the paris convention

8/7/2019 the paris convention

1/37

THE PARIS CONVENTION 1967


2/37

The Paris Convention for the Protection of

Industrial Property, signed in Paris, France,

on March 20, 1883, was one of the first

intellectual property treaties. As a result of thistreaty, intellectual property, including patents, of

any contracting state are accessible to the

nationals of other states party to the Convention.

The "Convention priority right", also called "Paris

Convention priority right" or "Union priorityright", was also established by this treaty.


3/37

THE PARIS CONVENTION

The Paris Convention is an international

convention for promoting trade among the

member countries, devised to facilitate protection

of industrial property simultaneously in themember countries without any loss in the priority

date.

All the member countries provide national

treatment to all the applications from the other

member countries for protection of industrialproperty rights.


4/37

INDUSTRIAL PROPERTY

Industrial property includes:

(a) Patents

(b) Utility models

(c) Industrial designs

(d) Trademarks, service marks and trade names

(e) Indication of source or appellations of origin

(this is same as the geographical indications

adopted in TRIPS);


5/37

THE TIMELINE

The convention was first signed in 1883.

Since then the Convention has been revisedseveral times;

in 1900 at Brussels,

in 1911 at Washington,

in 1925 at the Hague,

in 1934 at London,

in 1958 at Lisbon

and in 1967 at Stockholm.

The last amendment took place in 1979.

India became a member of the Paris Conventionon December 7, 1998.


6/37

THE CONTRACTING PARTIES

The Convention now has 173 contracting member countries,whichmakes it one of the most widely adopted treaties worldwide. Notably,Taiwan and Kuwait are not parties to the Convention. However,according to Article 27 of its Patent Act, Taiwan recognizes priorityclaims from contracting members. The Paris Convention entered intoforce in Thailand on August 2, 2008, bringing the total number ofNation States party to the Convention to 173.

Contracting members include: Albania; Algeria, Andorra,Angola;Antigua and Barbuda; Argentina; Armenia; Australia; Austria;Azerbaijan; Bahamas; Bahrain; Bangladesh; Barbados; Belarus;Belgium; Belize; Benin; Bhutan; Bolivia; Bosnia and Herzegovina;Botswana; Brazil; Bulgaria; Burkina Faso; Burundi; Cambodia;Cameroon; Canada; Central African Republic; Chad; Chile; China;Colombia; Comoros; Congo; Costa Rica; Croatia; Cuba; Cyprus; Czech

Republic; Cte d'Ivoire; Democratic People's Republic of Korea;Democratic Republic of the Congo; Denmark; Djibouti; Dominica;Dominican Republic; Ecuador; Egypt; El Salvador; EquatorialGuinea; Estonia; Finland; France; Gabon; Gambia; Georgia;Germany; Ghana; Greece; Grenada; Guatemala; Guinea; Guinea-Bissau; Guyana; Haiti; Holy See; Honduras; Hungary; Iceland; India;Indonesia; Iran (Islamic Republic of); Iraq; Ireland;


7/37

Israel; Italy; Jamaica; Japan; Jordan; Kazakhstan; Kenya;Kyrgyzstan; Laos; Latvia; Lebanon; Lesotho; Liberia; Libya;Liechtenstein; Lithuania; Luxembourg; Macedonia; Madagascar;Malawi; Malaysia; Mali; Malta; Mauritania; Mauritius; Mexico;Moldova; Monaco; Mongolia; Morocco; Mozambique; Namibia; Nepal;Netherlands; New Zealand; Nicaragua; Niger; Nigeria; Norway;

Oman; Pakistan; Panama; Papua New Guinea; Paraguay; Peru;Philippines; Poland; Portugal; Qatar; Republic of Korea; Romania;Russian Federation; Rwanda; Saint Kitts and Nevis; Saint Lucia;Saint Vincent and the Grenadines; San Marino; Sao Tome andPrincipe; Saudi Arabia; Senegal; Serbia; Seychelles; Sierra Leone;Singapore; Slovakia; Slovenia; South Africa; Spain; Sri Lanka;Sudan; Suriname; Swaziland; Sweden; Switzerland; Syrian Arab

Republic; Tajikistan; Thailand; Togo; Tonga; Trinidad and Tobago;Tunisia; Turkey; Turkmenistan; Uganda; Ukraine; United ArabEmirates; United Kingdom; United Republic of Tanzania; UnitedStates of America; Uruguay; Uzbekistan; Venezuela; Vietnam;Yemen; Zambia; and Zimbabwe.


