9. The representative of Canada said that his country considered it would be useful to have more precise information on what each of these proposals would mean in practice. To that end it had examined its current domestic procedures and considered what changes would be needed to implement the joint proposal in TN/IP/W/10/Rev.2 and what changes this would mean to its existing procedures. It wished to share its analysis with this negotiating group in the hope that it would advance delegations' mutual understanding of the joint proposal. As the purpose of this presentation was to give Members an example of how the joint proposal would be implemented in practice, it would be different from the more theoretical responses provided by the co-sponsors of the joint proposal in document TN/IP/W/9 of April 2004. It would show Members how relatively easy it would be to implement a joint proposal-based register within their domestic regimes, should this form of register be agreed as the most appropriate way to "facilitate the protection" of wine and spirit GIs pursuant to TRIPS Article 23.4, and should Members eventually decide to participate in it.
10. As a short background, he outlined Canada's current system. Canada had a dual regime for protection of GIs under its Trade-marks Act. Geographical indications for products other than wines and spirits were principally protected as certification marks. Other methods of protection such as bringing a "passing off" action were also possible, while GIs for wines and spirits were protected through GI provisions of the Trade-marks Act. In essence a party wishing to obtain protection for a wine and spirit GI in Canada must: (1) submit an application to the Trademarks Branch of the Canadian Intellectual Property Office (CIPO); (2) provide proof, for example a copy of the appropriate legislation that the GI was protected as such in the country of origin; and (3) pay the requisite fee 450 Canadian dollars. The current process was as follows:
- The Department of Agriculture and Agri-Food Canada would determine whether or not the indication met the definition of a GI (the definition of a GI in the Trade-marks Act was similar to that in the TRIPS Agreement) and would make a recommendation to the Ministry of Industry to enter the indication on Canada's list of protected GIs.
- Once the recommendation was accepted by the Ministry of Industry, the name would then be published in the Canada Gazette, which was Canada's official journal in which public notices and proposed regulations were published.
- If no objection had been made during the three-month period that followed, the name would be entered on the list of protected GIs. The only ground of objection under the Trade-marks Act was that the indication did not meet the definition of a GI.
11. He noted that, with respect to cluster 1 regarding consequences/legal effects of registrations and participation, the provisions of the joint proposal as set out in document TN/IP/W/10/Rev.2 relating to participation were paragraph 2 ('Participation') and paragraph 9 ('Termination of Participation'). The provisions relating to legal effects were paragraph 5 ('Procedures to be Followed by Participating Members'), paragraph 6 ('Access for Other Members'), paragraph 7 ('Modifications of Notifications and Registrations of Geographical Indications'), and paragraph 8 ('Withdrawals of Geographical Indications'). Paragraph 9 ('Termination of Participation') might also have some legal implications.
12. As regards participation, he said that Canada, like any other Member, would be free to determine whether or not it wished to participate in the system. However, as a major producer and exporter of spirits, and increasingly a major exporter of wine, Canada would have an interest in an effective and efficient register of GIs for wines and spirits as demonstrated by its co-sponsorship of the joint proposal. Some might ask why a Member would participate in the register if such participation were voluntary. The joint proposal was about facilitating the protection of wine and spirit GIs and would be effective in doing so. It would provide WTO Members with a new tool to help them meet their TRIPS obligations with regard to GIs for wines and spirits, and there would be minimal costs in administrative burdens associated with its implementation.
13. The other provision of the joint proposal that concerned participation, paragraph 9, dealt with termination. Normally, the termination of another WTO Member's participation in the system would have no impact on that Member's list of protected GIs in Canada. For example, if Greece were to participate in the database and later terminate its participation, this would not impact on Greece's list of protected GIs in Canada. However, such termination might have an impact on a Member's list of protected GIs in Canada if for any reason it was the result of a modification to that Member's domestic regime on GIs that would affect the validity of its GIs, both domestically and internationally.
14. Paragraph 5 of the joint proposal dealt with legal effects of the register. One of the key points where the database would have effect would be through each participating Member's domestic procedures. Under that paragraph, "Each Participating Member commits to ensure that its procedures include the provision to consult the Database when making decisions regarding registration and protection of trademarks and geographical indications for wines and spirits in accordance with its domestic law". Canada had been examining this proposal, which might necessitate changes to its legislation, regulations or administrative procedures to require its authorities to consult the database when making such decisions. Recalling the principle of territoriality, he described the procedures that were expected to apply, should Canada participate in the system, adding that other participating Members might have different procedures to achieve the same ends.
15. His delegation understood Paragraph 5 as being twofold. It required Members to consult the database when examining new trademarks and new GIs. As regards trademark applications for marks used in association with wines or spirits, examiners from CIPO would consult the database. As regards new GIs, the examiner would also consult the database. The notifications on the database would provide useful information to the examiner as well as contact information to obtain additional information or clarifications of the notified information if needed. Canada's examination would proceed under Canadian law and would include whether the proposed term was a GI, whether the product was a wine or a spirit, whether any of the TRIPS exceptions, as incorporated into Canadian law, applied. The Canadian authorities would also examine whether the responsible authority met the definition of "responsible authority" under the Trade-marks Act.
