DIRITTI INDIVIDUALI E GIUSTIZIA INTERNAZIONALE INDIVIDUAL RIGHTS AND INTERNATIONAL JUSTICE DROITS INDIVIDUELS ET JUSTICE INTERNATIONALE - LIBER ...
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DIRITTI INDIVIDUALI
E GIUSTIZIA INTERNAZIONALE
INDIVIDUAL RIGHTS
AND INTERNATIONAL JUSTICE
DROITS INDIVIDUELS
ET JUSTICE INTERNATIONALE
LIBER FAUSTO POCAR
a cura di / edited by / sous la direction de
Gabriella Venturini Stefania BariattiISBN 88-14-14016-2
Il presente volume è pubblicato con i contributi di:
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Gabriella Venturini Stefania Bariatti
Università degli Studi di Milano Università degli Studi di Milano
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Università LIUC di Castellanza Università degli Studi di Milano
Costanza Honorati Ilaria Viarengo
Università degli Studi di Milano-Bicocca Università degli Studi di Milano
Angela Lupone Maria Caterina Baruffi
Università degli Studi di Milano Università degli Studi di Verona
Michele Tamburini Maria Migliazza
Università degli Studi di Milano Università IULM di Milano
Comitato di Redazione
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Università degli Studi di Milano
Patrizia Bonetalli - Matteo Bonfanti - Erica Brandolino - Serena Crespi
Cristina Mariottini - Anna Giulia Micara - Giuseppe Serranò
Segreteria editoriale
Università degli Studi di Milano
Chiara Pozzi*
ANTONIETTA DI BLASE
HUMAN-RIGHT-RELATED ASPECTS
IN THE SETTLEMENT OF INTERNATIONAL DISPUTES
ON INTELLECTUAL PROPERTY RIGHTS
TABLE OF CONTENTS: 1. The Human-Right Dimension in the TRIPs Rules. – 2. Pos-
sible Competition between the WTO System and the ECtHR for the Settlement
of Disputes Relating to IPRs. – 3. The Method Followed in Assessing the Legisla-
tive Acts of the State in the WTO and in the ECtHR Proceedings. – 4. The Con-
tribution of the ECtHR to the Interpretation of the Right of Priority. – 5. The
Contribution of the ECtHR to the Strengthening of the Instruments to Recover
Damages Resulting from Infringements of IPRs. – 6. Concluding Remarks.
1. The TRIPs has been substantially enacted as an instrument for trade
liberalization. According to the view underlying the whole WTO system, the
results achieved on the scientific and cultural plane are predominantly con-
sidered as a phenomenon which must be governed in order to avoid possible
distortions in world trade. Thus, TRIPs norms are conceived as an instru-
ment to improve guarantees against barriers to trade and protectionism, and
to build a juridical framework for the benefit of the economic interests of
1
States.
In comparison to the other agreements of the WTO system, however,
TRIPs seems more directly focused on the rights of individual and juridical
persons. For this reason, the agreement pays a special attention to the na-
tional rules adopted by Member States for the implementation of the rights
of individuals or companies. On the other hand, the implementation of indi-
viduals’ or companies’ IPRs is a matter left to Member States. When a dis-
pute arises before a WTO panel, States, not individuals, are considered the
*
Professor of International Law, University Roma Tre.
1
See, among others, A. LUPONE Gli aspetti della proprietà intellettuale attinenti al com-
mercio internazionale in G. VENTURINI (ed) L’Organizzazione Mondiale del Commercio2 2000,
113 et seq.276 LIBER FAUSTO POCAR
victims of an infringement, though the enterprises operating abroad are gen-
2
erally the entities more directly concerned.
According to Art. 8 § 1 TRIPs, each Member State can adopt measures
to protect public health and nutrition, and “to promote the public interest”
in the socio-economic and technological context, by introducing special
rules in its own legislation “provided that such measures are consistent with
the provisions of this Agreement” (Art. 8 TRIPs). Among possible excep-
tions relating to patent, a rule on compulsory licenses (Art. 31) is meant to
apply in case of national emergencies or other circumstances of extreme ur-
gency. Other exceptions pertain to genetic materials (Art. 27 § 3), and to the
“security exceptions” under Art. 73. The fundamental needs of peoples are
never explicitly referred to, except with regard to the Least-Developed
Countries (Art(s) 66, 67). All these provisions can be considered rather as
technical means apt to moderate the rigidity of the commitment for Member
States to protect IPRs, thus making it easier to comply with TRIPs rules.
