Berne Convention
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This article is co-authored by Shubhangi Sharma, from Lloyd Law College, and Toshi Tiwari, from Indore Institute of Law. The article discusses international conventions related to intellectual property rights.

Introduction

Intellectual property has a dual nature, i.e. it has both national and international dimensions. For example, patents are governed by national laws and related country regulations, while international conventions on patents protect minimum rights and provide some measures for enforcement of rights by contracted states. Strong protection for intellectual property rights (IPR) worldwide is really important for the future economic growth and development of all countries. Because they include common rules and regulations, international IPR treaties, in turn, are essential to achieving strong intellectual property protection that promotes global economic expansion and the growth of new technologies. 

Role of UNO in development of IPR

The majority countries who are the members of UNO take different approaches for the protection and development of Intellectual Property Rights with the aim of encouraging innovations and creativity which are considered to be an important source of long- run economic growth. 

UNO plays a very important role in the development and protection of IPR with the help of the World Intellectual Property Organization (WIPO) which is one of the most significant and important organizations among the 16 organizations working under UNO in different sectors. WIPO aims to promote and protect IPR worldwide and to insure, utility model, mark or industrial design.  

Common rules: The Convention lays down a few common rules that all Contracting States must follow. The most important are: 

  1. 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. 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. 
  2. 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. 
  3. 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. 
  4. Trade Names: Protection must be granted to trade names in each Contracting State without there being an obligation to file or register the names. 
  5. 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. 
  6. Unfair competition: Each Contracting State must provide for effective protection against unfair competition.

Paris Convention for the protection of Industrial Property 

When there was no existence of any international convention in the field of industrial property, it was difficult to obtain protection for inventions in different countries of the world due to the diversity of laws. In addition, patent applications were filed at the same time in all countries to prevent a publication in one country destroying the novelty of the invention in other countries. These practical problems constituted a strong objective to overcome such problems in the case of IPR. In the late nineteenth century, the development of a more international-oriented flow of technology and increased international trade increased the need for harmonization of industrial property laws in both the patent and trademark sectors. The Paris Convention is also administered by WIPO. It came into existence to provide some international harmony in intellectual property laws and was adopted on March 20, 1883, at Paris and enforced on July 7, 1884. It provides basic guidelines for the protection of intellectual property such as patents, utility models, industrial designs, trademarks, service marks, trade names, sources of information or signs of appeal, and some provisions for harassment and national treatment of unfair competition. This treaty came into existence in India on December 7, 1998. Under the convention, in the anti-discrimination principle, a member country is empowered to grant nationals of other member countries the equal protection and advantages as it grants to its own nationals. This anti-discrimination policy of the convention is also a fundamental principle of many other intellectual property agreements and treaties. 

National Treatment: National treatment can be defined with regards to the protection of industrial property as each country who is a member of the Paris Convention must grant equal protection of their invention to nationals of the other member countries as it grants to its own nationals. The relevant provisions are included in Articles 2 and 3 of the Convention. Equal national treatment should be given to citizens of countries that are not members of the Paris Agreement if they are domiciled in a member country or if they have “legitimate and efficient” industrial or commercial establishments in the country concerned. However, there is no requirement to be the domicile of the country where protection is claimed may be imposed upon nationals of member countries as a condition for benefiting from an industrial property right. The doctrine of national treatment not only guarantees that the foreigners will be protected, but also that they will not be discriminated on any basis. Example: A Russian national applying for a patent in China will have the same patent rights and level of protection in China as a Chinese national. 

A framework of Priority: Another fundamental principle of the Paris Convention is a ‘framework of priority’. Under the Paris Convention, an invention can be protected at the same time in various countries. This also means of access to national patent systems to foreign applicants. An inventor has the authority to claim the filing date of his first patent application in respective convention country as an effective filing date for further subsequent applications (regarding the same invention) in any other member country. Further, the applications must be filed within 12 months of the earliest application in a matter to claim the priority date. 

Example: A USA patent application is lodged on 10 March 2000. On 10 March 2001, the same patent application is filed in China. China is a convention member and as a result, the Chinese application is treated as though it was filed on 10 March 2000. If without the treaty, the patent in the example was treated as though it was filed on 10 March 2002 in China, the invention would likely already have been disclosed and thus un-patentable in China. 

