TWN Info Service on Intellectual Property Issues (Aug08/01)
8 August 2008
Third World Network

Development: UN postal agency being roped in to enforce IPR agenda
Published in SUNS #6534 dated 8 August 2008

Geneva, 6 Aug (Sangeeta Shashikant and Riaz K Tayob) -- A United Nations agency dealing with postal services may soon be used to help to police or enforce violations of intellectual property rights in a move that has been little noticed by many developing countries' policymakers.

The 24th Universal Postal Congress (UPC) is meeting in Geneva from 23 July to 12 August 2008. The UPC is the supreme authority of the Universal Postal Union.

A Committee of the UPC, on 1 August, discussed the issue of counterfeit and pirated items sent through the post. Three proposals on this topic were made, and two of them were adopted by vote.

The discussions on the proposals showed that many countries, including some developed countries, were concerned that the postal services at national level were being roped in to fight against counterfeit products when they did not have the legal and other expertise or the scope to deal with this, including on determining whether a product is counterfeit or violates intellectual property laws.

Despite concerns raised by many countries, two of the proposals were adopted, because the UPU Committee makes decisions based on a vote (after discussions that are brief and limited, compared to the length of discussions allowed in other UN organizations), rather than by consensus (as is the case in most other UN organizations).

The proposals discussed were: (1) a Resolution 40 on "Counterfeit and pirated items sent through the post"; (2) an amendment to the UPU Convention on the list of articles prohibited through the post; and (3) an amendment to the Convention on sender's liability.

The proposed Resolution and the amendment on the list of prohibited articles were adopted by member states while the amendment concerning sender's liability was rejected.

According to a source from the UPU, there has been increasing pressure from the World Customs Organisation (WCO) to adopt proposals on counterfeiting and pirated items.

The WCO is among the international organizations that are being used to push forward an "Anti-Counterfeiting Agenda" drawn up by major developed countries. Other organizations are the World Health Organisation (WHO) and the World Intellectual Property Organisation (WIPO).

The UPU, with its Headquarters in Berne, is the primary forum for cooperation between postal-sector players. It has 191 member countries and is a UN specialised agency. It sets the rules for international mail exchanges and makes recommendations to stimulate growth in mail volumes and to improve the quality of service.

According to a policy expert on IPRs, Susan Sell, proponents of the IP maximalist agenda are using the concepts of "counterfeiting", "piracy" and "enforcement" in international organizations to push their agenda to set or enforce higher IP standards.

Sell, who is Director of the Institute for Global and International Studies and Professor of Political Science and International Affairs at George Washington University (USA), in a recent paper said the IP anti-counterfeiting and enforcement agenda involves hundreds of OECD-based global business firms and their foreign subsidiaries.

It also includes initiatives and programmes such as the Anti-Counterfeiting Trade Agreement (ACTA); Interpol's Standards to be Employed by Customs for Uniform Rights Enforcement (SECURE); the US Chamber of Commerce's (USCC) "Coalition against Counterfeiting and Piracy Intellectual Property Enforcement Initiatives: Campaign to Protect America"; the Security and Prosperity Partnership of North America (SPP); WHO's "International Medicinal Products Anti-Counterfeit Taskforce" (IMPACT); WIPO's Advisory Committee on Enforcement (ACE) discussions; bilateral and regional free trade agreements, investment treaties and Economic Partnership Agreements.

These new anti-counterfeiting and enforcement initiatives are the latest mechanisms to achieve the goals of what Sell calls the "IP maximalists", which is to "ratchet up" IP protection and enforcement worldwide, beyond the TRIPS Agreement. Part of the aim is to counter recent setbacks in raising IP standards at the multilateral level, and to counter public campaigns such as the access to knowledge and medicines movement, says Sell.

The proposals before the UPU signify that UPU is the latest addition to the "strategic forum shifting" for pushing forward the "Anti-Counterfeiting" Agenda.

Resolution 40 which was adopted (with an amendment proposed by Brazil), in its operative paragraphs: "Urges UPU member countries in the context of national legislation to encourage their postal administrations to:

-- take all reasonable and practical measures to support Customs in their role of identifying counterfeit and pirated items in the postal network;

-- cooperate with the relevant national and international authorities to the maximum possible extent in awareness-raising initiatives aimed at preventing the illegal circulation of counterfeit goods, particularly through postal services."

The preamble to Resolution 40 notes that "the postal channel is used, together with other distribution channels, for the sending of counterfeit and pirated items"; "that the POC Committee 3 Customs Support Project Group has carried out a study on UPU customs and security-related issues concerning intellectual property matters"; "that the results of the study revealed that postal administration have no legal competence in determining whether or not an item is a counterfeit or whether a customs declaration has been falsely completed; "that the Customs and experts on intellectual property rights are primarily responsible for determining whether an item is counterfeit"; that the legislation of member countries on how to deal with counterfeit and pirated items varies from country to country; and finally "that the above problems cause operational difficulties and legal problems for the countries concerned".

