 ff, 107; Hoekman/ Kostecki, p. 402. Taubman/Leistner in von Lewinski, p. 107; Raustiala/Munzer, p. 346; Biber-Klemm et al. in Biber-Klemm/Cottier, pp. 249, 252 f. Lukose, p. 148; Gervais in Drahos/Frankel, p. 123; Kiene, The Legal Protection of Traditional Knowledge in the Pharmaceutical Field, p. 54; Raustiala/Munzer, p. 346. Haugen, p. 670.

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locality in that territory’. This makes sharing arrangements necessary, should a community settle in a region that is split between the territory of two or more Members.76 In terms of substantial protection, geographical indications mainly have an identifying and advertising function for goods (‘where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin’).77 They do not protect knowledge ‘as such’, i.e. its content.78 On this account, geographical indications cannot prevent the misappropriation of traditional knowledge by third parties using another indication.79 The same is true of trademarks, industrial designs, as well as copyrights and related rights;80 they can merely serve as supplementary means of protection.81 Furthermore, the protection under geographical indications would be forfeited if the indications became generic names and were thus deprived of their identifying function.82 Anderson warns of the ‘danger of granting monopoly rights over knowledge to one region when that knowledge is, in reality, spread over many regions.’83 This view, however, is based on a misconception. As seen, geographical indications do not concede monopoly rights over knowledge.84 In sum, existing intellectual property rights do not afford full protection to traditional knowledge.85 Indigenous peoples and developing countries perceive this as a deficit of the intellectual property system, and therefore reject it in its present form.86 We will expand on this hereinafter. 76 77

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81 82 83 84 85 86

Gervais in Drahos/Frankel, p. 142. See also Articles 10, 11(2) of the Nagoya Protocol. Gervais in Drahos/Frankel, p. 123; Stoll/Busche/Arend, Before Articles 22–24 paras. 13 f, Article 22.2 para. 3; Das, p. 472; Taubman, pp. 237 f; Fusco, p. 240; Cottier/Germann in Takagi/Allman/Sinjela, p. 131. Ruiz Muller, p. 16. The Protection of Traditional Knowledge and Folklore, wto Doc. ip/C/W/370/Rev.1, para. 31 last bullet; Draft Gap Analysis, wipo Doc. wipo/grtkf/ic/13/5(b) Rev., Annex i para. 51; Blakeney in Le Gall, p. 72; Drahos/Frankel, p. 187; Kiene, The Legal Protection of Traditional Knowledge in the Pharmaceutical Field, p. 54; Varadarajan, pp. 384 f; Hilty, p. 907; von Lewinski, pp. 107 f, 130 f, 511. Draft Gap Analysis, wipo Doc. wipo/grtkf/ic/13/5(b) Rev., Annex i paras. 53 f; Kiene, The Legal Protection of Traditional Knowledge in the Pharmaceutical Field, p. 55; Varadarajan, pp. 384 f; Hilty, p. 908. Blakeney in Drahos/Frankel, p. 187; Biber-Klemm/Cottier, pp. 216, 231 f, 253. Biber-Klemm et al. in Biber-Klemm/Cottier, p. 252. Anderson, para. 3.7.2.6. Biber-Klemm et al. in Biber-Klemm/Cottier, p. 252. Krattiger et al., p. 174. wipo Publication No. 768, Part 2, p. 217; Anderson, para. 3.7.2.1; Cottier/Panizzon in BiberKlemm/Cottier, pp. 205, 216; Arewa, p. 170; Conway-Jones, pp. 760 f.

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2 Stance of Developing Countries and Indigenous Peoples There are over 350 million indigenous people in more than 70, mostly developing, countries.87 Since developing countries hold approximately 90% of the traditional knowledge worldwide, these countries and the custodians of traditional knowledge are in coalition.88 Their stance is as follows:89 Traditional knowledge undoubtedly constitutes an intellectual activity within the meaning of Article 2(viii) of the wipo Convention.90 But whereas the trips Agreement forces them – under threat of trade sanctions – to protect the Western intellectual achievements against exploitation in their national legal order (and thus preclude domestic economic operators from taking advantage of them), their own intellectual achievements are in large part ineligible for protection.91 So they feel at a disadvantage because prior to the trips Agreement they could freely copy Western technology and products of Western entertainment industry.92 Twarog highlights that about 95% of all patents are held in industrialized countries.93 However, this finding is related to the higher profitability of markets in those countries, rather than an unjust intellectual property system.94 When companies from industrialized countries export, they will regularly seek patent protection for their technology in the importing country due to the territoriality of patents.95 The number of patents is thus indicative of a country as a research location and/or an export market for ip-intensive products. The fact 87

88 89

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92 93 94 95

Permanent Forum on Indigenous Issues, Report of the Secretariat on Indigenous traditional knowledge, un Doc. E/C.19/2007/10, para. 33; Strydom, ‘Environment and Indigenous Peoples’ in mpepil, para. 1; Anderson, para. 1.3.1. who Report, p. 28; Subramanian in Hoekman/Mattoo/English, p. 382; Twarog in Twarog/ Kapoor, p. 62. Cf. Indigenous Peoples’ Statement on trips; Suva Statement on Indigenous Peoples’ Knowledge and Intellectual Property Rights; Tulalip Tribes in Note on the Meanings of the Term ‘Public Domain’, wipo Doc. wipo/grtkf/ic/17/inf/8, Annex para. 89; Review of the Provisions of Article 27.3(b), wto Doc. ip/C/W/165; Review of Implementation of the Agreement under Article 71.1, wto Doc. ip/C/W/166. Biber-Klemm et al. in Biber-Klemm/Cottier, p. 99. The Protection of Traditional Knowledge and Folklore, wto Doc. ip/C/W/370/Rev.1, para. 9; Lukose, pp. 123 ff, 291 ff; Gubarev, p. 67; Gervais, ‘Agreement on Trade-Related Aspects of Intellectual Property Rights (1994)’ in mpepil, para. 67; Strydom, ‘Environment and Indigenous Peoples’ in mpepil, para. 12; Varadarajan, p. 372. Dutfield, ‘Protecting Traditional Knowledge’, p. 24; Ghosh, ‘Globalization, Patents, and Traditional Knowledge’, p. 90. Twarog in Twarog/Kapoor, p. 62. Cf. Cottier, Trade and Intellectual Property Protection in wto Law, p. 434. Cf. Bender/Michaelis in Hilf/Oeter, § 22 para. 3; Correa/Mashayekhi/Tuerk, p. 21; Sinjela/ Ramcharan, p. 12.

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that merely 5% of patents are in developing countries means consequently two things: not only do they have less innovation, but also less trade in ipintensive products. Whether the absence of any explicit mention in the trips Agreement really entails a lack of traditional knowledge protection remains to be seen.96 What is certainly true is that the issue has been awaiting a specific regulatory solution for some time now:97 − The negotiations in the Doha Round have come to a deadlock in that regard.98 − The wipo published draft provisions for the protection of traditional knowledge,99 which were worked out by the igc and are based on the structure of Article 10bis of the Paris Convention (1967).100 However, whether such a sui generis regime will ever come into existence is a matter of speculation.101 − As for the cbd, the pertinent provision, Article 8(j), does not constitute a comprehensive and mandatory regulation and is limited to traditional knowledge associated with genetic resources.102 A common issue in all three forums has been the involvement of indigenous peoples in the negotiation and decision-making processes.103 96

97 98

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In this sense, Dagne, ‘The Protection of Traditional Knowledge in the Knowledge Economy’, pp. 155 f; Curci, p. 60; Bhaur, p. 349; Kuanpoth in Malbon/Lawson, p. 78; Manley, p. 114; Khan, p. 106. Anderson, paras. 1.1.5 f; Hilty, pp. 883 ff, 901; Tobin in Kamau/Winter, pp. 101 f. Cf. paragraph 19 of the Doha Ministerial Declaration. For the state of affairs, see wto, trips: Reviews, Article 27.3(b) and Related Issues – Background and the current situation (November 2008) accessed 8 December 2015. See also The Relationship Between the trips Agreement and the cbd, wto Doc. ip/C/W/368/Rev.1, paras. 28 ff. wipo, Draft Provisions/Articles for the Protection of Traditional Knowledge and Traditional Cultural Expressions, and ip & Genetic Resources accessed 8 December 2015. Revised Objectives and Principles, wipo Doc. wipo/grtkf/ic/18/5, Annex p. 38; Kiene, The Legal Protection of Traditional Knowledge in the Pharmaceutical Field, pp. 252, 254. who/wipo/wto, p. 93; Taking Forward the Review of Article 27.3(b) of the trips Agreement, wto Doc. ip/C/W/404, p. 5; Kiene, The Legal Protection of Traditional Knowledge in the Pharmaceutical Field, pp. 274 ff. See also paragraph 9 of the Bonn Guidelines. Gordon, pp. 629 ff; Vélez in gtz, pp. 245 f; Anderson, paras. 1.3.3, 1.3.9, 3.6.4.3; Tobin in Kamau/ Winter, p. 110. Cf. Mechanisms to promote the effective participation of indigenous and local

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By contrast, when transnational corporations are confronted with a failure of the prevailing intellectual property system to provide sufficient protection for one of their technologies, they have the lobbying clout to push for a new intellectual property right or a sui generis regime, as happened in the cases of plant varieties,104 topographies of integrated circuits,105 and test data.106,107 It is scant comfort that big trading powers like the European Union or the United States proclaim their will to promote traditional knowledge in bi- and plurilateral trade agreements.108 In view of this discrepancy in the treatment of commercially valuable knowledge of companies, on the one hand, and equally valuable knowledge of indigenous peoples, on the other hand, it comes as no surprise that indigenous peoples and developing countries alike view the current intellectual property system, as laid out in the trips Agreement, not only as an imposition of Western concepts but as profoundly unjust.109 In their experience, the current system is an obstacle to their economic development and provides for the exploitation of traditional knowledge which they ­consider ‘theirs’.110

104 105 106 107 108

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communities in the work of the Convention, cbd Doc. cop 10 Decision x/40; wipo, Participating in the igc accessed 8 December 2015. Cf. Article 27.3(b) of the trips Agreement. Cf. Article 35 ff of the trips Agreement. Cf. Article 39.3 of the trips Agreement. wipo Publication No. 768, Part 1, pp. 6, 32, Part 2, p. 233; Dutfield in Twarog/Kapoor, p. 145. For the European Union, see Article 10.40(1) of the eu-South Korea Free Trade Agreement; Article 229(5) of the eu-Central America Association Agreement; Article 201 of the Trade Agreement between the European Union and Colombia and Peru; Article 150 of the cariforum-eu Economic Partnership Agreement; Article 23(n) of the Cotonou Agreement. For the United States, see Article 18.11(3) of the us-Peru Trade Promotion Agreement and the us-Colombia Trade Agreement as well as the respective Understandings Regarding Biodiversity and Traditional Knowledge. The Indigenous Peoples’ Statement on trips; basic point 8 of the coica Statement; recital 6 of the Preamble to the Suva Statement on Indigenous Peoples’ Knowledge and Intellectual Property Rights; paragraph 3 of the Paoakalani Declaration; The Protection of Traditional Knowledge and Folklore, wto Doc. ip/C/W/370/Rev.1, para. 9 second bullet; Article 27.3(b), Relationship Between the trips Agreement and the cbd and Protection of Traditional Knowledge and Folklore, wto Doc. ip/C/W/441/Rev.1, para. 1; Review of Implementation of the Agreement under Article 71.1, wto Doc. ip/C/W/166, para. 7; Gervais, The trips Agreement, paras. 1.90, 1.92. Cf. basic point 2 of the coica Statement; the specific points of the Sabah Declaration; Subbiah, p. 540. See above p. 147.

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In particular, they are apprehensive about third parties patenting industrial or commercial uses of traditional knowledge (in isolation or in combination with other substances).111 Real-life examples are the kava, maca, turmeric and camu camu cases.112 At the root of the problem is the denial of prior art which ensues from the ignorance of patent officers concerning foreign traditional knowledge.113 In Japan, undocumented traditional knowledge held abroad is not even recognized, cf. Article 29(1)(iii) of the Japanese Patent Act.114,115 Because it is very costly to have an erroneously granted patent revoked, it is only governments or large organizations that can afford it, and regularly not indigenous and local communities, especially if patents in several Members need to be invalidated.116 The turmeric, neem, basmati and Enola bean cases illustrate this.117 Above, we discussed whether indigenous and local ­communities 111 Cf. basic points 13 and 16 of the coica Statement; Review of Article 27.3(b) of trips Agreement, wto Doc. ip/C/W/545, paras. 29 f; Analysis of Potential Cases of Biopiracy, wto Doc. ip/C/W/458, paras. 1, 6 f; India in Minutes of Meeting, wto Doc. ip/C/M/30, para. 170; von Lewinski, p. 511; Alikhan/Mashelkar, p. 82; Almeida in Sinjela, pp. 221 f. 112 Analysis of Potential Cases of Biopiracy, wto Doc. ip/C/W/458, paras. 12 ff; Article 27.3(b), Relationship Between the trips Agreement and the cbd and Protection of Traditional Knowledge and Folklore, wto Doc. ip/C/W/441/Rev.1, pp. 9 ff; Dagne, ‘The Protection of Traditional Knowledge in the Knowledge Economy’, pp. 144 f; Ebermann, p. 2; Kariyawasam, pp. 82 f; Alikhan/Mashelkar, pp. 74 ff; Biber-Klemm/Cottier, pp. 135 f, 137, 224 f. For a copyright case, see Anderson, paras. 2.3.1 ff. 113 Note on the Meanings of the Term ‘Public Domain’, wipo Doc. wipo/grtkf/ic/17/inf/8, Annex paras. 59 ff; The Protection of Traditional Knowledge and Folklore, wto Doc. ip/ C/W/370/Rev.1, para. 20; Dutfield in Bubela/Gold, pp. 104 f; Cottier/Jevtic in Drexl et al., pp. 687 f; Biber-Klemm et al. in Biber-Klemm/Cottier, p. 255. 114 ‘An inventor of an invention that is industrially applicable may be entitled to obtain a patent for the said invention, except for the following: … (iii) inventions that were described in a distributed publication, or inventions that were made publicly available through an electric telecommunication line in Japan or a foreign country, prior to the filing of the patent application.’ 115 Taubman/Leistner in von Lewinski, p. 101; Garcia, p. 17; Arezzo, pp. 401 f. Note that the United States have amended their patent law: under 35 u.s.c. § 102(a)(1), ‘[a] person shall be entitled to a patent unless the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention’ (emphasis added). See also United States Patent and Trademark Office, Manual of Patent Examining Procedure, Section 2152.02(e). 116 The Protection of Traditional Knowledge and Folklore, wto Doc. ip/C/W/370/Rev.1, para. 22; India in Minutes of Meeting, wto Doc. ip/C/M/48, paras. 57 ff; de Werra, p. 157; Dutfield, Intellectual Property, Biogenetic Resources and Traditional Knowledge, p. 59. 117 Gubarev, pp. 87, 89; Ebermann, pp. 103 ff; Lukose, pp. 100 ff; Islam, pp. 29 ff; Khan, p. 125; Garcia, p. 8.

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might obtain patent protection for their traditional knowledge and cast doubt on it due to the novelty requirement in patent law.118 Notwithstanding that many traditional knowledge holders do not seek patent protection,119 it causes inconsistencies that some Members issue patents in cases in which other jurisdictions would deny the original holders patent rights.120 This can be explained by the fact that ‘new’ in Article 27.1 of the trips Agreement is not universally defined, the result being that Members apply varying definitions in their respective national laws: what is deemed to be new in one Member, may be regarded as common knowledge in another.121 Matters are different when traditional knowledge has been modified by a third party and a patent application is filed for a product or process that is based on the modification.122 I shall amplify this below.123 Against this background, indigenous peoples and developing countries insist on rebalancing the intellectual property system and strive for a more adequate consideration of their interests.124 Their request finds support in paragraph 2 of Resolution 2000/7 of the Sub-Commission on the Promotion and Protection of Human Rights, which declares: that since the implementation of the trips Agreement does not adequately reflect the fundamental nature and indivisibility of all human 118 See above p. 142. 119 See above p. 142. 120 Article 27.3(b), Relationship Between the trips Agreement and the cbd and Protection of Traditional Knowledge and Folklore, wto Doc. ip/C/W/441/Rev.1, para. 3; Garcia, p. 12; Cullet et al. in Biber-Klemm/Cottier, pp. 117 f; Dutfield, Intellectual Property, Biogenetic Resources and Traditional Knowledge, p. 57. 121 Gubarev, p. 80; Kiene, The Legal Protection of Traditional Knowledge in the Pharmaceutical Field, p. 52; Taubman/Leistner in von Lewinski, p. 94; Garcia, pp. 10 f, 13, 17; Cullet et al. in Biber-Klemm/Cottier, pp. 117 f. 122 The Protection of Traditional Knowledge and Folklore, wto Doc. ip/C/W/370/Rev.1, para. 23; Gervais, The trips Agreement, para. 1.93; Ebermann, pp. 102, 112, 132 f, 180; Varadarajan, p. 385; Kiene, The Legal Protection of Traditional Knowledge in the Pharmaceutical Field, pp. 51 f; Kuanpoth in Malbon/Lawson, p. 79; Stoll in Stoll/Busche/Arend, Introduction i para. 36. 123 See below p. 231. 124 Articles 1.2, 2.3 of the Mataatua Declaration; basic points 12 ff of the coica Statement; Indigenous Peoples’ Statement on trips; Article 5.1 of the Suva Statement on Indigenous Peoples’ Knowledge and Intellectual Property Rights; Review of Article 27.3(b) of trips Agreement, wto Doc. ip/C/W/545, paras. 6, 19, 30; The Protection of Traditional Knowledge and Folklore, wto Doc. ip/C/W/370/Rev.1, para. 9; Anderson, para. 4.1.2; Frein/Meyer, pp. 201 f.

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rights, including the right of everyone to enjoy the benefits of scientific progress and its applications, the right to health, the right to food and the right to self-determination, there are apparent conflicts between the intellectual property rights regime embodied in the trips Agreement, on the one hand, and international human rights law, on the other. 3 The Public Domain Under the Classical Doctrine What is the other side of the coin? First of all, one needs to bear in mind that recitals 1 and 2(b) of the Preamble to the trips Agreement require ‘adequate protection’ and ‘adequate standards and principles’, not optimal ones from the standpoint of intellectual property right holders.125 Furthermore, the provisions in the trips Agreement on technology transfer, Articles 7 and 8.2, do not prescribe the direction of the transfer. That is, they also apply to the transfer of technology from a developing country Member to a developed one.126 Their ratio legis is to promote the dissemination of knowledge everywhere. This is in line with Article 17(2) of the cbd which provides for the exchange of information between all Contracting Parties, including ‘information on … indigenous and traditional knowledge’, and Article 18(4) of the cbd which fosters ‘methods of cooperation for the development and use of technologies, including indigenous and traditional technologies’.127 In the same vein, Article 16(g) of the unccd calls for the Parties to the Convention to ‘exchange information on local and traditional knowledge’ and Article 18(2)(a) mandates, in relevant part, that The Parties shall … use in particular relevant traditional and local technology, knowledge, know-how and practices and, to that end, they undertake to: (a) disseminate such information, where appropriate, in cooperation with relevant intergovernmental and non-governmental organizations … (emphasis added) Articles 18(2)(c), (d) and 19(1)(d) of that Convention further elaborate on the dissemination and ‘wide use’ of traditional knowledge. From this, one can infer a reciprocity to the effect that developing countries shall have access to technology in developed countries to the same extent that developed countries shall have access to traditional knowledge.128 125 126 127 128

See above p. 49. See also United States District Court, N.D. Illinois, Apple v. Motorola. Article 66.2 of the trips Agreement e contrario. Tansey in Twarog/Kapoor, p. 50; Janke, p. 106. See also recital 3 of the Preamble to the wto Agreement.

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This, of course, does not preclude traditional knowledge protection because access to technology in developed countries is protected at any rate. The second sentence of Article 16.2 of the cbd relates to the ‘[a]ccess to and transfer of technology referred to in paragraph 1 above to developing countries’, i.e. ‘technologies that are relevant to the conservation and sustainable use of biological diversity or make use of genetic resources and do not cause significant damage to the environment’, and explicitly stipulates that ‘such access and transfer shall be provided on terms which recognize and are consistent with the adequate and effective protection of intellectual property rights.’ Intellectual property protection is the result of a legislative weighing of public and private interests, whereby not only competing economic interests but also conflicting human rights need to be measured against one another.129 Thus, the guarantee of individual legal protection needs to be balanced against participation rights.130 An example would be freedom of expression curtailing the scope of copyright.131 The prerequisites of intellectual property rights, like any other constituent elements, function as limits of the respective legal norms.132 Granting protection beyond those limits would therefore threaten to confound the differentiation, as embodied in the outcome of that weighing up.133 On this account, the classical doctrine draws the conclusion that, outside the scope of intellectual property rights, an economic activity must be free in principle.134 In other words, a subject matter that does not qualify (any longer) for an intellectual property right may be appropriated legally,135 cf. A ­ rticle 129 Cottier, ‘Industrial Property, International Protection’ in mpepil, paras. 6, 22; Abbott in Abbott/Breining-Kaufmann/Cottier, p. 164; Anderson/Wager, pp. 721 ff; Coombe in Maskus/Reichman, pp. 603 f. For United States law, see Supreme Court of United States, Dastar v. Twentieth Century Fox Film, pp. 33 f; Supreme Court of United States, Bonito Boats v. Thunder Craft Boats, pp. 150 f. 130 Cf. Articles 27(1), (2) of the udhr and 15(1)(a)–(c) of the icescr. See General Comment No. 17 (2005), un Doc. E/C.12/gc/17, paras. 4, 22 (‘reciprocally limitative’); Dutfield/Suthersanen, p. 218; Anderson/Wager, p. 724. 131 Oberster Gerichtshof [Austrian Supreme Court of Justice], Medienprofessor (2002) 51 Zeitschrift für Gewerblichen Rechtsschutz und Urheberrecht Internationaler Teil 341; Geiger, pp. 275 ff. 132 See above p. 72. 133 For German law, see Ohly in Ohly/Sosnitza, Einf D para. 80, § 4.9 para. 9/2. 134 Westkamp, ‘trips Principles, Reciprocity and the Creation of Sui-Generis-Type iprs’, pp. 837 f. 135 Khan, p. 88; Biber-Klemm/Szymura Berglas in Biber-Klemm/Cottier, pp. 19, 25, 101, 255; Anderson/Wager, p. 724; Westkamp, ‘trips Principles, Reciprocity and the Creation of Sui-Generis-Type iprs’, p. 840. For United States law, see Supreme Court of United States,

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18(1) of the Berne Convention.136 This area is generally referred to as the ‘public domain’.137 In domestic law, it is backed up by the freedom to pursue an economic activity.138 Pursuant to Article 70.3 of the trips Agreement, there is ‘no obligation to restore protection to subject matter which on the date of application of this Agreement for the Member in question has fallen into the public domain.’ In consequence, the appropriation of traditional knowledge cannot be unlawful ipso facto.139 Moreover, there is a general interest that access to traditional knowledge be open, e.g. for research (so-called ‘fair use’).140 It is well established that traditional knowledge can contribute to combating diseases or mitigating desertification and other repercussions of climate change.141 Hence, the monopolization of traditional knowledge could be ‘socially counterproductive’ in view of its importance to humanity.142 However, an argument to the same effect could be put forward against several intellectual property rights because they all protect something that is valuable or useful for society at large.143 As Article 17 of the trips Agreement epitomizes, interests of the public can be addressed through exceptions, such as a research exception, or compulsory licences on

Dastar v. Twentieth Century Fox Film, pp. 33 f; Port, p. 102. For German law, see Eck in Gloy/ Loschelder/Erdmann, § 56 para. 2; Götting, Wettbewerbsrecht, § 1 para. 34. 136 ‘This Convention shall apply to all works which, at the moment of its coming into force, have not yet fallen into the public domain in the country of origin through the expiry of the term of protection.’ 137 Scoping Study on Copyright and Related Rights and the Public Domain, wipo Doc. cdip/7/inf/2, Annex p. 5; Westlaw, Black’s Law Dictionary Online, ‘public domain’, No. 3; Hilty, p. 899; Cullet et al. in Biber-Klemm/Cottier, p. 114. Nijar, ‘Incorporating Traditional Knowledge in an International Regime on Access to Genetic Resources and Benefit Sharing’, p. 468, rightly points out that the fact that an intangible belongs to the public domain does not pre-empt the sharing of benefits arising from its utilization. 138 Deutch, pp. 515 f. For the content of this freedom in European Union law, see European Court of Justice, Judgment, Atlanta, paras. 12, 47; Ruffert in Ehlers, pp. 435 ff. 139 Cf. de Vrey, p. 312. 140 Cf. unctad-ictsd Resource Book, p. 399; Arezzo, p. 406; Long, p. 328. 141 Cf. Articles 16(g), 18(2)(b) of the unccd; fao and Traditional Knowledge, pp. 4 ff; Tobin, Indigenous Peoples, Customary Law and Human Rights, p. 156; Galloway McLean, pp. 6, 12 ff; Taubman/Leistner in von Lewinski, pp. 62 f, 73. See above p. 134. 142 Draft Gap Analysis, wipo Doc. wipo/grtkf/ic/13/5(b) Rev., Annex i para. 107; Chen, pp. 25 ff. See also Hilty in Hilty/Henning-Bodewig, Law Against Unfair Competition, p. 22. 143 Cf. Supreme Court of Illinois, Dissenting Opinion, Board of Trade of the City of Chicago v. Dow Jones, p. 123 (Simon J.); Cullet et al. in Biber-Klemm/Cottier, p. 115.

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the model of Article 31(l) of the tirps Agreement.144 Nonetheless, these considerations lead industrialized countries like Canada or the European Union to oppose perpetual protection for traditional knowledge. In particular, they stress that protection without any temporal limitation would impede scientific development, and thus amount to an innovation barrier.145 Even Dutfield, an outspoken proponent of traditional knowledge protection, admits that nowadays Edison’s heirs do not profit from sales of light bulbs anymore, and in some countries never did.146 As a matter of fact, a call for a balance of interests is already enshrined in the trips Agreement itself, viz. Article 7 thereof:147 The protection and enforcement of intellectual property rights should contribute to the promotion of technological innovation and to the transfer and dissemination of technology, to the mutual advantage of producers and users of technological knowledge and in a manner conducive to social and economic welfare, and to a balance of rights and obligations. (emphasis added) In the present case, Article 39.2 of the trips Agreement might show the way: there, the manner of obtaining the piece of information is crucial.148 Similarly, Article 13(3) of the Egyptian Law on the Protection of Intellectual Property Rights stipulates that [w]here the invention involves … traditional medicinal, agricultural, industrial or handicraft knowledge, cultural or environmental heritage, the inventor should have acquired the sources in a legitimate manner. This begs the question of where the illicit element should lie when, for example, a researcher who lived among a tribe with the approval of the elders starts to imitate the methods he has explored.149 The case may be different if 144 De Werra, pp. 170 f; Anderson/Wager, p. 725; Cottier/Panizzon, p. 391. 145 Canada in Revised Objectives and Principles, wipo Doc. wipo/grtkf/ic/18/5, Annex pp. 26, 50 footnote 149; the European Union in Minutes of Meeting, wto Doc. ip/C/M/43, paras. 42, 65. 146 Dutfield, ‘The Public and Private Domains’, p. 284. 147 Anderson/Wager, pp. 723, 725. 148 See also Taubman/Leistner in von Lewinski, p. 87; Varadarajan, pp. 403 f. 149 Cf. wipo Publication No. 768, Part 2, pp. 75, 96.

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the researcher concealed his true motives and obtained the approval by false pretences.150 4 Conflicts of Interests Generally speaking, traditional knowledge is caught between the conflicting priorities of common heritage of mankind and ensuing ‘open source’ proclamations, on the one hand,151 and claims to ownership, on the other.152 The fact that both statements are put forth by indigenous peoples complicates the discussion, cf. the Indigenous Peoples’ Statement on the Trade-Related Aspects of Intellectual Property Rights (trips) of the wto Agreement (the ‘Indigenous Peoples’ Statement on trips’),153 Article 102 of the Indigenous Peoples’ Earth Charter,154 and recitals 5, 7 f of the Preamble to the Mataatua Declaration on Cultural and Intellectual Property Rights of Indigenous Peoples (the ­‘Mataatua Declaration’).155 As far as genetic resources are concerned, the notion of ­common heritage of mankind has been dismissed,156 apart from the ‘plant 150 Cf. wipo Publication No. 768, Part 2, pp. 173, 200; de Carvalho, ‘From the Shaman’s Hut to the Patent Office’, pp. 152 ff; Janke, pp. 31, 33 f. 151 Glossary, wipo Doc. wipo/grtkf/ic/28/inf/7, Annex p. 30; Note on the Meanings of the Term ‘Public Domain’, wipo Doc. wipo/grtkf/ic/17/inf/8, Annex paras. 50 ff; Tobin in Kamau/Winter, p. 104; Bratspies, p. 337; Chen, p. 27; Brush, p. 66. 152 Cf. Analysis of Potential Cases of Biopiracy, wto Doc. ip/C/W/458, para. 8; Kiene, The Legal Protection of Traditional Knowledge in the Pharmaceutical Field, p. 214; Nijar, ‘Incorporating Traditional Knowledge in an International Regime on Access to Genetic Resources and Benefit Sharing’, p. 459; Kohls, pp. 113, 121. See also Articles 67, 68(1), 70(2)(f) of Annex vii to the Bangui Agreement. 153 ‘we, indigenous peoples from around the world, believe that nobody can own what exists in nature except nature herself. A human being cannot own its own mother. Humankind is part of Mother Nature, we have created nothing and so we can in no way claim to be owners of what does not belong to us. But time and again, western legal property regimes have been imposed on us, contradicting our own cosmologies and values. … Indigenous knowledge and cultural heritage are collectively and accretionally evolved through generations. Thus, no single person can claim invention or discovery of medicinal plants, seeds or other living things.’ 154 ‘As creators and carriers of civilizations which have given and continue to share knowledge, experience, and values with humanity, we require that our right to intellectual and cultural properties be guaranteed and that the mechanism for each implementation be in favour of our peoples and studied in depth and implemented.’ 155 ‘Indigenous Peoples of the world … must be recognized as the exclusive owners of their cultural and intellectual property; … the knowledge of the Indigenous Peoples of the world is of benefit to all humanity; … Indigenous Peoples … are willing to offer it to all humanity provided their fundamental rights to define and control this knowledge are protected by the international community’. 156 Cf. Articles 3, 15(1) of the cbd.

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genetic resources for food and agriculture listed in Annex i’ to the itpgrfa, which are covered by a ‘multilateral system for facilitated access’.157 Indigenous and local communities regard traditional knowledge as a defining factor of their cultural identity, and as such inalienable.158 Some traditional knowledge is even held to be sacred.159 Lawson from the Heiltsuk Nation points out that traditional knowledge systems are a whole system of a way of life. Our knowledge systems don’t make sense without spirituality. We are asking for respect for a system of knowledge.160 At the international level, Article 2(1) of the unesco Convention for the Safeguarding of the Intangible Cultural Heritage (the ‘ich Convention’) acknowledges that the intangible cultural heritage, transmitted from generation to generation, … provides [communities and groups] with a sense of identity and continuity … Further, Article 2(2)(d) of the ich Convention defines ‘intangible cultural heritage’ as encompassing the domain of ‘knowledge and practices concerning nature and the universe’. As a consequence, misuse of traditional knowledge is often considered an offense to their indigenous culture,161 cf. Article 99 of the Indigenous Peoples’ Earth Charter,162 Sections 4, 13(2)(c) of the Model Law of the Pacific 157 Cf. recital 14 of the Preamble to and Articles 10 f of the itpgrfa. See Antons in Antons, p. 43; Schroeder in Wynberg/Schroeder/Chennells, p. 23. 158 Basic point 7 of the coica Statement; the Thammasat Resolution; Article 2 of the ­Panamanian Law No. 20; Article 100(i) of the Constitution of Bolivia; Articles 11 f of the ­Peruvian Law No. 27811; Section  35 of the Biodiversity Act of Bhutan; Article 23(1) of the African Model Legislation. See also The Protection of Traditional Knowledge and Folklore, wto Doc. ip/C/W/370/Rev.1, para. 9 fourth bullet; Permanent Forum on Indigenous Issues, Report of the Secretariat on Indigenous traditional knowledge, un Doc. E/C.19/2007/10, para. 2; Le Gall, p. 91; Muńoz Téllez/Zografos Johnsson in Gervais, p. 317; Kiene, The Legal Protection of Traditional Knowledge in the Pharmaceutical Field, pp. 142, 152; Nijar, ‘Incorporating Traditional Knowledge in an International Regime on Access to Genetic Resources and Benefit Sharing’, p. 462. 159 Lukose, p. 86; Gervais, The trips Agreement, para. 1.91; Anderson, para. 3.2.3.1; Bijoy, p. 7. 160 Quoted in Skrydstrup, p. 49. 161 Federal Court of Australia, Milpurrurru v. Indofurn Pty Ltd. & Others; Anderson, paras. 1.1.4, 1.2.4; Robinson, p. 14. 162 ‘The usurping of traditional medicines and knowledge from indigenous peoples should be considered a crime against peoples.’

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­ ommunity for the Protection of Traditional Knowledge and Expressions of C Culture (the ‘Pacific Model Law’).163 It follows that the desire to prevent unauthorized use of traditional knowledge is not necessarily rooted in a motivation to commercialize it.164 All this challenges the trips regime. It will be pivotal for the future of the wto to reconcile the developing countries with the trips regime, or vice versa.165 The whole debate on traditional knowledge is reminiscent of the current Doha Round negotiations relating to Article 23 of the trips Agreement where some Members are fighting against the usurpation of ‘their indications’, of course, in different roles.166 What can be ascertained is that all parties have understood that the effective preservation of traditional knowledge necessitates a protective mechanism in some form or other. Having reached this point, the debate can be broken down into the following questions: What does an appropriate form of protection look like? Where are its limits? To resolve these questions, it is worthwhile to keep in mind the stakeholders involved:167 − firstly, the custodians of traditional knowledge, i.e. indigenous and local communities, who are the purported beneficiaries of any protection;168 − secondly, the (potential) commercial and private users of traditional knowledge; − and finally, the general public whose interest is double-edged – for scientific and scholarly reasons, there is a general interest in access to traditional knowledge which supports a lower level of protection; on the other hand, the general interest in preserving traditional knowledge speaks in favour of a strong protection regime.

163 ‘[D]erogatory treatment, in relation to traditional knowledge or expressions of culture, includes any act or omission that results in a material distortion, mutilation or alteration of the traditional knowledge or expressions of culture that is prejudicial to the honour or reputation of the traditional owners, or the integrity of the traditional knowledge or expressions of culture.’ 164 Twarog in Twarog/Kapoor, p. 66. 165 unctad, São Paulo Conensus, para. 68; unctad-ictsd Resource Book, p. 16. 166 For instance, the European Union, cf. Geographical Indications, wto Doc. wt/gc/W/547. Cf. Issues Related to the Extension of the Protection of Geographical Indications, wto Doc. wt/gc/W/633, paras. 9 ff. 167 Cf. Antons in Antons, p. 4; Biber-Klemm in Twarog/Kapoor, p. 98. 168 who/wipo/wto, p. 93; wipo Publication No. 933, p. 13; Bhaur, p. 355; Taubman/Leistner in von Lewinski, pp. 143 f.

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It is between those interests, mediated by the Members,169 that a proper balance has to be struck.170 Hereinafter, we will assess whether the concerns of indigenous peoples and developing countries are justified and, if so, whether the doctrine of unfair competition, as set out in Articles 39 and 2.1 of the trips Agreement in conjunction with Article 10bis of the Paris Convention (1967), provides a remedy that can fill the gap found in the existing intellectual property system with respect to their intellectual achievements. In view of the continuing decrease in traditional knowledge, unctad demands ‘urgent action’.171 That was in 2004. We can find some encouragement for our undertaking in D’Amato words: The Moment of Truth for a practicing lawyer occurs whenever a prospective client tells a story that seems morally compelling but legally hopeless. That is where the attorney’s legal research should begin, not where it should end. Too much injustice persists in the world because tired legal thinking has accepted unjust patterns as legally inevitable.172 De lege lata, recourse to unfair competition law constitutes the only way to address the issue at hand internationally.173 All other alternatives would require a new legal instrument or an amendment of existing ones. ii

Contract-Based Protection

The United States, in particular, advocates a controversial private-law solution.174 According to the Understandings Regarding Biodiversity and Traditional Knowledge to the us-Peru Trade Promotion Agreement and the usColombia Trade Agreement, ‘[t]he Parties recognize that access to … traditional knowledge … can be adequately addressed through contracts that reflect mutually agreed terms between users and providers.’ The implications of this 169 See above p. 7. 170 Biber-Klemm in Twarog/Kapoor, p. 102. 171 unctad, ‘Ongoing Loss of Traditional Knowledge Calls for Urgent Action, Says unctad’ (Information Note, unctad/press/in/2004/024, 15 November 2004). 172 Anthony D’Amato accessed 8 December 2015. 173 On the proposal to apply the customary international rules relating to piracy by analogy and its rebuttal, see Gubarev, pp. 84 f; Ubertazzi, pp. 85 ff. 174 The Relationship Between the trips Agreement and the cbd, wto Doc. ip/C/W/368/Rev.1, paras. 29 ff; Straus, pp. 232 f; Hansen/VanFleet, pp. 30 f.

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approach can be studied in the San/Hoodia case.175 It is problematic for s­ everal reasons: Importantly, under such a regime, the access contracts between the would-be user and the holder(s) of traditional knowledge are subject to national law.176 Further, their privity is marked by a discrepancy in bargaining power, which extends to the enforcement of the concluded contracts.177 Moreover, there are practical problems such as illiteracy and language.178 As noted above, it may be difficult to identify the other party to a contract, given that most traditional knowledge is held by one or several communities.179 This raises the question of power of disposition. The last point is a general issue that any protective mechanism for traditional knowledge has to answer. Some of the above-mentioned problems could be alleviated by − prescribing the use of a model contract or the inclusion of minimum stipulations;180 − ex post judicial control of contract terms, which, however, would place the burden of litigation upon indigenous people and thus put them to expense;181 or − interposing a national authority that represents the interests of the holders of traditional knowledge.182 The latter gives greater control to the state, which may cause other kinds of problems if there are tensions between indigenous peoples and the state they

175 Kiene, The Legal Protection of Traditional Knowledge in the Pharmaceutical Field, pp. 19 f; Anderson, paras. 2.5.1 ff; Wynberg/Schroeder/Chennells, pp. 89 ff; Alikhan/Mashelkar, pp. 78 ff. An example widely seen as positive would be the Arogyapacha case, cf. Khan, pp. 96 f; Kohls, pp. 125 f. 176 The Protection of Traditional Knowledge and Folklore, wto Doc. ip/C/W/370/Rev.1, para. 28 second bullet. 177 The Relationship Between the trips Agreement and the cbd, wto Doc. ip/C/W/368/Rev.1, paras. 63 f; Review of Article 27.3(b), wto Doc. ip/C/W/228, para. 34; Gubarev, p. 95; Muńoz Téllez/Zografos Johnsson in Gervais, pp. 322 f; Kiene, The Legal Protection of Traditional Knowledge in the Pharmaceutical Field, p. 189; Tsikun/Ni, pp. 314 f. 178 Von Lewinski, p. 510. 179 See above p. 142. 180 Cf. Article 12(3)(b), (c) of the Nagoya Protocol; Articles 82(2)(b), (3)(b), 83(1), 84(1) of South Africa’s National Environmental Management Biodiversity Act; Article 27 of the Peruvian Law No. 27811. 181 Cf. wipo Publication No. 768, Part 2, p. 94. 182 Cf. Articles 32 ff of the Decision 391 of the Andean Community.

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reside in as minority groups.183 In Peru and South Africa, for instance, the negotiated contracts must be validated by a national authority.184 The issue that third parties are not bound185 could be tackled by inserting confidentiality clauses into the contracts. In this way, it could be ensured that the given information is kept secret from others. However, this would only provide a solution for traditional knowledge that is not already publicly known. Furthermore, the longer the chain between the user of traditional knowledge and the source, the more difficult it becomes for the holder of traditional knowledge to prove a breach of the confidentiality agreement.186 Besides, another problem would persist, namely the non-transparency of this regime.187 Article 28(2) of the Peruvian Law No. 27811, introducing a Protection Regime for the Collective Knowledge of Indigenous Peoples derived from Biological Resources (the ‘Peruvian Law No. 27811’), even decrees this state: The contract may not be consulted by third parties except with the express permission of both parties.188 The strongest point of criticism in my opinion is that a contract-based system is premised upon the willingness of the user to conclude a contract, which will not be given when bad faith is involved.189 Misuse occurring in the territory of a Member to which the holder of traditional knowledge is indigenous can be addressed by a national act as a matter ‘of vital importance to [its] socioeconomic and technological development’, cf. Article 8.1 of the trips Agreement, as read with Articles 8(j) of the cbd and 9.2(a) of the itpgrfa.190 In 183 Nijar, ‘Traditional Knowledge Systems, International Law and National Challenges’, p. 1210; Khan, p. 93. 184 Articles 25, 30, 64(c) of the Peruvian Law No. 27811; Articles 82(2)(c), (3)(c), 83(2), 84(2) of South Africa’s National Environmental Management Biodiversity Act. 185 Review of Article 27.3(b), wto Doc. ip/C/W/228, para. 34; Kiene, The Legal Protection of Traditional Knowledge in the Pharmaceutical Field, p. 189; Taubman/Leistner in von Lewinski, p. 178. 186 Taubman/Leistner in von Lewinski, p. 178. 187 Pacón in Twarog/Kapoor, p. 179. Contra Tsikun/Ni, p. 314. 188 The Peruvian Law is thus at odds with the wipo initiative to set up a Database of Biodiversity-related Access and Benefit-sharing Agreements accessed 8 December 2015. 189 Composite Study on the Protection of Traditional Knowledge, wipo Doc. wipo/grtkf/ ic/5/8, para. 11; The Relationship Between the trips Agreement and the cbd, wto Doc. ip/C/W/368/Rev.1, para. 60 second bullet, para. 67. 190 The Relationship Between the trips Agreement and the cbd, wto Doc. ip/C/W/368/ Rev.1, para. 60 first bullet; The Protection of Traditional Knowledge and Folklore, wto Doc.

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addition, developing countries are allowed, according to Article 12.4 of the Agreement on Technical Barriers to Trade (the ‘tbt Agreement’), to include ‘technical regulations, standards or conformity assessment procedures aimed at preserving indigenous technology and production methods and processes compatible with their development needs’ in their national laws, irrespective of ‘international standards, guides or recommendations’. That said, members of the igc affirm that the majority of unauthorized uses of traditional knowledge occur abroad,191 where only public international law, which cannot be evaded by choice of law, can provide redress.192 It is clear that any utilization of traditional knowledge will require a contractual element at some point, be it in the form of an access or licence agreement,193 but a protective mechanism that deserves the name must not leave it completely to the private parties to arrange matters.194 iii

Protection by Article 39 of the TRIPS Agreement

Before resorting directly to paragraph 2 of Article 10bis of the Paris Convention (1967), we first have to examine whether one of the explicit examples of the doctrine of unfair competition, to which paragraph 2 is subsidiary,195 can resolve this issue. Article 39 of the trips Agreement comes into consideration.196 Like Article 22 of trips Agreement, it is predicated on the doctrine of unfair competition.197 Paragraph 1 of Article 39 of the trips Agreement makes plain that the scope of protection of Article 10bis of the Paris Convention (1967)

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ip/C/W/370/Rev.1, para. 35; Hilty, pp. 898 f; Garcia, pp. 20 f; Cottier/Panizzon in BiberKlemm/Cottier, p. 210. The Protection of Traditional Knowledge and Folklore, wto Doc. ip/C/W/370/Rev.1, para. 9 last bullet; Revised Outline of Policy Options and Legal Mechanisms, wipo Doc. wipo/grtkf/ic/9/inf/5, Annex para. 179. India in Report, wipo Doc. wipo/grtkf/ic/7/15, para. 175; Varadarajan, p. 388; Hilty, pp. 898 f, 902; von Lewinski, p. 526; Kariyawasam/Guy, p. 114; Arezzo, p. 393. See also Kuruk, p. 132, in relation to access to intangible cultural heritage. Cf. Article 35 of the Decision No. 391; Articles 2(d), 7 of the Peruvian Law No. 27811. See also wipo Technical Study, p. 61; Kiene, The Legal Protection of Traditional Knowledge in the Pharmaceutical Field, p. 189. Almeida in Sinjela, p. 227. See above p. 65. Anderson, paras. 3.2.3.1 ff. See above p. 22.

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comprises ‘undisclosed information’ as well as ‘data submitted to governments or governmental agencies’, whereas the latter is a subset of the former, as the title of Section 7 indicates, mentioning only ‘Protection of Undisclosed Information’.198 Considering that traditional knowledge associated with genetic resources is basically information, the question arises whether such ‘traditional information’ can be dealt with under Article 39.2 of the trips Agreement.199 The term ‘information’ therein is given a broad interpretation.200 Above all, the knowledge of shamans or traditional healers might be eligible.201 With this in mind, the Inter-American Development Bank, in cooperation with some ngos, has been running a project in Ecuador called ‘The Transformation of Traditional Knowledge into Trade Secrets’.202 Article 39.3 of the trips Agreement, by contrast, is not pertinent. Article 39.2 of the trips Agreement provides as follows: Natural and legal persons shall have the possibility of preventing information lawfully within their control from being disclosed to, acquired by, or used by others without their consent in a manner contrary to honest commercial practices so long as such information: (a) is secret in the sense that it is not, as a body or in the precise configuration and assembly of its components, generally known among or readily accessible to persons within the circles that normally deal with the kind of information in question; (b) has commercial value because it is secret; and (c) has been subject to reasonable steps under the circumstances, by the person lawfully in control of the information, to keep it secret.

198 De Carvalho, The trips Regime of Antitrust and Undisclosed Information, paras. 39.1.1 f, 39.1.49 f. See above p. 19. 199 Traditional Knowledge and the Need to Give it Adequate ip Protection, wipo Doc. wipo/grtkf/ic/1/5, Annex ii p. 4; Ruiz Muller, p. 10; Bucher, p. 37; Biber-Klemm/Cottier, pp. 24, 218. 200 Peter/Michaelis in Stoll/Busche/Arend, Article 39 para. 12. 201 Lukose, pp. 151 f; Kiene, The Legal Protection of Traditional Knowledge in the Pharmaceutical Field, p. 55; Arantes, p. 131; Biber-Klemm et al. in Biber-Klemm/Cottier, p. 79. Another example is ‘Aranmula Kannadi’, as described in Gopalakrishnan/Nair/Babu, pp. 35, 46. 202 Varadarajan, pp. 406 f; Hansen/VanFleet, p. 29.

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In order to see whether this regulation offers a suitable protective regime for traditional information, we have to scrutinize if it can be subsumed under the requirements of Article 39.2(a) through (c) of the trips Agreement. To that end, we have to interpret the individual requirements. As long as they are met, the protection under Article 39 of the trips Agreement will be upheld, that is, in fact, indefinitely.203 It has the further advantage that the negotiation of a contract becomes superfluous, i.e. the discrepancy in bargaining power is no issue here, because its scope includes ‘breach of confidence’ by default.204 A Elements of Article 39.2(a) through (c) of the trips Agreement Subparagraph (a) defines secrecy of the information for the purpose of Article 39.2 of the trips Agreement. The protection granted under Article 39.1 and 2 of the trips Agreement is lost if the information is either ‘generally known among or readily accessible to persons within the circles that normally deal with the kind of information in question’. Thereby it is immaterial whether the information was disclosed deliberately or by accident.205 In relation to traditional information, the question is how to construe ‘persons within the circles that normally deal with the kind of information in question’, i.e. whether the line has to be drawn − between indigenous and local communities, on the one hand, and the rest of the world, on the other, or − between different indigenous/local communities or − within the same community.206 Information crossing one of these three possible lines of demarcation will be considered to be disclosed. The first solution would entail that indigenous and local communities are free to share their traditional knowledge (that is not known to the rest of the world or readily accessible, e.g. through the internet)207 with other communities without losing the protection under Article 39 of the trips Agreement. 203 unctad-ictsd Resource Book, p. 538; Varadarajan, p. 397; Cottier, ‘Industrial Property, International Protection’ in mpepil, para. 40. 204 Footnote 10 to Article 39 of the trips Agreement. See Varadarajan, pp. 400 ff. 205 Cf. Reger, p. 275. 206 For this differentiation, see Biber-Klemm in Biber-Klemm/Cottier, p. 160. 207 List and Brief Technical Explanation of Various Forms in which Traditional Knowledge May be Found, wipo Doc. wipo/grtkf/ic/17/inf/9, Appendix No. 4.

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This corresponds to Costa Rican,208 Peruvian,209 as well as Ethiopian law.210 According to the second solution, indigenous and local people would be allowed to share their traditional knowledge freely within the same community, i.e., their community would be treated as a self-contained entity. This solution is preferred by the Portuguese legislature.211 Finally, the legal consequence of the last-mentioned solution would be that sharing information with other members of the same community amounts to its disclosure in terms of Article 39.2(a) of the trips Agreement. The possibility to conclude a confidentiality agreement obligating the receiver of the information to maintain its secrecy is, of course, always given, cf. footnote 10 to Article 39 of the trips Agreement (‘breach of contract’).212 The third solution being the strictest fulfils the requirements of Article 39.2(a) of the trips Agreement at any rate. The first solution facilitates the transfer of traditional knowledge between different indigenous and local communities and accommodates a sense of togetherness and sharing, as proclaimed among indigenous peoples.213 Following this, Arezzo compares the 208 Cf. Article 4(2) of the Costa Rican Biodiversity Law: ‘Tampoco se aplican estas disposiciones al intercambio de los recursos bioquímicos y genéticos ni al conocimiento asociado resultante de prácticas, usos y costumbres, sin fines de lucro, entre los pueblos indígenas y las comunidades locales.’ (emphasis added). 209 Cf. Article 4 of the Law No. 27811: ‘This regime shall not affect the traditional exchange between indigenous peoples of the collective knowledge protected under this regime’; Article 13 of the Law No. 27811: ‘For the purposes of this regime, it shall be understood that collective knowledge is in the public domain when it has been made accessible to persons other than the indigenous peoples by mass communication media such as publication or, when the properties, uses or characteristics of a biological resource are concerned, where it has become extensively known outside the confines of the indigenous peoples and communities.’ (emphasis added). 210 Cf. Article 4(2)(a) of the Proclamation No. 482/2006: ‘this Proclamation shall not apply to: (a) the customary use and exchange of … community knowledge by and among Ethiopian Local communities’; Article 8 of the Proclamation No. 482/2006: ‘(1) Local communities shall have an inalienable right to use or exchange among themselves their … community knowledge in the course of sustaining their livelihood systems in accordance with their customary practices or norms. (2) No legal restriction shall be placed on the traditional system of local communities on the use and exchange of … community knowledge’. 211 Cf. the introductory clause of Article 3(4) of the Decree-Law No. 118/2002: ‘The registration of traditional knowledge that until it is requested has not been used in industrial activities or is not publicly known outside the population or local community in which it originated shall afford its owners the right to …’ (emphasis added). 212 Ruiz Muller, p. 13; Posey/Dutfield, p. 88. 213 Dutfield in Maskus/Reichman, p. 501.

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operation of traditional knowledge with open source software.214 However, as opposed to open source software that is accessible to anybody interested in it, access to traditional knowledge is governed and in many cases restricted by indigenous customary laws.215 Nevertheless, it may be politically desirable to construe the term ‘secret’ in subparagraph (a) broadly in a traditional context. Article 11(1) of the un Declaration on the Rights of Indigenous Peoples (the ‘drips’), according to which ‘[i]ndigenous peoples have the right to practise and revitalize their cultural traditions and customs’, might prompt such a broad interpretation. This is borne out by paragraph 26.3(a)(vii) of the Agenda 21, which requests the ‘[e]nhancement of capacity-building for indigenous communities, based on the adaptation and exchange of traditional experience, knowledge and resource-management practices’, and Article 12(4) of the Nagoya Protocol, which stipulates: Parties, in their implementation of this Protocol, shall, as far as possible, not restrict the customary use and exchange of genetic resources and associated traditional knowledge within and amongst indigenous and local communities in accordance with the objectives of the Convention. On this basis, traditional knowledge would be deemed secret so long as the information remained within the confines of indigenous and local communities. As said, the answer is to be sought in the correct reading of ‘persons within the circles that normally deal with the kind of information in question’. The kind of information in question is traditional knowledge. It is not only researchers that normally deal with traditional knowledge, but above all indigenous and local people. As a result, the line demarcating who is ‘within the circles’ does not run between the indigenous world, on the one hand, and the rest, on the other hand. Furthermore, I submit that the more people have a specific piece of information, the more difficult it becomes, firstly, to identify all the keepers of the information, and secondly, to keep it secret, cf. subparagraph (c). For this reason, I reject the first solution. That is, information known to two different communities is not secret within the meaning of Article 39.2(a) of the trips Agreement, unless − two communities generated the same information independently and both keep it secret separately216 or 214 Arezzo, pp. 410 f. 215 See below p. 206. 216 Cf. Varadarajan, pp. 397, 405; Dessemontet in Correa/Yusuf, p. 284.

