WIPO NATIONAL SEMINAR ON OMANI

TRADITIONAL VALUES IN A
GLOBALIZED WORLD
Muscat, February 13 and 14, 2005

International Legal Framework

for the Protection of Industrial
Property

WIPO Secretariat
 Industrial Property

1. International legal framework

2. Main “substantive” treaties in the field
of industrial property
 Industrial Property

1. International legal framework

 Industrial Property

a. Substantive standards (concerning the

acquisition, use and loss of rights)
b. Adjective standards (concerning the
enforcement of rights)
c. International registration and other
procedural matters (enhancing access
to internationally substantive
protection)
 Industrial Property

a. Substantive standards (concerning the

acquisition, use and loss of rights)
(i) Paris Convention for the Protection of Industrial
Property (1883) (the original purpose of the Paris Convention was
simply articulating national regimes of protection regardless of their level of
protection; later some minimum standards on patents and trademarks were
incorporated as well minimum obligations on trade names, industrial designs,
geographical indications and unfair competition)
(ii) Madrid Agreement for the Repression of False or
Deceptive Indications of Source on Goods (1891)
(later partly incorporated into the Paris Convention)
(iii) Lisbon Agreement for the Protection and
Registration of Appellations of Origin and their
International Registration (1958) (including standards and
procedural aspects)
 Industrial Property

a. Substantive standards (cont.)

(iv) Nairobi Treaty on the Protection of the Olympic
Symbol (1981)
(v) Washington Treaty on Intellectual Property in
Respect of Integrated Circuits (1989) (never entered into
force but was later partly incorporated into the TRIPS Agreement; N.B. The
Treaty does not deal with integrated circuits as such, but with their layout-
designs (known as “topographies”)

(vi) Agreement on Trade-Related Aspects of Intellectual

Property Rights (TRIPS Agreement) (1994)
 Industrial Property

b. Adjective standards (concerning the

enforcement of rights)
(i) Paris Convention for the Protection of Industrial
Property (1883)
(ii) Madrid Agreement for the Repression of False or
Deceptive Indications of Source on Goods (1891)
(iii) Agreement on Trade-Related Aspects of Intellectual
Property Rights (TRIPS Agreement) (1994)
International Protection Standards in the Field of Industrial Property

c. International registration and other procedural

matters (enhancing access to national and/or
international substantive protection)
(i) Madrid Agreement Concerning the International
registration of Trademarks (1891) and Protocol Relating
to the Madrid Agreement (1989)
(ii) Hague Agreement Concerning the International Deposit of
Industrial Designs (1925) and Geneva Act (1999)
(iii) Trademark Law Treaty (1954)
(iv) Lisbon Agreement for the Protection and Registration of
Appellations of Origin and their International
Registration (1958)
 Industrial Property

c. International registration and other procedural

matters (cont.)
(v) Patent Cooperation Treaty (PCT) (1970)
(vi) Budapest Treaty on the International Recognition of the
Deposit of Microorganisms for the Purposes of Patent
Procedure (1977)
(vii) Patent Law Treaty (2000)
(viii) Classification Treaties: Locarno Agreement Establishing an
International Classification for Industrial Designs (1968); Nice
Agreement Concerning the International Classification of
Goods and Services for the Purposes of the Registration on
Trademarks (1957); Strasbourg Agreement Concerning the
International Patent Classification (1971); Vienna Agreement
Establishing and International Classification of the Figurative
Elements of Marks (1973)
 Industrial Property

2. Main “substantive” treaties in the

field of industrial property
 Industrial Property

THE PARIS CONVENTION

1. Objectives
a) To articulate national systems with different
standards of protection in the fields of patents
and utility models
b) To establish the obligation to protect some
other types of industrial property assets but
without establishing minimum standards
(trademarks “as is”, industrial designs, trade
names, repression of unfair competition)
 Industrial Property

THE PARIS CONVENTION (cont.)

2. Principles
a) National treatment
b) Independence (as regards patents and trademarks)
c) Priority (as regards patents, utility models, industrial designs,
trademarks, inventors’ certificates)
d) Temporary protection (as regards patents, utility models,
industrial designs, trademarks)
3. Standards
(i) Patents – restrictions of sale; compulsory licenses; exceptions to
rights; importation
(ii) Industrial designs – obligation to protect
 Industrial Property

THE PARIS CONVENTION (cont.)

3. Standards (cont.)
(iii) Marks – conditions of registration; well-known
marks; state emblems; assignment; registration and
protection “telle quelle”; protection of service marks;
abuse by representatives; nature of goods; collective
marks
(iv) Trade names – obligation to protect without filing or
registration
(iv) Unfair competition – obligation to protect against
 Industrial Property

THE TRIPS AGREEMENT

1. Objectives
a) To reduce distortions and impediments to
trade
b) To protect private property rights
2. Principles
a) National treatment (of persons)
b) Most-favoured-nation treatment
c) Other GATT principles: national treatment
of goods, transparency, elimination of
quantitative restrictions
 Industrial Property

The TRIPS Agreement (cont.)

3. General provisions:
(i) On implementation;
(ii) On the incorporation of the Paris Convention: a
solution for eventual conflicts (Art. 2.1)
(iii) Exhaustion
(iv) Objectives of intellectual property protection and
enforcement
(v) Measures taken to protect matters of public
interest and competition
 Industrial Property

The TRIPS Agreement (cont.)

4. Substantive standards (some examples):
(i) Trademarks a) well-known trademarks; b) other
requirements
(ii) Geographical indications
a) two levels of protection: “normal” protection and
“additional” protection for g.i.’s for wines and spirits
b) (built-in agenda) multilateral system of notification
and registration and extended protection
c) exceptions
d) exception to the principle of independence of rights
 Industrial Property

The TRIPS Agreement (cont.)

4. Substantive standards (some examples)
(cont.):
(iii) Industrial designs
a) criteria for protection
b) special protection for textiles; term of protection
(iv) Patents
a) prohibition against discrimination
b) limitations on exclusions from patentability on
morality and ordre public grounds - the two-step necessity test
c) mandatory protection and exclusions; built-in agenda
under Article 27.3(b)
 Industrial Property

The TRIPS Agreement (cont.)

4. Substantive standards (some examples)
(iv) Patents (cont.):
d) exceptions to rights conferred
e) compulsory licenses
f) term of protection
g) reversal of the burden of proof
(v) Layout-designs (topographies) of integrated circuits
a) departure from the IPIC Treaty: innocent infringement
(Art. 37) and compulsory licenses
(vi) Undisclosed information
a) scope of protection – trade secrets
b) protection of test data: a sui generis regime
 Industrial Property

Thank you!

If you have any questions as regards this

presentation, please do not hesitate to contact

nuno.carvalho@wipo.int