Que 1:- Discus the aim and purpose of the Paris Convention for the Protection

Industrial Property,1883.

Ans 1:- The Paris Convention applies to industrial property in the widest sense, including
patents, trademarks, industrial designs, utility models (a kind of "small-scale patent" provided for
by the laws of some countries), service marks, trade names (designations under which an
industrial or commercial activity is carried out), geographical indications (indications of source
and appellations of origin) and the repression of unfair competition.

The substantive provisions of the Convention fall into three main categories: national treatment,
right of priority, common rules.

(1) Under the provisions on national treatment, the Convention provides that, as regards the
protection of industrial property, each Contracting State must grant the same protection to
nationals of other Contracting States that it grants to its own nationals. Nationals of non-
Contracting States are also entitled to national treatment under the Convention if they are
domiciled or have a real and effective industrial or commercial establishment in a Contracting
State.
(2) The Convention provides for the right of priority in the case of patents (and utility models
where they exist), marks and industrial designs. This right means that, on the basis of a regular
first application filed in one of the Contracting States, the applicant may, within a certain period
of time (12 months for patents and utility models; 6 months for industrial designs and marks),
apply for protection in any of the other Contracting States. These subsequent applications will be
regarded as if they had been filed on the same day as the first application. In other words, they
will have priority (hence the expression "right of priority") over applications filed by others
during the said period of time for the same invention, utility model, mark or industrial design.
Moreover, these subsequent applications, being based on the first application, will not be
affected by any event that takes place in the interval, such as the publication of an invention or
the sale of articles bearing a mark or incorporating an industrial design. One of the great practical
advantages of this provision is that applicants seeking protection in several countries are not
required to present all of their applications at the same time but have 6 or 12 months to decide in
which countries they wish to seek protection, and to organize with due care the steps necessary
for securing protection.
(3) The Convention lays down a few common rules that all Contracting States must follow. The
most important are:
(a) Patents. Patents granted in different Contracting States for the same invention
are independent of each other: the granting of a patent in one Contracting State does not oblige
other Contracting States to grant a patent; a patent cannot be refused, annulled or terminated in
any Contracting State on the ground that it has been refused or annulled or has terminated in any
other Contracting State.
 The inventor has the right to be named as such in the patent.
The grant of a patent may not be refused, and a patent may not be invalidated, on the ground that
the sale of the patented product, or of a product obtained by means of the patented process, is
subject to restrictions or limitations resulting from the domestic law.

Each Contracting State that takes legislative measures providing for the grant of compulsory
licenses to prevent the abuses which might result from the exclusive rights conferred by a patent
may do so only under certain conditions. A compulsory license (a license not granted by the
owner of the patent but by a public authority of the State concerned), based on failure to work or
insufficient working of the patented invention, may only be granted pursuant to a request filed
after three years from the grant of the patent or four years from the filing date of the patent
application, and it must be refused if the patentee gives legitimate reasons to justify this inaction.
Furthermore, forfeiture of a patent may not be provided for, except in cases where the grant of a
compulsory license would not have been sufficient to prevent the abuse. In the latter case,
proceedings for forfeiture of a patent may be instituted, but only after the expiration of two years
from the grant of the first compulsory license.
(b) Marks. The Paris Convention does not regulate the conditions for the filing and registration
of marks which are determined in each Contracting State by domestic law. Consequently, no
application for the registration of a mark filed by a national of a Contracting State may be
refused, nor may a registration be invalidated, on the ground that filing, registration or
renewal has not been effected in the country of origin. The registration of a mark obtained in one
Contracting State is independent of its possible registration in any other country, including the
country of origin; consequently, the lapse or annulment of the registration of a mark in one
Contracting State will not affect the validity of the registration in other Contracting States.
Where a mark has been duly registered in the country of origin, it must, on request, be accepted
for filing and protected in its original form in the other Contracting States. Nevertheless,
registration may be refused in well-defined cases, such as where the mark would infringe the
acquired rights of third parties; where it is devoid of distinctive character; where it is contrary to
morality or public order; or where it is of such a nature as to be liable to deceive the public.
If, in any Contracting State, the use of a registered mark is compulsory, the registration cannot be
canceled for non-use until after a reasonable period, and then only if the owner cannot justify this
inaction.

