Transcript WIPO-SAIC INTERNATIONAL SYMPOSIUM ON GEOGRAPHICAL INDICATIONS Beijing, 26-28 June 2007 GEOGRAPHICAL INDICATIONS Ongoing negotiations/discussion in the WTO Thu-Lang TRAN WASESCHA Counsellor Intellectual Property Division WTO TLTW- 21 June 2007 Photos used for.

WIPO-SAIC
INTERNATIONAL SYMPOSIUM ON
GEOGRAPHICAL INDICATIONS
Beijing, 26-28 June 2007
GEOGRAPHICAL INDICATIONS
Ongoing negotiations/discussion
in the WTO
Thu-Lang TRAN WASESCHA
Counsellor
Intellectual Property Division
WTO
TLTW- 21 June 2007
Photos used for teaching purposes only
1
Structure of
the presentation

General remarks

Geographical indications (GIs)

Protection of GIs under the TRIPS Agreement

Ongoing negotiations and discussions:
Register of GIs for wines and spirits – Special
Session

GI extension – DG consultative process on
outstanding implementation issues


Dispute settlement
2
General remarks (1)
• World Trade Organization
• 150 Members
• 95% of trade in goods and services
• Importance of trademarks and GIs in trade;
distinctive (identification) signs, but also some
differences between them
• Reminder: TRIPS = minimum level
3
General remarks (2)

Complex and controversial issue both at national and
international levels; commercial, economic, sociohistorical, cultural dimensions. "New World – Old World"

Lack of harmonization at national level

Diversity of systems of protection: see WTO document
IP/C/W/253/Rev.1
Unfair
competition law
Consumer
protection rules
Certification
Sui
and/or collective marks
generis system
Others

