Eminent Wipo Conventions, Treaties, Agreements

14th July, 2023 - 6:38 am Categories: WIPO 0 Comments

INTRODUCTION:

“The World Intellectual Property Organization (WIPO) is the global forum for intellectual property (IP) services, policy, information and cooperation.” It was established in the year 1967 and is headquartered in Geneva hosting 193 Member states. Its objective is to create an efficient & globally balanced framework that encourages creativity & innovation.

The two significant branches of Intellectual Property include INDUSTRIAL PROERTY, COPYRIGHT.

1. CONVENTION ESTABLISHING THE WORLD INTELLECTUAL PROPERTY ORGANIZATION (WIPO Convention) (1967)

The World Intellectual Property Organization (WIPO) Convention was entered on July 14, 1967 and was amended in 1979 which is the foundation of the WIPO which attained the status of an inter-governmental of the UN System of Organizations in 1974. The establishment of WIPO can be traced back to the formulation of the Paris Convention for the Protection of Industrial Property and the Berne Convention for the Protection of Literary and Artistic Works which led to the formation of the International Bureau which was later united by WIPO under the WIPO Convention.

The primary objectives of WIPO are:

• To promote the protection of intellectual property worldwide
• To ensure administrative cooperation among the intellectual property Unions established by the treaties that WIPO administers

To achieve its objectives, the WIPO performes certain additional activities like:-

• Normative Activities – Setting of norms & standards for the protection & enforcement of IPR through international treaties.
• Program Activities – Legal & technical assistance to States in the field of IP
• International classification and standardization activities – Cooperation among Industrial property offices dealing with the patent, trademark and industrial design documentation.
• Registration and filing activities – Performing services related to international applications for patents, inventions, registration of marks and industrial designs.

The WIPO considers a particular State as its member if it is a part of any of the Unions and to any other State complying with any of the following conditions:

• It is a member of the United Nations or any of the specialized agencies collaborating with the United Nations.
• It is a party to the Statute of the International Court of Justice.
• It has been invited by the General Assembly of WIPO to become a party to the Convention.

The States are not bound by any form of obligations after becoming a Member of WIPO.

The WIPO’s budget receives income from the fees paid by:

• Users of International Registration
• Filing Services
• Contributions made by Member States & their Governments

All Member States belong to one of the 14 classes of classification which decides the amount of contribution to be made by them. The Secretariat of the WIPO is known as the International Bureau whose executive head is the Director General of WIPO assisted by 2 or more Deputy Director Generals. It benefits from certain privileges & immunities provided to international organizations & their officials for the performance of their duties & targets.

INDUSTRIAL PROPERTY TREATIES:              

2. PARIS CONVENTION FOR THE PROTECTION OF INDUSTRIAL PROPERTY (1883)

The Paris Convention encompasses the various forms of industrial property like patents, trademarks, industrial designs, utility models, service marks, trade names, geographical indications and repression of unfair competition. The Convention provided for the establishment of the Paris Union where all Contracting States are members and consists of an Assembly and Executive Committee which operates on the biennial program & budget provided by the WIPO Secretariat. This Convention went through various rounds of revision from 1900-1979 and was finally amended in 1979.

The key components of this Convention includes:-

• National Treatment – The Contracting States have an obligation to provide the same protection to the nationals of other Contracting States it provides to its nationals. Similar protection must be granted to nationals of non – Contracting States if the Contracting State holds an efficient industrial or commercial establishment or is domiciled.
• Right of priority – There exists a sense of priority for patents, utility models, marks and industrial designs filed in any of the Contracting States. Protection can be enjoyed in other Contracting States with an application within the time period of 12 months for patents & utility models, 6 months for industrial designs & marks. Priority is provided for the subsequent applications by assuming them as the first application over other applications filed during the similar time duration. A key merit of this aspect is that the -process of seeking global protection has been eased out for the applicants in a framework where the presentation of applications in all countries requiring protection is not necessary, on the other hand, the States are provided a duration of 6 or 12 to deliberate regarding the granting of protection and their other organizational related aspects.
• Common rules – This Convention provides uniform rules to handle the various forms of industrial property which are as follows:
• Patents – The aspect of independence is spread across the Contracting States in the aspect of granting of patents. There is a non-existence of any form of obligation for a Contracting state to grant patent as another such State has granted patent for the concerned invention. On the other hand, a patent cannot be refused or terminated on the basis of the rejection of patent by another Contracting State.

