Organization of American States - Trade Unit
PART SIX INTELLECTUAL PROPERTY Chapter Seventeen Intellectual Property
Article 1701: Nature and Scope of Obligations
1. Each Party shall provide in its territory to the nationals
of another Party adequate and effective protection and
enforcement of intellectual property rights, while ensuring that
measures to enforce intellectual property rights do not
themselves become barriers to legitimate trade.
2. To provide adequate and effective protection and enforcement
of intellectual property rights, each Party shall, at a minimum,
give effect to this Chapter and to the substantive provisions of:
(a) the Geneva Convention for the Protection of Producers
of Phonograms Against Unauthorized Duplication of their
Phonograms, 1971 (Geneva Convention);
(b) the Berne Convention for the Protection of Literary and
Artistic Works, 1971 (Berne Convention);
(c) the Paris Convention for the Protection of Industrial
Property, 1967 (Paris Convention); and
(d) the International Convention for the Protection of New
Varieties of Plants, 1978 (UPOV Convention), or the
International Convention for the Protection of New
Varieties of Plants, 1991 (UPOV Convention).
If a Party has not acceded to the specified text of any such
Conventions on or before the date of entry into force of this
Agreement, it shall make every effort to accede.
3. Paragraph 2 shall apply, except as provided in Annex 1701.3.
Article 1702: More Extensive Protection
A Party may implement in its domestic law more extensive
protection of intellectual property rights than is required under
this Agreement, provided that such protection is not inconsistent
with this Agreement.
Article 1703: National Treatment
1. Each Party shall accord to nationals of another Party
treatment no less favorable than that it accords to its own
nationals with regard to the protection and enforcement of all
intellectual property rights. In respect of sound recordings,
each Party shall provide such treatment to producers and
performers of another Party, except that a Party may limit rights
of performers of another Party in respect of secondary uses of
sound recordings to those rights its nationals are accorded in
the territory of such other Party.
2. No Party may, as a condition of according national treatment
under this Article, require right holders to comply with any
formalities or conditions in order to acquire rights in respect
of copyright and related rights.
3. A Party may derogate from paragraph 1 in relation to its
judicial and administrative procedures for the protection or
enforcement of intellectual property rights, including any
procedure requiring a national of another Party to designate for
service of process an address in the Party's territory or to
appoint an agent in the Party's territory, if the derogation is
consistent with the relevant Convention listed in Article
1701(2), provided that such derogation:
(a) is necessary to secure compliance with measures that
are not inconsistent with this Chapter; and
(b) is not applied in a manner that would constitute a
disguised restriction on trade.
4. No Party shall have any obligation under this Article with
respect to procedures provided in multilateral agreements
concluded under the auspices of the World Intellectual Property
Organization relating to the acquisition or maintenance of
intellectual property rights.
Article 1704: Control of Abusive or Anticompetitive Practices or
Conditions
Nothing in this Chapter shall prevent a Party from
specifying in its domestic law licensing practices or conditions
that may in particular cases constitute an abuse of intellectual
property rights having an adverse effect on competition in the
relevant market. A Party may adopt or maintain, consistent with
the other provisions of this Agreement, appropriate measures to
prevent or control such practices or conditions.
Article 1705: Copyright
1. Each Party shall protect the works covered by Article 2 of
the Berne Convention, including any other works that embody
original expression within the meaning of that Convention. In
particular:
(a) all types of computer programs are literary works
within the meaning of the Berne Convention and each
Party shall protect them as such; and
(b) compilations of data or other material, whether in
machine readable or other form, which by reason of the
selection or arrangement of their contents constitute
intellectual creations, shall be protected as such.
The protection a Party provides under subparagraph (b) shall not
extend to the data or material itself, or prejudice any copyright
subsisting in that data or material.
2. Each Party shall provide to authors and their successors in
interest those rights enumerated in the Berne Convention in
respect of works covered by paragraph 1, including the right to
authorize or prohibit:
(a) the importation into the Party's territory of copies of
the work made without the right holder's authorization;
(b) the first public distribution of the original and each
copy of the work by sale, rental or otherwise;
(c) the communication of a work to the public; and
(d) the commercial rental of the original or a copy of a
computer program.
Subparagraph (d) shall not apply where the copy of the computer
program is not itself an essential object of the rental. Each
Party shall provide that putting the original or a copy of a
computer program on the market with the right holder's consent
shall not exhaust the rental right.
3. Each Party shall provide that for copyright and related
rights:
(a) any person acquiring or holding economic rights may
freely and separately transfer such rights by contract
for purposes of their exploitation and enjoyment by the
transferee; and
(b) any person acquiring or holding such economic rights by
virtue of a contract, including contracts of employment
underlying the creation of works and sound recordings,
shall be able to exercise those rights in its own name
and enjoy fully the benefits derived from those rights.
4. Each Party shall provide that, where the term of protection
of a work, other than a photographic work or a work of applied
art, is to be calculated on a basis other than the life of a
natural person, the term shall be not less than 50 years from the
end of the calendar year of the first authorized publication of
the work, or, failing such authorized publication within 50 years
from the making of the work, 50 years from the end of the
calendar year of making.
5. Each Party shall confine limitations or exceptions to the
rights provided for in this Article to certain special cases that
do not conflict with a normal exploitation of the work and do not
unreasonably prejudice the legitimate interests of the right
holder.
6. No Party may grant translation and reproduction licenses
permitted under the Appendix to the Berne Convention where
legitimate needs in that Party's territory for copies or
translations of the work could be met by the right holder's
voluntary actions but for obstacles created by the Party's
measures.
7. Each Party shall comply with the requirements set out in
Annex 1705.7.
Article 1706: Sound Recordings
1. Each Party shall provide to the producer of a sound
recording the right to authorize or prohibit:
(a) the direct or indirect reproduction of the sound
recording;
(b) the importation into the Party's territory of copies of
the sound recording made without the producer's
authorization;
(c) the first public distribution of the original and each
copy of the sound recording by sale, rental or
otherwise; and
(d) the commercial rental of the original or a copy of the
sound recording, except where expressly otherwise
provided in a contract between the producer of the
sound recording and the authors of the works fixed
therein.
