ANNEX 1C
AGREEMENT ON TRADE-RELATED
ASPECTS OF
INTELLECTUAL PROPERTY
RIGHTS
PART I GENERAL PROVISIONS AND BASIC
PRINCIPLES
PART II STANDARDS CONCERNING THE
AVAILABILITY, SCOPE AND USE OF
INTELLECTUAL PROPERTY RIGHTS
1. Copyright and Related Rights
2. Trademarks
3. Geographical Indications
4. Industrial Designs
5. Patents
6. Layout-Designs (Topographies) of
Integrated Circuits
7. Protection of Undisclosed
Information
8. Control of Anti-Competitive
Practices in Contractual Licences
PART III ENFORCEMENT OF INTELLECTUAL
PROPERTY RIGHTS
1. General Obligations
2. Civil and Administrative Procedures
and Remedies
3. Provisional Measures
4. Special Requirements Related to
Border Measures
5. Criminal Procedures
PART IV ACQUISITION AND MAINTENANCE OF
INTELLECTUAL PROPERTY RIGHTS
AND RELATED INTER-PARTES PROCEDURES
PART V DISPUTE PREVENTION AND
SETTLEMENT
PART VI TRANSITIONAL ARRANGEMENTS
PART VII INSTITUTIONAL ARRANGEMENTS;
FINAL PROVISIONS
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AGREEMENT ON TRADE-RELATED
ASPECTS OF
INTELLECTUAL PROPERTY
RIGHTS
Members,
Desiring to reduce distortions and impediments to international trade, and taking
into account
the need to promote effective and
adequate protection of intellectual property rights, and to ensure that
measures and procedures to enforce
intellectual property rights do not themselves become barriers to
legitimate trade;
Recognizing, to this end, the need for new rules and disciplines concerning:
(a) the applicability of the basic
principles of GATT 1994 and of relevant international
intellectual property agreements or
conventions;
(b) the provision of adequate standards
and principles concerning the availability, scope
and use of trade-related intellectual
property rights;
(c) the provision of effective and
appropriate means for the enforcement of trade-related
intellectual property rights, taking
into account differences in national legal systems;
(d) the provision of effective and
expeditious procedures for the multilateral prevention
and settlement of disputes between
governments; and
(e) transitional arrangements aiming at
the fullest participation in the results of the
negotiations;
Recognizing the need for a multilateral framework of principles, rules and disciplines
dealing
with international trade in counterfeit
goods;
Recognizing that intellectual property rights are private rights;
Recognizing the underlying public policy objectives of national systems for the
protection of
intellectual property, including
developmental and technological objectives;
Recognizing also the special needs of the least-developed country Members in respect
of
maximum flexibility in the domestic
implementation of laws and regulations in order to enable them
to create a sound and viable
technological base;
Emphasizing the importance of reducing tensions by reaching strengthened commitments
to
resolve disputes on trade-related
intellectual property issues through multilateral procedures;
Desiring to establish a mutually supportive relationship between the WTO and the
World
Intellectual Property Organization
(referred to in this Agreement as "WIPO") as well as other relevant
international organizations;
Hereby agree as follows:
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PART I
GENERAL PROVISIONS AND BASIC PRINCIPLES
Article 1
Nature and Scope of
Obligations
1. Members shall give effect to the
provisions of this Agreement. Members may, but shall not
be obliged to, implement in their law
more extensive protection than is required by this Agreement,
provided that such protection does not
contravene the provisions of this Agreement. Members shall
be free to determine the appropriate
method of implementing the provisions of this Agreement within
their own legal system and practice.
2. For the purposes of this Agreement,
the term "intellectual property" refers to all categories of
intellectual property that are the subject
of Sections 1 through 7 of Part II.
3. Members shall accord the treatment
provided for in this Agreement to the nationals of other
Members.1 In respect of the relevant intellectual property right, the nationals of
other Members shall
be understood as those natural or legal
persons that would meet the criteria for eligibility for protection
provided for in the Paris Convention
(1967), the Berne Convention (1971), the Rome Convention and
the Treaty on Intellectual Property in
Respect of Integrated Circuits, were all Members of the WTO
members of those conventions.2 Any Member availing itself of the possibilities provided
in paragraph 3
of Article 5 or paragraph 2 of Article
6 of the Rome Convention shall make a notification as foreseen
in those provisions to the Council for
Trade-Related Aspects of Intellectual Property Rights (the "Council
for TRIPS").
Article 2
Intellectual Property
Conventions
1. In respect of Parts II, III and IV
of this Agreement, Members shall comply with Articles 1 through
12, and Article 19, of the Paris
Convention (1967).
2. Nothing in Parts I to IV of this
Agreement shall derogate from existing obligations that Members
may have to each other under the Paris
Convention, the Berne Convention, the Rome Convention and
the Treaty on Intellectual Property in
Respect of Integrated Circuits.
1When
"nationals" are referred to in this Agreement, they shall be deemed,
in the case of a separate customs territory
Member of the WTO, to mean persons,
natural or legal, who are domiciled or who have a real and effective industrial
or
commercial establishment in that
customs territory.
2In
this Agreement, "Paris Convention" refers to the Paris Convention for
the Protection of Industrial Property; "Paris
Convention (1967)" refers to the
Stockholm Act of this Convention of 14 July 1967. "Berne Convention"
refers to the Berne
Convention for the Protection of
Literary and Artistic Works; "Berne Convention (1971)" refers to the
Paris Act of this
Convention of 24 July 1971. "Rome
Convention" refers to the International Convention for the Protection of
Performers,
Producers of Phonograms and
Broadcasting Organizations, adopted at Rome on 26 October 1961. "Treaty on
Intellectual
Property in Respect of Integrated
Circuits" (IPIC Treaty) refers to the Treaty on Intellectual Property in
Respect of Integrated
Circuits, adopted at Washington on 26
May 1989. "WTO Agreement" refers to the Agreement Establishing the
WTO.
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Article 3
National Treatment
1. Each Member shall accord to the
nationals of other Members treatment no less favourable than
that it accords to its own nationals
with regard to the protection3 of
intellectual property, subject to
the exceptions already provided in,
respectively, the Paris Convention (1967), the Berne
Convention (1971), the Rome Convention
or the Treaty on Intellectual Property in Respect of Integrated
Circuits. In respect of performers,
producers of phonograms and broadcasting organizations, this
obligation only applies in respect of
the rights provided under this Agreement. Any Member availing
itself of the possibilities provided in
Article 6 of the Berne Convention (1971) or paragraph 1(b) of
Article 16 of the Rome Convention shall
make a notification as foreseen in those provisions to the Council
for TRIPS.
2. Members may avail themselves of the
exceptions permitted under paragraph 1 in relation to
judicial and administrative procedures,
including the designation of an address for service or the
appointment of an agent within the
jurisdiction of a Member, only where such exceptions are necessary
to secure compliance with laws and
regulations which are not inconsistent with the provisions of this
Agreement and where such practices are
not applied in a manner which would constitute a disguised
restriction on trade.
Article 4
Most-Favoured-Nation
Treatment
With regard to the protection of
intellectual property, any advantage, favour, privilege or immunity
granted by a Member to the nationals of
any other country shall be accorded immediately and
unconditionally to the nationals of all
other Members. Exempted from this obligation are any advantage,
favour, privilege or immunity accorded
by a Member:
(a) deriving from international
agreements on judicial assistance or law enforcement of
a general nature and not particularly
confined to the protection of intellectual property;
(b) granted in accordance with the
provisions of the Berne Convention (1971) or the Rome
Convention authorizing that the
treatment accorded be a function not of national
treatment but of the treatment accorded
in another country;
(c) in respect of the rights of
performers, producers of phonograms and broadcasting
organizations not provided under this
Agreement;
(d) deriving from international
agreements related to the protection of intellectual property
which entered into force prior to the
entry into force of the WTO Agreement, provided
that such agreements are notified to
the Council for TRIPS and do not constitute an
arbitrary or unjustifiable
discrimination against nationals of other Members.
3For
the purposes of Articles 3 and 4, "protection" shall include matters
affecting the availability, acquisition, scope,
maintenance and enforcement of
intellectual property rights as well as those matters affecting the use of
intellectual property
rights specifically addressed in this
Agreement.
