1 Intellectual Property Rights in the Bahamas, Barbados, Guyana, Jamaica and Trinidad & Tobago Most CARIFORUM countries are members of the World Trade Organization (WTO) and are therefore parties to the WTO Agreement on Trade-Related Aspects of Intellectual Property (TRIPS). This means that countries are required to ensure that national legislation complies with these international standards. The development of intellectual property legislation is a relatively new area for countries in this region. Several countries have made steps towards modification of their laws. However, much work remains to be done in order to arrive at full compliance with TRIPS. In order to assess the readiness of countries to meet full TRIPS requirements by 1 January 2000, the Inter-American Development Bank (IDB) commissioned a study to assess the intellectual property (IP) regimes of five Caribbean countries Bahamas, Barbados, Guyana, Jamaica and Trinidad and Tobago. The consultants conducted extensive research on national legislation and proposed recommendations for improvement and overall TRIPS compliance. Administration and enforcement systems were also examined. compliance has passed, the original report still stands as a useful document for outlining key concepts in intellectual property law and major issues in legislating and enforcing the law. In this issue of TRADEWINS, we present highlights of the original 1998 report with an emphasis on copyright, trademarks and patents. We hope that members of the private sector will gain some insight into the need for comprehensive and accessible legislation as a means of protecting ideas and knowledge as essential elements of trade. Since legislation is currently being updated in several countries in the region, we would suggest that readers contact their national intellectual property agencies for information on the status of local laws. The consultants found that legislation was uneven across the countries and suggested that laws should be harmonised and resources accessed, maintained and implemented on a regional basis. Though the deadline for TRIPS In This Issue Copyright Trademarks Patents Enforcement Education TRADEWINS is designed with Caribbean business in mind. The Series is intended to bring issues of trade policy to the private sector and other interested parties 1
2 BACKGROUND Intellectual property (IP) refers to creations of the mind and is divided into two categories. Industrial property includes inventions (protected by patents), trademarks, industrial designs and geographic indications. Copyright includes literary and artistic works. Intellectual property is crucial to creative development and to the development of research and trade. Failure to protect intellectual property rights (IPRs) can limit potential in both of these areas. It can also result in loss of revenue for small and large producers and can create tension among trading partners. At the Uruguay Round of WTO talks ( ), members developed the Agreement on Trade-Related Aspects of Intellectual Property (TRIPS). The agreement came into effect in April 1994 and was intended to provide a set of common international rules on intellectual property. The agreement covers five main areas: basic principles; protection; enforcement; dispute settlement; and special transitional arrangements. includes education, training and financial assistance. As knowledge-based industries become increasingly important in the world of trade, it will become essential for developing nations to identify and protect their intellectual resources. A. Protection Under the Law Copyright, trademarks and patents are the cornerstones of much intellectual property legislation. Although they are not the only means by which material is protected, they do offer some general principles for the preservation of intellectual property rights. (For brief descriptions of selected other forms of protection, see Annex I.) i. Copyright The issue of copyright is particularly important in the area of Caribbean culture and cultural identity and this is most evident in the music industry. Key problems include piracy and the collection of royalties. Musicians are often inadequately compensated for use of their material and for performances of their work. In some instances, there is a highly developed but unofficial piracy industry. 2 TRIPS aims to promote technological innovation and the transfer and dissemination of technology in ways which are beneficial to both producers and users. Under TRIPS, countries are expected to grant national treatment and Most- Favoured Nation treatment to other WTO members. They are also expected to abide by the agreements of the World Intellectual Property Organization (WIPO), which were in force prior to the establishment of TRIPS. The agreement allowed developing countries a transitional period of five years before full compliance. Full compliance is an indication of a country s commitment to the international agreement. It also suggests that countries are prepared to protect the intellectual property rights of its citizens facilitating research and creative development and setting clear parameters for the conduct of trade in intellectual property. Several CARIFORUM countries have moved towards compliance. However, more sustained and comprehensive efforts must be undertaken. An examination of issues facing the Bahamas, Barbados, Guyana, Jamaica and Trinidad and Tobago can bring key elements of intellectual property into focus. WHAT ARE THE ISSUES? Intellectual property rights are relatively new as an area of law and enforcement in the CARIFORUM region. Consumers (and often producers) are generally unaware of the value of intellectual work and the scope of protection available to the creators of such work. There is often tension between notions of individual and communal rights and not much appreciation for the entitlement to be compensated for work of this nature. Protection