Each Party shall provide that the owner of a registered trademark has the exclusive right to prevent third parties that do not have the owner's consent from using in the course of trade identical or similar signs, including subsequent geographical indications (9) for goods or services that are related to those goods or services in respect of which the owner's trademark is registered, if that use would result in a likelihood of confusion. In the case of the use of an identical sign for identical goods or services, a likelihood of confusion shall be presumed.
Article 20.20. Exceptions
A Party may provide limited exceptions to the rights conferred by a trademark, such as fair use of descriptive terms, provided that those exceptions take account of the legitimate interests of the owner of the trademark and of third parties.
Article 20.21. Well-Known Trademarks
1. No Party shall require as a condition for determining that a trademark is well-known that the trademark has been registered in the Party or in another jurisdiction, included on a list of well- known trademarks, or given prior recognition as a well-known trademark.
2. Article 6bis of the Paris Convention shall apply, mutatis mutandis, to goods or services that are not identical or similar to those identified by a well-known trademark, (10) whether registered or not, 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 trademark, and provided that the interests of the owner of the trademark are likely to be damaged by that use.
3. The Parties recognize the importance of the Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks as adopted by the Assembly of the Paris Union for the Protection of Industrial Property and the General Assembly of WIPO at the Thirty-Fourth Series of Meetings of the Assemblies of the Member States of WIPO September 20 to 29, 1999.
4. Each Party shall provide for appropriate measures to refuse the application or cancel the registration and prohibit the use of a trademark that is identical or similar to a well-known trademark, (11) for identical or similar goods or services, if the use of that trademark is likely to cause confusion with the prior well-known trademark. A Party may also provide those measures including in cases in which the subsequent trademark is likely to deceive.
Article 20.22. Procedural Aspects of Examination, Opposition, and Cancellation
Each Party shall provide a system for the examination and registration of trademarks that includes among other things:
(a) communicating to the applicant in writing, which may be by electronic means, the reasons for any refusal to register a trademark;
(b) providing the applicant with an opportunity to respond to communications from the competent authorities, to contest any initial refusal, and to make a judicial appeal of any final refusal to register a trademark;
(c) providing an opportunity to oppose the registration of a trademark and an opportunity to seek cancellation (12) of a trademark through, at a minimum, administrative procedures; and
(d) requiring administrative decisions in opposition and cancellation proceedings to be reasoned and in writing, which may be provided by electronic means.
Article 20.23. Electronic Trademarks System
Further to Article 20.9.3 (Transparency), each Party shall provide a:
(a) system for the electronic application for, and maintenance of, trademarks; and
(b) publicly available electronic information system, including an online database, of trademark applications and of registered trademarks.
Article 20.24. Classification of Goods and Services
Each Party shall adopt or maintain a trademark classification system that is consistent with the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, done at Nice, June 15, 1957, as revised and amended (Nice Classification). Each Party shall provide that:
(a) registrations and the publications of applications indicate the goods and services by their names, grouped according to the classes established by the Nice Classification; (13) and
(b) goods or services may not be considered as being similar to each other on the ground that, in any registration or publication, they are classified in the same class of the Nice Classification. Conversely, each Party shall provide that goods or services may not be considered as being dissimilar from each other on the ground that, in any registration or publication, they are classified in different classes of the Nice Classification.
Article 20.25. Term of Protection for Trademarks
Each Party shall provide that initial registration and each renewal of registration of a trademark is for a term of no less than 10 years.
Article 20.26. Non-Recordal of a License
No Party shall require recordal of trademark licenses:
(a) to establish the validity of the licenses; or
(b) as a condition for use of a trademark by a licensee to be deemed to constitute use by the holder in a proceeding that relates to the acquisition, maintenance, or enforcement of trademarks.
Article 20.27. Domain Names
1. In connection with each Party's system for the management of its country-code top-level domain (ccTLD) domain names, the following shall be available:
(a) an appropriate procedure for the settlement of disputes that, based on, or modelled along the same lines as, the principles established in the Uniform Domain-Name Dispute-Resolution Policy, or that:
(i) is designed to resolve disputes expeditiously and at low cost,
(ii) is fair and equitable,
(iii) is not overly burdensome, and
(iv) does not preclude resort to judicial proceedings; and
(b) online public access to a reliable and accurate database of contact information concerning domain name registrants,
in accordance with each Party's law and, if applicable, relevant administrator policies regarding protection of privacy and personal data.
