RESTRICTEDWORLD TRADE
ORGANIZATIONIP/C/M/29
6 March 2001
(01-1088)
Council for Trade-Related Aspects
of Intellectual Property Rights
MINUTES OF MEETING
Held in the Centre William Rappard
from 27 to 30 November and 6 December 2000
Chairperson:  Ambassador Chak Mun See (Singapore)
Subjects discussed: Para. Nos .
A. OBSERVER STATUS FOR INTERNATIONAL INTERGOVERNMENTAL
ORGANIZATIONS 1-2
B. NOTIFICATIONS UNDER PROVISIONS OF THE AGREEMENT 3-7
(i) Notifications under Article 63.2
(ii) Notifications relating to Articles 1.3 or 3.1(iii) Notifications under Article 69
C. 
REVIEW OF LEGISLATION :8 - 2 8
(i) Follow-up to the review of legislation taken up at the Council's
meeting of June 2000
(ii) Review of legislation of Chil e, Colombia, Estonia, Guatemala,
Kuwait, Paraguay, Peru and Turkey
(iii) Review of legislation in April 2001
(iv) Review of legislation in June 2001
D. IMPLEMENTATION OF ARTICLE 70.8 AND 70.9 29
E. IMPLEMENTATION OF ARTICLE 66.2 30-32
F. TECHNICAL COOPERATION 33-44
G. IMPLEMENTATION OF ARTICLE 23.4 45-82IP/C/M/29
Page 2
Para. Nos.
H. IMPLEMENTATION OF ARTICLE 24.1 83-107
I. REVIEW OF THE APPLICATION OF THE PROVISIONS OF THE SECTION
ON GEOGRAPHICAL INDICATIONS UNDER ARTICLE 24.2 108-142
J. REVIEW OF THE PROVISIONS OF ARTICLE 27.3(b) 143-212
K. REVIEW OF THE IMPLEMENTATION OF THE AGREEMENT UNDER
ARTICLE 71.1 213-220
L. NON-VIOLATION COMPLAINTS 221-231
M. ELECTRONIC COMMERCE 232-258
N. INFORMATION ON RELEVANT DEVELOPMENTS ELSEWHERE IN THE WTO 259-261
(i) Accessions
(ii) Dispute settlement
O. ANNUAL REPORT TO THE GENERAL COUNCIL 262-263
A. OBSERVER STATUS FOR INTERNATIONAL INTERGOVERNMENTAL ORGANIZATIONS
1. The Chairperson said that the Council had before it 15 outstanding requests from
intergovernmental organizations for observer status.  An up-to-date list of the pending requests had
been circulated in document IP/C/W/52/Rev.9.  In the light of informal consultations that he held onthe matter, he sensed that the Council was not ready at this stage to admit any new observers.
2. The Council agreed to revert to this matter at its next meeting.
B. NOTIFICATIONS UNDER PROVISIONS OF THE AGREEMENT
(i) Notifications under Article 63.2
- Notifications from Members whose transitional periods under Article 65.2 or
65.3 expired on 1 January 2000
3. The Chairperson drew the Council's attention to the Secretariat's updated note reflecting the
status of the notifications received from these Members and distributed prior to the present meeting
(JOB(00)/7447 of 22 November 2000).  Since its distribution, a notification had been received from
Costa Rica.  The note showed that many Member s whose legislation was scheduled to be reviewed
in 2001 had not yet submitted any notification concerning their implementing legislation.  In this
regard, he urged those Members to submit the outstanding material without delay, not only those to be
reviewed at the first meeting in 2001, but also thos e to be reviewed later in 2001.  He recalled that
Article 63.2 of the Agreement required these Members to notify the laws and regulations pertaining to
the subject-matter of the Agreement applicable as of 1 January 2000 and that, under procedures
established by the Council, notification of these laws and regulations had been due since endIP/C/M/29
Page 3
January 2000.  He again urged the delegations in question, if not all the material to be notified was
ready yet, to submit whatever could be notified at present and complement the notification as soon as
other parts of the material to be notified would be ready for submission.  He reminded delegations
that, under the WTO/WIPO cooperation agreement and decisions taken by WIPO's Governing Bodies,
the International Bureau of WIPO was in a position to assist delegations with the translation of their
main dedicated intellectual property laws and regulations, as required.
- Notifications from other Members
4. The Chairperson said that, since the Council's previous meeting, amendments to legislation
notified earlier had been received from Norway, Germany, Finland and the Czech Republic.  These
would be available in the IP/N/1/- seri es of documents as soon as possible.
- Notifications specifically relating to Articles 3, 4 and 5 of the Agreement
5. The Chairperson said that such a notification had been received from Uganda and would be
distributed as soon as possible in the IP/N/1/- series of documents.
(ii) Notifications relating to Articles 1.3 or 3.1
6. The Chairperson said that such a notification ha d been received from the delegation of Jordan
and would be distributed in the IP/N/2/- series of documents as soon as possible after the meeting.
(iii) Notifications under Article 69
7. The Chairperson said that, since the last meeting, notifications under Article 69 of the
Agreement had been received from Austria and Jordan.  To date, the Council had received such
notifications from 99 Members.  Notifications on contact points were circulated in the IP/N/3/- series
of documents.
C. REVIEW OF LEGISLATION
(i) Follow-up to reviews of legislation taken up at the Council's meeting in June 2000
8. The Chairperson said that responses to questions posed to Belize, Cyprus and Mexico in the
review of their national implementing legislation, which remained outstanding at the last meeting, had
since been received.
9. He also drew the Council's attention to do cument IP/C/W/220, in which further questions
from the European Communities to Indonesia had been distributed.  Given that he had announced atthe last meeting the completion of the review of Indonesia's legislation, these questions were not
strictly speaking part of the follow-up to this re view.  However, as the Chairperson of the Council had
always indicated when closing such a review, Members were free to revert to any matter stemming
from such a review at any time.
10. The representative of the European Communities said that his delegation looked forward to
receiving responses to the questions it had posed to Indonesia.
11. The Chairperson suggested that the item concerning the reviews of the legislation of Belize,
Cyprus and Mexico be deleted from the agenda, it being understood that any delegation should feel
free to revert to any matter stemming from this review at any time.
12. The Council so agreed.IP/C/M/29
Page 4
(ii) Review of the national implementing le gislation of Chile, Colombia, Estonia, 
Guatemala, Kuwait, Paraguay, Peru and Turkey
13. The Chairperson informed the Council that se ven of the eight Members under review had
provided comprehensive notifications of their implementing legislation prior to the meeting, as well
as responses to the Checklist of Issues on Enforcement (document IP/C/5).  Questions posed to the
Members under review had been received prior to the meeting from Canada, theEuropean Communities and their member States, Japan, Switzerland and the United States and
circulated in documents IP/C/W/219, 208, 207, 215 a nd 225 and addenda.  Many questions had been
posed three weeks or less before the present meetin g, including some less than a week before the
present meeting.  Colombia, Guatemala, Paraguay, Peru and Turkey had provided responses to most
of the questions that had been posed well in advance of the meeting;  these would be circulated in
documents IP/C/W/221, 223, 226, 227, 231 and addenda.
14. In accordance with the procedures for the reviews of legislation, each of the delegations
whose legislation was under review provided a brie f introductory overview of the structure of its
legislation in the areas covered by the Agreement and of the changes, if any, that it had had to bring
about in order to make the legislation compatible with the TRIPS Agreement.  The records of these
introductory statements as well as the questions put to them and the responses given (including
responses to follow-up questions given after the m eeting) will be circulated in the following
documents with the following symbols:
Chile IP/Q/CHL/1;  IP/Q2/CHL/1;  IP/Q3/CHL/1;  IP/Q4/CHL/1;
Colombia IP/Q/COL/1;  IP/Q2/COL/1;  IP/Q3/COL/1;  IP/Q4/COL/1;
Estonia IP/Q/EST/1;  IP/Q2/EST/1;  IP/Q3/EST/1;  IP/Q4/EST/1;
Guatemala IP/Q/GTM/1;  IP/Q2/GTM/ 1;  IP/Q3/GTM/1;  IP/Q4/GTM/1;
Kuwait IP/Q/KWT/1;  IP/Q2/KWT/1;  IP/Q3/KWT/1;  IP/Q4/KWT/1;
Paraguay IP/Q/PRY/1;  IP/Q2/PRY/1;   IP/Q3/PRY/1;   IP/Q4/PRY/1;
Peru IP/Q/PER/1;  IP/Q2/PER/1;  IP/Q3/PER/1;  IP/Q4/PER/1;
Turkey IP/Q/TUR/1;  IP/Q2/TUR/1;   IP/Q3/TUR/1;  IP/Q4/TUR/1.
15. The representative of the United States thanked Kuwait for agreeing to conduct this review
despite the fact that some of the legislative ame ndments to implement the TRIPS Agreement were still
pending.
16. The representative of the European Communities expressed concern that, despite the efforts
undertaken, several pieces of draft legislation were still pending before the Kuwaiti Parliament.  He
hoped that they would be approved in the very near future.  He regretted that Kuwait had only
provided responses to approximately 23 out of 60  questions posed by his delegation, and he looked
forward to receiving the outstanding responses as soon as possible.  He noted that the Kuwaiti
representative had indicated that this state of affairs was partly due to a lack of specialized human
resources.  However, since technical assistance by developed country Members had been offered
since long.  Such assistance was still available and might be provided to Kuwait to get the job done as
soon as possible.
17. During the meeting, some Members posed additional and follow-up questions, and four of the
delegations whose legislation was under review provided responses to many of these during the
meeting.  After the presentation of these responses, the Chairperson suggested the following
arrangements for the subsequent follow-up to the reviews in question:
- outstanding responses to initial questions already posed should be submitted to the
country concerned and the Secretariat by the end of December 2000;IP/C/M/29
Page 5
- the texts of any further follow-up questions be submitted to the country concerned
and the Secretariat by 1 February 2001;  and
- a target date of 19 March 2001 be set for the submission by the countries under
review of responses to follow-up questions to which they had not yet replied,
fine-tuned versions of responses to questions to which they had given preliminaryreplies and, to the extent possible, responses to any further follow-up questions that
would be made available before 1 February 2001.
18. The Council so agreed.
(iii) Review of legislation in April 2001
19. Reporting from informal consultations that he had held on the practical arrangements for the
reviews of legislation in 2001, the Chairperson said that it had been agreed that, at the next meeting,
which would take place in the week beginning 2 April 2001, and not that of 26 March 2001 as
announced earlier, 12 Members would have their legislation reviewed, namely Bolivia, Brazil,
Cameroon, Congo, Grenada, Guyana, Jordan, Namibia,  Papua New Guinea, St. Lucia, Suriname and
Venezuela.  The legislation of Cameroon would be taken up first, followed by the other Members in
alphabetical order.  The status of notifications of laws and regulations by these Members had already
been addressed under the previous agenda item.  He recalled that at the previous meeting the Councilhad agreed on a schedule for the submission of questions and replies but, given that the next meeting
had been postponed by one week, he suggested that the Council also postpone the dates in this
schedule by one week so that, in accordance with the agreed procedures for these reviews, questions
for these Members should be submitted to the country concerned and the Secretariat by
22 January 2001, and the countries concerned should submit their answers in writing to those
questions by 5 March 2001.
20. The representative of the United States urged the Members under review to make a
determined effort to submit their notifications well in advance of their review meeting, as this would
enable other delegations to pose detailed and specific questions that were geared directly to the laws
notified rather than ask a large number of general questions.  Specific questions relevant to specific
laws made the reviews more productive for all concerned.  He recalled that there had been a clear
obligation to notify these laws by the end of January 2000.
21. The representative of Brazil said that Brazil had demonstrated its unambiguous commitment
to Article 63 of the Agreement by providing a timely and complete notification of all its TRIPS
implementing legislation to the Council.  Brazil considered that the process of reviewing national
legislation was extremely useful, since it gave Me mber governments the opportunity to explain their
views as to the compatibility of their own intellectual property laws and their interpretation of theTRIPS Agreement.  His Government regretted that one Member had decided to initiate dispute
settlement proceedings against Brazil regarding its industrial property law.  Such an initiative directly
affected the review of Brazil's implementing legi slation in the TRIPS Council.  Brazil could not
engage in this process while the same legislation would at the same time be the subject of a litigation.
Brazil had not anticipated this situation when it had agreed to be taken up in the schedule of reviewsin the Council.  His Government could not accept the inclusion of his country's legislation in the
schedule of reviews for 2001 as long as Brazil migh t need to clarify its posi tion with regard to that
legislation in ongoing dispute settlement proceedings.
22. The representative of the United States agreed with the representative of Brazil that the
review procedure served the purposes of confidence-building and transparency.  He regretted that a
formal dispute concerning one specific aspect of Brazil's law left the Brazilian delegation unable orIP/C/M/29
Page 6
unwilling to submit the full range of legislation that it had notified to review in the Council.  He noted
that some delegations had not enacted implementing legislation but had agreed to be reviewed even
though they were vulnerable to dispute settlement.  Brazil had gone much further and passed all
implementing legislation and notified it.  The fact that one narrow issue might be the subject of
dispute settlement proceedings should not deprive other Members of understanding how Brazil had
implemented its TRIPS obligations.  He commended Brazil for its implementation of the Agreementand said that all Members could benefit from a review of the implementing legislation.
23. The Chairperson concluded that Brazil was yet to confirm its agreement to its inclusion in the
schedule of reviews in April 2001 but that, for the purpose of planning, Brazil would remain in the
schedule.
24. The representative of Argentina expressed her delegation's understanding for the concern
expressed by Brazil.  The paucity of legislation notified submitted under Article 63.2 of the
Agreement demonstrated the problems implementation of the Agreement brought for manydeveloping country Members.  Various Members had made special efforts to carry forward the
exercise in transparency as required by the Agreement, including Brazil and Argentina.  Compliance
with a mechanism designed to ensure greater transparency should not potentially affect the rights of a
Member to an adequate defence of provisions of its legislation, if these were taken up in WTO dispute
settlement proceedings.  A request for consultations under the DSU had been addressed to Brazil andit appeared reasonable to suppose that a review of its legislation could affect Brazil's rights, since
many questions posed in reviews of legislation concerned interpretation of the scope of the TRIPS
Agreement's standards.
25. In response to a question from the delegation of the representative of the
Dominican Republic, which had requested in writing a postponement of the review of its legislation,
due to a change of government which had entailed a complete change of its administrative structure
and the development of new intellectual property legislation which had recently been approved and
for which implementing regulations were pending, th e Chairperson suggested that the review of the
Dominican Republic's legislation be taken up in June 2001 instead of April 2001.
26. The Council took note of these statements and agreed  to proceed as proposed by the
Chairperson.
(iv) Review of legislation in June 2001
27. The Chairperson proposed that the TRIPS Council's second meeting for 2001 be scheduled
for the week commencing 18 June.  Questions for the Members to be reviewed at that meeting should
be sent in, in accordance with the agreed proced ures for these reviews, by 9 April 2001, i.e. 10 weeks
before the meeting, and the Members concerned should submit their answers in writing to those
questions by 21 May 2001.
28. The Council so agreed.
D. IMPLEMENTATION OF ARTICLE 70.8 AND 70.9
29. The Chairperson informed the Council that it had not received any new notifications under
this agenda item since its previous meeting.IP/C/M/29
Page 7
E. IMPLEMENTATION OF ARTICLE 66.2
30. The Chairperson recalled that the implementation of Article 66.2 had been under discussion in
the Council since December 1998 and that the Council had received information from 20 developed
country Members on how that provision was being implemented in their territories.  Since June 2000,
the Council had also had before it a Secretariat note (IP/C/W/169) prepared on a request from the
Council, setting out the types of incentive measures that had been notified, with cross references towhere further details could be found;  as well as a proposal from the delegation of Zambia relating to
special and differential treatment in respect of technology transfer (IP/C/W/199).  In relation to
Article 66.2, the Special Session of the General Council had agreed, at its meeting of
18 October 2000, to invite the TRIPS Council, with  a view to facilitating full implementation of
Article 66.2:  to give consideration to drawing up an illustrative list of incentives of the sort envisaged
by Article 66.2;  to put on a regular and systematic basis its procedure for the notification and
monitoring of measures in accordance with the provisions of Article 66.2 and, in doing so, to giveconsideration to avoiding unnecessary burdens in notification procedures;  invite other
intergovernmental organizations to provide information on their activities aimed at technology
capacity-building.  During informal consultations that he had held on 31 October, it had been agreed
that Members would also have informal consultations on this matter during the course of this week's
TRIPS Council meeting and, in that connection, all interested delegations had been urged to submiteither in writing or orally at this meeting their su ggestions for an illustrative list of incentives and also
for a regular notification and monitoring procedure.  Moreover, it had been agreed to discuss which
intergovernmental organizations should be invited to provide information on their activities aimed at
technology capacity-building, with a view to taking a decision on that matter.
1
31. Continuing, he said that, in the informal consul tations on the matters that had been referred to
the Council for TRIPS by the Special Session of the General Council concerned with implementation
matters, it had become clear that those countries which had previously indicated their intention to
submit proposals concerning an illustrative list of incentives and a systematic notification and
monitoring procedure were not yet ready to do so.  Accordingly the Council would have to come back
to this matter when such proposals were before it.  Based on his informal consultations, he proposedthat the Council agree to invite the secretariats of UNCTAD, WIPO, UNIDO, the World Bank and the
CBD to provide to it, prior to its April 2001 m eeting, written information on their activities on
technology capacity-building.  He would report on th is and other implementation-related issues to the
Special Session of the General Council, on his own responsibility.
2
32. The Council so agreed.
F. TECHNICAL COOPERATION
33. The Chairperson recalled that the previous meeting of the Council had had a special focus on
technical cooperation and in that context developed country Members had provided their annual
updates of information on their technical cooperation activities.  Some of that information had been
provided just prior to the previous meeting and mo st of it had only been available in its original
language.  Therefore, it had been agreed, as in previous years, to invite Members to make further
comments on those annual reports at the present mee ting.  He also informed the Council that, shortly
before the present meeting, a non-paper had been received and made available, jointly submitted by
the delegations of Bangladesh;  the European Communities and their member States;  Hong, Kong,
China;  and Norway (JOB(00)/7535).  This document addressed the issue of "Technical Assistance on
TRIPS Notification between WTO Members".
                                                     
1 See JOB(00)/6908 of 2 November 2000, Annex II.
2 See document IP/C/21.IP/C/M/29
Page 8
34. The representative of Hong Kong, China in troduced the joint non-paper which it had
co-sponsored with Bangladesh, the European Communities and their member States and Norway.
Hong Kong, China had gone through the process of notification and review of legislation earlier
in 2000.  It had benefited from generous technical assistance from international organizations and
Members, including IP Australia, the UK Patent  Office and the European Patent Office.  As a
recipient of technical assistance, Hong Kong, China had found it useful to explore and develop avoluntary and informal system for sharing experiences among Members with respect to the TRIPS
notification and review requirements.  This would supplement the wide range of assistance currently
provided by the WTO and WIPO Secretariats and by some developed country Members.  In essence,
the proposal was to create a pool of experts provided by Members who could offer advice to those
Members who had yet to go through the notification and review process.  These experts could provide
written advice or, on request, visit the economy requiring assistance.  For developing and
implementing substantive intellectual property law or enforcement measures, the experts could pointto sources for further assistance, for example from the WTO, WIPO, the WCO or from individual
Members under their technical assistance programmes.  It was not envisaged that these experts would
be involved in the drafting of intellectual property legislation, although Members would offer such
assistance if they wished.  It was hoped that least-developed country Members could benefit from the
proposed scheme, when they eventually would take on the notification obligations with effect from1 January 2006.  Developing country Members might also benefit from the scheme but, since the
Council was working on the basis that the reviews of  their legislation would be completed by the end
of 2001, they might not be able to benefit from it fully.  It was hoped that this scheme would be set up
in a flexible and informal manner.  It would supplement and not deter the bilateral technical assistance
offered by some developed Members.  It was a purely voluntary and demand-driven scheme but theco-sponsors certainly hoped that more developed country Members, and developing country Members
who had completed the notification and review process, would participate in the scheme and offer
expert assistance.  Hong Kong, China was ready to offer some assistance in future years, although its
capacity was relatively small compared with that of developed country Members.  The time-frame for
assistance suggested in paragraph 7 of the non-paper only served as a guideline and should beimplemented flexibly.  Concerning least-developed country Members, whilst the proposal aimed to
commence providing assistance some two years before the date for notification of laws, some
least-developed country Members might wish to start the preparation earlier and others later.  It was
envisaged that the bulk of activities would take place between early 2004 and early 2006.
Nevertheless, the list of experts or Members willing to offer assistance as suggested in paragraph 7 ofthe non-paper should be established as soon as possible to cater for the needs of developing country
Members requiring assistance or least-developed countries who would like to start their preparation
early.  The co-sponsors hoped that the Secretariat would kindly establish and maintain a list of
Members willing to offer assistance and facilitate communications between Members requesting and
offering assistance.  Whilst the initiative was informal in nature, it was hoped that Members would be
kept informed of such activities for the sake of  transparency, for example, through annual updates on
technical co-operation activities submitted by Members.  He invited other Members to support theproposal in principle, and begin the process of establishing a list of Members' experts who could
provide assistance, leaving minor details to be refined later.  The co-sponsors were ready to listen to
comments from other Members and refine the proposals before submitting the paper as a formal WTO
document, with all details finalized, hopefully before the end of December 2000.
35. The representative of Australia welcomed the general thrust of the joint non-paper and
thanked Hong Kong, China for initiating it.  Australia had already done extensive work in the area of
technical cooperation for notification and review in cooperation with countries in its region, including
the preparation of a major study on the notification and review process developed precisely to provide
the kind of practical assistance that was called for in the joint non-paper.  Australia had distributed
copies of its informal survey to all developing country Members and least-developed countryMembers in Geneva in December 1999.  The survey was also available on the Internet at a websiteIP/C/M/29
Page 9
address.3  Australia had an active programme of technical cooperation focused especially on its region
and the programmes included promotion of appropriate technology transfer and legal, technical and
logistical support for TRIPS implementation and effective use of the intellectual property system.  A
concrete example was the biotechnology training package which focused on commercialization and
management of intellectual property which had been trialled in Viet Nam and Thailand earlier
in 2000.  Work was continuing on the package to enable its widespread distribution and usethroughout the South Pacific and Asia-Pacific regions and by other interested developing and
least-developed countries.  Australia's policy for development cooperation sought to take full account
of the priority requirements expressed by developing and least-developed country partners to ensure
that a technical assistance programme met the needs identified and articulated by the recipient
country.  A prescriptive approach to providing technical assistance would undermine this principle
and could lead to lessened emphasis on the expressed needs of the recipient country.  The introductory
remarks in the informal survey noted that, given th e diversity of national laws and legal frameworks
among Members and the discretion that they had exercised, there could be no model or ideal approach
to the notification and review processes.  Australia recognized that these processes could be
burdensome and difficult for Members to undertake.  Her delegation wished to share more broadly the
practical lessons drawn from its informal survey and its experience in working with a number of
countries in its region and thereby increase confidence and mutual understanding among Members.Her delegation wished to discuss its specific comments on the joint non-paper with Hong Kong,
China and its other co-sponsors and hoped to co-sponsor it when it was circulated as a formal
document.
36. The representative of Norway said that, at present, there was a scheme under which
international organizations aided developing country Members in drafting legislation, but there was
no similar scheme for the notification of legislation under Article 63.2 of the Agreement.  The joint
non-paper proposed a list of developed country Members who were willing to provide such
assistance.  It was important for developed country Members to take on this responsibility to make
themselves available to least-developed countries when they had to notify implementing legislation
by 2006.  The developed country Members had already been through the notification procedure andhad relevant experience.  In order to assist least-developed countries in this task, the scheme had to be
prepared well in advance both in terms of personnel and financing.  The emphasis in the Agreement
was on least-developed countries to provide timely notifications of implementing legislation, and this
was necessary to have a meaningful review of national implementing legislation.
37. The representative of Japan said that the scheme proposed in the joint non-paper might be of
assistance in the notification of Members' national legislation.  This kind of technical assistance
among Members could be most meaningful as need-oriented assistance, particularly in the field of
registration activities.  Japan had been providing technical assistance with a primary focus on the
operational aspects of intellectual property systems, such as human resource development and
computerization of intellectual property administ rations, mainly through contribution of voluntary
funds to WIPO.  His delegation reiterated that it would continue to provide assistance to
least-developed countries as well as developing country Members, as it believed that it was importantfor developed country Members to make various efforts which could be complementary and function
as a whole so that meaningful technical assistance could be achieved.
38. The representative of Canada believed that the joint non-paper was a useful contribution in
considering the important issue of technical assistance for notification.  Its suggested approach would
be helpful in identifying whether the technical assistance that was being offered was actuallybeneficial from the recipient countries' points of view.
                                                     