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− the information was given from one community to another on condition that it be kept secret. This finding is consistent with the understanding in the igc,217 and corresponds to the legal situation in Brazil.218 On a related note, it is immaterial whether the bearer of a secret is aware of the legal consequences when conveying the information to others. Another corollary is that, having been disseminated, knowledge can no longer be considered as new within the meaning of Article 27.1 of the trips Agreement.219 Concerning the second solution, two lines of argument are conceivable. In a company, usually more than one executive knows about the company’s trade secrets; they are shared within a certain body.220 Article 39.2 of the trips Agreement has regard to this fact by including legal persons in its personal scope of protection. Ergo, within one and the same legal person, information can flow freely with the proviso of subparagraph (c). It follows that the second solution would be true if an indigenous/local community could be construed as a legal person within the meaning of Article 39.2 of the trips Agreement.221 For instance, Article 89(1) of the Political Constitution of Peru explicitly acknowledges indigenous and local communities as legal persons. The Nagoya Protocol seems to take the same stand. Recital 24 of the Preamble to that Protocol proclaims that the Parties are [m]indful that it is the right of indigenous and local communities to identify the rightful holders of their traditional knowledge associated with genetic resources, within their communities. By classifying the determination of the ‘rightful holders’ as an internal matter of the indigenous and local community, the Nagoya Protocol recognizes it as a legal entity by implication. The same holds true for Article 1 of the drips.222 217 List and Brief Technical Explanation of Various Forms in which Traditional Knowledge May be Found, wipo Doc. wipo/grtkf/ic/17/inf/9, Appendix No. 4. 218 Cf. Article 4 of the Brazilian Provisional Act: ‘The exchange and dissemination of components of genetic heritage and of associated traditional knowledge practiced within indigenous communities and local communities for their own benefit and based on customary practices is hereby preserved’ (emphasis added). 219 Dessemontet in Correa/Yusuf, p. 282. See below p. 233. 220 Varadarajan, p. 405. 221 Cf. Taubman/Leistner in von Lewinski, p. 133. 222 ‘Indigenous peoples have the right to the full enjoyment, as a collective or as individuals, of all human rights …’ (emphasis added). Cf. Taubman/Leistner in von Lewinski, p. 172.

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Rather than compare traditional knowledge with company secrets, I prefer another reasoning which simply accepts a multiplicity of people as keepers of the same secret information under certain conditions.223 It may be true that communitarian rights form an exception in the prevailing intellectual property system, but the wording of Article 39.2 of the trips Agreement suggests the possibility of multiple keepers by stipulating ‘Natural and legal persons have the possibility’ instead of ‘A natural or legal person has the possibility’. Furthermore, the instances ‘breach of contract’ and ‘breach of confidence’, as set out in footnote 10 to Article 39 of the trips Agreement, indicate that ‘the person lawfully in control of the information’ in subparagraph (c) can also be a group of people: the original bearer of the secret and the contractual partners or other confidants.224 Moreover, and this is crucial, one can infer that the group must be bounded, such as an indigenous tribe ‘the members of whom are identified by one another as members of that community living under its laws and customs’.225 Aside from that, Article 39.2 of the trips Agreement does not require the information to originate from the person currently in control of it.226 Proponents of the third solution from above assume that the tribal community makes up the relevant public in terms of the public domain.227 In contrast, in Foster v. Mountford, an Australian judge held that customary laws of indigenous and local communities are capable of establishing a commitment to confidentiality.228 Hence, customary laws are able to set up a secrecy regime amongst the community members which is to be recognized under the doctrine of breach of confidence. As a result, customary laws can conclusively determine whether the control of the information is lawful within the meaning of subparagraph (c) of Article 39.2 of the trips Agreement. In addition, subparagraph (c) demands ‘reasonable steps under the circumstances … to keep [the information] secret.’ Contractual agreements and instructions to be discreet are deemed to be sufficient in that regard.229 ­Indigenous customary laws regulating access to traditional knowledge are 223 Pro de Carvalho, The trips Regime of Antitrust and Undisclosed Information, para. 39.2.52; Peter/Michaelis in Stoll/Busche/Arend, Article 39 para. 17; Haugen, p. 672; Dutfield, ‘trips-Related Aspects of Traditional Knowledge’, p. 259. 224 Cf. Peter/Michaelis in Stoll/Busche/Arend, Article 39 para. 17. 225 High Court of Australia, Mabo v. Queensland (No. 2), para. 68 (Brennan J.). 226 Peter/Michaelis in Stoll/Busche/Arend, Article 39 para. 17; Reger, p. 266. 227 Chen, p. 25. 228 Foster v. Mountford (1976) 29 flr 233; Draft Gap Analysis, wipo Doc. wipo/grtkf/ic/ 13/5(b) Rev., Annex i para. 43. 229 unctad-ictsd Resource Book, p. 530; Peter/Michaelis in Stoll/Busche/Arend, Article 39 paras. 25 f; de Carvalho, The trips Regime of Antitrust and Undisclosed Information, para. 39.2.62; Dessemontet in Correa/Yusuf, p. 285.

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comparable to this.230 They, consequently, should be accepted as fulfilling this requirement, given that subparagraph (c) explicitly allows taking into account the traditional context (‘reasonable … under the circumstances’). The requirement ‘reasonable steps’ should not be excessively strict (and command e.g. technical safety devices), because one has to bear in mind that the harder it becomes to invoke Article 39 of the trips Agreement, the more leeway is left to dishonest acquirers or users of information.231 In the final analysis, Article 39 of the trips Agreement is not ruled out if the dissemination of the information at stake is restricted to a community with defined membership.232 We can now turn to subparagraph (b). According to subparagraph (b), the information must have ‘commercial value because it is secret’, i.e. there must be a causal nexus between secrecy and the commercial value of the information.233 It is questionable whether the value of traditional information depends upon secrecy. However, subparagraph (b) does not require the value of the information to be based purely upon secrecy.234 The commercial value of something is usually determined by the market; for instance, when people in Melanesia trade their secrets for goods.235 Yet because information within the meaning of Article 39 of the trips Agreement is not destined for a market, its commercial value cannot be deduced from a market value.236 In consequence, subparagraph (b) must be read in such a way that covered information, as long as it is confidential, provides a competitive edge.237 Indigenous peoples are increasingly aware of the commercial value embodied in traditional knowledge, cf. basic point 12 of the coica Statement,238 230 wipo Publication No. 920, p. 25; Varadarajan, p. 405; Taubman/Leistner in von Lewinski, p. 133. 231 Peter/Michaelis in Stoll/Busche/Arend, Article 39 para. 26; Varadarajan, p. 405. 232 Cf. Draft Gap Analysis, wipo Doc. wipo/grtkf/ic/13/5(b) Rev., Annex ii p. 4. 233 Peter/Michaelis in Stoll/Busche/Arend, Article 39 para. 24; Dessemontet in Correa/Yusuf, p. 280. 234 Peter/Michaelis in Stoll/Busche/Arend, Article 39 para. 24; Reger, p. 263. 235 Quoted in Dutfield, ‘The Public and Private Domains’, p. 282. 236 Thouvenin, p. 446; Dessemontet in Correa/Yusuf, p. 280. For traditional knowledge, see Biber-Klemm/Szymura Berglas in Biber-Klemm/Cottier, pp. 26, 30. 237 Note on the Meanings of the Term ‘Public Domain’, wipo Doc. wipo/grtkf/ic/17/inf/8, Annex para. 45; Peter/Michaelis in Stoll/Busche/Arend, Article 39 para. 24; de Carvalho, The trips Regime of Antitrust and Undisclosed Information, para. 39.2.59; Dessemontet in Correa/Yusuf, p. 280; Kors, p. 107; Correa, Trade Related Aspects of Intellectual Property Rights, p. 373. 238 ‘There are some formulas that could be used to enhance the value of our products (brand names, appellations of origin) …’

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­ rticle 102 of the Indigenous Peoples’ Earth Charter, and so are their home A countries.239 Thus, trade in products derived from traditional knowledge is on the rise.240 All the same, many custodians do not pursue any commercial interests in this respect, be it for cultural or spiritual reasons.241 For those custodians traditional knowledge apparently has no commercial value.242 The igc therefore raised this question on traditional knowledge: ‘if a community keeps tk secret for spiritual and non-commercial reasons, and indeed actively rejects the idea that the tk should be valued commercially, would it still be protected as undisclosed information?’243 I would answer this question in the affirmative, since the subparagraphs of Article 39.2 of the trips Agreement set out objective requirements.244 That is to say, whether or not secret information has any commercial value depends neither upon the subjective assessment of the keeper of the secret nor upon his will.245 Taking the example of traditional knowledge associated with genetic resources such as periwinkle or cinchona bark, commercial value is given on account of its potential for the development of new drugs, even if there is 239 The Protection of Traditional Knowledge and Folklore, wto Doc. ip/C/W/370/Rev.1, para. 9 second bullet; unctad, Systems and National Experiences for Protecting Traditional Knowledge, Innovations and Practices, un Doc. td/B/com.1/em.13/2, paras. 62 ff; Hilty, p. 892; Sunder, p. 111; Cottier/Panizzon in Biber-Klemm/Cottier, p. 231. For India, see Sahai in Twarog/Kapoor, p. 284. For Latin America and Caribbean countries, see Traditional Knowledge and the Need to Give it Adequate ip Protection, wipo Doc. wipo/grtkf/ic/1/5, Annex ii p. 4. For the English-speaking African countries, see aripo, Traditional K ­ nowledge (2015) accessed 8 December 2015. 240 unctad, ‘Ongoing Loss of Traditional Knowledge Calls for Urgent Action, Says unctad’ (Information Note, unctad/press/in/2004/024, 15 November 2004). 241 Cf. the third Policy point of the Protocol for Research, Publication and Recordings of the Hopi Cultural Preservation Office: ‘This protocol should in no way be construed as being a call for commoditization or commercialization of the intellectual property of Hopi people, nor is it a justification to bring the Hopi people unwillingly into a commercial relationship. The Hopi Tribe reserves the right not to sell, commoditize or have expropriated from the certain domains of knowledge or information.’ (original emphasis). See also Curci, p. 60; Hilty, pp. 901 f; Taubman/Leistner in von Lewinski, p. 85. 242 See Draft Gap Analysis, wipo Doc. wipo/grtkf/ic/13/5(b) Rev., Annex i para. 43. 243 Draft Gap Analysis, wipo Doc. wipo/grtkf/ic/13/5(b) Rev., Annex i para. 43. See also de Carvalho, The trips Regime of Antitrust and Undisclosed Information, para. 39.2.37. 244 Cf. unctad-ictsd Resource Book, p. 529; de Carvalho, The trips Regime of Antitrust and Undisclosed Information, para. 39.2.61; Dessemontet in Correa/Yusuf, pp. 282 f. 245 De Carvalho, The trips Regime of Antitrust and Undisclosed Information, para. 39.2.61; Posey/Dutfield, p. 88.

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no interest to exploit it on the part of the custodians.246 Commercial value and commercial interest have to be distinguished. That is why one cannot answer the above question by simply referring to the rules on benefit-sharing and the fact that indigenous peoples support their implementation. These rules apply when third parties utilize traditional knowledge. They may prove a commercial interest (namely the interest to profit from the commoditization of traditional knowledge), but not that the knowledge really has actual commercial value. As the full title of the Nagoya Protocol suggests, the ratio legis of such rules is that benefits arising from the utilization are shared with the original custodian(s). However, those rules cannot guarantee that there will be any benefits. This is contingent on the (commercial) value of traditional knowledge. The fact that traditional knowledge is being appropriated by third parties is indicative of its existence, however.247 It is well established that potential commercial value suffices in this regard.248 B Conclusions It follows from the foregoing that one has to differentiate between (1) traditional knowledge that falls under the protection provided by Article 39 of the trips Agreement and (2) traditional knowledge for which Article 39 of the trips Agreement is not available, either because it is not information or because it has been disclosed (see, e.g., the books released about Aboriginal food).249 Custodians are not only concerned about the unauthorized acquisition of traditional knowledge, but also about its further utilization by third parties.250 In other words, they seek control of it after its disclosure.251 ­Countries which 246 The Protection of Traditional Knowledge and Folklore, wto Doc. ip/C/W/370/Rev.1, para. 9; Meyers/Owoeye, p. 61; Ebermann, p. 1; Nijar, ‘Incorporating Traditional Knowledge in an International Regime on Access to Genetic Resources and Benefit Sharing’, p. 458; Taubman/Leistner in von Lewinski, p. 110; Kariyawasam, p. 85; Mathur, p. 4474. 247 Permanent Forum on Indigenous Issues, Report of the Secretariat on Indigenous traditional knowledge, un Doc. E/C.19/2007/10, para. 30; de Carvalho, The trips Regime of Antitrust and Undisclosed Information, para. 39.2.59. 248 De Carvalho, The trips Regime of Antitrust and Undisclosed Information, para. 39.2.56. 249 Biber-Klemm et al. in Biber-Klemm/Cottier, pp. 101 f; Janke, p. 25. 250 wipo Publication No. 768, Part 2, pp. 70, 86 f, 102, 118, 193; Varadarajan, p. 417; Sinjela/ Ramcharan, p. 23. 251 Cf. Article 2.1 of the Mataatua Declaration: ‘indigenous peoples are the guardians of their customary knowledge and have the right to protect and control dissemination of that knowledge’; Article 44 of the Charter of the Indigenous-Tribal Peoples of the Tropical Forests: ‘Since we highly value our traditional technologies and believe that our biotechnologies can make important contributions to humanity, including developed countries,

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are rich in traditional knowledge support their case.252 In the next section, we will examine to what extent traditional knowledge from the second group, i.e. traditional knowledge not qualifying for intellectual property protection, may still find protection under Article 10bis of the Paris Convention (1967), as incorporated into the trips Agreement by virtue of Article 2.1 of that Agreement. Can a wto Member invoke these two Articles with a view to protecting ‘its’ traditional knowledge against misuse, despite the fact that, from the point of view of intellectual property law, it has entered the public domain?253 iv

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At the outset, it should be made clear that, since Article 10bis of the Paris Convention (1967) does not provide absolute protection, it cannot serve as a legal basis to prohibit third parties from using traditional knowledge if it is established that the knowledge in use was created independently.254 No obligation to take action in this regard emerges from Article 10bis of the Paris Convention (1967) for the Members. The question is whether, apart from that, the utilization of traditional knowledge outside the country of origin can be prevented. Traditional knowledge is attributed to a Member through the nationality or domicile of its holder. This can be derived from Articles 1.3 of the trips Agreement and 3 of the Paris Convention (1967), as incorporated into the  trips Agreement. It is corroborated by paragraph 3 and 4 of Article 40 of the trips we demand guaranteed rights to our intellectual property, and control over the development and manipulation of this knowledge’; the last paragraph of the Protocol for Research, Publication and Recordings of the Hopi Cultural Preservation Office: ‘The Hopi people may share the right to enjoy or use certain elements of its cultural heritage, under its own laws and procedures, but always reserves a right to determine how shared knowledge and information will be used.’ See also The Protection of Traditional Knowledge and Folklore, wto Doc. ip/C/W/370/Rev.1, para. 8; Anderson, paras. 1.1.2, 3.1.1; von Lewinski, pp. 509, 515. 252 Review of the Provisions of Article 27.3(b), wto Doc. ip/C/W/165, para. 10; Review of Implementation of the Agreement under Article 71.1, wto Doc. ip/C/W/166, para. 8; Review of Article 27.3(b), wto Doc. ip/C/W/228, para. 34; Article 27.3(b), Relationship Between the trips Agreement and the cbd and Protection of Traditional Knowledge and Folklore, wto Doc. ip/C/W/441/Rev.1, para. 2; Review of Article 27.3(b) of trips Agreement, wto Doc. ip/C/W/545, para. 30. 253 Cf. Note on the Meanings of the Term ‘Public Domain’, wipo Doc. wipo/grtkf/ic/17/inf/8, para. 2, Annex para. 47; Biber-Klemm/Cottier, pp. 19, 25, 203, 205, 255. 254 See above p. 22.

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Agreement which refer to the nationality or domicile of an intellectual property right owner (paragraph 3) or alleged violator (paragraph 4) in order to determine the requesting Member (paragraph 4) or the other Member ‘to which the request for consultations has been addressed’ (paragraph 3). A General Matters 1 Applicability As set out, the finding that intellectual property rights in terms of Article 1.2 of the trips Agreement do not apply does not, in principle, exclude the application of Article 10bis of the Paris Convention (1967).255 In view of their different purposes, both areas of law have an independent scope of application with the proviso that the assessments and rigid (formal, substantive, temporal) boundaries of intellectual property law are being respected.256 For instance, the legal term of protection of patents must not be effectively extended by an application of Article 10bis of the Paris Convention (1967).257 Likewise, procedural rules such as Article 29 of the trips Agreement must not be circumvented by way of Article 10bis of the Paris Convention (1967).258 The above-said becomes relevant when the legislature takes notice of a particular subject matter and makes the conscious decision not to bring it under intellectual property protection but to leave it in the public domain.259 The 255 See above p. 22. 256 Glöckner, Europäisches Lauterkeitsrecht, pp. 410, 593 f; Ghidini, pp. 113 ff. See above p. 152. For United States law, see United States District Court, S.D. New York, Decorative Aides v. Staple Sewing Aides, p. 160. For German law, see Ohly, ‘The Freedom of Imitation and Its Limits’, p. 523; Eck in Gloy/Loschelder/Erdmann, § 56 para. 8. For Swiss law, see Thouvenin, pp. 508 ff. For Spanish law, see Alicante Community Trademark Court, Asterix (2008) 39 International Review of Intellectual Property and Competition Law 364, 371 f. For Peruvian law, see Sainz de Aja in Pasquel/Patrón/Pérez Costa, pp. 51 f. 257 For United States law, see Supreme Court of United States, Bonito Boats v. Thunder Craft Boats, p. 152; Supreme Court of United States, Kellogg v. National Biscuit, pp. 118 ff (Brandeis J.); Dinwoodie in Ginsburg/Dreyfuss, pp. 246 f. For German law, see Ohly, ‘The Freedom of Imitation and Its Limits’, p. 523; Heermann/Hirsch, Grundl paras. 227, 230, § 4 Nr. 9 uwg para. 27. Different for Community designs, Article 96(1) of the Council Regulation on Community designs: ‘The provisions of this Regulation shall be without prejudice to any provisions of Community law or of the law of the Member States concerned relating to … unfair competition.’ 258 For German law, see Ohly in Ohly/Sosnitza, § 4.9 para. 9/16. 259 For English law, see High Court of Justice (Chancery Division), Oren v. Red Box Toy Factory, para. 42: ‘It is not for the courts to invent that which Parliament did not create.’ For United States law, see Supreme Court of United States, Dastar v. Twentieth Century Fox Film, pp. 33 f;

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operative word is ‘conscious’, for otherwise a gap would be given. Two things follow from this: − Unfair competition law must not frustrate an expressed legislative will by granting protection where intellectual property law denies it (so-called ‘preemptive effect’ of intellectual property law).260 − If, however, a topic has come on the agenda only after the completion of the law-making procedure – in this context the Uruguay Round –, no adverse legislative will can be inferred from its non-regulation. We start from the following premises: First, there is no intellectual property right that comprehensively regulates the subject of traditional knowledge.261 Second, from the finding that paragraph 2 constitutes an expression of good faith in international law,262 and the wording ‘in particular’ in paragraph 3 which suggests that the regulation is not exhaustive,263 one can conclude a gap-filling function of paragraph 2 of Article 10bis of the Paris Convention (1967) for the intellectual property system.264 Ergo, if intellectual property protection fails, i.e. if the occurrence of a lacuna is unintentional, the doctrine of unfair competition may fill in, and thus serve as a stopgap.265 The deliberate incorporation of paragraph 2 of Article 10bis of the Paris Convention (1967) into wto law can be seen as evidence that the framers wanted to provide for such a case.266 As a result, the fact that a particular subject matter does not fall within the ambit of conventional intellectual property rights does not imply that it is entirely without protection because unfair competition law might be pertinent.267 Whether international protection against unfair competition

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261 262 263 264 265 266 267

Supreme Court of United States, Goldstein v. California, pp. 567 ff (Burger C.J.); Schechter, pp. 247 f. For German law, see Ohly in Ohly/Sosnitza, Einf D paras. 80, 82. wipo, Protection Against Unfair Competition, para. 107; Cottier/Germann in Takagi/Allman/Sinjela, pp. 139 f; Henning-Bodewig, Unfair Competition Law, p. 4; Westkamp, ‘trips Principles, Reciprocity and the Creation of Sui-Generis-Type iprs’, pp. 837 f. For German law, see Ohly, ‘The Freedom of Imitation and Its Limits’, p. 523; de Vrey, p. 194. For Dutch law, see de Vrey, pp. 140, 142. See above p. 142. See above p. 93. See above p. 22. See above p. 72. See above p. 22. See above p. 65. Cf. Biber-Klemm/Szymura Berglas in Biber-Klemm/Cottier, p. 20. For Austrian law, see Oberster Gerichtshof [Austrian Supreme Court of Justice], Advertising Photos (2007) 38 International Review of Intellectual Property and Competition Law 622, 625.

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goes so far as to restrict the acquisition or appropriation of an intangible is a matter to be determined. Third, traditional knowledge was not a topic during the Uruguay Round.268 It is true that it came up prior to that in other forums. For instance, the Agenda 21, adopted at the United Nations Conference on Environment and Development in Rio de Janeiro in 1992, prompts ‘Governments and, where appropriate, intergovernmental organizations’ to recognize traditional knowledge in paragraph 26.3(a)(iii), and in paragraph 26.4, Governments to (a) Consider the ratification and application of existing international conventions relevant to indigenous people and their communities (where not yet done) and provide support for the adoption by the General Assembly of a declaration on indigenous rights; (b) Adopt or strengthen appropriate policies and/or legal instruments that will protect indigenous intellectual and cultural property and the right to preserve customary and administrative systems and practices. The Agenda 21 sets up an action plan, and is therefore not legally binding.269 Furthermore, the unccd, adopted in 1994, calls for adequate protection of traditional knowledge in Articles 16(g) and 18(2)(b), but leaves it to the discretion of the national legislature to decide whether and how to implement a protective regime. Only after the wipo fact finding missions had been launched in 1998/1999 did the necessity to elaborate a legal instrument for the international protection of traditional knowledge come to the fore.270 Consequently, paragraph 19 of the Doha Ministerial Declaration of 2001 labelled this a new development. It follows that neither an exclusion of traditional knowledge protection nor an opposing will of the wto Membership to this effect can be deduced from the absence of an explicit regulation in the trips Agreement. Hence, recourse to Article 10bis of the Paris Convention (1967) is possible in principle. That said, the concept of legitimate expectations is ruled out here because its precondition is not met: nobody could have legitimately associated any expectations as regards traditional knowledge with the conclusion of the trips Agreement in 1994. 268 Gopalakrishnan/Nair/Babu, p. 9; Cottier/Panizzon in Biber-Klemm/Cottier, p. 209; Haugen, p. 666. 269 Böckenförde, p. 78; Grimeau, p. 143. 270 wipo Fact-Finding Missions, wipo Doc. pcipd/1/10, paras. 1 ff; wipo Publication No. 768, Part 1, pp. 5 f, 16; Stoll/von Hahn in von Lewinski, pp. 36 f; Sinjela/Ramcharan, pp. 16 f.

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Above, we stated that traditional knowledge is basically information.271 This being the case, the question arises whether, by implication, disclosed information is barred from the scope of Article 10bis of the Paris Convention (1967) by reason of the fact that the protection of undisclosed information is specially regulated in Article 39 of the trips Agreement. The requirements of this lex specialis must not be circumvented by recourse to paragraph 2 of Article 10bis of the Paris Convention (1967).272 If, arguendo, Article 10bis of the Paris Convention (1967) protected information from unfair competition in general, its ambit would also include undisclosed information.273 Then, the function of Article 39 of the trips Agreement would be reduced to a declaratory one (ex abundante cautela).274 To answer that question, we need to have a closer look at the wording of paragraph 1 of Article 39 of the trips Agreement. It provides as follows: In the course of ensuring effective protection against unfair competition as provided in Article 10bis of the Paris Convention (1967), Members shall protect … Systematically, the protection of undisclosed information is designed as a subcategory of unfair competition law.275 Negotiators may always pick one case of application of the doctrine of unfair competition and give it a specific regulation without prejudice to the other instances which continue to fall under paragraph 2 of Article 10bis of the Paris Convention (1967). In other words, the general applicability of Article 10bis of the Paris Convention (1967) is not foreclosed by the codification of legal examples.276 On the contrary, it remains in reserve in order to fulfil its purpose ‘to assure … effective protection against unfair competition’, cf. paragraph 1 thereof. Moreover, paragraph 3 of Article 39 of the trips Agreement refers to ‘unfair commercial use’. As the second sentence of this provision shows, the scope of 271 See above p. 162. 272 See above p. 72. 273 For this issue, see de Carvalho, The trips Regime of Antitrust and Undisclosed Information, paras. 39.1.36 ff. 274 De Carvalho, The trips Regime of Antitrust and Undisclosed Information, paras. 39.1.43, 39.1.50; Wadlow, ‘Regulatory Data Protection Under trips Article 39(3) and Article 10bis of the Paris Convention’, p. 393; Reger, p. 254; Krasser in Beier/Schricker, p. 216. 275 Henning-Bodewig, ‘„Unlautere“ Geschäftspraktiken und der Bezug zu Art. 10bis pvü’, p. 1003; Beater, Unlauterer Wettbewerb, § 4 para. 371; Brand in Stoll/Busche/Arend, Article 2 para. 112; Wadlow, ‘Regulatory Data Protection Under trips Article 39(3) and Article 10bis of the Paris Convention’, pp. 393 f. 276 Cottier/Jevtic in Drexl et al., p. 677.

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the doctrine of unfair competition comprises disclosed information as well.277 What the term ‘unfair commercial use’ means in a given case depends on whether or not the submitted data have been disclosed by the government or governmental agencies.278 On the face of it, one might assume that footnote 10 to Article 39.2 of the trips Agreement also applies to ‘test or other data’ because before disclosure they constitute undisclosed information.279 However, paragraph 3 is about an act by the government, namely the facilitation of free riding on such data by using them in a marketing approval procedure at the instance of a competitor of the originator.280 On this account, the dishonest commercial practices specified in footnote 10 do not fit: not ‘breach of contract’ because the submission of the data does not occur on a contractual basis but is mandatory (‘as a condition of approving the marketing’);281 not ‘breach of confidence’ because there is not the same degree of confidence towards ‘governments or governmental agencies’ in an approval procedure that exists in a private law relationship (for this very reason the special regulation in paragraph 3 was necessary);282 therefore, no ‘inducement to breach’ can be seen in the instigation of an administrative procedure by a competitor of the first registrant.283 The second sentence of Article 39.3 of the trips Agreement assures that the protection from unfair competition does not end after the data have been disclosed. It reads, in relevant part, as follows: Members shall protect such data against disclosure … unless steps are taken to ensure that the data are protected against unfair commercial use. That is to say, should the data be disclosed, measures against unfair commercial use are mandatory.284 The commercial aspect is fulfilled if the behaviour at issue is carried out with a view to profiting.285 In that case, paragraph 1 of 277 278 279 280 281 282 283 284 285

De Carvalho, The trips Regime of Antitrust and Undisclosed Information, para. 39.3.166. Ibid paras. 39.3.90 ff. Cf. Correa, Trade Related Aspects of Intellectual Property Rights, p. 366. De Carvalho, The trips Regime of Antitrust and Undisclosed Information, paras. 39.3.51, 39.3.67 ff, 39.3.85 ff, 39.3.90 f. Ibid paras. 39.3.122 ff. Cf. Reichman, ‘Rethinking the Role of Clinical Trial Data in International Intellectual Property Law’, pp. 20 f. Cf. de Carvalho, The trips Regime of Antitrust and Undisclosed Information, paras. 39.1.46 f, 39.3.89, 39.3.168. unctad-ictsd Resource Book, pp. 531 f; de Carvalho, The trips Regime of Antitrust and Undisclosed Information, para. 39.3.166; Skillington/Solovy, pp. 33, 35. Skillington/Solovy, pp. 29, 32.

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Article 39 of the trips Agreement comes into play, referring to, inter alia, paragraph 3 of Article 10bis of the Paris Convention (1967). Just like geographical indications, the then publicly accessible data must not be used in a confusing (No. 1), discrediting (No. 2) or misleading (No. 3) way, for this would constitute an unfair use. As long as the data are secret, however, an application of paragraph 3 of Article 10bis of the Paris Convention (1967) is not conceivable: requirements like ‘confusion’ (No. 1), ‘in the course of trade’ (Nos. 2 and 3) or ‘the public’ (No. 3) can logically only be met after disclosure. In the final analysis, the protection of disclosed information by virtue of Article 10bis of the Paris Convention (1967) is not a priori excluded. 2 Triangular Relationship The crucial point will be whether the misappropriation of traditional knowledge can be construed as an ‘act of unfair competition’ within the meaning of paragraph 2 of Article 10bis of the Paris Convention (1967). To this end, there must first be an ‘act of competition’. Hence, we have to deal with the issue in which relationship the actual act of competition occurs. In this context, we can distinguish between − the relationship between the appropriating actor and the traditional knowledge holder and − the relationship between the appropriating actor and its competitors. The starting point is the consideration that often traditional knowledge has not been commercialized by its holders.286 In these cases, traditional knowledge holders are not on the market, much less on the export market.287 They consequently do not compete with the appropriator. Thus, it is in the second relationship where the struggle for competitive advantages takes place. The first-mentioned relationship is only established by the act of misappropriation itself, which is intended to provide the appropriator with a competitive advantage over its rivals.288 As a side note, the holders’ incapacity or unwillingness to capitalize on traditional knowledge on their own does not imply an 286 List and Brief Technical Explanation of Various Forms in which Traditional Knowledge May be Found, wipo Doc. wipo/grtkf/ic/17/inf/9, Annex paras. 46 ff; Composite Study on the Protection of Traditional Knowledge, wipo Doc. wipo/grtkf/ic/5/8, para. 29. 287 Hansen/VanFleet, p. 28. Two counterexamples relating to basmati rice and the Enola bean are given by Manley, pp. 114 ff. 288 For a similar example from German law, see Eck in Gloy/Loschelder/Erdmann, § 56 para. 200; Götting, Wettbewerbsrecht, § 5 para. 23.

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a­ bandonment of all economic interests and is therefore not at odds with the principle of benefit-sharing, as set out in Articles 1 and 8(j) of the cbd.289 This leads to the question of whether Article 10bis of the Paris Convention (1967), in light of the requirement of an act of competition, is only applicable if the holders trade in traditional knowledge.290 In this triangular relationship, the competitors of the appropriator (e.g. other pharmaceutical companies) are merely indirectly affected by the appropriation. As for the holders, the appropriation does not detract from their enjoyment of traditional knowledge,291 given its nature as an informational good.292 Accordingly, no immediate harm to the detriment of the holders can be seen in the fact that the appropriator takes profits out of the knowledge, profits which the holders would not have generated themselves. Nor can it be seen in the claim that misappropriation of traditional knowledge amounts to an offense to its spiritual or cultural value293 because, at this stage, wto law is solely concerned with competitive opportunities. Even though it may be true that currently no economic loss can be ascertained at the expense of the holders, I recall that we deduced from the term ‘act of competition’ in paragraph 2 of Article 10bis of the Paris Convention (1967) the prerequisite of at least a potential competitive relationship.294 In particular, we found that it suffices for the aggrieved person to engage in competition with the actor at any time.295 This seems to be given with respect to the holders, as their intention to market traditional knowledge in the future is not a priori foreclosed.296 If an act of misappropriation made that knowledge known abroad, be it in the wake of a patent disclosure in terms of Article 29.1 of the trips Agreement or otherwise, an opportunity for monetary return for the benefit of the original holders would be irreversibly impaired.297 In this connection, it bears emphasizing that the finding that a potential competitive relationship is sufficient concerns foreign trade relations. That is to say, the 289 See above p. 164. Cf. Anuradha, ‘iprs’, p. 33. 290 In affirmation, von Lewinski, p. 510. 291 Cf. Cullet et al. in Biber-Klemm/Cottier, p. 115. For the legal situation when a third party manages to patent traditional knowledge, see below p. 182. 292 See below p. 222. 293 See above p. 156. 294 See above p. 75. 295 See above p. 75. 296 See United Nations University – Institute for the Advanced Study of Sustainability (2015) Traditional Knowledge Initiative accessed 8 December 2015. 297 Arezzo, p. 373.

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decision to market traditional knowledge in principle has to be distinguished from the decision to export it. While the interest to export need only be potential, the commercial interest must be actual. Correspondingly, the Appellate Body in ec – Bananas iii (Article 21.5 – us) did not fail to mention that the United States produces bananas, albeit in small quantities, and that there is an internal market for bananas, with the consequence that the United States ‘could at any time start exporting the few bananas it produces to the European Communities.’298 As a result, Article 10bis of the Paris Convention (1967) is only applicable to protect traditional knowledge that is commercialized.299 Failing that, Article 39.1 and 2 of the trips Agreement may be pertinent in accordance with the guidelines described above.300 The requirement of a competitive relationship further entails that, next to the actor, the party affected by the act must be identifiable. From this it follows that Article 10bis of the Paris Convention (1967) only offers a solution for traditional knowledge that is traceable to a particular entity.301 This can be a community, since it is included in the personal scope of protection of Article 10bis of the Paris Convention (1967),302 but not the entire indigenous world. Consequently, the knowledge of e.g. the wound-healing effect of camomile or the relaxing effect of valerian are not encompassed because they are universally renowned. Examples of traceable traditional knowledge can be found in the Honey Bee Network, which explicitly acknowledges the source.303 We will examine next whether a Member has ius standi only if there is traditional knowledge within its borders, or whether it can demand the protection of traditional knowledge abroad even without possessing traditional knowledge itself. This is questionable because, unlike in the ec – Bananas iii case, where a potential export interest was given on the part of the complainant,304 no legitimate interest for protection is discernible in the latter case. At the same 298 Appellate Body Reports, ec – Bananas iii (Article 21.5 – Ecuador ii)/ec – Bananas iii (Article 21.5 – us), paras. 458 (quoting Appellate Body Report, ec – Bananas iii, para. 251), 469. 299 For German law, see Westkamp, ‘Direct Appropriation, Unfair Competition and QuasiProprietary Rights’, pp. 76 f. 300 See above p. 164. 301 Cf. Anuradha, ‘iprs’, pp. 35 f. 302 See above p. 53. 303 Honey Bee, About Us accessed 8 December 2015. See also Hardison, The Report on Traditional Knowledge Registers (tkrs) and Related Traditional Knowledge Databases (tkdbs), cbd Doc. unep/cbd/wg8J/4/inf/9, para. 45; Kiene, The Legal Protection of Traditional Knowledge in the Pharmaceutical Field, p. 51. 304 Appellate Body Report, ec – Bananas iii, para. 136.

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time, the Appellate Body clarified that the factors adduced in ec – Bananas iii would not ‘necessarily be dispositive in another case.’305 So would the universal interest in the preservation of traditional knowledge be sufficient? 3 Standing Before ec – Bananas iii, it was controversial whether a legal interest is requisite to bring a complaint, considering that the International Court of Justice established such a requirement in the Barcelona Traction ii case.306 The question arose whether the same holds true for wto law. In ec – Bananas iii, the Appellate Body negated this and found instead that ‘a Member has broad discretion in deciding whether to bring a case against another Member under the dsu.’307 The rationale was that with the increased interdependence of the global economy, … Members have a greater stake in enforcing wto rules than in the past since any deviation from the negotiated balance of rights and obligations is more likely than ever to affect them, directly or indirectly.308 By the same token, the panel in Korea – Dairy dismissed the precondition of an economic interest.309 Applying this to the present case, it cannot be ruled out that the internal market of a non-provider of traditional knowledge could be affected as well, at least indirectly. In addition, each Member has an interest in the observance of the minimum standard, as laid down in Article 10bis of the Paris Convention (1967) in conjunction with Article 2.1 of the trips Agreement.310 Whether this standard covers the protection of traditional knowledge is a question of substantive law. As a result, even Members that are not a country of origin of traditional knowledge may initiate wto proceedings to that end. In fact, complaints have been admitted, although the wto violations were disadvantageous to 305 Appellate Body Report, ec – Bananas iii, para. 138. 306 International Court of Justice, Judgment, Barcelona Traction ii, paras. 35 f. 307 Appellate Body Report, ec – Bananas iii, paras. 132, 135. See also Kennedy, p. 44; Gazzini, p. 736; Marceau, ‘wto Dispute Settlement and Human Rights’, p. 758. Vranes, ‘Jurisdiction and Applicable Law in wto Dispute Settlement’, p. 271, demands a legal interest, however under reduced scrutiny. 308 Appellate Body Report, ec – Bananas iii, para. 136, quoting Panel Reports, ec – Bananas iii (Ecuador)/(us), para. 7.50. 309 Panel Report, Korea – Dairy, para. 7.13. 310 Cf. Cameron/Gray, pp. 288 f.

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third Members.311 Furthermore, I add for consideration that the legal costs for wto proceedings are so high that the creation of an Advisory Centre on wto Law was necessary so as to improve access of developing and less-developed countries to the dispute settlement system.312 These costs amount to a factual obstacle against litigation that does not promise to be fruitful. Hence, there is no need to verify whether a Member has correctly exercised its judgment according to the first sentence of Article 3.7 of the dsu.313 The Appellate Body in ec – Bananas iii was, therefore, right in finding that ‘a Member is expected to be largely self-regulating’ in this respect.314 4 Private Use of Traditional Knowledge Some general observations can be made about Article 10bis of the Paris Convention (1967) in relation to traditional knowledge. Its scope of application is restricted to acts of competition and only deals with ‘practices in industrial or commercial matters’. This entails that only the industrial or commercial (mis) use of traditional knowledge, but not its private use, can be addressed by this Article. Private use denotes the utilization for household purposes by a noninstitutional actor without gainful intent.315 Commercial use would be the offering of the acquired or appropriated traditional knowledge on the market.316 Industrial use would be e.g. its usage in the production process. In sum, the acquisition or appropriation of traditional knowledge alone would not trigger the protection under Article 10bis of the Paris Convention (1967); additionally, the acquired or appropriated knowledge must be used for business purposes. This complements the above-stated requirement of commercialization.317 That said, the custodians themselves may continue to take advantage of traditional knowledge in any event, and pass it on to the next generation.318

311 Cf. Appellate Body Report, us – Section  211 Appropriations Act, paras. 275 ff; Appellate Body Report, us – Line Pipe, paras. 121 f, 132 f. 312 Moore in Macrory/Appleton/Plummer, vol. i, p. 43; Shaffer in Maskus/Reichman, p. 899; Advisory Centre on wto Law, The acwl’s Mission accessed 8 December 2015. 313 Cf. Appellate Body Report, ec – Bananas iii, para. 135; Appellate Body Report, Mexico – Corn Syrup (Article 21.5 – us), para. 74; Panel Report, Argentina – Financial Services, para. 7.195. 314 Appellate Body Report, ec – Bananas iii, para. 135. 315 Cf. Glossary, wipo Doc. wipo/grtkf/ic/28/inf/7, Annex p. 44. 316 Cf. Glossary, wipo Doc. wipo/grtkf/ic/28/inf/7, Annex p. 44. 317 See above p. 178. 318 See above p. 178. See also de Carvalho, ‘From the Shaman’s Hut to the Patent Office’, p. 183.

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This corresponds to international legal practice.319 Worries of indigenous peoples in this regard are therefore unjustified. Even the granting of a patent in Member A for an invention developed on the basis of traditional knowledge could not prevent its use in Member B because of the limited territorial scope of patents.320 It is true that, by virtue of Articles 1.1.1, 27.1 of the trips Agreement, the countries of origin of traditional knowledge that are wto Members are obliged to introduce patent protection, and according to Article 28.1 of the trips Agreement, to guarantee the exclusive right of the patent owner ‘to prevent third parties not having the owner’s consent from … using’ the respective invention. However, the patent offices of those Members may reject patent applications relating to traditional knowledge on the grounds that the patentability requirements are not met in their jurisdiction.321 Also, a patent on an invention that is based on traditional knowledge would only restrict the use of the derived invention, not of the underlying traditional knowledge.322 What would be precluded is the exportation of the invention from Member B to Member A where the patent is effective. 5 Requirement of Use The protection of trademarks and geographical indications can be made subject to a requirement of use.323 Ergo, disuse may result in the loss of protection.324 Analogously, traditional knowledge protection is contingent upon the 319 Cf. Article 27 of the iccpr; Articles 11(1), 12(1), 24(1), 31(1) of the drips; paragraph 16(a) (iii) of the Bonn Guidelines; Article 4(b) of the Decision 391 of the Andean Community; ­Article 57 No. 12 of the Constitution of Ecuador; Article 4(2) of the Costa Rican ­Biodiversity Law; Article 6(2) of the Ethiopian Proclamation No. 482/2006; Section 11 of the adopted ­Swakopmund Protocol; Article 2(2)(ii) of the African Model Legislation; ­Section  7(3) of the Pacific Model Law; Sections 32, 34 of the Philippines Indigenous ­Peoples Rights Act; Section 32 of the Biodiversity Act of Bhutan. See also Permanent ­Forum on Indigenous ­Issues, Report of the Secretariat on Indigenous traditional knowledge, un Doc. E/C.19/2007/10, para. 5. 320 Herrmann/Weiß/Ohler, § 19 para. 907; Cottier, ‘Industrial Property, International Protection’ in mpepil, para. 32; Busche in Stoll/Busche/Arend, Introduction ii para. 10; Straus/ Klunker, p. 95; Karjala, p. 488. See above p. 147. 321 Cf. Article 82 of the Venezuelan Law on Biological Diversity; Sections 3(p), 25(1)(k), (2)(k) of the Indian Patents Act. See also The Protection of Traditional Knowledge and Folklore, wto Doc. ip/C/W/370/Rev.1, para. 9 last bullet; Cabrera Medaglia/Perron-Welch/Rukundo, p. 11; Chen, p. 28. 322 Ebermann, p. 133. 323 Articles 15.3, 19, 24.9 of the trips Agreement. 324 unctad-ictsd Resource Book, pp. 245, 307.

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requirement that indigenous and local communities put it to use.325 Otherwise, in my view, a protective regime in their favour would not be justified. With a view to advocating for the protection of traditional knowledge, indigenous peoples bring forward the argument that traditional knowledge forms a vital part of their culture.326 This argument, however, is only valid insofar as traditional knowledge is still being used by them. Thereby, the custodians manifest its meaningfulness for their lives today, and at the same time give expression to their continued association with it.327 It is upon this association that their legitimate interest in traditional knowledge is predicated.328 If indigenous and local communities, by contrast, stopped making use of traditional knowledge and thus broke off that fundamental association, it would be difficult to think of it as ‘traditional’.329 The same holds true for native land titles, as Brennan J. in Mabo noted: Where a clan or group has continued to acknowledge the laws and (so far as practicable) to observe the customs based on the traditions of that clan or group, whereby their traditional connexion with the land has been substantially maintained, the traditional community title of that clan or group can be said to remain in existence. … However, when the tide of history has washed away any real acknowledgment of traditional law and any real observance of traditional customs, the foundation of native title has disappeared. A native title which has ceased with the abandoning of laws and customs based on tradition cannot be revived for contemporary recognition.330 Importantly, this does not force traditional knowledge holders into a particular pattern of living,331 nor are they precluded from developing their knowledge further. On the contrary, commensurate with their right to development, as embedded in Principle 3 of the Rio Declaration on Environment and Development, a use requirement encourages indigenous and local communities to 325 326 327 328

Cf. Bhaur, p. 355. See above p. 156. Khan, p. 85; Manley, p. 113; Correa, ‘Traditional Knowledge and Intellectual Property’, p. 3. Cf. Section  4(ii) of the adopted Swakopmund Protocol; Draft Gap Analysis, wipo Doc. wipo/grtkf/ic/13/5(b) Rev., Annex i para. 70; Taubman/Leistner in von Lewinski, pp. 80, 85. 329 Revised Objectives and Principles, wipo Doc. wipo/grtkf/ic/18/5, Annex p. 74. 330 High Court of Australia, Mabo v. Queensland (No. 2), para. 66. See also s 51(1)(b) nz Marine and Coastal Area Act; Mostert, ‘Aboriginal Title’ in mpepil, paras. 15, 18 f, 33. 331 Cf. Biber-Klemm/Szymura Berglas in Biber-Klemm/Cottier, p. 27.

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continue the tradition of their ancestors, which the Four Directions Council describes as follows: the social process of learning and sharing knowledge, which is unique to each indigenous culture, lies at the very heart of its ‘traditionality’. Much of this knowledge is actually quite new, but it has a social meaning, and legal character, entirely unlike the knowledge indigenous peoples acquire from settlers and industrialized societies.332 That is to say, traditional knowledge is not cast in concrete; its continuous advancement is implicit in the concept.333 6 Preliminary Findings Article 10bis of the Paris Convention (1967) is applicable to the issue of traditional knowledge in principle. An opposing will of the wto Membership cannot be detected. Furthermore, an application of this provision to disclosed information is not ruled out by the existence of Article 39 of the trips Agreement. Having said that, there are some important limitations: Article 10bis of the Paris Convention (1967) can only tackle traditional knowledge that − is commercialized (that it is also imported and exported is not a precondition, however) and − can be traced to a holder, e.g. an indigenous or local community, and − only the commercial use thereof, not its private use. Additionally, I submit that traditional knowledge must be still used by the original holders in order to qualify for protection, as otherwise their interest in that knowledge would not be legitimized. On the procedural side, even Members that have no traditional knowledge within their territory can take legal action under Article 10bis of the Paris Convention (1967) in conjunction with Article 2.1 of the tirps Agreement with a view to preventing its exploitation. Neither a legal nor an economic interest is required. B Misappropriation as an Act of Unfair Competition The basic legal question here is whether the appropriation of traditional knowledge against or without the will of the original holders can be construed 332 Cited in Implementation of Article 8( j), cbd Doc. unep/cbd/cop/3/19, para. 79. 333 See above p. 142.

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to be ‘contrary to honest practices’. In the previous part, we defined a violation of honest practices as meaning at least the violation of particular rules of international law.334 Being an open concept, ‘honesty’ necessitates an inflow from general international law to be operational. In other words, its ordinary meaning is shaped by international law.335 To this end, general principles of law within the meaning of Article 38(1)(c) of the icj Statute come into consideration.336 The case at hand is reminiscent of the classic constellation governed by the principle of unjust enrichment,337 a well-established general principle of law, that stems from Roman law and is embodied in the Members’ legal orders in some form or other.338 The principle derives from natural justice and purports that no one shall enrich oneself to the detriment of another (‘iure naturae aequm est neminem cum alterius detrimento et iniuria fieri locupletiorem’).339 At the international level, it was applied e.g. in the Iran-us Claims Tribunal cases.340 Its basic elements are (1) acquisition/retention of an asset, (2) enrichment of the actor at the expense of another, and (3) absence of a legal entitlement of the actor to the enrichment.341 334 335 336 337

See above p. 107. Cf. McLachlan, p. 312. See above p. 109. See above p. 109. For the interplay between the doctrines of unfair competition and unjust enrichment in general, see Kamperman Sanders, Unfair Competition Law, pp. 134 ff. For an example of this interplay from Israeli law, see Deutch, pp. 520 f. 338 Honsell, pp. 158 ff; Berger, p. 405; Binder/Schreuer, ‘Unjust Enrichment’ in mpepil, para. 11; Degeling/Edelman, pp. 1, 3 f, 35, 178; Gamertsfelder/Fitzgerald, p. 244. For United States law, see Section  3(a) of the Uniform Trade Secrets Act; Section  45 of the Restatement (Third) of Unfair Competition. For Israeli law, see Elkin-Koren/Salzberger, pp. 551 ff. See Westkamp, ‘The Recognition and Status of Traditional Knowledge in the Conflict of Laws’, pp. 714 ff, 725, for the protection of traditional cultural expressions. It seems that Draft Gap Analysis, wipo Doc. wipo/grtkf/ic/13/5(b) Rev., Annex i para. 48, wants to limit the application of unjust enrichment to national law, but it also operates in international law, see footnote 401. 339 Balganesh, ‘Rethinking Copyright’, p. 348; Virgo in Degeling/Edelman, p. 148; Hill, para. 48; Kamperman Sanders in Bently/Maniatis, p. 231; Franck, p. 50; Berger, p. 405; Supreme Court of Louisiana, Edmonston v. A-Second Mortgage Co. of Slidell, p. 120. 340 Sea-Land Service, Inc. v. The Islamic Republic of Iran, Ports and Shipping Organisation (Case No. 33), summary of the case available at accessed 8 December 2015; Binder/Schreuer, ‘Unjust Enrichment’ in mpepil, paras. 19 ff. For the application of the principle of unjust enrichment in international investment law, see unctad, Fair and Equitable Treatment (1999), p. 12. 341 Westlaw, Black’s Law Dictionary Online, ‘unjust enrichment’; de Vrey, pp. 48 f; Kamperman Sanders, Unfair Competition Law, pp. 139 ff; Binder/Schreuer, ‘Unjust Enrichment’ in mpepil, para. 1, quoting the Iran-United States Claims Tribunal in Sea-Land Service

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The principle of unjust enrichment aims at the restitution of the appropriated asset.342 It bears noting that wto law does not provide a remedy to compensate for past inaction,343 nor do adopted reports have retroactive effect, cf. the wording of Article 19.1 of the dsu (‘bring the measure into conformity with [the covered] agreement’).344 Accordingly, the panel in us – Certain ec Products stated that ‘retroactive remedies are alien to the long established gatt/wto practice where remedies have traditionally been prospective.’345 On this account, the present claim is directed at cessation of the exploitation of traditional knowledge and non-repetition in the future.346 1 Principle of Unjust Enrichment The constellation at hand meets the first two requirements: Against the background that traditional knowledge is taken up more and more commercially, it is undisputed that it constitutes an asset, and whoever can dispose of it is enriched by its value.347 The requirement ‘at the expense of another’ is

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Inc. v. Iran. For United States law, see Supreme Court of Louisiana, Edmonston v. A-Second Mortgage Co. of Slidell, pp. 120 ff; Court of Chancery of Delaware, Cantor Fitzgerald v. Cantor, p. 585; Balganesh, ‘Hot News’, pp. 428, 457. For Australian, Canadian and English law, see Degeling/Edelman, pp. 2, 79, 178 f. For Scottish law, see MacQueen, p. 1. See also Section 1(a) of the Israeli Unjust Enrichment Law; § 812(1) of the German Civil Code; Article 62(1) of the Swiss Code of Obligations. Chambers/Mitchell/Penner, pp. 81 ff, 181 ff, 207 f, 417; Beatson/Schrage, p. 1; Kamperman Sanders, Unjust Enrichment, pp. 18 f. For the common law, see Warren in Degeling/ Edelman, p. 198; Gamertsfelder/Fitzgerald, p. 244. For German law, see Sambuc in HarteBavendamm/Henning-Bodewig, § 4 No. 9 para. 222. Anuradha, ‘Unilateral Carbon Border Measures’, p. 27; Weber, pp. 99 f; Kuijper in Kuijper/ Bronckers, p. 1335; Marceau, ‘wto Dispute Settlement and Human Rights’, p. 769; Grané, pp. 766 ff, 772. Babu, pp. 149 ff; Hilf/Salomon in Hilf/Oeter, § 7 paras. 43, 64; Lester et al., pp. 157 f; Koebele, ‘World Trade Organization, Enforcement System’ in mpepil, paras. 40 ff; Stoll in Wolfrum/Stoll/Kaiser, Article 22 dsu paras. 48 f; Bronckers in Kuijper/Bronckers, pp. 1345 f. Contra Panel Report, Australia – Automotive Leather ii (Article 21.5 – us), paras. 6.22 ff; Eeckhout in Bethlehem et al., pp. 449 ff, 457; Mavroidis, ‘Remedies in the wto Legal System’, pp. 783, 789 f. Panel Report, us – Certain ec Product, para. 6.106. See also Panel Report, Canada – Aircraft Credits and Guarantees, para. 7.170: ‘to the extent that the wto dispute settlement system only provides for prospective remedies, that is clearly the result of a policy choice by the wto Membership.’ Cf. Babu, pp. 89, 149; Marceau, ‘wto Dispute Settlement and Human Rights’, pp. 769 ff. Draft Gap Analysis, wipo Doc. wipo/grtkf/ic/13/5(b) Rev., Annex i para. 121; cbd, Background Material, Traditional Knowledge Information Portal accessed 8 December 2015; Hilty, p. 885; Biber-Klemm in Twarog/Kapoor, p. 95. For the different methods to assess this value, see Zerda Sarmiento, pp. 17 ff.

