(b)providing training, technical assistance, or capacity building to Parties and sharing information on these initiatives as provided for in Chapter 14 (Economic Cooperation);
(c) sharing information, where possible, on best practices, including those in relation to small and medium enterprises; and
(d) sharing information, where possible, on electronic procurement systems.
Article 11.5. Review
The Parties may review this Chapter within the period stipulated in Article 19.5 (General Review), with a view to improving this Chapter in the future to facilitate government procurement, as agreed by the Parties.
Article 11.6. Contact Points
Each Party shall, within 30 days of the date of entry into force of this Agreement for that Party, designate one or more contact points to facilitate cooperation and information sharing under this Chapter and notify the other Parties of the relevant details of that contact point or those contact points. Each Party shall promptly notify the other Parties of any change regarding the relevant details of its contact point or contact points.
Article 11.7. Non-Application of Dispute Settlement
No Party shall have recourse to dispute settlement under Chapter 16 (Dispute Settlement) for any matter arising under this Chapter.
Chapter 12. INTELLECTUAL PROPERTY RIGHTS
Section A. GENERAL PROVISIONS
Article 12.1. Definition
For the purposes of this Chapter, intellectual property embodies copyright and related rights, patents and utility models, trademarks, industrial designs, layout-designs (topographies) of integrated circuits, geographical indications, plant varieties and protection of undisclosed information.
Article 12.2. Objectives
The protection and enforcement of intellectual property rights should contribute to the promotion of trade, investment, technological innovation and to the transfer and dissemination of technology, to the mutual advantage of producers and users of technological knowledge and in a manner conducive to social and economic welfare, and to a balance of rights and obligations.
Article 12.3. Principles
1. Appropriate measures, provided that they are consistent with this Chapter, may be needed to prevent the abuse of intellectual property rights by right holders or the resort to practices that unreasonable restrain trade or adversely affect the international transfer of technology.
2. A Party may, in formulating or amending its laws and regulations, adopt measures necessary to protect public health and nutrition and to promote the public interest in sectors of vital importance to their socio-economic and technological development, provided that such measures are consistent with the provisions of this Chapter.
Article 12.4. Nature and Scope of Obligations
Each Party shall give effect to the provisions of this Chapter. A Party may, but shall not be obliged to, provide more extensive protection for or enforcement of, intellectual property rights under its laws and regulations than is required by this Chapter, provided that such protection or enforcement does not contravene the provisions of this Chapter. Each Party shall be free to determine the appropriate method of implementing the provisions of this Chapter within its own legal system and practice.
Article 12.5. International Agreements
1. The Parties reaffirm their obligations set out in the following multilateral agreements:
(a) TRIPS Agreement;
(b) the Patent Cooperation Treaty done at Washington on 19 June 1970, as amended on 28 September 1979 and modified on 3 February 1984 and 3 October 2001;
(c) the Paris Convention for the Protection of Industrial Property done at Paris on 20 March 1883, as revised at Stockholm on 14 July 1967 and amended on 28 September 1979;
(d) the Berne Convention for the Protection of Literary and Artistic Works done at Berne on 9 September 1886, as revised at Paris on 24 July 1971 and amended on 28 September 1979 (Berne Convention);
(e) the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks adopted at Madrid on 27 June 1989, as amended on 3 October 2006 and 12 November 2007;
(f) the WIPO Performances and Phonograms Treaty adopted in Geneva on 20 December 1996 (WPPT);
(g) the WIPO Copyright Treaty adopted in Geneva on 20 December 1996 (WCT);
(h) the Budapest Treaty on the International Recognition of the Deposit of Micro-organisms for the Purposes of Patent Procedure done at Budapest on 28 April 1977, as amended on 26 September 1980; and
(i) the Marrakesh Treaty to Facilitate Access to Published Works for Persons Who are Blind, Visually Impaired, or Otherwise Print Disabled adopted in Marrakesh on 27 June 2013 (Marrakesh Treaty).
2. Each Party shall endeavour to ratify or accede to the 1991 Act of International Convention for the Protection of New Varieties of Plants as revised at Geneva on 19 March 1991.
Article 12.6. Intellectual Property and Public Health
The Parties recognise the principles established in the Declaration on The TRIPS Agreement and Public Health adopted on 14 November 2001 (Doha Declaration) by the Ministerial Conference of the WTO and confirm that the provisions of this Chapter are without prejudice to the Doha Declaration.
Article 12.7. National Treatment
1. In respect of all categories of intellectual property covered in this Chapter, each Party shall accord to nationals of another Party treatment no less favourable than it accords to its own nationals with regard to the protection of intellectual property rights in accordance with Article 3(1) of TRIPS Agreement.
2. A Party may derogate from paragraph 1 in relation to its judicial and administrative procedures, including requiring a national of another 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 or regulations 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 12.8. Transparency
1. Each Party shall endeavour, subject to its laws and regulations, to make general information concerning application and registration of trademarks, geographical indications, industrial designs, patents and plant variety rights accessible for the general public.