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Article 5
Multilateral Agreements on
Acquisition or
Maintenance of Protection
The obligations under Articles 3 and 4
do not apply to procedures provided in multilateral
agreements concluded under the auspices
of WIPO relating to the acquisition or maintenance of
intellectual property rights.
Article 6
Exhaustion
For the purposes of dispute settlement
under this Agreement, subject to the provisions of
Articles 3 and 4 nothing in this
Agreement shall be used to address the issue of the exhaustion of
intellectual property rights.
Article 7
Objectives
The protection and enforcement of
intellectual property rights should contribute to the promotion
of technological innovation and to the
transfer and dissemination of technology, to the mutual advantage
of producers and users of technological
knowledge and in a manner conducive to social and economic
welfare, and to a balance of rights and
obligations.
Article 8
Principles
1. Members may, in formulating or
amending their laws and regulations, adopt measures necessary
to protect public health and nutrition,
and to promote the public interest in sectors of vital importance
to their socio-economic and
technological development, provided that such measures are consistent
with the provisions of this Agreement.
2. Appropriate measures, provided that
they are consistent with the provisions of this Agreement,
may be needed to prevent the abuse of
intellectual property rights by right holders or the resort to
practices which unreasonably restrain
trade or adversely affect the international transfer of technology.
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PART II
STANDARDS CONCERNING THE AVAILABILITY,
SCOPE
AND USE OF INTELLECTUAL PROPERTY RIGHTS
SECTION 1: COPYRIGHT AND RELATED RIGHTS
Article 9
Relation to the Berne
Convention
1. Members shall comply with Articles 1
through 21 of the Berne Convention (1971) and the
Appendix thereto. However, Members
shall not have rights or obligations under this Agreement in
respect of the rights conferred under
Article 6bis of that Convention or of the rights derived therefrom.
2. Copyright protection shall extend to
expressions and not to ideas, procedures, methods of
operation or mathematical concepts as
such.
Article 10
Computer Programs and
Compilations of Data
1. Computer programs, whether in source
or object code, shall be protected as literary works under
the Berne Convention (1971).
2. Compilations of data or other
material, whether in machine readable or other form, which by
reason of the selection or arrangement
of their contents constitute intellectual creations shall be protected
as such. Such protection, which shall
not extend to the data or material itself, shall be without prejudice
to any copyright subsisting in the data
or material itself.
Article 11
Rental Rights
In respect of at least computer
programs and cinematographic works, a Member shall provide
authors and their successors in title
the right to authorize or to prohibit the commercial rental to the
public of originals or copies of their
copyright works. A Member shall be excepted from this obligation
in respect of cinematographic works
unless such rental has led to widespread copying of such works
which is materially impairing the
exclusive right of reproduction conferred in that Member on authors
and their successors in title. In
respect of computer programs, this obligation does not apply to rentals
where the program itself is not the
essential object of the rental.
Article 12
Term of Protection
Whenever the term of protection of a
work, other than a photographic work or a work of applied
art, is calculated on a basis other
than the life of a natural person, such term shall be no less than 50 years
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from the end of the calendar year of
authorized publication, or, failing such authorized publication within
50 years from the making of the work,
50 years from the end of the calendar year of making.
Article 13
Limitations and Exceptions
Members shall confine limitations or
exceptions to exclusive rights to certain special cases which
do not conflict with a normal exploitation
of the work and do not unreasonably prejudice the legitimate
interests of the right holder.
Article 14
Protection of Performers,
Producers of Phonograms
(Sound Recordings) and
Broadcasting Organizations
1. In respect of a fixation of their
performance on a phonogram, performers shall have the possibility
of preventing the following acts when
undertaken without their authorization: the fixation of their unfixed
performance and the reproduction of
such fixation. Performers shall also have the possibility of
preventing the following acts when
undertaken without their authorization: the broadcasting by wireless
means and the communication to the
public of their live performance.
2. Producers of phonograms shall enjoy
the right to authorize or prohibit the direct or indirect
reproduction of their phonograms.
3. Broadcasting organizations shall
have the right to prohibit the following acts when undertaken
without their authorization: the
fixation, the reproduction of fixations, and the rebroadcasting by wireless
means of broadcasts, as well as the
communication to the public of television broadcasts of the same.
Where Members do not grant such rights
to broadcasting organizations, they shall provide owners of
copyright in the subject matter of
broadcasts with the possibility of preventing the above acts, subject
to the provisions of the Berne
Convention (1971).
4. The provisions of Article 11 in
respect of computer programs shall apply mutatis mutandis
to producers of phonograms and any
other right holders in phonograms as determined in a Member's
law. If on 15 April 1994 a Member has
in force a system of equitable remuneration of right holders
in respect of the rental of phonograms,
it may maintain such system provided that the commercial rental
of phonograms is not giving rise to the
material impairment of the exclusive rights of reproduction
of right holders.
5. The term of the protection available
under this Agreement to performers and producers of
phonograms shall last at least until
the end of a period of 50 years computed from the end of the calendar
year in which the fixation was made or
the performance took place. The term of protection granted
pursuant to paragraph 3 shall last for
at least 20 years from the end of the calendar year in which the
broadcast took place.
6. Any Member may, in relation to the
rights conferred under paragraphs 1, 2 and 3, provide for
conditions, limitations, exceptions and
reservations to the extent permitted by the Rome Convention.
However, the provisions of Article 18
of the Berne Convention (1971) shall also apply, mutatis mutandis,
to the rights of performers and
producers of phonograms in phonograms.
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SECTION 2: TRADEMARKS
Article 15
Protectable Subject Matter
1. Any sign, or any combination of
signs, capable of distinguishing the goods or services of one
undertaking from those of other
undertakings, shall be capable of constituting a trademark. Such signs,
in particular words including personal
names, letters, numerals, figurative elements and combinations
of colours as well as any combination
of such signs, shall be eligible for registration as trademarks.
Where signs are not inherently capable
of distinguishing the relevant goods or services, Members may
make registrability depend on
distinctiveness acquired through use. Members may require, as a condition
of registration, that signs be visually
perceptible.
2. Paragraph 1 shall not be understood
to prevent a Member from denying registration of a trademark
on other grounds, provided that they do
not derogate from the provisions of the Paris Convention (1967).
3. Members may make registrability
depend on use. However, actual use of a trademark shall
not be a condition for filing an
application for registration. An application shall not be refused solely
on the ground that intended use has not
taken place before the expiry of a period of three years from
the date of application.
4. The nature of the goods or services
to which a trademark is to be applied shall in no case form
an obstacle to registration of the
trademark.
5. Members shall publish each trademark
either before it is registered or promptly after it is
registered and shall afford a
reasonable opportunity for petitions to cancel the registration. In addition,
Members may afford an opportunity for
the registration of a trademark to be opposed.
Article 16
Rights Conferred
1. The owner of a registered trademark
shall have the exclusive right to prevent all third parties
not having the owner’s consent from
using in the course of trade 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. In case of the use of an identical sign for identical
goods or services, a likelihood of confusion
shall be presumed. The rights described above shall not
prejudice any existing prior rights,
nor shall they affect the possibility of Members making rights available
on the basis of use.
2. Article 6bis of the Paris
Convention (1967) shall apply, mutatis mutandis, to services. In
determining whether a trademark is
well-known, Members shall take account of the knowledge of the
trademark in the relevant sector of the
public, including knowledge in the Member concerned which
has been obtained as a result of the
promotion of the trademark.
3. Article 6bis of the Paris
Convention (1967) shall apply, mutatis mutandis, to goods or services
which are not similar to those in
respect of which a trademark is registered, provided that use of that
trademark in relation to those goods or
services would indicate a connection between those goods or
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services and the owner of the
registered trademark and provided that the interests of the owner of the
registered trademark are likely to be
damaged by such use.
Article 17
Exceptions
Members may provide limited exceptions
to the rights conferred by a trademark, such as fair
use of descriptive terms, provided that
such exceptions take account of the legitimate interests of the
owner of the trademark and of third
parties.
Article 18
Term of Protection
Initial registration, and each renewal
of registration, of a trademark shall be for a term of no
less than seven years. The registration
of a trademark shall be renewable indefinitely.
