IP/C/W/623  
 
30 January 2017  
(17-0586) Page: 1/27 
Council for Trade -Related Aspects of  
Intellectual Property Rights  Original: English  
 
 REVIEW OF LEGISLATIO N 
RESPONSES FROM S AINT KITTS AND NEVIS TO Q UESTIONS POSED BY JAPAN, CANADA,  
SWITZERLAND, THE UNI TED STATES AND THE E UROPEAN UNION  
By means of a communication from the delegation  of Saint Kitts and Nevis, dated 19 December  2016, 
the Se cretariat has received the following responses to questions posed by Japan, Canada, 
Switzerland, the United States and the European Union as contained in documents IP/C/W/258, 
IP/C/W/261 and IP/C/W/261 /Add.1, IP/C/W/263, IP/C/W/268 and IP/C/W/268 /Corr.1 an d 
IP/C/W/274, respectively .  
 
_______________  
 
 
JAPAN1 
A. COPYRIGHT AND RELATE D RIGHTS  
1. Please explain exceptions or exemptions of the National Treatment and Most -
Favoured -Nation Treatment under the Copyright and Neighbouring Rights Law, if any, as 
permi tted in Articles  3 and 4 of the TRIPS Agreement.  
 
In accordance with Art. 6 of the Berne Convention, Sections 145 and 146 of the S aint. Kitts and Nevis  
Copyright Act enable the Minister, by Order, to restrict or allow protection to works and nationals of 
any country specified therein. Section 145 allows the Minister to order that the provisions of the 
Copyright Act can apply on bases including nationality/ habitual residence, place of incorporation for 
bodies corporate, nature of the works and place of pub lication or performance. Section 146 confers a 
power on the Minister to restrict protection to countries that do not provide adequate protection to 
works of S aint Kitts and Nevis  (SKN) . 
 
 
CANADA2 
1. Please describe how the enforcement obligations (Articles  41-61 of the TRIPS 
Agreement and throughout) have been implemented.  
 
Please see response s to the Checklist on Issues of Enforcement  3 
 
2. What protection does your Copyright legislation afford to "foreign works "? 
 
The legislation currently does not protec t "foreign works ". Protection of eligible works in SKN is limited 
to authors who are nationals or habitual residents of SKN or if it was first published in SKN (ss. 3 and 
8 of SKN Copyright Act). In its ongoing legislative review the Government has already  identified this 
provision as inconsistent with provisions of the TRIPS Agreement and will remedy this in the very near 
future since it is open to the Minister, under s. 145 to pass a statutory order that would declare that 
                                                
1 Questions from Japan to Saint Kitts and Nevis are contained in document IP/C/W/258.  
2 Questions from Canada to S aint Kitts and Nevis are contained in documents IP/C/W/261 and 
IP/C/W/261/A dd.1. 
3 The responses  from Saint Kitts and Nevis to the Checklist of Issues on Enforcement are circulated in 
document IP/N/6/KNA/1.  IP/C/W/623  
 
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  copyright protection extends to the works or authors of the countries that are Members of the Berne 
Convention, TRIPS or any other relevant international treaty on copyright and performers ' rights to 
which SKN is a party. This approach would not require parliamentary intervention but a l egislative 
amendment in parliament, though more onerous to achieve, is likely to carry a higher degree of 
practical prudence.  
 
3. We understand that legislation on trademarks, patents and copyright have been 
passed by your Parliament, but that they are no t yet in force.  
 
(a) When is such legislation likely to be effectively implemented?  
 
(b) What are the key improvements introduced by such legislation in respect of 
TRIPS obligations?  
 
The Marks, Collective Marks and Trade Names Act came into force on 28th July 2000. The Copyright 
Act and Patents Act came into force on 1 June 2002. Notifications of all legislation related to IPRs 
have been sent to the WTO and WIPO.  
 
Trademarks  
 
The prior legislation was passed in 1887 and whilst adequate at the time, did not hav e the benefit of 
the application of contemporary standards. There was no definition of a "mark" and the aspect of a 
mark being refused as being indistinguishable from the goods or services of one enterprise from that 
of another was not adequately captured.  The eligibility of certain trade names has been expanded and 
clarified in the existing legislation. Greater specificity on infringement and offences generally under 
the Act has been included in the new Act. Recognition and distinction of well - known marks  is 
provided for in the existing legislation as well as the applicability of the Nice Agreement and the Paris 
Convention for the Protection of Industrial Property.  
 
Patents   
 
The previous Patents Act dated from 1906. This earlier legislation failed to prov ide adequately for the 
protection of the product as opposed to the process. The patent had a maximum duration of fourteen 
years and more contemporary considerations such as the applicability of the Patent Cooperation 
Treaty were not taken account of. The p rior Act failed to provide appropriately for the concept of 
novelty of invention and was overall very thin on procedural aspects. The various aspects and nuances 
of infringement were not comprehensively dealt with. All of these areas have since been remedi ed by 
the existing Patents Act.  
 
Copyright  
 
The previous legislation in this area was the Copyright Act Chapter 336 of 1919. In addition, the 1956 
U.K. Act was largely applicable within the then colony (St. Kitts and Nevis became an independent 
nation in 1983). The 1919 Act consisted of three sections which therefore demonstrates how 
extremely limited it was in scope and how ineffectual it would be in this current regime. The previous 
legislation created an offence for the infringement of a copyrighted wor k, however the kinds of work 
that was contemplated, the extent of the protection, the actual remedies for infringement – outside of 
the criminal penalty, were not provided for. The current legislation sets out a wide range of concerns 
in comprehensive deta il, including protection for works in electronic form, licensing schemes and 
licensing bodies, recognizing through the creation of exceptions, the need to balance the exclusive 
rights of the owner against the rights of the State and certain public purposes  that derive therefrom. 
Some of these rights include fair dealing with a performance or recording for the purpose of criticism 
or review or reporting on current events, parliamentary proceedings, library use and the playing of 
certain types of recording fo r charitable purposes.  
 
4. We understand that legislation on geographical indications, protection of plant 
varieties, and protection of integrated circuit topographies is being drafted.  
 
(a) What protection is currently afforded to geographical indications , protection of 
plant varieties, and protection of integrated circuit topographies, and how does 
such protection accord with TRIPS obligations?  
 IP/C/W/623  
 
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  (b) When is such legislation likely to be effectively implemented?  
 
(c) What are the key improvements introduce d by such legislation in respect of 
TRIPS obligations?  
 
The Protection of Layout -Designs (Topographies) of Integrated Circuits Act was passed and came into 
force on 5th November 2007. Legislation on the protection of plant varieties has not yet been passed  
but a draft bill has been circulated to key stakeholders for their comments and recommendations.  
 
The Geographical Indications Act was passed in 2007 and came into effect on 1st November 2016. 
Geographical indications in the strictest sense were not prote cted prior to this legislation but collective 
marks are protectable under the trademark legislation.  
 
In keeping with Arts. 22 to 24 of the TRIPS provisions on geographical indications, the Act provides 
protection  
 
 to an indication which identifies any g oods as originating in the territory of a country or a 
region or locality in that territory where a given quality, reputation or other characteristic of 
the particular goods is essentially attributable to its geographical indication ; (section 2)  
 to a geogr aphical indication even if it has not been registered, however registration of a GI 
offers a higher level of protection ; (section 3)  
 Against a geographical indication which gives a false representation to the public that the 
goods originate in another terr itory than the one it actually derives from. This provision shall 
be enforceable even if the GI is literally true as to the territory, region or locality in which the 
goods originate ; (section 3)  and 
 in respect of homonymous geographical indications for wi nes, protection shall be given to 
each indication. Where necessary, the Registrar shall determine practical conditions for 
differentiating homonymous indications from each other. The Registrar shall be guided in such 
cases by the need to ensure equitable t reatment of the producers concerned and to ensure 
that consumers are not misled.  
 
The right of use of a geographical indication shall be restricted to a producer carrying on activity in 
the geographical area specified in the Register, in the course of trad e and only in respect of the 
products specified in the Register where such products possess the quality, reputation or other 
characteristic set out in the Register.  
 
Under section 12 of the Act, the level of protection extends to the possibility of  
 
 invalidating the registration of a GI on the ground that the GI does not qualify for protection ,  
 rectifying the registration of a GI on the ground that ,  
 the geographical area specified in the registration does not correspond to the geographical 
indication , and 
 the indication of the products for which the geographical indication is used or the indication of 
the quality, reputation or other characteristic of such products is missing or unsatisfactory . 
 
Section 13 allows proceedings to prevent the unlawful use of  geographical indications or to prevent a 
use which constitutes an act of unfair competition within the meaning of Article 10bis of the Paris 
Convention.  
 
The Registrar also has power to refuse or invalidate the registration of a trademark which contains or 
consists of a geographical indication with respect to goods not originating in the territory indicated, if 
use of the indication in the trademark for such goods in St. Kitts and Nevis is of such a nature as to 
mislead the public as to the true place or origin of such goods (s. 14). The Registrar additionally has 
power to invalidate or refuse a mark that conflicts with a GI for wines and spirits.  
 IP/C/W/623  
 
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  SWITZERLAND4 
A. GEOGRAPHICAL INDICAT IONS  
1. Please explain in detail how your legislation provides protectio n for geographical 
indications . 
 
In keeping with Arts. 22 to 24 of the TRIPS provisions on geographical indications, the Act provides 
protection  
 
 to an indication which identifies any goods as originating in the territory of a country or a 
region or local ity in that territory where a given quality, reputation or other characteristic of 
the particular goods is essentially attributable to its geographical indication ; (section 2)  
 to a geographical indication even if it has not been registered, however registr ation of a GI 
offers a higher level of protection ; (section 3)  
 Against a geographical indication which gives a false representation to the public that the 
goods originate in another territory than the one it actually derives from. This provision shall 
be enforceable even if the GI is literally true as to the territory, region or locality in which the 
goods originate ; (section 3)  and 
 In respect of homonymous geographical indications for wines, protection shall be given to 
each indication. Where necessary, th e Registrar shall determine practical conditions for 
differentiating homonymous indications from each other. The Registrar shall be guided in such 
cases by the need to ensure equitable treatment of the producers concerned and to ensure 
that consumers are n ot misled.  
 
