(a) Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks adopted at Madrid on 27 June 1989, as last amended on 12 November 2007; and
(b) Patent Cooperation Treaty, done at Washington on 19 June 1970, as amended on 3 October 2001.
Article 18.5. Exhaustion
Nothing in this Agreement prevents a Party from determining whether or under what conditions the exhaustion of intellectual property rights applies under the law of that Party.
Article 18.6. National Treatment
1. In respect of all categories of intellectual property covered by this Chapter, each Party shall accord to nationals of the other Party treatment no less favourable than that which it accords to its own nationals with regard to the protection! of intellectual property, subject to the exceptions already provided in, respectively, the Paris Convention, the Berne Convention for the Protection of Literary and Artistic Works of 9 September 1886, as revised at Paris on 24 July 1971, the International Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organisations, done at Rome on 26 October 1961, WPPT, or the Treaty on Intellectual Property in Respect of Integrated Circuits, done at Washington, on 26 May, 1989. In respect of performers, producers of phonograms and broadcasting organisations, this obligation only applies in respect of the rights provided for under this Agreement.
For the purposes of this paragraph, the term "protection" shall include matters affecting the availability, acquisition, scope, maintenance and enforcement of intellectual property rights as well as matters affecting the use of intellectual property rights specifically addressed in this Chapter, including the adequate legal protection against the circumvention of effective technological measures referred to in Article 18.17 (Protection of technological measures) and measures concerning rights-management information referred to in Article 18.18 (Obligations concerning rights-management information).
2. A Party may avail itself of the exceptions permitted under paragraph 1 in relation to its judicial and administrative procedures, including requiring a national of the other Party to designate an address for service of process in its territory, or to appoint an agent in its territory, provided that such derogation is:
(a) necessary to secure compliance with laws and regulations of the Party that are not inconsistent with this Chapter; and
(b) not applied in a manner that would constitute a disguised restriction on trade.
3. Paragraph 1 does not apply to procedures provided in multilateral agreements concluded under the auspices of WIPO relating to the acquisition or maintenance of intellectual property rights.
Article 18.7. TRIPS Agreement and Public Health
1. The Parties recognise the importance of the Declaration on the TRIPS Agreement and Public Health, adopted at Doha on 14 November 2001 by the Ministerial Conference of the WTO. This Chapter shall be interpreted and implemented consistently with that Declaration.
2. Each Party shall implement Article 31 bis of the TRIPS Agreement, as well as the Annex to the TRIPS Agreement, including the Appendix to the Annex to the TRIPS Agreement, which entered into force on 23 January 2017.
Section B. STANDARDS CONCERNING INTELLECTUAL PROPERTY RIGHTS
Subsection 1. COPYRIGHT AND RELATED RIGHTS
Article 18.8. Authors
Each Party shall provide authors with the exclusive right to authorise or prohibit:
(a) direct or indirect, temporary or permanent reproduction by any means and in any form, in whole or in part, of their works;
(b) any form of distribution to the public by sale or other transfer of ownership of the original of their works or of copies thereof;
(c) any communication to the public of their works by wire or wireless means, including the making available to the public of their works in such a way that members of the public may access them from a place and at a time individually chosen by them; and
(d) the commercial rental to the public of originals or copies of their works in respect of at least phonograms, computer programmes (1) and cinematographic works.
Article 18.9. Performers
Each Party shall provide performers with the exclusive right to authorise or prohibit:
(a) the fixation (2) of their performances;
(b) the direct or indirect, temporary or permanent reproduction by any means and in any form, in whole or in part, of fixations of their performances;
(c) any form of distribution to the public, by sale or other transfer of ownership, of the fixations of their performances;
(d) the making available to the public of fixations of their performances, by wire or wireless means, in such a way that members of the public may access them from a place and at a time individually chosen by them,
(e) the broadcasting by wireless means and the communication to the public of their performances, except where the performance is itself already a broadcast performance or is made from a fixation; and
(f) the commercial rental to the public of the fixation of their performances.
Article 18.10. Producers of Phonograms
Each Party shall provide producers of phonograms with the exclusive right to authorise or prohibit:
(a) the direct or indirect, temporary or permanent, reproduction by any means and in any form, in whole or in part, of their phonograms;
(b) any form of the distribution to the public, by sale or other transfer of ownership, of their phonograms;
(c) the making available to the public of their phonograms, by wire or wireless means, in such a way that members of the public may access them from a place and at a time individually chosen by them; and
(d) the commercial rental of their phonograms to the public.