3 http://www.dfat.gov.au/trips.IP/C/M/29
Page 10
39. The representative of the European Communities said that his delegation was a co-sponsor of
the joint non-paper, because it believed that it was a useful complement to technical assistance
programmes offered by international organizations such as the WTO and WIPO, as well as by the
European Communities, their member States and other developed country Members.  He highlighted
that the proposal was informal, practical and flexible and hoped that the intended beneficiary
countries would make use of it and call on the listed experts.  He recalled that, at the previousmeeting, he had raised the issue of the provision of technical assistance by WIPO and the WTO in
light of the target date of 2006.  He welcomed any future information on this issue that the
Chairperson might provide so that the least-developed countries could fulfil their obligations as well.
40. The representative of the Secretariat, responding to the European Communities' query
regarding technical assistance cooperation, reported  that the Secretariat was discussing with the
International Bureau of WIPO how to coordinate better and enhance cooperation specifically with the
needs of least-developed countries, and the expiration of their transitional period, in mind.  He hopedto report more specifically on this issue at the next meeting.
41. The representative of Hong Kong, China said that some fine details in the joint non-paper
remained to be clarified, and he also wished to consult other potential co-sponsors, such as Australia.
He suggested that Members agree to the proposal in principle so that a beginning could be made with
the establishment of a list of Members that were willing to provide assistance on notification to least-developed country Members as well as developing c ountry Members.  He hoped to be in a position to
circulate the proposal as a formal paper shortly.
42. The Chairperson noted that there was no objection in the Council to this proposal for
assistance on a voluntary basis and that the sponsors should feel free to proceed.
43. The representative of Zambia said that his delegation was awaiting instructions to co-sponsor
the joint non-paper.
44. The Council took note of the statements made.
G. IMPLEMENTATION OF ARTICLE 23.4
45. The Chairperson recapitulated where the Council wa s in dealing with the matter.  At the last
meeting, the Council had continued its discussions under this agenda item on the basis of a proposal
from the European Communities and their member States, of which the Council had received a
revision at its meeting in June 2000 (document IP/C/W/107/Rev.1), and a joint proposal from Canada,
Chile, Japan and the United States (document IP/C /W/133/Rev.1).  The Council had also had before
it, at the last meeting, a paper from New Zealand on the subject (document IP/C/W/189).  Information
gathered by the Council in the context of its work on this matter also included 12 submissions fromMembers on systems for the registration of geographical indications which they operated
(document IP/C/W/76 and addenda);  a background note prepared by the Secretariat on existing
notification and registration systems for geographical indications relating to wines and spirits
(document IP/C/W/85);  a background note prepared by the Secretariat on international notification
and registration systems for geographical indications relating to products other than wines and spirits
(document IP/C/W/85/Add.1);  and information provided orally by WIPO, at the previous meeting, on
the work that had commenced in July 2000 in that Organization in relation to the Lisbon Agreement.The Council was discussing this matter on the basis of paragraph 34 of its 1996 annual report (IP/C/8)
and the agreement reached in the General Council at its meeting of 7 and 8 February 2000.  Since the
last meeting, a paper on the matter had been received from the delegation of Hungary
(document IP/C/W/234).IP/C/M/29
Page 11
46. The representative of Hungary, introducing his delegation's paper, said that the purpose of this
communication was to move forward the mandated negotiations in the Council for TRIPS on the
establishment of a multilateral system for the notification and registration of geographical indications
under Article 23.4 by providing some input with respect to an opposition/challenge procedure and its
effect concerning the registration of geographical indication notified under this system.  The paper
built on the revised proposal from the European Comm unities and their member States because, in his
delegation's view, this was the only proposal on the table at present which was in conformity with
Article 23.4, in the sense that it foresaw the establishment not only of a database but also of a register.
Stressing two points concerning the paper, he first said that Hungary believed that an effective and
fair opposition/challenge procedure was an indispensable element of the multilateral register in order
to ensure that the register would genuinely facilitate protection.  The opposition/challenge procedure
should be fair and simple and should contain, in addition to the direct bilateral discussions proposed
by the European Communities and their member States, a multilateral element.  Such an elementwould, in particular, provide an adequate opportun ity for smaller WTO Members to represent their
interests and would prevent potential abuse of the opposition/challenge procedure, by ensuring that it
was not left to individual Members to determine whether an opposition/challenge was justified or not.
Regarding the form of this multilateral procedure, his delegation suggested that the Council should
explore the possibility of establishing a specific arbitration system under which decisions would befinal and binding.  As outlined in paragraph 6 of his delegation's paper, such a form of settling
disagreements was not alien to the WTO framework.  The second suggestion was that the effect of the
arbitrators' decision would be of an erga omnes  nature, i.e. as a result of a successful
opposition/challenge the notified geographical indication would not be entered into the register and
third parties would not be under an obligation to provide protection for it.  Hungary was not wedded
to the specific solution it was offering in its paper and was open to discuss any other solution that
would be effective and simple and which would take care of its two most important concerns.
47. The representative of the European Communities noted that the Hungarian proposal built
upon the proposal from the European Communities and their member States.  Paragraph 5 of
Hungary's paper showed that Hungary was sugges ting that the system should combine the direct
bilateral consultations which his delegation had proposed with a multilateral procedure for cases
where direct discussions between the parties did not yield a bilateral settlement.  He assumed that
Hungary had good reasons for further elaborating on his delegation's proposal and for proposing
complementary elements to the possible solution his delegation had proposed for dealing with
conflicts concerning geographical indications in the framework of the register.  Hungary's proposalmerited close analysis and further discussion in the Council.  He said that the establishment of the
arbitration system that Hungary was proposing, unde r which decisions would be final and binding and
would have erga omnes  effect, would go in the direction of his delegation's initial proposal
(document IP/C/W/107).  He was grateful to H ungary for this useful contribution and would be
interested to know whether Hungary's proposal al so corresponded to the needs of other Members.
48. Responding to the Chairperson's question as to how the work on geographical indications
might be pursued further, he said that at many meetings of the Council, formal or informal, his
delegation had expressed the view that its proposal was the only proposal that really corresponded to
the requirements of Article 23.4.  The system proposed by Canada, Chile, Japan and the United States
merely aimed at setting up a database and providing information, which was not good enough for his
delegation and did not meet the requirements of Article 23.4.  As confirmed by Hungary's proposal, it
was important to get to a registration system with legal effects and which solved problems.
49. The representative of India gave some preliminary reactions to the contribution from
Hungary, but would comment on it more substantivel y at a later stage.  He commended Hungary for
supplementing and strengthening the proposal from the European Communities and their member
States usefully, by proposing to combine the bilateral consultations proposed by the European
Communities, which were probably an indispensable element for the system to be established, with aIP/C/M/29
Page 12
settlement procedure that had a multilateral character.  He also expressed appreciation for the inherent
flexibility in the Hungarian proposal, which called for a system that was extendable to geographical
indications for other products than those envisaged in the current work under Article 23.4.  He agreed
with the previous speakers that the proposal from the European Communities and their member States
would appear to be the only proposal which met both the letter and spirit of Article 23.4.  The
mandate in Article 23.4 was an important mandate and had yet to be fulfilled.  He also reiterated hisdelegation's view that there was concomitance between the negotiations that were to be undertaken
under this provision and the extension of protection contemplated under Article 24.1.
50. The representative of the United States said that Hungary's paper significantly contributed to
the progress of the work of the Council in connection with Article 23.4.  Providing his delegation's
preliminary comments on it, he said that, contrary to the approach his delegation had proposed,
Hungary's proposal would not simply facilitate the protection of geographical indications for WTO
Members participating in the system to be established under Article 23.4, but would imposesubstantive obligations regarding the protection of geographical indications beyond those currently set
out in the TRIPS Agreement, because of the very formal nature of the opposition/challenge procedure
proposed.  His delegation was of the view that any proposed system should  simply facilitate the
protection of geographical indications for Members who chose to participate in the system to be
established, and this view was shared by other supporters of the proposal that his delegation hadjointly submitted with Canada, Chile and Japan.  That proposal did not impose substantive obligations
regarding the protection of geographical indications beyond those currently set out in the TRIPS
Agreement and would allow voluntary participation as reflected by the words of Article 23.4 "in those
Members participating in the system".  A WTO Memb er was not required to participate in the system
to be established under Article 23.4 to obtain full protection under the TRIPS Agreement for itsgeographical indications.  The system his delegation had proposed would recognize and accommodate
the various regimes of WTO Members for the protection of geographical indications described in the
responses to the Checklist of Questions on Article 24.2, if those regimes were consistent with the
TRIPS Agreement.  This system would be simple and not costly for those choosing to participate.  It
would also allow participating WTO Members and others to use information submitted without undueburden or cost to them.  Neither would it impose undue administrative burdens and costs on the WTO
Secretariat.  In his delegation's view, it was the only proposal submitted that accomplished these
goals.
51. The representative of Slovenia said that the aim of the Council's work in this area should be
the establishment of an effective and credible multilateral system for the notification and registration
of geographical indications.  Furthermore, his delegation would favour an approach which would
allow the system that would be agreed upon to be usable for geographical indications no matter what
kind of product they identified.  Slovenia supported, in general, the proposal made by the European
Communities and their member States, but some questions required further discussion.  He welcomed
the paper submitted by the delegation of Hungary on an opposition/challenge procedure, which his
delegation believed raised an important issue.  Since this paper had just been received, his delegation
had not had sufficient time yet to study it, but intended to comment on it in detail at the next meeting.
52. The representative of Chile, reacting on a preliminary basis to Hungary's contribution, said
that Hungary's approach went away from the basic principles contained in Article 23.4 and did not
allow for the flexibility and voluntary nature of the system to be established under that provision and
would impose more obligations than those explicitly laid down in the Agreement.  He wished to recall
that, when the negotiators of the Agreement had want ed to incorporate in it rules which were already
the subject of provisions of existing international instruments, they had agreed to make express
reference to the international instrument and the pr ovisions in question;  they had, however, not done
so in connection with the notification and registration system of Article 23.4, despite the existence,
since 1958, of the Lisbon Agreement.  The fact that a reference to the registration system of the
Lisbon Agreement had not been incorporated into the TRIPS Agreement denoted clearly that theIP/C/M/29
Page 13
negotiators had had in mind a system of another nature than the one established by the Lisbon
Agreement.  Even if they had envisaged a system corresponding to that of the Lisbon Agreement, the
Hungarian proposal was aiming at a system of obligations which went further than the obligations
flowing from the Lisbon Agreement;  and the Lis bon Agreement was adhered to by only 19 countries.
53. The representative of Australia said that her delegation continued to support the collective
proposal, which it considered more flexible and suited to Australia's own regime and interpretation of
Article 23.4.  In this regard, she emphasized that Article 23.4 stipulated that the system to be
established should "facilitate the protection of geographical indications for wines".  As Article 23.4
also stipulated that participation in the system would be voluntary, given that it should facilitate
protection of geographical indications for wines "eligible for protection in those Members
participating in the system", wide-ranging acceptance and participation by WTO Members was
central to achieving this objective.  A register only suited to the legal, economic and social
circumstances of a limited number of WTO Members could not facilitate protection and would beredundant.  This was one of the main failings of the Lisbon Agreement.  The Lisbon Agreement
closely mirrored the proposal from the European Communities and their member States, but had only
attracted a small and narrow range of adherence.  In contrast, for example, a system such as that of the
Patent Cooperation Treaty had attracted the voluntary adherence of most WTO Members.
Consequently, as a starting-point, all WTO Members should agree that the register to be establishedunder Article 23.4 take account not only of the myriad of legal regimes that Members had chosen for
the implementation of their obligations in respect of geographical indications, but also of the resource
and administrative implications and constraints of individual Members and the varying trade
importance to them of geographical indications.
54. Commenting in a preliminary way on the Hungarian paper, she said that, in her delegation's
view, the only appropriate mechanisms for settling disputes were regimes established at the national
level for that purpose.  The register to be established under Article 23.4 was not intended to alter the
substantive provisions of the TRIPS Agreement, which included the clear grant of the right to make
determinations concerning the protection of geographical indications at the national level by the
courts or administrative structures.  Further, a register proposal that did not have any substantive legaleffect and operated as an information resource, as  mandated, in her delegation's view, by Article 23.4,
avoided the need for a costly and resource consuming dispute settlement process.  This comment also
applied to the proposal from the European Communities and their member States, which made the
DSB the ultimate arbiter of a dispute in relation to the registration of an individual geographical
indication.  Australia was concerned that this would be a most costly and inefficient way of settlingsuch disputes and would query whether the resources of the DSB were properly consumed settling
individual disputes of this kind.
55. Continuing, she said that her delegation felt that, in order to make progress on the
negotiations under Article 23.4, to which Australia was committed, a useful way of advancing
discussions would be to draw out some of the prac tical implications of the proposals that were before
the Council.  In that vein, she thanked the Euro pean Communities and their member States for their
revised proposal, which sought to take account of concerns raised by various WTO Members inrelation to their previous proposal.  The issue of the multilateral register was a complex one requiring
a detailed examination of the various proposals.  There was a definite need for a greater exchange of
information in relation to each of the current proposals, so that Members could properly understand
the implications that each proposal might have for them.  Her delegation would, therefore, be grateful
for any clarification that the European Communities and their member States could provide in relationto a number of questions her delegation had on their revised proposal.  Australia supported a number
of statements made by the European Communities in the explanatory note to its proposal, namely that
the register should "allow a participating member to inform WTO Members of the geographical
indications that are protected in its territory";  that it should only facilitate the application of existing
provisions;  that it should not require WTO Members to enact new domestic legislative orIP/C/M/29
Page 14
administrative structures;  and that it should not lead to the development of heavy and costly national
registration systems.  However, having examined these basic elements against the details of the
proposal, Australia had serious concerns about th e extent to which the proposal was actually
consistent with these statements.  The proposal went beyond the establishment of an information
source in a manner consistent with existing TRIPS obligations.  Her delegation's reading of the
proposal suggested that the register would build upon existing TRIPS obligations and create a global,pre-emptive system with the legal effect of securing protection in all jurisdictions, unless Members
successfully objected within a limited time-frame and on limited grounds.  This proposal appeared to
supersede the right of national governments and courts to make their own determinations regarding
the legal protection of individual geographical indications in their own jurisdiction.  Furthermore,
despite the statement that the register would not require costly new administrative or legal structures,
her delegation believed that a number of countries, including Australia, would require new legislative
enactments and a new administrative structure to examine and engage in disputes relating to notifiedgeographical indications.  She was particularly concerned that, as the proposal went beyond existing
TRIPS obligations and was likely to require costly new administrative structures and legislative
change, a number of Members would be deterred from participation.
56. Her delegation had noted that paragraph A.1 of the revised proposal from the European
Communities and their member States (document IP /C/W/107/Rev.1) provided that participation
would be by voluntary declaration.  Australia unde rstood Article 23.4 to mean that countries would be
able to choose whether to participate, with the implicit corollary that non-participation should not
disadvantage the protection of geographical indications of nationals of non-participating Members as
against those of participating Members.  Australia based this on its interpretation of Article 23.4 as
having the objective of facilitating existing obligations.  For this reason, she was curious as to themeaning of the phrase "unless otherwise foreseen in  this multilateral system" in paragraph A.3.  This
statement suggested to her delegation that the rights of non-participating Members under the TRIPS
Agreement might indeed be prejudiced by that non- participation.  This view was reinforced by the
references in section C and paragraph D.4 of the proposal to "Members", as distinct from the term
"participating Members", which was used extensively in other parts of the proposal.  She would beinterested to know what form the European Communities and their member States envisaged that the
voluntary declaration would take an d what would be the legal effect of that declaration.  Could a
Member subsequently withdraw its voluntary consent to participate and if it did, what would be the
consequences in terms of both its obligation to protect and the registration of a geographical
indication protected by it as the country of origin?  What did the European Communities and theirmember States envisage that the operating rules would contain;  for example, would these contain
substantive obligations, or would these be purely procedural in nature?  Would the operating rules
have separate legal force?  What would be the likely consequences of non-compliance with the
operating rules?  For example, would non-compliance affect the eligibility of a notified geographical
indication for registration?
57. Paragraph B.1 of the revised proposal from the European Communities and their member
States (document IP/C/W/107/Rev.1) provided th at Members shall provide their declaration of
participation "without delay".  It would be helpful if  the EC could clarify what this meant:  did the
phrase "without delay" refer to the commencement of the register and, if not, to what event did it
refer?  Did this mean that a Member, which chose not to participate at commencement, could not
decide, for example, two-and-a-half or 10 years late r that it wished to participate?  How would this
time-frame apply to developing country and least-developed country Members?  Paragraph B.2provided that "all" geographical indications would be notified.  Would this obligate a participating
country to notify all wine and spirit geographical indications that it protected domestically, even if it
did not consider that the international trade significance of those geographical indications warranted
international registration?  What would be the effect of an unintentional failure to notify a particular
geographical indication?  Australia would also be grateful if the European Communities could clarifyan apparent error in paragraph B.2, i.e. the reference to geographical indications for "all goods [...]IP/C/M/29
Page 15
corresponding to the definition in Article 22.1" .  Her delegation had clearly understood the European
Communities to have noted, in its explanatory note at paragraph 2, that the current mandate only
extended to geographical indications for wines and sp irits;  therefore she believed that the paragraph
in question should read "all wine and spirit geographical indications which comply with the definition
set out in Article 22.1".  Paragraph 5 of the explanatory note provided that the proposal should not
require Members to implement new domestic legislative or administrative structures.  Paragraph B.5,however, clearly envisaged that national provisions would, at least in some cases, be necessary to
implement the register domestically.  These statemen ts appeared to her delegation to be in conflict.
Paragraph B.7 of the proposal provided that the Secretariat would publish and notify Members of the
notification of geographical indications.  This raised the question of the role that the WTO Secretariat
could and would play in this process and how this would be funded.  Given the voluntary nature of the
register, her delegation would assume that any funding required to establish and maintain the register
would be generated from participating Members.  Did the European Communities envisage that feeswould be levied on Members to register geographical indications, or would some form of participation
fee be charged?
58. Australia would be grateful for clarification as to why section C of the revised proposal from
the European Communities and their member States (document IP/C/W/107/Rev.1) referred
generically to the ability of "Members" to examine the published geographical indication and toinstitute challenges, rather than limiting its scope to those Members participating in the system.
Section C appeared to be closely linked to paragraph D.4, which also referred only to "Members".
Together, these provisions suggested that any Member, whether or not participating in the system,
which had not challenged a notified geographical indication within the specified time-frame, could
not refuse its protection on the grounds of the provisions of the TRIPS Agreement spelt out inparagraph D.4.  Australia would be grateful for clar ification as to how these elements of the proposal
were consistent with the voluntary notification and registration system foreseen in Article 23.4.
Paragraph C.1 placed the tight time-frame of 18 months on examination of notified geographical
indications by other Members.  What would be  the case where a Member had only started to
participate in the register after publication of a notified geographical indication - would thetime-period for objection by that country then run from the date of participation?  Further, since the
current provisions of the TRIPS Agreement did not place any time-limit on Members to deny
protection of geographical indications, how was such a time-limit justifiable under the proposal?  Her
delegation understood the reference in paragraph C.2 to a challenge to the  "protection of an individual
geographical indication notified by another Member" not to be a reference to protection in the countryof origin, but rather to protection in another WTO Member.  This suggested that the legal effect of
registration was the substantive grant of legal protection in other Members' jurisdictions.  If this
interpretation was correct, the proposal would clearly have a legal effect well beyond the existing
obligations contained in the TRIPS Agreement - whic h were to provide the legal means for interested
parties to prevent use.  She would be interested to know the grounds on which registration could be
challenged.  Would the grounds for challenge correspond to the exceptions available for the protection
of geographical indications under the TRIPS Agreement?  If there were other grounds, how werethese justified by the existing provisions of the Agreement?  What would be the effect of a successful
challenge?  For example, would a challenge have effect in relation to all participating Members or
only the Member initiating the challenge?  Would registration in relation to a non-challenging
Member take effect even if a particular geographical indication were still subject to a dispute between
other Members?  The proposal from the European Communities and their member States made theDSB the ultimate arbiter of a dispute in relation to registration of an individual geographical
indication.  Australia was deeply concerned that this proposal ousted from national courts and
administrations the question of whether a particular geographical indication was entitled to protection
in its own jurisdiction.  Further, if the purpose of the register, as Australia understood it, was to
provide information about geographical indications that were protected in their country of origin as areference point for national administrations, her delegation did not see the need for a dispute
resolution mechanism.  Her delegation was also troubled by the high costs and possible burden on theIP/C/M/29
Page 16
dispute settlement mechanism that would be involved  in the adjudication of such disputes by the DSB
and that this in itself might act as a deterrent to widespread participation.
59. Paragraph D.1 of the revised proposal from the European Communities and their member
States (document IP/C/W/107/Rev.1) seemed to suggest  that registration would still take effect even if
there were one or more disputes under way and that any dispute would be referred to in that
registration.  This again raised the critical question of the legal effect of registration.  Her delegationwas particularly concerned that, if registration was intended to have legal effect in national
jurisdictions, then registration could not and should not occur until all disputes had been finalized.
Did the European Communities and their member States envisage that the conditions for
homonymous use would also be listed on the register?  Paragraph D.3 provided that registration
would have the effect of providing a "presumption of eligibility" for protection by interested parties.
Her delegation was unsure of the meaning or intended legal effect of this provision or of how such a
"presumption" would operate in a domestic jurisdiction and would appreciate clarification of thisimportant point.  Further to her comments above on paragraph D.4, this paragraph appeared to impose
additional obligations on all Members, whether or not they had chosen to participate in what was
ostensibly a voluntary system.  She would be grateful for clarification from the European
Communities and their member States as to how this provision was consistent with the mandate set
out in Article 23.4.
60. The representative of Korea said, in a preliminary reaction to the Hungarian proposal, that his
delegation had a different view on the matter.  With respect to Article 23.4, Korea wished to join other
delegations in drawing particular attention to the wo rding of the provision in relation to the purpose of
establishing a multilateral system for the notification and registration of geographical indications.
Article 23.4 had the single purpose of facilitating  the protection of geographical indications.  The
word "facilitating" implied that the multilateral system to be established would not generate new
rights and obligations and would, in other words, not constitute a mechanism of protection, i.e. that
the inclusion of a geographical indication in the system would create the obligation for other WTO
Members to protect it.  National industrial property administrations would be entitled to verify
whether under national law the geographical indication did indeed deserve protection.  Moreover, itshould be noted that the protection of a geographical indication under Article 22.2 of the TRIPS
Agreement did not depend necessarily on its registration.  What WTO Members were obliged to
provide were the legal means for interested parties to prevent the unauthorized use of protected
geographical indications.  Such legal means might include a registration system, but not necessarily.
The consequence was that, in countries that did not adopt a registration system, geographicalindications might be acknowledged only when an interested party appeared before the competent
authority to enforce its rights in the geographical indication against an infringer.  If the geographical
indication had a foreign origin, the plaintiff would be required, before anything else, to establish that
the sign in question was indeed a geographical indication.  The inclusion of the geographical
indication in the international system to be established by another WTO Member would facilitate the
task of the plaintiff to a large extent to prove that the sign was indeed a geographical indication.
"Facilitating" therefore meant that the inclusion of a geographical indication in the future systemwould make it easier for it to be recognized as such in other WTO Members.
61. The representative of Romania wished to reiterate the great importance her delegation
attached to the establishment of a multilateral system for the notification and registration of
geographical indications in line with the revised proposal from the European Communities and their
member States and the comments made by them on the Hungarian proposal.  Her delegation wasready to give positive consideration to the Hungarian proposal as a complement to the proposal from
the European Communities and their member States, but needed more time to study it in detail.IP/C/M/29
Page 17
62. The representative of Mauritius said that her delegation was not supportive of ideas that
would lead to a proliferation of mechanisms with separate rules to deal with challenges.  Any
procedure for the opposition of registration should be the least cumbersome possible and should
favour primarily a mutually satisfactory solution rather than lead to a legal dispute.  Having said this,
her delegation did not see the Hungarian proposal as imposing any further obligations on Members,
nor as establishing a cumbersome system.  Mauritius saw merit in a multilateral recourse as envisagedby Hungary, in light of the fact that the different weights of countries did not always make a bilateral
solution to a dispute the preferred one.  While the system to be established should initially be for
geographical indications for wines and spirits, its possible extension to other product areas should be
taken into account as well.
63. The representative of the European Communitie s wished to emphasize that nothing in his
delegation's proposal implied that the proposed system would be costly and not simple.  On the
contrary, his delegation had drafted its proposal bearing in mind that the proposed system would besimple and not costly.  However, he believed that the debate would benefit more from focusing on
questions as had been posed by the delegation of Australia.  He thanked Australia for these questions
and said that his delegation would respond in due course.
64. The representative of the Slovak Republic expressed his delegation's support for the
Hungarian proposal.  The Slovak Republic, as a sma ll country with little bargaining power, found this
proposal an appropriate tool.  His delegation was of the opinion that efficient opposition procedures
were the cornerstone of every multilateral system and such a system for the notification and
registration of geographical indications was not an exception.  The Slovak Republic had generally
supported the proposal from the European Communities and their member States, as it more fully
fulfilled the wording of Article 23.4 and met his delegation's expectations.  The establishment of aspecific arbitration system as proposed by Hung ary could supplement the EC proposal in a positive
manner.
65. The representative of the Czech Republic said that her delegation, as it had stated at previous
Council meetings, welcomed activities and steps which could contribute in a positive and constructive
manner to the Council's discussions on the issue of geographical indications.  Having carefullyexamined the proposals for the establishment of a multilateral system for the notification and
registration of geographical indications, from her delegation's point of view, only a registration
system could meet the requirements of Article 23.4 and not a system which merely allowed for the
notification of geographical indications.  The simple notification of geographical indications at the
international level with significant information could be useful but was insufficient, because it wouldnot have the necessary legal effects.  Notification of geographical indications could facilitate their
identification, but it would not enable their protection.  Bearing in mind that the register must be
useful for all Members, transparent and ensure legal certainty facilitating international trade, her
delegation supported the establishment of a non-discriminatory multilateral register of geographical
indications.  The proposal from the European Communities and their member States continued to be a
good basis for the creation of such a registration system.  However, the possibility of extending the
scope of the product coverage of registered geographical indications must be incorporated into it.  Shesaid that her delegation was of the view that an opposition procedure and clear arbitration provisions
were needed to complement the EC proposal for a multilateral register and that the Hungarian
proposal contained useful elements which needed to be discussed and clarified.  However, she
expressed concerns about the apparent limitation of the scope of the product coverage of the
Hungarian proposal.
66. The representative of New Zealand said that, like others, his delegation continued to believe
that the EC proposal, as supplemented by Hungar y, went beyond the mandate and scope of what was
envisaged by Article 23.4.  In this regard, he referred to New Zealand's contribution to the
Article 23.4 negotiations (IP/C/W/189) which noted that New Zealand preferred the collectiveIP/C/M/29
Page 18
proposal put forward by Canada, Chile, Japan and the United States (IP/C/W/133/Rev.1), as it more
fully accorded with the letter and intent of Article 23.4, as well as the fundamental principle contained
in Article 1 of the TRIPS Agreement that "Members shall be free to determine the appropriate method
of implementing the provisions of this Agreement within their own legal system and practice".  He
recognized that Hungary was trying to provide a mechanism by which a Member might be able to
secure effective protection for a geographical indication if it believed that another Member wasillegitimately using it.  However, his delegation believed that the DSU provided such protection
already and did not see a need for the creation of an additional process.  Turning to the call by India
for Members to start providing details as to why they supported certain proposals, with an eye on their
own national systems for the protection of geographical indications, he wished to draw the Indian
delegation's attention to New Zealand's paper, in particular paragraphs 15 to 18, which fully
highlighted the fact that the concepts on which the collective proposal built were consistent with and
mutually supportive of those which had shaped the development of New Zealand's system for theprotection of geographical indications.  He supported the comments made by Australia, Chile, Korea
and the United States on the scope of Article 23.4.  This provision did not envisage the creation of any
additional obligations for Members in terms of the multilateral registration and notification system.  It
should only "facilitate" the protection of geographical indications for wines and spirits and it was only
related to the wines and spirits "eligible for protec tion in those Members participating in the system".
It should not therefore require the participation of the membership as a whole.  Notwithstanding his
delegation's reservations about the proposal from Hungary and without prejudice to its position on the
registration and notification system itself, New Zealand found the ideas contained in paragraph 7 of
the Hungarian proposal to be particularly worthy of further discussion.  This paragraph proposed that,
when a geographical indication had been successfully challenged, "neither the challenging Membernor any third party should be under an obligation to provide protection for it".  In other words, in
those instances where two or more Members had similar or identical geographical indications, none of
them should be under an obligation to protect the other one(s).  This idea merited further
consideration.  Finally, he wished to note that the European Communities had endorsed the general
thrust of Hungary's proposal.  Did this mean that  the European Communities and their member States
would be happy to change the system they had proposed and which would allow the registration of
two identical geographical indications at the same  time without providing for the sort of opposition
procedure, in particular for third countries, in relation to the geographical indications for other
products that Hungary was proposing?
67. As regards the revised proposal from the European Communities and their member States
(document IP/C/W/107/Rev.1), the representative of Ne w Zealand said that its section A.1 stated that
"all Members may participate in the multilateral system of notification and registration by making a
voluntary declaration to the Secretariat" and had the appearance of calling for an entirely voluntary
system.  If this were the case, then a number of New Zealand's concerns about the EC proposal would
be alleviated.  However, section D.4 of the pr oposal showed that it was far from voluntary and
effectively nullified any notion of the system being voluntary.  According to this section, those
"Members who have not challenged, within 18 months , the registration of an individual geographical
indication […] shall not refuse its protection on the basis of Articles 22.1, 22.4 and 24.6 of the TRIPS
Agreement".  This applied to all Members, not just participating  Members, and would mean that
those Members not participating in the system could lose their rights under the TRIPS Agreement if
they did not challenge, within 18 months, the registration of any geographical indications that they
regarded as cutting across their trading interests.  Accordingly, it was fairly clear that the proposal by
the European Communities was not voluntary, because it would force all Members to review any
geographical indications that might be notified so as to ensure that they did not lose any of their rights
under the TRIPS Agreement.
68. The representative of Canada expressed support for the interventions made by the United
States, Australia, Chile, Korea and New Zealand on this matter.  Her delegation believed that
Article 23.4 called for the establishment of a multilateral system which would facilitate protection ofIP/C/M/29
Page 19
geographical indications, but also that such a system would not establish new and additional
protection for geographical indications or fail to respect national choices regarding implementation of
the TRIPS Agreement.  The system must not be burdensome or costly for those countries that wished
to participate in it.  It must be purely voluntary as well.  The proposal made by the European
Communities and their member States and supported by Hungary and other delegations went much
beyond what, in her delegation's view, was mandated.  It seemed clear that an additional process thatwould involve any dispute settlement system could only result in an additional burden for any country
that would be participating.
69. The representative of Argentina quoted paragraph 9 of the revised proposal from the
European Communities and their member States and emphasized that, for the reasons stated there, the
European Communities had, obviously, not proposed additional mechanisms for the settlement of
disputes.  Consequently, her delegation was puzzled by the fact that the European Communities were
now expressing the view that the Hungarian proposal would complement the proposal by the
European Communities and would like to know from the European Communities what had made
them change their mind.  Her delegation continued to endorse the joint proposal from Canada, Chile,
Japan and the United States, which was consistent with the spirit of Article 23.4.  The basic principles
of Article 23.4 were that the system to be established should facilitate the protection of geographical
indications;  that it should be a voluntary system;  and that it should not create an additional burden.As a preliminary comment to the Hungarian proposal , she said that having a special mechanism for
the resolution of disputes was obviously an additional obligation to those laid down in the TRIPS
Agreement.  She expressed support for the point made by Chile concerning the Lisbon Agreement.
70. The representative of Mexico said that her delegation had repeatedly stated that it was
interested in making progress as regards the establishment of a multilateral notification and
registration system for geographical indications for wines and spirits with a view to facilitating their
protection, in line with the mandate contained in Article 23.4 and the Singapore Ministerial
Declaration.  In this context, her delegation was grateful for the proposal from Hungary, which made
a substantial contribution to the debate.  Without prejudice to the comments her authorities might
have after careful study of the Hungarian proposal, she wished to convey some preliminary remarks.An opposition procedure for the resolution of disputes that might arise in relation to the inclusion of
given geographical indications in the register was one of the elements that could be part of the
architecture of this register.  Her delegation was open to studying the various proposals in this
direction, primarily because such an opposition procedure would serve to make sure that the
geographical indications which might be registered did indeed comply with the definition and criteriaunder the TRIPS Agreement and would be suitable for protection.  An opposition mechanism could
also help avoid disagreements which might arise regarding given geographical indications reaching
the DSB, even though this was a channel that should be left open and which should not be prejudged
by any opposition mechanism that might be established.  Such a mechanism should be as
uncomplicated as possible, so as not to create additional burdens for Members.  She noted that
Hungary had emphasized the multilateral nature and erga omnes  effect of its proposed procedure.
Mexico was of the view that this was necessary in order to avoid situations where a geographicalindication which had been successfully opposed by some Members had to be protected by other
Members who had not had a definite opposition.  Having said this, she was not in a position, at this
time, to give her delegation's specific views as to whether or not the arbitration system proposed by
Hungary was the most appropriate one;  more time was needed to study, in particular, the implications
of that proposal.  Other possible options for the resolution of disputes should not be discarded either,in particular if they were familiar in the WTO environment.  In this regard, for example, expert groups
had been mentioned.  She said that these prelimin ary remarks referred to a register with a limited
product coverage as the Council was mandated to establish, i.e. wines and spirits.  It was not possible
to discuss the characteristics of the register in the abstract, i.e. without connecting it to its product
coverage, nor having in mind an evolving coverage in the future.IP/C/M/29
Page 20
71. The representative of Turkey, providing preliminary comments on the Hungarian paper,
expressed support for the proposal from Hungary,  calling it a positive and useful contribution.
72. The representative of Egypt welcomed the Hungarian paper as a positive contribution to the
Council's work on geographical indications.  Since the paper had just been received, there had not yet
been sufficient time to reflect on it in detail;  his delegation would come back to the substance of the
proposal at the next meeting with any substantive comments it might have.
73. The representative of Switzerland thanked Hungary for its valuable contribution on an
opposition/challenge procedure which, in his delegation's view, was a central element of a multilateral
system for the notification and registration of geographical indications as envisaged in Article 23.4.
Switzerland had always been in favour of a strong multilateral system.  That was why his delegation
shared the view that, in order to be adequate and effective, such a multilateral registration system
needed an opposition procedure which was adapted to its particular requirements and apt for the
resolution of challenges to registration in an expeditious and efficient way.  The arbitration procedureas envisaged in paragraph 7 of the communication from Hungary was drafted with these goals in mind
and Switzerland could, therefore, fully support it.  As had been said by delegations, the Hungarian
paper was an excellent supplement to the proposal from the European Communities and their member
States.  Building upon the system proposed by the European Communities, the Hungarian paper filled
a gap in the revised proposal from the European Communities and their member States and went inthe direction of the initial proposal by the Europe an Communities.  In Switzerland's view, Article 23.4
aimed at a system which was more than a simple database.  Consequently, the system contained in the
joint proposal from Canada, Chile, Japan and the United States was not fully compatible with the
provisions of Article 23.4.  He agreed with those delegations that had stressed that only the proposal
from the European Communities and their member St ates combined with the valuable supplement
from Hungary had the legal effect necessary to facilitate the protection of geographical indications as
foreseen by Article 23.4.
74. The representative of Japan said that his delegation was still analysing the paper from
Hungary, but wished to provide some preliminary comments to it.  He associated his delegation with
the statements made by Australia, New Zealand and the United States.  In his delegation's view, themultilateral system to be negotiated under Article 23.4 should not create new obligations going
beyond the TRIPS Agreement.  The legal effect to be generated by multilateral registration should be
determined by the national law of each Member, in accordance with the provisions of the
TRIPS Agreement.  In fact, the additional protection was already provided by the national law of
Members.  The system should also be based on voluntary participation.  Moreover, the administrativeburden and cost imposed by the multilateral system should be minimal.  If an examination and
opposition system would be incorporated into the mu ltilateral system, such a system would, in his
delegations' view, be costly and burdensome.  Finally, regarding the expansion of covered products,
his delegation considered it appropriate, at this stage, to separate issues concerning the multilateral
system for the notification and registration of geographical indications from those relating to
expansion of the additional protection under the Agreement in respect of wines and spirits to other
products.  Members should first focus on a multilateral system as such for the products alreadycovered by Article 23.
75. The representative of Peru reiterated her delegation's view that it was necessary to advance
effectively in the negotiations on the establishment of a multilateral notification and registration
system for wines and spirits.  The system to be established should not be limited to a mere database.
It should indeed ensure the adequate additional protection for wines and spirits.  Therefore, anopposition procedure would be of assistance in consolidating the register and in limiting registration
to those geographical indications that met the requirements for protection.  Her delegation wished to
reflect further on the arbitration system suggested by Hungary, as it might have repercussions on theIP/C/M/29
Page 21
application of the WTO dispute settlement mechanism for the resolution of disputes concerning the
registration of geographical indications in the system to be established under Article 23.4.
76. The representative of Hungary was grateful for the comments his delegation's paper had
elicited and, in particular, for the many positive reactions and for the readiness expressed by others to
substantively discuss the issues raised.  He agreed with those delegations that had expressed the view
that the multilateral notification and registration system to be established should be set up in a waywhich would allow it to be extendable to geographical indications for products other than wines and
spirits.  As to the voluntary nature of the multilateral notification and registration system, he did not
believe that anything in his delegation's proposal called into question the right of any Member to
decide whether or not it would participate in the system.  As regards the comments that had been
made to the effect that the administrative burdens and costs of the system should be minimal, he
wished to emphasize that administrative burdens and costs were relative.  As stated in his delegation's
paper, Hungary was in favour of establishing an adequate and effective register and, in order to havesuch a system, a multilateral opposition/challenge procedure was necessary.  Without such a
procedure, the register would not facilitate the pr otection of geographical indications and would, in
fact, be rather empty;  thus, the costs associated with it would not be justified.  For comparison, he
referred to the proposal from the Cairns Group in the Committee on Agriculture calling for perfection
of the tariff rate quota administration systems and wondered what the reaction of the proponentswould be if other Members would argue that they were not ready to consider this proposal because of
the administrative burdens and costs that it entailed for Members.  Reacting to the comment made that
his delegation's proposal went beyond what was foreseen in Article 23.4 and that there was no need
for an opposition/challenge procedure in the system to be established under that provision, he agreed
with those delegations that had emphasized that Article 23.4 did not only call for a "notificationsystem" but also for a "registration system" in order to facilitate protection of geographical indications
in participating Members.  In his delegation's view, in the context of intellectual property rights,
registration was by definition something that was expected to produce some sort of legal effect and
was used in this sense in other parts of the TRIPS Agreement, most notably in the Section on
trademarks.  In the case of a multilateral register in accordance with paragraph D.3 of the revisedproposal from the European Communities and their member States, the legal effect of registration
would be the presumption of eligibility of protection in the Members participating in the proposed
system.  Precisely because of the legal effect that was inherent in the term "registration", and therefore
was intended by Article 23.4, Members should be given a possibility to challenge a notification, when
they believed that a notified geographical indication did not meet the relevant requirements in theTRIPS Agreement's Section on geographical indications and when the legal effects of registration
would hurt their legitimate interests.  If such a procedure would not be provided for, there would not
be an effective control over what was registered and an opportunity for abuse would be created.  In
the absence of an opposition/challenge procedure, the register would not be able to serve its objective,
as set out in Article 23.4, to facilitate the protection of covered geographical indications in Members,
because there would not be a procedure to sift out misleading geographical indications.  His
delegation, therefore, believed that an opposition/challenge procedure was an indispensable elementof the system to be set up.  Moreover, since the system of Article 23.4 was intended to be a
multilateral one, the opposition/challenge procedure should  also be of a multilateral character.  It was
important, as set out in his delegation's paper, to ensure that smaller WTO Members with limited
bilateral bargaining power enjoyed equal opportuniti es to represent their interests.  Equally, the
multilateral nature of an opposition/challenge procedure was to prevent the potential abuse of such aprocedure;  it should not be left to individual Members to decide whether or not an
opposition/challenge was justified.  He wondered whether New Zealand could explain how Hungary's
proposal would not be in accordance with Article 1 of the TRIPS Agreement.  As regards the
applicability of the DSU, he wondered whether Ne w Zealand could also explain how, in its view, the
DSU could be used in relation to the multilateral registration of a geographical indication notifiedunder the system to be set up under Article 23.4.  Hungary had looked into this question and, as stated
in his delegation's paper, had found that the applicability of the DSU was highly questionable.IP/C/M/29
Page 22
Finally, he referred to paragraph 10 of his delegation's paper, underscoring that Hungary was open to
any other solution that would take care of the substantive points that his delegation had raised.
77. The representative of Bolivia first wished to put on record that his delegation's full
participation in the Council's discussions on issues in which it had a great interest was seriously
hampered by the fact that too many important meetings were taking place at the same time for a small
delegation like his to be able to be present at all of  these continuously.  As an initial reaction to the
Hungarian paper, he wondered about the legal consequences of this proposal, apart from the political
incidence it might have.  Referring to the intervention of Argentina, he said that, in his delegation's
view, the question as to why not more than 19 countries had adhered to the Lisbon Agreement was a
relevant one.  He said that his authorities were looking into the possibility of such adherence,
assessing what would be the benefits and what the drawbacks.  His delegation was pleased to note that
several delegations, including those that were insisting on launching a new wide-ranging round of
negotiations, had stressed the need to avoid high costs and administrative burdens, in particular fordeveloping countries and small delegations like his.
78. The representative of Australia said that it was clear that there were different interpretations
of what Article 23.4 provided for.  She reiterated her delegation's view that the phrase "in order to
facilitate the protection of geographical indications for wines" was referring to a need to create a
register only in accordance with existing obligations.  To have a legal effect, which was implied byterminology such as "presumption of eligibility" in the proposal from the European Communities and
their member States, raised questions about the interrelationship between or with existing provisions
of the TRIPS Agreement and, in particular, those requiring Members to provide legal means to
prevent misuse of geographical indications.
79. The representative of New Zealand, responding to Hungary, said that he would just note that
he had not called into question the legality of the Hungarian proposal on its own.  What he had said
was that the proposal from the European Communities and their member States, as supplemented by
the Hungarian proposal, would appear to go beyond the mandate and scope of Article 23.4.
80. The representative of the European Communities, responding to questions posed regarding
paragraph D.4 of his delegation's revised proposal, said that the delegations in question read this
paragraph in accordance with how it had been drafted.  Nevertheless, he would like to reiterate and
underline that the system his delegation had proposed did have a voluntary character, but was also one
with legal effect.  The proposed system was by no means in contradiction with Article 23.4, since this
provision called for negotiations and negotiators could agree to whatever they wanted.
81. The representative of the United States said that the only conclusion he could draw from what
the European Communities had just said was that Members were, indeed, free to volunteer to
participate in the system proposed, but they were not free to avoid the obligations that that system
would place on them.  In other words, a Member was free not to get additional benefits, but was not
free not to avoid its obligations.
82. The Council took note of the statements made and agreed  to revert to the matter at its next
meeting.
H. IMPLEMENTATION OF ARTICLE 24.1
83. The Chairperson recalled that an initial discussion of this matter had taken place at the
Council's last meeting, when the Council had receiv ed a paper jointly sponsored by the delegations of
Bulgaria, the Czech Republic, Egypt, Iceland, India, Kenya, Liechtenstein, Pakistan, Slovenia,
Sri Lanka, Switzerland and Turkey, outlining the views of these delegations on the implementation of
Article 24.1, in particular in regard to the extension of additional protection for geographicalIP/C/M/29
Page 23
indications to products other than wines and spirits (IP/C/W/204/Rev.1).  He called for suggestions as
to how the work under this agenda item might be pursued.
84. The representative of Switzerland said that, in his delegation's view, there were three issues to
be negotiated under the built-in agenda concerning geographical indications:  firstly, the issue of the
register;  secondly, the issue of extension;  and thirdly, the review of the national legislation on the
protection of geographical indications.  As regards the issue of extension, the joint proposal containedin document IP/C/W/204/Rev.1, of which his delegation was a co-sponsor, presented three main
arguments as to why this issue was also part of the Council's work under the built-in agenda,
including Article 24.1.  In addition, he advanced some of the substantive arguments which
demonstrated why an extension of the additional protection stipulated in Article 23 to geographical
indications for products other than wines and spirits was needed in practice and why the current
discrimination of geographical indications for such  other products could not be justified any longer
and must therefore be remedied.  In this regard, he first wished to put the issue under discussion inhistorical perspective.  Since the Uruguay Round, the economic situation had been steadily
developing.  While, at that time, the focus in the discussions had been on an additional protection for
geographical indications for wines and spirits, no economic and objective reasons applied today for
treating geographical indications for certain products differently from those for other products as far
as the level of protection was concerned.  Since the adoption of the TRIPS Agreement, awareness ofthe need for extending such additional protection to products other than wines and spirits had
increased constantly throughout the world.  On the global market, geographical indications were
nowadays recognized as an invaluable marketing tool  in trade for any product.  When discussing the
issue of extension in the Council, Members should bear in mind that extension was in the interest of
each and every WTO Member.  This was a fact, as illustrated by Annex A of the Secretariat summarypaper of the responses received to the Checklist of Questions developed by the Council under
Article 24.2
4, which contained many examples of geographical indications for products other than
wines and spirits.  Members should also bear in  mind that extension was not a North/South issue.
Any country, whether developed, developing, least-developed or a transition economy, had products
which merited adequate and effective protection of their geographical indications.  It was important tonote in this connection that Article 24.4 to 24.9 of the TRIPS Agreement would continue to apply
when the protection of Article 23 would be extended to other products.  Another argument he
advanced was that the insufficient level of protec tion afforded by Article 22 of the TRIPS Agreement
and the unjustified distinction between two levels of protection for geographical indications resulted
in trade distortions.  At the root of GATT and WTO was the objective to avoid trade distortions andthe TRIPS Agreement had also developed from Members' desire to reduce trade distortions.  There
was no substantive justification for differential treatment of geographical indications depending on
whether they concerned wines, spirits or other products.  The risk of confusion between products
originating in a specific region and products using the same denomination but not having the qualities
derived from that specific region was important and such confusion was detrimental regardless of the
product involved, not just for wines and spirits.  The trade value of a geographical indication was
equally important for all products.  Systemic reasons derived from the system for the protection ofintellectual property rights also spoke against the application of two levels of protection differing
according to the product concerned.  Geographical indications were intellectual property rights
standing on the same footing as, for example, trademarks, patents or copyright.  In none of these other
areas of intellectual property a distinction or separation into two levels of protection according to
different categories of products existed.  The TRIPS Agreement did not do so either.  A requirementthat protection against the use of a geographical indication would only be available if this misled  the
public was an element of laws against unfair comp etition or consumer prot ection laws, but extraneous
to the concept of intellectual property protection.  Such requirements, as were incorporated in
Article 22.2 and 22.3 of the TRIPS Agreement, resulted in legal uncertainty regarding the protection
of individual geographical indications in different Members.  Whether the public was being misled by
                                                     