8/37

THE APPLICATION

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


9/37

THE PARIS CONVENTION APPLIES TO THE

PROTECTION OF INDUSTRIAL PROPERTY AND

INCLUDES:

Patents for 12 months;

Utility models - not available in India;

Industrial designs for 6 months; Trademarks, service marks and trade names for 6

months;

Indication of source or appellations of origin (this is

same as the geographical indications adopted inTRIPS).


10/37

THE PRINCIPAL FEATURES OF THE

PARIS CONVENTION ARE:

National treatment

Right of priority

Independence of patents

Parallel importation

Protection against false indications and unfair

competition


11/37

MEANING OF NATIONAL TREATMENT

UNDER THE PARIS CONVENTION

This is a very important concept and is essential

for successfully achieving the fundamental aim of

the Paris Convention.

The idea is to provide equal treatment toapplicants from member countries, in a given

member country and not to differentiate between

the nationals of your country and nationals of the

other countries for the purpose of grant and

protection of industrial property in your country.


12/37

Imagine that a national of country X applies forgrant of a patent in India. According to the ParisConvention, the Indian Patent Office shall applythe same norms and rules to the applicant from

X, as applicable to an Indian applicant, forgranting a patent.

Similarly, the applicant from X shall have thesame protection after grant and identical legalremedies against any infringement shall be

available to the applicant provided the conditionsand formalities imposed upon Indians arecomplied with. No requirement as to domicile orestablishment in the country where protection isclaimed, may be imposed


13/37

RIGHT OF PRIORITY AND ITS

SIGNIFICANCE

Industrial property right is granted for a fixed periodof time by a country. The date from which the right isdeemed to start is usually the date of filing ofcomplete specification. To obtain rights in othermember countries, the application must be filed on

the same day if it is desired to have the rights startedfrom the same day.

However, there are practical difficulties insynchronizing the activities.

For facilitating Simultaneous protection in membercountries, the Convention provides that within 12months of national filing, if patent applications arefiled in member countries, the patents, if granted inmember countries, will be effective from the date ofnational filing. This right is known as the right ofpriority.


14/37

In case the applicant after a second look at thepatent application finds that the patent containsmore than one invention or on his/her own accordwishes to divide the application, he/she can claim

the initial date of priority for subsequent patentapplications.

The applicant may also, on his/her own initiative,divide a patent application and preserve as thedate of each divisional application the date of the

initial application and the benefit of the right ofpriority, if any.

Each country of the Union shall have the right todetermine the conditions under which suchdivision shall be authorized.


15/37

Priority may not be refused on the ground that

certain elements of the invention for which

priority is claimed do not appear among the

claims formulated in the application in the

country of origin, provided that the application

documents as a whole specifically disclose such

elements.


16/37

GRANT OF A PATENT IN ONE COUNTRY AND

ITS AFFECT ON GRANT OR REFUSAL INANOTHER COUNTRY

The patents applied for in the various countries of the

Union shall be independent of each other with regard

to nullity and forfeiture and their normal duration.

This means that granting a patent in one country of

the Union does not force other countries to grant the

patent for the same invention.

Also, the refusal of the patent in one country does notmean that it will be terminated in all the countries.


17/37

IMPORTATION IN RELATION TO WORKING OF

A PATENT UNDER THE CONVENTION

Importation is considered as working of a patent,

provided the patented product is manufactured

in a member country and is imported in other

member country, which has also granted a patent

on the same invention to the same applicant.


18/37

Imagine that a product X has been patented in

two member countries A and B.

The product X is then manufactured in country A

and imported into country B. This product X shall enjoy the same patent

protection in country B even though it has been

manufactured in country A.

This would also be considered as if the patent has

been worked in country B.


