WIPO IP Enforcement News: July - September 2005
I. SELECTED WIPO ACTIVITIES
WIPO GENERAL ASSEMBLY REVIEWED WORK OF THE ADVISORY COMMITTEE ON ENFORCEMENT (ACE)
At the annual session of the WIPO General Assembly, held from 26 September to 5 October 2005, WIPO Member States reviewed the work of the ACE and encouraged this body to continue its work. Discussions were based on document WO/GA/32/10; the full statements submitted by delegations, referring to various aspects of the work of the ACE, including the upcoming third session of the ACE (spring 2006), are reproduced in the General Assembly Report, available shortly.
ANNOUNCEMENT: SECOND GLOBAL CONGRESS ON COMBATING COUNTERFEITING AND PIRACY, LYON, FRANCE, NOVEMBER 14-15, 2005
The Second Global Congress on Combating Counterfeiting and Piracy will be held on November 14 and 15, 2005, at the Palais des Congrès in Lyon, France. The Congress is being hosted by Interpol and the World Customs Organization (WCO), with the support and participation of WIPO, and in cooperation with the private sector. The agenda has been structured to foster a constructive debate that will result in recommendations for concrete action by governments and the private sector, independently and through public/private partnerships, to develop and deploy effective anti-counterfeiting and anti-piracy strategies.
Detailed information is now available on a special Congress website, see www.ccapcongress.net . Members and Observers of the WIPO Advisory Committee on Enforcement (ACE) are encouraged to participate in the Congress and to make use, for this purpose, of the registration facilities provided on the Congress website.
During the summer period, WIPO continued to respond to Member States requests for training and information workshops on IP enforcement issues. These activities, partly organized jointly with partner organizations, included :
- WIPO Asia-Pacific Regional Symposium on the Protection and Enforcement of Intellectual Property
Rights, Kuala Lumpur (Malaysia), September 13-14, 2005 :
Hosted by WIPO in cooperation with the Japanese Patent Office and the government of Malaysia, the symposium brought together officials from 23 countries. With speakers representing various organizations such as, inter alia, the WCO IPR Strategic Group, Interpol and GBLAAC, as well as the private sector, it demonstrated the existing close cooperation among the various stakeholders. Participants of the symposium underscored the need to formalize national and regional enforcement strategies by way of formal cooperation agreements, paving way for future cooperation at the operational level, as well as in the areas of education and awareness;
- WIPO/WCO/UNECE (IP Advisory Group) Joint sub-regional seminar on IPR enforcement, July 5-7, Almaty (Kazakhstan); see also http://www.unece-ipr.org/newsletter/index.html ;
- WIPO Sub-regional workshop on intellectual property enforcement for French-speaking African countries, Yaoundé (Cameroon), September 13-16, 2005;
- WTO-WIPO Colloquium for teachers on IP (IP enforcement session), June 27-July 8, 2005, Geneva; see http://www.wipo.int/academy/en/forms/wipo_wto_colloquium/index.html .
LEGISLATIVE ADVICE IN IP ENFORCEMENT MATTERS
Upon request, WIPO provides legislative advice on Member States' draft laws in all areas of intellectual property law, including provisions dealing with the enforcement of IP rights, notably as concerns compatibility of such draft provisions with the enforcement-related obligations under the Agreement of Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement). Over the summer period, WIPO prepared such IP enforcement-related sets of comments for two Member States, addressing a wide range of legal matters relating to civil procedures and remedies, provisional measures, criminal sanctions and border measures.
COOPERATION WITH THE COOPERATION COUNCIL FOR THE ARAB STATES OF THE GULF (GCC): FOURTH MEETING ON COUNTERFEITING AND COMMERCIAL FRAUD
In the framework of its cooperation with the GCC, WIPO participated in this two-day event which is organized by the GCC Secretariat every second year. This fourth meeting was held on September 20-21, 2005, in Abu Dhabi (United Arab Emirates). The meeting brought together some 150 participants from all 6 GCC Member States. Discussions focused on the work of the customs authorities and their cooperation with industry, recent enforcement legislation in the GCC Member States, as well as online piracy and counterfeiting which was identified as an emerging problem in the region. In that context, the dynamic accession process in the region to both the WIPO Copyright Treaty (WCT) and the WIPO Performances and Phonograms Treaty (WPPT) was highlighted. At the end of the meeting, participants agreed a set of recommendations, proposing a number of measures to be taken in GCC Member States to improve effective enforcement. The implementation of the recommendations will be reviewed at the next meeting, to be held in 2007.
