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EU-India FTA - IP chapter text (draft, date unknown)

posted 29-March-2013

Knowledge Economy International | 28.3.2013

Negotiating Text, EU/India FTA (BTIA)

Submitted by James Love

This is a copy of the negotiating text for the India-EU Broad-based Trade and Investment Agreement (BTIA), also referred to as the India/EU FTA. It does not include Article 6, which I assume concerns patents, or have any text for Article 9 on Geographical Indications. The text includes country positions. We are not certain of the date of this text. KEI has some commentary at http://keionline.org/node/1692

Consolidated draft India-EU FTA (BTIA)

IPR chapter

Art. 1 – Definition [Agreed]

For the purpose of this Agreement, intellectual property rights shall mean those rights protected in the TRIPS Agreement.

Art. 2 - Context [Agreed]

1. The Parties agree that fostering innovation and creativity improves competitiveness and is a crucial element in their economic partnership, in achieving sustainable development and promoting mutually beneficial trade between them.

2. The Parties also recognize that the protection and enforcement of intellectual property, in an appropriate manner, plays a key role in promoting creativity, innovation and competitiveness.

Art. 3 - Objectives [Agreed]

The objectives of this Chapter are as defined in Article 7 of TRIPS.

Art. 4 - Nature and Scope of Obligations

1. The Parties shall ensure adequate, effective, and non-discriminatory protection of intellectual property in accordance with the provisions of the WTO Agreement on Trade Related Aspects of Intellectual Property Rights and the provisions of this Chapter.

2. [INDIA: Nothing in this Chapter shall be construed as providing the basis for implementation or enforcement of any further obligations relating to intellectual property arising under any existing or future multilateral or plurilateral agreement dealing with intellectual property (e.g. the Anti-Counterfeiting Trade Agreement) to which either or both Parties have acceded.]

3. The Parties agree on the importance of harmonizing intellectual property protection and enforcement laws within their territory, in order to ensure that different intellectual property laws and regulations are not imposed by various member countries on the same intellectual property.

[INDIA: 4. Where harmonization is not achieved within its entire territory, each Party will ensure the free circulation of products covered by such intellectual property within its entire territory, provided such products comply with the intellectual property protection and enforcement laws, as the case may be, of one or more parts of its territory.]

[EU: 4. Each Party will ensure that intellectual property rights covering a product shall not extend to acts concerning that product which are carried out within the territory of the Party after the product has been put on the market in that territory by the proprietor of the rights or with his/her consent, unless there exist legitimate reasons for him to oppose further commercialisation of the goods, especially where the condition of the goods is changed or impaired after they have been put on the market.]

5. The Parties agree that the principles set out in Article 8 of the TRIPS Agreement apply and that nothing in this Agreement shall be construed to impair the capacity of the Parties to promote access to medicines.

Art. 5 - Transfer of Technology [Agreed]

1. The Parties agree to exchange views and information on their domestic and international practices and policies affecting transfer of technology. Attention shall also be paid to issues such as training and development of human capital to enable technology transfer to India.

2. Without prejudice to the obligations under the TRIPS agreement and provided that such measures are consistent with this agreement, the parties can take measures, as appropriate, to prevent or control licensing and other contractual practices or conditions pertaining to intellectual property rights which may adversely affect the international transfer of technology or that constitute an abuse of intellectual property rights by right holders or an abuse of information asymmetries in the negotiation of licenses.

3. The EU shall facilitate and promote the use of incentives to be granted to institutions and enterprises in its territory to encourage the transfer of technology to institutions and enterprises in the Republic of India.

4. The Parties shall ensure that the legitimate interests of the intellectual property right holders are protected as per the respective domestic laws.

Art. 7 - Copyright and Related Rights

[To be discussed in the light of legislative developments in India.]

Art. 7.1 - Protection Granted [Agreed]

The Parties shall comply with:
Articles 1 through 21 of the Berne Convention for the Protection of Literary and Artistic works and appendix thereto; and the Convention for the Protection of Producers of Phonograms Against Unauthorized Duplication of Their Phonograms.

Art. 7.2 - Duration of Authors’ Rights [Agreed]

1. The rights of an author of a literary or artistic work within the meaning of Article 2 of the Berne Convention shall run for the life of the author and for at least 50 years after his death, irrespective of the date when the work is lawfully made available to the public.

2. In the case of a work of joint authorship, the term referred to in paragraph 1 shall be calculated from the death of the last surviving author.

