Comptes rendus ‒ Session extraordinaire du Conseil des ADPIC ‒ Afficher les détails de l'intervention /la déclaration

Ambassador Manzoor Ahmad (Pakistan)
D.2 2. Consequences/legal effects of registrations
93. The representative of Australia said that the issue of legal effects or consequences of registration was obviously a fundamental area of disagreement in these negotiations and merited spending some time on it. She believed that the reasons why this area had been so difficult for Members was that, unlike in some other negotiations in the WTO, this issue was not dealing with numbers on which one could split the difference, but rather with legal systems on which this difference-splitting would not be possible. 94. In her view, Members had basically two approaches to choose. On the one hand, there was the simple information-based joint proposal, where terms on the register would be considered by national authorities and form part of the body of information taken into account under national law when making decisions about the protection of GIs and trademarks. This would add value to the current system and facilitate the protection of GIs for wines and spirits irrespective of how participating Members protected GIs, whether through trademark systems, sui generis systems, or consumer protection legislation. 95. On the other hand, there were the EC and Hong Kong, China proposals, whose legal effects were based on legal presumptions whereby the multilateral registration of a term by one Member would have legal implications for its eligibility for protection in another Member. She emphasized that there were actually two approaches, not three, as the Hong Kong, China and EC proposals were both based on legal presumptions, which her delegation found difficult for various reasons that she would set out later. 96. Commenting on the EC's request to the Chairman that the joint proposal be paraphrased as including an obligation to consult, she agreed with previous speakers that had pointed out the Chairman's difficulty in paraphrasing what were quite contentious and controversial issues in different proposals. For this reason, her delegation believed that the best approach would be to maintain the language used by delegations who had made the proposals. Having said this, she did want to share Australia's understanding of the joint proposal that its legal effect would be to place on authorities an obligation to consult the database of GIs when making decisions about the protection of GIs and trademarks under national laws. Implementation of the joint proposal in Australia would include writing into the rules of its authorities the requirement to consult the terms on the register and take them into account where relevant under national law. 97. Her delegation considered that the joint proposal did add value to the status quo and facilitate the protection of wines and spirits GIs consistent with the mandate in two important ways. Firstly, it could prevent the improper registration of trademarks that contain foreign GIs by alerting trademark examiners to the existence of the foreign GI, thereby facilitating compliance with Article 23.2 of TRIPS. This was an issue of real importance to advocates of increased protection for GIs, particularly EC member States who had raised serious concerns in the past about trademarks being granted over terms that contained European geographical indications. According to these delegations, one of the problems had been that these terms had not been well known to the trademark officers of countries like Australia. It was for this reason that the database proposed in the joint proposal would provide all of this information in one place at a click. This database had been referred to as a mere database or as the "Google" proposal in certain consultations, but Members needed to recognize that it was precisely this kind of information that trademark examiners had recourse to in examining applications for trademarks or certification marks in various systems. Currently trademark examiners were using dictionaries or atlases to determine whether a term used in or as a trademark was actually a geographical name. Thus, having in one place the GIs claimed by all WTO Members who chose to participate in the system would be a significant improvement of the status quo. 98. Secondly, the joint proposal would facilitate the protection of GIs for wines and spirits in that it would provide useful information to the trademark examiner in considering whether or not to grant a certification mark to a GI, e.g., who owned the mark, who controlled the mark, what were the rules governing the use of the GI in its country of origin. This added value to the current system without overreaching legally or creating unreasonable burdens on governments and industry. 99. With respect to the legal presumptions contained in the EC proposal and their implications for the principle of territoriality, she said that to her delegation, the EC's new thinking did not seem to be very different from their 2005 proposal. For the benefit of those Members who had not participated in the informal consultations, she said that the main difference between the EC's 2005 proposal and the proposal elaborated at this meeting was the removal of the cumbersome state-to-state multilateral reservations and negotiations mechanism. While her delegation welcomed this reduction of excessive and inappropriate government involvement in asserting and defending GI rights under the register by no longer subjecting determinations of a GI status to political negotiations, she had also seen the reservation system as a function of the legal presumptions: one could not be removed without the other, or the system would in fact get worse. Whereas previously a Member could object to a notification and consequently did not have to provide the legal presumption in its law, now all participating Members, which she understood to mean the vast majority of Members, would be required to implement the presumption that a foreign GI was a GI in their respective markets. While it might be possible to rebut this presumption somewhere and somehow, this remained to be elaborated. 100. There were a number of problems with this approach. Firstly, her delegation believed that the Hong Kong, China and EC proposals were inconsistent with the important principle of territoriality, and the EC's claim that from this point of view all WTO Agreements would have to be deemed extra-territorial was incorrect. Under the legal presumption envisaged by the EC's new thinking, all terms on the register would enter Australia with a presumption in their favour that they satisfied certain facts under Australian law, and that was extraterritorial. The fact that a GI in Europe was relevant to its status in Australia without Australia having being able to examine that term and verify its entitlement to protection under its law was extraterritorial. In the area of intellectual property no one was presumed to have this kind of monopoly, but had actually to seek one, and she saw no reason why GIs should be any different. Her delegation could not accept a system where the intellectual property status of a term in Europe had legal implications for its status in Australia, whether those implications were substantive and absolute, or procedural. For those familiar with the adversarial system of the common law it was clear that the question who bore the burden of proof was a significant one. 101. Finally, her delegation wanted to raise a second concern regarding the legal presumptions which was a policy concern of interest to the broader Membership. The presumption in the EC proposal was that all registered terms would be presumed not to be generic in all markets. This proposal limited the exception for generic terms in Article 24.6 of the TRIPS Agreement. A number of Members, and not just co-sponsors of the joint proposal, had stated that the register should not alter the balance of rights and obligations and should not affect the Article 24 exceptions, but the EC proposal did. Article 24.6 provided that Members did not have to protect terms that were customary in common usage in their markets. The EC proposal would constrain Members' implementation of this exception by dictating who, in a court of law, would have the burden of proving what. As a matter of public policy, it was questionable why the burden should be on users of generic terms, i.e., terms in the public domain, to justify their continued uses, rather than on the IP owner seeking the monopoly. Commercially, such a limitation on Article 24.6 posed particular risks in export markets. Although the EC had said in its general statements that its proposal was only forward-looking and not retrospective, this could not be ensured. The EC proposal would give GI right holders presumptive rights in all markets without giving other legitimate users any certainty that they would have an opportunity to rebut the presumption. Increasing the protection without increasing the exceptions upset the balance of rights and obligations in the TRIPS Agreement and was unnecessary to fulfil the mandate given to Members. Her delegation remained open to questions on the joint proposal and was prepared to discuss it in more detail.
TN/IP/M/19