Proposal for a COUNCIL DECISION on the extension of the legal protection of topographies of semiconductor products to persons from the Isle of Man
Date: 1996-09-04
Institutions: European Commission
Subjects: European Economic Area, Isle of Man, designs and models, electronic component, industrial property

COMMISSION  OF THE  EUROPEAN  COMMUNITIES 

Brussels,  04.09.1996 
COM(96)41I  final 

Proposal  for a 

COUNCIL DECISION 

on the extension of the legal protection 
of topographies of semiconductor products 
to persons from the Isle of Man 

(presented by the Commission) 

Explanatory mémorandum 

Community and international legal context 

Council Directive 87/54/EEC of  16 December  1986 on the legal protection  of topographies of 
lays  down  the  basic  principles  which  the  Member States  must 
semiconductor  products 
observe  for  the  protection  of  intellectual  property  in  these  topographies. 
It  provides  that 
protection  is  to  be  available  to  natural  persons  who  are  nationals  of,  or  have  their  habitual 
residence  in, a Member State and to companies  or other  legal  persons which  have  a real  and 
effective  industrial  or  commercial  establishment  on  the  territory  of  a  Member State.  The 
Directive has been incorporated  into the national law of all the Member States. 

Under  the  terms  of  the  Agreement  on  the  European  Economic  Area,  the  Directive  has  also 
applied  since  1 January  1994,  in  the  EFTA  countries  which  are  contracting  parties  to  that 
Agreement, as a binding act forming  part of those countries' domestic legislation. 

A number of Council Decisions, also taken over in the Agreement on the European  Economic 
Area  as  binding  acts,  have  extended  the  legal  protection  of  topographies  of  semiconductor 
products  introduced  by Directive 87/54/EEC  to persons from  certain countries  and  territories 
outside the Community.  In some cases permanent  and  in others  interim  protection  has been 
accorded on a reciprocal basis to natural and legal persons. 

As  provided  for  in  Article 4(1)  and  (2)  of  Protocol 28  to  the  Agreement  on  the  European 
Economic  Area, the contracting  parties to the Agreement  have the right to take decisions  on 
the  extension  of  the  legal  protection  of  topographies  of  semiconductor  products  to  persons 
from  any  third  country  or territory  which  is not  a contracting  party  to  the  Agreement  where 
such persons do not benefit  from  the right to protection under the Agreement.  They may also 
conclude agreements to that  effect. 

The  contracting  party  concerned  is  to  endeavour,  where  the  right  to  protection  for 
topographies of semiconductor products is extended to a non-contracting party, to ensure that 
the non-contracting  party concerned  will grant the right to protection to the other  contracting 
parties to the Agreement under equivalent conditions to those granted to the contracting party 
concerned. 

1 

OJ No L 24, 27.1.1987, p. 36. 
Article 65(2) of and point  1  of Annex XVII to the Agreement on the European  Economic Area. 

ï 

In  addition,  the  Agreement  on  trade-related  aspects  of  intellectual  property  rights,  which 
forms part of the results of the Uruguay  Round of multilateral  trade negotiations embodied  in 
the  Marrakesh  Final  Act  of  15 April  1994,  requires  Member States  to  grant  protection  to 
topographies  of  integrated  circuits  in accordance  with  the  provisions  of  that  Agreement  and 
those of the Treaty on Intellectual Property in Respect of Integrated Circuits to which it refers. 

The Agreement,  together with that  establishing  the  World  Trade  Organization  (to which  it is 
annexed),  entered 
Council  Decision 94/824/EC  of 
22 December  1994  provides  for  the  legal  protection  of  topographies  of  semiconductor 
products to be extended  to nationals of Members of the  World  Trade Organization.  The  Isle 
of Man is not at present a Member of the World Trade Organization. 

into  force  on  1  January  1995. 

Relations between the Community and the Isle of Man 

Since  7 November  1987 the  Community  has,  on  the  basis  of  a  series  of  interim  decisions, 
granted  legal  protection  consistent  with  the  principles  contained  in  Directive 87/54/EEC  to 
persons from  territories which have a special  link with the United Kingdom, including the Isle 
of Man.  In accordance  with Council  Decision 94/828/EC, that protection  was extended  until 
31 December 1995. 

The  protection  provided  by  all  of  these  Decisions  is  granted  to  natural  persons  who  are 
nationals of one of the territories concerned or who have their habitual residence there. On the 
other  hand,  companies  or  other  legal  persons  in  these  territories  which  have  a  real  and 
effective  industrial  or  commercial  establishment  there  are  eligible  for  protection  only  if  the 
Commission  establishes that companies or other legal persons of a Member State which have 
the right to protection under Directive 87/54/EEC benefit  from  protection there. 