Each Party shall provide that putting the original or a copy of a
sound recording on the market with the right holder's consent
shall not exhaust the rental right.
2. Each Party shall provide a term of protection for sound
recordings of at least 50 years from the end of the calendar year
in which the fixation was made.
3. Each Party shall confine limitations or exceptions to the
rights provided for in this Article to certain special cases that
do not conflict with a normal exploitation of the sound recording
and do not unreasonably prejudice the legitimate interests of the
right holder.
Article 1707: Protection of Encrypted Program-Carrying Satellite
Signals
Within one year from the date of entry into force of this
Agreement, each Party shall:
(a) make it a criminal offense to manufacture, import,
sell, lease or otherwise make available a device or
system that is primarily of assistance in decoding an
encrypted program-carrying satellite signal without the
authorization of the lawful distributor of such signal;
and
(b) make it a civil offense to receive, in connection with
commercial activities, or further distribute, an
encrypted program-carrying satellite signal that has
been decoded without the authorization of the lawful
distributor of the signal or to engage in any activity
prohibited under subparagraph (a).
Each Party shall provide that any civil offense established under
subparagraph (b) shall be actionable by any person that holds an
interest in the content of such signal.
Article 1708: Trademarks
1. For purposes of this Agreement, a trademark consists of any
sign, or any combination of signs, capable of distinguishing the
goods or services of one person from those of another, including
personal names, designs, letters, numerals, colors, figurative
elements, or the shape of goods or of their packaging.
Trademarks shall include service marks and collective marks, and
may include certification marks. A Party may require, as a
condition for registration that a sign be visually perceptible.
2. Each Party shall provide to the owner of a registered
trademark the right to prevent all persons not having the owner's
consent from using in commerce identical or similar signs for
goods or services that are identical or similar to those goods or
services in respect of which the owner's trademark is registered,
where such use would result in a likelihood of confusion. In the
case of the use of an identical sign for identical goods or
services, a likelihood of confusion shall be presumed. The
rights described above shall not prejudice any prior rights, nor
shall they affect the possibility of a Party making rights
available on the basis of use.
3. A Party may make registrability depend on use. However,
actual use of a trademark shall not be a condition for filing an
application for registration. No Party may refuse an application
solely on the ground that intended use has not taken place before
the expiry of a period of three years from the date of
application for registration.
4. Each Party shall provide a system for the registration of
trademarks, which shall include:
(a) examination of applications;
(b) notice to be given to an applicant of the reasons for
the refusal to register a trademark;
(c) a reasonable opportunity for the applicant to respond
to the notice;
(d) publication of each trademark either before or promptly
after it is registered; and
(e) a reasonable opportunity for interested persons to
petition to cancel the registration of a trademark.
A Party may provide for a reasonable opportunity for interested
persons to oppose the registration of a trademark.
5. The nature of the goods or services to which a trademark is
to be applied shall in no case form an obstacle to the
registration of the trademark.
6. Article 6bis of the Paris Convention shall apply, with such
modifications as are necessary, to services. In determining
whether a trademark is well-known, account shall be taken of the
knowledge of the trademark in the relevant sector of the public,
including knowledge in the Party's territory obtained as a result
of the promotion of the trademark. No Party may require that the
reputation of the trademark extend beyond the sector of the
public that normally deals with the relevant goods or services.
7. Each Party shall provide that the initial registration of a
trademark be for a term of at least 10 years and that the
registration be indefinitely renewable for terms of not less than
10 years when conditions for renewal have been met.
8. Each Party shall require the use of a trademark to maintain
a registration. The registration may be canceled for the reason
of non-use only after an uninterrupted period of at least two
years of non-use, unless valid reasons based on the existence of
obstacles to such use are shown by the trademark owner. Each
Party shall recognize, as valid reasons for non-use,
circumstances arising independently of the will of the trademark
owner that constitute an obstacle to the use of the trademark,
such as import restrictions on, or other government requirements
for, goods or services identified by the trademark.
9. Each Party shall recognize use of a trademark by a person
other than the trademark owner, where such use is subject to the
owner's control, as use of the trademark for purposes of
maintaining the registration.
10. No Party shall encumber the use of a trademark in commerce
by special requirements, such as a use that reduces the
trademark's function as an indication of source or a use with
another trademark.
11. A Party may determine conditions on the licensing and
assignment of trademarks, it being understood that the compulsory
licensing of trademarks shall not be permitted and that the owner
of a registered trademark shall have the right to assign its
trademark with or without the transfer of the business to which
the trademark belongs.
12. A Party may provide limited exceptions to the rights
conferred by a trademark, such as fair use of descriptive terms,
provided that such exceptions take into account the legitimate
interests of the trademark owner and of other persons.
13. Each Party shall prohibit the registration as a trademark of
words, at least in English, French or Spanish, that generically
designate goods or services or types of goods or services to
which the trademark applies.
14. Each Party shall refuse to register trademarks that consist
of or comprise immoral, deceptive or scandalous matter, or matter
that may disparage or falsely suggest a connection with persons,
living or dead, institutions, beliefs or any Party's national
symbols, or bring them into contempt or disrepute.
Article 1709: Patents
1. Subject to paragraphs 2 and 3, each Party shall make patents
available for any inventions, whether products or processes, in
all fields of technology, provided that such inventions are new,
result from an inventive step and are capable of industrial
application. For the purposes of this Article, a Party may deem
the terms "inventive step" and "capable of industrial
application" to be synonymous with the terms "non-obvious" and
"useful", respectively.
2. A Party may exclude from patentability inventions if
preventing in its territory the commercial exploitation of the
inventions is necessary to protect ordre public or morality,
including to protect human, animal or plant life or health or to
avoid serious prejudice to nature or the environment, provided
that the exclusion is not based solely on the ground that the
Party prohibits commercial exploitation in its territory of the
subject matter of the patent.
