World Intellectual Property Organization

Intellectual Property
Handbook
International Treaties and Conventions on
Intellectual Property.
CHAPTER 5

Submitted by:
Allen M. Obando

Bachelor of Science in Agricultural and Biosystems Engineering

July 15, 2020

WIPO Intellectual Property Handbook l (International Treaties and Conventions

on Intellectual Property.)
Research Objectives

-To provide a visual about the roles of different International treaties and agreements in
connection with the Intellectual Property Rights.

-To elaborate on the advantages and issues that are patterned in each treaty and
agreement.

-To enlist the concerns and the focus of the numerous international agreements and
conventions regarding IP Rights.

Executive Summary

The major international scenario on Intellectual property began with the Paris
Convention in 1883 and happened again from that of the Madrid Agreement of 1891. It
continued in pace for the last 40 years until now. The unison for this major agenda started
from small bilateral talks until recently, access to multinational agreements and
conventions began forming to provide equal treatment for trademark owners, both foreign
and domestic. Multilateral treaties include the following:

-The Madrid Agreement Concerning the InternationalRegistration of Marks and

the Protocol Relating to the Madrid Agreement
-The Hague Agreement Concerning the International Deposit of Industrial
Designs
-The Trademark Law Treaty (TLT)
-The Patent Law Treaty (PLT)
-The Strasbourg Agreement Concerning the International Patent Classification
-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
-The Locarno Agreement Establishing an International Classification for Industrial
Designs
-The Rome Convention for the Protection of Performers, Producers of
Phonograms and Broadcasting Organizations (1961)

These agreements emulate the national laws to a generally accepted model by

adopting a system wherein IPR’s are granted in many countries through a single
registration. The main purposes of these treaties and conventions are the protection of
rights, harmonization of laws, and multilateral filing.
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Body of Research

Intellectual Property Rights have been a subject for international discussions and
conventions in recent years. Intangible assets such as inventions, designs, artistic
creations, and other products of human intellect are becoming increasingly important in
today’s economic environment. As the trading system for these assets had grown
enormously, the need to protect these so-called “intellectual properties’ is also gaining a
lot of concern specifically to those who are entitled to legal protection. Inadequacy to
create treaties or laws to protect intellectual properties may result in a distorted system of
free trade. In developing countries, for example, the protection of intellectual property
rights is often insufficient. They often limit protection to a very narrow subject area
within a short period and is still lacking some strict enforcements from the authority. On
the other hand, some developed countries also have their flaws in the administration of
intellectual properties, as they openly discriminate against foreign nations by providing
excessive protection within them. To address the trade system defects and avoid any
more worst-case scenario, the WTO sought to establish an appropriate framework for the
protection of intellectual property to bring greater order to international trade. There are
already several international treaties that form a common legal framework for the
protection of intellectual property. The Paris Convention, which entered into force in
1883, covers patents, trademarks, and other industrial property rights. The Berne
Convention, which entered into force in 1886 also covers copyrights. However, as
countries pay more attention to the trade-related aspects of this subject, they have
frequently placed intellectual property protection on the agenda of trade negotiations.
Countries recognized that as many governments as possible should take part in framing
an international agreement to establish standards on aspects of trade regarding the
protection of intellectual property. As a result, GATT negotiators developed the Trade-
Related Aspects of Intellectual Property Rights (TRIPS) — one of the most important
new areas in negotiations.

The Madrid Agreement Concerning the International Registration of Marks and

the Protocol Relating to the Madrid Agreement

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
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certain countries or intergovernmental organizations that had not been able to accede to
the Agreement.

The system makes it possible to protect a mark in many countries by obtaining an

international registration that affects each of the designated Contracting Parties.

