1 WIPO-SAIC INTERNATIONAL SYMPOSIUM ON GEOGRAPHICAL INDICATIONS Beijing, 26-28 June 2007...

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WIPO-SAIC INTERNATIONAL SYMPOSIUM ON

GEOGRAPHICAL INDICATIONS Beijing, 26-28 June 2007

GEOGRAPHICAL INDICATIONS Ongoing negotiations/discussion

in the WTO

Thu-Lang TRAN WASESCHA

CounsellorIntellectual Property Division

WTO

TLTW- 21 June 2007Photos used for teaching purposes only

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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

Structure of the presentation

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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

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Complex and controversial issue both at national and international levels; commercial, economic, socio-historical, 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 and/or collective marks

Sui generis system

Others

The Uruguay Round: the "deal"; the "unfinished business"

General remarks (2)

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TRIPS levels of protection [Outside TRIPS: national laws, bilateral, regional

and other multilateral agreements]

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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

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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

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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

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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)

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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)

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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

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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

Mandate for register (1)

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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.

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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.”

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Extension: para. 12 of Doha Declaration

“Work programmeImplementation-Related Issues and Concerns12. ... 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

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Ongoing discussion/work and proposals on GIs in the WTO

1. Art. 63.2 notification/review + Art. 24.2 review (examination of implementation)

2. Negotiations on the establishment of a multilateral system of notification and registration of GIs for wines and spirits (Art. 23.4 + Doha)

3. Issues related to the extension of the protection of GIs provided in Art. 23 to products other than wines and spirits

4. [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)]

5. 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

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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 SESSIONNegotiations /mult. System

of notif. & reg. of GIs for wines and spirits

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• 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

Work in the Special Session (1)

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• Secretariat’s document TN/IP/W/12 in 2005: side-by-side presentation of:

-TN/IP/W/8 by Hong Kong, China: in Annex AAlternative 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.

Work in the Special Session (2)

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• 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).

Work in the Special Session (3)

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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

Work in the Special Session (4)

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Work in the Special Session (5): comparison of proposals on 2 key issues

TN/IP/W/8Hong Kong, China

TN/IP/W/10Joint Proposal Group

TN/IP/W/11EC

LEGAL EFFECTS

For participating Members only: some legal effects (presumption of ownership, compliance with GI definition and protection in country of origin).

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 (non-compliance 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 faith use)

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Work in the Special Session (6): comparison of proposals on 2 key issues

TN/IP/W/8Hong Kong, China

TN/IP/W/10Joint Proposal Group

TN/IP/W/11 EC

No legal effects on non-participating Members

PARTICIPATION

Legal effects only in those Members participating in the register

Non-participating Members are encouraged to consult database

PARTICIPATION

Legal effects mandatory only in those opting to participate in the register (“eligible for protection in those Members participating in the system”).

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 in all Members, otherwise the system would not be “multilateral”.

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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

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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?

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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

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Extension: summary of process since Doha

•

TRIPS COUNCIL Regular session until end of 2002

General CouncilTNC

DG /DDG Consultations

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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?

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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?

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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?

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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?

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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

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Formal session*

Groups meeting

in parallel(without the Chairman

and the Secretariat)If needed, Green Room

with DG*

“Confessionals”*(with a Member)

Work in small groups*

(most active Members)

Open-ended informal session*

General Council

How do Members negotiate in the TRIPS Council (example: negotiation of Paragraph 6 System (public health))

TLTW-JW-2007

Regional groups* (e.g.: GRULAC,

ASEAN, ...) * With the Chairman of the TRIPS Council

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Complaints by US and AustraliaEC 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)

Dispute settlement (1)

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DiscriminationAvailability 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.

Dispute settlement (2)

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DiscriminationObjection 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

Dispute settlement (3)

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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.

Dispute settlement (4)

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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 panelArticle 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

Dispute settlement (5)

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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

Final remarks

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Consult our website www.wto.org

Other questions to: thu-lang.tranwasescha@wto.org; tel.:

+41 22 739 57 05; # 3166