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Japan-Thailand FTA (JTEPA): draft chapter on intellectual property

posted 3-February-2007

NB: Final text, as signed on 3 April 2007, is available here

Japan-Thailand Economic Partnership Agreement

Chapter 10
Intellectual Property

Article 122
General Provisions

1. The Parties shall grant and ensure adequate, effective and non-discriminatory protection of intellectual property, promote efficiency and transparency in the administration of intellectual property protection system, and provide for measures for the enforcement of intellectual property rights against infringement, counterfeiting and piracy, in accordance with the provisions of this Chapter and the international agreements to which both Parties are parties.

2. Intellectual property referred to in this Chapter shall mean all categories of intellectual property:

  • (a) that are subject of Articles 130 through 137; or
  • (b) that are under the TRIPS Agreement or the relevant international agreements referred to in the TRIPS Agreement.

3. The Parties recognise the importance of the international agreements which provide the international standards of protection of intellectual property.

4. The Parties reaffirm their commitment to comply with the obligations set out in the following international agreements and the cited provisions thereof:

  • (a) the TRIPS Agreement;
  • (b) the Berne Convention; and
  • (c) Articles 1 through 12, and Article 19, of the Paris Convention.

Article 123
Definitions

For the purposes of this Chapter:

  • (a) the term "Berne Convention" means the Berne Convention for the Protection of Literary and Artistic Works of 9 September 1886, as amended and as may be amended;
  • (b) the term "Nice Agreement" means the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as amended and as may be amended;
  • (c) the term "Paris Convention" means the Paris Convention for the Protection of Industrial Property of 20 March 1883, as amended and as may be amended;
  • (d) the term "rights management information" means information which identifies a work, performance or phonogram; the author of the work, the performer of the performance or the producer of the phonogram; the owner of any right in the work, performance, or phonogram; or information about the terms and conditions of the use of the work, performance, or phonogram; and any numbers or codes that represent such information, when any of these items of information is attached to a copy of a work, a fixed performance or a phonogram or appears in connection with the communication or making available of a work, a fixed performance or a phonogram to the public; and
  • (e) the term "Strasbourg Agreement" means the Strasbourg Agreement Concerning the International Patent Classification of 24 March 1971, as amended and as may be amended.

Article 124
National Treatment

Each Party shall accord to nationals of the other Party treatment no less favourable than the treatment it accords to its own nationals with regard to the protection of intellectual property in accordance with Articles 3 and 5 of the TRIPS Agreement.

Note: For the purposes of this Chapter, "nationals" shall have the same meaning as in the TRIPS Agreement. For the purposes of Articles 124 and 125, "protection" shall include matters affecting the availability, acquisition, scope, maintenance and enforcement of intellectual property rights as well’ as those matters affecting the use of intellectual property rights specifically addressed in this Chapter.

Article 125
Most-Favoured-Nation Treatment

Each Party shall accord to nationals of the other Party treatment no less favourable than the treatment it accords to the nationals of a non-Party with regard to the protection of intellectual property in accordance with Articles 4 and 5 of the TRIPS Agreement.

Article 126
Streamlining and Harmonisation of Procedural Matters

1. For the purposes of providing efficient administration of intellectual property protection system, each Party shall take appropriate measures to streamline its administrative procedures concerning intellectual property.

2. Applications for and grants of patents and publications thereof shall, to the fullest extent possible, be classified in accordance with the international patent classification system established under the Strasbourg Agreement. Applications for registrations of and registrations of trademarks for goods and services and publication thereof shall, to the fullest extent possible, be classified in accordance with the international classification system of goods and services established under the Nice Agreement.

3. Each Party shall ensure that any filing of an application for a patent, or for a registration of 3 utility model, or of an industrial design, or of a trademark that is equivalent to a regular national filing be recognised as giving rise to the right of priority stipulated in Article 4 of the Paris Convention.

Note: For the purposes of this paragraph, "regular national filing" means any filing that is adequate to establish the date on which the application was filed in any party to the Paris Convention or member of the World Trade Organization (hereinafter referred to in this Chapter as "the WTO"), whatever may be the subsequent fate of the application.

