Counterfeit Versus "Confusingly Similar" Products
May 7, 2010
The current Anti-Counterfeiting Trade Agreement (ACTA) text calls for products to be stopped at borders if they are suspected on prima facie – i.e. very little – evidence of being "confusingly similar" to trademarked products. Health advocates worry that this ambiguous term will be misused by border officials to detain and delay legitimate drugs.
“Confusingly similar” is a much lower standard for trademark infringement than that for true counterfeits, which are defined by both the World Trade Organization and the World Health Organization as products that are intentionally identical with a purpose to deceive. True counterfeits are meant to be mistaken for the brand-name products which they copy.
The exact meaning of “confusingly similar” in ACTA is not clear. In U.S. courts, determining whether a label infringes a trademark by being confingly similar is a multi-prong fact intensive analysis. How will border agents define the term when analyzing generic product labels? The results are likely to be very different in different countries.
As an example, are these two products confusingly similar? …
Recent events highlight the importance of clear rules determining what kinds of medicines can be seized at borders and for what reasons. Last year, EU customs agents improperly seized multiple shipments of goods in transit that were traveling from India to other countries; these goods did not infringe any intellectual property rights in either the country of origin or destination. ACTA could lead to more illegitimate seizures of medicines, threatening the continuous supply of essential generic medicines.
1. Anti-Counterfeiting Trade Agreement. Public Predecisional/Deliberative Draft. Footnote 22: "The provisions of this section shall also apply to confusingly similar trademark goods..."
2. World Trade Organization Agreement on Trade Related Aspects of Intellectual Property Rights; Footnote 14: “‘counterfeit trademark goods’ shall mean any goods, including packaging, bearing without authorization a trademark which is identical to the trademark validly registered in respect of such goods, or which cannot be distinguished in its essential aspects from such a trademark…”
3. World Health Organization Fact Sheet N°275: Generic and Counterfeit Medicines: “Counterfeit medicines are medicines that are deliberately and fraudulently mislabelled with respect to identity and/or source.”
Image of medicines by Amy Kapczynski.