EU-Thailand FTA - IP chapter (draft Sep 2013)

EU RESTRICTED
Without prejudice

EU Draft
September 2013

INTELLECTUAL PROPERTY

Article 1
Objectives

The objectives of this chapter are to:

(a) facilitate the production and commercialization of innovative and creative products between the Parties contributing to more sustainable and inclusive economy for the Parties; and

(b) achieve an adequate and effective level of protection and enforcement of intellectual property rights

Sub-Section 1
Principles

Article 2
Nature and scope of Obligations

1. The Parties shall ensure an adequate and effective implementation of the international treaties dealing with intellectual property to which they are parties including the WTO Agreement on Trade-related Aspects of Intellectual Property (hereinafter called TRIPS Agreement). The provisions of this chapter shall complement and further specify the rights and obligations between the parties under the TRIPS Agreement and other international treaties in the field of intellectual property.

2. For the purpose of this Agreement, intellectual property refers at least to all categories of intellectual property that are the subject of articles 4 to 11 of this Agreement. Protection of intellectual property includes protection against unfair competition as referred to in Article 10bis of the Paris Convention for the Protection of Industrial Property (Stockholm Act 1967).

Article 3
Exhaustion

Each Party shall provide for a regime of national or regional exhaustion of intellectual property rights.

Sub-Section 2
Standards Concerning Intellectual Property Rights

Article 4
Copyright and Related Rights

Article 4.1-Protection Granted

The Parties:
-  shall comply with the rights and obligations set out in the Berne Convention for the Protection of Literary and Artistic Work the Rome Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations and the TRIPS Agreement.
-  shall accede to the WIPO Copyright Treaty-WCT and the WIPO Performances and Phonograms Treaty-WPPT

Article 4.2-Authors

The Parties shall provide for authors the exclusive right to authorise or prohibit:
- direct or indirect, temporary or permanent reproduction by any means and in any form, in whole or in part of their works;
- any form of distribution to the public by sale or otherwise of the original of their work or of copies thereof;
- any communication to the public of their work, by wire or wireless means, including the making available to the public of their work in such a way that members of the public may access them from a place and at a time individually chosen by them.

Article 4.3-Performers

The Parties shall provide for performers; the exclusive right to:
- authorise or prohibit the fixation [1] of their performances;
- authorise or prohibit direct or indirect, temporary or permanent reproduction by any means and in any form, in whole or in part of fixation of their performances;
- make available to the public, by sale or otherwise, fixation of their performances;
- authorise or prohibit the making available to the public, 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 of fixation of performances;
- authorize or prohibit 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.

Article 4.4-Producers of phonograms

The Parties shall provide for phonogram producers the exclusive right to:
- authorise or prohibit direct or indirect, temporary or permanent reproduction by any means and in any form, in whole or in part of their phonograms;
- make available to the public, by sale or otherwise, their phonograms, including copies thereof;
- authorise or prohibit the making available to the public, 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 their phonograms;

Article 4.5-Broadcasting organizations

Each Party shall provide broadcasting organization with the exclusive right to authorise or prohibit:
- the fixation of their broadcasts;
- the reproduction of fixation of their broadcasts;
- the making available to the public, by wire or wireless means, of fixation of their broadcasts; and
- 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 4.7-Term of protection

1. The rights of an author of a literary or artistic work within the meaning of Article 2 of the Berne Convention shall run for the life of the author and for 70 years after his death, irrespective of the date when the work is lawfully made available to the public.

2. The term of protection of a musical composition with words shall expire 70 years after the death of the last of the following persons to survive, whether or not those persons are designated as co-authors: the author of the lyrics and the composer of the musical composition, provided that both contributions were specifically for the respective musical composition with words.

3. The rights of performers shall expire not less than 50 years after the date of the performance. However,
- if a fixation of the performance otherwise than in a phonogram is lawfully published or lawfully communicated to the public within this period, the rights shall expire 50 years from the date of the first such publication or the first such communication to the public, whichever is the earlier,
- 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 from the date of the first such publication or the first such communication to the public, whichever is the earlier.

4. The rights of producers of the phonograms shall expire 50 years after the fixation is made However, if the phonogram has been lawfully published within this period, the said rights shall expire 70 years from the date of the first lawful publication. If no lawful publication has taken place within the period mentioned in the first sentence, and if the phonogram has been lawfully communicated to the public within this period, the said right shall expire 70 years from the date of the first lawful communication to the public. However, if 50 years after the phonogram was lawfully published or, failing such publication, 50 years after it was lawfully communicated the public the phonogram producer does not offer copies of the phonogram for sale in sufficient quantity or does not make it available to the public, the performer may terminate the contract by which the performer ha transferred or assigned his rights to the phonogram producer. If the contract on transfer or assignment is terminated, the rights of the phonogram producer in the phonogram shall expire.

