Chapter Seventeen: Intellectual Property Rights

Comparative Study

Table of Contents

DR-CAFTA
Date of Signature: August 5, 2004
Chapter Fifteen:
Intellectual Property Rights

Desiring to promote greater efficiency and transparency in the administration of intellectual property systems of the Parties;

Desiring to build on the foundations established in existing international agreements in the field of intellectual property, including the World Trade Organization (WTO) Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement) and affirming the rights and obligations set forth in the TRIPS Agreement;

Recognizing the principles set out in the Declaration on the TRIPS Agreement on Public Health, adopted on November 14, 2001, by the WTO at the Fourth WTO Ministerial Conference, held in Doha, Qatar;

Emphasizing that the protection and enforcement of intellectual property rights is a fundamental principle of this Chapter that helps promote technological innovation as well as the transfer and dissemination of technology to the mutual advantage of technology producers and users, and that encourages the development of social and economic well-being;

Convinced of the importance of efforts to encourage private and public investment for research, development, and innovation;

Recognizing that the business community of each Party should be encouraged to participate in programs and initiatives for research, development, innovation, and the transfer of technology implemented by the other Party;

Recognizing the need to achieve a balance between the rights of right holders and the legitimate interests of users and the community with regard to protected works;

Agree as follows:

NO CORRESPONDING PROVISION

(a) the WIPO Copyright Treaty (1996); and

(b) the WIPO Performances and Phonograms Treaty (1996).

17.1.2. Before January 1, 2007, each Party shall ratify or accede to the Patent CooperationTreaty (1984).

(a) the Patent Cooperation Treaty, as revised and amended (1970); and

(b) the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure (1980).

(a) the International Convention for the Protection of New Varieties of Plants (1991);

All other Parties shall do so by January 1, 2006.

(b) the Trademark Law Treaty (1994); and

(b) the Trademark Law Treaty (1994).

(c) the Convention Relating to the Distribution of Programme-Carrying Signals Transmitted by Satellite (1974).

(a) the Convention Relating to the Distribution of Programme-Carrying Signals Transmitted by Satellite (1974); and

17.1.4. Each Party shall undertake reasonable efforts to ratify or accede to the following agreements in a manner consistent with its domestic law:

15.1.6. Each Party shall make all reasonable efforts to ratify or accede to the following agreements:

(a) the Patent Law Treaty (2000);

(a) the Patent Law Treaty (2000);

(b) the Hague Agreement Concerning the International Registration of Industrial Designs (1999); and

(b) the Hague Agreement Concerning the International Registration of Industrial Designs (1999); and

(c) the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (1989).

(c) the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (1989).

(a) is necessary to secure compliance with laws and regulations that are not inconsistent with this Chapter; and

(b) is not applied in a manner that would constitute a disguised restriction on trade.

(a) educational and dissemination projects on the use of intellectual property as a research and innovation tool, as well as on the enforcement of intellectual property;

(a) educational and dissemination projects on the use of intellectual property as a research and innovation tool, as well as on the enforcement of intellectual property rights;

(b) appropriate coordination, training, specialization courses, and exchange of information between the intellectual property offices and other institutions of the Parties; and

(b) appropriate coordination, training, specialization courses and exchange of information between the intellectual property offices and other institutions of the Parties; and

(c) enhancing the knowledge, development, and implementation of the electronic systems used for the management of intellectual property.

(c) enhancing the knowledge, development, and implementation of the electronic systems used for the management of intellectual property.

³ A geographical indication is capable of constituting a trademark to the extent that the geographical indication consists of any sign, or any combination of signs, capable of identifying a good or service as originating in the territory of a Party, or a region or locality in that territory, where a given quality, reputation, or other characteristic of the good or service is essentially attributable to its geographical origin.

15.2.1. Each Party shall provide that trademarks shall include collective, certification and sound marks, and may include geographical indications and scent marks. A geographical indication is capable of constituting a mark to the extent that the geographical indication consists of any sign, or any combination of signs, capable of identifying a good or service as originating 5 in the territory of a Party, or a region or locality in that territory, where a given quality, reputation, or other characteristic of the good or service is essentially attributable to its geographical origin.