The settlement of disputes concerning the infringement of IPRs is pri-
marily aimed at restoring the original balance between Member States which
has been jeopardized because of the infringement of TRIPs rules. Private
3
parties are not admitted in the proceedings before the WTO organs. They
profit in an indirect way from the outcome of a dispute submitted to WTO
4
organs. Within a WTO dispute settlement procedure, the consequences of
the infringement may take into consideration negative effects in different
sectors, such as unemployment, decline of production of near-by goods and
decrease of monetary earnings. For instance, non-protection of a patent
leads to expanding low-cost production, apt to slow down the exports from
the State directly concerned to a third State. The assessment of the injury
depends also on the volume of the trade involving companies of the claimant
State: it is considerably lower in a non-developed national market than in a
market with high-technology production.
Notwithstanding the economic view originally embraced by TRIPs, its
interpretation by WTO organs whenever they are called upon to apply it in
the settlement of a dispute can be influenced by the tendency to give an in-
2
Art. 64 TRIPs makes reference to the provisions of Art(s) XXII, XXIII WTO and the
rules of the DSU.
3
See, also for references, E. BARONCINI L’amicus curiae nell’OMC: accesso dei privati alle
procedure contenziose DCSI 2003, 111-176.
4
For instance, copyright-protected music products might be put at the disposal of the
public in a shop or coffee as a consequence of the settlement reached within the WTO proce-
dure for the settlement of the dispute (see Section 110 (5) US Copyright Act, Doc.
WT/DS160/R, 4.2.1999, EEC v US).ANTONIETTA DI BLASE 277
creasing weight to the interrelationship between IPRs and human rights. The
WTO Ministerial Declaration of November 2001, under the heading “TRIPs
Agreement and Public Health”, declared that a number of TRIPs provisions
5
provided the necessary flexibility, in line with the general principle that hu-
man rights are not absolute, but must be legally implemented through legis-
6
lative measures taking into account all other human rights. It is not only that
human rights represent a limit in the implementation of rules pertaining to
IPRs (e.g. promotion of health, food and labour). Rather, it is the right of the
society as a whole to take advantage of knowledge and of the technological
innovations which is inherent in the protection of IPRs. Thus, the moral
right of the author of an artistic accomplishment or of a new product and the
7
right to receive an adequate compensation for the work should be recog-
nized taking into account the co-existing right of everybody to culture and to
share the advantages of a new product. Such a perspective is present in the
Universal Declaration on Human Rights of 1948 (Art. 27 § 2), notwithstand-
ing the tenuous link between human rights and intellectual property: “1.
Everyone has the right to freely participate in the cultural life of the commu-
nity, to enjoy the arts and to share in scientific advancement and its bene-
fits”. For this reason, IPRs cannot be considered only as the rights to recog-
nition of the paternity of a work or to obtain an adequate compensation, but
also as instruments to encourage creativity and innovative production for the
benefit of the whole society. Such strict connection has not yet been consid-
ered in the practice of TRIPs, though the public policy objectives of national
systems for the protection of intellectual property have been recognized in
8
its Preamble.
The same emphasis is not present in the ECHR, prevalently focusing on
the rights of individuals or private entities, although the general economic
interests of States are not disregarded (Art. 1 Protocol No 1). However,
5
See WTO Doc. WT/MIN (01)/DEC/W/2, 14.11.2001, § 4.
6
In this sense E.U. PETERSMANN Constitutional Primacy and “Indivisibility” of Human
Rights in International Law? The Unfinished Human Rights Revolution and the Emerging
Global Integration Law in S. GRILLER (ed) International Economic Governance and Non-
Economic Concerns 2003, 253.
7
Art. 27 § 2 of the UDHR: “Everyone has the right to the protection of the moral and
material interests resulting from any scientific, literary or artistic production of which he is the
author”. Similar provisions are present in the ICESCR, Art. 15 § 1 litt. (c); in the American
Declaration of the Rights and Duties of Man of 1948; in the Additional Protocol to the Ameri-
can Convention on Human Rights in the Area of Economic and Social Rights of 1988 (“Pro-
tocol l of San Salvador”) Art. 14 § 1 litt. (c).
8
“Recognizing the underlying public policy objectives of national systems for the protec-
tion of intellectual property”.278 LIBER FAUSTO POCAR
given the presence in the context of the ECHR of a jurisdictional instrument
for the settlement of disputes, it is interesting to make a comparison between
the approach followed by the ECtHR and that followed by WTO organs
when seized of a dispute on IPRs. In evaluating the extension of IPRs, the
ECtHR is bound to consider the legitimate public interests of culture dis-
semination and general participation in the technological progress in order
to increase the social welfare. Whereas a refusal to grant protection of IPRs
may be examined by WTO organs within the limited framework of the ex-
ceptions provided for in the text of the Agreement, in the case-law of the
ECtHR responsibility for non-compliance with the rules of the ECHR must
be considered in light of the need to reach a fair balance between individual
9
rights and the general interests of the community. Such an evaluation is pos-
sible since the ECtHR is obliged to consider all the factors which are strictly
connected with the infringement. Moreover, the protection granted by the
ECtHR is, in a way, stronger, being less influenced by political choices and
by reciprocal concessions between States, especially when the application is
lodged by individuals or companies.