5. The rights of broadcasting organization shall expire not less than 50 years after the first transmission of a broadcast, whether this broadcast is transmitted by wire or over the air, including by cable or satellite.

6. The terms laid down in this Article shall be calculated from the first of January of the year following the event which gives rise to them.

Article 4.8-Protection of Technological Measures

1. The Parties 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 ground to know, that he or she is pursuing that objective.

2. The Parties shall provide adequate legal protection against the manufacture, import, distribution, sale, rental advertisement for sale or rental, or possession for commercial purposes of devices, products or components or the provision of services which:

(a) are promoted, advertised or marketed for the purpose of circumvention of, or

(b) have only a limited commercially significant purpose or use other than to circumvent, or

(c) are primarily designed, produced, adapted or performed for the purpose of enabling or facilitation the circumvention of, any effective technological measures.

3. For the purposes of this Agreement, the expression ‘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 subject-matter, which are not authorized by the right holder of any copyright or related right as provided for by national legislation.

Technological measures shall be deemed ‘effective’ where the use of a protected work or other subject matter is controlled by the right holders through application of an access control or protection process, such as encryption, scrambling or other transformation of the work or other subject-matter or a copy control mechanism, which achieves the protection objective.

Article 4.9-Protection of Rights Management Information

1. The parties shall provide adequate protection against any person knowingly performing without authority of the following acts:

(a) the removal or alteration of any electronic rights-management information;

(b) the distribution, importation or distribution, broadcasting, communication or making available to the public of work or other subject-matter protected under this Agreement 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 he is inducing, enabling, facilitating or concealing an infringement of any copyright or any related rights as provided by national legislation.

2. For the purposes of this Agreement, the expression ‘rights-management information’ means any information provided by right holders which identifies the work or other subject-matter referred to in this Agreement, the author or any other right holder, or information about the terms and conditions of use of the work or other subject-matter, and number or codes that represent such information.

3. Paragraph 2, shall apply when any of these items of information is associated with a copy of, or appears in connection with the communication to the public of work or other subject-matter referred to in this Agreement

Article 4.10-Exception and limitations

1. The parties may provide for limitation or exception to the rights set out in the Article [4.2-4.7] only in certain special cases which do not conflict with a normal exploitation of the subject matter and do not unreasonably prejudice the legitimate interests of the right holders in accordance with the conventions and international Treaties to which they are Parties.

2. The Parties shall provide that temporary acts of reproduction referred to in Articles 4.3 to 4.6, which are transient or incidental, which are in an integral and essential part of a technological process and the sole purpose of which is to enable

(a) a transmission in a network between third parties by an intermediary, or

(b) a lawful use of a work or other subject-matter to be made, and which have no independent economic significance, shall be exempted from the reproduction right provide for in Article 4.3 to 4.6.

Article 4.11-Artists, Resale Right in Work of Art

1. The parties shall provide, for the benefit of the author of an original work of 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 right referred to in paragraph 1 shall apply to all acts of resale involving as sellers, buyers or intermediaries art market professional, such as salesrooms, art galleries and, in general, any dealers in work of art.

3. The Parties any provide that the right referred to in paragraph 4 shall not apply to acts of resale where 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 royalty shall be payable by the seller. The Parties may provide that one of the natural or legal persons referred to in paragraph 2 other than the seller shall alone be liable or shall share liability with the seller for payment of the royalty

5. The protection provided may be claimed to extent permitted by the party where this protection is claimed. The procedure for collection and the amounts shall be a matter for determination by national legislation.

Article 4.12- Co-operation on Collective Management of Rights

The Parties shall endeavor to promote dialogue and cooperation between their respective collective management societies for the purpose of promoting the availability of work and other protected subject matter in the territories of the Parties and the transfer of royalties for the use of such works or protected subject matter.

Article 5
Trademarks

Article 5.1-International Agreement

The European Union and Thailand:
- shall accede to the related to the Madrid Agreement concerning the International Registration of Marks,
- shall comply with the Trademark Law Treaty and with the Nice Agreement Concerning the International Classification of Good and Services for the Purposes of the Registration of Marks, and
- shall make all reasonable efforts to accede to the Singapore Treaty on the Law of Trademarks.

Article 5.2- Right conferred by a trademark

The registered trademark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third not having his consent from using in the course of trade:

(a) any sign which is identical with the trade mark in relation to goods or service which are identical with those for which the trade mark is registered;

(b) any sign where, because of its identity with, or similarity to the trade mark and the identity or similarity of the goods or service covered by the trade mark 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 trademark.

Article 5.3 Registration Procedure

The Parties shall provide for a system for the registration of trademarks, in which each final negative decision taken by the relevant trademark administration shall be communicated in writing and duly reasoned.

The European Union and Thailand shall provide for the possibility to oppose Trademark application. Such opposition proceedings shall be adversarial.

