RESTRICTEDWORLD TRADE
ORGANIZATIONIP/C/W/112/Add.2
10 December 1998
(98-4967)
Council for Trade-Related Aspects
of Intellectual Property RightsOriginal:  English
REVIEW OF LEGISLATION
Questions posed by the European Communities and their member States
Addendum
By means of a communication dated 3 December 1998, the Secretariat has received the
following questions posed by the European Communities and their member States to Mongolia and
Panama, in the context of the review of the national implementing legislation of these Members at the
meeting of the Council for TRIPS of 1-2 December 1998.
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MONGOLIA
D1. ENFORCEMENT
The intellectual property rights enforcement system of Mongolia contains major
shortcomings.  Although contained in the TRIPS Agreement, the intellectual property rights
enforcement system of Mongolia neither foresees administrative procedures and remedies, provisional
measures or special measures related to border measures.  This represents a clear violation of theWTO Accession Protocol of Mongolia.  The following questions are, therefore, asked only on a
preliminary basis.
1. According to Article 41 of the TRIPS Agreement, WTO Members are obliged to ensure:
(a) that enforcement procedures are available under their laws so as to permit effective 
action against any act of infringement of intellectual property rights;  and
(b) that such procedures include expeditious remedies but provided;
(c) that such procedures provide safeguards against abuse.
Thus, in relation to (c) in particular, safeguards are built into the procedural obligations
specified in the TRIPS Agreement.  Article 41.4 of the TRIPS Agreement provides that parties to
proceedings shall have an opportunity for review by a judicial authority of at least the legal aspects ofinitial judicial decisions on the merits of a case.  Please clarify the implementation of this provision in
Mongolia.
                                                     
1 Questions posed by the European Communities and their member States to Mongolia prior to the
meeting appear in document IP/C/W/112/Add.1.  Mongolia's responses to those questions appear in documentIP/C/W/115.IP/C/W/112/Add.2
Page 2
2. According to Article 42 of the TRIPS Agreemen t, means to identify and protect confidential
information have to be provided.  Concerning Mongolia's reply to question no. 4 of the Checklist of
Issues on Enforcement2, please explain what is meant by "unless otherwise prescribed by law".
3. Concerning Mongolia's reply to question No. 5 of the Checklist of Issues on Enforcement2,
please explain in more detail all remedies that may be ordered for injunctions, damages (including
recovery of profits, expenses and attorney's fees), destruction and disposal of infringing goods and
materials for their production, etc., in all areas covered by Part II of the TRIPS Agreement, notably
copyright and related rights, trademarks and patents.
4. Please clarify whether the answer given by Mongolia to question No. 6 of the Checklist of
Issues on Enforcement2 applies to infringing acts in all areas or only to patents and copyright.
5. Concerning Mongolia's reply to question No. 7 of the Checklist of Issues on Enforcement2,
please clarify to what extent public authorities and/or officials are liable and what "remedial
measures" are applicable.
6. Concerning Mongolia's reply to question No. 22 of the Checklist of Issues on Enforcement2,
please clarify whether criminal procedures can be initiated ex officio.
7. Concerning Mongolia's reply to question No. 24 of the Checklist of Issues on Enforcement2,
please explain in more detail the penalties and remedies that may be imposed, including destructionand disposal of infringing goods and materials for their production, by category of intellectual
property right.
8. According to Mongolia's reply to question No. 25 of the Checklist of Issues on Enforcement
2,
courts have to decide within two months in civil and criminal proceedings.  Please explain whetherthis applies also to the Appeal and Supreme Court.
PANAMA
A. COPYRIGHT AND RELATED RIGHTS
1. Please explain whether and how Panama provides full retroactive protection to works,
phonograms and performances from other WTO Members as required by Articles 9.1, 14.6 and 70.2
of the TRIPS Agreement, each of which incorporate by reference or rely upon Article 18 of the Berne
Convention.  Please give the date to which such pr otection extends back with respect to each category
of subject-matter.
2. Please clarify how Article 10.2 – protection of compilations of data and other material – of
the TRIPS Agreement is implemented in Panama's legislation.
3. Please clarify whether Panama's legislation foresees rental rights for computer programmes
and cinematographic works pursuant to Article 11 of the TRIPS Agreement.
4. Please clarify how Article 14.4 of the TRIPS Agreement is implemented into Panama's
legislation.
                                                     
2 Document IP/N/6/MNG/1.IP/C/W/112/Add.2
Page 3
B. TRADEMARKS , GEOGRAPHICAL INDICATIONS AND INDUSTRIAL DESIGNS
1. Please clarify whether under Panama's legislati on a mark may be licensed or assigned without
the transfer of the business to which it belongs (Article 21 of the TRIPS Agreement).
2. Please clarify whether Panama's legislation recognises valid reasons in cases of non-use of a
mark and specify them.  Furthermore, please provide concrete examples, if possible (Article 19 of the
TRIPS Agreement).
3. Please clarify whether and how Article 16.2 and 16.3 – enhance protection of well-known
marks – of the TRIPS Agreement are implemented in Panamanian law.
4. Please clarify the term of protection of a mark (Article 18 of the TRIPS Agreement).5. Please clarify how Articles 23 and 22.4 of the TRIPS Agreement are implemented.
6. Please explain whether and how textile designs are protected.
C. P
ATENTS , LAYOUT -DESIGNS (TOPOGRAPHIES ) OF INTEGRATED CIRCUITS , PROTECTION OF 
UNDISCLOSED INFORMATION AND CONTROL OF ANTI-COMPETITIVE PRACTICES IN 
CONTRACTUAL LICENCES .
1. Please explain how Article 31 of the TRIPS Agreement is implemented.  Please also provide
the number of cases in which a compulsory licence was granted and give a brief summary of thecase(s).
2. Please clarify whether Panama's legislation foresees a reversal of burden of proof in the case
of process patents (Article 34 of the TRIPS Agreement).
3. Article 32 of the TRIPS Agreement states that an opportunity for judicial review of any
decision to revoke or forfeit a patent shall be available.  Please clarify how this provision is
implemented.
4. Article 39.3 of the TRIPS Agreement provides for the protection of test or other data.  Please
explain how this provision is implemented.
D. E
NFORCEMENT
1. Concerning Panama's reply to question No. 3 of the Checklist of Issues on Enforcement3,
please explain the relevant provisions concerning procedures in areas other than those related to
copyright, notable in the patent and trademark area.
2. Concerning Panama's reply to question No. 5 of the Checklist of Issues on Enforcement3,
please explain the relevant provisions concerning re medies that may be ordered by judicial authorities
and the criteria for their use in the areas not addressed in the reply, notably on copyright and related
rights.
3. Concerning Panama's reply to question No. 5 of the Checklist of Issues on Enforcement3,
please explain the remedies that may be ordered fo r the destruction and disposal of infringing goods
and materials for their production.
                                                     
3 Document IP/N/6/PAN/1.IP/C/W/112/Add.2
Page 4
4. Concerning Panama's reply to question No. 8 of the Checklist of Issues on Enforcement4,
please provide data on the costs for proceedings.
5. Concerning Panama's reply to question No. 9 of the Checklist of Issues on Enforcement4,
please provide answers to administrative procedures other than those related to copyright and relatedrights.
6. Concerning Panama's reply to question No. 14  of the Checklist of Issues on Enforcement
4,
please provide answers to administrative measures other than those related to copyright and related
rights.
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4 Document IP/N/6/PAN/1.