Border Provisions in the Joint Japan-US Proposal for ACTA Require Seizures for Broad Range of Products, Not Just Counterfeits
May 22, 2009
Though trade officials have not made the negotiating texts of the Anticounterfeiting Trade Agreement public, a joint proposal from the US and Japan has been leaked. It is available online at wikileaks, and PIJIP has posted it on our webpage on ACTA: http://www.wcl.american.edu/pijip/go/acta .
The Japan-US Joint proposal includes provisions that enable border guards to seize certain goods, either at the request of IP owners, or on their own. The draft shows that more specific language allowing the seizure of “counterfeit trademark goods” (goods that are deceptively packaged to falsely show that they are manufactured by the right owner) has been deleted. It has been replaced with language obliging countries to seize any goods “suspected of infringing an intellectual property right.”
Article 2.7: Application by the Right Holder
1. Each party shall provide procedures for import, export [Option US: , and in transit (note 4)] shipments by which right holders may request the competent authorities to suspend the release (note 5) of goods suspected of infringing an intellectual property right suspected counterfeit trademark goods (note 6) or confusingly similar trademark goods, and suspected pirated goods (note 3) into free circulation. …
Article 2.78: Ex-Officio Action
1. Each Party shall provide that its customs authorities may act upon their own initiative, to suspend the release of goods suspected of infringing an intellectual property right. suspected counterfeit or confusingly similar trademark goods or suspected pirated copyright goods with respect to imported, exported [Option U.S.: , or in transit] goods including suspected counterfeit or confusingly similar trademark goods or suspected pirated copyright goods admitted to, withdrawn from, or located in free trade zones. [Option J.: Each Party shall endeavor to provide its customs authorities the same authority as the foregoing provision of this Article in respect of transit goods that are suspected counterfeit or confusingly similar trademark goods or suspected pirated copyright goods.
NOTE 3: The provisions of this section shall also apply to confusingly similar trademark goods, which means any goods, including packaging, bearing without authorization a sign that is similar to the trademark validly registered in respect of such or similar goods where it exists a likelihood of confusion on the part of the public between the sign and the trademark
NOTE 4: For purposes of this Section, in-transit goods means goods under "Customs transit" and goods "transshipped," as defined in the International Convention on the Simplification and Harmonization of Customs Procedures (Kyoto Convention).
NOTE 5: For purposes of this Section, where the competent authorities suspend the release of suspected counterfeit [Option J: or confusingly similar] trademark or pirated copyright goods, the authorities shall not permit the goods to be released into free circulation, exported, or subject to the other customs procedures except in exceptional circumstances.
NOTE 6: For purposes of this Section, counterfeit trademarks goods means any goods, including packaging, bearing without authorization a trademark that is identical to the trademark validly registered in respect of such goods, or that cannot be distinguished in its essential aspects from such a trademark, and that thereby infringes the rights of the owner of the trademark in question under the law of the country in which the procedures set out in this Section are invoked.
This overly broad language lumps fraudulently labeled goods with other products that may not be illegal, for instance, parallel imports. It could also include generics that were not authorized by the patent holder but do not violate IP laws in the jurisdictions where they are made or offered for sale. It is fair to predict that giving border guards the broad power to seize shipments of goods they suspect infringe IP will result in more situations like the highly controversial Dutch seizures of generic medicines traveling to Brazil and Nigeria.
Photo of border crossing placed on flickr.com under a creative commons license by tobo.