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ASSOCIATION INTERNATIONALE POUR LA PROTECTION DE LA PROPRIETE INTELLECTUELLE

INTERNATIONAL ASSOCIATION FOR THE PROTECTION OF INTELLECTUAL PROPERTY

A I P P I EESTI

Lp kultuuriminister Pr Heidy Purga Kultuuriministeerium Suur-Karja 23 15076 Tallinn

16. oktoober 2025. a. AIPPI soovitused intellektuaalomandi õiguskaitse valdkonnas

Austatud kultuuriminister pr Heidy Purga Intellektuaalomandi Kaitse Rahvusvaheline Assotsiatsioon (International Association for the Protection of Intellectual Property, lühidalt AIPPI) on rahvusvaheline organisatsioon, mis on pühendunud intellektuaalomandi õiguskaitse arendamisele ja parendamisele, uurides olemasolevaid siseriiklikke seadusi ning tehes ettepanekuid nende seaduste ühtlustamiseks rahvusvaheliselt tasandil. AIPPI-l on umbes 8000 liiget üle maailma enam kui 110 riigist, sh Eestist. AIPPI Eesti Rahvuslik Töörühm on tegev alates 1992. aastast. Iga-aastaselt korraldab AIPPI maailmakongressi, millel on tavaliselt umbes 2000 osavõtjat. AIPPI 2025 maailmakongress toimus 13.-16. septembril Jaapanis, Yokohamas, mille käigus võeti vastu neli resolutsiooni erinevatel intellektuaalomandit puudutavatel teemadel, sh tööstusomandiõiguse valdkonnas. AIPPI peasekretariaadi ülesandel edastame käesolevaga AIPPI resolutsioonid järgnevatel teemadel:

 Compulsory licensing (Sundlitsentsimine)  Exhaustion of trade mark rights (Kaubamärgiõiguste ammendumine)  AI & copyright (Tehisintellekt ja autoriõigus)  Preliminary Injunctions: Requirements for compensating damage suffered by Defendant

(Esialgsed kohtuotsused: nõuded kostja poolt tekitatud kahju hüvitamiseks) Osundatud resolutsioonide alusmaterjalid (Study Guidelines, Summary reports and Group Reports) on täiendavaks tutvumiseks kättesaadavad AIPPI veebilehel aadressil https://aippi.soutron.net/Portal/Default/en-GB/SearchResults Lisad: Vastu võetud resolutsioonid.

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Lugupidamisega (allkirjastatud digitaalselt) (allkirjastatud digitaalselt) Urmas Kauler Cady Kaisa Rivera AIPPI Eesti Rahvusliku Töörühma juhataja sekretär Cc: Peaminister Justiits- ja digiminister Majandus- ja tööstusminister Patendiameti peadirektor

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2025 AIPPI World Congress – Yokohama Adopted Resolution 16 September 2025

Resolution

2025 – Study Question - Patents

Compulsory licensing

Background:

1) For the purposes of this Resolution, "compulsory licensing” refers to governmental or court (granting authority) authorization for use of a patented invention without the consent of the patentee.

2) For the purpose of this resolution, the term patentee includes patent applicants, utility

model holders, and SPC holders where relevant. 3) The focus of the present resolution is on compulsory licenses granted based on a

specific overriding interest and not solely based on dependency of patents or lack of working of an invention in the absence of an overriding interest. It is acknowledged that compulsory licensing includes different regimes in which granting authorities override patent rights so that governments can practice a patented invention without the consent of the rights holder. For example, crown licenses and government use allow the government to practice patent rights. Each may have its own requirements and restrictions.

4) The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS

Agreement), which has been agreed to by all WTO members, offers a recognized framework for exceptions to rights conferred (Article 30) and for other use without authorization of the right holder (Articles 31 and 31bis). However, compulsory licensing regimes implemented under Articles 31 and 31bis differ significantly across jurisdictions. There are variations among countries in granting and enforcing compulsory licenses, remuneration, and procedural requirements for obtaining compulsory licenses.

5) Greater recognition of a standardized global framework would enhance predictability

and fairness.

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6) The TRIPS Agreement requires that the party seeking a compulsory license must first

try to obtain authorized use from the rights holder on reasonable terms, although this requirement may be waived during a national emergency.

7) 38 Reports were received from AIPPI’s National and Regional Groups and Independent

Members providing detailed information and analysis regarding national and regional laws relating to this Resolution. These Reports were reviewed by the Reporter General Team of AIPPI and distilled into a Summary Report (which can be found at www.aippi.org).

