Right of Priority

 On the basis of the regular application in

one country, can apply for protection in
most other countries
 Period – 6 -12 months, depending on the
IPR
 Later applications will be treated as if they
had been filed on the same day as the
earliest application
 Practical advantage and a deadline
 Strictly adhere to it
 Patents –
 12 months (convention application)
 30/31 months (PCT Application)
• IDs – 6 months
• Trademarks – 6 months – only loose
priority, not the right
PCT, Madrid, Hague

International Business: Strategy, Management, and the New Realities 3

 BACKGROUND
⇨ Intellectual property rights (trade marks, patents and
designs) are territorial in nature i.e. one has to go to
each and every country for registration/protection.
⇨ The Paris Convention regulate how territorial registration
should be conducted.
⇨ There are four other treaties which deals with the
international registration/deposit of intellectual property
rights (IP), namely:
o Patent Co-operation Treaty (PCT) for
“international” registration of patents.
o Hague Agreement 1960; Geneva Act 1999 for
international deposit of designs (Hague
System).
o Madrid Agreement 1891; Madrid Protocol 1989
for “international” registration of trade marks
(Madrid System).
o Budapest Treaty – for international deposit of
microbes/micro-organisms.

⇨ India is a member of the Patent Co-operation

Treaty, Budapest Treaty and the Paris
Convention.
 Madrid System
 The WIPO-administered Madrid System for the
International Registration of Marks offers a
worldwide oriented route to trademark
protection in multiple countries by filing a single
application.
 The system is governed by two treaties:
 The Madrid Agreement Concerning the
International Registration of Marks (1891) and
 the Protocol Relating to the Madrid
Agreement (operational since 1996)
 Facilitates the international registration
and administration of Marks in up to 84
Contracting Parties:
 through a single administrative procedure
 in a single language and currency
 by centralizing the filing of applications
 through central management of
registrations
 The Registration Procedure 

 A basic registration and/or application is

needed
 The international application is presented to
WIPO by the Office of Origin
 Formalities carried out by WIPO
 Role of Designated Contracting Parties
 Centralized management by WIPO
 Examination by the DCP 
 The Office of a designated CP examines the
registration in exactly the same way as a national
application
 Provisional refusal to be expressed within 12/18+
months
 Provisional refusal recorded in the WIPO Gazette
and transmitted to the holder
 If no provisional refusal/withdrawal is expressed, the
designated CP issues a grant of protection
 
 
 The Hague Agreement
 The Hague Agreement is an international
registration system for designs
 It offers the possibility of obtaining protection
for industrial designs in a number of States
and/or intergovernmental organizations (both
referred to as “Contracting Parties”) by means of
a single international application filed with the
International Bureau of the World Intellectual
Property Organization (WIPO).
 The Hague Agreement
 The Hague Agreement is constituted by
three international treaties:
 The London Act of June 2, 1934 (the
“1934 Act”);
 The Hague Act of November 28, 1960 (the
“1960 Act”);
 The Geneva Act of July 2, 1999 (the “1999
Act”).
 The Hague Agreement
 The international registration service for
industrial designs
 With a single request, you can register your
designs using a simple procedure
 With a single form you can register up to 100
industrial designs, in over 75 countries, including
the 27 European member states and the 16
member countries of the African Intellectual
Property Organization.
 The fact that the system uses a common
currency (Swiss Francs) and language (English
or French) simplifies the registration process.
 HOW DOES THE HAGUE
SYSTEM WORK?
⇨Facilitate the establishment and maintenance
of design protection through a single
international deposits of member states.
⇨The Geneva Act seeks to make the system
more responsive to the needs of users.
⇨Provides for the participation of regional
systems, e.g. European Patent Office (EPO),
African Regional Industrial Property Office
(ARIPO), etc.
 WHICH PROBLEMS ARE ADDRESSED BY
THE RATIFICATION OF THE TWO
SYSTEMS?
⇨ Cost effective and quicker registration in
designated countries. No longer necessary to
go from one country to another.
⇨ Increased activities on IP in Registries and the
country.
⇨ Market access in other jurisdictions
⇨ Protection of investors and IP holders and
building confidence.
⇨ Foreign direct investment into the country.
 Various other treaties
IP Protection
Classification
 Berne Convention
 Brussels Convention
 Locarno Agreement
 Film Register Treaty
 Nice Agreement
 Madrid Agreement (Indications o
f Source)  Strasbourg Agreement
 Vienna Agreement
 Nairobi Treaty
 Paris Convention
 Patent Law Treaty
 Phonograms Convention
 Rome Convention
 Singapore Treaty on the Law of
Trademarks

 Trademark Law Treaty

 Washington Treaty
15
 WCT