US-Thailand FTA - More IPR text proposed by US (2006)

CHAPTER 14 : INTELLECTUAL PROPERTY RIGHTS

ARTICLE 14 : GENERAL PROVISIONS

1. Each Party shall, at a minimum, give effect to this Chapter.

2. Each Party shall make best efforts to ratify or accede to the following agreements:

  • a) the Patent Law Treaty (2000); and
  • b) the Hague Agreement Concerning the International Registration of Industrial Designs (1999)

3. Each Party shall ratify or accede to the following agreements:

  • (a) the Patent Cooperation Treaty (1970), as amended in 1979;
  • (b) the Convention Relating to the Distribution of Programme-Carrying Signals Transmitted by Satellite (1974);
  • (c) the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (1989);
  • (d) the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure (1977), as amended in 1980;
  • (e) the International Convention for the Protection of New Varieties of Plants (1991) (UPOV Convention);
  • (f) the Trademark Law Treaty (1994);
  • (g) the WIPO Copyright Treaty (1996); and
  • (h) the WIPO Performances and Phonograms Treaty (1996)

More Extensive Protection and Enforcement

4. A Party may implement in its domestic law more extensive protection and enforcement of intellectual property rights tan required under this Chapter, provided that such protection and enforcement does not contravene this Chapter.

National Treatment

5. In respect of all categories of intellectual property covered in this Chapter, each Party shall accord to nationals [1] of the other Party treatment no less favorable than it accords to its own nationals with regard to the protection [2] and enjoyment of such intellectual property rights and any benefits derived from such rights.

6. A Party may derogate from paragraph 5 in relation to its judicial and administrative procedures, including any procedure requiring a national of the other Party to designate in its territory, provided that such derogation:

  • a) is necessary to secure compliance with laws and regulations that are not inconsistent with this Chapter; and
  • b) is not applied in a manner that would constitute and disguised restriction on trade,

7. Paragraph 5 does not apply to procedures provide in multilateral agreements concluded under the auspices of the World Intellectual Property Organization in relation to the acquisition or maintenance of intellectual property rights.

8. Except as otherwise provided in this Chapter, including Article 14.4.6, this Chapter gives rise to obligations in respect of all subject matter existing at the date of entry into force of this Agreement that is protected on that date in the Party where protection is claimed, or that meets or comes subsequently to meet the criteria for protection under the terms of this Chapter.

9. Except as otherwise provided in this Chapter, including Article 14.4.6, a Party shall not be required to restore protection to subject matter, that on the date of entry into force of this Agreement has fallen into the public domain in the Party.

10. This Chapter does not give rise to obligations in respect of acts that occurred before the date of entry into force of Agreement.

11. Further to Article ... (Publication), each Party shall ensure that all laws, regulations, and procedures concerning the protection or enforcement of intellectual property rights are writing and are published, [3] or where such publication is not practicable, made publicly available, in national language in such a manner as to enable governments and right holders to become acquainted with them, with the object of making the protection and enforcement of intellectual property rights transparent.

ARTICLE 14.2 : TRADEMARKS, INCLUDING GEOGRAPHICAL INDICATIONS

1. Neither Party may require, as a condition of registration, that signs be visually perceptible and neither Party may deny registration of a trademark solely on grounds that the sign of which it is composed is a sound or that the sign includes a scent.

2. Each Party shall provide that trademarks shall include certification marks. Each Party shall also provide that signs that may serve, in the course of trade, as geographical indications are eligible for protection as trademarks. [4]

3. Each Party shall ensure that its measures mandating the use of term customary in common language as the common name for a good or service (“common name”) including, inter alia, requirements concerning the relative size, placement or style of use or effectiveness of trademarks used in relation to such good or service.

4. Each Party may provide limited exceptions to rights conferred by a trademark, such as fair use of descriptive terms, provided that such exceptions take account of legitimate interest of owner of the trademarks and third parties.

5. Each Party shall provide that the owner of a registered trademark shall have the exclusive right to prevent all third parties not having the owner’s consent from using in the course of trade identical or similar signs, including geographical indications, for goods or services that are related 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.

6. Article 6bis of the Paris Convention for the Protection of Industrial Property (1976) shall apply, mutatis mutandis, to goods or services that are not identical or similar to those identified by a well-known trademark, [5] whether registered or not, provided that use of that trademark in relation to those goods or services would indicate a connection between those goods or services and the owner of the trademark, and provided that the interests of the owner of the trademark are likely to be damaged by such use.

