Paris Convention for the Protection of Industrial Property
The Paris Convention, adopted in 1883, applies to industrial property in the widest sense, including patents, trademarks, industrial designs, utility models, service marks, trade names, geographical indications and the repression of unfair competition. This international agreement was the first major step taken to help creators ensure that their intellectual works were protected in other countries.
Summary of the Paris Convention for the Protection of Industrial Property (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 where 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.
The grant of a patent may not be refused, and a patent may not be invalidated, on the ground that 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.
Each Contracting State that takes legislative measures providing for the grant of compulsory licenses to prevent the abuses which might result from the exclusive rights conferred by a patent may do so only under certain conditions. A compulsory license (a license not granted by the owner of the patent but by a public authority of the State concerned), based on failure to work or insufficient working of the patented invention, may only be granted pursuant to a request filed after three years from the grant of the patent or four years from the filing date of the patent application, and it must be refused if the patentee gives legitimate reasons to justify this inaction. 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.
(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, registration or renewal has not been effected in the country of origin. The registration of a mark obtained in one Contracting State is independentof its possible registration 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 the registration in other Contracting States.
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 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.
If, in any Contracting State, the use of a registered mark is compulsory, the registration cannot be canceled for non-use until after a reasonable period, and then only if the owner cannot justify this inaction.
Each Contracting State must refuse registration and prohibit the use of marks that constitute a reproduction, imitation or translation, liable to create confusion, of a mark used for identical and similar goods and considered by the competent authority of that State to be well known in that Stateand to already belong to a person entitled to the benefits of the Convention.
Each Contracting State must likewise refuse registration and prohibit the use of marks that 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 of certain intergovernmental organizations.
Collective marks must be granted protection.
(c) Industrial Designs. Industrial designs must be protected in each Contracting State, and protection may not be forfeited on the ground that articles incorporating the design are not manufactured in that State.
(d) Trade Names. Protection must be granted to trade names in each Contracting State without there being an obligation to file or register the names.
(e) 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.
(f) Unfair competition. Each Contracting State must provide for effective protection against unfair competition.
The Paris Union, established by the Convention, has an Assembly and an Executive Committee. Every State that is a member of the Union and 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 Secretariat – as far as the Paris Union is concerned – is the task of its Assembly.
The Paris Convention, concluded in 1883, was revised at Brussels in 1900, at Washington in 1911, at The Hague in 1925, at London in 1934, at Lisbon in 1958 and at Stockholm in 1967, and was amended in 1979.
The Convention is open to all States. Instruments of ratification or accession must be deposited with the Director General of WIPO
Paris Convention
for the Protection of Industrial Property
of March 20, 1883,
as revised at Brussels on December 14, 1900,
at Washington on June 2, 1911,
at The Hague on November 6, 1925,
at London on June 2, 1934,
at Lisbon on October 31, 1958,
and at Stockholm on July 14, 1967,
and as amended on September 28, 1979
as revised at Brussels on December 14, 1900,
at Washington on June 2, 1911,
at The Hague on November 6, 1925,
at London on June 2, 1934,
at Lisbon on October 31, 1958,
and at Stockholm on July 14, 1967,
and as amended on September 28, 1979
TABLE OF CONTENTS1
| Article 1: | Establishment of the Union; Scope of Industrial Property |
| Article 2: | National Treatment for Nationals of Countries of the Union |
| Article 3: | Same Treatment for Certain Categories of Persons as for Nationals of Countries of the Union |
| Article 4: | A. to I. Patents, Utility Models, Industrial Designs, Marks, Inventors’ Certificates: Right of Priority. - G. Patents: Division of the Application |
| Article 4bis: | Patents: Independence of Patents Obtained for the Same Invention in Different Countries |
| Article 4ter: | Patents: Mention of the Inventor in the Patent |
| Article 4quater: | Patents: Patentability in Case of Restrictions of Sale by Law |
| Article 5: | A. Patents: Importation of Articles; Failure to Work or Insufficient Working; Compulsory Licenses. - B. Industrial Designs: Failure to Work; Importation of Articles. - C. Marks: Failure to Use; Different Forms; Use by Co-proprietors. - D. Patents, Utility Models, Marks, Industrial Designs: Marking |
| Article 5bis: | All Industrial Property Rights: Period of Grace for the Payment of Fees for the Maintenance of Rights; Patents: Restoration |
| Article 5ter: | Patents: Patented Devices Forming Part of Vessels, Aircraft, or Land Vehicles |
| Article 5quater: | Patents: Importation of Products Manufactured by a Process Patented in the Importing Country |
| Article 5quinquies: | Industrial Designs |
| Article 6: | Marks: Conditions of Registration; Independence of Protection of Same Mark in Different Countries |
| Article 6bis: | Marks: Well-Known Marks |
| Article 6ter: | Marks: Prohibitions concerning State Emblems, Official Hallmarks, and Emblems of Intergovernmental Organizations |
| Article 6quater: | Marks: Assignment of Marks |
| Article 6quinquies: | Marks: Protection of Marks Registered in One Country of the Union in the Other Countries of the Union |
| Article 6sexies: | Marks: Service Marks |
| Article 6septies: | Marks: Registration in the Name of the Agent or Representative of the Proprietor Without the Latter’s Authorization |
| Article 7: | Marks: Nature of the Goods to which the Mark is Applied |
| Article 7bis: | Marks: Collective Marks |
| Article 8: | Trade Names |
| Article 9: | Marks, Trade Names: Seizure, on Importation, etc., of Goods Unlawfully Bearing a Mark or Trade Name |
| Article 10: | False Indications: Seizure, on Importation, etc., of Goods Bearing False Indications as to their Source or the Identity of the Producer |
| Article 10bis: | Unfair Competition |
| Article 10ter: | Marks, Trade Names, False Indications, Unfair Competition: Remedies, Right to Sue |
| Article 11: | Inventions, Utility Models, Industrial Designs, Marks: Temporary Protection at Certain International Exhibitions |
| Article 12: | Special National Industrial Property Services |
| Article 13: | Assembly of the Union |
| Article 14: | Executive Committee |
| Article 15: | International Bureau |
| Article 16: | Finances |
| Article 17: | Amendment of Articles 13 to 17 |
| Article 18: | Revision of Articles 1 to 12 and 18 to 30 |
| Article 19: | Special Agreements |
| Article 20: | Ratification or Accession by Countries of the Union; Entry Into Force |
| Article 21: | Accession by Countries Outside the Union; Entry Into Force |
| Article 22: | Consequences of Ratification or Accession |
| Article 23: | Accession to Earlier Acts |
| Article 24: | Territories |
| Article 25: | Implementation of the Convention on the Domestic Level |
| Article 26: | Denunciation |
| Article 27: | Application of Earlier Acts |
| Article 28: | Disputes |
| Article 29: | Signature, Languages, Depositary Functions |
| Article 30: | Transitional Provisions |
(1) The countries to which this Convention applies constitute a Union for the protection of industrial property.
(2) The protection of industrial property has as its object patents, utility models, industrial designs, trademarks, service marks, trade names, indications of source or appellations of origin, and the repression of unfair competition.
(3) Industrial property shall be understood in the broadest sense and shall apply not only to industry and commerce proper, but likewise to agricultural and extractive industries and to all manufactured or natural products, for example, wines, grain, tobacco leaf, fruit, cattle, minerals, mineral waters, beer, flowers, and flour.
(4) Patents shall include the various kinds of industrial patents recognized by the laws of the countries of the Union, such as patents of importation, patents of improvement, patents and certificates of addition, etc.
(1) Nationals of any country of the Union shall, as regards the protection of industrial property, enjoy in all the other countries of the Union the advantages that their respective laws now grant, or may hereafter grant, to nationals; all without prejudice to the rights specially provided for by this Convention. Consequently, they shall have the same protection as the latter, and the same legal remedy against any infringement of their rights, provided that the conditions and formalities imposed upon nationals are complied with.
(2) However, no requirement as to domicile or establishment in the country where protection is claimed may be imposed upon nationals of countries of the Union for the enjoyment of any industrial property rights.
(3) The provisions of the laws of each of the countries of the Union relating to judicial and administrative procedure and to jurisdiction, and to the designation of an address for service or the appointment of an agent, which may be required by the laws on industrial property are expressly reserved.
Article 3
Same Treatment for Certain Categories of Persons as for Nationals of Countries of the Union
Same Treatment for Certain Categories of Persons as for Nationals of Countries of the Union
Nationals of countries outside the Union who are domiciled or who have real and effective industrial or commercial establishments in the territory of one of the countries of the Union shall be treated in the same manner as nationals of the countries of the Union.
