Awareness Course on

Intellectual Property
Rights
UNIT 3 WIPO ADMINISTERED TREATIES
Structure

3.1 Introduction
Objectives
3.2 The Patent Cooperation Treaty
3.3 The Madrid System of International Registration of Trade Marks
3.4 The Hague System of International Protection of Industrial Designs
3.5 The Lisbon Agreement of Protection of Appellations of Origin
3.6 Summary
3.7 Answers and Hints to SAQs

3.1 INTRODUCTION

Intellectual property rights are granted by each country under its national statutes.
They exist and can be exercised only within the territory of the nation, which grants
them. For obtaining protection of intellectual property in several countries, many
problems arise due to differences in languages, customs, systems and procedures
followed in those countries. The owner of the property would be obliged to travel to
these countries for seeking protection. This would mean heavy expenses and loss of
time, as application in different countries would be filed on different dates. The
international organisations like WIPO have played important role in minimising these
problems and facilitating international registration of IP saving cost, time and effort.
This is done by helping to evolve international mechanisms through various
agreements and treaties. With growing similarity in the approach and procedures
governing intellectual property matters in various countries, it makes eminent sense to
simplify procedure and practice through international standardization and mutual
recognition of rights and duties among nations. Therefore, governments have
negotiated and adopted multilateral treaties in the various fields of intellectual
property, each of which establishes a Union of countries. The members of the Union
agree to grant to nationals of other countries of the Union the same protection as they
grant to their own, and to follow certain common rules, standards and practices.

The Unions administered by WIPO are founded on treaties. At present, WIPO

administers 21 treaties. A Union consists of all the States that are party to a particular
treaty. The name of the Union is, in most cases, taken from the place where the text of
the treaty was first adopted (thus the Paris Union, the Berne Union, etc.). The treaties
fall into three groups.

The first group consists of treaties that offer legal protection as agreed between
countries at the international level. Three treaties fall into this group—the Paris
Convention, the Madrid Agreement for the Repression of False and Deceptive
Indications of Source on Goods, and the Lisbon Agreement for the Protection of
Appellations of Origin and their International Registration.

The second group consists of treaties, which facilitate international protection. Six
treaties fall into this group. They are the Patent Cooperation Treaty (PCT) which
provides for the filing of international applications for patents, the Madrid Agreement
and the Madrid Protocol Concerning the International Registration of Marks, the
Budapest Treaty on the International Recognition of the Deposit of Microorganisms
for the Purposes of Patent Procedure, the Hague Agreement Concerning the
International Deposit of Industrial Designs and the Lisbon Agreement which belongs
to both the first and second groups.

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The third group consists of treaties, which deal with classification systems. Four WIPO Administered
Treaties
treaties fall into this group. They are the International Patent Classification Agreement
(IPC), the Nice Agreement Concerning the International Classification of Goods and
Services for the Purposes of the Registration of Marks, the Vienna Agreement
Establishing an International Classification of the Figurative Elements of Marks and
the Locarno Agreement Establishing an International Classification for Industrial
Designs.

Revising these treaties and establishing new ones are tasks, which require a constant
effort of international cooperation and negotiation, supported by a specialized
secretariat. WIPO provides the framework and the services for this work.

Besides patents, WIPO has role in the administration of systems to protect trademarks,
industrial designs, and appellations of origin. The protection is done through
registration and WIPO facilitates international registration of patents under the Patent
Cooperation Treaty (PCT), of trademarks under the Madrid System, of industrial
designs under the Hague System and of appellations of origin under a system
governed by the Lisbon Agreement.

Objectives

After reading this Unit you should be able to

• appreciate WIPO’s exact role in facilitating international registration of patents,

trademarks, industrial designs and appellation of origin;
• familiarise yourself with broad provisions of the following WIPO administered
treaties

− The Patent Cooperation Treaty

− The Madrid System for Registration of Trade Marks
− The Hague System for Protection of Industrial Designs
− The Lisbon Agreement for Registration of Appellations of Origin

3.2 THE PATENT COOPERATION TREATY

The territorial limitation on the patent rights granted for an invention by a country
raised several problems for a person who seeks to get the patents in several countries
for the same invention. He has to contend with requirements of travel to each country,
language of application and interaction with patent offices and procedures, which
would vary from country to country. Besides the fees and other costs, the applicant
would stand to lose the crucial priority for filing application in different countries as
applications would be filed on different dates in different countries. To minimise
difficulties in seeking patents in several countries a Patent Cooperation Treaty (PCT)
came into force in 1977. It offers an international system for making patent
applications. It is open to members signing the PCT. However a country wishing to
join PCT has to be a member of the Paris Convention first. India joined PCT on
December 7, 1998.

