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FAO-EBRD Project Tbilisi, Georgia – 27 November 2007

FAO-EBRD Project Tbilisi, Georgia – 27 November 2007. TRIPS - GEOGRAPHICAL INDICATIONS - Wolf R. Meier-Ewert WTO Secretariat. Structure of presentation. Current Regime for GIs under the TRIPS Agreement (Section 3 of Part II) On-going discussions in the WTO:

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FAO-EBRD Project Tbilisi, Georgia – 27 November 2007

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  1. FAO-EBRD ProjectTbilisi, Georgia – 27 November 2007 TRIPS - GEOGRAPHICAL INDICATIONS - Wolf R. Meier-Ewert WTO Secretariat

  2. 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)

  3. 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

  4. 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 Definition Geographical Indication - Art. 22.1

  5. 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 Level of Protection

  6. “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 Basic level of protection: Art. 22.2-3

  7. 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 Additional protection for wines and spirits - Art. 23

  8. 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

  9. 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.)

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

  11. Ongoing Work (2) Multilateral System of Notification and Registration of GIs for wines and spirits • 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

  12. 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

  13. 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

  14. Ongoing Work (3) Multilateral System of Notification and Registration of GIs for wines and spirits • 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/10by 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.

  15. Register Negotiations Comparison of proposals on 2 key issues

  16. Register Negotiations Comparison of proposals on 2 key issues

  17. Ongoing Work (4) Multilateral System of Notification and Registration of GIs for wines and spirits 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)

  18. 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

  19. 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 Ongoing Work (6)Issues of Extension

  20. 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

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

  22. Ongoing Work (9)Dispute Settlement 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)

  23. Final remarks • 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

  24. www.wto.org For more information: wolf.meier-ewert@wto.org Tel.: +41 22 739 63 44

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