Gi) has commercial value because it is secret; and
Gii) has been subject to reasonable steps under the circumstances, by the person lawfully in control of the information, to keep it secret.
(b) âtrade secret holderâ means any natural or legal person lawfully controlling a trade secret.
For the purpose of this subsection, at least the following conducts shall be considered 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 is found to meet any of the following conditions:
@ having acquired the trade secret in a manner referred to in point (a);
Gi) â_ being in breach of a confidentiality agreement or any other duty not to disclose the trade secret; or
Gii) being in breach of a contractual or any other duty to limit the use of the trade secret.
(c) the acquisition, use or disclosure of a trade secret whenever carried out by a person who, at the time of the acquisition, use or disclosure, knew or ought, under the circumstances, to have known that the trade secret had been obtained directly or indirectly from another person who was using or disclosing the trade secret unlawfully within the meaning of point (b).
Nothing in this subsection shall be understood as requiring any Party to consider any of the following conducts as contrary to honest commercial practices:
(a) independent discovery or creation by a person of the relevant information;
(b) reverse engineering of a product by a person who is lawfully in possession of it and who is free from any legally valid duty to limit the acquisition of the relevant information;
(c) acquisition, use or disclosure of information required or allowed by the relevant domestic law;
(d) use by employees of their experience and skills honestly acquired in the normal course of their employment.
Nothing in this subsection shall be understood as restricting freedom of expression and information, including media freedom, as protected in the jurisdiction of each of the Parties.
Article 25.45. Civil Judicial Procedures and Remedies of Trade Secrets
Each party shall ensure that any person participating in the civil judicial proceedings referred to in Article 25.44 (scope of protection of trade secrets) or who has access to documents which form part of those legal proceedings, is not permitted to use or disclose any trade secret or alleged trade secret which the competent judicial authorities have, in response to a duly reasoned application by an interested party, identified as confidential and of which they have become aware as a result of such participation or access.
In the civil judicial proceedings referred to in Article 25.44 (scope of protection of
trade secrets), each Party shall provide that its judicial authorities have the authority at least to:
(a) order provisional measures, as set out in the respective domestic laws and regulations, to prevent the acquisition, use or disclosure of the trade secret in a manner contrary to honest commercial practices;
(b) order injunctive relief to prevent the acquisition, use or disclosure of the trade secret in a manner contrary to honest commercial practices;
(c) order the person that knew or ought to have known that he, she or it was acquiring, using or disclosing a trade secret in a manner contrary to honest commercial practices to pay the trade secret holder damages appropriate to the actual prejudice suffered as a result of such acquisition, use or disclosure of the trade secret;
(d) take specific measures to preserve the confidentiality of any trade secret or alleged trade secret produced in civil proceedings relating to the alleged acquisition, use and disclosure of a trade secret in a manner contrary to honest commercial practices. Such specific measures may include, in accordance with their respective domestic law, the possibility of restricting access to certain documents in whole or in part; of restricting access to hearings and their corresponding records or transcript; and of making available a non-confidential version of judicial decision in which the passages containing trade secrets have been removed or redacted.
(e) impose sanctions on parties, or other persons subject to the courtâs jurisdiction for violation of judicial orders concerning the protection of a trade secret or alleged trade secret produced in that proceedings.
Each Party shall not be required to provide for the judicial procedures and remedies referred to in Article 25.44 (scope of protection of trade secrets) when the conduct contrary to honest commercial practices is carried out, in accordance with their relevant domestic law, to reveal misconduct, wrongdoing or illegal activity or for the purpose of protecting a legitimate interest recognised by law.
Article 25.46. Protection of Undisclosed Data Related to Pharmaceutical Products
1. If a Party requires, as a condition for a marketing approval or sanitary permit of a pharmaceutical product, which utilises a new chemical entity that has not been previously approved, the submission of undisclosed test or other data necessary to determine whether the use of that product is safe and effective, the Party shall protect such data against disclosure to third parties, if the origination of such data involves considerable effort, except where the disclosure is necessary for an overriding public interest or unless steps are taken to ensure that the data are protected against unfair commercial use.
2. Each Party shall ensure that for at least 5 years from the date of a first marketing approval or sanitary permit in the Party concerned, a pharmaceutical product subsequently authorised on the basis of the results of pre-clinical tests and clinical trials submitted in the application for the first marketing authorisation shall not be placed on the market without the explicit consent of the holder of the first marketing authorisation.
3. There shall be no limitation on either Party to implement abbreviated authorisation procedures for such products on the basis of bioequivalence and bioavailability studies. 4. For greater certainty, in implementing the obligations of this Article, each Party may provide for conditions and limitations, provided that the Party continues to give effect to this Article.
