(a) a requirement to provide to the applicant a communication in writing, which may be provided electronically, of the reasons for a refusal to register a trademark;
(b) an opportunity for the applicant to respond to communications from the Party's competent authorities, to contest an initial refusal, and to make a judicial appeal of a final refusal to register a trademark;
(c) an opportunity to do at least one of the following in relation to a trademark before it has been registered:
(i) oppose a trademark application; or
(ii) provide the competent authority with information
that the trademark application does not satisfy the requirements for registration;
(d) an opportunity to do at least one of the following in relation to a trademark after it has been registered:
(i) oppose the registration;
(ii) seek revocation of the registration;
(iii) seek cancellation of the registration; or
(iv) seek invalidation of the registration; and
(e) a requirement that administrative decisions (17) in opposition, revocation, cancellation, or invalidation proceedings shall be reasoned and in writing. Such decisions may be provided electronically.
2. Each Party shall provide:
(a) a system for the electronic application for processing, registering, and maintenance of, trademarks; and
(b) a publicly accessible online electronic database of trademark applications and registrations.
Article 11.23. Rights Conferred
Each Party shall provide that the owner of a registered trademark shall have the exclusive right to prevent all third parties not having the owner's consent from using in the course of trade identical or similar signs for goods or services that are identical or similar to those goods or services in respect of which the trademark is registered, where such use would result in a likelihood of confusion. In the case of the use of an identical sign for identical goods or services, a likelihood of confusion shall be presumed. The rights described in this Article shall not prejudice any existing prior rights, nor shall they affect the possibility of a Party making rights available on the basis of use.
Article 11.24. Exceptions
A Party may provide limited exceptions to the rights conferred by a trademark, such as fair use of descriptive terms, provided that such exceptions take account of the legitimate interests of the owner of the trademark and of third parties.
Article 11.25. Protection of Trademarks That Predate Geographical Indications
Each Party shall protect trademarks where they predate, in its jurisdiction, geographical indications, in accordance with the TRIPS Agreement.
Article 11.26. Protection of Well-known Trademarks
1. Each Party shall provide for appropriate measures to refuse or cancel the registration, and to prohibit the use, (18) of a trademark that is identical or similar to a well-known trademark (19) (20) for identical or similar goods or services, if the use of that trademark is likely to cause confusion with the prior well-known trademark.
2. Each Party recognises the importance of the Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks as adopted by the Assembly of the Paris Union for the Protection of Industrial Property and the General Assembly of WIPO at the Thirty-Fourth Series of Meetings of the Assemblies of the Member States of WIPO, 20 to 29 September 1999.
3. No Party shall require, as a condition for determining that a trademark is a well-known trademark, that the trademark has been registered in that Party or in another jurisdiction, included on a list of well-known trademarks, or given prior recognition as a well-known trademark.
Article 11.27. Bad Faith Trademarks (21)
Each Party shall provide that its competent authority has the authority to refuse an application or cancel a registration where the application to register the trademark was made in bad faith in accordance with its laws and regulations.
Article 11.28. One and the Same Application Relating to Several Goods or Services
Each Party shall provide that one and the same application for registration of a trademark may relate to several goods or services, or any combination thereof, irrespective of whether they belong to one class or to several classes of the Nice Classification.
Section D. Geographical Indications
Article 11.29. Protection of Geographical Indications
Each Party shall ensure in its laws and regulations adequate and effective means to protect geographical indications. Each Party recognises that such protection may be provided through a trademark system, a sui generis system, or other legal means, provided that all requirements under the TRIPS Agreement are fulfilled.
Article 11.30. Domestic Administrative Procedures for the Protection of Geographical Indications
1. If a Party provides domestic administrative procedures (22) for the protection of geographical indications, whether through a trademark or a sui generis system, that Party shall with respect to applications for that protection:
(a) receive those applications for the protection of geographical indications without requiring intercession by a Party on behalf of its nationals; (23)
(b) process those applications in compliance with reasonable procedures and formalities (24);
(c) ensure that its laws and regulations governing the protection of geographical indications are readily available to the public and clearly set out the procedures relating to the protection of geographical indications including procedures relating to the filing of applications;
(d) make available information to allow the public to obtain guidance concerning the procedures for filing applications for the protection of geographical indications, and allow an applicant or their representative to ascertain the status of specific applications; and
(e) ensure that such applications are published for opposition and provide procedures for opposing geographical indications that are the subject of applications. Oppositions shall be received without requiring intercession by a Party on behalf of its nationals.