COOPERATION WITH THE UN ECONOMIC COMMISSION FOR EUROPE (UNECE)
To further define ongoing cooperation between WIPO and the UNECE IP Advisory Group, WIPO participated in the annual session of this group, held in Geneva on October 3, 2005. The session brought together government representatives and various partner organizations that are active in the field of IP enforcement, including UNCTAD and WTO. Recent and planned activities of each partner were presented and discussed to identify directions for future cooperation. Meeting documents are available at http://www.unece-ipr.org/.
MEMORANDUM OF UNDERSTANDING BETWEEN THE FEDERAL SERVICE FOR INTELLECTUAL PROPERTY, PATENTS AND TRADEMARKS OF THE RUSSIAN FEDERATION (ROSPATENT) AND WIPO
On July 28, 2005, ROSPATENT and WIPO signed a Memorandum of Understanding which aims at intensified mutual support and cooperation on issues relating to the enforcement of IP rights. In that sense, the memorandum emphasizes elements such an effective legislative framework, skills development, information sharing and exchange, and a broad awareness in that field. An action plan to take forward these aspects was also developed.
ANNOUNCEMENT: NEW WIPO PUBLICATION - INTELLECTUAL PROPERTY ENFORCEMENT CASE BOOK
In many developing countries, the lack of precedent in intellectual property disputes regularly is identified as a key problem in the adjudication of such disputes. Based on that experience, WIPO has commissioned the preparation of a case book, presenting the various legal aspects related to the infringement of IP rights and their enforcement on the basis of court decisions from various countries, both industrialized and, where available, developing countries. Prepared by the Honorable Mr. Justice Louis Harms, Judge of Appeal, Supreme Court of South Africa, this publication focuses on case material from countries in the common law tradition. It is currently being finalized and will be available during the final quarter of 2005.
G8 STATEMENT "REDUCING PIRACY AND COUNTERFEITING THROUGH MORE EFFECTIVE ENFORCEMENT"
The G8 Member States (Canada, France, Germany, Italy, Japan, Russia, UK, US), at their Gleneagles Summit in July 2005, issued a statement addressing concerns over the growing trade in pirated and counterfeit goods. The role of some international organizations in this context, including WIPO, is emphasized. Under section 3 of the statement, a set of concrete steps is identified to substantially reduce this trade, and to combat international networks that are behind it. For details see http://www.fco.gov.uk/Files/kfile/PostG8_Gleneagles_CounterfeitingandPiracy.pdf
As a first follow-up, a G8 IP Experts Meeting will be held on October 12, 2005, at the UK Patent Office in London, to take forward the actions set out in the G8 statement. WIPO, as well as WTO, WCO, Interpol and OECD, have been invited to participate. See http://www.patent.gov.uk/about/consultations/g8ip.htm
EU: COMMISSION PROPOSAL FOR EUROPEAN CRIMINAL-LAW PROVISIONS TO COMBAT INTELLECTUAL PROPERTY RIGHTS INFRINGEMENTS
On July 12, 2005, the European Commission adopted two proposals aimed at harmonizing a number of criminal law aspects relating to IP rights violations across the 25 EU Member States: under the proposal for a new Directive, infringements of any intellectual property rights are treated as criminal offense if undertaken intentionally and on a commercial scale. Similarly, attempting, aiding and inciting such infringements are considered criminal acts. The second proposal for a Framework Decision defines minimum penalties that have to be available for such offense if it involves a criminal organization or poses a risk to public health and safety. These proposals seek to complement the Directive on the enforcement of intellectual property rights (2004/48/EC) of April 2004 which does not address criminal sanctions. See press release at http://europa.eu.int/rapid/pressReleasesAction.do?reference=IP/05/906&format=HTML&aged=0
FRANCE: PUBLICATION PROPRIÉTÉ INTELLECTUELLE ET LUTTE ANTI-CONTREFAÇON
The French Ministry of Economy, Finance and Industry publishes a periodical intellectual property bulletin, with a focus on intellectual property piracy and counterfeiting, and strategies and measures developed by the French government in that context. The latest bulletin was published on August 1, 2005. It is available online, in French, at http://www.missioneco.org/publications/
PHILIPPINES: CREATION OF SPECIAL IP COURTS
In a decision handed down on July 26, 2005, the Supreme Court voted in favor of a request submitted by the Philippines IP Office (IPO) concerning the creation of special courts that will have exclusive jurisdiction over intellectual property disputes. It is intended to designate such courts both in the capital region and in other regions where IP cases have shown to be particularly relevant. Currently, disputes involving intellectual property matters are handled together with other commercial cases before the commercial courts. See press release by the IPO of September 12, 205, at http://ipophil.gov.ph/htm_doc/pressrelease09122005.htm
