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Near-final ACTA draft published

26/06/2013
The latest, near-final draft of the Anti-Counterfeiting Trade Agreement (ACTA) sets out basic standards for enforcement – but does not go as far as many critics feared

A near-final draft of the Agreement, which is being negotiated by the EU and 10 other countries, was published yesterday. It includes detail on civil and criminal enforcement, border measures and IP enforcement in the digital environment.

Although it sets out provisions that member parties will provide to deal with counterfeit goods, it is unlikely to lead to law changes in most countries.

The 24-page Agreement is the result of more than three years of negotiations, which culminated in a meeting in Japan last week.

In what is seen as a victory for the EU, the Agreement covers all categories of intellectual property mentioned in Part II of the Trips Agreement. This includes not just trade marks and copyright but industrial designs, patents, layout-designs of integrated circuits, undisclosed information and - crucially - geographical indications.

However, in sections yet to be finalized the US proposes that some aspects of the Agreement do not apply to patents.

This is the case with civil enforcement, where ACTA sets out that parties should provide injunctions, damages and other remedies such as destruction of goods for pirated copyright and counterfeit trade mark goods.

Regarding calculating damages, the Agreement says judicial authorities shall have the authority to consider "any legitimate measure of value submitted by the right holder" including lost profits, the value of the infringed good/service, market price or retail price.

Parties should provide border enforcement "in a manner that does not discriminate [unreasonably] between intellectual property rights and that avoids the creation of barriers to trade". The inclusion of the word "unreasonably" has not been finalized.

Border measures should apply to "goods of a commercial nature sent in small consignments" but parties may exclude "small quantities of goods of a non-commercial nature contained in travelers' personal luggage".

Criminal procedures and penalties should be applied "at least in cases of willful trademark counterfeiting or copyright or related rights piracy on a commercial scale".

The Agreement also says that parties shall provide for competent authorities to initiate criminal offenses.

It adds: "Each Party shall encourage the development of specialized expertise within its competent authorities responsible for enforcement of intellectual property rights."

Some of the most controversial aspects of earlier discussions about ACTA concerned secondary liability for infringement committed online. Internet service providers were concerned about the burden that might be placed on them and that provisions similar to those in the DMCA in the US would be included.

Section 5, which deals with the digital environment, says that parties should provide procedures to permit effective action against online infringement. But it does not make ISPs liable or include specific penalties such as a three-strikes rule.

Instead, it says each party may enable authorities to order ISPs to disclose information to identify alleged infringers, where an infringement claim has been filed.

It also says that parties should provide protection against circumvention of technological measures, including through devices or products such as computer programs.

The Agreement, once finalized, will enter into force 30 days after six states have ratified it. It is expected that all 37 states involved in the negotiations will join, though there is some uncertainty regarding Mexico.

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(Managing IP, 07 October 2010)

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