(a) a requirement to provide to the applicant a communication in writing, which may be provided manually or 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 the reasons for a 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 the 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) seek cancellation of the registration; or
(ii) seek invalidation of the registration; and
(e) a requirement that administrative decisions in opposition, cancellation or invalidation procedures shall be reasoned and in writing. Such decisions may be provided manually or electronically.
Note: For the purposes of this subparagraph, the term “administrative decisions” may include quasi-judicial decisions.
Article 12.23. System for Electronic Applications of Trademarks
Each Party is encouraged to provide a system for electronic filing of applications for the registration of trademarks in accordance with its laws and regulations.
Section 4. Geographical Indications
Article 12.24. Definition of Geographical Indications
For the purposes of this Chapter, the term “geographical indications” means indications which identify a good as originating in the territory of a Party, or a region or locality in that Party’s territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin.
Article 12.25. Protection of Geographical Indications
Each Party shall provide the legal means to protect geographical indications in accordance with its laws and regulations and in conformity with relevant international agreements to which both Parties are parties.
Article 12.26. Exchange of Views on Mutual Recognition of Geographical Indications
1. The Parties recognize the importance of discussions on mutual recognition of geographical indications.
2. The Parties will exchange views on matters related to protecting geographical indications including the mutual recognition of geographical indications and other cooperation on geographical indications.
3. The Sub-Committee on Intellectual Property established pursuant to Article 12.66 is encouraged to provide a forum for exchanging views on the matters referred to in paragraph 2.
Section 5. Industrial Designs
Article 12.27. Protection of Industrial Designs
1. Each Party shall provide for the protection of independently created industrial designs that are new or original. Each 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. Each 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 of 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 industrial design, when such acts are undertaken for commercial purposes.
4. Each Party may provide for limited exceptions to the protection of industrial designs, provided that such exceptions do not unreasonably conflict with a normal exploitation of the protected industrial design and do not unreasonably prejudice the legitimate interests of the owner of the protected industrial design, taking account of the legitimate interests of third parties.
Article 12.28. Information as Prior Art for Designs Made Available to the Public on the Internet
Each Party shall endeavor to ensure that information made available to the public on the Internet may form part of the prior art for designs.
Article 12.29. Procedural Aspects of Examination and Registration for Industrial Designs
Each Party shall endeavor to 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 manually or 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 appeal a refusal to register or grant an industrial design;
(c) an opportunity to do at least one of the following in relation to an industrial design after it has been registered or granted:
(i) seek cancellation of the registration or grant; or
(ii) seek invalidation of the registration or grant; and
(d) a requirement that administrative decisions in cancellation or invalidation procedures shall be reasoned and in writing. Such decisions may be provided manually or electronically.
Note: For the purposes of this subparagraph, the term “administrative decisions” may include quasi-judicial decisions.
Article 12.30. Introduction of International Classification System for Industrial Designs
Each Party shall endeavor to use a classification system for industrial designs that is consistent with the Locarno Agreement Establishing an International Classification for Industrial Designs, signed at Locarno on October 8, 1968, as amended from time to time.
Article 12.31. Grace Period for Industrial Designs
The Parties acknowledge the importance of grace periods for industrial designs to disregard certain public disclosures of creations when determining if a design is new or original in order to support innovation.
Article 12.32. System for Electronic Applications of Industrial Designs
Each Party is encouraged to provide a system for electronic filing of applications for the registration of industrial designs in accordance with its laws and regulations.
Section 6. Patents
Article 12.33. 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. 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. Each Party may exclude from patentability inventions, the prevention within their 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 their law.
3. Each 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.
Article 12.34. 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 for these purposes, that product; and
Note: This right to prevent from the act of importing, like all other rights conferred under this Chapter in respect of the use, sale, importation or other distribution of goods, is subject to the provisions of Article 6 of the TRIPS Agreement.