Article 19
Requirement of Use
1. If use is required to maintain a
registration, the registration may be cancelled only after an
uninterrupted period of at least three
years of non-use, unless valid reasons based on the existence of
obstacles to such use are shown by the
trademark owner. Circumstances arising independently of the
will of the owner of the trademark
which constitute an obstacle to the use of the trademark, such as
import restrictions on or other
government requirements for goods or services protected by the trademark,
shall be recognized as valid reasons
for non-use.
2. When subject to the control of its
owner, use of a trademark by another person shall be recognized
as use of the trademark for the purpose
of maintaining the registration.
Article 20
Other Requirements
The use of a trademark in the course of
trade shall not be unjustifiably encumbered by special
requirements, such as use with another
trademark, use in a special form or use in a manner detrimental
to its capability to distinguish the
goods or services of one undertaking from those of other undertakings.
This will not preclude a requirement
prescribing the use of the trademark identifying the undertaking
producing the goods or services along
with, but without linking it to, the trademark distinguishing the
specific goods or services in question
of that undertaking.
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Article 21
Licensing and Assignment
Members may determine conditions on the
licensing and assignment of trademarks, it being
understood that the compulsory
licensing of trademarks shall not be permitted and that the owner of
a registered trademark shall have the
right to assign the trademark with or without the transfer of the
business to which the trademark
belongs.
SECTION 3: GEOGRAPHICAL INDICATIONS
Article 22
Protection of Geographical
Indications
1. Geographical indications are, for
the purposes of this Agreement, indications which identify
a good as originating in the territory
of a Member, or a region or locality in that territory, where a given
quality, reputation or other
characteristic of the good is essentially attributable to its geographical
origin.
2. In respect of geographical
indications, Members shall provide the legal means for interested
parties to prevent:
(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) any use which constitutes an act of
unfair competition within the meaning of
Article 10bis of the Paris
Convention (1967).
3. A Member shall, ex officio if
its legislation so permits or at the request of an interested party,
refuse or invalidate the registration
of a trademark which contains or consists of a geographical indication
with respect to goods not originating
in the territory indicated, if use of the indication in the trademark
for such goods in that Member is of
such a nature as to mislead the public as to the true place of origin.
4. The protection under paragraphs 1, 2
and 3 shall be applicable against a geographical indication
which, although literally true as to
the territory, region or locality in which the goods originate, falsely
represents to the public that the goods
originate in another territory.
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Article 23
Additional Protection for
Geographical Indications
for Wines and Spirits
1. Each Member shall provide the legal
means for interested parties to prevent use of a geographical
indication identifying wines for wines
not originating in the place indicated by the geographical indication
in question or identifying spirits for
spirits not originating in the place indicated by the geographical
indication in question, even where the
true origin of the goods is indicated or the geographical indication
is used in translation or accompanied
by expressions such as "kind", "type", "style",
"imitation" or the
like.4
2. The registration of a trademark for
wines which contains or consists of a geographical indication
identifying wines or for spirits which
contains or consists of a geographical indication identifying spirits
shall be refused or invalidated, ex
officio if a Member's legislation so permits or at the request of an
interested party, with respect to such
wines or spirits not having this origin.
3. In the case of homonymous
geographical indications for wines, protection shall be accorded
to each indication, subject to the
provisions of paragraph 4 of Article 22. Each Member shall determine
the practical conditions under which
the homonymous indications in question will be differentiated
from each other, taking into account
the need to ensure equitable treatment of the producers concerned
and that consumers are not misled.
4. In order to facilitate the
protection of geographical indications for wines, negotiations shall
be undertaken in the Council for TRIPS
concerning the establishment of a multilateral system of
notification and registration of
geographical indications for wines eligible for protection in those Members
participating in the system.
Article 24
International Negotiations;
Exceptions
1. Members agree to enter into
negotiations aimed at increasing the protection of individual
geographical indications under Article
23. The provisions of paragraphs 4 through 8 below shall not
be used by a Member to refuse to
conduct negotiations or to conclude bilateral or multilateral agreements.
In the context of such negotiations,
Members shall be willing to consider the continued applicability
of these provisions to individual
geographical indications whose use was the subject of such negotiations.
2. The Council for TRIPS shall keep
under review the application of the provisions of this Section;
the first such review shall take place
within two years of the entry into force of the WTO Agreement.
Any matter affecting the compliance
with the obligations under these provisions may be drawn to the
attention of the Council, which, at the
request of a Member, shall consult with any Member or Members
in respect of such matter in respect of
which it has not been possible to find a satisfactory solution
through bilateral or plurilateral
consultations between the Members concerned. The Council shall take
such action as may be agreed to
facilitate the operation and further the objectives of this Section.
3. In implementing this Section, a
Member shall not diminish the protection of geographical
indications that existed in that Member
immediately prior to the date of entry into force of the WTO
Agreement.
4Notwithstanding
the first sentence of Article 42, Members may, with respect to these
obligations, instead provide for
enforcement by administrative action.
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4. Nothing in this Section shall
require a Member to prevent continued and similar use of a particular
geographical indication of another
Member identifying wines or spirits in connection with goods or
services by any of its nationals or
domiciliaries who have used that geographical indication in a
continuous manner with regard to the
same or related goods or services in the territory of that Member
either (a) for at least 10 years
preceding 15 April 1994 or (b) in good faith preceding that date.
5. Where a trademark has been applied
for or registered in good faith, or where rights to a trademark
have been acquired through use in good
faith either:
(a) before the date of application of
these provisions in that Member as defined in Part VI;
or
(b) before the geographical indication
is protected in its country of origin;
measures adopted to implement this
Section shall not prejudice eligibility for or the validity of the
registration of a trademark, or the
right to use a trademark, on the basis that such a trademark is identical
with, or similar to, a geographical
indication.
6. Nothing in this Section shall
require a Member to apply its provisions in respect of a geographical
indication of any other Member with
respect to goods or services for which the relevant indication
is identical with the term customary in
common language as the common name for such goods or services
in the territory of that Member.
Nothing in this Section shall require a Member to apply its provisions
in respect of a geographical indication
of any other Member with respect to products of the vine for
which the relevant indication is
identical with the customary name of a grape variety existing in the
territory of that Member as of the date
of entry into force of the WTO Agreement.
7. A Member may provide that any
request made under this Section in connection with the use
or registration of a trademark must be
presented within five years after the adverse use of the protected
indication has become generally known
in that Member or after the date of registration of the trademark
in that Member provided that the
trademark has been published by that date, if such date is earlier than
the date on which the adverse use
became generally known in that Member, provided that the
geographical indication is not used or
registered in bad faith.
8. The provisions of this Section shall
in no way prejudice the right of any person to use, in the
course of trade, that person’s name or
the name of that person’s predecessor in business, except where
such name is used in such a manner as
to mislead the public.
9. There shall be no obligation under
this Agreement to protect geographical indications which
are not or cease to be protected in
their country of origin, or which have fallen into disuse in that country.
SECTION 4: INDUSTRIAL DESIGNS
Article 25
Requirements for Protection
1. Members shall provide for the
protection of independently created industrial designs that are
new or original. Members may provide
that designs are not new or original if they do not significantly
differ from known designs or
combinations of known design features. Members may provide that such
protection shall not extend to designs
dictated essentially by technical or functional considerations.
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2. Each Member shall ensure that
requirements for securing protection for textile designs, in
particular in regard to any cost,
examination or publication, do not unreasonably impair the opportunity
to seek and obtain such protection.
Members shall be free to meet this obligation through industrial
design law or through copyright law.
Article 26
Protection
1. The owner of a protected industrial
design shall have the right to prevent third parties not having
the owner’s consent from making,
selling or importing articles bearing or embodying a design which
is a copy, or substantially a copy, of
the protected design, when such acts are undertaken for commercial
purposes.
2. Members may provide limited
exceptions to the protection of industrial designs, provided that
such exceptions do not unreasonably
conflict with the normal exploitation of protected industrial designs
and do not unreasonably prejudice the
legitimate interests of the owner of the protected design, taking
account of the legitimate interests of
third parties.
3. The duration of protection available
shall amount to at least 10 years.
SECTION 5: PATENTS
Article 27
Patentable Subject Matter
1. Subject to the provisions of paragraphs
2 and 3, patents shall be available for any inventions,
whether products or processes, in all
fields of technology, provided that they are new, involve an inventive
step and are capable of industrial
application.5 Subject to paragraph 4 of
Article 65, paragraph 8 of
Article 70 and paragraph 3 of this
Article, patents shall be available and patent rights enjoyable without
discrimination as to the place of
invention, the field of technology and whether products are imported
or locally produced.
