WIPO IP Enforcement News: October-December 2003
I. SOME WIPO ACTIVITIES
From November 17 to 19, 2003, WIPO participated in a Consultation Meeting on Enforcement, organized by the South African Department of Trade and Industry and other law enforcement agencies as well as the private sector. The representatives of WIPO and the Global Anti-Counterfeiting Group (GACG) contributed to the consultation process as the main resource persons from abroad. The meeting aimed to review and streamline certain provisions of the South African Counterfeit Goods Act of 1997, and to formalize a coordinated strategic approach for both the public and the private sector regarding the use of this instrument in practice. A detailed report on the meeting and its outcome will be published in one of the next editions of the WIPO magazine. On November 20, with a view to foster future cooperation, WIPO conducted intensive discussions with the Commissioner of Police and with senior officials of the Department of Trade and Industry, the South African Revenue Services and the Justice College.
On October 30, 2003, WIPO participated and made a presentation in a multi-country workshop on consumer risks from fraudulent misrepresentation of goods, aiming at defining new policies in building IP capacities in the candidate countries to the EU. The workshop was organized by the European Commission, DG Enlargement, TAIEX, in Brussels.
Europol/European Commission/Ireland/The Netherlands
On November 20 and 21, 2003, WIPO participated in the first European Congress on developing public/private partnership to reduce the harm of organized crime which addressed, inter alia, the interrelation between counterfeiting and organized crime, and possible structures and mechanisms to facilitate a partnership approach in that context. The congress was organized by the Governments of Ireland and the Netherlands in cooperation with Europol and the European Commission in Dublin.
For more information see http://www.tocpartnership.org/orgcrime2003/website.asp?page=home
From December 2 to 4, 2003, WIPO participated in the Fifth Meeting of the Interpol IP Action Crime Group (IIPCAG) which took place in Lyon. The IIPCAG has some 25 members comprising officials from various governmental and non-governmental organizations, law enforcement agencies and representatives from the private sector. The annual meeting aims, inter alia, to strengthen the cooperation of members and observers regarding their activities in the field of combating piracy and counterfeiting.
The Hague Conference on Private International Law
A Convention on exclusive choice of court agreements concluded in civil and commercial matters, including-to a certain extent which yet has to be defined-intellectual property disputes, is currently discussed in a Special Commission of the Hague Conference on Private International Law. The first session of the Special Commission took place from December 1 to 9, 2003; WIPO participated as observer. At the end of the session, a revised draft convention was released for further discussion; the text is available at ftp://ftp.hcch.net/doc/workdoc49e.pdf
Anti-Counterfeiting Group (ACG)
On October 17, WIPO participated and gave a presentation in the autumn conference of the ACG, a right holder organization campaigning against the trade in fakes with members from a cross section of business and industry. The conference was divided in three sessions, each focusing on different perspectives vis-à-vis counterfeiting, namely (1) right holders and law enforcers, (2) consumers and the public, and (3) infringers. The conference was attended by ACG members, organizations, government agencies and representatives of prominent IP law firms.
See also http://www.a-cg.com
From November 3 to 4 and 5 to 6, 2003, two national seminars on the enforcement of IP rights were held in Port-au-Prince, organized by WIPO in cooperation with the Ministry of Culture and Telecommunication of Haiti. Participants in the first seminar were magistrates, judges and attorneys, the second seminar addressed customs and police officers. Stakeholders from cultural industries were also present. The seminars received widespread press and media coverage.
From November 11 to 13, 2003, WIPO made presentations during a training seminar, organized by UN/ECE, in conjunction with the State Department for Intellectual Property, Ministry of Education and Science of Ukraine, and the United States Patent and Trademark Office (the USPTO), with particular emphasis on the enforcement of IP rights for the benefit of the judiciary, legal fraternity, the prosecution and the police.
