ICFAI LAW SCHOOL

DEHRADUN

Assignment on – CONVENTIONS AND TREATIES ADMINISTERED BY

WIPO

SUB – IPR TREATIES AND CONVENTIONS

Submitted by
Name – Satish kumar pathak
Enrollment no.- 19FLICDDN02169

Submitted to
Ms. Komal Rohilla
Faculty of law
ICFAI Law school
 ACKNOWLEDGEMENT
I would especially like to thank my guide, mentor, Ms. Komal Rohilla without whose
constant support and guidance this assignment would have been a distant reality.

This work is an outcome of an unparalleled infrastructural support that I have received from
ICFAI Law School, The ICFAI University, Dehradun. I owe my deepest gratitude to the
library staff of the college.

It would never have been possible to complete this study without an untiring support from
my family, especially my parents.

Name- Satish pathak

Enroll no. 19FLICDDN02169
B.A.LL.B, 2019-24
CONVENTIONS AND TREATIES ADMINISTERED BY WIPO
WIPO CONVENTION - 1967

The WIPO Convention, the constituent instrument of the World Intellectual Property
Organization (WIPO), was signed at Stockholm on July 14, 1967, entered into force in 1970
and was amended in 1979. WIPO is an intergovernmental organization that became in 1974
one of the specialized agencies of the United Nations system of organizations. The origins of
WIPO go back to 1883 and 1886 when the Paris Convention for the Protection of Industrial
Property and the Berne Convention for the Protection of Literary and Artistic Works,
respectively, were concluded. Both Conventions provided for the establishment of an
“International Bureau”. The two bureaus were united in 1893 and, in 1970, were replaced by
the World Intellectual Property Organization, by virtue of the WIPO Convention.

WIPO’s two main objectives are

(i) to promote the protection of intellectual property worldwide; and

(ii) to ensure administrative cooperation among the intellectual property Unions
established by the treaties that WIPO administers.

The WIPO Coordination Committee is composed of members elected from among the
members of the Executive Committee of the Paris Union and the Executive Committee of the
Berne Union. Its main functions are to give advice to the organs of the Unions, the General
Assembly, the Conference, and to the Director General, on all administrative and financial
matters of interest to these bodies. It also prepares the draft agenda of the General Assembly
and the draft agenda of the Conference. Where appropriate, the Coordination Committee
nominates a candidate for the post of Director General for appointment by the General
Assembly.

The principal sources of income of WIPO’s regular budget are the fees paid by the users of
the international registration and filing services, and the contributions paid by the
governments of Member States. Each State belongs to one of 14 classes, which determines
the amount of its contribution. Class I, with the highest contribution, involves the payment of
25 contribution units, whereas Class Ster, with the lowest contribution, involves the payment
of ¹⁄₃₂ of one contribution unit. By virtue of the unitary contribution system adopted by
Member States in 1993, the amount of each State’s contribution is the same whether that
State is a member only of WIPO, or only of one or more Unions, or of both WIPO and one
or more Unions.

The headquarters of the Organization are in Geneva, Switzerland. The Organization has
external offices in Brazil (Rio de Janeiro), Japan (Tokyo), Singapore (Singapore) and the
United States of America (at the United Nations in New York). The Organization benefits
from the privileges and immunities granted to international organizations and their officials
in the fulfillment of its objectives and exercise of its functions, and has concluded a
headquarters agreement with the Swiss Confederation to that effect.

PARIS CONVENTION – 1883

The Paris Convention applies to industrial property in the widest sense, including patents,
trademarks, industrial designs, utility models (a kind of “small-scale patent” provided for by
the laws of some countries), service marks, trade names (designations under which an
industrial or commercial activity is carried out), geographical indications (indications of
source and appellations of origin) and the repression of unfair competition. The substantive
provisions of the Convention fall into three main categories: national treatment, right of
priority, common rules.

1. Under the provisions on national treatment, the Convention provides that, as regards the
protection of industrial property, each Contracting State must grant the same protection
to nationals of other Contracting States that it grants to its own nationals. Nationals of
non-Contracting States are also entitled to national treatment under the Convention if
they are domiciled or have a real and effective industrial or commercial establishment in
a Contracting State.
2. The Convention provides for the right of priority in the case of patents (and utility
models 1where they exist), marks and industrial designs. This right means that, 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 subsequent applications will be regarded as if they had been filed on the
same day as the first application. In other words, they will have priority (hence the
expression “right of priority”) over applications filed by others during the said period of
time for the same invention, utility model, mark or industrial design. Moreover, these
subsequent applications, being based on the first application, will not be affected by any
event that takes place in the interval, such as the publication of an invention or the sale of
articles bearing a mark or incorporating an industrial design. One of the great practical
advantages of this provision is that applicants seeking protection in several countries are
not required to present all of their applications at the same time but have 6 or 12 months
to decide in which countries they wish to seek protection, and to organize with due care
the steps necessary for securing protection.