Unlike the proceedings ruled by WTO/DSU, a significant element of
strength of the ECtHR is that a complaint for violation of IPRs can be sub-
mitted not only by a Member State against another State party of the ECHR,
but also by private individuals or companies: in this way, a considerable
case-law may develop concerning assessment of infringements and extension
of IPRs, free from the political and strategic interferences which play a role
when a dispute is submitted to the WTO organs. Given the extremely con-
cise wording of Protocol No 1, Art. 1, which generally refers to the right of
peaceful enjoyment of “possessions”, the ECtHR plays an essential role as to
the interpretation of that provision and the extension of the protection of
IPRs, and may have an influence on the case law of TRIPs. Of course, it
must be taken into account that these achievements are consistent with the
prevailing economic and political interests of the countries belonging to the
regional area of the ECHR, and that such perspective is not necessarily
10
shared by States outside Europe.
9
ECtHR, 11.1.2007 Appl. 73049/01, Anheuser Busch Inc. v Portugal, commonly referred
to as the Budweiser case. This case represents the first one where the ECtHR applied the pro-
visions of the 1952 Protocol No 1, Art. 1, to IPRs.
10
We refer to the human-rights perspective in a sense different from that followed by the
UN organs under the ICESCR of 1966, aiming at the adoption of new conventions or
amendments of TRIPs in view of the sharing of the benefits of the artistic and technological
achievements (General Comment No 17, Doc. E/C.12/GC/1721.11.2005, § 41). In this per-
spective, one of the most recent outcomes in the field of IPRs is represented by Declaration ofANTONIETTA DI BLASE 279
2. Given the different perspective of the two instruments, it cannot be
excluded that a dispute on IPRs between two ECHR State Parties might be
submitted simultaneously to the WTO and the ECtHR. If we consider the
case that a recourse to the ECtHR is submitted by a State participating also
in the proceedings before a WTO panel, given the lack of consent of the de-
fendant State, the question of the admissibility of recourse to an external
11
mechanism arises. From the point of view of TRIPs, a restrictive interpreta-
tion in the sense of the exclusive character of the DSU procedure seems to
be in keeping with the choice made by States during the Uruguay Round to
incorporate the rules already administered by the main Unions (Berne, Paris
and Rome Conventions) within the WTO system and to consider them as
trade-related matters. Thus, the competence of WTO panels would be ex-
clusive even if the dispute might concern other crucial and important non-
12
trade aspects.
The chance for Member States to submit an IPRs case to an external ju-
risdiction should be admitted whenever the primary object of the dispute is
not focused on questions strictly connected with trade. The practice of
WTO organs seems to encourage such an interpretation. Thus, in relation to
th
a dispute decided on November 7 , 1990 concerning Thailand – Restrictions
on importation of and internal taxes on cigarettes, the panel asked the WHO
to present its conclusions on technical aspects of the case, such as the health
effects of cigarettes. The panel even underlined the special skill of that Or-
ganization as to the consequences on health of the opening of the Thai mar-
13
ket to cigarettes. On another occasion in 1996, the WTO Committee on
Trade and Environment recommended States to submit claims to the institu-
the rights of indigenous peoples of 13.9.2007 (Res. 61/295), recommending to adopt rules to
grant oral and customary transmission of artistic, scientific or literary production and collec-
tive administration of the benefits deriving from IPRs, to ensure the respect of the principle of
prior informed consent, besides introducing financial measures to achieve these aims. On this
subject see, among others, P. CULLET Human Rights and Intellectual Property Protection in the
TRIPs Era HRQ 2007, 403-430.
See Art. 55 ECHR.
11
12
The exclusive character of the DSU mechanism for the settlement of disputes can be in-
ferred, among others, from the wording of Art. 23 DSU. See K.D. LEE, S. VON LEWINSKI The
Settlement of International Disputes in the Field of Intellectual Property in F.K. BEIER, G.
SCHRICKER (eds) From GATT to TRIPs. The Agreement on Trade-Related Aspects of Intellec-
tual Property Rights 1996, 303 et seq.