2. The Parties also acknowledge the importance of informational materials, such as publicly accessible databases of registered intellectual property rights that assist in the identification of subject matter that has fallen into the public domain.
3. Each Party shall endeavour to make available such information in English language.
Article 12.9. Application of Chapter to Existing Subject Matter and Prior Acts
1. Unless otherwise provided, this Chapter gives rise to obligations in respect of all subject matter existing at the date of entry into force of this Agreement for a Party and that is protected on that date in the territory of a Party where protection is claimed, or that meets or comes subsequently to meet the criteria for protection under this Chapter without unreasonably impairing the fair interest of the third parties.
2. Unless provided in this Chapter, a Party shall not be required to restore protection to subject matter that on the date of entry into force of this Agreement for that Party has fallen into the public domain in its territory.
Article 12.10. Exhaustion of Intellectual Property Rights
Each Party shall be free to establish its own regime for exhaustion of intellectual property rights.
Section B. COOPERATION
Article 12.11. Cooperation Activities and Initiatives
1. The Parties shall endeavour to cooperate on the subject matter covered by this Chapter, such as through appropriate coordination, training and exchange of information between the respective intellectual property offices of the Parties, or other institutions, as determined by each Party.
2. Cooperation activities and initiatives undertaken under this Chapter shall be subject to the availability of resources and on request, and on terms and conditions mutually agreed upon between the Parties. Cooperation may cover areas such as:
(a) developments in intellectual property law and polices;
(b) training and capacity building programs;
(c) promoting the role of IP rights protection in innovation, technology transfer, commercialization of innovation;
(d) enforcement of intellectual property rights; and
(e) other areas of collaborations mutually agreed by the Parties.
Section C. TRADEMARKS
Article 12.12. Types of Signs Registrable as Trademarks
No Party shall require, as a condition of registration, that a sign be visually perceptible, nor shall a Party deny registration of a trademark only on the ground that the sign of which it is composed is a sound. Additionally, each Party shall make best efforts to register scent marks. A Party may require a concise and accurate description, or graphical representation, or both, as applicable, of the trademark.
Article 12.13. Collective and Certification Marks
Each Party shall provide that trademarks include collective marks and certification marks. A Party is not obligated to treat certification marks as a separate category in its laws and regulations, provided that those marks are protected. Each Party shall also provide that signs that may serve as geographical indications are capable of protection under its trademark system (1) in accordance with its laws and regulations.
Article 12.14. Use of Identical or Similar Signs
Each Party shall provide that the owner of a registered trademark has the exclusive right to prevent third parties that do not have the owner’s consent from using in the course of trade identical or similar signs, including subsequent geographical indications, (2), (3) for goods or services that are related to those goods or services in respect of which the owner’s 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.
Article 12.15. Exceptions
A Party may provide limited exceptions to the rights conferred by a trademark, such as fair use of descriptive terms, provided that those exceptions take account of the legitimate interest of the owner of the trademark and of third parties.
Article 12.16. Well-Known Trademarks
1. No Party shall require as a condition for determining that a trademark is well-known that the trademark has been registered in the Party or in another jurisdiction, included on a list of wellknown trademarks, or given prior recognition as a well-known trademark.
2. Article 6 bis of the Paris Convention shall apply, mutatis mutandis, to goods or services that are not identical or similar to those identified by a well-known trademark, (4) whether registered or not, provided that use of that trademark in relation to those goods or services would indicate a connection between those goods or services and the owner of the trademark and provided that the interests of the owner of the trademark are likely to be damaged by such use.
3. 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 September 20 to 29, 1999.
4. Each Party shall provide for appropriate measures to refuse the application or cancel the registration and prohibit the use of a trademark that is identical or similar to a well-known trademark (5), for identical or similar goods or services, if the use of that trademark is likely to cause confusion with the prior well-known trademark. A Party may also provide such measures including in cases in which the subsequent trademark is likely to deceive.
Article 12.17. Procedural Aspects of Examination, Opposition and Cancellation
Each Party shall provide a system for the examination and registration of trademarks which includes among other things:
(a) communicating to the applicant in writing, which may be by electronic means, the reasons for any refusal to register a trademark;
(b) providing the applicant with an opportunity to respond to communications from the competent authorities, to contest any initial refusal and to make a judicial appeal of any final refusal to register a trademark;
(c) providing an opportunity to oppose the registration of a trademark or to seek cancellation of a trademark; and
(d) requiring administrative decisions in opposition and cancellation proceedings to be reasoned and in writing, which may be provided by electronic means.
Article 12.18. Electronic Trademarks System
Each Party shall provide –
(a) a system for the electronic application for and maintenance of, trademarks; and
(b) a publicly available electronic information system, including an online database, of trademark applications and of registered trademarks.
Article 12.9. Classification of Goods and Services
Each Party shall adopt or 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 on 15 June 1957, as revised and amended (Nice Classification). Each Party shall provide that –
(a) registrations and the publications of applications indicate the goods and services by their names, grouped according to the classes established by the Nice Classification (6); and
(b) goods or services may not be considered as being similar to each other on the ground that, in any registration or publication, they are classified in the same class of the Nice Classification. Conversely, each Party shall provide that goods or services may not be considered as being dissimilar from each other on the ground that, in any registration or publication, they are classified in different classes of the Nice Classification.