The Parties shall provide a publicly available electronic database of trademark applications and trademark registration.

Article 5.4- Well-known Trademarks

For the purpose of giving effect to protection of well-known trademarks, as referred to in Article 6bis of Paris Convention (1967) and Article 16(2) and (3) of the TRIPS Agreement, the Parties shall apply the Joint adopted by the assembly of the Parties Union for the protection of Industrial Property and the General Assembly of the World Intellectual Property Organization (WIPO) at the Thirty-Fourth Series of Meeting of the Assembles of the Member States of WIPO (September 1999).

Article 5.5-Exceptions to the Rights Conferred by a Trademark

The Parties shall provide for limited exceptions to the rights conferred by a trademark such as the fair use of descriptive terms and such as in the case of geographical indication, and they may provide other limited exception, provide such exceptions take account of the legitimate interests of the owner of the trademark and of third parties.

Article 5.6-Grounds for revocation

1. The Parties shall provide that a trademark shall liable to revocation if, within continuous period of five years, it has not been put to genuine use in the relevant territory in connection with the goods or 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 right in a trade mark should be revoked where, during the interval between expiry of the five-year period and filing of the application for revocation, genuine use of the mark has been started or resumed; the commencement or resumption of use within a period of three months preceding the filing of the application for revocation which began at the earliest on expiry of disregarded where preparation for the commencement or resumption occur only after the proprietor becomes aware that the application for revocation may be filed.

2. A trade mark shall also be liable to revocation if, after the date on which it was registered:

(a) in consequence of acts or inactivity of the proprietor, it has become the common name in the trade for a product or service in respect of which it is registered,;

(b) in consequence of the use made of it by the proprietor of the trade mark or with this consent in respect of the goods or services for which it is registered, it is liable to mislead the public, particularly as to the nature, quality or geographical origin of goods or services.

Article 6
Geographical Indications

[text sent already ahead of the Round 1 to be integrated into the IPR Chapter]

Article 7
Designs

Article 7.1-International Agreements

The European Union and Thailand shall accede to the Geneva Act to the Hague Agreement Concerning the International Registration of Industrial Designs (1999).

Article 7.2- Protection of Registered Designs

1. The European Union and Thailand shall provide for the protection of independently created designs that are new and are original [2]. This protection shall be provided by registration and shall confer an exclusive right upon their holders in accordance with the provisions of this article.

2. A design applied to or incorporated in a product which constitutes a component part of a complex product shall only be considered to be new and original:

(a) if the component part, once it has been incorporated into the complex product, remains visible during normal use of the latter, and

(b) to the extent that those visible features of the component part fulfill in themselves the requirements as to novelty and originality.

3. “Normal use” within the meaning of paragraph 2(a) shall mean use by the end user, excluding maintenance, servicing or repair work.

4. The holder of a registered design shall have the right to prevent third parties not having the owner’s consent at least from making, offering for sale, selling importing, exporting, stocking such a product or using article bearing or embodying the protected design when such act are undertaken for commercial purposes, unduly prejudice the normal exploitation of the design, or are not compatible with fair trade practice.

5. The duration of protection available shall amount to 25 years.

Article 7.3-Protection conferred to Unregistered Designs

1. The European Union and Thailand shall provide the legal means to prevent the use of the unregistered appearance of a product, only if the contested use results from copying the unregistered appearance of the product. Such use shall at least cover offering for sale, putting on the market, importing or exporting the product.

2. The duration of protection available for the unregistered appearance of a product shall amount to at least three years from the date on which the design was made available to the public in one of the signatories.

Article 7.4-Exception and Exclusions

1. The Parties may provide limited exceptions to the protection of designs, provided that such exceptions do not unreasonably conflict with the normal exploitation of protected 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.

2. Design protection shall not extend to designs dictated essentially by technical or functional considerations. In particular a design right shall not subsist in features of appearance of a product which must necessarily be reproduced in their exact form and dimensions in order to permit the product in which the design incorporated or to which it is applied to be mechanically connected to or placed in, around or against another product so that either product may perform its function.

Article 7.5-Relationship to copyright

A design shall also be eligible for protection under the law of copyright of that Party as from the date on which, design was created or fixed in any from. The extent to which , and the conditions under which, such a protection is conferred, including the level of originality required, shall be determined by each Party.

Article 8
Patents and related issues

Article 8.1-International Agreements

The Parties reaffirm their commitments under the Patent Co-operation Treaty and make all reasonable efforts to comply with the Patent Law Treaty.

Article 8.2-Rules on patent Applications

1. The Parties shall make all reasonable efforts to limit the average duration of the examination procedure for patents to […] years, calculated from the date of filing of the patent application to the granting of the patent. In calculating the average period the time involved in considering appeal proceedings, if any, should be excluded.

