WTO: 2011 NEWS ITEMS

INTELLECTUAL PROPERTY: GEOGRAPHICAL INDICATIONS NEGOTIATIONS

NOTE:
THIS NEWS ITEM IS DESIGNED TO HELP THE PUBLIC UNDERSTAND DEVELOPMENTS IN THE WTO. WHILE EVERY EFFORT HAS BEEN MADE TO ENSURE THE CONTENTS ARE ACCURATE, IT DOES NOT PREJUDICE MEMBER GOVERNMENTS’ POSITIONS.

  

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Added to “notification” and “registration” are “legal effects/consequences of registration” — one of the most controversial areas of the talks, reflected in the comments in this meeting — and “fees and costs”. The final two areas will be on special treatment for least-developed and developing countries and “participation”.

The draft is being constructed piece by piece in a small drafting group representing the different views, and is now about seven pages long. As before it has been compiled entirely from members’ proposals, their various views reflected as alternatives in square brackets.

Some “small amendments” were made on the earlier section on “registration” during the week, said Zambia’s ambassador Darlington Mwape, the current chairperson of the 13-year-old negotiations. However many square brackets remain, and the chairperson said he would open up the text for the full membership to work on the draft “once sufficient substance is on the table”.

Having a single text — rather than rival documents — is an essential tool to allow negotiators to narrow down their differences more practically.

“Agreeing on what you disagree is already halfway to agreeing on what you agree,” Amb. Mwape said.

The drafting “continues to be fragile and delicate”, he added. He urged members “to give this process further time to stabilize”. (An excerpt from his oral report is below).

 

Comments: legal effect

The main point discussed in this meeting was EU’s proposal on the legal effect: that if one country registers a term, this would be “prima facie evidence” that in other countries the term meets the definition of a geographical indication under the WTO’s TRIPS Agreement— “in the absence of proof to the contrary”.

The main difference was over the weight of this “prima facie” — ie, on first sight; or preliminary, before further investigation — evidence: whether it would create obligations in other countries’ legal systems (“extraterritoriality”), shift the burden of proof away from the owner on whether a term qualifies as a geographical indication, and create large costs.

Members of the “joint proposal” group (Australia, Canada, Chile, US, Mexico, Japan, South Africa and New Zealand) said the drafting proposed by the EU and supported by Switzerland confirms their view that it would.

The EU and Switzerland denied that the system would be extraterritorial because countries could still use their own legal systems to decide whether to protect the term. The rights enshrined in the TRIPS Agreement would be respected, Switzerland said. The EU urged members to examine how the approach would be applied in their own systems arguing that this would show that the fears about costs are not borne out.

 

The 2011 target

Geographical indications are place names — or words associated with a place — used to identify products having a particular quality, reputation or other characteristic because they come from that place. Negotiations on the proposed multilateral register for wines and spirits began in 1997, under Art.23.4 of the WTO intellectual property agreement (TRIPS) and were included in the Doha Round when it was launched in 2001.

The six main areas to be covered are:

  • notification — eg, how a term would be notified and which member would do it (also related to “participation”)
  • registration — eg, how the system would be run and the WTO Secretariat’s role
  • legal effects/consequences of registration, in particular any commitments or obligations on members arising from a term’s registration (also related to “participation”)
  • fees and costs — including who would bear these burdens
  • special treatment for developing countries (officially, “special and differential treatment”)
  • participation — whether the system is entirely voluntary, or whether a term’s registration would have some implications for all WTO members.

Amb.Mwape has identified legal effects or consequences, and participation, as the most difficult of the six.

 

NEXT (could be changed):

  • Continuing step by step negotiation and drafting, 24 and 25 February.
  • Formal meeting of all members: 3 March (after the regular TRIPS Council meeting, Tuesday-Wednesday 1–2 March)
  • Informal consultations: 4 March
  • Formal meetings before or after the regular TRIPS Council meetings: Tuesday-Wednesday 7–8 June, Tuesday-Wednesday 25–26 October

Chairperson: Ambassador Darlington Mwape of Zambia

 

EXCERPT FROM CHAIRPERSON’S REPORT
11 February 2011

As usual, the purpose of this meeting is to brief the wider membership on the progress made in this week’s consultation to ensure transparency and inclusiveness.

As foreseen in the work programme sent by in December 2010, I have held group consultations on Tuesday and Wednesday this week with a number of sponsors of the proposals on the table, namely the joint proposal, the proposal contained in TN/C/W/52, as well as the one by Hong Kong, China.

Before reporting on this week’s progress, let me refer Members to the general comments I have made at previous open-ended meetings

  • on the organization of meetings,
  • on the methodology we are applying,
  • on the composition of the drafting group, and
  • on our mandate to produce text.

These comments have been made available on the WTO website as part of a news item. I am not going to repeat these comments today, but let me assure you that they remain applicable and valid in every aspect.

Let me repeat, however, that this process should not preclude Members from discussing, coordinating or developing text among themselves and, on that basis, to table such agreed proposals in my consultations. In fact, this process will be greatly helped if that could occur not only within the existing camps, but even across both sides of the debate, and I encourage Members and group coordinators to create and utilize any such opportunity where possible.