Advantages of the Madrid System

The Madrid System offers several advantages for trademark owners. Instead of
filing a separate national application in each country of interest, in several different
languages, following different national or regional procedural rules and regulations and
paying several different (and often higher) fees, an international registration may be
obtained by simply filing one application with the International Bureau (through the
office of the home country), in one language (English, French or Spanish) and paying one
set of fees. Similar advantages exist for maintaining and renewing a registration.
Likewise, if the international
registration is assigned to a third party or is otherwise changed, such as a change in name
and/or address, this may be recorded with effect for all designated Contracting Parties
employing a single procedural step.

The Hague Agreement Concerning the International Deposit of Industrial Designs

The Hague Agreement, concluded in 1925, was revised at London in 1934 and at
The Hague in 1960. It was completed by an Additional Act signed at Monaco in 1961
and by a Complementary Act signed at Stockholm in 1967, which was amended in 1979.
As noted above, a further Act was adopted at Geneva in 1999. The Hague Agreement
created a Union, which, since 1970, has had an Assembly. Every member of the Union
that has adhered to the Complementary Act of Stockholm 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 and the adoption and modification of the implementing
regulations, including the fixing of the fees connected with the use of the Hague System.

Two Acts of the Hague Agreement are currently in operation – the 1999 Act and
the 1960 Act. In September 2009, it was decided to freeze the application of the 1934 Act
of the Hague Agreement, thus simplifying and streamlining the overall administration of
the international design registration system. An international design registration may be
obtained only by a natural person or legal entity having a connection through
establishment, domicile, nationality or, under the 1999 Act, habitual residence with a
Contracting Party to either of the two Acts.

The term of protection is five years, renewable for at least one five-year period
under the 1960 Act, or two such periods under the 1999 Act. If the legislation of a
Contracting Party provides for a longer term of protection, protection of the same
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duration shall, based on the international registration and its renewals, be granted in that
Contracting Party to designs that have been the subject of an international registration. To
facilitate access to the Hague System for design creators from least developed countries
(LDCs), the fees for an international application are, in their case, reduced to 10 percent
of the prescribed amounts.

Advantages of the Hague Agreement

The Hague Agreement allows applicants to register an industrial design by filing a

single application with the International Bureau of WIPO, enabling design owners to
protect their designs with minimum formalities in multiple countries or regions. The
Hague Agreement also simplifies the management of industrial design registration, since
it is possible to record subsequent changes and to renew the international registration
through a single procedural step.

The Trademark Law Treaty (TLT)

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 registration 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 to clearly define the requirements for an application or a specific request.

The TLT also contains Model International Forms (MIF) corresponding to the
maximum requirements that a Contracting Party may provide for in respect of a
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 added to the elements referred to in the corresponding
MIF.

Advantages of the Trademark Law Treaty (TLT)

TLT does not allow a requirement as to the attestation, notarization,

authentication, legalization or certification of any signature, except in the case of the
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surrender of a registration. A single request is enough even where the change relates to
more than one possibly hundreds of trademark applications or registrations, provided that
the change is recorded pertains to all registrations or applications concerned.
Furthermore, the TLT provides that a power of attorney may relate to several applications
or registrations by the same person or entity.

The Patent Law Treaty (PLT)

The PLT was concluded in 2000 and entered into force in 2005. The aim of the
Patent Law Treaty (PLT) is to harmonize and streamline formal procedures in respect of
national and regional patent applications and patents and, thus, to make such procedures
more user friendly. The Treaty contains provisions on the following issues:

Requirements for obtaining a filing date were standardized to minimize the risks
that applicants could inadvertently lose the filing date, which is of utmost importance in
the patent procedure. A set of formal requirements for national and regional applications
was standardized by incorporating into the PLT the requirements relating to form or
content of International applications under the PCT, including the contents of the PCT
request form and the use of that request Form accompanied by an indication that the
application is to be treated as a national application. Several procedures before patent
offices were simplified, which contributes to a reduction in costs for applicants as well as
for offices. The implementation of electronic filing is facilitated while ensuring the co-
existence of both paper and electronic communications.