3. A Party may also exclude from patentability:
(a) diagnostic, therapeutic and surgical methods for the
treatment of humans or animals;
(b) plants and animals other than microorganisms; and
(c) essentially biological processes for the production of
plants or animals, other than non-biological and
microbiological processes for such production.
Notwithstanding subparagraph (b), each Party shall provide for
the protection of plant varieties through patents, an effective
scheme of sui generis protection, or both.
4. If a Party has not made available product patent protection
for pharmaceutical or agricultural chemicals commensurate with
paragraph 1:
(a) as of January 1, 1992, for subject matter that relates
to naturally occurring substances prepared or produced
by, or significantly derived from, microbiological
processes and intended for food or medicine; and
(b) as of July 1, 1991, for any other subject matter,
that Party shall provide to the inventor of any such product or
its assignee the means to obtain product patent protection for
such product for the unexpired term of the patent for such
product granted in another Party, as long as the product has not
been marketed in the Party providing protection under this
paragraph and the person seeking such protection makes a timely
request.
5. Each Party shall provide that:
(a) where the subject matter of a patent is a product, the
patent shall confer on the patent owner the right to
prevent other persons from making, using or selling the
subject matter of the patent, without the patent
owner's consent; and
(b) where the subject matter of a patent is a process, the
patent shall confer on the patent owner the right to
prevent other persons from using that process and from
using, selling, or importing at least the product
obtained directly by that process, without the patent
owner's consent.
6. A Party may provide limited exceptions to the exclusive
rights conferred by a patent, provided that such exceptions do
not unreasonably conflict with a normal exploitation of the
patent and do not unreasonably prejudice the legitimate interests
of the patent owner, taking into account the legitimate interests
of other persons.
7. Subject to paragraphs 2 and 3, patents shall be available
and patent rights enjoyable without discrimination as to the
field of technology, the territory of the Party where the
invention was made and whether products are imported or locally
produced.
8. A Party may revoke a patent only when:
(a) grounds exist that would have justified a refusal to
grant the patent; or
(b) the grant of a compulsory license has not remedied the
lack of exploitation of the patent.
9. Each Party shall permit patent owners to assign and transfer
by succession their patents, and to conclude licensing contracts.
10. Where the law of a Party allows for use of the subject
matter of a patent, other than that use allowed under paragraph
6, without the authorization of the right holder, including use
by the government or other persons authorized by the government,
the Party shall respect the following provisions:
(a) authorization of such use shall be considered on its
individual merits;
(b) such use may only be permitted if, prior to such use,
the proposed user has made efforts to obtain
authorization from the right holder on reasonable
commercial terms and conditions and such efforts have
not been successful within a reasonable period of time.
The requirement to make such efforts may be waived by a
Party in the case of a national emergency or other
circumstances of extreme urgency or in cases of public
non-commercial use. In situations of national
emergency or other circumstances of extreme urgency,
the right holder shall, nevertheless, be notified as
soon as reasonably practicable. In the case of public
non-commercial use, where the government or contractor,
without making a patent search, knows or has
demonstrable grounds to know that a valid patent is or
will be used by or for the government, the right holder
shall be informed promptly;
(c) the scope and duration of such use shall be limited to
the purpose for which it was authorized;
(d) such use shall be non-exclusive;
(e) such use shall be non-assignable, except with that part
of the enterprise or goodwill that enjoys such use;
(f) any such use shall be authorized predominantly for the
supply of the Party's domestic market;
(g) authorization for such use shall be liable, subject to
adequate protection of the legitimate interests of the
persons so authorized, to be terminated if and when the
circumstances that led to it cease to exist and are
unlikely to recur. The competent authority shall have
the authority to review, upon motivated request, the
continued existence of these circumstances;
(h) the right holder shall be paid adequate remuneration in
the circumstances of each case, taking into account the
economic value of the authorization;
(i) the legal validity of any decision relating to the
authorization shall be subject to judicial or other
independent review by a distinct higher authority;
(j) any decision relating to the remuneration provided in
respect of such use shall be subject to judicial or
other independent review by a distinct higher
authority;
(k) the Party shall not be obliged to apply the conditions
set out in subparagraphs (b) and (f) where such use is
permitted to remedy a practice determined after
judicial or administrative process to be
anticompetitive. The need to correct anticompetitive
practices may be taken into account in determining the
amount of remuneration in such cases. Competent
authorities shall have the authority to refuse
termination of authorization if and when the conditions
that led to such authorization are likely to recur;
(l) the Party shall not authorize the use of the subject
matter of a patent to permit the exploitation of
another patent except as a remedy for an adjudicated
violation of domestic laws regarding anticompetitive
practices.
11. Where the subject matter of a patent is a process for
obtaining a product, each Party shall, in any infringement
proceeding, place on the defendant the burden of establishing
that the allegedly infringing product was made by a process other
than the patented process in one of the following situations:
(a) the product obtained by the patented process is new; or
(b) a substantial likelihood exists that the allegedly
infringing product was made by the process and the
patent owner has been unable through reasonable efforts
to determine the process actually used.
In the gathering and evaluation of evidence, the legitimate
interests of the defendant in protecting its trade secrets shall
be taken into account.
12. Each Party shall provide a term of protection for patents of
at least 20 years from the date of filing or 17 years from the
date of grant. A Party may extend the term of patent protection,
in appropriate cases, to compensate for delays caused by
regulatory approval processes.
Article 1710: Layout Designs of Semiconductor Integrated
Circuits
1. Each Party shall protect layout designs (topographies) of
integrated circuits ("layout designs") in accordance with
Articles 2 through 7, 12 and 16(3), other than Article 6(3), of
the Treaty on Intellectual Property in Respect of Integrated
Circuits as opened for signature on 26 May 1989.
2. Subject to paragraph 3, each Party shall make it unlawful
for any person without the right holder's authorization to
import, sell or otherwise distribute for commercial purposes any
of the following:
(a) a protected layout design;
(b) an integrated circuit in which a protected layout
design is incorporated; or
(c) an article incorporating such an integrated circuit,
only insofar as it continues to contain an unlawfully
reproduced layout design.