The meaning of the right of priority means that in the foreign country, the application of patent will be filed from the earliest date of filing in the home country for purposes of the prior art. This is profitable for an inventor , as it allows the inventor to prevent detrimental effects of public disclosure of his invention that occurred after the earliest application and before filing in foreign countries. 

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Berne Convention (Protection of Literary and Artistic Works)

Copyright protection on the international level took its first step in the middle of the nineteenth century on the basis of bilateral treaties. India became a signatory of the Berne Convention on April 1, 1928. A number of such treaties providing for mutual recognition of rights were concluded but they were neither comprehensive enough nor of a uniform pattern. The need for a uniform system led to the formation of the Berne Convention for the preservation of Literary and Artistic Works. The Berne Convention is the primeval international treaty in the field of copyright. It is open to all states. Adopted on September 9, 1886, at Berne and entered into force on December 4, 1887. Originally signed in 1886 at Berne, Switzerland, it was revised in 1914, 1928, 1948, 1967, 1971, and 1979. This Convention is based on three fundamental principles:

  1. Works in one of the contracting states (works of which the author is a national of such state or a work already published in such a state) should be given equal protection to each of the other contracting or non contracting states(the principle of “national treatment”).
  2. Protection should not be conditional upon compliance with any formalities (the principle of “automatic” protection).
  3. Protection must be independent of the existence of protection in the origin country of the work (principle of “independence” of protection). If a contracting State provides protection for a longer term than the minimum term prescribed by the Convention and the work ceases to be protected in the country of origin, protection may be denied once if protection in the country of origin ceases.

The minimum standards of protection relate to the works and rights to be protected, and to the duration of protection:

  1. As to works, protection must include “every production in the literary, scientific and artistic domain, whatever the mode or form of its expression” (Article 2(1) of the Convention).
  2. Subject to certain allowed reservations, limitations or exceptions, the following are among the rights that must be recognized as exclusive rights of authorization: 
  • the right to translate, 
  • the right to make adaptations and arrangements of the work, 
  • the right to perform in public dramatic, dramatico-musical and musical works,
  • the right to recite literary works in public,
  • the right to communicate to the public the performance of such works,
  •  the right to broadcast,
  • the right to make reproductions in any manner or form, 
  • the right to use the work as a basis for an audiovisual work, and
  • the right to reproduce, distribute, perform in public or communicate to the public that audiovisual work.

The Universal Copyright Convention (UCC) 

The Universal Copyright Convention (UCC), was first created in 1952 in Geneva, as an alternative to the Berne Convention. Some countries were not in favour of certain articles in the Berne Convention and did not agree to sign the terms of the Berne Convention. Particularly, the United States who was the only one at the time who provided protection on a fixed term registration basis via the Library Of Congress, and required that copyright works must always show the © symbol. This stated that the US had to make several changes to its laws before it could follow the Berne Convention.

The US finally became an official member of the Berne Convention on the 1st of March 1989, and now one only requires registration for work first published in the US by US citizens. The UCC international protection was available to authors even in countries that would not become parties to the Berne Convention. The Berne convention countries also became members of the UCC to ensure that the work of citizens in Berne Convention countries must be protected in non-Berne Convention countries. To ensure that the existence of the UCC did not lead to a conflict with the Berne Convention, Article 17 of the UCC states that the convention does not affect the provisions of the Berne Convention and also stated that any country who withdraws from the Berne Convention after 1st January 1951 will not get protection under UCC in countries of the Berne Convention Union. 

World Intellectual Property Organisation 

The World Intellectual Property Organization (WIPO) is an international organization which grants worldwide protection to the rights of creators and owners of intellectual property. It was adopted on July 14, 1967, at Stockholm and enforced on April 26, 1970. WIPO came into establishment under this Convention with two main objectives: 

  • For the promotion of the protection of intellectual property worldwide and;
  • to safeguard administrative cooperation among the intellectual property Unions established by the treaties which are under WIPO administration. 