2. In connection with each Party's system for the management of ccTLD domain names, appropriate remedies (14) shall be available at least in cases in which a person registers or holds, with a bad faith intent to profit, a domain name that is identical or confusingly similar to a trademark.
Section D. Country Names
Article 20.28. Country Names
Each Party shall provide the legal means for interested persons to prevent commercial use of the country name of a Party in relation to a good in a manner that misleads consumers as to the origin of that good.
Section E. Geographical Indications
Article 20.29. Recognition of Geographical Indications
The Parties recognize that geographical indications may be protected through a trademark or a sui generis system or other legal means.
Article 20.30. Administrative Procedures for the Protection or Recognition of Geographical Indications
If a Party provides administrative procedures for the protection or recognition of geographical indications, whether through a trademark or a sui generis system, with respect to applications for that protection or petitions for that recognition, that Party shall:
(a) accept those applications or petitions without requiring intercession by a Party on behalf of its nationals; (15)
(b) process those applications or petitions without imposing overly burdensome formalities;
(c) ensure that its laws and regulations governing the filing of those applications or petitions are readily available to the public and clearly set out the procedures for these actions;
(d) make available information sufficient to allow the general public to obtain guidance concerning the procedures for filing applications or petitions and the processing of those applications or petitions in general; and allow an applicant, a petitioner, or their representative to ascertain the status of specific applications and petitions;
(e) require that applications or petitions may specify particular translation or transliteration for which protection is being sought;
(f) examine applications or petitions;
(g) ensure that those applications or petitions are published for opposition and provide procedures for opposing geographical indications that are the subject of applications or petitions;
(h) provide a reasonable period of time during which an interested person may oppose the application or petition;
(i) require that administrative decisions in opposition proceedings be reasoned and in writing, which may be provided by electronic means;
(j) require that administrative decisions in cancellation proceedings be reasoned and in writing, which may be provided by electronic means; and
(k) provide for cancellation (16) of the protection or recognition afforded to a geographical indication.
Article 20.31. Grounds of Denial, Opposition, and Cancellation (17)
1. If a Party protects or recognizes a geographical indication through the procedures referred to in Article 20.30 (Administrative Procedures for the Protection or Recognition of Geographical Indications), that Party shall provide procedures that allow interested persons to object to the protection or recognition of a geographical indication, and that allow for that protection or recognition to be refused or otherwise not afforded, at least, on the grounds that the geographical indication is:
(a) likely to cause confusion with a trademark that is the subject of a pre-existing good faith pending application or registration in the territory of the Party;
(b) likely to cause confusion with a pre-existing trademark, the rights to which have been acquired in accordance with the Party's law; and
(c) a term customary in common language as the common name (18) (19) (20) for the relevant good in the territory of the Party.
2. If a Party has protected or recognized a geographical indication through the procedures referred to in Article 20.30 (Administrative Procedures for the Protection or Recognition of Geographical Indications), that Party shall provide procedures that allow for interested persons to seek the cancellation of a geographical indication, and that allow for the protection or recognition to be cancelled, at least, on the grounds listed in paragraph 1. A Party may provide that the grounds listed in paragraph 1 apply as of the time of filing the request for protection or recognition of a geographical indication in the territory of the Party. (21)
3. No Party shall preclude the possibility that the protection or recognition of a geographical indication may be cancelled, or otherwise cease, on the basis that the protected or recognized term has ceased meeting the conditions upon which the protection or recognition was originally granted in that Party.
4. If a Party has in place a sui generis system for protecting unregistered geographical indications by means of judicial procedures, that Party shall provide that its judicial authorities have the authority to deny the protection or recognition of a geographical indication if any circumstance identified in paragraph 1 has been established. (22) That Party shall also provide a process that allows interested persons to commence a proceeding on the grounds identified in paragraph 1.
5. If a Party provides protection or recognition of a geographical indication through the procedures referred to in Article 20.30 (Administrative Procedures for the Protection or Recognition of Geographical Indications) to the translation or transliteration of that geographical indication, that Party shall make available procedures that are equivalent to, and grounds that are the same as, those referred to in paragraphs 1 and 2 with respect to that translation or transliteration.
