Dr. Jadranka Dabovik Anastasovska, Professor INTRODUCTION ...€¦ · 1 Double Degree Programme in...

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Double Degree Programme in Intellectual Property Law (LL.M/D.U)

www.ip.ukim.edu.mk

Dr. Jadranka Dabovik Anastasovska, Professor

INTRODUCTION TO INTELLECTUAL PROPERTY LAW

Skopje, 2011

http://www.ip.ukim.edu.mk/

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Table of Contents VI. TYPES OF INTELLECTUAL PROPERTY RIGHTS........................................................................................ 5

1. PATENT ............................................................................................................................................ 5

1.1. Meaning and Terms for Protection ............................................................................................ 5

1.2. Scope of the Rights and Duration ............................................................................................. 6

2. UTILITY MODEL ................................................................................................................................ 6

3. TRADEMARK .................................................................................................................................... 7

3.1. Definition and Terms for Trademark Registration ...................................................................... 7

3.2. Scope of the Rights and Duration .............................................................................................. 9

3.3. Types of Trademarks ................................................................................................................. 9

4. INDUSTRIAL DESIGN....................................................................................................................... 10

4.1. Definition and Terms for Protection of an Industrial Design ..................................................... 10

4.2. Scope of the Rights and Duration........................................................................................... 11

4.3. Specific Forms and Types of Protection ................................................................................... 12

5. GEOGRAPHICAL INDICATIONS ....................................................................................................... 12

5.1. Geographical Indication and Indication of Origin ..................................................................... 12

5.2. Protection of Geographical Indications .................................................................................... 13

6. TOPOGRAPHY OF INTEGRATED CIRCUITS ....................................................................................... 13

7. COPYRIGHT .................................................................................................................................... 14

7.1. Definition of Copyright ............................................................................................................ 14

7.2. Obtaining Protection ............................................................................................................... 14

7.3 Exclusive Rights ........................................................................................................................ 15

8. RELATED RIGHTS ....................................................................................................................... 15

9. TRADE SECRET ............................................................................................................................... 16

9.1. Definition of Trade Secret ....................................................................................................... 16

9.2. Protection of Trade Secrets ..................................................................................................... 17

10. DOMAIN NAMES .......................................................................................................................... 17

VII. CONTENTS OF INTELLECTUAL PROPERTY RIGHTS ............................................................................. 19

1. MORAL RIGHTS .............................................................................................................................. 19

1. Right to publish .......................................................................................................................... 19

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2. Right to claim authorship ........................................................................................................... 19

3. Right to respect the personality of the author and his work in total ........................................... 20

4. Right to relinquish the right of the material right’s holder .......................................................... 20

2. MATERIAL (PROPERTY, ECONOMIC, EXCLUSIVE) RIGHTS OF INTELLECTUAL PROPERTY .................. 20

1. Right to Dispose of ..................................................................................................................... 20

2. Right to Exploit........................................................................................................................... 20

3. Right to Compensation............................................................................................................... 21

4. Right to Prevent Third Parties from Unauthorized Use of the Work ............................................ 21

4. OTHER RIGHTS ............................................................................................................................... 21

1. Right of Access to the Original .................................................................................................... 21

2. Right to Resale ........................................................................................................................... 22

3. Right to Compensation............................................................................................................... 22

VIII. SOURCES OF THE LAW TO INTELLECTUAL PROPERTY...................................................................... 23

1. Introduction................................................................................................................................... 23

2. Constitution ................................................................................................................................... 23

3. Law ................................................................................................................................................ 23

4. Custom .......................................................................................................................................... 24

5. The Court Practice and the Legal Science ....................................................................................... 25

6. International Conventions and Treaties ......................................................................................... 25

I. Conventions and treaties related to Intellectual Property Rights ................................................. 27

6.I.1 Convention establishing the World Intellectual Property Organization (1967) ........................ 27

6.I.2. Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS agreement). ..... 27

II. Conventions and Agreements Relayed to Intellectual Property Rights ........................................ 29

6. II.1. Paris Convention for the Protection of Industrial Property ................................................... 29

6.II.2. Madrid Agreement Concerning the International Registration of Marks and Protocol Relating to

the Madrid Agreement Concerning the International Registration of Marks .......................................... 30

6.II.3. Nice Agreement Concerning the International Classification of Goods and Services for the

Purposes of the Registration of Marks ................................................................................................... 31

6. II.4. Locarno Agreement Establishing an International Classification for Industrial Designs ................. 31

6. II.5. Hague Agreement Concerning the International Registration of Industrial Designs ..................... 31

6. II.6. Patent Cooperation Treaty (PCT) ......................................................................................... 32

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6. II.7. European Convention relating to the formalities required for patent applications .............. 33

6.II.8. Convention on the Unification of Certain Points of Substantive Law on Patents for Invention

...................................................................................................................................................... 33

6. II.9. Strasbourg Agreement Concerning the International Patent Classification .................................. 34

6. II.10. Budapest Treaty ................................................................................................................ 35

6. II.11. European Patent Convention ............................................................................................. 35

III. Conventions and treaties related to copyright and related rights .............................................. 36

6. III.1. Berne Convention for the Protection of Literary and Artistic Works (1886)................................. 37

6. III.2. Universal Copyright Convention (1952) .............................................................................. 39

6.III.3. Rome Convention for the Protection of Performers, Producers of Phonograms and Broadcasting

Organizations (1961) ............................................................................................................................. 41

6. III.4. Convention for the Protection of Producers of Phonograms Against Unauthorized Duplication of

Their Phonograms (1971) ...................................................................................................................... 43

6. III.5. Brussels Convention Relating to the Distribution of Programme-Carrying Signals Transmitted by

Satellite (1974) ...................................................................................................................................... 44

6. III.6. Treaty of the International Registration of Audiovisual Works (1989) ................................. 45

6. III.7. WIPO Copyright Treaty (1996) .................................................................................................... 45

6. III.8. WIPO Performances and Phonograms Treaty (WPPT) (1996) ...................................................... 46

6. III.9. European Convention on Cinematographic Co-Production (1992)....................................... 48

7. EU Sources of Intellectual Property Law t ....................................................................................... 48

7.1. Harmonization of Copyright and Related Rights ...................................................................... 49

7.2. Unification of Industrial Property Rights .................................................................................. 53

7.3. Enforcement of Intellectual Property Rights ............................................................................ 59

8. IMPACT OF INTERNATIONAL AND EU LAW ON THE NATIONAL INTELLECTUAL PROPERTY

LEGISLATION .................................................................................................................................. 60

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VI. TYPES OF INTELLECTUAL PROPERTY RIGHTS 1. PATENT 1.1. Meaning and Terms for Protection A patent is an exceptional (exclusive) right that is acknowledged for the protection of an invention. What is an invention? Generally, in many countries the invention is described as a solution for a technical problem. The problem may be old or new, but the solution, in order to be considered as an invention, has to be new. Finding something that already exists in the nature that anyone can reveal is not an invention. There has to be a human intervention in all of that. Hence, the substance extracted from a plant that is found in the nature may be considered an invention. The invention is not always a complex and highly technological item. Even a paper clip or a toothpick may be an invention if it solves an existing technical problem. Although it is true that some inventions are only a result of long-term research and development (R&D) or enormous investments, examples may easily be found in many aspects of the everyday life of simple but big inventions in the past. The invention must basically fulfil certain legal conditions in order to be considered as a patent. Thus, it has to be within the framework of the patentable subject matter. It has to be new, which means presence of new characteristics, not covered in the existing state of art , in the specific subject matter. His existing knowledge is called “ state of art”. The invention needs to include an inventive step, which cannot be reached by a person with an average knowledge of the technical field. Finally, the item needs to be appropriate for industrial applicability. a) Novelty. An invention is new (or with the terminology of the patent law), a novelty exists if there is any difference between the invention and the existing knowledge and the technical character. What the “technical character” entails differs from one country to the other. In many European countries, every invention described in a written publication that is available throughout the world defines the technical character, and hence, may “destroy” the novelty of your invention. Therefore, the publication of a description of the invention before its patenting may technically make the invention “not-new” and hence unpatentable. b) Inventive step (non-obviousness). The invention will be considered as including an “inventive input”, if for a person coming from the field of techniques it obviously does not derive from the “technical character” or, in other words, it should not be possible for an average expert to reach the invention with an everyday routine work. Some examples of what might not be considered as an inventive input may be found in some earlier court decisions, such as: simple application of the size; assembling parts in reverse order; change of material; change of the aggregate condition; replacement with an equivalent part or function. These examples are considered as not inventive enough in order to be patentable. However, they may qualify for protection as useful models. c) Industrial applicability. The invention has to be applicable in some industry. This means that the invention needs to take the practical form of an apparatus or device, a product as some new material or substance, or an industrial process or work procedure. An industry, in the broadest sense, is everything that is different from the purely intellectual or aesthetic activity.

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An idea by itself cannot be patented unless it is an invention that is considered to have industrial applicability. The definition of the industry also includes agriculture. d) Unpatentable subject matter. Not all inventions are patentable. In order to be appropriate for patent protection, the invention needs to be within the range of a patentable subject matter, whereas the definition is set by the legislator. Depending on the patent legislation of each country, some subject areas are excluded from patents:

• Discovery of materials or substances already existing in nature; • Scientific theories and mathematical methods; • Plants or animals (or their breeds) other than microorganisms or essentially biological

processes for the production of plants or animals (or their breeds) other than microbiological processes

• Schemes, rules and methods for doing business, performing mental acts, or playing games;

• Medical or veterinary treatment or diagnostic methods practiced on humans or animals (but not the products used in those methods);

• Any invention for which a ban for commercial use is necessary in order to protect the public order, morale or public health.

In order to acquire a patent, one needs to go through a certain formal procedure. It begins by submitting an application to the national or regional patent office. The applicant will be required to describe the invention and to compare it to the existing technologies in the same field. Patent application forms can commonly be found in the patent offices . 1.2. Scope of the Rights and Duration The patent gives the patent-holder exclusive rights to prevent others to commercially use the invention in a certain limited timeframe, in exchange for public disclosure of an invention. Thus, the patent-holder or patentee may prevent others to produce, use, offer for sale, sell or import the patented invention unless they have a permission and may bring an action against everyone who is exploiting the patented invention without his or her permission. It is thought that the financial reward that derives from the exploitation of the patent and the discovery of the invention for public use would promote innovativeness and increase the technical level of the national industry with an obvious benefit for its trade. The exclusive rights are granted for a limited period of time, which is usually 20 years from the filing date, provided that the patent-holder regularly pays the annual maintenance fees and it is valid only in the country where protection was sought. Legal protection for any kind of infringement of the patent rights is no granted automatically, but only if required so by the patent-holder. Hence, the patent-holders need to monitor the business activities of the others if they want to enforce their rights. 2. UTILITY MODEL In some countries, the inventions may be protected as utility models, which are also known as: “small invention patents”, “useful patents” or “short-term patents”.

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The main differences between the utility models and the patents are the following:

• The requirements for acquiring a utility model are less stringent than for patents. While the requirement of "novelty" is always to be met, that of "inventive step" or "non-obviousness" may be much lower or absent altogether. In practice, protection for utility models is often sought for innovations of a rather incremental character which may not meet the patentability criteria.

• The term of protection for utility models is shorter than for patents and varies from country to country (usually between 7 and 10 years without the possibility of extension or renewal).

• In most countries where utility model protection is available, patent offices do not examine applications as to substance prior to registration. This means that the registration process is often significantly simpler and faster, taking, on average, six months.

• Utility models are much cheaper to obtain and to maintain. • In some countries, utility model protection can only be obtained for certain fields of

technology and only for products but not for processes. The utility model system is a more apposite patenting system, if protection is sought for a short life cycle product or to avoid long waiting. Some countries allow filing an application for both a patent and a utility model at the same time, thus allowing the patent-holder to exploit the fruits of the invention sooner, while waiting the relatively long patent recognition procedure. However, if the patent has been recognized, the patent holder will generally be asked to choose only one of the two types of rights granted with the invention, i.e. a utility model and a patent cannot be maintained for the same product. 3. TRADEMARK 3.1. Definition and Terms for Trademark Registration A trademark is a distinctive sign or indication used for distinguishing the products or services produced or provided by one business organization from those of other entities. Generally, any distinctive words, letters, numbers, drawings, colours, designs, forms, logotypes, labels or combinations thereof, which are used to differentiate goods or services from different companies, may be considered as trademarks. In some countries, advertising slogans are qualified as trademarks and may be registered as such in the national trademark offices . Many countries also allow registration of less traditional forms of trademarks, such as the tri-dimensional marks (for example, the Coca-Cola bottle or the Toblerone chocolate), audio marks (sounds, such as the roar of the lion preceding the MGM movies) or olfactory marks (scents, such as perfumes). Nonetheless, many countries have set boundaries about what might be registered as a trademark, generally allowing only signs that are visually perceivable or which could be graphically represented. The main functions of a trademark are the following:

http://en.wikipedia.org/wiki/Sign_(semiotics)

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• To enable consumers to identify a product (either a good or a service) of a particular company or individual so as to distinguish it from other identical or similar products provided by the competitors. Consumers, who are satisfied with a given product, will most probably decide to use it again in the future. They should, therefore, be able to make a difference between identical or similar products.

• To enable companies to differentiate their products from those of their competitors. Trademarks thus play a pivotal role in the advertising and marketing strategies of companies in defining the image and reputation of the company's products in the eyes of consumers.

• Also to provide an incentive to companies to invest in maintaining or improving the quality of their products in order to ensure that products bearing the trademark have a positive reputation.

Not all marks can be registered as trademarks. The trademark application is usually rejected based on what is commonly called “absolute rejection grounds ”, such as in the following cases: • Generic terms. For example, if a company intends to register the mark GLASS to sell

glasses, the mark would be rejected since “glass” is the generic term for the product. • Descriptive terms. These are words that are usually used in trade to describe the product in

question. For example, the mark SOUR is likely to be rejected for marketing vinegar as being descriptive. In fact, it would be considered unfair to give any single vinegar manufacturer exclusivity over the word “sour” for marketing its products. Similarly, qualitative or laudatory terms such as RAPID, BEST, CLASSIC or INNOVATIVE are likely to give rise to similar objections unless they are part of an otherwise distinctive mark. In such cases, it may be necessary to include a disclaimer clarifying that no exclusivity is sought for that particular part of the mark.

• Deceptive marks. These are marks that are likely to deceive or mislead consumers as to the

nature, quality or geographical origin of the product. For example, marketing butter under a mark featuring a sunflower would probably be rejected, as it would be considered misleading for consumers, who are likely to associate the mark with vegetable products (i.e. margarine).

• Marks considered contrary to public order or morality. Words and illustrations that are

considered to violate commonly-accepted norms of morality and religion are generally not allowed to be registered as trademarks.

• Flags, armorial bearings, official hallmarks and emblems of states and international organizations which have been communicated to the International Bureau of WIPO are

usually excluded from registration. Applications are rejected on 'relative grounds' when the trademark is in conflict with prior trademark

rights. Having two identical (or very similar) trademarks for the same type of product could cause

confusion among consumers. Some trademark offices check for conflict with existing marks (including

unregistered well-known marks) as a regular part of the registration process, while many others do so

only when the trademark is challenged by a third party after publication of the trademark. In either case,

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if the office considers a trademark to be identical or confusingly similar to one that already exists for

identical or similar products, it will be rejected or annulled .

3.2. Scope of the Rights and Duration Trademark registration gives exclusive rights to using a trademark. This prevents others from

releasing identical or similar products with the same or similar mark which creates confusion. The

protected trademark may be licensed or franchised to other companies, which would secure

additional source of income to the business. In some cases, the protected trademark with a given

reputation among the consumers may also be used to obtain funding from financial institutions, such

as banks or investors that are increasingly aware of the importance of brands for business success.

Once the trademark has been successfully registered, a registration certificate is issued which is generally valid for 10 years and is subject to renewal. 3.3. Types of Trademarks а) Service marks A service mark is very similar in nature to a trademark. Both are distinctive signs; trademarks

distinguish the goods of one enterprise from those of others, while service marks fulfil the same

function in relation to services. Services may be of any kind, such as financial, banking, travel,

advertising or catering, to name a few. Service marks can be registered, renewed, annulled ,

assigned and licensed under the same conditions as trademarks.

b) Collective mark A collective mark is generally owned by an association or cooperative whose members may use the

collective mark to market their products. The association generally establishes a set of criteria for

using the collective mark (e.g. geographic origin, quality standards) and permits individual

companies to use the mark if they comply with such standards. Collective marks may be an

effective way of jointly marketing the products of a group of enterprises which may find it more

difficult for their individual marks to be recognized by consumers and/or handled by the main

distributors. One example of a successful collective mark is the Melinda collective mark, which is

used by 5200 apple producers working in the Italian region of Valle di Non and Valle di Sole. Each

producer has a right to use the collective mark belonging to the Melinda Consortium, provided that

their apples fulfil the requirements set by the consortium.

c) Certification marks Certification marks are given for compliance with defined standards, but are not restricted to

any membership. They may be used by anyone whose products meet certain established

standards. In many countries, the main difference between collective marks and certification

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marks is that the former may only be used by a specific group of enterprises (e.g., members of

an association), while certification marks may be used by anybody who complies with the

standards defined by the holder of the certification mark.