Article 4
A to I. Patents, Utility Models, Industrial Designs,
Marks, Inventors’ Certificates: Right of Priority
G. Patents: Division of the Application
A to I. Patents, Utility Models, Industrial Designs,
Marks, Inventors’ Certificates: Right of Priority
G. Patents: Division of the Application
(1) Any person who has duly filed an application for a patent, or for the registration of a utility model, or of an industrial design, or of a trademark, in one of the countries of the Union, or his successor in title, shall enjoy, for the purpose of filing in the other countries, a right of priority during the periods hereinafter fixed.
(2) Any filing that is equivalent to a regular national filing under the domestic legislation of any country of the Union or under bilateral or multilateral treaties concluded between countries of the Union shall be recognized as giving rise to the right of priority.
(3) 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.
B. Consequently, any subsequent filing in any of the other countries of the Union 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, and such acts cannot give rise to any third-party right or any right of personal possession. Rights acquired by third parties before the date of the first application that serves as the basis for the right of priority are reserved in accordance with the domestic legislation of each country of the Union
(1) The periods of priority referred to above shall be twelve months for patents and utility models, and six months for industrial designs and trademarks.
(2) These periods shall start from the date of filing of the first application; the day of filing shall not be included in the period.
(3) If the last day of the period is an official holiday, or a day when the Office is not open for the filing of applications in the country where protection is claimed, the period shall be extended until the first following working day.
(4) A subsequent application concerning the same subject as a previous first application within the meaning of paragraph (2), above, filed in the same country of the Union shall be considered as the first application, of which the filing date shall be the starting point of the period of priority, if, at the time of filing the subsequent application, the said previous application has been withdrawn, abandoned, or refused, without having been laid open to public inspection and without leaving any rights outstanding, and if it has not yet served as a basis for claiming a right of priority. The previous application may not thereafter serve as a basis for claiming a right of priority.
(1) Any person desiring to take advantage of the priority of a previous filing shall be required to make a declaration indicating the date of such filing and the country in which it was made. Each country shall determine the latest date on which such declaration must be made.
(2) These particulars shall be mentioned in the publications issued by the competent authority, and in particular in the patents and the specifications relating thereto.
(3) The countries of the Union may require any person making a declaration of priority to produce a copy of the application (description, drawings, etc.) previously filed. The copy, certified as correct by the authority which received such application, shall not require any authentication, and may in any case be filed, without fee, at any time within three months of the filing of the subsequent application. They may require it to be accompanied by a certificate from the same authority showing the date of filing, and by a translation.
(4) No other formalities may be required for the declaration of priority at the time of filing the application. Each country of the Union shall determine the consequences of failure to comply with the formalities prescribed by this Article, but such consequences shall in no case go beyond the loss of the right of priority.
(5) Subsequently, further proof may be required.
Any person who avails himself of the priority of a previous application shall be required to specify the number of that application; this number shall be published as provided for by paragraph (2), above.
(1) Where an industrial design is filed in a country by virtue of a right of priority based on the filing of a utility model, the period of priority shall be the same as that fixed for industrial designs.
(2) Furthermore, it is permissible to file a utility model in a country by virtue of a right of priority based on the filing of a patent application, and vice versa.
F. No country of the Union may refuse a priority or a patent application on the ground that the applicant claims multiple priorities, even if they originate in different countries, or on the ground that an application claiming one or more priorities contains one or more elements that were not included in the application or applications whose priority is claimed, provided that, in both cases, there is unity of invention within the meaning of the law of the country.
With respect to the elements not included in the application or applications whose priority is claimed, the filing of the subsequent application shall give rise to a right of priority under ordinary conditions.
(1) If the examination reveals that an application for a patent contains more than one invention, the applicant may divide the application into a certain number of divisional applications and preserve as the date of each the date of the initial application and the benefit of the right of priority, if any.
(2) The applicant may also, on his own initiative, divide a patent application and preserve as the date of each divisional application the date of the initial application and the benefit of the right of priority, if any. Each country of the Union shall have the right to determine the conditions under which such division shall be authorized.
H. 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.
(1) Applications for inventors’ certificates filed in a country in which applicants have the right to apply at their own option either for a patent or for an inventor’s certificate shall give rise to the right of priority provided for by this Article, under the same conditions and with the same effects as applications for patents.
(2) In a country in which applicants have the right to apply at their own option either for a patent or for an inventor’s certificate, an applicant for an inventor’s certificate shall, in accordance with the provisions of this Article relating to patent applications, enjoy a right of priority based on an application for a patent, a utility model, or an inventor’s certificate.
(1) Patents applied for in the various countries of the Union by nationals of countries of the Union shall be independent of patents obtained for the same invention in other countries, whether members of the Union or not.
(2) The foregoing provision is to be understood in an unrestricted sense, in particular, in the sense that patents applied for during the period of priority are independent, both as regards the grounds for nullity and forfeiture, and as regards their normal duration.
(4) Similarly, it shall apply, in the case of the accession of new countries, to patents in existence on either side at the time of accession.
(5) Patents obtained with the benefit of priority shall, in the various countries of the Union, have a duration equal to that which they would have, had they been applied for or granted without the benefit of priority.
The inventor shall have the right to be mentioned as such in the patent.
The grant of a patent shall not be refused and a patent shall not be invalidated on the ground that the sale of the patented product or of a product obtained by means of a patented process is subject to restrictions or limitations resulting from the domestic law.
Article 5
A. Patents: Importation of Articles; Failure to Work or Insufficient Working; Compulsory Licenses
B. Industrial Designs: Failure to Work; Importation of Articles
C. Marks: Failure to Use; Different Forms; Use by Co-proprietors
D. Patents, Utility Models, Marks, Industrial Designs: Marking
A. Patents: Importation of Articles; Failure to Work or Insufficient Working; Compulsory Licenses
B. Industrial Designs: Failure to Work; Importation of Articles
C. Marks: Failure to Use; Different Forms; Use by Co-proprietors
D. Patents, Utility Models, Marks, Industrial Designs: Marking
(1) Importation by the patentee into the country where the patent has been granted of articles manufactured in any of the countries of the Union shall not entail forfeiture of the patent.
(2) Each country of the Union shall have the right to take legislative measures providing for the grant of compulsory licenses to prevent the abuses which might result from the exercise of the exclusive rights conferred by the patent, for example, failure to work.
(3) Forfeiture of the patent shall not be provided for except in cases where the grant of compulsory licenses would not have been sufficient to prevent the said abuses. No proceedings for the forfeiture or revocation of a patent may be instituted before the expiration of two years from the grant of the first compulsory license.
(4) A compulsory license may not be applied for on the ground of failure to work or insufficient working before the expiration of a period of four years from the date of filing of the patent application or three years from the date of the grant of the patent, whichever period expires last; it shall be refused if the patentee justifies his inaction by legitimate reasons. Such a compulsory license shall be non-exclusive and shall not be transferable, even in the form of the grant of a sub-license, except with that part of the enterprise or goodwill which exploits such license.
(5) The foregoing provisions shall be applicable, mutatis mutandis, to utility models.
B. The protection of industrial designs shall not, under any circumstance, be subject to any forfeiture, either by reason of failure to work or by reason of the importation of articles corresponding to those which are protected.
(1) If, in any country, use of the registered mark is compulsory, the registration may be cancelled only after a reasonable period, and then only if the person concerned does not justify his inaction.
(2) Use of a trademark by the proprietor in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered in one of the countries of the Union shall not entail invalidation of the registration and shall not diminish the protection granted to the mark.
(3) Concurrent use of the same mark on identical or similar goods by industrial or commercial establishments considered as co-proprietors of the mark according to the provisions of the domestic law of the country where protection is claimed shall not prevent registration or diminish in any way the protection granted to the said mark in any country of the Union, provided that such use does not result in misleading the public and is not contrary to the public interest.
D. No indication or mention of the patent, of the utility model, of the registration of the trademark, or of the deposit of the industrial design, shall be required upon the goods as a condition of recognition of the right to protection.
Article 5bis
All Industrial Property Rights: Period of Grace for the Payment of Fees for the Maintenance of Rights;
Patents: Restoration
All Industrial Property Rights: Period of Grace for the Payment of Fees for the Maintenance of Rights;
Patents: Restoration
(1) A period of grace of not less than six months shall be allowed for the payment of the fees prescribed for the maintenance of industrial property rights, subject, if the domestic legislation so provides, to the payment of a surcharge.
(2) The countries of the Union shall have the right to provide for the restoration of patents which have lapsed by reason of non-payment of fees.
In any country of the Union the following shall not be considered as infringements of the rights of a patentee:
(i) the use on board vessels of other countries of the Union of devices forming the subject of his patent in the body of the vessel, in the machinery, tackle, gear and other accessories, when such vessels temporarily or accidentally enter the waters of the said country, provided that such devices are used there exclusively for the needs of the vessel;
Article 5quater
Patents: Importation of Products Manufactured by a Process Patented in the Importing Country
Patents: Importation of Products Manufactured by a Process Patented in the Importing Country
When a product is imported into a country of the Union where there exists a patent protecting a process of manufacture of the said product, the patentee shall have all the rights, with regard to the imported product, that are accorded to him by the legislation of the country of importation, on the basis of the process patent, with respect to products manufactured in that country.
