When a Party, in the context of bilateral negotiations with a third country, proposes to protect a geographical indication of that third country which is wholly or partially homonymous with a geographical indication of the other Party listed in Annex 17 (Lists of geographical indications), it shall inform the other Party thereof and give it an opportunity to comment before the third country's geographical indication becomes protected.
Without prejudice to Article 23(3) of the TRIPS Agreement, the Parties shall mutually decide the practical conditions of use under which wholly or partially homonymous geographical indications listed in Annex 17 (Lists of geographical indications) 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.
A Party may only cancel the protection of a geographical indication of the other Party listed in Annex 17 (Lists of geographical indications) if that geographical indication has been cancelled, or its protection revoked or otherwise ceased, in the Party of origin.
A product specification referred to in this Sub-Section shall be the specification approved, including any amendments also approved, by the authorities of the Party in the territory from which the product originates.
Exceptions
Nothing in this Sub-Section shall oblige a Party to protect a geographical indication of the other Party listed in Annex 17 (Lists of geographical indications) which is not, or ceases to be protected, or has fallen into disuse in the territory of origin. Each Party shall promptly notify the other Party if a geographical indication listed in Annex 17 (Lists of geographical indications) ceases to be protected in the territory of that Party and request cancellation of protection for that geographical indication in accordance with Article 17.69 (Committee on Investment, Services, Digital Trade, Government Procurement and Intellectual Property Rights, including Geographical Indications).
Nothing in this Sub-Section shall prejudice the right of any person to use, in the course of trade, that person's name, address, or the name of that person's predecessor in business, except where such name is used in relation to a geographical indication of the other Party listed in Annex 17 (Lists of geographical indications) in such a manner to mislead the public.
Nothing in this Sub-Section shall prevent the use in the territory of a Party, with respect to
any good, of a customary name of a plant variety, or an animal breed, existing in the territory of that Party, including where such names are individual components of a multi-component term that is protected as a geographical indication of the other Party listed in Annex 17 (Lists of geographical indications).
Nothing in this Sub-Section shall require a Party to apply the provisions of this Sub-Section in respect of any word, or translation or transliteration of any word, contained in a geographical indication of the other Party where that word, translation or transliteration is a common English word such as "mountain", "alps" or " river".
Nothing in this Sub-Section shall require a Party to apply the provisions of this Sub-Section in respect of an individual component of a multi-component term that is protected as a geographical indication of the other Party listed in Annex 17 (Lists of geographical indications) which is identical with the term customary in common language as the common name for the associated good in the territory of that Party.
If a translation or a transliteration of a geographical indication of the other Party listed in Annex 17 (Lists of geographical indications) is identical with or contains within it a term customary in common language as the common name for a good in the territory of a Party, this Sub-Section shall not prejudice the right of any person to use that term in association with that good in the territory of that Party.
Goods which, either at the date of entry into force of this Agreement, the date of any amendment to the list of geographical indications under Article 17.40 (Amendment of the list of geographical indications), or at the end of any relevant transitional periods provided for in Annex 17 (Lists of geographical indications), have been legally described and presented in a manner prohibited by this Agreement, may be marketed under the following conditions:
for wholesale, for a period of five years; and
for retail, until stocks are exhausted.
Use of geographical indications
Any person is eligible to use a geographical indication listed in Annex 17 (Lists of geographical indications) where their product conforms to the corresponding specification.
Once a geographical indication listed in Annex 17 (Lists of geographical indications) is protected under this Agreement, the use of such protected name shall not be subject to any registration of users or further charges.
Relationship to trademarks
The registration of a trademark which is identical or similar to a geographical indication of the other Party listed in Annex 17 (Lists of geographical indications) with respect to the associated good of that geographical indication and where that good does not meet the applicable product specification for that geographical indication, shall be refused or invalidated, ex officio or at the request of an interested party if a Party's laws or regulations so permits, provided that the application to register the trademark is submitted after the date of submission of the application for protection of the geographical indication in the territory of the Party concerned.
For geographical indications listed in Annex 17 (Lists of geographical indications) at the date of entry into force of this Agreement, the date of submission of the application for protection referred to in paragraph 1 shall be the date of entry into force of this Agreement.
For geographical indications added to the list in Annex 17 (Lists of geographical indications), as referred to in Article 17.40 (Amendment of the list of geographical indications), the date of submission of the application for protection referred to in paragraph 1 shall be the date on which the competent authority of a Party receives from the other Party a request to protect a geographical indication under this Agreement.
