INTERNATIONAL TREATIES ON TRADEMARKS

Paris Convention for the Protection of International Property

The Paris Convention for the Protection of International Property created the first agreement on
international trademark law. It did so as part of a larger attempt at creating common standards
for intellectual property rights to enable the observance of rights to be observed across national
boundaries. The Paris Convention initially held eleven nations to its agreement. There are
currently 173 nations signatory to the Convention, which has been altered several times from its
original provisions.
The Paris Convention was held in 1880 and signed three years later. It took place as a result of
lobbying from people engaged in developing and implementing new forms of technology. Due
to the professional disciplines of the Convention's supporters, it was oriented toward industrial
areas of protection, such as international trademark law, rather than strictly defined intellectual
property rights. After being signed on March 20, 1883, the Convention's treaty went into effect
on March 7, 1884. The signatory members were from Europe and Latin America, comprising the
Netherlands, France, Switzerland, Serbia, Belgium, Spain, Portugal, Italy, Guatemala, Brazil,
and El Salvador.
The Paris Convention provisions relevant for international trademark law include Articles 2, 4,
6, 8, and 10. Article 2 and 3 specify who may receive protection under international trademark
law. #2 protects citizens of signatory Paris Convention members in other such states, and #3
extends protection to non-citizens who are resident or commercially invested in signatory
nations. Article 4 grants a "right of priority" for applicants for trademark rights in other member
nations within six months from the application.
Article 6bis places trademarks widely recognized in their country of origin under general
international trademark law protections in other member states. Another provision assures that
the original form of a trademark shall be accepted for registration in other Paris Convention
nations. Another provision prevents individuals with a business or legal relationship to the
original registrant from applying for the same rights.
Article 8 recognizes that trade names are also due to the same protections even if they are not
registered as trademarks. Article 10bis allows for the payment of damages, levying of
injunctions, and prosecution under criminal law for cases in which acts of unfair competition
have occurred. Since the passage of the Paris Convention, it has been amended and revised

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several times for the requirements of new member states and development of intellectual
property issues.
The substantive provisions of the Convention fall into three main categories: national treatment,
and right of priority.
(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.
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;

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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.

Trademark Law Treaty (TLT) (1994)

The aim of the Trademark Law Treaty (TLT) is to standardize and streamline national and
regional trademark registration procedures. This is achieved through the simplification and
harmonization of certain features of those procedures, thus making trademark applications and
the administration of trademark registrations in multiple jurisdictions less complex and more
predictable.
The great majority of the provisions of the TLT concern the procedure before a trademark office
which can be divided into three main phases: application for registration; changes after
registration; and renewal. The rules concerning each phase are constructed so as to clearly define
the requirements for an application or a specific request.

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As to the first phase – application for registration – the Contracting Parties to the TLT may
require, as a maximum, the following indications: a request, the name and address and other
indications concerning the applicant and the representative; various indications concerning the
mark, including a certain number of representations of the mark; the goods and services for
which registration is sought classified in the relevant class of the Nice Classification (established
under the Nice Agreement Concerning the International Classification of Goods and Services for
the Purposes of the Registration of Marks (1957)); and, where applicable, a declaration of
intention to use the mark. Each Contracting Party must also allow that an application can relate
to goods and/or services belonging to several classes of the Nice Classification. As the list of
permissible requirements is exhaustive, a Contracting Party cannot require, for example, that the
applicant produce an extract from a register of commerce, an indication of a certain commercial
activity, or evidence to the effect that the mark has been registered in the trademark register of
another country.
The second phase of the trademark procedure covered by the TLT concerns changes in names or
addresses and changes in the ownership of the registration. Here too, the applicable formal
requirements are exhaustively listed. A single request is sufficient even where the change relates
to more than one – possibly hundreds – of trademark applications or registrations, provided that
the change to be recorded pertains to all registrations or applications concerned.
As to the third phase, renewal, the TLT standardizes the duration of the initial period of
registration and the duration of each renewal to 10 years each.
Furthermore, the TLT provides that a power of attorney may relate to several applications or
registrations by the same person or entity.
The TLT also contains Model International Forms (MIF) corresponding to the maximum
requirements that a Contracting Party may provide for in respect of a particular procedure or
document. A Contracting Party may also prepare its own Individualized International Form for
use by applicants, provided that such forms do not require mandatory elements that would be
additional to the elements referred to in the corresponding MIF.
Most notably, the TLT does not allow a requirement as to the attestation, notarization,
authentication, legalization or certification of any signature, except in the case of the surrender
of a registration.