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not confined to financial losses, and also encompasses the ‘loss of a bargaining opportunity’.348 It was expounded above how the commercial utilization of traditional knowledge by third parties impinges upon the competitive opportunities of the original holders.349 Here, it is important to note that the principle of unjust enrichment does not require the acquired asset to be an achievement on the part of the original holders, nor enrichment and detriment to be equal.350 Concerning the third element, we have to ask what legal cause there is to deny the acquisition and subsequent use of traditional knowledge. The acquisition of an asset is unjustified if the asset is assigned to another by law.351 Appropriating traditional knowledge is therefore unjust (which is, in our preliminary reading, the same as ‘contrary to honest practices’) only if it is assigned to a particular holder.352 Furthermore, the assignment must be valid under wto law. In this regard, different lines of argument come into question, whereby it must be borne in mind that the concept of honesty itself does not assign any assets, nor is this implicit. Similar to criminal law which builds, in the area of property offences, upon the existing ownership structures without defining property, unfair competition law is without prejudice to property relations.353 Consequently, an assignment to traditional knowledge holders can neither be derived from Article 10bis of the Paris Convention (1967), in conjunction with the principle of unjust enrichment, itself354 nor, as set out, from classical property rights.355 An Israeli view considers the original allocation of entitlements as one of the functions of the principle of unjust enrichment.356 However, correctly understood, it solely restores the original state.357 The assignment thus proceeds from law outside the wto framework, if at all. This leads us to the pivotal issue of whether and to what extent non-wto law may be taken into account in wto dispute settlement proceedings. 348 Degeling/Edelman, pp. 5, 115 ff. See also United Kingdom House of Lords, Attorney General v. Blake (Lord Nicholls). 349 See above p. 178. 350 Kamperman Sanders in Bently/Maniatis, p. 232; Kamperman Sanders, Unfair Competition Law, p. 147. 351 For German law, see Bundesgerichtshof, Porträtfoto, para. 24; Bundesgerichtshof, gewinn. de, para. 40. 352 For German law, see Ohly in Ohly/Sosnitza, § 4.9 para. 9/89. 353 See above p. 18. 354 Cf. Ohly, ‘The Freedom of Imitation and Its Limits’, pp. 518 f. 355 See above p. 142. 356 Elkin-Koren/Salzberger, pp. 555 ff, but see pp. 562 f. 357 See above p. 185.

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(a) Non-wto Law as Interpretative Guidance The interrelation between wto law, on the one hand, and general international law, on the other hand, is contested. The starting point is the consideration that wto law forms part of the body of public international law.358 Above, we dealt with the issue of whether, in the context of paragraph 2 of Article 10bis of the Paris Convention (1967), non-wto law can be applied.359 Employing the argument that paragraph 2 can be interpreted as a reference to exogenous sources, we answered this question in the affirmative.360 This concerns the applicability of the principle of unjust enrichment to the present case. At this juncture, the question is of a different nature, namely whether nonwto law may give ‘interpretative guidance’ as to the qualification of the relationship between holder and traditional knowledge.361 On the basis of the view that allows the application of non-wto law,362 the answer is straightforward: since application is more than interpretation, it can be concluded a maiore ad minus that insofar as a wto norm has been invoked (here Article 10bis of the Paris Convention), the terms of reference, as laid down in Article 7 of the dsu, do not prejudge the legal sources to be consulted for the interpretation of that wto norm.363 This also follows from Article 3.2 of the dsu in conjunction with Article 31(3)(c) of the Vienna Convention. From this vantage point, it is not surprising that the Appellate Body levelled criticism against the panel in ec – Computer Equipment for not having regard to the International Convention on the Harmonized Commodity Description and Coding System.364 However, the use of non-wto law in interpreting the wto agreements is not without limits. As a basic principle, wto adjudicators, with a view to ensuring consistency and legitimacy of the wto, should use the built-in freedoms in the 358 Von Bogdandy/Venzke, p. 1354; Cottier/Pauwelyn/Bürgi Bonanomi, pp. 213 f; Pauwelyn in Macrory/Appleton/Plummer, vol. i, pp. 1406 f; Vranes, ‘Jurisdiction and Applicable Law in wto Dispute Settlement’, p. 288. 359 See above p. 109. 360 See above p. 109. 361 Cf. Appellate Body Report, us – Shrimp, para. 158. For the different uses of ‘other’ international law, see Pauwelyn, Conflict of Norms in Public International Law, pp. 201 ff, 273 f; Bartels, pp. 510 ff. 362 See above p. 109. 363 Hestermeyer, Human Rights and the wto, pp. 223 ff; Mavroidis in Wolfrum/Stoll/Kaiser, Article 7 dsu paras. 2 f, 6; Henckels, p. 284; Trachtman in Yerxa/Wilson, p. 140; Macrory/ Appleton/Plummer, vol. i, pp. 1412, 1417, vol. ii, pp. 630 f (relating to human rights); Cottier/Pauwelyn/Bürgi Bonanomi, p. 213; Pauwelyn, Conflict of Norms in Public International Law, pp. 466, 469 f, 492; Bartels, pp. 503, 518 f. 364 Appellate Body Report, ec – Computer Equipment, para. 89.

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covered agreements in a way that does not cause friction with general international law but reconciles them with other legal regimes in force that have a different focus and pursue different objectives.365 In view of the difficulties in amending the wto agreements, this approach helps the dsb to be equal to its task of settling disputes in a ‘satisfactory’ fashion,366 for a satisfactory solution is one that has a sound grasp of contemporary developments. In doing so, international law no longer appears fragmented but interwoven.367 Following this principle is unproblematic with respect to peremptory norms of general international law within the meaning of Articles 53 and 64 of the Vienna Convention because such norms prevail over all other rules that are further down in the hierarchy of norms, including wto rules.368 Since derogation is not allowed, jus cogens must always be considered.369 As for other rules of international law, i.e. all sources of public international law within the meaning of Article 38(1)(a) through (c) of the icj Statute,370 their consideration is subject to the prerequisites of Article 31(3)(c) of the Vienna Convention, which reads as follows: (3) There shall be taken into account, together with the context: … (c) any relevant rules of international law applicable in the relations ­between the parties. 365 Panel Report, us – Section 110(5) Copyright Act, para. 6.66; ‘Conclusions of the work of the Study Group on the Fragmentation of International Law’ [2006] ii (2) Yearbook of the International Law Commission, conclusions (4), (21); Shaffer/Trachtman, p. 131; Trebilcock/Howse/Eliason, p. 701; Hrbatá, p. 30; van Damme in Bethlehem et al., pp. 330 f; Young, pp. 916 f; Linderfalk, On the Interpretation of Treaties, p. 191; Gervais, ‘Agreement on Trade-Related Aspects of Intellectual Property Rights (1994)’ in mpepil, para. 73; Boyle/ Chinkin, p. 137; Remiro Brotóns et al., p. 612; Breining-Kaufmann in Cottier/Pauwelyn/ Bürgi Bonanomi, p. 115; Pauwelyn, Conflict of Norms in Public International Law, p. 252. In relation to core labour rights, see Kaufmann, ‘Trade and Labour Standards’ in mpepil, paras. 42 ff. In relation to human rights law, see Abbott in Abbott/Breining-Kaufmann/ Cottier, pp. 158 f; Petersmann in Macrory/Appleton/Plummer, vol. ii, pp. 630 f. See also Panel Report, ec – Approval and Marketing of Biotech Products, para. 7.70; Simma, pp. 271, 276; Henckels, pp. 287 f, 292. Contra Niemann, pp. 335 f, 366 ff. 366 Article 3.4 of the dsu. Cf. Boyle/Chinkin, p. 244. 367 See above p. 11. 368 Hörmann in Hilf/Oeter, § 27 para. 9. 369 Westlaw, Black’s Law Dictionary Online, ‘jus cogens’, No. 1. 370 Appellate Body Report, us – Definitive Anti-Dumping and Countervailing Duties on Certain Products from China, para. 308; Marceau, ‘wto Dispute Settlement and Human Rights’, p. 780.

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The consideration is mandatory in a good faith interpretation if the prerequisites are met, cf. the word ‘shall’ in the introductory clause.371 Apart from that, non-wto law, including soft law, may inform the ordinary meaning of wto terms just like dictionaries.372 This conforms with the Appellate Body ruling in us – Shrimp in relation to ‘exhaustible natural resources’.373 In ec – Approval and Marketing of Biotech Products the panel clarified that the mere fact that one or more disputing parties are not parties to a convention does not necessarily mean that a convention cannot shed light on the meaning and scope of a treaty term to be interpreted.374 (footnote omitted) It is a matter of course that the greater the support for a convention, the more compelling it becomes for a treaty interpreter to have regard to it.375 The rationale for this is given by the ilc Study Group on the Fragmentation of International Law: certain multilateral treaty notions or concepts, though perhaps not found in treaties with identical membership, are adopted nevertheless widely enough so as to give a good sense of a ‘common understanding’ or a ‘state of the art’ in a particular technical field without necessarily reflecting formal customary law.376 As far as Article 31(3)(c) of the Vienna Convention is concerned, the understanding of ‘parties’ is disputed. Most scholars argue in favour of a reading either as 371 Panel Report, ec – Approval and Marketing of Biotech Products, paras. 7.69 f; Gardiner, Treaty Interpretation, p. 298; Cottier/Panizzon in Biber-Klemm/Cottier, p. 386; Neumann, Die Koordination des wto-Rechts mit anderen völkerrechtlichen Ordnungen, p. 364. 372 Panel Report, ec – Approval and Marketing of Biotech Products, paras. 7.92 ff; van Damme, Treaty Interpretation by the wto Appellate Body, p. 383; Young, pp. 918 ff; Boyle/Chinkin, p. 212; Cottier/Panizzon in Biber-Klemm/Cottier, p. 386. 373 Appellate Body Report, us – Shrimp, paras. 130 f. See also Panel Report, ec – Approval and Marketing of Biotech Products, para. 7.94. Critically, Young, pp. 919 ff. 374 Panel Report, ec – Approval and Marketing of Biotech Products, para. 7.94. 375 ‘Conclusions of the work of the Study Group on the Fragmentation of International Law’ [2006] ii (2) Yearbook of the International Law Commission, conclusion (21); Boyle/ Chinkin, p. 246; Hestermeyer, Human Rights and the wto, p. 222; Young, pp. 916 f; ­Henckels, p. 285. 376 Koskenniemi, Fragmentation of International Law, para. 472. See also Pauwelyn, Conflict of Norms, p. 261.

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‘the parties to a dispute’ or ‘all the parties to the treaty being interpreted’.377 Bearing in mind that the treaty being interpreted here is the wto Agreement, it is clear that there shall be taken into account any relevant rules of international law applicable in the relations between all wto Members. What is contested, however, is whether wto adjudicating bodies are obliged to consider rules of international law that are binding on the disputants but not the entire wto Membership. If so, an international convention which not all Members have ratified could have a bearing on the outcome of a dispute. If not, one threatens to disintegrate public international law. In Large Civil Aircraft, the Appellate Body was hesitant to take sides but rather adopted a case-by-case balancing approach: In a multilateral context such as the wto, when recourse is had to a nonwto rule for the purposes of interpreting provisions of the wto agreements, a delicate balance must be struck between, on the one hand, taking due account of an individual wto Member’s international obligations and, on the other hand, ensuring a consistent and harmonious approach to the interpretation of wto law among all wto Members.378 The Appellate Body thus softened the stance of the panel in ec – Approval and Marketing of Biotech Products, which rebutted the first view, that endorses the consideration of a non-wto rule not binding on all Members, as a matter of law.379 Even though the Vienna Convention speaks in Article 31(2)(a) of ‘all the parties’ as opposed to ‘the parties’ in Article 31(3)(c),380 the panel dismissed an argumentum e contrario, reasoning that this formulation is intended to differentiate subparagraph (a) from subparagraph (b) of Article 31(2), and instead rigidly adhered to the legal definition of ‘party’ in Article 2(1)(g) of the Vienna 377 Pauwelyn, ‘Fragmentation of International Law’ in mpepil, para. 30; Hrbatá, p. 29; van Damme in Bethlehem et al., p. 332; Simma, p. 276; Gardiner, Treaty Interpretation, p. 302; Boyle/Chinkin, p. 246; Mitchell, ‘The Legal Basis for Using Principles in wto Disputes’, p. 816; McLachlan, pp. 291, 313 f; Wolfgang Weiss, p. 195. Neumann, Die Koordination des wto-Rechts mit anderen völkerrechtlichen Ordnungen, pp. 370 f, canvasses the possibility that only one party to a dispute is bound by the relevant rule of international law and rebuts it in principle, but makes an exception for global regulatory treaties, cf. p. 387. 378 Appellate Body Report, ec and certain member States – Large Civil Aircraft, para. 845. 379 Panel Report, ec – Approval and Marketing of Biotech Products, paras. 7.68 ff. See also Panel Report, Argentina – Poultry Anti-Dumping Duties, para. 7.41 footnote 64. Contra Pavoni in Morgera/Buck/Tsioumani, p. 191; Mavroidis, ‘No Outsourcing of Law?’, p. 472; Henckels, p. 305. Panel Report, us – Shrimp (Article 21.5 – Malaysia), para. 5.57, only made reference to the disputants. 380 Cf. Marceau, ‘A Call for Coherence in International Law’, pp. 124 f.

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Convention:381 ‘“party” means a State which has consented to be bound by the treaty and for which the treaty is in force’. The supporting argument that the object of Article 31 of the Vienna Convention is the interpretation of treaties but not dispute settlement382 is rather weak, given that it is often fortuitous when a legal question is brought before a wto adjudicating body and that, for this purpose, the second sentence of Article 3.2 of the dsu declares the very same interpretive standard applicable.383 In other words, it does not matter for the consideration of a non-wto rule whether the issue is pending before the dsb or not. In concert with the ilc Study Group on the Fragmentation of International Law,384 I take the view that, when interpreting wto law, panels should also take into account rules that are not binding upon all Members as long as the rules in question are binding on the parties to the dispute.385 The Study Group puts forth these arguments: First, since it is unlikely that two treaties have identical membership, Article 31(3)(c) of the Vienna Convention would be largely ineffective on the basis of the opposing view.386 In the case of the wto Agreement, almost universal membership of the other treaty would be requisite.387 Second, the counterargument drawing on the risk of divergent interpretations388 is not convincing in light of the legal options to deviate provided for by the Vienna Convention itself, such as reservations (Article 21), successive treaties (Article 30) and inter se modifications (Article 41).389 It is true that Articles 72 of the 381 Panel Report, ec – Approval and Marketing of Biotech Products, para. 7.68. 382 Hestermeyer, Human Rights and the wto, p. 221; Böckenförde, pp. 449 f; Wolfgang Weiss, p. 195. 383 Lennard, pp. 17 f. See above p. 11. 384 Koskenniemi, Fragmentation of International Law, paras. 471 f. 385 Pro Hrbatá, p. 38; Hörmann in Hilf/Oeter, § 27 para. 12; van Damme, Treaty Interpretation by the wto Appellate Body, p. 362; French, pp. 306 f. Contra Puth in Hilf/Oeter, § 25 para. 15; Villiger, Article 31 para. 25; Linderfalk, On the Interpretation of Treaties, p. 178; Pauwelyn, ‘The Role of Public International Law in the wto’, p. 575. 386 Koskenniemi, Fragmentation of International Law, para. 471. See also Pavoni in Morgera/ Buck/Tsioumani, p. 191; Hrbatá, p. 38; Simma, pp. 276 f; Gardiner, Treaty Interpretation, p. 312; McLachlan, p. 314. Contra McGrady, p. 598, arguing that ‘the provision would retain significant utility [as it] continues to compel a decision maker to take rules of international law other than treaties into account’ (emphasis added). 387 Hestermeyer, Human Rights and the wto, p. 222; Young, pp. 915 f; Henckels, p. 293; Böckenförde, p. 449. 388 Boyle/Chinkin, p. 246; Hestermeyer, Human Rights and the wto, p. 221; Wolfgang Weiss, pp. 196, 215. 389 Koskenniemi, Fragmentation of International Law, para. 472. Pro Hrbatá, p. 38; Gardiner, Treaty Interpretation, p. 303; McGrady, pp. 601 ff; Mavroidis, ‘No Outsourcing of Law?’, p. 472. Contra Pauwelyn, ‘The Role of Public International Law in the wto’, p. 567.

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trips Agreement and 32.2 of the Agreement on Subsidies and Countervailing Measures, for instance, make reservations contingent upon ‘the consent of the other Members’, that Article xvi:5 of the wto Agreement outlaws reservations in respect of the wto Agreement altogether,390 and that Article 3.5 of the dsu forbids inter se modifications in ‘matters formally raised under the consultation and dispute settlement provisions of the covered agreements, including arbitration awards’. At the same time, wto law approves inter se modifications by customs unions or free-trade areas commensurate with Articles xxiv:5 of the gatt (1994) and v:1 of the gats391 as well as generalized systems of preferences on the basis of a waiver, cf. Article 41(1)(a) of the Vienna Convention.392 What is more, the opposing view itself is not immune to divergent interpretations, namely in relations to non-state entities.393 According to Article 1, the Vienna Convention, including Article 31(3)(c) thereof, does not apply to such a situation. I would add the following for consideration: Article 7.2 of the dsu, according to which ‘[p]anels shall address the relevant provisions in … agreements cited by the parties to the dispute’ (emphasis added), seems to start from the same premise as the ilc Study Group. It is self-evident that, pursuant to the pacta tertiis rule as embodied in Articles 34 and 41(1)(b) of the Vienna Convention, non-wto law cannot abrogate or amend the rights of wto Members that have not committed themselves thereto.394 However, such a high hurdle like general adherence of all wto Members to a rule in order for it to be considered would only be justifiable if the doctrine of stare decisis applied in wto law. As noted above, there is no formal stare decisis under the dsu;395 only ‘[t]he Ministerial Conference and the General Council … have the exclusive authority to adopt interpretations’ of the covered agreements in accordance with Article ix:2 of the wto Agreement. In the final analysis, rules which are compulsory inter partes play a part in the settlement of disputes, even if they are not binding upon other Members.396 Accordingly, the panel in Korea – Various Measures on Beef explicitly 390 Marceau, ‘wto Dispute Settlement and Human Rights’, p. 767. 391 See also paragraph 7 of the Singapore Ministerial Declaration; paragraph 4 of the Doha Ministerial Declaration. For the relationship between the wto and customs unions/freetrade areas, see Bethlehem et al., pp. 63 ff, 237 ff. 392 Young, pp. 915 f. For inter se modifications of wto law in general, see Vranes, ‘Jurisdiction and Applicable Law in wto Dispute Settlement’, pp. 270 ff. 393 McGrady, pp. 599, 609. 394 Hrbatá, p. 30; Boyle/Chinkin, p. 259. 395 See above p. 68. 396 Cf. McGrady, p. 605; Marceau, ‘A Call for Coherence in International Law’, p. 127.

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examined various bilateral agreements the disputants had concluded.397 The aforementioned fear voiced by the panel in ec – Approval and Marketing of Biotech Products, namely that Article 31(3)(c) of the Vienna Convention ‘could have as a consequence that the interpretation of [the wto Agreement] is affected by other rules of international law which that State has decided not to accept’,398 is unfounded. On account of the inter partes effect, it is ruled out that an adopted report has immediate legal ramifications for non-participants.399 Article 3.5 of the dsu ensures that other Members are not deprived by any decision of the benefits accruing to them under the wto agreements. Also, the consensus requirement in Article x of the wto Agreement is not a tenable counterargument400 because it refers to an amendment of the legal text, and not to its exegesis. (b) Prior Informed Consent Requirement An assignment of traditional knowledge to a particular holder could flow from a prior informed consent requirement, giving the holder the right to say no. A prior informed consent requirement results in the power to control access to and utilization of the corresponding asset on the part of the beneficiary.401 Some Members try to embed such a requirement in wto law itself, but negotiations on that score are at a standstill owing to the single undertaking approach in the wto.402 Since negotiations alone do not create binding commitments,403 we need to investigate hereinafter − whether a requirement to seek consent from the holder(s) before using traditional knowledge exists in international law and, if so, − whether wto law would have to take it into account according to general rules of interpretation. A right of consent might follow from a comparison of laws. The International Court of Justice stated in Barcelona Traction ii that ‘[i]f the Court were to decide the case in disregard of the relevant institutions of municipal law it would, 397 Panel Report, Korea – Various Measures on Beef, para. 539. See also Mavroidis, ‘No Outsourcing of Law?’, pp. 460 f. 398 Panel Report, ec – Approval and Marketing of Biotech Products, para. 7.71. 399 Van Damme, ‘Treaty Interpretation by the wto Appellate Body’, pp. 610 f; Neumann, Die Koordination des wto-Rechts mit anderen völkerrechtlichen Ordnungen, p. 380. 400 Trachtman, ‘Conflict of Norms in Public International Law’, pp. 858 f. 401 Hansen/VanFleet, p. 26. 402 Gervais, The trips Agreement, para. 1.88. 403 The International Dimension, wipo Doc. wipo/grtkf/ic/6/6, para. 37.

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without justification, invite serious legal difficulties.’404 This proposition has general validity and could equally stem from the Appellate Body. There is a growing body of law, national as well as international, recognizing a principle of prior informed consent, which suggests that it is in the process of becoming a general principle of law.405 The criteria relevant for the decision whether it has attained this status can be inferred from the reports in ec – Approval and Marketing of Biotech Products and ec – Hormones and the analogous discussion on the precautionary principle:406 Has there been an affirmative decision by an international court? Has the principle been incorporated into treaties and declarations of various branches of international law? Has the principle been applied nationally? Are definition and content of the principle clear? Does the doctrine consistently approve of the principle? In us – Wool Shirts and Blouses, the Appellate Body for the first time dealt with the emergence of general principles of law.407 In this case, the Appellate Body referred to ‘civil law, common law and, in fact, most jurisdictions’ in order to determine the distribution of burden of proof.408 A closer look at the germane footnote 16 reveals that the Appellate Body effectively drew on American, English, French, Spanish, and Italian literature. This resonates with the fundamental notion to ‘be broadly representative of membership in the wto’, which also appears in other contexts.409 Nowadays, one would expect Chinese and Russian literature to be considered as well.410 More precisely, the International Criminal Tribunal for the former Yugoslavia held in Kunarac: the identification of the relevant international law on the nature of the circumstances … is assisted, in the absence of customary or conventional 404 International Court of Justice, Judgment, Barcelona Traction ii, para. 50. 405 Cf. Issues Related to the Extension of the Protection of Geographical Indications, wto Doc. wt/gc/W/633, paras. 18, 27; Report of the Meeting of the Group of Technical and Legal Experts, cbd Doc. unep/cbd/wg-abs/8/2, para. 68; Taubman/Leistner in von Lewinski, pp. 111, 176; Taubman in Maskus/Reichman, p. 544; Zerda Sarmiento, pp. 10, 19 f. Nijar, ‘Incorporating Traditional Knowledge in an International Regime on Access to Genetic Resources and Benefit Sharing’, pp. 460 f, speaks of a principle of customary international law. 406 Panel Report, ec – Approval and Marketing of Biotech Products, paras. 7.87 f; Appellate Body Report, ec – Hormones, para. 123 footnote 92. See also Bassiouni, ‘A Functional Approach to “General Principles of International Law”’, pp. 788 ff, 809 ff. 407 Göttsche in Hilf/Oeter, § 5 para. 33. 408 Appellate Body Report, us – Wool Shirts and Blouses, p. 14. 409 Cf. the third sentence of Article 17.3 of the dsu; Article 9 of the icj Statute. 410 Cf. Treves, ‘Customary International Law’ in mpepil, paras. 35 f.

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international law on the subject, by reference to the general principles of law common to the major national legal systems of the world. The value of these sources is that they may disclose ‘general concepts and legal institutions’ which, if common to a broad spectrum of national legal systems, disclose an international approach to a legal question which may be considered as an appropriate indicator of the international law on the subject. In considering these national legal systems the Trial Chamber does not conduct a survey of the major legal systems of the world in order to identify a specific legal provision which is adopted by a majority of legal systems but to consider, from an examination of national systems generally, whether it is possible to identify certain basic principles, or in the words of the Furundžija judgement, ‘common denominators’, in those legal systems which embody the principles which must be adopted in the international context.411 (original emphasis) (footnotes omitted) In the present context, the ‘examination of national systems’ would have to take account of countries rich in traditional knowledge in light of the North Sea Continental Shelf judgment. There, the International Court of Justice observed with regard to the development of ‘a general rule of international law’ that it might be that, even without the passage of any considerable period of time, a very widespread and representative participation in the convention might suffice of itself, provided it included that of States whose interests were specially affected.412 (emphasis added) Finally, the panel in us – Gambling clarified that a comparison of laws serves as a ‘supplementary means of interpretation’.413 (i)

Sui Generis Laws

According to a survey conducted by the wipo, almost all sui generis laws relating to traditional knowledge employ a consent requirement.414 It is implemented in such a way that the right of consent is either in favour of 411 412 413 414

International Criminal Tribunal for the former Yugoslavia, Judgment, Kunarac, para. 439. International Court of Justice, Judgment, North Sea Continental Shelf, para. 73. Panel Report, us – Gambling, para. 6.470, see para. 6.473 footnote 914. Comparative Summary of Existing National Sui Generis Measures and Laws for the Protection of Traditional Knowledge, wipo Doc. wipo/grtkf/ic/5/inf/4, Annex pp. 4 ff; Revised Outline of Policy Options and Legal Mechanisms, wipo Doc. wipo/grtkf/ic/9/inf/5,

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− a national authority like the National Biodiversity Authority in India;415 − the custodians;416 − or both.417 The Pacific Model Law constitutes a special case because it provides for the application to an authority ‘to obtain the prior and informed consent of the traditional owners’,418 without precluding direct dealings with them.419 The authority is interposed between the traditional owner(s) and the prospective user. Its function is to identify all the owners and to forward the request but not to give consent in its own right.420 In sum, we can ascertain no uniform practice, not even among the Members that have a sui generis law.421 The differences in whom a right of consent is vested reveal a conflict between indigenous and local communities, on the one Annex para. 35; Nijar, ‘Incorporating Traditional Knowledge in an International Regime on Access to Genetic Resources and Benefit Sharing’, pp. 467, 471; Khan, p. 88. For the conformity of such sui generis laws with wto law, see Westkamp, ‘trips Principles, ­Reciprocity and the Creation of Sui-Generis-Type iprs’, p. 857. 415 Sections 3, 18.2, 19.1 of the Indian Biological Diversity Act. Note that for Indian nationals seeking access to biological resources a mere intimation procedure applies, cf. Sections 7, 24.1 of that Act. See also Lukose, pp. 215 ff; Cabrera Medaglia/Perron-Welch/Rukundo, p. 30. 416 Articles 1, 6, 42 of the Peruvian Law No. 27811; Article 43 of the Venezuelan Law on Biological Diversity; Sections 3(g), 35, 46(a) of the Philippines Indigenous Peoples Rights Act; Sections 34, 21 of the Act on Protection and Promotion of Traditional Thai Medicinal Intelligence. See also Article 31 of the Central American Protocol on Access to Genetic and Biochemical Resources and Associated Traditional Knowledge; Section 7.2 of the Swakopmund Protocol. 417 Articles 7 No. 9, 63, 66 of the Costa Rican Biodiversity Law (according to Article 63 No. 2, a national authority, the Technical Office of the Commission for the Management of Biodiversity, must approve of the prior informed consent of indigenous authorities); Articles 1, 20 of the Panamanian Law No. 20; Articles 5(1), 7, 32, 34 of the Decision 391 of the Andean Community; Sections 37, 39 of the Biodiversity Act of Bhutan; Articles 4, 9, 14 of the Law of the Kyrgyz Republic on the Protection of Traditional Knowledge; Articles 2(8), (11), 6(1), 7, 11(1), 12(2) of the Ethiopian Proclamation No. 482/2006; Articles 3, 10, 11(1), 19 of the African Model Legislation. See also Cabrera Medaglia/Perron-Welch/Rukundo, pp. 14, 17, 28, 42; Cabrera Medaglia in gtz, p. 278; Ni, ‘Legal Aspects of Prior Informed Consent on Access to Genetic Resources’, pp. 252 ff. 418 Section 15(1). 419 Section 25. See also Kariyawasam/Guy, pp. 121 f. 420 Sections 37(a), 17 f. 421 Revised Objectives and Principles, wipo Doc. wipo/grtkf/ic/18/5, Annex p. 39; Robinson, p. 38; Dutfield in Twarog/Kapoor, pp. 148 ff.

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hand, and their home states, on the other hand.422 This leads to the conclusion that no general principle of law has crystallized. (ii)

Codes of Conduct

Indigenous peoples have long fought for control over their traditional knowledge and legal recognition of their holdership, cf. Section  45 of the Charter of the Indigenous-Tribal Peoples of the Tropical Forests,423 Article 102 of the Indigenous Peoples’ Earth Charter.424 To that end, they set up research protocols like the ones issued by the Alaska Native Knowledge Network,425 the Inuit Tapiriit Kanatami,426 or the Sealaska Heritage Institute.427,428 The research community has responded to these concerns with a plethora of guidelines. In 1996, the Biodiversity & Ethics Working Group of Pew Conservation Fellows proposed ‘Biodiversity Research Protocols’ and recommended under Principle 5 that ‘[i]nformed consent should be obtained within limits of practicality’.429 Similarly, the Code of Ethics of the American Anthropological Association stipulates a prior informed consent obligation for anthropological researchers.430 The American Association for the Advancement of Science, by its own account the world’s biggest general scientific society, followed suit and published in 2003 a handbook on traditional knowledge in which the request for prior informed consent is termed ‘a best practice’. Verbatim, it says: ‘most scientists today agree that it is a best practice to obtain prior informed consent for professional and ethical reasons, as well as to avoid challenge or criticism later on.’431 By the same token, the International Society of E ­ thnobiology ­established 422 Nijar, ‘Traditional Knowledge Systems, International Law and National Challenges’, pp. 1212 f; Varadarajan, p. 389; Frein/Meyer, pp. 31 f; von Lewinski, p. 527. 423 ‘All investigations in our territories should be carried out with our consent and under joint control and guidance according to mutual agreement; including the provision for training, publication and support for indigenous institutions necessary to achieve such control.’ 424 Anderson, para. 4.1.2. 425 Guidelines for Respecting Cultural Knowledge, in particular Guidelines for Researchers. 426 Negotiating Research Relationships with Inuit Communities, a Guide for Researchers, pp. 8 f; Negotiating Research Relationships: A Guide for Communities, pp. 22 f. 427 Cultural and Intellectual Property Rights Policy. 428 Anderson, paras. 3.4.1.1 ff. For an overview, see Community Protocols, Community Protocols (2011) accessed 8 December 2015. 429 See the Proposed Guidelines for Researchers and Local Communities Interested in Accessing, Exploring and Studying Biodiversity. 430 Section iii. 431 Hansen/VanFleet, p. 26.

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a code of conduct committing its members to the ‘principle of educated prior informed consent’.432 There is considerable congruence with other guidelines for researchers all over the globe.433 In particular, the Guidelines on Pacific Health Research of the Health Research Council of New Zealand explicitly state under point 9.1: Primary knowledge that is based on experience and expertise belongs to the research participants and should be acknowledged as such. These pronouncements give some indication of ‘honest practices’ because the issuing bodies represent the relevant public in this context.434 At the same time, one has to bear in mind that non-governmental organizations cannot conclusively determine the meaning of a wto term. It may be true that private rule-making can establish ‘practices’, provided that they are supported by the respective business circles, but whether these are to be considered as in conformity with the law, notably as ‘honest’, is a different matter.435 That a professional organization takes the stand that practice A is honest but not practice B does not necessarily imply that this reflects the view of the general public.436 Often, such self-regulations are set up with a view to avoiding stricter regulatory control.437 In addition, they constitute mere recommendations for members, and are thus similar to soft law in this regard.438 If the term ‘honest’ were at the disposal of professional organizations which represent their membership’s interests first and foremost, this would mean that they set down the legal yardstick they are subject to themselves, irrespective of other interests that may merit protection as well.439 This is problematic because through paragraph 2 of Article 10bis of the Paris Convention (1967) those codes of conduct

432 Principle 7. See also Solomon in Twarog/Kapoor, p. 157. 433 Cf. the Traditional Knowledge and Plant Genetic Resources Guidelines of the Southern Africa Network for Biosciences, pp. 12 f; the Guideline of the Institute of Fijian Language and Culture for Socio-Cultural Researchers; the Pasifika Education Research Guidelines of the New Zealand Ministry of Education, pp. 39 f. 434 For German law, see Bundesgerichtshof, Probeabonnement, para. 19; Rittner/Dreher/ Kulka, § 2 para. 181. 435 For German law, see Hasselblatt in Gloy/Loschelder/Erdmann, § 58 para. 121. 436 For German law, see Hasselblatt in Gloy/Loschelder/Erdmann, § 58 para. 121. 437 Höfinghoff, pp. 31 f. 438 Kotzur, ‘Good Faith (Bona fide)’ in mpepil, para. 25. For German law, see Hasselblatt in Gloy/Loschelder/Erdmann, § 58 paras. 121, 132. 439 Wadlow, The Law of Passing-off, para. 2–025; Höpperger/Senftleben in Hilty/HenningBodewig, Law Against Unfair Competition, p. 64.

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would acquire general validity, and also claim authority over non-members.440 Under these circumstances, professional organizations would appoint themselves as legislators. That must not be the case. To conclude, in the absence of legal force, non-compliance with the ­aforementioned codes does not automatically entail a contradiction of honest practices within the meaning of paragraph 2 of Article 10bis of the Paris Convention (1967).441 (iii)

International Law

The starting point from a law-making perspective was the Convention on Biological Diversity, which entered into force in 1993.442 Although the United States of America has not ratified the cbd, the Appellate Body had recourse to it in us – Shrimp in order to construe ‘exhaustible natural resources’ in Article xx(g) of the gatt 1994.443 The cbd has almost universal support.444 It was therefore not surprising that the panel in ec – Approval and Marketing of Biotech Products signalled that the cbd belongs to the body of rules which may inform the ordinary meaning of the terms contained in the covered agreements, without, however, relying on it in that particular case.445 In short, the cbd may bring a traditional knowledge perspective to wto law. The relevant Article 8(j) of the cbd provides as follows: Each Contracting Party shall, as far as possible and as appropriate: … (j) Subject to its national legislation, 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 and promote their wider application with the approval and involvement of the holders of such knowledge, innovations and practices … (emphasis added) Even though the word ‘respect’ implies some sort of protection towards traditional knowledge,446 the obligations stipulated in Article 8(j), including the 440 441 442 443 444 445

For German law, see Podszun in Harte-Bavendamm/Henning-Bodewig, § 3 para. 100. See above p. 109. unu-ias Report, p. 9; Ruiz/Lapeña/Clark, p. 760; Ragavan, p. 29. Appellate Body Report, us – Shrimp, para. 130. cbd, List of Parties accessed 8 December 2015. Panel Report, ec – Approval and Marketing of Biotech Products, paras. 7.94 f. See also Boyle/Chinkin, p. 247. 446 Traditional Knowledge and Biological Diversity, cbd Doc. unep/cbd/tkbd/1/2, para. 83; Implementation of Article 8( j), cbd Doc. unep/cbd/cop/3/19, para. 64.

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one to seek approval, are very weak. They only apply ‘as far as possible and as appropriate’ and are ‘[s]ubject to … national legislation’, thus allowing each Contracting Party to water them down.447 It is consequently not possible to derive a mandatory prior informed consent requirement therefrom, not even in conjunction with paragraph 5 of Article 15 of the cbd.448 This paragraph reads as follows: Access to genetic resources shall be subject to prior informed consent of the Contracting Party providing such resources, unless otherwise determined by that Party. The provision is mandatory (‘shall’) but its purview is limited to ‘genetic resources’ within the meaning of Article 2 of the cbd.449 The Bonn Guidelines on Access to Genetic Resources and Fair and Equitable Sharing of the Benefits Arising out of their Utilization (the ‘Bonn Guidelines’), which shall assist Contracting Parties in the implementation of the cbd,450 extend the principle of prior informed consent to traditional knowledge associated with genetic resources for the benefit of indigenous and local communities, conferring on them the power to deny its utilization.451 Furthermore, paragraph 37 of the Bonn Guidelines clarifies that ‘[p]ermission to access genetic resources does not necessarily imply permission to use associated knowledge and vice versa.’ However, these Guidelines are not binding law.452 The same is true of the Akwé: Kon Guidelines and the Tkarihwaié:ri Code of Ethical Conduct.453 The next step on the way to the recognition of indigenous peoples’ rights was the United Nations Declaration on the Rights of Indigenous Peoples of 2007. Article 11(2) of that Declaration makes provision for redress

447 Meyers/Owoeye, p. 67; Ni, ‘Traditional Knowledge and Global Lawmaking’, p. 91; Kiene, The Legal Protection of Traditional Knowledge in the Pharmaceutical Field, p. 48; Almeida in Sinjela, p. 226. 448 Muńoz Téllez/Zografos Johnsson in Gervais, pp. 320 f. Contra Almeida in Sinjela, p. 227. 449 Revised Outline of Policy Options and Legal Mechanisms, wipo Doc. wipo/grtkf/ ic/9/inf/5, Annex para. 111. Contra Muńoz Téllez/Zografos Johnsson in Gervais, p. 321. 450 Paragraphs 1, 12, 25 of the Bonn Guidelines. 451 Paragraphs 9, 26(d), 31 of the Bonn Guidelines. See Hansen/VanFleet, pp. 25 f. 452 Paragraphs 1 and 7 of the Bonn Guidelines. 453 Paragraph 1 of the Akwé: Kon Guidelines and Section 1(1) of the Tkarihwaié:ri Code of Ethical Conduct.

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with respect to their cultural, intellectual, religious and spiritual property taken without their free, prior and informed consent or in violation of their laws, traditions and customs. As a resolution of the General Assembly, it only has declaratory, not constitutive, force, cf. its last preambular paragraph (‘a standard of achievement to be pursued’).454 The notion of ‘instant customary law’ by the adoption of a General Assembly resolution is to be rejected in light of the ruling of the International Court of Justice in the Nicaragua case:455 The mere fact that States declare their recognition of certain rules is not sufficient for the Court to consider these as being part of customary international law, and as applicable as such to those States. Bound as it is by Article 38 of its Statute to apply, inter alia, international custom ‘as evidence of a general practice accepted as law’, the Court may not disregard the essential role played by general practice. Where two States agree to incorporate a particular rule in a treaty, their agreement suffices to make that rule a legal one, binding upon them; but in the field of customary international law, the shared view of the Parties as to the content of what they regard as the rule is not enough. The Court must satisfy itself that the existence of the rule in the opinio juris of States is confirmed by practice.456 Irrespective of its legal nature, the drips may be taken into account in the same way as the Appellate Body in us – Shrimp paid regard to the Agenda 21, namely as an important contextual element influencing ‘the ordinary meaning to be given to the terms of the treaty’, cf. Article 31(1) of the Vienna Convention.457 Ultimately, this arises from the principle of good faith being ‘a core principle of 454 Cf. Articles 10 ff of the Charter of the United Nations (‘recommendations’); Tobin, ‘The Role of Customary Law in Access and Benefit-Sharing and Traditional Knowledge Governance’, p. 48; Nijar, ‘Traditional Knowledge Systems, International Law and National Challenges’, p. 1217; Kingsbury, ‘Indigenous Peoples’ in mpepil, para. 10; Strydom, ‘Environment and Indigenous Peoples’ in mpepil, para. 1. 455 Pro Thirlway in Evans, pp. 91, 113 f; Boyle/Chinkin, pp. 226 ff; Doehring, paras. 288 f; Öberg, p. 899. Contra Cheng, pp. 23 ff. 456 International Court of Justice, Judgment, Nicaragua v. United States of America, para. 184. 457 Appellate Body Report, us – Shrimp, para. 130. See above p. 189. See also Decision by the Arbitrator, us – fsc (Article 22.6 – us), para. 5.58; Boyle in Evans, pp. 118, 128; Thürer, ‘Soft Law’ in mpepil, para. 37; Kingsbury, ‘Indigenous Peoples’ in mpepil, paras. 10, 15; Mavroidis, ‘No Outsourcing of Law?’, p. 467; Weber/Weber, p. 902.

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interpretation of the wto Agreement’.458 The drips was adopted by a vote of 143 in favour and 4 against, with 11 abstentions.459 The support by the great majority of States made it difficult to remain in opposition to it.460 So in the end the former opponents Australia, New Zealand, Canada and the United States of America declared their support for the drips as well.461 The Nagoya Protocol marks the latest step in this development. Its Article 7 establishes a mandatory prior informed consent requirement in favour of indigenous and local communities. The Article reads as follows: In accordance with domestic law, each Party shall take measures, as appropriate, with the aim of ensuring that traditional knowledge associated with genetic resources that is held by indigenous and local communities is accessed with the prior and informed consent or approval and involvement of these indigenous and local communities, and that mutually agreed terms have been established. Although this provision is characterized by limitations similar to Article 8(j) of the cbd (‘In accordance with domestic law’ and ‘as appropriate’), these insertions solely relate to the measures to be taken but do not affect the binding nature of the consent requirement.462 Article 16(1) and (2) of the Nagoya Protocol makes this clear: 1.

Each Party shall take appropriate, effective and proportionate legislative, administrative or policy measures, as appropriate, to provide that traditional knowledge associated with genetic resources utilized within their jurisdiction has been accessed in accordance with prior informed consent or approval and involvement of indigenous and local communities and that mutually agreed terms have been established, as required by domestic access and benefit-sharing legislation or regulatory r­ equirements

458 Panel Report, us – Gambling, para. 6.50; Kotzur, ‘Good Faith (Bona fide)’ in mpepil, para. 25; Boyle/Chinkin, p. 214. See also Appellate Body Report, us – Cotton Yarn, para. 81; Appellate Body Report, us – Offset Act (Byrd Amendment), para. 296. 459 General Assembly, ‘General Assembly Adopts Declaration on Rights of Indigenous Peoples’ (Media Release, ga/10612, 13 September 2007) accessed 8 December 2015. 460 Cf. Boyle/Chinkin, pp. 212, 214, 226. 461 McCorquodale in Evans, pp. 280, 296; Blakeney in Drahos/Frankel, p. 174; Kingsbury, ‘Indigenous Peoples’ in mpepil, para. 9. 462 Tobin, Indigenous Peoples, Customary Law and Human Rights, p. 159; Morgera/Tsioumani/ Buck, pp. 170, 176 f; Nijar, ‘Traditional Knowledge Systems, International Law and National Challenges’, p. 1211. Contra Ni, ‘Traditional Knowledge and Global Lawmaking’, pp. 99 f.

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of the other Party where such indigenous and local communities are located. Each Party shall take appropriate, effective and proportionate measures to address situations of non-compliance with measures adopted in accordance with paragraph 1 above.

Paragraph 2, in particular, underscores that the obligations contained in paragraph 1 are mandatory.463 The drawback of this regulation, however, is that it only applies to traditional knowledge associated with genetic resources.464 As international law stands, there is no norm that generally recognizes a principle of prior informed consent for all traditional knowledge.465 This will change with the wipo draft provisions for the protection of traditional knowledge (the ‘wipo Draft Provisions’) becoming law, for they stipulate a universally valid principle of prior informed consent in Article 3.466 I recall once more here that Article 10bis of the Paris Convention (1967) cannot establish a prior informed consent requirement eo ipso, but only draws on existing rules.467 Meanwhile, the question remains whether the above construction based on the doctrine of unjust enrichment is applicable to states that have not committed themselves to a prior informed consent requirement. A legal assignment might proceed from the fact of holdership, i.e. from the fact that indigenous and local communities are in possession of traditional knowledge.468 Article 17(1)(c) of the unccd,469 paragraph 60 of the Akwé: Kon Guidelines,470 Section 2(13), first sentence, of the Tkarihwaié:ri Code of Ethical Conduct471 463 464 465 466

467 468 469

470 471

Morgera/Tsioumani/Buck, p. 267. Cf. the second sentence of Article 3 of the Nagoya Protocol. Draft Gap Analysis, wipo Doc. wipo/grtkf/ic/13/5(b) Rev., Annex i para. 102. wipo, Draft Provisions/Articles for the Protection of Traditional Knowledge and Traditional Cultural Expressions, and ip & Genetic Resources accessed 8 December 2015. See above p. 187. Cf. Dutfield, ‘The Public and Private Domains’, p. 279. ‘To this end, they shall support research activities that: … (c) protect, integrate, enhance and validate traditional and local knowledge, know-how and practices, ensuring, subject to their respective national legislation and/or policies, that the owners of that knowledge will directly benefit on an equitable basis and on mutually agreed terms from any commercial utilization of it or from any technological development derived from that knowledge’ (emphasis added). ‘Such knowledge should only be used with the prior informed consent of the owners of that traditional knowledge’ (emphasis added). ‘The resources and knowledge of indigenous and local communities can be collectively or individually owned.’

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as well as recital 23 of the Preamble to the Nagoya Protocol472 even speak of ownership in this respect. Possession and property are legal qualifications of holdership. In national law, the doctrine of unjust enrichment is employed to protect exclusive rights like property and other asset items, including possession (condictio possessionis).473 It appears to be an imperative of natural justice, already advocated by Locke in his Second Treatise of Civil Government,474 to assign a work result, whether tangible or intangible, to the one who created it (the so-called ‘labour theory’).475 The living generation of indigenous and local communities are either creators in this sense (in case they have advanced the knowledge of their ancestors) or inheritors.476 According to indigenous customary laws, this is often tantamount to being stakeholders in collective rights.477 (c) Recognition of Native Titles As a matter of fact, traditional knowledge is transmitted according to indigenous customary laws, cf. paragraphs 4, 7 of the Principles and Guidelines for the Protection of the Heritage of Indigenous People.478 These laws also assign traditional knowledge to the rightful holder(s) within a community and thus establish vested rights.479 This is the case with indigenous and l­ocal ­communities in Papua New Guinea, Nicaragua and Australia.480 Dutfield cites 472 ‘Recognizing the diversity of circumstances in which traditional knowledge associated with genetic resources is held or owned by indigenous and local communities’ (emphasis added). 473 Chambers in Chambers/Mitchell/Penner, pp. 254 ff; Hill, para. 52. 474 Locke, Sec. 27. 475 Sambuc in Harte-Bavendamm/Henning-Bodewig, Einleitung G paras. 186, 213; Lukose, pp. 49 f; Deutch, p. 515; Ragavan, p. 7. Contra Dutfield/Suthersanen, pp. 54 f; Seuba in Correa/ Yusuf, p. 417; Spence, pp. 486 ff, 490, 492 ff; Ohly, ‘The Freedom of Imitation and Its Limits’, p. 518 footnote 60, who denies that Locke’s statement also includes intellectual property. 476 Cf. Varadarajan, p. 393. See also Raustiala/Munzer, pp. 354 ff, on the justification of geographical indications. 477 Stoll/von Hahn in von Lewinski, pp. 17 f. 478 Daes, Protection of the heritage of indigenous people, un Doc. E/cn.4/Sub.2/1995/26, Annex. See also Varadarajan, p. 378; Arantes, p. 180; Taubman/Leistner in von Lewinski, p. 60; Biber-Klemm/Szymura Berglas in Biber-Klemm/Cottier, p. 19. 479 Cf. the last sentence of Section 4 of the Pacific Model Law; the Julayinbul Statement on Indigenous Intellectual Property Rights, quoted in Biber-Klemm et al. in Biber-Klemm/ Cottier, p. 98; the Cultural and Intellectual Property Rights Policy of the Sealaska Heritage Institute. See also wipo Publication No. 920, p. 25; Forsyth in Drahos/Frankel, pp. 195 ff; von Lewinski, pp. 18, 522; Talakai, p. 73; Biber-Klemm/Szymura Berglas in Biber-Klemm/ Cottier, p. 20; Dutfield in Maskus/Reichman, pp. 501 ff. 480 unu-ias Report, p. 10; wipo Publication No. 768, Part 2, p. 76; Janke, p. 110.

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as an example the Shuar, an indigenous people in Peru and Ecuador, who consider their shamanic knowledge a purchasable commodity.481 In this connection, the Four Directions Council maintains that: Indigenous peoples possess their own locally-specific systems of jurisprudence with respect to the classification of different types of knowledge, proper procedures for acquiring and sharing knowledge, and the rights and responsibilities which attach to possessing knowledge, all of which are embedded uniquely in each culture and its language.482 Correspondingly, Sections 18(1), (2), 33(c) of the Pacific Model Law, 65 of the Philippines Indigenous Peoples Rights Act as well as Articles 149 of the Political Constitution of Peru and 46 of the Peruvian Law No. 27811 provide for the application of customary laws in order to determine the right holders of traditional knowledge, and if the ownership is disputed, to resolve that dispute. All in all, one has to differentiate between: − what is considered as ‘heritage’ and not susceptible to notions of property483 and − that portion of traditional knowledge which is assignable to a particular right holder. In the following, we will focus on the second category. It bears noting, however, that indigenous peoples defy the concept of ‘public domain’ for both categories.484 The Kimberley Declaration affirms: Our traditional knowledge is not in the public domain; it is collective, cultural and intellectual property protected under our customary law. That is to say, the fact that a piece of information is easily accessible does not necessarily put it in the public domain.485 ‘Accessibility’ is therefore not the 481 Dutfield, ‘trips-Related Aspects of Traditional Knowledge’, p. 246. 482 Quoted in Dutfield, ‘Protecting Traditional Knowledge’, pp. 23 f. 483 Daes, Study on the protection of the cultural and intellectual property of indigenous peoples, un Doc. E/cn.4/Sub.2/1993/28, para. 26; Garcia, pp. 18 f. See also above p. 156. 484 wipo Publication No. 933, p. 5; Note on the Meanings of the Term ‘Public Domain’, wipo Doc. wipo/grtkf/ic/17/inf/8, para. 5; Drahos/Frankel, pp. 9, 17; Arowolo, p. 89; Varadarajan, p. 384 footnote 55. 485 Note on the Meanings of the Term ‘Public Domain’, wipo Doc. wipo/grtkf/ic/17/inf/8, Annex paras. 11, 88; who/wipo/wto, p. 91; Dutfield in Maskus/Reichman, p. 520. See also Taubman in Maskus/Reichman, p. 545.

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right criterion to delimit the public domain.486 This is borne out by Article 39.2(a) of the trips Agreement which implies that there are different degrees of accessibility (cf. accessibility to ‘persons within the circles that normally deal with the kind of information in question’).487 Section 2.1 of the Swakopmund Protocol defines ‘customary laws and practices’ as meaning ‘customary laws, norms and practices of local and traditional communities’, and according to Section  3(f) of the Philippines Indigenous Peoples Rights Act, ‘customary laws’ ‘refer to a body of written and/or unwritten rules, usages, customs and practices traditionally and continually recognized, accepted and observed by respective [Indigenous Cultural Communities/Indigenous Peoples]’.488 The question is whether legal titles based on such customary laws can prevent traditional knowledge from falling into the public domain.489 This would presuppose – and indigenous peoples demand this490 – that modern (international) law acknowledges native titles despite the fact that they are derived from a separate body of law. Some national laws do.491 One view contends that when entering the global market, the holders of traditional knowledge must accept the generally applicable rules and are precluded from invoking their customary laws as a protective shield.492 On the other hand, given that indigenous and local communities had no say in shaping those global market rules, ‘contemporary notions of justice and human rights’ might speak in favour of a recognition at the international level.493 Kelsen 486 gtz, pp. 241, 335. 487 Note on the Meanings of the Term ‘Public Domain’, wipo Doc. wipo/grtkf/ic/17/inf/8, Annex para. 10. 488 See also Tobin, ‘The Role of Customary Law in Access and Benefit-Sharing and Traditional Knowledge Governance’, pp. 22 ff. 489 Cf. Dutfield, ‘Protecting Traditional Knowledge’, p. 23. 490 Cf. Article 8 of the Charter of the Indigenous-Tribal Peoples of the Tropical Forests: ­‘Respect for our customary laws and that they be incorporated in national and international law.’ 491 Cf. Section  17 of Article xiv of the Constitution of the Philippines (1987), Sections  32, 34 f of the Philippines Indigenous Peoples Rights Act; Article 95(3) of the Constitution of Vanuatu; Article 30(ii) No. 11 of the Constitution of Bolivia; Articles 39 ff, 84 ff of the Venezuelan Law on Biological Diversity; Article 82 of the Costa Rican Biodiversity Law; Articles 5(2), 10(1), (2) of the Ethiopian Proclamation No. 482/2006. See also Articles 17, 23(2) of the African Model Legislation. 492 Hilty, pp. 902 f. 493 Cf. High Court of Australia, Mabo v. Queensland (No. 2), para. 29 (Brennan J.); Tobin in Kamau/Winter, pp. 104 ff; Haugen, pp. 672 ff; Feris, pp. 253 ff.

