Chapter 2 The Anti-Counterfeiting Trade Agreement in context
The Anti-Counterfeiting Trade Agreement (ACTA) is an agreement
designed to strengthen intellectual property (IP) standards around the world.
ACTA is based on the framework for dealing with matters negotiated in
the Trade-Related Aspects of Intellectual Property Rights (TRIPS)
Agreement negotiated as part of the Uruguay Round of the General Agreement
on Tariffs and Trade (GATT). However, ACTA has been established outside the
existing TRIPS mechanisms because, according to the National Interest Analysis
...existing IP enforcement standards in the World Trade
Organization (WTO) have been insufficient to diminish the growth in
international trade in counterfeit and pirated materials.
ACTA focuses on trademark and copyright enforcement. It establishes a
legal framework for IP enforcement containing:
n provisions on civil
n border measures;
n criminal enforcement
in cases of wilful trademark counterfeiting or copyright piracy on a commercial
n enforcement in the
digital environment for infringement of copyrights; and
n provides for enhanced
enforcement best practices and increased international cooperation.
The agreement emphasises that the proliferation of counterfeit and
pirated goods, as well as of services that distribute infringing material,
undermines legitimate trade and sustainable development of the world economy,
causes significant financial losses for right holders and for legitimate
businesses, and, in some cases, provides a source of revenue for organized
crime and otherwise poses risks to the public.
The idea of negotiating the ACTA was conceived in 2006 by the United
States (US) and Japan as a new tool for combating counterfeiting and piracy.
Preliminary talks, involving Canada, the European Union (EU), Japan,
Switzerland, and the US, took place in 2006, leading to an October 2007
announcement of their intention to begin negotiating the agreement.
The ACTA negotiation concluded in October 2010, nearly three years after
it began, and negotiating parties released a final text of the agreement in May
2011. The negotiating parties were: the US, Australia, Canada, the EU and its
27 member states, Japan, South Korea, Mexico, Morocco, New Zealand, Singapore,
In the opinion of the Australian Department of Foreign Affairs and Trade
(DFAT), ACTA sits within the TRIPS Agreement framework, with a core membership which
is expected to grow:
I would say that this is an initiative that sits firmly
within the TRIPS framework. It builds upon the TRIPS agreement and it has been
crafted to allow for wider membership of WTO members over time. Multilateral
negotiations—in the case of the WTO there are 153 countries—do take some time
and they are complex endeavours, as we have seen over the years. It is not
unusual for a group of members to come together, articulate an international
standard in a particular policy area and bring that to the wider membership
with a view to encouraging wider membership over time. And that is the case
with this initiative and it was in fact the case with the negotiation of the
multilateral agreement on TRIPS. They do start with a smaller nucleus of
countries, typically. They do not tend to organically appear across the entire
membership of the multilateral system.
Reasons for Australia to take the proposed treaty action
According to the NIA, ACTA offers an effective mechanism to
internationalise existing Australian IP standards of enforcement, providing
Australian right holders and owners with the benefits of wider adoption
overseas of the standards that are applied to IP enforcement in Australia.
Australian IP owners include producers of music, films and written work
protected by copyright, as well as producers of brand name goods sold under
trade mark. Trade in counterfeit and pirated material is harmful to Australia
as it undermines the market for legitimate, Australian-owned IP by diverting
consumers towards counterfeit or pirated versions of legitimate products. It
can adversely affect the viability of Australian IP-intensive exports, weaken
the incentive to invest in innovation, and expose consumers to potentially
sub-standard or dangerous products.
According to the NIA, supporting global cooperative efforts to reduce
the production and international trade in counterfeit and pirated products and
encouraging Australia’s trading partners to comply with ACTA would help to
limit the importation of such goods into Australia. Compliance with ACTA would reduce
the burden on enforcement agencies and protect Australian-owned IP in overseas
markets. It would also alleviate pressure on Australian businesses forced to
protect their IP rights in Australian and foreign courts.
