OHIM Soon To Be Transformed Into Sort Of IP Enforcement Agency

On May 24, 2011, the EU Commission published Document COM(2011) 288 final (Available via EU Council under Document 10668/11) titled Proposal for a Regulation of the European Parliament and the Council on entrusting the Office for Harmonisation in the Internal Market (Trade Marks and Designs) with certain tasks related to the protection of intellectual property rights, including the assembling of public and private sector representatives as a European Observatory on Counterfeiting and Piracy. In the Commission Document, the background is described as follows:

One of the main initiatives to address this threat launched by the Council and the Commission in 2009 was to set up a European Observatory on Counterfeiting and Piracy to improve understanding on intellectual property rights (IPR) infringements (‘the Observatory’). In line with the Council’s request of 2008, the Observatory in its current form is a centre of expertise with no legal personality managed by the Commission services. Its role is twofold:

(i) becoming the central resource for gathering, monitoring and reporting information and data related to all IPR infringements and

(ii) be used as a platform for cooperation between representatives from national authorities and stakeholders to exchange ideas and expertise on best practices, to develop joint enforcement strategies and to make recommendations to policy-makers. The management of the Observatory encompasses a series of tasks and activities under the responsibility of Commission services.

The Observatory is currently run by three Commission civil servants (two administrators and one assistant) who, in addition also carry out all policy work related to the Observatory.

The latest Council Resolution relating to the Observatory added further responsibilities, by inviting it to assess the needs for implementation of EU-level training programmes for those involved in combating counterfeiting and piracy. A September 2010 European Parliament Resolution additionally called for the Observatory to compile scientific research data on counterfeiting and IPR regulation. Finally, a recently published study commissioned by the Commission’s Directorate General for Trade recommends that the Observatory should become a single point of contact within the Commission, for external parties, and an international point for the creation and dissemination of best practice.

Whereas the current circumstances of the Observatory were appropriate for the launch phase of the project, with its institutional framework being established through consultations and meetings, there is no scope for expanding the Observatory’s remit and developing its operational activities, both of which require a sustainable infrastructure in terms of human resources, financing and IT equipment as well as access to the necessary expertise.

The original language of the Commission proposal suggests to entrust the Office for Harmonisation in the Internal Market (OHIM) with the tasksand activities relating to the management of the European Observatory on Counterfeiting and Piracy, including those concerning copyright, rights related to copyright and patents. According to the proposal these tasks should, in future, encompass: delivering independent data and assessments on the scope and scale of counterfeiting and piracy in the internal market;

• exchanging and promoting best practices in relation to public authorities;
• spreading of best private sector strategies;
• raising public awareness;
• evaluating the need for and designing European training programmes for authorities involved in the protection of intellectual property rights, in cooperation with other international and European institutions and agencies;
• carrying out research on technical tools to prevent counterfeiting and piracy; and
• fostering international cooperation and providing technical assistance to third country authorities.

The original language of the Commission proposal has been debated and the Polish Presidency has, on September 13, 2011, tabled an amended version under Document 14139/11. This version is set to be discussed at the meeting of the Intellectual Property Working Party (Enforcement) on September 22, 2011 (Document CM 4390/11). Various Documents concerning the debate are identifiable but not published (13596/11 – Drafting suggestions by the Hungarian delegation; 13172/11 – Proposals by the German delegation).

According to the latest proposal the Regulation is set to entrust the OHIM with tasks related to the enforcement of intellectual property rights covered by Directive 2004/48/EC on the enforcement of intellectual property rights, notably to facilitate and support the activities of national authorities, private industry and the EU institutions. In carrying out these tasks the Office shall regularly invite experts, authorities and stakeholders which will assemble under the name “European Observatory on Counterfeiting and Piracy” (“the Observatory”). In fulfilling these objectives the OHIM shall have the following tasks:

