WORLD TRADE
ORGANIZATIONTN/IP/W/7/Rev.1
23 May 2003
(03-2761)
Council for Trade-Related Aspects
of Intellectual Property RightsSpecial Session
DISCUSSIONS ON THE ESTABLISHMENT OF A MULTILATERAL SYSTEM OF
NOTIFICATION AND REGISTRATION OF GEOGRAPHICAL INDICATIONS
FOR WINES AND SPIRITS:  COMPILATION OF ISSUES AND POINTS
Note by the Secretariat
Revision
Introduction................................................................................................................... .........................3
General........................................................................................................................ ............................4
I. DEFINITION OF THE TERM "GEOGRAPHICAL INDICATIONS" AND
ELIGIBILITY OF GEOGRAPHICAL INDICATIONS FOR INCLUSION IN
THE SYSTEM..................................................................................................................... ......5
II. THE PURPOSE OF THE NOTIFICAT ION AND REGISTRAT ION SYSTEM ............13
III. WHAT IS MEANT BY A "SYSTEM OF NOTIFICATION AND
REGISTRAT ION" .................................................................................................................1 9
A. PROCEDURES .............................................................................................................................20
1. Notifi cation ................................................................................................................. .............22
2. Opposition................................................................................................................... .............27
3. Registration ................................................................................................................. ............31
4. Updates and modifications.................................................................................................... .33
5. Review/monitoring of the system...........................................................................................34
6. Contact point at Members' level............................................................................................34
B. COSTS ............................................................................................................................... .........34
1. Costs to governments......................................................................................................... .....35
2. Costs to producers ........................................................................................................... .......37
3. Costs to consumers........................................................................................................... .......38
4. Costs to the admi nistering body ............................................................................................39
C. POSSIBLE ROLE OF THE SECRETARIAT .......................................................................................40This document has been prepared under the Secretariat's own
responsibility and without prejudice to the positions of Members
and to their rights and obligations under the WTO.TN/IP/W/7/Rev.1
Page 2
IV. PARTICIP ATION ............................................................................................................... ...41
ANNEX 1 – LIST OF DOCUMENTS OF THE COUNCIL FOR TR IPS (1997-2003).................45
ANNEX 2 – PROPOSALS FR OM DELEGA TIONS.......................................................................50TN/IP/W/7/Rev.1
Page 3
Introduction
1. The third Special Session of the Council for TRIPS, held on 20 September 2002, agreed to
ask the WTO Secretariat to prepare a factual compilation of points made under the four categories of
issues identified in the Chairperson's informal note of June 2002 (JOB(02)/49).1  The compilation
would be made on the basis of the written communications and interventions made by delegations on
the subject of the establishment of a multilateral system of notification and registration of
geographical indications (GIs) for wines and spirits.
2. This note attempts to respond to the above-mentioned request.  It follows the structure of the
Chairperson's informal note (JOB(02)/49) by subdivi ding the points and issues according to the four
main categories listed by the Chair:
- definition of the term "geographical indications" and eligibility of geographical
indications for inclusion in the system;
- the purpose of the notification and registration system;
- what is meant by a "system of notification and registration";
- and participation.
3. Being a summary compilation, this note cannot, by its very nature, include a full reflection of
all the documents submitted and interventions made since 1997.  For a full appreciation of the
position of a particular Member, the original documents submitted by that Member and records of itsstatements in the Council's minutes should be consulted.  For this purpose, a list of documents issued
since 1997 is contained in Annex 1 to this note.
4. This document is based on papers submitted to, and the minutes of, the Special Session of the
Council for TRIPS together with the previous documents submitted to the Council for TRIPS to
which delegations have referred to in the meetings of the Special Session.
5. The first Special Session (8 March 2002) was to a large extent devoted to organizational
matters.  The second, third and fourth meetings (28 June, 20 September and 28 November 2002) dealt
with points and issues as identified by the Chairperson in his informal note (JOB(02)/49).
6. A first version of the compilation was circulated on 18 February 2003 as document
TN/IP/W/7.  This document was the subject of discussion at the fifth meeting of the Special Session
held on 21 February 2003.  This revised version attempts to take into account the comments and/or
new points made in that discussion as well as certain written comments received from a delegation.  Itreflects the state of the discussion as of the end of that meeting.
7. In this paper, the terms "multilateral system" or  "system" are used in the interest of brevity
and relate to the multilateral system of notification and registration of GIs for wines and spirits as
mentioned in paragraph 18 of the Doha Declaration.
                                                     
1 TN/IP/M/3, para. 110.TN/IP/W/7/Rev.1
Page 4
General
8. At the second meeting, as well as in TN/IP/ W/5 ("Proposal for a Multilateral System for
Notification and Registration of Geographical Indications for Wines and Spirits Based on Article 23.4
of the TRIPS Agreement") and TN/IP/W/6 ("Multilat eral System of Notification and Registration of
Geographical Indications for Wines (and Spirits)"), the scope of the mandate in Article 23.4 of theTRIPS Agreement and paragraph 18 of the Doha Declaration has been addressed.  Two issues have
been raised:  the first is whether the mandate in Article 23.4 and of the Doha Declaration covers GIs
for spirits;  the second relates to clarifications concerning whether or not a communication made by a
group of Members (TN/IP/W/3) is meant to cover GIs for products other than wines and spirits.
9. With regard to the question of the inclusion of spirits in the mandate, the following points
have been made:
- The mandate under Article 23.4 does not cover spirits.  The Singapore Ministerial
Declaration only includes "spirits" in the scope of preliminary work to be carried out
relevant to the negotiations specified in Article 23.4.  The reference in paragraph 18
of the Doha Declaration to the TRIPS Council " completing the work started...on the
implementation of Article 23.4… " confirms the intention of Ministers that, with the
exception of geographical indications for spirits, the multilateral system be otherwiseestablished in accordance with the mandate provided in Article 23.4.
2
- Members should therefore see, in the negotiating process, how to include a specific
obligation related to GIs for spirits so as to create a legal obligation under the TRIPS
Agreement.  To reflect the current limitation of the mandate in Article 23.4 to wines,
the term "and spirits" should appear in square brackets in documents.3
10. In reply, the following point has been made:
- Paragraph 18 of the Doha Declaration clearly mandates that spirits, in addition to
wines are to be covered by the system.4
11. TN/IP/W/3 ("Negotiations Relating to the Establishment of a Multilateral System of
Notification and Registration of Geographical Indications") states in paragraph 1 that "[p]ursuant to
Article 23.4 of the TRIPS Agreement, WTO Members shall negotiate in the TRIPS Council, the
establishment of a multilateral system of notification and registration of geographical indications".
This communication has raised concerns that the l ack of an explicit mention of wines and spirits
might give the impression that the proposed system would also cover other products.5  In this regard,
the point has been made that there is no mandate for such a system to cover any other product nor any
interest in it being extended thereto.6  The inclusion of other irrelevant issues would delay or impede
progress in the negotiations regarding the multilateral system for wines and spirits.7  In reaction to
these concerns, a point has been made that the system should be open to all GIs alike.8
                                                     
2 TN/IP/W/5, page 2, section A;  TN/IP/M/2, para. 18;  see also IP/C/W/189, footnote 1.
3 TN/IP/M/2, para. 18.
4 TN/IP/M/2, paras. 19, 25, 27, 30, 32;  TN/IP/M/3, para. 12.
5 TN/IP/M/1, para. 17;  TN/IP/M/2, paras. 14,  17, 18, 19, [21], 30;  TN/IP/M/5, para. 23.
6 JOB(02)/94, page 2;  TN/IP/M/2, paras. 14, 55.
7 TN/IP/M/2, paras. 14, 18, 30, 55.
8 TN/IP/M/2, para. 24;  TN/IP/M/5, para. 29.TN/IP/W/7/Rev.1
Page 5
12. At the fifth Special Session, concerns were raised about the mention in the above paragraph
of products other than wines and spirits in the first version of the compilation, given that the Special
Session's mandate is limited to wines and spirits.  It was proposed that any reference to such products
be removed from the compilation.9  In response, it has been said that the points in question had been
made in the Special Session and could not therefore be simply deleted if the compilation was to be anaccurate reflection of what had actually been said.  If anything that was not agreed should not be
included, the entire compilation would have to be withdrawn.
10
13. The Chairperson has said that Members have a very clear mandate to negotiate the
establishment of a multilateral system of notification and registration of geographical indications for
wines and spirits by the Fifth Session of the Ministerial Conference.  He has said that the Special
Session is required to fulfil the mandate in its entirety and not to go beyond the mandate.11
14. More specific points made regarding the scope of the mandate are discussed under the
relevant headings below.
I. DEFINITION OF THE TERM "GEOGRAPHICAL INDICATIONS" AND
ELIGIBILITY OF GEOGRAPHICAL INDICATIONS FOR INCLUSION IN THE
SYSTEM
15. In the List of Points and Issues for Discus sion at the June 2002 meeting circulated by the
Chairperson (JOB(02)/49, paragraph 4), he identified the following points and issues on this subject:
Delegations may wish to comment on the definition of the term "geographical
indications" for wines and spirits for the purposes of the Special Session's work,
including on whether it is accepted that the operative definition is that contained in
Article 22.1 of the TRIPS Agreement.  As regards possible differences of view aboutwhether a given term may or may not fall within the definition of Article 22.1, the
question that arises is whether this is a matter which should be addressed in the work
of the Special Session or whether this is a matter best left to be handled on a
case-by-case basis in the implementation of the notification and registration system
once it is negotiated and in force.  Under this item, delegations could also take upother issues relating to the eligibility of geographical indications for inclusion in the
system.
16. With regard to the applicability of the definition of geographical indications contained in
Article 22.1  of the TRIPS Agreement, the Chairperson in his concluding remarks at the June 2002
meeting of the Special Session said that he:
"…did not detect any delegation questioning that the definition of geographical
indications that should be used was that contained in Article 22.1 of the TRIPSAgreement."
12
17. With regard to the requirement that a geographical indication must be protected in its country
of origin and the applicability of Article 24.9 of the TRIPS Agreement  and with regard to the
applicability of the exceptions to protection provided for in Article 24 , the Chairperson in his
concluding remarks at the June 2002 meeting of the Special Session said that he did not:
                                                     
9 TN/IP/M/5, paras. 10, 13, 16, 26, 28, 30.
10 TN/IP/M/5, para. 27.
11 TN/IP/M/2, paras. 20, 137;  TN/IP/M/5, para. 31.
12 TN/IP/M/2, para. 138;  TN/IP/M/5, para. 32.TN/IP/W/7/Rev.1
Page 6
"…detect any disagreement with the proposition that, in determining eligibility, the
exceptions provisions of Article 24 would be relevant.  That included the notion that,
to be eligible for inclusion in the multilateral notification and registration system, a
geographical indication should be protected in its country of origin."13
18. With regard to the Chairperson's concluding remark in paragraph 17 above, it has been
suggested that the wording of the second sentence be aligned with that used in Article 24.9.  The
suggested wording would read as fo llows:  "That included the notion that eligibility for inclusion in
the multilateral notification and registration system required that geographical indications should be
protected in their countries of origin".14
19. As regards the issue of whether the Special Session needs to clarify in advance the
definition contained in Article 22.1 , the following main views have been expressed:
- One view has been that it is necessary to reach a greater measure of common
understanding of the scope and operation of the definition in Article 22.1 and
therefore what would be covered by a notification and registration system for wines
and spirits.15
- Another view has been that, since the definition in Article 22.1 has to be taken as it is,
such an exercise is not necessary and, indeed, does not fall within the mandate of theSpecial Session.
16
20. The following points have been made in support of the view that a greater measure of
common understanding of what would be covered by the definition in Article 22.1 is necessary:
- The need for greater clarity arises from some countries who have different
interpretations or a far-reaching and expansive approach to the definition underArticle 22.1.
17  It would shed light on what is to be "facilitated" by the system18 and
on how Members might expect others to interpret the definition of a GI.19  I t  i s
difficult to take a view on the possible elements of a system, particularly the question
of legal effect, without greater clarity on what might be covered.20
- Leaving the issue of whether a particular geographical indication for a wine or a spirit
is covered by the system to be determined on a case-by-case basis in the operation of
the system would be a recipe for unnecessary difficulties and disputes under the
system and might pose a particular burden on smaller countries, especially given the
sheer number of terms that may be registered.21
- It would be a mistake to assume that all disagreements over specific terms could
easily be resolved on a case-by-case basis after the multilateral system has been
negotiated, particularly in accordance with a cumbersome, highly regulatory andcostly arbitration system suggested by a Member.
22
                                                     