13
Doc. GATT DS10/R–37S/200 (Report of the panel), § 50. See, also for references, J.
PAUWELYN Conflict of Norms in Public International Law. How WTO Law Relates to Other
Rules of International Law 2003, 466 et seq.280 LIBER FAUSTO POCAR
tions established for the settlement of disputes relating to the environment,
14
using the instruments available within the WTO only as a last resort.
Failing the consent of the disputing States, the circumstance that a WTO
Member State initiates a proceedings outside the WTO system does not rep-
resent as such a reason for the WTO panel to decline its jurisdiction. This
was excluded by the Appellate Body in the case Tax Measures on Soft Drinks
and Other Beverages (Mexico v US), which reasoned that to decline jurisdic-
tion would run counter the right of the Party submitting the dispute to the
15
WTO competent bodies to obtain a decision by the panel. This view seems
to grant the WTO dispute settlement system a character of “strong safety
net” against non-compliance, which is not to be found in other international
16
instruments. The ratio of the conclusion could be that, although the decision
by an external institution has no binding effects on WTO organs, it could re-
17
duce the efficacy of the WTO action and damage the WTO authority.
3. Rather than a possible challenge to WTO authority, the coexistence of
the jurisdiction of ECtHR, aside to that of WTO bodies to examine human-
right related aspects of IPRs, can however be considered from a positive point
of view. In fact, though operating at the regional level, the ECtHR can support
and improve the respect of IPRs at the universal level. In deciding a case of in-
fringement of the rights of an IPRs owner, the assessment made by the ECtHR
may result very close to that made by WTO organs to which a dispute con-
cerning non-compliance with TRIPs is submitted. In both cases, the respon-
dent State has to prove that private subjects receive adequate protection
through the legal means available in the national system. We do not find in the
other Agreements within the WTO such a consistent reference to the legisla-
tion in force within Member States as the one which is present in Part III of
14
Doc. WT/CTE/1, § 178 (First Report submitted to the first WTO Ministerial Confer-
ence at Singapore in December of 1996). The Singapore Ministerial Declaration
(WT/MIN/96/DEC) acknowledged the complementary nature of trade liberalization, eco-
nomic development and environmental protection and underlined the importance of policy
coordination at the national level in the area of trade and environment.
15
See the decision of the Appellate Body (Doc. WT/DS308/AB/R, 6.3. 2006, § 46 et seq ).
A less rigid conclusion had been reached by the panel in the same case (Doc. WT/DS308/R,
7.10. 2005, § 7.17): “Even assuming, for the sake of argument, that a panel might be entitled in
some circumstances to find that a dispute would more appropriately be pursued before another
tribunal, this Panel believes that the factors to be taken into account should be those that relate
to the particular dispute”. On this aspect see the comment by A. ALVAREZ JIMENEZ The WTO
AB Report on Mexico-Tax Measures on Soft Drinks and Other Beverages LIEI 2006, 328.
The expression is used by J. PAUWELYN supra fn 13, 434.
16
17
See Y. SHANY The Competing Jurisdictions of International Courts and Tribunals 2003,
110 et seq.ANTONIETTA DI BLASE 281
TRIPs (Art(s) 41-61). The assessment made by the competent organ has a
general relevance towards a number of individual or juridical persons, includ-
ing those belonging to States which do not take part in the dispute. In this
sense, the settlement of a dispute on IPRs can be considered an instrument of
general control and redress of the national legislation on IPRs to comply with
18 19
TRIPs, in support of the legal infrastructure to protect IPRs.
Such an approach moves from the assumption that if international re-
sponsibility is found to arise at the moment when the legislative act produces
its effects, this would entail the risk of those irreparable damages which the
international norms on human rights were intended to prevent. For this rea-
son, an international breach would exist already at the very moment when
the inconsistency of a legislative act is definitely approved by the State’s or-
20
gans, even before such act had any negative impact of individuals. The need
to prevent from the beginning the risk of an international breach is present
also in the case-law of the ECtHR, whenever the international provisions are
aimed at respect of fundamental guarantees of the human being and imply
the duty to abstain from any behaviour which could engender human dig-
nity. Thus, the Court makes an evaluation about the possible results of the
18
See F.M. ABBOTT Towards a new area of objective assessment in the field of TRIPs and
variable geometry for the preservation of multilateralism JIEL 2005, 77-100.
