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 register within the Doha Round.

Ambassador Clarke’s recommendations are drawn from what negotiators have said in the talks with some comments of his own. They are in a report presented at a negotiating session of the intellectual property (TRIPS) Council on 27 November. The report includes a summary of the latest situation in the talks and will also serve as a hand-over briefing for his successor.

 

Five principles

The five guiding principles for future work are:

• the register’s purpose is to “facilitate” protection for wines and spirits, not to increase protection

• the register should be useful and meaningful to participating members

• the “territorial nature” of intellectual property rights should be preserved (ie, countries’ right to determine how to protect intellectual property within their own territories)

• the register should not be too burdensome financially and administratively

• and developing countries should be given special treatment that is “precise, effective and operational”.

“In my work here at the WTO, it struck me that during negotiations we often put too much emphasis on today’s words and too little emphasis on tomorrow’s ideas,” the chairperson told negotiators.

Ambassador Clarke, who is about to join the World Intellectual Property Organization, confirmed in the report (document TN/IP/19) that two issues remain crucial: participation in the system, and the consequences or legal effects of a term being registered.

 

Participation

The talks’ mandate in Art.23.4 of the TRIPS Agreement describes the system as “multilateral”, which some negotiators interpret to mean all members have to participate. But it also refers to “those members participating in the system”, which other delegations interpret to mean participation is voluntary.

The chairperson wrote in the report: “There are several areas of WTO negotiations where some members are excluded from certain obligations for a variety of reasons. It is therefore my view that the use of the words ‘a multilateral system’ does not necessarily mean that participation must be mandatory for all Members. It is also my view that the formulation ‘those Members participating in the system’ does not necessarily mean that participation must be voluntary.” He urged members to search for other criteria or approaches to identify participation.

Speaking in the meeting, he added that he thought a compromise on participation can be achieved.

 

Consequences or legal effect

The register will contain information — the fact that a term has been registered, and any accompanying explanations or justifications. A key question is how the information should be taken into account, whether countries would be specifically obliged to do so, and how to ensure that this does not create “extra-territoriality” — legal decisions taken elsewhere imposing on countries’ right to determine themselves how to protect intellectual property within their own territories.

Ambassador Clarke wrote: “… views differ significantly as to how such information should be taken into account, what weight and significance should be given to it, and whether there should be a specific legal obligation to take the information into account. While some members are of the view that the mere obligation to consult the register is not enough to ensure meaningful facilitation of protection of wine and spirit GIs, others are concerned about extra-territorial effects of GI protection.”

 

Reactions

Members welcomed the report, its recommendations and the opportunity Amb. Clarke gave them to comment on earlier drafts.

They accepted that the report was made under his own responsibility and recognized the constraints he faced in dealing with issues such as the controversial question of whether these negotiations are linked to two other intellectual property topics discussed in the WTO — proposals to extend to other products the higher level of protection given to geographical indications for wines and spirits, and to amend patent provisions to deal with biodiversity issues.

Delegations also repeated their positions (described under “proposals” below). The sponsors of TN/C/W/52 described their positions as the only ones that have shown flexibility which they said was needed to achieve the compromise that has won the support of over 100 members. They said agreement on all three issues will be necessary if “modalities” are to be agreed.

Others continued to argue that there is no mandate to link the three issues and that doing so simply makes agreement on the register more difficult to achieve.

The negotiations on the register — under Article 23.4 of the TRIPS Agreement — began in 1997. In 2001 they were brought into the Doha Development Agenda (the Doha Declaration’s paragraph 18). Amb.Clarke’s successor has not been chosen yet.

Speakers: Sponsors of TN/C/W/52: EU, Switzerland, Brazil, China, Turkey. “Joint proposal” sponsors: US, Australia, Chile, Argentina, New Zealand, Chinese Taipei, Rep.Korea, Japan, Canada, El Salvador, Guatemala. Others: Hong Kong China.

Chairperson: Ambassador Trevor Clarke of Barbados (final meeting)

Current proposals

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 register their geographical indications. 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 in which members could choose whether or not to register their 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 — including confirmation that it is an eligible geographical indication, possible challenges and whether it is subject to exceptions on the grounds that the term is generic — would be handled entirely within the country’s domestic legal system.

(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 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 in which a term’s registration would create a “rebuttable presumption” that it should be protected, 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.