3. In the case of anonymous or pseudonymous works, the term of protection shall run for at least 50 years after the work is lawfully made available to the public. However, when the pseudonym adopted by the author leaves no doubt as to his identity, or if the author discloses his identity during the period referred to in the first sentence, the term of protection applicable shall be that laid down in paragraph 1.

4. In the case of works for which the term of protection is not calculated from the death of the author or authors and which have not been lawfully made available to the public within at least 50 years from their creation, the protection shall terminate.

Art. 7.3 - Duration of Related Rights

1. The rights of performers shall expire not less than 50 years after the date of the performance.

2. The rights of producers of phonograms shall expire not less than [IN: 50] [EU: 70] years after the publication is made.

3. The rights of producers of the first publication of a film shall expire not less than 50 years after the publication is made. The term "film" shall designate a cinematographic or audiovisual work or moving images, whether or not accompanied by sound.

4. The rights of broadcasting organizations shall expire not less than [IN: 25] [EU: 50] years after the first transmission of a broadcast, whether this broadcast is transmitted by wire or wireless, including by cable or satellite.

Art. 7.4 - Co-operation on Collective Management of Rights [Agreed]

The Parties shall facilitate the establishment of arrangements between their respective collecting societies with the purpose of mutually ensuring easier access and delivery of content between the territories of the Parties, as well as ensuring mutual transfer of royalties for use of the Parties’ works or other protected subject matters.

[EU: Article 7.4 bis - Reproduction right]

Place holder

Art. 7.5 - Broadcasting and Communication to the Public [EU: Right of communication to the public of works and right of making available1 to the public other subject matter]

1. The Parties shall provide authors with the exclusive right to authorise or prohibit any communication to the public of their works, by wire or wireless means, including the making available to the public of their works in such a way that members of the public may access them from a place and at a time individually chosen by them.

2. The Parties shall provide for the exclusive right to authorise or prohibit the making available to the public, by wire or wireless means, in such a way that members of the public may access them from a place and at a time individually chosen by them:

(a) for performers, of fixations of their performances;

(b) for phonogram producers, of their phonograms;

(c) for the producers of the first fixations of films, of the original and copies of their films;

(d) for broadcasting organisations, of fixations of their broadcasts, whether these broadcasts are transmitted by wire or over the air, including by cable or satellite.

3. The Parties agree that the rights referred to in paragraphs 1 and 2 shall not be exhausted by any act of communication to the public or making available to the public as set out in this Article.]

Art. 7.5 bis

[EU: The Parties shall provide for broadcasting organizations the exclusive right to authorize or prohibit the re-transmission of their broadcasts by wire or over the air, as well as the communication to the public of their broadcasts if such communication is made in places accessible to the public against payment of an entrance fee.

The Parties shall provide a right in order to ensure that a single equitable remuneration is paid by the user if a phonogram published for commercial purposes, or a reproduction of such phonogram, is used for broadcasting by wireless means or for any communication to the public, and to ensure that this remuneration is shared between the relevant performers and phonogram producers. The Parties may, in the absence of agreement between the performers and phonogram producers, lay down the conditions as to the sharing of this remuneration between them.]

[EU: Art. 7.6 - Resale Right

1. The Parties shall provide, for the benefit of the author of an original work of art, a resale right, to be defined as an inalienable right, which cannot be waived, even in advance, to receive a royalty based on the sale price obtained for any resale of the work, subsequent to the first transfer of the work by the author.

2. The right referred to in paragraph 1 shall apply to all acts of resale involving as sellers, buyers or intermediaries art market professionals, such as salesrooms, art galleries and, in general, any dealers in works of art.

3. The Parties may provide that the right referred to in paragraph 1 shall not apply to acts of resale where the seller has acquired the work directly from the author less than three years before that resale and where the resale price does not exceed a certain minimum amount.

4. The royalty shall be payable by the seller. The Parties may provide that one of the natural or legal persons referred to in paragraph 2 other than the seller shall alone be liable or shall share liability with the seller for payment of the royalty.

5. The protection provided may be claimed to the extent permitted by the Party where this protection is claimed. The procedure for collection and the amounts shall be matter for determination by national legislation.

Art. 7.7 - Protection of Technological Measures

1. The Parties shall provide adequate legal protection against the circumvention of any effective technological measures, which the person concerned carries out in the knowledge, or with reasonable grounds to know, that he or she is pursuing that objective.

