Slides from the lecture delievered at the Trinity College Dublin.

1. Exporting EU IP Law through
Free Trade Agreements
Anastasiia Kyrylenko
University of Alicante
University of Strasbourg Dublin, March 10, 2020

3. Brief Recap on TRIPS

4. “Spaghetti bowl of FTAs”

5. IP demandeurs vs. IP demandés

6. EU and US: competitive transplantation
EU/South Korea FTA (July 2011) US/South Korea FTA (March 2012)
- Mutual recognition of some 226 GIs
- Art. 10.21: “[mutually recognized GIs] shall be
protected against: (a) the use of any means in the
designation or presentation of a good that indicates
or suggests that the good in question originates in a
geographical area other than the true place of
origin in a manner which misleads the public as to
the geographical origin of the good; (b) the use of a
GI identifying a good for a like good not originating
in the place indicated by the GI in question, even
where the true origin of the good is indicated or
the GI is used in translation or transcription or
accompanied by expressions such as ‘kind’, ‘type’,
‘style’, ‘imitation’ or the like […]”
- Art. 18.2 “Trademarks including
Geographical Indications”
- Art. 18.2(2): Gis shall be eligible for
protection as TMs (collective or certification
TMs)
- Opposition procedure during registration of
GIs

7. IP demandeurs vs. IP demandés

8. 3 Deep and Comprehensive FTAs: EU and
Georgia/Moldova/Ukraine
- Three separate agreements, but a
common general template
- Political and economic rationale
- Negotiations finished between
2012 and 2013
- Fully in force since 2016 and 2017
- Accent on legal approximation
(“deep”) – different from other
EU FTAs
- Various categories of legal
approximation methods, varying
depth of commitments

9. Criminal enforcement of intellectual property
Definition of
acquis
Deadline
Evolution
ary clause
Finalité
Applicability of
DSM
CJEU
interpreta
tion
G
E
No acquis
Reference to
TRIPS
(GE: Art. 151;
MOL: Art. 278;
UKR: Art. 158 )
Not
applicable
Not
applicable
IP Chapter
does not
include a
finalité
Yes. Arts. 245
and 265.
Not
applicable
to
criminal
enforcem
ent
M
O
L
Yes. Arts. 381
and 401.
U
K
R
Yes. Arts. 304
and 302.
“[T]he arbitration panel shall adopt an interpretation which is
consistent with any relevant interpretation established in rulings
of the WTO Dispute Settlement Body.”
“shall also take into account relevant interpretations
established in reports of panels and of the Appellate
Body adopted by the WTO Dispute Settlement Body
(DSB)”

10. Civil enforcement of intellectual property
Definition of
acquis
Deadline
Evolutionary
clause
Finalité
Applicability
of DSM
CJEU
interpretation
G
E
Word-for-word
inclusion of
certain
provisions of the
Enforcement
Directive
None
Not
applicable
IP
Chapter
does not
include a
finalité
Yes, Art. 245
Not applicable
to civil
enforcement
M
O
L
None Yes, Art. 381
U
K
R
None Yes, Art. 304

11. Border enforcement of intellectual property
Definition of
acquis
Deadline
Evolutionary
clause
Finalité
Applicability
of DSM
CJEU
interpretatio
n
G
E Inclusion by
reference of
Regulation
608/2013
3 years
“Dynamic”
clause (GE:
Art. 418; MOL:
Art. 449)
“shall
periodically
revise”
Customs
Chapter
does not
include a
finalité
Yes, Art. 245
DSM: Binding
“preliminary
rulings” from
CJEU for
obligations
defined by
reference to
acquis (Art.
267; Art. 381;
Art. 304)
M
O
L
1 year Yes, Art. 381
U
K
R
Incl. by ref. of
Reg. 1383/2003
3 years
“Dynamic”
may clause
Art. 463(3)
Yes, Art. 304
“Evolution of EU law”?

12. Digital enforcement of intellectual property
Definition of
acquis
Deadli
ne
Evolutio
nary
clause
Finalité
Applicab
ility of
DSM
CJEU
interpretation
G
E
Arts. 12-15
2000/31 D.
textually
None
Not
applicabl
e
None
Yes, Art.
245
Not applicable
M
O
L
Directive 2000/31
partially included
by ref. in E-
Commerce Chapter
3
years
Art. 449
“shall”
“Progressive reciprocal
liberalization of
establishment and trade
in services”
Yes, Art.
381
“Preliminary
ruling” in DSM
Art. 381
U
K
R
Partially in IP
Chapter and by ref.
in E-Commerce
Chapter
18 m.
and 3
y.
Annex
XVII to
Chapter
6
Full Internal Market
Treatment
Yes, Art.
304
“Preliminary
ruling” in DSM
Art. 304
Annex XVII to Chapter 6 of Title IV of EU/Ukraine AA:
Art. 3 (3): mandatory introduction of any new or amended sector-specific EU acts
Art. 5(6): if new or amended acts are not implemented by Ukraine, suspension of
internal market treatment
Art. 6: “[Provisions] identical in substance to corresponding rules of the T[FEU] and to
acts adopted pursuant thereto […] shall, in their implementation and application, be
interpreted in conformity with the relevant rulings of the C[JEU]”.

13. IP demandeurs vs. IP demandés

14. Bilateral disputes over IP norms in FTAs

15. Selected bibliography
• Van Der Loo G, 'The EU-Ukraine Deep And Comprehensive Free Trade Area: A Coherent
Mechanism For Legislative Approximation', Legislative Approximation and Application of EU
Law in the Eastern Neighbourhood of the European Union (1st edn, Routledge 2014)
• Grosse Ruse-Khan H, 'Introducing The Principles For Intellectual Property Provisions In
Bilateral And Regional Agreements’ (2013) 44 IIC-International Review of Intellectual
Property and Competition Law
• Weatherall KR Burrell, 'Exporting Controversy? Reactions To The Copyright Provisions Of
The US-Australia Free Trade Agreemen: Lessons For US Trade Policy' [2008] JOURNAL OF
LAW, TECHNOLOGY & POLICY
• O’Connor B, and de Bosio G, 'The Global Struggle Between Europe And United States Over
Geographical Indications In South Korea And In The TPP Economies', The Importance of
Place: Geographical Indications as a Tool for Local and Regional Development (Springer
2017)
• Kyrylenko A, ‘Use it or Lose It? Ukraine amends its law on Gis’ (2020) 15 Journal of
Intellectual Property Law and Practice
• Antons C, and Hilty R, Intellectual Property And Free Trade Agreements In The Asia-Pacific
Region (C Antons and R Hilty, Springer 2015)

16. Anastasiia Kyrylenko
University of Alicante
University of Strasbourg
anastasiia.kyrylenko@ua.es
http://www.eipin-innovationsociety.org/
Thank you for your attention!