THE
GOVERNMENT OF THE UNITED STATES OF AMERICA AND THE GOVERNMENT OF THE
REPUBLIC OF NICARAGUA CONCERNING PROTECTION OF INTELLECTUAL
PROPERTY RIGHTS
The
Government of the United States of America and the Government of the
Republic of Nicaragua (hereinafter referred to collectively as "Parties"
and individually as "Party"), in order to promote close and
productive economic and other relations and desiring to facilitate the
expansion of trade on a nondiscriminatory basis, have agreed to the
measures set forth in this Agreement.
ARTICLE
1: Nature and Scope of Obligations
1. Each
Party shall provide in its territory to the nationals of the other Party
adequate and effective protection and enforcement of intellectual
property rights, while ensuring that measures to protect and enforce
intellectual property rights do not themselves become barriers to
legitimate trade.
2. To
provide adequate and effective protection and enforcement of
intellectual property rights, each Party shall, at a minimum, give
effect to this Agreement and the substantive provisions of:
(a) the
Geneva Convention
for the Protection of Producers of Phonograms Against Unauthorized
Duplication of their Phonograms, 1971 (Geneva Convention);
(b) the
Berne Convention for the Protection of Literary and Artistic Works,
(Berne Convention);
(c) the
Paris Convention for the Protection of Industrial Property, 1967 (Paris
Convention);
(d) the
International Convention for the Protection of New Varieties of Plants,
(UPOV Convention), or the International Convention for the Protection of
New Varieties of Plants , 1991 (UPOV Convention); and
(e) the
Convention Relating to the Distribution of Programme- Carrying Signals
Transmitted by Satellite (1974).
If a Party
has not acceded to the specified text of any such Conventions on or
before the date of entry into force of this Agreement, it shall promptly
make every effort to accede without delay.
3. A Party
may implement in its domestic law more extensive protection and
enforcement of intellectual property rights than is required under this
Agreement, provided that such protection and enforcement is not
inconsistent with this Agreement.
ARTICLE
2: National Treatment
1. Each
Party shall accord to nationals of the other Party treatment no less
favorable than it accords to its own nationals with regard to the
acquisition, protection, enjoyment and enforcement of all intellectual
property rights and any benefits derived therefrom.
2. A Party
shall not, as a condition of according national treatment under this
Article, require right holders to comply with any formalities or
conditions (including fixation, publication or exploitation in the
territory of a Party) in order to acquire, enjoy, enforce and exercise
rights or benefits in respect of copyright and related rights.
3. A Party
may derogate from paragraph 1 in relation to its judicial and
administrative procedures for the protection or enforcement of
intellectual property rights, including any procedure requiring a
national of the other Party to designate for service of process an
address in the Party's territory or to appoint an agent or
representative in the Party's territory, if the derogation is consistent
with the relevant Convention listed in Article 1:2 above, provided that
such derogation:
(a) is
necessary to secure compliance with measures that are not inconsistent
with this Agreement; and
(b) is
not applied in a manner that would constitute a restriction on trade.
4. The
obligations under this Article do not apply to procedures provided in
multilateral agreements concluded under the auspices of the World
Intellectual Property Organization relating to the acquisition or
maintenance of intellectual property rights.
ARTICLE
3: Copyright
1. Each
Party shall protect all works that embody original expression within the
meaning of the Berne Convention. In particular:
(a) all
types of computer programs are literary works within the meaning of the
Berne Convention and each Party shall protect them as such; and
(b)
compilations of data or other material, whether in machine readable or
other form, which by reason of the selection or arrangement of their
contents constitute intellectual creations, shall be protected as works.
The
protection a Party provides under subparagraph (b) shall not extend to
the data or material itself, or prejudice any copyright subsisting in
that data or material.
2. Each
Party shall provide to authors and their successors in interest those
rights enumerated in the Berne Convention in respect of works covered by
paragraph 1 and shall provide the right to authorize or prohibit.
(a) the
importation into the Party's territory of copies of the work made
without the right holder's authorization,
(b) the
first public distribution of the original and each copy of the work by
sale, rental or otherwise;
(c) the
communication of a work to the public;
(d) the
rental of the original or a copy of a computer program for direct or
indirect commercial advantage.
(e) the
making available to the public the work, by wire or wireless means, in
such a way that members of the public may access the work from a place
and at a time individually chosen by them.
Subparagraph
(d) shall not apply where the copy of the computer program is not itself
an essential object of the rental. Each Party shall provide that putting
the original or a copy of a computer program on the market with the
right holder's consent shall not exhaust the rental right; and
3. Each
Party shall provide that for copyright and related rights:
(a) any
person acquiring or holding any economic rights may freely and
separately transfer such rights by contract; and
(b) any
person acquiring or holding any such economic rights by virtue of a
contract, including contracts of employment underlying the creation of
works and sound recordings, shall be able to exercise those rights in
its own name and enjoy fully the benefits derived from those rights.
4. Each
Party shall provide that, where the term of protection of a work is to
be calculated on a basis other than the life of a natural person, the
term shall be not less than 75 years from the end of the calendar year
of the first authorized publication of the work or, failing such
authorized publication within 25 years from the creation of the work,
not less than 100 years from the end of the calendar year of the
creation of the work.
5. Neither
Party may grant translation or reproduction licenses permitted under the
Appendix to the Berne Convention where legitimate needs in that Party's
territory for copies or translations of the work could be met by the
right holder's voluntary actions but for obstacles created by the
Party's measures.