The Uruguay Round: the "deal"; the "unfinished business"
4
TRIPS levels of protection
[Outside TRIPS: national laws, bilateral, regional
and other multilateral agreements]
________________________
TRIPS: Article 23 - higher
protection for wines and
spirits (minimum, mandatory)
(to be read with Art. 24
exceptions)
___________________
TRIPS: Article 22
(minimum, mandatory)
- Misleading/confusion test
- Unfair competition
5
Article 22
Article 22.1 Definition
"...indications which identify a good as originating in the
territory of a Member, or a region or locality in that
territory, where a given quality, reputation or other
characteristic of the good is essentially attributable to its
geographical origin."
• Reflected in the great majority of WTO Members’ laws
• Limited to goods
• Large definition
– Reputation, quality, “other” characteristic
– Protection of non-place names (Vino Verdhe for a Portuguese white
wine), of names of countries (Café de Colombia)
– Figurative GIs in certain countries
6
Basic level of protection:
Article 22.2 and 22.3
For all products other than wines and spirits,
• Members shall provide the “legal means” for interested
parties to prevent use which:
– misleads the public as to the geographical origin of the
good;
– constitutes an act of unfair competition (Art. 10bis Paris
Convention)
• Protection against registration as a trademark
– if use of the GI in the trademark would mislead the public
as to origin
• Importance of the words "legal means" =
freedom to choose the system of protection
7
Additional protection
for wines and spirits (Art. 23)
• Additional protection (“legal means”) against use
of a GI for wines on wines (and for spirits on
spirits) not originating in the place indicated by the
GI:
– without requirement to show misleading of the public or act
of unfair competition
– even where the true origin of the good is indicated; and
– even where the GI is accompanied by expressions, e.g. kind,
type, style, imitation
• Protection against registration as a trademark
with respect to wines and spirits not having the
origin indicated (no confusion/unfair competition
test required)
8
Article 24 exceptions
The protection under Article 23 is to be read in
conjunction with the exceptions under Article 24.
•
•
•
•
•
Generic terms (“customary”) (Article 24.6)
Names of grape varieties (Article 24.6)
Prior trademark rights (Article 24.5)
Certain other prior uses (Article 24.4) (grand-father clause)
Use of personal names (Article 24.8)
– No obligation to protect GIs which are not protected,
ceased to be protected or fallen into disuse in their
country of origin (Article 24.9)
– Exceptions cannot be used to refuse to negotiate or
conclude bilateral agreements aimed at improving
protection of GIs (Art. 24.1 built-in agenda)
9
Homonymous GIs
(Art. 22.4, 23.3)
Art. 22.4 (for all GIs)
– protection against use which, though literally true,
falsely represents to the public that the goods
originated in another country
Art. 23.3 (homonymous of GIs for wines): no
misleading test; subject to Article 22.4,
coexistence subject to:
– practical conditions under which the indication will be
differentiated
– taking into account the need to ensure equitable
treatment of the producers concerned and that
consumers are not misled
10
Mandate for register (1)
Article 23.4 built-in agenda
"In order to facilitate the protection of geographical
indications for wines, negotiations shall be undertaken
in the Council for TRIPS concerning the establishment
of a multilateral system of notification and
registration of geographical indications for wines
eligible for protection in those Members participating
in the system."
Only wines
11
Mandate for register (2)
 Doha Declaration, paragraph 18, first sentence:
"With a view to completing the work started in the
Council for Trade-Related Aspects of Intellectual
Property Rights (Council for TRIPS) on the
implementation of Article 23.4, we agree to negotiate the
establishment of a multilateral system of notification and
registration of geographical indications for wines and
spirits by the Fifth Session of the Ministerial
Conference."
 Extension to spirits; foreseen as an “early harvest" in the Doha
Round. Not achieved.
12
Extension: para. 18, 2nd
sentence of Doha Declaration
“Work programme
Trade-Related Aspects of Intellectual Property Rights
...
18. With a view to completing the work started in the Council for
Trade-Related Aspects of Intellectual Property Rights (Council for
TRIPS) on the implementation of Article 23.4, we agree to negotiate
the establishment of a multilateral system of notification and
registration of geographical indications for wines and spirits by the
Fifth Session of the Ministerial Conference. We note that issues
related to the extension of the protection of geographical
indications provided for in Article 23 to products other than
wines and spirits will be addressed in the Council for TRIPS
pursuant to paragraph 12 of this Declaration.”
13
Extension: para. 12 of
Doha Declaration
“Work programme
Implementation-Related Issues and Concerns
12. ... we agree that negotiations on outstanding implementation
issues shall be an integral part of the Work Programme... and
that agreements reached at an early stage in these negotiations
shall be treated in accordance with the provisions of paragraph 47
below. In this regard, we shall proceed as follows: (a) where we
provide a specific negotiating mandate in this Declaration, the
relevant implementation issues shall be addressed under that
mandate; (b) the other outstanding implementation issues shall
be addressed as a matter of priority by the relevant WTO
bodies, which shall report to the Trade Negotiations Committee,
established under paragraph 46 below, by the end of 2002 for
appropriate action.”
•
Different views on whether or not part of Doha round of
negotiations
14
Ongoing discussion/work
and proposals on GIs in the WTO
1.
2.
3.
4.
5.
Art. 63.2 notification/review +
Art. 24.2 review (examination
of implementation)
Negotiations on the
establishment of a multilateral
system of notification and
registration of GIs for wines
and spirits (Art. 23.4 + Doha)
Issues related to the
extension of the protection of
GIs provided in Art. 23 to
products other than wines
and spirits
[EC proposal in Agriculture
negotiations for "claw-back"
of use of certain GIs (Annex W
of JOB(03)/12)+ 12/Add.1 +
JOB(06)/190)]
Implementation of panel
decisions
1.
TRIPS Council
(regular session)
2.
TRIPS Council
Special Session
3.
GC/TNC + DG/DDG
consultations
4.
Committee
Agriculture, Special
Session
5.
DSB
15
TRIPS Council since Doha: regular
session (for GI extension up to 2002)
and Special Session
TRIPS
COUNCIL
REGULAR SESSION,
Review of legislation,
public health,
Biotech./TK/biodiversity,
GIs (extension until end 2002), etc.
SPECIAL SESSION
Negotiations /mult. System
of notif. & reg. of GIs
for wines and spirits
16
Work in the Special Session (1)
• The main actors in the Special Session:
– European Communities, supported by Switzerland and some
developing countries
– Joint Proposal Group: Argentina, Australia, Canada, Chile,
Colombia, Costa Rica, Dominican Republic, Ecuador, El Salvador,
Guatemala, Honduras, Japan, Mexico, New Zealand, Nicaragua,
Paraguay, Philippines, Chinese Taipei, US, etc.
• Hong Kong, China (for systemic reasons)
