Each Party shall provide a publicly available electronic database of applications and registrations of trademarks.
Article Article 12.22
For the purposes of giving effect to the 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 apply 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 Article 12.23
4 Final negative decision
Each Party shall provide for limited exceptions to the rights conferred by a trademark such as the fair use of descriptive terms, including geographical indications, as appropriate and may provide other limited exceptions, provided such exceptions take account of the legitimate interests of the owner of the trademark and of third parties.
Each Party shall provide that the trademark shall not entitle the proprietor to prohibit a third party from using, in the course of trade:
his or her own name or address, where the third party is a natural person;
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
the trademark where it is necessary to indicate the intended purpose of a good or service, in particular as accessories or spare parts.
Paragraph 2 shall only apply where the use made by the third party is in accordance with honest practices in industrial or commercial matters. Each Party may provide that a use under point (a) of paragraph 2 is only considered to be in accordance with honest practices in industrial or commercial matters if it relates to goods or services which are dissimilar to those of the earlier trademark.
Article Article 12.24
Each Party shall provide that a trademark shall be liable to revocation if, within a continuous period of at least three years, the trademark has not been put to genuine use in the relevant territory in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use. However, no person may claim that the proprietor’s rights in a trademark should be revoked where, during the interval between expiry of the period of at least three years and filing of the application for revocation, genuine use of the trademark has been started or resumed. The commencement or resumption of use within a period of three months preceding the filing of the application for revocation, which began at the earliest on expiry of the continuous period of at least three years of non-use, shall, however, be disregarded where preparations for the commencement or resumption of use takes place only after the holder has been informed that the application for revocation may be filed.
A trademark shall also be liable to revocation if, after the date on which it was registered:
in consequence of acts or inactivity of the proprietor, it has become the common name in the trade for a good or service in respect of which it is registered; or
in consequence of the use made of it by the proprietor of the trademark or with his consent in respect of the goods or services for which it is registered, it is liable to
mislead the public, particularly as to the nature, quality or geographical origin of those goods or services.
The grounds for invalidation of a trademark may be determined by the laws of each Party.
Article Article 12.25
A trademark shall be liable to be declared invalid where the application for registration of the trademark was made in bad faith by the applicant. Each Party may provide that such a trademark shall not be registered.
SUB-SECTION 3
Article Article 12.26
Each Party shall provide for the protection of independently created designs that are new or original5. This protection shall be provided by registration and shall confer an exclusive right upon their holders in accordance with this Sub-Section.
Each Party shall provide for the holder of a registered design to have the right at least to use it and to prevent third parties not having the holder’s consent at least from using and notably 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, unduly prejudice the normal exploitation of the design, or are not compatible with fair trade practice.
A design applied to or incorporated in a product which constitutes a component part of a complex product shall be granted design protection by each Party:
if the component part, once it has been incorporated into the complex product, remains visible during normal use of the latter; and
to the extent that those visible features of the component part fulfil in themselves the requirements pursuant to paragraph 1.
“Normal use” in point (a) paragraph 3 shall mean use by the end user, excluding maintenance, servicing or repair work.
5 The Parties agree that if the law of the EU so provides, the individual character of designs can also be required].
Article Article 12.27
Each Party shall provide that the duration of the protection available shall amount to at least ten years from the date of filing of the application. If a Party increases the duration of protection beyond 10 years, before or after the entry into force of this Agreement, the minimum duration of protection pursuant to the first sentence shall be set at that increased level of duration, which shall amount to at least 15 years.
Article Article 12.28
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.
Design protection shall not extend to designs dictated essentially by technical or functional considerations. In particular, a design right shall not subsist in features of appearance of a product which must necessarily be reproduced in their exact form and dimensions for the product in which incorporated or to which the design is applied to be mechanically connected to, or placed in, or around or contact with another product so that either product may perform its function.
By way of derogation from paragraph 2, a design may subsist in a design, which has the purpose of allowing the multiple assembly or connection of mutually interchangeable products within a modular system.
Article Article 12.29
The Parties shall not prevent a design to be eligible for protection under the copyright law of a Party from the date on which the design was created or fixed in any form. The extent to which, and the conditions under which, such a protection is conferred, including the level of originality required, shall be determined by each Party.
SUB-SECTION 4
Article Article 12.30
This Sub-Section applies to the protection of geographical indications originating in the territories of the Parties.