Advantages of the Patent Law Treaty (PLT)

From the viewpoint of inventors, applicants, and patent attorneys, standardization

and simplification of the formality requirements lead to a reduced risk of formality errors
and thus will result in a less frequent loss of rights as well as in cost reductions. They
may rely on a familiar set of patent formalities in all countries party to the PLT, since the
PCT provisions regarding form or content of an international application, which are
incorporated by reference into the PLT, are known to applicants and patent attorneys of
many countries. Further, due to the possibility of correcting formality defects before the
Offices and to the introduction of various procedures tending to avoid the loss of rights,
they may face a reduced risk of loss of rights through failure to comply with formality
requirements.

The Strasbourg Agreement Concerning the International Patent Classification

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on Intellectual Property.)
 The Strasbourg Agreement establishes the International Patent Classification
(IPC) which divides technology into eight sections with approximately 70,000
subdivisions. Each subdivision is denoted by a symbol consisting of Arabic numerals and
letters of the Latin alphabet. The appropriate IPC symbols are indicated on patent
documents (published patent applications and granted patents), of which over 2 million
are issued each year. The appropriate symbols are allotted by the national or regional
industrial property office that publishes the patent document. For PCT applications,
IPC symbols are allotted by the International Searching Authority. Classification is
indispensable for the retrieval of patent documents in the search for “prior art”. Such
retrieval is needed by patent-issuing authorities, potential inventors, research and
development units, and others concerned with the application or development of
technology. Although only 62 States are party to the Agreement, the IPC is used by the
patent offices of more than 100 States, four regional offices and the Secretariat of WIPO
in administering the Patent Cooperation Treaty (PCT) (1970)
Advantages of the Strasbourg Agreement Concerning the International Patent
Classification

As the primary purpose, the IPC is to be an effective search tool for the retrieval
of relevant patent documents by industrial property offices and other users to establish
the novelty and evaluate the inventive step (including the assessment of technical
advance and useful results or utility) of patent applications.” It also serves as:

- an instrument for the orderly arrangement of patent documents to facilitate access

to the information contained therein.
- a basis for selective dissemination of information to all users of patent information.
- a basis for investigating the state of the art in given fields of technology.
- a basis for the preparation of industrial property statistics which in turn permit the
assessment of technological development in various areas.”
The Nice Agreement Concerning the International Classification of Goods and
Services for the Registration of Marks

The Nice Agreement establishes a classification of goods and services to register

trademarks and service marks (the Nice Classification). The trademark offices of
Contracting States must indicate, in official documents and publications in connection
with each registration, the numbers of the classes of the Classification to which the goods
or services for which the mark is registered belong.

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The Classification consists of a list of classes
– 34 for goods and 11 for services – and an alphabetical list of the goods and services.
The latter comprises 11,000 items. Both lists are amended and supplemented
periodically by a Committee of Experts in which all Contracting States are represented.
The current edition of the Classification is the tenth, which entered into force on
January 1, 2012.
Although only 83 States are party to the Nice Agreement, the trademark offices of
about 65 additional States, as well as the International Bureau of WIPO, the African
Intellectual Property Organization (OAPI), the African Regional Intellectual Property
Organization (ARIPO), the Benelux Organisation for Intellectual Property (BOIP) and
the Office for Harmonization in the Internal Market (Trade Marks and Designs) (OHIM)
of the European Union (EU), also use the Classification.

Advantages of the Nice Agreement Concerning the International Classification of

Goods and Services for the Registration of Marks

Article 2(2) of the Nice Agreement provides that each of the Nice Union
countries will reserve the right to use the Nice Classification either as a principal system
or as a subsidiary system. This means that the Nice Union countries are free to adopt the
Nice Classification of Goods and Services as the sole classification to be used for the
purposes of registration of marks, or to keep an existing national system of classification
of goods and services and to use the Nice Classification as a supplementary classification
which will also be shown in the official publications of marks. Finally, Article 2(4) of the
Nice Agreement stipulates that the fact that a term is included in the Alphabetical List of
Goods and Services of the Nice Classification in no way affects any rights which may
subsist in that term.

