Welcome to IP Internationally. In this topic, you will learn about:
- What IP requires protection and how will this be protected?
- International treaties that provide protection
- Key considerations for how a business can develop an IP strategy and the steps a business should take before trading internationally.
- Securing Trademark Protection in Foreign Countries
Australian intellectual property law provides very good protection for IP in Australia. However, Australian legislation only operates within Australia. A business that wishes to trade internationally needs to give serious consideration as to how it will protect its IP, a valuable business asset, in foreign markets. A business will need to plan its market entry carefully, know the local norms, rules and laws and the implications of undertaking business in a foreign country. We will examine how a business can protect its IP when trading internationally.
WIPO (the World Intellectual Property Organization) is an international organisation that promotes and encourages the creation of IP and protects it internationally. This organisation administers treaties (agreements between countries) that offer international protection of IP and enhances the capacity for a business to protect their IP in multiple countries. Three important treaties that you will explore in the essential resources of this week are the Patent Co-operation Treaty (patents), the Madrid Protocol (trade marks) and the Hague Convention (designs).
A business needs to think carefully before entering international markets. What IP requires protection and how will this be protected? Is the country in which business is being undertaken, a party to a relevant international treaty that will provide protection? The resource, ‘Approaching a global market’ explains how a business can develop an IP strategy and the steps a business should take before trading internationally.
Before you begin, take a look at the two links below:
Explore the website for WIPO. Spend some time exploring this site. Note, WIPO’s mission and the services that it provides. One of WIPO’s functions is to bring stakeholders together to develop global IP agreements. Spend some time exploring the meetings WIPO has held recently and the list of treaties it administers.
Read about international copyright protection on the Copyright Agency website. There are a number of international treaties that provide protection for the copyright of Australian businesses, if the trading partners are from a country that is a partner to the treaties. Read specifically the material on the Berne Convention and the Universal Copyright Convention and note the protection the conventions provide.
Why is IP being 'globalised' and harmonised?
Firstly, IP is being 'globalised' and harmonised because of the increase in international trade. Harmonisation of IP laws helps to reduce distortions and the barriers resulting from the lack of or insufficient protection of intellectual property. This is referred to as a 'non-tariff barrier' to trade because it is a mechanism other than a simple imposition of a tarfiff that is an obstacle to international trade. In this sense, intellectual property can be considered an element of market access.
Secondly, the transplantation of manufacturing units from developed countries to developing countries implies the transplantation of the legal institutions (including rules on IP) from those same countries. In this sense intellectual property can be viewed as an element of access to foreign direct investment.
The relative value of IP
The following scenario (Country A and Country B) explains the relative value of IP in international trade and the inter-relationships and dependencies that exist in international trading relationships.
In an international trade rationale, the government of Country A may decide that, if Country B does not eliminate the IP non-tariff barrier (that is, if it does not adopt patent protection), Country A will not eliminate barriers (such as tariffs, or subsidies) against trade from Country B in other sectors, such as agriculture and textiles. Country B, therefore, eliminates non-tariff barriers (that is, it adopts patent protection) as a condition for having access to the markets of Country A.
This scenario illustrates how IP acquires a relative value. It is relevant if it helps in promoting access to other markets; but where it does not, IP can follow lower standards (authors’ moral rights, geographical indications) or even be eliminated (if so approved in the context of the WTO dispute settlement mechanism).
International registration and related procesess enhance access to national and/or international substantive protection of intellectual property. We will work through key agreements that have been designed to provide protection. Four important agreements are:
- Madrid Agreement Concerning the International Registration of Trademarks (1891) and Protocol Relating to the Madrid Agreement (1989)
- Hague Agreement Concerning the International Deposit of Industrial Designs (1925) and the Geneva Act (1999)
- Trademark Law Treaty (1954)
- Lisbon Agreement for the Protection and Registration of Appellations of Origin and their International Registration (1958).
We will now look at other key agreements in more detail.
The Paris Convention
In 1883, the Paris Convention was implemented as the first major step taken to help creators ensure that their intellectual works were protected in other countries. This international agreement was adopted and applied to industrial property including patents, trademarks, industrial designs, utility models, service marks, trade names, geographical indications and the repression of unfair competition. Read more on its objectives, principles and standards.
- To articulate national systems with different standards of protection in the fields of patents and utility models
- To establish the obligation to protect other sorts of industrial property assets but without establishing minimum standards (for example trademarks ‘as is’, industrial designs, trade names, repression of unfair competition).