Article 20.32. Guidelines for Determining Whether a Term Is the Term Customary In the Common Language
With respect to the procedures in Article 20.30 (Administrative Procedures for the Protection or Recognition of Geographical Indications) and Article 20.31 (Grounds of Denial, Opposition, and Cancellation), in determining whether a term is the term customary in common language as the common name for the relevant good in the territory of a Party, that Party's authorities shall have the authority to take into account how consumers understand the term in the territory of that Party. Factors relevant to that consumer understanding may include:
(a) whether the term is used to refer to the type of good in question, as indicated by competent sources such as dictionaries, newspapers, and relevant websites;
(b) how the good referenced by the term is marketed and used in trade in the territory of that Party;
(c) whether the term is used, as appropriate, in relevant international standards recognized by the Parties to refer to a type or class of good in the territory of the Party, such as pursuant to a standard promulgated by the Codex Alimentarius; and
(d) whether the good in question is imported into the Party's territory, in significant quantities, (23) from a place other than the territory identified in the application or petition, and whether those imported goods are named by the term.
Article 20.33. Multi-Component Terms
With respect to the procedures in Article 20.30 (Administrative Procedures for the Protection or Recognition of Geographical Indications) and Article 20.31 (Grounds of Denial, Opposition, and Cancellation), an individual component of a multi-component term that is protected as a geographical indication in the territory of a Party shall not be protected in that Party if that individual component is a term customary in the common language as the common name for the associated good.
Article 20.34. Date of Protection of a Geographical Indication
If a Party grants protection or recognition to a geographical indication through the procedures referred to in Article 20.30 (Administrative Procedures for the Protection or Recognition of Geographical Indications), that protection or recognition shall commence no earlier than the filing date (24) in the Party or the registration date in the Party, as applicable.
Article 20.35. International Agreements
1. If a Party protects or recognizes a geographical indication pursuant to an international agreement, as of the applicable date under paragraph 6, involving a Party or a non-Party and that geographical indication is not protected through the procedures referred to in Article 20.30 (Administrative Procedures for the Protection or Recognition of Geographical Indications) (25) or Article 20.31 (Grounds of Denial, Opposition, and Cancellation), that Party at least shall apply procedures and grounds that are equivalent to those in Article 20.30(f), (g), (h), and (i) (Administrative Procedures for the Protection or Recognition of Geographical Indications) and Article 20.31.1 (Grounds of Denial, Opposition, and Cancellation), as well as:
(a) make available information sufficient to allow the general public to obtain guidance concerning the procedures for protecting or recognizing the geographical indication and allow interested persons to ascertain the status of requests for protection or recognition;
(b) to publish online details regarding the terms that the Party is considering protecting or recognizing through an international agreement involving a Party or a non-Party, including specifying whether the protection or recognition is being considered for any translations or transliterations of those terms, and with respect to multi- component terms, specifying the components, if any, for which protection or recognition is being considered, or the components that are disclaimed;
(c) in respect of opposition procedures, provide a reasonable period of time for interested persons to oppose the protection or recognition of the terms referred to in subparagraph (b). That period shall allow for a meaningful opportunity for any interested person to participate in an opposition process; and
(d) inform the other Parties of the opportunity to oppose, no later than the commencement of the opposition period.
2. In respect of international agreements referred to in paragraph 6 that permit the protection or recognition of a new geographical indication, a Party shall: (26) (27)
(a) apply paragraph 1(b) and apply at least procedures and grounds that are equivalent to those in Article 20.30(f), (g), (h), and (i) (Administrative Procedures for the Protection or Recognition of Geographical Indications) and Article 20.31.1 (Grounds of Denial, Opposition, and Cancellation);
(b) provide an opportunity for interested persons to comment regarding the protection or recognition of the new geographical indication for a reasonable period of time before that term is protected or recognized; and
(c) inform the other Parties of the opportunity to comment, no later than the commencement of the period for comment.
3. For the purposes of this Article, a Party shall not preclude the possibility that the protection or recognition of a geographical indication could cease.
4. For the purposes of this Article, a Party is not required to apply Article 20.31 (Grounds of Denial, Opposition, and Cancellation), or obligations equivalent to Article 20.31, to geographical indications for wines and spirits or applications for those geographical indications.
