IP in International Business Strategy PCT, Madrid, HagueRegional Systems

Session -9 – part:2

International Business: Strategy, Management, and the New Realities 2

• PCT, Madrid, Hague• Regional Systems

BACKGROUND

⇨ Intellectual property rights (trade marks, patents and designs) are territorial in nature i.e. one has to go to each and every country for registration/protection.

⇨ The Paris Convention regulate how territorial registration should be conducted.

⇨ There are four other treaties which deals with the international registration/deposit of intellectual property rights (IP), namely:• Patent Co-operation Treaty (PCT) for “international”

registration of patents.• Hague Agreement 1960; Geneva Act 1999 for

international deposit of designs (Hague System).• Madrid Agreement 1891; Madrid Protocol 1989 for

“international” registration of trade marks (Madrid System).

• Budapest Treaty – for international deposit of microbes/micro-organisms.

⇨ International registration is where the applicant just ticks/designate in one form member states which he or she seeks protection.

⇨ In the case of international deposit, all designs are registered at a central point, namely, at WIPO level.

⇨South Africa is member of the Patent Co-operation Treaty, Budapest Treaty and the Paris Convention.

HOW DOES THE MADRID PROTOCOL WORK?

⇨ Facilitate international registration, maintenance and renewals (national laws still apply).

⇨ Protocol is less rigid, e.g. choice of language French/English.

⇨ Allows 18 months for processing the applications instead of 12 months (Madrid Agreement).

HOW DOES THE HAGUE SYSTEM WORK?

⇨Facilitate the establishment and maintenance of design protection through a single international deposits of member states.

⇨The Geneva Act seeks to make the system more responsive to the needs of users.

⇨Provides for the participation of regional systems, e.g. European Patent Office (EPO), African Regional Industrial Property Office (ARIPO), etc.

WHAT ARE THE BENEFITS FOR JOINING THE MADRID AND HAGUE SYSTEMS?

⇨Offer advantages to IP owners, registration offices and member states.

⇨Effective and quicker registration and protection of their rights by offering a single registration process for a number of designated countries.

⇨Generates greater activity in IP and generates fee income for member states, e.g. PCT in South Africa.

⇨SA trading partners are members of the Madrid and Hague systems.

WHICH PROBLEMS ARE ADDRESSED BY THE RATIFICATION OF THE TWO SYSTEMS?

⇨Cost effective and quicker registration in designated countries. No longer necessary to go from one country to another.

⇨ Increased activities on IP in Registries and the country.

⇨Market access in other jurisdictions.⇨Protection of investors and IP holders and

building confidence.⇨Foreign direct investment into the country.

Various other treaties

IP Protection• Berne Convention• Brussels Convention• Film Register Treaty• Madrid Agreement (Indications

of Source)• Nairobi Treaty• Paris Convention• Patent Law Treaty• Phonograms Convention• Rome Convention• Singapore Treaty on the Law of

Trademarks• Trademark Law Treaty• Washington Treaty• WCT• WPPT

Classification

• Locarno Agreement• Nice Agreement• Strasbourg Agreement• Vienna Agreement

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⇨Market access.⇨Foreign direct investment (trade marks).⇨Confidence building for investors.⇨Harmonization of IP laws with those of trading

partners.⇨Provide a fair and equitable framework in IP

area.⇨Competitiveness

HOW DOES THE RATIFICATION OF THE TREATIES RELATE TO THE INDIA’S GROWTH OBJECTIVE?

Bibliography

• HAGUE AND MADRID SYSTEMS – by Moses MoeletsiChief Director: Policy and Legislation; 24 August 2004

• www.wipo.int• http://www.wipo.int/treaties/en/

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