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remarked in a different context that ‘[t]o recognize the social order of one’s own group as being the only true “law” is a typically primitive view, comparable to the view that only the members of one’s own group are true human beings.’494 Moreover, Articles 27(2) of the udhr and 15(1)(c) of the icescr proclaim a ‘right to the protection of the moral and material interests resulting from any scientific, literary or artistic production of which he is the author.’ This right is understood to comprise traditional knowledge of indigenous and local communities.495 Notwithstanding this, there are some doubts as to whether the wording provides for the inclusion of group rights.496 Within the framework of the wipo, too, there is a tendency to recognize customary laws.497 Article 13(d)(ii) of the ich Convention,498 paragraph 26.4(b) of the Agenda 21499 and Articles 11(2), 31 of the drips aim at the same direction. In particular, paragraph 2 of Article 31 of the drips stipulates that ‘States shall take effective measures to recognize and protect the exercise of these rights’, including ‘the right to maintain, control, protect and develop their intellectual property over … traditional knowledge’, cf. the second sentence of paragraph 1. This approach stems from the Canadian case Guerin, in which the Supreme Court classified aboriginal land titles as sui generis rights.500 The Australian High Court followed suit in Mabo where it rejected the concept of ‘terra nullius’.501 This concept provided the theoretical foundation for the acquisition of colonial territories and was used by colonizers to justify their disregard for

494 Kelsen, p. 576. 495 General Comment No. 17 (2005), un Doc. E/C.12/gc/17, paras. 9, 32; Haugen, pp. 674 f, 677. 496 Permanent Forum on Indigenous Issues, Report of the Secretariat on Indigenous traditional knowledge, un Doc. E/C.19/2007/10, para. 14; Stoll/von Hahn in von Lewinski, p. 22. But see Article 17(1) of the udhr: ‘Everyone has the right to own property … in association with others.’ 497 Cf. Articles 3BIS.1, 5.1 of the wipo Draft Provisions. See also Kiene, The Legal Protection of Traditional Knowledge in the Pharmaceutical Field, p. 270. 498 ‘[E]nsuring access to the intangible cultural heritage while respecting customary practices governing access to specific aspects of such heritage’. 499 ‘Adopt or strengthen appropriate policies and/or legal instruments that will protect indigenous intellectual and cultural property and the right to preserve customary and administrative systems and practices.’ 500 Supreme Court of Canada, Guerin, p. 382 (Dickson J.). See also Supreme Court of United States, Cramer v. United States, pp. 227 ff. 501 High Court of Australia, Mabo v. Queensland (No. 2), para. 63 (Brennan J.), paras. 22, 56 (Deane and Gaudron JJ.), paras. 17 ff (Toohey J.).

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aboriginal landowners.502 Its rejection was substantiated with the development of international law. Brennan J. noted: If it were permissible in past centuries to keep the common law in step with international law, it is imperative in today’s world that the common law should neither be nor be seen to be frozen in an age of racial discrimination.503 This line of thought spread to other jurisdictions.504 The Inter-American ­ ommission on Human Rights in Mayagna (Sumo) Awas Tingni Community C v. Nicaragua considered native titles as inextinguishable and inalienable and even ascribed them the status of customary international law.505 The cases Guerin, Mabo and Mayagna (Sumo) Awas Tingni Community v. Nicaragua dealt with land titles, but taking their proposition a little further leads to the result that traditional knowledge is not terra nullius in a figurative sense, i.e. without a proper right holder.506 By analogy with the common law, one could argue that, with respect to traditional knowledge, the same ‘strong sense of affiliation’ exists, passed on through generations, which led to the recognition of native land titles in the Mabo case.507 We already stated that traditional knowledge is essential to the cultural identity of indigenous and local communities.508 In the wake of those land titles, native rights on traditional knowledge, which are just another aspect of indigenous customary laws, might 502 High Court of Australia, Mabo v. Queensland (No. 2), para. 33 (Brennan J.); Mostert, ­‘Aboriginal Title’ in mpepil, para. 5. 503 High Court of Australia, Mabo v. Queensland (No. 2), para. 41. 504 Mostert, ‘Aboriginal Title’ in mpepil, paras. 1, 14, 27, 29. For Malaysian law, see Court of Appeal, Kerajaan Negeri Selangor v. Sagong bin Tasi, paras. 9 ff (Gopal Sri Ram, J.C.A.). For South African law, see Strydom, ‘Environment and Indigenous Peoples’ in mpepil, para. 19. 505 Inter-American Commission on Human Rights, Judgment, Mayagna (Sumo) Awas Tingni Community v. Nicaragua, paras. 140(d), 150(1); Strydom, ‘Environment and Indigenous Peoples’ in mpepil, para. 17. 506 Curci, pp. 16, 59 f; Dutfield, ‘The Public and Private Domains’, p. 287; Biber-Klemm/Szymura Berglas in Biber-Klemm/Cottier, pp. 19 f; Bratspies, p. 339; Note on the Meanings of the Term ‘Public Domain’, wipo Doc. wipo/grtkf/ic/17/inf/8, para. 63. 507 High Court of Australia, Mabo v. Queensland (No. 2), paras. 2 (Mason C.J. and McHugh J.), 1 (Brennan J.), 42 (Deane and Gaudron JJ.), 46 (Toohey J.). See also wipo Publication No. 768, Part 2, p. 78; Drahos/Frankel, p. 12; von Lewinski, p. 522; Antons in Heath/Kamperman Sanders, p. 44; Dutfield, Intellectual Property, Biogenetic Resources and Traditional Knowledge, pp. 58 f. 508 See above p. 156.

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find recognition as well. Several cases show that the Appellate Body is not unacquainted with drawing conclusions by analogy.509 It bears e­ mphasizing that the issue is not whether there is an obligation in international law to p ­ rotect traditional knowledge, but whether international law assigns traditional knowledge to a particular holder. This being the case, the substantive obligation would still derive from Article 10bis(1) and (2) of the Paris Convention (1967) in conjunction with the principle of unjust enrichment. On the whole, contemporary international law is not blind to customary laws. The ilo Convention 169, for instance, which to date has 22 ratifications, must be read as requiring the recognition of native titles. Pursuant to its Article 2(2)(b), ‘the full realisation of the social, economic and cultural rights of these peoples with respect for their social and cultural identity, their customs and traditions and their institutions’ shall be promoted, and according to Article 4(1) of that Convention, ‘[s]pecial measures shall be adopted as appropriate for safeguarding the persons, institutions, property, labour, cultures and environment of the peoples concerned.’ Article 5 stipulates that [i]n applying the provisions of this Convention: (a) the social, cultural, religious and spiritual values and practices of these peoples shall be recognised and protected … Furthermore, while Article 9 only concerns customary penal laws, Article 8(1) provides in general: In applying national laws and regulations to the peoples concerned, due regard shall be had to their customs or customary laws. However, it is to be admitted that, owing to the small number of ratifications, especially the lack of ratifications by relevant countries with a high indigenous population, the persuasive force of the ilo Convention 169 is rather weak.510 That said, Article 12(1) of the Nagoya Protocol likewise prescribes the ‘consideration [of] indigenous and local communities’ customary laws, community protocols and procedures, as applicable, with respect to traditional knowledge associated with genetic resources.’ 509 Appellate Body Report, us – Line Pipe, para. 216; Appellate Body Report, ec – Export Subsidies on Sugar, para. 199; Appellate Body Report, ec – Sardines, para. 191 footnote 105. See also Linderfalk, On the Interpretation of Treaties, pp. 294 ff. 510 Dagne, ‘The Protection of Traditional Knowledge in the Knowledge Economy’, p. 175; Boyle/Chinkin, p. 246.

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Native titles are minority rights from the perspective of modern law.511 In particular, Australia512 and the Andean Community513 take pioneering roles in the reconciliation of traditional proprietary systems with their legal orders.514 In Mabo, common law proved its capacity to accommodate indigenous customary laws.515 As a matter of fact, the content of native titles is determined by the customary laws in force, with the consequence described by the Four Directions Council that it is ‘locally-specific’.516 Because no generic form exists, a one-to-one incorporation of native titles does not suit.517 Also, as seen in the introduction, other interests play a part as well.518 That is why a native title is generally deemed to accord merely a right to use.519 Brennan J. ­observed in 511 Stoll/von Hahn in von Lewinski, p. 24. 512 Cf. Section 223(1) of the Australian Native Title Act 1993: ‘The expression native title or native title rights and interests means the communal, group or individual rights and interests of Aboriginal peoples or Torres Strait Islanders in relation to land or waters, where: (a) the rights and interests are possessed under the traditional laws acknowledged, and the traditional customs observed, by the Aboriginal peoples or Torres Strait Islanders; and (b) the Aboriginal peoples or Torres Strait Islanders, by those laws and customs, have a connection with the land or waters; and (c) the rights and interests are recognised by the common law of Australia.’ 513 Cf. Article 7 of the Decision No. 391: ‘The Member Countries, in keeping with this Decision and their complementary national legislation, recognize and value the rights and the authority of the native, Afro-American and local communities to decide about their know-how, innovations and traditional practices associated with genetic resources and their by-products’; Article 3(2) of the Decision No. 486: ‘The Member Countries recognize the right and the authority of indigenous, African American, and local communities in respect of their collective knowledge.’ 514 Kiene, The Legal Protection of Traditional Knowledge in the Pharmaceutical Field, p. 123; Biber-Klemm et al. in Biber-Klemm/Cottier, pp. 108 ff. 515 Blakeney, ‘Milpurrurru & Ors v. Indofurn Pty Ltd and Ors’. 516 High Court of Australia, Mabo v. Queensland (No. 2), para. 64 (Brennan J.); Constitutional Court of South Africa, Alexkor v. Richtersveld Community, para. 50; Mostert, ‘Aboriginal Title’ in mpepil, para. 15. See above p. 206. 517 Cf. the different examples from the Andean region in de la Cruz i., pp. 28 ff. For Brazil, see Arantes, p. 40. For the South Pacific, see Talakai, pp. 37 f. For Asia, see Robinson, p. 50. See also Permanent Forum on Indigenous Issues, Report of the Secretariat on Indigenous traditional knowledge, un Doc. E/C.19/2007/10, para. 37; Anderson, para. 3.6.1.2. 518 See above p. 156. Cf. Biber-Klemm et al. in Biber-Klemm/Cottier, p. 109. 519 Supreme Court of Canada, Guerin, pp. 339 (Wilson J.), 379 ff (Dickson J.); High Court of Australia, Mabo v. Queensland (No. 2), para. 19 (Deane and Gaudron JJ.); Supreme Court of United States, Johnson v. M’Intosh, pp. 573 f; Mostert, ‘Aboriginal Title’ in mpepil, paras. 15 f, 31. Contra Constitutional Court of South Africa, Alexkor v. Richtersveld Community, para. 62 (‘right of communal ownership’).

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Mabo that ‘a native title which confers a mere usufruct may leave room for other persons to use the land either contemporaneously or from time to time.’520 Accordingly, the Australian trial judge in Milpurrurru v. Indofurn dismissed a liability claim on the basis of Aboriginal exclusive rights.521 From this standpoint, native titles could only ensure the continued use of traditional knowledge by its original holders, but they could not prevent third parties from utilizing it.522 The latter, however, is the main concern of custodians.523 As a right to deny access to land, traditional knowledge and so forth is not inherent in native titles, or at least not recognized by the prevailing law, we have to look for another remedy that better meets the needs of indigenous and local communities. It further means that we do not need to dwell here on the peculiarities and insufficiencies of different indigenous customary laws. (d) Misappropriation Doctrine The solution lies somewhere between two contrary propositions:524 On the one hand, copying and imitating are key for progress.525 Kamperman Sanders points to the fact that our economic development, even our culture, is premised upon ‘appropriating and building on others’ achievements’.526 This finding is encapsulated in Voltaire’s aphorism: 520 High Court of Australia, Mabo v. Queensland (No. 2), para. 79 (Brennan J.) (emphasis added). 521 Federal Court of Australia, Milpurrurru v. Indofurn Pty Ltd. & Others, (1995) 30 ipr 209, quoted in Blakeney, ‘Milpurrurru & Ors v. Indofurn Pty Ltd and Ors’: ‘the statutory remedies do not recognise the infringement of ownership rights of the kind which reside under Aboriginal law in the traditional owners of the dreaming stories and the imagery such as that used in the artworks of the present applicants.’ 522 Cf. High Court of Australia, Mabo v. Queensland (No. 2), para. 34 (Toohey J.). 523 See above p. 171. 524 Cf. Ohly, ‘The Freedom of Imitation and Its Limits’, pp. 507 ff; Dutfield/Suthersanen, pp. 54 f; Glöckner, Europäisches Lauterkeitsrecht, p. 596; Kirkbride, p. 231. For United States law, see Supreme Court of Illinois, Board of Trade of the City of Chicago v. Dow Jones, pp. 119 (Goldenhersh J.), 123 (Simon J.); United States Court of Appeals, 3rd Circuit, United States Golf Association v. St. Andrews System, p. 1035. For German law, see Wiebe in Heermann/ Hirsch, § 4 Nr. 9 uwg para. 17. 525 Note on the Meanings of the Term ‘Public Domain’, wipo Doc. wipo/grtkf/ic/17/inf/8, Annex paras. 27 ff; wipo, Protection Against Unfair Competition, para. 114; Hilty in Hilty/ Henning-Bodewig, Law Against Unfair Competition, pp. 17, 23; Eck in Gloy/Loschelder/ Erdmann, § 22 paras. 8, 12. For the situation in least developed countries, see Hilty, pp. 895 ff. 526 Kamperman Sanders, Unfair Competition Law, p. 8. See also Reichsgericht [Supreme Court of the German Reich], Künstliche Blumen rgz 135, 385, 394.

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Originality is nothing but judicious imitation. … The instruction we find in books is like fire. We fetch it from our neighbours, kindle it at home, communicate it to others, and it becomes the property of all.527 In the same vein, Matsuura, former Director-General of unesco, stressed that ‘intangible cultural heritage is not just the memory of past cultures, but is also a laboratory for inventing the future.’528 Correspondingly, a us court of appeals held: ‘imitation is the life blood of competition.’529 This implies that imitation is the rule.530 On the other hand, many intellectual achievements enjoy legal protection, most notably under intellectual property law, with a view to rewarding creativity and spurring innovation, cf. Article 7 of the trips Agreement, the last sentence of preambular paragraph 2 of the European Copyright Directive,531 or Section 8 of Article 1 of the Constitution of the United States.532,533 In addition, there may be exceptional circumstances in which compelling economic 527 A similar statement has been coined by Goethe: ‘People are always talking about originality; but what do they mean? As soon as we are born, the world begins to work upon us, and keeps on to the end. What can we call ours, except energy, strength, will? If I could give an account of what I owe to great predecessors and contemporaries, there would be but a small remainder.’, quoted in Wadlow, ‘Rudolf Callmann and the Misappropriation Doctrine’, p. 64. 528 unesco, ‘Ministers to discuss intangible heritage as a mirror of cultural diversity’ (Press Release, No. 2002–63, 11 September 2002) accessed 8 December 2015. 529 United States Court of Appeals, American Safety Table v. Schreiber, p. 272. See also Supreme Court of United States, Bonito Boats v. Thunder Craft Boats, p. 146. Similarly, for German law, Bundesgerichtshof, skaicubana (1967) 69 Zeitschrift für Gewerblichen Rechtsschutz und Urheberrecht 315, 317. For English law, see Court of Appeal (Civil Division), L’Oréal v. Bellure, para. 141 (Jacob L.J.). For Italian law, see Giove, pp. 759 ff. 530 For German law, see Ohly in Ohly/Sosnitza, § 4.9 para. 9/15. Contra Köhler in Köhler/ Bornkamm, § 4 para. 9.3, but see para. 9.78 concerning the distribution of the burden of proof. 531 ‘Copyright and related rights play an important role in this context as they protect and stimulate the development and marketing of new products and services and the creation and exploitation of their creative content.’ 532 ‘To promote the Progress of Science and useful Arts …’ 533 Cf. Panel Report, Canada – Pharmaceutical Patents, para. 7.55; General Comment No. 17 (2005), un Doc. E/C.12/gc/17, para. 1; The Relationship Between the trips Agreement and the cbd, wto Doc. ip/C/W/368/Rev.1, paras. 95, 111; unctad-ictsd Resource Book, p. 411; Ebermann, pp. 41 ff, 57 ff; Kiene, The Legal Protection of Traditional Knowledge in the Pharmaceutical Field, p. 27; Varadarajan, p. 391; Hrbatá, p. 6; Hilty, p. 888; Hoekman/Kostecki, pp. 371 f; Niemann, pp. 18 ff; Dutfield/Suthersanen, p. 48; Cottier/Germann in Takagi/ Allman/Sinjela, pp. 131, 134; Seuba in Correa/Yusuf, p. 390; Thouvenin, pp. 479 ff, 498 ff;

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or moral considerations lead to taking out a subject matter from the public domain beyond the ambit of intellectual property rights on the basis of unfair competition law, cf. Article 11 of the Spanish Unfair Competition Law.534,535 According to Wiebe, the general clause in Article 10bis of the Paris Convention (1967) covers this case.536 It is clear that factors which are inherent in competition, such as the striving for competitive advantages537 or to save research costs, cannot be regarded as exceptional in this sense.538 Moreover, only such circumstances can be deemed special that are not already considered under intellectual property law.539 Examples that would fulfil this requirement pursuant to German law are deception of the consumer, exploitation of reputation, or breach of confidence.540 Incidentally, the same instances can be found in European Union law.541 Another constellation was treated by the us Supreme

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536 537 538 539

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­Herrmann/Weiß/Ohler, § 19 para. 906; Cottier, ‘Industrial Property, International Protection’ in mpepil, para. 2. For critical voices, see above p. 49. ‘1. La imitación de prestaciones e iniciativas empresariales o profesionales ajenas es libre, salvo que estén amparadas por un derecho de exclusiva reconocido por la ley. 2. No obstante, la imitación de prestaciones de un tercero se reputará desleal cuando resulte idónea para generar la asociación por parte de los consumidores respecto a la prestación o comporte un aprovechamiento indebido de la reputación o el esfuerzo ajeno. La inevitabilidad de los indicados riesgos de asociación o de aprovechamiento de la reputación ajena excluye la deslealtad de la práctica. 3. Asimismo, tendrá la consideración de desleal la imitación sistemática de las prestaciones e iniciativas empresariales o profesionales de un competidor cuando dicha estrategia se halle directamente encaminada a impedir u obstaculizar su afirmación en el mercado y exceda de lo que, según las circunstancias, pueda reputarse una respuesta natural del mercado.’ wipo, Protection Against Unfair Competition, paras. 106 ff, 112, 115; Beviglia Zampetti, pp. 36, 40; Deutch, pp. 539, 541; Westkamp, ‘trips Principles, Reciprocity and the Creation of Sui-Generis-Type iprs’, p. 838; Kamperman Sanders, Unfair Competition Law, p. 8; Schricker, p. 797. Contra England and Wales Court of Appeal (Civil Division), L’Oréal v. Bellure, para. 141 (Jacob L.J.). Wiebe in Heermann/Hirsch, § 4 Nr. 9 uwg para. 10. See also wipo Publication No. 785, p. 54. See above p. 88. For German law, see Eck in Gloy/Loschelder/Erdmann, § 56 para. 6. wipo, Protection Against Unfair Competition, paras. 107 f; Westkamp, ‘trips Principles, Reciprocity and the Creation of Sui-Generis-Type iprs’, p. 839. For German law, see Bundesgerichtshof, LIKEaBIKE, para. 18; Bundesgerichtshof, Baugruppe, para. 35; Heermann/Hirsch, Grundl para. 228, § 4 Nr. 9 uwg paras. 31, 110. Cf. Section 4 No. 9 of the German Act Against Unfair Competition. See also Ann in Heermann/Hirsch, Grundl para. 301; Wadlow, ‘Rudolf Callmann and the Misappropriation Doctrine’, p. 18 footnote 75. Micklitz in Heermann/Hirsch, eg M para. 13.

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Court in International News Service v. Associated Press, viz.: the misappropriation of valuable information.542 There, the Court linked unjust enrichment to the doctrine of unfair competition.543 (i) The International News Service Case

In this case between two news agencies, reporters from the International News Service (ins) would copy or rewrite articles from Associated Press and wire them to affiliated newspapers which subsequently published them, sometimes even before the original version came out.544 We stated above that imitation is the rule.545 On this account, it is not the imitation that needs to be justified but its prohibition.546 One recognized ground of justification is to amortize an investment if otherwise a particular contrivance did not exist.547 The Supreme Court noted that the transmittal of ‘news for commercial use … is taking material that has been acquired by complainant as the result of organization and the expenditure of labor, skill, and money, and which is salable by complainant for money’.548 Further, it observed that appropriating it and selling it as its own is endeavoring to reap where [the defendant] has not sown, and by disposing of it to newspapers that are competitors of complainant’s members is appropriating to itself the harvest of those who have sown.549 The Court concluded ‘an unauthorized interference with the normal operation of complainant’s legitimate business precisely at the point where the profit 542 Fujichaku, p. 439. 543 Balganesh, ‘Hot News’, pp. 440, 455. 544 Supreme Court of United States, International News Service v. Associated Press, pp. 229 ff. See also Supreme Court of Illinois, Board of Trade of the City of Chicago v. Dow Jones, p. 118 (Goldenhersh J.); Wadlow, ‘A Riddle Whose Answer is “Tort”’, pp. 650 f. 545 See above p. 213. 546 Ohly, ‘The Freedom of Imitation and Its Limits’, pp. 510 f. For German law, see Götting, Wettbewerbsrecht, § 11 para. 9. 547 Hilty, p. 889; Hilty in Hilty/Henning-Bodewig, Law Against Unfair Competition, pp. 22 f, 30; Cullet et al. in Biber-Klemm/Cottier, p. 115. 548 Supreme Court of United States, International News Service v. Associated Press, p. 239 (Pitney J.). 549 Supreme Court of United States, International News Service v. Associated Press, pp. 239 f (Pitney J.). Interestingly, the us representative in the Uruguay Round considered this as the underlying principle of all intellectual property protection, ‘namely that of not benefitting from the fruits and labours of others improperly’, cf. Meeting of Negotiating Group of 30 October – 2 November 1989, gatt Doc. mtn.gng/NG11/16, para. 61.

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is to be reaped’, and reasoned a competitive advantage for the benefit of the defendant from ‘the fact that it is not burdened with any part of the expense of gathering the news.’550 Conversely, the complainant was deprived of a competitive advantage.551 This line of argument was the origin of the so-called ‘misappropriation doctrine’.552 It applies when a trader makes a profit from intangible achievements of another553 and is premised on the following conditions: (1) an investment on the part of the complainant; (2) commercial value of the appropriated intangible; and (3) the causation of a competitive injury by the defendant’s conduct to the detriment of the complainant, necessitating the provision of an economic incentive.554 In addition, (4) the systematic course of action by the defendant in the ins case establishing a bad role model may have played a part too.555 These requirements echo what underlies the intellectual property system, namely ‘the goal of protecting human labour and investment of financial and human resources from unlawful appropriation by third parties.’556 One 550 Supreme Court of United States, International News Service v. Associated Press, p. 240 (Pitney J.). 551 De Vrey, p. 50. 552 Supreme Court of Illinois, Board of Trade of the City of Chicago v. Dow Jones, pp. 117 f (Goldenhersh J.); Schechter, p. 235; de Vrey, p. 50. 553 De Vrey, pp. 51, 313; Kamperman Sanders, Unfair Competition Law, p. 8; Ladas, vol. iii, p. 1689. 554 Supreme Court of United States, International News Service v. Associated Press, pp. 235, 238 f (Pitney J.); Revised Outline of Policy Options and Legal Mechanisms, wipo Doc. wipo/grtkf/ic/9/inf/5, Annex paras. 23 f; Westlaw, Black’s Law Dictionary Online, ‘misappropriation’, No. 2; Schechter, pp. 236 f. For point 3, see United States Court of Appeals, 3rd Circuit, United States Golf Association v. St. Andrews System, pp. 1035, 1038; Hilty, pp. 889, 900. 555 United States District Court, N.D. Iowa, Metro Associated Services v. Webster City Graphic, pp. 235 f; Wadlow, ‘Rudolf Callmann and the Misappropriation Doctrine’, p. 41. For Spanish law, see Article 11(3) of the Spanish Unfair Competition Law. For Israeli law, see Deutch, p. 532. For German law, see Bundesgerichtshof, Simili-Schmuck (1960) 62 Zeitschrift für Gewerblichen Rechtsschutz und Urheberrecht 244, 246; Eck in Gloy/Loschelder/Erdmann, § 56 paras. 98 f, 145; Ohly in Ohly/Sosnitza, § 4.9 para. 9/74; Wiebe in Heermann/Hirsch, § 4 Nr. 9 uwg paras. 211 f, 220 ff. Contra Glöckner, ‘Wettbewerbsbezogenes Verständnis der Unlauterkeit und Vorsprungserlangung durch Rechtsbruch’, pp. 965, 967; Sambuc in Harte-Bavendamm/Henning-Bodewig, § 4 No. 9 para. 181, who argues that system and method are no suitable distinguishing features because they are purported to be characteristic of any rational behaviour. For the aspect of setting a bad role model in German law, see Sosnitza in Heermann/Hirsch, § 3 uwg paras. 90 ff. 556 Cottier/Panizzon in Biber-Klemm/Cottier, p. 217; Herrmann/Weiß/Ohler, § 19 para. 906.

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view expressed in the literature denies that the misappropriation doctrine is encompassed by Article 10bis of the Paris Convention (1967) and wants to limit its scope to acts involving misrepresentation.557 However, there is no indication to this effect in the wording of paragraph 2.558 The question before us is whether the misappropriation doctrine applies to the issue of traditional knowledge. We have found that a large part of traditional knowledge does not come within the ambit of established intellectual property law, resulting in a systematic protection deficit.559 Consequently, the precondition of the doctrine would be given. Furthermore, it is undisputed that traditional knowledge constitutes a valuable intangible (point 2).560 Traditional knowledge is no less ingenious than other subjects that qualify for intellectual property protection.561 Therefore there is no denying that, in terms of need and worthiness of protection, traditional knowledge is on a par. Arguably, this comparability could exceptionally warrant the granting of protection on the basis of Article 10bis of the Paris Convention (1967). This is supported by the finding that, as a rule, the appropriators of traditional knowledge act methodically and strategically (point 4).562 What might militate against an application is the fact that since the bulk of traditional knowledge was created by former generations, the accomplishment of the current custodians primarily lies in its preservation for the good of future generations.563 Hence, there are no or low development expenses which need to be amortized (point 1). Moreover, indigenous and local communities could exclusively enjoy the fruits of their ancestors’ achievements in the past.564 In comparison, the requirement of novelty in Article 27.1 of the trips Agreement ensures that only the knowledge added, but not the knowledge leading to the invention, is protected under patent law. Against this background, prolonged protection of the entire body of traditional knowledge seems to be inappropriate. Then again, the subject matter ‘traditional knowledge’ did not find its way in the intellectual property system because the countries in which the system 557 Wadlow, ‘Regulatory Data Protection Under trips Article 39(3) and Article 10bis of the Paris Convention’, pp. 369 f. 558 Alkin, p. 49. 559 See above p. 142. 560 See above p. 136. 561 Bratspies, p. 337; Cottier/Panizzon, p. 382. 562 Dutfield, Intellectual Property, Biogenetic Resources and Traditional Knowledge, p. 59. For Dutch law, see de Vrey, pp. 313 f. 563 See above p. 142. See also Pacón in Twarog/Kapoor, p. 175. 564 Cf. Hilty, p. 890.

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was devised, Western countries,565 are poor in traditional knowledge, so there was no interest in taking account of it. By virtue of the trips Agreement, developing countries were obliged to adopt a preset scheme, irrespective of their special intellectual property needs.566 Traditional knowledge holders never had a real chance to influence the balancing test that led to the prevailing intellectual property system.567 Bringing the misappropriation doctrine to bear through paragraph 2 of Article 10bis of the Paris Convention (1967) would give the means to remedy this neglect. Besides, as long as traditional knowledge is being preserved, appreciable labour and skill are expended.568 Acknowledging this contribution of traditional knowledge holders to the public good might justify an application of the misappropriation doctrine.569 Also, the paramount worthiness of protection570 as well as the flexibility which the doctrine features571 might speak in favour of a less strict interpretation of its requirements. In any event, the misappropriation doctrine is no formalistic legal concept but arose from equity considerations. This train of thought is reminiscent of the argumentation that resulted in the protection of farmers’ rights, which are conceived as a reward for ‘the past, present and future contributions of farmers … in conserving, improving and making available these resources’.572 Following this, the investment requirement from the ins case can be read in abstract terms as meaning an input to the public good. As to point 3, it bears noting that traditional knowledge protection is not aimed at spurring new innovations of indigenous peoples. It is doubtful, in any event, whether legal protection could stimulate the creation of more knowledge inasmuch as the pursuit of economic interests is not their predominant motive as far as traditional knowledge is concerned.573 Manley submits that the possibility to freely appropriate traditional knowledge, being the cheaper means, would lead to a decline in research and development activities.574 However, a similar argument could be put forward against the public domain in general. In my view, Manley overstates the economic effects which the 565 566 567 568 569 570 571 572 573 574

See above p. 141. Anderson, para. 3.6.2.2. Cf. Anderson, para. 3.3.1.2. Mathur, p. 4479. See below p. 222. See above p. 134. See above p. 65. Recital 7 of the Preamble to the itpgrfa. See Gupta, p. 23. See above p. 164. Manley, pp. 125, 128.

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a­ ppropriation of traditional knowledge really has.575 The extant stock of traditional knowledge was generated by indigenous and local communities without economic incentives, but ‘in response to their environment, their interaction with nature and their history’, as paragraph 1 of Article 2, in conjunction with paragraph (2)(d), of the ich Convention emphasizes.576 That is, the driving force has been their struggle to survive.577 Since their way of living is changing, indigenous and local communities nowadays need incentives to preserve and disseminate traditional knowledge.578 They are perfectly entitled to perform this change of lifestyle, but at the same time continued practice and the survival of indigenous cultures are requisite for keeping traditional knowledge alive.579 In this connection, I recall recital 4 of the Preamble to the ich Convention, which recognizes that the processes of globalization and social transformation, alongside the conditions they create for renewed dialogue among communities, also give rise, as does the phenomenon of intolerance, to grave threats of deterioration, disappearance and destruction of the intangible cultural heritage, in particular owing to a lack of resources for safeguarding such heritage. In the final analysis, we can infer from the ins decision that in order to derive a privileged legal position from unfair competition law, a particular justification is needed.580 For granting a privileged position, society expects a public b­ enefit in return, cf. recital 5 of the Preamble to the trips Agreement ­(‘developmental 575 Twarog/Kapoor, pp. 143, 203; Bodeker, pp. 793 f. 576 wipo Publication No. 920, p. 6; unctad, Systems and National Experiences for Protecting Traditional Knowledge, Innovations and Practices, un Doc. td/B/com.1/em.13/2, para. 9; Muńoz Téllez/Zografos Johnsson in Gervais, p. 317; Ebermann, p. 128; Varadarajan, p. 374. For traditional Chinese medicine, see Bachner in Heath/Kamperman Sanders, pp. 1 ff. 577 Biber-Klemm/Cottier, pp. 21, 334; Hamwey in Twarog/Kapoor, p. 345. 578 Traditional Knowledge and Biological Diversity, cbd Doc. unep/cbd/tkbd/1/2, paras. 11, 64; Ebermann, pp. 128 f, 133 f; Lukose, pp. 79 ff; Gupta, pp. 13, 26, 36, 154; Sunder, p. 111; Biber-Klemm/Cottier, pp. 24, 26 f, 30, 129. 579 The Protection of Traditional Knowledge and Folklore, wto Doc. ip/C/W/370/Rev.1, para. 9 fourth bullet; Muńoz Téllez/Zografos Johnsson in Gervais, p. 318; Galloway McLean, p. 12; Arup in Antons, p. 71; Bucher, p. 40; Biber-Klemm/Szymura Berglas in Biber-Klemm/ Cottier, pp. 19, 25, 27. 580 Cf. Hilty in Hilty/Henning-Bodewig, Law Against Unfair Competition, p. 22; Thouvenin, p. 560.

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and technological objectives’), Article 7 of that Agreement (‘promotion of technological innovation’, ‘transfer and dissemination of technology’, ‘social and economic welfare’).581 In the case of a patent, for instance, the public benefit lies in the disclosure of the invention.582 As there is always the risk that a privileged position is abused with the consequence to ‘unreasonably restrain trade or adversely affect the international transfer of technology’,583 the misappropriation doctrine should, as I see it, be employed restrictively.584 In European Union law, the misappropriation doctrine was instrumental in developing database law,585 as recitals 7 and 39 of the eu Database Directive elucidate: (7) Whereas the making of databases requires the investment of considerable human, technical and financial resources while such databases can be copied or accessed at a fraction of the cost needed to design them independently; … (39) … this Directive seeks to safeguard the position of makers of databases against misappropriation of the results of the financial and professional investment made in obtaining and collect[ing] the contents by protecting the whole or substantial parts of a database against certain acts by a user or competitor … By the same token, some Members such as Peru and Portugal availed themselves of the misappropriation doctrine when conceiving their national traditional knowledge laws.586 Switzerland notably took the doctrine as a basis for

581 unctad-ictsd Resource Book, pp. 125 f; Thouvenin, pp. 452, 518; Macrory/Appleton/ Plummer, vol. i, p. 1046, vol. ii, p. 433. 582 Article 29.1 of the trips Agreement. See Note on the Meanings of the Term ‘Public Domain’, wipo Doc. wipo/grtkf/ic/17/inf/8, Annex para. 31; Bubela/Gold, p. 6; Ebermann, pp. 58 f, 178; Kiene, The Legal Protection of Traditional Knowledge in the Pharmaceutical Field, pp. 26 ff. 583 Article 8.2 of the trips Agreement. 584 Cf. de Vrey, p. 136. 585 Revised Outline of Policy Options and Legal Mechanisms, wipo Doc. wipo/grtkf/ic/9/ inf/5, Annex para. 28; Westkamp, ‘Protecting Databases under us and European Law’, p. 775. 586 Revised Outline of Policy Options and Legal Mechanisms, wipo Doc. wipo/grtkf/ic/9/ inf/5, Annex para. 29.

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its unfair competition law.587 Japan follows a similar approach.588 That said, the protection of nothing more than an idea is alien to the legal orders of the Members.589 All things considered, the conferral of a privileged position would be justified if the interest of the holders in controlling traditional knowledge outweighed the interest of would-be users in accessing it. Generally speaking, this would be the case if, as a result of granting a privileged position, the social and economic welfare was improved because a market failure was rectified and standards of living were raised. This accords with Article 7 of the trips Agreement as well as recital 1 of the Preamble to the wto Agreement.590 Mindful that preambular paragraph 1 of the wto Agreement commits the wto to the additional objective of sustainable development, a privileged position could arise from a necessity to protect traditional knowledge. (ii)

Preservation of Traditional Knowledge as a Policy Goal

Traditional knowledge faces many threats: besides the extinction of local languages, the carriers of orally transmitted knowledge, it is principally lost biodiversity, altered land use591 and societal degradation that imperil its existence.592 Traditional knowledge is lost to oblivion, wherefore incentives are 587 Cf. Article 5(c) of the Swiss Act Against Unfair Competition: ‘Unlauter handelt insbesondere, wer: … c. das marktreife Arbeitsergebnis eines andern ohne angemessenen eigenen Aufwand durch technische Reproduktionsverfahren als solches übernimmt und ver­ wertet.’ See also Reichman, ‘Legal Hybrids Between the Patent and Copyright Paradigms’, p. 2474. 588 Cf. Article 2(1)(iii) of the Japanese Unfair Competition Prevention Act: ‘The term “unfair competition” as used in this Act means any of the following: … (iii) acts of assigning, leasing, displaying for the purpose of assignment or leasing, exporting or importing goods which imitate the configuration of another person’s goods (excluding configuration that is indispensable for ensuring the function of said goods).’ See also Port, pp. 93 ff. Contra Heath, pp. 628 ff. 589 Von Lewinski, p. 522; Stiglitz, p. 1697. For German law, see Bundesgerichtshof, Knoblauchwürste, para. 21; Eck in Gloy/Loschelder/Erdmann, § 22 para. 4. For Japanese law, see Port, p. 108; Reichman, ‘Legal Hybrids Between the Patent and Copyright Paradigms’, p. 2475. For copyright law, see Article 9.2 of the trips Agreement. 590 Hilty in Hilty/Henning-Bodewig, Law Against Unfair Competition, p. 22. 591 Cf. Article 13(1) of the ilo Convention 169; Article 25 of the drips. For Hawaiian traditional knowledge, see Conway-Jones, pp. 746, 749 f, 754 f. For Aboriginal and Maori traditional knowledge, see Drahos/Frankel, pp. 2, 13 ff. 592 unctad, Systems and National Experiences for Protecting Traditional Knowledge, Innovations and Practices, un Doc. td/B/com.1/em.13/2, para. 2; Nijar, ‘Traditional Knowledge Systems, International Law and National Challenges’, pp. 1208 f; Tobin, Indigenous Peoples,

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requisite in order for people to share it and invest in its preservation.593 The significance of traditional knowledge in terms of sustainable development, food security and so forth has already been established.594 It follows that, by preserving traditional knowledge, indigenous and local communities do something good not only for their own people, but for humanity as a whole.595 Nationals in all Members would profit if, for example, a cure against cancer or aids could be derived from traditional knowledge.596 This makes its preservation an important policy goal.597 It is submitted that this goal can only be accomplished by allocating traditional knowledge to the custodians and in this way acknowledging its value.598 This finds support in paragraph 26.4(b) of the Agenda 21.599 The underlying economic rationale is that traditional knowledge constitutes a public good because it is non-rival and non-exclusionary.600 Public goods tend to be depleted completely unless they are allocated to someone.601 This is the ‘tragedy of the commons’.602 In case of informational goods, the ‘tragedy’ is free-riding.603 It is, in principle, the same line of argument put forward when the doctrine of unfair competition is employed to fill gaps in the intellectual property

593 594 595 596 597

598 599

600 601 602 603

Customary Law and Human Rights, p. 157; Bucher, p. 40; Khan, p. 87; Biber-Klemm/Cottier, pp. 18, 23 ff, 28, 220, 254. Varadarajan, p. 418. See above p. 134. Kuanpoth in Malbon/Lawson, p. 79; Dutfield, ‘The Public and Private Domains’, p. 286. wipo Publication No. 768, Part 2, p. 87; European Union in Minutes of Meeting, wto Doc. ip/C/M/43, para. 42; Subramanian in Hoekman/Mattoo/English, p. 385. wipo Publication No. 933, p. 20; Intellectual Property and Sustainable Development, wipo Doc. wipo/tk/mct/11/inf/2, paras. 19 ff; The Protection of Traditional Knowledge and Folklore, wto Doc. ip/C/W/370/Rev.1, para. 9 first bullet; Biber-Klemm in Twarog/Kapoor, p. 101; Correa, ‘Traditional Knowledge and Intellectual Property’, p. 6. Unnikrishnan/Suneetha, p. 67; Biber-Klemm/Cottier, pp. 24 ff, 220; Twarog/Kapoor, pp. 5, 71. See also Cottier/Panizzon, p. 397. ‘Some indigenous people and their communities may require, in accordance with national legislation, greater control over their … resources … The following are some of the specific measures which Governments could take: … b. Adopt or strengthen appropriate policies and/or legal instruments that will protect indigenous intellectual and cultural property and the right to preserve customary and administrative systems and practices.’ Ruiz Muller, p. 10; Ebermann, pp. 127 f; Hoekman/Kostecki, p. 371; Dutfield/Suthersanen, p. 49; Stiglitz, pp. 1699 f. Cf. Cullet et al. in Biber-Klemm/Cottier, pp. 128 f. Ebermann, p. 32; Hardin, ‘Tragedy of the Commons’ in Henderson; Daly/Farley, pp. 169 ff; Cullet et al. in Biber-Klemm/Cottier, p. 128. Ebermann, pp. 129, 181; Dutfield/Suthersanen, p. 50; Seuba in Correa/Yusuf, p. 390.

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­system due to the occurrence of new technology.604 Kamperman Sanders noted that ‘[w]here exploitation of another’s achievements becomes inequitable, unfair competition law … provides a remedy.’605 Against the backdrop that unfair competition law is a public policy instrument606 and that ‘practices in industrial or commercial matters’ may change over time,607 not only the wording of Article 10bis of the Paris Convention (1967) but also its instrumentalist origin speak in favour of a purposive application. Indigenous peoples profess in Article 98 of the Indigenous Peoples’ Earth Charter that ‘[t]raditional knowledge has enabled [them] to survive.’608 According to unctad, the share of the world’s population that is reliant on traditional knowledge amounts to 80%.609 Concerning primary health care, about the same percentage is dependent on traditional medicine in non-industrialized countries in Asia and Africa as per the who.610 Recital 22 of the Preamble to the Nagoya Protocol affirms this: Noting the interrelationship between genetic resources and traditional knowledge, their inseparable nature for indigenous and local communities, the importance of the traditional knowledge for the conservation of biological diversity and the sustainable use of its components, and for the sustainable livelihoods of these communities. Recitals 22 of the Preamble to the drips611 and 12 of the Preamble to the cbd612 point in the same direction. 604 605 606 607 608

See above p. 22. Kamperman Sanders, Unfair Competition Law, p. 8. See above p. 1. See above p. 65. See also the Sabah Declaration; Tobin in Kamau/Winter, p. 104; Almeida in Sinjela, pp. 209, 212; Gopalakrishnan/Nair/Babu, p. 47; Biber-Klemm/Szymura Berglas in BiberKlemm/Cottier, p. 21; Manley, p. 113; Dutfield in Maskus/Reichman, p. 505. 609 unctad, ‘Ongoing Loss of Traditional Knowledge Calls for Urgent Action, Says unctad’ (Information Note, unctad/press/in/2004/024, 15 November 2004). See also unctad, Systems and National Experiences for Protecting Traditional Knowledge, Innovations and Practices, un Doc. td/B/com.1/em.13/2, para. 11. 610 who/wipo/wto, p. 89; Tobin in Kamau/Winter, p. 104; Taubman/Leistner in von Lewinski, p. 62. 611 ‘Recognizing and reaffirming that … indigenous peoples possess collective rights which are indispensable for their existence, well-being and integral development as peoples’. 612 ‘Recognizing the close and traditional dependence of many indigenous and local communities embodying traditional lifestyles on biological resources …’

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From this we can conclude that indigenous and local communities have a transcendental relationship to traditional knowledge from time immemorial, characterized by a strong sense of responsibility.613 To use traditional knowledge freely disrespects this special relationship.614 However, to have regard to the laws of indigenous peoples would be an important step towards rectifying the historical wrongs committed during Western colonization.615 The fact of the matter is that it was Western researchers who documented their culture and knowledge in the past, thereby facilitating commercial exploitation without, or against, their will.616 What is more, indigenous and local communities are marginalized up to the present day, e.g. with regards to their involvement in research projects.617 The provision of traditional knowledge protection would thus conform to a dictate of equity.618 (iii)

Interim Findings

Economic as well as equity considerations make a case for granting a privileged position to traditional knowledge holders. Nonetheless, it is questionable whether the misappropriation doctrine is sufficiently embedded in the legal orders of the Members.619 De Vrey, who examined Dutch, German and English law, being representative of the Romanic, Germanic and Common Law families, respectively, found that, provided there is no risk of confusion, freedom of competition takes precedence.620 For English law, Jacob L.J. noted in L’Oréal v. Bellure: We are all against misappropriation, just as we are all in favour of mother and apple pie. To use the word in the context of a debate about the limits 613 Cf. Githae in Kamau/Winter, pp. 81 f; Dutfield, ‘Protecting Traditional Knowledge’, pp. 8 f. 614 Cf. wipo Publication No. 768, Part 2, pp. 173, 233. 615 Nijar, ‘Incorporating Traditional Knowledge in an International Regime on Access to Genetic Resources and Benefit Sharing’, p. 466; Janke, p. 1. Cf. High Court of Australia, Mabo v. Queensland (No. 2), para. 50 (Deane and Gaudron JJ.). See also Khan, p. 96, advancing the same argument in the context of benefit-sharing. 616 unu-ias Report, p. 16; Kiene, The Legal Protection of Traditional Knowledge in the P­ harmaceutical Field, p. 153; Anderson, paras. 3.2.5.2 f, 3.3.1.3, 3.4.2.1; Skrydstrup, pp. 13, 101, 120 f; Talakai, p. 14. 617 Claudie et al. in Drahos/Frankel, pp. 29, 36; Anderson, paras. 4.2.1 f; Tobin in Kamau/ Winter, pp. 102 f; Stoll/von Hahn in von Lewinski, p. 7; Arezzo, p. 374; Dutfield, ‘Protecting Traditional Knowledge’, p. 32. 618 Lukose, pp. 78 f. 619 Cf. Ohly, ‘The Freedom of Imitation and Its Limits’, pp. 507 f; Thouvenin, pp. 208 ff, 444 ff. 620 De Vrey, pp. 6, 298 ff, 311 ff.

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of the tort of passing off and its interface with legitimate trade is at best muddling and at worst tendentious.621 It is submitted that the concept of ‘misappropriation’ lacks general acceptance, even in the United States itself.622 For instance, the Court of Appeals, 2nd Circuit, confined the misappropriation doctrine in National Basketball Association v. Motorola to time-sensitive information and to situations where there is direct competition between free rider and aggrieved person.623 From this case law, it can be inferred that the subject matter must be clearly delineated for the doctrine to apply. It is therefore rather doubtful whether traditional knowledge would constitute a suitable subject matter of protection.624 Nevertheless, the igc maintains that ‘the misappropriation concept … is reflected in several national unfair competition laws’ and that ‘[m]isappropriation is an element of unfair competition law.’625 Likewise, Reichman contends that ‘courts in nearly all countries periodically draw upon the misappropriation rationale … to curb methods of imitation that appear egregiously unethical or market-distorting to particular judges.’626 A similar line of reasoning as in the ins case can be found in Israeli627 and German628 case law. We can leave the question open as to whether or not the misappropriation doctrine is enshrined in the legal

621 Court of Appeal (Civil Division), L’Oréal v. Bellure, para. 160. 622 For United States law, see Section 38 of the Restatement (Third) of Unfair Competition; Supreme Court of United States, Bonito Boats v. Thunder Craft Boats, pp. 157 ff, 167; Wadlow, ‘A Riddle Whose Answer is “Tort”’, pp. 651 f, 679 f; Corgill, pp. 1075 f; Schechter, pp. 67, 238. For English law, see Alkin, pp. 51 f; Carty, ‘The Common Law and the Quest for the ip Effect’, p. 266; Wiebe in Heermann/Hirsch, § 4 Nr. 9 uwg para. 12. For Australian law, see Logan, Part 1, p. 42. 623 United States Court of Appeals, 2nd Circuit, National Basketball Association v. Motorola, pp. 845, 852, confirming United States Court of Appeals, 3rd Circuit, United States Golf Association v. St. Andrews System, pp. 1038 f, as to the requirement of direct competition. Contra California Court of Appeals, 1. Dist., United States Golf Association v. Arroyo Software, p. 714. See also Balganesh, ‘Hot News’, p. 423; Logan, Part 1, p. 39; Port, p. 99. 624 See above p. 134. 625 Revised Outline of Policy Options and Legal Mechanisms, wipo Doc. wipo/grtkf/ic/9/ inf/5, Annex paras. 21, 28. See also Westkamp, ‘trips Principles, Reciprocity and the Creation of Sui-Generis-Type iprs’, pp. 840 f. 626 Reichman, ‘Legal Hybrids Between the Patent and Copyright Paradigms’, p. 2472. See also Dessemontet in Correa/Yusuf, p. 278. 627 Deutch, pp. 547 f. 628 Already Reichsgericht [Supreme Court of the German Reich], Makkaroni-Packung rgz 146, 247, 249 f. See also Eck in Gloy/Loschelder/Erdmann, § 56 paras. 134, 145, 194.

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traditions of the Members if the doctrine should prove inapplicable here for other reasons. 2 Critique Paragraph 2 of Article 39 of the trips Agreement deals with the misappropriation of trade secrets (‘preventing information … from being disclosed to, acquired by, or used by others’), and thus appears as a role model for the protection against misappropriation. An analysis of this provision shows that mere failure to seek consent is not tantamount to an act of unfair competition. To begin with, the norm stipulates a consent requirement. The relevant part of the introductory phrase reads as follows: without their consent in a manner contrary to honest commercial practices … It is important to note that the clause does not provide that the disclosure, acquisition or use of information without consent is contrary to honest practices. Instead, a systematic interpretation of paragraph 2 leads to the conclusion that ‘without their consent’ cannot be equated with ‘contrary to honest commercial practices’.629 To put it another way, failure to obtain consent must be something different from a contradiction of honest practices. Otherwise, it would have been added to the list in footnote 10 to Article 39 of the trips Agreement. One can deduce from this that lack of consent alone is not sufficient to call for legal protection under Article 39.2 of the trips Agreement.630 The violation of the consent requirement needs to be qualified by acts like breach of contract or breach of confidence. In particular, the French version makes it clear that lack of consent and a contradiction of honest practices are two separate elements: sans leur consentement et d’une manière contraire aux usages commerciaux honnêtes … (emphasis added) In the same vein, Article 6(1) of the wipo Model Provisions states: Any act or practice, in the course of industrial or commercial activities, that results in the disclosure, acquisition or use by others of secret information without the consent of the person lawfully in control of that 629 Cf. Correa, Trade Related Aspects of Intellectual Property Rights, p. 371. 630 De Carvalho, The trips Regime of Antitrust and Undisclosed Information, para. 39.2.43.

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information … and in a manner contrary to honest commercial practices shall constitute an act of unfair competition. (emphasis added) It would not be compelling to object to the misappropriation doctrine solely by pointing to Article 39.2 of the trips Agreement because this provision might constitute an exception. A further point to consider is a potential conflict with patent law arising from the fact that protection under Article 10bis of the Paris Convention (1967) is granted as long as the circumstances establishing dishonesty are given, i.e. without specific time limitation.631 Ergo, protection of traditional knowledge on that basis would, in principle, be unlimited in time. Contrariwise, patents are subject to a term of protection pursuant to Article 33 of the trips Agreement, whereby the term of protection corresponds with the time that is supposedly needed until the investment made is amortized.632 That is to say, a patent would expire after a certain period of time (approximately the duration of one generation) and enter the public domain.633 According to Article 27.1 of the trips Agreement, patent law covers ‘inventions, whether products or processes, in all fields of technology’. Because traditional knowledge associated with genetic resources, in particular traditional medicine,634 can be subsumed under the term ‘invention’, it systemically falls within the scope of patent law, even though, as set out above, it would struggle to pass the novelty test in most cases.635 If Article 10bis of the Paris Convention (1967) afforded perpetual protection for inventions that are not new, this would bypass the limitations in Articles 27.1 and 33 of the trips Agreement, and be equivalent to an evasion of law. We, therefore, raised the question whether the circumstances in the present case are so special as to allow an exception.636

631 Cottier/Jevtic in Drexl et al., pp. 688 f; Deutch, p. 529. For German law, see de Vrey, p. 191. 632 Cottier, ‘Industrial Property, International Protection’ in mpepil, para. 40. For German law, see Ohly in Ohly/Sosnitza, § 4.9 para. 9/81. 633 Cf. the example given by Russia in Revised Objectives and Principles, wipo Doc. wipo/grtkf/ic/18/5, Annex p. 59. 634 For a definition of this term, see who/wipo/wto, p. 89; Section 3 of the Tanzanian Traditional and Alternative Medicines Act; Section 1 of the South African Traditional Health Practitioners Act; Section 4(b) of the Philippines Traditional and Alternative Medicine Act. 635 The Relationship Between the trips Agreement and the cbd, wto Doc. ip/C/W/368/Rev.1, para. 93 first bullet; Ebermann, pp. 2, 101 f, 112 ff; Drahos/Frankel, pp. 7 f; Sinjela/Ramcharan, p. 7. 636 See above p. 213. See also Deutch, pp. 505 f.