A Patent cannot be refused or invalidated on the grounds that the sale & commerce of the patented product/invention is restricted as per the domestic law of the particular Contracting State. A State following compulsory licensing legislation can grant the patent with certain key conditions.

• Marks – The Convention does not provide for a common framework dealing with the filing & registration of marks which are performed through the domestic law of every Contracting State. The aspect of independence is spread across the Contracting States in the aspect of granting & revocation of patents and an action in one State does not affect the other States. The registration of marks apart from the country of origin can be refused on the grounds where it may infringe the acquired rights of third parties, lack of distinctive character, contrary to public order & morality, contains official/State signs of the Contracting States, may deceive the public, whose usage may involve imitation, reproduction, etc. of the mark of similar goods shall be prohibited.

Collective marks can be granted protection.

• Industrial Designs – Protection must be granted to industrial designs in the Contracting State and the same cannot be forfeited as the concerned products are not produced in the State.
• Trade Names – The Contracting State must provide protection for the trade names even in the absence of filing or registration of such names.
• Indications of Source – All Contracting States must take action to ensure the non-performance of direct or indirect use of false indications indicating the source of goods, identity of producer, manufacturer or trader.
• Unfair Competition – All Contracting States must take measures to ensure an effective & wholesome protection against unfair competition.

3. MADRID AGREEMENT CONCERNING THE INTERNATIONAL REGISTRATION OF MARKS (1891) and the PROTOCOL RELATING TO THE AGREEMENT (1989)

The Madrid System for the International Registration of Marks is governed by:

• Madrid Agreement – This Agreement was completed in 1891 and went through various rounds of revision from 1900-1979 and was amended in 1979.
• Protocol – This Protocol was completed in 1989 and it was created to make the Madrid System more efficient & flexible which suits the domestic legislation frameworks of nations or intergovernmental organizations.

The Madrid System plays a key role in protecting the mark in various nations across the globe by providing for an international registration that is acknowledged by all the Contracting Parties. An international application for registration of marks shall be filed only by a natural person or legal entity having a link with Contracting Party of the Agreement or Protocol through establishment, nationality or domicile. Such an International Registration Application shall be reviewed by the International Bureau of WIPO through the office of origin.

Under this framework, the payment of a basic fee, supplementary fee for each class of goods/services beyond the first three classes and a complementary fee for each Contracting Party ensures the filing of an international application for the registration of marks. The International Bureau of WIPO performs a compliance assessment along the lines of the Madrid Agreement, the Protocol and their Common Regulations after receiving the international application. A key step in this assessment is the classification & comprehensibility of the concerned goods/services. If the result of the assessment is positive and if any form of irregularities were not present, the application would be recorded in the International Register and the International Register would be published in the WIPO Gazette of International Marks by the International Bureau which also informs all concerned Contracting Parties.

After receiving the communication from the International Bureau, the office of each Contracting Party conducts an examination of the international registration to analyse the compatibility & compliance with the domestic legislation. If all the parameters are met & addressed by the holder of registration/representative, the office of the Contracting Party shall issue a Statement of Grant of Protection. If the examination points out any provisions which are non-compliant with the domestic legislation, the Contracting Party has a right to refuse the protection in their territory which shall be communicated to the International Bureau within 12 months from the date of notification, if under the Protocol, then it is extended to 18 months. The aspects of the refusal of protection shall be analyzed by the competent administrative authority/judicial body of the Contracting Party and the ultimate decision shall be communicated to the International Bureau which shall be recorded and published.

The validity of an International Registration is 10 years which can be renewed for an extended period of 10 years subject to the payment of the prescribed fees. The following merits/advantages can be enjoyed under the Madrid System of International Registration of Marks:

• One International Registration with International Bureau, Applicable in various Contracting Party States.
• Breaks the Language Barrier [English, French, Spanish]
• Single Payment of Fees
• Ease in Maintenance & Registration

The International Bureau of WIPO publishes the  Guide to the International Registration of Marks under the Madrid Agreement and the Madrid Protocol to support the users of the multi-faceted Madrid System.