The right of use of a geographical indication shall be restricted to a producer carrying on activity in 
the geographical area specified in the Register, in the course of trade and only in respect of the 
products specified in the Register where such products possess the quality, reputation or other 
characteristic set out in the Register.  
 
Under section 12 of the Act, the level of protection extends to the possibility of  
 
 invalidating the registration of a GI on the ground that the GI does not qu alify for protection ,  
 rectifying the registration of a GI on the ground that ;  
 the geographical area specified in the registration does not correspond to the geographical 
indication ; and  
 the indication of the products for which the geographical indication  is used or the indication of 
the quality, reputation or other characteristic of such products is missing or unsatisfactory . 
 
Section 13 allows proceedings to prevent the unlawful use of geographical indications or to prevent a 
use which constitutes an act  of unfair competition within the meaning of Article 10bis of the Paris 
Convention.  
 
The Registrar also has power to refuse or invalidate the registration of a trademark which contains or 
consists of a geographical indication with respect to goods not ori ginating in the territory indicated, if 
use of the indication in the trademark for such goods in St. Kitts and Nevis is of such a nature as to 
mislead the public as to the true place or origin of such goods (s. 14). The Registrar additionally has 
power to invalidate or refuse a mark that conflicts with a GI for wines and spirits.  
 
B. PATENTS  
2. Does your legislation grant patent protection to all categories of products or are there 
any exceptions? If so, please explain in detail what kind of exceptions exi st and how they 
comply with Article 27 of the TRIPS Agreement.  
 
There are limitations on the enjoyment of patent rights. Section 10(1) of the Patents Act provides that 
anything which consists of the following characteristics shall be excluded from patentab ility 
 
(a) discovery, scientific theory or mathematical method ; 
                                                
4 Questions from Switzerland to Saint Kitts and Nevis are contained in document IP/C/W/263.  IP/C/W/623  
 
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  (b) a scheme, rule or method for doing business, performing a mental act of playing a game; 
and; 
(c) methods for the treatment of the human or animal body by surgery or therapy as well as 
diagnostic methods practiced on the human or animal body.  
 
Additionally, section 10 subsection 3 of the Patents Act provides that a patent shall not be granted in 
respect of an invention if the commercial exploitation of the invention in Saint Christopher and Nevis 
would be contrary to public order or morality. The section goes on to provide in subsection 4 that the 
refusal to grant such a patent would not be based solely on the ground that the commercial 
exploitation is prohibited by a law in force in Saint Ch ristopher and Nevis. The language seems to 
imply that the basic threshold that would be looked at would be the law but leaves it open as to other 
considerations that might influence the decision to deny the patent.  
 
Section 10 subsection (1) paragraph (c) - cited earlier, provides that anything that consists of 
methods for the treatment of the human or animal body by surgery, therapy in addition to diagnostic 
methods that are practiced on either human or animal, shall be excluded from patentability. However , 
subsection 2 under the same section shows restricts the exclusion only to the methods and does not 
extend the bar to the products that might be used in any of those methods.  
 
3. Does your legislation, in accordance with Article 27.1 in combination with A rticle 31 
of the TRIPS Agreement, consider importation as "working " a patent (and therefore 
preclude compulsory licensing, if a product is being imported)?  
 
Section 32(2)(a)(ii) of the Patents Act expressly provides that exploitation of a product patent 
includes importation of said product. Section 37 which deals with the grant of non -voluntary licenses 
provides that a third party can apply to the court for such a license where the patent has not been 
exploited, sufficiently exploited or imported into St. K itts and Nevis after four years after the grant or 
three years after filing, whichever later. Additionally, where the Minister is satisfied that the right 
holder 's exploitation of the patent (which includes importation) is anti -competitive, s. 34 confers t he 
right on him to grant a compulsory licence to a Government agency or a third party designated by the 
Government.  
 
4. Does your legislation make the granting of a compulsory license subject to all the 
conditions enumerated in Article 31 of the TRIPS Agre ement?  Please cite the relevant 
provisions of law.  
 
The following table contains the individual TRIPS conditions and the relevant sections of the Patents 
Act. Section 34 contains the provisions of the compulsory license and s. 37 contains provisions on 
non-voluntary licences.  
 
TRIPS Conditions  Patents Act  
 
31(a): authorization of such use shall be 
considered on its individual merits  s. 34(3) The Minister shall make his or her 
decision [to exploit the patent] after hearing 
the owner of the patent and any i nterested 
person . 
 
s. 37(1) provides that the Court, on the action 
of the prospective licensee, determines the 
grant of a non -voluntary licence. The merits of 
each individual suit will be considered.  
 IP/C/W/623  
 
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  TRIPS Conditions  Patents Act  
 
31(b): such use may only be permitted if, 
prior to suc h use, the 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 reasonable period of time.  This 
requirement may be waived by a Me mber 
in the case of a national emergency or 
other circumstances of extreme urgency 
or in cases of public non -commercial use.  
In situations of national emergency or 
other circumstances of extreme urgency, 
the right holder shall, nevertheless, be 
notified a s soon as reasonably 
practicable.  In the case of public non -
commercial use, where the government 
or contractor, without making a patent 
search, knows or has demonstrable 
grounds to know that a valid patent is or 
will be used by or for the government, the 
right holder shall be informed promptly;  
 S. 34(4) A request for the Minister 's 
authorisation to exploit a patented invention 
shall be accompanied by evidence that the 
owner of the patent has received, from the 
person seeking the authorisation, a request f or 
a contractual licence, but that that person has 
been unable to obtain such a licence on 
reasonable commercial terms and conditions 
and within a reasonable time.  
 
s.34(5) Subsection (4) of this section shall not 
apply in cases of  
(a) national emergency o r other 
circumstances of extreme urgency provided, 
however, that in such cases the owner of the 
patent shall be notified of the Minister 's 
decision as soon as reasonably practicable.  
(b) public non -commercial use; and  
(c) anti-competitive practices determi ned as 
such by the Minister .  
 
The provisions on non -voluntary licenses do 
not contain provisions which mandate the 
prospective applicant must first seek the 
permission of the right holder. This has been 
flagged for our ongoing legislative review.  
 
31(c) the scope and duration of such use 
shall be limited to the purpose for which 
it was authorized, and in the case of 
semi -conductor technology shall only be 
for public non -commercial use or to 
remedy a practice determined after 
judicial or administrative pro cess to be 
anti-competitive;  
 s. 34(2) The exploitation of the patented 
invention shall be limited to the purpose for 
which it was authorised and shall be subject to 
the payment to the said owner of an adequate 
remuneration therefor, taking into account th e 
economic value of the Minister 's authorisation, 
as determined in the said decision, and, where 
the Minister has determined that practices are 
anti-competitive, the need to correct such 
practices.  
 
s. 34(6) The exploitation of a patented 
invention in the field of semi -conductor 
technology shall only be authorised for public 
non-commercial use or where a judicial or 
administrative body has determined that the 
manner of exploitation of the patented 
invention, by the owner of the patent or his or 
her licensee , is anti -competitive, and if the 
Minister is satisfied that the issuance of the 
non-voluntary licence would remedy such 
practice.  
 
Section 37(10) prohibits the grant of non -
voluntary licenses in the field of semi -
conductor technology. Where the Court is 
minded to grant the licence, it is bound by s. 
37(3) to expressly order the scope and 
function of the licence, the time limit within 
which the licensee must begin to exploit the 
patented invention and the amount and 
conditions of remuneration to be paid to the 
first right holder.  IP/C/W/623  
 
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  TRIPS Conditions  Patents Act  
 
31(d) such use shall be non -exclusive  s. 34(7) The authorisation shall not exclude  
(a) the conclusion of license contracts by 
the owner of the patent;  
(b) the continued exercise, by the owner of 
the patent, of his or her rights und er 
section  33(2); or  
(c) the grant of a non -voluntary licence 
under section 38 of this Act.  
 
Under s. 37, non -voluntary licenses can be 
granted to "any person interested ". Section 
37(5) also gives the Court the power to issue a 
non-voluntary license to the  later patent 
holder where that later patent cannot be 
exploited without infringing an earlier patent.  
 
31(e) such use shall be non -assignable, 
except with that part of the enterprise or 
goodwill which enjoys such use;  
 s. 34(2) quoted above  
 
s. 34(8) Whe re a third person has been 
designated by the Minister, the authorisation 
may only be transferred with the enterprise or 
business of that person or with the part of the 
enterprise or business within which the 
patented invention is being exploited.  
 
There ar e no express provisions referring to 
the ability to assign non -voluntary licenses but 
it is open to the Court to make an order 
related to the scope of the licence.  
 
31(f) any such use shall be authorized 
predominantly for the supply of the 
domestic market  of the Member 
authorizing such use;  s. 34(9) The exploitation of the patented 
invention by the Government agency or third 
person designated by the Minister shall be 
predominantly for the supply of the market in 
Saint Christopher and Nevis.  
 
The beneficiar y of a non -voluntary licence shall 
have the right to exploit the patented 
invention only within St. Christopher and Nevis 
[s. 37(4)(a)]  
 
31 (g) authorization for such use shall be 
liable, subject to adequate protection of 
the legitimate interests of the p ersons so 
authorized, to be terminated if and when 
the circumstances which led to it cease to 
exist and are unlikely to recur.  The 
competent authority shall have the 
authority to review, upon motivated 
request, the continued existence of these 
circumstanc es; 
 s. 34(11) Upon the request of the owner of the 
patent, the Minister shall terminate the 
authorisation if he or she is satisfied, after 
hearing the parties, that the circumstances 
which led to his or her decision have ceased to 
exist and are unlikely t o recur, or that the 
Government agency or third person designated 
by him or her has failed to comply with the 
terms of the decision.  
 
s. 34(12) Notwithstanding subsection (11) of 
this section, the Minister shall not terminate 
the authorisation if he or she  is satisfied that 
the need for adequate protection of the 
legitimate interests of the Government agency 
or third person designated by him or her 
justifies the maintenance of the decision.  
 