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The TLT was concluded in 1994 and is open to States members of WIPO and to certain
intergovernmental organizations.
Madrid Agreement Concerning the International Registration of Marks (1891) and the
Protocol Relating to that Agreement (1989)
The Madrid System for the International Registration of Marks is governed by two treaties:
the Madrid Agreement, concluded in 1891 and revised at Brussels (1900), Washington (1911),
The Hague (1925), London (1934), Nice (1957) and Stockholm (1967), and amended in 1979,
and the Protocol relating to that Agreement, concluded in 1989, which aims to make the Madrid
system more flexible and more compatible with the domestic legislation of certain countries or
intergovernmental organizations that had not been able to accede to the Agreement. States and
organizations party to the Madrid system are collectively referred to as Contracting Parties.
The system makes it possible to protect a mark in a large number of countries by obtaining an
international registration that has effect in each of the designated Contracting Parties.
An application for international registration (international application) may be filed only by a
natural person or legal entity having a connection – through establishment, domicile or
nationality – with a Contracting Party to the Agreement or the Protocol.
A mark may be the subject of an international application only if it has already been registered
with the trademark office of the Contracting Party with which the applicant has the necessary
connections (referred to as the office of origin). However, where all the designations are effected
under the Protocol (see below), the international application may be based simply on an
application for registration filed with the office of origin. An international application must be
presented to the International Bureau of WIPO through the intermediary of the office of origin.
An application for international registration must designate one or more Contracting Parties in
which protection is sought. Further designations can be effected subsequently. A Contracting
Party may be designated only if it is party to the same treaty as the Contracting Party whose
office is the office of origin. The latter cannot itself be designated in the international
application.
The designation of a given Contracting Party is made either under the Agreement or the
Protocol, depending on which treaty is common to the Contracting Parties concerned. If both
Contracting Parties are party to the Agreement and the Protocol, the designation will be
governed by the Protocol.

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International applications can be filed in English, French or Spanish, irrespective of which treaty
or treaties govern the application, unless the office of origin restricts that choice to one or two of
these languages.
The filing of an international application is subject to the payment of a basic fee, a
supplementary fee for each class of goods and/or services beyond the first three classes, and a
complementary fee for each Contracting Party designated. However, a Contracting Party to the
Protocol may declare that, when it is designated under the Protocol, the complementary fee is
replaced by an individual fee, whose amount is determined by the Contracting Party concerned
but may not be higher than the amount that would be payable for the registration of a mark, at
the national level, with its office.
Once the International Bureau receives an international application, it carries out an examination
for compliance with the requirements of the Agreement, the Protocol and their Common
Regulations. This examination is restricted to formalities, including the classification and
comprehensibility of the list of goods and/or services. If there are no irregularities in the
application, the International Bureau records the mark in the International Register, publishes
the international registration in the WIPO Gazette of International Marks (hereinafter referred to
as "the Gazette"), and notifies it to each designated Contracting Party. Any matter of substance,
such as whether the mark qualifies for protection or whether it is in conflict with a mark
registered previously in a particular Contracting Party, is determined by that Contracting Party's
trademark office under the applicable domestic legislation. The Gazette is available in electronic
form (e-Gazette) on the Madrid system website.
The office of each designated Contracting Party shall issue a statement of grant of protection
under Rule 18ter of the Common Regulations. However, when designated Contracting Parties
examine the international registration for compliance with their domestic legislation, and if
some substantive provisions are not complied with, they have the right to refuse protection in
their territory. Any such refusal, including an indication of the grounds on which it is based,
must be communicated to the International Bureau, normally within 12 months from the date of
notification. However, a Contracting Party to the Protocol may declare that, when it is
designated under the Protocol, this time limit is extended to 18 months. That Contracting Party
may also declare that a refusal based on an opposition may be communicated to the International
Bureau even after the 18-month time limit.

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The refusal is communicated to the holder of the registration or the holder's representative
before the International Bureau, recorded in the International Register and published in the
Gazette. The procedure subsequent to a refusal (such as an appeal or a review) is carried out
directly by the competent administration and/or court of the Contracting Party concerned and the
holder, without the involvement of the International Bureau. The final decision concerning the
refusal must, however, be communicated to the International Bureau, which records and
publishes it.
The effects of an international registration in each designated Contracting Party are, from the
date of the international registration, the same as if the mark had been deposited directly with
the office of that Contracting Party. If no refusal is issued within the applicable time limit, or if a
refusal originally notified by a Contracting Party is subsequently withdrawn, the protection of
the mark is, from the date of the international registration, the same as if it had been registered
by the office of that Contracting Party.
An international registration is effective for 10 years. It may be renewed for further periods of
10 years on payment of the prescribed fees.
Protection may be limited with regard to some or all of the goods or services or may be
renounced with regard to some only of the designated Contracting Parties. An international
registration may be transferred in relation to all or some of the designated Contracting Parties
and all or some of the goods or services indicated.
TRIPS
The basic rule contained in Article 15 is that any sign, or any combination of signs, capable of
distinguishing the goods and services of one undertaking from those of other undertakings, must
be eligible for registration as a trademark, provided that it is visually perceptible. Such signs, in
particular words including personal names, letters, numerals, figurative elements and
combinations of colours as well as any combination of such signs, must be eligible for
registration as trademarks.
Where signs are not inherently capable of distinguishing the relevant goods or services, Member
countries are allowed to require, as an additional condition for eligibility for registration as a
trademark, that distinctiveness has been acquired through use. Members are free to determine
whether to allow the registration of signs that are not visually perceptible (e.g. sound or smell
marks).

