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)
89. In response to the question from El Salvador, the representative of the European Communities said that the status of a final decision on GI protection in a Member would not be a problem, as the proposal in TN/C/W/52 fully respected the principle of territoriality. He underlined, in view of questions by other delegations, that such decisions would be up to the respective national authorities. The word "authorities" was used purposefully because in the diverse legal systems around the world, "authorities" could be courts, trademark offices, GI offices or IP offices. The proposal left each Member fully free to use its own authorities, systems and procedures, and to have its own findings, which by definition could be different from one country to another. 90. In response to the questions on participation by Canada, Australia and other Members, he said that, for his delegation, the reason why all Members should be using the register lay in the world "multilateral" of Article 23, paragraph 4. Some delegations might disagree, but this was the reading of 108 Members of the WTO, including the EC. 91. He said that Canada had also claimed that some of its questions remained unanswered without pointing out which ones. He would answer four open questions that he had noted with the hope that he would then have exhausted Canada's questions. First, Canada had mentioned question 27 on what would happen if two countries made different decisions regarding a registered GI. He had already answered this question with regard to consequences for other countries. Regarding consequences for the register, he said that the GI would remain on the register as long as it was protected in the country of origin. The mere fact that the GI remained on the register did not bind the Canadian authorities in any way regarding the consequences for the protection of this GI in their territory. 92. He said that Canada had also specifically mentioned question 32 asking the co sponsors of TN/C/W/52 to confirm that their intention was to require the party opposing the GI to bear a greater evidential burden than the party seeking to register a term. In response, he said that it would again be up to the domestic authorities to evaluate the information they had, which might sometimes be contradictory. It would also be for the domestic authorities of a national jurisdiction to determine what exactly would be required to invalidate the prima facie evidence and to establish proof to the contrary, showing that the registered name did not meet the definition. He noted the Brazilian intervention, which had eloquently shown the contradiction between complaining on the one hand that the system was extraterritorial, and at the same time complaining that national authorities might arrive at different findings. His delegation fully agreed that there should not be any extraterritorial effect. This was why the proposal left national authorities free to make determinations according to their law, which could result in different findings in different Members. 93. He said that Canada had further referred to question 34 on whether it was the proponents' intention to change the established WTO jurisprudence on the burden of proof. The answer was no. 94. Finally, Canada had specifically mentioned question 9 on whether the system proposed by TN/C/W/52 would cover GIs protected through tradition or by convention, for example, through common law systems. The answer was yes. The register, as proposed, did not prejudge, in any manner, the form of protection used by Members. 95. On the issue of costs and burdens that had been raised several times, he said that the proponents of TN/C/W/52 had not demanded that as a consequence of establishing the WTO register Members would have to create national registers or national administrations of GIs. The proposal did not change anything as to the existing TRIPS requirements in this regard. 96. The EC representative said that New Zealand had referred to question 23 on the difference between a rebuttable presumption and prima facie evidence. This question might be to some extent academic since the concept of "rebuttable presumption" no longer existed in the TN/C/W/52 proposal. Prima facie evidence was a concept that everybody understood. If there were various understandings of its meaning, this would not be a problem as the proposal left the national authorities of each Member completely free to interpret this concept. 97. He said that New Zealand had further asked why "genericness" assertions needed to be substantiated by those who made them in order to be taken into account. This requirement addressed an issue that several right holders had reported being confronted with in third countries. While the TRIPS Agreement mentioned "genericness" as an exception to the protection of GIs, these right holders had actually been faced with the impossibility of proving that their terms were not generic. While it was possible to positively prove the existence of an element, it was not possible to prove that it did not exist. There were two possibilities with regard to these reported difficulties. Either such situations did not exist, in which case there was no problem with requiring those claiming a right to benefit from an exception like "genericness" to substantiate it, or such situation did exist, in which case the proposal was aiming at redressing the situation. 