Minutes of meeting

X.implementation of article 23.4

2.The representative of the European Communities, referring to the comparative table (document IP/C/W/259), said that there were, so far, two comprehensive proposals on the table: the EC proposal and the "joint proposal". There was, in addition, some draft language submitted by Hungary on some specific aspects, in particular, possible opposition and challenge procedures. The comparative table showed a significant number of common elements between the proposals but also several points of divergence. With respect to the terms "notification" and "registration", as used in the joint proposal, "notification" implied only transparency of information in a voluntary and administratively simple system, while the term "registration" implied no legal effects. Consequently, it would appear that the provisions on notification and registration were identical in the joint proposal. In a number of respects, the joint proposal did not seem to constitute more than a mere database. It was not clear to his delegation how the facilitation of the protection of geographical indications, as requested in Article 23.4 of the TRIPS Agreement, would be ensured by a system limited to a mere database. In that respect, the joint proposal neither made reference to national legislation providing for protection nor to the date on which each geographical indication first received protection. He noted that the proposals submitted by Hungary and the EC, respectively, suggested various ways and means to allow examination and consultations aiming at an acceptable solution in case of disagreement among Members. The joint proposal did not appear to contain anything comparable. He made the following other remarks on the joint proposal:

- The terms "wines and spirits" had been replaced by "covered products". It was understood from the introduction that the discussion of the nature of the system was to be separated from the discussion of the scope of the system. His delegation shared that view and had adopted the same approach in its own revised proposal. However, given the continued unwillingness of the United States and its co-sponsors to enter into a discussion on other products, he asked the United States and its co-sponsors to clarify their position on this issue.

- It was not clear why notifications of geographical indications "every six months" should lessen the burden on the Secretariat.

- The joint proposal left open the consequences of a withdrawal or disruption of a Member’s participation in the system.

- It was not clear what steps were envisaged to ensure a truly multilateral registration system and not just a compilation of national lists. Asking the Secretariat to compile national lists would be burdensome if no added value were created   this should be limited to the creation of links to the different national web sites.

- It was unclear under the joint proposal whether or not non-participating Members had the obligation to grant protection under Article 23 of the TRIPS Agreement and to facilitate this protection in the sense of Article 23.4 of the TRIPS Agreement. It also seemed that "WTO lists" would not be any different from the "list of domestic geographical indications". Taking into account the above comments, he concluded that the joint proposal could not be considered as fully complying with the mandate of Article 23.4 of the TRIPS Agreement, in particular with respect to the different elements constituting a multilateral system of notification and registration.

3.The representative of the United States, responding to the European Communities, said that the terms "notification" and "registration" as used in the joint proposal were not identical. "Notification" described the steps taken by those WTO Members that wished to participate in a multilateral system for notification and registration. Members wishing to participate would notify to the WTO Secretariat a list of their recognized domestic geographical indications for covered products. Participating Members would also be responsible for keeping their notifications up to date, in particular by withdrawing notifications of any indications that were no longer eligible for protection in the Member's territory. It had been noted that the joint proposal made no express reference to the date on which recognition of geographical indications had been granted. That information would help facilitate protection and could certainly be included when Members worked out the format for notifications. "Registration" refered to the compilation by the WTO Secretariat of the database of notified geographical indications listing the products to which the indications applied, the country of origin and, if Members agreed, the date on which recognition had been granted in the country of origin. Once the database was established, the Secretariat would only need to add new indications notified and delete those withdrawn by Members. Registration would have legal effects, but those would be in accordance with TRIPS-consistent laws of individual Members participating in the system. Those Members would refer to the WTO database along with other sources of information ordinarily used in making decisions involving protection of geographical indications for covered products in accordance with their domestic legislation. Reference to the database would ensure that information regarding other Members' geographical indications for covered products was factored into those decisions. The idea that decisions involving geographical indications would be made in accordance with the domestic law of individual Members was in keeping with the protection accorded other forms of intellectual property covered by Part II of the TRIPS Agreement. Responding to the specific comments made by the European Communities, he said:

- With respect to the use of the term "covered products" rather than "wines and spirits", the European Communities' characterization of the United States' position was incorrect. The joint proposal used the term "covered products" in keeping with Australia's suggestion that the system of notification and registration be discussed separately from the issue of product coverage. However, the United States had said repeatedly that, because there was no mandate in the TRIPS Agreement for considering extension of Article 23 to geographical indications for products other than wines and spirits, such consideration could only take place in the context of a new round of multilateral trade negotiations. The United States did not support negotiations on that issue.