and support for intellectual property rights are key to enforcement. Protection under the law can take several forms - including copyright, trademarks and patents. Support Creators in the countries investigated expressed the desire for improvement in several areas, including the following: protection, recourse to remedies and enforcement of rights under copyright legislation; the return of royalties to creators; adequate resources and power among police forces for enforcing criminal remedies; and education of artists and consumers on intellectual property rights and their value to creators and to national economies. Of particular interest to many artists is the possibility of unauthorised copying via the Internet. Internet service providers (ISPs) are also concerned about the possibility of inadvertently carrying infringing Fact-o-File What is Copyright? Copyright is essentially the sole right to produce or reproduce certain works, or any substantial part of such works, in any material form. A work qualifies for copyright protection if it is an original literary, dramatic, musical or artistic work. (Computer programmes are protected as literary works.) Copyright arises once a work is created. The author of the work is generally the first owner of the work but authors can assign, sell or license part or all of their copyright to others. The term of copyright protection is generally the life of the author plus fifty years after the author s death. Performers of works, producers of sound recordings and broadcasters have additional rights, e.g. performers have the sole right to prevent broadcasting or communication of their live performances to the public.
3 material. Several additional issues arise in the administration and enforcement of copyright - exceptions, moral rights and registration. Exceptions TRIPS allow members to provide exceptions or limitations to copyright protection and these exceptions have traditionally been determined locally, with a view to balancing the interests of users and right holders. These special cases must not conflict with the normal exploitation or use of the work and must not unreasonably prejudice the legitimate interests of the copyright holder. The consultants found that there is some concern among creators that the balance is currently in favour of users. Moral Rights Moral rights of an author include the right to be associated with the work, the right to remain anonymous and the right to the integrity of the work. These ensure that the true origin of the work is known and that efforts are made to prevent any modifications of a work, which might prejudice the honour, or reputation of the author. Registration Registration of copyright cannot be a prerequisite for acquiring copyright protection - this would be contrary to TRIPS and to the WIPO Berne Convention for the Protection of Literary and Artistic Works. However, voluntary registration may be a helpful tool in enforcing rights and may encourage use and awareness of copyright by local creators. It may also remove the defence of innocent infringement. None of the countries studied currently has a system of registration. Countries will need to determine whether a deposit of the work being registered will also be required. Though such deposits may serve to develop an archive of cultural work, this may place additional burdens on IP administration offices. on a regional basis. Licensing disputes between collectives and users should for the moment be handled by the courts. Court procedures should be simplified and expedited as far as possible. Consideration could be given to a regional tribunal to deal with disputes between collectives and users. Education of the public should be actively pursued on a regional basis. (Such education will increase use of IPRs and help curb piracy.) The 1996 WIPO Performances and Phonograms Treaty (WPPT) and WIPO Copyright Treaty (WCT) should be Fact-o-File Copyright and National Legislation Jamaica repealed and replaced its Copyright Act in 1993 with minor amendments in Trinidad and Tobago repealed and replaced its Copyright Act in 1996 in light of TRIPS and with the assistance of WIPO. In 1998, the Bahamas passed its re-drafted Copyright Act but the Act had not yet entered into force. Guyana s Copyright Act was, in effect, the 1956 UK Copyright Act. Barbados had re-drafted its Copyright Law, based largely on Jamaica s Copyright Act and this legislation had been passed but had not yet entered into force. The consultants found that legislation in Barbados, Jamaica and Trinidad and Tobago appeared to be TRIPS-compliant with one notable difference being accessibility of the language of the Trinidad and Tobago legislation. The Trinidad and Tobago legislation was also thought to be capable of accommodating future advances in technology. The Bahamian legislation in force in 1998 was out-of-date although the proposed new legislation appeared to be TRIPS-compliant. (The consultants expressed some concern over compulsory licensing and phono records.) The proposed system of voluntary copyright registration (requiring a deposit of works) is unique to the Bahamian approach. Guyana s legislation was found to be out-of-date. implemented. A model law should be developed. Trinidad and Tobago s legislation, with a few modifications, could serve as the basis for developing the model. (A model law will not prevent countries from putting in culture-specific rights such as Trinidad and Tobago s unique right for works of mas.) Moral rights of authors should continue to be protected. (Such protection is already part of the Trinidad and Tobago legislation suggested as a model.) Exceptions to protection should be of the same nature and extent in national laws. Consensus should be reached on acceptable norms and these should be followed by all countries in the region. A voluntary system of copyright registration - without deposit of works - should be implemented. Copyright collectives should aim to administer their rights i. Trademarks Trademark applications have increased substantially over the past decade with numbers increasing from 693 in 1990 to 2,270 in 1997 in Jamaica alone. Three key instruments are available to assist in the administration of trademarks: the Trademark Law Treaty; the Nice Agreement Concerning the International Classification of Goods and Services; and the Madrid Protocol. These agreements deal with questions of registration, classification and centralisation of filing respectively. Of the countries surveyed in the original report, only Trinidad and Tobago had signed the Trademark Law Treaty. Both Trinidad and Tobago and Barbados had acceded to the Nice Agreement and Jamaica s pending Trademarks Bill allowed 3