If a trademark has been applied for or registered in good faith, or if rights to a trademark have been acquired through use in good faith, in a Party before the date of submission of the application for protection of a geographical indication listed in Annex 17 (Lists of geographical indications),
measures adopted to implement this Sub-Section in that Party shall not prejudice the eligibility for or the validity of the registration of the trademark, or the right to use the trademark, on the basis that the trademark is identical or similar to a geographical indication. Such trademark may continue to be used and renewed, notwithstanding the protection of the geographical indication, provided that no grounds for the trademark's invalidity or revocation exist in the Party's law.
As regards geographical indications listed in Annex 17 (Lists of geographical indications) on the date of entry into force of this Agreement, an interested person may, in support of its claim that a trademark was applied for in bad faith, provide information to Australia's competent authorities that:
the trademark was applied for in Australia between the date of publication for objection and the date of entry into force of this Agreement; and
relates to a situation referred to in paragraph 1.
The competent authority shall consider such information, if admissible as evidence, with regard to the circumstances referred to in Article 17.31 (Bad faith applications).
Enforcement of protection
Each Party shall provide for enforcement of the protection of geographical indications listed in Annex 17 (Lists of geographical indications), ex officio or on request of an interested party, in accordance with its laws and regulations by appropriate administrative and judicial steps.
Article ARTICLE 17.46
Exceptions
Each Party may provide limited exceptions to the exclusive rights conferred by a patent in accordance with Article 30 of the TRIPS Agreement, including exceptions permitting acts that would otherwise infringe a patent if such acts are done for experimental purposes relating to the subject matter of a patented invention, as well as acts done for purposes connected with obtaining regulatory approval.
Extension of the period of protection conferred by a patent on medicinal products19
The Parties recognise that medicinal products protected by a patent in the territory of a Party may be subject to an administrative authorisation procedure before being put on that Party's market.
Each Party shall provide for a further period of protection, in accordance with its laws and regulations, for a medicinal product which is protected by a patent and which has been subject to an administrative authorisation procedure referred to in paragraph 1 to compensate the holder of a patent for a reduction of effective patent protection. The terms and conditions for the provision of such further protection, including its length, shall be determined in accordance with the laws and regulations of the Parties.
SUB-SECTION 6
PROTECTION OF UNDISCLOSED INFORMATION
Article ARTICLE 17.48
19 For Australia, a reference in this Article to medicinal product means pharmaceutical substance as provided for in its relevant law.
Scope of protection of trade secrets and definitions
Each Party shall provide for civil judicial procedures and remedies for any trade secret holder to prevent, and obtain redress for, the acquisition, use or disclosure of a trade secret in a manner contrary to honest commercial practices.
For the purposes of this Sub-Section, the following definitions apply:
"trade secret" means information that:
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;
has commercial value because it is secret; and
has been subject to reasonable steps under the circumstances, by the person lawfully in control of the information, to keep it secret; and
"trade secret holder" means any person lawfully controlling a trade secret.
For the purposes of this Sub-Section, at least the following conducts shall be considered contrary to honest commercial practices:
the acquisition of a trade secret without the consent of the trade secret holder, carried out by unauthorised access to, or by appropriation of or copying of any objects, documents, materials, substances or electronic files that are lawfully under the control of the trade secret holder and that contain the trade secret or from which the trade secret can be deduced;
the use or disclosure of a trade secret without the consent of the trade secret holder, by a person who is found to be in breach of a duty to limit the use of the trade secret or of a duty not to disclose the trade secret; or
acquisition, use or disclosure by a person who knew or ought, under the circumstances, to
have known20 that the trade secret had been obtained from another person who was using or disclosing the trade secret unlawfully.
Civil judicial procedures and remedies as regards trade secrets
Each Party shall ensure that its judicial authorities have the authority to order that any person participating in or having access to documentation, evidence or hearings of civil judicial proceedings referred to in Article 17.48(1) (Scope of protection of trade secrets and definitions) is not permitted to use or disclose, for a purpose other than the conduct of the proceedings, any trade secret, or alleged trade secret, which that person has become aware of as a result of such participation or access.
