AGREEMENT
ON TRADE-RELATED ASPECTS OF INTELLECTUAL PROPERTY RIGHTS
(Marrakesh, 15.IV.1994)
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:
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").
--------------------------------
<1> When "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.
<2> In 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.
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.
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 protection <*> 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.
--------------------------------
<*> For 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.
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.
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.
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 6 bis 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 no 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 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.
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 6 bis 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 6 bis 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 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.
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 10 bis 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.
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. <*>
--------------------------------
<*> Notwithstanding the first sentence of Article 42, Members
may, with respect to these obligations, instead provide for
enforcement by administrative action.
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.
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.
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 <*>. 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.
--------------------------------
<*> For 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.
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 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 importing <*>
for these purposes that product;
--------------------------------
<*> This 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.
(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.
Article 31
Other Use Without Authorization of the Right Holder
Where the law of a Member allows for other use <*> 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:
--------------------------------
<*> "Other use" refers to use other than that allowed under
Article 30.
(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 non-commercial 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 non-commercial
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;
(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. <*>
--------------------------------
<*> It 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.
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:
(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 <*>: 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.
--------------------------------
<*> The 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.
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 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 layout-designs 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 10 bis 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 practices <*> so long as
such information:
--------------------------------
<*> For 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.
(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 considerable
effort, shall protect such data against 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 opportunit for
consultations by the other Member under the same conditions as
those foreseen in paragraph 3.
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.
Section 2
CIVIL AND ADMINISTRATIVE PROCEDURES AND REMEDIES
Article 42
Fair and Equitable Procedures
Members shall make available to right holders <*> 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.
--------------------------------
<*> For the purpose of this Part, the term "right holder"
includes federations and associations having legal standing to
assert such rights.
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
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.
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 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 MEASURES <1>
Article 51
Suspension of Release by Customs Authorities
Members shall, in conformity with the provisions set out
below, adopt procedures <2> to enable a right holder, who has
valid grounds for suspecting that the importation of counterfeit
trademark or pirated copyright goods <3> 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 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.
--------------------------------
<1> Where 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.
<2> It 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.
<3> For 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.
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 assuranse 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.
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;
(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.
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. 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.
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
require 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 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.
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 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
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.
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