Agreement Establishing the World Trade Organization
(Continued)
Annex 1C: Agreement on Trade-Related Aspects of Intellectual Property Rights
Article 52: Application
Any right holder initiating the procedures under Article 51 shall
be required to provide adequate evidence to satisfy the competent
authorities that, under the laws of the country of importation,
there is prima facie an infringement of the right holder's
intellectual property right and to supply a sufficiently detailed
description of the goods to make them readily recognizable by
the customs authorities. The competent authorities shall inform
the applicant within a reasonable period whether they have accepted
the application and, where determined by the competent authorities,
the period for which the customs authorities will take action.
Article 53: Security or Equivalent Assurance
1. The competent authorities shall have the authority to require
an applicant 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.
2. Where pursuant to an application under this Section the release
of goods involving industrial designs, patents, layout-designs
or undisclosed information into free circulation has been suspended
by customs authorities on the basis of a decision other than by
a judicial or other independent authority, and the period provided
for in Article 55 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, the
owner, importer, or consignee of such goods shall be entitled
to their release on the posting of a security in an amount sufficient
to protect the right holder for 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 the right of action within
a reasonable period of time.
Article 54: Notice of Suspension
The importer and the applicant shall be promptly notified of
the suspension of the release of goods according to Article 51.
Article 55: Duration of Suspension
If, within a period not exceeding 10 working days after the applicant
has been served notice of the suspension, the customs authorities
have not been informed that proceedings leading to a decision
on the merits of the case have been initiated by a party other
than the defendant, or that the duly empowered authority has taken
provisional measures prolonging the suspension of the release
of the goods, the goods shall be released, provided that all other
conditions for importation or exportation have been complied with:
in appropriate cases, this time-limit may be extended by another
10 working days. If 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 upon request of the defendant with
a view to deciding, within a reasonable period, whether these
measures shall be modified, revoked or confirmed. Notwithstanding
the above, where the suspension of the release of goods is carried
out or continued in accordance with a provisional judicial measure,
the provisions of paragraph 6 of Article 50 shall apply.
Article 5: Indemnification of the Importer and of the Owner
of the Goods
Relevant authorities shall have the authority to order the applicant
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 Article 55.
Article 57: Right of Inspection and Information
Without prejudice to the protection of confidential information,
Members shall provide the competent authorities the authority
to give the right holder sufficient opportunity to have any goods
detained by the customs authorities inspected in order to substantiate
the right holder's claims. The competent authorities shall also
have authority to give the importer an equivalent opportunity
to have any such goods inspected. Where a positive determination
has been made on the merits of a case, Members 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.
Article 58: Ex Officio Action
Where Members require competent authorities to act upon their
own initiative and to suspend the release of goods in respect
of which they have acquired prima 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 may assist them to exercise these
powers;
(b) the importer and the right holder shall be promptly notified
of the suspension. Where the importer has lodged an appeal against
the suspension with the competent authorities, the suspension
shall be subject to the conditions, mutatis mutandis, set
out at Article 55;
(c) Members shall only exempt both public authorities and officials
from liability to appropriate remedial measures where actions
are taken or intended in good faith.
Article 59: Remedies
Without prejudice to other rights of action open to the right
holder and subject to the right of the defendant to seek review
by a judicial authority, competent authorities shall have the
authority to order the destruction or disposal of infringing goods
in accordance with the principles set out in Article 46. In regard
to counterfeit trademark goods, the authorities shall not allow
the re-exportation of the infringing goods in an unaltered state
or subject them to a different customs procedure, other than in
exceptional circumstances.
Article 60: De Minimis Imports
Members may exclude from the application of the above provisions
small quantities of goods of a non-commercial nature contained
in travellers' personal luggage or sent in small consignments.
Section 5: Criminal Procedures
Article 61:
Members shall provide for criminal procedures and penalties to
be applied at least in cases of wilful trademark counterfeiting
or copyright piracy on a commercial scale. Remedies available
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. In appropriate
cases, remedies available shall also include the seizure, forfeiture
and destruction of the infringing goods and of any materials and
implements the predominant use of which has been in the commission
of the offence. Members may provide for criminal procedures and
penalties to be applied in other cases of infringement of intellectual
property rights, in particular where they are committed wilfully
and on a commercial scale.
