- Email: [email protected]
WIPO News
World Patent Information 26 (2004) 247–251 www.elsevier.com/locate/worpatin
WIPO news A selection of material from ‘‘Press Releases’’ and ‘‘Updates’’ chosen from the WIPO website. 1. PCT reforms A series of reforms to the PCT, ranging from a new simplified system of designating countries in which patent protection is sought to an enhanced search and preliminary examination system, came into force on 1 January 2004. These reforms have been prompted by the rapid increase in the demand for patent applications globally and their growing technological complexity, a growing momentum to develop more efficient worldwide patent systems, and the need to further develop an international system that is accessible, fair and balanced. The main features are • A simplified designation procedure and fee structure. Under the new system, all available countries will be designated for all types of protection (national, regional) when filing a PCT application. Consequently, the international filing fee will no longer include a ‘‘designation’’ component. The current small excess page fee applicable to larger applications, however, will still apply. • A new enhanced search and examination system providing an international search and opinion on compliance with main patentability criteria will be available very early in the procedure. • IP offices that are entrusted with processing the applications through the various steps of the procedure will be better equipped to handle their workload while maintaining the quality of services provided. • Reduced duplication of work in the processing of PCT applications during the international and national phases. • Centralized availability to third parties of international preliminary examination reports (past, present and future cases) through a request to WIPO. Further information: http://www.wipo.int/pct/reform/ en/index.html. 2. WIPO pledges support for development of Africa The Director General of the World Intellectual Property Organization (WIPO), Dr. Kamil Idris, has doi:10.1016/j.wpi.2004.04.005
reaffirmed the Organization’s full support for the African Union (AU) to promote the economic, technological and social development of the continent. This came in a meeting between Dr. Idris and the Chairperson of the Commission of the African Union (AU), Professor Alpha Oumar Konare, at WIPO’s Geneva headquarters on December 10, 2003. Dr. Idris and Professor Konare discussed the strategic importance of intellectual property in promoting national economic objectives and agreed on the importance of the intellectual property system in advancing a country’s national economic strategy. Dr. Idris said that WIPO will provide assistance, notably technical and legal, to the AU to promote the establishment and implementation of national IP strategies within African countries to ensure that these countries are better placed to more effectively use the intellectual property system to stimulate economic growth, improve social well-being and enhance their cultural heritage. Both emphasized the importance of African ownership in formulating and applying initiatives to advance the development objectives of the continent.
3. New contracting parties to WIPO-administered treaties in the field of industrial property in 2003 Increasing global recognition of the importance of intellectual property rights as a tool for economic development and wealth creation was reflected in the number of countries that signed up to treaties administered by WIPO in 2003. Last year, 52 instruments of accession to or ratification of treaties administered by WIPO were received, the majority of which were deposited by developing countries, and were in the field of industrial property. 3.1. Paris Convention The Paris Convention for the Protection of Industrial Property was concluded in 1883 and is one of the pillars of the international intellectual property system. It applies to industrial property in the widest sense, including inventions, marks, industrial designs, utility models, trade names, geographical indications and the repression of unfair competition. In 2003, Namibia and Saudi Arabia (2) adhered to the Paris Convention. The total
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WIPO news / World Patent Information 26 (2004) 247–251
number of contracting states on December 31, 2003, was 166. 3.2. Patent Cooperation Treaty (PCT) In 2003, Botswana, Egypt, Namibia, Papua New Guinea and the Syrian Arab Republic (5) adhered to the PCT. The total number of contracting states on December 31, 2003, was 123. 3.3. Madrid Agreement and Madrid Protocol (International Registration of Marks) In 2003, Cyprus and Iran (Islamic Republic of) (2) adhered to the Madrid Agreement. The total number of contracting states to the Madrid Agreement on December 31, 2003, was 54. In 2003, Albania, Croatia, Cyprus, Iran (Islamic Republic of), the Republic of Korea and the United States of America (6) adhered to the Madrid Protocol. The total number of contracting states to the Madrid Protocol on December 31, 2003, was 62. 3.4. Nice Agreement (International Classification of Goods and Services for the Purposes of the Registration of Marks) In 2003, Albania and Azerbaijan (2) adhered to the Nice Agreement. The total number of contracting states on December 31, 2003, was 72. 3.5. Locarno Agreement (International Classification for Industrial Designs) The Locarno Agreement establishes a classification for industrial designs which consists of 32 classes and 223 subclasses. It also comprises an alphabetical list of goods with an indication of the classes and subclasses into which these goods fall. The list contains some 6,600 indications of different kinds of goods. In 2003, Azerbaijan and the United Kingdom (2) adhered to the Locarno Agreement. The total number of contracting states on December 31, 2003, was 43. The eighth edition of the Locarno Classification, was published in September 2003 in the two authentic versions (English and French), and entered into force on January 1, 2004.
