Module 8 - Part 4 of 7

WIPO Treaties

Explore the specialized WIPO-administered treaties beyond Paris and Berne, including the Internet Treaties (WCT, WPPT), Marrakesh Treaty, Singapore Treaty, Hague Agreement, and Lisbon Agreement, with focus on India's membership status.

Duration: 75-90 minutes

7 Key Topics

10 Quiz Questions

Topic 1

WIPO Copyright Treaty (WCT)

The WIPO Copyright Treaty (WCT), adopted in 1996 and entering into force in 2002, is one of the two "Internet Treaties" that update copyright protection for the digital environment. It addresses challenges posed by digital technology and the internet that were not contemplated when the Berne Convention was last revised in 1971.

Background and Purpose

The WCT was developed to:

Address the impact of digital technology on copyright
Clarify protection for computer programs and databases
Establish new rights for the digital environment
Protect technological protection measures (TPMs)
Protect rights management information (RMI)

Key Concept: Relationship to Berne Convention

Article 1(4) of the WCT states that contracting parties must comply with Berne Convention Articles 1-21 and its Appendix. The WCT is thus a "special agreement" under Berne Article 20, building upon rather than replacing Berne protections. It creates a Berne-plus framework for the digital age.

Key Provisions

Computer Programs (Article 4)

Computer programs are protected as literary works within the meaning of Berne Convention Article 2. Protection applies regardless of the mode or form of expression.

Compilations of Data (Article 5)

Compilations of data or other material that by reason of selection or arrangement constitute intellectual creations are protected as such. No protection extends to the data or material itself.

Right of Distribution (Article 6)

Authors have exclusive right to authorize making available to the public the original and copies of their works through sale or other transfer of ownership.

Rental Right (Article 7)

Authors of computer programs, cinematographic works, and works embodied in phonograms have exclusive right to authorize commercial rental.

Right of Communication to the Public (Article 8)

Authors have exclusive right to authorize any communication to the public, including making works available so that members of public may access them from a place and time individually chosen (on-demand access).

Article 8 - Right of Communication to the Public

"...authors of literary and artistic works shall enjoy the exclusive right of authorizing any communication to the public of their works, by wire or wireless means, including the making available to the public of their works in such a way that members of the public may access these works from a place and at a time individually chosen by them."

Anti-Circumvention Provisions

Article 11 (TPMs): Adequate legal protection and effective legal remedies against circumvention of technological measures used by authors to protect their rights
Article 12 (RMI): Adequate and effective legal remedies against removing or altering electronic rights management information without authority

Topic 2

WIPO Performances and Phonograms Treaty (WPPT)

The WIPO Performances and Phonograms Treaty (WPPT), adopted alongside the WCT in 1996, is the second "Internet Treaty." It updates protection for performers and producers of phonograms in the digital environment, complementing the Rome Convention of 1961.

Scope and Coverage

The WPPT protects:

Performers: Actors, singers, musicians, dancers, and other persons who perform literary or artistic works or expressions of folklore
Producers of phonograms: Persons or entities who take the initiative and responsibility for first fixation of sounds

Key Concept: Difference from Rome Convention

Unlike the Rome Convention (1961) which also covered broadcasting organizations, the WPPT focuses exclusively on performers and phonogram producers. A separate treaty for broadcasting organizations, the Beijing Treaty, was adopted in 2012 but addresses audiovisual performances rather than broadcasts. The WPPT also provides significantly stronger rights than Rome, particularly for the digital environment.

Rights of Performers (Chapter II)

Moral Rights (Article 5)

Right to be identified as performer and to object to distortion or modification that would be prejudicial to reputation. Independent of economic rights.

Economic Rights in Unfixed Performances (Article 6)

Right to authorize broadcasting and communication to the public of unfixed performances (except rebroadcasting).

Right of Reproduction (Article 7)

Exclusive right to authorize direct or indirect reproduction of performances fixed in phonograms.

Right of Distribution (Article 8)

Exclusive right to authorize making available to public through sale or transfer of ownership.

Right of Rental (Article 9)

Exclusive right to authorize commercial rental of fixed performances.

Right of Making Available (Article 10)

Exclusive right of on-demand availability - members of public can access from place and time individually chosen.

Rights of Phonogram Producers (Chapter III)

Producers have similar exclusive rights:

Reproduction (Article 11)
Distribution (Article 12)
Rental (Article 13)
Making Available (Article 14)

Term of Protection (Article 17)

Minimum term:

Performers: 50 years from end of year of fixation
Phonogram producers: 50 years from end of year of publication (or fixation if not published)

Topic 3

Marrakesh Treaty (Visually Impaired)

The Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired, or Otherwise Print Disabled, adopted in 2013 and entering into force in 2016, is a landmark human rights-oriented copyright treaty. India was the first country to ratify it.