Note: Pursuant to Article 17.12.2(a) Final Provisions, amendments to the domestic legislation of a Party or financial resources required for the full implementation of the obligation contained in Article 17.2 on trademarks, shall be in force or available as soon as practicable and in no event later than two years from the date of entry into force of the Agreement.

(a) providing to the applicant a communication in writing, which may be electronic, of the reasons for any refusal to register a trademark;

(a) providing to the applicant a communication in writing, which may be electronic, of the reasons for any refusal to register a trademark;

(b) providing to the applicant an opportunity to respond to communications from the trademark authorities, contest an initial refusal, and appeal judicially any final refusal to register; and

(b) an opportunity for the applicant to respond to communications from the trademark authorities, to contest an initial refusal, and to appeal judicially any final refusal to register;

(c) a requirement that decisions in opposition or cancellation proceedings be reasoned and in writing.

(…)and

(d) a requirement that decisions in opposition or cancellation proceedings be reasoned and in writing.

(a) each registration or publication which concerns a trademark application or registration and which indicates the relevant goods or services shall indicate the goods or services by their names; and

15.2.8. (a) Each Party shall provide that each registration or publication that concerns a trademark application or registration and that indicates goods or services shall indicate the goods or services by their common names, grouped according to the classes of the classification established by the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (1979), as revised and amended (Nice Classification).

(b) goods or services may not be considered as being similar to each other simply on the ground that, in any registration or publication, they appear in the same
class of any classification system, including the Nice Classification. Conversely, goods or services may not be considered as being dissimilar from each other simply on the ground that, in any registration or publication, they appear in different classes of any classification system, including the Nice Classification.

(b) Each Party shall provide that goods or services may not be considered as being similar to each other solely on the ground that, in any registration or publication, they appear in the same class of the Nice Classification. Conversely, each Party shall provide that goods or services may not be considered as being dissimilar from each other solely on the ground that, in any registration or publication, they appear in different classes of the Nice Classification.

Note: Guatemala, Honduras and Nicaragua may delay giving effect to Article 15.4 and Costa Rica to Article 15.4.1 for no longer than two years, beginning on the date of entry into force of DR-CAFTA (DR-CAFTA Art. 15.12.2).

⁵ For the purposes of this Article, persons of a Party shall also mean government agencies.

(a) provide the legal means to identify and protect geographical indications of United States persons that meet the criteria in paragraph 1; and

(b) provide to United States geographical indications of wines and spirits the same recognition as Chile accords to wines and spirits under the Chilean geographical indications registration system.

7.4.3. The United States shall:

(a) provide the legal means to identify and protect the geographical indications of Chile that meet the criteria in paragraph 1; and

(b) provide to Chilean geographical indications of wines and spirits the same recognition as the United States accords to wines and spirits under the Certificate of Label Approval (COLA) system as administered by the Alcohol
and Tobacco Tax and Trade Bureau, Department of Treasury (TTB), or any successor agencies. Names that Chile desires to be included in the regulation set forth in 27 CFR Part 12 (Foreign Nongeneric), or any successor to that regulation, will be governed by paragraph 4 of this Article.

15.3.2. Each Party shall provide the legal means to identify⁸ and protect geographical indications of the other Parties that meet the criteria of paragraph 1. Each Party shall provide the means for persons of another Party to apply for protection or petition for recognition of geographical indications. Each Party shall accept applications and petitions from persons of another Party without the requirement for intercession by that Party on behalf of its persons.

15.3.4. Each Party shall make its regulations governing filing of such applications or petitions, as the case may be, readily available to the public.

17.4.9. The Parties acknowledge the principle of exclusivity incorporated in the Paris Convention and TRIPS Agreement, with respect to rights in trademarks.

Note: Pursuant to Article 17.12.2(a) Final Provisions, amendments to the domestic legislation of a Party or financial resources required for the full implementation of the obligation contained in Article 17.4(1) through 17.4(9) on geographical indications, shall be in force or available as soon as practicable and in no event later than two years from the date of entry into force of the Agreement

17.4.10. After the date of entry into force of this Agreement, each Party shall ensure that grounds for refusing protection or registration of a geographical indication include the following:

(a) the geographical indication is confusingly similar to a pre-existing pending good faith application for a trademark or a pre-existing trademark registered
in that Party; or
(b) the geographical indication is confusingly similar to a pre-existing trademark, the rights to which have been acquired through use in good faith in that Party.

