WIPO IP Enforcement News: October - December 2004
I. SELECTED WIPO ACTIVITIES
ADVISORY COMMITTEE ON ENFORCEMENT (ACE) - DOCUMENTS OF THE SECOND SESSION IN ARABIC AND RUSSIAN
Most of the meeting documents are now available in Arabic, and translation of two documents into Russian has also been completed. Please see http://www.wipo.int/meetings/en/details.jsp?meeting_id=5662
WIPO ENFORCEMENT WEBSITE
Several Member States have informed the International Bureau that special websites have been created, by the national IP Offices or other competent authorities, which offer specific information related to IP enforcement at the national level, such as legislative developments and training activities. Links to these sites have been created from the WIPO Enforcement website, see http://www.wipo.int/enforcement/en/cooperation.html#specific
To increase reference to such information, other Member States or Accredited Observers at the WIPO Advisory Committee on Enforcement (ACE) that provide similar sites are invited to inform WIPO accordingly.
WIPO TRAINING ACTIVITIES
Following requests from Member States, WIPO held the following IP enforcement training and information sessions, each of them designed to address specific areas of interest. These activities included:
- Jordan : WIPO National Seminar on the Enforcement of Intellectual Property Rights for Customs
Officials, Amman, October 7-10, 2004; meeting documents (in Arabic) available at
- China : Colloquium on Intellectual Property for Judges from China, October 15-19, 2004,
Geneva/Berne/London, organized in cooperation with the Swiss Federal Institute of Intellectual
Property and the UK Department for Constitutional Affairs;
- Armenia : National Seminar for the Judiciary and other law enforcement agencies on the
enforcement of Intellectual Property Rights, Yerevan, October 26-27, 2004;
- Romania : Colloquium for Romanian Judges, November 15-26, 2004, Geneva / Berne / Munich, in
cooperation with the European Patent Office, the German Federal Patent Court, and the Swiss Federal
Institute of Intellectual Property;
- Vietnam : Study visit of a delegation of enforcement officials from Vietnam, December 3, 2004,
Geneva / Berne, organized in cooperation with the Swiss Federal Institute of Intellectual Property;
- Ukraine: Study visit of a delegation of judges from the Supreme Economic Court and the Kiev Economic Court of Appeal and of lawyers, December 13, 2004, Geneva.
THE FIRST GLOBAL CONGRESS ON COMBATING COUNTERFEITING - FOLLOW UP
Over the past months, active cooperation among the organizations involved in the Global Congress on Combating Counterfeiting (Brussels, May 25-26, 2004) took place.
Meetings of the Global Congress Steering Committee
As agreed in the recommendations adopted at the Global Congress, a Steering Committee was set up and held its first sessions. The Committee, inter alia, graded the above recommendations according to their importance and discussed which of them could be rapidly implemented. Furthermore, it examined the goals, objectives, and strategies and future composition of the Committee and the desirability and functions of a small secretariat. Preparatory steps for a sub-regional meeting in Brazil in May/June 2005 and a Second Global Congress on Combating Counterfeiting in November/December 2005 were also discussed.
Global Congress on Combating Counterfeiting - International Conference in Rome (October
The Conference, sponsored by the Italian Government and hosted by the Italian Customs authorities, was divided into two parts. The purpose of the special session, on October 21, was to review, in a high level meeting, progress made since the first Global Congress, reaffirm cooperation and commitment at the international level and identify, together with the Italian authorities, priorities for actions. The Secretary General of the WCO, senior officials from the Governments of Italy, the Netherlands, Ireland and Luxembourg, as well as representatives of the European Commission, WIPO, Interpol and the private sector participated in the session and adopted a Declaration ("Rome Declaration - Part 2"). The general session, on October 22, was devoted to a discussion on how the Italian Government and its agencies, the private sector and Italys trading partners are combating counterfeiting domestically and internationally. This meeting included a wide representation from the Government of Italy and the Italian business community, as well as customs and other government officials from a number of European countries and from Japan who examined practical steps for implementation and also adopted declaration ("Rome Declaration-Part 1"). The agenda and declarations are available on request.
The Global Congress - WCO Regional Forum on the Protection of Intellectual Property Rights
(Shanghai, China, November 22-23, 2004)
The Forum was co-organized by the General Administration of Customs of China and the World Customs Organizations and supported by WIPO, Interpol, the Customs authorities of Japan and a number of NGOs. It was attended by some 180 participants from the public and private sector, including customs officials from 23 countries from Asia and the Pacific. The Forum aimed at responding to the conclusions of the Global Congress and at demonstrating the determination of the customs authorities of the Asia-Pacific region in combating counterfeiting and piracy, promoting cooperation, and sharing good practices and information. The delegates agreed in a "Shanghai Initiative" to strengthen IPR enforcement; the text is available at http://www.customs.gov.cn/ipr/forum/Speech/Shanghai%20Initiative%20(FINAL).doc
Further information on the Forum is available at http://www.customs.gov.cn/ipr/forum/index.htm
REPUBLIC OF KOREA : INTELLECTUAL PROPERTY OFFICE (KIPO) ANTI-COUNTERFEITING ACTIVITIES
KIPO publishes information on its website about the anti-counterfeiting activities of the office, including its work related to the drafting of legal provisions as well as in areas of investigation, training and cooperation. In addition, the website offers information on relevant laws and the activities of other authorities, including the public prosecution, police and the customs service.
For 2004, see information under http://www.kipo.go.kr/kpo/eng/info_doc/anticoun_2004.jsp?catmenu=m05_01_02
US (I) : DEPARTMENT OF JUSTICE - STATISTICS ON IP CASES HANDLED IN FEDERAL COURT
In October 2004, the US Department of Justice Federal Justice Statistics Program published statistics related to intellectual property cases handled in Federal court during 1994-2002. Information covers both civil litigation and criminal enforcement, and includes cases involving patents, trademarks, copyright and trade secrets.
