Dear all,

You’ll find below the reply of the Swiss government (Minister of Justice and Police, from which the Swiss IP-Institute depends) to a letter and a critical analysis on ACTA we sent last November, asking the Swiss government and the foreign affairs parliamentary commission to reject ACTA.

This is just the beginning of a long process : the agreement will be open to signature by the government (Federal Council) as of April 2011 during a period of maximum two years, subject to the agreement by all political parties represented in the executive, and then submitted to the Parliament for ratification. We will therefore have other opportunities to raise the issue in Switzerland.

All documents and correspondence are in French, the text below is therefore an unofficial ‘quick & dirty’ translation for dissemination purposes. If anyone would like a scanned copy of the original letter in French, please contact me.

Best,

Patrick Durisch – Berne Declaration

Swiss Confederation paper head
The Head of the Federal Department of Justice and Police

M. Patrick Durisch
Berne Declaration

Berne, 13th of January 2011

Re: Anti-Counterfeiting Trade Agreement (ACTA) – Letter from the Berne Declaration and Alliance Sud of the 12th of November 2010

Dear Sir,

I thank you for your letter and your critical analysis of the Anti-Counterfeiting Trade Agreement (ACTA) in its version of end of September (Tokyo round). I appreciate your interest related to this agreement as well as the opportunity for dialogue on the issues you raise.

I would like to go back hereafter over your main concerns and critics.

1.       Objective and aim of ACTA: questions related to access to medicines and public health

The issue of access to affordable medicines in developing countries – under which angle you place your critical analysis – is also part of my concerns. I also share your point of view that ACTA will not allow to provide a solution to the problem of substandard quality medicines circulating around the world. ACTA’s objective, however, is different.

Indeed, the initiative has arisen from a group of countries willing to increase the effectiveness of intellectual property rights implementation by negotiating an agreement that foresees rights enforcement as well as harmonised border measures, in order to have more means at disposal to combat large scale commercial counterfeiting and piracy activities. These countries wish, through this agreement, to intensify their cooperation in this field.

When the negotiating parties claim that ACTA would also contribute to the safety and health of the consumers, by strengthening the fight against counterfeiting and piracy, they do not think in the first place of medicines but of all the other common products which are today targeted by counterfeiters, such as counterfeited toothpaste containing plaster or fake, defective spare parts destined to the car and aviation industries that put the life of passengers in danger.

In your analysis, you refer to incidents that were taking place in the last two years in countries of the European Union, whereby customs authorities had temporarily retained legal generic medicines in transit destined to developing countries. You fear that the border measures foreseen by ACTA would lead to a multiplication of this type of incidents in the future. Your concern is legitimate: measures to fight against counterfeiting and piracy should not go beyond its targeted aim. Switzerland takes this concern very seriously. In order to avoid that ACTA would favour this type of incidents with medicines in transit, the negotiating parties have agreed to exclude patents from the field of application of border measures. At the end of the Tokyo round, the parties have in addition agreed on the possibility to exclude patents as well from the field of application of civil enforcement measures. In other words, ACTA in its final version does not contain anymore binding provisions that are applicable to patents. Besides, each State party will remain free to decide whether its national legislation foresees the enforcement or not of border measures to goods in transit. As far as trademarks are concerned, it is up to the producer of generics to minimise the risks of confusion by the customs between the original medicine and the generic, by selecting a name and a packaging that are sufficiently distinguishable from the original product.

2.       Obligations of right owners, customs interventions, adjudications: questions related to the national and international right

Border measures are important means to combat counterfeited and pirated goods, as they allow seizing fake goods before they circulate in the national market. ACTA takes this into account in its provisions, but it does not extend the competence for intervention of customs authorities beyond border measures. In Switzerland, the question of deciding whether or not there is a violation of intellectual property right will continue to depend on the free appreciation of a judge. Neither will ACTA modify the division of tasks between customs authorities and right holders. Indeed, customs authorities will continue to retain ex-officio, during a certain time, suspected goods, but not beyond the – short – duration foreseen in the TRIPS Agreement, during which the right holder must refer to the justice to assert a violation of his rights. If the right holder does not act within this time duration, customs must release the retained goods. Counterfeited and pirated goods that have been retained at the customs can be destroyed through the simplified procedure – applicable in the Swiss law as soon as the 1st of July 2008 – only if the holder or the proprietor gives his consent, failing which the right holder will have to follow the usual judiciary path.