An important requirement for certification marks is that the entity which applies for

registration is considered “competent to certify” the products concerned (e.g. certification of

the quality). A well-known example of a certification mark is Woolmark, which may only be

used for products that are proven to be made of 100% wool.

d) Well-known marks Well-known marks are marks that are considered to be well-known by the competent authority

of the particular country. Well-known marks generally benefit from stronger protection. For

example, well-known marks may be protected even if they are not registered (or have not even

been used) in a given territory.

In addition, while marks are generally protected against confusingly similar marks only if used

for identical or similar products, well-known marks are protected against confusingly similar

marks for even dissimilar products, if certain conditions are met. The main purpose of this

stronger protection is to prevent companies from free-riding on the reputation of a well-known

mark and/or causing damage to its reputation or goodwill1.

4. INDUSTRIAL DESIGN 4.1. Definition and Terms for Protection of an Industrial Design Industrial design refers only to the aesthetic aspects or the outer appearance of the product . In other words, it only refers to the appearance of the chair, not its function. Although the product design may have technical or functional characteristics of an industrial design, as a category of the right to intellectual property, the definition only refers to the aesthetic nature of the end product, and hence, separates from any technical or functional aspects. Industrial design is applied in large-scale industry for mass production, as well as in individually made products: from technical or medical instruments to jewellery, watches and other luxury items; from toys, furniture, household items and electronic devices to cars and architectural performances; from textile design to sports gear. Industrial design is also applied to the product packaging and its safekeeping. As a general rule, industrial design may consist of three dimension features such as the shape

of an article, or two dimension features, such as ornamentation, patterns, lines or colour, or a

combination of two or more of them.

1 It denotes the company value, which cannot be expressed in accounting terms, but rather

through the respect enjoyed with the clients

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In most countries, the industrial design has to be registered in order to be protected under industrial design law. In order to register an industrial design, an application has to be filed with the national industrial property office of the country where protection is sough. As a general rule, to be registrable, the design, depending on the national legislation, has to fulfil one or more of the following basic conditions:

• The design should be “new”. A design is considered new, if an identical design has not been made available to the public prior to the date of fil ing the application for registration.

• The design should be “original”. A design is considered original if it has been created by the designer independently, and does not represent a copy or imitation of existing designs.

• The design should have “individual character”. This condition is fulfilled if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any previously registered design (which was available to the public).

Designs that are generally exempt from registration in many territories include:

designs that do not meet the requirements of novelty, originality and/or individual

character;

designs that are considered to be dictated exclusively by the technical function of a

product; such technical or functional design features may be protected, depending on

the facts of each case, by other IP rights (e.g. patents, utility models or trade secrets);

designs incorporating protected official symbols or emblems (such as the national flag);

designs which are considered to be contrary to public order or morality.

In addition, it is important to note that some countries exclude handicrafts from design protection, as industrial design law in these countries requires that the product to which an industrial design is applied is “an article of manufacture” or that it can be replicated by “industrial means”.

4.2. Scope of the Rights and Duration When an industrial design is registered, the holder receives the exclusive right to prevent

unauthorized copying or imitation by third parties. This includes the right to prevent all

unauthorized parties from making, offering, importing, exporting or selling any product in

which the design is incorporated or to which it is applied. Because industrial design rights are

territorial in nature, those rights are limited to the territory for which the design is registered.

The duration of the protection for registered industrial designs differs from one country to the other, but is usually at least 10 years. It often lasts longer (e.g. 14 years for patent designs in

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the USA and 25 years for a registered design in the European Union). In some countries, the holders of the rights are required to renew the protection of their design every several years. 4.3. Specific Forms and Types of Protection а) Traditional Designs Traditional designs and traditional cultural expressions (expressions of the folklore) in general, are often considered as “public domain” by the Intellectual Property laws and may not be protected. Nevertheless, the contemporary adaptations and interpretations of the traditional designs made by individuals may be “original” or “new” enough to qualify for protection as an industrial design. Tradition based designs have been registered in several countries. The protection of the contemporary adaptations of traditional designs with IP, rewards the advanced creativity and innovation. b) Unregistered Designs Special attention should be paid to the European Union, where the law recently enabled acquiring limited protection as an industrial design for an unregistered design for 3 years from the point the design was first disclosed or made available to the public in the European Union. For a longer or stronger protection, a complete registration is needed. For unregistered designs, protection is intended for providing the companies opportunity to test their products on the market before undertaking efforts and expenses for registering the designs, many of which may not succeed on the market. Also, some designs may only be present on the market for a very short time, especially in the fashion industry, and thus there is no intention for their registration. c) Copyright Protection of Designs In some countries there are alternative ways of protecting industrial designs. Depending on the pertinent national legislation and the type of design, one such alternative is through the Copyright Law. Copyright generally provides exclusive rights for literary or art works. Bearing in mind that some designs, in some countries, may be considered as work of art or applied art, copyright protection may be applied. d) Trademark Design Protection Also, in some countries, if an industrial design on the market functions as trademark, it may be protected as a three dimensional mark. This could be the case when the shape of the product or its packaging is considered to have become a characteristic of the products made by an enterprise. e) Unfair Competition In many countries, industrial designs are protected by the unfair competition laws. Thus, a design may be protected from actions of cruel copying and actions that may lead to confusion, imitation, taking advantage of third party’s reputation, etc. However, the protection according to the unfair competition rules is generally weaker and the infringement is hard to prove. 5. GEOGRAPHICAL INDICATIONS 5.1. Geographical Indication and Indication of Origin

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A geographical indication is a sign used on goods that have a specific geographical origin and possess qualities, or reputation that are essentially attributable to that place of origin. Most commonly, a geographical indication includes the name of the place of origin of the goods. Agricultural products typically have qualities that derive from their place of production and are influenced by specific local factors, such as climate and soil. Whether a sign is recognized as a geographical indication is a matter of national law and consumers’ perception. “Champagne”, “Tequila”, Chianti”, “Pilsen”, “Porto”, Sheffield” and “Havana” are some examples of well-known names which are connected to products with certain distinctions and quality worldwide. A mutual characteristic of all these names is their geographical connotation, or their function of determining certain places, cities, regions or countries. Nevertheless, when we hear these names, we are more likely to think of products rather than places they determine. These examples show that geographical indications may acquire high reputation and may thus be useful commercial means. This is why they are often subject to abuse, counterfeit or impersonation and their protection is hence desirable, both nationally and internationally. An appellation of origin is a geographical indication and is used on products which have a specific quality that is essentially due to the geographical environment in which they are produced. 5.2. Protection of Geographical Indications Geographical indications are understood by consumers to denote the origin and the quality of products. Many of them have acquired valuable reputations which, if not adequately protected, may be misrepresented by dishonest commercial operators. False use of geographical indications by unauthorized parties is detrimental to consumers and legitimate producers. Geographical indications are protected in accordance with national laws and under a wide range of concepts, including laws against unfair competition, consumer protection laws, trademark laws in the form of collective marks or certification mark or specific laws or decrees that recognize individual geographical indications. In essence, unauthorized parties may not use a geographical indication in respect of products that do not originate in the place designated by that indication. Applicable sanctions range from court injunctions preventing the unauthorized use to the payment of damages and fines or, in serious cases, imprisonment. 6. TOPOGRAPHY OF INTEGRATED CIRCUITS Integrated circuit layout design (topography) is also protected by industrial property law. There is a continuing need for the creation of new layout-designs which reduce the dimensions of existing integrated circuits and simultaneously increase their functions. Hence, there is a need for huge investments in order to achieve this. Having this in mind, copying such layout designs would be only a small part of this investment. The possibility of copying by photographing each layer of an integrated circuit and preparing masks for its production on the basis of the photographs obtained is the main reason for the introduction of legislation for the protection of layout-designs.

http://en.wikipedia.org/wiki/Photomask

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The usual term of protection is at least 10 years from the date of filing an application or of the first commercial exploitation in the world, but a term of protection of 15 years from the creation of the layout-design may also be provided. 7. COPYRIGHT 7.1. Definition of Copyright Copyright is a set of rights granted to authors, artists and other creators to protect their literary and artistic creations, usually called “works”. Works that are subject to copyright protection law are usually all original intellectual works. They are protected, irrespective of their quality or “artistic value”. Copyright laws do not usually provide a comprehensive list of types of works protected by copyright, but all national laws practically provide for protection of the following:

Literary works;

Musical works;

Artistic works;

Maps and technical drawings;

Photographic works;

Film works;

Computer programmes;

Multimedia programmes. It is important to say that copyright only protects the form of expressing ideas, but not the ideas themselves. The creativity protected by copyright law is creativity in the choice and arrangement of words, musical notes, colours, shapes and so on. Copyright law protects the owner of rights in artistic works against those who take and use the form in which the original work was

expressed by the author. Thus, the basic idea or the storyline may be very similar in two novels, but the specific way the particular story develops and the precise words used to describe it is what makes every novel original from copyright law perspective. 7.2. Obtaining Protection Copyright, unlike industrial property rights, is obtained automatically. A work is considered protected by copyright as soon as it is created. According to international conventions (especially the Berne Convention for protection of literary and artistic works), literary and artistic works are protected without any formalities in the countries signatories of these conventions. Hence, in many countries there is no international registration system for copyright protection. However, many countries have a national copyright office and some national laws allow for registration of works for the purposes of, for example, identifying and distinguishing titles of works. In certain countries, registration can also serve as prima facie evidence in a court of law with reference to disputes relating to copyright.

http://www.wipo.int/directory/en/urls.jsp

http://www.wipo.int/clea/en/

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7.3 Exclusive Rights The owner of copyright in a work is generally the original creator or author of the work. There are, however, some exceptions to this rule. In some countries, for example, the economic rights over a copyright work are deemed to vest initially in the employer/producer, while in some others these are deemed to be assigned or transferred to the employer/producer. It would therefore be advisable to find out about the specific regulations in the country of interest and, if necessary, include appropriate clarifications about the rights holder in the employment contracts. The copyright holders hold the exclusive right to use or authorize others to use the work on agreed terms. The creator of a work can prohibit or authorize:

its reproduction in various forms, such as printed publication or sound recording;

its initial distribution to the public through sales and other transfer of ownership of tangible copies;

rental of copies to the public (for computer programmes and phonograms, and also for audio-visual works);

recordings of it, for example, in the form of compact discs, cassettes or videotape;

its broadcasting, by radio, cable or satellite;

its translation into other languages, or its adaptation, such as a novel into a screenplay.

Many creative works protected by copyright require mass distribution, communication and financial investment for their dissemination (for example, publications, sound recordings and films); hence, creators often transfer the rights to their works to individuals or companies best able to market the works in return for payment. These payments are often made dependent on the actual use of the work, and are then referred to as royalties. These economic rights have a time limit, according to the relevant WIPO treaties, of 50 years after the creator's death. National law may establish longer time-limits. This limit enables both creators and their heirs to benefit financially for a reasonable period of time. Copyright protection also includes moral rights, which involve the right to claim authorship of a work, and the right to oppose changes to it that could harm the creator's reputation. 8. RELATED RIGHTS A field of rights related to copyright has rapidly developed over the last 50 years. These related rights grew up around copyrighted works, and provide similar, although often more limited and of shorter duration, rights to:

performing artists (such as actors and musicians) in their performances;

producers of sound recordings (for example, cassette recordings and compact discs) in their recordings;

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publishers for their publications;

broadcasting organizations in their radio and television programs. “Related rights” differ from “copyright” in that they belong to owners regarded as intermediaries in the production, recording or diffusion of works. The link with copyright is due to the fact that the categories of related rights owners are auxiliaries in the intellectual creation process since they lend their assistance to authors in the communication of the latter's works to the public. A musician performs a musical work written by a composer; an actor performs a role in a play written by a playwrighters; producers of phonograms -- or more commonly "the recording industry" -- record and produce songs and music written by authors and composers, played by musicians or sung by performers; broadcasting organizations broadcast works and phonograms on their stations. Like copyright, related rights are recognized without any formalities, such as registration, deposit of copies or presenting a notification, for example a phonogram. It is therefore recommended to put a notification on the phonogram, containing the following three elements:

circled capital letter R,

the name of the exclusive right holder, and

the year of the first publication of the phonogram. 9. TRADE SECRET 9.1. Definition of Trade Secret Broadly speaking, any confidential business information which provides an enterprise a competitive edge may be considered a trade secret. The unauthorized use of such information by persons other than the holder is regarded as an unfair practice and a violation of the trade secret. Depending on the legal system, the protection of trade secrets forms part of the general concept of protection against unfair competition or is based on specific provisions or case law on the protection of confidential information. While a final determination of what information constitutes a trade secret will depend on the circumstances of each individual case, clearly unfair practices in respect of secret information include industrial or commercial espionage, breach of contract and breach of confidence. Below is a list of few examples of categories that could be considered as trade secrets:

processes, techniques and knowledge and production experience;

data compilations, for example lists of client data;

designs, drawings, projects, maps;

algorithms, processes implemented in computer programs and computer programs themselves;

production formulas;

business strategies, business plans, marketing plans, export plans;

financial information;

staff records;

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manuals;

ingredients;

information on research and development activities. 9.2. Protection of Trade Secrets Trade secrets are protected without registration, that is, trade secrets are protected without any procedural formalities. Consequently, a trade secret can be protected for an unlimited period of time or until the information is confidential. There are, however, some conditions for the information to be considered a trade secret. Compliance with such conditions may turn out to be more difficult and costly than it would appear at first glance. While these conditions vary from country to country, some general standards exist, such as:

The information must be secret (i.e. it is not generally known among, or readily accessible to, circles that normally deal with the kind of information in question).

It must have commercial value because it is a secret.

It must have been subject to reasonable steps by the rightful holder of the information to keep it secret (e.g., through confidentiality agreements).

Among the more notable examples of confidential business information protected as trade secrets is the Coca-Cola formula and the Windows source code. 10. DOMAIN NAMES Domain names are hostnames that identify Internet Protocol resources such as web sites. For example, the wipo.int domain is used for locating the WIPO website at www.wipo.int. The choice of a domain name has become an important business decision, since it enables Internet users to locate a site on the web. Company domain names may be registered in any number of "top level domains" called "TLDs". "Generic top level domains" ("gTLDs"), are .com, .net, .org and .info. There are also specialized and restricted top level domains (e.g. .aero for air travel and transport businesses, or .biz for commercial enterprises) and "country code top level domain" ("ccTLD"), for example, .bg for Bulgaria, .cn for China, .ch for Switzerland. The technical management of the domain name system is in the hands of the Internet Corporation for Assigned Names and Numbers ("ICANN"). However, in the gTLDs, the registrations themselves are handled by a number of Internet registrars accredited by ICANN. For registrations in the ccTLDs, one needs to contact the registration authority designated for each ccTLD. The registration of a domain name happens on a "first come, first served" basis. However, as in time domain names have become business identifiers, they come in conflict with trademarks. Therefore, first) it is important to choose a domain name that is not a trademark of another enterprise or a well-known mark, and second) the registrar of a domain name may reject domain name registration which contains a well-known mark, if the application was filed by a person not associated with the right to use the pertinent mark.

http://en.wikipedia.org/wiki/Hostname

http://en.wikipedia.org/wiki/Internet_Protocol

http://en.wikipedia.org/wiki/Web_site

http://www.wipo.int/

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References

Intellectual Property for Business; www.wipo.int/sme The IPR-Helpdesk; www.ipr-helpdesk.org WIPO Intellectual Property Handbook: Policy, Law and Use, WIPO Publication No. 489, http://www.wipo.int/about-ip/en/iprm/

WIPO Free Information Products: Intellectual Property http://www.wipo.int/freepublications/en/index.jsp?cat=intellectual%20property

Copyright http://www.wipo.int/freepublications/en/index.jsp?cat=copyright

Industrial designs http://www.wipo.int/freepublications/en/index.jsp?cat=industrial%20designs

Marks http://www.wipo.int/freepublications/en/index.jsp?cat=marks

Patents http://www.wipo.int/freepublications/en/index.jsp?cat=patents

http://www.wipo.int/sme

http://www.ipr-helpdesk.org/

http://www.wipo.int/about-ip/en/iprm/

http://www.wipo.int/freepublications/en/index.jsp?cat=intellectual%20property

http://www.wipo.int/freepublications/en/index.jsp?cat=copyright

http://www.wipo.int/freepublications/en/index.jsp?cat=industrial%20designs

http://www.wipo.int/freepublications/en/index.jsp?cat=marks

http://www.wipo.int/freepublications/en/index.jsp?cat=patents

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VII. CONTENTS OF INTELLECTUAL PROPERTY RIGHTS Intellectual property rights encompass material (property, economic) and non-material (moral, non-property) rights.2. Additionally, in copyright law, there is a third category of authors’ rights, known as “other rights”. The moral and material rights of the holders are absolute and , they act erga omnes. The absolute character is based on the personal and legal character of the activity. 1. MORAL RIGHTS3 Moral rights are generally tied to the person who is inventor/author/constructor. They are inalienable and usually last during the lifetime of the holder. However, it should be pointed out that some types of authorizations may last even after the death of the holder, i.e. they could be transferred by inheritance. Thus, after death, only the personal and legal authorizations (moral rights), which are tightly connected to the person are extinguished while the other authorizations may be transferred by inheritance. The non-transferrable authorizations are designated by inheritance as positive moral or personal authorizations, while the transferrable ones are called negative moral authorizations. In terms of the legal protection of the moral authorizations, a subject of the protection is both the personality of the inventor/author/constructor and the work/creation. By their legal nature, moral authorizations have an absolute character and have an act as erga omnes. The holder is the only authorized person for exploiting his work and keeps that authorization in view of all other persons, i.e. any interference in the moral authorizations in terms of exploiting the work/creation is excluded. The essence of the holder’s moral authorizations is their inalienability. It derives from the fact that the authorizations are tied to the personality of the author. The essential characteristic of the author’s moral authorizations is also the inheritance of the moral authorizations. Obviously, that characteristic is in opposition with the characteristic of inalienability of the moral authorizations. In view of the industrial property rights the moral rights (authorizations) tinclude the right the name of the inventor or the designer or the constructor to be indicated in the application for a patent or industrial design or topography of an integral circuit, i.e. the documents thereof. The following moral rights of the author are usually seen in copyright: 1. Right to publish, which enables the author:

• To decide whether, when and how his work will be published for the first time; 2. Right to claim authorship, which enables the author:

• recognition of his authorship;

2 Generally, we should have in mind that this classification is typical for the continental law countries. 3 For more details please see: Дабовиќ Анастасовска Ј., Пепљугоски В, Право на интелектуална сопственост, Правен факултет „Јустинијан Први“ – Скопје, Скопје, 2009, стр. 152 – 153

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• to decide whether his authorship would be indicated when the work is published and with what kind of a designation;

• to demand that his name, pseudonym or other designation is indicated in each use of the work;

3. Right to respect the personality of the author and his work in total, which involves: • authorization to request preservation of the totality of his work and to object to any

distortion, mutilation or other modification of, or other derogatory action in relation to, the said work, which would be prejudicial to his honour or reputation;

• right to modify the work, provided that it does not disturb the rights acquired by other persons.

