THE PARIS CONVENTION FOR THE PROTECTION OF INDUSTRIAL PROPERTY. A Commentary SAM RICKETSOIS> OXFORD UNIVERSITY PRESS

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1 THE PARIS CONVENTION FOR THE PROTECTION OF INDUSTRIAL PROPERTY A Commentary SAM RICKETSOIS> OXFORD UNIVERSITY PRESS

2 DETAILED CONTENTS Table ofcases Table of Legislation Table ofabbreviations Used in this Work Introduction Acknowledgements xvi xix xliv xlix Ixi PART I ORIGINS OF THE PARIS CONVENTION 1 Beginnings Protection of Industrial Property Rights at the National Level Introduction 1.01 Of Exhibitions and International Unions 1.02 Why Have Industrial Property Rights? 1.04 Patents for invention 1.05 Trade marks and trade names 1.10 Unfair competition 1.12 National Laws Prior to the Paris Convention 1.16 Patents 1.17 Designs and models 1.18 Trade marks and trade names 1.20 Other rights Moves Towards International Protection Introduction 2.01 Bilateral Treaties and Agreements 2.02 Moves Towards a Multilateral Agreement 2.10 Provisional protection at international exhibitions 2.10 Getting serious the Vienna Patent Congress Further meetings: the Paris Congress Concluding Comments Establishment of the Paris Union Introduction 3.01 Preparing the Way 3.02 The First Diplomatie Conference 3.06 The Second Diplomatie Conference vii

3 PART II DEVELOPMENT AND GROWTH OF THE PARIS SYSTEM 4 The Paris Union: A Work in Progress Introduction The First Revision Conference: Rome The Second Revision Conference: Madrid The Third Revision Conference: Brüssels 1897 and The Fourth Revision Conference: Washington The Fifth Conference of Revision: The Hague The Sixth Revision Conference: London The Seventh Revision Conference: Lisbon The Eighth Revision Conference: Stockholm The Situation Post-Stockholm: 'forty years on, growing older and older...' Introduction 5.01 Revising Paris Itself 5.02 The Other Side of the Coin Successes (and Some Other Failures...) in the Pre-TRIPS Period 5.12 The Patent Cooperation Treaty, Washington 1970 (PCT) 5.13 The Budapest Treaty on International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedura 1977 ('the Budapest Treaty') 5.14 The Madrid Protocol, Madrid The Integrated Circuits Treaty 1989 ('the Washington Treaty') 5.16 The Classification treaties 5.17 Other treaty-making activities linked to Paris and the impact of the Development Agenda 5.18 Paris Convention Requirements as International Trade Standards 5.20 An Overview of the Paris Convention and its Associated Agreements 5.24 PART III THE PARIS CONVENTION AND ITS ASSOCIATED AGREEMENTS OVERARCHING ISSUES 6 Public International Law Questions: The Structure of the Paris Convention and the Interpretation and Application of its Provisions (and those of its Associated Agreements) Introduction and Overview 5 01 viii

4 The Structure of the Paris Convention and its Associated Agreements 6.02 A matter of terminology: what is a Convention'? 6.02 Structure of the Paris Convention 6.05 Interpretation of Treaty Provisions 6.09 Introductory remarks 6.09 Languages used 6.15 Rules of Interpretation outside Paris and its associated agreements: the Vienna Convention on the Law of Treaties (VCLT) The Paris Union System: Organization and Structure Introduction 7.01 The Concept of 'Union' 7.02 Characteristics of International Unions 7.03 "Ihe countries to which this Convention applies...' 7.14 '[A] Union for the protection of industrial property...' 7.17 Industrial property to be understood in the broadest sense...' 7.29 'Patents...' 7.31 Giving Structure to the Union: Organs and Finances 7.34 Earlyyears 7.35 Administration of the Paris Union Present Arrangements 7.37 Conferences of revision 7.37 The Assembly 7.43 Conference of representatives 7.49 The Executive Committee 7.50 The International Bureau 7.62 The Director General 7.68 Finances of the Union 7.71 Background 7.71 The present financial provisions 7.73 Special method of amendment for administrative provisions 7.84 The Special Unions and Other Associated Agreements 7.86 The other unions and their organs Membership and Territory of the Paris Union The Final Clauses of the Convention Introduction 8.01 Membership of the Paris Union 8.02 Admission requirements 8.02 Ratification and accession 8.03 Reservations 8.14 Denunciation of the Convention 8.17 Territory of the Union Application to Dependent Territories 8.19 ix