of Patent Procedure was concluded in 1977. The main feature of the Budapest Treaty is that a contracting state which allows or requires the deposit of microorganisms for the purposes of patent procedure must recognize, for such purposes, the deposit of a microorganism with any ‘‘international depositary authority,’’ irrespective of whether such authority is on or outside the territory of the said state. This eliminates the need to deposit in each country in which protection is sought. In 2003, Albania, Azerbaijan and Kyrgyzstan (3) adhered to the Budapest Treaty. The total number of contracting states on December 31, 2003, was 58. 3.8. The Hague Agreement (International Deposit of Industrial Designs) In 2003, Belize, Georgia, Gabon and Kyrgyzstan (4) adhered to the Hague Act and the Complementary Act of Stockholm. The total number of contracting states (Hague Act) on December 31, 2003, was 29. The Geneva Act of the Hague Agreement was concluded in 1999. In 2003, Georgia, Kyrgyzstan, Liechstenstein and Spain (4) adhered to the Geneva Act of the Hague Agreement. The total number of contracting states on December 31, 2003, was 11. 3.9. Patent Law Treaty (PLT) The Patent Law Treaty was concluded in 2000. The purpose of the PLT is to harmonize and streamline formal procedures in respect of national and regional patent applications and patents. In 2003, Estonia and Ukraine (2) adhered to the Patent Law Treaty. The total number of contracting states on December 31, 2003, was 7. The Patent Law Treaty will enter into force three months after ten instruments of ratification or accession by states have been deposited with the Director General. 3.10. UPOV Convention (plant varieties) The International Convention for the Protection of New Varieties of Plants (the UPOV Convention) was concluded in 1961. In 2003, Lithuania and Tunisia (2) adhered to the 1991 Act of the UPOV Convention. The total number of contracting states on December 31, 2003, was 54.
3.6. Strasbourg Agreement (IPC) In 2003, Azerbaijan (1) adhered to the Strasbourg Agreement. The total number of contracting states on December 31, 2003, was 54. 3.7. Budapest Treaty The Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes
4. WIPO continues efforts to stamp out cybersquatting Efforts by WIPO to combat the abusive registration of trademarks as domain names, or cybersquatting, made significant headway in 2003 although the problem persists most notably for high-value brands around the world. Since the Uniform Domain Name Dispute Resolution Policy (UDRP) went into effect in December
WIPO news / World Patent Information 26 (2004) 247–251
1999, through 2003, WIPO’s Arbitration and Mediation Center has handled some 6,000 disputes, covering 10,000 domain names. The reduction of cybersquatting is seen as an important element in enabling the Internet to develop as a secure and reliable environment. The fact that over 80 percent of the WIPO expert decisions went in favour of the trademark holder, be it a large multinational corporation or a small or medium-sized business, underlines the bad faith inherent in this practice. In 2003, the Mediation Center received 1,100 UDRP cases––similar to 2002. In addition to famous brands (recent WIPO cases include the domain names pepsi-smash.com, calvinklein-watches.com, rolexgroup.com), celebrities continue to be targeted by cybersquatters. Often their winning cases were based on common law rights in their names rather than on a registered trademark. In 2003, the Center received cases relating to movies, authors and books (jrrtolkien.com, thecatinthehat.com), pop stars (nsyncfilm.com, utadahikaru. com), television shows (oscartv.com, operaciontriunfo.tv), and movie stars (piercebrosnan.com, victoriarowell.com). Sports personalities (terrellowens.com) and sporting events (torino2006.net, madrid2012.org) were also the target of cybersquatters. Companies involved in recent or prospective mergers also fell prey to cybersquatters. The Center has recently dealt with cases involving domain names such as yellowroadway.com, japanairgases.com, konicaminolta. net, astrazenica.com, which were all newly created following recent or predicted mergers. In 2003 the Center dealt with 56 cases involving country code top-level domains (ccTLDs), a 40 percent increase over the previous year. Cases dealt with by the Center have included the domain names bodyshop.as, nutella.bz, amazon.com.cy and yahoo.ph. The Center now provides services for disputes in 36 ccTLDs, including .au (Australia), .mx (Mexico) and .nl (Netherlands). The Center’s experts are frequently called upon to decide cases that involve high-value brands. The WIPO Center so far has resolved cases involving 66 of the 100 largest brands by value, including 7 of the top 10 such brands (Interbrand Brand survey 2003). The Center’s services are multinational and multilingual. So far, parties to WIPO UDRP disputes have come from 116 different countries. In 2003, the Center added three languages (Dutch, Italian and Russian) to the nine case languages it has used to date, namely, Chinese, English, French, German, Japanese, Korean, Norwegian, Portuguese and Spanish. Domain names themselves may also be presented in different scripts, such as Chinese, Cyrillic or Korean. The Center has handled 36 such ‘‘multilingual name’’ disputes so far, with further growth expected.