The patent procedure involves four main stages:

i) filing and acceptance of application;

ii) search and examination of application for patentability;
iii) advertising and inviting opposition to application, if any; and
iv) granting and sealing of patents.

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Awareness Course on The PCT helps the first three stages to be conducted internationally before finally the
Intellectual Property
Rights
national patent authority takes up the fourth stage for considering whether the patent
could be granted.

The PCT is a rational initiative by the WIPO that makes it easy and cost effective to
file patent applications internationally, conduct prior art searches and make
preliminary examination report of the application. However, it needs to be clearly
understood that the PCT is not an authority to grant patents; that responsibility lies
with the national patent authority. The PCT simply facilitates the procedure for
obtaining patents for one invention in a number of countries in a simple, rationalised
and cost-effective manner. Another important function of the PCT is to promote
exchange of technical information contained in patent documents among the
countries, the inventors and the industry in their field of interest.

It may be stressed here that though the PCT offers valuable assistance in obtaining
patents in several countries for the same invention, there is no such thing as a
worldwide patent. The territorial limitation on a patent corresponds to the territorial
jurisdiction of the Patent Officers granting the patent. Generally, a patent office is the
creation of a state, and the patent rights are limited to within the boundary of the state
that grants the patent. However, there may be a regional patent office, created by an
understanding reached among several countries of a region. A patent granted by a
regional patent office would then be valid in the territories of all the member countries
forming the concerned regional group. For example, a patent granted by the European
Patent Office (EPO) will be valid in 20 European countries, which are members of the
PCT and are covered by the EPO.

The PCT Procedure for Patents

• International Application: An international application is to be filed in one of

the Receiving Offices (RO), located in different countries, and authorised under
the PCT to receive international applications. All countries in which the
applicant desires patent protection for the invention are designated in the
application. Regional Patent Offices, e.g. the European Patent Organisation
(EPO) and the African Region Intellectual Property Organisation (ARIPO), also
serve as Receiving Offices. The application has to be in the PCT format and
necessary fee is to be deposited.

• The application then goes through the steps of search, publication and
preliminary examination, all at the international level. If after receiving the
results of the processing of the international phase, i.e. from filing to
preliminary examination, the applicant wishes to proceed further, the
application enters the national phase. At the request of the applicant, the WIPO
transmits to each designated country a copy of the following documents:

(i) Priority documents;

(ii) International application with any additions or amendments; and
(iii) International preliminary examination report.

The national patent office, then independently decides, whether the patent can
be granted under its law. The national phase, where applicable, could also be
completed at the Regional Patent Office (RPO), in which case a favourable
outcome would mean patent protection in all the countries covered by the RPO.
Thus a patent issued by the European Patent Office will be valid in all the
countries covered by the EPO.

For conducting international search, ten offices have been designated as International
Search Authority:

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1. The Australian Patent Office; WIPO Administered
Treaties
2. The Austrian Patent Office;
3. The Chinese Patent Office;
4. The European Patent Office;
5. The Japanese Patent Office;
6. The Korean Industrial Property Office;
7. The Russian Agency for Patents and Trademarks;
8. The Spanish Patent and Trademark Office;
9. The Swedish Patent Office; and
10. The U.S. Patent and Trademark Office.

Not all the offices may be in a position to conduct searches in many languages, e.g.
the Japan office takes up search only in the Japanese language.

The International Bureau does the international publication part, which is the
administrative Office of the WIPO at Geneva.

Usually, the office that conducts the search, carries out the international preliminary
examination but the applicant can ask for the examination to be done at another office.

The fees to be paid in the case of an international application have several

components. There is a transmittal fee for the Receiving Office, an international fee
for the International Bureau, a search fee and an examination fee, besides fees for the
national phase payable to each national office, which would finally grant a national
patent. There are concessions in PCT fees available to applicants from certain
countries.