16. What would happen if a GI was already registered by another WTO Member? The notifying authority consulting the database would contact the responsible authority applying for the GI and inform it that the same GI had already been registered in the international database by another WTO Member.
17. Turning to paragraph 6 ('Access for Other Members'), he said that, contrary to the TN/C/W/52 proposal, the joint proposal did not go beyond the scope of the TRIPS Agreement; in other words, it would not be "TRIPS plus". It would not create any binding legal effects of any kind on non-participating Members, who would simply be encouraged to consult the database in making decisions involving protection or registration of trademarks and GIs for wines and spirits.
18. As regards paragraph 7 ('Modification of Notification and Registration of GIs'), whether or not there was an effect within the Canadian national system would depend on whether the modification of the notified registered GI related to a GI protected in Canada. If that were the case, there would be no automatic effect. This would have to be examined according to Canada's own principles.
19. As regards paragraph 8.2 ('Withdrawals of Geographical Indications'), the mere withdrawal by a WTO Member of one or more of its GIs would have no impact of any kind on that Member's list of protected GIs in Canada. For example, if Greece were to register a GI on the database and later withdrew it, that GI would remain on the list of protected Greek GIs in Canada. However, if the reason for the withdrawal was that the GI was not or had ceased to be protected or fallen into disuse in its country of origin, Canada would no longer, under TRIPS Article 24.9, have the obligation to protect that GI.
20. He then turned to cluster 2 (notification and registration). He said that the notifying authority under paragraph 3.1 ('Notification') could be a governmental body and that producers would not be permitted to make notifications directly. This would ensure that the notification process would be standardized, which would in turn ensure timely, efficient and fair treatment of all notifications.
21. In Canada, much of the information required under Paragraph 3.2 would be available on the website of CIPO for GIs registered in Canada.
22. There would be an authority in charge of registered GIs, which would be responsible for providing any missing information, i.e. information that was not available or was not obvious from the name of the GI itself. Using some Canadian examples, he observed that for the GIs "Pelee Island" and "Prince Edward County", the territory or region referred to was obvious. By contrast, it was not obvious from the GI "Short Hills Bench" itself which "territory" or "region" (as mentioned in Paragraph 3.2(c)) was referred to as the origin of the wine. Whereas "Pelee Island" and "Prince Edward County" corresponded to actual wine appellations in the province of Ontario and actual geographically identified areas, "Short Hills Bench" was only a sub-appellation, whose main geographical territory was not part of the GI's name and was not available on CIPO's website. In this case the responsible authority for the task of registering "Short Hills Bench" would be responsible for specifying in more detail the territory or region, as required under Paragraph 3.2(c).
23. Would there be an opposition procedure since responsibilities for enforcing protection would remain grounded in national law? To examine this would not be necessary under the joint proposal. As mentioned in document TN/IP/W/9, where there were objections to a GI notified by a Member, the existing rights and obligations under the TRIPS Agreement would apply. Requests for protection of a notified GI in another Member's territory would be assessed by that Member pursuant to its domestic legislation and procedures. Any party could choose to bring a challenge under the national law of the Member where the request was being made.
24. He turned to cluster 3 (other elements, such as fees, costs and administrative burdens, and special and differential treatment). On costs, he said that the costs of implementing the joint proposal would be minimal. They would include the cost of sending notifications, e.g. the initial notification of participation and any subsequent notifications of GIs, to the WTO; the cost of providing the notifying authority with the appropriate resources to make notifications and to consult the database. In most cases, each Member's national IP office would already be well equipped to assume these responsibilities.
25. As mentioned in Paragraph 4.3, there would be no charge for consulting the database for either participating Members or non-participating Members. There would also be minimal administrative burdens associated with implementing the joint proposal. Participating Members would have to designate the notifying authority and contact point, and notify these to the WTO and, if necessary, amend their domestic legislation and/or administrative procedures to include the provision to consult the database when making decisions on the registration and protection of trademarks and GIs.
26. In conclusion, he reminded Members of some of the advantages of the joint proposal. The joint proposal would help "facilitate the protection" of wine and spirit GIs. Although there would be no legal implications of consulting the database, his delegation believed the protection of wine and spirit GIs would be facilitated by the mere fact that Members, by being required to consult the database, would become aware of the existence and protected status of particular GIs in other Members' territories. As such, while there would be increased transparency, there would be no increased costs or charges to right holders. The joint proposal would therefore serve as a new tool to help national intellectual property offices search for information on wine and spirit GIs. Under the joint proposal both examination and opposition procedures would remain at the national level, and consequently the balance and rights of obligations, as carefully negotiated in the TRIPS Agreement, would not be disrupted. The joint proposal provided real benefits to both producers and consumers. It respected the mandate and would be easy to implement.