2. Members may exclude from
patentability inventions, the prevention within their territory of
the commercial exploitation of which is
necessary to protect ordre public or morality, including to protect
human, animal or plant life or health
or to avoid serious prejudice to the environment, provided that
such exclusion is not made merely
because the exploitation is prohibited by their law.
3. Members may also exclude from
patentability:
(a) diagnostic, therapeutic and
surgical methods for the treatment of humans or animals;
(b) plants and animals other than
micro-organisms, and essentially biological processes
for the production of plants or animals
other than non-biological and microbiological
processes. However, Members shall
provide for the protection of plant varieties either
by patents or by an effective sui
generis system or by any combination thereof. The
5For
the purposes of this Article, the terms "inventive step" and
"capable of industrial application" may be deemed by
a Member to be synonymous with the terms
"non-obvious" and "useful" respectively.
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provisions of this subparagraph shall
be reviewed four years after the date of entry into
force of the WTO Agreement.
Article 28
Rights Conferred
1. A patent shall confer on its owner
the following exclusive rights:
(a) where the subject matter of a
patent is a product, to prevent third parties not having
the owner’s consent from the acts of:
making, using, offering for sale, selling, or
importing6 for these purposes that product;
(b) where the subject matter of a
patent is a process, to prevent third parties not having
the owner’s consent from the act of
using the process, and from the acts of: using,
offering for sale, selling, or
importing for these purposes at least the product obtained
directly by that process.
2. Patent owners shall also have the
right to assign, or transfer by succession, the patent and to
conclude licensing contracts.
Article 29
Conditions on Patent
Applicants
1. Members shall require that an
applicant for a patent shall disclose the invention in a manner
sufficiently clear and complete for the
invention to be carried out by a person skilled in the art and
may require the applicant to indicate
the best mode for carrying out the invention known to the inventor
at the filing date or, where priority
is claimed, at the priority date of the application.
2. Members may require an applicant for
a patent to provide information concerning the applicant’s
corresponding foreign applications and
grants.
Article 30
Exceptions to Rights
Conferred
Members may provide limited exceptions
to the exclusive rights conferred by a patent, provided
that such exceptions do not
unreasonably conflict with a normal exploitation of the patent and do not
unreasonably prejudice the legitimate
interests of the patent owner, taking account of the legitimate
interests of third parties.
6This
right, like all other rights conferred under this Agreement in respect of the
use, sale, importation or other distribution
of goods, is subject to the provisions
of Article 6.
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Article 31
Other Use Without
Authorization of the Right Holder
Where the law of a Member allows for
other use7 of the subject matter of a
patent without the
authorization of the right holder,
including use by the government or third parties authorized by the
government, the following provisions
shall be respected:
(a) authorization of such use shall be
considered on its individual merits;
(b) such use may only be permitted if,
prior to such use, the proposed user has made efforts
to obtain authorization from the right
holder on reasonable commercial terms and
conditions and that such efforts have
not been successful within a reasonable period
of time. This requirement may be waived
by a Member in the case of a national
emergency or other circumstances of
extreme urgency or in cases of public noncommercial
use. In situations of national
emergency or other circumstances of extreme
urgency, the right holder shall,
nevertheless, be notified as soon as reasonably practicable.
In the case of public non-commercial
use, where the government or contractor, without
making a patent search, knows or has
demonstrable grounds to know that a valid patent
is or will be used by or for the
government, the right holder shall be informed promptly;
(c) the scope and duration of such use
shall be limited to the purpose for which it was
authorized, and in the case of
semi-conductor technology shall only be for public noncommercial
use or to remedy a practice determined
after judicial or administrative
process to be anti-competitive;
(d) such use shall be non-exclusive;
(e) such use shall be non-assignable,
except with that part of the enterprise or goodwill
which enjoys such use;
(f) any such use shall be authorized
predominantly for the supply of the domestic market
of the Member authorizing such use;
(g) authorization for such use shall be
liable, subject to adequate protection of the legitimate
interests of the persons so authorized,
to be terminated if and when the circumstances
which led to it cease to exist and are
unlikely to recur. The competent authority shall
have the authority to review, upon
motivated request, the continued existence of these
circumstances;
(h) the right holder shall be paid
adequate remuneration in the circumstances of each case,
taking into account the economic value
of the authorization;
(i) the legal validity of any decision
relating to the authorization of such use shall be subject
to judicial review or other independent
review by a distinct higher authority in that
Member;
(j) any decision relating to the
remuneration provided in respect of such use shall be subject
to judicial review or other independent
review by a distinct higher authority in that
Member;
7"Other
use" refers to use other than that allowed under Article 30.
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(k) Members are not obliged to apply
the conditions set forth in subparagraphs (b) and (f)
where such use is permitted to remedy a
practice determined after judicial or
administrative process to be
anti-competitive. The need to correct anti-competitive
practices may be taken into account in
determining the amount of remuneration in such
cases. Competent authorities shall have
the authority to refuse termination of
authorization if and when the
conditions which led to such authorization are likely to
recur;
(l) where such use is authorized to
permit the exploitation of a patent ("the second patent")
which cannot be exploited without
infringing another patent ("the first patent"), the
following additional conditions shall
apply:
(i) the invention claimed in the second
patent shall involve an important technical
advance of considerable economic
significance in relation to the invention
claimed in the first patent;
(ii) the owner of the first patent
shall be entitled to a cross-licence on reasonable
terms to use the invention claimed in
the second patent; and
(iii) the use authorized in respect of
the first patent shall be non-assignable except
with the assignment of the second
patent.
Article 32
Revocation/Forfeiture
An opportunity for judicial review of
any decision to revoke or forfeit a patent shall be available.
Article 33
Term of Protection
The term of protection available shall
not end before the expiration of a period of twenty years
counted from the filing date.8
Article 34
Process Patents: Burden of
Proof
1. For the purposes of civil
proceedings in respect of the infringement of the rights of the owner
referred to in paragraph 1(b) of
Article 28, if the subject matter of a patent is a process for obtaining
a product, the judicial authorities
shall have the authority to order the defendant to prove that the process
to obtain an identical product is
different from the patented process. Therefore, Members shall provide,
in at least one of the following
circumstances, that any identical product when produced without the
consent of the patent owner shall, in
the absence of proof to the contrary, be deemed to have been
obtained by the patented process:
8It
is understood that those Members which do not have a system of original grant
may provide that the term of protection
shall be computed from the filing date
in the system of original grant.
Page 335
(a) if the product obtained by the
patented process is new;
(b) if there is a substantial
likelihood that the identical product was made by the process
and the owner of the patent has been
unable through reasonable efforts to determine
the process actually used.
2. Any Member shall be free to provide
that the burden of proof indicated in paragraph 1 shall
be on the alleged infringer only if the
condition referred to in subparagraph (a) is fulfilled or only if
the condition referred to in
subparagraph (b) is fulfilled.
3. In the adduction of proof to the
contrary, the legitimate interests of defendants in protecting
their manufacturing and business
secrets shall be taken into account.
SECTION 6: LAYOUT-DESIGNS
(TOPOGRAPHIES) OF INTEGRATED CIRCUITS
Article 35
Relation to the IPIC Treaty
Members agree to provide protection to
the layout-designs (topographies) of integrated circuits
(referred to in this Agreement as
"layout-designs") in accordance with Articles 2 through 7 (other than
paragraph 3 of Article 6), Article 12
and paragraph 3 of Article 16 of the Treaty on Intellectual Property
in Respect of Integrated Circuits and,
in addition, to comply with the following provisions.
Article 36
Scope of the Protection
Subject to the provisions of paragraph
1 of Article 37, Members shall consider unlawful the
following acts if performed without the
authorization of the right holder:9 importing, selling, or otherwise
distributing for commercial purposes a
protected layout-design, an integrated circuit in which a protected
layout-design is incorporated, or an
article incorporating such an integrated circuit only in so far as
it continues to contain an unlawfully
reproduced layout-design.