India became an official member of WIPO on May 1, 1975. WIPO’s origin dates back to 1884 when the Paris Convention entered into force with 14 member States, which set up an International Bureau to carry out administrative tasks, such as organizing meetings of the member States. Like the Paris Convention, the Berne Convention also set up an International Bureau to carry out the tasks of administration. In 1893, these two small bureaux came together and form an international organization known as the United International Bureaux for the Protection of Intellectual Property. Based in Berne, Switzerland, with a staff of seven, this small organization was the predecessor of the World Intellectual Property Organization of today – a dynamic entity with 185 member States, number of staff who are around 938, from 95 different countries around the world, and with a mission and a mandate that are constantly flourishing. This International Bureau emerged over time to be recognised in 1970 as WIPO. In 1974, WIPO became a specialized agency of the United Nations and in 1996, WIPO expanded its role into globalized trade by entering into a cooperation agreement with the World Trade Organization. WIPO administers 25 treaties (three of those jointly with other international organizations) and carries out a rich and varied program of work, through its member States and the secretariat, that seeks to: 

  • To integrate national laws and procedures related to intellectual property.
  • To provide an international registration service for the industrial property. 
  • To exchange information about intellectual property.
  • To provide legal and technical assistance to developing countries and others. 
  • To assist during the settlement of disputes related to intellectual properties among individuals. 
  • To keep a check on the use of information technology as an instrument for access and exploit valuable information about intellectual property. 

According to the Convention held at Stockholm on 14th July 1967 and Article 2(viii) of the convention following rights are included in Intellectual Property Rights:

  1. Literary, artistic and scientific works;
  2. Performances of performing artists, phonograms and broadcasts;
  3. Inventions in all fields of human behavior;
  4. Scientific discoveries;
  5. Industrial designs;
  6. Trademarks;
  7. Service marks;
  8. Commercial names and designations;
  9. Protection against unfair competition;
  10. All other rights resulting from Intellectual activity in industrial scientific, literary or artistic fields; etc. 

International treaties administered by world intellectual property organization

There are 24 international treaties which are administered by world intellectual property organization which are as follows:

  • Berne convention
  • Brussels convention
  • Budapest treaty
  • Film register treaty
  • Hague agreement
  • Libson agreement
  • Locarno agreement
  • Madrid agreement
  • Madrid agreement mark
  • Madrid protocol Nairobi treaty
  • Nairobi treaty
  • Nice agreement
  • Paris convention
  • Paris law convention
  • PCT
  • Phonograms convention
  • Rome convention
  • Singapore treaty on the law of trade mark
  • Strasbourg agreement
  • Trademark law treaty
  • Vienna agreement
  • Washington treaty
  • WCT
  • WPPT

The secretariat of world intellectual property is called the international bureau which is directed by the director general of the world intellectual property organization assisted by two or more deputy director generals.

There are three main organ of the world intellectual property organization:

  1. The general assembly
  2. The conference
  3. The coordination committee

The General Assembly

The general assembly of the world intellectual property organization consists of the state party to this convention the government of each member state is represented at the general assembly by one delegate, the government pays all the expenses of the delegate the assembly appoints the director general of the world intellectual property organization. The assembly appoints the director general of the world intellectual property organization nominated by a coordination committee. The general assembly adopted the biennial budget of expenses common to the union 

The Conference 

The general assembly of world intellectual property organizations consists of the state party to this convention. The government of each member state is represented at the conference by one delegate the government pays all the expenses of delegate the conference appoint director general of world intellectual property nominated by coordination committee.

The conference discusses the matter of general interest in the field of intellectual property and may adopt recommendations relating to such matters for the competence and autonomy of the union.

The Coordination Committee

The coordination committee of the world intellectual property organization consists of the state party to this convention which are members of the executive committee of the Paris union or the executive committee of the Berne union or both. 

The coordinate committee gives advice to the organs of the union, the general assembly and to the conference and the director general, on all administrative, financial and other matters of common interest. 

The coordination committee prepares the draft agenda of the general assembly. 

Director General of World Intellectual Property Organization

The World Intellectual Property organization is represented by its Director General assisted by two or more Deputy Director Generals. The Director General is the chief executive of the Organization. He is appointed by the General Assembly of WIPO upon the nomination of the coordinating assembly of WIPO. He is appointed for a fixed term not less than six years. AT PRESENT MR FRANCIS GURRY is the director general of WIPO, he was appointed on 13th of May 2008  

Membership  

At present WIPO has 184 countries as members. India being one of them to become the member of the world intellectual property organization, a state must deposit an instrument of ratification or accession with the director general of the world intellectual property organization at Geneva.

Trade-Related Aspects of Intellectual Property Rights (TRIPS) 

The Uruguay Round of multilateral trade negotiations held in the framework of the General Agreement on Tariffs and Trade (“GATT”) was concluded on December 15, 1993.The agreement which established the World Trade Organization (“WTO Agreement”), was enforced on April 15, 1994, in Marrakech. For the first time the negotiations included within the GATT, discussions on aspects of intellectual property rights of international trade. The result of those negotiations, given in an Annexure of WTO Agreement was the agreement on Trade-Related Aspects of Intellectual Property Rights (the “TRIPS Agreement”).

