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.
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 used in the production and/or distribution of these goods and the documents relating thereto.
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
banking, financial or commercial documents under the control of the opposing party, subject to the protection of confidential information.
Article Article 12.48
Each Party shall ensure that, in the context of 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 or any other person which is party to a litigation or a witness therein to provide information on the origin and distribution networks of the goods or services which infringe an intellectual property right.
“any other person” in this paragraph means a person who was:
found in possession of the infringing goods on a commercial scale;
found to be using the infringing services on a commercial scale;
found to be providing on a commercial scale services used in infringing activities; or
indicated by the person referred to in points (i) to (iii) as being involved in the production, manufacture or distribution of the infringing goods or the provision of the infringing services.
the information referred to in this paragraph shall, as appropriate, comprise:
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.
This Article shall apply without prejudice to other statutory provisions which:
grant the right holder rights to receive fuller information;
govern the use in civil or criminal proceedings of the information communicated pursuant to this Article;
govern responsibility for misuse of the right of information;
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; or
govern the protection of confidentiality of information sources or the processing of personal data.
Article Article 12.49
Each Party shall ensure that the judicial authorities may, at the request of the applicant, issue against the alleged infringer a provisional measure 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. A provisional measure may also be issued, under the same conditions, against an intermediary whose services are being used by a third party to infringe an intellectual property right. For the purposes of this Article, “intermediaries” include internet service providers.
A provisional measure may also be issued to order 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, the Parties 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. To that end, the judicial authorities may order the communication of bank, financial or commercial documents, or appropriate access to the relevant information.
Article Article 12.50
Each Party shall ensure that the judicial authorities may 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 infringe an intellectual property right. If appropriate, the judicial authorities may also order the destruction of materials and implements predominantly used in the creation or manufacture of those goods.
The competent judicial authorities of each Party shall have the authority to order that those measures be carried out at the expense of the infringer, unless particular reasons are invoked for not doing so.
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 Article 12.51
Each Party shall ensure that, when a judicial decision finds an infringement of an intellectual property right, the competent judicial authorities may issue against the infringer as well as against an intermediary whose services are being used by a third party to infringe an intellectual property right an injunction aimed at prohibiting the continuation of the infringement.
Article Article 12.52
Each Party may provide that the judicial authorities, in appropriate cases and upon request of the person liable to be subject to the measures provided for in Article 12.50 (Remedies) or Article 12.51 (Injunctions), may order pecuniary compensation to be paid to the injured party instead of applying the measures provided for in Article 12.50 (Remedies) or Article 12.51 (Injunctions), 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 Article 12.53
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 appropriate to the actual prejudice suffered by him or her as a result of the infringement. When the judicial authorities set the damages:
they shall take into account all appropriate aspects, such as the negative economic consequences, including lost profits, which the injured party has suffered, any unfair profits made by the infringer and, in appropriate cases, elements other than economic factors, such as the moral prejudice caused to the right holder by the infringement; or
as an alternative to (a), they may, in appropriate cases, set the damages as a lump sum on the basis of elements such as the amount of royalties or fees which would have been due if the infringer had requested authorisation to use the intellectual property right in question.
Where the infringer did not knowingly, or with reasonable grounds to know, engages in infringing activity, each Party may lay down 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.
Article Article 12.54
Each Party shall ensure that reasonable and proportionate legal costs and other expenses incurred by the successful party shall as a general rule be borne by the unsuccessful party, unless equity does not allow this.
Article Article 12.55
Each Party shall ensure that, in legal proceedings instituted for infringement of an intellectual property right, the competent 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.
Article Article 12.56
The Parties recognise that, for the purposes of applying the measures, procedures and remedies provided for in this Section:
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 or her name to appear on the work in the usual manner; and
point (a) shall apply mutatis mutandis to the holders of rights related to copyright with regard to their protected subject matter.
Article Article 12.57
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.
Article Article 12.58
Each Party shall endeavour to facilitate voluntary stakeholder initiatives to reduce intellectual property rights infringement, including online and in other marketplaces, focusing on concrete problems and seeking practical solutions that are realistic, balanced, proportionate and fair for all concerned including in the following ways:
each Party shall endeavour to consensually convene stakeholders in its territory to facilitate voluntary initiatives to find solutions and resolve differences regarding the protection and enforcement of intellectual property rights with the aim of reducing infringement;
the Parties shall endeavour to exchange information with each other regarding efforts to facilitate voluntary stakeholder initiatives in their respective territories; and
the Parties shall endeavour to promote open dialogue and cooperation among the Parties’ stakeholders, and to encourage the Parties’ stakeholders to jointly find solutions and resolve differences regarding the protection and enforcement of intellectual property rights and reducing infringement.
SECTION D BORDER ENFORCEMENT
Article Article 12.59
In implementing border measures for the enforcement of intellectual property rights by customs, whether or not covered by this Agreement, each Party shall ensure consistency with its obligations under the GATT and TRIPS Agreements.
