jake carberry

a blog about all things economics, politics and law

Month: February, 2012

European Trademark Law: Should National Courts Have a Greater Role?

The harmonising of trademark law is a long-standing issue that has been fiercely debated by scholars and policy-makers alike. For advocates of greater harmonisation, on a global scale, EU trademark law is one of the most frequently cited success stories. European trademark law is by no means perfect though, and questions remain about the European Court of Justice (ECJ) and the pivotal role it has adopted in trade mark law dispute resolution. This entry will explore these questions and suggest that ultimately, the strain placed on the ECJ could be alleviated by national courts.

While the Trade Mark Directive and the Community Trade Mark provided the foundations, it is the preliminary ruling procedure which ensures a “unified interpretation” of harmonised trademark laws throughout the European Union.(1) Given the prominence of this procedure, it is perhaps unsurprising that the ECJ has found itself heavily burdened by its critical role in the development of harmonised European trademark law. In this regard, due to the complex and ever-changing nature of trademark law, the efficiency and responsiveness of European trademark system could be increased by allowing and encouraging greater participation of national courts in resolving trademark issues, rather than immediately involving the ECJ.

While this may at first seem contrary to the objectives and paradigm underpinning trademark harmonisation, there are several advantages that could be realised if national courts in Europe were given greater opportunity to consider resolutions in trademark issues. Firstly, it is important to note that trademark disputes are very fact-specific and, as such, national courts seem far better placed than the somewhat over-reached ECJ to examine the particular facts of a case. As national courts reflected upon more trademark disputes over time, it is likely that legal norms and principles would develop from those disputes with similar facts, ultimately leading to more sophisticated, specialised trademark law. (2)

The most significant advantage, however, which again stems from the possibility of specialisation, is based on the fact that in European national courts, trademark disputes are resolved by specialist judges with vast experience. This, I would argue, is a distinct advantage over the ECJ, wherein trademark disputes are resolved by lawyers with little to no trademark experience or expertise. Moreover, the value of past decisions and rulings within the broad field of trademark law should not be understated; when faced with complex new issues in trademark law, the ECJ does not possess such tradition whereas national courts can draw upon past experience. (3)

To conclude, national courts can be seen to possess a number of distinct advantages over the ECJ. That is not to question the importance of the preliminary ruling procedure but rather to suggest that, if national courts were given greater influence within the development of trademark law, the system would benefit from the expertise and specialisation that exists at the national level. In this regard then, the benefits that would arise from such a relationship would be akin to that of the Supreme Court and the lower courts in the United States. (4)

(1) Graeme B Dinwoodie, ‘Trade mark harmonisation – national courts and the European Court of Justice’, International Review of Intellectual Property and Competition Law, (2010)
(2) ibid.
(3) Michael Handler, ‘The distinctive problem of European trade mark law’, European Intellectual Property Review, (2005)
(4) Dinwoodie, (2010)

UDRP: How useful is it?

The Uniform Domain-Name Dispute-Resolution Policy (UDRP) is a contract-based framework designed to facilitate the resolution of internet domain-name disputes. Established and policed by the Internet Corporation for Assigned Names and Numbers (ICANN), it is a non-national system which, because of the nature of domain-names, has proven very important in the resolution of trademark disputes.(1) In order to register a domain-name in any of the domains that follow the UDRP, the registrar must first sign a contract: an agreement that the domain-name “…will not infringe upon or otherwise violate the rights of any third party” and to participate in an arbitration-like proceeding if a claim is brought against the individual by any third party.(2) The UDRP currently applies to the majority of key top-level domains including .com, .org and .net, as well as many country code domains. Thus, whilst it is ‘soft law’, the UDRP can be seen to have real global reach. It begs the question then, in an age wherein intellectual property protection has struggled to come to terms with the emergence of digital media unconfined by territory or borders, is this form of ‘unconventional’ lawmaking the answer?

As it currently stands, however, the answer to this seems to be that it is probably not. The UDRP still has numerous flaws, for example; it is weighted heavily in favour of trademark owners who, because of the resources at their disposal, can raise disputes at will, and if the complaint fails, raise another. Furthermore, the importance of any judgment in UDRP proceedings is limited by the fact that in many jurisdictions the decision of the UDRP administrative panel can ultimately be overturned by the national courts. (3) In the US this falls under the Anticybersquatting Consumer Protection Act (ACPA).(4) Indeed, there have been a number of instances wherein US courts have heard appeals against UDRP decisions. Moreover, since the UDRP was introduced in 1999, the purchasing of domain-names has continued to evolve and it is now common for individuals or companies to buy large portfolios of domain-names. In this regard then, these individuals can claim they were unaware of any trademark infringement when purchasing these portfolios and as such, the UDRP can be challenged.