(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 12.35. Exceptions to Rights Conferred
Each Party may provide for 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 12.26. Procedural Aspects of Examination and Registration for Patents
1. The Parties recognize 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 endeavor to provide a patent system, which shall include:
(a) a requirement to provide to the applicant a communication in writing, which may be provided manually or electronically, of the reasons for a refusal to register or grant a patent;
(b) an opportunity for the applicant to make amendments in connection with their applications;
Note : For the purposes of this subparagraph, the Parties understand that the term “amendments” may include corrections.
(c) an opportunity to do at least one of the following in relation to a patent before it has been registered or granted:
(i) file an opposition against the patent application; or
(ii) provide the competent authority with information that could deny novelty or an inventive step of the 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 registered or granted:
(i) oppose the registration or grant;
(ii) seek cancellation of the registration or grant; or
(iii) seek invalidation of the registration or grant; and
(c) a requirement that administrative decisions in opposition, cancellation or invalidation procedures shall be reasoned and in writing. Such decisions may be provided manually or electronically.
Note: For the purposes of this subparagraph, the term “administrative decisions” may include quasi-judicial decisions.
Article 12.37. System for Electronic Applications of Patents
Each Party is encouraged to adopt a system for electronic applications of patents so as to facilitate ease of applications by patent applicants.
Article 12.38. 18-Month Publication
1. Each Party shall endeavor to 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.
Note: The Parties understand that, for the purposes of this Article, an application is withdrawn, abandoned or refused in accordance with their respective laws and regulations.
2. Nothing in this Article shall be construed to require either Party to publish any information the disclosure of which it considers to be contrary to its national security or to ordre public or morality.
3. Each Party shall provide that the applicant may request the early publication of its application prior to the expiry of the period of time referred to in paragraph 1.
Article 12.39. Information as Prior Art Made Available to the Public on the Internet
Each Party shall endeavor to provide that information made available to the public on the Internet may form part of the prior art.
Article 12.40. Introduction of International Patent Classification System
Each Party shall endeavor to use a classification system for patents that is consistent with the Strasbourg Agreement Concerning the International Patent Classification, done at Strasbourg on March 24, 1971, as amended from time to time.
Article 12.41. Providing Online Electronic Databases on Patents
Each Party is encouraged to provide a publicly accessible online electronic database of publications of patent applications and registrations.
Article 12.42. Duration of Protection for Patents
The term of protection available for patents shall not end before the expiration of a period of 20 years counted from the filing date.
Section 7. New Varieties of Plants
Article 12.43. New Varieties of Plants
Each Party recognizes the importance of protecting new varieties of plants in a manner based on international standards. Each Party shall provide for the protection of new varieties of plants through an effective system for the protection of plant varieties in accordance with the sui generis system. All plant genera and species shall be included in the scope of this Article in accordance with its laws and regulations.
Section 8. Unfair Competition
Article 12.44. Effective Protection Against Unfair Competition
1. Each Party shall ensure effective protection against acts of unfair competition in accordance with its laws and regulations.
2. The following in particular shall be prohibited:
(a) all acts of such a nature as to create confusion by any means whatever with the establishment, the goods, the services, or the industrial or commercial activities, of a competitor;
(b) false allegations in the course of trade of such a nature as to discredit the establishment, the goods, the services, or the industrial or commercial activities, of a competitor; and
(c) indications or allegations the use of which in the course of trade is liable to mislead the public as to the nature, the characteristics, the suitability for their purpose, or the quantity, of the goods or services, or the manufacturing process of the goods.
Article 12.45. Domain Names
In connection with each Party’s system for the management of its country-code top-level domain (ccTLD) domain names, appropriate remedies shall be available, in accordance with its laws and regulations, at least in cases in which a person registers or holds, with a bad faith intent to profit, a domain name that is identical or confusingly similar to a trademark.
Note: The Parties understand that such remedies may, but need not, include, among other things, revocation, cancellation, transfer, damages or injunctive relief.
