November 18, 2010

ACTA includes confusingly similar trade mark goods

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The latest text of ACTA includes confusingly similar trade mark goods. This is bad for access to essential medicines.

In an answer to a parliamentary question, the EU Commission wrote: “b) on the inappropriate seizures of medicines on the strength of mere allegations that trademarks are similar – the introduction of the concept of “confusingly similar trademark is proposed by one of the ACTA partners but not supported by any of the other;”

But ACTA lacks a clear footnote like footnote 27 in the EU – Korea free trade agreement, limiting “goods infringing an intellectual property right” to “(a) counterfeit goods (…)”.

ACTA’s criminal measures are limited to counterfeit goods (as far as trademarks are concerned). Some of the civil trademark measures are limited to counterfeit goods. But ACTA’s Chapter 2 section 3 on border measures is not limited to counterfeit goods. ACTA’s border measures regard suspect goods (art 2.X.1, page 10), and the test is whether the suspect goods infringe an intellectual property right (article 2.10, page 11). In the border measures section, only article 2.11.2 refers to “counterfeit trademark goods”, all other articles refer to “suspect goods”, which are goods that infringe an intellectual property right. Article 2.10: “Each Party shall adopt or maintain a procedure by which their competent authorities may determine, within a reasonable period of time after the initiation of the procedures described under Article 2.X, whether the suspect goods infringe an intellectual property right.”

A final limitation, to counterfeit goods, is missing. So, confusingly similar goods are included. A footnote like in the EU – Korea FTA is missing.

ACTA does have a definition of counterfeit goods in Chapter 1, section B: “counterfeit trademark 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 Section 2, 3, 4 and 5 of Chapter2 are invoked;”.

The last part of this definition (“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 Section 2, 3, 4 and 5 of Chapter2 are invoked”) only says that there has to be an infringement first, this definition does not create infringements. The last part of the definition above is also present in the EU – Korea FTA (see below).

The only part missing is that the definition of counterfeit goods is not used, not invoked, in the border measures section (except for one subarticle).

Without a clear limitation to counterfeit goods, the border measures include confusingly similar trade mark goods. Like this, it also exceeds present EU legislation, Council Regulation (EC) No. 1383/2003, Article 2.1.

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The EU – Korea free trade agreement footnote in the border measures section (emphasis added):

“27 For the purposes of this Article, goods infringing an intellectual property right means:
(a) counterfeit goods, which are
:
(i)
goods, including packaging, bearing without authorisation a trademark identical to the trademark duly
registered in respect of the same type of goods, or which cannot be distinguished in its essential aspects
from such a trademark, and which thereby infringes the trademark holder’s rights;
(ii)
any trademark symbol (logo, label, sticker, brochure, instructions for use or guarantee document), even if
presented separately, on the same conditions as the goods referred to in subparagraph (a)(i); or
(iii)
packaging materials bearing the trademarks of counterfeit goods, presented separately, on the same
conditions as the goods referred to in subparagraph (a)(i);
(b) pirated copyright goods, (…)”