The above-mentioned  Decisions, which are of limited duration, were based on the assumption 
that the territories which had not yet adopted specific  legislation would do so and would make 
such  legislation  applicable  as  soon  as  possible  to  persons  from  the  Member States  of  the 
Community benefiting  from the right to protection under Directive 87/54/EEC. 

OJ No L 349, 31.12.1994, p. 201. 
Council  Decision  87/532/EEC of 26 October  1987 on the extension  of legal protection  of topographies 
of  semiconductor  products  in  respect  of  persons  from  certain  countries  and  territories  (OJ  No L  313, 
4.11.1987,  p. 22);  Second  Council  Decision  90/511/EEC  of  9 October  1990  on  the  extension  of  the 
legal  protection  of  topographies  of  semiconductor  products  to  persons  from  certain  countries  and 
territories (OJ No L 285, 17.10.1990, p. 31);  Council  Decision 93/16/EEC of 21 December  1992 on the 
extension  of the legal protection  of topographies of semiconductor products to persons from  the  United 
States of America and certain territories (OJ No L  11,  19.1.1993, p. 20); Council  Decision  93/520/EEC 
of  27 September  1993  amending  Decision  93/16/EEC  on  the  extension  of  the  legal  protection  of 
topographies  of  semiconductor  products  to  persons  from  the  United  States  of  America  and  certain 
territories  (OJ  No L 246, 2.10.1993,  p. 31); Council  Decision  94/828/EC  of  19 December  1994 on  the 
extension  of  the  legal  protection  of  topographies  of  semiconductor  products  to  persons  from  certain* 
territories (OJ No L 351, 31.12.1994, p. 12). 

The Isle of Man has responded by adopting the Design Right (Semiconductor  Topographies) 
Order 1993, under which topographies of semiconductor products are protected in the territory 
of the Isle of Man.  The Order entered into force on  1  January  1994 and applies the principles 
laid down in Directive 87/54/EEC.  Natural  persons, companies and other legal persons  from 
the Community are now expressly entitled to protection in the territory of the Isle of Man. 

The  Isle  of  Man  intends  in  due  course  to  accede  to  the  World  Trade  Organization  and  to 
implement the Agreement on trade-related aspects of intellectual property rights.  It should be 
stressed that, once the Agreement on trade-related aspects of intellectual property rights enters 
into  force,  it  will  no  longer  be  possible  to  apply  the  current  system  of  protection  in  the 
Community,  which  is  based  on  a  reciprocity  requirement,  to  other  Members  of  the 
Agreement. 

The time it will take for the Isle of Man to accede to the World Trade Organization and to the 
Agreement  on trade-related  aspects of intellectual  property rights is as yet unknown, and the 
Government of the Isle of Man has requested the Community to maintain the protection it has 
granted until such accession, to avoid any gap in protection. 

Proposal 

Given  that the current  legislation  is to remain  in  force  in the  Isle of  Man, thereby  affording 
persons  from  the  Community  protection  for  topographies,  it  is  proposed  that  the  Council 
extend  protection  under  Directive 87/54/EEC  to  natural  and  legal  persons  from  the  Isle  of 
Man,  retroactively  from  1  January  1996, until  the  Isle  of  Man  accedes  to  the  World  Trade 
Organization  and implements the Agreement  on trade-related  aspects of intellectual  property 
rights. 

Measures to be taken in connection with the Agreement on the European Economic Area 

The Decision which the Council is recommended to adopt relates, as stated above, to a matter 
covered  by  the  Agreement  on  the  European  Economic  Area  and  is  aimed  at  extending  to 
persons from the  Isle of Man the protective  machinery  already  applied  to  them  through  the 
adoption  of a number  of Council  Decisions  already taken  over  as binding  acts  in point 3 of 
Annex XVII to that Agreement.  Accordingly, the Decision should cover the EFTA countries 
which are party to the Agreement. 

Moreover,  in accordance  with Article 4(2) of Protocol 28 to the Agreement,  the  Community 
will  endeavour  to  ensure that  the  Isle  of  Man  will  grant the  right  to protection  to  the  other 
Contracting Parties to the Agreement under equivalent conditions to those granted to it. 

Proposal for a Council Decision 

on the extension of the legal protection 
of topographies of semiconductor products 
to persons from the Isle of Man 

THE COUNCIL OF THE EUROPEAN UNION, 

Having regard to the Treaty establishing the European Community, 

Having regard to Council  Directive 87/54/EEC of  16 December 1986 on the legal protection 
of topographies of semiconductor products/  and in particular Article 3(7) thereof. 