To implement the actions, the Resolution mentions several "performance indicators", including assistance given to designated operators to develop strategies at a national level in cooperation with national customs authorities; enabling postal administrations to learn risk-assessment techniques on how to identify counterfeit and pirated items in the postal network; reading materials developed in cooperation with the WCO; participation of the UPU at international forums to study/follow postal-related issues concerning IP infringements; developing an e-learning module in cooperation with the WCO.

Resolution 40 is a "Proposal of a General Nature" submitted by Postal Operations Council (POC) to the Committee. The WCO-UPU Contact Committee and the POC 3 Customs Support Project Group presented this Resolution to the POC for examination in January 2008.

France, in introducing the Resolution, said that the postal network was used to send counterfeit and pirated items, adding that it was the international customs organisation which raised the issue.

Germany, while supporting the proposal, stressed that postal operators were not enforcement authorities. It understood that there were pressures from the WCO and the EU to focus on counterfeiting and pirated items and that it was linked to risk management. This, it said, has to be done by the proper authorities, i. e. the custom authorities. Germany said: "We should not forget that we are not in the position to act as an enforcement authority". It should be an important topic of the customs support group and WCO-UPU contact committee, it added.

(The Customs Support Group was reconstituted on the basis of Bucharest Congress resolution C63/2004. Its overall objective is to raise the profile of Customs issues and to help UPU member countries prepare for regulatory changes addressing the issues. One area of activity it has focused on is closely following regulatory questions and where necessary, representing the interests of the UPU community at large with policymakers, at national and international level, paying attention to new regulatory requirements in various countries and regions, as well as potential intellectual property rights issues.

(The WCO-UPU contact committee is an official forum for cooperation between the WCO and UPU. Actions carried out include the possible effect of WCO's SAFE Framework of Standards, particularly the concept of authorized economic operator on posts, efforts to combat illegal transactions in counterfeit or pirated goods, including the possible formulation of regulations, WCO's input into efforts to develop UPU security standards and procedures, development of e-learning modules, updating joint WCO-UPU publications etc).

The US supported the concept but added that the implementation of the actions and goals should be incorporated into the postal security action group (PSAG) and should be limited to working through the PSAG in developing guidelines, procedures and tools that will combat the counterfeiter. Measures should, for example, be on how to use customs electronic information, how to address isolating shipment etc. PSAC should share the results with UPU customs group, it added.

The US said that it was the law and customs authorities and not the postal staff that should be concerned with enforcement. However, postal security and enforcement can and do coordinate with the law and enforcement authorities.

(PSAG is chaired by the US and acts to combat the use of the Post as a vehicle of terrorism, to launder money, improve postal security policies and develop dynamic security strategies etc).

China said that issues similar to the protection of IP and fighting against counterfeit have been discussed in the WTO and the WCO and because developing and developed countries have different understanding, the proposals in those agencies have not been accepted. It added that the issue should be studied further, and a hasty decision should not be taken. It stressed that measures taken should not constitute barriers to international trade and should be consistent with the WIPO Development Agenda.

A representative of the WCO said that it cooperated to enhance the training for members and postal administrations and so it generally welcomed and supported the proposal outlined. It also added that a study was being conducted to fight against counterfeiting.

Malaysia said that it was concerned with the terminology to support customs with "reasonable and practical measures" as it was not defined in the proposal, adding that it did not know the extent of the proposal. It also said that what Malaysia deems as sufficient may not comply with UPU's definition of the term.

It was concerned with the requirement to raise maximum awareness to prevent illegal circulation of counterfeit goods particularly through postal services. This suggested that the postal service was also responsible to prevent illegal circulation of counterfeit goods, although such circulation may not always be through the postal service. In many countries, whether an item is counterfeit lies with the body that is concerned with IP and so the language needs to be refined further.
Malaysia added that whatever that is done under the UPU has to be aligned with WIPO, and WIPO policies differ from country to country. It called for a further study of the proposal.

France clarified that "reasonable measures" meant that it was up to each country to decide and one could adapt to the needs of the state. It said the postal service can take part in the awareness raising, and the purpose would be to prevent the use of the postal service for counterfeiting.

Brazil proposed adding "in the context of the national legislation" having heard the concerns of China and Malaysia.

Saudi Arabia said that in its country, the issue of counterfeiting rested with the ministry of culture and not with customs and while there is cooperation between the UPU and the WCO, there are differences in the legislation. It also called for a study of the issue.