5 Changes in Union Membership 8-31 Increases and decreases in territory 8.32 The extinction and re-establishment of states 8.33 The creation of new states treaty succession 8.35 Other Special Agreements 8.54 Interruptions in Union Relations due to War 8.55 Enforcing the Rules of the Club: The Obligations of Union Members 8.59 Generally 8.59 The context in which problems of non-compliance arise the politics of complaint and compliance 8.63 Revision Conferences and the Assembly 8.64 Settlement of disputes by the International Court of Justice 8.65 The applicable rules of customary international law 8.67 Restricting members' rights within the Union refusal to invite certain states to meetings of Union organs 8.69 Enforcement through the WTO Organizing Principles Introduction 9.01 Persons and Entities Protected under the Convention 9.02 National Treatment 9.16 Present and prospective effects 9.17 The scope of treatment to be accorded 9.18 Limitations on national treatment situations where discrimination against foreigners is permissible 9.25 National treatment and equality of treatment 9.26 [R]ights Specially Provided' or Unionist Treatment 9.30 The system of priorities for registered rights under Article 4A-I 9.34 The principle of independence of protection 9.35 Patents 9.36 Utility models 9 37 Designs 93g Trade marks 9 39 Indications of source 9 4(j Trade names 9 41 Unfair competition 9.42 Enforcement 9 43 The incompleteness of'rights specially provided for' 9.44 Who may claim unionist treatment? 9.45 The Special Agreements 9 47 Madrid Agreement 9 4g Madrid Protocol 9 49 Hague Agreement 9 x

6 Lisbon Agreement 9.51 PCT 9.52 Budapest Treaty 9.53 The Classification treaties 9.54 PLT, TLT, and Singapore Treaty 9.55 Hie TRIPS Agreement 9.56 Nature and scope of obligations 9.57 Incorporation of substantive provisions of the Paris Convention 9 59 National treatment 9.60 Most favoured nation treatment 9.62 Multilateral Agreements on acquisition or maintenance of protection 9.63 Exhaustion of rights 9.64 Further Protections 9.65 PART IV SUBJECT MATTER PROTECTED 10 Patents and Utility Models Introduction The Paris Convention National treatment the point of departure The priority system the way into the systems of other Union countries Independence of protection Mention of the inventor (Article Ater) Restrictions of sale by law (Article Aquater) Failure to work, compulsory licences, and forfeiture (Article 5A) Time for payment of fees and restoration of rights (Article 5bis) Defences to infringement: patented devices on ships and aircraft (Article 5ter) Patentees' rights in relation to importation of products manufactured abroad by process patented in importing country (Article 5quater) Temporary protection at international exhibitions (Article 11) Utility models Beyond Paris: Procedural and Substantive Harmonization Procedura! Harmonization The PCT The Strasbourg Agreement Budapest Treaty Patent Law Treaty Substantive Harmonization The proposed Treaty Supplementing the Paris Convention as far as Patents are Concerned The Geneva Treaty on the International Recording of Scientific Discoveries The TRIPS Agreement xi