With respect to goods under customs control, each Party shall adopt or maintain procedures to enable a right holder, who suspects that goods infringe trademarks, copyrights and related rights, geographical indications, patents, utility models, industrial designs, topographies of integrated circuits and plan variety rights, to lodge an application in writing with the competent authorities for the suspension by the custom authorities based on the information received, of the release into free circulation or the detention of such goods. The competent authorities shall take action on such application provided the requirement in the respective laws are met. For purposes of this Section, unless otherwise specified, “competent authorities” may include the appropriate judicial, administrative, or law enforcement authorities under a Party’s law.
Each Party shall have in place an electronic system for the management of the applications granted or recorded by customs authorities, in which:
customs authorities shall decide about granting or recording applications within a reasonable period of time from the submission of the application; and
applications can apply for multiple shipments.
This paragraph is without prejudice to any future technological developments for the improvement of the systems and procedures.
With respect to goods under customs control, each Party shall ensure that customs authorities may act upon their own initiative to suspend the release of or detain goods suspected of infringing an intellectual property right under the respective law of each Party.
Each Party shall ensure that customs authorities use risk analysis to identify suspect goods.
Each Party may have in place procedures allowing for the destruction of goods infringing intellectual property rights, according to the national laws of the Parties, 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 goods determined to be infringing intellectual property rights 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.
A Party may decide not to apply this Article to the 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 travellers’ personal luggage or sent in small consignments. Each Party may have in place procedures allowing for the swift destruction of counterfeit trade mark and pirated goods sent in postal or express couriers’ consignments.
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 the intellectual property rights referred to in paragraph 1.
The Parties shall cooperate in respect of international trade in goods suspected of infringing intellectual property rights and, in particular, to share information on such trade.
Without prejudice to other forms of cooperation, the mutual assistance provided for in the Protocol on Mutual Administrative Assistance in Customs Matters shall apply with regard to breaches of legislation on intellectual property rights referred to in paragraph 1, for the enforcement of which the customs authorities are competent in accordance with this Article.
The Committee on Trade in Goods, Customs matters, and Sanitary and Phytosanitary matters in its configuration for rules of origin and origin procedures, customs and trade facilitation, and intellectual property for issues related to border enforcement referred to in Article 24.4 (Specialised committees)] of Chapter 24 (Institutional Provisions), shall be responsible for ensuring the proper functioning and implementation of this Article, in particular providing for the framework for organising cooperation.
SECTION F FINAL PROVISIONS
Article Article 12.60
The Parties shall cooperate with a view to supporting implementation of the commitments and obligations undertaken under this Chapter.
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:
the exchange of information on the legal framework concerning intellectual property rights and relevant rules of protection and enforcement;
the exchange of experience between the Parties on legislative progress;
the exchange of experience between the Parties on the enforcement of intellectual property rights;
the xchange of experiences between the Parties on enforcement at central and sub-central level by customs, police, administrative and judiciary bodies;
coordination to prevent exports of counterfeit goods, including with other countries;
technical assistance, capacity building; exchange and training of personnel;
the exchange of information and experience on intellectual property related aspects of genetic resources, traditional knowledge and traditional cultural expressions;
the exchange of information and experience on the period of effective protection under a patent on medicinal products or on plant protection products;
the protection and defence of intellectual property rights and the dissemination of information in this regard in, inter alia, business circles and civil society;
public awareness of consumers and right holders; enhancement of institutional cooperation, particularly between the intellectual property offices;
actively promoting awareness and education of the general public on policies concerning intellectual property rights;
regarding public-private collaboration engaging with SMEs, including at SME-focused events or gatherings, regarding protecting and enforcing intellectual property rights and reducing infringement; and
the formulation of effective strategies to identify audiences and communication programmes to increase consumer and media awareness on the impact of intellectual property violations, including the risk to health and safety and the connection to organised crime.
Each Party may make publicly available the product specifications, or a summary thereof, and relevant contact points for control or management of geographical indications of the other Party protected pursuant to Sub-Section 4 (Geographical Indications).
The Parties shall, either directly or through 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), maintain contact on all matters related to the implementation and functioning of this Agreement.
Article Article 12.61
Specialised Committee on Services, Investment, Digital Trade, Government Procurement,
Intellectual Property
[
This Article complements and further specifies Article 24.4 (Specialised Committees)] of Chapter 24 (Institutional Provisions).
The Specialised Committee on Services, Investment, Digital Trade, Government Procurement, Intellectual Property, shall, with respect to this Chapter, see to the proper functioning of this Chapter and may consider any matter related to its implementation and operation.
The […] may in accordance with Article 24.2 of Chapter 24 (Institutional Provisions):
amend Section A of Annex 12-A as regards the references to the law applicable in the Parties;
amend Section B of Annex 12-A as regards the elements for registration and control of geographical indications;
amend Annex 12-B as regards the criteria to be included in the objection procedure; or
modify Annex 12-C as regards the listed geographical indications.