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Members may make registrability depend on use. However, actual use of a trademark shall not
be permitted as a condition for filing an application for registration, and at least three years must
have passed after that filing date before failure to realize an intent to use is allowed as the
ground for refusing the application (Article 14.3).
The Agreement requires service marks to be protected in the same way as marks distinguishing
goods (see e.g. Articles 15.1, 16.2 and 62.3).
The owner of a registered trademark must be granted the exclusive right to prevent all third
parties not having the owner's consent from using in the course of trade identical or similar signs
for goods or services which are identical or similar to those in respect of which the trademark is
registered where such use would result in a likelihood of confusion. In case of the use of an
identical sign for identical goods or services, a likelihood of confusion must be presumed
(Article 16.1).
The TRIPS Agreement contains certain provisions on well-known marks, which supplement the
protection required by Article 6bis of the Paris Convention, as incorporated by reference into the
TRIPS Agreement, which obliges Members to refuse or to cancel the registration, and to prohibit
the use of a mark conflicting with a mark which is well known. First, the provisions of that
Article must be applied also to services. Second, it is required that knowledge in the relevant
sector of the public acquired not only as a result of the use of the mark but also by other means,
including as a result of its promotion, be taken into account. Furthermore, the protection of
registered well-known marks must extend to goods or services which are not similar to those in
respect of which the trademark has been registered, provided that its use would indicate a
connection between those goods or services and the owner of the registered trademark, and the
interests of the owner are likely to be damaged by such use (Articles 16.2 and 3).
Members may provide limited exceptions to the rights conferred by a trademark, such as fair use
of descriptive terms, provided that such exceptions take account of the legitimate interests of the
owner of the trademark and of third parties (Article 17).
Initial registration and each renewal of registration, of a trademark shall be for a term of no less
than seven years. The registration of a trademark shall be renewable indefinitely (Article 18).
Cancellation of a mark on the grounds of non-use cannot take place before three years of
uninterrupted non-use has elapsed unless valid reasons based on the existence of obstacles to
such use are shown by the trademark owner. Circumstances arising independently of the will of

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the owner of the trademark, such as import restrictions or other government restrictions, shall be
recognized as valid reasons of non-use. Use of a trademark by another person, when subject to
the control of its owner, must be recognized as use of the trademark for the purpose of
maintaining the registration (Article 19).
It is further required that use of the trademark in the course of trade shall not be unjustifiably
encumbered by special requirements, such as use with another trademark, use in a special form,
or use in a manner detrimental to its capability to distinguish the goods or services (Article 20).

INTERNATIONAL TREATIES ON PATENTS

PARIS CONVENTION
The Paris Convention for the Protection of Industrial Property, 1883, was the first step in
internationalization of patent system. It represents the first effort of several countries to pursue a
common approach to industrial property. The convention was drafted at a Diplomatic
Conference in Paris in 1880 and was ratified by eleven states in 1884. It was entered into force
one month after the deposit of the instruments of ratification, on July 7, 1884. The Paris
Convention tackles basic and substantive problems faced by the international community in
relation to industrial property. The convention introduced the principles of national treatment
and right of priority and common rules in the administration and enforcement of intellectual
property rights creating regime of equality in all member state”. It, also, reflects the growing
concern of developed and developing nations of the world to ensure that their industrial property
is properly protected not only at the national, but also at the international level. The Paris
Convention talks of what has been termed as national treatment principle. According to it, the
member countries of this Union shall provide protection to industrial property of nationals of
other member countries in the same way as they do to that of their own nationals. For giving
such protection, the country where the application has been made, shall not impose any
precondition for eligibility of the applicant. However, the member country in question reserves
the right to apply its own laws on the applicant, who is from any other member country as
regards judicial and administrative procedure, jurisdiction, and designation of an address for
service or the appointment of an agent. A fixed priority period of twelve months is provided for
a person who has duly filed an application for a patent in one of the countries of the Union for
the purpose of filing applications for the protection of the same patent in other countries. One of

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the other most important provisions of the Paris Convention relates to convention priority. An
applicant’s priority date is the date, on which an application is first filed in the applicant’s home
country. The convention allows the applicant to claim this date as the effective date on which an
application for the same patent was filed in any other member country, provided that the
application is filed within twelve months from the claimed priority date. The foreign filing date
is the convention date. This removes the need and cost to file all the separate country
applications at the same time to obtain effective protection. The Paris Convention has provided
the framework for the Patent Cooperation Treaty, the European Patent Convention and the
Community Patent Convention. Contracting States are allowed to enter into separate treaties
provided that these agreements do not contravene the provisions of the Paris Convention.

EUROPEAN PATENT CONVENTION

Following World War II, global changes in the international patent system have proceeded at an
accelerated pace. Numerous new treaties that followed the Paris Convention, now, provide
inventors with a network of global rights. The Strasbourg Convention, 1963 on the Unification
of certain points of Substantive Law on Patents for Inventions set forth certain common
substantive patent law principles, and formed the cornerstones of the European Patent
Convention (EPC). The European Patent Convention was signed in Munich in 1973 and came
into operation on June 1, 1978. The Convention was creation of European Patent Office (EPO).
The Convention is an inter governmental treaty, a regional convention for the grant of patent in
Europe. The membership extends beyond members of European Community. The Convention
provides for single application in English, German or French which is converted into a bundle of
individual national patents on completion of procedure. Once the patent is accepted for grant,
the appropriate fees and translations are to be submitted. The system also allows an opposition
to the grant to be lodged at the European Patent Office within nine months from the patent grant.
The Europatents granted by the European Patent Office will have a common form, but in
essence, the grant will be of a bundle of national patents for the different member states
designated in the application. A Convention State is obliged by the convention to treat
Europatents as having the effect of and being subject to the same conditions as a national patent.
Europatents must be accorded a term of twenty years from the date of filing of the application
for it. Europatents and applications for them must be treated as giving rise to rights specified in