4. Right to relinquish the right of the material right’s holder, which enables the author: • to relinquish the right of his material right’s holder, in accordance with law.

2. MATERIAL (PROPERTY, ECONOMIC, EXCLUSIVE) RIGHTS OF INTELLECTUAL PROPERTY4 The material (property) rights to intellectual property are, by rule, exclusive rights which guarantee the holders a right to dispose of, right to exploit, right to compensation and a right to ban third parties from unauthorized use of the apposite work. Those rights ensure the property right holders use of the work, with certain exceptions, strictly stipulated by law. The intellectual property rights laws provide several types of property rights as elements of the contents of the subjective rights to intellectual property. 1. Right to Dispose of The right to dispose of is a monopoly right and has an absolute nature. This right is enjoyed by both the inventors/authors/constructors and the right holders. The right to dispose of includes the right to transfer (in total or partially) and the right to withdraw (license, regardless of whether it is exclusive or not). 2. Right to Exploit The right to exploit is an exclusive property right of an absolute nature, time limited and transferrable. The law stipulates the forms or types of the right to exploit, leaving space for the work to be also exploited in other ways. Hence, in order to exploit the intellectual property works, the general conditions have to be abode by, in view of the authorization(s) (duration, way of exploiting, territory, exclusive/non-exclusive) and the payment of the compensation to the inventors/authors/constructors, i.e. right holders. According to the way of exploitation, especially for copyright works, different property rights exist. The division has been made according to the way the work is exploited.

4 For more detail, please see: Дабовиќ Анастасовска Ј., Пепељугоски В, Право на интелектуална сопственост, Правен факултет „Јустинијан Први“ – Скопје, Скопје, 2008, стр. 154 – 156

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The first group of material authorisations in the copyright include the material rights related to the expression in tangible form (creating copies or samples of the author’s work). These are: 1) the right to publish; 2) the right to reproduce; 3) the right to rent including the right to rental; and 4) the right to use. The second group includes the rights related to the exploitation of works in intangible form, such as: 1) public performance; 2) public public presentation, 3)coomunication to the public, , 4) broadcasting etc. 3. Right to Compensation The right to compensation is an exclusive monopoly right which the author/inventor/constructor cannot relinquish. Moreover, the contracts by which the intellectual property rights are transferred or assigned but do not contain compensation fees, are considered null and void . 4. Right to Prevent Third Parties from Unauthorized Use of the Work The right to prevent third parties from unauthorized use of the work in the contemporary social and economic circumstances is becoming more significant, since due to the development of the technology and it becoming cheaper, in practice, we are witnesses to a frequent infringement of the intellectual property rights. Therefore, this right is most commonly treated in the provisions of the laws and the international conventions and treaties on intellectual property rights and their enforcement. The author/inventor/constructor, or the right holder has a right to prevent each person that uses his work without permission/approval both by court action (civil, criminal, administrative) and extrajudicial (negotiations, mediation, arbitration). 4. OTHER RIGHTS5 The so called “other rights” are typical only for copyright law. They entail the rights which cannot be classified ether in the moral (non-material) or in the material (property) rights of the author, although they possess the features of both. The other rights of the authors usually entail the right of access to the original, the right to resale, the right to compensation. 1. Right of Access to the Original The author has a right of access to the original or copy of his work owned by another person, in order to achieve his right of reproduction or processing of the work, provided that it is not contrary to the justified interest of the right holder.

5 For more details, please see Дабовиќ Анастасовска Ј., Пепељугоски В, Право на интелектуална сопственост, Правен факултет „Јустинијан Први“ – Скопје, Скопје, 2008, стр. 156 – 158

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2. Right to Resale The right to resale is intended to provide the author to participate in the sales price of the original6, which is achieved by each change of the owner. In comparative law, there are different amounts of the participation, ranging from 3% to 5%. 3. Right to Compensation The right to compensation enables the author compensation for rental g7 the copies of his copyrighted work, for which further distribution is allowed. This subjective law is not exclusive (absolute) but rather relative (debentured) and is added up to a request for payment of compensation. This right only exists for the persons who engage in rental a copy of a work as a public activity, which excuse from the circle of possible debtors to the author all persons who privately, occasionally or periodically give their copy to someone. The right to rental does not apply to architectural works and originals and copies of the applied art and design.

6 An original artwork is a part of the drawing, graphical or plastic art, such as: canvas, pastiche, paintings, drawings, graphics, lithography, sculptures, ceramics, carvings, tapestries, glass artwork, photographic work or a work created in a procedure similar to the photographic, as well as samples of the above referenced works that are considered originals. Also, the samples of the above listed works, created by the author himself, or created with his approval in a limited number, will be considered originals. It is usual for the author to number the samples (for ex. 2/10, which means that it is a second sample out of ten). At the same time, the author puts his signature on the originals or otherwise approves them. 7 Borrowing means using the original or the copy of the artwork for a certain period of time, without an immediate or indirect economic benefit, when it is done through publicly accessible organizations. Namely, borrowing artworks is predominantly done by the state or public institutions, such as libraries, public sound archives and video rentals (DVD rentals). This activity, although not profitable for the executors by itself, has a negative impact on the author’s material interests, as it decreases the market for buying copies of the copyrighted work.

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VIII. SOURCES OF THE LAW TO INTELLECTUAL PROPERTY 1. Introduction The sources of the intellectual property law do not greatly differ from the generally accepted sources. Thus, intellectual property law sources may be the Constitution, laws and bylaws (ordinances, rulebooks), but particular for the intellectual property rights are the general conditions of an obligations law and trade law. A source of this right, in a specific way, are also the judicial practice and the legal science. It is typical for the intellectual property rights that under the influence of the fast technical, technological and IT advancement, as well as the frequent international traffic of intellectual rights, the protection standards also change on international level. The standards are such that require a high level of harmonization of the national legal systems with the international legal order. If a country is a member of some international convention in the area of intellectual property, the provisions of the said convention become an incontestable source of law , regardless of whether they became part of the national laws or are directly applied. 2. Constitution The Constitution is the principal source of law in all countries, and also in the Republic of Macedonia. The Constitution of the Republic of Macedonia from 1991, or more precisely Article 47 guarantees the freedom of scholarly, artistic and other forms of creative work and commits itself to stimulating and assisting scientific and technological development. This provision regulates the direct guarantees of the country for the development of intellectual rights and copyright, and that the country will protect and stimulate them. At the same time, according to Article 55 of the Constitution, the freedom of the market and entrepreneurship is guaranteed and the Republic ensures an equal legal position to all parties in the market. 3. Law8 Laws represent the source of rights to intellectual property law, which regulate the rights, the subject of protection, the acquisition and termination of the protection, etc. Different experiences exist in the regulation of the legal matter pertaining to intellectual property. Thus, it is possible the subject matter regarding industrial property to be regulated by one law, while copyright and other related rights with another. It is not unusual for the special industrial property rights to be found in separate laws9. The intellectual property rights in the Republic of Macedonia are regulated by several laws and bylaws. Some of the more significant legal sources of intellectual property law in the Republic

8 For more details please see: Дабовиќ Анастасовска Ј., Пепељугоски В, Право на интелектуална сопственост, Правен факултет „Јустинијан Први“ – Скопје, Скопје, 2008, стр. 62-64 9 For the intellectual property related laws of the WIPO country members, please visit http://www.wipo.int/wipolex/en/

http://www.wipo.int/wipolex/en/

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of Macedonia are the following: Law on the Industrial Property10, Law on Copyright and Related Rights11, Law on the Culture12, The Law on Obligations 13, Law on the Protection of Topographies of Integral Circuits14, Law on the Unfair Competition15, The Consumer Protection Law16, The Criminal Code,17 Law on the State Market Inspectorate18, Law on the Customs Measures for the protection of Intellectual Property Rights19, Law on the Seed and Planting Material for Agricultural Plants20, Law on the Selection Rights21, Law on the Wine,22 Law on Misdemeanours ,23 Law on Contentious Procedure,24 Law on the Criminal Procedure ,25 Law on Enforcement26 etc. By adoption of the laws on industrial property, copyright and other related rights, topographies of integral circuits, the basic principals were laid for the regulation of intellectual property rights in the Republic of Macedonia27. 4. Custom28 Customs represent rules of behaviour that occur spontaneously in the social and business environment, by repeating and longer performance. For a custom to be a source of the law , it should be referred to by the law by the parties in the dispute or by the court when resolving the cases. Nevertheless, the custom is applied only if legal gaps exist and unless it is not contrary to the principles supporting the entire legal order of a given society.

10 Official Gazette of the Republic of Macedonia No.21/2009 and 24/2010 11 Official Gazette of the Republic of Macedonia No.115/2010 and 51/2011 12 Official Gazette of the Republic of Macedonia No.31/1998; 49/2003; 82/2005; 24/2007; 116/2010; 47/2011 and 51/2011. 13 Official Gazette of the Republic of Macedonia No.18/2001; 4/2002; 5/2003; 84/2008; 81/2009 and 161/2009. 14 Official Gazette of the Republic of Macedonia No.5/1998 and 33/2006. 15 Official Gazette of the Republic of Macedonia No.80/1999 16 Official Gazette of the Republic of Macedonia No.38/2004, 77/2007; 103/2008 and 24/2011 17 Official Gazette of the Republic of Macedonia No.37/1996; 80/1999; 4/2002; 43/2003; 19/2004; 81/2005; 60/2006; 73/2006; 7/2008; 139/2008; 114/2009 and 51/2011 18 Official Gazette of the Republic of Macedonia No.24/2007 ; 81/2007 and 36/2011. 19 Official Gazette of the Republic of Macedonia No.38/2005 и 107/2007 20

Official Gazette of the Republic of Macedonia No.39/2006; 89/2008; 171/2010 and 53/2011 21

Official Gazette of the Republic of Macedonia No.52/2009 22 Official Gazette of the Republic of Macedonia No.50/2010 and 53/2011 23

Official Gazette of the Republic of Macedonia No.62/2006; 69/2006 and 51/2011 24

Official Gazette of the Republic of Macedonia No.79/2005; 110/2008; 83/2009. and 116/2010 25 Official Gazette of the Republic of Macedonia No.15/1997; 44/2002; 74/2004; 83/2008; 67/2009. and 51/2011 26

Official Gazette of the Republic of Macedonia No.35/2005; 50/2006; 129/2006; 8/2008; 83/2009; 50/2010; 83/2010; 88/2010. and 171/2010 27 These laws and bylaws, brought on the basis of these regulations have been changed several times. Some were passed and amended in the period of intensive final negotiations for the approach of the Republic of Macedonia in the World Trade Organization (WTO) and in conditions of a ratified Stabilization and Association Agreement (SAA) of our country with the European Union. 28 For more details, please see Дабовиќ Анастасовска Ј., Пепељугоски В, Право на интелектуална сопственост, Правен факултет „Јустинијан Први“ – Скопје, Скопје, 2008, стр. 64-65

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Customs are a significant source of the intellectual property law . Namely, for the assessment of the behaviour of the business entities, as well as during transferring of and assignment of the intellectual property rights, the “good business customs”, the principles of fair dealing are of an exceptional meaning. 5. The Court Practice and the Legal Science29 The court practice and the legal science fill in the legal gaps that occur due to the fact that the lawyers cannot foresee all possible cases in the practice. The court practice is comprised of court decisions in which the legal norm is applied in the same way. The court order, in our case, acts as a source of the law for the parties for which it was brought (res iudicata facit ius inter partes). Hence, it is not a direct source of the law. According to our system, the decisions of the higher courts do not formally bind the lower courts, but it is necessary for the lower courts to take them into consideration. This is especially important for the intellectual property law , where legal gaps may be found, i.e. there are situations which the legislator did not foresee and for which the legislator did not pass general legal rules. Legal science plays an important role in the legal shaping of the intellectual property right. It makes an assessment of the current situation in the legislation and practice, and provides guidance for its future development. Legal science is not a direct source of the law. However, it has a high meaning for the court practice and legislative actions, and its role in the development of the intellectual property right should certainly be stressed. 6. International Conventions and Treaties30 International conventions and treaties are a significant source of the intellectual property law. They appear with the frequent free flow of people, ideas and goods on international level and they develop (amend and supplement) in accordance with the contemporary social and economic flows. The most important and the oldest sources of the international right to intellectual property are the Paris Convention for the Protection of Industrial Property from 1883, which became effective in 1884, and the Berne Convention for the Protection of Literary and Artistic Works from 1886, which became effective in 1887. Following these two conventions, many other international conventions and treaties were brought. Most commonly, the international sources of the intellectual property law (international conventions and treaties) are grouped in three groups:

29 For more details, please see Дабовиќ Анастасовска Ј., Пепељугоски В, Право на интелектуална сопственост, Правен факултет „Јустинијан Први“ – Скопје, Скопје, 2008, стр. 65 30 For more details, please see Дабовиќ Анастасовска Ј., Пепељугоски В, Право на интелектуална сопственост, Правен факултет „Јустинијан Први“ – Скопје, Скопје, 2008, стр. 66-96; International Treaties on Intellectual Property, www.wipo.int/treaties; Intellectual Property: Protection and Enforcement, http://www.wto.org/english/thewto_e/whatis_e/tif_e/agrm7_e.htm;

http://www.wipo.int/treaties

http://www.wto.org/english/thewto_e/whatis_e/tif_e/agrm7_e.htm

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I. Conventions and treaties related to intellectual property rights:

1. Convention establishing the World Intellectual Property Organization; 2. Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS agreement).

II. Conventions and treaties related to the rights from intellectual property:

1. Paris Convention for the Protection of Industrial Property; 2. Madrid Agreement Concerning the International Registration of Marks and the Protocol

Relating to the Madrid Agreement Concerning the International Registration of Marks; 3. Nice Agreement Concerning the International Classification of Goods and Services for

the Purposes of the Registration of Marks; 4. Locarno Agreement Establishing an International Classification for Industrial Designs; 5. Hague Agreement Concerning the International Registration of Industrial Designs; 6. Patent Cooperation Treaty; 7. European Convention relating to the Formalities required for Patent Applications; 8. Convention on the Unification of Certain Points of Substantive Law on Patents for

Invention of the Council of Europe; 9. Strasbourg Agreement Concerning the International Patent Classification; 10. Budapest Treaty on the International Recognition of the Deposit of Microorganisms for

the Purposes of Patent Procedure; 11. European Patent Convention.

III. Conventions and treaties related to copyright and related rights:

1. Berne Convention for the Protection of Literary and Artistic Works; 2. Universal Copyright Convention; 3. Treaty on the International Registration of Audiovisual Works (Film Register Treaty); 4. Rome Convention for the Protection of Performers, Producers of Phonograms and

Broadcasting Organizations; 5. Convention for the Protection of Producers of Phonograms Against Unauthorized

Duplication of Their Phonograms; 6. Convention Relating to the Distribution of Programme-Carrying Signals Transmitted by

Satellite (Satellite Convention); 7. WIPO Copyright Treaty; 8. WIPO Performances and Phonograms Treaty; 9. European Convention on Cinematographic Co-Production.

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I. Conventions and treaties related to Intellectual Property Rights 6.I.1 Convention establishing the World Intellectual Property Organization (1967) The Convention Establishing the World Intellectual Property Organization31 or WIPO Convention, was signed at Stockholm, Sweden, on July 14, 1967 and entered into force on April 26, 1970, desiring to promote the protection of intellectual property, in order to encourage creative activity and render more efficient the administration of the Unions established in the fields of the protection of industrial property. The Convention provides that WIPO membership is open to any member-state of the Paris Union, the Special Unions and Agreements established in relation with that Union, the Berne Union, and any other international agreement designed to promote the protection of intellectual property. The Convention closely defines the WIPO objectives, functions and bodies. Thus, the bodies of this organization are the following: General Assembly, Conference, Coordination Committee and International Bureau, all managed by a Director General. The Convention defines the headquarters of the Organization, which is in Geneva, finances, Legal capacity, privileges and immunities, the parties /to the Convention, entry into force of the convention, amendments and reservations, denunciations and notifications. In November 2010, there were 184 WIPO member-states32. 6.I.2. Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS agreement). The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS agreement) is the most important act for the harmonization and enforcement of intellectual property rights on multinational level. The Uruguay round of negotiations33 laid down the requirements for an effective protection of intellectual property within the General agreement on Tariffs and Trade (GATT). Mainly, it was about creation of a system of economic coercion within the GATT mechanism, by applying the principle of reciprocity by the industrially developed countries – main holders of the intellectual property rights. The Uruguay round established, among other things, a permanent institution – the World Trade Organisation (WTO). With the WTO, intellectual property rights gain a new dimension – world-wide globalization in the area of intellectual property.