PART IV ACQUISITION AND MAINTENANCE OF INTELLECTUAL PROPERTY
RIGHTS AND RELATED INTER PARTES PROCEDURES
Article 62:
1. Members may require, as a condition of the acquisition or maintenance
of the intellectual property rights provided for under Sections
2 through 6 of Part II, compliance with reasonable procedures
and formalities. Such procedures and formalities shall be consistent
with the provisions of this Agreement.
2. Where the acquisition of an intellectual property right is
subject to the right being granted or registered, Members shall
ensure that the procedures for grant or registration, subject
to compliance with the substantive conditions for acquisition
of the right, permit the granting or registration of the right
within a reasonable period of time so as to avoid unwarranted
curtailment of the period of protection.
3. Article 4 of the Paris Convention (1967) shall apply mutatis
mutandis to service marks.
4. Procedures concerning the acquisition or maintenance of intellectual
property rights and, where a Member's law provides for such procedures,
administrative revocation and inter partes procedures such
as opposition, revocation and cancellation, shall be governed
by the general principles set out in paragraphs 2 and 3 of Article
41.
5. Final administrative decisions in any of the procedures referred
to under paragraph 4 shall be subject to review by a judicial
or quasi-judicial authority. However, there shall be no obligation
to provide an opportunity for such review of decisions in cases
of unsuccessful opposition or administrative revocation, provided
that the grounds for such procedures can be the subject of invalidation
procedures.
PART V DISPUTE PREVENTION AND SETTLEMENT
Article 63: Transparency
1. Laws and regulations, and final judicial decisions and administrative
rulings of general application, made effective by a Member pertaining
to the subject matter of this Agreement (the availability, scope,
acquisition, enforcement and prevention of the abuse of intellectual
property rights) shall be published, or where such publication
is not practicable made publicly available, in a national language,
in such a manner as to enable governments and right holders to
become acquainted with them. Agreements concerning the subject
matter of this Agreement which are in force between the government
or a governmental agency of a Member and the government or a governmental
agency of another Member shall also be published.
2. Members shall notify the laws and regulations referred to in
paragraph 1 to the Council for TRIPS in order to assist that Council
in its review of the operation of this Agreement. The Council
shall attempt to minimize the burden on Members in carrying out
this obligation and may decide to waive the obligation to notify
such laws and regulations directly to the Council if consultations
with WIPO on the establishment of a common register containing
these laws and regulations are successful. The Council shall also
consider in this connection any action required regarding notifications
pursuant to the obligations under this Agreement stemming from
the provisions of Article 6ter of the Paris Convention
(1967).
3. Each Member shall be prepared to supply, in response to a written
request from another Member, information of the sort referred
to in paragraph 1. A Member, having reason to believe that a specific
judicial decision or administrative ruling or bilateral agreement
in the area of intellectual property rights affects its rights
under this Agreement, may also request in writing to be given
access to or be informed in sufficient detail of such specific
judicial decisions or administrative rulings or bilateral agreements.
4. Nothing in paragraphs 1, 2 and 3 shall require Members to disclose
confidential information which would impede law enforcement or
otherwise be contrary to the public interest or would prejudice
the legitimate commercial interests of particular enterprises,
public or private.
Article 64: Dispute Settlement
1. The provisions of Articles XXII and XXIII of GATT 1994 as elaborated
and applied by the Dispute Settlement Understanding shall apply
to consultations and the settlement of disputes under this Agreement
except as otherwise specifically provided herein.
2. Subparagraphs 1(b) and 1(c) of Article XXIII of GATT 1994 shall
not apply to the settlement of disputes under this Agreement for
a period of five years from the date of entry into force of the
WTO Agreement.
3. During the time period referred to in paragraph 2, the Council
for TRIPS shall examine the scope and modalities for complaints
of the type provided for under subparagraphs 1(b) and 1(c) of
Article XXIII of GATT 1994 made pursuant to this Agreement, and
submit its recommendations to the Ministerial Conference for approval.
Any decision of the Ministerial Conference to approve such recommendations
or to extend the period in paragraph 2 shall be made only by consensus,
and approved recommendations shall be effective for all Members
without further formal acceptance process.