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the Convention. Thus, the convention requires the law for national patents to be brought into
line with that for Europatents. The European Patent Convention considers an invention to be
new if it does not form part of the state of the art, which is held to comprise everything made
available to the public by means of a written or oral description, by use, or in any other way,
before the date of filing of the European patent application. This indicates that articles which are
publicly available may form the state of the art whether they have been described in writing or
even orally.

PATENT CO-OPERATION TREATY

On the request of Executive Committee of the Paris Union for the Protection of Industrial
Property, Bureau Internationalaux Reunis pour la protection de la Propriete Intellectuell (BIRPI)
prepared in 1967 the draft of an international treaty and the same having been revised by a
Committee of Experts, was signed at Washington in 1970. This treaty known as Patent
Cooperation Treaty (PCT) was entered into force on January 24, 1978 and became operational
on June 1, 1978 with an initial eighteen contracting States. Patent Co-operation Treaty, 1970
represents the first major step, after Paris Convention, towards a truly procedural
internationalized patent system. The treaty facilitates granting of national and regional patents. It
gives the foreign applicant the much needed time to protect the invention internationally. The
treaty provides for single application designating the member countries from which patents are
desired. After the examination of application, payment of fees and filing of translations, the
application is converted into a bundle of individual national applications, which are then subject
to examination by individual national patent offices. This international treaty on the subject of
patents stands for rationalization and cooperation with regard to the filing, searching and
examination of patent applications and dissemination of the technical information contained
therein. The Patent Cooperation Treaty plays the role of a facilitator and helps an applicant get a
patent granted in his favour in any of the countries of the Paris Union termed as designated
offices. The principle objectives of the Patent Cooperation Treaty are :
1. To simplify and to make more effective and economical, the methods for applying for patent
protection for inventions in several countries,
2. To get rid of the system which required filing of several applications for patent of the same
invention in several countries and for this end

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a) To establish an international system which enables the filing with a single office through a
single application in one language for the purpose of getting patent granted in those member
countries which are mentioned therein by the applicant,
b) To provide for the formal examination of the international application by a single patent
office,
c) To subject each international application to an international search resulting in a report, the
copy of which is provided to applicant before the same being published,
d) To provide for centralized international publication of the international applications with
search reports therein,
e) To provide a chance to the designated office to consider whether the patent can be granted and
an opportunity to the applicant to know whether and if yes, up to what extent his invention
meets the international criteria for patentability.
3. To help these member countries cope with increased work load, since an application by the
time it reaches a designated office has already been examined and
4. To facilitate and accelerate access by industries and other interested sectors to technical
information related to inventions and to assist developing countries in gaining excess to
technologies.
The Patent Co operation Treaty is an agreement for international co-operation in the field of
patents. The treaty is a procedural treaty and the actual grant is by the national patent offices.
India has also acceded to the Patent Co-operation Treaty. Although the Patent Co-Operation
Treaty simplifies the patent application process, it does not centralize the patent granting phase,
which remains the responsibility of the national patent authorities in the designated states.

TRADE RELATED ASPECTS OF INTELLECTUAL PROPERTY RIGHTS

AGREEMENT
The TRIPs Agreement is one of the most important commercial treaties in modern history. It
revolutionized the treatment of intellectual property in the signatory countries. The agreement
was negotiated in order to reduce distortions and impediments to international trade and to
promote adequate protective measures for intellectual property. The subject matter of patents
earlier to Trade Related Aspects of Intellectual Property Rights Agreement was determined by
the national governments according to its suitability keeping in view its social and economic

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development. But, TRIPs Agreement was purposely intersected in General Agreement on Trade
and Tariff (GATT)/World Trade Organisation (WTO) to enhance the level of protection to
patents and also, the subject matter to be covered by the member countries in compliance,
thereof and to harmonize the standard at international level. While Article 3 of TRIPs
Agreement, requires each member to accord to the nationals of other members a national
treatment with regard to protection of intellectual property, Article 4 states that with regard to
the protection of intellectual property, any advantage, favour, privilege or immunity granted by a
member to the nationals of any other country shall be accorded unconditionally to the nationals
of other members. It has been provided that a member shall be under no such obligation if it
accords any advantage, favour, privilege or immunity deriving from international agreements on
judicial assistance or law enforcement of a general nature and not particularly confined to the
protection of intellectual property or from international agreements related to the protection of
intellectual property which entered into force prior to the entry into force of the World Trade
Organisation Agreement, provided that such agreements are notified to the Council for TRIPs
Agreement and do not constitute an arbitrary or unjustifiable discrimination against nationals of
other members.
Articles 27 to 34 of the TRIPs Agreement deal exclusively with the matter of patents. The
agreement provides that patents shall be available for any invention, whether product or process,
in all fields of technology, provided that they are new, involve an inventive step and are capable
of industrial application. This subsection states that subject to the provisions of paragraphs 2 and
3, patents shall be available for any invention, whether products or process, in all fields of
technology, provided that they are new, involve an inventive step and are capable of industrial
application. According to paragraphs 2 and 3, members may exclude from patentability
 Inventions, the prevention within their territory of the commercial exploitation of which is
necessary to protect public order or morality, including to protect human, animal or plant life or
health or to avoid serious prejudice to the environment, provided that such exclusion is not made
merely because the exploitation is prohibited by their law.
 Diagnostic, therapeutic and surgical methods for the treatment of humans, plants and animals
other than micro-organisms, and essentially biological processes for the production of plants or
animals other than non-biological and microbiological processes. However, Members shall
provide for the protection of plant varieties either by patents or by an effective sui generis

