The Anti-Counterfeiting Trade Agreement finally unveiled

The Anti-Counterfeiting Trade Agreement finally unveiled

The Anti-Counterfeiting Trade Agreement finally unveiled

On 16 November 2010, the Australian Minister for Trade, the Honourable Dr Craig Emerson MP, announced that after three years of trade negotiations between 37 countries1, the text of the Anti- Counterfeiting Trade Agreement (ACTA) was concluded2.

Objectives of the ACTA

The ACTA aims to combat the proliferation of counterfeit and pirated goods through the establishment of increased international cooperation and international standards for the enforcement of intellectual property rights, and to address the challenges of intellectual property infringement in the digital environment.

Civil enforcement

The ACTA provides for the judicial authorities of each party to the agreement to have authority:

  • to grant injunctions preventing infringing goods from entering into the channels of commerce;
  • to order an infringer to pay the right holder damages;
  • to order the losing party in civil judicial proceedings concerning infringement of at least copyright or trade marks to pay the prevailing party’s legal costs;
  • to order an infringer/alleged infringer to provide to the right holder or to the judicial authorities relevant information including the identity of third persons involved in the production and distribution of infringing goods and services and their channels of distribution;
  • at least in cases of copyright infringement and trade mark counterfeiting, to order an infringer to pay the right holder the infringer’s profits that are attributable to the infringement and to order at the infringer’s expense the destruction of infringing goods and manufacturing materials.

There are also provisions for judicial authorities to have authority to take provisional measures to prevent an infringement of an intellectual property right from occurring and to order seizure of suspect goods and articles.

Border measures

The ACTA requires each party to implement an effective system of border enforcement of intellectual property rights, but “that avoids the creation of barriers to legitimate trade”. The goods to be targeted include goods of a commercial nature sent in small consignments, but small quantities of goods of a non-commercial nature contained in travellers’ personal luggage may be excluded from the operation of such laws.

Criminal enforcement

Each party is required to adopt criminal procedures and penalties for wilful trade mark counterfeiting or copyright piracy on a commercial scale, with penalties that include monetary fines and imprisonment.

Enforcement of intellectual property rights in the digital environment

The articles relating to enforcement in the digital environment are aimed at ensuring that action can be taken against an infringing act that takes place in the digital environment and against the circumvention of effective technological measures designed to prevent unauthorised acts, as well as to protect electronic rights management information. Further, a party may provide its competent authorities with the authority to order in certain circumstances an online service provider to disclose to a right holder information sufficient to identify a subscriber whose account was allegedly used for infringing purposes.

What is next on the agenda for Australia

Trade Minister Craig emerson has announced that Australia would not be obliged to amend existing intellectual property laws so as to implement the ACTA. Australia already has an extensive intellectual property rights enforcement regime dealing with each of the issues addressed in the ACTA. For example, the Notice of Objection Scheme under the Australian Copyright Act and Trade Marks Act provides border measures to enable seizures of imported goods that infringe the rights of registered trade mark and copyright owners who have notified the Australian Customs and Border Protection Service of their rights3.

Australia’s “knowledge economy” nevertheless stands to benefit from strengthened intellectual property enforcement standards in foreign markets. The Gillard Government will decide whether to ratify the ACTA treaty after it is examined by the Joint Standing Committee on Treaties.

The Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 is being introduced during the Autumn 2011 sessions of the Commonwealth Parliament, which commenced on 8 February 2011. One of the reasons for the Bill, according to the Department of the Prime Minister and Cabinet’s list of proposed legislation to be considered by the Australian Government, is to “improve mechanisms for trade mark and copyright enforcement in Australia”. The exposure draft Bill and an accompanying draft explanatory memorandum outlining the reforms to Australia’s intellectual property system was released to the public on 3 March 20114. The draft Bill includes proposed amendments to the current system for confiscating imported goods that infringe registered trade marks and copyright material notified to Customs, harsher penalties for trade mark offences, and provision for the Court to award additional damages for trade mark infringement.

IP Australia has invited interested stakeholders to make a written submission on the draft Bill and explanatory memorandum by 4 April 2011 prior to finalising the Bill.

Endnotes

  1. Australia, Canada, the European Union (representing 27 European Union Member States), Japan, the Republic of Korea, Mexico, Morocco, New Zealand, Singapore, Switzerland and the United States.
  2. Media release, Australian Minister for Trade, Dr Craig Emerson, Anti-Counterfeiting Agreement to Benefit Creative Industries, 16 November 2010, . The full text of the ACTA is available at www.dfat.gov.au/trade/acta/.
  3. For more information, see “Six steps to strategic enforcement of IP rights in Australia”.
  4. See http://www.ipaustralia.gov.au/resources/ news_new.shtml#13.