WTO Dispute Settlement Proceeding Regarding United States of America-Section 211 of the Department of Commerce Appropriations Act, 1999

AGENCY:

Office of the United States Trade Representative.

ACTION:

Notice; request for comments.

SUMMARY:

The Office of the United States Trade Representative (“USTR”) is providing notice of a request for the establishment of a dispute settlement panel under the Marrakesh Agreement Establishing the World Trade Organization (“WTO”), requested by the European Communities and their Member States (the “EC”). The EC has asked that a panel examine whether section 211 of the “Omnibus Appropriations Act of 1998” [sic] is consistent with U.S. obligations under the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPs Agreement”). The statutory provision to which the EC refers is section 211 of the Department of Commerce Appropriations Act, 1999, as included in Pub. L. 105-277 (“Section 211”). Section 211 concerns the registration or enforcement, by Cuban entities or their successors in interest, of trademarks, trade-names, or commercial names that are substantially similar to trademarks, trade-names, or commercial names associated with businesses confiscated without compensation by the Cuban government, without the consent of the previous owners of the trademarks, trade-names or commercial names.

DATES:

Although USTR will accept any comments received during the course of the dispute settlement proceedings, comments should be submitted by September 1, 2000, to be assured of timely consideration by USTR in preparing its first written submission to the panel.

ADDRESSES:

Comments may be submitted to Sandy McKinzy, Litigation Assistant, Office of Monitoring and Enforcement, Room 122, Attn: Section 211, Office of the United States Trade Representative, 600 17th Street, N.W., Washington, D.C., 20508.

FOR FURTHER INFORMATION CONTACT:

L. Daniel Mullaney, Associate General Counsel, at (202) 395-3581.

SUPPLEMENTARY INFORMATION:

Pursuant to section 127(b) of the Uruguay Round Agreements Act (URAA) (19 U.S.C. 3537(b)(1)), USTR is providing notice that, on June 30, 2000, the EC submitted a request for the establishment of a WTO dispute settlement panel to examine the consistency of Section 211 with the WTO TRIPs Agreement. Under normal circumstances, the panel, which will hold its meetings in Geneva, Switzerland, is expected to issue a report detailing its findings and recommendations within six to nine months after it is established.

Major Issues Raised and Legal Basis of the Complaint

In its request for the establishment of a panel, the EC alleges that three substantive provisions of section 211 are inconsistent with the TRIPs Agreement:

1. The EC alleges that Section 211(a)(1) limits the right to register or renew trademarks, trade-names or commercial names at the United States Patent and Trademark Office, in violation of TRIPs Article 2.1, in conjunction with Article 6 quinquies A(1) of the Paris Convention for the Protection of Industrial Property (1967) (“Paris Convention”), and TRIPs Article 15.1. The EC alleges that Section 211(a)(1) does this by, in the case of trademarks, trade-names and commercial names that are substantially similar to trademarks, trade-names, or commercial names associated with businesses confiscated without compensation by the Cuban government, requiring the consent of the original owner or his successor-in-interest of the trademark, trade-name, or commercial name.

2. The EC alleges that Section 211(a)(2)—by providing that U.S. courts shall not recognize, enforce, or otherwise validate common law or registration rights asserted by designated nationals or their successors in interest in trademarks, trade-names and commercial names that are substantially similar to trademarks, trade-names and commercial names associated with businesses confiscated without compensation by the Cuban government—violates TRIPs Art. 2.1, in conjunction with Articles 6 bis (1) and 8 of the Paris Convention, and TRIPs Article 16.1 (which require WTO Members to provide protection for well-known trademarks and for trade-names). The EC also alleges that Section 211(a)(2) violates the TRIPs enforcement provisions, such as TRIPs Article 42, and the most favored nation and national treatment provisions of the TRIPs Agreement (TRIPs Articles 3.1, 2.1 (in conjunction with Article 2(1) of the Paris Convention), and 4).

3. Finally, the EC alleges that Section 211(b)—by providing that U.S. courts shall not recognize, enforce, or otherwise validate treaty rights asserted by designated nationals or their successors in interest in trademarks, trade-names and commercial names that are substantially similar to trademarks, trade-names, or commercial names associated with businesses confiscated without compensation by the Cuban government (unless the original owner consents)—violates TRIPs Art. 2.1, in conjunction with Articles 6 bis (1) and 8 of the Paris Convention (requiring protection of well-known trademarks and trade-names) and TRIPs Articles 3.1, 4, 16.1, and 42 (provisions concerning most favored nation treatment, national treatment, trademark rights conferred, and fair and equitable enforcement procedures).

Public Comment: Requirements for Submissions

Interested persons are invited to submit written comments concerning the issues raised in this dispute. Comments must be in English and provided in fifteen copies to Sandy McKinzy at the addressed provided above. A person requesting that information contained in a comment submitted by that person be treated as confidential business information must certify that such information is business confidential and would not customarily be released to the public by the submitting person. Confidential business information must be clearly marked “BUSINESS CONFIDENTIAL” in a contrasting color ink at the top of each page of each copy.

Information or advice contained in a comment submitted, other than business confidential information, may be determined by USTR to be confidential in accordance with section 135(g)(2) of the Trade Act of 1974 (19 U.S.C. 2155(g)(2)). If the submitting person believes that information or advice may qualify as such, the submitting person—

(1) Must so designate the information or advice;

(2) Must clearly mark the material as “SUBMITTED IN CONFIDENCE” in a contrasting color ink at the top of each page of each copy; and

(3) Is encouraged to provide a non-confidential summary of the information of advice. Pursuant to section 127(e) of the URAA (19 U.S.C. 3537(e)), USTR will maintain a file on this dispute settlement proceeding, accessible to the public, in the USTR Reading Room: Room 101, Office of the United States Trade Representative, 600 17th Street, NW., Washington, DC 20508. The public file will include a listing of any comments received by USTR from the public with respect to the proceeding, the U.S. submissions to the panel in the proceeding, the submissions, or non-confidential summaries of submissions, to the panel received from other parties in the dispute, as well as the report of the dispute settlement panel, and, if applicable, the report of the Appellate Body. An appointment to review the public file (Docket WTO/DS-176, “Section 211”) made be made by calling Brenda Webb, (202) 395-6186. The Reading Room is open to the public from 9:30 a.m. to 12 noon and 1 p.m. to 4 p.m., Monday through Friday.