This is not to say the UDRP is without merit: it is a policy with true international scope, and one that has proven successful, most notably in high profile cases such as that of Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”. (5) It represents a policy born of necessity and has proven a key tool in counteracting the emerging IP threat of cybersquatting (the registering of known trademarks as domain-names with the sole intent of later selling the domain-name to the trademark owner for a profit).

To conclude, while the UDRP can be seen as successful, cost effective and wide-reaching in many ways, ultimately, because of its numerous limitations – most significantly that it can be overturned by national courts – the importance of this ‘soft law’ is debatable. As commentators such as Yu suggest, however, a ‘hardening’ of this law could prove more effective.(6)

(1) Sheldon W Halpern, Craig Allen Nard, Kenneth L Port, Fundamentals of US Intellectual Property Law. Copyright, Patent, Trademark, (2010) p.377
(3) Paragraph 4(k) http://www.icann.org/en/dndr/udrp/policy.htm
(4) http://cybersquatting.com/index.php?page=legal-actions
(6) Peter K Yu, Intellectual Property and Information Wealth: issues and practices in the digital age, (2007), p.5

The Bank of England, Quantitative Easing and the Recession: Delaying the Inevitable?

Date Written: February 9, 2012

The Bank of England has today announced, as many had expected, a significant increase in the level of quantitative easing (QE). As such, the committee judged that in order to meet the 2% inflation target in the medium term and to counteract the current economic slack, it is increasing its programme of “asset purchases, financed by the issuance of central bank reserves, by £50 billion to a total of £325 billion.” (1) It is a move that takes overall Bank of England holdings to over one third of the total stock of gilts in issue. The Bank has also announced a key adjustment to its policy regarding the purchasing of conventional gilts, namely that “the maturity sectors will be defined as 3-7 years, 7-15 years and over 15 years” rather than 3-10, 10-25 and 25+ as they had been previously. (2) Interestingly then, the Bank is shifting the balance of its purchases towards shorter-term bonds.

The Fed, on the other hand, has proven far less decisive this week with regards to further QE and the proposed $9 billion takeover of ING Direct by Capital One, with a decision on the latter being postponed to this coming Monday. In terms of the former, The Fed must decide whether to “increase its holdings of long dated securities and if so whether to focus once again on government debt, or to re-open its purchases of mortgages.” (3)

The question remains then, is QE still working? Central bankers remain positive with the vast majority of them clinging to the belief that “additional asset purchases can further reduce long term bond yields at a time of zero short term interest rates, but also that this can increase real GDP growth, compared with what otherwise would have occurred.” (4) I, however, am not so sure; perhaps we should place less emphasis on QE, a somewhat blunt and ineffectual tool, and consider the Keynesian approach, that is, boosting demand through fiscal stimulus. As history has shown, Keynesian theory is recession economics and given that we are in real danger of a double-dip recession I suggest we place greater faith in Keynes.


Who Were the Actors Involved Behind the Inter-regime Shift and What Interests Were They Pursuing?

Given the way in which global society is currently structured, it is in the interests of countries to use inter-regime shifts as a means of enhancing their negotiating power, thus maximising gains from the system. This is most clearly illustrated by the inter-regime shift that occurred in the 1980s, wherein the developed countries sought to ensure that the World Trade Organisation (WTO) became the forum of choice for intellectual property, displacing the World Intellectual Property Organisation (WIPO).(1) The developed countries, and the United States in particular, had become increasingly frustrated with what they perceived as slow progress within the area of intellectual property protection. This was largely due to the dominance of developing countries within WIPO, the limiting nature of the one-country-one-vote system and the fact that there was no scope for cross-sector or linkage bargaining, that is, the linking of IP rights to other trade-related issues such as agricultural subsidies or quotas.(2) In essence, the developed countries sought to migrate the issue of IP protection to a negotiating forum wherein they could use the political and economic resources at their disposal to coerce developing countries into acting in a manner congruent with their economic self-interest.(3)

