3. Each Party shall provide a publicly available electronic database of applications and registrations of trademarks.
ARTICLE 13.23
Rights conferred by a trademark
A registered trademark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having the proprietor's consent from using in the course of trade:
(a) any sign which is identical to the trademark in relation to goods or services which are identical to those for which the trademark is registered; and
(b) any sign which is identical to, or similar to, the trademark and is used in relation to goods or services which are identical to, or similar to, the goods or services for which the trademark is registered, if there exists a likelihood of confusion on the part of the public, which includes the likelihood of association between the sign and the trademark.
ARTICLE 13.24
Well-known trademarks
1. Article 6bis of the Paris Convention shall apply, mutatis mutandis, to services. In determining whether a trademark is well-known, each Party shall take account of the knowledge of the trademark in the relevant sector of the public, including knowledge in the Party concerned which has been obtained as a result of the promotion of the trademark.
2. Article 6bis of the Paris Convention 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.
3. For the purpose of giving effect to protection of well-known trademarks, as referred to in Article 6bis of the Paris Convention and paragraphs 2 and 3 of Article 16 of the TRIPS Agreement, each Party shall take into due consideration the principles established in the Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks adopted by the Assembly of the Paris Union for the Protection of Industrial Property and the General Assembly of the WIPO at the Thirty-Fourth Series of Meetings of the Assemblies of the Member States of WIPO on 20 to 29 September 1999.
ARTICLE 13.25
Bad faith applications
Each Party shall provide that a trademark may be declared invalid if the application for the registration thereof was made in bad faith by the applicant. Each Party may also provide that such a trademark shall not be registered.
ARTICLE 13.26
Exceptions to the rights conferred by a trademark
1. Each Party shall provide for limited exceptions to the rights conferred by a trademark such as the fair use of descriptive terms including in the case of geographical indications, and may provide other limited exceptions if such exceptions take account of the legitimate interests of the owner of the trademark and of third parties.
2. The trademark shall not entitle the owner to prohibit a third party from using the following when used in accordance with honest practices in industrial and commercial matters:
(a) his or her own name or address if that third party is a natural person;
(b) indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of the service, or other characteristics of goods or services; or
(c) the trademark, if it is necessary to indicate the intended purpose of a product or service, in particular as accessories or spare parts.
SUB-SECTION 3
DESIGNS
ARTICLE 13.27
International agreements
Each Party shall make best efforts to accede to the Geneva (1999) Act of the Hague Agreement Concerning the International Registration of Industrial Designs, done at Geneva on 2 July 1999.
ARTICLE 13.28
Protection of registered designs
1. Each Party shall provide for the protection of independently created designs that are new and original 65 66 . This protection shall be provided by registration and shall confer an exclusive right upon their holders in accordance with this Sub-Section.
2. The holder of a registered design shall have the right to prevent third parties not having the holder's consent from making, offering for sale, selling, putting on the market, importing, exporting, stocking such a product or using articles bearing or embodying the protected design if such acts are undertaken for commercial purposes.
ARTICLE 13.29
Term of protection
The duration of protection available, including renewals, shall amount to at least 15 (fifteen) years from the date of filing the application.
ARTICLE 13.30
Protection of unregistered designs
Each Party may establish legal means to prevent the use of unregistered designs.
ARTICLE 13.31
Exceptions and exclusions
1. Each Party may establish limited exceptions to the protection of designs, provided that such exceptions do not unreasonably conflict with the normal exploitation of protected designs and do not unreasonably prejudice the legitimate interests of the holder of the protected design, taking account of the legitimate interests of third parties.
2. The protection of designs shall not extend to designs dictated essentially by technical or functional considerations.
ARTICLE 13.32
Relation to copyright
Each Party shall, to the extent that it is provided for in its laws and regulations, ensure that a design shall also be eligible for protection under its law of copyright as from the date on which the design was created or fixed in any form. Each Party shall determine the extent and conditions of such protection, including the level of originality required.
SUB-SECTION 4
GEOGRAPHICAL INDICATIONS
ARTICLE 13.33
Protection of geographical indications
1. This Sub-Section applies to the recognition and protection of geographical indications originating in the territory of the Parties.
2. The Parties shall take the necessary measures to implement the protection of geographical indications referred to in paragraph 1 in their territories, determining the appropriate method for such implementation within their own legal system and practice.
3. Geographical indications of a Party shall only be subject to this Article if they are protected as geographical indications in the territory of the Party of origin under its system of registration and protection of geographical indications.