UK: NON-BINDING OPINIONS ON PATENT VALIDITY AND INFRINGEMENT
As of October 1, 2005, the UK Patent Office makes available a new service which aims to help parties of a dispute to better assess their position at an early stage: a key feature of the Patents Act 2004, the service establishes that the Patent Office, upon request, will issue non-binding opinions upon validity and infringement of UK patents and European patents designating the UK. For details of the procedure see http://www.patent.gov.uk/patent/opinions/index.htm
UKRAINE: NEW LEGISLATION ADDRESSING OPTICAL DISKS PIRACY
In July 2005, the Ukraine Parliament passed a set of modifications to its legislation, raising criminal penalties for CD/DVD piracy, and establishing stricter rules for the control of manufacturing, exporting and importing of laser disk systems. See press release by the Coalition for Intellectual Property Rights (CIPR) at http://www.icebase.com/reader.ice?DGFL0814556500&ipeis.forum&4564
US: NEW WEBSITE TO HELP SMALL BUSINESS PROTECTING THEIR INTELLECTUAL PROPERTY FROM OVERSEAS PIRACY AND COUNTERFEITING
In an attempt to help small businesses operating on an international scale which, faced with piracy and counterfeiting, may lack the necessary resources and expertise, the US Patent and Trademark Office (USPTO) has developed a specific website, setting out information on the protection and enforcement of IP rights from this angle. This program complements other government-wide initiatives to strengthen IP enforcement both in the US and overseas, such as the STOP! initiative (cf . last newsletter). The new website is available at http://www.uspto.gov/smallbusiness/about/
WORLD HEALTH ORGANIZATION (WHO): WEB-BASED COMMUNICATION SYSTEM FOR TRACKING COUNTERFEIT MEDICINES
WHO estimates that some 6-10% of medicine on the world market are counterfeit, with significantly higher figures in many developing countries. To facilitate quick and effective reporting of counterfeit cases to national authorities, and communication between the partners involved, the WHO Regional Offices for the Western Pacific and South-East Asia have launched an online Rapid Alarm System (RAS). See press release at http://www.wpro.who.int/media_centre/press_releases/pr_20050503.htm
For an overview on the current nature and scale of counterfeit medicines, see WHO fact sheets, last updated in May 2005, at http://www.wpro.who.int/media_centre/fact_sheets/fs_20050506.htm
INTERNATIONAL ASSOCIATION FOR THE PROTECTION OF INTELLECTUAL PROPERTY (AIPPI): IP ENFORCEMENT ISSUES AT THE 2005 EXCO MEETING/FORUM
On of the three Working Committees placed on the agenda of the 2005 AIPPI EXCO meeting, held on September 24-29, 2005, in Berlin, dealt with "Punitive damages as a contentious issue of IP rights" (Q186). In the working sessions, replies by national groups to a relevant questionnaire were presented and analyzed. At the end of the sessions, a resolution was adopted, reflecting the fact that a large majority of countries do not recognize the concept of punitive damages in intellectual property matters, but limit remedies to damages that are compensatory in nature. The group reports and the resolution are available at http://www.aippi.org/ .
In addition, Special Committee Q 185 "Enforcement of IP rights" made available an update on its ongoing work aiming to analyze how the producing of evidence in IP proceedings is designed across national systems. To that aim, in April 2005, a questionnaire was distributed, seeking to assess details of national implementation of the relevant provisions in the TRIPS Agreement, namely Art. 43 (Evidence), Art. 47 (Right of information) and Art. 50 (Provisional measures), as well as of the corresponding articles in the EU Directive 2004/48/EC on the enforcement of intellectual property rights (Art. 6, Art. 7 and Art. 9). The questionnaire, as well as the replies submitted by national groups as yet, are available at http://www.aippi.org/ .
INTERNATIONAL FEDERATION OF THE PHONOGRAPHIC INDUSTRY (IFPI): MUSIC DOWNLOAD TRENDS AND EFFECTS OF LAWSUITS FOR FIRST HALF OF 2005
On July 21, 2005, IFPI published data relating to file-sharing trends for the first six months of 2005. The report finds that both the expansion of the legitimate digital music industry and the well-publicized legal actions by the music industry in 11 countries have resulted in a certain shift in consumers attitudes towards legal downloads. See http://www.ifpi.org/site-content/press/20050721.html.