The Paris Convention And Its Role In Intellectual Property Litigation Cases10-01-2019
As people developed, so did their capacity of the intellectual creation. When people around the world became more linked and open to each other, there was an urgent need to start protecting people’s intellectual creation. This creation is called Intellectual property (IP), and IP consists of rights such as patents, trademarks, trade names, copyrights and industrial designs.
The Paris Convention is the meeting which considered to have pioneered the field of IP rights.
Signatories: The convention was signed in 1883 and came up with amendments, most recently in 1979, now it includes 173 from the different countries around the world , such as France, UK , KSA , Turkey , Kuwait , Syria and many more. The UAE was officially acceded to the convention the by Federal Decree No. 20 of 1996.
Highlighted articles: Paris Convention consists of thirty articles, the most frequently used in the IP litigation lawsuits are:
- Article 5 which mentions how the patent could be protected in the countries of the union.
- Article 6 which is related to the trademarks and the right on the trademarks that supposed to be protected in the signatories countries.
- Article 8 is specialized in the trade names and the basis of their protection in the Members countries.
The role of the Paris Convention as a supported reference in judgments that have been issued in the UAE:
After the official joining of the UAE to the convention in 1996, the Convention has been used as legal evidence in addition to the local law. The courts in the UAE is adopt The Convention and issue the judgments that are related to intellectual property based on it.
Examples of that include:
Pertaining to the lawsuits of “trade name cancelation”: in 2008 a legal rule was mentioned in the judgment number 290/2007 commercial cassation, which referred to the article 8 of Paris convention, the same stipulates the following:
The article 8 of Paris convention stipulates “A trade name shall be protected in all the countries of the Union without the obligation of filing or registration, whether or not it forms part of a trademark”
On the other hand, regarding the unfair competition, the same judgment no 290/2007 commercial cassation, stipulates the following:
And The Article 10 bis 2 stipulates: (1) The countries of the Union are bound to assure to nationals of such countries effective protection against unfair competition. (2) Any act of competition contrary to honest practices in industrial or commercial matters constitutes an act of unfair competition. (3) The following in particular shall be prohibited: 1. all acts of such a nature as to create confusion by any means whatever with the establishment, the goods, or the industrial or commercial activities, of a competitor
Pursuant to the above, The Paris Convention is a strong legal reference that was used and still is used in IP litigation. Thus, the TLG litigation team is aware of the importance of the said convention. As such most of our memorandums are supported by its articles in addition to the local law. Furthermore, we have been frequently able to persuade judges and the IP experts of the rights of our clients in accordance to these articles.
Author: Ms Dema Khafaji Intellectual Property Legal Consultant.