4. Each Party, having examined the legislation of the other Party in Annex 13-A and the geographical indications in Annex 13-B, and having completed an objection procedure or public consultation related to the geographical indications in Annex 13-B, undertake to protect since the date of entry into force of this Agreement those geographical indications in accordance with the level of protection laid down in this Sub-Section including the specific level of protection, notably as set out in Article 13.35(8) and Appendix 13-B-1.
5. Each Party may protect geographical indications for products other than agricultural foodstuffs, wines, spirit drinks or aromatised wines in its laws and regulations. The Parties acknowledge that geographical indications listed in Annex 13-D are protected as geographical indications in the country of origin.
ARTICLE 13.34
Addition of new geographical indications
By request of a Party, and once completed the steps described in Article 13.33(4), the Subcommittee on intellectual property rights referred to under Article 13.59 may recommend to the Trade Council to adopt a decision, pursuant to point (f) of Article 22.1(6) to add new geographical indications to Annex 13-B, including in order to transfer the geographical indications listed in Annex 13-C to Annex 13-B.
ARTICLE 13.35
Scope of protection of geographical indications
1. Each Party shall provide, according to its laws and regulations, the legal means for interested parties to prevent:
(a) the use of a geographical indication of the other Party listed in Parts 1 and 2 of Annex 13-B for any product that falls within the relevant product class, as specified in Section 3 of Annex 13-B and that either:
(i) does not originate in the country of origin specified in Annex 13-B for that geographical indication; or
(ii) originates in the country of origin specified in Annex 13-B for that geographical indication but was not produced or manufactured in accordance with the laws and regulations of the other Party that would apply if the product was for consumption in the other Party;
(b) 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;
(c) any other use which constitutes an act of unfair competition within the meaning of Article 10bis of the Paris Convention;
(d) any direct or indirect commercial use of a protected name for comparable products not complying with the product specification of the protected name, or that exploits the reputation of a geographical indication;
(e) the use of a geographical indication not originating in the place indicated by the geographical indication, even if 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; and
(f) any misuse, imitation or deceiving use of a protected name of a geographical indication; or any false or misleading indication of a protected name of a geographical indication; or any practice liable to mislead the consumer as to the true origin, provenance and nature of the product.
2. Regarding the relationship between trademarks and geographical indications:
(a) if a geographical indication is protected under this Sub-Section, each Party shall refuse the registration of a trademark for the same or a similar product the use of which would contravene this Sub-Section, provided that an application for registration of the trademark was submitted after the date of application for protection of the geographical indication on the territory concerned; trademarks registered in breach of this paragraph shall be invalidated in accordance with the law of the Parties;
(b) for geographical indications listed in Annex 13-B at the date of entry into force of this Agreement, the date of submission of the application for protection referred to in point (a) shall be the date of the publication of the opposition procedure or public consultation in the respective territories;
(c) for geographical indications referred to in Article 13.34, the date of submission of the application for protection shall be the date of the transmission of a request to another Party to protect a geographical indication;
(d) without prejudice to point (e), each Party shall protect the geographical indications referred to in Annex 13-B also if a prior trademark exists; a prior trademark shall mean a trademark which has been applied for, registered or established by use, if that possibility is provided for by the laws and regulations of the Party concerned, in good faith in the territory of one Party before the date of application for protection of the geographical indication, as referred to in paragraph 1 is submitted by the other Party under this Agreement;
such prior trademark may continue to be used, renewed and be subject to variations which may require the filing of new trademark applications, notwithstanding the protection of the geographical indication, provided that no grounds for the trademark's invalidity or revocation exist in the trademark law under which the trademark has been registered or established;
neither the prior trademark nor the geographical indication shall be used in a way that would mislead the consumer as to the nature of the intellectual property right concerned; and
(e) a Party shall not be obliged to protect a geographical indication in light of a famous, reputed or well-known trademark, if the protection is liable to mislead the consumer as to the true identity of the product.
3. Nothing in this Sub-Section shall prevent the use by a Party, with respect to any product, of a customary name of a plant variety or an animal breed, existing in the territory of that Party 67 .
4. Nothing in this Sub-Section shall prevent the use by a Party of an individual component of a multi-component term that is protected as a geographical indication in the territory of that Party if such individual component is a term customary in the common language as the common name for the associated good 68 .