6. Each
Party shall provide to the right holder in a sound recording the right
to authorize or prohibit:
(a) the
direct or indirect reproduction, in whole or in part, of the sound
recording;
(b) the
importation into the Party's territory of copies of the sound recording
made without the producer's authorization;
(c) the
first public distribution of the original and each copy of the sound
recording by sale, rental or otherwise; and
(d) the
rental, lease or lending of the original or a copy of the sound
recording for the purposes of direct or indirect commercial advantage;
and
(e) the
making available to the public the sound recording, by wire or wireless
means, in such a way that members of the public may access the sound
recording from a place and at a time individually chosen by them.
Each Party
shall provide that putting the original or a copy of a sound recording
on the market with the right holder's consent shall not exhaust the
rental right.
7. Each
party shall provide to performers the right to authorize or prohibit:
(a) the
fixation of their live Musical performances in a sound recording;
(b) the
reproduction of unauthorized fixations of their live musical
performances in a sound recording;
(c) the
transmission or other communication to the public of sounds in a live
musical performance; and
(d) the
distribution, sale, rental, disposal or transfer of the unauthorized
fixations of their live performances in a sound recording, regardless of
where the fixations were made.
8. Each
Party shall, through operation of this Agreement, apply the provisions
of Article 18 of the Berne Convention for the Protection of Literary and
Artistic Works to existing sound recordings.
9. Each
Party shall confine limitations or exceptions to the rights provided for
in this Article to certain special cases that do not conflict with a
normal exploitation of the work, and do not unreasonably prejudice the
legitimate interests of the right holder.
ARTICLE
4: Protection of Encrypted Program-Carrying Satellite Signals
Within one
year from the date of entry into force of this Agreement, each Party
shall make it:
(a) a
criminal offense to manufacture, assemble, modify, import, export, sell,
lease or otherwise distribute a tangible or intangible device or system,
knowing or having reason to know that the device or system is primarily
of assistance in decoding an encrypted program-carrying satellite signal
without the authorization of the lawful distributor of such signal;
(b) a
criminal offense willfully to receive or further distribute an encrypted
program-carrying satellite signal that has been decoded without the
authorization of the lawful distributor of the signal; and
(c) a
civil offense to engage in any activity prohibited under subparagraph
(a) or (b).
Each Party
shall provide that any civil offense established under subparagraph (c)
shall be actionable by any person that holds a right in the encrypted
programming signal or the content thereof.
ARTICLE
5: Trademarks
1 . For
the purposes of this Agreement, a trademark consists of any sign, or any
combination of signs, capable of distinguishing the goods or services of
one person from those of another, including words, personal names,
designs, letters, numerals, colors, figurative elements, or the shape of
goods or of their packaging. Trademarks shall include service marks,
collective marks, and certification marks.
2. Each
Party shall provide to the owner of a registered trademark the right to
prevent all persons not having the owner's consent from using in
commerce identical or similar signs for goods or services that are
identical, similar, or 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. The rights described above shall not prejudice any prior
rights, nor shall they affect the possibility of making rights available
on the basis of use.
3. A Party
may make registrability depend on use. However, actual use of a
trademark shall not be a condition for filing an application for
registration.
Neither
Party may refuse an application solely on the ground that intended use
has not taken place before the expiry of a period of three years from
the date of application for registration .
4. Each
Party shall provide a system for the registration of trademarks, which
shall include:
(a)
examination of applications;
(b) notice
to be given to an applicant of the reasons for the refusal to register a
trademark;
(c) a
reasonable opportunity for the applicant to respond to the notice;
(d)
publication of each trademark either before or promptly after it is
registered;
(e) a
reasonable opportunity for interested persons to petition to oppose the
registration of a trademark; and
(f) a
reasonable opportunity for interested persons to petition to cancel the
registration of a trademark after the registration of the mark.
5. The
nature of the goods or services to which a trademark is to be applied
shall in no case form an obstacle to the registration of a trademark.
6. Article
6 bis of the Paris Convention shall apply, with such modifications as
may be necessary, to services. In determining whether a trademark is
well known account shall be taken of the knowledge of the trademark in
the relevant sector of the public, including knowledge in the Party's
territory obtained as a result of the promotion of the trademark.
Neither Party may require that the reputation of the trademark extend
beyond the sector of the public that normally deals with the relevant
goods or services or that the trademark be registered.
7. Each
Party shall use the International Classification of Goods and Services
for the Purpose of Registration of Marks (Nice Agreement) for
registration. Neither Party shall use such classification as the basis
for determining the likelihood of confusion.
8. Each
Party shall provide that the initial registration of a trademark be for
a term of at least 10 years and the registration be indefinitely
renewable for terms of not less than 10 years when conditions for
renewal have been met.
9. Each
Party shall require the use of a trademark to maintain a registration.
The registration may be canceled for the reason of non-use only after an
uninterrupted period of at least three years of non-use, unless valid
reasons based on the existence of obstacles to such use are shown by the
trademark owner. The law shall recognize, as valid reasons for non-use,
circumstances arising independently of the will of the trademark owner
that constitute an obstacle to the use of the trademark, such as import
restrictions on, or other government requirements for, goods or services
identified by the trademark.
10. Each
Party shall recognize the use of a trademark by a person other than the
trademark owner, where such use is subject to the owner's control, as
use of the trademark for purposes of maintaining the registration.
11.
Neither Party may encumber the use of a trademark in commerce by special
requirements, such as a use that reduces the trademark's function as an
indication of source or a use with another trademark.
12. A
Party may determine conditions on the licensing and assignment of
trademarks, it being understood that the compulsory licensing of
trademarks shall not be permitted. The owner of a registered trademark
shall have the right to assign its trademark with or without the
transfer of the business to which the trademark belongs. However, a
Party may require a transfer of goodwill in a mark as part of a valid
transfer of the mark.
13. A
Party may provide limited exceptions to the rights conferred by a
trademark, such as fair use of descriptive terms, provided that such
exceptions take into account the legitimate interests of the trademark
owner and of other persons.
