ACTA EC WTO TRIPS 20101109

Leak: How EU prepares next ACTA “technical round”

Source  : http://tacd-ip.org/archives/270 EUROPEAN COMMISSION
Directorate-General for Trade
Directorate E - Public Procurement and Intellectual Property, Bilateral Trade Relations
Public Procurement, Intellectual property.

EUROPEAN COMMISSION

Directorate-General for Trade
Brussels, 3 November 2010
Ref: “LIMITED”
NOTE FOR THE ATTENTION OF THE INTA COMMITTEE

SUBJECT: ACTA Information regarding next steps ORIGIN: DG Trade

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ANNEX I

PROVISIONS OF ACTA THAT PROVIDE VALUE COMPARED TO EXISTING INTERNATIONAL STANDARDS AND IN PARTICULAR WTO/TRIPS

General aspects, applicable to all the treaty:

As requested by the EU, Parties agreed to extend the scope of ACTA to other IPR infringements than copyright and trademarks (in the general sections, as well as in the civil, customs and digital sections). This means also that enforcement of geographical indications (GIs) would be included in these sections, benefiting from several innovative provisions.

recognition of the EU principle of proportionality (article 2.X.3, General Obligations)

Civil enforcement:

introduction of provisional injunctions and final injunctions against intermediaries (valuable and based on EU Directive), applying to all IP rights (articles 2.X.1 and 2.5.1.(a)).

clearer measures on provisional enforcement in the case of inaudita altera parte: expeditious and without undue delay (article 2.5.2);

clearer provisions on the calculation of damages, with more options given to right-holders and consequent increased chances of being compensated. Some of the provisions apply at least to copyright and/or trademark infringements (article 2.2);

the Right of Information provision becomes mandatory, instead of its permissible status in TRIPS, while introducing and preserving the protection of confidential and personal data (article 2.4);

clearer measures on disposal of goods; putting the accent on destruction – while with TRIPS wording, there were often fake goods returning to the market after being confiscated. Applies at least to copyrights and trademarks (article 2.3). clearer provisions on provisional measures regarding the seizures of documentary evidences (original or copies) or other taking into custody of suspected infringing goods (article 2.5.3).

Border enforcement

obligation to provide for export controls, as well as for import (TRIPS only requires the latter), though provision is nuanced, as there is no mandatory requirement to provide for export controls based upon applications for action. (Article 2.X);

compulsory border measures are no longer restricted to trademarks and copyrights, as is the case in TRIPS. (It should be noted that there is a footnote excluding patents from the ACTA border measures, due to “access to medicines” concerns) This has the vey important consequence to establish parallel treatment of GIs and trademarks regarding customs controls, including clause of non discrimination (article 2.X);

Parties shall provide for ex-officio action, a feature that is not covered by equivalent TRIPS provisions on border measures (article 2.X).

inclusion of goods of a commercial nature sent in small consignments, into the scope of application of the border measures. Although not specifically excluded in TRIPS, the ACTA language introduces a clear commitment to act on small consignments. This is an important element in the light of the growth in commercial internet sales of IPR infringing products (Article 2.X).

other less important, but nevertheless useful elements include:

effective detailed rules regarding border measure procedures (including applications for action, ex-officio action by customs and the disclosure of information to right holders). In order to fit in with the Parties’ diverging systems, the provisions remain general. Whilst it is recognised that the details may be helpful, there is little in the provisions that strengthen enforcement in concrete terms.

obligation to provide authority to order destruction of infringing goods; the provisions concerning remedies are very similar to the equivalent TRIPS provisions. TRIPS refers to the destruction or disposal of goods in the section on border measures (and to the disposal of goods outside the channels of commerce in the section on civil remedies). ACTA border measures refers to the destruction of goods or to their disposal outside the channels of commerce. The nuances are subtle and cannot be considered to be a significant added-value element.

rules regarding fees for border enforcement; the ACTA text on this issue states that any fees should not deter recourse to the procedures. This in a general concept that customs should respect, with regard to fees that are charged to an economic operator, for what might be considered to be services rendered. It does not add significantly to the enforcement of IPR at the border.

Criminal enforcement: [comment: this was negotiated by the Presidency on behalf of the Member States and on the basis of a common position unanimously agreed in COREPER] definition of “commercial scale” – the ACTA wording defines the concept of TRIPS and redresses the doubts created by the recent WTO panel against China, which introduced high quantitative thresh-holds – 500 fakes – for penal measures to kick in. It also introduces the concept of “indirect economic advantage”, which is valuable (article 2.14); ex officio penal measures – TRIPS did not require this important principle. Valuable element (article 2.17);

criminal liability for “aiding and abetting” – did not exist in TRIPS (article 2.14.4); penalties – obligation for a Party to provide for both imprisonment and monetary fines in its national legislation, which was optional in TRIPS (article 2.15);

seizure of assets derived from criminal activity and documentary evidence relevant to the alleged offence – did not exist in TRIPS (article 2.16);

definitive confiscation of assets derived from criminal activity – did not exist in TRIPS (article 2.16);

criminal penalties are clearly provided for the use of labels and packaging identical or similar to a registered trademark, without the authorization of the rightholder – did not exist in TRIPS (article 2.14.2);

penal responsibility for moral persons – important for the EU (article 2.14.5); clearer measures on disposal of goods, putting the accent on destruction – with TRIPS wording, there were often fake goods returning to the market after being confiscated (article 2.16);