7. Each Party shall provide a system for the registration of trademarks, which shall include:

  • (a) providing to the applicant a communication in writing, which may be electronic, of the reasons for a refusal to register a trademark;
  • (b) providing an opportunity for the applicant to respond to communications from the trademark authorities, to contest an initial refusal, and to appeal judicially a final refusal to register;
  • (c) providing an opportunity for interested parties to petition to oppose a trademark application or to seek cancellation of a trademark after it has been registered; and
  • (d) a requirement that decisions in opposition or cancellation proceedings be reasoned and in writing.

8. Each Party shall provide:

  • (a) a system for the electronic application, processing, registration, and maintenance of trademarks, and
  • (b) a publicly available electronic database — including an on-line database — of trademark applications and registrations,

9. Each Party shall provide that:

  • (a) each registration or publication that concerns a trademark application or registration and that indicates goods or services shall indicate the goods or services by their names, grouped according to the classes of the classification established by the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (1979) (“Nice Classification”).
  • (b) goods or services may not be considered as being similar to each other solely on the ground that, in any registration or publication, they appear in the same class of the Nice Classification. Conversely, each Party shall provide that goods or services may not be considered as being dissimilar from each other solely on the ground that, in any registration or publication, they appear in different classes of the Nice Classification.

10. Neither Party may require recordation of trademark licenses to establish the validity of the license, to assert any rights in a trademark, or for other purposes

11. Each Party shall provide that initial registration and each renewal of registration of a trademark shall be for a term of no less than 10 years.

12. If a Party shall provide the means to apply for protection or petition for recognition of geographical indications, through a system of protection of trademarks or otherwise, it shall accept those applications and petitions without the requirement for intercession by a Party on behalf of its nationals and shall:

  • (a) process applications or petitions, as relevant with a minimum of formulations.
  • (b) make its regulations governing filling of such applications or petition, as the case may be, readily available to the public.
  • (c) provide that applications or petitions, as the case may be, for geographical indications are published for opposition, and shall provide procedures for opposing geographical indications that are the subject of applications or petitions. Each Party shall also provide procedures to cancel a registration resulting from an application or a petition.
  • (d) provide that measures governing the filling of applications or petitions for geographical indications set out clearly the procedures for these actions. Such procedures shall include contact information sufficient for applicants and/or petitioners to obtain specific procedural guidance regarding the processing

13. Each Party shall provide that grounds for refusing protection or recognition of a geographical indication include the following:

  • (a) the geographical indication is likely to cause confusion with a trademark that is the subject of a good-faith pending application or registration; and
  • (b) the geographical indication is likely to cause confusion with a preexisting trademark, the rights to which have been acquired through use in good faith in that Party.

    ARTICLE 14.3: DOMAIN NAMES ON THE INTERNET

1. Each Party shall require that the management of its country-code top top-level domain (ccTLD) provide an appropriate procedure for the settlement of disputes, based on the principles established in the Uniform Domain-Name Dispute-Resolution Policy (UDRP), in order to address the problem of trademark cyberpiracy.

2. Each Party shall require that management of its ccTLD provide online public access to a reliable and accurate database of contact information for domain name registrants.

Footnotes:

[1For purpose of Articles 14.1.5, 14.1.6, 14.3.2 and 14.7.1 a national of Party shall also mean, in respect of the relevant right, an entity located in such Party that would meet the criteria for eligibility for protection provided for in the agreements listed in Article 14.1.2 and the TRIPS Agreement.

[2For purposes of this paragraph, “protection” shall include matters affecting the availability, acquisition, scope, maintenance and enforcement of intellectual property rights as well as matters affecting the use of intellectual property rights specifically covered by this Chapter. Further for this paragraph, “protection” shall also include the prohibition on circumvention of effective technological measures pursuant to article 14.4.7 and the provisions concerning right management information pursuant to article 14.4.8

[3For greater certainty, a Party may satisfy the requirement for publication by making it available to the public on the internet.

[4Geographical indications means indications that identify a good as originating in the territory of a Party, or a region or locality in that territory, where a given quality, reputation, or other characteristic of the good is essentially attributable to its geographic origin. Any sign or combination of signs (such as words - including geographical and personal names, as well as letters, numerals, figurative elements and including single colors), in any from whatever, shall be eligible to be a geographical indication.

[5In determining whether a trademark is well known, the reputation of the trademark need not extend beyond the sector of the public that deals with relevant goods or services.

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