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Above, we found a difference between intellectual property rights and Article 10bis of the Paris Convention (1967) respecting their ratio legis: as a matter of principle, unfair competition law serves to regulate competitive conduct and, to that effect, prohibits dishonest commercial practices, whereas intellectual property law confers exclusive rights and thereby accords a firm legal position.637 That is, while intellectual property rights protect something, unfair competition law protects against something.638 That Article 10bis of the Paris Convention (1967) has a different thrust and is directed at repressing certain competitive behaviours can be derived from: − Article 1(2) of the Paris Convention (1967), as incorporated into the trips Agreement, − the prerequisites ‘act of competition’ and ‘practices in industrial or commercial matters’ in paragraph 2 of Article 10bis of the Paris Convention (1967), and − paragraph 3 thereof which regulates, by way of example, typical dishonest commercial practices. Consistent treaty interpretation thus confirms that Article 10bis of the Paris Convention (1967) as a whole is concerned with behaviour control.639 From this it follows that Article 10bis of the Paris Convention (1967) could only police the way in which traditional knowledge is appropriated and used, but would be unsuited to protect its content and intrinsic value. The crux of the matter is when the only reproachable act can be seen in the failure to seek approval from the custodians of traditional knowledge. Prima facie, appropriating an intangible asset without authorization and capitalizing on it constitutes competitive behaviour, just as the acts described e.g. in Article 28.1(a) and (b) of the trips Agreement.640 The wipo tries to convey that the envisaged protection against misappropriation is merely aimed against the ‘privatization or commoditization’ of traditional knowledge, and not at granting private rights.641 The truth is that no matter how construed, whether through consent requirement, native title or misappropriation 637 See above p. 22. 638 Wadlow, ‘Regulatory Data Protection Under trips Article 39(3) and Article 10bis of the Paris Convention’, p. 397. 639 unctad-ictsd Resource Book, p. 527; de Vrey, p. 3 footnote 8. For German law, see ­Emmerich, p. 1. 640 Cf. Kamperman Sanders, Unfair Competition Law, p. 113. 641 Revised Objectives and Principles, wipo Doc. wipo/grtkf/ic/18/5, Annex pp. 39 f.

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d­ octrine, it leads to the acknowledgment of power to exclude others from using traditional knowledge. Indeed, this power may be exercised arbitrarily, which is characteristic of an intellectual property right.642 That is, not only would the custodians occupy a legal position that is equivalent to a monopoly,643 but since Article 10bis of the Paris Convention (1967) is the legal basis, one that is unlimited in time (while most intellectual property rights have only a limited term of protection).644 At the end of the day, this would amount to a de facto intellectual property right.645 Within the context of the wto, such a reading would go too far and contravene Articles 3.2.3 and 19.2 of the dsu, which forestall an addition of rights and obligations. This is where the potential of Article 10bis of the Paris Convention (1967) in the wto is limited. Consequently, until a consent requirement becomes mandatory, the appropriation of traditional knowledge is not inconsistent with wto law. Article 39.2 of the trips Agreement epitomizes this. At national and regional level, such an entitlement is provided for e.g. in Article 8 of the Brazilian Law No. 13.123 of 20 May 2015, Article 7 of the Decision 391 of the Andean Community on a Common Regime on Access to Genetic Resources (the ‘Decision No. 391’), Article 3(2) of the Decision 486 of the Andean Community on a Common Intellectual Property Regime (the ‘Decision No. 486’), and Article 1 of the Peruvian Law No. 27811. To regulate this matter at wto level is the domain of the Membership, which is better suited to maintain the bigger picture. Adopting the words of the panel in Canada – Pharmaceutical Patents with regard to ‘legitimate interests’ in Article 30 of the trips Agree­ ment,  we can state that the concept of ‘honest practices’ in paragraph 2 of Article 10bis of the Paris Convention (1967) ‘should not be used to decide, through adjudication, a normative policy issue that is still obviously a matter of unresolved political debate.’646 The third sentence of Article 71.1 of the trips Agreement confirms this by assigning the task of undertaking ‘reviews in the light of any relevant new developments which might warrant modification or amendment of this Agreement’ to the trips Council. As a side note, v642 Articles 16.1, 23.1, 28 of the trips Agreement. See Draft Gap Analysis, wipo Doc. wipo/grtkf/ic/13/5(b) Rev., Annex i para. 75; Bubela/Gold, p. 15; Cottier, ‘Industrial Property, International Protection’ in mpepil, para. 33; Meyers/Owoeye, p. 60; Taubman/ Leistner in von Lewinski, pp. 173, 178; Cullet et al. in Biber-Klemm/Cottier, p. 113. Different with regard to the principle of unjust enrichment, Kamperman Sanders, Unjust Enrichment, p. 20. 643 Cf. Kamperman Sanders, Unfair Competition Law, p. 113; Spence, pp. 478 f. 644 Cf. Articles 12, 14.5, 18, 33, 38 of the trips Agreement, 7 f of the Berne Convention (1971). 645 Cf. Kamperman Sanders, Unjust Enrichment, pp. 6, 12. See also Supreme Court of United States, Bonito Boats v. Thunder Craft Boats, p. 167. 646 Panel Report, Canada – Pharmaceutical Patents, para. 7.82.

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to infer from this provision a general exclusion of the principle of dynamic treaty interpretation for the trips Agreement, as one view in the literature does,647 is too strict, and what is more, at variance with the case law of the Appellate Body.648 Even so, from an unbiased perspective, one ought to think that aggressive practices, such as intimidation, coercion, molestation, etc., being the most blatant and egregious means to think of in a competitive battle, are included a fortiori in paragraph 2 of Article 10bis of the Paris Convention (1967).649 Failing that, one might query whether the doctrine of unfair competition can at all live up to its purpose to secure honesty in competition.650 In the given situation, the described acts would be directed at the presumed holders of traditional knowledge with a view to making them disclose their knowledge. Those practices come, therefore, only into play as long as the information is still undisclosed. Hence, Article 39.1 and 2 of the trips Agreement as lex specialis is pertinent.651 In addition, as the case may be, the behavioural wrong may be addressed by criminal sanctions of national law (e.g. under the heading of duress), provided it reaches the required gravity. That said, if a right of consent was guaranteed for the benefit of indigenous and local communities, it would imply that the exercise of this right is free from intimidation, coercion, as well as other forms of undue influence on the autonomy of decision which exploit the right holders’ credulity or inexperience in industrial or commercial matters.652 These forms of undue influence would then be irreconcilable with the concept of ‘honest practices’ even without an explicit prohibition. C Defensive Protection We have hitherto dealt with the so-called positive protection of traditional knowledge, i.e. protection against its unauthorized utilization (e.g. in the development of an invention). Hereinafter, we will look into the second major 647 Correa in Macrory/Appleton/Plummer, vol. ii, p. 436. 648 See above p. 11. See also Pauwelyn in Macrory/Appleton/Plummer, vol. i, pp. 1421 ff, regarding Articles 3.2.3 and 19.2 of the dsu. 649 See, e.g., Articles 8 f of the Unfair Commercial Practices Directive; Section 50 of the Australian Competition and Consumer Act 2010. For United States law, see Schechter, p. 354. For German law, see Köhler in Köhler/Bornkamm, § 4 para. 10.17. 650 See also Wadlow, The Law of Passing-off, para. 2–019. 651 See above p. 162. 652 Cf. Glöckner, Europäisches Lauterkeitsrecht, pp. 563 ff. See also Principle 6 of the Guidelines for Ethical Research in Australian Indigenous Studies by the Australian Institute of Aboriginal and Torres Strait Islander Studies: ‘Free, prior and informed consent means that agreement must be obtained free of duress or pressure, and ensuring that Indigenous people are fully cognisant of the details and risks of the proposed research.’

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concern of proponents of traditional knowledge protection, namely the prevention of patent issuances for traditional knowledge to parties other than the original holders, the so-called defensive protection.653 The question is again whether Article 10bis of the Paris Convention (1967) is the appropriate legal instrument to that effect. In national law, the misappropriation doctrine has been applied ‘to cases where intellectual property, lawfully obtained, is used in direct competition with the person who created it.’654 According to a study carried out by an Indian expert group, 49% of randomly picked us patents were based upon traditional knowledge.655 Against this background, India founded the National Biodiversity Authority and commissioned it to ‘oppose the grant of intellectual property rights in any country outside India on any biological resource obtained from India or knowledge associated with such biological resource which is derived from India’.656 Article 4(c) and (f) of the Peruvian Law No. 28216 stipulates the same objective for the National Commission for the Protection of Access to Peruvian Biological Diversity and the Collective Knowledge of Indigenous Peoples.657 Other Members banned the patenting of traditional knowledge altogether.658 The Costa Rican Biodiversity Law also excludes from patentability ‘[i]nventions essentially derived from knowledge which is associated with traditional or cultural biological practices in the public domain’.659 The following investigation turns on patents the issuance of which was facilitated because undocumented traditional knowledge is not recognized as prior art.660 As epitomized by Article 8(1) and (2) of the Law of the Kyrgyz Republic on the Protection of Traditional Knowledge, this case must be distinguished from the one of patenting traditional knowledge that has been 653 wipo Publication No. 933, p. 16; The Protection of Traditional Knowledge and Folklore, wto Doc. ip/C/W/370/Rev.1, paras. 8, 18 ff, 38 third bullet; Varadarajan, p. 382; Ubertazzi, pp. 70, 82; Srinivas, p. 87; Taubman/Leistner in von Lewinski, pp. 83, 85 ff; Gopalakrishnan/Nair/ Babu, p. 9. 654 Supreme Court of Illinois, Dissenting Opinion, Board of Trade of the City of Chicago v. Dow Jones, p. 124 (Simon J.). 655 Mashelkar, p. 961. 656 Section 18.4 of the Biological Diversity Act. 657 See also Cabrera Medaglia/Perron-Welch/Rukundo, p. 21; Henninger in gtz, p. 297. 658 Cf. the third sentence of Article 124 of the Constitution of the Bolivarian Republic of Venezuela; the second sentence of Article 322 of the Constitution of Ecuador; Article 8(1) of the Law of the Kyrgyz Republic on the Protection of Traditional Knowledge; Section 3(p) of the Indian Patents Act; Article 84(3) of the Costa Rican Biodiversity Law (regarding knowledge contained in the national register). 659 Article 78(f) of the Costa Rican Biodiversity Law. 660 See above p. 147.

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­enhanced.661 Often, traditional knowledge is not ready yet for the market.662 An example would be the knowledge of pharmaceutical plant uses:663 in order to be commercially usable, further enhancement and testing are needed.664 In such a situation, when others have added their know-how in order to reach market maturity, it may be true that traditional knowledge is at the core of a tradable product, but it is equally true that it is only one component.665 Here the European Union, for instance, would endorse the patentability.666 By the same token, China has issued thousands of patents on traditional Chinese medicine.667 Costa Rica, by contrast, would refuse a patent application in the given constellation. The rationale that underlies Costa Rican law is equivalent to arguing that temporary monopolies exploit per se everybody who contributed towards achieving the state of the art.668 This cannot be right.669 In consequence, traditional knowledge protection must start at an earlier stage and already prevent the modification.670 Whether the custodians are entitled to do so is a question of positive protection.671 Defensive protection, however, must be limited to the interest of keeping traditional knowledge as it is free from patents. 1 Description of the Problem One might wonder if patenting is not just another type of use of traditional knowledge by a third party, thus falling under the rules pertaining to ­positive 661 The Protection of Traditional Knowledge and Folklore, wto Doc. ip/C/W/370/Rev.1, para. 23. 662 Cf. Twarog in Twarog/Kapoor, p. 67. 663 Kiene, The Legal Protection of Traditional Knowledge in the Pharmaceutical Field, p. 51; Biber-Klemm/Cottier, pp. 26, 108; Blakeney in Blakeney, p. 93. 664 Kiene, The Legal Protection of Traditional Knowledge in the Pharmaceutical Field, p. 51; Biber-Klemm et al. in Biber-Klemm/Cottier, p. 108; Twarog/Kapoor, pp. 269, 302. 665 See List and Brief Technical Explanation of Various Forms in which Traditional Knowledge May be Found, wipo Doc. wipo/grtkf/ic/17/inf/9, Annex paras. 37 f; Kumar in Twarog/ Kapoor, p. 302. 666 Review of the Provisions of Article 27.3(b) of the trips Agreement, wto Doc. ip/C/W/254, para. 29. 667 Tobin, Indigenous Peoples, Customary Law and Human Rights, p. 164; Taubman/Leistner in von Lewinski, p. 124; Sinjela/Ramcharan, p. 20. 668 Cf. Dutfield, Intellectual Property, Biogenetic Resources and Traditional Knowledge, p. 58; Ghosh, ‘Globalization, Patents, and Traditional Knowledge’, p. 96. 669 In the wake of its obligation to implement the cafta-dr, Costa Rica attempted to amend its Biodiversity Law, but its Constitutional Court found the chosen amendment process to be unconstitutional, cf. Cabrera Medaglia in gtz, pp. 285 f. 670 Taubman in Maskus/Reichman, p. 527. 671 Cf. wipo Publication No. 920, p. 26.

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protection. The difference is that the matter in hand entails an improper claim of ownership. A patent office granting a patent on traditional knowledge (and disregarding prior art in other Members) assigns, for its jurisdiction, an absolute right over the traditional knowledge concerned. The original holders would be precluded from marketing products or processes based on that knowledge in the territory of the issuing Member. Furthermore, it is doubtful who commits the act of unfair competition here: − the responding Member acting through its patent office, or − the patent applicant taking advantage of the possibilities offered by the patent law of the respondent. We found above that Article 10bis of the Paris Convention (1967) requires a competitive relationship.672 Even if patent offices favoured the interests of the domestic industry, thus giving it the edge over its competition, a competitive relationship would be inconceivable between the issuing patent office of the responding Member and the original holders of traditional knowledge. Only the patent applicant can be seen as an actor in this sense. It follows that the domestic patent law is at issue which must be in conformity with Articles 27 ff of the trips Agreement. Article 27.1 of that Agreement mandates that an invention must be ‘new’ to qualify for patent protection.673 The further elaboration of the patent law is at the discretion of the Members, including the sources under scrutiny in a patent procedure.674 The problem is that a situation may arise in which traditional knowledge is not deemed new in the country of origin, but in another Member.675 Such an outcome is possible because Article 27.1 does not establish whether ‘new’ is to be determined by national, regional or worldwide standards, nor does it prescribe that undocumented sources from other Members must be included in prior art searches.676 Footnote 5 to that Article delineates the criteria for patentability but ‘new’, so it does not provide any guidance in 672 673 674 675 676

See above p. 75. Neef & Reyes-Knoche in Stoll/Busche/Arend, Article 27 paras. 36 ff. unctad-ictsd Resource Book, p. 390; Hoekman/Kostecki, p. 383. See above p. 147. The Relationship Between the trips Agreement and the cbd, wto Doc. ip/C/W/368/Rev.1, para. 26; The Protection of Traditional Knowledge and Folklore, wto Doc. ip/C/W/370/ Rev.1, para. 26 fourth bullet; Helfer, p. 30. See also United Kingdom House of Lords, Merrell Dow Pharmaceuticals v. hn Norton, para. 36 (Lord Hoffmann): ‘There is an infinite variety of descriptions under which the same thing may be known. Things may be described according to what they look like, how they are made, what they do and in many other ways.

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this regard. Recital 25 of the Preamble to the Nagoya Protocol, in contrast, explicitly recognizes the unique circumstances where traditional knowledge associated with genetic resources is held in countries, which may be oral, documented or in other forms, reflecting a rich cultural heritage relevant for conservation and sustainable use of biological diversity. Yet, specifications as to whether the consideration of undocumented sources is mandatory are lacking in the trips Agreement, the result being that Members have considerable leeway for the examination of novelty.677 From Article 29.1 of the trips Agreement, no standard can be deduced either. This provision stipulates a disclosure obligation for the patent applicant, namely to ‘disclose the invention in a manner sufficiently clear and complete for the invention to be carried out by a person skilled in the art’, which the Members shall enforce. 2 Possible Solutions (a) Principle of Abus de Droit From Article 27.1 of the trips Agreement, a right to receive patent protection under certain conditions can be concluded. It is, however, difficult to see a dishonest act in the application for a patent in light of Section 5 of Part ii of the trips Agreement. This begs the question whether there are rules that can restrict this right. Self-evidently, a right can be misused; its exercise is therefore inherently limited by the principle of abus de droit.678 It is well established that abus de droit constitutes a general principle of law within the meaning of Article 38(1)(c) of the icj Statute and an application of good faith.679 It enjoins ‘the exercise of individual rights in such a way that others would suffer no injury’.680 This doctrine applies to states.681 It is questionable whether, as

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Under what description must it be known in order to justify the statement that one knows that it exists?’ The Protection of Traditional Knowledge and Folklore, wto Doc. ip/C/W/370/Rev.1, para. 20 first bullet; Kenya in Minutes of Meeting, wto Doc. ip/C/M/28, para. 141; Cullet et al. in Biber-Klemm/Cottier, p. 126. Kiss, ‘Abuse of Rights’ in mpepil, para. 34; Cameron/Gray, pp. 294 f. Appellate Body Report, us – Shrimp, para. 158; Göttsche in Hilf/Oeter, § 5 para. 69; Kiss, ‘Abuse of Rights’ in mpepil, paras. 9 f; Villiger, Article 31 para. 7; Cottier/Schefer in Bronckers/Quick, pp. 50 f. Critically, Lennard, pp. 68 ff. Kiss, ‘Abuse of Rights’ in mpepil, para. 2. Kiss, ‘Abuse of Rights’ in mpepil, paras. 4 ff; Mitchell, ‘Good Faith in wto Dispute Settlement’, p. 349.

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a principle of international law, it also binds private persons, as it does under national law.682 Nowadays, states are not the only accepted actors in international law. For example, it is settled that individuals can violate peremptory norms.683 International law has developed towards recognizing individuals as legal subjects.684 I only recall Articles 22 ff of the Rome Statute and investorstate dispute settlement provisions.685 To the extent that international law has realized this, general principles of law apply to individuals as well. This is true in particular of abus de droit, as Articles 17 of the European Convention on Human Rights,686 3 of the Optional Protocol to the International Covenant on Civil and Political Rights,687 and 8.2 of the trips Agreement evidence.688 Hence, whenever international law vests a right in individuals, it is implied that this right is subject to the principle of abus de droit. So the question before us is whether an applicant for a patent on traditional knowledge other than a traditional knowledge holder would be acting in bad faith. The analogous issue of third party applications in trademark law is regulated for European law by Article 52(1)(b) of the eu Trade Mark Regulation. The provision reads as follows: A European Union trade mark shall be declared invalid … (b) where the applicant was acting in bad faith when he filed the application for the trade mark. While being cognizant of the differences between patents and trademarks, it is nevertheless worth noting the ruling of Arnold J. in the English case Hotel 682 Kiss, ‘Abuse of Rights’ in mpepil, para. 9; Mitchell, ‘Good Faith in wto Dispute Settlement’, p. 349. 683 Cf. Article 5(1) of the iccpr; Christopher, pp. 1235 f. Contra Hestermeyer, Human Rights and the wto, pp. 97 f, as to the obligations under the iccpr and the icescr. 684 Gorski, ‘Individuals in International Law’ in mpepil, paras. 10 ff, 53; Walter, ‘Subjects of International Law’ in mpepil, paras. 15 ff; Doehring, paras. 246 ff, 254, 967 ff. Contra ­Schweisfurth, p. 41 para. 144. 685 Gorski, ‘Individuals in International Law’ in mpepil, para. 42. 686 ‘Prohibition of abuse of rights. Nothing in this Convention may be interpreted as implying for any State, group or person any right to engage in any activity or perform any act aimed at the destruction of any of the rights and freedoms set forth herein or at their limitation to a greater extent than is provided for in the Convention.’ 687 ‘The Committee shall consider inadmissible any communication under the present Protocol … which it considers to be an abuse of the right of submission of such communications or to be incompatible with the provisions of the Covenant.’ 688 Kiss, ‘Abuse of Rights’ in mpepil, paras. 26 ff.

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­Cipriani v. Cipriani (Grosvenor Street): ‘Generally speaking, bad faith in such a case will involve some breach of a legal or moral obligation on part of the applicant towards the third party.’689 As the law stands, patenting traditional knowledge would run counter to the principle of equitable benefit-sharing, as provided for in Articles 8(j) of the cbd and 5(5) of the Nagoya Protocol, because patents monopolize the exploitation for the benefit of the patent holder.690 It is true that a patent might also form the basis for generating the benefits to be shared between the patent holder and the original holder(s),691 but this would presuppose that the sharing of benefits is obligatory. However, the remit of the Nagoya Protocol is confined,692 and the language of Article 8(j) of the cbd is not compulsory (‘encourage the equitable sharing of the benefits’). In the final analysis, the right to apply for a patent is not limited in the field of traditional knowledge. It is the responsibility of patent offices to make sure that only new inventions will be patented. In any event, the present constellation cannot be dealt with under Article 10bis of the Paris Convention (1967).693 Whether or not a patent is to be issued has to be decided by patent law. There, a solution has to be found, whereby the instruments presented hereinafter come into consideration.694 (b) Disclosure Requirement Some developing country Members, inter alia Brazil and India, have set forth a proposal to make the disclosure of ‘(i) the country … and, (ii) the source in the country providing the genetic resources and/or associated traditional knowledge’ mandatory in a patent application with the aim of assisting in the prior art search.695 To date, no such obligation exists in international law, even 689 High Court of Justice (Chancery Division), Hotel Cipriani v. Cipriani (Grosvenor Street), para. 186. 690 Article 28 of the trips Agreement. See Hoekman/Kostecki, pp. 402 f; Ghosh, ‘Reflections on the Traditional Knowledge Debate’, p. 505. See also Khan, p. 96, extending this argument to the patenting of inventions based on traditional knowledge. 691 De Werra, pp. 156, 169. 692 Article 3 of the Nagoya Protocol. 693 Contra Cottier/Jevtic in Drexl et al., p. 689. 694 Cf. wipo Publication No. 920, p. 26. 695 Draft Decision to Enhance Mutual Supportiveness Between the trips Agreement and the Convention on Biological Diversity, wto Doc. tn/C/W/59, p. 2 Article 29bis.2; The Relationship Between the trips Agreement and the cbd, wto Doc. ip/C/W/368/Rev.1, paras. 70 ff; Pavoni in Morgera/Buck/Tsioumani, pp. 209 f; de Werra, pp. 146 f; Manley, p. 131; Dutfield in Maskus/Reichman, p. 506. See also Srinivas, pp. 91 ff; Biber-Klemm/Cottier, pp. 210, 242 f.

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though a technical study by the wipo considered whether this might emanate from equity.696 The conditions set out in Article 29.1 of the trips Agreement do not encompass such a disclosure requirement.697 Notwithstanding the issue of whether patent offices around the world could handle a disclosure requirement – which would fundamentally depend upon its exact scope and the extent to which patent offices would be required to verify compliance with it in a patent examination698 – one thing seems clear: it alone would not commit patent offices to recognizing (undocumented) traditional knowledge as prior art.699 This, however, is at the root of the problem.700 One way to prevent bad patents from being issued would be to combine a disclosure requirement with an obligation to provide evidence of the approval of traditional knowledge holders or a competent national authority, as the proposal does.701 Some Members have implemented this solution.702

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Doubting the functionality of a disclosure requirement, de Carvalho, ‘From the Shaman’s Hut to the Patent Office’, pp. 116, 185 f. wipo Technical Study, p. 45. For an overview of domestic laws, see Henninger in gtz, pp. 296 ff. Ebermann, pp. 132, 174. wipo Technical Study, pp. 48 f, 51; Pavoni in Morgera/Buck/Tsioumani, pp. 204 f; Hoekman/Kostecki, p. 399; Srinivas, p. 94. For the Norwegian experience, see Information Regarding the Disclosure Requirement in Norwegian Law, wipo Doc. wipo/grtkf/ic/23/i nf/10. As for the onus on the patent applicant, see Dutfield, ‘Thinking Aloud on Disclosure of Origin’, p. 9. See also Cabrera Medaglia in gtz, p. 273; Dutfield, ‘Thinking Aloud on Disclosure of Origin’, p. 8. See above p. 233. See also Santamauro, pp. 95, 97. Draft Decision to Enhance Mutual Supportiveness Between the trips Agreement and the Convention on Biological Diversity, wto Doc. tn/C/W/59, p. 2 Article 29bis.2; Issues Related to the Extension of the Protection of Geographical Indications, wto Doc. wt/gc/W/591, para. 9; The Protection of Traditional Knowledge and Folklore, wto Doc. ip/C/W/370/Rev.1, para. 28 third bullet; wipo Technical Study, pp. 40 f, 65, 67. For the discussion on this topic in the trips Council, see The Relationship Between the trips Agreement and the cbd, wto Doc. ip/C/W/368/Rev.1, paras. 78, 118 ff. See also Gubarev, p. 93; Biber-Klemm et al. in Biber-Klemm/Cottier, p. 243; Dutfield, ‘Protecting Traditional Knowledge’, pp. 29 ff. Contra Article 27.3(b), the Relationship Between the trips Agreement and the cbd, and the Protection of tk, wto Doc. ip/C/W/400/Rev.1, paras. 14 f. Section 30(3B) of the South African Patents Act: ‘The registrar shall call upon the applicant to furnish proof in the prescribed manner as to his or her title or authority to make use … of the traditional knowledge or use if an applicant lodges a statement that acknowledges that the invention for which protection is claimed is based on or derived from … traditional knowledge or use’; Section 47(2) of Vanuatu’s Patents Act 2003: ‘The Registrar must not grant a patent for an invention that is based on, arose out of, or incorporates elements of, indigenous knowledge unless: (a) the custom owners of the

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In case of non-compliance, Andean Community law provide for the revocation of the patent at issue.703 Since this approach targets their validity, it is an ­effective way to preclude erroneous patents.704 Its implementation at wto level would presuppose an amendment of the trips Agreement.705 To this end, the ­extension of Article 23 of the trips Agreement beyond wines and spirits might turn out to be the necessary trade-off, at least towards the European Union.706 (c) Traditional Knowledge Databases Countries rich in traditional knowledge could respond to the publication requirement707 by establishing traditional knowledge databases and thus simply fulfilling it.708 Several Members have already taken action in this regard, cf.

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i­ ndigenous knowledge have given their prior informed consent to the grant …’; Article 26 of the Decision 486 of the Andean Community: ‘Applications for patents shall be filed with the competent national office and shall contain: … (i) if applicable, a copy of the document that certifies the license or authorization to use the traditional knowledge of indigenous, African American, or local communities in the Member Countries where the products or processes whose protection is being requested was obtained or developed on the basis of the knowledge originating in any one of the Member Countries, pursuant to the provisions of Decision 391 and its effective amendments and regulations’; the 2nd Complementary Provision of the Peruvian Law No. 27811: ‘Presentación del contrato de licencia para obtener una patente de invención. En caso de que se solicite una patente de invención relacionada con productos o procesos obtenidos o desarrollados a partir de un conocimiento colectiva existente en Perú, la autoridad competente solicitará una copia del contrato de licencia, como parte del procedimiento de concesión del respectivo derecho, a menos que se trate de un conocimiento colectivo que se encuentre en el dominio publico …’ Article 75(h) of the Decision No. 486, which is ‘directly applicable in Member Countries’ of the Andean Community according to Article 3(1) of the Treaty Creating the Court of Justice of the Cartagena Agreement in conjunction with Article 274 of the Decision No. 486. Contra Almeida in Sinjela, p. 231 (without explanation). See also Henninger in gtz, pp. 300 f. The Relationship Between the trips Agreement and the cbd, wto Doc. ip/C/W/368/Rev.1, para. 122; Henninger in gtz, p. 308. The Relationship Between the trips Agreement and the cbd, wto Doc. ip/C/W/368/Rev.1, paras. 71 f, 79. Switzerland in Minutes of Meeting, wto Doc. tn/ip/M/21, para. 54; Draft Modalities for trips Related Issues, wto Doc. tn/C/W/52; Blakeney in Drahos/Frankel, p. 179; Hoekman/Kostecki, p. 400; Mitchell/Voon in Bethlehem et al., p. 199. See above p. 147. The Relationship Between the trips Agreement and the cbd, wto Doc. ip/C/W/368/Rev.1, para. 23 last two bullets, para. 32; The Protection of Traditional Knowledge and Folklore, wto Doc. ip/C/W/370/Rev.1, para. 25; Anderson, paras. 3.4.2.2 ff; Hilty, p. 911; Alikhan/

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Article 23 of the Peruvian Law No. 27811,709 Austria’s Register on Traditional Knowledge in Agricultural Products and Food,710 or India’s Traditional Knowledge Digital Library.711 ‘Publicly accessible databases’ are also envisaged by the respective Understandings to the us-Peru and us-Colombia trade agreements.712 At the same time, countries implementing a database would forestall the oblivion of traditional knowledge endangered by the death of the present generation of custodians,713 cf. Articles 16(a) of the Peruvian Law No. 27811,714 42(ii), 100(ii), 304(ii) No. 3 of the Constitution of Bolivia or Fiji’s National Inventory Project,715 and comply with their international obligations, if applicable, arising from

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Mashelkar, pp. 82 ff; von Lewinski, p. 525; Fusco, p. 229; Kohls, p. 130; Robinson, pp. 48 f; Biber-Klemm et al. in Biber-Klemm/Cottier, p. 255; Manley, pp. 130 f. For the discussion on this topic in the trips Council, see The Protection of Traditional Knowledge and Folklore, wto Doc. ip/C/W/370/Rev.1, paras. 25 f. Doubting whether traditional knowledge databases could prevent ‘patents on isolated therapeutic compounds from medicinal plants’, Dutfield in Maskus/Reichman, p. 511. ‘With a view to its opposing pending patent applications, disputing granted patents or otherwise intervening in the grant of patents for goods or processes produced or developed on the basis of collective knowledge, indecopi shall send the information entered in the Public National Register to the main patent offices of the world in order that it may be treated as prior art in the examination of the novelty and inventiveness of patent applications.’ See also Ruiz/Lapeña/Clark, pp. 782 ff, 789 f. Austrian Ministry of Agriculture, Forestry, Environment and Water Management, ­Traditional foodstuffs in Austria (2016) accessed 22 April 2016. who/wipo/wto, p. 92; Intellectual Property and Sustainable Development, wipo Doc. wipo/tk/mct/11/inf/2, paras. 45 ff; Lukose, pp. 240 ff; Cabrera Medaglia/Perron-Welch/ Rukundo, p. 31; Oguamanam, pp. 499 ff. Para. (a). Similarly Article 201(11) of the Trade Agreement between the European Union and Colombia and Peru. Intellectual Property and Sustainable Development, wipo Doc. wipo/tk/mct/11/inf/2, paras. 11, 14, 57; unctad, Systems and National Experiences for Protecting Traditional Knowledge, Innovations and Practices, un Doc. td/B/com.1/em.13/2, para. 57, 59; Arantes, p. 145; von Lewinski, p. 525; Kohls, pp. 124, 136; Biber-Klemm et al. in Biber-Klemm/Cottier, pp. 254 f. ‘The purposes of the Registers of Collective Knowledge of Indigenous Peoples shall be the following, as the case may be: (a) to preserve and safeguard the collective knowledge of indigenous peoples and their rights therein’. Intellectual Property and Sustainable Development, wipo Doc. wipo/tk/mct/11/inf/2, paras. 59 ff; Talakai, p. 40.

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− Article 18(2)(a) of the unccd to ‘make inventories of such technology, knowledge, know-how and practices and their potential uses with the participation of local populations’ and − Article 12(1) of the ich Convention to ‘draw up, in a manner geared to its own situation, one or more inventories of the intangible cultural heritage present in its territory’.716 Even so, it is submitted that the operation of databases places additional burdens upon indigenous and local communities because they may be required to take additional steps in order to secure their rights.717 The respective data must be collected and compiled into a database, which must then be maintained. Realistically, for foreign patent offices to take account of traditional knowledge databases, these must be available at least in English, making translations requisite.718 All this raises doubts whether a traditional knowledge database can be run in a cost-effective manner.719 Besides, owing to related registrations, contentions might arise among different communities as to the identity of the original holder.720 This is likely to occur when a database does not only contain knowledge in the public domain, but in fact is used to determine the rightful owner.721 Furthermore, given that databases would entail the documentation of formerly oral traditional knowledge, it is feared that this might actually fuel the misappropriation of traditional knowledge.722 India avoided 716 See also paragraph 12(d) of the Non-legally Binding Authoritative Statement of Principles for a Global Consensus on the Management, Conservation and Sustainable Development of All Types of Forests. 717 Revised Outline of Policy Options and Legal Mechanisms, wipo Doc. wipo/grtkf/ic/9/ inf/5, Annex para. 150; Intellectual Property and Sustainable Development, wipo Doc. wipo/tk/mct/11/inf/2, paras. 92, 94 f; Taubman/Leistner in von Lewinski, p. 148. 718 Article 27.3(b), the Relationship Between the trips Agreement and the cbd, and the Protection of tk, wto Doc. ip/C/W/400/Rev.1, para. 30; unu-ias Report, p. 34; Unnikrishnan/ Suneetha, p. 59; Cottier/Jevtic in Drexl et al., p. 688 footnote 66; Srinivas, p. 98. Cf. India’s Traditional Knowledge Digital Library and the Traditional Chinese Medicine Patent Database. 719 Intellectual Property and Sustainable Development, wipo Doc. wipo/tk/mct/11/inf/2, para. 99; Gubarev, p. 96; Bodeker, p. 804. 720 Cf. basic point 11 of the coica Statement. See Anderson, para. 3.4.2.5; Biber-Klemm et al. in Biber-Klemm/Cottier, pp. 254 f. 721 Cf. Articles 84 f of the Costa Rican Biodiversity Law. See also Twarog/Kapoor, pp. 173, 282. 722 Issues Related to the Extension of the Protection of Geographical Indications, wto Doc. wt/gc/W/633, para. 21; Intellectual Property and Sustainable Development, wipo Doc. wipo/tk/mct/11/inf/2, paras. 55, 103; Varadarajan, pp. 385, 409; Anderson, paras. 3.4.2.5 f; de Werra, p. 163; Shi, p. 60; von Lewinski, pp. 86, 106 f, 148, 512, 524 f; Garcia, p. 25.

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this drawback by restricting access to its Traditional Knowledge Digital Library to patent o­ ffices.723 In the Portuguese system, Article 3(3) of the Decree-Law No. 118/2002 provides for confidentiality at the discretion of ‘[t]he owners of the traditional knowledge’. Another legal consequence one must be aware of when registering traditional knowledge in a database is that the holders deprive themselves of the possibility to patent the knowledge on their own.724 v Conclusions Being an expression of good faith, Article 10bis of the Paris Convention (1967) is able to fill gaps in the established intellectual property system in principle. Having said that, as far as traditional knowledge is concerned, neither defensive nor positive protection can be easily concocted. Unlike core labour standards,725 traditional knowledge as such is not legally protected as of today. As for defensive protection, the solution does not lie in an intricate meshing of patent law and the doctrine of unfair competition, but in patent law itself. As for positive protection, the prohibition of misappropriation would lead to a quasi-intellectual property right through the back door.726 Reading the misappropriation doctrine into paragraph 2 of Article 10bis of the Paris Convention (1967) would go beyond a mere concretization of this norm and add rights and obligations contrary to Articles 3.2.3, 19.2 of the dsu. Whereas it may be possible in other legal regimes, absent authorizing legislation, to develop patentlike sui generis protection, the dsu forecloses such judicial activism under wto law. Otherwise, one would be liable to pre-empt the ongoing negotiations within the framework of the wipo and the trips Council. We therefore find confirmed what Harms observed: ‘The fickleness as to what the concept “property” embraces is responsible for much of the present uncertainty in the cases, of unfair competition flavour, which fall outside statutory protection’.727 Although we focused on traditional knowledge associated with genetic resources, the found results apply, mutatis mutandis, to other forms of traditional knowledge. Consequently, Article 10bis of the Paris Convention (1967) cannot prevent the misappropriation of traditional knowledge. 723 Alikhan/Mashelkar, p. 85. 724 See above p. 142. See also Intellectual Property and Sustainable Development, wipo Doc. wipo/tk/mct/11/inf/2, para. 10; Unnikrishnan/Suneetha, p. 59; von Lewinski, pp. 88, 95 f, 106, 511 f; Ruiz/Lapeña/Clark, p. 780. 725 See above p. 129. 726 Cf. Spence, p. 479. 727 Derek Harms, p. 454.

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Though not per se a category within the meaning of Article 1.2 of the trips Agreement, particular aspects relating to traditional knowledge are protected nevertheless. Thus, the way undisclosed information on traditional knowledge is obtained is covered by Article 39.1 and 2 of the trips Agreement. In addition, paragraph 3 of Article 10bis of the Paris Convention (1967), as incorporated into the trips Agreement by virtue of Article 2.1 of that Agreement, provides protection from what a previous version of the wipo Draft Provisions called ‘other acts of unfair competition’, namely:728 false or misleading representations that a product … is produced or provided with the involvement or endorsement of traditional knowledge holders, … acts of such a nature as to create confusion with a product or service of traditional knowledge holders; and false allegations in the course of trade which discredit the products or services of traditional knowledge holders. The first group (‘false or misleading representations’) is included because the scope of Article 10bis(3) No. 3 of the Paris Convention (1967) comprises ‘the manufacturing process’.729 A commodity wrongly labelled ‘Aboriginal-style’ would be a case in point.730 However, unlike the other two groups, and contrary to the wipo Draft Provisions, services are not covered.731 This becomes clear from its wording: whereas No. 3 of Article 10bis(3) of the Paris Convention (1967) is limited to ‘goods’,732 services can be subsumed under the term ‘industrial or commercial activities’ in Article 10bis(3) Nos. 1 and 2 of the Paris Convention (1967).733 Because No. 3 is also restricted in terms of the items as to which misleading is prohibited, ‘false or misleading representations … that the commercial exploitation of products or services benefits holders of traditional knowledge’, another practice cited by the wipo Draft Provisions, are not encompassed. This case does not fall under any of the subjects enumerated in No. 3 of Article 10bis(3) of the Paris Convention (1967). The list is exhaustive 728 Article 1(4) of the wipo Draft Provisions in Revised Objectives and Principles, wipo Doc. wipo/grtkf/ic/18/5, Appendix pp. 96 f. 729 Cf. Draft Gap Analysis, wipo Doc. wipo/grtkf/ic/13/5(b) Rev., Annex i para. 46. 730 The International Dimension, wipo Doc. wipo/grtkf/ic/6/6, para. 29 second bullet; wipo Publication No. 920, p. 18; Janke, p. 38. See also Taubman/Leistner in von Lewinski, p. 109. 731 Pflüger in Cottier/Véron, Paris Convention, art. 10bis, pp. 303 f; Micklitz, p. 468; Reger, p. 22. 732 Beater, Unlauterer Wettbewerb, § 4 para. 367; Pflüger, p. 143; Henning-Bodewig, Unfair Competition Law, p. 20. 733 wipo, Protection Against Unfair Competition, para. 42; Pflüger, p. 139.

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and cannot be enlarged by way of interpretation. It is important to note that the protection of traditional knowledge, as described here, is not premised upon a right to exclude others, nor does it make a point as to the ownership of traditional knowledge. In summary, Article 10bis of the Paris Convention (1967), as incorporated into the trips Agreement, offers supporting protection against confusion, discrediting, and misleading the public. Traditional knowledge as such, however, cannot be protected on that basis. Article 10bis of the Paris Convention (1967) does not grant exclusive rights, and Articles 3.2.3, 19.2 of the dsu preclude us from interpreting it to that effect. We did not deal specifically with benefit-sharing here, because a benefitsharing mechanism is contingent upon the guarantee of positive protection for traditional knowledge. Access control lays the ground therefor. Some indigenous peoples disagree and demand benefit-sharing even for traditional knowledge that is not under their authority.734 In other words, they attempt to disconnect the obligation of benefit-sharing from the principle of prior informed consent. This, however, would contradict the regulatory approach in the cbd which has the same triad of objectives (conservation – use – benefit sharing) in relation to genetic resources.735 Additionally, recital 8 of the Preamble to the Nagoya Protocol explicitly acknowledges the link between access requirement and benefit-sharing. Within the cbd framework, the protection of genetic resources, ensured by the recognition of ‘the sovereign rights of States over their natural resources’ in Articles 3 and 15(1) and the ensuing right of consent in Article 15(5), provides the basis for justifying a benefit-sharing system, as spelled out in Article 15(7). The same holds true for traditional knowledge protection.736 This reading does not run counter to Article 15(1)(c) of the icescr737 because the right proclaimed therein, pertaining inter alia to

734 Cf. Article 4.1 of the Suva Statement on Indigenous Peoples’ Knowledge and Intellectual Property Rights: ‘[We] Seek repatriation of indigenous peoples’ resources already held in external collections, and seek compensation and royalties from commercial developments resulting from these resources.’ See also Revised Objectives and Principles, wipo Doc. wipo/grtkf/ic/18/5, Annex pp. 61 f. 735 Article 1 of the cbd. See Ebermann, pp. 27 ff. 736 Article 16(1) of the Nagoya Protocol. 737 ‘The States Parties to the present Covenant recognize the right of everyone: … (c) To benefit from the protection of the moral and material interests resulting from any scientific, literary or artistic production of which he is the author.’

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the material interest of ‘the author’, is confined to ‘the creator’ of a scientific production, i.e. the person that has per se the authority to dispose of it.738 In order to afford comprehensive protection for traditional knowledge internationally and to assure legal certainty, an additional legal instrument is needed, such as a specific traditional intellectual property right.739 For the non-commercial use of traditional knowledge, Abrell, Bavikatte and Cocchiaro propose a commons licence.740 In my view, Sections 6 and 7 of the Pacific Model Law present a good example of how to accommodate the different interests involved:741 6 Holders of traditional cultural rights. The traditional owners of traditional knowledge or expressions of culture are the holders of the traditional cultural rights in the traditional knowledge or expressions of culture. 7

Meaning of traditional cultural rights. (1) Traditional cultural rights are the rights set out in subsections (2) and (3). (2) The following uses of traditional knowledge or expressions of culture require the prior and informed consent of the traditional owners in accordance with section 23(1) or 25(5): (a) to reproduce the traditional knowledge or expressions of culture; (b) to publish the traditional knowledge or expressions of culture; (c) to perform or display the traditional knowledge or expressions of culture in public;

738 General Comment No. 17 (2005), un Doc. E/C.12/gc/17, paras. 7 f. 739 Lukose, pp. 324 ff; Cottier/Jevtic in Drexl et al., p. 685; Cottier/Panizzon in Biber-Klemm/ Cottier, pp. 220 ff; Biber-Klemm in Twarog/Kapoor, pp. 100 ff; Janke, p. 141 para. 11.5; Posey/ Dutfield, pp. 95 ff. See also General Comment No. 17 (2005), un Doc. E/C.12/gc/17, para. 9; Le Gall, p. 95. Critically, L.T.C. Harms, pp. 503 f; Krattiger et al., p. 174. Against a solution based on intellectual property, Ebermann, pp. 143, 157 f, 175 f, 181 f (endorsing liability rules instead); Salako, p. 331 (endorsing the enforcement of customary rules through human rights law instead). 740 Abrell/Bavikatte/Cocchiaro in gtz, pp. 331 ff. 741 For a critical review, see Forsyth in Drahos/Frankel, pp. 198 ff.

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(d) to broadcast the traditional knowledge or expressions of culture to the public by radio, television, satellite, cable or any other means of communication; (e) to translate, adapt, arrange, transform or modify the traditional knowledge or expressions of culture; (f) to fixate the traditional knowledge or expressions of culture through any process such as making a photograph, film or sound recording; (g) to make available online or electronically transmit to the public (whether over a path or a combination of paths, or both) traditional knowledge or expressions of culture; (h) to create derivative works; (i) to make, use, offer for sale, sell, import or export traditional knowledge or expressions of culture or products derived therefrom; (j) to use the traditional knowledge or expressions of culture in any other material form; if such use is a non-customary use (whether or not of a commercial nature). (3) To avoid doubt, the traditional owners are entitled to use traditional knowledge or expressions of culture in the ways mentioned in subsection (2) in the exercise of their traditional cultural rights. (4) Subsection (2) does not apply to the use of traditional knowledge or expressions of culture for any of the following: (a) face to face teaching; (b) criticism or review; (c) reporting news or current events; (d) judicial proceedings; (e) incidental use. (5) A user of traditional knowledge or expressions of culture mentioned in paragraphs (4)(a) to (d) must make sufficient acknowledgement of the traditional owners by mentioning them and/or the geographical place from which the traditional knowledge or expressions of culture originated. Despite their sometimes fundamental reservations about individual property,742 indigenous peoples do not seem to be averse to an intellectual 742 Curci, p. 92; Garcia, pp. 18 f; Haugen, p. 664; Subbiah, p. 532.

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property solution.743 The same is true of developing countries.744 It is also echoed in the second sentence of Article 31(1) of the drips.745 We can find a similar situation regarding geographical indications: − Article 22 of the trips Agreement grants relative protection on the basis of unfair competition law, while − Article 23 of that Agreement waives the requirement of dishonest behaviour and offers, as the title indicates, additional protection for wines and spirits.746 This raises the question of whether the custodianship of traditional knowledge is fit to be turned into a proprietary right. As a preliminary point, it is 743 Cf. the Kimberley Declaration: ‘our collective intellectual property rights must be guaranteed and ensured’; the Indigenous Peoples’ Statement on trips: ‘we reiterate our commitment to sustain our struggle to have our rights to our intellectual and cultural heritage and our lands and resources promoted and protected’; Article 44 of the Charter of the Indigenous-Tribal Peoples of the Tropical Forests: ‘Since we highly value our traditional technologies and believe that our biotechnologies can make important contributions to humanity, including developed countries, we demand guaranteed rights to our intellectual property, and control over the development and manipulation of this knowledge’; Article 2.5 of the Mataatua Declaration: ‘In the development of policies and practices, States, National and International Agencies must … Develop in full co-operation with indigenous peoples an additional cultural and intellectual property rights regime incorporating the following: 1. collective (as well as individual) ownership and origin; 2. retroactive coverage of historical as well as contemporary works; 3. protection against debasement of culturally significant items; 4. cooperative rather than competitive framework; 5. first beneficiaries to be the direct descendants of the traditional guardians of that knowledge; 6. multi-generational coverage span.’ (original emphasis). See also Varadarajan, p. 418; Anderson, para. 1.1.2; Sunder, p. 112; Janke, pp. 43 ff (speaking for Indigenous Australian people). Contra Tobin, Indigenous Peoples, Customary Law and Human Rights, p. 167; Carbone in Bubela/Gold, pp. 344 ff. 744 Review of the Provisions of Article 27.3(b), wto Doc. ip/C/W/165, para. 10; Review of Implementation of the Agreement under Article 71.1, wto Doc. ip/C/W/166, para. 8; Review of Article 27.3(b), wto Doc. ip/C/W/228, para. 34; Article 27.3(b), Relationship Between the trips Agreement and the cbd and Protection of Traditional Knowledge and Folklore, wto Doc. ip/C/W/441/Rev.1, para. 2. 745 See above p. 206. 746 unctad-ictsd Resource Book, p. 296; Gervais in Drahos/Frankel, pp. 130 f; Correa/Mashayekhi/Tuerk, p. 35; Correa/Yusuf, pp. 159, 174 f; Gervais, ‘Agreement on Trade-Related Aspects of Intellectual Property Rights (1994)’ in mpepil, para. 28; Stoll/Busche/Arend, Article 22.2 para. 4, Article 23 paras. 1, 3, 5; Waggoner, pp. 576 f; Biber-Klemm/Cottier, pp. 77, 231, 249; Gopalakrishnan/Nair/Babu, pp. 15 f.

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established that Article 17 of the udhr (‘right to own property’) encompasses intellectual property.747 According to Baroness Hale in Douglas v. Hello!: The essential feature of property is that it has an existence independent of a particular person: it can be bought and sold, given and received, bequeathed and inherited, pledged or seized to secure debts, acquired (in the olden days) by a husband on marrying its owner.748 This feature would be given with respect to traditional knowledge, as it can be inherited and so forth.749 Thailand, for instance, implemented a traditional Thai medicinal ip right.750 However, national attempts to tackle the problem are limited to the respective jurisdiction.751 In many cases the appropriator comes from another country, which is why international action is required.752 A corollary of this would be that the indigenous perspective is supplanted by a universal one because the customary laws managing traditional knowledge would become subject to the trips Agreement or the wipo-administered treaty to be negotiated.753 Another connected question is whether traditional intellectual property rights would conflict with Article 12.3(d) of the itpgrfa.754 The provision reads as follows: Recipients shall not claim any intellectual property or other rights that limit the facilitated access to the plant genetic resources for food and agriculture, or their genetic parts or components, in the form received from the Multilateral System. It bears noting that indigenous and local communities, the intended beneficiaries of traditional intellectual property rights, are not recipients of the M ­ ultilateral System but designated providers to the System in terms of Article 11.3 of the itpgrfa because they are ‘natural … persons … who hold 747 748 749 750 751 752 753 754

Schuler, p. 760. United Kingdom House of Lords, Douglas v. Hello!, para. 309. Ebermann, p. 37. Contra the Brazilian Socio-Environmental Institute in Arantes, p. 154. Cf. Sections 14 ff of the Act on Protection and Promotion of Traditional Thai Medicinal Intelligence. Biber-Klemm in Twarog/Kapoor, p. 101. See above p. 159. See also Cottier/Panizzon, pp. 386, 398; Bodeker, p. 812. Cf. Arantes, p. 182. Cottier/Panizzon, p. 378.

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plant genetic resources for food and agriculture listed in Annex I’.755 Article 12.3(d) of the itpgrfa, therefore, does not concern them. Moreover, intellectual property over traditional knowledge associated with genetic resources would not limit the facilitated access to the known and listed resources, as the power of disposition conferred by a traditional intellectual property right would be confined to traditional knowledge and would not encompass the plant genetic resources contained in the Multilateral System. These belong to the public domain pursuant to the first sentence of Article 11.2 of the itpgrfa. A concluding point I would like to emphasize is the urgency of a common strategy by indigenous peoples.756 This could considerably increase their chances to achieve international sui generis protection for traditional knowledge. That is, indigenous peoples must reach agreement on their goals with a view to unifying and maximizing their lobbying power. Simultaneously, they need to build up the infrastructure necessary to administer their rights.757 Should traditional intellectual property rights come into being, it must be ensured that the right holders have the capacity to avail themselves of them, including the capacity to handle applications to use traditional knowledge.758 One possibility, already envisaged by Cottier and Panizzon,759 would be the creation of focal points in which indigenous and local communities participate and which represent the interests of the right holders. These focal points could assume the function of collecting agencies in the future.760 European lawyers must have regard to the European dimension too, wherefore we will examine in the next chapter the impact of Article 10bis of the Paris Convention (1967) on European Union law. The most significant impact would be if it had direct effect.

755 See also Article 5.1(d) of the itpgrfa (‘Promote in situ conservation of wild crop relatives and wild plants for food production, including in protected areas, by supporting, inter alia, the efforts of indigenous and local communities). 756 Cf. Anderson, para. 4.3.1. Contra Taubman/Leistner in von Lewinski, p. 179, who advocate a ‘pluralistic approach’. 757 Muńoz Téllez/Zografos Johnsson in Gervais, p. 316; Oli/Sharma in gtz, p. 226. 758 Cf. wipo Publication No. 768, Part 2, p. 96; Tobin in Kamau/Winter, p. 113. 759 Cottier/Panizzon, p. 398. 760 Cf. Kiene, The Legal Protection of Traditional Knowledge in the Pharmaceutical Field, pp. 185 f; Srinivas, p. 100; Biber-Klemm et al. in Biber-Klemm/Cottier, pp. 264 ff; Kumar in Twarog/Kapoor, p. 302. Critically, von Lewinski, p. 526.

chapter 5

Article 10bis and the European Union i Introduction Unlike its Member States, the European Union1 has not joined the Paris Union. As a consequence, it is bound by Article 10bis of the Paris Convention (1967) only through its adherence to the trips Agreement.2 By virtue of Article 2.1 of that Agreement, the Members are obligated to assure protection against unfair competition.3 From the point of view of wto law, it is immaterial whether the European Union or its Member States perform the obligations arising out of Article 2.1.4 Both the European Union as well as the eu Member States are members of the wto,5 and therefore jointly obliged vis-à-vis the other Members to give effect to the provisions of the trips Agreement.6 Since ‘the wto Agreement was concluded by the Community and ratified by its Member States without any allocation between them of their respective obligations towards the other contracting parties’,7 these other contracting parties are relieved from the necessity to follow up on an internal shift of competences, which would constitute a res inter alios acta.8 The process of European integration is progressive.9 This implies that the internal responsibility for e.g. unfair 1 Pursuant to Article 1(3) of the Treaty on European Union, the European Union replaced and succeeded the European Community. For reasons of simplicity, only the designation ‘European Union’, and not the former title ‘European Communities’, will be used, even when referring to older texts. 2 Drexl in Säcker/Rixecker/Oetker, IntLautR, para. 33, IntImmGR, para. 84; Pflüger in Hilty/ Henning-Bodewig, Lauterkeitsrecht und Acquis Communautaire, p. 65 footnote 2; Haas, p. 77. 3 See above p. 38. 4 Cf. European Court of Justice, Judgment, Kupferberg, para. 12. 5 Article xi:1 of the wto Agreement. 6 Articles 1.1.1 of the trips Agreement, ii:2 of the wto Agreement. See Schmalenbach in Calliess/Ruffert, aeuv Art. 216 para. 7; Hilpold, pp. 137, 150; Steinberger, pp. 848, 854 f, 861 f; Groh/Wündisch, pp. 500 f. Contra Ruttley/Weisberger in Macrory/Appleton/Plummer, vol. i, p. 1480. 7 European Court of Justice, Judgment, Hermès, para. 24; European Court of Justice, Judgment, Merck, para. 32. 8 Möldner, ‘European Community and Union, Mixed Agreements’ in mpepil, para. 35; Khan in Geiger/Khan/Kotzur, aeuv Art. 216 para. 15; Hilpold, pp. 145 f, 149 f. 9 Micklitz in Heermann/Hirsch, eg D para. 14.