Industrial designs shall be protected in all the countries of the Union.
Article 6
Marks: Conditions of Registration; Independence of Protection of Same Mark in Different Countries
Marks: Conditions of Registration; Independence of Protection of Same Mark in Different Countries
(1) The conditions for the filing and registration of trademarks shall be determined in each country of the Union by its domestic legislation.
(2) However, an application for the registration of a mark filed by a national of a country of the Union in any country of the Union may not be refused, nor may a registration be invalidated, on the ground that filing, registration, or renewal, has not been effected in the country of origin.
(3) A mark duly registered in a country of the Union shall be regarded as independent of marks registered in the other countries of the Union, including the country of origin.
(1) The countries of the Union undertake, ex officio if their legislation so permits, or at the request of an interested party, to refuse or to cancel the registration, and to prohibit the use, of a trademark which constitutes a reproduction, an imitation, or a translation, liable to create confusion, of a mark considered by the competent authority of the country of registration or use to be well known in that country as being already the mark of a person entitled to the benefits of this Convention and used for identical or similar goods. These provisions shall also apply when the essential part of the mark constitutes a reproduction of any such well-known mark or an imitation liable to create confusion therewith.
(2) A period of at least five years from the date of registration shall be allowed for requesting the cancellation of such a mark. The countries of the Union may provide for a period within which the prohibition of use must be requested.
(3) No time limit shall be fixed for requesting the cancellation or the prohibition of the use of marks registered or used in bad faith.
Article 6ter
Marks: Prohibitions concerning State Emblems, Official Hallmarks, and Emblems of Intergovernmental Organizations
Marks: Prohibitions concerning State Emblems, Official Hallmarks, and Emblems of Intergovernmental Organizations
(a) The countries of the Union agree to refuse or to invalidate the registration, and to prohibit by appropriate measures 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.
(b) The provisions of subparagraph (a), above, shall apply equally to armorial bearings, flags, other emblems, abbreviations, and names, of international intergovernmental organizations of which one or more countries of the Union are members, with the exception of armorial bearings, flags, other emblems, abbreviations, and names, that are already the subject of international agreements in force, intended to ensure their protection.
(c) No country of the Union shall be required to apply the provisions of subparagraph (b), above, to the prejudice of the owners of rights acquired in good faith before the entry into force, in that country, of this Convention. The countries of the Union shall not be required to apply the said provisions when the use or registration referred to in subparagraph (a), above, is not of such a nature as to suggest to the public that a connection exists between the organization concerned and the armorial bearings, flags, emblems, abbreviations, and names, or if such use or registration is probably not of such a nature as to mislead the public as to the existence of a connection between the user and the organization.
(2) Prohibition of the use of official signs and hallmarks indicating control and warranty shall apply solely in cases where the marks in which they are incorporated are intended to be used on goods of the same or a similar kind.
(a) For the application of these provisions, the countries of the Union agree to communicate reciprocally, through the intermediary of the International Bureau, the list of State emblems, and official signs and hallmarks indicating control and warranty, which they desire, or may hereafter desire, to place wholly or within certain limits under the protection of this Article, and all subsequent modifications of such list. Each country of the Union shall in due course make available to the public the lists so communicated. Nevertheless such communication is not obligatory in respect of flags of States.
(b) The provisions of subparagraph (b) of paragraph (1) of this Article shall apply only to such armorial bearings, flags, other emblems, abbreviations, and names, of international intergovernmental organizations as the latter have communicated to the countries of the Union through the intermediary of the International Bureau.
(4) Any country of the Union may, within a period of twelve months from the receipt of the notification, transmit its objections, if any, through the intermediary of the International Bureau, to the country or international intergovernmental organization concerned.
(5) In the case of State flags, the measures prescribed by paragraph (1), above, shall apply solely to marks registered after November 6, 1925.
(6) In the case of State emblems other than flags, and of official signs and hallmarks of the countries of the Union, and in the case of armorial bearings, flags, other emblems, abbreviations, and names, of international intergovernmental organizations, these provisions shall apply only to marks registered more than two months after receipt of the communication provided for in paragraph (3), above.
(7) In cases of bad faith, the countries shall have the right to cancel even those marks incorporating State emblems, signs, and hallmarks, which were registered before November 6, 1925.
(8) Nationals of any country who are authorized to make use of the State emblems, signs, and hallmarks, of their country may use them even if they are similar to those of another country.
(9) The countries of the Union undertake to prohibit the unauthorized use in trade of the State armorial bearings of the other countries of the Union, when the use is of such a nature as to be misleading as to the origin of the goods.
(10) The above provisions shall not prevent the countries from exercising the right given in paragraph (3) of Article 6quinquies, Section B, to refuse or to invalidate the registration of marks incorporating, without authorization, armorial bearings, flags, other State emblems, or official signs and hallmarks adopted by a country of the Union, as well as the distinctive signs of international intergovernmental organizations referred to in paragraph (1), above.
(1) When, in accordance with the law of a country of the Union, the assignment of a mark is valid only if it takes place at the same time as the transfer of the business or goodwill to which the mark belongs, it shall suffice for the recognition of such validity that the portion of the business or goodwill located in that country be transferred to the assignee, together with the exclusive right to manufacture in the said country, or to sell therein, the goods bearing the mark assigned.
(2) The foregoing provision does not impose upon the countries of the Union any obligation to regard as valid the assignment of any mark the use of which by the assignee would, in fact, be of such a nature as to mislead the public, particularly as regards the origin, nature, or essential qualities, of the goods to which the mark is applied.
Article 6quinquies
Marks: Protection of Marks Registered in One Country of the Union in the Other Countries of the Union
Marks: Protection of Marks Registered in One Country of the Union in the Other Countries of the Union
(1) Every trademark duly registered in the country of origin shall be accepted for filing and protected as is in the other countries of the Union, subject to the reservations indicated in this Article. Such countries may, before proceeding to final registration, require the production of a certificate of registration in the country of origin, issued by the competent authority. No authentication shall be required for this certificate.
(2) Shall be considered the country of origin the country of the Union where the applicant has a real and effective industrial or commercial establishment, or, if he has no such establishment within the Union, the country of the Union where he has his domicile, or, if he has no domicile within the Union but is a national of a country of the Union, the country of which he is a national.
B. Trademarks covered by this Article may be neither denied registration nor invalidated except in the following cases:
(i) when they are of such a nature as to infringe rights acquired by third parties in the country where protection is claimed;
(ii) when they are devoid of any distinctive character, or consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, place of origin, of the goods, or the time of production, or have become customary in the current language or in the bona fide and established practices of the trade of the country where protection is claimed;
(iii) when they are contrary to morality or public order and, in particular, of such a nature as to deceive the public. It is understood that a mark may not be considered contrary to public order for the sole reason that it does not conform to a provision of the legislation on marks, except if such provision itself relates to public order.
This provision is subject, however, to the application of Article 10bis.
(1) In determining whether a mark is eligible for protection, all the factual circumstances must be taken into consideration, particularly the length of time the mark has been in use.
(2) No trademark shall be refused in the other countries of the Union for the sole reason that it differs from the mark protected in the country of origin only in respect of elements that do not alter its distinctive character and do not affect its identity in the form in which it has been registered in the said country of origin.
D. No person may benefit from the provisions of this Article if the mark for which he claims protection is not registered in the country of origin.
E. However, in no case shall the renewal of the registration of the mark in the country of origin involve an obligation to renew the registration in the other countries of the Union in which the mark has been registered.
F. The benefit of priority shall remain unaffected for applications for the registration of marks filed within the period fixed by Article 4, even if registration in the country of origin is effected after the expiration of such period.
The countries of the Union undertake to protect service marks. They shall not be required to provide for the registration of such marks.
Article 6septies
Marks: Registration in the Name of the Agent or Representative of the Proprietor Without the Latter’s Authorization
Marks: Registration in the Name of the Agent or Representative of the Proprietor Without the Latter’s Authorization
(1) If the agent or representative of the person who is the proprietor of a mark in one of the countries of the Union applies, without such proprietor’s authorization, for the registration of the mark in his own name, in one or more countries of the Union, the proprietor shall be entitled to oppose the registration applied for or demand its cancellation or, if the law of the country so allows, the assignment in his favor of the said registration, unless such agent or representative justifies his action.
(2) The proprietor of the mark shall, subject to the provisions of paragraph (1), above, be entitled to oppose the use of his mark by his agent or representative if he has not authorized such use.
(3) Domestic legislation may provide an equitable time limit within which the proprietor of a mark must exercise the rights provided for in this Article.
The nature of the goods to which a trademark is to be applied shall in no case form an obstacle to the registration of the mark.