• Less or no interest from other countries, in particular from
non-producers/exporters
17
Work in the Special Session (2)
• Secretariat’s document TN/IP/W/12 in 2005: side-by-side
presentation of:
-TN/IP/W/8 by Hong Kong, China: in Annex A
Alternative Model for a Multilateral System of Notification and Registration of
Geographical Indications Established under Article 23.4 of the TRIPS
Agreement
- TN/IP/W/10 by the Joint proposal Group (Argentina,
Australia, Canada, Chile, Costa Rica, Dom. Rep., Ecuador, El Salvador,
Guatemala; Honduras, Japan, Mexico, New Zealand, Nicaragua, Paraguay,
Chinese Taipei and US): Draft Decision by the Council for TRIPS
- TN/IP/W/11 by the European Communities: in Annex:
Multilateral System of Notification and Registration of Geographical
Indications.
18
Work in the Special Session (3)
• Addendum to the side-by-side document
TN/IP/W/12: TN/IP/W/12/Add.1 and Corr.1
• Factual “Compilation of Points Raised and Views
Expressed on the Proposals” since September 2005.
• Structure of Addendum paper: same headings as
used for the side-by-side presentation of the
proposals (without prejudice to delegations’ positions
with regard to issues under the headings and to the
final structure of the system).
19
Work in the Special Session (4)
TN/IP/W/12/Add.1 (continued)
Issues raised or addressed, for example:
• Participation: voluntary or mandatory?
• Notifications (discussions based on Chair’s statement at
19 July 2006 meeting on “possible elements” for the
notification phase)
• Registration, including reservations
• Consequences / legal effects of registration
• In participating Members
• In non-participating Members
• Fees and costs, in particular for developing countries
20
Work in the Special Session (5):
comparison of proposals on 2 key issues
TN/IP/W/8
Hong Kong, China
LEGAL EFFECTS
For participating
Members only: some
legal effects
(presumption of
ownership, compliance
with GI definition and
protection in country of
origin).
TN/IP/W/10
Joint Proposal Group
TN/IP/W/11
EC
LEGAL EFFECTS
For participating Members
only:
Commitment to provide in
their procedures the
provision to consult the
register (searchable
database), when making
decisions on trademark
and GI protection
LEGAL EFFECTS
For participating Members:
Opposition for a certain time
limit at multilateral level on
certain grounds (noncompliance with GI
definition, misleading
homonymous GIs,
genericness). If e.g. no
opposition or opposition.
withdrawn  irrebuttable
presumption.
Rebuttable presumption at
any time for other grounds
(e.g. prior trademarks;
grandfathered and good
21
faith use)
Work in the Special Session (6):
comparison of proposals on 2 key issues
TN/IP/W/8
Hong Kong, China
TN/IP/W/10
Joint Proposal Group
TN/IP/W/11
EC
No legal effects on nonparticipating Members
Non-participating
Members are encouraged
to consult database
For non-participating
Members: if no opposition
in certain cases (non
compliance with GI
definition; not misleading
homonymous GIs;
genericness)
irrebuttable presumption
PARTICIPATION
Legal effects only in those
Members participating in
the register
PARTICIPATION
Legal effects mandatory
only in those opting to
participate in the register
(“eligible for protection in
those Members
participating in the
system”).
PARTICIPATION
Legal effects in all
Members, otherwise the
system would not be
“multilateral”.
22
Extension: the proposal
= Extension of the higher protection of GIs for wines
and spirits to other products.
• What do proponents want?
(see TN/C/W/14/Add.2, JOB(05)/61/Add.2. Also EC
proposal TN/C/W/26)
– Article 23 to apply to all GIs
– Article 24 exceptions to apply mutatis mutandis (by
analogy)
– Multilateral register (of GIs for wines and spirits) to
apply to all GIs
23
Extension: the main actors
• Main actors:
– EU, Switzerland, certain DCs (Guinea, India, Jamaica,
Kenya, Morocco, Pakistan, Sri Lanka, Thailand, Tunisia,
Turkey, etc.)
– Argentina, Australia, Canada, Chile, Colombia, Ecuador,
Guatemala, New Zealand, Chinese Taipei, United
States, etc.
• Coverage for products: agricultural, foodstuffs,
handicrafts, industrial products?
24
Extension: process
since Doha (1)
• Competition for the hearts and minds of the "agnostic"
Members
• TRIPS Council regular session. End 2002: no agreement on
report as mandated by paragraph 18, second sentence of
the Doha Declaration
• Topic forwarded to TNC as part of "outstanding
implementation issues"
• DG DDG's technical level consultations
• Secretariat’s compilation of points made and issues
(WT/GC/W/546 -TN/C/W/25)
• List of 91 questions raised by delegations, drawn by DDG
Yerxa on his own responsibility
• Positions unchanged and polarized
25
Extension: summary of
process since Doha
•
General Council
TNC
TRIPS
COUNCIL
Regular session
until end of 2002
DG /DDG
Consultations
26
Examples of issues raised in
relation to GI extension (1)
WT/GC/W/546 – TN/C/W/25 (May 2005):
Secretariat’s compilation. Points made, for
example:
• General points:
–
–
–
–
–
–
Mandate?
Linkages with other initiatives regarding GIs?
Justification for the discrimination between product categories?
Rationale for GI extension?
Cultural diversity?
Objectives, scope, content and implications to clarify?
• Protectable subject matter
– Territoriality principle
– Country names?
27
Examples of issues raised in
relation to GI extension (2)
WT/GC/W/546 – TN/C/W/25 (May 2005)
• Protectable subject matter (cont’d)
–
–
–
–
–
–
–
Rules of origin – indications of source – GIs
Blended products?
Non-geographical (non-place) names?
Traditional expressions?
Plant varieties, plant names, fanciful terms?
Non-product-related process and production methods?
Article 24 exceptions, in particular genericness?
• Possible benefits to GI holders?
–
–
–
–
–
Fairness?
Rural development?
Quality production?
Marketing tool?
Easier enforcement and no risk of GIs becoming generic?
28
Examples of issues raised in
relation to GI extension (3)
• Costs to non-GI holders?
–
–
–
–
Fairness?
Interests of prior trademark holders and other third parties?
Re-branding and re-labelling costs?
Third country markets?
• Consumers?
–
–
–
–
–
Less or more risk of confusion?
Better or less choice?
Anti-competitive impact?
Less quality because lack of competition?
Impact of re-branding and re-labelling on prices for consumers?
29
Examples of issues raised in
relation to GI extension (4)
• Administrative costs and burdens?
–
–
–
–
New legislation/institutions?
Procedures for acquisition of GI rights?
Trademark examinations?
Enforcement?
• Balance of rights and obligations?
30
GIs (register and extension):
where are we now?
• Informal consultations of certain Members by
Chairman Ahmad and DDG Yerxa, individually or
in small groups (of like-minded countries)
• Process of informal consultations between
Members (without the Chair) in various formats
and composition
• GIs and the overall negotiations
31
How do Members negotiate in the TRIPS Council (example:
negotiation of Paragraph 6 System (public health))
Formal
session*
General
Council
Open-ended
informal
session*
If needed,
Green
Room
with DG*
Groups
meeting
in parallel
(without the Chairman
and the Secretariat)
Work in
small groups*
(most active
Members)
“Confessionals”*
(with a Member)
Regional groups*
(e.g.: GRULAC,
ASEAN, ...)
TLTW-JW-2007
* With the Chairman of the TRIPS
Council
32
Dispute settlement (1)