3. The Convention lays down a few common rules that all Contracting States must follow.
The most important are

a. Patents. Patents granted in different Contracting States for the same invention are
independent of each other: the granting of a patent in one Contracting State does not
oblige other Contracting States to grant a patent; a patent cannot be refused, annulled
or terminated in any Contracting State on the ground that it has been refused or
annulled or has terminated in any other Contracting State. The inventor has the right
to be named as such in the patent.
b. Marks. The Paris Convention does not regulate the conditions for the filing and
registration of marks which are determined in each Contracting State by domestic
law. Consequently, no application for the registration of a mark filed by a national of
a Contracting State may be refused, nor may a registration be invalidated, on the
ground that filing, Where a mark has been duly registered in the country of origin, it

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Summary of the paris Convention WIPO, 6 December 2014
BIRPI , 28 December 2016
 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 where the mark would infringe the acquired rights of third parties; where it is
devoid of distinctive character; where it is contrary to morality or public order; or
where it is of such a nature as to be liable to deceive the public.
c. Trade Names. Protection must be granted to trade names in each Contracting State
without there being an obligation to file or register the names.
d. Indications of Source. Measures must be taken by each Contracting State against
direct or indirect use of a false indication of the source of goods or the identity of
their producer, manufacturer or trader.
e. Unfair competition. Each Contracting State must provide for effective protection
against unfair competition.

MADRID AGREEMENT

The Madrid System for the International Registration of Marks is governed by two treaties: •
the Madrid Agreement, concluded in 1891 and revised at Brussels (1900), Washington
(1911), The Hague (1925), London (1934), Nice (1957) and Stockholm (1967), and amended
in 1979, and • the Protocol relating to that Agreement, concluded in 1989, which aims to
make the Madrid System more flexible and more compatible with the domestic legislation of
certain countries or intergovernmental organizations that had not been able to accede to the
Agreement.

States and organizations party to the Madrid System are collectively referred to as
Contracting Parties. The system makes it possible to protect a mark in a large number of
countries by obtaining an international registration that has effect in each of the designated
Contracting Parties.

The International Application

An application for international registration must designate one or more Contracting Parties
in which protection is sought. Further designations can be effected subsequently. A
Contracting Party may be designated only if it is party to the same treaty as the Contracting
Party whose office is the office of origin. The latter cannot itself be designated in the
international application.2

The designation of a given Contracting Party is made either under the Agreement or the
Protocol, depending on which treaty is common to the Contracting Parties concerned. If both
Contracting Parties are party to the Agreement and the Protocol, the designation will be
governed by the Protocol. International applications can be filed in English, French or
Spanish, irrespective of which treaty or treaties govern the application, unless the office of
origin restricts that choice to one or two of these languages.

International Registration

Once the International Bureau receives an international application, it carries out an

examination for compliance with the requirements of the Agreement, the Protocol and their
Common Regulations. This examination is restricted to formalities, including the
classification and comprehensibility of the list of goods and/ or services. If there are no
irregularities in the application, the International Bureau records the mark in the International
Register, publishes the international registration in the WIPO Gazette of International Marks
(hereinafter referred to as “the Gazette”), and notifies it to each designated Contracting Party.
Any matter of substance, such as whether the mark qualifies for protection or whether it is in
conflict with a mark registered previously in a particular Contracting Party, is determined by
that Contracting Party’s trademark office under the applicable domestic legislation. The
Gazette is available in electronic form (e-Gazette) on the Madrid System website.

Effects of an International Registration

The effects of an international registration in each designated Contracting Party are, from the
date of the international registration, the same as if the mark had been deposited directly with
the office of that Contracting Party. If no refusal is issued within the applicable time limit, or
if a refusal originally notified by a Contracting Party is subsequently withdrawn, the
protection of the mark is, from the date of the international registration, the same as if it had
been registered by the office of that Contracting Party. An international registration is
2
U.S Implementation of the Madrid protocol North Carolina bar Association
The Madrid Agreement concerning the international registration 2004
effective for 10 years. It may be renewed for further periods of 10 years on payment of the
prescribed fees. Protection may be limited with regard to some or all of the goods or services
or may be renounced with regard to some only of the designated Contracting Parties. An
international registration may be transferred in relation to all or some of the designated
Contracting Parties and all or some of the goods or services indicated. Advantages of the
Madrid System.