4 Fact-o-File What is a Trademark? A trademark is a symbol (a word, design, colour, logo, device or any combination of these) used in relation to goods or services and distinguishing one trader s goods or services from those of another. Trademarks may be registered or unregistered. An owner s rights in a registered trademark include the exclusive right to prevent others from using the mark for goods and services for which the mark is registered (e.g. similar goods and services) where confusion is likely to occur. Under TRIPS, there is a minimum seven year period of protection for a registered trademark and this must be renewable indefinitely. has sold a product to which its intellectual property rights are attached, that right holder cannot then prohibit the subsequent resale of that product as his/her intellectual property rights in that product are said to have been exhausted by the first sale. 1 Exhaustion has economic implications for regional and international trade. It is somewhat controversial since it can conflict with the concept of national jurisdiction. However, it is sometimes regarded as creating certainty for businesses. At common law, the scope of exhaustion rights is generally uncertain and varies with the particular IPR involved. Jamaica s draft Trade Marks Bill applies the principle of exhaustion of rights in trademark on a CARICOM basis. This means that once legitimate goods are put on a CARICOM market by the trademark owner, those goods may be freely imported into Jamaica without any infringement of Jamaican trademarks. The principle of exhaustion also applies within Fact-o-File 4 for future implementation of the Madrid Protocol. The efficient administration of trademarks is crucial to producers and consumers alike. Trademarks suggest that goods or services originate from a particular source and that certain qualities or standards may be expected. False use of a trademark or the use of a mark resembling the original on similar products may lead to significant confusion and could be the cause of lengthy litigation. Below are some of the issues which need to be addressed in the administration of trademarks. Registered User System A distinction is sometimes made between the right holder of a trademark and the registered user of that mark. Maintaining a registered user system for trademarks is an administrative burden and may deter right holders from registering their marks. A registered user system may also - depending on the scope of the system - risk non-compliance with TRIPS. The Bahamas, Guyana and Trinidad and Tobago still maintain systems which record trademark licence holders as registered users. Although registration of licences (in a manner not inconsistent with TRIPS) may create a useful data bank for those wishing to determine legitimate use of marks, the administrative costs may exceed the value of such a data bank. Classification of Trademarks Classification systems facilitate searches of the register and help to avoid confusion over rights and usage of trademarks. They may also promote administrative efficiency and increased use of the system particularly when automated. The Trade Law Treaty requires countries to move towards the classification system of the Nice Agreement. Exhaustion Exhaustion of intellectual property rights refers to the relinquishing of control, by a right holder, over the distribution of goods to which those rights are attached. According to the exhaustion concept, once an intellectual property right holder Trademarks and National Legislation In 1998, the Trade Marks Act in effect in Jamaica had been introduced in 1958 and based on the UK Trade Marks Act of Jamaica s draft legislation appeared essentially TRIPS-compliant and contained elaborated definitions relating to trademarks and signs. Some concern was expressed by consultants over the concept of registrable transactions in the draft legislation. The Trinidad and Tobago legislation was passed in 1957 and was also based on the UK Trade Marks Act of A series of amendments (the latest in 1997) retained the inaccessible language of the original Act. The system of registration was not compliant with TRIPS and was administratively burdensome. Barbados legislation was passed in 1981 and came into force in It appeared to be largely TRIPScompliant with the exception of issues related to the protection of well-known trademarks and customs measures to remedy the counterfeiting of trademarks. Laws in Guyana and the Bahamas were not TRIPS-compliant and required significant changes. Protection for service marks and wellknown marks were noticeably absent. the European Union (EU). A model law should be developed. Jamaica s draft legislation, with a few modifications, could be used as the basis for the model. Registration of licences should not be required in order to obtain or maintain rights. The need and scope for exhaustion of trademark rights should be evaluated for implementation on a harmonised regional basis. The fees charged by trademark offices should be increased to more closely reflect the true cost of administration. Self-funding agencies should also be considered.