31 The World Intellectual Property Organization (WIPO) is one of the 16 specialized agencies of the United Nations, and it unites the administrations of the International Union for the Protection of Industrial Property and International Union for the Protection of Literary and Artistic Works 32 http://www.wipo.int/treaties/en/statistics/StatsResults.jsp?treaty_id=1&lang=en 33 The Uruguay Round is the name for the negotiations led for nine years under the General Agreement on Tariffs and Trade (GATT), including intellectual property rights.

http://en.wikipedia.org/wiki/Stockholm

http://en.wikipedia.org/wiki/Sweden

http://www.wipo.int/treaties/en/statistics/StatsResults.jsp?treaty_id=1&lang=en

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The accelerated development of the trade, and especially the new IT forms, have decreased the opportunities for a successful control of the intellectual property protection only within state borders and with their own legislation, which has conditioned the need of regulating the intellectual property aspects globally, now using the WTO mechanisms. From the point of view of the regime of the intellectual property rights, the WTO accession conditions are regulated in the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), which stipulates exceptionally high standards for regulation of intellectual property that each member-state needs to respect. TRIPS requires that the member-states fully implement in their national legislation certain provisions from the Agreement related to copyright, the Berne Convention, as well as provisions referring to the civil court procedure, criminal law and criminal procedure, administrative procedure and the special customs control. In regard to the provisions of the member-states’ legislations, TRIPS allows for the domestic law to provide a broader protection than the one required by the Agreement, provided that the provision does not breach the provisions of the Agreement. The provisions of the Agreement refer more to the intellectual property rights, or more closely to copyright and related rights, intellectual property rights, rights pertaining to integrated circuits and protection of undisclosed information. In terms of copyright, TRIPS completely accepts the provisions of the Berne Convention, but clearly sets out that members shall not have rights or obligations under the Agreement in respect of the rights conferred under Article 6bis of the Berne Convention or of the rights derived therefrom. By this, TRIPS clearly confirms its concept, like the Universal Convention, to ignore the moral rights of the authors and performers. The advancement of TRIPS, compared to the previous international documents, is mostly in the specific provision of protection of computer programs and compilations of data. Article 10, paragraph 1 of TRIPS provides that computer programs, whether in source or object code, shall be protected as literary works under the Berne Convention. Paragraph 2 of the same article provides that compilations of data or other material, whether in machine readable or other form, which by reason of the selection or arrangement of their contents constitute intellectual creations shall be protected as such. Such protection, which shall not extend to the data or material itself, shall be without prejudice to any copyright subsisting in the data or material itself. Another important digression has been made in view of the rental rights. In respect of at least computer programs and cinematographic works, a Member shall provide authors and their successors in title the right to authorize or to prohibit the commercial rental to the public of originals or copies of their copyright works. In reference to the terms of protection, Article 12 cites that whenever the term of protection of a work, other than a photographic work or a work of applied art, is calculated on a basis other

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than the life of a natural person, such term shall be no less than 50 years from the end of the calendar year of authorized publication, or, failing such authorized publication within 50 years from the making of the work, 50 years from the end of the calendar year of making. In reference to the related rights, TRIPS accepts the provisions of the Rome Convention. Article 14, paragraph 1 gives the performers the opportunity - in respect of a fixation of their performance on a phonogram, performers have the possibility of preventing the fixation of

their unfixed performance and the reproduction of such fixation. Performers also have the possibility of preventing the broadcasting by wireless means and the communication to the public of their live performance. The term of the protection available under this Agreement to performers and producers of phonograms lasts at least until the end of a period of 50 years for broadcast, computed from the end of the calendar year in which the fixation was made or the performance took place. The term of protection granted lasts for at least 20 years from the end of the calendar year in which the broadcast took place. Maybe the greatest advancement in international law pertaining to intellectual property are the TRIPS provisions regarding the enforcement of intellectual property rights. Namely, it is the first international instrument that contains detailed rules on the enforcement of the intellectual property rights. TRIPS members have to ensure that enforcement procedures are available under their law so as to permit effective action against any act of infringement of intellectual property rights, including expeditious remedies to prevent infringements and remedies which constitute a deterrent to further infringements. Procedures concerning the enforcement of intellectual property rights need to be fair and equitable. They should not be unnecessarily complicated or costly, or entail unreasonable time-limits or unwarranted delays. II. Conventions and Agreements Relayed to Intellectual Property Rights 6. II.1. Paris Convention for the Protection of Industrial Property The most important and oldest source of international law on industrial property is the above mentioned Paris Convention for the Protection of Industrial Property. The Convention protects the following categories of industrial property rights: “object patents, utility models, industrial designs, trademarks, service marks, trade names, indications of source or appellations of origin, and the repression of unfair competition“ (Article 1, paragraph 2). According to the Stockholm revised text of the Paris Convention for the Protection of Industrial Property, the text of the Convention has been divided into: substantive and legal provisions (Article 1 – 12), organizational and legal provisions (Article 13 – 17) and other articles referring to both parts (Article 18 – 30). The basic principles of the Paris Convention for the Protection of Industrial Property are the following:

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• Principle of national treatment. According to this principle, nationals of any country of the Union shall, as regards the protection of industrial property, enjoy in all the other countries of the Union the advantages that their respective laws grant. However, no requirement as to domicile or establishment in the country where protection is claimed may be imposed upon nationals of countries of the Union for the enjoyment of any industrial property rights. This principle provides equal treatment of the nationals of countries outside the Union as nationals of the countries of the Union.

• Principle of assimilation. According to this principle, nationals of countries outside the Union who are domiciled or who have real and effective industrial or commercial establishments in the territory of one of the countries of the Union are treated in the same manner as nationals of the countries of the Union.

• Principle of minimal rights. According to this principle, apart from the national laws, minimum rights contained in the Convention will also apply to the nationals of any country of the Union and the assimilated persons. Consequently, the minimum rights jure conventionis are applied regardless of whether they are contained in the national laws norming industrial property, or not. Minimum rights referring to the provisions of the laws of each of the countries of the Union relating to judicial and administrative procedure and to jurisdiction, and to the designation of an address for service or the appointment of an agent, which may be required by the laws on industrial property are expressly reserved. This subject matter is regulated by the domestic law.

The Paris Convention for the Protection of Industrial Property – brought in 1883 after a diplomatic conference in Paris, but became effective in 1884 – is of great importance for the physiognomy of the industrial property in our country. This Convention, revised many times, is still prevailing. The future revisions of the Paris Convention for the Protection of Industrial Property, which will be done within the frameworks of the World Intellectual Property Organisation mechanisms, will strive to satisfy the demands of the present and the future, directed towards progress of the society, emphasizing human mind and human geniality.

6.II.2. Madrid Agreement Concerning the International Registration of Marks and Protocol

Relating to the Madrid Agreement Concerning the International Registration of Marks

The Madrid system for the international registration of marks (the Madrid system) functions under the Madrid Agreement and the Madrid Protocol. The Madrid Agreement was established in 1891. Thanks to the international procedural mechanism, the Madrid system offers a trademark owner the possibility to have his trademark protected in several countries by simply filing one application directly with his own national or regional Trademark Office. An international mark so registered is equivalent to an application or a registration of the same mark effected directly in each of the countries designated by the applicant.

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The Madrid Protocol was established in 1989, in order to introduce certain novelties in the Madrid System. These novelties point to certain difficulties which prevent some countries from accessing the Madrid Agreement, and thus make the System more flexible and adequate for the legislations of these countries. In November 2010, there were 56 member-states of the Madrid Agreement34 and 83 of the Madrid Protocol35.

6.II.3. Nice Agreement Concerning the International Classification of Goods and Services for

the Purposes of the Registration of Marks The Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks was established in 1957. The Nice Agreement regulates the classification of goods and services applied for the registration of trademarks and service marks. The Nice Classification consists of class headings (based on products and services), 34 categories or "classes" of goods and of the 11 classes of services; and an alphabetical list of goods and services. Each country that has accepted this Agreement36, may apply this classification as its main or auxiliary system. Furthermore, when publishing the applications and registered trademarks, the country is obligated to designate the numbers of the classes assigned to the products or services for which the trademark is intended.

6. II.4. Locarno Agreement Establishing an International Classification for Industrial Designs The Locarno Agreement Establishing an International Classification for Industrial Designs was established in 1968. The Locarno Agreement standardizes 32 classes and 223 subclasses of different types of goods. The Agreement also entails an alphabetical list of goods with indication of the classes and subclasses to which the goods belong. The list contains 6.320 indications of different goods. The classification also has administrative meaning, and each country may apply it as its principal or auxiliary classification system37.

6. II.5. Hague Agreement Concerning the International Registration of Industrial Designs The Hague System for the International Registration of Industrial Designs, known as Hague System, provides a mechanism for registering a design in countries and/ or intergovernmental

34 http://www.wipo.int/treaties/en/statistics/StatsResults.jsp?treaty_id=21&lang=en 35 http://www.wipo.int/treaties/en/statistics/StatsResults.jsp?treaty_id=8&lang=en 36 83 countries in November 2010 http://www.wipo.int/treaties/en/statistics/StatsResults.jsp?treaty_id=12&lang=en 37 In November 2010, there were 51 countries signatories of the Agreement http://www.wipo.int/treaties/en/statistics/StatsResults.jsp?treaty_id=12&lang=en





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organizations member of the Hague Agreement38. It is administered by the International Bureau of WIPO. This System gives the owner of an industrial design the possibility to have his design protected in several countries by simply filing one application, in one language, with one set of fees. An international registration produces the same effects in each of the designated countries, as if the design had been registered directly with each national office, unless protection is refused by the national office of that country. The Hague System simplifies the management of an industrial design registration, since it is possible to record subsequent changes or to renew the registration through a single procedural step with the International Bureau of WIPO. 6. II.6. Patent Cooperation Treaty (PCT) The Patent Cooperation Treaty (PCT) was concluded in Washington in 1970. As the name suggests, this Treaty regulates the international cooperation in the field of patents. Practitioners, but also theoreticians often say that after the Paris Convention, this Treaty is the most important international act in the field of industrial property. It is a Treaty that makes the procedure more rational and simpler, especially the filing, searching and examining the patent applications, concurrently disseminating technical information contained in the patent applications. A PCT application does not itself result in the grant of a patent, or a registration of an "international patent". The grant of patent, or the recognition and registration of the inventions as patents is a prerogative of each national patent authority of the country where protection is sought (appointed bureaus). PCT enables for a protection of patents to be sought in several countries at the same time, by filing an “international” patent application. An international patent application may be filed by each national or resident of the signatory country of the Agreement. The Agreement regulates the formal requirements that every international application needs to fulfil. Among others, the basic feature of this system are: each international application is subject of international search, resulting in a search report, where the precious state of the arts is quoted and which may be taken into consideration when deciding if an invention is patentable or not; providing a centralized international publication of the international applications with their international reports, as well as their delivery to the prescribed receiving offices; provides a possibility for a preliminary international search of the international application, which enables the applicant and the national patent administrations to decide

38 In November 2010, there were 57 countries signatories of the Agreement http://www.wipo.int/treaties/en/statistics/StatsResults.jsp?treaty_id=9&lang=en


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whether they should recognize the invention as a patent or not, whereas the report contains an opinion if the patent requirements, or the invention, fulfil the international patent criteria. According to PCT, the Patent application procedure may be divided into international and national phase. The most important feature of PCT is probably the fact that it facilitates and speeds up the approach of the industry and the other stakeholders to the technical information regarding inventions/patents and it helps the developing countries in recognizing and enabling a simpler approach to the basic characteristics of the new technologies. According to the data from November 2010, 142 countries approached PCT39. 6. II.7. European Convention relating to the formalities required for patent applications

The European Convention relating to the formalities required for patent applications was signed in Paris in 1953 and came into force in 1955. The Convention resulted from the work of the Council of Europe's Committee of Experts in patent matters in the early 1950s. Its aim was to simplify and unify, as far as it is possible, the formalities required by the various national legislations for patent applications. There were about twenty ratifications or accessions to the Convention, but most of them have later denounced the Convention.40 6.II.8. Convention on the Unification of Certain Points of Substantive Law on Patents for Invention The Council of Europe member states, signatories of this Convention, commence from the fact that the unification of certain points of substantive law on patents for invention would help the industry and the inventors and would contribute to the promotion of technical progress and creation of an international patent. According to the Convention, in the Contracting States, patents shall be granted for any inventions which are susceptible of industrial application, which are new and which involve an inventive step. Grant of patents shall not be provided for: (1) inventions the publication or exploitation of which would be contrary to ordre public or morality, provided that the exploitation shall not be deemed to be so contrary merely because it is prohibited by a law or regulation; (2) plant or animal varieties or essentially biological processes for the production of plants or animals; this provision does not apply to micro-biological processes and the products thereof. The Convention defines what is considered as industrial application, invention and innovative step, as a condition for recognizing a patent. 39 http://www.wipo.int/treaties/en/statistics/StatsResults.jsp?treaty_id=6&lang=en 40 For the status, please visit http://conventions.coe.int/treaty/Commun/ChercheSig.asp?NT=016&CM=7&DF=23/11/2010&CL=ENG

http://en.wikipedia.org/wiki/Paris

http://en.wikipedia.org/wiki/Patent_application


http://conventions.coe.int/treaty/Commun/ChercheSig.asp?NT=016&CM=7&DF=23/11/2010&CL=ENG

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The Convention also contains provisions related to the recognition of a patent and the contents of the application. The Convention is open for signature by the member States of the Council of Europe, and until November 2010 it has been signed by 12 Council of Europe member States, including the Republic of Macedonia41.

6. II.9. Strasbourg Agreement Concerning the International Patent Classification

The Strasbourg Agreement Concerning the International Patent Classification was signed in March 1971 and was amended in 1979. The Agreement entered into force in 1975. It is open for any country party to the Paris Convention for the Protection of Industrial Property, while the instrument of ratification or instrument of accession is deposited with the WIPO Director General. The countries to which this Agreement applies constitute a Special Union and adopt a common classification for patents for invention, inventors’ certificates, utility models and utility certificates, to be known as the “International Patent Classification” (“Classification”). The classification scheme is divided into 8 sections with about 70,000 entries. Each entry is identified by a classification symbol like numbers and letters. The appropriate symbols of the Classification are marked on the patent documentation (the patent application and the decision on recognizing the patent). The symbols are applied by the national or regional office (bureau) for industrial property, which publishes the patent documents. The Classification is a very important tool for searching patent-related databases in examining the “state of art”, necessary for the patent awarding bodies, potential inventors, research and development departments and all stakeholders in the development or application of a certain technology. The IPC Agreement establishes a Special Union with its own Assembly. One of the main tasks of the Assembly is adopting a two-year program and a budget of the Union. The Classification is solely of an administrative character. Each country of the Special Union has the right to use the Classification either as a principal or as a subsidiary system. Although only 61 countries are members of the Strasbourg Agreement42, IPC is actually used by patent offices in over 100 countries, 4 regional offices and the WIPO Secretariat. IPC is constantly amended and a new version is regularly published. The eight version of IPC entered into force on 1 January 200643. The amendment is conducted by the Committee of

41 To check the status, please visit http://conventions.coe.int/treaty/Commun/ChercheSig.asp?NT=047&CM=7&DF=23/11/2010&CL=ENG 42 see http://www.wipo.int/treaties/en/ShowResults.jsp?lang=en&treaty_id=11 43 see http://www.wipo.int/classifications/ipc/en/index.html

http://conventions.coe.int/treaty/Commun/ChercheSig.asp?NT=047&CM=7&DF=23/11/2010&CL=ENG

http://www.wipo.int/treaties/en/ShowResults.jsp?lang=en&treaty_id=11

http://www.wipo.int/classifications/ipc/en/index.html

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Experts (all signatories are members), which also addresses recommendations to the countries of the Special Union for the purpose of facilitating the use of the Classification and promoting its uniform application; assists in the promotion of international cooperation in the reclassification of documentation used for the examination of inventions, taking in particular the needs of developing countries into account. 6. II.10. Budapest Treaty The Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure was signed in 1977.44 The main characteristic of the Budapest Treaty is that the Contracting States which allow or require the deposit of microorganisms for the purposes of patent procedure recognize, for such purposes, the deposit of a microorganism with any international depositary authority, regardless of whether that authority is within or outside the territory of the said country. This excludes the need for depositing in every country where protection is sought. 6. II.11. European Patent Convention The Convention on the Grant of European Patents was signed in 1973 in Munich and entered into force in 197745. It established a system where the European Patent Office in Munich46 may register (protect) a series of national patents, by which the patent applicant does not have to protect separate patents in separate countries (which is especially important bearing in mind the license agreements). The first patent applications, based on it provisions, were filed in 1978, while the first patents were approved in 198047. The Convention did not lead to any change in the substantive national laws for the inventions of the contracting states. Originally, the purpose of this multilateral convention was to facilitate the fulfilment of the protection and use of the inventions and the latest technological achievements in the member states by using a “European patent”. The procedure for acquiring a European patent is not separate from the national procedure. The patent applicant has a possibility, when seeking patent protection, in one or more member states, to file a patent application in every national patent office in the countries where he would like to obtain

44

According to the data from November 2010, 73 countries signed the Agreement http://www.wipo.int/treaties/en/statistics/StatsResults.jsp?treaty_id=7&lang=en 45

International convention which members are a number of European countries, as of 1992 including all EU member states; it is not an act of the EU Community. 46 The Convention establishes an organization with patent administration in Munich and a branch in Hague, while lower level offices exist in Berlin and Vienna. The Organization is managed by an Administrative Council, composed of the Representatives of the Contracting States. The European Patent Office is an example of a successful economic and political cooperation among the European countries, which enables a patent protection in 17 countries in Europe based on one patent application (Austria, Belgium, Switzerland, Germany, Denmark, Spain, France, Great Britain, Greece, Italy, Lichtenstein, Luxemburg, Monaco, The Netherlands, Portugal and Sweden). 47 The economy didn’t take long to realize the meaning of the European patent. When the European Patent Office was opened, the number of applications was 30.000, while in 1992 about 500.000 applications were received and 200.000 were approved.