14. Each
Party shall refuse to register trademarks that consist of or comprise
immoral, deceptive or scandalous matter, or matter that may disparage or
falsely suggest a connection with persons, living or dead, institutions,
beliefs or a Party's national symbols, or bring them into contempt or
disrepute. Each Party shall prohibit the registration as a trademark of
words that generically designate goods or services or types of goods or
services to which the trademark applies.
ARTICLE
6: Geographical Indications
1 . Each
Party shall provide, in respect of geographical indications, the legal
means for interested persons to prevent:
(a) the
use of any means in the designation or presentation of a good that
indicates or suggests that the good in question originates in a
territory, region or locality other than the true place of origin, in a
manner that misleads the public as to the geographical origin of the
good;
(b) any
use that constitutes an act of unfair competition within the meaning of
Article 10 bis of the Paris Convention.
2. Each
Party shall, on its own initiative if its domestic law so permits or at
the request of an interested person, refuse to register, or invalidate
the registration of, a trademark containing or consisting of a
geographical indication with respect to goods that do not originate in
the indicated territory, region or locality, if use of the indication in
the trademark for such goods is of such a nature as to mislead the
public as to the geographical origin of the good.
3. Each
Party shall also apply paragraphs I and 2 to a geographical indication
that, although correctly indicating the territory, region or locality in
which the goods originate, falsely represents to the public that the
goods originate in another territory, region or locality.
4. Nothing
in this Article shall be construed to require a Party to prevent
continued and similar use of a particular geographical indication of
another Party in connection with goods or services by any of its
nationals or domiciliaries who have used that geographical indication in
a continuous manner with regard to the same or related goods or services
in that Party's territory, either:
(a) for
at least 10 years, or
(b) in
good faith, before the date of signature of this Agreement.
5. Where a
trademark has been applied for or registered in good faith, or where
rights to a trademark have been acquired through use in good faith,
either:
(a)
before the date of application of these provisions in that Party, or
(b)
before the geographical indication is protected in its Party of origin,
no Party
may adopt any measure to implement this Article that prejudices
eligibility for, or the validity of, the registration of a trademark, or
the right to use a trademark, on the basis that such a trademark is
identical with, or similar to, a geographical indication.
6. No
Party shall be required to apply this Article to a geographical
indication if it is identical to the customary term in common language
in that Party's territory for the goods or services to which the
indication applies.
7. A Party
may provide that any request made under this Article in connection with
the use or registration of a trademark must be presented within five
years after the adverse use of the protected indication has become
generally known in that Party or after the date of registration of the
trademark in that Party, provided that the trademark has been published
by that date, if such date is earlier than the date on which the adverse
use became generally known Party, provided that the geographical
indication is not used 'or registered in bad faith.
8. No
Party shall adopt any measure implementing this Article that would
prejudice any person's right to use, in the course of trade, its name or
the name of its predecessor in business, except where such name forms
all or part of a valid trademark in existence before the geographical
indication became protected and with which there is a likelihood of
confusion, or such name is used in such a manner as to mislead the
public.
9. Nothing
the Article shall be construed to require a Party to protect a
geographical indication that is not protected, or has fallen into
disuse, in the Party of origin.
ARTICLE
7: Patents
1. Each
Party shall make patents available for any invention, whether a product
or a process, in all fields of technology, provided that such invention
is new, resulted from an inventive step and is capable of industrial
application. For purposes of this Article, a Party may deem the terms "inventive
step" and "capable of industrial application" to be
synonymous with the terms "non-obvious" and "useful",
respectively.
2. A Party
made exclude from patentability inventions if preventing in its
territory the commercial exploitation of the inventions is necessary to
protect ordre
public or
morality, including to protect human, animal or plant life or health or
to avoid serious prejudice to nature or the environment, provided that
the exclusion is not based solely on the ground that the Party prohibits
commercial exploitation in its territory of the subject matter of the
patent. A Party may also exclude from patentability diagnostic,
therapeutic and surgical methods for the treatment of humans or animals.
3. If a
Party has not made available patent protection for a product subject to
a regulatory review period prior to its commercial marketing or use
commensurate with paragraph I as of seventeen years prior to the date of
this Agreement, that Party shall provide to the inventor of any such
product or its assignee the means to obtain product patent protection or
equivalent protection for such product for the unexpired term of the
patent for such product granted in .the other Party, as long as the
product has not been marketed at the time of this Agreement in the Party
providing protection under this paragraph and the person seeking such
protection makes a timely request. The transitional protection must, at
least, give the patent owner or his assignee the right to exclude others
from making, using or selling the invention during the remaining term of
the patent granted by the other Party.
4. Each
Party shall provide that:
(a) where
the subject matter of a patent is a product, the patent shall confer on
the patent owner the right to prevent other persons from making, using,
selling, offering for sale, or importing the subject matter of the
patent, without the patent owner's consent; and
(b) where
the subject matter of a patent is a process, the patent shall confer on
the patent owner the right to prevent other persons from using that
process and from using, selling, offering for sale, or importing at
least the product obtained directly by that process, without the patent
owner's consent.
5. A Party
may provide limited exceptions to the exclusive rights conferred by a
patent, provided that such exceptions do not conflict with a normal
exploitation of the patent and do not unreasonably prejudice the
legitimate interests of the patent owner.
6. Patents
shall be available and patent rights enjoyable without discrimination as
to the field of technology or whether products are imported or locally
produced.
7. A Party
may revoke a patent only when grounds exist that would have justified a
refusal to grant the patent.
8. Each
Party shall permit patent owners to assign and transfer by succession
their patents, and to conclude licensing contracts.