5 Countries should adopt the principles of the Trademark Law Treaty as a guide to harmonisation of administrative practice. The Nice Agreement on trademark classification should be adopted by all countries. Trademark office automation should be undertaken or expedited if already underway. Technical assistance and funding should be secured to assist in the changeover. Regionalised administration should be implemented. Consideration should be given to future development of a CARICOM-wide trademark right. i. Patents Disclosure is a key element in the registration of patents. Disclosure allows the government to make information on the invention available to the public while at the same time protecting the rights of the patent holder. Knowledge of the invention becomes available to the public and future developments (in the way of research and investment) can be made in the field. Generally, there is very little patenting activity in the countries studied. There is a lack of appreciation for the patentability of certain inventions as well as a suspicion that patenting will benefit only foreign nationals. Much education is therefore needed to ensure that local inventors as well as consumers and businesses are aware of the benefits of patenting. As is the case with copyright and trademarks, systems of patenting in the countries would benefit from automation and from a revision of fee structures to more adequately reflect the cost of examination and processing. Since patent searching is carried out on an international scale, regional automation should be considered. The administration and scope of patenting in the region will also need to keep pace with international developments. Below are some of the key areas of concern. International Agreements Fact-o-File What is a Patent? A patent is an exclusive right to exclude others from the manufacture, sale and use of an invention during a defined period of time. The government grants this right in return for disclosure of that invention in a patent specification. An invention must meet certain criteria in order to be considered patentable: it must be new; it must comprise an inventive step; and it must be capable of industrial application. Under TRIPS, the rights associated with a patent must last for a minimum of twenty years from the date of filing of the patent application. At the time of the original report, only Barbados and Trinidad and Tobago had joined the Patent Cooperation Treaty. The treaty allows members to file an international application specifying the countries in which it might later wish to apply at a national level. Such an arrangement is of value to inventors who might wish to protect their inventions on a global scale (and in a cost-effective manner). It also provides useful information (through searches of records) which might help with applications at the local level. Since the time of the original report, WIPO s Patent Law Treaty (2000) has come into effect. Utility Certificates Utility certificates are certificates offered in lieu of patents. These certificates are often low-cost and may be offered without the extensive search which is required in the patenting process. Under the Patents Act of Trinidad and Tobago, utility certificates provide their holders with rights for ten years (as opposed to twenty years offered by patents) if the invention is novel and involves an innovative step. Application for a utility certificate may, under certain conditions, be upgraded to an application for a patent. Several countries (e.g. many in the European Union) provide utility certificates as a low-cost alternative to patents although the US and Canada offer no such protection. Utility certificates are not prohibited under TRIPS. However, they may dissuade inventors from pursuing the option of fuller protection offered by patents. Examination of Patent Applications Thorough examination of patent applications determines the eligibility of applications and helps to avoid the granting of exclusive rights where such rights are not warranted. In this way, examinations are crucial in avoiding legal challenges later on. However, examination requirements vary from country to country. In the Bahamas, there are no examination procedures and applications are merely checked for compliance with administrative formalities. Guyana and Barbados grant a patent on the basis of a granted UK patent. Jamaica and Guyana require examination though the process is lengthy and insufficient. Trinidad and Tobago decisions of patentability are guided by information provided by the Patent Cooperation Treaty and other Patent Offices. (TRIPS does not require local examination of a patent. Singapore s Patent Act allows for examination of local patent applications by Examiners of the Austrian or Australian Patent Offices.) Inadequate scientific resources contribute to the lack of examination or lengthy examination procedures in the countries. In addition, it is not currently feasible to pay examiners (low fees for obtaining patents may be a contributing factor). Biotechnology and Biodiversity In the area of biotechnology, genetic research on human and animal life forms is especially topical. Related issues of biodiversity and traditional knowledge bring into focus basic questions surrounding the patentability of knowledge as well as economic and other relations between the developed and developing nations. (For a further note on traditional knowledge and biodiversity, see Annex II.) 5
