[Ip-health] ACTA: US Intervention on IP Enforcement Trends at WTO Council for TRIPS (28 February 2012)

Thirukumaran Balasubramaniam thiru at keionline.org
Thu Mar 1 08:40:35 PST 2012


ACTA: US Intervention on IP Enforcement Trends at WTO Council for TRIPS (28 February 2012)

These are the interventions delivered by the United States of American on 28 February 2012 during WTO Council for TRIPS discussions on ACTA under "IP Enforcement Trends".


[U.S. First Intervention]

•	We appreciate this opportunity to discuss enforcement of IP rights, and hopefully to dispel some misperceptions about IP enforcement in general and the ACTA in particular.

•	Effective enforcement of intellectual property rights is critical to sustaining economic growth across all industries and globally.

•	The proliferation of counterfeit and pirated goods, as well as of services that distribute infringing material, undermines legitimate trade and 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.

•	The effective enforcement of intellectual property rights benefits from enhanced international cooperation and more effective international enforcement.

•	Turning specifically to ACTA, the principles I just enumerated form part of the bedrock of that Agreement.

•	To help promote a dialogue on these important principles, we wanted to address some of the questions that were raised at the October meeting of the TRIPS Council.

•	At that meeting, the esteemed delegate from Zimbabwe asked which clear “lacunae” in the TRIPS agreement do the ACTA participants seek to address?

•	Let me provide a few examples:

o	The ACTA provides a forum for the Agreement’s participants to work cooperatively together to protect and enforce intellectual property. The ACTA cooperation provisions are more extensive than those in the TRIPS Agreement, but as with the rest of ACTA, they are fully consistent with the TRIPS Agreement.

o	The ACTA provides that Parties to the Agreement must authorize their border enforcement authorities to act on their own initiative against trademark counterfeit and copyright pirated goods. This addresses a gap in existing standards that has sometimes meant customs officials are powerless to take action against fake and pirated goods. Application of this stronger standard will help protect consumers.

o	The ACTA includes new commitments on the seizure and destruction of fake goods, on seizure of the equipment and materials used in their manufacture, and on seizure of the criminal proceeds from piracy and counterfeiting offenses. This ensures that police and prosecutors will be able to take away both ill-gotten gains and the tools of illicit trade.

•	When the TRIPS Agreement was negotiated almost 20 years ago, the type of complex distribution webs that we see today did not exist. Much has changed since 1994.

•	ACTA is intended to ensure that enforcement authorities have the legal tools to address the new sophisticated ways that illegal, and often deadly, products are distributed. The points I have just mentioned reflect an effort to provide appropriate tools. If governments do not modernize their approaches to adapt to evolving illegal activities, especially to keep up with the criminals, we are not doing our jobs.

•	We also wanted to address interventions made in October suggesting that ACTA would target generic medicines.

•	I want to be clear that ACTA does not target generics.

•	For example, ACTA does not require border enforcement of patents.

•	As to border enforcement of trademarks, this is an important element of protecting the public.

o	For example, in the United States authorities recently uncovered a significant problem of fake cancer drugs in the U.S. supply chain. Among other things, fake drugs like these sometimes bear counterfeit trademarks. Empowering border authorities to act when they see such fake trademarks could have real health benefits.

•	As Japan noted, at the same time, ACTA Article 13 provides similarly to the TRIPS Agreement that barriers to the legitimate trade should be avoided.

•	And ACTA also protects against abuse: ACTA, like the TRIPS Agreement, stipulates that IP enforcement procedures “shall be applied in such a manner so as … to provide for safeguards against their abuse.”

•	Finally, we wanted to address questions raised at the October meeting regarding transparency.

•	ACTA is not secret: A draft was released in April 2010, while negotiations were still ongoing. We published a near-final text in October 2010, and then published the final text in December 2010, and then in May 2011 we published French and Spanish translations. The final English text has thus been public for more than a year.

[U.S. Second Intervention]

•	We wanted to respond to a few specific points. For example, India raised questions with respect to confusingly similar trademarks.

•	Providing for the availability of border enforcement against confusingly similar marks is a best practice reflected in laws of many WTO Members, including the United States.

•	This type of enforcement would, for example, allow border authorities to take action when fake goods bear trademarks that are only slightly modified but still confusing.

•	My delegation would respectfully submit that the determination that, for example, “Sialis” with an “S” is confusing with “Cialis” with a “C” is not a matter of such profound legal complexity as to be beyond the abilities of the same border enforcement officials we entrust with safeguarding our populations from all manner of potential threats.

•	When there are hard cases, the laws of our country and others around the world provide appropriate legal means to resolve those issues.

•	India also raised concerns regarding ACTA Article 22. I note that paragraph 9 of the Indian “Notification No. 47/2007 – Cus. (N.T.)” calls for provision of similar information by customs authorities to right holders upon request.

•	Regarding “TRIPS plus” requirements, this point remains somewhat mystifying.

•	Again, many WTO Members that are not ACTA participants have implemented ACTA provisions. For several examples, I would refer Members to paragraphs 534 and 535 of the minutes of the October TRIPS Council meeting contained in document IP/C/M/67.

•	We look forward to responses from these countries as to why these provisions are acceptable in their domestic law, but not in ACTA. For example, there is a paradox between China’s analysis of the criminal provisions of ACTA and China’s own domestic law addressing criminal enforcement with respect to intellectual property rights.

•	We would also like to explore one of the measures identified in October in greater detail.

•	India’s “Notification No. 47/2007 – Customs (N.T.)” appears to implement numerous ACTA provisions, including ACTA Article 16(1)(a) on ex officio authority for customs officials, which is found in Article 7(1)(b) of the Notification.

•	Likewise, ACTA Article 15 on the provision of information from rights holders to customs officials is found in Notification Article 7(5).

•	We would add that the scope of IPR infringement covered by the Notification includes copyright, trademark, designs and patents.



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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