4 JOB(00)/5619 of 19 September 2000.IP/C/M/29
Page 24
the use of a geographical indication was a discretionary decision to be taken by courts and
administrative authorities when questions on the protection of geographical indications and the
enforcement of such protection were at stake.  The problem was that the legal and administrative
authorities of Members would interpret this di scretionary element of "misleading the public"
differently, resulting in inconsistent decisions between Members and legal uncertainty regarding the
protection of individual geographical indications.  Such legal uncertainty endangered and prejudicedthe good functioning of trade.  Finally, he announced that his delegation would submit another paper
on the issue of extension prior to the next meeting of the Council.
85. The representative of India first offered his delegation's complete and unconditional support
for the intervention of Switzerland.  His delegation ag reed that there were three interrelated issues in
the area of geographical indications as part of the built-in agenda:  the issue of the register;  the issue
of the extension of additional protection for geographical indications to products other than wines and
spirits;  and the issue of Article 24.2.  The issue of extension was not limited to Article 24.1;  therewere other reasons which gave grounds for discussing this issue, such as the TRIPS Council's 1996
annual report.  Having said that, he did not think that it was useful to concentrate on whether or not
there was a mandate and to be legalistic on this issue.  Like Switzerland, he would also like to address
some of the substantive reasons as to why his delegation believed hat the additional protection for
geographical indications should be extended to products other than wines and spirits.  It was not clearto his delegation that there were any specific qualities inherent in wines and spirits that would be
absent in other products which would make it imperative to have the additional protection for
geographical indications exclusively for wines and spirits.  This was merely a request for clarification;
his delegation did not question that such additional protection was available in respect of wines and
spirits.  His delegation saw a big difference between the protection offered in Article 22 and that inArticle 23.  Article 22 was applicable if products were falsely presented to the public as originating in
a particular territory.  Article 23, however, applied if the real origin of a wine or a spirit was indicated
together with a geographical indication of products of another territory;  if someone were to present a
wine, for example, as "Beaujolais made in the United States", Article 23 would not allow this person
to use the geographical indication "Beaujolais" in this way and thereby somehow give the impressionto the public that the wine in question was not very different from "Beaujolais", a wine geographical
indication from France.  Such protection was exactly what India needed in order for the problems to
be solved that had arisen in respect of "Basmati" rice.  Article 22 was inadequate in that respect
because, unlike Article 23, it did not protect inherent qualities that certain products had and which
were bestowed on these products due to their origin, i.e. products could never have these qualities ifthey did not have this origin.  This was the heart of the issue of extension.  His delegation found it
astonishing that some had argued that extension of the product coverage of Article 23 would result in
further trade restrictions.  Would this argument not  apply with respect to any intellectual property
right?  He would rather argue that more consumer choice would be available.  Products that resembled
to some extent other products could still be made and offered to the public, but in respect of a
particular product with a particular quality a geographical indication had to be allowed to indicate the
origin of the product in such a way that it did not confuse the consumer.  As provided for inArticle 22, the use of a geographical indication should not mislead the consumer, but it should not
confuse the consumer either, i.e. it should not take  away from the intrinsic trade value of the product.
Obviously, India was not seeking extension for the sake of extension only, but because it believed this
would be of advantage to its trade interests.  I ndia had a trade interest in extension of the product
coverage of Article 23, because there were products of Indian origin that would benefit fromprotection as his delegation understood to be the subject of Article 23 and because substantial trade
losses were suffered, whether notionally or in real terms, due to the lack of the additional protection
under Article 23 for these Indian products.
86. The representative of the European Communities said that his delegation had been
concentrating its efforts rather on the establishmen t of the notification and registration system to be
negotiated under Article 23.4 and had so far not been intervening in a detailed manner on theIP/C/M/29
Page 25
appropriateness of an extension of the additional protection under Article 23 to products other than
wines and spirits.  However, after having given this matter careful consideration, the European
Communities and their member States were in favour of extending this additional protection to
products other than wines and spirits.  The arguments advanced by Switzerland and India in this
regard, to which his delegation could agree to a large extent, were convincing.  Indeed, why would
wines and spirits be singled out?  For other products, there were also clear economic interests.  Therewas trade at stake and, indeed, there were also trade distortions resulting from the insufficient
protection granted by Article 22;  producers from the European Communities had also encountered
difficulties in jurisdictions of some other countries, for example regarding products such as "Parma
ham" or "Parmiggiano".  He referred to the contribution from Australia contained in
document IP/C/W/211, in particular where it described the background of the trade at stake with
regard to developing countries
5, and quoted:  "For developing economies and other economies which
rely relatively more for their well-being on the export of commodities such as agricultural productsand processed foods, there is a strong interest in  maintaining or increasing the added value for their
exports which is obtained through the distinctive and appealing presentation of the goods.  Given the
competitive pressures in the global marketplace, it is understandable that these economies should be
particularly concerned to see effective protection for the distinctive market profiles of their products,
so that their unique or distinguishing properties are communicated to the consumer in an informative
and appealing way.  Finding the appropriate balance for geographical indications – […] – is therefore
a significant trade issue, reflecting genuine trade interests."  In his delegation's view, this paragraph
spoke for itself.  On numerous occasions, he had he ard that, rightly or wrongly, developing countries
had the impression that for them, in the present circumstances, there was not yet much to gain from
the implementation of the TRIPS Agreement.  His delegation believed that, by making an extra effortfor providing this additional protection for products other than wines and spirits, a constructive
contribution to this debate could be made.
87. The representative of the Czech Republic said that the protection of intellectual property
rights had a long history before the Uruguay Round negotiations.  The principles addressing
trade-related aspects on which the TRIPS Agreement had been built had been recognized and definedat the multilateral level before the TRIPS Agreement.   Intellectual property rights comprised general
exclusive rights to prevent or authorize the reproduction, adaptation, use, sale, importation and other
forms of exploitation of the creation or innovation that was the subject of the right.  As a matter of
fact, in comparison with most intellectual property rights, which were mostly of limited duration after
which they fell in the public domain, only trademarks and geographical indications might subsistindefinitely.  By the conclusion of the TRIPS Agreement, undeniable progress had been made in the
international protection of geographical indications, meeting the interests of a great number of
countries in the promotion of their goods which we re fruits of their culture, know-how and their
unique blend of soil, water and climate.  The area of geographical indications had not been an easy
one to negotiate and Members were now being challenged concerning some remaining problems.  The
TRIPS Agreement laid down, as a general principle for the protection of geographical indications, not
to mislead consumers and to prevent unfair competition.  However, the level of protection forgeographical indications was not equal for all products whose characteristics were attributable to their
geographical origin and which for these reasons merited protection.  Under the TRIPS Agreement,
only producers of wines and spirits would have the advantage of the additional protection under
Article 23 for their geographical indications, which discriminated against producers of other products
than wines and spirits, for whom the protection of geographical indications was not enhanced.  As aconsequence, investments in production and marketing in respect of products other than wines and
spirits were not sufficiently protected.  However, the protection of geographical indications was of
fundamental importance for producers of traditional goods, which were particularly vulnerable to
imitation, counterfeiting and usurpation.  Therefore, consistent and long-term protection should be
available in a non-discriminatory manner for all producers of geographical indication products at the
                                                     
5 Document IP/C/W/211, p.3.IP/C/M/29
Page 26
international level, which could, in her delegation's view, only be ensured by an additional protection
of geographical indications as under Article 23 and, consequently, extension of the scope of this
provision to products other than wines and spirits.  Extension of the scope of this additional protection
for geographical indications could prevent, in a satisfactory manner, damages which some producers
suffered from false, abusive or confusing use of geographical indications on foreign markets.  Since
geographical indications were not necessarily always known to the public at large, the public was notalways necessarily deceived when such indicatio ns were used for products with another origin.
However, such indications were sufficiently known in the circles concerned (e.g. traders) and it was
of course not by mere chance that others were using these indications.  The use of such geographical
indications for products not having the characteristics attributable to geographical origin was
parasitical and therefore an unfair act even when no consumer deception was involved.  The
introduction of the concept of "additional protection of geographical indications" only for wines and
spirits was a significant departure from the principle of identical protection and legal treatment for allproducts as set out in the Paris Convention, the Madrid Agreement and the Lisbon Agreement.  The
inherently disadvantageous nature of such separate treatment in relation to products not enjoying such
additional protection created problems of objectively balancing the benefits accruing to Members
under the TRIPS Agreement.  Additional protection of geographical indications for other products
than wines and spirits would enable producers to protect their original and traditional products againstcounterfeiting and abusive use of traditional names within all Members without the burden of costs
for registration of trademarks and for enforcing rights.  Negative financial effects resulting from
trademark registration rules were eliminated only for the producers of wines and spirits, because
under Article 23 the translation of geographical indications into foreign languages was also protected.
The legitimate claim for ensuring the same advantage for producers of geographical indicationproducts other than wines and spirits was therefore clearly understandable.  Trademarks, collective
marks or trade names were good tools for the actual producers to help consumers to recognize and
choose the products they considered the best among those coming from a particular region and having
the same territorially defined conditions of production, but could not replace the geographical
indication for these products.  Bearing in mind that the right of using a geographical indicationbelonged to all producers within one particular geographical territory whose products fulfilled all
conditions of the protected geographical indication, in her delegation's opinion only the same level of
protection for all products - which implied extension of the scope of Article 23 - could ensure the
main goal of the protection for geographical indications, which was to reinforce the right - unlimited
in time - to use a geographical indication.  Article 22 provided for not misleading consumers as to thereal nature, quality and origin of the products.  However, this level of protection did not address
concerns of producers and did not provide protection for their investments.
88. The representative of Argentina referred to paragraph 99 of the minutes of the previous
meeting of the Council (document IP/C/M/28), whic h reflected an intervention by Argentina which
had not been worded in the way her delegation would have wanted it to be worded, in particular with
regard to a sentence in which it had wanted to express surprise about comments made calling for a
"pragmatic approach" and against "narrow or legalistic interpretations".  Correcting this situation, shesaid that her delegation had wanted to say:  "We do not share the tendency which has been seen in this
Council to force interpretations of Ministerial Declarations, Reports or the very provisions of the
Agreement, supported by insufficient legal and technical arguments.  This concerns us, particularly
when these interpretations come from countries whic h have greater responsibility in the multilateral
trading system and when the interpretative laxity or, put another way, the departure from strict legalinterpretation, is used in a selectively discriminatory fashion regarding the subjects under discussion."
89. She reiterated that Argentina's interpretation of Article 24.1 was that this provision concerned
negotiations which would have as their subject what was entailed in the specific reference to
Article 23, enhancing the protection given to wines and spirits.  Responding to the delegation of
Switzerland, which had said that the requirement of misleading the public established under Article 22caused legal uncertainty regarding the protection of geographical indications in the territory of givenIP/C/M/29
Page 27
Members, she wondered whether Switzerland believed that the reference in Article 23.3 to consumers
being misled in relation to homonymous indications also created legal uncertainty.  Argentina
gathered from what Switzerland was saying that extension of the additional protection for
geographical indications to products other than wines and spirits, which it was looking for under
Article 24.1, would render inoperative the provisions of Article 22.2, as they would have no reason to
exist.  How did Switzerland and its co-sponsors of the joint proposal conceive negotiations onextension as required by the Agreement?  For example, there was nothing in Article 22 which
indicated that its effect was subordinate to negotiations that supposedly were going to take place
under Article 24.1, as many alleged, to extend protection, i.e. there was nothing in the Agreement that
indicated that specific rules were transitional pending specific negotiations.  In paragraph 12 of their
proposal, Switzerland and its co-sponsors said that it would be illogical to limit the negotiating
mandate just to wines and spirits because these products already received additional protection under
Article 23 and that this would increase the imbalance in favour of these products.  Did this mean that,according to those delegations' interpretation, the protection given under Article 23 to wines and
spirits was a maximum standard of protection for wines and spirits?  And did those delegations
believe that, as a consequence, the status quo  should be maintained as at present?  Did they believe
that there was no possibility to improve protection for those products in the framework of the TRIPS
Agreement?  The representative of Switzerland had said that the possible increase in protection forproducts others than wines and spirits would be safeguarded through the exemptions provided in
Article 24;  and that, in any case, extension to other products of the additional protection granted
under Article 23 in respect of geographical indications for wines and spirits, would be covered by
these safeguards.  She wondered how this was comp atible with paragraph 12 of the joint proposal,
which said that negotiations required under Article 24.1 should cover not just additional protection ofgeographical indications, but also the mitigation of the exceptions to protection provided for in
Article 24.4 to 24.8.  Referring to paragraph 39 of Switzerland's Report to the TPRB for its upcoming
trade policy review (document WT/TPR/G/77/CHE), she said that the Swiss Government, describing
its position regarding a new round of multilateral trade negotiations, had stated that one of the main
topics for these negotiations should be the extension of the protection of geographical indications tofood products other than wines and spirits, as well as to specific industrial products.  She wondered
how this statement, which recognized an attempt to extend protection to food and industrial products
as part of a new round, was compatible with the proposal presented in document IP/C/W/204/Rev.1,
which said that the issue of extension of additional protection to products other than wines and spirits
was an integral part of the built-in agenda of the TRIPS Agreement.
90. The representative of Australia agreed with Switzerland that the issue of extension was not a
North/South issue.  Indeed, her delegation was of the view, that all Members had a shared interest in
examining the deeper policy issues behind the calls for extension of the additional protection of
Article 23 to products other than wines and spirits;  and a shared interest in coming to a collective
understanding about how it might be possible to work towards better geographical indication
protection rather than necessarily increased protection.  Another comment by Switzerland had been
that consumer deception was not an appropriate concept in the context of intellectual property.  Herdelegation found this a rather curious statement and she would just like to mention that the common
law concept of "passing off" had long been used as a means of protecting trademarks in common law
jurisdictions.  As regards India's question as to what was intrinsic to wines and spirits that justified
them having an additional level of protection, it was her understanding that the distinction in the
TRIPS Agreement was the result of a deal made between certain Members at the end of the UruguayRound, done in the political context that the conclusion of a broad round of multilateral trade
negotiations represented.  For Australia, this had been quite a concession at that time.  As regards the
paragraph from her delegation's paper contained in document IP/C/W/211 that the European
Communities had quoted, she wished to emphasize the terms "effective protection" in the second
sentence of that paragraph and "appropriate balance" in the third sentence.  It was precisely becauseher delegation recognized that this was a significant issue for many Members that her delegation wasIP/C/M/29
Page 28
contributing actively to this discussion, even though Australia was not a demandeur .  Australia
believed that the seriousness of the issue merited a serious discussion of the policy issues involved.
91. Continuing, she said that the Australian paper,  circulated at the last TRIPS Council meeting,
sought to give the debate about geographical indications the greater depth and inclusiveness that it
clearly needed.  Her delegation was encouraged to see that it had already been cited in other fora in
support of policy positions that differed from its own - which was evidence at least that Australia hadsucceeded in being more inclusive, even if it had not yet succeeded in convincing others of the merits
of its position.  More generally, she would suggest that the characterization of this issue as one that
neatly divided the TRIPS Council into two incompa tible camps was very likely to be misleading.  It
was inherently improbable that two clusters of delegations, within a Membership of some 140, had
two monolithic and sharply distinct sets of interests.  Advancing work on a collective understanding
on this issue would require to go more deeply into the issues than had been possible in the debate so
far.  What was creating a sense of division were widely differing working assumptions about theprospective benefits that would flow from changing TRIPS language in this area.  There was an
assumption on the part of some delegations that rewriting Article 23.1 to extend it to further industry
sectors would bring direct economic benefits - and presumably it was assumed also that these benefits
would significantly outweigh any losses.  On the basis both of Australia's practical experience, and of
economic and commercial developments in many WTO Members, it was its objective judgement thatthis was unlikely;  nor an analysis that reflected a particular Australian perspective.  What was
intended by the proposed rewriting of Article 23.1?  Was it assumed that extending its reach to further
product areas would in some way guarantee exclusive rights to control the use of a term once it had
been identified and claimed as a geographical indication?  To take the example in Australia's paper, if
Australia were to assert rights under this provision to "Orange" as a geographical indication in relation
to wine - would that override any other use of th is word - either to describe the content, aroma,
producer's surname, or colour of another product, or bona fide trademark use, or use of a similar
sounding word in a language other than English?  Would it deny others the right to use "Orange" as a
generic term?  She would hope not.  That would be an obviously unbalanced use of the intellectual
property system - to block honest traders from using a descriptive term, in good faith and in a manneralready well-established in the market, when there was no evidence that any consumer had been
deceived or misled as to the actual origin of the pr oduct.  If "Orange" were to be used in a way that
demonstrably caused deception or confusion, or in a way that amounted to unfair competition (in
terms of the Paris Convention), then her delegation would expect that some form of legal remedy
should be available.  But it would be improper to use this mechanism to assert exclusive rights overgeneric descriptive terms, and to interfere with legiti mate trade.  It might be different with a term such
as "Coonawarra", which was unambiguously an Australian geographical indication with an exclusive
reference - if another producer used that term in isolation to characterize its product then it might
indeed mislead consumers, and legal remedies should be available in that case.  However, if
"Coonawarra" went the way of such terms as kiwifruit and chinaware, and became generally
descriptive of a type or style of product, then it would not be reasonable to interfere with legitimate
trade in those goods.
92. Commenting on the reference in the joint paper introduced by Switzerland to the form of
protection in Article 23.1 as "absolute" protection, she said that any sort of "absolute" or unqualified
exclusive right should be approached by policymakers with real caution - especially if terms with
potentially multiple signification and commercial use were to be claimed to have one single
acceptable application.  Expectations that the honest use of certain terms - where there was no director indirect misrepresentation and no misleading conduct - could be circumscribed or banned, were
unlikely to be sustainable.  This could lead to  a genuine imbalance, conflicting with the very
objectives of the TRIPS Agreement, which required a balance of rights and obligations.  It was
interesting that this debate should emerge at a time when many countries were looking to diversify
their traditional economic and export bases, and were looking to the creation of higher-value nicheproducts rather than relying on the production of raw commodities.  In many cases, this called for theIP/C/M/29
Page 29
more effective identification and promotion of distinctive regional identities - a point discussed in her
delegation's issues paper.  For Australia's neighbour Papua New Guinea, for instance, this entailed
gaining greater recognition for its distinctive Highland coffees such as Sigri and Arona.  At the same
time, many developing countries were successfully moving into new areas of production, such as
dairy products, horticulture, processed foods and beverages such as beer, which were directly targeted
by proposals to restrict the use of descriptive terms.  "Pilsener" beer, which was one of the termsunder consideration, was produced in many countries.  Dairy products such as feta and parmesan
cheese were also widely produced internationally, and were important growth industries in developing
countries with considerable export potential.  To remove legitimate descriptive terms would be a
constraint on trade, just as it would be to deny coffee growers the right to refer to arabica varieties on
the basis that this term described the origin of the variety on the Arabian peninsula.  This raised the
question of whether attempts to rewrite TRIPS provisions threatened to cause problems rather than
resolve them.  For instance, in Australia, consumers benefited from a wide choice of dairy products.A popular product was feta cheese, which was variousl y marketed as Greek feta, Bulgarian feta and
Australian feta - possibly others as well - dependi ng on the country of origin.  Should these terms be
used in commerce in a misleading way, for instance,  to suggest that there were already legal remedies
available under trade practices legislation.  A recent consent order of the Australian Federal Court
under this legislation concerned labeling of Basmati rice falsely indicating to the consumer that it wasof Indian origin.  As the government consumer watchdog had observed in relation to this outcome
"some consumers believe Indian basmati rice to be superior to that grown in other countries and are
prepared to seek it out and pay a premium [...] many seek Indian-grown basmati rice over similar
strains grown elsewhere".  An effective enforcement mechanism was therefore available through
normal consumer protection provisions.  However, as the Secretariat summary paper on Article 24.2showed, some jurisdictions would not normally re cognize country names as geographical indications,
which raised questions about whether some important geographical terms would be protected.  For
instance, according to this view, Article 23.1 wo uld not permit Australia to restrain the use of
"Australian-style wine", a description that was increasingly common in some markets.  This raised
interesting issues about the varieties of feta cheese  that she had described earlier - would "Australia"
or "Bulgaria" be accepted for protection as a geographical indication relating to feta cheese?  Yet at
the same time, there was a debate about whether the term "feta" should itself be claimed as a
geographical indication - presumably, if that were so, under an expanded Article 23.1, it might
become forbidden for many current producers of feta to describe cheese even as feta-style.  It was
because of the risk of unintended consequences, and because of the need for caution when absolute orunqualified rights were being asserted in a manner that would restrain economic development and
impede legitimate trade, that her delegation had stress ed the urgent need for an objective review of the
actual nature and content of current national laws governing geographical indications.  In her
delegation's view, as a first step, the wide range of approaches that Members had taken in this area
should be respected, as Members applied agreed TRIPS standards in a way that conformed with their
legal tradition and economic profile.  Before claiming that there were great deficiencies in the way
geographical indications were protected under the national law of other Members, and that this couldonly be remedied through imposing absolute terms through revised treaty language, the wealth of
information that had been provided on national geographical indication systems, at the direct request
of other Members, should be looked at and considered with a view to the balancing of various
legitimate interests as her delegation had set out in its discussion paper.
93. She would also like to clarify her delegation's position on the nature of the mandate on the
TRIPS Council.  Above all, the structure and logic of the TRIPS Agreement stressed that review of
implementation - an objective, collective consideration of actual implementation of TRIPS
provisions - should precede any endeavour to amend or adjust TRIPS standards.  The risk that
renegotiations could be based on misconceptions about how TRIPS standards had been applied was a
sound practical justification for this approach.  The analysis in document IP/C/W/204/Rev.1suggested that the TRIPS Agreement had not one but two separate mandates for the TRIPS Council to
undertake negotiations on the extension of Article 23.1 protection to new product areas.  It seemedIP/C/M/29
Page 30
improbable that negotiators would have required the TRIPS Council to undertake two parallel
negotiations, under separate mandates, on the same topic.  The paper also suggested that the current
TRIPS text was unbalanced and had "imbalances" which were "not consistent with the spirit and basic
objectives of the TRIPS Agreement" - in other words, that the negotiators had concluded a text which
contradicted the objectives of the TRIPS Agreement.  In fact, the balance was reflected in the fact that
Article 23.1 was the consequence of the demands of one negotiating party, which had been balancedthrough trade-offs on other issues, as negotiations necessarily had dictated.  Australia had not
proposed the approach taken in Article 23.1 but had accepted it as part of the package.  It would not
maintain the existing balance to create absolute ri ghts in other areas as well.  What then were the
mandates?  Article 24.1 unquestionably concerned "individual geographical indications" - it did not
concern entire product sectors or entire industries.  It related to specific negotiations on the legal
status of individual terms.  Further, these were  terms which were already protected under Article 23.
Why was there no mention of the TRIPS Council in Article 24.1, unlike every other provisionrequiring action on the part of this body?  Quite possibly, it was because it was recognized that it was
unworkable and inappropriate for negotiations to be undertaken in this body over the status of
individual intellectual property rights with effect in all WTO Members.  In this body, it was not the
universal validity of a claimed single trademark, or a claimed single patent, that was negotiated, but
agreed rules under which individual Members exercised their sovereign right to accept or refuse aclaimed intellectual property right.  It was unlikel y that a single word, which might be a geographical
indication in one country (take the example of "Orange") could be successfully determined to have
exactly the same primary signification to consumers in all other Members.  Nonetheless, there were
prospects for reaching a bilateral or multilateral agreement in other ways - for instance, one country
might agree to accept Australia's claim that "Orange" was a geographical indication for wine, eventhough "Orange" had been used by some traders as a descriptive term, or had already been registered
or used as a trademark.  This would involve waiving the entitlement under Article 24 (the "provisions
of paragraphs 4 to 8 below" referred to in this Ar ticle) to apply balancing safeguards against absolute
geographical indication rights.  Page 134 of Gervais's authoritative text on the TRIPS Agreement
clearly confirmed this interpretation.  This approach to Article 24.1 was hardly more attractive from apolicy perspective, in that it entailed negotiations consciously to remove balancing safeguards.
Nonetheless, Australia had engaged in such negotiati ons in a bilateral context.  Her delegation was not
pressing for one interpretation or another of Article 24.1 out of self interest or for a distinct motive - it
was because, in the end, all collective interests were served by respectful attention to the agreed
framework of rules Members were working with.  Under Article 24.2, there unquestionably was anobligation to consider what the practical effect of existing rules was - whatever Members chose to do
subsequently.  Her delegation had continued to stress the need to do this, and to respect the fact that
Members had provided detailed answers to the detailed questions of other Members, and not change
the rules before their actual effect had been considered.  The questions raised in Australia's issues
paper were therefore pressing ones, matters that should be considered before a compelling case could
be made for rewriting rules.  Ultimately, some fo rm of consensus would be necessary to move this
issue forward and the best form of consensus was one based on an informed collective understandingof the issues.  The current proposals simply raised the policy concerns, dilemmas and unintended
consequences that she had tried to outline in this intervention.
94. The representative of Sri Lanka said that the economic and political significance of
geographical indications had been growing in recent years, as the use of distinctive or quality signs
had promoted the demand for products of a specific geographical region.  Therefore, the TRIPSAgreement marked a major step forward in the multilateral protection of geographical denominations.
Geographical indications had long been considered to be exclusively of interest to products
originating in a limited number of countries, but this situation did not correspond to reality any longer.
This was mainly due to the coming into force of th e TRIPS Agreement.  Section 3 of Part II of the
TRIPS Agreement not only created obligations on the part of Members, but also presentedopportunities to obtain protection for their own geographical indications.  In this connection, she
stressed the importance of an extension of the additional protection under Article 23 to geographicalIP/C/M/29
Page 31
indications for products other than wines and spirits for her delegation.  Most countries were
beginning to realise only now what potential geographical indications commercially had and that, in
the past, this potential had often and wrongly been neglected.  She referred to the paper submitted by
Australia on Article 24.2 and stressed that, in particular for developing countries, the protection of
their geographical indications was a life and death situation.  The TRIPS Agreement went a long way
in trying to ensure the authenticity of indications on wines and spirits.  While setting standards for the
protection of geographical indications in respect of agricultural and other products generally, aimed at
preventing misleading of the public and unfair competition within the meaning of Article 10 bis of the
Paris Convention, in the case of wines and spirits the standards for protection were more stringent.
Article 23.1 of the TRIPS Agreement prevented the use of a geographical indication even where the
true origin of the wine or spirit was indicated.  It was clear that the aim was not only to protect the
consumer but to extend the protection to the purported legitimate user.  The implications of this
difference in approach between other products as opposed to wines and spirits were really felt byMembers.  The question remained whether this difference was justified.  Her delegation believed that
Article 24.1 was a permanent provision of the TRIPS Agreement.  This did not preclude an
interpretation that customary terms could permanently co-exist with corresponding geographical
indications.  Her delegation did not believe, therefore, that the arguments made to the effect that the
provisions of Article 23 were a compromise made in the context of broad based Uruguay Roundnegotiations and reflected a careful balance struck as stipulated in Section 3, was in line with the spirit
of the TRIPS Agreement.  Since, at the WTO, Members were presumed to be making attempts to
achieve symmetries in the level of development of developed and developing countries, why were
countries like Sri Lanka compelled to raise the question as to why the TRIPS Agreement should not
address issues concerning the asymmetrical nature of provisions in the TRIPS Agreement, inparticular in the area of geographical indications.  Finally, she associated her delegation with views
expressed by Switzerland, India, the Czech Republic and the European Communities, in particular the
arguments put forward to justify why WTO Members should engage in negotiations to extend the
additional protection for geographical indications under Article 23 to products other than wines and
spirits.
95. The representative of the United States associated his delegation with the intervention made
by Australia.  As to the product coverage under Article 23, he did not think that anyone was arguing
as India had suggested that there was some inherent difference between wines, spirits and other
products that made other products ineligible for protection under Article 23.  With regard to the
reason for the different level of protection stipulated in this provision, he quoted from Daniel Gervais'analysis of the TRIPS Agreement:  "Negotiators accepted the demands of a number of
wine-producing participants in the Uruguay Round, notably the European Union, that wanted a higher
level of protection for wines and spirits than the standard applied to geographical indications in
general."  That was why the distinction existed.  Changing that equation would require negotiations.
His delegation did not feel that a mandate existed in the TRIPS Agreement to engage in such
negotiations.  Having said this, he would be happy to engage in discussions with a view to clarifying
what would be the implications of an extension.  However, the United States would negotiate thepossible extension of Article 23 to other geographical indications in the context of a new Round, if it
incorporated such a mandate.  As India had indicated, it was in fact seeking a trade advantage and
seeking trade advantages required negotiations, so that others who were similarly seeking a trade
advantage could engage in such negotiations.  It would be important, before deciding whether the
TRIPS Council needed a mandate to negotiate on the extension issue, to fully explore whether or notthe protection sought was actually necessary.  Some delegations had already indicated what some of
the implications of increasing the level of protection for other products might be.  He hoped that the
Council's discussions under Article 24.2 would gene rate a clear understanding of what protection was
currently being provided under the Agreement and how that protection might in fact, if fully
implemented, provide delegations the protection that they were interested in for the products underdiscussion.IP/C/M/29
Page 32
96. The representative of New Zealand did not agree with the statement by Switzerland that there
were three areas for discussion under Section 3 of Part II of the TRIPS Agreement, i.e. the multilateral
registration and notification system under Article 23.4, the review under Article 24.2, and Article 24.1
negotiations on the extension of protection accorded under Article 23.  While he had no problem with
the way Switzerland characterized th e first two areas, he could not agree that Article 24.1 established
that there would be negotiations to extend the range of products afforded protection under the special,additional protection of Article 23.  Some Members were suggesting to ignore the legal niceties of
Article 24.1, but this was simply not possible.  Th e WTO was, after all, a rules-based organization,
which was based on the rule of law.  Conflicts between Members could be the subject of dispute
settlement proceedings under the DSU, in which the law would be the prime focus for any panel or
the Appellate Body.  In his delegation's view, the calls of these Members tended to demean the TRIPS
Agreement.  The TRIPS Agreement being a fundamental part of the WTO Agreement and of equal
legal standing with all the other multilateral agreements that constituted the WTO Agreement, werethese Members asking us to start walking away from all other legal rights and obligations Members
had?  In his delegation's view, Article 24.1 confirmed that Members had agreed to enter into
(bilateral, plurilateral and multilateral) negotiations aimed at increasing the protection of individual
geographical indications for wines and spirits conferred under Article 23.  Contrary to the arguments
advanced by a number of other delegations, the focus of Article 24.1 was quite limited.  It did notencompass the possibility of extending the scope of products already covered by Article 23.
Article 24.1 was solely focused upon those cases where additional protection could be explored for
the use of such terms as "Chablis", "Burgundy " and "Champagne" - if they were not already
protected - that fell within the exception of Article 24.4, which concerned the right to continued use of
geographical indications.  It should also be noted that Article 24.1 had been used as the basis fornegotiations with the European Communities on the various wine agreements that it had been
negotiating with a range of Members.  And, there had never been the slightest suggestion that such
negotiations should extend beyond those products already covered by Article 23.  It should also be
noted that Switzerland appeared to have also been engaging in historical revisionism in its overview
of the history of Article 23.  Throughout the Ur uguay Round and since, his delegation had always
seen Article 23 as providing for additional protection on top of the general rule contained in
Article 22.  The reason why such special protection had developed was not because wines and spirits
had any inherent qualities that made them worthy of such special protection.  It was because, during
the Uruguay Round, Article 23 had been a compromise so as to provide the wine producing countries
in the European Union with special protection for wines and spirits.  Thus, any questions as to whywines and spirits deserved such special protection should be directed to these countries;  New Zealand
was not, nor ever would be, a demandeur  for such special protection.  His delegation agreed with
others who argued that there was no reason for the discrimination between wines and spirits and all
other products but, instead of wanting an extension of the protection afforded under Article 23,
perhaps Members needed to explore its deletion.  That would at least ensure that the general rule
contained in Article 22 was the only form of protection for all products.  In New Zealand's view,
Article 22 provided Members with more than enough protection for their respective geographicalindications and, when he heard others arguing that Article 22 was deficient, he was somewhat
dismayed that no specific examples of such deficiencies could be provided.  As had been obvious
from the various contributions received thus far, the whole area of geographical indications was an
incredibly complex one that could not be easily typecast as being an issue for, or even against,
developing, least-developed and even developed countries.  All needed to work together on the issuesin this area.
97. The representative of Mexico said that her de legation also wished to participate in these
discussions in a constructive way and try to go deeper into those issues of substance which seemed to
be stopping delegations from understanding each other.  As regards Article 24 and its relationship
with Article 23, she wished to make a number of observations and thus to reply to some of the pointsthat had been made in the joint proposal introduced by Switzerland.  She hoped thus to contribute
towards clarifying the doubts regarding the origin of these provisions and the context in which theyIP/C/M/29
Page 33
were to be seen.  Her delegation had also analysed the provisions in question from the perspective
their negotiating history.  As a result, her delegation saw clearly that Article 24 represented an
intrinsic balance as well as a balance with other provisions of Section 3 of Part II, in particular
Article 23.  Article 24 contained a balance between its different clauses, because it was aimed to
address, on the one hand, the concerns expressed by a number of delegations during the Uruguay
Round to the effect that the obligations to protect geographical indications, in particular thosereferring to wines and spirits, could affect what they considered as acquired rights at that time because
of the prior use that had been made of certain terms;  and, on the other hand, the wish by some other
delegations to avoid future recurrence of situations where use would be made of terms which would
impede the legitimate protection of geographical indications.  Thus, Article 24 included, on the one
hand, provisions on exceptions, i.e. paragraphs 4 to 8 of Article 24, and, on the other hand, a clause
providing for the possibility of entering into negotiations in the future with respect to given individual
geographical indications under Article 23 so as to improve their protection.  This clearly showed thatthe aim of these negotiations, which could take a bilateral or a multilateral form, referred to the
application of these exceptions in the light of the objective of Article 23.  In other words, these
exceptions might be subject to negotiations among the Members for the purpose of improving the
protection given to individual geographical indications of wines and spirits.  This historical
background did not leave room for other interpretations such as those advanced in support of calls forbroadening the scope of these negotiations.  Following the same rationale, Article 24 also represented
an equilibrium in relation to Article 23 as well as in relation to Article 22 to the extent that it imposed
exceptions on those two Articles.  Furthermore, two of the exceptions under Article 24 referred
specifically to wines and spirits.  Consequently, Article 23 could not be said to constitute an absolute
protection, i.e. a blank cheque;  neither did it repres ent an imbalance, when viewed in the context of
Section 3 of Part II as a whole.  The joint proposal introduced by Switzerland argued that the
reference to Article 23 in Article 24.1 did not relate to the products  contained in Article 23, but rather
addressed the additional protection  stipulated in Article 23.  In this connection, she quoted from a
study of these provisions
6:  "Some of the text forming Article 24 once again referred to engagements
specifically applicable to wines and spirits.  This is the case of Article 24, paragraph 1 and paragraph4."  Along the same lines, another scholar, Carlos Corr ea, in referring to Section 3 of Part II, had also
pointed out that only issues concerning geographical indications for wines and spirits were the subject
of an obligation for Members to continue to nego tiate with a view to strengthening the protection
granted.
7  Looking into the background of the TRIPS negotiations, it appeared quite clearly to her
delegation that the text and the context of the provisions in question did not leave room for any otherinterpretation, i.e. an extension of their product coverage was not provided for.  Neither was there
proof that, during the TRIPS negotiations, countries had insisted in the extension of Article 23 to
products other than wines and spirits.  The documentary evidence rather proved that there was very
little interest in this topic altogether, including on the part of Members who were now in favour of
such an extension;  little interest in particular on behalf of developing countries.  Even though the
situation might have changed since, the texts with which Members were working and according to
which Members were to pursue the debate were the result of negotiations and contained a negotiatedequilibrium;  any alteration in this situation required a mandate to do so and such a mandate had to be
established in a different context.  In other words, where the joint proposal introduced by Switzerland
said that the issue of extension was left open to be dealt with at a later date, it did not seem to reflect
correctly what had happened.  In a rules-based Organization like the WTO with its dispute settlement
mechanism, only the texts that had been negotiated could be lived by.  Her delegation agreed with the
                                                     
6 Horacio Rangel Ortiz (President of the International Association for the Advancement of Teaching
and Research in Intellectual Property), "Geographical In dications in recent treaty law in the Americas:  NAFTA,
Latin American Free Trade Agreements, Mercosur, the Andean Community and the Central American Protocol"at the WIPO Symposium on the International Protection of Geographical Indications in the Worldwide Context,Eger, Hungary, 24-25 October 1997.
7 Carlos Correa, "Acuerdo TRIPS, Régimen Intern acional de la Propiedad  Intelectual", Fundación
Centro de Estudios Políticos y Administrativos, Ediciones Ciudad Argentina, Buenos Aires, 1996, p.118.IP/C/M/29
Page 34
view that had been expressed that, from the debate, there appeared to be some confusion as to the
scope of the definition of geographical indications under the Agreement and the scope of the existing
obligations.  Discussing the summary paper on Article 24.2 prepared by the Secretariat would allow
delving into this.  Her delegation had also noted that there were many ideas as to what was precisely
the definition of subject-matter that formed the basis of geographical indication protection.  For the
benefit of all Members, it would be useful to clarify these matters.
98. Continuing, she said that, without prejudice to her delegation's position, there were also
economic aspects that to be considered before opening a broad discussion regarding the proposals to
improve or extend the current protection under Section 3 of Part II.  Those who advocated extension
had referred to the added value of geographical indications as well as to economic implications
arguing that geographical indications were important to them because geographical indications would
enable them to achieve better access to export markets and better ways of marketing their products.
These statements needed further thought and needed to be examined in the light of other economiccriteria, in order to enable an assessment of the economic incidence of increased protection and to see
whether it was worthwhile to grant it or not.  The effect of increased protection on competition in
markets was one of these aspects.  In a recent seminar, mention had been made of the restrictive
effects of the TRIPS Agreement on competition, as intellectual property rights granted certain
monopolies to their right holders.  This also applied in  the case of geographical indications.  Another
point to consider in this connection was that there was a great concentration of geographical
indications protected up to now in certain countries and regions and in respect of certain products.  It
also made a difference whether the issues involved were looked at from a producer's or a consumer's
point of view.  In other words, it also had to be taken into consideration what effect increased
protection might have on price levels, in particular for consumer countries.  In this regard, she quotedan article by Duran and Michalopoulos
8:  "It is not evident that all developing countries would benefit
from this extension.  This would depend on whether the country is a producer of the protected
geographical indication, for example India as producer of Basmati rice, or a major consumer of the
product.  Furthermore, there is the case of developing countries that may have a comparative
advantage in producing a like product more cheaply than the one protected by the geographicalindication.  Extending these rights may not be in the interest of these countries either."  Many of the
products envisaged for this possible extension were agricultural products and these products were
extremely important for many developing countrie s, not only as producers but also as consumers.
Moreover, improved or increased levels of protection did not automatically mean increased or
improved access to export markets.  There were a great number of other instruments and barriers thatwere in force at present for certain products in food and agricultural markets.  For all these reasons,
her delegation felt that there was a need to study most seriously the potential repercussions that an
extension of protection might have, given that its cost may exceed any potential benefits.  Perhaps, the
best way forward was to analyse how the geographical indication protection regimes had been
enforced in the national context up until now.  The summary paper on Article 24.2 prepared by the
Secretariat would be a most useful instrument in this regard.
99. The representative of Slovenia said that Slovenia was one of the co-sponsors of the joint
paper introduced by Switzerland.  The arguments contained in that paper expressed clearly his
delegation's position on the question of mandated negotiations, i.e. as required under the three built-in
agenda items concerning geographical indications:  Article 23.4, Article 24.1 and Article 24.2.
Moreover, the TRIPS Council had agreed that the revi ew of the application of the provisions of the
Section on geographical indications would permit inputs from delegations on the issue of scope of theadditional protection of Article 23.  However, due to the present difficulty of finding consensus on the
issue of the mandate, Slovenia was ready, for the time being, to put aside the question of
                                                     