2. The Parties shall provide adequate legal protection against the manufacture, import, distribution, sale, rental, advertisement for sale or rental, or possession for commercial purposes of devices, products or components or the provision of services which:

(a) are promoted, advertised or marketed for the purpose of circumvention of, or

(b) have only a limited commercially significant purpose or use other than to circumvent, or

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

3. For the purposes of this Agreement, the expression ’technological measures’ means any technology, device or component that, in the normal course of its operation, is designed to prevent or restrict acts, in respect of works or other subject-matter, which are not authorised by the right holder of any copyright or related right as provided for by national legislation. Technological measures shall be deemed ’effective’ where the use of a protected work or other subject matter is controlled by the right holders through application of an access control or protection process, such as encryption, scrambling or other transformation of the work or other subject-matter or a copy control mechanism, which achieves the protection objective

4. Where Parties provide for limitations to the rights as set out in article 7.7, they may also make provision to ensure that right holders make available to a beneficiary of an exception or limitation the means of benefiting from that exception or limitation – to the extent necessary to benefit from that exception or limitation and where that beneficiary has legal access to the protected work or subject matter concerned.

Art. 7.8 - Protection of Rights Management Information

1. The parties shall provide adequate legal protection against any person knowingly performing without authority any of the following acts:

(a) the removal or alteration of any electronic rights-management information;

(b) the distribution, importation for distribution, broadcasting, communication or making available to the public of works or other subject-matter protected under this Agreement from which electronic rights-management information has been removed or altered without authority, if such person knows, or has reasonable grounds to know, that by so doing he is inducing, enabling, facilitating or concealing an infringement of any copyright or any related rights as provided by national legislation.

2. For the purposes of this Agreement, the expression ’rights-management information’ means any information provided by right holders which identifies the work or other subject-matter referred to in this Agreement, the author or any other right holder, or information about the terms and conditions of use of the work or other subject-matter, and any numbers or codes that represent such information.

3. Paragraph 2 shall apply when any of these items of information is associated with a copy of, or appears in connection with the communication to the public of, a work or other subject-matter referred to in this Agreement.

Art. 7.9 - Exceptions and limitations

1. The Parties may provide for limitations or exceptions to the rights set out in the Articles 7.1 – 7.8 only in certain special cases which do not conflict with a normal exploitation of the subject matter and do not unreasonably prejudice the legitimate interests of the right holders in accordance with the conventions and international Treaties to which they are Parties.

2. The Parties shall provide that temporary acts of reproduction referred to in Article 7.4 bis, which are transient or incidental, which are an integral and essential part of a technological process and the sole purpose of which is to enable

(a) a transmission in a network between third parties by an intermediary, or

(b) a lawful use of a work or other subject-matter to be made, and which have no independent economic significance, shall be exempted from the reproduction right provided for in Article 7.4 bis.]

Art. 8 - Trademarks

Art. 8.1 - International Agreements

[EU: The European Union and the Republic of India shall accede to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (1989).]

Art. 8.2 - Registration Procedure [Agreed]

The European Union and the Republic of India shall provide for a system for the registration of trademarks in which each final negative decision taken by the relevant trademark administration is duly reasoned and communicated in writing. As such, reasons for the refusal to register a trademark shall be communicated in writing to the applicant who will have the opportunity to contest such refusal and to appeal a final refusal before Court.

The European Union and the Republic of India shall also provide the possibility to oppose trademark applications. Such opposition proceedings shall be adversarial.

The European Union and the Republic of India shall provide a publicly available electronic database of trademark applications and registered trademarks.

Art. 8.3 - Well-known trademarks

For the purpose of giving effect to the protection of well-known trademarks, as referred to in Article 6bis of the Paris Convention (1967) and Article 16(2) and (3) of the TRIPS Agreement, the Parties shall take into account, where appropriate, the Joint Recommendation adopted by the Assembly of the Paris Union for the Protection of Industrial Property and the General Assembly of the World Intellectual Property Organization (WIPO) at the Thirty?Fourth Series of Meetings of the Assemblies of the Member States of WIPO..

[EU alternative proposal:

In determining whether a mark is a well-known mark, the competent authority should take into account any circumstances from which it may be inferred that the mark is well known.

In particular, the competent authority should consider information submitted to it with respect to factors from which it may be inferred that the mark is, or is not, well known, including information concerning the degree of knowledge or recognition of the mark in the relevant sector of the public.