5 Nothing in this Sub-Section shall require a Party to protect a geographical indication which is identical to the term customary in common language as the common name for the associated good in the territory of that Party.
6. If a translation of a geographical indication is identical with or contains within it a term customary in common language as the common name for a product in the territory of a Party, or if a geographical indication is not identical with but contains within it such a term, this Sub-Section shall not prejudice the right of any person to use that term in association with that product.
7. With regard to homonymous geographical indications:
(a) in the case of existing or future homonymous geographical indications of the Parties for products falling within the same product category 69 , both shall coexist per se, and each Party shall determine the practical conditions under which the homonymous indications in question shall be differentiated from each other, taking into account the need to ensure equitable treatment of the producers concerned and that consumers are not misled; and
(b) if a Party, in the context of negotiations with a third country proposes to protect a geographical indication from that third country, and the name is homonymous with a geographical indication of the other Party, the latter shall be informed and be given the opportunity to comment before the name is protected.
8. Without prejudice to Articles 13.35(1) to 13.35(7), a specific level of protection is defined for the following cases of geographical indications listed in Annex 13-B 70 :
(a) "Genièvre", "Jenever" or "Genever": the protection of the geographical indication "Genièvre", "Jenever" or "Genever" shall not prevent prior users of the term "Ginebra" in the territory of Argentina that have used the term in good faith and in a continuous manner for at least 5 (five) years prior to the publication for opposition of the geographical indication "Genièvre", "Jenever" or "Genever" in Argentina, and prior users of the term "Genebra" in the territory of Brazil that have used the term in good faith and in a continuous manner prior to the publication for opposition of the geographical indication "Genièvre", "Jenever" or "Genever" in Brazil, to continue using the term, provided these products are not commercialised using graphics, names, pictures or flags as references to the genuine origin of the geographical indication and provided the term is displayed in a font character substantially smaller, while readable, than the brand name and is differentiated from it in a non-ambiguous manner as regards to the origin of the product;
(b) "Queso Manchego": the protection of the geographical indication "Queso Manchego" for cheeses elaborated in Spain in accordance with the applicable technical specifications, using sheep's milk, shall not prevent prior users of the term "Queso Manchego" in the territory of Uruguay that have used the term in good faith and in a continuous manner for at least 5 (five) years prior to the publication for opposition of the geographical indication "Queso Manchego", if related to cheeses elaborated with cow's milk, to continue using this term provided these products are not commercialised using graphics, names, pictures or flags as references to the protected European geographical indication and provided the term is displayed in a font character substantially smaller, while readable, than the brand name, and is differentiated from it in a non-ambiguous manner as regards the origin and the composition of the product;
(c) "Grappa": the protection of the geographical indication "Grappa" shall not prevent prior users of the term "Grappamiel" or "Grapamiel" in the territory of Uruguay that have used the term in good faith and in a continuous manner prior to the publication for opposition of the geographical indication "Grappa" to continue using this term, provided these products are not commercialised using graphics, names, pictures or flags as references to the protected European geographical indication and provided the term is displayed in a font character substantially smaller, while readable, than the brand name and is differentiated from it in a non-ambiguous manner as regards the origin of the product;
(d) "Steinhäger": the protection of the geographical indication "Steinhäger" shall not prevent prior users of the term "Steinhäger" in the territory of Brazil that have used the term in good faith and in a continuous manner prior to the publication for opposition of the geographical indication "Steinhäger" to continue using this term, provided these products are not commercialised using graphics, names, pictures or flags as references to the protected European geographical indication and provided the term is displayed in a font character substantially smaller, while readable, than the brand name and is differentiated from it in a non-ambiguous manner as regards the origin of the product;
(e) "Parmigiano Reggiano":
(i) the protection of the geographical indication "Parmigiano Reggiano" shall not prevent prior users of the term "Parmesão" in the territory of Brazil and of the term "Parmesano" in the territories of Argentina, Paraguay and Uruguay that have used these terms in good faith and in a continuous manner prior to the publication for opposition of the geographical indication "Parmigiano Reggiano" to continue using these terms, provided these products are not commercialised using graphics, names, pictures or flags as references to the protected European geographical indication and provided the term is displayed in a font character substantially smaller, while readable, than the brand name and is differentiated from it in a non-ambiguous manner as regards the origin of the product;
