RESTRICTEDWORLD TRADE
ORGANIZATIONIP/C/W/178
24 May 2000
(00-2105)
Council for Trade-Related Aspects
of Intellectual Property RightsOriginal:  English
REVIEW OF LEGISLATION
Questions Posed by the European Communities and their member States
By means of communications from the Permanent Delegation of the European Commission,
dated 22 May 2000, the Secretariat has received copies of the following questions addressed toHong Kong, China;  Israel;  Macau, China;  and Trinidad and Tobago.
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HONG KONG, CHINA
A. C
OPYRIGHT AND RELATED RIGHTS
1. Paragraph 11.0 of document IP/N/1/HKG/Add.1 explains that Article 11 of the TRIPS
Agreement has been implemented, insofar as comput er programs are concerned, by the provisions of
section 22(1)(c) and section 25 of the Copyright Ordinance, but that the provisions of Article 11 have
not been extended to films because there is no widespread problem resulting from the copying of
rented films.  Please explain what analysis has been  made of pirate films in order to know that they
have not been copied from rented ones.
2. Section 65 of the Copyright Ordinance states th at "Notwithstanding section 23, copyright in a
work is not infringed by the making of a transient and incidental copy which is technically required
for the viewing or listening of the work by a member of the public to whom a copy of the work is
made available".  It is noted, however, that in section 23 it is nowhere made clear that the copy of the
work, which is made available to the public, should be an authorized copy.  Please explain how
section 65 complies with Article 13 of the TRIPS Agreement because legalizing transient andincidental copies of a work, made available without authorization, would compound this illegality.
3. Having regard to Article 7 of the Copyright Ordinance and Article 14.2 of the TRIPS
Agreement, could Hong Kong, China please confir m that copyright can subsist in a sound recording
of a film soundtrack?
4. Could Hong Kong, China please explain how se ction 43 of the Copyright Ordinance complies
with Article 13 of the TRIPS Agreement insofar as section 43 provides that the audience at a
performance in an educational establishment can be an extensive one composed, not solely of teachers
and pupils at the establishment ( i.e. those directly connected with the establishment's educational
activities), but also parents and guardians of the pupils?  In particular, where a charge is made for a
performance before such an audience, would the authors of the works performed be denied a share ofthe proceeds?IP/C/W/178
Page 2
B. GEOGRAPHICAL INDICATIONS
5. Paragraph 22.1.0 and 22.1.1 of document IP/N/1/HKG/2/Add.1 explains that a geographical
indication can be applied for as an ordinary trademark.  Please explain how it should be interpreted in
conjunction with Section 9(1)(d) of the TMO.
6. Please clarify if an opposition to the registration of a trademark, that contains a geographical
indication, can only be made through Section 12(1) of the TMO or if the Registrar has the authority to
refuse or invalidate ex officio such a trademark on the basis of Section 9(1)(d) of the TMO.
7. Please clarify Section 64(4) of the TMO and provide, if any, examples of geographical names
that were allowed to be used despite the existence of a certification trademark.
8. Please clarify whether or not Section 12(1) of the TMO provides for the additional protection
under Article 23 of the TRIPS Agreement.
9. Please give examples, if any, of conditions or limitations imposed by the Registrar or the
Court pursuant to Section 22 of the TMO in case of homonymous signs.IP/C/W/178
Page 3
ISRAEL
A. COPYRIGHT AND RELATED RIGHTS
1. Does copyright subsist in a computer program under the same terms as literary works?  Please
explain how the answer is derived from the notified legislation.
2. What is the legal status of the different documents notified as forming Israel's copyright
regime?  Are they all legally binding and do recent laws supersede older provisions in cases of
inconsistency?
3. Please provide recent examples of criminal penalties for copyright infringement.
4. Does Israel's law provide for criminal penalties against parties who knowingly use illegal
software?  If not, why?  If so, under which statutory provisions?
5. Are statutory damages for breach of copyright applied by the Supreme Court on a per copy or
a per title basis?  If on a per title basis, how does this deter piracy on a commercial scale?