4. NICE AGREEMENT CONCERNING THE INTERNATIONAL CLASSIFICATION OF GOODS AND SERVICES FOR THE PURPOSES OF THE REGISTRATION OF MARKS (1957)

The Nice Agreement provides for the detailed classification of goods & services tom ease the process of trademark & service mark registration which is commonly known as the Nice Classification. All trademark offices of Contracting States are obligating to mention in all official documents & publications the various numbers of the classes of the Nice Classification and their nexus with the concerned good/service for their registration.

At the outset, the Nice Classification encompasses 34 classes for goods & 11 classes for services along with an alphabetical arrangement of the different goods & services consisting of approx. 11,000 items. These lists are periodically revised & amended by a Committee of Experts which consists of the representatives of all Contracting States. Officially, 83 States are parties to the Nice Agreement, but the trademark offices of 65 additional States as well as National & Regional Intellectual Property Organizations imbibe the Nice Classification framework.

The Nice Agreement provided for the establishment of a Union where Contracting States are members and consists of an Assembly which operates on the biennial program & budget provided by the Union. The operational framework of Contracting States adhering to the Stockholm Act or the Geneva Act of the Nice Agreement are included under members of the Assembly. This Agreement was completed in 1957 and went through various rounds of revision from 1900-1979 and was amended in 1979.

5. LOCARNO AGREEMENT ESTABLISHING AN INTERNATIONAL CLASSIFICATION FOR INDUSTRIAL DESIGNS (1968)

The Locarno Agreement provides for an elaborate classification of Industrial Designs which corresponds to 32 classes & 219 subclasses along with an alphabetical arrangement of approximately 7,000 goods linking the concerned product with the appropriate class or subclass. It is the duty of the offices of the Contracting States to mention the indications of the classes or subclasses linked to the concerned industrial design in the official documents during the deposit & registration of industrial designs which will later be published in the offices issue. These lists are periodically revised & amended by a Committee of Experts which consists of the representatives of all Contracting States. Officially, 52 States are parties to the Locarno Agreement and other International, National & Regional Intellectual Property Organizations imbibe the Locarno Classification framework.

The Locarno Agreement provided for the establishment of a Union where Contracting States are members and consists of an Assembly which operates on the biennial program & budget provided by the Union. This Agreement was completed in 1968 and went through various rounds of revision from 1900-1979 and was amended in 1979.

6. STRASBOURG AGREEMENT CONCERNING THE INTERNATIONAL PATENT CLASSIFICATION (1971)

The Strasbourg Agreement played a chief role in the development of the International Patent Classification (IPC) which classified technology into 8 broad sections consisting of approximately 70,000 subdivisions which is indicated by a symbol derived from the Arabic numerals & Latin alphabets.

Such symbols are mentioned in the patent documents including published patent applications & granted patents) and are demarcated by the concerned National or Regional Industrial Property offices that performs the function of publication of the patent document. In the case of PCT (Patent Cooperation Treaty) Applications, the allocation of IPC symbols is performed by International Searching Authority. The IPC is periodically revised & amended by a Committee of Experts which consists of the representatives of all Contracting States.

The system of classifying technology into 8 sections which then consist of 70,000 subdivisions and appropriate indication of class of patent plays a significant part in the process of retrieval of patent documents as part of the search & analysis process for “prior art”. The function of patent document retrieval is required & performed by patent-issuing authorities, potential investors, R&D units and other concerned parties of the application & development of the concerned technology.

Officially, 62 States are parties to the Strasbourg Agreement, but the patent offices of more than 100 States, 4 Regional Intellectual Property Offices and the WIPO Secretariat administering the Patent Cooperation Treaty (1970) imbibe the  Strasbourg Agreement Classification framework.

The Strasbourg Agreement provided for the establishment of a Union where Contracting States are members and consists of an Assembly which operates on the biennial program & budget provided by the Union. This Agreement was completed in 1971 and was amended in 1979.