Article 127
Transparency

For the purposes of further promoting transparency in the administration of intellectual property protection system, each Party shall, in accordance with its laws and regulations, take appropriate measures to:

  • (a) publish or make easily available to the public information on applications for and grants of patents and applications for registrations of and registrations of utility models, industrial designs, trademarks, layout-designs of integrated circuits and new varieties of plants, and information contained in the files thereof held by the competent authorities;
  • (b) make easily available to the public information on applications for the suspension by the customs authority of the release of goods infringing intellectual property rights; and
  • (c) make easily available to the public information (including statistical information) on its efforts to provide effective enforcement of intellectual property rights and other information with regard to intellectual property protection system.

Article 128
Promotion of Public Awareness Concerning Protection of Intellectual Property

The Parties shall take necessary measures to enhance public awareness of protection of intellectual property including educational and dissemination projects on the use of intellectual property as well as on the enforcement of intellectual property rights.

Article 129
Objectives

1. The protection and enforcement of intellectual property rights should contribute to the promotion of 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.

2. This Chapter should be interpreted and implemented in a manner supportive of the Parties’ rights to take measures to protect public health in accordance with the TRIPS Agreement and the decisions by the Ministerial Conference or the General Council of the WTO,related to the TRIPS Agreement and public health

Article 130
Patents

1. Patents shall be available for any inventions, whether products or processes, in all fields of technology, provided that they are new, involve an inventive step and are capable of industrial application in accordance with Article 27 of the TRIPS Agreement.

2. Each Party shall ensure that a claimed invention shall not be new, if it is publicly known, described in a publication distributed or made available to the public through telecommunication line in either Party or in any non-Party before the filing date of the patent application for the invention or, where priority is claimed, the priority date of the application, in accordance with its laws and regulations.

3. Each Party shall ensure that any patent application shall not be rejected solely on the grounds that the subject matter claimed in the application is related to a naturally occurring micro-organism. ­

Article 131
Industrial Designs

1. Each Party shall provide for the protection of independently created industrial designs that are new or original in accordance with Article 25 of the TRIPS Agreement.

2. Each Party shall ensure that a claimed industrial design shall not be new, if it is publicly known or described in a publication distributed in either Party or in any non-Party before the filing date of the application for the registration of the industrial design or, where priority is claimed, the priority date of the application, in accordance with its laws and regulations.

3. Each Party shall ensure that the owner of a protected industrial design shall have the right to prevent third parties not having the owner’s consent from making, selling or importing articles bearing or embodying a design which is a copy, or substantially a copy of the protected design, when such acts are undertaken for commercial purposes.

Article 132
Trademarks for Goods and Services

1. Each Party shall ensure that the owner of a registered trademark shall have the exclusive right to prevent all third parties not having the owner’s consent from using in the course of trade identical or similar signs for goods or services which are identical or similar to those in respect of which the trademark is registered, where such use would result in a likelihood of confusion.

2. Each Party shall provide, in at least one of the following circumstances, that the registration of a trademark, which is identical or similar to a trademark well-known in either Party or in any non-Party as indicating the goods or services of another person shall be refused or cancelled:

  • (a) if use of that trademark is for unfair intentions, inter alia, intention to gain an unfair profit or intention to cause damage to such person; or
  • (b) if the public might be confused as to the owner or origin of the goods or services.

Article 133
Copyright and Related Rights

1. Each Party shall endeavour to provide to authors, performers and producers of phonograms the exclusive right of authorizing the making available to the public of their works, performances fixed in phonograms and phonograms, respectively, 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.

2. Each Party shall endeavour to provide adequate legal protection and effective legal remedies against the circumvention of effective technological measures that are used by authors, performers or producers of phonograms in connection with the exercise of their rights under the laws and regulations of the Party and that restrict acts, in respect of their works, performances or phonograms, which are not authorised by the authors, performers or producers of phonograms concerned or permitted by the laws and regulations of the Party.