13 TN/IP/M/2, para. 138;  TN/IP/M/5, para. 32.
14 TN/IP/M/5, para. 48.
15 JOB(02)/94, page 2;  TN/IP/M/2, paras. 33, 36 , 43, 48, 53;  TN/IP/M/3, para. 54;  TN/IP/M/5,
para. 38.
16 TN/IP/M/2, para. 57.
17 JOB(02)/94, page 2;  TN/IP/M/2, paras. 36, 43, 48.
18 JOB(02)/94, page 2;  TN/IP/M2, para. 36.
19 TN/IP/M/2, paras. 48, 53.
20 TN/IP/M/2, para. 43.
21 TN/IP/M/2, para. 43.
22 JOB(02)/94, page 2;  TN/IP/M/2, paras. 36, 48.TN/IP/W/7/Rev.1
Page 7
21. Those holding the view that an effort to reach a greater measure of common understanding of
what is covered by Article 22.1 is not called for have made the following points in support of their
view23:
- Such an exercise would not be in accordance with the mandate given to the Special
Session by the Doha Ministerial Conference and the terms of Article 23.4.  The
mandate does not call for any such clarifications.24
- The establishment of a multilateral system would have no implications for the
definition under Article 22.1;  therefore, no Member would have to make changes to
the definition.25
22. The question of whether the definition should be broad or restrictive with all the exceptions
under Article 24 has been raised;  under IP/C/W/107/Rev.1, a strict one would be necessary while thiswould not be the case with the approach under TN/IP/W/5.
26  Another made is that full flexibility
should be applied as far as the definition of Article 22.1 is concerned while the exceptions under
Article 24 should be applied in a more restricted way.  Concerns have been expressed that the
multilateral system could be applied retroactively, i.e., that the exceptions under Article 24 could no
longer be available.27  In response, it has been said that exceptions will continue to apply.28
23. The issue has been discussed of how it could be ensured that terms that do not meet the
provisions of Articles 22.1 or 24.9 or fall under one of the exceptions provided for in Article 24
are not made inappropriately eligible for protection under the system .  In this regard, two main
views have been expressed:
- One view is that a "challenge" or "opposition" mechanism  should be provided in
order to filter out such terms on a case-by-case basis.29  A number of ways in which
this could be done have been suggested:
- One is that, under an opposition mechanism, a challenge should remain valid
until the disagreement has been settled through bilateral negotiations.  WTO
Members would be free to challenge those names that, prima facie , do not
meet the requirements of Article 22.1 of the TRIPS Agreement or have
become "the term customary in common language as the common name for
such goods or services".30
- Another is that, under an opposition mechanism, if bilateral consultations do
not settle the disagreement, there should be provision for a multilateral
possibility to settle the dispute, possibly in the form of a specific arbitration
system.31  The effect of an arbitration decision in the case of challenges in
relation to Articles 22.1 and 24.9 should be of an erga omnes  nature, meaning
that the term would not be entered onto the register.  This would save time
and effort for all participants and protect the interests of those Members who
had not challenged a notification.  In the case of successful challenges based
                                                     
23 TN/IP/M/2, paras. 28, 34, 57.
24 TN/IP/M/2, paras. 34, 57.
25 TN/IP/M/2, paras. 28, 34.
26 TN/IP/M/5, para. 58.
27 TN/IP/M/5, para. 59.
28 TN/IP/M/5, para. 61.
29 TN/IP/M/2, paras. 29, 34.
30 JOB(02)/70, para. 14.
31 IP/C/W/234 and 255;  TN/IP/M/2, para. 35;  TN/IP/M/3, paras. 29, 42.TN/IP/W/7/Rev.1
Page 8
on Article 24.4, 24.5 and 24.6, the registration would not be applicable in the
territory of the successful challenger.32
- It has also been suggested that other options could be envisaged, such as
independent verification by experts, the WTO Secretariat or another ad hoc
body.33
- Another view is that disputes over the eligibility of a particular term notified by a
Member should be resolved under the national law , rather than through an
opposition procedure managed under the auspices of the WTO.  In this regard, the
following points have been made:
- The national legislation of each WTO Member defines the scope and the
eligibility criteria to establish the link between the product and the
geographical origin.  The protection of the geographical indications is grantedaccording to the criteria established in Members' national laws.
Discrepancies regarding whether or not certain indications meet the definition
of Article 22.1 should not be resolved in the context of the multilateral
system of notification and registration but by each individual Member, in
accordance with its national legal system.
34
- It is important to bear in mind that geographical indications are territorial
rights;  therefore, the conditions for granting and exercising them are
established in the national legislation of WTO Members.35  The territorial
nature of GIs is reflected in the use, particularly in connection with
exceptions under Article 24, paragraphs 4 to 8, of the phrases "in the territoryof that Member" and "in that Member".
36
- Geographical indications are a form of intellectual property specified in
Article 1.2 of the TRIPS Agreement and, as set out in the Preamble of the
Agreement, intellectual property rights are private rights.  Individuals,
whether natural or juristic, are the right holders and are the ones to decidewhether to assert or to challenge rights.
37
- Further, it had to be recalled that, pursuant to Article 1.1 of the TRIPS
Agreement, Members are free to establish in their national systems their own
criteria for determining eligibility for protection of GIs, within the parameters
of Section 3, Part II of the TRIPS Agreement.38
- In the first instance, the best means of resolving a dispute over a notification
might be through recourse by any interested party under the national law ofthe notifying Member.  If that were successful, the Member would have to
withdraw the notification.  If unsuccessful and the term kept on the
multilateral register, its eligibility for protection should depend on the
national law of each other WTO Member where protection is sought, given
the territorial nature of the protection of geographical indications, like that of
                                                     
32 TN/IP/M/2, para. 35.
33 TN/IP/M/2, para. 29.
34 TN/IP/W/6, para. 7;  TN/IP/M/2, paras. 42, 54, 59, 61.
35 TN/IP/W/6, para. 9;  JOB(02)/94, pages 3-4;  TN/IP/M/2, paras. 41, 54, 56, 59.
36 TN/IP/M/2, para. 56.
37 TN/IP/M/5, para. 11.
38 TN/IP/W/6, paras. 1-2;  TN/IP/M/3, para. 45.TN/IP/W/7/Rev.1
Page 9
other intellectual property rights.39  The point has also been made that all the
existing multilateral systems of registration (e.g., for patents and trademarks)
rely ultimately on determinations under domestic law to ascertain eligibility
and protection.40
24. The view has been expressed that, while the opposition mechanisms proposed in
IP/C/W/107/Rev.1 and IP/C/W/255 provide a way of ensuring that registrations did not improperly
affect countries, the proposal contained in TN/IP/W/5 seems to allow for the notification of GIs that
do not meet the requirements of Article 22.1 of the TRIPS Agreement and still require national
authorities to refer to it.41  In response, it has been said that it should be noted that Article 23.4 refers
to "...geographical indications for wines eligible fo r protection in those Members participating in the
system".  It does not refer to "geographical indications for wines protected in those Members
participating in the system".  This provision recognizes that a geographical indication protected inaccordance with national legislation by a WTO Member participating in the system can appear on the
register even though another WTO Member participating in the system does not consider that same
geographical indication for wine (and spirit) as eligible in its territory.
42
25. In concluding the discussion at the June 2002 meeting, the Chairperson said that:
"…even on the question of how to deal with differences of view about what might
qualify for protection as a geographical indication, he believed that there might be a
common view that it was ultimately a matter for national authorities to determine
whether a given term met the criteria of national legislation – which should, of
course, be consistent with the requirements of the TRIPS Agreement."43
26. The point has been made that, if a Member accepts certain terms notified by another Member
as being eligible for inclusion in the system, the sa me criteria for eligibility should be applied to the
other WTO Members on a non-discriminatory basis .44
27. The point has been made that the provisions of the TRIPS Agreement relating to geographical
indications concern only goods , and do not cover services, concepts or symbols.45  The view has also
been expressed that the system should cover not only names but also signs or representations  that
evoke a geographical origin or place in relation to a product and meets the requirements of the
definition under Article 22.1, in particular the link between the quality, reputation or other
characteristics of that product and its geographical indication.46
28. In regard to non-geographical names  (i.e., terms that are not names of a locality, a region,
etc.), doubts have been expressed as to whether they would qualify under the definition contained in
Article 22.1 and thereby be eligible for notification and registration.47  In response, it has been said
that nothing prevents non-geographical names from being protected as GIs if they correspond to thedefinition of Article 22.1;  that is, as long as the link of the product with a quality, reputation and
other characteristic is proven.  There have been some precedents (e.g., "Vinho verde", "Cava",
"Cachaça").
48
                                                     
39 TN/IP/M/2, paras. 55-56.
40 JOB(02)/94, page 5;  TN/IP/M/2, paras. 71-72.
41 JOB(02)/70, para. 15.
42 TN/IP/W/6, para. 10.
43 TN/IP/M/2, para. 140.
44 TN/IP/M/3, para. 125.
45 TN/IP/M/2, para. 33.
46 TN/IP/M/2, para. 28.
47 TN/IP/M/2, paras. 33, 44.
48 TN/IP/M/2, para. 63;  TN/IP/M/3, paras. 118, 129.TN/IP/W/7/Rev.1
Page 10
29. At the fifth Special Session, it has been said that non-geographical names are also known in
certain Members as "traditional designations" or "traditional denominations";  these should not be
confused with "traditional expressions", which do not fall under the definition of geographical
indications of Article 22.1.49  See also paragraphs 30-35 below.
30. Concern has been expressed that some Members might seek to notify and register
"traditional expressions" , such as "vintage", "quality liqueur wine", "ruby", "tawny" or "château",
under the multilateral system.  The view has been expressed that it would be unacceptable that
common language terms such as these be capable of meeting the definition in Article 22.1.50  T h e
concern has also been expressed that some Members might seek to reserve such generic
production-related terms or descriptive terms to certain individual geographical indications, thereby
extending to such terms the benefits of the legal effects flowing from the register.  Similar concerns
have also been expressed in regard to efforts to reserve certain packaging configurations to certain
individual geographical indications.51  The point has been made that this issue needed to be examined
in the Special Session and clarifications provided so as to facilitate the work and avoid disagreements
in the future.52  It has been said that, if such terms were to find their way, de facto or otherwise, onto
the register proposed in IP/C/W/107/Rev.1, other Members would be deprived of using such generic
terms, processes and labels in the market of any country which has failed to lodge an opposition intime.
53
31. A number of reasons have been given for the strength of the concerns raised by this issue:
- experience with bilateral agreements in the area of wines and spirits indicates that
where geographical indications go, traditional expressions invariably follow;
- public claims have been made that traditional expressions are so closely linked to
geographical indications that they have in fact become geographical indications;
- there have been legislative attempts by a group of Members to protect traditional
expressions as if they are geographical indications.54
32. In response, the point has been made that traditional expressions are attached to a wine
bearing a geographical indication and there is therefore a distinction between a "traditionalexpression" and a "geographical indication".  Since traditional expressions are not protected as
geographical indications in their country of origi n, in accordance with Article 24.9, they would not be
eligible for notification and registration as GIs under the multilateral system.
55
33. In response, concern has been expressed that these statements do not clearly state that a
traditional expression is not a form of intellectual property.  In fact, by invoking the provisions of
Article 24.9 of the TRIPS Agreement, there appears to be a suggestion that the provisions of the
TRIPS Agreement on geographical indications could apply to traditional expressions.Notwithstanding the assurances given, what would happen if in the future a Member were to protect a
traditional expression as a geographical indication?  Further, the statements do not provide any
assurance that traditional expressions could not gain, de facto, each of the benefits extended to
geographical indications by virtue of a requirement that they could only be used in conjunction with a
                                                     
49 TN/IP/M/5, paras. 36, 43.
50 TN/IP/W/6, para. 8;  JOB(02)/94, pages 2-3;  TN/IP/M/2, paras. 37, 45, 52, 54, 60, 62;  TN/IP/M/4,
para. 108.
51 TN/IP/M/2, para. 45.
52 JOB(02)/94, page 3;  TN/IP/M/2,  para. 37;  TN/IP/M/3, para. 117.
53 TN/IP/M/2, para. 45.
54 TN/IP/M/5, para. 35.
55 TN/IP/M/2, para. 63;  TN/IP/M/3, para. 122;  TN/IP/M/4, para. 113.TN/IP/W/7/Rev.1
Page 11
wine bearing a specific geographical indication.56  In order to clarify that traditional expressions
should never be eligible for notification in the multilateral system, the following draft footnote has
been proposed:
"Members agree that so-called traditional expressions, or any other analogous term,
are not intellectual property.  Intellectual property rights cannot vest in these terms.  Itis further agreed that these terms do not and could never meet the definition of a
geographical indication or ever be subject to the protection conferred on geographical
indications in Section 3 of Part II of the World Trade Organization Agreement on
Trade-Related Aspects of Intellectual Property Rights.  Accordingly, Members
further agree that no claim will be made during or after the negotiations that a
traditional expression meets the definition of a geographical indication or that a
traditional expression is subject to the protection conferred under Section 3 of Part IIof TRIPS".
57
34. It has also been suggested that the Chairperson might make a clarification for traditional
expressions similar to the reassurance he had given in relation to the scope of the mandate (see
paragraph 13 above).58
35. In response, one Member has said that it has no intention of ever notifying traditional
expressions under the future multilateral system.59  Traditional expressions do not fall under what that
delegation understands as being geographical indications and cannot be subject to notification under
the multilateral system and could never be in that system.60  If the Special Session were to consider a
"negative" definition as in the proposed draft footnote, the exclusion of certification marks from the
multilateral system should then be considered as well since terms that are deemed certification markscannot necessarily be considered in all circumstances as geographical indications either.
61  Caution
has been also been expressed about an interpretative footnote to Article 22.1 on the ground that it
could prejudice existing rights under Article 22 including by limiting flexibility under that provision.62
The view has also been expressed that there is no need for any such footnote since there is nodisagreement regarding the definition under Article 22.1 which, inter alia , contains the requirement
that there be a link between, on the one hand, a specific geographic area and, on the other, a given
quality, reputation or other characteristic of the good.
63
36. The view has been expressed that the TRIPS Agreement clearly provides for country names
to be capable of constituting a geographical indication.64  It would not be legitimate to limit the size or
type of geographical unit that could be considered a GI.65  Hence, country names should be accepted
as GIs.66  The point has been made that, notwithstanding this, Members have had difficulty, in some
instances, in securing acceptance by some other Members of their country names as GIs.67  Members
who are interested in having their country names registered as GIs should bear this in mind, especially
since the final decision on whether a name would be accepted as a GI would be made by the country
                                                     
