Defining Unilateralism under International IP Law: The Case of Border Measures Against Goods in Transit Shashank P. Kumar LL.M. (Yale 11); B.Sc., LL.B. (Hons.; NLU-J 10) MHRD IP Chair Roundtable Symposium, NLU- Jodhpur 17 th and 18 th March, 2012

EC Regulation 1383 Cases and rights covered Manufacturing fiction Ex officio Dispute: WTO Complaint India-EU Compromise ECJ Judgment in Nokia Contemporary relevance: Absence of global patents; FTAs

EC Regulation 1383/03: BMR [Recital 8:] Proceedings initiated to determine whether an intellectual property right has been infringed under national law will be conducted with reference to the criteria used to establish whether goods produced in that Member State infringe intellectual property rights.

Unilateralism Ipso facto, unilateralism is neither a stranger nor a threat to international law: in the Westphalian system states are even entitled to act unilaterally – it being the very essence of sovereignty. But, desirability of unilateral action varies depending upon its substance, and its value judgment:

Spectrum of Desirability Pejorative: Imposition of one states will on another. States subject to such action do not participate in the decision- making behind the act. …… Leadership: In situations where multilateralism and international cooperation is rendered impossible, unilateralism only way to promote and enforce shared values (dependent upon a value judgment of the sphere of regulation) Increasing desirability

Unilateralism Individual unilateral acts: BMR Collective unilateral acts: ACTA, FTA etc. Obligation to cooperate: International Law does not prohibit unilateral acts, but prescribes a residual space for unilateral action through positive rules of international law: WTO Law (GATT and TRIPS)

Regime Shifting TRIPS Bargain Shift away from the WTO No MFN Exception Lasagna effect

EC Regulation 1383 Characteristics: Self Referential: Based on an inherent property logic Unilateral Extraterritorial – defined with respect to conduct occurring abroad. Also, no connection of market access, as goods are only in transit

GATT Article V: Freedom of Transit [Definition of Transit:] 1. Goods (including baggage), and also vessels and other means of transport, shall be deemed to be in transit across the territory of a contracting party when the passage across such territory, with or without trans-shipment, warehousing, breaking bulk, or change in the mode of transport, is only a portion of a complete journey beginning and terminating beyond the frontier of the contracting party across whose territory the traffic passes. Traffic of this nature is termed in this article "traffic in transit. [Obligation:] 2. There shall be freedom of transit through the territory of each contracting party, via the routes most convenient for international transit, for traffic in transit to or from the territory of other contracting parties. No distinction shall be made which is based on the flag of vessels, the place of origin, departure, entry, exit or destination, or on any circumstances relating to the ownership of goods, of vessels or of other means of transport.

TRIPS, Art Members shall give effect to the provisions of this Agreement. Members may, but shall not be obliged to, implement in their law more extensive protection than is required by this Agreement, provided that such protection does not contravene the provisions of this Agreement. Members shall be free to determine the appropriate method of implementing the provisions of this Agreement within their own legal system and practice.

TRIPS, Article 51: Suspension of Release by Customs Authority Members shall, in conformity with the provisions set out below, adopt procedures [FN13] to enable a right holder, who has valid grounds for suspecting that the importation of counterfeit trademark or pirated copyright goods [FN14] may take place, to lodge an application in writing with competent authorities, administrative or judicial, for the suspension by the customs authorities of the release into free circulation of such goods. FN13: It is understood that there shall be no obligation to apply such procedures to imports of goods put on the market in another country by or with the consent of the right holder, or to goods in transit. FN14: counterfeit trademark goods infringes the rights of the owner of the trademark in question under the law of the country of importation "pirated copyright goods: infringes a copyright or a related right under the law of the country of importation.

GATT Article XX: General Exceptions [Chapeau] Subject to the requirement that such measures are not applied in a manner which would constitute a means of arbitrary or unjustifiable discrimination between countries where the same conditions prevail, or a disguised restriction on international trade, nothing in this Agreement shall be construed to prevent the adoption or enforcement by any contracting party of measures: (b) necessary to protect human, animal or plant life or health; (d) necessary to secure compliance with laws or regulations which are not inconsistent with the provisions of this Agreement, including those relating to customs enforcement

GATT Article XX Necessity: (i) general relationship of ends and means between the measure and the objective sought to be achieved; (ii) less trade-restrictive alternative Duty to Negotiate: States can define the end, but not the means. Rigid imposition of a states will not permitted.

TRIPS, Art. 7: Objectives The protection and enforcement of intellectual property rights should contribute to the promotion of technological innovation and to the transfer and dissemination of technology, to the mutual advantage of producers and users of technological knowledge and in a manner conducive to social and economic welfare, and to a balance of rights and obligations.