Over the last dozen or so years, countries with laws based on the Copyright Act 1911 (UK) have prioritized the issue of copyright exceptions in their law reform agendas. In each of these countries, a central question has related to the desirability of injecting greater flexibility into exceptions, most notably through the introduction of a “fair use” provision in addition to, or perhaps replacing much of, the existing closed-list system. The resulting statutory reforms have varied. Sri Lanka and Israel, for example, have both adopted a US-style fair use defense, along with a small number of specific exceptions, in their new copyright laws of 2003 and 2007. Singapore has also enacted an open-ended provision, albeit in the form of extended fair dealing rather than fair use. This was achieved by amending one of the purpose-limited fair dealing exceptions to allow it to apply to (almost) any use, with the many closed-list exceptions otherwise retained. In contrast, the reforms of Canada and the UK have – in terms of drafting choices – stayed closer to the existing infrastructure, with the addition of new fair dealing purposes directed to education, parody, and (in the UK) caricature, pastiche and quotation, and the introduction of new detailed exceptions to accommodate specific practices such as user-generated content, private copying, and data mining. The Australian reform experience has been less fruitful. After some expansion of exceptions (albeit within the closed-list model) in 2006, an impasse arose following strong calls for fair use from two major law reform inquiries. Despite the level of attention already given to copyright exceptions, the Australian government initiated yet another round of consultation in relation to reform options in 2018. There may finally be some progress, as the Australian government announced in August 2020 that it intends to make a series of reforms to the Australian copyright statute, including a new fair dealing exception for non-commercial quotation, a limitation on liability for use of orphaned works, and reforms to certain specific exceptions.

Historically, common law countries took a restrictive approach to transactions involving trademarks. This restrictive approach was said to flow from the reasons for granting protection for trademarks in the first place. If a trademark communicates information to consumers as to the origin and quality of a particular trader’s goods or services, it was thought that any dealing with a trademark, such as an assignment or the grant of a licence to a third party, would disrupt the source and quality guarantee functions of the mark and potentially cause confusion among consumers. In other words, the very reasons that a trademark receives legal protection were thought to justify constraining an owner’s ability to deal with the mark (in contrast with other personal property, such as an unencumbered chattel or a patent). Initially, these sorts of concerns were highly influential, and the law either proscribed or imposed strict limitations on the exploitation of trademarks. However, over the course of the last century there was a gradual liberalisation of these rules. Consequently, in most common law countries, we have now reached a position where the law recognises registered trademarks to be personal property, which can be exploited with fewer restrictions than in the past. This liberalisation has to a large extent reflected changes in business practices, as brands have come to be recognised as valuable commodities in their own right and as trademark licensing, merchandising and franchising have become large and lucrative industries. Notwithstanding this, the tension between the idea of the mark as “property” and the mark as a badge of origin remains. This tension is reflected in the fact that the law retains restrictions on trademark transactions in cases where marks have been or might be used in such a way as to deceive consumers. Working out when a badge of origin can be transferred to an unrelated third party whilst not falling into the category of a “deceptive transaction” remains difficult.

I. Introduction

The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement) forever changed the relationship between intellectual property (IP) and international trade. While there had always been a link between IP and international trade, the TRIPS Agreement formally integrated the two areas at the multilateral level for the first time. The TRIPS Agreement is comprehensive in its coverage of IP: it deals with copyright and related rights, trademarks, geographical indications (GIs), industrial designs, patents, layout-designs of integrated circuits and protection of undisclosed information, and contains further provisions relating to anti-competitive practices in contractual licences and enforcement of IP rights. Further, much like other covered agreements of the WTO, the most-favoured-nation (MFN) and national treatment (NT) principles lie at the heart of the Agreement.

Where the TRIPS Agreement is perhaps unusual is that it establishes standards of IP protection that each WTO Member must accord to nationals of other Members. Such a regulatory, harmonised approach is different from the approaches of the other covered agreements of the WTO and might have prevented further developments outside of the multilateral forum. However, Members are specifically permitted under the Agreement to apply higher levels of protection if they so desire, as long as the principles of MFN and NT are respected. Thus unlike Article XXIV of the GATT, Article 4 of the TRIPS Agreement does not exempt Preferential Trade Agreements (PTAs) from the operation of MFN – any Member which grants ‘any advantage, favour, privilege or immunity’ to the nationals of any other country (whether a WTO Member or not) must accord the same treatment to the nationals of other WTO Members.

Such higher standards of IP protection than those mandated by the TRIPS Agreement are often called ‘TRIPS-Plus’ provisions. Members may negotiate PTAs which provide for TRIPS-Plus provisions that require, inter alia, the inclusion of additional protectable subject matter, broader and more extensive standards of protection, stronger enforcement mechanisms, and a weakening of ‘flexibilities’ and ‘special and differential treatment’ granted to developing and least developed countries in the TRIPS Agreement. The effect of these provisions is, in part, to ‘ratchet up’ international IP standards, as the more PTAs are negotiated, the more far-reaching the implications of the PTA provisions become.