The International Framework Before TRIPS

In one line

Before TRIPS there were three instruments, none of them adequate: Paris protected against false indications and unfair competition, Madrid dealt with false indications of source, and Lisbon created a register that almost nobody joined.

The Paris Convention, 1883

Article 1(2) puts "indications of source or appellations of origin" among the objects of the protection of industrial property, alongside patents, utility models, industrial designs, trade marks, service marks, trade names and the repression of unfair competition. So the subject has been inside the Paris system since 1883.

Article 10, false indications of source. It applies the seizure provisions of Article 9 to goods bearing a false indication of the source of the goods or the identity of the producer, manufacturer or merchant. And Article 10(2) defines who may complain: "Any producer, manufacturer, or merchant, whether a natural person or a legal entity, engaged in the production or manufacture of or trade in such goods and established either in the locality falsely indicated as the source, or in the region where such locality is situated, or in the country falsely indicated, or in the country where the false indication of source is used, shall in any case be deemed an interested party."

Article 10bis, unfair competition. Three paragraphs, and they are quoted constantly.

(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: (i) 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; (ii) false allegations in the course of trade of such a nature as to discredit the establishment, the goods, or the industrial or commercial activities, of a competitor; (iii) indications or allegations the use of which in the course of trade is liable to mislead the public as to the nature, the manufacturing process, the characteristics, the suitability for their purpose, or the quantity, of the goods.

Why Article 10bis matters in this module. Two reasons. TRIPS Article 22.2(b) requires Members to provide the legal means to prevent "any use which constitutes an act of unfair competition within the meaning of Article 10bis of the Paris Convention (1967)". And section 22(1) of the Indian Act carries that obligation into Indian law by making it an infringement to use a geographical indication in a manner which "constitutes an act of unfair competition including passing off". Chapter 480 works that out.

Article 10ter, remedies and standing. Paragraph (1) requires Members to assure appropriate legal remedies to repress the acts in Articles 9, 10 and 10bis. Paragraph (2) requires them to permit federations and associations representing interested industrialists, producers or merchants to take action in the courts or before administrative authorities, so far as the law of the country allows such action by its own federations. This is the treaty root of the collective standing that runs through the Indian Act, from the definition of registered proprietor in section 2(1)(n) to the authorised user's right to sue.