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Republic of Botswana
DUSTRIAL PROPERTY ACT, 1996
Printed by the Government Printer, Gaborone, Botswana
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INDUSTRIAL PROPERTY ACT, 1996
No .. 14 of1996
ARRANGENffiNTOFSECTIONS SECTION
PART 1-Preliminary L Short title 2. Interpretation 3. Establishment of Patents, Marks and Designs Office 4. Registrar, Deputy Registrar and Assistant Registrars of Marks, Patents
Designs 5. Powers and functions of Registrar 6. Seal of office 7. Registers for patents, etc
PART II-Patents 8. Patentable inventions 9. Matter excluded from patent protcction
10. Who may apply for a patent Il. Right to patent 12. Transfer of rights to a patent 13. Application for a patent 14. Arnendment of application 15. Unity of invention 16. Division of application 17. Joint applicants 18. Right of priority 19. Conversion of patent application imo application for utility rnodel certificate 20. Information concerning corresponding foreign applications for patents 21. Filing date of application for a patent 22. Exarnination of applications 23. Grant of patent 24. Rights conferred by patent 25. Proceedings for infringement 26. Restriction on recovery of damages for infringement 27. Duration and maintenance of patent 28. ARIPO Protocol patents 29. Joint ownership in patent 30. Exploitation by Government or person authorized thereby il. Compulsory licences
32. Terrnination of contracts relating to licences 33. Invalidation of patent
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PART III - Utility Model Certificates 34. Applicability of provisions relating to patents 35. Qualification of invention for utility model certificate 36. Duration of utility model certificate 37. Invalidation of utility rnodel certificate 38. Conversion of application for utility model certificate into application for patent
PART IV -s-Lndustrial Designs 39. Registrable industrial designs 40. Right to industria! design 41. Transfer of right to a design 42. Application for registration of design 43. Right of priority 44. Filing date of application 45. Exarnination of applications 46. Registration of design 47. Rights conferred by registration 48. Proceedings far infringernent 49. Duration and renewal of registration of design 50. ARIPO Protocol designs 51. Inspection of registered design 52. Invalidation of registration of design
PART V - Marks, Collective Marks and Trade Names 53. Acquisition of exclusive right to a mark 54. Application far registration of a mark 55. Exarnination of application for a rnark 56. Opposition to registration of a mark 57. Registration of mark 58. Rights conferred by registration of mark 59. Transfer of rights in marks 60. Proceedings for infringernent 61. Duration and renewal of registration of mark 62. Banjul Protocol on marks 63. Invalidation of registration of mark 64. Removal of mark on grounds of non - lise 6S. Collective marks 66. Invalidation of rcgistration of collcctive mark 67. Licensing of marks and collecti ve marks 68. Trade narnes
PART VI - Acts 01Unfair Competition 69. Acts of unfair cornpctition
PART VII - Miscellaneous Provisions 70. Changes in ownership
71. Licence rights 72. Agents 73. Correction of errors 74. Exercise of discretionary powers 75. Extension of rime for applications
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Fìrst Schedule Second Schedule
An Act to provide far the protectlon of industriai property in Botswana, and for matters related thereto Date ofAssent: 21.08.96. Date ofCommencement: 27.08.96. ENACTED by the Parliament of Botswana.
PART I - Preliminary
1. This Act may be cited as the Industrial Property Act, 1996. 2. In this Act, unless the context otherwise requires
H ARIPO" means the African Regìonal Intellectual Property Organiza tion; H ARIPO Protocol H means the Protocol on Patents and Industrial Designs
Within the Framework of ARIPO of 10th December 1982; "Banjul protocol" rneans Banjul Protocol on rnarks of27th April, 1994; "collectìve mark" rneans any vìsible sign designated as such in meapplì
cation for registration and capable of distinguìshìng the origin or other common characterìstic, including the quality, of goods or services of different enterprises which lise the sign subject to the control of the registered owner thereof;
"convention country" means a country which is a party to the Paris Con ventìon;
"foreign applìcation" means any application for a patent or other title of protectìon filed by that applicant outside Botswana;
"industriai design" means any cornposìrìon of lìnes or colours or any three dirnensional fOnTI, whether or not associated with lines or colours, which composition or form gives a special appearance to a product of industry or handicraft and can serve as a pattern for a product of industry or handicraft provided that it does not consìst of anythìng which serves to obtain a technical result and leaves no freedom as regards arbitrary features of appearance;
"ìntegrated circuit" meansacircuit,in ìts finaì oranintermediate fOnTI, in which theelements, at leastone of which is an active element, and some or all of the interconnectìons are integrally formed in or on a piece of material and that is intended lo perform an electronic functìon:
"Internatìonal Classification" means, unless otherwise indicated, the classification according to the Nice Agreement Conceming the International Classifìcation of Goods and Services far the Pur poses of the Registration of Marks, of June 15, 1957, as last revised;
Short tule
lnterpre tation
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Establish ment of Marks, Parents and Designs Office
Registrar. Deputy Registrar and Assistant Registrars of Marks, Patents and Designs
"lnternational Patent Classification' means the classification accord ing to the Strasbourg Agreement of March 24, 1971;
"inventìon" means an idea of an inventor which permits in practìce the solution to a specific problem in the field of technology;
"Journal" means the joumal of marks, patents and designs referred to in section 5(e\
"rnark" means anyvisible sign capable ofdistinguishing the goods or services of an entcrprise;
"Master" means the Master of the High Court: "Minìster" rneans the Minister of Commerce and Industry; "Paris Convention" means the Paris Convention for the Protection
of Industria] Property of March 20, 1883, as Iast revised; "patent' means a title granted to protect an invention under this Act: "patentee" means the person to whom a patent has been granted
under this Act; "priority date" means the date of the earlier application that servcs 3S
the basis for the rìght of priority provided for by Artiele 4 of the Paris Convention set aut in thc First Schedule hereto:
"Registrar" means the Registrar of Marks, Patents and Designs appoìnted under section 4;
"right of priority' means the right of priority provided for in Artiele 4 of the Paris Convention;
"trade narne" means the name or designation by which a business or enterprise is distinguished; and
"utility model certificate" means a certificate grantcd far an invention in accordance with section 35.
3. There shall be established, at sueh piace as the Minister m al' determine, a Patents, Marks and Designs Office.
4. (1) There shall be a Registrar of Patcnts, Marks and Designs (referrcd to in this Act as "the Registrar") who shall be a public officer, and who shall, subject to the control of the Minister, be responsible for the administration of this Act, and who shall perform such functions, and exercise such powers as may be conferred on rum by this Act or any other enactment.
(2) The Registrar shall be appointed in accordance with the provi sions of the Public Service ACL
(3) There shall also be a Deputy Registrar of Patents, Marks and Desìgns, and suchnumbercfAssistant Registrars as ir may be considered necessary to appoint, who shall also be public officers and who shall, likewise, be appointed in accordance with the provisions of tbe Public Service ACL
e4) The Deputy Registrar and Assistant Registrars shall perform such functions, and exercise such powers as the Registrar may lawfully perform or exercìse under thìs Act or any other enactment.
5. Without derogating from the generality ofthe provisions of section 4, the Registrar shall have the following functions and powers, namely to-
Powers and functions of Registrar
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Ca) process ali applications made in terms of this Act; Cb) grant patents and utility model certificates; (c) regìster industrial desìgns, marks and collective marks; (d) administer granted patents and utility model certificates and
registered industrial desìgns, rnarks and collective marks; Ce) establish and maintaìn a joumal of marks, patents and designs in
which he shall publish all rnatters that are required to be published under this Act.
6. The Registrar shall have a seal of office which shall be affixed to every document issued or granted by rum, and to any copy ofa document issued by him in lieu of the original document.
7. (1) The Registrar shallmaintain separate registers for patents, utility model certificates, industrial desìgns and marks and shall, in a section of the regìster of marks created for that purpose, also register collective marks.
(2) In the registers referred to in subsection (1) shall be entered such particulars as are required by thìs Act or such further particulars as the Minister may, by regulations, prescribe.
(3) Any person may, upon payment of the prescribed fee, and in accordance with any conditions which may be prescrìbed, consult, inspect or make a copy of, or obtain an extract from, any register referred to in subsection (1).
PART II ~Patents
8. (l) An invention shall be patentable if it is new, involves an inventive step, and is industrially applicable,
(2) An invention may be, or may relate to, a product or a processo (3) An invention is considered to be new if it does not fonn part of
prior art. (4) (a) For the purposes of this Act, prìor art, in relation to an
invention, means anything which has been disclosed to the public, whetherin Botswanaor elsewhere,in a tangible form ororally, orby use or in any other way, prior to the filing or priority date of the application claiminz the invention,
(b) Disclosure of information whìch would otherwise affect the pat entability of an invention claimed in the application shall not affect the patentability of that invention where the inforrnatìon was disclosed during the twelve months preceding the filing date or, where priority is claìmed, the priority date of the application
(i) by the inventor; or (ii) by a third party which obtaìned meinformationdirectly or indirectly from the inventore (5) An invention shall be consìdered as involvìng an inventive step if,
havìng regard to the prior art relevant to the application claìmìng the invention as defined in subsectìon 4 (a), it would not have been obvious to a person havìng ordinary skill in the art.
Seal of office
Registers for patents, etc
Patentable inventions
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Mauer excluded frorn patent protection
Who may apply for a patent
Right to patent
(6) An ìnventìon shall be consìdered as being industrially applicable if it can be used in trade, or in any kind of industry including handìcraft, agriculture, fìshery and servìces,
(7) An inventìon which ìs contrary to public order or morality shall not be patentable.
9. (l) For the purposes of this Act, the followìng shall, even if they are ìnventions, not be protected as patents
(a) a discovery; Cb) a scientific theory or mathematical rnethod; Cc) a literary, dramatic, musical or artistìc work or other aesthetìc
creatìon; (cl) a scheme, rule or method far doing business, perforrning a
mental act or playing a game; (e) a program far a computer; (j) methods for the treatment of the human or animal body by
surgery; and (g) a diagnostic method practised on the human or anìmal body. (2) The provisions of subsection (1) (j) and (g) shall not apply to any
produci for use in the methods referred to therein, lO, (1) An application far a patent in respect of an invention may be
made by the inventar or by anyother person who has acquired from the inventor the right to apply.
(2) Unless otherwìse agreed, joint inventors may apply for a patent in equal undivided shares.
Il. (1) The right to a patent shall belong to the inventar. (2) If two or more persons have made an invention jointly, the right
to the patent shall belong to them jointly, (3) Where two or more persons have made the same invention but
independently of each other, the person whose application bears the earliest filing date, or, if'priority ìs claimed, theperson whose application bears theearliestvalidly clairned priorìty date shall,unlessthat applica tion is abandoned or withdrawn by the applicant, or rejected by the Registrar, have the right to the patent,
(4) Whereanìnvention is made in execution of a contractof employ ment, the right to me patent shall, in the absence of any agreement to the contrary, belong to the employer,
(5) The inventor shall be named as such in the patent, unless, in a specìal declaratìon in writing signed by hirn and addressed to the Registrar, he ìndìcares that he wishes not to be narned, and any promise orundertakingby tneinventormade to anyperson to theeffect that he will make such a declaration shall be without legal effect,
12. The right to a patent rnay be transferred by cession, assignment, testamentary disposition or by operation of law.
13. (1) Every applìcatìon far apatentshallbe filed with the Registrar md shall be accompaniedby sueh fee asmay be prescribed, as well as the following
Transfer of rights to a patent
Application iot a patent
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(a) a request which shall contain a petition that a patent begranted in respeet of the invention in questìon, the name and such other m formationasmaybeprescribed relating to the applicant, thename and such other infonnation -as may be prescribed relating to me inventar and agent if any~ as well as the title of the inventìon:
(b) a description of the inventìon which shall dìsclose the invention in a manner which is suffìciently clear and complete to permit a person having ordinary skill in the art to carry out the invention, and which shall indicate at least one mode known to the applicant in which the invention can be performed;
(c) a clear and concise claim or claims defining the matter for which proteetion is sought, which claim or claìrns shall be fully sup ported by the description;
(d) such drawings or illustratìons as may be necessary for the under standing of the invention; and
(e) an abstract in the prescribed ferro, which abstract shall not be taken into account for the purposes ofinterpreting the scope ofthe protection, but shall serve merely as technical inforrnation.
(2) Any person who makes an application far a patent but is not the inventor shall fumish to the Registrar, in writing, a sratement justifying his right to the patente
(3) An applicant rnay, at any time before the patent is granted, withdraw his application.
14. (l) The applicant may, ofhìs own initiative at any rime before the Amendment of applicationgrant of a patent, amend or correct his application,
(2) The applicant shall not, in amending hìs application under this section, include any rnaterialmatter which was not disclosed in the initial application as filed.
15. (l) An application for a patent shall be in respect of a sìngle Unity of inventionìnventìon or, where it is in respect ofa group ofinyentìons, the inventions
shall be so linked as to form a single general inventive concept.
(2) The fact that a patent has been granted on an application that did not comply with the requirernent of unity of inventìon shall not be a ground far the invalidation or revocation of the patent,
Division of 16. (1) The applicant may, at any rime before the grant of a patent, application divide bis application into two or more applications (hereinafter referred
to as "divisional applications"), but each divisional application shall not include any matter which was not dìsclosed in the initial applìcanon as filed.
(2) Each divisional application shall be accorded me same filing date and, where applicable, the same priority date, as me initial application,
Joint 17. Where two or more persons ,!pplyjointly for a patent, they shall, applicants in the absence of an agréernent to me contrary, have equal undivided
shares in the application and none of them shall dea! with the application in any way without the consenr of the other applicant or applicants:
Provided that if any steps are required to be taken to save the applìcatìon from being abandoned, any applìcant may, on his own behalf as well as on behalf of any other joìnt applicant, take such steps without recourse to the other applicant or applicants.
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Conversion of patent application imo application for utility mode! certificate
Information concerning correspond ing foreign applications for patents
18.. (1) An application made under this Part may contain a declara tion, in writing, claiming the priority, as provided far in Article 4 of the Parìs Convention set aut in the First Schedule hereto, of one or more earlier national, regìonal or intemational applicatìons filed by tbc applìcant or hìs predecessor in title in any convention country.
(2) Any person who makes a declaration of priority under subsectìon (l) shall, within such time as may be prescribed, fumish the Registrar with a copy of the application earlier filed which copy shall be certified as correct by the patent office with which ìr was so earlier filed,
(3) Where an applicant does not satisfy the requirements of subsection (2), and any regulations pertainìng thereto, the declaration shall be considered as having not been made.
(4) The effeet of the deelaration referred to in subsection (1) shall be as provided in Artiele 4 of the Paris Convention.
19. (l) At any timebefore the grantorrefusal of apatent, an applicant for a patent rnay, upon payment of the prescribed fee, convert his application for a patent into an application far a utility model certificate.
(2) No person may convert an application under subsectìon (l) more than once.
20. (1) The applicant shall, if requested by the Registrar, furnish rum with the date and number of any applications filed by him outside Botswana relating to. the same or essentìally the same invention as that claimed in the application filed with the Registrar.
(2) That applicant shall also, if requested by the Registrar, fumìsh him with the following documents relating to one of the applications referred to in subsection (1)
(a) a copy of any comrnunication received by the applicant concern ing the results of any search or exarnination carried aut in respect of the said application:
(b) a copy ofthe patent or other title of proteetion granted in respeet of that application:
(c) a copy of any fina! decision rejecting the application or refusing the grant requested in respect of the application; and
(d) a copy of any final decision revoking or invalidating the patent or other title of proteetion granted in respect of that application.
21. (1) The filing date of an application far a patent shall be the date on which the application is received by the Registrar:
Provided that at the time of its receipt, the applicatìon contaìns (i) an express or implicit ìndìcation that the grant of a patent is
sought, (ii) information which will enable the Registrar to establish the
identìty of the applicant, and (iiij inforrnation whìch, on the face of it, appears to be a descrip
tion of the ìnventìon. (2) Where the application does not comply with the requirernents of
subsection (1), the Registrar shall, in writing, .request the applìcam to supply rum with information lacking in the application and shall accord to the applicatìon, as the filing date, the date on which the further information required is received by biffi.
Filing date of application for a patent
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Rights con ferred by patent
(3) If an applicant fails to comply with any request made by the Registrarunder subsectìon (2), bis application shall be treated as though it had never been filed.
(4) Where the application makes reference to drawings whìch are not included in the application, the Registrar shall request the applicant to furnish hirn with the drawings within such rime as may be prescribed, and shall accord to the application, as the fìling date, the date on which sueh drawings are receìved by him,
(5) If the applicant fails to comply with any request made by the Registrar under subsection (4), the Registrar shall accord to the applica tion, as the fìling date, the date on which the application was received by him, and shall treat any reference to the said drawings as being non existent.
22. (l) After according a filing date to an application, the Registrar Examination shall examine that application to determine whether such applicatìon of applications complies with the requìrements of sectìon 13(1) and (2) and me regula tions pertaining thereto.
(2) The Minister may, by regulations, prescribe the categorìes of inventions in respectof whichanexarninationunderthis sectionshall not cover the requirernents of novelty and inventive step,
23. (1) Where the Registrar ìs satisfìed that the requìrernents of Grant of patent section 22 have been fulfilled, he shall grant the ..~plicant a patent; otherwise he shall refuse the application and notify the applìcant of that decìsion.
(2) Where he grants a patent, tbc Registrar shall (a) issue a certificate ofthe grant ofthe patent and a copy of'the patent
to the applicant:
(b) record the said patent in the patent register; and (c) publish, in the Journal, a reference to the grant of the patent, (3) The Registrar shall, on payment of such fee as may beprescribed,
makeacopy ofany patentgrantedin termsofthis sectionavailableto any person who requests such copy.
(4) The Registrar shall, upon the request of the owner of the patent, make changes in the text or drawìngs of me patent in order to limit me extent of the protection conferred thereby.
24. (1) No person shall exploit, in Botswana, an invention patented in Botswana unless he has beenauthorised, in writing, to do so by the owner of that patent.
(2) For the purposes of this section, exploitation of a patented invention means
(a) where the patent has been granted in respect of a product (i) making, importing into Botswana, offering for sale, selling
and using that product, (ii) stocking such produci for the purposes of offering it for sale
or selling or usìng it, and (b) Where the patent has been granted in respect of a process
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Proceedings for infringe rnent
(i) using that process, and (li) doing any act referred to in paragraph (a) in respect of a
product obtained directly by means of that processo (3) (a) The rights under the patent shall not extend to
(i) acts in respect of articles which have been put on the market in Botswana by the owner of the patent or with his consent,
(ii) the use of articles on aircraft, land vehicles or vehicles of other countries which temporarily or accidentally enter the aìrspace, territory or waters of Botswana,
(iii) acts dane only for experirnental purposes relating to a patented invention, or
(iv) acts performed by any person who in good faith, before the filing or, where priority ìs claimed, the priority date of the application on which the patent is granted and in Botswana, was using the invention or was making effective and serious preparations far such lise.
(b) The right of prior user referred to in paragraph (a) (iv) may be transferred or may devolve only together with the enterprise or business, or with that part of the enterprise or business, in which the lise of preparations for use have been made.
25. (1) The owner ofthe patent shall, in addition to any other rights, remedies or actìons available to rum, have the right, subject to sections 26, 30 and 31, to institute court proceedings against any person who infringes the patent by performing, without his agreernent or authoriza tìon, any ofthe acts referred to in section 24 (2), or who performs any act which makes it likely that infringernent will oceur.
(2) A plaintiff in proceedings for infringement shall be entitled to relief by way of
(a) an interdict: (b) delivery up or destruction of any infringing product, article or
product of which the infringìng product forms an inseparable part; Cc) damages: or (d) an account of the profits derived from the infringernent. (3) The court shall not, in awarding damages under this section, also
arder, in respeet of the same infringement, that the plaintìff be given an account of the profits derived by him from the infringement.
(4) In any proceedings far infringement, the defendant may counter claim far the invalidation of the patent and, by way of defence, rely upon any ground on which a patent may be invalidated,
(5) In any proceedings under this section, the plaintiff shall, before he ìnstitutes the proceedings, give notice thereofto every licenseeunderthe patent in question whose name is recorded in the patent register, and any such licensee shall be entitled to intervene as co-plaintiff.
(6) The court shall, in awarding damages under this sectìon, calculate such damages taking into account the amount of a reasonable royalty which would have been payable by a licensee or sublicensee in respect of the patent concerned.
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Joint ownership of patent
26. A patentee shall not be entìtled to recover damages or to obtaìn an accountof profits in respeet of a patent, fromadefendantwhoproves that at the date of the infringement he was not aware, and had no reasonto be aware, of me existence of the patent, and the marking of an article with the word "patent" or "patented" or any word or words expressing or irnplying that a patent has been obtained for the article, stamped, engraved, impressed on or otherwise applied to the article, shall not be deerned to constitute notice of the exìstence of the patent unless such word or words are accompanied by the number of the patent:
Provided that nothing in thìs sectìon shall affect anyproceedingsfor an interdict in respect of the patent in questiono
27. (1) Subject to subsection (2), a patent shall expire 20 years after the filing date thereof.
(2) In arder to rnaintain a patent or patent applìcatìon, me owner of a patent or the applicant shall pay in advance to me Registrar for each year starting one year after the filing date of the applìcatìon for me grant ofthe patent, such annual maintenance fee as may be prescrìbed.
(3) A patent shall lapse or a patent application shall be deerned to have been withdrawn if the owner thereof fails to comply with the provìsìons of subsection (2):
Provided that where the owner ofthe patent is late payìngthe annual maintenance fee, the Registrar shall, upon the payment by such owner, of such surcharge as may be prescribed, gìve him a period of grace not exceeding six months, within which he must pay the said late annua! maintenance fee.
28. A patent in respeet of which Botswana is a designated State, granted by ARIPO by virtue of the ARIPO Protocol, shall have the same effect and enjoy the same protectìon in Botswana as a patent granted
under this Act unless the Registrar communicates, to ARIPO, in respect of the application therefor, a decision, in accordance with the provìsìons of theProtocol, that ifapatent is granted by ARIPO, that patentshallhave no effect in Botswana.
29. (1) Where a patent ìs granted to two or more personsjointly, each of thejointpatentees shall, in the absence ofan agreement to thecontrary, be entitled to an equal undivided share in the patent,
(2) Subject to tne provìsions of subsectìon (4), a joint patentee shall not be entitled, in the absence of an agreement to the contrary, andin the absence of me consent of the joint patentee or patentees, to
(a) make, use, exercìze or dispose of the patentedinvention; (b) grant a licence or assign me whole or any part of his interest in
the patent; or (c) take any steps or instìtute any proceedings relating to the
patent: Provided that he may pay any annual maintenance fee which ìs
payable without recoursc to any other patentee.
