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WTO NEWS: 1998 NEWS ITEMS

TRIPS Council 1–2 December 1998
Discussion develops on geographical indication

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Relevant background information: Back to top

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During its 1–2 December meeting, the body administering the WTO’s intellectual property agreement, the Council on Trade-Related Aspects of Intellectual Property Rights (TRIPS), discussed at some length a proposed international register of geographical indications.

The focus of the discussion was a proposal from the European Union for a multilateral system for registering geographical indications — the use of place names or words associated with a place to identify the origin, type and quality of a product. Among the issues debated was whether negotiations on setting up the system should concentrate on wines or include spirits and other products.

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The TRIPS Council also started preparations for a review of a provision (Article 27.3(b)) of the TRIPS Agreement that allows countries to exempt certain plant or animal inventions from patentability.

And it took first steps to prepare its contribution to WTO work on electronic commerce and trade facilitation.
  
Geographical indications Back to top

The EU’s proposal comes under an article (23.4) of the TRIPS Agreement which says WTO members will negotiate a multilateral system for notifying and registering protected geographical indications for wines. (The article does not deal with the separate issue of negotiating enhanced protection for geographical indications.)

It proposes including spirits, with the possibility of adding other products at a later stage. Participation (submitting names for registration) would be voluntary. However, products accepted for registration would be protected in all WTO member countries, although the method each country uses would follow its existing practice — there would be no need to change countries’ laws, the EU says.

Existing laws: vastly different approaches

Countries differ considerably in the way their laws handle geographical indications. This is reflected in responses from countries now implementing the TRIPS Agreement — mainly developed countries — to a WTO questionnaire.

Some have specific geographical indications laws. Others use trademark law, consumer protection law, marketing law or common law or combinations of these.

Some have formal lists of registered geographical indications. Others do not, preferring to rely on court case histories (based on criteria such as consumer protection) to identify where problems have arisen and been sorted out.

Some only recognize place names. Others accept other names that are associated with a place.

As a result, the criteria for providing protection also differ.

Countries could oppose registration, for example on the grounds that the name in question is used so commonly that it has become a generic term. Only countries successfully opposing registration would be exempt from having to protect the geographical indication, the EU’s proposal says.

The purpose is "transparency and clarity", the EU stressed. The debate covered the following issues:

Scope — wines alone, or spirits and other products as well? Back to top

In the meeting, a number of countries cautioned against being over-ambitious. They included the United States, Australia, Japan, Republic of Korea, Canada, Chile and Hong Kong.

Some said the new multilateral system should not increase countries’ burdens and obligations, pointing out that under the EU’s proposal each country would have to scrutinize every name submitted for registration. Others emphasized the fact that the agreement only obliges countries to negotiate a system for wines.

Countries in favour of including other products included Iceland (for fish), Czech Republic, Morocco (food and handicrafts), India (expressing in general, a "strong interest"), Venezuela (crafts and industrial products), Cuba (agricultural and other products), Turkey and Nigeria.

Voluntary participation: Back to top

Art 23.4 speaks of voluntary participation. Some countries questioned whether the EU’s interpretation of "voluntary" is correct when all WTO members would be required to protect names accepted for registration.

Administration and disputes: Back to top

Several countries wanted to know more about these, for example who would judge whether a name can be registered and whether disputes would be handled in the WTO’s Dispute Settlement Body. The EU said these and other details would have to be worked out as discussions about the proposal progress.

The United States said it would shortly table its own proposal.

Plant and animal inventions (Article 27.3b) Back to top

The provisions of the TRIPS Agreement allow certain plant and animal inventions (except, for example, microorganisms) to be exempt from patent protection. However, plant varieties have to be protected either by patent or by a special (sui generis) law. These provisions are due for review next year (1999).

The TRIPS Council is now starting its initial, fact-finding step. The chairman, Ambassador István Major of Hungary, concluded that the meeting had decided — subject to confirmation by one developing country — that:

members already under obligation to apply the provisions should be asked to provide information on how they are doing this,

  • those not under obligation could also supply information voluntarily,
  • the Secretariat should supply an “illustrative list” of questions for these, and
What products?
Examples of some geographical indications that are protected in some developed countries:

Bulgaria
192 local appellations of origin registered, e.g. Bulgarian yoghurt, Traminer from Khan Kroum (wine), Merlou from Sakar (wine)

Canada
Canadian Rye Whisky, Canadian Whisky, Fraser Valley, Okanagan Valley, Similkameen Valley, Vancouver Island

Czech Republic
Beers: Pilsen, Budweis

Others: various vines, liqueurs, Saaz hops, Auscha hops, Jablonec jewellery, Bohemia crystal, Vamberk lace

