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Controversial IP rights treaty signed by eight countries

Out-Law News | 05 Oct 2011 | 4:01 pm | 3 min. read

The US and Japan have joined a six other nations in signing a controversial new anti-counterfeiting treaty, the countries have confirmed. The European Commission has not signed it on EU member countries' behalf.

The countries, which also included Australia, Canada, Republic of Korea, Morocco, New Zealand and Singapore "committed" to the Anti-Counterfeiting Trade Agreement (ACTA) at a signing ceremony in Japan on Saturday, a joint statement by the treaty's key negotiators said.

Representatives from the European Union (EU), Mexico and Switzerland, which had been involved in negotiating ACTA, attended the ceremony but did not sign the treaty.

Last week the European Commission told Out-Law.com that the EU was not going to sign the treaty on Saturday because it had yet to complete its "internal procedures". However, the joint statement from all the negotiators said that the EU, Mexico and Switzerland remained supportive of the treaty and would sign it "as soon as practicable".

"Representatives of eight governments – Australia, Canada, Japan, Republic of Korea, Morocco, New Zealand, Singapore, and the United States – signed the agreement, and took a major step toward its entry into force," the statement said.

"Representatives of the European Union, Mexico, and Switzerland attended the ceremony and confirmed their continuing strong support for and preparations to sign the agreement as soon as practicable. All participants expressed their firm resolve to work cooperatively to achieve the agreement’s prompt entry into force, and to support actively its goals," it said.

ACTA has been controversial because of secrecy surrounding its negotiation; because it operates outside of existing trade bodies the World Trade Organisation (WTO) and World Intellectual Property Organisation (WIPO); and because earlier drafts reportedly sought to impose measures which could interfere with individuals' rights.

The ACTA document (25-page / 231KB PDF), which has been published by the European Commission, encouraged customs officers to help identify IP right violators and share the details with other countries. It also set out that signatories of the agreement must make sure rights holders have access to "civil judicial procedures" in order to enforce their IP rights and that "judicial authorities" have the power to issue injunctions that prohibit infringers from further violation of rights.

In addition, signatories "shall provide for criminal procedures and penalties to be applied at least in cases of wilful trademark counterfeiting or copyright or related rights piracy on a commercial scale," ACTA said.

Criminal procedures and penalties should also be available "in cases of wilful importation and domestic use, in the course of trade and on a commercial scale, of labels or packaging," it said.

The negotiators of ACTA said that the treaty would help the "fight" against infringers of intellectual property rights.

"The ACTA represents a significant achievement in the fight against the infringement of intellectual property rights, in particular the proliferation of counterfeiting and piracy on a global scale, providing a mechanism for the parties to work together in a more collaborative manner to achieve the common goal of effective intellectual property rights enforcement," the negotiators' joint statement said.

"When it enters into force with all participants, the ACTA will formalise the legal foundation for a first-of-its-kind alliance of trading partners, representing more than half of world trade," it said.

"For those who have already signed, the next step in bringing the ACTA into force is the deposit of instruments of ratification, acceptance, or approval. The agreement will enter into force following the deposit of the sixth such instrument," the statement said.

ACTA negotiations were conducted on behalf of the EU member states by the European Commission, but a nominated signatory of the agreement has still to be picked and the agreement itself approved by the European Parliament, a Commission spokesperson told Out-Law.com last week. This process needs to be completed before ACTA can be signed on the EU's behalf, she said.

"The EU has not yet completed its internal procedures authorising the signature, therefore it will not be signing ACTA at this event," the Commission spokesperson said in at the time. "Neither will Mexico and Switzerland, since they did not conclude their domestic proceedings."

"For the EU, the domestic process for signature is that the Council [of Ministers] adopts a decision authorising a EU representative to sign ACTA. Since this required the translation of the treaty in all the EU languages, such decision has not yet been adopted. It may still require a couple of months for the EU to be able to sign ACTA. After the signature, the European Parliament will have to vote its consent of ACTA," it said.

According to a statement from the Japanese Government the EU will have until 1 May 2013 to sign the agreement.

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