Article 12.20. Term of Protection for Trademarks
Each Party shall provide that initial registration and each renewal of registration of a trademark is for a term of no less than 10 years.
Article 12.21. Non-Recordal of a License
No Party shall require recordal of trademark licenses:
(a) to establish the validity of the license; or
(b) as a condition for use of a trademark by a licensee to be deemed to constitute use by the holder in a proceeding that relates to the acquisition, maintenance or enforcement of trademarks.
Article 12.22. Domain Names
In connection with each Party’s system for the management of its country-code top-level domain (ccTLD) domain names, the following shall be available:
(a) an appropriate procedure for the settlement of disputes, based on, or modelled along the same lines as, the principles established in the Uniform Domain-Name Dispute Resolution Policy, as approved by the Internet Corporation for Assigned Names and Numbers (ICANN) or that:
(i) is designed to resolve disputes expeditiously and at low cost;
(ii) is fair and equitable;
(iii) is not overly burdensome; and
(iv) does not preclude resort to judicial proceedings; and
(b) online public access to a reliable and accurate database of contact information concerning domain name registrants, in accordance with each Party’s laws and regulations and, if applicable, relevant administrator policies regarding the protection of privacy and personal data.
Section D. COUNTRY NAMES
Article 12.23. Country Names
Each Party shall provide the legal means for interested persons to prevent commercial use of the country name of a Party in relation to a good in a manner that misleads consumers as to the origin of that good.
Section E. GEOGRAPHICAL INDICATIONS
Article 12.24. Protection of Geographical Indications
1. Geographical indication means an indication that identifies a good as originating in the territory of a Party, or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin.
2. The Parties reaffirm that geographical indications may be protected through a trademark or sui generis system or other legal means.
3. The Parties shall provide administrative procedures for the registration or recognition of geographical indications through a trademark or a sui generis system. The Parties shall, with respect to applications for that registration or requests for the recognition, ensure that its laws and regulations governing the filing of those applications or requests are readily available to the public and clearly set out the procedures for these actions.
4. If a Party grants protection to a geographical indication, the protection shall commence no earlier than the filing date (7) or the registration date in that Party according to the laws and regulations of each Party.
Section F: Patents (8)
Article 12.25. Grace Period for Patents
Each Party shall disregard information contained in public disclosure of a patent related to an application to register a patent if the public disclosure:
(a) was made by the inventor, applicant or a person that obtained the information from the inventor or applicant inside or outside the territory of each Party; and
(b) occurred within at least 12 months prior to the date of filing of the application.
Article 12.26. Procedural Aspects of Examination, Opposition and Invalidation of Certain Registered Patent
Each Party shall provide a system for the examination and registration of patents which includes among other things:
(a) communicating to the applicant in writing, which may be by electronic means, the reasons for any refusal to register patent;
(b) providing the applicant with an opportunity to respond to communications from the competent authorities, to contest any initial refusal and to make a judicial appeal of any final refusal to register patent;
(c) providing an opportunity for interested parties to seek cancellation or invalidation of a registered patent and in addition may provide an opportunity for interested parties to oppose the registration of patent; and
(d) making decisions in opposition, cancellation, or invalidation proceedings to be reasoned and in writing, which may be delivered by electronic means.
Article 12.27. Amendments, Corrections and Observations
1. Each Party shall provide an applicant for patent with at least one opportunity to make amendments, corrections or observations in connection with its application.
2. Each Party shall provide a right holder of patent with opportunities to make amendments or corrections after registration provided that such amendments or corrections do not change or expand the scope of the patent right as a whole. (9)
Article 12.28. Exceptions
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 right holder, taking account of the legitimate interests of third parties.
Section G. Industrial Design
Article 12.29. Industrial Design Protection
1. Each Party shall ensure that requirements for securing or enforcing registered industrial design protection do not unreasonably impair the opportunity to obtain or enforce such protection.
2. Each Party shall ensure adequate and effective protection of industrial designs and also 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.
3. The duration of protection available for registered industrial designs shall amount to at least 20 years from the date of filing.
4. This Article is subject to Articles 25 and 26 of the TRIPS Agreement.
Article 12.30. Grace Period for Industrial Design
Each Party shall disregard information contained in public disclosure of a design related to an application to register an industrial design if the public disclosure—
(a) was made by the designer, applicant or a person that obtained the information from the designer or applicant inside or outside the territory of each Party; and
(b) occurred within at least 6 months prior to the date of filing of the application.
Article 12.31. Procedural Aspects of Examination, Opposition and Invalidation of Certain Registered Industrial Design
Each Party shall provide a system for the examination and registration of industrial designs which includes among other things:
(a) communicating to the applicant in writing, which may be by electronic means, the reasons for any refusal to register industrial design;
(b) providing an opportunity for interested parties to seek cancellation or invalidation of a registered industrial design and in addition may provide an opportunity for interested parties to oppose the registration of industrial design; and