by Lawrence Kogan
This article has been divided into two parts. Part 1 analyzed the the Philippine breastmilk substitute and breastmilk supplement marketing framework ("PH BMS Framework") restrictions under the terms of the Technical Barriers to Trade ("TBT") Agreement. Part 2 will analyze them under the terms of the Trade-Related Aspects of Intellectual Property Rights ("TRIPS") Agreement. Part 2 discusses how the Framework's restrictions on the use of trademarks, logos and brand names violate the WTO TRIPS (Trade-Related Intellectual Property) Agreement.
1. TRIPS Articles 8 and 20 and the Doha Declaration Anticipate Trademark Owners' Legitimate Interests Including Use Various PH BMS Framework provisions encumber the use of trademarks associated with infant formula, follow-up formula and complementary food product advertising, labeling and packaging in contravention of TRIPS Article 20, because they lack sufficient evidence demonstrating that such provisions are "necessary"/"justifiable" to protect public health via breastfeeding under TRIPS Article 8.1 and/or to prevent the abuse of IP rights via deceptive marketing under TRIPS Article 8.2. Some international organizations and their legal advisers have claimed that the limited TRIPS Article 20 jurisprudence available strongly suggests that TRIPS Article 8.1 "inherently grants Members freedom to pursue legitimate public policy objectives, especially the protection of public health." They reason that "many measures to attain those public policy objectives lie outside the scope of intellectual property rights and [therefore] do not require an exception under the TRIPS Agreement" (emphasis added). These stakeholders argue that such a reading of TRIPS is supported by the Appellate Body's recent determination of the status of paragraph 5.2 of the Doha Ministerial Decision, and by paragraphs 4 and 5(a) of the Doha Declaration on TRIPS and Public Health which emphasize the "object and purpose" of the TRIPS Agreement." Other legal commentators have determined, however, that the policy space TRIPS Articles 7 and 8 afford to WTO Members to pursue public interest objectives is not unlimited, but rather, is circumscribed by the scope of trademark owners' rights and legitimate interests as defined by other TRIPS provisions and other relevant treaties. These rights and legitimate interests were previously recognized, for example, in paragraph 3 of the Doha Decision of 2003 implementing paragraph 6 of the Doha Declaration. Said document reaffirmed that even though "governments have the right to expropriate patents (and any other property rights, for that matter) whenever they find it necessary to pursue the public good...the TRIPS Agreement...in that context...make[s] it clear that any measure that limits private property rights in intangible goods must be compensated" (emphasis added). The UNCTAD and its legal advisers claim that Article 8 affords WTO Members "the discretion to adopt internal measures they [subjectively] consider necessary to protect public health and nutrition and to promote the public interest in sectors of vital importance to their socio-economic and technological development". However, contrary to such claim, WTO jurisprudence indicates that the TRIPS Agreement does not only grant "negative" rights to prevent unauthorized third-party use of trademarks, but also anticipates the "positive" use of trademarks in commerce as integral to a trademark owner's legitimate interests. As the WTO Panels in Canada -- Pharmaceutical Patents and EC -- Trademarks and Geographical Indications have found (in the context of TRIPS Articles 28 and 30, and 16 and 17, respectively,) the legitimate interests of trademark owners encompass both positive rights to use a registered trademark and to exploit its economic value (i.e., through assignment, licensing, etc.), as well, as negative rights to preserve its distinctiveness or capacity to distinguish. As the Panel in EC -- Trademarks and Geographical Indications concluded,
"[e]very trademark owner has a legitimate interest in preserving the distinctiveness, or capacity to distinguish, of its trademark so that it can perform that function. This includes its interest in using its own trademark in connection with the relevant goods and services of its own and authorized undertakings. Taking account of that legitimate interest will also take account of the trademark owner's interest in the economic value of its mark arising from the reputation that it enjoys and the quality that it denotes" (emphasis added).
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Lawrence Kogan is President/Director of the Institute for Trade, Standards and Sustainable Development (ITSSD), a Princeton, NJ-based nonpartisan nonprofit legal research, analytics, and educational organization. The ITSSD examines international laws and policies relating to trade, industry, and positive sustainable development around the world. He also is founder and Managing Principal of The Kogan Law Group, P.C., a New York City–based multidisciplinary professional services firm specialized in identifying and addressing emerging regulatory, policy, and trade risks posed to multinational company assets, operations, and supply chains. Mr. Kogan currently serves as a vice-chair of the International Trade Committee of the Inter-Pacific Bar Association, and formerly served on the international trade committee of the Association of the Bar of the City of New York, as adjunct professor of international trade law and policy at the Seton Hall University Whitehead School of Diplomacy and International Relations, and as adviser to the National Foreign Trade Council and its membership concerning the interplay between international trade rules and food safety, health and environmental regulations.