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TRIPS: GEOGRAPHICAL INDICATIONS

Background and the current situation

A product’s quality, reputation or other characteristics can be determined by where it comes from. Geographical indications are place names (in some countries also words associated with a place) used to identify products that come from these places and have these characteristics (for example, “Champagne”, “Tequila” or “Roquefort”).

Two issues are debated in the TRIPS Council under the Doha mandate: creating a multilateral register for wines and spirits; and extending the higher (Article 23) level of protection beyond wines and spirits.

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Last updated: November 2008

This backgrounder has been prepared by the Information and Media Relations Division of the WTO Secretariat to help the public understand the main issues. It is not an official interpretation of the WTO agreements or members’ positions; and because of the need to simplify and summarize, it cannot cover all nuances or all points of the debate in detail. These can be found more precisely in the documents cited

Geographical indications in general  back to top

A product’s quality, reputation or other characteristics can be determined by where it comes from. Geographical indications are place names (in some countries also words associated with a place) used to identify products that come from these places and have these characteristics (for example, “Champagne”, “Tequila” or “Roquefort”). Protection required under the TRIPS Agreement is defined in two articles.

All products are covered by Article 22, which defines a standard level of protection. This says geographical indications have to be protected in order to avoid misleading the public and to prevent unfair competition.

Article 23 provides a higher or enhanced level of protection for geographical indications for wines and spirits: subject to a number of exceptions, they have to be protected even if misuse would not cause the public to be misled.

Exceptions (Article 24). In some cases, geographical indications do not have to be protected or the protection can be limited. Among the exceptions that the agreement allows are: when a name has become the common (or “generic”) term (for example, “cheddar” now refers to a particular type of cheese not necessarily made in Cheddar, in the UK), and when a term has already been registered as a trademark.

Information that members have supplied during a fact-finding exercise shows that countries employ a wide variety of legal means to protect geographical indications: ranging from specific geographical indications laws to trademark law, consumer protection law, and common law. The TRIPS Agreement and current TRIPS work in the WTO takes account of that diversity.

Two issues are debated under the Doha mandate, both related in different ways to the higher (Article 23) level of protection: creating a multilateral register for wines and spirits; and extending the higher (Article 23) level of protection beyond wines and spirits. Both are as contentious as any other subject on the Doha agenda.

Although the two issues are discussed separately, some delegations see a relation between them. In July 2008, a group of WTO members called for a “procedural decision” to negotiate three intellectual property issues in parallel: these two geographical indications issues, and a proposal to require patent applicants to disclose the origin of genetic resources or traditional knowledge used in their inventions (see document TN/C/W/52 of 19 July 2008). But members remain divided over this idea, opponents arguing particularly that the only mandate is to negotiate the multilateral register.

The multilateral register for wines and spirits  back to top

This negotiation, which takes place in dedicated “special sessions” of the TRIPS Council, is about creating a multilateral system for notifying and registering geographical indications for wines and spirits. These are given a level of protection that is higher than for other geographical indications, as explained above. The multilateral register is discussed separately from the question of “extension” — extending the higher level of protection to other products — although some countries consider the two to be related.
The work began in 1997 under Article 23.4 of the TRIPS Agreement and now also comes under the Doha Agenda (the Doha Declaration’s paragraph 18).

The Doha mandate

The Doha Declaration’s deadline for completing the negotiations was the Fifth Ministerial Conference in Cancún in 2003. Since this was not achieved, the negotiations are now taking place within the overall timetable for the round.

Since then …

Three sets of proposals have been submitted over the years, representing the two main lines of argument in the negotiations and some proposed compromises. The latest are (documents downloadable from Documents Online http://docsonline.wto.org on the WTO website):

• The EU’s detailed proposal (TN/IP/W/11) circulated in June 2005 calls for the TRIPS Agreement to be amended (by adding an annex to Article 23.4).
   
  The paper proposes that when a geographical indication is registered, this would establish a “rebuttable presumption” that the term is to be protected in other WTO members — except in a country that has lodged a reservation within a specified period (for example, 18 months). A reservation would have to be on permitted grounds. These include when a term has become generic or when it does not fit the definition of a geographical indication. If it does not make a reservation, a country would not be able to refuse protection on these grounds after the term has been registered.
    

• A “joint proposal”, document TN/IP/W/10/Rev.2, was first submitted in 2005 and revised in 2008. It sponsors are: Argentina, Australia, Canada, Chile, Costa Rica, Dominican Republic, Ecuador, El Salvador, Guatemala, Honduras, Japan, Korea, Mexico, New Zealand, Nicaragua, Paraguay, Chinese Taipei, South Africa, the US.
  
  This group does not want to amend the TRIPS Agreement. Instead, it proposes a decision by the TRIPS Council to set up a voluntary system where notified geographical indications would be registered in a database. Those governments choosing to participate in the system would have to consult the database when taking decisions on protection in their own countries. Non-participating members would be “encouraged” but “not obliged” to consult the database.
    

• Hong Kong, China has proposed a compromise (document TN/IP/W/8). Here, a registered term would enjoy a more limited “presumption” than under the EU proposal, and only in those countries choosing to participate in the system.