SAQ 1

What are main objectives of PCT?

3.3 THE MADRID SYSTEM OF INTERNATIONAL

REGISTRATION OF TRADE MARKS

The Madrid system for international registration of trademarks is governed by two

complementary treaties, viz., the Madrid Agreement Concerning the International
Registration of Marks (1891) and the Madrid Protocol Relating to that Agreement
(1989).

The Madrid Agreement came into force on April 14, 1891. It has undergone several
revisions/amendments since then: at Brussels (1900), at Washington (1911), at The
Hague (1925), at London (1934), at Nice (1957), at Stockholm (1967); it was
amended on September 28, 1979. The present text of the Madrid Agreement is as
amended in 1979. The Madrid Protocol came into force on December 1, 1995. The
International Bureau of WIPO at Geneva administers the Madrid system; it also
maintains the International Register and publishes the WIPO Gazette of International
Marks.

The countries that are party to the Madrid Agreement constitute a special union for the
International Registration of Marks. A country, which is a party to the Paris
Convention, can become party to the Madrid Agreement or the Madrid Protocol or
both.
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Awareness Course on
Intellectual Property
Rights
An international application for registration of a mark with the WIPO can be filed if
the mark has been registered, or if the application for such registration has been filed
with the trademark office of the Contracting Party with which the applicant has
necessary connection (by way of domicile or business or commerce). Such
application is known as basic application, such registration is known as basic
registration, and the registering office of the contracting party, where the basic
application is filed or which grants the basic registration is known as the office of
origin.

An International application be entertained by the International Bureau only if it is

filed through the office of origin. It must contain among other things, (i) a
reproduction of the mark identical with the one given basic registration or contained in
the basic application, (ii) a list of goods and services, classified in accordance with the
Nice Agreement concerning the International classification of Goods and services for
the purpose of Registration of Marks, and (iii) a list of designated countries, party to
the Agreement/Protocol where the protection is sought.

It is to be noted that if within a period of five years of filing the international

application, the home country refuses protection to the trademarks its international
registration in other countries will be cancelled. However, if the home country refusal
does not come within the five-year period, the registration in other countries becomes
independent of it, and is not affected by such refusal.

Since the Madrid System consists of an Agreement and a Protocol, three situations
may arise while filing an international application:

(i) The office of origin is of a Contracting Party, which is party to the Agreement,
but not to the Protocol: In such a case the application is governed exclusively
by the Agreement and all the designated countries have to be party to the
Agreement.

(ii) The office of origin is of a Contracting Party, which is party to the Protocol but
not to the Agreement: In such a case, the application is governed exclusively by
the Protocol and all the designated countries have to be party to the Protocol.

(iii) The office of origin is of a Contracting Party, which is party to both the
Agreement and the Protocol: In such a case any other Contracting Party may be
designated.

Besides being in the appropriate proforma the international application entails

payment of the following fees:

• a basic fee to cover all expenses at the International Bureau;

• a complementary fee in respect of each designated country; and
• an individual fee in respect of each country designated under the Protocol which
has declared its wish to receive such fee.

The fees are payable directly to the international Bureau, or to the office of origin if it
accepts to do so on behalf of the International Bureau.

The International Bureau conducts no examination of the application except to see

