56. The representative of Australia congratulated the Chairman on his election and expressed her appreciation to Ambassador Trevor Clarke, for his guidance and leadership during 2009, and to Ambassador Karen Tan for the work she had carried out during the past months. She recalled that Australia was a proponent of the joint proposal (TN/IP/W/10/Rev.2), which articulated a practical, simple and voluntary system that would add real value to the current system, and facilitate, rather than increase, the protection of wine and spirit GIs, while respecting the principle of territoriality. The joint proposal was also the only proposal on the table that was consistent with the negotiating mandate. The TN/C/W/52 proposal, in seeking mandatory participation and calling for prima facie validity, went beyond the Doha negotiating mandate, changed established WTO jurisprudence on the burden of proof, and could seriously limit the availability of exceptions for prior good faith use of generic terms for Australian exporters. She said that this was a serious commercial concern for Australia.
57. Her delegation fully supported the form of work set out by the Chairman and endorsed the need for practical constructive dialogue on how the various proposals would be implemented in national systems. She said that, with that in mind, she would like to set out how the joint proposal would be implemented in the Australian system.
58. An obligation to consult the register on wines and spirits as contained in the joint proposal introduced as a binding obligation upon relevant authorities in Australia, and would have a broad systemic impact affecting a range of actors and laws throughout the GI protection system. These would include, for example, trademark examiners when examining an application for protection of a GI listed on the register or any trademark application in class 33, i.e. wine and spirits, the Australian Wine and Brandy Corporation (AWBC) in examining applications for foreign GIs, and judges of the Federal Court and each State Supreme Court in examining applications under consumer protection and trade practices laws.
59. She said that in Australia trademark examiners currently searched the AWBC Register of Protected Names, a listing of wine GIs registered in Australia, as part of any trademark application in class 33. An obligation to consult would mean that, if a relevant GI was found, the examiner would then be able to consider the similarity of the trademark applied for and the GI, the latter's reputation in Australia, whether it was essentially attributable to its geographical origin, and any other factors relevant to the decision, which were prescribed by legislation and administrative guidelines. She said that opposition procedures in existence under Australian law allowed opponents to challenge the registration of a trademark on the basis that its use would be contrary to law, that the use was likely to deceive or cause confusion because of a connotation it had or a sign it contained within it, that it contained or consisted of a sign that was a GI for goods originating in a particular country, region or locality, and that the goods were similar, or that the use of the trademark in respect of the goods would be likely to deceive or cause confusion. An obligation to consult the register would add further strength to these grounds of opposition. In Australia, the obligation to consult the register would give rise to a right of appeal to a court of law if the foreign GI right holder did not believe that the examiner had adequately complied with it. The judge would then be obliged to make the same fulsome consideration of the register anew. There were, in fact, instances of successful cases brought by foreign entities alleging non-registrability on these grounds, such as the "Adelaide Le Mans" case brought by the Automobile Club de l'Ouest.
60. She said that the procedure for protection of foreign wine GIs under sui generis legislation required an application to be made to the AWBC, setting out the proposed GI and the basis for the proposed registration. Legislation in Australia also established a process for considering objections raised by prospective trademark owners. Resolution of any such dispute required the decision-maker to take into account Australia's international obligations, which would, among other considerations, include the obligation to consult the database. Once resolved, the AWBC would have to have regard to the definition of a GI and whether the proposed GI was protected as a GI in its country of origin. A right of appeal to the Administrative Appeals Tribunal existed if the applicant was unhappy with the AWBC's decision. This ensured transparency and procedural fairness. An obligation to consult the register would add a further factor for the AWBC to consider. Here again, an appeal could compel a judge to engage in the same fulsome consideration of the register afresh.
61. She said that under Australian consumer protection and trade practices legislation the following acts were prohibited: to make a false or misleading representation concerning the place of origin of goods; to falsely represent that goods were of a particular standard, quality, or grade; or to engage in conduct that was misleading or deceptive or likely to mislead or deceive. If right holders were to bring an action alleging infringement of a GI, the judge would then be obliged to consult the register in deciding the action. Again, appeal rights provided a further opportunity for the register to be consulted. Depending on the informational requirements of the register, the obligation to consult could swiftly bring into play a potentially large amount of information to be used in making a decision on GI protection.
62. She said that, contrary to the TN/C/W/52 proposal, the joint proposal did not seek to alter the existing balance of rights and obligations and exceptions in Section 3 of Part II of the TRIPS Agreement. The position that an entry on the register constituted prima facie evidence was not an empty phrase that would be interpreted differently by national authorities, as the European Union had indicated during the last meeting of the Special Session. If the European Union and other Members believed that their proposal would have little legal effect on national decision-making authorities, it might be questioned what legal effect, and therefore value, any register would have.
63. She hoped that her explanation of an Australian implementation of the joint proposal had been useful to Members. Her delegation would welcome similar detailed descriptions from other Members in the room, including the sponsors of TN/C/W/52, as that kind of discussion would allow Members to identify gaps, and how to fill them.
64. In response to the comment by the European Union on linkage, she would like to put on record that Australia continued to oppose the proponents' insistence that engagement on the register be tied to other issues that went beyond the mandate of the Doha Round.
