GEOGRAPHICAL INDICATIONS

Transcription

1 SINER-GI Strengthening International Research on Geographical Indications Montpellier, 6-7 September 2006 GEOGRAPHICAL INDICATIONS Thu-Lang TRAN WASESCHA Counsellor, Intellectual Property Division Secretary to the Special Session of the Council for TRIPS WTO Sept. 2006/TLTW

2 Negotiations on the multilateral system of notification and registration of GIs for wines and spirits ("register") Discussions on the extension of the protection of GIs for wines and spirits to other products ("extension") 2

3 Ongoing discussion/work and proposals on GIs in the WTO 1. Art notification/review + Art review (examination of implementation) 2. Negotiations on the establishment of a multilateral system of notification and registration of GIs for wines and spirits (Art 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 3

4 GIs in the TRIPS Council after Doha TRIPS COUNCIL REGULAR SESSION, Review of legislation, public health, Biotech./TK/biodiversity, GIs (extension until end 2002), etc. SPECIAL SESSION Negotiations /mult. System of notif. & reg. of GIs for wines and spirits 4

5 Register (1) Art (built-in agenda and mandate): 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. 5

6 Register (2) Singapore Doha Declaration, paragraph 18, first sentence (WT/MIN(01)/DEC/1) : 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. Foreseen as an early harvest" in the Doha Round no outcome in Cancún (2003) July package (WT/L/579) of 1 August 2004 on the overall process/program of negotiations: Paragraph f ("the Council reaffirms Members commitment to progress in all these areas of negotiation in line with the Doha mandates") 6

7 Register (3) Hong Kong Ministerial Declaration, para. 29 (WT/MIN(05)/DEC): Take note of Chairman s report (TN/IP/14), which identifies the two key issues + other problems, and reflects the divide (guidance or not at higher level on 2 key issues) Intensify negotiations in order to complete them within the overall time-frame for the conclusion of the negotiations that were foreseen in the Doha Ministerial Declaration. [Timelines for 2006 (JOB(06)/13): "July: working document to be tabled" ] 7

8 Register (4) Secretariat s document TN/IP/W/12: side-by-side presentation of: - TN/IP/W/8 by Hong Kong, China: in Annex A Alternative 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 8

9 Register (5) The main actors in the Special Session: European Communities, supported by Bulgaria, 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 Less or no interest from other delegations 9

10 Register (6) Main issues raised and points made (TN/IP/W/7/Rev.1 and Corr.1): Definition and eligibility for protection: country names; traditional expressions (vintage, ruby, etc.); nongeographical names (Viño verde for white wine from Portugal)? exceptions under Art. 24: will they continue to apply? Objective: to facilitate existing protection or to increase it? Meaning of: "multilateral" system; of notification; of registration? 10

11 Register (7) Legal effects of a registered GI: creation of a presumption of protectability, or obligation to consult the lists (database) of names notified? Participation, in particular with regard to effects on participating and non-participating countries Other issues, including translations and administrative and other burdens, in particular for developing countries Freedom to determine the appropriate method of implementing GI protection; territoriality principle 11

12 Register (8): 2 key issues TN/IP/W/8 Hong Kong, China LEGAL EFFECTS For participating Members only: some legal effects (presumption of ownership, compliance with GI definition and protection in country of origin). TN/IP/W/10 Joint Proposal Group 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 TN/IP/W/11 EC LEGAL EFFECTS For participating Members: Opposition for a certain time limit at multilateral level on certain grounds (noncompliance with GI definition, misleading homonymous GIs, genericness). If e.g. no opposition or opp. withdrawn irrebuttable presumption. Rebuttable presumption at any time for other grounds (e.g. prior trademarks; grandfathered and good faith use) 12

13 Register (9): 2 key issues TN/IP/W/8 Hong Kong, China No legal effects on nonparticipating Members TN/IP/W/10 Joint Proposal Group Non-participating Members are encouraged to consult database TN/IP/W/11 EC 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 only in those Members participating in the register PARTICIPATION Legal effects mandatory only in those opting to participate in the register ("eligible for protection in those Members participating in the system"). PARTICIPATION Legal effects in all Members, otherwise the system would not be "multilateral". 13

14 Register (10) Special Session of March and June 2006: Work on basis of side-by-side document (TN/IP/W/12) + Chairman s list of priority concerns Notification, registration, legal effects/consequences of registration, participation, fees and costs Issues that could be addressed when discussing priority concerns: Impact on territoriality principle Impact on existing balance of rights and obligations Impact on developing countries Impact on national systems/jursidictions Administrative burden Special Session of July 2006: discussions on notifications only (Chairman s statement) 14