19/37

PROVISION FOR COMPULSORY LICENSE

IN THE PARIS CONVENTION

Each member country shall have the right to

provide for the grant of compulsory licenses to

prevent the abuses resulting from the exclusive

rights conferred by the patent.

Compulsory licenses for failure to work or

insufficient working of the invention may not be

requested before the period of time of non-

working or insufficient working has elapsed.

This time limit is four years from the date offiling of the patent application or three years

from the date of the grant. Such licenses will be a

non- exclusive and non-transferable one.


20/37

RELATIONSHIP BETWEEN THE PARIS

CONVENTION AND THE TRIPS AGREEMENT

TRIPS Agreement is an offshoot of a series of

negotiations going on around the world since the

inception of the Paris Convention in the year

1883.

It has been made mandatory for the member

countries of the TRIPS Agreement to comply with

the Article 1 to 12 and Article 19 of the Paris

Convention.


21/37

COMMON RULES IN CONVENTION

The Convention lays down a few common rules

which all the contracting States must follow. The

more important are the following:

(a) As to Patents: Patents granted in differentcontracting States for the same invention are

independent of each other: the granting of a

patent in one contracting State does not oblige

the other contracting States to grant a patent; a

patent cannot be refused, annulled or terminatedin any contracting State on the ground that it has

been refused or annulled or has terminated in

any other contracting State.


22/37

The inventor has the right to be named as such

in the patent.

The grant of a patent may not be refused, and a

patent may not be invalidated,

on the groundthat the sale of the patented product, or of a

product obtained by means of the patented

process, is subject to restrictions or limitations

resulting from the domestic law.


23/37

Each contracting State that takes legislative

measures providing for the grant of compulsorylicenses to prevent the abuses which might result

from the exclusive rights conferred by a patent

may do so only with certain limitations.

Thus,

a compulsory license (license not grantedby the owner of the patent but by a public

authority of the State concerned) based on failure

to work the patented invention may only be

granted pursuant to a request filed after three or

four years of failure to work or insufficientworking of the patented invention and it must be

refused if the patentee gives legitimate reasons

to justify his inaction.


24/37

Furthermore, forfeiture of a patent may not be

provided for, except in cases where the grant of a

compulsory license would not have been

sufficient to prevent the abuse. In the latter case,

proceedings for forfeiture of a patent may be

instituted, but only after the expiration of two

years from the grant of the first compulsory

license.


25/37

(B) AS TO MARKS:

The Paris Convention does not regulate the conditionsfor the filing and registration of marks which are

therefore determined in each contracting State by the

domestic law.

Consequently, no application for the registration of a

mark filed by a national of a contracting State may berefused, nor may a registration be invalidated, on the

ground that filing, registration or renewal has not

been effected in the country of origin.

Once the registration of a mark is obtained in a

contracting State, it is independent of its possibleregistration in any other country, including the

country of origin; consequently, the lapse or

annulment of the registration of a mark in one

contracting State will not affect the validity of

registration in other contracting States.


26/37

Where a mark has been duly registered in the

country of origin, it must, on request, be accepted

for filing and protected in its original form in the

other contracting States.

Nevertheless, registration may be refused in

well-defined cases, such as when the mark would

infringe acquired rights of third parties, when it

is devoid of distinctive character, when it is

contrary to morality or public order, or when it isof such a nature as to be liable to deceive the

public.


27/37

If, in any contracting State, the use of aregistered mark is compulsory, the registrationcannot be cancelled until after a reasonableperiod, and only if the owner cannot justify his

inaction. Each contracting State must refuse registration

and prohibit the use of marks which constitute areproduction, imitation or translation, liable tocreate confusion, of a mark considered by the

competent authority of that State to be wellknown in that State as being already the mark ofa person entitled to the benefits of theConvention and used for identical or similargoods.


28/37

Each contracting State must likewise refuse

registration and prohibit the use of marks which

consist of or contain without authorization,

armorial bearings, State emblems and official

signs and hallmarks of contracting states,

provided they have been communicated through

the International Bureau of WIPO.