Complaints by US and Australia
EC
Regulation 2081/92 on the protection of
geographical indications and designations of origin for
agricultural products and foodstuffs.

WT/DS174/R and WT/DS290/R of 20 April 2005; TRIPS
and GATT concerned

Two main issues:


National treatment in several aspects

Relationship between GIs and prior trademarks
EC‘s implementation of panel decisions: New Council
Regulation (EC) N° 510/2006 of 20 March 2006, in force on
31 March 2006 (WT/DS174/25/Add.3 and
WT/DS290/23/Add.3)
33
Dispute settlement (2)
Discrimination
Availability
of protection: equivalence and reciprocity
conditions violate TRIPS Art. 3.1 (less favourable
treatment to non-EC nationals). By providing "formally
identical" but in fact different procedures based on the
location of a GI, the EC modified the "effective equality
of opportunities" between different nationals to the
detriment of non-EC nationals + Inconsistency with
GATT Article III:4.
Application
procedures: requirement for a national to
file an application to the EC  treatment less favourable
treatment to other nationals in violation of TRIPS Article
3.1 TRIPS (no guaranteed access to EC system) +
Inconsistency with GATT Article III:4.
34
Dispute settlement (3)
Discrimination
Objection
procedures: non EC-nationals cannot
directly object to applications in the EC + Inconsistency
with GATT Article III:4
Inspection
procedures: obligation for non-EC nationals
to provide a declaration that the inspection structures
were established on the territory of their countries 
"extra hurdles“+ Inconsistency with GATT Article III:4
35
Dispute settlement (4)
Relationship between GI and prior trademarks
("coexistence")

Not examined under Article 24 exception

Article 16.1 relates to right against certain uses, including
uses as a GI  EC Regulation inconsistent with Art. 16.1
as it limited the availability of such rights to trademark
owners. However, EC Regulation consistent with Article
17, which provides limited exceptions to Art.16.1, provided
such exceptions take account of the legitimate interests of
trademark owner and third parties.
36
Dispute settlement (5)
Cross-retaliation (Art. 22.6 DSU)
 Suspension of obligations authorized 15 times
 "Cross-retaliation" authorized in EC – Bananas III
(Ecuador) (WT/DS27/ARB/ECU, of 23 March 2000)
Article 21.5 compliance panel
Article 22.6 arbitration on the level of suspension
 "Cross-retaliation" can be authorized only if suspension of
concession in the same sector/agreement not practicable
or effective. In other words, first to be taken in goods and
services.
 TRIPS areas requested by Ecuador: copyright/related
rights; geographical indications; industrial designs
37
Final remarks

GIs:
great
economic/trade stakes but also historical and
socio-cultural dimensions
sensitive,
controversial at international and national
levels
lack
of harmonization at national level
differing
interpretations regarding mandate
difficulties
in discussion in the WTO because of
linkages with other areas of negotiations, in particular
Agriculture
38
Consult our website
www.wto.org
Other questions to:

[email protected]; tel.:
+41 22 739 57 05; # 3166
39