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All domain name decisions handled by the Center are fully indexed and published on the Center’s web site (http://arbiter.wipo.int/domains/search/index.html). In addition to its domain name activities, the WIPO Center is increasingly called upon to provide arbitration and mediation services for all types of intellectual property disputes, such as disputes involving patent, trademark or copyright licensing. For this purpose, the WIPO Arbitration and Mediation Center makes available model arbitration and mediation clauses which can be downloaded from its web site at ‘‘http://arbiter.wipo.int/arbitration/contract-clauses/index.html’’.
5. Study takes critical look at benefit sharing of genetic resources and traditional knowledge At a Conference of the Parties to the Convention on Biological Diversity in Kuala Lumpur, Malaysia, WIPO and the United Nations Environment Programme (UNEP) launched two Voluntary ‘‘Access and Benefit Sharing’’ Case Studies from Africa and Asia. These case studies resulted from a joint study commissioned by WIPO and UNEP and carried out by Professor Anil K. Gupta, the founder of the Honeybee Network of community-based grassroots innovators in India. They relate to a medicine, derived from an Indian plant with apparent fatigue-busting properties, and a gene from a wild, West African rice which is being used in the biotech industry, which demonstrate the potential benefits and pitfalls of current benefit sharing agreements. They highlight the shortcomings of a number of existing voluntary agreements and suggest ways that these may be improved to ensure that the real custodians of genetic resources and traditional knowledge on which promising, agricultural discoveries are based have a share in the derived benefits. The study also suggests that there is scope for intellectual property rights, a vital element in the mix of legal tools that create effective benefit-sharing, to be used more effectively to generate and share more equitably both monetary and non-monetary benefits.
6. International patent filings exceed 110,000 for third year running The number of international patent applications filed in 2003 using the PCT exceeded 110,000 for the third consecutive year. Inventors and industry from the United States of America (35.7% of all applications in 2003), Japan (15.2%), Germany (12.7%), United Kingdom (5.5%), France (4.3%) topped the list of biggest users of the system. For the first time in 13 years, Japan ranked second over Germany. Use of the PCT in Japan grew by a record 24% in 2003. The Republic of Korea (15.5%
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growth), and the Netherlands (4% growth) also showed a significant increase in filings. Of the 110,114 applications in 2003, the companies that filed the most international patent applications with the PCT were Philips Electronics N.V. (Netherlands), Siemens (Germany), Matsushita (Japan), Bosch (Germany), Sony (Japan), Nokia (Finland), 3M (USA), Infineon (Germany), BASF (Germany), and Intel (USA). International patent applications received from developing countries in 2003 saw an 11% increase. The list was topped by Republic of Korea with 2,947 applications, followed by China (1.205), India (611), South Africa (376), Singapore (313), Brazil (221) and Mexico (123). Both India and the Republic of Korea saw a double-digit increase in their use of the PCT, experiencing 27.3% and 15.5% increases, respectively. The top ten users of the PCT from developing countries include: LG Electronics (Republic of Korea), Samsung Electronics Co. Ltd. (Republic of Korea), Council of Scientific and Industrial Research (CSIR) (India), Huawei Technologies Co. Ltd (China), Ranbaxy Laboratories Ltd. (India), LG Chem Ltd. (Republic of Korea), Hetero Drugs Ltd (India), CJ Corporation (Republic of Korea), Electronics and Telecommunications Research Institute (Republic of Korea), Young Suk Son (Republic of Korea) and ZTE Corporation (China). In 2003, the Spanish Patent and Trademark Office began its functions as an International Preliminary Examining Authority under the PCT. The National Board of Patents and Registration of Finland was also appointed as International Searching and Preliminary Examining Authority, bringing the number of Authorities to 12. The Finnish office is expected to begin these operations in the course of 2004, as is the Canadian office, which was appointed in 2002.