3. No Party may make unlawful any of the acts referred to in
paragraph 2 performed in respect of an integrated circuit that
incorporates an unlawfully reproduced layout design or any
article that incorporates such an integrated circuit where the
person performing those acts or ordering those acts to be done
did not know and had no reasonable ground to know, when it
acquired the integrated circuit or article incorporating such an
integrated circuit, that it incorporated an unlawfully reproduced
layout design.
4. Each Party shall provide that, after the person referred to
in paragraph 3 has received sufficient notice that the layout
design was unlawfully reproduced, such person may perform any of
the acts with respect to the stock on hand or ordered before such
notice, but shall be liable to pay the right holder for doing so
an amount equivalent to a reasonable royalty such as would be
payable under a freely negotiated license in respect of such a
layout design.
5. No Party may permit the compulsory licensing of layout
designs of integrated circuits.
6. Any Party that requires registration as a condition for
protection of a layout design shall provide that the term of
protection shall not end before the expiration of a period of 10
years counted from the date of:
(a) filing of the application for registration; or
(b) the first commercial exploitation of the layout design,
wherever in the world it occurs.
7. Where a Party does not require registration as a condition
for protection of a layout design, the Party shall provide a term
of protection of not less than 10 years from the date of the
first commercial exploitation of the layout design, wherever in
the world it occurs.
8. Notwithstanding paragraphs 6 and 7, a Party may provide that
the protection shall lapse 15 years after the creation of the
layout design.
9. This Article shall apply, except as provided in Annex
1710.9.
Article 1711: Trade Secrets
1. Each Party shall provide the legal means for any person to
prevent trade secrets from being disclosed to, acquired by, or
used by others without the consent of the person lawfully in
control of the information in a manner contrary to honest
commercial practices, in so far as:
(a) the information is secret in the sense that it is not,
as a body or in the precise configuration and assembly
of its components, generally known among or readily
accessible to persons that normally deal with the kind
of information in question;
(b) the information has actual or potential commercial
value because it is secret; and
(c) the person lawfully in control of the information has
taken reasonable steps under the circumstances to keep
it secret.
2. A Party may require that to qualify for protection a trade
secret must be evidenced in documents, electronic or magnetic
means, optical discs, microfilms, films or other similar
instruments.
3. No Party may limit the duration of protection for trade
secrets, so long as the conditions in paragraph 1 exist.
4. No Party may discourage or impede the voluntary licensing of
trade secrets by imposing excessive or discriminatory conditions
on such licenses, or conditions that dilute the value of the
trade secrets.
5. If a Party requires, as a condition for approving the
marketing of pharmaceutical or agricultural chemical products
that utilize new chemical entities, the submission of undisclosed
test or other data necessary to determine whether the use of such
products is safe and effective, the Party shall protect against
disclosure of the data of persons making such submissions, where
the origination of such data involves considerable effort, except
where the disclosure is necessary to protect the public or unless
steps are taken to ensure that the data is protected against
unfair commercial use.
6. Each Party shall provide that for data subject to paragraph
5 that are submitted to the Party after the date of entry into
force of this Agreement, no person other than the person that
submitted them may, without the latter's permission, rely on such
data in support of an application for product approval during a
reasonable period of time after their submission. For this
purpose, a reasonable period shall normally mean not less than
five years from the date on which the Party granted approval to
the person that produced the data for approval to market its
product, taking account of the nature of the data and the
person's efforts and expenditures in producing them. Subject to
this provision, there shall be no limitation on any Party to
implement abbreviated approval procedures for such products on
the basis of bioequivalence and bioavailability studies.
7. Where a Party relies upon a marketing approval granted by
another Party, the reasonable period of exclusive use of the data
submitted in connection with obtaining the approval relied upon
shall commence with the date of the first marketing approval
relied upon.
Article 1712: Geographical Indications
1. Each Party shall provide, in respect of geographical
indications, the legal means for interested persons to prevent:
(a) the use of any means in the designation or presentation
of a good that indicates or suggests that the good in
question originates in a territory, region or locality
other than the true place of origin, in a manner that
misleads the public as to the geographical origin of
the good;
(b) any use that constitutes an act of unfair competition
within the meaning of Article 10bis of the Paris
Convention.
2. Each Party shall, on its own initiative if its domestic law
so permits or at the request of an interested person, refuse to
register, or invalidate the registration of, a trademark
containing or consisting of a geographical indication with
respect to goods that do not originate in the indicated
territory, region or locality, if use of the indication in the
trademark for such goods is of such a nature as to mislead the
public as to the geographical origin of the good.
3. Each Party shall also apply paragraphs 1 and 2 to a
geographical indication that, although correctly indicating the
territory, region or locality in which the goods originate,
falsely represents to the public that the goods originate in
another territory, region or locality.
4. Nothing in this Article shall require a Party to prevent
continued and similar use of a particular geographical indication
of another Party in connection with goods or services by any of
its nationals or domiciliaries who have used that geographical
indication in a continuous manner with regard to the same or
related goods or services in that Party's territory, either:
(a) for at least 10 years, or
(b) in good faith, before the date of signature of this
Agreement.
5. Where a trademark has been applied for or registered in good
faith, or where rights to a trademark have been acquired through
use in good faith, either:
(a) before the date of application of these provisions in
that Party, or
(b) before the geographical indication is protected in its
Party of origin,
no Party may adopt any measure to implement this Article that
prejudices eligibility for, or the validity of, the registration
of a trademark, or the right to use a trademark, on the basis
that such a trademark is identical with, or similar to, a
geographical indication.
6. No Party shall be required to apply this Article to a
geographical indication if it is identical to the customary term
in common language in that Party's territory for the goods or
services to which the indication applies.