Geographical indications of a Party which are to be protected by the other Party shall only be subject to this Sub-Section if covered by the scope of the legislation referred to in Article 12.31 (Procedures).
Article Article 12.31
Having examined the legislation of Indonesia listed in Section A of Annex 12-A, the Union concludes that this legislation meets the elements laid down in Section B of Annex 12-A.
Having examined the Union legislation listed in Section A of Annex 12-A, Indonesia concludes that this legislation meets the elements laid down in Section B of Annex 12-A.
Following the completion of an opposition procedure in accordance with the criteria set out in Annex 12-B and an examination of the geographical indications of the Union listed in Annex 12-C, which have been registered by the Union under the legislation referred to in paragraph 2 as geographical indication complying with paragraph 1 of TRIPS Article 22, Indonesia shall protect those geographical indications according to the level of protection laid down in this Sub-Section.
Following the completion of an opposition procedure in accordance with the criteria set out in Annex 12-B and an examination of the geographical indications of Indonesia listed in Annex 12-C, which have been registered by Indonesia under the legislation referred to in paragraph 1 as geographical indication complying with paragraph 1 of TRIPS Article 22, the Union shall protect those geographical indications according to the level of protection laid down in this Sub-Section.
Article Article 12.32
The list of geographical indications to be protected in Annex [XX]-C may be amended by the Trade Committee in accordance with Article 24.2 (Functions of the Trade Committee) of Chapter 24 (Institutional Provisions)]. New geographical indications shall be added following the completion of the opposition procedure and their examination as referred to in paragraphs 3 or 4 of Article 12.31 (Procedures).
Article Article 12.33
Each Party shall ensure that the geographical indications listed in Annex 12-C shall be protected against:
any direct or indirect commercial use of a protected name:
for comparable products not compliant with the product specification of the protected name, or
in so far as such use exploits the reputation of a geographical indication;
any misuse, imitation or evocation, even if the true origin of the product is indicated or if the protected name is translated, transcribed, transliterated or accompanied by an expression such as “style”, “type”, “method”, “as produced in”, “imitation”, “flavour”, “like” or similar, including when those products are used as an ingredient;
any other false or misleading indication as to the origin, nature or essential qualities of the product, on the inner or outer packaging, advertising material or documents relating to the product concerned, and the packing of the product in a container liable to convey a false impression as to its origin, including when those products are used as an ingredient; and
any other practice liable to mislead the consumer as to the true origin of the product.
Geographical indications listed in Annex 12-C shall not become generic in the territories of the Parties.
Nothing in this Agreement shall oblige a Party to protect a geographical indication of the other Party which is not, or ceases to be, protected in the territory of origin. Each Party shall notify the other Party if a geographical indication ceases to be protected in the territory of that Party of origin. Such notification shall take place in accordance with procedures laid down in Article 12.61 (Committee on Services, Investment, Digital Trade, Government Procurement, Intellectual Property).
Nothing in this Agreement shall prejudice the right of any person to use, in the course of trade, that person’s name or the name of that person’s predecessor in business, except where such name is used in such a manner to mislead the public.
Article Article 12.34
Each Party shall provide that a name protected under this Agreement may be used by any operator marketing a product which conforms to the corresponding specification.
Each Party shall provide that 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 Article 12.35
Each Party shall, where a geographical indication is protected under this Sub-Section, refuse to register a trademark the use of which would contravene paragraph 1 of Article
12.33 (Protection of Geographical Indications), provided an application to register the trademark is submitted after the applicable date of protection of the geographical indication in the territory of the Party concerned.
Trademarks registered in breach of the first paragraph shall be invalidated.
For geographical indications referred to in Article 12.31 (Procedures), the applicable date of protection referred to in paragraph 1 shall be the date of entry into force of this Agreement.
For geographical indications referred to in Article 12.32 (Amendment of the List of Geographical Indications), the applicable date of protection referred to in paragraph 1 shall be the date of the transmission of a request to the other Party to protect a geographical indication.
The Parties shall protect geographical indications where a prior trademark exists. A prior trademark shall mean a trademark the use of which contravenes paragraph 1 of Article
12.33 (Protection of Geographical Indications) which has been applied for, registered or established by use, if that possibility is provided for by the legislation concerned, in good faith in the territory of one Party before the date on which the application for protection of the geographical indication is submitted by the other Party under this Agreement, which the proprietor of the prior trademark has right to use for the geographical indications according to the respective laws and regulations of a Party. Such trademark may continue to be used and renewed provided that no grounds for the trademark’s invalidity or revocation exist in the legislation on trademarks of the Parties. In such cases, the use of the protected geographical indication shall be permitted as well as the use of the relevant trademarks.