- Regarding the frequency with which Members would update notifications, the joint proposal indicated that there would be a fixed period so that the Secretariat could schedule its resources appropriately. If notifications were submitted whenever Members chose, the possibility of such scheduling was lessened. In any case, under the collective proposal, the burden on the Secretariat, once the database was established, would be minimal.

- The United States believed that the creation of a database of information of geographical indications recognized by WTO Members created significant value since that information was not available at that time in any single, easily-searchable compilation that could be used by WTO Members in making decisions relating to geographical indications. Links to national web sites would not offer the same value as each Member that maintained information related to geographical indications formatted that information differently and, in many cases, information was contained in more than one site within individual Members' territories. In addition, some Members that might choose to participate in the system might not maintain their relevant information on publicly available web sites.

- With regard to non-participating Members, the United States first noted that Section 3 of Part II of the TRIPS Agreement provided standards of protection for geographical indications that all WTO Members had to meet. However, Section 3 did not require that particular geographical indications be protected, but rather, as was the case with respect to other forms of intellectual property, it left to TRIPS-consistent national legislation decisions regarding protection of individual geographical indications. The joint proposal incorporated that approach by providing that non-participating Members would be encouraged to refer to the WTO database, along with other sources of information in making decisions under their national legislation to ensure that they were using the most complete information available. It was expected that most would do so in any case, precisely because the database would be a useful source of information that might otherwise not be available to Members. What non participating Members would not have to do would be to adopt a legal regime expressly protecting particular geographical indications notified by other Members regardless of whether they had the resources to monitor the hundreds of notifications of other Members and oppose those that they believed should not be protected.

- The United States disagreed with the EC's view of the joint proposal's compliance with the mandate of Article 23.4. Indeed, it believed that the EC and Hungarian proposals were inconsistent with the mandate of Article 23.4 because they would impose additional obligations on all Members, obligations for which Members received no equivalent concessions from those Members receiving the major benefits.

4.The representative of Hungary said that the comparative table (document IP/C/W/259) was a helpful contribution. It was neutral and its structure made possible an objective analysis of the different proposals. He urged other delegations to use the table when examining the proposals under this agenda item. Turning to the other paper submitted by the European Communities (document IP/C/W/260), his delegation fully shared its comments and conclusions regarding the joint proposal (IP/C/W/133/Rev.1). He said that registration in the joint proposal would not have any legal effect and therefore it was fair to say that it would not differ from notification. Accordingly, the end result would not seem to constitute more than a mere database and therefore it would not seem to be in line with Article 23.4 of the Agreement, which mandated negotiations concerning the establishment of a multilateral system of notification and registration of geographical indications. Responding to the United States, he said that Hungary was not clear as to what exactly would be the legal effect of registration under the system proposed by the United States and its co-sponsors. It was important to note that Article 23.4 provided that the establishment of the multilateral system of notification and registration should facilitate the protection of geographical indications. He asked the United States and its co-sponsors to comment on how their proposed system would effectively do that. Without discussing whether there needed to be a procedure to settle disagreements between Members on the registration of notified geographical indications, he simply noted that the joint proposal did not provide for such a mechanism. He found pertinent the points raised in paragraph 5 of the European Communities' paper (document IP/C/W/260) and looked forward to receiving more comments and answers to them.

7.Continuing, he commented on the comparative table prepared by the European Communities (document IP/C/W/259). Japan believed that the comparative table would be more useful if it incorporated not only the three proposals but also all of the views and comments expressed by Members, and if it were structured in a neutral manner. He then reiterated his delegation's views on the EC proposal (document IP/C/W/107/Rev.1). First, the multilateral system of notification and registration to be established should not impose on Members any new obligation going beyond the current provisions of the TRIPS Agreement. The multilateral system proposed by the EC seemed to introduce new legal obligations which went beyond the existing provisions of the TRIPS Agreement, because it called for the creation of a uniform legal effect of registration. The legal effect of registration should be left to decisions by Members' own administrative or judicial authorities in accordance with the second sentence on Article 1.1. Administrative actions set forth in footnote 4 to Article 23.1 should continue to be allowed as an appropriate enforcement measure. Second, the administrative burden and associated costs imposed by the multilateral system should be as small as possible. The multilateral system proposed by the EC included an examination procedure as well as an opposition system based on challenges and negotiations among Members. The multilateral system proposed by Hungary included a new multilateral arbitration system in addition to those elements proposed by the EC. If those elements of examination, opposition and arbitration were to be associated with a multilateral system, it would be very costly and burdensome, because thousands of geographical indications could be subject to examination and opposition by all participating Members within the short time of 18 months. Third, the multilateral system should be based on voluntary participation. The EC proposal claimed to be voluntary, but it could de facto be a non-voluntary system if the registration had erga omnes legal effects in non-participating Members. If successful registrations bound non-participating Members, they too would wish to challenge the registration within 18 months from publication. This meant that all Members would be forced to participate in the multilateral system.

