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

Ambassador Eui-yong Chung (Korea, Republic of)
C.ii.i Procedures
26. The representative of Switzerland said that his delegation had found the way in which the discussion had been engaged at the last meeting positive. The fact that the Chairperson had structured the debate according to issues had made it possible for the Special Session to engage in a substantive discussion and to clarify so far a number of points. He said that the Secretariat's note (TN/IP/W/4) gave, in a very useful way, a presentation of various multilateral notification and registration systems and would help participants to have a clearer picture of existing systems. With regard to procedures, he recalled that, at the June meeting, the Swiss delegation had stressed the importance of distinguishing amongst the various phases in the procedure which led to the recording of a GI on a registry. Such sequencing of the procedure was, in the view of the Swiss delegation, indispensable in order for the future system to be able to facilitate protection of geographical indications. 27. The first phase of this procedure should be notification. The proposals submitted to date seemed to reach a degree of convergence on this point. The notification phase was to allow Members to indicate their wish to participate actively in this system and to submit a list of the national geographical indications they would like to have placed on the registry, with the indication of the products covered by the registration. This phase - as in fact for the rest of the procedure leading up to the registry of the geographical indication - must be as simple as possible for Members in order to avoid overburdening national administrations and the body which would be responsible for managing the register. However, this procedure should also ensure that there was, in the indications notified, something that could be protected in order to avoid the paralysis of the system caused by an avalanche of designations that did not clearly meet the conditions of the definition in Article 22.1 of the TRIPS Agreement. It might, therefore, be a good idea to provide for certain information documenting the notified geographical indications. Simple copies of national legislative, administrative, judicial decisions or copies of bilateral, regional or multilateral agreements, should be sufficient for this purpose. On the basis of these documents, the body responsible for managing the registry would be able to proceed to a first summary examination as to form, which would be similar to the one in the Lisbon Agreement, as described in Annex 4 of document TN/IP/W/4 (page 90, paragraph 11). If that body considered that a notified indication clearly did not meet the basic conditions, the national authority would be informed and provide confirmatory information, where necessary, for the publication of the geographical indication or otherwise would renounce notifying such indication. This notification phase could be repeated whenever a Member felt that there were one or several indications that could be entered in the registry. With the view to facilitate the management of the system, and as proposed by the EC and their member States, consideration should be given to the designation by each Member of a contact point which would be responsible for centralizing national geographical indications. The body responsible for the management of the registry would have a single contact point per Member and this would satisfy the administrative procedures. Once the notifications had been made, the body responsible for the management of the registry would proceed with the formal summary examination, and, thereafter, with the publication of the notified geographical indications that had been notified and would communicate them to the Members. Publication of the indications could be done by internet, for example on the WTO website. This could facilitate the administrative procedures and lower costs. 28. The second phase of the procedure would be the examination of geographical indications. For his delegation, publication of geographical indications and their communication to Members would trigger a time-limit within which WTO Members could examine the notified GIs and, where applicable, engage in opposition procedure for indications which, in their opinion, did not fill the requirements for protection on their territory or for recording in the registry. An 18-month period for this examination phase, as proposed by several Members, seemed to be appropriate. 29. A challenge or opposition procedure was an indispensable element to meet the objectives of Article 23.4, namely to avoid abuses. However, this procedure must, as the rest of the procedure, be as simple and easy to access as possible. Therefore, the challenge procedure should be split into two phases. The first phase would be based on the principle of bilateral negotiations between the parties having challenged the protection of a notified indication. The second phase would be based on an arbitration mechanism in cases where bilateral negotiations did not reach a mutually satisfactory solution within a set time-frame. It would, therefore, be up to the arbitrators to determine whether or not the challenge was justified. Their decision would be definitive and binding on the parties concerned. Regarding the challenge procedure, it would be useful for the body responsible for the management of the registry to examine, in a formal and summary way, whether the challenge seemed to be well-founded or not. A simple list of challenged geographical indications should not be considered as sufficient. Otherwise, the risk would be paralysis of the system as a result of an avalanche of challenges which would stop all registrations. The body managing the system could play a useful role by conducting an initial examination of the challenges before sending them to the countries having notified the challenged GI. 30. The next phase concerned the registration. First of all, in which cases would there be registration? When a notified indication had not been challenged by a WTO Member, that indication would be registered. Second, what would be the effect of this registration on Members? The effect would be to create a presumption of the right to protection for that geographical indication; WTO Members who had not challenged the geographical indication within the set time-period would have to respect it. Such a registration would have an erga omnes effect. In order to establish the effects of registration on the WTO Members, there must be a distinction between the various reasons for challenges. Indications successfully challenged on the grounds that the conditions of Article 22.1 of the TRIPS Agreement were not met should purely and simply not be registered. This was an objective ground which applied to all Members; the result of this type of challenge would have an erga omnes effect. If the challenge was based on another reason, such as long use or good faith use of the geographical indications (Article 24.4), or if it was based on the fact that the geographical indication was used as a common name for products or services in the country challenging the indication (Article 24.6), then the geographical indication would be inscribed in the registry with the mention of the challenge. This mention would have the effect that the Member which had validly challenged the geographical indication would not have to protect that indication on its territory. Other Members, however, would have to give protection unless they succeeded in rebutting the presumption. The effect of these challenges would, therefore, only be inter partes. He emphasized that registration constituted a presumption of protection of a geographical indication. In order to give legal force to registrations, this presumption should not be questioned for any reason once that registration had taken place and the opposition time-period had expired. That was the reason why it was necessary to provide for an examination phase and an opposition phase. If a registered geographical indication could be questioned for any reason, the register would then be similar to a simple database and would not contribute to achieving the objective of Article 23.4, which was to facilitate protection of geographical indications. On the other hand, other reasons could be invoked at any time before domestic courts such as the right to use the name in the course of commercial operations (Article 24.8) or the fact that the geographical indication was not protected in the country of origin or fell into disuse (Article 24.9). The advantage of such a presumption would be the reversal of the burden of proof: producers of the region identified by the geographical indication would no longer have the burden of proof, which would be shifted to third parties wishing to use the registered GI for their products. The body responsible for managing this registry would then publish the registered indications just as it had published their notification. 31. With regard to modification, he said that the registry should be updated at any time as a result of the registration of new GIs or as a result of a modification of existing registrations, such as a suspension of the obligation of protection on the grounds that the GI was no longer protected in the country of origin or had fallen into disuse in that country. A Member could also ask for the cancellation of a GI it had previously registered.