[Ip-health] Intellectual Property Watch: US Rightsholders Seek Narrower Scope Of ACTA, Clarity On Trademark Infringement Vs. Counterfeiting

Thiru Balasubramaniam thiru at keionline.org
Mon Jul 12 07:24:07 PDT 2010

Intellectual Property Watch
10 July 2010

US Rightsholders Seek Narrower Scope Of ACTA, Clarity On Trademark  
Infringement Vs. Counterfeiting	  By Monika Ermert for Intellectual  
Property Watch @ 11:09 pm
Many of the 11 negotiating partners of the Anti-Counterfeiting Trade  
Agreement (ACTA) for years have underlined that the new anti- 
counterfeiting and anti-piracy agreement will not change their  
national laws, with the United States and the European Union  
especially firm on this point. Yet the Washington, DC-based  
Intellectual Property Owners’ Association (IPO) in a recent letter to  
the US Trade Representative stated concern that ACTA “potentially  
change(s) United States law by transforming what are the commonly  
occurring non-counterfeit-types of civil action infringements into  
activity that is to be punished under federal criminal law.”

The IPO letter is available here.

Existing US law clearly distinguishes between trademark infringement  
and counterfeiting, the IPO letter said, with only the latter being  
sanctioned by criminal law. But the April ACTA draft, if unchanged,  
would unwittingly broaden “the scope of the seizure power of Customs  
and Border Patrol forces to encompass civil action trademark  
infringement and raising the specter of potential abuse in many  
countries around the globe.” IPO also recommended patents be left out  
of the agreement.

Another concern and change to US law raised with USTR by the IPO is  
the potential criminalisation of keywords used as metadata on the  
internet in those cases where they were confusingly similar to a  
trademark. The IPO recommended to tailor ACTA definitions of IP  
narrower according to the stated purpose of anti-counterfeiting, and  
in general “to ensure that the scope of the act is appropriately  
limited to its stated purpose of addressing the limited, though  
important, subset of infringement known as ‘counterfeiting’.

It is unclear whether these concerns were addressed in the latest  
round of ACTA talks held last week in Lucerne, Switzerland, as the  
draft text was not released again after the meeting.

The question of the scope of ACTA has been the topic of numerous ACTA  
discussions in the various jurisdictions. The European Parliament, for  
example, called on the Commission to limit ACTA negotiations “to the  
existing European IPR enforcement system against counterfeiting.”

How the Parliament will react to the decision of ACTA negotiators to  
not publish the most recent text is an open question as the Parliament  
had asked for “public and parliamentary access” to the document.  
Christian Engstroem, member of the European Parliament for the Swedish  
Pirate Party/Green Party Group, said the Commission would act against  
their mandate if they continue negotiations in secret


Thiru Balasubramaniam
Geneva Representative
Knowledge Ecology International (KEI)
thiru at keionline.org

Tel: +41 22 791 6727
Mobile: +41 76 508 0997

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