2. The Parties shall ensure that an applicant, or its successor, is at least entitled to claim reasonable compensation, from the date of publication of the patent application, from any person who has infringed any of its claims, as granted, in accordance whit domestic law. The infringed claims whose scope has been extended after the publication of the application shall not be taken into account.

Article 8.3-Patents and Public Health

1. Nothing in this Agreement shall be construed so as to impair use of the exceptions and flexibilities permitted by multilateral intellectual property agreements, particularly when adopting measures necessary to protect public health, and to guarantee access to medicines.

2. The Parties recognize the importance of the Doha Declaration on the TRIPS Agreement and Public Health adopted on 14 November 2011 by the Ministerial Conference of the World Trade Organization. In interpreting and implementing the rights and obligations under this Chapter, the Parties shall ensure consistency with this Declaration.

3. The Parties shall contribute to the implementation and respect the Decision of the WTO General Council of 30 August 2003 on Paragraph 6 of the Doha Declaration on the TRIPS Agreement and Public Health.

4. The Parties also recognize the importance of promoting the implementation of Resolution WIIA 61.21 Global Strategy and Plan of Action on Public Health, Innovation and Intellectual property, adopted by the World Health Assembly on 24 of May 2008.

Article 8.4- Patents for Pharmaceutical [3] Products

1. Subject to paragraph 2, the Parties shall commit to the average duration of the examination procedure for pharmaceutical patents to […] years calculated from the date of filing of the patent application to the granting of the patent. In calculating the average period the time involved in appeal proceedings, if any, should be excluded. The Parties shall provide for an adequate and effective mechanism to compensate the patent owner for the delays in granting the patent beyond the above period, which may be in the form of a reasonable extension of the duration of the rights conferred by the patent protection.

As the Parties recognize that pharmaceutical products protected by a patent on their respective territory are generally subject to an administrative authorisation procedure before being put on their market, hereinafter referred to as the “marketing authorisation procedure ”, they shall also provide for an adequate and effective mechanism to compensate the patent owner for the reduction in the effective patent life resulting from the first marketing authorization process in the respective territories [4]. Such compensation may be in the form of a reasonable extension of the duration of the rights conferred by the patent protection.

2. Alternatively to paragraph 1 of this Article, a Party may make ayailable an extension, not exceeding five years [5], of the duration of the rights conferred by the patent protection to compensate the patent owner for the reduction in the effective patent life as a result of the marketing authorisation procedure. The duration of the extension shall take effect at the end of the lawful term of the patent for a period equal to the period which elapsed between the date on which the application for a patient was filed and the date of the first marketing authorization to place the product on the market in the party, reduced by a period of five years.

Article 8.5 – Public-private cooperation on public health

In order to facilitate access to medicines, the Parties shall encourage negotiation between public entities and right holders, and projects on access to medicines launched by pharmaceutical industry itself aiming at providing access to medicines for the Parties’ populations.

Article 8.6 – Protection of Data Submitted to Obtain a Marketing Authorisation for a
Pharmaceutical Product

1. The Parties shall ensure that any information submitted to obtain a marketing authorisation to put pharmaceutical product on the market will remain undisclosed to third parties.

2. During a period of at least […] years, starting from the date of grant of the marketing authorisation in the Party concerned no person or entity (public or private), other than the person or entity who submitted such undisclosed data, will without the explicit consent of the person or entity who submitted this data, rely directly or indirectly on such data in support of an application for the administrative authorization to put a pharmaceutical product on the market.

3 In addition, the […] year period referred to shall be extended to maximum of […] years if, during the first […] years after obtaining the authorization, the holder of the basic authorisation obtains an authorization for one or more new therapeutic indications which are considered of significant clinical benefit in comparison with existing therapies.

4. The Parties may exclude essential medicines as provided for by the latest WHO Model List of Essential Medicines from the coverage of this Article, subject to the relevant obligations of the TRIPS agreement.

Article 8.7 – Marketing Authorisation for a Plant Protection Product

1. The Parties recognise that plant protection products protected by a patent on their respective territory are generally subject to a marketing authorization procedure before being put on their market. They recognise that the period that elapses between the filing of the application for a patent and the first authorisation to place the product on their respective market, as defined for that purpose by the relevant legislation, may shorten the period of effective protection under the patent.

2. The parties shall provide for a further period of protection for a plant protection product which is protected by a patent and which has been subject to a marketing authorisation procedure, that period being equal to the period referred to in paragraph 1 second sentence above, reduced by a period of five years.

3. Notwithstanding paragraph 2, the duration of the further period of protection may not exceed five years.

Article 8.8 – Protection of Data Submitted to Obtain a Marketing Authorisation for Plant Protection Products.

1. The Parties shall determine safety and efficacy requirements before authorising the placing on the market of plant protection products.