Having regard to the proposal from the Commission, 

Whereas  the  right  to  legal  protection  of  topographies  of  semiconductor  products  in  the 
Community  applies  to  persons  qualifying  for  protection  under  Article 3(1)  to (5)  of 
Directive 87/54/EEC; 

Whereas this right can be extended by Council decision to persons who do not benefit from 
protection under the said provisions; 

Whereas the extension of the protection in question should, as far as possible, be decided by 
the Community as a whole; 

Whereas the Community  has, since  7 November 1987, extended  such protection  to  persons 
from  the Isle of Man by successive Council Decisions taken on an interim basis, the latest of 
which is Decision 94/828/EC of 19 December 1994;6 

Whereas that Decision applied until 31 December 1995; 

OJNoL24,27.1.J987,p.36. 
Council  Decision  87/532/EEC of 26 October  1987 on the extension of legal protection  of topographies 
of  semiconductor  products  in  respect  of  persons  from  certain  countries  and  territories  (OJ  No L 313, 
4.11.1987,  p. 22);  Second  Council  Decision  90/511/EEC  of  9 October  1990  on  the  extension  of  the 
legal  protection  of  topographies  of  semiconductor  products  to  persons  from  certain  countries  and 
territories (OJ No L 285, 17.10.1990, p. 31);  Council Decision 93/16/EEC of 21 December  1992 on the 
extension of the legal protection of topographies of semiconductor products to persons from  the United 
States  of  America  and  certain  territories  (OJ  NoL  11,  19.1.1993,  p. 20),  as  amended  by  Council 
Decision  93/520/EEC  of  27 September  1993  (OJ  NoL246,  2.10.1993,  p. 31);  Council  Decision 
94/828/EC  of  19 December  1994  on  the  extension  of  the  legal  protection  of  topographies  of 
semiconductor products to persons from certain territories (OJ No L 351, 31.12.1994, p. 12). 

Whereas  the  Isle  of  Man  has  appropriate  legislation  on  the  protection  of  topographies  of 
semiconductor  products,  which  entered  into  force  on  1  January  1994;  whereas  that 
legislation  applies  Directive 87/54/EEC  and  gives effect  to  the  Council's  previous  Decisions 
on  the  topic;  whereas  the  Isle  of  Man  extends  application  of  the  legislation  to  nationals  of 
Member States of the European Community; 

Whereas the Agreement  on trade-related  aspects of  intellectual  property  rights, concluded  on 
15 April  1994,  requires  Members  of  the  World  Trade  Organization  to  grant  protection  to 
integrated-circuit  topographies  in  compliance  with  its  own  provisions  and  with  those  of  the 
Treaty on Intellectual Property in Respect of Integrated Circuits to which it refers; 

Whereas  the  Agreement,  together  with  that  establishing  the  World  Trade  Organization  (to 
which it is annexed), entered into force on 1  January  1995; 

Whereas  it  is  foreseeable  that  the  Isle  of  Man  will  accede  to the  World  Trade  Organization 
and implement the Agreement on trade-related aspects of intellectual property rights; 

Whereas the provisions guaranteeing protection of topographies  in the Isle of Man for  persons 
from the Community are still in force there; 

Whereas  protection  should  continue  to be extended  under  Directive 87/54/EEC  to the  Isle of 
Man,  with  effect  from  1  January  1996,  until  the  Isle  of  Man  accedes  to  the  World  Trade 
Organization  and  implements the Agreement  on trade-related  aspects of  intellectual  property 
rights, 

Design  Right  (Semiconductor  Topographies)  Order  of  14 December  1993  and  Design  Right 
(Semiconductor Topographies) Regulations of  18 January  1994. 

e 

HAS ADOPTED THIS DECISION: 

Article 1 

Member States  shall  extend  the  right  to  legal  protection  under  Directive 87/54/EEC  as 
follows: 

(a) 

(b) 

natural  persons  who  are  nationals  of  the  Isle  of  Man  or  who  have  their  habitual 
residence  in  the  territory  of  the  Isle  of  Man  shall  be  treated  in  the  same  way  as 
nationals of a Member State; 

companies or other legal persons from  the Isle of Man which have a real and  effective 
industrial  or commercial establishment  there shall be treated  as if they had  a real  and 
effective  industrial or commercial establishment in the territory of a Member State. 

This Decision shall apply from 1  January  1996. 

Article 2 

The  Member States  shall  extend  the  right  to  protection  under  this  Decision  to  the  persons 
referred  to  in  Article  1 until  the  Isle  of  Man  accedes  to  the  World  Trade  Organization  and 
implements the Agreement on trade-related aspects of intellectual property rights. 

Any  exclusive  rights  acquired  under  Decisions  87/532/EEC,  90/511/EEC,  as  amended  by 
Decision  93/520/EEC,  94/828/EC  or  under  this  Decision  shall  continue  to  produce  their 
effects  for the period laid down under Directive 85/54/EEC. 

This Decision is addressed to the Member States. 

Article 3 

Done at Brussels, 

For the Council 
The President 

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ISSN 0254-1475 

COM(96) 411 final 

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