Business Welcomes New EU Observatory to Fight Counterfeiting and Piracy

November 27, 2008

Business leaders from Business Action to Stop Counterfeiting and Piracy (BASCAP), an initiative of the International Chamber of Commerce (ICC), welcomed news that the European Council has established a European Observatory on Counterfeiting, a press release by the ICC stated.

The Council resolution establishing the observatory was initially put forward by the French EU Presidency. The new observatory will bring together for the first time European government and private sector stakeholders to measure and analyze the counterfeiting and piracy problem impacting Europe, and develop solutions to the growing problem.

The observatory provides a unique and much needed forum for gathering the expertise of European public and private sector leaders to share intelligence and strategies for fighting the growing problem of counterfeiting and piracy in the region.

Experience has shown that while the problem is global, responses are most effective when they are tailored to the stakeholders, consumers and infrastructures of a particular region.

Drawing on Member State and private sector input, the observatory will develop an annual report identifying places in Europe where counterfeiting and piracy is rife, source and transit countries for fake goods reaching Europe, and Internet sites selling fake products into Europe. It will also study the effectiveness of the legal framework in enforcing intellectual property rights, country by country.

In addition to the analytical reports, the observatory is expected to compile practical tools to aid cooperation between customs officials and brand owners, including a directory of contacts for European government and private sector actors involved in the fight against counterfeiting and piracy, and a compendium of best practices.

The observatory will also develop communication materials to educate consumers on the issue, and will work with relevant actors such as travel agents to develop a campaign to sensitize consumers in Europe of the dangers associated with buying fake goods, building upon the various public awareness campaigns already underway in European anti counterfeiting associations.

China Extends Application of Internet Treaties to Hong Kong SAR

November 27, 2008

As of October 1, 2008, the terms of two key international copyright treaties will extend to the Hong Kong Special Administrative Region (SAR). The Government of the Peoples Republic of China has notified the World Intellectual Property Organization (WIPO) that it has extended application of the WIPO Copyright Treaty (WCT) and the WIPO Phonograms and Performances Treaty (WPPT) known as the Internet Treaties to the Hong Kong Special Administrative Region.

These treaties, which entered into force in 2002, bring the international system of copyright and related rights more in line with the challenges of the digital age.

When China joined the WCT and the WPPT in June 2007, WIPO was informed by the Chinese Government that that In accordance with the Basic Law of the Hong Kong Special Administrative Region of the Peoples Republic of China and the Basic Law of the Macao Special Administrative Region of the Peoples Republic of China,
the Government of the Peoples Republic of China has decided that, unless otherwise notified, the Treaty shall not apply to the Hong Kong Special Administrative Region and the Macao Special Administrative Region of the Peoples Republic of China.

This would enable Hong Kongs talented creators to create, distribute and control the use of their works within the digital environment with greater confidence.

The WCT and WPPT were agreed in 1996 and became law on March 6 and May 20, 2002 respectively. To date, 67 countries have signed up to the WCT and 66 to the WPPT.

These treaties have been of key importance in boosting the development of the Internet, electronic commerce and the culture and information industries by ensuring the quality and authenticity of digital content. This has enabled creators, performers, sound recording producers and associated industries to reap the financial rewards of their talent, creativity and investment.

Memorandum of Understanding Between SIPO and USPTO Signed

November 27, 2008

On October 25, heads of SIPO (China) and the United States Patent and Trademark Office (USPTO) hold talks in Beijing, and the two offices sign a cooperative memorandum of understanding.

SIPO Commissioner Tian Lipu

During the talks, Mr. Tian reviews the cooperation projects launched by the two offices in the past, including examiner exchanges, conjunctive retrieval, jointly holding seminars and exchanges of automation expert panels, saying that the two offices have deepen friendship on the basis of the successful cooperation.

Mr. Tian points out that the two offices have established unblocked and close cooperation in extensive areas and should continue to deepen the sound bilateral cooperation. Mr. Tian stresses that with the development of IP systems, SIPO and USPTO are facing the same challenges, and there is still a large potential of future cooperation. He hopes the two offices can further strengthen communications to consolidate and explore cooperation in other fields.

USPTO Director Jon Dudas

Mr. Dudas notes that Commissioner Tian’s deep understanding and unique perception upon IP system is one of the important factors of the rapid development of SIPO. SIPO is playing an increasingly important role on the world IP stage, and USPTO hopes to conduct deep cooperation in other extensive fields with SIPO to further improve the working efficiency.

The memorandum covers many cooperation projects such as examination business, automation, jointly holding seminars and dispatching examiners to each other’s office. The signing of the memorandum can help SIPO and USPTO to maintain the continuity of long term cooperation.

Advertising and Trademark Infringement

November 27, 2008

If a trademark is used for the purpose of identifying goods or services and the use is in accordance with honest practices in industrial and commercial matters, and does not without due cause take unfair advantage of, or is detrimental to, the distinctive character or repute of the trade mark then there is no infringement.