Restriction on recovery of darnages for infringement
Duration and maintenance of patent
ARlPO Protocol patents
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Exploitation by Government or person thereby authorized
(3) Where a patented article is dìsposed of by a joìnt patentee, the person who acquìres the patent, or any person making a claim through him shall be entitled te deal with that article in the same manner as though the article had been disposed of by me patentees joint1y.
(4) Any joint patentee may institute proceedings for infringement and shall give natice thereof to any other joint patentee, and any such other patentee may intervene as co - plaintiff and recover any damages in respect of any damage he may have suffered as a result of the infrìnge mento
(5) If, in any proceedings under subsectiont-l), damages are awarded to a plaintiff, he shall be awardeddamages as ifhe were the solepatentee, and the defendant shall not be obliged to compensate any other patentee in respect of the infringement in questiono
30. (1) Where (a) the public interest, in particular national securìty, nutnnon,
health or the developrnent of other vita! sectors of the national economy so requires; or
(b) a court or administrative body has determìned that the manner of exploitation of an invention by the owner of the patent or of hìs licensee is anti-competitive and the Minister is satisfied that the exploitation of the patented invention in accordance with thìs section would remedy such practice,
the Minister may decide that, even without the agreement or authoriza tion of the owner of a patent, a govemment agency or a third person designated by him may,subject to the payment of an equitable rernunera tion to the owner of that patent, and taking into account the economie value of me Minister's decision, exploit the invention:
Provided that tbe Minìster shall make hìs decìsìon after hearing the owner of the patent and any interested person if they wish to be heard.
(2) The exploitation of the invention by the Govemment agency or third person designated by the Minister shall be predominantly for the supply of the dornestic market in Botswana.
(3) Upon the request of the owner of the patent, of the Government agency or the third person authorized by the Minister to exploit me patented invention, the Minister may, after hearing the parties, if they wish to be heard, vary the terms of the decision authorizing the exploi tation of the patented invention to the extent that changed circumstances justify such variation.
(4) (a) Upon the request of the owner of the patent to do so, me Minister shall revoke his decision if he is satisfied, after hearing the parties, if they wish to be heard, that the circumstances which led to his decision have ceased to exist and are unlikely to recur, or that the Govemment agency or third person designated by him has failed to comply with me tenns of the decision.
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Cornpulsory licences
(4) Cb) Notwithstanding the provisions ofparagraph (a), the Minìster shall not terminate me authorization to exploit the patented invention if he is satisfìed that the need for the adequate protection of the legitimate interest of the Govemment agency or third person designated by him justifies the maintenance of his decision,
(5) Where a third person has been designated by the Mìnister under this sectìon, the authorization to exploit the patented inventìon may be transferredon1y with theenterpriseorbusinesswithìn whichmepatented invention is being exploited.
(6) The authorization to exploit, a patented invention shall nor exclude
(a) the conclusionof licence contracts by the owner of the patent; or Cb) tbe continued exercize, by the owner of me patent, of his rights
under section 24 (2). (7) (a) A request for the Minister's authorization to exploit a patented
invention shall be accornpanied by evidencethat the owner of thepatent has received, from the person seeking tnar authorìzatìon, a request far a contractual Iìcence,but that personhas been unable, within a reasonable time, to obtain such a licence on reasonable commerciai terms and conditions.
Cb) Paragraph (a) ofthìs subsection shall not apply in cases ofnational emergency or other circurnstances of extreme urgency:
Provided that in such cases the Minister shall notify the ownerofthe patent of his decìsion as soon as is reasonably practìcable.
(8) The exploitation of a patented inventìon in me field of semi conductor technology shall be authorized by the Minister on1y where a court or administrative body has determined that the manner of exploi tation of me patented invention, by the owner of the patent or of bis lìcensee, is anti-competitive, and if the Minister is satisfìed that the issuance of the non-voluntary licence would remedy such practice.
(9) Any person who is aggrieved by a decision of me Minister under subsectìon (1), (2) or (3) may appeal to the High Court agaìnst that decision.
31. (1) At any time after the expiration of three years from the date of the grant of a patent or four years from the date of the application therefor, whichever happens later, any interested party may apply to the High Court for the grant of a licence under the patent upon any of the grounds specìfìed in subsection (2) of this sectìon,
(2) The grounds upon whìch a lìcence may be granted under this sectìon are that a market for the patented invention is not being supplied, or is not being supplied on reasonable terms, in Botswana.
(3) Subject to the provisions ofsubsectìons (4), (5), (6) and (7) ofthìs section, ìf the High Court is satisfied that either of the grounds specified in subsection (2) of the sectìon have been established, the Court may make an arder for the grant ofa licence in accordancewith the applìcation upon such terms as the Court thinks fit.
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Termination of contracts relating to licences
Invalidation of patent
(4) A Iicence granted under this sectìon (a) shall not be exclusive: (b) shall not be assigned otherwise that in connection with the good
will of the business in which tne patented inventìon is used; and (c) shall be authorized by tne court for the supply of the patented
invention predominant1y in Botswana. (5) A licence granted under this section may, on the application ofany
interested party, be terminated by the Court where the Court is satisfied that thegroundson which thelicencewas granted have ceased toexist and are unlikely to recur.
(6) Where a licence ìs granted under this sectìon to any person, that person shall pay, to the patentee, such remuneratìon as may be agreed, or as may be deterrninedby a method agreed, between that person and the patentee, or, in default ofthe agreement, as is determined by the Court on the application of that person or the patentee.
(7) No lìcence shall be granted under this section unless the person applying for the licence, having taken ali reasonable steps to do so, has beenunable toobtainalicence, or to obtain alicence on reasonable terms, from the owner of the patent.
(8) No licence shall be granted under this section in respect ofa patent relating to an integrated circuito
32. Any contract relating to a licence under a patent to make, use, exercìze or dispose of a patented invention shall terminate on the date on which the patent under whìch the licence was granted expìres, is revoked or otherwise ceases to proteet such invention.
33. (1) Subject to the provisions of this Act, the High Court rnay, on the application of any interested party, invalìdate a patent on any of the followìng grounds
(a) that the inventìon is not an invention within the meanìng of tbe tenn as defined under this Act;
(b) that the patentee is not a person entitled. under section l O, to apply for a patcnt;
(c) that the patent concemed is not patentable under section 8; (d) that the invention is a matter which should, in accordance with
section 9, have been excluded from patent protectìon: (e) that the patentee 's application did not satisfy the requirements of
section 13 (a), (b) and (c); (j) that the applìcant far the patent has failed to inforrn the Registrar
about any corresponcling international application filed or has furnished information which in any material particular was false; or
(g) that the patcnt was obtaìned on a misrepresentation. (2) Any invalidated patent, claim or part of a claim shall be regarded
as being nuli and void from me date of the grant of me patent. (3) An applìcation for the invalidation of a patent shall be served on
the patentee and lodged with the Court in the manner and within the time prescribed.
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(4) The Master shall notify the Registrar of any decision of the Court to invalìdate a patent and the Registrar shall, within such tìrne and such manner as may be prescribed, publish a reference thereto in me Journal.
PART III - Utility Model Certificates
34. Save as provided under the provisions ofthis Part, the provisìons of Part II shall apply, mutatis mutandis, to utìlìty model certìfìcates or applications therefor.
35. (1) An invention shall qualify for a utility model certificate if ìr is new and industrially applicable.
(2) Section 22 (2) shall not apply to any application for a utility model certificate.
36. A utility model certificate shall expire sevcn years after the filing date of the application therefor.
37. (1) Subject to the provisions of this ACì, thc High Court may, on the applicatìon of any interestcd person, invalidate a utility model certificate 00 any of the following grounds
(a) that the invention relating to the certificate Ci) is not new or industrially applicable, or (ii) is contrary to public arder or morality;
(b) that the description and claim or claims do not disclose the invention in a manner sufficiently clear and complete to permit a person having ordinary skill in the art to carry out the invention and do not indicate at least one mode known to the applicant for carryìng out the inventìon;
Cc) that the claim or claims do not define the matter for whìch protection is sought;
(d) that the clairns are not clear or concise and are not fully supported by the descriptìon:
(e) that such drawings as are necessary for the understanding of the inventìon have not been filed as provided under this Act: and
(j) that the person to whom the utility model certificate has been granted is not the inventar or his successor in title,
(2) An applìcatìon for the invalìdation of a utility model certificate shall be served on the person to whom the certificate has been issued and lodged with the Court in the manner and within the time prescribed.
(3) The Master shall notify the Registrar of any decisionof the Court to invalidate a utility model certificate and the Registrar shall, within suchtimeasmaybe prescrìbed, publisha reference theretoìntbe Joumal.
Applicabillty of provisions relating to patents
Qual ification of invention for utility mode! certificate
Duration of utility model certificate
Invalidation of utility mode! certificate
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Conversion of application for utility model certificate into application far patent
Registrable industrial desi~
Right to industrial design
Transfer of right to a design
Application for registration of design
38. (1) At any time before the grant or refusal of a utility model certificate, an applicant may,uponpaymentofthe prescribed fee, convert bis application far a utility model certificate into an application for a patent, and the latter application shall be accorded the filing date of the initìal applìcation,
(2) No person may convert an applìcatìon under subsection (1) more than once.
PART IV -Industrial Designs
39. (1) An industrial design (hereinafter referred to as Ha design") shall be capable of being registered if it is new,
(2) A design shall be deemed to be new if it has not been dìsclosed to tbe public anywhere in the world by publication in a tangible form, or by use or in any other way t prior to the filing date or, where applicable, the prìorìty date of the applìcation far registratìon.
(3) Disclosure of information which would otherwise affect the regìstrabìlìty of a design claimed in the application shall not affect the registrability of that design where the information was dìscìosed, during the twelve months preceding the filing date of the application or, where prìority is clairned, the priority date of the application
(i) by the inventor, or (ii) by a third party which obtained the information directly or
indirectly from the inventor, (4) A design which is contrary to public order or rnorality shall not be
registered, 40. The provisions of section Il shall apply mutatis mutandis in
relation to a design.
41. The right to a design may be transferred by cessìon, assignrnent, testamentary disposition or by operation of law.
42. (l) An application for the registration of a design shall be rnade to the Registrar in the prescribed manner andshall be accompanicd by the following
(a) a request, in writìng, that me design be registered; Cb) drawings, photographs or other graphic representations of the
article embodying the design; Cc) a statement, in writing, indicating the kind of products for which
the design is to be used; and (d) such application fee as may be prescribed. (2) Where the design is two dimensional, the applìcation may be
accompanied by a specirnen of the artiele ernbodying me design. (3) Any person who makes an application to the Registrar far the
registration of a design but is not the creator of the design shall furnish to the Registrar, in writing, suchproofofhis title or authority to apply for registration as may be prescribed.
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(4) An application under this section maybe in respecr of two ormore desìgns :
Provided that the designs reIate to the same class of International Classification or to the same set or composition of articles.
(5) For the purposes of this section.t'Intemational Classification" means the classifìcation according to the Locarno Agreement of 8th October, 1968,establìshìng an International Classifìcation for Industrìal Designs.
(6) The application, at the time offiling, maycontain a request that the publication of the industrìal design, upon registration, be deferred for a period not exceeding twelve months from the date of filing or, if priority is claimed, from the date of priority, of the application.
(7) The applicant may, at any time before the registration of a design, withdraw his application.
43. The provisions of section 18 shall apply mutatis mutandis in relation to a design.
44. (1) The Registrar shall accord, as the filing date ofan applicatìon, the date on which such applìcation is received by him:
Provided that at the time of its receipt, the applìcation contains information allowing the identity of the applicant to be established and the requìred graphic representation of the artìcle embodying the design.
(2) Where me application does not comply with the requirements of subsection (1), the Registrar shall, in writing, request the applicant to supply him with the information lacking in the application and shall accord to the application, as the filing date, the date on which the further information was filed with rum.
(3) If an applicant fails to comply with any request made by me Registrar under subsectìon (2), hìs application shall be treated as though it had never been filed.
45. After according a filing date to an applicatìon, the Registrar shall examine the application to determine whether
(a) it complies with the requirements ofsection 42 (1) and (3) and the regulations pertaìning thereto:
(b) it complies with the definition of a design under this Act;
(c) it cornplies with such appropriate regulations as may have been made in pursuance of this Part: and
(d) the design is not contrary to public arder or morality, Registration cf 46. (1) Where, following the examination referred to in section 45, design
the Registrar is satisfied that the requirements of this Act have been fulfilled, he shall regìster the design.
(2) Where the Registrar regìsters a design, he shall, within such time as may be prescrìbed -
Ca) issue, to the applicant, a certificate of registratìon of the design; Cb) record such registration in the register; and (c) publish, in the Journal, a reference to the registration of the
design.
Right of priority
Filing date of application
Examination of application
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Rights con ferred by registration
(3) (a) Notwithstanding the provisions of subsection (2), where a request has been made under section 42 (6) for deferment of publication, neìther the representation of the design nor any file relating to the application shall, upon regìstration of the design, be open to public inspectìon; and in this case, the Registrar shall publìsh, in the Journal, a mention of the deferment of the publication of the ìndustrial design and information identifying the registered ownerofthe design, and indicating the filing date of the application, the length of the period far which deferment has been requested, and such other particulars as may be prescribed.
(b) At the expiry ofthe period ofdeferment, the Registrar shall publish, in the Journal, the registered design.
(4) The institutìon of lega1 proeeedings on the basis of a registered design during the period of deferment of publication shall be subject to the conditìon that the information contained in the Register and in the file relating to the application has been communicated to the person against whom the action is brought.
(5) An application which, owing to any default or neglect on the part of the applicant, has not been completed so as to enable the registration to be effected within the prescribed period shall be deemed to have been abandoned.
47. (1) No person shall exploit, in Botswana, a design registered in Botswana unless he has been authorìzed, in writing, to do so by the owner of that registered design.
(2) The person registered as the owner of a design shall, subject to the provisions of this ACl, and to any rights appearing from the register of designs to be vested in any other person, have the exclusive right, in Botswana, to rnake, import or sell any artiele bearing or ernbodying the registered design or a design not substantially clifferent from the regis tered design, when sueh acts are undertaken far comrnercial purposes.
(3) Far the purposes ofthis sectìon, exploitation of a registered design means the doing of any aet speeified in subsection (2).
(4) The rights of the owner of a regìstered design shaU not extend to acts in respeet of which articles which have been put on the market in Botswana by sue h owner, or with his consent.
48. (l) The owner ofa registered design shall, in addition to anyother rìghts, remedies or actions available to him, have the right to institute court proceedìngs against any person who infringes the design by performing, without his agreement or authorization, any of the acts referred to in section 47, or who perfonns acts which make ir likely that infringement will occur.
(2) In anyproceedings under this sectìon, the court may grant reliefby way of damages, interdict, delivery up or destruction of any infringing product, article or product of which the infringing product forrns an inseparable part, or account of profits derived from the infringeme t1t or otherwise as it may deem fil.
Proceedings for infringernent
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Invalidation of registration of design
(3) The court shall Dar, in awarding damages under this sectìon, a1~D order, in respeet of the same infringement, that the plaintiff be given an account of the profits derived by him frorn the infrìngement,
(4) In any proceedings under this sectìon, the court shall have jurisdic tion to arder the revocation of the registration of a design on any of the . grounds specifìed in sectìon Sz, and any suchgrounds may be relied upon by way of defence.
49. (1) The registration in respect of a design shall expire five years after the filing date of the applìcation for its registration, but may, upon payment of such renewal fee as may be prescribed, be renewed for two further consecutive periods of five years each.
(2) Where the owner of tbc design is late paying the renewal fce, the Registrar shall, upon payrnent by the saìd ownerofsuch surcharge as may be prescribed, give him a period ofgrace not exceeding six months within which he rnust pay the said late renewal fee,
50. An industrial design in respect ofwhich Botswana ìs a desìgnated State, regìstered by ARIPO by virtue of the ARIPO Protocol, shall have the same effect in Botswana as a design registered under this Act unless the Registrar communicates, to ARIPO, in respect of the application therefor, a decision, in accordance with thc provisìons of the Protocol, that if a design is regìstered by ARIPO, that registratìon shall have no: effect in Botswana.
51. (l) Subject to the provisions of sectìon 42 (6), the representa tìons, specirnens and drawings of a regìstered design, including all documents lodged in relation thereto shall, upon payment of such fees as may be prescribed, be open to inspectìon by any person on and after the day on which the certificate of registration ìs issued:
Provided that the right of inspection shall not include the right to make a copy of any such representation, drawing or document by mechanical means.
(2) Any person may~ upon payrnent ofsuch fees as may be prescrìbed, obtain, from the Registrar, a copy of such representations, drawìngs or documents.
(3) When an application far the registration of a design has been abandoned or refused, the representatìons, drawings or other documents shall not, at any tìrne, be open to ìnspcction at the desìzns office, but shall,
after me expìration of 12 months from the date of application for such regìstratìon, be returned to the applicant if he requests that they be so retumed to him.
52. (l) Subject to the provisions of thìs Act, the High Court rnay, on the applicatìon of any interested person, invalidate the registratìon of a design either wholly or in part or in respect of any particular article in connection with which me design is registered on any of the following grounds
(a) that the design was not new;
Duration and renewal of registered design
ARIPO Protocol designs
Inspection of registered design
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Acquisition of exclusive right te a rnark
(b) that the applicant for regìstration was nor the owner thereof; (c) that the applìcation was made wìth me intention of defrauding
the owner of the design; or (d) on any ground on which the Registrar could have refused to
register the design. (3) An application for the invalidatìon of a design shall be served on
the person in whose name the design is registered and lodged with the Court in the rnanner and withìn the time prescribed,
(4) The Master shall notify the Registrar of anydecision of the Court to invalidate a design and the Registrar shall, within such time as maybe prescrìbed, publish a reference thereto in the Joumal.
PART V -s-Marks, Collective Marks and Trade Names
53. (1) The exclusive right to amark underthis Act shall be acquired by registration in accordance with the provisions hereof.
(2) A mark shall not be registered if it is (a) incapable of distinguishing the goods or services of one enter
prise or business from those of another enterprise or business; (b) contrary to public arder or rnorality; (c) likely to mislead the public or trade circles, in particular as
regards the geographìcal origin of the goods or services concerned, or their nature or characterìstics:
(cl) identical to, or is an irnitatìon of, or contaìns, as an elernent, an armorial bearing, flag or other emblem, a name, abbreviatìon or initials of, or official sign or hall mark adopted by, anyState, intergovernmental organization or organization created by an intemational convention, unless the cornpetent authority of that State or organization has given his authorization far such bear ing, flag, ernblem, name, abbreviation or initials, official sign or hallmark to be used by an applicant for a registered mark;
(e) identical to, or confusìngly similar tOI or constitutes a translation of, a mark or trade name which is well known in Botswana for identical or sìmilar goods or services of another enterprise, or if it is well known, and registered in Botswana for goods or services which are not identical or sirnilar to those in respeet of which registration is applied far:
Provided, in the latter case, that
(i) the lise of that mark in relation to those goods or services would indicate a connection between those goods or services and the owner of the wel1 known mark, and
(ii) that the interests of the owner of the well known mark are likely to be prejudiced by such use; or
(f) identical to a rnark belonging to a different owner of a regìstered mark and alreadyon the register.orwith anearlierfiling orpriority date, in respcct of the same goods or services or closely related goods or services, or if it so nearly resembles such a mark as to be likely to deceìve or cause confusion.
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54. (l) An application for the registrationofamark, accompanied by such fee as may be prescribed, shall be made to the Registrar in the prescribed manner and shall contain the following
(a) a request, in writing that the mark be registered; (b) a reproduction of the mark: (c) a list ofthe goods or services for which registration ofthe mark ìs
requested, listed under the applicable class or classes of the Inter national Classifìcation,
(2) The provisions of scctìon 18 in respect ofthe right ofpriority shall apply mutatis mutandis.
(3) The applicant may, at any time before hìs mark is registereds withdraw his application.
55. (l) The Registrar shall examine the application to determine whether it complies with the requirernentsof section 54 (1) and anyother requirements as may be prescribed.
(2) The Registrar shall also determìne whether the mark cornplies with the definition of a mark under this Act, and whether it cornplies with the requirernents of paragraphs (a) to (d) of section 53 (2).
(3) The Registrar shall, if he is satisfied that the application cornplies with the requirements of the provisìons of this sectìon, accept that application and shall, within sue h time and in such manner as may be prescribed, publish that application in the Journal.
56. (l) Any interested person may, on the ground that the require rnents of section 53 (2) have not been satisfied, or that the mark does not comply with the definition of a mark as specified in this Act, give, to the Registrar within such period and in such manner as may be prescrìbed, notice of his opposìtion to the registration of a mark.
(2) The Registrar shall, as soon as he receìves such narice, send acopy thereofto the applicant who shall, within such period and in such manner as may be prescribed, send, to the Registrar, his written response thereto (referred to in this section as a "counter - statemcnt") specifying the grounds on which he relies for hìs applìcation,
(3) The applicant shall be deerned to have abandoned bis application if he fails to comply with the provisions of subsection (2).
(4) Where the applicant files his counter - statement, the Registrar shall forthwith fumish a copy thereof to the person opposìng and shall, after hearing the parties, ifeither wishes to be heard, and considering the merits of the case, decide whether the rnark should be' registered.
(5) Following the publication of an application, and until the registra rion of the mark, the applicant shall have the same rights and privileges as he would have if the mark had been registered, but it shall be a valìd defence to anactìon brought hereunder in respect of an actdane afterthe application was publìshed, if the defendant establishes that me mark could not have been validly regìstered at the tìrne me act was done,
Application for registra tion of a rnark
Examination ofapplication for registration of a mark
Opposition io registration of a mark
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Registration of mark
Rights con ferred by registration of rnark
Transfer of rights in rnarks
Proceedings for infringement
57. (1) Where the Registrar is satìsfìed that theapplìcatìon for the registration of a mark satisfies the requìrements of this Act, and the regìstration of the mark has not been opposed within the period prescrìbed, or the regìstration of me mark has been opposed but he has decided in the applicant's favour, tbe Registrar shall
(a) register the mark in the appropriate register; (b) issue, to the applicant, a certificate of registration;
and (c) publish,in the Journal, a reference to the registration of themark. (2) Where the requirernents for the registration of a mark are not
satisfied, or an application for the regìstration of a mark has been successfully opposed, the Registrar shall refuse to register that mark.