Background and "Book Famine"

The treaty addresses the "book famine" - the severe shortage of accessible format copies available to visually impaired persons:

Less than 5% of published works are available in accessible formats in developed countries
Less than 1% in developing countries
Copyright restrictions impeded creation and cross-border exchange of accessible copies
Each country had to independently negotiate accessible format exceptions

Article 4 - National Law Limitation and Exception

"1. (a) Contracting Parties shall provide in their national copyright laws for a limitation or exception to the right of reproduction, the right of distribution, and the right of making available to the public... to facilitate the availability of works in accessible format copies for beneficiary persons."

Key Provisions

Beneficiary Persons (Article 3)

Persons who are blind, have visual impairment or perceptual/reading disability, or physical disability preventing holding/manipulating a book. Includes dyslexia and other print disabilities.

Accessible Format Copy

Copy in alternative format giving beneficiary access as feasibly and comfortably as non-disabled person. Includes Braille, large print, audio, digital accessible formats.

Authorized Entities (Article 2(c))

Non-profit organizations or government institutions providing education, training, adaptive reading, or information access to beneficiary persons.

Cross-Border Exchange (Article 5)

Accessible format copies made under domestic exception can be distributed or made available to beneficiaries or authorized entities in other contracting parties.

Key Concept: India's Leadership

India was the first country to ratify the Marrakesh Treaty on June 24, 2014. India already had provisions for accessible format exceptions under Section 52(1)(zb) of the Copyright Act, 1957, which was amended in 2012 to allow reproduction for the benefit of persons with disabilities. The Marrakesh Treaty implementation strengthened India's position as a leader in accessible publishing and enabled cross-border exchange of accessible format works.

Topic 4

Singapore Treaty on the Law of Trademarks

The Singapore Treaty on the Law of Trademarks, adopted in 2006, modernizes the 1994 Trademark Law Treaty (TLT) by addressing developments in communication technology and harmonizing trademark registration procedures worldwide.

Background

The Singapore Treaty updates the TLT to:

Accommodate electronic filing and communications
Include service marks explicitly
Harmonize procedural requirements across offices
Provide flexibility for developing countries
Establish Assembly for ongoing development

Key Provisions

Scope (Article 2)

Applies to marks relating to goods (trademarks) and services (service marks). Does not apply to collective, certification, or guarantee marks.

Electronic Communications (Article 8)

Contracting parties may permit or require electronic communications. When permitted, must accept electronic equivalent of paper communications.

Relief for Missed Time Limits (Article 14)

Offices must provide relief measures for missed time limits - extension, continued processing, or reinstatement of rights.

License Recordation (Article 17)

Non-recordation of license shall not affect validity of registration or protection of the mark. License recordation cannot be required for use by licensee to be deemed use by owner.

Key Concept: India's Status

India is NOT a member of the Singapore Treaty as of 2024. However, India's Trade Marks Act, 1999 and Rules already incorporate many provisions similar to the Treaty, including electronic filing (introduced progressively), service mark protection, and modernized procedures. Accession would primarily signal international harmonization commitment rather than require major legal changes.

Advantages of the Singapore Treaty

Simplifies formality requirements
Provides relief against loss of rights due to procedural failures
Enables electronic filing and communications
Reduces need for notarization and legalization
Clarifies license recordation requirements

Topic 5

Hague Agreement (Industrial Designs)

The Hague Agreement Concerning the International Registration of Industrial Designs, originally adopted in 1925 with the current Geneva Act (1999) being the most widely used, provides a mechanism for obtaining design protection in multiple countries through a single international application.

How the Hague System Works

The Hague System functions similarly to the Madrid System for trademarks:

Single application: One application filed with WIPO International Bureau
Multiple designations: Choose contracting parties for protection
Central management: Renewals and changes through International Bureau
National examination: Each designated office examines according to its law

Filing Requirements

Application with reproductions of design, designation of contracting parties, payment of fees. Can include multiple designs in one application (up to 100) if in same class.

Examination Period

Designated offices have 6 months (extendable to 12 months with declaration) to refuse protection.

Duration

Initial 5-year term, renewable in 5-year periods up to maximum term under applicable national law (minimum 15 years under Geneva Act).