56 TN/IP/M/5, para. 35.
57 TN/IP/M/5, paras. 33, 34, 35, 38.
58 TN/IP/M/5, para. 35.
59 TN/IP/M/5, para. 44.
60 TN/IP/M/3, para. 122;  TN/IP/M/5, para. 37.
61 TN/IP/M/5, para. 44.
62 TN/IP/M/5, paras. 46, 49.
63 TN/IP/M/5, para. 42.
64 TN/IP/M/2, paras. 28, 46, 49, 59, 61.
65 JOB(02)/94, page 3;  TN/IP/M/2, paras. 38, 47.
66 TN/IP/M/2, paras. 46, 49, 59;  TN/IP/M/3, paras. 119, 126.
67 TN/IP/M/2, para. 49;  TN/IP/M/3, paras. 116, 124.TN/IP/W/7/Rev.1
Page 12
where protection is sought.68  There is need for confirmation of the right to use a country name as a
geographical indication and to have it accepted by the notification and registration system.69
37. In response, the view has been expressed that Article 22.1 does not contain any limitation
regarding the use of a country name as a geographical indication.  Any country name could be
protectable as a GI as long as the quality, reputation and characteristics of the product are essentiallyattributable to the geographical origin designated by the GI.
70  This means that it cannot be automatic
that a country name fits the definition of Article 22.1.71  For example, if a country has various GIs for
a product (e.g., wines) with various qualities, it would be difficult to create an "umbrella" GI which
would have one unique homogeneous quality.  The decision of whether a Member's name would meet
the definition of a GI is a question of evidence to be assessed by the national authorities of that
Member.72
38. Concerns have been raised about how to prove the linkage between the quality, reputation
or other characteristic of a product and the geographical origin .73  It has been suggested that this
could only be done on a case-by-case basis, taking into account all the relevant specifics of individual
situations.74  Another view is that it is necessary to have a collective understanding about the kind of
information to be included.75
39. Two questions have been raised in relation to process or production methods .  One
concerns whether a replicable production process can have an inherent link to a geographical
indication and be thus capable of constituting a geographical indication.76  The second question
concerns how much, or which stages, of the process in producing a good needs to be conducted in the
geographical location in question in order for that product to be able to use the geographical
indication referring to that area.77  In response to the second question, the point has been made that the
answer may vary depending on the product and the process involved (e.g., in the case of wines,
transportation may impact on the quality).78  The general point has been made that IP/C/W/107/Rev.1
does not touch upon the question of oenological practices or manufacturing specifications.79
40. The point has been made that indications of origin or indications of source  would not fall
within the definition of GIs provided for in Article 22.1 because they only refer to the place fromwhich a product originates and by themselves do not provide for the necessary link between the origin
of the product and its quality, reputation or other characteristic.
80
41. Proposals have been made concerning homonymous GIs :
- Under TN/IP/W/5, it is stated that "the same or similar [GI] … may be submitted by
more than one WTO Member, provided that the [GI] is recognized by each notifying
WTO Member in accordance with its national regime for protecting [GIs] …".81
                                                     
68 TN/IP/M/2, para. 61.
69 TN/IP/M/2, para. 46.
70 TN/IP/M/2, para. 63;  TN/IP/M/3, paras. 119, 126.
71 TN/IP/M/2, paras. 34, 63, 64.
72 TN/IP/M/2, para. 63;  TN/IP/M/3, para. 121.
73 JOB(02)/94, page 3;  TN/IP/M/2, paras. 33, 40, 50, 54.
74 TN/IP/M/2, paras. 34, 63.
75 TN/IP/M/2, para. 40.
76 TN/IP/M/2, para. 45.
77 JOB(02)/94, page 3;  TN/IP/M/2, paras. 39, 51.
78 TN/IP/M/2, para. 63.
79 TN/IP/M/1, para. 36.
80 TN/IP/W/6, para. 8;  TN/IP/M/2, para. 54.
81 TN/IP/W/5, page 5, section 2.TN/IP/W/7/Rev.1
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- Under IP/C/W/107/Rev.1, it has been proposed that "[I]n the case of homonymous
[GIs], each indication shall be registered subject to the provisions of Article 22,
paragraph 4 of the TRIPS Agreement".82
42. It has been said that it is not clear, under IP /C/W/107/Rev.1, what would happen if there is no
opposition to the notification of two homonymous;  presumably, all other WTO Members would haveto protect both geographical indications.
83
II. THE PURPOSE OF THE NOTIFICATION AND REGISTRATION SYSTEM
43. The List of Points and Issues for Discussion at the June 2002 meeting, circulated by the
Chairperson (JOB(02)/49, paragraph 5), identifies the following points and issues on this subject:
Delegations may wish to comment on this matter, including on the meaning of the
words "in order to facilitate the protection of" in Article 23.4.  A basic question that
arises is whether the purpose of the work is to facilitate, through appropriateprocedures, the obtaining of the level of protection that already has to be given to
geographical indications for wines and spirits pursuant to the TRIPS Agreement, not
to enhance that level of protection.  In this connection, delegations may wish to
comment on the way in which the provisions of Article 24 should be taken into
account.
44. The point has been made that the purpose of the multilateral system of notification and
registration of geographical indications should be to facilitate the implementation of the level of
protection already provided for in the TRIPS Agreement for geographical indications for wines
and spirits, i.e. the implementation of exis ting obligations, not to enhance that level of
protection .
84  It has been said that this flows from the fact that the obligation to protect geographical
indications is derived from the TRIPS Agreement itself and not from the register.85  The view has
been expressed that there is an important difference between Article 23.4 which refers to facilitation
and Article 24.1 which refers to increasing protection under Article 23 and that, for this reason,
Article 24.1 is not linked to the current negotiations.86
45. In his concluding remarks at the June 2002 meeting of the Special Session, the Chairperson
said that:
"…delegations who had spoken on the issue had said that the purpose of the
multilateral system should not be to increase the level of protection for geographical
indications for wines and spirits provid ed for in the TRIPS Agreement, but to
facilitate the obtaining of that level of protection."87
46. A number of views have been expressed on how the term "to facilitate"  as contained in
Article 23.4 of the TRIPS Agreement should be understood .  These include:
- the making available of the means of identifying which geographical indications
Members have to protect88;
                                                     
82 IP/C/W/107/Rev.1, D.2.
83 TN/IP/W/1, page 2.
84 TN/IP/W/6, para. 11; JOB(02)/70, para. 17;  TN/IP/M/2, paras. 68, 70, 71, 76, 79, 80;  TN/IP/M/5,
paras. 64, 67, 68.
85 TN/IP/M/2, para. 80.
86 TN/IP/M/2, paras. 70, 77.
87 TN/IP/M/2, para. 141.
88 TN/IP/M/2, para. 66.TN/IP/W/7/Rev.1
Page 14
- the establishment of a register where participating Members would make known, in
the framework of the WTO, geographical indications that are protected in their
territories and, in that way, make it "easier" for countries to obtain protection for GIs
identifying wines and spirits89;
- to "facilitate" the legal protection, a multilateral system should help administering
bodies to implement, and producers and consumers to avail themselves of, the legal
protection90;
- connoting movement forwards, along a horizontal pathway, towards a defined goal.
Its meaning is thus clearly distinct from the concepts of enhancing or increasing,
which would involve an upwards trajectory91;
- to simplify the process of protecting national interests92;
- not to imply that the system of notifica tion and registration is aimed at guaranteeing
protection of particular geographical indications for wines and spirits;  it does not
mean "make mandatory"93;
- to enhance the transparency of the system for wines and spirits in Members' territories
and help Members to be aware of competing geographical indications, hence
allowing for challenges at the national level under the national law.94
47. Views have been expressed on a number of aspects of what is the protection that should be
facilitated by  the multilateral system of notification and registration.  In regard to the exceptions  to
protection provided under Article 24 of the TRIPS Agreement, the point has been made that, given
that the system does not foresee any increase in ex isting levels of protection, it is clear that all the
exceptions set out in Article 24, in particular the grandfather clause for geographical indications forwines and spirits (Article 24.4), the trademar k exception (Article 24.5) and the exception for
customary use (Article 24.6), must continue to apply.
95  The point has also been made that, in order to
enable these exceptions to continue to apply, provision has been made in one of the proposals on the
table for their exercise via an opposition procedure.96
48. In his concluding remarks at the end of the June 2002 meeting, the Chairperson said that he:
"…understood all delegations to recognize that…the exceptions provided in
Article 24 should remain valid" [under the multilateral system].97
49. The question of whether the protection that should be facilitated is only that provided for in
Article 23 (in conjunction with Article 24) or also that provided for in Article 22  has been discussed.
In this regard, the following views have been expressed:
- that the multilateral system does not need to facilitate the protection under Article 22,
given that Article 23 is a lex specialis which takes precedence over the general rule
for the protection of geographical indications set out in Article 2298;
                                                     
89 TN/IP/M/2, para. 76.
90 JOB(02)/70, para. 18;  TN/IP/M/2, paras. 68, 81.
91 JOB(02)/94, page 4;  TN/IP/M/2, para. 70.
92 TN/IP/M/2, para. 79.
93 TN/IP/M/2, para. 78;  TN/IP/M/3, para. 131.
94 TN/IP/M/5, para. 67.
95 TN/IP/M/2, paras. 72, 77, 80.
96 TN/IP/M/2, para. 82.
97 TN/IP/M/2, para. 141.TN/IP/W/7/Rev.1
Page 15
- wines and spirits benefit from protection under both Articles 22 and 23.  Article 23
prohibits the use of a geographical indication of a specific wine on another wine, or
of a specific spirit on another spirit.  Use of such GIs on other products would not be
covered by Article 23 but could be covered by Article 22.99  The protection be
facilitated should be that under both Articles.100
50. The question of whether the establishment of a mult ilateral system should entail new
obligations  for WTO Members has been discussed.  In this regard, the following views have been
expressed:
- the system should not create any obligations additional to those already set out in the
Agreement, including new administrative burdens, nor diminish in any way the rights
contained in Article 23101;
- the system should not create new substantive obligations102, it may entail some
obligations but these should be limited to the administration of the system and be
consistent with a system that is simple, inexpensive and easy to maintain, and does
not create legal effects vis-à-vis  non-participating Members103;
- the system should not create new substantive obligations in the sense that the level of
protection provided for geographical indications for wines and spirits would not beraised under the system.
104  However, this does not mean that there would be no new
burdens:  notification is itself a new burden and it is not clear how Members can
establish a system without creating some new burdens.105
51. Different views have been expressed about whether a system with legal effects at the
national level is necessary  if it is to facilitate protection.  One view is that the systems proposed in
IP/C/W/107/Rev.1 and IP/C/W/255 would make GI protection easier to implement by providing that
registered GIs should benefit from a presumption of eligibility for protection.  Asking those using
names notified by other countries to defend their case first before local courts would discourage
piracy and would benefit the entire spectrum of interested parties:  producers, consumers and
administrations:
- Producers intending to conduct a policy of international expansion would be able to
make cost savings when defending their names around the world.  Occasional
free-riding on notified names would be discouraged as producers using GIs notified
by other countries would have to prove their case before domestic courts first (and
incur the associated litigation costs) if asked to do so.106  Without a presumption of
eligibility, in most cases it would be difficult, if not impossible, for the average right
holder of a geographical indication, for example a wine grower in a small village, toenforce his rights under Article 23, because he would have to build a case from
scratch before local courts, in certain cases thousands of kilometres from home and
under completely different legal systems.  This would threaten to defeat the clear
                                                                                                                                                                    