8) At the AIPPI World Congress in Yokohama in 2025, the subject matter of this Resolution

was further discussed within a dedicated Study Committee, and again in a full Plenary Session, following which the present Resolution was adopted by the Executive Committee of AIPPI.

AIPPI resolves that: 1) The provisions of the TRIPS Agreement regarding compulsory licenses under Article 31

and 31bis remain of the utmost importance and should be used as the framework within which this resolution is to be applied. In particular, the rights of patentees under the TRIPS Agreement should be ensured.

2) There is a need for a harmonized framework for application of Articles 31 and 31bis of

the TRIPS Agreement to enhance legal certainty and predictability. However, each compulsory license should be independently evaluated by the granting authority prior to grant on a case-by-case basis, based on the facts, to determine whether the criteria to grant a compulsory license are met.

3) Compulsory licensing should be seen as an exceptional measure, only to be used in

a case of specific Overriding Interests. The term "Overriding Interest", as used in this resolution, should be understood as situations where public interests - rather than private interests - are at stake, such as national or regional emergency or other circumstances of extreme urgency. There is no need to distinguish between different technical fields when considering Overriding Interests.

4) Further factors to be considered in an application for a compulsory license should

include the public interest in providing access to an invention during the period of the Overriding Interest and whether the granting of the compulsory license is reasonably necessary to address the Overriding Interest. For example, the party to whom the license is granted must have the ability and capacity to provide adequate supply in order to meet the Overriding Interest.

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5) Granting authorities should further weigh the potential impact on innovation and investment, along with the patentee’s rights, against the Overriding Interest justifying the compulsory license.

6) Compulsory licenses should only be available for patents and for patent applications

for which an injunction is available prior to grant. Compulsory licenses should extend to all forms of extensions of patent terms, including Patent Term Extensions (PTEs) and Supplementary Protection Certificates (SPCs), and should also be available for utility models.

7) Compulsory licenses should always be non-exclusive and generally non- transferable. The scope of a compulsory license should be clearly defined, e.g., with respect to duration (i.e., existence of the Overriding Interest), territory, products/processes/technologies, quantities, and specific uses of the patented invention.

8) Compulsory licensing should only be applicable to the territory where the compulsory

license is granted, without prejudice to the specific cross-border mechanism allowed under Article 31bis of the TRIPS Agreement.

9) The applicant for the compulsory license has the burden of proof of establishing that

the conditions for the grant of a compulsory license are met. 10) Prior to applying for - or in the case of government use granting - a compulsory

license, there should be a requirement for good faith efforts by the applicant or, where relevant, the government over a reasonable period of time to obtain a voluntary license on reasonable commercial terms and conditions.

11) The patentee should be informed and be given an opportunity to be heard by the

granting authority, prior to the granting of a compulsory license. 12) The patentee has a right to reasonable compensation. No cap to the compensation

to which the patentee is entitled should be set by law. The compensation should be determined by the granting authority on a case-by-case basis considering all relevant factors (e.g., the patent's value, average royalty rates in the industry, and compensation for loss of exclusivity), under the understanding that compensation due under a compulsory license for a patent application would be contingent upon the application coming to grant. The compensation should be subject to review by the granting authority to ensure it remains appropriate throughout the duration of the compulsory license.

13) A compulsory license should be wholly or partially terminable by a competent

authority (which may or may not be the same as the granting authority) on its own

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motion or on the request of the patentee in the case of breach of the terms of the compulsory license (including non-payment of licensing fees). Damages should be available to compensate the patentee in the case of breach of the terms of the compulsory license, and fines may also be imposed on the breaching party.

14) The compulsory license should be terminated when the Overriding Interest has

ceased to exist. 15) The patentee should have the right to audit the use under, and compliance with, the

terms of the compulsory license. The compulsory licensee should be required to provide the patentee with periodic reporting of the use under the license with sufficient information to enable the patentee to audit the use under, and compliance with, the terms of the compulsory license. The granting authority may ensure that both the reporting and the auditing processes are conducted in accordance with the principles of confidentiality and impartiality.

16) Compulsory licensing applies only to patent rights as defined in paragraph 6. The

patentee should not be required to provide to the compulsory licensee any trade secrets, confidential information, other secret know-how, or technical assistance in connection with the compulsory license.