2. The Parties shall recognise a temporary right to the owner of a test or study report submitted for the first time to achieve a marketing authorisation for a plant protection product. During such period, the test or study report will not be used for the benefit of any other person aiming to achieve a marketing authorisation for plant protection product, except when the explicit consent of the first owner is proved.

3. The test or study report should fulfill the following conditions:

(a) be necessary for the authorisation or for an amendment of a marketing authorisation in order to allow the use on other crops, and

(b) be certified as compliant with the principles of good laboratory practice or of good experimental practice.

4. The period referred to in paragraph 2 shall be at least ten years from the first marketing authorisation in that Party. In case of low risk plant protection products the period can be extended to 13 years.

5. Those periods shall be extended by three months for each extension of authorisation for minor uses if the applications for such authorisations are made by the authorisation holder at the latest five years after the date of the first authorisation. The total period of data protection may in no case exceed 13 years. For low risk plant protection products the total period of data protection may in no case exceed 15 years.

6. A test or study shall also be protected if it was necessary for the renewal or review of an authorisation. In those cases, the period for data protection shall be 30 months.

Article 9
Plant Varieties

The Parties shall protect plant varieties rights, in accordance with the International Convention for the Protection of New Varieties of Plants (UPOV) as lastly revised in Geneva on March 19, 1991, (the so-called "1991 UPOV ACT") including the exceptions to the breeder’s right as referred to in Article 15 of the said Convention, and co-operate to promote and enforce these rights.

Sub-Section 3
Enforcement of Intellectual Property Rights

Article 12
General Obligations

1. The Parties reaffirm their commitments under the TRIPS Agreement and in particular of its Part III, .and shall provide for the following complementary measures, procedures and remedies necessary to ensure the enforcement of intellectual property rights [6]. Those measures, procedures and remedies shall be fair and equitable, and shall not be unnecessarily complicated or costly, or entail unreasonable time-limits or unwarranted delays.

2. Those measures and remedies shall also be effective, proportionate and dissuasive and shall be applied in such a manner as to avoid the creation of barriers to legitimate trade and to provide for safeguards against their abuse.

Article 13
Entitled Applicants

The Parties shall recognise as persons entitled to seek application of the measures, procedures and remedies referred to in this section and in Part III of the TRIPS Agreement:

(a) The holders of intellectual property rights in accordance with the provisions of the applicable law,

(b) all other persons authorised to use those rights, in particular license, in so far as permitted by and in accordance with the provisions of the applicable law,

(c) intellectual property collective rights management bodies which are regularly recognized as having a right to represent holders of intellectual property rights, in so far as permitted by and in accordance with the provisions of the applicable law,

(d) professional defence bodies which are regularly recognised as having a right to represent holders of intellectual property rights, in so far as permitted by and in accordance with the provisions of the applicable law,

Sub-Section 3.1
Civil Enforcement

Article 14
Measures for preserving Evidence

1. The Parties shall ensure that, even before the commencement of proceedings on the merits of the case, the competent judicial authorities may, on application by a party who has presented reasonably available evidence to support his claims that his intellectual property right has been infringed or is about to be infringed, order prompt and effective provisional measures to preserve relevant evidence in respect of the alleged infringement, subject to the protection of confidential information.

2. Such measures may include the detailed description, with or without the taking of samples, or the physical seizure of the alleged infringing goods, and, in appropriate cases, the materials and implements used in the production and/or distribution of these goods and the documents relating thereto. Those measures shall be taken, if necessary without the other party being heard, 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.

Article 15
Right of information

1. Each Party shall ensure that , during civil proceedings concerning an infringement of an intellectual property right and in response to a justified and proportionate request of the claimant, the competent judicial authorities may order the infringer and/or any other person which is party to a litigation or a witness therein to provide information on the origin and distribution networks of the goods or services which infringe an intellectual property right.

(a) ‘Any other person’ in this paragraph means a person who:

  • (i) was found in possession of the infringing goods on a commercial scale;
  • (ii) was found to be using the infringing services on a commercial scale;
  • (iii) was found to be providing on a commercial scale services used in infringing activities; or
  • (iv) was indicated· by the person referred to in this subparagraph as being involved in the production, manufacture or distribution of the goods or the provision of the services.

(b) Information shall, as appropriate, comprise:

  • (i) the names and addresses of the producers, manufacturers, distributors, suppliers and other previous holders of the goods or services, as well as the intended wholesalers and retailers; or
  • (ii) information on the quantities produced, manufactured, delivered, received or ordered, as well as the price obtained for the goods or services in question.

2. This Article shall apply without prejudice to other statutory provisions which:

(a) grant the right holder rights to receive fuller information;

(b) govern the use in civil or criminal proceedings of the information communicated pursuant to this Article;

(c) govern responsibility for misuse of the right of information;

(d) afford an opportunity for refusing to provide information which would force the person referred to in paragraph 1 to admit his own participation or that of his close relatives in an infringement of an intellectual property right; or

(e) govern the protection of confidentiality of information source or the processing of personal data.