For obvious commercial reasons, clearances should always be sought as early as possible before production starts. In practice, however, this does not always happen, leaving the advertiser and its agency to negotiate in a position where substantial expenditure has been committed to an advertisement which contains infringing material.
For evidential reasons, it is clearly preferable for advertisers and their agencies to obtain clearances in writing.

In relation to copyright there is no infringement where the inclusion of a work into an artistic work, sound recording, film or broadcast is an ‘incidental inclusion’. However, this defense has been interpreted very narrowly by the courts.

As there is usually a significant amount of high level planning most advertising and marketing materials and the availability of post production technology to remove or alter uncleared elements in an advertisement, it is submitted that the ‘incidental inclusion’ defense will typically be difficult for advertisers and their agencies to sustain.

Again clearance should generally be obtained from the owner of any copyright and moral rights in any photograph or any other two dimensional ‘artistic work’ appearing in a piece of advertising or marketing material.

USA Ratifies the Singapore Treaty

November 27, 2008

On October 1, 2008, United States (USA) ratified the Singapore Treaty on the Law of Trademarks; this is an international treaty regarding trademarks rights, which streamlines and modernizes certain trademark office procedures.

Besides U.S. companies, the Treaty will benefit all signatories interested in protecting their trademarks abroad, efficiently and cost effectively.

The Treaty will enter into force as soon as ten contracting parties (countries or qualifying intergovernmental organizations) deposit ratification instruments to the Treaty with the WIPO Director General. The US ratification brings the current number of states party to the Treaty to eight. There is confidence that more countries would soon finalize the national processes that pave the way to ratification.

Once the Treaty enters into force, trademark owners will benefit from reduced transaction costs thanks to the efficiencies built into the Treaty, which simplifies and standardizes trademark office procedures.

Over 50 countries have already signed the Treaty. By signing it, states declare their support for the Treaty and their intention to formally join it. Singapore, which hosted the final round of negotiations in 2006 leading to the Treatys adoption, was the first country to finalize the ratification process in March 2007, followed by Switzerland, Bulgaria, Romania, Denmark, Latvia and Kyrgyzstan.

Background

The Singapore Treaty deals mainly with aspects of trademark registration process and licensing, and introduces greater flexibilities and efficiencies into the delivery of trademark registration services. By eliminating bureaucracy, enabling trademark authorities to take advantage of modern communications technologies, and simplifying and standardizing trademark office procedures, the Treatys objective is to reduce transaction costs for trademark owners.

Companies with a trademark portfolio will be in better position to develop and actively market their trademarks in both domestic and international markets. Once it enters into force, the Treaty will create a level playing field for all economic operators that invest in branded goods and a dynamic regulatory framework for trademark rights.

The Treaty recognizes the specific needs of developing and least developed nations and includes a commitment by industrialized countries to provide adequate technical assistance and other forms of support to strengthen the institutional capacity of those countries to enable them to take full advantage of the Treaty.

The Singapore Treaty explicitly recognizes that trademarks are no longer limited to two dimensional labels on products and specifically mentions new types of marks such as hologram marks, and non visible signs, such as sound or taste marks. Although such marks are at present relatively uncommon, it is likely that their popularity will rise as companies seek novel promotional ideas for their products in a marketplace that is continuously evolving.

The Treaty also establishes common rules for the recording, amendment and cancellation of trademark licenses. This development is particularly welcome, considering that more than 100 countries around the world provide for the recording of trademark licenses although this is not always mandatory. In this context, the branded goods sector, in which trademark licensing is widely practiced, stands to benefit from greater legal certainty, cost savings and efficiencies.

The Treaty also introduces new mandatory relief measures for trademark office procedures in order to alleviate procedural mistakes by trademark applicants, notably, missed time limits, which, if not remedied, could be detrimental to trademark rights. These measures are designed to enable swifter and more transparent trademark office procedures.

China Handles more Trademark Infringement Cases

November 27, 2008

China has stepped up efforts in protecting trademarks with 21,045 trademark infringement cases investigated in the first half of this year, up 10.92% from a year earlier.

Statistics released by the State Administration For Industry and Commerce (SAIC) showed that these cases include 16,630 domestic ones and 4,415 foreign related ones, up 7.58% and 25.6%, respectively.

Fines from these cases reached 175 million yuan (25.74 million U.S. dollars), up 8.58%; and 50 trademark related criminal cases and 53 suspects were handed over to judicial organs for judgment, according to the SAIC.

SAIC branches at different levels also handled 1,232 cases that infringed the trademarked property of Olympic symbols in the first half year, confiscating and destroying 174,560 pieces of related goods and 81,012 pieces of trademarks.

Meanwhile, the SAIC reinforced its copyright protection efforts, confiscating more than 46.11 million pieces of illegal publications, and handling 12,838 related cases.