Minutes - TRIPS Council - View details of the intervention/statement

H.E. Ambassador Xolelwa Mlumbi-Peter
19.   This delegation is pleased to report to the TRIPS Council that Mexico has amended and supplemented various provisions of the Federal Law on Copyright and the Federal Criminal Code, and has issued a new Federal Law on Industrial Property Protection. 20.   This was notified to the Council pursuant to Article 63.2 of the TRIPS Agreement. 21.   The new Federal Law on Industrial Property Protection notified to the Secretariat and circulated in document IP/N/1/MEX/21; IP/N/1/MEX/I/15 on the WTO documents website - which will come into force on 5 November 2020, repealing the current Law on Industrial Property - introduces significant changes and improvements in various fields of industrial property. 22.   For instance, with respect to patents, it expressly establishes the "Bolar provision"; updates the mechanism for coordination between the Mexican Industrial Property Institute (IMPI) and the health authority as regards the marketing authorization process for pharmaceutical products; extends the period of validity of utility models; classifies handicrafts as industrial designs and strengthens regulations in that regard; and clarifies the grounds for declaring patents null and void. 23.   With respect to industrial secrets, it introduces the concept of misappropriation and exceptions thereto, and establishes administrative infringements. 24.   With respect to trademarks, it modifies the time used to calculate the validity of registrations; reduces requirements for well-known or famous trademarks; eliminates the obligation to register the licensing of rights in order to take effect vis-à-vis third parties, inter alia. 25.   With respect to geographical indications and appellations of origin, it enhances their concepts, reinforcing recognition thereof by identifying their individual requirements; specifies their legal nature as domestic goods; enables Congress to submit a request for a general declaration of protection, inter alia. 26.   With respect to enforcement, it contains changes intended to enforce the law more effectively and efficiently, including the possibility of requesting a determination of damage/injury vis-à-vis IMPI or the courts without the need for a prior administrative declaration; strengthens the framework of border measures and measures for the digital environment; establishes a conciliation mechanism as an alternative dispute resolution method, inter alia. 27.   The amendments made to the Federal Law on Copyright, notified to the Secretariat and circulated in document IP/N/1/MEX/23; IP/N/1/MEX/C/9 on the WTO documents website, were mainly aimed at protecting copyright and related rights concerning works, performances or phonograms existing in digital media, through technological protection measures (TPMs) and rights management information (RMI). In addition, the responsibilities of online service providers are regulated, and a notification and withdrawal mechanism has been established for materials or content protected by copyright or related rights that are transmitted, reproduced or sold online without the authorization of right holders. Measures have also been established to prevent misuse of the system. 28.   Lastly, the amendments made to the Federal Criminal Code, notified to the Secretariat and circulated in documents IP/N/1/MEX/22; IP/N/1/MEX/E/1 and IP/N/1/MEX/22/Rev.1; IP/N/1/MEX/E/1/Rev.1 on the WTO documents website, introduce penalties for various infringements of copyright or related rights, such as the act of decrypting or decoding encrypted programme-carrying satellite or cable signals without the relevant authorization; circumventing, for profit-making purposes, TPMs used to protect content subject to rights in the digital environment; alteration of RMI without authorization and for profit-making purposes; as well as recording, transmitting or copying, in full or in part, a protected cinematographic work at the time of showing at a cinema; among other acts.
1. The Chair invited the Secretariat to report on notifications that the Council had received since its meeting in July 2020.
2. A representative of the Secretariat said that the Council had received the following notifications under Article 63.2 of the TRIPS Agreement:
a. Chinese Taipei had notified regulations governing the filing of patent and trademark applications by electronic means, as well as regulations governing the application for compulsory licences for musical works and related royalties;
b. Australia had notified a consolidated version of its Patents Act 1990, as well as the Intellectual Property Laws Amendment Act 2020, which implemented the Productivity Commission Response Part 2 and Other Measures;
c. Mexico had notified revisions of the Penal Code, as well as a Decree amending the Federal Law on Copyright regarding copyright protection in the digital environment;
d. The United States had notified their amended Plant Variety Protection Act and corresponding Regulations;
e. The United Kingdom had notified over 70 pieces of legislation that represent the evolution of the UKs law on trademarks and on designs since 1996;
f. Pakistan had notified its Geographical Indications Act 2020;
g. Myanmar had notified its new Plant Variety Protection Law;
h. Hong Kong, China had notified a Copyright Amendment Ordinance, which enhanced the Copyright exceptions relating to persons with a print disability in order to meet the standards under the Marrakesh Treaty;
i. Ukraine had notified amendments regarding its patent law reform, as well as amendments to strengthen rights to trademarks and designs, and to combat patent abuse;
j. Japan had notified a further revision to its Unfair Competition Prevention Act of 1993, which provided civil remedies against acts of unfair competition with respect to "shared data with limited access"; and
k. Slovenia had notified an Act Regulating Collective Management of Copyright and Related Rights.
3. He added that, Albania and Slovenia had provided information on contact points for the exchange of information and cooperation on trade in infringing goods, under Article 69 of the TRIPS Agreement.
4. The representatives of Pakistan; Mexico; Australia; Hong Kong, China; Ukraine; Canada; Chinese Taipei; the United Kingdom; and the United States of America took the floor.
5. The Chair recalled that, at the July 2020 meeting, several questions had been asked regarding legislation notified by Canada and the European Union. She invited those two delegations to take the floor to respond to those questions or inform the Council of any follow up in this regard.
6. The representative of South Africa and the European Union took the floor.
7. The Chair noted that, notifications to the Council were not keeping up with the actual development of laws and regulations relating to TRIPS. She recalled that Article 63.2 was not a one-off requirement. It was a core element of the TRIPS transparency arrangements, and a central part of the Council's substantive work. Article 63.2 obliged Members to notify any new or amended laws in the area of TRIPS. The same applied to the Checklist of Issues on Enforcement which had been established by the Council as an element of Members' notification obligations.
8. She encouraged Members to notify legislative changes made to implement the special compulsory licensing system to export medicines covered by the new Article 31bis of the TRIPS Agreement. More than 50 WTO Members, including most of the world's major exporters of medicines, had adopted implementing legislation that allowed them to use the System as exporters and/or importers. However, only 20 Members, including the European Union, had formally notified such measures to the TRIPS Council. The notification of all relevant laws and regulations could assist Members in preparing for the potential use of the System. This would also help the Secretariat in its efforts to provide informed technical support to Members in this area.
9. Finally, she welcomed the information provided by Members concerning their notifications, as well as the constructive exchange on Members' legislation we had under this agenda item.
10. The Council took note of the notifications and the statements made.
IP/C/M/96, IP/C/M/96/Add.1