Article 18.11. Broadcasting Organisations
Each Party shall provide broadcasting organisations with the exclusive right to authorise or prohibit:
(a) the fixation of their broadcasts, whether those broadcasts are transmitted by wire or over the air, including by cable or satellite;
(b) the direct or indirect, temporary or permanent reproduction by any means and in any form, in whole or in part, of fixations of their broadcasts, whether those broadcasts are transmitted by wire or over the air, including by cable or satellite;
(c) the making available to the public, by wire or wireless means, of fixations of their broadcasts, whether those broadcasts are transmitted by wire or over the air, including by cable or satellite, in such a way that members of the public may access them from a place and at a time individually chosen by them;
(d) the distribution to the public, by sale or otherwise, of fixations, including copies thereof, of their broadcasts, whether those broadcasts are transmitted by wire or over the air, including by cable or satellite; and
(e) the rebroadcasting of their broadcasts by wireless means, as well as the communication to the public of their broadcasts if such communication is made in places accessible to the public against payment of an entrance fee.
Article 18.12. Broadcasting and Communication to the Public of Phonograms Published for Commercial Purposes (1)
1. Each Party shall provide a right in order to ensure that a single equitable remuneration is paid by the user to the performers and producers of phonograms (2), if a phonogram published for commercial purposes, or a reproduction of such phonogram, is used for broadcasting or communication to the public. (3)
2. Each Party shall ensure that the single equitable remuneration is shared between the relevant performers and producers of phonograms. Each Party may enact legislation that, in the absence of an agreement between performers and producers of phonograms, sets the terms according to which performers and producers of phonograms shall share the single equitable remuneration.
Article 18.13. Term of Protection (1)
1. The rights of an author of a work shall run for the life of the author and for 70 years after the author's death, irrespective of the date when the work is lawfully made available to the public.
2. In the case of a work of joint authorship, the term of protection as specified in paragraph 1 shall be calculated from the death of the last surviving author.
3. In the case of anonymous or pseudonymous works, the term of protection shall run for 70 years after the work is lawfully made available to the public. However, if the pseudonym adopted by the author leaves no doubt as to the author's identity, or if the author discloses it during the period referred to in the first sentence of this paragraph, the term of protection applicable shall be that laid down in paragraph 1.
4. If a Party provides that the term of protection of a cinematographic or audio-visual work is calculated on a basis other than the life of a natural person, such term of protection shall be no less than 70 years from the date of the first lawful publication or the first lawful communication to the public, or, failing such lawful publication or lawful communication to the public within 70 years from the making of the work, 70 years from the making of the work.
5. The rights of broadcasting organisations shall expire 50 years after the first transmission of a broadcast, whether that broadcast is transmitted by wire or over the air, including by cable or satellite.
6. The rights of performers shall expire 50 years after the date of the fixation of the performance. However, if a fixation of the performance in a phonogram is lawfully published or lawfully communicated to the public within this period, the rights shall expire 70 years after the date of the first such publication or the first such communication to the public, whichever is the earlier.
7. The rights of producers of phonograms shall expire 50 years after the fixation is made. However, if the phonogram has been lawfully published or lawfully communicated to the public within this period, those rights shall expire 70 years from the date of the first such publication or the first such communication to the public. Each Party may adopt effective measures in order to ensure that the profit generated during the 20 years of protection beyond 50 years is shared fairly between the performers and the producers of phonograms.
8. The terms of protection laid down in this Article shall be calculated from the first day of January of the year following the event that gives rise to them.
9. Each Party may provide for longer terms of protection than those provided for in this Article.
Article 18.14. Resale Right (1)
1. Each Party shall provide, for the benefit of the author of an original work of graphic or plastic art, a resale right, to be defined as an inalienable right, which cannot be waived, even in advance, to receive a royalty based on the sale price obtained for any resale of the work, subsequent to the first transfer of the work by the author.
2. The resale right referred to in paragraph 1 shall apply to all acts of resale involving art market professionals, such as salesrooms, art galleries and, in general, any dealers in works of art as sellers, buyers or intermediaries.
3. Each Party may provide that the resale right referred to in paragraph 1 shall not apply to acts of resale if the seller has acquired the work directly from the author less than three years before that resale and where the resale price does not exceed a certain minimum amount.
4. The procedure for collection of the remuneration and its amount shall be a matter for determination by the law of each Party.
Article 18.15. Collective Management of Rights
1. The Parties recognise the importance of, and shall endeavour to promote, cooperation between their respective collective management organisations for the purpose of fostering the availability of works and other protected subject matter in their respective territories and the transfer of rights revenue between the respective collective management organisations for the use of such works or other protected subject matter.
2. The Parties recognise the importance of, and shall endeavour to promote, transparency of collective management organisations, in particular regarding the rights revenue they collect, the deductions they apply to the rights revenue they collect, the use of the rights revenue collected, the distribution policy and their repertoire.
