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

Ambassador Eui-yong Chung (Korea, Republic of)
European Union
C.ii The purpose of the notification and registration system
67. The representative of the European Communities said that the protection of geographical indications enshrined in Section 3 of Part II of the TRIPS Agreement must be provided by law in all WTO Members. Right holders, consumers and administrations alike had genuine interest in gaining easier access to those legal means that the TRIPS Agreement made available to them in order to prevent misuse of geographical indications in their markets. According to Article 1.1 of the TRIPS Agreement, WTO Members were free to choose the means to implement the requirements of the TRIPS Agreement. The multilateral register should fully respect that principle. 68. He recalled the composite paper prepared by the WTO Secretariat summarizing the responses to the checklist of questions issued under Article 24.2 (IP/C/W/253): protection of geographical indications was granted via systems of registration of geographical indications, trademark registration, and case law relating to unfair competition law. Therefore, facilitating the protection of geographical indications via a multilateral registration system necessarily referred to the implementation of existing obligations and not to the creation of new ones. His delegation fully endorsed that principle. Therefore, it believed that, in order to "facilitate" the legal protection prescribed by Section 3 of Part II of the TRIPS Agreement, a multilateral system of notification and registration would have to help administrations to implement, and producers and consumers to avail themselves of, the legal protection without creating new substantive obligations going beyond the existing requirements of the TRIPS Agreement. 69. He said that the proposals tabled by the EC and their member States (IP/C/W/107/Rev.1) and by Hungary (IP/C/W/133/Rev.1) suggested a system whereby no new substantive obligations were imposed on WTO Members. Yet those proposals, via a presumption of eligibility for registered geographical indications, made the geographical indication protection easier to implement, as stated in the EC informal note (JOB(02)/70). What was said in the note was in full conformity with the proposal tabled in 2000 in document IP/C/W/107/Rev.1, paragraph D.3, i.e., that participating Members were to facilitate the protection of an individual registered geographical indication by providing the legal means for interested parties to use the registration as a presumption of the eligibility for the protection of the geographical indication. At the same time, the courts or authorities would remain free to independently examine the value as evidence of a registration and would thereby maintain their freedom to assess whether there actually was, in the specific case, any infringement of rights and interests, with due respect to the outcome of the negotiations foreseen in paragraph 18 of the Doha Ministerial Declaration. Asking those using names notified by other countries, for example, to defend their case first before local courts would discourage piracy and benefit the entire spectrum of interested parties: producers, consumers and administrations. Producers intending to conduct a policy of international expansion could make cost savings when defending their names around the world. Occasional free riding on notified names would be discouraged as producers using geographical indications notified by other countries would possibly have to prove their case before domestic courts first (and incur the litigation costs) if asked to do so. Consumer associations with fewer resources than producers and yet willing to prevent consumer deception could more easily defend their interests against those who marketed their products using names notified by others to the WTO. As a result, usurpation would diminish and, in turn, litigation and administration costs would decrease. Public administrations would have timely information that would allow them, for example, to not register trademarks containing geographical indications as prescribed by Article 23.2. His delegation was doubtful that the proposal of Canada, Chile, Japan and the United States was suggesting a system where the protection of geographical indications was in any way "facilitated". That proposal stated that national authorities would be bound to refer to that list but provided for no mechanism to monitor such obligation to "refer". Furthermore, no effect was attached to the observance of that list, if national authorities looked at it at all. In any event, national authorities, even if they referred to that list, could choose to completely ignore it in their domestic administrative decisions. Therefore, publishing a list of geographical indications exclusively for information purposes did not guarantee that the protection would be "facilitated". Also, the proposal by Canada, Chile, Japan and the United States did not greatly help producers, but quite the contrary. Producers using notified names might rely on the possibility that national authorities, under that proposal, would refer to the list and, under that belief, start litigation. Legal uncertainty surrounding the effect of that proposal would increase litigation and, eventually, administration costs. In the view of his delegation, the proposed database would bring no benefits to consumers, who would remain as unprotected as before. The proposal did not bring any added value to the legal standing of consumers, who would continue to witness wide misuse of names in their territories.
IP/C/W/253; IP/C/W/107/Rev.1; IP/C/W/133/Rev.1; JOB(02)/70