These three proposals have been laid out side by side so that they can be compared easily, in a Secretariat paper (document TN/IP/W/12 of 14 September 2005 with additions in May 2007). An earlier compilation is in various versions of the 2003 document TN/IP/W/7. All of these are available on Documents Online http://docsonline.wto.org.

At the heart of the debate are a number of key questions. When a geographical indication is registered in the system, what legal effect, if any, would that need to have within member countries, if the register is to serve the purpose of “facilitating protection” (the phrase used in Article 23.4)? And to what extent, if at all, should the effect apply to countries choosing not to participate in the system. There is also the question of the administrative and financial costs for individual governments and whether they would outweigh the possible benefits.

Opinions are strongly held on both sides of the debate, with some highly detailed arguments presented by each side.

As an idea of the issues under negotiation, the main headings of the latest Secretariat compilation (TN/IP/W/12)are:

• Preamble
    

• Legal form
    

• Participation
    

• Notification (mandatory elements, optional elements, format and other aspects)
    

• Registration (“formality examination”, reservations, content of registrations, form of register)
    

• Consequences of registration (in participating members, in non-participating members, in least-developed country members)
    

• Duration and renewal of registrations
    

• Modifications and withdrawals of notifications and registrations
    

• Fees and costs

In July 2008, a group of WTO members called for a “procedural decision” to negotiate three intellectual property issues in parallel: these two geographical indications issues, and a proposal to require patent applicants to disclose the origin of genetic resources or traditional knowledge used in their inventions (see document TN/C/W/52 of 19 July 2008). But members remain divided over this idea, opponents arguing particularly that the only mandate is to negotiate the multilateral register.

Extending the “higher level of protection” beyond wines and spirits  back to top

Geographical indications for all products are currently covered by Article 22 of the TRIPS Agreement. The issue here is whether to expand the higher level of protection (Article 23) — currently given to wines and spirits — to other products. (The difference is explained above.) A number of countries want to negotiate extending this higher level of protection to other products. Some others oppose the move, and the debate has included the question of whether the Doha Declaration provides a mandate for negotiations.

Some countries have said that progress in this aspect of geographical indications would make it easier for them to agree to a significant deal in agriculture. Others reject the view that the Doha Declaration makes this part of the balance of the negotiations. At the same time, the European Union has also proposed negotiating the protection of specific names of specific agricultural products as part of the agriculture negotiations.

The Doha mandate

The Doha Declaration notes in its paragraph 18 that the TRIPS Council will handle work on extension under the declaration’s paragraph 12 (which deals with implementation issues). Paragraph 12 says “negotiations on outstanding implementation issues shall be an integral part” of the Doha work programme, and that implementation issues “shall be addressed as a matter of priority by the relevant WTO bodies, which shall report to the Trade Negotiations Committee [TNC] … by the end of 2002 for appropriate action.”
Delegations interpret Paragraph 12 differently. Many developing and European countries argue that the so-called outstanding implementation issues are already part of the negotiation and its package of results (the “single undertaking”). Others argue that these issues can only become negotiating subjects if the Trade Negotiations Committee decides to include them in the talks — and so far it has not done so.

Since then …

This difference of opinion over the mandates means that the discussions have had to be organized carefully. At first they continued in the TRIPS Council. More recently, they have been the subject of informal consultations chaired by the WTO director-general or by one of his deputies.

Members remain deeply divided, with no agreement in sight, although they are ready to continue discussing the issue.

Those advocating extension include Bulgaria, the EU, Guinea, India, Jamaica, Kenya, Madagascar, Mauritius, Morocco, Pakistan, Romania, Sri Lanka, Switzerland, Thailand, Tunisia and Turkey. They see the higher level of protection as a way to improve marketing their products by differentiating them more effectively from their competitors’; and they object to other countries “usurping” their terms. The latest proposal from the EU is document TN/IP/W/11, circulated in June 2005. This calls for the TRIPS Agreement to be amended so that all products would be eligible for the higher level of protection in Article 23, and the exceptions in Article 24 (see above), together with the multilateral registration system currently being negotiated for wines and spirits (see above).

Those opposing extension include Argentina, Australia, Canada, Chile, Colombia, the Dominican Republic, Ecuador, El Salvador, Guatemala, Honduras, New Zealand, Panama, Paraguay, the Philippines, Chinese Taipei and the United States. They argue that the existing (Article 22) level of protection is adequate. They caution that providing enhanced protection would be a burden and would disrupt existing legitimate marketing practices. They also reject the “usurping” accusation particularly when migrants have taken the methods of making the products and the names with them to their new homes and have been using them in good faith.

The Secretariat has compiled the issues raised and the views expressed in this debate, in document WT/GC/W/546 and TN/C/W/25. In June 2008, Director-General Pascal Lamy issued a report on consultations conducted on his behalf by his deputy, Rufus Yerxa, in document TN/C/W/50, which also includes consultations under the heading of the TRIPS Agreement and the Convention on Biological Diversity (CBD).

In July 2008, a group of WTO members called for a “procedural decision” to negotiate three intellectual property issues in parallel: these two geographical indications issues, and a proposal to require patent applicants to disclose the origin of genetic resources or traditional knowledge used in their inventions (see document TN/C/W/52 of 19 July 2008). But members remain divided over this idea, opponents arguing particularly that the only mandate is to negotiate the multilateral register.

> Papers submitted in the negotiations