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system or by any combination thereof. Recently, when a multinational company Novartis
challenged the Section 3 (d) of Patents Act, 1970 of India (as amended in 2005) as a violation of
Section 27 of TRIPs Agreement. The Madras High Court declined to entertain the matter
observing that Dispute Settlement Mechanism provided for under TRIPs Agreement and the
World Trade Organisation (WTO) was the only forum to raise such issues.
Article 28 gives following exclusive rights to the owner of a patent
1. In case of product patent, to prevent others from making, using, offering for sale, selling or
importing for these purposes unless with prior permission of the owner;
2. In case of process patent, to prevent others from using the process, or from using, offering for
sale, selling or importing for these purposes at least the product obtained directly by that
process, unless with prior permission of the owner; and
3. To assign or transfer by succession, the patent and to conclude license contracts. Article 29
requires that an applicant for patent disclose the invention in a manner sufficiently clear and
complete for the invention to be carried out by a person skilled in the art; and indicate the best
mode known by that date to the inventor to carry out the invention. TRIPs Agreement is the
most important international instrument in the field of patent law. It is the first step taken
towards the establishment of sui generis system of patents. The agreement has led to amendment
in the patent laws of all the member countries. India has also amended the Patents Act, 1970 in
accordance with the provisions of TRIPs Agreement.

PARALLEL IMPORTS
The cross-border sale of products that are protected by IP rights is known as parallel importing.
The option to parallel import protected products is determined by the system of international
exhaustion governing the associated IP rights. The products are acquired abroad by the importer
and then resold domestically outside the normal manufacturer distribution channels. The
advantage of such activity is the exploitation of the price gap between the manufacturer’s
product and the parallel imported product. In this way the importer competes directly with the
manufacturer of the product.
The Agreement on Trade-Related Aspects of Intellectual Property Rights allows for parallel
imports, although the specific circumstances under which such imports can take place have not

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been defined. The Patents Act 1970 includes a provision on parallel imports and Section
107A(b) reads as follows:
Section 107A
Certain acts not to be considered as infringement for the purposes of this act:
(b) importation of patented products by any person from a person who is duly authorized under
the law to produce and sell or distribute the product shall not be considered as an infringement
of patent rights.”
Section 107A(b) of the Patent Act, as amended by the Patent (Amendment) Act 2005, appears to
allow local companies to import generic drugs manufactured in least-developed countries (eg,
Bangladesh), where pharmaceutical patents are not in effect, if the local law in that country
authorizes the manufacture of those medicines.
Previously, Section 107A(b) insisted that a company could import such drugs only if it
purchased them from a person “who was duly authorized by the patentee” to sell those drugs in
least-developed countries. The provision was amended in 2005 to state that it is not necessary
for the exporter in a least-developed country to be authorized by the patentee; however, it must
be duly authorized under the law to produce and sell or distribute the product. As a result, if the
exporter is authorized by the law in a least-developed country (eg, Bangladesh) to produce and
sell the product, a drug maker can import that product legally under Section 107A(b). As the
government has explained, this provision for the parallel import of patented products was
introduced to ensure the availability of patented products at cheaper prices for consumers.
Parallel imports from least-developed countries that do not favour pharmaceutical patent
protection can also be an important tool for ensuring adequate access to medicines. Recent
reports have suggested that Bangladesh is amending its patent regime to remove pharmaceutical
patents and as a consequence, all patent applications for medicines and chemicals will be
suspended until January 1 2016.
Some experts believe that Section 107A(b) is at the core of the patentee rights provided under
Section 48 of the Patents Act. The statute gives the patentee exclusive rights to prevent third
parties from importing its product where such product is the subject matter of the patent. Such
prevention remains to be seen by the Indian courts, but it cannot be denied that parallel imports
are a crucial component of public health policies. The patent law situation in Bangladesh may

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trigger a debate on India’s parallel imports regime and a possible attempt to harmonize the
financial interests of IP owners with the increasingly easy availability of key products.