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protection, or by one European patent application, in one procedure, to achieve protection in the desires member states48. The European patent has the same effect as the patent issued by the domestic (national) patent office, with certain restrictions provided in the European Patent Convention. The European patent is not a unique and harmonized industrial property right, but it enables protection in the applicant’s desired EU member states. The advantage of this system is in its adaptability, while the disadvantages originate from the complexity of the procedure and the expenses. Furthermore, the system does not provide court competence on European level for the patent dispute cases, and thus the courts of the individual EU member states may bring different decisions. As of recently, an issue is raised whether the present form of the European patent still satisfies the needs set up at the time of its establishment, or it should rather be harmonized with the conditions for broadening of the European Union and the needs of its new members, or users. In 1997 the European Commission started the preparation of the Green paper on the European Patent, trying to provide answers to the following questions: Should the Luxembourg Agreement Relating to Community Patents49 turn into a legal means of the European treaty; Should the national patent regulations be harmonized on European level and is it possible to to create such a patent protection system that would serve as promoter of innovation activities, rather than as an impediment for the protection of innovations. In 1995 the European Commission published the Green Paper on Innovation where it fixed the promotion and harmonization of the right to intellectual property in the European economy as one of the five tasks. III. Conventions and treaties related to copyright and related rights

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For more details please see: How to get a European patent-Guide for applicants, EPO, München, 1994, стр. 4-5 49 The Convention for the European Patent for the common market – the Luxembourg Convention was signed in 1975, while its supplements from 1989 have still not entered into force, as not all members of the European Union signed it. Its goal is to introduce a single “Community patent”, as the only form of the European patent. Such patent is autonomous and subordinate to the substantive and legal provisions of the Luxembourg Convention and the compulsory substantive regulations of the European patent Convention. Its autonomy may be seen particularly in the circumstances that may influence such patent, such as: transfer to third parties, abrogation or termination for any reason, single action in all countries of the common market where such patent is recognized. The owner’s rights to such patent are exhausted by placing the protected product on the market anywhere within the Community. It will not be possible to divide the common market by granting patent licenses limited to certain territories. Accordingly, there are three patent protection systems in the European Union at the moment, two of which are fully implemented: the national patent and the European patent, while the “common patent” according to the Luxembourg Convention is still not in place.

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6. III.1. Berne Convention for the Protection of Literary and Artistic Works (1886) The Berne Convention was accepted in 1886 and entered into force on 5 December 1887. Since then, the Convention was revised several times: in Paris in 1896, in Berlin in 1908, in Berne in 1914, in Rome in 1928, in Brussels in 1948, in Stockholm in 1967 and in Paris in 1971. The Berne Convention is the oldest international multilateral act in the field of copyright, open to all countries50. The countries to which this Convention applies constitute a Union called a Berne Union. The Berne Union has an Assembly and an Executive Committee. Each member country is member of the Assembly, while the Executive Committee members are elected by the Assembly from among countries members of the Assembly, except for Switzerland which has an ex officio seat on the Committee. The basic idea for this Convention was that: all authors of published works, in countries of the Union other than the country of origin, be assimilated to nationals of that country without any formalities. According to most authors, the Berne Convention is based on three basic principles:

principle of “national treatment”

principle of “automatic” protection

principle of the “independence” of protection. There are authors who believe that the Berne Convention is based on the

principle of assimilation

principle of minimum protection. According to others, it is based on the


principle of national treatment. In our theory, the dominant standpoint is that the Berne Convention is based on:

principle of national treatment


principle of minimum protection 1. Principle of National Treatment

According to this principle, authors who are nationals of one of the countries of the Berne Union enjoy protection for their works like the nationals of one of the countries of the Union. The Union members may not be conditioned with headquarters or habitual residence in one of the countries of the Union for the purposes of legal protection. Also, works originating in one of

50 According to statistics, in November 2010 there were 164 countries, among which the Republic of Macedonia, who signed the Convention http://www.wipo.int/treaties/en/statistics/StatsResults.jsp?treaty_id=15&lang=en The ratification or accession instrument is deposited with the WIPO Director General.


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the contracting States (that is, works the author of which is a national of such a State or works which were first published in such a State) must be given the same protection in each of the other contracting States as the latter grants to the works of its own nationals.

Such protection must not be conditioned l with compliance with any formality (principle of “automatic” protection). Such protection is independent of the existence of protection in the country of origin of the work. By exception, if a contracting State provides for a longer term than the minimum prescribed by the Convention and the work ceases to be protected in the country of origin, protection may be denied once protection in the country of origin ceases. This principle provides an equal treatment and equality of the foreigners and the nationals. 2. Principle of Assimilation According to this principle, the country-members of the Berne Union are equal to the nationals outside the Union, provided that they are natural persons and have habitual residence, or if they are legal persons with real business headquarters (“real trading enterprise”) on the territory of one of the country-members of the Union. 3. Principle of Minimum Protection According to this principle, apart from the national regulations of the country of origin, the minimum rights provided in the Convention shall also apply to the members of the Berne Union and the assimilated persons. This means that the minimum rights jure conventionis are applied regardless of whether they are contained in the national laws standardizing copyright, or not. Most commonly, minimum rights are entailed in the national copyright laws, as is the case with the Macedonian Law on Copyright and Related Rights. The minimum standards of protection relate to the works and rights to be protected, and the duration of the protection:

a) Works As to works, the protection must include “every production in the literary, scientific and artistic domain, whatever may be the mode or form of its expression” (Article 2(1) of the Convention). b) Limitations Subject to certain permitted reservations, limitations or exceptions, the following are among the rights which must be recognized as exclusive rights of authorization:

the right to translate,

the right to make adaptations and arrangements of the work,

the right to perform in public dramatic, dramatico-musical and musical works,

the right to recite in public literary works,

the right to communicate to the public the performance of such works,

the right to broadcast (with the possibility of a contracting State to provide for a mere right to equitable remuneration instead of a right of authorization),

the right to make reproductions in any manner or form,

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the right to use the work as a basis for an audiovisual work, and the right to reproduce, distribute, perform in public or communicate to the public that audiovisual work.

c) Moral Rights The Convention also provides for “moral rights,” that is, the right to claim authorship of the work and the right to object to any mutilation or deformation or other modification of, or other derogatory action in relation to, the work which would be prejudicial to the author’s honor or reputation. d) Duration of the Protection As to the duration of protection, the general rule is that protection must be granted until the expiration of the 50th year after the author’s death. There are, however, exceptions to this general rule:

In the case of anonymous or pseudonymous works, the term of protection expires 50 years after the work has been lawfully made available to the public, except if the pseudonym leaves no doubt as to the author’s identity or if the author discloses his identity during that period; in the latter case, the general rule applies.

In the case of audiovisual (cinematographic) works, the minimum term of protection is 50 years after the making available of the work to the public (“release”) or—failing such an event—from the creation of the work. In the case of works of applied art and photographic works, the minimum term is 25 years from the creation of such a work.

Countries regarded as developing countries in conformity with the established practice of the General Assembly of the United Nations may, for certain works and under certain conditions, depart from these minimum standards of protection with regard to the right of translation and the right of reproduction. 6. III.2. Universal Copyright Convention (1952) The Universal Copyright Convention (in French: Convention Universelle sur le droit d’auteur, in German: Welturheberrechtsabkommen), was signed at Geneva on 6 September 1952 and revised at Paris on 24 July 197151. It is developed and administered by UNESCO. The reason for adopting this Convention was the fact that after the World War II, all countries were not in a position to fulfill the conditions of the Berne Convention, as their national legislations were not in accordance with the provisions of the Berne Convention. Namely, USA and some other countries from the American continent provided in their national legislations

51 As of November 2010 conclusive, 100 countries are members of the Convention, among which the Republic of Macedonia, based on succession from SFRY, by delivering a notification on 30 April 1997. http://portal.unesco.org/la/convention.asp?KO=15381&language=E&order=alpha

http://portal.unesco.org/la/convention.asp?KO=15381&language=E&order=alpha

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certain formalities (registration of authors’ works) which the authors and their works needed to fulfill in order to recognize protection of the works. Having this fact in mind, but also the fact that seven copyright conventions were adopted on the American continent, but also bearing in mind USA’s economic power, the purpose of the Convention was to unite all national protection systems, ensuring respect of the person’s rights (copyright), but also development of the literature, science and art. Therefore, the Convention contains very little imperative norms and formalities that the legislations of the member-states need to fulfill. The Convention does not establish a union of the member-states and this Convention does not have institutional activity. At the same time, this Convention is not contrary to the Berne Convention and the authorities of the Berne Union, but it could rather be said that it has parallel activity. This Convention, also, starts from the national treatment, whereas it obligates the contracting states to adopt the necessary regulations in order to ensure adequate and effective protection of the rights of authors and other copyright proprietors. The Convention incorporates the fundamental copyright property (substantial) rights: the right to authorize reproduction by any means, public performance and broadcasting, either in their original form or in any form recognizably derived from the original. It is interesting that the definition of publishing in the Convention is limited only to publication, but without the audio editions. The Convention also foresees the right to translation (Articles V – V ter), with a possibility to obtain a non-exclusive license under certain conditions, after the expiration of a period of seven years from the date of the first publication of the work. The revised text of the Convention from Paris (Article V ter), provides a possibility for the less developed countries to provide for a non-exclusive license under certain conditions after only three years, or one year following the first publication of the work, and only in regard to the the right to translation and the right to publication. Furthermore, the license holder is obligated to inform the International Copyright Information Center established by the United Nations Educational, Scientific and Cultural Organization. In this case, the work may not be mutilated, changed or extended, and the copyright must be recognized. For the first time, the Convention prescribes the introduction of the © sign accompanied by the name of the copyright holder and the year of first publication, if the State which, under its domestic law, requires certain conditions (formalities) with respect to protection of the work. The term of protection for works protected under the Convention is the lifetime of the author and twenty-five years after his death, or twenty-five years from the date of first publication or from its registration prior to publication. For photographic works, or works of applied art the minimum protection is ten years. The Convention contains administrative provisions for accession, entry into force, denouncing, revision, dispute resolution, etc. The Convention also contains a Declaration on the relations between the Universal Copyright Convention and the Berne Convention, a Resolution concerning the Intergovernmental Committee and two Protocols. The first protocol is related to the protection of the works of the stateless persons and refugees, while the second protocol refers to the application of the Convention to certain works of international organizations.

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6.III.3. Rome Convention for the Protection of Performers, Producers of Phonograms and

Broadcasting Organizations (1961) The International Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations (in French: Convention internationale sur la protection des artistes interpretes ou executants, des producteurs de phonograme et des organismes de radiodiffusion) was adopted on 26 October 1961 in Rome. It is the first international convention which regulates related rights and their relationship with copyright. The Convention does not get involved in regulating the protection of literary and artistic works. It is therefore considered that the provisions of this Convention do not harm the copyright legal protection (copyright protection clause). The Convention is open for signature for the contracting states of the Berne Convention and the Universal Convention52. The Convention is administered by WIPO, UNESCO and the International Labour Organisation (ILO). These three organisations constitute the Secretariat of the Intergovernmental Committee, established by this Convention, and composed of representatives of 12 contracting states. Similar to the Berne Convention, this Convention is also based on the principle of assimilation of foreigners with nationals, whereas they have a national treatment. The Contracting State has to secure protection of the rights to:

Performers (actors, singers, musicians, dancers and other persons who perform literary or artistic works) who are not its nationals, as regards performances broadcast, or first fixed, on its territory. Such acts are:

o the broadcasting and the communication to the public of their live performance; o the fixation of their live performance; o the reproduction of such a fixation if the original fixation was made without their

consent or if the reproduction is made for purposes different from those for which they gave their consent.

Producers of phonograms (the person who, or the legal entity which, first fixes the sounds of a performance or other sounds) who are its nationals, as regards phonograms (aural fixation of sounds of a performance or of other sounds) first fixed or first published on its territory. They enjoy the right to authorize or prohibit the direct or indirect reproduction of their phonograms. When a phonogram or its reproduction published for commercial purposes gives rise to secondary uses, such as broadcasting or communication to the public in any form, a single equitable remuneration must be paid by the user to the performers, or to the producers of phonograms, or to both;

52 Until November 2010, 91 state accepted the Convention, see http://www.wipo.int/treaties/en/statistics/StatsResults.jsp?treaty_id=17&lang=en. The Republic of Macedonia is among them, which accepted the Convention with a declaration from 2 December 1997 and it entered into force on 2 March 1998.


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contracting States are free, however, not to apply this rule or to limit its application. Domestic law may, in the absence of agreement between these parties, lay down the conditions as to the sharing of this remuneration.

Broadcasting organizations which have their headquarters on its territory, as regards broadcasts transmitted from transmitters situated on its territory. They enjoy the right to authorize or prohibit certain acts, namely: the reproduction of such fixations; the communication to the public of their television broadcasts if such communication is made in places accessible to the public against payment of an entrance fee. They have the right to prevent:

o the rebroadcasting of their broadcasts; o the fixation of their broadcasts; and o the reproduction, without their consent, of a fixation of their performance; the

original fixation made in accordance with the provisions of Article 15 of the Convention, and if the reproduction is made for purposes different from those referred to in those provisions.

o the communication to the public of their television broadcasts if such communication is made in places accessible to the public against payment of an entrance fee. This shall be a matter for the domestic law of the State where protection of this right is claimed to determine the conditions under which it may be exercised.

The Convention provides definitions of the terms: performers, phonogram, producer of phonograms, publication, reproduction, broadcasting and rebroadcasting. In accordance with Article 15 of the Convention, any Contracting State may, in its domestic laws and regulations, provide for exceptions to the protection guaranteed by this Convention as regards:

private use;

use of short excerpts in connection with the reporting of current events;

ephemeral fixation by a broadcasting organisation by means of its own facilities and for its own broadcasts; and

use solely for the purposes of teaching or scientific research. Irrespective the above mentioned, any Contracting State may, in its domestic laws and regulations, provide for the same kinds of limitations with regard to the protection of performers, producers of phonograms and broadcasting organisations, as it provides for, in its domestic laws and regulations, in connection with the protection of copyright in literary and artistic works. However, compulsory licences may be provided for only to the extent to which they are compatible with this Convention. The term of protection to be granted under this Convention lasts at least until the end of a period of twenty years computed from the end of the year in which:

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• the fixation was made–for phonograms and for performances incorporated therein; • the performance took place–for performances not incorporated in phonograms; and • the broadcast took place–for broadcasts.

6. III.4. Convention for the Protection of Producers of Phonograms Against Unauthorized

Duplication of Their Phonograms (1971) The Convention for the Protection of Producers of Phonograms against Unauthorized Duplication of their Phonograms (hereinafter: Phonograms Convention) was adopted in Geneva on 29 October 1971. The Phonograms Convention (in French: Convention pour la protection des producteurs de phonogrammes contre la reproduction non autorisee de leur phonogrammes) was adopted under the influence of WIPO and UNESCO, due to the raising violation of the obligations by the countries who have not accepted the Rome Convention, and which resulted in unauthorized reproduction of phonograms. The Convention is open for accession by any State that is a member of the United Nations, any of the Specialized Agencies of the United Nations. The instruments of ratification are deposited with the Secretary–General of the United Nations. The World Intellectual Property Organization exercises the function of the Convention’s Secretariat53. The Convention provides for the obligation of each contracting State to protect a producer of phonograms who is a national of another contracting State against the making of duplicates without the consent of the producer, against the importation of such duplicates, where the making or importation is for the purposes of distribution to the public, and against the distribution of such duplicates to the public. This Convention provides a broader protection than the one provided with the Rome Convention, which only covers protection from unauthorized reproduction of phonograms.

The Convention offers provisions defining the terms phonogram, producer of phonograms, duplicate and distribution to the public. Phonogram means any exclusively aural fixation of sounds of a performance or of other sounds, whatever be its form (disc, tape or other). Producer of phonograms means the person who, or the legal entity which, first fixes the sounds of a performance or other sounds; Protection may be provided as a matter of criminal law, sui generis (related rights) law, unfair competition law or penal law.