(1) The countries of the Union undertake to accept for filing and to protect collective marks belonging to associations the existence of which is not contrary to the law of the country of origin, even if such associations do not possess an industrial or commercial establishment.
(2) Each country shall be the judge of the particular conditions under which a collective mark shall be protected and may refuse protection if the mark is contrary to the public interest.
(3) Nevertheless, the protection of these marks shall not be refused to any association the existence of which is not contrary to the law of the country of origin, on the ground that such association is not established in the country where protection is sought or is not constituted according to the law of the latter country.
A trade name shall be protected in all the countries of the Union without the obligation of filing or registration, whether or not it forms part of a trademark.
Article 9
Marks, Trade Names: Seizure, on Importation, etc., of Goods Unlawfully Bearing a Mark or Trade Name
Marks, Trade Names: Seizure, on Importation, etc., of Goods Unlawfully Bearing a Mark or Trade Name
(1) All goods unlawfully bearing a trademark or trade name shall be seized on importation into those countries of the Union where such mark or trade name is entitled to legal protection.
(2) Seizure shall likewise be effected in the country where the unlawful affixation occurred or in the country into which the goods were imported.
(3) Seizure shall take place at the request of the public prosecutor, or any other competent authority, or any interested party, whether a natural person or a legal entity, in conformity with the domestic legislation of each country.
(5) If the legislation of a country does not permit seizure on importation, seizure shall be replaced by prohibition of importation or by seizure inside the country.
(6) If the legislation of a country permits neither seizure on importation nor prohibition of importation nor seizure inside the country, then, until such time as the legislation is modified accordingly, these measures shall be replaced by the actions and remedies available in such cases to nationals under the law of such country.
Article 10
False Indications: Seizure, on Importation, etc., of Goods Bearing False Indications
as to their Source or the Identity of the Producer
False Indications: Seizure, on Importation, etc., of Goods Bearing False Indications
as to their Source or the Identity of the Producer
(1) The provisions of the preceding Article shall apply in cases of direct or indirect use of a false indication of the source of the goods or the identity of the producer, manufacturer, or merchant.
(2) Any producer, manufacturer, or merchant, whether a natural person or a legal entity, engaged in the production or manufacture of or trade in such goods and established either in the locality falsely indicated as the source, or in the region where such locality is situated, or in the country falsely indicated, or in the country where the false indication of source is used, shall in any case be deemed an interested party.
(1) The countries of the Union are bound to assure to nationals of such countries effective protection against unfair competition.
(2) Any act of competition contrary to honest practices in industrial or commercial matters constitutes an act of unfair competition.
(i) all acts of such a nature as to create confusion by any means whatever with the establishment, the goods, or the industrial or commercial activities, of a competitor;
(ii) false allegations in the course of trade of such a nature as to discredit the establishment, the goods, or the industrial or commercial activities, of a competitor;
(1) The countries of the Union undertake to assure to nationals of the other countries of the Union appropriate legal remedies effectively to repress all the acts referred to in Articles 9, 10, and 10bis.
(2) They undertake, further, to provide measures to permit federations and associations representing interested industrialists, producers, or merchants, provided that the existence of such federations and associations is not contrary to the laws of their countries, to take action in the courts or before the administrative authorities, with a view to the repression of the acts referred to in Articles 9, 10, and 10bis, in so far as the law of the country in which protection is claimed allows such action by federations and associations of that country.
Article 11
Inventions, Utility Models, Industrial Designs, Marks: Temporary Protection at Certain International Exhibitions
Inventions, Utility Models, Industrial Designs, Marks: Temporary Protection at Certain International Exhibitions
(1) The countries of the Union shall, in conformity with their domestic legislation, grant temporary protection to patentable inventions, utility models, industrial designs, and trademarks, in respect of goods exhibited at official or officially recognized international exhibitions held in the territory of any of them.
(2) Such temporary protection shall not extend the periods provided by Article 4. If, later, the right of priority is invoked, the authorities of any country may provide that the period shall start from the date of introduction of the goods into the exhibition.
(3) Each country 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.
(1) Each country of the Union undertakes to establish a special industrial property service and a central office for the communication to the public of patents, utility models, industrial designs, and trademarks.
(a) the names of the proprietors of patents granted, with a brief designation of the inventions patented;
(b) the reproductions of registered trademarks.
(a) The Union shall have an Assembly consisting of those countries of the Union which are bound by Articles 13 to 17.
(b) The Government of each country shall be represented by one delegate, who may be assisted by alternate delegates, advisors, and experts.
(c) The expenses of each delegation shall be borne by the Government which has appointed it.
(a) The Assembly shall:
(i) deal with all matters concerning the maintenance and development of the Union and the implementation of this Convention;
(ii) give directions concerning the preparation for conferences of revision to the International Bureau of Intellectual Property (hereinafter designated as “the International Bureau”) referred to in the Convention establishing the World Intellectual Property Organization (hereinafter designated as “the Organization”), due account being taken of any comments made by those countries of the Union which are not hound by Articles 13 to 17;
(iii) review and approve the reports and activities of the Director General of the Organization concerning the Union, and give him all necessary instructions concerning matters within the competence of the Union;
(v) review and approve the reports and activities of its Executive Committee, and give instructions to such Committee;
(vi) determine the program and adopt the biennial budget of the Union, and approve its final accounts;
(viii) establish such committees of experts and working groups as it deems appropriate to achieve the objectives of the Union;
(ix) determine which countries not members of the Union and which intergovernmental and international nongovernmental organizations shall be admitted to its meetings as observers;
(x) adopt amendments to Articles 13 to 17;
(b) With respect to matters which are of interest also to other Unions administered by the Organization, the Assembly shall make its decisions after having heard the advice of the Coordination Committee of the Organization.
(a) Subject to the provisions of subparagraph (b), a delegate may represent one country only.
(b) Countries of the Union grouped under the terms of a special agreement in a common office possessing for each of them the character of a special national service of industrial property as referred to in Article 12 may be jointly represented during discussions by one of their number.
(a) Each country member of the Assembly shall have one vote.
(c) Notwithstanding the provisions of subparagraph (b), if, in any session, the number of countries represented is less than one-half but equal to or more than one-third of the countries members of the Assembly, the Assembly may make decisions but, with the exception of decisions concerning its own procedure, all such decisions shall take effect only if the conditions, set forth hereinafter are fulfilled. The International Bureau shall communicate the said decisions to the countries members of the Assembly which were not represented and shall invite them to express in writing their vote or abstention within a period of three months from the date of the communication. If, at the expiration of this period, the number of countries having thus expressed their vote or abstention attains the number of countries which was lacking for attaining the quorum in the session itself, such decisions shall take effect provided that at the same time the required majority still obtains.
(d) Subject to the provisions of Article 17(2), the decisions of the Assembly shall require two-thirds of the votes cast.
(e) Abstentions shall not be considered as votes.
(a) Subject to the provisions of subparagraph (b), a delegate may vote in the name of one country only.
(b) The countries of the Union referred to in paragraph (3)(b) shall, as a general rule, endeavor to send their own delegations to the sessions of the Assembly. If, however, for exceptional reasons, any such country cannot send its own delegation, it may give to the delegation of another such country the power to vote in its name, provided that each delegation may vote by proxy for one country only. Such power to vote shall be granted in a document signed by the Head of State or the competent Minister.
(6) Countries of the Union not members of the Assembly shall be admitted to the meetings of the latter as observers.
(a) The Assembly shall meet once in every second calendar year in ordinary session upon convocation by the Director General and, in the absence of exceptional circumstances, during the same period and at the same place as the General Assembly of the Organization.
(b) The Assembly shall meet in extraordinary session upon convocation by the Director General, at the request of the Executive Committee or at the request of one-fourth of the countries members of the Assembly.
(a) The Executive Committee shall consist of countries elected by the Assembly from among countries members of the Assembly. Furthermore, the country on whose territory the Organization has its headquarters shall, subject to the provisions of Article 16(7)(b), have an ex officio seat on the Committee.
(b) The Government of each country member of the Executive Committee shall be represented by one delegate, who may be assisted by alternate delegates, advisors, and experts.
(c) The expenses of each delegation shall be borne by the Government which has appointed it.
(3) The number of countries members of the Executive Committee shall correspond to one-fourth of the number of countries members of the Assembly. In establishing the number of seats to be filled, remainders after division by four shall be disregarded.
(4) In electing the members of the Executive Committee, the Assembly shall have due regard to an equitable geographical distribution and to the need for countries party to the Special Agreements established in relation with the Union to be among the countries constituting the Executive Committee.
(a) Each member of the Executive Committee shall serve from the close of the session of the Assembly which elected it to the close of the next ordinary session of the Assembly.
(b) Members of the Executive Committee may be re-elected, but only up to a maximum of two-thirds of such members.
(c) The Assembly shall establish the details of the rules governing the election and possible re-election of the members of the Executive Committee.
