BERNE CONVENTION

BACKGROUND

The Berne Convention dates back to 1886. Until today, it has undergone five revisions, the most recent being the Paris amendment in 1971 later amended in 1979. It deals with the protection of works and the rights of their authors. This Convention is based on three basic principles and several provisions to deal with the minimum protection to be granted.

BACKGROUND

There are three core principles that make up the Berne Convention. These are:

  • National Treatment:this means that works originating in a member state receive the same treatment whether the author is domestic or foreign national. Any Berne member must provide the author the same treatment as it would provide to its own nationals for their works.
  • Automatic Protection:this means that no formalities are required for protection of the work. Member states do not require the authors to give notice of the copyrighted status of the work in order to provide protection for the work.
  • Independence:: international copyright protection under Berne is independent of the status of protection the country where the work originated. Protection in each member state is governed by their own domestic laws.

WORKS PROTECTED

Article 2 of the Convention deals with the types of work that it protects. According to this article, the Convention applies to “every production in the literary, scientific and artistic domain, whatever may be the mode or form of its expression.” This article also contains a non-exclusive list of the types of work that this convention protects. It is upon the member countries to implement additional conditions of fixation in a material form as a requirement of protection. Articles 2 and 2bis allow member states to exclude certain categories from protection such as legislative and administrative work, applied art, industrial models, political speeches, lectures and public addresses.

CONDITIONS FOR PROTECTION

There are two conditions that need to be fulfilled to be granted protection:

  • According to Article 3 of the Convention, it protects all works by nationals and residents of member countries.
  • According to Article 3 of the Convention, neither works of authors who are neither nationals nor residents of member states have to be first published in a Berne member state or published in a Berne member state within 30 days of first publication elsewhere.

However, performances of dramatic, cinematograph, or musical works, etc are excluded by Article 3 as these are communication to the public and cannot be termed as publication. Works of cinema and architecture are protectable under the Convention.

TERM OF PROTECTION

The Berne Convention provides that all works except for photographic and cinematographic works are protected for a period of fifty years after the death of the author. Photographic and cinematographic works are protected for 25 years from the date of creation.

EXTENT OF PROTECTION

Berne mandates two primary categories of rights to the authors of the work: economic rights and moral rights. The economic rights granted to the author are:

  • Translation
  • Reproduction
  • Performance
  • Broadcasting
  • Public recitation
  • Adaptations, arrangements and alterations

Under Article 6bis of the Convention, there are two primary moral rights that are granted to the authors: right of attribution and right of integrity.

Right of attribution refers to the author’s right to be credited by name for his work. Right of integrity refers to the author’s right to object to particular uses of the work which may destroy, distort, mutilate or modify it.

Moral rights are inalienable rights and extend only till the life of the author.

INTEROPERABILITY OF BERNE WITH OTHER MULTILATERAL COPYRIGHT TREATIES

There are three main treaties that interoperate with the Berne Convention for protection of works: Universal Copyright Convention (UCC), TRIPs and the WIPO Copyright Treaty (WCT).

The UCC dates back to 1952 and contains lesser protection than the Berne Convention. There are certain disadvantages of the UCC as there is no provision for moral rights, the protection is granted only for a period of 25 years and requires formal notices for protection.

TRIPs require the signatories to comply with the requirements of Berne except for moral rights. It also states that both source code and object code of a computer programme is literary works.

WCT is the most recent agreement which impact the standards of the Berne Convention. This treaty is a protocol to Berne. It upgraded the protections of Berne by requiring member states to provide general rights of distribution, rental and “communication to the public” as well as anti-circumvention provisions.

PATENT COOPERATION TREATY

The Patent Cooperation Treaty (PCT) is an agreement for international cooperation in the filing, searching and examination of patent applications and the dissemination of information contained in the applications.

The treaty implements a single international patent application to be filed which will have a legal effect of filing in the different countries that are bound by the treaty.

This is a patent filing system and not a patent granting system. The task of granting patents lie with the patent offices of each country. It lays down procedure that simplifies the filing of international application in a single office, in one language and a single set of forms thus reducing the cost of having to file separate applications in different countries.

The PCT only protects invention. Designs and trademark are left out of the ambit of the PCT. An application under PCT can be filed by anyone who is a national or a resident of a PCT member state.

On filing of the PCT application, an international search is carried out by an international search authority. The search results in an International Search Report and contains details of all published documents that may impact them patentability of the invention. The international search report and a written opinion prepared by the international search authority are communicated to the applicant. It is upon the applicant to withdraw the application on the basis of the opinion. If not withdrawn, it is published along with the international search report by the IB.

