Ambassador Mero (United Republic of Tanzania)

Brazil

1 Notifications under Provisions of the Agreement

30. We would like to make reference to the EU Trademark Directive and Trademark Regulation to share our concerns related to possible restrictions to the transit of legitimate goods that might be caused by this Directive. 31. The issue of abuse of enforcement actions of IPRs on goods in transit is unfortunately not a new one in this Council. In December 2008, a shipment of a generic medicine from India with destination to Brazil was unlawfully detained while in transit in the Netherlands. At the time, both Brazil and India expressed their full disagreement with the misuse of enforcement procedures by right holders, which prevented the supply of a life saving medicine to the Brazilian public health system. Those actions provided the basis for a request for consultations with the EU by Brazil and India questioning such seizures. 32. Brazil is aware of the damages brought by counterfeiting. Efforts by the Government and the private sector to curb the commercialization of such goods due to their negative effects to producers and consumers led to the creation of the National Council for the Combat of Piracy and Counterfeiting. As the experience of WTO Members from all regions shows, fighting counterfeit and piracy is a non stop activity which poses a number of challenges to enforcement agencies. 33. The enforcement of such rights, however, is not in a void of international trade law. Rules in WTO agreements treat freedom of transit as a basic tenet. While Parties may require the compliance of some provisions by goods in transit, they shall not be subject to unnecessary delays or restrictions; furthermore, those provisions imposed by contracting parties on traffic in transit to or from the territories of other contracting parties shall be reasonable. In this regard, many questions arise when examining the European Union's recent Regulation and Directive. While references to the Doha Declaration on TRIPS and Public Health are made in the recitals of the Regulation and the Directive, they are not reflected in the operative part of the texts. 34. Additionally, we have specific concerns as to the burden on the proprietor of legitimate goods in transit to prove that they do not infringe any trademark right. Contrary to what would be expected in such conditions, it is the proprietor of the good that is responsible to provide evidence that the proprietor of the EU trademark is not entitled to prohibit the placing of the goods on the market in the country of final destination. The declarant or holder of the goods however, may not have easy access to the customs or judicial system in the country of transit, perhaps because they are not based in that country. 35. Furthermore, there are few or no safeguards against the abuse of enforcement procedures. It is not clear how proprietors of goods targeted by illegal and/or illegitimate enforcement procedures should proceed in order to redress the eventual commercial damages caused by the suspension of release of such goods. 36. Right holders initiating an enforcement procedure, thus, have considerable leeway when deciding to pursue their rights or not, with the burden falling disproportionally on the proprietor of the goods in transit in order to provide evidence that there is no violation of rights in the country of destination. Such a condition would not appear to be conducive to the adequate treatment of the matter, but would seem rather as creating unnecessary complications and becoming a barrier to legitimate trade. 37. The rules based system Members sought to build and strengthen in the WTO is paramount for international trade relations. Therefore, adequate balance should be provided in this matter, and we remain open to discuss with the EU, the compatibility between the new directive with the TRIPS Agreement and other WTO agreements.

The Council took note of the statements made.

1.1. The Chairman said that, since its meeting in March 2016, the Council had received a number of updates to earlier notifications of laws and regulations notified under Article 63.2 of the Agreement:

• The European Union had notified a recast of its Trademark Directive, as well as amendments to its Trademark Regulation;

• Shortly after the Council's last meeting on 1 March, Fiji had notified its Patents Act and the Trademarks Act, as well the Copyright Tribunal Rules of Procedure and the Copyright Prescribed Countries Regulation. This complemented the series of legislative measures that had been notified prior to the Council's last meeting and that had been introduced by the then Chairman at that meeting;

• Mexico had notified a series of legislative measures in the field of geographical indications and copyright and related rights. These included amendments to the General Declaration on Protection of the Appellation of Origin "Mezcal", amendments to the Federal Law on Copyright and amendments to certain provisions on telecommunications and broadcasting; and

• Japan had notified its Patent Act, Design Act and Trademark Act, as well as related enforcement ordinances in each of these areas.

1.2. In addition, the Council had also received a comprehensive set of notifications from two newly acceded Members:

• The Republic of Seychelles had notified its Copyright Act 2014, the Industrial Property Act and Regulations 2014, the Customs Management Act 2011 and related Regulations, as well as the Penal Code 1955 and its 2012 Amendment Act;

• Kazakhstan had notified three main laws on copyright and related rights, on trademarks, service marks and appellations of origin of goods, and on patents, as well as a comprehensive set of other legislative measures.

1.3. The Chair suggested that these notifications be taken up as part of the review of the national implementing legislation of the Seychelles and Kazakhstan respectively.

1.4. Finally, since the circulation of the revised draft agenda on 26 May, the delegation of Canada had notified legislative measures that amend the Copyright Act and the Plants Breeders' Rights Act, as well as an Order Amending Schedule 1 to the Patent Act 2014.

1.5. These notifications of laws and regulations were available in the IP/N/1- series of documents, and the actual texts of laws in sub-series of documents in electronic form on the Documents Online database.

1.6. The Chairman noted that the Republic of Seychelles had also notified its initial responses to the Checklist of Issues on Enforcement. No other initial responses or updates to earlier responses had been submitted since the Council's last meeting. He encouraged delegations that were yet to do so to submit their initial responses to the Checklist. He also invited other delegations that had submitted responses in the past, some of them dating back almost two decades to 1997, to consider updating the information provided, as appropriate, bearing in mind that the Checklist had been established by the Council as an element of Members' notification obligations.

1.7. As regards notifications of contact points under Article 69 for the exchange of information and cooperation on trade in infringing goods, since the Council's meeting in March, the Seychelles had notified a contact point under Article 69 for the first time. The information on the Members' transparency toolkit page had been updated accordingly.

1.8. The Chair particularly encouraged any delegation that had notified a new or revised legislative measure, or a new or updated response to the Enforcement Checklist to briefly inform the Council about the key points of the notified amendment or information provided. This had almost become a well-established tradition, as many delegations had followed this practice at recent sessions of the Council. It had provided valuable insight into the notifications provided and had assisted in promoting awareness and transparency.

1.9. The representatives of Japan, the European Union, Canada and Mexico introduced their respective measures. Benin, Brazil, India, South Africa, China and Indonesia also took the floor.

1.10. The Chairman urged those Members whose initial notifications of laws and regulations remained incomplete to submit the outstanding material without delay. Equally, he urged other Members to fulfil their obligation under the TRIPS Agreement to notify any subsequent amendments of their laws and regulations without delay after their entry into force.

1.11. He especially encouraged Members to notify changes made to their laws and/or regulations to implement the Decision on TRIPS and public health. At least 52 WTO Members, including many of the world's major exporters of medicines, had adopted implementing legislation that allows them to use the Paragraph 6 System as exporters and/or importers. That said, only 19 Members, including the European Union, had formally notified such measures to the TRIPS Council. Completing the notification of all relevant laws and regulations could assist Members in preparing for the potential use of the System. It would also help the Secretariat in its efforts to provide informed technical support to Members in this area.

1.12. The representative of the Secretariat provided the Council with a further update on its work to improve the user-friendliness and cost-effectiveness of the notification system.

1.13. The representative of Chinese Taipei took the floor.

1.14. The Council took note of the statements made.

IP/C/M/82, IP/C/M/82/Add.1