(a) The Executive Committee shall:
(ii) submit proposals to the Assembly in respect of the draft program and biennial budget of the Union prepared by the Director General;
(iv) submit, with appropriate comments, to the Assembly the periodical reports of the Director General and the yearly audit reports on the accounts;
(b) With respect to matters which are of interest also to other Unions administered by the Organization, the Executive Committee shall make its decisions after having heard the advice of the Coordination Committee of the Organization.
(a) The Executive Committee shall meet once a year in ordinary session upon convocation by the Director General, preferably during the same period and at the same place as the Coordination Committee of the Organization.
(b) The Executive Committee shall meet in extraordinary session upon convocation by the Director General, either on his own initiative, or at the request of its Chairman or one-fourth of its members.
(a) Each country member of the Executive Committee shall have one vote.
(b) One-half of the members of the Executive Committee shall constitute a quorum.
(c) Decisions shall be made by a simple majority of the votes cast.
(d) Abstentions shall not be considered as votes.
(e) A delegate may represent, and vote in the name of, one country only.
(9) Countries of the Union not members of the Executive Committee shall be admitted to its meetings as observers.
(a) Administrative tasks concerning the Union shall be performed by the International Bureau, which is a continuation of the Bureau of the Union united with the Bureau of the Union established by the International Convention for the Protection of Literary and Artistic Works.
(b) In particular, the International Bureau shall provide the secretariat of the various organs of the Union.
(c) The Director General of the Organization shall be the chief executive of the Union and shall represent the Union.
(2) The International Bureau shall assemble and publish information concerning the protection of industrial property. Each country of the Union shall promptly communicate to the International Bureau all new laws and official texts concerning the protection of industrial property. Furthermore, it shall furnish the International Bureau with all the publications of its industrial property service of direct concern to the protection of industrial property which the International Bureau may find useful in its work.
(4) The International Bureau shall, on request, furnish any country of the Union with information on matters concerning the protection of industrial property.
(5) The International Bureau shall conduct Studies, and shall provide services, designed to facilitate the protection of industrial property.
(6) The Director General and any staff member designated by him shall participate, without the right to vote, in all meetings of the Assembly, the Executive Committee, and any other committee of experts or working group. The Director General, or a staff member designated by him, shall be ex officio secretary of these bodies.
(a) The International Bureau shall, in accordance with the directions of the Assembly and in cooperation with the Executive Committee, make the preparations for the conferences of revision of the provisions of the Convention other than Articles 13 to 17.
(b) The International Bureau may consult with intergovernmental and international non-governmental organizations concerning preparations for conferences of revision.
(c) The Director General and persons designated by him shall take part, without the right to vote, in the discussions at these conferences.
(a) The Union shall have a budget.
(b) The budget of the Union shall include the income and expenses proper to the Union, its contribution to the budget of expenses common to the Unions, and, where applicable, the sum made available to the budget of the Conference of the Organization.
(c) Expenses not attributable exclusively to the Union but also to one or more other Unions administered by the Organization shall be considered as expenses common to the Unions. The share of the Union in such common expenses shall be in proportion to the interest the Union has in them.
(2) The budget of the Union shall be established with due regard to the requirements of coordination with the budgets of the other Unions administered by the Organization.
(a) For the purpose of establishing its contribution towards the budget, each country of the Union shall belong to a class, and shall pay its annual contributions on the basis of a number of units fixed as follows3:
Class I ................ 25
Class II ............... 20
Class III .............. 15
Class IV .............. 10
Class V ................. 5
Class VI ................ 3
Class VII ............... 1
(b) Unless it has already done so, each country shall indicate, concurrently with depositing its instrument of ratification or accession, the class to which it wishes to belong. Any country may change class. If it chooses a lower class, the country must announce such change to the Assembly at one of its ordinary sessions. Any such change shall take effect at the beginning of the calendar year following the said session.
(c) The annual contribution of each country shall be an amount in the same proportion to the total sum to be contributed to the budget of the Union by all countries as the number of its units is to the total of the units of all contributing countries.
(d) Contributions shall become due on the first of January of each year.
(e) A country which is in arrears in the payment of its contributions may not exercise its right to vote in any of the organs of the Union of which it is a member if the amount of its arrears equals or exceeds the amount of the contributions due from it for the preceding two full years. However, any organ of the Union may allow such a country to continue to exercise its right to vote in that organ if, and as long as, it is satisfied that the delay in payment is due to exceptional and unavoidable circumstances.
(f) If the budget is not adopted before the beginning of a new financial period, it shall be at the same level as the budget of the previous year, as provided in the financial regulations.
(5) The amount of the fees and charges due for services rendered by the International Bureau in relation to the Union shall be established, and shall be reported to the Assembly and the Executive Committee, by the Director General.
(a) The Union shall have a working capital fund which shall be constituted by a single payment made by each country of the Union. If the fund becomes insufficient, the Assembly shall decide to increase it.
(b) The amount of the initial payment of each country to the said fund or of its participation in the increase thereof shall be a proportion of the contribution of that country for the year in which the fund is established or the decision to increase it is made.
(c) The proportion and the terms of payment shall be fixed by the Assembly on the proposal of the Director General and after it has heard the advice of the Coordination Committee of the Organization.
(a) In the headquarters agreement concluded with the country on the territory of which the Organization has its headquarters, it shall be provided that, whenever the working capital fund is insufficient, such country shall grant advances. The amount of these advances and the conditions on which they are granted shall be the subject of separate agreements, in each case, between such country and the Organization. As long as it remains under the obligation to grant advances, such country shall have an ex officio seat on the Executive Committee.
(b) The country referred to in subparagraph (a) and the Organization shall each have the right to denounce the obligation to grant advances, by written notification. Denunciation shall take effect three years after the end of the year in which it has been notified.
(8) The auditing of the accounts shall be effected by one or more of the countries of the Union or by external auditors, as provided in the financial regulations. They shall be designated, with their agreement, by the Assembly.
(1) Proposals for the amendment of Articles 13, 14, 15, 16, and the present Article, may be initiated by any country member of the Assembly, by the Executive Committee, or by the Director General. Such proposals shall be communicated by the Director General to the member countries of the Assembly at least six months in advance of their consideration by the Assembly.
(2) Amendments to the Articles referred to in paragraph (1) shall be adopted by the Assembly. Adoption shall require three-fourths of the votes cast, provided that any amendment to Article 13, and to the present paragraph, shall require four-fifths of the votes cast.
(3) Any amendment to the Articles referred to in paragraph (1) shall enter into force one month after written notifications of acceptance, effected in accordance with their respective constitutional processes, have been received by the Director General from three-fourths of the countries members of the Assembly at the time it adopted the amendment. Any amendment to the said Articles thus accepted shall bind all the countries which are members of the Assembly at the time the amendment enters into force, or which become members thereof at a subsequent date, provided that any amendment increasing the financial obligations of countries of the Union shall bind only those countries which have notified their acceptance of such amendment.
(1) This Convention shall be submitted to revision with a view to the introduction of amendments designed to improve the system of the Union.
(2) For that purpose, conferences shall be held successively in one of the countries of the Union among the delegates of the said countries.
It is understood that the countries of the Union reserve the right to make separately between themselves special agreements for the protection of industrial property, in so far as these agreements do not contravene the provisions of this Convention.
(a) Any country of the Union which has signed this Act may ratify it, and, if it has not signed it, may accede to it. Instruments of ratification and accession shall be deposited with the Director General.
(b) Any country of the Union may declare in its instrument of ratification or accession that its ratification or accession shall not apply:
(i) to Articles 1 to 12, or
(ii) to Articles 13 to 17.
(c) Any country of the Union which, in accordance with subparagraph (b), has excluded from the effects of its ratification or accession one of the two groups of Articles referred to in that subparagraph may at any later time declare that it extends the effects of its ratification or accession to that group of Articles. Such declaration shall be deposited with the Director General.
(a) Articles 1 to 12 shall enter into force, with respect to the first ten countries of the Union which have deposited instruments of ratification or accession without making the declaration permitted under paragraph (1)(b)(i), three months after the deposit of the tenth such instrument of ratification or accession.
(b) Articles 13 to 17 shall enter into force, with respect to the first ten countries of the Union which have deposited instruments of ratification or accession without making the declaration permitted under paragraph (1)(b)(ii), three months after the deposit of the tenth such instrument of ratification or accession.
(c) Subject to the initial entry into force, pursuant to the provisions of subparagraphs (a) and (b), of each of the two groups of Articles referred to in paragraph (1)(b)(i) and (ii), and subject to the provisions of paragraph (1)(b), Articles 1 to 17 shall, with respect to any country of the Union, other than those referred to in subparagraphs (a) and (b), which deposits an instrument of ratification or accession or any country of the Union which deposits a declaration pursuant to paragraph (1)(c), enter into force three months after the date of notification by the Director General of such deposit, unless a subsequent date has been indicated in the instrument or declaration deposited. In the latter case, this Act shall enter into force with respect to that country on the date thus indicated.