10.The representative of Korea said that the EC's comparative table (document IP/C/W/259) provided some comparison of the proposals. The Secretariat's summary paper (document IP/C/W/253) showed that Members protected geographical indications in different ways through, for example, laws on business practices, trademark laws or special protection systems. The variety of protection systems among Members should be respected in line with Article 1.1 of the TRIPS Agreement which allowed each Member freely "to determine the appropriate method of implementing the provisions of this Agreement within their own legal system and practice". Korea believed that the EC and Hungarian proposals would impose an additional burden and obligation on those Members which had no separate system of registration for geographical indications. Article 23.4 specifically mentioned the establishment of a multilateral system of notification and registration for wines eligible for protection in those Members participating in the system in order to facilitate the protection of geographical indications. There were a couple of points of interpretation to be drawn from this Article. First, it did not create any right but rather aimed at facilitating the existing protection. Second, Members' rights regarding participation should be recognized, as it was about a system for those Members participating in the system. As a practical matter, the concept of geographical indications had yet to be fully digested, except in some European countries. Under these circumstances, it would take time for Members to build the necessary capacity to examine the notifications made by other Members and to raise objections within an 18 month period, as suggested by the EC. The Secretariat summary paper also showed some incidence of a mixed use of indications of source and appellations of origin. Paragraph 39 of the paper said that several countries were even adopting geographical indications without any direct link to product quality. He recalled that the United States had pointed out at a previous meeting that over 6,000 geographical indications were being notified for wines and spirits through a number of bilateral or regional agreements. It would be rather costly to examine all these notifications and to make objections within the prescribed time frame. Korea could not agree to extending the rights and obligations beyond those set out in the TRIPS Agreement. Its opposition was based on the lessons learnt from the Lisbon Agreement, which was an excessively burdensome system. In view of the short history of protecting geographical indications in many Members, Korea believed that sharing each Member's database more widely, and eventually expanding it, would serve Members' purpose in a more effective and appropriate manner. In doing so, the Council would be able to facilitate voluntary participation of Members in the system.

11.The representative of Malaysia, speaking on behalf of ASEAN Members, said that ASEAN had for some time been following this discussion with interest. The words of Article 23.4 contained a number of elements regarding the formation of the multilateral system, namely the elements of notification, registration and voluntary participation. In the language of Article 23.4, a multilateral system would be a system where Members had an opportunity to notify and register their geographical indications for wines and spirits. ASEAN understood that to notify meant to inform, and that a register denoted a list or catalogue of this information. The intent of Article 23.4 was to establish a system which enabled Members that participated to notify geographical indications for wines and spirits and to place them on a register, but that this system should not have legal effects on those that had chosen not to participate. A system that contained these three elements would meet the requirements of Article 23.4. Additional elements could go beyond the requirements of the Article and might increase the obligations of Members under the TRIPS Agreement.

12.The representative of New Zealand, making only preliminary comments on the papers that had been received, said that her delegation continued to support the joint proposal (IP/C/W/133/Rev.1) as it believed that it was the one which best fulfilled the mandate of Article 23.4 and that its administrative costs were the most reasonable. She associated her delegation with comments made by the co-sponsors of the joint proposal, Australia and Malaysia on behalf of ASEAN, that just because the joint proposal did not involve additional legal and burdensome administrative effects which went beyond Members' current obligations and the mandate of Article 23.4 itself, did not negate the fact that the joint proposal had a registration effect. She did not understand the criticism that the joint proposal did not fulfill both notification and registration functions. Some of the points raised in the EC paper (document IP/C/W/260) underestimated the value that could be added through the transparency and notification functions of any proposal under Article 23.4. It was important to look at the value that was attached to some commercial databases and the great value that this type of compilation could add, particularly for those with limited resources.

