Minutes - TRIPS Council - View details of the intervention/statement

Ambassador Chak Mun See (Singapore)
53. The representative of Australia said that her delegation continued to support the collective proposal, which it considered more flexible and suited to Australia's own regime and interpretation of Article 23.4. In this regard, she emphasized that Article 23.4 stipulated that the system to be established should "facilitate the protection of geographical indications for wines". As Article 23.4 also stipulated that participation in the system would be voluntary, given that it should facilitate protection of geographical indications for wines "eligible for protection in those Members participating in the system", wide-ranging acceptance and participation by WTO Members was central to achieving this objective. A register only suited to the legal, economic and social circumstances of a limited number of WTO Members could not facilitate protection and would be redundant. This was one of the main failings of the Lisbon Agreement. The Lisbon Agreement closely mirrored the proposal from the European Communities and their member States, but had only attracted a small and narrow range of adherence. In contrast, for example, a system such as that of the Patent Cooperation Treaty had attracted the voluntary adherence of most WTO Members. Consequently, as a starting-point, all WTO Members should agree that the register to be established under Article 23.4 take account not only of the myriad of legal regimes that Members had chosen for the implementation of their obligations in respect of geographical indications, but also of the resource and administrative implications and constraints of individual Members and the varying trade importance to them of geographical indications. 54. Commenting in a preliminary way on the Hungarian paper, she said that, in her delegation's view, the only appropriate mechanisms for settling disputes were regimes established at the national level for that purpose. The register to be established under Article 23.4 was not intended to alter the substantive provisions of the TRIPS Agreement, which included the clear grant of the right to make determinations concerning the protection of geographical indications at the national level by the courts or administrative structures. Further, a register proposal that did not have any substantive legal effect and operated as an information resource, as mandated, in her delegation's view, by Article 23.4, avoided the need for a costly and resource consuming dispute settlement process. This comment also applied to the proposal from the European Communities and their member States, which made the DSB the ultimate arbiter of a dispute in relation to the registration of an individual geographical indication. Australia was concerned that this would be a most costly and inefficient way of settling such disputes and would query whether the resources of the DSB were properly consumed settling individual disputes of this kind. 55. Continuing, she said that her delegation felt that, in order to make progress on the negotiations under Article 23.4, to which Australia was committed, a useful way of advancing discussions would be to draw out some of the practical implications of the proposals that were before the Council. In that vein, she thanked the European Communities and their member States for their revised proposal, which sought to take account of concerns raised by various WTO Members in relation to their previous proposal. The issue of the multilateral register was a complex one requiring a detailed examination of the various proposals. There was a definite need for a greater exchange of information in relation to each of the current proposals, so that Members could properly understand the implications that each proposal might have for them. Her delegation would, therefore, be grateful for any clarification that the European Communities and their member States could provide in relation to a number of questions her delegation had on their revised proposal. Australia supported a number of statements made by the European Communities in the explanatory note to its proposal, namely that the register should "allow a participating member to inform WTO Members of the geographical indications that are protected in its territory"; that it should only facilitate the application of existing provisions; that it should not require WTO Members to enact new domestic legislative or administrative structures; and that it should not lead to the development of heavy and costly national registration systems. However, having examined these basic elements against the details of the proposal, Australia had serious concerns about the extent to which the proposal was actually consistent with these statements. The proposal went beyond the establishment of an information source in a manner consistent with existing TRIPS obligations. Her delegation's reading of the proposal suggested that the register would build upon existing TRIPS obligations and create a global, pre-emptive system with the legal effect of securing protection in all jurisdictions, unless Members successfully objected within a limited time frame and on limited grounds. This proposal appeared to supersede the right of national governments and courts to make their own determinations regarding the legal protection of individual geographical indications in their own jurisdiction. Furthermore, despite the statement that the register would not require costly new administrative or legal structures, her delegation believed that a number of countries, including Australia, would require new legislative enactments and a new administrative structure to examine and engage in disputes relating to notified geographical indications. She was particularly concerned that, as the proposal went beyond existing TRIPS obligations and was likely to require costly new administrative structures and legislative change, a number of Members would be deterred from participation. 56. Her delegation had noted that paragraph A.1 of the revised proposal from the European Communities and their member States (document IP/C/W/107/Rev.1) provided that participation would be by voluntary declaration. Australia understood Article 23.4 to mean that countries would be able to choose whether to participate, with the implicit corollary that non-participation should not disadvantage the protection of geographical indications of nationals of non-participating Members as against those of participating Members. Australia based this on its interpretation of Article 23.4 as having the objective of facilitating existing obligations. For this reason, she was curious as to the meaning of the phrase "unless otherwise foreseen in this multilateral system" in paragraph A.3. This statement suggested to her delegation that the rights of non-participating Members under the TRIPS Agreement might indeed be prejudiced by that non- participation. This view was reinforced by the references in section C and paragraph D.4 of the proposal to "Members", as distinct from the term "participating Members", which was used extensively in other parts of the proposal. She would be interested to know what form the European Communities and their member States envisaged that the voluntary declaration would take and what would be the legal effect of that declaration. Could a Member subsequently withdraw its voluntary consent to participate and if it did, what would be the consequences in terms of both its obligation to protect and the registration of a geographical indication protected by it as the country of origin? What did the European Communities and their member States envisage that the operating rules would contain; for example, would these contain substantive obligations, or would these be purely procedural in nature? Would the operating rules have separate legal force? What would be the likely consequences of non-compliance with the operating rules? For example, would non-compliance affect the eligibility of a notified geographical indication for registration? 