98 JOB(02)/94, pages 4-5;  TN/IP/M/2, paras. 70, 84.
99 TN/IP/M/2, paras. 82, 90.
100 TN/IP/M/4, paras., 120, 125.
101 TN/IP/W/6, para. 11;  JOB(02)/94, page 5;  TN/IP/ M/2, paras. 71, 79;  TN/IP/M/5, paras. 64, 68, 90.
102 TN/IP/M/5, para. 64.
103 TN/IP/M/5, para. 67.
104 TN/IP/M/2, para. 68.
105 JOB(02)/70, para. 19;  TN/IP/M/2, para. 89.
106 JOB(02)/70, para. 20;  TN/IP/M/2, para. 69.TN/IP/W/7/Rev.1
Page 16
intention of WTO Members to provide Article 23-level protection to geographical
indications for wines and spirits.107
- Consumer associations with less resources than producers and yet willing to prevent
consumer deception could more easily defend their interests against those who market
products using names notified by others to the WTO.108
- Usurpation would diminish and, in turn, litigation and administration costs would
decrease.  Public administrations would have timely information that will allow them,
for example, to not register trademarks containing GIs as prescribed by Article 23.2
of the TRIPS Agreement.109
52. In response, concern has been expressed about such a system on the following counts:
- it would create new burdensome obligations for Members and add to the level of
protection for GIs for wines and spirits that presently exists under the TRIPSAgreement.  In this regard, it has been noted that the TRIPS Agreement explicitly
provides for the reversal of the burden of proof in Article 34 in the Patent Section of
the TRIPS Agreement and not other Parts, such as Article 43 on evidence in
enforcement procedures.
110  There could thus be no presumption that reversal of the
burden of proof is implicitly understood as necessary for the protection of otherintellectual property rights
111;
- it would not be consistent with the principle of the territoriality of intellectual
property rights and the national freedom for determining ways of implementing the
TRIPS Agreement, including in the areas of GIs, as recognized in its Article 1.1;
- it would give priority to one category of intellectual property rights, geographical
indications, over others, such as trademarks;  its compelling effect would mean the
end of national protection systems for intellectual property rights and go beyond any
WIPO treaty.112
53. On the first of these points, the claim that the proposed system would create new
burdensome obligations and add to the existing level of protection , the following arguments have
been advanced in support of this view:
- Whereas under the TRIPS Agreement there is no time-limit on the exercise of
exceptions contained in Article 24, Memb ers would loose under the proposals in
IP/C/W/107/Rev.1 and IP/C/W/255 their right to use certain exceptions if they were
not the subject of an opposition lodged within 18 months of the notification.113
- As a result, all Members would have to review a considerable number of notifications
of geographical indications and possibly oppose them, thus creating a new andburdensome obligation.
114  The proposals might also require Members to put in place
                                                     
107 TN/IP/M/2, para. 73.
108 JOB(02)/70, para. 21;  TN/IP/M/2, para. 69.
109 JOB(02)/70, para. 22;  TN/IP/M/2, paras. 69, 81.
110 TN/IP/M/5, para. 86.
111 TN/IP/M/5, para. 95.
112 TN/IP/M/5, para. 77.
113 TN/IP/M/2, paras. 78, 93, 95;  TN/IP/M/3, para. 78;  TN/IP/M/4, paras. 16, 122.
114 TN/IP/M/2, para. 78.TN/IP/W/7/Rev.1
Page 17
a domestic examination structure, something which is not a requirement under the
TRIPS Agreement.115
- Members might also be required to handle oppositions through a potentially costly
mechanism in Geneva rather than under national law, as the TRIPS Agreement was
currently drafted.116  Nothing in the TRIPS Agreement presently obliges a Member to
enter into an arbitration proceeding requested by another Member.117
- If a Member lodges an opposition in respect of a notified geographical indication, it
might not be required to protect the term in question in its own territory, but its
producers would loose their rights in the markets of all other Members who did not
challenge the notification.118
- The reversal of the burden of proof envisaged in the proposals itself amounts to a new
substantive obligation.119  There is no mandate nor any need for altering the existing
rights and obligations under the current TRIPS Agreement.  The reversal of the
burden of proof would shift the burdens of the system from one set of producers with
many geographical indications to protect to another set of producers with very few
ones to protect.120
54. In response, it has been said that these proposals would create no new substantive
obligations.121  The reversal of the burden of proof is one of the indirect consequences of the
presumption of eligibility for protection.  It would simply enhance the position of legitimate users of
geographical indications in enforcement procedures against illegitimate use of such geographical
indications;  it does not impose any additional obligation on a Member's government, unless that
government owns the enterprise using geographical indications registered by other Members underthe multilateral system.
122  By agreeing in the Uruguay Round to put a multilateral system in place
that should facilitate protection, Members have implicitly agreed on the reversal of the burden of
proof, since it is necessary to facilitate protection.123  The exceptions would continue to be available,
only they would be exercised in a different way, through an opposition procedure.124  Once a Member
has lodged an opposition on the basis of an exception, the exception would continue to be applicableas far as that Member is concerned unless agreed otherwise as a result of bilateral negotiations.  In this
sense, all challenges would be successful.
125  As for the protection of the geographical indication in
third countries, this is a matter for the authorities of those countries and could not give rise to rights
on behalf of Members other than the Member that is the country of origin of the geographical
indication.126
                                                     
115 TN/IP/M/4, para. 122.
116 TN/IP/M/2, para. 78;  TN/IP/M/4, para. 122.
117 TN/IP/M/2, para. 78.
118 TN/IP/M/4, para. 129.
119 TN/IP/M/4, paras. 122, 126;  TN/IP/M/5, para. 73.
120 TN/IP/M/5, paras. 69, 73.
121 TN/IP/M/2, para. 69.
122 TN/IP/M/5, paras. 71, 81.
123 TN/IP/M/5, para. 93.
124 TN/IP/M/2, para. 92.
125 TN/IP/M/2, para. 92;  TN/IP/M/4, para. 123.
126 TN/IP/M/4, para. 130.TN/IP/W/7/Rev.1
Page 18
55. The question has been raised as to what would be achieved by the system proposed in
IP/C/W/107/Rev.1 if, after a Member has opposed a geographical indication, all that would happen is
that consultations would be held, the matter discussed and, if there is no agreement, each of the
Members concerned would go its separate way.127
56. In response, the point has been made that this is why the system proposed in IP/C/W/255
provides for a multilateral possibility to settle the dispute in the event that there is no settlement at the
end of the bilateral consultation process.  This would also help address problems of imbalance of
economic power in the consultation process.  This proposal also envisages that, in appropriate cases,
the effect of a successful challenge should be erga omnes  in order to take into account the problems
mentioned with respect to third markets.  Moreover, it should be remembered that, while registration
would result in a rebuttable presumption of eligibility for protection, the ultimate decision on whether
a term is eligible for protection would remain at the national level.128
57. In regard to the concern regarding territoriality and national legislative discretion  that has
been expressed about the proposals in IP/C /W/107/Rev.1 and IP/C/W/255, the view has been
expressed that it would difficult to see how a multilateral opposition procedure could be consistent
with the principle of territoriality.  The syst em that is proposed in IP/C/W/255 would entail an
arbitration panel of Members of unknown nationality  who would not be in a position to understand
the determinations made by national courts and the perceptions of consumers as to whether a term has
become generic.129  Consistent with the principle of territoriality, Members should not be deprived of
the right to apply their own laws in making dete rminations about intellectual property protection
within their borders.  In this regard, the point has been made that existing multilateral systems of
notification and registration, such as under Article 6 ter of the Paris Convention, the Hague Agreement
in the field of industrial designs and the Madrid Protocol in the field of trademarks, all rely ultimately
on determinations under domestic law to determine eligibility and protection.130  The need to respect
the freedom of Members, recognized in Article 1.1 of the TRIPS Agreement, both to determine the
appropriate method of implementing the provisions of the TRIPS Agreement within their own legal
system and practice as well as to determine the degree of protection to be accorded provided it meetsthe minimum required under the TRIPS Agreement has also been emphasized.
131
58. In response, the view has been expressed that the proposals in question for a multilateral
register fully respect the principles contained in Article 1.1 of the TRIPS Agreement.132  There is no
intention to advocate the establishment of a supranational court that would impose decisions on
national authorities and courts.  Registration woul d merely mean that those who use the names of
others that are registered multilaterally would have to prove their cases in court, if challenged.133
National courts or authorities would remain free to examine independently the value of a registration
as evidence and would thereby maintain their freedom to assess whether there actually was, in the
specific case, any infringement.134  Further, the system of challenge and opposition that has been
proposed would allow WTO Members to take full account of their territorial specificities and thus
respect the principle of territoriality.135
                                                     
127 TN/IP/M/4, para. 127.
128 JOB(02)/94, pages 4-5;  TN/IP/M/4, para. 132;  TN/IP/M/5, para. 78.
129 TN/IP/M/2, para. 84;  TN/IP/M/3, para. 25.
130 TN/IP/M/2, paras. 70, 71.
131 TN/IP/W/5, page 3;  TN/IP/W/6, paras. 1-2, 20 ;  TN/IP/M/2, paras. 71, 76;  TN/IP/M/3, para. 69;
TN/IP/M/4, para. 72.
132 JOB(02)/70, para. 17;  TN/IP/M/2, paras. 67, 73.
133 TN/IP/M/2, para. 74;  TN/IP/M/3, para. 132.
134 TN/IP/M/2, para. 69.
135 TN/IP/M/2, para. 82.TN/IP/W/7/Rev.1
Page 19
59. As regards the system proposed in TN/IP/W/5 , it has been said that this system would
facilitate protection by making readily available to all WTO Members the information contained in
notifications and registrations of geographical indications for wines and spirits for use in their
decision-making processes relating to the protection of such geographical indications.136  Illustrating
this point, it has been said that such a system woul d be useful for helping ensure that when wine is
imported with a label bearing a geographical indication that geographical indication is authorized in
the country of production.137  Another argument made is that easy access to information under the
system proposed by TN/IP/W/5 would help producer s make well-informed choices of names and not
use contentious ones.  Since it is not in the interest of producers to act in bad faith and use contentious
names for their products, protection of geographical indications would be facilitated.138
60. In response, it has been questioned whether the system proposed in TN/IP/W/5 would
facilitate protection, for the following reasons:
- The system does not provide for a mechanism to filter out names that should not be
protected and therefore risks creating more confusion than clarity about which names
should be given Article 23-level protection.139  Legal uncertainty regarding the effect
of the system could increase litigation and eventually administrative costs.140
- While national authorities would be bound to refer to the list, the list gives rise to no
national legal effects and the national authorities could choose to ignore it in their
domestic administrative decisions.141  TN/IP/W/5 does not provide for any
mechanism to monitor the obligation for natio nal authorities to "refer" to the lists of
GIs on the database.  These national authorities would not know whether or not they
could rely on the information included in the system when making a determination onthe protection of a geographical indication in their territories.
142
III. WHAT IS MEANT BY A "SYSTEM OF NOTIFICATION AND REGISTRATION"
61. In the List of Points and Issues for Discus sion at the June 2002 Meeting circulated by the
Chairperson (JOB(02)/49, paragraph 6), he suggested the following:
It might be useful to consider how such terms have been understood in intellectual
property contexts, both at the national and international level.  This is a subject on
which the Special Session could, if so wished, ask the WTO and/or the WIPO
Secretariat to provide factual material, in particular about the different types of
"registration system" that can be found at the international level, with their main
features, procedures and legal effects.  Delegations may wish to express their views
on these matters as well as on the costs and benefits of different possible systems.
62. Discussions on this category of issues in the Special Session have been organized following a
structure suggested by the Chairperson:
                                                     
136 TN/IP/W/5, page 3;  TN/IP/M/3, para. 131.
137 TN/IP/M/3, para. 132.
138 TN/IP/M/5, paras. 65, 76.
139 TN/IP/M/2, para. 75.
140 TN/IP/M/2, para. 69.
141 JOB(02)/70, para. 24;  TN/IP/M/2, paras. 69, 75.
142 TN/IP/M/5, para. 66.TN/IP/W/7/Rev.1
Page 20
The Special Session could go into issues of "mechanics" in greater detail, including
such matters as procedures for notification, opposition, registration and modification
as well as issues of costs and the possible role of the Secretariat, having regard to the
various proposals that have already been made and new or modified proposals.143
Accordingly, this section of this paper is organized using the same headings.
A. PROCEDURES
63. This section outlines points made by particip ants with respect to the "mechanics" of the
proposed system of notification and registration.  Three main sets of proposals have been made on
these matters:
(i) the proposal contained in TN/IP/W/5;
(ii) the proposal contained in IP/C/W/107/Rev.1.  Some variations or additions to this
proposal have also been suggested:
- the proposal contained in IP/C/W/255 for the addition of a multilateral
arbitration mechanism to resolve challenges that cannot be settled by bilateral
negotiation;
- the suggestion that provision should be made for a brief examination of
notifications as to form by the administering body144;
- the suggestion that provision should be made for a summary examination as
to form by the administering body as to whether challenges are well-founded
or not145;
(iii) the proposal contained in TN/IP/W/8.  Some elements of this proposal were
introduced at the fifth Special Session, in February 2003.
The parts of the formal documents containing th e above-mentioned proposals as to procedures are
reproduced in Annex 2 of this document.
64. The issue of the extent to which the proposals that have been made respond appropriately to
the procedural steps set out in the Special Session's mandate namely, notification and registration, has
been discussed.  One view has been that it is of great importance that a clear distinction be madebetween the phases of notification and registration
146 since the two phases serve different purposes,
and that the proposal in TN/IP/W/5 does not achieve this.147  Another view has been that this proposal
does make a distinction between the two phases.  "Notification" would be the responsibility of an
individual Member to identify and submit its list of domestic geographical indications;  "Registration"
would be the WTO Secretariat's responsibility to compile a database of such notifications to facilitate
sharing of the information with all WTO Members.148  However, "notification" and "registration"
should be understood as elements of a single act;  i.e. that the system should consist of a register of
                                                     