58. (1) No person shall use a registered mark unless he has been authorized, in writing, to do so by the owner thereof,
(2) The rights conferred by registration of a mark shall not extend to acts in respect of articles which 9ave been put on the market in Botswana by the registered owner or with 'hìs consent,
59. The rights in a mark may be transferred by cession, assìgnment, testamentary disposition or by operation of law,
60. (1) The owner of a mark shall, in addition to any other rights, remedies or actìons available to rum, have the right to institute court proceedings against any person who infringes the mark by using that mark without his authorization or by perfonning acts which make it likely that infringernent will oceur.
(2) The right conferred under this sectìon shall extend to the use of a sign sìmilar to the registered mark in relatìon to goods and servìces similar to those far which the mark has been registered, where confusion may arise in the public.
(3) The right conferred under this sectìon shall extend to the lise of a sign which constitutes a reproduction, an ìmìtation or a translation of a registered mark which is well known in Botswana in relation to goods or services which are not similar to those in respect of which a trade mark is registered:
Provided that such use of the mark in relation to those goods or services wouldindicateaconnection betweenthose goods orservices and the owner of the regìstered mark, and the interests of the owner of the registered mark are likely to be prejudiced by such use.
(4) A plaintiff in proceedings for infringement shall be entitled to relief by way of an interdict, delivery up or destruction of anyinfringing product, artìcle or produci of which me infringing produci forms an inseparable part, damages or an account of the profìts derived from the infringement.
(5) The court shall not, in awardìng damages, also arder, in respect of the same infringement, that the plaintiffbe given an account ofthe profits derived by him from the infringement.
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Duration and renewal of registration of mark
Banjul Protocol on rnarks
Invalidation of registration of mark
Remava! of mark on grounds of non-use
Collective marks
61. (1) The registration in respeet of a mark shall expire ten years after the filing date of the applìcatìon for its registratìon, but may, upon the written request and payment of the prescribed renewal fee by the registered owner, be renewed for consecutive periods of ten years.
(2) Wherethe owner ofa registeredmarkìs late payingthe renewalfee, the Registrar shall, upon payment by the said owner of such surcharge es may be prescribed, give hirn a period of grace not exceeding six months within which he must pay the late renewal fee.
620 A rnark in respect of whieh Botswana is a designated State, regìstered by ARIPO by virtue ofthe Banjul Protocol, shalìhave the same effect and enjoy the same protection in Botswana as a mark registered under this Act unless the Registrar comrnunicates, to ARIPO, in respect of the appication therefor, a decìsion, in accordance with the provìsìons of that protocol, that if a mark is registered by ARIPO, that mark shall bave no effeet in Botswana
63. (1) A personrnay applyto the Regìstrarforthe ìnvalidation ofthe registratìon of a mark on the ground that the requirements of section 53 (2) and the definìtion of a mark as specified under this Act, have no! been satisfied,
(2) An applicatìon forthe invalidation of a regìstratìon ofa mark shall be served on the owner of the mark in the manner prescribed.
(3) Any ìnvalidatìon of the registration of a mark shall be deemed to have been effective from the date of registration of the mark and a reference thereto shall be published by the Registrar in tbe Journal as soon as possible,
64. (1) Any ìnterested person maymake application to the Registrar to remove, from the register, a mark in respect of any of the goods or services in respect of which ìt is registered on me ground that up to one month prior to filing the applicatìon, the mark had, after its regìstratìon, not been used by the registered owner or a licensee during a continuous period of three or more years,
(2) The Registrar shall not remove a mark from the register if the owner thereof can show that circumstances existed whìch prevented the use of the mark and that there was no ìntentìon no! to lise the mark in respect of those goods or services, or that there was no intention to abandon the lise of the mark in respect of the said goods or servìces,
(3) Anapplication fortherernovalof'amark from theregisterofrnarks shall be served on the owner thereof and filed with the Registrar in the manner and within the time prescribed.
65. (1) Subject to subsectìons (2) and (3), sections 53 to 64 of'this Act shallapplyto collectivemarks,savetnatreferences therein toarnarkshall be read as being references to a collectìve mark.
(2) An application for the regìstratìon of a collective mark shall designate me mark as a collectìve mark and shall be accompanied by a cOPY of the rules governìng the use of the collective mark.
(3) For purposes of subsection (2), "rulesH means the rules made by the person under whose control !pe collective mark may beused.
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Invalidation of registration of collective rnark
Licensing of marks and collective roarks
Trade names
Acts of unfair cornpetition
(4) The registered owner of a collectìve mark shall notìfy the Regis trar, in writing, of any changes made in respect of the rules referred to in subsectìon (2).
66.. (1) In addìtion to the grounds set aut in section 63 (1), the Registrar shall invalidate the registration of a collective mark if me personrequesting theinvalidation proves that only the registered owner uses the mark, or that he uses or permits its lise in contravention of the rules referred to in section 65 (2), or that he uses or permits its use in a manner whìch is liable to deceive trade circles or the public as to the origin or any other comrnon characterìstics of me goods or services concemed.
(2) An applicatìon for the invalidation of a collectìve mark shall be served on the owner of the mark in the manner and within me time prescribed.
67. (1) Any licence contract rnade in relation to the registratìon of a mark or an applìcatìon therefor shall previde for the effective control, by the licensor, of the quality of the goods or servìces of the licensee in connectìon with which the rnark is used,
(2) If the licence contract does not provide for such quality control or if such quality control is not effectively carried aut, the lìcence contract shall not be valido
(3) The registration of a collective mark, or an application therefor, may not be the subject of a licence contraete
68. (1) A name or desìgnatìon may not be used as a trade narne if by its nature or the use to which it may be put, it ìs contrary to public arder or morality and li, in particular, it is liable to deceive trade circles or the public es to the nature of the enterprise identified by that name.
(2) (a) Notwithstanding any law providing far any obligation to register a trade narne, such name shall be protected, even prior to or without registration, agaìnst anyunlawful act committed by a third party.
(b) Any subsequent lise ofthe trade name by a third party, whether as a trade narne , a mark or a collective mark, or any such use of a similar trade narne orrnark, which is likely to mislead the public, shall be deemed to be unlawfuL
PART VI -Acts of Urfair Competition
69. (1) On the request of the owner of a title of protection under this Act, or of any competent authorìty or any ìnterested person, association or syndicate (in particular of producers, rnanufacturers or traders), the courtmay grant an interdict toprevent an acr ofunfaircornpetìtìon, award damages or grant any other remedy as the court may deem appropriate.
(2) Far the purposes of this Act, any act of cornpetition which is contrary to honest practìces in ìndustrial or comrnercial matters shall constitute an act of unfair competition, and shall be unlawful.
(3) The following, in particular, shall be deemed to constitute acts of unfair cornpetitìon
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(a) any act of such a nature as to create confusion by any means whatever with the establishment, the goods or the industrial or commercial actìvities of, a cornpetitor;
(b) the makìng of a false allegation in the course of trade of such a natureastodiscredìttheestablishment, thegoods, or me industriai or commercìal activitìes cf, a cornpetitor; and
(c) the making of allegations which, in the course of trade, is liable to mislead the public as to me nature, the manufacturing process, the characteristics, me suitability for their purpose, or the quantity of the goods of, a cornpetitor.
PART VII - Miscellaneous Provisions
70. (1) A.ny change in the ownership of a patent, a utility model certificate, the registration of an industrial design, mark or collective mark, or in the ownershipof an application therefor, shall be in writing and shall, at the request, to the Registrar? of any interested party, be recorded by the Registrar in the appropriate register, and except in the case of an application, be published by notice in the Joumal by the Registrar.
(2) Any change in the ownershìp of a patent, a utility model certifi cate, the registration of a design, mark or collective mark or in the ownershìp of an applìcation therefor, shall have no effect agaìnst third parties unless it has been recorded by the Registrar in the appropriate register.
(3) Any change in the ownership of me registration of a collective mark, or in the ownership of an application therefor, shall require the prior approval, in writìng, of the Minister.
(4) A change in ownership of the registration of a mark or a collective mark shall be invalid if ìt ìs lìkely to deceive or cause confusion particularly in regard to the nature, orìgìn, manufacturing process, characteristìcs or suitabìlity for their purpose, of the goods or services in relation to which the mark or collective mark is intended to be used or ìs being used,
71. Any licence contraet conceming a patent, a utility model certifi cate, a registered design or registered mark, or an application therefor shallhavenoeffect agaìnstthirdpartìesunless it has been recordedby the Registrar in the appropriate register.
Agents 72. Every person wno rnakes an applicatìon under this Act far the grant or registration of a patent, utility model certificate, design, mark, or collectìve mark, or of any other thing which may be applied far under thìs Act, and whose ordinary residence or principal place of business is outside Botswana shall be represented by a legal practitioner who has beenenrolledtopractìcein thecourts ofBotswana in accordance \VitÌ1 the
Cap 68:01 provisions of the Legal Practìtìoners' Act or such other person as the Minìster may prescrìbe.
Changes in ownership
Licence contracts
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Correction of errors
Exercize of discretionary powers
Extension of rime for applications
Offences
73. (1) The Registrar may correct any clerical error or errar in trans latìon or transcriptìonìn any applicatìon filed under this Act, or in any document filed or lodged in pursuance of such application, and the Registrarmay alsocorrectanyclerical errar in anyregister maintained in pursuance of this Act,
(2) Subsectìon (l) shall not be construed as givìng the Registrarany power to correct or amend any application, document or register in any material manner.
(3) A correction made in pursuance of thìs sectìon shall be made by the Registrar of his own accord or upon the request of any persone
(4) Where anypersonrequeststheRegistrartocorreetany application or other document filed under this Act, that person shall pay, to the Registrar, such fee as may be prescribed.
74. The Registrar shall give any party to a proceeding before rum the opportunìty of being heard before making any decision which he is empowered to make under this Act or me regulations thereto if that decìsion might adversely affect or prejudice that party.
75. (1) Where anything is required to be done within a prescribed tìme and, by reason of a delay in the Marks, Patents and Designs Office that thìng is not dane, the Registrar may extend the rimefor the doing of that thing for such period as may be prescribed, and no fees shall be payable in respeet of any such extension,
(2) Notwithstanding the provisions of subsection (1), the Registrar may, upon me written request of an interested person, and uponpayment of such fee as may be prescrìbed, extend, for such period as may be prescribed, the time specified for the doìngof any act if that personshows good cause as to why he did not do that act wìthin the prescribed time.
76. (1) Any person who, knowing the same to be false- Ca) makes or causes to be made a false entry in any registerkept in
terms of thìs Act: (b) makes or causes to be made any document falsely purportingto be
a copy of an entry in any such register; (c) produces, tenders or causes to be produced as evidence any such
entry or copy thereof, shall be guilty of an offence and shall be liable, on conviction, to a fine of not less than P5 000,00 but not more than PIO 000,00, or to imprìson ment far a term cf not less than one year but not more than three years, or to both such fine and such im prisonrnent.
(2) Any person who (a) for the purpose of deceiving the Registrar or any other officer in
the execution of his duties under thìs Act; or (b) far the purpose of procuring or influencing the doing or omission
of any act under this Act,
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makes a false staternent or representation knowing the same to be false, shall be guìlty of an offence and shal1 be Iiable, on convìctìon, to a fine ofnot less than PS 000,00 butnot more than PIO 000,00, orto imprison ment for a term of not less than one year but not more than three years, or to both such fine and such imprisonrnent.
(3) Any person who, knowing the same to be false, makes a false statement or representation that
(a) a patent has been granted to rum or to any other person in respect of any invention:
(b) he or any other person ìs the owner of any registered design, mark, collective mark or trade name; or
Cc) he has been granted an exclusive orcompulsory licence to use any patent, regìstered design, registered mark or collective mark or trade name,
which statement or representation induces another person to act thereon, shall be guilty of an offence and shall be liable, on convictìon, to a fine of not less than P2 000.00 but not more than P5 000.00, or to irnprisonment for a tern of not less than six months but more than two years, or to both such fine and irnprisonment.
(4) Subject to the provìsìons of sections 24 (3) (a), 30, 31,47 (4) and 58 (2), the performance of any act referred to in section 24,47 and 58 by a person other than the owner of the tìtle of proteetion and without the agreement of such owner shall constitute an infringement.
(5) The court may, on the application to it by the owner of the title of protectìon,or by alìcensee ifhehas requestedthe ownerto institutecourt proceedìngs for a specific relief and the owner has refused or failed to do so, grant an interdict to prevent an infringement or unlawful acr referred to in sections 68 (2) (b) and 69 (2).
(6) Any person who intentionally or wilfully perfonns any act which constitutes an infringernent as defined in subsectìon (4) of this section, or an unlawful act as defined in sections 67 (2) Cb) and 68 (2) shall be guilty ofan offence and shall be lìable, on conviction, to a fine ofnot less than P2 000,00 but not more than PS 000,00, or to imprisonment for a tenn of not less than six months but not more than two years, or to both such fine and imprisonrnent.
(7) Any personwho commits an offence or unlawful act forwhich no specific penalty has been specified shall be liable to a fine ofnot less than P2 000.00 but not more than PS 000,00 or to imprisonment for a term of not less than six months but not more than two years, or to both such fine and imprisonrnent.
77. A personwho is aggrìeved by anydecìsìon of tne Registrar under this Act may appeal to the Minister in me manner prescribed, md within the time prescribed, and, ifhe is aggrìeved by a decision orthe Mìnister, may, withìn such time as may be prescribed, appeal to me High Court agaìnst that decìsion,
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Regulations
Repeal
Savings
Transitional
78. The Minister rnay, by statutory instrument, make regulations providing for any matter which ìs to be provided for under thìs Act, or which otherwise relates to the adminìstratìon of this Act.
79. The Patents and Desìgns Protection Act, the Trademarks Act and the Unìted Kìngdom Trade Marks Act, are-hereby repealed.
SO. _Ali subsidiary legislatìon made under any of the enactrnents repealed by this Act and in farce imrnediately prior to the coming ìnto operation of this Act shall, so far as it is not inconsistent with the provìsìons of this Act, continue in force as if made under this ACL
81. (l) Notwithstanding the repeal of the enactments referred to in sectìon 80, patents granted, anddesìgns andtrademarks registered there under shall remain in force but shall, subject to subsections (2) and (3)~ be deemed to have been granted under thìs Act,
(2) Patents thus granted and industrial desìgns thus regìstered shall remain in force for the unexpired portion of the period of protection provìded thereunder subject, respectively, to the payment of annual maintenance fees or renewal fees providedfor under this Act.
(3) Trademarks thus registered shall be due far renewal within the same period as under Part I of the Trade Marks Act and the United Kingdom Trade Marks Act, or ten years from the entry ìnto farce of this Act, whichever period expires first, and, upon renewal, shall be reclassìfìed in accordance with the Internatìonal Classìfìcatìon,
(4) A person who, on the date of entry ìnto force of thìs Act (a) is the owner of a patent granted in the United Kìngdom or has
filed an application for the grant of a patent in the United Kingdom: or
(b) is the owner of an industrial design regìstered in the United Kingdom or has filed an application for registration of an industrial design in the United Kingdom
may, within 12 months of the entry into force of this Act, file an application for the grant of a patent far the same inventìon or for the registratìon of the same industrìal design under thìs Act and such applicatìon shall be accorded the filing date or priority date accorded to the application, grant or regìstratìon in tbe United Kingdom.
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FIRST SCHEDULE
Official English Text established under Article 29 (l) (b)
PARIS CONVENTION FOR TRE PROTECTION OF INDUSTRIAL PROPERTY
of March 20, 1883, as revised
ar BRUSSELS on December 14, 1900, at WASHINGTON on lune 2, 1911, at THE HAGUE on Novernber 6, 1925, at LONDON on lune 2, 1934,
at LISBON on October 31, 1958, and al STOCKHOLM on July 14,1967, and as amended on September 28, 1979
Article 1
[Establishment of the Union; Scope ofIndustrial Property'[)
(l) The countries to which this Convention applies constitute a Union for the protection of industrial property,
(2) The protection of industrial property has as its object patents, utility models, industrial designs, tradernarks, service rnarks, trade names, indications of source or appellations of origion, and the repression of unfair competition.
(3) Industrial property shall be understood in the broadest sense and shall apply not only to industry and commerce proper, but likewise io agricultural and extractive industries and to all rnanufactured or natura! products, for exarnple, wines, graìn, tobacco leaf, fruit, caule, rninerals, mineral waters, beef, flowers, and flour,
(4) Patents shall include the various kinds of industrial patents recognized by tbc laws of the countries of the Union, such as patents ofimportation, patents of improvernent, patents and certifictes of addition, etc. '
Article 2
[National Treatment for Nationals ofCountries ofthe Unioni
(l) Nationals of any country of the Union shall, as regards the protection of industrial property, enjoy in all the other countries of the Union the advantages that their respective laws now grant, or may hereafter grant, to nationals; all without prejudice to the rights specially provided for by this Convention. Consequently, they shall have me same protection as the lauer, and the same legal rernedy against any infringernent of their rights, provided that the conditions and forrnalities imposed upon nationals are complied with.
(2) However, no requirement as to domicile or establishment in the country where protec... tion is claimed may be imposed upon nationals of countries of the Union for the enjoyment of any industriai property rights.
(3) .The provisions of the laws of each of the countries of the Union relating to judicial and administrative procedure and to jurisdiction, and to the designation of an address for service or the appointment of an agent, which may be required by the laws on industriai property are expressly reserved.
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Article 3
[Same Treatmentfor Certain Categories ofPersons asfor Nationals ofCountries ofthe Union]
Nationals of countrìes outsìde the Unìon who are dorniciled or who have rea! and effective industriai or comrnercial establishments in the territory of one of me countries of the Union shall be treated in the same manner as nationals of the countries of me Union,
Article 4
[A to L Patents, Utility Models, Industrial Designs, Marks, Inventors' Certificiates: Right of Priority. - G. Patents: Division of the Application]
A~ - (1) Any person who has duly filed an applìcatìon for a patent, or for the registration of a utility rnodel, or cf an industrial design, or of a trademark, in one of the countries of the Union, or his successor in tìtle, shall enjoy, for the purpose of filing in the other countries, a right of priority during the periods hereinafter fixed,
(2) Any filing that is equivalent to a regular national filing under me domestic legislation of any country of me Union or under bilateral or multilateral treaties concluded between countries of the Union shall be recognized as giving rise to the right of priority,
(3) By a regular national filing ìs meant any filing that is adequate to establish the date on which theapplication wasfiledin thecountryconcerned, whatevermaybe thesubsequentfate of the application.
B. - Consequently, any subsequent filing in any of the other countries of the Union before the expiration of the periods referred to above shall not be invalidated by reason of any acts accomplished in the interval, in particular, another filing, the publication orexploìtation of the invention, the putting on sale of copies of the design, or the use of the mark, and such acts cannot give rise to any third-party right or any right of personal possession. Rights acquired by third parties before the date of me first application that serves as the basis far the right of priority are reserved in accordance with the dornestic legislatìon of each country of the Union.
C. - (l) The periods ofpriority referred to above shall be twelve months for patents and utility models, and six rnonths for industriai designs and trademarks,
(2) These periods shall start frorn the date of filing of the first application; the day of filing shall not be included in the period.
(3) If the last day of the period is an officiai holiday, or a daywhen the Office is nat open for the filing of applications in the country where protection is claimed, the period shall be extended until tbe frrst following working day.
(4) A subsequent application conceming the same subject as a previous first application within tbe meaning of paragraph (2), above, filed in the same country of me Union, shall be considered as the first application, of which the filing date shall be me starting point of the period of priority t if, at the rime of filing the subsequent application, the said previous application has been withdrawn, abandoned, or refused, without having been laid open to public inspectionand without leaving any rights outstanding, and if it has not yet served as a basis for claiming a right of priority. The previous application may not thereafter serve as a basis for claiming a right of priority.
Da - (1) Any person desiring to take advantage of the pfiority of a previous filing shallbe required IDmake a declarntion indicating thedate ofsuch filingand thecountry in which it was madé~ Bach country shaUdetermine the latest date on which such declaration must be made.
(2) These particulars shaU be mentioned in the publications issued by me compete!1t authority, and in particular in the patents and ilie specifications relating thereto.
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(3) The countries of the Union may require any person making a declaration of priority to produce a copy of the application (description, drawings, etc.) previously filed. The copy, certified as correct by the authority which received such application, shall not require any authentication, and rnay in any case be filed, without fee, at any time within three months of the filing of the subsequent application. They mayrequire it tobe accompanied by a certificate from the same authority showing the date of filing, and by a translation,
(4) No other formalities maybe required for the declaration of priority at the tirne of filing the application. Each country of the Union shall determine the consequences of failure to comply with the fonnalities prescribed by this Article, but such consequences shall in no case go beyond the loss of the right of priority.
(5) Subsequently, funher proof may be required. Any person who avails hirnself of the priority of a previous applicatìon shall be required to
specify the number of that application; thìs number shall be published as provided for by paragraph (2), above.
E. - (l) Where an industriai design is filed in a country by virtue of a right of priority based on the filing of a utility mode}, the period of priority shall be the same as that fixed for industrial designs,
(2) Furthermore, it is permissible to file a utility model in a country by virtue of a right of priority based on the filing of a patent applìcation, and vice versa.
F. - No country of the Union may refuse a priority or a patent application on the ground that the applicant clairns multiplepriorities, even if they originate in different countries, or 00 the ground that an application claiming one or more priorities contains one or more elements that were not included in the application or applications whose priority is claimed, provided that, in both cases, there is unity of invention within the meaning of the law of the country.
With respect to the elernents not included in the application or applications whose priority is clairned, the filing of the subsequent application shall give rise to a right of priority under ordinary conditions,
G. - (1) If the examination reveals that an application for a patent contains more than one invention, the applicant may divide the application into a certain number of divìsional applications and preserve as the date of each the date of the initial application and the benefit of the right of priority, if any.
(2) The applicant may also, on his own initiative, divide a patent application and preserve as the date of each divisional application the date of the inìtial application and the benefit of the fight of priority, if any. Each country of the Union shall have the right to detennine the conditions under which such division shaH be authorized.
H. - Priority may not be refused on the ground that certain elements of the invention for which priority is claimed do not appear among the claims formulated in the application in the country of origin, provided that the application documents as a whole specifically disclose such elements.