It is not required, as a condition for determining whether a mark is a well-known mark, that the mark has been used in, or that the mark has been registered or that an application for registration of the mark has been filed in or in respect of, the country concerned; nor that the mark is well known by the public at large in that country.

The owner of a well-known mark shall be entitled to request the prohibition, by a decision of the competent authority, of the use of a mark which is in conflict with the well-known mark.

Irrespective of the goods and/or services for which a mark is used, is the subject of an application for registration, or is registered, that mark shall be deemed to be in conflict with a well-known mark where the mark, or an essential part thereof, constitutes a reproduction, an imitation, a translation, or a transliteration of the well-known mark, and where:

(i) the use of that mark would indicate a connection between the goods and/or services for which the mark is used, is the subject of an application for registration, or is registered, and the owner of the well-known mark, and would be likely to damage his interests; or

(ii) the use of that mark is likely to impair or dilute in an unfair manner the distinctive character of the well-known mark, or would take unfair advantage of the distinctive character of the well-known mark.]

Art. 8.4 - Exceptions to the Rights Conferred by a Trademark

The Parties shall provide for the fair use of descriptive terms [IN: when such terms relate to the bona fide description of the character or quality of a person’s goods or services], [EU: , when such terms relate to the bona fide description of the character, quality or geographical origin of goods or services,] as a limited exception to the rights conferred by a trademark. They may provide other limited exceptions, provided that such limited exceptions take account of the legitimate interests of the owner of the trademark and of third parties.

Art. 9 - Geographical Indications

Art. 10 - Genetic resources and Associated Traditional Knowledge

[INDIA: For the purposes of Articles 10 and 11, traditional knowledge means and includes all forms of applied information/knowledge (such as literature, music, art forms, designs, medicinal preparations, method of treatment, any manufactured product or process, knowledge about the use of plants, seeds and other living species, etc.) existing, known and used by the members of the community from generation to generation and is evolving but shall not include such knowledge used by an individual or group of individuals in secret.]

1. The Parties [INDIA: shall] [EU: reaffirm their obligations to] ensure adequate and effective implementation of international treaties dealing with traditional knowledge and genetic resources to which both are parties. The Parties also reaffirm their sovereign rights over natural resources and recognize their rights and obligations as established by the Convention on Biological Diversity with respect to access to genetic resources, and to the fair and equitable sharing of benefits arising out of the utilization of these genetic resources, as well as regards to associated traditional knowledge.

2. Recognizing the importance and the value of their biological diversity and of the associated traditional knowledge, innovations and practices of indigenous and local communities, the Parties [EU: , where domestic legislation so permits,] [IN: shall take all] [EU: take appropriate and proportionate] measures to ensure that [EU: genetic resources utilized within its jurisdiction have been accessed in accordance with prior informed consent and that mutually agreed terms have been established as required by the domestic ABS regime or regulatory requirements of the other Party] [IN: access to the genetic resources of the other Party is subject to the prior informed consent of the Party providing the genetic resource, in accordance with the principles and provisions contained in the latter’s national and internal law].

3. [INDIA: Each Party shall take legislative, administrative or policy measures as appropriate for putting in place terms and conditions for [EU: facilitating] access to genetic resources and associated traditional knowledge within their territorial domain.]

4. [INDIA: The Parties shall take legislative, administrative or policy measures [EU: with the aim] to ensure fair and equitable sharing of the benefits arising from the use of genetic resources or traditional knowledge, whether or not associated with genetic resources, with the Party providing such resources. Such sharing shall be based [IN: on terms required by the law of the providing Party] [EU: on mutually agreed terms].]

[EU: In accordance with the article 15.7 CBD, the Parties reaffirm their obligation to take measures with the aim of sharing in a fair and equitable way the benefits arising from the utilization of genetic resources, and recognize that mutually agreed terms may include benefit-sharing obligations in relation to intellectual property rights arising from the use of genetic resources and associated traditional knowledge]

5. [INDIA: The Parties shall require by way of legislation that patent applications contain a mandatory declaration of the origin or source of the genetic resource and traditional knowledge used by the inventor or the patent applicant. The Parties will also require evidence of prior informed consent for access, and fair and equitable sharing of benefits arising from the commercial or other use of such resources and for associated traditional knowledge, with consequences of non-disclosure or wrongful disclosure to be included within the national patent regime and National Biodiversity Act.]

[EU: The Parties acknowledge the usefulness of requiring the disclosure of the origin or source of genetic resources and associated traditional knowledge in patent applications, considering that this contributes to the transparency about the uses of genetic resources and associated traditional knowledge. Any applicable effects of such requirement will be provided where domestic legislation so permits.]