2. With respect to the protection of a geographical indication referred to in paragraph 1, a Party shall provide procedures for cancellation (25) of the protection afforded to a geographical indication.
Article 11.31. Grounds for Opposition and Cancellation
1. With respect to the opposition procedures referred to in subparagraph i(e) of Article 11.30 (Domestic Administrative Procedures for the Protection of Geographical Indications), each Party shall provide procedures that allow at least interested persons to oppose the protection of a geographical indication, and that allow for any such protection to be refused at least on the ground that the geographical indication is a term customary in common language as the common name (26) for the relevant good in the territory of that Party.
2. If a Party provides protection of a geographical indication through the procedures referred to in Article 11.30 (Domestic Administrative Procedures for the Protection of Geographical Indications) to the translation or transliteration of that geographical indication, that Party shall make available at least the ground which is the same as that referred to in paragraph 1 with respect to oppositions to the protection of that translation or transliteration. (27)
3. With respect to the procedures referred to in paragraph 1, in determining whether a term is a term customary in common language as the common name for the relevant good in the territory of a Party, each Party shall ensure that its competent authorities have the authority to take into account how consumers understand the term within the territory of that Party. Factors relevant to such consumer understanding may include:
(a) whether the term is used to refer to the type of good in question, as indicated by competent sources such as dictionaries, newspapers, and relevant websites; and
(b) how the good referenced by the term is marketed and used in trade in the territory of that Party. (28)
4. With respect to the cancellation procedure referred to in paragraph 2 of Article 11.30 (Domestic Administrative Procedures for the Protection of Geographical Indications), no Party shall preclude the possibility that the protection of a geographical indication may be cancelled, or otherwise cease, on the basis that the protected term has ceased meeting the conditions upon which the protection was originally granted in that Party.
Article 11.32. Multi-component Terms
With respect to the procedures referred to in Article 11.30 (Domestic Administrative Procedures for the Protection of Geographical Indications) and Article 11.31 (Grounds for Opposition and Cancellation), an individual component of a multi-component term that is protected as a geographical indication shall not be protected in a Party if that individual component is a term customary in the common language as the common name for the associated good in the territory of that Party.
Article 11.33. Date of Protection of a Geographical Indication
The protection of a geographical indication through a Party's domestic administrative procedures (29) referred to in Article 11.30 (Domestic Administrative Procedures for the Protection of Geographical Indications) shall commence no earlier than the filing date (30) of the application for the protection in that Party or the registration date in that Party, as applicable.
Article 11.34. Protection or Recognition of Geographical Indications Pursuant to International Agreements
If a Party protects or recognises a geographical indication pursuant to an international agreement involving a Party or a non-Party, and that agreement is concluded after the date of entry into force of this Agreement for that Party, and that geographical indication is not protected through the procedures referred to in Article 11.30 (Domestic Administrative Procedures for the Protection of Geographical Indications), that Party shall:
(a) make available to the public information concerning the procedures for protection or recognition of geographical indications, and if applicable, allow at least interested persons to ascertain the status of requests for protection or recognition;
(b) ensure that those geographical indications that are being considered for protection or recognition are published for opposition, provide procedures for at least interested persons to oppose those geographical indications on the ground referred to in paragraph 1 of Article 11.31 (Grounds for Opposition and Cancellation), and apply Article 11.32 (Multi-Component Terms) with respect to those procedures; and
(c) make available to the public details regarding the terms that the Party is considering protecting or recognising through an international agreement involving a Party or a non-Party.
