WIPO IP Enforcement News: January 2010
I. WIPO ACTIVITIES
FIFTH SESSION OF THE WIPO ADVISORY COMMITTEE ON ENFORCEMENT (ACE)
The ACE held its fifth session from November 2-4, 2009. As agreed by Member States, the discussions focused on “Contributions of, and costs to, right holders in enforcement, taking into consideration Recommendation 45 of the WIPO Development Agenda”. Based on the analysis presented by an expert faculty (see documents WIPO/ACE/5/3-10), the Committee discussed various relevant details including the economic perspective of the enforcement of intellectual property rights. The outcome of the discussions is summarized in document WIPO/ACE/11. At its next session, the ACE agreed inter alia to “analyze and discuss intellectual property infringements in all its complexities”, building on the substantive study contained in WIPO/ACE/5/6. In that respect, the WIPO Secretariat was asked to undertake substantive preparatory work, detailed in document WIPO/ACE/11. All working documents are available at http://www.wipo.int/meetings/en/details.jsp?meeting_id=17445
FIFTH GLOBAL CONGRESS ON COMBATING COUNTERFEITING AND PIRACY
The Global Congress on Combating Counterfeiting and Piracy held its fifth session in Cancun, Mexico, from December 1 to 3, 2009. The Congress was hosted by Interpol and the Mexican Institute of Industrial Property (IMPI), with support from WIPO, the World Customs Organization (WCO), the International Chamber of Commerce (ICC) and its Business Action to Stop Counterfeiting and Piracy (BASCAP) initiative, the International Trademark Association (INTA), and the International Security Management Association (ISMA). More than 800 delegates, including public authorities and private sector representatives from over 80 countries gathered at this Congress. They called for coordinated responses and emphasized, inter alia, the danger of counterfeiting and piracy for economic recovery.
WIPO IP ENFORCEMENT TRAINING AND POLICY CONSULTATIONS
In response to requests from Member States and partner organizations, WIPO continued to organize, or assist in, a series of national and regional workshops, training courses, conferences and consultations on intellectual property enforcement, namely:
- United States of America: APEC-ASEAN-USPTO Workshop on Effective Practices in the Border Enforcement of Intellectual Property Rights, Honolulu, Hawaii; July 20 to 23, 2009.
- Austria: Consultation meeting concerning the development of a “WIPO Tool on Enforcement of Intellectual Property Rights in Countries in Transition”; Vienna, July 28, 2009.
- Mozambique: National Workshop on Enforcement of Intellectual Property Rights, organized by the U.S. Department of Commerce under the initiative “Strengthening Intellectual Property Protection in Africa” (SIPPA); in co-operation with the World Bank and the Ministry of Justice, Maputo, September 9 to 11, 2009.
- Former Yugoslav Republic of Macedonia: WIPO Inter-Regional Symposium on Enforcement of Intellectual Property Rights; Skopje, October 5 and 6, 2009.
- Lithuania: WIPO Seminar for Judges on IPR Enforcement: Administrative, Civil and Criminal Means, in cooperation with the State Patent Bureau; Moletai, October 12-13, 2009.
- Cambodia: WIPO National Workshop on the Enforcement of Intellectual Property Rights for Law Enforcement Agencies; Phnom Penh, October 15 and 16, 2009.
- Nepal: WIPO National Workshop on the Enforcement of Intellectual Property Rights for Law Enforcement Agencies; Kathmandu, October 20 and 21, 2009.
- South Africa: Enforcement Workshop on Combating Counterfeiting within the Southern African Development Community (SADC), organized by the Department of Trade and Industry of South Africa in co-operation with WIPO and with the collaboration of the USPTO; Pretoria, November 17 and 18, 2009.
- South Africa: Workshop on Combating Counterfeit Medicines, organized by the Office of Company and IP Enforcement (OCIPE) of the Department of Trade and Industry of South Africa; Pretoria, November 19, 2009.
- Netherlands: 3rd Annual Brand Protection: Cost Reduction, Results & Return on Investment, Amsterdam, November 19-20, 2009.
- Japan: Regional Training Course on the Enforcement of Intellectual Property Rights, organized in cooperation with the Japan Patent Office; Tokyo, December 7-18, 2009.
- Paraguay: Sub-regional Seminar on the Enforcement of Intellectual Property Rights; Asunción, December 14 to 16, 2009.