7. A Party may provide that any request made under this Article
in connection with the use or registration of a trademark must be
presented within five years after the adverse use of the
protected indication has become generally known in that Party or
after the date of registration of the trademark in that Party,
provided that the trademark has been published by that date, if
such date is earlier than the date on which the adverse use
became generally known in that Party, provided that the
geographical indication is not used or registered in bad faith.
8. No Party shall adopt any measure implementing this Article
that would prejudice any person's right to use, in the course of
trade, its name or the name of its predecessor in business,
except where such name forms all or part of a valid trademark in
existence before the geographical indication became protected and
with which there is a likelihood of confusion, or such name is
used in such a manner as to mislead the public.
9. Nothing in this Chapter shall require a Party to protect a
geographical indication that is not protected, or has fallen into
disuse, in the Party of origin.
Article 1713: Industrial Designs
1. Each Party shall provide for the protection of independently
created industrial designs that are new or original. A Party may
provide that:
(a) designs are not new or original if they do not
significantly differ from known designs or combinations
of known design features; and
(b) such protection shall not extend to designs dictated
essentially by technical or functional considerations.
2. Each Party shall ensure that the requirements for securing
protection for textile designs, in particular in regard to any
cost, examination or publication, do not unreasonably impair a
person's opportunity to seek and obtain such protection. A Party
may comply with this obligation through industrial design law or
copyright law.
3. Each Party shall provide the owner of a protected industrial
design the right to prevent other persons not having the owner's
consent from making or selling articles bearing or embodying a
design that is a copy, or substantially a copy, of the protected
design, when such acts are undertaken for commercial purposes.
4. A Party may provide limited exceptions to the protection of
industrial designs, provided that such exceptions do not
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
into account the legitimate interests of other persons.
5. Each Party shall provide a term of protection for industrial
designs of at least 10 years.
Article 1714: Enforcement of Intellectual Property Rights:
General Provisions
1. Each Party shall ensure that enforcement procedures, as
specified in this Article and Articles 1715 through 1718, are
available under its domestic law so as to permit effective action
to be taken against any act of infringement of intellectual
property rights covered by this Chapter, including expeditious
remedies to prevent infringements and remedies to deter further
infringements. Such enforcement procedures shall be applied so
as to avoid the creation of barriers to legitimate trade and to
provide for safeguards against abuse of the procedures.
2. Each Party shall ensure that its procedures for the
enforcement of intellectual property rights are fair and
equitable, are not unnecessarily complicated or costly, and do
not entail unreasonable time-limits or unwarranted delays.
3. Each Party shall provide that decisions on the merits of a
case in judicial and administrative enforcement proceedings
shall:
(a) preferably be in writing and preferably state the
reasons on which the decisions are based;
(b) be made available at least to the parties in a
proceeding without undue delay; and
(c) be based only on evidence in respect of which such
parties were offered the opportunity to be heard.
4. Each Party shall ensure that parties in a proceeding have an
opportunity to have final administrative decisions reviewed by a
judicial authority of that Party and, subject to jurisdictional
provisions in its domestic laws concerning the importance of a
case, to have reviewed at least the legal aspects of initial
judicial decisions on the merits of a case. Notwithstanding the
above, no Party shall be required to provide for judicial review
of acquittals in criminal cases.
5. Nothing in this Article and in Articles 1715 through 1718
shall require a Party to establish a judicial system for the
enforcement of intellectual property rights distinct from that
Party's system for the enforcement of laws in general.
6. For the purposes of Articles 1715 through 1718, the term
"right holder" includes federations and associations having legal
standing to assert such rights.
Article 1715: Specific Procedural and Remedial Aspects of Civil
and Administrative Procedures
1. Each Party shall make available to right holders civil
judicial procedures for the enforcement of any intellectual
property right covered by this Chapter. Each Party shall provide
that:
(a) defendants have the right to written notice that is
timely and contains sufficient detail, including the
basis of the claims;
(b) parties in a proceeding are allowed to be represented
by independent legal counsel;
(c) the procedures do not include imposition of overly
burdensome requirements concerning mandatory personal
appearances;
(d) all parties in a proceeding are duly entitled to
substantiate their claims and to present relevant
evidence; and
(e) the procedures include a means to identify and protect
confidential information.
2. Each Party shall provide that its judicial authorities shall
have the authority:
(a) where a party in a proceeding has presented reasonably
available evidence sufficient to support its claims and
has specified evidence relevant to the substantiation
of its claims that is within the control of the
opposing party, to order the opposing party to produce
such evidence, subject in appropriate cases to
conditions that ensure the protection of confidential
information;
(b) where a party in a proceeding voluntarily and without
good reason refuses access to, or otherwise does not
provide relevant evidence under that party's control
within a reasonable period, or significantly impedes a
proceeding relating to an enforcement action, to make
preliminary and final determinations, affirmative or
negative, on the basis of the evidence presented,
including the complaint or the allegation presented by
the party adversely affected by the denial of access to
evidence, subject to providing the parties an
opportunity to be heard on the allegations or evidence;
(c) to order a party in a proceeding to desist from an
infringement, including to prevent the date of entry
into the channels of commerce in their jurisdiction of
imported goods that involve the infringement of an
intellectual property right, which order shall be
enforceable at least immediately after customs
clearance of such goods;
(d) to order the infringer of an intellectual property
right to pay the right holder damages adequate to
compensate for the injury the right holder has suffered
because of the infringement where the infringer knew or
had reasonable grounds to know that it was engaged in
an infringing activity;
(e) to order an infringer of an intellectual property right
to pay the right holder's expenses, which may include
appropriate attorney's fees; and
(f) to order a party in a proceeding at whose request
measures were taken and who has abused enforcement
procedures to provide adequate compensation to any
party wrongfully enjoined or restrained in the
proceeding for the injury suffered because of such
abuse and to pay that party's expenses, which may
include appropriate attorney's fees.
3. With respect to the authority referred to in subparagraph
2(c), no Party shall be obliged to provide such authority in
respect of protected subject matter that is acquired or ordered
by a person before that person knew or had reasonable grounds to
know that dealing in that subject matter would entail the
infringement of an intellectual property right.
