2.2 - International harmonisation: IP treaties

Industrial Revolution. IP-rights are children of the Industrial Revolution. The introduction of the steam engine resulted in the development of new technologies and in the manufacturing of products on a large-scale. The steam train made high speed distribution of these products over large distances possible. This led to an increasing need for protection of (i) inventions and (ii) trademarks to indicate the origin of goods. In addition, the development of communication and reproduction technologies – such as the printing press, telegraphics, newspapers, telephony and later radio and television – made the exploitation and distribution of information and copyrighted materials possible at a rapid pace and on an international scale.

Conventions of Paris and Berne. Thus, the world became smaller and the intangible goods that the Industrial Revolution produced could be easily exploited internationally. This created a need for international regulations in a relatively early stage. This need was met in 1883 by the Paris Convention

for the Protection of Industrial Property, creating a union of countries for the protection of patents, trademarks, trade names and industrial designs. Three years later, the Berne Convention of 1886 introduced a similar regime for the international protection of copyright. These treaties prescribed that treaty countries had to provide for the protection of these IP-rights in their national law and also set minimum standards for that national protection. For industrial property rights with registration systems – patents and trademarks and designs – they introduced priority rights, making it possible to use an earlier filing date of a application for such a right in another treaty country as the relevant date for evaluating the novelty, distinctiveness or inventiveness of a national application during a period of respectively one year for patents or six months for trademarks and designs. However, the more important provision of these treaties probably is that treaty countries have to grant to treaty nationals the same protection as granted to their own nationals (assimilation principle). This truly created an international union in a first effort to create an international level playing field.

20th century. The Paris Convention and the Berne Convention have laid the foundation for the further international development of IP law in the 20th century. Until the seventies of the last century, there were also regular revisions of the treaties, which was necessary to keep pace with advancing technologies and the increasing economic importance of phenomena such as radio, television, internet, biotechnology, computers, semiconductors and software. Next to these two treaties for subareas of intellectual property law were established, such as (a) the Madrid Agreement Concerning the International Registration of Marks of 1891, (b) The Hague Agreement Concerning the International Deposit of Industrial Designs of 1928, (c) The Conventions of Rome (1961) and Geneva (1971) for the so-called neighbouring or related rights of performers producers of phonograms and broadcasting organisations (d) The Strasbourg Convention on the Unification of certain points of substantive law on Patents for Invention of 1963 and (e) the Patent Cooperation Treaty of 1970, which makes international patent applications possible.

TRIPs-agreement. In the second half of the previous century it became more difficult to revise the Conventions of Paris and Berne, which was in large part due to the opposing interests of third world countries as net consumers of intellectual property products and the West as net producers thereof. The threatening impasse in the international development of intellectual property law, which was much needed because of an emerging ‘global economy’, was diverted by the TRIPs Agreement of 1994 (Annex 1C to the Agreement establishing the World Trade Organisation). TRIPs effectively covers the entire field of intellectual property rights, except for plant variety rights. It encompasses industrial property rights of the Paris Convention as well as copyrights of the Berne Convention and neighbouring rights. Article 2 TRIPs provides that members shall comply (most of) these conventions and gives additional minimum standards that national IP-rights have to meet, which requirements not only cover the protection to be offered but also the enforcement of IP-rights. In addition, contrary to most other IP treaties, TRIPs is not a ‘toothless tiger’ because Member States can be sanctioned in case they violate a TRIPs obligation. The World Trade Organization has a procedure to bring claims before a Dispute Settlement Body, which can result in trade sanctions being imposed on a Member State that is found to be violating a TRIPs obligation.

2.2.1. Jurisdiction of the Court of Justice EU

Jurisdiction Court of Justice. The World Trade Agreement, which includes TRIPs, has not only been signed and approved by the EU Member States but also by the European Union itself. The consequence thereof is that the TRIPs agreement is part of the legal order of the Union. With the entering into force of the Lisbon Treaty on 1 December 2009 article 207(1) TFEU stipulates that “the commercial aspects of intellectual property” are part of the “common commercial policy” and thus falls within the exclusive competence of the European Union (article 3(1)(e) TFEU). The consequence thereof is that the interpretation of TRIPs provisions as part of European Union law is since then the exclusive domain of the Court of Justice of the European Union (“CJEU”). A major advantage thereof is that this safeguards a uniform interpretation of TRIPs provisions within the European Union and protects against differences in interpretation of these treaty provisions by different national courts.