3. Where a collective management organisation established in the territory of one Party represents another collective management organisation established in the territory of the other Party by way of a representation agreement, the Parties recognise that it is important that the representing collective management organisation:
(a) does not discriminate against right holders of the represented collective management organisation;
(b) accurately, regularly and diligently pays amounts owed to the represented collective management organisation; and
(c) provides the represented collective management organisation with the information on the amount of rights revenue collected on its behalf and any deductions from that amount of rights revenue.
Article 18.16. Limitations and Exceptions
Each Party shall provide for limitations or exceptions to the rights set out in Articles 18.8 (Authors) to 18.12 (Broadcasting and communication to the public of phonograms published for commercial purposes) only in certain special cases which do not conflict with a normal exploitation of the work or other subject matter and do not unreasonably prejudice the legitimate interests of the right holder.
Article 18.17. Protection of Technological Measures (1)
1. Each Party shall provide adequate legal protection against the circumvention of any effective technological measures which the person concerned carries out in the knowledge, or with reasonable grounds to know, that they are pursuing such objective.
2. Each Party shall provide adequate legal protection against:
(a) a person manufacturing, importing, distributing, selling, renting or advertising for sale or rental any device, product or component that:
(i) has only a limited purpose or use other than to circumvent any technological measure; or
(ii) is primarily designed, produced, adapted or performed for the purpose of enabling or facilitating the circumvention of any technological measure; and
(b) a person providing any service that is promoted, advertised or marketed for the purpose of enabling or assisting in the circumvention of any technological measure.
3. For the purposes of this Sub-Section, the term "technological measures" means any technology, device or component that, in the normal course of its operation, is designed to prevent or restrict acts, in respect of works or other protected subject matter, which are not authorised by the right holder of any copyright or related rights covered by this Sub-Section.
4. A Party may adopt or maintain appropriate measures, as necessary, to ensure that the adequate legal protection pursuant to paragraphs 1 and 2 of this Article does not prevent beneficiary persons from enjoying the limitations and exceptions provided for in accordance with
Article 18.16. Limitations and Exceptions
Each Party shall provide for limitations or exceptions to the rights set out in Articles 18.8 (Authors) to 18.12 (Broadcasting and communication to the public of phonograms published for commercial purposes) only in certain special cases which do not conflict with a normal exploitation of the work or other subject matter and do not unreasonably prejudice the legitimate interests of the right holder.
Article 18.17. Protection of Technological Measures (1)
1. Each Party shall provide adequate legal protection against the circumvention of any effective technological measures which the person concerned carries out in the knowledge, or with reasonable grounds to know, that they are pursuing such objective.
2. Each Party shall provide adequate legal protection against:
(a) a person manufacturing, importing, distributing, selling, renting or advertising for sale or rental any device, product or component that:
(i) has only a limited purpose or use other than to circumvent any technological measure; or
(ii) is primarily designed, produced, adapted or performed for the purpose of enabling or facilitating the circumvention of any technological measure; and
(b) a person providing any service that is promoted, advertised or marketed for the purpose of enabling or assisting in the circumvention of any technological measure.
3. For the purposes of this Sub-Section, the term "technological measures" means any technology, device or component that, in the normal course of its operation, is designed to prevent or restrict acts, in respect of works or other protected subject matter, which are not authorised by the right holder of any copyright or related rights covered by this Sub-Section.
4. A Party may adopt or maintain appropriate measures, as necessary, to ensure that the adequate legal protection pursuant to paragraphs 1 and 2 of this Article does not prevent beneficiary persons from enjoying the limitations and exceptions provided for in accordance with Article 18.16 (Limitations and exceptions).
Article 18.18. Obligations Concerning Rights-management Information
1. Each Party shall provide adequate legal protection against any person knowingly performing without authority any of the following acts:
(a) the removal or alteration of any electronic rights-management information; or
(b) the distribution, importation for distribution, broadcasting, communication or making available to the public of works or other subject matter protected pursuant to this Sub-Section from which electronic rights-management information has been removed or altered without authority;
if such person knows, or has reasonable grounds to know, that by so doing they are inducing, enabling, facilitating or concealing an infringement of any copyright or related rights as provided by the law of a Party.
2. For the purposes of this Article, the term "rights-management information" means any information provided by right holders that identifies the work or other subject matter referred to in this Article, the author or any other right holder, or information about the terms and conditions of use of the work or other subject matter, and any numbers or codes that represent such information.
3. Paragraph 2 applies if any of the items of information as referred to in paragraph 2 is associated with a copy of, or appears in connection with the communication to the public of, a work or other subject matter referred to in this Article.
Subsection 2. TRADEMARKS
Article 18.19. Trademark Classification
Each Party shall maintain a trademark classification system that is consistent with the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, done at Nice on 15 June 1957, as amended on 28 September 1979.