3. Each Party shall endeavour to provide adequate and effective legal remedies against any person knowingly performing any of the following acts knowing, or with respect to civil remedies having reasonable grounds to know, that it will induce, enable, facilitate or conceal an infringement of copyright or related rights:

  • (a) to remove or alter any electronic rights management information without authority; or
  • (b) to distribute, import for distribution, broadcast, communicate or make available to the public, without authority, works, copies of works, performances, copies of fixed performances or phonograms knowing that electronic rights management information has been removed or altered without authority.

4. Each Party shall, in accordance with its laws and regulations, take appropriate measures to facilitate the activities to be conducted by the collective management organizations for copyright and related rights in that Party.

Article 134
Geographical Indications

1. Each Party shall ensure, in accordance with its laws and regulations and in conformity with relevant international agreements to which both Parties are parties, protection of geographical indications with regard to any goods.

2. The Parties shall exchange views on issues relating to protection of geographical indications including any strengthening of such protection. The Sub-Committee on Intellectual Property referred to in Article 143 shall provide a forum for this purpose.

Article 135
New Varieties of Plants

1. The Parties recognise the importance of protecting new varieties of plants in a manner based on international standards. For this purpose, each Party shall ensure that rights relating to new varieties of plants are adequately protected.

2. Each Party shall, having due regard to concerns of the other Party, endeavour to protect as many plant genera or species as possible in a manner stated in paragraph 1 above as early as practicable.

3. Notwithstanding Articles 124 and 125, each Party may, in accordance with its laws and regulations, limit the scope of the plant genera or species for which the Party accords the rights referred to in paragraph 1 above to the nationals of the other Party to the genera or species for which the other Party accords the rights to the nationals of the former Party.

Article 136
Unfair Competition

1. Each Party shall provide for effective protection against unfair competition.

2. Any act of competition contrary to honest practices in industrial or commercial matters constitutes an act of unfair competition. The following acts of unfair competition, in particular, shall be prohibited:

  • (a) all acts of such a nature as to create confusion by any means whatever with the establishment, the goods, or the industrial or commercial activities, of a competitor;
  • (b) false allegations in the course of trade of such a nature as to discredit the establishment, the goods, or the industrial or commercial activities, of a competitor;
  • (c) indications or allegations the use of which in the course of trade is liable to mislead the public as to the nature, the manufacturing process, the characteristics, the suitability for their purpose, or the quantity, of the goods.

3. Each Party shall establish appropriate remedies to prevent or punish the acts of unfair competition referred to in subparagraph 2(a) through (c) above.

Article 137
Protection of Undisclosed Information

Each Party shall ensure in its laws and regulations adequate and effective protection of undisclosed information in accordance with Article 39 of the TRIPS Agreement.

Article 138
Enforcement - Border Measures

1. Each Party shall, in accordance with Articles 51 and 52 of the TRIPS Agreement, provide for procedures concerning the suspension by the customs authority of the release of infringing goods at least in cases of infringement of trademarks and copyrights and related rights.

2. Each Party shall ensure that the procedures referred to in paragraph 1 above do not impose upon the right holders who filed the applications for such procedures overly burdensome requirements concerning provision of evidence of infringement.

3. Where the competent authorities of a Party has decided to suspend the release of goods infringing trademarks, or copyrights or related rights, the competent authorities of that Party shall, in accordance with that Party’s laws and regulations, inform the right holder of the names and addresses of the consignor and the importer of the goods in question.

4. Each Party shall ensure, in cases of infringement of trademarks or copyrights or related rights, that its competent authorities may initiate border measures ex officio, without the need for an application by the right holder whose intellectual property rights have been infringed.

5. Each Party shall ensure that its competent authorities do not allow the re-exportation of the goods infringing trademarks or copyrights or related rights other than in exceptional circumstances.

Article 139
Enforcement - Civil Remedies

Each Party shall ensure that the right holder of intellectual property has the right to claim against the infringer damages adequate to compensate for the injury the right holder has suffered because of an infringement of that person’s intellectual property right by an infringer who knowingly, or with reasonable grounds to know, engaged in infringing activity.