6. Do damages and penalties for copyright infringement amount to adequate compensation and
deterrent for further infringements?  Please provide recent examples of damages or penalties appliedby the courts which meet these standards.
7. Does the Copyright (TRIPS Agreement) Order 5760-1999 apply to sound recordings and
other works created before 1 January 2000?
8. Can section 5 of the Copyright (TRIPS Agreement) Order be used to reduce the term of
protection below the levels mandated in Article 2 of the TRIPS Agreement?  What is the purpose andlegal basis of section 5?
B. 
TRADEMARKS
9. Is prevention of unauthorized use of identical or similar signs for goods or services, which are
similar to those in respect of which a trademark is registered, available to trademark holders under
Israeli Law?  If so, under which provisions?
10. Please explain what "new or original" means in Articles30(1) and 31(a) of the Ordinance.
C. INDUSTRIAL DESIGNS
11. How is the right to prevent unauthorized making, selling or importing articles, bearing the
protected design, provided in the Israeli legislation?
D. PATENTS
12. Please explain whether or not in your legislation, patent or otherwise, patent rights are
enjoyed without any exclusions.  If exclusions are provided for, please describe in detail how theseexclusions are applied in legal as well as practical terms.
13. Please explain whether or not plants, animals and essentially biological processes are
excluded from patentability in your legislation.  If so, please explain the relevant section of your
legislation and explain its formulation.IP/C/W/178
Page 4
14. Please explain how your legislation protects pa tent right holders against importing and against
offering for sale of a patented invention.
15. Please describe if your legislation provides for limited exceptions to the exclusive rights
conferred by a patent.  If affirmative, please make a reference to relevant legislation.
16. Please explain how your legislation explicitly ensures that a proposed user has made efforts to
obtain authorization from the right holder on reasonable commercial terms and conditions and that
such efforts have not been successful within a reasona ble period of time.  In this context, how do you
define "reasonable period of time"?  Please also explain how your legislation ensures that the use of a
compulsory licence shall be authorized predominan tly for the supply of the domestic market of the
Member authorizing such use.
17. Please explain how your legislation provides for the enhanced patent protection of patents or
patent applications pending on 1 January 1995.
18. Please explain how your legislation provides for the reversal of the burden of proof in relation
to process patents.
19. With regard to the definition of "exploitation" of an invention in section 1 of the Patent Law,
is the act of "making" not included as is required by Article 28.1(a) of the TRIPS Agreement?
E. PROTECTION OF UNDISCLOSED INFORMATION
20. How is protection of undisclosed information effected in Israel?
F. ENFORCEMENT
21. What are the requirements for surety or bonds placed on a plaintiff in patent cases?
22. What are the requirements imposed by Israeli courts for evidence necessary to the granting of
orders to preserve relevant evidence?IP/C/W/178
Page 5
MACAU, CHINA
A. COPYRIGHT AND RELATED RIGHTS
1. What is the basis in the TRIPS Agreement for the limitations or exceptions to rights of
assignees of copyright contained in Chapter V of the Copyright Decree, especially as specified in
Articles 36 and 38 of the Decree?
2. What is meant by "material reciprocity" in Article 50 of the Copyright Decree?
3. What are the limitations on the private use exception (Copyright Decree Article 6) which stop
the exception conflicting with normal exploitation of the work and keep it from unreasonably
prejudicing the legitimate interests of the right holder?
4. What is the meaning of "whether or not he resides on the Territory" as applied in Article 175
of the Copyright Decree to presumed consent?
5. Article 179 of the Copyright Decree appears to provide for a presumption that an authorized
broadcast of a performance may be recorded and reproduced without the performer's consent.  Please
explain if this interpretation is correct and, if so, how Article 14.1 of the TRIPS Agreement applies in
this context.
6. In what circumstances are seizure and forfeiture of pirate products available under the laws of
Macau, China and which legal provisions specify rules on seizure and forfeiture?
B. TRADEMARKS
7. Please give the definition of a sign under your national legislation and explain under which
conditions it is protectable.