Article 12.46. Protection of Undisclosed Information
The Parties recognize the importance of protecting undisclosed information in relation to the objectives specified in Article 7 of the TRIPS Agreement.
Section 9. Enforcement of Intellectual Property Rights
Subsection 1. General Obligations
Article 12.47. General Obligations
1. Each Party shall ensure that enforcement procedures as specified in this Section are available under its laws and regulations so as to permit effective action against any act of infringement of intellectual property rights covered by this Chapter, including expeditious remedies to prevent infringements and remedies which constitute a deterrent to further infringements. These procedures 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.
Note: For the purposes of this Section, the term “laws and regulations” are not limited to legislation and may include established judicial practices.
2. Procedures concerning the enforcement of intellectual property rights shall be fair and equitable. They shall not be unnecessarily complicated or costly, or entail unreasonable time-limits or unwarranted delays.
3. In implementing this Section, each Party shall take into account the need for proportionality between the seriousness of the infringement of the intellectual property right and the applicable remedies and penalties, as well as, if applicable, the interests of third parties.
4. The Parties understand that this Section does not create any obligation to put in place a judicial system for the enforcement of intellectual property rights distinct from that for the enforcement of law in general, nor does it affect the capacity of each Party to enforce its law in general. Nothing in this Section shall create any obligation with respect to the distribution of resources between the enforcement of intellectual property rights and the enforcement of law in general.
5. In civil procedures involving copyright of authors, each Party shall provide for a presumption that, in the absence of proof to the contrary, the person whose name is indicated in the usual manner as the author of the work is the author of the work. The obligation contained in the preceding sentence shall apply to criminal and administrative procedures if applicable in the Party’s laws and regulations.
Note: For greater certainty, each Party may implement this paragraph on the basis of sworn statements or documents having evidentiary value, such as statutory declarations. Each Party may also provide that these presumptions are rebuttable presumptions that may be rebutted by evidence to the contrary.
Article 12.48. Enforcement Practices with Respect to Intellectual Property Rights
1. Each Party shall provide that:
(a) judicial decisions pertaining to the enforcement of intellectual property rights are preferably in writing and state any relevant findings of fact and the reasoning or the legal basis on which the decisions are based; and
(b) final judicial decisions and administrative rulings of general application pertaining to the enforcement of intellectual property rights are published, or where such publication is not practicable, made publicly available, in a national language, in such a manner as to enable the Governments of the Parties and right holders to become acquainted with them.
Note: For greater certainty, each Party may satisfy the requirement for publication by making the decision or ruling available to the public on the Internet.
2. Each Party shall endeavor to publish or otherwise make available to the public information on its efforts to provide effective enforcement of intellectual property rights in its civil, administrative and criminal systems.
Note: For greater certainty, such information may include statistical data that the Party collects for these purposes.
Subsection 2. Civil Remedies
Article 12.49. Fair and Equitable Procedures
Each Party shall make available to right holders civil judicial procedures concerning the enforcement of any intellectual property right covered by this Chapter. Defendants shall have the right to written notice which is timely and contains sufficient detail, including the basis of the claims. All parties to the procedures shall be allowed to be represented by independent legal counsel, and procedures shall not impose overly burdensome requirements concerning mandatory personal appearances. All parties to such procedures shall be duly entitled to substantiate their claims and to present all relevant evidence. The procedures shall provide a means to identify and protect confidential information, unless this would be contrary to the Party’s constitutional requirements.
Note: For the purposes of this Article, the term “right holders” includes federations and associations that have legal standing to assert such rights.
Article 12.50. Injunctions
Each Party shall provide that its judicial authorities have the authority to order injunctive relief that conforms to Article 44 of the TRIPS Agreement, including to prevent goods that involve the infringement of an intellectual property right under the law of the Party providing that relief from entering into the channels of commerce.
