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

Ambassador Eui-yong Chung (Korea, Republic of)
European Union
C.ii.ii Costs
70. The representative of the European Communities said that, contrary to what some delegations had described, the issue of costs for translation might not be such a big problem. He mentioned cases where, in practice, translation might be needed: when a WTO Member might wish to translate a GI notified by another WTO Member in one of the three WTO official languages, English, French or Spanish, or when the WTO Member might wish, for purposes of examination, to translate into its own official language a GI notified in the language of the country of origin, in order to find whether the term in its own language would be eligible for protection. He emphasized, however, that the object of protection was the geographical indication, that is a particular term covered by a particular notification. For example, if the EC notified the term "Bordeaux", only that specific term was to be protected in translation. Therefore, the cost that a national administration would bear would be the translation of that particular term and, basically, that would be within this particular context. If fifty terms were notified, fifty terms should be translated. With regard to the supporting documentation of the notification of a geographical indication, to take an example of the EU system, the summary information sheet which had to be translated and published was no longer than one or two A4 pages. That was the key information to be translated in the three official languages of the WTO. He then referred to the system of translation within the WTO and the various bodies, including the TRIPS Council. Translation needed to be taken care of but it should not become an argument for saying that the meaningful multilateral system that many Members favoured would not be workable. He asked whether the Secretariat could, perhaps for the next meeting, explain how this particular aspect could be dealt with in the context of a future registration system. 71. He further said that his delegation agreed with the statement made by Australia at the June meeting that costs needed to be borne in a fair and equitable way. The question was how to translate this principle into reality. One course of action would indeed be to look at the proportionality rule. There were, in the view of the EC delegation, two particular types of cost in the establishment and functioning of the system: costs to the WTO Secretariat or to any other administrative body which would be in charge of the administration of the system and costs to governments. The costs to the Secretariat would basically consist of the costs of compiling and distributing notifications, possibly translating them, annotating challenges as well as updating the system. In this regard, one suggestion had been made to have the documents accessible on the WTO website. 72. The costs to governments stemmed probably from the fact that governments needed the manpower to examine the notifications made to the WTO, within an 18-month period. Costs might also result from the involvement in the negotiations following oppositions. It would be fair to say that, in both cases, the exact cost would depend on the amount of material to be examined by the government and this would vary from case to case. The EC delegation did not believe that there would be other costs involved. For example, under the EC proposal, opposition would prevent registration from having any legal effect. In that case, it was clear that there would be no costs involved. Even if there was no opposition, there would be virtually no costs to governments either. With respect to the protection against the use of a GI, against consumer deception as required by Article 22.2 or even if the true origin was indicated or used in translation, or if the name was preceded by "style", "like" and so on, there would be no costs by virtue of the presumption of validity, as required by Article 23. Governments were under no obligation to police protection of GIs. Governments were free to let GI right holders invoke themselves that presumption before courts or administrative agencies. Therefore, the costs would mainly fall on the shoulders of the right holders. With respect to the prohibition of the registration of trademarks containing a GI, in case of consumer deception as required by Article 22.3 or even if the true origin was indicated as required by Article 23.2, trademark examiners would have an easier task in carrying out those obligations. In countries where those obligations were absolute grounds for refusal, trademarks examiners would not only look at the list of previously registered trademarks, but also at the list of WTO registered GIs. To take the example of the European Community Trademark Office, that office would be prompted to verify not only the 130,000 registered trademarks but also the WTO list of GIs. Similar examples could be made with regard to other industrial property offices, some of them having a greater number of registered trademarks. The searches often done via electronic databases similar to a word search like the one used in word processing systems would make those searches longer for a few seconds. The only cost involved there would be that of including the new names in the database via a simple cut and paste operation of the registered terms. For those countries in which those obligations were not "absolute" but "relative grounds of refusal" or just "motives of opposition", or "motives of invalidity" of trademarks, logically that presumption would have to be invoked by right holders, who would then bear the costs in their entirety. 73. With regard to producers, it would be useful to make a distinction between two types of categories of producers. The producers who were right holders of registered GIs in the notifying country would actually make savings as they would have easier access to the legal means available to them in having the level of protection prescribed in Articles 22 and 23. Similarly, GI right holders would have a clearer view regarding countries in which their GIs might have become generic. That surely should facilitate investment and export decisions. The second category of producers were those who had been using names which were protected as GIs in other countries but were generic in their own territory. They would not need to re-label their products and would not incur costs. If they had exports in countries in which the names were not generic, they would be able to continue exporting to that country until the legitimate producer challenged that practice. Those exports might continue, if so justifiable under any of the exceptions of Article 24.6 of the TRIPS Agreement. For those cases, exports had taken place by unlawful usurpation of a name and use of that name would have to cease if so demanded by the right holders. In that regard, the situation was not different with a register. If the right holder had challenged such a practice solely under the domestic legislation, the outcome would have been the same. As these exports had taken place unlawfully under the TRIPS Agreement, these costs needed not be taken into consideration as it was simply piracy. To sum up, as costs were reduced to those to the Secretariat and to governments, the EC delegation would be prepared to find ways and means of ensuring that those costs were borne by those countries using the system in a manner commensurate to that use. One could possibly also consider that producers themselves, instead of governments, would file notifications under the multilateral register. That, of course, would lead to a different situation, but the EC delegation would be prepared to look into that as well as to explore mechanisms that adequately covered the cost to governments and to the WTO Secretariat, as was already the case in the system established by the Madrid Agreement on the International Registration of Marks or the system established by the Patent Cooperation Treaty.