 IP/C/W/623  
 
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  TRIPS Conditions  Patents Act  
 
The Patent Act grants the right to both the 
right holder and an e xclusive licensee to bring 
proceedings before the Court for infringement 
(s. 44).  
 
31(h) the right holder shall be paid 
adequate remuneration in the 
circumstances of each case, taking into 
account the economic value of the 
authorization;  
 s.34(2) quoted above  
 
Where the Court has granted a non -voluntary 
licence, it must fix the amount of 
remuneration to be paid to the patentee and 
the conditions of payment. [s.37(3)(c )  
 
31(i) the legal validity of any decision 
relating to the authorization of such use 
shall be subject to judicial review or other 
independent review by a distinct higher 
authority in that Member;  
 s. 61(1) The Court shall have jurisdiction in 
cases of disputes relating to the application of 
this Act and the Regulations, and in matters 
which , under this Act, may be brought before 
it. 
(2) Any person who is aggrieved by a 
decision of the Minister or the Registrar under 
this Act may, within two months of that 
decision, appeal to the Court.  
 
Decisions of the Court in relation to 
compulsory or non -voluntary licenses are 
always subject to judicial review by the 
Eastern Caribbean Supreme Court of Appeal.  
 
31(j) any decision relating to the 
remuneration provided in respect of such 
use shall be subject to judicial review or 
other independent review by  a distinct 
higher authority in that Member  
 s. 61 quoted above  
 
Decisions of the Court in relation to 
compulsory or non -voluntary licenses are 
always subject to judicial review by the 
Eastern Caribbean Supreme Court of Appeal.  
 
31(k) Competent authoritie s shall have 
the authority to refuse termination of 
authorization if and when the conditions 
which led to such authorization are likely 
to recur;  
 s. 61 quoted above  
31(l) where such use is authorized to 
permit the exploitation of a patent ( "the 
second pa tent") which cannot be 
exploited without infringing another 
patent ( "the first patent "), the following 
additional conditions shall apply:  
 
(i) the invention claimed in the second 
patent shall involve an important 
technical advance of considerable 
economic significance in relation to the 
invention claimed in the first patent;  
 
(ii) the owner of the first patent shall be 
entitled to a cross -licence on reasonable 
terms to use the invention claimed in the 
second patent;  and  
 
 
 Section 37(5) provides that "Where the 
invention claimed in a patent, referred to in 
this section as a "later patent ", cannot be 
exploited in Saint Christopher  and Nevis 
without infringing a patent granted on the 
basis of an application benefiting from an 
earlier filing, or, where appropriate, priority 
date, referred to in this section as an "earlier 
patent ", and if the invention claimed in the 
later patent invo lves an important technical 
advance of considerable economic importance 
in relation to the invention claimed in the 
earlier patent, the Court may, upon the 
application of the owner of the later patent, 
issue a non -voluntary licence to the extent 
necessary to avoid infringement of the earlier 
patent.  
 
 
 IP/C/W/623  
 
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  TRIPS Conditions  Patents Act  
 
(iii) the use authorized in respe ct of the 
first patent shall be non -assignable 
except with the assignment of the second 
patent.  
 S. 37(6) gives the earlier patent right holder 
the power to apply to the Court for a non -
voluntary licence in respect of the later patent.  
 
S. 37(8) provides that a transfer of the later 
patent can only be ma de with the earlier 
patent.  
 
 
5. Does your legislation provide for the principle of the reversal of burden of proof in a 
process patent litigation?  Please cite the relevant provisions of law.  
 
Section 40(7) provides that in any proceedings for infringeme nt, other than criminal proceedings, 
where the subject matter of the patent is a process for obtaining a product, the burden of establishing 
that the product was not made by the process shall rest on the defendant if  
 
(a) the product is new; or  
(b) substan tial likelihood exists that the product was made using another process and the patentee 
has been unable, through reasonable efforts, to determine the process used.  
 
C. PROTECTION OF UNDISC LOSED INFORMATION  
6. Please explain in detail if your legislation en sures that undisclosed test or other data 
submitted by an applicant to the responsible State agency in the procedure for market 
authorisation of a pharmaceutical or of an agricultural chemical product is protected 
against disclosure and against unfair comm ercial use by a competitor, for example by 
prohibiting a second applicant from relying on, or from referring to the original data of the 
first applicant, when applying subsequently for market authorisation for his own product.  
Does your legislation provid e for exceptions to this? If yes, under what conditions would 
such exceptions apply?  Does your legislation set a specific term of protection for 
undisclosed test or other data of the first applicant?  
 
There is no legislation for the protection of undisclo sed information in St. Kitts and Nevis but 
depending on the nature of the information, copyright protection may apply.  
 
D. ENFORCEMENT  
7. Please indicate remedies provided by your legislation, which constitute effective 
deterrents to infringements of intel lectual property rights.  
 
Please refer to the responses to the Checklist on Issues of Enforcement . 
 
8. Please describe any new initiatives that are planned to improve enforcement of 
intellectual property rights in your country, particularly initiatives rel ated to criminal 
enforcement.  
  
Please refer to the responses to the Checklist on Issues of Enforcement . 
 
 
UNITED STATES5 
A. GENERAL  
1. Please describe, in relation to each form of intellectual property covered by the TRIPS 
Agreement, including plant varie ty protection, the manner in which nation treatment and 
most favoured nation treatment are provided to nationals of other WTO Members.  
                                                
5 Questions from the United States to Saint Kitts and Nevis are contained in documents IP/C/W/268 and 
IP/C/W/268/C orr.1 IP/C/W/623  
 
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  Work is being done to draft or pass legislation for plant variety protection and undisclosed information 
in St. Kitts and  Nevis. For patents, the law expressly provides that an applicant may apply for a 
declaration claiming priority of one or more earlier national, regional or international applications filed 
in a country or State that is party to the Paris Convention or any  member of the WTO (s.20). A similar 
provision exists in the trademark legislation (s. 20) . 
 
B. COPYRIGHT AND RELATE D RIGHTS  
2. Please explain how the copyright law of St. Kitts and Nevis  protects computer 
programs as  literary works and complications of d ata as required by Article 10 of the TRIPS 
Agreement.  
 
The definition of literary works in s. 2(1) expressly includes computer programmes. Section 6(2) 
provides that compilations of data are also eligible for protection as a literary work.  
 
3. Article 11 o f the TRIPS Agreement requires that rental rights for computer programs 
and cinematographic works be available.  Please cite to the corresponding provision of the 
copyright law of St. Kitts and Nevis.  
 
Section 3(2) of the Act provides that references to th e issue of copies of a work in relation to sound 
recordings, films and computer programs, includes the act of issuing copies to the public by rental. 
The exclusive right to issue copies of work to the public is provided for in s. 9(1)(b). Section 78 also 
provides that the Minister may pass an Order to have compulsory licenses issued in specified 
circumstances to allow the public to rent sound recordings, films or computer programs.  
 
4. Please describe the protection the copyright law of St. Kitts and Nevis provides for 
performers, and the term of the protection.  
 
Section 108(1)(a) provides that a performer shall have the exclusive right to prevent any person from 
exploiting his or her performance. Such rights are infringed where a person, without the perform er's 
consent, broadcasts live, includes in a cable programme or makes (otherwise than for his or her 
private domestic use) a record of the whole or any substantial part of a performance (s.109).  Term of 
protection for performances is 50 years after the en d of the calendar year of the performance (s. 10) . 
 
5. Article 14.2 of the TRIPS Agreement provides that producers of phonograms are to 
enjoy the right to authorize or prohibit the direct or indirect reproduction of their 
phonograms.  Article 14.2 requires  that producers of phonograms are to have the right to 
authorize or prohibit the commercial rental to the public of originals or copies of their 
phonograms.  Please describe how the copyright law of St. Kitts and Nevis implements 
these obligations and indi cate the term of protection.  
 
Section 6 of the Act confers copyright on original sound recordings. The producer of that sound 
recording has the exclusive right, under s. 9, to do or authorize other persons to, inter alia  copy and 
issue copies of the work t o the public. Section 3(3) further elaborates that references to "issuing 
copies " in relation to sound recordings, films and computer programs means the act of issuing copies 
to the public by rental. The term protection, according to s. 11, is fifty years from the end of the 
calendar year in which it was made or where it is made available to the public before the end of that 
period, fifty years from the end of the calendar year in which it was so made available.  
 
C. TRADEMARKS  
6. Please describe the subject  matter that can comprise a trademark under the 
trademark law of St. Kitts and Nevis.  
 
Under the Marks, Collective Marks and Trade Names Act, any visible sign capable of distinguishing 
goods and services can be registered as a trademark or service mark, re spectively.  
 IP/C/W/623  
 
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  7. Please describe the procedure that must be followed to register a trademark in 
St. Kitts and Nevis, citing the relevant provisions of the law, and describe the rights that 
the owner of a registered mark can exercise.   
 
Section 5 provides t hat an application for the registration of a mark shall be filed with the Registrar on 
the prescribed form and shall contain the following:  
 
(a) a request that the mark be registered;  
(b) a reproduction of the mark; and  
(c) a list of the goods or services for which registration of the mark  is requested, listed under the 
applicable class or classes of the International Classification.  
 
The application shall be accompanied by the prescribed application fee. The application may contain a 
declaration claiming t he priority, as provided for in the Paris Convention, of an earlier national or 
regional application filed by the applicant or his or her predecessor in title in or for any State party to 
the Convention or any member of the World Trade Organisation, in whi ch case the Registrar may 
require that the applicant furnishes, within the prescribed time limit, a copy of the earlier application, 
certified as correct by the Office with which it was filed. The effect of the declaration shall be as 
provided in the Paris  Convention. Where the requirements of subsection (3) of this section and any 
regulations pertaining to that subsection have not been satisfied, the declaration shall be considered 
not to have been made. The applicant may withdraw the application at any  time before the mark is 
registered.  
 