9. A Party
may decline to allow use without the authorization of the right holder
of a patent. However, where the law of a Party allows for use of the
subject matter of a patent, other than use allowed under paragraph 4,
without the authorization of the right holder, including use by the
government or other persons authorized by the government, the Party
shall respect the following provisions:
(a)
authorization of such use shall be considered on its individual merits;
(b) such
use may be permitted only if, prior to such use; the proposed user has
made efforts to obtain authorization from the right holder on reasonable
commercial terms and conditions and such efforts have not been
successful within a reasonable period of time. The requirement to make
such efforts may be waived by a Party in the case of a national
emergency or other circumstances of extreme urgency or in cases of
public non-commercial Use. In situations of national emergency or other
circumstances of extreme urgency, the right holder shall, nevertheless,
be notified as soon as reasonably practicable. In the case of public
non-commercial use, where the government or contractor, without making a
patent search, knows or has demonstrable grounds to know that a valid
patent is or will be used by or for the government, the right holder
shall be informed promptly;
(c) the
scope and duration of such use shall be limited to the purpose for which
it was authorized, and in the case of semiconductor technology shall
only be for public noncommercial use or to remedy a practice determined
after judicial or administrative process to be anti-competitive.
(d) such
use shall be non-exclusive;
(e) such
use shall be non-assignable, except with that part of the enterprise or
goodwill that enjoys such use;
(f) any
such use shall be authorized predominantly for the supply of the Party's
domestic market;
(g)
authorization for such use shall be liable, subject to adequate
protection of the legitimate interests of the persons so authorized, to
be terminated if and when the circumstances that led to it cease to
exist and are unlikely to recur. The competent authority shall have the
authority to review, on petition of an interested party, the continued
existence of these circumstances;
(h) the
right holder shall be paid adequate remuneration in the circumstances of
each case, taking into account the economic value of the authorization;
(i) the
legal validity of any decision relating to the authorization shall be
subject to judicial or other independent review by a distinct higher
authority;
(j) any
decision relating to the remuneration provided in respect of such use
shall be subject to judicial or other independent review by a distinct
higher authority;
(k) the
Party shall not be obliged to apply the conditions set out in
subparagraphs (b) and (f) where such use is permitted to remedy a
practice determined after judicial or administrative process to be
anticompetitive. The need to correct anticompetitive practices may be
taken into account in determining the amount of remuneration in such
cases. Competent authorities shall have the authority to refuse
termination of authorization if and when the conditions that led to such
authorization are likely to recur; and
(l) the
Party shall not authorize the use of the subject matter of a patent to
permit the exploitation of another patent except as a remedy for an
adjudicated violation of domestic laws regarding anticompetitive
practices.
10. Where
the subject matter of a patent is a process for obtaining a product,
each Party shall, in any infringement proceeding, place on the defendant
the burden of establishing that the allegedly infringing product was
made by a process other than the patented process in one or more of the
following situations:
(a) the
product obtained by the patented process is new; or
(b) a
substantial likelihood exists that the allegedly infringing product was
made by the process and the patent owner has been unable through
reasonable efforts to determine the process actually used.
In the
gathering and evaluation of evidence, the legitimate interests of the
defendant in protecting its trade secrets shall be taken into account.
11. Each
Party shall provide a term of protection for patents that shall not end
before the expiration of a period of 20 years counted from the date of
filing. A Party may extend the term of patent protection, in appropriate
cases, to compensate for delays caused by regulatory approval processes.
ARTICLE
8: Semiconductor Layout Designs
1 . Each
Party shall protect layout designs (topographies) of integrated circuits
("layout designs") in accordance with Articles 2 through 7, 12
and 16(3), other than Article 6(3), of the Treaty on Intellectual
Property in Respect of Integrated Circuits as opened for signature on
May 26, 1989, and, in addition, shall comply with the provisions
contained in this Article.
2. Subject
to paragraph 3, each Party shall make it unlawful for any person without
the right holder's authorization to reproduce, import or distribute a
protected layout design, an integrated circuit in which a protected
layout design is incorporated, or an article incorporating, such an
integrated circuit only insofar as it continues to contain an unlawfully
reproduced layout design.
3. Neither
Party may make unlawful any of the acts referred to in paragraph 2
performed in respect of an integrated circuit that incorporates an
unlawfully reproduced layout design, or any article that incorporates
such an integrated circuit, where the person performing those acts or
ordering those acts to be done did not know and had no reasonable ground
to know, when it acquired the integrated circuit or article
incorporating such an integrated circuit, that it incorporated an
unlawfully reproduced layout design.
4. Each
Party shall provide that, after the person referred to in paragraph 3
has received sufficient notice that the layout design was unlawfully
reproduced, such person may perform any of the acts with respect to the
stock on hand or ordered before such notice, but shall be liable to pay
the right holder for doing so an amount equivalent to a reasonable
royalty such as would be payable under a freely negotiated license in
respect of such a layout design.
5. Neither
Party may permit the compulsory licensing of layout designs of
integrated circuits.
6. Any
Party that requires registration as a condition for protection of a
layout design shall provide that the term of protection shall not end
before the expiration of a period of 10 years counted from the date of
filing an application for registration or from the date on which the
mask work is first commercially exploited in the world, whichever occurs
first.
7. Where a
Party does not require registration as a condition for protection of a
layout design, the Party shall provide a term of protection of not less
than 10 years from the date of the first commercial exploitation of the
layout design, wherever in the world it occurs.
8.
Notwithstanding paragraphs 6 and 7, a Party may provide that the
protection shall lapse 15 years after the creation of the layout design.