1.- (l) Applications for inventors' certificates filed in a country in which applicants have the right to apply at their own option either for a patent or for an inventar' s certificate shaH give rise to the right of priorityprovided for by this Article, under the same conditions and with the same effects as applications for patents.
(2) In a country in which applicants have the right to apply at their own option either for a patent or for an inventor's certificate, an applicant for an inventor's certificate shall, in accordance with the provisions of this Article relating to patent applications, enjoy a right of priority based 00 an application for a patent, a utility model, or an inventor's certificate.
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Article 4bis
[Patents: Independence of Patents Obtained for the Same Invention in Different Countries]
(l) Patents applied for in the various countries of the Union by nationalsof countries ofthe Union shall be independent of patents obtained for the same invention in other countries, whether members of the Union or not,
(2) The foregoing provision is to be understood in an unrestrictedsense, inparticular, in the sense thatpatents applied for during the period of priority are independent,both as regardsthe grounds for nullity and forfeiture, and as regards their norma! duration,
(3) The provision shall apply to all patents existing at the tirne when it comes into effect, (4) Similarly, it shall apply, in the case of the accession of new countries, to patents in
existence on either sìde at the time of accession. (5) Patents obtained with the benefit of priority shall, in the variouscountries of theUnion,
nave a duration equa! to that which they would have, had they been applied for or granted without the benefit of priority.
Article 4ter
[Patents: Mention of the Inventar in the Patent]
The inventor shall have the right to be mentioned as such in the patent,
Article 4qwtrter
[Patents: Patentability in Case of Restrictìons of Sale by Law]
The grant of a patent shall not be refused and a patent shall not be invalidated on the ground that the sale of the patented product or of a product obtained by means of a patented process is subject to restrictions or limitations resulting from the domestic law.
Article 5
[A. Patents: Importation of Articles: Failure to Work or Insufficient Working; Compulsory Licenses. - B.Industrial Designs: Failure to Work; Irnportation of Articles. - C. Marks:
Failure to Use: Different Forrns: Use by Co-proprietors, - D. Patents, Utility Models, Marks, Industriai Designs: Marking]
A. - (l) Importation by the patentee into the country where the patent has been granted of articles manufactured in any of the countries of the Union shall not email forfeiture of the patent,
(2) Bach country of the Unìon shall have the right to take legislative rneasures providing far the grant of cornpulsory licenses toprevent theabuses which mightresultfrom tbeexercise of the exclusive rights conferredby the patent, for example, failure to work.
(3) Forfeiture of the patent shall :not be provided for except in cases where the grant of compulsory licenses would not have been sufficient to prevent the said abuses. No proceedings for me forfeiture or revocation of a patent may be instituted before me expiration of twoyears from the grant of the frrst compulsory license.
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(4) A cornpulsory Iicense may not be applied for 00 the ground of failure to work or insufficient working before the expiration of a period of four years from the date of filing of me patent application or three years from the date of the grant of the patent, whichever period expires last: it shall be refused if the patentee justifies his inaction by legitimate reasons. Such a compulsory license shall be non-exclusive and shall not be transferable, even in the form of the grant of a sub-license, except with that part of the enterprise or goodwill which exploits such license.
(5) The foregoing provisions shall be applicable, mutatis mutandis, to utility models. B. - The protection of industria! designs shall not, under any circurnstance, be subject to
any forfeiture, either by reason of failure to work or by reason of the importation of articles corresponding to those which are protected.
C. - (l) If, in any country, use of the registered mark ìs cornpulsory, the registration may be cancelled only after a reasonable period, and then only if the person concerned does not justify his inaction,
(2) Use of a trademark by the proprietor in a farro differing in elements which do not alter the distinctive character of the rnark in the form in which it was registered in one of the countries of me Union shall not entail invalidation of the registration and shall not diminish the protection granted to the mark.
(3) Concurrent use of the same mark on identical or sirnilar goods by industrial or commerical establishrnents considered as co-proprietors of the mark according to the provisions of the domestìc law of the country where protection is claimed shall not prevent registration or diminish in any way the protection granted to the said rnark in any country of the Union, provided that such lise does not result in misleading the public and is not contrary to the public interest,
D. - No indication or mention of the patent, of the utility rnodel, of the registration of the tradernark, or of the deposit of the industriai design, shall be required upon the goods as a condition of recognition of the right to protection,
Article 5bis
[Ali Industriai Property Rights: Period of Grace for the Payrnent of Fees for the Maintenance of Rights; Patents: Restoration]
(1) A period of grace of not less than six months shall be allowed for the payment of the fees prescribed for the maintenance of industriaI property rights, subject, if me domestic legislation so provides, to the payment of a surcharge.
(2) The countries of the Union shall have the right to provide for the restoration of patents which have lapsed by reason of non-payment of fees.
Article 5ter
[Patents: Patented Devices Forming Part of Vessels, Aircraft, or Land Vehicles]
In any country of the Union the following shall not be considered as infringemenLs of me rights of a patentee:
1. the liSe on board vessels of other countries of the Unioo of devices forming the subject of his patent in the body of the vessel, in the machinery t taclde, gear and other accessories, when such vessels temporarily or accidentaHyenter tbe waters of thc said country, provided that such devices are used there exclusively for the needs of tbe vessel;
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2. the use of devìces forrning me subject of the patent in the constructìon or operation of aircraft or land vehicles of other countries of the Union, or of accessories of such aircraft or land vehicles, when those aircraft or land vehicles ternporarily or acciden tally enter the said country.
[Patents; Importation of Products Manufactured by a Process Patented in the Irnporting Country]
When a product ìs ìmported into a country of me Union where there exists a patent protecting a process of rnanufacture of the said product, the patentee shall have all the rights, with regard to the imported product, that are accorded to him by the legislation of the country of importation, on the basis of theprocess patent, with respect toproducts rnanufactured in that country.
Article 5quinqui.es
[Industrial Designs]
Industrial designs shall be protected in ali the counrries of the Union.
Article 6
[Marks: Conditions of Registration; Independence of Proteetion of Same Mark in Different Countries]
(1) The conditions for the filing and registration of tradernarks shall be determined in each country of me Union by ìrs dornestic legislation.
(2) However, an applicatìon for the registration of a mark filed by a national of a country of the Union in any country of the Union may not be refused, nor may a registration be invalidated. on me ground that filing, registration, or renewal, has not been effected in the country of origino
(3) A rnark duly registered in a country of the Union shall be regarded as independent of marks registered in the other countries of the Union, including the country of origin.
Article 6bis
[Marks: Well-Known Marks]
(1) The countries of the Union undertake, ex officio if their Iegislation so permits, or at the request of an interested party, to refuse or to caneel the registration, and to prohibit the use, of a trademark which constitutes a reproduction, an irnitation, or a translation, liable to create confusion, of a mark considered by the cornpetent authority of the country of registration or lise to be well known in that country as being already the mark of a person entitled to the benefits of this Convention and used for identical or sirnilar goods. These provisions shall also apply when the essential part of the mark constitutes a reproduction of any such well-known mark or an imitation liable to create confusion therewith.
(2) A period of ar least five years from the date of registration shall be allowed for requesting the cancellation of such a mark. The countries of the Unioo may provide for a period within which the prohibition of lise must be requested.
(3) No rime limit shall be fixed for requesting the cancellation or the prohibition of the use of marks registered or used in bad faith.
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Article 6ter
[Marks: Prohibitions concerning State Emblems, Official Hallmarks, and Emblems of Intergovemmental Organizations]
(1) (a) The countries of me Union agree to refuse or to invalidate the registration, and to prohibit by appropriate measures the use, without authorization by the cornpetent authorities, either as trademarks or as elements of trademarks, of arrnorial bearings, flags, and other State ernblems, of the countries of the Union, official signs and hallrnarks indicating control and warranty adopted by thern, and any imitation from a heraldic point of view.
(b) The provisions of sub-paragraph (a), above, shaU apply equally to arrnorial bearings, flags, other ernblerns, abbreviations, and namcs, of international intergovemrnental organiza tions of which one or more countries of the Union are mernbers, with the exception of armorial bearings, flags, other ernblerns, abbreviations, and narnes, that are already the subject of international agreements in farce, intended to ensure their protection, .
(c) No country of the Union shall be required io apply the provisions of sub-paragraph (b), above, to me prejudice ofme owners ofrights acquired ingood faith before the entry into force, in that country, of this Convention. The countries of the Union shall not be required to apply me said provisions when the lise or registration referred to in sub-paragraph Ca), above, is not of such a nature as to suggest to the public that a connection exists between tbe organization concemed and the armoriai bearings, flags, ernblems, abbreviations, and names, or li such lise or registration is probably not of such a nature as to mislead the public as to the existence of a connection between the user and the organization.
(2) Prohibition of me lise of official signs and hallmarks indicating control and warranty shall apply solely in cases where me marks in which they are incorporated are intended to be used 00 goods of the same or a similar kind,
(3) (a) For the application of these provisions, the countries of the Union agree to communicate reciprocally, through the intermediary of the International Bureau, the list of State emblerns, and official signs and hallrnarks indìcatìng control and warranty, which they desire, or may hereafter desire, to piace wholly or within certain limits under the protection of this Article, and all subsequent rnodifications of sueh list. Each country of the Union shall in due course rnake available to the public me lìsts so cornmunicated.
Nevertheless such communication is nat obligatory in respect of flags of States. (b) The provisions of sub-paragraph (1) of paragrapph (1) this Artiele shaH apply only to
sucharmorial bearings, flags, other emblerns, abbreviations~and names, of intemational inter governmental organizations as the latter have communicated to the countries of the Unioo. through the interrnediary of the Intemational Bureau.
(4) Any country of the Union may, within a period of twelve months from the receipt of the notification, transmit its objections, if any, through the intennediary of the Intcrnational Bureau, to the country or intemational intergovemmental organization concemed.
(5) In me case of State flags, the measures prescribed by paragraph (1), above, shaI! apply solely to marks registered after November 6, 1925.
(6) In the case of State emblerns oLher than flags, and of officiai signs and hallmarks of the countries ofthe Union~ and in the case of armoria! bearings, flags, oilier emblerns, abbrevia tions, and names, of intemational intergovemmental organizations, these provisions shaH apply only to marks registered more than two months after receipt of the 'Communication provided for in paragraph (3), above.
(7) In cases of bad faith, the countries shall have me right to caneel even mose marks incorporating State emblems, signs and haUmarks, which were registered before November 6,1925.
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(8) Nationals of any country who are authorized to make use of the State emblerns,signs, and hallmarks, of their country may lise them even if they are similar to those of another country.
(9) The countries of the Union undertake to prohibit the unauthorized use in trade of the State armorial bearings of me other countries of the Union, when the lise ìs of such a nature as to be misleading as io the origin of the goods. .
(lO) The above provisions shall not prevent me countries from exercìsing me right given in paragraph (3) of Article 6quinquies, Section B, to refuse or to invalidate the registration of rnarks incorporating, without authorization, armorial bearings, flags, other State ernblerns, or official signs and hallmarks adoptedby a country of the Union, as well as the distinctivesigns of ìnternational intergovemmemal organizations referred to in paragraph (1), above,
Article 6qu.arter
[Marks: Assignrnent of Marks)
(l) When, in accordance with the law of a country of the Union, the assignmentof a mark is valid only if it takes place atthe sarnetime as the transfer of thebusiness or goodwill rowhich me rnark belongs, it shall suffice for the recognition of such validity that the portion of the business or goodwill located in that country be transferred to the assignee, together with the exclusive right to rnanufacture in thesaid country, or to sell therein, the goodsbearing me mark assigned.
(2) The foregoingprovisìondoesnot impose uponthecountries of the Unionanyobligation to regard as valid the assignrnentof any mark the use of which by the assignee would, in fact, be of such a nature as to mislead the public, particularly as regards the origin, nature, or essentiaì qualities, of the goods to w hich the mark is applied,
Article 6quinquies
[Marks: Protection of Marks Registered in One Country of the Union in the Other Countries of the Union]
A. - (1) Every tradernark duly registered in the country of origin shall be accepted for filing and protected as is in the other countries of the Union, subject to the reservations indicated in this Article, Such countries may, before proceeding to fina1 registration, require the production of a certificate of registration in the country of origin, issued by the cornpetent authority. No authentication shall be required for this certificate.
(2) Shall be consìdered the country of origin the country of the Union where the aplicant has a real and ·effective industriaI or commerical establishment, Of, if he has no such establìshment within the Union, the country of the Union where he has his domicile,or, if he has no domicile within the Unioo but is a national of a country of the Union, the country of which he is a national.
B. - Trademarks covered by this Article may be neitherdenied registrationnor invalidated except in the following cases:
1. when they are of such a nature as to infringe rights acquired by third parties in the country where proteetion is clairned;
2. when they are devoid of any distinctive character, or consist exclusivelyof signs or indicationswhich mayserve,in trade, to designate the kind, quality,quantity, intended purpose, value, pIaceofarigio, of thegoods, or the timeofproduction,or havebecome clistomary in the current language or in the bona fide and established practices of the trade of the country where protection is claimed;
3. when they are contrary to morality or public arder and" in particular, of such a nature as to deceive the public. Il 1S understood that a mark may not be considered eontrary to public arder for the sole reason that it does nol conform to a provision of the legislation Of! marks, except if such provision itself relates to Eublic arder.
This provision is subject, however, to the application of Article lO w.
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c. - (1) -In determining whether a mark is eligible for protection, ali the factual circumstances must be taken into consideration, particularly the length of time the rnark has been in lise.
(2) No trademark shall be refused in the other countries of the Union for the sole reason that it differs from the rnark protected in the country of origin only in respeet of elernents that do not alter its distinctive character and do not affect its identity in the farro in which it has been registered in the said country of origino
D. - No person may benefit from the provisions of this Article if the mark for which he claims protection is not registered in the country of origino
E. - However, in no case shall the renewal of the registration of the mark in the country of origin involve an obligation to renew the registration in the other countries of the Union in which the mark has been registered.
F. - The benefit of priority shall rernain unaffected for applications for the registration of marks filed within the period fixed by Article 4, even if registration in the country of origin is effected after the expiration of such peri od.
Article 6sexies
[Marks: Service Marks]
The countries of the Union undertake to protect service marks. They shall not be required to previde for the registration of such marks.
Article 6septies
[Marks: Registration in the Name of the Agent or Representative of the Proprietor Without the Latter's Authorization]
(l) If the agent or representative of the person who is the proprietor of a mark in one of the countries of the Union applies, without such proprietor's authorization, for the registration of me mark in his own name, in one or more countries of the Union, the proprietor shall be entitled to oppose the registration applied for or dernand its canceliation or, if the law of the country so allows, the assignment in his favor of the said registration, unless such agent or represen tative justifies his action,
(2) The proprietor of the mark shall, subject to the provisions ofparagraph (1), above, be entitled to oppose the use of his mark by his agent or representative if he has not authorized such use.
(3) Dornestic legislation may previde an equitable tirne limit within which the proprietor of a mark must exercise the rights provided for in this Article.
Artide 7
(Marks: Nature of the Goods to which the Mark is Applied]
The nature of the goods io which a trademark is to be applied shall in no case form an obstacle to the registration of the rnark.
Article 7b 'w
[Marks: Collective Marks]
(l) The countries of the Union undertake to acceptfor filing and toprotectcollective marks belonging to associations the existence of which is not contrary to the law of the country of origin, even if such associations do not possess an industriaI or commerciaI establishmen t
(2) Each country shall be the judge of the particular conditions under which a collective mark shall be the judge of the particular conditions under which a coHective mark shaH be protected and may refuse protection if the mark is contrary te the public interest
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(3) Nevertheless, the protection of these marks shall not be refused to any association the existence of which is not contrary to the law of the country of origin, on the ground that such association is not established in the country where protection is sought or is no! constituted according to the law of the latter country.
Article 8
[Trade Names]
A trade name shall be protected in all the countries of the Union without the obligation of filing or registration, whether or not it forms part of a tradernark.
Article 9
[Marks: Trade Names: Seizure, on Irnportation, etc., of Goods Unlawfully Bearing a Mark or Trade Narne]
(1) AH goods unlawfully bearing a tradernark or trade name shall be seized 00 importation into those countries of the Union where such mark or trade name is entitled to legal protection. (2) Seizure shall likewise be effected in the country where the unlawful affixation occurred or in the country into which the goods were irnported,
(3) Seizure shall take place at the request of the public prosecutor, or any other competent authority, or any interested party,whether a natural person or a legal entity, in conformity with thc dornestic legislation of each country.
(4) The authorities shall not be bound to effect seizure of goods in transit. (5) If the legislation of a country does not perrnit seizure on importation, seizure shall be
replaced by prohibition of importation or by seizure inside the country. (6) If the legislation of a country perrnits neither seizure on irnportation nor prohibition of
importation nor seizure inside the country t then, until such tirne as the legislation is modified accordingly, these measures shall be replaced by the actions and rernedies available in such cases to nationals under the law of such country.
Artide lO
[False Indications: Seizure, on Irnportation, etc., of Goods Bearing False lndications as to their Source or the Identity of the Producer]
(1) The provisions of the preceding Artide shall apply in cases of direct or indirect lise of a false indication of the source of the goods or the identity of the producer, manufacturer, or merchant.
(2) Any producer, rnanufacturer, or merchant, whether a natural person or a legai entity, engaged in the production or manufacture of or trade in such goods and established either in the iocality falsely indicated as the source, or in the region where such locality is situated, or in the country falsely indicated, or in thc country where the false indication of source is used, shall in any case be deemed an interested party.
Article 10bis
[Unfair Competition)
(l) The countries of the Union are bound to a..'isure to nationals of such countries effective proteetion against unfair eompetition.
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(2) Any act of cornpetition contrary to honest practices in industrial or commerciai matters constitutes an act of unfair cornpetition.
(3) The following in particular shall be prohibited: 1. all acts of such a nature as to create confusion by any means whatever with the establishment,
the goods, or the industrial or cornmercial activities, of a cornpetitor: 2. false allegations in the course of trade of such a nature as 10 discredit the establishment, the
goods, or the industrial or commerciai activities, af a competitor; 3. indications or allegations the lise ofwhich in the course of trade is liable to mislead the public
as to the nature,the manufacturing process, the characteristics, the suitability for their purpose, or the quantity, of the goods.
Article lOIe!
[Marks, Trade Names, False lndications, Unfair Competition: Rernedies, Righi to Sue]
(l) Thecountriesofthe Unionundertake to assure to nationaìsof the othercountries ofthe Union appropriate legai remedies effectively to repress ali the acts referred to in Articles 9, l O, and l<Jbis .
(2) They undertake, further, to provide measurès to perrnit federations and associatìons representing interested industrialists, producers, or merchants, provided that the existence of such federations and associations is not contrary to the laws of their countries, to takeaction in the courts or before the administrative authorities, with a view to the repression of the acts referred to in Articles9, IO, and IO'", inso far as the law ofthe country in which protection is claimed allowssuch action by federations and associations of that country.
Ardete Il
[Inventions, Utility Models, Industrial Designs, Marks; Ternporary Protection at Certain International Exhibitions]
(1) The countries of the Union shall, in conforrnity with their dornestic legislation, grant ternporary protection to patentable inventions, utility rnodels, industrial designs, and tradernarks, inrespect of goods exhibited at official or officially recognized international exhibitions held in the territory of any of thern.
(2) Such ternporary protection shall not extend the periods provided by Article 4. If, later, the righiofpriority is invoked, the authorities of any country mayprevide that the periodshall start from the date of introduction of the goods into the exhibitìon,
(3) Each country may require, as proaf of the identity of the article exhibited and of the date of its introduction, such documentary evidence as it considers necessary.
Artiele 12
[SpedaI National IndustriaI Property Services]
(1) Each country ofthe Union undertakes to establish a special industriaI property service and a centraI office for the communication to the public of patefl~, utility models, industriai designs, and trademarks.
(2) This service shaU publish an officiaJ periodica! journal. H shaU publish regularly: (a) the names of the proprietors of patents granted, with a brief designation of the inventions
patented; (b) the reproductions of registered trademarks.
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Article 13
[Assernbly of the Union]
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(l) (a)The Union shall have an Assernbly consisting of those countries of theUnion which are bound by Articles 13 to 17.
(b) The Government of each country shall be representedby one delegate,whomay be assisted by alternate delegates, advisors, and experts.
(c) The expenses of each delegation shall be bome by the Governrnent which has appointed it. (2) (a) The Assembly shall:
O) dealwith all matters conceming the maintenanceand developrnent ofthe Union and the implernentation of this Convention;
(ii) gìve directions concerning the preparation far conferences of revision to the Interna tional Bureau of Intellectual Property (hereinafter designated as "the lnternational Bureau") referred to in the Convention establishing the World Intellectual Property Organization (hereinafterdesignated as "the Organization"), due accountbeing taken of anycornments rnade by those countries of the Union which are not bound by Articles 13 to 17;
(iii) review and approve the reports and activitiesof theDirector Generalofthe Organization concerning the Unico, and give rum all necessaryinstructions concerningmatterswithin the competence of the Union:
(iv) eleet the mernbers of the Executive Cornmittee of the Assernbly; (v) review and approve the reports and activities of its Executive Cornmittee, and give
instructions to such Comrnittee: , (vi) deterrnine the programand adopt the biennialbudgetof the Union, andapprove its final
accounts; (vii) adopt the financial regulations of the Union;
(viii) establish such committees of experts and working groups as it deerns appropriate to achieve the objectives of the Union;
(ix) deterrnine which countries not mernbers of the Unionand which intergovernmental and international non-governrnental organizations shall be admitted to its meetings as observers;
(x) adopt arnendrnents to Articles 13 to 17; (xi) take any other appropriate action designed to further the objectives of the Union;
(xii) perform such other functions as are appropriate under this Convention; (xiii) subject to its acceptance, exercise such rights as are given to it in the Convention
establishing the Organization. (b) With respect to matters which are of interest a1so to other Unions adrninistered by the
Organization, the Assernbly shall make its decisions after having heard the advice of the Coordination Cornmittee of the Organization.
(3) Ca) Subject to the provisionsof subparagraph Cb), a delegate mal' represent one country only, (b) Countries ofthe Union grouped under the terms of a special agreement in a common office
possessing for each of them the character of a special nationa1 service of ìndustrìaI property a~ referred to in Artide 12 may bè jointly represented during discussions by one of their number.