8. Please describe in detail how well -known trademarks are protected in St. Kitts and 
Nevis, including what factors are considered in determining whether a trademark is well -
known.   
 
Under s. 4(e) of the Act, a well -known trademark is protected to the extent that a prospective 
trademark would not be registered if it is identical to, confusingly similar or constitutes a translation of 
a well -known trade mark in St. Kitts and Nevis for identical or similar goods or services  of another 
enterprise. If the well -known mark is registered in St. Kitts and Nevis, the prospective trademark 
would not be registered even if the goods and services are not identical or similar provided that  
 
1. the use of the prospective mark in relation t o those goods and services would indicate a 
connection between the goods or services and the owner of the well -known trademarks; and  
2. the interests of the owner of the well -known mark are likely to be prejudiced by such use . 
 
D. GEOGRAPHICAL INDICAT IONS  
9. Please describe in detail how the laws of St. Kitts and Nevis provide for the 
recognition and protection of geographical indications required by Article 22.2 of the TRIPS 
Agreement, citing to the relevant provisions of law or regulation, and provide exampl es of 
geographical indications so protected.  
 
Through s. 13 of the Geographical Indications Act, an interested person may institute proceedings in 
the High Court to prevent the unlawful use of a geographical indication and any use which constitutes 
an act  of unfair competition within the meaning of Article 10 bis of the Paris Convention. There are no 
registered geographical indications in St. Kitts and Nevis.  
 
10. Please describe in detail the manner in which the higher level of protection required 
for wine s and spirits under Article 23.2 of the TRIPS Agreement is implemented, citing to 
the relevant provisions of law or regulation, and provide examples of geographical 
indications for such products.  
 
In accordance with TRIPS Art. 23.2, s. 13 also enables an i nterested person to initiate court  
proceedings where a geographical indication is used on a wine or spirit that does not originate in the 
place indicated by the GI. This protection extends even where the true origin of the goods is indicated 
or the geograp hical indication is used in translation or accompanied by expressions such as "kind", 
"type", "style", "imitation " or the like. There are no registered geographical indications in St. Kitts and 
Nevis.  
 IP/C/W/623  
 
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  E. INDUSTRIAL DESIGNS  
11. Please describe the procedur e that must be followed to obtain protection for textile 
designs and cite to the relevant provisions of law or regulation.  
 
There is no legislation on industrial designs in St. Kitts and Nevis but depending on the nature of the 
design, it may qualify for c opyright protection as an artistic work.  
 
F. PATENTS  
12. Please describe the procedure that must be followed to obtain protection for textile 
designs and cite to the relevant provisions of law or regulation.  
 
Provided that the textile design qualifies as a  new invention that involves an inventive step and that 
design invention is capable of industrial application, the inventor can apply for a patent through 
conventional application procedure i.e. by an application to the Registrar.  
 
13.  Please describe in detail the way in which the patent law of Saint Kitts and Nevis 
implements Article 27 of the TRIPS Agreement, indicating any exceptions to patentability 
provided for, and including details regarding the protection for micro -organisms and non -
biological and  microbiological processes and plant varieties.  Please cite to the relevant 
provisions of law.  
 
Section 8 of the Patents Act provides that a patent can be granted for an invention that is new, 
involves an inventive step and is capable of industrial applic ation. The invention may be or relate to a 
product or process. However, s. 10 provides that even if there are inventions that fall within those 
boundaries, they would be excluded from patentability if the commercial exploitation of such 
inventions are cont rary to public order or morality, prejudicial to human, animal or plant life or health 
or prejudicial to the environment. Additionally, inventions that consist of the following cannot be 
patented, that is:  
 
(a) discovery, scientific theory or mathematical  method;  
(b) a scheme, rule or method for doing business, performing a mental act of playing a game; and  
(c) methods for the treatment of the human or animal body by surgery or therapy, as well as 
diagnostic methods practised on the human or animal body (t his does not apply to products for use in 
any of the methods specified above).  
 
14.  Please describe in detail the rights provided patent holders under the patent law of 
Saint Kitts and Nevis and cite to the relevant provisions of law.  
 
By virtue of s. 32 of the Patents Act, no person, other than the patentee, shall exploit a patented 
invention in St. Kitts and Nevis without the patentee 's authority. An action can be brought in the High 
Court against any person who exploits the invention without authority. The law expressly provides 
that "exploiting " a patented invention means:  
 
(a) where  the patent is granted in respect of a product,  
i. making, importing, offering for sale, selling, and using it into Saint Christopher and 
Nevis; and  
 ii. stocking  the produc t for the purpose of offering it for sale or selling, or using it; and  
(b) where the patent is granted in respect of a process,  
i. using the process; and  
ii. doing any act referred to in paragraph (a) in respect of a product obtained by means of 
that proce ss. 
 
Section 32(5) further provides that the rights in a patent shall not extend to:  
(a) acts in respect of articles put on the market in St. Kitts and Nevis by the patentee or with his or 
her consent;  
(b) the use of articles on an aircraft, land vehicles or vessels of other countries which temporarily 
or accidentally enter the airspace, territory or waters of St. Kitts and Nevis;  
(c) acts done only for experimental purposes relating to a patented invention;  
(d) the extemporaneous preparation for individual  cases, in a pharmacy, of a medicine in 
accordance with a medical prescription or acts concerning the medicine so prepared; or  IP/C/W/623  
 
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  (e) acts performed by any person who was, in good faith, while in St. Kitts and Nevis, before the 
filing date or where priority i s claimed, the priority date of the application on which the patent is 
granted, using the invention or making effective and serious preparation for such use.  
15.  Please describe in detail any provisions in the laws of Saint Kitts and Nevis permitting 
unau thorized use of a patent, citing to the relevant provisions of law, and describe in detail 
the conditions under which such use can occur.   
 
Section 34 provides that the Minister may decide that, even without the agreement of the owner of 
the patent, that a Government agency or a third person designated by the Ministry may exploit the 
invention where  
 
(a) the public interest, in particular, National Security, Nutrition, Health, or the development of 
other vital sectors of the national economy so requires; o r 
(b) the Minister has determined that the manner of exploitation, by the owner of the patent or his 
or her licensee, is anti -competitive, and he or she is satisfied that the exploitation of the invention in 
accordance with this subsection would remedy suc h practice.  
The exploitation of the patented invention shall be limited to the purpose for which it was authorised 
and shall be subject to the payment to the said owner of an adequate remuneration therefor, taking 
into account the economic value of the Min ister's authorisation, as determined in the said decision, 
and, where a decision has been taken under subsection (b) above, the need to correct anti -
competitive practices.  
 
Before deciding to issue a compulsory license, the Minister shall hear the owner of  the patent and any 
interested person. A request for the Minister 's authorization to exploit a patented invention must be 
prefaced by a request to the patent holder for a contractual licence. It must be shown that that 
person was unable to obtain such a li cence on reasonable commercial terms and conditions and within 
a reasonable time. The requirement to obtain the right holder 's permission can be waived in cases of 
public non -commercial use, anti -competitive practices and circumstances of national or extre me 
urgency (patent owner should be notified by the Minister as soon as is reasonably practicable in the 
latter case).  
 
Additionally, under s. 37 of the Act, the Court may grant a non -voluntary licence. At any time after 
four years has passed since the date  of the grant or three years from the date of filing (whichever 
later) an interested person may apply to the Court for such a licence on the grounds that the patented 
invention is not being exploited or is being insufficiently exploited by working the inve ntion within the 
Federation or by importation thereinto. Where the Court is satisfied that such non -exploitation or 
insufficient exploitation has not been justified, it will grant the non -voluntary licence. The Court is 
then bound to fix the scope and func tion of the licence, the time limit within which the licensee must 
begin to exploit the patented invention and the amount and conditions of the remuneration to be paid 
to the patentee.  
 
16.  What term of protection does the patent law of Saint Kitts and Ne vis provide for 
patents?  Please describe any provisions for extension of the term of protection and cite to 
the relevant provisions of the law.  
 
A patent expires twenty years after the filing date of the application [s. 27(1)] . 
 
G. LAYOUT -DESIGNS (TOPOGR APHIES) OF INTEGRATE D CIRCUITS  
17. Please describe in detail the protection for layout -designs of integrated circuits 
provided under the laws of St. Kitts and Nevis, including the term of protection, and cite to 
the relevant provisions of law.  
 
Under s. 6 of the Protection of Layout Designs (topographies) of Integrated Circuits Act  makes it 
unlawful to perform certain acts without the authorisation of the right holder. This includes:  
 
(a) the reproduction, whether by incorporation in an integrated circuit or otherwise, of the 
protected layout -design in its entirety or any part thereof, except the reproduction of any part that 
does not comply with the requirement of originality defined in section 4;  IP/C/W/623  
 
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  (b) the importation, sale or other distribution, for commer cial purposes, of the protected layout -
design, an integrated circuit in which the protected layout -design is incorporated, or an article 
incorporating such an integrated circuit in so far as it continues to contain an unlawfully reproduced 
layout -design.  
Where an infringement has occurred it is open to the right holder to apply to the Court for relief 
including an injunction, damages, an order for the seizure, forfeiture or destruction of the infringing 
goods or any other remedy provided for in law.  
 
Sectio n 7 provides that the term of protection is for ten years after the date of commencement. 
Protection commences:  
 
(a) on the date of the first commercial exploitation, anywhere in the world, of the layout -design by, 
or with the consent of, the right holder,  provided that an application for protection is filed by the right 
holder with the Registrar within the time limit referred to in section 8(3); or  
 
(b) on the filing date accorded the application for the registration of the layout -design filed by the 
right holder if the layout -design has not been previously exploited commercially anywhere in the 
world.  
 
H. PROTECTION OF UNDISC LOSED INFORMATION  
There is currently no legislation dealing with undisclosed information therefore no further response 
can be given t o questions 17 to 19.  
 
