1. ANTI-COUNTERFEITING TRADE AGREEMENT
Julie George
Lawyers Collective HIV/AIDS Unit, India
East Africa Consultation, September 2010

2. WHAT IS ACTA ABOUT? Anti-Counterfeiting Trade Agreement (ACTA)
Multilateral attempt of developed countries to push for TRIPS-plus higher standards of enforcement of intellectual property rights.
Secret negotiations between certain countries initiated at the behest of developed countries
Negotiating countries: Australia, Canada, European Union, Japan, Korea, Morocco, New Zealand, Mexico, Singapore, Switzerland and United States
Will be binding on negotiating countries with option to other countries to join in

3. WHAT IS ACTA ABOUT?
“Counterfeit” generally used in the context of trademark infringement
Scope of ACTA is much broader than “counterfeit”
ACTA will affect, amongst others:
access to medicines,
access to knowledge,
freedom of expression,
right to privacy,
research and innovation

4. ISSUES OF CONCERN Broadened scope of who can seek enforcement:
“Right holder” includes a federation or an association having legal standing to assert rights in intellectual property
Obligations: States to ensure EFFECTIVE enforcement action, including:
EXPEDITIOUS remedies to prevent infringement; and
Remedies that are DETERRENT in nature to prevent further infringement

5. ISSUES OF CONCERN INJUNCTIONS:
ACTA seeks to make it easier for right holders to obtain injunctions
It is unclear whether legislatures or judiciary of countries will be free to refuse to grant injunctions (in cases apart from those relating to unauthorised government use)
It seeks to expand availability of injunctions against intermediaries whose services are used to infringe an IP
In case of unauthorised government use, right holder is to be paid adequate compensation taking into account economic value of authorisation.

6. ISSUES OF CONCERN DAMAGES:
It requires countries to allow judicial authorities to order the infringer to pay damages “adequate” to compensate the right holder
It seeks to introduce standards for determination of damages:
Legitimate measure of value submitted by right holder, including lost profits, value of infringed good or service measured by the market price or suggested retail price
Pre-established damages
Presumption for determining amount of damages
Additional damages for copyright
It seeks to require courts to have authority to order infringer to pay the profits earned by it that are attributable to the infringement
Payment of costs or fees, attorney’s fees and other expenses

7. ISSUES OF CONCERN DESTRUCTION OF GOODS, ETC: It seeks to require
Destruction of goods infringing IP without compensation, except in exceptional circumstances
Destruction and disposal outside channels of commerce of materials and implements, the predominant use of which has been in the manufacture or creation of infringing goods
Payment by infringer for expenses of such destruction and disposal

8. ISSUES OF CONCERN PROVISIONAL MEASURES:
Judicial authorities to expeditiously provide provisional measures, without hearing the other side and to make a decision without undue delay
Extension of provisional, interim measures against intermediaries
Issuance of provisional measures even before commencement of proceedings on merit, to preserve relevant evidence with respect to alleged infringement
Includes seizures or taking into custody suspected infringing goods, relevant materials and implements abd documentary evidence
Excludes safeguards specifically provided for under TRIPS

9. ISSUES OF CONCERN BORDER MEASURES:
TRIPS requires countries to provide border measures only for IMPORT of pirated copyright and counterfeit trademark goods.
Some countries negotiating ACTA want to expand it to all goods suspected of infringing IP, when they are IMPORTED, EXPOTRED, IN-TRANSIT or under CUSTOMS SUPERVISION
Most negotiating countries want ACTA parties to make ex officio action by customs authorities mandatory
Makes it difficult for defendant to re-obtain possession of seized goods through requirement of court order or exceptional circumstances
Requires disclosure of information pertaining to shipments to be given to IP holder
Safeguards for alleged infringers (such as judicial review) excluded

10. ISSUES OF CONCERN Border measures – How they affect access?
Generic drugs seized [Late-2008]:
Drug: WHO per-qualified ARVs for Clinton Foundation funded treatment project purchased by UNITAID
Source: India  Transit: Amsterdam  Destination: Nigeria
17 other such seizures; in some cases, drugs released after a few months, either forwarded to destination or returned to India.

11. ISSUES OF CONCERN CRIMINAL ENFORCEMENT:
TRIPS requires criminal enforcement only for WILFUL trademark counterfeiting and copyright piracy on a COMMERCIAL scale.
ACTA requires criminal remedies at least in cases of WILFUL trademark counterfeiting and copyright and related rights piracy.
ACTA also requires crimnalisation of wilful import, domestic use, of labels or packaging:
to which a mark identical to a registered trademark is applied , and
which are intended to be used for goods and services identical to those for which trademark is registered
Requires countries to provide for ex officio enforcement

12. ISSUES OF CONCERN Lack of transparency in negotiations
No consultation with affected stakeholders, including civil society, patients’ groups, etc
Once ACTA is concluded, signatory states will export these standards to other countries through free trade agreements/economic partnership agreements