Highlights of the Paris Convention

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Highlights of the Paris Convention IGNOU, New
Delhi India April 2005
Anil Sinha Senior Program OfficerWIPO Worldwide
Academy World Intellectual Property Organization
(WIPO)
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The Paris Convention

• For the protection of industrial property

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Objectives

• The Paris Convention
• introduced international framework for industrial
  property rules for the first time
• was adopted at Paris in 1883
• revised many times
• latest Act is the Stockholm Act, of 1967
• has over 180 member States

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Scope

• The Convention applies to industrial property in
  the widest sense, including
• patents,
• marks,
• industrial designs,
• utility models (a kind of small patent provided
  for by the laws of some countries),
• trade names (designations under which an
  industrial or commercial activity is carried on),
• geographical indications (indications of source
  and appellations of origin)
• and the repression of unfair competition

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Substantive provisions

• substantive provisions of the Convention fall
  into three main categories
• national treatment,
• right of priority,
• common rules.
• incorporation of Articles 1 to 12 and 19, in TRIPS

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National treatment

• each contracting State must grant the same
  protection to nationals of the other contracting
  States as it grants to its own nationals
• no requirement as to domicile or establishment in
  the country where protection is claimed may be
  imposed
• similar treatment for nationals of non-member
  countries who are domiciled or who have real and
  effective industrial or commercial establishments
• exceptions relating to judicial and
  administrative procedure and to jurisdiction, and
  to the designation of an address for service or
  the appointment of an agent

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Right of priority

• on the basis of a regular first application filed
  in one of the contracting States,
• the applicant may,
• within a certain period of time (12 months for
  patents and utility models 6 months for
  industrial designs and marks),
• apply for protection in any of the other
  contracting States
• these later applications will then be regarded as
  if they had been filed on the same day as the
  first application.

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Right of priority

• by a regular national filing is meant
• any filing that is adequate to establish the date
  on which the application was filed in the country
  concerned,
• whatever may be the subsequent fate of the
  application.
• any subsequent filing in any of the other member
  countries
• before the expiration of the periods referred to
  above shall not be invalidated by reason of any
  acts accomplished in the interval, in particular,
  another filing, the publication or exploitation
  of the invention, the putting on sale of copies
  of the design, or the use of the mark...

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Common rules

• Independence of patents
• Patents applied for shall be independent of
  patents obtained for the same invention in other
  countries, whether members of the Union or not
• Mention of the Inventor in the Patent
• The inventor shall have the right to be mentioned
  as such in the patent.

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Common rules

• Compulsory licenses and forfeiture of patents
• importation by the patentee of the patented
  articles will not result in forfeiture of the
  patent
• right to grant of compulsory licenses to prevent
  abuses resulting from the exercise of the
  exclusive rights conferred by the patent, for
  example, failure to work, subject to certain
  conditions
• a compulsory license will be non-exclusive and
  non-transferable
• it will be refused if the patentee justifies his
  inaction by legitimate reasons

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Common rules

• Grace period
• at least six months allowed for the payment of
  fees prescribed for maintenance of industrial
  property rights,
• subject to the payment of a surcharge, if
  provided for in the national law
• right to provide for the restoration of patents
  which have lapsed by reason of nonpayment of
  fees

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Common rules

• Independence of Marks
• registration of a mark may not be refused nor
  invalidated, on the ground that filing,
  registration, or renewal, has not been effected
  in the country of origin.
• a registered mark shall be regarded as
  independent of marks registered in other
  countries, including the country of origin
• Well-known Marks
• prohibition on the use, of a trademark which
  constitutes a reproduction, an imitation, or a
  translation, liable to create confusion with a
  mark considered to be well known in that country
  and used for identical or similar goods.

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Common rules

• State emblems
• prohibition of the use, without authorization by
  the competent authorities, either as trademarks
  or as elements of trademarks, of armorial
  bearings, flags, and other State emblems, of the
  countries of the Union, official signs and
  hallmarks indicating control and warranty adopted
  by them, and any imitation from a heraldic point
  of view
• similar prohibitions concerning armorial
  bearings, flags, other emblems, abbreviations,
  and names, of international intergovernmental
  organizations of which one or more countries of
  the Union are members

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Common rules

• Service marks
• protection of service marks without requirement
  to provide for the registration of such marks.
• Collective marks
• protection of collective marks belonging to
  associations even if such associations do not
  possess an industrial or commercial
  establishment.
• Trade names
• protection without the obligation of filing or
  registration, whether or not it forms part of a
  trademark.

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Common rules

• Unfair competition
• any act of competition contrary to honest
  practices in industrial or commercial matters
  constitutes an act of unfair competition
• prohibition of
• all acts which create confusion with the
  establishment, the goods, or the industrial or
  commercial activities, of a competitor
• false allegations which discredit the
  establishment, the goods, or the industrial or
  commercial activities, of a competitor
• indications or allegations is liable to mislead
  the public as to the nature, the manufacturing
  process, the characteristics, the suitability for
  their purpose, or the quantity, of the goods.

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Common rules

• Temporary protection
• grant temporary protection to patentable
  inventions, utility models, industrial designs,
  and trademarks, in respect of goods exhibited at
  official or officially recognized international
  exhibitions
• not extending beyond the period provided for in
  the right of priority
• may require, as proof of the identity of the
  article exhibited and of the date of its
  introduction, such documentary evidence as it
  considers necessary

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Common rules

• Seizure on importation and Remedies
• All goods unlawfully bearing a trademark or trade
  name shall be seizureed on importation into those
  countries of the Union where such mark or trade
  name is entitled to legal protection
• Seizure shall take place at the request of the
  public prosecutor, or any other competent
  authority, or any interested party
• assure nationals of the other countries,
  including federations and associations,
  appropriate and effective legal remedies (action
  in the courts or before the administrative
  authorities) to repress all acts of infringement
  and unfair competition

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Thank you