7. BUDAPEST TREATY ON THE INTERNATIONAL RECOGNITION OF THE DEPOSIT OF MICROORGANISMS FOR THE PURPOSES OF PATENT PROCEDURE (1977)

The Budapest Treaty provides for the deposit of microorganisms for the performance of patent procedures with an international depository authority whose authority is on or outside the concerned State’s territory. The usual procedure of disclosing the key aspects of the invention in a written format will not be possible in instances where the invention consists of a microorganism not available in the public or the use of it, disclosure can be made by depositing a sample of the microorganism with a specialized institution.

The Treaty allows the deposit of a microorganism with an international depository authority for the patent registration process instead of deposit the microorganism in every Contracting State where protection is required. Such an international microorganism deposit is put forward before the National Patent Offices of all Contracting states and concerned Regional Patent Office. A scientific institution attains the status of an “international depository authority” when the Contracting State of the territory provides an assurance by furnishing these details to the Director General of WIPO to certify that the concerned institution will comply with the required formalities & procedures of the Treaty.

The following merits/advantages can be enjoyed under the Budapest Treaty Patent System – International Recognition of the Deposit of Microorganisms if the depositors apply for patents in various Contracting States:

• Microorganism deposit under the Treaty will save money & resources of the depositors involved in filing multiple patent applications in various Contracting States and will raise their level of security & protection by operating in a uniform system of deposit.
• The deposit of microorganism will happen in an International Depository Authority which will support the recognition & furnishing of microorganism samples.

The Budapest Treaty provided for the establishment of a Union where Contracting States are members and consists of an Assembly. The Assembly periodically revises & amends the Regulations under the Treaty. The payment of membership contributions to the International Bureau of WIPO is not necessary for States under the Budapest Union or to develop an international depository authority.

COPYRIGHT AND RELATED RIGHTS TREATIES:

8. BERNE CONVENTION FOR THE PROTECTION OF LITERARY AND ARTISTIC WORKS (1886)

The Berne Convention was formulated to protect the works & rights of the authors through 3 key pillars/principles which include the quoted following:

• National Treatment – Works originating in one of the Contracting States must be given the same protection in each of other Contracting States as the latter grants to the works of its own nationals.
• Automatic Protection – Protection must not be conditional upon compliance with any formality.
• Independence of Protection – Protection is independent of the existence of protection in the country of origin of the work. In case a Contracting State extends the protection term from the Convention prescribed duration and the concerned work is not protected in the country of origin, such protection may be denied once protection in the country of origin ceases.

The Convention puts forward certain Minimum Standards of Protection that defines the concept of protection and its related rights:- Article 2(1) of the Convention defines the scope of protection which includes “every production in the literary, scientific and artistic domain, whatever the mode or form of its expression”. The following rights are considered as the exclusive rights of authorization after analyzing the reservations, limitations & exceptions:

• Right to Translate
• Right to make Adaptations & Arrangements of the work
• Right to perform in public dramatic, dramatic-musical and musical works
• Right to recite Literary works in public
• Right to Communicate to the public, the performance of such works
• Right to Broadcast
• Right to make Reproductions in any manner or form [Sound Recordings of Musical works – Right to equitable remuneration]
• Right to use the work as a basis for an audiovisual work

Moral Rights

• Right to claim ownership of the work
• Right to object to any mutilation, deformation or other modification of, or derogatory action linked to the author’s honor or reputation

At the outset, the duration of protection is provided until the end of the 50^th year after the death of the author/creator. For:

• Anonymous or Pseudonymous works – The duration of protection ends 50 years after the concerned work legally enters the public domain.
• Audiovisual Cinematographic works – The protection is valid up to 50 years after the work legally enters the public domain.
• Applied Art & Photographic works – The protection is provided up to 25 years from the date of creation of the concerned work.

There are specific limitations & exceptions on economic rights, for instance, usage of protected works without authorization of the copyright owner & payment of compensation. Such limitations are known as free uses of protected works like:

• Article 9(2) – Reproduction in certain special cases
• Article 10 – Quotations and use of works by way of illustration for teaching purposes
• Article 10bis – Reproduction of newspaper or similar articles and use of works for the purpose of reporting current events
• Article 11bis(3) – Ephemeral recordings for broadcasting purposes.