- Iran: WIPO National Workshop for Customs and Police Officials on the Enforcement of Intellectual Property Rights; Tehran, December 15 and 16, 2009.
A regular update on WIPO’s training and awareness-raising activitiesin the field of IP enforcement is made available on the WIPO Enforcement website at http://www.wipo.int/enforcement/en/activities/.
COOPERATION WITH NEW COUNTERFEITING AND PIRACY BODY OF THE WORLD CUSTOMS ORGANIZATION (WCO CAP GROUP)
On October 28, 2009, the newly set WCO CAP Group held its first meeting. WIPO participates in the work of this body as an observer. Under its terms of reference, the group has the mandate to provide a dialogue mechanism on border measures relating to trademark counterfeiting and copyright piracy, excluding norm-setting, recommendations or any other particular measures.
WIPO MAGAZINE SPECIAL EDITION ON IP LITIGATION COST
Issue 1/2010 of the WIPO Magazine will be a special edition on the costs of IP dispute resolution, with articles dealing with the respective challenges and solutions in various jurisdictions. The special January issue will be available online at http://www.wipo.int/wipo_magazine/en/.
CHINA – FRANCE: CO-OPERATION AGREEMENT AGAINST COUNTERFEITIN
On July 7, 2009, the French Comité National Anti-Contrefaçon (CNAC) and the State Administration for Industry and Commerce of the People’s Republic of China signed an agreement on the protection of intellectual property rights. More information at http://www.contrefacon-danger.com/publication/content/ART_3_236.php; http://www.budget.gouv.fr/discours-presse/discours-communiques_budget.php?type=communique&id=3146&rub=2.
EURO-MEDITERRANEAN ZONE: ANTI-COUNTERFEITING COOPERATION
In 2008, eight countries of the Euro-Mediterranean zone, namely Bulgaria, Spain, France, Italy, Morocco and Romania, had launched an initiative aiming at the further development of, and a closer cooperation between, the respective national anti-counterfeiting committees. On December 4, 2009, on the occasion of the second meeting of the initiative, three more countries - Egypt, Slovenia and Greece – joined the group. All participating countries adopted a resolution (“Declaration de Tanger”) which formulates the initiative’s future objectives and first concrete actions. More information at http://www.contrefacon-danger.com/publication/content/ART_67_260.php.
EU (I): EUROPEAN OBSERVATORY ON COUNTERFEITING AND PIRACY
Launched by the European Commission in April 2009, the European Observatory on Counterfeiting and Piracy is a new EU-wide platform, mainly aiming at improving information and statistical data relating to counterfeiting and piracy, and to facilitate the exchange of practices and enforcement techniques. Run by the Commission, participation in the Observatory is open to EU Member States and private sector representatives. Under the umbrella of the Observatory, two meetings were held in September and December 2009, respectively. On the latter occasion, the Commission emphasized the importance of supporting operational law enforcement by practical, non-legislative measures, including through voluntary agreements between stakeholders. More information at http://ec.europa.eu/internal_market/iprenforcement/observatory/index_en.htm;
EU (II): COUNCIL AGREEMENT ON VARIOUS ELEMENTS RELATING TO THE FUTURE PATENT SYSTEM IN EUROPE
On December 4, 2009, the Council of the European Union adopted a range of conclusions on an enhanced patent system in Europe, including with a view to an envisaged unified patent litigation system. In the latter respect, the Council suggests establishing a “European and EU Patents Court (EEUPC)” with exclusive jurisdiction—in civil litigation—over infringement and validity matters relating to European and EU patents. A final decision in that matter will depend on opinion by the European Court of Justice which has been requested to analyze the compatibility of the establishment of the proposed EEUPC with the EC Treaty.
The Council’s conclusions are available at http://documents.epo.org/projects/babylon/eponet.nsf/0/2577CA3C51E347CCC125768600441059/$File/conclusions_enhanced_patent_system_en.pdf.
EU (III): IPR ENFORCEMENT REPORT 2009
On October 21, 2009, the European Commission published its “IPR Enforcement Report 2009”. Based on the findings of a survey among right holders, associations and EU delegations, the report analyzes the situation of IP enforcement in countries outside the European Union. The report is available at http://trade.ec.europa.eu/doclib/docs/2009/october/tradoc_145204.pdf.
