Next Year’s Study Questions – An Intro

The Study Questions for next year’s Congress in Istanbul are Doctrine of Equivalents, Proving Trade Mark Use, Collecting Societies and Responsibility of Online Marketplaces for Online Infringement. Details were discussed in an introductory session on Saturday.

The patent focused Study Question will examine the best approach to equivalents in patent law, taking into account recent developments in case law. It will among others study what the correct test should be to assess if there is equivalent infringement, what factor legal certainty for third parties should play and whether better and more comprehensive claim drafting is a way to eliminate or reduce the need to run equivalents arguments (e.g. by listing all equivalents where desired in the claim).

The trade mark Study Question will revisit the issue of genuine use, which essentially means that a registered trade mark requires a certain use to maintain its protection. Although aspects of the use requirement have been studied before by AIPPI, both its high practical relevance as well as the fact that certain issues have not (or not in sufficient detail) been addressed recently, have led to this Study Question. For example, one may wonder if current laws provide too high bars for the amount of evidence to be submitted and also whether more concrete guidelines or rules can be developed and harmonized. The importance of the topic is illustrated by the fact that the programme of this year’s congress also features a Panel Session on the topic: “Proving use across jurisdictions – a monumental task“, which was moderated by Karen Abraham from Malaysia.

The third Study Question will consider collecting societies. Collecting societies manage and license copyrighted works on behalf of copyright owners to users such as broadcasters, digital service providers, public performance venues and individuals. This Study Question will consider the legal position and regulation of collecting societies, focusing on issues such as accountability and transparency, governance and supervision, and the principles and processes for the setting of rates and the distribution of revenues. While AIPPI has had many study questions over the years focused on specific copyright topics, collecting societies have never been a subject that has been studied for possible harmonization opportunities.

Lastly, the fourth Study Question concerns the responsibility of online marketplaces for online infringement. An online marketplace is a type of e-commerce website that connects buyers and multiple third-party sellers. In an online marketplace, consumer/buyer transactions are typically processed by the marketplace operator and then delivered and fulfilled by the sellers. The objective of this Study Question is among others to study whether online marketplaces should be subject to the general regime for IP infringement, or whether it is desirable to create a special liability/responsibility regime. For attendees interested in this topic, the programme this year also included the Panel Session “Online Marketplaces: Best Practices in Trademarks, Copyrights, and Designs“, moderated by Sophie Lens from Belgium.

Anne Marie Verschuur, Reporter General of AIPPI, says: “this is another great line-up of Study Questions that well represents the broad spectrum of IP covered by AIPPI. I am already looking forward to discussing the proposed resolutions in Istanbul in 2023!“.