7. WIPO and ITC publish guide on the role of intellectual property in marketing crafts and visual arts Artisans, craft entrepreneurs and visual artists involved in business can now make use of a practical guide, published by WIPO and International Trade Centre (ITC), on how to successfully manage and market their intellectual property (IP) assets. ‘‘Marketing Crafts and Visual Arts: The Role of Intellectual Property. A practical guide’’ provides advice and draws on success stories to demonstrate the relevance of IP and marketing to the commercial activities of artisans and visual artists. The real challenges for artisans and visual artists in today’s highly competitive and technological driven marketplace are to produce and market winning new products that cater to changing consumer tastes and also to prevent and effectively deal with unfair competition or theft of their ideas. The IP system is the best available tool for deterring unfair competition by cre-
ating and maintaining exclusivity over creative and innovative output in the marketplace. ‘‘Marketing Crafts and Visual Arts: The Role of Intellectual Property. A practical guide’’ is currently available in English more information at www.wipo.int/ ebookshop/ or at www.intracen.org/eshop. Additional language versions will be available in the near future.
8. Steady growth in 2003 for international trademark system WIPO received 23,872 trademark applications in 2003 under the Madrid System for the International Registration of Marks. This represents a 3% increase over 2002. The same year, 21,847 trademark registrations and 6,637 trademark renewals were recorded in the International Trademark Register. Germany topped the list of largest users for the eleventh year running with 4,999 international registrations (22.9%), followed by France (3,281 or 15%), Switzerland (2,204 or 10.1%) and countries of the Benelux––Belgium, Luxembourg, Netherlands (2,104 or 9.6%). The top twenty users of the Madrid System in 2003 were: Henkel (Germany), Novartis (Switzerland), Sanofi (France), Unilever (Netherlands), Janssen Pharmaceutica (Belgium), L’Oreal (France), Nestle (Switzerland), Bayer (Germany), , Siemens (Germany), ITM (France), Boehringer (Germany), Biofarma (France), Philips Electronics (Netherlands), BASF (Germany), Merck (France), Syngenta (Switzerland), Fiat (Italy), Kodak (France) and Bongrain (France) and Migros (Switzerland). By the end of 2003, some 412,000 international trademark registrations, belonging to over 134,000 different trademark holders, were in force in the International Register. Those international registrations represented the equivalent of some 4.9 million national registrations, taking into account that, as an average, each international registration extends its effects to some 12 designated countries. Prospects for growth of the Madrid system are promising owing to recent developments: (a) the United States is now a member of the Madrid Protocol, (b) the European Community’s has declared its intention to join the system this year and (c) the inclusion of Spanish as a working language.
9. The International Design System in 2003 The WIPO-administered International Design System governed by the Hague Agreement concerning the International Registration of Industrial Designs recorded 2,474 new deposits (each deposit can include up to 100 designs) and 3,463 renewals in 2003. The total
WIPO news / World Patent Information 26 (2004) 247–251
number of industrial designs for which protection was sought under the Hague Agreement in 2003 was 13,512. The top twenty users of the Hague System in 2003 were: Swatch (Switzerland), Interior’s (France), Daimlerchrysler (Germany), Herme`s (France), Unilever (Netherlands), Nokia (Finland), Hansgrohe (Germany), Salomon (France), Volkswagen (Germany), Philips Electronics (Netherlands), Villeroy and Boch (Germany), Rehau (Germany) Henkel (Germany), Stekelenburg (Netherlands), Braun (Germany), Sanford (Germany), Fonkel (Netherlands), Tefal (France), Robert Bosch (Germany) and Siemens (Germany). By the end of 2003, the International Design Register showed some 35,208 deposits in force, which is the equivalent of some 400,000 national deposits. Since the Hague System began operations in 1928, some 2,000,000 designs have been deposited with the International Design Register.
10. Australia case studies on the use of intellectual property by indigenous communities WIPO has published a collection of practical case studies on the use of the intellectual property system by indigenous communities in Australia.