Article 37
Acts Not Requiring the
Authorization of the Right Holder
1. Notwithstanding Article 36, no
Member shall consider unlawful the performance of any of the
acts referred to in that Article in
respect of an integrated circuit incorporating an unlawfully reproduced
layout-design or any article
incorporating such an integrated circuit where the person performing or
ordering such acts did not know and had
no reasonable ground to know, when acquiring the integrated
circuit or article incorporating such
an integrated circuit, that it incorporated an unlawfully reproduced
layout-design. Members shall provide
that, after the time that such person has received sufficient notice
that the layout-design was unlawfully
reproduced, that person may perform any of the acts with respect
to the stock on hand or ordered before
such time, but shall be liable to pay to the right holder a sum
9The
term "right holder" in this Section shall be understood as having the
same meaning as the term "holder of the right"
in the IPIC Treaty.
Page 336
equivalent to a reasonable royalty such
as would be payable under a freely negotiated licence in respect
of such a layout-design.
2. The conditions set out in
subparagraphs (a) through (k) of Article 31 shall apply mutatis mutandis
in the event of any non-voluntary
licensing of a layout-design or of its use by or for the government
without the authorization of the right
holder.
Article 38
Term of Protection
1. In Members requiring registration as
a condition of protection, the term of protection of layoutdesigns
shall not end before the expiration of
a period of 10 years counted from the date of filing an
application for registration or from
the first commercial exploitation wherever in the world it occurs.
2. In Members not requiring
registration as a condition for protection, layout-designs shall be
protected for a term of no less than 10
years from the date of the first commercial exploitation wherever
in the world it occurs.
3. Notwithstanding paragraphs 1 and 2,
a Member may provide that protection shall lapse 15 years
after the creation of the
layout-design.
SECTION 7: PROTECTION OF UNDISCLOSED
INFORMATION
Article 39
1. In the course of ensuring effective
protection against unfair competition as provided in
Article 10bis of the Paris
Convention (1967), Members shall protect undisclosed information in accordance
with paragraph 2 and data submitted to
governments or governmental agencies in accordance with
paragraph 3.
2. Natural and legal persons shall have
the possibility of preventing information lawfully within
their control from being disclosed to,
acquired by, or used by others without their consent in a manner
contrary to honest commercial practices10 so long as such information:
(a) is secret in the sense that it is
not, as a body or in the precise configuration and assembly
of its components, generally known
among or readily accessible to persons within the
circles that normally deal with the
kind of information in question;
(b) has commercial value because it is
secret; and
(c) has been subject to reasonable
steps under the circumstances, by the person lawfully
in control of the information, to keep
it secret.
3. Members, when requiring, as a
condition of approving the marketing of pharmaceutical or of
agricultural chemical products which utilize
new chemical entities, the submission of undisclosed test
or other data, the origination of which
involves a considerable effort, shall protect such data against
10For
the purpose of this provision, "a manner contrary to honest commercial
practices" shall mean at least practices such
as breach of contract, breach of
confidence and inducement to breach, and includes the acquisition of
undisclosed information
by third parties who knew, or were
grossly negligent in failing to know, that such practices were involved in the
acquisition.
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unfair commercial use. In addition,
Members shall protect such data against disclosure, except where
necessary to protect the public, or
unless steps are taken to ensure that the data are protected against
unfair commercial use.
SECTION 8: CONTROL OF ANTI-COMPETITIVE
PRACTICES
IN CONTRACTUAL LICENCES
Article 40
1. Members agree that some licensing
practices or conditions pertaining to intellectual property
rights which restrain competition may
have adverse effects on trade and may impede the transfer and
dissemination of technology.
2. Nothing in this Agreement shall
prevent Members from specifying in their legislation licensing
practices or conditions that may in
particular cases constitute an abuse of intellectual property rights
having an adverse effect on competition
in the relevant market. As provided above, a Member may
adopt, consistently with the other
provisions of this Agreement, appropriate measures to prevent or
control such practices, which may
include for example exclusive grantback conditions, conditions
preventing challenges to validity and
coercive package licensing, in the light of the relevant laws and
regulations of that Member.
3. Each Member shall enter, upon
request, into consultations with any other Member which has
cause to believe that an intellectual
property right owner that is a national or domiciliary of the Member
to which the request for consultations
has been addressed is undertaking practices in violation of the
requesting Member's laws and
regulations on the subject matter of this Section, and which wishes to
secure compliance with such
legislation, without prejudice to any action under the law and to the full
freedom of an ultimate decision of
either Member. The Member addressed shall accord full and
sympathetic consideration to, and shall
afford adequate opportunity for, consultations with the requesting
Member, and shall cooperate through
supply of publicly available non-confidential information of
relevance to the matter in question and
of other information available to the Member, subject to domestic
law and to the conclusion of mutually
satisfactory agreements concerning the safeguarding of its
confidentiality by the requesting
Member.
4. A Member whose nationals or
domiciliaries are subject to proceedings in another Member
concerning alleged violation of that
other Member's laws and regulations on the subject matter of this
Section shall, upon request, be granted
an opportunity for consultations by the other Member under
the same conditions as those foreseen
in paragraph 3.
Page 338
PART III
ENFORCEMENT OF INTELLECTUAL PROPERTY
RIGHTS
SECTION 1: GENERAL OBLIGATIONS
Article 41
1. Members shall ensure that
enforcement procedures as specified in this Part are available under
their law so as to permit effective
action against any act of infringement of intellectual property rights
covered by this Agreement, including
expeditious remedies to prevent infringements and remedies which
constitute a deterrent to further
infringements. These procedures shall be applied in such a manner
as to avoid the creation of barriers to
legitimate trade and to provide for safeguards against their abuse.
2. Procedures concerning the
enforcement of intellectual property rights shall be fair and equitable.
They shall not be unnecessarily
complicated or costly, or entail unreasonable time-limits or unwarranted
delays.
3. Decisions on the merits of a case
shall preferably be in writing and reasoned. They shall be
made available at least to the parties
to the proceeding without undue delay. Decisions on the merits
of a case shall be based only on
evidence in respect of which parties were offered the opportunity to
be heard.
4. Parties to a proceeding shall have
an opportunity for review by a judicial authority of final
administrative decisions and, subject
to jurisdictional provisions in a Member's law concerning the
importance of a case, of at least the
legal aspects of initial judicial decisions on the merits of a case.
However, there shall be no obligation
to provide an opportunity for review of acquittals in criminal
cases.
5. 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.
Page 339
SECTION 2: CIVIL AND ADMINISTRATIVE
PROCEDURES AND REMEDIES
Article 42
Fair and Equitable
Procedures
Members shall make available to right
holders11 civil judicial procedures
concerning the
enforcement of any intellectual property
right covered by this Agreement. Defendants shall have the
right to written notice which is timely
and contains sufficient detail, including the basis of the claims.
Parties shall be allowed to be
represented by independent legal counsel, and procedures shall not impose
overly burdensome requirements
concerning mandatory personal appearances. All parties to such
procedures shall be duly entitled to
substantiate their claims and to present all relevant evidence. The
procedure shall provide a means to identify
and protect confidential information, unless this would be
contrary to existing constitutional
requirements.
Article 43
Evidence
1. The judicial authorities shall have
the authority, where a party has presented reasonably available
evidence sufficient to support its
claims and has specified evidence relevant to substantiation of its
claims which lies in the control of the
opposing party, to order that this evidence be produced by the
opposing party, subject in appropriate
cases to conditions which ensure the protection of confidential
information.
2. In cases in which a party to a
proceeding voluntarily and without good reason refuses access
to, or otherwise does not provide
necessary information within a reasonable period, or significantly
impedes a procedure relating to an
enforcement action, a Member may accord judicial authorities the
authority to make preliminary and final
determinations, affirmative or negative, on the basis of the
information presented to them,
including the complaint or the allegation presented by the party adversely
affected by the denial of access to
information, subject to providing the parties an opportunity to be
heard on the allegations or evidence.
Article 44
Injunctions
1. The judicial authorities shall have
the authority to order a party to desist from an infringement,
inter alia to prevent the entry into the channels of commerce in their jurisdiction
of imported goods
that involve the infringement of an
intellectual property right, immediately after customs clearance of
such goods. Members are not obliged to
accord such authority in respect of protected subject matter
acquired or ordered by a person prior
to knowing or having reasonable grounds to know that dealing
in such subject matter would entail the
infringement of an intellectual property right.
