Geographical Indications Talks Produce First Single Draft - WTO

GENEVA - For the first time in over 13 years of talks, World Trade Organization (WTO) Intellectual Property negotiators have started work on producing a single draft text for setting up a multilateral geographical indications register for wines and spirits.

A press release by the Organization, a draft on notification — the first of six broad topics of the system to be discussed — was circulated by chairperson Darlington Mwape at an informal meeting of the full membership on January 13, 2011.

The draft was developed in two days of consultations among representatives of the three groups that have submitted proposals in these negotiations. The 13 January meeting was an opportunity for the full membership to look at it.

The draft is about a page and a half long with numerous square brackets around text to indicate that the wording has not been agreed and that several options are presented to reflect the different approaches of the three proposals.

“This composite text has emanated exclusively from members themselves, not from the chair,” Mwape told negotiators.

The draft on notification deals with definitions, descriptions and the legal basis of the terms that members would notify and other possible information. The options in square brackets reflect the different proposals of “W/52 sponsors” (the EU, Switzerland and their allies), the “joint proposal group” (US, Australia, Canada, New Zealand, Japan, Chile, Argentina and others), and Hong Kong, China (whose proposal attempts to bridge the differences) — see “current proposals” below.

The 2011 target

Geographical indications are place names — or words associated with a place — used to identify products having a particular quality, reputation or other characteristic because they come from that place. Negotiations on the proposed multilateral register for wines and spirits began in 1997, under Art.23.4 of the WTO intellectual property agreement (TRIPS) and were included in the Doha Round when it was launched in 2001.

The six main areas to be covered are:

• notification — eg, how a term would be notified and which member would do it (also related to “participation”)
• registration — eg, how the system would be run and the WTO Secretariat’s role
• legal effects/consequences of registration, in particular any commitments or obligations on members arising from a term’s registration (also related to “participation”)
• fees and costs — including who would bear these burdens
• special treatment for developing countries (officially, “special and differential treatment”)
• participation — whether the system is entirely voluntary, or whether a term’s registration would have some implications for all WTO members.

Mwape has identified legal effects or consequences of registration, and participation, as the most difficult of the six.

The present tight schedule is based on the call from the Trade Negotiations Committee, which oversees the Doha Round talks, for texts to be developed in all negotiating areas by the end of the first quarter of 2011.

The aim in these intellectual property talks is to have a complete draft text on the multilateral register within that target, building up the six topics point by point. Mwape said that if the task is to be finished in time they have to deal with more than one topic in each of the weeks designated for the negotiation.

The next session will be in the week of 24 January and will begin work on registration and “hopefully” move on to legal effects/consequences of registration, he said.

Three alternatives are currently on the table:

• The Joint Proposal TN/IP/W/10/Rev.2 from Argentina, Australia, Canada, Chile, Costa Rica, Dominican Republic, Ecuador, El Salvador, Guatemala, Honduras, Japan, Rep.Korea, Mexico, New Zealand, Nicaragua, Paraguay, Chinese Taipei, South Africa, the US. This envisages the register as a database. Members would choose whether or not to participate in the register. The intellectual property authorities of participating members would consult the database when considering protection for individual trademarks or geographical indications within their countries.

• TN/C/W/52 of 19 July 2008, from over 100 WTO members, which includes a modified and stripped-down version of the EU’s original proposal for the multilateral register. It is now in the form of proposed “modalities” or a blueprint of the final outcome, with details to be negotiated later. Described as a negotiated compromise among the sponsors, the proposal envisages a system applying to all members although members could choose whether or not to register their own geographical indications.

All members would have to take a term’s registration “into account” and treat it as “prima facie” evidence (first sight, or preliminary, before further investigation) that the term meets the definition of a geographical indication. Further procedures for that term within each country would be handled entirely within the country’s domestic legal system. These include confirmation that the term is an eligible geographical indication, possible challenges, and whether it is subject to exceptions such as because the term is generic.

(Previously the EU had proposed that if a term is registered the assumption — the legal phrase is “irrebuttable presumption” — would be that it should be protected in all WTO members except those that have successfully challenged the term.)

Opponents of this proposal also object to the link with two other intellectual property issues: “extending” to all products the enhanced protection currently given to wines and spirits; and requiring patent applicants to disclose the origin of genetic materials and related traditional knowledge used in their inventions.

• TN/IP/W/8 from Hong Kong, China: if a term is registered, this would be preliminary (“prima facie”) evidence — which could be rebutted — about who owns the term, that it is protected in the country of origin, etc, but only in those countries choosing to participate in the system. Hong Kong, China also proposes an initial period of four years for this system followed by a review.