The Vienna Agreement Establishing an International Classification of the

Figurative Elements of Marks

The Vienna Agreement establishes a classification (the Vienna Classification) for

marks that consist of, or contain figurative elements. The competent offices of
Contracting States must indicate in official documents and publications relating to
registrations and renewals of marks the numbers of the categories, divisions, and sections
of the Classification to which the figurative elements of those marks belong. A
Committee of Experts in which all Contracting States are represented, set up under the

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Agreement, is entrusted with the task of periodically revising the Classification. The
current (seventh) edition has been in force since January 1, 2013.
The Classification consists of 29 categories, 145 divisions, and some 1,700
sections in which the figurative elements of marks are classified. Although only 31 States
are party to the Vienna Agreement, the Classification is used by the industrial property
offices of at least 30 other States, as well as by the International Bureau of WIPO, the
African Intellectual Property Organization (OAPI), the Benelux Organisation for
Intellectual Property (BOIP) and the Office for Harmonization in the Internal Market
(Trade Marks and Designs) (OHIM) of the European Union (EU).

Advantages of the Vienna Agreement Establishing an International Classification of

the Figurative Elements of Marks
The internationalization of industrial, technical, and commercial relations
demands the creation of uniform tools of work in the industrial property field. Such is the
case of the international classifications produced by cooperation between States, and
through which the national Offices are provided with tools which each of them would
otherwise have been obliged to establish and maintain. When documents are exchanged,
there is no need to reclassify them. In the specific field of marks, there already exists an
International Classification of Goods and Services established by the Nice Agreement of
June 15, 1957. That Classification constitutes for the Offices responsible for anticipation
searching a working tool whose usefulness and effectiveness have long since been
proved. However, in carrying out those searches, it is also necessary to classify the
figurative elements of marks. Thus, a uniform classification facilitates the anticipation
searching work of the National Offices. For its part, the International Bureau of WIPO
uses the International Classification of the Figurative Elements of Marks for coding the
figurative marks that are internationally registered under the Madrid Agreement and the
Protocol Relating to the Madrid Agreement.

The Locarno Agreement Establishing an International Classification for Industrial

Designs

The Locarno Agreement establishes a classification for industrial designs (the

Locarno Classification). The competent offices of the Contracting States must indicate in
official documents reflecting 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. This must also be done in any publication the offices issue in respect of
the deposit or registration of industrial designs. The Classification consists of a list of 32
classes and 219 subclasses and an alphabetical list of goods with an indication of the
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class and subclass to which each product belongs. The latter comprises approximately
7,000 items.

A Committee of Experts in which all Contracting States are represented, set up

under the Agreement, is entrusted with the task of periodically revising the Classification.
The current edition is the ninth, which entered into force on January 1, 2009. The
Classification is applied by 52 States party to the Locarno Agreement. The Classification
is also applied by the International Bureau of WIPO in the administration of the Hague
Agreement Concerning the International Registration of Industrial Designs (see the
relevant Summary in this series), and by the African Intellectual Property Organization
(OAPI), the African Regional Intellectual Property Organization (ARIPO), the Benelux
Organization for Intellectual Property (BOIP) and the Office for Harmonization in the
Internal Market (Trade Marks and Designs) (OHIM) of the European Union (EU).

Advantages of the Locarno Agreement Establishing an International Classification

for Industrial Designs

Each country may attribute to such classification the legal consequences, if any,
which it considers appropriate. In particular, the Locarno Classification does not bind the
countries of the Locarno Union as regards the nature and the scope of protection afforded
to the design in those countries (Article 2(1)). Further, Article 2(2) of the Locarno
Agreement provides that each of the countries of the Locarno Union reserves the right to
use the Locarno Classification either as a principal or as a subsidiary system. This means
that the countries of the Locarno Union are free to adopt the Locarno Classification as the
only classification to be used for industrial designs, or to maintain an existing national
classification system for industrial designs and to use the Locarno Classification as a
supplementary classification, also to be included in official documents and publications
concerning the deposit or registration of designs. Finally, Article 2(4) of the Locarno
Agreement provides that the inclusion of any word in the Alphabetical List of Goods is
not an expression of opinion of the Committee of Experts, on whether such a word is
subject to exclusive rights.