(3) With respect to any country of the Union which deposits an instrument of ratification or accession, Articles 18 to 30 shall enter into force on the earlier of the dates on which any of the groups of Articles referred to in paragraph (1)(b) enters into force with respect to that country pursuant to paragraph (2)(a), (b), or (c).
(1) Any country outside the Union may accede to this Act and thereby become a member of the Union. Instruments of accession shall be deposited with the Director General.
(a) With respect to any country outside the Union which deposits its instrument of accession one month or more before the date of entry into force of any provisions of the present Act, this Act shall enter into force, unless a subsequent date has been indicated in the instrument of accession, on the date upon which provisions first enter into force pursuant to Article 20(2)(a) or (b); provided that:
(i) if Articles 1 to 12 do not enter into force on that date, such country shall, during the interim period before the entry into force of such provisions, and in substitution therefor, be bound by Articles 1 to 12 of the Lisbon Act,
(ii) if Articles 13 to 17 do not enter into force on that date, such country shall, during the interim period before the entry into force of such provisions, and in substitution therefor, be bound by Articles 13 and 14(3), (4), and (5), of the Lisbon Act.
If a country indicates a subsequent date in its instrument of accession, this Act shall enter into force with respect to that country on the date thus indicated.
(b) With respect to any country outside the Union which deposits its instrument of accession on a date which is subsequent to, or precedes by less than one month, the entry into force of one group of Articles of the present Act, this Act shall, subject to the proviso of subparagraph (a), enter into force three months after the date on which its accession has been notified by the Director General, unless a subsequent date has been indicated in the instrument of accession. In the latter case, this Act shall enter into force with respect to that country on the date thus indicated.
(3) With respect to any country outside the Union which deposits its instrument Of accession after the date of entry into force of the present Act in its entirety, or less than one month before such date, this Act shall enter into force three months after the date on which its accession has been notified by the Director General, unless a subsequent date has been indicated in the instrument of accession. In the latter case, this Act shall enter into force with respect to that country on the date thus indicated.
Subject to the possibilities of exceptions provided for in Articles 20(1)(b) and 28(2), ratification or accession shall automatically entail acceptance of all the clauses and admission to all the advantages of this Act.
After the entry into force of this Act in its entirety, a country may not accede to earlier Acts of this Convention.
(1) Any country may declare in its instrument of ratification or accession, or may inform the Director General by written notification any time thereafter, that this Convention shall be applicable to all or part of those territories, designated in the declaration or notification, for the external relations of which it is responsible.
(2) Any country which has made such a declaration or given such a notification may, at any time, notify the Director General that this Convention shall cease to be applicable to all or part of such territories.
(a) Any declaration made under paragraph (1) shall take effect on the same date as the ratification or accession in the instrument of which it was included, and any notification given under such paragraph shall take effect three months after its notification by the Director General.
(b) Any notification given under paragraph (2) shall take effect twelve months after its receipt by the Director General.
(1) Any country party to this Convention undertakes to adopt, in accordance with its constitution, the measures necessary to ensure the application of this Convention.
(2) It is understood that, at the time a country deposits its instrument of ratification or accession, it will be in a position under its domestic law to give effect to the provisions of this Convention.
(2) Any country may denounce this Act by notification addressed to the Director General. Such denunciation shall constitute also denunciation of all earlier Acts and shall affect only the country making it, the Convention remaining in full force and effect as regards the other countries of the Union.
(3) Denunciation shall take effect one year after the day on which the Director General has received the notification.
(4) The right of denunciation provided by this Article shall not be exercised by any country before the expiration of five years from the date upon which it becomes a member of the Union.
(1) The present Act shall, as regards the relations between the countries to which it applies, and to the extent that it applies, replace the Convention of Paris of March 20, 1883 and the subsequent Acts of revision.
(a) As regards the countries to which the present Act does not apply, or does not apply in its entirety, but to which the Lisbon Act of October 31, 1958, applies, the latter shall remain in force in its entirety or to the extent that the present Act does not replace it by virtue of paragraph (1).
(b) Similarly, as regards the countries to which neither the present Act, nor portions thereof, nor the Lisbon Act applies, the London Act of June 2, 1934, shall remain in force in its entirety or to the extent that the present Act does not replace it by virtue of paragraph (1).
(c) Similarly, as regards the countries to which neither the present Act, nor portions thereof, nor the Lisbon Act, nor the London Act applies, the Hague Act of November 6, 1925, shall remain in force in its entirety or to the extent that the present Act does not replace it by virtue of paragraph (1).
(3) Countries outside the Union which become party to this Act shall apply it with respect to any country of the Union not party to this Act or which, although party to this Act, has made a declaration pursuant to Article 20(1)(b)(i). Such countries recognize that the said country of the Union may apply, in its relations with them, the provisions of the most recent Act to which it is party.
(1) Any dispute between two or more countries of the Union concerning the interpretation or application of this Convention, not settled by negotiation, may, by any one of the countries concerned, be brought before the International Court of Justice by application in conformity with the Statute of the Court, unless the countries concerned agree on some other method of settlement. The country bringing the dispute before the Court shall inform the International Bureau; the International Bureau shall bring the matter to the attention of the other countries of the Union.
(2) Each country may, at the time it signs this Act or deposits its instrument of ratification or accession, declare that it does not consider itself bound by the provisions of paragraph (1). With regard to any dispute between such country and any other country of the Union, the provisions of paragraph (1) shall not apply.
(3) Any country having made a declaration in accordance with the provisions of paragraph (2) may, at any time, withdraw its declaration by notification addressed to the Director General.
(a) This Act shall be signed in a single copy in the French language and shall be deposited with the Government of Sweden.
(b) Official texts shall be established by the Director General, after consultation with the interested Governments, in the English, German, Italian, Portuguese, Russian and Spanish languages, and such other languages as the Assembly may designate.
(c) In case of differences of opinion on the interpretation of the various texts, the French text shall prevail.
(3) The Director General shall transmit two copies, certified by the Government of Sweden, of the signed text of this Act to the Governments of all countries of the Union and, on request, to the Government of any other country.
(5) The Director General shall notify the Governments of all countries of the Union of signatures, deposits of instruments of ratification or accession and any declarations included in such instruments or made pursuant to Article 20(1)(c), entry into force of any provisions of this Act, notifications of denunciation, and notifications pursuant to Article 24.
(1) Until the first Director General assumes office, references in this Act to the International Bureau of the Organization or to the Director General shall be deemed to be references to the Bureau of the Union or its Director, respectively.
(2) Countries of the Union not bound by Articles 13 to 17 may, until five years after the entry into force of the Convention establishing the Organization, exercise, if they so desire, the rights provided under Articles 13 to 17 of this Act as if they were bound by those Articles. Any country desiring to exercise such rights shall give written notification to that effect to the Director General; such notification shall be effective from the date of its receipt. Such countries shall be deemed to be members of the Assembly until the expiration of the said period.
(3) As long as all the countries of the Union have not become Members of the Organization, the International Bureau of the Organization shall also function as the Bureau of the Union, and the Director General as the Director of the said Bureau.
(4) Once all the countries of the Union have become Members of the Organization, the rights, obligations, and property, of the Bureau of the Union shall devolve on the International Bureau of the Organization.
1 This Table of Contents is added for the convenience of the reader. It does not appear in the signed text of the Convention.
2 Articles have been given titles to facilitate their identification. There are no titles in the signed (French) text.
3 The Governing Bodies of WIPO and the Unions administered by WIPO adopted with effect from January 1, 1994, a new contribution system that replaces the contribution system set forth in Article 16(4)(a), (b) and (c) of the Paris Convention. Details concerning that system may be obtained from the International Bureau of WIPO (Editor’s note).
Paris Convention Filings
Paris convention is an international Intellectual Property Treaty formed on 20th March 1883, which allows an applicant to file a Paris convention application after filing the first application in their home country. However, it shall be filed within 12 months of the priority date of the first application. The span of 12 months provides an advantage to the Applicants to convert their ideas into the final invention/specification, gather funds, and perform market analysis.
A Paris convention application is usually an alternative to the PCT to permit patent applications in non-PCT countries. For non PCT countries like Afghanistan, Taiwan, Argentina, Mauritius, Nepal, and Paraguay, applicants have to file directly with national or regional patent offices under the provisions of the Paris Convention. Convention applications are also strongly preferred when an Applicant is very sure about the patentability (novelty, non-obviousness, and utility) of its/his/her invention, and wishes to secure a patent in the shortest possible time in different countries. Furthermore, convention applications are preferred when the number of countries in which the Applicant intends to file is small, say only 1-3 countries. When a foreign application is filed under the Paris Convention in a country within the 12 months of the priority date, it is filed with a claim to "priority". This application in the foreign country will be treated as if it had been filed on the same date as the first application filed in another Paris Convention member country. As the deadline of the Paris convention application for filing the application is earlier than that of the PCT application, therefore, it is a faster process for taking the grant of any patent. Different countries have the different set of requirements such as documentations and translations, hence, it is advisable to file convention application(s) with the help of professional representatives. It would not only save the time by making the patent filing process efficient but would also avoid additional costs.