The WTO Agreement, including the TRIPS Agreement (which is binding on all WTO Members), enforced on January 1, 1995. A new organization was established by the former agreement known as the World Trade Organization, which came into force from January 1, 1995. Member States of WTO were granted a specific period of time after the enforcement of the agreement establishing the WTO before being obligated to apply the TRIPS Agreement. Trade-Related Aspects of Intellectual Property Rights (TRIPS) is the most global and essential international agreement on intellectual property rights. The member countries of the WTO are automatically binded by the agreement. The agreement consists of most of the forms of intellectual property like patents, copyright, trademarks, trade secrets, geographical indications, industrial designs, and exclusionary rights over new plant varieties. 

TRIPS proved to be one of the most important agreements to promote intellectual property at the international level. TRIPS mainly introduced the global minimum standard for the protection and enforcing of all forms of intellectual property but it failed to specify the global minimum standard for the patent. The main object of the trade related aspect of intellectual property is to promote effective and adequate protection of intellectual property rights and ensuring that measures and procedures to enforce intellectual property rights do not themselves become barriers to legitimate trade. 

Issues covered by the TRIPS

  • How basic principles of the trading system and other international intellectual property agreements should be applied. 
  • How to give adequate protection to intellectual property rights.
  • How countries should enforce those rights adequately in their own territories.
  • How to settle disputes on intellectual property between members.
  • Special transitional arrangements during the period when the new system is being introduced.

Features of the TRIPS 

There are three main feature of the TRIPS agreement which are as follow: 

  1. Standard 
  2. Enforcement 
  3. Dispute settlement 

Standard: The main element of trade related aspect of intellectual property is to protect the subject matter.

Enforcement: The second element is about domestic procedure and remedies provisional measure special related to border measure. 

Dispute settlement: The agreement makes dispute between world trade organization members arising with respect to the trade related aspect of intellectual property obligation subject to the world trade organization dispute settlement procedure. 

Obligations under TRIPS Agreement 

The TRIPS agreement outlines various important business-related aspects of intellectual property. In particular, this requires Member States to follow their own criteria for intellectual property monopoly grants for limited period along with adherence to the Paris Agreement, the Berne Convention and other WTO conventions. The norms are the minimum standards for granting monopolies over any kind of IP, as well as duration limits, enforcement provisions, and methods of IP dispute settlement. When the TRIPS agreement was enforced on 1 January 1995, all developed countries were given twelve months from the date of signing the agreement to implement its provisions. Developing countries and transition economies (under certain conditions) were granted five years until 2000. As of 2006, least developed countries (LDCs) were given 11 years to comply. Some countries have indicated that the long term should be achieved. For pharmaceutical patents in these LDCs, the compliance period has been extended to 2016.

Currently, there are 30 LDCs within the WTO organization bound by TRIPS and another 10 LDCs are awaiting accession. The Most Favored-Nation Principle (MFN) – The TRIPS Agreement contains the most favored nation doctrine, which has not traditionally been provided in the context of intellectual property rights at the multilateral level. This doctrine provides that any advantage, favour, privilege or immunity granted to the citizens of any other country shall be immediately unconditional to all other members (whether or not a member) with a specified exemption. As is the case for national remedies, the procedures provided in the multilateral agreements discussed under the aegis of the WIPO relating to the acquisition or maintenance of intellectual property rights are exempt from this principle.

Conclusion

The purpose of these agreements was not only to provide a minimum standard for the protection of IPR, but also to provide for its purpose. These agreements provide a minimum standard for the enforcement of IPR that allows right holders to protect their legitimate interests through civil court or administrative proceedings. Part III of the Agreement on the Enforcement of IPR sets out the obligations of Member States to establish administrative and judicial mechanisms through which IPR holders can seek effective protection of their interests. The general obligation of member states to provide enforcement mechanisms requires that the enforcement process be available under their national law to allow effective action against any act of violation of the IPR covered by these agreements, including immediate measures to prevent violations and remedies are included. Member nations are obligated to safeguard that enforcement procedures are “fair and equitable”, and “not unnecessarily complex or costly, or prevent unreasonable deadlines or unreasonable delays.”


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