Article 16
Provisional and Precautionary Measures

1. The Parties shall ensure that the judicial authorities may, at the request of the applicant, issue against the alleged infringer an interlocutory injunction intended to prevent any imminent infringement of an intellectual property right, or to forbid, on a provisional basis and subject, where appropriate, to a recurring penalty payment where provided for by domestic law, the continuation of the alleged infringements of that right, or to make, such continuation subject to the lodging of guarantees intended to ensure the compensation of the right holder." An interlocutory injunction may also’ be issued, under the same conditions, intellectual property right.

2. An interlocutory injunction may also be issued to order the seizure or delivery up of goods suspected of infringing an intellectual properly right, so as to prevent their entry into or movement within the channel of commerce

3. In the case of an alleged infringement committed on a commercial scale, the Parties shall ensure that, if the applicant demonstrates circumstances likely to endanger the recovery of damages the judicial authorities may order the precautionary seizure of the movable and immovable property of the alleged infringer, including the blocking of his/her bank accounts and other assets. To that end; the competent authorities may order the communication of bank, financial or commercial documents, or appropriated access to the relevant information.

Article 17
Corrective Measures

1. The parties shall ensure that the competent judicial authorities may order, at the request of the applicant and without prejudice to any damages due to the right holder by reason of the infringement, and without compensation of any sort, at least the definitive removal from the channels of commerce or the destruction, of goods that they have found to be infringing an intellectual property right. If appropriate, the competent judicial authorities may also order destruction of materials and implements predominantly used in the creation or manufacture of those goods.

2. The Parties’ judicial authorities shall have the authority to order that those measures shall be carried out at the expense of the infringer, unless particular reasons are invoked for not doing so.

Article 18
Injunctions

The Parties shall ensure that, where a judicial decision is taken finding an infringement of an intellectual property right, the judicial authorities may issue against the infringer as well as against intermediary whose services are used by a third party to infringe an intellectual property right an injunction aimed at prohibiting the continuation of the infringement.

Article 19
Alternative Measures

The Parties may provide that, in appropriate cases and at the request of the person liable to be subject to the measures provided for in Article 17 (Corrective measures) and/or Article 18 (Injunctions), the competent judicial authorities may order pecuniary compensation to be paid to the injured party instead of applying the measure provided for in these two Articles if that person acted unintentionally and without negligence if execution of the measures in question would cause him disproportionate harm and if pecuniary compensation to the injured party appears reasonably satisfactory.

Article 10
Damages

1. The Parties shall ensure that the judicial authorities, on application of the injured party, order the infringer who knowingly, or with reasonable grounds to know, engaged ill an infringing activity, to pay the right-holder damages appropriate to the actual prejudice suffered by him/her as a result of the infringement. When the judicial authorities set the damages:

(a) they shall take into account all appropriate aspects, such as the negative economic consequences, including lost profits, which the injured party has suffered, any unfair profits made by the infringer and, in appropriate cases, elements other than economic factors, such as the moral prejudice caused to the right holder by the infringement ; or

(b) as an alternative to (a), they may, in appropriate cases, set the damages as a lump sum on the basis of elements such as at least the amount of royalties or fees which would have been due if the infringer had requested authorisation to use the intellectual property .right ,in question.

2. Where the infringer did not knowingly, or with reasonable grounds to know, engage in infringing activity, the Parties may lay down that the judicial authorities may order in favour of the injured party the recovery of profits or the payment of damages which may be pre-established.

Article 21
Legal Costs

The Parties shall ensure that reasonable and proportionate legal costs and other expenses incurred by the successful party shall as a general rule be borne by the unsuccessful party, unless equity does not allow this.

Article 22
Publication of Judicial Decisions

The Parties shall ensure that, in legal proceedings instituted for infringement of an intellectual property right, the judicial authorities may order, at the request of the applicant and at the expense of the infringer, appropriate measures for the dissemination of the information concerning the decision, including displaying the decision and publishing it in full or in part.

Article 23
Presumption of authorship or ownership

The Parties shall recognise that for the purposes of applying the measures, procedures and remedies provided for in this Agreement, (a) for the author of a literary or artistic work, in the absence of proof to the contrary, to be regarded as such, and consequently to be entitled to institute infringement proceedings, it shall be sufficient for his/her name to appear on the work in the usual manner; (b) the provision under (a) shall apply mutatis mutandis to the holders of rights related to copyright with regard to their protected subject matter.

Sub-section 3.2
Border Enforcement

Article 24
Consistency with TRIPS Agreement

In implementing border measures for the enforcement of intellectual property rights, whether or not covered by this article, the Parties shall ensure consistency with their obligations under the TRIPS agreements and, in particular, with Article 41 and Section 4 of the Part III of TRIPS agreement.