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An international treaty created in 1883 that requires member countries to adopt certain minimum protections for industrial property. Industrial property covers most types of intellectual property, including patents, trademarks, and trade names, but does not cover copyrights.
The substantive provisions of the Paris Convention fall into three main categories:
- National treatment. Each member country must extend the same protections for covered intellectual property that it gives its own nationals, to nationals of other member countries.
- Right of priority. An applicant for patent, trademark, industrial design (design patent in the US) or utility model (where protected) protection in one member country may use that application as the basis for filing later applications for that intellectual property in other member countries. Each later application is deemed to have been filed on the same date as the first application if it is filed within:
- six months of the earlier application, for trademarks and industrial designs; or
- 12 months of the earlier application, for patents and utility models.
- Common rules. Member countries must follow certain other rules the convention sets out for particular types of intellectual property.
The US has been a party to the Paris Convention since 1887. The World Intellectual Property Organization provides additional information, including the full text of the convention, on its website.
India Accedes to the Paris Convention andthe Patent Cooperation Treaty (PCT)
Geneva, September 8, 1998
Press Updates UPD/1998/32
On Monday, September 7, 1998, India deposited its instrument of accession to two international treaties with the Director General of WIPO in Geneva.
The two treaties were the Paris Convention for the Protection of Industrial Property and the Patent Cooperation Treaty (PCT). Both treaties will be binding on India as of December 7, 1998. With these accessions, there are now 151 countries which are party to the Paris Convention and 98 countries party to the PCT.
The Director General of WIPO, Dr. Kamil Idris, warmly welcomed India's accession to the two treaties. This welcome was echoed by the international intellectual property community, particularly trade and industrial circles, and the other countries which are already bound by those treaties.
The Paris Convention is one of the two basic intellectual property treaties administered by WIPO, the other being the Berne Convention for the Protection of Literary and Artistic Works of which India has been a member for a very long time. The Paris Convention lays down basic international principles primarily governing the protection of patents, trademarks and industrial designs.
The PCT provides for the filing of a single international application in one language, having effect in each of the countries party to the PCT which the applicant designates in his application for patent protection. The great advantage offered by the PCT is that it simplifies procedures and reduces costs for owners of new inventions who apply for patent protection in multiple countries.
It will be possible to designate India in international applications only as from December 7, 1998, the date of entry into force of the PCT in respect of India.
More detailed information on the Patent Cooperation Treaty is available in the annex to this Update.
Living in a global economy means that certain laws must stretch across nations, including intellectual property laws. An inventor who wants his or her invention protected in foreign countries has the option of filing for a patent in each country in which protection is sought or can file an international patent application. The Paris Convention for the Protection of Industrial Property, for example, governs almost all international reciprocal patent filing rights. Parties to the Paris Convention also have an option to join the Patent Cooperation Treaty (PCT), which allows inventors to file an international patent application effectively providing inventors with simultaneous patent protection in participating countries.
This article provides information about what the Paris Convention provides to contracting countries as well as an overview of the Patent Cooperation Treaty.
What Does the Paris Convention Provide?
The Paris Convention was signed in Paris, France, on March 20, 1883 and is administered by the World Intellectual Property Organization (WIPO). There are over 170 countries who are contracting parties to the Paris Convention. The Paris Convention doesn't only apply to patents; it also includes protection for trademarks, trade names, and services marks. Basically, the Paris Convention establishes a right of priority, which means that an applicant can use his or her first filing date as an effective filing date in other contracting countries. One of the requirements to this right of priority is that the subsequent filings must occur within a year from the first filing. The countries that are contracting parties to the Paris Convention also have the opportunity to join the Patent Cooperation Treaty (PCT), which allows contracting parties to file international patent applications.
What Is the Patent Cooperation Treaty?
The PCT provides a standard application format and centralizes the filing procedures for patents, which makes filing for patent protection in multiple countries easier. Nationals and residents of countries that are a party to the PCT are eligible to file for this type of application. An applicant has the option to file an international application with the International Bureau of WIPO in Geneva or in the national patent office of the applicant's residency or nationality. For example, a resident or citizen of the United States can file the application with the U.S. Patent and Trademark Office (USPTO).
The PCT not only provides advantages to inventors seeking international patent protection, but also benefits patent offices and the general public. For example, patent offices can reduce or even eliminate the work involved in searching and examining a patent application because of the international search report and written opinion. The published international search report also puts third parties in a better position to decide whether or not an invention can be patented. The PCT procedures also provide more time to decide whether or not to seek patent protection in foreign countries and to take the steps that are necessary to seek foreign patent protection.
Getting Legal Help
Even though filing for a patent doesn't require attorney representation, a patent application must include detailed and specific information, so having experience filing such applications is helpful for ensuring that the application is complete and correct. Providing incomplete or incorrect information can lead to limited coverage of your patent or rejection of your application. If you have questions about the Paris Convention, or would like some help to determine if your invention or discovery qualifies for patent protection, you may want to contact a local patents attorney for guidance.
For more information and resources related to this topic, you can visit FindLaw's section on Patents.
The Government has decided to accede to the Paris Convention for the protection of industrial property and its facilitation treaty, the Patent Co-operation Treaty (PCT). This is expected to provide a tremendous boost to scientific research, and inventive and innovative activity in the country.
According to an official release from the Ministry of Industry, India would also be able to play a more significant role in determining matters related to industrial property in international fora, and forcefully articulate its concern on such issues.
According to the Ministry, the main advantages to be derived are an improved industrial climate, improved information flow, as well as better and more extensive protection for Indian inventors abroad. It would also give the benefit of national treatment to Indian inventors, support to India's export efforts, encouragement to scientific research and technological development and membership of the PCT and other treaties.
The Ministry pointed out that no additional expenditure would be incurred as fee of membership of the Paris Convention and the PCT. What is more, India would also not have to make any changes in the Patents Act, 1970, in order to accede to the convention. The only change required in the laws on Industrial Property is a minor amendment in Section 78(a) of the Designs Act of 1911, to extend reciprocal property arrangement to all the countries party to the Paris Convention. At present, this is restricted to the Commonwealth countries.
The most important benefit for India from membership of the convention is access to the PCT. The PCT is a special agreement under the Paris Convention for international cooperation in the field of patents. It deals with rationalization and cooperation with regard to filing, searching and examination of patent applications and dissemination of information contained in them. The principal objective of the PCT is to simplify and render more effective and economical the means of applying for patents in several countries. Before the introduction of the PCT, the only way in which protection could be sought in several countries was by filing a separate application in each country. The PCT provides for filing a single application in one language having effect in each of the countries party to the PCT as designated by the applicant, formal examination of the application, 'international search,' which gives a report on the previously published applications in this field of invention, centralized publication and options for an 'international preliminary examination' before the applicant decides to seek protection in a specific country.
The Ministry observed that this agreement would benefit patent offices which are struggling with heavy workloads. Under the PCT system, by the time an international application reaches the Indian office, it would have been searched by the international office, thereby providing the office with the necessary search report, on the basis of which it could carry out its examination. The ultimate examination and grant of patent would, however, be left entirely to the Indian patent office, which will examine the application within the framework of domestic law.
The Paris Convention is a multilateral treaty dealing with the protection of industrial property in the widest sense. It is administered by the World Intellectual Property Organization, one of the specialized agencies of the United Nations dealing with the protection and promotion of intellectual property rights. Currently, 147 countries are members of the Paris Convention.
PARIS CONVENTION
You can claim priority of an earlier right in a member of the Paris Union within
TRADEMARKS
6 months
INDUSTRIAL DESIGNS
6 months
UTILITY MODELS
12 months
PATENTS
12 months
Union for the protection of Industrial Property rights
The Paris Convention created a Union for the protection of Industrial Property rights and established the priority right among member States.
The Paris Convention was first signed on the 20 th March, 1883, which makes it the first and oldest global treaties on Intellectual Property. Currently, 176 States all over the world have signed the Paris Convention and provides common standards for Intellectual Property protection in member states.
The priority rights were first originated with this treaty, allowing applicants of an Intellectual Property right (trademark, patent or design) from one jurisdiction to apply for the same right in another jurisdiction, benefiting from the original application date. Claiming Paris Convention priority is thus crucial for patents and industrial designs as absolute novelty is a granting requirement.
The Paris Convention is an international treaty that is currently administered by the World Intellectual Property Organization (WIPO) and based in Geneva Switzerland. The treaty was signed into effect on March 20, 1883 and was a milestone for international patent law because it paved the way for international patents and helped to enforce them for the first time.
