455. The representative of South Africa said that Members' enforcement obligations of intellectual property rights were outlined in Article 41 of the TRIPS Agreement, which stated that Members shall ensure that enforcement procedures as specified in this part are available under their law so as to permit effective action against any act of infringement of intellectual property rights covered by this agreement, including expeditious remedies to prevent infringements and remedies which constitute a deterrent to further infringements. These procedures shall be applied in such a manner as to avoid the creation of barriers to legitimate trade and to provide for safeguards against their abuse. South Africa had enacted its Counterfeit Goods Act in 1997, which was in line with the minimum standards required by TRIPS.
456. He said that the standards required in ACTA lay far above these minimum standards. While the TRIPS Agreement required criminal enforcement provisions only for wilful trademark and copyright infringement on a commercial scale, ACTA expanded the definition of commercial scale to potentially incriminate the non-commercial use of allegedly infringing goods or services. He said that ACTA contained a proposal to define "commercial scale" to include activities that had no direct or indirect motivation of financial gain. ACTA also extended criminal enforcement measures to cases of wilful use of labels or packaging to which a mark had been applied that was identical to a registered trademark or which could not be distinguished from a trademark in its essential aspects. This could also apply to legitimate business without any intent of deceiving consumers. For instance, labels of generic medicines were made similar to branded medicines and used the same words for giving information about active ingredients, warnings and indications.
457. ACTA required parties to empower their judicial authorities to issue injunctions against an infringer of any intellectual property rights. However, it did not make an exception from injunctive relief for cases of innocent infringement by a person who acquired or ordered the protected subject matter prior to knowing or having reasonable grounds to know that they were involved in the infringement. This was an important exception to injunctive relief for intellectual property infringement that was available under Article 44.1 of the TRIPS Agreement. Thus, by signing on to ACTA, a country would not be able to use this exception provided for in the TRIPS Agreement. Not only did ACTA undermine the exceptions to injunctions that were permitted under the TRIPS Agreement, it also expanded the scope of injunctive relief beyond the TRIPS Agreement to intermediaries. Under ACTA, Parties must ensure that right holders could apply for injunctions against infringing intermediaries whose services were used by a third party to infringe an intellectual property. The word "intermediaries" was not defined and could be applied to a broad spectrum of intermediaries involved in providing an intellectual property protected service, or in producing or distributing intellectual property protected goods. This could apply to generic drug producers and suppliers, internet service providers (ISPs), libraries, universities and schools.
458. He said that ACTA expanded the scope of damages that might be awarded in civil enforcement proceedings, such as injunctions, to innocent infringers. This undermined the exceptions available for innocent acts of infringement under Article 45.1 of the TRIPS Agreement. ACTA also stated that in determining the amount of damages for intellectual property infringement, judicial authorities shall consider "any legitimate measure of value submitted by the right holder, which might include lost profits, the value of the infringed good or service, measured by the market price, the suggested retail price, or the profits of the infringer that are attributable to the infringement". Another crucial departure from the TRIPS Agreement was that, in the ACTA section on civil enforcement, there was no provision on indemnification of the defendant against abuse of the enforcement proceedings as available under Article 48 of the TRIPS Agreement. Hence, while ACTA expanded the scope of enforcement proceedings that might be used by the right holder, it provided no safeguard indemnifying the defendant against abuse of such proceedings. Rather, innocent infringers and third parties were brought within the ambit of enforcement actions.