8 Esperanza Durán and Constantine Michalopoulos, "Intellectual Property Rights and Developing
Countries in the WTO Millennium Round", Journal of World Intellectual Property, November 1999, Vol. 2,
No. 6, p.860.IP/C/M/29
Page 35
interpretation and more than willing to engage in a substantive discussion on coverage.  His
delegation attached great importance to the issue of extending the protection in respect of
geographical indications for products other than wines and spirits.  Such extension would benefit all
Members, whether developing or developed, and would not impose additional burdens on countries.
The were many benefits, as protection would be extended to goods originating in a Member's territory
or region therein, which had a given quality, reputation or other characteristic essentially attributableto their geographical region.  This was increasingly important as exporters often marketed their
products by incorporating geographical indications on their labels and in their brands so as to make
them better identifiable and interesting to consum ers in international markets.  He also wished to
highlight the point that, if all countries upheld this principle, then they would all benefit from this
protection in overseas markets as well as their own domestic market.  Some argued that Article 22,
which provided for protection against misleading the public and unfair competition, granted sufficient
protection.  His delegation doubted the effectiveness of these provisions, as the phrase "misleading thepublic" could lead to legal uncertainty.  Defining and establishing what was "misleading" were
discretionary, and inconsistent decisions could become more frequent as more countries opened
themselves to trade.
100. The representative of Egypt associated his delegation with the interventions made by
Switzerland, India, the European Communities and Sri Lanka.
101. The representative of Romania reiterated her delegation's interest in the issue of geographical
indications, in particular in the extension of the additional protection under Article 23 of the TRIPS
Agreement to products other than wine and spirits.  It was obvious that Members were, at present, far
from a common view on the mandate provided under Article 24.1.  In her delegation's view,
negotiations for extension should be envisaged only after a clear common understanding of the legalframework for such negotiations had been agreed.  Romania supported the views already expressed by
other Members that this work could be facilitated it if was conducted in parallel to the work under
Article 24.2.  The review under this provision should ta ke place in a structured manner, allowing for a
better understanding of the substantive issues as well as Members' needs for extension of the
additional protection to products other than wines and spirits.
102. The representative of Hungary said that his delegation sympathized with many of the
convincing arguments advanced by Switzerland, India and other supporters of extension of the scope
of the product coverage of Article 23.  Hungary shared, in particular, the point that geographical
indications were priceless marketing tools on the global market.  As he had stated at previous
meetings of the Council, his delegation believed that geographical indications, by identifying goods asoriginating in a certain territory and ensuring the consumer of the presence of a given quality,
reputation or other characteristic of the good which was essentially attributable to this geographical
origin, were attributes of the goods themselves.  Hungary was convinced that geographical indications
had considerable potential for commercial use and could be assets for all countries and believed that
liberalization efforts, in particular, in the area of agriculture should be accompanied by the
improvement of geographical indications.  On the basis of the present discussion, and essentially since
the run-up to the Seattle Ministerial Conference, for his delegation the picture was clear.  Theextension of Article 23 protection to products other than wines and spirits was in the interest of a large
number of WTO Members from various regions of the world and at different levels of economic
development.  In addition, starting negotiations on the extension of the product coverage of Article 23
would be a clear step forward, i.e. a step in the direction of improving the TRIPS Agreement.  In other
words, this initiative was not a North/South issue, nor one that would aim at diminishing the standards
laid down in the TRIPS Agreement.  Against this background, he believed that the membership
should take a pragmatic approach, in the clearly expressed interest of a large number of Members.
Members should leave aside the question as to whether or not there was a mandate and should start
negotiations on the extension of Article 23 protection to products other than wines and spirits.
Reacting to a point made by New Zealand, that Article 22 protection sufficed, he said that, firstly,IP/C/M/29
Page 36
such an approach would diminish the standards la id down in the TRIPS Agreement and might be the
first step on a slippery slope, which his delegation would not want to take.  It  just had to be imagined
what could happen not only to other Sections of th e TRIPS Agreement but also to other Agreements,
for example the Agreement on Agriculture.  Secondly, there was a mandate under Article 23.4 to set
up a multilateral register for geographical indications for wines and spirits.  What would happen with
this obligation if the approach suggested by New Zealand were to be followed?
103. The representative of Mauritius said that extending the scope of Article 23 to products other
than wines and spirits was just a coherent step to be taken.  It was a coherent step based on what was
already in the Agreement.  Article 22.1 made clear that the provisions of the TRIPS Agreement
covered geographical indications for all goods.  However, it was the insufficient level of protection
provided by Article 22 which had led to the establishment of a higher level of protection for wines
and spirits.  Given that Article 22 already provided for the protection of geographical indications in
respect of all goods, her delegation believed that the intention, as directed by this principle, had beenthat goods other than wines and spirits should be covered and this was how it read the mandate in
Article 24.1.  Referring to India's explanation of why Article 22 provided insufficient protection, she
said that her delegation saw it differently.  If Article 22 had been adequate, there would have been no
need for Article 23.  Her delegation did not believe, indeed, that there was any justification for a
selective protection of products, the more so as the trade value of a geographical indication wasequally relevant for products other than wines and spirits.  It felt, therefore, that the higher level of
protection currently granted to wines and spirits should be extended to other products generally.
Moreover, her delegation believed that the only manner in which better protection could be provided
was by reinforcing such protection and not by diminishing it.  She would also like to note that one
level of protection for all products would certainly provide greater predictability for trade in theseproducts.  She was not certain that she had heard any responses to the question as to why wines and
spirits should be treated differently.  In fact, she believed that the United States had indicated that no
one was arguing that this was due to any intrinsic difference between these and other products.  The
justification that had been provided by many was that this had been part of a compromise.  Her
delegation saw this compromise as already indicated and as reflected in the mandate in Article 24.1.She noted, however, that some countries read this compromise differently.  Surely, the compromise
had been reached in the Green Room and many delegations had accepted it afterwards.  Maybe, in the
future, they would be more careful in doing so.  It would be regrettable if the compromise had to
interpreted as these countries read it, because basically this would be sending the message that
countries that had not been smart or prepared enough at the time to list their geographical indicationsshould not now be given the opportunity of protecting the products in question and should, indeed,
indulge in new negotiations to be able to achieve such protection.  She did not have the capacity
sometimes to respond to historical and legal argume nts, let alone to raise them.  She would like to
point out, though, that a country like hers was asked in the areas of agriculture and services to
liberalize and its response was that it did not think that it could actually do so in such a simple
manner, because it did not have the competitive capacity to survive in a liberalized world.  Realizing
that it had one or two geographical indications, which could provide it with a niche market for one ortwo small products, it was participating in the present debate in the hope that, maybe after all, it could
get some opportunities out of it.  Taking a strictly legal or historical approach to this issue would not
serve her country's purpose;  all needed to be constructive and help each other in this matter.
104. The representative of Turkey, as a co-sponsor of document IP/C/W/204/Rev.1, fully
associated his delegation with the interventions made by Switzerland, India, the European
Communities, the Czech Republic, Sri Lanka, Egypt, Hungary and Slovenia.  Members had been
engaged in an intensive discussion on the issue of geographical indications during the past month.
These discussions had also been supported by several written submissions, which had given Members
the opportunity to base the discussions on a more concrete basis.  He was grateful to all delegations
that had expressed themselves on the subject;  these contributions had rendered the discussions morefruitful.  The discussion had not been carried out solely in the TRIPS Council;  the issue had alsoIP/C/M/29
Page 37
appeared on the agendas of the General Council as well as the Committee on Agriculture.  Moreover,
a series of informal consultations had been conducted.  In this connection, he expressed his
appreciation to the Chairpersons of the General Council and the TRIPS Council for their efforts to
realize and sustain this process.  He also expressed his appreciation for the flexibility shown by some
delegations in this regard.  From the run-up to the Seattle Ministerial Conference in the autumn of
1999, and from the work on implementation issues in the General Council, one conclusion that couldbe drawn was that the issue of extension was an important one for several Members of different levels
of development, producing various kinds of product s, with diverse interests, having various trade
policies and all being producers and exporters of different products;  it would not be possible to
progress any further in the TRIPS Council without managing to find a compromise solution.  In case
of a failure to solve this issue in the TRIPS Council, there was a risk that the same might happen in
other WTO bodies, in particular the General Council and the Committee on Agriculture.  Therefore,
he called upon all Members to have a more flexible and constructive approach.  His delegation sawclear mandates in both Article 23.4 and Article 24.1 and wished to observe that some Members, who
refused to accept that there was a mandate for extension of protection to products other than wines
and spirits, interpreted the letter of these provisions too narrowly.  Reading these provisions together,
it should be noted that Article 23.4 was drafted in the future tense and Article 24.1 in the present tense
and that those interpreting the provisions narrowly should accept that the present preceded the future.Since questions with systemic ramifications were involved, the Council should start a substantial
discussion and negotiation process.  His delegation would support any initiative the Chairperson
might take to continue consultations on the issue and would be willing to take part in any such
consultations the Chairperson might consider relevant.
105. The representative of the European Communities said that his delegation was not a
demandeur  on the issue of extension, but could fully support the delegations that were.  It was clear
that many delegations who were advocating negotiations on this issue were ready to start such
negotiations.  In this connection, he wished to point out that, as far as the multilateral notification and
registration system that had to be negotiated under Article 23.4 was concerned, a real negotiation had
not yet started.  Moreover, had not attempts been made at Seattle to identify the need to revisit or,perhaps, update or clarify a number of agreements, including the TRIPS Agreement?  In the present
discussion, many complex examples had been give n, but complex examples were often quoted in
order to confuse rather than to clarify a debate.  He, therefore, appealed to the Chairperson to try to
ensure that the debate would be more focused on this particular issue.  If necessary, he could of course
also provide many examples illustrating how products originating in the European Communitiessuffered from lack of protection in other jurisdictions, but he was not sure that the authorities of the
trading partners of his delegation would appreciate all these details.  In conclusion, he said that there
was, indeed, a need for further discussion on the substance of the issue and that it would be important
for the Chairperson to look into the question as to how negotiations on it could be brought forward.
106. The representative of Canada said that, in her delegation's view, there was no mandate within
the TRIPS Agreement to negotiate enhanced protection as provided for in Article 23 for products
beyond wines and spirits.  Nevertheless, her delegation had appreciated the discussion of thequestions related to extending protection for geographical indications.  Some delegations appeared to
believe that there was a need to extend the protection of Article 23 to other products and had
explained why, in their view, Article 22 and other provisions in WTO agreements, such as rules of
origin, were not sufficient for them.  It had also been helpful to be reminded of the historical
significance of Article 23 and the various interpretations of leading academics on the reasons for thedifferent treatment of wines and spirits.
107. The Council took note of the statements made and agreed
 to revert to the matter at its next
meeting.IP/C/M/29
Page 38
I. REVIEW OF THE APPLICATION OF THE PROVISIONS OF THE SECTION ON GEOGRAPHICAL
INDICATIONS UNDER ARTICLE 24.2
108. The Chairperson recalled that, at its last meet ing, the Council had been informed that the
Secretariat had circulated a preliminary version of the paper that the Council had requested it to
prepare summarizing, on the basis of an agreed ou tline, the responses to the Checklist of Questions
(IP/C/13 and Add.1), in order to facilitate an understanding of the more detailed information that hadbeen provided in these responses (JOB(00)/5619).  Given that the data provided by Members in
response to the Checklist was of varying degrees of comprehensiveness and detail, the note had been
circulated in a preliminary form, in order to allow delegations with comments, corrections or
additional information about their national practices that they would like to see reflected in the note to
convey these to the Secretariat before a final version of the note would be prepared.  Delegations had
been asked to do so by the end of October 2000, so that the Secretariat could issue the final version
before the present meeting.  However, it seemed that this target date had been a little too tight, since,so far, only four of the 35 delegations in question had communicated their reactions to this request to
the Secretariat, namely Japan, Mexico, New Zealand and Switzerland.  The Secretariat would of
course duly take these into account when preparing the final version of the note, as it would also
reflect in the note the responses to the Checklist that the Council had received from Korea at the last
meeting.  He suggested that the period for dele gations to convey, in writing, any comments,
corrections or additional information to the Secretariat be extended until mid-January 2001, so as to
allow the Secretariat to issue the final version of th e note in advance of the next meeting.  In informal
consultations, it had also been agreed that Members would initiate a detailed review of the experience
and practice with the application of the provisions in the TRIPS Agreement on geographical
indications, on the basis of the main section headings of document JOB(00)/5619.
9  In this
connection, Members might also wish to address questions concerning the provisions of Section 3 of
Part II of the Agreement themselves, as suggested by Australia and New Zealand at the last meeting
(documents IP/C/W/205 and 211).  He recalled that these delegations had suggested that the Council
work through each of the provisions of Section 3 and review their operation and enforcement so that
all Members could get a better sense of the various regimes that Members had developed for theprotection of geographical indications;  and that Australia had also indicated a number of specific
questions that might be addressed in this connection.
109. The representative of Hungary, commenting on the paper by Australia contained in
document IP/C/W/211, first commended the delegation of Australia for the obviously great efforts
that had gone into the preparation of the submissio n.  He stressed Hungary's readiness to continue the
substantive, systematic review under Article 24.2 of the Agreement.  As the first sentence of
Article 24.2 made clear, the review was about the application of the provisions  of Section 3 of Part II
of the Agreement.  Therefore, the suggestions by  Australia that the Council for TRIPS, in the
framework of this review, should gauge the actual be nefits that had accrued under this Section of the
TRIPS Agreement and should, on the basis of this examination, discuss the policy aspects of
geographical indication protection, seemed to fall clearly outside of the intended scope of the review.
In other words, Hungary believed that, in line with the letter of Article 24.2, the review should
concentrate on the purely legal issues of geographical indication protection and the actual
implementation of the provisions of Section 3 of Part II by Members.  His delegation sympathized
with Australia's approach that, when establishing the appropriate level and form of intellectual
property protection, a balance should be struck among the various relevant interests;  at the national
level among the interests of inventors, authors, producers, consumers, etc.;  and at the multilaterallevel among WTO Members.  Hungary believed that this requirement was general and not unique to
geographical indications.  Therefore, the discussion about the creation of a balance concerning
benefits flowing from Section 3 of Part II of the TRIPS Agreement, in case there was a need for such
a discussion, should be put in a proper context and, in his delegation's view, would be much better
                                                     
9 See JOB(00)/6908 of 2 November 2000, Annex II.IP/C/M/29
Page 39
placed in the Article 71.1 review.  Furthermore, in the opinion of Hungary, it would not be productive
to examine well-known practical cases, such as the one referred to in point 4 of the Australian paper,
in the framework of the Article 24.2 review.  It would also be inappropriate to discuss actual and
unsolved problems that might be the subject of bilateral consultations between Members or even court
procedures.  Lastly, he would like to register his delegation's disagreement with the notion of
sequencing that was implicit in the paper from Aust ralia and more explicit in the contribution from
New Zealand contained in document IP/C/W/205, i.e. that the discussion of proposals for enhancing
protection of geographical indications within the TRIPS Agreement should follow the completion of
the review.  Nothing in Article 24.2 said that negotiations could not be started on the extension of
Article 23 protection parallel to conducting the review under that provision.  The likely time required
for successfully concluding such negotiations was much longer than the foreseeable time-span of the
review.  He would also like to point out that, according to the first sentence of Article 24.2, this
review was not a one-off exercise, but only the first of a series of reviews.
110. The representative of Australia said that her delegation had been most interested to hear that
those proposing to rewrite the binding TRIPS obligations on geographical indications - to create new
treaty language that all would have to explain to Ministers and legislators - had taken exception in
various ways to Australia's proposal on 24.2.  For exam ple, it had been suggested that it would not be
productive to discuss practical examples and even that it would be beyond the mandate of the TRIPSCouncil to consider the impact of implementation of the TRIPS Agreement.  The much-lamented
failure of the TRIPS Council to reach consensus on the demands by some to extend Article 23.1 level
protection to products other than wines and spirits coul d, possibly, be attributed to the fact that those
urging an immediate change of binding internatio nal rules seemed unprepared to explore the policy
basis and consider the implications of their demands.  Yet, those who were proposing acomprehensive informative study that could lay th e basis for consensus were admonished for being
obstructive.  Surely, for those making unilateral demands to impose new TRIPS obligations, there was
a responsibility to explore how the existing system worked;  explain the actual deficiencies they saw
in national legal systems that gave effect to TRIPS rules;  explain how their proposed amendments to
the TRIPS Agreement would yield sufficiently substantial and widely felt net benefits to be worthy ofthe treaty amendment process;  and indeed explain what the new obligations they were seeking to
impose would actually mean in terms of domestic law;  i.e. the kind of questions her delegation had
posed in its paper.  Anything less than this threatened to reduce the process of review to the
articulation of political slogans.  There had been resistance to explaining negotiating objectives in a
concrete way, with reference to specific geographical indications, even though it had to be assumedthat delegations had specific terms in mind that they wanted actively to prevent other Members from
using.  This was not an abstract exercise.  If, for example, the Czech Republic notified "Pilsener" as a
geographical indication of interest to it, was it seeking to engage Members in negotiations to compel
the breweries in many WTO Members to cease marketing pilsener-style beer?  If so, there was a need
for WTO Members to know what impact this woul d have on their industries.  This raised deeper
questions, for example:  would those Members, including developing countries, seeking to break into
new export markets in agricultural products an d processed foods benefit from the invention of
exclusive rights over terms which were widely used descriptively?  Was it a justifiable impediment to
legitimate trade to step in between a trader and a consumer and prevent the use of terms which both
parties perceived and understood as descriptive terms?  Australia had continued to encourage other
Members to engage in a comprehensive review of the TRIPS provisions under Article 24.2.  It was
not a policy priority or interest for Australia to dwell on this issue at all.  For her delegation, the
TRIPS Agreement locked in an important safeguard:  if a trader sought to misuse a geographical
indication so as to deceive or mislead the public, legal remedies must be provided.  Her delegation
believed that WTO Members would be doing their trade interests a much greater service if they were
to focus on how best to implement this vital safeguar d in actual practice, so that tangible benefits were
assured.  This would also be a more effective way of ensuring due respect and protection for valuablegeographical indications than any abstract debate conducted without even troubling to determine
whether a collective understanding existed on the terms used.IP/C/M/29
Page 40
111. In order to further clarify her delegation's thinking, she said, referring to suggestions made
that it was not productive to discuss specific examples, that Australia believed that it was highly
misleading to speak in generalities, precisely because expectations about what would result from this
process varied greatly.  Whatever one's view was of Article 24.1, it unquestionably required attention
to "individual geographical indications".  Consequently, those who were urging work on the basis of
Article 24.1 could hardly say that it was inappropriate to discuss "individual geographicalindications".  Her delegation's suggestions on "sequencing" had been challenged.  However, Australia
was not advocating that a review process should take precedence on legal or formal grounds;  it was
saying that it would lead to better outcomes for all.  Her delegation was suggesting it as a way of
cultivating consensus on substantive issues, in contrast to the process of exchanging views on pure
process or procedural issues.  Australia was interested in the suggestion from Switzerland that
Article 22 was unsatisfactory, even though it required rigorous legal remedies in the case of
misleading or deceptive misuse of geographical indications and other forms of unfair competition -the suggestion being that greater legal certainty would be achieved through the application of
Article 23.  However, this was to argue for the kind of absolute and unqualified form of protection
that should give pause to anyone concerned to see a balanced intellectual property system.  Absolute
protection of intellectual property rights for the sake of certainty as an end in itself was not practiced
elsewhere in the field of intellectual property, where important safeguards and fair use exceptionsapplied.  Trademarks under the TRIPS Agreement were not protected in absolute terms – the
Agreement required that there be "a likelihood of confusion" to be established for infringement to
occur, even though that was short of legal certainty.  Copyright was open to various forms of fair use
exceptions.  Patent law normally had provisions for prior use as a defence against infringement.
Absolute protection should not be an end in itself.
112. Her delegation would not comment in detail on the Secretariat summary paper at the present
meeting, since it was still studying the document.
113. The representative of India said that his delegation was still studying the summary paper
prepared by the Secretariat.  As regards the Australian paper, sharing Hungary's reaction he
underlined that the first sentence of Article 24.2 made it clear that the review was about theapplication of the provisions of Section 3 of Part II and that it would be counterproductive to examine
well-known practical cases.  He also disagreed with the notion of sequencing which was implicit in
the Australian paper and more explicit in the New Zealand paper.
114. The representative of the United States wished to explain why his delegation felt that products
did not necessarily need Article 23 level protection in order to be protected in the way some Members
sought, by providing just a few examples of non- US geographical indications which were protected
effectively in the United States consistently with the provisions of Article 22 of the TRIPS
Agreement.  Since at least 1953, the geographical indication "Roquefort" for cheese had been
protected as a certification mark in the United States and was controlled by the community of
Roquefort in France.  "Darjeeling" was a term iden tifying a blended tea containing at least 60 per cent
of tea originating in the Darjeeling region of India and meeting other specifications set forth by the
Tea Board of India, and had also enjoyed protection in the United States since at least 1991.  The TeaBoard of India had applied for and obtained this pr otection.  "Parma ham" and "Prosciutto di Parma"
were protected terms in the United States, both registered as certification marks by the Consorzio Del
Proscuitto Di Parma of Italy.  While registration as a certification mark was one means of
geographical indication protection offered by the United States, it was not the only means.  For
example, in 1998, at the request of the Cognac producers of France, the term "Cognac" had beenrecognized by the United States as a common-law - i.e. unregistered - certification mark for brandy
originating in the Cognac region of France.  His delegation believed that these examples, which
represented just a few of the many non-US geographical indications protected by full legal means in
the United States, demonstrated that effective protection for all goods was anticipated and provided byIP/C/M/29
Page 41
Article 22;  and that any concerns expressed by Members about failure to receive geographical
indication protection was truly a concern about failure to implement the requirements of Article 22.
115. Continuing, he said that he would like to make a number of observations based upon his
delegation's review of the Secretariat's summary of the responses to the Checklist of Questions, which
was a tremendously valuable document.  Unfortunately, the value of this paper was significantly
diminished by the absence of information from some Members, in particular certain Members whowere demandeurs  on the issue of geographical indications.  He would urge those Members to provide
as quickly as possible information on the systems they employed, for the benefit of the discussion on
this issue.  The first observation was that Table I of the Secretariat's summary paper confirmed that
there were a wide variety of means that Members used to enable interested parties to protect
geographical indications, as required under Articles 22.2 and 23.1.  In a number of cases, Members
employed more than one means to provide protection for geographical indications.  In fact, Table I
indicated that, like the United States, many Members provided geographical indication protection viaa trademark system.  In addition, some Members provided additional protection through specific
systems directed at geographical indications.  This variety of means of protection appeared to stem
from differing purposes that geographical indications served among different Members.  For some,
the purpose appeared to be to prevent deception, such as "passing off", and to protect consumers so
that they could be certain that the products that they bought were what they wanted.  Another purposeappeared to be to establish for a group of producers of a regional product an indication of source that
would distinguish their products from those of others not meeting their standards.  Yet another
purpose seemed to be to enable Member governments to ensure that standards established for
particular products were maintained.  This variation in purpose explained, in large part, why - unlike
the situation with respect to copyright, trademarks or patents - no particular means for establishing aright had been spelt out by the negotiators for this new area of intellectual property.  At the time of the
Uruguay Round, there was no multilateral agreement to which many of the GATT Members
belonged, such as the Berne Convention with re spect to copyright or the Paris Convention with
respect to patents and trademarks.  A troubling observation his delegation made from the summary
paper was that some Members might not yet be fully implementing the TRIPS Agreement withrespect to geographical indications.  This observation was taken with particular respect to those
Members employing special systems for the protection of geographical indications.  The Secretariat's
summary paper made clear that some Members did not appear to take into account even the most
fundamental provisions of the TRIPS Agreement, such as those on national treatment.  As an
example, the summary indicated that some Members did not extend "no less favorable treatment" toother Members' nationals, but rather imposed what they considered to be identical treatment.  Yet, this
resulted in the geographical indications of other Members' nationals not being protected under those
systems.  The summary paper candidly included Member submissions whose Checklist responses
indicated that national treatment was not available to the nationals of other WTO Members absent
those Members entering into a bilateral agreement.
116. The summary paper also included one Member's response noting that only geographical
names were considered to be geographical indications.  The summary showed, however, that mostMembers had indicated in their responses that a geographical indication need not be a place.  It
certainly would appear that Article 22.1 did not require that a term be a geographical name, but only
that it be an indication that identified a good as originating in a territory.  As regards the question as to
what was a "geographical indication", he referred to Article 22.1, according to which "geographical
indications" were "indications which identify a good as originating in the territory of a Member, or aregion or locality in that territory, where a given quality, reputation or other characteristic of the good
is essentially attributable to its geographical origin".  He noted that Article 22.1 made clear that not all
geographical terms were "geographical indications".  The TRIPS Agreement indicated clearly that
"quality", "reputation" or "other characteristics" were necessary to raise any indication with
geographical ties to the level of a "geographical indication".  It was plain from the summary that
Members were not uniform in their views of what "quality", "reputation" or "other characteristics"IP/C/M/29
Page 42
were necessary to establish that an indication was entitled to protection.  It occurred to his delegation
that WIPO might do some useful work fruitfully exploring the discussion of those issues.
117. The evidence in the Secretariat's summary paper of some Members' failure to implement
fundamental requirements of the TRIPS Agreement, such as national treatment, with respect to
geographical indications, suggested that those Members might not sufficiently appreciate the fact that
Articles 22 through 24 of the TRIPS Agreement were not intended to be read in isolation from the restof the TRIPS Agreement, and indeed could not be meaningfully read in isolation.  Some of the
responses from Members gave rise to questions as to whether all Members had understood that
geographical indications were defined by Article 1.2 of the TRIPS Agreement as intellectual property.
As intellectual property, he would note that geographical indications were subject to Part I and Part III
of the TRIPS Agreement.  For example, Article 42 required that "Members shall make available to
right holders civil judicial procedures concerning the enforcement of any intellectual property right
covered by" the Agreement.  Under Article 44, right holders must have the possibility of obtaininginjunctive relief, while under Article 45 it must be possible for right holders to receive damages for
infringement.  He raised all these points because some Members had expressed a desire to expand the
scope of the Article 23 to goods other than wines and spirits.  They suggested that expansion of scope
was necessary because geographical indications for other goods were not receiving adequate
protection.  As his delegation had noted, not all Members appeared to provide TRIPS-level protectionfor geographical indications.  For those who did appear to provide TRIPS-level protection, he
wondered what specific complaints had been lodged to support any claim that goods other than wines
and spirits did not receive full TRIPS-level protection.  He noted, for example, that Article 22.2
required Members to provide the legal means for interested parties to prevent misleading use of a
geographical indication or any use which constituted an act of unfair competition within the meaningof Article 10 bis of the Paris Convention.  Like many other Members whose responses had been
summarized in the Secretariat's paper, the United States used its trademark system as the primary
means for providing Article 22.2-level protection for geographical indications.  Under a trademark
system, interested parties did have the opportunity - at least in the case of the United States – to
oppose registration of a geographical indication or seek cancellation of it after it had been registered.As far as the geographical indication owner was concerned, the trademark (or certification or
collective mark) registration provided it with acce ss to border enforcement measures, such as the
ability to stop infringing goods from entering the country.  In addition, of course the geographical
indication owner could obtain injunctive relief from and damages for infringing use of its trademark
registration.  Therefore, it appeared to his delegation to be quite premature to attack the current TRIPSAgreement as inadequate for the task of protecting geographical indications in respect of products
other than wines and spirits.  In Members where the geographical indication provisions of the TRIPS
Agreement were fully in force, the United States expected that Members who were interested in
protection for goods other than wines and spirits might in fact already be able to obtain the protection
they were seeking.
118. The representative of Hungary believed that the delegation of Australia had misunderstood
his intervention.  He had not said that policy aspects of geographical indication protection should not
be discussed in the Council, nor that the benefits flowing from Section 3 of Part II or from possibly
improved protection for geographical indications coul d or should not be discussed in the Council.  All
he had done was to point out that the mandate in Article 24.2 was to have a series of reviews about the
application  of the provisions of Section 3 of Part II, the first of which was now being conducted.
Therefore, the suggestions by Australia that the Council for TRIPS, in the framework of this review,should gauge the actual benefits that had accrued under this Section of the TRIPS Agreement and
should, on the basis of this examination, discuss the policy aspects of geographical indication
protection, seemed to be clearly falling outside the mandate and the intended scope of the review.  He
had also made the point that the creation of a balance concerning benefits flowing from Section 3 of
Part II, if there was a need for such a discussion, should be put in a proper context and that theArticle 71.1 review might be such a context.  The policy implications could and perhaps should beIP/C/M/29
Page 43
discussed in the framework of the negotiations that his delegation hoped would be started on the
extension of the scope of Article 23.  All his delegation had wanted to do was to caution the Council
not to mix the two things, i.e. the mandated review  with the negotiations on the scope.  He had also
registered his delegation's disagreement with the notion of sequencing.  Finally, turning to the
Secretariat's summary paper, he said that his delegation was still examining this very useful
document.
119. The representative of New Zealand said that, on the question of the Article 24.2 review, his
delegation continued to believe that it was necessary  for the TRIPS Council to approach the review in
a structured manner so that all Members had an opportunity to consider the effectiveness of each  of
the provisions in question.  New Zealand had submitted a paper at the last Council meeting on the
Article 24.2 review and believed that the Secretariat's summary paper (JOB(00)/5619) was a most
useful contribution in this regard.  Given the sheer volume of information contained not only in the
Secretariat paper, but more generally in the various responses to the Checklist, he was not in aposition to offer any substantive comments at this meeting.  His delegation was still working its way
through all the material and would revert to this at the next meeting.  New Zealand looked forward to
a structured review process on this issue.
120. Turning to India's question as to why wines and spirits had been accorded special protection
on top of the protection already provided by Article 22, he reiterated the points that he made in thisregard under the previous agenda item.
10
121. Touching upon the question of "sequencing" which some Members were raising in relation to
New Zealand's paper on the Article 24.2 review, he said that this term had acquired a certain status
more generally in the WTO and he was not sure that his delegation's paper raised the sorts of
questions that some delegations were implying.  The paper simply noted that, until the Council hadreviewed Section 3 of Part II in a systematic and substantive way, it would be somewhat premature
for the Council to seriously consider any changes to Section 3.  Such an observation was fairly
sensible and realistic.  The paper did not, howev er, try to lay down a certain sequence for the
Article 24.2 review, the Article 23.4 negotiations on a multilateral registration and notification system
or even the Article 24.1 negotiations whatever they might be.
122. On the question of Article 24.1, New Zealand's paper was grounded in the language of the
TRIPS Agreement and, as a result, any idea of entering into negotiations aimed at extending the range
of products afforded protection under Article 23 was beyond the current language of the TRIPS
Agreement.  This was not a matter of "sequencing", but of complying with the language of the TRIPS
Agreement.
123. The representative of Australia said that she was not sure that her earlier comments had been
correctly understood.  In Australia's view, there was a need to look into the issues concerned in a deep
and serious way, taking into account the interests of consumers and producers in all Members as well
as the public interest;  and a need to look at whether there was effective protection.  Before moving on
and doing anything else, a better understanding was needed collectively whether there was in fact a
lack of adequate protection, i.e. where actual problems with the existing provisions existed.  The
reason for her delegation to mention specific examples had been to demonstrate that a number ofMembers did produce goods which came under a similar name.  They should not be using these terms
if there was a danger of misleading or deceiving consumers.  As was evident from the Secretariat's
summary paper, Australia had laws which had proved to be effective to remedy such situations.  In
her delegation's view, it would be helpful to examine this and other issues with the help of specific
examples.  The area of geographical indications was a new area of intellectual property law for many
                                                     