The statistics are available at http://www.ojp.usdoj.gov/bjs/pub/pdf/ipt02.pdf
US (II) : DEPARTMENT OF JUSTICE TASK FORCE ON INTELLECTUAL PROPERTY FINAL REPORT
In October, the task force which was created earlier this year by the US Attorney General, issued a report which presents the results of the work of several working groups, and submits a set of recommendations related to IP enforcement and IP crime. The report focuses on criminal enforcement, international cooperation, civil enforcement, and legislation.
See press release http://usinfo.state.gov/usinfo/Archive/washfile_feature5.html
The full report is available at http://www.usdoj.gov/criminal/cybercrime/IPTaskForceReport.pdf
EU (I) : COMMISSION ADOPTS STRATEGY FOR ENFORCING INTELLECTUAL PROPERTY RIGHTS IN THIRD COUNTRIES
On November 11, 2004, the European Commission has adopted a strategy for the enforcement of intellectual property rights in third countries. The strategy sets the Commissions guidelines for the coming years, aiming at a reduction of the level of intellectual property rights violations which take place beyond the EU borders. The Commission sees this strategy in close connection with other recent EU initiatives towards effective IP enforcement. Emphasis is put on technical cooperation and assistance to support third countries in their anti-counterfeiting activities, as well as awareness raising of users and consumers and the creation of public-private partnerships for enforcement; in addition, the Commission refers to bilateral and multilateral sanction mechanisms against countries involved in systematic violations.
Potential cooperation between WIPO and the Commission in this context is currently being explored; a first meeting took place, in Geneva, on December 1, 2004.
See press release and further links at http://europa.eu.int/rapid/pressReleasesAction.do?reference=IP/04/1352&format=HTML&aged=0&language=en&guiLanguage=en
EU (II) : FORUM SHOPPING IN INTELLECTUAL PROPERTY DISPUTES GENERAL ADVOCATE ISSUES OPINION
The European Court of Justice (ECJ) will shortly render a decision expected to have a major impact on the future scope for cross-border patent infringement actions in Europe: the court has to interpret the scope of exclusive jurisdiction for disputes relating to the granting and registration of patents under the Brussels Convention. According to the relevant provision, Art. 16 (4) Brussels Convention (now replaced by the Brussels I Regulation, which provides a similar provision), courts of the country where a patent (or other registered IP right) was granted, have exclusive jurisdiction for disputes relating to validity or registration of such a right. It is now questioned whether this refers only to claims brought for declaration of invalidity, or whether exclusive jurisdiction also applies if validity is raised in an infringement proceeding.
The General Advocate now stated, in his opinion, that only the courts of the state of grant have jurisdiction to decide upon the validity of a patent, regardless whether it was brought for a declaration of invalidity or, for instance, as defense or counterclaim in an infringement proceeding. The ECJ is not obliged to follow the opinion, however, this often is the case. The outcome of the case will also influence the scope of exclusive jurisdiction for disputes involving other registered IP rights; in addition, it will certainly be examined by the delegations involved in the Judgements Project at The Hague Conference on Private International Law, where related questions are under discussion (see also below).
The opinion is available in various European languages, including in French and Spanish (but not in English), see http://curia.eu.int/jurisp/cgi-bin/form.pl?lang=en&Submit=Submit&docrequire=alldocs&numaff=C-4%2F03&datefs=&datefe=&nomusuel=&domaine=&mots=&resmax=100
THE HAGUE CONFERENCE ON PRIVATE INTERNATIONAL LAW : PRELIMINARY DRAFT CONVENTION ON EXCLUSIVE CHOICE OF COURT AGREEMENTS FINAL DRAFT REPORT AVAILABLE
In December 2004, the final version of the draft report on the preliminary draft Convention, in English and in French, drawn up by the Co-rapporteurs Masato Dogauchi and Trevor C. Hartley, has been published. This document will serve as reference for the preparations of the Diplomatic Session, scheduled for June 14-30, 2005, in The Hague. Implications of the draft Convention on IP related disputes, including the treatment of incidental questions, are referred to, in particular, in comments to Article 2 (2k) as well as to Articles 2 (3), 6 and 10.
The final draft report is available online at http://hcch.e-vision.nl/upload/wop/jdgm_pd26e.pdf
INTERNATIONAL CHAMBER OF COMMERCE (ICC) : BUSINESS ACTION TO STOP COUNTERFEITING AND PIRACY (BASCAP) LAUNCHED
Launched on November 26, 2004, the action aims to provide an operational platform to leverage individual company and organizational efforts, and to enhance policy and legal developments against counterfeiting and piracy.
See press release at http://www.iccwbo.org/home/news_archives/2004/bascap_launch.asp
The program plan is available at http://www.iccwbo.org/home/BASCAP/BASCAP_programme.pdf
INTERNATIONAL CHAMBER OF COMMERCE (ICC) / AMERCIAN BAR ASSOCIATION SURVEY ON GLOBAL INTERNET JURISDICTION
The survey examines the impact of litigation risk on companies operating online. The survey is based on responses from small, medium- and large-sized companies from 45 countries, and identifies the risk of being sued abroad as a primary concern among the responding e-commerce companies. It also reflects responses as to how to manage such risk of litigation, including through business adjustments, and contractual practices, namely forum selection clauses and alternative dispute resolution agreements.
The survey, first published in April 2004, is available online at http://www.mgblog.com/resc/Global%20Internet%20Survey.pdf