In the proceedings referred in Article 17.48(1) (Scope of protection of trade secrets and definitions), each Party shall provide that its judicial authorities have the authority, in accordance with the law of that Party, at least to:
order provisional measures or injunctive relief to prevent the acquisition, use or disclosure of the trade secret in a manner contrary to honest commercial practices;
order the person whose conduct was considered contrary to honest commercial practices to pay the trade secret holder damages;
take specific measures to preserve the confidentiality of any trade secret or alleged trade secret produced in such proceedings. Such specific measures may include the possibility of restricting access to certain documents and hearings, and of making available a non-confidential version of judicial decision in which the passages containing trade secrets have been removed or redacted; and
20 For the purposes of this Article, a Party may interpret "ought to have known" as "was grossly negligent in failing to know".
impose sanctions on persons for violation of judicial orders concerning the protection of a trade secret or alleged trade secret produced in such proceedings.
Each Party may provide in its law circumstances in which the conduct contrary to honest commercial practices is exempted from liability, such as if such conduct is carried out to reveal misconduct, wrongdoing or illegal activity or for the purpose of protecting a legitimate interest recognised by the law of a Party.
Protection of data submitted to obtain an authorisation to put a medicinal product21 on the market
Subject to any conditions set out in the laws and regulations of a Party, each Party shall ensure that for a period of at least five years from the date of a first marketing authorisation in the Party concerned (hereinafter referred to as "first marketing authorisation"), a medicinal product subsequently authorised on the basis of test or other data as defined or protected in its laws and regulations, submitted in the application for the first marketing authorisation shall not be placed on the market without the consent of the holder of the first marketing authorisation.22
Each Party shall protect, in accordance with paragraph 1, test or other data referred to in paragraph 1 against disclosure, except where it is necessary to protect the public or unless steps are taken to ensure that the test or other data are protected against unfair commercial use.
21 For Australia, a reference in this Article to medicinal product means therapeutic good as provided for in its relevant law.
22 For greater certainty, on the date of entry into force of this Agreement, Australia meets this obligation through section 25A of the Therapeutic Goods Act 1989 (Cth).
Protection of test data or other data submitted to obtain marketing authorisation for plant protection products23
Subject to any conditions set out in the law of a Party, if a Party requires, as a condition for granting marketing authorisation for a plant protection product, the submission of test data or other data as defined or protected in its laws and regulations, that Party shall not grant the marketing authorisation for another product on the basis of such test or other data without the consent of the person that previously submitted such test or other data. The period of protection shall be for at least 10 years from the date of marketing authorisation of the plant protection product, subject to any conditions set out in the law of a Party.
The test data or other data referred to in paragraph 1 should fulfil the following conditions to the extent required by the law of a Party:
be necessary for the marketing authorisation or for an amendment of an authorisation in order to allow the use on other crops; and
be certified as compliant with principles of good laboratory practice or of good experimental practice.
Each Party shall endeavour to avoid duplicative testing on vertebrate animals.
Article ARTICLE 17.52
New varieties of plants
23 For Australia, a reference in this Article to plant protection product means agricultural chemical product as provided for in its relevant law.
Each Party shall provide for the protection of new varieties of all plant genera and species in accordance with its rights and obligations under the International Convention for the Protection of New Varieties of Plants (UPOV), adopted in Paris on 2 December 1961, as revised at Geneva
on 19 March 1991.
SECTION C
ENFORCEMENT OF INTELLECTUAL PROPERTY RIGHTS
Article ARTICLE 17.53
General obligations
The Parties reaffirm their commitments under the TRIPS Agreement and in particular under its Part III, and shall provide for the following complementary measures, procedures and remedies regarding the enforcement of intellectual property rights.24
Each Party shall ensure that enforcement procedures as specified in this Section are available under its law so as to permit effective action against any act of infringement of intellectual property rights covered by this Chapter, including expeditious remedies to prevent infringements and remedies that constitute a deterrent to future infringements. Those procedures shall be proportionate and 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.25
For the purposes of this Section, each Party shall ensure that its procedures concerning the enforcement of intellectual property rights are fair and equitable. Those procedures shall not be
24 For the purposes of this Section, trade secrets (covered by Article 17.49 (Civil judicial procedures and remedies as regards trade secrets) are excluded from the definition of "intellectual property rights".
25 For greater certainty, Article 48(1) of the TRIPS Agreement applies, mutatis mutandis, to enforcement procedures covered by this Section.
unnecessarily complicated or costly, or entail unreasonable time-limits or unwarranted delays.