10 See paragraph 96 above.IP/C/M/29
Page 44
Members and an examination of the implementation of the provisions of the Agreement in this area
required the Council to look at the national im plementing legislation of a broad range of Members.
124. Responding to Hungary, she said that, in her delegation's view, the phrase "the application of
the provisions of this Section" in Article 24.2 raised issues about the practical effect of the treaty
language and, specifically, how Members had been applying the existing provisions.  Article 24.2 did
not call for superficially surveying national legislation, but for adding value and increasing Members'collective understanding about the nature of the provisions of the Agreement in this area by assessing
the benefits that Members, i.e. a broad range of Members, had accrued under these provisions.
Hungary's comments on Australia's paper seemed to  suggest that Hungary wished to avoid such a
discussion.  In her delegation's view, discussing specific examples was a useful means of revealing
important information concerning the application of the existing provisions.  Whilst Hungary had
correctly pointed out that the issue of an appropriate balance was one relevant to all categories of
intellectual property, in view of the calls under Article 24.1 for an extension of the scope of theArticle 23 level of protection, it was particularly pertinent to take the opportunity represented by the
review under Article 24.2 to examine the issue of bala nce more closely with respect to the provisions
on geographical indications.  In this regard, she wished to note that Article 24.1 was part of Section 3
of Part II and therefore fell within the scope of the Article 24.2 review.  Any suggestion to rewrite
TRIPS language on geographical indications which might upset the finely tuned balance of theexisting package of provisions needed to be examined from a serious policy perspective and the issues
raised in her delegation's paper were central to this.  On the issue of "sequencing", it might be true that
there was nothing specific in Article 24.2 prohibiting discussion of various issues to do with
geographical indications simultaneously;  however, it  seemed to Australia to be the most productive
way of using the Council's time to use the opportunity  that was now available to explore the important
policy issues raised in the area of geographical indications.
125. The representative of Japan wished to express his appreciation for the efforts made by the
Secretariat in the preparation of the summary of the responses to the Checklist of Questions.  In the
view of his delegation, it was important to ex amine how each Member was implementing the
provisions of Section 3 of Part II.  Information on the various ways of implementation would provide
a useful basis for the further exchange of views regarding the multilateral notification and registration
system to be established under Article 23.4 and in regard to a possible extension of the additional
protection under Article 23 to products other than wines and spirits.  Although his delegation took a
cautious position in regard to this proposed extension, it was willing to participate in the discussion.
Extension of protection could have a significant impact on business transactions in certain sectors.Therefore, Japan wished to examine it carefully.  In order to arrive at the best solution, various
options needed to be analysed.  Different Members had different ways to protect geographical
indications, judging from the Secretariat's summary paper and no particular way of protection should
be pre-empted.  The ongoing information gathering exercise based on the Checklist of Questions
should be completed as soon as possible by the contribution of those Members who had not yet
provided responses.  The outcome of the Checklist of Questions once completed would provide a
useful basis for a cross-examination of the proposed extension of additional protection to otherproduct areas as well as of the multilateral notification and registration system.
126. The representative of the European Communitie s said that his delegation appreciated the
efforts which the Chairperson had been and was undertaking in order to engage Members in a
constructive debate.  During the preceding discussions, i.e. under both the agenda item concerning
Article 23.4 and the one concerning Article 24.1, these efforts seemed to have borne fruit.  However,having heard the debate so far under the present agenda item, he had to express some concern with
some of the comments made.  Some delegations seemed to be suggesting that other delegations had
been unwilling to enter into serious policy discussions on proposals that had been tabled.  This was
not at all his understanding of the debate that had already taken place on geographical indications at
the present meeting.  In this connection, he wished to recall that the Swiss delegation had offered toIP/C/M/29
Page 45
present at the next meeting of the Council further arguments underlining the importance of their
proposal for additional protection to products other th an wines and spirits.  He hoped that a positive
spirit in the discussions could be maintained.
127. Responding to those delegations that had explained the protection granted in their
jurisdictions in respect of products originating from other jurisdictions, he did not deny that some
form of protection was being provided and that this protection might differ from the protectionprovided in the jurisdiction where the products originated.  However, there were a number of
examples where the protection granted to some of the products originating in the European
Communities and their right holders was far from adequate.  He would be prepared to provide more
details about the difficulties encountered and the weaknesses of the protection available in some
trading partners at the next opportunity.  He expressed reservations with regard to suggestions made
to bury the discussion with regard to the review of Article 24.2 in WIPO.
128. Turning to the summary paper prepared by th e Secretariat, he said that the debate on
geographical indications at the present meeting had shown that this excellent paper was of the utmost
importance and usefulness.  He hoped that, at future Council meetings, a discussion would take place
on the contents of this document.  The protection of geographical indications had been implemented
in different ways by WTO Members, through general commercial law, trademark law and sui generis
legislation for geographical indications and appellat ions of origin.  Section 3 of Part II of the
Agreement stipulated two types of protection, i.e. protection against unfair competition and protection
based on exclusive rights.  Some Members had used trademark law - i.e. the subject of Section 2 of
Part II of the Agreement - in order to implement the geographical indication provisions also,
presuming a formal parallelism between the two types of regimes.  In this regard, it was not entirely
clear to him how régimes based on trademark law would implement the definition of Article 22.1 of
the Agreement and, in particular, the specific elements of this provision requiring that the product
originated from a particular territory;  that it had given characteristics;  and that there was a link
between these characteristics and a particular geographical area.  Moreover, how would it be
controlled that these elements had been respected, e ither at the time of registration of the trademark or
of an infringement action;  and how would it be controlled that the condition was fulfilled that theproducts in question conformed with these elements in a consistent way so as to meet the expectations
of the consumer with regard to the products and the defined elements on the basis of which exclusive
protection had been accorded to their name?  These specifics showed the specificity of Section 3 of
Part II of the Agreement and why geographical indications had their own Section in the Agreement
and were not the subject of, for example, supple mentary provisions in Section 2 of Part II on
trademarks.  Another point concerned the conclusion s and elements that the Council could draw from
this document for its discussions on the establishment of a multilateral register for wines and spirits.
As could be observed from the responses to the Checklist summarized in the Secretariat paper, the
Members that had responded were already implementing the mandatory protection existing in
Article 23.  Therefore, surprise could be expressed about their difficulties with the establishment of a
register having the aim of providing shape to an obligation already foreseen, including in different
national systems.  As regards the summary paper itself, he would like to know why the Secretariat hadnot followed the agreed outline as well as the reas on for the use of new terminology, such as "special
protection" and "indication of geographical origin", which did not exist in the Agreement.  In some
respects, the summary paper reflected Community legislation inaccurately;  he would clarify this to
the Secretariat and give it his delegation's reading of its responses to the Checklist.
129. Commenting on section 5 of the paper from Australia (document IP/C/W/211), he said that,
as for trademarks, the circulation of products identified by geographical indications must correspond
to the common minimum criteria in order to avoid commercial distortions.  This was the general
philosophy of the TRIPS Agreement and of the defini tions of Article 16 for trademarks and Article 22
for geographical indications in particular.  These minimum standards were translated into national
law, which would ensure their practical application on a case-by-case basis according to their ownIP/C/M/29
Page 46
characteristics.  As for trademarks, the registration of a geographical indication established a
presumption of validity and facilitated protection in the case of imitation.  In addition, it facilitated
third parties' knowledge of their existence, including for enabling them to oppose registration or to
assert their specific rights, for example an earlier trademark, thus ensuring greater legal security.  The
role of public authorities in the protection of geographical indications strengthened the legal effect of
the protection of the consumer in respect of products that had to respect a number of quality criteriaand were not only to be identified as to their geographical origin.  However, this was a point in respect
of which the TRIPS Agreement provided an option to Members as, for example, Article 22.3 showed
in respect of the ex officio refusal of trademarks containing a geographical indication.  All possible
conflicts between geographical indications and trademarks, descriptive terms, homonyms, etc. were
already dealt with in a detailed manner by Articles 22.4, 23.3 and 24.4 to 24.8.  Such situations also
existed for trademarks, for example as regards conflicts between trademarks and personal names,
trade names or signs.  Yet, the TRIPS Agreement did not address these in a detailed manner;  theexceptions provision of Article 17 seemed to suffice for Members in this regard.  He wondered
whether Australia could further explain the concept of "first in time, first in right", which did not
appear anywhere in the Agreement;  industrial property rights were product-specific and subject to the
principle of territoriality.  Did this concept perhaps echo the principle of "first come, first served"
advanced by some in respect of Internet domain names?
130. The representative of Mexico, commenting in general terms on the Secretariat summary paper
which her delegation was still analysing it in detail, said that the document would be a useful
reference for the further work of the Council, sin ce it summarized the ample information provided by
Members regarding the application of Section 3 of Part II systematically and would allow the mandate
under Article 24.2 to be carried out in a structured manner.  The document gave a general, althoughnon-exhaustive picture of the current situation of the protection of geographical indications.  It would
be most useful if the Council would get informa tion from more Members regarding how Section 3 of
Part II was being applied in their territories so as  to have a more complete picture.  This would be
helpful in relation to the work under the various items on the Council's agenda concerning
geographical indications.  It was clear from the document that there was not a uniform approach in thearea of geographical indications, unlike in other areas of intellectual property such as patents and
trademarks.  Different legal means were being used by Members to ensure the protection of
geographical indications depending on their national regime.  As the summary paper clearly indicated,
protection of geographical indications might be provided by virtue of provisions protecting against
unfair competition, consumer protection, provisions concerning the registration of trademarks as wellas through food standards or standards applying to other types of products.  These differences in the
different legal instruments had considerable implications for issues such as criteria or conditions of
eligibility for protection or the right to use a geographical indication as well as its scope of protection
and the means of making this effective.  What had perhaps drawn her delegation's attention the most
was that this variety of approaches also brought with it a considerable variety in definitions.  This
seemed to show a significant amount of subjectivity  and confusion in the application of the definition
of Article 22.1 of the Agreement.  Similarly, the list of examples in Annex A of the summary paper
showed that some of the items mentioned were protected by geographical terms, such as
"Champagne", while in other cases the terms that appeared to be protected were composed of a
common name and a geographical name, for instance, "ham from X".  In other cases, protection was
given to product names, such as "viande de porc", i.e. pork meat.  This raised questions as to what
delegations were really referring to in terms of what was eligible for geographical indicationprotection and whether some of the matter that had actually been referred to by delegations would not
concern, for example, the area of rules of origin or th at of plant variety protection, rather than that of
geographical indications.  She believed, therefore, that the Council should have a more in-depth
review of what were the different elements involved in defining geographical indications, in order to
better understand what the discussion was about.  This would be particularly relevant in connectionwith the debate on the proposals for extending the product coverage of Article 23.IP/C/M/29
Page 47
131. The representative of Argentina said that, in her delegation's view, Article 24.2 as it appeared
in the Agreement responded to a reality at the time of the Uruguay Round negotiations and still valid,
namely the multiplicity of national systems of protection and the fact that there was no international
harmonization in this respect.  This fact led to the inclusion of a provision which established that it
was necessary to review Section 3 of Part II.  With respect to the review required under Article 24.2,
she agreed with New Zealand's approach advanced in its document on the matter, which highlightedthe principle of territoriality and the rôle of the national standards of the protecting country with
regard to what geographical indications were elig ible for protection under the Agreement.  On the
other hand, New Zealand had mentioned the need for discussions to be held in a structured manner
covering each and every one of the provisions of Sect ion 3 of Part II.  It had been a surprise to her
delegation that, in the debate on Article 24.1, it had appeared that some delegations which had, earlier
on, asked for a substantive debate now seemed to be  reluctant to examine how the obligations under
Articles 22 to 24 were being applied.  Her delegation agreed with those delegations that hadmentioned that the debate on geographical indications was not a North/South debate.  The doubts
expressed about extension of the product coverage of Article 23 came from different regions of the
world and from Members with different levels of development.  The arguments that had been put
forward in the debate on Article 24.1 as to why it would be necessary to extend the product coverage,
in particular those linking the extension issue to further liberalization in the area of agriculture, raisedthe question as to whether such an extension was actually perceived by some as a protectionist
instrument.  Many of the points made went beyond intellectual property considerations merely.  Solid
arguments had been made both in the debate under the various agenda items concerning geographical
indications at the present meeting regarding the history of the TRIPS negotiations.  Economic
arguments had been made regarding the trade impact of an extension of the product coverage ofArticle 23 could have, in particular, for developing countries;  however, many delegations which
supported the calls for such an extension had not mentioned any concrete benefits for, in particular,
developing countries and least-developed countries that would flow from extension, nor why
Article 22 type of protection would be insufficient.  In this connection, she looked forward to the
paper that had been announced by Switzerland at the present meeting during the discussions onArticle 24.1.
132. Continuing, she said that, if the Council would start analyzin g the Secretariat summary paper,
nothing but a complex discussion was to be expected.  The subject of geographical indications was
complex.  WIPO, in one of its publications, had explained that with the exception of industrial
designs, the protection of geographical indications was the most complex one among the categories ofintellectual property, with a large variety of concepts and relatively new in the framework of
international negotiations.  The Secretariat paper clearly demonstrated this.  As explained by Mexico,
there was no harmonization in definitions and Members had the flexibility permitted by the TRIPS
Agreement to establish their own mechanisms of protection.  In respect of common names, such as
"vin" or "viande de porc", her delegation was not sure what the eligibility criteria were to protect these
as geographical indications.  There would seem to be  a need for specification, particularly since, in
other languages, "wine" or "pig meat" could be freely used.  She wondered why Members had also
provided examples of geographical indications not yet under protection in their systems but still the
subject of pending applications.  As regards the concerns expressed by some delegations that Article
23 discriminated against certain products, she concurre d with what had been said by the United States
and New Zealand.  Agreeing to Article 23 had been a major concession for Argentina in the
negotiations of the Uruguay Round.  Argentina had had a systematic interest in the problem ofdiscrimination before, during and after the Uruguay Round.  Discrimination still existed in areas of
interest to Argentina.  The TRIPS Agreement was part of a balance in the framework that had resulted
from negotiations in which countries had won and lost at the same time.  She expressed support for
the document of New Zealand and reiterated her delegation's position that the Council did not have a
mandate, at present, for negotiations concerning any extension of the additional protection underArticle 23 to products other than wines and spirits.IP/C/M/29
Page 48
133. The representative of Australia said that she would respond to the question from the European
Communities after having consulted her authorities.  The discussions under the various agenda items
on geographical indications at the present meeting had been most constructive and useful in
advancing everyone's understanding of the provisions of Section 3 of Part II.  Her delegation also
looked forward to the paper announced by Switzerland during the discussions on Article 24.1.
134. The representative of New Zealand said that, in view of comments that had been made, he
wished to reiterate the point that his delegation had made earlier on, namely that the concept of
"sequencing" had taken on a life of its own in a whole range of WTO bodies in recent days, such as in
connection with the DSU review or the discussion s on implementation issues in the General Council.
His delegation was concerned that it now appeared to be intruding into other areas of the WTO's work
where it was not really that relevant.  The issue looked at now was the Article 24.2 review.  The
Council had agreed to conduct a review pursuant to Article 24.2.  There could be no disagreement
about this.  All his delegation was trying to do was to suggest a logical and reasonable way to goabout this review.
135. The representative of Bolivia said that the Secretariat summary paper allowed Members to see
that geographical indications were a subject of interest for many Members.  Bolivia was a member of
the Andean Community and, consequently, its legal regime for the protection of geographical
indications was governed by the relevant Andean  Community decisions including, in particular,
Decision No. 486 of the Commission of the Cartagena Agreement Establishing the Common
Industrial Property Regime, which would enter into force on 1 December 2000.  He wished to stress
the importance for his delegation of geographical indications, not just those for wines and spirits but
also those for other products, and its support for the joint paper that had been introduced by
Switzerland under the previous agenda item.  He would also like to leave on record that the extensionof the Article 23 type of protection to other product areas was an issue to be discussed within the
framework of the TRIPS Council, i.e. within th e framework of intellectual property.  For his
delegation, it would be difficult to establish a link between the issues under discussion in the TRIPS
Council and negotiations ongoing in other WTO bodies.
136. In response to a comment made during the inform al consultations that had been held on the
matter, the representative of the United States said that he did not want to leave Members with the
impression that the United States was asserting that a trademark based system was the only systemthat gave rise to TRIPS consistent protection for geographical indications.  What he had drawn the
attention to was that there was a full range of methods that Members employed to provide TRIPS
consistent protection.  His delegation's only concer n was that Members, whatever method they chose
to employ to protect geographical indications, ensured that the system employed provided all the
protection set forth in the TRIPS Agreement, both in  terms of Section 3 of Part II on geographical
indications and the Sections in Part III on enforcement.
137. The representative of Switzerland said that the Secretariat's summary paper created a valuable
basis for a catalogue of the various systems of protection put into place by Members which had
responded to the Council's Checklist of Questions and as such allowed for comparison among them.
In his delegation's view, the document provided a good picture of where national systems for theprotection of geographical indications differed  among Members, even though only 35 Members had
responded to the Checklist up to now.  There was a great diversity in systems of protection available
and in place, including as to the level of protection provided and the variety of terminology used.
Since the Secretariat paper summarized these systems in a systematic way, it was therefore not always
easy to understand a particular element of a particular system of protection referred to under aparticular heading without considering it in the context of a Member's system of protection as a
whole.  Consequently, it was often indispensable to consult the replies of Members to the Checklist on
which the summarized information had been based.  However, in any event, the document showed
how different the existing national protection systems were in practice.  In implementing Section 3 ofIP/C/M/29
Page 49
Part II of the TRIPS Agreement, some countries had incorporated different levels of protection, with a
higher level of protection for wines and spirits, while others had specified a higher level of protection
for all products either unconditionally or with certain conditions.  The delegations of India and the
Czech Republic had already stressed this point in their communications that had been circulated as
Job No. 4486 of 4 August 1997 and Job No. 5023 of 16 September 1997.  In various countries,
protection for geographical indications was availabl e under laws against unfair competition, laws for
consumer protection or trademark laws.  Ho wever, in his delegation's view, it would be
recommendable to accept geographical indications as the true intellectual property right they were and
to protect them by establishing a proper sui generis  intellectual property right.  The many differences
between Members' ways of protecting geographical indications as shown in the Secretariat's summary
and analysis as well as the complexity of these diverse systems had made his delegation realize how
important it was to set a uniform level of protection for geographical indications at a multilateral
level.  Various international agreements regarding geographical indications  (e.g. the Madrid
Agreement or the Lisbon Agreement) had been in existence for years, but none of these international
instruments taken individually or together had achieved the goal of ensuring a uniform and coherent
level of protection for all geographical indications which satisfied all interests.  Only by achieving this
goal could the lack of transparency and predictability be overcome and could it be ensured that right
holders could know or quickly ascertain to what protection they were actually entitled in each WTOMember.  His delegation therefore favoured a uniform and coherent level of protection in the TRIPS
Agreement, i.e. at the level actually granted for wines and spirits.
138. As regards the communications from Australia and New Zealand, his delegation considered
these welcome contributions to the work of the Council on the issue of geographical indications as a
whole.  He was pleased to see that there was a growing conviction that the protection of geographicalindications was an important issue.  The only crucial divergence of views seemed to be whether the
issue was part of the built-in agenda or not.  On the question of how to proceed in the discussion on
the extension issue, Switzerland shared the views expressed in both papers on the desirability of a
substantive and systematic review of the actual forms of implementation and enforcement of the
provisions of Section 3 of Part II of the TRIPS Agreement in Members' national laws.  Such a reviewwould enable a better understanding of the various regimes that Members had developed and
implemented for the protection of geographical indications.  However, such a review should not to be
a prerequisite for the TRIPS Council to address other issues mandated to the TRIPS Council under
Section 3 of Part II, such as the establishment of a multilateral register or the extension of additional
protection to geographical indications for products other than wines and spirits.  According to NewZealand's paper, it would be premature to address the issue of extension of protection prior to an
assessment of the actual disadvantages of the current provisions in respect of wines and spirits.  In
Switzerland's view, however, the extension of this protection to geographical indications for products
other than wines and spirits was of benefit to all Members.  Switzerland would therefore like to
request New Zealand, or any other Member, to  precisely pinpoint any present or expected
disadvantage originating from the current additional protection granted to geographical indications for
wines and spirits or from an extension of the latter to other products.  Switzerland did not share thenarrow reading of Article 24.1 by New Zealand and a few other delegations, which reduced the built-
in agenda work under this provision for a better protection of geographical indications solely to a few
specific geographical indications for wines and spirits, and considered it therefore necessary to
emphasise once more that such a reading, in its view, led to a limitation of the mandated negotiations
inconsistent with the spirit and objectives of Section 3 of Part II of the TRIPS Agreement.
139. The representative of Venezuela said that this subject should be dealt with in a balanced and
comprehensive way and in accordance with the different elements and mandates of Section 3 of
Part II of the TRIPS Agreement.  Venezuela had expressed the wish that negotiations for the adoption
of a multilateral system of notification and registration for geographical indications for wines and
spirits should be extended to other products.  Fundamentally, Venezuela was of the view this couldcontribute to the development objectives of many Members, in conformity with the Decision of theIP/C/M/29
Page 50
General Council in February 2000, under which, in the review process, the Agreement's impact on
development had to be taken into account.  Geographical indications stimulated investment and were
important for the strengthening and the development of small and medium-sized enterprises, in
particular handicraft industries, adding value to production through their prestige and reputation in
national and international markets.  Furthermore, geographical indications permitted the promotion
and protection of "autochthon" products and proc esses of production, which now risked being
extinguished;  and could contribute to the national and international renown of a specific region, thus
strengthening its touristic attraction.  The Government of Venezuela, through an institutional work
coordinated by the Ministry of Production and Trade, the Intellectual Property Office, the State
Government and other public and private organisms, had initiated important promotion activities
concerning geographical indications which had started to have important results.  Recently, the
denomination of origin of  "cacao de Chuao" had been registered and its publication included in the
Bulletin of Industrial Property N° 443 of the Servicio Autónomo de la Propiedad Industrial (Sapi) of
21 November 2000 .  Producers had been advised to constitute a "Regulatory Authority" for the
maintenance of the quality rules concerning the denomination "cacao de Chuao".  In addition, action
had been taken to achieve the acknowledgement of the denomination in the Andean Subregion and
Venezuela hoped to do the same at the international level.  A procedure concerning the establishment
of a denomination of origin for a spirit called "cocouy pecaya" was on-going and peach producersfrom a specific region in the center and north of Venezuela interested in this denomination of origin
had been contacted.  Studies had shown other agricultural and handicraft products for which
geographical indication protection would be useful.
140. The representative of Chile said that the delegation of Mexico had raised a number of the
points that his delegation wished to highlight too.  Basically, they focused on the content of the
summary paper prepared by the Secretariat, which was an extremely interesting document and, in his
delegation's view, established which should be the main tasks that the TRIPS Council should focus on
in the review of Article 24.2.  He felt that, on the basis of this document, there were basically three
elements that should give rise to an in-depth discussion aimed at clarifying the difficulties that the
Council had been grappling with lately.  Firstly, th ere was the concept of "geographical indication" as
defined by various countries.  This was also the subject of a study in WIPO's Standing Committee on
Trademarks, Industrial Designs and Geographical Indications.  The second element concerned the
different systems of protection, their scope and their enforcement.  The third element, which needed
to be looked into further, concerned the products and terms to be protected.  All these topics were
extremely rich and defined the broad range of products that countries wished to protect.  As Mexicohad put it, there were phrases that referred to a specific area but also absolutely common nouns, and
various combinations of these in-between.  There were general geographical indications like "made in
[specific country]" or terms such as a common phrase combined with the name of a place, for
example "apples from [given region]".  Sometimes, the geographical indication might be rather vague,
such as "apples from the north".  In other cases, a product was linked to a very specific and
circumscribed location.
141. In response to comments made with regard  to the Secretariat summary paper, the
representative of the Secretariat said that, while the structure of the summary paper did not follow
exactly the same order as the outline, the Secretariat considered it to be in line with the spirit of the
outline.  The Secretariat had not considered the outline to be a rigid straightjacket, provided that all
the issues identified in the outline would be covere d;  when dealing with a large body of material, to
some extent the material itself dictated the structure of logical presentation.  As regards terminology,he referred to paragraph 5 of the summary paper, which explained that the Secretariat had sought to
avoid the use of terms that occurred in the Agreement if these might be interpreted as implying that
the Secretariat was making statements about whether a Member was or was not in conformity with its
legal obligations.  For that reason, the summary paper used the term "indication of geographical
origin" and not "geographical indication", which term was the subject of a legal definition inArticle 22.1.  He recalled that the summary paper currently before the Council was a preliminaryIP/C/M/29
Page 51
version of the paper, for reasons explained in its paragraph 4, and that delegations had the opportunity
to indicate any factual corrections necessary.  Of course, as pointed out in paragraph 6 of the summary
paper, the paper was not a substitute for the information provided by Members in response to the
Checklist.  For anybody who wanted to get a picture of a particular country's system, the best place
was to go the responses to the Checklist from that country.
142. The Council took note of the statements made and agreed  to revert to the matter at its next
meeting.
J. REVIEW OF THE PROVISIONS OF ARTICLE 27.3(b)
143. The Chairperson said that, since its previous meeting, the Council had received new papers
from Brazil (document IP/C/W/228) and Japan (IP/C/W/236).  Following a request that the TRIPS
Council had received from the Special Session of the General Council concerned with implementation
matters and as Members had agreed during informal consultations that he had held on
31 October 200011, the TRIPS Council had met in informal session to discuss the issue of the
relationship between the TRIPS Agreement and the Convention on Biological Diversity (CBD).
144. The representative of Brazil, introducing his delegation's paper, said that the document
concerned Brazil's position regarding different elements of the review of Article 27.3(b) of the TRIPS
Agreement and that he would explain the context of the paper and highlight its main elements.  It was
a well-known fact to Members that Brazil attributed a high priority to the review of Article 27.3(b) of
the TRIPS Agreement.  After a number of TRIPS Council meetings, his delegation felt that it would
be useful to draft a paper that not only would elab orate Brazil's position on the different issues related
to the review of Article 27.3(b), but would also point to possible outcomes.  The document had been
drafted taking into account opinions from a broad range of governmental and non-governmental
representatives as well as views expressed by other Members.  However, the document should beconsidered as a first contribution of Brazil to the review of Article 27.3(b).  Taking into account the
developments in the review exercise, Brazil might provide further clarifications and complementary
information to the issues contained in its paper.  While referring to the minutes of the Council's
meeting of 21 March 2000, in particular the Chairperson's checklist of the main issues that had arisen
in the discussions concerning the review of Article 27.3(b) as reflected in paragraph 54 and footnote 5of document IP/C/M/26, he said that Brazil considered that the substantial discussions that had
occurred on the basis of that checklist in the course of the year had shown that all Members benefitted
from a more structured discussion.
145. Regarding the link between the provisions of Article 27.3(b) and development, Brazil wished
to reiterate the necessity of ensuring that the revi ew of Article 27.3(b) took into account the needs of
developing country Members.  On this issue, Brazil endorsed some of the views that India and the
African Group had already presented in their previous papers.  Given the cross-cutting nature of the
issue, it might be useful for Members to take stock of the development elements relating to each of the
other issues being taken up in the review.
                                                     
