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

Ambassador D. Mwape (Zambia)
European Union
B.i First sub-question
8. The representative of the European Union said that his delegation was committed to work along the lines suggested in the Chair's report of 22 March, i.e. that "technical work should focus on the substantive issues, including in particular the question of the implications of a register entry, while using and building on the foundation established by Ambassador Clarke's work". He recalled Ambassador Clarke's questions 1 and 2, relating firstly to the legal obligations that would be acceptable, and secondly, the significance and weight to be given to the information on the register. Bearing those two significant questions in mind, his delegation was ready to address the Chair's sub-questions and supplement the information which it had already shared with Members in previous meetings. However, since those sub-questions had been circulated only recently, his delegation reserved the right to provide complementary information on those issues in subsequent meetings. He was hopeful that those questions would advance the issue of the effects of the register, which had been identified as a crucial area of the negotiations, and would allow them to make progress on the other issues. 9. In addressing the first sub-question concerning the sources of information that domestic authorities were "legally obliged to take into account" when making decisions regarding the registration and protection of geographical indications (GI) and trademarks, and whether additional sources of information that became newly available were automatically covered by such a legal obligation, he explained that the European Union had a dual system for the protection of geographical indications on the one hand, and for the protection of trademarks on the other, and that right holders had the freedom to choose one system or the other, or a combination of both systems. He regarded the dual approach as business-friendly, since it did not impose any system on the right holder. In responding to the sub-questions, he said he would therefore deal with the two systems separately. 10. Starting with the EU's GI procedure for wines and spirits, he addressed the first element of the question concerning the sources of information that should be taken into account. GI applications were examined by the European Commission services within the framework established by the EU law. On receipt of a GI application, the Commission services carried out an ex officio examination to determine whether it met the conditions specified in the relevant EU regulations on geographical indications, e.g. whether the application met the constitutive elements of a geographical indication, and whether there might be any obstacle to the protection of the geographical indication, in particular whether the name was identical with a common name for a wine or a spirit. 11. During this overall examination process, the Commission services must take the necessary steps to ensure compliance with the requirements established by EU law in relation to the registration and protection of geographical indications. For that purpose, the Commission services would examine the information included in the GI application file, in particular, the name to be protected, information about the applicant, and the product specifications, including, among others, a description of the product or its area of production and the details bearing out the link between at least a quality, characteristic or reputation of the product and the area of production. The Commission services might also consult and take into account any other sources of information they deemed appropriate, such as relevant publications, encyclopaedias, or information on Internet websites. For instance, they might consult the information available with the Organisation de la Vigne et du Vin (OIV). Following the ex officio examination, an objection procedure would be carried out where third parties might file duly substantiated objections. On the basis of all the information available, the Commission services would then decide either to grant protection or to reject the application. 12. With respect to the second part of the question concerning "sanction" for failure to take sources of information into account in the context of GI procedure for wines and spirits he said it went without saying that the Commission services must act in conformity with EU law, both in terms of procedures and in terms of substantive assessment. Any decision on the protection of a geographical indication could be challenged before the European Court of Justice, notably on grounds of infringement of an essential procedural requirement, of infringement of the European Treaties or of violation of any general rule of law relating to their application. 13. With respect to the third part of the first question, i.e. on whether newly available sources of information were automatically covered by such a legal obligation, he said that such additional sources of information might be taken into account, but there would be no legal obligation to do so. In other words, a newly available source of information would not be automatically covered. For a consultation of such source of information to be compulsory, it would have to be provided for in an instrument defining the procedures relating to the grant of GI protection, like the EU regulations covering geographical indications. Such provisions should also spell out, crucially, what significance any weight had to be given to that information. 14. Addressing the first question with respect to the EU trademark procedure he recalled that the European Union had established a Community trademark system. The Community trademark was a single title covering the European Union territory as a whole, and trademark applications were examined by an European Union agency based in Alicante, Spain, the Office of Harmonization for the Internal Market (OHIM). 15. In terms of what sources of information to take into account, OHIM was guided by the requirements established in EU law as complemented by the Examination Guidelines of that office, similar to the GI procedures of the European Commission. On receipt of a Community trademark application, OHIM started the examination procedure. This notably included an examination on formalities and on absolute grounds of refusal as set out in the trademark law of the European Union. In this context, the applicable legislation did not impose the consultation on any specific source of imformation. However, the examiner was due to ensure compliance with the rules specified in EU law or in any other legal instrument which was binding or which must be taken into account by the Office. For example, trademark applications which had not been authorized by the competent authorities must be refused if they infringed Article 6ter of the Paris Convention for the Protection of Industrial Property. For that purpose, the examiner would take into account the "Article 6ter database" available in WIPO. Likewise, trademarks consisting of or containing geographical indications for wines and spirits could only be registered if they covered wines and spirits of the specified origin. This should go without saying, but was not the case everywhere. For geographical indications or geographical names protected in the European Union for wines and spirits, the Office took into account the acts legally binding on the European Union such as the relevant EU regulations or international agreements with third countries or regions. In practice, that information was compiled in databases used by examiners. 16. More generally, when examining an application, examiners might use any available source of information. For instance, he might rely on information found in dictionaries or on Internet websites, or take into account the ordinary understanding of a term. As previously stated, OHIM had specific guidelines for trademark examination and provided for continuous training for the use of available sources of information. 17. As in the GI procedure, third parties could file an opposition procedure on the basis of relative grounds for refusal, i.e. in general terms, based on an earlier trademark or on another sign used in the course of trade, including a geographical indication. The opposition would be examined by the Opposition Division of OHIM on the basis of the elements put forward by the parties. The decision could itself be appealed before the Board of Appeal of OHIM. Recourse was also possible to the General Court of the European Union, formerly known as the Court of First Instance, and ultimately to the European Court of Justice (ECJ). 18. If the trademark office had failed to appropriately take into account the relevant legally binding European acts during the examination procedure, then third parties could raise the matter after the publication of the Community trademark application. They might file "third parties observations" based on absolute grounds for refusal. More generally, if a Community trademark was improperly registered, a cancellation action (revocation or invalidity) could be initiated, and an appeal might be brought before OHIM's Boards of Appeal. A further appeal could be made to the General Court of the European Union and ultimately to the ECJ. 19. With respect to whether an additional source of information that became newly available would automatically be covered by such a legal obligation in a trademark examination, he said that a new source of information such as a WTO Register would not automatically be covered. This would only be the case if taking into account that information was provided for in an instrument that OHIM had to implement, like the Community Trademark Regulation or OHIM's Examination Guidelines. 20. As a concluding remark on the first sub-question, he stressed a very important feature common to both GI and trademark procedures. It would not be sufficient to provide for a consultation, because for that source to be truly relevant, the competent authorities would need to have clear legally binding guidelines on the consequences to be derived from such consultation. As delegates were aware, in the majority proposal contained in document TN/C/W/52, his delegation and the other sponsors attached importance to the fact that information on the register must be given some weight. That was why in their proposal they had clearly identified which consequences consulting the information on the register must have. The consequences were a fundamental aspect for the proponents of TN/C/W/52.
The Special Session took note of the statements made.