TRIPS Council 17 February 1999

Also on the agenda were the present rules dealing with the protection of animal and plant inventions, technology transfer for least developed countries, intellectual property issues raised by "trade facilitation" and electronic commerce, "non-violation" provisions in the TRIPS Agreement and other subjects.

Geographical indications  Back to top

The US-Japanese joint proposal on a multilateral system for notifying and registering geographical indications (see box) is the second to be submitted to the TRIPS Council. The first, discussed at previous meetings, came from the European Union.

The proposal: The new proposal says countries’ participation in the system would be voluntary. They would tell the WTO which geographical indications they are protecting domestically. For each of these they would explain what the terms of protection are under their laws — for example whether there is an expiry date, and if so when — and whether the protection comes under an international agreement.

The WTO would publish a list of these reported geographical indications together with relevant details. When WTO member countries consider registering geographical indications domestically, they would agree "to refer to" the multilateral list. Domestic decisions on providing protection for the listed geographical indications would take into account the fact that they were on the list — some countries’ laws might say how geographical indications on the multilateral list should be treated.

If anyone wants to challenge the protection given to a geographical indication in a particular country, the challenge would have to be made within that country’s domestic system, according to the US-Japan proposal.

Background — EU proposal: Under the EU’s proposal, participation — submitting names for registration — would also 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 for a substantial change in countries’ laws.

The EU’s proposal says 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, it says.

Support for new proposal — ‘TRIPS-plus?’: The United States and Japan described their joint proposal as one that imposes no new obligations, burdens or costs on members and only place a minimal burden on the WTO Secretariat. The proposed system would also take account of the wide range of different methods countries use to protect geographical indications.

Canada, Australia, Argentina, Brazil, New Zealand, Bolivia and Chile were among the countries supporting approach of the new proposal on these grounds. Some described it as not being "TRIPS-plus". They and other speakers stressed that they had only just received the proposal and needed more time to look at the details.

New Zealand, Chile and the Rep of Korea said that the proposed system should not be extended to spirits. Venezuela, Mexico, India, Switzerland, Cuba, Egypt, South Africa, Malaysia, Indonesia, the Philippines and Thailand said they preferred to see other products included in addition to wines and spirits.

EU comment and support — ‘value-added?’: The European Union said that its own proposal meets all the criteria highlighted by the US and Japan. It commented that the US-Japan proposal amounts to little more than the creation of a database that would contribute little to task the protection of geographical indications.

Some countries said that so far they prefer the EU proposal because it offers "added value" to the present situation. Several others — India, Cuba, South Africa, etc — said they saw merit in both proposals. South Africa added that the two proposals are not mutually exclusive.

Conclusion: The TRIPS Council will continue to discuss this issue at its next meeting in April. Two countries said they were preparing their own proposals. (The council also continued to review the application of provisions in the TRIPS Agreement dealing with geographical indications, with countries continuing supplying written descriptions of the way they handle geographical indications in their domestic laws. This work comes under Article 24.2 of the agreement.)

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 being reviewed this year (1999).

WTO members have started replying to a list of questions on how plant and animal inventions are handled in their domestic laws. They include Bulgaria, Canada, the Czech Republic, the EU and its members, Hungary, Japan, Rep of Korea, New Zealand, Poland, Romania, Slovenia, the United States and Zambia. Some told the Council that they would reply shortly.

The Secretariat will prepare a structured summary overview of the replies for the next meeting.

Non-violation complaints  Back to top

Discussion continued on provisions which temporarily prevent countries from citing "non-violation" grievances in disputes involving the TRIPS Agreement.

What is non-violation? Under normal GATT rules, countries can raise a complaint in the WTO Dispute Settlement Body if they think benefits that should accrue to them have been impaired, even if an agreement has not been violated.

Under the TRIPS Agreement (Article 64.3), non-violation complaints are not allowed until the end of 1999. In other words, countries can only bring a TRIPS issue to the WTO dispute process if they think the TRIPS Agreement has actually been violated.

The debate: Some countries want this moratorium extended. Others, including the United States, want non-violation grievances on intellectual property to be allowed.

The TRIPS Council discussed a Secretariat paper looking at the way dispute rulings under the WTO (and before that, GATT) have treated non-violation issues, the negotiating history of the provisions in the TRIPS Agreement, and how the non-violation idea is handled elsewhere.

It also discussed a Canadian paper which objects to an end to the moratorium. Canada argues that allowing non-violation complaints would increase uncertainty and deter WTO members from introducing new and perhaps vital social, economic development, health, environmental and cultural measures.

One of Canada’s reasons behind this conclusion is what it considers to be "ill-defined benefits" of intellectual property protection under the TRIPS Agreement. In order to justify a non-violation complaint, the complaining country would have to argue that it is being deprived of some benefits. Canada argues that although countries agree that intellectual property protection is beneficial, they differ considerably in how they define the benefits.

The discussions will continue at the next meeting.

Other subjects  Back to top

Among the other subjects discussed were:

• how countries are applying the "mailbox" and exclusive marketing rights provisions (Arts. 70.8 and 70.9) for pharmaceuticals and agricultural chemicals;
• incentives for technology transfer to least developed countries as required under Article 66.2 of the TRIPS Agreement;
• the TRIPS Council’s reports on electronic commerce and trade facilitation to be submitted in the next few months to the General Council — members will continue to discuss electronic commerce in future meetings;
• technical cooperation, including work under the joint WTO-WIPO programme to help developing countries which have to comply with the TRIPS Agreement by 1 January 2000;
• The council agreed to review at the end of this year, the national laws implementing intellectual property rights under the TRIPS Agreement of the two new WTO members, Kyrgyz Republic and Latvia. Consultations are continuing on the procedures for similar reviews of developing countries’ laws which have to comply with the TRIPS Agreement from 1 January 2000.

This was the first meeting of the TRIPS Council in 1999. At the end, the council elected Ambassador Carlos Pérez del Castillo of Uruguay as its new chairman for 1999, replacing Ambassador István Major of Hungary. (Amb. Pérez del Castillo chaired the meeting on Amb Major’s behalf.)

The next meeting will be in April.