71. The representative of the European Communities, referring to the extensive comments and questions raised at the meeting of the TRIPS Council in September 1998 by Members on its proposal of the European Communities and their member States for a multilateral register of geographical indications for wines and spirits (document IP/C/W/107), wished to clarify what he believed were some important aspects of such a register. Regarding the scope of the register, he said that Article 23.4 clearly referred to wines only. However, Ministers at the Ministerial Meeting in Singapore in 1996 had taken a clear decision in favour of the inclusion of spirits. They had endorsed the TRIPS Council's report (1996) as contained in document IP/C/8 which, in paragraph 34, said "[…] in regard to geographical indications […] the Council will initiate […] preliminary work on issues relevant to the negotiations specified in Article 23.4 of the TRIPS Agreement […] for wines. Issues relevant to a notification and registration system for spirits will be part of this preliminary work. All of the [..] work would be conducted without prejudice to the rights and obligations of Members under the TRIPS Agreement […]." Ministers had not distinguished between wines and spirits in relation to the work to be carried out, despite the fact that Ministers had the competence to take such a decision. Against this background, spirits had to be included in the Council's work. Any other course of action would be in open contradiction of the decision by the Ministerial Conference. With respect to the inclusion of "other products" in a register, the TRIPS Agreement did not provide a legal basis. However, why should Members rule out possibilities already at this stage, which they might appreciate at a later point in time? There was no need to take a decision on this issue now.
72. He reiterated that his delegation's proposal was not intended to change the level of protection under the obligations of the TRIPS Agreement. However, at the last meeting of the TRIPS Council, several Members had questioned whether the proposal correctly reflected the TRIPS Agreement – in particular, Article 23.3 (about homonymous geographical indications) and Article 24.5 (about the prior use of a trademark) – by proposing that Members should undertake negotiations with respect to these points. Both provisions related to holders of a legitimate right. His delegation believed that conducting negotiations was the only possible way to ensure equitable treatment of the different producers and to avoid consumers being misled. However, this did not mean that the geographical indications concerned should not be registered. Article 24.1 explicitly referred to the possibility of entering into negotiations and underlined that "the provisions of paragraphs 4 through 8 […] shall not be used by a Member to refuse to conduct negotiations […]".
73. Coming to the voluntary character of the system (IP/C/W/107, sub I.), he said that an ideal system would require that all Members participate in it. Nevertheless, it was his delegation's view that it should be a voluntary system. This position was supported by the wording of Article 23.4 of the TRIPS Agreement, which said: "[…] negotiations shall be undertaken in the Council for TRIPS concerning the establishment of a register of geographical indications […] eligible for protection in those Members participating in the system". Another important question was whether or not such a system, although based on voluntary participation, would be binding on all WTO Members once a geographical indication had been registered. At first sight, the logical response to this question seemed to be that a voluntary system could only be binding on those Members participating in the system. However, this was not the solution the European Communities and their member States favoured. In his delegation’s view, all WTO Members should be subject to such a register, for reasons of transparency and efficiency.
74. To counterbalance this, it seemed only fair that all WTO Members might raise objections against an application for registration of a geographical indication, as described in the proposal (IP/C/W/107, sub III.). Such an approach would lead to further transparency and clarity of a registration system. In regard to the question of how the "opposition procedure" (IP/C/W/107, sub III. and V.) and its legal effects related to the voluntary character as just described, he recalled that, at the last meeting of the TRIPS Council, several references had been made to Section V.3 of the proposal, which outlined that the refusal of a registration would only benefit a Member which had opposed the registration and would not be valid vis-à-vis all WTO Members. On this matter, he wished to state, first, that the "opposition procedure" – and the proposed register as such – was neither designed nor meant to create conflicts. On the contrary, it should avoid potential conflicts, by providing transparency with regard to the situation of the original applicants and opponents. Secondly, his delegation expected that the number of WTO Members concerned with a specific problem in relation to a geographical indication would, most likely, be limited. Indeed, in practice only a limited number of countries generally had a real interest in a specific geographical indication. Having said this, he felt that it might be useful to make the effects of an opposition procedure dependent on the type of reasons on which the opposition was based. In this respect, he wished to develop further the intervention made at the last meeting by his delegation concerning Member-specific exceptions to the protection of a geographical indication. He pointed out that in the proposal (IP/C/W/107, sub III.), four reasons had been listed on which an opposition could be based: (1) the question of whether a geographical indication fulfilled the definition, as contained in Article 22.1 of the TRIPS Agreement; (2) the question of whether it was still protected in the country of origin (Article 24.9 of the TRIPS Agreement); (3) the decision of whether a geographical indication had become generic; and (4) in the case of Article 22.4 of the TRIPS Agreement, i.e. protection against a geographical indication which, although literally true as to the territory, region or locality in which the goods originated, falsely represented to the public that the goods originated in another territory. The first two reasons seemed to be of a more general interest, while the last two reasons were of a more Member-specific interest. It was unlikely that many WTO Members would be concerned when it came to these latter two reasons. In this context, he added that it might be useful to discuss further reasons for objections – as had been suggested at the last meeting of the TRIPS Council. He suggested that an additional reason could be "fraud" when applying for the registration of a geographical indication.
75. Coming to the elements of proof, i.e. to the question of what kind of proof would be appropriate, he said that Members should not limit themselves as to what should be recognized as acceptable proof, in order to take into account the different legal systems in WTO Members. It could be the relevant legislation, as suggested in his delegation’s proposal (IP/C/W/107, sub I.), but could also be national certificates of registration, information on the original characteristics of the product, statistics of production, national regulations on the quality applicable to the product and the existence of producers' associations. Certainly, elements of proof should fully support an application for registration and, when objections to a registration were being raised, they should fully support the objections.
76. As regards geographical indications protected under regional or multilateral agreements, he reiterated his delegation's suggestion that the WTO Secretariat should be supplied with the agreements themselves and a list of geographical indications registered under those agreements. This proposal had been made in the interest of achieving maximum transparency. It did not mean that a different group of geographical indications would be created to which different general rules (e.g. on submission of proof) would apply.
77. Regarding the relationship between the "opposition procedure" and dispute settlement, another important question was who should decide about a registration and an opposition and how this would relate to possible dispute settlement, if at all. His delegation’s proposal stated that an appropriate mechanism would have to be devised to cope with "objection cases" in order to settle cases of (potential) disputes. The European Communities and their member States believed that the needs of WTO Members with respect to potential disputes and the characteristics of such a mechanism would become clearer once the discussion had advanced further on other aspects of the register. Recalling that, at the last meeting of the TRIPS Council, several delegations had raised the question of possible costs of a register, he said that one could only have a clear idea of the costs involved once one knew how the register would operate. However, he did not believe that the costs would go beyond the "normal"; Members should avoid setting up an expensive system, be it money-wise or in terms of manpower.
78. Finally, on the relationship between the register and national competences (e.g. the role of domestic authorities), he underlined that it was not his delegation’s intention that national systems be replaced. His delegation understood Article 23.4 as a transparency exercise with the important objective of creating more clarity and legal certainty in the area of geographical indications for wines and spirits. This also meant that national authorities would continue to decide on the acceptance, maintenance and protection of a geographical indication in accordance with the national rules and in compliance with the TRIPS Agreement and that a geographical indication, once registered on the multilateral register, should be enforced pursuant to the domestic rules.