7 11 Industrial Designs Detailed Contents Introduction and Overview of this Chapter Designs Protection Legal and Policy Issues TTie Paris Convention As a subject of protection and national treatment Right of priority Grace period for payment of fees Obligation to protect (Article 5quinquies) Independence of protection Restriction on forfeiture and marking International exhibitions Protection under the Berne Convention Classifying Designs the Locarno Agreement An International Design The Hague Agreement Main features of The Hague system The Hague system in broader context TRIPS Agreement Obligation to protect Textiles Rights in protected designs Exceptions Term of protection Acquisition and maintenance of registered designs and related int er partes procedures General comments Moves to Harmonize Procedural Issues Relating to Designs Applications Trade Marks and Trade Names Introduction The Paris Convention Gaining protection in the first place national treatment and priority periods Independence and dependence of protection (Articles 6 and Gquinquies) Service marks (Article Gsexies) Well-known marks (Article 6bis) State emblems, armorial bearings, Hags, and the like (Article 6ter) Assignments of trade marks without accompanying goodwill (Article Gquater) Agents and representatives acting without authority (Article 6septies) Nature of the goods to which trade mark is to be applied Collective marks (Article 7bis) Use of trademarks (Article 5C) Protection of trade names xii

8 Seizure on importation and 'appropriate legal remedies' (Article 9) International exhibitions (Article 11) The 'Madrid System': Madrid Agreement for the International Registration oftrademarks Origins The scope for an international trade mark registration system Registration in contracting country as the starting point for seeking international registration How the international application is made What the international application Covers Extent of the international registration Effect of the international registration Refusal of protection by designated contracting countries Dependency of international registration Duration of international registration and renewals Provisions relating to the international register and national registers Pees Governance and administration of the Madrid system Revision of the Madrid system: the Trademark Registration Treaty 1973 and the Madrid Protocol The Trademark Registration Treaty The Madrid Protocol The significance of the Madrid system The Trademark Law Treaty The Singapore Treaty on the Law oftrademarks Classification Treaties Nice and Vienna Nairobi Treaty on the Protection of the Olympic Symbol Substantive Harmonization and the TRIPS Agreement Incorporation of Paris norms within TRIPS National treatment and MFN Protectable subject matter Substantive Harmonization Post-TRIPS 'Progressive Development' Within WIPO False Indications of Source, Unfair Competition, and Appellations of Origin Introduction False Indications of Source The Paris Convention Madrid Agreement for the Repression of False or Deceptive Indications ofsources on Goods Unfair Competition The concept of unfair competition xiii

9 Genesis of the Obligation in the Paris Convention The present obligations arising under Article 10bis Provision of appropriate legal remedies': Article 10ter Protection of undisclosed Information collateral amendment of Article 10 bis through the TRIPS Agreement? Appellations of Origin Under the Paris Convention The Lisbon Agreement Revision and extension of international protection for appellations under the WIPO agreements Moves to revise the Lisbon Agreement Concluding comments about protection of appellations under the Paris Convention and associated WIPO Agreements Geographica! indications under TRIPS National Industrial Property Services and Official Periodical Journals: Article 12 Introduction A 'Special Industrial Property Service' 'Common offices' Official Periodical Journal Modern technologies PART V THE WIDER CONTEXT 15 Hie Paris Convention and the Future Introduction Of Centenaries and Past Achievements A World Without Paris? Continued Relevance? Revision of the Paris Convention? Why revise? The object of revision codification with some progressive development Codification by way of incorporation of the substantive provisions of TRIPS into Paris Where would incorporation stop? How to proceed? Progressive Development Beyond Incorporation In general Private international law issues Intellectual property rights and human rights: issues of access Concluding Comments xiv

10 Appendices 795 Appendix 1 Third draft treaty preparedfor the First Paris Diplomatie Conference Appendix 2 The Jagerschmidt draftpresented to the Paris Conference 1880 (original text from Actes 1880, pp 26-27) 799 Appendix 3 List oftranslated words from WIPO ofßcial texts ofthe Paris Convention for the Protection ofindustrial Property 801 Appendix 4 The successive Acts of Paris Convention for the Protection of Industrial Property Appendix 4.1 Paris Act Appendix 4.2 Additional Act of Brüssels Appendix 4.3 Act of Washington, Appendix 4.4 Act of The Hague, Appendix 4.5 Act of London, Appendix 4.6 ActofLisbon, Appendix 4.7 Attachment 7 Stockholm Act Appendix 5 Declaration on the Objectives ofthe Revision of the Paris Convention 869 Appendix 6 Proposed revision of the Paris Convention 870 Select Bibliography 889 Index 899 xv

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