Major International Instruments | Intellectual Property

By | February 4, 2020
Major International Instruments | Intellectual Property

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Major International Instruments | Overview

This article ‘Major International Instruments | Intellectual Property’ provides an insight into major international instruments relating to the protection of Intellectual Property such as the Berne Convention, Paris Convention and TRIPS.

I. Berne Convention for the Protection of Artistic and Literary Works

  • History

Global defence of copyright started on the basis of bilateral treaties at approximately mid-19th century. A number of these treaties were signed which provided for the mutual recognition of rights but they were neither adequately detailed nor uniform. The need for a standardized structure led to the Berne Convention on the Protection of Literary and Artistic Works being established and adopted on 9th September 1886.

The Bern Convention is the oldest copyright international treaty.  It’s open to all the nations in the world.  Accession or ratification instruments are deposited with the World Intellectual Property Organization’s Director General (WIPO). To order to improve the legal security system provided for by the Convention, the Berne Convention has been amended numerous times.  As described in its Preamble, the purpose of the Berne Convention is “to protect, in as effective and uniform a manner as possible, the rights of authors in their literary and artistic works”.

  • Basic Principles

Three fundamental principles underlie the Convention.

  1. The ‘national treatment’ principle is based on the fact that works from one of the Member States must be protected by the same level of protection as these grants to works of its nationals in each of the Member States.
  2. Automatic security, where the national care is not formal, is granted automatically and is not subject to registration formality, deposit formality or the like.
  3. There is protection independence under which the rights granted are independent from the protection that exists in the country of origin for the work and their use. 
  • Protection of Work

The list of such works, which comprise any original literary, scientific, and artistic production whatever its mode of expression, is unlimited, as set forth in Article 2 (illustrious and not exhaustive).  Derivative works based on other pre-existing works, like translations, adaptations and arrangements of music and other literary or artistic modifications, are protected in the same way as original artworks.

The Convention provides without mentioning the word ‘folklore’ that every Member State is entitled to protect any unpublished works where the identity of the author remains unknown, but where the author can be presumed by designation by the national legacy of the author to be a national of that country. The competent authority which, in the countries parties to the Convention, should serve and protect the author of unknown identity.

  • Owners/Authors

Authors of works shall be covered, whether unpublished or published if they are nationals or residents of a Member State according to the provisions of Article 3 and, if they are not nationals or residents of a Member State, they shall publish their works for the first time in a Member State or, at the same time, in a Member State or non-Member State.

Article 2(6) stipulates that the Convention’s defence shall operate on behalf of the author and his successors. However, copyright ownership is a matter of law in the country where protection is sought for some types of works such as cinematographic works or films.

Some minimum security requirements relevant to authors’ rights and term of protection have been approved.

The exclusive rights granted to authors under the Convention include the right to translate (Article 8), the right to reproduce in any manner or form, including any sound or visual recording (Article 9), the right to perform dramatic, dramatic, musical and musical works (Article 11), the right to broadcast and communicate to the public via wire, re-transmission, loudspeaker or any other means of communication, the right to make film adaptations and to reproduce a work (Article 14).  The so-called “droit de suite” laid down in Article 14 (related to original works of art and original manuscripts) is optional and only valid if allowed by law in the country to which the author belongs.

“Moral rights” include, but are not limited to, the right of the author to assert authorship of his work and to object to any alteration, mutilation or other modification of, or other adverse behaviours in relation to, his honour or reputation.

The minimum security requirements laid down in the Berne Convention often include the duration of protection. Article 7 sets a minimum cover period, which is the author’s life plus 50 years after his death.

  • Limitation

There are also other provisions in the Berne Convention which limit the strict application of the rules on exclusive rights as a kind of counterbalance to the minimum standards of security.  For particular cases, it allows for the possibility of using protected works without having to seek the copyright owner’s authorisation and without having to pay any remuneration for such use.  Such exceptions are often referred to as ‘the free use of protected works’.

II. The Paris Convention for the Protection of Industrial Property

  • History

During the last century, due to the diversity of their laws, it was difficult to obtain protection for industrial property rights in the various countries of the world before any international convention in the field of industrial property existed.  In fact, patent applications in all countries had to be made nearly concurrently to prevent a publication in one country losing the invention’s novelty in the other countries.  These practical problems have created a strong willingness to overcome these challenges.

In the second half of the last century, it was important to harmonize intellectual property laws in both the patent and the trademark field by creating a more internationally-oriented technical stream and growing international trade. An 1883 Diplomatic Conference was held in Paris and the Paris Convention for the protection or defence of Industrial Property finished with final approval and signature. Initially, 11 States signed the Paris Convention.  The Paris Convention increased its membership significantly only during the first quarter of the 20th century and particularly after World War II.

