. /.   WORLD TRADE  
ORGANIZATION  IP/C/W/533 
29 September 2009 
 
 (09-4551) 
Council for Trade-Related Aspects 
of Intellectual Property Rights Original:   English 
 
 
 
REVIEW OF LEGISLATION 
 
Responses from Tonga to questions posed by the United States  
 
 
 By means of a communication from the Dele gation of Tonga, dated 16 September 2009, the 
Secretariat has received the following responses to qu estions posed by the United States as circulated 
in document IP/C/W/531.  
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TONGA 
 
A. IP/N/1/TON/I/1
 – INDUSTRIAL PROPERTY ACT 1994  – NO. 19 OF 1994 
 According to Document IP/N/1/TON/1, the Government of Tonga is currently drafting 
an Industrial Property (Amendment) Bill 200 9 and has plans to table it in 2009. 
 1. What is the status of this bill?  If legisl ation has been enacted, what are the Government 
of Tonga's plans for implementation? 
 
 The Industrial Property (Amendment) Bill 2009 is  currently being considered by Parliament. 
When it is passed, the Act will become eff ective once it is published in the Gazette. 
 
2. The United States would also be interes ted in understanding whether this bill would 
propose any changes to the provisions regarding ex ceptions to exclusive patent rights in Part II 
of the Industrial Property Act 1994 (IP/N/1/TON/I/ 1) or to the ability to register well-known 
marks in Part V of the Act. 
 
 The amendments introduced in the IP (Amend ment) Bill 2009 do not propose any changes to 
the provisions regarding exceptions to exclusive patent  rights in Part II, nor to the ability to register 
well-known marks in Part V of the Industrial Pr operty Act 1994.  The amendments proposed are 
mostly to incorporate TRIPS provisions, given that the Act was enacted prior to the TRIPS 
Agreement.  
B. IP/N/1/TON/G/1
 - PROTECTION OF GEOGRAPHICAL INDICATIONS ACT 2002 
 Under Article 11 (2)(a) of the Act, it appears that the registrar is obligated to publish 
any application for a GI that meets the requirement s of the Act.  Likewise, the sole grounds for 
opposition appear to be a failure to meet th ose formal requirements (see Article 11(2)(b)). 
 3. Are applications for GI registration refused , or can they be opposed, if the proposed GI 
conflicts with a prior trademark? IP/C/W/533 
Page 2  
 
   
Refusal
 of application on ground of conflict with a prior trademark: 
 (i) Section 11(2) (a) - Registrar is obligated to publish any application for a GI that meets the 
requirements of s.11(1).  After publication, the Registrar can proceed to register if no 
opposition is tendered within the prescribed time, or  if any application is tendered, it has been 
decided in favour of the applicant. 
 (ii) The law does not expressly provide it as a ground to refuse an application, if it conflicts with 
a prior trademark. 
 
In fact, the Registrar is not obliged to look beyond the requirements of Section 11(1) while examining whether or not an application is  in order for publication/registration.   
 Opposition  
on ground of conflict with a prior trademark: 
 
 There is no express provision to allow a prior user  of a trademark to oppose an application for 
a GI where the latter conflicts with the prio r trademark, during the application process. 
  Section 23(2) of the Act may however operate to  allow a prior user of a trademark to oppose 
an application in regard to a trademark for which an application has been made or which has been 
registered in good faith. 
 
4. Does the registrar have authority under the Act to refuse applications for GI 
registration if a given quality, reputation or other characteristic is not recognized by consumers 
in Tonga as attributable to the GI?  Can such a pplications be opposed by a third party on such 
basis during the GI registration process?  
 The Registrar has the authority under Section 7(1)  to refuse applications for GI registration on 
the basis that a given quality, reputation or other characteristic is not attributable to the GI.   
C. IP/N/1/TON/1
 - ANNEX III - SOME INFORMATION ON THE DRAFT INTELLECTUAL 
PROPERTY LAWS: 
5. What is the status of the Enforcement and Border Measures Bill that the Parliament 
was going to review in May 2009?  If legislation has been enacted, what are the Government of Tonga's plans for implementation? 
  The Bill is currently being reviewed by th e Law Committee before tabling in Parliament. 
 
6. Does this Bill provide elaboration on the enforcement of trademarks? 
 
 The Bill does elaborate on the enforcement on trademarks. 
 7. What is the status of the Plant Variety Pr otections Bill that the Parliament was going to 
review in May 2009?  If legislation has been enac ted, what are the Government of Tonga's plans 
for implementation? 
 
 The Bill is at its final stage of public consu ltation with stakeholders before being submitted to 
the Law Committee for final review and subsequently tabling in Parliament. 
 
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