2019 Intellectual Property Judges Forum

Promoting transnational dialogue among judiciaries

The annual WIPO Intellectual Property Judges Forum aims to provide a platform for judges from across the globe to exchange their expertise on the most pressing intellectual property (IP) challenges raised by accelerating innovation and the increasingly transnational use of IP.

In many countries, judiciaries are on the front line of confronting new IP realities. Given the rapid pace of the technological and societal transformations that drive the evolution of IP, judges are often tasked with resolving IP questions that have not yet received legislative answers. How do judges address these challenges?

The 2019 WIPO Intellectual Property Judges Forum brought together 128 judges from 74 countries, representing both national and regional jurisdictions, to engage with their global peers on the emerging issues in copyright, trademarks and patents, as well as issues in cross-border disputes in the context of a globalized and digitized IP landscape.

The WIPO Intellectual Property Judges Forum is an annual event organized by the WIPO Judicial Institute as part of the Organization’s work with the judiciaries.

Location: Geneva, Switzerland

Program and speaker profiles
List of participants
Report
Photos on Flickr
News from the Forum

Other editions of the Forum

Program

The Forum consisted of panel discussions with a strong emphasis on dialogue and exchange of information among participants.

Day one – November 13, 2019

Emerging issues in copyright, trademarks and patents

Emerging issues in copyright
Emerging issues in trademarks: Trademarks eligible for registration
Emerging issues in trademarks: Well-known marks and dilution
WIPO’s work – judicial administration of IP
Emerging issues in patents

Opening (09:00 – 09:30)

Special address: Francis Gurry
WIPO Director General

Frits Bontekoe
Legal Counsel, WIPO

Master of Ceremonies:
Nahal Zebarjadi
Legal Officer, WIPO Judicial Institute

Session 1 – Emerging issues in copyright (09:30 – 11:00)

Defining copyright infringing acts in new technological settings
Copyright infringement by users of online platforms and intermediary responsibility
Copyright and the freedom of expression
Moral rights

Moderator and panelists

Moderator: Colin Birss
Justice, High Court of England and Wales, London, United Kingdom

Speaker: Vittorio Ragonesi
Former Judge, Supreme Court of Italy, Rome, Italy

Nurlanbek Atanazarov
Judge, Osh City Court, Kyrgyzstan

Edgardo Mateo Ettlin Guazzo
Minister, Court of Appeals, Montevideo, Uruguay

Nadia Kangaloo
Puisne Judge, High Court, Trinidad and Tobago

Marie-Françoise Marais
Honorary Adviser, Court of Cassation, Paris, France

Oral Criminal and Correctional Court Number 26 of the Federal Capital of Buenos Aires, Argentina [2018]: “Taringa Case”, Case No. CCC 16029/2009/TO1/1
High Court (Chancery Division) of England and Wales [2019]: Warner Music UK Ltd v TuneIn Inc [2019] EWHC 2923 (Ch)
Court of Justice of the European Union [2017]: Stichting Brein v Ziggo BV and XS4ALL Internet BV, Case No. C-610/15
Supreme Court of Cassation of Italy [2019]: Reti Televisive Italiane s.p.a v Yahoo Italia s.p.a, Case No. 7708/2019
High Court of Justice of the Republic of Trinidad and Tobago [2018]: Sean Caruth v The Tobago House of Assembly, Case No. CV2018-03461

Session 2 – Emerging issues in trademarks: Trademarks eligible for registration (11.30 – 12.30)

Eligible subject matter matter and distinctiveness: example of color per se marks
Trademarks contrary to public order or morality

Moderator and panelists

Moderator: Marcus Höpperger
Senior Director, Brands and Designs Sector, WIPO

Speaker: Goda Ambrasaitè-Balyniene

Judge, Supreme Court of Lithuania, Vilnius, Lithuania

Younes Ezzahri
Judge and Director of Judicial Training, Higher Institute of the Judiciary, Rabat, Morocco

Nina Półtorak
Judge, General Court of the European Union, Luxembourg

General Court of the European Union [2018]: La Mafia SE SIENTA A LA MESA, Case No. T‑1/17 EU:T:2018:146
General Court of the European Union [2018]: Fack Ju Göhte, Case No. T‑69/17 EU:T:2018:27
Supreme Court of Lithuania [2015]: Humana People to People Baltic v the State Patent Bureau, Case No. 3K-3-240-469/2015

Session 3 – Emerging issues in trademarks: Well-known marks and dilution (14.00 – 15.30)

Likelihood of confusion
Dilution and its defenses

Moderator and panelists

Moderator: Eric Mille
Judge, Brussels Trade Court, Belgium

Speaker: Louis T.C. Harms
Former Deputy President, Supreme Court of Appeal, Bloemfontein, South Africa; Judge of Appeal, Court of Appeal, Botswana