(a) the geographical indication is likely to be confusingly similar to a trademark that is the subject of a good-faith pending application or registration; and

(b) the geographical indication is likely to be confusingly similar to a pre-existing trademark, the rights to which have been acquired in accordance with the Party’s law.⁹

Note: Costa Rica, the Dominican Republic, Guatemala, Honduras and Nicaragua may delay giving effect to Article 15.3.7 for no longer than two years, beginning on the date of entry into force of DR-CAFTA (DR-CAFTA Art. 15.12.2). Guatemala may delay giving effect to Article 15.3.7 for no longer than six months, beginning on the date of entry into force of DR-CAFTA (DR-CAFTA Art. 15.12.2).

Article 17.5: Copyright^6*

⁶ Except as provided in Article 17.12(2), each Party shall give effect to this Article upon the date of entry into force of this Agreement.

Article 15.5: Obligations Pertaining to Copyright and Related Rights^*

⁷ References to “authors” in this chapter refer also to any successors in interest.

¹⁰ References in this Chapter to “authors, performers and producers of phonograms” refer also to any successors in interest.

⁸ With respect to copyrights and related rights in this Chapter, a right to authorize or prohibit or a right to authorize shall mean an exclusive right.

(a) on the basis of the life of a natural person, the term shall be not less than the life of the author and 70 years after the author’s death; and

(b) on a basis other than the life of a natural person, the term shall be

(i) not less than 70 years from the end of the calendar year of the first authorized publication of the work, or

(ii) failing such authorized publication within 50 years from the creation of the work, not less than 70 years from the end of the calendar year of the creation of the work.

15.5.4. Each Party shall provide that, where the term of protection of a work (including a photographic work), performance or phonogram is to be calculated:

(a) on the basis of the life of a natural person, the term shall be not less than the life of the author and 70 years after the author’s death; and

(b) on a basis other than the life of a natural person, the term shall be:

(i) not less than 70 years from the end of the calendar year of the first authorized publication of the work, performance or phonogram, or

(ii) failing such authorized publication within 50 years from the creation of the work, performance or phonogram, not less than 70 years from the end of the calendar year of the creation of the work, performance or phonogram.

Note: Guatemala and the Dominican Republic may delay giving effect to Article 15.5.4 for no longer than six months, beginning on the date of entry into force of DR-CAFTA (DR-CAFTA Art. 15.12.2).

Article 17.6: Related Rights 11*

*Note: Article17.6 pertains to related rights only unlike the equivalent provision of DR-CAFTA that applies to both copyright and related rights. Differences in language due to this difference in structure have not been highlighted.

Note: A corresponding footnote is included in Article 17.5(1).

¹¹ With respect to copyrights and related rights in this Chapter, a right to authorize or prohibit or a right to authorize means an exclusive right.

Note: Pursuant to Article 17.12.2(a) Final Provisions, amendments to the domestic legislation of a Party or financial resources required for the full implementation of the obligation contained in Article 17.6.(1) on temporary copies, shall be in force or available as soon as practicable and in no event later than two years from the date of entry into force of the Agreement.

(a) the broadcasting and communication to the public of their unfixed performances except where the performance is already a broadcast performance, and

(b) the fixation of their unfixed performances.

(a) the broadcasting and communication to the public of their unfixed performances except where the performance is already a broadcast performance; and

(b) the fixation of their unfixed performances.

Note: Pursuant to Article 17.12.2(b) Final Provisions, amendments to the domestic legislation of a Party or financial resources required for the full implementation of the obligation contained in Article 17.6.(5) with respect to the right of communication to the public and non-interactive digital transmissions, for performers and producers of phonograms, shall be in force or available as soon as practicable and in no event later than four years from the date of entry into force of the Agreement.

(c) Each Party may adopt limitations to this right in respect of other noninteractive transmissions in accordance with Article 15.5.10, provided that the limitations do not be prejudice the right of the performer or producer of phonograms to obtain equitable remuneration.

(a) not less than 70 years from the end of the calendar year of the first authorized publication of the performance or phonogram, or

(a) on the basis of the life of a natural person, the term shall be not less than the life of the author and 70 years after the author’s death; and

(b) failing such authorized publication within 50 years from the fixation of the performance or phonogram, not less than 70 years from the end of the calendar year of the fixation of the performance or phonogram.