Article Article 12.36
The Parties shall enforce the protection provided for in Articles 12.31 (Procedures) to 12.35 (Relationship to Trademarks) by appropriate administrative and judicial steps to prevent or stop the unlawful use of protected designations of origin and protected geographical indications. They shall also enforce such protection at the request of an interested party.
Article Article 12.37
A Party shall not be required to protect a name as a geographical indication under this Sub-Section if that name conflicts with the name of a plant variety or an animal breed and as a result is likely to mislead the consumer as to the true origin of the product.
A Party shall not be required to protect a homonymous name which misleads consumers into believing that a product comes from another territory even if the name is accurate as far as the actual territory, region or place of origin of the product in question is concerned. Without prejudice to Article 23 of the TRIPS Agreement, the Parties shall mutually decide the practical conditions of use under which wholly or partially homonymous 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.
Ifa Party, in the context of bilateral negotiations with a third party, proposes to protect a geographical indication of that third party which is wholly or partially homonymous with a geographical indication of the other Party protected under this Sub-Section, it shall inform the other Party thereof and give it an opportunity to comment before the third party’s geographical indication becomes protected.
Any matter arising from product specifications of protected geographical indications shall be dealt with in the Committee on Services, Investment, Digital Trade, Government Procurement, Intellectual Property referred to in Article 12.61 (Committee on Services, Investment, Digital Trade, Government Procurement, Intellectual Property ).
The protection of geographical indications protected under this Agreement may only be cancelled by the Party in which the product originates.
A product specification referred to in this Sub-Section shall be that approved, including any amendments also approved, by the authorities of the Party in the territory from which the product originates.
SUB-SECTION 5
Article Article 12.38
Subject to the provisions of paragraphs 2 and 3 of Article 27 of the TRIPS Agreement, each Party shall ensure at least adequate and effective patent protection for inventions in all fields of technology, provided that they are new, involve an inventive step and are capable of industrial application. Subject to paragraph 4 of Article 65, paragraph 8 of Article 70 and paragraph 3 of Article 27 of the TRIPS Agreement, each Party shall ensure that patents are available and patent rights enjoyable without discrimination as to the place of invention, the field of technology and whether products are imported or locally produced.
Article Article 12.39
The Parties recognise that medicinal products or plant protection products protected by a patent in their respective territory may be subject to an administrative authorisation6 procedure before being put on their market. They acknowledge that the period that elapses between the filing of the application for a patent and the first authorisation to place the product on their respective market, as defined for that purpose by the relevant legislation, may shorten the period of effective protection under the patent.
SUB-SECTION 6
Article Article 12.40
6 The term “administrative authorisation” refers to the formal approval granted by regulatory authorities to allow the marketing of medicinal and plant protection products. This authorisation ensures that the product meets all necessary regulatory requirements, including safety and efficacy.
7 The terms “trade secret” and “undisclosed” information are interchangeable for the purposes of Article 40 and 41.
In fulfilling its obligation under paragraph 1 of Article 2 to comply with the TRIPS Agreement, and in particular 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 without the consent of the holder, whenever carried out in a manner contrary to honest commercial practices.
For the purposes of this Sub-section:
“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 natural or legal person lawfully controlling a trade secret.
For the purposes of this Sub-section, at least the following conduct shall be considered contrary to honest commercial practices:
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;
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);
being in breach of a confidentiality agreement or any other duty not to disclose the trade secret; or
being in breach of a contractual or any other duty to limit the use of the trade secret; or
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), including when a person induced another person to carry out the actions referred to in point (b).
Nothing in this Sub-section shall be understood as requiring any Party to consider any of the following conduct as contrary to honest commercial practices:
independent discovery or creation by a person of the relevant information;
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;
acquisition, use or disclosure of information required or allowed by the relevant domestic law; and
use by employees of their experience and skills honestly acquired in the normal course of their employment.