57. Paragraph B.1 of the revised proposal from the European Communities and their member States (document IP/C/W/107/Rev.1) provided that Members shall provide their declaration of participation "without delay". It would be helpful if the EC could clarify what this meant: did the phrase "without delay" refer to the commencement of the register and, if not, to what event did it refer? Did this mean that a Member, which chose not to participate at commencement, could not decide, for example, two-and-a-half or 10 years later that it wished to participate? How would this time frame apply to developing country and least-developed country Members? Paragraph B.2 provided that "all" geographical indications would be notified. Would this obligate a participating country to notify all wine and spirit geographical indications that it protected domestically, even if it did not consider that the international trade significance of those geographical indications warranted international registration? What would be the effect of an unintentional failure to notify a particular geographical indication? Australia would also be grateful if the European Communities could clarify an apparent error in paragraph B.2, i.e. the reference to geographical indications for "all goods [...] corresponding to the definition in Article 22.1". Her delegation had clearly understood the European Communities to have noted, in its explanatory note at paragraph 2, that the current mandate only extended to geographical indications for wines and spirits; therefore she believed that the paragraph in question should read "all wine and spirit geographical indications which comply with the definition set out in Article 22.1". Paragraph 5 of the explanatory note provided that the proposal should not require Members to implement new domestic legislative or administrative structures. Paragraph B.5, however, clearly envisaged that national provisions would, at least in some cases, be necessary to implement the register domestically. These statements appeared to her delegation to be in conflict. Paragraph B.7 of the proposal provided that the Secretariat would publish and notify Members of the notification of geographical indications. This raised the question of the role that the WTO Secretariat could and would play in this process and how this would be funded. Given the voluntary nature of the register, her delegation would assume that any funding required to establish and maintain the register would be generated from participating Members. Did the European Communities envisage that fees would be levied on Members to register geographical indications, or would some form of participation fee be charged? 58. Australia would be grateful for clarification as to why section C of the revised proposal from the European Communities and their member States (document IP/C/W/107/Rev.1) referred generically to the ability of "Members" to examine the published geographical indication and to institute challenges, rather than limiting its scope to those Members participating in the system. Section C appeared to be closely linked to paragraph D.4, which also referred only to "Members". Together, these provisions suggested that any Member, whether or not participating in the system, which had not challenged a notified geographical indication within the specified time frame, could not refuse its protection on the grounds of the provisions of the TRIPS Agreement spelt out in paragraph D.4. Australia would be grateful for clarification as to how these elements of the proposal were consistent with the voluntary notification and registration system foreseen in Article 23.4. Paragraph C.1 placed the tight time frame of 18 months on examination of notified geographical indications by other Members. What would be the case where a Member had only started to participate in the register after publication of a notified geographical indication would the time period for objection by that country then run from the date of participation? Further, since the current provisions of the TRIPS Agreement did not place any time limit on Members to deny protection of geographical indications, how was such a time limit justifiable under the proposal? Her delegation understood the reference in paragraph C.2 to a challenge to the "protection of an individual geographical indication notified by another Member" not to be a reference to protection in the country of origin, but rather to protection in another WTO Member. This suggested that the legal effect of registration was the substantive grant of legal protection in other Members' jurisdictions. If this interpretation was correct, the proposal would clearly have a legal effect well beyond the existing obligations contained in the TRIPS Agreement - which were to provide the legal means for interested parties to prevent use. She would be interested to know the grounds on which registration could be challenged. Would the grounds for challenge correspond to the exceptions available for the protection of geographical indications under the TRIPS Agreement? If there were other grounds, how were these justified by the existing provisions of the Agreement? What would be the effect of a successful challenge? For example, would a challenge have effect in relation to all participating Members or only the Member initiating the challenge? Would registration in relation to a non-challenging Member take effect even if a particular geographical indication were still subject to a dispute between other Members? The proposal from the European Communities and their member States made the DSB the ultimate arbiter of a dispute in relation to registration of an individual geographical indication. Australia was deeply concerned that this proposal ousted from national courts and administrations the question of whether a particular geographical indication was entitled to protection in its own jurisdiction. Further, if the purpose of the register, as Australia understood it, was to provide information about geographical indications that were protected in their country of origin as a reference point for national administrations, her delegation did not see the need for a dispute resolution mechanism. Her delegation was also troubled by the high costs and possible burden on the dispute settlement mechanism that would be involved in the adjudication of such disputes by the DSB and that this in itself might act as a deterrent to widespread participation. 59. Paragraph D.1 of the revised proposal from the European Communities and their member States (document IP/C/W/107/Rev.1) seemed to suggest that registration would still take effect even if there were one or more disputes under way and that any dispute would be referred to in that registration. This again raised the critical question of the legal effect of registration. Her delegation was particularly concerned that, if registration was intended to have legal effect in national jurisdictions, then registration could not and should not occur until all disputes had been finalized. Did the European Communities and their member States envisage that the conditions for homonymous use would also be listed on the register? Paragraph D.3 provided that registration would have the effect of providing a "presumption of eligibility" for protection by interested parties. Her delegation was unsure of the meaning or intended legal effect of this provision or of how such a "presumption" would operate in a domestic jurisdiction and would appreciate clarification of this important point. Further to her comments above on paragraph D.4, this paragraph appeared to impose additional obligations on all Members, whether or not they had chosen to participate in what was ostensibly a voluntary system. She would be grateful for clarification from the European Communities and their member States as to how this provision was consistent with the mandate set out in Article 23.4.