While it is certainly true that the developed countries were instrumental in implementing the inter-regime shift, such a state-centric view seems naïve given the relative complexity of the intellectual property system. On adopting a micro-level of analysis, it can be seen that there were many actors who found their input limited given the organisational structure of WIPO, and thus, these actors, namely, private corporations and non-governmental organisations alike, would certainly have supported the inter-regime shift. Private corporations, for example, are far more influential now than previously possible under WIPO, and through aggressive lobbying, were arguably the “…main proponents behind the push for stronger international intellectual property protection in the TRIPs Agreement.”(4)

There were thus a number of actors behind the inter-regime shift from WIPO to WTO and the interests they were pursuing, specifically those of developed countries and private corporations, have proven very similar; simply put, to protect incentives. The developed countries – chiefly the United States – performed the inter-regime shift not only to ensure that stronger intellectual property rights were implemented but also to enable themselves to exert a greater degree of control over the system. The structure of the WTO allows the developed countries to use their resources to steer trade-related negotiations, in this case intellectual property rights, in line with their own economic interests. This is especially evident upon reflection of cross-sector bargaining in which developing countries are left little real choice but to adopt standards of intellectual property that may be of detriment to their economic development and the dissemination of knowledge.(5) Moreover, given the inter-regime shift enables developed countries, such as the US, to exert greater influence in the WTO then perhaps the interest it served was to allow developed countries to force through IP policy that they were unable to domestically such as the United States’ digital agenda under Clinton. (6)

(1)Peter K Yu, Currents and Crosscurrents in the International Intellectual Property Regime, (2004)
(2)Margaret Chon, ‘Intellectual Property and the Development Divide’, Cardozo Law Review, 27 (6) Spring, (2007) p.2832
(3)Martin Khor, Globalisation and the South: Some Critical Issues, United Nations Conference
on Trade and Development, Discussion Paper 147 (2000) http://www.unctad.org/en/docs/
dp_147.en.pdf p.5
(4)Susan K Sell, Private Power, Public Law: The Globalization of Intellectual Property Rights (2003)
(5)Chon, (2007)
(6)Yu, (2004)

The WTO, TRIPs and the Doha Declaration: The Access to Medicines Controversy

The approach of the World Trade Organisation towards intellectual property has come under criticism for a number of reasons, but one area of particular controversy has been the ostensible restriction of access to affordable medicines for developing countries. In this area, the WTO’s approach has been viewed as morally questionable, given the influence exerted by private industries – the pharmaceutical industry in this case – over the 1994 Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). In this instance, pharmaceutical firms acting through the US trade representative successfully lobbied to include a number of “objectionable” and self-serving features into the Agreement.(1)

This included extension of patents to twenty years, “a period so long that few economists of repute … would call it efficient,” as well as limiting the ability of “poorer countries… to import generic drugs from other developing countries.”(2) As a result, the cost of purchasing and distributing medicines sharply increased, and the poorest, developing countries were no longer able to import cheaper drugs, forced instead to purchase patented medicines from developed countries. These patented drugs became, for many, simply unaffordable: as Gerhart states, the payments for patented drugs that TRIPS required severely hampered “the ability of countries to address the health needs of patients.”(3)

To alleviate these problems, the Doha Declaration was launched in 2001, aiming to address the dissatisfaction felt by developing countries regarding the impact of the TRIPS Agreement on access to medicine.(4) Not only did it “…delay the implementation of patent system provisions for pharmaceutical products for least developed countries until 2016”, but it also officially committed WTO members to interpret TRIPS in a manner consistent with WTO principles, and utilise the flexibility inherent within TRIPS to “support public health and promote access to medicines for all.” (5) The Declaration stated that each member had the “right to determine what constitutes a national emergency”, including emergencies of public health, and reiterated that all members were able to grant compulsory licenses if necessary. Compulsory licenses allow governments to “…authorize the use or production of a patented item by a domestic party other than a patent holder,” and their extremely limited usage under TRIPS makes their inclusion in Doha all the more noteworthy.(6)

Despite this, however, the issue of access to affordable medicines in developing countries persists, leading some to suggest that this amendment alone is far from sufficient. As Ferguson notes, although Doha introduced compulsory licensing, this system has by no means been utilised to its full extent, and use of these provisions remains rare. As a result the effect on the availability of medicines has been “relatively modest”(7) – a WHO report from 2005 claimed that developing countries were not utilising the flexibilities within the TRIPS Agreement anywhere near as far as the Doha Declaration permitted.(8) So, while the Doha Declaration may have been a positive advancement, ultimately it has not proven as significant as was hoped.