that it complies with the provisions of the treaties, including the classification of
goods and services listed in the application, as per the international agreement. The
application is then passed on to each designated country to carry out substantive
investigation. The substantive questions to be examined at the rational level are
basically two: (i) Whether the mark is capable of distinguishing goods and services
and there is a valid subject matter of protection as intellectual property, (ii) Whether it
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will come into conflict with another trademark already registered in some body else’s WIPO Administered
Treaties
name.
Each designated country has then to process it according to its national laws and
decide on its own whether to grant protection to the mark through grant of registration
of the mark. The national authority of each designated country has to examine the
application as if it had been filed there directly by the applicant. If any designated
country of the special union refuses the registration, it notifies the International
Bureau of the fact of the refusal, which registers the refusal against the refusing
country in the register. Thus while an application to the International Bureau for
registration of a mark in designated countries does get an international registration at
the Bureau the protection to the mark as intellectual property is to be granted by each
country independently in accordance with its own laws.
If a country decides to refuse protection, such refusal should be conveyed to the
International Bureau generally within twelve months. However, a contracting party
may declare, if it is designated under the protocol, that the time-limit for refusal will
be eighteen months; if the refusal is based on opposition, it may take ever longer to
notify. If no refusal is notified within the time limit by a country, it is taken for the
purpose of protection, as if the mark had been registered there. The date of
international registration has the effect as if the application for each designated party
has been made on the same date. Thus the international registration in effect is
equivalent to a bundle of national registrations. It is possible to transfer international
registration to a new owner in respect of some designated countries; such registration
can also be invalidated in respect of one or more countries for some reasons like non-
use in the country. In case of infringement, action has to be brought separately in each
country so affected.
The term of international registration is for 10 years, renewable for further periods of
10 years at a time by paying prescribed fees.
The International Registration of marks under the Madrid system has several
advantages:
a) To the owner of the mark

Once a mark has been registered, or the application for its registration has
been filed in the office of origin, only one international application, in one
language, has to be filed, involving payment of only one fee.

The owner does not have to wait for positive outcome of his application in
each country to get protection. Once international registration is done, failure
to notify refusal within the prescribed time limit means in effect grant of
protection.

Any changes subsequent to registration (e.g. change in name and address, or
in the list of goods and services) may be recorded for several countries
through a single procedural step with a single payment of fee.

There is only one expiry date; registration is to be renewed only at one place.
b) To Trademark Offices

It is not necessary for them to examine whether the application fulfils the
formal requirements or whether the classification of goods or services is in
accordance with the international agreement;

They are not required to publish the mark;

They get due compensation for the work they do; the fees collected by the
International Bureau are transferred to them as per their share.

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Awareness Course on The Madrid Agreement differs from the Patent Cooperation Treaty (PCT) in one
Intellectual Property
Rights
important respect. Under the PCT, international registration does not require
registration in the home country. In the case of the Madrid Agreement, the
international registration depends on registration by home office (Office of origin).
The national registration, besides ensuring that the mark passes the criteria for
registration in the home country, helps in consideration of several issues relating to
quality, morality, public order etc.

Spend SAQ 2
10 min.
(a) What is the Madrid System concerned with?
(b) What treaties constitute the Madrid System?
SAQ 3
Show through a flow diagram the process of international registration of trademarks.
SAQ 4
What is the role of the International Bureau in international registration of
trademarks?
SAQ 5
Is registration in home country necessary for international registration of trademark
under the Madrid System?
SAQ 6
If, after filing of an international application, the home country refuses to register the
trademark in question, what happens to the international registration?