© koninklijke brill nv, leiden, ���6 | doi 10.1163/9789004313477_006

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­competition law can be today a national competence and tomorrow a European one. According to the principle of pacta sunt servanda in terms of Article 26 of the Vienna Convention, a redistribution of competences within the European Union would be without prejudice to the wto obligations entered into by the European Union and the Member States together.10 As for their fulfilment, the Union and the Member States are committed to one another by the principle of sincere cooperation within the meaning of Article 4(3) of the Treaty on European Union (the ‘teu’), and externally by virtue of Article xxiv:12 of the gatt 1994.11 The observance of Article xxiv:12 of the gatt 1994 within the European Union is ensured by Article 216(2) of the tfeu.12 In Kadi, the European Court of Justice described the legal situation from the perspective of European law: an international agreement cannot affect the allocation of powers fixed by the Treaties or, consequently, the autonomy of the Community legal system.13 Article 207(6) of the tfeu affirms this with regard to the common commercial policy: The exercise of the competences conferred by this Article in the field of the common commercial policy shall not affect the delimitation of competences between the Union and the Member States … The research question investigated in this Part is whether Article 10bis of the Paris Convention (1967), as incorporated into the trips Agreement by virtue of Article 2.1 of that Agreement, has direct effect in European Union law. The European Court of Justice observed in Develey v. ohim that ‘the direct effect of the Paris Convention could flow from the cross-reference made to it by Article 2(1) of the trips Agreement’.14 At the same time, the Court made it clear that this would require the trips Agreement itself to be directly applicable.15 10 11

12 13 14 15

Khan in Geiger/Khan/Kotzur, aeuv Art. 216 para. 15. European Court of Justice, Judgment, mox Plant, para. 85; European Court of Justice, Judgment, Commission v. France, para. 26; Schmalenbach in Calliess/Ruffert, aeuv Art. 216 paras. 6, 23; Khan in Geiger/Khan/Kotzur, aeuv Art. 216 para. 16; Hilpold, pp. 217 ff. Möldner, ‘European Community and Union, Mixed Agreements’ in mpepil, para. 33. European Court of Justice, Judgment, Kadi, para. 282. European Court of Justice, Judgment, Develey v. ohim, para. 43. European Court of Justice, Judgment, Develey v. ohim, para. 43.

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Much has been said about the possible direct effect of wto law in general but, as will be shown hereinafter, it is the individual norm that matters. Because wto law itself does not prescribe a direct effect, it is incumbent upon the Members to decide in accordance with their own constitutional law whether or not to concede it.16 In this respect, too, the third sentence of Article 1.1 of the trips Agreement ensuring the regulatory freedom of the Members as to the implementation method applies.17 Germany, for instance, explicitly acknowledged the direct applicability of the trips Agreement (barring, of course, the enforcement rules in Part iii of that Agreement).18 Likewise, Switzerland considers particular Articles of the trips Agreement as being directly applicable.19 Concerning the terminology, the following distinctions must be made: ‘Direct effect’ purports according to the panel in us – Section 301 Trade Act that ‘obligations addressed to States are construed as creating legally enforceable rights and obligations for individuals.’20 The doctrine of direct effect presupposes that a Member’s national constitution provides for the application of international law without need for a national act of transformation; as a result, international law keeps its nature as international in the Member’s constitutional order.21 Direct effect always relates to a specific norm of international

16

17

18

19 20 21

Panel Report, us – Section 301 Trade Act, para. 7.72 footnote 661; European Court of Justice, Judgment, fiamm, para. 108; Ruiz Fabri, p. 154; Cottier in Narlikar/Daunton/Stern, p. 613; Stoll/Busche/Arend, Introduction iii para. 1, Article 2 para. 10; Kaiser, ‘Direct Applicability’ in mpepil, para. 6; Pflüger, pp. 60 f; Hilpold, p. 289. unctad-ictsd Resource Book, pp. 17, 26; Niemann, p. 233; Fromm-Russenschuck/Duggal, p. 141; Duggal, ‘Die unmittelbare Anwendbarkeit der Konventionen des internationalen Urheberrechts am Beispiel des trips-Übereinkommens’, p. 106. See also European Court of Justice, Judgment, Kupferberg, para. 18. Deutscher Bundestag [German Parliament], Denkschrift, Drucksache 12/7655 (neu), pp. 345, 347. It should be stressed in this context that Germany is a dualist system, cf. Articles 25 and 59(2) of the German Basic Law. See also German Constitutional Court, Order, Görgülü, para. 34. Botschaft zur Genehmigung der gatt/wto-Übereinkommen, Schweizerisches Bundes­ blatt 1994 iv, p. 287. See also Diebold/Oesch, pp. 1529 f; Cottier in Monti et al., p. 120. Panel Report, us – Section 301 Trade Act, para. 7.72. See also Cottier in Monti et al., p. 110. Kaiser, ‘Direct Applicability’ in mpepil, paras. 6, 8; Cottier/Jevtic in Drexl et al., p. 678; Elfring/Arend in Stoll/Busche/Arend, Article 1 para. 4; Henning-Bodewig in Hilty/HenningBodewig, Law Against Unfair Competition, p. 54 footnote 3, p. 59. Reverse terminology by Bossche/Zdouc, p. 66 footnote 346.

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law, and is composed of direct applicability and invocability.22 In addition, the European Court of Justice scrutinizes the ‘nature and structure’ of the entire treaty containing the respective norm.23 The term ‘direct invocability’ denotes the finding that an individual can invoke a norm of international law before a national court or agency.24 For a norm of international law to be relied upon in this way, the norm must have the character of a proposition of private law, e.g. create private rights.25 When a national court can resort to an international norm with a view to reviewing the legality of a national measure, we call it ‘direct applicability’.26 It is also referred to as ‘justiciability’ or ‘self-executiveness’ in the United States.27 In order for a national court to apply a norm of international law as if it were domestic law, the wording of the norm needs to be sufficiently precise and unconditional, i.e. the norm must contain a clear legal prescription so that subsequent concretization by the national legislature is not needed.28 This is a practical issue and different from the aforementioned act of transformation. In sum, direct effect is contingent upon − the norm itself, − the national constitutional order, and − according to the European Court of Justice, the international treaty containing said norm. 22

23

24

25 26 27

28

European Court of Justice, Judgment, Racke v. Hauptzollamt Mainz, para. 32; Elfring/ Arend in Stoll/Busche/Arend, Article 1 para. 5; van den Broek in Wolfrum/Stoll/Kaiser, Article xvi wto Agreement para. 20; Fromm-Russenschuck/Duggal, pp. 106 f, 131; Jackson, ‘Status of Treaties in Domestic Legal Systems’, pp. 317 f. European Court of Justice, Judgment, fiamm, paras. 110 f; European Court of Justice, Judgment, Kupferberg, paras. 22 f; Bonafé in Cannizzaro/Palchetti/Wessel, p. 235; Jacobs in Dashwood/Maresceau, pp. 31 ff. Stoll/Busche/Arend, Introduction iii paras. 34, 62, Article 1 para. 5; Kaiser, ‘Direct Applicability’ in mpepil, para. 2; van den Broek in Wolfrum/Stoll/Kaiser, Article xvi wto Agreement para. 26. Brand in Stoll/Busche/Arend, Article 2 para. 10. Gáspár-Szilágyi, p. 188. Cottier in Narlikar/Daunton/Stern, pp. 623 f; Cottier, ‘International Trade Law’, pp. 324 f; Jackson/Davey/Sykes, pp. 110, 116; Jackson, ‘Status of Treaties in Domestic Legal Systems’, pp. 310, 317 f, 320. See also Supreme Court of United States, Medellín v. Texas, pp. 1356 f. European Court of Justice, Judgment, fiamm, para. 110; European Court of Justice, Judgment, Dior, para. 42; van Waeyenberge/Pecho, p. 754; Cottier/Jevtic in Drexl et al., p. 679; Stoll/Busche/Arend, Introduction iii para. 16, Article 1 para. 5, Before Articles 22–24 para. 84; Kaiser, ‘Direct Applicability’ in mpepil, para. 1.

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Requirements Relating to the Norm

The prevailing view under the Paris regime considers Article 10bis of the Paris Convention (1967), including its paragraph 2, as sufficiently precise to have direct effect.29 The use of uncertain legal concepts, such as ‘honest’, does not militate against this, given that general clauses in national unfair competition systems are not less indeterminate but nevertheless fully operational.30 The question arises whether the incorporation into the wto regime has changed something in this regard. Notably the invocability is debatable because the incorporating Article 2.1 of the trips Agreement addresses only the Members (‘Members shall comply with …’).31 As a reference norm, Article 2.1 makes no point on the personal scope of protection, nor does it contain any entitlements. The actual regulatory content is to be found in the provisions referred to. We noted above that the entire Paris acquis has been incorporated into the trips Agreement by virtue of that provision.32 This includes the capacity for direct effect.33 It bears emphasizing that, under the Paris regime, it is not mandatory to grant direct effect.34 Hence, an obligation to this effect does not belong to the Paris acquis.35 In Van Gend & Loos, the European Court of Justice acknowledged the direct invocability of Article 12 of the Treaty of Rome, although this Article likewise only addressed the Member States (‘Member States shall refrain from …’).36 In the same vein, paragraph 1 of Article 10bis of the Paris Convention (1967) addresses

29

30 31 32 33 34 35 36

Henning-Bodewig in Henning-Bodewig, International Handbook on Unfair Competition, § 2 para. 23; Pflüger in Hilty/Henning-Bodewig, Lauterkeitsrecht und Acquis Communautaire, pp. 75 f; Brand in Stoll/Busche/Arend, Article 2 paras. 7, 12; Drexl in Säcker/Rixecker/Oetker, IntLautR, para. 29; Beater, Unlauterer Wettbewerb, § 4 para. 362; Schricker in Großfeld et al., pp. 988 ff; Götting, Wettbewerbsrecht, § 6 para. 6; Micklitz, p. 467; Reger, pp. 17, 212; Bodenhausen, p. 143. Contra v. Gamm in Niederleithinger/Werner/Wiedemann, p. 204; Miosga, pp. 107 f. Cottier, ‘International Trade Law’, pp. 324 f; Cottier/Jevtic in Drexl et al., p. 680; Schricker in Großfeld et al., p. 989; Reger, p. 212. See above p. 68. Cf. Reger, p. 296. See above p. 38. Brand in Stoll/Busche/Arend, Article 2 paras. 6, 10 f, Article 9 para. 13. Cf. Pflüger, p. 22. Contra Brand in Stoll/Busche/Arend, Article 2 para. 6, Article 9 para. 15. European Court of Justice, Judgment, Van Gend & Loos, Summary para. 5. See also Errico, pp. 182 f.

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the ‘countries of the Union’ or the wto Members, if read in conjunction with Article 2.1 of the trips Agreement.37 Consequently, the formulation of a norm as a state obligation is no obstacle to its direct invocability.38 The capacity of Article 10bis of the Paris Convention (1967) to be directly invocable is thus not lost ­under the wto regime.39 The same holds true for its direct applicability.40 As the European Court of Justice held in Schieving-Nijstad, ‘[t]he primary objective of trips is to strengthen and harmonise the protection of intellectual property on a worldwide scale’.41 The opposite view42 would thwart this intent of the Members to increase the level of industrial property protection.43 Incidentally, the German Federal Court of Justice deemed Article 9 of the trips Agreement, which is equivalent to Article 2.1 of that Agreement in terms of its wording and function,44 to be directly applicable.45 In the final analysis, Article 10bis of the Paris Convention (1967) as such has the makings of direct effect. In further consequence, it depends on national constitutional requirements whether direct effect is granted as well as on the nature and structure of the trips Agreement, provided that one accepts the requirement that the whole agreement must have been designed with a view to direct effect. It goes without saying that the minimum protection, as laid down in Article 10bis of the Paris Convention (1967), is only of subsidiary ­importance so long as the domestic level of protection is higher.46 It only ­becomes pertinent if the domestic level should ever fall below this mandatory threshold.47

37 38

Brand in Stoll/Busche/Arend, Article 2 para. 5. See above p. 53. Drexl in Säcker/Rixecker/Oetker, IntLautR, para. 29 footnote 71, IntImmGR, para. 63; Klass in Teplitzky/Peifer/Leistner, Einl D paras. 60 f. Contra Reger, p. 296, but see p. 94. 39 Brand in Stoll/Busche/Arend, Article 2 para. 10; Cottier/Nadakavukaren Schefer, p. 104. 40 Beater, Unlauterer Wettbewerb, § 4 para. 372; Pflüger, p. 108; Brand in Stoll/Busche/Arend, Article 2 para. 10; Haas, p. 210. 41 European Court of Justice, Judgment, Schieving-Nijstad, para. 36 (citation omitted), confirmed in European Court of Justice, Judgment, Daiichi Sankyo, para. 58. See also recital 1 of the Preamble to the trips Agreement. 42 Reger, p. 296. 43 Cf. Article 2.2 of the trips Agreement. Brand in Stoll/Busche/Arend, Article 2 para. 6, Article 9 para. 15. 44 Brand in Stoll/Busche/Arend, Article 2 para. 6. 45 Bundesgerichtshof, Kopienversanddienst, para. 67. 46 Drexl in Säcker/Rixecker/Oetker, IntLautR, para. 29. 47 Brand in Stoll/Busche/Arend, Article 2 para. 33. See above p. 59.

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Constitutional Requirements

It follows from the foregoing that a direct effect of international law is only conceivable in a monist system,48 as in Argentina,49 Austria50 or France.51 The European Union adheres to monism too.52 This becomes apparent from Article 216(2) of the tfeu,53 which provides as follows: Agreements concluded by the Union are binding upon the institutions of the Union and on its Member States. As opposed to a dualist system, a monist system does not require an act that transforms international law into domestic law.54 On this account, the preamble to Council Decision 94/800/ec of 22 December 1994 concerning the conclusion on behalf of the European Community, as regards matters within its competence, of the agreements reached in the Uruguay Round multilateral negotiations rejecting the direct invocability of wto law55 is immaterial from a legal point of view.56 Consequently, the issue whether an operative provision would have been necessary to achieve the desired result57 can be left open. Another 48

Schweizerischer Bundesrat, Verhältnis von Völkerrecht und Landesrecht, p. 2264; Kaiser in Stoll/Busche/Arend, Introduction iii para. 7; Cottier/Jevtic in Drexl et al., p. 678; Niemann, p. 226; Jackson, ‘Status of Treaties in Domestic Legal Systems’, pp. 314, 338. 49 Sections 31, 43 of the Constitution of the Argentine Nation. See also unctad-ictsd Resource Book, p. 31. 50 Articles 9(1), 145 of the Federal Constitutional Law. 51 Article 55 of the French Constitution of 1958. See also Schweizerischer Bundesrat, Verhältnis von Völkerrecht und Landesrecht, pp. 2292 f. 52 European Court of Justice, Judgment, Racke v. Hauptzollamt Mainz, para. 46; European Court of Justice, Judgment, Kupferberg, para. 13; Lenaerts in Govaere/Lannon/Van Elsuwege/Adam, p. 45; von Bogdandy/Smrkolj, ‘European Community and Union Law and International Law’ in mpepil, para. 9; Cottier in Narlikar/Daunton/Stern, p. 616. 53 Schmalenbach in Calliess/Ruffert, aeuv Art. 216 paras. 28, 31 f. 54 Schweizerischer Bundesrat, Verhältnis von Völkerrecht und Landesrecht, p. 2285; Royla, p. 497; Ott, p. 57; Jackson, ‘Status of Treaties in Domestic Legal Systems’, p. 315. 55 ‘Whereas, by its nature, the Agreement establishing the World Trade Organization, including the Annexes thereto, is not susceptible to being directly invoked in Community or Member State courts’. 56 Opinion of Advocate General Saggio, Portugal v. Council, para. 20; Hahn in Calliess/ Ruffert, aeuv Art. 207 para. 169; Hörmann in Hilf/Oeter, § 8 para. 36 footnote 54; Hilpold, p. 471; Hermes, trips im Gemeinschaftsrecht, p. 190; Reger, p. 87 footnote 138; Meng in Beyerlin et al., p. 1078. Contra Weiß, p. 286. 57 Cf. unctad-ictsd Resource Book, p. 34; Bronckers in Kuijper/Bronckers, p. 1345.

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­corollary is the strengthening of the position of the European Court of Justice in matters pertaining to direct effect.58 Kuijper criticizes this and instead wants to accentuate the role of the European legislature.59 But the fact remains that the legislative as well as the judicial branch are bound to European primary law which opted for a monist system. In the case of the European Union, there are two constitutional layers to consider, viz. the European one and that of the Member States. This raises the question of which is determinative of direct effect. The European Court of Justice clarified that it can only decide on this question ‘within the framework of its jurisdiction under the … Treaty’.60 By virtue of Article 216(2) of the tfeu, the trips Agreement, along with its incorporated provisions, forms ‘an integral part of the Union legal order’,61 and as such partakes in the primacy of European Union law over the law of Member States.62 From this, the European Court of Justice reasoned that it has jurisdiction to define the obligations which the Community has thereby assumed and, for that purpose, to interpret the provisions of the trips Agreement.63 In Kupferberg, the Court declared itself competent to give a ruling on the direct effect of free trade agreements so as ‘to ensure their uniform application throughout the Community’.64 However, the free trade agreement at issue in the Kupferberg case was solely concluded by the European Economic Community,65 whereas the wto Agreement (including the trips Agreement)66 was signed by the Member States as well.67 This begs the question of whether 58 59 60 61

62 63 64 65 66 67

Cf. European Court of Justice, Judgment, Kupferberg, para. 17. Kuijper in Kuijper/Bronckers, p. 1321. European Court of Justice, Judgment, fiamm, para. 108; European Court of Justice, Judgment, Portugal v. Council, para. 34. European Court of Justice, Judgment, Società Consortile Fonografici, paras. 38 f; LauberRönsberg in Ahlberg/Götting, UrhG § 121, para. 27; Drexl in Säcker/Rixecker/Oetker, IntImmGR, para. 89. Cf. Declaration 17 to the Treaty of Lisbon. See Martines, p. 133. European Court of Justice, Judgment, Merck, para. 33. See also Lenaerts in Govaere/Lannon/Van Elsuwege/Adam, p. 46; Jacobs in Dashwood/Maresceau, p. 14. European Court of Justice, Judgment, Kupferberg, para. 14. European Court of Justice, Judgment, Kupferberg, para. 1. Cf. Article ii:2 of the wto Agreement. European Court of Justice, Judgment, Merck, para. 32; European Court of Justice, Judgment, Dior, para. 33.

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that makes a difference. Article 207(6) of the tfeu makes clear that the external competence to negotiate and conclude a treaty must be distinguished from the internal competence to implement it.68 It further forecloses an inverse aetr judgment, i.e. parallelism of internal with external competence.69 On the one hand, the exclusive competence for the common commercial policy lies with the European Union pursuant to Articles 3(1)(e), 207 of the tfeu. As a result, the European Commission acts on behalf of the eu Member States before the wto.70 Since the entry into force of the Treaty of Nice in 2003, the common commercial policy embraces the remit of the trips Agreement, cf. ex Article 133(5).71 The Treaty of Amsterdam still foresaw an enabling clause (‘may’) to ‘extend the [common commercial policy] to international negotiations and agreements on … intellectual property’, which was never utilized.72 The Treaty of Lisbon subsequently streamlined this policy as regards ‘the commercial aspects of intellectual property’ in Article 207(1) and (4) of the tfeu, in particular with respect to the majority requirements in the Council.73 Given that the European Union has exclusive competence in the field of the common commercial policy, the power to grant direct effect to provisions of the trips Agreement would be completely attributed to the European Court of Justice, if it was the external competence that mattered.74 On the other

68 69

70 71

72

73 74

Cf. European Court of Justice, Judgment, European Parliament v. Council, para. 24. See also European Court of Justice, Opinion 1/94, Summary para. xviii. In the aetr judgment, paras. 15 ff, the European Court of Justice held that ‘the Community’s authority to enter into international agreements’ (para. 15), i.e. its external competence, may flow from the exercise of internal powers, cf. now Articles 3(2) Var. 3, 216(1) Var. 4 of the tfeu. See also Khan in Geiger/Khan/Kotzur, aeuv Art. 216 para. 6; Calliess/ Ruffert, aeuv Art. 207 para. 65, Art. 216 para. 10; Osteneck, p. 177. Contra Lorenzmeier in Grabitz/Hilf/Nettesheim, aeuv Art. 218 paras. 19, 54; Hilpold, p. 140. Frid de Vries, ‘European Community, Membership in International Organizations or Institutions’ in mpepil, para. 36. ‘Paragraphs 1 to 4 shall also apply to the negotiation and conclusion of agreements in the fields of trade in services and the commercial aspects of intellectual property, insofar as those agreements are not covered by the said paragraphs and without prejudice to paragraph 6 …’ Hilpold, p. 240; Stoll/Raible in Prieß/Berrisch, B.iii. para. 180; Cremona in Herrmann/ Terhechte, p. 247; Holdgaard, p. 23. Contra Bourgeois, pp. 154 f, who contends that the external competence for intellectual property has been transferred to the European Union with the entry into force of the Treaty of Amsterdam. Hahn in Calliess/Ruffert, aeuv Art. 207 paras. 13 ff. In this sense, Drexl in Säcker/Rixecker/Oetker, IntImmGR, paras. 67, 98; Hörmann in Hilf/ Oeter, § 8 para. 37; Pflüger, p. 61; Kaiser in Stoll/Busche/Arend, Introduction iii paras. 2 f, 24;

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hand, the division of competences between the European Union and the Member States is germane to the implementation of the trips Agreement, of which the imposition or non-imposition of direct effect is one aspect.75 That is, only the entity – European Union or Member States – which possesses internally the competence to implement the concluded agreement is able at all to accord direct effect. In Daiichi Sankyo, the European Court of Justice clarified that the jurisdiction regarding direct effect hinges on the external competence.76 The Court has thus overruled previous case law, according to which the decisive criterion was whether the European Union has legislated, i.e. exercised its internal competence, in the sphere into which the respective trips provision falls.77 As a corollary, an interpreter no longer needs to look into the delimitation of competences, as far as the trips Agreement is concerned. This line of argument has been criticized, as it allows the European Union to evade the limitations in Articles 114 and 118 of the tfeu, the legal bases for the approximation of laws.78 As the law stands, it is the European Court of Justice that has jurisdiction to adjudicate on the direct effect of Article 10bis of the Paris Convention (1967), as incorporated into the trips Agreement. This power derives from the exclusive competence of the European Union to conclude agreements on ‘commercial aspects of intellectual property’ within the meaning of Article 207(1) of the tfeu.79 Whether or not the Member States remain internally responsible for the repression of unfair competition is immaterial. The Court consistently rejects direct effect for all wto agreements.80 The only two exceptions the Court makes are when reviewing the legality of a

75

76 77 78 79 80

Stoll/Schorkopf, para. 703; Fromm-Russenschuck/Duggal, p. 150; Hermes, ‘Das tripsÜbereinkommen vor dem EuGH’, pp. 253 f. Khan in Geiger/Khan/Kotzur, aeuv Art. 216 para. 16; Oeter in Hilf/Oeter, § 1 para. 44; Koebele, ‘World Trade Organization, Enforcement System’ in mpepil, para. 60; Haas, pp. 171 f, 175, 178. Note that wto law is silent on this point. European Court of Justice, Judgment, Daiichi Sankyo, para. 48. European Court of Justice, Judgment, Merck, para. 34; European Court of Justice, Judgment, Dior, paras. 47 f; European Court of Justice, Judgment, Hermès, para. 28. Ankersmit, p. 194; Hestermeyer, ‘The Notion of “Trade-Related” Aspects of Intellectual Property Rights’, p. 930. Drexl in Säcker/Rixecker/Oetker, IntImmGR, paras. 98, 107; Ankersmit, p. 201; Gotsova, pp. 525 f, 528. European Court of Justice, Judgment, Società Consortile Fonografici, para. 46; European Court of Justice, Judgment, fiamm, para. 111; European Court of Justice, Judgment, Develey v. ohim, para. 39; European Court of Justice, Judgment, Van Parys, para. 39. Pro Weiß, pp. 283 ff; Snyder, pp. 332 ff.

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­ uropean Union measure.81 In this connection, the Court endorses the direct E applicability of wto law where the Community has intended to implement a particular obligation assumed in the context of the wto [the Nakajima exception],82 or where the Community measure refers expressly to the precise provisions of the wto agreements [the Fediol exception].83,84 We can ascertain that in these two constellations a legislative act of the European Union substitutes for the lacking direct effect.85 Accordingly, the European Court of Justice stated in Nakajima that the applicant ‘is not relying on the direct effect of those provisions [of the gatt Anti-Dumping Code] in the present case.’86 iv

Requirements Relating to the Treaty

A Stance of the European Court of Justice When deciding on the direct effect of a norm of international law, the European Court of Justice, as a rule, relies on a three-tiered test: aside from the precondition under constitutional law (which must allow a direct effect in principle), and before addressing the wording of the norm in question (which must be ‘unconditional and sufficiently precise’), the Court begins its legal analysis with an examination of ‘the nature and the broad logic’ of the treaty of which the said norm forms part.87 It held, for instance, in Van Parys:

81 82 83 84

85 86 87

Diebold/Oesch, p. 1528. European Court of Justice, Judgment, Nakajima, para. 31. European Court of Justice, Judgment, Fediol, paras. 19, 22. European Court of Justice, Judgment, fiamm, para. 112. See also European Court of Justice, Judgment, Ikea Wholesale, para. 30; European Court of Justice, Judgment, Van Parys, para. 40. See also von Bogdandy/Smrkolj, ‘European Community and Union Law and International Law’ in mpepil, para. 14; Hilpold, pp. 296 ff; Antoniadis, pp. 68 ff. Ruiz Fabri, p. 159; Hörmann in Hilf/Oeter, § 8 para. 46; Errico, p. 191. European Court of Justice, Judgment, Nakajima, para. 28. See also Zonnekeyn, pp. 262 f. European Court of Justice, Judgment, ataa, paras. 52 ff; European Court of Justice, Judgment, fiamm, para. 110; European Court of Justice, Judgment, Kupferberg, para. 22. See also Lenaerts in Govaere/Lannon/Van Elsuwege/Adam, pp. 56 f.

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given their nature and structure, the wto agreements are not in principle among the rules in the light of which the Court is to review the legality of measures adopted by the Community institutions.88 (citations omitted) Against this background, it is no self-contradiction of the European Court of Justice that, on the one hand, it consistently states the direct effect of some provisions of the European Treaties such as the fundamental freedoms while, on the other hand, it denies it with respect to wto provisions despite the fact that they are on a par with the European norms in terms of precision.89 The Court references the different objectives of the European Treaties and free trade agreements.90 Indeed, unlike the European Union, the wto is not aimed at establishing an internal market.91 Relating to this, the European Court of Justice held in Gloszczuk: It must, however, also be borne in mind that, according to settled caselaw, a mere similarity in the wording of a provision of one of the Treaties establishing the Communities and of an international agreement between the Community and a non-member country is not sufficient to give to the wording of that agreement the same meaning as it has in the Treaties. According to that case-law, the extension of the interpretation of a provision in the Treaty to a comparably, similarly or even identically worded provision of an agreement concluded by the Community with a non-member country depends on, inter alia, the aim pursued by each provision in its own particular context. A comparison between the objectives and context of the agreement and those of the Treaty is of considerable importance in that regard.92 (citations omitted)

88 89

90 91 92

European Court of Justice, Judgment, Van Parys, para. 39. European Court of Justice, Judgment, Costa v. e.n.e.l., Summary paras. 7 f; European Court of Justice, Judgment, Van Gend & Loos, Summary paras. 3 ff; Schulte-Beckhausen in Gloy/Loschelder/Erdmann, § 7 para. 15; Cottier, ‘International Trade Law’, pp. 308 f; Ehlers in Ehlers, pp. 178 ff. European Court of Justice, Judgment, Kupferberg, para. 30; van Waeyenberge/Pecho, pp. 757 f; Errico, p. 183. Niemann, p. 238; Elfring, p. 104; Barceló iii, pp. 28 f, 33. Critically, Cottier in Monti et al., p. 117. European Court of Justice, Judgment, Gloszczuk, paras. 48 f. See also European Court of Justice, Judgment, Polydor v. Harlequin, paras. 14 ff.

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There arises the question whether the Nakajima exception applies here. Concerning this, the European Court of Justice clarified that the intention of the European Union ‘to implement a particular obligation assumed in the context of the wto’93 needs to be given expression in the implementation measure, e.g. its preamble.94 The measure must specifically transpose wto obligations.95 It is therefore not sufficient for the application of the Nakajima exception to construe such a link on account of overlapping subject matters.96 Since no harmonization measure of the European Union makes reference to Article 2.1 of the trips Agreement in conjunction with Article 10bis of the Paris Convention (1967), it follows that this exception is not pertinent and thus remains confined to trade remedies.97 Not even measures taken to implement decisions of the dsb could trigger it.98 Likewise, the Fediol exception is ruled out. At the heart of the Court’s negative stance towards direct effect of wto law lies the consideration of reciprocity, given that the United States disallowed a direct effect in 19 u.s.c. §§ 3512(a)(1),99 (c)(1),100 and 3533(g)(1).101,102 The same 93

European Court of Justice, Judgment, Van Parys, para. 40; European Court of Justice, Judgment, Portugal v. Council, para. 49. 94 European Court of Justice, Judgment, Nakajima, para. 30; European Court of Justice, Judgment, Petrotub, paras. 55 f; Kaiser in Stoll/Busche/Arend, Introduction iii para. 55; Weiß, pp. 289 f. 95 Court of First Instance, Judgment, Chiquita Brands, para. 125; Emch, p. 567. Contra Zonnekeyn, p. 264. 96 Cf. Kaiser in Stoll/Busche/Arend, Introduction iii para. 55. 97 Cottier, ‘International Trade Law’, p. 310; Antoniadis, p. 69; Bronckers, p. 445. Pro, with a different line of thought, Kuijper in Kuijper/Bronckers, pp. 1324 ff, 1340. 98 European Court of Justice, Judgment, fiamm, paras. 117, 127 ff; European Court of Justice, Judgment, Van Parys, paras. 41, 52; European Court of Justice, Judgment, Ikea Wholesale, para. 35. Pro Hörmann in Hilf/Oeter, § 8 para. 39; Hilpold, p. 509; Weiß, pp. 285 ff. 99 ‘No provision of any of the Uruguay Round Agreements, nor the application of any such provision to any person or circumstance, that is inconsistent with any law of the United States shall have effect.’ 100 ‘No person other than the United States – (A) shall have any cause of action or defense under any of the Uruguay Round Agreements or by virtue of congressional approval of such an agreement, or (B) may challenge, in any action brought under any provision of law, any action or inaction by any department, agency, or other instrumentality of the United States, any State, or any political subdivision of a State on the ground that such action or inaction is inconsistent with such agreement.’ 101 ‘In any case in which a dispute settlement panel or the Appellate Body finds in its report that a regulation or practice of a department or agency of the United States is inconsistent with any of the Uruguay Round Agreements, that regulation or practice may not be amended, rescinded, or otherwise modified in the implementation of such report unless and until …’ 102 European Court of Justice, Judgment, fiamm, para. 119; European Court of Justice, Judgment, Van Parys, para. 53; European Court of Justice, Judgment, Omega Air, para. 92. See also Hahn

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is true of Canada.103 This stand may be best explained by the fact that the European Union can only influence, but not dictate, the outcome of wto negotiations, likely to provoke major changes in the domestic legal order.104 If the European Union, unlike its trading partners, recognized a direct effect, this would critically constrain the Union’s room for manoeuvre to e.g. develop ‘mutually acceptable compensation’ in terms of Article 22.2 of the dsu or to negotiate a ‘mutually satisfactory solution’ in terms of Article 22.8 of the dsu.105 As Article 216(2) of the tfeu ranks treaties concluded by the European Union higher than secondary law, the institutions of the European Union could not deviate from a wto norm having direct effect by enacting contradicting secondary law.106 Regardless of the first and second sentence of Article 22.1 of the dsu, full implementation, the Court argues, is only one possibility in a system that is directed at a balance of rights and obligations.107 The Court thus discounts the higher degree of juridification associated with the foundation of the wto in comparison to other international agreements to the provisions of which the Court has granted direct effect, such as the Lomé Convention.108 In doing so, it secures the European Union the policy option of ‘efficient breach’.109

103 104 105

106

107

108

109

in Calliess/Ruffert, aeuv Art. 207 para. 173; Eeckhout, ‘Portugal v. Council Case’ in mpepil, paras. 10 f; Hilpold, pp. 479 f; Diebold/Oesch, pp. 1527 f; Cottier in Monti et al., pp. 116 f. Sections 5 f of the World Trade Organization Agreement Implementation Act. Cottier, ‘International Trade Law’, pp. 314 f; Cottier in Monti et al., p. 118; Hilpold, p. 508; Snyder, p. 334. European Court of Justice, Judgment, fiamm, paras. 101, 118 f, 130; European Court of Justice, Judgment, Van Parys, paras. 48, 50 f, 53; European Court of Justice, Judgment, Omega Air, para. 90. Agreeing with this rationale, Ruiz Fabri, pp. 162 ff. See also Kaiser in Stoll/Bu­ sche/Arend, Introduction iii paras. 44, 46; Koebele, ‘World Trade Organization, Enforcement System’ in mpepil, para. 62; Eeckhout, ‘Portugal v. Council Case’ in mpepil, para. 10; Dani, pp. 320, 327; Emch, pp. 567 ff. See also Bronckers in Kuijper/Bronckers, pp. 1351 ff, who makes a difference depending on whether a Member State or an individual institutes review proceedings against a European Union act pursuant to Article 263 of the tfeu. European Court of Justice, Judgment, ataa, para. 50; European Court of Justice, Judgment, Kadi, para. 307; European Court of Justice, Judgment, Intertanko and Others, para. 42; van Waeyenberge/Pecho, p. 752; Martines, pp. 132 f; Kaiser in Stoll/Busche/Arend, Introduction iii para. 44; Schmalenbach in Calliess/Ruffert, aeuv Art. 216 para. 50. European Court of Justice, Judgment, fiamm, para. 116; European Court of Justice, Judgment, Van Parys, para. 51; European Court of Justice, Judgment, Omega Air, para. 89. See above p. 28. European Court of Justice, Judgment, Chiquita Italia, paras. 35 f; Bronckers in Kuijper/ Bronckers, p. 1344; Herdegen, § 10 para. 102; Fromm-Russenschuck/Duggal, pp. 134 f. Critically, Dani, pp. 318 ff. Ruiz Fabri, pp. 168 f; Qureshi/Ziegler, para. 4–008; Eeckhout in Bethlehem et al., p. 443; Drexl in Großfeld et al., pp. 836 f. Critically, Niemann, pp. 235 f.

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In sum, the European Court of Justice has not changed the view it took on the gatt 1947.110 As a result of this case law, failure to comply with decisions of the dsb – even after the expiry of ‘a reasonable period of time’ for the implementation of dsb rulings111 – cannot justify liability on the part of the European Union.112 The European Court of Justice is very clear in that non-contractual liability presupposes that ‘the rule of law infringed must be intended to confer rights on individuals’.113 In fiamm, the Court noted that the decisions of the dsb cannot have the capability to confer individual rights insofar as the law upon which these decisions are based lacks that capability.114 It will be interesting to see the implications of the European Convention on Human Rights on this matter once the European Union has acceded to it, cf. Article 6(2), (3) of the teu.115 B Critique It is controversial whether a direct effect would be conducive or detrimental to the acceptance of wto law.116 Granting direct effect empowers individuals, in the case of wto law importers and exporters.117 Yet, not only individuals are empowered, but also the national courts mandated to enforce the directly

110 Cf. European Court of Justice, Judgment, International Fruit Company, paras. 19 ff; European Court of Justice, Judgment, Germany v. Council, para. 109; European Court of Justice, Judgment, Portugal v. Council, paras. 36, 42. See also Calliess/Ruffert, aeuv Art. 207 para. 172, Art. 216 para. 29. 111 Article 21.3 of the dsu. 112 European Court of Justice, Judgment, fiamm, paras. 92, 101, 106 ff, 173, 176, 188 (no liability after the implementation period has expired); European Court of Justice, Judgment, Biret International, paras. 62, 64 (no liability before the implementation period has expired). See also Tancredi in Cannizzaro/Palchetti/Wessel, pp. 262 f; Errico, pp. 181, 191 ff, 201 f; Kaiser in Stoll/Busche/Arend, Introduction iii paras. 61 ff. 113 European Court of Justice, Judgment, Bergaderm and Goupil, para. 42; European Court of Justice, Judgment, Brasserie du Pêcheur, para. 51; European Court of Justice, Judgment, Francovich, para. 40. See also Errico, pp. 197 ff, who distinguishes the conferral of rights on individuals from direct effect. 114 European Court of Justice, Judgment, fiamm, paras. 128 f. 115 Errico, pp. 204 f. For the state of the accession process, see Human Rights Law and Policy Division, Accession of the European Union to the European Convention on Human Rights (2014) Council of Europe accessed 8 December 2015. 116 Cf. Cottier, The Challenge of wto Law, pp. 302 ff. Detrimental: Hilpold, pp. 503, 510. 117 Cottier in Narlikar/Daunton/Stern, pp. 626 f; Qureshi/Ziegler, para. 4–008; BreiningKaufmann in Cottier/Pauwelyn/Bürgi Bonanomi, p. 105.

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­applicable provisions.118 The ensuing change in the balance of power receives a mixed response.119 On one side, it reinforces the principle of subsidiarity since the main responsibility for compliance with wto law would no longer lie in Geneva.120 On the other side, there is a fear that judges would become the main actors in weighing up fundamental societal interests, a task principally allotted to the legislature in a democracy but in reality often performed by supreme courts.121 Another counterargument put forward is that it is above all corporations that would benefit from direct effect, as they have the necessary resources to take full advantage of the judicial system.122 As to the last point, which shall not be refuted, I submit that companies are also the main users of the world trading system, and that behind each company are people.123 As to the argument relating to the power shift, it is worth emphasizing that direct effect eo ipso does not add to the substance of wto obligations, which were approved by the respective legislatures,124 but opens up another avenue for their better enforcement. That is, no obligation is enforced that does not already exist. In addition, Petersmann points out that the emergence of human rights culture promoting democratic peace and social welfare depends on empowering individuals to defend not only their civil and political human rights, but also their economic and social rights through … access to courts.125 (original emphasis) Within the framework of the wto, the guarantee of intellectual property rights is subject a priori to the possibility of suspension commensurate with Article 22.3 of the dsu. As a consequence, the direct effect of particular trips provisions would not deprive the wto enforcement mechanism of its efficacy, as some commentators caution,126 because these provisions could still be

118 Nollkaemper, pp. 113, 124 f; Cottier, The Challenge of wto Law, p. 303; Errico, p. 206. 119 Qureshi/Ziegler, para. 4–008. For it: Petersmann in Joerges/Petersmann, pp. 51 ff; Staehelin, p. 238. Against it: Hilpold, pp. 511 f, 515; Antoniadis, pp. 54 f, 84; Breining-Kaufmann in Cottier/Pauwelyn/Bürgi Bonanomi, p. 105. 120 Lavranos in von der Groeben/Schwarze/Hatje, aeuv Artikel 351, para. 32; Staehelin, p. 238. 121 Cf. Breining-Kaufmann in Cottier/Pauwelyn/Bürgi Bonanomi, p. 105. 122 Qureshi/Ziegler, para. 4–008. 123 Cf. Panel Report, us – Section 301 Trade Act, paras. 7.76 f. 124 Moore in Macrory/Appleton/Plummer, vol. i, p. 40. 125 Petersmann in Abbott/Breining-Kaufmann/Cottier, p. 52. 126 Niemann, pp. 241 f; Haas, pp. 220 f.

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­suspended after an authorization by the dsb.127 One view wants to deny them the necessary precision to have direct effect for this reason.128 However, the question as to the precision of a norm only relates to its wording, not to the way compliance is secured. So far, the European Union has never suspended the application of the trips Agreement. Moreover, I disagree with the view that considers the fact that the dsu facilitates the negotiation of a mutually acceptable solution as militating against direct effect.129 First of all, the question of direct effect is a general one and therefore should not be made dependent upon the contingency of proceedings being instituted.130 Secondly, even in the event of proceedings, it bears noting that national laws provide for conciliation proceedings too, without prejudice to their legal effect.131 By the same token, it is not convincing to infer an argument to the contrary from the existence of the compliance procedure under Article 21.5 of the dsu because such a procedure does not invalidate the obligatory nature of the original panel or Appellate Body ruling.132 It concerns a new subject matter, namely the ‘measures taken to comply with the recommendations and rulings’ of the dsb.133 The jurisprudence of the European Court of Justice is problematic because it lays the argumentative ground for the European Union to break out of its wto commitments, even though an infringement has been established.134 It leads to the awkward situation that eu citizens may attack the trade policy of other Members (by virtue of the Trade Barriers Regulation) but not the one of the European Union.135 The situation for the eu Member States is no less 127 128 129 130 131

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See above p. 129. Elfring, pp. 155 f. Hilf/Schorkopf, p. 90. Cf. Articles 3.7, third sentence, and 11, last sentence, of the dsu. Tancredi in Cannizzaro/Palchetti/Wessel, p. 258; Cottier, ‘International Trade Law’, p. 325. Fromm-Russenschuck/Duggal, p. 134. See, e.g., § 278(1) of the German Code of Civil Procedure: ‘In all circumstances of the proceedings, the court is to act in the interests of arriving at an amicable resolution of the legal dispute or of the individual points at issue.’ Contra Weiß, pp. 286 f. The Appellate Body in ec – Bed Linen (Article 21.5 – India), para. 78, noted that ‘the “matter” in Article 21.5 proceedings consists of two elements: the specific measures at issue and the legal basis of the complaint (that is, the claims)’ (original emphasis). It further clarified that the only relevant measures in these proceedings are ‘measures taken to comply’. See also Kunoy, pp. 44 ff, 49 ff, 57 ff, 65 f. Drexl in Säcker/Rixecker/Oetker, IntImmGR, para. 103; Egli, p. 453. Hilf/Schorkopf, p. 91. See also Snyder, pp. 361, 365, who notes that while wto violations by European Member States can be reviewed within the framework of European Union law,

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awkward: they can either abide by a European measure that is inconsistent with wto law (and consequently risk a breach of wto law), or they disregard the wto-inconsistent measure and risk the European Commission launching infringement proceedings according to Article 258 of the tfeu.136 Aside from the Nakajima and Fediol exceptions, an action under Article 263 of the tfeu for annulment of the wto-inconsistent measure is excluded.137 In this context, one has to bear in mind Article 22.1 of the dsu, which reads in relevant part as follows: Compensation and the suspension of concessions or other obligations are temporary measures available in the event that the recommendations and rulings are not implemented within a reasonable period of time. However, neither compensation nor the suspension of concessions or other obligations is preferred to full implementation of a recommendation to bring a measure into conformity with the covered agreements. This provision makes it clear that the Members are not free to choose between full implementation, on the one hand, and compensation and suspension, on the other hand.138 It thus echoes Article 29 of the Articles on Responsibility of violations by the European Union cannot. Incidentally, this corresponds to the legal situation in the United States, where only the United States (and not a State) may take legal action against wto violations, cf. 19 u.s.c. § 3512(c)(1). 136 Herdegen, § 10 para. 102; Hörmann in Hilf/Oeter, § 8 para. 33; Fromm-Russenschuck/Duggal, p. 137. 137 European Court of Justice, Judgment, The Netherlands v. Parliament and Council, para. 52; European Court of Justice, Judgment, Germany v. Council, para. 109; Tancredi in Cannizzaro/Palchetti/Wessel, pp. 251 f, 267 f. Outside the wto context, some commentators support a review of the legality of eu measures according to Article 263 of the tfeu in light of international law that is directly applicable but cannot be directly invoked by private parties, Martines, p. 143; Gáspár-Szilágyi, pp. 185 ff. Their argument is based on a statement in European Court of Justice, Judgment, The Netherlands v. Parliament and Council, para. 54, in relation to the cbd: ‘Even if … the cbd contains provisions which do not have direct effect, in the sense that they do not create rights which individuals can rely on directly before the courts, that fact does not preclude review by the courts of compliance with the obligations incumbent on the Community as a party to that agreement’. 138 Decision by the Arbitrators, ec – Bananas iii (us) (Article 22.6 – ec), para. 6.3; Lavranos in von der Groeben/Schwarze/Hatje, aeuv Artikel 351, paras. 28, 30; Eeckhout, ‘Portugal v. Council Case’ in mpepil, para. 9; Herdegen, § 10 paras. 103, 120; Bossche/Zdouc, p. 194; Antoniadis, p. 56; Royla, p. 504. Contra Ruttley/Weisberger in Macrory/Appleton/Plummer, vol. i, pp. 1500 ff.

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States for Internationally Wrongful Acts.139 The granting of a reasonable period of time is not indicative of a lack of binding effect, but explained by the fact that bringing domestic law in conformity with wto law regularly involves law-making activities.140 That said, an argument against the case law of the European Court of Justice cannot be derived from Article 60(2) of the Vienna Convention and the fact that this Article sets out stricter requirements for the suspension of an international treaty (‘material breach’ in terms of paragraph 3),141 because the possibilities which Article 22 of the dsu provides are entrenched in wto law itself.142 The Court’s argumentation which categorically rules out a direct effect of the wto agreements is allegedly premised on the ‘nature and structure’ of these agreements without exactly specifying what this expression means or why these elements matter.143 ‘Structure’ apparently refers to a ‘contextual analysis’,144 whereas ‘nature’ might relate to the object within the meaning of Article 31(1) of the Vienna Convention.145 In Demirel and Asda Stores (respecting an association agreement) as well as in Racke v. Hauptzollamt Mainz (respecting a cooperation agreement), the European Court of Justice still spoke of ‘the purpose and nature of the agreement’,146 in Chiquita Italia and International Fruit Company (respecting the gatt 1947) of ‘the spirit, general scheme and terms of that agreement’,147 and then in Dior of ‘the wording, purpose and nature of the agreement’.148 Interestingly, in Germany v. Council, the Court ­observed that 139 ‘The legal consequences of an internationally wrongful act … do not affect the continued duty of the responsible State to perform the obligation breached.’ 140 Cf. Errico, pp. 194 f. 141 See Meng in Beyerlin et al., p. 1076. 142 Cf. Article 60(4) of the Vienna Convention. 143 European Court of Justice, Judgment, fiamm, para. 111; European Court of Justice, Judgment, Ikea Wholesale, para. 29; European Court of Justice, Judgment, Van Parys, para. 39; European Court of Justice, Judgment, Anheuser-Busch, para. 54; European Court of Justice, Judgment, Biret International, para. 52. 144 unctad-ictsd Resource Book, p. 26. 145 In ataa, for instance, the European Court of Justice, examining the Open Skies Agreement, referred to the object of liberalization of the air transport industry between the contracting parties under that heading, para. 81. 146 European Court of Justice, Judgment, Demirel, para. 14; European Court of Justice, Judgment, Asda Stores, para. 82; European Court of Justice, Judgment, Racke v. Hauptzollamt Mainz, para. 31. 147 European Court of Justice, Judgment, Chiquita Italia, para. 25. Similarly, European Court of Justice, Judgment, International Fruit Company, para. 20. 148 European Court of Justice, Judgment, Dior, para. 42. In para. 43, the Court resorted once again to the ‘nature and structure’ formulation.

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an obligation to recognize [gatt rules] as rules of international law which are directly applicable in the domestic legal systems of the contracting parties cannot be based on the spirit, general scheme or terms of gatt.149 This creates the impression that the Court in this case used the same argument, referred to as ‘spirit, general scheme’, in the inverse, namely as one possibility to substantiate direct applicability, and not as an argument ruling it out. On the basis of the prevailing case law, the legal analysis ends before even looking at the norm at issue,150 albeit the question in court is whether a particular norm has direct effect, not the entire treaty. This appears odd, considering that the question of direct effect can arise, in principle, in any context and for that reason is detached from the object of a treaty.151 Apart from wto law, the European Court of Justice examined this issue in relation to environmental law,152 tax law,153 association154 and cooperation agreements.155 The ‘nature and structure’ jurisprudence seems to be nothing more than a gateway to the Court’s considerations on reciprocity.156 In Kupferberg, where an economic integration agreement was in dispute, the Court addressed ‘a special institutional framework for consultations and negotiations inter se in relation to the implementation of the agreement’ as well as ‘safeguard clauses which enable the parties to derogate from certain provisions of the agreement’ under that heading.157 It is further submitted that it is precision in terms of content that is crucial to direct effect.158 I therefore question the imperative of a preliminary 149 European Court of Justice, Judgment, Germany v. Council, para. 110. 150 Schmalenbach in Calliess/Ruffert, aeuv Art. 216 para. 33; Kaiser in Stoll/Busche/Arend, Introduction iii para. 35; Haas, pp. 180 f. 151 Like here, Errico, p. 194. 152 European Court of Justice, Judgment, Lesoochranárske zoskupenie, paras. 28 ff. 153 European Court of Justice, Judgment, Chiquita Italia, paras. 54 ff. 154 European Court of Justice, Judgment, Asda Stores, paras. 82 ff; European Court of Justice, Judgment, Gloszczuk, paras. 36 ff; European Court of Justice, Judgment, Demirel, paras. 13 ff; European Court of Justice, Judgment, Kondova, paras. 37 ff. 155 European Court of Justice, Judgment, Ioannis Katsivardas – Nikolaos Tsitsikas, paras. 31 ff; European Court of Justice, Judgment, Eddline El-Yassini, paras. 25 ff. 156 Cf. European Court of Justice, Judgment, Dior, paras. 43 f; European Court of Justice, Judgment, Portugal v. Council, paras. 42 ff. See also Stoll/Busche/Arend, Introduction iii para. 43, Article 1 para. 6; Antoniadis, pp. 51 ff; Cottier, The Challenge of wto Law, p. 315; Ruttley/ Weisberger in Macrory/Appleton/Plummer, vol. i, p. 1488. 157 European Court of Justice, Judgment, Kupferberg, paras. 20 f, 24. See also European Court of Justice, Judgment, Portugal v. Council, para. 42. 158 Pflüger, pp. 21 f; Cottier/Jevtic in Drexl et al., p. 679; Duggal, ‘Die unmittelbare Anwendbarkeit der Konventionen des internationalen Urheberrechts am Beispiel des tripsÜbereinkommens’, p. 105.

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e­ xamination of the agreements as a whole and suggest focusing instead on the wording and purpose of the individual norm.159 Indeed, the fact that there are different types of norms, such as programmatic, organizational, procedural, substantive norms or norms with budgetary implications, speaks in favour of a more differentiated solution.160 In line with this, the European Court of Justice referred in Fediol to the lacking direct effect of ‘various gatt provisions’, not the gatt in its entirety.161 Similarly, the Court stated in relation to the Lomé Convention that ‘some of its provisions had direct effect.’162 Considerations as to ‘nature and structure’ could be taken into account in a systematic and teleological interpretation of the norm in question under Article 31(1) of the Vienna Convention, where they are best placed. Thus, as Cottier points out, the question of direct effect amounts to a matter of justiciability of the specific norm.163 v Conclusions In summary, Article 10bis of the Paris Convention (1967), including the general clause in paragraph 2, is sufficiently precise to be directly applicable. However, this is only one element of direct effect. In addition, it is a prerequisite that the domestic constitutional law provides for direct effect, for wto law is silent on this point. In the case of the European Union, there are two constitutional layers to consider: the constitutional law of the eu Member States and eu primary law. This begs the question of which constitutional lawyer has jurisdiction over Article 10bis of the Paris Convention (1967), as incorporated into the trips

159 Pro Cottier in Monti et al., pp. 119 f; Cottier in Macrory/Appleton/Plummer, vol. i, p. 1060; Meng in Beyerlin et al., p. 1085; Duggal, ‘Die unmittelbare Anwendbarkeit der Konventionen des internationalen Urheberrechts am Beispiel des trips-Übereinkommens’, p. 105. See also European Court of Justice, Judgment, Racke v. Hauptzollamt Mainz, para. 32. Contra Ruiz Fabri, pp. 152, 157; Martines, pp. 137 ff; Lenaerts in Govaere/Lannon/Van Elsuwege/Adam, p. 64; Hörmann in Hilf/Oeter, § 8 para. 27; Kaiser in Stoll/Busche/Arend, Introduction iii para. 13; Haas, pp. 180 f; Reger, p. 83. 160 Cottier, ‘International Trade Law’, pp. 324 f; Cottier in Monti et al., pp. 118, 120; Kaiser in Stoll/Busche/Arend, Introduction iii para. 72. 161 European Court of Justice, Judgment, Fediol, para. 19. See also Schmalenbach in Calliess/ Ruffert, aeuv Art. 216 para. 39. 162 European Court of Justice, Judgment, Chiquita Italia, paras. 34 f. 163 Cottier, ‘International Trade Law’, pp. 319, 324; Cottier in Monti et al., p. 120.

