The Paris Convention

Trademarks / Trademark Law / Madrid Protocol

The Paris Convention for the Protection of Industrial Property (“Paris Convention”) was the first attempt at what became the thrust towards "harmonization", a concept that pervades all of the recent treaties and international activities in intellectual property law. Originally, rights arising out of trademarks were severely limited in their geographical scope, each nation having its own law and practice independent of all others. Not until the late 19th century did nations consider cooperating in order to protect the rights of their nationals in neighboring nations. When these nations also recognized that the trademark rights afforded by their neighbors were completely different from those of their own, the desire grew to have trademark rights and laws bear a certain similarity in these neighboring countries so that nationals of one nation would not be greatly disadvantaged in another nation. Hence arose the beginning of the concept that we today, in the various intellectual property disciplines, refer to as "harmonization."

The Paris Convention, established as a result of the efforts of inventors and industrialists, was the most far-reaching example of an attempt at uniform treatment of trademark owners and international trademark law. The initial objective of the convention was "the creation of a union which, without encroaching on the municipal law of the contracting countries, would lay down a number of general principles securing the interests of industrial property in the interior of a country as well as abroad." [20] The Paris Convention was originally signed by representatives of eleven countries[21] on March 20, 1883 and became effective on March 7, 1884. Today, numerous countries[22] are members of the Paris Convention.

The Convention has undergone several revisions, the most recent being the Stockholm Amendment of July 14, 1967. The primary provisions with respect to trademarks are summarized as follows:

Articles 2 and 3 - Eligible Parties

Under Article 2, nationals of member countries enjoy the protection of trademarks in other member countries as provided by respective national laws. Under Article 3, nationals of non-member countries who are domiciled or have real and effective industrial or commercial establishments in a member country are protected as nationals of Paris Convention countries.

Article 4 - Convention Priority

Any eligible party who has duly filed an application for registration of a trademark in a member state enjoys, for the purpose of filing in other member countries, a right of priority for 6 months from the date of filing.

Article 6^bis - Well-known Marks

Marks considered well-known by the competent authority of the country where such protection is claimed are also protected as marks of persons entitled to the benefits of the Paris Convention.

Article 6^quinquies - telle quelleRegistration

According to this provision, every trademark duly registered in a party's country of origin shall be accepted for filing and protected in its original form ("telle quelle") in the other countries of the Convention.

Article 6^sexies - Protection of Service Marks

Thisarticle provides that it is necessary to provide protection, if not registration, for service marks, but has been modified by the World Trade Organization Agreement, pursuant to which all member countries must also provide for registration of service marks.

Article 6^septies - Unauthorized Registration by Agent or Representative

This article ensures that those parties who, in violation of, or in spite of, their contractual obligations with rightful trademark owners, register such marks in their own name, cannot retain such bad faith registrations.

Article 8 - Protection of Trade Names

Trade names may be protected in all countries of the Paris Convention without the requirement of filing or registration applicable under national law, whether or not such names form part of a trademark, thereby recognizing the importance of trade names with respect to intellectual property.

Article 10 ^bis - Unfair Competition

Marks owned by persons entitled to the benefits of the Paris Convention are protected against acts of unfair competition, although the definition of unfair competition has been left to local law. Sanctions for such acts may include injunctions, actions for damages, and criminal penalties in cases of violation of rights revealing a criminal character.

[20] Ladas, Stephen P., Patents, Trademarks, and Related Rights, National and International Protection, Harvard University Press, 1975, p. 63.

[21] Belgium, Brazil, France, Guatemala, Italy, Netherlands, Portugal, Salvador, Serbia, Spain and Switzerland.

[22] See www.wipo.org.

[Home] [About Ladas & Parry LLP] [Contact Us] [Search]
[Trademarks] [Domain Names & E-Commerce] [Patents & Copyrights]
[Litigation] [IP Rights Maintenance] [IP as Property] [News & Bulletins]