Advantages of the Madrid System

The Madrid System offers several advantages for trademark owners. Instead of filing a
separate national application in each country of interest, in several different languages, in
accordance with different national or regional procedural rules and regulations and paying
several different (and often higher) fees, an international registration may be obtained by
simply filing one application with the International Bureau (through the office of the home
country), in one language (English, French or Spanish) and paying one set of fees. Similar
advantages exist for maintaining and renewing a registration. Likewise, if the international
registration is assigned to a third party, or is otherwise changed, such as a change in name
and/or address, this may be recorded with effect for all designated Contracting Parties by
means of a single procedural step.

THE HAGUE AGREEMENT

Two Acts of the Hague Agreement are currently in operation – the 1999 Act and the 1960
Act. In September 2009, it was decided to freeze the application of the 1934 Act of the Hague
Agreement, thus simplifying and streamlining overall administration of the international
design registration system. An international design registration may be obtained only by a
natural person or legal entity having a connection – through establishment, domicile,
nationality or, under the 1999 Act, habitual residence – with a Contracting Party to either of
the two Acts.

The Hague Agreement allows applicants to register an industrial design by filing a single
application with the International Bureau of WIPO, enabling design owners to protect their
designs with minimum formalities in multiple countries or regions. The Hague Agreement
also simplifies the management of an industrial design registration, since it is possible to
record subsequent changes and to renew the international registration through a single
procedural step.
The WIPO Secretariat publishes a Guide to the International Registration of Industrial
Designs for users of the Hague System. The Hague Agreement, concluded in 1925, was
revised at London in 1934 and at The Hague in 1960. It was completed by an Additional Act
signed at Monaco in 1961 and by a Complementary Act signed at Stockholm in 1967, which
was amended in 1979. As noted above, a further Act was adopted at Geneva in 1999. The
Hague Agreement created a Union, which, since 1970, has had an Assembly. Every member
of the Union that has adhered to the Complementary Act of Stockholm is a member of the
Assembly. Among the most important tasks of the Assembly are the adoption of the biennial
program and budget of the Union and the adoption and modification of the implementing
regulations, including the fixing of the fees connected with the use of the Hague System.

NICE AGREEMENT – 1957

The Nice Agreement establishes a classification of goods and services for the purposes of
registering trademarks and service marks (the Nice Classification). The trademark offices of
Contracting States must indicate, in official documents and publications in connection with
each registration, the numbers of the classes of the Classification to which the goods or
services for which the mark is registered belong. The Classification consists of a list of
classes – 34 for goods and 11 for services – and an alphabetical list of the goods and services.
The latter comprises some 11,000 items. Both lists are amended and supplemented
periodically by a Committee of Experts in which all Contracting States are represented. The
current edition of the Classification is the tenth, which entered into force on January 1, 2012.

Although only 83 States are party to the Nice Agreement, the trademark offices of about 65
additional States, as well as the International Bureau of WIPO, the African Intellectual
Property Organization (OAPI), the African Regional Intellectual Property Organization
(ARIPO), the Benelux Organisation for Intellectual Property (BOIP) and the Office for
Harmonization in the Internal Market (Trade Marks and Designs) (OHIM) of the European
Union (EU), also use the Classification.

Berne Convention
The Berne Convention deals with the protection of works and the rights of their authors. It is
based on three basic principles and contains a series of provisions determining the minimum
protection to be granted, as well as special provisions available to developing countries that
want to make use of them.

The three basic principles are the following:

1. Works originating in one of the Contracting States (that is, works the author of which
is a national of such a State or works first published in such a State) must be given the
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same protection in each of the other Contracting States as the latter grants to the
works of its own nationals (principle of “national treatment”).
2. Protection must not be conditional upon compliance with any formality (principle of
“automatic” protection).
3. Protection is independent of the existence of protection in the country of origin of the
work (principle of “independence” of protection). If, however, a Contracting State
provides for a longer term of protection than the minimum prescribed by the
Convention and the work ceases to be protected in the country of origin, protection
may be denied once protection in the country of origin ceases.
The Convention also provides for “moral rights”, that is, the right to claim authorship
of the work and the right to object to any mutilation, deformation or other
modification of, or other derogatory action in relation to, the work that would be
prejudicial to the author’s honor or reputation.

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Contracting parties to the paris convention, Retrieved 30 December 2012