PART VI TRANSITIONAL ARRANGEMENTS
Article 65: Transitional Arrangements
1. Subject to the provisions of paragraphs 2, 3 and 4, no Member
shall be obliged to apply the provisions of this Agreement before
the expiry of a general period of one year following the date
of entry into force of the WTO Agreement.
2. A developing country Member is entitled to delay for a further
period of four years the date of application, as defined in paragraph
1, of the provisions of this Agreement other than Articles 3,
4 and 5.
3. Any other Member which is in the process of transformation
from a centrally-planned into a market, free-enterprise economy
and which is undertaking structural reform of its intellectual
property system and facing special problems in the preparation
and implementation of intellectual property laws and regulations,
may also benefit from a period of delay as foreseen in paragraph
2.
4. To the extent that a developing country Member is obliged by
this Agreement to extend product patent protection to areas of
technology not so protectable in its territory on the general
date of application of this Agreement for that Member, as defined
in paragraph 2, it may delay the application of the provisions
on product patents of Section 5 of Part II to such areas of technology
for an additional period of five years.
5. A Member availing itself of a transitional period under paragraphs
1, 2, 3 or 4 shall ensure that any changes in its laws, regulations
and practice made during that period do not result in a lesser
degree of consistency with the provisions of this Agreement.
Article 66: Least-Developed Country Members
1. In view of the special needs and requirements of least-developed
country Members, their economic, financial and administrative
constraints, and their need for flexibility to create a viable
technological base, such Members shall not be required to apply
the provisions of this Agreement, other than Articles 3, 4 and
5, for a period of 10 years from the date of application as defined
under paragraph 1 of Article 65. The Council for TRIPS shall,
upon duly motivated request by a least-developed country Member,
accord extensions of this period.
2. Developed country Members shall provide incentives to enterprises
and institutions in their territories for the purpose of promoting
and encouraging technology transfer to least-developed country
Members in order to enable them to create a sound and viable
technological base.
Article 67: Technical Cooperation
In order to facilitate the implementation of this Agreement,
developed country Members shall provide, on request and on mutually
agreed terms and conditions, technical and financial cooperation
in favour of developing and least-developed country Members. Such
cooperation shall include assistance in the preparation of laws
and regulations on the protection and enforcement of intellectual
property rights as well as on the prevention of their abuse, and
shall include support regarding the establishment or reinforcement
of domestic offices and agencies relevant to these matters, including
the training of personnel.
PART VII INSTITUTIONAL ARRANGEMENTS: FINAL PROVISIONS
Article 6: Council for Trade-Related Aspects of Intellectual
Property Rights
The Council for TRIPS shall monitor the operation of this Agreement
and, in particular, Members' compliance with their obligations
hereunder, and shall afford Members the opportunity of consulting
on matters relating to the trade-related aspects of intellectual
property rights. It shall carry out such other responsibilities
as assigned to it by the Members, and it shall, in particular,
provide any assistance requested by them in the context of dispute
settlement procedures. In carrying out its functions, the Council
for TRIPS may consult with and seek information from any source
it deems appropriate. In consultation with WIPO, the Council shall
seek to establish, within one year of its first meeting, appropriate
arrangements for cooperation with bodies of that Organization.
Article 69: International Cooperation
Members agree to cooperate with each other with a view to eliminating
international trade in goods infringing intellectual property
rights. For this purpose, they shall establish and notify contact
points in their administrations and be ready to exchange information
on trade in infringing goods. They shall, in particular, promote
the exchange of information and cooperation between customs authorities
with regard to trade in counterfeit trademark goods and pirated
copyright goods.
Article 70: Protection of Existing Subject Matter
1. This Agreement does not give rise to obligations in respect
of acts which occurred before the date of application of the Agreement
for the Member in question.
2. Except as otherwise provided for in this Agreement, this Agreement
gives rise to obligations in respect of all subject matter existing
at the date of application of this Agreement for the Member in
question, and which is protected in that Member on the said date,
or which meets or comes subsequently to meet the criteria for
protection under the terms of this Agreement. In respect of this
paragraph and paragraphs 3 and 4, copyright obligations with respect
to existing works shall be solely determined under Article 18
of the Berne Convention (1971), and obligations with respect to
the rights of producers of phonograms and performers in existing
phonograms shall be determined solely under Article 18 of the
Berne Convention (1971) as made applicable under paragraph 6 of
Article 14 of this Agreement.