18. Please describe in detail how the laws of St. Kitts and Nevis provide for the protection 
of undisclosed information as required by Article 39.2 of the TRIPS Agreement and provide 
citations to the relevant provisions of law.  
 
19. Please describe in detail the manner in which protection is provided test data 
regarding pharmaceutical and agricultural chemical products submitted to the government 
in order to obtain marketing approval in St. Kitts and Nevis and cite to the relevant 
provisions of law.  
 
20. Are other applicants for marketing approval for their own versions of a previously 
approved pharmaceutical or agricultural chemical products permitted to rely on data 
submitted by the earlier applicant?  If so, how long a period of ex clusivity is given the 
earlier applicant before such reliance becomes possible.  
 
I. ENFORCEMENT  
21. Please describe in detail the manner in which the laws of St. Kitts and Nevis provide 
for effective action against infringement of intellectual property rig hts as required by 
Article 41.1 of the TRIPS Agreement.  
 
Please refer to  the responses to the Checklist on Issues of Enforcement . 
 
 
22. Article 43.1 of the TRIPS Agreement requires that judges be authorized to order 
production of evidence necessary to sub stantiate a party 's claims where that party has 
been unable to obtain such evidence from the opposing party.  Please describe how the 
laws or regulations of St. Kitts and Nevis provide this authorization, citing to the relevant 
provisions of law or regulat ion. 
 
Please refer to the responses to the Checklist on Issues of Enforcement . 
 
23. Please describe in detail all of the civil remedies that are available to right holders 
under the laws of St. Kitts and Nevis, citing to the relevant provisions of law or r egulation.  
 
Please refer to the responses to the Checklist on Issues of Enforcement . 
 IP/C/W/623  
 
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  24.  Please describe in detail the provisional procedures and remedies available to right 
holders under the laws of St. Kitts and Nevis, citing to the relevant provisions  of law and 
regulation, and indicate any condition under which a right holder may avail itself of those 
procedures and remedies.  
 
Please refer to the responses to the Checklist on Issues of Enforcement . 
 
J. SPECIAL REQUIREMENTS  RELATED TO BORDER ME ASURES  
25. Please describe in detail the procedures under the laws of St. Kitts and Nevis that 
provide for border enforcement at least for trademark counterfeiting and copyright piracy, 
identifying the competent authority and citing to the relevant provisions of l aw or 
regulation.  
 
Please refer to the responses to the Checklist on Issues of Enforcement . 
 
26.  Please indicate if border enforcement is available to owners of other forms of 
intellectual property and, if so, please describe the procedures and remedies available in 
relation to each form of intellectual property, citing the relevant provisions of law.  
 
Please refer to the responses to the Checklist on Issues of Enforcement . 
 
27. Article 58 of the TRIPS Agreement specifies procedures to be followed where t he 
competent authorities can act ex officio .  Please explain whether the competent authorities 
in St. Kitts and Nevis are empowered to act ex officio  and, if so, please identify the 
intellectual property areas subject to ex officio  action.  
 
Please refer to  the responses to the Checklist on Issues of Enforcement . 
 
K. CRIMINAL PROCEDURES  
28. Please describe in detail how the laws of St. Kitts and Nevis implement Article 61 of 
the TRIPS Agreement that requires Members to have criminal procedures and penalties,  
including imprisonment and/or monetary fines sufficient to act as a deterrent, at least for 
cases of wilful trademark counterfeiting and copyright infringement on a commercial scale.  
Please cite to the relevant provisions of law and regulation.  
 
Please r efer to the responses to the Checklist on Issues of Enforcement . 
 
29. Article 61 also requires that remedies in appropriate cases include the seizure, 
forfeiture and destruction of infringing goods and any materials and implements the 
predominant use of wh ich has been the commission of the offence.  Please describe the 
provisions in the laws of St. Kitts and Nevis that provide for such remedies, and describe 
the circumstances in which those remedies would be imposed, citing to the relevant 
provisions of law  or regulation.  
   
Please refer to the responses to the Checklist on Issues of Enforcement . 
 
30. Article 61 also indicates that Members may provide for criminal procedures and 
penalties in cases of wilful infringement of other forms of intellectual propert y.  Please 
describe any provisions of the laws of St. Kitts and Nevis that provide for such procedures 
and remedies, citing to the relevant provisions of law or regulation.  
 
Please refer to the responses to the Checklist on Issues of Enforcement . 
 
L. STATI STICAL QUESTIONS  
31.  Please provide statistical information related to civil copyright, trademark, 
geographical indication, industrial design, patent, integrated circuit layout -design, and 
trade secret enforcement for 2000, including the number of cases f iled;  injunctions issued;  
infringing products seized;  infringing equipment seized;  cases resolved (including 
settlement); and the amount of damages awarded.  IP/C/W/623  
 
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  Please refer to the responses to the Checklist on Issues of Enforcement . 
 
32.  Please provide s tatistical information related to criminal enforcement in the area of 
copyright piracy and trademark infringement for 2000, including the number of raids, 
prosecutions, convictions, and the amount of fines and/or jail terms (including whether the 
fines wer e paid and whether the jail term was actually served or was suspended) and any 
other information establishing that the criminal system operates effectively to deter 
copyright piracy and trademark counterfeiting.  
 
Please refer to the responses to the Check list on Issues of Enforcement . 
 
 
EUROPEAN UNION6 
A. GENERAL PROVISIONS  
1. Please describe if your legislation includes measures necessary to protect public 
health and nutrition, and to promote the public interest in sectors of vital importance to 
your socio -economic and technological development as mentioned under Article 8 of the 
TRIPS Agreement. If yes, please explain how such measures are consistent with the 
provisions of the TRIPS Agreement.  
 
Section 34(1) of the Patents Act allows the Minister responsible  for intellectual property matters to 
decide, even without the authorization of the patent owner, that a Government agency or designated 
third party may exploit a patented invention where such exploitation is necessary "in the public 
interest, in particula r national security, nutrition, health or the development of other vital sectors of 
the national economy ". Such compulsory licenses may also be granted  where the Minister has 
determined that the patent owner 's or licensee 's manner of exploitation is anti -competitive and to 
issue such a license would remedy that practice.  
 
B. COPYRIGHT AND RELATE D RIGHTS  
2. Please state how your legislation provides for the protection of the exclusive rights 
of authors in relation to their literary and artistic works, as speci fied in Article 9 of the 
TRIPS Agreement which requires Members to comply with Articles 1 -21 of the Berne 
Convention and the Appendix to the Berne Convention (1971).  
 
In accordance with Art. 2(1) of the Berne Convention, section 6 of the Copyright Act gran ts protection 
to eligible literary and artistic works, inter alia. Literary works are defined as  works, other than a 
dramatic or musical work, which is written, spoken or sung, and accordingly includes a written table 
or compilation or a computer programme . Artistic work refer s to 
 
(a) a graphic work, photograph, sculpture or collage, whether the work is of artistic quality or not;  
(b) a building or a model of a building, whether the building or model is of artistic quality or not; or  
(c) a work of artistic  craftsmanship to which neither paragraph (a) nor paragraph (b) applies.  
 
Section 9 gives authors the exclusive right to copy the work, to issue copies of the work to the public, 
to perform the work in public or, in the case of a sound recording, film, bro adcast or cable 
programme, to play or show the work in public; to broadcast the work or include it in a cable 
programme service and to make an adaptation of the work and, in relation to such adaptation, to do 
any or all of the foregoing acts. The right to translate literary and artistic works in Art. 8 is expressly 
included in the definition of adaption under the Act.  
 
Protection lasts for 50 years after the life of the author (s. 10) which is the minimum standard set by 
Art. 7 (this includes anonymous and  pseudonymous works). A work of joint authorship qualifies for 
copyright protection if any of the authors satisfies the eligibility requirements. [Art. 7bis/ s. 7(2)].  
 
The principle of automatic protection in Art 5 of the Berne is reflected as the Act con tains no formal 
requirements for protection. The Act contains a number of exceptions permitted under Berne including 
artistic and literary works used in administrative and judicial proceedings, the course of education, 
                                                
6 Questions from the European Union to Saint Kitts and Nevis are contained in document IP/C/W/274 . IP/C/W/623  
 
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  research and private study, criticism  or review, reporting of current events, incidental inclusion and 
use for charitable purposes. Use in such circumstances is subject to fair dealing principles (s. 54).  
 
In accordance with Art. 16, a copyright holder whose rights have been infringed or susp ects that their 
rights have been or will be infringed:  
 
1) has legal recourse to bring an action against the infringer (s.32).  
2) can notify the Comptroller of Customs in writing requesting the Comptroller to treat infringing 
printed copies as prohibited goods under the Customs (Control and Management) Act, Cap. 
20.04 during a period specified in the notice  
 
Section 141 also provides that where a member of the Police Force of or above the rank of Inspector 
is satisfied that there is reasonable cause to believe that an offence against this Act is being 
committed, he or she may give directions to any constable authorising him or her to  
 
(a) enter and search any premises or place;  
(b) stop, board and search any vessel, other than a ship of war, or any aircraft, oth er than a 
military aircraft; or  
(c) stop and search any vehicle, in which the constable reasonably suspects there is an infringing 
copy of a work or an illicit recording or any article used or intended to be used for making infringing 
copies or illicit rec ordings; and  
(d) seize, remove or detain  
 (i) any article which appears to the constable to be an infringing copy or an illicit recording 
or any other article which appears to him or her to be intended for use for making such copies or 
recordings; and  
 (ii) anything which appears to him or her to be or to contain, or to be likely to be or to 
contain, evidence of an offence under this Act.  
 
3. Please describe the protection accorded to authors of computer programs,  databases 
or compilations of data.  
 
Computer programs, databases and compilations of data are eligible for protection as literary works 
and the attendant economic rights apply. Section 6(2) provides that a compilation of data or other 
material, whether in a machine -readable or other form, is eligible  for protection as a literary work, 
except that  
 
(a) the compilation shall only be regarded as original if, by reason of the selection or arrangement 
of its contents, the compilation constitutes the author 's own intellectual creation; and  
(b) the protectio n does not extend to any data or other material forming part of the compilation 
and is without prejudice to any copyright subsisting in any such data or other material.  
 
