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

Ambassador C. Trevor Clarke (Barbados)
European Union
B.i Cluster 1 (Legal effects and participation)
10. The representative of the European Communities said that because of the importance his delegation and the other 107 co-sponsors of document TN/C/W/52 attached to this issue, his delegation had circulated in writing the elements of the replies it had given during the Special Session meetings of 4 and 5 December. Further to this circulation it had received additional requests for clarification. As suggested by the Chairman, he would structure his intervention according to the three clusters. 11. Recalling his delegation's full support of each and every part of document TN/C/W/52, he said that that document reflected the EC's position on the register. There were some issues regarding notification and registration or other issues which had voluntarily not been touched upon in TN/C/W/52. Certain key questions had been settled, and his delegation would therefore build upon the work done in the past instead of reinventing the wheel. 12. On the important issue of development, he noted that TN/C/W/52 was the only proposal that addressed the key interests of developing countries in a TRIPS amendment to include a disclosure requirement in patent applications and the extension of the additional GI protection currently enjoyed by geographical indications (GIs) for wines and spirits to GIs for other products. The EC had substantially adjusted its views on the disclosure issue to better take into account the interests of developing countries. Secondly, TN/C/W/52 was the only proposal that included provisions on special and differential treatment for developing countries and in particular for least-developed countries. Finally, TN/C/W/52 was the only proposal which was supported by a vast majority of developing countries. There was no comparison in terms of support by those countries between this proposal and others. 13. He recalled that his delegation had expanded at length on the important issue of the legal effects of registrations at the meeting of last December. He wished to address a few aspects which had not been touched upon: - When and by whom would the register be consulted? Document TN/C/W/52 stipulated that the register would be consulted and its information be taken into account: (i) by domestic authorities; (ii) in the framework of existing procedures provided for by national law; and, (iii) in relation to decisions regarding registration and protection of trademarks and GIs. Under the proposal, domestic authorities would consult the register and take this information into account when making decisions regarding the registration and protection of trademarks and GIs. In response to question 47, he said that such decisions might be made in the framework of administrative procedures regarding trademark or GI applications, e.g. examination procedures and third parties' opposition procedures, but that this answer also applied to judicial decisions regarding the protection of trademarks and GIs. - What would be the consequences of a registration for the national system of a third country? What would be the changes brought by the proposal contained in TN/C/W/52 in comparison with the EC's previous proposals? The issue of the consequences of a registration was one of those where his delegation had shown much flexibility. TN/C/W/52 had incorporated changes such as the elimination of the opposition procedure at international level. He recalled that in November 2007 the EC's new ideas had proposed a rebuttable presumption regarding three elements: (i) that the a name on the register was a GI in accordance with the definition of TRIPS Article 22.1; (ii) that it was not a generic; and (iii) that it did not falsely represent to the public the true origin of the goods. In contrast, document TN/C/W/52 focused on only two consequences of the register. The first one would be that a name on the register would enjoy the prima facie evidence that it met the definition of a GI under TRIPS Article 22.1. As the rebuttable presumption seemed to have raised concerns in some countries, TN/C/W/52 had made clear that the information of the register should be considered on its appearance, i.e. at first sight as attesting only a fact. In other words, the register with all the information notified by the country of origin would provide the evidence that the name was, on its appearance, a GI. The second consequence of an entry on the register would be that any assertion regarding the genericness of the name should be substantiated. There would no longer be any rebuttable presumptions, and actually not even a prima facie evidence concerning genericness. These were significant changes, showing that the proposal in TN/C/W/52 was a compromise. He added that this compromise on the consequences of a registration had been made to address, as part of S&D negotiations, the developmental aspect. - In response to the question why the other exceptions under Article 24 had not been mentioned, he said that this related to a critical element in the proposal of TN/C/W/52, namely the clear distinction that should be made between GI definition and GI protection. Prima facie evidence related only to the GI definition: the entry of a name on the register did not imply automatic GI protection. To be protected in a third country, the GI would have to follow the procedures provided for in that country. When consulting the register and taking its information into account, the domestic authorities would continue to handle the procedure, the evidence, the legal arguments and take the final decision on the matter at stake in light of all elements available. In other words, when domestic authorities examined whether or not a GI could be protected, they would continue to be able to rely upon the domestic rules regarding, for example, the exceptions of genericness or of prior trademark rights. Under the proposal contained in TN/C/W/52, Article 24 TRIPS and all its exceptions would continue to be available. - As regards the meaning of the words "evidence", "proof" and "substantiate", he said that the proposal contained in TN/C/W/52 did not aim at providing a legal definition of each of them. He would, however, give some clarifications. Firstly, "prima facie evidence" was evidence, which on its appearance, or literally put, attested at first sight to a certain fact: the register with all the information notified by the country of origin regarding a geographical name would provide evidence that a name was, on its appearance, a GI. "Proof" related to the elements of the GI definition under Article 22.1. It could take any form provided for under domestic law. It would be up to each domestic authority to assess whether or not the proof provided actually related to the elements of the GI definition. Regarding the meaning of the requirement that "assertions on the genericness must be substantiated", he said that the provision would be implemented by each Member according to its domestic legal system and practice. At this stage, his delegation did not see the need for agreeing a precise definition of those terms; however, if Members so wished, his delegation could enter into such an exercise. - As regarded questions on procedure, he said that first each GI would go through a domestic process of approval - which could be administrative or judicial - in a Member in accordance with its IP legislation, which had been duly notified and scrutinized by other Members. In other words, the registration of the GI on the register would have been accompanied by all the necessary information agreed by Members, showing that it had met the definition of Article 22.1. A GI would remain in the register as long as it was protected in the country of origin in accordance with the TRIPS Agreement. The register would be consulted in the course of trademark procedures, which actually would not be different from the proposal in document TN/C/W/10/Rev.2. The register would not, however, entail protection: the fact that a name had been recorded on the register could not be treated as a ground for refusing, for example, a trademark application by a third party. Using the example of the GI "Bordeaux", he said that the register would contain all the supporting information checked by the EC and France that "Bordeaux" met the TRIPS GI definition and was protected in the country of origin in accordance with the TRIPS Agreement. If the GI right holders of "Bordeaux" wanted to protect it in a third country, they would have to go to the competent national authority to seek the type of protection provided for in that country. They would have to follow the procedure described and submit the information they had provided. In the course of that procedure the authority of that third country would consult the register and note that "Bordeaux" was not on the register. There would be two options possible. Option 1: no third party had submitted any information. The authority would not look further into the issue of the GI definition and would treat it in accordance with its national procedure, it being understood that the authority might deny protection to "Bordeaux" on any other grounds in accordance with its national law or any relevant international treaties to which the country was bound. Option 2: if on the contrary the national authority held proof that the GI on the register did not meet the GI definition or if a third party had provided information on the GI, the authority might decide to dig further into the case. It might ask the GI right holder to provide more supporting information and the national authority would, on the basis of the elements collected, decide whether or not "Bordeaux" met the GI definition. It went without saying that the authority would decide on the overall question of whether or not "Bordeaux" should be protected in its territory in accordance with its domestic law. Whatever decision was or were to be taken, it might be revised at any time if the national procedures so allowed. - On Member coverage or participation, he said that TN/C/W/52 had clearly indicated that "Each WTO Member shall provide that domestic authorities will consult the register and take its information into account ...". In other words, the register would apply to all Members.