15 Difficulties regarding the negotiations on register Differing interpretations of mandate and divergence of views on the content and mechanism of the register of GIs for wines and spirits Various linkages: Linkage with "extension" (would the register of GIs for wines and spirits be extended to cover GIs for other products?) Linkage (timing) with AG/NAMA modalities by some Members Linkage with EC s claw-back proposal in AG 15

16 "Extension" in Doha Declaration WT/MIN(01)/DEC/1 Paragraph 18, second sentence: 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. Paragraph 12: (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. 16

17 Extension: the proposal = Extension of the higher protection of GIs for wines and spirits to other products. What do proponents want? (TN/C/W/14 in 2003) 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 17

18 Extension: the main actors Main actors: EU, other European countries, certain DCs (India, Guinea, Jamaica, Kenya, Pakistan, Sri Lanka, Thailand, Tunisia, Turkey, etc.) Argentina, Australia, Canada, Chile, Chinese Taipei, Colombia, Ecuador, Guatemala, New Zealand, United States, etc. Proposed coverage for products: agricultural, foodstuffs, handicrafts, industrial products 18

19 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. Topic forwarded to TNC as part of "outstanding implementation issues" 2003 prior to Cancún: consultations by DG in his capacity as DG July package 2004: development outstanding implementation issue 19

20 Extension: process since Doha (3) DG DDG's technical level consultations in 2005 Secretariat s compilation of points made and issues (WT/GC/W/546 -TN/C/W/25) June 2005: EC proposal in WT/GC/W547- TN/C/W/26 (and TN/IP/W/11, see register) 20

21 Extension: process since Doha (4) Hong Kong Ministerial Declaration: para. 39 (implementation) of WT/MIN(05)/DEC DG to intensify consultative process DG to report to each TNC and GC meetings GC to review progress and take any appropriate action no later than 31 July

22 Extension: process since Doha (5) Consultations (on behalf on DG Lamy) by DDG Rufus Yerxa List of 91 questions raised by delegations, drawn by DDG Yerxa on his own responsibility Consultations finished on 13 April DG s reporting to TNC 28 March 2006: Growing clarity on the interests of Members and better identification of key issues for progress "Organized and intensive exchange of views" Positions unchanged and polarized 22

23 Extension: process since Doha (6) Key issues include: Whether current level of protection for GIs for other products under Art. 22 is or is not sufficient Implications of extension for other producers that have been using the terms in their own market in third country markets Extent to which extension of the exceptions provisions of Art. 24 would meet concerns on this count Interrelationship perceived by some between the GI extension and other initiatives on GIs in Agriculture 23

24 Extension: where it is discussed General Council & TNC DG /DDG Consultations TRIPS COUNCIL Regular session until end of

25 Some documents on GIs Register (wines and spirits): TN/IP/W/7/Rev.1 and Corr.1 (Secretariat's compilation) TN/IP/W/12 ("side-by-side document" (containing the three proposals on the table) TN/IP/14 and 16: Chair s reports to TNC Extension WT/GC/W/546 -TN/C/W/25 (Secretariat's compilation) 25

26 Where are we now in the negotiations or discussions? GC meeting of July 2006: to suspend the negotiations across the Round as a whole..." (i.e., including the ones on the register) On outstanding implementation issues (i.e., including on extension): Members should seriously reflect on the future approach to these issues; impasse in the DG's consultations; it would not be useful to propose any new deadlines or a date of resumption of work 26

27 AG: EU's claw-back proposal EC proposal in Agriculture negotiations for "claw-back" of use of (or "market access" for products bearing) certain GIs: Annex W of JOB(03)/12, 12/Add.1/ and JOB(06)/190 Wines, spirits, foodstuffs 27

28 GIs and dispute settlement (1) Complaints by US and Australia EC 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 28

29 GIs and dispute Discrimination settlement (2) Protection contingent upon another country adopting equivalent system and offering reciprocal protection (including factual question about the proper interpretation) Requires certain systems from other governments; hence foreign nationals don't have guaranteed access to the EC system 29

30 GIs and dispute settlement (3) "Co-existence" Sufficiently constrained to qualify as a limited exception under Art. 17 TRIPS TRIPS does not allow unqualified co-existence of GIs with prior trademarks 30

31 GIs and dispute settlement (4) Agreement US-Australia-EC that reasonable period of time for the EC to implement recommendations and rulings of DSB = 11 months and 2 weeks, i.e. 3 April 2006 (WT/DS174/24 and WT/DS290/22) 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) 31

32 Consult our website Other questions to: tel.: ; #