6 Fact-o-File Fact-o-File Patents and National Legislation Legislation in most of the countries is out of date and requires much work to become TRIPScompliant. The Bahamian patent legislation is found in the Industrial Property Act of The Barbados legislation is the Patents Act of 1981 while Guyana s Patents and Designs Act was last consolidated in Jamaica s Patent Act is based on the 1793 UK Patent Act and was most recently amended in Trinidad and Tobago s Patent Act of 1996 is largely TRIPS-compliant though some modifications will be necessary to ensure full compliance. \ Emerging Areas in Intellectual Property Rights Several new areas have emerged in the field of intellectual property rights. The internet poses a number of challenges in terms of law, jurisdiction and enforcement. Marks owned by internet service providers will now be protected by trademark under TRIPS and by sui generis law.. Computer programmes and integrated circuit topographies will be protected by copyright. Digital issues in general raise new concerns. Finally, culture and the culture industries have for some time been receiving increased attention in intellectual property legislation. As new areas continue to emerge, national and regional legislation will be required to keep pace. 6 Model legislation should be developed and implemented throughout the region. Trinidad and Tobago s legislation, with some modifications, could be used as the basis for the model. Patent applications should be examined for novelty and patentable subject matter by a regional office and/or by offices outside of the region where necessary. Fees for obtaining and maintaining patents should be revised to defray examination and processing costs while taking into account the needs of small businesses. Countries should join the Patent Cooperation Treaty. Additional protection of inventions by way of utility certificates may be provided but need not be adopted in model legislation. Countries should implement standards of patentability for biological subject matter - including the patenting of higher life forms. These standards should allow countries to maintain competitiveness internationally in the context of agreed ethical considerations. National bodies operating under regionally harmonised principles should document and maintain an inventory of genetic resources. These bodies should also be responsible for the administration and negotiation of the exploitation of a genetic resource by a third party. Legislation which implements policies linking natural resource exploitation - including genetic resources - to local or regional technology transfer and which ensures adequate and effective compensation in return for exploitation should be introduced. Steps should be taken to automate patenting systems regionally. Countries must first ensure that national filing procedures are compatible. Regional steps should be harmonised. Pending patent applications should be made available for public inspection shortly after filing. Consideration should be given to future development of a CARICOM-wide patent right. A. Building a Supportive Environment The key to effective protection of intellectual property rights is an environment which supports the administration and enforcement of such rights. Producers and consumers must be made aware of the value of intellectual property and bureaucracies must be streamlined to facilitate efficient management. Below are some of the key areas highlighted in the report. i. Harmonisation International trends are moving towards the harmonisation of intellectual property laws. Efforts to make national legislation TRIPS-compliant will be greatly facilitated by the adoption of model legislation in the region. Harmonisation of polices and legislation may also assist in negotiations at the proposed Free Trade Area of the Americas (FTAA). Canada, the USA and Mexico currently implement the same intellectual property principles under the North American Free Trade Agreement (NAFTA). Laws and administration of IPRs should be harmonised on a regional basis and should include the adoption of model laws. Discussions should be undertaken at the appropriate levels to allow the various national IP regimes to be administered regionally. Each country should include in its legislation provisions which contemplate and allow for future regional administration. i. Enforcement There is generally an inadequate level of enforcement by customs and police services with regard to intellectual property