The International Bureau of UPU said that the Resolution was only a statement of intent and each country can interpret the resolution.

Despite several countries wishing to make statements on the issue, the Chair cut the debate short and called for a vote. In response, South Africa raised a motion to continue debate, which was put to vote, but the vote did not succeed, and as a result, the Resolution was put to vote.

95 countries voted in favour of the Resolution, 22 against and 20 countries abstained from voting.

The result of the outcome has now led several countries to file an appeal to the plenary session, when the Resolution comes up for final adoption. The appeal is co-sponsored by Egypt, India, Jordan, Libya, Malaysia, Pakistan, Saudi Arabia, South Africa, Syria, China and Turkey.

The amendments proposed are to the preamble of the Resolution as follows:

PP 1 (bis) -- "Without prejudice to the ongoing IP related work in other competent international organizations"

PP4 (alt) -- "Understanding that determination of counterfeit items is the responsibility of relevant national authorities, in accordance with national legislation"

On the proposal of PP4 (alt), the concern is that the original version will shift responsibility of determining IP infringement from a state's judiciary to customs, although the latter may not have adequate competence in the matter.

The proponents are confident that the appeal will go through.
France and Italy supported by Great Britain and Netherlands also introduced a proposal to amend Article 15 of the 2004 Bucharest Convention which pertains to the list of articles prohibited (to be sent by post).

They proposed to include in the list of prohibited articles: (1) a new para 2.1.2bis on "counterfeit and pirated articles"; (2) the word "other" in front of "articles the importation or circulation of which is prohibited in the country of destination"; and (3) a new paragraph 2.1.5bis on "where prohibited articles are identified, they shall be treated in accordance with the national legislation".

According to the proposal, the reasons for this amendment was to reduce the circulation of counterfeit and pirated articles between UPU members and show customs authorities that the UPU actively supports the WCO's current campaign to stamp out the production and circulation of pirated and counterfeit products, such as dangerous toys and electrical items, dangerous counterfeit medicines and brand goods, which do serious economic harm to domestic and international companies.

The proposal added that "with the introduction of the article, the sender will be obliged to take responsibility for the content of the item when she signs the CN 23 form".

In introducing the proposal, Italy dropped the amendment to include para 2.1.5bis.

The WCO strongly supported the proposal, adding that it will give a strong message to UPU to fight against counterfeit and pirated goods. It said that it has always been involved in the fight against counterfeiting and piracy particularly in the area of public health and security.

Canada raised several concerns with the amendment. It said that it is not within the expertise of postal employees to identify such items, adding that there were other authorities especially the custom authorities, which were better placed to deal with these items and thus it could not support the provision.

Bangladesh said that the implications for developing countries have to be kept in mind. For every item imported, a request for certificate is made and everything is stuck with the Customs. It said that this proposal should not be accepted since the previous proposal (i. e. the Resolution) has been accepted.

When the proposal was put to vote, there was agreement from 118 countries, with 3 countries opposing and 14 countries abstaining.

The third proposal before the Congress was to amend Article 23 of the Convention and to include a new paragraph 4 bis on sender's liability, i. e. "The sender of a pirated or counterfeit good shall be fully liable, under the legislation of the country of origin as well as that of the country of destination". The proposal was moved by France, supported by Great Britain and Italy.

Canada said that the proposal creates extraterritorial liabilities. It seems that we are creating civil offences and it is not clear whether it is creating criminal liability and there was a need to show mens rea (i. e. intention), it added. Considering that Resolution 40 had been adopted, the proposal on sender's liability be left for further consideration, it said.

Kazakhstan, New Zealand, China, and the US supported Canada. The US expressed concern with regards to the extraterritoriality of the law. Egypt said that the liability of the sender is set out in the country of origin and it was not aware of liability in the country of destination.

France said that it was important for the postal administration to establish the principle that they do not accept liability and it was possible to revisit this question. It added that what the proposal does is to establish a foundation of rules that applies equally and with no distortion from country to country.

The proposal was put to vote, and was rejected with 42 countries agreeing with the proposal, 53 countries disagreeing and 36 countries abstaining.

The Congress will close on 12 August. More than 2,000 delegates are attending the Congress, which is the supreme authority of the Union. Although the Congress' main function is legislative, the recent tendency has been to focus more on strategic and broad policy issues and the 2008 Congress will adopt a World Postal Strategy that will serve as a roadmap for member countries and UPU bodies until the next Congress in 2012.

(Note: Future editions of the SUNS will publish more articles on the role of other international organizations in IP enforcement as part of the anti-counterfeiting agenda.) +