13.The representative of the European Communities said that he had listened carefully to the statements made in response to his previous intervention under this agenda item. He was not convinced by the arguments put forward by the United States and other delegations which had intervened along the same lines. He had not heard much new. It had been interesting to hear the United States' definition of registration was a compilation of a database, although he did not find that definition in the dictionary. In the view of his delegation, the mere compilation of a database was not a registration and fell short of the obligation in Article 23.4 to establish a multilateral system of notification and registration. He regretted that some delegations, whilst they had appreciated the EC's efforts in drafting its comparative table, had indicated that they would have liked it to refer to the Lisbon register. The comparative table did not refer to the Lisbon register because it was a comparison of proposals submitted under this agenda item, and no delegation had proposed that the Lisbon register fulfil the requirements of Article 23.4. The EC had not intended to start an academic exercise, since the Council had passed the stage of putting possible texts on the table. One delegation had indicated that the table would be more useful if the EC added views and comments made at previous meetings. He was not convinced that that would really add much to this process because, when negotiations started, delegations would remember what positions had been taken on the different proposals. He was disappointed that, although his delegation had submitted its communications in advance of the meeting, at least one delegation had indicated that it had not had sufficient time to fully examine it. He could only deduce that it was probably because they had not come up with good arguments to refute the points made in the communications. The comparative table had been prepared in an attempt to provide an objective basis which would allow all delegations to start real negotiations. He regretted that he had not yet seen any willingness to start negotiations.

14.The representative of Switzerland said that both contributions by the European Communities and their member States contained highly interesting elements which would permit progress to be made toward the establishment of a multilateral system of notification and registration. His delegation continued to support the EC and Hungarian proposals. The EC's comparative table and paper at last permitted delegations to compare the various proposals that had been made and to ask questions which merited consideration with a view to having a fruitful debate.

15.The representative of the United States, responding to Hungary's request for clarification as to the legal effects of registration under the collective or joint proposal, provided an example of the legal effect of the joint proposal under United States law. When the United States reviewed an application for a trademark containing a geographical term, the trademark examining attorney would be obligated to review the WTO database of geographical indications to determine whether there was a conflict with pre-existing geographical indications. If the proposed mark contained a pre-existing geographical indication, and the goods in the application did not come from the place identified in the mark, the application would be refused as a geographically mis-descriptive term. The database described in the collective proposal would ensure more accurate determinations in trademark cases and would prevent the registration of misleading geographical indications by providing a reliable, easy-to-use source of information. This clarified that, under the United States system, an examiner would be bound to look at the database and use that information in making a legal determination with respect to an application.

16.The representative of Bulgaria said that the EC's comparative table (document IP/C/W/259) would be very helpful. His delegation supported the proposals by the EC and Hungary on the establishment of a register.

17.The representative of Hungary, responded to Argentina regarding the exceptions in Article 24, paragraphs 4 , 5 and 6. Those exceptions could only be examined on a case-by-case and country by country basis. Article 24.4 was about continuous good faith use of a geographical indication, Article 24.5 referred to good faith use of a trademark and Article 24.6 refered to generic terms. Hungary had tried to say, in paragraphs 4 and 5 of its paper, that these exceptions should be looked at on a case-by-case basis. For example, a term which was generic in one country was not necessarily generic in another, and the same line of argument could apply to the two other exceptions. It was not his delegation's intention to take away the possibility of using the exceptions laid down in Article 24. Rather, it wanted to retain and incorporate those exceptions into the register. It had mentioned them in a separate paragraph and stated that a successful challenge would only apply in the Member making a successful challenge in order to reflect the fact that these exceptions were to be looked at on a case-by-case basis. Regarding paragraph 7 of Hungary's paper, and Article 24.9 of the Agreement, he believed that the language in paragraph 7 was in full conformity with Article 24.9, which did not preclude that a geographical indication which ceased to be protected in its country of origin could gain the benefit of protection as a geographical indication at a later stage. Paragraph 7 tried to make sure that, if a geographical indication in the multilateral register did not fulfil a requirement in Section 3, it did not benefit from protection. Responding to the United States, he thanked the representative for the useful example that he had given of the legal effect of the collective proposal. He asked other co-sponsors of that proposal to shed more light on the effects that followed in Members where geographical indications were not protected through certification marks but, for example, through laws on unfair competition.

18.The representative of India supported the interventions made by Hungary and Switzerland.

19.The representative of Sri Lanka recalled that the cover page of the EC comparative table (document IP/C/W/259) said that it had been prepared to allow for an objective comparison of the main proposals that had been tabled to date and to facilitate further discussions. She urged Members to engage in such a discussion.

20.The representative of Turkey supported the EC proposal for establishment of a multilateral system of notification and registration.