Summary of the Anti-Counterfeiting Trade Agreement (ACTA)

McCarthy Tétrault LLP / mccarthy.ca

Summary of the Anti-Counterfeiting Trade Agreement (ACTA)

Barry B. SookmanDirect Line: (416) 601-7949E-Mail: [email protected]


Background

¬ The main objective of ACTA is to establish new global standards for the enforcement of intellectual property rights (IPRs) and provide for increased global cooperation to address counterfeiting and piracy.

¬ These problems are global and requite global solutions. ¬ Over $200 billion annually (approx 2% of world trade)

involves counterfeit or pirated goods. ¬ This global problem contributes to public health and

safety risks and a significant portion of this trade is carried out by organized crime.


Background

¬ The idea for the establishment of a new international treaty on IPR enforcement first came from Japan.

¬ It raised the issue several times at the Global Congress on Combating Counterfeiting (GCCC). In the Lyon Declaration from the 2005 Congress, and in the 2006 follow-up, the Congress recommended consideration of Japan’s suggestion to develop an international treaty on IPR enforcement.

¬ Japan then raised the concept of a plurilateral Anti-Counterfeiting Trade Agreement (ACTA) at the 2005 Gleneagles G8 Summit.

¬ Building on GCCC and G8 recommendations, the focus in the proposed ACTA is on international cooperation, enforcement and legislation

¬ Plans were announced to negotiate ACTA in October 2007. After 11 rounds of negotiations on October 6, 2010 the Parties released a near final text of the draft treaty. (Draft at http://ow.ly/2Pl67)

¬ Some issues are still open and are being finalized.


Recitals show international consensus ¬ Noting, that effective enforcement of intellectual property rights is

critical to sustaining economic growth across all industries and globally;¬ Further Noting that the proliferation of counterfeit and pirated goods as

well as the proliferation of services that distribute infringing material, undermines legitimate trade and the sustainable development of the world economy, causes significant financial losses for right holders and for legitimate businesses, and in some cases, provides a source of revenue for organized crime and otherwise poses risks to the public;

¬ Desiring to combat such proliferation through enhanced international cooperation and through more effective international enforcement;

¬ Intending to provide effective and appropriate means, complementing the TRIPS Agreement, for the enforcement of intellectual property rights, taking into account differences in their respective legal systems and practices;


Recitals show international consensus

¬ Desiring to ensure that measures and procedures to enforce intellectual property rights do not themselves become barriers to legitimate trade;

¬ Desiring to address the problem of infringement of intellectual property rights, including that which takes place in the digital environment, and with respect to copyright or related rights in particular in a manner that balances the rights and interests of the relevant right holders, service providers and users;

¬ Desiring to promote cooperation between service providers and rights holders with respect to relevant infringements in the digital environment;

¬ Desiring that ACTA operate in a manner mutually supportive of international enforcement work and cooperation conducted within relevant international organizations;


Overview

¬ The treaty contains six chapters:¬ Initial Provisions and Definitions¬ Legal Framework for Enforcement of

Intellectual Property Rights¬ Enforcement Practices¬ International Cooperation¬ Institutional Arrangements¬ Final Provisions


Highlights

¬ Article 2(1) creates general obligations with respect to enforcement. The Parties must ensure that enforcement procedures are available under the law so as to permit effective action against any active infringement of intellectual property rights covered by the Agreement including expeditious remedies to prevent infringements and remedies which constitute a deterrent to further infringements.

¬ Article 2(2) – There are extensive provisions dealing with civil enforcement that ensure the availability of civil remedies, injunctive relief and damages.

¬ Article 2.3(2) Requires each Party to provide that its judicial authorities have the authority to order tools used in producing counterfeit or pirate goods to be destroyed or disposed of outside the channels of commerce in such a manner as to minimize the risks of further infringement.

¬ Article 2(3) A very important aspect of ACTA are its provisions which deal with border measures. ACTA would require, among other things, providing border authorities with ex officio powers to detain or suspend the release of suspect goods.

¬ Article 2(4) Contains significant requirements to establish criminal sanctions, remedies, and penalties for counterfeiting and piracy on a commercial scale and measures to enable seizure, forfeiture, and destruction of counterfeit and pirate goods.


Highlights –IP in the Digital Environment

¬ This part of the draft treaty was subject to substantial scrutiny and was changed during the negotiations.

¬ Article 2.18(1) requires that: “Each Party shall ensure that enforcement procedures…are available under its law so as to permit effective action against an act of intellectual property rights infringement which takes place in the digital environment, including expeditious remedies to prevent infringement and remedies which constitute a deterrent to further infringement.”

¬ Article 2.18(2) requires each Party’s enforcement procedures to apply to infringement of copyright over digital networks.

¬ Article 2.18(3) requires each Party to “endeavor to promote cooperative efforts within the business community to effectively address at least trademark and copyright or related rights infringement while preserving legitimate competition and consistent with each Party’s law, preserving fundamental principles such as freedom of expression, fair process, and privacy.”


Highlights –IP in the Digital Environment

¬ ACTA requires Parties to provide adequate legal protection and effective legal remedies against the circumvention of effective technological measures (TPMs). The main obligations in Article 2.18(5) are modelled after the wording in the WIPO Internet treaties.

¬ ACTA would go further than the Internet Treaties by prescribing specific forms of protection that must also be given to TPMs. These include protection of access control and copy control TPMs, protection against the trafficking in TPM tools, and protection against providing TPM circumvention services.

¬ ACTA also would also require protection of rights management information.


Highlights – Enforcement Practices

¬ Article 3.1 requires parties to create specialized bodies to deal with enforcement of IP rights, promote the collection of data concerning IP infringement and enforcement and promote cooperation amongst enforcement bodies.

¬ Article 3.1(2): “Each Party shall promote collection and analysis of statistical data and other relevant information… to prevent and combat infringement”.

¬ Article 3.2 requires consultation with relevant stakeholders to address border enforcement and cooperation amongst authorities to improve border enforcement (including notifying exporting country).

¬ ACTA also requires parties to promote transparency and public awareness of IP enforcement, and take into account environmental consideration in the destruction of infringing counterfeit goods.


Highlights – International Cooperation

¬ ACTA emphasizes the importance of international cooperation in IP enforcement.

¬ The treaty promotes broad cooperation among countries, at all levels, including with criminal enforcement and border measures.

¬ Article 4.1(3): “cooperation…shall be consistent with relevant international agreements as well as subject to the domestic laws, policies, resource allocation and law enforcement priorities of the Parties”.

¬ Countries must also endeavor to exchange information concerning both statistical data on IP enforcement and also information on legislative and regulatory measures related to IP enforcement.

¬ Countries must also generally assist each other in implementing ACTA, including technical assistance with public awareness, legislative reform, enforcement training and coordination.


Highlights – Institutional Arrangements

¬ Article 5 of ACTA would create an “ACTA Committee” which will review the implementation of the treaty, consider amendments, and other matters.

¬ The ACTA Committee will make recommendations to countries regarding implementing the treaty and work with NGOs and other stakeholders on issues concerning piracy and counterfeiting.

¬ Article 5.1(7): “The Committee shall not oversee or supervise…investigations of specific IP cases”.

¬ Article 5.2: Each country will appoint an official contact point for all ACTA-related matters.


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Documents

Summary of the Anti-Counterfeiting Trade Agreement (ACTA)