The Role and Readiness of the Judiciary in Dealing with Counterfeiting and Piracy –

The Role of WIPO

Global Congress on Counterfeiting and PiracyCancun, December 2, 2009

Ms. Louise van Greunen

Perry v Truefitt (1842)6 Beav 66, 49 E.R. 749

Lord Langdale: … a man is not to sell his own goods under the pretence that they are the goods of another man; he cannot be permitted to practice such a deception…he cannot be allowed to use names, etc. by which he may induce purchasers to believe that the goods which he is selling are the manufacture of another person. I have no doubt that he has no right to use the mark for purposes of deception ...

“Traditional infringement” compared to counterfeiting and piracy

‘Ordinary’ infringers try

• to be close enough to the original to confuse the consumer but

• with enough differences to confuse the court

Counterfeiters and pirates try

• make identical copies

• on a commercial scale

• to make profit • confuse ? yes

and no ...

Fakegifts.com• DiPadova - largest Internet site dealing in

counterfeit goods: Rolex, Cartier, Mont Blanc...• he said: “… and even if they shut down one site,

I'll put up another. I’m very much aware of what I'm doing, but the money is good, I'm going to keep doing it”

• sentenced (14.12.01) - 24 months prison + 3 years supervised released + US$ 14 million in restitution to TM owners

Criminals

• Disregard for the law

• IP rights

• health and safety

• social values / cultural identity

• socio-economic development

WIPO - activities in enforcement

• Legislative assistance• cooperation at the international level – Global

Congress - http://www.ccapcongress.net• assistance: formulating national enforcement

strategies• activities with Regional Bureaus and the WIPO

Worldwide Academy• Advisory Committee on Enforcement

Advisory Committee on Enforcement(WIPO Assemblies - September 23 to October 1, 2002)

• One single Committee in charge of global enforcement issues with objectives:

• coordination with certain organizations and the private sector to combat counterfeiting and piracy

• public education

• assistance

• coordinate national and regional training

• exchange of information

Sessions of the ACEwww.wipo.int

• 1st Session: 2003• 2nd Session: 2004 - the role of the judiciary and

the prosecution in enforcement activities • 3rd Session: 2006 - education and awareness-

building, including training• 4th Session: 2007 - cooperation and coordination

at the different levels – focus on criminal enforcement

Recent session of the ACEGeneva, November 2 to 4, 2009

• “Contribution of, and costs to, right holders in enforcement, taking into account Recommendation No. 45 of the WIPO Development Agenda”

WIPO Development Agenda

• 2004 WIPO General Assemblies – proposal Argentina and Brazil and 12 developing countries

• Purpose: to ensure a balance in the IP system, taking into account the needs and interests of all countries, developed and developing, and all stakeholders

Cluster F: Other IssuesRecommendation 45

• To approach IP enforcement, in line with Art 7 of TRIPS, with a view that “the protection and enforcement of IP rights should contribute to the promotion of technological innovation and to the transfer and dissemination of technology to the mutual advantage of producers and users of technological knowledge and in a manner conducive to social and economic welfare and to a balance of rights and obligations.”

Development Agenda Role of WIPO

• To support an informed policy debate on the way in which IP can best evolve as a tool for the individual and collective benefit and

• to establish an equilibrium between private rights – to encourage creativity and innovation, and

• the public interest – development-orientated concerns

Example: legalizing street vendors

• Pilot project in South Africa:– Cheap copies of authentic DVDs sold via street

vendors with the consent of right holders – Political will and awareness campaigns– Objectives: address issues of poverty and

pricing – authentic goods at affordable prices; undercut the illicit trade; and job creation

• Similar models in South America

Example: disposal of goods

• Remove from commercial channels

• SNB-React model: recycle around 80%; environmentally friendly destruction; and job creation for disabled people

• Charitable distribution, if and where appropriate, with the consent of the right holders

The Challenge

• In the past the focus was on legal solutions

• Since the 1990s there was a shift in focus to technological solutions

• Today the challenge for WIPO is to focus on social needs and socially equitable solutions - emphasizing the social, cultural and economic development dimension of IP

WIPO – Strategic Goal VI

Program 17 Building Respect for IP

First objective

• Informed policy discussions at the international level to support the creation of an enabling environment that promotes respect for IP in a sustainable manner

• Identify and address elements fuelling a disrespect for IP

• Documents: ACE, November 2009

Second objective

• Strengthened capacity in Member States for the effective enforcement of IP rights in the interest of social and economic development and consumer protection

• Training• Education• Awareness• Cooperation• Right holder

assistance

Expected result

• To integrate development-orientated concerns in the enforcement related activities of partner organizations

• Shared training activities and the Global Congress

• Taking due note of their respective mandates and concerns, as well as the interest of society

Justice Cao Jianming Vice President of the Supreme People’s Court

of the People’s Republic of China

“Protecting IPRs is necessary not only for China’s honouring of its international promises, creating favourable trade and investment environment, and further opening up to the outside world, but also for promoting technical innovation, regulating the order of the market economy, improving the overall quality of the national economy, and enhancing the competitiveness.”

Thank you!