The International Association for the Protection of Intellectual Property (hereinafter – AIPPI) was founded in 1897, after the signing of the Paris Convention for the Protection of Industrial Property in 1883. The development of AIPPI has been continuous, during which the organization has become an international association covering Eastern Europe, North, South and Central America, almost all of Asia (including large national groups in China, Japan and South Korea), Australia, New Zealand and most of Africa.
AIPPI consists of 66 national and 2 regional groups. Countries that are not members of any of the groups are members of the organization as an independent member. The total number of AIPPI members is about 9000 people from more than 115 countries. In Ukraine, the regional group was founded in 1995.
Over its long history, AIPPI has adopted more than 700 resolutions and reports. Presentation of these resolutions and reports to international governmental organizations, in particular to the World Intellectual Property Organization (WIPO), has made a significant contribution to the development, improvement and harmonization of the international intellectual property protection system.
Every year, AIPPI holds the World Congress, which brings together representatives from around the world to discuss topical issues in the field of intellectual property. AIPPI World Congress 2024 was held in October in Hangzhou (People’s Republic of China). During the Congress, four resolutions were adopted, which will be described in detail below.
Harmonization of disclosure requirements and consequences of non-compliance
The Resolution on Harmonization of Disclosure Requirements and Consequences of Non-Compliance determines whether and to what extent disclosure should be required during the examination of a patent application and after the grant of a patent, and what sanctions should be imposed for non-compliance.
AIPPI addresses this issue and defines that the term “Disclosure Requirement” as used in the resolution means “the requirement to disclose prior art to the Patent Office”. The term “Prior art” means “all information that has become publicly available anywhere in the world in any form before the filing date of the application or, where applicable, the priority date”.
At the same time, it is emphasized that the applicant or any other person involved in the preparation or examination of a patent application should not be required to disclose any prior art to the patent office, and the applicant is not required to search for prior art.
However, where national law provides for the above requirement, it should be limited to the prior art relied upon by the patent office for the same invention and applied only at the request of the patent office.
Conflicts between trademarks involving indistinguishable elements
This resolution addresses what factors should be considered by courts, tribunals or intellectual property offices in assessing the similarity and likelihood of confusion between trademarks when one or both of them are trademarks that include indistinguishable elements, and what role these indistinguishable elements should play in the assessment.
The AIPPI notes that determining the similarity and likelihood of confusion between allegedly conflicting trademarks is a key issue in trademark enforcement cases.
It is also emphasized that the assessment of similarity and likelihood of confusion between trademarks should be made on a case-by-case basis. It should also take into account the overall impression of the trademark (the “contrast” rule), taking into account the dominant element of each of them (the “dominant element” rule), as well as the distinctiveness of the element(s) and any other factors or circumstances relevant to the particular case.
Protection of parody in copyright
The resolution raises the question of whether third parties can use a work to create a “parody” without the author’s or copyright holder’s permission and under what conditions, and under what conditions. The main purpose of this resolution is to find harmonized principles of parody protection.
The document states that parody is a form of freedom of expression, and also reveals the main features and requirements, in particular
– the parody must be clearly distinguishable from the main work;
– it must contain an element of humor, ridicule or criticism of the main work, its author or other element;
– must meet the three-step test reflected in Article 9(2) of the Berne Convention, which is also included in the TRIPS Agreement (Article 13) and which has also been included in Article 10 of the WIPO Copyright Treaty;
– does not have to meet the minimum level of originality required for copyright protection;
– no need to recognize the copyright holder or author of the work used in the parody (no attribution is required);
– does not require either permission or remuneration from the copyright holder of the main work used in the parody;
– must not mislead the public as to its nature or its author.
Unfounded allegations of intellectual property rights infringement
The Resolution addresses unfounded allegations of intellectual property rights infringement, in particular the types of activities that constitute unfounded allegations of intellectual property rights infringement and the consequences of such unfounded allegations of intellectual property rights infringement.
It should be emphasized that the legislation on unfounded allegations of intellectual property rights infringement should be harmonized to provide a clear and consistent framework across jurisdictions for the relevant parties.
AIPPI emphasizes that the determination of whether an allegation of IPR infringement is unfounded should be based on a fact-based approach that evaluates a combination of objective and subjective criteria.
Factors to be considered include:
– evidence of whether the allegation was made with reasonable grounds and belief that a violation has occurred,
– the motivation of the party making the allegation,
– knowledge of the party making the statement.
It should be emphasized that the burden of proof in cases of unfounded allegations of intellectual property rights infringement lies with the party claiming that the allegation is unfounded.
Thus, the adopted AIPPI resolutions demonstrate the desire to harmonize approaches in the field of intellectual property, providing clearer and more consistent rules for different jurisdictions. They are aimed at balancing the interests of right holders and society, supporting innovation, freedom of expression and fair competition. These decisions emphasize the importance of international cooperation in addressing current challenges in the field of intellectual property rights protection, creating conditions for the development of a global legal system that meets the needs of the modern world.