Since its signature in 1883, the Paris Convention was periodically revised. The amended conference began with the introduction of a revised Act of the Paris Convention, beginning with the Brussels Conference of 1900.

  • Basic Principles

The provisions of the Paris Convention can be subdivided into four main categories: firstly, the rules of substantive law which guarantee in each Member State a fundamental right known as the right to national treatment, secondly, a basic right is known as a right of priority; a 3rd category shall describe a number of common rules in the field of substantive law which shall include either rules establishing natural and legal persons’ rights and obligations or rules requiring the Member States to legislate or permit them to enact legislation pursuant to those rules; the fourth category encompasses the institutional structure for the application of the Convention and includes the Convention’s final clauses.

“National treatment” means that each country party to the Paris Convention must give nationals from the other Member States the same level of protection as it provides to its own nationals with regard to the protection of industrial property.  Articles 2 and 3 of the Convention provide for the relevant provisions. The law on national treatment not only ensures the rights of foreigners but also the absence of any discrimination towards them.

The “right of priority” means that the same applicant, or his successor in title, may seek protection in all other Member States within a specified period of time (six, or 12 months) in the light of an ordinary application for an industrial property right submitted by the individual applicant in one of the Member Countries.  These subsequent requests are then regarded as filed the same day that the previous request was filed. Consequently, all later applications in relation to the same invention submitted after the date of the first application receive priority status.

These also have priority status as to all the actions which have been committed after that date and which would usually void the applicant’s rights or his invention’s patentability. Article 4 of the Convention includes provisions on the right of priority.

The right of priority recognized by the Convention allows for the claims of “multiple priorities” and “partial priority.” Thus, the subsequent request may not only claim priorities from a previous application, but it can also combine priorities from several previous applications which each relate to various characteristics of the subject-matter of the subsequent request.

In addition, elements for which priority is asserted may be combined with elements for which no priority is stated in the subsequent application.  The later specification, in all these cases, must, of course, comply with the unity of invention criterion.

  • Independence of Patents

Inventions granted to nationals or residents of the Member States in the Member States shall be treated as independent from invention patents obtained in other countries, including non-member countries, in respect of the same invention.  Article 4bis lays down the rule relating to the “independence” of invention patents. The grant of a patent for invention for a given invention does not impose a compulsory patent for the same invention on any other Member State.

Article 4bis(5) contains a special feature of the principle of patent independence for invention.  The provisions require that, if no priorities had been claimed, a patent granted in respect of an application claiming the priority of one or more foreign applications should be given the same duration as would have been granted under national law.  In other words, the priority period shall not be deducted from the duration of a patent invoking the first application’s priority.

This rule would, for example, be violated by a provision in the national legislation which starts with the invention patent from (foreign) the priority date and not with the filing date of the application in the country.

The inventor must have the right to be mentioned in the patent for invention as such, according to a general rule. Article 4 stipulates this.

  • Use of Trademarks

The requirement of the use of registered trademarks is governed in Article 5C(1).  Some of the countries providing for the trademark registration also require trademarks to be used within a certain time limit once registered.  The mark can be expunged from the register if this use is not complied with. “Use” generally means the sale of marked goods even if national laws may regulate more widespread how the mark is to be used. “use” means the sale of marked goods.

The Article states that where the use of the trademark is required, the registration of the mark may be terminated only after a reasonable period has elapsed for failure to use the trademark and only if such failure is justified by the proprietor.

In Article 6bis the Convention covers “well-known trademarks”.  This Article obliges a Member State to reject or cancel the registration by prohibiting the use of a mark that may create confusion with another already well-known mark in that Member State. The provisions of this Article  The aim of the article is to extend protection to a trademark which, although not registered in or used in a Member State, is well known in that Member State.

  • Industrial Designs

Article 5 of the Paris Convention covers industrial designs.  This provision simply stipulates the obligation to protect industrial designs by all Member States.

There is no mention of how that protection should be offered. Consequently, by enacting special legislation on the protection of industrial designs the Member States may comply with this obligation.  However, by granting such protection in accordance with copyright or unfair competition legislation, they can also fulfil this obligation.

  • Becoming Party to this Convention

The Paris Convention shall be accessed through the deposit with the Director-General of WIPO of an instrument of accession, as provided for in Article 21.  Three months after accession, the Convention comes into force in respect of a country that has so adhered to the Convention, notified to all the Governments of the Member States by the Director-General of WIPO.  Consequently, accession only requires unilateral action by the country concerned and requires no decision by the competent authorities of the Union.