The moral right to be identified as the author of a computer programme does not apply unless 
expressly provided for in contract [s. 14(9)]. The moral right to object to derogatory treatment also 
does not apply to computer programmes. Section 45(4) provides that where an action is brought for 
infringement with respect to a computer programme , and copies of the programme are issued to the 
public in an electronic form bearing a statement  
(a) that a named person was the owner of copyright in the programme at the date of issue of the 
copies; or  
(b) that the programme was first published in a name d country or that copies of it were first issued 
to the public in electronic form in a specified year;  
the statement shall be admissible as evidence of the facts stated and presumed to be correct until the 
contrary is proved.  
 
Copyright in a computer progr amme shall not be infringed by the rental of copies to the public after 
the end of the period of fifty years from the end of the calendar year in which copies of it were first 
issued to the public in electronic form [s.78(4)].  
 
4. Please state whether your le gislation provides for a rental right and, if so, the works 
to which it applies . 
 IP/C/W/623  
 
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  Section 3(2) of the Act provides that references to the issue of copies of a work in relation to sound 
recordings, films and computer programs, includes the act of issuing co pies to the public by rental. 
The exclusive right to issue copies of work to the public is provided for in s. 9(1)(b).  
 
5. Please describe the rights granted to performers, producers of phonograms (sound 
recordings) and broadcasting organisations under your l egislation.  
 
Section 108 gives performers the exclusive right to prevent any person, without the consent of the 
performer, from exploiting his or her performance; and a person who has recording rights in relation 
to a performance, shall have the exclusive right to prevent any person, without his or her consent 
from making a recording of that performance. These rights operate independently of any other 
copyright or moral right in relation to any work used or performed in the performance.  
 
A performer 's righ ts are infringed by a person who, without his or her consent,  
(a) makes, otherwise than for his or her private and domestic use, a record of the whole or any 
substantial part of a qualifying performance; or  
(b) broadcasts live, or includes in a cable progr amme service, the whole or any substantial part of a 
qualifying performance.  
 
In an action for infringement of a performer 's rights brought by virtue of this section, damages shall 
not be awarded against a defendant who shows that at the time of the infrin gement he or she 
believed, on reasonable grounds, that consent had been given (s. 109)  
 
Section 113 provides that the original phonogram producer and any performer are due remuneration 
where an eligible original phonogram is made available to the public fo r commercial purposes. 
Performers ' rights are also infringed where copies of illicit recordings are imported into St. Kitts and 
Nevis  
 
Producers of phonograms and broadcast organisations have the right to play or show the work in 
public. They also have the  right to copy and issue copies to the public (which includes the right of 
rental). Broadcast organisations have the right to broadcast the work or to include it in a cable 
programme service. Moral rights are also conferred on these three classes of author s/owners.  
 
6. Please state whether your legislation provides for any limitation or exception in 
relation to each of the rights described above in accordance with the relevant provisions of 
the Berne and Rome Conventions and in light of Articles 13 and 14.6 of  the TRIPS 
Agreement.  
 
The rights of performers, phonogram producers and broadcast organisations are subject to certain 
limitations. These are:  
 
 Reception and re -transmission of broadcast in cable programme service (s. 83)  
 Incidental inclusion (s. 119, s. 126) 
 Acts done for the purpose of instruction (s. 120)  
 Recording of broadcasts or cable programmes by educational establishment (s. 121)  
 Acts done to performance or recording for parliamentary proceedings (s. 122)  
 Reporting current events (s. 124)  
 Playing sound recording for charitable purposes (s. 125)  
 Making  or use by a prescribed broadcasting organisation for the purpose of maintaining 
supervision and control over programmes broadcast by that organisation of recordings of 
those programmes. (s.127)  
 Recor ding broadcast for archival purpose (s. 128)  
 
Section 118 provides that the exceptions and limitations are subject to the fair dealing principles. 
Section 86 also provides that the Minister may order further exceptions and those specified exceptions 
must b e: 
 
(a) are necessary in the public interest in connection with an event of national importance;  
(b) would not conflict with the normal exploitation of the work; and  
(c) would not unreasonably prejudice the legitimate interest of the owner of the copyright  in the 
work.  
 IP/C/W/623  
 
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  The Order shall also make provision for the payment of equitable remuneration to the copyright owner 
to be determined. The three -step test in Art. 13 of TRIPS is therefore reflected in the Act and the 
requirements of Art. 14(6) TRIPS are sat isfied.  
 
7. Please state the terms of protection of each right described above and the work or 
subject matter to which it applies.  
 
Section 12(1) provides that copyright in a broadcast or cable programme shall expire at the end of a 
period of fifty years from  the end of the calendar year in which the broadcast was made or the 
programme was included in a cable programme service. Copyright in a repeat broadcast or a repeat 
cable programme shall expire at the same time as copyright in the original broadcast or ca ble 
programme, and accordingly, no copyright shall arise in respect of a repeat broadcast or a repeat 
cable programme which is broadcast or, as the case may be, included in a cable programme service 
after the expiry of the copyright in the original broadca st or cable programme. A repeat broadcast or a 
repeat programme means one which is a repeat of a broadcast previously made, or as the case may 
be, of a cable programme previously included in a cable programme service.  
 
Section 11(1) provides that copyrigh t in a sound recording or film expires at the end of a period of 
fifty years from the end of the calendar year in which it was made, or where it is made available to 
the public before the end of that period, fifty years from the end of the calendar year in  which it is so 
made available.  
(2) For the purposes of subsection (1) of this section, a sound recording or film is made available to 
the public when  
(a) it is first published, broadcast or included in a cable programme service;  
(b) in the case of a film or film soundtrack, the film is first shown in public.  
(3) In determining whether a sound recording or film has been made available to the public, for the 
purposes of subsection (2) of this section, any unauthorised act shall be disregarded.  
 
Moral rights are also conferred on performers, producers of phonograms and broadcast organisations 
and these subsist so long as copyright exists.  
 
8. Please state how your legislation grants the retroactive protection provided pursuant 
to Article 18 of the Berne Conventio n (the obligation of which derives from Article 9 of the 
TRIPS Agreement) and Article 14.6 of the TRIPS Agreement.  
 
Prior to its independence from the United Kingdom in 1983, copyright in St. Kitts and Nevis was 
governed by the 1956 UK Copyright Act and th e 1919 Copyright Act, Cap 336 which remained in 
effect until the present Copyright Act came into force in 2002. Section 154 of the present Act ceased 
operation of the UK Act and repealed Cap. 336. Subsection 2 provides that:  
 
Where, immediately prior to th e appointed day, copyright subsists in Saint Christopher and Nevis in 
any literacy, dramatic, musical or artistic work by virtue of the Copyright Act, Cap. 336 referred to in 
subsection (1) of this section, that copyright shall continue to subsist, and the  person entitled to the 
copyright by virtue of that Act shall be the owner of the copyright, under and subject to this Act, and, 
in particular.  
(a) the duration of the copyright;  
(b) the acts comprised within the exclusive rights attaching to the copyright ; and  
(c) the effect upon the ownership of the copyright of any event or transaction occurring or of any 
contract or agreement made on or after the appointed day;  
shall be governed by this Act.  
 
 
C. TRADEMARKS  
9. Please give the definition of a sign under you r national legislation and explain under 
what conditions it is protectable.  
 
A "sign" is not specifically defined in the Marks, Collective Marks and Trade Names Act but s. 2 defines 
a "mark" as "any visible sign capable of distinguishing the goods ( "tradem ark") or services ( "service 
mark") of an enterprise " and a collective mark as a visible sign designated as such in the application 
for registration and capable of distinguishing the origin or other common characteristic, such as the IP/C/W/623  
 
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  quality, of goods or se rvices of different enterprises which use the sign under the control of the 
registered owner of that sign.  
 
By law, a mark must satisfy the following characteristics:  
  
(a)  be capable of distinguishing the goods or services of one enterprise from those o f other 
enterprises;    
(b)  not be contrary to public order or morality;    
(c)  not be likely to mislead the public or trade circles, in particular, as regards the geographical 
origin of goods or services concerned or their nature or characteristics;    
(d)  not be identical to, or an imitation of, or contain as an element, an armorial bearing, flag or 
other emblem, a name or abbreviation or initials of the name of or official sign or hallmark adopted 
by, any State, inter -governmental Organisation or Organis ation created by an international 
convention, unless authorised by the competent authority of that State or Organisation;    
(e)  not be identical to, nor confusingly similar to, nor constitute a translation of, a mark or trade 
name which is well known in S aint Christopher and Nevis for identical or similar goods or services of 
another enterprise, or if it is well -known and registered in Saint Christopher for goods or services 
which are not identical, or similar to those in respect of which registration is a pplied for, provided, in 
the latter case, that    
(i) use of the mark in relation to those goods or services would indicate a connection between 
those goods or services and the owner of the well -known mark; and    
(ii) the interests of the owner of the well -known mark are likely to be prejudiced by such use; 
or   
(f)  not be identical to a mark belonging to a different owner and already on the Register, nor 
identical to a mark that has been filed earlier or given a priority date, in respect of the same goods or 
services or closely related goods or services, provided that the mark does not closely resemble such a 
mark so as to likely deceive or cause confusion.  
 
10. Please confirm whether or not services are a protectable subject matter in your 
trademark law.  Ple ase confirm if signs, such as trade names, are protectable. Please 
describe if elements such as sound, perfumes and containers are protectable.  
 
Services are a protectable subject matter in our trademark law. Applications can be made in respect 
of goods an d services only. Sounds, smells and containers are not protectable.  
 
11. 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 registra tion in that respect.  
 