European Union
Wines: Champagne, Sherry, Porto, Chianti, Samos, Rheinhessen, Moselle Luxembourgeoise, Mittleburgenland

Spirits: Cognac, Brandy de Jerez, Grappa di Barolo, Berliner Kümmel, Geničvre Flandres Artois, Scotch Whisky, Irish Whiskey, Tsikoudia (from Crete)

Other products: Newcastle brown ale, Kentish ale, Kentish strong ale, Rutland bitter, Gloucestershire/Herefordshire/Worcestershire cider/perry, Scottish beef, Orkney beef, Orkney lamb, Jersey Royal potatoes, Cornish Clotted Cream, Cabrales, Roquefort, Gorgonzola, Aziete de Moura, Olive de Kalamata, Opperdoezer Ronde, Wachauer Marille, Danablu, Lübecker Marzipan, Svecia, Queijo do Pico, Coquille Saint-Jacques des Côtes-d’Amour, Jamón de Huelva, Lammefjordsgulerod

Hungary
Eger (wine), Szatmar (plum)

Liechtenstein
Malbuner (meat products), Balzer (Hi-tech products)

Slovak Republic
Korytnická minerálna voda (mineral water), Karpatská perla (wine), Modranská majolika (hand-painted pottery), Piešt’anské bahno (healing mud)

United States
Idaho, (potatoes and onions), Real California Cheese, Napa Valley Reserve (still and sparkling wines), Pride of New York (agricultural products), Ohio River Valley (viticulture area)

Source: members’ replies to questionnaire

 

Pharmaceuticals and agricultural chemicals (Arts. 70.8 and 70.9) Back to top

The issue here is how countries are applying the "mailbox" and exclusive marketing rights provisions (Arts. 70.8 and 70.9) for pharmaceuticals and agricultural chemicals.

The US has distributed a set of questions addressed to Argentina, Egypt, Paraguay and Uruguay.

Incentives for technology transfer to LDCs(Art. 66.2) Back to top

Article 66.2 of the TRIPS Agreement says developed countries must provide incentives for their enterprises and institutions to transfer technology to least developed countries (LDCs) in order to enable these countries "to create a sound and viable technological base".

Haiti, speaking as "the only least developed country in the Americas" asked how developed countries are fulfilling their obligation. Venezuela, Morocco, Pakistan and the Philippines supported Haiti.

The council agreed that Haiti’s question should be circulated informally and that developed countries should be invited to reply.

Non-violation complaints Back to top

GATT provisions allow countries to use raise a complaint in the WTO Dispute Settlement Body if they think their rights have been impaired, even if an agreement has not been violated.

Under the TRIPS Agreement, non-violation complaints are not allowed until the end of 1999. Some countries want this moratorium extended.

Korea, Canada and India spoke in favour of extending it. Japan and the United States said it should lapse. ASEAN (through the Philippines) said they were not ready to state their position.

The Secretariat will prepare a factual note on this issue and the discussions will continue at the next meeting.

Electronic commerce Back to top

The council began preparations to report on electronic commerce issues related to TRIPS to the General Council in July.

A representative of the World Intellectual Property Organization described work in WIPO on electronic commerce and the separate but linked issue of intellectual property in digital form.

The TRIPS Council agreed that the Secretariat should compile information on TRIPS provisions relevant to electronic commerce, and on relevant activities in other international organizations. The issue will be discussed again at the next meeting.

Other topics discussed Back to top

The council began preparations to report on trade facilitation to the Goods Council in March, again focusing on issues related to TRIPS.

Canada and the EU exchanged comment on their disputes in the WTO over pharmaceutical patents.

The EU and US said they were close to settling their dispute over Swedish enforcement legislation — the US said it understands that under new Swedish law, from 1 January 1999 courts can authorize searches for pirated material and documents without having to give advance warning to the people suspected of piracy.

The next meeting will be in February.

"Mailbox" and "exclusive marketing rights"

If a developing country did not provide product patent protection in a particular area of technology when the TRIPS Agreement came into force (1 January 1995), it has up to 10 years to introduce the protection.

But for pharmaceutical and agricultural chemical products, the country must accept the filing of patent applications (provide a "mailbox") from the beginning of the transitional period, though the patent need not be granted until after the end of this period.

If the government allows the relevant pharmaceutical or agricultural chemical to be marketed during the transition period, it must — subject to certain conditions — provide an exclusive marketing right for the product for five years, or until a product patent is granted, whichever is shorter.

The TRIPS Agreement requires patent protection to last for at least 20 years from the time the application was filed.