From December 3 to 5, 2003, a subregional seminar on the enforcement of IP rights was organized by WIPO, the Lesotho Government and ARIPO in Maseru, Lesotho, to the attention of enforcement officials from police, customs and justice authorities, representing nine African countries, namely Lesotho, Kenya, Malawi, Mozambique, Namibia, South Africa, Swaziland, Zambia and Zimbabwe. The seminar included presentations of specific enforcement related topics, a practical training session, and a panel discussion on formulating national and regional enforcement strategies in the region.
UK: litigation costs in patent disputes
A decision rendered by the UK Royal Courts of Justice in a patent dispute (November 27, 2003) provides some interesting comments (paragraphs 81-93 of the decision) on the exorbitant costs of the case at stake and possible alternative ways of appropriately conducting patent litigation.
APEC: Agreement to fight disk piracy by strengthening regulatory measures
In conjunction with the APEC Ministers meeting in October 2003, APEC senior officials agreed to strengthen regulatory measures aiming to restrict unauthorized copying of optical disks containing copyrighted material such as music, movies and computer programs. Based on recommendations prepared by the APEC IP Rights Experts Group (IPEG), the proposed measures focus on the licensing of production facilities for optical disks, the enforcement of such licenses, adequate penalties for violations, and controls on export and import of optical disks and respective production parts.
The IPEC recommendations are available at
EU (I): Counterfeiting trends
The European Commission has published the latest figures on customs seizures at the EUs external borders. These figures confirm the trend of the previous years regarding the nature of counterfeiting: counterfeiting activities are no longer focussed on luxury goods, but increasingly shift towards mass-produced consumer goods including food, medicine, cosmetics, mobile phones, batteries, and thus increasingly attack consumer safety.
The press release is available at http://europa.eu.int/rapid/start/cgi/guesten.ksh?p_action.gettxt=gt&doc=IP/03/1589|0|RAPID&lg=EN
EU (II): Proposed IP Enforcement Directive - report of the European Parliament published
The report of the Rapporteur, Janelly Fourtou, which was issued on December 5, 2003, suggests a large number of amendments to the proposal of the Commission. The text of the report is available at http://wwwdb.europarl.eu.int/oeil/oeil_ViewDNL.ProcedureView?lang=2&procid=6837
India - EU : customs agreement initiated between India and the EU on co-operation and mutual administrative assistance
With a view to improving the effectiveness of the fight against fraud and counterfeiting, the EU and India have concluded, on November 29, 2003, an agreement aiming to simplify customs procedures in accordance with international standards, for example by establishing mechanisms of mutual assistance for exchanging information and carrying out inquiries. The EU has in the past concluded similar agreements with other major trading partners.
AIPPI : Summary report on jurisdiction and applicable law in case of cross-border infringements of IP rights
From October 25 to 28, 2003, AIPPI held its Executive Meeting; one of the three working sessions was dedicated to matters of jurisdiction and applicable law in case of cross-border infringements of IP rights. The summary report is available at http://www.aippi.org/reports/q174/Q174_summary_e.pdf
Anti-Counterfeiting Group (ACG)/Maxima Group Plc.: Survey on attitudes towards counterfeiting in the UK
The survey was published in October 2003 and was designed to identify both the consumer propensity to buy fake goods, and the opinion of business investors regarding the valuation of companies affected by counterfeiting. The survey reflects the replies of more than 900 consumers and some 50 analysts.
Articles: Punitive damages and IP litigation in American and German Law
The different concepts of the law of damages have once more been subject to debate following a court order by the German Federal Constitutional Court of July 25, 2003. The order, concerning a class action by a group of US music authors and publishers against Bertelsmann AG with regard to the former Napster service, granted a preliminary injunction against service of a writ of punitive damages suit. The following case note takes a closer look a the decision and the different legal concepts:
Another analysis of the different concepts of the law of damages in the US and in Germany in general, and their relevance in practice, can be found at http://lawreview.kentlaw.edu/articles/78-1/Behr-4-02-03.pdf