3.4 THE HAGUE SYSTEM OF INTERNATIONAL

PROTECTION OF INDUSTRIAL DESIGNS
This is governed by The Hague Agreement concerning the International Deposit of
Industrial Designs – The Hague Act of 1960.
The contracting states under the Agreement constitute a special Union for the
international deposit of industrial designs. And only the States, which are members of
the International Union for the Protection of Industrial Property may become party to
this Agreement.
The first version of the Hague Agreement came in 1925; it was revised in London in
1934. The present Act came in 1960; and the International Bureau of the WIPO
(Bureau of the International Union for the Protection of Industrial Property)
administers it.
Nationals of a contracting State, party to The Hague Agreement, and persons
domiciled in a contracting State, or persons having a real and effective industrial or
commercial establishment in the territory of a contracting State may deposit designs at
the International Bureau. We shall refer to them as international designs. An
international deposit under the Hague Agreement can be made directly at the
International Bureau, or through the national office of a contracting State if its
national law so permits. If the domestic law of a contracting State requires that the
international deposit shall be made through the national office, but an international
deposit is made directly, this shall not prejudice the effects of the international deposit
in other contracting States.
The international deposit consists of an application in the prescribed format, fees to be
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paid, and photographs or graphic representations of the design. The application should
also indicate among other things the list of contracting States where the protection is WIPO Administered
Treaties
desired, and the description of articles in which the design is to be incorporated. A
multiple deposit is also permitted: it may include several designs but the articles in
which they are intended to be incorporated should belong to the same class of the
International Design Classification.
The International Bureau publishes the reproduction of the deposited photograph or
other graphic representations of each international deposit, along with the date of the
international deposit and other particulars in a periodical bulletin, which is sent to
national offices. The Register of International Designs and all documents filed with
the International Bureau are open for inspection to the public, except in special
circumstance where the applicant after making the deposit has requested for deferment
of publication of the mark.
The registration of the deposit in the International Designs Register has the same
effect in each designated state where the protection is desired in the application, as if
all the formalities required by the domestic law for the grant of protection had been
fulfilled. However, the protection of designs in a state is governed by its domestic
law, subject to the provisions in the Hague Agreement for a minimum term of
protection, which is generally ten years if the deposit is renewed and five years in the
absence of renewal, from the date of international deposit.
If a State cannot grant protection to an international design under the domestic law, it
notifies the refusal to the International Bureau within six months of the receipt in the
national office of the Bulletin in which the design is published; failing which, the
international deposit becomes effective in that State from the date of deposit.
However, if the domestic law requires novelty examination, and no refusal is notified
within six months the protection shall be effective from the expiry of this period.
If a design is first submitted in a State party to the Hague Agreement and within six
months of it the international deposit is made, the priority date of the first deposit can
be claimed as the priority date for the international deposit.
An international deposit may be renewed every five years on payment of a fee. In a
multiple deposit, renewal may be limited to only some of the designs.
For granting the protection, the contracting States cannot put a condition that a notice
regarding the international deposit of the design is borne by an article incorporating
the design. If for any other purpose there is such a requirement under the domestic
law, it will be sufficient, if all the articles legally offered with the design, or all tags
attached to such articles bear the international design notice, a capital D in a circle,
accompanied by the year, the name or abbreviation of the name, and the number of the
international deposit.
The fees for international deposit consist of a fee for the international bureau and a fee
for the designated states.
The Hague Agreement creates an International Designs Committee (IDC) consisting
of representations of all the contracting States. Its duties and powers include amending
Regulations as and when necessary establishing the International Designs
Classification and studying all matters concerning the international protection of
designs including the application and revision of the Hague Agreement. The
Committee meets at least once every three years.

3.5 THE LISBON AGREEMENT OF THE PROTECTION

OF APPELLATIONS OF ORIGIN
The Lisbon Agreement was signed on October 31, 1958, revised at Stockholm in 1967
and amended in 1979. It establishes a special Union of contracting States party to the
Agreement where each member undertakes to protect in its territory, the appellations
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Awareness Course on of origin of products of other countries of the Union, which are so recognised and
Intellectual Property
Rights
protected in their own countries and registered at the International Bureau of
Intellectual Property of the WIPO.
The Lisbon Agreement differs in a basic aspect from the Madrid Agreement and the
Hague Agreement. While the Madrid, and The Hague Agreements deal with
intellectual property that is owned by individuals, the appellation of origin, which is
the concern of the Lisbon Agreement, is not the property of any individual or even a
few individuals. It is, as defined in the Lisbon Agreement, the geographical name of a
country, region, or locality, which serves to designate a product originating therein,
the quality and characteristics of which are due exclusively or essentially to the
geographical environment, including natural and human factors. The Lisbon
Agreement is hardly concerned with rights of private owners of industrial property.
The Lisbon Agreement also constitutes a Special Union of the contracting States. A
member State may apply to the International Bureau for registration of an appellation
of origin in the name of any natural persons or legal entities - public or private, which
have a right to use such appellation under the national law. The International Bureau,
on receipt of application, registers the appellation of origin and notifies the officers of
the members of the special Union and publishes them in a periodical.
A member country of the Union may, within one year of such notification from the
International Bureau, declare that protection cannot be granted to the appellation
within its territory, and notify the International Bureau about it giving grounds for
such declaration. However, each country of the special Union has to offer protection
to an appellation of origin, if such protection is available to it by virtue of other
international instruments, e.g. the Paris Convention.

Spend SAQ 7
3 min.
What is the basic difference between appellation of origin on the one hand, and an
industrial design or a trademark, as industrial property?

3.6 SUMMARY
• IPRs are granted under national statutes and have therefore territorial limitations.
They are valid only within the boundaries of the country that grant them.

• Organizations like WIPO help in solving the difficulties in international filing of

applications for IP protection.