INDIA: HIGH COURT RULING ON JURISDICTION IN CASES OF ONLINE TRADEMARK INFRINGEMENT
On November 23, 2009, the High Court of Delhi rendered a preliminary judgment identifying criteria to determine whether, in cases of alleged online trademark infringement, an Indian court was competent to hear the case. The court examined and applied various criteria developed by other courts in India and the US. For instance, to establish jurisdiction, the plaintiff would have to plead that the alleged infringer “purposefully availed” itself of the jurisdiction of the forum court. Moreover, he would have to present prima facie evidence that the specific targeting of the defendant resulted in an injury or harm of the plaintiff within the forum state. The full text of the judgment is available at http://lobis.nic.in/dhc/SMD/judgement/23-11-2009/SMD23112009S8942008.pdf.
PORTUGAL: COPYRIGHT LITERACY PROJECT IN SCHOOLS
In cooperation with the Ministries of Education and Culture of Portugal, AGECOP, a Portuguese collecting society, has launched preparations for a large-scale copyright literacy project. The project intends raising copyright awareness among students, and motivating them to respect copyright in today’s digital environment. Based on a positive message—creation—the project will mainly build on a competition among students in various categories. The website of AGECOP is available at http://www.agecop.pt/.
THAILAND: INFORMATION ON CUSTOMS SEIZURES OF COUNTERFEIT GOODS
The Thai customs administration provides online information on recent seizures, including in the field of intellectual property infringing goods. See http://www.customs.go.th/Customs-Eng/indexEng.jsp.
US-EU INTELLECTUAL PROPERTY RIGHTS WORKING GROUP
On September 23-24, 2009, the bilateral U.S.-EU Intellectual Property Rights (IPR) Working Group held its latest meeting. The group, established in 2005, brings together IPR officials from lead agencies and services from the US and the EU. More information on the work of this group at http://www.stopfakes.gov/.
ORGANIZATION FOR ECONOMIC CO-OPERATION AND DEVELOPMENT (OECD): 2009 UPDATE ON THE MAGNITUDE OF COUNTERFEITING AND PIRACY OF TANGIBLE PRODUCTS
In 2005, OECD launched a project to assess the magnitude and impact of counterfeiting and piracy. The findings of Phase I of this project, limited to the international trade in tangible counterfeit and pirated products, were published in 2008. In November 2009, OECD issued an update of those findings, based on international trade statistics for the years 2000 - 2007. The update suggests that counterfeit and pirated goods in international trade grew steadily over the period 2000-2007, and could amount to up to USD 250 billion in 2007. The share of counterfeit and pirated goods in world trade is estimated to have increased from 1.85% in 2000 to 1.95% in 2007. The update is available at http://www.oecd.org/dataoecd/57/27/44088872.pdf.
INTERPOL – WORLD HEALTH ORGANIZATION (WHO): INTERNATIONAL OPERATION AGAINST ONLINE SUPPLY OF COUNTERFEIT AND ILLEGAL MEDICINES
From November 15-20, 2009, Interpol and the International Medical Products Anti-Counterfeiting Taskforce (IMPACT) coordinated an international week of action targeting the online sale of counterfeit and illicit medicines. The so-colled "Operation PangeaII" involved 24 countries. More information at: http://www.interpol.int/Public/ICPO/PressReleases/PR2009/PR2009111.asp.
For details on the implementation of the operation in the US see also http://www.ice.gov/pi/nr/0911/091120washington.htm.
INTERNATIONAL CONFERENCE ON POSTAL FREIGHT AND COUNTERFEITING
From November 16-17, 2009, the French Groupe La Poste organized the first global conference on postal freight and counterfeiting, in Paris. “Counterfeit and pirated articles” were in 2008 added to the list of items which are not admitted in the postal services under the Universal Postal Convention (Article 15, § 2.1.3; entry into force on January 1, 2010). At the conference, representatives of postal operators, customs authorities, international organizations, right holders and consumers participated and analyzed, inter alia, how to strengthen the partnership between customs and postal administrations.
More information at http://www.laposte.fr/layout/set/popup_communique/content/view/full/6091.
For details of the modification of the Universal Postal Convention under the auspices of the Universal Postal Union, see also http://www.upu.int/acts/en/upu_decisions_24e_congres_2008_en.pdf.