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The publication, entitled, ‘Minding Culture: Case Studies on Intellectual Property and Traditional Cultural Expressions’, was written for WIPO by Ms. Terri Janke, an Australian lawyer and a descendant of the Meriam people of the Torres Strait Islands, Australia. The publication is expected to guide the work of WIPO on how the intellectual property system can respond to the needs and expectations of the custodians of traditional cultures and knowledge. It therefore contributes to a process of exploration, dialogue and policy development aimed at enhancing the protection, promotion and preservation of traditional creativity and expressions of traditional cultures (or ‘expressions of folklore’). Michael Blackman 45 Kenwood Drive Beckenham Kent BR3 6QY, UK E-mail address: [email protected]
WIPO news A selection of material from ‘‘Press Releases’’ and ‘‘Updates’’ chosen from the WIPO website. 1. PCT reforms A series of reforms to the PCT, ranging from a new simplified system of designating countries in which patent protection is sought to an enhanced search and preliminary examination system, came into force on 1 January 2004. These reforms have been prompted by the rapid increase in the demand for patent applications globally and their growing technological complexity, a growing momentum to develop more efficient worldwide patent systems, and the need to further develop an international system that is accessible, fair and balanced. The main features are • A simplified designation procedure and fee structure. Under the new system, all available countries will be designated for all types of protection (national, regional) when filing a PCT application. Consequently, the international filing fee will no longer include a ‘‘designation’’ component. The current small excess page fee applicable to larger applications, however, will still apply. • A new enhanced search and examination system providing an international search and opinion on compliance with main patentability criteria will be available very early in the procedure. • IP offices that are entrusted with processing the applications through the various steps of the procedure will be better equipped to handle their workload while maintaining the quality of services provided. • Reduced duplication of work in the processing of PCT applications during the international and national phases. • Centralized availability to third parties of international preliminary examination reports (past, present and future cases) through a request to WIPO. Further information: http://www.wipo.int/pct/reform/ en/index.html. 2. WIPO pledges support for development of Africa The Director General of the World Intellectual Property Organization (WIPO), Dr. Kamil Idris, has doi:10.1016/j.wpi.2004.04.005
reaffirmed the Organization’s full support for the African Union (AU) to promote the economic, technological and social development of the continent. This came in a meeting between Dr. Idris and the Chairperson of the Commission of the African Union (AU), Professor Alpha Oumar Konare, at WIPO’s Geneva headquarters on December 10, 2003. Dr. Idris and Professor Konare discussed the strategic importance of intellectual property in promoting national economic objectives and agreed on the importance of the intellectual property system in advancing a country’s national economic strategy. Dr. Idris said that WIPO will provide assistance, notably technical and legal, to the AU to promote the establishment and implementation of national IP strategies within African countries to ensure that these countries are better placed to more effectively use the intellectual property system to stimulate economic growth, improve social well-being and enhance their cultural heritage. Both emphasized the importance of African ownership in formulating and applying initiatives to advance the development objectives of the continent.
3. New contracting parties to WIPO-administered treaties in the field of industrial property in 2003 Increasing global recognition of the importance of intellectual property rights as a tool for economic development and wealth creation was reflected in the number of countries that signed up to treaties administered by WIPO in 2003. Last year, 52 instruments of accession to or ratification of treaties administered by WIPO were received, the majority of which were deposited by developing countries, and were in the field of industrial property. 3.1. Paris Convention The Paris Convention for the Protection of Industrial Property was concluded in 1883 and is one of the pillars of the international intellectual property system. It applies to industrial property in the widest sense, including inventions, marks, industrial designs, utility models, trade names, geographical indications and the repression of unfair competition. In 2003, Namibia and Saudi Arabia (2) adhered to the Paris Convention. The total
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WIPO news / World Patent Information 26 (2004) 247–251
number of contracting states on December 31, 2003, was 166. 3.2. Patent Cooperation Treaty (PCT) In 2003, Botswana, Egypt, Namibia, Papua New Guinea and the Syrian Arab Republic (5) adhered to the PCT. The total number of contracting states on December 31, 2003, was 123. 3.3. Madrid Agreement and Madrid Protocol (International Registration of Marks) In 2003, Cyprus and Iran (Islamic Republic of) (2) adhered to the Madrid Agreement. The total number of contracting states to the Madrid Agreement on December 31, 2003, was 54. In 2003, Albania, Croatia, Cyprus, Iran (Islamic Republic of), the Republic of Korea and the United States of America (6) adhered to the Madrid Protocol. The total number of contracting states to the Madrid Protocol on December 31, 2003, was 62. 3.4. Nice Agreement (International Classification of Goods and Services for the Purposes of the Registration of Marks) In 2003, Albania and Azerbaijan (2) adhered to the Nice Agreement. The total number of contracting states on December 31, 2003, was 72. 3.5. Locarno Agreement (International Classification for Industrial Designs) The Locarno Agreement establishes a classification for industrial designs which consists of 32 classes and 223 subclasses. It also comprises an alphabetical list of goods with an indication of the classes and subclasses into which these goods fall. The list contains some 6,600 indications of different kinds of goods. In 2003, Azerbaijan and the United Kingdom (2) adhered to the Locarno Agreement. The total number of contracting states on December 31, 2003, was 43. The eighth edition of the Locarno Classification, was published in September 2003 in the two authentic versions (English and French), and entered into force on January 1, 2004.