III. TRIPS (AGREEMENT ON THE TRADE-RELATED ASPECTS OF INTELLECTUAL PROPERTY RIGHTS)

  • History

On 15 December 1993, the Uruguay Round of multilateral trade negotiations under the general tariff and commercial agreement(‘GATT’) came to an end. On 15th  April 1994, the Agreement establishing the World Trade Organization (the “WTO Agreement”) was adopted in Marrakesh, which embodied the outcome of those negotiations. For the first time within the GATT these negotiations included discussions of international trade-related aspects of intellectual property rights.

The outcome of these negotiations was the Agreement on the  Trade-Related Aspects of Intellectual Property Rights (“TRIPS Agreement”) contained in the Annex to the WTO Agreement. On 1st  January 1995, the WTO agreement, including the TRIPS agreement (which shall be binding on all WTO members). A new organization, the World Trade Organization, was established in the previous agreement and starts its activities on 1st  January 1995.

  • Basic Principles

The basic principle with regard to the nature and scope of TRIPS obligations is that the members should apply the provisions of the Agreement and grant the nationals of other members the treatment provided for in the agreement.  A’ national’ means natural or legal persons eligible for protection where all the World Trade Organisation’s members were also bound by the Paris, Berne and Rome conventions and, in relation to the Integrated Circuits, by the Washington Treaty on Intellectual Property.

The TRIPS Agreement stipulates that the term “intellectual property” refers for the purposes of the Agreement to all the categories of intellectual properties covered by Sections 1 to 7 of Part II of the TRIPS Convention, namely copyright and associated rights, registration marks, geological indications, industrial designs, patents, integrated circuit designs and non-revealed designs.

National Treatment In accordance with the provisions of the Paris, Berne, Rome Convention and the IPIC Treaty, TRIPS sets out the principle of national treatment requiring the Member to grant treatment for the nationals of other Members, the latter defined, the rights of the Member States as provided for in the Agreement.  Under the TRIPS Agreement, exceptions provided for in the relevant conventions shall be respected.

This principle applies to all rights as regards industrial property and copyright.  As far as rights are concerned, the obligations only apply in respect of those rights provided under the Convention in the case of actors, phonogram producers and broadcasting organisations.

MFN – The TRIPS Agreement includes the principle of the most favoured nation that has not traditionally been established in the context of multilateral intellectual property rights.  This principle stipulates that the nationality of all other Members, with certain specified exceptions, shall be granted immediately and unconditionally, to any advantage, privilege, or immunity granted by the Member to the nationals of any other country (whether or not a Member).

As is the case with national processing, the procedure for acquisitions or maintenance of intellectual property rights provided for in multilateral agreements concluded under the auspices of the WIPO is excluded from this principle.

Protection of Existing Subject Matter– The TRIPS Agreement contains specific provisions concerning the effect in the Member, on the day that the Agreement was applied, of the agreement on the subject of intellectual property rights.

While the Agreement does not give rise for the Member in question to obligations with respect to acts occurring before the date of application of the Agreement (Article 70.1), the Agreement gives rise, in relation to all subject matter, to obligations existing and protected on the day the Agreement is applied or which then or then meet the criteria for protection.

Part II of the TRIPS Agreement sets out minimum standards for the availability, scope and use of rights of intellectual property.  This Part includes eight sections concerning copyright, trademarks, geographical indications, industrial designs, patents, integrated circuit layout designs, protection of non-disclosed information and control of anti-competitive practices in contractual licenses, respectively.

  • Section 1- Copyright and related rights;
  • Section 2-  Trademark;
  • Section 3- Geographical Indications;
  • Section 4- Industrial Designs;
  • Section 5-  Patents;
  • Section 6- Topographies or layouts of Integrated Circuits

General Obligations for the Enforcement of IPR

The TRIPS Agreement requires the proceedings specified for the enforcement of intellectual property rights to allow effective action against any violation of intellectual property rights covered by the Agreement, including rapid remedies for preventing infringements and remedies for further infringements.

The procedures should be applied in such a way that legitimate trade barriers are avoided and safeguard against their abuse. Enforcement procedures should be fair and just, not complicated or expensive unnecessarily, nor unjustified time limits or delays.


Reference:

  1. WIPO Intellectual Property Handbook

  1. 5 Leading Cases of Intellectual Property Rights(Opens in a new browser tab)
  2. Basic Concept of Intellectual Property (IPR)