6. The Parties recognize that data bases or digital libraries which contain relevant information constitute useful tools for patentability examination of inventions related to genetic resources and associated traditional knowledge.

7. In accordance with applicable international law and domestic law, the Parties agree to collaborate in the application of domestic frameworks on access to genetic resources and associated traditional knowledge, innovations and practices.

8. The Parties, [EU: subject to] previous mutual agreement, may review this [IN: Chapter] [EU: Article] subject to the results and conclusions of multilateral discussions.

9. [INDIA: Each Party shall provide for legal means to revoke IPRs granted in their territory when the other Party brings before it instances of cases of non-compliance with applicable legal provisions of the other Party on access to genetic resources and traditional knowledge, innovations and practices. Each Party also agrees to take adequate and effective deterrent measures in cases which do not involve grant of IPRs ]

Art. 11 - Traditional Knowledge

[EU proposes deletion of this article because the concept of Traditional Knowledge is not defined internationally and is still subject to discussions occurring in international fora.]

1. [INDIA: Each Party shall ensure that Traditional Knowledge which is publicly available is not misappropriated within the respective territories of the Parties concerned by taking appropriate administrative action including in the Patent Offices functioning in the jurisdiction of the respective parties or national competent authorities such as National Biodiversity authorities. ]

2. [INDIA: Both Parties shall ensure that access to the Traditional Knowledge Digital Library developed and maintained by India is accessed and utilized to screen patent applications for prior art.]

[EU: The Parties recognize the usefulness of the Traditional Knowledge Digital Library developed and maintained by India to screen patent applications for prior art.]

3. [INDIA: To prevent bio piracy each Party shall ensure that all patent offices having jurisdiction shall, before grant of a patent, provide the facility of filing third party observations at no cost and without time limit. Third parties shall include representatives of the owners and users of the TK/GR as well as representatives of users of the products produced by such TK/GR. The Parties shall ensure that procedures instituted in this regard are not unnecessarily complicated, costly or time consuming.]

4. [INDIA: EU shall create a mechanism to review, and wherever necessary revoke outside the opposition system, all cases where patents concerning Indian systems of medicine have been wrongfully granted due to absence of comprehensive prior art search.]

Art. 12 – Designs

Art. 12.1 - Definition [Agreed]

For the purpose of this Agreement, the definition of "design" will be used as per the laws in the respective territories of the Parties.

Art. 12.2 - Requirements for Protection [Agreed]

The European Union and the Republic of India shall provide for the protection of designs as per the laws in their respective territories.

Art. 12.3 - Exceptions [Agreed]

1. The Parties may provide limited exceptions to the protection of designs, provided that such exceptions do not unreasonably conflict with the normal exploitation of protected designs and do not unreasonably prejudice the legitimate interests of the owner of the protected design, taking account of the legitimate interests of third parties.

2. A design right shall not subsist in a design which is contrary to public order or morality.

Art. 12.4 - Rights Conferred [Agreed]

The owner of a protected design shall at least have the right to prevent third parties not having the owner’s consent in particular, from making, offering, putting on the market or importing a product in which the design is incorporated or to which it is applied, when such acts are undertaken for commercial purposes.

Art. 12.5 - Term of Protection [Agreed]

The duration of protection of an industrial design shall amount to at least 10 years from the date of the submission of the application for registration.

Art. 12.6 - Invalidity or Refusal of Registration [Agreed]

A design may be refused registration or declared invalid as per the applicable law of the Parties.

Art. 13 - Patents and Public Health [Agreed]

1. The Parties recognize the importance of the Doha Declaration on the TRIPS Agreement and Public Health adopted on 14 November 2001 by the Ministerial Conference of the World Trade Organization. In interpreting and implementing the rights and obligations under this Agreement, the Parties shall ensure consistency with this Declaration.

2. The Parties shall contribute to the implementation and respect the Decision of the WTO General Council of 30 August 2003 on Paragraph 6 of the Doha Declaration on the TRIPS Agreement and Public Health, as well as the Protocol amending the TRIPS Agreement, done at Geneva on 6 December 2005. Nothing in this Agreement shall be construed as to impair the capacity of the Parties to promote access to medicines and protect public health.