Article 25.47. Protection of Data Related to Agrochemical Products
1. If a Party requires, as a condition for granting marketing authorisation for an agrochemical product which utilizes a new chemical entity, the submission of test and study reports concerning the safety and efficacy of the product, that Party shall not grant the authorisation for another product on the basis of that information without the consent of the person that previously submitted such test and study reports for at least ten years from the date of the marketing authorisation of the agrochemical product.
A Party may limit the protection under this Article to tests or study reports that fulfil the following conditions:
(a) be necessary for the authorisation or for an amendment of an authorisation in order to allow the use on other crops; and
(b) be certified as compliant with the principles of good laboratory practice or of good experimental practice.
2. Each Party may establish rules to avoid duplicative testing on vertebrate animals. 3. For greater certainty, in implementing the obligations of this Article, each Party may
provide for conditions and limitations, provided that the Party continues to give effect to this Article.
Sub-Section 7
Plant Varieties
Article 25.48.
The Parties shall protect plant varieties rights, in accordance with the International Convention for the Protection of New Varieties of Plants (UPOV) as lastly revised in Geneva on March 19, 1991, (the so-called "1991 UPOV ACT") including the exceptions to the breeder's right as referred to in Article 15 of the said Convention, and co-operate to promote and enforce these rights.
Section 3. Enforcement of Intellectual Property RightsSub-Section 1
Civil and administrative enforcement
Article 25.49. General Obligations
1. Each Party reaffirm its commitments under the TRIPS Agreement and shall ensure the enforcement of intellectual property rights in accordance with its domestic law and within its own legal system and practice. The Parties shall provide for the following complementary measures, procedures and remedies.
This Section shall not apply to the rights covered by Sub-Section 6 of Section 2.
2. Those measures, procedures and remedies shall be fair and equitable, and shall not be unnecessarily complicated or costly, or entail unreasonable time-limits or unwarranted delays.
Those measures and remedies shall also be effective, proportionate and dissuasive 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.
1. Nothing in this Chapter creates any obligation on either Party:
(a) to put in place a judicial system for the enforcement of intellectual property rights distinct from that for the enforcement of law in general; or
(b) with respect to the distribution of resources as between enforcement of intellectual property rights and the enforcement of law in general.
Article 25.50. Persons Entitled to Apply for the Application of the 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 Part II of the TRIPS Agreement:
(a) the holders of intellectual property rights in accordance with the provisions of each Partyâs law,
(b) all other persons authorised to use those rights, in particular licensees, in so far as permitted by and in accordance with the provisions of each Partyâs law,
(c) intellectual property collective rights management bodies which are regularly
recognised as having a right to represent holders of intellectual property rights, in so far as permitted by and in accordance with the provisions of each Partyâs law,
(d) entitiesâ? which are regularly recognised as having a right to represent holders of intellectual property rights, in so far as permitted by and in accordance with the provisions of the applicable law.
Article 25.51. Evidence
1. Each Party shall provide that, even before the commencement of proceedings on the merits of the case, the competent judicial authorities may, on application by a party who has presented reasonably available evidence to support his claims that his intellectual property right has been infringed or is about to be infringed, order prompt and effective provisional measures to preserve relevant evidence in respect of the alleged infringement, subject to the protection of confidential information as provided under each Partyâs law. In ordering provisional measures, the judicial authorities shall take into account the legitimate interests of the alleged infringer.
2. Such measures may include the detailed description, with or without the taking of samples, or the physical seizure of the alleged infringing goods, and, in appropriate cases, the materials and implements mainly used in the production and/or distribution of these goods and the documents relating thereto.
3. Each Party shall take the measures necessary, in cases of infringement of an intellectual property right committed on a commercial scale, to enable the competent judicial authorities to order, where appropriate, on application by a party, the communication of
20 For Chile, the term âentitiesâ means âfederations and associationsâ. For the EU, the term âentitiesâ means âprofessional defence bodiesâ.
banking, financial or commercial documents under the control of the opposing party, subject to the protection of confidential information.
1.
(a)
Article 25.52. Right of Information
Each Party shall ensure that, during civil proceedings concerning an infringement of an intellectual property right and in response to a justified and proportionate request of the claimant, the competent judicial authorities may order the infringer and/or any other person to provide information on the origin and distribution networks of the goods or services which infringe an intellectual property right.
âAny other personâ in this paragraph means at least a person who:
@ (ii) iii)
(iv)
was found in possession of the infringing goods on a commercial scale; was found to be using the infringing services on a commercial scale;
was found to be providing on a commercial scale services used in infringing activities; or
was indicated by the person referred to in this subparagraph as being involved in the production, manufacture or distribution of the goods or the provision of the services.