19
Being the settlement of disputes within the WTO jurisdictional in kind, such instru-
ment differs from the control on the status of national legislation in force in the States parties
provided for within the framework of human rights convention. A non-jurisdictional instru-
ment of control has been entrusted to the Committee of Ministers, which can submit the
European Court the request of an opinion relating to the interpretation of the Convention and
Protocols (Art. 47): such opinions may concern the inconsistency of provisions which a State is
going to adopt with the ECHR. According to the ACHR, the Commission is competent to
evaluate the consistency of the national norms with the Convention. The ACHR provides also
for a consultative procedure before the Court upon application by the Commission or by a
Member State concerning the consistency of single national provisions: such procedure may
be initiated even for legislative acts not yet published at the date in which the application is
forwarded to the IACtHR. See A. CASSESE Il controllo internazionale. Contributo alla teoria
delle funzioni di organizzazione dell’ordinamento internazionale 1971, 183 et seq; A. MARCHESI
I diritti dell’uomo e le Nazioni Unite 2007, 102 et seq.
20
The TRIPs provisions create the obligation of conduct. See J. COMBACAU Obligations
de résultat et obligations de comportement. Quelques questions et pas de réponse in Mélanges
offerts à Paul Reuter 1981, 181. See the statement by the ICTY, 10.12.1998 IT-95-17/1-PT,
Furundzija, § 150, with reference to infringements of the duty to abstain from torture: “Nor-
mally, the maintenance or passage of national legislation inconsistent with international rules
generates State responsibility and consequently gives rise to a corresponding claim for cessa-
tion and reparation (lato sensu) only when such legislation is concretely applied. By contrast,
in the case of torture, the mere fact of keeping in force or passing legislation contrary to the
international prohibition of torture generates international State responsibility. The value of
freedom of torture is so great that it becomes imperative to preclude any national legislative
act authorising or condoning torture or at any rate capable of bringing about its effects”.282 LIBER FAUSTO POCAR
application of national law, taking into account the risk of that prejudice that
21
the international norms intended to prevent. For this reason, for example, a
national law hindering or limiting judicial remedies can be considered as a
breach of the obligations deriving from the European Convention to guaran-
22
tee compliance with human rights. Therefore, not only the actual applica-
tion, but also the mere enactment of national rules clearly inconsistent with
those provisions gives rise to international responsibility.
Notwithstanding the common attitude of the ECtHR and the WTO or-
gans, in the WTO context the injury deriving from the behaviour of a Mem-
ber State represents the primary element to be considered in order to assess
the existence of an infringement. Since TRIPs rules belong to the WTO sys-
tem, a recourse for non-compliance with TRIPs rules is subject to the condi-
tions set out in the WTO/DSU system. Injury represents as such a relevant
element in the assessment of the justiciability of a claim by the competent
23
organs of the WTO. Art. XXIII GATT, which is referred to in Art. 3 DSU,
seems to emphasize the “damage” caused as a consequence of the activity of
another Member State, rather than the failure to conform to GATT rules.
The essential element of the claim should be the “nullification or impair-
ment” of the advantages implied in the Agreement. However, GATT prac-
tice of dispute settlement had started to consider that an infringement of
GATT rules should be dealt with as a “prima facie nullification or impair-
ment”; thus, the claimant State is exonerated from the duty to prove to have
received a damage, provided that he can give evidence about the existence of
an infringement.
The presumption of an injury for the State claiming that the adoption by
another State of an act is inconsistent with TRIPs seems to be at the centre
of claims for violations of TRIPs norms, given the impact of the mere adop-
tion of a provision inconsistent with TRIPs on the economy of the claimant
21
See ECtHR, 7.7.1989, Soering v United Kingdom, § 87: “the object and purpose of the
Convention as an instrument for the protection of human beings require that its provisions be
interpreted and applied so as to make its safeguards practical and effective”; § 90: “It is not
normally for the Convention institutions to pronounce on the existence or otherwise of poten-
tial violations of the Convention. However, where an applicant claims that a decision to extra-
dite him would, if implemented, be contrary to Article 3 by reason of its foreseeable conse-
quences in the requesting country, a departure from this principle is necessary, in view of the
serious and irreparable nature of the alleged suffering risked (emphasis added), in order to en-
sure the effectiveness of the safeguard provided by that Article”.
22
In these cases it is possible to submit an immediate recourse before an international
body. See the ECtHR, 30.8.1996, Akdivar and others v Turkey, § 77.
23
Art. 3.1 DSU: “Members affirm their adherence to the principles for the management
of disputes theretofore applied under Articles XXII and XXIII of the GATT 1947, and the
rules and procedure as further elaborated and modified herein”.ANTONIETTA DI BLASE 283
State and the commercial intercourse between States, and on the capacity of
a State to build strategies connected with research and industrial production.