Art. 14 - Protection of Pharmaceutical Data Submitted to Obtain a Marketing Authorization [Agreed]

When a Party requires, as a condition of approving the marketing of pharmaceutical products which utilize new chemical entities, the submission of undisclosed test or other data, the origination of which involves a considerable effort, that Party shall protect such data against unfair commercial use. In addition, the Parties 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 commercial use.

Art. 15 - Data Protection on Plant protection products and rules on avoidance of duplicative testing

To be discussed in the light of legislative developments in India

[INDIA: Each Party in its laws and regulations shall provide for protection of undisclosed information in accordance with and subject to the flexibilities in the TRIPS agreement]

[EU: 1. The Parties shall determine safety and efficacy requirements before authorizing the placing on the market of plant protection products.

2. The Parties shall recognize a temporary right to the owner of a test or study report submitted for the first time to achieve a marketing authorization for a plant protection product.

During such period, the test or study report will not be used for the benefit of any other person aiming to achieve a marketing authorization for plant protection product, except when the explicit consent of the first owner is proved. This right will be hereinafter referred as data protection.

3. The test or study report should fulfill the following conditions:

(a) be necessary for the authorization or for an amendment of an authorization in order to allow the use on other crops, and

(b) be certified as compliant with the principles of good laboratory practice or of good experimental practice.

4. The period of data protection should be at least [……] starting at the date of the first authorization in that Party.

5. Rules to avoid duplicative testing on vertebrate animals will be laid down by the Parties. Any applicant intending to perform tests and studies involving vertebrate animals shall take the necessary measures to verify that those tests and studies have not already been performed or initiated.

6. The new applicant and the holder or holders of the relevant authorisations shall make every effort to ensure that they share tests and studies involving vertebrate animals. The costs of sharing the test and study reports shall be determined in a fair, transparent and non-discriminatory way. The prospective applicant is only required to share in the costs of information he is required to submit to meet the authorisation requirements.

7. Where the new applicant and the holder or holders of the relevant authorisations of plant protection products cannot reach agreement on the sharing of test and study reports involving vertebrate animals, the new applicant shall inform the Party.

8. The failure to reach agreement shall not prevent the Party from using the test and study reports involving vertebrate animals for the purpose of the application of the new applicant.

9. The holder or holders of the relevant authorization shall have a claim on the prospective applicant for a fair share of the costs incurred by him. The Party may direct the parties involved to resolve the matter by formal and binding arbitration administered under national law.]

Art. 16 - Plant Varieties [Agreed]

The Parties shall cooperate to promote and reinforce the protection of plant varieties subject to their applicable laws.

Sub-Section 3 – Enforcement of Intellectual Property Rights

Civil remedies and procedures

Art. 17 - General Obligations

1. Both Parties reaffirm their commitments under the TRIPS Agreement and in particular its Part III, and shall provide for the measures, procedures and remedies necessary to meet their obligations therein.

2. Procedures concerning the enforcement of intellectual property rights shall be fair and equitable. They shall not be unnecessarily complicated or costly, or entail unreasonable time-limits or unwarranted delays.

3. It is understood that this sub-section does not create any obligation to put in place a judicial system for the enforcement of intellectual property rights distinct from that for the enforcement of law in general, nor does it affect the capacity of the Parties to enforce their law in general. Nothing in this sub-section creates any obligation with respect to the distribution of resources as between enforcement of intellectual property rights and the enforcement of law in general.

Art. 18 - Entitled Applicants [Agreed]

The Parties shall recognize the holders of intellectual property rights, licensees and professionals having a right to represent holders of IPRs in so far as permitted by and in accordance with the provisions of the applicable law, as persons entitled to seek application of measures, procedures and remedies for IPR enforcement.

Art. 19 - Evidence [Agreed]

The judicial authorities shall have the authority, on application by a party which has presented reasonably available evidence sufficient to support its claims and has specified evidence relevant to substantiation of its claims which lies in the control of the opposing party, to order that this evidence be produced by the opposing party, subject in appropriate cases to conditions which ensure the protection of confidential information.

Art. 20 - Measures for Preserving Evidence

[INDIA: The judicial authorities shall have the authority to order appropriate provisional measures to preserve relevant evidence in regard to the alleged infringement.]

[EU: The Parties shall ensure that, even before the commencement of proceedings on the merits of the case, the competent judicial authorities may, on application [by an entity who has presented reasonably available evidence to support his claims that his intellectual property right has been infringed or is about to be infringed], order prompt and effective provisional measures to preserve relevant evidence in respect of the alleged infringement, subject to the protection of confidential information. Those measures shall be taken, if necessary without the other party being heard, 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.]