Mohamed Mahmoud Al Kamali
Director General, Institute of Training and Judicial Studies, Abu Dhabi, United Arab Emirates

Shimizu Misao
Former Chief Judge, Intellectual Property High Court, Tokyo, Japan

Xia Junli
Presiding Judge, IPR Division, Supreme People’s Court of China, Beijing, China

High People’s Court of Beijing, China [2012]: Baidu Online Network Technology (Beijing) Co Ltd v Trademark Review and Adjudication Committee, Case No. GXZ No. 1081
Intellectual Property High Court of Japan [2013]: Hokkaido Design Kabushiki Kaisha v Puma SE, Case No. 2012 (Gyo-Ke) 10454
Intellectual Property High Court of Japan [2009]: Puma AG Rudolf Dassler Spor v JPO, Case No. 2008 (Gyo-Ke) 10311
Constitutional Court of South Africa [2005]: Laugh It Off Promotions CC v South African Breweries International (Finance) BV t/a Sabmark International [2005] ZACC 7
Federal Court of Appeal of Abu Dhabi, United Arab Emirates [2019]: Motor Experts LLC v Sell Any Car and the Ministry of Economy, Case Nos. 224 and 229/2019

Session 4 – WIPO's work in the area of the judicial administration of IP (15.30 – 16.00)

Eun-Joo Min
Director, WIPO Judicial Institute

Session 5 – Emerging issues in patents (16.30 – 18.00)

Eligible subject matter: are patents technology neutral? Examples of measuring apparatus, graphical user interface and diagnostic methods
Developing appropriate balance between patent quality and investment in technology and the role of the courts
Interplay with competition law: example of reverse payment settlements

Moderator and panelists

Moderator: Annabelle Bennett
Former Judge, Federal Court of Australia, Sydney, Australia; Chair of the WIPO Advisory Board of Judges

Speaker: Takahashi Aya
Judge, Intellectual Property High Court, Tokyo, Japan

Jeremy Fogel
Executive Director, Berkeley Judicial Institute; Former Director, Federal Judicial Center, United States of America

Ki Woojong
Judge, Seoul High Court, Republic of Korea

Mark Schweizer
President, Federal Patent Court, St. Gallen, Switzerland

Intellectual Property High Court of Japan [2018]: Case No. 2017 (Gyo‑Ke) 10232
Supreme Court of the Republic of Korea [2014]: GSK v KFTC, Case No. 2012Du24498
Federal Patent Court of Switzerland: Hamilton Medical AG v imtmedical AG (O2017_007)
U.S. Court of Appeals for the Federal Circuit [2017]: Athena Diagnostics Inc v Mayo Collaborative Services LLC, 927 F3d 1333

Day two – November 14, 2019

Adjudicating cross-border IP disputes

Session 6 – Exhaustion of IP rights and parallel imports
Session 7 – Remedies addressing multi-territorial infringement
Session 8 – IP and private international law
Session 9 – Recent developments in IP courts
Session 10 – IP adjudication through regional courts

Session 6 – Exhaustion of IP rights and parallel imports (9.30 – 11.00)

TRIPS Agreement, Article 6 and differing approaches to exhaustion: international, regional or national. What are the policy rationales?
To what extent can contractual restrictions impact on the exhaustion of IP rights?
Repackaging requirements for parallel imports

Moderator and panelists

Moderator: Jeremy Fogel
Executive Director, Berkeley Judicial Institute; Former Director, Federal Judicial Center, United States of America

Speaker: Stephen Burley
Justice, Federal Court of Australia, Sydney, Australia

Aleh Latyshevich
Judge, Supreme Court, Minsk, Belarus

Maria Rowena Modesto-San Pedro
Associate Justice, Court of Tax Appeals, Quezon City, Philippines

Mehmet Soner Özoğlu
Judge, Directorate General for Foreign Relations and EU Affairs, Ministry of Justice, Ankara, Turkey

Manmohan Singh
Former Chairman, Intellectual Property Appellate Board, New Delhi; Former Judge, High Court of Delhi, India