Origin of the Treaty:
The Paris Convention was conceived to eliminate the threat of an inventor’s work being stolen and used in another country where they would be free of any national patent laws protecting the invention. Inventors from around the world were reluctant to attend world fairs to display their new strides in technology.
In 1873, world leaders took notice that inventors did not attend the International Exhibition of Inventions in Vienna for fear that their work would be exploited. It was not long before diplomatic leaders met in Paris in 1880 to discuss this problem and likely ways to resolve it. They came up with international patent law and other intellectual property guidelines and three years later, it was signed into effect as the Paris Convention.
Content:
The Treaty also stresses the importance of priority for inventors. When a person within a contracting State files and successfully receives a patent for their invention, the inventor will be given “priority” over other inventors when perusing international patents. This is a period of six or twelve months (depending on the nature of the patent) in which the inventor must prepare patent applications to other countries.
Once patent applications are submitted to other countries within the limited time period, the filing date is handled as the original filing date of the initial patent the inventor received in his home country. This is important in international patent law because it gives an inventor ample time to prepare patents for submission in other countries, while giving the inventor an edge over other inventors in foreign countries. After the limited time period expires, the inventor may still file for international patents, though priority for the original filing date is no longer granted.
The Paris Convention Treaty gives further provisions in the third part pertaining to international patent law. Some main points given in this section state that a patent granted in one country does not guarantee that it will be approved in another country and other guidelines prohibiting the unethical abuse of patents.
Implications on International Patent Law:
The Paris Convention was the first successful international intellectual property treaty to emerge. It demonstrated that patents, which were a part of local laws for hundreds of years, needed an international standard so that protection could be granted on a global scale. It also proved to be an essential part of intellectual property law because it allowed innovative thinkers and creators to spread new ideas and inspire others, without the threat of having their work stolen and used in other countries.
It also benefited inventors by allowing them access for their work into foreign markets. In addition, the Paris Convention has become one of the largest international treaties in the world, enlisting 173 countries under its guidelines. This is a testament to its importance in intellectual property to protect the natural right to have exclusive rights to one’s own work and for the growth of new ideas through inspiration.
facts about PC
1. Laying the groundwork
In 1873 the Government of the Empire of Austria-Hungary invited other countries to an international exhibition of inventions held at Vienna. However, many inventors declined to exhibit their inventions at that exhibition, due to the inadequate legal protection offered. This led to two notable developments: first, Austria passed a law, securing temporary protections for all foreigners participating in the exhibition for their inventions, trademarks and industrial designs. Second, the Congress of Vienna for Patent Reform was convened later that year. As a follow-up to the Vienna Congress, an International Congress on Industrial Property was convened in Paris in 1878. The main result of which, was the drive toward “determining the basis of uniform legislation” in the field of industrial property.
2. The first international IP convention
In 1883 in Paris, The International Convention for the Protection of Industrial Property was first signed by an initial 11 states. It has since come to be known as the Paris Convention.
3. Revisions and amendments
Since then it has been revised 6 times, at: Brussels in 1900, at Washington in 1911, at The Hague in 1925, at London in 1934, at Lisbon in 1958 and at Stockholm in 1967, and was amended in 1979.
4. A union of patenting authorities
Countries that signed the Paris Convention formed a “Union” of patenting authorities, and are sometimes referred to as the “Paris Union.”
5. Key tenets
Three main provisions were established with the Paris Convention: right to national treatment, right of priority, common rules and a unified framework for the implementation of the convention.
6. No preferential treatment
With national treatment, Paris Union countries are obligated to show no preferential treatment to patent holders who are citizens over those who are not. Patent holders who are non-residents and non-nationals of a Paris Union country are given the same expectations and rights under the law as nationals of said country.
7. International filing challenge
Before the Paris Convention, patent applications had to be made roughly at the same time in all countries where protections were sought, in order to avoid a publication in one country destroying the novelty of the invention in the other countries.
8. International filing solution
With the Paris Convention, the right of priority means that a patent that has been filed in a home country is allocated a 12-month period to file a Paris Convention application (or a direct national filing application claiming priority) in countries party to the Paris Convention. With this application Patent holders can choose to file directly with national or regional patent offices with Paris Convention priority (i.e. recognition of the initial priority date in their home country as the priority date).
9. Current contracting parties
There are currently 177 total contracting parties to the convention. The most recent countries to enforce are Samoa (2013), Kuwait (2014), and Afghanistan (2017).
10. Not to be confused with PCT
The Paris Convention is not to be confused with the Patent Cooperation Treaty (PCT). The PCT is also an international treaty, whereby applicants file once and within 12 months can file a PCT filing to preserve protections in other countries. The difference being that the PCT is equivalent to filing separate patent applications in each specific PCT country. With the PCT, patent holders have about 30 months (depending on the country) to bring the patent to National Phase and validate the patent in the specific PCT countries.
Paris Convention for the Protection of Industrial Property
| Signed | 20 March 1883 |
|---|---|
| Location | Paris, France |
| Effective | 7 July 1884 (1883 version) |
| Parties | 177 |
| Languages | French |
The Paris Convention for the Protection of Industrial Property, signed in Paris, France, on 20 March 1883, was one of the first intellectual property treaties. It established a Union for the protection of industrial property. The Convention is currently still in force. The substantive provisions of the Convention fall into three main categories: national treatment, priority right and common rules.[1]
Contents
Contents[edit]
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National treatment[edit]
According to Articles 2 and 3 of this treaty, juristic and natural persons who are either national of or domiciled in a state party to the Convention shall, as regards the protection of industrial property, enjoy in all the other countries of the Union, the advantages that their respective laws grant to nationals.
In other words, when an applicant files an application for a patent or a trademark in a foreign country member of the Union, the application receives the same treatment as if it came from a national of this foreign country. Furthermore, if the intellectual property right is granted (e.g. if the applicant becomes owners of a patent or of a registered trademark), the owner benefits from the same protection and the same legal remedy against any infringement as if the owner was a national owner of this right.
Priority right[edit]
The "Convention priority right", also called "Paris Convention priority right" or "Union priority right", was also established by Article 4 of the Paris Convention, and is regarded as one of the cornerstones of the Paris Convention.[2] It provides that an applicant from one contracting State shall be able to use its first filing date (in one of the contracting States) as the effective filing date in another contracting State, provided that the applicant, or his successor in title, files a subsequent application within 6 months (for industrial designs and trademarks) or 12 months (for patents and utility models) from the first filing.
Temporary protection for goods shown at some international exhibitions[edit]
Article 11(1) of the Paris Convention requires that the Countries of the Union "grant temporary protection to patentable inventions, utility models, industrial designs, and trademarks, in respect of goods exhibited at official or officially recognized international exhibitions held in the territory of any of them".[3]
If a patent or trademark registration is applied for during the temporary period of protection, the priority date of the application may be counted "from the date of introduction of the goods into the exhibition" rather than from the date of filing of the application, if the temporary protection referred to in Article 11(1) has been implemented in such a manner in national law.[4][5] There are, however, other means for the Countries of the Union to implement in their national law the temporary protection provided for in Article 11 of the Paris Convention:
Mutual independence of patents and trademarks in the different Countries of the Union[edit]
According to Articles 4bis and 6 (for patents and trademarks respectively), for foreigners, the application for a patent or the registration of a trademark shall be determined by the member state in accordance with their national law and not by the decision of the country of origin or any other countries. Patent applications and trademark registrations are independent among contracting countries.
History[edit]
After a diplomatic conference in Paris in 1880, the Convention was signed in 1883 by 11 countries: Belgium, Brazil, France, Guatemala, Italy, the Netherlands, Portugal, El Salvador, Serbia, Spain and Switzerland. Guatemala, El Salvador and Serbia denounced and reapplied the convention via accession.[6]
The Treaty was revised at Brussels, Belgium, on 14 December 1900, at Washington, United States, on 2 June 1911, at The Hague, Netherlands, on 6 November 1925, at London, United Kingdom, on 2 June 1934, at Lisbon, Portugal, on 31 October 1958, and at Stockholm, Sweden, on 14 July 1967, and was amended on 28 September 1979.
Contracting parties[edit]
As of January 2019, the Convention has 177 contracting member countries,[7] which makes it one of the most widely adopted treaties worldwide.
Former contracting parties[edit]
- Austria-Hungary (succeeded by Austria and Hungary)
- Czechoslovakia
- Orange Free State 1899–31 May 1902
- Colony of Queensland (1891–1900, after federation acceded to by Australia)
- Serbia and Montenegro (succeeded by Serbia)
- Soviet Union (succeeded by the Russian Federation)
- Yugoslavia (succeeded by Serbia and Montenegro and then Serbia).
Administration[edit]
The Paris Convention is administered by the World Intellectual Property Organization (WIPO),[8] based in Geneva, Switzerland.[9]