(b) on a basis other than the life of a natural person, the term shall be:

(i) not less than 70 years from the end of the calendar year of the first authorized publication of the work, performance or phonogram, or

(ii) failing such authorized publication within 50 years from the creation of the work, performance or phonogram, not less than 70 years from the end of the calendar year of the creation of the work, performance or phonogram.

Article 17.7: Obligations Common to Copyright
and Related Rights¹⁶

¹⁶ Except as provided in Article 17.12(2), each Party shall give effect to this Article upon the date of entry into force of this Agreement.

(i) any person owning any economic right, i.e., not a moral right, may freely and separately transfer such right by contract; and

(a) any person acquiring or holding any economic right in a work, performance, or phonogram may freely and separately transfer such right by contract; and

(ii) any person who has acquired or owns any such economic right by virtue of a contract, including contracts of employment underlying the creation of works and phonograms, shall be permitted to exercise that right in its own name and enjoy fully the benefits derived from that right.

(b) any person acquiring or holding any such economic right by virtue of a contract, including contracts of employment underlying the creation of works and performances, and production of phonograms, shall be able to exercise such right in that person’s own name and enjoy fully the benefits derived from such right.

(i) which contracts of employment underlying the creation of works or phonograms shall, in the absence of a written agreement, result in a transfer of economic rights by operation of law; and

(ii) reasonable limits to the provisions in paragraph 2(a) to protect the interests of the original right holders, taking into account the legitimate interests of the transferees.

Article 17.7(3) neither reduces nor extends the scope of applicability of the limitations and exceptions permitted by the Berne Convention, the WIPO Copyright Treaty (1996), and the WIPO Performances and Phonograms Treaty (1996).

17.7.4. In order to confirm that all federal or central government agencies use computer software only as authorized, each Party shall issue appropriate laws, orders, regulations, or administrative or executive decrees to actively regulate the acquisition and management of software for such government use. Such measures may take the form of procedures such as preparing and maintaining inventories of software present on agencies’ computers and inventories of software licenses.

Note: The Dominican Republic, Guatemala, Honduras and Nicaragua may delay giving effect to Article 15.5.9 for no longer than one year, beginning on the date of entry into force of DR-CAFTA (DR-CAFTA Art. 15.12.2).

17.7.5. (a) each Party shall provide that any person who knowingly ¹⁸ circumvents without authorization of the right holder or law consistent with this Agreement any effective technological measure that controls access to a protected work, performance, or phonogram shall be civilly liable and, in appropriate circumstances, shall be criminally liable, or said conduct shall be considered an aggravating circumstance of another offense.¹⁹ No Party is required to impose civil or criminal liability for a person who circumvents any effective technological measure that protects any of the exclusive rights of copyright or related rights in a protected work, but does not control access to such work.

(i) circumvents without authority any effective technological measure that controls access to a protected work, performance, phonogram, or other subject matter; or

(ii) manufactures, imports, distributes, offers to the public, provides or otherwise traffics in devices, products or components or offers to the public or provides services, that:

(i) are promoted, advertised, or marketed for the purpose of circumvention of any effective technological measure, or

(A) are promoted, advertised or marketed for the purpose of circumvention of any effective technological measure; or

(ii) do not have a commercially significant purpose or use other than to circumvent any effective technological measure, or

(B) have only a limited commercially significant purpose or use other than to circumvent any effective technological measure; or

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

(C) are primarily designed, produced, or performed for the purpose of enabling or facilitating the circumvention of any effective technological measure, shall be liable and subject to the remedies provided for in Article 15.11.14.

NO CORRESPONDING SUBDIVISION

15.5.7.(b) In implementing subparagraph (a), no Party shall be obligated to require that the design of, or the design and selection of parts and components for, a consumer electronics, telecommunications or computing product provide for a response to any particular technological measure, so long as the product does not otherwise violate any measure implementing subparagraph (a).