Federal Court of Australia [2019]: Calidad Pty Ltd v Seiko Epson Corporation [2019] FCAFC 115
Supreme Court of the Republic of Belarus [2013]: Twins Tech JSC, Russia v Medicalfort LLC, Case No. 12-01/20-2013
High Court of Delhi, India [2012]: Samsung Electronics Company Limited v Kapil Wadhwa, CS (OS) No.1155/2011
High Court of Delhi, India [2010]: John Wiley & Sons Inc v Prabhat Chander Kumar Jain, CS (OS) No. 1960/2008
Supreme Court of the Philippines [2009]: Roma Drug and Romeo Rodriguez, as Proprietor of Roma Drug v The Regional Trial Court of Guagua, Pampanga, the Provincial Prosecutor of Pampanga, Bureau of Food & Drugs and Glaxo SmithKline, GR No. 149907
Court of Cassation of Turkey [2014]: Merinos v n11.com, RG Nos. 2014/6429E, 2014/12088K

Session 7 – Remedies addressing multi-territorial infringement (11.30 – 12.30)

Can national courts grant “global” remedies?
Setting license rates for revenues outside the jurisdiction
Site blocking and global de-indexing orders
Remedies in cross-border contributory infringements

Moderator and panelists

Moderator: Eun-Joo Min
Director, WIPO Judicial Institute

Speaker: Colin Birss
Justice, High Court of England and Wales, London, United Kingdom

Dedar Singh Gill
Judicial Commissioner, Supreme Court of Singapore

Klaus Grabinski
Judge, Federal Court of Justice, Karlsruhe, Germany

Federal Court of Justice of Germany [2017]: Sealing System, Case No. X ZR 120/15
Federal Court of Justice of Germany [2015]: Audiosignalkodierung, Case No. X ZR 69/13
High Court of Singapore [2018]: Disney Enterprises, Inc and others v M1 Ltd and others [2018] 5 SLR 1318; [2018] SGHC 206
Court of Appeal (Civil Division) of England and Wales [2018]: Unwired Planet v Huawei (2018) EWCA Civ 2344

Session 8 – IP and private international law (14.00 – 15.00)

Jurisdiction
Applicable law
Recognition and enforcement of foreign judgments

Moderator and panelists

Moderator: Annabelle Bennett
Former Judge, Federal Court of Australia, Sydney, Australia; Chair of the WIPO Advisory Board of Judges

Speaker: Samuel Granata
Judge, Court of Appeal, Antwerp, Belgium, and Benelux Court of Justice, Luxembourg

Marcelo De Nardi
Federal Judge, Environmental, Land and Indigenous Peoples Issues Federal Court of Porto Alegre, Porto Alegre, Brazil

Ramziya Khatypova
Judge, Judicial Chamber on Economic Disputes, Supreme Court of the Russian Federation, Moscow, Russian Federation

Superior Court of Justice of Brazil [2007]: Lilly Icos LLC v Pfizer Limited (“Viagra case”), SEC-911
Court of Appeal (Civil Division) of England and Wales [2019]: Huawei v ZTE (2019) EWCA Civ 38
Supreme Court of the Russian Federation [2013]: VOIS v OOO “Polet”, Case No. А53-25852/2013

Session 9 – Recent developments in IP courts (15.00 – 15.45)

Moderator and panelists

Moderator: Anna Morawiec Mansfield

Deputy Legal Counsel, WIPO

Fan Mingzhi
Senior Judge and Deputy Director General, China Institute of Applied Jurisprudence, Supreme People’s Court of China, Beijing, China

Agnieszka Gołaszewska
Judge and Deputy Director, Civil Legislation Department, Ministry of Justice, Warsaw, Poland

Bohdan Lvov
Vice-President, Supreme Court; President of the Cassation Commercial Court, Supreme Court, Kyiv, Ukraine

Session 10 – IP adjudication through regional courts (16.15 – 17.30)

Work of the Court of Justice of the Andean Community; Court of Justice of the European Union; the Benelux Court of Justice; Courts in the OAPI system; and the future Unified Patent Court
Role of regional courts in the interpretation of IP laws and harmonization
Reconciling national and regional IP judicial systems

Moderator and panelists

Moderator: Samuel Granata
Judge, Court of Appeal, Antwerp, Belgium, and Benelux Court of Justice, Luxembourg

Hugo Ramiro Gómez Apac
President, Court of Justice of the Andean Community, Quito, Ecuador

Klaus Grabinski
Judge, Federal Court of Justice, Karlsruhe, Germany

Marc Jaeger
President, General Court of the European Union, Luxembourg

Max Lambert Ndéma Elongué
President, Court of First Instance, Yaoundé Ekounou, Cameroon

Closing – 17:30 to 17:45

Annabelle Bennett
Former Judge, Federal Court of Australia, Sydney, Australia; Chair of the WIPO Advisory Board of Judges

Frits Bontekoe
Legal Counsel, WIPO

Day three – November 15, 2019

Social activities (Optional)

09:00 - 12:30 CERN guide tour

10:30 - 11:30 Palais des Nations guided tour

Policy | Reference

Cooperation | Services

About IP

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