Article 25
Definitions

For the purposes of this Sub-section

1. "Intellectual property right" means:

(a) a trademark

(b) a design

(c) a copyright or any related right

(d) a geographical indication

(e) a patent

(g) a plant variety right

(h) a topography of semiconductor product

(i) a utility model

(j) a trade name

protected by the laws of the Parties as an exclusive intellectual property right.

Article 26
Scope

1. Each Party shall adopt or maintain procedures with response to import and export and on goods in other situations where they are or should have been subject to its customs supervision or customs control under which:

(a) upon request of a right holder; its competent authorities may suspend the release of, or
detain goods suspected of infringing an intellectual property right; and

(b ) its customs authorities; upon their own initiative: may suspend the release of, or detain goods suspected of infringing an intellectual property right.

2. Each Party may exclude from the application of this Article goods of a non-commercial nature contained in travellers’ personal luggage.

3. Each Party may exclude from the application of this Article goods that have been released for free circulation at a reduced or zero of duty on account of their end-use.

Article 27
Active involvement of customs authorities

The customs authorities shall be active in targeting and identifying shipments containing goods infringing an intellectual property right on the basis of risk analysis techniques. They shall provide for close cooperation with right holders, including effective mechanisms to collect information for the risk analysis

Article 28
Specific cooperation in the area of border measures

1. For the purpose of contributing to eliminating international trade in goods infringing intellectual property rights and without prejudice to applicable provisions on data protection and the Protocol No….. on Mutual Administrative Assistance in customs matters, the Parties agree on sharing, where appropriate, between the relevant authorities of certain data and information available to them, to swiftly enable effective enforcement against shipment of goods infringing an intellectual property right.

2. In particular, for goods in transit through the territory of a Party destined for (or originating in) the other Party the customs authorities of each Party shall cooperate, upon request or upon their own initiative, to provide relevant available information to the customs authorities of the other Party.

3. Nothing shall prevent the Parties from addressing the functioning and implementation of this Article within the Committee referred to in Article [to complete] of the Customs and Trade Facilitation Chapter.

Sub-section 3.3
Other enforcement provisions

Article 29
Codes of Conduct

1. Parties shall encourage:

(a) the development by trade or professional associations or organizations of codes of conduct aimed at contributing towards the enforcement of intellectual property rights.

(b) the submission to the competent authorities of the Parties of draft codes of conduct and of any evaluations of the application of these codes of conduct.

Sub-section 4
Co-operation

Article 30
Co-operation on IPR related issues

1. The Parties agree to co-operate with a view to supporting implementation of the commitments and obligations undertaken under this chapter.

2. Subject to the provisions of article [X, horizontal art. on assistance co-operation issues] of this Agreement, areas of co-operation include, but are not limited to, the following activities:

(a) exchange of information on the legal framework concerning intellectual property rights and relevant rules of protection and enforcement; exchange of experiences in the European Union and Thailand on legislative progress;

(b) exchange of experiences and information in the European Union and Thailand on intellectual property rights;

(c) exchange of experiences in the European Union and Thailand on central and sub- central enforcement by customs, police, administrative and judiciary bodies; co-ordination to prevent exports of counterfeit goods, including with other countries;

(d) capacity-building; exchange and training of personnel;

(e) promotion and dissemination of information on intellectual property right in, inter alia, business circles and civil society; public awareness of consumers and right holders;

(f) enhancement of institutional co-operation, for example between intellectual property offices;

(g) actively promoting awareness and education of the general public for intellectual property rights policies; formulate effective strategies to identify key audiences and create communication programmes to increase consumer and media awareness on the impact of intellectual property violations, including the risk to health and safety and the connection to organized crime.

3. Without prejudice and as a complement to paragraphs 1 and 2, the Parties agree to maintain an effective dialogue on intellectual property issues ( ‘IP Dialogue”) relevant to the protection and enforcement of intellectual property rights covered by this chapter, and also any other relevant issue.

Article 31
Co-operation on technology transfer

1. The Parties recognize that technology transfer contributes to the strengthening of national capabilities, with the aim to establish a sound and viable technological base.

2. The Parties recognize that particular attention shall be paid to the conditions necessary to create an adequate enabling environment for technology transfer in the host countries such as a stable legal framework and the means for effective and efficient enforcement.

3. The Parties agree to exchange view and information on their practices and policies affecting transfer of technology, both within their respective regions and with third countries, This shall in particular include measures to facilitate information flows, business partnerships, licensing and subcontracting.

Article 32
Review clause

Thailand and the EU shall, […] years after the entering into force of the Agreement, review the IPR chapter in line with the technology and economic development.

The following articles relating to enforcement of infringements on a digital environment should be placed in a chapter dealing with e-commerce, but will be discussed by the IPR teams.