8. Please confirm whether or not services are a protectable subject-matter in your trademark law.
Please confirm if signs such as trade names are protectable.  Please describe if elements such as
sound, perfumes and containers are protectable.
9. Please explain what the requirements of use are, if any, as a condition for a trademark
registration.  Please explain the definition of use and the conditions of maintenance of a registration inthat respect.
10. Please confirm whether or not your legislation permits that the registration of trademarks be
indefinitely renewable.
11. Please describe the special requirements, if any, prescribed by your legislation concerning the
use of a trademark.
C. 
GEOGRAPHICAL INDICATIONS
12. Please explain whether or not your trademark registration authority refuses a trademark
application if it contains a geographical indication.
13. Please give the definition of a geographical indication in your legislation.
14. Please describe and explain the provisions of your legislation establishing a link, if any,
between the characteristics of an indication and its geographical origin.IP/C/W/178
Page 6
15. Please describe whether or not, how additional protection is granted by your legislation to
wines and spirits.  Please mention other types of products, if any, covered by this additional
protection.
16. Please explain how exceptions under Article 24  of the TRIPS Agreement are used in your
jurisdiction.  Please provide examples of the use of the exceptions by courts or lists of namesconsidered as generic in your jurisdiction.
D. 
INDUSTRIAL DESIGNS
17. Please explain whether or not your legislation extends the protection to designs dictated
essentially by technical or functional considerations.  Please explain how textile designs are protected.
18. Please explain how your legislation protects right holders of a design against importing of
articles bearing embodied or copied design.
19. Please mention whether or not your legislation provides for the right to issue a compulsory
licence for industrial designs.
20. Please indicate for which period of time your legislation grants protection for industrial
designs.
21. Please describe how your legislation defines the notions of: novelty, inventiveness and
industrial application.
E. PATENTS
22. Please explain whether or not in your legislation, patent or otherwise, patent rights are
enjoyed without any exclusions.  If exclusions are provided for, please describe in detail how these
exclusions are applied in legal as well as practical terms.
23. Please explain whether your legislation provides for the exclusion of inventions from
patentability based on ordre public or morality.  If so, please explain the relevant section of your
legislation and explain its formulation.  Please also explain if it has been applied in practice.
24. Please explain whether or not diagnostic, therap eutic and surgical methods are excluded from
patentability in your legislation.  If so, please ex plain the relevant section of your legislation and
explain its formulation.
25. Please explain whether or not plants, animals and essentially biological processes are
excluded from patentability in your legislation.  If so, please explain the relevant section of your
legislation and explain its formulation.
26. Please describe how micro-organisms, non-essentially biological processes, microbiological
processes and plant varieties are protected in your legislation.  Please explain in this respect the
relevant sections of your legislation.
27. Please explain how your legislation protects pa tent right holders against importing and against
offering for sale of a patented invention.
28. Please inform if your legislation provides for patent product protection of pharmaceutical and
agricultural chemical products.  In affirmative, please indicate the legal reference.IP/C/W/178
Page 7
29. Please clarify if the patent protection of a proces s, as provided for in your legislation, covers
the product obtained directly by that process.
30. Please explain the additional conditions, if any, in your legislation other than the sufficient
disclosure of the invention in Article 29 of the TRIPS Agreement ( e.g. submission of justification for
access to genetic material or prior informed consent to its use).  If such additional conditions exist,please point out the relevant legislation and describe the additional conditions in detail.
31. Please describe if your legislation provides for limited exceptions to the exclusive rights
conferred by a patent.  If affirmative, please make a reference to relevant legislation.
32. Please explain whether or not your legislation provides for compulsory licensing.  If so,
please explain in detail the conditions under which a compulsory licence may be granted.  In
particular, please explain how your national legislation considers individual merits in the
authorization of such use.