The advantages of the procedure under PCT are:

  • The applicant has a time period of 18 months to decide on seeking protection in foreign countries.
  • It gives enough time to the applicant to appoint local patent agents in each foreign country, prepare necessary translations and pay the national fees.
  • An applicant can be assured that his international application which is in the form prescribed by the PCT, cannot be rejected on formal grounds by any designated Office during the national phase of the processing of the application.
  • On the basis of the international search report or the written opinion, the applicant can evaluate the chances of his invention being patented.
  • Furthermore, the applicant has the opportunity to amend the international application during the international preliminary examination before processing by the designated Offices.
  • Search and examination work of patent offices can be considerably reduced or virtually eliminated due to the international search report, the written opinion and, where applicable, the international preliminary examination report that accompany the international application

MADRID PROTOCOL

This Protocol is relating to the Madrid Agreement concerning the International registration of marks. It provides for a cost effective and efficient way of ensuring protection for marks in multiple countries by filing one application with one office.

INTERNATIONAL APPLICATION UNDER MADRID PROTOCOL

How to file an International Application under Madrid Protocol?

Any applicant who wishes to file an international application under the Madrid Protocol has to first file its application with the Indian Trademark Registry.

The applicant filing an application in the Indian Trademark Registry has to fulfill the following conditions:

  • He/she should be a national of India,
  • Or
  • He/she should be domiciled in India,
  • Or
  • He/she should have a business or commercial establishment in India

The application so filed with the home office is the basic application. To file an international application under the Madrid Protocol, the applicant should have filed a basic application and must have the same trade mark as mentioned in the basic application. The goods and services mentioned in the basic application should be the same as mentioned in the international application and no wider. The applicant must designate one or more of the member countries of the Madrid Protocol where he/she wishes to protect his/her mark.

On receipt of the international application, the Indian Trade Marks Registry shall verify the following details:

  • The applicant is of Indian origin or his principal place of business is in India.
  • The applicant of the international application is the same person as that of the basic application.
  • The basic application subsists in the records of the Registry and is not withdrawn, abandoned, refused, removed or cancelled.
  • The trade mark in the international application is the same as that mentioned in the basic application.
  • The goods and services mentioned in the international application is the same as that mentioned in the basic application.

On receipt of the international application from the Indian Trade Marks Registry, the International Bureau of the WIPO will verify the application. On verification, if any irregularity is observed, the applicant and the Indian Trade Marks Registry is notified about the same. A letter is then sent to the applicant to rectify the irregularity in the application within a period of one month. On receipt of a satisfactory response from the applicant, the IB of WIPO shall register the international application and publish the international registration in the WIPO gazette.

On registration, the international application is forwarded to the designated countries where the applicant wishes to register his/her mark. The designated countries shall, then, issue a national application number to the International Registration and examine the International Registration as per their local laws. If the international registration is refused registration by any designated country, then the IP Office of that country will forward a draft of the provisional refusal to IB of WIPO. The refusal is recorded by the IB of WIPO as well as published in the WIPO Gazette with an indication whether the refusal is total or partial. The copy of the notification is then transmitted to the holder of the International Registration. The holder of the International Registration has to file a reply within the stipulated period of time. After reviewing the reply, the Examiner of the designated country may accept or permanently refuse the International Registration. If the registration is permanently refused, it shall be communicated to the IB of WIPO who shall notify the holder of the International Registration. If the registration is accepted, it shall be advertised in a separate part of the Trade Marks journal accordingly.

On receipt of the notice of opposition, if the holder wants to defend his international registration in India, it shall file counter statement. If no counter statement is filed, the international registration will be refused. If the holder files a counter statement, the same shall be sent to the opponent. After completion of all the proceedings, if the Registrar of Trade Marks decides to confirm refusal of protection, a confirmation to the provisional refusal shall be sent to the IB of WIPO. Where there is no notification of provisional refusal and all the procedures are completed and there is no ground for refusal of protection, a notification of grant of protection shall be sent to IB of WIPO. All the international registrations which have been granted protection in the designated country shall be published in the Trade Marks journal.

The protection is granted for a period of 10 years after which it is renewable for a further 10 years upon payment of the requisite fees. The IB of WIPO records the renewal and notifies the Offices of the designated countries and sends a certificate to the holder. The renewal is then published in the Gazette.