143 TN/IP/M/2, para. 145;  TN/IP/M/3, para. 14.
144 TN/IP/M/3, para. 27.
145 TN/IP/M/3, para. 29.
146 TN/IP/M/2, para. 99.
147 TN/IP/M/2, paras. 99, 103, 108, 110;  TN/I P/M/3, paras. 35, 40;  TN/IP/M/4, para. 71.
148 TN/IP/M/2, para. 106.TN/IP/W/7/Rev.1
Page 21
notifications.149  Proposals in IP/C/W/107/Rev.1 and IP/C /W/255 amount to advocating a four-stage
system:  notification;  formal examination;  opposition;  and registration.150
65. Regarding the question of how the term "registration" in Article 23.4 should be
understood , one view is that this term refers to a specific way of implementing TRIPS requirements
that differs, for example, from the common law approach based on case law.  Registration in the fieldof intellectual property is normally understood as involving the grant of a title of protection with a
genuine legal effect, for example in the area of trademarks and certification marks.
151  Under a system
where registration has no legal effect, the act of registration would not add value to that of notification
and would not be in line with Article 23.4.152  To give such added-value, registration should follow a
phase of examination which would give it greater legitimacy.153
66. In response, the point has been made that none of the definitions of the term "registration" in
the Collins dictionary make any reference to a legal effect.  Any suggestion that the term refers to a
specific way of implementing TRIPS obligations would be inconsistent with Article 1.1 of the TRIPS
Agreement and amount to an increase in the level of Members' obligations.  "Registration" for the
purposes of the Special Session should be understood to involve the act of entering a notified term in
a list set up and maintained for that purpose by the administering body.  While the TRIPS Agreement
does refer to "registration" in other sections, those references are to national registration systems.  It isclear that the TRIPS Agreement allows Members to use a variety of mechanisms to protect
geographical indications and thus there is no value in seeking to make reference to registration in
different parts of the TRIPS Agreement.
154
67. In this regard, reference has been made to WIPO systems of notification and registration .
On these systems, the following points have been made:
- These international systems are meant to have legal effects, albeit of varying degrees;
this is consistent with the approach suggested in IP/C/W/107/Rev.1.155
- The WIPO systems are aimed at the acquisition of protection, as indicated in
paragraph 5 of the Secretariat note TN/IP/W/4.  Article 23.4, by contrast, uses the
words "to facilitate protection".  "Application" suggests a path to acquiring rights butthe drafters of Article 23.4 selected the term "notification", not "application".  Thus,
they clearly mean something different.  Other Articles in the TRIPS Agreement refer
to "application" (e.g. Article 15.3) or to "applicant" (e.g., Article 29);  it is, therefore,
clear that the drafters of Article 23.4 could have used the term "application" if they
had so desired.
156
- Except for the Patent Cooperation Treaty, there are few signatories to the systems
described in TN/IP/W/4.  As has been noted by earlier speakers, this fact suggeststhat the international community had not readily accepted approaches where the
registration process has an objection procedure and results in the granting of
substantive rights.  The Special Session should not adopt an approach that past
history demonstrates has not proved acceptable to a large number of countries.
157
                                                     
149 TN/IP/M/2, para. 104.
150 TN/IP/M/3, para. 46.
151 TN/IP/M/2, paras. 103, 108.
152 TN/IP/M/2, para. 108.
153 TN/IP/M/2, para. 110.
154 JOB(02)/94, pages 4-5;  TN/IP/M/2, paras. 101, 114.
155 TN/IP/M/3, para. 18.
156 TN/IP/M/3, para. 32.
157 TN/IP/M/3, paras. 32, 53.TN/IP/W/7/Rev.1
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- The Lisbon Agreement for appellations of origin, the Madrid system for marks and
the Hague Agreement for designs, as international registration systems for applicants
seeking national protection through the international system, have a different purpose
from that envisaged under Article 23.4.158
1. Notification
68. The following substantive conditions  to be met by notified GIs have been mentioned in the
proposals and interventions:
- GIs notified are those "domestic geographical indications recognized as eligible for
protection under their national legislation…"159 or those "which identify goods as
originating in its territory, corresponding to the definition in Article 22, paragraph 1
of the TRIPS Agreement".160
- Only indications that receive protection in the notifying Member at the time of
notification and which have not fallen into disuse within the meaning of Article 24.9
should be notified.161
The question of who should be the administering body which would receive notifications and provideother secretariat services under the multilateral system is addressed in paragraphs 134, 137-139
below.
69. With regard to the information that should be contained in the notification of a GI, the
proposals provide that this should include the date that the geographical indication received
protection in the notifying Member, as well as any time-limit or date of expiry for that protection.
162
With regard to other data or documentation  that should be included in the notification, the
following proposals have been made:
- In TN/IP/W/5, it has been proposed that "[I]n the interest of transparency and to ease
the use of information by WTO Members participating in multilateral agreements for
the protection of GIs, those WTO Members participating in such agreements must
indicate the agreements under which each of the notified geographical indications isprotected."
163
- In IP/C/W/107/Rev.1, it is proposed that "[t]he notification to the Secretariat [shall]
be accompanied by copies of national legislative, administrative or judicial decisions
and, if necessary, bilateral, regional or multilateral agreements indicating the date on
which each geographical indication first received protection in the country of origin.
Any time-limit on that protection and the type of product as well as prima facie
evidence of the geographical indication's conformity with the provisions of theAgreement, should also be provided".
164
                                                     
158 TN/IP/M/3, para. 69.
159 TN/IP/W/5, page 5, section 1;  TN/IP/M/3, para. 101.
160 IP/C/W/107/Rev.1, B.2;  TN/IP/M/2, paras. 26, 29, 35;  TN/IP/M/3, para. 39.
161 TN/IP/W/8;  TN/IP/M/3, para. 40.;  TN/IP/M/5, para. 98.
162 TN/IP/W/5, page 5, section 1;  IP/C/W/107/Rev.1, B.3; TN/IP/M/3, para. 33.
163 TN/IP/W/5, page 5, section 1.
164 IP/C/W/107/Rev.1, B.3.TN/IP/W/7/Rev.1
Page 23
- It has also been suggested that each participating Member may provide any other
information it considers useful for the TR IPS Agreement's implementation and for the
application at the national level of the prohibition regarding the use of the
geographical indications for non-originating products.165
- The information required might also include the spelling of the GI, the identification
of the applicant, the territory from which the goods originate and a description of the
characteristics or qualitative features of the goods.166
70. The following views have been expressed on these proposals:
- The proposal concerning the notification of international agreements should not be
looked at in isolation from the legal effects of the system.  What would be the
implications of a GI that is notified on the basis that it has been included in a bilateral
or multilateral agreement?  For example, how would one know whether a notified GI
that two countries have committed themselves to protect does not fall under
Article 24.9?  The proposal would give rise to uncertainty.167
- The proposal that international agreements could be used as a basis for the validity of
notified GIs means that obligations contracted by some Members under those
agreements would indirectly be transferred to other WTO Members which have notratified such multilateral agreements.
168
- With regard to information to be provided such as national legislative, administrative
or judicial decisions and bilateral, regional or multilateral agreements, notifications
should be short summaries of the information to be provided.  Supporting documents
could be retrieved from the website;  circulation to Members would hence not benecessary.
169
- The requirement concerning the notification of laws and regulations regarding
geographical indications could constitute a duplication of existing obligations (e.g.
the notification obligation under Article 63.2), or might be considered as an
additional obligation and would therefore be equal to an amendment to the TRIPSAgreement.
170
- The point has been made that the system might concern not only terms already
protected in a WTO Member but also those eligible for protection in that Member.  In
the latter case, it would not always be possible to provide specific documentation
making the case that the term is already protected at the national level.  This would be
the case where Members are implementing a system of GI protection on a common
law basis, which does not necessarily require prior registration of a term.171
71. In response, the following comments have been made:
- The proposal of having copies of international agreements is intended to cover cases
where the legal basis for the protection of a GI in the country of origin could not be
found in a national legal, administrative or judicial text but rather in a regional
                                                     
165 IP/C/W/107/Rev.1, B.3-5;  TN/IP/M/3, paras. 19, 27, 36.
166 TN/IP/M/3, para. 36.
167 TN/IP/M/3, para 45.
168 TN/IP/M/3, para. 45.
169 TN/IP/M/3, para. 59.
170 TN/IP/M/3, para. 45.
171 TN/IP/M/3, para. 54.TN/IP/W/7/Rev.1
Page 24
agreement.  For example, under the Bangui Agreement, a single title of protection
would be granted for a GI and produce effect in the country of origin as well as in the
other contracting parties of the Bangui Agreement.172
- Notification of laws and regulations as well as of international agreements should not
be too burdensome for Members since in most cases these texts have been notified tothe TRIPS Council under Article 63.2;  a cross-reference would therefore suffice.
Experience with a regional system shows that the necessary information can be
summarized on one or two pages.
173
72. It has been suggested in the proposals and various interventions that notifications should be
made according to an agreed format .174  In this regard, the following comments have been made:
- The format of submissions could be establ ished through negotiations or, if the WTO
Members so agree, by the Secretariat175, after the multilateral system itself is
established.176
- The format should be so designed as to make the Secretariat's task of compiling the
initial and subsequent notifications as simple as possible and to make the resulting
database as user-friendly as possible.177
- It has also been suggested that in accord ance with normal WTO practice, the format
of notifications be kept simple.178
73. It has also been suggested that the Member notifying a geographical indication should be
required to provide not only translations in all three WTO languages but also in the languages of the
Members where protection is sought.179
74. As regards the accompanying information and data  that would be contained in the
notification of a geographical indication, it has been suggested that this information should be notified
in one of the three WTO languages.  It would then be translated by the notifying Member, or
depending on the circumstances and arrangement made, by the administering body into the other
WTO languages for circulation to WTO Members.180  The point has been made that this information
should not be voluminous since most of the information is already available in the WTO, for examplein the context of notifications made under Article 63.2 obligations, and a cross-reference would be
sufficient.
181
                                                     
172 TN/IP/M/4, para. 59.  The Bangui Agreement is the abridged name of the "Agreement Revising the
Bangui Agreement of 2 March 1977 on the Creation of an African Intellectual Property Organization" of 24
February 1999.
173 TN/IP/M/4 , paras. 59, 64.
174 TN/IP/M/3, paras. 19, 33.
175 TN/IP/W/5, footnote 4;  TN/IP/M/3, para. 33.
176 TN/IP/M/3, para. 33.
177 TN/IP/M/3, para. 33.
178 TN/IP/M/3, para. 59;  TN/IP/M/5, para. 100.
179 TN/IP/M/4, para. 89.
180 TN/IP/M/3, para. 19.
181 TN/IP/M/4, para. 61.TN/IP/W/7/Rev.1
Page 25
75. With regard to the proposal in TN/IP/W/5, the view has been expressed that, since
Article 23.1 prohibits the use of geographical indications even in translation, it would seem that from
the point of view of translation costs the two approaches do not seem to be substantially different,
provided that the relevant authorities actually refer to the database.182
76. With regard to the language of notification and translation , the discussion has addressed
first the treatment of the geographical indication itself and second the treatment of accompanying
information to be contained in the notification of a geographical indication.  With regard to the
geographical indication itself , it has been suggested that the notification should be made in the
language of the country of origin.  The responsibility for determining what the translation of a notified
term is in the language of other Members where protection is sought would lie with the national
authorities of those Members.  It has been suggested that the burden of such translation should not be
great since it would be limited to one or two words.183
77. In response, the point has been made that the translation of the geographical indication itself
is a highly important matter since Article 23.1 requires GIs to be protected also in translated form and
Members would need to know exactly what they are being requested to protect.184  Under the system
proposed in IP/C/W/107/Rev.1, the translation of the GI in the jurisdiction of each WTO Member
would need to be known since the notification would trigger a legal effect in every Member.  If anotified term is to be translated from the language of the country of origin into a national language
through a WTO language, this would not be an easy exercise, in particular into languages with
different script or spelling and from languages the pronunciation of which is not well known.
185
78. It has been said that if notified, such national authorities of countries which do not use a WTO
language have to translate their information as details of the area of production and of the productcovered by a GI for the purposes of trademark examination, this could be a considerable problem.
186
Since every Member would be obliged to examine ever y notification if it is not to waive prematurely
any of its rights under Articles 22 and 24, depending on the linguistic ability of the individual
examiner a complete translation of the notification would be required before the task could even
begin.187
79. Concern has also been expressed about the large number of geographical indications for
wines and spirits that might be notified and the consequent burden of translation.188  In response, it
has been said that nothing has been said to justify the concern about a very large number of
notifications and that ways and means of ensuring that the system is not excessively burdened in this
way should be explored.189
80. With regard to the proposal contained in TN/IP/W/5, it has been said that the issue of
language and translation is less significant since registration would not have a legal effect at thenational level.
190  In response, the point has been made that, under the system proposed by
TN/IP/W/5, administrative authorities and judges would have to face the same problems of translation
as under the system proposed in IP/C/W/107/Rev.1 before making any decision concerning the
protection of geographical indications.191  Regarding this point, the view has been expressed that there
are actually differences between the two system s proposed in terms of burdens and accuracy of
                                                     
