The Paris Convention and Industrial Property

IPR I · Unit III · Topic 6 of 9 · 7 min read

The Paris Convention of 1883 as the first multilateral IP treaty: its subject matter, national treatment, the right of priority, independence of patents and marks, compulsory licences for non-working, well-known marks, unfair competition, the special agreements built on it (PCT, Madrid, Hague, Lisbon), its incorporation into TRIPS, and its effect in Indian law.

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On this page

1. Origin
2. Subject matter: Article 1
3. National treatment: Articles 2 and 3
4. Right of priority: Article 4
5. Independence: Articles 4bis and 6
6. Specific rules
7. The special agreements
8. Paris in Indian law
How this is examined

Cases checked to exist. Read the judgment before quoting a holding.

Every case cited here has been checked to exist — the citation resolves and names the right parties. The propositions attributed to each case have not been verified line by line against the judgment. Case names link through to the full judgment: read it before quoting a holding in an examination answer, and never carry a proposition from notes into court on trust.

Scope. Paris governs industrial property; Berne governs literary and artistic works (see the WIPO note in IPR II). Most questions ask for the “basic principles” of Paris. These are three: national treatment, right of priority, and independence. Learn them with their article numbers and an Indian example of each.

1. Origin

The Paris Convention for the Protection of Industrial Property was signed on 20 March 1883 by eleven states and came into force in 1884. The immediate cause was the reluctance of foreign inventors to exhibit at the Vienna International Exhibition of 1873 for fear that their inventions would be copied and patented by others in Austria. A diplomatic conference in Paris in 1880 produced the draft. The Convention was revised several times, at Brussels (1900), Washington (1911), The Hague (1925), London (1934), Lisbon (1958) and Stockholm (1967), and amended in 1979. It is administered by WIPO. India acceded in 1998, as part of its TRIPS commitments.

2. Subject matter: Article 1

Article 1(2) states that the protection of industrial property has as its object patents, utility models, industrial designs, trademarks, service marks, trade names, indications of source or appellations of origin, and the repression of unfair competition. Article 1(3) gives industrial property its broadest sense, applying not only to industry and commerce proper but also to agricultural and extractive industries and to all manufactured or natural products, such as wines, grain, tobacco leaf, fruit, cattle, minerals, mineral waters, beer, flowers and flour. Article 1(1) constitutes the member countries as a Union for the protection of industrial property.

3. National treatment: Articles 2 and 3

Nationals of any Union country enjoy in all other Union countries the advantages that their respective laws grant to their own nationals, without any requirement of domicile or establishment as a condition of protection (Article 2). Nationals of non-Union countries who are domiciled or have a real and effective industrial or commercial establishment in a Union country are treated as Union nationals (Article 3). National treatment does not harmonise laws; it forbids discrimination. A US applicant in India gets exactly what an Indian applicant gets under the Patents Act, no more and no less.

4. Right of priority: Article 4

An applicant who files a regular application in one Union country may, within a fixed period, file in other Union countries and claim the date of the first filing. The periods are twelve months for patents and utility models and six months for industrial designs and trademarks. Later filings within that period are not invalidated by acts in between, such as another person’s filing, publication of the invention or use of the mark. Without priority, an inventor who filed at home would lose novelty everywhere else on publication. In India section 135 of the Patents Act and section 154 of the Trade Marks Act give effect to the priority rule for convention countries.

5. Independence: Articles 4bis and 6

Patents granted in different Union countries for the same invention are independent of each other (Article 4bis). Refusal, revocation or expiry in one country does not affect the patent elsewhere. The same applies to trademarks once registered (Article 6(3)), although Article 6quinquies requires a mark duly registered in the country of origin to be accepted for filing and protected “as is” (telle quelle) in other countries, subject to listed exceptions. Independence is the reason an Indian court can refuse or revoke a patent that the US or the EPO has granted, as in Novartis, and the reason a patent may be in force in India and expired in its home country.

6. Specific rules

Article 4ter: the inventor has the right to be mentioned as such in the patent.
Article 5A: importation by the patentee of articles made in another Union country does not entail forfeiture; each country may provide for compulsory licences to prevent abuses such as failure to work. A licence for failure to work may not be applied for before four years from filing or three years from grant, whichever is later, and must be non-exclusive. Forfeiture is allowed only if compulsory licences have been insufficient. The three-year period in section 84 of the Patents Act follows this.
Article 5bis: a grace period of at least six months for payment of renewal fees.
Article 5ter: patented devices on vessels, aircraft or land vehicles temporarily in a country do not infringe.
Article 6bis: Union countries must refuse or cancel registration and prohibit use of a mark that is a reproduction or imitation, liable to create confusion, of a mark considered by the competent authority to be well known in that country as being already the mark of a person entitled to the benefits of the Convention and used for identical or similar goods.
Article 6ter: protection of state emblems, flags and the emblems of intergovernmental organisations.
Article 8: trade names are protected in all Union countries without the obligation of filing or registration.
Article 10bis: Union countries must assure effective protection against unfair competition, defined as any act of competition contrary to honest practices in industrial or commercial matters, including acts creating confusion, false allegations discrediting a competitor, and misleading indications.
Article 19: Union countries may make special agreements among themselves for the protection of industrial property, so long as they do not contravene the Convention.

The weakness that led to TRIPS. Paris sets few minimum standards. It does not say what must be patentable, how long a patent must last, or how rights must be enforced, and its dispute clause (Article 28, reference to the International Court of Justice) has never been used. Countries such as India could lawfully exclude pharmaceutical products from patents and set short terms. The industrialised states, failing to revise Paris at WIPO in the early 1980s, took IP to the GATT Uruguay Round. TRIPS Article 2(1) now requires all WTO members to comply with Articles 1 to 12 and 19 of the Paris (Stockholm) text, and adds the missing minimum standards and enforcement.

7. The special agreements

Under Article 19 a family of treaties operates on the Paris foundation:

Patent Cooperation Treaty, 1970: one international application with an international search and optional preliminary examination, then national phase entry; India joined in 1998.
Madrid Agreement (1891) and Protocol (1989) for international registration of marks; India joined the Protocol in 2013.
Hague Agreement (1925) for international deposit of industrial designs; India is not a party.
Lisbon Agreement (1958) for appellations of origin, and its Geneva Act (2015) extending to geographical indications; India is not a party.
Classification treaties: Nice (goods and services for marks), Locarno (designs) and Strasbourg (patents).
Budapest Treaty, 1977 on deposit of microorganisms for patent procedure; India joined in 2001.

8. Paris in Indian law

Treaties do not operate in India without legislation, but courts read statutes consistently with them. The well-known mark doctrine of Article 6bis is reflected in sections 2(1)(zg) and 11(6) to (10) of the Trade Marks Act, 1999, and courts had applied trans-border reputation even earlier, in N.R. Dongre v. Whirlpool Corporation, 1996 INSC 971, (1996) 5 SCC 714. In Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd., 2017 INSC 1230, (2018) 2 SCC 1, the Supreme Court held that the territoriality principle governs: a foreign mark must show goodwill among consumers in India at the relevant date, and Toyota failed to show it for “Prius”. That is the national treatment and independence principles at work: the foreign mark gets Indian protection on Indian facts.

How this is examined

“Explain the salient features of the Paris Convention” or “Discuss the basic principles of the Paris Convention.” Open with history and Article 1(2); explain national treatment, priority and independence with articles; list the specific rules (5A, 6bis, 10bis); close with its limits and incorporation into TRIPS, and with the Indian provisions that implement it.

Now try the real questions: IPR I past question papers.