ARTICLE
9: Protection of Confidential Information (Trade Secrets)
1 . In the
course of ensuring effective protection against unfair competition as
provided in Article 10bis of the Paris Convention (1967), each Party
shall protect confidential information in accordance with paragraph 2
below and data submitted to government or governmental agencies, in
accordance with paragraphs 5 and 6 below.
2. Each
Party shall provide the legal means for any person to prevent
confidential information from being disclosed to, acquired by, or used
by others without the consent of the person lawfully in control of the
information in a manner contrary to honest commercial practices, in so
far as, and for so long as:
(a) the
information is not gene rally known or readily ascertainable;
(b) the
information has actual or potential commercial value because it is
secret; and
(c) the
person lawfully in control of the information has taken reasonable steps
under the circumstances to keep it secret.
3. Neither
Party may limit the duration of protection for confidential information,
so long as the conditions in paragraph 2 exist.
4. Neither
Party may discourage or impede the voluntary licensing of confidential
information by imposing excessive or discriminatory conditions on such
licenses or conditions that dilute the value of the confidential
information.
5. If a
Party requires, as a condition for approving the marketing of
pharmaceutical or agrichemical products, the submission of undisclosed
test or other data, the origination of which involves a considerable
effort, the Party shall protect such data against unfair commercial use.
In addition, each Party shall protect such data against disclosure,
except where necessary to protect the public.
6. Each
Party shall provide that for data of a type referenced in paragraph 5
that are submitted to the Party after the date of entry into force of
this Agreement, no person other than the person that submitted them may,
without the latter's permission, rely on such data in support of an
application for product approval during a reasonable period of time
after their submission. For this purpose, a reasonable period shall
normally mean not less than five years from the date on which the Party
granted approval to the person that produced the data for approval to
market its product, taking account of the nature of the data and the
person's efforts and expenditures in producing them.
ARTICLE
10: Industrial Designs
1. Each
Party shall provide for the protection of independently created
industrial designs that are new or original. A Party may provide that:
(a)
designs are not new or original if they do not significantly differ from
known designs or combinations of known design features; and
(b) such
protection shall not extend to designs dictated essentially by technical
or functional considerations.
2. Each
Party shall ensure that the requirements for securing protection for
textile designs, in particular in regard to any cost, examination or
publication, do not unreasonably impair a person's opportunity to seek
and obtain such protection. A Party may comply with this obligation
through industrial design law or copyright law.
3. Each
Party shall provide the owner of a protected industrial design the right
to prevent other persons not having the owner's consent from making,
selling, or otherwise distributing articles bearing or embodying a
design that is a copy, or substantially a copy, of the protected design,
when such acts are undertaken for commercial purposes.
4. A Party
may provide limited exceptions to the protection of industrial designs,
provided that such exceptions do not conflict with the normal
exploitation of protected industrial designs and do not unreasonably
prejudice the legitimate interests of the owner of the protected design.
5. Each
(party shall provide a term of protection for industrial de signs of at
least 10 years.
ARTICLE
11: Enforcement of Intellectual Property Rights
1. As
specified in this Article and Articles 12 through 15 hereof, each Party
shall provide procedures in its domestic law that permit effective
action against infringement of the intellectual property rights covered
by this Agreement. These procedures shall include expeditious remedies
to prevent infringement and remedies substantial enough to deter future
infringement. Each Party shall apply enforcement procedures in a manner
that does not create barriers to legitimate trade and contains effective
safeguards against abuse.
2. Each
Party shall ensure that its enforcement procedures are fair and
equitable, are not unnecessarily complicated or costly, and do not
entail unreasonable time limits or unwarranted delays.
3. Each
Party shall ensure that decisions on the merits of a case in judicial
and administrative enforcement proceedings are:
(a) in
writing and state the reasons on which the decisions are based;
(b) made
available without undue delay at least to the parties in a proceeding;
and
(c) based
only on evidence in respect of which such parties were offered the
opportunity to be heard.
4. Each
Party shall ensure that parties in a proceeding have an opportunity to
have final administrative decisions reviewed by a judicial authority of
that Party and, subject to jurisdictional provisions in its domestic
laws concerning the importance of a case, to have reviewed at least the
legal aspects of initial judicial decisions on the merits of a case.
Notwithstanding the above, neither Party shall be required to provide
for judicial review of acquittals in criminal cases.
5. Nothing
in this Article or Articles 12 through 15 shall be construed to require
either Party to establish a judicial system for the enforcement of
intellectual property rights distinct from that Party's system for the
enforcement of laws in general.
ARTICLE
12: Specific Procedural and Remedial Aspects of Civil. and
Administrative Procedures
1. Each
Party shall make available to right holders civil judicial procedures
for the enforcement of any intellectual property right covered by this
Agreement. Each Party shall provide that:
(a)
defendants have the right to written notice that is timely and contains
sufficient detail, including the basis of the claims;
(b)
Parties in a proceeding are allowed to be represented by independent
legal counsel;
(c)
enforcement procedures do not include imposition of overly burdensome
requirements concerning mandatory personal appearances;
(d) all
Parties in a proceeding are duly entitled to substantiate their claims
and to present relevant evidence; and
(e) the
procedures include a means to identify and protect confidential
information.