INTERNATIONAL TREATIES ON INDUSTRIAL DESIGN

Paris Convention
The Paris Convention contains a number of specific provisions relating directly to industrial
designs and other more general provisions which are also applicable to industrial designs.
Currently, the Paris Convention has ninety-nine countries as members, including the United
States.
A. Specific Provisions
Article 5 quinquies of the Paris Convention sets out the general principle that industrial designs
are to be protected in all countries within the Paris Union’s Article 5, however, contains nothing
regarding the type of protection to be afforded to industrial designs. Therefore, each country
may meet its obligation to the Paris Convention not only through specific legislation requiring
the deposit of industrial designs, but also by other means, such as providing protection under
copyright or unfair competition laws. To satisfy the demands of article 5 quinquies, industrial
designs must enjoy some form of protection. Article 5(B) of the Paris Convention states: 'The
protection of industrial designs shall not, under any circumstance, be subject to any forfeiture,
either by reason of failure to work or by reason of the importation of articles corresponding to
those which are protected. Member states are free to define what they understand by failure to
work. Work will normally be understood as meaning the manufacture of products representing
or embodying the design. Pursuant to article 5(D), no indication or mention of the deposit of an
industrial design may be required as a condition of the recognition of the right to protection.
This provision was inserted at the 1925 Revision Conference, held at The Hague, and related
only to industrial designs. Subsequently, in London, during the 1934 Revision Conference, the
provision was extended to patents, utility models, and trademarks. Although national laws may
require that there be an indication on the goods that they are protected by the deposit of an
industrial design, under the Paris Convention, the presence of such an indication or mention may
not constitute a condition of the right to protection. If that were not the case, the holder of the
right would be penalized too heavily in the event of an omission. Nevertheless, the member

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countries are free to stipulate in their national laws other consequences of the omission of such
an indication or mention.
B. General Provisions
Three general provisions of the Paris Convention also concern industrial designs in addition to
patents, trademarks, and other industrial property rights.
1. National Treatment
"National treatment" or "assimilation to nationals," derived from article 2(1) of the Paris
Convention, II applies to industrial designs under article 1(2) of the Convention. Under the
national treatment principle, each member country must afford, with respect to industrial
property, the same protection to the nationals of the other member countries as it affords to its
own nationals. The advantage of this principle, as opposed to the principle of reciprocity, is that
any national of a Paris Union country can claim, in any member country, the application,
without discrimination of domestic legislation, as it applies to nationals of the member country.
2. Right of Priority
Article 4 of the Paris Convention, which sets forth the right of priority, is an important provision
of the Convention and applies equally to patents, utility models, trademarks, inventors'
certificates, and industrial designs. Right of priority concerns the point at which an applicant
initially deposits a patent, utility model, trademark, or industrial design in a Paris Union country.
When such an act occurs, the applicant enjoys a period of time in which to effect corresponding
deposits in the other countries of the Paris Union. The industrial design deposits made within the
six-month period cannot be invalidated on the ground that deposits have been made by other
persons during that period.
One of the practical advantages arising out of the right of priority is that, when an applicant
wishes to obtain protection for an industrial design in several countries, he has six months to
decide in which countries he wishes to obtain protection. Therefore, during the six-month
period, an applicant can arrange, with all care, the necessary procedures to undertake without
fearing that others may effect deposits that can oppose his deposit in a Paris Union country.
3. Temporary Protection at International Exhibitions
Another general provision of the Paris Convention concerning industrial designs is article
11.This provision deals with the temporary protection Paris Union countries undertake to grant,
in conformity with their domestic legislation, to patentable inventions, utility models,

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trademarks, and industrial designs, with respect to goods exhibited at official or officially
recognized international exhibitions held in a Paris Union country. The primary purpose of the
temporary protection principle is to prevent the exhibit of a product from being considered a
disclosure that damages the novelty of the design, and therefore, under certain national laws
constitutes an obstacle to any subsequent deposit. The measures taken by the various Paris
Union countries to ensure such temporary protection, however, vary dramatically. Some laws
make protection subject to an administrative act at the time of exhibition, while others grant
such protection without requiring any specific formalities. The term of protection afforded is
also variable. Indeed, article 11 of the Paris Convention provides that temporary protection at
international exhibitions may not extend the period of priority set out in article 4 of the Paris
Convention. If the right of priority is invoked at a later date, the authorities of any country may
provide that the period should start from the date of introduction of the product into the
exhibition

THE HAGUE AGREEMENT CONCERNING THE INTERNATIONAL DEPOSIT OF

INDUSTRIAL DESIGNS
The institution of an international registration of industrial designs was the subject of a wish
expressed by the Washington Diplomatic Conference in 1911. It was not until November 6,
1925, however, that The Hague Agreement was adopted. That Agreement, which constitutes a
"special agreement" within the meaning of article 19 of the Paris Convention, took force on June
I, 1928, and has been revised several times. The principle of international deposit of industrial
designs arose from the need for simplicity and economy. Its main purpose was to enable
protection to be obtained for one or more industrial designs in a number of countries through a
single deposit filed with the International Bureau of the World Intellectual Property Organization
(WIPO).
Under the provisions of The Hague Agreement, any person entitled to effect an international
deposit may obtain, by means of a single deposit, protection for his industrial designs in a
number of countries involving a minimum of formalities and expense. Consequently, the
applicant is relieved of the need to make a separate national deposit in each of the countries in
which the design requires protection, and avoids the inherent complication of procedures that
vary from one country to another. The applicant does not have to submit the required documents