Q294-RES-TM-2025

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2025 AIPPI World Congress – Yokohama Adopted Resolution 16 September 2025

Resolution

2025 – Study Question – TM

Exhaustion of trade mark rights

Background:

1) This Resolution concerns several key aspects related to the exhaustion of trade mark rights understood in some jurisdictions as “putting goods on the relevant market” and in other jurisdictions as the "first sale doctrine”. The exhaustion of trade mark rights under both foregoing concepts will be jointly referred to as “exhaustion of trade mark rights” in this Resolution.

2) According to the exhaustion of trade mark rights, a trade mark shall in

principle not entitle the trade mark holder to prohibit its use in relation to goods which have been put on the relevant market, including first sale, under that trade mark by the trade mark holder or with their consent.

3) This Resolution does not address specific issues related to the parallel import

of regulated products, issues related to unregistered marks and trade mark exhaustion in the Metaverse, freedom of expression, which are outside the scope of the Resolution.

4) 43 Reports were received from AIPPI’s National and Regional Groups and

Independent Members providing detailed information and analysis regarding national and regional laws relating to this Resolution. These Reports were reviewed by the Reporter General Team of AIPPI and distilled into a Summary Report (which can be found at www.aippi.org).

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5) At the AIPPI World Congress in Yokohama in 2025, the subject matter of this Resolution was further discussed within a dedicated Study Committee, and again in a full Plenary Session, following which the present Resolution was adopted by the Executive Committee of AIPPI.

AIPPI resolves that:

1) There should be harmonisation in relation to issues regarding exhaustion of trade mark rights, as set out in this Resolution.

2) The legal regulation and legal practice on exhaustion of trade mark rights shall ensure a balance between the legitimate interests of trade mark holders and the principles of market integration and consumer protection.

3) The transfer of ownership of the goods shall cause exhaustion of trade mark

rights in the relevant territory in the event that goods are put into the market, including first sale, in that territory with the consent of the trade mark holder. Thus, exhaustion of trade mark rights shall be caused by any transaction that results in the transfer of ownership of the goods concerned.

4) Exhaustion shall occur where the trade mark holder authorized the putting

of the goods on the market, including first sale, subject to the following: a. the goods must be put into the market in the territory concerned

either by the trade mark holder or with their consent, whether expressed or implied;

b. while consent may be implied, it cannot be presumed e.g. silence shall not be regarded as sufficient to establish consent;

c. the consent may also be expressed a posteriori, i.e. after the goods have been put on the market in the territory concerned.

5) Contractual agreements or practises seeking to exclude or limit trade mark

exhaustion should not override the principle of exhaustion.

6) The following reasons shall each be deemed a legitimate reason for prohibiting the use of a trade mark in relation to goods that would otherwise be subject to exhaustion of trade mark rights: a) alteration or impairment of goods; b) harm to brand reputation; c) risk of consumer confusion;

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d) deceptive marketing practises; e) repackaging without notice; f) defects in goods.

In case of any of the reasons listed above, and provided that a trade mark function is being impaired, a trade mark holder may in particular have the right to oppose the refurbishment, disassembly, refilling, debranding, rebranding, cobranding and subsequent resale of trade marked goods that would otherwise be subject to exhaustion of trade mark right.

7) The party invoking trade mark exhaustion should bear the burden of proof. However, the burden of proof may shift in specific circumstances, such as when the evidence lies primarily within the control of the trade mark holder or where the risk of market partitioning is substantial.

8) Sustainability considerations should not in principle override trade mark rights.

9) Once the ownership of a trade marked product has been transferred and

the trade mark rights have been exhausted, customers should remain free to request from a third party the alteration of their own property based on green and sustainability considerations, provided there is no further commercial exploitation.

10) In principle, business models that involve commercialization of altered trade marked products, should not be allowed. However, under certain exceptional circumstances, alterations — including practices such as recycling or upcycling — may be allowed, when carried out for sustainability reasons provided that the following (non-exhaustive) conditions are met: a) there is no risk of misleading consumers (including post-sale) as to

the origin of the altered product, including any risk of misrepresentation suggesting that the altered product is associated with or endorsed by the trademark owner;

b) the alteration does not involve any exploitation of or harm to the trade mark’s image or its reputation.

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c) any commercial act involving an altered product must clearly inform the consumer of the alteration, in order to ensure transparency and protect consumer interests.

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2025 AIPPI World Congress – Yokohama Adopted Resolution 16 September 2025

Resolution

2025 – Study Question -Copyright

AI & Copyright

Background: 1) This Resolution concerns the use of copyrighted materials to train artificial

intelligence (AI) Systems, and whether such use, the output generated by the AI Systems, or the AI Systems themselves, may be considered to be an infringement of the copyrighted materials.