The Berne Convention provided for the establishment of the Berne Union consisting of an Assembly and an Executive Committee which operates on the biennial program & budget provided by the WIPO Secretariat. The operational framework of Contracting States who are members of the Union adhering to the administrative provisions of the Stockholm Act  are included as members of the Union except Switzerland which is a member ex officio. This Agreement was completed in 1886 and went through various rounds of revision from 1896-1979 and was amended in 1979.

9. ROME CONVENTION FOR THE PROTECTION OF PERFORMERS, PRODUCERS OF PHONOGRAMS AND BROADCASTING ORGANISATIONS (1961)

The Rome Convention provides wholesome protection to the following parties:

• Performers – The category of Performers includes Actors, Singers, Musicians, Dancers and those who perform literary or artistic works. They are granted protection against specific acts for which their consent was not granted such as broadcasting & communication to public of a live performance.
• Producers of Phonograms – They have the authority to allow or prohibit the direct/indirect reproduction of phonograms. Under the Rome Convention, phonograms can be defined as “any exclusively aural fixation of sounds of a performance or of other sounds.” Publication of Phonograms for commercial purposes portrays the secondary uses like broadcasting or communication to public in any form. It includes the payment of a single equitable remuneration to the performers, producers of the phonograms or both by the user which is not applicable in nature.
• Broadcasting organizations – These organizations have the authority to allow or prohibit the performance of specific acts like rebroadcasting of their broadcasts, fixation of their broadcasts, reproduction of fixations, communication to public of their TV broadcasts after the payment of an entrance fee.

The Rome Convention provides protection for a duration of at least the end of the 20 year period calculated from the year end in which:

• Fixation was made for phonograms and for performance incorporated
• Performance took place for performances not incorporated in phonograms
• Broadcast took place

The national laws played a key role in establishing a 50 year term of protection for phonograms and performances. The Convention does not mention about the creation of an Union or budget Collectively, the Rome Convention is administered through the joint efforts of WIPO, International Labour Organization (ILO) and the United Nations Educational, Scientific and Cultural Organization (UNESCO) which jointly form the Secretariat of the Intergovernmental Committee established under the Convention composing of the representatives of 12 Contracting States.

10. BRUSSELS CONVENTION RELATING TO THE DISTRIBUTION OF PROGRAMME CARRYING SIGNALS TRANSMITTED BY SATELLITE (1974)

The Brussels Convention, also known as Satellites Convention presents an obligation to every Contracting State to take the required measures to avoid the unauthorized distribution on or from its territory of a programme-carrying signal transmitted by the satellite.

In certain instances, non-authorized persons can distribute the programme carrying signals if the signals consist of short excerpts or reports of current events, short programme excerpts carried by emitted signals which is distributed for adult teaching or scientific research.

The Convention does not mention about a term of protection, hence leaves this aspect to the domestic legislation. Also, the Convention is not applicable in situations where distribution of signals is made from a direct broadcasting satellite.

Any form of ratification, acceptance or accession and its related instruments must be deposited with the Secretary General of the United Nations.

CONCLUSION

Author: B. Sanjit Ram – Student Of Vit School Of Law, Chennai, in case of any queries please contact/write back to us via email to chhavi@khuranaandkhurana.com or at Khurana & Khurana, Advocates and IP Attorney.

REFERENCES:

1. SUMMARIES OF CONVENTIONS, TREATIES AND AGREEMENTS ADMINISTERED BY WIPO – WORLD INTELLECTUL PROPERTY ORGANIZATION (WIPO) – 2013
2. WORLD INTELLECTUAL PROPERTY REPORT 2022 – THE DIRECTION OF INNOVATION – WORLD INTELLECTUAL PROPERTY ORGANIZATION (WIPO)
3. UNDERSTANDING INDUSTRIAL PROPERTY – WORLD INTELLECTUAL PROPERTY ORGANIZATION (WIPO)