2. Notwithstanding the other provisions
of this Part and provided that the provisions of Part II
specifically addressing use by
governments, or by third parties authorized by a government, without
the authorization of the right holder
are complied with, Members may limit the remedies available against
11For
the purpose of this Part, the term "right holder" includes
federations and associations having legal standing to assert
such rights.
Page 340
such use to payment of remuneration in
accordance with subparagraph (h) of Article 31. In other cases,
the remedies under this Part shall
apply or, where these remedies are inconsistent with a Member's
law, declaratory judgments and adequate
compensation shall be available.
Article 45
Damages
1. The judicial authorities shall have
the authority to order the infringer to pay the right holder
damages adequate to compensate for the
injury the right holder has suffered because of an infringement
of that person’s intellectual property
right by an infringer who knowingly, or with reasonable grounds
to know, engaged in infringing
activity.
2. The judicial authorities shall also
have the authority to order the infringer to pay the right holder
expenses, which may include appropriate
attorney's fees. In appropriate cases, Members may authorize
the judicial authorities to order
recovery of profits and/or payment of pre-established damages even
where the infringer did not knowingly,
or with reasonable grounds to know, engage in infringing activity.
Article 46
Other Remedies
In order to create an effective
deterrent to infringement, the judicial authorities shall have the
authority to order that goods that they
have found to be infringing be, without compensation of any
sort, disposed of outside the channels
of commerce in such a manner as to avoid any harm caused to
the right holder, or, unless this would
be contrary to existing constitutional requirements, destroyed.
The judicial authorities shall also
have the authority to order that materials and implements the
predominant use of which has been in
the creation of the infringing goods be, without compensation
of any sort, disposed of outside the
channels of commerce in such a manner as to minimize the risks
of further infringements. In
considering such requests, the need for proportionality between the
seriousness of the infringement and the
remedies ordered as well as the interests of third parties shall
be taken into account. In regard to
counterfeit trademark goods, the simple removal of the trademark
unlawfully affixed shall not be
sufficient, other than in exceptional cases, to permit release of the goods
into the channels of commerce.
Article 47
Right of Information
Members may provide that the judicial
authorities shall have the authority, unless this would
be out of proportion to the seriousness
of the infringement, to order the infringer to inform the right
holder of the identity of third persons
involved in the production and distribution of the infringing goods
or services and of their channels of
distribution.
Page 341
Article 48
Indemnification of the
Defendant
1. The judicial authorities shall have
the authority to order a party at whose request measures were
taken and who has abused enforcement
procedures to provide to a party wrongfully enjoined or restrained
adequate compensation for the injury
suffered because of such abuse. The judicial authorities shall
also have the authority to order the
applicant to pay the defendant expenses, which may include
appropriate attorney's fees.
2. In respect of the administration of
any law pertaining to the protection or enforcement of
intellectual property rights, Members
shall only exempt both public authorities and officials from liability
to appropriate remedial measures where
actions are taken or intended in good faith in the course of
the administration of that law.
Article 49
Administrative Procedures
To the extent that any civil remedy can
be ordered as a result of administrative procedures
on the merits of a case, such
procedures shall conform to principles equivalent in substance to those
set forth in this Section.
SECTION 3: PROVISIONAL MEASURES
Article 50
1. The judicial authorities shall have
the authority to order prompt and effective provisional
measures:
(a) to prevent an infringement of any
intellectual property right from occurring, and in
particular to prevent the entry into
the channels of commerce in their jurisdiction of
goods, including imported goods
immediately after customs clearance;
(b) to preserve relevant evidence in
regard to the alleged infringement.
2. The judicial authorities shall have
the authority to adopt provisional measures inaudita altera
parte where appropriate, in particular where any delay is likely to cause
irreparable harm to the right
holder, or where there is a
demonstrable risk of evidence being destroyed.
3. The judicial authorities shall have
the authority to require the applicant to provide any reasonably
available evidence in order to satisfy
themselves with a sufficient degree of certainty that the applicant
is the right holder and that the
applicant’s right is being infringed or that such infringement is imminent,
and to order the applicant to provide a
security or equivalent assurance sufficient to protect the defendant
and to prevent abuse.
4. Where provisional measures have been
adopted inaudita altera parte, the parties affected shall
be given notice, without delay after
the execution of the measures at the latest. A review, including
a right to be heard, shall take place
upon request of the defendant with a view to deciding, within a
Page 342
reasonable period after the
notification of the measures, whether these measures shall be modified, revoked
or confirmed.
5. The applicant may be required to
supply other information necessary for the identification of
the goods concerned by the authority
that will execute the provisional measures.
6. Without prejudice to paragraph 4,
provisional measures taken on the basis of paragraphs 1 and
2 shall, upon request by the defendant,
be revoked or otherwise cease to have effect, if proceedings
leading to a decision on the merits of
the case are not initiated within a reasonable period, to be
determined by the judicial authority
ordering the measures where a Member's law so permits or, in
the absence of such a determination,
not to exceed 20 working days or 31 calendar days, whichever
is the longer.
7. Where the provisional measures are
revoked or where they lapse due to any act or omission
by the applicant, or where it is
subsequently found that there has been no infringement or threat of
infringement of an intellectual
property right, the judicial authorities shall have the authority to order
the applicant, upon request of the
defendant, to provide the defendant appropriate compensation for
any injury caused by these measures.
8. To the extent that any provisional
measure can be ordered as a result of administrative procedures,
such procedures shall conform to
principles equivalent in substance to those set forth in this Section.
SECTION 4: SPECIAL REQUIREMENTS RELATED
TO BORDER MEASURES12
Article 51
Suspension of Release by
Customs Authorities
Members shall, in conformity with the
provisions set out below, adopt procedures13 to enable
a right holder, who has valid grounds
for suspecting that the importation of counterfeit trademark or
pirated copyright goods14 may take place, to lodge an application in writing with
competent authorities,
administrative or judicial, for the
suspension by the customs authorities of the release into free circulation
of such goods. Members may enable such
an application to be made in respect of goods which involve
other infringements of intellectual
property rights, provided that the requirements of this Section are
12Where
a Member has dismantled substantially all controls over movement of goods
across its border with another Member
with which it forms part of a customs
union, it shall not be required to apply the provisions of this Section at that
border.
13It
is understood that there shall be no obligation to apply such procedures to
imports of goods put on the market in another
country by or with the consent of the
right holder, or to goods in transit.
14For
the purposes of this Agreement:
(a) "counterfeit trademark
goods" shall mean any goods, including packaging, bearing without authorization
a trademark which is identical to the
trademark validly registered in respect of such goods, or which cannot
be distinguished in its essential
aspects from such a trademark, and which thereby infringes the rights
of the owner of the trademark in question
under the law of the country of importation;
(b) "pirated copyright goods"
shall mean any goods which are copies made without the consent of the right
holder or person duly authorized by the
right holder in the country of production and which are made
directly or indirectly from an article
where the making of that copy would have constituted an infringement
of a copyright or a related right under
the law of the country of importation.
Page 343
met. Members may also provide for
corresponding procedures concerning the suspension by the customs
authorities of the release of
infringing goods destined for exportation from their territories.
Article 52
Application
Any right holder initiating the
procedures under Article 51 shall be required to provide adequate
evidence to satisfy the competent
authorities that, under the laws of the country of importation, there
is prima facie an infringement
of the right holder’s intellectual property right and to supply a sufficiently
detailed description of the goods to
make them readily recognizable by the customs authorities. The
competent authorities shall inform the
applicant within a reasonable period whether they have accepted
the application and, where determined
by the competent authorities, the period for which the customs
authorities will take action.
Article 53
Security or Equivalent
Assurance
1. The competent authorities shall have
the authority to require an applicant to provide a security
or equivalent assurance sufficient to
protect the defendant and the competent authorities and to prevent
abuse. Such security or equivalent
assurance shall not unreasonably deter recourse to these procedures.
2. Where pursuant to an application
under this Section the release of goods involving industrial
designs, patents, layout-designs or
undisclosed information into free circulation has been suspended
by customs authorities on the basis of
a decision other than by a judicial or other independent authority,
and the period provided for in Article
55 has expired without the granting of provisional relief by the
duly empowered authority, and provided
that all other conditions for importation have been complied
with, the owner, importer, or consignee
of such goods shall be entitled to their release on the posting
of a security in an amount sufficient
to protect the right holder for any infringement. Payment of such
security shall not prejudice any other
remedy available to the right holder, it being understood that the
security shall be released if the right
holder fails to pursue the right of action within a reasonable period
of time.