Article Article 12.41
Each Party shall ensure that the any person participating in the civil judicial proceedings referred to in paragraph 1 of Article 12.40 (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 paragraph 1 of Article 12.40 (Scope of protection of trade secrets), each Party shall provide that its judicial authorities have the authority at least to:
order provisional measures, as set out in their respective laws and regulations, to prevent the acquisition, use or disclosure of the trade secret in a manner contrary to honest commercial practices;
order injunctive relief to prevent the acquisition, use or disclosure of the trade secret in a manner contrary to honest commercial practices;
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;
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; and
impose sanctions on parties, or other persons subject to the court’s jurisdiction for violation of judicial orders concerning the protection of a trade secret or alleged trade secret produced in that proceedings.
The Parties shall not be required to provide for the judicial procedures and remedies referred to in paragraph 1 of Article 12.40 (Scope of protection of trade secrets) if the conduct contrary to honest commercial practices is carried out, in accordance with their relevant law, to reveal misconduct, wrongdoing or illegal activity or for the purposes of protecting a legitimate interest recognised by relevant domestic law.
Article Article 12.42
Each Party shall protect commercially confidential information submitted to obtain an authorisation to place medicinal products on the market (“marketing authorisation”) against disclosure to third parties, except where it is necessary to protect the public, or unless steps are taken to ensure that the information is protected against unfair commercial use.
Each Party shall provide that for a limited period of time to be determined by its domestic law, the authority responsible for the granting of a marketing authorisation does not accept any subsequent application for a marketing authorisation that relies on the results of pre-clinical tests or clinical trials submitted in the application to that authority for the first marketing authorisation without the explicit consent of the holder of the first marketing authorisation, unless international agreements recognised by both Parties provide otherwise.
Article Article 12.43
Each Party shall provide that for at least 10 years from the date of the first marketing authorisation to place a plant protection product on the market, the test or study reports submitted to obtain that first marketing authorisation are not used for the benefit of any other person who seeks to obtain a marketing authorisation for a plant protection product, without the explicit consent of the owner of the test or study reports, regardless of whether or not the test or study report has been made available to the public.
The test or study report protected under paragraph 1 should fulfil the following conditions:
be necessary for the marketing authorisation or for an amendment of a marketing authorisation in order to allow the use on other crops; and
be certified as compliant with the principles of good laboratory practice or of good experimental practice.
Each Party shall establish rules to avoid duplicative testing on vertebrate animals.
SUB-SECTION 7
Article Article 12.44
Each Party shall protect plant variety rights consistent with the International Convention for the Protection of New Varieties of Plants adopted in Paris on 2 December 1961, as last revised in Geneva on 19 March 1991 (“1991 UPOV Act”), including the exceptions to the breeder’s right as referred to in Article 15(2) of that Convention8.
SECTION C
ENFORCEMENT OF INTELLECTUAL PROPERTY RIGHTS
Article Article 12.45
The Parties affirm their commitments under the TRIPS Agreement and in particular of Part III thereof. The complementary measures, procedures and remedies to be provided by each Party under this Section are necessary to ensure the enforcement of intellectual property rights9. These 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.
The measures, procedures and remedies referred to in paragraph 1 shall 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.
This Section is without prejudice to the enforcement mechanisms, if any, for Genetic Resources, Traditional Knowledge and Traditional Cultural Expression provided by the respective laws of the Parties.
Each Party shall endeavour to enhance the fight against counterfeiting and piracy.
8 For greater certainty, this provision shall not affect the registration of local plant varieties under the laws and regulations in Indonesia outside the scope of the 1991 UPOV Act.
9 For the purposes of this Section the term “intellectual property rights” shall include at least the following rights: copyright; rights related to copyright; rights of the creator of the topographies of a semiconductor product; trademark rights; design rights; patent rights; geographical indications; utility model rights; plant variety rights; trade names in so far as these are protected by each Party.
Article Article 12.46
Each Party shall recognise as persons entitled to seek application of the measures, procedures and remedies referred to Section C of this Chapter and in Part III of the TRIPS Agreement:
the holders of intellectual property rights in accordance with the provisions of the applicable law;
all other persons authorised to use those intellectual property rights, in particular licensees, in so far as permitted by and in accordance with the provisions of the applicable law;
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 the applicable law; and
professional defence 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 the law.
Civil and Administrative Enforcement
Article Article 12.47
Each Party shall ensure that, even before the commencement of proceedings on the merits of the case, the competent judicial authorities may, on application by a party which 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.