In the context of international economic and financial transactions even the
mere announcement that a government has the intention of adopting a legis-
24
lative act can produce immediate effects. In the field of intellectual prop-
erty, public notices have an extraordinary fallout on world commerce, as
well as on research activities aimed at obtaining the exclusive right of use in
production. Therefore, it seems that a Member State should be able to start
a proceeding for infringement against another Member State whenever a leg-
islative initiative may endanger its economic interests, apart from any ele-
25
ment of proof of its material impact. Thus, the requirement of the “nullifi-
cation or impairment” can be easily considered present in a legislative activ-
ity which appears to be inconsistent with the commitments inherent in the
26
participation in TRIPs. In fact, it is easy to demonstrate that when State or-
gans submit legislative proposals, they may set in motion a number of conse-
quences by making generally known their initiative. Such consequences seem
to produce an injury even before the effective enactment of the normative
provisions. On these grounds, it seems that a State must be held responsible,
24
According to E. VITTA La responsabilità internazionale dello Stato per atti legislativi
1953, 95, in the moment when a legislative act is published, the interested States are entitled to
arise objections if the execution of that act is capable to produce damages, even if an interna-
tional breach is not yet existing. A different opinion is expressed by E.J. DE ARECHAGA Gen-
eral Course RCADI 1978 I, 159, 276 et seq, in the sense that it is possible to claim upon the
infringement consisting in the mere adoption of a law, should the latter produce effects on the
market value of the properties belonging to foreign companies: “the mere enactment of legis-
lation by which property might be expropriated without compensation would not normally
create by itself an international claim susceptible of being raised in the judicial plane. Such a
claim could arise only when that legislation is actually applied. However, if the mere enact-
ment of the statute, by itself, has affected the marketability or the price of the property of an
alien, a legal claim could arise even though the statute has not yet been applied”. As a conse-
quence, the State whose interests are endangered by the said law can submit a claim even be-
fore the law is in force. The author makes clear that such claim may not be assimilated to a
claim on diplomatic protection.
25
In the case United States – Section 211 Omnibus Appropriations Act of 1998, the Appel-
late Body considered the act adopted by the US as an infringement of the TRIPs rules (Doc.
WT/DS176/AB/R, § 345). In its submissions to the WTO panel, the EC argued that the mere
existence of those sections caused an injury for the trade partners of US, because of the uncer-
tainty resulting in the international commerce: “A law reserving the right for unilateral meas-
ures to be taken contrary to DSU rules and procedures, may – as is the case here – constitute
an ongoing threat and produce a ‘chilling effect’ causing serious damage in a variety of ways”
(Doc. WT/DS152/R, § 7.88).
26
It is not necessary to refer to non-violation complaints: in fact, the attitude followed by
the national competent organs in creating an act which is inconsistent with TRIPs represents
in itself a behaviour incompatible with the Agreement.284 LIBER FAUSTO POCAR
provided the news about the said legislative activity be well-founded or its
real effects do match with the alarm produced by the media. This is exactly
what the WTO organs are competent to verify through the procedure pro-
vided for within the WTO system.
4. Apart from sharing with WTO organs a common method of ascertain-
ing the responsibility of a State for non-compliance with the rules on IPRs,
the ECtHR seems to provide a substantial support to the protection of IPRs,
which can be useful also in view of the implementation of TRIPs rules.
Given the individual-centered character of the jurisdiction of ECtHR, pri-
vate individuals and companies can start a considerable number of recourses
against infringements of IPRs by the States, thus contributing to the devel-
opment of an extended case-law of the ECtHR and a useful point of refer-
ence for WTO organs when dealing with infringements of IPRs.
In a case concerning a trade-mark under the provision of Protocol No 1,
Art. 1, the ECtHR gave a broad interpretation of the duty to protect legiti-
mate expectations of the persons entitled to apply for registration. The
Court unequivocally declared that the mere application for registration had
to be considered as giving rise, as such, to a right of “possession” for the ap-
plicant. For this reason, failure to register by the competent authorities of the
State in violation of the reasonable expectations of the applicant entails a
possible infringement of the duty to protect the intellectual property right at
27
play. The ECtHR referred to the right of priority rule, thus giving an indi-
28
rect relevance to TRIPs provisions. It was not the first time that commit-
ments of a State party of the ECHR deriving from other international agree-
ments had been considered by the ECtHR. However, the Court, not being
competent to interpret and assess the observance of another international
engagement, clearly refrained from founding its decision on TRIPs rules.