5. The protection or recognition that each Party provides pursuant to paragraph 1 shall commence no earlier than the date on which that agreement enters into force or, if that Party grants that protection or recognition on a date after the entry into force of that agreement, on that later date.
6. No Party shall be required to apply this Article to geographical indications that have been specifically identified in, and that are protected or recognized pursuant to, an international agreement involving a Party or a non-Party, provided that the agreement:
(a) was concluded, or agreed in principle, (28) prior to the date of conclusion, or agreement in principle, of this Agreement;
(b) was ratified by a Party prior to the date of ratification of this Agreement by that Party; or
(c) entered into force for a Party prior to the date of entry into force of this Agreement.
Section F. Patents and Undisclosed Test or other Data
Subsection A. General Patents
Article 20.36. Patentable Subject Matter
1. Subject to paragraphs 2 and 3, each Party shall make patents available for any invention, whether a product or process, in all fields of technology, provided that the invention is new, involves an inventive step, and is capable of industrial application. (29)
2. A Party 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 nature or the environment, provided that such exclusion is not made merely because the exploitation is prohibited by its law. A Party may also exclude from patentability:
(a) diagnostic, therapeutic, and surgical methods for the treatment of humans or animals;
(b) animals other than microorganisms, and essentially biological processes for the production of plants or animals, other than non-biological and microbiological processes.
3. A Party may also exclude from patentability plants other than microorganisms. However, consistent with paragraph 1 and subject to paragraph 2, each Party confirms that patents are available at least for inventions that are derived from plants.
Article 20.37. Grace Period
Each Party shall disregard at least information contained in public disclosures used to determine if an invention is novel or has an inventive step, if the public disclosure: (30)
(a) was made by the patent applicant or by a person that obtained the information directly or indirectly from the patent applicant; and
(b) occurred within twelve months prior to the filing date in the territory of the Party.
Article 20.38. Patent Revocation
1. Each Party shall provide that a patent may be cancelled, revoked, or nullified only on grounds that would have justified a refusal to grant the patent. A Party may also provide that fraud, misrepresentation, or inequitable conduct may be the basis for cancelling, revoking, or nullifying a patent or holding a patent unenforceable.
2. Notwithstanding paragraph 1, a Party may provide that a patent may be revoked, provided it is done in a manner consistent with Article 5A of the Paris Convention and the TRIPS Agreement.
Article 20.39. Exceptions
A Party may provide limited exceptions to the exclusive rights conferred by a patent, provided that those 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 20.40. Other Use without Authorization of the Right Holder
The Parties understand that nothing in this Chapter limits a Party's rights and obligations under Article 31 of the TRIPS Agreement, and any waiver of or amendment to that Article that the Parties accept.
Article 20.41. Amendments, Corrections, and Observations
Each Party shall provide a patent applicant with at least one opportunity to make amendments, corrections, and observations in connection with its application. (31)
Article 20.42. Publication of Patent Applications
1. Recognizing the benefits of transparency in the patent system, each Party shall endeavor to publish unpublished pending patent applications promptly after the expiration of 18 months from the filing date or, if priority is claimed, from the earliest priority date.
2. If a pending application is not published promptly in accordance with paragraph 1, a Party shall publish that application or the corresponding patent, as soon as practicable.
3. Each Party shall provide that an applicant may request the early publication of an application prior to the expiration of the period referred to in paragraph 1.
Article 20.43. Information Relating to Published Patent Applications and Granted Patents
For published patent applications and granted patents, and in accordance with the Party’s requirements for prosecution of those applications and patents, each Party shall make available to the public at least the following information, to the extent that this information is in the possession of the competent authorities and is generated on, or after, the date of the entry into force of this Agreement:
(a) search and examination results, including details of, or information related to, relevant prior art searches;
(b) as appropriate, non-confidential communications from applicants; and
(c) patent and non-patent related literature citations submitted by applicants and relevant third parties.
Article 20.44. Patent Term Adjustment for Unreasonable Granting Authority Delays
1. Each Party shall make best efforts to process patent applications in an efficient and timely manner, with a view to avoiding unreasonable or unnecessary delays.
2. A Party may provide procedures for a patent applicant to request to expedite the examination of its patent application.
3. If there are unreasonable delays in a Party's issuance of a patent, that Party shall provide the means to, and at the request of the patent owner shall, adjust the term of the patent to compensate for those delays.