11 See JOB(00)/6908 of 2 November 2000, Annex II.IP/C/M/29
Page 52
146. As regards technical issues relating to patent protection under Article 27.3(b), Brazil believed
that Article 27.3(b) should preserve Members' flex ibility to exclude patents on plants and animals.
However, clarification was necessary to establish a more precise definition of terms such as
"micro-organisms", in order to determine the scope of patentability under Article 27.3(b), as that term
had different purposes according to whether it was used in a scientific, legal or market context.  Brazil
did not attempt to suggest a definition of "micro-o rganisms" in its paper, but pointed out that the
absence of such a definition could pose problems of legal uncertainty as regards the scope of
patentability under Article 27.3(b).  The meaning of the notion of "micro-organism" was far from
consensual among the scientific community.  As regards plants and animals, there were several
"borderline" categories of life forms that could either be classified as micro-organisms or as plants or
animals.  If the limits to the scope of patentability under Article 27.3(b) were not clarified, there could
be potential conflicts among Members that had different interpretations of the concept of "micro-
organisms".  This issue was also related to the dist inction between inventions and discoveries.  While
some Members had underlined that patentable micro-organisms should be new, involve an inventive
step and be capable of industrial application, there was evidence that patent offices in some developed
countries did not necessarily follow such guidelines.  Moreover, they tended to accept overly broad
patent claims in relation to genetic resources.  In his delegation's view, this would affect the interests
of developed countries themselves, as these patents would restrict access by research institutes to themicro-organisms.  Such patents would also be in conflict with the principles of the CBD, as its
Contracting Parties had sovereign rights over their in natura  genetic resources.
147. On technical issues relating to sui generis  protection for plant varieties, Brazil was of the
view that the review of Article 27.3(b) should pr eserve Members' flexibility to decide on the most
effective means of sui generis  protection for plant varieties.  Even though  Brazil was of the opinion
that the UPOV system could be considered as one of the references under the review of
Article 27.3(b), it did not follow that this system should be considered as the only one to fulfil the
criterion of effectiveness set out in Article 27.3(b).  International instruments such as UPOV 1978,
UPOV 1991, the FAO International Undertaking on Genetic Resources and the CBD as well as
national systems were useful references in respect of sui generis  systems for the protection of plant
varieties.
148. Brazil attached special importance to the issue of the relationship to the conservation and
sustainable use of genetic material.  His delegation believed that one of the crucial elements of the
review of Article 27.3(b) was to ensure that the TRIPS Agreement and the CBD were mutually
supportive.  In the absence of clear standards to define the scope of patentability of micro-organismsand a framework in the TRIPS Agreement that clarified the relationship of that Agreement with
Members' obligations under the CBD, implementation of the TRIPS Agreement could result in
conflicts with the CBD.  With a view to avoiding conflicts in the implementation of both instruments -
and, what was more, to ensure their mutually supportive relationship - Brazil considered that
amending Article 27.3(b) of the TRIPS Agreement to accommodate principles of the CBD would be a
necessary outcome of the review of that provision.  Failure to clarify this relationship could turn out to
be detrimental to both instruments.  His delegation proposed that Article 27.3(b) include therequirements of:  (a) the identification of the source of the genetic material;  (b) the related traditional
knowledge to obtain that material;  (c) evidence of fair and equitable benefit-sharing;  and
(d) evidence of prior informed consent from the Government or the indigenous community for the
exploitation of the subject-matter of the patent.  An interpretative note to Article 27.3(b) should also
be made in order to clarify that discoveries or naturally occurring material shall be excluded frompatentability.  Meeting these requirements would not be more burdensome than any other regular
requirement in the already existing patent application procedure.  Several countries had already
established such requirements in their national legislation as a means of implementing the CBD.  His
delegation's proposed amendment would have the clear benefit of providing a predictable
environment for governments, investors, traditiona l communities and researchers.  As a consequence,
research and development in biotechnology in developing countries would be encouraged, whichIP/C/M/29
Page 53
would be in line with the objectives of the TRIPS Agreement to promote technological innovation and
transfer and dissemination of technology.
149. Brazil also referred in its paper to the relationship with the concepts of traditional knowledge
and farmers' rights.  Protection of traditional knowledge should be seen from two complementary
perspectives.  On the one hand, the review of Articl e 27.3(b) should ensure that traditional knowledge
was not patented without due regard to the principles of prior informed consent and of fair andequitable benefit-sharing.  On the other hand, Brazil was open to discuss adequate ways of developing
a sui generis  system to protect traditional knowledge at the multilateral level.  In view of its link with
development issues, the review of Article 27.3(b) was an adequate exercise to discuss the
establishment of a sui generis  protection system.  However, the review of Article 27.3(b) was not the
only forum where the establishment of a sui generis  system to protect traditional knowledge could be
discussed.  Neither was Brazil suggesting at this stage that such a system was a necessary outcome of
the review.  There was a need, though, for a synergy between the TRIPS Council and  other fora such
as the CBD, WIPO, the FAO and UNCTAD.
150. The representative of Japan, introducing his delegation's paper, said that the document
addressed the six items listed in footnote 5 to paragraph 54 of document IP/C/M/26.  With regard to
the link between the provisions of Article 27.3(b ) and development, he said that "development"
involved a wide variety of issues, including the environment for attracting investments of particularcountries.  The question of patentable subject-matter represented only a small fraction of those issues.
In view of the fact that most of the technologies protected by intellectual property rights were in the
possession of the private sector, technologies would be transferred in the most efficient manner if they
were transferred through a market mechanism.  Adequate intellectual property protection of
technology was an important premise based on which the private sector concluded licensingagreements of its technology.  Without incentives to the suppliers of technology, technology transfer
would not be facilitated.  Appropriate intellectual property protection in turn would give large benefits
to recipients/users of technology, because they would eventually become the producers of subsequent
technology.  This would be of particular importance for recipients and users from developing
countries.  Japan was one of the countries that had made the transition from a developing to adeveloped country and, based on its own experience, Japan attached great importance and valued
adequate intellectual property protection.  In the late 1880s, Japan had started to introduce legislation
on the protection of intellectual property.  These early movements had resulted not only in a quick
catch-up by Japan with the advanced technology of developed countries, but also in promotion of
Japan's own research and development activities beyond the contemporary state-of-the-art technologyof developed nations.  In the 1920s, a Japanese inventor had gained a considerable royalty from a
company in a developed country for his invention.  Based on the royalty income, he had become an
entrepreneur and established a company that had since become a world-famous Japanese car
manufacturer.  His company had been one of the first in Japan to be founded based on royalty-income.
From early stages of development, many Japanese companies had started to introduce patented
technologies from developed countries.  In the 1950s and 60s particularly, many important
state-of-the-art technologies had been introduced in Japan from developed countries in exchange forlarge royalty payments.  However, the costs had paid off, because those technologies had boosted
industrial development and promoted research and development in Japan.  The delegation of Japan
was aware that its country's experience was not the only model to be followed.  Nevertheless, it hoped
that its experience might provide something useful for other Members.
151. With regard to technical issues relating to the distinction between micro-organisms and plants
and animals, the African Group had stated in its paper that incongruencies were raised by the artificial
distinction made between plants and animals, which might be excluded from patentability, and
micro-organisms which could not be excluded.   In response to the concerns relating to those
incongruencies, his delegation wished to point out that the notion of categorizing life forms into
plants, animals and micro-organisms was widely accepted in international conventions, including theIP/C/M/29
Page 54
CBD.  Also the general definition of "micro-organisms ", as seen in the dictionary, should suffice for
distinguishing plants and animals generally from micro-organisms for the purpose of the discussion in
the Council.  With regard to the distinction between inventions and discoveries, in response to
concerns expressed by the African Group and India, he said that, in Japan's patent practice, mere
discoveries not involving human intervention were not considered patentable subject-matter.  Merely
discovering naturally occurring things like an ore or natural phenomena were not consideredinventions.  If the subject-matter involved human intervention, such as isolation or purification, and if
the isolated or purified subject-matter was not of  previously recognized existence, then it was
regarded as an invention.  If naturally occu rring things such as chemical substances or
micro-organisms had, for the first time, been isolated artificially from their surroundings in nature,
then they were considered inventions.  A gene, if isolated and purified from the originating life form,
was also considered an invention as a particular kind of chemical substance.  In order to be patentable,
inventions also had to be new and, if an invention was known to the public, it would not be new andwas therefore unpatentable.  However, the mere fact that micro-organisms or a gene had existed in
nature did not mean that they had been known to the public.
152. With regard to technical issues of sui generis  protection for plant varieties,  Japan was of the
view that it was essential for agricultural devel opment to promote the breeding of new varieties with
excellent characteristics in productivity, quality, disease resistance and to protect them by plantbreeders' rights and/or patent rights.  A system for the protection of plant breeders under the UPOV
Convention would be an "effective sui generis  system" for the protection of plant varieties as set out
in Article 27.3(b) of the TRIPS Agreement.  The African Group had stated in its paper that the
protection of plant breeders' rights raised the following problems:  first, the relationship between the
protection of plant breeders' rights and the protection of farmers' rights;  and second, the exemptionallowing other breeders to use protected varieties for further breeding.  As for the first issue, under
Article 15(2) of the 1991 Act of the UPOV Convention, traditional farmers' practices could be
allowed within reasonable limits in each country.  In relation to the second issue, under Article 15(1)
of the 1991 Act of the UPOV Convention, it was free for others to use protected varieties for further
breeding in order to promote breeding.  In Japan's view, the system for protecting plant breeders'rights under the UPOV Convention maintained a proper balance between breeders' benefits and
farmers' rights.
153. With regard to ethical issues related to the patentability of life forms, Japan wished to note
that, in general, a patent did not guarantee the patent holder unfettered exploitation of the patented
invention.  A Member might legitimately enforce its national law to prohibit patentees from exploitingpatented inventions for various reasons, including ethical ones.  Therefore, there was no need to
exclude inventions from patentability in order to pr event their exploitation.  That was the reason why
Article 27.2 provided that Members could not exclude from patentability an invention merely because
the exploitation of such an invention was prohibited by their law.  The African Group had expressed
the following concerns:  firstly, that patents for research material might restrict further research;
secondly, that the cost of drugs kept escalating due to the required system of patent protection;  and
thirdly, that research increasingly targeted products for the affluent rather than for the general public
health.  Regarding the first point, the delegation of  Japan wished to refer to the WTO panel report on
Canada - Patent Protection of Pharmaceutical Products , which stated that use of a patented product
for scientific experimentation was one of the exceptions to patent rights under Article 30.  In addition,
consideration should also be given to the "other side of the coin", i.e. that patents over research
material would promote the R&D of research materi als.  As regards the question of drug prices in
relation to patent protection, while it was important to ensure adequate access to drugs, it was also
important, from the viewpoint of public health and nutrition, to promote the development of new
drugs.  Attention should also be drawn to the actual link between patents and drug prices.  It was
reported that the link between patents for drugs and their price was weak or in many cases
non-existent, due to price levels being determined by many other factors.  As regards the impact ofpatents on the allocation of research resources and funds, it could generally be said that, if the needsIP/C/M/29
Page 55
of society were greater, research satisfying these needs was more profitable.  Therefore, such
research, particularly that conducted by the private sector, would tend to target products that
addressed greater needs.  If private sector research was not targeted to particular products which
nevertheless needed research, then the public sector should step in to target such products through
funding or research.  India had raised the concern that patents could also have the danger of causing
economic motives to supersede ecological ones.  Japan wished to point out that the patent systemencouraged people to develop, among others, environmentally-sound technologies.  The patent system
was neutral to ecological concerns.  In response to the concern expressed by some Members that the
effects of patent rights would extend to original life forms when the invention was part of the life
form, he said that, under the patent practice of Japan, patent rights did not extend to the original life
form from which a patented gene was obtained.
154. Regarding the question of consistency betw een the TRIPS Agreement and the CBD, some
Members had insisted that there existed a necessity to harmonize the approach of the TRIPSAgreement with that of the CBD.  In Japan's view, the TRIPS Agreement and the CBD were mutually
non-exclusive.  Because of the totally different objectives and the flexibility of the provisions of the
two instruments, it would be unlikely that one woul d conflict with the other when implemented.  The
CBD required its Contracting Parties to take "legislative, administrative or policy measures as
appropriate" to implement its provisions.  There were a variety of ways to implement the provisionsof the CBD and Contracting Parties were permitted to take specific measures, as far as they deemed
them appropriate.  Japan had been fulfilling its obligations under the CBD concerning technology
transfer, mainly by means of education, training and joint R&D, conducted by both the public and
private sectors.  Japan had also been fulfilling its obligations in respect of benefit-sharing under the
CBD, mainly by means of governmental fundraising and governmental fund granting activities,through bilateral, regional and other international organizations.  Meanwhile, Japan had been fully
implementing the TRIPS Agreement as well.  Theref ore, it believed that the TRIPS Agreement and
the CBD could be implemented in a non-conflicting manner.  A certain degree of flexibility existed
for appropriately implementing the CBD.  For the mutual benefit of developing and developed
countries, it was desirable to explore, in the relevant international fora the most appropriate ways ofimplementing the CBD in a manner consistent with the TRIPS Agreement.
155. As regards the proposal, in the context of the CBD, to oblige Contracting Parties to require
patent applicants to disclose the origin of biological resources and associated traditional knowledge
used in inventions, Japan's view was that this would go beyond what the Contracting Parties were
obliged to do.  The CBD left the specific ways of implementation to the discretion of eachContracting Party.  The same applied to the proposal to oblige WTO Members to require patent
applicants to disclose the origin of biological resources used in inventions.  Such an obligation would
go beyond what Members were obliged to do under the TRIPS Agreement.  At the TRIPS Council
meeting in September 2000, India had suggested a connection between Article 29.1 of the TRIPS
Agreement and the proposed disclosure requirement of the origin of any biological resources used in
inventions.  By stating that a problem arose if patent offices did not seek such disclosure, India
seemed to be suggesting that Article 29.1 mandatorily required applicants to disclose the origin ofbiological resources.  Japan could not agree to that view.  The first part of Article 29.1 dealt with the
"enablement requirement".  It related to the disclosure requirement for the purpose of ensuring that a
disclosure was sufficient to enable a person skilled in art to "carry out" the invention disclosed in the
patent application.  It was not for the purpose of ensuring "access control" or "benefit-sharing" in
relation to biological resources.  Therefore, India's assertion was true only to the extent that theproposed requirement of disclosing the origin of any biological resources was sought in relation to the
"enablement requirement to carry out an invention".  On the other hand, if the proposed requirement
was not sought for the purpose of ensuring sufficient disclosure enabling a person skilled in the art to
"carry out" the invention, it would be an additional requirement and go beyond the scope of
Article 29.1.  Under the patent laws of most Members, the "enablement requirement" for "carryingout" an invention using biological material was ensured by means of the "depository system".  UnderIP/C/M/29
Page 56
Japan's Patent Law, if an invention wa s related to a micro-organism that was not easily accessible  by
a person skilled in the art, the patent applicant mu st deposit the micro-organism with an International
Depository Authority under the Budapest Treaty, or another appropriate depository authority, and
submit to the relevant patent office a certificate issued by the relevant depository authority.  This was
a measure to ensure that a person skilled in the art could "carry out" the invention based on the
description in the patent application together with the actual micro-organism that had been deposited.On the other hand, if a micro-organism was easily accessible by a person skilled in the art, the
applicant was not required to deposit the micro-organism, but simply required to describe how the
invention could be carried out by using the known and publicly accessible micro-organism.  Japan
took the view that this depository system was sufficient to satisfy the obligation concerning the
"enablement requirement" under Article 29.1 of the TRIPS Agreement and further requirements
would be beyond the obligations under that provisi on.  The same argument would apply not only to
biological resources but also to associated traditional knowledge.  To the extent that the proposedrequirements went beyond the obligations of the Members under Article 29.1, some Members might
instead wish to modify the TRIPS Agreement to introduce these new requirements.  However,
Members should exercise caution in this regard, since the relevant provisions struck a balance
between the rights and obligations of inventors, applicants and third parties and were the result of
long-term negotiations in the Uruguay Round.  Firstly, the new requirement would have an impact onthe balance described in Article 62.1, which stated that, while Members could require compliance
with procedures and formalities as a condition of th e acquisition of patents, such procedures had to be
reasonable  ones.  The question as to whether they were reasonable or not should be left to Members.
Keeping that in mind, Japan was of the view that requiring patent applicants to disclose the origin of
any biological resource and associated traditio nal knowledge could be unreasonably burdensome to
patent applicants and would upset the present balance.  Secondly, if a new, additional requirement
was sought only for particular inventions that used biological resources, its conformity with
Article 27.1 would need to be examined;  this provision stated that any requirement for obtaining
patents should be imposed, in relation to any invention, in an equal manner, regardless of the field of
technology.  It could be generally said that an invention that used a biological resource belonged toparticular types of technological fields such as biotechnology or pharmaceuticals.  In Japan's view, a
heavier burden should not be imposed on any partic ular field of invention.  The aforementioned
requirement for a "depository system" in respect of inventions that related to micro-organisms as had
been adopted by many Members would be cons istent with the Article 27.1 requirement of
non-discrimination;  this was because the depository system was aiming at compliance with the"enablement requirement" under Article 29.1 and that requirement applied equally to any invention in
any field of technology.
156. As regards the suggestion by some Members th at an enforcement mechanism at the WTO was
required to ensure benefit-sharing, authorisation of access to genetic material and contractual
agreements between developing countries and entities seeking their genetic material, Japan was of the
view that it seemed that the proposed introductio n of such new provisions regarding benefit-sharing
into the TRIPS Agreement went beyond the obligations under the CBD.  A general way ofbenefit-sharing would be a contractual arrang ement concluded between the country offering
biological resources and public and private entities that wished to access such resources.  Some
countries had proposed the introduction of an international obligation of monetary benefit-sharing
requiring patentees to pay royalty fees to the holders of biological materials if the patented invention
exploited these materials.  However, it had to be noted that exploitation of the same biologicalresource could result in inventions of varying economic value;  they could have a high value or no
value.  This fact demonstrated that the economic value of a patented invention was largely attributed
to the inventive efforts of the inventor as well as  the commercialisation efforts by the patent holder.
The economic value of an invention was not largely attributed to the biological resource as such .  Of
course, the value of the biological resource as such should be recognized and compensation should bepaid for its access and use.  For the sake of balancing the benefits of holders of biological resourcesIP/C/M/29
Page 57
and inventors/patentees, benefit-sharing should be  determined on mutually agreed terms and the
conditions of payment should be determined by the contract concluded at the time of access.
157. With regard to the relationship with the concepts of traditional knowledge and farmers' rights,
some Members had proposed to examine the possibility of protecting traditional knowledge and even
suggested the establishment of a new sui generis  system for the protection of traditional knowledge,
which would be different from a sui generis  system for the protection of plant varieties under
Article 27.3(b).  In Japan's view, if the Council were to discuss this issue, first a number of
preliminary questions had to be answered, in partic ular as to the definition of traditional knowledge
and of its ownership.  This exercise should be carried out by collecting and analysing examples.
Consideration should also be given to the question as to how traditional knowledge could be protected
under the existing framework of legal protection, for example, for patents, trade secrets and private
contracts.  Discussions on traditional knowledge should not prejudge the establishment of new
intellectual property systems for the protection of traditional knowledge.  WTO Members should alsoclosely follow future discussions at the "WIPO Intergovernmental Committee on Intellectual Property
and Genetic Resources, Traditional Knowledge and Folklore", which was due to begin operations in
the spring of 2001.  As regards the concerns that had been expressed that patent rights were being
obtained for subject-matter covered by traditional knowledge of third parties, he said that, under the
patent laws of many Members including his country, the prior art against which inventions had to beexamined as to whether they met the conditions fo r patentability was not only constituted by earlier
disclosures in writing, but also by what was already publicly known or had already been used
anywhere in the world.  Therefore, traditional knowledge, most of which travelled by word of mouth,
was recognized as prior art under the patent laws of many Members.  Even if a patent right was
mistakenly granted in respect of traditional knowledge, this could be revoked through post-grantopposition procedures.  As regards farmers' ri ghts as described in FAO Resolution 5/89 of
29 November 1989, this concept had been incorporated into a composite draft text in the framework
of the revision of the International Undertaking on Plant Genetic Resources in harmony with the
CBD.  According to Article 15.2 of the draft text, it  would be each Party's responsibility to realize
farmers' rights.  Japan supported this approach and was of the view that WTO Members shouldclosely follow the discussions on the revision of the International Undertaking at the FAO.
158. The representative of the European Communities said that his delegation had commissioned a
study by an independent consultant, whose report was now available and accessible on the website of
the Commission's Directorate General responsible for trade.  The study identified the linkages
between intellectual property rights and biodiversity-related issues.  It also contained comments on anumber of technical and financial assistance programmes launched either by the Commission or by
some of the member States of the European Communities and formulated a number of proposals for
action.  The study reflected the views of an independent consultant and was currently being examined
by the Commission together with the member States.  In the first section of the study, the consultant
identified the stakeholders in the debate on TRIPS and biodiversity, both at governmental and
intergovernmental levels;  these included, for example, the WTO, WIPO, the CBD, the FAO, UPOV,
transnational business associations such as UNICE, the International Chamber of Commerce,associations of pharmaceutical producers, associations of plant breeders, and non-business NGO's
such as World Wildlife Fund, Third World Network, Greenpeace, CIEL, etc.  For each of these
organizations, the report outlined their structure, membership, activities, position and influence.  The
second section of the study examined the interaction between the CBD and the TRIPS Agreement and
offered a systematic analysis of the often opposed views of the various stakeholders regarding thatrelationship.  It showed that, while the two treaties might not conflict in a legal sense, complex policy
conflicts could arise out of their existence and implementation.  These emerged from differing views
and concerns on social and economic issues.  The third section of the report identified initiatives
where the Commission and certain member States provided technical and financial assistance to
developing countries on intellectual property rights and biodiversity issues.  The last section containeda number of recommendations from the independent expert.  The study was believed to provide aIP/C/M/29
Page 58
useful basis for undertaking further work and a number of issues that had been raised in the study
certainly required further in-depth work, such as in  relation to a possible obligation to disclose the
origin of genetic resources.  The European Communities' also had the intention to organize a
workshop, probably during the first part of next year, in which governments and non-governmental
organizations could participate.  He expressed some concern regarding the multiplication of fora that
all dealt to a larger or lesser extent with th e relationship between the TRIPS Agreement and
biodiversity.  As regards possible further work on this matter, the European Communities believed
that it was important to make a distinction between the implementation of existing TRIPS
commitments and what possibly could be done in the context of a new round.  The relationship
between the CBD and the TRIPS Agreement had been addressed in the context of Article 27.3(b) at
previous meetings of the Council and what his dele gation had said in that connection at the meeting of
the Council in June 2000 remained valid.  In the view of the European Communities and their
member States, the CBD and the TRIPS Agreement were mutually supportive and neither of them rancounter to the objectives of the other.  The link between the two instruments did not fall within the
scope of the review of Article 27.3(b).
159. The European Communities and their member States were still studying the papers introduced
by Brazil and Japan.  He wished to note, however, that paragraph 21 of Brazil's paper indicated that
the TRIPS Agreement and the CBD should be mutually supportive and promote the sustainable use ofresources, and caution against the far-reaching proposals that had been made in the paper, in particular
as to an amendment of Article 27.3(b).  Such proposals raised an important procedural issue.  Given
that the European Communities and their member St ates were still in the process of examining
substantive issues in the area of Article 27.3(b), including with regard to the link between the CBD
and the TRIPS Agreement, it was premature for the European Communities and their member Statesto pronounce themselves on the possible need to look for any amendments of Article 27.3(b).  As
regards the paper tabled by Japan and the intervention made by Japan in introducing it, he wished to
underline that, in the view of Japan, the TRIPS Agreement and the CBD were mutually
non-exclusive.  It was striking that, after having  developed a number of most useful ideas and
concepts in the paper, Japan came to the conclu sion that there was no need to modify the TRIPS
Agreement.  With the papers submitted by various Members, the "Checklist of Points Made" prepared
by the Secretariat and circulated as document JOB(00)/7517, the documents from other
intergovernmental organizations and the interventions made by delegations over the last few months,
the Council had a significant amount of material before it, of which he hoped advantage could be
taken in order to take the debate further.
160. The representative of India agreed with the view that the Council had sufficient material
before it with all the documentation available.  He would come back to the Japanese intervention at a
later stage.  However, India's preliminary reaction was that it was extraordinary that Japan suggested
that India's suggestions would go beyond the CBD.  Japan had gone further and interpreted Article 29
in such a way that India's suggestion would go beyond Article 29 and was outside the scope of the
review of Article 27.3(b).  India held the view that  it was important to engage in the discussion with
an open mind instead of taking a legalistic approach.  The Brazilian paper built upon the submissionsthat India and the African Group had made earlier and upon comments that other countries had made
orally.  India fully shared the conclusions arrived at by Brazil.  What was useful about the Brazilian
paper was that it laid out the issues item by item, captured well the points that had been made by a
number of delegations under each of those items, and clearly pointed to the possible directions in
which the TRIPS Council could move.  For example, Brazil was correct in stating that the link with
development merited further discussion.  This was also an overarching issue, and in particular
relevant to sui generis  systems for the protection of plant varieties, inasmuch as developing countries
needed to bear in mind different policy prescriptions.  India agreed with Brazil's observation on the
need to preserve whatever flexibility there was in Article 27.3(b), as applied most importantly in
relation to sui generis  systems under Article 27.3(b).  Finally, India agreed with the suggestions that
Brazil had made regarding adjustments that were needed to Article 27.3(b).IP/C/M/29
Page 59
161. His delegation had noted the suggestion made by the United States that the term
"micro-organism" should be interpreted according to the principles of international law, i.e. according
to the dictionary meaning of the word.  In his delegation's view, the term "micro-organism" was
obviously intended to have a special meaning in th e context of patentability.  The examples in the
dictionary to explain the term, for example bacterium or virus, did not necessarily concern patentable
micro-organisms.  In order for a micro-organism to qualify as patentable, it had to embody aninvention and not merely be the subject of a discovery.  Therefore, India considered Article 31(4) of
the Vienna Convention on the Law of Treaties relevant;  the negotiating history of Article 27.3(b)
would show that the negotiators had considered a number of definitions, but had not been able to
agree to any.  It was not sufficient to rely on the ordinary meaning of the word applied.  His
delegation agreed with the statement in the United States paper that, in order to be patentable, a
micro-organism could not be as it existed in nature.  However, the example used in paragraph 8 on
page 3 of the United States paper confused the issue.  He wondered whether the patent in that exampleconcerned the process of developing a culture of the bacterium capable of producing recoverable
quantities of BU38319 or the bacterium itself.  Obviously, the bacterium itself existed in nature and
was, therefore, not new.  It was only the culture that did not exist in nature.  Another question his
delegation had with regard to this example was whet her the test of inventiveness was to be applied to
isolating the bacterium or to developing a culture for producing adequate quantities of BU38319.Given the techniques available today, India would argue that the task of isolating the bacterium would
not satisfy the inventiveness test.
162. Regarding the section of the United States paper which listed a set of criteria which would
constitute an effective sui generis  system for the protection of plant varieties, he said that, while it was
true that those and, perhaps, other criteria could be  useful for drafting national legislation that would
comprise an effective sui generis  system, the standards under national law might not necessarily
follow the standards for patents contained in Section 5 of Part II of the TRIPS Agreement.  This
would particularly be so for countries that would not opt either for patents or for a combination of
systems including patents, but for a sui generis  system per se .  In such cases, what was protected
would not be "patentable subject-matter" as indicated in the title of Article 27.  Further, the scope andlevel of protection provided for in Section 5 of Part II of the TRIPS Agreement would also not be
applicable to such a sui generis  system.  What would be relevant in such a system would be that the
scope and level was clearly defined and the protection given at that scope and at that level constituted
"effective" protection.  India felt the necessity of giving this clarification to the United States paper,
because what followed in later paragraphs of the paper appeared to indicate that the scope and level ofprotection available for patents under Section 5 of Part II of the TRIPS Agreement would be relevant
for the effectiveness of a sui generis  system.  For example, the United States paper stated, firstly, that
the system would apply to plant varieties throughout the plant kingdom.  This appeared to be an
incorrect interpretation of the provision, as the scope of protection would not be determined by
Article 27.1.  Moreover, some existing sui generis  models, which appeared to be effective models in
view of their long use, did not apply to the entire plant kingdom, e.g. UPOV.  Secondly, the four
determinants of entitlement to protection stated in the United States paper were novelty,distinctiveness, uniformity and stability.  This again went beyond what had already been established
as the determinants of entitlement to protection in existing models such as, for example, the UPOV
system, where novelty was not a criterion in a strict sense.  Further, a Member might wish to entitle a
farmer's variety for protection under its sui generis  law.  Such varieties might not be new, but might
be the result of the effort of the farmer to improve plant varieties.  Such protection might, on the otherhand, be based on other sui generis  systems like the IUPGR or the CBD.  Thirdly, the United States
paper restricted protection only to breeders or others specifically entitled either through contracts or
law of succession.  This position again restricted the scope of protection that could be available to
Members.  For example, Members might wish to include protection for plant varieties developed by
farmers on which rights arose through tradition and not through contracts or succession.  Fourthly,while the national treatment provisions would apply to sui generis  systems generally, existing
practices in sui generis  models, including the practice of reciprocity, would not be deemed to beIP/C/M/29
Page 60
lowering the level of protection or the effectiveness of the sui generis  system.  Lastly, the United
States paper suggested a term of protection of at least 20 years.  In India's view, this was again an
incorrect interpretation of Article 27.3(b).  The level of protection for patents provided for in
Section 5 of Part II of the TRIPS Agreement, in cluding Article 33, did not apply to plant variety
protection.  Further, effective sui generis  models, for example the UPOV system, had a different term
of protection.  The United States believed that the term of protection for trees should extend for atleast 25 years but, in India's view, that was an inco rrect belief.  In discussing the limitations on rights
in plant varieties, the United States paper stated that farmers could save seed for purposes of
re-seeding on their own holdings for the following y ears.  There was nothing in the TRIPS Agreement
to indicate any such parameter for limitations on the rights.  India believed, for example, that farmers
could not only save seeds but also exchange, barter  or even sell them, except through a commercial
marketing infringement by using the brand of the plant breeder who had protected his right under the
national law.  This was necessary because farmers needed to be encouraged to invest in plant varietydevelopment through a process of natural selection over generations on their own fields for adapting
plant varieties to local conditions while ensuring productivity.  His delegation agreed with the position
of the United States that cancellation of the right should be possible, if a right holder failed to fulfill
its responsibilities laid out thoroughly and transparently under the law maintaining the rights.  It was
obvious that one of the responsibilities of the right holder was that the variety should show theperformance that it was claimed to have.  In cases where the right holder did not discharge his
responsibilities, the law could also provide for compensation to the user of the variety.
163. Regarding ethical considerations, the basic point made by the United States was that a patent
on a life form did not provide ownership of that life form to the patentee.  That was correct.  However,
the United States went on to say that the patent would give its owner the right to prevent others fromtaking certain actions in relation to a protected invention.  Consequently, nobody else would be able
to "work" that life form.  This would be particularly true where "broad" patents were granted, a
practice quite common in patent offices of devel oped countries.  Nobody, whether an individual or
State, should be provided with such an exclusive use of a life form which virtually brought one life
under the control of another.  No doubt, technological development necessitated research, includingresearch in areas connected with life forms.  The tricky part was the commercialization of life.  It was
for this reason that India, among others, had called for a complete ban on patents on life forms.  It was
for this reason again, India believed, that those who had researched the "Genome Project" had
undertaken not to seek a patent on the results of their research.  India was not against encouragement
of such research and in fact would urge the inte rnational community to invest more State funds into
such projects, so that the research was undertaken for altruistic objectives rather than mercantilist
objectives that commercial research might be driven by.
164. Regarding patents related to knowledge and practices of indigenous people, India's view had
already been presented in its paper circulated as document IP/C/W/161.  According to the United
States paper, the fault (relating to bio-piracy) did not lie with the patent system, but with the
inaccessibility of the (traditional) knowledge involved beyond the indigenous community.  This
would be a tenable proposition only if humanity needed only patents, to the exclusion of traditionalknowledge, for its progress.  Obviously, that was not true, as had been shown beyond doubt not only
in the WTO and other, more relevant, intergovernmental organizations but in the literature in general
on the subject.  Hence, it was the responsibility of the WTO to harmonize the objectives of the TRIPS
Agreement with the larger objectives of progress of humanity, including through the conservation and
growth of traditional knowledge.  With reference to the patent on the healing properties of turmeric,the United States paper stated that the patent system, in that case, had worked as it should.  This was
again an untenable position on the following grounds.  Firstly, it was admitted that the patent had been
granted where none should have been.  Patent systems all over the world needed to gear up to such
contingencies.  India had proposed certain solutions in this regard in paragraph 7 of
document IP/C/W/161.  Secondly, such instances of wrong patents arose generally in cases oftraditional knowledge accessed from developing countries.  In consonance of the commitment forIP/C/M/29
Page 61
special and differential treatment to the developing countries in the Preamble of the WTO Agreement
as well as the TRIPS Agreement, it was Members' dut y in the WTO to correct this imbalance.  In this
regard, suggestions were already on the table in the General Council as part of the implementation
concerns of the developing countries.  Thirdly, while it was true that the Internet and other
technological advances had made dissemination of knowledge easier, this facility was relevant more
for the developed countries, which had the resources, than the developing countries and their peoples.For example, indigenous communities could hardly be expected to access the Internet or rummage
through data available in patent offices to dete rmine whether their knowledge was being purloined or
not.  Hence, a preventive system of denial of patents based on traditional knowledge was required,
rather than a post facto damage containment effort through revocations.  In addition, revocations cost
a lot of money and time, which was not abundantly available to developing country Members, not to
mention their indigenous peoples themselves.  Lastly, such a damage containment system would
always fall behind the efforts of patentees who had a purely commercial interest, rather than researchobjectives.  In fact, there were many other patents based on traditional knowledge which had been
pointed out to the Indian Government, and maybe to other Governments as well, but the Government
might not have the capacity to fight each and every case.  This was evident at least in one case where
it had been a non-governmental organization rather than the Government, who had successfully
challenged a neem-based patent in the European Patent Office.  The suggestion to document data ontraditional knowledge was well made and the Government of India was taking steps in that direction
and would urge others to do so.  However, docume ntation was a relevant means only for traditional
knowledge already in the public domain in a given society.  It was not a solution for traditional
knowledge that was closely held by indigenous communities or local peoples.  Documentation of such
knowledge would divest these communities and peop les of their right to get rewarded for their
knowledge and would, in fact, institutionalise pilferage.  Certainly, this was not an objective of
patents, the TRIPS Agreement or WTO Members.  Hence, a means of rewarding traditional
knowledge holders had to be developed hand in hand with the development of private commercial
rights or patentees under the TRIPS Agreement.  India would urge the TRIPS Council to take note of
the deliberations in the UNCTAD Expert Meeting on Traditional Knowledge held from 30 October to1 November 2000.
165. The United States had pointed to Article 22.1 of the CBD, which stated, inter alia , that the
provisions of the CBD shall not affect the rights and obligations of any Contracting Party deriving
from any existing international agreement, except where the exercise of those rights and obligations
would cause serious damage or threat to biological diversity.  Enough literature was available toindicate the damage that was being caused to biological diversity and associated traditional
knowledge.  The fact that both the CBD and the WTO were engaged in harmonizing the conflict
between the TRIPS Agreement and the CBD pointed to the seriousness of the issue.  If still a
necessity was felt to identify such damage, the TRI PS Council could ask the Secretariat to extract the
relevant information from the literature.  The reference to bio-piracy in a monogram by ActionAid
entitled "Crops and Robbers - Bio-piracy a nd the Patenting of Staple Food Crops", dated
25 November 1999, was an example.  The United States had gone on to refer to principles ofinternational law, thus taking a legalistic view of a serious problem like bio-piracy and conservation
of biological diversity.  A legalistic view would rather seem to be the domain of the WTO dispute
settlement system, not of the TRIPS Council.  In this regard, he wondered whether the Biosafety
Protocol or the upcoming revisi on of IUPGR would prevail over provisions of the TRIPS Agreement.
In view of all these considerations, India had made a limited proposal, as reflected in documentIP/C/W/161, that patent applications should disclose the source of origin of biological material or
associated traditional knowledge used in the in ventions they disclosed, in order for domestic
mechanisms to ensure the prevention of bio-piracy as well as the installation of benefit sharing
mechanisms.  It was India's belief that Article 29 of the TRIPS Agreement already permitted this.IP/C/M/29
Page 62
166. Regarding access to genetic resources and benefit-sharing, the United States had mentioned
that India's suggestion, if it were to be implemented, would be a nightmare for all concerned.  India
believed that adding an additional item in a patent application form should cause little difficulty either
to patent offices or to patent applicants.  So far as benefit-sharing mechanisms were concerned,
nobody was arguing that patent offices had to enforce such mechanisms.  These mechanisms would
have to be and were being installed in national laws and would have to be administered andimplemented by national biodiversity authorities.  A clear example had been given in India's paper
circulated as document IP/C/W/198.  The United States paper argued that effective obligations for
ensuring benefit-sharing must arise at the beginning of the process rather than at the point of
commercialization.  It was submitted that national access legislation would certainly be beneficial in
that regard.  However, biodiversity could be accessed in various ways and it might not always be
possible to detect illegal access or to even regulate legitimate access.  For example, how could it be
ensured that a person did not put a herb in his or her pocket and carry it away to a research facility forcommercialization?  Similarly, how could it be ensured that traditional knowledge was not obtained
without reward from innocent indigenous people and commercialized without sharing benefits?  For
that reason, collection of information at the point of commercialization was also necessary.  Such
information would enable national authorities to determine whether benefit-sharing mechanisms
through contracts or otherwise as required under national laws had been entered into or not.
167. He also wished to reconfirm his delegation's views expressed in document IP/C/W/161 and its
comments on the Chairperson's checklist of the main issues that had arisen in the discussions
concerning the review of Article 27.3(b) as reflected in paragraph 54 and footnote 5 of
document IP/C/M/26.  His delegation would urge other countries also to give their views on this
checklist in order to further the discussion and evolve a consensus on the review.
168. The representative of Singapore said that his delegation would shortly circulate a non-paper
on Article 27.3(b) among Members.12  He expressed support for Japan in relation to the issue of
access to genetic resources.  Singapore was a party to the CBD, which recognised the sovereign rights
of States over their natural resources and stated that the authority to determine access to genetic
resources rested with national governments.  Existing genetic resources had provided the basis forbiotechnological innovations.  The availability of the genetic resources, the efforts to discover those
resources and the further efforts to create somethin g new out of those resources all contributed to the
value of new products derived from genetic resources.  Therefore, the principle of benefit-sharing on a
commercially viable, transparent and fair basis could not be objected to.  However, the CBD also left
it to States that were Contracting Parties to decide the terms of access to their genetic resources, e.g.whether to require prior informed consent or not.  Some countries had enacted legislation to regulate
access to their genetic resources;  others had not.  That flexibility should be retained.  To use the
TRIPS Agreement to enforce such benefit-sharing arrangements might not be the best way to proceed,
as it could mean negotiating a common arrangement to apply to all countries.  This was because
countries concerned would want to set up different benefit-sharing arrangements to respond to
different national priorities.
169. Regarding the overall review of Article 27.3(b), many issues were involved.  In relation to
exclusions from patentability, as a general principle, Singapore recognized that many biotechnological
innovations had significant medical and industrial applications and clearly had social and commercial
value.  Therefore, it was only fair that the intellectual property created by research and development
in biotechnology be recognized and protected through patents.  The criteria for patentability were
contained in Article 27.1 of the TRIPS Agreement:  the subject-matter of a patent must be new,involve an inventive step and be capable of industrial application.  Singapore believed that
biotechnological innovations deserved patent protection in the same manner as other areas of science
                                                     