(4) (a) Each country member of the Assembly shall have one vote. (6) One-half of the countries members of the Assembly shall eonstitute a quorum. (c) Notwithstanding the provisions of subparagraph (b), if, in any session, the number of
countries represented is less than one-half but equal to or more than one-third of the countries members ofthe Assembly, the Assembly may make decisionsbUi, with the exceptionof decisions concerning it5 own procedure, all such decisions shall take effect oruy if the conditions sei forth hereinafter are fulfilled. The lntc:rnational Bureau shall communicate the said decisions to the
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countriesmernbers of the Assernbly which were not represented and shall invite thern to express in writing their vote or abstention within a period of three rnonths from the date of the cornmunì cation, If, at the expiration of this period, the number of countries having thus expressedtheir vote or abstention anains the number of countries which was lacking for attaining the quorum in the sessionitself, such decisions shall take effect provided that at the same time the required majority stili obtains.
(ti) Subject to the provisions of Articles 17 (2), the decisions of the Assernblyshall require two thirds of the votes cast.
(e) Abstentions shall noi be considered as votes. (5) (a) Subject io the provisions of subparagraph (b), a delegate rnay vote in the narne of one
country only. (b) The countries of the Unionreferred ro in paragraph (3) (b) shall, as a general rule, endeavor
tosendtheirown delegations to the sessions of the Assembly. If, however, for exceptionalreasons, any such country cannot send its own delegation, it rnay give to the delegation of another such country the power to vote in its name, provided that each delegation rnay vale by proxy for one country only.Such power to vote shall be granted in a document signed by the Head cf State or the cornpetent Minister.
(6) Countries of the Union noi members of the Assernbly shall be adrnittedro the meetings of the latter as observers.
(7) (a) The Assernbly shall meet once in eve~y second calendar year in ordinary session upon convocation by the Director General and, in the absence of exceptional circumstances,during the sarneperiod and at the same place as the General Assernbly of the Organization,
Cb) TheAssernblyshallmeetinextraordinarysessionuponconvocationby theDirectorGeneral, al the request of the ExecutiveComrnittee or at the requestof one-fourth of the countries rnembers of the Assembly.
(8) The Assembly shall adopt its own rules of procedure.
Article 14
[Executive Cornrnittee]
(1) The Assernbly shall have an Executive Cornmittee. (2) (a)TheExecutìveCommitteeshallconsistofcountrieselectedbytheAssernbly fromamong
countries rnernbersofthe Assembly. Furtherrnore,the countryon whose tenitory the Organization has itsheadquarters shall, subject to the provisions of Artiele 16 (7) (b), have an ex officio seat on the Committee.
(b) The Government of each country member of the Executive Committeeshall berepresented by one delegate, who may be assisted by alternate delegates, advisors, and experts.
(c) The expen..~es of each delegation shall be bome by thc Government which has appointed il. (3) Tbe number of countries members of the Executive Committee shall correspond to one
fourth of the number of countries members of the Assembly. In establishingthe number of seats to be filled, remainders after division by four shall be disregarded.
(4) Inelecting the membersofthe Executive committee, the Assembly shall havedue regard to anequitable geographicaldistributionand to the needforcountries party to theSpecialAgreements established in relation with the Vnion to be among the countries constituting the Executive Committee.
(5) (a) Each memberof the Executive Committee shaH serve from thedose of thesession of the Assembly· which elected it to the cInse of the next oniinary session of the Assembly.
(b) Membersof the Executive Committee maybe re-elected,but on1y up toa maximum of tvlo thirds of such members.
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(c) The Assembly shall establishthe details of the rulesgoverning the electionandpossible re election of the members of the Executive Comrnittee,
(6) (a) The Executive Cornrnitteeshall: (i) prepare the draft agenda of the Assernbly;
(ii) submit proposals to the Assembly in respectof thedraftprograrn andbiennial budget of the Union prepared by the Director General;
(iii) [deletedJ (iv) submit, with appropriate cornrnents, to the Assembly the periodical reports of the
Director General and the yearlyaudit reportson the accounts; (v) take a11 necessary measuresto ensure the execution of the prograrn of the Unionby the
Director General, in accordance with the decìsions of the Assernbly and havingregard to circumstances arising between'two ordinarysessionsof the Assernbly;
(vi) perforrn such other functions as are allocated to it under this Convention. (b) \VHh respect to matters which are of interest also io other Unions administered by the
Organìzation, the Executive Cornmitteeshall make its decisions after having heard the advice of the Coordination Committee of the Organization.
(7) (a) The Executive Committee shall rneet once a year in ordinary session upon convocation by the DirectorGeneral, preferablyduringthe sameperiodandat the sameplace astheCoordination Committee of the Organization.
(b) The Executive Committee shall meet in extraordinary session upon convocation by the Director General, either on bis own initiative,or al the request of its Chairrnanor one-fourth of its rnernbers.
(8) (a) Each country mernber of the Executive Comrnittee shall have one vote. (b) One-half of the mernbers of the Executive Committee shall constitute a quorum. (c) Decisions shall be made by a simple majority of the votes cast. (d) Abstentions shall not be considered as votes. (e) A delegate may represent, and vale in the narne of, one country only. (9) Countries of the Union not members of the Executive Comrnittee shall be adrnitted to its
rneetings as observers. (lO) The Executive Committee shall adopt its own rules of procedure.
Article 15
[International Bureau]
(1) (a) Adrninistrative tasks concerning the Union shall be performed by the International Bureau, which ìs a continuation of the Bureau of the Union uruted with the Bureau of thc Union established by thc lnternational Conventionfor the Proteetion of Literary and ArtisticWorks.
(b) In particular, the InternatianalBureau shall provide thc secretariat of the variousorgans of the Unian.
(c) The Director GeneraI ofthe Organizationshallbe thc chief executiveofthe Urnanand shall represent the Umon.
(2) The International Bureaushall assembleand publìsh informationconcerning theprotection of industriaiproperty. Each countryof the Unionshallpromptly communicateto the International Bureau alInewlawsand offidal textsconcerningtheproteetion of industrialproperty. Furthermore, it shall furnish the International Bureau with aH the publications of its industriaI propertyservice of direct concern to the protection af industriaiproperty which the International Bureau may find useful in its work.
(3) The International Bureau shaH publish a monthly periodical. (4) TheInternationalBureaushallj on request, furnish anycountry of thcUmOTI\vithinformation
on matters concerning the protectionof industriaI property.
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(5) The International Bureau shall conduct studies, and shall provide services, designed to facilitate the protection of industrial property.
(6) The Director General and anystaff mernber designated by hirnshall participate, without the right 10vote, in all meetings of the Assembly, the ExecutiveComrnittee,and any other comrnittee of expertsor working group. The Director General, or a staff mernberdesignated by rum, shall be ex officio secretary of these bodies.
(7) (a) The International Bureau shall, in accordance with the directions of the Assernbly and in cooperationwith the Executive Cornmittee,make the preparations for the conferences of revision of the provisions of the Convention other than Articles 13 to 17.
(b) The International Bureau may consult with intergovernmental and international non governmental organizations concerning preparations far conferences of revisiono
(c) The Director Generaiand personsdesignatedby rum shall takepali, without the right to vote, in the discussions at these conferences.
(8) The International Bureau shall carry out any other tasks assigned to il.
Artide 16
[Finanees]
(1) (a) The Union shall have a budget. (b) The budget of the Union shall include the incarne and expenses proper to the Union, its
contributionto the budget of expenses common to the Unions,and,where applicable, the sum made available to the budget of the Conference of the Organization,
(c) Expenses noi attributable exclusively to the Union but also to one or more other Unions administeredby theOrganization shallbe considered asexpenses common to the Unions. The share of the Unionin such common expenses shall be in proportion to the interest the Union has in them,
(2) The budget of the Union shall be established with due regard to the requirements of coordination with the budgets of the other Unions administered by the Organization.
(3) The budget of the Union shall be financed from the following sources;
(i) contributions of the countries of the Union; (ii) fees and charges due for services rendered by the International Bureau in relation to the
Union; (iii) sale of, or royalties OD., the publications of the International Bureau concerning the
Union; (iv) gifts, bequests, and subventions; (v) rents, interests, and other miscellaneous income.
(4) (a) Far the purpose of establishing its contribution towards the budget, each country of the UrnaTI shaU belong10 a class, and shallpay its annualcontributions on the basis of a numberof units fixed as follows:
Class I . . 25 Class II. . 20 Class III. 15 Class IV. lO Class V.. 5 Class VI. 3 Class VII . 1
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(b) Unless il has already done so, each country shall indicate, concurrently with depositing its instrument of ratification or accession, the class to which il wishes to belong. Any country may change class. If il choosesa lowerclass, the country must announcesuch changeto theAssernbly al one of its ordinarysessions. Any such change shall take effect at the beginningof the calendar year following the said session.
(c) The annua! contributionof each country shall be an amount in the sarneproportion to the total sum to be contributed to the budgetof the Union by all countriesas the nurnber of us units is to the total of the units of all contributing countries.
(ti) Comributionsshall becorne due on the first of January of each year. (e) A countrywhich is in arrears in the paymentof its contributions rnay not exercise its right
to voie in any of the organsof the Union of which it isarnember if the arnount of its arrearsequals or exceeds the amount of the contributionsdue from it far the preceding two full years. However, anyorgan of'the Unionmayallowsuch acountry to continue toexercise itsrighttovote inthat organ if, and as long 35, it is satisfied that the delay in payrnent is due to exceptional and unavoidable circumstances.
(j) If the budget 1S not adopted before the beginning of a new financial period, it shall be at the same level as the budget of the previous year, as provided in the financial regulations.
(5) The amount of the fees and charges due far services rendered by the Intemational Bureau in relation to the Union shall be established, and shall be reported to the Assernbly and the Executive Cornmittee, by the Director General.
(6) (a) The Union shall have a working capitai fund which shall be constituted by a single payrnent made by each country of the Union, If the fund becomes insufficient, the Assembly shall decide to increase il.
(b) The amount of the initial payment of each country to the said fund or of its participation in the increase thereof shall bea proportion of the contribution of that country far the year in which the fund is established or the decision to increase it is made.
(c) The proportion and the terms ofpayment shall be fixed by the f\ssembly on the proposalof the Director GeneraI and after it has heard the advice of the Coordination Committee of the Organization.
(7) (a) In the headquarters agreement conduded with the country on the territory of which the Organization has its headquarters, it shall be provided that, whenever the working capitaI fund is insufficient, such country shall grant advances. The amaunt of these advances and the conditions on which they are granted shall be the subject of separate agreements, in each case, between such country and the Organization. A~ long as it remains under the obligation to grant advances, such country shall have an ex offido seai on the Executive Committee.
(b) The country referred to in subparagraph (a) and the Organization shall each have the right to denounce thc obligation to grant advances, by written notification. Denunciation shall take effect three years after the end of the year in which it has been notified.
(8) The auditing of the accounts shall be effected by one or more of the countries of the Umon or by extemal aùditors, as provided in the financia1 regulations. They shall be designated, withtheir agreement, by thc Assembly.
Article 17
[Amendrnent of Artides 13 to 17]
(l) Proposals for the amendment of Articles 13, 14, 15, 16, and the present Artide, may be irntiated by any country member ofthe Assembly, by the Executive Committee,or by theDirector GeneraI. Such proposals shall becommunicated by the Director GeneraI to the membercountrièS af the Assembiy at ka'it six months in advance af their consideration by the A.ssembly.
(2) Amendments to the Articles referred to in paragraph (l) shall be adopted by the A.ssembly.
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Adoption shall require three-fourths of the votes cast, provided that any amendrnent to Article 13, and to the present paragraph, shall require four-fifths of the votes cast
(3) Any amendrnent to the Articles referred to in paragraph (1) shall enter into force one month afterwritten notifications of acceptance, effected in accordancewith their respectiveconstitutional processes, havebeenreceived by the Director Generalfrorn three-fourthsof thecountriesmembers of the Assembly at the time it adopted the amendrnent. Any amendment to the said Articles thus acceptedshallbind al} the countrieswhich aremernbersof theAssernblyat thetirnethearnendment enters into force, or which become members thereof ai a subsequent date, provided that any amendment increasing the financial obligations of countries of the Union shall bind only those countries which have notified their acceptance of such amendment.
Artide 18
[Revision of Articles 1 to 12 and 18 ro 30]
(l) This Convention shall be subrnitted to revision with a view to the introduction of amend ments designed to improve the system of the Union.
(2) For that purpose, conferences shall be held successively in one of the countriesof the Union among the delegates of the said countries.
(3) Amendments to Articles 13 to 17 are governed by the provisions of Artide 17.
Article 19
[Special Agreernents]
1t is understood that the countries of the Union reserve the right to make separately between themselvesspecialagreements for the protection of industriaiproperty1 in sofarasthese agreernents do not contravene the provisions of this Convention.
Article 20
[Ratification or Accession by Countries of the Union; Entry Into Force]
(1) (a) Any country of the Union which has signed ibis Act may ratify il, if it has not signed ii, may accede to il. lnstruments of ratification and accession shall be deposited with the Director General,
(b) Any country of the Union may declare in its instrument of ratification or accession that its ratification or accession shall no! apply:
Ci) to Articles 1 to 12, or (ii) to Articles 13 to 17.
Cc) Any country of the Union which, in accordance with subparagraph (b), has excluded from the effects'of its ratification or accession ane of the two groups of Articles referred to in that subparagraph may ai any latcI' time deciare that it extends the effects of 115 ratificationor accession to that group of Articles. Such dec1aration shall be deposited with the Director GeneraI.
(2) (a) Artides 1 to 12 shaU enter into force, with respeet to the first fen rountries of the Union which have deposited instruments of ratification or accession without making the dedaration permitted under paragraph (l) (b) (i), three months after the deposit of the ter.th such instrument of ratification or accession.
(b) Articles 13 to 17 shaH enter into force, with respeet to thc first ten countries of the Unioo which have deposited instruments of ratification or accession without making the dedaration
permitted under paragraph (1) Cb) (ii), three months after the deposit of the tenth such instrument of ratification or accession.
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(c) Subject to the initialentry into farce,pursuantto theprovisions ofsubparagraphs (a) and(b), of each of the two groups of Articles referred to in paragraph (l) (b) (i) and (ii), and subject to the provisionsofparagraph(l)(b), Articles1to TZshall, withrespect to anycountry ofthe Union,other than those referred to in subparagraphs(a) and (b), which deposits an instrument of ratification or accession or any country of the Union which deposits a declaration pursuantto paragraph (l) (c), enter into farce three months after the date of notificationby the Director Generaiof such deposit, unless a subsequent date has been indicatedin the instrumentor declarationdeposited, In the latter case, this Act shall enter into force with respect to that country on the date thus indicated.
(3) With respect to any country of the Union which deposits an instrument of ratification or accession, Articles 18to 30shall enter into farceon theearlierofthe dates onwhichanyof thegroups of Articles referred to in paragraph (l) (b) enters into force with respect to that country pursuant to paragraph (2) (a), (b), or (c).
Article 21
[Accession by Countries Outside the Union; Entry Into Force]
(1) Any country outside the Union may accede to this Act and thereby become a mernber of the Union, Instruments of accession shall be deposited with the Director General.
(2) (a) With respect to any country outsidethe Union which deposits its instrumentof accession ane month or more before the date of entry into force of any provisions of thepresent ACl, thisAct shall enter into force, unless a subsequent date has been indicated in the instrument of accession, onthe date upon which provisions firstenter into farce pursuant to Article 20(2) (a) or (b); provided that:
(i) if Articles 1 to 12 do not enter into force on that date, such country shall, dur ing t he interim period before the entry into farce of such provisi ons, and in substitution therefor, be bound by articles 1 to 12 of the Lisbon Act,
(ii) if Articles 13 to 17 do not enter into farce on that date, such country shall, during the interirn period before the entry intofarce of such provisions, and insubstitutiontherefor, be bound by Articles 13 and 14 (3), (4), and (5), of the Lisbon Act.
If a country indicates a subsequent date in its instrurnentof accession, this Ad shall enter into force with respeet to that country on the date thus indicated.
(b) With respeet to any country outside the Union which deposits i1s instrument of accessionon a date whlch is subsequent to, or precedes by less than ane month, the entry into forceof ane group of .A.rticles of the present Act, trus Act shall, subject to the proviso of subparagraph (a), enter into force three months after the date on which its accession has been notified by the Direct Generai, un1ess a subsequent date has been indicated in the instrument of accession. In the Iutter case. this Act shall enter into farce with respect to that country on the date thus indicated.
(3) With respeet to any country outside the Union \vhich deposits its instrument of accession after the date of entry into forceof the presentAct in its entirety, or less than ODe monthbefare such date, this Act shall enter into farce thIee months after the date on which its accession has bèen notified by the Director Generai, unless a subsequent date has been indicated in the instrument of accession. In the latter C3.."ie, this Act shall enter into farce with respect to that country on the dak thus indicated.
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Artide 22
[Consequences of Ratification or Accession]
Subjectto the possibilitiesof exceptionsprovided for inArticles 20 (1)(b) and28 (2), ratification or accession shall automatically entail acceptance of all the clauses and admission to all the advantagesof this Act,
Artide 23
[Accession to Earlier Acts]
After the entry into force of this Act in its entirety, a country may not accede to earlier Acts of this Convention.
Article 24
[Territories]
(1) Any country may declare in its instrument of ratification or accession, or may inform the DirectorGeneralby writtennotificationanylime thereafter,that thisConventionshallbe applicable toallorpartofthose territories,designatedinthedeclaration or notification,for theexternal relations of which it is responsible.
(2) Anycountry whichhas madesuchadeclarationorgiven suchanotificationmay,atanytirne, notify the Director General that this Convention shall cease io be applicable to all or part of such territories.
(3) (a) Any declaration made under paragraph (1) shall take effect on the same date as the ratification oraccessionin the instrumentof which it wasincluded,andanynotificationgivenunder such paragraph shall take effect three months after its notification by the Director General.
(b) Any notifìcationgiven under paragraph (2) shall take effect twelve months after its receipt by the Director General.
Article 25
[Implementation of the Convention on the Domestic Level]
(l) AnycountrypartytothisConvention undertakes to adopt, inaccordance with its constitution, the measures necessary to ensure the application of this Convention,
(2) It isunderstoodthat, at the time a country deposits its instrurnent of ratificationor accession, it will be in a position under its domestic law to give effect to the provisions of this Convention,
Article 26
[Denunciation]
(1) This Convention shall remain in force without limitation as to time, (2) A.ny country maydenounce thisAct by notificationaddressedto the DirectorGeneral.Such
denunciation shall constitute also denunciation of all earlier Acts and shall affectonly the country making ii, the Convention remaining in full force and effect as regards the other oountriesof the Union.
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(3) Denunciation shall take effect one year after the day on which the Director General has received the notification.
(4) The right of denunciation provided by this Article shall not be exercised by any country before the expiration of five years from the date upon which it becornesa mernber of the Union,
Artide 27
[Application of Earlier Acts]
(1) The present Act shall, as regardsthe relationsbetween the countriesto whichit applies,and to the extent that it applies, replace the Conventionof Paris of March 20,1883; and the subsequent Acts of revisiono
(2) (a) A$ regards the countries to which the present Ad does not apply,or doesnot apply in its entirety, but .10 which the Lisbon Act of October 31, 1958, applies, the lattershall remain in force in its entirety or to the extent that the present Act does not replace it by virtue of paragraph (1),
(b) Similarly, as regards the countries to whichneither thepresentAd, norportionsthereof nor the Lisbon Act applies, the London Act of lune 2, 1934, shall rernain in force in its entirety or to the extent that the present Act does not replace it by virtue of paragraph (1).
(c) Sirnilarly, as regards the countriesto whichneither the presentAct, norportionsthereof,nor the Lisbon Act, nor the London Act applies, the Hague Act of Novernber 6, 1925,shall remain in farce in its entirety or to the extent that the present Act does noi replace it by virtue of paragraph (l).
(3) Countries outside the Unionwhich becorne party rothis Act shall applyitwith respect to any countryofthe Union not party to thisAct orwhich,althoughpartyto thisAct, hasmadeadeclaration pursuant to Article 20 (l) (b) (i). Such countries recognize that the said country of the Union may apply, in its relations with them, the provisions of the most recent Act 10 which ìt is party.
Artide 28
[Disputes]
(l) Any dispute between two or more countries of the Union concerning the interpretation or application of this Convention, not settled by negotiation,' may, by any one of the countries concerned, be brought befare the Intemational Court of Justice by application in canformity \Nith the Statute of the Court, unless the countries concerned agree on some other rnethod of settlement. The country bringing the dispute befare the Court shall inform the International Bureau; the International Bureau shall bring the rnatter to the attcntion of the other countries of thc Umon.
(2) Each country ma)', at the time it signs this Act or deposits its instrument of ratification or accessiofl, dedare that it does not consider itself bound by the provisionsof paragraph (1). \Vith regard to any dispute between such country and any other country af the Unìon, the provisionsof paragraph (1) shall not appiy,
(3) Any country having made a declarationin accordance with the provisions of paragraph(2.) may, at any time, withdraw its declaration by notification addressed to the Director GeneraI.
Artiete 29
[Signature, Languages, Depositary Functions]
(1) (a) This Act shaB be signed in a single copy in the French language andshall be deposited with the Governrnent of Sweden.
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(b) Offìcìal texts shall be established by the Director Generai, after consultation with tbe interested Governments, in the English, German, Italian, Portuguese, Russian and Spanish languages, and such other languages as the Assembly may designate.
(c) Incase of differencesofopinionontheinterpretationofthevarioustexts,theFrenchtext shall prevail.
(2) This Act shall remain open for signature ai Stockholrn until January 13, 1968. (3) The Director Generaishall transmit two copies, certified by the Govemrnent of Sweden, of
the signed text of thìs Act to the Governments of all countries of the Union and, 00 request to the Government of any other country.
(4) The Director Generai shall register this Aci with the Secretariat of the United Nations. (5) The Director Generai shall notify the Governments of all countries of the Union of
signatures,deposits of instrumentsof ratificationoraccessionand anydeclarationsincluded in such instruments or made pursuant to Article 20 (l) (c), entry into force of any provisions of this A«, notifications of denuncìation, and notifications pursuant to Article 24.
Artide 30
[Transitional Provisions]
(1) Until the first Director General assurnes office, references in this Act to the International Bureauof theOrganizationor to theDirectorGeneralshaB be deernedtobereferences10 the Bureau -ofthe Union or its Director, respectively.