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in various languages or keep watch on the deadlines for renewal of a whole series of national
deposits. Also avoided is the need to pay a series of national fees and agents' fees in varying
currencies. Under The Hague Agreement, the same results can be obtained through a single
deposit made with a single office, in one language, on payment of a single set of fees, and in one
currency. Presently, there are twenty-one member countries of the Hague Union established by
The Hague Agreement. Any national of a contracting country can make an international deposit,
and an international deposit does not require any prior national deposit. One makes an
international deposit directly with the International Bureau of WIPO, through the depositor or
his representative on a form provided free of charge by the International Bureau. The deposit
may be effectuated, however, through the national office of a contracting country, if the law of
the country so permits. Noncompliance with this requirement, however, does not prejudice the
effects of the international deposit in the other contracting countries. The international deposit
has the same effect in each of the countries for which protection is requested, as if the designs
induced in the deposit had been deposited directly in that state on the date of the international
deposit, subject to the special rules established under The Hague Agreement. Protection also
may be requested and obtained by means of an international deposit in the country of origin,
unless the domestic legislation of that country provides otherwise. Any contracting country
whose domestic legislation offers the possibility of refusing protection as the result of an ex
officio administrative examination, or of opposition by a third party, may refuse protection for
any industrial design, if it fails to meet the requirements of its domestic law. Refusal of
protection may not, however, extend to the formalities and other administrative acts that are to
be considered by each contracting country as having been accomplished at the time the
international deposit is recorded at the International Bureau. No contracting country may require
publication of the international deposits other than the requirements put forth by the
International Bureau. The national office of a contracting country must notify the International
Bureau and address the depositor on the refusal to publish the deposit within six months of the
date on which the national office received the periodical bulletin in which the international
deposit was published. The depositor has the same remedies against the decision to refuse
protection that he would have had if he had deposited the refused design at the national level
with the office of the country that refused protection. If the refusal is not noted within the
applicable six-month period, the international deposit then achieves the same status as a deposit

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entered in the national register of each of the countries for which protection has been requested.
International deposits are published by the International Bureau in a monthly periodical called
the International Designs Bulletin. The national office of each contracting country is entitled to
receive, free of charge from the International Bureau, copies of the International Designs
Bulletin. The owner of an international deposit enjoys the priority right afforded under article 4
of the Paris Convention, if he claims this right and if the international deposit is made within six
months of the first national, regional, or international deposit made in one of the countries party
to the Paris Convention, or if he makes a deposit having effect in one of those countries. An
international deposit is made for an initial term of five years, and can be renewed at least once
for an additional period of five years for all or part of the designs included in the deposit, or for
all or only some of the countries in which it has effect. The offices of the contracting countries
have no specific tasks in the implementation of The Hague Agreement except in those cases
where the domestic or regional legislation of the country permits or requires the international
deposit to be affected through them or calls for a novelty examination for deposited designs.

Locarno Agreement
The Locarno Treaties were seven agreements negotiated at Locarno, Switzerland, on 5–16
October 1925 and formally signed in London on 1 December, in which the First World War
Western European Allied powers and the new states of Central and Eastern Europe sought to
secure the post-war territorial settlement, and return normalizing relations with defeated
Germany (the Weimar Republic). It also stated that Germany would never go to war with the
other countries. Locarno divided borders in Europe into two categories: western, which were
guaranteed by Locarno treaties, and eastern borders of Germany with Poland, which were open
for revision. The Locarno Agreement, concluded at Locarno in 1968 and amended in 1979,
establishes a classification for industrial designs (the Locarno Classification). The competent
offices of the Contracting States must indicate in official documents and in any publication they
issue in respect of the deposit or registration of industrial designs the numbers of the classes and
subclasses of the Classification to which the goods incorporating the designs belong.
The Locarno Agreement created a Union, which has an Assembly. Every State that is a member
of the Union is a member of the Assembly. Among the most important tasks of the Assembly is
the adoption of the biennial program and budget of the Union.

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The Agreement also set up a Committee of Experts in which all members of the Union are
represented. The main task of the Committee is the periodical revision of the Classification.
The Agreement is open to States party to the Paris Convention for the Protection of Industrial
Property (1883). Instruments of ratification or accession must be deposited with the Director
General of WIPO.

OVERLAPING BETWEEN DESIGN, COPYRIGHT AND TRADEMARK

When we talk about the subject of overlapping amongst the provisions of Intellectual Property
Legislations, we need to look at the provisions of The Copyright Act, 1957, The Trade Marks
Act, 1999 and The Designs Act, 2000.
The overall object of the copyright law is to protect the original literary, dramatic, musical and
artistic works, cinematograph films, sound recordings, broadcasting rights and/or performers
right.
The object of Design Law is to protect the features of shape, configuration, pattern or ornament
or composition of lines or colours applied to any article whether in two dimensional or three
dimensional or in both forms by industrial process or means, whether manual, mechanical or
chemical, separate or combined which in the finished appeal to and/are judged solely by the eye,
but does not include any trade mark or property mark or artistic work.
The object of The Trade Marks Law is to protect the marks which performs the role of
identifying the production or services with a particular source of manufacture or so as to indicate
a connection in the course of trade.
The object of The Patents Law is to protect new and useful inventions as to the process, method
or manner of manufacture, machine, apparatus or other article and/or substance produced by
manufacture.
“Copyright” is defined in Section 2 (c) of The Designs Act to mean exclusive right to apply a
“design” to any article in any class in which design is registered.
“Copyright” in Section 14 of The Copyright Act is defined to mean an exclusive right to
authorize the doing of any of the acts as prescribed therein.