182 TN/IP/M/4, para. 92.
183 TN/IP/M/4, para. 61.
184 TN/IP/M/4, para. 62.
185 TN/IP/M/4, paras. 17, 66.
186 TN/IP/M/4, para. 66.
187 TN/IP/M/4, para. 85.
188 TN/IP/M/4, para. 62.
189 TN/IP/M/4, para. 67.
190 TN/IP/M/4, para. 62.
191 TN/IP/M/5, paras. 107, 110.TN/IP/W/7/Rev.1
Page 26
translations:  under TN/IP/W/5, the information recorded on the register is for reference whereas
under IP/C/W/107/Rev.1 the information would be c onsidered as the intellectual property right
itself.192
81. It has been proposed that the administering body should undertake for each notification a
brief or summary examination as to form  after it has been received from a Member.  If the
administering body considers that the notified GI clearly does not meet the basic conditions, the
national authority of the notifying Member would be informed and would be expected to provide
confirmatory information or to renounce the notification.  It would be open to the Member to repeat
the notification at a later stage if it so decides.  Such a procedure would help ensure that GIs clearly
not meeting the requirements under Article 22.1 will not be registered under the system and that
Members are not faced with a large number of improper notifications.193
82. With regard to this proposal, the following comments have been made:
- A summary examination as to form woul d not be necessary since Members would be
notifying GIs that are recognized as eligible for protection domestically, that is GIs
that meet the TRIPS definition as transposed into domestic legislation.194
- Although there might be a need for ways and means to refuse registration of
mischievously notified terms, it would be difficult for the administering body toascertain with any degree of finality whether a particular term meets the requirements
of Article 22.1.  Because of the territoriality principle, this would be a matter for
individual Members to determine.  Such a task would go beyond the mandate of
Article 23.4.
195
- Rather than by providing for an examination as to form by the administering body,
the best way to avoid an excessive number of inappropriate notifications would be by
reaching a better common understanding of the definition contained in Article 22.1 of
the TRIPS Agreement.196
83. In response to these comments, it has been said that the examination proposed is not meant to
check whether each notified geographical indication respects the national legislation of the countrywhich has notified it or the TRIPS Agreement.  It is just a brief examination as to formal requirements
to ensure that there is some basis for the notification.  It is not intended to substitute the administering
body for Members, which are the ones to make the determination as to substance on the basis of
national law and the TRIPS Agreement.
197  The WTO Secretariat could, without putting in jeopardy
its neutrality, assume the task of providing a "sanity check" on the notifications and acting as a
"formal filter".198
84. It has been further proposed that the multilateral system might involve a formality
examination of the geographical indication subject to  notification.  Provided that basic information
identifying the geographical indication, its ownership and the basis on which it claims protection in
the country of origin is submitted to the administering body, the indication would be entered on the
                                                     
192 TN/IP/M/5, para. 114.
193 TN/IP/M/3, para. 27;  TN/IP/M/4, paras. 109, 112.
194 TN/IP/M/4, para. 62.
195 JOB(02)/94, page 6;  TN/IP/M/2, para. 101;  TN/IP/M/3, para. 64;  TN/IP/M/4, paras. 62, 106.
196 TN/IP/M/3, para. 54.
197 TN/IP/M/4, para. 109.
198 TN/IP/M/4, para. 113.TN/IP/W/7/Rev.1
Page 27
register.  The formality examination would involve checking that the documentation submitted meets
the stipulated minimum formal requirements.199
85. In regard to communicating the notifications of GIs to other Members and making them
accessible to the public , the following proposals have been made (see also paragraphs 132-139 below
on the possible role of the Secretariat and on costs.):
- TN/IP/W/5 provides that " [c]opies of the registered geographical indications for
wines and spirits shall be distributed to all WTO Members.  To ensure maximum
transparency, the Secretariat shall, in addi tion to distributing copies of the lists to
WTO Members, make the list accessible, in searchable form, on the WTO's Internet
Web Site …".200
- In IP/C/W/107/Rev.1, it is proposed that the notified GIs be "published as soon as
possible by the WTO Secretariat and notified to Members".201  It has been said that
the possibility of having this publication made via the WTO website should be
considered.202
2. Opposition
86. Section C of IP/C/W/107/Rev.1 , entitled "Multilateral Examination of Geographical
Indications Published", provides for a challenge or opposition mechanism aimed at resolvingdisagreements between Members about the protection of an individual geographical indication that
has been notified.  IP/C/W/255  proposes the addition to this mechanism of a multilateral arbitration
system to be used when bilateral negotiations have failed to resolve the dispute.
87. The proposal contained in TN/IP/W/5  does not provide for a multilateral opposition or
challenge mechanism.  It has been explained that, since this proposal does not provide forregistrations that trigger the same legal effects as those envisaged in the other proposals in Members,
there is no need for such a mechanism.  Any opposition would be exclusively at the national level.  If
any WTO Member objects to the registration of a GI notified by another Member, the former may
oppose the recognition of that geographical indica tion in accordance with the laws of the notifying
Member.  If an opposition is successful, the notify ing Member would request that the administering
body remove the registration of the challenged indication from the multilateral system.  The
registration of that indication would be removed from the multilateral system and would not be
included in any updated lists circulated to Members.
203
88. Given the importance of the legal system of the notifying Member as the forum for
oppositions, stress has been placed on the need to ensure that the opposition procedure within the
notifying Member's legal system and practice is av ailable to the nationals of all other WTO Members
on a non-discriminatory basis  in accordance with the requirements of Articles 3 and 4 of the TRIPS
Agreement.204  In this regard, it has been recalled that, under the proposal in TN/IP/W/5, oppositions
would be initiated by private parties, not only by governments.  This also helps to explain why the
making available of information on notifications of GIs to the public under the proposal is important
for providing interested parties an opportunity to challenge them.205
                                                     
199 TN/IP/M/5, para. 98.  (This proposal was subseq uently reflected in and circulated as document
TN/IP/W/8.)
200 TN/IP/W/5, page 5, section 2, para. 2.
201 IP/C/W/107/Rev.1, para. B.7.
202 TN/IP/M/3, para. 62.
203 TN/IP/W/5, page 5, section 2;  TN/IP/M/5, para. 101.
204 TN/IP/M/3, paras. 34, 56;  TN/IP/M/5, para. 101.
205 TN/IP/M/3, para. 34.TN/IP/W/7/Rev.1
Page 28
89. In this regard, it has been said that the proposal in TN/IP/W/5 would provide a way of
resolving disputes in the same way as disputes concerning the patentability of inventions or the
registrability of marks are handled;  this is to say by specifying that disputes would be resolved solely
under the national laws of Members.  That is currently the state under the existing international
notification and registration systems cited by the Secretariat in TN/IP/W/4, namely the Madrid systemfor trademarks, the Hague system for industrial designs and the Patent Cooperation Treaty.  In each of
those cases, determinations were made solely with respect to national law without any requirement for
consultations or any further complicated procedures.  Only the Lisbon Agreement for the Protection
of Appellations of Origin and the Stresa Agreement on cheeses, cited in the Secretariat's document, do
not solely apply national law in determining whethe r protection should be extended or not.  These two
treaties are not broadly accepted.
206
90. The suggestion has been made that the proposals contained in IP/C/W/107/Rev.1 and
IP/C/W/255 might be complemented by a requirem ent for the body administering the multilateral
system to examine, in a formal and summary way , whether the challenge seemed to be well-
founded or not.  This would help avoid the risk of  the system becoming paralysed by an excessive
number of challenges.207  In response, it has been said that this proposal seemed to presume that there
would not be any confusion as to the criteria relating to definition and eligibility for protection.  Inthis regard, reference has been made to the points regarding a lack of a sufficient common
understanding made in the Special Session's discussion on the first category of issues (see
paragraphs 19-22 and 27-40 above).
208
91. Regarding the information that should be prov ided when a challenge is lodged , it has been
said that challenges should be accompanied by a statement of the grounds on which the challengingMember is invoking Article 22.1, 22.4 or paragraphs 4 or 6 of Article 24.  Filing a challenge should
not be an onerous procedure.  The type of evidence to be provided would be that relating to the
national law of the Member lodging the challenge, for example how the notion of generic is
interpreted in its national law.
209  During the 18-month examination period, participating WTO
Members could ask questions and request further information or explanations from the notifyingMember.
210
92. With regard to the appropriate period for the filing of oppositions , the following views
have been expressed:
- The period of 18 months suggested in this proposal should be sufficient to enable
other Members to examine notifications and decide whether or not to lodge an
opposition.  However, other time-frames could be considered.211
- It has been questioned, whether it would be possible to analyse within the proposed
time-frame of 18 months all the information that would accompany every
notification.212
- In response, it has been said that it would not be necessary for a Member to make a
final determination within the 18-month period, for example on whether a name was
generic or not.  What was proposed was that Members gather prima facie evidence onwhether a name might have become generic.  This did not mean that all possible lines
of defence and pieces of evidence had to be provided, but that at least the opposition
                                                     
206 TN/IP/M/4, para. 72.
207 TN/IP/M/3, para. 29;  TN/IP/M/4, para. 109.
208 TN/IP/M/3, para. 64.
209 TN/IP/M/4, para. 67.
210 TN/IP/M/3, paras. 20, 41.
211 TN/IP/M/3, para. 41.
212 TN/IP/M/3, para. 45.TN/IP/W/7/Rev.1
Page 29
should be initially founded and that there should be some evidence that the name
might have become generic.  Afterwards, and in the course of the bilateral
negotiations that would follow, the situation would be clarified.213
- It has also been suggested that the period should be "reasonable and proportionate".214
The point has been made that the duration of this procedure should be long enoughfor Members, including developing countries, to examine all notifications in the
context of the multilateral system.
215
93. It has been said that there are limited cases where countries may have an interest in the same
geographical indication.  Since systems explored (expert committee, mediation or dispute se ttlement)
have their limits and can be time-consuming and costly or raise problems of compatibility with the
WTO Dispute Settlement Understanding and enforcement by national courts, it has been proposed to
have recourse to direct bilateral negotiations.  It would be simple and efficient since it involves onlythe parties concerned;  they should communicate the results to the administering body.
216
94. The question has been asked as to how the bilateral negotiations  that would follow an
opposition would be carried out .217  In response, it has been said that the duration of the bilateral
negotiations could vary greatly and much depended on the goodwill of the parties in trying to reach a
settlement.218
95. The issue of what would be the proposed legal effect of the lodging of an opposition  under
the proposal in IP/C/W/107/Rev.1 has been discussed.  The question has been raised as to whether
recourse to judicial avenues in the countries that are parties to the negotiations would be affected.  It
has also been asked whether producers in the Member that has lodged an opposition, for example
because the term is considered generic, would or would not be prevented from continuing to use theterm.
219  In response, it has been said that the opposing country could continue to use the term during
the course of the consultations as well as after the consultations, if the consultations do not lead to
agreement otherwise.220
96. In response, a concern has been expressed that, whereas the term could continue to be used in
the country that has lodged the opposition, its producers would not be able to continue to use the termin the markets of other WTO Members which had not also lodged an opposition.
221  The view has
been expressed that, during the period of bilateral negotiations, it should be ensured that the rights of
producers should not be undermined in third countries also.222  For example, the right of a producer to
go on using a name which it had been using in good faith in a third market before 1994 should not be
impaired, even if the name is protected as a GI in other Members.223
                                                     
213 TN/IP/M/4, para. 60.
214 TN/IP/M/3, para. 38.
215 TN/IP/M/4, para. 71.
216 IP/C/W/107/Rev.1, page 2, paras. 9-10.
217 TN/IP/M/4, para. 77.
218 TN/IP/M/4, para. 78.
219 TN/IP/M/4, para. 77.
220 TN/IP/M/4, para. 78.
221 TN/IP/M/4, para. 79.
222 TN/IP/M/4, para. 81.
223 TN/IP/M/4, para. 83.TN/IP/W/7/Rev.1
Page 30
97. In response, it has been said that the possibility to lodge an opposition is not limited to
Members producing a product under a generic name, but could also apply to other Members where the
product is marketed and the name is generic.  In accordance with the principle of territoriality, it
would be up to each Member to decide whether a name is generic or not in its territory.224  T h e
proposed system does not lead to any undermining of the rights of producers in third countries.  If, ina given country, a GI is not generic and is considered to qualify for protection, that protection is
already applicable in that Member by virtue of the TRIPS Agreement itself:  the registration merely
brought to light an existing protection.
225
98. Concerns have been expressed about the possible implications of a multilateral opposition
system  of the sort proposed in IP/C/W/107/Rev.1 for national systems  to implement the provisions
in the TRIPS Agreement on geographical indications.  It has been said that this proposal would
require each Member to establish a system to examine each notified geographical indication and thatthe multilateral system should not force Members who have decided not to implement an examination
system domestically to do so.
226  Any register negotiated should not prejudice the continuing right of
Members participating in it not to establish a national registration system.  To do otherwise would
imply a significant change to existing Members rights and obligations under Article 23.227
99. In response, the question has been raised as to the procedures used to identify GIs for wines
and spirits eligible for protection by Members that do not have national registries.  Do such Members
examine conformity with the definition in Arti cle 22.1?  For example, is this done under the
certification mark system?  How would Members that do not have national registries establish a list of
names to be notified under the system?  It has been said that responses to these questions would help
shed light on the kind of opposition procedure that is needed in the multilateral register.228
100. It has been proposed that the opposition procedure should be divided into two phases:  that of
bilateral negotiations;  and, as a last resort, if such negotiations do not yield a mutually acceptable
solution, a multilateral phase.229  Proposals have been made for this multilateral phase to take the form
of an arbitration system (IP/C/W/234 and IP/C/W/255), the decisions of which would be final and
binding.230  It has been said that when developing the procedure for arbitration, Members should, to
the fullest extent possible, build upon existing WTO procedures and principles including those set out
in the DSU.231  Alternative systems for settling differences that would have the same multilateral
character and be simple and effective could also be considered.232
101. The following reasons for having an arbitration system have been given:
- The proposal would help ensure that smaller countries, which have limited bilateral
bargaining power, enjoy the same opportunities for representing their legitimate
commercial interests as bigger ones.233
- The arbitration system would prevent abuses of the opposition procedure since it
would not be left to individual countries to determine whether a challenge is justified
                                                     