2. Each
Party shall authorize its judicial authorities:
(a) where
a Party in a proceeding has presented reasonably available evidence
sufficient to support its claims and has specified evidence relevant to
the substantiation of its claims that is within the control of the
opposing Party, to order the opposing party to produce such evidence,
subject in appropriate cases to conditions that ensure the protection of
confidential information;
(b) where
a Party in a proceeding voluntarily and without good reason refuses
access to, or otherwise does not provide relevant evidence under that
Party's control within a reasonable period, or significantly impedes a
proceeding relating to an enforcement action, to make preliminary or
final determinations, affirmative or negative, on the basis of the
evidence presented, including the complaint or the allegation presented
by the Party adversely affected by the denial of access to evidence,
subject to providing the Parties an opportunity to be heard on the
allegations or evidence;
(c) to
order a Party in a proceeding to desist from an infringement, including
measures to prevent the entry of imported goods at the border;
(d) to
order the infringer of an intellectual property right to pay the right
holder damages adequate to compensate for the injury the right holder
has suffered because of the infringement and the profits of the
infringer that are attributable to the infringement and are not taken
into account in computing the actual damages;
(e) to
order an infringer of an intellectual property right to pay the right
holder's expenses, which may include appropriate attorney's fees; and
(f) to
order a Party in a proceeding at whose request measures were taken and
who has abused enforcement procedures to provide adequate compensation
to any party wrongfully enjoined or restrained in the proceeding for the
injury suffered because of such abuse and to pay that party's expenses,
which may include appropriate attorney's fees.
3. With
respect to the authority referred to in subparagraph 2(d), a Party
shall, at least with respect to works protected by copyright or related
rights, authorize the judicial authorities, at their discretion, to
order the payment of preestablished damages.
4. Each
Party shall, in order to create an effective deterrent to infringement
and counterfeiting, authorize its judicial authorities to order that:
(a) goods
that they have found to be infringing be, without compensation of any
sort, disposed of outside the channels of commerce in such a manner as
to avoid any injury caused to the right holder or, unless this would be
contrary to existing constitutional requirements, destroyed; and
(b)
materials and implements the predominant use of which has been in the
creation of the infringing goods be, without compensation of any sort,
disposed of outside the channels of commerce in such a manner as to
minimize the risks of further infringements.
In
considering whether to issue such an order, judicial authorities shall
take into account the need for proportionality between the seriousness
of the infringement and the remedies ordered, as well as the interests
of other persons. In regard to counterfeit goods, the simple removal of
the trademark unlawfully affixed shall not be sufficient, other than in
exceptional cases, to permit release of the goods into the channels of
commerce.
5. In
respect of the administration of any law pertaining to the protection or
enforcement of intellectual property rights, each Party may exempt
public authorities and officials from liability for their infringement
of the rights governed by this agreement, unless their actions were not
taken or intended in good faith in the course of the administration of
such laws.
6.
Notwithstanding the other provisions of Articles 10 through 14, where a
Party is sued with respect to an infringement or counterfeiting of an
intellectual property right as a result of its unauthorized exercise of
that right or the unauthorized exercise of that right on its behalf,
that Party may limit the remedies available against it to the payment to
the right holder of adequate remuneration in the circumstances of each
case, taking into account the economic value of the use.
7. Each
Party shall provide that, where a civil remedy can be ordered as a
result of administrative procedures on the merits of a case, such
procedures conform to principles equivalent in substance to those set
out in this Article.
ARTICLE
13: Provisional Measures
1. Each
Party shall authorize its judicial authorities to order prompt and
effective provisional measures:
(a) to
prevent an infringement of any intellectual property right or the
counterfeiting of any product that is the subject of intellectual
property rights, and in particular to prevent the entry into the
channels of commerce in their jurisdiction of allegedly infringing
goods, including measures to prevent the entry of imported goods at the
border; and
(b) to
preserve relevant evidence in regard to the alleged infringement or
counterfeiting.
2. Each
Party shall authorize its judicial authorities to require any applicant
for provisional measures to provide to the judicial authorities any
evidence reasonably available to that applicant that the judicial
authorities consider necessary to enable them to determine with a
sufficient degree of certainty whether:
(a) the
applicant is the right holder;
(b) the
applicant's right is being infringed or such infringement is imminent;
and
(c) any
delay in the issuance of such measures is likely to cause irreparable
harm to the right holder, or there is a demonstrable risk of evidence
being destroyed.
Each Party
shall authorize its judicial authorities to require the applicant to
provide a security or equivalent assurance sufficient to protect the
interests of the defendant and to prevent abuse.
3. Each
Party shall authorize its judicial authorities to require an applicant
for provisional measures to provide other information necessary for the
identification of the relevant goods by the authority that will execute
the provisional measures.
4. Each
Party shall authorize its judicial authorities to order provisional
measures on an ex parte basis, 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.
5. Each
Party shall authorize that where provisional measures are adopted by the
Party's judicial authorities on an ex parte basis:
(a) a
person affected shall be given notice of those measures without delay no
later than immediately after the execution of the measures;
(b) a
defendant shall, on request, have those measures reviewed by that
Party's judicial authorities for the purpose of deciding, within a
reasonable period after notice of those measures is given, whether the
measures shall be modified, revoked or confirmed, and shall be given an
opportunity to be heard in the review proceedings.
6. Without
prejudice to paragraph 5, each Party shall provide that, on the request
of the defendant, the Party's judicial authorities shall revoke or
otherwise cease to apply the provisional measures taken on the basis of
paragraphs 1 and 4 if proceedings leading to a decision on the merits
are not initiated:
(a) within
a reasonable period as determined by the judicial authority ordering the
measures where the Party's domestic law so permits; or
(b) in the
absence of such a determination, within a period of no more than 20
working days or 31 calendar days, whichever is longer.
7. Each
Party shall authorize its judicial authorities to order, on request of
the defendant, that the applicant provide compensation for injury caused
by provisional measures:
(a) if the
provisional measures are revoked or lapse because of any act or omission
of the applicant, or
(b) if the
judicial authorities subsequently find there has been no infringement or
threat of infringement of any intellectual property right.
8. Each
Party shall provide that, where a provisional measure can be ordered as
a result of administrative procedures, such procedures shall conform to
principles equivalent in substance to those set out in this Article.
