From TRIPS to ACTA : Towards a New 'Gold Standard' in Criminal IP Enforcement?

International intellectual property (IP) law has moved from the absence of any obligations on criminal IP enforcement in the ‘pre-TRIPS era’ to a flexible international minimum standard embodied in Art.61 of the WTO Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS). The recent WTO Panel Report in the China – IPRs dispute confirms the policy space WTO Members enjoy under the notion of ‘commercial scale’: the relative, situation-specific interpretation by the Panel leaves discretion to set thresholds for criminal liability taking into account domestic products and markets. While this paper agrees with this interpretative result, it finds that an important systemic flaw of the Panel’s interpretative exercise is the absence of any serious consideration of the treaties’ (i.e. TRIPS) object and purpose. As this paper argues, this flaw is endemic in IP related WTO Panel Reports. It is even more troublesome since WTO Members unanimously emphasised the importance of TRIPS objectives for the Agreement’s interpretation in the Doha Declaration on TRIPS and Public Health. The second focus of this paper is a preliminary analysis of the draft provisions of the Anti-Counterfeiting Trade Agreement (ACTA) on criminal IP enforcement and their impact on TRIPS. The paper shows that the current status quo in international criminal IP enforcement is likely to undergo significant changes. If ACTA will become the next international ‘gold standard in IPR enforcement’, it will replace the flexible minimum standard of Art.61 TRIPS with a set of detailed and comprehensive rules on criminal offenses, liability and penalties as well as other specific remedies. Apart from adding new offenses, ACTA defines the qualification ‘commercial scale’ to include, inter alia, all wilful copyright infringements that are quantitatively ‘significant’ or, qualitatively, for a commercial advantage or financial gain. The paper argues that this not only contradicts the interpretation in the WTO Panel Report, but diminishes much of the current ability to tailor criminal IP enforcement to the domestic environment