This Section 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 each Party to enforce its law in general; or
with respect to the distribution of resources between the enforcement of intellectual property rights and the enforcement of law in general.
In implementing this Section in its intellectual property system, each Party shall take into account the need for proportionality between the seriousness of the infringement of the intellectual property right and the applicable remedies and penalties, as well as, where applicable, if provided by the law of the Party, the interests of third parties.
Persons entitled to apply for measures, procedures and remedies
Each Party shall recognise as persons entitled to seek application of the measures, procedures and remedies referred to in this Section and in Sections 1 to 4 of Part III of the TRIPS Agreement:
the holders of intellectual property rights in accordance with the law of the Party;
persons authorised to use those rights, in particular exclusive licensees, in so far as permitted by and in accordance with the law of the Party; and
federations and associations,26 to the extent permitted by and in accordance with the law of the Party.
26 The phrase "federations and associations" includes collective rights-management bodies and, in the Union context, professional defence bodies which are regularly recognised as having a right to represent holders of intellectual property rights.
SUB-SECTION 1
CIVIL AND ADMINISTRATIVE ENFORCEMENT
Article ARTICLE 17.55
Measures to preserve evidence
Each Party shall ensure that, even before the commencement of proceedings on the merits of the case, its judicial authorities have the authority to order, on application by a party who has presented reasonably available evidence sufficient to support their claims that their intellectual property right has been infringed or is about to be infringed, and subject to appropriate safeguards, prompt and effective provisional measures to preserve relevant evidence in regard to the alleged infringement, subject to the protection of confidential information.
The measures to preserve evidence referred to in paragraph 1 may include, in appropriate cases, the detailed description, or the physical seizure, or other taking into custody in accordance with the law of the Party, of the alleged infringing goods, the materials and implements used in the production or distribution of these goods and the documentary evidence, relevant to the alleged infringement.
In the case of an alleged infringement of an intellectual property right committed on a commercial scale or in other cases subject to the law of a Party, each Party shall ensure that its judicial authorities have the authority to order, where appropriate, the communication of banking, financial or commercial documents under the control of the alleged infringer, subject to the protection of confidential information.
Each Party shall ensure that its judicial authorities have the authority to adopt provisional measures to preserve relevant evidence in respect of the alleged infringement of an intellectual property right without the defendant having been heard, where appropriate, in particular if any delay is likely to cause irreparable harm to the right holder, or if there is a demonstrable risk of evidence being destroyed.
Each Party shall ensure that its judicial authorities have the authority to require the applicant, with respect to measures to preserve evidence, to provide a security or equivalent assurance sufficient to protect the defendant and to prevent abuse.
If the measures to preserve evidence are revoked or if 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 those measures.
Right of information
Without prejudice to its law governing privilege, the protection of confidentiality of information sources or the processing of personal data, each Party shall ensure that, in civil judicial proceedings concerning the enforcement of an intellectual property right, its judicial authorities have the authority, upon a justified request of the right holder, to order the infringer or the alleged infringer, to provide to the right holder or to the judicial authorities, at least for the purpose of collecting evidence, relevant information as provided for in the law of that Party, that the infringer or alleged infringer possesses or controls.
The information referred to in paragraph 1 may include information regarding any person involved in any aspect of the infringement or alleged infringement and regarding the means of production or the channels of distribution of the infringing or allegedly infringing goods or services, including the identification of third persons alleged to be involved in the production and distribution of those goods or services and of their channels of distribution.
Provisional and precautionary measures
Each Party shall ensure that its judicial authorities have the authority to order, at the request of the applicant, prompt and effective provisional measures:
against the alleged infringer or, where appropriate and subject to each Party’s law, a third party,27 over whom the relevant judicial authority exercises jurisdiction and whose services are used to infringe an intellectual property right, to prevent any imminent infringement of an intellectual property right, or to forbid, on a provisional basis, the continuation of the alleged infringement of that right;
including, if appropriate, the seizure or delivery up of goods suspected of infringing an intellectual property right, so as to prevent their entry into or movement within the channels of commerce.
In the case of an alleged infringement committed on a commercial scale or in other cases subject to a Party's law, a Party shall ensure that if the applicant demonstrates circumstances likely to endanger the recovery of damages, its judicial authorities have the authority to order, subject to the law of that Party, the precautionary seizure of the movable and immovable property of the alleged infringer, including the blocking of the alleged infringer's bank accounts and other assets. To that end, the judicial authorities have the authority to order, where appropriate, the communication of bank, financial or commercial documents, or appropriate access to the relevant information.
