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

Ambassador Chak Mun See (Singapore)
G IMPLEMENTATION OF ARTICLE 23.4
56. The representative of Australia wished to confirm her delegation's support for the collective proposal (document IP/C/W/133/Rev.1) and comment on the paper presented by Hungary at the previous meeting in (document IP/C/W/234). Her delegation appreciated that Hungary had submitted a paper on an opposition/challenge procedure in the multilateral system to be set up under Article 23.4. Australia was committed to moving forward in the negotiations under Article 23.4 and the submission of substantive papers on possible elements of the multilateral register provided an excellent opportunity for Members to focus on the details of the type of system that Members might agree upon as a means of advancing the discussions. Article 23.4 was aimed at facilitating existing rights, not creating new rights. The system that it envisaged therefore did not require a formal dispute settlement system of the kind outlined by Hungary. Any proposal such as those advanced by the European Communities and Hungary for a multilateral register that would operate so as to override or pre-empt national geographical indication systems, and would require a dispute settlement mechanism to arbitrate on the legal effect of registration in domestic jurisdictions, was beyond the scope of Article 23.4. The Hungarian proposal, combined with the EC proposal, imposed substantive new obligations on Members. For example, it would require Members to submit to a formal opposition procedure and dispute settlement mechanism in relation to individual geographical indications, the outcome of which would have domestic effects. This was a considerably greater obligation than providing the legal means for interested parties to prevent this, as required under Article 23.1. Further, the formal nature of Hungary's proposal detracted from the flexibility that the TRIPS Agreement provided to Members to implement intellectual property protection in a manner that best suited their own legal, social and economic circumstances. In particular, Hungary's proposal removed jurisdiction from domestic courts or administrative bodies to make final determinations to determine the status of individual geographical indications in their own territory. 57. Offering specific comments on Hungary's proposal, she said that her delegation agreed with the statement in paragraph 4 that it was highly doubtful whether the WTO dispute settlement mechanism could resolve disputes concerning individual geographical indications. Even if the DSU could provide such a mechanism, her delegation was concerned, particularly in light of the potential volume of notifications under Article 23.4, about the increase in the number of cases under the WTO dispute settlement mechanism that this might bring and the cost and other implications that the submission of or defence in cases concerning individual geographical indications under the DSU would have for many countries, including Australia. Her delegation had noted Hungary's acknowledgement that the dispute settlement mechanism should accommodate the needs of smaller Members and those with less bilateral bargaining power, but was concerned that submitting to an additional formal international dispute resolution process would lead to excessive costs and might entail its own inherent lack of fairness for such countries. Such formal processes would inevitably require parties to provide oral and/or written submissions and might involve appearances before an arbitration panel in Geneva. Such a system would disadvantage those countries with less resources both in terms of the ability to defend decisions that they had taken to oppose automatic protection in their country and the capacity to take action against decisions of other countries. Australia was concerned that the possible costs that this might involve could act as a deterrent to many Members to participate in the system. Paragraph 4 of Hungary's paper stated that an opposition procedure was necessary to ensure that the register would not contain "misleading" geographical indications. Her delegation would be grateful if Hungary could clarify what was meant by "misleading" in this context. The exceptions to geographical indication protection that could be claimed in domestic jurisdictions were set out in the TRIPS Agreement, for example in respect of "generic terms" in Article 24.6. What was the intended scope of the issues on which the arbitral panel could make determinations? Would it extend to decisions that a particular geographical indication did not meet the definition or criteria for protection under the TRIPS Agreement, or fell within the exceptions provided under the TRIPS Agreement? Or would these decisions be outside the competence of the arbitral body? How would the issue of a "misleading" geographical indication fit within the protection provided under Article 23? Her delegation was concerned about the suggestion in paragraph 5 that a multilateral system was the appropriate mechanism to determine challenges involving individual geographical indications, rather than leaving it to individual Members. For example, regarding an exception claimed under Article 24.6, should it not be for an individual Member to determine whether a particular term was "customary in the common language" of that Member as the "common name for such goods and services"? If this was to be determined at the multilateral level, how would the multilateral system determine the signification of a term in an individual country? What evidence would a country need to adduce and which party would bear the burden of proof? Hungary's proposal provided limited details of the likely procedural rules, membership and funding for the envisaged arbitral body. Further details of such issues were important to determine the feasibility of the proposed mechanism. How would the arbitrators be selected? Would it be a standing body or one created on an ad hoc basis? How could the relevant expertise of arbitrators be guaranteed? How would the body be funded: from existing Secretariat resources, contributions from Members participating in the system, or otherwise?
IP/N/1/UKR/1; IP/N/6/UKR/1; IP/N/2/UKR/1; IP/N/5/UKR/1; IP/N/3/Rev.10
IP/C/M/30