15.5.7(d) Each Party shall confine exceptions to any measures implementing the prohibition in subparagraph (a)(ii) on technology, products, services, or devices that circumvent effective technological measures that control access to, and, in the case of clause (i), that protect any of the exclusive rights of copyright or related rights in, a protected work, performance, or phonogram referred to in subparagraph (a)(ii) to the following activities, provided that they do not impair the adequacy of legal protection or the effectiveness of legal remedies against the circumvention of effective technological measures:

(iii) noninfringing good faith activities, carried out by a researcher who has lawfully obtained a copy, performance, or display of a work, and who has made a reasonable attempt to obtain authorization for such activities, to the extent necessary for the sole purpose of identifying and analyzing flaws and vulnerabilities of encryption technologies;²²

(iv) the inclusion of a component or part for the sole purpose of preventing the access of minors to inappropriate online content in a technology, product, service, or device that does not itself violate any measures implementing subparagraphs (a) and (b);

(v) noninfringing good faith activities that are authorized by the owner of a computer, computer system, or computer network for the sole purpose of testing, investigating, or correcting the security of that computer, computer system, or computer network;

15.5.7(e) Each Party shall confine exceptions to any measures implementing the prohibition referred to in subparagraph (a)(i) to the activities listed in subparagraph (d) and the following activities, provided that they do not impair the adequacy of legal protection or the effectiveness of legal remedies against the circumvention of effective technological measures:

(vi) noninfringing activities for the sole purpose of identifying and disabling a capability to carry out undisclosed collection or dissemination of personally identifying information reflecting the online activities of a natural person in a way that has no other effect on the ability of any person to gain access to any work;

(vii) lawfully authorized activities carried out by government employees, agents, or contractors for the purpose of law enforcement, intelligence, or similar government activities; and

(viii) access by a nonprofit library, archive, or educational institution to a work not otherwise available to it, for the sole purpose of making acquisition decisions.

(i) any measure implementing subparagraph (a) may be subject to the exceptions and limitations with respect to each situation and activity set forth in subparagraph (d).

(ii) any measure implementing subparagraph (b), as it applies to effective technological measures that control access to a work, may be subject to exceptions and limitations with respect to the activities set forth in subparagraphs (d)(ii), (iii), (iv), (v), and (vii).

(iii) any measure implementing subparagraph (b), as it applies to effective technological measures that protect any copyright or any rights related to copyright, may be subject to exceptions and limitations with respect to the activities set forth in subparagraph (d)(ii) and (vii).

17.7.6(a) each Party shall provide that any person who without authority, and knowing, or, with respect to civil remedies, having reasonable grounds to know, that it will induce, enable, facilitate, or conceal an infringement of any copyright or related right,

(i) knowingly removes or alters any rights management information;

(ii) distributes or imports for distribution rights management information knowing that the rights management information has been altered without authority; or

15.5.8.(a) Each Party shall provide that any person who, without authority, and knowing, or, with respect to civil remedies, having reasonable grounds to know, that it would induce, enable, facilitate, or conceal an infringement of any copyright or related right,

(i) knowingly removes or alters any rights management information;

(iii) distributes, imports for distribution, broadcasts, communicates, or makes available to the public copies of works or phonograms, knowing that rights management information has been removed or altered without authority, shall be liable, upon the suit of any injured person, and subject to the remedies in Article 17.11(5).

Each Party shall provide for application of criminal procedures and remedies at least in cases where acts prohibited in the subparagraph are done willfully and for purposes of commercial advantage. A Party may exempt from criminal liability prohibited acts done in connection with a nonprofit library, archive, educational institution, or broadcasting entity established without a profit-making purpose.

(ii) distributes or imports for distribution rights management information knowing that the rights management information has been removed or altered without authority; or

Note: Costa Rica, Guatemala, Honduras and Nicaragua may delay giving effect to Article 15.5.8(a)(ii) for no longer than two years and El Salvador, for no longer than 30 months, beginning on the date of entry into force of DR-CAFTA (DR-CAFTA Art. 15.12.2).

(iii) distributes, imports for distribution, broadcasts, communicates or makes available to the public copies of works, performances, or phonograms, knowing that rights management information has been removed or altered without authority, shall be liable and subject to the remedies provided for in Article 15.11.14.

Each Party shall provide for criminal procedures and penalties to be applied when any person, other than a nonprofit library, archive, educational institution or public non-commercial broadcasting entity, is found to have engaged willfully and for purposes of commercial advantage or private financial gain in any of the foregoing activities.