Article 11.35. Protection or Recognition of Geographical Indications Under Concluded International Agreements
1. No Party shall be required to apply Article 11.34 (Protection or Recognition of Geographical Indications Pursuant to International Agreements) to geographical indications that have been specifically identified in, and that are protected or recognised pursuant to, an international agreement involving a Party or a non-Party, provided that the agreement was concluded prior to the date of entry into force of this Agreement for that Party.
2. In respect of international agreements referred to in paragraph 1 that permit the protection or recognition of a new geographical indication, a Party shall: (31)
(a) apply subparagraph (c) of Article 11.34 (Protection or Recognition of Geographical Indications Pursuant to International Agreements); and
(b) ensure an opportunity for at least interested persons to comment regarding the protection or recognition of the new geographical indication for a reasonable period of time before such a term is protected or recognised.
Section E. Section Patents
Article 11.36. Patentable Subject Matter
1. Subject to paragraphs 2 and 3, patents shall be available for any inventions, whether products or processes, in all fields of technology, provided that they are new, involve an inventive step, and are capable of industrial application (32). Subject to paragraph 3 and Section M (Transition Periods and Technical Assistance), patents shall be 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.
2. A Party may exclude from patentability inventions, the prevention within its territory of the commercial exploitation of which is necessary to protect ordre public or morality, including to protect human, animal or plant life or health, or to avoid serious prejudice to the environment, provided that such exclusion is not made merely because the exploitation is prohibited by its laws and regulations.
3. A Party may also exclude from patentability:
(a) diagnostic, therapeutic, and surgical methods for the treatment of humans or animals; and
(b) plants and animals other than micro-organisms, and essentially biological processes for the production of plants or animals other than non-biological and microbiological processes. However, each Party shall provide for the protection of plant varieties either by patents or by an effective sui generis system or by any combination thereof. The Parties shall review this subparagraph upon any amendment to subparagraph 3(b) of Article 27 of the TRIPS Agreement with a view to deciding whether to adopt a similar amendment to this subparagraph.
Article 11.37. Rights Conferred
1. Each Party shall provide that a patent shall confer on its owner the following exclusive rights:
(a) where the subject matter of a patent is a product, to prevent third parties not having the owner's consent from the acts of making, using, offering for sale, selling, or importing (33) for these purposes that product; and
(b) where the subject matter of a patent is a process, to prevent third parties not having the owner's consent from the act of using the process, and from the acts of using, offering for sale, selling, or importing for these purposes at least the product obtained directly by that process.
2. Patent owners shall also have the right to assign, or transfer by succession, the patent and to conclude licensing contracts.
Article 11.38. Exceptions to Rights Conferred
A Party may provide limited exceptions to the exclusive rights conferred by a patent, provided that such exceptions do not unreasonably conflict with a normal exploitation of the patent and do not unreasonably prejudice the legitimate interests of the patent owner, taking account of the legitimate interests of third parties.
Article 11.39. Other Use without Authorisation of the Right Holder
For greater certainty, nothing in this Agreement shall limit a Party's rights and obligations under Article 31 and Article 31bis of the TRIPS Agreement, and the Annex and Appendix to the Annex to the TRIPS Agreement.
Article 11.40. Experimental Use of a Patent
Without limiting Article 11.38 (Exceptions to Rights Conferred), each Party shall provide that any person may do an act that would otherwise infringe a patent if the act is done for experimental purposes (34) relating to the subject matter of a patented invention.
Article 11.41. Procedural Aspects of Examination and Registration
1. The Parties recognise the importance of improving the quality and efficiency of their respective patent systems as well as simplifying and streamlining the procedures and processes of their respective competent authorities for the benefit of all users of their respective patent systems and the public as a whole.
2. Each Party shall provide a patent system, which includes:
(a) a requirement to provide to the applicant a communication in writing of the reasons for a refusal to grant a patent;
(b) an opportunity for the applicant to make amendments and observations in connection with their applications; (35)
(c) an opportunity to do at least one of the following in relation to a patent before it has been granted:
(i) file an opposition against the patent application; or
(ii) provide the competent authority with information that could deny novelty or inventive step of an invention claimed in the patent application;
(d) an opportunity to do at least one of the following in relation to a patent after it has been granted:
(i) oppose the grant;
(ii) seek revocation;
(iii) seek cancellation; or
(iv) seek invalidation; and
(e) a requirement that administrative decisions (36) in opposition, revocation, cancellation, or invalidation proceedings shall be reasoned and in writing. Such decisions may be provided electronically.
