WIPOD – International Trademark System Talks: Transcript of Episode 2

A History of Trademarks: The Road to Madrid from Paris via Rome

Hi and welcome to International Trademark System Talks, a brand new podcast brought to you by the WIPO’s Madrid System Information and Promotion Division. This podcast will give you insights into the International Trademark System, also known as the Madrid System. My name is Olivier Pierre and I will be your host.

In our previous episode, we browsed through the history of trademarks from ancient times to the Paris Conference at the end of the 19^th century. In today’s episode, we will deal with a series of historical events. We will begin with the 1880 Paris Conference on Industrial Property, which eventually led to the Madrid Agreement Concerning the International Registration of Marks of 1891.

The 19^th century witnessed the development of trademark regulations throughout the World. The need for international protection of intellectual property became evident when foreign exhibitors refused to attend the 1873 International Exhibition of Inventions in Vienna because that they were afraid their ideas would be stolen and exploited commercially in other countries. We addressed this in our previous episode. Unfortunately, this wasn’t uncommon, sometimes inventions could get stolen. This was the case for Elias Howe, who patented a sewing machine with a lockstitch design, the most common mechanical stitch used in modern sewing machines. Howe found out that Isaac Singer (the same Singer from the widely renowned sewing machines), had created a replica of his machine using the lockstitch he had patented. Howe won the legal dispute however, and won a gold medal at the Paris Exhibition of 1867.

The issue of stolen intellectual property was also discussed during the Paris Universal exhibition of 1878. During this exhibition, there were many notable inventions on display: Alexander Graham Bell's telephone; the head of the Statue of Liberty showcased in the Trocadéro palace garden.

Remember Isaac Singer? Rumor has it that Singer´s latest wife, Isabella Eugénie Boyer, a French-American model, inspired the face of the Statue of Liberty. Famous writers also attended, such as Victor Hugo, the author of the French historical novel Les Misérables if you do not know him.

Following the Exhibition, the French Government decided to take the lead and presented a final draft proposing an international “Union” for the protection of industrial property. To achieve this, they invited a number of other governments to an International Conference in Paris two years later, exactly in 1880.

As a curiosity, at the time, France already had a trademark registry. In 1858, a pharmacist named Boutigny recorded the trademark VIN ANTI-LYMPHATIQUE, to avoid liquid retention in the body. This mark is, to date, the oldest trademark found at the Intellectual Property Office of France which we call INPI. Even if this anti-lymphatic wine is no longer in demand today, the late Boutigny's pharmacy, still exists.

Let’s get back to the Paris Convention of 1880, 35 official delegates from South America and Europe attended the Conference. Jules Barthélemy Saint-Hilaire, the French Minister of Foreign Affairs, who some believed or gossiped was Napoleon I’s son, delivered the opening speech:

Messieurs, nous avons l'assurance que vos Conférences préliminaires obtiendront tout le succès qu'elles méritent, et qu'elles porteront bientôt toutes les conséquences qu'on doit en attendre. Au nom de la République française, soyez les bienvenus.

Gentlemen, we are confident that your Preliminary Conferences will be as successful as they deserve, and that they will soon bear all the consequences that can be expected of them. In the name of the French Republic, welcome. 

After several days of deliberations, the Conference adopted a draft convention. The president of this Conference, French senator, Mr. Bozerian, explained that the Conference was the preface to a book that was about to be opened and that may not be closed for many years. Little did he know how right he was: this book is not only still open, but continues to be edited!

States delegates met at a similar Conference in 1883 to approve the final Convention. In the end, the Paris Convention for the Protection of Industrial Property was signed by the 11 following States namely: Belgium, Brazil, France, Guatemala, Italy, the Netherlands, Portugal, Salvador, Serbia, Spain and Switzerland. The convention, which entered into force in 1884, contains 19 articles, and is commonly called the Paris Convention. It is still in force in 2021, which makes the convention older than the Eiffel Tower. Can you believe that?

The Paris Convention was the first major step taken to help creators protect their intellectual property rights in other countries.  Let’s now get into the details of the Paris Convention. We can divide the provisions into three main categories that apply to trademarks among other Industrial Properties. Number 1, the right to national treatment; number 2, the right of priority and number 3, the creation of the International Bureau, also called BIRPI.

Number 1, the right to national treatment in each member state. In other words, if a foreigner from a member state of the Union files and registers a valid mark in another member state of the Union, the foreign applicant will have the same benefits as the nationals of that State.

Number 2, the right of priority. It establishes a priority system, allowing the owner of a trademark to benefit from the initial filing date of the trademark in one or more states of the Paris Union, provided that the applicant files it within six months of its initial filing. Let’s take an example. Imagine, I registered trademark A in Spain and now I want to apply for protection in France. For a period of 6 months, I benefit from a prior date, the date of registration in Spain. If a competitor wants to register the trademark in France during that period, my trademark will have the prior date, which means that it will have priority rights. This principle also applies to patents.

Number 3, the creation of the United International Bureau for the Protection of Intellectual Property, best known by its French acronym, BIRPI. The Convention created an international infrastructure for the first time to administer the workings of the Paris Union and mandated the Swiss Confederation to supervise it. Why in Switzerland you may ask? I guess you all know this joke where heaven is where the police is British, the lovers are French, the mechanics are German, the chefs Italian, and it is all organized by the Swiss. And Hell? Well, we’ll leave it to your imagination.

The BIRPI, or Les Bureaux internationaux réunis pour la protection de la propriété intellectuelle, is the embryon of WIPO. The organization, with a staff of seven, was based in the Swiss Capital, Bern.

Moving on to the Rome conference and the first draft of an agreement on international registration of trademarks. The Paris Convention held periodic conferences to revise and amend the convention based on the experience of its members. Therefore, prior to the Madrid System, there was only one revision attempt in Rome in 1886.

State representatives attended the Rome Conference of 1886, among whom intellectuals such as Luis Mariano de Larra, a Spanish writer, son of the famous journalist, Mariano José de Larra, recognized as one of the most important representative of the Spanish romantic literature. The Rome Conference made some additions to articles 10 and 6 of the Convention and agreed on a set of regulations to ensure the uniform application of the Convention. This Conference also created a draft of the future Madrid Agreement concerning the international registration of trademarks, as proposed by Switzerland and amended by Italy. The majority of delegations voted to postpone consideration of this draft Agreement until the following Conferences in Madrid in 1890 and 1891. They believed the draft needed more time for review. The idea of an international classification for goods and services protected by a trademark was also discussed as part of a wide proposal, which would have covered patents, trademarks, and designs. However, such classification for Goods and Services would not be adopted until 70 years later with the Nice Agreement of 1957. It established an international classification of goods and services applied to the registration of marks. As pointed out by Mr. Grimaldi, the Italian Minister for Agriculture, Industry and Commerce “the Rome conference could not claim the glory of advancing the system of the Paris Union, but at least, demonstrated the attachment of the Member States to the gains already made by the Paris Convention of 1883.”

The blueprint of March 1883 paved the way for the conferences held in Madrid in 1890 and in 1891, when the Madrid Agreement Concerning the International Registration of Marks was finally signed.

In the next episode, we will look at the Madrid Conferences from 1890 and 1891, in which the Madrid Agreement concerning the International Registration of Marks was approved.

We’ve now reached the end of today’s episode. Thank you so much for listening and if you have any suggestions or any topic you want us to discuss, please let us know. Don’t forget to subscribe to our podcast so you can be notified of the next episodes. See you soon on International Trademarks System Talks. Olivier Pierre, signing off.