The same provisions apply to armorial bearings,

flags, other emblems, abbreviations and names ofcertain intergovernmental organizations.

Collective marks must be granted protection.


29/37

(c) As to Industrial Designs: Industrial designsmust be protected in each contracting State, andprotection may not be forfeited on the ground that thearticles incorporating the design are notmanufactured in that State.

(d) As to Trade Names: Protection must be grantedto trade names in each contracting State without theobligation of filing or registration.

(e) As to Indications of Source: Measures must betaken by each contracting State against direct orindirect use of a false indication of the source of the

goods or the identity of the producer, manufacturer ortrader.

(f) As to Unfair Competition: Each contractingState must provide for effective protection againstunfair competition.


30/37

THE ASSEMBLY

The Paris Union, established by the Convention, hasan Assembly and an Executive Committee. Every

State member of the Union which has adhered to at

least the administrative and final provisions of the

Stockholm Act (1967) is a member of the Assembly. The members of the Executive Committee are elected

from among the members of the Union, except for

Switzerland, which is a member ex officio.

The establishment of the biennial program and budget

of the WIPO Secretariatas far as the Paris Union is

concernedis the task of its Assembly.

The Convention is open to all States. Instruments of

ratification or accession must be deposited with the

Director General of WIPO.


31/37

THE CASE:PARIS CONVENTION PRIORITY:

CLASH BETWEEN REAL AND LOCAL TIME

The Peruvian Trademark Office-INDECOPIcarrying out a right interpretation on theindustrial property regulations and mainlyapplying the common sense, granted priority

right to a Japanese application filed on August11, rather than a Peruvian application filed thesame day.

Said decision was based on "the differencebetween the time in Japan and the time in Peru",

since the Japanese application was filed onAugust 11, while the Peruvian application wasfiled on August 11 at 12:33 p.m. that is at 2:33a.m. of August 12 in Japan, because Japan is 14hours ahead of Peru.


32/37

This important initiative of the Peruvian

Trademark Office sets a precedent with a

criterion which considers the real time or real

hour as the essential element that decides which

trademark application was filed first, that is, the

application of the principle first in the time, first

in the right

In consequence,

PTO was applauded for thispractical criterion which clarifies the rules of

game concerning the registration of trademark.


33/37

REGULATIONS AND LAWS RELATING TO

THIS CASE:

Paris Convention article 4:

any person who has duly filed an application of

registration of a trademark, in one of the

countries of the Union,

shall enjoy,

for thepurpose of filing in the other countries, a right of

priority during the six months after the

application filing date of the first application.


34/37

ADVANTAGES OF JOINING THE PARIS

CONVENTION

There are a number of international conventionsand treaties, which are open only to the membersof the Paris Convention. Some of these are:

Patent Cooperation Treaty (PCT)

Budapest Treaty (for deposition ofmicroorganisms)UPOV (for protection of newvarieties of plants)

Madrid Agreement (for repression of false ordeceptive indications of source on goods)

Madrid Protocol (concerning registration ofmarks)

Hague Agreement (concerning deposits ofindustrial designs)


35/37

INDIAN LAW

Introduction Modern world is marked by Globalisationand Liberalisation. Hence economic reforms have beenintroduced by many countries like India which has tocompete with other countries in the world market.Patent law plays a very significant role in the

development of a country. More so because of the adventof the World Trade Organisation in which India has tocompete with developed countries like U.S.A.

The Paris convention for the protection of industrialproperty, 1883 was the first convention for theprotection of Intellectual Property. It is said the

nationals of the signatory country would haveequivalent rights and status in all other signatorycountries.


36/37

Though India was not a member of Parisconvention, but having signed the TRIPSagreement, India was obliged to recogniseand implement the provision of national

treatment to nationals of other members ashas been incorporated in the TRIPS agreement.

The law of patents has also become an importantdiscipline of international trade and commercedue to great advancement in science and

technology, revolutionary changes in computersoftware development and with the shift fromprocess to product patent, the patent law hasbeen striving to keep pace with the changes intechnology.


37/37

THANK

YOU!!!!!

the paris convention

Documents

Transcript of the paris convention