Article 11.42. Grace Period for Patents
The Parties recognise the benefits of patent grace periods to disregard certain public disclosures of inventions when determining if an invention is novel in order to support innovation.
Article 11.43. Electronic Patent Application System
Each Party is encouraged to adopt an electronic patent application system so as to facilitate ease of application by patent applicants.
Article 11.44. Month Publication
1. Each Party shall publish any patent application promptly after the expiry of 18 months from its filing date or, if priority is claimed, from its earliest priority date, unless the application has been published earlier, or has been withdrawn, abandoned, or refused (37).
2. If a pending application is not published promptly in accordance with paragraph 1, the Party shall publish that application or the corresponding patent as soon as practicable.
3. Nothing in this Article shall be construed to require a Party to publish any information the disclosure of which it considers to be contrary to its national security or to public order or morality.
4. Each Party shall provide that the applicant may request the early publication of an application prior to the expiry of the period referred to in paragraph 1.
Article 11.45. Information as Prior Art Made Available to the Public on the Internet
The Parties recognise that information made available to the public on the internet may form part of the prior art.
Article 11.46. Expedited Examination
Each Party shall endeavour to provide for domestic procedures for a patent applicant to request to expedite the examination of its patent application in accordance with that Party's laws, regulations, and rules.
Article 11.47. Introduction of International Patent Classification System
Each Party shall endeavour to use a patent classification system that is consistent with the Strasbourg Agreement Concerning the International Patent Classification done at Strasbourg on 24 March 1971, as amended from time to time.
Article 11.48. Protection of New Varieties of Plants (38)
Each Party shall provide for the protection of new varieties of plants through an effective sui generis plant variety protection system.
Section F. Industrial Designs
Article 11.49. Protection of Industrial Designs
1. Each Party shall provide for the protection of independently created industrial designs that are new or original. A Party may provide that designs are not new or original if they do not significantly differ from known designs or combinations of known design features. A Party may provide that such protection shall not extend to designs dictated essentially by technical or functional considerations.
2. Each Party shall ensure that requirements for securing protection for textile designs, in particular in regard to any cost, examination, or publication, do not unreasonably impair the opportunity to seek and obtain such protection. Each Party shall be free to meet this obligation through industrial design law or through copyright law.
3. Each Party shall provide that the owner of a protected industrial design has the right to prevent third parties not having the owner's consent from making, selling, or importing articles bearing or embodying a design which is a copy, or substantially a copy, of the protected design, when such acts are undertaken for commercial purposes.
4. Each Party may provide limited exceptions to the protection of industrial designs, provided that such exceptions do not unreasonably conflict with the normal exploitation of protected industrial designs and do not unreasonably prejudice the legitimate interests of the owner of the protected design, taking account of the legitimate interests of third parties.
5. Each Party confirms that protection for industrial designs is available for designs:
(a) embodied in a part of an article; or, alternatively,
(b) having a particular regard, where appropriate, to a part of an article in the context of the article as a whole, in accordance with its laws and regulations.
Article 11.50. Information as Prior Art for Designs Made Available to the Public on the Internet (39)
The Parties recognise that information made available to the public on the internet may form part of the prior art for designs.
Article 11.51. Registration or Grant and Applications of Industrial Designs
Each Party shall provide a system for the registration or grant of industrial designs, which shall include:
(a) a requirement to provide to the applicant a communication in writing, which may be provided electronically, of the reasons for a refusal to register or grant an industrial design;
(b) an opportunity for the applicant to respond to communications from the Party's competent authorities for industrial designs, and to contest, challenge, or appeal a refusal to register or grant an industrial design;
(c) an opportunity to seek cancellation or invalidation or revocation of a registration or grant; and