2) The term “AI System” generally means a machine-based system (AI, GENAI,

etc.) that uses a trained model trained on input training data to generate outputs, such as new content. An AI System may operate with varying levels of autonomy and may exhibit adaptiveness after deployment. Unless context indicates otherwise, a reference to “AI System” in this Resolution is to be understood as encompassing both a trained AI system and a trained model used by or to be used by an AI system.

3) On the one hand, large-scale datasets—including copyrighted texts, images,

and audio—are essential for training AI Systems that can process and generate human-like content. On the other hand, creators and copyright holders raise concerns about the unauthorised use of their copyrighted material, asserting that such training infringes their intellectual property rights, especially when the AI Systems replicates or closely mimics original works.

4) This Resolution sets forth if, and to what extent, legal frameworks should be

developed to manage the use of copyrighted materials in training sets for AI Systems.

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5) 39 Reports were received from AIPPI’s National and Regional Groups and Independent Members providing detailed information and analysis regarding national and regional laws relating to this Resolution. These Reports were reviewed by the Reporter General Team of AIPPI and distilled into a Summary Report (which can be found at www.aippi.org).

6) At the AIPPI World Congress in Yokohama in 2025, the subject matter of this

Resolution was further discussed within a dedicated Study Committee, and again in a full Plenary Session, following which the present Resolution was adopted by the Executive Committee of AIPPI.

AIPPI resolves that: 1) Harmonisation on the issue of (1) use of copyrighted material in the training

of an AI System and (2) the implications on whether the AI System itself and/or the output of the AI System can be considered an infringement is desirable.

Training of an AI System 2) The use of a copyrighted work to train an AI System should require the prior

authorisation from the copyright holder, unless such use is covered by one or more of the following exceptions.

Exceptions 3) The use of a copyrighted work to train an AI System should be subject to the

same exceptions, whether or not for commercial purposes, that apply to other uses of copyrighted works under the laws of the relevant jurisdiction, if the conditions to benefit from the exceptions are met.

4) The use of a copyrighted work to train an AI System should be permissible

under a specific exception to copyright infringement when this is not-for- profit and for the sole purpose of the public interest, such as, for example, non- commercial scientific research or education. This exception does not extend to commercially exploiting the trained AI System and/or the training data set.

5) If the laws of the relevant jurisdiction permit the use of copyrighted works to

train an AI System for commercial purposes without the prior authorisation of the copyright holders, then the copyright holders should have the right to opt

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out of such use of their works and, where the copyright holders do not exercise their opt out rights, provisions should be made to provide for financial compensation to the copyright holders whose works have been used to train an AI System that is exploited commercially.

6) Any exception allowing the use of a copyrighted work to train an AI System should comply with the three-step test provided by Article 9(2) of the Berne Convention.

Transparency 7) The provider of an AI System or person/entity that trains an AI System must:

a) provide adequate information regarding the copyrighted works used in

the training of the AI System to enable copyright holders to identify the use of their works and exercise or enforce their rights; and

b) identify any copyrighted materials input by a user to the AI System and used by the AI System for training.

Outputs of an AI System 8) The rules of an applicable jurisdiction to determine copyright infringement

should also apply to output from a trained AI System. 9) On the basis of the moral rights laws of an applicable jurisdiction, an author

should have the right to object in that jurisdiction to an output of an AI System that constitutes a mutilation, distortion or other derogatory action in relation to the work that would be prejudicial to the author's honour or reputation.

10) An AI System output should not constitute copyright infringement for the sole

reason that it is in the same style as a copyrighted work used to train an AI System.

11) An AI System output should not constitute infringement of copyright in a work for the sole reason that training the AI System has infringed copyright in that work.

12) In circumstances where use of a copyrighted work to train an AI System is

covered by an exception or is authorised by the copyright holder, in order to

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determine whether outputs of that AI System infringe the copyrighted work, one should take into consideration the scope of the exception or authorisation. If the exception or authorisation is limited to allowing the training of the AI System, the output may still be considered an infringement. If the exception or authorisation also covers outputs created by the AI System, the output should not constitute an infringement.

13) An AI System itself should be considered an infringing article, where a) more

than a de minimis amount of the training of the AI System was conducted with copyrighted materials used unlawfully or b) where the AI System has been developed specifically to create infringing outputs.