(2) Countries of the Union not bound by Articles 13 to 17 rnay, unti! five years after the entry into force of the Convention establishing the Organization, exercise, if they so desire, the rights provided under Articles 13 to 17 of this ACl as if they were bound by those Articles,Any country desiring to exercise such rights shall give written notificatìon10 that effect to the Director General; such notification shall beeffective from the date of its receipt, Such countriesshall be deerned to be members of the Assernbly unti! the expiration of the said period.
(3) A.s long as all thecountries of'the Union have not becorneMernbersof the Organization, the International Bureau of the Organization shall also function as the Bureau of the Union, and the Director General as the Director of the said Bureau.
(4) Once aH the countries ofthe Union have become Members of the Organization,the rights, obligations, and property,of the Bureau of the Union shall devolve on the International Bureau of the Organization.
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SECONDSCHEDULE
AGREEMENT ON TRADE..RELATED ASPECTS OF INTELLECTUAL PROPERTY RIGHTS
PARTI GENERAL PROVISIONS AND BASIC PRINCIPLES
PART II STANDARDS CONCERNING THE AVAILABILITY, SCOPE AND USE OF INTELLECTUAL PROPERIT RIGHTS
l. Copyright and Related Rights 2. Trademarks 3. Geographical Indications 4. Industrial Designs 5. Patents 6. Layout-Designs (Topographies) of Integrated Circuits 7. Protection of Undisclosed Information 8. Control of Anti-Competitive Practices in Contractual Licences
PART III ENFORCErviENT OF IN1ELLECTUAL PROPERIT RIGHTS
l. General Obligations 2. Civil and Adrnìnistrative Procedures and Rernedies 3. Provisional Measures 4. Special Requirements Related to Boarder Measures 5. Criminal Procedures
PARTIV ACQUISITION AND MAINTENANCE OF INTELLECTUAL PROPERTY RIGHTS ANDRELATED INTER-PARTESPROCEDURES
PARTV DISPUTE PREVENTION AND SETTLE~NT
PARTVI TRANSITIONAL ARRANGE!vfENTS
PARTVII INSTITUTIONAL ARRANGErvIENTS; FINAL PROVISIONS
AGREEMENT ON TRADE..RELATED ASPECTS OF INTELLECTUAL PROPERTY RIGHTS
Members,
Desiring to reduce distortions and impedirnents to intemational trade, and taking into account the need to promote effective and adequate protection of intellectual property rights, and to ensure that rneasures and procedures to enforce intellectual property rights do not thernselves become barriers to legitimate trade;
Recognizing, lo this end, the need for new rules and disciplines concerning: (a) the applicability of the basic principles of GATI 1994 and of relevant international
intellectual property agreernents or conventions; (b) the provision of adequate standards and principles concerning the availability, scope
and lise of trade-related intellectual property rights;
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52/78 (c) the provision of effective and appropriate means for the enforcement of trade-related
intellectual property rights, taking into account differences in national Iegal systems; (d) the provision of effective and expeditious procedures for the multilateral prevention
and settlernent of disputes between governments; and (e) transitional arrangements aiming at the fullest participation in the results of the
negonatìons: Recognizing the need for a rnultilateral framework of principles, rules and disciplines
dealing with international trade in counterfeit goods: Recognizing that intellectual property rights are private rights: Recognizing the underlying public policy objectives of national systems for the protection
of intellecrual property, including developmental and technological objectives: Recognizing a1so the special needs of the least-developed country Mernbers in respect of
maxirnurn flexibility in the domestic implernentation of Iaws and regulations in arder to enable them to create a sound and viable technological base;
Emphasizing the importance of reducing tensions by reaching strengthened cornmitments to resolve disputes on trade-related intellectual property issues through multilateral proce dures:
Desiring to establish a rnutually supportìve relationship between the WTO and the World Intellectual Property Organization (referred to in this Agreernent as "WIPOf!) as well as other relevant international organizations;
Hereby agree as follows:
PARTI
GENERAL PROVISIONS AND BASIC PRINC/PLES
Article l
Nature and Scope ofObligations
1. Members shall give effect to the provisions of this Agreement. Members rnay, but shall not be obliged to, implement in their law more extensive protection than is required by this Agreement, provided that such protection does not contravene the provisions of this Agree mento Members shall be free to deterrnine the appropriate method of implementing the provisions of this Agreeernent within their own legal systern and practice,
2. For the purposes of this Agreement, the term "intellectual property" refers to all categories of intellectual property that are the subject of Sections l through 7 of Part II.
3. Members shall accord me treatment provided for in this Agreernent to the nationals of other Mernbers.' In respect of the relevant intellectual property right, the nationals of other Mernbers shall be understood as those natural or legal persons that would meet thecriteria for eligibìlity for protection provided for in the Paris Convention (1967), the Berne Convention (1971), the Rome Conyention and the Treaty on Intellectual Property in Respectoflntegrated Circuits, were alI Members ofthe WTO members ofthoseconventions.2Any Memberavailing itself of the possibilities provided in paragraph 3 of Artiele 5 or paragraph 2 ofArticle 6 of the Rome Convention shall make a notification as foreseen in those provisions to the Council for Trade..Related Aspects of Intellectual Property Rights (the "Council for lRIPS").
l When -nationab" lll"e rcferred 10 in mis Agreement, they sha11 bedeemccl, in thec.a..ee oC 11. sepante customs tcrritory Membe: oCtbc WTO. 10 m=n penON, natum1 or legal, who lIlre domidled Cf whc b.&ve $. real and effective indlWtrW or~W establishment in that CU5tmJ:U territoty.
~In this Agreement,"Pw Con\l'enUoo" refers t.ò t.hel'cis COO'll"e11tion for the Protec:tion ot lndustrialProperty; "PW Convention0%7)" refet1l te the Stockhclm Aet ofthis ConYCnrion of 14 Jul}' 1967. "Beme Convetltioo" refen to the Berne Conventioo far tbc Protection ofUtcrnry andA.rtilltiç WOI'U; "Berne Ccmventian (1971)" i'eferllto tbc Pw Aa of thi1J Coovention 0[24 luI)' 1971. "Ro~ Um'l/'Cution":eteri lO the mtenationa..! C~tion fOt' tbc Protcc:tion of Perl"ormeril.?roducen of ?honogrlUlU a."'ld Bro&.dusting OrglUlÌUtions. adopted at Rome cm 26 Daober 1961. 'Treaty on IntellccnW Propetty inRe~tor 1nlegratedCircuiu" (!PIe Trea.ty)reftm to the Treaty on lntellecrual ?toperty in Respect oflntegrata::d Cireu.iu.Adopted at Wuhington OD 2:6 My 1989. "wra Agreement" refe~ te the Agreem:nt Establishing theVITO.
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Article 2
Intellectual Property Conventions
l. In respect ofParts II, III and IV of this Agreement, Mernbers shall comply with Articles l through 12, and Article 19, of the Paris Convention (1967).
2. Nothing in Parts I to IV of this Agreement shall derogate from existing obligations that Members rnayhave toeach otherunder theParisConvention, theBerne Convention, theRome Convention and the Treaty on Intellectual Property in Respect of Integrated Circuits,
Article 3
National Treatment
l. Each Member shall accord io the nationals of other Members treatment no less favourable than that it accords toits own nationalswithregard to the protectìon" ofintellectual property, subject to the exceptions already provided in, respectively, me Paris Convention (1967), me Berne Convention (1971), the Rome Converuion or the Treaty 00 Intellectual Property inRespect of IntegratedCircuits, In respect of performers, producersof phonograms and broadcasting organizations, this obligation only applies in respect of the rights provided under this Agreernent, Any Member availing itself of the possibilities provided in Article 6 of the Berne Convention (1971) or paragraph l(b) of Article 16 of the Rome Convention shal. make a notification as foreseen in those provisions to the Council for TRIPS.
2. Members may avail thernselves of the exceptions permitted under paragraph l in relation to judicial and adrninistrative procedures, including the designation of an address for service or the appointrnent of an agent within the jurisdiction of a Mernber, only where such exceptions are necessary to secure compliance with laws and regulations which are not inconsistent with the provisions of this Agreement and where such practices are not applied in a manner which would constitute a disguised restriction on trade,
Article 4
Most-Favoured-Nation Treatment
With regard to the protection of intellectual property ~ any advantage, favour, privilege or imrnunity granted by a Member to the nationals of any other country shall be accorded irnrnediately and unconditionally to the nationals of all other Members. Exempted from this obligation are any advantage, favour, privilege or immunity accorded by a Member:
(a) deriving from international agreernents 00 judicial assistance or law enforcernent of a general nature and not particularly confined to the protection of intellectual property;
(b) granted in accordance with the provisionsof the Berne Convention (1971) or theRome Convention authorizing that the treatment accorded be a function not of nalional treatment but of the treatment accorded in another country;
Cc) in respect of the rights of performers, producers ofphonograms and broadcasting organizations nat provided under this Agreement;
(d) deriving from international agreements related to the protection of inteIlectuaI property which entered into force prior to the entry into force of the WTO Agreement, provided that such agreements are notified to the Council for TRIPS and do not eonstitute an arbitrary or unjustifiable discrimination against nationals of other Members.
)F01' the pu.rpooes of Artieles 3 end 4, ·protectioo" ,ball indude mancl'$ affecting &se availability, acquisition, scope. ma.:ntena.no: 4.'1d en[orcement Ol intdlectual property rights as welI liS thO$C manen1 affeeting me Il$<: of ìnt::llectual property righn 5pCeìfical1y addres!eJ in this AgrcemenL
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54/78Article 5
Multilateral Agreements on Acquisition or Maintenance ofProtection
The obligations under Articles 3 and 4 do not apply to procedures provided in multilateral agreernents concluded under the auspices ofWIPO relating to the acquisition or rnaintenance of intellectual property rights.
Article 6
Exhaustion
Far the purposes of dispute settlernent under this Agreement, subject to me provisions of Articles 3 and 4 nothing in this Agreerncnt shall be used to address the issue of the exhaustion of intellectual property rights.
Article 7
Objectives
The protection and enforcernent of intellectual property rights should contribute to the promotion of technological innovation and to the transfer and dissernination of technology, to the mutual advantage of producers and users of technological knowledge and in a manner conducive to social and economie welfare, and to a balance of rights and obligations,
Article 8
Principles
1. Mernbers rnay, in formulating or amending their laws and regulations, adopt measures necessary to protect public health and nutrition, and to prornote the public interest in sectors of vital importance to their socio-economie and technological development, provìded that such measures consistent with the provisions of this Agreernent.
2. Appropriate measures, provided that they are consistent with the provisions of this Agreernent, maybe needed to prevent the abuse of intellectual property rights by right holders or the resort to practìces which unreasonably restrain trade or adversely affect me international transfer of technology,
PARTII
STANDARDS CONCERNING THE AVAILABILITY, SCOPE AND USE OF INTELLECTUAL PROPERTY RIGHTS
SECTION 1: COPYRIGHT AND RELATED RIGHTS
Aticle 9
Relation lo the Berne Convention
1. Members shall comply with Articles 1 through 21 orme Berne Convention (1971) and the Appendix thereto. However, Members shall not have rights or obligations under this
Agreernent in respect of the rights conferred under Article Sbis of that Conventìon or of the rrights derived therefrom.
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Copyright protection shall extend to expressions and not 10 ideas, procedures, rnethods of operation or mathematical concepts as such.
Article lO
ComputerProgramsand Compilatìons ofData
1. Computer prograrns, whether in source or object code, shall be protected as literary works under the Berne Convention (1971).
2. Cornpilations of data or other material, whether in machine readable or other form, which by reason of the selection or arrangernent of their contents constitute intellectual creations shall be protected as such. Such protection, which shall not extend to the data or materia! itself, shall be without prejudice to any copyright subsisting in the data or material itself,
Artici Il Rental Rights
In respect of ar least computer prograrns and cinematographic works, a Member shall provide authors and their successors in tìue the right to authorize or to prohibit me cornmercial ren tal to the public oforiginals or copies of their copyright works. A Member shall be excepted irom this oblìgatìon in respect of cinernatographic works unless such rental has led io widespread copying of such works which is materially impairing the exclusive right of reproduction conferred in that Member on authors and their successors in title, In respect of computer programs, this obligation does not apply to rentals where the program itself is not the essential object of the rental.
Article 12
Term ofProtection
Whenever the term of protection of a work, other than a photographic work or a work of applied art, is calculated on a basis other than the Iife of a natural person, such terrn shall be no less than 50 years from the end of the calendar year of authorized publication, or, failing such authorized publication within 50 years from the making of the work, 50 years frorn the end of the calendar year of making.
Article 13
Limitationsand Exceptions
Members shall confine limitationsor exceptions to exclusive rights to certain specialcases which do notconflict witha normalexploitationof theworkand do not unreasonablyprejudice the legitimate interests of the right holder,
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Article 14
Protection 01Performers, Producers oj Phonograms (Sound Recordings) and Broadcasting Organizations
l. In respect of a fixation of their performance on a phonogram, performers shall have the possibility of preven ting the following acts when undertaken without their authorization: the fixation of their unfixed performance and the reproduction of such fixation. Performers shall also have the possibility of preventing the following acts when undertaken without their authorization: the broadcasting by wireless means and me cornmunication to the public of their live performance.
2. Producers of phonograms shall enjoy the righi to authorize or prohibit the dìrect or indirect reproduction of their phonograms.
3. Broadcasting organizations shall have the right to prohibit the following acts when undertaken without their authorization: the fixation, the reproduction of fixations, and the rebroadcasting by wireless means of broadcasts, as well as the cornrnunication to the public of television broadcasts of the same. Where Mernbers do not grant such rights to broadcasting organizations, they shall previde owners of copyright in the subject matter of broadcasts with the possibility of preventing the above acts, subject lo the provisions of the Berne Convention (1971).
4. The provisions of Article Il in respect of computer prograrns shall apply mutatis mutandis to producers of phonograms and any other right holders in phonograms as deter mined in a Mernbers's law. If on 15 April 1994 a Mernber has in force a systern of equìtable rernuneration of right holders in respect of the rental of phonograms, it may maintain such system provided that the comrnercial rental of phonograrns is not giving rise to the material impairment of the exclusive rights of reproduction of right holders,
5. The term of the protection available under this Agreement to perforrners and producers of phonograms shall last at least until the end of a period of 50 years cornputed frorn the end of the calendar year in which the fixation was made or the performance took place. The term of protection granted pursuant to paragraph 3 shall last far at least 20 years [rom the end of the calendar year in which the broadcast took place,
6. Any Member may, in relation to the rights conferred under paragraphs 1,2 and 3, provide for conditions, Iimitations, exceptions and reservations to the extent permitted by the Rome Convention. However, the provisions of Article 18 of the Berne Convention (1971) shall a1so apply, mutatis rnutandis, to the righ ts of performers and producers of phonograrns in phonograrns.
SECTION 2: TRADEMARRS
Article 15
Protectable Subject Matter
1. Any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other underuù<ings, shall be capable of constituting a trademark. Such signs, in particular words including personal names, letters, numerals, figurative elements and combinations of colours as weU as any combination of such signs, shall be eligible for registration as trademarks. Where signs are not inherentty capable of distinguishing tbe relevant goods or services, Members may make registrability depend Ort distinctiveness acquired through use. Members may require, as a condition of registration, that signs be visual1y perceptible.
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2. Paragraph 1 shall not be understood to prevent a Member from denying registration of a tradernark 00 other grounds, provided that they do not derogate from the provisions of the Paris Convention (1967).
3. Members may make registrability depend 00 lise. However, actual lise of a tradernark shall not be a condition far fìling an applìcatìon for registration. An application shall not be refused solely 00 the ground that intended lisehas not taken place before the expiry of a period of three years frorn the date of application.
4. The nature of the goods or services to which a tradernark ìs to be applied shall in no case forrn an obstacle to registration of the tradernark.
5. Members shall publish each tradernark either before it is registered or prornptly after ìt is registered and shall afford a reasonable opportunity far petitions to cancel the registration. In addition, Mernbers may afford an opportunìty for the registration of a tradernark to be opposed.
Article 16
Rights Conferred
l. The owner of a registered tradernark shall have the exclusive right to prevent all third parties not having the owner's consent from using in the course of trade identical or sirnilar signs for goods or services which are identical or sirnilar to those in respect of which the tradernark ìs registered where such use would result in a likelihood of confusion. In case of the lise of an identica! sign far identical goods or services, a likelihood of confusion shall be presumed. The rights described above shall not prejudice any existing prior rights, nor shall they affect the possibility of Mernbers rnaking rights available on the basis of use.
2. Article 6bisof me Paris Convention (1967) shall apply, mutatismutandis, to services. In determinig whether a trademark is well-known, Mernbers shall take account of the knowledge of me tradernark in the relevant sector of the public, including knowledge in the Mernber concerned which has been obtained as a result of the tradernark.
3. Article 6bis of the Paris Conventìon (1967) shall apply, mutatis mutandis, to goods or services which are not sirnilar to those in respect of which a tradernark is registered, provided that lise of that tradernark in relation to those goods or services would indicate a connection between those goods or services and the owner of the registered trademark and provided that the interests of the owner of the registered tradernark are likely to be damaged by such use.
Article 17
Exceptions
Members rnayprovide limited exceptions to the rights conferred by a trademark, such as fair use of descriptive terms, provided that such exceptions take account of the legitimate interest5 of the owner of the trademark and of third parties.
Artiete 18
Term 01Protection
Initial registration, and each renewal of registration, of a trademark shaH be for a term of no less than seven years. The registration of a trademark shall be renewable indefinitel)'.
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Article 19
Requirernent oJUse
1. Ii use is required to maintain a registration, the registration may be cancelled only after an uniterrupted period of at least three years of non-use, unless valid reasons based on the existence of obstacles to such lise are shown by the tradernarkowner. Circumstances arising independently ofthe will ofthe owner of the tradernark which constitute an obstacle to the lise of the tradernark, such as import restrictions on or other government requirernents for goods or services protected by the trademark, shall be recognized as valid reasons for non-lise.
2. When subject to me control of its owner, lise of a trademark by another person shall be recognìzed as lise of the tradcmark for the purpose of maintaining the registration.
Article 20
Other Requirements
The lise of a trademark in the course of trade shall not be unjustifiably encurnbered by specìal requirements, such as use with another trademark, lise in a special form or use in a manner detrimental to its capability to distinguish the goods or services of one undertaking from those of other undertakings. This will not preclude a requirernent prescribing the lise of the tradernark identifying the undertaking producing the goods or services along with, but without linking it to, the trademark distinguishing the specific goods or services in question of that undertaking
Article 21
Licensing and Assignment
Membersmay determine conditions on the licensingandassignrnentof tradernarks,it being understood that the cornpulsory licensing of trademarks shall not be perrnitted and that the owner of a registered trademark shall have the right to assign the tradernark with or without the transfer of the business to which the tradernark belongs,
SECTION 3: GEOGRAPHICAL INDICATIONS
Anicle 22
Protection ojGeographicaì Indications
1. Geographical indications are, for the purposes of this Agreement, indications which identifya good as originating in the territory of a Mernber, or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origino
2. In respect of geographical indìcations, Members shall provide the legal means for interested parties ro prevent:
(a) the lise of any means in the designation or presentation of a good that indicates or suggests tna: me good in question originates in a geographical area other than the true place of origin in a rnanner which misleads trre public as to the geographical erigin of the good;
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lObis of the Paris Convention (1967).
3. A Member shall, ex officio if its legislation so permits or at the request of an interested party, refuse or invalìdate the registration of a trademark which contains or consists of a geographical indicatìon with respect to goods not originating in the territory indicated, if lise of me indication in the tradernark for such goods in that Member is of such a nature as to rnislead the public as to the true place of origino
4. The protection under paragraphs 1, 2 and 3 shall be applicable against a geographical ìndication which, although literally true as to the territory, region or locality in which the goods originate, falsely represents to the public that the goods originate in another territory,
Article 23
Additional Protection for Geographical Indications for Wines and Spirits
1. Each Member shall provide the legal means for interested parties to prevent use of a geographical indication identifying wines for wines not originating in the place indicated by the geographical indication in question or identifying spirits for spirits not originating in the place indicated by the geographical indication in question, even where the true origin of the goods is indicated or the geographical indication is used in translation or accompanied by ex pressions such as "kind", "type", "style" "imitation" or the like."
2. The registration of a trademark for wines which contains or consists of a geographical indication identifying wines or for spirits which contains or .consists of a geographical indication identifying spirits shall be refused or invalidated, ex officio if a Mernber's legislation so permits or at the request of an interested party, with respeet to such wines or spirits not having this origino
3. In the case of homonymous geographical ìndications for wines, protection shall be accorded to each indication, subject to the provisions of paragraph 4 of Article 22. Each Mernber shall determine the practical conditions under which the homonymous indications in question will be differentiated from each other, taking into account the need to ensure equitabìe treatrnent of the producers concemed and that consumers are not misled.
4. In order to facilitate the protection of geographical indications for wines, negotiations shal1 be undertaken in the Council for TRIPS concerning the establishment of a rnultilateral system of notification and registration of geographieal indications for wines eligible for protection in those Members participating in the system.
Article 24
Jnternational Negotiations; Exceptions
1. Mernbersagree to enter intonegotiations aimed at increasing the protectionof individuaI geographical indications under Article 23. The provisions of paragraphs 4 through 8 below shall fiot be used by a Member to refuse to condue! negotations or to conclude bilatera! or multilateral agreements. In the context of such negotiations, Members shall be willing to consider the continued applicability ofthese provisions to individuaI geographical indications whose lise was the subjecf of such negotiations.
2. The CounciI for TRIPS shall keep under review the application of me provisions cf this Section.; the first such review shall take pIace within two years of the entry ioto force of the \VTO Agreement. Any matter affecting the compliance with the obligations under these
4;:-.ro:wit.l-wunding th.e [lI'31sentcnce of A.'"tic!e 42, ~iembc:" may. with respect to thes.eobligatJCC5, i.r:stead previde far cnfor.:::::lent by adrr..inistrative Action.
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provisions may be drawn to the attention of the Council, which, at the request of a Mernber, shall consult with any Member or Members in respect of such rnatter in respect of which ii has not been possible to find a satisfactory solution through bilateral or plurilateral consultations between the Members concemed. The Council shall take such action as may be agreed to facilitate the operation and further the objectives of this Section.
3. In implernenting this Section, a Member shall not dirninish the protection of geographi cal indications that existed in that Member imrnediately prior to the date of entry into farce of the WTO Agreement.