of Patent Procedure was concluded in 1977. The main feature of the Budapest Treaty is that a contracting state which allows or requires the deposit of microorganisms for the purposes of patent procedure must recognize, for such purposes, the deposit of a microorganism with any ‘‘international depositary authority,’’ irrespective of whether such authority is on or outside the territory of the said state. This eliminates the need to deposit in each country in which protection is sought. In 2003, Albania, Azerbaijan and Kyrgyzstan (3) adhered to the Budapest Treaty. The total number of contracting states on December 31, 2003, was 58. 3.8. The Hague Agreement (International Deposit of Industrial Designs) In 2003, Belize, Georgia, Gabon and Kyrgyzstan (4) adhered to the Hague Act and the Complementary Act of Stockholm. The total number of contracting states (Hague Act) on December 31, 2003, was 29. The Geneva Act of the Hague Agreement was concluded in 1999. In 2003, Georgia, Kyrgyzstan, Liechstenstein and Spain (4) adhered to the Geneva Act of the Hague Agreement. The total number of contracting states on December 31, 2003, was 11. 3.9. Patent Law Treaty (PLT) The Patent Law Treaty was concluded in 2000. The purpose of the PLT is to harmonize and streamline formal procedures in respect of national and regional patent applications and patents. In 2003, Estonia and Ukraine (2) adhered to the Patent Law Treaty. The total number of contracting states on December 31, 2003, was 7. The Patent Law Treaty will enter into force three months after ten instruments of ratification or accession by states have been deposited with the Director General. 3.10. UPOV Convention (plant varieties) The International Convention for the Protection of New Varieties of Plants (the UPOV Convention) was concluded in 1961. In 2003, Lithuania and Tunisia (2) adhered to the 1991 Act of the UPOV Convention. The total number of contracting states on December 31, 2003, was 54.
3.6. Strasbourg Agreement (IPC) In 2003, Azerbaijan (1) adhered to the Strasbourg Agreement. The total number of contracting states on December 31, 2003, was 54. 3.7. Budapest Treaty The Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes
4. WIPO continues efforts to stamp out cybersquatting Efforts by WIPO to combat the abusive registration of trademarks as domain names, or cybersquatting, made significant headway in 2003 although the problem persists most notably for high-value brands around the world. Since the Uniform Domain Name Dispute Resolution Policy (UDRP) went into effect in December
WIPO news / World Patent Information 26 (2004) 247–251
1999, through 2003, WIPO’s Arbitration and Mediation Center has handled some 6,000 disputes, covering 10,000 domain names. The reduction of cybersquatting is seen as an important element in enabling the Internet to develop as a secure and reliable environment. The fact that over 80 percent of the WIPO expert decisions went in favour of the trademark holder, be it a large multinational corporation or a small or medium-sized business, underlines the bad faith inherent in this practice. In 2003, the Mediation Center received 1,100 UDRP cases––similar to 2002. In addition to famous brands (recent WIPO cases include the domain names pepsi-smash.com, calvinklein-watches.com, rolexgroup.com), celebrities continue to be targeted by cybersquatters. Often their winning cases were based on common law rights in their names rather than on a registered trademark. In 2003, the Center received cases relating to movies, authors and books (jrrtolkien.com, thecatinthehat.com), pop stars (nsyncfilm.com, utadahikaru. com), television shows (oscartv.com, operaciontriunfo.tv), and movie stars (piercebrosnan.com, victoriarowell.com). Sports personalities (terrellowens.com) and sporting events (torino2006.net, madrid2012.org) were also the target of cybersquatters. Companies involved in recent or prospective mergers also fell prey to cybersquatters. The Center has recently dealt with cases involving domain names such as yellowroadway.com, japanairgases.com, konicaminolta. net, astrazenica.com, which were all newly created following recent or predicted mergers. In 2003 the Center dealt with 56 cases involving country code top-level domains (ccTLDs), a 40 percent increase over the previous year. Cases dealt with by the Center have included the domain names bodyshop.as, nutella.bz, amazon.com.cy and yahoo.ph. The Center now provides services for disputes in 36 ccTLDs, including .au (Australia), .mx (Mexico) and .nl (Netherlands). The Center’s experts are frequently called upon to decide cases that involve high-value brands. The WIPO Center so far has resolved cases involving 66 of the 100 largest brands by value, including 7 of the top 10 such brands (Interbrand Brand survey 2003). The Center’s services are multinational and multilingual. So far, parties to WIPO UDRP disputes have come from 116 different countries. In 2003, the Center added three languages (Dutch, Italian and Russian) to the nine case languages it has used to date, namely, Chinese, English, French, German, Japanese, Korean, Norwegian, Portuguese and Spanish. Domain names themselves may also be presented in different scripts, such as Chinese, Cyrillic or Korean. The Center has handled 36 such ‘‘multilingual name’’ disputes so far, with further growth expected.