(b) Information may, as appropriate, comprise:
@
(ii)
the names and addresses of the producers, manufacturers, distributors, suppliers and other previous holders of the goods or services, as well as the intended wholesalers and retailers; or
information on the quantities produced, manufactured, delivered, received or ordered, as well as the price obtained for the goods or services in question.
2. This Article shall apply without prejudice to other statutory provisions which:
(a)
grant the right holder rights to receive fuller information;
(b) govern the use in civil proceedings of the information communicated pursuant to this Article;
(c) govern responsibility for misuse of the right of information;
(d) afford an opportunity for refusing to provide information which would force the person referred to in paragraph 1 to admit his own participation or that of his close relatives in an infringement of an intellectual property right;
(e) govern the protection of confidentiality of information sources or the processing of personal data.
Article 25.53. Provisional and Precautionary Measures
1. Each Party shall ensure that the judicial authorities may, at the request of the applicant, issue against the alleged infringer an interlocutory injunction intended to prevent any imminent infringement of an intellectual property right, or to forbid, on a provisional basis and subject, where appropriate, to a recurring penalty payment where provided for by domestic law, the continuation of the alleged infringements of that right, or to make such continuation subject to the lodging of guarantees intended to ensure the compensation of the right holder. An interlocutory injunction may also be issued, under the same conditions, where appropriate, against a third partyâ! over whom the relevant judicial authority exercises jurisdiction and whose services are used to infringe an intellectual property right.
2. Each Party shall ensure that its judicial authorities may, at the request of the applicant, order the seizure or the delivery upâ of goods suspected of infringing an intellectual property right, so as to prevent their entry into or movement within the channels of commerce.
3. In the case of an alleged infringement committed on a commercial scale, each Party shall ensure that, if the applicant demonstrates circumstances likely to endanger the recovery of damages, the judicial authorities may order the precautionary seizure of the movable and immovable property of the alleged infringer, including the blocking of his/her bank accounts and other assets. To that end, the competent authorities may order the communication of bank, financial or commercial documents, or appropriate access to the relevant information.
Article 25.54.
21 For the purpose of this Article, a Party may provide that a âthird partyâ includes an intermediary. 2 A Party may choose between seizure and delivery up to implement this paragraph.
Remedies
1. Each Party shall ensure that the 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. If appropriate, the judicial authorities may also order destruction of materials and implements predominantly used in the creation or manufacture of those goods.
2. Each Party's judicial authorities shall have the authority to order that those measures shall be carried out at the expense of the infringer, unless particular reasons are invoked for not doing so.
3. In considering a request for remedies 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.
Article 25.55. Injunctions
Each Party shall ensure that, where a judicial decision is taken finding an infringement of an intellectual property right, the judicial authorities may issue against the infringer as well as, where appropriate, against a third partyâ over whom the relevant judicial authority exercises jurisdiction and whose services are used to infringe an intellectual property right, an injunction aimed at prohibiting the continuation of the infringement.
Article 25.56. 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 25.54 (Remedies) and/or Article 25.55 (Injunctions), may order pecuniary compensation to be paid to the injured party instead of applying the measures provided for in these two Articles if that person acted unintentionally and without negligence, if execution of the measures in question would cause him disproportionate harm and if pecuniary compensation to the injured party appears reasonably satisfactory.
Article 25.57. Damages
1. Each Party shall ensure that the judicial authorities, on application of the injured party, order the infringer who knowingly, or with reasonable grounds to know, engaged in an infringing activity, to pay the right-holder damages adequate to compensate for the injury the rightholder has suffered as a result of the infringement.
23 For the purpose of this Article, a Party may provide that a âthird partyâ includes an intermediary.
In determining the amount of damages under paragraph 1, each Partyâs judicial authorities shall have the authority to consider, among other things, any legitimate measure of value the right holder submits, which may include lost profits, the value of the infringed goods or services measured by the market price, or the suggested retail price. At least in cases of copyright or related rights infringement and trademark counterfeiting, each Party shall provide that, in civil judicial proceedings, its judicial authorities have the authority to order the infringer, to pay the right holder the infringerâs profits that are attributable to the infringement, whether as an alternative to or in addition to or as part of the damages.
3. As an alternative to paragraph 2, each Party may provide that its judicial authorities have the authority, in appropriate cases, to set the damages as a lump sum on the basis of elements such as at least the amount of royalties or fees which would have been due if the infringer had requested authorization to use the intellectual property right in question.
4. Nothing in this Article precludes either Party from providing that where the infringer did not knowingly, or with reasonable grounds to know, engage in infringing activity, its judicial authorities may order in favour of the injured party the recovery of profits or the payment of damages which may be pre-established.