33. Please explain how your legislation explicitly ensures that a proposed user has made efforts to
obtain authorization from the right holder on reasonable commercial terms and conditions and that
such efforts have not been successful within a reasona ble period of time.  In this context, how do you
define "reasonable period of time"?  Please also explain how your legislation ensures that the use of a
compulsory licence shall be authorized predominan tly for the supply of the domestic market of the
Member authorizing such use.
34. Please mention if your legislation grants additional protection for innovations after the
20 years of patent protection have lapsed.
35. Please explain how your legislation provides for the enhanced patent protection of patents or
patent applications pending on 1 January 1995.
36. Please explain how your legislation provides for the reversal of the burden of proof in relation
to process patents.
F. 
LAYOUT DESIGNS (TOPOGRAPHIES ) OF INTEGRATED CIRCUITS
37. Please describe how your legislation protects topographies.
38. Please explain what protection your national le gislation grants to right holders against the
unlawful importation, sale or distribution for commercial purposes of topographies including
integrated circuits or other articles in which a topography is incorporated in accordance with
Article 36 of the TRIPS Agreement.
39. Please explain how your legislation provides for the derogation from Article 36, as specified
in Article 37 of the TRIPS Agreement, where a person has no knowledge or reasonable grounds to
know when acquiring an integrated circuit or an arti cle incorporating such an integrated circuit that it
contains an unlawful topography.
40. Please state the term of protection granted by your legislation to topographies.IP/C/W/178
Page 8
G. PROTECTION OF UNDISCLOSED INFORMATION
41. Please explain whether or not your legislation grants a defined period of time for the
protection of undisclosed information.  If so, please give the time span.
42. Please explain how your legislation defines undisclosed information.
43. Please explain how your legislation defines data submitted to governments or governmental
agencies.IP/C/W/178
Page 9
TRINIDAD AND TOBAGO
A. COPYRIGHT AND RELATED RIGHTS
1. Please explain how cinematographic works are protected, the exclusive rights granted, their
term of protection, and the limitations and exceptions to the exclusive rights.
2. How does Trinidad and Tobago justify the terms of protection for collective works referred to
in section 19(3) of the Copyright Act 1997, in light of Article 9 of the TRIPS Agreement in
conjunction with Article 7 of the Berne Convention?
3. How does Trinidad and Tobago justify the terms of protection for audio-visual works referred
to in section 19(3) of the Copyright Act 1997, in light of Article 9 of the TRIPS Agreement in
conjunction with Article 7 of the Berne Convention?
B. TRADEMARKS
4. Please clarify the definition of a sign under y our national legislation and explain under what
conditions it is protectable.
5. Please give an example of how the definition of packaging and shape are included in
trademark registration according to Section 2 of the Trade Marks Act, together with the amendmentSection 3(a)(i) in the Trade Marks (Amendment) Act, 1997.
6. Please clarify whether the visual representation, mentioned in Section 4(b) of the Trade
Marks (Amendment) Act 1994 substituting Section 2(2) of the Trade Marks Act, sets up as a
condition for registration that signs be visually perceptible.
7. Please explain whether or not use is a requirement for the registration of a trademark in your
legislation, according to Section 10(3) Trade Marks Act.
C. 
GEOGRAPHICAL INDICATIONS
8. Please give examples of natural or handicraft products covered by the definition of Part I,
section 2, paragraph 4 of the Geographical Indications Act, 1996.
9. Please give references of your laws where acts of unfair competition can be used within the
meaning of Part II, section 3(b) of the Geographical Indications Act, 1996.
10. Please give examples, if any, of indications which have been considered contrary to morality
under Part II, section 5(b) of the Geographical Indications Act, 1996.
11. Please explain how the words "knowingly" and "with intent" are defined under Part II,
section 7 of the Geographical Indications Act, 1996 or its application by the jurisprudence.
12. Please explain how groups of consumers and competent authorities (Part III, section 8(2)(b)
and (c)) have the right to file an application.
13. Please define "interested person" under Part III, section 10(2)(b) of the Geographical
Indications Act, 1996.IP/C/W/178
Page 10
14. Please give the definition of appellation of origin under Part III, section 12(1)(b) of the
Geographical Indications Act, 1996.  Please explain whether or not there is a difference with a
geographical indication under Part III, section 12(1 )(a) of the Geographical Indications Act, 1996.