There are no requirements of use as a condition for a trademark to be registered. However, section 12 
allows an interested person to apply to the Court to have a trademark removed from the Register if a 
registered trademark has not b een used for three years or more. Moreover, s. 15 states that a 
collective mark can be invalidated if it can be proven that not only the registered owner uses the 
mark.  
 
12. Please confirm whether or not your legislation permits that the registration of 
tradem arks be indefinitely renewable.  
 
Section 10 provides that registration of a mark expires ten years from the initial filing but that on the 
payment of a renewal fee, it can be renewed for consecutive periods of ten years. This implies that 
trademarks may be  indefinitely renewable.  
 
13. Please describe the special requirements, if any, prescribed by your legislation 
concerning the use of a trademark.  
 
Other than the provisions highlighted in question #11 above, there are no further requirements 
concerning the use  of trademarks prescribed in the legislation.  
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  D. GEOGRAPHICAL INDICAT IONS  
14. Please explain whether or not your trademark registration authority refuses a 
trademark application if it contains a geographical indication.  
 
Section 4(c) of the Marks, Collective Marks and Trade Names Act provides that a trademark would not 
be registrable if it is likely to mislead the public or trade circles, in particular, as regards the 
geographical origin of goods or services concerned or their nature or characteristics.  
 
15. Pleas e give the definition of a geographical indication in your legislation.  
 
Section 2 of the Geographical Indications Act provides that "geographical indication " means an 
indication which identifies any goods as originating in the territory of a country, or a  region or locality 
in that territory, where a given quality, reputation or other characteristic of the good is essentially 
attributable to its geographical origin . 
 
16. Please describe and explain the provisions of your legislation establishing a link, if 
any, between the characteristics of an indication and its geographical origin.  
 
The link between the characteristics of an indication and its geographical origin are established in the 
definition of a geographical indication in s. 2 of the Act.  
 
17. Please descri be 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.  
 
Section 13 of the Act enables an interested person to institute proceedings in respect  of unlawful use 
of geographical indications. Unlawful use means use of a geographical indication on a good  that does 
not originate in the geographical area indicated therein in a manner which misleads the public as to 
the true geographical origin of the goods. In addition to that protection, s. 13(1)(c) provides that it 
would still constitute unlawful use in respect of wines and spirits where the true origin of such goods 
is indicated or the geographical indication is used in translation or accompanied by  expressions such 
as "kind", "type", "style", "imitation " or the like.  
 
18. 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 
names co nsidered as generic in your jurisdiction.  
 
The provisions of the Act have never been tested so there are no examples of exceptions by courts 
and a list of names considered as generic in this jurisdiction has never been attempted.  
 
In accordance with TRIPS  Art. 24(3), s. 16(1) provides that nothing in the Act shall prevent the 
continued and similar use, in Saint Christopher and Nevis, of a particular geographical indication of 
another country identifying wines or spirits in connection with goods or services  by any nationals or 
domiciliaries of Saint Christopher and Nevis who have used that geographical indication continuously 
with regard to the same or related goods or services in the Federation of Saint Christopher and Nevis  
(a) for at least ten years prece ding the 15th of April, 1994: or  
(b) in good faith preceding that date.  
 
In accordance with TRIPS Art. 24(5), s. 16(2) provides that where a trademark has been applied for 
or registered in good faith, or where rights to a trademark have been acquired throu gh use in good 
faith 
(a) before the date of entry into force of this Act; or  
(b) before the geographical indication is protected in its country of origin,  
this Act shall not prejudice the registrability of, or the validity of, the registration of a tradema rk, or 
the right to use a trademark, on the basis that such a trademark is identical to, or similar to, a 
geographical indication.  
 
In accordance with TRIPS Art. 24(6), s. 16(3) provides that nothing in this Act shall apply in respect 
of a geographical ind ication of any country with respect to goods or services for which the relevant 
indication is identical to the term customary in common language as the common name for such 
goods or services in Saint Christopher and Nevis, or in respect of a geographical i ndication of any IP/C/W/623  
 
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  other country with respect to products of the vine for which the relevant indication is identical to the 
customary name of a grape variety existing in Saint Christopher and Nevis as of the 1st of January, 
1995.  
 
In accordance with TRIPS Ar t. 24(7), s. 16(4) provides that any application for relief made under Part 
III of this Act in connection with the use or registration of a trademark shall be made  
(a) within five years after the unlawful use of the protected indication has become generall y known 
in Saint Christopher and Nevis; or  
(b) after the date of the registration and publication of the trademark in Saint Christopher and 
Nevis, provided that  
 (i) the date of registration in paragraph (b) is earlier than the date on which the unlawful 
use became generally known in Saint Christopher and Nevis; and  
 (ii) the geographical indication is not used or registered in bad faith.  
 
In accordance with TRIPS Art. 24(8), s. 16(5) provides that the Act shall in no way prejudice the right 
of any person t o use, in the course of trade, that person 's name or the name of that person 's 
predecessor in business, except where such name is used in such a manner as to mislead the public.  
 
E. INDUSTRIAL DESIGNS  
There is currently no legislation in SKN for industria l designs. Therefore no further response can be 
given to questions 19 to 22.  
 
19. Please explain whether or not your legislation extends to the protection of designs 
dictated essentially by technical or functional considerations.  Please explain how textile 
designs are protected.  
 
20. Please explain how your legislation protects right holders of a design against 
importing of articles bearing embodied or copied design.  
 
21. Please state whether or not your legislation provides for the right to issue a 
compulsory licenc e for industrial designs.  
 
22. Please indicate for what period of time your legislation grants protection for 
industrial designs.  
 
F. PATENTS  
23. Please describe how your legislation defines the notions of: novelty, inventiveness 
and industrial application.  
 
Novel ty 
Section 9 of the Patents Act provides that an invention shall be considered new if the invention does 
not form part of prior art. Prior art in relation to an invention means anything which has, at any time 
prior to the filing date or, where priority is claimed, the priority date, of the application claiming the 
invention, been disclosed to the public anywhere in the world by oral or written description, by use, or 
in any other way.  
 
Inventiveness  
An invention shall be considered to involve an inventive s tep if, having regard to the prior art relevant 
to the application claiming the invention as defined in subsection (2) of section 8, it is not obvious to a 
person having ordinary skill in the art [s.8(3)]  
 
Industrial Application  
An invention shall be consi dered to be capable of industrial application if it can be made or used in 
any kind of industry including agriculture, fishery, handicraft and services [s. 8(4)].  
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  24. Please explain whether or not in your legislation, patent or otherwise, patent rights 
are en joyed without any exclusions.  If exclusions are provided for, please describe in 
detail how these exclusions are applied in legal as well as practical terms.  
 
The following, even if they are inventions within the meaning of this Act, shall be excluded fro m 
patentability, that is to say, anything which consists of  
(a) a discovery, scientific theory or mathematical method;  
(b) a scheme, rule or method for doing business, performing a mental act of playing a game; and  
(c) methods for the treatment of the huma n or animal body by surgery or therapy, as well as 
diagnostic methods practised on the human or animal body. [s.10(1)]  
 
25. 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.  
 
Section 10(3) provides that the patent for an invention that is contrary to public order or morality 
would  not be granted. It is within the discretion of the Registrar, having consideration to other laws 
and rules on public order and decency, to determine whether the commercial exploitation of an 
invention would go against public order or morality. There have been no instances on record where a 
determination had to be made on whether a patent would contravene that provision.  
 
26. Please explain whether or not diagnostic, therapeutic and surgical methods are 
excluded from patentability in your legislation. If so, pl ease explain the relevant section of 
your legislation and explain its formulation.  
 
Under s. 10(1)(c), methods for the treatment of the human or animal body by surgery or therapy, as 
well as diagnostic methods practised on the human or animal body are excl uded from patentability. 
This does not apply to products for use in any of the methods specified therein.  
 
27. 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.  
 
See answer to question 26 immediately above.  
 
28. Please describe how micro -organisms, non -essentially biological processes, 
microbiological processes and plant varieties are prote cted in your legislation. Please 
explain, in this respect, the relevant sections of your legislation.  
 
Section 10(3)(b) provides that a patent shall not be granted in respect of an invention if the 
commercial exploitation of the invention in St. Kitts and Nevis would be prejudicial to human, animal 
or plant life or health. Section 10(3)(c) also excludes inventions that are prejudicial to the 
environment from patentability.  
 
29. Please explain how your legislation protects patent right holders against the 
import ing and against the offering for sale of a patented invention.  
 
Section 32 confers the right on the patent holder to exclusively exploit a patented invention. 
Section  32(2) provides that the meaning of "exploiting " a patented invention expressly includes  
importing and offering for sale. Section 40 consequently gives the patent owner the right to institute 
Court proceedings to seek remedy against any person who infringes his or her rights.  
 
 
30. Please state if your legislation provides for patent product protec tion of 
pharmaceutical and agricultural chemical products.  In the affirmative, please indicate the 
legal reference.  
 
Provided that the pharmaceutical and agricultural chemical products in question do not fall within any 
of the categories that are excluded  from patentability, those products can be patent protected. The 
legislation does not contain an exhaustive list of products that can be patent protection.  
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  31. Please clarify if the patent protection of a process, as provided for in your legislation, 
covers t he product obtained directly by that process.  
 
Section 8(2) provides that an invention may be or may relate to a process. Section 32(2)(b) provides 
that where a patent is granted in respect of a process, a person has exploited that patent where they 
make, import, offer for sale, use, sell or stock for sale or use the product obtained by means of that 
process.  
 
32. Please explain the additional conditions, if any, in your legislation other than the 
sufficient disclosure of the invention in Article 29 of the TRIP S Agreement ( e.g. submission 
of justification for access to genetic material or prior inform consent to its use). If such 
additional conditions exist, please point out the relevant legislations and describe the 
additional conditions in detail.  
 
An applicat ion for a patent in St. Kitts and Nevis, must contain a request for the grant of a patent, a 
specification containing a description of the invention, a claim or claims and any drawings referred to 
in the description or any claim and an abstract containing the technical information [s. 16(2)]. 
Section  16(5) reproduces the condition in Art. 29 in that descriptions must disclose the invention in a 
manner which is sufficiently clear and complete to permit a person having ordinary skill in the art to 
carry out t he invention, and shall, in particular, indicate at least one mode known to the applicant in 
which the invention can be carried out.  
 