Digital enforcement:

the entire section is a novelty, without parallel in any plurilateral or multilateral agreement. TRIPS was entirely silent on the subject (internet not such a relavant issue in 1994); In detail: innovative provisions on the way to enforce internet infringements (infringements in digital world are not different from infringements in physical world), applicable to all IP rights, including GIs (article 2.18.1);

general provisions on ISP liability (although we were very close to achieving a more detailed regime, broadly inspired by EU acquis), applicable also to trademarks (matters for the EU textile, luxury and cosmetics sectors) (article 2.18.2 and 2.18.4);

consolidation in an Enforcement Treaty of substantive provisions on technical protection measures. This is innovative in such a context. The international framework was negotiated at WIPO through two substantive treaties. The new text clarifies such technical protection including a definition, while preserving access to copyrighted works when limitations and exceptions are applicable (article 2.18. paragraphs 5 to 8).

Enforcement practices:

management of risks at the border: establishes provisions for contacts between right-holders and customs, which are not in TRIPS (article 3.2)

environmental concerns in destruction of goods: New concept (article 3.5).

International cooperation:

introduction of more detailed provisions on exchange of information.

4 November 2010 World Intellectual Property Organisation (UN)

Page 1 sur 2 1. Scope of civil measures (Section 2 of ACTA – page 6)

Introduce a footnote in the title of Section 2: Civil Enforcement, to make the inclusion of patents and undisclosed information optional.

Section 2: Civil Enforcement

(…) ________________________ 1 For the purpose of this Agreement, Parties may exclude patents and protection of undisclosed information from the scope of this section.

2. Border measures – Scope definition (Art. 2.X.1 – page 9)

The word “unreasonably” is replaced by the word “unjustifiably”.

ARTICLE 2.X: SCOPE OF THE BORDER MEASURES

In providing, as appropriate, and consistent with a Party’s domestic system of IPR protection and without prejudice to the requirements of the TRIPS Agreement, for effective border enforcement of intellectual property rights, a Party should do so in a manner that does not discriminate unjustifiablyunreasonably between intellectual property rights and that avoids the creation of barriers to legitimate trade.

3. Border measures – export controls (Art. 2.X.1 – page 10)

The EU withdraws its reservation and accepts the inclusion of the expression “where appropriate”, in Article 2.X.1, alínea b).

4. Camcording (Art. 2.14.3 and Art. 2.15 – pages 13-14)

a) In Article 2.14.3, the US withdraws its reservation and accepts the current “may” provision.

b) In article 2.15, EU and US agree to remove the reference to “2.14.3″.

ARTICLE 2.15: PENALTIES

For the offences specified in 2.14.1, 2.14.2, 2.14.3, and 2.14.4, each Party shall provide penalties that include imprisonment as well as monetary fines1 sufficiently high to provide a deterrent to future acts of infringement, consistently with the level of penalties applied for crimes of a corresponding gravity.

5. Internet – infringements in digital networks (Art. 2.18.2 – page 15)

The EU lifts its reservation and the following changes (highlighted in 6.below) are introduced to the text of article 2.18.2:

Page 2 sur 2 a) Add “Further to paragraph 1,” at the beginning of the Paragraph, and b) replace “including” by “may include”.

6. Internet – scope of covered infringements (Art. 2.18.2 to 2.18.4 – page 15)

Make the scope of IP rights covered by Article 2.18.2 to 2.18.4 as follows: a) 2.18.2 – “copyright”; b) 2.18.3 – “trademarks and copyright”; c) 2.18.4 – “trademarks or copyright”.

ARTICLE 2.18: ENFORCEMENT IN THE DIGITAL ENVIRONMENT

1. (…)

2. Further to paragraph 1, eEach Party’s enforcement procedures shall apply to infringement of at least trademark and copyright or related rights over digital networks, includingwhich may include the unlawful use of means of widespread distribution for infringing purposes. These procedures shall be implemented in a manner that avoids the creation of barriers to legitimate activity, including electronic commerce, and, consistent with each Party’s law, preserves fundamental principles such as freedom of expression, fair process, and privacy.2

3. Each Party shall endeavour to promote cooperative efforts within the business community to effectively address at least trademark and copyright or related rights infringement while preserving legitimate competition and consistent with each Party’s law, preserving fundamental principles such as freedom of expression, fair process, and privacy.

4. Each Party may provide, in accordance with its laws and regulations, its competent authorities with the authority to order an online service provider to disclose expeditiously to a right holder information sufficient to identify a subscriber whose account was allegedly used for infringement, where that right holder has filed a legally sufficient claim of infringement of at least trademark rights or copyrights or related rights and where such information is beingsought for the purpose of protecting or enforcing at least the right holder’s trademark rightsor copyright or related rights. These procedures shall be implemented in a manner thatavoids the creation of barriers to legitimate activity, including electronic commerce, and,consistent with each Party’s law, preserves fundamental principles such as freedom of expression, fair process, and privacy.

EUROPEAN COMMISSION Directorate-General for Trade

Directorate E - Public Procurement and Intellectual Property, Bilateral Trade Relations Public Procurement, Intellectual property.

Brussels, 4 November 2010 TRADE E/PVM D(2010)

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See also the comparison between the EU position during ACTA negotiations (as evidenced by leaked documents) and current EU law.