Protection of industrial property in the past and today

Paris convention for the Protection of Industrial Property

Revisions of the Paris Convention

20.03.1883  1900 Brussels  1911 Washington  1925 Hague  1934 London  1958 Lisbon  1967 Stockholm 28.09.1979

Paris Convention
       

Patents Utility models Industrial design Trademarks Service marks Trade names Indication of source Appelletion of origin

General rule of Paris Convention:

National treatment of other convention members citizens in the field of the protection of their industrial property

art.2
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.

Rights under art.2

Gives same rights concerning protection of IP as the country they are visiting provides for their nationals  Will give same rights in the future  Same legal protection  Same legal remedies + extra rights given by the Paris Convention  No requirement as to the domicile may be imposed for the enjoyment of any industrial protection rights To the countries of the Union


Whom does Paris convention protect



Nationals of the other states of the Union (art. 2) Nationals of the countries outside the Union if:
 

Effective industrial establishement Effective commecial establishement

is situated in the territory ot one of the countries of the Union (art. 3)

Winner takes it all

Alexander Graham Bell invented the telephone in 1876. The first words he spoke on his telephone were, "Watson, come here. I need you." Watson was his assistant's name. That happened in 1875-76. However Antonio Meucci had a working telephone since 1848 in Havana and a perfected model by 1871. On that year Meucci filed for and obtained a patent for the telephone. Meucci could not afford the $250 needed for a definitive patent for his "talking telegraph" so in 1871 filed a one-year renewable notice of an impending patent. Three years later he could not even afford the $10 to renew it. He sent a model and technical details to the Western Union telegraph company but failed to win a meeting with executives. When he asked for his materials to be returned, in 1874, he was told they had been lost. Two years later Bell, who shared a laboratory with Meucci, filed a patent for a telephone, became a celebrity and made a lucrative deal with Western Union. Meucci sued and was nearing victory - the supreme court agreed to hear the case and fraud charges were initiated against Bell - when the Florentine died in 1889. The legal action died with him.

Right of precedence
Art. 4 Everyone who correctly filed an application for patent (or his succesor) in one state will have a right of precedence in other states of the union before anyone other wanting to applicate for the patent.

What kind of filling gives rise to the right of priority?

Any filling (done accordingly to the rule of law) equivalent to regular national filling or filling equivalent to filling under international treaties concluded between the countries of the Union.  Equivalent to regular national filling  Regular national filling (giving date)  Equivalent to international treaties  Regular international treaties filling (giving date)

Filling in other countries in interval



No one else can make an succesfull filling in the meantime when right of priority is being Taking advantage of the right of priority (art. 4 D)

How long is priority rule effective?

12 months patents and utility models  6 months industrial designs, trade marks The term start from the date of filling the application.


Idependence of obtained patents

Patents obtained in different countries of the Union are independent from each other.  Error  Lack of payment  Expiration Effects only in one country not in all.

Industrial property rights fees

 

Depending on national legislation Not less than 6 months extra time for payment

Compulsory License
 

Forfeiture of patent Compulsory license

This method can not be used forfaiture of the rights from the industrial designs

Actions not infringementing the rights of patentee



Use on board of vessels of other countries of devices subject to patent in the body, machinery, tackle, gear or other accesories if such vessel temporary enters the waters of the countries of the Union Use of devieces subject to patent on airplanes or land vehicles if those vehicles temporarly or incidentally enter the countries of the Union

Well known marks (art. 6 bis)



Well known marks are being protected ex officio (it domestic law allows it) or on request of interested party in all countries of the Union Protection:
 

Cancellation Refusal

Imitations of well known marks

Reproduction  Imitation  Translation Liable to create confusion with the mark considered by the authority to be a well known mark.


Time for cancellation the imitations of well known marks

 

5 years from the date of registration No time limits if the mark was registered or used in bad faith.

Registration of trademarks


Conditions for filling the registration are depending from the countries internal legislation Registration can not be refused on the ground that filling registration (or renewal) has not been effected in the country of origin

Assignement of mark
If the law of member state states that a trademark may be assigned only if it takes place in the same time and with the transfer of business to which the mark belongs it shell be enough for the validity of such addignement that the portion of business located in that country be transfered to the new owner of the trademark.

Protection of trademark allready registered in one country in other countries



Every mark accepted for registration in country of origin should be accepted for registration in the other Exceptions:
  

Infringes rights acquired by third parties Are indistinctive in its character Are contrary to morality or public order

Service marks, Trade names

A trade name, also known as a trading name or a business name, is the name which a business trades under for commercial purposes, although its registered, legal name, used for contracts and other formal situations, may be another. Pharmaceuticals also have trade names (e.g. "Aspirin"), often dissimilar to their chemical names ("acetylsalicylic acid"). A service mark differs from a trademark in that the mark is used on the advertising of the service rather than on the packaging or delivery of the service, since there is generally no "package" to place the mark on, which is the practice for trademarks. Transportation carriers would paint their service marks on their vehicles, such as on planes or buses

Service marks, trade names

 

Are being protected by the convention There is no need of registration of such marks

Goods unlawfully Bearing a Mark or Trade Name

  

Seizure on importation Prohibition of importation Civil remedies and actions

International invention competitions or exhibitions