Article 25.58. Legal Costs
Each Party shall provide that its judicial authorities, where appropriate, have the authority to order, at the conclusion of civil judicial proceedings concerning the enforcement of intellectual property rights, that the prevailing party be awarded payment by the losing party of legal costs and other expenses, as provided for under that Party's law.
Article 25.59. Publication of Judicial Decisions
Each Party shall ensure that, in legal proceedings instituted for infringement of an intellectual property right, the judicial authorities may order, at the request of the applicant and at the expense of the infringer, appropriate measures for the dissemination of the information concerning the decision, including displaying the decision and publishing it in full or in part.
Tn the case of the EU, this would also include, in appropriate cases, elements other tan economic factors such as the moral prejudice caused to the rightholder by the infringement.
Article 25.60. Presumption of Authorship or Ownership
The Parties shall recognise that for the purposes of applying the measures, procedures and remedies provided for in this Section 3
(a) for the author of a literary or artistic work, in the absence of proof to the contrary, to be regarded as such, and consequently to be entitled to institute infringement proceedings, it shall be sufficient for his/her name to appear on the work in the usual manner;
(b) the provision under (a) shall apply mutatis mutandis to the holders of rights related to copyright with regard to their protected subject matter.
Article 25.61. 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 the relevant provisions of this section.
Sub-Section 2
Border enforcement
Article 25.62. Border Measures
1. With respect to goods under customs control, each Party shall adopt or maintain procedures under which a right holder may submit applications requesting competent authorities to suspend the release or detain âsuspected goodsâ. For the purposes of this Sub- Section, âsuspected goodsâ means goods suspected of infringing trademarks, copyrights and related rights, geographical indications, patents, utility models, industrial designs and topographies of integrated circuits.
2. Each Party shall have in place electronic systems for the management by competent authorities of the applications granted or recorded.
3. Competent authorities shall not charge a fee to cover the administrative costs resulting from the processing of an application or a recordation.
4. Competent authorities should decide about granting or recording application within a reasonable period of time.
5. Each Party shall provide for such application/recordation to apply to multiple shipments.
6. With respect to goods under customs control, each Party shall ensure that its customs authorities may act upon their own initiative to suspend the release of or detain goods suspected of infringing trademarks or copyright.
7. Customs authorities shall use risk analysis to identify goods suspected of infringing intellectual property rights. The parties shall implement this provision according to their legal systems.
8. Each Party may have in place procedures allowing for the destruction of goods suspected of infringing intellectual property rights, without there being any need to prior administrative or judicial proceedings for the formal determination of the infringements, where the persons concerned agree or do not oppose to the destruction. In case such goods are not destroyed, each Party shall ensure that, except in exceptional circumstances, such goods are disposed of outside the commercial channel in such a manner to avoid any harm to the right holder.
9. Each Party may have in place procedures allowing for the swift destruction of counterfeit trademark and pirated goods sent in postal or express couriers consignments.
10. Each Party may decide not to apply this Article to import of goods put on the market in another country by or with the consent of the right holders. A Party may exclude from the application of this Article goods of a non-commercial nature contained in travellersâ personal
luggage.
11. The Customs authorities of each Party shall maintain a regular dialogue and promote cooperation with the relevant stakeholders and with other authorities involved in the enforcement of intellectual property rights.
12. The Parties shall cooperate in respect of international trade in suspected goods. In particular, the Parties shall, as far as possible, share information on trade in suspected goods affecting the other Party.
13. Without prejudice to other forms of cooperation, the Protocol on mutual administrative assistance in customs matters applies with regard to breaches of legislation on intellectual property rights for the enforcement of which the customs authorities of a Party are competent in accordance with this Article.
Article 25.63. Consistency with GATT and TRIPS Agreement
In implementing border measures for the enforcement of intellectual property rights by customs, whether or not covered by this Article, the Parties shall ensure consistency with their obligations under the GATT and TRIPS agreements and, in particular, with Article V of GATT agreement, Article 41 and Section 4 of the Part III of TRIPS agreement.
Section 5. Final Provisions
Article 25.64. Modalities of Cooperation
1. The Parties agree to cooperate with a view to supporting implementation of the commitments and obligations undertaken under this Chapter.
2. The Parties shall draw on the following modalities, among others, with respect to cooperation on intellectual property rights protection and enforcement matters. The areas of cooperation include the following activities, but are not limited to:
(a) The exchange of information on the legal framework concerning intellectual property rights and relevant rules of protection and enforcement;
(b)
(c)
(d)
(e)
(f)
(g)
(h)
@
G)