Each Party shall ensure that its judicial authorities have the authority to adopt provisional measures referred to in paragraph 1 and 2 without the defendant having been heard, where appropriate, in particular if any delay is likely to cause irreparable harm to the right holder, or if there is a demonstrable risk of evidence being destroyed.
Each Party shall ensure that its judicial authorities have the authority to require the applicant, with respect to provisional measures referred to in paragraphs 1 and 2, to provide any reasonably available evidence in order to satisfy themselves with a sufficient degree of certainty that the applicant's right is being infringed or that such infringement is imminent, and order the applicant to provide a security or equivalent assurance sufficient to protect the defendant and to prevent abuse.
27 For the purposes of this Article, a Party may provide that a "third party" includes an intermediary.
If the provisional measures are revoked or if they lapse due to any act or omission by the applicant, or if 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 those measures.
Remedies
Each Party shall ensure that its judicial authorities have the authority to order, at the request of the applicant and without prejudice to any damages due to the right holder by reason of the infringement, and without compensation of any sort, the destruction, or at least the definitive removal from the channels of commerce, of goods that they have found to be infringing an intellectual property right.28 If appropriate, a Party's judicial authorities may also order destruction of materials and implements predominantly used in the creation or manufacture of such goods.
Each Party shall ensure that its judicial authorities have the authority to order that the measures specified in paragraph 1 are carried out at the expense of the infringer, unless particular reasons are invoked for not doing so.
Injunctions
Each Party shall ensure that, its judicial authorities have the authority to issue against an infringer of an intellectual property right, as well as, where appropriate and subject to the Party's law, against a
28 In regard to counterfeit trademark goods, the simple removal of the trademark unlawfully affixed is not sufficient, other than in exceptional circumstances, to permit the release of goods into the channels of commerce.
third party29 over whom the relevant judicial authority exercises jurisdiction and whose services are used to infringe an intellectual property right, an injunction aimed at prohibiting or stopping the infringement.30
Alternative measures
Each Party may provide that the judicial authorities, in appropriate cases and at the request of the person liable to be subject to the measures provided for in Article 17.58 (Remedies) or Article 17.59 (Injunctions), may order pecuniary compensation to be paid to the injured party instead of applying the measures provided for in those Articles, in accordance with each Party's law.
Damages
Each Party shall ensure that its judicial authorities have the authority to order the infringer, who knowingly or with reasonable grounds to know, engaged in infringing activity, to pay the right holder damages adequate to compensate for the injury the right holder has suffered as a result of the infringement.
In determining the amount of damages for infringements of intellectual property rights, each Party shall ensure its judicial authorities have the authority to take into account all appropriate aspects for the calculation, both economic and other factors subject to each Party's laws, such as the moral prejudice caused to the right holder, or lost profits suffered by the injured party. A Party may provide in its law presumptions for determining the amount of damages.
29 For the purposes of this Article, a Party may provide that a "third party" includes an intermediary.
30 This Section is without prejudice to Article 44(2) of the TRIPS Agreement.
Where the infringer did not knowingly, or with reasonable grounds to know, engage in infringing activity, a Party may provide that the judicial authorities may order in favour of the injured party the recovery of profits or the payment of damages, which may be pre-established.
Legal costs
Each Party shall ensure that its judicial authorities have the authority to order, at the conclusion of civil judicial proceedings concerning infringement of intellectual property rights, that the successful party be awarded payment by the unsuccessful party of legal costs and other expenses, which may include appropriate attorney's fees, as provided for under its law.
Publication of judicial decisions
In civil judicial proceedings instituted for infringement of an intellectual property right, each Party shall take appropriate measures, in accordance with its law, to publish or make available to the public information on final judicial decisions. Each Party may provide for other additional publicity measures which are appropriate to the particular circumstances, including prominent advertising of such decisions.
Presumption of authorship or ownership
In civil proceedings involving copyright or related rights, each Party shall provide for a presumption that, in the absence of proof to the contrary, the person whose name is indicated as the author or related right holder of the work or subject matter in the usual manner is the designated right holder of such work or subject matter, and consequently entitled to institute infringements proceedings.