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Agreement. According to the European Court of Justice, European Union law is determinative. We have seen that the European Court of Justice rejects a direct effect of wto law, pointing to its nature and structure. We could show, however, that this is not a convincing argument. Rather, the Court should focus on the regulatory content of the individual norm. While Article 10bis of the Paris Convention (1967) is binding upon the European Union only through the trips Agreement, i.e. in the guise of a trips norm,164 the Member States remain countries of the Paris Union. The European Court of Justice cannot bar them from granting direct effect to wipoadministered provisions as part of the Paris acquis. That is, even when one follows the European Court of Justice, foreign traders can still rely on Article 10bis of the Paris Convention before national authorities, in so far as the constitutional orders of the Member States provide for direct effect. In lieu of the incorporated provision, they would invoke the identical wipo-administered norm. Furthermore, national courts, including the European Court of Justice, are required to interpret domestic law in conformity with wto law, as construed by the Appellate Body, so as not to expose the respective Member to international responsibility (so-called ‘indirect effect’ of wto law or ‘doctrine of consistent interpretation’).165 Having said that, the necessary leeway to do so must be given (‘as far as possible’), as an interpretation contra legem is foreclosed.166 If there are several alternatives, a treaty interpreter has to choose the interpretation that is consistent with wto law.167 This is not only a duty arising from European law,168 but a corollary of the principle of good faith, since

164 See above p. 250. 165 European Court of Justice, Judgment, Merck, para. 35; European Court of Justice, Judgment, Anheuser-Busch, para. 42; European Court of Justice, Judgment, Commission v. Germany, para. 52; Drexl in Säcker/Rixecker/Oetker, IntImmGR, paras. 104 f; Ruiz Fabri, p. 158; Gattinara in Cannizzaro/Palchetti/Wessel, pp. 276, 281 ff; Cottier, ‘International Trade Law’, p. 325. 166 European Court of Justice, Judgment, Merck, para. 35; European Court of Justice, Judgment, Anheuser-Busch, para. 55; van Waeyenberge/Pecho, p. 753; Hahn in Calliess/Ruffert, aeuv Art. 207 para. 164; Kaiser in Stoll/Busche/Arend, Introduction iii para. 48. 167 European Court of Justice, Judgment, Commission v. Germany, para. 52; Hörmann in Hilf/ Oeter, § 8 para. 41; Kaiser in Stoll/Busche/Arend, Introduction iii para. 48; Cottier/Jevtic in Drexl et al., p. 679. 168 European Court of Justice, Judgment, Dior, para. 47; European Court of Justice, Judgment, Schieving-Nijstad, para. 35; von Bogdandy/Smrkolj, ‘European Community and Union Law and International Law’ in mpepil, para. 13.

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the ‘performance of treaties is also governed by good faith’.169,170 Significantly, in Microsoft v. Commission, the Grand Chamber of the Court of First Instance ruled out an indirect effect of wto law to European primary law, thus confining the doctrine of consistent interpretation to secondary law.171 The Court justified this confinement with the higher rank of primary law as compared to wto law from a European perspective. 169 Appellate Body Report, us – Offset Act (Byrd Amendment), para. 296. See also European Court of Justice, Judgment, Portugal v. Council, para. 35. 170 Cf. Articles 1.1.1 of the trips Agreement, 26 of the Vienna Convention. See Ruiz Fabri, p. 158; Gattinara in Cannizzaro/Palchetti/Wessel, p. 271. 171 Court of First Instance, Judgment, Microsoft v. Commission, para. 798. See also Hilpold, p. 355.

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Final Conclusions Good faith creates trust in relationships by preventing obligations from being circumvented and rights from being abused. Article 10bis of the Paris Convention (1967) constitutes an expression of good faith for ‘industrial or commercial matters’ and, as such, serves as a guarantor of fundamental fairness in competition. The provision ensures fair trading practices, but unlike anti-dumping rules, is concerned with the conduct of market participants. Its primary goal is to make certain that market participants play by the rules in line with the wto objective of creating a ‘level playing field’. To achieve that goal, Article 10bis of the Paris Convention (1967) condemns particular undesired acts of competition. Two questions are key: to what extent does Article 10bis of the Paris Convention (1967) form part of the wto and to what kind of cases does the provision apply? The answer to the first question hinges on Article 2.1 of the trips Agreement which contains a general reference to the substantive provisions of the Paris Convention (1967), including Article 10bis thereof. The negotiating history of the trips Agreement is not informative in this regard. The trips Agreement avails itself of Article 10bis of the Paris Convention (1967) to protect geographical indications and undisclosed information, making them explicit cases of application of the doctrine of unfair competition. In consequence, the level of protection conferred on those two subjects falls short of an intellectual property right, as Article 10bis of the Paris Convention (1967) does not grant exclusive rights. That is why, for instance, undisclosed information acquired by accident, discovery or reverse engineering may be copied by a third party. Unlike the references in Articles 22.2(b) and 39.1 of the trips Agreement, Article 2.1 of the trips Agreement is not confined to a particular subject of protection. The extent of the reference in Article 2.1 of the trips Agreement is unclear because of the introductory phrase ‘in respect of’. However, instead of limiting the incorporation, that phrase is indicative of a subsidiarity of the referred Article 10bis of the Paris Convention (1967) towards the substantive Part ii of the trips Agreement. Article 10bis of the Paris Convention (1967) applies in addition to the intellectual property rights regulated in Part ii. The Article thus supplements the substantive rules of the trips Agreement. Having said that, due to its separate objective of upholding honesty in the marketplace, Article 10bis of the Paris Convention (1967) finds independent application too, provided that the rigid (formal, substantive, temporal) boundaries of intellectual

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property law are being respected. In particular, Article 10bis of the Paris Convention (1967) must not afford ip-like protection where the Membership has purposefully decided not to create an intellectual property right for a particular subject matter.1 This reading is supported by Article 2.1 of the trips Agreement in conjunction with Article 1(2) of the Paris Convention (1967) which defines the repression of unfair competition as a separate category of ‘industrial property’. Incidentally, the wipo Model Provisions and Article 2(viii) of the wipo Convention corroborate that result. Also, Article xx(d) of the gatt 1994 enumerates the ‘prevention of deceptive practices’ together with major intellectual property rights. By analogy with the Havana Club case, it is therefore fair to say that, if the intention of the negotiators had been to exclude the repression of unfair competition from protection, there would have been no purpose whatsoever in including Article 10bis in the list of Paris Convention (1967) provisions that were specifically incorporated into the trips Agreement. Limiting the application of Article 10bis of the Paris Convention (1967) to geographical indications and undisclosed information, as posited by one view in the literature, would make the reference in Article 2.1 of the trips Agreement superfluous, as Articles 22.2(b) and 39.1 of the trips Agreement have their own specific references to Article 10bis of the Paris Convention (1967). The purpose of these specific references is to replace the subjects covered by Article 10bis of the Paris Convention (1967) with those of geographical origin and undisclosed information, respectively. The principle of effectiveness as coined by the Appellate Body requires that the reference in Article 2.1 of the trips Agreement to Article 10bis of the Paris Convention (1967) has a certain scope of application. Such a broad reading of Article 2.1 of the trips Agreement is borne out by the fact that the negotiators allocated this reference norm to Part i of the Agreement, entitled ‘General Provisions and Basic Principles’. In the final analysis, ‘in respect of’ attaches no conditions (e.g., along the lines of the simultaneous applicability of an intellectual property right in terms of Part ii) on the obligations arising from the incorporated provisions of the Paris Convention. As regards the relationship between the two agreements, Article 19 of the Paris Convention (1967), in conjunction with Article 2.1 of the trips Agreement, affirms that the Paris Convention takes precedence over the trips Agreement ‘in respect of Parts ii, iii and iv of this Agreement’. This explains why Article 22.3(f)(iii) of the dsu, regulating the suspension of trade concessions under the wto, does not mention the industrial property rights covered by the Paris Convention (1967). Part ii of the trips Agreement thus concretizes the 1 Articles 3.2.3 and 19.2 of the dsu.

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substantive Paris provisions. Together, they belong to one overall framework of multilateral industrial property protection. As a result, Article 10bis of the Paris Convention (1967) is fully incorporated into the wto system and is to be treated as any other trips provision. This includes the Paris acquis. Otherwise, the negotiators could have simply rewritten Article 10bis in a separate trips provision. An application of in dubio mitius was rejected by reason of the fact that the wto seeks to secure a balance of rights and obligations, whereas in dubio mitius would systematically favour the respondent in dispute settlement proceedings. Besides, it is at variance with the principle of effectiveness, which is prompted by a good faith interpretation in terms of Article 31(1) of the Vienna Convention. Hence, Article 10bis of the Paris Convention (1967) is subject to the jurisdiction of the wto adjudicating bodies, with the consequence that claims based on a violation of Article 2.1 of the trips Agreement in conjunction with Article 10bis of the Paris Convention (1967) can be brought before the wto. Also, the enforcement provisions of Part iii of the trips Agreement apply mutatis mutandis. By virtue of wto law, a Member is under an obligation to protect foreign traders against unfair commercial practices within its territory, whether that protection be in the form of tort, administrative, criminal law, or a specialized act, as well as to provide appropriate legal remedies (under Article 10ter(1) of the Paris Convention (1967)), regardless of whether it joined the Paris Union. Nowadays, even common law countries like the United Kingdom have a general clause in their national consumer protection law. Positive action is required by a Member to fulfil its obligations arising from Article 10bis of the Paris Convention (1967). If not, benefits accruing to other Members under the trips Agreement are presumed to have been impaired according to Article 3.8.2 of the dsu. In this connection, the wto adjudicating bodies would not adjudicate on individual acts of unfair competition, but would examine whether the respondent has given effect to Article 2.1 of the trips Agreement in conjunction with Article 10bis of the Paris Convention (1967), i.e., whether the respondent guarantees a sufficient level of protection in its domestic legal system. This epitomizes the positive integration model adopted under the trips Agreement. However, Article 10bis of the Paris Convention (1967) does not go so far as to prescribe a particular form of competition. Members have significant regulatory autonomy when it comes to the implementation of the trips Agreement,2 and are free to determine their own economic order within the framework set by wto law. On this account socialist countries can be Members of the wto. 2 Article 1.1, third sentence, of the trips Agreement.

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It bears noting that Article 2.1 of the trips Agreement refers to a particular version of the Paris Convention, namely ‘the Stockholm Act of this Convention of 14 July 1967’. This reference is static, i.e., future updates of the legal text cannot be taken into account by wto adjudicating bodies, unless the reference is amended. The static reference precludes a revision of the Paris Convention, negotiated only by a subgroup of the Membership, from being imposed upon all. It also means that a panel must not undercut the level of protection of 1967, given that the Paris acquis has been incorporated as well. The answer to the second question regarding the scope of application of Article 10bis of the Paris Convention (1967) is mainly determined by the interpretation of paragraph 2 thereof. The wto adjudicating bodies have full jurisdiction to interpret that Article. As a result of its incorporation into the trips regime, the Vienna Convention on the Law of Treaties applies to Article 10bis of the Paris Convention (1967), although the Vienna Convention was concluded after the entry into force of the Paris Convention. In line with the panel decision in us – Section 110(5) Copyright Act and the international law presumption against conflicts mentioned therein, a treaty interpreter ‘should avoid interpreting the trips Agreement to mean something different than the [Paris Convention] except where this is explicitly provided for’. To this end, panels may seek factual information from the wipo in accordance with Article 13 of the dsu. Besides, the English, French and Spanish versions of Article 10bis of the Paris Convention (1967) are equally authentic according to the wto Agreement (whereas according to Article 29(1) of the Paris Convention, the French version prevails in the Paris regime). Furthermore, other provisions of the trips Agreement and the wto Agreement, including the preambles thereto, become relevant context for the interpretation of Article 10bis according to Article 3.2.2 dsu in conjunction with Article 31(1) and (2) of the Vienna Convention. This concerns, for instance, the personal scope of application of Article 10bis, as incorporated into the trips Agreement. Only nationals of other Members and nationals of non-wto Members who are domiciled or who have a real and effective industrial or commercial establishment in the territory of one of the Members benefit from Article 10bis of the Paris Convention (1967) pursuant to Article 1.3 of the trips Agreement, as read with Article 3 of the Paris Convention (1967), not own nationals. Discrimination against own nationals is permissible from the point of view of wto law. Another corollary is that Article 10bis of the Paris Convention (1967) is not restricted to ‘unfair competition related to industrial property’. What constitutes ‘unfair competition’ is set out in paragraph 2 of Article 10bis of the Paris Convention (1967). In accordance with paragraph 1 of Article 10bis of the Paris Convention (1967), Members are under an obligation ‘to assure … effective protection against unfair competition’. Paragraph 1 confers legal force on the doctrine of

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unfair competition as elaborated in paragraph 2 and the three explicit prohibitions in paragraph 3. As a comparison to footnote 10 to Article 39 of the trips Agreement and similar clauses in national law evidences, paragraph 2 is not too vague to be operational. Commensurate with the principle of effectiveness, paragraph 2 must have meaning and effect. The list of definitive acts of unfair competition in paragraph 3 of Article 10bis of the Paris Convention (1967) is not exhaustive, as the wording ‘in particular’ indicates. They are exemplary. Consequently, unwritten acts, e.g. aggressive practices, are to be measured against paragraph 2. If that were not the case, why include paragraph 2 in the first place? It would have been sufficient to impose three mandatory prohibitions without paragraph 2. Paragraph 3 is not reliant on a general definition because it lays down the criteria that establish dishonest competitive conduct itself. An abstract definition of ‘unfair competition’ only makes sense if the existence of further cases within the ambit of Article 10bis of the Paris Convention (1967) is acknowledged to which paragraph 2 may then apply. Read together, paragraphs 1 and 2 embody a general prohibition of acts of unfair competition. Ergo, hard law obligations emanate therefrom, enforceable under the wto dispute settlement mechanism pursuant to Article 64.1 of the trips Agreement. This signifies a considerable improvement as compared to the Paris regime which only provides for facultative dispute settlement before the International Court of Justice, something that never occurred. The view that paragraph 2 of Article 10bis of the Paris Convention (1967) can be breached is corroborated by paragraph 1 of Article 39 of the trips Agreement which subsumes the protection of undisclosed information thereunder (‘ensuring effective protection against unfair competition’), implying a normative character for paragraphs 1 and 2 of Article 10bis of the Paris Convention (1967). Undisclosed information cannot be subsumed under paragraph 3 thereof. The prevailing view under the Paris regime adheres to the so-called ‘protecting-country principle’, i.e., the country in which legal protection is sought sets the level of protection. This would make paragraph 2 of Article 10bis of the Paris Convention (1967) a relative standard akin to the prohibition of discrimination. However, the definition of the term ‘honest practices’ in paragraph 2 is not only a prerogative of the Members. Having regard to the tenet of autonomous treaty interpretation, it implies an international minimum standard that goes beyond the examples listed in paragraph 3. A treaty interpreter is required to conceive an idiosyncratic understanding of the doctrine of unfair competition for the purposes of the trips Agreement; classifications of domestic law are not determinative. In short, the regulatory freedom of the Members is subject to this minimum standard.3 3 Article 1.1 of the trips Agreement.

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‘Act of competition’ within the meaning of paragraph 2 of Article 10bis of the Paris Convention (1967), as incorporated into the wto system, denotes any behaviour, including omissions, of an economic operator which impairs, actually or potentially, competitive opportunities of a national of another Member. Examples are acts directed at the promotion of sales or procurement of products. Acts for private purposes or (in case of an enterprise) internal acts with no impact on the competitive situation are excluded from the scope. That said, acts of an enterprise are presumed to be for business purposes. The term presupposes a competitive relationship. Generally speaking, two economic operators compete with one another when they do business in the same market. A potential competitive relationship suffices, as there may be latent demand, e.g., in the case of an import ban or a monopoly. In order to justify the presumption in Article 3.8 of the dsu, a relevant act must have the capacity to impair competitive opportunities. The Spanish text version of paragraph 3, in particular, hints at such a requirement. Acts of competition are not prohibited for prohibition’s sake. This is in line with the purpose of Article 10bis of the Paris Convention (1967) to protect the commercial interests of individuals. As usual in wto law, actual effects on trade volumes are not required. It is therefore immaterial for Article 10bis of the Paris Convention (1967) whether the actor actually improved its competitive situation and, for example, enlarged its customer base. What matters is the effect of the act at issue on other market participants. The impairment of competitive opportunities of one national of another Member is enough. Its protection is not contingent upon a finding that others are affected in the same way, nor is law-abidance by other competitors a requirement in view of a level playing field, as this would promote a wild west attitude. In accordance with general principles, there must be a causal link between the act, on the one hand, and the impaired competitive opportunities of a national of another Member, on the other hand. In light of the context, the expression ‘industrial or commercial matters’ is to be understood as referring to cross-border trade. ‘Practices in industrial or commercial matters’ are consequently those established in international trade. The term ‘practice’ denotes mainstream behaviour; a single act cannot establish a practice. What a practice is in a particular case arises from the relevant economic sector. Having said that, Article 10bis of the Paris Convention (1967) also applies to new sectors, where no customs or conventions have materialized yet. Since a majority can also behave in a way detrimental to competition as a whole, the term is qualified by the word ‘honest’ so as to indicate that customary (but dishonest) acts can be prohibited.

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Article 10bis of the Paris Convention (1967) sets up prohibitions of unfair competition based on a value judgment. The term ‘honest’ implies that ‘practices’ must conform to the dictates of good faith and fundamental fairness. ‘Honest practices’ conceptualizes these precepts for ‘industrial or commercial matters’, and denotes a standard of right and wrong competitive conduct. The term thus describes what market participants can legitimately expect from one another. The dictionary meaning of ‘honest’ corroborates that. This has the consequence that business codes such as the Consolidated icc Code of Advertising and Marketing Communication Practice are subject to scrutiny. Non-governmental organizations cannot conclusively determine the meaning of a wto term. If the term ‘honest’ were at the disposal of professional organizations, which represent their membership’s interests first and foremost, this would mean that they set down the legal yardstick they are subject to themselves. It may be true that private rule-making can establish ‘practices’, provided that they are supported by the respective business circles, but whether these are to be considered as in conformity with the law, notably as ‘honest’, is a different matter. It follows that, in the absence of legal force, non-compliance with business codes is not automatically contrary to honest practices within the meaning of paragraph 2 of Article 10bis of the Paris Convention (1967). Any attempt to give ‘honest practices’ meaning in the abstract would lead to an empty formula, so the term is likely to find concretization on a case-bycase basis. This is what happened in national legal orders with a general clause. Footnote 10 to Article 39 of the trips Agreement defines ‘a manner contrary to honest commercial practices’, but is confined to that provision, and the wipo Model Provisions are not legally binding. Therefore, it is the Appellate Body that, discharging its duty under Article 3.2.2 of the dsu to clarify the existing provisions of the covered agreements, has the final say in determining honesty in a trade context. As a result, the power of discretion of the wto adjudicating bodies increases. That said, the Members are always able to issue authoritative interpretations according to Article ix:2 of the wto Agreement should wto law develop in a direction that is at odds with the will of the Membership. The indefiniteness of the term ‘honest’ is actually an advantage because its meaning can be adapted to changing commercial practices in an evolutionary interpretation, as endorsed by the Appellate Body in us – Shrimp. What constitutes ‘honest practices’ is, by definition, evolutionary. What is ‘honest’ today may differ from what was considered ‘honest’ in 1967. Hence, the relevant moment in time to determine the ordinary meaning of the term is the time of interpretation; otherwise, adjudicators would enforce practices that have

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b­ ecome obsolete. By relying on the present understanding, they assure that the protection against unfair competition is effective, as required by paragraph 1. This is a continuing obligation. In the same vein, recitals 1 and 2(b) of the Preamble to the trips Agreement merely call for ‘effective and adequate protection’ and ‘adequate standards and principles’, not optimal ones. ‘Effective’ is not tantamount to a broad application, for overprotection as well as underprotection may result in barriers to trade. Instead of one-sidedly promoting the protection of industrial property, the trips Agreement also envisages other public policy objectives, such as the transfer of technology, pursuant to Articles 7 and 8 of that Agreement. This has implications for Article 10bis of the Paris Convention (1967), as incorporated into the trips Agreement, too. A treaty interpreter, when interpreting paragraph 2, must bear in mind that an excessive application would have a stifling effect on competition, defined as the striving of various economic operators for the same goal. A balance has to be struck between the interest in pursuing an economic activity and the interest in remaining unaffected by an improper activity. It is not new or unconventional trading practices that are banned but only dishonest ones. To fossilize the traditional ways of doing business is not the purpose of Article 10bis of the Paris Convention (1967). In any event, recourse to paragraph 2 is foreclosed when an act falls within the sphere of one of the special regulations of the doctrine of unfair competition, such as paragraph 3 of Article 10bis of the Paris Convention (1967) and Articles 22, 39 of the trips Agreement. Here, regard must be had to the limiting function of the elements of such provisions. Paragraph 2 forms a structural unit with those special regulations: on the one hand, they flesh out paragraph 2 of Article 10bis of the Paris Convention (1967), on the other hand, their interpretation reflects back on paragraph 2. That is, the degree of wrongdoing found to violate the special regulations is indicative of the degree of wrongdoing required under paragraph 2. This reading best serves the tenet of consistent treaty interpretation as laid down in Article 31(1) and (2) of the Vienna Convention. We further found that a subjective element is not required to turn an ‘act of competition’ into an ‘act of unfair competition’. Article 10bis of the Paris Convention (1967) embodies an objective standard with a view to ensuring the well-functioning of competition. A functioning competition is characterized by a market selection process to the effect that economic operators not effectively marketing their products will ultimately be driven out of the market. Hence, depriving another competitor of a competitive advantage cannot be objected to per se. The intention to outdo a competitor, even to drive him out of the market, is inherent in competition and therefore immaterial for the

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­determination of dishonesty. In light of the purpose of Article 10bis of the Paris Convention (1967), particular acts shall not occur in competition, regardless of the motivation of the actor. As a corollary, a lawful act of competition does not become a prohibited act of unfair competition for the sole reason that it was done with an intention to harm a competitor. Conversely, an act of unfair competition is not deprived of its qualification simply because the actor did not wish to impair the competitive opportunities of others. Members may have a subjective element or a bad faith requirement in their domestic unfair competition law as long as this does not make the remedies to repress acts of unfair competition ineffective contrary to Article 2.1 of the trips Agreement in conjunction with Article 10ter(1) of the Paris Convention (1967). Acting contrary to honest practices implies the violation of a behavioural norm. It could be shown that paragraph 2, in conjunction with paragraph 1, does not only prohibit the transgression of ‘honest practices’, but a fortiori of rules: if a deviation from honest practices is sanctioned, this is all the more true of a breach of law, given that practices are not legally binding. In other words, the phrase ‘honest practices’ comprises at least ‘lawful practices’. This finding is borne out by a comparison of national laws. Likewise, wto law must not tolerate unlawful commercial practices. Although having its origin in morality, ‘honest’ in paragraph 2 is a legal concept. As a wto term, it must not espouse any singular moral conviction, and a global code of business ethics cannot be ascertained. Not even within the European Union was it possible to delineate a common denominator for ‘legal requirements related to … decency’ in the ucpd. Considering the context, it is fair to say that morality is not the object of Article 10bis of the Paris Convention (1967). Besides, confining ‘honest’ to a moral commandment would increase the legal uncertainty of the general clause and open the floodgates to arbitrary rulings. In short, it is ‘contrary to honest practices’ not to observe the (legal) rules. The rules enforceable in this way must be mandatory international standards. Otherwise, a Member could impose its domestic standards upon other Members by means of Article 10bis of the Paris Convention (1967), which would encroach on their right to regulate. This does not mean that soft law or non-legal standards are foreclosed from informing honesty, but they would go beyond what is compulsory in terms of paragraph 2 of Article 10bis of the Paris Convention (1967). Importantly, paragraph 2 of Article 10bis of the Paris Convention (1967) does not set up ‘honest practices’ itself. What is unlawful in a given case cannot be derived from this provision eo ipso but is laid down elsewhere. In other words, in order to assess competitive conduct, one has to rely on other sources outside the framework of Article 10bis of the Paris

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­ onvention (1967). It follows that a panel, making an objective assessment of C the matter before it, would have to decide on a breach of non-wto law. As a matter of principle, a panel lacks the jurisdiction to adjudicate on non-wto law. However, here non-compliance with ‘honest practices’ or rules embodying such practices is an element of the wto norm at issue. The term ‘honest practices’ thus imports a reference to other rules of international law that concretize the concept. Just as wto law aims at combating barriers to trade, Article 10bis of the Paris Convention (1967) aims at combating barriers to competition. The trips Agreement in general, and the doctrine of unfair competition in particular, are both directed at the prevention of distortions, understood by the wto as a situation ‘[w]hen prices and production are higher or lower than levels that would usually exist in a competitive market’. Consequently, Article 10bis of the Paris Convention (1967) does not sanction any unlawful act, for this would turn it into a general law enforcement tool which is not its function, nor that of wto law at large. Bearing in mind that this Article protects the legitimate expectations of market participants regarding conditions of competition, only breaches are encompassed that are of competitive relevance and likely to distort trade. This is given when the breached rule regulates competitive conduct, or more generally, establishes equal conditions of competition (par conditio concurrentium). It is immaterial whether the respective rule is formulated as a prohibition, commandment, or in any other form. Furthermore, it is not required that the regulation of competitive conduct is the sole or main purpose of the rule in question. That is, non-competitive interests are covered by Article 10bis of the Paris Convention (1967) too, as long as the necessary nexus to competition exists. This is reflected in paragraph 3: for instance, the prohibition of indications that are liable to mislead the public as to the characteristics of a drug on the basis of No. 3 of paragraph 3 not only protects the economic interests of the consumer but, primarily, his health. Paragraphs 1 and 2 of Article 10bis of the Paris Convention (1967) ensure compliance with rules that meet the above test in cases where the sanctions are not conclusively regulated. If that were so, the wto adjudicating bodies should defer for reasons of comity despite Article 23.1 of the dsu. All in all, the doctrine of unfair competition as embodied in the trips Agreement has the following structure: a particular subject is protected from certain behaviours such as creating confusion (No. 1 of paragraph 3), discrediting (No. 2 of paragraph 3), misleading (No. 3 of paragraph 3), or breach of law (paragraph 2). The Paris Convention and the trips Agreement mention as subjects of protection:

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− the establishment, the goods, or the industrial or commercial activities, of a competitor (Article 10bis(3) Nos. 1 and 2 of the Paris Convention); − the nature, the manufacturing process, the characteristics, the suitability for their purpose, or the quantity, of the goods (Article 10bis(3) No. 3 of the Paris Convention); − the geographical origin of the goods (Article 22 of the trips Agreement); − undisclosed information (Article 39.2 of the trips Agreement); − data submitted to governments or governmental agencies (Article 39.3 of the trips Agreement); as well as − the respective subject of protection of the breached law (Article 10bis(2) of the Paris Convention). This book has sought to illustrate how Article 10bis of the Paris Convention (1967) operates in practice, using two hotly debated issues, namely the issue of core labour standards and the exploitation of traditional knowledge. As to the latter, unfair competition law is a stepping stone to intellectual property protection in national legal orders. Under the aegis of wipo, the feasibility of such a right to traditional knowledge is being discussed but the outcome of those negotiations is a matter of speculation. As to the former, labour standards have a bearing on competitive relationships. That is, in principle, both issues fall within the purview of Article 10bis of the Paris Convention (1967). All wto Members are bound by core labour standards, as laid down in paragraph 2 of the ilo Declaration, regardless of their level of development. Moreover, Article 7(1) of the Havana Charter testifies to the fact that core labour standards are trade-related. This is buttressed by the treaty practice of the Members that include an obligation to observe core labour standards in their free trade agreements. Considering that they also affect production costs, i.e. comparative advantages, as stated in the ilo Declaration and the Singapore Ministerial Declaration, compliance with core labour standards conforms to ‘honest practices in industrial or commercial matters’ within the meaning of paragraph 2 of Article 10bis of the Paris Convention (1967). Industrial or commercial matters are not only those regarding the marketing of a product. As Article 39 of the trips Agreement shows, the doctrine of unfair competition even applies to acts in the product development stage and tackles issues such as industrial espionage or the enticement of employees. Price undercutting facilitated by a breach of law is different from other comparative cost advantages resulting from varying ppms or a generally low wage level in one Member (e.g. because of lower living costs). Within their remit, core labour standards establish equal conditions of competition in terms of freedom from forced labour, freedom from child labour, etc.

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The consideration of customary international law, as evidenced in paragraph 2 of the ilo Declaration, under wto law would not contest the position of the ilo as ‘the competent body to set and deal with international labour standards’.4 To the contrary, it would manifest that the ilo is being taken seriously in its role. To summarize, non-compliance with paragraph 2 of the ilo Declaration constitutes an act of unfair competition. Article 10bis(1) and (2) of the Paris Convention (1967) can thus be employed to remedy the enforcement deficits of the ilo. As a consequence, labour standards are a factor to compete on only beyond the minimum set by the ilo Declaration. The only exception in this regard is discrimination in respect of employment and occupation (apart from remuneration), as it does not result in lower labour costs. This is because (in relation to access to the job market) discrimination artificially restricts the pool from which employers recruit, and (in relation to access to vocational training) it reduces the number of available skilled workers. As no competitive opportunities of nationals of other Members are being impaired here, no ‘act of competition’ is given. Traditional knowledge, defined in the broadest sense as intellectual achievements of indigenous and local communities, is of paramount importance for human health, food security, sustainable development, and biodiversity. It is well established that it serves to combat diseases and to mitigate the repercussions of climate change. Therefore, its preservation for future generations is a pivotal policy goal. In doing so, indigenous and local communities contribute to the public good. This is reminiscent of the argumentation that led to the protection of farmers’ rights, which are conceived as a reward for ‘the past, present and future contributions of farmers … in conserving, improving and making available these resources’.5 The reality is that the bulk of traditional knowledge is at risk of being lost,6 while its protection is wanting. As far as the wto is concerned, it was not a negotiation topic during the Uruguay Round. Pursuant to Article 12.4 of the tbt, developing country Members are allowed to uphold technical barriers to trade with a view to preserving indigenous ppms. However, in light of Article 70.3 of the trips Agreement, the appropriation of traditional knowledge cannot be unlawful ipso facto. Although it can be attributed to a Member through the nationality or domicile of its holder, the remit of national protection schemes ends at the border, and on grounds of

4 Recital 6 of the Preamble to the ilo Declaration. 5 Recital 7 of the Preamble to the itpgrfa. 6 Recital 4 of the Preamble to the ich Convention.

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extraterritoriality, they can only provide redress for exploitation taking place within the respective country. Unlike intellectual property rights, traditional knowledge protection does not aim at the generation of something new but the preservation of the extant stock of knowledge, which was created by indigenous and local communities ‘in response to their environment’.7 Because their way of living is changing, the holders of traditional knowledge require incentives to continue to do so. Continual practice and the survival of indigenous cultures are requisite for keeping traditional knowledge alive. For different reasons the existing intellectual property system, as laid down in the trips Agreement, is incapable of providing the necessary incentives to achieve that, although traditional knowledge is no less ingenious than other subjects that qualify for intellectual property protection, and in order to preserve it, appreciable labour and skill are equally expended. Apart from the fact that it may be difficult to identify the proper right holder, patents are not suitable for the protection of traditional knowledge. The novelty test in Article 27.1 of the trips Agreement ensures that only the knowledge added, but not the knowledge leading to the invention, is protected under patent law. Much has been published on the application of traditional knowledge, negating novelty. So the body of traditional knowledge which has existed for millenniums does not qualify, even though some of it meets the requirement of inventiveness. Some Members, such as India and Costa Rica, explicitly exclude the patentability of traditional knowledge. Given that patent protection is restricted in time, it is not even sought after by the custodians of such knowledge. What they seek is intergenerational protection, as traditional knowledge is being transmitted from one generation to the next. Geographical indications would grant that. While their personal scope of protection can comprise an entire community located in one place, their main thrust is for marketing purposes. The underlying knowledge cannot be protected on that basis. On this account, geographical indications could not prevent the misappropriation of traditional knowledge by third parties using a different indication. Another problem is that the respective traditional knowledge might originate from various localities. A contract-based regime, as advocated by the United States, has other disadvantages, mainly rooted in the discrepancy in bargaining power that exists between the would-be users of traditional knowledge, on the one hand, and the holder(s) of traditional knowledge, on the other hand. The resulting contracts would be amenable to national law. Leaving aside the issue of 7 Article 2(1), (2)(d) of the ich Convention.

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­ on-transparency, the system is predicated upon the willingness of the user n to conclude a contract, which cannot be assumed, for instance, in cases of bad faith. A protective mechanism that deserves the name must not leave it completely to private parties to arrange matters. Most misuses occur outside the country of origin, which calls for an international solution that cannot be evaded by choice of law. The traditional knowledge holders’ goal of perpetual protection, which is only partly motivated by commercial interests, seems to be at odds with the objective of the cbd to promote the dissemination and use of traditional knowledge. However, according to Article 16.2, second sentence, of the cbd, access may be subject to intellectual property rights. This indicates that both goals are not mutually exclusive. Rather, a delicate balance must be struck between the interest of the holders in controlling traditional knowledge and the interest of would-be users in accessing it. The general interest in preserving traditional knowledge speaks in favour of a protection regime, while the interest in access to that knowledge, e.g. for scientific and scholarly reasons, could be safeguarded by an exception clause. Article 39.2 of the trips Agreement covers traditional knowledge that is undisclosed, such as the secret knowledge of shamans or traditional healers. In particular, traditional knowledge associated with genetic resources constitutes information. According to its paragraph 1, the protection of undisclosed information builds upon the doctrine of unfair competition. As long as its requirements are met, i.e. as long as the information is kept secret, Article 39.2 of the trips Agreement will grant protection, even indefinitely. The protection under Article 39.1 and 2 of the trips Agreement is lost, however, if the information is disclosed, be it deliberately or by accident. Consequently, the Article does not guarantee control of traditional knowledge after its disclosure. Furthermore, it could not prevent a third party from using that kind of information if the third party had come up with the information independently. Generally speaking, the more people have access to a specific piece of information, the more difficult it becomes, firstly, to identify all the keepers of the information, and secondly, to keep it secret. Therefore, information that is known to two different communities is not secret anymore in terms of Article 39.2(a) of the trips Agreement, unless the two communities generated the same information independently and both keep it secret, or the information was given from one community to another on condition that it be kept secret. Access to traditional knowledge is governed by indigenous customary laws. They determine who is ‘lawfully in control of the information’ within the meaning of Article 39.2(c) of the trips Agreement. Subparagraph (c) explicitly allows taking into account the traditional context. As a result, the members of

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a particular community are able to establish a confidentiality regime amongst one another based on customary laws, a breach of which would fall under footnote 10 to Article 39 of the trips Agreement (‘breach of confidence’). It follows that, within a bounded community, traditional information may flow freely without losing its secrecy. Subparagraph (b) requires that traditional knowledge ‘has commercial value because it is secret’. It must be read in such a way that information, as long as it is secret, provides a competitive edge. That some custodians of traditional knowledge do not pursue any commercial interests, be it for cultural or spiritual reasons, is immaterial in this regard, because subparagraph (b) sets out an objective requirement. Whether or not secret information has any commercial value depends neither upon the subjective assessment of the keeper of the secret nor upon his will. Regarding traditional knowledge, commercial value is given on account of its potential for different branches of industry, such as agriculture, cosmetics and pharmaceuticals, even if there is presently no interest to capitalize on it on the part of the custodians. According to the classical doctrine, everything that does not fall under an intellectual property right forms part of the public domain. As seen, there is no conventional intellectual property right that covers all forms of traditional knowledge. Contrariwise, traditional knowledge is not tantamount to ‘terra nullius’ in the figurative sense. Articles 27(2) of the udhr and 15(1)(c) of the icescr proclaim a ‘right to the protection of the moral and material interests resulting from any scientific, literary or artistic production of which he is the author’, which is understood to include traditional knowledge. From ilo Convention 169, an obligation to recognize a sui generis right based on native titles can be deduced. By analogy with native land titles, native titles on traditional knowledge are just another aspect of indigenous customary laws. Some Members, such as the Philippines, Venezuela and Bolivia, have such titles in their national legal orders. That said, irrespective of the low membership of ilo Convention 169, native titles only guarantee a usufruct, i.e. a right to use, not a right to exclude others. Subject to the above caveat that Article 10bis of the Paris Convention (1967) must not frustrate the will of the wto Membership, the fact that a particular subject matter does not come within the ambit of an intellectual property right does not imply that it is entirely without protection. Notably, that Article 39 of the trips Agreement comprises undisclosed information does not rule out an application of Article 10bis of the Paris Convention (1967) to disclosed information, as the protection of undisclosed information constitutes a subcategory of unfair competition law. As a fall-back provision, Article 10bis of the Paris Convention (1967) offers supporting protection against confusion,

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discrediting, and misleading the public. This may be harnessed for the better protection of traditional knowledge, because Article 10bis of the Paris Convention (1967) does not presuppose a proprietary relationship to the subject matter protected. It is immaterial that the norm does not explicitly mention traditional knowledge. Article 10bis of the Paris Convention (1967) is thus able to police the way in which traditional knowledge is being appropriated and used. The prohibition of falsely labelling a commodity as ‘Aboriginal-style’ pursuant to Article 10bis(3) No. 3 of the Paris Convention (1967) is a case in point. Hence, regardless of the outcome of the stalled negotiations within wipo for a sui generis instrument for the protection of traditional knowledge, the wto is already capable of upholding a minimum level of protection, as set out in Article 1.1 of the trips Agreement. Importantly, this kind of protection is not contingent upon formalities, which is particularly advantageous to holders of traditional knowledge. Because the dsu does not require a legal interest on the part of the complainant, any Member may bring a case, not only those that are rich in traditional knowledge. In this connection, it should be noted that Article 10bis of the Paris Convention (1967) does not affect the use of traditional knowledge for household purposes. This can be inferred from the requirement of a competitive relationship. Moreover, Article 10bis of the Paris Convention (1967) does not confer exclusive rights (not through the imputation of the misappropriation doctrine or otherwise), and Articles 3.2.3 and 19.2 of the dsu preclude a treaty interpreter from interpreting it to that effect. The requirement of prior informed consent, as known from national laws relating to traditional knowledge and promulgated by international legal instruments, has not developed into a general principle of law. As regards national laws, no uniform practice has emerged yet. Article 8(j) of the cbd does not constitute a comprehensive and mandatory prescription. Likewise, the un Declaration on the Rights of Indigenous Peoples, being a resolution of the General Assembly, has only declaratory, not constitutive, force. Article 7 of the Nagoya Protocol is confined to traditional knowledge associated with genetic resources. As international law stands, there is no norm universally recognizing a principle of prior informed consent for the benefit of all holders of traditional knowledge. This will change with the wipo Draft Provisions becoming law. In any event, a comparison to Article 39.2 of the trips Agreement seems to suggest that the mere failure to seek consent cannot be equated, nolens volens, with a contradiction of honest practices. In the final analysis, traditional knowledge as such, i.e. its content, cannot be protected on the basis of Article 10bis of the Paris Convention (1967); neither can the patenting of industrial uses thereof by third parties be prevented in

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this way. As regards the latter, the solution is to be found in patent law, namely by defining the novelty test accordingly. The sources to be consulted in a prior art search are not prescribed by the trips Agreement. The denial of prior art is at the root of the problem, however, which ensues from the ignorance of patent officers about foreign traditional knowledge. Attempts to remedy this have been undertaken through the creation of databases. These databases also help forestall the oblivion of traditional knowledge.8 It bears emphasizing that not even the granting of a patent in another Member for an invention based on traditional knowledge could prevent its use in the country of origin because of the territoriality of patents. Also, a patent would only restrict the use of the product or process derived from traditional knowledge, not necessarily the underlying knowledge itself. Whether this is the case depends on the scope of the term ‘invention’ in national patent law. In sum, to regulate the issue of traditional knowledge at wto level is the domain of the Membership, not the adjudicating bodies.9 In my view, any future protection should be made contingent upon ‘use’ similar to trademarks and geographical indications. Otherwise, the alleged strong sense of association between traditional knowledge and its holders is not given. This special association, making traditional knowledge part of their cultural identity, is at the bottom of any claim for protection. If indigenous and local communities stopped utilizing traditional knowledge and thus broke off that association, it would be difficult to think of it as ‘traditional’ any longer. In addition, this book has demonstrated how the norm at issue takes effect within the national legal system of a Member, viz. the European Union. In light of the principle of good faith,10 domestic courts, including the European Court of Justice, are required to interpret domestic law in conformity with wto law, provided the necessary leeway is given. If there are several alternatives, a treaty interpreter has to choose the interpretation that is consistent with wto law, as construed by the Appellate Body. The European Court of Justice accepts such a duty with respect to European secondary law. Based on the exclusive competence for the common commercial policy,11 the European Court of Justice claims jurisdiction over Article 10bis of the Paris Convention (1967) as part of the trips Agreement, although the European Union has not acceded to the Paris Union. That is, it is European constitutional law, not the law of the Member States, that ultimately decides on the direct 8 9 10 11

Article 18(2)(a) of the unccd; Article 12(1) of the ich Convention. Article 71.1, third sentence, of the trips Agreement. Article 26 of the Vienna Convention. Articles 3(1)(e), 207 of the tfeu.

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e­ ffect of the norm within the European Union. Whether or not the eu Member States remain internally responsible for the repression of unfair competition is immaterial. In principle, the eu legal order is susceptible to direct effect, since it adheres to monism.12 However, bearing in mind that wto law does not prescribe it, the Court categorically denies that effect to provisions of the wto Agreement, including the trips Agreement. This stance has been heavily criticized in the literature, albeit there are also supporters. The European Court of Justice determines the direct effect of a norm of international law on the basis of the ‘nature and structure’ of the entire treaty containing said norm. It was propounded to focus on the regulatory content of the individual norm instead. The fact that there are different types of norms, such as programmatic, organizational, procedural, substantive norms or norms with budgetary implications, speaks in favour of a more differentiated approach. In the particular context of Article 10bis of the Paris Convention, the situation is less bleak for foreign traders as they can always rely on the norm in its wipo guise before national authorities. This is because the eu Member States are bound by Article 10bis of the Paris Convention (1967) directly and by virtue of the trips Agreement. The adverse case law of the European Court of Justice does not apply to the wipo-administered provision. It seems accepted that even paragraph 2 of Article 10bis of the Paris Convention is sufficiently precise to have direct effect in the legal orders of eu Member States that permit the concept. The many general clauses in the Members’ national laws testify to that. It bears noting that the minimum protection, as laid down in Article 10bis of the Paris Convention (1967), is only of subsidiary importance so long as the domestic level of protection is higher. It only becomes pertinent if that level should ever fall below the mandatory threshold. So what is the prospect of Article 10bis of the Paris Convention (1967) in the future? First of all, it is not a super enforcement mechanism. Its scope of application is carefully delineated despite the vagueness of the terms used. Still, wto law may emerge as an important vehicle for the enforcement of competition rules. Unfair competition law is only the first step; the second step, an anti-trust regime under the auspices of the wto, is still in the making. Both are needed in order to ensure the efficacy of competition.

12

Article 216(2) of the tfeu.

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Index Abbott 9n65, 22n19, 22n28, 31n88, 40n150, 109n21, 118, 128n150, 133n182, 153n129, 190n365, 265n125 Aboriginal food 171 Abrell 245, 245n740 Absolute standard 62 Abus de droit 235–237 Abuse of a dominant position 4 Accessibility 207, 208 Action plan 175 Act of competition 6, 21, 66, 74, 77, 78, 81, 84, 86, 89, 102–104, 115, 125, 129, 178, 179, 229, 278, 280, 281, 284 Act of transformation 252, 253 Addition of rights and obligations 70, 230 Administrative seat 54 Adverse effect 81, 89 Advertising 2n17, 3, 41, 88, 146, 174n267, 279 Advisory Centre on wto Law 182, 182n312 aetr case xxx, 258, 258n69 A fortiori argument 15, 107n2 African Regional Intellectual Property ­Organization (aripo) 140, 170n239 Agenda 135n9, 166, 175, 203, 209, 223 Aggressive practice 3, 231, 277 Agreement Between the wipo and the wto 45 Agreement on Preshipment Inspection  3, 3n18 Agreement on Safeguards 67, 68 Agreement on Subsidies and Countervailing Measures 194 Agriculture 136, 137n15, 138, 157, 248, 249, 287 aids 223 Akwé: Kon Guidelines 202, 202n453, 205 Alaska Native Knowledge Network 199 Allocation of powers 251 Altman 3n21, 58n275, 65n321, 66n332, 107, 107n4, 108n9 A maiore ad minus 189 American Anthropological Association 199 American Association for the Advancement of Science 199 Andean Community 160n182, 183n319, 198n417, 212, 230, 239, 239n702, 239n703

Andean cosmovision 138, 138n22 Anderson 1n2, 2n10, 2n12, 2n13, 12n85, 132n175, 136n15, 141n48, 146, 146n83, 146n86, 147n87, 148n97, 148n103, 150n112, 151n124, 153n129, 153n130, 153n135, 155n144, 155n147, 157n159, 157n161, 160n175, 162n196, 172n251, 199n424, 199n428, 212n517, 219n566, 219n567, 225n217, 225n616, 239n708, 241n720, 241n722, 247n743, 249n756 Anheuser-Busch case xxx, 33, 33n100, 97n582, 268n143, 271n165, 271n166 Annulment 267 Anti-Dumping Agreement 15n104, 84, 94 Anti-trust law 4, 81 Arezzo 133n182, 133n183, 133n184, 138n26, 141n46, 150n115, 154n140, 162n192, 165, 166n214, 179n297, 225n617 Argentina 3n19, 8n57, 29n76, 30n83, 57n269, 67n336, 81n442, 81n446, 82n449, 86n477, 86n479, 107n2, 119, 119n97, 119n98, 182n313, 192n379, 256 Argentina–Hides and Leather case 3n19, 81n446, 86, 86n477, 86n479, xviii Argentina–Poultry Anti-Dumping Duties case  57n269, 119, 119n97, 119n98, 192n379, xviii Argumentum e contrario 192 Arnold 38n138, 236 Articles on Responsibility of States for ­Internationally Wrongful Acts 268–269 Asda Stores case xxx, 268, 268n146, 269n154 Asia 212n517, 224 Association agreement 149, 268 ‘As such’ claim 11 Atropine 139 Australia 6, 30n85, 47n200, 48n206, 124n125, 157n161, 168n225, 184n330, 187n344, 204, 206, 208n493, 209n501, 210n502, 210n503, 210n507, 212n512, 212n516, 212n519, 213n520, 213n521, 225n615 Australian High Court 209 Austria 240n710 Authenticating clause 83 Author 11, 15, 141, 209, 244n737, 245, 287

326 Authoritative interpretation 279 Authority to adopt interpretations 57, 194 Autonomous treaty interpretation 48, 59, 109, 277 Bad faith 94, 161, 236, 237, 281, 286 Balance of interests 155 Balance of power 265 Balance of rights and obligations 31, 95, 117, 155, 181, 263, 275 Barcelona Traction ii case xxix, 181, 181n306, 195, 196n404 Bargaining power 160, 164, 285 Barrier to trade 2, 117, 120, 133 Basmati 150, 178n287 Bavikatte 245, 245n740 Baxter 16, 16n106, 63n315 Behaviour control 88, 229 Beijing Declaration on Traditional Medicine 144 Beijing Treaty on Audiovisual Performances 140 Bellagio Declaration 141 Benefit-sharing 138n28, 161n188, 171, 179, 203n454, 204, 208n488, 225n615, 237, 244 Berne acquis 39n148, 40, 40n151 Berne Convention 25, 39n144, 40, 44, 46n193, 52n231, 140, 154, 230n644 Biodiversity 135, 137n15, 143n57, 145, 149n108, 157n158, 159, 160n180, 161n188, 165n208, 183n319, 198, 198n417, 199n1429, 208n491, 222, 232, 232n658, 232n669, 241n721, 284 Biodiversity & Ethics Working Group of Pew Conservation Fellows 199 Biodiversity Research Protocols 199 Biological diversity. see Biodiversity Bioprospecting 135n10, 139, 139n31 Biret International case xxxi, 1, 1n4, 264n112, 268n143 Blackfoot 135 Böckenförde 111n30, 112, 112n39, 112n40, 113n44, 175n269, 193n382, 193n387 Bolivia 157n158, 208n491, 240, 287 Bona fides. see Good faith Bonn Guidelines 134n2, 148n102, 183n319, 202, 202n450, 202n451, 202n452 Brand 10, 10n71, 17n2, 20n13, 36n123, 36n126, 37n130, 39n143, 39n144, 39n146, 39n148,

Index 40n150, 40n151, 40n154, 41n155, 42n166, 43n171, 43n173, 49n211, 51n230, 52n233, 52n234, 52n235, 52n244, 54n246, 59n277, 60n285, 61n291, 61n292, 64n321, 66n333, 66n335, 71n364, 72n371, 83n461, 87n481, 90, 90n510, 117n82, 176n275, 253n25, 254n29, 254n33, 255n37, 255n39, 255n40, 255n43, 262n95 Brazil 57n269, 96n578, 110, 110n23, 111, 111n32, 111n35, 132n177, 167, 212n517, 237 Brazil–Desiccated Coconut case 110, 110n23, 111, 111n32, 111n35, xviii Brazilian Provisional Act 167n218 Breach of confidence 21, 90, 164, 168, 177, 215, 227, 287 Breach of contract 21, 90, 165, 168, 170, 177, 227 Breach of law 15, 107–108, 114, 116–118, 120, 126, 281–283 Brennan 168n225, 184, 208n493, 209n501, 210, 210n502, 210n507, 212, 212n516, 213n520 Brussels Revision Conference 5 Burden of proof 82, 106, 196, 214n530 Business Protection from Misleading ­Marketing Regulations 2008 38 Business-to-consumer relationship 38 California’s Business and Professions Code 108 Callmann 3n22, 22n28, 47n200, 56n257, 58n275, 65n321, 66n332, 107, 107n4, 108n9, 214n527, 215n540, 217n555 Camomile 180 Camu camu 150 Canada 8n57, 29n76, 46n196, 49, 49n214, 50, 51, 51n222, 52n231, 57n269, 63n309, 68n346, 98n586, 99n594, 101n613, 111n35, 132n177, 155, 155n145, 187n345, 204, 209n500, 214n533, 230, 230n646, 263 Canada–Pharmaceutical Patents case 49, 49n214, 50, 51, 51n222, 52n231, 230, 230n646, xix Cancer 138n28, 233 Capacity-building 166 cariforum-eu Economic Partnership Agreement 145, 149n108

Index Case-by-case basis 72, 73, 98, 107 Case groups 69 Catch-all 73 Categories of intellectual property 31, 32 Causality 86 Causal link. see Causality Causation. see Causality Certificate of incorporation 54 Charter of the Indigenous-Tribal Peoples of the Tropical Forests 171n251, 199, 240n490, 247n743 Child labour 121, 122, 122n106, 126, 283 China 2, 8n57, 12n83, 13n95, 29n76, 30, 30n84, 42, 42n168, 46, 46n193, 47, 47n201, 59, 59n279, 59n281, 60, 60n286, 61, 61n295, 62n301, 63, 63n316, 76, 76n410, 80, 93, 102, 123n115, 233, 624 China–Intellectual Property Rights case xx, 29n76, 46, 46n193, 59, 59n279, 59n281, 60, 61n295, 62n301, 63, 63n316, 76, 76n410, 80, 80n438, 286 China–Publications and Audiovisual Products case xx, 8n57, 12n83, 13n95, 30, 30n84, 47, 47n201, 123, 123n115 China–Raw Materials case xx, 93, 93n539 Chinese medicine 220n576, 233, 241n718 Chiquita Italia case xxxii, 263n108, 268, 268n147, 269n153, 270n162 Choice of law 162, 286 Cinchona bark 170 Civil law 69, 69n354, 119, 196 Climate change 154, 284 Cocchiaro 245, 245n740 Code of conduct 143, 200 Coercion 231 coica Statement 144n65, 149n109, 149n110, 150n111, 151n124, 157n158, 169, 249n720 Collecting agency 249 Collecting society 142 Colonization 225 Comity 119, 282 Commercial use 29, 150, 176, 177, 182, 185, 216 Commercial value 163, 169–171, 217, 287 Commoditization 170n241, 171, 229 Common commercial policy 251, 258, 289 Common heritage of mankind 156 Common law 3n25, 37, 100, 119, 187n342, 196, 210, 212, 212n512, 225, 226n622, 275 Commons licence 245