53 According to the information from November 2010, 77 countries (http://www.wipo.int/treaties/en/statistics/StatsResults.jsp?treaty_id=18&lang=en), among which is The Republic of Macedonia, which accepted the Convention with a declaration from 2 December 1997 and it entered into force on 2 March 1998.

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The Convention provides an opportunity for a compulsory license for copying solely for the purpose of teaching or scientific research, and only within the territory of the Contracting State whose competent authority has granted the license, but with remuneration. Protection must last for at least 20 years from the first fixation or the first publication of the phonogram. The Convention prescribes introduction of a notice consisting of the symbol (P), by stating holder of the right and the year date of the first publication of the phonogram, if under its domestic law, the Contracting State requires compliance with formalities for protecting the work.

6. III.5. Brussels Convention Relating to the Distribution of Programme-Carrying Signals

Transmitted by Satellite (1974) The Brussels Convention Relating to the Distribution of Programme – Carrying Signals Transmitted by Satelite, or popularly called The Satellite Convention (hereinafter: the Brussels Convention) was accepted in Brussels on 21 May 1974. The Brussels Convention (in French: Convention concentranant la distribution de signaux porteurs de programmes transmis par satellite). The Convention was brought in order to prevent unauthorized distribution of programme-carrying signals by the Contracting States. According to the Convention, this does not apply only for the signals carrying short excerpts of the programme consisting of reports of current events, quotations and teaching in the developing countries. The provisions of this Convention are not applicable, however, where the signals emitted by or on behalf of the originating organization are intended for direct reception from the satellite by the general public, live or through a satellite. The Convention defines the terms: signal, programme, satellite, emitted signal, derived signal, originating organization, distributor and distribution. The Convention is open for accession by any State that is a member of the United Nations, any of the Specialized Agencies brought into relationship with the United Nations. The instruments of ratification are deposited with the Secretary–General of the United Nations. The Secretariat of the World Intellectual Property Organization exercises the function of the Convention’s Secretariat.54

54 According to the data in November 2010, the Convention was accepted by 34 countries (http://www.wipo.int/treaties/en/statistics/StatsResults.jsp?treaty_id=19&lang=en), among which is The Republic


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6. III.6. Treaty of the International Registration of Audiovisual Works (1989) The Treaty of the International Registration of Audiovisual Works (in French: Traite sur l’enregistrement international des oeuvres audiovisuelles) was adopted in Geneva on 20 April 1989. The treaty was brought with the intention to provide more efficient application of the national legislations in the fight against piracy. The Treaty defines the term “audiovisual work”, but also establishes an International Register of Audiovisual Works under WIPO, located in Austria. The Treaty is open to all countries, and up until November 2010, 13 countries have accepted it 55. The instrument of ratification or accession is deposited with the WIPO Director–General. All States party to this Treaty constitute a Union.

6. III.7. WIPO Copyright Treaty (1996)

The Internet and the new digital information technologies have significantly influenced copyright and related rights protection, as well as the development of the music industry, film industry and software. A need for practical solutions of certain problems and challenges appeared, deriving from the influence of the new technologies on intellectual property rights. In the field of copyright, it was supposed to facilitate electronic trade by protecting audio-visual performances and adapting the rights of the broadcasting organisations for the digital era, the liability principles of the on-line services providers and ensure adequate exploitation protection of copyrights in the digital environment. For this purpose, and in agreement with the WIPO Digital Agenda, two new treaties were brought in Geneva on 20 December 1996, called WIPO Internet Treaties. These are the Copyright Treaty and the Performances and Phonograms Treaty. The Copyright Treaty entered into force on 6 March 2002, after deposition of 30 instruments of ratification or accession. A condition for accession is the national legislation to comply with the substantive provisions of the 1971 (Paris) Act of the Berne Convention for the Protection of Literary and Artistic Works. Until November 2010 conclusive, 88 countries have accepted this Treaty56. The Treaty is administered by WIPO. Also, an Assembly is formed under the Treaty and all Contracting States are members, while a special union is not formed. The Treaty mentions two subject matters to be protected by copyright: computer programs, whatever may be the mode

of Macedonia, which among which the Republic of Macedonia, which submitted a declaration for acceptance based on succession from SFRY on 2 September 1997. 55 http://www.wipo.int/treaties/en/statistics/StatsResults.jsp?treaty_id=28&lang=en. The Republic of Macedonia has not accepted this Treaty. 56 The Republic of Macedonia accepted this Treaty on 4 November 2003 and it entered into force on 4 February 2004.

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or form of their expression, and compilations of data or other material (“databases”), in any form, which by reason of the selection or arrangement of their contents constitute intellectual creations. Where a database does not constitute such a creation, it is outside the scope of this Treaty. As to the rights of authors, the Treaty deals with three: (a) the right of distribution, (b) the right of rental, and (c) the right of communication to the public. Each of them is an exclusive right, subject to certain limitations and exceptions.

The right of distribution is the right to authorize the making available to the public of the original and copies of a work through sale or other transfer of ownership.

The right of rental is the right to authorize commercial rental to the public of the original and copies of three kinds of works: (a) computer programs (except where the computer program itself is not the essential object of the rental), (b) cinematographic works (but only in cases where commercial rental has led to widespread copying of such works materially impairing the exclusive right of reproduction), and (c) works embodied in phonograms as determined in the national law of the Contracting Parties (except for countries that since April 15, 1994, have in force a system of equitable remuneration for such rental).

The right of communication is the right to authorize any communication to the public, by wire or wireless means, including “the making available to the public of works in a way that the members of the public may access the work from a place and at a time individually chosen by them.” The quoted expression covers in particular on-demand, interactive communication through the Internet.

The Treaty obliges the Contracting Parties to provide legal remedies against the circumvention of technological measures used by authors in connection with the exercise of their rights and against the removal or altering of information, necessary for the management (e.g., licensing, collecting and distribution of royalties) of their rights (“rights management information”). The Treaty obliges each Contracting Party to adopt, in accordance with its legal system, the measures necessary to ensure the application of the Treaty. In particular, the Contracting Party must ensure that enforcement procedures are available under its law so as to permit effective action against any act of infringement of rights covered by the Treaty.

6. III.8. WIPO Performances and Phonograms Treaty (WPPT) (1996) WIPO Performances and Phonograms Treaty (WPPT) is the second of the, so called, WIPO Internet Treaties. It entered into force on 20 May 2002, after deposition of 30 instruments of ratification or accession. Until November 2010 conclusive, 86 countries have accepted this Treaty57.

57 See http://www.wipo.int/treaties/en/statistics/StatsResults.jsp?treaty_id=20&lang=en. The Republic of Macedonia accepted this Treaty on 20 December 2004 and it entered into force on 20 March 2005.


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The Treaty is administered by WIPO. The Treaty establishes an Assembly, but does not form a special union. The Director General of WIPO is the depositary of the Treaty. The Treaty deals with intellectual property rights of two kinds of beneficiaries: (a) performers (actors, singers, musicians, etc.), and (b) producers of phonograms (the persons or legal entities who or which take the initiative and have the responsibility for the fixation of the sounds). They are dealt with in the same instrument because most of the rights granted by the Treaty to performers are rights connected with their fixed, purely aural performances (which are the subject matter of phonograms). As far as performers are concerned, the Treaty grants performers four kinds of economic rights in their performances fixed in phonograms (not in audiovisual fixations, such as motion pictures): (a) the right of reproduction, (b) the right of distribution, (c) the right of rental, and (d) the right of making available. Each of them is an exclusive right, subject to certain limitations and exceptions.

The right of reproduction is the right to authorize direct or indirect reproduction of the phonogram in any manner or form.

The right of distribution is the right to authorize the making available to the public of the original and copies of the phonogram through sale or other transfer of ownership.

The right of rental is the right to authorize the commercial rental to the public of the original and copies of the phonogram as determined in the national law of the Contracting Parties (except for countries that since April 15, 1994, have in force a system of equitable remuneration for such rental).

The right of making available is the right to authorize the making available to the public, by wire or wireless means, of any performance fixed in a phonogram, in such a way that members of the public may access the fixed performance from a place and at a time individually chosen by them. This right covers, in particular, on-demand, interactive making available through the Internet.

This Treaty is also based on the “national treatment” principle (reciprocity). The term of protection must be at least 50 years computed from the end of the year in which the performance was fixed in a phonogram. Failing such publication within 50 years from fixation of the phonogram, the term of protection is 50 years from the end of the year in which the fixation was made. The Treaty obliges the Contracting Parties to provide legal remedies against the circumvention of technological measures used by performers or phonogram producers in connection with the exercise of their rights and against the removal or altering of information, such as the indication of certain data that identify the performer, the performance, the producer of the phonogram and the phonogram, necessary for the management (e.g., licensing, collecting and distribution of royalties) of the said rights (“rights management information”). The Treaty obliges each Contracting Party to adopt, in accordance with its legal system, the measures necessary to ensure the application of the Treaty. In particular, the Contracting Party must ensure that enforcement procedures are available under its law so as to permit effective action against any act of infringement of rights covered by the Treaty.

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6. III.9. European Convention on Cinematographic Co-Production (1992) This Convention was brought within the frames of the Council of Europe in 1992. The aims of this Convention are to promote the development of European multilateral cinematographic co-production. In order to obtain co-production status, the work must involve at least three co-producers, established in three different Parties to the Convention58. The participation of one or more co-producers who are not established in such Parties is possible, provided that their total contribution does not exceed 30% of the total cost of the production. The Convention regulates the rights of co-producers in terms of the content of the contract, whereas the co-production contract must guarantee to each co-producer joint ownership of the original picture and sound negative. The co-production contract must also guarantee effective technical and artistic participation. According to the Convention, a general balance must be maintained in the cinematographic relations of the Parties, with regard both to the total amount invested and the artistic and technical participation in co-production cinematographic works. 7. EU Sources of Intellectual Property Law t59 The activities for protection of the intellectual property law culminated with the legislative interventions by the European Union bodies. Hence, it is noticeable that the EU handles copyright and related rights in one way and intellectual property rights in another. While reviewing these aspects, it is worth mentioning that in the building of a single system for intellectual property rights within the EU, the Parliament and the Council intervene with two secondary sources – regulations and directives. Regulations create unique rules for a certain field and are applied as a supranational right in all Member States. Thus, regulations become instruments of unification of the law within the Union. Directives, on the other hand, establish guidelines for the Member States and define goals that need to be achieved, while the implementation is left to the Member States. Hence, the directives are not directly applied, as was the case with the regulations. Actually, the directives are an instrument of harmonization of the law of the Member-States.

The activity of the Parliament and the Council in the field of copyright is quite evident, but we have to note that there is a rule within the Union that copyright of the Member States is harmonized, not unified. Namely, unlike the industrial property right, where regulations are often used for interventions, in the field of copyright only directives have been brought60 The reasons are quite evident. Namely, it is not arguable that the role of the industrial property

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As of November 2010 conclusive, 42 countries ratified/approached the Convention, while 2 countries signed it but have not ratified it yet. The Republic of Macedonia ratified the Convention on 3 June 2003, and it entered into force for the Republic of Macedonia on 1 October 2003. . 59 For more details, please see: Дабовиќ Анастасовска Ј., Пепељугоски В, Право на интелектуална сопственост, Правен факултет „Јустинијан Први“ – Скопје, Скопје, 2008, стр. 66-96; 60Галев Г., Дабовиќ-Анастасовска Ј.: Имплементацијата на авторското право на ЕУ во домашното законодавство, Годишник на Правниот факултет „Јустинијан Први“ во чест на Тодорка Оровчанец, том 42, Скопје, 2006, стр. 58.

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rights is more important for the creation of a single internal market, as any product or service inevitably includes an incorporation of some of the industrial property rights, whether patented, shaped according to a design, indicated by a trademark, appellation of origin or a geographic indication or shown in a topography. This does not diminish the role of copyright and related rights in any way, as rights incorporated in the subjects of trade. Nonetheless, the percentage share of copyright and related rights as intellectual property rights incorporated in certain goods and services is less than that of the industrial property rights. Also, copyright and related rights are a less liable subject of unification, as Member States feel them more as subject of their national legislation. Therefore, only directives are brought in the field of copyright and related rights, while in the field of industrial property, mostly regulations are adopted. Further on, we will make a review of the community sources regulating copyright and related

rights and the right to industrial property. The copyright and related rights will address

aspects of their harmonization, while the industrial property rights will address aspects of

their unification. It is understandable that on such a small space will not be able to make

a detailed analysis of each of the individual sources, both because of their quantity and their

volume. Therefore, we will focus on several principal remarks of the community sources, so that each of

them may be a subject of a separate presentation, even monographic.

Special emphasis, however, would be put on the enforcement of the protection of

intellectual property rights, which proves to be the most important factor in the development

of a consistent system of intellectual property and represents a prerequisite for

a complete harmonization of the domestic intellectual property law with that of the EU.

7.1. Harmonization of Copyright and Related Rights

The process of modernization of copyright in the EU countries appeared to be very specific. As the EU does not have enough forces and sufficient legal power to approach the unification of copyright, its bodies, using the mechanism of directives, started its harmonization. The reason for this should primarily be sought in the specificities of copyright and related rights as subjective civil rights. What is typical for these directives is that they regulate only small fragments of the copyright legal matter – only some rights and only certain aspects of those rights. The text of this section will consider the decisions of the EU directives in view of the copyright and related rights, with an attempt to group them according to their content. The group of Directives dedicated to the regulation of certain types of works include:

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Council Directive 91/250/EEC of 14 May 1991 on the Legal Protection of Computer Programs, amended by Council Directive 93/98/EEC61

Regulating computer programs with a special directive is a result of the significance of these works in the economic development. Hence, the basic objective of this directive is to harmonize the laws of the Member States, in order to achieve a higher degree of unity in the regulation of the legal protection of computer programs. Thus, Member States are obligated to protect computer programs as literary works,62 within the meaning of Article 2/1 of the Berne Convention. This again refutes the possibility of per se patenting of computer programs.63 Moreover, the purpose of this directive is to outline special rules concerning the protection of computer programs, different from the general rules for the protection of copyright works, especially in view of the users’ rights, the limitations of those rights and the relationship between the author and the employer.

Directive 96/9/EC of the European Parliament and of the Council of 11 March 1996 on the Legal Protection of Databases64 The adoption of Directive 96/9/EC is triggered by the specific modalities for database protection. Namely, the databases which are original, enjoy protection as copyright works. On the other hand, sui generis protection is provided for the databases which are not original, but in which the maker of a database gave qualitatively and/or quantitatively a substantial investment in either the obtaining, verification or presentation of the contents.65 It is evident that this protection was introduces rather as a reward for the economic (and not creative) investment, and thus the protection was placed in the line of the related rights.

Another group are the directives which regulate the specific rights of the authors or holders of related rights. These include:

Council Directive 93/83/EEC of 27 September 1993 on the Coordination of Certain Rules Concerning Copyright and Rights Related To Copyright Applicable To Satellite Broadcasting and Cable Retransmission66 The Council Directive 93/83/EEC establishes exclusive right to satellite broadcasting of

the authors,67 which may be transferred through the mechanisms of individual and collective exercise. Also, the copyright and related rights holders are entitled to cable retransmission,68

61

Council Directive 91/250/EEC of 14 May 1991 on the Legal Protection of Computer Programs (Official Journal L 122, 17/05/1991 p. 0042 - 0046), amended by Council Directive 93/98/EEC (Official Journal L 290, 24/11/1993 p. 0009 – 0013). 62

See Art. 1/1 of the Council Direcitve 91/250/EEC 63 See: Bently L., Sherman B.: Intellectual Property Law, Oxford University Press, 2004, p. 419-420. 64

Directive 96/9/EC of the European Parliament and of the Council of 11 March 1996 on the Legal Protection of Databases (Official Journal L 077, 27/03/1996 p. 0020 – 0028). 65 See Article 134-а/1 of the Law on the Copyright and Related Rights and Article 7/1 of the Directive 96/9/ЕC. 66 Council Directive 93/83/EEC of 27 September 1993 on the Coordination of Certain Rules Concerning Copyright and Rights Related To Copyright Applicable To Satellite Broadcasting and Cable Retransmission (Official Journal L 248, 06/10/1993 p. 0015 – 0021). 67 See Article 2 of the Council Directive 93/83/EEC 68 See Article 8 of the Council Directive 93/83/ЕЕC.