(ii) the protection of the geographical indication "Parmigiano Reggiano" shall not prevent prior users of the term "Reggianito" in the territory of Argentina that have used this term in good faith and in a continuous manner prior to the publication for opposition of the geographical indication "Parmigiano Reggiano", and in the territories of Paraguay and Uruguay that have used this term in good faith and in a continuous manner for at least 5 (five) years prior to the publication for opposition of the geographical indication "Parmigiano Reggiano", to continue using this term, provided these products are not commercialised using graphics, names, pictures or flags as references to the protected European geographical indication and provided the term is displayed in a font character substantially smaller, while readable, than the brand name and is differentiated from it in a non-ambiguous manner as regards the origin of the product;
(f) "Fontina": the protection of the geographical indication "Fontina" shall not prevent prior users of the term "Fontina" in the territories of Argentina, Brazil, Paraguay and Uruguay that have used the term in good faith and in a continuous manner for at least 5 (five) years prior to the publication for opposition of the geographical indication "Fontina", to continue using this term, provided these products are not commercialised using graphics, names, pictures or flags as references to the protected European geographical indication and provided the term is displayed in a font character substantially smaller, while readable, than the brand name and is differentiated from it in a non-ambiguous manner as regards the origin of the product;
(g) "Gruyère" (France):
(i) the protection of the geographical indication "Gruyère" (France) shall not prevent prior users of the terms "Gruyère" and "Gruyere" in the territories of Argentina, Brazil, Paraguay and Uruguay that have used the term in good faith and in a continuous manner for at least 5 (five) years prior to the publication for opposition of the geographical indication "Gruyère" (France), to continue using this term, provided these products are not commercialised using graphics, names, pictures or flags as references to the protected European geographical indication and provided the term is displayed in a font character substantially smaller, while readable, than the brand name and is differentiated from it in a non-ambiguous manner as regards the origin of the product;
(ii) the protection of the geographical indication "Gruyère" (France) shall not prevent prior users of the terms "Gruyerito" and "Gruyer" in the territory of Uruguay that have used the term in good faith and in a continuous manner for at least 5 (five) years prior to the publication for opposition of the geographical indication "Gruyère" (France) to continue using this term, provided these products are not commercialised using graphics, names, pictures or flags as references to the protected European geographical indication and provided the term is displayed in a font character substantially smaller, while readable, than the brand name and is differentiated from it in a non-ambiguous manner as regards the origin of the product;
(h) "Grana Padano": the protection of the geographical indication "Grana Padano" shall not prevent prior users of the term "Grana" in the territory of Brazil that have used the term in good faith and in a continuous manner for at least 5 (five) years prior to the publication for opposition of the geographical indication "Grana Padano" to continue using this term, provided these products are not commercialised using graphics, names, pictures or flags as references to the protected European geographical indication and provided the term is displayed in a font character substantially smaller, while readable, than the brand name and is differentiated from it in a non-ambiguous manner as regards the origin of the product; and
(i) "Gorgonzola": the protection of the geographical indication "Gorgonzola" shall not prevent prior users of the term "Gorgonzola" in the territory of Brazil that have used the term in good faith prior to the publication for opposition to continue using the term, provided these products are not commercialised using graphics, names, pictures or flags as references to the genuine origin of the geographical indication and provided the term is displayed in a font character substantially smaller, while readable, than the brand name and is differentiated from it in a non-ambiguous manner as regards to the origin of the product.
9. Prior users as referred to in points (a) to (i) of paragraph 8 are listed in Annex 13-E. Succession of prior users and the effects thereof shall be determined by the domestic laws and regulations of each Signatory MERCOSUR State.
10. Protected geographical indications listed in Annex 13-B shall not become generic in the territories of the Parties.
11. Nothing in this Chapter shall create an obligation for the Parties to protect geographical indications which are not or cease to be protected in their place of origin.
12. This Chapter shall not prejudice the right of any person to make commercial use of that person's name or the name of that person's predecessor in business, except if such name is used in such a manner as to mislead the public.
ARTICLE 13.36
Right of use of geographical indications
1. Any operator marketing agricultural products, foodstuffs, wines, aromatised wines or spirit drinks which conform to the corresponding specification may use a geographical indication under this Agreement.
2. Once a geographical indication is protected under this Agreement, the use of such protected name shall not be subject to any registration of users or further charges.
ARTICLE 13.37
Enforcement of protection
Each Party shall provide the legal means for interested parties to seek enforcement of the protection provided for in Article 13.35 via appropriate administrative and judicial action within its own legal system and practice.