• The WIPO administered treaties fall into three groups: (i) the treaties that offer
legal protection as agreed to among the members; (ii) the treaties that facilitate
international protection; (iii) the treaties that establish classification systems and
procedures.

• Presently WIPO administers 21 treaties. Each treaty constitutes a Union of

members.

• WIPO facilitates international registration of patents under the Patent Cooperation

Treaty (PCT), of trademarks under the Madrid System, of industrial designs under
the Hague System, and of appellation of origin under the Lisbon Agreement.

• Under the Patent Cooperation Treaty an inventor has to file only one application,
designating the countries where patent protection is desired for an invention. The
International Bureau (the WIPO Secretariat) completes the three stages of
processing at its own level, viz. filing and acceptance of application, search and
examination for patentability, and advertising and inviting opposition to
application. For the final stage, the grant of patent, the application is forwarded to
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 national offices of designated countries for final examination and grant or refusal WIPO Administered
Treaties
of patent under their national laws. The priority date in each country is the same
as of international application accepted by the International Bureau.

• A patent granted by a regional patent office is valid for the territories of all the
member States forming the region.

• The Madrid System for registration of trademarks consists of an Agreement, and a

Protocol.

• The international application is filed at the International Bureau in prescribed

proforma and accompanied with a fee, designating countries where protection is
desired. This application can be filed if the mark is already registered in the home
country of the applicant, or if at least an application (the basic application) has
been filed for it in the home country (the office of origin).

• If the basic application is rejected in the home country within five years of filing
the international application, its registration in all other countries will have to be
cancelled. However, if the home-country refusal comes after the five years it will
not affect registration in other countries.

• The International Bureau conducts no examination of the application, except to

ensure that it complies with the treaties.

• The period of international registration is 10 years, renewable for further periods

of 10 years, on payment of fees for each renewal.

• Under the Hague System, an applicant has to deposit the design to be protected at
the International Bureau.

• The International Bureau publishes the photo or graphic representations of the

deposit and other details in a Bulletin and forwards it to designated national
offices to examine the grant of protection according to national laws.

• Any refusal is to be notified to the International Bureau within six months.

• The Lisbon Agreement is concerned with the protection of appellation of origin,

and as such it is not concerned with the protection of any rights of private owners
of industrial property. A member State may apply to the International Bureau for
registration of an appellation of origin in the name of any natural persons or legal
entities, which have a right under the national law to use the appellation.

3.8 ANSWERS AND HINTS TO SAQs

SAQ 1
The PTC’s main aim is to facilitate obtaining of patents in several countries. It offers
an international system for making patent applications, that makes it easy and cost
effective to file patent applications internationally, conduct prior art searches and
make preliminary examination report on the application. After these steps the
application is sent to national offices for consideration of grant of patent. The PCT
itself can grant no patents because a patent is the creation of a national statute and is
subject to territorial limitations. The date of international application is preserved as
priority date in all designated countries.
SAQ 2
(a) International registration of trademarks
(b) (i) The Madrid Agreement
(ii) The Madrid Protocol relating to that Agreement
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Awareness Course on
Intellectual Property
Rights
SAQ 3
Application filed with International Bureau,
WIPO, Geneva, designating countries where
protection is sought

Trademark registered; forwarded to designated

countries by WIPO

Modify
register
National examination for registrability of
trademark

If refusal notified Y
to International
Bureau?

Registration sealed

SAQ 4
The International Bureau receives application, makes sure that formal requirements
under the treaties have been fulfilled, examines the list of protected goods and
services accompanying the application to check if it conforms with the Nice
classification.
SAQ 5
Yes; however, if the international application is made exclusively under the Madrid
Protocol, the applicant must have filed an application for registration in the home
country.
SAQ 6
The international application depends, for a period of five years, on the national
registration. If within 5 years of filing the international application, the home country
refuses registration to the trade mark on any ground, the international registration is
cancelled. However, if the home-country refusal comes after 5 years of filing the
international application, it does not affect the international registration.
SAQ 7
The Madrid system is concerned with international registration of trademarks and the
Hague system with industrial designs. Private owners own both of these kinds of
intellectual property. Appellation of Origin is a geographical name and is therefore not
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the private property of any individual.