15. Please clarify if the opposition procedure under Part II, section 15 of the Geographical
Indications Regulations, 1996 is open to challenge after rectification by a court under Part IIIsection 12(1)(b) of the Geographical Indications Act, 1996 and Part II, section 17(3) of the
Geographical Indications Regulations, 1996.
16. Please explain how exceptions under Part IV, se ction 19 of the Geographical Indications Act,
1996 are used in your jurisdiction.  Please provide examples of the use of the exceptions by courts or
lists of names considered as common names under Part IV section 19(3) of the Geographical
Indications Act, 1996.
D. 
INDUSTRIAL DESIGNS
17. Please give examples or explain the definition of parts of industrial designs which serve
solely to obtain a technical result and have therefore been excluded from protection under
Section 3(2) Industrial Designs Act, 1996.
18. Please explain in which legislation, if not in the Industrial Designs Act of 1996, and how you
grant protection to textile designs.
19. Please give examples, if any, of industrial designs which have been considered contrary to
public order or morality and therefore not eligible for registration under Section 4(4) of the Industrial
Designs Act, 1996.
20. Please point out, in this context, whether or not there is any provision by which your
legislation could provide for the right to issue compulsory licences for industrial designs.
21. Please clarify if there are any additional conditions for the extension of the five-year period of
protection under Section 10(2) of the Industrial Designs Act, 1996, other than the payment of the
prescribed renewal fee.
E. PATENTS
22. Does the word "elsewhere" in Article 9(1) of the Patent Act refer to acts done on a worldwide
basis?
23. Please explain how Article 12(2) of the Patent Act is consistent with Article 27.2 of the
TRIPS Agreement stressing that "Members may exclude from patentability inventions…to avoid
serious prejudice to the environment…"?
24. Please explain how Article 20(1) of the Patent Act complies with Article 4 of the TRIPS
Agreement?  Please explain how it is linked to Article 70 of the Patent Act.
25. Please define the term "staple commercial products" in Article 41(2) of the Patent Act?
26. Please explain how Articles 46, 47 and 48 of the Patent Act are consistent with Article 31 of
the TRIPS Agreement?  Please explain in detail, in particular, the law requirements for use.
27. Please explain how Article 91(2) of the Patent Act complies with Article 70.7 of the TRIPS
Agreement?IP/C/W/178
Page 11
28. Please submit a copy of the proclamation made by the President to promulgate the Plant
Variety Act.
F. LAYOUT DESIGNS (TOPOGRAPHIES ) OF INTEGRATED CIRCUITS
29. Please clarify the scope and limitations of the "public interest" put forward in Section 16(1)(a)
of your Layout-Designs (Topographies) of Integrated  Circuits Act, 1996, such as explaining how this
corresponds to the conditions set forth in Article 31(b) of the TRIPS Agreement.
30. Please explain whether or not the termination of compulsory licensing, according to
section 16(4) of your Layout-Designs (Topographies) of Integrated Circuits Act 1996, is possible only
upon request by the right holder.  Can the Minister terminate such a licence ex officio, if he considers
that the circumstances which led to this compulsory licence have ceased to exist?
31. Please clarify further if the period is always exactly 10 years under which protection is
granted (according to Section 7(1) and (2) of the Layout-Designs (Topographies) of IntegratedCircuits Act, 1996).  Also, if there was commercial exploitation prior to the filing of the application in
the requested time-frame of Section 3(2) of the Layout-Designs (Topographies) of Integrated Circuits
Act, 1996.
G. 
PROTECTION OF UNDISCLOSED INFORMATION
32. Please submit a copy of the proclamation made by the President to promulgate the Act on the
Protection Against Unfair Competition.
33. Please describe how you interpret and introduce "steps to be taken to ensure that the data are
protected against unfair commercial use" as mentioned in Article 9(4)(b) of the Patent Act.
__________