Article 54
Notice of Suspension
The importer and the applicant shall be
promptly notified of the suspension of the release of
goods according to Article 51.
Page 344
Article 55
Duration of Suspension
If, within a period not exceeding 10
working days after the applicant has been served notice
of the suspension, the customs
authorities have not been informed that proceedings leading to a decision
on the merits of the case have been
initiated by a party other than the defendant, or that the duly
empowered authority has taken
provisional measures prolonging the suspension of the release of the
goods, the goods shall be released,
provided that all other conditions for importation or exportation
have been complied with; in appropriate
cases, this time-limit may be extended by another 10 working
days. If proceedings leading to a
decision on the merits of the case have been initiated, a review,
including a right to be heard, shall
take place upon request of the defendant with a view to deciding,
within a reasonable period, whether
these measures shall be modified, revoked or confirmed.
Notwithstanding the above, where the
suspension of the release of goods is carried out or continued
in accordance with a provisional
judicial measure, the provisions of paragraph 6 of Article 50 shall
apply.
Article 56
Indemnification of the
Importer
and of the Owner of the
Goods
Relevant authorities shall have the
authority to order the applicant to pay the importer, the
consignee and the owner of the goods
appropriate compensation for any injury caused to them through
the wrongful detention of goods or
through the detention of goods released pursuant to Article 55.
Article 57
Right of Inspection and
Information
Without prejudice to the protection of
confidential information, Members shall provide the
competent authorities the authority to
give the right holder sufficient opportunity to have any goods
detained by the customs authorities
inspected in order to substantiate the right holder’s claims. The
competent authorities shall also have
authority to give the importer an equivalent opportunity to have
any such goods inspected. Where a
positive determination has been made on the merits of a case,
Members may provide the competent
authorities the authority to inform the right holder of the names
and addresses of the consignor, the
importer and the consignee and of the quantity of the goods in
question.
Article 58
Ex Officio Action
Where Members require competent
authorities to act upon their own initiative and to suspend
the release of goods in respect of
which they have acquired prima facie evidence that an intellectual
property right is being infringed:
(a) the competent authorities may at
any time seek from the right holder any information
that may assist them to exercise these
powers;
Page 345
(b) the importer and the right holder
shall be promptly notified of the suspension. Where
the importer has lodged an appeal
against the suspension with the competent authorities,
the suspension shall be subject to the
conditions, mutatis mutandis, set out at Article 55;
(c) Members shall only exempt both
public authorities and officials from liability to
appropriate remedial measures where
actions are taken or intended in good faith.
Article 59
Remedies
Without prejudice to other rights of
action open to the right holder and subject to the right of
the defendant to seek review by a
judicial authority, competent authorities shall have the authority to
order the destruction or disposal of
infringing goods in accordance with the principles set out in Article
46. In regard to counterfeit trademark
goods, the authorities shall not allow the re-exportation of the
infringing goods in an unaltered state
or subject them to a different customs procedure, other than in
exceptional circumstances.
Article 60
De Minimis Imports
Members may exclude from the
application of the above provisions small quantities of goods
of a non-commercial nature contained in
travellers' personal luggage or sent in small consignments.
SECTION 5: CRIMINAL PROCEDURES
Article 61
Members shall provide for criminal
procedures and penalties to be applied at least in cases
of wilful trademark counterfeiting or
copyright piracy on a commercial scale. Remedies available shall
include imprisonment and/or monetary
fines sufficient to provide a deterrent, consistently with the level
of penalties applied for crimes of a
corresponding gravity. In appropriate cases, remedies available
shall also include the seizure,
forfeiture and destruction of the infringing goods and of any materials
and implements the predominant use of
which has been in the commission of the offence. Members
may provide for criminal procedures and
penalties to be applied in other cases of infringement of
intellectual property rights, in
particular where they are committed wilfully and on a commercial scale.
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PART IV
ACQUISITION AND MAINTENANCE OF
INTELLECTUAL PROPERTY
RIGHTS AND RELATED INTER-PARTES PROCEDURES
Article 62
1. Members may require, as a condition
of the acquisition or maintenance of the intellectual property
rights provided for under Sections 2
through 6 of Part II, compliance with reasonable procedures and
formalities. Such procedures and
formalities shall be consistent with the provisions of this Agreement.
2. Where the acquisition of an
intellectual property right is subject to the right being granted or
registered, Members shall ensure that
the procedures for grant or registration, subject to compliance
with the substantive conditions for
acquisition of the right, permit the granting or registration of the
right within a reasonable period of
time so as to avoid unwarranted curtailment of the period of protection.
3. Article 4 of the Paris Convention
(1967) shall apply mutatis mutandis to service marks.
4. Procedures concerning the
acquisition or maintenance of intellectual property rights and, where
a Member's law provides for such
procedures, administrative revocation and inter partes procedures
such as opposition, revocation and
cancellation, shall be governed by the general principles set out
in paragraphs 2 and 3 of Article 41.
5. Final administrative decisions in
any of the procedures referred to under paragraph 4 shall be
subject to review by a judicial or
quasi-judicial authority. However, there shall be no obligation to
provide an opportunity for such review
of decisions in cases of unsuccessful opposition or administrative
revocation, provided that the grounds
for such procedures can be the subject of invalidation procedures.
PART V
DISPUTE PREVENTION AND SETTLEMENT
Article 63
Transparency
1. Laws and regulations, and final
judicial decisions and administrative rulings of general application,
made effective by a Member pertaining
to the subject matter of this Agreement (the availability, scope,
acquisition, enforcement and prevention
of the abuse of intellectual property rights) shall be published,
or where such publication is not
practicable made publicly available, in a national language, in such
a manner as to enable governments and
right holders to become acquainted with them. Agreements
concerning the subject matter of this
Agreement which are in force between the government or a
governmental agency of a Member and the
government or a governmental agency of another Member
shall also be published.
2. Members shall notify the laws and
regulations referred to in paragraph 1 to the Council for
TRIPS in order to assist that Council
in its review of the operation of this Agreement. The Council
shall attempt to minimize the burden on
Members in carrying out this obligation and may decide to
waive the obligation to notify such
laws and regulations directly to the Council if consultations with
WIPO on the establishment of a common
register containing these laws and regulations are successful.
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The Council shall also consider in this
connection any action required regarding notifications pursuant
to the obligations under this Agreement
stemming from the provisions of Article 6ter of the Paris
Convention (1967).
3. Each Member shall be prepared to
supply, in response to a written request from another Member,
information of the sort referred to in
paragraph 1. A Member, having reason to believe that a specific
judicial decision or administrative
ruling or bilateral agreement in the area of intellectual property rights
affects its rights under this
Agreement, may also request in writing to be given access to or be informed
in sufficient detail of such specific
judicial decisions or administrative rulings or bilateral agreements.
4. Nothing in paragraphs 1, 2 and 3
shall require Members to disclose confidential information
which would impede law enforcement or
otherwise be contrary to the public interest or would prejudice
the legitimate commercial interests of
particular enterprises, public or private.
Article 64
Dispute Settlement
1. The provisions of Articles XXII and
XXIII of GATT 1994 as elaborated and applied by the
Dispute Settlement Understanding shall
apply to consultations and the settlement of disputes under
this Agreement except as otherwise
specifically provided herein.
2. Subparagraphs 1(b) and 1(c) of
Article XXIII of GATT 1994 shall not apply to the settlement
of disputes under this Agreement for a
period of five years from the date of entry into force of the
WTO Agreement.
3. During the time period referred to
in paragraph 2, the Council for TRIPS shall examine the
scope and modalities for complaints of
the type provided for under subparagraphs 1(b) and 1(c) of Article
XXIII of GATT 1994 made pursuant to
this Agreement, and submit its recommendations to the Ministerial
Conference for approval. Any decision
of the Ministerial Conference to approve such recommendations
or to extend the period in paragraph 2
shall be made only by consensus, and approved recommendations
shall be effective for all Members without
further formal acceptance process.
PART VI
TRANSITIONAL ARRANGEMENTS
Article 65
Transitional Arrangements
1. Subject to the provisions of
paragraphs 2, 3 and 4, no Member shall be obliged to apply the
provisions of this Agreement before the
expiry of a general period of one year following the date of
entry into force of the WTO Agreement.
