Specialization in intellectual property of tribunals and judiciaries

• Autor: Edgardo Ettlin
• Páginas: 91-108

SPECIALIZATION IN INTELLECTUAL PROPERTY

OF TRIBUNALS AND JUDICIARIES

EDGARDO ETTLIN*

JUDICIARY POWER - ORIENTAL REPUBLIC OF URUGUAY

Summary: I. Introduction - II. Advantages and problems of judicial specialization in

the field of Intellectual Property - III. On the controversy “specialization vs. non-specia-

lization” - IV. Different specialization models - V. By way of conclusions

I. Introduction

The question about the specialization or not of the tribunals in the subject of Inte-

llectual Property (IP), is merely one chapter related to the debate on the specialization

of tribunals in various aspects of juridical disciplines. Like in all branches of human

knowledge, nowadays it is virtually impossible to know appropriately all topics of the

different branches through which Law has been evolving and will diversify. “Hunter of

many hares does not catch any of them”. Whoever intends to encompass all aspects of

juridical knowledge matters, must at most choose some section if he wants to fully mas-

ter it (option of the specialists) or, in any case, we will content to appreciate what does

some surfaces like or to be acquainted with some legal subjects with more or less deep-

ness (election of the generalists). This question could be solved sharing with all beings

our information and knowledge, but to treat this exceeds our subject.

Specialization is here to stay in the Judiciaries of all nations, of regional blocks and

international unions, as a necessity to attend properly to the demands of the most com-

plexes and various requirements of integral jurisdictional protection the societies have.

When certain disputes that have a focused problem or a complexity different from those

of other areas reach certain rates or critical numbers, arises the need that these disputes

be subject to a differentiated tutelage and a specialized jurisdiction, so that they could be

adequately addressed, and to reinforce their protection.

Recognizing the reality expressed in the preceding paragraphs, the concern to cir-

cumscribe the scope of competence or thematic knowledge of the Courts to certain fields

based on legal knowledge is proposed to improve the accessibility to justice, to substan-

tiate it with economy of resources and to offer an effective resolution through Judges

or experienced decision makers, with expertise in the subject matters and their peculiar

issues at stake, in both substantive and procedural aspects.

* The author wants to thank Judge Aidelena Pereira (Panama) for her kind suggestions.

[1] Art. 41.5 of the TRIPS: “It is understood that this Part does not create any obligation to put in place a judicial system for the

enforcement of Intellectual Property rights distinct from that for the enforcement of law in general, nor does it affect the capacity of

Members to enforce their law in general. Nothing in this Part creates any obligation with respect to the distribution of resources as

between enforcement of Intellectual Property rights and the enforcement of law in general.”.

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Jurisdictional specialization is the desideratum of any Administration of Justice. Howe-

ver, the need to specialize jurisdictions by divisions or matters depends on the circum-

stances and needs of each society, on the complexities of the particular litigious issues

that are addressed and the rules that must be applied to them, on the magnitude of the

interests that they concur, on the strategic importance that the matter has in the design

of the objectives, plans and policies of State in matter of welfare, security, development

and promotion of investments, and on the national and international government com-

mitments. To fulfill these demands plausibly, in the field of judicial government it is ne-

cessary to promote, create and train more qualified Courts, skilled and knowledgeable

of the applicable rules for certain particular issues, especially those of substantial nature.

But it is also necessary to organize them and provide them with resources in an appro-

priate manner.

When we refer to "specialization of a judiciary in Intellectual Property matters" we

allude, in expressions of the International Bar Association, to the necessity of a “a perma-

nently organised body with independent judicial powers defined by law, consisting of one or more

Judges who sit to adjudicate disputes and administer justice in the IP field”. For DE WERRA, it

means "An independent public judicial body than can operate at national or regional levels to ad-

judicate certain types of disputes relating to IP rights, but may also adjudicate other types of dis-

putes". Intellectual Property issues have characteristics that are uniquely different from

those of general criminal, administrative, civil and commercial systems, although they

draw on them and share some issues. All jurisdictional specialization seeks to contribute

to improving the management and administration of the litigiousness of a problem, and

in the matter of Intellectual Property the thing is not different. The specialization of a

Judiciary that deals with Intellectual Property matters goes hand in hand with efforts to

reinforce and give greater importance to these rights, and shows the concern with which

society and its politicians consider these rights.

The particular characteristics of the topic on Intellectual Property, its normative inor-

ganicity that involves various national, regional, community and global norms, the fact

that it has technical aspects and its own language, its constant evolution that follows

technological innovations and the challenges created to maintain the protection of these

rights against illicit trafficking, have warned that these rights must be protected in a

differential or independent way with respect to the rest of the Law and the various bran-

ches of Law. In the area of Courts, this requires knowledge, sensitivity and pecualiar

skills in their Judges. If Intellectual Property is not fully understood, not only errors and

ignorance in the application of the rules on the matter will be revealed, but an effective

protection will not be guaranteed to a sector that contributes through its knowledge, in

an important way to the development and growth of a society.

The different countries that have adhered to or ratified the international conventions

on Intellectual Property are not obliged to establish national specialized Courts in the

field of Intellectual Property. Therefore, it is not considered that this lack or omission

could affect its international commitments (article. 41.5 of the Agreement on Trade-Re-

lated Aspects of Intellectual Property Rights, or TRIPS) ([1]). Nevertheless, the States

are obliged in any case to comply with, and effectively to protect, Intellectual Property

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