The Court only considered the right of priority as a rule in the legislation en-
acted by Portugal in compliance with the duty to abide by TRIPs rules. Ac-
cording to the Court, application for registration of a trade-mark involves as
such a “bundle of financial rights and interests... such applications may give
rise to a variety of legal transactions, such as sale or licence agreements for
consideration, and possess – or are capable of possessing – a substantial fi-
nancial value... in a market economy, value depends on a number of factors
and it is impossible to assert at the outset that the assignment of an applica-
tion for the registration of a trade mark will have no financial value”. Al-
27
ECtHR, Anheuser-Busch Inc. v Portugal, supra fn 9, § 80.
28
Ibidem, § 83.ANTONIETTA DI BLASE 285
though the protection of a trade-mark is conditional upon its registration ac-
cording to the Court it “possessed a definite financial value on account of its
29
international renown”. Thus, the ECtHR, in applying Art. 1 of Protocol No
1 as covering also the mere application for registration of a trade-mark, has
30
contributed to the interpretation of a right protected under the TRIPs.
The ECtHR approach suggests that in a dispute between two Member
States initiated before the ECtHR, the decision given by the European Court
would be in keeping with the broad meaning that the WTO organs would
31
propose for the right of priority in relation to the same dispute. However,
in interpreting Protocol No 1, the ECtHR has always given reasonable
weight to the legitimate general interests of the State, in a way which may
differ from the decision which could be adopted by WTO organs if seized of
a similar question. For instance, in the case Smith Kline and French Laborato-
ries Ltd. v The Netherlands, the ECommHR decided that in imposing an
obligatory license, the Netherlands competent authorities did not fail to
strike a fair balance between the interests of the applicant company and the
general interests of the State to encourage technological and economic de-
velopment. Therefore, the measures adopted by the Dutch authorities,
aimed at preventing abuse of monopoly situations, were in accordance with
32
the requirements under Art. 1 of Protocol No 1 to the Convention. Such
parameters seem not to be included in the meaning of Art. 31 TRIPs con-
cerning the use of patent without the authorization of the patent-holder.
5. One of the most interesting achievements of TRIPs is the presence of a
number of provisions on the duty for Member States to provide for fair and
equitable procedures to ensure the enforcement of IPRs covered by the
33
Agreement. The same purpose is at the basis of the provision of Art. 6 of
Ibidem, § 76.
29
30
Notwithstanding the relevance given to the priority rule, the ECtHR rejected the re-
course, since it did not envisage in the behaviour of the Portuguese organs elements of arbi-
trariness or manifest unreasonableness, given the legitimate intention of the Portuguese State
to secure compliance with the 1986 Agreement with the Czech Republic for the protection of
indications of source, appellations of origin and geographical designations. According to the
joint dissenting opinions of Judges Costa and Cabral Barreto, the interference of Portuguese
authorities in the right of priority of a company hat struck the “fair balance” between the gen-
eral interest of the community and the requirements of the protection of the individual’s fun-
damental rights.
31
According to L.R. HELFER The New Innovation Frontier? Intellectual Property and the
European Court of Human Rights HarvILJ 2008, 45, the attitude of ECtHR might impose ex-
cessive constraints on national legal systems, given the expansive ECtHR’s remedial powers.
32
Dec. 4.10.1990 Appl. 12633/87.
33
Part III of TRIPs.286 LIBER FAUSTO POCAR
the ECHR, providing for the right to access domestic remedies, which is far
less detailed and not centered on IPRs. However, the remedies for an indi-
vidual or a company to vindicate their IPRs have been examined by the
ECtHR in a large number of cases, either in connection with the ownership
of material goods, or in strict connection with IPRs, thus integrating the
34
brief wording of Art. 6 ECHR.
Strictly connected with the protection of IPRs is the duty to ensure an
adequate amount of compensation for IPRs owners. Although under the
TRIPs Agreement Member States have the duty to grant the right holder an
adequate compensation for damages suffered because of an infringement of
35
its IPRs, a decision of the kind by the WTO competent organs depends up-
on a request by the claimant State, which could be sensibly influenced by po-
litical considerations. On the contrary, the assessment of the injury resulting
from non-protection of a trade-mark, of a patent or of the copyright under
Art. 41 of the ECHR, is centered on the economic consequences for private
individuals or companies owners of an IPR.
One of the most significant steps in the ECtHR case law concerning the
right of property, which may be extended to the protection of IPRs, is the
method developed in favour of a relevant number of private right owners. In
the case Broniowski v Poland (decisions of 22 June 2004 and 28 September
36
2005), the Polish State had enacted a legislation that excluded or made
practically illusory the possibility of implementing the “right to credit”, by
removing from the Civil Code the provisions which constituted the direct
legal basis for vindicating claims for damages arising from the enactment of
legislation incompatible with the Constitution, thus excluding or making il-
lusory the possibility for the entitled persons to enjoy the “right to credit”.
