Anti-Counterfeiting Trade Agreement

The controversial Anti-Counterfeiting Trade Agreement (ACTA), which is a multi-country intellectual property trade agreement, the negotiations of which have been ongoing since 2006 was signed on 1 October by eight countries.

The signatories were Australia, Canada, Japan, Morocco, New Zealand, Singapore, South Korea and the US. While the fact that some important countries have signed the agreement means that the pact might come into force sometime in the future, at least six parties must ratify it to become binding.

The Agreement opened for signature on 1 May with the Government of Japan as the depository of the Agreement and a two-year window for signing has been given ending on 1 May 2013. Although representatives from the EU, Mexico and Switzerland who are the other negotiating parties to ACTA were present, they did not sign the Agreement.

The Office of the US Trade Representative in a statement has stated that the other parties continue to support the Agreement and have to complete their domestic procedures to enable them. However, there is pressure in Mexico from policy makers and civil society not to sign the treaty and whether Mexico will sign has to be seen. The Agreement’s potential impact on non signatory countries had also been causing concern throughout the negotiations.

The Office of the US Trade Representative in its announcement stated that the ACTA is aimed towards the three following areas: Improving international cooperation; establishing best practices for enforcement; and providing a more effective legal framework to address the problem of counterfeiting and piracy.

In a joint press statement, the signatories noted: “When [ACTA] enters into force with all participants, the ACTA will formalise the legal foundation for a first-of-its-kind alliance of trading partners, representing more than half of world trade. The agreement aims to target counterfeiting and piracy and is expected to cover all types of intellectual property, including patents and geographical indications. The US Representative called the agreement a “ground breaking achievement that holds the promise of greatly improving the enforcement of intellectual property rights around the world.”

The Australian Trade Minister stated: “ACTA builds on World Trade Organization standards to promote international trade in legitimate intellectual property, by elevating standards of enforcement.” Critics of the agreement consider the terms of the agreement going beyond what is necessary to target counterfeiting and that it would create new intellectual property protection that surpass the WTO agreement on intellectual property. They also feared that it would threaten internet freedom, access to technology and the availability of medicine in poor countries. It is understood that during the recent negotiations, some of the controversial issues in the past negotiations have been dropped. Against this background, while the treaty’s scope still includes all intellectual property rights, the emphasis is more on trademark counterfeiting and copyright piracy, particularly with regard to criminal measures. Patents have been explicitly excluded from the section on obligations related to border measures, and public interest-related safeguards have been added. Many substantive obligations are left to domestic implementation. The text also states explicitly that parties are free to implement “more extensive enforcement of intellectual property rights than is required by this agreement” in their domestic law. This means, for instance, that the EU may continue to apply border measures to shipments of generic medicines suspected of infringing patent regard to enforcement in the digital environment. Article 2.18 stresses the importance of “preserving fundamental principles such as freedom of expression, fair process, and privacy.” However, countries are free to enforce laws that may result in cutting off internet access for individuals who repeatedly download pirated music or films, although they have no obligation to adopt such an approach. Michael Geist of Ottawa University had said the internet chapter could best be viewed as ACTA Ultra-Lite with “the intermediary liability provisions largely removed and digital lock provisions much closer to the WIPO Internet treaties model”. The tug-of-war over protection of geographic indications versus trademarks was said to have been resolved by language that directs parties to provide effective border enforcement of IPRs “in a manner that does not discriminate unreasonably between intellectual property rights and that avoids the creation of barriers to legitimate trade”. Nevertheless, several ACTA provisions, including damages and injunctions in civil enforcement of patent protection, as well as its overall implications still give rise to concern.

(Manel de Silva holds an Honours Degree in Political Science from the University of Ceylon, Peradeniya and has engaged in professional training in Commercial Diplomacy at ITC and GATT. She has served as a trade diplomat in several Sri Lankan Missions overseas and was the first female Head of the Department of Commerce as Director General of Commerce.)