Publication

Designs published in International Designs Bulletin. Deferment of publication available for up to 30 months in some cases.

India's Position on Hague Agreement

India is NOT a member of the Hague Agreement as of 2024. Indian designers seeking international design protection must file separately in each country of interest. There have been discussions about potential accession, which would benefit Indian design-intensive industries (textiles, automobiles, consumer goods) by simplifying international protection. The Designs Act, 2000 would require amendments to accommodate Hague System integration.

Advantages of Hague System

Cost-effective for protection in multiple countries
Single currency (Swiss francs) for all fees
Simplified management of design portfolio
Multiple designs in one application
Deferred publication option for market timing

Topic 6

Lisbon Agreement (Appellations of Origin and GIs)

The Lisbon Agreement for the Protection of Appellations of Origin and their International Registration (1958), and its updated Geneva Act (2015), provides international protection for appellations of origin and geographical indications through a single registration system.

Lisbon Agreement (1958 Act)

The original Lisbon Agreement covered only "appellations of origin" - a narrower concept than GIs:

Appellation of origin: Geographical denomination of a product whose quality or characteristics are due exclusively or essentially to the geographical environment, including natural and human factors
Protection: Against any usurpation or imitation, even if true origin is indicated or appellation is translated or accompanied by terms like "kind" or "type"
Registration: Through WIPO International Bureau at request of competent authority of country of origin

Geneva Act (2015)

The Geneva Act modernized the system by:

Expanding scope: Covers both appellations of origin AND geographical indications (broader term)
Enabling IGO membership: Intergovernmental organizations (like EU) can join
Flexible fees: Individual fee system for designated contracting parties
Safeguards: Protection against becoming generic, transitional provisions for prior use

Key Concept: India and the Lisbon System

India is NOT a member of either the Lisbon Agreement or the Geneva Act as of 2024. India protects GIs under the Geographical Indications of Goods (Registration and Protection) Act, 1999. With over 400 registered GIs (Darjeeling Tea, Basmati Rice, Chanderi Fabric, etc.), India has significant interests in international GI protection. However, concerns about the system's composition (heavily European membership) and the balance between GIs and trademarks have influenced India's decision not to join.

Current Membership

The Lisbon System has limited membership compared to other WIPO treaties:

Lisbon Agreement: 30 contracting parties (predominantly wine-producing European countries)
Geneva Act: Growing membership including EU as an intergovernmental organization
Notable absences: India, USA, China, most Asian and African countries

Topic 7

India's Status with Each Treaty

Understanding India's participation in various WIPO treaties is essential for advising clients on international IP strategy and understanding the domestic IP landscape.

Treaties India Has Joined

WIPO Convention (1975)

India became a WIPO member on April 1, 1975. WIPO membership is the foundation for participation in WIPO-administered treaties.

Paris Convention (1998)

Acceded December 7, 1998. Provides priority rights for patents, trademarks, and industrial designs.

Berne Convention (1928)

Original member since April 1, 1928. Provides automatic copyright protection across member countries.

PCT (1998)

Acceded December 7, 1998. Indian Patent Office serves as Receiving Office, ISA, and IPEA.

Madrid Protocol (2013)

Acceded July 8, 2013. Enables international trademark registration through Indian Trade Marks Registry.

Marrakesh Treaty (2014)

First country to ratify on June 24, 2014. Facilitates accessible format works for visually impaired persons.

Nice Agreement (2019)

Acceded February 7, 2019. Uses Nice Classification for trademark registration.

Locarno Agreement (2019)

Acceded February 7, 2019. Uses Locarno Classification for industrial designs.

Vienna Agreement (2019)

Acceded February 7, 2019. Uses Vienna Classification for figurative elements of marks.

Treaties India Has NOT Joined

WIPO Copyright Treaty (WCT)

Not a member. The 2012 Copyright Amendment incorporated some WCT-like provisions (technological protection measures under Section 65A-B) but India has not formally acceded.

WIPO Performances and Phonograms Treaty (WPPT)

Not a member. Performer and phonogram producer rights in India remain governed by Copyright Act without WPPT-level obligations.

Singapore Treaty on Trademarks

Not a member. India's trademark procedures are largely harmonized but formal accession has not occurred.

Hague Agreement (Industrial Designs)

Not a member. Indian designers must file separately in each country for international design protection.

Lisbon Agreement/Geneva Act (GIs)

Not a member. India protects GIs domestically but does not participate in international GI registration system.

Rome Convention (Performers)

Not a member. India provides performer protection under Copyright Act but has not joined the Rome Convention.