34
See, among the most famous cases of the kind, specifically relating to the protection of
IPRs, the decision of the ECtHR, 20.11.1995 Appl. 19589/92, in the case British-American
Tobacco Company Ltd v the Netherlands, in which the Court, while maintaining that in a do-
main as technical as that of patents “there may be good reasons for opting for an adjudicatory
body other than a court of the classic kind integrated within the standard judicial machinery of
the country” (§ 77) and that a violation of the ECHR could be found if there was available a
remedy by an independent judicial body (§ 78), excluded in the specific case that a violation of
Art. 6 was present, since the applicant had not submitted its claim to the civil court for exami-
nation. In the case 21.2.2008 Appl. 37442/03, Sc Parmalat Spa et Parmalat Romania SA c
Roumanie, the ECtHR decided that the decision by the High Court of Justice to annul a final
administrative decision through which an infringement of a trade-mark had been declared
represented an infringement to the principle of the certainty, the right to an equitable process
and the right to respect of property.
35
Under Art. 45 TRIPs, “the judicial authorities shall have the authority to order the in-
fringer to pay the right holder damages adequate to compensate for the injury”.
36
Appl. 31443/96.ANTONIETTA DI BLASE 287
For this reason, the Court held that a widespread, systemic infringement had
taken place, affecting a whole class of persons, and that the respondent State
should take appropriate legal measures and administrative practices to se-
cure the implementation of the right to property in respect of the remaining
claimants, taking into account the many people affected and the systemic na-
ture of the violation. It is inherent in the Court’s findings that the violation of
the applicant’s right guaranteed by Art. 1 of Protocol No 1 originated in a
widespread problem which resulted from a malfunctioning of Polish legisla-
tion and administrative practice and which had affected and remained capa-
ble of affecting a large number of persons. The unjustified hindrance on the
applicant’s “peaceful enjoyment of his possessions” was neither prompted
by an isolated incident nor attributable to the particular turn of events in his
case, but was rather the consequence of administrative and regulatory con-
duct on the part of the authorities towards an identifiable class of citizens,
namely the Bug River claimants.
The solution followed by the Court, commonly referred to as “class ac-
tion”, has been explained as primarily designed to assist the Contracting
States in enacting a comprehensive solution to the problems originating from
an infringement of the ECHR and, at the same time, to secure the rights and
freedoms of persons as required by Art. 1 of the Convention, offering to
37
them more rapid redress.
6. Human-right related aspects of IPRs, which are at the core of a large
debate within the WTO and raise criticisms to TRIPs, leading to the urgent
request to adjust TRIPs to primary needs like health, food, culture, have been
the starting point for the development of a case law in the European context.
The approach of the ECtHR seems favourable to an extensive interpretation
38
of IPRs, as it is possible to infer from the case Budweiser. The protection of
IPRs in the framework of the ECHR has an element of strength in the right of
private individuals and entities owners of IPRs to apply and participate in
proceedings before the ECtHR. This does not exclude that a complaint sub-
mitted to WTO organs and to the ECtHR may lead to a different outcome,
given the human-rights centred approach followed by the ECtHR, aiming at
reaching a balance between the interests of IPRs owners and the general pub-
lic interests of the society. In fact, a different assessment might be given by
37
One of the purposes of the Court was also to avoid the increasing caseload that resulted
from large numbers of cases deriving from, among other things, the same structural or sys-
temic problem.
38
See supra fn 9.288 LIBER FAUSTO POCAR
the ECtHR, in comparison to the WTO organs, about the reach of specific
IPRs as appellations of origin and geographical designations, or about the
limits within which compulsory licences may be authorized.
In the absence of a priority rule in favour of the WTO organs, it may not
be excluded that the same dispute submitted to the WTO organs on IPRs
might also be referred by the complainant State to the ECtHR. In this case,
since the ECtHR seems to give some weight to commitments of Member
States connected with their participation in other international agreements, it
is not realistic that it would adopt a decision on the same dispute; rather, it
seems that it would avoid the risk of the coexistence of two different con-
trasting decisions. However, this does not mean that private individuals or
companies, being excluded from the WTO proceedings, necessarily abstain
from applying the ECtHR against a State member of the ECHR, on the same
dispute as the one already submitted to the WTO competent organs.
As the case law of the ECtHR shows, the strength of the enforcement
mechanisms provided for within the ECHR system should encourage an ef-
fort towards a better coordination of rules on IPRs at the multilateral and at
the regional level. A progress in this direction can be reached through the
adoption of a human-right-centred approach in the interpretation of TRIPs
by the WTO competent organs.You can also read