327 Communitarian right 143, 168 EU Trade Mark Regulation 236 Comparative advantage 1, 125, 127, 130, 283 Comparison of laws 15, 92, 195, 197 Compensation 244n734, 263, 267 Competition relatedness 125, 126 Competitive nexus 118 Competitive opportunities 76, 81, 82, 84–86, 104, 114, 117, 124, 129, 179, 188, 278, 281, 284 Competitive relationship 7, 76, 77, 79, 89, 95, 97, 127, 179, 180, 234, 278, 283 Competitive relevance. see Competition relatedness Compliance procedure 266 Compulsory labour. see Forced labour Compulsory licence 154 Conciliation proceedings 266 Condictio possessionis 206 Conditions of competition 15, 95, 96, 115, 126, 282, 283 Confidentiality agreement 161, 165 Conflict clause 35 Conformity assessment procedure 161 Consistent interpretation 68, 271, 272 Consolidated icc Code of Advertising and Marketing Communication Practice 88, 279 Constitution of Bolivia 157, 208n491, 240 Constitution of the United States 214 Consumer protection 38, 38n138, 38n142, 275 Consumer Protection Act 2007 38, 38n142 Consumer Protection from Unfair Trading Regulations 2008 38, 38n138, 38n142 Contextual interpretation 29n75, 51, 103 Contract-based protection 159–162 Contra legem 271 Convention on the Elimination of All Forms of Discrimination against Women 122 Convention on the Rights of the Child 122 Cooperation agreement 268, 269 Copying 22, 34, 137, 213 Copyright 139, 140, 140n36, 150n112, 153, 154n137, 222n587, 222n589, 226n626 Core labour standards 7, 14, 15, 106–133, 242, 283 Corporate social responsibility 3, 52n239 Correa 11n76, 20n15, 23n31, 25n41, 25n45, 29n75, 32n98, 35, 35n120, 36n121,

328 40n154, 52n231, 59n279, 59n280, 60n282, 65n324, 78n421, 83n458, 92n532, 96n576, 100n604, 100n610, 100n611, 126n133, 142n50, 145n70, 147n95, 166n216, 167n219, 168n229, 169n233, 169n236, 169n237, 170n244, 177n279, 184n327, 206n475, 214n533, 223n597, 226n626, 227n629, 231n647, 247n746 Cosmetics 138, 287 Costa Rica 139, 233, 233n669, 285 Costa Rican Biodiversity Law 165n208, 183n319, 198n417, 208n491, 232, 232n658, 232n659, 241n721 Cottier 1n3, 7, 18n7, 109n21, 137n15, 252n16, 270 Counterfactual forecast 115 Counterfeiting 51 Countries of the Union 6, 43, 53, 54, 58, 64, 255 Country of origin 154n136, 172, 181, 234, 286, 289 Courier service 108 Court of First Instance 1, 1n4, 262n95, 272, 272n171 Criminal law 41, 99, 188, 275 Criteria for eligibility for protection 53 Cultural identity 157, 210, 211, 289 Customary international law 48, 112, 122, 122n108, 128, 196n410, 203, 210, 284 Customary laws 166, 168, 206–208, 208n490, 209–213, 248, 286, 287 Customary rules of interpretation 12, 50, 70 Customer base 85, 278 Customs 53, 88, 166, 168, 184, 194, 194n391, 203, 208, 211, 212n512, 278 Customs territory 53 Customs union 194, 194n391 Daiichi Sankyo case xxxii, 255n41, 259, 259n76 Damage 47n200, 78, 82, 83, 104, 153 D’Amato 159, 159n172 Database Traditional knowledge 180n303, 239–242 Data submitted to governments 20, 21, 121, 163, 283 Decency 100, 101, 281 Deceptive practice 34, 274

Index Decision No. 391 162n193, 212n513, 230 Decision No. 486 212n513, 230, 239n703 Declaration Toward a Global Ethic 100 Decree-Law No. 118/2002 165n211, 242 Defensive protection 145, 145n71, 231–233, 242 Degree of wrongdoing 74, 280 De lege lata 133, 159 Delimitation of competences 251, 259 De minimis non curat lex 78 Demirel case xxxii, 268n146, 269n154 Democratic feedback 56 Denham iv 67, 67n338, 102n625 Denial of justice 30 Derivative work 246 Desertification 136, 154 Detrimental effect 78, 80, 83, 104 Develey v. ohim case xxxiii, 251, 251n14, 251n15, 259n80 De Vrey 2n15, 3n22, 3n23, 3n25, 3n27, 4n30, 4n32, 4n33, 4n37, 6n49, 22n19, 23n29, 24n40, 26n49, 26n50, 27n55, 35n114, 37n133, 37n134, 37n136, 41n159, 55n256, 58n272, 61n292, 62n305, 64n319, 66n331, 69n354, 78n425, 79n426, 89n501, 100n613, 115n66, 154n139, 174n260, 186n341, 217n551, 217n552, 217n553, 218n562, 221n584, 225, 225n620, 228n631, 229n639 Diabetes 135 Dictionary meaning 93, 94, 98, 99, 103, 108, 279 Dior case xxxiii, 32, 32n96, 34, 34n109, 253n28, 257n67, 259n77, 268, 268n148, 269n156, 271n168 Direct applicability 252, 252n16, 252n21, 253, 253n24, 253n28, 255, 260, 269 Direct competition 226, 226n623, 232 Disclosed information 176–178, 185, 287 Disclosure requirement 237–238, 238n698, 239 Discovery 25, 140, 156n153, 273 Discrediting 19, 20, 21, 69, 105, 120, 178, 244, 282, 288 Discrimination against nationals. see ­Discrimination of nationals Discrimination in respect of employment and occupation 121, 129, 284 Discrimination of nationals 55

Index Dispute Settlement Body (dsb) 10, 113, 118n94, 127, 131, 190, 193, 262, 264, 266 Dissemination of knowledge 152 Dissemination of technology 155, 221 Distortion 86, 115n64, 116, 120, 158, 158n163 Division of competences. see Delimitation of competences Doha Declaration on trips and Public Health 50, 57, 60 Doha Ministerial Declaration 3n20, 121, 148n98, 175, 194n391 Doha Round 5, 148, 158 Domicile 172, 173, 284 Douglas v. Hello! case xli, 7n54, 47n199, 88n499, 89n500, 89n504, 104n643, 108n13, 109n14, 248, 248n748 Drug 116, 139, 170, 282 Dualist system 252n18, 256 Duboisia 139 Due diligence 92 Due process 92 Duress 231, 231n652 Dutfield 4n35, 33n102, 40n154, 131n172, 137n18, 138n25, 140n36, 147n92, 149n107, 150n113, 151n120, 153n130, 155, 155n146, 165n212, 165n213, 168n223, 169n235, 170n245, 198n421, 205n468, 206, 206n475, 206n479, 207n481, 207n482, 207n485, 208n489, 210n506, 210n507, 213n524, 214n533, 218n562, 223n595, 223n600, 223n603, 224n608, 225n613, 225n617, 233n668, 237n695, 238n698, 238n699, 238n701, 240n708, 245n739, 1150n116 Dynamic interpretation 13 ec–Approval and Marketing of Biotech P­ roducts case xx, 12n83, 27, 27n57, 114, 114n55, 190n365, 190n370, 191n371, 191n372, 191n373, 191n374, 192, 192n379, 193n381, 195, 195n398, 196, 196n406, 201, 201n445 ec–Asbestos case xx, 12n83, 72, 73n379, 83, 83n459, 83n462, 98, 98n586, 98n587, 99n594 ec–Bananas iii case xx, xxi, 4n39, 43, 43n175, 43n176, 44n177, 76, 77n411, 77n416, 81, 81n444, 81n445, 81n447, 82, 82n449, 82n453, 82n454, 85, 85n470, 117n84, 117n85, 132, 132n174, 132n175,

329 132n176, 180, 180n298, 180n304, 181, 181n305, 181n307, 181n308, 182, 182n313, 182n314, 267n138 ec–Bananas iii (Article 21.5-us) case xx, xxi, 76, 81, 85, 180 ec–Bananas iii (Ecuador) (Article 22.6-ec) case xxi, 76, 81, 85, 180 ec–Bananas iii (us) (Article 22.6-ec) case  xxi, 132 ec–Computer Equipment case xxii, 37n129, 96, 96n574, 96n578, 189, 189n364 ec–Hormones case xxii, 28, 28n60, 28n61, 85n468, 111n35, 196, 196n406 ec–Hormones (us) (Article 22.6-ec) case  xxii, 132 Economic development 51, 130, 149, 213 Economic freedom 2 Economic integration 1, 14, 269 ec–Poultry case xxii, 29n73, 86, 86n478 ec–Tariff Preferences case xxii, 49n212, 83, 83n463 ec–Trademarks and Geographical ­Indications case xxiii, 6, 7n52, 7n53, 17, 17n1, 42n166, 45, 45n191, 48, 48n205, 54n247, 55n253, 64, 64n317, 65 Ecuador 4n39, 77n411, 77n416, 81n444, 81n445, 81n447, 82n449, 82n453, 117n84, 117n85, 132, 132n174, 132n175, 163, 163n298, 181n308, 183n319, 207, 232n658 Edison 155 Effective treaty interpretation. see Principle of effectiveness Efficient breach 263 Egyptian Law on the Protection of ­Intellectual Property Rights 155 Enforcement mechanism 23, 39, 118, 131, 265, 290 Enola bean 150, 178n287 Entertainment industry 147 Enticement of employees 125, 283 Environmental knowledge 134, 138 Environmental law 269 Equity 11, 11n82, 47n203, 73, 73n381, 91, 92n524, 93, 93n543, 100, 100n607, 119, 219, 225, 238 Establishment of a competitor 19, 33 Ethics 100, 102, 199, 281 Ethiopia 165, 165n210, 183n319, 198n417, 208n491

330 Ethnobotanist 143 Ethnopharmacologist 143 eu Database Directive 221 eu Regulation applying a scheme of generalised tariff preferences 117 European Commission 103, 258, 267 European Communities (Misleading and Comparative Marketing Communications) Regulations 2007 38 European Convention on Human Rights  236, 264, 264n115 European Copyright Directive 214 Evasion of law 228 Evolutionary interpretation 279 Ex abundante cautela 176 Exception clause 286 Exchange of information 152 Exclusive right 183, 206, 213, 229, 244, 273, 288 Exhaustible natural resources 191, 201 Exploitation of reputation 215 Export interest 76, 81, 82, 180 Export market 147, 178 Export restriction 86 Ex post judicial control 160 Expressions of culture 158, 158n163, 245, 246 External competence 258, 258n69, 258n72, 259 Extraterritoriality 123, 285 Fair and equitable treatment 61, 61n296, 62n298, 92, 92n524, 186n340 Fairness 3, 15, 73, 95, 100, 108n7, 115, 273, 279 Fair trading practice 273 Fair use 154, 178 False allegation 6, 19, 243 fao International Treaty on Plant ­Genetic Resources for Food and Agriculture ­(itpgrfa) 136, 157, 161, 219n572, 248, 249, 249n755, 284n5 Farmers’ rights 219, 284 Fediol exception 260, 262, 267 fiamm case xxxiii, 252n16, 253n23, 253n28, 257n60, 259n80, 260n84, 260n87, 262n98, 262n102, 263n105, 263n107, 264, 264n112, 264n114, 268n143 Fitzmaurice 12n84, 81, 81n441 Folklore 7, 131n172, 131n173, 134n3, 136n11, 138n29, 139, 140, 140n36, 142n51, 142n54,

Index 143n60, 145n72, 146n79, 147n91, 149n109, 150n112, 150n113, 150n116, 151n120, 151n122, 151n124, 157n158, 160n176, 161n190, 162n191, 170n239, 171n246, 172n251, 172n252, 183n321, 220n579, 223n597, 232n653, 239n708, 240n708, 247n744 Food security 136, 223, 284 Forced labour 122n106, 126, 128n149, 283 Foreign investor 92 Foreign trade balance 78 Foster v. Mountford case 168, 168n228 Four Directions Council 135, 135n7, 135n8, 185, 207, 212 Fragmentation of international law 13, 111, 111n31, 111n35, 112, 112n38, 190n365, 191, 191n375, 191n376, 192n377, 193, 193n384, 193n386, 193n389 France 30n85, 251n11, 256 Freedom of association 121, 122n106 Freedom of competition 4, 225 Freedom of expression 73n385, 153 Freedom to pursue an economic activity  154 Free market system 42 Free-riding 223 Free-trade area 194 Free trade theory 1 Fundamental freedoms 261 Furundžija case 197 Gainful intent 182 Gap-filling 95, 174 gatt 1947 95, 264, 268 gatt acquis 77 General Agreement on Trade in Services (gats) 13, 13n95, 47, 91, 93, 194 General Assembly 131n171, 175, 203, 205n459, 288 General clause 15, 37, 38, 45, 55, 56, 64, 64n318, 67, 68, 70, 73, 74, 106, 215, 254, 270, 275, 279, 281, 290 General Council 60n284, 194 General interest 2, 120, 127, 154, 158, 286 General international law 12, 94, 111n35, 186, 189, 190 General principle of law 11n81, 94, 112n35, 186, 196, 199, 235, 288 General public 158, 200

Index Geographical origin 17, 19, 20, 35, 121, 145, 146, 274, 283 German Act Against Unfair Competition  64n319, 75n400, 94n556, 108, 115n63, 115n68, 116n75, 215n540 German Democratic Republic (gdr) 42 German Federal Court of Justice 255 Germany 2n10, 4n38, 22, 252, 252n18, 264n110, 267n137, 268, 269n149, 271n165, 271n167 Germany v. Council case xxxiii, 2n10, 264n110, 267n137, 268, 269n149 Globalization 127, 147n92, 220, 233n668 Gloszczuk case xxxiv, 261, 261n92, 269n154 Good faith 11n81, 12, 14n101, 29, 56n261, 68n347, 93–95, 95n564, 95n565, 95n566, 95n568, 95n569, 95n570, 95n571, 97, 99, 99n598, 99n602, 103, 106, 106n653, 119, 119n95, 174, 191, 200n438, 203, 204n458, 235, 235n681, 236n682, 271–273, 275, 279, 289 Good faith interpretation 191, 275 Guatemala–Cement i case xxiii, 10, 10n70 Guatemala–Cement ii case xxiii, 81, 81n439 Guerin case xxxviii, 209, 209n500, 210, 212n519 Guidelines on Pacific Health Research 200 Haas 9n64, 9n65, 39n146, 39n148, 39n149, 40n150, 44n179, 50n220, 51, 51n225, 51n230, 52n231, 52n232, 52n234, 117n81, 250n2, 255n40, 259n75, 265n126, 269n150, 270n159 Hale 248 Hard law 15, 49, 114, 277 Hardship 119 Harmonization measure 101, 262 Harms, D. 47n200, 242, 242n727 Harms, L.T.C. 136n13, 245n739 Havana Charter 124, 124n124, 283 Havana Club case. see us–Section 211 A ­ ppropriations Act case Health care 224 Health Research Council of New Zealand  200 Heiltsuk Nation 157 Herbs 136, 138 Higgins 12n86, 70, 70n360, 70n361 Historical wrong 225

331 Honesty 15, 24, 48, 73, 88–103, 108, 119, 186, 188, 231, 273, 279, 281 Honey Bee Network 180 Honour 91, 158n163 Host state 92 Hotel Cipriani v. Cipriani (Grosvenor Street) case xli, 237n689 Household purpose 182, 288 Hudec 29, 29n70 Humanity 154, 156n154, 156n155, 171n251, 223, 247n743 Human right xlvi, xxxvii, 2, 14n99, 15n105, 49n212, 91, 110n25, 110n27, 111n33, 111n35, 122, 122n108, 123n117, 124, 125, 125n132, 128, 129, 132n125, 151–153, 152, 153, 154n141, 167n222, 181n307, 187n343, 187n346, 189n363, 190n365, 190n370, 190n370n, 191n375, 193n382, 193n387, 193n388, 194n390, 204n462, 208, 210, 210n505, 222n592, 223n592, 233n667, 236, 236n683, 245n739, 247n743, 264, 264n114, 264n115, 265 Hungary 101n613, 133 Husband 248 icj Statute 52, 70n364, 113, 122, 186, 190, 196n409, 236 ilc Study Group on the Fragmentation of International Law 112, 191, 193 Ill intention 104 Illiteracy 160 ilo Convention 100 129, 129n153 ilo Convention 111 129, 129n155 ilo Declaration on Fundamental ­Principles and Rights at Work (ilo Declaration) 121 ilo Declaration on Social Justice for a Fair Globalization 127 Impartiality 93 Import ban 278 Import restriction 51, 84 Incentive 217, 220, 222, 285 Incorporation theory 54, 55 India 10n74, 12, 12n88, 70n364, 84, 95n572, 96, 96n575, 96n576, 138, 150n111, 150n116, 162n192, 170n239, 198, 232, 237, 241, 266n133, 285 Indian Patents Act 143, 183n321, 232n658 India–Patents (us) case xxiii, 12

332 Indigenous and Tribal Peoples Convention (ilo Convention 169) 136 Indigenous Peoples’ Earth Charter 156, 157, 170, 199 Indigenous peoples’ rights 202 Indigenous Peoples’ Statement on trips  147n89, 149n109, 151n124, 156, 247n743 Indigenous technology 162 Indirect effect 271, 272 In dubio mitius 28–32, 275 Inducement to breach 21, 90, 177 Industrial design 34 Industrial espionage 125, 283 Industrial or commercial activities 6, 19, 21, 33, 120, 227, 243, 283 Industrial or commercial establishment 53, 54, 276 Industrial or commercial matters 6, 65, 87–88, 91, 95, 102, 103, 108, 109, 114, 119, 125, 130, 182, 224, 229, 231, 273, 278, 279, 283 Industrial property 5, 5n42, 23n30, 33, 34, 39, 46, 50, 60n282, 64n319, 94n561, 153n129, 164n203, 183n320, 215n533, 228n632, 230n642, 255, 274–276, 280 Industrial use 182 Informational good 179 Infrastructure 249 Infringement proceedings 267 Innovation 134, 136n13, 136n15, 140n36, 142n52, 148, 155, 170n239, 201, 212n513, 214, 219, 220n576, 221, 222n592, 224n609, 240n713 Instant customary law 203 Instituto Nacional de Biodiversidad 139 Intangible cultural heritage 143n58, 157, 162n192, 209n498, 214, 220, 241 Intellectual achievement 134, 141, 147, 159, 214, 284 Intellectual activity 147 Inter-American Commission on Human Rights 210, 210n505 Inter-American Development Bank 163 Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore (igc) 7, 133, 133n187, 139, 148, 148n99, 149n103, 162, 167, 170, 205n466, 226

Index Internal competence 258, 259 Internal market 115n63, 180, 181, 261 International Code of Conduct for Plant Germplasm Collecting and Transfer 143 International Convention on the Harmonized Commodity Description and Coding System 189 International Court of Justice 11n81, 11n82, 12n84, 13n89, 13n91, 24n34, 24n35, 30n85, 52, 69, 69n356, 70n360, 73n381, 181, 181n306, 195, 196n404, 197, 197n412, 203, 203n456, 277 International Covenant on Civil and Political Rights (iccpr) 122, 128, 128n50, 183n390, 236, 236n683 International Covenant on Economic, Social and Cultural Rights (icescr) 122, 128n150 International Criminal Tribunal for the ­former Yugoslavia 196, 197n411 International custom 128, 203 International Fruit Company case xxxiv, 264n110, 268, 268n147 International Law Commission (ilc) 29n75, 70, 79n359, 99n598, 111, 131n171, 190n365, 191n375 International News Service case xliii, 19, 19n11, 216–222 International public order 100 International responsibility 271 International Society of Ethnobiology 199 International standard 43, 58, 60, 120, 123n118, 281 International Tribunal for the Law of the Sea (itlos) 118, 118n94 Internet 3, 164 Inter partes 70, 194, 195 Interpretation of Peace Treaties case xxix, 69, 69n356 Inter se modification 193, 194, 194n392 Intervention in market forces 120 Intimidation 231 Inuit Tapiriit Kanatami 199 Investment law 62n302, 92, 186n340 Investor-state dispute settlement 236 Invocability 253–256 Iran-us Claims Tribunal cases 186 Ireland 13n89, 33n106, 38

Index Iure naturae aequm est neminem cum alterius detrimento et iniuria fieri locupletiorem 186 Ius standi. see Standing Jacob 23n29, 23n30, 23n31, 47n199, 73n384, 73n385, 134, 214n529, 215n535, 225, 253n22, 253n23, 257n63 Jaconiah 134 Japan 8n62, 12n83, 12n84, 14, 14n100, 14n102, 29n75, 29n76, 37n128, 49n210, 53n243, 57, 58n270, 67, 67n340, 67n342, 70n364, 71n365, 72, 73n377, 73n378, 81n446, 98n586, 100n612, 102n620, 150, 150n114, 222 Japan–Alcoholic Beverages case xxiii, 12n83, 12n84, 14, 14n100, 14n102, 29n75, 29n76, 37n128, 49n210, 53n243, 57, 58n270, 67, 67n340, 67n342, 70n363, 71n365, 72, 73n377, 73n378, 81n446, 98n586, 102, 102n620 Japan–Alcoholic Beverages ii case xxiii, 12n83, 12n84, 14, 14n100, 14n102, 29n75, 29n76, 37n128, 49n210, 53n243, 57, 58n270, 67, 67n340, 67n342, 70n364, 71n365, 73n377, 73n378, 81n446, 98n586, 102, 102n620 Japanese Patent Act 150 Job market. see Labour market Judge-made law 69 Judicial activism 69, 112, 242 Judicial economy 29 Judicial restraint 57 Juridical-economic standard 119–121, 129 Juridification 263 Jus cogens 122, 128, 131n171, 190, 190n369 Justiciability 253, 270 Kadi case xxxiv, 251n13, 263n106 Kallawaya 138n22 Kamperman Sanders 22n28, 23n29, 45n188, 55n256, 79n434, 93n542, 94n550, 100n613, 113n47, 135n6, 186n337, 186n339, 186n341, 187n342, 188n350, 210n507, 213, 213n526, 215n353, 217n553, 220n576, 224, 224n605, 229n640, 230n642, 230n643, 230n645 Kava 150

333 Kelsen 99n595, 99n596, 208, 209n494 Kimberley Declaration xlviii, 207, 247n743 Know-how 136, 152, 205n469, 212n513, 233, 241 Köhler 25n43, 72n375, 73n383, 75n401, 77n415, 77n418, 80n436, 80n437, 82n456, 82n457, 84n466, 85n471, 85n472, 85n476, 88n492, 88n496, 88n499, 89n502, 116n70, 116n75, 116n77, 125, 125n130, 125n131, 126n134, 214n530, 231n649 Korea xxiv, xxvi, xxviii, 29n76, 34n110, 67, 67n340, 67n341, 81n446, 110, 110n27, 112, 112n37, 117, 133, 149n108, 181, 181n309, 194, 195n397, 365n71 Korea–Dairy case xxiv, 29n76, 67, 67n340, 67n341, 181, 181n309 Korea–Procurement case xxiv, 110, 110n27, 112, 112n37 Korea–Various Measures on Beef case xxiv, 34n110, 194, 195n397 Kuijper 187n343, 187n344, 256n57, 257, 257n59, 262n97, 263n105, 263n108 Kunarac case xxx, 196, 197n411 Kupferberg case xxxv, 250n4, 252n17, 253n23, 256n52, 257, 257n58, 257n64, 257n65, 261n90, 269, 269n157 Labour costs 124, 129, 284 Labour market 126 Labour theory 206 Lamy 1n8, 12n85, 13n89, 52n236, 56, 57n266 Land title 184, 209, 210, 287 Large Civil Aircraft case xxiii, 111n35, 192, 192n378 Latent demand 278 Law-abidance 98, 116, 278 Lawful practice 107, 109, 281 Law-making 137, 174, 201, 268 Law of the Kyrgyz Republic on the Protection of Traditional Knowledge 198n417, 232, 232n658 Lawson 35n120, 39n144, 50n221, 52n231, 52n232, 143n59, 143n60, 151n122, 157, 223n595 Least-developed countries 51 Legal cause 188 Legal certainty 245 Legal clarity 68

334 Legal costs 182 Legal definition ix, 15, 64, 68, 70, 71, 90, 192 Legal effect 19, 65, 127, 266 Legal example 6, 18, 21, 74, 176 Legal families 119 Legal force 64, 114, 130, 201, 276, 279 Legal interest 181, 181n307, 288 Legality xxix, 253, 259, 261, 267n137 Legal nature 49, 63, 64, 203 Legal person 53, 54, 77, 163, 167, 168 Legal remedies 6, 40, 106, 275 Legal subject 236 Legal transaction 75 Legal unity 81 Legitimacy 13, 90, 189 Legitimate expectations 71, 95, 96, 103, 175, 282 Legitimate interests 80, 84, 97, 107, 180, 184, 230 Level playing field 15, 115, 273, 278 Lex posterior 44, 44n182 Lex specialis 44n182, 68, 176, 231 Liability criminal 60, 231 non-contractual 264 Liberalization 2, 3, 15 Licence agreement 162 Lifestyle 201, 220, 224n612 Light bulb 155 Likeness 25, 72, 98 Lisbon Revision Conference 6 Literary and artistic works 139 Living costs 126, 283 Lobbying 149, 249 Local language 222 Locke 206, 206n474, 206n475 Lomé Convention 43, 44, 263, 270 Lomé waiver 43, 44 London Revision Conference 6 Lord Justice Fry 47, 55 L’Oréal v. Bellure case xli, xxxv, 23n29, 23n30, 47n199, 72, 72n373, 73n384, 73n385, 214n529, 215n535, 225, 226n621 Mabo 168n225, 184, 184n330, 208n493, 209, 209n501, 210, 210n502, 210n503, 210n507, 212, 212n516, 212n519, 213, 213n520, 213n522, 225n615 Maca 150

Index Malice 104 Mandate 10, 34, 62, 98, 113, 129, 131, 152, 234, 264 Manley 6n13, 148n96, 178n287, 184n327, 219, 219n574, 224n608, 237n695, 239n708 Manufacturing process 6, 19, 21, 121, 243, 283 Market access 76 Market adjustment process 4 Market behaviour regulation 77 Market failure 4, 222 Marketing approval 177 Marketing restriction 73 Marketplace 2, 3, 273 Market selection process 280 Market value 169 Mataatua Declaration 151n124, 156, 171n251, 247n743 Material breach 268 Matsuura 214 Max Planck Institute for Innovation and Competition 134 Mayagna (Sumo) Awas Tingni Community v. Nicaragua case 210, 210n505 Measure at issue 76, 81, 86 Medicinal knowledge 134 Melanesia 169 Membership 30, 55, 69, 119, 121, 169, 175, 185, 187n345, 191, 192, 193, 196, 200, 230, 258n70, 274, 276, 279, 287, 289 Merck 139, 250n7, 257n63, 257n67, 259n77, 271n165, 271n166 mercosur 119 Mestmäcker 107, 107n3, 115n66 Methodology paper 132 Mexico–Corn Syrup (Article 21.5–us) case  xxiv, 109, 109n22, 182n313 Mexico–Taxes on Soft Drinks case xxiv, 110, 110n26 Mexico–Telecoms case xxiv, 47, 47n202, 124n124 Micklitz 4n34, 20n13, 34, 34n111, 34n114, 42n166, 55n255, 56n258, 56n259, 64n318, 77n418, 79n435, 87n481, 88n491, 97n583, 100n608, 102n617, 103n630, 215n541, 243n731, 250n9, 254n29 Microsoft v. Commission case xxxv, 272, 272n171 Milpurrurru v. Indofurn case 157n161, 213, 213n521

Index Ministerial Conference 45, 194 Minority right 212 Misappropriation doctrine 22, 22n28, 213–216, 214n527, 215n540, 217, 217n555, 218, 219, 221, 225, 226, 228, 232, 242, 288 Misleading and Comparative Advertising Directive (mcad) 2n17, 38, 72 Misrepresentation 3, 20, 218 Model contract 160 Model Provisions for National Laws on the Protection of Expressions of Folklore Against Illicit Exploitation and Other Prejudicial Actions 140 Molestation 231 Monism 256, 290 Monopoly 25, 146, 230, 278 Moral conviction 99, 100, 281 Morality 13, 91, 99, 103, 281 Moral term 91 More economic approach 103 Most-favoured-nation 62 Motivation 37, 104, 158, 281 Motive 105, 156, 219 Motorcyclist 108 Multilateral System 157, 248, 249 Multi-layered relationship 9 Munich 134 Mutually agreed terms 159, 204, 205n469 Nagoya Protocol xlv, 134n2, 135n9, 137, 138, 138n21, 146n76, 160n180, 166, 167, 171, 204, 205n464, 206, 211, 224, 235, 237, 237n692, 244, 244n736, 288 Nakajima exception 260, 262 National Basketball Association v. Motorola case xliv, 226, 226n623 National Biodiversity Authority 198, 232 National Commission for the Protection of Access to Peruvian Biological ­Diversity and the Collective Knowledge of ­Indigenous Peoples 232 National Inventory Project 240 Nationality 55n253, 172, 173, 284 National treatment 5, 58, 62, 67 Native title 184, 206, 208, 210, 211, 212, 212n512, 213, 229, 287 Natural justice 186, 206 Natural law 119 Neem 138, 150

335 Negative integration 15 Negotiating history 35, 52, 52n231, 273 Neumann 14n103, 30n83, 31n87, 45n190, 51n203, 118n94, 119n95, 127n140, 128, 128n143, 191n371, 192n377, 195n399 New fashion 22 Nicaragua li, xxix, xxxvii, 11n81, 203, 203n456, 206, 210, 210n505 Nicaragua case xxix, xxxvii, 203 Non-contractual 264 Non-derogation clause 36 Non-discrimination 63 Non-governmental organization 152, 200, 279 Non-legal standard 58, 108, 281 Non liquet 14 Non-retroactivity 39, 111, 111n35 Non-state actor. see Private actor Non-tariff barrier to trade. see Barrier to trade Non-violation complaint 82, 82n455, 96 North American Free Trade Agreement (nafta) xxx, 63n309, 110 North Sea Continental Shelf case xxix, 197, 197n412 Norway 133, 133n185 Novelty 144, 145, 151, 218, 228, 235, 240n709, 285, 289 Nullification or impairment 7, 77, 80, 81, 82, 85, 89, 118, 132 Numerus clausus 23 Objective assessment of the matter 71, 282 Objectivity 107 Onus probandi actori incumbit 106 Open source 156, 166 Opinio juris 128, 203 Optional Protocol to the International ­Covenant on Civil and Political Rights 236 Ordinary meaning 12, 26, 46, 48, 90–91, 102, 109, 112, 186, 191, 201, 203, 279 Ordre public 13 Organisation for Economic Co-operation and Development (oecd) 62n302, 124, 124n126, 125n132 Originality 214, 214n527 Overprotection 51, 73n385, 133, 280 Ownership 26, 137n16, 156, 188, 206, 207, 212n519, 213n521, 234, 244, 247n743

336 Pacific Model Law 158, 183n319, 198, 206n479, 207, 245 Pacta sunt servanda 99, 251 Pacta tertiis 194 Panizzon 13n97, 22n28, 39n146, 53n242, 69n357, 77n414, 94n549, 95n562, 95n573, 96n574, 102n622, 106n653, 131n173, 132n179, 133n189, 141n43, 143n55, 143n56, 146n86, 155n144, 161n190, 170n239, 175n268, 191n371, 191n372, 217n556, 218n561, 223n598, 245n739, 248n752, 248n754, 249, 249n759 Papua New Guinea 206 Parasitic act 100 Par conditio concurrentium 115, 282 Paris acquis 39, 44, 52, 254, 271, 275, 276 Paris plus 39 Paris Union 5, 6, 34, 36n123, 38, 39, 42, 43, 44, 45, 250, 271, 275, 289 Parliamentary Conference on the wto 56, 56n264 Parliament of the World’s Religions xlix, 100 Participation right 153 Parties to the dispute 110, 193, 194 Passing off 3, 5n45, 6n49, 18n6, 18n7, 20n13, 24n33, 27n58, 31n88, 33n102, 33n104, 34n114, 35n115, 35n116, 36n127, 37n136, 41n155, 41n157, 42n162, 42n165, 42n166, 61n291, 63n309, 65n325, 66n335, 68n344, 68n645, 79n428, 83n460, 87n485, 87n486, 88n488, 88n490, 102n626, 103n627, 104n636, 104n641, 105n646, 105n648, 109n16, 200n439, 226, 231n650 Patentability 144, 183, 232, 233, 234, 285 Patent application 150n114, 151, 183, 233, 237, 240n709 examination 238 office 142, 156n150, 182n318, 183, 234, 237, 237n695, 238, 240n709, 241, 242, 289 owner 9, 183 procedure 234 protection 234 Pauwelyn 1n3, 1n7, 2n10, 2n11, 9n63, 12n83, 13n95, 13n96, 13n97, 14n99, 14n101, 37, 37n132, 44n179, 56n262, 56n264, 61n291, 73n385, 109n22, 110n24, 110n25, 111, 111n29, 111n31, 111n33, 111n35, 112n36,

Index 112n37, 118n94, 123n118, 123n119, 130n161, 189n358, 189n361, 189n363, 190n365, 191n376, 192n377, 193n385, 193n389, 264n117, 265n119, 265n121, 647n231 Peremptory norm 131, 190, 236 Performer 140 Periwinkle 170 Perpetual protection 155, 228, 286 Personal autonomy 2 Personal scope 49, 53, 54, 79, 145, 167, 180, 254, 276, 285 Peru 133, 149n108, 159, 161, 167, 207, 221, 239n702, 240, 240n712 Peruvian Law No. 28216 137n16, 232 Peruvian Law No. 27811 157n158, 160n180, 161, 161n184, 162n193, 198n416, 207, 230, 239n702 Petersmann 1n2, 1n3, 2n10, 2n11, 2n12, 2n13, 2n15, 15n105, 40n150, 51n227, 56n262, 56n264, 56n265, 73n381, 109n22, 111n35, 119n95, 122n107, 130n161, 190n365, 265, 265n119, 265n125 Pharmaceutical company 139, 179 Philippines 183n319, 198n416, 207, 208, 208n491, 228n364, 287 Philippines Indigenous Peoples Rights Act  183n319, 198n416, 207, 208, 208n491 Photograph xxiv, 144, 246 Piggy-back 117 Plain Packaging cases 48 Plant genetic resources 136, 136n15, 200n433, 248, 249 Plant variety 144 Pluralistic society 99 Political Constitution of Peru 167, 207 Portugal 133, 221, 256n56, 257n60, 262n93, 262n102, 263n105, 264n110, 267n138, 269n156, 269n157, 272n169 Positive action 10, 275 Positive integration 15, 275 Positive protection 231, 233, 242, 244 Power of disposition 160, 249 Power to regulate 123 Pozol 138 Precautionary principle 196 Precedence 36, 225, 274 Predictability 69, 90, 101, 119 Preemptive effect 174 Preparatory work 40 Preshipment inspection 3, 3n18

337

Index Presumption against conflicts 46, 276 Price fixing 4 Price undercutting 128, 283 Primacy of European Union law 257 Prima facie case 7, 8, 80, 85, 85n468, 229 Primary law 257, 270, 272 Principle of effectiveness 29, 29n75, 30, 33, 34–38, 67, 274, 275, 277 Principle of general international law. see Principle of international law Principle of international law 111, 236 Principle of sincere cooperation 251 Principles and Guidelines for the ­Protection of the Heritage of Indigenous People 206 Prior art 150, 232, 234, 237, 238, 240n709, 289 Prior informed consent 195–197, 198n417, 199, 200, 202, 204, 205, 205n470, 238n702n, 244, 288 Private actor 63, 94, 96 Private autonomy 28 Private law 92, 159, 177, 253 Private right 24, 52, 79, 229, 253 Private use 182–183, 185 Privity 160 Processes and production methods (ppms)  122, 122n112, 123, 123n118, 124, 126, 283, 284 Procurement 75, 86, 88, 110, 110n27, 112, 112n37, 126, 278 Product development 125, 283 Production costs 124, 126, 129, 283 Professional diligence 92, 97 Professional organization 200, 201, 279 Property offence 188 Proportionality 73, 78, 112 Prospective purchaser 79 Protecting-country principle 62, 277 Protective purpose 15, 78, 79, 80, 84, 85 Protocol on the wto Accession of the People’s Republic of China 2 Public benefit 220, 221 Public domain lii, 147n89, 150n113, 152–156, 154n136, 154n137, 156n151, 165n209, 168, 169n237, 172, 172n253, 173, 207, 207n484, 207n485, 208, 208n47, 210, 213n525, 215, 219, 221n582, 228, 232, 241, 249, 287, 506 Public good 219, 223, 284 Public morals 13, 23, 47, 48, 91, 92, 103

Public order 48, 92, 100 Public policy instrument 4, 22, 224 Purposive interpretation 114 Quantity of the goods 6, 19, 21t, 35, 121, 283 Quasi-intellectual property right 242 Racke v. Hauptzollamt Mainz case xxxvi, 253n22, 256n52, 268, 268n146, 270n159 Radio 246 Rationalization 101 Reasonable period of time 264, 267, 268 Reciprocity 3n26, 40n154, 46n198, 68n344, 152, 153n134, 153n135, 174n260, 198n416, 215n535, 215n539, 226n625, 262, 269 Redress 118, 162, 202, 285 Reference norm 17, 36, 40, 41, 46, 254, 274 Registered office 54, 55 Register on Traditional Knowledge in ­Agricultural Products and Food 240 Registration 165n211, 241 Regulatory autonomy. see Regulatory freedom Regulatory freedom 30, 57, 252, 277 Reichman 23n29, 56n258, 153n129, 165n213, 177n282, 182n312, 196n405, 206n479, 207n485, 222n587, 222n589, 224n608, 226, 226n626, 233n670, 237n695, 239n708 Relatedness 114–117, 122–127 Related rights 139, 140n36, 146, 154n137, 214n531 Relative standard 61, 62, 277 Remedy xxxviii, 3n28, 15, 22, 25, 30, 106, 118, 134, 135, 159, 187, 213, 219, 224, 284, 289 Remuneration 122n106, 129, 284 Requirement of use 183–185 Research and development 219 Research costs 138, 215 Reservation 193, 194, 246 Res inter alios acta 250 Restitution 187 Retroactive effect 187 Reverse engineering 25, 273 Ricardo 1 Right of property 19 Right to collective bargaining 121, 122n106 Right to development 184 Right to food 152 Right to health 152 Right to regulate 281

338 Right to self-determination 152 Right to trade 2 Right to use 100n606, 165n210, 212, 287 Rio Declaration on Environment and Development 184 Rio de Janeiro 175 Role model 14, 101, 217, 217n559, 227 Roman law 186 Rome Statute 49, 236 Rule of law 2, 264 Rules of international law 12, 109–114, 120, 186, 190, 192, 193n386, 195, 269, 282 Sales 75, 84, 86, 88, 126, 155, 278 Sanction criminal 60, 231 trade 127, 130n59, 147 San Francisco 94 San/Hoodia case 160 Satellite 246 Schieving-Nijstad case xxxvi, 255, 255n41, 271n168 Schweitzer 107, 107n3, 115n66 Sealaska Heritage Institute 199, 206n479 Seat theory 54, 55 Secondary law 263, 272, 289 Second Treatise of Civil Government 206 Secrecy 25, 164, 165, 168, 169, 287 Selection function 89 Self-contained regime 14, 14n99 Self-executiveness 253 Separation of powers 45, 69 Shaman 156n150, 163, 182n318, 207, 237n695, 286 Sharing arrangement 146 Shift of power 56 Shuar 207 Singapore Ministerial Declaration 122, 125, 130, 194n391, 283 Single undertaking 195 Skilled worker 129, 284 Slavery 128n149, 131 Slavish imitation 100 Social order 209 Social welfare 265 Societal degradation 222 Soft law 113, 114, 191, 200, 203n457, 281 Sound recording 246 Source of law 11

Index South Africa 160n180, 161, 161n184, 210n504, 212n516, 212n519, 228n634, 238n702 Sovereignty 28 Spain 77 Spanish Unfair Competition Law 64n319, 75n400, 77n419, 94n558, 104n642, 108, 115n63, 115n68, 116n71, 127n139, 215, 217n555 Spirituality 157 Stakeholder 158, 206 Standards of living 1, 130, 222 Standing 9, 9n63, 56, 181–182 Stare decisis 70, 194 State conduct 9 State of the art 191, 233 State-owned enterprise 8 State practice 46, 117 Static reference 43–46, 276 Statistics 86 Steyn 11n81, 48, 48n207, 48n208 Stockholm Act 5, 43, 276 Stopgap 23, 73, 174 Structural unity 74 Sub-Commission on the Promotion and Protection of Human Rights 151 Subjective element 103, 104–106, 108, 280, 281 Subjectivism 101 Subsidiarity 26, 27, 265, 273 Substantive provision 17, 40, 142, 273 Substitute product 3 Successive treaties 193 Sui generis 3n26, 7, 40n154, 46n198, 68n344, 133, 140, 148, 149, 153n134, 153n135, 174n260, 197n199, 197n414, 198, 209, 215n535, 215n539, 226n625, 242, 249, 287, 288 Sui generis law 197–199, 197n414 Supplementary means of interpretation 37, 49, 52, 124n124, 197 Supplementary protection 27, 36 Supplier base 76 Surgical method 144 Suspension of concessions 85, 131, 267 Sustainable development 122n112, 123n114, 123n118, 130n164, 135, 145n72, 222, 223 223n597 Swakopmund Protocol 134n1, 140, 183n319, 184n328, 208

Index Swiss Act Against Unfair Competition  7, 64n319, 94n557, 100n612, 115n63, 126n134, 127n139, 222n587 Switzerland 9n65, 68n346, 221, 239n706, 252 Tanzania 134, 140, 140n41, 141, 228n634 Tariffs 8, 84, 117 Taste 101 Tax law 269 tbt Agreement 162 Technical assistance 130 Technical regulation 162 Technical safety device 169 Technology transfer. See Transfer of technology Television 246 Terminology 252, 252n21 Term of protection 144, 145, 154n136, 173, 228, 230 Terms of reference 110, 111, 189 Terra nullius 209, 210, 287 Territoriality of patents 147, 289 Territorial scope 183 Test data 149 Thailand 248 The Hague Revision Conference 45 Threat or Use of Nuclear Weapons case xxix, 70, 70n360 Time of interpretation 45, 279 Time of review 77, 83 Tkarihwaié:ri Code of Ethical Conduct 202, 202n453, 205 Topographies of integrated circuits 149 Tort claims 106 law 4, 41, 79 piggy-back 117 Trade Barriers Regulation 9n65, 266 Trade libel 3 Trademark collective 142 Trade Mark Directive 97 Trade name 31–33, 36 relatedness 114–117, 122–127 remedy 15 secret 25, 68, 163, 167, 186n338, 227 statistics 86 volumes 278

339 Trade-related aspects 1, 33n102, 39n146, 40n153, 60n284, 96n575, 117, 147n91, 156, 190n365, 247n746, 259n78 Trading practice 114, 273, 280 Traditional and Alternative Medicines Act  140, 228n634 Traditional cultural expression 137n15, 139, 140n36, 148n99, 186n338, 205n466 Traditional information 163, 164, 169, 287 Traditional intellectual property right 245, 248, 249 Traditional knowledge associated with ­genetic resources 137–139, 143, 148, 163, 167, 170, 202, 204, 205, 206n472, 211, 228, 235, 242, 249, 286, 288 Traditional Knowledge Digital Library 240, 241n718, 242 Traditional medicine 140, 144, 157n162, 224, 228 Traffic rules 116, 126 Tragedy of the commons 223, 223n602 Transfer of technology 152, 153, 221, 280 Transparency 79 Treaty of Amsterdam 258, 258n72 Treaty of Lisbon 257n62, 258 Treaty of Nice 258 Treaty of Rome 254 trips Council 230, 238n701, 240n708, 242 Turkey–Textiles case xxiv, 8n57, 9n64, 29n73, 83, 84n465 Turmeric 150 tv format 3 Twarog 137n19, 139n29, 143n55, 143n62, 147, 147n88, 147n93, 149n107, 152n127, 158n164, 158n167, 159n170, 161n187, 170n239, 187n347, 198n421, 200n432, 218n563, 220n575, 223n597, 223n598, 233n662, 233n664, 241n721, 245n739, 248n751 Typhoid 134 un Charter Conference 94 un Convention on the Law of the Sea ­(unclos) 118, 118n93 un Declaration on the Rights of Indigenous Peoples (drips) 22n591, 135n9, 166, 167, 183n319, 203, 204, 209, 224, 247, 288 Underprotection 51, 280

340 Understanding Regarding Biodiversity and Traditional Knowledge 149n109, 159 Undue influence 231 unesco xlvii, 135, 138n22, 140, 157, 214, 214n528 unesco Convention for the Safeguarding of the Intangible Cultural Heritage (ich Convention) 134n1, 143n58, 157, 209, 220, 241, 284n6, 285n7, 289n8 unesco Convention on the Protection and Promotion of the Diversity of Cultural Expressions 135 Unfair Commercial Practices Directive (ucpd) 4n33, 38, 41n159, 64n319, 73n385, 75n396, 78n424, 79n431, 89n509, 92, 94n555, 97, 102, 104n642, 106, 115n63, 231n649, 281 Unfair commercial use 21, 176, 177 Uniform application 133, 257 Uniform interpretation 62, 93 Uniformity 87, 100, 144 United Kingdom xli, xlii, xlviii, xxix, xxx, 7n54, 11n81, 13n89, 37, 38, 47n199, 48n207, 48n208, 88n499, 89n500, 89n504, 104n163, 108n13, 108n14, 188n348, 234n676, 248n748, 275 United Nations Conference on Environment and Development 175 United Nations Conference on Trade and Development (unctad) 13n91, 13n92,  13n97, 14n99, 17n4, 20n14, 20n15, 20n16, 23n31, 24n34, 25n41, 25n45, 26n48, 33n101, 37n129, 39n148, 40n154, 43n174, 48n207, 50n216, 50n219, 50n221, 51n223, 51n226, 51n229, 52n234, 59n280, 61n296, 62n298, 62n307, 82n451, 92n524, 96n577, 102n621, 126n137, 131n173, 136n13, 140n36, 142n52, 143n60, 144n67, 144n68, 154n140, 158n165, 159, 159n171, 164n203, 168n229, 170n239, 170n240, 170n244, 177n284, 183n324, 186n340, 214n533, 220n576, 221n581, 222n292, 224, 224n609, 229n339, 234n674, 240n713, 247n746, 252n17, 256n49, 256n57, 268n144 United Nations Convention to Combat ­Desertification (unccd) 136, 152, 154n141, 175, 205, 241, 289n8

Index United States Semiconductor Chip Protection Act 22 Universal Declaration of Human Rights (udhr) xvii, 122, 125, 131, 153n130, 209, 209n496, 248, 287 Unjust enrichment 23n29, 23n642, 186, 186n140, 186n141, 186n337, 186n338, 186n339, 187–189, 187n342, 205, 206, 211, 216, 230n645 Unlawfulness 119 Unwritten acts 45, 66, 277 Unwritten cases of application. see ­Unwritten acts upov Convention xlvii144, 145 Uruguay Round 39, 174, 175, 216n549, 256, 262n99, 262n100, 262n101, 284 us–Certain ec Products case xxv, 69n355, 187, 187n345 us-Colombia Trade Agreement 149n108, 159, 240 us–Continued Zeroing case xxv, 53n241, 70n364, 71, 71n365, 71n367, 85n468 us–Cotton Yarn case xxv, 74n386, 112, 112n36, 204n458 us–Gambling case xxvi, 8n57, 12n83, 13n94, 23, 23n32, 29n75, 29n76, 37, 37n131, 47, 48n204, 49n212, 59n277, 60, 60n287, 84n465, 91, 91n521, 91n522, 92, 92n528, 92n529, 92n530, 92n531, 109, 109n17, 115n65, 197, 197n413, 204n458 us–Gasoline case ix, xxvi, 12, 12n83, 12n84, 12n87, 29, 29n75, 29n76 us–Hot-Rolled Steel case xxvi, 47, 47n202, 72, 72n376, 94n550, 95, 95n567 us-Korea Free Trade Agreement 117, 149n108 us–Offset Act (Byrd Amendment) case xxvi, xxvii, 93, 93n545, 106n653, 132n175, 204n458, 272n169 us-Peru Trade Promotion Agreement  149n108, 159 us–Section 211 Appropriations Act case xxvii, 10n74, 26, 26n53, 29n75, 31n89, 31n90, 31n91, 31n92, 32n93, 32n94, 32n95, 33n99, 35n118, 37n128, 37n130, 38–42, 39n143, 39n144, 39n147, 46, 46n192, 52n231, 62n303, 95, 95n562, 106n653, 182n311

341

Index us–Section 110(5) Copyright Act case xxvii, 12n83, 39n144, 39n148, 40n151, 40n152, 44, 44n180, 45n189, 46, 46n195, 46n196, 49n195, 60, 60n285, 190n365, 276 us–Section 301 Trade Act case 1, 1n5, 2n10, 2n11, 2n13, 8n57, 8n75, 102, 102n624, 252, 252n16, 252n20, 265n123 us–Shrimp case xxvii, 9n64, 12, 13n90, 13n91, 45n186, 49n210, 50n216, 53n243, 59n277, 71n365, 75n397, 90, 90n512, 95n565, 123, 130n160, 189n361, 191, 191n373, 192n379, 201, 201n443, 203, 203n457, 235n679, 279 us–Softwood Lumber iv case xxviii, 48, 48n209 us–Stainless Steel (Mexico) case xxviii, 53n241, 70, 70n358, 71, 71n364, 71n367 us–Superfund case xxviii, 77, 77n413, 82n452, 89n506 us Supreme Court 19 us–Tuna ii (Mexico) case xxviii, 123 Usufruct 213, 287 us Uniform Commercial Code 94, 94n554 us–Wheat Gluten case xxviii, 67, 68n343 us–Wool Shirts and Blouses case xxviii, 8, 8n57, 29n73, 70, 70n363, 82n455, 196, 196n408 Ut res magis valeat quam pereat 30, 30n77 Valerian 180 Value judgment 97, 279 Van Gend & Loos case xxxvii, 254, 254n36, 261n89 Van Parys case xxxvii, 259n80, 260, 260n84, 261n88, 262n93, 262n98, 262n102, 263n105, 263n107, 268n143 Venezuela 183n321, 198n416, 208n491, 232n658, 287 Violation complaint 7, 80, 82 Vocational training 129, 284 Voltaire 213 Voluntary self-regulation 41

Wage level 125, 126, 286 Waiver 43, 44, 194 Washington Revision Conference 6 who Declaration of Alma-Ata 136 Wiebe 213n524, 215, 215n536, 217n555, 226n622 Wild west 116, 278 wipo Convention 33n101, 34, 147, 274 wipo Draft Provisions 148n99, 205, 205n466, 209n497, 243, 243n728, 288 wipo fact finding mission 175, 175n270 wipo Model Provisions 18n8, 27, 27n54, 27n56, 41, 41n154, 41n156, 65n321, 66n335, 75n396, 76, 76n403, 90, 104n637, 105n650, 125n133, 227, 274, 279 wipo Performances and Phonograms Treaty 140 wipo Secretariat 137 Worker protection 79 Work result 206 Wrongful act 268n139 wto Agreement xlv, 1, 2n13, 3n20, 5n40, 9n66, 10, 17, 17n3, 29, 38, 39, 44, 50, 50n216, 51, 51n228, 51n229, 57, 60, 62n301, 70, 77, 77n414, 81, 83, 111, 115n60, 117, 122, 123, 130, 152n128, 156, 189, 190, 192, 193, 194, 195, 204, 222, 250, 250n5, 250n6, 253n22, 253n24, 257, 257n66, 259, 260, 261, 268, 276, 279, 290 dispute settlement 11n81, 47n53, 83n464, 94n547, 95n568, 101, 106n653, 109n22, 110n25, 111n33, 119, 123n117, 124n124, 236n682, 277 glossary 115, 115n64, 134, 135n4, 139n34, 156n151, 182n316 Membership 30, 55, 175, 185, 187n345, 192, 287 Ypes 93