ACTA On The Borderline Of EU Acquis Communautaire

Recently the Directorate-General for External Policies of the Union (Directorate B – Policy Dept.) has published a study conveying an assessment of the Anti-Counterfeiting Trade Agreement (ACTA) which had been requested by the European Parliament’s Committee on International Trade (Contract No. EXPO/B/INTA/FWC/2009-01/Lot7/ 12 June 2011 PE 433.859 / Editorial closing date: 11July 2011). Of course, the study should be construed in a way that any opinions expressed in the document are the sole responsibility of the respective author(s) and do not necessarily represent the official position of the European Parliament. Political debates in coming fall will show the Parliament’s position.

Named authors of the study are:

• Prof. Anselm Kamperman Sanders, Faculty of Law, Maastricht University
• Assistant Professor Dalindyebo Bafana Shabalala, Faculty of Law, Maastricht University
• PhD Researcher Anke Moerland; Faculty of Law, Maastricht University
• Dr. Meir Pugatch, IGIR Fellow, Director of Research, Stockholm Network, and Senior Lecturer, University of Haifa
• Paolo R. Vergano, IGIR Fellow and Partner at Fratini Vergano – European Lawyers

As set out in the study, ACTA was born out of the frustration of the major industrialised economies with progress on monitoring and norm-setting on the enforcement of intellectual property rights in multilateral fora. In the WTO Council for TRIPS (‘TRIPS Council’), Brazil, India and China have consistently blocked the inclusion of enforcement as a permanent agenda item. At the World Intellectual Property Organisation (WIPO), enforcement issues were relegated to a purely advisory committee. According to the study, ACTA can also be seen as an extension of the existing strategies of the main ACTA parties to include significant provisions on enforcement in their bilateral and regional free trade agreements (FTAs).ACTA was motivated by a desire to establish common provisions in international trade agreements containing rules on anti-counterfeiting. Within the EU the ACTA has  been the source of some concerns regarding the non-transparent way it was negotiated and whether it meets to aims agreed by the European Parliament and Commission that it would be compatible with the existing acquis communautaire and the World Trade Organisation’s Trade Related intellectual Property rights (TRIPs) Agreement.

The study addresses two key questions regarding ACTA:

• Is it in conformity with the EU Acquis; and
• is it in conformity with the existing international obligations of the EU and its member states?

The question as to whether or not ACTA it in conformity with the EU acquis communautaire is of some political importance. Of course, the respective competent and empowered bodies of the EU are free to extend that acquis communautaire at any time if so decided. However, in view of general concerns of conflicts between ACTA and civil liberties and legitimate economic interests not based on IPRs, plus critics on the murky, secrecy-shrouded history of ACTA, there is a fierce public debate if ACTA should be ratified at all. In order to ease the formal adoption of ACTA, the EU Commission insists on their view that ACTA is merely declarative, i.e. it does not extend the acquis communautaire. If an expert opinion would supply reasons for rejecting this position, the Commission might well come into political trouble. This scenery appears to be the set prepared for the assessment now published.

The study finds:

ACTA was controversial both in terms of the process and the substance of the negotiations. The decision to maintain secrecy until the release of draft text in mid-2010 was to prove a significant handicap to public understanding and support for the treaty. The secrecy allowed significant misapprehensions to develop, while making it difficult for negotiators to communicate the actual scale and content of what was being achieved. There were also concerns related to; when documents would be made public; whether public interest groups had the same access as business and rightholder groups; what effect and relationship ACTA would have with the TRIPS Agreement, when and how much time the European parliament would have to exercise its duties and prerogatives to properly evaluate the treaty.

Substantive areas of concern covered a range of issues including: the potential negative effect of ACTA on fundamental human freedoms and privacy; the possibility of requiring cut off of internet access to consumers that infringe the agreement; imposing liability on internet service providers that carry content that infringes the agreement; the potential negative effect of ACTA
on access to medicines in Europe and in third countries.

Efforts to maintain secrecy did not prevent a heated debate on ACTA generated by leaked texts of proposals, evaluations and draft treaties and fuelled the suspicion that ACTA would entail a significant shift in the laws of ACTA countries and go significantly beyond the TRIPS Agreement.

This study finds that, in the case of the EU, ACTA does not entail such a significant shift in the EU Acquis, but that, while it is not fundamentally in conflict with the TRIPS Agreement, it is significantly more stringent and rightholder friendly than the TRIPS Agreement. Many of the substantive issues that raised concerns in the early position papers have been addressed or are entirely absent from the final agreed text. On the other hand ACTA also does not appear, on its own, to have a significant impact on the EU’s innovative capacity or its global competitiveness. This is partly due to the relatively modest scale of the outcome, as well as the fact that ACTA will not require any change in the laws or regulations of significant competitor countries such as Brazil, India and China.

In the end, as the primary recommendation the study would recommend that:

• unconditional consent would be an inappropriate response from the European Parliament given the issues that have been identified with ACTA at it stands.

In particular the authors of the study recommend the Parliament consider that its conditional consent include:

• annotating the text with additions from the TRIPS Agreement outlining the mandatory safeguards that ACTA has omitted to mention in areas such as provisional measures;
• annotating the text, with an accompanying resolution, with additions from the TRIPS Agreement outlining the optional safeguards that ACTA has left open to be implemented in a manner supportive of the Doha Declaration on TRIPS and Public Health. In particular, the European Parliament should address the matter of border measures by recommending that member states exclude patents from the application of in-transit procedures. Such procedures should be limited to counterfeit trademark
• goods as defined by ACTA Article 5(d). This is possible because the application of in-transit procedures is an optional element of ACT;
• an accompanying statement to the EU instrument ratifying ACTA that Article 13 is interpreted by the European Union in such a way as to allow the exclusion of pharmaceutical patents and trademark infringements other than counterfeit trademark goods from the application of border measures, especially in-transit procedures.

According to the study as discussed here and in light of the analysis conducted the authors think it can be argued that the provisions of ACTA appear to be, in most cases, in line with the EU acquis communautaire. However, in some cases, ACTA is arguably more ambitious than EU law, providing a degree of protection that appears to go beyond the limits established in EU law. Therefore:

• for those European Parliamentarians for whom conformity with the EU Acquis is sine qua non for granting consent, this study cannot recommend that they provide such consent to ACTA as it now stands.

However, For those European Parliamentarians for whom conformity with the existing EU Acquis is not sine qua non, the authors of the study discussed here think that such consent should consider modifications that include:

• Amending Article 2 of the IPRs Customs Regulation to include, within the scope of border measures, all violations of trademark and copyright infringements.
• Seeking clarification, before ratification of ACTA, from the European Court of Justice that the criteria envisaged by the ACTA  for the quantification of the compensatory damages would not amount to a violation of the criterion of “appropriateness of the damage to the actual prejudice suffered” envisaged in the Enforcement of IPRs Directive;
• Creating a legislative framework for how information sharing under ACTA should take place, based on the “Opinion of the European Data Protection Supervisor.”

Those players who prefer ACTA being rejected in its entirety by the European Parliament do not get endorsement by the authors of the study:

Rejection of a treaty text for which the parliament itself provided a mandate would be a drastic step. This could only be considered if the agreement is significantly beyond the mandate provided to the Commission. There have been repeated statements by both the Commission and the Parliament that ACTA should not and would not go beyond the EU Acquis. Rejection could be justified if the ACTA went significantly beyond the EU acquis. The analysis in this study suggests that while there remain questions with regard to specific provisions and certainly about border measures, it would be difficult to argue that ACTA as a whole goes significantly beyond the EU acquis. Thus rejection may not be an appropriate.