115. The representative of the European Communities said that his delegation did not want to disrupt the checks and balances between rights and obligations under the TRIPS Agreement, nor want retroactive effects. As a result of its proposal on legal effects, it did not want Members to give up the use of an existing name, the grandfathered use exception, the prior trademark use exception, or the genericness exception. It had not proposed that genericness claims be appreciated according to the country of origin instead of the country where protection was sought. He expressed surprise that other delegations kept commenting on what they only thought the EC wanted or that they did not know what the EC really wanted in spite of the fact that they had been present at the informal consultations held last November where his delegation had shared a non-paper on new ideas. In light of this, he reiterated what the EC was seeking. The registration or notification of a GI would entail a legal presumption. Would this mean that all Members would have to examine in detail whether or not the GI was or not a problem in their own territories? The answer was negative: challenges could be made at any time in the country where protection was sought after the notification had been made. In that regard there would not be any extraterritorial effect.
116. As regards the joint proposal, he had heard that the added value of the proposed database would be to allow for trademark examiners to have a place where they could see if there was a GI, if the name was actually a GI, and so on. He said that in an Internet era, where such information would already be available, there would not be any added value. He pointed out that the obligation to prohibit the registration of a trademark consisting of or containing a GI was currently part of TRIPS obligations. In that regard the joint proposal would not add any value. Under the EC proposal, when a GI had been notified to the register, it would be considered valid unless proven otherwise according to the legislation of the country where the challenge was being made. As an example, he said that the EC would accept that a notified GI could be generic in Australia but not in Canada. On the issue of the reversal of the burden of proof, he took the following example based on the EC experience in the WTO: if a WTO Member's GI legislation was not challenged or unsuccessfully challenged, it must be considered as valid. The same applied to GIs: unless proven otherwise at any time and according to the legislation of each of the WTO Members, a notified GI would be considered valid. A GI right owner would not have to prove that his GI was not generic, it would be the challenger of the GI which would have to prove that the GI was generic. The legal effect proposed under the joint proposal did not have any added value in an Internet world where anyone could consult any database to know whether there was an existing GI or not. In contrast, only the EC proposal fulfilled the mandate because it actually facilitated the protection of GIs. He could not see how the protection of a GI, which was a legal judgment, would be facilitated under the joint proposal.
