WORLD TRADE  
ORGANIZATION  IP/Q/TON/1 
IP/Q2/TON/1 
IP/Q3/TON/1 IP/Q4/TON/1 
7 September 2010 
 
 
(10-4594) 
Council for Trade-Related Aspects of Intellectual Property Rights Original:   English 
 
  
REVIEW OF LEGISLATION 
 
TONGA
1 
   The present document reproduces the introductory statement made by the delegation of Tonga, the questions put to it and the responses give n in connection with the review of legislation 
undertaken at the Council's meeting of 27-28 October 2009.
2 
 
_______________ 
 
 
I. INTRODUCTORY STATEMENT3  
1. The representative of Tonga said that, during Tonga's accession process, Tonga had made an 
extensive presentation on its legislation and committed  to an action plan to put in place the necessary 
legislation to make its intellectual property system  fully compliant with the TRIPS Agreement.  The 
main instruments of this system included the followi ng:  (a) the Industrial Property Act 1994 and later 
amendments which provided protection for patent s and trademarks, and the amendments which 
ensured the compliance with WTO commitments a nd TRIPS-plus provisions including compulsory 
licensing, parallel importing and da ta exclusivity;  (b) the Copyright Act 2002 which had been in 
force since July 2002 and included comprehensive provisions on copyright;  (c) the Protection of 
Geographical Indications Act 2002 wh ich had entered into force in September 2002 and provided for 
a system of protection of geographical indications that was uncomplicated and complied with 
international obligations in the fiel d of intellectual property;  draft re gulations were currently with the 
Crown Law and needed to be redrafted according to  drafting protocols and drafting instructions;  
(d) the Protection of Layout-Designs (Topography) of  Integrated Circuits Act 2002 which provided 
protection for original layout-designs or topography of  integrated circuits and had been in force since 
September 2002;  (e) the Protection against Unfair  Competition Act 2002 which had been in force 
since September 2002;  this Act provided protec tion against acts or practices deemed as unfair 
competition under agreements and the said Act;  a nd (f) regarding civil judicial procedures and 
remedies, the Supreme Court Rules 2007 made pur suant to section 6 of the Supreme Court Act 
(Cap. 10) which governed judicial proceedings and prescribed modalities for civil proceedings in the 
superior courts. 
                                                      
1 As regards laws and regulations notified by Tonga under Article 63.2 of the Agreement, reference is 
made to documents IP/N/1/TON/1, IP/N/1/TON/C /1, IP/N/1/TON/I/1, IP/N/1/TON/I/1/Add.1 and 
IP/N/1/TON/I/1/Add.2, IP/N/1/TON/L/1, IP/N/1/TON/G/1 an d IP/N/1/TON/O/1. 
2 The minutes of this meeting have been circulated as document IP/C/M/61. 
3 As reflected in paragraphs 6-8 of document IP/C/M/61. IP/Q/TON/1, IP/Q2/TON/1,  
IP/Q3/TON/1, IP/Q4/TON/1 Page 2 
 
 
  2. He said that, despite the efforts and the pr ogress achieved so far in bringing Tonga's 
intellectual property regime into full complianc e with the TRIPS Agreement and international 
standards, some intellectual property laws were still outstanding due to domestic events which had 
shifted priority to other more pressing legislative requirements.  Two bills were awaiting adoption.  
One was the Enforcement and Bord er Measures Bill providing remedies for infringements of rights 
under existing intellectual property laws.  This w as essential to ensure full compliance with the 
minimum standard set out in the TRIPS Agreement.  The other was the Plant Variety Protection Bill seeking to protect plant varieties, which had been drafted with the technical support of UPOV.  The 
Bill would go through a process of public consultati on before being discussed at the next session of 
Tonga's legislative assembly. 
3. He said that Tonga would continue its efforts to  bring its intellectual property regime into full 
compliance
 with WTO rules.  He expressed his gra titude to WTO Members who had provided 
technical support at various levels, especially Austra lia and New Zealand.  He also thanked Japan and 
the United States for their questions. 
II. RESPONSES FROM TONGA TO QUESTIONS POSED BY JAPAN 
A. EXPLOITATION BY GOVERNMENT OR PERSON THEREBY AUTHORIZED  
 Industrial Property Act 1994 of Tonga provides for governmental use under 
Article 13(5)(a), which states "Where … public interest, in particular, … the development or other vital sector of the national economy so re quire, the Minister may decide that, even without 
the permission of the patentee, a government  agency or a third person designated by the 
Minister may exploit the invention, subject to th e payment of an equitable remuneration to the 
patentee."    1. Please explain how Article 13(5)(a) in Industrial Property Act 1994 of Tonga is consistent with the TRIPS Agreement, esp ecially regarding the following points: 
  What is included in the amendments proposed  in the "Industrial Property (Amendment) Bill 
2009", (which is currently being reviewed by Parlia ment), is the deletion of Section 13(5), together 
with the creation of new Section "16A Emergency Measures", which provides the answers to the questions raised by Japan.  The wording of Sectio n 16A is attached as annex to this document, for 
reference.  (a) Other use without authorization of the right holder shall be considered on its individual 
merits (Article 31(a) of the TRIPS Agreement); 
- Section 16A(1)(b) provides for exploitation by a third person of a patent without permission 
of owner, if the manner of exploitation is anti-competitive; 
  