3. There shall be no obligation to restore protection to subject
matter which on the date of application of this Agreement for
the Member in question has fallen into the public domain.
4. In respect of any acts in respect of specific objects embodying
protected subject matter which become infringing under the terms
of legislation in conformity with this Agreement, and which were
commenced, or in respect of which a significant investment was
made, before the date of acceptance of the WTO Agreement by that
Member, any Member may provide for a limitation of the remedies
available to the right holder as to the continued performance
of such acts after the date of application of this Agreement for
that Member. In such cases the Member shall, however, at least
provide for the payment of equitable remuneration.
5. A Member is not obliged to apply the provisions of Article
11 and of paragraph 4 of Article 14 with respect to originals
or copies purchased prior to the date of application of this Agreement
for that Member.
6. Members shall not be required to apply Article 31, or the requirement
in paragraph 1 of Article 27 that patent rights shall be enjoyable
without discrimination as to the field of technology, to use without
the authorization of the right holder where authorization for
such use was granted by the government before the date this Agreement
became known.
7. In the case of intellectual property rights for which protection
is conditional upon registration, applications for protection
which are pending on the date of application of this Agreement
for the Member in question shall be permitted to be amended to
claim any enhanced protection provided under the provisions of
this Agreement. Such amendments shall not include new matter.
8. Where a Member does not make available as of the date of entry
into force of the WTO Agreement patent protection for pharmaceutical
and agricultural chemical products commensurate with its obligations
under Article 27, that Member shall:
(a) notwithstanding the provisions of Part VI, provide as from
the date of entry into force of the WTO Agreement a means by which
applications for patents for such inventions can be filed;
(b) apply to these applications, as of the date of application
of this Agreement, the criteria for patentability as laid down
in this Agreement as if those criteria were being applied on the
date of filing in that Member or, where priority is available
and claimed, the priority date of the application; and
(c) provide patent protection in accordance with this Agreement
as from the grant of the patent and for the remainder of the patent
term, counted from the filing date in accordance with Article
33 of this Agreement, for those of these applications that meet
the criteria for protection referred to in subparagraph (b).
9. Where a product is the subject of a patent application in a
Member in accordance with paragraph 8(a), exclusive marketing
rights shall be granted, notwithstanding the provisions of Part
VI, for a period of five years after obtaining marketing approval
in that Member or until a product patent is granted or rejected
in that Member, whichever period is shorter, provided that, subsequent
to the entry into force of the WTO Agreement, a patent application
has been filed and a patent granted for that product in another
Member and marketing approval obtained in such other Member.
Article 71: Review and Amendment
1. The Council for TRIPS shall review the implementation of this
Agreement after the expiration of the transitional period referred
to in paragraph 2 of Article 65. The Council shall, having regard
to the experience gained in its implementation, review it two
years after that date, and at identical intervals thereafter.
The Council may also undertake reviews in the light of any relevant
new developments which might warrant modification or amendment
of this Agreement.
2. Amendments merely serving the purpose of adjusting to higher
levels of protection of intellectual property rights achieved,
and in force, in other multilateral agreements and accepted under
those agreements by all Members of the WTO may be referred to
the Ministerial Conference for action in accordance with paragraph
6 of Article X of the WTO Agreement on the basis of a consensus
proposal from the Council for TRIPS.
Article 72: Reservations
Reservations may not be entered in respect of any of the provisions
of this Agreement without the consent of the other Members.
Article 73: Security Exceptions
Nothing in this Agreement shall be construed:
(a) to require a Member to furnish any information the disclosure
of which it considers contrary to its essential security interests;
or
(b) to prevent a Member from taking any action which it considers
necessary for the protection of its essential security interests;
(i) relating to fissionable materials or the materials from
which they are derived;
(ii) relating to the traffic in arms, ammunition and implements
of war and to such traffic in other goods and materials as is
carried on directly or indirectly for the purpose of supplying
a military establishment;
(iii) taken in time of war or other emergency in international
relations; or
(c) to prevent a Member from taking any action in pursuance of
its obligations under the United Nations Charter for the maintenance
of international peace and security.
Continue on to Annex 2: Understanding on Rules and Procedures
Governing the Settlement of Disputes
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