7 rights and more training and resources are required particularly in the efforts to curb piracy. The high cost of litigation can also prevent right holders from seeking full redress. Training and resources should be made available to police forces and customs officials. Consideration should be given to appointing specified judges to hear IP disputes on a national basis - and later on a regional basis in keeping with other moves towards the formation of regional courts. Lower-cost litigation and alternatives to litigation should be made available. i. Education Fact-o-File Intellectual Property Rights and the CARICOM Single Market and Economy (CSME) The Protocols Amending the Treaty of Chaguaramas promote further integration of CARICOM Member States and will facilitate the establishment of the CARICOM Single Market and Economy (CSME). A special article of Protocol III (Industrial Policy) focusses on the following issues in intellectual property: Strengthening intellectual property laws in individual Member States Simplifying registration procedures in individual Member States Establishing regional administration for patents, trademarks and copyright Ensuring the use of protected works and industrial property for the benefit of Member States; the protection of indigenous Caribbean culture; and the protection of expressions of folklore and other aspects of traditional knowledge and national heritage (particularly those of indigenous populations) Increasing the dissemination and use of patent documentation as a source of technological information Preventing abuse or misuse of property rights by rights-holders which might unreasonably affect the transfer of technology Encouraging Member States to become a part of international agreements and conventions on intellectual property For additional information on the Protocols see Caribbean Export s TradeWins feature on Protocols Amending the Treaty of Chaguaramas from which this excerpt is edited. The general public in the countries is largely unaware of the scope and value of intellectual property rights. A comprehensive education programme may encourage creators and inventors to register their rights. It may also heighten awareness among law professionals. Education programmes will need to target several constituencies if they are to succeed. Resources should be accessed, maintained and directed to the training of the public and of law students, legal practitioners, judiciary and customs and police services in order to enhance awareness of IPRs. Consideration should be given to developing an IP law sub-faculty or institute at the University of the West Indies which would serve as an expert resource in the field of intellectual property and biodiversity and related issues. The Faculty of Law of the University of the West Indies - in conjunction with local IP Administration Offices - could be charged with the outreach tasks of training the judiciary and professionals on IPRs and conducting public education programmes throughout the region. i. Technical Assistance There has been significant interest in the CARICOM region and its transition to TRIPS compliance among international agencies. WIPO has been the major source of technical assistance in the areas of training, equipment, documents and technical advice. Significant assistance is still needed particularly with regard to automation, harmonisation and regionalisation. This assistance should be offered on a continued basis and expanded to include other donor agencies and fields such as enforcement and education. Although several studies have been commissioned on the modernisation process, there is some concern that these efforts are not well coordinated and that much duplication results. Funding for education and training programmes must be coordinated - at national and regional levels - to make the best use of funds and to avoid duplication of efforts. A regional office should be established - or an existing one may be so designated - to serve as a planning and coordinating body for current and future studies and projects. Such an institution should serve as a resource base for information in the area. i. Protection of Undisclosed Information TRIPS requires that countries ensure effective protection against unfair competition. The agreement also requires that they protect trade secrets - undisclosed information of commercial value and grant data exclusivity - undisclosed data on agrochemical and pharmaceutical products using new chemical materials. Common law in individual countries in the region currently covers many of the issues involved in unfair competition and Protocol VIII amending the Treaty of Chaguaramas outlines a regional competition policy for use in the proposed CARICOM Single Market and Economy (CSME). Trade secrets are also covered under common law. Where legislation is proposed 7
8 or in place to grant data exclusivity, countries have not followed international trends to establish time limits. Countries should take steps to implement legislation granting data exclusivity for a stated period of time which is uniform throughout the region and consistent with minimum international standards. i. Control of Anti-Competitive Practices in Contractual Licences TRIPS recognises that exercising exclusionary rights granted in intellectual property legislation may become anticompetitive. This may be particularly relevant in the case of patents and integrated circuits. The agreement therefore allows for the granting of licences to be issued once a specific practice has been determined to be anti-competitive. Licences will allow use of the material in question by persons or enterprises other than the original right holders. The compulsory licensing provisions permitted by TRIPS in relation to anti-competitive practices relating to patents and integrated circuits should be implemented as one of the means for remedying anti-competitive practices. Countries may wish to implement legislation based on Jamaica s Fair Competition Act as interim measure until