As ACTA obligations are directly aligned with Australia’s IP enforcement
standards, any expansion in ACTA membership would bring more countries into
conformity with Australian standards. As an ACTA Party, Australia could
advocate the benefits of participation in ACTA to improve enforcement in our
The NIA encourages the early ratification of ACTA, so as to enable
Australia to play an influential role in the ACTA Committee, which will
consider, inter alia, rules and procedures for reviewing the
implementation and operations of ACTA.
ACTA contains 45 Articles divided into five chapters, namely:
n Chapter I (Initial
Provisions and General Definitions, Articles 1-5);
n Chapter II (Legal
Framework for Enforcement of Intellectual Property Rights, Articles 6-27);
n Chapter III
(Enforcement Practices, Articles 28-32);
n Chapter IV
(International Cooperation, Articles 33-35); and
n Chapter V
(Institutional Arrangements, Articles 36-45).
The majority of ACTA’s obligations are contained in Chapter II.
Article 6 states that Parties must ensure that enforcement procedures
are available in domestic law so as to permit effective action against
infringements of IP rights covered by ACTA. These procedures are to be applied
so as to avoid the creation of barriers to legitimate trade and to provide for
safeguards against their abuse.
According to the NIA, Australia meets all obligations set out in ACTA
through legislation already in force and existing common law. Commonwealth
legislation through which ACTA will be implemented includes: the Copyright
Act 1968 and Copyright Regulations 1969; the Trade Marks Act 1995
and Trade Marks Regulations 1995; the Customs Administration Act 1985;
the Federal Court of Australia Act 1976 and Federal Court
Rules; the Criminal Code Act 1995; the Crimes Act 1900; the Proceeds
of Crime Act 2002 and the Commerce (Trade Descriptions) Act 1905.
ACTA implementation would also be subject to obligations under the Privacy
Trade-Related Aspects of Intellectual Property Rights
The TRIPS Agreement is a framework of rules, principles, and disciplines
associated with IP ownership.
IP rights can be defined as the rights given to people over the
creations of their minds. They usually give the creator an exclusive right over
the use of his/her creations for a certain period of time. IP rights are usually
divided into two categories:
n Copyright and
rights related to copyright: i.e. rights granted to authors of literary and
artistic works, and the rights of performers, producers of phonograms and
broadcasting organizations. The main purpose of protection of copyright and
related rights is to encourage and reward creative work. 
property rights: This includes (1) the protection of distinctive signs such
as trademarks and geographical indications, and (2) industrial property
protected primarily to stimulate innovation, design and the creation of
technology. In this latter category falls inventions (protected by patents), industrial
designs and trade secrets. 
For the purposes of the TRIPS Agreement, IP refers to:
... all categories of intellectual property that are the
subject of Sections 1 through 7 of Part II
of the agreement (Article 1:2). This
includes copyright and related rights, trademarks, geographical indications,
industrial designs, patents, integrated circuit layout-designs and protection
of undisclosed information.
Context for the negotiation of TRIPS
The GATT Uruguay Round of multilateral trade negotiations was initiated
by the US in 1985 and was formally launched in September 1986 at Punta del
Este, Uruguay. The Round was launched at a time when significant structural
shifts had occurred in most of the industrialised countries. Service industries
had grown and communication technologies were revolutionised. It also came at a
time when there was declining earnings and growing protectionism in
international agricultural markets.
The outcome of the Uruguay Round of negotiations has been colloquially
referred to as the ‘Grand Bargain’ - an agreement between developed and
developing countries that accepted the inclusion of services in the GATT in
exchange for concessions to reduce protections for agriculture in developed
The TRIPS Agreement was one of the mechanisms used to bring services
into the GATT.
The failure to deliver the agricultural concessions of the Grand Bargain,
is widely considered by GATT observers to be the reason behind the difficulties
now associated with TRIPS.