ARTICLE
14: Criminal Procedures and Penalties
1 . Each
Party shall provide criminal procedures and penalties to be applied at
least in cases of willful trademark counterfeiting or infringement of
copyrights or related rights on a commercial scale. Each Party shall
provide that penalties available include imprisonment or monetary fines,
or both, sufficient to provide a deterrent, consistent with the level of
penalties applied for crimes of a corresponding gravity.
2. Each
Party shall provide that, in appropriate cases, its judicial authorities
may, order the seizure, forfeiture and destruction of infringing goods
and of any materials and implements the predominant use of which has
been in the commission of the offense.
3. Each
Party may provide that, in appropriate cases, its judicial authorities
may impose criminal penalties for the infringement of intellectual
property rights other than those in paragraph 1, where they are
committed willfully and on a commercial scale.
ARTICLE
15: Enforcement of Intellectual Property Rights at the Border
1 . Each
Party shall adopt procedures to enable a right holder, who has valid
grounds for suspecting that the importation of counterfeit trademark
goods or unauthorized copies of works protected by copyrights or related
rights may take place, to lodge an application in writing with its
competent authorities, whether administrative or judicial, for the
suspension by the customs administration of the release of such goods
into free circulation. No Party shall be obligated to apply such
procedures to goods in transit. A Party may permit such an application
to be made in respect of goods that involve other infringements of
intellectual property rights, provided that the requirements of this
Article are met. A Party may also provide for corresponding procedures
concerning the suspension by the customs administration of the release
of infringing goods destined for exportation from its territory .
2. Each
Party shall require any applicant who initiates procedures under
paragraph 1 to provide adequate evidence:
(a) to
satisfy that Party's competent authorities that, under its domestic
laws, there is prima facie an infringement of its intellectual property
right; and
(b) to
supply a sufficiently detailed description of the goods to make them
readily recognizable by the customs administration.
The
competent authorities shall inform the applicant within a reasonable
period whether they have accepted the application and, if so, the period
for which the customs administration will take action.
3. Each
Party shall authorize its competent authorities to require an applicant
under paragraph 1 to provide a security or equivalent assurance
sufficient to protect the defendant and the competent authorities and to
prevent abuse. Such security or equivalent assurance shall not
unreasonably deter recourse to these procedures.
4. A
Party's customs administration, upon receiving an application pursuant
to procedures adopted in accordance with this Article, may suspend the
release of goods; involving industrial designs, patents, integrated
circuits or trade secrets into free circulation on the basis of a
decision other than by a judicial or other
independent
authority; provided, however, if the period set forth in paragraphs 6
through 8 has expired without the granting of provisional relief by the
duly empowered authority, and provided that all other conditions for
importation have been complied with, such Party shall permit the owner,
importer or consignee of such goods to receive such goods for entry into
commerce on the posting of a security in an amount sufficient to protect
the right holder against any infringement. Payment of such security
shall not prejudice any other remedy available to the right holder, it
being understood that the security shall be released if the right holder
fails to pursue its right of action within a reasonable period of time.
5. Each
Party shall ensure that its customs administration will promptly notify
the importer and the applicant when the customs administration suspends
the release of goods pursuant to paragraph 1.
6. Each
Party shall ensure that its customs administration will release goods
from suspension if within a period not exceeding 10 working, days after
the applicant under paragraph 1 has been served notice of the suspension
the customs administration has not been informed that:
(a) a
party other than the defendant has initiated proceedings leading to a
decision on the merits of the case, or
(b) a
competent authority has taken provisional measures prolonging the
suspension, provided that all other conditions for importation or
exportation have been met. Each Party shall provide that, in appropriate
cases, the customs administration may extend the suspension by another
10 working days.
7. Each
Party shall ensure that proceedings leading to a decision on the merits
of the case have been initiated, a review, including a right to be
heard, shall take place on request of the defendant with a view to
deciding, within a reasonable period, whether the measures shall be
modified, revoked or confirmed.
8.
Notwithstanding paragraphs 6 and 7, where the suspension of the release
of goods is carried out or continued in accordance with a provisional
judicial measure, Article 13(6) shall apply.
9. Each
Party shall ensure that its competent authorities have the authority to
order the applicant under paragraph 1 to pay the importer, the consignee
and the owner of the goods appropriate compensation for any injury
caused to them through the wrongful detention of goods or through the
detention of goods released pursuant to paragraph 6.
10.
Without prejudice to the protection of confidential information, each
Party shall ensure that its competent authorities have the authority to
give the right holder sufficient opportunity to have any goods detained
by the customs administration inspected in order to substantiate its
claims. Each Party shall also ensure that its competent authorities have
the authority to give the importer an equivalent opportunity to have any
such goods inspected. Where the competent authorities have made a
positive determination on the merits of a case, a Party may provide the
competent authorities the authority to inform the right holder of the
names and addresses of the consignor, the importer and the consignee,
and of the quantity of the goods in question.
11. Where
a Party requires its competent authorities to act on their own
initiative and to suspend the release of goods in respect of which they
have acquired facie evidence that an intellectual property right is
being infringed:
(a) the
competent authorities may at any time seek from the right holder any
information that might assist them to exercise these powers;
(b) the
importer and the right holder shall be promptly notified of the
suspension by the Party's competent authorities, and where the importer
lodges an appeal against the suspension with competent authorities; the
suspension shall be subject to the conditions, with such modifications
as may be necessary, set out in paragraphs 6 through 8; and
(c) the
Party may exempt public authorities and officials from liability, except
when the offending actions were not taken or intended in good faith.
12.