CARICOM s harmonised Rules of Competition outlined in Protocol VIII are implemented. HOW MIGHT WE ADDRESS THESE ISSUES? The authors of the original report suggested an action plan for the implementation of their recommendations. The action plan was devised with the TRIPS January 1, 2000 deadline in mind. Although that deadline has now passed, key elements of the plan are worth reproducing here. The consultants envisaged a two-step process which would see countries preparing to adopt model legislation and secure funding and educational initiatives in Phase I and moving to establish regional machinery in Phase II. national and regional basis Highlights of Phase II Complete harmonisation of IP laws and adherence to international treaties Modernisation and automation of regional administration offices and satellite offices Training for personnel at those offices Establishment of permanent mechanisms for continued operations in areas such as education, technical assistance, funding and modernisation CONCLUSIONS CARIFORUM countries have committed to participation in the World Trade Organization and are bound by its agreements. Special transitional arrangements for compliance with these agreements allow only for a period of adjustment during which countries must come to terms with the legislative, social/ cultural and economic implications of compliance. Harmonisation and regionalisation will greatly enhance the countries ability to make these adjustments and to negotiate successfully for equitable terms in international trading arrangements. CARIFORUM countries will need to consolidate their efforts to establish viable intellectual property regimes and to ensure that the necessary support systems are in place to guarantee public acceptance of the required changes in traditional concepts of knowledge, value, compensation and entitlement. Members of the private sector and all those affected by the regulation of intellectual property and trade will need to familiarise themselves with national legislation and work to ensure that changes in the legislation reflect international trends and local realities. Highlights of Phase I 8 Mobilisation of local IP administration offices and legislative drafting offices (with due consideration for the need to increase human and financial resources) Preparation for the development of IP outreach educational programmes by the Law Faculty of the University of the West Indies (UWI) Preparation for a fully operational IP law sub-faculty or institute of UWI (by a date to be determined) and for introduction of a basic IP course for law students by the academic year 2000 Establishment of a regional framework and mechanisms for implementing the Convention on Biological Diversity and for documenting and maintaining genetic resources, traditional knowledge, folklore and cultural heritage on a
9 Annex I Geographical Indications, Industrial Designs, Layout Designs and Plant Variety Protection Several additional areas related to intellectual property rights were included in the original report. A brief definition of these issues or forms of protection is given below along with the report s recommendations. Geographical Indications A geographical indication is an indication which identifies a good as originating in a particular place where a given quality is attributed to its geographical origin (e.g. wines or spirits). Stand-alone legislation on geographical indications is in force in Trinidad and Tobago and proposed in Barbados. Both appear to be TRIPS compliant. Model legislation should be developed for geographical indications. Trinidad and Tobago s legislation could be used as a basis for the model. Registration of geographical indications eventually should be administered through one regional office. Industrial Designs Industrial designs are designs applied to a finished article which are judged solely by the eye. Trinidad and Tobago and Barbados are the only two countries studied which have stand-alone legislation in place. Both appear to be TRIPS compliant. Model legislation should be developed. Jamaica s draft legislation should be used as the basis for the model. Plant Variety Protection Plant variety protection is a form of protection which is granted to developers of plant varieties based on criteria of novelty, distinctiveness, uniformity and stability. This is particularly important in CARIFORUM countries where plant resources are abundant and are receiving some attention from research institutions such as the University of the West Indies (UWI). Trinidad and Tobago is the only country studied which offers protection for plant varieties. Its legislation complies with the 1978 Act of the UPOV Convention (Convention of the International Union for the Protection of New Varieties of Plants). It is therefore TRIPS compliant. Model legislation should be developed for plant variety protection. Trinidad and Tobago s legislation, which is based upon the 1978 UPOV Convention, can be used as a basis for the model. Consideration should be given to moving to the 1991 UPOV. The implementing legislation should incorporate an appropriate balance between plant variety rights and the rights of farmers and other exemptions as determined on a regional basis. Model legislation should be developed for industrial designs. Trinidad and Tobago s legislation could be used as the basis for the model. One filing, examination and registry facility for industrial designs should be established for the region. Consideration should be given to future development of a CARICOM-wide industrial design right. Layout Designs of Integrated Circuits Layout designs are topographies of integrated circuits. Specific protection of these designs is in force in Trinidad and Tobago and envisaged in proposed legislation in Barbados and Jamaica. All legislation appears to be TRIPS compliant. Some aspects of integrated circuits such as sets of stored instructions or the structure of electronic circuits may also be protected by copyright and patents respectively. 9