249
All domain name decisions handled by the Center are fully indexed and published on the Center’s web site (http://arbiter.wipo.int/domains/search/index.html). In addition to its domain name activities, the WIPO Center is increasingly called upon to provide arbitration and mediation services for all types of intellectual property disputes, such as disputes involving patent, trademark or copyright licensing. For this purpose, the WIPO Arbitration and Mediation Center makes available model arbitration and mediation clauses which can be downloaded from its web site at ‘‘http://arbiter.wipo.int/arbitration/contract-clauses/index.html’’.
5. Study takes critical look at benefit sharing of genetic resources and traditional knowledge At a Conference of the Parties to the Convention on Biological Diversity in Kuala Lumpur, Malaysia, WIPO and the United Nations Environment Programme (UNEP) launched two Voluntary ‘‘Access and Benefit Sharing’’ Case Studies from Africa and Asia. These case studies resulted from a joint study commissioned by WIPO and UNEP and carried out by Professor Anil K. Gupta, the founder of the Honeybee Network of community-based grassroots innovators in India. They relate to a medicine, derived from an Indian plant with apparent fatigue-busting properties, and a gene from a wild, West African rice which is being used in the biotech industry, which demonstrate the potential benefits and pitfalls of current benefit sharing agreements. They highlight the shortcomings of a number of existing voluntary agreements and suggest ways that these may be improved to ensure that the real custodians of genetic resources and traditional knowledge on which promising, agricultural discoveries are based have a share in the derived benefits. The study also suggests that there is scope for intellectual property rights, a vital element in the mix of legal tools that create effective benefit-sharing, to be used more effectively to generate and share more equitably both monetary and non-monetary benefits.
6. International patent filings exceed 110,000 for third year running The number of international patent applications filed in 2003 using the PCT exceeded 110,000 for the third consecutive year. Inventors and industry from the United States of America (35.7% of all applications in 2003), Japan (15.2%), Germany (12.7%), United Kingdom (5.5%), France (4.3%) topped the list of biggest users of the system. For the first time in 13 years, Japan ranked second over Germany. Use of the PCT in Japan grew by a record 24% in 2003. The Republic of Korea (15.5%
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growth), and the Netherlands (4% growth) also showed a significant increase in filings. Of the 110,114 applications in 2003, the companies that filed the most international patent applications with the PCT were Philips Electronics N.V. (Netherlands), Siemens (Germany), Matsushita (Japan), Bosch (Germany), Sony (Japan), Nokia (Finland), 3M (USA), Infineon (Germany), BASF (Germany), and Intel (USA). International patent applications received from developing countries in 2003 saw an 11% increase. The list was topped by Republic of Korea with 2,947 applications, followed by China (1.205), India (611), South Africa (376), Singapore (313), Brazil (221) and Mexico (123). Both India and the Republic of Korea saw a double-digit increase in their use of the PCT, experiencing 27.3% and 15.5% increases, respectively. The top ten users of the PCT from developing countries include: LG Electronics (Republic of Korea), Samsung Electronics Co. Ltd. (Republic of Korea), Council of Scientific and Industrial Research (CSIR) (India), Huawei Technologies Co. Ltd (China), Ranbaxy Laboratories Ltd. (India), LG Chem Ltd. (Republic of Korea), Hetero Drugs Ltd (India), CJ Corporation (Republic of Korea), Electronics and Telecommunications Research Institute (Republic of Korea), Young Suk Son (Republic of Korea) and ZTE Corporation (China). In 2003, the Spanish Patent and Trademark Office began its functions as an International Preliminary Examining Authority under the PCT. The National Board of Patents and Registration of Finland was also appointed as International Searching and Preliminary Examining Authority, bringing the number of Authorities to 12. The Finnish office is expected to begin these operations in the course of 2004, as is the Canadian office, which was appointed in 2002.
