Officials Outline International Organisations’ IP Enforcement Policies

By Kaitlin Mara and William New
Officials from key international organisations on Friday outlined efforts to develop policies intended to prevent the spread of pirated and counterfeit goods.

The officials were joined by representatives of law firms and international companies such as online auction service eBay, which described efforts to save its business model as its “brand is under attack.”

Panellists spoke at a 15 February event of the University of Geneva Faculty of Law and Swiss public-private organisation “Stop à la Piraterie” that mixes the national IP office with industries such as watch-making, chocolate and cigarettes. The event may be part of a series to come, organisers said.

Heike Wollgast, senior legal officer in the enforcement division of the World Intellectual Property Organization (WIPO), discussed WIPO’s role in IP protection as primarily creating model legislation, not operations
[Correction: WIPO’s role is not creating model legislation on IP protection]. The mandate of WIPO is limited to political discourse and technical assistance [note: including legislative assistance] for member states, she said. Counterfeiting and piracy are addressed in WIPO treaties, but there has been increasingly complex debate about these issues, she said. [Clarification: counterfeiting and piracy are addressed in WIPO, but the World Trade Organization Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) is the most comprehensive legal framework on these issues]

WIPO addresses enforcement through the Advisory Committee on Enforcement (ACE), which she said is purely a discussion forum, a place for states to share their experiences and discuss ways to better enforce their IP rights at home. But two “divergent approaches” have emerged in the committee, she said (IPW, Enforcement, 5 November 2007). On one hand, [clarification: some] developed countries would “very much” like the committee to consider a new treaty, led by an Italian proposal at the last WIPO General Assembly. [note: sentence removed here]

The ACE is in a “delicate situation” at this point, she said. WIPO’s new Committee on Development and IP will meet for the first time in March, and may shed light on how WIPO’s new Development Agenda will influence the enforcement debate. But she said she does not see the development committee questioning the underlying fight against counterfeiting and piracy. And for its technical assistance, such as with judicial systems and legislation, WIPO is “flooded with requests” from governments, she said.

Wollgast also highlighted other fora where IP enforcement is being discussed. This includes a negotiation for an Anti-Counterfeiting Trade Agreement launched by developed countries last autumn (IPW, Enforcement, 24 October 2007), which she said is in “early days” so that the outcome cannot be predicted. She also said that in bilateral free trade agreements, especially with the United States and Europe, enforcement has been increasingly prominent and developing countries have been signing up to stronger provisions than required in international treaties. Bilaterals also tend to address weaknesses in the global IP system such as the limited measures in international trade law on IP and border measures, or Internet piracy, she said.

Wolf Meier-Ewert, legal affairs officer at the World Trade Organization intellectual property division, pointed out a difficulty in coming up with uniform enforcement standards worldwide, as even principles that might seem obvious in some parts of the world are not necessarily readily apparent elsewhere.

There is also disagreement among WTO member states as to what kinds of measures need to be taken. The same set of developed countries has been trying for years, Meier-Ewert said, to get enforcement issues on the agenda of the WTO Council on Trade-Related Aspects of Intellectual Property Rights (TRIPS), but Brazil, India and China have resisted the agenda item out of concern that it could lead to pointing fingers at countries where enforcement is seen as not up to standard.

Despite differences of opinion, the TRIPS Council has actually had very few cases brought to dispute settlement proceedings, Meier-Ewert said, and most of those were about ensuring that national laws were compatible with TRIPS obligations, and had little if anything to do with enforcing IP protection laws. So it is of particular interest that there is a case entirely to do with IP enforcement before the dispute settlement body now. The United States has made claims against China concerning thresholds for intellectual property enforcement, saying that below a certain number of infringing copies of a product enforcement does not happen. The US also asserts that counterfeit goods in China simply have the infringing trademark removed and are auctioned back into the commercial sector, and books and other media that must pass a censor before being sold in China are inadequately protected (IPW, WTO/TRIPS, 24 November 2007).

Aline Plançon, a criminal intelligence officer in international police organisation Interpol’s intellectual property rights project, called IP pirates and counterfeiters a form of international organised crime, and spoke about Interpol’s international effort to coordinate police groups, customs officials, and international organisations in fighting “IP crime.”

Much of her talk focused on counterfeit pharmaceuticals, especially of a particular malaria drug, which she said alarmed her. Interpol is involved with all forms of IP infringement and does not concentrate solely on health products, she said. Part of the difficulty in enforcing IP laws, she said, is that counterfeit packaging can look very similar to the legitimate product and it can be difficult for ordinary consumers to tell the difference. Further complicating matters is corruption in law enforcement, which in some countries meant officers were in league with counterfeiters, making on-the-ground policing more difficult.

Karin Schwab, head of IP and litigation in Europe at eBay, described the fight the online auction company is facing, both from the rising number of counterfeit products being traded, and also from misuse of its name in Internet scams. The company has developed strategies in tandem with trademark owners to identify and block sales of fakes, but it is a process that is “impossible to scale,” she said. Meanwhile, eBay consumers continue to buy cheaper fakes out of the belief they are getting a bargain, she said. Unclear laws, such as who has rights over a perfume that was a tester or without packaging, add to the company’s concerns.

From phishing scams (pretending to represent the company and asking for credit card information) to counterfeits, Schwab said, “our brand is under attack.”

Kaitlin Mara may be reached at kmara@ip-watch.ch.