Each Contracting State must refuse registration and prohibit the use of marks that constitute a
reproduction, imitation or translation, liable to create confusion, of a mark used for identical and
similar goods and considered by the competent authority of that State to be well known in that
State and to already belong to a person entitled to the benefits of the Convention.
Each Contracting State must likewise refuse registration and prohibit the use of marks that
consist of or contain, without authorization, armorial bearings, State emblems and official signs
and hallmarks of Contracting States, provided they have been communicated through the
International Bureau of WIPO. The same provisions apply to armorial bearings, flags, other
emblems, abbreviations and names of certain intergovernmental organizations.
Collective marks must be granted protection.
(c) Industrial Designs. Industrial designs must be protected in each Contracting State, and
protection may not be forfeited on the ground that articles incorporating the design are not
manufactured in that State.
(d) Trade Names. Protection must be granted to trade names in each Contracting State without
there being an obligation to file or register the names.
(e) Indications of Source. Measures must be taken by each Contracting State against direct or
indirect use of a false indication of the source of goods or the identity of their producer,
manufacturer or trader.
(f) Unfair competition. Each Contracting State must provide for effective protection against
unfair competition.
The Paris Union, established by the Convention, has an Assembly and an Executive Committee.
Every State that is a member of the Union and has adhered to at least the administrative and final
provisions of the Stockholm Act (1967) is a member of the Assembly. The members of the
Executive Committee are elected from among the members of the Union, except for Switzerland,
which is a member ex officio. The establishment of the biennial program and budget of the
WIPO Secretariat – as far as the Paris Union is concerned – is the task of its Assembly.
The Paris Convention, concluded in 1883, was revised at Brussels in 1900, at Washington in
1911, at The Hague in 1925, at London in 1934, at Lisbon in 1958 and at Stockholm in 1967,
and was amended in 1979.

Que 2:- What do you understand by National Treatment under the Paris
Convention for the Protection of Industrial Property, 1883? Give the
examples also.

Ans 2:- The Paris Convention for the Protection of Industrial Property, signed in Paris, France,
on 20 March 1883, was one of the first intellectual property treaties. It established a Union for
the protection of industrial property. The Convention is currently still in force. The substantive
provisions of the Convention fall into three main categories: national treatment, priority right and
common rules.

National treatment

According to Articles 2 and 3 of this treaty, juristic and natural persons who are either national of
or domiciled in a state party to the Convention shall, as regards the protection of industrial
property, enjoy in all the other countries of the Union, the advantages that their respective laws
grant to nationals.

In other words, when an applicant files an application for a patent or a trademark in a foreign
country member of the Union, the application receives the same treatment as if it came from a
national of this foreign country. Furthermore, if the intellectual property right is granted (e.g. if
the applicant becomes owners of a patent or of a registered trademark), the owner benefits from
the same protection and the same legal remedy against any infringement as if the owner was a
national owner of this right.

Priority right

The "Convention priority right’, also called "Paris Convention priority right" or "Union priority
right", was also established by Article 4 of the Paris Convention, and is regarded as one of the
cornerstones of the Paris Convention It provides that an applicant from one contracting State
shall be able to use its first filing date (in one of the contracting States) as the effective filing date
in another contracting State, provided that the applicant, or his successor in title, files a
subsequent application within 6 months (for industrial designs and trademarks) or 12 months (for
patents and utility models) from the first filing.

Temporary protection for goods shown at some international exhibitions

Article 11(1) of the Paris Convention requires that the Countries of the Union "grant temporary
protection to patentable inventions, utility models, industrial designs, and trademarks, in respect
of goods exhibited at official or officially recognized international exhibitions held in the
territory of any of them".

If a patent or trademark registration is applied for during the temporary period of protection, the
priority date of the application may be counted "from the date of introduction of the goods into
the exhibition" rather than from the date of filing of the application, if the temporary protection
referred to in Article 11(1) has been implemented in such a manner in national law. There are,
however, other means for the Countries of the Union to implement in their national law the
temporary protection provided for in Article 11 of the Paris Convention:

It is also possible, for example, in the case of exhibited patentable inventions, to make provision
for temporary protection by other means, namely, by prescribing that, during a certain period,
such exhibition will not destroy the novelty of the invention and that the person who exhibits the
invention will also be protected against usurpation of his invention by third parties. Still another
possibility of protection consists in the recognition of a right of prior use in favor of the exhibitor
as against possible rights acquired by third parties.

Mutual independence of patents and trademarks in the different Countries of the Union
According to Articles 4bis and 6 (for patents and trademarks respectively), for foreigners, the
application for a patent or the registration of a trademark shall be determined by the member
state in accordance with their national law and not by the decision of the country of origin or any
other countries. Patent applications and trademark registrations are independent among
contracting countries.

After a diplomatic conference in Paris in 1880, the Convention was signed in 1883 by 11
countries: Belgium, Brazil, France, Guatemala, Italy, the Netherlands, Portugal, El Salvador,
Serbia, Spain and Switzerland. Guatemala, El Salvador and Serbia denounced and reapplied the
convention via accession.

The Treaty was revised at Brussels, Belgium, on 14 December 1900, at Washington, United
States, on 2 June 1911, at The Hague, Netherlands, on 6 November 1925, at London, on 2 June
1934, at Lisbon, Portugal, on 31 October 1958, and at Stockholm, Sweden, on 14 July 1967. It
was amended on 28 September 1979.

Que 3:- Elucidate the Prohibitions of marks concerning State Emblems,

Ans 3:-