WTO News Item, 28 October 2010
WTO intellectual property negotiators continued the fact-finding exercise they began in the previous meeting in June, providing more information on how key aspects of geographical indications protection work in their countries.
This was a meeting of the “special session” of the WTO’s Trade-Related Aspects of Intellectual Property Rights (TRIPS) Council, which is the forum for negotiating the geographical indications register for wines and spirits within the Doha Round.
Following a procedure proposed by the chairperson, Zambian Ambassador Darlington Mwape, they focused on what information is taken into account when a term is proposed for protection, and how this would be affected by the proposed register. Delegates also considered how to deal with a claim that a term is generic and should therefore escape protection.
Amb. Mwape has identified these as comfort-raising questions to be tackled under the heading of the legal effects or consequences of a term being registered, which he describes as the biggest stumbling block to agreement.
Several delegations that had not previously done so (Turkey and Thailand) described how their domestic systems work, broadening the base of countries taking part actively in this phase of the negotiations. Some (Australia, the EU, Japan, Chinese Taipei, Switzerland, Chile and the US) fine-tuned the responses they gave in the June meeting.
Similarities and differences
The debate showed some that domestic practices have some common features. In particular, when domestic authorities decide whether to protect specific trademarks or geographical indications, they do consult various sources of information and take them into account. They also ensure that obligations under bilateral and international treaties are respected.
They differ on whether an agreed weight should be attached to certain types of information (such as the fact that a term is protected in the country of origin). They also differ on who bears the burden of proof when a term is proposed for protection but could be ineligible because it has become generic.
Broadly, the latest versions of rival proposals for the register include different views of how a term’s registration in the multilateral system should affect its protection in a country, following the TRIPS Agreement’s principle that countries are free to choose how their domestic systems meet the agreement’s minimum standards.
The US, Australia, New Zealand, Canada and their “joint proposal” allies say the term’s registration should be “taken into account”.
The EU and fellow-signatories of document TN/C/W/52 say countries should view a term’s registration as prima facie (“at first sight”) evidence that a term meets the definition of a geographical indication and therefore could be eligible for protection — whether or not it would eventually be protected in a country would depend on other criteria under that country’s intellectual property system.
This difference also has implications for how a term might be challenged under a country’s legal system, for example on the grounds that it has become generic.
(Hong Kong, China has a third proposal, which it has advocated as a middle ground approach. Details of all three proposals are here. Alliances in the negotiations can be seen here.)
Amb. Mwape said that the focus on their own systems should make countries more comfortable with the ideas in the different proposals, and help to avoid repeated “rhetorical debates”.
Most speakers did describe how their countries’ systems worked in these areas, or asked questions about each other’s systems, referring to descriptions made in the June meeting.
The EU proposed moving the analysis further, asking countries to describe how alternative proposals would be handled in their systems. It compared the implications of the “joint proposal” and its own TN/C/W/52, concluding that the “joint proposal” would add little value to what it is already doing.
Members did occasionally revert to “rhetorical debating”, arguing for their proposals and for or against linking the register to other issues. Document TN/C/W/52 links the proposal on the register with two other issues: “extension” for geographical indications and “disclosure” for patent applications based on genetic resources or traditional knowledge or both.
Doha Round brainstorming
Switzerland and Chile reported to the meeting on TRIPS brainstorming sessions among a small group of ambassadors as part of the variety of discussions taking place on the Doha Round (described in Director-General Pascal Lamy’s report to the Trade Negotiations Committee)
They said they had asked the Secretariat for information on how the terms “prima facie”, “burden of proof” and “due diligence” are used in the WTO system for settling legal disputes.
Some members said they would like the reply to be shared. Switzerland said transparency would be respected, and Chairperson Darlington Mwape said participants in the brainstorming groups would be invited to continue to report to members, noting that the separate small group discussions were not an official part of the Special Session negotiations.