4. With respect to the authority referred to in subparagraph
2(d), a Party may, at least with respect to copyrighted works and
sound recordings, authorize the judicial authorities to order
recovery of profits or payment of pre-established damages, or
both, even where the infringer did not know or had no reasonable
grounds to know that it was engaged in an infringing activity.
5. Each Party shall provide that, in order to create an
effective deterrent to infringement, its judicial authorities
shall have the authority to order that:
(a) goods that they have found to be infringing be, without
compensation of any sort, disposed of outside the
channels of commerce in such a manner as to avoid any
injury caused to the right holder, or, unless this
would be contrary to existing constitutional
requirements, destroyed; and
(b) materials and implements the predominant use of which
has been in the creation of the infringing goods be,
without compensation of any sort, disposed of outside
the channels of commerce in such a manner as to
minimize the risks of further infringements.
In considering whether to issue such an order, judicial
authorities shall take into account the need for proportionality
between the seriousness of the infringement and the remedies
ordered as well as the interests of other persons. In regard to
counterfeit goods, the simple removal of the trademark unlawfully
affixed shall not be sufficient, other than in exceptional cases,
to permit release of the goods into the channels of commerce.
6. In respect of the administration of any law pertaining to
the protection or enforcement of intellectual property rights,
each Party shall only exempt both public authorities and
officials from liability to appropriate remedial measures where
actions are taken or intended in good faith in the course of the
administration of such laws.
7. Notwithstanding the other provisions of Articles 1714
through 1718, where a Party is sued with respect to an
infringement of an intellectual property right as a result of its
use of that right or use on its behalf, that Party may limit the
remedies available against it to the payment to the right holder
of adequate remuneration in the circumstances of each case,
taking into account the economic value of the use.
8. Each Party shall provide that, where a civil remedy can be
ordered as a result of administrative procedures on the merits of
a case, such procedures shall conform to principles equivalent in
substance to those set out in this Article.
Article 1716: Provisional Measures
1. Each Party shall provide that its judicial authorities shall
have the authority to order prompt and effective provisional
measures:
(a) to prevent an infringement of any intellectual property
right, and in particular to prevent the date of entry
into the channels of commerce in their jurisdiction of
allegedly infringing goods, including measures to
prevent the entry of imported goods at least
immediately after customs clearance; and
(b) to preserve relevant evidence in regard to the alleged
infringement.
2. Each Party shall provide that its judicial authorities shall
have the authority to require any applicant for provisional
measures to provide to the judicial authorities any evidence
reasonably available to that applicant that the judicial
authorities consider necessary to enable them to determine with a
sufficient degree of certainty whether:
(a) the applicant is the right holder;
(b) the applicant's right is being infringed or such
infringement is imminent; and
(c) any delay in the issuance of such measures is likely to
cause irreparable harm to the right holder, or there is
a demonstrable risk of evidence being destroyed.
Each Party shall provide that its judicial authorities shall have
the authority to require the applicant to provide a security or
equivalent assurance sufficient to protect the interests of the
defendant and to prevent abuse.
3. Each Party shall provide that its competent authorities
shall have the authority to require an applicant for provisional
measures to provide other information necessary for the
identification of the relevant goods by the authority that will
execute the provisional measures.
4. Each Party shall provide that its judicial authorities shall
have the authority to order provisional measures on an ex parte
basis, in particular where any delay is likely to cause
irreparable harm to the right holder, or where there is a
demonstrable risk of evidence being destroyed.
5. Each Party shall provide that where provisional measures are
adopted by that Party's judicial authorities on an ex parte
basis:
(a) a person affected shall be given notice of those
measures without delay but in any event no later than
immediately after the execution of the measures;
(b) a defendant shall, upon request, have those measures
reviewed by that Party's judicial authorities, for the
purpose of deciding, within a reasonable period after
notice of those measures is given, whether the measures
shall be modified, revoked or confirmed, and shall be
given an opportunity to be heard in the review
proceedings.
6. Without prejudice to paragraph 5, each Party shall provide
that, upon the request of the defendant, the Party's judicial
authorities shall revoke or otherwise cease to apply the
provisional measures taken on the basis of paragraphs 1 and 4 if
proceedings leading to a decision on the merits are not
initiated:
(a) within a reasonable period as determined by the
judicial authority ordering the measures where the
Party's domestic law so permits; or
(b) in the absence of such a determination, within a period
of no more than 20 working days or 31 calendar days,
whichever is longer.
7. Each Party shall provide that, where the provisional
measures are revoked or where they lapse due to any act or
omission by the applicant, or where the judicial authorities
subsequently find that there has been no infringement or threat
of infringement of an intellectual property right, the judicial
authorities shall have the authority to order the applicant, on
request of the defendant, to provide the defendant appropriate
compensation for any injury caused by these measures.
8. Each Party shall provide that, where a provisional measure
can be ordered as a result of administrative procedures, such
procedures shall conform to principles equivalent in substance to
those set out in this Article.
Article 1717: Criminal Procedures and Penalties
1. Each Party shall provide criminal procedures and penalties
to be applied at least in cases of willful trademark
counterfeiting or copyright piracy on a commercial scale. Each
Party shall provide that penalties available include imprisonment
or monetary fines, or both, sufficient to provide a deterrent,
consistent with the level of penalties applied for crimes of a
corresponding gravity.
2. Each Party shall provide that, in appropriate cases, its
judicial authorities may order the seizure, forfeiture and
destruction of infringing goods and of any materials and
implements the predominant use of which has been in the
commission of the offense.
3. A Party may provide criminal procedures and penalties to be
applied in cases of infringement of intellectual property rights,
other than those in paragraph 1, where they are committed
wilfully and on a commercial scale.