4. Nothing in this Section shall require a Member to prevent continued and similar lise of a particular geographical indication of another Member identifying wines or spìrits in connection with goods or services by any of its nationals or domiciliaries who have used that geographical indìcation in a continuous rnanner with regard to the same or related goods or services in the territory of that Mernber either Ca) for at least lOyears preceding 15 April, 1994 or (b) in good faith preceding that date.
5. Where a tradernark has been applied for or registered in good faith, or where rights to a tradernark have been acquired through lise in good faith either:
(a) before the date of applicatìon of these provisìons in that Member as defined in Part VI; or
(b) before the geographical indication is protectcd in its country of origin; measures adopted to implernent thìs Section shall not prejudice eligibility far or the validity of the registration of a tradernark, or the right to use a tradernark, on the basis that such a trademark is identical with, or similar to, a geographical indication,
6. Nothing in this Section shall require a Member to apply its provisions in respect of a geographical indication of any other Member with respect to goods or services for which the relevant indication is identical with the term custornary in common language as the common name for such goods or services in the territory of that Member. Nothing in this Section shall require a Member to apply its provisions in respect of a geographical indication of any other Member with respeet to products of the vine for which the relevant indication is identical with the custornary name of a grape variety existing in the territory of that Member as of the date of entry into force of the WTO Agreement.
7. A Member may provide that any request made under this Section in connection with the lise or registration of a tradernark must be presented within rive years after the adverse lise of the protected indication has become generally knov..'n in that Member or after the date of registration of the trademark in that Member provided that the trademark has been published by that date, if such date is earlier than the date on which the adverse lise became generally known in that Member, provided that the geographical indication is not used or registered in bad faith.
8. The provisions of this Section shal1 in no way prejudice the right of any person to lise, in the course of trade, that person's name or the name of that person's predecessor in business, exeept where sueh name is used in sueh a manner as to mislead the public.
9. There shall be no obligation under this Agreement to proteet geographical indications which are notorcease to be protected in their country of origin, or which have fallen into disuse in that country.
SECTION 4: INDUSTRIAL DESIGNS Article 25
Requirements for Protection
1. Members shaH provide for the protection of independent1y ereated industriaI dcsigns that are new or originaI. Members may provide that designs are not new or originaI if they do not significant1y differ from known designs or combinations of known design fearurcs.
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Members rnay previde that such protection shall not extend to designs dictated essentially by technical or functìonal considerations.
2. Each Mernber shall ensure that requirements for securìng protectìon for textile designs, in particular in regard to any cost, examinationor publication, do not unreasonably impair the opportunity to seek and obtain such protection, Mernbers shall be free to meet this obligatìon through industriai design law or through copyright law,
Article 26
Protection
1. The owner ofa protected industrial design shall have the right to prevent third parties not having the owner's consent from rnaking, selling or importing articles bearing or ernbodying a design which is a copy, or substantially a copy, of the protected design, when such acts are undertaken for commerciai purposes.
2. Members may previde lirnited exceptions to the protection of industriaI designs, provided that such exceptions do not unreasonably conflict with the normal exploitation of protected industrial designs and do not unreasonably prejudice the legitimate interests of the owner of the protected design, taking account of the Iegitirnate interests of third parties,
3. The duration of protection available shall amount to a least lO years.
SECTrON 5: PATENTS
Article 27
Patentable Subject Matter
1. Subject to the provisions of paragraphs 2 and 3, patents shall be available for any inventions, whether products or processes, in all fields of technology 1 provided that they are new, involve an inventive step and are capable of industriai application.' Subject to paragraph 4 of Article 65, paragraph 8 of Article 70 and paragraph 3 of this Article, patents shall be available and patent rights enjoyable without discrirnination as to the pIace of invention, the field of technology and whether products are irnported or locally produced.
2. Members may exclude from patentability inventions, me prevention within their territory of the commercial exploitation of which 1S necessary to proteet ordre public or morality, including to proteet hurnan, anirnal or plant life or health or to avoid serious prejudice to the environment, provided that such exclusion is not made merely because me exploitation is prohibited by their law.
3. Mernbers may also exclude from patentability: (a) diagnostic, therapeutic and surgical methods for the treatrnent of hurnans or animals; (b) plants and anima1s other than micro-organisms, and essentially biological processes
for the production of plants or animals other than non-biological and microbiological processes. However, 11embers shall provide for the protection ofplant varieties either by patents or by an effective sui generis system or by any combination thereof. The provisions of this subparagraph shall be reviewed four years after the date of entry into force of the \VTO Agreemen t.
Article 28 Rights Conferred
L A patent shall confer on its owner the following exclusive rights:
'Por the pu.rposez ofthiA Article. the ten:nal "invçnt\ve ncp" !lI1d "e.apabde of i:odu"trW a?pli~tion· n".JI.y be:dc:==i by s ~ber to be ,;tnooy::IlOUS wir.."l th.e t.enns "nan-obviou.s· !md."useful" respectively.
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(a) where the subject maner of a patent is a product, to prevent third parties not having the owner's consent from the acts of: rnaking, using, offering for sale, selling, or import ing" for these purposes that product;
(b) where the subject mauer of a patent is a process, to prevent third parties not having the owner's consent from the act of using the process, and [rom the acts of: using, offer ing for sale, selling, or irnporting for these purposes at least the product obtained directly by that processo
2. Patent owners shall also have the right toassign, or transferby succession, the patent and to conclude licensing contracts.
Artide 29
Condùions on Patent Appiicants
1. Mernbers shall require that an applicant for a patent shall disclose the invention in a manner sufficiently clear and complete far the invention to be carried out by a person skilled in the art and may require the applicant to indicate the best mode for carrying out the invention known to me inventor at the filing date or, where priority is claimed, at the priority date of the application,
2. Members may require an applìcant Ior a patent to previde information concerning the . applicant's corresponding foreign applications and grants.
Article 30
Exceptions to Rights Conferred
Mernbers may provide Iirnited exceptions to the exclusive rights conferred by a patent, provided that such exceptions do not unreasonably conflict with a normal exploìtation of tbe patent and do not unreasonably prejudice the legitimate interests of the patent owner, taking account of the legitimate interests of third parties,
Article 31
Other Use Without Authorization ofthe Righi Holder
Where the law of a Member allows for other use? cf the subject mauer of a patent without the authorization of the right holder, including use by the governrnent or third parties authorized by the government, the follcwing provisions shall be respected:
(a) authorization of such lise shall be considered 00 its individual merits; Cb) suchlisemay only be permitted if, prior to suchuse,theproposeduserhas madeefforts
to obtain authorization from the right holder on reasonable comrnercial terms and conditions and that such efforts have not been successful within a reasonable period of lime. This requirement may be waived by a Member in the case of a national emergency or other circumstances of extreme urgency or in cases of public noo commerciaI use. In situations of national emergency orother circurnstancesof extreme urgency, the right holder shal1, nevertheless, be notified as soan as reasonably practicable. In the case of public non-commerciaI use, where the govemment or contractor, without making a patent search, knows or has demonstrable grounds to know mat a valid patent is or will be used by or for the govemrnent, me right holder shall be informed prompt!y;
fThis tight, like al! otber rig,htsconferred under th.is Agreement in n::speet of thc u.se, we. i."n'pCrtation or othet d.istributioo of gOOl.:Ùl. Ùl subject to the provisions or Artide 6.
'''O'.her usc" rofers to use other thsn that allowed u.n.da Miele 30.
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(c) the SCOpe and duration of such lise shall be limited to the purpose for which it was authorized, and in thecase of serni-conductor technology shall only be for public non.. comrnercial lise or to rernedy a practice deterrnined after judicial or adrninistrative process to be anti-cornpetitive:
(cl) such lise shall be non-exclusive; (e) such lise shall be non-assignable, except with that part of the enterprise or goodwill
which enjoys such lise; (j) any such lise shall be authorized predominantly for the supply of the domestic market
of the Member authorizing such lise; (g) authorization for such lise shall be liable, subject to adequate protection of the
legitirnate interests of tbc persons so authorized, to be terminated if and when the circumstances which led to it cease to exist and are unlikely to recur. The competent authority shall have theauthority to review, upon motivated request, the continued existence of thesecircumstances;
(h) the right holder shall be paid adequate remuneration in me circumstances of each case, taking into account the economie value of the authorization;
(i) the legal validity of any decision relating to the authorization of such lise shall be subject to judicial review or other independent review by a distinct higher authority in that Member;
0) any decision relating to the rernuneratìon provided in respect of such lise shall be subject to judicial review or other independent review by a distinct higher authority in that Member
(k) Mernbers are not obliged to apply the conditions set forth in subparagraphs (b) and (f) where such use is permitted to rernedy a practice determined after judicial or administratìve process to be anti-cornpetìtìve. The need to correet anti-competitive practices may be taken into acount in deterrnining the amount of remuneration in such cases, Cornpetcnt authorities shall have the authority to refuse terrnination of authori zation if and when the conditions which led to such authorization are likely to recur;
(l) where such use is authorized topermit the exploitation of a patent (the second patent") which cannot be exploited without infringing another patent eme first patent"), the following additional conditions shall apply:
(i) the invention clairned in the second patent shall involve an important technical advance of considerable economie significance in relation to the invention claimed in the first patent;
(ii) the owner of the first patent shaU be entitled to a cross-licence on reasonable terms to use the inventioo claimed in the second patent; and
(iii) the use authorìzed in respeet of me first patent shall be non-assignable except with the assignrnent of the second patent.
Article 32
Revocalion/Forfeiture
An opporrunity for judicial review of any decision to revoke or forfeit a patent shall be available.
Article 33
Term ojPorotection
The term of proteetion available shall nOl end before the expiration of a period of twenty year5 counted from the filing date.8
~It is u.11dcntoodt.,h..at those Memì:x:r'swÌ'jc.h do nO{ nave a s)"5temor origirul grlll1! may provide Wt thc t.e'::'r::J of?rorection shal! be cctrlpu::ed fma: ",'lemi.-:g date in tbc:systt::mof origiruù gran.t.
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Article 34
Process Patents: Burden 01 Proof
1. Far the purposes of civil proceedings in respect of the infringernent of the rights of the owner referred to in paragraph 1(b) of Article 28, if the subject matter of a patent is a process for obtaining a product, the judicial authorities shall have the authority to arder the defendant to prove that me process to obtain an identical product is different from the patented processo Therefore, Mernbers shall previde, in at least one of the following circumstances, that any identica! product when produced without the consent of the patent owner shall, in the absence of proof to the contrary, be deemed to have been obtained by the patented process:
(a) if the product obtained by the patented process is new; (b) if there is a substantial likelihood that the identical product was made by the process
and the owner of the patent has been unable through reasonable efforts to determine the process actually used.
2. Any member shall be free to previde that the burden of proof indicated in paragraph l shall be on tbc alleged infringer only if the condition referred to in subparagraph (a) is fulfilled or only if the condition referred to in. subparagraph (b) is fulfilled,
3. In tbc adduction of proof to the contrary, the legitirnate interests of defendants in proteeting their manufacturing and business secrets shall be taken into account.
SECTION: 6 LAYOUT-DESIGNS (TOPOGRAPHIES) OF INTEGRATED CIRCUITS
Article 35
Relation to the IPIC Treaty
Mernbers agree to previde protection ro me layout-designs (topographies) of integrated circuits (referred to in this Agreernent as "layout-designs") in accordance with Articles 2 through 7 (other than paragraph 3 of Article 6), Article 12 and paragraph 3 of Article 16 of the Treaty on Intellectualy Property in Respect of Integrated Circuits and, in addition, to comply with the following provisions,
Article 36
Scope of the Protection
Subject to provisions of paragraph 1 of Article 37, Mernbers shall consider unlawful the following acts ìf performed without the authorization of the right holder:" irnporting, selling, or otherwise distributing for cornrnercial purposes a protected layout-design, an integrated circuit in which a protected Iayout-design is incorporated, or an article incorporating such an integrated circuit only in so far as it continues to contain an unlawfully reproduced layout design.
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Article 37
Acts No! Requiring the Authorization of the Righi Holder
1. Notwithstandìng Article 36, no member shall consider unlawful the perfornance of any of the acts referred to in that Article in respect of an integrated circuit incorporating an unlawfully reproduced Iayout-design or any article incorporating such 'an integrated circuir where the person performing or ordering such acts did not know and had no reasonable ground to know, when acquirìng the integrated circuit or article incorporating such an integrated circuit, that it incorporated an unlawfully reproduced Iayout-design, Mernbers shall previde that, after the rime that such person has received sufficient notice that the layout-design was unlawfully reproduced, that person may perform any of the acts with respect to the stock on hand or ordered before such time, but shall be liable to pay to the right holder a surnequivalent to a reasonable royalty such as would be payable under a freely negotiated licence in respect of such a layout-design.
2. The conditions set aut in subparagraphs (a) through (k) of Article 31 shall apply mutatis mutandis in the event of any non-voluntary licensing of a Iayout-design or of its lise by or far the governrnent without me authorization of the right holder.
Article 38
Term ofProtection
1. In Mernbers requiring registration as a condition of protection, the term of protection of layout-designs shall not end before the expiration of a period of lO yearscounted from the date of filing an application for registration or from the first commerciai exploitation wherever in the world ìt occurs.
2. In Members not requiring registration as a condition for protection, layout-designs shall be protected for a term of no less than l O years from the date of the first commerciai exploitation wherever in me world it occurs.
3. Notwithstanding paragraphs l and 2} a mernber may, previde that protection shall lapse 15 years after the creation of me layout-design.
SECTION 7: PROTECTION OF UNDISCLOSED IÌ""FORJ\1ATION
Article 39
l. In the course of ensuring effective protection against unfair cornpetition as provided in Article lObisof me Paris Convention (1967), Mernbersshall protect undisclosed information in accordance with paragraph 2 and data subrnitted to governrnents or governmental agencies in accordance with paragraph 3.
2. Natural and lcgal persons shall have the possibility of preventing information lawfully within their control from being dìsclosed to, acquired by, or used by others without their consent in a manner eontrary to honest comrnercial practices10 so long as such information:
(a) is secret in the sense mat it is nat, as a body or in theprecise configuration and assembly of its eomponents, generally known among or readily accessible to persons within the circles that nonnally deal with the kind of information in question;
(b) has commerciaI value because it is secret; and (c) has been subject to reasonable steps under the circurnstances, by the persoo la\vfuIly
in contraI of the infonnation, to keep it secreL
lOfor the purp09C of th.is provision, "a ma.n.~r contrary to honest commercia.! pnctices" shall mean at [east pr:1ctices mch as breac.."l of c..."1'::::-lct, breach. of confidence and inducement to breach, and includcs tbc acquisition of undisclosed infornution by L~ird par..:c.swho bew, or were gro:ssly nc::gl igent in failìr.g to mow. thatlruch practice3 were in,volved il"l L.\.x: acquisiticn.
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or of agricultural chemical products which utilize new chernical entìties, the submission of undìsclosed test or other data, the origination of which involves a considerable effort, shall protect such data against unfair commercia! lise. In addition, mernbers shall protect such data against disclosure, except where necessary to protect the public, or unless steps are taken to ensure that the data are protected against unfair comrnercial use,
SECTION 8: CONTROL OF ANTI~COMPETITlVE PRACTICES IN CONTRACTUAL LICENCES
Article 40
L Mernbers agree that some licensing practices or conditions pertaining to intellectual property rights which restrain competition may have adverse effeets on trade and rnay impede the transferand dissernination of technology,
2. Nothing in this Agreement shall prevent Members from specifying in their legislation licensing practices or conditions that may in particular cases constitute an abuse of intellectual property rights having ao adverse effect 00 competition in the relevant market. As provided above, a Mernber may adopt, consistently with the other provisions of this Agreement, appropriate measures to prevent or control such practices, which may include for example exclusive grantback conditions, conditions preventing challenges to validity and coercive package licensing, in the light of the relevant laws and regulations of that mernber.
3. EachMember shall enter, upon request,into consultations with anyother Member which has cause to believe that an intellectual property right owner that is a national or domiciliary of the Member to which the request for consultations bas been addressed is undertaking practices in violation of the requesting Mernber's laws and regulations 00 the subject matter of this section,and which wishesto securecompliance withsuch legislation, without prejudice to any action under the law and to the full freedom of an ultimate decision of either Member, The Member addressed shall accord full and sympathetic consideration to, and shall afford adequate opportunity far, consultations with the requesting Mernber, and shall cooperate through supply of publicly available non-confidential information of relevance to the matter in question and of other information available to the Mernber, subject to dornestic law and to the conclusion of mutually satisfactory agreernents concerning the safeguarding of its confidentiality by the requesting member.
4. A !\1ember whose nationals or domieiliaries are subjeet to proceedings in another Member concerning alleged violation of that other member' s laws and regulations on the subject matter of this secrion shal1, upon request, be granted an opportunity for consultations by the other Member under the same conditions as those foreseen in paragraph 3.
PARTIU
ENFORCE}..1ENT OF INTELLECTUAL PROPERTY RIGHTS
SECTION l: GENERAL OBLIGATIONS
Article 41
l. Membersshall ensure that enforcementprocedures as specified in this Pan are available under mei!law so as to permit effective action against any act of infringement of intellectual property rights covered by this Agreement, including expeditious remedies to prevent infringements and remedies which eonstitute a deterrent to further infringements. These
procedures shaH be applied in such a manner as to avoid the creation of barriers to legitimate trade and to provide for safeguards against their abuse.
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67/78 2. Procedures concerning the enforcernent of intellectual property rights shall be fair and
equitable. They shall not be unnecessarily cornplicated or costly, or email unreasonable tìrne Iirnits or unwarranted delays,
3. Decìsions on the merits of a case shall preferably be in writing and reasoned. They shall be made available al least to the parties to the proceeding without undue delay. Decisions on the rnerits of a case shall be based only on evidence in respect of which parties were offered the opportunity to be heard.
4. Parties to a proceeding shall have an opportunity for review by a judicial authority of fìnal administrative decìsìons and, subject to jurisdictional provisions in a Mernber's law con cerning the importance of a case, of at least the legal aspects of initial judicial decisionson the rnerits of a case. However, there shall be no obligation to provide an opportunity for review of acquittals in crirnìnal cases.
5. It 15 understood tna; thìs Part does not create any oblìgation to put in place a judicial system far the enforcement of intellectual property rights distinct from that for the enforce ment of law in general, nor does it affect the capacity of Members to enforce their law in general. Nothing in this Part creates any obligation with respect to the distribution of resources as between enforcernent of intellectual property rights and the enforcementof law in generalo
SECTION 2: CIVIL AND ADMINISTRATI\!E PROCEDURES AND RE~1EDIES
Article 42
Fair and Equitable Procedures
Mernbers shall make available to right holders" civil judicial procedures concerning the enforeement of any ìntellectual property right covered by this Agreement. Defendants shall have the right to written notice which is timely and contains sufficient detail, including the basis of the clairns. Parties shall be allowed to be represented by independent legal counsel, and procedures shall not impose overly burdensome requirernents conceming mandatory personal appearances, AH parties to such procedures shall be duly entitled to substantiate their claims and to present ali relevant evidence, The procedure shall previde a means to identify and protect confidential information, unless this would be contrary to existing constitutional requirernents.
Article 43
Evidence
1. The judicial authorities shall have the authority, where a party has presented reasonably available evidence sufficient to support its claims and has specified evidence relevanl Lp substantiation of its claims which lies in the eontroI of the opposing party, to arder that thi.) evidence be produced by the opposing party) subjeet in appropriate eases to eonditions which ensure me protection of eonfidential information.
2. In cases in which a party to a proceeding voluntarily and without good reasan refuses acces to, or otherwise does not provide necessary information within a reasonable period, or significantly impedes a procedure relating to an enforcement aetion, a Member may accord judicial authorities the authority to make preliminary and final determinations, affinnaùve or negative, on the basis of the informatioo presented to them, including the complaint or the allegation presented by the party adversely affeeted by the denial of access to informatioD, subject to providing the parties an opportunity to be heard on the allegations or evidcncc.
llFor tbc putp<Jll.e of t.hls Parto the term "righi hcldd' includcs fedenltiom $.lldassoçiations ba.ving leg3l SU-'lding io ~3ert suc.h rig..~ts.
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4. Where provisional rneasures have been adopted inaudita altera parte, the parties affected shall be given notice, without delay after the execution of the measures at the latest. A review, including a right to be heard, shall take piace upon request of the defendant with a view to deciding, within a reasonable period after the notification of the rneasures, whether these measures shall be modified, revoked or confirrned.
5. The applicant may be required to supply other information neeessary for the idenfica tion of the goods concerned by the authority that will execute the provisional measures.
6. Without prejudice to paragraph 4, provisional measures taken on the basis of para graphs 1 and 2 shall, upon request by the defendant, be revoked or otherwise cease to have effect, if proceedings leading to a decision on the merits of the ease are Dat initìated within a reasonable period, to be deterrnined by the judicial authority ordering the rneasures where a Member' s law so permits or, in the absenceof sueha determination, not to exceed 20 working days or 31 calender days, whichever is the longer.
7. Where the provisional rneasures are revoked or where they lapse due to any aet or ornission by the applicant, or where it ìs subsequently found that there has been no infringemen t or threat of infringernent of an intellectual property right, the judicial authorìtìes shall have the authority to order the applicant, upon request of the defendant, to previde the defendant appropriate cornpensation for any injury caused by these measures.
8. To the extent that any provisional rneasure can be ordered as a result of adrninistratìve procedures, such procedures shall conforrn to principles equivalent in substance to those set forth in this Section.
SECTION 4: SPECIAL REQUIRErvillNTS RELATED TO BORDER :fv1EASURES12
Article 51
Suspension ofRelease by Customs Authorities
Members shall, in conforrnity with the provisions set aut below, adopt procedures" to enable a right holder, who has valid grounds for suspecting that the importation of counterfiet tradernark or pirated copyright goods" may take place, to lodge an application in writing with cornpetent authorities, adrninistrative or judicial, for the suspension by the customs authorities of the release into free circulation of such goods. Members rnay enable such an application to be made in respect ofgoods which involve other infringernents of intellectual property rights, provided that the requirements of this Section are met. l\1embers may also provide for corresponding procedures conceming the suspension by the custorns authorities of the realese of infringing goods desrlned for exportation from their territories.
l'Whcre li. Member h&.s dismsntled subsW'ltially ali controb Cf\!eT mavement of goods acro,! it!l borde~ with another Member with which it fOImllpart of li. custorns union, it. shall oot be rcquired to mpply theprovi3ions of this Section Ilt that 'oor&::r.