224 TN/IP/M/4, para. 80.
225 TN/IP/M/4, para. 82.
226 TN/IP/M/3, para. 24.
227 TN/IP/M/4, paras. 68, 72.
228 TN/IP/M/3, para. 65;  TN/IP/M/4, para. 64;  TN/IP/M/5, paras. 42, 53, 110.
229 TN/IP/M/3, paras. 29, 42.
230 IP/C/W/234 and IP/C/W/255;  TN/IP/M/3, paras. 29, 52.
231 IP/C/W/234, para. 9.
232 TN/IP/M/2, para. 35;  TN/IP/M/3, para. 42.
233 IP/C/W/234, para. 5;  TN/IP/M/2, para. 35;  TN/IP/M/3, para. 42;  TN/IP/M/4, para. 132.TN/IP/W/7/Rev.1
Page 31
or not234;  it would be an "investment" in the sense that it would prevent ever-lasting
negotiations.235
- The proposed arbitration mechanism is not alien to the WTO system (Articles 25 and
22.6 of the DSU) and has a precedent (Article 8.5 of the Agreement on Subsidies and
Countervailing Measures).236
102. In reaction to the proposal for a system of arbitration, the following comments have been
made:
- Nothing in the TRIPS Agreement obliges a Member to go into an arbitration.  The
proposal would change the existing level of obligation.237  It would also go beyond
the Special Session's mandate.238
- By virtue of the territoriality principle of IPRs, the question of how a Member
territorially applies the TRIPS Agreement should not be left to arbitrators who do notknow how the system of that Member wo rks or how a term is regarded (e.g., by
consumers) in that Member.
239  Decisions regarding the exceptions under Article 24
can only be made by the national courts or the administrative bodies applying the
national law in the country where protection is sought.240
- The (universal) erga omnes  effect of challenge may have a disproportionate impact.
It is likely that just a few WTO Members will be forced to carry out the collective
burden of challenge, especially since the vast majority of WTO Members are not
likely to have the administrative means to reviews thousands of GIs.241
- An arbitration system at multilateral level could not be applied effectively.242
- If GIs were to be dealt with by adjudicators, then there would be a comparable need
for a standing group of adjudicators and dispute settlement specialists to solve all the
problems in the area of GIs, and this aspect should not be considered lightly.243
- The system would be cumbersome, highly regulatory and entail costs.244
3. Registration
103. The proposal contained in TN/IP/W/5  does not provide for a multilateral opposition
procedure.  Registration takes place following receipt by the administering body of notifications from
participating Members.  It takes the form of inclusion of the notification in a searchable database of
all notified geographical indications for wines and spirits.  The database would include:  the
geographical indication for the wine or spirit that has been notified, the WTO Member who has made
the notification, the date on which the indication is protected by the notifying Member, the expiration
                                                     
234 IP/C/W/234, para. 5;  TN/IP/M/2, para. 35.
235 TN/IP/M/3, para. 75.
236 IP/C/W/234, para. 6;  TN/IP/M/2, para. 35.
237 TN/IP/M/2, para. 88;  TN/IP/M/3, paras. 25, 46.
238 TN/IP/M/3, paras. 25, 46.
239 TN/IP/M/2, paras. 84, 95;  TN/IP/M/3, para. 25.
240 TN/IP/M/3, para. 25.
241 TN/IP/W/1, page 2.
242 TN/IP/M/2, para. 84.
243 TN/IP/M/3, para. 64.
244 TN/IP/M/2, para. 36;  TN/IP/M/3, para. 127.TN/IP/W/7/Rev.1
Page 32
date of this protection, if any, in the notifying Member, and any agreement for geographical
indications for wines and spirits under which the indication is protected.245
104. With regard to the question of legal effects under national legislation, WTO Members
choosing to participate in the system would commit th emselves to consult, along with other sources of
information, the database when making decisions regarding recognition and protection ofgeographical indications for wines and spirits in accordance with their national legislation.
Information from the database would be taken into a ccount in making such decisions.  Registration in
the multilateral system should not give rise to any presumption regarding eligibility for protection,
given the territorial nature of geographical indications and the application of Article 24 exceptions,
which would remain in force under national law.  WTO Members not participating in the system
would be encouraged to refer to the database, alon g with other sources of information, in making such
decisions under their national legislation.
246
105. With regard to the proposal in IP/C/W/107/Rev.1 , registration would take place at the end of
the 18-month period following publication of the notification of the geographical indication by the
administering body.  The registration would include annotations of the challenges that have been
lodged, such as the name of the opposing country and the TRIPS provisions invoked.  The registration
would only have legal effect in Members who ha ve not lodged an opposition.  Members who have not
challenged the geographical indication within the time-limit cannot refuse its protection on the basis
of Articles 22.1, 22.4 and 24.6.247  It has been said that other reasons could be invoked at any time
before domestic courts such as Article 24.8 or 24.9.248  Exceptions under Article 24.4 and 24.5 would
operate at the national level.249
106. With regard to the proposal made in IP/C/W/255 , it has been said that only geographical
indications that have not been opposed would be registered after 18 months from the date of
publication.  With regard to those that have been opposed, geographical indications successfully
challenged on the basis of Article 22.1 and Article 24.9 of the TRIPS Agreement would not be
registered.  That is to say the arbitrators decision in the case of such challenges would be of an
erga omnes  nature.  Geographical indications successfully challenged on the basis of paragraphs 4, 5
and 6 of Article 24 would be registered with a note that the registration does not have a legal effect in
the successful challenging Member.250  Another suggestion made is similar, except that Articles 24.9
and 24.5 have not been referred to as the basis of a multilateral challenge.251
107. With regard to the differences between the legal effects flowing from challenges under Article
22.1 and Article 24.9, on the one hand, and Articles 24.4, 5 and 6, on the other, it has been said that an
erga omnes  effect is important for the former because it would save time and effort for the
participants in the system, since a single challenge would prevent the registration of a notified namenot fitting the definition or not under protection in the country or origin.  Further, it would prevent the
situation where the failure of a participant to challenge a notification could lead to unwarranted
economic losses.  As regards the latter provision, challenges would only have an inter partes  effect
since their applicability would depend on the particular circumstances of the challenging Member
concerned.
252
                                                     
245 TN/IP/W/5, page 4.
246 TN/IP/W/1, page 2;  TN/IP/W/5, page 5;  TN/IP/M/5, para. 102.
247 IP/C/W/107/Rev.1, D.4;  TN/IP/M/3, para. 21.
248 TN/IP/M/3, para. 30.
249 TN/IP/M/4, para. 84.
250 TN/IP/M/3, para. 43.
251 TN/IP/M/3, para. 30.
252 TN/IP/M/3, para. 43.TN/IP/W/7/Rev.1
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108. With regard to the nature of the legal effects that would result from registrations under the
proposals in IP/C/W/107/Rev.1 and IP/C/W/255 in the Members where the registrations have such
effects, it has been said that they would give rise to a presumption of the protectability of the
geographical indication in question under the national law of each of the Members concerned.  It has
been said that presumption would not apply in respect of reasons which had not been open tochallenge in the opposition procedure, for example the exception contained in Article 24.8.  Under the
proposal contained in IP/C/W/255, this would al so apply to the requirement of Article 24.9.
253  Points
made regarding this matter can be found in paragraphs 51-58 above.
109. All these proposals provide for copies of registered geographical indications to be distributed
to all WTO Members as well as made accessible on the WTO website.254
110. At the fifth meeting of the Special Session, it was proposed that the registration on the
multilateral system would provide prima facie evidence to prove three issues:
(a) ownership;
(b) that the indication is within the definition of geographical indications under
Article 22.1 of the TRIPS Agreement;  and
(c) that it is protected in the country of origin.
The effect would be that the three issues are deemed to have been proved unless evidence to the
contrary is produced by the other party to the proceedings.  In other words, a rebuttable presumption
is created in relation to the three relevant issues.  Registration in the multilateral register would not
have any legal effect or create any presumption in  relation to these issues, except if it related to
Article 24.9.  The system would not deal with comp eting claims for geographical indications.  These
would continue to be dealt with under national laws .  Under the proposed framework, the legal effect
of registration would be limited in scope, i.e., registration on the multilateral register would provide
prima facie evidence to prove the three issues cited above.  Under this proposal, there is therefore no
need for putting in place a process of substantiv e examination or opposition at the multilateral level.
Questions relating to the applicability of the exceptions under Article 24 of the TRIPS Agreement
would continue to be decided by Members' domestic authorities having regard to the relevant localcircumstances.
255
111. In response, the view has been expressed that this proposal may result in subsidies for a few
WTO Members by the vast majority of other WTO Members.  It might actually impose a subsidiary
register rather than operate as a system in the WTO.256  It has also been said that the proposed
presumptions would cause problems to national authorities dealing with trademarks;  according to the
principle of territoriality, the scope of definition should be decided by those Members where
protection is requested and at the time such protection is requested.257
4. Updates and modifications
112. The proposals provide for the multilateral register to be updated so as to take into account the
following:
- the registration of new GIs;
                                                     
253 TN/IP/M/3, para. 30.
254 TN/IP/W/5, page 4;  IP/C/W/107/Rev.1, D.6.
255 TN/IP/M/5, para. 98.  (This proposal was subsequently reflected and circulated in document
TN/IP/W/8.)
256 TN/IP/M/5, para. 109.
257 TN/IP/M/5, para. 106.TN/IP/W/7/Rev.1
Page 34
- and any modification of existing registrations or cancellations, for example because
the GI is no longer protected in the country of origin or has fallen into disuse in that
country.258
113. It has been suggested that the procedures applying to new GIs and modifications be the same
as those applying to original notification of GIs.259
5. Review/monitoring of the system
114. TN/IP/W/5 proposes that the TRIPS Council examine the operation of the multilateral system
four years after its establishment, to evaluate its effectiveness in facilitating protection of Members'
GIs for wines and spirits in accordance with Section 3, Part II of the TRIPS Agreement.  This
examination would not constitute a re-negotiation of the system.260
6. Contact point at Members' level
115. Under the approach proposed in IP/C/W/107/Rev.1, each participating Member must provide
a contact point in its administration.261
116. In reaction to this proposal, it has been said that this would be a duplication of an existing
obligation under the TRIPS Agreement (Article 67 concerning notification of contact points) or might
constitute an additional burden for Members.262
B. COSTS
117. After setting out general points, this subsection summarizes the issues raised and points made
structured according to the persons or bodies that initially bear the costs of establishing and running a
multilateral system:  that is to say, Member governments, producers, consumers and the administering
body.  The points made in regard to who should ultimately bear these costs, for example the extent to
which the costs of Members should be passed on to producers and the costs of the administering bodypassed on to Members and/or producers, are summarized under the relevant heading.
118. It has been said that it is difficult to address the issue of costs and to make useful estimates
without information on the likely number of registrations.
263  The point has also been made that the
cost-benefit ratio of systems needs to be analysed at the national level for each country taking into
account each country's specific interests.264
119. The following general points about the proposals have been made:
- The proposal contained in IP/C/W/107/Rev .1 would establish a system that would be
far more costly than the one in TN/IP/W/ 5.  The more complex the system is, the
higher the cost.265  There is also a direct relationship between the structure of the
system and the cost involved.266
                                                     
