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FAO-EBRD ProjectTbilisi, Georgia – 27 November 2007

TRIPS- GEOGRAPHICAL INDICATIONS -

Wolf R. Meier-Ewert

WTO Secretariat

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Structure of presentation

• Current Regime for GIs under the TRIPS Agreement (Section 3 of Part II)

• On-going discussions in the WTO:• Review of application of Section 3

• Multilateral System of Notification and Registration for GIs for wines and spirits

• Issues of extension of Additional Protection to goods other than wines and spirits

• „Claw-back “ provisions in Agriculture Negotiations

• (Dispute Settlement Case on GI protection)

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• Definition (Article 22.1)• Basic level of protection (Article 22.2-4)• Additional protection for wines and spirits (Article 23)• Exceptions (Article 24.3-9)• Negotiations (Article 24.1)• National and MFN treatment (Articles 3-5)• Procedures of acquisition & maintenance of rights if

registration is foreseen (Article 62)• Enforcement (Part III)• Transition periods• Dispute settlement

Relevant TRIPS Provisions

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Definition Geographical Indication - Art. 22.1

indications … 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

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Level of Protection

Outside TRIPS: national laws, bilateral, regional and other multilateral agreements

↑Higher level of protection:

Art. 23 (wines and spirits)

↑Minimum level: Art. 22

- Misleading/confusion test

- Unfair competition

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Basic level of protection: Art. 22.2-3

• “Interested parties” must have legal means to prevent any use which:• misleads the public as to the geographical

origin of the good• constitutes an act of unfair competition (Art.

10bis Paris Convention)• Refusal or invalidation of registration a

trademark if use of the GI in the trademark would mislead the public as to origin

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Additional protection for wines and spirits - Art. 23

• Additional protection 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

• Against registration as a trademark with respect to wines and spirits not having the origin indicated

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• Generic terms (“customary”) (Art. 24.6) • For goods or services• For products of the vine for which indication

is identical with name of a grape variety customary before 1995

• Prior trademark rights (Article 24.5):• Good faith before date of application of

TRIPS in the WTO Member;• Before the GI is protected in its country of

origin

Exceptions – Art. 24

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• Certain other prior use (Article 24.4) (grand-father clause):• Goods or services• At least 10 years before signature of

Marrakech or in good faith preceding that date

• Personal names (Article 24.8)• GIs not protected or used in their

country of origin (Article 24.9)

Exceptions – Art. 24 (cont.)

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Ongoing Work (1) Review of Application - Art. 24.2

• Secretariat checklist of questions (document IP/C/13 and addendum 1)

• Responses from 46 Members so far (document IP/C/W117 and addenda)

• Secretariat summary of the responses (document IP/C/W/253/Rev.1)

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• Article 23.4 TRIPS• The 1996 Report of the TRIPS Council to

the Singapore Ministerial Conference• Doha Ministerial Declaration, 1st sentence of

paragraph 18• Special Session of the Council for TRIPS• Decision of 1 August 2004 on the Doha

Work Programme• Hongkong Ministerial Declaration

Ongoing Work (2) Multilateral System of Notification and

Registration of GIs for wines and spirits

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• 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

Multilateral Register (Art. 23.4):Mandate and Objectives

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Ongoing Work (3) Multilateral System of Notification and

Registration of GIs for wines and spirits

Negotiating Positions:• Main differences: legal effect and participation• Two basic approaches:

• Commitment to consult a data base of registered GIs; legal effects under the domestic law; voluntary participation

• A registration to have certain legal effects in all Members unless objected to

• Middle ground proposed Hong Kong, China: certain presumptions; voluntary participation

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• Secretariat’s document TN/IP/W/12: 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.

Ongoing Work (3) Multilateral System of Notification and

Registration of GIs for wines and spirits

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Register Negotiations 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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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”.

Register Negotiations Comparison of proposals on 2 key issues

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Documentation

• Secretariat paper on multilateral notification and registration systems (TN/IP/W/4)

• Draft text by the Chair (JOB(03)/75)

• Report by the Chair of the Special Session (July 2007, document TN/IP/17)

• Compilation of points raised and views expressed on the proposals (TN/IP/12/Add.1 and Corr.1)

Ongoing Work (4) Multilateral System of Notification and

Registration of GIs for wines and spirits

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Work from 1996 on "extension" • The1996 Report of the TRIPS Council to

the Singapore Ministerial Conference• Doha Ministerial Declaration, paragraph 18,

2nd sentence and paragraph 12, and the list of outstanding implementation issues

• General Council Decision of 1 August 2004 on the Doha Work Programme

Ongoing Work (5) Issues of Extension of additional protection

to goods other than wines and spirits

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Ongoing Work (6) Issues of Extension

• What do proponents want? (TN/C/W/14, 2003)• Article 23 to apply to all GIs• Article 24 exceptions to apply mutatis mutandis• Multilateral register to be established shall be open to

GIs for all products• Principal actors:

• Proponents: EU, European countries, certain DCs (India, Pakistan, Sri Lanka, Thailand, Turkey, China)

• Opponents: US and most Cairns Group countries

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Examples of issues raised in relation to GI extension • Justification for the discrimination between product

categories?• Possible benefits to GI holders?

• Fairness / Rural development / Quality production / Marketing tool• Easier enforcement and no risk of GIs becoming generic

• Costs to non-GI holders?• Fairness / Interests of prior trademark holders and other third

parties• Re-labelling / Third country markets

• More/Less risk of Confusion ?• Administrative costs? Considerable/Negligible

Ongoing Work (7) Issues of Extension

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• A list of names currently used by producers of agricultural products other than the right holders in the country of origin to be established so as to prohibit such use

• The proposal intended to be complementary to the work on GIs in the context of TRIPS

• Decision of 1 August 2004 on the Doha Work Programme; Annex A on the Framework for Establishing Modalities in Agriculture: Issues of interest, but not agreed (para. 49)

Ongoing Work (8) EC „claw back“ proposal in Agriculture

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Complaints:

• by the US (WT/DS174/20) and Australia (WT/DS290/18)

• against the EU Regulation on GIs (foodstuffs)

• Panel Report circulated March 2005 (WT/DS174/R and WT/DS290/R). No Appeal.

• Result: EU‘s treatment of relationship between GIs and TMs is not in violation of TRIPS, but the system discriminates against non-EU GIs and thus violates hte national treatment obligation under TRIPS

• 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)

Ongoing Work (9) Dispute Settlement

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GIs:

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 WTO mandate

difficulties in discussion in the WTO because of linkages with other areas of negotiations, in particular Agriculture

Final remarks

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For more information:

wolf.meier-ewert@wto.org

Tel.: +41 22 739 63 44