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

Ambassador Eui-yong Chung (Korea, Republic of)
C.i Definition of the term "geographical indication" and eligibility of geographical indications for inclusion in the system
36. The representative of Australia said that there could be no question that the definition set out in Article 22.1 was the operative definition for the Special Session's work. That definition was agreed as part of the Uruguay Round balance of rights and obligations, and his delegation could see neither any need nor justification for moving away from that already agreed benchmark. To attempt to do so would risk unnecessarily delaying the work of this body. His delegation was of the view that the definition, while perhaps ostensibly clear and unambiguous, like any legal text was open to varying interpretations. Referring to the comment made by the representative of Switzerland that it was a flexible definition, he said it might be too flexible. It was essential that Members developed a common understanding of the scope and operation of the definition of geographical indications in Article 22.1. It would be a mistake to assume that all disagreements over specific terms could be easily resolved on a case by-case basis after the multilateral system had been negotiated, particularly in accordance with a cumbersome, highly regulatory and costly arbitration system suggested earlier by a Member. His delegation believed that it was more sensible for the Special Session to face at this stage some of the tricky issues that had arisen and to shed some light on what exactly it was that the multilateral system was to facilitate the protection of. Only in that way could Members be clear about the subject-matter of the multilateral system. 37. First, a very basic question was whether non geographic place names could meet the Article 22.1 definition. Australia was unable to accept the concept that plain English language terms could meet the definition in Article 22.1 of a geographical indication. The EC had suggested that "traditional expressions" were "so closely linked to a geographical origin as to meet the TRIPS definition of a geographical indication". The quote was taken from a Commission's press release on EC Regulation 753/2002. Inter alia, the Regulation reserved for the exclusive use of Portuguese producers of "Quality liqueur wine" words such as "vintage", "ruby" and "tawny". Those words were not English translations of Portuguese terms, they were ordinary English terms. His delegation had serious concerns about the concept that such plain English language terms such as those could meet the Article 22.1 definition. From an etymological point of view, it was scarcely believable that any English descriptive word could be so closely linked to Portugal, as a geographical indication, as to meet the TRIPS definition of a geographical indication. As it had to be assumed that the EC would be looking to include terms such as those in the multilateral system, his delegation considered that the issue needed to be further examined in the Special Session as part of its ongoing work to avoid disagreements in the future. Referring to the EC's comment that it would notify its geographical indications in due course, he pointed out that, if that date of notification were the day after the proposed registration system came into force, that would be too late. The EC had also said in its communication that the link between the territory and the defining quality, characteristic or reputation should not be "trivialized". He wondered whether the use of English language terms to protect a Portuguese geographical indication was not "trivializing" the concept of geographical indication. 38. The second question was whether it was legitimate to limit the size or type of geographical unit that could be considered a geographical indication. In particular, could a country name qualify under the definition and if so, under what circumstances? For example, could "Australia" be notified as a geographical indication for wines under the multilateral system? Could Canada notify "Canadian Club" whisky? 39. A third issue concerned how much, or which stages, of the production process needed to be conducted in the geographical location in question in order to be able to claim that a geographical indication referred to that area. Some of the EC regulations in the field of geographical indications suggested that all elements of the production process needed to occur in the same geographical area. It was interesting that this principle was now under challenge in European courts, in relation to terms relating to pigmeat and cheese. A strict interpretation of production process requirements might exclude other Members' geographical indications for wines and spirits from the definition. Therefore, his delegation would like further discussion on that issue. 40. Fourth, how would a Member notifying a claimed geographical indication demonstrate the "quality, reputation or other characteristic" of a wine or a spirit and establish that the quality, reputation or other characteristic of the wine or spirit was "essentially attributable to its geographical origin"? That was the issue of "linkage", emphasized by some delegations as of key importance. It was therefore critical that all Members were clear on what was meant by that linkage. The draft legislation on geographical indications of some Members still in the process of implementing their obligations under Section 3 of Part II of the TRIPS Agreement appeared to deal with those issues only via the definition itself, leaving open the question of how the two criteria could be proved and met. Would Members notifying claimed geographical indications to the system have to include supporting documentation setting out how the term met the definition? If so, Members would need to have some kind of collective understanding about the kind of information that must be included. 41. Lastly, there was the question of territoriality and how that concept would apply to the definition under the multilateral system. This raised some critical issues concerning eligibility for protection of claimed geographical indication terms. In Australia's view, there was no question that the fundamental intellectual property principle of territoriality must apply to the multilateral system. The territoriality principle was the concept that intellectual property rights were only valid in respect of the territory for which they had been acquired and in which they could be enforced. In other words, a country's own laws would apply to determine whether a geographical indication was granted protection within its borders. The practical effect of this principle was that Members would not be obliged to accept at face value another Member's claim that a particular notified geographical indication for a wine or a spirit met the definition in Article 22.1. If Australia notified the term "Australia" as a geographical indication for its wines, would the European Communities be prepared to accept that term as a geographical indication or would they wish to retain the right to apply the definition of geographical indication in the manner it was usually applied at the Community level? 42. Turning to some other related issues, he said that there was no question that a Member notifying and seeking registration of a particular claimed geographical indication must actually protect that term at the national level. The reference in Article 23.4 to eligibility for protection must mean eligibility as measured against the relevant rules/criteria set out in Section 3 of Part II of the TRIPS Agreement. The Collins English Dictionary defined "eligible" as "fit, worthy, or qualified, as for office". In this context, the issue was whether a particular term was qualified for protection in the sense that it met the requirements of Section 3. There was no justification for ascribing any other meaning to the phrase "eligible for protection", and therefore no justification for suspending the operation of Article 24.9, or any of the other existing TRIPS rules on geographical indications, in the context of a proposed multilateral system. To be eligible for protection, a geographical indication must both be protected at the national level and meet the definition in Article 22.1. In regard to the latter, the principle of territoriality must be applied.
TN/IP/M/2