- National treatment
- Independence (as regards patents and trademarks)
- Priority (as regards patents, utility models, industrial designs, trademarks, inventors’ certificates)
- Temporary protection (as regards patents, utility models, industrial designs, trademarks).
- Patents: restrictions of sale; compulsory licenses; exceptions to rights; importation
- Industrial designs: obligation to protect.
The following short video explains why WIPO was created and the work it undertakes. Take particular note of three international treaties that WIPO administers that provides international protection for patents (Patents Co-operation Treaty), trademarks (Madrid Protocol) and designs (The Hague Convention).
The TRIPS Agreement
The agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) came into effect on 1 January 1995 and is an international legal agreement bettwen member nations of the World Trade Organization. Read more on its objectives, principles and general provisions.
- To reduce distortions and impediments to trade
- To protect private property rights.
- National treatment (of persons)
- Most-favoured-nation treatment
- Other GATT principles: national treatment of goods, transparency, elimination of quantitative restrictions.
- On implementation
- On the incorporation of the Paris Convention: a solution for eventual conflicts (Article 2.1)
- Exhaustion
- Objectives of intellectual property protection and enforcement
- Measures taken to protect matters of public interest and competition.
TRIPS substantive standards
Some examples of substantive standards are as follows.
Trade marks
- Well-known trademarks
- Other requirements.
Geographical indications
- Two levels of protection: ‘normal’ protection and ‘additional’ protection for geographical indications for wines and spirits
- Multilateral system (built-in agenda) of notification and registration and extended protection
- Exceptions
- Exception to the principle of independence of rights.
Industrial designs
- Criteria for protection
- Special protection for textiles; term of protection.
Patents
- Prohibition against discrimination
- Limitations on exclusions from patentability on morality and ordre public grounds (principles that underpin a legal system). This is the two-step necessity test.
- Mandatory protection and exclusions; built-in agenda under Article 27.3(b)
- Exceptions to rights conferred
- Compulsory licenses
- Term of protection
- Reversal of the burden of proof.
Layout-designs (topographies) of integrated circuits
- Departure from the IPIC Treaty: innocent infringement (Article 37) and compulsory licenses.
Undisclosed information
- Scope of protection: trade secrets
- Protection of test data: a sui generis* regime.
* The term ‘sui generis’ means ‘of its own kind’
The IP Australia website will run through steps to approaching the global market for Australian businesses that are contemplating entering international markets. Note, the six questions that need to be asked. Spend time exploring the resources regarding IP protection overseas and specifically protection for patents, trademarks and designs. Make sure that your read the ‘Perfect Potion’ case study and the IP strategy they adopted for entering the Japanese market.
Participating in the forum will help you understand key considerations for developing an IP strategy and the steps before trading internationally. We will examine this resource in more detail in the forum and completing the activity will assist you prepare for your assessments.
We will now look at other strategies and considerations that have been implemented to help secure trade mark protection in foreign countries.
Paris Convention of 1883
- International patent and trademark protection
- Principle of reciprocity or 'national treatment'
- Common law marks not recognised in all countries.
Initial considerations
- Common law marks not recognised by most
- Meaning of the mark in various foreign languages
- Preliminary searching of foreign databases
- Comprehensive search by foreign associate.
The foreign application
- Can use the Unityed States Patent and Trademark Office (USPTO) registration as basis
- File in countries where doing business
- Progress of application can take years
- Filing fees can be nearly prohibitive
- May need a registered user agreement if mark is licensed
The European Union Trademark
- The European Union Trademark System
- Protection for all European Union (EU) countries
- One application applies to all 28 EU countries
- One registration and one renewal
- Simplified use and licensing requirements
- EUTM System is an all-or-nothing system
The Madrid Agreement
- Similar to Madrid Protocol
- Less flexible and comprehensive
- Invalidation due to central attack
- Madrid Protocol adopted to ameliorate difficulties
Developments in Eastern Europe
- Disintegration of the Communist bloc
- Single nation split into 15 countries
- Each adopted own trademark laws
- Some nations subject to economic or trade embargoes.
End of topic forum
There are forum activities for this topic. Select the ‘Forum’ at the end of your module (which can be found within your navigation menu) and follow the instructions for each question pertaining to Topic 8 within the forum.