Article 1718: Enforcement of Intellectual Property Rights at the
Border
1. Each Party shall, in conformity with this Article, adopt
procedures to enable a right holder, who has valid grounds for
suspecting that the importation of counterfeit trademark goods or
pirated copyright goods may take place, to lodge an application
in writing with its competent authorities, whether administrative
or judicial, for the suspension by the customs administration of
the release of such goods into free circulation. No Party shall
be obligated to apply such procedures to goods in transit. A
Party may permit such an application to be made in respect of
goods that involve other infringements of intellectual property
rights, provided that the requirements of this Article are met.
A Party may also provide for corresponding procedures concerning
the suspension by the customs administration of the release of
infringing goods destined for exportation from its territory.
2. Each Party shall require any applicant who initiates
procedures under paragraph 1 to provide adequate evidence:
(a) to satisfy that Party's competent authorities that,
under the domestic laws of the country of importation,
there is prima facie an infringement of its
intellectual property right; and
(b) to supply a sufficiently detailed description of the
goods to make them readily recognizable by the customs
administration.
The competent authorities shall inform the applicant within a
reasonable period whether they have accepted the application and,
if so, the period for which the customs administration will take
action.
3. Each Party shall provide that its competent authorities
shall have the authority to require an applicant under paragraph
1 to provide a security or equivalent assurance sufficient to
protect the defendant and the competent authorities and to
prevent abuse. Such security or equivalent assurance shall not
unreasonably deter recourse to these procedures.
4. Each Party shall provide that, where pursuant to an
application under procedures adopted pursuant to this Article,
its customs administration suspends the release of goods
involving industrial designs, patents, integrated circuits or
trade secrets into free circulation on the basis of a decision
other than by a judicial or other independent authority, and the
period provided for in paragraphs 6 through 8 has expired without
the granting of provisional relief by the duly empowered
authority, and provided that all other conditions for importation
have been complied with, the owner, importer, or consignee of
such goods shall be entitled to their release on the posting of a
security in an amount sufficient to protect the right holder
against any infringement. Payment of such security shall not
prejudice any other remedy available to the right holder, it
being understood that the security shall be released if the right
holder fails to pursue its right of action within a reasonable
period of time.
5. Each Party shall provide that its customs administration
shall promptly notify the importer and the applicant when the
customs administration suspends the release of goods pursuant to
paragraph 1.
6. Each Party shall provide that its customs administration
shall release goods from suspension if within a period not
exceeding ten working days after the applicant under paragraph 1
has been served notice of the suspension:
(a) the customs administration has not been informed that a
party other than the defendant has initiated
proceedings leading to a decision on the merits of the
case, or
(b) a competent authority has taken provisional measures
prolonging the suspension,
provided that all other conditions for importation or exportation
have been met. Each Party shall provide that, in appropriate
cases, the customs administration may extend the suspension by
another 10 working days.
7. Each Party shall provide that if proceedings leading to a
decision on the merits of the case have been initiated, a review,
including a right to be heard, shall take place on request of the
defendant with a view to deciding, within a reasonable period,
whether the measures shall be modified, revoked or confirmed.
8. Notwithstanding paragraphs 6 and 7, where the suspension of
the release of goods is carried out or continued in accordance
with a provisional judicial measure, the provisions of Article
1716(6) shall apply.
9. Each Party shall provide that its competent authorities
shall have the authority to order the applicant under paragraph 1
to pay the importer, the consignee and the owner of the goods
appropriate compensation for any injury caused to them through
the wrongful detention of goods or through the detention of goods
released pursuant to paragraph 6.
10. Without prejudice to the protection of confidential
information, each Party shall provide that its competent
authorities shall have the authority to give the right holder
sufficient opportunity to have any goods detained by the customs
administration inspected in order to substantiate its claims.
Each Party shall also provide that its competent authorities have
the authority to give the importer an equivalent opportunity to
have any such goods inspected. Where the competent authorities
have made a positive determination on the merits of a case, a
Party may provide the competent authorities the authority to
inform the right holder of the names and addresses of the
consignor, the importer and the consignee, and of the quantity of
the goods in question.
11. Where a Party requires its competent authorities to act upon
their own initiative and to suspend the release of goods in
respect of which they have acquired prima facie evidence that an
intellectual property right is being infringed:
(a) the competent authorities may at any time seek from the
right holder any information that may assist them to
exercise these powers;
(b) the importer and the right holder shall be promptly
notified of the suspension by the Party's competent
authorities, and where the importer lodges an appeal
against the suspension with competent authorities, the
suspension shall be subject to the conditions, with
such modifications as are necessary, set out in
paragraphs 6 through 8; and
(c) the Party shall only exempt both public authorities and
officials from liability to appropriate remedial
measures where actions are taken or intended in good
faith.
12. Without prejudice to other rights of action open to the
right holder and subject to the defendant's right to seek
judicial review, each Party shall provide that its competent
authorities shall have the authority to order the destruction or
disposal of infringing goods in accordance with the principles
set out in Article 1715(5). In regard to counterfeit goods, the
authorities shall not allow the re-exportation of the infringing
goods in an unaltered state or subject them to a different
customs procedure, other than in exceptional circumstances.
13. A Party may exclude from the application of paragraphs 1
through 12 small quantities of goods of a non-commercial nature
contained in travellers' personal luggage or sent in small
consignments that are not repetitive.
14. This Article shall apply, except as provided in Annex
1718.14.
Article 1719: Cooperation and Technical Assistance
1. The Parties shall provide each other on mutually agreed
terms with technical assistance and shall promote cooperation
between their competent authorities. Such cooperation shall
include, but not be limited to, the training of personnel.
2. The Parties shall cooperate with a view to eliminating trade
in goods that infringe intellectual property rights. For this
purpose, each Party shall establish and notify the other Parties
of contact points in its federal government and shall exchange
information concerning trade in infringing goods.
Article 1720: Protection of Existing Subject Matter
1. Other than the provisions of Article 1705(7), this Agreement
does not give rise to obligations in respect of acts that
occurred before the date of application of the relevant
provisions of this Agreement for the Party in question.