ARTICLE 13.38
Import, export and marketing
Import, export and marketing of products carrying the names listed in Annex 13-B shall comply with the laws and regulations applying in the territory of the Party in which the products are placed on the market.
ARTICLE 13.39
Cooperation and transparency on geographical indications
1. The Subcommittee on intellectual property rights, referred to in Article 13.59, shall monitor the proper functioning of this Sub-Section and may consider any matter related to its implementation and operation. It shall be responsible for:
(a) exchanging information on legislative and policy developments on geographical indications and any other matter of mutual interest in the area of geographical indications; and
(b) cooperating on the development of alternative names for products that were once marketed by producers of a Party with terms corresponding to geographical indications of the other Party, especially in cases subject to a phasing-out.
2. The Subcommittee on intellectual property rights may recommend to the Trade Council to amend, pursuant to point (f) of Article 22.1(6):
(a) Annex 13-A as regards the references to the law applicable in the Parties;
(b) Annex 13-B as regards geographical indications and exchanging information for that purpose;
(c) Annex 13-C as regards the geographical indication; and
(d) Annex 13-E as regards prior users.
3. Each Party shall notify the other if a geographical indication listed in Annex 13-B ceases to be protected in its territory. Following such notification, the Trade Council shall amend Annex 13-B in accordance with point (f) of Article 22.1(6) to end the protection under this Agreement. Only the Party in which the product originates is entitled to request the end of the protection under this Sub‑Section of a geographical indication listed in Annex 13-B.
4. MERCOSUR shall notify the European Union if, following the entry into force of this Agreement, it identifies additional prior users that comply with the specific requirements set forth in points (a) to (i) of Article 13.35(8). Following such a notification and provided that the Parties agree that the proposed additional prior users meet the aforementioned requirements, the Trade Council shall amend Annex 13-E pursuant to point (f) of Article 22.1(6) by adding such additional prior users.
5. The Parties shall, either directly or through the Subcommittee on intellectual property rights, remain in contact directly on all matters relating to the implementation and the functioning of this Sub-Section. In particular, a Party may request from the other Party information relating to product specifications and amendments thereto, and contact points for control.
6. A product specification referred to in this Sub-Section shall be the one approved, including any amendments also approved, by the authorities of the Party in the territory from which the product originates.
7. The Parties may make publicly available the product specifications or a summary thereof corresponding to the geographical indications of the other Party protected pursuant to this Sub‑Section, in Portuguese, Spanish or English.
SUB-SECTION 5
PATENTS
ARTICLE 13.40
International treaties
Each Party shall make best efforts to accede to the Patent Cooperation Treaty, done in Washington on 19 June 1970 71 .
SUB-SECTION 6
PLANT VARIETIES
ARTICLE 13.41
International agreements
Each Party shall protect plant varieties rights, in accordance with the International Convention for the Protection of New Varieties of Plants done in Paris on 2 December 1961, as revised in Geneva on 10 November 1972, and on 23 October 1978 (1978 UPOV ACT) or on 19 March 1991 (1991 UPOV ACT), and shall cooperate to promote the protection of plant varieties.
SUB-SECTION 7
PROTECTION OF UNDISCLOSED INFORMATION
ARTICLE 13.42
Scope of protection of trade secrets
1. In fulfilling its obligation under Article 13.1(1) to comply with the TRIPS Agreement, and in particular with paragraphs 1 and 2 of Article 39 of the TRIPS Agreement, each Party shall provide for appropriate 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 whenever carried out in a manner contrary to honest commercial practices.
2. For the purposes of this Sub-Section:
(a) "trade secret" means information that:
(i) 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;
(ii) has commercial value because it is secret; and
(iii) has been subject to reasonable steps under the circumstances, by the person lawfully in control of the information, to keep it secret; and
(b) "trade secret holder" means any natural or legal person lawfully controlling a trade secret.
3. For the purposes of this Sub-Section, a Party shall consider at least the following conducts to be contrary to honest commercial practices:
(a) the acquisition of a trade secret without the consent of the trade secret holder, whenever carried out by unauthorised access to, appropriation of, or copying of any documents, objects, materials, substances or electronic files, lawfully under the control of the trade secret holder, containing the trade secret or from which the trade secret can be deduced;
(b) the use or disclosure of a trade secret whenever carried out without the consent of the trade secret holder by a person who:
(i) acquired the trade secret unlawfully;
(ii) was in breach of a confidentiality agreement or any other duty not to disclose the trade secret; or