2. A developing country Member is
entitled to delay for a further period of four years the date
of application, as defined in paragraph
1, of the provisions of this Agreement other than Articles 3,
4 and 5.
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3. Any other Member which is in the
process of transformation from a centrally-planned into a
market, free-enterprise economy and
which is undertaking structural reform of its intellectual property
system and facing special problems in
the preparation and implementation of intellectual property laws
and regulations, may also benefit from
a period of delay as foreseen in paragraph 2.
4. To the extent that a developing
country Member is obliged by this Agreement to extend product
patent protection to areas of
technology not so protectable in its territory on the general date of
application
of this Agreement for that Member, as
defined in paragraph 2, it may delay the application of the
provisions on product patents of
Section 5 of Part II to such areas of technology for an additional period
of five years.
5. A Member availing itself of a
transitional period under paragraphs 1, 2, 3 or 4 shall ensure
that any changes in its laws,
regulations and practice made during that period do not result in a lesser
degree of consistency with the
provisions of this Agreement.
Article 66
Least-Developed Country
Members
1. In view of the special needs and
requirements of least-developed country Members, their
economic, financial and administrative
constraints, and their need for flexibility to create a viable
technological base, such Members shall
not be required to apply the provisions of this Agreement, other
than Articles 3, 4 and 5, for a period
of 10 years from the date of application as defined under paragraph
1 of Article 65. The Council for TRIPS
shall, upon duly motivated request by a least-developed country
Member, accord extensions of this
period.
2. Developed country Members shall
provide incentives to enterprises and institutions in their
territories for the purpose of
promoting and encouraging technology transfer to least-developed country
Members in order to enable them to
create a sound and viable technological base.
Article 67
Technical Cooperation
In order to facilitate the
implementation of this Agreement, developed country Members shall
provide, on request and on mutually
agreed terms and conditions, technical and financial cooperation
in favour of developing and
least-developed country Members. Such cooperation shall include assistance
in the preparation of laws and
regulations on the protection and enforcement of intellectual property
rights as well as on the prevention of
their abuse, and shall include support regarding the establishment
or reinforcement of domestic offices
and agencies relevant to these matters, including the training of
personnel.
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PART VII
INSTITUTIONAL ARRANGEMENTS; FINAL
PROVISIONS
Article 68
Council for Trade-Related
Aspects of
Intellectual Property
Rights
The Council for TRIPS shall monitor the
operation of this Agreement and, in particular, Members'
compliance with their obligations
hereunder, and shall afford Members the opportunity of consulting
on matters relating to the
trade-related aspects of intellectual property rights. It shall carry out such
other responsibilities as assigned to
it by the Members, and it shall, in particular, provide any assistance
requested by them in the context of
dispute settlement procedures. In carrying out its functions, the
Council for TRIPS may consult with and
seek information from any source it deems appropriate. In
consultation with WIPO, the Council
shall seek to establish, within one year of its first meeting,
appropriate arrangements for
cooperation with bodies of that Organization.
Article 69
International Cooperation
Members agree to cooperate with each
other with a view to eliminating international trade in
goods infringing intellectual property
rights. For this purpose, they shall establish and notify contact
points in their administrations and be
ready to exchange information on trade in infringing goods. They
shall, in particular, promote the
exchange of information and cooperation between customs authorities
with regard to trade in counterfeit
trademark goods and pirated copyright goods.
Article 70
Protection of Existing
Subject Matter
1. This Agreement does not give rise to
obligations in respect of acts which occurred before the
date of application of the Agreement
for the Member in question.
2. Except as otherwise provided for in
this Agreement, this Agreement gives rise to obligations
in respect of all subject matter
existing at the date of application of this Agreement for the Member
in question, and which is protected in
that Member on the said date, or which meets or comes
subsequently to meet the criteria for
protection under the terms of this Agreement. In respect of this
paragraph and paragraphs 3 and 4,
copyright obligations with respect to existing works shall be solely
determined under Article 18 of the
Berne Convention (1971), and obligations with respect to the rights
of producers of phonograms and
performers in existing phonograms shall be determined solely under
Article 18 of the Berne Convention
(1971) as made applicable under paragraph 6 of Article 14 of this
Agreement.
3. There shall be no obligation to
restore protection to subject matter which on the date of
application of this Agreement for the
Member in question has fallen into the public domain.
4. In respect of any acts in respect of
specific objects embodying protected subject matter which
become infringing under the terms of
legislation in conformity with this Agreement, and which were
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commenced, or in respect of which a
significant investment was made, before the date of acceptance
of the WTO Agreement by that Member,
any Member may provide for a limitation of the remedies
available to the right holder as to the
continued performance of such acts after the date of application
of this Agreement for that Member. In
such cases the Member shall, however, at least provide for
the payment of equitable remuneration.
5. A Member is not obliged to apply the
provisions of Article 11 and of paragraph 4 of Article 14
with respect to originals or copies
purchased prior to the date of application of this Agreement for that
Member.
6. Members shall not be required to
apply Article 31, or the requirement in paragraph 1 of Article 27
that patent rights shall be enjoyable
without discrimination as to the field of technology, to use without
the authorization of the right holder
where authorization for such use was granted by the government
before the date this Agreement became
known.
7. In the case of intellectual property
rights for which protection is conditional upon registration,
applications for protection which are
pending on the date of application of this Agreement for the Member
in question shall be permitted to be
amended to claim any enhanced protection provided under the
provisions of this Agreement. Such
amendments shall not include new matter.
8. Where a Member does not make
available as of the date of entry into force of the WTO
Agreement patent protection for
pharmaceutical and agricultural chemical products commensurate with
its obligations under Article 27, that
Member shall:
(a) notwithstanding the provisions of
Part VI, provide as from the date of entry into force
of the WTO Agreement a means by which
applications for patents for such inventions
can be filed;
(b) apply to these applications, as of
the date of application of this Agreement, the criteria
for patentability as laid down in this
Agreement as if those criteria were being applied
on the date of filing in that Member
or, where priority is available and claimed, the
priority date of the application; and
(c) provide patent protection in
accordance with this Agreement as from the grant of the
patent and for the remainder of the
patent term, counted from the filing date in
accordance with Article 33 of this
Agreement, for those of these applications that meet
the criteria for protection referred to
in subparagraph (b).
9. Where a product is the subject of a
patent application in a Member in accordance with
paragraph 8(a), exclusive marketing
rights shall be granted, notwithstanding the provisions of Part VI,
for a period of five years after
obtaining marketing approval in that Member or until a product patent
is granted or rejected in that Member,
whichever period is shorter, provided that, subsequent to the
entry into force of the WTO Agreement,
a patent application has been filed and a patent granted for
that product in another Member and
marketing approval obtained in such other Member.
Article 71
Review and Amendment
1. The Council for TRIPS shall review
the implementation of this Agreement after the expiration
of the transitional period referred to
in paragraph 2 of Article 65. The Council shall, having regard
to the experience gained in its
implementation, review it two years after that date, and at identical intervals
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thereafter. The Council may also
undertake reviews in the light of any relevant new developments
which might warrant modification or
amendment of this Agreement.
2. Amendments merely serving the
purpose of adjusting to higher levels of protection of intellectual
property rights achieved, and in force,
in other multilateral agreements and accepted under those
agreements by all Members of the WTO
may be referred to the Ministerial Conference for action in
accordance with paragraph 6 of Article
X of the WTO Agreement on the basis of a consensus proposal
from the Council for TRIPS.
Article 72
Reservations
Reservations may not be entered in
respect of any of the provisions of this Agreement without
the consent of the other Members.
Article 73
Security Exceptions
Nothing in this Agreement shall be
construed:
(a) to require a Member to furnish any
information the disclosure of which it considers
contrary to its essential security
interests; or
(b) to prevent a Member from taking any
action which it considers necessary for the
protection of its essential security
interests;
(i) relating to fissionable materials
or the materials from which they are derived;
(ii) relating to the traffic in arms,
ammunition and implements of war and to such
traffic in other goods and materials as
is carried on directly or indirectly for
the purpose of supplying a military
establishment;
(iii) taken in time of war or other
emergency in international relations; or
(c) to prevent a Member from taking any
action in pursuance of its obligations under the
United Nations Charter for the
maintenance of international peace and security.