Article 140
Enforcement - Criminal Remedies

1. Each Party shall provide for criminal procedures and penalties to be applied at least in cases of infringement of patents, utility models, industrial designs, trademarks, copyrights and related rights, layout-designs of integrated circuits and rights relating to new varieties of plants, committed willfully and on a commercial scale.

2. The penalties referred to in paragraph 1 above shall include imprisonment and/or monetary fines sufficient to provide a deterrent, consistently with the level of penalties applied for crimes of a corresponding gravity.

3. Each Party shall provide its judicial authority with the authority to order, in cases of infringement provided for in paragraph 1 above, the seizure of all infringing goods and related implements the predominant use of which has been in the commission of the offence, and documentary evidence.

4. Each Party shall ensure, at least in cases of infringement of patents, utility models, industrial designs, trademarks and rights relating to new varieties of plants, committed wilfully and on a commercial scale, that its competent authorities may initiate criminal proceedings ex officio, without the need for a formal complaint by the right holder whose intellectual property rights have been infringed.

Article 141
Enforcement - General

The Parties reaffirm their obligations under the TRIPS Agreement to provide for effective and appropriate means for the enforcement of intellectual property rights. Recognizing that intellectual property rights are private rights, the Parties share the view that cooperation between the competent authorities and right holders is of great importance for the effective implementation of enforcement of intellectual property rights. Such cooperation may include assistance to the competent authorities in taking their legal measures against infringement of intellectual property rights.

Article 142
Assistance for Acquisition of Intellectual Property Rights for Small and Medium Enterprises

Each Party shall, in accordance with its laws and regulations, take appropriate measures to provide assistance to small and medium enterprises for acquisition of intellectual property rights, which may include reduction of official fees.

Article 143
Sub-Committee on Intellectual Property

1. For the purposes of the effective implementation and operation of this Chapter, a Sub­Committee on Intellectual Property (hereinafter referred to in this Article as "Sub-Committee") shall be established pursuant to Article 13.

2. The functions of the Sub-Committee shall be:

  • (a) reviewing the implementation and operation of this Chapter;
  • (b) discussing any issues related to intellectual property with a view to enhancing protection of intellectual property and enforcement of intellectual property rights and to promoting efficient and transparent administration of intellectual property system, such as:
    • (i) issues on application procedure including requirement of authentication of power of attorney;
    • (ii) issues on industrial designs including exception to lack of novelty, and deferment of publications;
    • (iii) issues on trademarks including fee system, single application for goods and/or services in several classes, and renewal of registration;
    • (iv) protection of new varieties of plants;
    • (v) issues on prevention of unfair competition including registration and use of domain names in bad faith and imitation of configuration of goods, and injunctive relief for unfair competition;
    • (vi) issues on adequate and effective enforcement including procedures for border measures; and
    • (vii) utilization and commercialization of intellectual property rights for small and medium enterprises;
  • (c) discussing the following issues:
    • (i) protection of partial designs;
    • (ii) opportunities to make observations in case of intended refusal of applications for registrations of trademarks; and
    • (iii) traditional knowledge, genetic resources and folklore;
  • (d) exchanging views on issues relating to protection of geographical indications including any strengthening of such protection as referred to in paragraph 2 of Article 134;
  • (e) reporting and making appropriate recommendations, as needed, to the Joint Committee; and
  • (f) carrying out other functions as may be delegated by the Joint Committee pursuant to Article 13.

3. The Sub-Committee shall be composed of representatives of the Governments of the Parties, and may invite representatives of relevant entities other than the Governments of the Parties, including those from private sectors, with necessary expertise relevant to the issues to be discussed.

4. The Sub-Committee shall meet at such venues and times as may be agreed upon.

Article 144
Security Exceptions

For the purposes of this Chapter, Article 73 of the TRIPS Agreement is incorporated into and made part of this Agreement, mutatis mutandis.

keywords: biodiversity | biopiracyFTAs (texts of)intellectual propertyJapanleaksThailandtraditional knowledge source :

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