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whereas it may only be exercised through a collecting society,69 except in the cases of cable retransmission by broadcasting organizations.70 With this, the legal licences system is abandoned.71

Directive 2006/115/EC of the European Parliament and of the Council of 12 December 2006 on rental right and lending right and on certain rights related to copyright in the field of intellectual property72 The Directive 2006/115/EC is a codified version of the Council Directive 92/100/EEC 73

and has been brought as a result of the multiple changes of the latter. The Directive deals with the introduction of the right to rental74 and lending in favour of the authors, performers, phonogram producers and film producers.75 This Directive also provides special rules in regard to the specific powers of the related rights holders. Thus, exclusive right to fixation of performances76 and exclusive right to fixation of broadcasts77 are provided. There is also a provision for exclusive right to broadcasting by wireless means and the communication to the public of performers’ performances78 and broadcasting organizations.79 Finally, it provides the exclusive distribution rights to performers, phonogram producers, film producers and broadcasting organizations.80

Directive 2001/84/EC of the European Parliament and of the Council Of 27 September 2001 On The Resale Right For The Benefit Of The Author Of An Original Work Of Art81

The Directive 2001/84/ЕC regulates the so called resale right in a detailed manner. This right has found it place in Article 14-ter of the Berne Convention. Member States shall provide, for the benefit of the author of an original work of art, a resale right, to be defined as an inalienable right, which cannot be waived, even in advance, to receive a royalty based on the sale price obtained for any resale of the work, subsequent to the first transfer of the work by the author.82

69 See Article 9/1 of the Council Directive 93/83/EEC. 70 See Article 10 of the Council Directive 93/83/EEC. 71 See: Goldstein P.: International Copyright, Oxford University Press, 2001, p. 318. 72 Directive 2006/115/EC of the European Parliament and of the Council of 12 December 2006 on rental right and lending right and on certain rights related to copyright in the field of intellectual property (Official Journal L 376, 27/12/2006 p. 0028 - 0035). 73

Council Directive 92/100/EEC of 19 November 1992 on rental right and lending right and on certain rights related to copyright in the field of intellectual property (Official Journal L 346 , 27/11/1992 P. 0061 – 0066). 74 In the Law on Copyright this term is translated incorrectly 75

See Article 3/1 of the Directive 2006/115/ЕC and Articles 19/1, 111/1/5, 118, 122. In view of the lending right, please see Article 6 of the Directive 2006/115/ЕC. 76 See Article 7/1 of Directive 2006/115/ЕC. 77

See Article 7/2 of Directive 2006/115/ЕC. 78 See Article 8/1 of Directive 2006/115/ЕC. 79 See Article 8/3 of Directive 2006/115/ЕC. 80 See Article 9/1 of Directive 2006/115/ЕC. 81 Directive 2001/84/EC of the European Parliament and of the Council Of 27 September 2001 On The Resale Right For The Benefit Of The Author Of An Original Work Of Art (Official Journal L 272, 13/10/2001 p. 0032 - 0036). 82 Article 4 of the Directive 2001/84/ЕC stipulates the royalty rates. The Law on Copyright and Related Rights has completely taken the solutions from the Directive 2001/84/ЕC in Articles 21-21-c.

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Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the Harmonisation of Certain Aspects of Copyright and Related Rights in the Information Society83 The Directive 2001/29/ЕЗ was enacted to implement the WIPO Copyright Treaty and the

WIPO Performances and Phonograms Treaty, both from 1996. The purpose of Directive 2001/29/ЕC and these treaties was to modernize legal protection of copyright and related rights in the digital era. The Directive first provides exclusive right to reproduction84 for the authors, performers, phonogram producers and film producers. Then, it provides exclusive right to public communication and making available to the public for the authors85 and exclusive right to making available to the public for the performers, phonogram producers, film producers and broadcasting organisations. This covers the use of copyright works through the Internet.86 For the authors, it provides exclusive distribution right, but it also provides for exhausting of the said right.87 The exceptions and limitations to the rights have been extensively regulated by the Directive 2001/29/ЕC.88 Finally, the Directive provides the obligations of the Member States in regard to the technological measures89 and the rights-management information.90

In regard to the term of protection of copyright and related rights, there is the Directive 2006/116/EC of the European Parliament and of the Council of 12 December 2006 on the term of protection of copyright and certain related rights.91 This Directive is a codified version of the repeatedly amended Council Directive 93/98/ЕЕC.92 In regard to copyright works, the Directive 2006/116/ЕC provides a protection term of 70 years post mortem auctoris,93 while in case of co-authors, 70 years after the death of the last of the following co-authors to survive.94 The rights of performers expire 50 years after the date of the performance or 50 years from the date of the first such publication or the first such communication to the public.95 The rights of producers of phonograms expire 50 years after the fixation is made, or 50 years from the date

83 Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the Harmonisation of Certain Aspects of Copyright and Related Rights in the Information Society (Official Journal L 167, 22/06/2001 p. 0010 – 0019). 84 Article 2 of the Directive 2001/29/ЕC 85 See Article 3/1 of the Directive 2001/29/ЕC 86 More: Ginsburg J.: The (new?) right of making available to the public во Vaver D., Bently L. (editors): Intellectual Property in the New Millennium, Cambridge University Press, 2005, p. 234-247. 87

See Article 4 of the Directive 2001/29/ЕC. 88

See Article 5 of the Directive 2001/29/ЕC; exhaustively: Поленак-Аќимовска М., Дабовиќ-Анастасовска Ј., Пепељугоски В., Наумовски Г., Здравева Н., Гавриловиќ Н.: Авторско право и сродни права – Коментар и прилози, Скопје, 2007, стр. 104-106. 89

See Article 6 of the Directive 2001/29/ЕC 90 See Article 7 of the Directive 2001/29/ЕC; more: Дабовиќ-Анастасовска Ј., Пепељугоски В.: Авторско право, Скопје, 2006, стр. 88-89. 91 Directive 2006/116/EC of the European Parliament and of the Council of 12 December 2006 on the term of protection of copyright and certain related rights (Official Journal L 372, 27/12/2006 p. 0012 - 0018). 92 Council Directive 93/98/EEC of 29 October 1993 harmonizing the term of protection of copyright and certain related rights (Official Journal L 290 , 24/11/1993 P. 0009 – 0013). 93 See Article 1/1 of the Directive 2006/116/ЕC. 94 See Article 2/1 of the Directive 2006/116/ЕC. 95 See Article 3/1 of the Directive 2006/116/ЕC.

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of the first publication or communication to the public.96 The rights of broadcasting organisations expire 50 years after the first transmission of a broadcast.97 The Directive 2006/116/ЕC also contains rules for the term of protection of the previously unpublished works and the critical and scientific publications.98 Finally, the Directive provides that the terms laid down shall be calculated from the first day of January of the year following the event which gives rise to them.99

7.2. Unification of Industrial Property Rights

In the field of industrial property law , it is safe to say that there is unified European industrial

property law, which is valid for all Member States of the Union. Thereby, it should not be

understood that there is no harmonization of industrial property right in the

Member States. The presentation in this section will show that. Thereby, it is important to note

that there is tendency on EU level towards establishment of community industrial property

rights which exist independently from the national patents, designs, marks, etc. In this context,

what is typical is that the bodies of the Community intervene in the creation of community

rights, while the national industrial property rights are left to the laws of the Member States.

On the other hand, where assessment has been made that certain harmonization of the

national industrial property rights is needed, intervention had been done with directives, as the

text below will show. It is evident however, that harmonization precedes unification.

Since the purpose of these regulations is to apply them directly, without interventions

into the domestic legislation, there is no need for them to be introduced in the Macedonian

industrial property law . After the Republic of Macedonia would become an EU member, these

sources would directly be applied . However, harmonization of some legal provisions to those

regulations is desirable, so that the difference between the national and community industrial

property rights would be erased and maximum unification degree of the said rights would be

achieved on the internal market. This would also be in line with the Stabilisation and

Association Agreement, particularly Article 71/2.100 For the time being, applicants from the

Member States have the opportunity to opt between national and community industrial

property right, where community rights exist.

In the text that follows, we will review the community approaches regarding the

different industrial property rights.

96 See Article 3/3 of the Directive 2006/116/ЕC. 97 See Article 3/4 of the Directive 2006/116/ЕC 98 See Article 4 and 5 of the Directive 2006/116/ЕC. 99 See Article 8 of the Directive 2006/116/ЕC. 100 See: Поленак-Аќимовска М., Дабовиќ-Анастасовска Ј., Пепељугоски В., Бучковски В.: idem, стр. . 77-78.

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In the field of patent law, there is still no community patent system in the EU, although

there is a tendency towards developing such right, in line with the conclusions of the European

Council, held in March 2000 in Lisbon, since when several draft proposals to the Council

Regulation were prepared.101 At the moment, instead of the community patent, there is a

possibility to apply for protection of an invention through the provisions of the European Patent

Convention.102

Prior to starting the procedure for the adoption of a community patent regulation, the

Directive 98/44/EC of the European Parliament and of the Council of 6 July 1998 on the Legal Protection of Biotechnological Inventions was brought.103 The Directive 98/44/ЕC was adopted in order to harmonize the rules of the Member states in regard to biotechnological inventions, or introduction of such protection in the Member States that are not familiar with it. The Directive provides an obligation for recognizing the new, inventive and industrially applicable inventions, although the same refer to a product consisted of or containing biological material or procedure for production, processing or use of biological material. The Directive 98/44/ЕC clearly provides the human body, at the various stages of its formation and development, and the simple discovery of one of its elements, including the sequence or partial sequence of a gene, cannot constitute patentable inventions .104 The following are particularly considered unpatentable: processes for cloning human beings; processes for modifying the germ line genetic identity of human beings; uses of human embryos for industrial or commercial purposes; processes for modifying the genetic identity of animals (with exceptions).105 The Directive also regulates the scope of protection of biotechnological inventions,106 as well as the limitations of the protection.107 In the field of patent law, some interventions have been made in regard to the introduction of supplementary protection certificates for medical products and plant protection products, with the Council Regulation (EEC) No 1768/92 of 18 June 1992 concerning the creation of a supplementary protection certificate for medicinal products 108 and Regulation (EC) No 1610/96 of the European Parliament and of the Council of 23 July 1996 concerning the creation of a supplementary protection certificate for plant protection products.109 By granting an additional protection certificate, the duration of the patent protection is extended for the

101

See: http://ec.europa.eu/internal_market/indprop/patent/index_en.htm. 102

More: Prime T.: European Intellectual Property Law, Ashgate-Darmouth, 200, p. 175-176. 103 Directive 98/44/EC of the European Parliament and of the Council of 6 July 1998 on the Legal Protection of Biotechnological Inventions (Official Journal L 213, 30/07/1998 p. 0013 - 0021). 104

See Article 5/1 of the Directive 98/44/ЕЗ 105 See Article 6 of the Directive 98/44/ЕЗ и чл. 20/1/3 од ЗИС. 106

See Article. 8-9 of the Directive 98/44/ЕЗ и чл. 70-а од ЗИС. 107 See Article 11 of the Directive 98/44/ЕЗ и чл. 75-а од ЗИС. 108 Council Regulation (EEC) No 1768/92 of 18 June 1992 concerning the creation of a supplementary protection certificate for medicinal products (Official Journal L 182, 2.7.1992, p. 1), amended by Regulation (EC) No 1901/2006 (Official Journal L 378, 27.12.2006, p. 1). 109 Regulation (EC) No 1610/96 of the European Parliament and of the Council of 23 July 1996 concerning the creation of a supplementary protection certificate for plant protection products (Official Journal L 198, 8.8.1996, p. 30).

http://ec.europa.eu/internal_market/indprop/patent/index_en.htm

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period the medical product or the plant protection product were supposed to obtain approval for release on the market,110 but not more than five years.111 The regulations contain provisions on the conditions for obtaining the certificate,112 the subject-matter of protection and the effects of the certificate,113 the entitlement to the certificate114 and the procedure for awarding a certificate for additional protection.115

From viewpoint of community protection of new plant varieties, the Council Regulation (EC) No 2100/94 of 27 July 1994 on Community plant variety rights, amended by Council Regulation (EC) No 2506/95, Council Regulation (EC) No 807/2003, Council Regulation (EC) No 1650/2003, Council Regulation (EC) No 873/2004 and Council Regulation (EC) No 15/2008116 and Commission Regulation (EC) No 1238/95 of 31 May 1995 establishing implementing rules for the application of Council Regulation (EC) No 2100/94 as regards the fees payable to the Community Plant Variety Office, amended by Commission Regulation (EC) No 329/2000, Commission Regulation (EC) No 569/2003, Commission Regulation (EC) No 1177/2005 and Commission Regulation (EC) No 2039/2005.117

The law on trademarks (trademark law) begins harmonization with the First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks, amended by Council Decision 92/10/EEC.118 This Directive applies to individual trade mark, a collective mark or a guarantee or certification mark.119 There are substantially relevant rules in the Directive for signs which cannot constitute a trade mark,120 or 110 See Article 2 of the Council Directive (ЕЕC) no. 1768/92, Article 2 of the Regulation (EC) no. 1610/96 and Article 65/2 of IPL. 111 See Article 13/2 of the Council Directive (ЕЕC) no. 1768/92, Article 13/2 of the Regulation (EC) no. 1610/96 and Article 65/2 of IPL. 112 See Article 3 of the Council Directive (ЕЕC) no. 1768/92, Article 3 of the Regulation (EC) no. 1610/96 Article 66-а of IPL. 113 See Article 4 and 5 of the Council Directive (ЕЕC) no. 1768/92, Article 4 and 5 of the Regulation (EC) no. 1610/96 and Article 66-b of IPL. 114 See Article 6 of the Council Directive (ЕЕC) no. 1768/92, Article 6 of the Regulation (EC) no. 1610/96 and Article 66-c of IPL. 115 See Article 7-12 of the Council Directive (ЕЕC) no. 1768/92, Article 7-12 of the Regulation (EC) no. 1610/96 and Article 66-d-67 of IPL. 116 Council Regulation (EC) No 2100/94 of 27 July 1994 on Community plant variety rights (Official Journal L 227, 1.9.1994, p. 1), amended by Council Regulation (EC) No 2506/95 (Official Journal L 258, 28.10.1995, p. 3), Council Regulation (EC) No 807/2003 (Official Journal L 122, 16.5.2003, p. 36), Council Regulation (EC) No 1650/2003 (Official Journal L 245, 29.9.2003, p. 28), Council Regulation (EC) No 873/2004 (Official Journal L 162, 30.4.2004, p. 38) and Council Regulation (EC) No 15/2008 (Official Journal L 8, 11.1.2008, p. 2). 117

Commission Regulation (EC) No 1238/95 of 31 May 1995 establishing implementing rules for the application of Council Regulation (EC) No 2100/94 as regards the fees payable to the Community Plant Variety Office (Official Journal L 121, 1.6.1995, p. 31), amended by Commission Regulation (EC) No 329/2000 (Official Journal L 37, 12.2.2000, p. 19), Commission Regulation (EC) No 569/2003 (Official Journal L 82, 29.3.2003, p. 13), Commission Regulation (EC) No 1177/2005 (Official Journal L 189, 21.7.2005, p. 26) and Commission Regulation (EC) No 2039/2005 (Official Journal L 328, 15.12.2005, p. 33). 118 First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (Official Journal L 40, 11.2.1989, p. 1), amended by Council Decision 92/10/EEC (Official Journal L 6, 11.1.1992, p. 35). 119 See Article 1 of the First Council Directive 89/104/ЕЕC. 120 See Article 3 of the First Council Directive 89/104/ЕЕC.

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grounds for refusal or invalidity concerning conflicts with earlier rights,121 whereas difference is made between the absolute and relative grounds for rejection of the registration. The First Council Directive 89/104/EEC also contains rules of entitlement of the proprietor,122 restrictions of the right,123 exhaustion of the right,124 consequence of acquiescence125 and obligation for use, as well as Sanctions for non-use of a trade mark.126

The unification of the trademark law, or the establishment of the community trademark has been done by the following:

Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark , amended by Council Regulation (EC) No 3288/94, Council Regulation (EC) No 807/2003, Council Regulation (EC) No 1653/2003, Council Regulation (EC) No 1992/2003, Council Regulation (EC) No 422/2004 and Council Regulation (EC) No 1891/2006127

Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark, amended by Commission Regulation (EC) No 782/2004 and Commission Regulation (EC) No 1041/2005128

Commission Regulation (EC) No 2869/95 of 13 December 1995 on the fees payable to the Office for Harmonization in the Internal Market (Trade Marks and Designs), amended by Commission Regulation (EC) No 781/2004, Commission Regulation (EC) No 1042/2005 and Commission Regulation (EC) No 1687/2005129 and

Commission Regulation (EC) No 216/96 of 5 February 1996 laying down the rules of procedure of the Boards of Appeal of the Office for Harmonization in the Internal Market (Trade Marks and Designs), amended by Commission Regulation (EC) No 2082/2004.130

121 See Article 4 of the First Council Directive 89/104/ЕЕC. 122 See Article 5 of the First Council Directive 89/104/ЕЕC. 123 See Article 6 of the First Council Directive 89/104/ЕЕC. 124 See Article 7 of the First Council Directive 89/104/ЕЕC. 125 See Article 9 of the First Council Directive 89/104/ЕЕC. 126 See Article 10-12 of the First Council Directive 89/104/ЕЕC. 127 Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (Official Journal L 011, 14/01/1994 p. 0001 - 0036), amended by Council Regulation (EC) No 3288/94 (Official Journal L 349, 31/12/1994 p. 0083 - 0084), Council Regulation (EC) No 807/2003 (Official Journal L 122, 16/05/2003 p. 0036 - 0062), Council Regulation (EC) No 1653/2003 (Official Journal L 245, 29/09/2003 p. 0036 - 0037), Council Regulation (EC) No 1992/2003 (Official Journal L 296, 14/11/2003 p. 0001 - 0005), Council Regulation (EC) No 422/2004 (Official Journal L 070, 09/03/2004 p. 0001 - 0007) and Council Regulation (EC) No 1891/2006 (Official Journal L 386/14 of 29.12.2006). 128

Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (Official Journal L 303, 15/12/1995 p. 0001 - 0032), amended by Commission Regulation (EC) No 782/2004 (Official Journal L 123, 27/04/2004 p. 0088 – 0097) and Commission Regulation (EC) No 1041/2005 (Official Journal L 172, 05/07/2005 p. 0004 - 0021). 129 Commission Regulation (EC) No 2869/95 of 13 December 1995 on the fees payable to the Office for Harmonization in the Internal Market (Trade Marks and Designs) (Official Journal L 303, 15.12.1995, p. 33), amended by Commission Regulation (EC) No 781/2004 (Official Journal L 123, 27.4.2004, p. 85), Commission Regulation (EC) No 1042/2005 (Official Journal L 172, 5.7.2005, p. 22) and Commission Regulation (EC) No 1687/2005 (Official Journal L 271, 15.10.2005, p. 14). 130 Commission Regulation (EC) No 216/96 of 5 February 1996 laying down the rules of procedure of the Boards of Appeal of the Office for Harmonization in the Internal Market (Trade Marks and Designs) (Official Journal L 028,

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On the subject of legal protection of domain names, rules were adopted in the EU in

regard to the use of the top level domain .eu. These are the Regulation (EC) No 733/2002 of the European Parliament and of the Council of 22 April 2002 on the implementation of the eu Top Level Domain131 and the Commission Regulation (EC) No 874/2004 of 28 April 2004 laying down public policy rules concerning the implementation and functions of the .eu Top Level Domain and the principles governing registration.132 The regulation of this area is now metalegal, which is not good, as it creates a large space for cyclical generation of disputes. Therefore, this situation needs to be overcome urgently by adopting a special law, and thus this area would be fully and solely regulated. In absence of such regulations, the domain name is protected by the regulations of the law against unfair competition. The domain name is a separate industrial property right, closest to the trademark but qualitatively different. In this sense, it might be the best to go for adoption of a new and special law, and not for regulation of this issue in the potential new laws that would regulate the Internet network in general.