98. He recalled that Argentina had also asked questions on the concept of prima facie evidence, and had asserted that the proposal would deprive national authorities of making their own findings or determinations. He hoped that he had been sufficiently clear in explaining that the mere fact of a name having been placed on the register would in no way deprive national authorities of the right to make such interpretations precisely because it were those national authorities that would interpret what prima facie evidence would mean. 99. Argentina, as well as other delegations such as Guatemala and Australia, had also asked questions on S&D provisions. He confirmed that, as was written in black and white in the proposal, there would be S&D provisions, and that they would be discussed after modalities. 100. With regard to the comment made by the United States that under the TN/C/W/52 proposal prior trademark rights could be disregarded, he said that this was not written anywhere, and that the proposal did not change anything regarding the possibility of claiming the exception of prior trademarks. On the comment made by the United States that countries would need to establish a priority as for the other IP rights, he asked for further clarification. 101. He said that the United States delegation had further said that the proposal would mean that a GI notified to the register by a Member would thus become a GI in all other WTO Members. This was incorrect. His delegation had explained at length that the mere fact that a GI was notified to the register only meant that there was prima facie evidence that it met a definition, that such prima facie evidence could be challenged in any manner of the national authorities' choice, and that, even if a GI was considered as meeting the definition, it could still be denied protection on the basis of all the exceptions existing in the TRIPS Agreement, such as prior trademarks, prior use or "genericness". 102. It had been asserted that the TN/C/W/52 proposal would require considerable resources and that it would force Members to create a register of GIs. He said that all that would be required of national authorities was to click on the website of the WTO to know whether or not the GI was on the register, and then they would be free to make any determination. In his delegation's view, this would fulfil the mandate which was to "facilitate" the protection of GIs, not the protection of trademarks. 103. Japan had said that the concept of prima facie evidence was ambiguous. He agreed that it might be ambiguous in the sense that it could mean different things in different countries. Such was the principle of territoriality. It would be the Japanese authorities that would determine what prima facie evidence meant in Japan. 104. In response to the request for an illustrative example he said that if the producers of "Chianti" had successfully requested Italy or the European Communities to notify the "Chianti" name to the register and then sought protection in Ruritania, they would first of all have to approach the Ruritanian authorities. Secondly, they could point out to the Ruritanian authorities that they should consult the register to see that "Chianti" was on the register. This would mean one click, which would be the only cost and burden for the Ruritanian authorities. With regard to what would happen next, there were two options. Either nobody challenged that "Chianti" was a GI, in which case "Chianti" would be determined by the national authorities of Ruritania to be a GI. This did not yet mean that it would be protected in Ruritania. Under the second option, a producer from Ruritania, any other person or any third country could claim that "Chianti" did not meet the definition of a GI, in which case there would be a debate or a litigation about this case in Ruritania. There would not be greater debate or litigation under the register because this would, in any event, take place under the existing TRIPS provisions. On the contrary, the fact that a GI was on the register might help the Ruritanian authorities to make their own findings. At the end of this debate, the Ruritanian authorities would decide whether or not "Chianti" was a GI in Ruritania, and not anywhere else. On the question of whether this GI "Chianti" should be protected and whether the "Chianti" producers should have the exclusive right to use the GI, he said that here again there would be a debate in Ruritania. If there was a producer from a third country or from Ruritania that claimed that "Chianti" was generic, it would be up to the Ruritanian authorities to decide. But whoever was claiming "Chianti" to be a generic would have to prove it. His delegation believed that this was the normal application of the genericness exception. Furthermore, if any person had registered or used the name "Chianti" in Ruritania as a prior trademark, the protection of the GI "Chianti" could still be denied in Ruritania. As could be seen from this example, it was up to the Ruritanian authorities to make their own determinations, using their own procedure, without having to create any register, without any extra burden or extra cost. Such determinations would, of course, only be valid in Ruritania. 105. Finally, in response to Chile's complaint that the paper had only been received three days before the meeting, he underlined that nothing in this paper was new compared to what his delegation had already said orally in December 2008.