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

Ambassador Eui-yong Chung (Korea, Republic of)
C.iii What is meant by a "system of notification and registration"
101. The representative of Australia said that the term "system" was defined in the Collins Dictionary as "a group or combination of interrelated, independent, or interacting elements forming a collective entity". As such, the word "system" could be equated with any one element of its constituent parts. A "system" was a collective, interacting whole with all its various interconnected parts. In this case in particular, the functions of notification and registration were those interconnected parts. His delegation did not consider it helpful to seek to equate the system with any other type of qualitative description. It was more fruitful to focus on the nature and objectives of its constituent parts and their interaction. "Notification" was defined by Collins as "1. the act of making an announcement or of making something known; notifying; 2. a formal announcement; 3. something that notifies; a notice". The word "notify" was defined as "1. to tell; 2. to make known; announce". In the context of the multilateral system with which this body was concerned, notification was the act of submitting, presumably in writing, to the system administrator one or more claimed geographical indications that a Member sought to include in the system. "Registration", on the other hand, was defined by Collins as "1. the act of registering, that is of an entry being made or state of being registered; 2. an entry in a register". In turn, "register" was defined as "1. an official or formal list recording names, events, or transactions; 2. the book in which such a list is written; 3. an entry in such a list ...". The Collins went on to provide a total of 15 meanings for the word "register", none of which made any reference to the concept of legal effect. His delegation rejected the assertion that, to be consistent with the Article 23.4 mandate, the registration system must have a direct legal effect in national jurisdictions. His delegation took issue with the statement in paragraph 29 of the EC paper (JOB(02)/70) that "registration … refers to a specific way of implementing the TRIPS requirement that differs, for example, from the common law approach based on case law". Such an interpretation would involve an increase in the level of obligations and a restriction of Members' rights under TRIPS Article 1.1. The act of "registration" for the purpose of the Special Session involved the act of entering a notified term in a list set up and maintained for that purpose by the administrator of the multilateral system. The act of registration, performed by the system administrator, was thus distinct from the act of notification performed by a Member. His delegation also noted that, while the TRIPS Agreement did refer in other sections to registration, those references related to national registration systems, and in particular to intellectual property rights such as trademarks, which were commonly protected through national registration. This was clearly not the case of geographical indications where issues relating to territoriality did not arise. There was, therefore, no question of the right of each Member to apply its own legislation in determining the eligibility for registration of the subject-matter at issue. It was clear that the TRIPS Agreement allowed Members to use a variety of mechanisms to protect geographical indications and thus there was no value in seeking to correlate the references to registration in different parts of the TRIPS Agreement. The different contexts in which the word was used made any such comparison meaningless. In his delegation's view, there would rarely be any need for a notified term to undergo a preliminary examination before being placed on the register. Provision might have to be made for refusing registration of mischievously notified terms (for example, if a Member notified the word "telephone" as a geographical indication for a fortified wine). Aside from that, however, because of the principle of territoriality, it would not be possible to pronounce with any finality whether a particular term met the definition in Article 22.1. That would be a matter for individual Members to determine. 102. If the WTO Secretariat were to be charged with the responsibility for administering and maintaining the register, then it would also be necessary to consider how the costs of maintaining the system were to be met. Members could not ignore the fact that maintenance of a multilateral system would have cost implications and that those needed to be borne in a fair and equitable way. Perhaps this should occur by charging a user fee, whereby the cost of the system should be borne by those Members who used, and hence benefited from it, the most. Again, this would be consistent with other similar multilateral systems.
TN/IP/M/2