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

Ambassador D. Mwape (Zambia)
United States of America
A.i First sub-question
58. The representative of the United States said his delegation appreciated that the establishment of the multilateral system of notification and registration was part of the single undertaking, and it was fully committed to fulfilling their mandate. His delegation was prepared to continue engaging with other Members, and to think creatively about how to best achieve that objective. The position of his delegation in the negotiation and its view of the ingredients in the "Geneva cocktail" were well known. It still believed that their ingredients would make the most satisfactory cocktail for all Members to consume. 59. The United States was one of the numerous co sponsors of the joint proposal of TN/IP/W/10/Rev.2, and reaffirmed its continued support for the text as the optimal means by which the Special Session could fulfil the mandate for the negotiation. His delegation considered that the joint proposal represented the appropriate basis for continued work of the Special Session, and the best prospects for a rapid and expeditious conclusion of its work. 60. It remained the firm position of the United States that the registration system should convey no legal presumptions, but should instead be limited, as the mandate made clear, to the facilitation of protection for wine and spirit geographical indications through a transparent system of information sharing. 61. He expressed his appreciation for the new EU delegate's efforts to focus on the positive aspects of convergence and sincerely looked forward to working with him and his delegation, as well as other delegations, in continuing their work. While he did not agree with some of the elements the EU delegate had described, such as the weight assigned to geographical indications placed on the Register due to a unilateral determination by one Member on facts that existed in their jurisdiction, he did agree that a focus on practical implementation of the TN/IP/W/10/Rev.2 and TN/C/W/52 proposals in the context of their respective jurisdictions would be helpful in making progress. In that connection, as had been mentioned before, the joint proposal was the least common denominator for the negotiation and therefore should form the basis of the Special Session's efforts to move forward. 62. At the last meeting of the Special Session, the United States had joined several other Members in providing responses to the sub-questions asked by the Chairman. Its answers were reproduced in the minutes in TN/IP/M/26 so he would not go into them again. At this meeting he had expressed the hope to hear the answers of other Members to the Chairman's sub-questions. He had also noted the constructive suggestion from the delegation of the European Union that Members correlate their answers to the two proposals. His delegation would like to comply with that helpful suggestion. However, in order to explain how the United States would implement TN/C/W/52, it still needed to understand the requirements of the proposal in practical terms. He was confident that, once the various TN/C/W/52 proponents had explained how they would answer the Chairman's questions with respect to their own implementation of the proposal, his delegation would be better able to answer those questions itself. 63. Meanwhile, as suggested by his delegation in June, to understand the proposals on the table, it would be helpful to answer several additional questions: (a) When considering whether a geographical indication qualifies for protection as a trademark or under another system of protection, what sources of information do the relevant national authorities take into account? (b) Is there any record of the information that was considered or taken into account in making a decision? (c) If so, is the information in the examination files available to the public? (d) When is it possible for a third party to provide information that was not taken into account and have the decision changed? (e) Can this information be the basis for having a decision? (f) Do Members have measures in place to ensure that responsible officials or examiners take into account relevant information? What are those measures? 64. In its previous answers his delegation had explained the sources of information that were used by relevant national authorities and that would be its answer to question (a). 65. As for its question (b), his delegation's answer was in the affirmative. A complete record of the decision that was made would be maintained. 66. As to question (c), the answer was that the examiner's electronic record of research sources would be found along with the records of the search for conflicting marks, official actions and the like in the electronic file. The electronic file records would be available to the public via the US Patent and Trademark Office's (USPTO) website (http://www.uspto.gov/) and the Trademark Documentation Retrieval ("TDR") application (http://tmportal.uspto.gov/external/portal/tow.) His delegation would be interested in the extent to which other Members did the same or were prepared to do so in connection to the answer he had just given to whether the information in the examination files was available to the public. 67. As to question (d), he said a third party might provide information at any time, but a letter of protest filed before publication would only be granted where it was determined that the evidence was relevant and might support any reasonable ground for refusal appropriate in ex parte examination. After publication, for the letter of protest to be accepted, i.e. for the individual to obtain a right to reappraisal of the issue, the protestor must submit evidence supporting a refusal of registration, such that publication of the mark without consideration of the issue and evidence presented in the letter of protest was a clear error by the USPTO. 68. As to question (e), the answer would be in the affirmative. The information provided in a protest could be the basis for having a decision. For example, if the Deputy Commissioner granted a letter of protest filed prior to the mark's publication, the examiner would consider the information or evidence supplied with the letter of protest but would not be required to refuse registration based on that letter of protest - see TMEP §1715.02(b); in the case of a letter of protest filed and granted after publication of the mark, an examiner must issue the refusal or requirement except in unusual circumstances - see TMEP §1715.03(d). Thus, there was no doubt that there were opportunities for reconsideration of relevant facts at the initiative of a third party. His delegation would again be interested in understanding whether facts ignored could be a basis for decisions in other jurisdictions. 69. As to question (f) to supplement the Chair's two sub-questions, he said that in addition to the letter of protest procedure there were two procedures by which third parties might affect the initial registration or continued registration of a mark in the United States. These inter partes proceedings fell under the jurisdiction of the USPTO's administrative court, the Trademark Trial and Appeal Board, and are known as opposition and cancellation proceedings. 70. He concluded by saying that, in light of the above clarifications, the US procedures provide a robust set of procedures that permitted outcomes to be challenged, including the possibility for appeal as well as administrative proceedings, including opposition. Like Australia, the structures he had described at this meeting and at the June meeting provided a strong measure of accountability, recourse and public record. They were also consequences – as any judge or examining attorney would explain, no one wanted to be overturned. He hoped that the explanation of the US system had been helpful, and trusted that at the meeting and in future discussions they would gain a similar understanding of other Members' systems.
TN/IP/W/10/Rev.2; TN/C/W/52; TN/IP/M/26
The Special Session took note of the statements made.