(1) Jagdish Bhagwati, In Defense of Globalisation, (Oxford University Press, 2007) p.184
(2) Ibid. p184
(3) Peter M Gerhart, ‘The Tragedy of Trips’, Michigan State Law Review, (2007) p.183, Available online at:http://www.msulawreview.org/PDFS/2007/1/Gerhart.pdf
(4) World Health Organisation Website, ‘The Doha Declaration on the TRIPS Agreement and Public Health’, Available online at:http://www.who.int/medicines/areas/policy/ doha_declaration/en/index.html
(5) Ian F Ferguson, ‘The WTO, Intellectual Property Rights, and the Access to Medicines Controversy’, CRS Report for Congress, (2006), Available online at: http://www.fas.org/sgp/crs/misc/RL33750.pdf
(6) Ibid.
(7) Ibid.
(8) Sisule F Musungu, Cecilia Oh, ‘The Use of Flexibilities in TRIPS by Developing Countries: Can they Promote Access to Medicines?’, WHO Report, Commission of Intellectual Property Rights, Innovation and Public Health, (2005), Available online at:http://www.who.int/intellectualproperty/studies/TRIPSFLEXI.pdf

The Complex Nature of the Global Intellectual Property System

The World Trade Organisation (WTO) agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) was successfully negotiated at the end of the Uruguay Round of The General Agreement on Tariffs and Trade (GATT) in 1994. For many it signalled the beginning of a new global system of intellectual property rights; a regime wherein the WTO and the TRIPS Agreement would be of central importance. Scholars and lawmakers alike believed that the WTO would displace the World Intellectual Property Organisation (WIPO) and become the “…dominant institution of international intellectual property law.”(1)

This, however, has not proven the case. Rather than a simple question of WTO or WIPO, the current regime of intellectual property rights is far more convoluted and complex in nature. The system is becoming increasingly dispersed and decentralised and many new institutions or actors have emerged. As Dinwoodie states, these include “…national courts developing for the first time a private international law of intellectual property”, “…nongovernmental organizations (NGOs)”, “…new actors whose authority of remit are not linked to any particular nation-state”, “…existing international institutions that now find their work impacted by intellectual property law” and “…technology that operates without regard to territory”.(2)

It can thus be seen that the current regime of intellectual property has not developed as conveniently as many had hoped it would. While somewhat of an inconvenient truth, it is important to assess the current system as objectively as possible. A complex, decentralised system of intellectual property protection with many different actors and institutions may well offer the perfect solution to what has proven a very stubborn problem.(3) This is supported by Dinwoodie who highlights a number of key advantages of a decentralised system, for example, a national court, wherein private international law on intellectual property has developed, and if sufficiently transparent, may prove far more dynamic and responsive than the treaty process of the WTO or the WIPO. It is also “…less subject to the political demands that historically have burdened the treaty process and that continue to limit its efficacy.”(4) I would go one step further than Dinwoodie in this regard and suggest that given that power is not evenly distributed amongst WTO or WIPO members, a key advantage of a decentralized system of intellectual property is that these new non-treaty actors and institutions may reflect the interests of the developing countries far more closely than the WTO, wherein developed countries have been able to exert a great deal of influence.

The emergence of these new actors within the realm of international intellectual property has given rise to a number of interesting and exciting opportunities however there are also a number of concerns and disadvantages such as the problem of transparency and monitoring. While the WTO has many flaws, given the nature of the treaty system, it can be held accountable if required.(5) It is far more difficult to ensure a sufficient level of transparency in a complex, decentralized system with many new actors and institutions.

(1) Graeme Dinwoodie, “The International Intellectual Property Law System: New Actors, New Institutions, New Sources”, 10 Marq. Intell. Prop. L. Rev. 205 (2006)
(2) ibid.
(3) Peter M Gerhart, ‘The Tragedy of Trips’, Michigan State Law Review, (2007) 183-184, Available online at:http://www.msulawreview.org/PDFS/2007/1/Gerhart.pdf
(4) Dinwoodie, (2006)
(5) WTO Website, ‘WTO gets high marks for accountability, transparency’, Available online at:http://www.wto.org/english/news_e/news03_e/global_account_report_11feb03_e.htm

Has The World Trade Organization Outlived Itself?