12 Advanced copies of this non-paper were made available at the meeting.  The non-paper was
subsequently circulated as (JOB(00)/7853).IP/C/M/29
Page 63
and industry.  Accordingly, under the Singapore Pa tents Act, micro-organisms, plants and animals
were patentable.  The Patents Act also provided for the patenting of plant varieties.  Article 27.3(b)
made a distinction between the level of protection to be given to micro-organisms and that for plants
and animals.  It currently provided for the pate ntability of micro-organisms and non-biological and
essentially microbiological processes.  Given the fact that patents had already been awarded to
micro-organisms in a number of countries, the review of Article 27.3(b) should not lead to a loweringof intellectual property protection for biotechnologi cal innovations.  Singapore thus saw the status quo
as the starting-point.  Therefore, his delegation would like the Article 27.3(b) review to focus on
whether patent protection should be extended to all new inventions of plants and animals.
170. Some Members had pointed out shortcomings in the patent system in respect of the granting
of patents for mere discoveries of existing organisms or genetic information, or of naturally occurring
substances;  or for "prior art" that was not widely  known, e.g. traditional knowledge.  Such concerns
were valid but should be addressed in a technical manner by looking at ways of improving the patentexamination process, e.g. opposition procedures, and by applying rigorously the criteria of novelty,
non-obviousness and industrial utility in relation to patent applications.  In this regard, his delegation
wished to note that WIPO was now embarking upon initial discussions on the possible harmonization
of patent laws that could eventually minimize di sputes over the award of patents.  The field of
biotechnological patents was a new one and it was, therefore, not surprising that various difficultieswere being encountered in applying the standard test of patentability.  However, oppositions to the
way patents had been granted in certain instances should not mean that patents should not be granted
at all for inventions relating to plants and animals.
171. The representative of Thailand reiterated that his delegation, as to the procedure to be
followed in the review of Article 27.3(b), subscrib ed to a more focused and structured discussion as
outlined by the Chairperson at the meeting of the Council in March 2000 and reflected in
paragraph 54 of document IP/C/M/26, on the understanding that the list of issues mentioned in
footnote 5 to that paragraph was non-exhaustive and without prejudice to Members' positions.
172. Regarding the substantive issue of sui generis  protection for plant varieties, Thailand
continued to believe that, as long as Article 27.3(b) required Members to provide protection for plantvarieties, the choice of such a system as currently available under Article 27.3(b) had to remain open
so as to allow each Member to opt for a patent system, an effective sui generis  s y s t e m  o r  a
combination of the two and develop the system in furtherance of the objectives and principles
contained in Articles 7 and 8 in a manner that was consistent with the Agreement.  The meaning of
the word "effective" in Article 27.3(b) needed to be clarified.  Although the Agreement alreadyallowed general exceptions to exclusive rights, there was no risk in adding express provisions
permitting specific exceptions to plant varieties.  These exceptions should cover, as a minimum, the
rights of farmers, in particular, to sow and share harvested seeds of a protected variety;  communities'
rights;  and compulsory licensing, where plant varieties were not available on reasonable commercial
terms, in the case of a national emergency, or for public non-commercial use.  It should also be put
beyond doubt that Members were not under an obligation to protect all varieties in the plant kingdom.
It should be clarified that, when they applied these exceptions and limitations, Members were incompliance with the requirement to provide for an effective sui generis  system of protection.
Article 27.3(b) did not refer to the UPOV Convention and much less so to any particular Act of that
Convention.  Thailand would not accept any attempt to add such a reference.  Members were free to
choose a model other than the UPOV system and should remain free to do so.
173. Regarding the issue of the relationship to the conservation and sustainable use of genetic
material, he said that Article 27 recognized the right of Members to provide patent protection in
respect of plants and animals.  However, where inventions had been developed using genetic
resources from another Member's jurisdiction, Article 27.3(b) should expressly recognize the right of
that Member to control access to and use of genetic resources from within its jurisdiction and toIP/C/M/29
Page 64
receive compensation for revenues derived from inventions using those resources.  Some countries
had indicated concerns, for example, that the requirement to identify the source of genetic resources in
patent applications would cause legal and administrative problems.  Thailand believed that Members
first needed to reaffirm the rights of Members over their genetic resources and recognise the principle
of benefit-sharing under the TRIPS Agreement.  Thereafter, administrative difficulties could be
discussed, for example how to ensure that requ irements would not create problems or unduly
complicate patent examination procedures, especially where it might be difficult to prove the actual
origin of genetic resources and where more than one country might claim ownership of such genetic
resources.  As indicated by Brazil in its recent paper, such additional requirements might be imposed
only when they were necessary or when there were reasonable grounds to believe that certain patent
applications did not respect national legislation on the protection of biodiversity.
174. Regarding the issue of access to genetic resources and benefit-sharing, Thailand shared the
view of the United States that those who wanted  to share in the benefits derived from genetic
resources should be encouraged to enter into cont ractual arrangements with those who owned those
genetic resources before using the genetic material.  Such contracts should also cover benefit-sharing.
For example, Thailand had established a National Biological Resource Center and was in the process
of drafting a Model Material Transfer Agreement.  When this system would be in place, any person
who wished to benefit from Thailand's genetic resources would have to enter into an agreement withthat Center.
175. The representative of Peru first wished to  commend the Secretariat for the "Checklist of
Points Made" circulated as JOB(00)/7517 and reserved the right to comment on the papers submitted
by Brazil and Japan after her authorities would have had time to study them carefully.  Peru agreed
with Brazil on the approach and the elements to be taken into account in reviewing Article 27.3(b).
As stipulated in Articles 7 and 8 of the Agreement, the protection of intellectual property rights should
promote technology transfer and development.  These criteria should also be borne in mind when
reviewing Article 27.3(b).  As to the protection of micro-organisms, it was necessary to limit and
clarify the scope of protection to avoid interpretati ons that were over-permissive.  Likewise, it was
necessary to make sure that micro-organisms for which patents had been granted actually met theconditions of novelty and of inventive step and had not just been found in nature and, consequently,
just represented discoveries.  It was also necessary to maintain the flexibility provided by
Article 27.3(b) with regard to the establishment of a sui generis  system of protection for plant
varieties.  Agriculture and food security of many developing countries depended upon traditional
practices of farmers in keeping and exchanging seeds.  Any limitation of these practices could haveserious implications for these countries.  Measures should also be adopted to ensure compatibility
between the TRIPS Agreement and the CBD, in particular with regard to Articles 8(j), 15 and 16
concerning the protection of traditional knowledge and the regulation of access to genetic resources.
These were valuable elements of heritage which should be adequately protected, in particular to avoid
their illicit appropriation and unauthorized use.  Responding to the comments made by developed
countries that it was premature to consider protectio n at the international level, given that the issues
involved, which were still being studied, were complex and there was not yet much practice undernational legislation, her delegation wished to recall that the majority of developing countries had not
had legislation at the end of the Uruguay Round in many of the areas that were now governed by the
TRIPS Agreement.  Nevertheless, legislation had been enacted during the transitional phase with a
view to complying with the commitments that had been made and, while developing countries had
made great efforts, often, legislation enacted had been considered insufficient.  Now, there was onearea that was of great interest to developing countries, i.e. that which concerned the protection of
traditional knowledge and access to genetic resources.  Such protection did not exist at the multilateral
level and it was, therefore, high time to start a serious and substantive debate on appropriate ways of
ensuring such protection.IP/C/M/29
Page 65
176. The representative of Switzerland said that his country was party to both the TRIPS
Agreement and the CBD and continued to be of the view that the TRIPS Agreement and the CBD
were mutually supportive.  These international inst ruments could not only be interpreted and applied
in a manner which would avoid conflict between the two, but complemented each other.  While each
focused on its own specific policy area, both instruments ultimately served the same overall goal of
promoting well-being and welfare.  In his delegation's view, the work under each of these instrumentsshould focus on the primary competence of the institution responsible for it and respect, similarly, the
competence of the other institution by showing consideration for decisions taken in the other
institution.  He reiterated his delegation's view that the relationship between the CBD and the TRIPS
Agreement should not be dealt with in isolation, bu t should be addressed within the wider context of
the relationship between the WTO on the one hand and multilateral environmental agreements on the
other hand.  Only such an approach would allow problems that might arise to be addressed
adequately.
177. His authorities were studying the documents which had been submitted in relation to the
review of Article 27.3(b) recently.  His delegation had noted with interest the various initiatives taken
at the national and regional levels and would comment on them in substance at the Council's next
meeting.
178. As regards the review of Article 27.3(b) generally, his delegation was of the view that the
next step to be taken should be for those Members that had not yet submitted information on the
application of the provisions of Article 27.3(b) in their territories to do so.  This would provide the
Council with a more comprehensive basis for its work on the matter and, therefore, be indispensable
for the review as foreseen in Article 27.3(b).  Switzerland shared the opinion expressed by many
Members that Article 27.3(b) did not only call for a review of the implementation of its provisions,but also for a review of the substance of the subpa ragraph itself.  However, this implied only two
issues, i.e. the scope of the option in Article 27.3(b) to exclude from patentability "plants and animals
other than microorganisms, and essentially biological processes for the production of plants and
animals other than non-biological and microbiologic al processes";  and what Article 27.3(b) required
in respect of sui generis  systems for protection of plant varieties.  All other issues mentioned in
documents submitted to the Council such as, for example, issues related to genetic resources,
traditional knowledge or farmers' rights were, in the view of his delegation, beyond the scope of  the
review of Article 27.3(b) and he would, therefore, not comment on them in this context.  He wished to
note, however, that his delegation shared the view that issues such as farmers' rights, traditional
knowledge, access to genetic resources and benefit sharing were of the greatest importance andexpress its satisfaction that other international fora, such as the CBD, the FAO and WIPO were
currently addressing those issues.  In particular, WIPO's "Intergovernmental Committee on
Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore" would provide an
important forum to discuss such issues to participants with know-how in intellectual property.  He
also said that a review of the substance of Article 27.3(b) did not imply a revision of the provision.
Of course, the outcome of such a review could be that there might be a need for a revision of
Article 27.3(b) but, since a substantive review had not really started yet, no such conclusion could bedrawn at this stage.
179. Regarding the issues that did, in his delegation's view, fall under the review of Article 27.3(b),
Switzerland would be ready to carefully look at any adequate and effective sui generis  system for the
protection of plant varieties developed by a Member.  However, it considered the provisions of the
1978 and 1991 Acts of the UPOV Convention to adequately address many of the concerns raised inthe papers of, for example, India, Peru or Mauritius on behalf of the African Group.  Both UPOV Acts
granted ample flexibility to take into consideration national interests and needs.  For example, both
Acts allowed States to introduce in their national laws the farmer's privilege, according to which
farmers could replant propagating material they had harvested on their own holdings.  Moreover, theIP/C/M/29
Page 66
UPOV system required Member States to provide for the breeder's exemption referred to, for
example, in paragraph 3 of the paper of the African Group.
180. Finally, with respect to the option for Members under Article 27.3(b) to exclude from
patentability plants and animals other than micro-organisms, his delegation held the view that
Article 27.3(b), in its current wording, would adequa tely enable Members to take into consideration
their specific national interests and needs when implementing the relevant provisions.  The Council
should bear this in mind while reviewing Article 27.3(b).
181. The representative of the United States said that his delegation had still not seen any paper
submitted to the Council, nor heard any intervention made in its meetings, which identified one single
inconsistency between the TRIPS Agreement and the CBD.  According to Brazil, in order to avoid
conflicts, which had yet to be identified, it was necessary to amend the TRIPS Agreement.  His
delegation found it difficult to agree with this logic.  The intervention made by Japan was quite
persuasive.  Japan, being party to both the TRIPS Agreement and the CBD, had stated that theirimplementation of the two instruments had not given rise to conflicts between the two.  The
Secretariat checklist of points made contained in document JOB(00)/7517 left Members with a rather
different impression of the debate in the Council regarding as to whether there was a conflict between
the CBD and the TRIPS Agreement and did not represent a balanced picture of that debate.  The
arguments put forward had been listed in such a way as to suggest that there was a conflict betweenthe two, while there were two opposing  views in this regard.  In its present form, the document would
not provide the right picture to the General Council of the debate in the TRIPS Council on the issue of
the relationship between the TRIPS Agreement and the CBD.  In this regard, he wished to note that,
when the Council had met to discuss, in info rmal mode, the relationship between the TRIPS
Agreement and the CBD, in view of the request it had received from the Special Session of theGeneral Council concerned with implementation matters, instead, Members had addressed the various
interpretations of Article 27.3(b).  He expressed the hope that the Chairperson's report to the General
Council regarding the TRIPS Council's discussion on the matter would factually state that the TRIPS
Council had engaged in a discussion on the issue;  that there was no consensus in the TRIPS Council
about the actual relationship between the TRIPS Agreement and the CBD;  and that the TRIPSCouncil would continue to discuss the issue.  This  would be the only fair way of conveying to the
General Council the work that had been undertaken in the TRIPS Council.  If Members were
interested in more detail on the positions that individual delegations had taken and the points that they
had made, the minutes of the TRIPS Council's meetings were available as well as the papers that had
been submitted.
182. He said that responses to the various questions that had been posed to his delegation would be
provided in due course, while noting that, in many instances, the questions stemmed from a clear
misunderstanding of the points that the United States had been trying to make.
183. He joined the delegation of Switzerland in urging developing country Members to submit
information to the WTO on the manner in which they had implemented the provisions of
Article 27.3(b), so that the Council could have a more complete picture of the implementation of these
provisions.  Several delegations had criticized that the information contained in the Secretariat'ssynoptic tables circulated in the summer of 1999 described primarily the laws and practices of
developed countries.  That situation could be reme died if developing countries which were currently
obligated to fulfil the requirements of Article 27 pr ovided information regarding their implementation,
using either the suggested list of questions prepar ed by the Secretariat (document IP/C/W/122) or the
questions used by some developed country Members (document IP/C/W/126).
184. His delegation appreciated the paper submitted at the last meeting by Mauritius on behalf of
the African Group.  It believed that the work of the Council could move forward more efficiently if
Members provided views in writing so that othe r Members could have an opportunity to considerIP/C/M/29
Page 67
these views in depth, which would not always be possible on the basis of statements made in Council
meetings and later reflected in the minutes.  In the African Group's paper, which addressed the link
between the obligations of Article 27.3(b) and concerns about development, it had been said that the
former were detrimental to the latter.  Nothing, in the view of his delegation, could be further from the
truth.  Full implementation of the obligations under the TRIPS Agreement by developing countries
would build confidence among investors, both domestic and foreign.  Investment and innovative andcreative businesses in those countries would provide an opportunity for economic returns, because
potential competitors, rather than copying, would have to invest in their own innovative and creative
activities.  It was this kind of investment that would stimulate economic growth and encourage the
transfer of technology.
185. In his delegation's view, the exceptions of Article 27.3(b) were not necessary.  His country's
Patent Law did not contain exceptions for plants and animals and provided for patents for inventions
in all fields of technology if the inventions we re new, industrially applicable and involved an
inventive step.  The United States would urge other Members also not to avail themselves of the
exceptions allowed under Article 27.3(b).
186. He reiterated that discoveries of a naturally occurring plant or animal or even micro-organism
would not be patentable, because they would not be new.  To be patentable, the plant, animal or
micro-organism would have to be altered by the hand of man.
187. His delegation believed that other issues raised in the African Group's paper had already been
addressed in detail in the two papers that his delegation had introduced in the Council.  He would urge
the Members of the African Group to review these papers and, if questions were to continue, to
articulate such questions in further papers so that the discussion could lead to greater understanding
on both sides.
188. Finally, he expressed his delegation's disappointment regarding the non-paper submitted by
India at the last meeting.  Rather than taking into consideration the views expressed by others,
including those of the United States, India's non-p aper merely restated arguments expressed in its
earlier papers submitted to the Council and the Committee on Trade and Environment.  The
delegation of the United States believed that those arguments had already been refuted or werenegated by the text of the TRIPS Agreement itself.
189. The representative of Australia, reacting to the various issues related to the interaction
between biotechnology and intellectual property to which delegations had referred to in the debate,
said that her delegation believed that the differences of public policy perspective had been greatly
overstated, particularly in some of the reporting on the work of the Council.  There was no objectiveevidence of a sharp dichotomy of interests in this field.  A large number of WTO Members were
wrestling with the same basic policy issues concerning the interaction between the intellectual
property system and biotechnology and looking for practical solutions.  It was neat and perhaps
tempting to assume that the world was divided in to two on the issue.  However, that assumption
could, in itself, impede positive progress on the interlocking issues that arose as it would deny an
opportunity to benefit from each other's practical experience.
190. The view had been advanced that the text of Article 27.3(b) as it stood was unsatisfactory and
that it was a matter of immediate priority to ame nd it;  negotiations should commence in earnest on a
host of proposals aimed at bringing about mandatory exceptions on the scope of patentable
subject-matter, new mandatory conditions on the grant and exercise of both patents and plant variety
rights, and the creation of new forms of intellectual property, specifically for traditional knowledge.
Others had advanced that it was necessary to look at how Members had applied their nationalintellectual property systems to the domain of biot echnology within the general framework of existing
TRIPS standards;  that a checklist approach should be employed so as to guide the work of theIP/C/M/29
Page 68
Council by the actual content of national laws, rather than debating the matter in a largely abstract
way.  Australia had suggested that the Council look at its broader mandate under Article 71 and at
how Members had undertaken intellectual property policy processes in active endeavours to secure
the expected benefits according to general policy themes.  From Australia's perspective, the overall
policy objectives were shared with many other delegations.  Those objectives had already been set out
and endorsed in the TRIPS Agreement and in complementary legal instruments such as the CBD.  Thequestion was whether these objectives could be  achieved in a top-down way by modifying
prescriptive treaty language before the effect of the current settings had been assessed in a collective
manner.  In Australia's view, embarking on negotiations for new treaty language such as modified
TRIPS rules on patents would pre-empt and impede the policy development process by moving
attention away from the areas where solutions needed  to be found.  Moreover, in whatever way the
mandate under Article 27.3(b) was to be interpreted, it could not possibly entail a wholesale
re-examination of the range of TRIPS provisions that had been touched upon in the debate.  Forinstance, questions had been raised about the application of the criteria of novelty, inventive step and
industrial applicability in the biotechnology domain (A rticle 27.1);  the very definition of an invention
(Article 27.1);  other public policy exceptions to patentability such as for ethical, environmental or
public health reasons (Article 27.2 and 27.3(a));  the nature of the patent right and exceptions to it,
including for research and development (Articles 28 and 30);  the patentee's disclosure obligation(Article 29);  compulsory licensing and government use (Article 31);  misuse of patents to restrain
technology transfer and engage in anti-competitive practices (Article 40).  Other forms of intellectual
property such as geographical indications, collective marks and copyright had been used in various
ways to protect traditional knowledge and cultural heritage and, therefore, were also directly relevant
to the broader debate.  To suggest that all the interl ocking issues could be dealt with in the context of
the Article 27.3(b) review, however generously that might be construed, had the effect of artificially
constraining the range of available policy responses to those somehow related to the scope of
patentable technology.  Presumably, those who were seeking an early modification of treaty language
were favouring the Article 27.3(b) review as the locus for the debate, because that might provide a
mandate for the immediate changes to TRIPS standards that they placed priority on.  In herdelegation's view, however, regardless of the text of Article 27.3(b), forward movement on the issues
raised was dependent upon the conscious cultivation of consensus, which could only occur if there
was a common appreciation of the nature of the problems that should be addressed and a clearer sense
that the measures proposed were the most effective way of dealing with those problems.
Domestically and internationally, Australia was actively involved in a range of policy analysis anddevelopment processes that directly dealt with concerns as had been raised under Article 27.3(b):  i.e.
what was a workable mechanism for benefit-sharing in relation to genetic resources that took account
of indigenous interests and concerns;  how to ensure that agricultural producers gained equitable
access to the benefits of gene technology;  how would an intellectual property system within the
TRIPS framework respond to the need to protect expressions of indigenous culture and duly recognize
and reward those working within those traditions.  Australia had the additional concern that infringing
reproduction of indigenous artworks had been made in overseas jurisdictions, in apparentcontravention of international copyright standards.  The experience of Australian right holders had
also been the subject of case studies in the framework of WIPO in approaches to protect traditional
knowledge reflecting the range of practical mechanisms that had been applied.  Australia would not
claim to be at the cutting edge of policy-making in each of those areas;  such processes could be slow
and did not always yield immediate solutions.  Howeve r, as far as the intellectual property system was
concerned, each of the processes had explored a wi de range of practical options and policy-making
choices within the general framework of the TRI PS Agreement.  They were, in effect, part of
Australia's modest attempt to implement and make us e of TRIPS standards in a way that promoted the
TRIPS objectives and the broader public policy interests that arose under the item.  Consequently, in
her delegation's view, a circumspect approach was necessary to the various proposals that TRIPSprovisions should be modified before there had been a collective consideration of the actual nature of
their implementation.  Her delegation's approach was not to disparage the general policy concerns
behind the proposals made.IP/C/M/29
Page 69
191. Fundamental questions had been raised, such as:  what would be the social and economic
benefits of a mandatory global ban on patenting of inventive micro-organisms?  Would such a ban
lead to a reduced incentive for conservation and fo r benefit-sharing arrangements with researchers?
In the meantime, while negotiations on these issues proceeded, could Members not be overlooking
immediately available practical mechanisms to achieve their policy goals?  Many of the issues raised
did not seem to concern deficiencies in TRIPS rules but questions about their implementation.  Forinstance, the question had been raised in the Council and elsewhere as to whether the patent system
was inappropriately extending patent rights to genetic materials that already occurred in nature.  A
number of individual patents had been the subject of much controversy.  From a patent law point of
view, this raised a host of questions.  How had the definition of "invention" been applied?  Had an
individual patent been granted which was not novel, lacked an inventive step or was not in its full
scope of claims capable of industrial application?  Was the patent right as granted actually enforceable
in a way that would cause a negative impact?  Did the nature of the patent right as granted actuallyamount to ownership of or control over the genetic material as such or did it concern its application in
a specific technological context?  Did the actual technological subject-matter of a patent fall under a
possible exception under Article 27.2, 27.3(a) or 27.3(b)?  Each of those questions concerned the
implementation of existing TRIPS rules.  The concern widely expressed in the international debate,
that some patents were granted for claimed inventio ns that actually lacked inventive step or were
obvious, represented an implementation issue and not a matter for renegotiation.  For these reasons,
Australia strongly advised Members to look at these implementation issues in a holistic manner.  For
practical as well as conceptual and legal reasons, it was mistaken to attempt to resolve such issues in
the narrow confines of the Article 27.3(b) review.  It  could not be determined what the actual effect of
TRIPS provisions were until it was understood how they had been implemented at the national level.Sharing the experiences of practical implementation was a task the TRIPS Council should take up
immediately in line with its important obligation under Article 71.1.  Even in relation to the
subject-matter of Article 27.3(b), Australia believed that the interests of all Members would be served
by considering what choices Members had made in implementing the TRIPS Agreement at the
national level.  For example, there had been considerable discussion about whether or not the term"micro-organism" should be allowed to stand in the TRIPS text as a point of distinction between
optional and required patentable subject-matter or whether concerns about its definition should lead to
a modification of the TRIPS Agreement to exclude patenting of organisms.  Individual Members
determined and applied the term in their national ju risdiction in accordance with Article 1.1.  It was
noteworthy that the term "micro-organism" was the direct subject of an entire treaty, the BudapestTreaty, which did not seek to define the term.  The fact that there was no one definitive determination
of what that term should mean in the TRIPS context made it no different from any other term in the
Agreement.  For example, the fundamentally impor tant term "invention" was left to Members to
determine according to their own national law.  It would be helpful for the Council to consider what
approach had been taken in each Member's legal framework to determine the nature of inventions in
the biotechnology domain.  Such a flow of information would be a useful basis to achieve a collective
understanding of the nature of the provisions under discussion and for clearing up concerns or greyareas.  That was why Australia had been advocating the active collection and dissemination of such
information regarding the review under Article 27.3 (b) and it was unfortunate that the information so
far collected was dominated by the approach taken by a relatively small number of WTO Members.
Australia supported the continuation of work on the review agenda and supported the suggestion that
developing countries and transitional economies respond to the survey of national laws in connectionwith Article 27.3(b).  The TRIPS Council should al so monitor developments in other international
fora which had overlapping (WIPO) or compleme ntary (CBD) competencies.  Many broader issues
which had been raised in other fora such as the CBD, the FAO and WIPO, were not intellectual
property questions as such, but rather related to domestic regulations and access regimes.  A way
forward might be to clearly define the concerns in an intellectual property context, determining whereand how they might fit in with other initiatives and developing a shared understanding of practical or
domestic measures to address these concerns.  In Australia's experience, much of the work on
addressing concerns should be done at the domestic level, and the exact choice of policy instrumentIP/C/M/29
Page 70
was a domestic matter for national and provincial governments.  That was not to say, however, that
these issues were not valid subjects of international concern and should not be considered in
multilateral processes.  Australia believed that genuine solutions could only be found after the range
of existing domestic options has been understood.  In order to help the Council understand those
domestic options, the Australian delegation invited the Andean Pact countries to describe their
experience in carrying out the new intellectual property system to be introduced under the AndeanCommunity Decision 486, in particular in relation to Articles 15, 26(h), (i) and (j), 75(g), (h) and
136 (g).
192. The representative of India was surprised that some delegations were arguing that the TRIPS
Agreement and the CBD were either mutually non-exclusive or mutually supportive or that both
Agreements had their own domains.  Did the CBD its elf not contain a provision to the effect that
intellectual property should not run counter to the objectives of the CBD?  Would more than
100 countries have signed on to the CBD with th at provision in it, if they had not at least
contemplated circumstances where intellectual property rights ran counter to its objectives?
Examples included patenting of genetic resources and lack of benefit-sharing.  Some were arguing
that it was up to national governments to ensure that intellectual property rights did not run counter to
the objectives of the CBD.  However, people could take biological resources out of a country and,
therefore, some cooperative effort at the internat ional level was needed to ensure that intellectual
property rights did not run counter to the objectives of the CBD.
193. The representative of the United States said that, just because there was a provision in the
CBD that imagined that there could be a conflict, did not mean that one existed.  He did not consider
this evidence of a clear conflict between the TRIPS Agreement and the CBD.  Article 16(2) of the
CBD stated that in case of the access and transfer of technology subject to patents and otherintellectual property rights, such access and transfer shall be provided on terms which recognized and
were consistent with the adequate and effective protection of intellectual property rights.  Therefore,
all that had to be done had to be consistent with the TRIPS Agreement.  This showed that the CBD
itself recognized that the two instruments should be mutually supportive and were not in conflict.
194. The representative of Brazil, in response to  the comment made by the delegation of the
United States in connection with the first sentence of paragraph 21 of the Brazilian paper that so far
there was no evidence of conflicts between the TRIPS Agreement and the CBD, said that the
paragraph as a whole gave well-known examples of patents granted in respect of genetic resources
that should serve as such evidence.  If those well-known cases were not enough, there were some
20 less famous cases of patents that had been issued in respect of genetic resources pertaining toAfrican countries.  He referred to the website address "www.grain.org", which contained extensive
reports on situations of bio-piracy in Africa, Asia  and Latin America.  Discussion on the implications
of the provisions of Article 27.3(b) for the provisions of the CBD could focus on conflicts between
the two, could focus on synergy betw een the two, or could do both.  He did not think that the Council
should embark upon a thorough examination of cases concerning patents on genetic resources that
could be questionable from the point of view of implementing the CBD.  His delegation's paper
approached the matter from the perspective that the TRIPS Agreement and the CBD were notmutually exclusive, but that there could be conflicts at the level of implementation which required a
systemic solution in the context of the review of Article 27.3(b).  In that regard, Brazil would suggest
exploring the synergy between the TRIPS Agreement and the CBD.  In reply to comments made by
Switzerland that genetic resources did not fall within the scope of Article 27.3(b), his delegation
wished to point out that plants, animals and micro-organisms were genetic resources.
195. The representative of Korea informed the Council that the Korean Biotechnology Institute
affiliated to the Government agencies was conducting a study project whose aim was to survey
genetic resources in Korea and abroad as well as regulations and systems of other Members related to
their protection, use and access.  This project, which was quite comprehensive in scope, wasIP/C/M/29
Page 71
scheduled to be completed by the end of this year.  After the systematic study and analysis of the final
report of the project in consultation with expert groups, Korea would expect to come up with clearer
policy objectives and positions in this area which would certainly enable it to intervene in
forthcoming sessions on important subjects like genetic resources and the relationship between the
protection of traditional knowledge and intellectual property rights.
196. With regard to the relationship between the CBD and the TRIPS Agreement, it had been
Korea's consistent position that both treaties were mutually supportive.  It was no doubt that each
instrument had its own objectives and areas of responsibility.  In this connection, the delegation of
Korea associated itself with the view expressed by the Japanese delegation in its paper.  However, it
felt that there could be a possibility for conflict at the level of implementation.  To its knowledge and
as indicated by the delegation of the United States, empirical data which could prove this possibility
had not yet been accumulated.  Therefore, it would be premature, at this point in time, to discuss the
possibility of amending the TRIPS Agreement in th is connection.  Rather, the Council would need to
seek a solution to avoid such a possible conflict within the framework of both instruments.  For
Korea, it would be essential to have an exchange of information between the Secretariats of the CBD
and the WTO.  In this regard, it appreciated the effort of the Brazilian delegation to introduce
information as to what had been discussed and decided within the CBD into the WTO discussion.
197. The representative of Venezuela expressed the view that the Brazilian communication
(document IP/C/W/228) was a most useful document, not only because its structure would enable the
Council to discuss in a systematic manner the varied and complex problems related to Article 27.3(b),
but also because it had clearly highlighted the interests and concerns that the delegation of Venezuela
shared in relation to these issues.
198. With regard to the issue of the review of Article 27.3(b) and development, her delegation
wished to recall that, according to the mandate given by the General Council in February 2000, the
reviews foreseen under the WTO Agreement must be implemented taking into account the
development dimension.  The review of any provision of the TRIPS Agreement should be undertaken
within the general framework of the principles and objectives of the Agreement, as established in
Articles 7 and 8.  In this perspective, she drew a parallel with Article IV of the GATS regarding theparticipation of developing countries.  In the context of the TRIPS Agreement, it would be useful to
examine how the reviews under that Agreement, and in particular that of its Article 27.3(b), could
yield satisfactory results in areas of intellectual property that were of interest to developing countries,
such as the protection of traditional knowledge held by indigenous and  local communities.
199. As for technical issues related to patents, Venezuela agreed with India that the TRIPS
Agreement provided that patent protection should be granted to those products that met the three
conditions for patentability:  novelty, inventive step and industrial application.  However, the
Agreement did not define the three concepts.  Therefore, it would be up to domestic laws and
practices of the national patent offices to define the level of protection;  in this regard, many
differences between countries existed.  Some of the problems resulting therefrom had been
highlighted by India, the African Group and Br azil.  On the other hand, although the TRIPS
Agreement laid down the obligation to provide patent protection for micro-organisms,microbiological processes and non-biological processe s, it did not define any of these concepts.  As
Brazil had said in its document, these were defined in a completely different manner according to the
context in which they are used - scientific, legal or commercial.  That  would create uncertainty as to
implementation of the obligations of the Members concerning this provision.  In that regard, her
delegation agreed with Brazil that clarification of these provisions would not be superfluous, butwould be necessary to determine the scope of the exceptions of Article 27.3(b).IP/C/M/29
Page 72
200. With regard to technical issues related to sui generis  system of protection for plant varieties,
her delegation was of the view that the review of Article 27.3(b) should not reduce the margin of
flexibility for Members to comply with their TRI PS commitments.  In this regard,  she expressed
appreciation for the comments made by the delegation of the United States in document IP/C/W/209,
in which the United States did not appear to be insisting on having the 1991 Act of the UPOV
Convention as the basis for the protection of plant varieties, but to be contributing to the discussion bydescribing what, in its view, would form the elemen ts of an effective system of protection.  However,
the references related to these elements were extracted from the United States Patent Law and
repeated the provisions of the 1991 Act of the UPOV Convention.  If these criteria were to be
adopted, this would reduce the flexibility for the sui generis  system option and might not be adequate
for most developing countries.  As several developing countries had mentioned in the TRIPS Council,
they would be inclined to adopt national laws that would include sui generis  protection for plant
varieties and would be adjusted to the specificities and needs for development and national objectivesof agricultural policy, such as food security.  In this regard, Venezuela agreed with Brazil that
international instruments other than the 1991 Act of  the UPOV Convention were also relevant to the
review process of Article 27.3(b), including the FAO International Undertaking on Plant Genetic
Resources and the CBD.  Venezuela also agreed with Brazil that the WTO should take part in
inter-agency international efforts in order to es tablish a coherent and harmonious link between all
these instruments.
201. As regards the link between the review of Article 27.3(b) and the conservation and
sustainable use of genetic material, as well as its link with the concept of traditional knowledge and
farmers' rights, Venezuela believed that it would be important to clarify the link between the TRIPS
Agreement and the CBD so that both instruments could be complementary in their implementation.For Venezuela, there was no incompatibility between these two instruments and the provisions of the
new Andean Decision 486 on Industrial Property as well as Decision 391 on Access of Genetic
Resources were examples of how both instruments could be implemented in full harmony.  In
Venezuela's view, the protection of industrial prope rty should take due account of the protection and
respect of the genetic and biological heritage as well as of traditional knowledge of indigenous,Afro-American and local communities.  For these reas ons, the grant of patents for inventions based on
material obtained from this heritage or from that knowledge should be subject to the condition that
this material had been obtained in conformity with the requirements of national laws and relevant
international treaties.  In document IP/C/W/228, Brazil had highlighted three aspects of the
relationship between traditional knowledge and Article 27.3(b), which her delegation considered ofutmost importance for the organization of the work of  the Council:  i.e. how to prevent the granting of
patents on elements of non-authorized traditional k nowledge;  how to documen t this knowledge;  and
how to establish a sui generis  system for its protection.  Venezuela held the view that clarification of
the link between the CDB and the TRIPS Agreement would require adjustment of the latter so as to
improve, at the international level, the efforts that had been made nationally and regionally in order to
implement Article 8(j) and other provisions of the CBD.  Thus, the TRIPS Agreement would
incorporate the fundamental principles of the CDB:  i.e. the principle of the sovereign rights of theState in respect of genetic resources;  prior informed consent;  and equitable sharing of benefits.  The
incorporation of these principles into the TRIPS Agreement would not necessarily increase the cost
for patent applicants;  and they would be vital for achieving invaluable environment objectives.  As
regards the protection of traditional knowledge pertaining to indigenous and local communities, due
to the limits of the intellectual property system to protect many elements of such knowledge,Venezuela believed that developmental objectives could be achieved if the review of the TRIPS
Agreement could result in the adoption of a sui generis  regime which included minimum levels of
protection for such knowledge as it had done for other areas of knowledge and technology.  The work
carried out by other international organizations could also be a useful contribution to the TRIPS
Council's discussions on the review of Article 27.3(b).IP/C/M/29
Page 73
202. In response to comments made by Australia, she said that Decision 486 of the Andean
Community would come into force on 1 December  2000.  Therefore, there was not yet any
information as to the practical enforcement of this Decision.  Venezuela was aware of the work in
other international organizations such as the Intergovernmental Committee of WIPO.  National and
regional experiences in the area of the protection of traditional knowledge would be voiced in the
forthcoming meeting of that Committee and the work there could also be useful for the work of theTRIPS Council.
203. The representative of Malaysia, noted that the review of Article 27.3(b) focused heavily on
the scope of patentability, the protection of traditional knowledge and rights indigenous peoples, and
an effective sui generis  system for the protection of plant varieties.  The scope of the patentability of
plants and animals as well as of the exceptions allowed under Article 27.3(b) had been debated on the
basis of legal, economic, ethical and religious grounds.  Some Members had urged the patentability of
life forms to be excluded on ethical grounds as well as on the ground that, as they were naturallyoccurring, life forms were discoveries and not inventions.  There were also issues linking patentability
with development.  In her delegation's view, all th ese issues could be further explored in the review
process of Article 27.3 (b).
204. Her delegation agreed with the view that the flexibility that existed under Article 27.3(b) to
exclude certain plants and animals from patentability should be maintained.  However, it would beopen to work towards clarifying the terms "micro-organism" or "microbiological process".
Patentability was determined by the notion of invention.  The three tests of novelty, inventive step and
industrial application had been interpreted differently and there were disputes on whether some
patents granted concerned discoveries or inventions.  Malaysia believed that greater clarity regarding
the test of novelty would better serve the current review under Article 27.3(b).
205. Regarding the protection of traditional knowledge and rights of indigenous peoples, while
discussions were ongoing in other fora as well as in the WTO, Malaysia was of the view that, at the
national level,  Members party to the CBD could demonstrate the importance of this concept by
enacting national legislation that incorporated the re levant provisions to the CBD.  Malaysia believed
that, if this became part of national legislation, it could receive wider international recognition.
206. Malaysia supported the view that there was a need  to maintain flexibility regarding the choice
of an effective sui generis  system to protect plant varieties.  Clearly, the issue of farmers' rights versus
breeders' rights would have to be balanced in such a system.  The UPOV system was not necessarily
the only efficient system for plant variety protection and had not been recognized as such under the
TRIPS Agreement.  The flexibility accorded in Article 27.3(b) should therefore continue to bemaintained in the selection of an effective sui generis  system.
207. The representative of Bolivia agreed with the main points contained in the Brazilian
submission and also expressed support for the intervention by the representative of Venezuela.  As he
had already stated under agenda item G, Bolivia had not been able to participate fully in the Council's
discussions during this meeting on issues in which it had a great interest, because too many other
important meetings were taking place at the same time for a small delegation like his to be able to be
present at all of these continuously.  Therefore, it  would be important to his delegation, if a factual
summary could be prepared of the points made wh en the Council had met to discuss, in informal
mode, the relationship between the TRIPS Agreement and the CBD.  Such a request was not a novelty
in the WTO since, for example, in the framework of the Working Party on GATS Rules, a factual
summary had been prepared by the Secretariat concerning an informal meeting that had taken place
on 27 September 2000 as well as a summary by the Chairperson concerning an informal meeting on3 November 2000.IP/C/M/29
Page 74
208. The representatives of Brazil, India  and Peru  expressed support for the suggestion from
Bolivia.  In addition, the representative of Brazil said that the TRIPS Council had already used a
checklist approach before, for example, in connection with the review under Article 24.2.
209. The representatives of the Canada and the United States  said that their delegations could not
support Bolivia's suggestion.  The representative of Canada said that the majority of the points made
during the discussions on the matter during the meeting would be reflected in the minutes, which
should provide a comprehensive understanding of the key substantive points.
210. The representative of Bolivia regretted that there was no coherence in the positions of certain
delegations who, in the General Council, repeatedly  stated their understanding for the situation of
small delegations, but, in subsidiary bodies, expressed a different position.  As his delegation was
being prevented from having information on debates that had taken place in the WTO in informal
sessions, his delegation would have to review its position as to whether it should accept at all that
informal meetings be held.  This was yet another example showing that internal transparency in theWTO still left a lot to be desired.
211. The Chairperson proposed that he be authoriz ed to report to the Special Session of the
General Council concerned with implementation matters on the issue concerning the relationship
between the TRIPS Agreement and the CBD, and other implementation issues that had been referred
to the Council, on his own responsibility.13
212. The Council took note of the statements made and agreed  to proceed as proposed by the Chair
and revert to the matter at its next meeting.
K. REVIEW OF THE IMPLEMENTATION OF THE AGREEMENT UNDER ARTICLE 71.1
213. The Chairperson recalled that Article 71.1 re quired the TRIPS Council to review the
implementation of the Agreement after the end of the five-year transition period provided for in
Article 65.2.  The Council had had a number of discussions on how it should approach this general
review of the implementation of the Agreement.  At the Council's last meeting, the discussion had
focused on papers received from the delegations of Australia and India setting out those delegation's
thoughts in some detail on this matter.  At the previous meeting of the Council, he had expressed the
hope that it would be possible for the Council to take some decisions at the present meeting on how it
would organize the review under Article 71.1.  Howeve r, in informal consultations that he had held on
this matter, it had become clear that there was not as yet a sufficiently complete picture of the thinking
of delegations to permit it to take such decisions.  However, in these informal consultations, it had
appeared acceptable to delegations for the Council to agree on a target date prior to the Council's first
meeting in 2001 for the submission of suggestions both on the approach that it should take to thereview and the specific issues that delegations would wish to see taken up in the review.  He
suggested that the Council set this target date at the end of February 2001.  Although such a target
date did not of course rule out subsequent submissions, he hoped that it would yield a more complete
picture of the views of delegations both on approach and issues, so as to allow the Council to work
out, at its meeting in April 2001, a way of initiating the actual review.
214. The Council agreed to proceed as proposed by the Chairperson.
215. The representative of Malaysia, speaking on behalf of the ASEAN Members, said that
Article 71.1 unquestionably provided a mandate for a review of the implementation of the Agreement.
It set out clear procedures and the scope for this review, which many would agree was due to be
initiated by the year 2000.  In terms of scope, the review was to consider implementation of the
                                                     
13 See document IP/C/21.IP/C/M/29
Page 75
Agreement taking into account the experience that Members had gained in implementation.  The next
step for the Council would be, "having regard to the experience gained in its implementation", to
review it two years later and at identical intervals.  She recalled the decision of the General Council
dated 7 February 2000 which had agreed that mandated reviews should address the impact of the
agreements concerned on the trade and development prospects of developing countries.  The Council
should devote time at subsequent meetings to this issue in conjunction with consideration of othermandated items, such as those concerning geogra phical indications, Article 27.3(b) and non-violation
complaints.  The review should determine how the pr ovisions of the Agreement were consistent with,
and promoted, the objectives and principles of the Agreement, namely the promotion of technological
innovation, transfer and dissemination of technology, promotion of public interests in sectors for
socio-economic and technological development, and the promotion of public health and nutrition.
216. The representative of the United States said that the paper submitted by Australia
(IP/C/W/210) tracked the thinking of his own delegation to a substantial degree.  As Australia had
noted, Article 71.1 directed the Council to review  the implementation of the Agreement when the
transition period for developing country Members ended, i.e. on 1 January 2000.  The Council was
already undertaking reviews of legislation implem enting TRIPS obligations by developing country
Members and newly acceded Members adding to the considerable amount of material already
produced regarding implementation by developed country Members.  In addition to that information,the Council had available Members' submissions under Article 24.2 regarding geographical
indications and under Article 27.3(b) regarding the protection of plants and animals under their patent
laws and practices.  At the completion of the developing country Members' reviews, the Council
should have a clearer picture of implementation and, at that point, it would be appropriate for the
Council to begin its review of the functioning of the Agreement in the light of the experience gained
in its implementation.  As part of that review, the effect that implementation had had on development
should certainly be examined.  Article 71.1 also authorized the Council to review the Agreement in
the light of any relevant new developments that might warrant modification or amendment of the
Agreement, as pointed out by a number of delegations at the previous meeting.  The Council should
avoid reinventing the wheel and, where possible, should use information available in other fora,particularly WIPO, to carry out its work.  This structure would enable the Council to carry out its
responsibility in a more effective and efficient manner.
217. The representative of Korea reiterated his delegation's support for the approach set out in the
Australian paper, which clearly set out the nature of the review mandate under this provision:  its
structure, its scope and a possible approach for present and future standards in respect of intellectualproperty rights.  Thus, there would be four key sectors for possible consideration by the Council in the
context of this review.  His delegation had benefited greatly from the informal survey of the
notifications of legislation under the Agreement and the Council's review thereof, which had been
drawn up by Australia at the request of APEC.
14  He suggested that the Secretariat might prepare a
background note on the basis of that informal survey, which could help developing country Members
which were yet to go through the procedures in question.  Regarding the scope of the review, he
expressed support for the suggestion that the Council have a discussion on measures to counteranti-competitive abuses of intellectual property rights under Article 40, in respect of which
insufficient notifications had been received, as pointed out by Australia.  His delegation was also in
favour of a discussion on the relationship between intellectual property rights and standardization,
which had emerged as a controversial issue.  Finally, the Council needed to ensure that the review of
the implementation of the Agreement under Article 71.1 would not duplicate the review of nationalimplementing legislation notified under Article 63.2.
                                                     
14 See Australia's intervention under agenda item F above.IP/C/M/29
Page 76
218. The representative of Australia said that the mandate under Article 71.1 represented both a
historic opportunity to promote the objectives of Article 7 at the level where it counted, i.e. where
these objectives had been implemented in national intellectual property laws, and a firm obligation to
carry out a comprehensive review of how the Agreement had been implemented.  Her delegation had
set out in its paper (IP/C/W/210) its views on how this mandate could be discharged in a way that
would also address major intellectual property-related issues jointly confronting Members, and thatwould go beyond issues of whether specific articles had been implemented and involve a broader
engagement of the intellectual property system.  The Council should not let this opportunity pass and
should take a broad and inclusive view so as to allow a more fruitful consideration of these issues.  As
a matter of practical reality, the derivation of benefits from the intellectual property system, and even
its appropriate balancing and calibration to match national social, economic and development issues,
involved much more than the basic framework for intellectual property protection established in line
with the TRIPS Agreement.  There was a wide range of factors:  policy choices made within theTRIPS framework;  related regulatory systems;  choices about the relative allocation of resources;
capacity development and application of training resources;  awareness raising and intellectual
property education.  Members were, perforce, accumulating a rich body of experience in each of these
domains about the optimal implementation of intellectu al property law.  It would be most unfortunate,
if this unique opportunity to draw on this pool of expertise were to be passed up by the Council.
Certainly, there had been considerable focus on how laws and legal and administrative systems had
been developed and adapted to meet the standards of the TRIPS Agreement.  The review of national
intellectual property systems by the Council had addressed this mostly in a piecemeal manner, due to
its question-and-answer format.  Consequently, there had been little consideration of how
implementation had been undertaken as an overall exercise.  As an illustration of how this hadoccurred in one jurisdiction at least, Australia  had distributed an informal paper on how it had
approached the TRIPS implementation process, focusing on legal and administrative issues that had
arisen and practical lessons that had been learnt.  This paper had originally been developed for APEC
partners, but had also been distributed by her delegation to Members as an appendix to a technical
assistance manual on notification and review of TRIPS legislation in 1999.
15  Her delegation was
happy to make further copies available to any delegation.  One of the practical lessons had been that
domestic legal reform and implementation of TRIPS standards could be merged;  it was possible in
some instances to use the process of TRIPS impl ementation to accommodate in parallel a domestic
process of intellectual property law reform.  The story had not concluded with the initial phase of
TRIPS implementation.  Since Australia had formally complied with its basic TRIPS obligations,there had been a continuing process of review and reform of the intellectual property system, always
intended in one way or another to ensure that the protection of intellectual property rights would do
what it was supposed to do in the terms of Article 7, i.e. to ensure that it would promote social and
economic welfare;  that it would offer mutual benefi ts to producers and users of technology;  and that
it would ensure a balancing of rights and obligations.  In this sense, TRIPS implementation could be
seen as an ongoing task, one entailing continual development of the legal and administrative
mechanisms necessary to derive the benefits of the intellectual property system.  This was not an easytask, but one that could be facilitated by learning from the experience of many other countries that
were going through similar processes, engaging in similar debates and looking for similar solutions.
In its paper, her delegation had highlighted a number of areas where various domestic reviews and
inquiries had been underway in Australia and where the issues canvassed were of relevance to
concerns similar to those raised by many delegations  in relation to the TRIPS Agreement.  In general,
the subject areas to be addressed were:  the interaction between intellectual property law and
competition policy;  intellectual property and access to genetic resources and access to the benefits of
gene technology;  intellectual property rights in traditional and cultural contexts;  and intellectual
property in the digital environment.  In each case, Australia had been dealing with questions of
effective implementation, application and management  of TRIPS standard-intellectual property rights
in a way that sought to ensure that the objectives set out in Article 7 would be effectively met.  Her
                                                     
