5 Paris Convention

8/3/2019 5 Paris Convention

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Protection of industrial

property in the pastand today


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Paris convention for the

Protection of IndustrialProperty


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Revisions of the Paris Convention

20.03.1883

1900 Brussels

1911 Washington 1925 Hague

1934 London

1958 Lisbon 1967 Stockholm

28.09.1979


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Paris Convention

Patents

Utility models

Industrial design Trademarks

Service marks

Trade names Indication of source

Appelletion of origin


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General rule of ParisConvention:

National treatment of otherconvention members citizens in

the field of the protection of their

industrial property


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art.2

1. Nationals of any country of the Union shall, as regards

the protection of industrial property, enjoy in all the othercountries of the Union the advantages that their respectivelaws now grant, or may hereafter grant, to nationals; allwithout prejudice to the rights specially provided for by thisConvention.Consequently, they shall have the same protection as thelatter, and the same legal remedy against any infringementof their rights, provided that the conditions and formalitiesimposed upon nationals are complied with.

2. However, no requirement as to domicile orestablishment in the country where protection is claimedmay be imposed upon nationals of countries of the Unionfor the enjoyment of any industrial property rights.


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Rights under art.2

Gives same rights concerning protection of IPas the country they are visiting provides fortheir nationals

Will give same rights in the future Same legal protection

Same legal remedies

+ extra rights given by the Paris Convention No requirement as to the domicile may be

imposed for the enjoyment of any industrialprotection rights

To the countries of the Union


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Whom does Paris convention

protect

Nationals of the other states of the Union (art.2)

Nationals of the countries outside the Unionif:

Effective industrial establishement

Effective commecial establishement

is situated in the territory ot one of the

countries of the Union (art. 3)


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Winner takes it all

AlexanderGraham Bell invented the telephone in 1876. The first words hespoke on his telephone were, "Watson, come here. I need you." Watsonwas his assistant's name.

That happened in 1875-76. However Antonio Meucci had a workingtelephone since 1848 in Havana and a perfected model by 1871. On

that year Meucci filed for and obtained a patent for the telephone.Meucci could not afford the $250 needed for a definitive patent for his"talking telegraph" so in 1871 filed a one-year renewable notice of animpending patent. Three years later he could not even afford the $10 torenew it.

He sent a model and technical details to the Western Union telegraphcompany but failed to win a meeting with executives. When he asked

for his materials to be returned, in 1874, he was told they had been lost.Two years later Bell, who shared a laboratory with Meucci, filed apatent for a telephone, became a celebrity and made a lucrative dealwith Western Union.

Meucci sued and was nearing victory - the supreme court agreed to hearthe case and fraud charges were initiated against Bell - when theFlorentine died in 1889. The legal action died with him.


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Right of precedence

Art. 4

Everyone who correctly filed an application for

patent (or his succesor) in one state will havea right of precedence in other states of theunion before anyone other wanting toapplicate for the patent.


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What kind of filling gives rise

to the right of priority?

Any filling (done accordingly to the rule of

law) equivalent to regular national filling or

filling equivalent to filling under international

treaties concluded between the countries of

the Union.

Equivalent to regular national filling

Regular national filling (giving date) Equivalent to international treaties

Regular international treaties filling (giving date)


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How long is priority rule

effective?

12 months patents and utility models

6 months industrial designs, trade marks

The term start from the date of filling theapplication.


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Idependence of obtained

patents

Patents obtained in different countries of theUnion are independent from each other.

Error Lack of payment

Expiration

Effects only in one country not in all.


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Industrial property rights fees

Depending on national legislation

Not less than 6 months extra time for

payment


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Compulsory License

Forfeiture of patent

Compulsory license

This method can not be used forfaiture of

the rights from the industrial designs


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Actions not infringementing

the rights of patentee

Use on board of vessels of other countries ofdevices subject to patent in the body,

machinery, tackle, gear or other accesories ifsuch vessel temporary enters the waters ofthe countries of the Union

Use of devieces subject to patent on

airplanes or land vehicles if those vehiclestemporarly or incidentally enter the countriesof the Union


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Well known marks (art. 6 bis)

Well known marks are being protected exofficio (it domestic law allows it) or on requestof interested party in all countries of theUnion

Protection:

Cancellation

Refusal


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Imitations of well known marks

Reproduction

Imitation

TranslationLiable to create confusion with the mark

considered by the authority to be a well

known mark.


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Time for cancellation the

imitations of well known marks

5 years from the date of registration

No time limits if the mark was registered or

used in bad faith.


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Registration of trademarks

Conditions for filling the registration aredepending from the countries internallegislation

Registration can not be refused on theground that filling registration (or renewal)has not been effected in the country of origin


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Assignement of mark

If the law of member state states that atrademark may be assigned only if it takesplace in the same time and with the transferof business to which the mark belongs it shellbe enough for the validity of suchaddignement that the portion of business

located in that country be transfered to thenew owner of the trademark.


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Protection of trademark allready

registered in one country in other

countries

Every mark accepted for registration incountry of origin should be accepted for

registration in the other

Exceptions:

Infringes rights acquired by third parties

Are indistinctive in its character Are contrary to morality or public order


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Service marks, Trade names

A trade name, also known as a trading name or abusiness name, is the name which a businesstrades under for commercial purposes, although itsregistered, legal name, used for contracts and other

formal situations, may be another. Pharmaceuticalsalso have trade names (e.g. "Aspirin"), oftendissimilar to their chemical names ("acetylsalicylicacid").

A service mark differs from a trademark in that the

mark is used on the advertising of the service ratherthan on the packaging or delivery of the service,since there is generally no "package" to place themark on, which is the practice for trademarks.Transportation carriers would paint their service

marks on their vehicles, such as on planes or buses


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Service marks, trade names

Are being protected by the convention

There is no need of registration of such

marks


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Goods unlawfully Bearing a

Mark orTrade Name

Seizure on importation

Prohibition of importation

Civil remedies and actions


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International invention

competitions orexhibitions

5 Paris Convention

Documents

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