Your critical analysis also mentions your fear that the application of certain ACTA provisions related to the responsibility of third parties would expose intermediaries involved in the production or the distribution of medicines – for example non-governmental organisations – to unjustified damages claims, whilst ignoring whether or not a violation of intellectual property rights has taken place. This is absolutely not the case. As foreseen by the Swiss legislation, a damage claim is dependent on the condition of having participated wilfully or by negligence to a violation. Moreover, this condition does not relate only to intellectual property right. ACTA does not modify whatsoever the Swiss legal provisions that are applicable in this field.

In your analysis, you pretend that by strengthening the fight against counterfeiting and piracy through border measures and the right enforcement standards that they foresee, ACTA constitutes an attempt to establish maximalist norms to defend intellectual property that go beyond the targeted aim. Compared to the WTO TRIPS Agreement, ACTA, in its current version resulting from the last round of negotiations held in Tokyo, foresees stricter norms in terms of right application only in some cases where parties to ACTA have estimated that developments since the enforcement of the TRIPS Agreement in 1995 had to be taken into account (for example counterfeiting and piracy activities on the Internet) or in situations where minimum multilateral norms had proved to be insufficient (for example limiting the field of application of border measures to importations instead of encompassing also exportations). The line of negotiations that has led to the present text is not maximalist, simply because a consensus had to be reached among a heterogeneous group of 38 industrialised countries and developing countries from five continents taking part in the negotiations. In its current version, ACTA does not go beyond the Swiss law either, and therefore totally fulfils the mandate of the Federal Council. On the contrary: ACTA remains well within our legislation in various domains. On this subject, I can assure you that the dispatch related to this agreement will include a comparison of right rules as foreseen respectively by the current Swiss legislation, the TRIPS Agreement and ACTA, which will contribute to clarify the differences between these agreements.

Regarding your concern to see the coordinating committee of State parties foreseen by the agreement (ACTA Committee) proceed to amendments and decide on stricter norms upon the enforcement of the agreement, I must underline that, in conformity with the Swiss constitutional right, any future modification of the agreement creating new obligations for our country will have to be submitted to the Parliament for examination and approval before it becomes binding for Switzerland.

3.       Transparency of negotiations, information and consultation of the Parliament and interested stakeholders

You criticise the ACTA negotiations has having been conducted behind closed doors and in an undemocratic way. Retrospectively, I concede that the negotiating parties have underestimated the interests of the public for this agreement, and thereby the necessity to inform on this subject. Besides, the negotiating parties have not sufficiently informed as a group, thereby loosing the opportunity for sharp outlines of the agreement. We must draw lessons from these shortfalls. If it is true that parties have not been sufficiently reporting on the negotiations as a group, each party has done it individually at the national level. Thus, in Switzerland, the Federal Institute of Intellectual Property (IPI) has since the beginning of the negotiations informed after each round of talks about the progress of the discussions through its website[1]. As soon as a draft agreement was available, i.e. at the end of 2009, the IPI has also convened the stakeholders to information and consultations meetings to report about the state of negotiations, listen to the points of view of the participants, and answer to their questions. Representatives of the Berne Declaration and of Alliance Sud have taken part to three meetings organised by the IPI in 2010. Related to this, please allow myself to bring to your attention the frequently asked questions posted on IPI’s website[2]. The Federal Council has also regularly informed the parliamentary Foreign Affairs Committees of the National Council and of the Council of States on the negotiations and the progress achieved. Finally, given the marked interest shown by the civil society, the Swiss delegation has strived for the publication of the draft agreement, which was eventually done last April and then again this autumn, at the end of the Tokyo negotiation round.

Best regards.

Yours sincerely,

Simonetta Sommaruga
Federal Councillor

[1] https://www.ige.ch/en/legal-info/legal-areas/counterfeiting-piracy/acta.html

[2] https://www.ige.ch/en/legal-info/legal-areas/counterfeiting-piracy/acta.html#c4032