15 See Australia's intervention under agenda item F above.IP/C/M/29
Page 77
delegation would like to promote the full exchange of experience of practical solutions in these areas
in the expectation that this would facilitate a better outcome for all.
219. The representative of India said that Members' approaches to the review under Article 71.1
were evolving.  His delegation wished this review to be broad, inclusive and flexible.  He agreed with
Korea that the Council should bear in mind not to duplicate the reviews of national implementing
legislation notified under Article 63.2.
220. The Council took note of the statements made.
L. NON-VIOLATION COMPLAINTS
221. The Chairperson recalled that, at the previous  meeting, the Council had received a formal
submission from Australia (IP/C/W/ 212) and a non-paper from Korea (JOB(00)/6166).  In the further
exchange of views that the Council had had on the matter, Members had also referred to the earlier
papers submitted (document IP/C/W/191 from Brazil, Canada, the Czech Republic, Hungary and
Turkey;  and document IP/C/W/194 from the United States).
222. The representative of Hungary expressed surprise and disappointment that despite the interest
shown by almost the entire membership, as reflected in the statement of the Chairperson of the
General Council at its meeting of 17 October 2000, the letter on implementation from him to the
Chairperson of the Council for TRIPS failed to ca ll on the Council to come to an early understanding
on the scope and modalities of non-violation complaints pursuant to the TRIPS Agreement and reportback to the General Council and also failed to urge Members to exercise due restraint in the
meantime.  Before commenting on the useful contri butions submitted before the last meeting of the
Council, his delegation would like to make some general remarks.  He referred to paragraph 42 of the
Appellate Body report on the first Indian patent  case (WT/DS50/ABR), which stated: "Whether or not
'non-violation' complaints should be available for disputes under the TRIPS Agreement is a matterthat remains to be determined by the Council for TRIPS pursuant to Article 64.3 of the TRIPS
Agreement.  It is not a matter to be resolved through interpretation by panels or by the Appellate
Body."  Whilst he acknowledged that this co mment had been made during the five-year period
established by Article 64.2, his delegation believed that the Appellate Body's report thus gave two
important pointers as to the intent behind Article 64.3.  Firstly, it was a question and not a givenwhether or not non-violation complaints should be available for disputes under the TRIPS Agreement;
and, secondly, the development of scope and modalities, if any, should be resolved through direct
discussions among the entire membership and not through interpretation by panels or the Appellate
Body.  Hungary was taking part in this discussion exactly on this basis:  the examination of the
possible scope and modalities did not prejudice whether or not this remedy should be available underthe TRIPS Agreement.  In its view, it was exactly on the basis of this examination that the
membership could collectively determine whether or not this remedy should be available.
223. Turning to the definition of a "measure" his delegation had doubts as to whether the acts of
private parties (paragraph 7 of the Korean non-paper) should be taken into account, in addition to
national laws and regulations and possibly other legally enforceable government actions, in the
consideration of the existence of a measure.  Both Article XXIII:1(b) of the GATT and Article 26.1 of
the DSU spoke about government measures, i.e. the application of measures "by another contractingparty"  and "by a Member"  respectively.  Accordingly, as shown in paragraph 32 of the Secretariat
background note (IP/C/W/124), in order to mount a successful non-violation case under GATT, it
seemed to be essential that the complaining party show the existence of a measure attributable to the
respondent party.  Korea, in paragraph 8 of its non-paper, had said that the Council "may"  consider
"the scope" of the subject matter of non-violation complaints under the TRIPS Agreement, butHungary would go a step further and say that, in  line with Article 64.3, the Council not only "may"
but rather "should" consider the possible scope of these complaints.  At present, his delegation tendedIP/C/M/29
Page 78
to agree with Korea that the scope of the non-violation remedy under the TRIPS Agreement should be
carefully and narrowly defined to prevent possible ab use, provided of course that the Council agreed
about its availability.  He also wished to refer, in this connection, to the Australian submission and
agreed with the view that the wording of Article 64.3 suggested that the scope could be limited.  His
delegation also tended to agree with Korea that the difficulty of applying the concept of non-violation
in the TRIPS context was perhaps most apparent when examining the benefits that Members couldreasonably expect under the Agreement.  His delegation also shared Korea's view, as expressed in the
last sentence of paragraph 10 of its non-paper that, in order to ensure legal consistency and
predictability, it was essential that there be a common understanding among WTO Members as to
what the concept of benefits meant in the context of the TRIPS  Agreement.  In Hungary's view, some
important pointers could be found in Article XXIII of the GATT, in the DSU and in GATT/WTO
jurisprudence.  Article XXIII of the GATT and Article 26 of the DSU tied benefits to contracting
parties/Members.  Therefore, as Australia pointed out in section C of its paper, the resultant benefitsfrom TRIPS standards should be those that accrued to WTO Members and should not be mixed with
the interests of individual private right holders in th e exploitation of their intellectual property rights.
The Appellate Body report on the first Indian patent  case stated, in paragraph 36, that the concept of
the protection of reasonable expectations of contracting parties relating to market access concessions
had been developed in the context of non-violation complaints.  The problem here, as set out in detailin document IP/C/W/191, which Hungary had jointly submitted with Brazil, Canada, the Czech
Republic, the European Communities and their member States and Turkey, was that the TRIPS
Agreement was not a market access agreement as such.  The Agreement set out minimum standards,
which were not similar to tariff concessions, or specific commitments under the GATS.  Therefore, it
would seem logical that the benefits that Members could reasonably expect from the standards laiddown in the TRIPS Agreement were different in natu re from the benefits that accrued to them under
the GATT or the GATS.  In this connection, he unde rlined that Article XXIII:3 of the GATS limited
non-violation complaints to benefits accruing from specific commitments undertaken by Members.
Regarding the concept of "competitive relationships", as Korea had stated in paragraphs 13-14 of its
non-paper and could be seen from paragraphs 35-45 of the Secretariat background note, panelsdealing with non-violation cases had so far concentrated on whether, as a result of a conforming
measure that could not have been reasonably anticipated, the competitive relationship between
products or services had changed, nullifying or impairing the benefits accruing under the given
agreement to the complaining party.  Given the different nature of benefits that could reasonably be
expected from the TRIPS Agreement, in Hungary's view, it was doubtful whether, and if so, to whatextent, the concept of competitive relationships was applicable in the TRIPS context.  The
examination of this question was of special importance because it could shed light on whether there
was a genuine need for a non-violation remedy under the TRIPS Agreement.  Korea, in paragraph 12
of its non-paper, had raised the question of how the objectives and principles of the TRIPS Agreement
as stated in Articles 7 and 8 were relevant to the concept of benefits.  Hungary believed that the
question was pertinent and that the Council should carefully consider the possible implications of the
introduction of the non-violation remedy in particular with respect to Article 8.  He agreed withAustralia that the Council should take a look not only at the definition of benefits or reasonable
expectations but also at how their nullification and impairment or the impediment of the objectives of
the TRIPS Agreement could be assessed and how their extent could be determined.  These questions
were obviously very complex and needed serious consideration.  Finally, he wished to mention that in
accordance with Article 64.3 the Council should also discuss the availability of "situation complaints"under the TRIPS Agreement and their possible scope and modalities. The Council should also
examine the possibility of bringing a case under the TRIPS Agreement citing the impediment of the
attainment of any of its objectives.  He had not seen these elements in Korea's non-paper.  When
discussing these issues, the Council should not lose sight of the fact that even the GATS (in
Article XXIII), which obviously was an agreement with more of a market access character, did notallow Members to bring a situation complaint or a case citing the impediment of any of the objectives
of that Agreement.IP/C/M/29
Page 79
224. The representative of Korea said that his delegation's non-paper was designed to provide
inputs into the discussion by identifying a number elements that might be considered in the discussion
on the scope and modalities of non-violation complaints.  It was not intended to prejudge the outcome
in any way.  It had been prepared on the basis of an analysis of the TRIPS Agreement, panel reports
and the negotiating history of the TRIPS Agreement.  At the Council's previous meeting, the
European Communities had enquired about the origin of the concept of "competitive relationship",and the Hungarian delegate had briefly touched on this concept at the present meeting.  It was a
concept used consistently in GATT panel reports dealing with non-violation complaints with regard to
the third requirement, namely nullification or impairme nt of a benefit as a result of the application of
a measure.  It should be demonstrated that the competitive position was being upset by the application
of a measure not reasonably anticipated.  This concept was also well set out in section III.A.5 of the
Secretariat's background note (IP/C/W/124) and in greater detail in the panel report on the Japanese
film case (WT/DS44/R).  He would respond to the specific enquiry made by the representative of
Hungary in due course.
225. The representative of Malaysia, speaking on behalf of ASEAN Members, said that the
non-violation provision in the TRIPS Agreement was based on Article XXIII of the GATT, which
provided for complaints based not on failure to fulfil obligations, but on nullification or impairment of
benefits, or an impediment to the attainment of an objective, due to the application of a measurewhether or not it conflicted with the Agreement,  or the existence of any other situation.  This
provision had introduced an element of uncertainty into the settlement of disputes under the TRIPS
Agreement, as the TRIPS Agreement was a minimum standards agreement different from those on
goods or services where there were negotiated concessions.  Hence, the nature of complaints that
could be brought before a panel was unclear.  The Australian and Korean submissions had pointed outthat key concepts, such as "benefits", "nullification or impairment" and "measure" were still unclear
and needed further clarification.  Other concepts, such as the "existence of any other situation" and the
"attainment of any objective of the Agreement", whether they referred to the TRIPS Agreement or
included other agreements needed to be clarified.  In this context, as far as the TRIPS Agreement was
concerned, there was acknowledgement of the need for clarification regarding Article XXIII:1(b)and 1(c) of GATT 1994, and in this respect the modalities and scope for non-violation complaints was
seen to need further examination.  The TRIPS Agr eement was hesitant in allowing the application of
non-violation complaints without due thought on the scope and modalities.  The Australian and
Korean submissions had provided some elements to be discussed as to the scope of non-violation
complaints.  These concerned, first, the exceptional nature of the non-violation remedy.  It had to berecognized that the remedy was only to be used under certain qualified circumstances as provided by
Article XXIII:1(b) and 1(c) of GATT 1994.  What did "measure" refer to in this context?  Did it have
a broader meaning than government instituted measures?  Did it only cover TRIPS-related measures?
If not, would it affect the sovereign rights of government to legislate in non-TRIPS areas?  Did the
"existence of a situation" include a situation that had not occurred as a result of any government
measure, or did it refer to a situation brought about by a measure unrelated to the implementation of
the TRIPS Agreement?  Did "nullification of a benefit" apply to benefits accruing to Members or toright holders?  Issues surrounding an impediment to attainment of any objective of the Agreement
bore examination as this related closely to Article 7 of the Agreement.  Korea's non-paper looked at
the importance of Articles 7 and 8 as they related to non-violation complaints and socio-economic
policies.  Australia and Korea had cited a number of Articles in which non-violation complaints
should not be sustainable, as they related to exceptions or limitations to intellectual property rights,such as Articles 13, 17, 24, 26.2, 30 and 40.  This proposal merited further consideration, together
with other provisions, such as Articles 21, 27.2, 27.3 and 31.  ASEAN's contention was that the
application of non-violation complaints should not:  undermine sovereign rights to legislate or
regulate for various valid legal, economic and development reasons;  should not change the balance of
the TRIPS Agreement;  should not result in new, responsibilities that had not been negotiated;  andshould not result in impediments to the use of legitimate TRIPS measures, such as compulsory
licensing.IP/C/M/29
Page 80
226. The representative of Australia said that his delegation's interest in promoting substantive
TRIPS Council work on this issue was well-known.  Its paper already illustrated that there were useful
clarifications that could attract a consensus, even though this was an intrinsically difficult issue.
Whilst thinking on this issue was still at an early stage, he urged delegations to consider the
recommendations in Australia's paper as a way of advancing towards substantive outcomes.  Korea's
non-paper was a further valuable contribution to the debate.  Such contributions were more likely toadvance Members' collective interest rather than relinquishing the Council's mandate and letting the
issue be determined by default.
227. The representative of India reiterated his delegation's view that non-violation could not apply
under the TRIPS Agreement.  His delegation had just received Hungary's paper and its initial reaction
to it was favourable.  The Council should consider the questions it raised about governments versus
private parties, competitive relationships and the link to Article 8.
228. The representative of Switzerland said that the expiration, at the end of 1999, of the five-year
period under Article 64.2 meant that non-violation complaints were possible under the TRIPS
Agreement since the beginning of 2000.  However, his delegation took a cooperative approach as
regards the Council's further discussions examining scope and modalities and the fact that no
consensus had been reached on scope and modalities during the five-year moratorium should not be
interpreted as preventing the Council from continuing this discussion.  In 1999, the Council had begunto examine the scope and modalities of non-violation complaints, but the issues involved had not yet
been dealt with in a conclusive manner.  Moreover, the modalities of situation complaints had thus far
not been discussed at all.  If Members still had legitimate concerns or believed that some areas
remained unclear, such as those mentioned in Ca nada's paper (document IP/C/W/127), then the
Council should address these concerns in order to find adequate solutions.  With such a discussion,and further inputs from Members, the Council could undertake valuable work, rather than leaving
these important questions to be resolved by the dispute settlement mechanism.  Given the concerns
among Members about outstanding issues, the lack of clarity regarding the application of
non-violation and situation complaints, and the possible benefits of such complaints in the TRIPS
context, debate on the relevant modalities should continue.  As long as these issues remained underdiscussion in the Council, Switzerland believed that Members should exercise due restraint in having
recourse to Article XXIII:1(b) and 1(c) of GATT 1994 in the TRIPS context.
229. The representative of the United States reiterated his delegation's view that the moratorium on
filing non-violation complaints under Article 64.2 had expired at the beginning of 2000.  The Council
was not required to produce recommendations on the scope and modalities of non-violationcomplaints.  Article 26 of the DSU and past GATT/WTO practice provided sufficient guidance to
panels and the Appellate Body to handle any non-violation complaint that might be filed.  The
elements listed by Australia in its paper (IP/C/ W/212) were considerations which a panel or the
Appellate Body would take into account as a matter of course.  For example, a non-violation
complaint lodged under the TRIPS Agreement could not impair the consistent application of another
WTO agreement, as Australia's paper implied.  Article 3.2 of the DSU expressly provided that
"Recommendations and rulings of the DSB cannot add to or diminish the rights and obligationsprovided in the covered agreements".  Article 3.5 al so provided that "All solu tions to matters formally
raised under the consultation and dispute settlement provisions of the covered agreements, including
arbitration awards, shall be consistent with those agreements and shall not nullify or impair benefits
accruing to any Member under those agreements, nor impede the attainment of any objective of those
agreements."  Given that the Marrakesh Agreement was the result of a single undertaking, it washighly unlikely that even absent this express language in the DSU a panel would determine that
something a Member had agreed to under one part of this single undertaking would nullify or impair
benefits accruing under another part of it.  Moreover, given that an essential element of a successful
non-violation complaint was that the action could not have been foreseen at the time the benefit was
negotiated, it would be obvious that if any WTO agreement provided for an action, that action wasIP/C/M/29
Page 81
foreseen at the time of negotiations and the non-violation complaint would fail.  The distinction
between violation and non-violation complaints had been sufficiently defined by panels under the
GATT and the same principles would be applied with respect to complaints under the TRIPS
Agreement.  The guidelines given by previous non-violation cases and by Article 26 of the DSU
would be applied by future panels with the same thoroughness and thoughtfulness as ever.  For these
reasons and those set out in the two contribution from the United States under this agenda item(IP/C/W/194 and informal document No. 4437 of 26 July 1999), no purpose was served by further
discussion of scope and modalities;  the Council should devote its precious time to carrying out its
responsibilities under other provisions of the built-in agenda.
230. The representative of Hong Kong, China recall ed that, at the Council's meeting in June 2000,
his delegation had expressed the view that the Council should continue the debate on the scope and
modalities for non-violation complaints.  It had supported document IP/C/W/191 by the European
Communities and co-sponsors, in particular the suggested follow-up action in paragraphs 12 and 13 ofthat paper.  Both the Australian and Korean contributions provided useful inputs to the discussion on
the scope and modalities for non-violation complaints, but neither addressed the fundamental question
as to whether the non-violation complaint was relevant to the TRIPS Agreement.  Hong Kong, China
shared the view expressed in IP/C/W/191, and by Hungary at the present meeting, that the TRIPS
Agreement was not a market access agreement as such.  He supported the Hungarian intervention on apreliminary basis and might revert to it at the next meeting.  The TRIPS Agreement was intended to
set minimum standards for intellectual property protection.  That was very different from the notion
that the TRIPS Agreement was a market access agreement.  Under Article XXIII of the GATT, the
"benefit" accruing to a Member had traditionally been a reciprocal trade concession negotiated, which
later proved to have been negated by non-tariff barriers or other policy measures adopted by acontracting party.  On the other hand, the TRIPS Agreement protected the intellectual property rights
of nationals of other Members.  It was difficult to see the analogy between a tariff concession
negotiated for the mutual benefit of contracting Members, where each gave away the right to impose
whatever tariff it could otherwise have imposed, with the simple multilateral recognition of rights of
nationals under the TRIPS Agreement where nothing was given away.  In sum, his delegation hadserious doubts that the TRIPS Agreement was a market access agreement.  It was dangerous to drift
down the road to a legal remedy like the non-violation complaint which was created to deal with the
negating of tariff concessions.
231. The Council took note of the statements made and agreed
 to revert to the matter at its next
meeting.
M. ELECTRONIC COMMERCE
232. The Chairperson recalled that, in July 2000, the General Council had agreed to invite the
TRIPS Council and three other subsidiary bodies, name ly the Council for Trad e in Goods, the Council
for Trade in Services and the Committee on Trade and Development, to pick up where they had left
off in their work on electronic commerce within th eir respective spheres of competence, to identify
cross-sectoral issues, and to report back to the General Council at its regular meeting in
December 2000.  At the previous meeting, the Council had heard an update from WIPO on the workof that Organization in connection with electronic commerce and had an initial discussion on the
matter.  Since then, two papers had been received, one from the European Communities and their
member States (IP/C/W/224), and another from Australia just prior to the meeting.
16
233. The representative of Australia said that the paper she had just submitted updated the paper
that her delegation had submitted in 1999 (IP/C/W/144).  It included a number of suggestions that
could be studied further in the coming months and then taken up in the TRIPS Council's final report to
                                                     
16 Subsequently circulated in document IP/C/W/233.IP/C/M/29
Page 82
the General Council.  The paper and the suggestions contained in it were intended to be consistent
with and support the approach outlined in the Council's earlier Progress Report of July 1999 (IP/C/18)
as well as the recent communication from the European Communities and their member States.
234. The period since the effective conclusion of the TRIPS Agreement and the present day had
seen the emergence of electronic commerce as a gl obal phenomenon, with fundamental impact on the
administration, definition and enforcement of intellectual property rights, the opportunities for theircommercial exploitation, mechanisms for distributing due rewards for creative endeavour, and the
possibilities of advancing related public policy objectives such as technology transfer and
dissemination, education, access to new technologies, and infrastructure development.  In her
delegation's view it was curious that the TRIPS Council had been virtually silent on the substance of
this issue, with the exception of a very general interim report sent to the General Council last year.
Even in the absence of the overall electronic commerce work programme, it would have been
incumbent on the TRIPS Council, under Article 71, to take account of the enormous impact oftechnological developments on the legal and administrative framework of intellectual property
protection.  Because it involved the impact of new technologies, there was a possibility that
consideration of electronic commerce issues could be seen essentially as dividing industrialized and
developing countries.  However, the more the issue was examined, the more it became apparent that
the interests of all WTO Members were engaged in some way.  For example, the explosive growth of
digital communication and information technology, and the increasing affordability of such
technology, was placing information on technological solutions in patent documentation within the
reach of millions who earlier had lacked any pros pect of access to such information, frequently in
jurisdictions where no patents applied to that technology.  At the same time, there were concerns
voiced in international debate that the patent system could work against the growth of electroniccommerce, and the entry into international markets by  small enterprises, if the key technologies for
internet trading were rendered effectively inaccessible by the operation of the patent system.  Overall,
the advent of electronic commerce had not circumvented the basic rules and principles of intellectual
property, but it could create new challenges for their effective and balanced application.  Her
delegation's paper sought to explore some of the key areas in which this challenge arose.  It wasintended to fit in with other contributions on this topic.  In particular, the European Communities'
useful submission (IP/C/W/224) set out many re levant issues about the TRIPS Council electronic
commerce programme and further study areas, alt hough there was one minor point of emphasis on
which her delegation would differ.
235. She said that a practical starting point for discussion in the TRIPS Council's work programme
was to confirm that existing TRIPS rules were t echnology neutral.  As such, they were equally
applicable to the digital environment and to the paper world.  The electronic commerce work
programme might also be an opportunity to clarify the application of some of the existing rules, so
that they were applied consistently in the dig ital environment.  She agreed with the European
Communities that consideration should be given to new international standards that had been
developed since the TRIPS Agreement had been concluded.  For example, regard could be had to the
WIPO Copyright Treaty, the WIPO Performances  and Phonograms Treaty and the WIPO work on
cyber-squatting and domain names.  While there were some areas where consideration should be
given to recently developed international norms, it was important to note that existing TRIPS
requirements were applicable to the digital environment.  Examples of such TRIPS provisions were
the principles of national treatment, MFN treatment and exceptions to exclusive rights.  These
principles lent themselves directly to application in the digital world to promote economic and socialdevelopment.  The TRIPS electronic commerce work programme might consider whether existing
provisions needed to be adapted or extended.  Any such consideration should be consistent with the
objectives of the TRIPS Agreement and other international standards.  Consideration of electronic
commerce implications would be beneficially focused on clarifying and exchanging experience on the
application of existing technology neutral norms (rather than focusing on assumed "shortcomings").Further, Article 71.1 reinforced the need to keep track of developments to ensure that the balance ofIP/C/M/29
Page 83
interests in TRIPS was appropriate.  Not keeping track of such developments would put Members'
policy interests in the hands of others.
236. As regards classification of products, she said that trade in intellectual property products via
electronic means challenged the traditional distinction between goods and services.  Transactions in,
for example, software products over the Internet, could be classified as trade in a good, a service, or
even both.  There was an increasing, highly valuable, set of cross-border transactions involvingintellectual property.  These included financial transfers for licence fees or royalties paid for the use of
intellectual property.  Such transactions were not necessarily captured by either goods or services.  A
useful classification option had been proposed by Indonesia and Singapore in a paper prepared last
year, being a category of trade in intellectual property.  While the overall issue of classification cut
across the WTO, the TRIPS Council should keep these issues under consideration, especially that
some international intellectual property transactions could be considered as an object of trade in
themselves.
237. As regards enforcement at the border, she said that one of the broader benefits of the
electronic commerce work programme would be to promote understanding of how electronic
commerce technology could facilitate trade and reduce the transaction costs and administrative
overheads.  It might be valuable to consider practical linkages between border control measures for
the enforcement of intellectual property rights and trade facilitation.  Coordinating intellectualproperty border control measures and trade facilitation via electronic commerce technologies could
ease the administrative burden of customs procedures and focus border enforcement efforts.
Information systems combining these elements could benefit all Members.  Enhancing border control
through such technology could also increase compliance with national laws implementing substantive
TRIPS provisions.  Members should consider ways  in which electronic commerce technologies could
be used to enhance border enforcement as a means of facilitating TRIPS compliance.
238. As regards international cooperation on enforcement, she said that a number of enforcement
issues raised by electronic commerce were essentially practical in nature.  Members would benefit
from sharing their national experiences and exploring practical options for addressing enforcement
issues.  In this context, it was worth noting Article 69 of the TRIPS Agreement, under whichMembers had agreed to cooperate with each other with a view to elimina ting international trade in
goods infringing intellectual property rights.  She suggested that Article 69 should be interpreted to
include infringements occurring in the electronic environment.  The Secretariat could coordinate the
exchange of national experiences about the use of el ectronic commerce to facilitate trade in infringing
goods.  The collation of information on practical problems experienced by Members would be usefulfor both ongoing discussions on how best to tackle  the issues and for training and awareness-raising
activities.
239. As regards the issue of jurisdiction, she said  that electronic commerce had stimulated the
growth of borderless or virtual transactions and the growth of trade in IP-rich products.  These
transactions had raised questions about the continuing efficacy of territorially-based jurisdiction.
Conflict between jurisdictions was not a new prob lem;  however, the scope for intellectual property
right infringement would grow.  The greater spread of TRIPS-consistent intellectual property systems
and more convergent national systems should assist to ease these problems.  The TRIPS Council
should continue to monitor developments in the question of determining the scope of national
jurisdiction in relation to intellectual property rights in the digital environment.  In this respect, regard
might be had to the upcoming joint meeting of WIPO and the Hague Conference on Private
International Law to discuss intellectual property issues related to international enforcement ofjudgments.
240. As regards patents, access to technology and the administration of intellectual property rights,
she said that the growth of electronic commerce had seen the development of new business methodsIP/C/M/29
Page 84
and models for the digital environment.  Issues had been raised about the patentability of new on-line
business methods.  As part of the continuing review of TRIPS implementation, Members could be
encouraged to exchange information about the operation and use of patents in the digital environment.
Electronic commerce technologies had vastly improved global access to technological information in
patent documentation.  Improved access, couple d with TRIPS requirements for disclosure of
technological information, facilitated the flow of technological information and reduced costs.  This
was in line with the fundamental objectives of the TRIPS Agreement.  Electronic commerce
technologies were also being used to practical ad vantage to improve the administration of intellectual
property rights.  This was occurring through improved communication of information between
national and international intellectual property offices, and increased public access to that
information.  Electronic commerce was providing useful ways of reducing the costs and
administrative burden of implementing TRIPS obligations for the administration of intellectual
property rights.  She suggested that appropriate recognition of the advantages of electronic commercein this area should be made in the final report to the General Council.  Further, she considered that a
useful outcome from the work programme would be to encourage Members to maximize, wherever
possible, the opportunities presented by electronic commerce to facilitate access to technology and the
administration of intellectual property rights.
241. As regards anti-competitive practices in the di gital environment, she said that electronic
commerce potentially raised anti-competitive issues pa rticularly in relation to intellectual property
licensing arrangements.  It was important that the intellectual property system functioned effectively as
a means of promoting technology transfer, especia lly considering the infrastructure concerns of
developing countries.  There were possible instances of anti-competitive behaviour in relation to some
online licensing arrangements such as click-through licences for the use of some websites.  Suchlicences could be anti-competitive under some national laws and might also conflict with permitted
exceptions in domestic legislation intended to balance rights and obligations in a TRIPS framework.
Member countries should be encouraged to exchange information about developments relating to
anti-competitive issues in the digital environment.
242. As regards a linkage of new copyright treaties to the TRIPS Agreement, she said that
electronic commerce had reached its current significance almost entirely since the conclusion of the
TRIPS Agreement.  As a result, the substantive TRIPS provisions on copyright did not fully address
issues arising in the digital environment.  Development of the WIPO Copyright Treaty (WCT) and the
WIPO Performances and Phonograms Treaty (WPPT) had in part been prompted by this lacuna in the
TRIPS Agreement and the Berne and Rome Conventions.   In this respect, it was worth notingArticle 71.2 of the TRIPS Agreement, which provided an accelerated amendment process for higher
levels of protection accepted in other multilateral agreements.  The intention of this provision seemed
to be that, where new international intellectual property standards emerged and were universally
accepted, the TRIPS Agreement should be amended in response to such developments.  Members
should consider means to recognize the WCT and WPPT principles in the context of the TRIPS
Agreement.  Further, the TRIPS Council should ma ke a statement that explicitly recognized the
relevance of the WCT and WPPT to copyright and related rights in the online environment.
243. As regards the WCT and harmonization of national laws, she said that countries could make a
practical contribution to copyright protection on-line by bringing their laws into line with the WCT
and WPPT.  An example of the way in which national legislation could be amended to take account of
the WCT, and to address digital copyright issues generally, was Australia's recently enacted
Copyright Amendment (Digital Agenda) Act.  The Digital Agenda Act adopted standards set out inthe WCT and the WPPT.  The legislation updated the existing copyright law framework to take
account of new technologies.  As the main features of the Act, she mentioned, firstly, that it
introduced a new technology-neutral right of co mmunication to the public.  This would apply to
works made available on the Internet and other on-line services, as well as works transmitted to the
public.  The new right would replace and extend the existing technology-specific broadcast right andIP/C/M/29
Page 85
the cable diffusion right.  Secondly, the legislation provided reasonable access for copyright users,
including libraries and educational institutions, to copyright material in electronic form (including
material available on-line).  Australia's approach had been to replicate the balance struck between the
interests of owners and users that applied in the print environment.  The amendments extended the
existing exceptions to the new communication right whilst also introducing some new exceptions.  An
example of a new exception tailored for the on-line environment was the exception for temporarycopies made in the process of a communication.  Such temporary copies would not infringe the
reproduction right.  The exception covered temporary reproductions made in the caching process as
part of an Internet transmission, or when browsing  or viewing a document on-line.  It aimed to ensure
the efficient operation of technical processes that underpinned new technologies, such as the Internet.
Thirdly, the legislation limited and clarified the liability of carriers and ISPs for copyright
infringements done by third parties using their facilities. Carriers and ISPs would not be liable for
infringing activities where they had not determined  the content of the communication.  Similarly, they
would not be liable for infringing activities where th ey had merely provided the facilities involved in
the infringement.  Fourthly, the legislation provided two new enforcement measures, so that copyright
owners could effectively enforce their rights in the on-line environment.  The legislation provided
sanctions against the dealing in, and manufacture of, devices for the circumvention of technological
protection measures.  It also provided sanctions against the intentional removal or tampering withelectronic rights management information.  Finally, a new statutory licence would be introduced for
retransmission of free-to-air broadcasts made by, for example, pay-TV operators.  The scheme would
provide equitable remuneration for owners of underlying copyright material contained in free-to-air
broadcasts, such as the owners of rights in TV scripts, sound recordings and music.
244. As regards the management of intellectual property rights, she said that electronic commerce
could bring the benefits of intellectual property protection to a wider range of beneficiaries through
more effective distribution of royalties.  Technology might provide a cost-effective and technically
feasible means of collecting and distributing revenue from international markets for right holders.
This was of particular importance to performers, composers and artists in developing countries.
These peoples' works were attracting increasing interest in international markets, but they might nothave been receiving due rewards due to the lack of the necessary infrastructure.  The progressive
implementation of the TRIPS Agreement was steadily increasing the legal scope for administration of
copyright and related rights.  The electronic commerce work programme could reflect the special
needs of developing countries and consider how the strengthened legal framework could be
complemented by enhanced administration of rights.  It could encourage technical cooperation withthe aim of extending the benefit of collective mechanisms for the administration of rights.
245. As regards trademarks in general and well-known marks in particular, she said that judicial
authorities in many countries had been considering issues raised about the use of trademarks on the
internet.  Greater information exchange and coordination of legal developments in the area would be
beneficial.  The work programme should take note of the value of greater exchange of information on
this issue.  Further, the Council should continue  to monitor developments in this area, including
WIPO's work on trademarks and well-known marks,  with a view to possible further substantive
consideration of the issue.
246. As regards Internet domain names, she said that the issue of trademarks and Internet domain
names had been the subject of much consideration by WIPO.  WIPO was an accredited provider of
dispute resolution services under the Uniform Dispute Resolution Procedure in relation to
trademark-based domain name disputes.  Since the introduction of this process, there had been lessopportunity for bad faith cyber-squatting of trademarks in the generic top-level domains .com, .org
and .net.  WIPO had begun a further investigation of the need for protection against bad faith domain
name registrations of identifiers other than trademarks.  This study was focusing on the bad faith,
abusive, misleading or unfair use in the domain name system of personal names, International
Non-proprietary Names for pharmaceutical substances, names of international intergovernmentalIP/C/M/29
Page 86
organizations, geographical indications and trade names.  This study was of interest to Members,
given the TRIPS provisions dealing with geographical indications and the incorporation by reference
of Paris Convention provisions dealing with abbreviations of international intergovernmental
organizations.  Members might also be interested in the consideration of these issues where the
current development of domain name policies might affect the future allocation of rights in countries
where Internet access was developing.  WIPO had also instituted a programme aimed at country code
top-level domains.  This programme included advice on the design of registration policies to take
account of intellectual property rights and advice on, and provision of, dispute resolution services.  In
light of these developments, the TRIPS Council should take account of WIPO's work in its
consideration of domain name issues.  Consideration should be given to whether and how it might be
appropriate to take account in the TRIPS Agreement of the outcomes from the WIPO processes.  It
was important to note that intellectual property rights, in particular trademarks, geographical
indications and the names of international organizations, continued to be defined, exercised andenforced at the level of domestic law.  The TRIPS Agreement provided the legal framework
underpinning these rights internationally.  Members would have a collective interest in ensuring that
the relationship between domain name arbitration mechanisms and national intellectual property law
within the TRIPS framework was clearly understood and articulated.  Further, Members would have
an interest in ensuring that the overall legal framework was developed in an inclusive manner.
247. The representative of Japan said that intellectual property issues related to electronic
commerce should be categorized broadly into two different areas.  The first category had a horizontal
or cross-sectoral nature.  The question of classifi cation, i.e. whether computer software transmitted
on-line should be treated as goods, services or intellectual property, was an example of a
cross-sectoral issue.  The question of international jurisdiction and choice of law was another exampleof a cross-sectoral issue.  This question was under discussion in the Hague Convention on Private
International Law and in WIPO.  At the same time, this question should be analysed also by an
appropriate forum in the WTO, e.g. an ad hoc task  force under the General Council, not only from the
perspective of private international law, but also in regard to its implications for the development of
electronic commerce.  The second category of issues was specific to intellectual property rights.  Theintellectual property specific issues in the context of electronic commerce should be dealt with in the
TRIPS Council.  For example, the question as to what kind of exploitation of intellectual property
rights on the Internet constituted an infringement of intellectual property rights should be discussed in
the TRIPS Council.
248. The representative of Hungary said that his delegation was interested in moving forward with
the important work on intellectual property and electronic commerce.  The submissions from
Members and the background note prepared by the Secretariat provided a wealth of information for
the Council to discuss in the coming year.  In Hungary's view, the paper from the European
Communities and their member States gave a fair account of what had happened so far in the WTO
and in other fora and succinctly informed Members of the priorities and the position of the European
Communities.  In the coming period, the Council for TRIPS should pay, in line with the WIPO
"Primer on Electronic Commerce and Intellectual Property Issues" and the objectives outlined in theCouncil's progress report to the General Council (IP/C/18), adequate attention to issues related to
trademarks, in particular in relation to domain names, as well as to problems related to the protection
and enforcement of geographical indications and industrial designs.  It might be desirable to discuss
liability of intermediaries in relation to electronic transmission of products protected by copyright.
The Council should engage in a substantive discussion on these matters, which should be adequatelystructured and avoid duplication of work.
249. The representative of the European Communities wished to underline the suggestions at the
end of his delegation's submission, indicating that there was a need for the TRIPS Council to identify
whether or not there were shortcomings in the TR IPS Agreement resulting from developments in the
area of electronic commerce, taking into account th e work undertaken in WIPO.  In this respect, itIP/C/M/29
Page 87
was obvious that the Council should look into the new international treaties which had been
concluded under the auspices of WIPO.  The Council should also examine how possible shortcomings
should be addressed in the Agreement.  He welcomed the paper tabled by Australia which his
delegation was still analysing.
250. The representative of India said that he was not yet in a position to react to the
communications from Australia and the European Communities and their member States.  He
requested the Chairperson, therefore, to keep his report purely factual, without committing in any way
other delegations to the views expressed by Australia and the European Communities and their
member States.
251. The representative of Korea expressed his delegation's support for the principles, observations
and approach advanced in the submission from the European Communities and their member States
(IP/C/W/224).  His delegation would not object to the suggestion that the Council should be given the
task of identifying shortcomings in the TRI PS Agreement resulting from new technological
developments, but it should first collect information on the present situation in each Member.  This
could be done either as a joint project with WIPO or on the basis of responses provided to a checklist
of questions.  The Council could build on such in formation when reviewing the relationship between
electronic commerce and the relevant provisions of the TRIPS Agreement and clarifying the
provisions in line with any decisions and guidance emanating from the General Council.  Possibleamendments were linked to the discussion under Article 71.1.  Therefore, it was incumbent on the
TRIPS Council to first secure full and complete implementation by Member countries of existing
provisions relevant to this area before embarking on a hasty debate aimed at amendment of the
Agreement.
252. The representative of Chile said that he was only in a position to provide initial comments on
the submission from the European Communities and their member States.  In paragraph 9 of its
proposal, the European Communities and their member States pointed out that the main questions
related to intellectual property where further studies were required concerned copyright and related
rights, patents, trademarks and the link between Internet domain names and trademarks and
geographical indications.  In a recent docume nt (WIPO/OLOA/S/RFC/2 of 13 November 2000),
WIPO had pointed out that, on 20 June 2000, the Di rector General of WIPO had received a request
from 19 WIPO member States to initiate a new study on questions relating to the recognition of rights
in connection with the use of Internet domain names.  One of the subjects included in this request and
which had been taken on board by WIPO concerned problems of bad faith, deceptive and unfair use
of geographical indications and geographical terms.  As the European Communities and their memberStates had suggested that the Council should study these questions, he wondered how such
deliberations by the Council would relate to WIPO's work on the same matter.  As regards
paragraph 14 of the paper from the European Communities and their member States, he wondered
whether the European Communities and their member States meant to say, when suggesting that the
Council should examine how identi fied shortcomings should be addressed in the TRIPS Agreement,
that the Council should prepare, for example, an  interpretation of existing provisions, or their
amendment or modification;  and, if so, in what context the Council should do so.
253. The representative of Uruguay said that the Chairperson's progress report, to be prepared on
his own responsibility, should be factual and that it would be up to the General Council to decide how
to proceed in this area.  The Council's earlier report (IP/C/18) referred to a number of issues in respect
of which the Council was of the view that more analysis was required, for example the issues
mentioned in paragraphs 10 and 11 of that report.  Irrespective of any decision to be taken by theGeneral Council at its meeting in December, the TR IPS Council had identified some issues specific to
intellectual property.  Eventually, the work programme should be continued in the TRIPS Council, at
least in regard to the points identified as bein g specific to the TRIPS Agreement or intellectualIP/C/M/29
Page 88
property more generally.  He would revert to the proposals from the European Communities and their
member States and Australia at the next meeting.
254. In response to the comments made by Chile, the representative of the European Communities
said that paragraph 9 of his delegation's submission referred to a recent document from the World
Intellectual Property Organization which dealt with electronic commerce and intellectual property
issues.  He was not aware of the letter referred to by Chile.  He would revert to the questionconcerning the relationship between work on this matter in the Council and in WIPO at the next
meeting.  As regards paragraph 14 of his delegation's paper, he confirmed the view expressed that
there might be a need to interpret existing provisions or to modify or amend existing provisions of the
TRIPS Agreement.  His delegation was of the view  that it would be appropriate for the Council to
attempt to identify possible shortcomings and had listed a number of core areas in which it believed
that, at least, further study was required.  Modification or amendment could be done in the framework
of Article 71.1 or of a new round of trade negotiations.  His delegation was ready to look intoproposals for subjects to be dealt with under 71.1, provided that they were not yet covered by other
reviews.  If, in the near future, progress could be made towards launching a new round, this might
provide a more appropriate framework.
255. The representative of the United States said that his delegation was still studying the
submissions from the European Communities and their member States and Australia.  Providing
preliminary comments on the contribution from the European Communities and their member States,
while expressing support for a number of the observations made in it, he wished to place a slightly
different emphasis on some issues over others and would use different terminology than that chosen
by the European Communities and their member States.  However, he agreed that the TRIPS
Agreement already provided a sound basis for the pr otection of intellectual property in the on-line
environment, just as it did in the off-line envir onment.  The Council should focus on how the TRIPS
Agreement already provided such a sound basis and perhaps less so on what potential shortcomings
there might be.  There were many more relevant aspects of the existing Agreement that warranted
examination.  It would be worthwhile to clarify the application of the TRIPS minimum standards in
the on-line environment.  The Council could usefully continue such a discussion.  He also agreed that,because of the rapid change in the on-line environment,  at an appropriate time in the future, in light of
the work being done in other fora such as WIPO, the Council might wish to clarify or adapt the
provisions of the TRIPS Agreement.  In response to Korea, he said that, in the coming year, the focus
should be on actual implementation of the Agreement rather than on starting to consideration any
amendments to the Agreement.
256. The representative of Australia said that her delegation looked forward to receiving comments
also from other delegations on its submission and to continuing substantive discussions on the matter,
including on the specific proposals outlined in Australia's paper.
257. The Chairperson proposed that he be authorized, in the light of the discussions at the
Council's previous and present meeting, to prepare, on his own responsibility, a progress report to the
General Council on the further work done by the TRIPS Council.17
258. The Council took note of the statements made and agreed  to proceed as proposed by the
Chairperson.
                                                     
17 See document IP/C/20.IP/C/M/29
Page 89
N. INFORMATION ON RELEVANT DEVELOPMENTS ELSEWHERE IN THE WTO
(i) Accessions
259. The Chairperson informed the Council that Oman had become the 139th Member of the WTO
on 9 November 2000 (WT/Let/357) and had committed itself to apply fully the provisions of the
TRIPS Agreement by the date of its accession to the WTO without recourse to a transitional period.
Croatia had become the 140th Member of the WTO on 30 November 2000 (WT/Let/359) and had also
committed itself to apply fully the provisions of the TRIPS Agreement by the date of its accession to
the WTO without recourse to a transitional period.  He suggested that the Council, in accordance with
the review procedures it had applied thus far in respect of newly acceded Members, add Albania,
Croatia and Oman to the list of Members whose national implementing legislation was scheduled to
be reviewed in June 2001.
260. The Council so agreed.
(ii) Dispute Settlement
261. The Chairperson informed the Council that, at its meeting on 26 September 2000, the DSB
had established a Panel in "United States – Section 211 of the Omnibus Appropriations Act of 1998",
a complaint by the European Communities and their member States.  On 26 October 2000, the
composition of the Panel had been determined by the Director General (WT/DS176/3).  Canada,
Japan and Nicaragua had reserved third party rights in the dispute.  At its meeting on12 October 2000, the DSB had adopted the Appellate Body report on "Canada - Term of Patent
Protection" (WT/DS170/AB/R) and the panel report  (WT/DS170/R), as upheld by the Appellate Body
report.
O. 
ANNUAL REPORT TO THE GENERAL COUNCIL
262. When resuming the meeting on 6 December, the Chairperson recalled that the Council's draft
Annual Report had been circulated in document IP/C/W/229 and updated in document
IP/C/W/229/Rev.1 so as to take into account the discussions at the present meeting.  A second revised
draft had been circulated following the receipt of suggestions for amendment in writing, as agreed by
the Council when it adjourned on 30 November.18  However, he proposed that the Council adopt the
version contained in document IP/C/W/229/Rev.1 as its Annual Report (2000) and have it forwarded
to the General Council, on the understanding that, in paragraph 22, the last sentence as well as the
reference to paragraph 34 of document IP/C/8 would be deleted;  and, in paragraphs 21, 22, 23, 24,
27, 28 and 29 all delegations from whom the Council had received communications would be
explicitly mentioned.
263. The Council so agreed.
__________
                                                     
18 Document IP/C/W/229/Rev.2.