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It therefore, means that the expression “Copyright” has a different meaning and connotation in
both Intellectual Property related enactments i. e. The Copyright Act, 1957 & The Designs Act,
2000.
S. 15 of The Copyright Act precludes the subsistence of Copyright in the Design which is
registered or is capable of being registered as a “design” under The Designs Act, 1911.
Though, the intention of the legislature is to avoid overlapping of the subjects of “Copyright” as
defined and protected under The Copyright Act from the subjects of “Copyright” as defined and
protected under The Designs Act, 1911 but a serious overlapping has occurred because of the
new Designs Act, 2000 which came into in force on 11th May, 2001.
The provision of Section 15 of The Copyright Act has not been amended to preclude the Designs
which are registered or capable of being registered under The Designs Act, 2000 from the ambit
of the provision of Copyright Law.
A unique situation has emerged on the interpretation of Section 15 of The Copyright Act.
Copyright shall continue to subsist under the Copyright Law in respect of a subject of a Design
even if the same is registered or is capable of being registered under The Designs Act, 2000,
though it was not so under The Designs Act, 1911.
The definition of “design” under The Design Act, 2000 has been expanded to include
“Composition of lines or colours applied to any article whether in two dimensional or three
dimensional or in both forms”.
The object of Design Law is to protect novel designs applied to the shape & configuration of an
article to be manufactured & marketed. The object of design law is not to prevent the
infringement of Copyrights as are governed by the Copyright Law.
If a two dimensional drawing (subject matter of Copyright as an artistic work under The
Copyright Law) is three dimensionally reproduced into an article, it is an infringement of
Copyright under Section 14(C )(1) read with Section 55 of the Act.
Where a two dimensional drawing is made by an artist from a three dimensional object in which
no copyright would subsist under the Design Law but still it would constitute infringement of
copyright under The Copyright Act.
Similarly, a two dimensional work consisting of composition of lines or colours applied to an
article would be covered by the definition of “design” under the Design Act, 2000. The
composition of lines or colours, say for example, if applied to a label or a carton would take the

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said label or a carton within the ambit of Design Law and would thus be precluded from
protection under The Copyright Law.
On the other hand, composition of lines or colours in themselves would come within the ambit
of “artistic work” and reproduction thereof two dimensionally or three dimensionally (as applied
to an article) would be protected as copyright under Section 14 of the Act.
It would, thus, be seen that on the one hand the composition of lines or colours would fall within
the scope of design and on the other hand would also fall within the scope of copyright, but at
the same time, by virtue of Section 15, the subsistence of copyright in such composition would
be excluded.
The matter will not rest here. Under the Copyright Law, a composition of lines or colours made
by an artist and as applied to an article in the shape of a label or a carton can perform the role of
a "trade mark" as the same is capable of being used in relation to goods and it is for this reason
under Section 45 of the Act, the Registrar of Trade Marks is empowered to issue a search report
in respect of such artistic works as are used as a trade mark as a pre-requisite for Copyright
registration. This would mean that an artistic composition of lines or colours as applied to an
article can perform the role of a "trade mark". If that be so, the definition of design under
Section 2(d) of the Act precludes trade mark from its ambit and scope. If the composition of
lines or colours applied to any article is considered to be a trade mark (which is capable of being
so considered under Section 45 of the Act) then no copyright in the design would subsist therein.
The overlapping and conflict in these provisions would mean confusion and multiplicity of legal
proceedings. The infringement of copyright and trade marks are civil as well as criminal wrongs
as against the infringement of designs which is purely a civil wrong. The effect of overlapping
and conflict would certainly have a repercussion on the remedies which the owner of a trade
mark, copyright or a design may be entitled to invoke or may invoke as per his convenience.
Now coming to the shape of an article. Hence-before, it has always been understood that shape
of an article being the subject matter of “Design Law” because of its aesthetic value. The
protection under the Design Law is for a limited period of time and on expiry of the term of a
design, copyright therein ceases to subsist and such design falls in public domain. If the shape of
goods or packaging is considered as “marks” under The Trade Marks Act, 1999 then the right
therein becomes perpetual. The proprietors of “lapsed designs” can legitimately claim the “shape
of their products or packaging as their “trade marks” and consequentially become entitled to a

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perpetual right therein irrespective of the fact that such shapes should fall under the ambit of
Design Law and entitled to limited monoply.
The definition of the expression “Mark” has now been amended in the Trade Mark Act, 1999 so
as to include “shape of goods, packaging or combination of colours or any combination thereof.
If shape of the goods or packaging or combination of colours is defined as a mark under Section
2(m) of the Act, then such shapes of goods or combination of colours would automatically stand
excluded from the definition of design.
Though many countries provide dual protection in intellectual property rights for a
single/common commodity, Indian laws are distinct.

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