ISSUES AND CONCERNS IN
THE UGANDA COUNTERFEIT
GOODS BILL
MULUMBA, MOSES
Introduction
• Note: this presentation is based on the
draft Bill seen earlier in 2009
• A number of interventions have been done
and government meetings held over our
concerns
• Its likely that some of these issues are
under redress
Structure of the Bill
• It contains 23 sections, divided into 7 parts:
 Part I contains the purpose and definitions;
 Part II deals with the administration of the Bill;
 Part III provides details of inspections and the
powers of inspectors;
 Part IV outlines offences under the legislation;
 Part V is about Orders;
 Part VI deals with border measurers; and
 Part VII contains miscellaneous provisions.
The Uganda Counterfeit Goods
Bill, 2009
• This Bill was published to among others:
 Prohibit trade in counterfeit goods that infringe upon
protected IP rights
 To prohibit release of counterfeit goods into the channels
of commerce
 To create offences relating to trade in counterfeit goods
 To empower the commissioner for customs to seize and
detain suspected counterfeit goods
 To empower inspectors to appointed by the NBS to seize
and detain suspected counterfeit goods
Definition of Counterfeits
• Without authority of the owner of any intellectual
property right subsisting in Uganda in respect of
protected goods
 the manufacturing, producing, packaging, repackaging, labelling or making, whether in Uganda or
outside Uganda...
 the manufacturing, producing or making, whether in
Uganda or outside Uganda, the subject matter of that
intellectual property,
 the manufacturing, producing or making of copies, in
Uganda or outside Uganda, in violation of the author’s
rights or related rights
Problems in the definition
• This makes the Bill “TRIPS-plus” since
WTO-TRIPS Agreement limits “counterfeit”
to trademark infringements.
• Makes the authority IP holder absolute
Conflict with other Legislation
• Under S. 47(1) of the Copyright Act (100 currency points
of 4 yrs jail or both) Vs S.16 of Counterfeit Goods Bill
• S. 378 and 379 (counterfeit trademarks) of the Penal
Code relate to the selling of goods marked with a
counterfeit trademark it’s a misdemeanour going for
2years VS S.16
Shift in Territorial Nature of IPRs
• The Bill presents a significant shift in the application of
the territorial principle. By making reference to
counterfeiting activities done “in Uganda or outside
Uganda”,
• It suggests that if a product is patented in Uganda, but
the act of manufacturing the product took place in India
(where the product is not patented), the producer would
have committed an act of counterfeiting in Uganda.
Nature of Criminal Sentences
• Under S 16, the Bill prescribes fines and/or custodial
sentences of 5-10 years for people who in the course of
trade, are found in possession or control counterfeit
goods, and higher fines and jail terms for those found
manufacturers; and mandatory fines and imprisonment
for recurrent offenders
• TRIPS under Article 61 only requires criminal procedures
and penalties to be applied in cases of “wilful” trademark
counterfeiting or copyright piracy on a “commercial
scale”.
Wrongful Boarder Measures
• Another TRIPS-plus concern is that the Bill
provides extensive discretionary powers to the
inspectors, although the inspectors will be
unable to determine due to the lack of expertise
whether there is a violation of IPRs.
• Wrongful border measures will result in access
problems as seen in recent situations in which
EU customs officials seized medical shipments
in transit although no evidence of IPR violation
Infringing on the powers of the NDA
• Under Sections 3 and 4 the authority the
administering the anti-counterfeiting legislation is
vested in the Uganda National Bureau of
Standards (UNBS).
• UNBS would ordinarily not have the requisite
capacity to deal with counterfeit medicines and
trying to establish the needed capability by the
Bureau would be a duplication of effort.
• This also means that the inspectors appointed
under Section 6 should include some from the
drug regulatory authority
NDA’s Role Con’t
• In section 19,
the Commissioner of Customs is granted
wide discretion in determining what a
counterfeit product
without giving room to expert regulatory
agencies to participate in this
determination.
Gaps in the Process
• The first process had limited consultation
of the stakeholders
Ministry of Health
NDA
NMS
CSOs
Private sector
Some Advocacy Step:
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Struggles to get the Bill;
Bill analyzed and critical issues identified;
Petition to Speaker of Parliament;
Allegation letter to Special Rapporture;
Letter from special rapporture to govt;
Invitation by MoTrade;
Second version of the Bill developed –
Medicines mentioned
Steps Con’t
• Meeting with parliamentary committee on trade
• Expert discussion on the Bill – policy people
brought together;
• Resolutions on what should be done developed;
• Inter-ministerial meeting held – in view of
developing the next version.
Further Steps:
• Continuous follow up – with different government
departments;
• More awareness of the issue within CSOs;
• Media training to increase reporting;
• Having meetings with manufactures – UMA
seems to be pushing the Bill
• Follow up on the EAC policy and proposed
protocols;
• Follow up on the competition Bill and the
industrial Properties Bill.