Strategic Implications

India's selective participation in WIPO treaties reflects a deliberate policy balancing international integration with domestic interests. Non-membership in WCT/WPPT provides flexibility in digital copyright policy. Non-membership in Hague limits design protection options for Indian designers but also limits obligations. The pattern suggests India prioritizes treaties with clear commercial benefits (PCT, Madrid) while being cautious about treaties that might constrain policy space (WCT, WPPT, Lisbon).

Test Your Knowledge

Part 4 Quiz: WIPO Treaties

Answer the following 10 questions to test your understanding of WIPO treaties.

Question 1 of 10

When was the WIPO Copyright Treaty (WCT) adopted?

A) 1986
B) 1996
C) 2002
D) 2006

Explanation:

The WCT was adopted in December 1996 at a WIPO Diplomatic Conference in Geneva, along with the WPPT. These are often called the "Internet Treaties" as they address copyright in the digital environment. The WCT entered into force in 2002.

Question 2 of 10

Which country was the first to ratify the Marrakesh Treaty?

A) India
B) United States
C) Morocco
D) European Union

Explanation:

India was the first country to ratify the Marrakesh Treaty on June 24, 2014. The treaty was adopted in Marrakesh, Morocco in 2013 and entered into force in September 2016 after reaching the required 20 ratifications.

Question 3 of 10

What does Article 8 of the WCT establish?

A) Right of reproduction
B) Right of distribution
C) Right of communication to the public (including on-demand access)
D) Moral rights

Explanation:

Article 8 of the WCT establishes the right of communication to the public, including the crucial "making available" right - allowing authors to control on-demand access where users can access works from a place and time individually chosen by them. This is fundamental for internet distribution.

Question 4 of 10

Which of the following treaties is India NOT a member of?

A) PCT
B) Madrid Protocol
C) Berne Convention
D) Hague Agreement

Explanation:

India is not a member of the Hague Agreement for international industrial design registration. Indian designers seeking international protection must file separately in each country. India is a member of PCT (1998), Madrid Protocol (2013), and Berne Convention (1928).

Question 5 of 10

What is the primary purpose of the Marrakesh Treaty?

A) Protection of traditional knowledge
B) Facilitating access to works for persons with print disabilities
C) Harmonizing trademark procedures
D) Protecting geographical indications

Explanation:

The Marrakesh Treaty facilitates access to published works for persons who are blind, visually impaired, or otherwise print disabled. It creates mandatory exceptions in copyright law and enables cross-border exchange of accessible format copies.

Question 6 of 10

The WPPT provides protection for:

A) Performers and producers of phonograms
B) Authors and publishers
C) Broadcasting organizations
D) Database makers

Explanation:

The WIPO Performances and Phonograms Treaty (WPPT) protects performers (actors, singers, musicians, etc.) and producers of phonograms. Unlike the Rome Convention, it does not cover broadcasting organizations - that was addressed later by the Beijing Treaty for audiovisual performances.

Question 7 of 10

What does the Geneva Act of the Lisbon Agreement (2015) add to the original agreement?

A) Protection for trademarks
B) Protection for patents
C) Protection for geographical indications (in addition to appellations of origin)
D) Protection for trade secrets

Explanation:

The Geneva Act (2015) expanded the Lisbon System to cover geographical indications in addition to the narrower concept of appellations of origin covered by the original 1958 Agreement. It also enabled intergovernmental organizations like the EU to join.

Question 8 of 10

When did India join the Nice Agreement for trademark classification?

A) 1998
B) 2005
C) 2013
D) 2019

Explanation:

India acceded to the Nice Agreement on February 7, 2019, along with the Locarno Agreement (design classification) and Vienna Agreement (figurative elements classification). India had been using Nice Classification in practice before formal accession.

Question 9 of 10

What are Articles 11 and 12 of the WCT commonly called?

A) Fair use provisions
B) Anti-circumvention provisions
C) Moral rights provisions
D) Term of protection provisions

Explanation:

Articles 11 and 12 of the WCT contain the anti-circumvention provisions - Article 11 requires protection of technological protection measures (TPMs) and Article 12 requires protection of rights management information (RMI). These provisions address digital rights management in the online environment.

Question 10 of 10

When did India become a member of WIPO?

A) 1975
B) 1978
C) 1995
D) 1998

Explanation:

India became a member of WIPO on April 1, 1975. WIPO was established by the WIPO Convention of 1967 and became operational in 1970. WIPO membership is the foundation for India's participation in other WIPO-administered treaties.