160. The representative of the European Communities agreed with the point made by the representative of Argentina that the EC proposal regarding prior trademark searching could be a burden. That was the reason why the EC proposal foresaw this as an obligation for which right holders should pay themselves. This was recognized in paragraph 9.5 of the proposal, according to which the registration of a geographical indication "shall be subject to the advance payment of a multilateral fee which shall include: (i) a basic fee; and (ii) an individual fee". Paragraph 9.7 stated that such individual fees "shall cover the costs incurred by WTO Members requested to provide", for a given application: (a) the information about prior trademarks; and (b) future trademark applications. This was, in fact, not a novelty in terms of international registration systems for many offices had already been providing for search reports. Furthermore, nothing prevented Members from delegating this work to specialized private companies. The reason behind this obligation was the idea to use it as a mechanism to bring to the fore information about possible conflicts with trademarks. It was meant to help all interested parties, GI and trademark right holders, avoid conflicts in the future. In other words, it was meant to be a mechanism that would help the functioning of the system as a whole.
161. As to the questions raised on irrebuttable presumptions, he confirmed that, under the EC proposal, if a Member did not place a reservation after 18 months, it would waive its right to declare a term generic. However, this kind of determination was not a novelty since it was common practice for trademark offices to decide whether or not signs in applications were actually distinctive and, therefore, registrable as trademarks. As far as geographical indications were concerned, there were Members that were already making this kind of determination. For example, as a result of bilateral negotiations, Canada had engaged in a process whereby around 20 names that were initially considered generics on its territory were no longer treated as such. That was the sort of determination made in application of the flexibility Members were enjoying under the TRIPS Agreement to decide on the genericness of terms, including on whether to protect a term which had formerly been considered generic. While Article 24.6 of the TRIPS Agreement allowed Members not to protect geographical indications of other Members they considered as generic, it did not oblige Members to do so. It was just their choice.
162. After noting that Argentina had made a fair point regarding the treatment of LDCs in the EC proposal, he said that because the proposal allowed LDCs to be participating or non-participating Members there were no exclusion of the possibility for LDCs to place reservations. He recalled that the LDCs provision of the EC proposal only related to the issue of legal effects, but if Members still wished to address this issue they should perhaps discuss the establishment of a transitional mechanism whereby LDCs which did not exercise their rights to examine the notified geographical indications during the 18-month period would have the opportunity to do so in a manner that would be not be burdensome to their administrations. The only reason for the European Communities to provide for this exception for LDCs was simply based on the fact that the mandate given to this Special Session said that the protection to be facilitated was the one that applied to wines and spirits, in other words Articles 22, 23 and 24 of the TRIPS Agreement, and that these provisions currently applied to all Members, except LDCs. The proposal attempted to reflect that situation.
163. He expressed surprise at the point made by the United States that the EC proposed register would result in the wiping out of the use of certain terms in world trade. Intellectual property, and certainly trademarks and geographical indications, sought to monopolize the use of certain terms. The delegation of the United States should be aware of this since the United States were the first holder of trademarks in the world; the use of many terms had, in a way, been wiped out through trademarks, which certainly covered more terms than those affected by geographical indication systems. Intellectual protection was a valid aim and it was legitimate for GI right holders to seek protection not only in their countries, but also in other countries where they wished to operate. Clearly, and this is something the United States had also repeated, all GIs right holders that were trying to gain protection in third countries via this register could, if they had the money to do so, start registering certification marks in these countries. As certification marks would also give a monopoly right on the use of these terms, he was not sure whether the argument of wiping out the use of certain terms should not also apply in this case.
164. He disagreed with the point made that the EC proposal was somehow trying to bypass national administrations, particularly because the proposed system gave Members' national authorities a period of time of 18 months – which was a reasonable one to review an application and decide whether a geographical indication could be protected in their territories.
165. As to the point made that the EC proposal was providing the possibility of seeking global protection on the basis of the protection of a geographical indication in the country of origin, he said that this possibility was based on the TRIPS Agreement itself, which introduced the notion of country of origin. In fact, this was not a new feature in intellectual property systems. For example, trademarks registered in one country enjoyed certain priority rights in others. It was on the basis of the protection in the "country of origin", i.e., the country of first registration, that priority rights could be obtained in other third countries if registrations were lodged within a certain period of time.