Article 18.20. Signs of a Trademark
A trademark may consist of any signs, in particular words, including personal names, or designs, letters, numerals, colours, the shape of goods or of the packaging of goods, or sounds, provided that such signs are capable of:
(a) distinguishing the goods or services of one undertaking from those of other undertakings; and
(b) being represented on the respective trademark register of each Party in a manner that enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor.
Article 18.21. Rights Conferred by a Trademark
1. Each Party shall provide that a registered trademark confers on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties, not having the proprietors consent, from using in the course of trade:
(a) any sign that is identical with the registered trademark in relation to goods or services that are identical with those for which the trademark is registered; and
(b) any sign where, because of its identity with, or similarity to, the registered trademark and the identity or similarity of the goods or services covered by that registered trademark and the sign, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association between the sign and the registered trademark.
2. The proprietor of a registered trademark shall be entitled to prevent all third parties from bringing goods, in the course of trade, into the Party where the trademark is registered without being released for free circulation there, where such goods, including packaging, come from third countries and bear without authorisation a trademark that is identical to the trademark registered in respect of such goods, or that cannot be distinguished in its essential aspects from that registered trademark. (1)
3. The entitlement of the proprietor of a registered trademark referred to in paragraph 2 may lapse if, during the proceedings to determine whether the registered trademark has been infringed, evidence is provided by the declarant or the holder of the goods that the proprietor of the registered trademark is not entitled to prohibit the placing of the goods on the market in the country of final destination.
Article 18.22. Registration Procedure
1. Each Party shall provide for a system for the registration of trademarks in which each final negative decision taken by the relevant trademark administration, including partial refusal of registration, shall be communicated in writing to the relevant party, duly reasoned and subject to appeal.
2. Each Party shall provide for the possibility for third parties to oppose trademark applications or, where appropriate, trademark registrations. Such opposition proceedings shall be adversarial.
3. Each Party shall provide a publicly available electronic database of trademark applications and trademark registrations.
Article 18.23. Well-known Trademarks
For the purpose of giving effect to protection of well-known trademarks, as referred to in Article 6 of the Paris Convention and Article 16(2) and (3) 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 WIPO at the Thirty-Fourth Series of Meetings of the Assemblies of the Member States of WIPO on 20 to 29 September 1999.
Article 18.24. Exceptions to the Rights Conferred by a Trademark
1. 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, and may provide other limited exceptions, provided that such limited exceptions take account of the legitimate interests of the proprietor of the trademark and of third parties
2. The trademark shall not entitle the proprietor of the trademark to prohibit a third party from using, in the course of trade:
(a) the name or address of the third party;
(b) 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
(c) the trademark, where it is necessary to indicate the intended purpose of a good or service, in particular as accessories or spare parts, provided that the third party uses them in accordance with honest practices in industrial or commercial matters.
3. The trademark shall not entitle the proprietor of the trademark to prohibit a third party from using, in the course of trade, an earlier right that only applies in a particular locality if that right is recognised by the law of the Party in question and is used within the limits of the territory in which it is recognised.
Article 18.25. Grounds for Revocation
1. Each Party shall provide that a trademark shall be liable to revocation if, within a continuous period of time determined by the law of each Party (1), 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 continuous period of time referred to in the first sentence and the 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 time determined by the law of each Party (2) preceding the filing of the application for revocation, which began at the earliest on expiry of the continuous period of non-use, shall, however, be disregarded where preparations for the commencement or resumption occur only after the proprietor becomes aware that the application for revocation may be filed.
2. A trademark shall also be liable to revocation if, after the date on which it was registered:
(a) as a consequence of acts or inactivity of the proprietor of the trademark, the trademark has become the common name in the trade for a good or service in respect of which it is registered; or
(b) as a consequence of the use made of the trademark by the proprietor of the trademark or with the proprietor's consent in respect of the goods or services for which it is registered, the trademark is liable to mislead the public, particularly as to the nature, quality or geographical origin of those goods or services.
Article 18.26. Bad-faith Applications
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 also provide that such a trademark shall not be registered.
Subsection 3. DESIGNS
Article 18.27. Protection of Registered Designs
1. Each Party shall provide for the protection of independently created designs that are new or original. This protection shall be provided by registration and shall confer an exclusive right upon holders of such designs in accordance with this Sub-Section. For the purposes of this Article, a Party may consider that a design having individual character is original.
2. The holder of a registered design shall have the right to prevent third parties not having the holder's consent at least from making, offering for sale, selling, importing, exporting, stocking the product bearing and embodying the registered design, or using articles bearing or embodying the
protected design if such acts are undertaken for commercial purposes.1
1 A Party may satisfy Article 18.27 (Protection of registered designs), as regards exporting and stocking, by providing the holder of the registered design the right to prevent third parties from offering for sale or hire, or selling or hiring any article bearing or embodying that registered design in a way that gives rise to the exporting or stocking of that article.
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3. A Party may provide that a design applied to or incorporated in a product that constitutes a