Article 12.51. Damages
Each Party shall provide that, in civil judicial procedures concerning the enforcement of intellectual property rights, its judicial authorities have the authority to order the infringer to pay the right holder damages adequate to compensate for the injury the right holder has suffered because of the infringement of that right holder’s intellectual property right by the infringer who knowingly or with reasonable grounds to know, engaged in the infringing activity.
Article 12.52. Destroying Infringing Goods and Materials and Implements
1. Each Party shall provide that, in civil judicial procedures, its judicial authorities have the authority, at least at the right holder’s request, to order that goods infringing rights to industrial designs or trademarks, or copyright or related rights be destroyed, except in exceptional circumstances, without compensation of any sort.
Note: For greater certainty, the Parties understand that while judicial authorities have the authority to order the destruction of the goods, they may also have the authority to order, without compensation of any sort, the disposal of such goods outside the channels of commerce in such a manner as to avoid any harm to the right holder, instead of destruction.
2. Each Party shall further provide that, in civil judicial procedures, its judicial authorities have the authority to order that materials and implements, the predominant use of which has been in the creation of such infringing goods, be, without compensation of any sort, disposed of outside the channels of commerce in such a manner as to minimize the risks of further infringements.
Note: For greater certainty, the Parties understand that while judicial authorities have the authority to order the disposal of the materials and implements, they may also have the authority to order, without compensation of any sort, the destruction of such materials and implements, instead of disposal.
3. In regard to goods infringing rights to trademarks, the simple removal of the trademark unlawfully affixed shall not be sufficient, except in exceptional circumstances, to permit the release of the goods into the channels of commerce.
Article 12.53. Provisional Measures
1. Each Party shall provide that its judicial authorities have the authority to order prompt and effective provisional measures:
(a) to prevent an infringement of any intellectual property right from occurring, and in particular to prevent the entry into the channels of commerce in their jurisdiction of goods, including imported goods immediately after customs clearance; and
(b) to preserve relevant evidence in regard to the alleged infringement.
2. Each Party shall provide that its judicial authorities have the authority to adopt provisional measures inaudita altera parte where appropriate, in particular where any delay is likely to cause irreparable harm to the right holder or where there is a demonstrable risk of evidence being destroyed.
3. The judicial authorities shall have the authority to require the applicant to provide any reasonably available evidence in order to satisfy themselves with a sufficient degree of certainty that the applicant is the right holder and that the applicant’s right is being infringed or that such infringement is imminent, and to order the applicant to provide a security or equivalent assurance sufficient to protect the defendant and to prevent abuse.
4. For greater certainty, the Parties understand that the provisional measures under this Article shall be implemented in accordance with paragraphs 4 through 8 of Article 50 of the TRIPS Agreement.
Article 12.54. Suspension of Release of Goods Infringing Rights
Each Party shall provide for procedures under which a right holder may submit applications requesting its customs authority to suspend the release of goods suspected of infringing rights to trademarks or suspected pirated copyright goods, which are destined for importation into or exportation from the customs territory of the Party.
Note: For the purposes of this Sub-Section and Article 12.63, the term “pirated copyright goods” means any goods which are copies made without the consent of the right holder or person duly authorized by the right holder in the country of production and which are made directly or indirectly from an article, where the making of that copy would have constituted an infringement of a copyright or a related right under the law of each Party.
Article 12.55. Applications for Suspension
Each Party shall provide that an accepted application for suspension remains in force for an appropriate period of time in accordance with its laws and regulations with a view to minimizing the administrative burden on the right holder.
Article 12.56. Security or Equivalent Assurance
Each Party shall provide that its competent authorities shall have the authority to require a right holder initiating the procedures described in Article 12.54 to provide a security or equivalent assurance sufficient to protect the defendant and the competent authorities and to prevent abuse. Each Party shall provide that the security or equivalent assurance shall not unreasonably deter recourse to these procedures.