The harmonization of the right to industrial design was first made by the Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs.133 The Directive 98/71/ЕC imposes the Member States granting exclusive rights to the persons who have protected the designs by registration,134 which is new135 and have individual character.136 The Directive contains provisions for preventing a form or a drawing to be protected as design if it is contrary to public policy or accepted principles of morality,137 and reasons due to which registration of a design may be refused,138 the scope of the holder’s rights139 and the limitations of the holder’s rights.140 Unlike IPL, the Directive contains a provision on exhaustion of rights.141 The term of protection of the industrial design is 5 years from the date of filing of the application, with the right to renew for one of more periods of 5 years each, but not more than 25 years.142

The unification of the right to industrial design, or the establishment of a community industrial design has been done by the following:

06/02/1996 p. 0011 - 0013), amended by Commission Regulation (EC) No 2082/2004 (Official Journal L 360, 07/12/2004 p. 0008 - 0011). 131 Regulation (EC) No 733/2002 of the European Parliament and of the Council of 22 April 2002 on the implementation of the.eu Top Level Domain (Official Journal L 113, 30/04/2002 p. 0001 - 0005). 132

Commission Regulation (EC) No 874/2004 of 28 April 2004 laying down public policy rules concerning the implementation and functions of the.eu Top Level Domain and the principles governing registration (Official Journal L 162, 30/04/2004 p. 0040 - 0050). 133

Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs (Official Journal L 289, 28/10/1998 p. 0028 - 0035). 134 See Article 3/1 of the Directive 98/71/ЕC. 135

See Article 4 of the Directive 98/71/ЕC. 136 See Article 5 of the Directive 98/71/ЕC. 137 See Article 8 of the Directive 98/71/ЕC. 138 See Article 11 of the Directive 98/71/ЕC 139 See Article 13 of the Directive 98/71/ЕC. 140 See Article 12 of the Directive 98/71/ЕC. 141 See Article 15 of the Directive 98/71/ЕC. 142 See Article 10 of the Directive 98/71/ЕC and Article 122 of IPL.

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Council Regulation (EC) No 6/2002 of 12 December 2001 on Community, amended by Council Regulation (EC) No 1891/2006,143

Commission Regulation (EC) No 2245/2002 of 21 October 2002 implementing Council Regulation (EC) No 6/2002 on Community designs, ameneded by Commission Regulation (EC) No 876/2007144 and

Commission Regulation (EC) No 2246/2002 of 16 December 2002 on the fees payable to the Office for Harmonization in the Internal Market (Trade Marks and Designs) in respect of the registration of Community designs, amended by Commission Regulation (EC) No 877/2007.145

In regard to the legal protection of geographical indications, i.e. appellations of origin

and geographical indications, the following have relevance in the EU legislation:

Council Regulation (EC) No 509/2006 of 20 March 2006 on agricultural products and foodstuffs as traditional specialities guaranteed,146

Commission Regulation (EC) No 1216/2007 of 18 October 2007 laying down detailed rules for the implementation of Council Regulation (EC) No 509/2006 on agricultural products and foodstuffs as traditional specialities guaranteed,147

Council Regulation (EC) No 510/2006 of 20 March 2006 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs, amended by Council Regulation (EC) No 1791/2006148 and

Commission Regulation (EC) No 1898/2006 of 14 December 2006 laying down detailed rules of implementation of Council Regulation (EC) No 510/2006 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs.149

143 Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (Official Journal L 003, 05/01/2002 p. 0001 - 0024), amended by Council Regulation (EC) No 1891/2006 (Official Journal L 386/14 of 29.12.2006). 144 Commission Regulation (EC) No 2245/2002 of 21 October 2002 implementing Council Regulation (EC) No 6/2002 on Community designs (Official Journal L 341, 17/12/2002 p. 0028 - 0053), ameneded by Commission Regulation (EC) No 876/2007 (Official Journal L 193, 25/07/2007 p. 0013 - 0015). 145 Commission Regulation (EC) No 2246/2002 of 16 December 2002 on the fees payable to the Office for Harmonization in the Internal Market (Trade Marks and Designs) in respect of the registration of Community designs (Official Journal L 341, 17.12.2002, p. 54), amended by Commission Regulation (EC) No 877/2007 (Official Journal L 193, 25.7.2007, p. 16). 146

Council Regulation (EC) No 509/2006 of 20 March 2006 on agricultural products and foodstuffs as traditional specialities guaranteed (Official Journal L 093, 31/03/2006 P. 0001 – 0011). 147 Commission Regulation (EC) No 1216/2007 of 18 October 2007 laying down detailed rules for the implementation of Council Regulation (EC) No 509/2006 on agricultural products and foodstuffs as traditional specialities guaranteed (Official Journal L 275, 19/10/2007 p. 0003 - 0015). 148 Council Regulation (EC) No 510/2006 of 20 March 2006 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs (Official Journal L 093, 31/03/2006 p. 0012 - 0025), amended by Council Regulation (EC) No 1791/2006 (Official Journal L 363, 20.12.2006, p. 1). 149 Commission Regulation (EC) No 1898/2006 of 14 December 2006 laying down detailed rules of implementation of Council Regulation (EC) No 510/2006 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs (Official Journal L 369, 23/12/2006 p. 0001 - 0019).

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Lastly, in regard to the protection of topographies of integral circuits, Council Directive

87/54/EEC of 16 December 1986 on the Legal Protection of Topographies of Semiconductor Products150 is quite important. The Council Directive 87/54/ЕЕC imposes an obligation to the Member states to introduce protection of topographies of semiconductor products and to confer exclusive rights to their holders,151 if it is the result of its creator’s own intellectual effort and if it is not commonplace in the semiconductor industry.152 Right to protect topography also applies in favour of its constructor,153 while if the topography was created under a contract of employment or another contract, the Member States may provide that a right to protection applies to the employer or commissioner.154 The Council Directive 87/54/ЕЕC regulates the rights of the topography holder,155 the boundaries of protection,156 the term of protection and the holder’s right to indicate integral circuits with a capital T.157

The comparative analyses of the community and domestic sources of the industrial property right shows that there is almost full compliance of the domestic industrial property law with the one of the EU. 7.3. Enforcement of Intellectual Property Rights

The enforcement of the intellectual property rights is regulated uniformly both for copyright and related rights and industrial property rights with the Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights.158

The purpose of the Directive 2004/48/ЕC is creation of an efficient protection system for the intellectual property rights in general, as it was concluded that without effective means for enforcing intellectual property rights, innovation and creativity are discouraged and investment diminished. The measures provided by the Directive largely rely on those established by TRIPS.159 This is of extraordinary importance for intellectual property rights, as the above mentioned community sources either do not contain or contain very scarce provisions on the enforcement of intellectual property rights. With the adoption of Directive 2004/48/ЕC, an attempt is made to further regulate this area, which would enable the community sources i.e. national legislation provisions to be effectively and efficiently enforced.

150 Council Directive 87/54/EEC of 16 December 1986 on the Legal Protection of Topographies of Semiconductor Products (Official Journal L 024, 27/01/1987 p. 0036 - 0040). 151

See Article 2/1 of the Council Directive 87/54/ЕЕC. 152 See Article 2/2 of the Council Directive 87/54/ЕЕC. 153

See Article 3/1 of the Council Directive 87/54/ЕЕC. 154 See Article 3/2 of the Council Directive 87/54/ЕЕC. 155 See Article 5/1 of the Council Directive 87/54/ЕЕC. 156 See Article 8 of the Council Directive 87/54/ЕЕC. 157 See Article 7 and 9 of the Council Directive 87/54/ЕЕC. 158 Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights (Official Journal L 157, 30.4.2004). 159 See Article 2/3/b of the Directive 2004/48/ЕC

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The Directive concerns the measures, procedures and remedies necessary to ensure the enforcement of intellectual property rights.160 Those measures, procedures and remedies shall be fair and equitable and shall not be unnecessarily complicated or costly, or entail unreasonable time-limits or unwarranted delays. Those measures, procedures and remedies shall also be effective, proportionate and dissuasive and shall be applied in such a manner as to avoid the creation of barriers to legitimate trade and to provide for safeguards against their abuse.161

Persons entitled to apply for the application of the measures, procedures and remedies are the holders of intellectual property rights, in accordance with the provisions of the applicable law; all other persons authorised to use those rights, in particular licensees, in so far as permitted by and in accordance with the provisions of the applicable law; intellectual property collective rights management bodies which are regularly recognised as having a right to represent holders of intellectual property rights, in so far as permitted by and in accordance with the provisions of the applicable law; and professional defence bodies which are regularly recognised as having a right to represent holders of intellectual property rights, in so far as permitted by and in accordance with the provisions of the applicable law.162

The Directive 2004/48/ЕC contains provisions regarding the need for providing a procedure for preserving evidence even before the commencement of the protection proceedings.163

Furthermore, the Directive 2004/48/ЕC regulates the right to provide information. The Directive provides a comprehensive system of interlocutory injunctions,164 contains provisions on corrective measures and injunctions aimed at prohibiting the continuation of the infringement,165 right to compensation of damages,166 compensation of legal costs167 and measures for publication of judicial decisions.168

The bodies of the EU are in process of adopting a Directive on penalty measures for the protection of intellectual property rights.169 8. IMPACT OF INTERNATIONAL AND EU LAW ON THE NATIONAL INTELLECTUAL PROPERTY LEGISLATION

Intellectual Property Right is the youngest branch in the civil law system.170

160

See Article 1 of the Directive 2004/48/ЕC 161 See Article 3 of the Directive 2004/48/ЕC 162

See Article 4 of the Directive 2004/48/ЕC 163

See Article 7/1 of the Directive 2004/48/ЕC. 164 See Article 9 of the Directive 2004/48/ЕC. 165

See Article 10 and 11 of the Directive 2004/48/ЕC 166 See Article 13 of the Directive 2004/48/ЕC 167 See Article 14 of the Directive 2004/48/ЕC 168 See Article 15 of the Directive 2004/48/ЕC 169 See: http://europa.eu.int/eur-lex/lex/LexUriServ/site/en/com/2005/com2005_0276en01. pdf 170 More: Дабовиќ-Анастасовска Ј., Гавриловиќ Н.: Правото на интелектуална сопственост во Република Македонија, Годишник на Правниот факултет „Јустинијан Први“ во чест на Стрезо Стрезовски, том 41, Скопје, 2006, стр. 578-581.

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The creation of the Intellectual Property system is still a work in progress, on national, international and supra-national level. Interestingly, the development of the Intellectual Property system first begins on international level. Namely, in the late XIX century, the Paris Convention for the Protection of Industrial Property (1883)171 and the Berne Convention for the Protection of Literary and Artistic Works (1886)172 were adopted. In both cases we have multilateral conventions, which lay down the principles of national treatment, assimilation and minimum rights173 and are primarily enforced on foreigners. However, as danger appears that foreigners would enjoy a higher protection degree than nationals, international sources become an instrument of harmonization and unification of the domestic legislations and creation of a universal system for the protection of intellectual property rights.174

Following the adoption of the Paris and Berne Conventions, there is a so called inflation of international conventions and treaties regulating issues of copyright and related rights and industrial property rights, separately. In the field of copyright, worth mentioning are the Universal Copyright Convention, the Rome Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations, WIPO Performances and Phonograms Treaty, WIPO Copyright Treaty etc., while in the field of industrial property, we would mention the Madrid Agreement Concerning the International Registration of Marks,

Hague Agreement Concerning the International Registration of Industrial Designs, Patent Cooperation Treaty etc. For the implementation of the protection of intellectual property rights, however, the most important is the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement) of the World Trade Organization (WTO). Each of these sources has contributed to the harmonization and unification of the protection of intellectual property rights on national level.

From the viewpoint of harmonization of the national and EU legislation, as a separate instrument stands the Stabilization and Association Agreement between the Republic of Macedonia and the European Communities and their Member States. Starting from the intention of the Republic of Macedonia for accession to the European Union (hereinafter EU), and calling on the EU's readiness to integrate our country as far as possible in the political and economic mainstream of Europe and its status as a potential EU candidate, based on the EU Treaty and fulfilling the criteria defined by the European Council in June 1993, the Republic of Macedonia and the EU signed the Stabilization and Association Agreement (hereinafter referred to as SAA). SAA is a mutually binding international legal act, i.e. reciprocal legal document composed of a preamble, normative text and ten declarations in relation to specific articles.

171

See the text in: Поленак-Аќимовска М. Дабовиќ-Анастасовска Ј., Пепељугоски В., Бучковски В., Варга Љ., Наумовски Г.: Индустриска сопственост – Медународни конвенции и договори, Скопје, 2004, стр. 81-111. 172

See the text in: Поленак-Аќимовска М., Дабовиќ-Анастасовска Ј., Пепељугоски В., Дуковска-Деспотовска Ј., Здравева Н., Гавриловиќ Н.: Авторско право и сродни права – Медународни извори, Скопје, 2006, стр. 79-119. 173 More: Поленак-Аќимовска М., Дабовиќ-Анастасовска Ј., Пепељугоски В., Бучковски В.: Интелектуална сопственост I – Индустриска сопственост, Скопје, 2004, стр. 61-62; Дабовиќ-Анастасовска Ј., Гавриловиќ Н.: Медународните стандарди за авторскоправна заштита и домашното авторско право, Правник, бр. 171-172, Скопје, 2006, стр. 13-14. 174 Дабовиќ-Анастасовска Ј., Гавриловиќ Н.: ibid, стр. 14.

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The normative text is divided into 10 chapters with 128 articles. The objectives of the associative status, as established by Article 1 of the SAA, consist of providing an appropriate framework for political dialogue, allowing the development of close political relations between the parties; supporting the efforts of the Republic of Macedonia's economic development and international cooperation and harmonization of legislation with that of the community; promoting balanced economic relations and gradually developing a free economic zone between the Community and the Republic of Macedonia and fostering regional cooperation in all fields covered by the SAA.

Interestingly, one of the basic principles underlying the Agreement is the principle of respecting the principles of market economy as reflected in the document of the Bonn Conference on Economic Cooperation of the OSCE. Article 6 of the Agreement deals with the principle of harmonization of the text of the SAA with the corresponding provisions of the WTO, and in particular Article XXIV of GATT 1994 and Article V of GATS.

The regulation of competition and the protection of intellectual property rights in the relations between the EU and the Republic of Macedonia, the most important are Articles 68, 69, 71, 97, Annex 7 and the joint declaration on issues of traffic in terms of Article 57.

SAA envisaged the approximation of the national legislation with the one of the EU, and it particularly took into consideration the issues of intellectual property rights. Namely, Article 5 of the Agreement originally provided that the association will be fully achieved within a maximum of 10 years, during the transitional period, which will be divided into two consecutive phases. The purpose of this division into two phases is due to the fact that the provisions of the Stabilisation and Association Agreement should be implemented progressively and focus, among other things, on Chapter VI.175. In Article 68, it was envisaged that approximation begins from the day of signing the Agreement176 and last five years in terms of the intellectual property rights.177 Furthermore, Article 71 stipulates that the parties confirm the importance they attribute to ensuring adequate and effective protection and enforcement of intellectual, industrial and commercial property. Moreover, RM is expressly committed to take all necessary measures to ensure, not later than five years after entry into force of the Agreement, a degree of protection of intellectual, industrial and commercial property rights, similar to those existing in the Community, including effective means for enforcement of those rights.178

Also, the Republic of Macedonia has undertaken to join, during the above mentioned period, the multilateral conventions on intellectual, industrial and commercial property rights referred to in Annex VII of the Agreement.179

175 This chapter regulates the need for approximation of legislation in the field of intellectual property rights. 176 And not from the date of its entry into force. 177 The reports of the European Commission suggest progress in terms of the approximation of the national legislation with EU law. Remarks are addressed at the Republic of Macedonia in terms of the efficiency and effectiveness in the implementation of the legislation and enforcement of intellectual property rights. 178 Article 71 of the Agreement. 179 Our country has completed this obligation.

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