Protection of Intellectual Property Rights in Investor-State Arbitration: Underlying Challenges and Perspectives

Kateryna Lazarchuk,Oksana Zadniprovska

doi:10.18523/kmlpj249905.2021-7.77-94

Abstract

This article provides an analysis of existing international mechanisms for protecting intellectual property rights and concludes whether investment arbitration can be an effective forum for resolving intellectual property disputes. It focuses on an examination of the scope of intellectual property rights protection by bilateral investment agreements, as well as the specifics of the investment dispute resolution procedure. In addition, the analysis includes an assessment of the territoriality principle of intellectual property rights and its application in Ukrainian law, as well as an examination of international investment treaties concluded with Ukraine to determine the scope of protection afforded to intellectual property.

Highlights

Intellectual property has become a valuable intangible asset for generating profits, promoting technological innovation and stimulating an economic development
This article provides an analysis of existing international mechanisms for protecting intellectual property rights and concludes whether investment arbitration can be an effective forum for resolving intellectual property disputes
Article 16:1 of the Agreement in Trade-Related Aspects of Intellectual Property Rights grants the IP holders an exclusive right to prevent third parties from using “identical or similar signs for goods or services which are identical or similar to those in respect of which the trademark is registered where such use would result in a likelihood of confusion.” 12 While this provision places a legal obligation on states to facilitate the exclusive right of IP holders, states are free to choose how to implement this obligation into national law and practice.[13]

Summary

Introduction

Intellectual property (hereinafter — “IP”) has become a valuable intangible asset for generating profits, promoting technological innovation and stimulating an economic development. This can be explained by the territorial nature of IPRs which allows states to adopt their national IP legislation for achieving specific public goals and reaching a certain level of technological and economic development.[4] international protection for IPRs has been available since the adoption of Paris Convention for the Protection of Industrial Property and the Berne Convention for the Protection of Literary and Artistic Works, a proliferation of international IP disputes has become a growing trend in XXI century.[5] As a result of globalization processes worldwide and the gradual evolution of technology, the IP disputes are often cross-b order in nature which requires flexibility in dispute resolution procedures, confidentiality of proceedings, specific knowledge and technical expertise, as well as recognition and enforcement of court decisions in different countries This explains the recent trend towards submitting the IP disputes for international arbitration.[6].

Intellectual property

16 Evaluation of the WTO Dispute Settlement System

Substantive protection afforded to foreign IPRs holders by the BITs

Conclusion