The 1995 Marrakesh Agreement saw the official introduction of the World Trade Organisation (WTO), replacing the 1948 General Agreement on Tariffs and Trade (GATT) as the key organisation responsible for promoting the liberalisation of international trade, and for providing a framework wherein its members can negotiate and formalize multilateral trade agreements and resolve trade disputes.(1) Since its inception, the WTO has been no stranger to controversy, particularly within the area of intellectual property. It is thus of great significance to explore the WTO’s approach to intellectual property rights, with particular reference to the WTO agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). This entry will therefore illustrate the extent to which the TRIPS Agreement is in direct conflict with WTO development policy.

The 1994 TRIPS Agreement, negotiated at the end of the Uruguay Round of the GATT, remains the single greatest advancement in universally applicable intellectual property rights on a global scale to date. It was designed to ensure a minimum level of intellectual property protection within all WTO member states: copyrights, trademarks, geographic indications, industrial designs, patents, integrated circuits layout designs, undisclosed information and trade secrets are all protected under the TRIPS Agreement.(2) The WTO claimed that the reasoning behind TRIPS was that varying standards of IP rights amongst its members had led to a “…growing source of tension in international economic relations” and thus, regulation was necessary in order to “…cope with these tensions.”(3) Advocates of TRIPS emphasise the importance of the economic theory underpinning the agreement; that intellectual property rights are necessary to create and protect sufficient incentives for producers. As outlined by the WTO in Article 7 of the agreement, the protection of IP rights is required to encourage innovation and aid the dissemination of technology and knowledge.(4)

This argument seems to be built upon sound economic principles. However, an emerging school of thought led by influential economists such as Joseph Stiglitz, suggests that the current global intellectual property regime may actually “impede both innovation and dissemination”, and that reforms, such as placing greater emphasis on other means of stimulating innovation, are necessary.(5) Moreover, the seemingly incompatible relationship between the current IP system and WTO development policy underlines the severity of the problem; inherent within the current IP regime is a redistributive mechanism which serves the economic interests of developed countries to the detriment of the poorest. Through linkage bargaining by the developed countries, developing countries were forced to accept higher minimum standards of IP rights than optimal for their economies.(6)

The WTO is built upon the idea that through cooperation all members can gain. Whilst this may be true with regards to greater free trade, it is not the case in intellectual property; there must be winners and losers.(7) In summary then, the TRIPS Agreement should be seen as bad policy as it is built upon some rigid, antiquated economic principles while the WTO is an institution no longer suited to a modern global IP system so rife with complexities.

(1)WTO Website, ‘What is the World Trade Organisation?’, Understanding the WTO, Available online at:http://www.wto.org/english/thewto_e/whatis_e/tif_e/fact1_e.htm
(2)WTO Agreement, Agreement on Trade-Related Aspects of Intellectual Property Rights: Text of the Agreement, Available online at: http://www.wto.org/english/tratop_e/trips_e/t_agm0_e.htm
(3)WTO Website, ‘Legal texts: the WTO Agreements’, A Summary of the Final Act of the Uruguay Round, Available online at:http://www.wto.org/english/docs_e/legal_e/ursum_e.htm
(4)WTO Agreement, Article 7: ‘Objectives’, Agreement on Trade-Related Aspects of Intellectual Property Rights: Text of the Agreement, Available online at: http://www.wto.org/english/tratop_e/trips_e/t_agm2_e.htm
(5)Joseph E Stiglitz, Claude Henry, ‘Intellectual Property, Dissemination of Innovation and Sustainable Development’, Global Policy, 1 (3) October, (John Wiley & Sons, 2010)
(6)Margaret Chon, ‘Intellectual Property and the Development Divide’, Cardozo Law Review, 27 (6) Spring, (2007) p.2832
(7)Peter M Gerhart, ‘The Tragedy of Trips’, Michigan State Law Review, (2007) 183-184, Available online at:http://www.msulawreview.org/PDFS/2007/1/Gerhart.pdf

My Academic Blog

Hello all,

I am currently a postgraduate student at the University of Exeter. Having read Economics and Politics at undergraduate level I am now studying for the LLM in International Business Law. As part of my course I have to write weekly blogs on a number of issues in economics, politics, and of course, law. For those of you interested, I will post them on here and if you have any thoughts or comments please don’t be a stranger.