2. Except as otherwise provided for in this Agreement, each
Party shall apply this Agreement to all subject matter existing
on the date of application of the relevant provisions of this
Agreement for the Party in question, and which is protected in a
Party on the said date, or which meets or comes subsequently to
meet the criteria for protection under the terms of this Chapter.
In respect of this paragraph and paragraphs 3 and 4, a Party's
obligations with respect to existing works shall be solely
determined under Article 18 of the Berne Convention and with
respect to the rights of producers of sound recordings in
existing sound recordings shall be determined solely under
Article 18 of that Convention, as made applicable under this
Agreement.
3. Except as required under Article 1705(7), and
notwithstanding paragraph 2, a Party shall not be required to
restore protection to subject matter that, on the date of
application of the relevant provisions of this Agreement for the
Party in question, has fallen into the public domain in its
territory.
4. Any acts in respect of specific objects embodying protected
subject matter which become infringing under the terms of
legislation in conformity with this Agreement, and which were
commenced or in respect of which a significant investment was
made, before the date of ratification of this Agreement by that
Party, any Party may provide for a limitation of the remedies
available to the right holder as to the continued performance of
such acts after the date of application of the Agreement for that
Party. In such cases, the Party shall, however, at least provide
for payment of equitable remuneration.
5. No Party shall be obliged to apply the provisions of Article
1705(2)(d) or Article 1706(1)(d) with respect to originals or
copies purchased prior to the date of application of the relevant
provisions of this Agreement for that Party.
6. No Party shall be required to apply Article 1709(10), or the
requirement in Article 1709(7) that patent rights shall be
enjoyable without discrimination as to the field of technology,
to use without the authorization of the right holder where
authorization for such use was granted by the government before
the text of the Draft Final Act Embodying the Results of the
Uruguay Round of Multilateral Trade Negotiations became known.
7. In the case of intellectual property rights for which
protection is conditional upon registration, applications for
protection that are pending on the date of application of the
relevant provisions of this Agreement for the Party in question
shall be permitted to be amended to claim any enhanced protection
provided under the provisions of this Agreement. Such amendments
shall not include new matter.
Article 1721: Definitions
For purposes of this Agreement:
confidential information includes trade secrets, privileged
information and other materials exempted from disclosure under
the Party's domestic law;
encrypted program-carrying satellite signal means a
program-carrying satellite signal that is transmitted in a form
whereby the aural or visual characteristics, or both, are
modified or altered for the purpose of preventing the
unauthorized reception by persons without the authorized
equipment that is designed to eliminate the effects of such
modification or alteration, of a program carried in that signal;
geographical indication means any indication that identifies a
good as originating in the territory of a Party, or a region or
locality in that territory, where a particular quality,
reputation or other characteristic of the good is essentially
attributable to its geographical origin;
in a manner contrary to honest commercial practices means at
least practices such as breach of contract, breach of confidence
and inducement to breach, and includes the acquisition of
undisclosed information by other persons who knew, or were
grossly negligent in failing to know, that such practices were
involved in the acquisition;
intellectual property rights refers to copyright and related
rights, trademark rights, patent rights, rights in layout designs
of semiconductor integrated circuits, trade secret rights, plant
breeders' rights, rights in geographical indications and
industrial design rights;
nationals of another Party means, in respect of the relevant
intellectual property right, persons who would meet the criteria
for eligibility for protection provided for in the Paris
Convention (1967), the Berne Convention (1971), the Geneva
Convention (1971), the International Convention for the
Protection of Performers, Producers of Phonograms and
Broadcasting Organizations (1961), the UPOV Convention (1978),
the UPOV Convention (1991) or the Treaty on Intellectual Property
in Respect of Integrated Circuits, as if each Party were a party
to those Conventions, and with respect to intellectual property
rights that are not the subject of these Conventions, "nationals
of another Party" shall be understood to be at least individuals
who are citizens or permanent residents of that Party and also
includes any other natural person referred to in Annex 201.1;
public includes, with respect to rights of communication and
performance of works provided for under Articles 11, 11bis(1) and
14(1)(ii) of the Berne Convention, with respect to dramatic,
dramatico-musical, musical and cinematographic works, at least,
any aggregation of individuals intended to be the object of, and
capable of perceiving, communications or performances of works,
regardless of whether they can do so at the same or different
times or in the same or different places, provided that such an
aggregation is larger than a family and its immediate circle of
acquaintances or is not a group comprising a limited number of
individuals having similarly close ties that has not been formed
for the principal purpose of receiving such performances and
communications of works; and
secondary uses of sound recordings means the use directly for
broadcasting or for any other public communication of a sound
recording.
=============================================================================
ANNEX 1701.3
Intellectual Property Conventions
1. Mexico shall:
(a) make every effort to comply with the substantive
provisions of the 1978 or 1991 UPOV Convention as soon
as possible and shall do so no later than two years
after the date of signature of this Agreement; and
(b) accept from the date of entry into force of this
Agreement, applications from plant breeders for
varieties in all plant genera and species and grant
protection, in accordance with such substantive
provisions, promptly after complying with subparagraph
(a).
2. Notwithstanding Article 1701(2)(b), this Agreement confers
no rights and imposes no obligations on the United States with
respect to Article 6bis of the Berne Convention, or the rights
derived from that Article.
=============================================================================
ANNEX 1705.7
Copyright
The United States shall provide protection to motion
pictures produced in another Party's territory that have been
declared to be in the public domain pursuant to 17 U.S.C. section
405. This obligation shall apply to the extent that it is
consistent with the Constitution of the United States, and is
subject to budgetary considerations.
=============================================================================
ANNEX 1710.9
Layout Designs
Mexico shall make every effort to implement the requirements
of Article 1710 as soon as possible, and shall do so no later
than four years after the date of entry into force of this
Agreement.
=============================================================================
ANNEX 1718.14
Enforcement of Intellectual Property Rights
Mexico shall make every effort to comply with the
requirements of Article 1718 as soon as possible, and shall do so
in any event no later than three years after the date of
signature of this Agreement.
Chapter 18 Back to table of contents