Scope of TRIPs. The importance of this uniform interpretation by the Member States should not be underestimated given that TRIPs encompasses almost the entire field of intellectual property and often contains much more specific provisions than for instance the Berne Convention or the Paris Convention. Because TRIPs contains more detailed provisions, TRIPs engages deeper in the daily IP practice, In addition, article 2(1) TRIPs stipulates that the core provisions of the Paris Convention (articles 1 through 12 and 19) must be complied with. Furthermore, article 2(2) TRIPs provides that nothing in parts I to IV of TRIPs shall derogate from existing obligations that Members may have to each other under the Paris Convention, the Berne Convention, the Rome Convention and the Treaty on Intellectual Property in Respect of Integrated Circuits. This implies that because of the amendment of article 207 TFEU with the Lisbon Treaty per 1 December 2009, the interpretation of the relevant provisions in, for example, the Paris Convention and the Berne Convention have become part of the exclusive domain of the European Court of Justice. Article 9 TRIPs determines that TRIPs members shall comply with articles 1 through 21 of the Berne Convention. Through these references in TRIPs to the EU Treaty and the Berne Convention, the Court of Justice has also become the highest European authority with regard to the interpretation of these provisions.

Operation of TRIPs. The specific scope of the jurisdiction of the Court of Justice of the European Union on TRIPs has been a subtle issue. In the Dior-judgment (IPPT20001214) and the Merck-judgment (IPPT20070911), the Court ruled that the TRIPs Agreement had at the time been concluded by the European Union and its Member States on the basis of a shared competence. That meant that if it concerned an area in which the Community had not yet legislated, the possible direct effect of TRIPs was only a matter of national law. However, if Community legislation was in place for the subject in question, then European law would have been applicable. In those judgments, the Court stated that TRIPs provisions do not have, as a matter of European Union law, direct effect, but that European law must be interpreted in conformity with TRIPs to the furthest extent possible. The practical difference between direct effect and a with TRIPs conform interpretation seems hard to distinguish. This subtle division of jurisdictional authority between national law and EU law, as laid down in the Merck-judgment of 2007 (IPPT20070911), has become obsolete with the entry into force of the Lisbon Treaty at 1 December 2009 as the Court of Justice teaches in its Daiichi-judgment of 2013 (IPPT20130718). Since then, the interpretation of TRIPs law is part of the exclusive jurisdiction of the Court of Justice and a uniform interpretation and application thereof is a matter of EU law. See also: CJEU, 19 October 2023, GSTT, IPPT20231019.

Treaty law incorporated in EU directives. The jurisdiction of the Court of Justice regarding the interpretation of IP treaty provisions also runs via the route of European directives which incorporate IP treaty law. If a directive uses terminology that comes from an IP treaty, the consequence thereof is that this treaty norm has also become part of European law and thus is subject to the jurisdiction of the European Court of Justice.

Berne Convention. This is the case, for instance, with regard to the Berne Convention. In the Luksan-judgment (IPPT20120209), the Court ruled (under 59) that the European Union, although it is not a party to the Berne Convention, is under an obligation under article 1(4) of the WIPO Copyright Treaty, to which it is a party, to comply with the articles 1 to 21 of the Berne Convention when interpreting the 2001 Copyright Directive.

In TV2Danmark (IPPT20120426) the Court indicated (under 31) that by adopting the Copyright Directive of 2001, the European Union legislature is deemed to have exercised the competence previously devolved on the Member States in the field of intellectual property. Within the scope of that directive, the European Union must be regarded as having taken the place of the Member States, which are no longer competent to implement the relevant stipulations of the Berne Convention.

European Patent Convention. Since the Daiichi-judgment of 2013 (IPPT20130718) it is also clear that the Court of Justice of the European Union is authorized to interpret the patent law provisions of TRIPs. These TRIPs provisions concern the availability, scope and use of patents and thus cover the vast majority of patent law issues. These subjects are often not covered in detail in TRIPs in comparison with the provisions of the European Patent Convention in which all EU Member States are parties. The consequence of Daiichi seems to be that through the TRIPs route, the European Court of Justice is also the appropriate court to determine the actual implications of European Patent Convention for the EU Member States.