Let me now briefly report on the progress made in the drafting group this week. As foreseen, the drafting group began by briefly revisiting the section on registration in the draft composite text to see whether more text could be streamlined there. After small amendments there, the group moved on to the draft composite text on the next two elements of my list, which had been prepared on the basis of the textual proposals Members had submitted by the deadline of 2 February that I had announced at the last open-ended meeting. In discussing the element of legal effects / consequences of registration — which, as you know, is one of the key areas where fundamental differences remain — Members had detailed exchanges on the exact operation of the system as proposed by the different groups. It was my impression that the merit of discussing the operation of the Register on the basis of textual proposals was most evident in these discussions. Members were able to identify their different views and interpretations in relation to concrete parts of the text, and although not all of this thinking process is reflected in the current document, I sense that the differences are beginning to crystallize around a number of identifiable formulations. As you know — agreeing on what you disagree is already half way to agreeing on what you agree. In that light, I feel that the work of the drafting group on that element has been constructive and I continue to be optimistic regarding our itinerary on the road towards our mandated outcome on a Multilateral Register for Geographical Indications for Wines and Spirits.

Members also had a detailed discussion on the element of fees and costs that has brought a little more clarity on the relevance of this part and its interdependence with other parts of the text.

I would once again like to thank all delegations for their continued efforts to focus on our important task of developing text, and for their varying degrees of flexibility in resolving difficult situations along the way. The state-of-play of the drafting group’s work is reflected in the paper that has been made available in the room in the usual manner.

With regard to the drafting group’s paper, let me recall once more the two important points of principle of this organization, that apply in particular to the work the group has undertaken this week:

  • First, this composite text has emanated exclusively from Members themselves, not from the Chair.
  • Second, this composite text represents work in progress and is without prejudice to Members’ positions on the overall outcome of the negotiations. Members are working on the understanding that nothing is agreed until everything is agreed, and that Members may revert to any issue of the text at any time.

I would also like to make my usual plea that — as this process continues to be fragile and delicate — all Members to give this process further time to stabilize. Those of you who see the paper for the first time today should take some time to not only digest its current content, but to also consider its potential for progress in the negotiations. I continue to seek your indulgence and understanding that the drafting work will continue in group consultations, as is the usual practice in all WTO negotiating groups. It is, of course, also the practice in WTO negotiations to open a text up to drafting suggestions from the entire membership once sufficient substance is on the table — and I assure you once again that I will hold drafting sessions in open-ended format once I believe that sufficient progress has been made for such meetings to be constructive. Until such time has come, it is my intention to use the regular open-ended meetings to communicate to Members the state-of-play of the work conducted in the group consultations. Needless to say, my door is always open for you to raise your concerns with me bilaterally.

Now, casting my eye ahead, let me spell out the rules of the road for the next session in the same manner as I have done at previous open-ended meetings:

  • A draft composite text for the elements that will be taken up for the first time at the next session will be prepared on the basis of Members’ textual proposals that are submitted by the set deadline. The purpose of this practice is to save time for the drafting group, which can then start work directly from the draft composite text. It goes without saying that Members can of course still make comments and proposals after that deadline — however, these will then be reflected as amendments in the composite text. This means that, once a part of the draft composite text has been discussed in the drafting group, new textual proposals on that part will no longer be integrated by the Secretariat but should be made in the drafting group.
  • With regard to the deadline — in order to keep the process moving forward, and in view of the little time we have left before the formal meeting of 3 March, I suggest the following. A draft composite text for the next two elements, namely Special and Differential Treatment and Participation, as well as on preambular text will be prepared on the basis of proposals that delegations send in by Friday, 18 February 2011 close of business (Geneva time).

Let me repeat that the deadlines are set in order to encourage delegations to submit text ahead of the drafting group sessions, but they do not pre-empt further textual proposals or comments later. They do, however, mean that delegations cannot refuse engagement on the element in question simply because they have no submitted text by the deadline. They are free to make their proposals in any of the meetings of the drafting group.

Pursuant to my fax of 13 December 2010 on work programme, the next round of drafting group sessions is scheduled for 24 and 25 February. A formal meeting of the TRIPS Special Session is scheduled for the 3rd of March, and will be followed by informal consultations on the 4th of March.

 

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 to participate in the register. 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 applying to all members although members could choose whether or not to register their own 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 would be handled entirely within the country’s domestic legal system. These include confirmation that the term is an eligible geographical indication, possible challenges, and whether it is subject to exceptions such as because the term is generic.

    (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 have successfully 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: if a term is registered, this would be preliminary (“prima facie”) evidence — which could be rebutted — about who owns the term, that it is protected in the country of origin, etc, but 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.

See also groups in the TRIPS negotiations

Jargon buster

• geographical indications (GIs): place names (or words associated with a place) used to identify products (for example, “Champagne”, “Tequila” or “Roquefort”) which have a particular quality, reputation or other characteristic because they come from that place.
 

• modalities: the way or method of doing something — in the Doha Development Agenda negotiations these are blueprints for the final deal, eg, how to cut tariffs, and reduce agricultural subsidies and support, along with flexibilities to deal with various sensitivities. Once the modalities have been agreed, countries can apply the formulas to tariffs on thousands of products and to various support programmes.
 

• special sessions: meetings of WTO councils and committees focusing only on the Doha Development Agenda negotiations.
 

• TRIPS: Trade-related aspects of intellectual property rights.

> More jargon: glossary

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