The Rome Convention for the Protection of Performers, Producers of Phonograms

and Broadcasting Organizations (1961)
The Rome Convention secures protection in performances for performers, in
phonograms for producers of phonograms and in broadcasts for broadcasting
organizations.
Performers (actors, singers, musicians, dancers and those who perform literary or
artistic works) are protected against certain acts to which they have not consented, such
as the broadcasting and communication to the public of a live performance; the fixation
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of the live performance; the reproduction of the fixation if the original fixation was made
without the performer’s consent or if the reproduction was made for purposes different
from those for which consent was given.

Producers of phonograms have the right to authorize or prohibit the direct or indirect
reproduction of their phonograms. In the Rome Convention, “phonograms” means any
exclusively aural fixation of sounds of a performance or other sounds. Where a
phonogram published for commercial purposes gives rise to secondary uses (such as
broadcasting or communication to the public in any form), a single equitable
remuneration must be paid by the user to the performers, to the producers of the
phonograms, or to both. The Contracting States are free, however, not to apply this rule or
to limit its application.
Broadcasting organizations have the right to authorize or prohibit certain acts,
namely the rebroadcasting of their broadcasts; the fixation of their broadcasts; the
reproduction of such fixations; the communication to the public of their television
broadcasts if such communication is made in places accessible to the public against
payment of an entrance fee.

Advantages of the Rome Convention for the Protection of Performers, Producers of

Phonograms and Broadcasting Organisations (1961)

Most of the States party to the Rome Convention are developing countries. This is
quite natural since most developing countries attach great importance to music, dance,
and other creations in their national heritage. The value of the Rome Convention to such
countries stems from the fact that it affords protection to those who contribute to the
dissemination of that heritage abroad. The Convention is particularly important to those
countries whose civilization and tradition are oral and where the author is often the
performer as well. In this context, the place occupied by expressions of folklore must be
borne in mind and the interests of the artists constantly performing, and thus perpetuating
them, must be safeguarded when use is made of their performances. By also protecting
the producers of phonograms, the Rome Convention promotes, particularly in developing
countries, an industry in a dynamic tertiary sector of the economy. Such an industry,
while guaranteeing the dissemination of national culture, both within the country and
throughout the world, can additionally constitute a substantial source of revenue for the
country’s economy and, in those cases where its activities extend beyond frontiers, can
attract an influx of foreign currency.

Conclusion

WIPO Intellectual Property Handbook l (International Treaties and Conventions

on Intellectual Property.)
 IP risks represent an ambiguous topic. Developing risk management strategies
through the implementation of several fundamentals and assessments is the key motive of
these treaties and conventions. With this foundation already established, organizations
should only focus on properly executing mitigation programs and aligning strategic goals
into their network. The discussed treaties and conventions in this paper construct strong
IP rights protection, helping not only the owner but the consumers that will make a
purchase. With these conventions being held, consumers will surely enjoy authentic and
high-quality products with ease in mind. In conclusion, these mechanisms and
agreements were all advantageous at their focus. Some of which protect inventions while
others give protection towards industrial/layout design. Some of them protect the
geographical name but others simply distinguish signs and symbols through trademarks
and certification. They all offer different protections but they share the same function; to
give ease and ensure that the creators are being recognized.

References
▪ International Bureau of WIPO, World Intellectual Property Organization (WIPO):
WIPO Intellectual Property Handbook , WIPO Publication No. 489 (E) , p. 287-
320

WIPO Intellectual Property Handbook l (International Treaties and Conventions

on Intellectual Property.)