Persons/entities liable for output infringements 14) If an output is found to infringe copyright, depending on the circumstances of

the case, one or more of the following persons/entities should be held liable for the infringement:

a) a provider of the AI System, i.e. the person/entity that develops the AI System and/or places it on the market;

b) a person/entity that commercially exploits the AI System; and c) a person/entity that uses the AI System with the aim of and creating

infringing outputs, e.g. by using detailed and deliberate prompting. Sanctions/remedies 15) If copyright in a work has been infringed by training an AI System, the

copyright holder should be entitled to remedies that should include one or more of damages, injunctive relief, recall from commercial channels and destruction.

16) If copyright in a work has been infringed by an output, the copyright holder

should be entitled to remedies that should include one or more of damages, injunctive relief, recall from commercial channels and destruction of the infringing outputs.

17) If an AI System itself constitutes an infringing article, then the copyright holder

should be entitled to remedies that should include one or more of damages,

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injunctive relief, recall from commercial channels and destruction of the AI System.

18) An award of damages and/or an assessment or account of profits should be

available to compensate the copyright holder for damages caused by the copyright infringement and the bypassing of the copyright holders' consent.

19) All sanctions and remedies should be available, imposed and proportionate

on a case-by-case basis to effectively deter copyright infringement and adequately compensate the copyright owners.

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2025 AIPPI World Congress – Yokohama Adopted Resolution 16 September 2025

Resolution

2025 – Study Question – General

Preliminary Injunctions: Requirements for compensating damage

suffered by Defendant

Background:

1) This Resolution concerns the existence, nature, and extent of the applicant’s (usually the plaintiff’s) liability for compensating damages suffered by an enjoined party (usually the defendant) in the case where a Preliminary Injunction (“PI”) requested by the applicant is granted but the PI is ultimately determined to have been wrongfully granted.

2) The resolution also addresses the standards and requirements for a court or

other relevant authority to set a sufficient bond, security, or undertaking (a “guarantee” in whatever form would be generally acceptable in the relevant jurisdiction) to compensate a defendant, if needed.

3) The Resolution only addresses compensation related to civil (private) law

issues and does not concern compensation and liability associated with criminal law issues. The Resolution does not address ethical issues or remedies/consequences that may follow from the submission of, for example, knowingly false testimony or evidence. This Resolution does not address any possible liability relating to third parties to a dispute.

4) 43 Reports were received from AIPPI’s National and Regional Groups and

Independent Members providing detailed information and analysis regarding national and regional laws relating to this Resolution. These

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Reports were reviewed by the Reporter General Team of AIPPI and distilled into a Summary Report (which can be found at www.aippi.org).

5) At the AIPPI World Congress in Yokohama in 2025, the subject matter of this

Resolution was further discussed within a dedicated Study Committee, and again in a full Plenary Session, following which the present Resolution was adopted by the Executive Committee of AIPPI.

AIPPI resolves that:

1) The applicant for a PI should be held liable for the enjoined party’s damages if a PI is later determined to have been wrongfully granted, irrespective of proof of negligence, recklessness, or intent to harm.

2) The award of damages should not be automatic, but the wrongfully enjoined party must actively request the court or relevant authority to address the question of the applicant’s monetary liability.

3) The monetary liability of the applicant should arise from the wrongful issuance and, where applicable, enforcement of a PI, irrespective of whether the wrongful grant is due to non-infringement, invalidity, or another basis rendering the PI wrongful.

4) Holding a valid IP right and reasonably exercising it should not provide an exemption or safe harbour from liability if a PI is later lifted or reversed.

5) The damage suffered by the enjoined party should be the predominant factor in determining the amount of applicant’s monetary liability. Courts or relevant authorities should take into account all of the relevant circumstances of the case when determining the amount of monetary liability.

6) The damages awarded by the court or relevant authority should be causally related to the wrongful issuance of the PI.

7) However, in the calculation of damages, the court or relevant authority should take into account the enjoined party’s conduct, such as the enjoined party’s failure to mitigate avoidable damages.

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8) The damage award should be based upon the actual damages, including lost profits sustained by the enjoined party, and legal costs if legal costs generally are compensated in the relevant jurisdiction.

9) Applicant may be required at the discretion of the court or relevant authority to provide an adequate guarantee at the time of issuance or enforcement of a PI.

10) When determining the amount of the guarantee, the key consideration for the court or relevant authority should be the potential harm likely to be suffered by the enjoined party if the PI is later determined to have been wrongfully granted.

11) The amount of the guarantee should be determined by the court or relevant authority on a case-by-case basis.