Art. 21 - Right to Information

[EU: Without prejudice to other statutory provisions which, in particular, govern the protection of confidentiality of information sources or the processing of personal data,] The Parties [INDIA: may] [EU: shall] provide that the judicial authorities shall have the authority, unless this would be out of proportion to the seriousness of the infringement, to order 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 of their channels of distribution.

Art. 22 - Provisional and Precautionary Measures

[INDIA:

1. The judicial authorities shall have the authority to order prompt and effective provisional measures to prevent an infringement of any intellectual property right from occurring, and in particular to prevent the entry into the channels of commerce in their jurisdiction of goods, including imported goods immediately after customs clearance and to preserve relevant evidence in regard to the alleged infringement ;

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 harm 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 provide any reasonably available evidence in order to satisfy themselves with a sufficient degree of certainty that the applicant is the right holder and that the applicant’s right is being infringed or that such infringement is imminent, and to order the applicant to provide a security or equivalent assurance sufficient to protect the defendant and to prevent abuse.

4. Where provisional measures 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 place upon request of the defendant with a view to deciding, within a reasonable period after the notification of the measures, whether these measures shall be modified, revoked or confirmed.

5. The applicant may be required to supply other information necessary for the identification 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 paragraphs 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 case are not initiated within a reasonable period, to be determined by the judicial authority ordering the measures where a Party’s law so permits or, in the absence of such a determination, not to exceed 20 working days or 31 calendar days, whichever is the longer.

7. Where the provisional measures are revoked or where they lapse due to any act or omission by the applicant, or where it is subsequently found 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, upon request of the defendant, to provide the defendant appropriate compensation for any injury caused by these measures.

8. To the extent that any provisional measure can be ordered as a result of administrative procedures, such procedures shall conform to principles equivalent in substance to those set forth in this Article.]


[EU: 1. The Parties shall ensure that the judicial authorities may, at the request of the applicant issue an interlocutory injunction intended to prevent any imminent infringement of an intellectual property right, or to forbid, on a provisional basis and subject, where appropriate, to a recurring penalty payment where provided for by domestic law, the continuation of the alleged infringements of that right, or to make such continuation subject to the lodging of guarantees intended to ensure the compensation of the right holder. An interlocutory injunction may also be issued, under the same conditions, against an intermediary whose services are being used by a third party to infringe an intellectual property right.

2. An interlocutory injunction may also be issued to order the seizure or delivery up of the goods suspected of infringing an intellectual property right so as to prevent their entry into or movement within the channels of commerce.

3. In the case of an infringement committed on a commercial scale, the Parties shall ensure that, if the applicant demonstrates circumstances likely to endanger the recovery of damages, the judicial authorities may order the precautionary seizure of the movable and immovable property of the alleged infringer, including the blocking of his/her bank accounts and other assets. To that end, the competent authorities may order the communication of bank, financial or commercial documents, or appropriate access to the relevant information.]

[EU: Art. 22 bis – Liability of internet service providers
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Art. 23 - Corrective Measures [Agreed]

In order to create an effective deterrent to infringement, the judicial authorities shall have the authority to order that 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 harm caused to the right holder, or, unless this would be contrary to existing constitutional requirements, destroyed. The judicial authorities shall also have the authority to order that 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 such requests, the need for proportionality between the seriousness of the infringement and the remedies ordered as well as the interests of third parties shall be taken into account. In regard to counterfeit trademark 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.

Art. 24 – Injunctions

The judicial authorities shall have the authority to issue injunctions against a party to prohibit the continuation of the infringement of an intellectual property right by that party.

[EU: The Parties shall also ensure that the measures referred to in this provision may also apply against those whose services have been used to infringe IPR to the extent they have been involved in the process.]

[EU: Art. 25 - Alternative Measures

The Parties may provide for measures to order reasonable pecuniary compensation to be paid to the injured party in case a person has acted unintentionally and without negligence, in appropriate cases where no other measures are enforced and in so far as permitted under the applicable law of the Parties.]

[INDIA: to be deleted].

Art. 26 - Damages [Agreed]

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 infringement of that person’s intellectual property right by an infringer who knowingly, or with reasonable grounds to know, engaged in infringing activity.

Art. 27 - Legal Costs [Agreed]

The judicial authorities shall also have the authority to order the infringer to pay the right holder expenses, which may include appropriate attorney’s fees. In appropriate cases, Parties may authorize the judicial authorities to order recovery of profits and/or payment of pre-established damages even where the infringer did not knowingly, or with reasonable grounds to know, engage in infringing activity.