Section 16(4) provides that where an applicant is not the inventor or a joint inventor, he or she must 
provide a written statement justifying his right to the patent.  
 
33. 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.  
 
It is open to interested pe rsons to apply for a non -voluntary licence under s. 37 of the Act. 
Applications for these licenses are available to interested persons four years after the date of the 
grant or three years from the filing date, where the patent owner has not exploited or h as not 
sufficiently exploited the patented invention. Additionally, under s. 34, the Minister may decide that 
even without the agreement of the patent owner, a Government agency or a third party designated by 
the Ministry may exploit the invention where:  
(a) the public interest, in particular, National Security, Nutrition, Health, or the development of 
other vital sectors of the national economy so requires; or  
(b) the Minister has determined that the manner of exploitation, by the owner of the patent or hi s 
or her licensee, is anti -competitive, and he or she is satisfied that the exploitation of the invention in 
accordance with this subsection would remedy such practice.  
 
34. 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.  
 
Under s. 34, the Minister may decide tha t even without the agreement of the patent owner, a 
Government agency or a third party designated by the Ministry may exploit the invention where:  
(a) the public interest, in particular, National Security, Nutrition, Health, or the development of 
other vit al sectors of the national economy so requires; or  
(b) the Minister has determined that the manner of exploitation, by the owner of the patent or his 
or her licensee, is anti -competitive, and he or she is satisfied that the exploitation of the invention in  
accordance with this subsection would remedy such practice.  
 
The legislation does not expressly state that each authorization should be considered on its individual 
merits.  
 
35. Please explain how your legislation explicitly ensures that a proposed user has m ade 
efforts to obtain authorization from the right holder on reasonable commercial terms and 
conditions and that such efforts have not been successful within a reasonable period of 
time. In this context, how do you define "reasonable period of time ".  Plea se also explain 
how your legislation ensures that the use of a compulsory licence shall be authorised 
predominantly for the supply to the domestic market of the Member authorizing such use.  IP/C/W/623  
 
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  Section 34(4) provides a request for the Minister 's authorisation to exploit a patented invention shall 
be accompanied by evidence that the owner of the patent has received, from the person seeking the 
authorisation, a request for a contractual licence, but that that person has been unable to obtain such 
a licence on rea sonable commercial terms and conditions and within a reasonable time. What is 
reasonable is not defined in the legislation but will be determined by the Court based on the 
circumstances of each matter.  
 
Section 34(9) mandates that the exploitation of the patented invention by the Government agency or 
third person designated by the Minister shall be predominantly for the supply of the market in Saint 
Kitts and Nevis.  
 
36. Please state if your legislation grants additional protection for innovations after the 
20 years of patent protection has lapsed.  
 
The legislation does not grant additional protection for innovations after the twenty -year protection 
period has expired.  
 
37. Please explain how your legislation provides for the enhanced patent protection of 
patents o r patent applications pending on 1st January 1995.  
 
Prior to the present Patents Act, the 1906 Patents Act was in force. The present Act came into force in 
2002 and so patents and pending patent applications in 1995 would have been treated according to 
the provisions of the 1906 Act. The earlier legislation failed to provide adequately for the protection of 
the product as opposed to the process. The patent had a maximum duration of fourteen years and 
more contemporary considerations such as the applicabilit y of the Patent Cooperation Treaty were not 
taken account of. The prior Act failed to provide appropriately for the concept of novelty of invention 
and was overall very thin on procedural aspects. The various aspects and nuances of infringement 
were not co mprehensively dealt with. All of these areas have since been remedied by the existing 
Patents Act.  
 
38. Please explain how your legislation provides for the reversal of the burden of proof in 
relation to process patents.  
 
Section 40(7) provides that in any pro ceedings for infringement, other than criminal proceedings, 
where the subject matter of the patent is a process for obtaining a product, the burden of establishing 
that the product was not made by the process shall rest on the defendant if  
(a) the product is new; or  
(b) a substantial likelihood exists that the product was made using another process and the 
patentee has been unable, through reasonable efforts, to determine the process used.  
 
G. LAYOUT -DESIGNS (TOPOGRAPHIE S) OF INTEGRATED CIR CUITS  
39. Please desc ribe how your legislation protects Topographies.  
 
Under s. 6 of the Protection of Layout Designs (topographies) of Integrated Circuits Act, it is unlawful 
to perform certain acts without the authorisation of the right holder. This includes:  
 
(a) the reprod uction, whether by incorporation in an integrated circuit or otherwise, of the protected 
layout -design in its entirety or any part thereof, except the reproduction of any part that does not 
comply with the requirement of originality defined in section 4;  
(b) the importation, sale or other distribution, for commercial purposes, of the protected layout -
design, an integrated circuit in which the protected layout -design is incorporated, or an article 
incorporating such an integrated circuit in so far as it cont inues to contain an unlawfully reproduced 
layout -design.  
 
Where an infringement has occurred it is open to the right holder to apply to the Court for relief 
including an injunction, damages, an order for the seizure, forfeiture or destruction of the infrin ging 
goods or any other remedy provided for in law.  
 
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  40. Please explain what protection your national legislation grants to right holders 
against the unlawful importation, sale or distribution for commercial purposes of 
topographies including integrated circu its or other articles in which a topography is 
incorporated in accordance with Article 36 of the TRIPS Agreement.  
 
See answer to question 39 above.  
 
41. 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 article 
incorporating such an integrated circuit that it contains an unlawful topography.  
 
Section 6(3)(d) of the Act provides that protection of layout -designs shall not extend to acts of 
infringement referred to in s. 6(2)(b) (expanded in the answer to question 39) where the person 
performing or ordering the performance of such an act did not know, and had no reasonable ground 
for knowing, when acquiring the integrated circuit or the article incorporating such integrated circuit, 
that it incorporated an unlawfully reproduced layout -design.  
 
Section 6(4) further provides that where such a person who has unknowingly infringed the r ight has 
received sufficient notice that the layout -design was unlawfully reproduced, that person may perform 
any of the acts referred to in that subsection only with respect to the stock on hand or ordered before 
he received the notice, and shall be liabl e to pay, to the right holder, a sum equivalent to such 
reasonable royalty as would be payable under a freely negotiated licence in respect of such layout -
design.  
 
42. Please state the term of protection granted by your legislation to topographies.  
 
Section 7 provides that the term of protection is for ten years after the date of commencement. 
Protection commences:  
 
(a) on the date of the first commercial exploitation, anywhere in the world, of the layout -design by, or 
with the consent of, the right holder, pro vided that an application for protection is filed by the right 
holder with the Registrar within the time limit referred to in section 8(3); or  
(b) on the filing date accorded the application for the registration of the layout -design filed by the 
right hold er if the layout -design has not been previously exploited commercially anywhere in the 
world.  
 
H. PROTECTION OF UNDISC LOSED INFORMATION  
There is currently no legislation on the protection of undisclosed information. Therefore no further 
responses can be g iven to questions 43 to 45.  
 
43. 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.  
 
44. Please explain how your legislation defines undisclosed informatio n. 
 
45. Please explain how your legislation defines data submitted to governments or 
governmental agencies.  
 
I. ENFORCEMENT  
46. Please describe how your legislation provides for effective action against 
infringement of intellectual property rights.  
 
Please refer t o the responses to the Checklist on Issues of Enforcement . 
 
47. Please explain whether or not your legislation provides for a mechanism to appeal to 
judicial bodies of final administrative decisions.  
 
Please refer to the responses to the Checklist on Issues of  Enforcement . 
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  48. Please describe how your legislation authorizes judges to order production of 
evidence by the opposing party.  Please give precise information on what measures are 
taken to ensure the protection of confidential information.  
 
Please refer to the responses to the Checklist on Issues of Enforcement . 
 
49. Please quote provisions of your legislation that authorize judges to order a defendant 
to desist from an infringement.  
 
Please refer to the responses to the Checklist on Issues of Enforcement . 
 
50. Please quote what provisions of your legislation authorize judges to order the 
payment to the right holder of adequate damages to compensate the injury he suffered.  
 
Please refer to the responses to the Checklist on Issues of Enforcement . 
 
51. Please quote what pr ovisions of your legislation authorize judges to order the 
payment of the right holder 's expenses by the infringer.  
 
Please refer to the responses to the Checklist on Issues of Enforcement . 
 
52. Please explain if and how judges have the authority to order that  infringing goods are 
placed outside channels of commerce or destroyed.  
 
Please refer to the responses to the Checklist on Issues of Enforcement . 
 
53. Please quote what provisions of your legislation authorize judges to indemnify a 
defendant in the event of ab use by the plaintiff.  
 
Please refer to the responses to the Checklist on Issues of Enforcement . 
 
54. Please explain how your legislation implements Article 50 of the TRIPS Agreement.  
 
Please refer to the responses to the Checklist on Issues of Enforcement . 
 
55. Please identify the competent authorities in your jurisdiction who receive requests 
from right holders for an application to suspend the release of counterfeit goods by the 
customs authorities.  
 
Please refer to the responses to the Checklist on Issues of Enf orcement . 
 
56. Please indicate whether or not procedures are available to suspend the exporting of 
counterfeit goods.  
 
Please refer to the responses to the Checklist on Issues of Enforcement . 
 
57. Please quote what provisions of your legislation authorize the comp etent authorities 
to order the destruction or disposal of infringing goods.  
 
Please refer to the responses to the Checklist on Issues of Enforcement . 
 
58. Please indicate whether or not your legislation provides for a de minimis  imports 
exception.  
 
Please refe r to the responses to the Checklist on Issues of Enforcement . 
 
59. Please explain how your legislation implements Article 61 of the TRIPS Agreement.  
 
Please refer to the responses to the Checklist on Issues of Enforcement . 
 
 
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