"h i.s undentood !hat thereshall beno ob! igation to apply such proecdurcs to imporu of good.s put on the markct in a."1ot.~er country by or with tbe con.sent of the right 001001', or to goods in tl1lnSist.
wFor the purposes of th.i$Agrccment:
(o) "c.oun1erfeit trademark goocis" shall mean any goocls. ìncludìng packaging, beuing withoot Iluilioriz.atian Iltndems.rk which il identica! to the tradeII11U'k val id!y regìstered in respect of such gOOÒ3. or which cannot bedistinguished in itsellsentW aspeet:l &oro such li. ttll.demarlc.. a.ndw hich thereby infringes thc right,s of tbc: òWnef of thetrademark in questian u.nder the la ...... of the country' of importatian; .
(b) "pirated çopyrighì &oods".hall mean &.Ily &oQtÌ$which lU"e c.opie3 made without th:::~t ofthe rig.hthalder or peroon duly authorized by t.1,ç right holder in the country or production md which are madc dìrectly or indirectly tram U1 articlc wbere tbcmaking of that copy wcu1d h.ivc constitllted an infringemcnt oC la copyright or a rdated right under tbc law oC tbc country or importation.
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Artic!e 44
Injuctions
l. The judicial authorities shall have the authority to arder a party to desist from an infringernent, inter alia to prevent the entry into the channels of commerce in their jurisdiction of imported goods that involve the infrigernent of an intellectual property right, imrnediately after custorns clearance of such goods. Members are not obliged to accord such authority in respect of protectcd subject matter acquired or ordered by a person prior to knowing or having reasonable grounds to know that dealing in such subject matter whould entail the infringement of an intellectual property right,
2. Notwithstanding the other provisions of this Partand provided that the provisions of Part II specifically addressing liseby governments, or by third parties authorized by a government, without the authorization of the right holder are complìed with, members may lirnit the rernedies available against such use to payment of rernuneration in accordance with subpara graph (h) of Article 31. In other cases, the rernedies under this Part shall apply or, where these rernedies areinconsistent with a Mernber's law,declaratory judgmentsandadequatecompen sation shall be available.
Article 45
Damages
1. The judicial authorities shall have the authority to order the infringer to pay the right : holder damages adequate to compensate for the injury the right holder has suffered because of an infringernent of that person 's intellectual property right by an infringer who knowingly, or with reasonable grounds to know, engaged in infringing activity.
2. The judicial authorities shall also have the authority to arder the infringer to pay the right holder expenses, which may include appropriate attorney' s fees. In appropriate cases, Mernbers rnay authorize the judicial authorities ro order recovery of profits and/or payrnent of pre-established damages even where the infringer did not knowingly, or with reasonable grounds to know, engage in infringing activity.
Article 46
Other Remedies
In order to create an effective deterrent to ìnfringemeru, the judicial authorities shall nave the authority toorder that goods that they have Iound to be infringing be, without compensa tion of any san, disposed of outside the channels of commerce in such a manner as to avoid any harm caused to the right holder, or, unless this would be contrary to existing constitutional requirernents, destroyed. The judicial authoritìes shall also have the authority to order that materials and implements the predominant lise of which has been in tbe creation of the infringing goods be~ without compensation of any SOft, disposed of outside the channels of commerce in such a manner as to minimize the risks of further infringements. In considering such requests, the need for proportionality between the seriousness of the infringement and tbe remedies ordered as well as the interests of third parùes shall be taken into account In regard to conterfeit trademark goods, the simple remava! of the trademark unlwafuHy affixed shall not be sufficient, other than in exceptional cases, to pennit release of the goods into the channels of comrnerce.
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Righl ofl nformation
Members may previde that the judicial authorities shall have the authority, unless this would be aut of proportion to me seriousness of the infringement, to arder the infringer to inform the right holder of the identity of third persons involved in the production and distribution of the infringing goods or services and ot their channels of distribution.
Article 48
lndemnification ofthe Defendant
1. The judicial autborìties shall bave the authority to arder a party at whose request rneasures were taken and who has abused enforcement procedures to previde to a party wrongfully enjoined or restrained adequate compensation for the injury suffered because of such abuse. The judicial authorities shall a150 have the authority to order the applicant to pay the defendant expenses, which may include appropriate attorney's fees.
2. In respect of me adrninistration of any law pertaining to the protection or enforcernent of intellectual property rights, Members shall only exernpt both publie authorities and officials from liability to appropriate rernedial rneasures where actions are taken or intended in good faith in the course of the administration of that law.
Article 49
Administrative Procedures
To the extent that any civil remedy can be ordered as a result of admìnistative procedures on the rnerits of a case, such procedures shall conforrn to principles equivalent in substance to those set forth in this Section.
SECTION 3: PROVISIONAL MEASURES
Article SO
1. Thejudicial authorities shall have theauthority to arder prornptand effective provisional measures:
(a) to prevent an infringernent of any intellectual property right from occuring, and in particular to prevent the entry into the channels of cornrnerce in their jurisddiction of goods, including imported goods irnrnediately after custorns clearance;
(b) to preserve relevant evidence in regard to the allged infringernent,
2. The judicial authorities shall have the authority to adopt provisional measures inaudita altera parte where appropriate, in particular where any delay is likely to cause irreparable harrn to the right holder, or where there is a demonstrable risk of evidence being destroyed.
3. The judicial authorities shall have the authority to require the applicant to previde any reasonably available evidence in arder to satisfy thernselves with a sufficient degree of
certainty that the applicant is the right holder and that me applicant's right is being infringed or that such ifnringement is imminent, and to order the applicant to provide a security or equivalent assurance sufficient to protect the defendant and to prevent abuse.
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Article 52
Application
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Any right holder initìating 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 thern readily recognizable by the customs authorities. The cornpetent authorities shall inforrn the applicant within a reasonable period whether they have accepted the application and, where determined by the cornpetent authorities, the period for which the custorns authorities will take action,
Article 53
Security or Equivalent Assurance
1. The cornpetent 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, Iayout-designs or undisclosed infcrmation into free circulation has been suspended by customs authorities on the basis of a decision other than by a judicial or other indpendent 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, me owner, importer, or consignee ofsueh goods shall be entitled to their release on the posting of a security in an arnount sufficient to protect the right holder for any infringernent.Payment of such security shall not prejudice any other rernedy 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 periad of lime.
Article 54
Notice ofSuspension
The importer and the applicant shall be promptly notified of the suspension of the release of goods according to Article 51.
Article 55
Duration ofSuspension
If, within a period not exceeding lO working days after the applicant has been served notice of the suspension, the custorns authorities have not been informed that proceedings leading to a decision on tbe merits of me case have been initiated by a party other than the defendant, or that the duly empowered authority has tak.en provisional measures prolonging the suspension of the release of the goods, the goods shall be released, provided Ù1at alI other conditions for importation or exportation have been complied with; in appropriate cases, this time-limit may be extended by another lO working days.lfproceedings leading to a decision on tbe merits of the case have been initiated, a review, inc1uding a right to be heard, shall take pIace upon request of the defendant with a view to deciding, within a reasonable period, whether these
measures shaH be modified, revoked or confirmed. Notwithstanding the above, where the suspension of the release of goods is earried out or eontinued in accordance with a provisional judicial measure, the provisions of paragraph 6 of Article 50 shall apply.
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Article 56
lndemnìfication ofthe Importer and oj the Owner of the Goods
Relevant authorities shall have the authority to order the applicant to pay the irnporter, the consignee and the owner of the goods appropriate cornpensation for any injury caused to them through the wrongful detention of goods or through the detention of goods released pursuant to ..Anicle 55.
Article 57
Righi ofInspection and Information
Withoutprejudice to the protection ofconfidential informaition, Members shall previde the eompetent authorities the authority to give the right holder sufficient opportunity to have any goods detained by the custorns authorities inspected in order to substantiate the right holder's clairns. 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 rnade 00 the merits of a case, Mernbers may previde the cornpetent authorities the authority to inforrn the right holder of the narnes and addresses of the consignor, the irnporter and the consignee and of the quantity of the goods in questiono
Anicle 58
Ex Officio Action
Where Mernbers require cornpetent authorities to act upon their own initiative and to suspend the release of goods in respect of which they have acquired primafacie evidence that an intellectual property right is being infringed:
Ca) the cornpetent authorities may at any time seek from the right holder any information that may asssist thern to exercise these powers;
(b) the importer and the right holder shall be prornptly notified of the suspension. Where the importer bas lodged an appeal against the suspension with the cornpetent authori ties, the suspension shall be subject to the conditions, mutatis mutandis, set out at Article 55;
Cc) Members shall only exernpt both public authorities and officials frorn liability to appropriate rernedial rneasures where actìons are taken or intended in good faith,
Artic!e 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, cornpetent authorities shall have the authority to order the destruetion or disposal of infringing goods in accordance with tbe prineiples set out in Article 46. In regard to eonterfeit trademark goods, the authorities shall not allow the re-exportation of the infringing goods in an unaltered state or subject mem to a different cilstoms procedure, other than in exeeptional circumstatnees.
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Article 60
De Minimis Imports
Members rnay exclude from the application of the above provisions srnall quantities of goods of a non-cornmercial nature contained in rravellers' personal luggage or sent in srnall consignrnents.
SECTION 5: CRI~1INAL PROCEDURES
Article 61
Mernbers shall previde for crirninal procedures and penalties to be applied at least in cases of wilful trademark counterfeiting or. copyright pìracy 00 a commerciai scale. Remedies available shall include imprisonrnent and/or monetary finessufficient toprevide a deterrent, consistently with the level of penalties applied for crimes of a corresponding gravity, In appropriate cases, rernedies available shall also include the seizure, forteiture and destruction of the infringing goods and ofany materials and irnplernents the predcminant lise of which has been in the cornrnission of the offence. Mernbers rnay previde for crirninal prodedures and penaltics to be applied in other cases of infringernent of intellectual property rights, in particular where they are committcd wilfully and on a commerciai scale.
PARTIV
ACQUISITION AND MAINTENANCE or INTELLECTUAL PROPERTY RIGHTS AND RELATED INTER-PARTE5 PROCEDURES
Article 62
l. Members may require, as a condition of the aquisition or maintenance of the intellectual property rights provided Ior under Sections 2 through 6 ofPart II, compliance with reasonable procedures and forrnalities. Such procedurcs and forrnalities shall be consistent with the provisions of this Agreernent.
2. Where the acquisition of an intellectual property right is subject to the right being granted or registered, Mernbers shall ensure that the procedures for grant or registration, subject to compliance with the substantive conditions far acquisition of the right, perrnit thc granting or registrarion of the right within a reasonable period of time so as to avoid unwarranted curtailrnent of the period of protcction.
3. Article 4 of the Paris Convention (1967) shall apply mutatis mutandis to service marks. 4. Procedures concerning the acquisition or mairuenance of intellecrual property rights
and, where a Mernber' s law provides for such proccdures, administrative revocationand inter partes procedures such as opposition, revocation, cancellation, shall be governed by the generai principles set aut in pragraphs 2 and 3 of Artide 41.
5. Final adrninistrative decisions in any 01' 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 previde an opportunity for such review of decisions in cases of unsuccessful opposition or administrative revocation, providcd that the grounds far such procedures can be the subject of invalidation procedures.
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PARTV
DISPUTE PREVENTION AND SETTLE~lEi'~l
Article 63
Transparency
1. Lawsand regulations, and final judicial decisions and adrninistrative rulings of generai application, made effectivc by a Mernbcr pcrtaining to the subject rnatter of this Agrcemcnt (the availability, scope, acquisition, enf'orcement and prevention of the abuse 01' intellectual property rights) shall be published, or where such publication is not pracucable made publicly available, in a national language. in such a manner as to enable governmcnts and right holders to become acquainted with thern. Agreements concerning the subject matter of'this Agreemcnt which are in farce between the government or a govemrnental agency of a Mernber and the government or a govemmental agency of another Mernber shall also be published,
2. Members shall notify the laws and regulations referred to in paragraph 1 to the Council for TRIPS in arder to.assist that Council in its review of the operation of this Agreernent. The Council shall atternpt to rninimìze the burden on Mernbers in carrying aut this obligation and rnay decide to waive the obligation to notify such laws and regulations directly to the Council if consultaticns with WIPO 00 the establishment of a comrnon register containing these laws and regulations are successful. The Council shall also considcr in this connection any acrion required regarding notifications pursuant to the obligarìons under this Agreernent sternming frorn the provisions of Article Ster of the Paris Convention (1967).
3. Each Mernber shall be prepared to supply, in response to a written request frorn another Mernber, information of the sort referred to in paragraph 1. A Mernber, having reason to believe that a specific judicial decision or adrninrstrative ruling or bilateral agreernent in the area of intellectual property rights affects its right 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 bilatera! agreernents.
4. Nothing in paragraph 1,2 and 3 shall rcquire Mernbers to disclose confidential informa tion which would irnpede law enforcerncnt or otherwise be contrary to the public interest or would prejudiee the legitirnate cornmercial interests of particular enterprises, public or private.
Article 64
Dispute Setttement
l. The provisions of Articles XXII and XXIII of GATI 1994 as elaborated and applied by the Dispute Seulement Understanding shall apply to consultations and the seulement of disputes under this Agreement except as otherwise specificaUy provided herein.
2. Subparagraphs l(b) and l(c) of Artic1e XXln of GATT 1994 shall nat apply to the settlement of disputes under this Agreerncnt for a period of five years from the date of entry into force of the \VTO Agreemen t. 3. During the lime period referred to in paragraph 2, the Council for TRIPS shall examine the scope and modal~ties for complaints of the type provided for under subparagraphs 1(b) and 1(c) of Article XXIII of GATI 1994 made pursuant to this Agreement, and submit its recommendations to the Ì\1inisterial Conference far approvaI. Any decision of the h1inisterial Conference to approve such reeommendations or to-€;(,.tend the period in paragraph 2 shall be made only by consensus, and approved rccommendations shal1 be effeclive for aH Members without further formaI acceptanee processo
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TRANSITIONAL ARRANGENlENTS
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 Agreernent before the expiry of a general period of one year following the date of entry into force of the \VTO Agreerncnt.
2. A developing country Member is entìtled to delay for a further period of four years the date of application, as defined in paragraph 1, of the provisions of this Agreernent other than Articles, 3,4 and 5.
3. Any other Member which is io the process of transformation [rom a centrally-planncd into a market, free-enterprise eeonomy and which is undertaking structural reform of its io tellectual property system and facing special problerns in the preparation and implcmentation of intellectual property laws and regulations, may a150 bcnefit frorn a period of delay as foreseen in paragraph 2.
4. To the extent that a developing country Member is obIiged by this Agreernent to extend product patent protection to areas of technology not so protectable in its territory on the general date of application of this Agreernent for that Mernber, as defined in paragraph 2, it may delay the application of the provisions 00 product patents of Section 5 of Part II to such areas of technology for an additional period of rive years.
5. A Mernber availing itself of a transitional period under paragraphs, 1, 2, 3 or 4 shall ensure that any changes in irs laws, regulations and practice made during that period do DOt result in a lesser degree of consìstency with the provisions of this Agreement.
Article 66
Least-Developed Country Members
1. In view ofthe special needs and requirernents of least-developed country Mernbers, their economie, financìal and adrninistrati ve constraints, and their need for flexibility to create a viable technological base, such Mernbers shall not be required [O apply the provisions of this Agreernent, other than Articles 3,4 and 5, for a period of 10 years from the date of applicauon as defined under paragraph l of Article 65. The Council forTRIPS shall, upon duly motivated request by a least-developed country Mernber, accord extcnsions of this periodo
2. Developed country Members, shall previde incentives to enterprises and institutions in their territories for the purpose of promoting and encouraging tcchnology transfer io lcast developed country J\J1em bers in arder to enable thern to create a sound and viable technological base.
Article 67
Technical Cooperation
In arder to facilitate the irnplerncntation of this Agreement. dcveloped country rvlembers shall provide, on request and on mutually agreed terrns and conditions, technical and financiaI cooperation in favourof developing and least-developed country tv!embers. Such coopera(ion shall include assisUlnce in the preparation of laws and regulations on the protèction and
enforcement of intelleetual property rights as \veB as on the prevention ofth~ir abuse, and shall include support regarding the establishment or reinforcement of domestic offices and agencies relevant to these maucrs, insluding the training of personneL
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PART VII
INSTITUTION;\L ARRANGEJv1ENTS; FINAL PROVISIONS
Article 68
Council far Trade-Related Aspects of Irucllectua! Property Rights
The Council for TRIPS shall monitor the operation of this Agreernent and, in particular, Mernbers' compliance with their obligations hcreunder, and shall afford Mernbers the opportunity of consulting on mauers relating to the trade-rclated aspects of intellectual property rights, It shall carry out such other responsibilities as assigned to it by the Mernbers, and it shall, in particular, previde any assistance rcquested by thern in the context of dispute settlernent procedures, In carrying aut its functions, the Council Ior TRlPS may consult with and seek inforrnation from any source it deerns appropriate. In consultation with WIPO, the Council shall seek to establish, within one year of its first meeting, appropriate arrangements far cooperation with bodies of that Organization,
Article 69
International Cooperation
Members agrce to cooperate with each other with a vicw to eliminating international trade in goods infringing intellectual property rights. For this purpose, they shall establish and notify contact points in thcir administrations and be ready to exchange information on trade in infringing goods. They shall in particular, promote the exchange of inforrnation and coopera tion between custorns auihorities with rcgard to trade in counterfeit tradernark goods and pirated copyright goods.
Article 70
Protection ofExisting Subject Maner
l. This Agreernent does not give rise to obligations in respect of acts which occurred before the date of application of the Agreernent for the Mernber in questiono
2. Except as otherwise provided Ior in this Agreerncnt, this Agreernent gives rise to obligations in respect of all subject matter existing at the date of application of this Agrecment for the Mernber in question, and which is protected in that Member on the said date, or which rneets or comes subsequently to meet the criteria for protection under the terrns of this Agreernent. In respect of this paragraph and paragraphs 3 and 4, copyright obligations with respect to existing works shall be solely dctermined under Article 18 of the Berne Convention (1971), and obligations with respect to mc rights ofproducers ofphonograrns and perform.ers in existing phonograrns shall be determ ined solely under Article 18 of the Berne Convemìon (1971) as made applicable under paragraph 6 of Article 14 of this Agreement.
3. There shall be no obligation to restere proteetion to subject matter which 00 the date of application of this Agreement for thc ~1cmber in question has falleo into the public domain.
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77/784. In respect ofany acts in respect of specific objects ernbodying protected subject rnatter which becorne infringing under the terrns of legislation in conformity with this Agreernent, and which were cornmenced, or in respect of which a significant invesunent was made, before the date of acceptance of the WTO Agreement by that Mernber, any Member may previde 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 the Agreernent far that Mernber. In such cases the Mcmber shall, however, at least provide for the payrnent of equitable remuneration.
5. A Member is not obliged to apply the provisions of Article Il and of paragraph 4 of Article 14 with respect to originals or copies purchased prior to the date of application of the Agreernent for that Member.
6. Members shall not be required to apply Article 31, or the requirernent in paragraph 1 of Article 27 that patent rights shall be enjoyable without discrirnination as to the field of technology, to use without the authorization of the right holder where authorization for such lise was granted by the government before the date this Agreernent became known.
7. In the case of intellectual property rights for which protection is conditional upon registration, applications l'or protection which are pending on the date of application of this Agreement far the Mernber in question shall be perrnitted to be amended to claim any enhanced protection provided under theprovisions of this Agreernent. Such arnendments shall not include new matter.
8. Where a Mernber does not rnakeavailable as of the date of entry into force of the \VTO Agreernent patent protection for pharrnaceutical and agricultural chernichal products com mensurate with its obligations under Article 27, that Mernber, shall:
Ca) notwithstanding the provisions of Part VI, prayide as from the date of entry force of the \VTO Agreement a rneans by which applications for patents for such invctions can be filed;
(b) apply to these applications, as of the date of application of this Agreernent, the criteria Ior patentanbility as laid down in this Agreement as if those criteria were being applied 00 the date of filing in that Membcr or, where priority ìs available and claimed, the priority date of the application; and
(c) previde patent protection in accordance with this Agreernent as from the grant of the patent and for the remainder of the patent term, eountcd from the filing date in accordance with Artiele 33 01' this Agreement, for those of these applications that meet the criteria far proteetion referred to in subparagraph Cb).
9. \Vhcre a product is the subject of a pntent application in a (vlcm ber in accordance with paragraph 8(a), exclusi ve marketing rights shall be granted, notw ithst3nding the provisions of Part VI, for a period of five years aftcr obtaining marketing approvaI in that i\.1ember or until a product patent is granted or rejecrcd in that tvlcmber, \vhichcver pcriod is shorter, pro':ided that, subsequent to the enlry into force al' the \VTO Agrcement, a patent application has been filed and a patent granted for that product in another i\1cmbcr and rnarketing approvaI abtained in such other lvIembcf.
Article 71
Review and Arnendmen:
1. The Council for TRIPS shall review the implemeotation of this Agreement after the expiration of the transitional period referred lO in paragraph 2 of Article 65. The Council shall, having regard to theexperience gaioed in its implementation, reviev.; il t\\'o yeas after thatdate, and at identical intervals thereafter. The eouncil may aIso underwke r~vie\vs in thc light of
any relvant new developrnents which might \varrant modification or amendment of this Agreement.
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2. Arnendments merely serving the purpose of adjusting LO higher levels of protection of intellectual property rights achieved, and in force, in other rnultilateral agreements and acepted under those agreernents by all Members of the \VTO may be referred to the Ministerial Conference for action in accordance with paragraph 6 of Artide X of the \VTO Agreement on the basis of a consensus proposal from the Council for TRIPS.
Article 72
Reservations
Reservations may not be entercd in respect of any of the provisions of this Agreement without the consent of the other Mernbcrs.
Article 73
Security Exceptions
Nothing in this Agreement shall be construed:
(a) to require a Member to furnish any inforrnation the disclosure of which it considers contrary to its essential security interests; or
(b) to prevent a Mernber from taking any action which it considers nccessary for the protection of its essential security interests: or
(i) relating to fissionable materials or the materials from which they are derived; (ii) relating to the traffic in arrns, amrnunition and implernents of war and te 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 othcr emergency in international relations: or
(c) to prevent a Member frorn taking any action in pursuance of its obligations under the United Nations Charter for the rnaintenance of international peace and security.
PASSED by the National Assembly 23rd day of July, 1996.
C.T. MOMPEI, Clerk of the National Assembly.