Paris Convention (The Basics)
What is National Treatment?
his fundamental principle, enshrined in Article 2 of the Paris Convention, obligates each member state to grant the same level of industrial property protection to nationals of other member states as it grants to its own nationals. It also prohibits imposing domicile or establishment requirements on foreigners to enjoy these rights.
What is the primary function and standard duration of a trademark?
Its primary function is to be a sign capable of distinguishing the goods or services of one enterprise from those of other enterprises.11 The standard term of protection in most jurisdictions is 10 years, but it is infinitely renewable, provided fees are paid and the mark is in use.
What is a "basic mark" or "basic application"?
This is the prerequisite for filing an international application under the Madrid System. An applicant must first have a national application or national registration (known as the "basic mark") in their "Office of origin". The international application must be identical to this basic mark regarding the mark, the owner, and the goods/services
What is a Geographical Indication (GI)?
According to WIPO, it is a sign used on products that have a specific geographical origin and possess a quality, reputation, or other characteristic that is essentially attributable to that place of origin.
What is the Lisbon System?
This is the WIPO international system, administering the Lisbon Agreement (1958), which was originally created for the international registration and protection of Appellations of Origin (AOs).
What is the Right of Priority (or Convention Priority) for trademarks?
According to Article 4 of the Paris Convention, this period is 6 months for trademarks and industrial designs. It allows an applicant who filed first in one member country to file in other countries, and have those subsequent applications treated as if they were filed on the same day as the first.
What are "fanciful" and "arbitrary" marks?
"Fanciful" marks are invented or "coined" words with no prior meaning (e.g., Kodak).14 "Arbitrary" marks are real words that have no logical connection to the product they identify (e.g., Apple for computers).14
What is the main difference between the Madrid Agreement and the Madrid Protocol?
The Madrid Protocol (1989) made the system more flexible than the older Madrid Agreement (1891). A key difference: The Protocol allows filing an international application based on a basic application, whereas the Agreement required an existing basic registration. The Protocol also added English and Spanish (the Agreement was French-only) and set the term to 10 years (the Agreement's was 20).
What are two main ways to protect GIs using the trademark system?
Besides sui generis (special) laws, GIs can be protected using the existing trademark system. The two primary methods are registering the GI as a collective mark (owned by an association of producers) or a certification mark (certifying compliance with standards, including origin).
What is the precondition for registration under the Lisbon System?
Similar to the "basic mark" in Madrid, an AO (or GI) must be already recognized and protected as such in its "Contracting Party of Origin" through legislative, administrative, or judicial means before it can be filed for international registration.
What is the protection for well-known marks?
Article 6bis of the Paris Convention. It obligates member countries, either $ex officio$ or at the request of an interested party, to refuse or cancel the registration of a mark that is a reproduction or imitation of a "well-known" mark, even if that well-known mark is not registered in that country.
What is the difference between "suggestive" and "descriptive" marks?
A "suggestive" mark hints at a quality or characteristic, requiring imagination from the consumer (e.g., Netflix for "flicks on the net"). A "descriptive" mark directly describes a feature, quality, purpose, or ingredient (e.g., SUNNY for lamps). Suggestive marks are protectable; descriptive marks generally are not
What is the five-year "dependency" period?
This is the 5-year period from the date of international registration during which the international registration is completely dependent on the fate of the "basic mark" in its Office of origin.
What is the key difference between a Geographical Indication (GI) and an Appellation of Origin (AO)?
An Appellation of Origin (AO) is a stricter type of GI. An AO requires that the product's quality and characteristics be due exclusively or essentially to the geographical environment. For a GI (in its broader definition), it is often sufficient that a reputation or other characteristic is linked to the place of origin.
What are the two main innovations of the Geneva Act of the Lisbon Agreement (2015)?
This is the system's latest update (which entered into force in 2020). It introduced two key changes: 1) it expanded the scope from just AOs to include all Geographical Indications (GIs), and 2) it allowed intergovernmental organizations (like the European Union) to join the system.
What is the principle of Independence of Protection?
This principle, found in Article 6(3) of the Paris Convention, states that a trademark duly registered in one member country shall be regarded as independent of marks registered in other countries, including the country of origin. This means the cancellation of a mark in its home country does not automatically invalidate it elsewhere.
What is "acquired distinctiveness"?
This is a doctrine, also known as "secondary meaning," that allows marks which are not inherently distinctive (like descriptive terms) to gain legal protection. This happens when, as a result of long and exclusive use, consumers come to associate the mark not with the product itself, but with a specific source (e.g., Apple or Coca-Cola).
What is "central attack"?
This is the most well-known vulnerability of the Madrid System. If the "basic mark" is cancelled or ceases effect in its Office of origin within the 5-year dependency period, the WIPO International Bureau will cancel the entire international registration to the same extent. This vulnerability is unique to the Madrid System and not found in the Hague or PCT systems.
What are "natural and human factors" (in the context of AOs)?
This key phrase in the Lisbon Agreement's definition of "Appellation of Origin" (Article 2(1)) means the quality of the product is derived from its geographical environment. This environment includes both natural factors (climate, soil) and human factors (traditional production methods, local know-how).
What is ex officio protection (in the context of the Lisbon System)?
Unlike trademark protection, which often requires action from the owner (like filing an opposition), the Lisbon System provides a higher level of protection. In many member states, authorities are required on their own initiative (ex officio) or at a party's request to refuse or invalidate a later trademark that conflicts with a Lisbon-registered GI/AO.
What is "industrial property" (as defined by the Paris Convention)?
According to Article $1(2)$ of the Paris Convention, this term is "understood in the broadest sense" and applies not just to industry and commerce, but also to agriculture. It includes patents, trademarks, industrial designs, trade names, and also "indications of source," "appellations of origin," and the "repression of unfair competition".
What are non-traditional trademarks?
These are marks that go beyond the traditional word or logo. Examples include three-dimensional marks (the shape of a product or its packaging), sound marks (jingles or melodies), and non-visible marks such as scents (olfactory) or shades of color by themselves.
What is "transformation"?
This is a "safety net" feature provided by the Madrid Protocol. If an international registration is cancelled as a result of a "central attack," its owner has the right (usually within 3 months) to "transform" it into a series of separate national applications in each of the previously designated countries. These new national applications retain the original international registration date and any applicable priority.
What is the "genericide" of a geographical indication?
This is the process by which a protected Geographical Indication loses its distinctiveness in a specific jurisdiction and becomes the common (generic) name for a type of product (e.g., "Parmesan" or "Feta" in the US). This often happens because migrants brought the name with them and began production elsewhere, or due to a lack of timely legal protection.
What is the Lisbon System's special mechanism that prevents "genericide" of its registered indications?
This is the system's strongest defense. Article 12 of the Geneva Act (and a similar rule in the Agreement) states that a GI/AO protected under the Lisbon system cannot be deemed to have become generic in a member country, as long as it is still protected in its country of origin.