ISSUES AND CONCERNS IN THE UGANDA COUNTERFEIT GOODS BILL MULUMBA, MOSES

Introduction Note: this presentation is based on the draft Bill seen earlier in 2009 A number of interventions have been done and government meetings held over our concerns Its likely that some of these issues are under redress

Structure of the Bill It contains 23 sections, divided into 7 parts: Part I contains the purpose and definitions; Part II deals with the administration of the Bill; Part III provides details of inspections and the powers of inspectors; Part IV outlines offences under the legislation; Part V is about Orders; Part VI deals with border measurers; and Part VII contains miscellaneous provisions.

The Uganda Counterfeit Goods Bill, 2009 This Bill was published to among others: Prohibit trade in counterfeit goods that infringe upon protected IP rights To prohibit release of counterfeit goods into the channels of commerce To create offences relating to trade in counterfeit goods To empower the commissioner for customs to seize and detain suspected counterfeit goods To empower inspectors to appointed by the NBS to seize and detain suspected counterfeit goods

Definition of Counterfeits Without authority of the owner of any intellectual property right subsisting in Uganda in respect of protected goods the manufacturing, producing, packaging, re- packaging, labelling or making, whether in Uganda or outside Uganda... the manufacturing, producing or making, whether in Uganda or outside Uganda, the subject matter of that intellectual property, the manufacturing, producing or making of copies, in Uganda or outside Uganda, in violation of the authors rights or related rights

Problems in the definition This makes the Bill TRIPS-plus since WTO-TRIPS Agreement limits counterfeit to trademark infringements. Makes the authority IP holder absolute

Conflict with other Legislation Under S. 47(1) of the Copyright Act (100 currency points of 4 yrs jail or both) Vs S.16 of Counterfeit Goods Bill S. 378 and 379 (counterfeit trademarks) of the Penal Code relate to the selling of goods marked with a counterfeit trademark its a misdemeanour going for 2years VS S.16

Shift in Territorial Nature of IPRs The Bill presents a significant shift in the application of the territorial principle. By making reference to counterfeiting activities done in Uganda or outside Uganda, It suggests that if a product is patented in Uganda, but the act of manufacturing the product took place in India (where the product is not patented), the producer would have committed an act of counterfeiting in Uganda.

Nature of Criminal Sentences Under S 16, the Bill prescribes fines and/or custodial sentences of 5-10 years for people who in the course of trade, are found in possession or control counterfeit goods, and higher fines and jail terms for those found manufacturers; and mandatory fines and imprisonment for recurrent offenders TRIPS under Article 61 only requires criminal procedures and penalties to be applied in cases of wilful trademark counterfeiting or copyright piracy on a commercial scale.

Wrongful Boarder Measures Another TRIPS-plus concern is that the Bill provides extensive discretionary powers to the inspectors, although the inspectors will be unable to determine due to the lack of expertise whether there is a violation of IPRs. Wrongful border measures will result in access problems as seen in recent situations in which EU customs officials seized medical shipments in transit although no evidence of IPR violation

Infringing on the powers of the NDA Under Sections 3 and 4 the authority the administering the anti-counterfeiting legislation is vested in the Uganda National Bureau of Standards (UNBS). UNBS would ordinarily not have the requisite capacity to deal with counterfeit medicines and trying to establish the needed capability by the Bureau would be a duplication of effort. This also means that the inspectors appointed under Section 6 should include some from the drug regulatory authority

NDAs Role Cont In section 19, the Commissioner of Customs is granted wide discretion in determining what a counterfeit product without giving room to expert regulatory agencies to participate in this determination.

Gaps in the Process The first process had limited consultation of the stakeholders Ministry of Health NDA NMS CSOs Private sector

Some Advocacy Step: Struggles to get the Bill; Bill analyzed and critical issues identified; Petition to Speaker of Parliament; Allegation letter to Special Rapporture; Letter from special rapporture to govt; Invitation by MoTrade; Second version of the Bill developed – Medicines mentioned

Steps Cont Meeting with parliamentary committee on trade Expert discussion on the Bill – policy people brought together; Resolutions on what should be done developed; Inter-ministerial meeting held – in view of developing the next version.

Further Steps: Continuous follow up – with different government departments; More awareness of the issue within CSOs; Media training to increase reporting; Having meetings with manufactures – UMA seems to be pushing the Bill Follow up on the EAC policy and proposed protocols; Follow up on the competition Bill and the industrial Properties Bill.