 -  Section 16A(6) provides that the exploitation of patent by a third person can be authorized, 
in the field of semi-conductor tec hnology, for public non-commerce use; 
  
-  Section 15 of the Act also allows the explo itation of patent without the owner's permission 
if the patented invention is not worked or insufficiently worked in Tonga. 
  IP/Q/TON/1, IP/Q2/TON/1,  
 IP/Q3/TON/1, IP/Q4/TON/1  Page 3 
 
 
  (b) As a general rule, such use may only be permitted if, prior to such use, efforts to obtain 
authorization from the right holder have b een made on reasonable commercial terms 
and conditions and such efforts have not b een successful within a reasonable period of 
time (Article 31(b) of the TRIPS Agreement); 
 -  Section 16A (4) provides for this. 
 
(c) The requirement in the above (b) may be waived  in the cases of a national emergency or 
public non-commercial use (Article 31(b) of the TRIPS Agreement). 
 -  Section 16A (5) provides for this. 
  
 Once the Industrial Property (Amendment) Bill is passed by Parliament, the new Section 16A will become effective.  
III. RESPONSES FROM TONGA TO THE QUESTIONS POSED BY THE UNITED 
STATES 
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? 
 
 Refusal
 of application on ground of conflict with a prior trademark: 
 IP/Q/TON/1, IP/Q2/TON/1,  
IP/Q3/TON/1, IP/Q4/TON/1 Page 4 
 
 
  (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. 
 
  IP/Q/TON/1, IP/Q2/TON/1,  
 IP/Q3/TON/1, IP/Q4/TON/1  Page 5 
 
 
  ANNEX I 
 
Industrial Property (Amendment) Bill 2009 : Section 16A
 
 
 
16A  Emergency Measures 
 
(1) The Minster may decide that, even without th e agreement of the owner of the patent, a 
Government agency or a third person designa ted by him may exploit a patented invention 
where the; 
 
(a) public interest, in particular, national security , nutrition, health or  the development of 
other vital sectors of the national economy so requires; or 
 
(b) Court has determined that the manner of exploitation, by the owner of the patent or 
licensee, is anti-competitive, and the Minister is satisfied that the exploitation of the 
invention in accordance with this s ubsection would remedy such practice. 
 (2) The exploitation of the patented invention sh all be limited to the purpose for which it was 
authorized and shall be subjected to the paym ent to the owner of an adequate remuneration 
taking into account the economic value of the Mi nister’s authorization, as determined in the 
said decision, and, where a decision has been ta ke under subsection 1(b), the need to correct 
anti-competitive practices.  
  (3) The Minister shall make his decision after hearing the owner of the patent and any interested 
person if they wish to be heard. 
 (4) A request for the Minister’s authorization sha ll be accompanied by evidence that the owner of 
the patent has received, from the person seeking authorization, a request for a contractual 
license, but that person has been unable to obtain such a license on reasonable commercial terms and conditions and within a reasonable time. 
 
(5) Subsection (4) shall not apply in cases of –  
(a) national emergency or other circumstances of extreme urgency provided, however, 
that in such cases the owner of the patent shall be notified by the Minister’s decision 
as soon as reasonably practicable; 
 
(b) public non-commercial use;  and 
 (c) Anti-competitive practices determin ed as such by the Minister. 
 
(6) The exploitation of a patented invention in  the field of semi-conductor technology shall only 
be authorized either for public non-commercial u se or where the Minister has determined that 
the manner of exploitation of the patented inve ntion, by the owner of the patent or his 
licensee, is anti-competitive and if the Minister  is satisfied that the issuance of the non-
voluntary license would remedy such practice. 
 
(7) The authorization shall not exclude the:  
(a) conclusion of a license contract by the owner of the patent; 
 IP/Q/TON/1, IP/Q2/TON/1,  
IP/Q3/TON/1, IP/Q4/TON/1 Page 6 
 
 
  (b) continued exercise, by the owner of the patent, of his  Rights under section 13(1); or 
  (c) Issuance of a non-voluntary license under section 15.  
(8) Where a third person has been designated by the Minister, the authorization may only be 
transferred with the enterprise or business of that  person or with the part of the enterprise or 
business within the patented i nvention is being exploited. 
 (9) Where the exploitation of the invention by th e Government agency or third person designated 
by the Minister is authorized under subsection (1 ), it shall be predominantly for the supply of 
the market in Tonga and this authorization sha ll not apply where the exploitation is authorized 
under subsection (1)(b). 
 (10) Upon request of the owner of the patent of the Government agency or of the third person 
authorized to exploit the patented invention, th e Minister may, after hearing the parties vary 
the terms of the decision authorizing the exploita tion of the patented invention to the extent 
that changed circumstances justify such variation. 
 (11) (a) Upon the request of the owner of the patent, the Minister shall terminate the 
authorization if he is satisfied after hear ing the parties that the circumstances which 
led to his decision have ceased to exist and are unlikely to occur or that the 
Government agency or third person designate d by him has failed to comply with the 
terms of the decision. 
  (b) Notwithstanding paragraph (a), the Minister  shall not terminate the authorization if he 
is satisfied that the need for adequate pr otection of the legitimate interests of the 
Government agency or third person designa ted by him justifies the maintenance of 
the decision. 
  
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