Art. 28 - Publication of Judicial Decisions [Agreed]

Parties shall ensure that, in legal proceedings instituted for infringement of an intellectual property right, the judicial authorities may order, the publication of the decisions based on the rules of reporting of judgments generally followed in the territory of that Party.

Art. 29 - Presumption of Ownership

For the purpose of instituting any infringement proceedings provided for under this Agreement in relation to the enforcement of copyright and related rights, the name of the person appearing on the work shall be presumed to be the first owner of rights unless the contrary is proved. However this presumption will not be applicable in case of [INDIA: cinematographic film], sound recording or other related rights if the dispute is with the author of the works.

If this may address India’s concerns, we could propose to replace "first owner" by "holder". Instead of "this presumption will not be applicable in case of …", we could also propose to write "this presumption will be optional in case of …", which would leave freedom to the Parties.]

[India will provide alt. drafting.]

Art. 30 - Border Measures

1. The Parties shall enable a right holder, who has valid reasons for suspecting that the importation [EU: or exportation] of counterfeit trademarks goods, pirated copyright goods, [EU: or goods infringing designs or geographical indications] may take place, to lodge an application in writing with competent authorities, for the suspension by customs authorities of the clearance of such goods.

2. [INDIA: Both Parties shall ensure that goods in transit through their respective territories are not subject to any enforcement procedures relating to infringement of IPRs.]

[EU: 3. The Parties agree to cooperate with each other with a view to eliminating international trade in goods infringing intellectual property rights. For this purpose, they shall establish and notify contact points in their administrations and be ready to exchange information on trade in infringing goods. They shall, in particular, promote the exchange of information and cooperation between customs authorities with regard to trade in counterfeit trademark goods and pirated copyright goods. ]

Art. 31 - Co-operation

The Parties agree to cooperate in the areas of capacity building, human resource development and awareness generation in the field of intellectual property rights.

[EU: 1) Subject to the provisions of Article [X, horizontal art. on assistance/co-operation issues of this Agreement,] the Parties agree to co-operate with a view to monitor the agreed regime under this chapter.

Areas of cooperation are, amongst others, the following:

(a) exchange of information on the legal framework concerning intellectual property rights and relevant rules of protection and enforcement; exchange of views and experiences in the European Union and the India on legislative progress;

(b) exchange of experiences in the European Union and the India on enforcement of intellectual property rights; co-ordination to prevent the flows of counterfeit goods, including with other countries;

(c) capacity-building; exchange and training of personnel;

(d) promotion and dissemination of information on intellectual property rights in, inter alia, business circles and civil society; public awareness of consumers and right holders;

(e) enhancement of institutional co-operation, for example between intellectual property offices];

(f) actively promoting awareness and education of the general public for intellectual property rights policies. for instance by collaborating in the formulation of effective strategies to identify key audiences and create communication programmes to increase consumer and media awareness on the impact of intellectual property violations, including the risk to health and safety.

2. The Parties recognize the benefits from their existing cooperation agreement in the customs area and recognize the importance of exchanging of information and the coordination between the relevant customs authorities.

3. Without prejudice and as a complement to paragraphs 1 & 2, the Parties agree to establish and maintain an intellectual property subcommittee to monitor the provisions of this chapter, to discuss on newly developed intellectual property related issues and to address other relevant topics including geographical indications.]

Art. 32 - Revision clause of the IPR chapter

[EU: Each Party shall accord to the nationals of the other party treatment no less favourable than that it accords to its own nationals with regard to the protection of intellectual property in conformity with Article 3 of TRIPS. Any development of future legislation in the area on intellectual property shall be consistent with the above principle.

The Parties shall enter into negotiations to review this chapter X years after the entry into force of this agreement with a view to enhance protection and enforcement of Intellectual Property Rights. In the meantime Parties agree to maintain a dialogue and exchange views in order to determine the elements subject to renegotiations.]

[IN: Art. 33 - Relationship with Dispute Resolution Chapter

The dispute settlement procedures provided for in Title [Dispute Resolution] shall not apply to this Title [] [Intellectual Property Rights]”.]

Annexes I, II and III

[INDIA: Needs to be deleted]

[EU: As per text provided ]

keywords: EUFTAs (texts of)IndiaIPRtraditional knowledge source : KEI

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TTIP debate - Brussels | 19-Apr-2014

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