Article XX
Liability of intermediary Service Providers

Article XX1.-Use of Intermediaries

1. The Parties recognize that the services of intermediaries can be used by third parties for infringing activities and shall provide for the following measures for intermediary service providers.

2. For the purposes of the function referred to in Article XX.2, service provider means a provider for transmission, routing, or connection for digital online communications without modification of their content between or among points specified by the user of material of the user’s choosing, and for the purpose of the functions referred to in Article XX.3 and XX.4 service provider means a provider or operator of facilities for online service or network access.

Article XX.2-Liability of Intermediary Service Provider: “Mere Conduit”

1. Where an information society service is provided that consists of the transmission in a communication network of information provided by a recipient of the service, or the provision of access to a communication network, Parties shall ensure that the service provider is not liable for the information transmitted, on condition that the provider.

(a) does not initiate the transmission;

(b) does not select the receiver of the transmission; and

(c) does not select or modify the information contained in the transmission.

2. The acts of transmission and of provision of access referred to in paragraph 1 include the automatic, intermediate and transient storage of the information transmitted in so far as this take place for the sole purpose of carrying out the transmission in the communication network, and provided that the information is not stored for my any period longer than is reasonably necessary necessary for the transmission.

3. This Article shall not affect the possibility for a court or administrative authority, in accordance with Parties’ legal systems, of requiring the service provider to terminate or prevent an infringement.

Article XX.3 – Liability of Intermediary Service Providers: “Caching”

1. Where an information society service is provided that consists of the transmission in a communication network of information provided by recipient of the service, Parties shall ensure that the service provider is not liable for the automatic, intermediate and temporary storage of that information, performed for the sole purpose of making more efficient the information’s onward transmission to other recipients of the service upon their request, on condition that:

(a) the provider does not modify the information;

(b) the provider complies with conditions on access to the information;

(c) the provider complies with rules regarding the updating of the information, specified in a manner widely recognised and used by industry;

(d) the provider does not interfere with the lawful use of technology, widely recognized and used by industry, to obtain data on the use of the information; and

(e) the provider acts expeditiously to remove or to disable access to the information it has stored upon obtaining actual knowledge of the fact that the information at the initial source of the transmission has been removed from the network, or access to it has been disabled, or that a court or an administrative authority has ordered such removal or disablement.

2. This Article shall not affect the possibility for a court or administrative authority, in accordance with Parties’ legal systems, of requiring the service provider to terminate or prevent an infringement.

Article XX.4 – Liability of Intermediary Service Providers: Hosting

1. Where an information society service is provided that consists of the storage of information provided by a recipient of the service, the Parties shall ensure that the service provider is not liable for the information stored at the request of a recipient of the service, on condition that:

(a) the provider does not have actual knowledge of illegal activity or information and, as regards claims for damages, is not aware of facts or circumstances from which the illegal activity or information is apparent; or

(b) the provider, upon obtaining such knowledge or awareness, acts expeditiously to remove or to disable access to the information.

2. Paragraph 1 shall not apply when the recipient of the service is acting under the authority or the control of the provider.

3. This Article shall not affect the possibility for a court or administrative authority, in accordance with Parties’ legal systems, of requiring the service provider to terminate or prevent an infringement, nor does it affect the possibility for the Parties of establishing procedure governing the removal or disabling of access to information.

Article XX.5 - No General Obligation to Monitor

1. The Parties shall not impose a general obligation on providers, when providing the services covered by Articles XX2, XX3 and XXA, to monitor the information which they transmit or store, nor a general obligation actively to seek facts or circumstances indicating illegal activity.

2. The Parties may establish obligations for information society service providers promptly to inform the competent public authorities of alleged illegal activities undertaken or information provided by recipients of their service or obligations to communicate to the competent authorities, at their request, information enabling the identification of recipients of their service with whom they have storage agreements.

Footnotes:

[1Fixation means the embodiment of sounds or images, or of the representations thereof, from which they can be perceived, reproduced or communicated through a device.

[2For the purpose of this Article, a Party may consider that a design having individual character is original.

[3In the case of the EU, the term «pharmaceutical product» refers to «medicinal product»

[4For the purposes of the section, the ”marketing authorization process” includes the period necessary to producte data required by competent authorities of the Parties

[5This period can be extended for further six months in the case of medicinal products for which paediatric studies have been carried out, and the results of those studies are reflected in the product information

[6For the purposes of this sub-section the notion of "intellectual property rights" should include at least the following rights: copyright; rights related to copyright; sui generis right of a database maker; rights of the creator of the topographies of a semi conductor product; trade mark rights; design rights; patent rights, including rights derived from supplementary protection certificates; geographical indications; utility model rights; plant variety rights; trade names in so far as these are protected as exclusive rights in the national law concerned.

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