Without prejudice to other rights of action open to the right holder and
subject to the defendant's right to seek judicial review, each Party
shall provide that its competent authorities shall have the authority to
order the destruction or disposal of infringing goods in accordance with
the principles set out in Article 12(4). In regard to counterfeit goods,
the authorities shall not allow the reexportation of the infringing
goods in an unaltered state or subject them to a different customs
procedure, other than in exceptional circumstances.
13. A
Party may exclude from the application of paragraphs 1 through 12 small
quantities of goods of a non-commercial nature contained in travellers'
personal luggage or sent in small consignments that are not repetitive.
ARTICLE
16: Existing Subject Matter
To the
extent this Agreement requires a Party to increase its level of
protection and enforcement of intellectual property rights, it gives
rise to obligations in respect of all subject matter existing at the
date of application of this Agreement for the Party in question, and
which is protected in that Party on the date the Agreement enters into
force, or which meets or comes subsequently to meet the criteria for
protection under the terms of this Agreement. This obligation is in
addition to the obligation to implement fully the obligations of Article
18 of the Berne Convention (Paris text) with respect to all works,
including sound recording.
ARTICLE
17: Definitions
1. For
purposes of this Agreement:
confidential
information includes trade secrets, privileged information, and
other undisclosed information that has not become subject to an
unrestricted public disclosure under the Party's domestic law.
encrypted
program-carrying satellite signal
means a program-carrying satellite signal that is transmitted in a form
whereby the aural or visual characteristics, or both, are modified or
altered for the purpose of preventing the unauthorized reception of a
program carried in that signal by persons without the authorized
equipment that is designed to eliminate the effects of such modification
or alteration; in a
manner contrary to honest commercial practices means at least practices
such as knowing breach or inducement to breach of contract, of
confidence, or of an intellectual property right, and includes the
acquisition, disclosure, or use of confidential information by third
persons who knew, or were negligent in failing to know, that such
practices were involved in the acquisition;
intellectual
property rights refers to copyrights and related rights,
trademarks, patents, protection of integrated circuit layout designs and
encrypted satellite signals, trade secrets, and protection of plant
breeders rights;
lawful
distributor of an encrypted satellite signal in a Party means the
person who originally transmitted the signal, regardless of the location
of such person, and any other person or persons designated by the
original transmitter as lawful distributors of such signal in such
Party.
national
of a Party shall, in respect of the relevant intellectual property
rights, be understood as those natural or legal persons that would meet
the criteria for eligibility for protection provided for in the Paris
Convention, the Berne Convention, the Geneva Convention, the
International Convention for the Protection of Performers, Producers of
Phonograms and Broadcasting Organizations (1961), the UPOV Convention
(1978), the UPOV Convention (1991) or the Treaty on Intellectual
Property in Respect of Integrated Circuits as if each Party were a party
to those Conventions, and with respect to intellectual property rights
that are not the subject of these Conventions,, "national of a
Party" shall be understood at least to include any person that is a
citizen or permanent resident of that Party.
public
includes, with respect to rights of communication and performance of
provided for under Articles 11, 11bis(1) and 14 (1) (ii) of the Berne
Convention, with respect to dramatic, dramatico-musical, musical and
cinematographic works, at least, any aggregation of individuals intended
to be the object of, and capable of perceiving, communications or
performances of works, regardless of whether they can do so at the same
or different times or in the same or different places, provided that
such an aggregation of larger than a family and its immediate circle of
acquaintances or is not a group composing a limited number of
individuals having similarly close ties that has not been formed for the
principal purpose of receiving such performances and communications
works; and
right
holder includes the right holder personally, any other natural or
legal person authorized by the right holder who is an exclusive licensee
of the right, or other authorized persons, including federations and
associations, having legal standing under domestic law to assert such
rights;
ARTICLE
18: National Security Exception
Nothing in
this Agreement shall be construed:
1. to
require either Party to furnish or allow access to any information the
disclosure of which it determines to be contrary to essential security
interests;
2. to
prevent either Party from taking any actions that it considers necessary
for the protection of its essential security interests:
(a)
relating to the traffic in arms, ammunition and implements of war, and
to such traffic and transactions in other goods, materials, services and
technology undertaken directly or indirectly for the purpose of
supplying a military or other security establishment,
(b) taken
in time of war or other emergency in international relations, or
(c)
relating to the implementation of national policies or international
agreements respecting the non-proliferation of nuclear weapons or other
nuclear explosive devices; or
3. to
prevent either Party from taking action in pursuance of its obligations
under the United Nations Charter for the maintenance of international
peace and security.
ARTICLE
19: Consultations
Both
Parties agree, at the request of either Party, to consult promptly on
matters relating for the protection and enforcement of intellectual
property rights, in particuIar with respect to implementation of the
obligations of this Agreement.
ARTICLE
20: Entry into Force and Final Provisions
1.
Effective upon signature, each Party agrees to submit to its legislature
any legislation and to issue any regulations necessary to carry out
fully the obligations of this Agreement and to enact and implement such
legislation and give effect to such regulations within 18 months.
2. This
Agreement will enter into force upon the exchange of notes between the
Parties in which they indicate that the Agreement has been ratified by
the Congress of each of the Parties if their Constitution so requires.
3. This
Agreement shall remain in force for an initial period of ten years and
shall continue in force thereafter until terminated in accordance with
this paragraph. Either Party may, by giving one year's written notice to
the other Party, terminate this Agreement at the end of the initial
ten-year period or at any time thereafter.
Signed in
Managua, Nicaragua this seventh day of January, one thousand nine
hundred and ninety-eight, in two copies in the Spanish and English
languages, both texts being equally authentic.
FOR THE
GOVERNMENT THE UNITED STATES OF AMERICA:
FOR THE
GOVERNMENT OF THE REPUBLIC OF NICARAGUA:
/S/ /S/
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