7. WIPO and ITC publish guide on the role of intellectual property in marketing crafts and visual arts Artisans, craft entrepreneurs and visual artists involved in business can now make use of a practical guide, published by WIPO and International Trade Centre (ITC), on how to successfully manage and market their intellectual property (IP) assets. ‘‘Marketing Crafts and Visual Arts: The Role of Intellectual Property. A practical guide’’ provides advice and draws on success stories to demonstrate the relevance of IP and marketing to the commercial activities of artisans and visual artists. The real challenges for artisans and visual artists in today’s highly competitive and technological driven marketplace are to produce and market winning new products that cater to changing consumer tastes and also to prevent and effectively deal with unfair competition or theft of their ideas. The IP system is the best available tool for deterring unfair competition by cre-
ating and maintaining exclusivity over creative and innovative output in the marketplace. ‘‘Marketing Crafts and Visual Arts: The Role of Intellectual Property. A practical guide’’ is currently available in English more information at www.wipo.int/ ebookshop/ or at www.intracen.org/eshop. Additional language versions will be available in the near future.
8. Steady growth in 2003 for international trademark system WIPO received 23,872 trademark applications in 2003 under the Madrid System for the International Registration of Marks. This represents a 3% increase over 2002. The same year, 21,847 trademark registrations and 6,637 trademark renewals were recorded in the International Trademark Register. Germany topped the list of largest users for the eleventh year running with 4,999 international registrations (22.9%), followed by France (3,281 or 15%), Switzerland (2,204 or 10.1%) and countries of the Benelux––Belgium, Luxembourg, Netherlands (2,104 or 9.6%). The top twenty users of the Madrid System in 2003 were: Henkel (Germany), Novartis (Switzerland), Sanofi (France), Unilever (Netherlands), Janssen Pharmaceutica (Belgium), L’Oreal (France), Nestle (Switzerland), Bayer (Germany), , Siemens (Germany), ITM (France), Boehringer (Germany), Biofarma (France), Philips Electronics (Netherlands), BASF (Germany), Merck (France), Syngenta (Switzerland), Fiat (Italy), Kodak (France) and Bongrain (France) and Migros (Switzerland). By the end of 2003, some 412,000 international trademark registrations, belonging to over 134,000 different trademark holders, were in force in the International Register. Those international registrations represented the equivalent of some 4.9 million national registrations, taking into account that, as an average, each international registration extends its effects to some 12 designated countries. Prospects for growth of the Madrid system are promising owing to recent developments: (a) the United States is now a member of the Madrid Protocol, (b) the European Community’s has declared its intention to join the system this year and (c) the inclusion of Spanish as a working language.
9. The International Design System in 2003 The WIPO-administered International Design System governed by the Hague Agreement concerning the International Registration of Industrial Designs recorded 2,474 new deposits (each deposit can include up to 100 designs) and 3,463 renewals in 2003. The total
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number of industrial designs for which protection was sought under the Hague Agreement in 2003 was 13,512. The top twenty users of the Hague System in 2003 were: Swatch (Switzerland), Interior’s (France), Daimlerchrysler (Germany), Herme`s (France), Unilever (Netherlands), Nokia (Finland), Hansgrohe (Germany), Salomon (France), Volkswagen (Germany), Philips Electronics (Netherlands), Villeroy and Boch (Germany), Rehau (Germany) Henkel (Germany), Stekelenburg (Netherlands), Braun (Germany), Sanford (Germany), Fonkel (Netherlands), Tefal (France), Robert Bosch (Germany) and Siemens (Germany). By the end of 2003, the International Design Register showed some 35,208 deposits in force, which is the equivalent of some 400,000 national deposits. Since the Hague System began operations in 1928, some 2,000,000 designs have been deposited with the International Design Register.
10. Australia case studies on the use of intellectual property by indigenous communities WIPO has published a collection of practical case studies on the use of the intellectual property system by indigenous communities in Australia.
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The publication, entitled, ‘Minding Culture: Case Studies on Intellectual Property and Traditional Cultural Expressions’, was written for WIPO by Ms. Terri Janke, an Australian lawyer and a descendant of the Meriam people of the Torres Strait Islands, Australia. The publication is expected to guide the work of WIPO on how the intellectual property system can respond to the needs and expectations of the custodians of traditional cultures and knowledge. It therefore contributes to a process of exploration, dialogue and policy development aimed at enhancing the protection, promotion and preservation of traditional creativity and expressions of traditional cultures (or ‘expressions of folklore’). Michael Blackman 45 Kenwood Drive Beckenham Kent BR3 6QY, UK E-mail address: [email protected]