The Anti-Counterfeiting Trade Agreement (ACTA) is a multinational treaty aimed at establishing an international legal framework for targeting counterfeit goods, generic medicines and copyright infringement on the internet. The agreement is intended to beef up international standards for intellectual protection by creating a new governing body outside existing forums that will assist countries to work together to tackle more effectively large-scale intellectual property rights (IPR) violations in a world economy, which is encountering a consistent increase of counterfeit goods, be it pharmaceuticals, food and drink, cosmetics, toys, and car parts. The European Union alone has registered that counterfeit goods tripled over a period of five years.
The European Union alone has registered that counterfeit goods tripled over a period of five years- Josette Grech
The agreement envisages both civil and criminal enforcement in the event of intellectual property infringements. In civil proceedings, ACTA gives the possibility to judicial authorities to issue cease and desist orders and destruction orders for pirated or counterfeit goods. To permit effective action against willful counterfeiting or piracy on a commercial scale, the latter are deemed criminal acts, thus attracting criminal penalties, whether imprisonment or monetary fines. The right-holder whose rights have been breached may claim compensation by way of damages for the wrong suffered, including lost profits, the value of infringed property as per market price, or the suggested retail price. At borders, customs officials are allowed to act on their own initiative or upon request on suspect goods.
The agreement was signed in October 2011 by eight countries. In January 2012, the EU and 22 member states, prompted by the proliferation of IPR infringements, signed as well. Widespread protests followed. The wide-ranging concerns voiced by critics relate to the potential harm ACTA can have on citizens’ fundamental rights, including invasion of freedom of speech rights protected by EU laws and privacy protection.
The European Commission, the EU’s executive arm, defends ACTA outright. It blames the drooping economy of the EU on the counterfeit goods flooding the common market, resulting in lost jobs. In the face of growing disapproval, the European Commission is now trying to defeat criticism by referring ACTA to the Court of Justice of the European Union. The CJEU was recently invited to give an independent judicial opinion on whether ACTA complies with EU citizens’ rights of freedom of expression and information, data protection and the right to property including that of intellectual property, which are rights generally protected by the domestic laws of the member states of the EU. The ruling may in theory declare ACTA illegal. A favourable decision on the other hand will assist the Commission to promote the compelling achievements of this agreement.
In the meantime, the European Parliament may take a standpoint on the agreement that differs with that of the Commission. Yet, different forces are at work in this European institution. The rapporteur of the Parliament on the legislation in question has urged fellow lawmakers to reject it, asserting that it raises more fears by way of threats to civil liberties and internet freedom than hopes. To offset the setback the agreement suffered as a result of the rapportuer’s position, a member of the European Parliament presented a report to the Legal Affairs Committee on ACTA, urging her colleagues to support it, and proposing that the Commission produces an annual report on the impact of ACTA on fundamental rights to curtail any possible infringements that may ensue from its enforcement.
In view of the referral to the Europe’s highest judicial authority, the European Commission has urged Parliament to hold off voting on ACTA until the legality ruling is out. The European Parliament’s trade committee will vote on ACTA by the end of May and the full assembly is expected to make its voice heard before the summer, although political and legal discussions continue on whether the Parliament can proceed with a vote on the substance of the agreement while it is still under review by the Court of Justice.
The European Commission advances the view that ACTA is based on the overriding premise, long recognised by it, that intellectual property is vital for innovation, creativity and competitiveness. Although it is undisputed that the current international nature of counterfeiting and piracy warrants greater coordination between countries, it will be known shortly whether the highest judicial authority and the law-making body of the EU concur with the proposed agreement.
jgrech@demarcoassociates.com
Dr Grech is an associate with Guido de Marco & Associates and heads its European law division.