10 Annex II Traditional Knowledge and Biodiversity Traditional knowledge refers to knowledge, innovation and practices of indigenous or local communities. Biological diversity or biodiversity refers to the variety of life on earth and the natural patterns formed by that life. This includes plants, animals, microorganisms (and their genetic differences) and ecosystems. Considerable work on the preservation of traditional knowledge has taken place through the Convention on Biological Diversity. (See their webpage at Some of the definitions come from this site.) The question of intellectual property and local and indigenous peoples is far-ranging and includes such issues as the medicinal properties of plants and national heritage and folklore. Some of these issues are covered by traditional legislation on copyright and patents. A key issue is the exploitation of traditional knowledge and compensation for the use of that knowledge. Grell, Emma A. C., Clark, Jane E., Sechley, Konrad & Blanchard, Adrienne M. (1998). Intellectual Property Rights in the Bahamas, Barbados, Guyana, Jamaica and Trinidad & Tobago. Study commissioned by the Inter-American Development Bank. For information on the World Trade Organization (WTO) Agreement on Trade-Related Aspects of Intellectual Property (TRIPS), visit that section of the World Trade Organization (WTO) website at: trips_e.htm. For information on the World Intellectual Property Organization (WIPO) and its agreements, visit their website at: CARICOM s Protocol III (Industrial Policy) and Protocol V (Agricultural Policy) amending the Treaty of Chaguaramas recognise the value of traditional knowledge and indigenous knowledge as well as the commercial value of promoting and protecting biodiversity. (It is useful here to retain the distinction between traditional and indigenous. Traditional knowledge includes that of local non-indigenous populations as well as that of local indigenous populations. Both forms of knowledge are of immense value to the region.) The region will need to work to ensure that these resources are adequately preserved for their value to local communities. Useful References 10
12 TRADEWINS is a publication of the Caribbean Export Development Agency (Caribbean Export). It is an important part of the agency s advocacy programme - making trade information accessible to those who need it most. Caribbean Export has identified a need to broaden and consolidate private sector involvement in the business of trade - identifying markets, improving market access, increasing competitiveness and playing a key role in the development of trade policy. TRADEWINS is a series of edited reports, treaties and agreements reflecting trends in regional business and pointing the way to future development. The series will be published occasionally - as new documents come to hand. Through TRADEWINS, we aim to inform members of the private sector, and others, of the important role of research, policy and negotiation in the development of regional and international trade. We hope that they will be encouraged to better organise themselves, to increase the present levels of research and to lobby their governments for changes which can improve the way they do business. Caribbean Export welcomes your feedback on this series. Please feel free to contact us at the addresses below: HEADQUARTERS Sub-Regional Office Caribbean Export Development Agency Caribbean Export Development Agency Mutual Building Calle 6, No. 10 Hastings Main Road Ens. Paraiso Christ Church Santo Domingo BARBADOS DOMINICAN REPUBLIC Mailing Address: Tel: (809) Fax: (809) P.O. Box 34B BARBADOS, W.I. Tel: (246) Fax: (246) Website: TRADE & INVESTMENT FACILITATION OFFICE Caribbean Export Development Agency Miramar Trade Centre Ave. 3 rd, Esq. 80, Edificio Havana (1-B) 4 th Piso, Apt. 410, Miramar Ciudad Habana CUBA Tel: (537) /810 Fax: (537) The Caribbean Export Development Agency serves the Caribbean Forum of ACP States (CARIFORUM). CARIFORUM comprises CARICOM states (Caribbean Community and Common Market), Haiti and the Dominican Republic. The CARIFORUM Secretariat is located in Georgetown, Guyana. (Member States of CARICOM are: Antigua & Barbuda, the Bahamas, Barbados, Belize, the Commonwealth of Dominica, Grenada, Guyana, Jamaica, Montserrat, St. Kitts & Nevis, Saint Lucia, St. Vincent & the Grenadines, Suriname and Trinidad & Tobago.) (Haiti has been provisionally accepted into the Community and will attain full status once its accession has been completed. The Bahamas is a member of the Caribbean Community but not of the Common Market.) 12 Text: Gabrielle Hezekiah Design and Layout: Caribbean Export