• improving the understanding on the scope and impact of infringements of intellectual property rights ;
• improving the understanding of the value of intellectual property;
• enhancing knowledge on best public and private sector practices to protect intellectual property rights;
• raising citizens’ awareness of the impact of infringements of intellectual property rights;
• enhancing the expertise of persons involved in the enforcement of intellectual property rights;
• enhancing knowledge on technical tools to prevent and combat counterfeiting and piracy, including tracking and tracing systems;
• improving online exchange, between Member States’ authorities involved in the enforcement of intellectual property rights, of information related to the enforcement of such rights, and fostering cooperation with and between the central industrial property offices of the Member States, including the Benelux Office for Intellectual Property; and
• working with Member States to foster international cooperation with intellectual property offices in third countries to build strategies and developing techniques for the enforcement of intellectual property rights, skills and tools.

In the fulfilment of these tasks set out above, the OHIM shall carry out the following activities in line with European Union law, including on data protection:

• establishing a methodology for the collection, analysis and reporting of independent, objective, comparable and reliable data related to infringements of intellectual property rights;
• collecting, analysing and disseminating relevant objective, comparable and reliable data regarding infringements of intellectual property rights;
• collecting, analysing and disseminating relevant objective, comparable and reliable data regarding the economic value of intellectual property and its contribution to economic growth, welfare, innovation, creativity, cultural diversity, the creation of high quality jobs and the development of high quality products and services within the Union;
• providing regular assessments and specific reports by economic sector, geographic area and type of intellectual property right infringed, which evaluate, inter alia, the impact of intellectual property rights infringements on society, economy, health, environment, safety and security, and – in cooperation with appropriate European, national and international authorities – the relation of such infringements with organized crime and terrorism;
• collecting, analysing and disseminating information regarding best practices between the representatives meeting as the Observatory, and making recommendations for strategies based on such practices;
• drawing up reports and publications to raise awareness among the Union’s citizens of the impact of infringements of intellectual property rights, and to this end, organising conferences, events and meetings at European and international levels and supporting national actions, including online and offline campaigns;
• developing and organising on-line and other forms of training for national officials involved in the protection of intellectual property rights;
• organising ad hoc meetings of experts to support its work under this Regulation;
• identifying and promoting technical tools for professionals and benchmark techniques, including tracking and tracing systems which help to distinguish genuine from counterfeit products;
• working with national authorities and the Commission to develop an on-line network to exchange information between public administrations, bodies and organisations in the Member States dealing with the protection and enforcement of intellectual property rights, related to infringements of such rights ;
• working in cooperation with, and building synergies between the central industrial property offices of the Member States, including the Benelux Office for Intellectual Property, and developing and promoting techniques, skills and tools related to the enforcement of intellectual property rights, including training programmes and awareness campaigns;
• developing programmes on technical assistance for third countries as well as developing and delivering specific training programmes and events for officials from third countries involved in the protection of intellectual property rights;
• making recommendations to the Commission on issues falling within the scope of this Regulation, on the basis of a request from the Commission;
• carrying out similar activities necessary for the Office to fulfil the tasks set out in paragraph 1.

In order to carry out these activities OHIM shall invite, at least once per year, not only representatives from public administrations, bodies and organisations dealing with the enforcement of intellectual property rights but also representatives from the private sector to meetings of the Observatory. Representatives meeting as the Observatory invited from the private sector shall include a broad and representative range of Union and national bodies representing the different economic sectors most concerned by or most experienced in the fight against infringements of intellectual property rights. Consumer organisations and small and medium sized enterprises shall be properly represented amongst these bodies. Invitations to be issued to representatives of the Civil Society (NGOs) which are not Consumer organisations are not mentioned in the Draft text.

The names of the representatives, the agenda and the minutes of the meetings are to be published on the OHIM website. Maybe in practice this means that the deliberations as such are to be kept secret contrary to all promises of EU bodies in view of transparency.

The Draft is silent about the influence of the Observatory and its meetings on the Digital Realm (Internet). However, for sure this institution will play a significant role in defining and promoting IP enforcement policies affecting the Internet. Recital 18 calls Internet service providers to participate in the Observatory. This might be seen as a further step to draw ISPs into tasks of policing the Internet on behalf of the right holders.