258 TN/IP/W/5, section 1;  TN/IP/M/3, paras. 31, 61;  TN/IP/M/5, para. 103.
259 IP/C/W/107/Rev.1, D.6, E.2.
260 TN/IP/W/5, page 6, section 5;  TN/IP/M/5, para. 104.
261 IP/C/W/107/Rev.1, B.6;  TN/IP/M/3, para. 27.
262 TN/IP/M/3, para. 45.
263 TN/IP/M/3, para. 76;  TN/IP/M/4, para. 88.
264 TN/IP/M/2, para. 105.
265 TN/IP/M/2, para. 105;  TN/IP/M/3, para . 88;  TN/IP/M/4, paras. 85, 86, 91, 97.
266 TN/IP/M/3, para. 101.TN/IP/W/7/Rev.1
Page 35
- In response, it has been said that not only  the costs incurred should be taken into
account but also the effect of the outcome or the benefits that could be drawn from
the system.267  A system genuinely helping producers, consumers and administrations
to get protection under Article 23 could more than justify higher implementation
costs than one which provides no such help.268  The costs of the system would be
relatively small compared to the costs incurred in other fields of intellectual property
rights.269
- In regard to the proposal in TN/IP/W/5, it has been said that the system would be a
simple one, not place undue financial burden upon participating Members nor have
any legal or financial obligation upon non-participating Members.270
1. Costs to governments
120. In regard to the proposal contained in IP/C/W/107/Rev.1 , it has been said that the following
costs to governments would arise271:
- the cost of putting new legislation into place;
- the cost of establishing a national system for the examination of geographical
indications in those Members which do not already have such a system;
- the cost of creating a file regarding each notification;- the cost of translating the notified geographical indication and the information
accompanying the notification where necessary;
- the cost of investigations necessary to determine whether a notified GI falls under one
of the exceptions in Article 24.4 and 24.6 and is consistent with the definition in
Article 22.1;
- the cost of establishing whether there is a conflict with an existing trademark.  Where
a country protects unregistered trademarks, this would involve public consultations;
- the cost of engaging in bilateral negotiations and, in the case of the supplementary
proposal in IP/C/W/255, of entering into an arbitration procedure.
121. The view has been expressed that the demands of the system in terms of examination  might
be such that national administrations would not be  capable of completing the work involved within
the prescribed 18 months.  This could lead to a large number of oppositions.
272  What is involved is
not the costs associated with one or two notificatio ns, but rather those associated with analysing and
assessing the history of geographical indications in certain countries which have had systems for their
protection in place for a long time.  Countries which are new to the protection of geographical
indications have significant concerns about the workload and costs entailed.273  Further, the point has
been made that the system envisaged in IP/C/W/ 107/Rev.1 would not be cost-effective since it might
oblige Members to examine notifications of geographical indications even where the applicant has no
                                                     
267 TN/IP/M/2, paras. 109, 111, 112;  TN/IP/M/3, para. 75;  TN/IP/M/4, para. 94.
268 TN/IP/M/2, para. 109;  TN/IP/M/4, para. 94.
269 TN/IP/M/3, para. 83.
270 TN/IP/W/6, paras. 24, 42.
271 TN/IP/M/2, para. 107;  TN/IP/M/3, para. 77;  TN/IP/M/4, paras. 85, 86;  TN/IP/M/5, para. 117.
272 TN/IP/M/4, para. 85.
273 TN/IP/M/4, para. 100.TN/IP/W/7/Rev.1
Page 36
commercial interest in the markets of the Members concerned.274  A survey of the costs of
examination of a single mark indicates costs that range from a few hundred to over US$1,000
according to the Member.  A rough estimate of the cost of examining a single geographical indication
in all Members is thus in the order of US$50,000, costs which would have to be borne by
governments, not the applicant.275
122. In response, it has been said that the advantages of the system have to be looked at as well as
its costs.276  For example, the phase of examination would allow Members to collect information on
notified geographical indications before making formal opposition would reduce the number of
disputes.  In the same vein, although the system of arbitration might, at first sight, seem a source of
additional cost, it should be considered as an "investment" in finally resolving differences and saving
costs that would otherwise be incurred in bilateral negotiations or national procedures.277  The system
would also facilitate the task of trademark examiners in applying Articles 22.3 and 23.2.278  A register
with the legal effect of a presumption of prot ectability would help national administrations.
Usurpation would diminish, and in turn, litigation (and administration costs) would decrease.279
123. In regard to the proposal in TN/IP/W/5 , it has been said that only minimal changes to existing
national regimes would be required.280  There would be some costs – compiling notifications in the
agreed format, those arising out of any opposition under national law, monitoring nationalgeographical indications to notify new ones or withdraw lapsed ones – but these would be less than
under the other proposals.
281  It has been said that, whereas under the proposal in IP/C/W/107/Rev.1,
the costs of examination and opposition, including translation costs, would not be borne by the
applicant but would fall on governments282, the costs of oppositions at the national level that might
flow from the system foreseen in TN/IP/W/5 might fall on interested parties, not always ongovernments.
283
124. In regard to the proposal in IP/C/W/107/Rev.1, it  has been said that there is nothing in the
system outlined in that document that would put  governments under an obligation to provide
"ex officio " enforcement of geographical indications.  Governments could leave this to the holders of
rights in geographical indications, who could avail themselves of the presumption established by thesystem in proceedings before courts or administrative agencies.
284
125. The issue of the costs that might be incurred by the governments of Members with little or
no producer interest  in the system because they do not have industries producing wines or spirits has
been discussed.  The point has been made that a Member which does not examine notifications and
lodge oppositions would not incur the associated administrative costs.285  In response, it has been said
that this would mean that such a Member would become a passive subject of obligations.  Moreover,
the question has been raised as to how could such a country know whether or not a term notified in its
language was generic if it does not make a translation?286
                                                     
274 TN/IP/M/4, para. 85.
275 TN/IP/M/4, para. 86.
276 TN/IP/M/2, paras. 109, 111;  TN/IP/M/3, para. 77.
277 TN/IP/M/3, para. 75.
278 TN/IP/M/3, para. 72.
279 JOB(02)/70, para. 22;  TN/IP/M/2, para. 69.
280 TN/IP/M/3, para. 78.
281 TN/IP/M/3, para. 68.
282 TN/IP/M/4, para. 86.
283 TN/IP/M/3, para. 34.
284 TN/IP/M/3, para. 72.
285 TN/IP/M/4, para. 72
286 TN/IP/M/4, para. 74.TN/IP/W/7/Rev.1
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126. In regard to the issue of how the costs on governments might be allocated or financed , it
has been suggested that a system whereby producers would directly file notifications under the system
could be envisaged.287  The view has also been expressed that the costs involved in examining
geographical indications should be borne solely by the applicant.288
127. In regard to the translation  costs that might fall on governments, a summary of the points
made on the tasks involved by translation can be found in paragraphs 74-80 above.
128. It has been suggested that a system by which a registration of a geographical indication would
be accepted by courts as prima facie evidence , in much the same way as some courts treat
registrations of works in copyright registries, would be simple and inexpensive but yield substantial
benefits.289  The Special Session could agree at the outset that the cost of operating the system should
be shared between Members on the basis of the number of applications filed by each of them.  In
relation to the proposal for cost-sharing based on the user-pay principle, the question has been raisedas to whether such a system, although only binding upon participating countries, could actually entail
hidden costs for all WTO Members.  The experience concerning the implementation of the Lisbon
Agreement seems to demonstrate that only a few countries are actually using and benefitting from the
system created by that Agreement.
290  It has also been suggested that a limit be set with regard to the
number of applications to be processed each year in order to manage the workload.291
2. Costs to producers
129. With regard to producers producing in the area that is designated by a geographical
indication , the following points have been made concerning the costs and benefits that could be
involved in the multilateral system:
- The view has been expressed that the systems proposed in IP/C/W/107/Rev.1 and
IP/C/W/255 would enable such producers to make savings as they would have easier
access to the legal means available to them to secure and enforce the level of
protection prescribed in Articles 22 and 23.292  Producers would not feel compelled to
seek protection of their GIs by way of prevention in each Member.  Occasional
free-riding of a notified GI would be discouraged because producers using GIs
notified by other countries would have to bear the burden of proof and incur litigation
costs.293  In case of litigation, the register would prove to be a tool for these producers
which would "facilitate" the protection of their GIs by reversing the burden of proof.
This could be particularly valuable for producers in developing countries who might
not otherwise have the means to assert their rights in all markets.  The notification,
examination and opposition phases should therefore be considered as an investment
in the usefulness and viability of the system;  the costs involved would be off-set bythe benefit that would be derived from a real facilitated protection.
294
- Further, the holders of rights in geographical indications would have a clearer view
regarding countries in which their geographical indications might have become
generic.  That would facilitate investment and export decisions.295
                                                     
287 TN/IP/M/3, para. 72.
288 TN/IP/M/4, para. 76.
289 TN/IP/M/3, para. 87;  TN/IP/M/5, para. 116.
290 TN/IP/M/5, para. 109.
291 TN/IP/M/5, para. 116.
292 TN/IP/M/3, para. 73.
293 JOB(02)/70, para. 20.
294 TN/IP/M/4, para. 94.
295 TN/IP/M/3, para. 73.TN/IP/W/7/Rev.1
Page 38
- The view has also been expressed that the proposal contained in TN/IP/W/5 would
benefit this category of producers very little since it does not provide for reversal of
the burden of proof or any other legal effect.296
130. With regard to the effects on producers other than those in the area indicated by a
geographical indication , the following points have been made:
- The cost of the proposal contained in IP/C/W/107/Rev.1 to such producers could be
very significant.  While a Member may not have to protect a term that is generic in its
own territory, other Members not having opposed the notification within the time-
limit of 18 months would be obliged to protect it and would have to stop the
importation of all products bearing that term coming from any Member other than the
notifying one.297
- The costs of an opposition system as suggested in IP/C/W/107/Rev.1 would be very
heavy;  as shown by the WTO dispute settlement system, not only are the costs high
for governments but there are also many costs for producers and exporters.
Furthermore, Members would live in a state of uncertainty as regards their future as
exporters or producers because of the length of the opposition procedure.298
- In response, it has been said that such producers would not be required to re-label
their products and would not incur costs.  If they have been exporting products to
countries in which the names are not generic, they would be able to continue
exporting to such countries until the "legitimate producer" challenges that practice.
These exports may continue, if justifiable under any of the other exceptions of
Article 24 of the TRIPS Agreement.  Where the exports cannot be justified underthose exceptions, use of a protected name and use of that name would have to cease if
so demanded by the right holder.  In that regard, the situation with a register is not
different from that which exists without it:  if the right holder were to challenge such
a practice solely under domestic legislation, the outcome would have to be the
same.
299
3. Costs to consumers
131. The following views have been expressed:
- The system proposed in IP/C/W/107/Rev.1 would reduce competition and thus impose
some costs on consumers, especially those who have been used to having access to
products bearing notified geographical indications but not coming from the
geographical area so indicated and which cost less than the genuine product.300  Th is
would be the case particularly in those WTO Members that have not challengednotifications in a timely manner.
301  This might apply in particular to the produce of
"new world" wine producers who have been endeavouring to bring to consumers a
wider diversity of wines at competitive prices.302
                                                     
296 TN/IP/M/4, para. 94.
297 TN/IP/M/3, para. 78;  TN/IP/M/4, para. 129;  TN/IP/M/5, para. 117.
298 TN/IP/M/2, para. 95;  TN/IP/M/4, para. 54.
299 TN/IP/M/3, para. 73.
300 TN/IP/M/3, paras. 79, 91.
301 TN/IP/M/5, para. 117.
302 TN/IP/M/1, para. 39.TN/IP/W/7/Rev.1
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- Since the proposal in IP/C/W/107/Rev.1 provides that the obligations flowing from the
register would be applied in all WTO Members regardless of whether they are
participating or not, these costs would be incurred by consumers in all WTO Members,
and not just in those Members with interest in producing wines and spirits.303
- In response, it has been said that consumers have a genuine interest in gaining easier
access to those legal means that the TRIPS Agreement makes available to them in order
to prevent misuse of geographical indications in their markets.304  Consumer
associations, which have fewer resources than producers, could more easily defend their
interests under the system in IP/C/W/107 /Rev.1 against persons who market their
products using notified geographical indications.305
- Any costs on consumers from the cessation of infringing activity would be no different
from those incurred in the field of trademarks from action against counterfeiting.306
- In regard to the proposal in TN/IP/W/5, the view has been expressed that it would not
bring any added value to the legal standing of consumers in being able to prevent
infringement of geographical indications in their territories.307
4. Costs to the administering body
132. It has been said that, under the proposal in TN/IP/W/5 , since the administering body's main
tasks would be to design, compile and maintain the notifications in a searchable database (also
accessible on the WTO website)308, the administrative cost to the administering body would not be
substantially different from that incurred by the WTO Secretariat in administering existing WTO
notification systems.309  In regard to the proposal in IP/C/W/107/Rev.1 , it has also been said that the
costs to the administering body would basically consist of the costs of compiling and distributingnotifications, possibly translating them if the system so requires, annotating challenges and updating
the system.
310  In this regard, it has also been suggested to have the documents accessible on the WTO
website.311
133. In regard to the issue of the most appropriate way of financing or allocating the costs  that
would be incurred by the administering body, it ha s been said that it would be inappropriate to
apportion the cost of compiling and maintaining the searchable database to all WTO Members
because not all are wine or spirit producers for inte rnational trade and are likely to participate in the
system.312  Non-participating Members should not be required to share the costs of running the
system.313  It has been suggested that a system based on user fees which would be apportioned on the
basis of a number of GIs notified be foreseen.314  This would be consistent with other similar
                                                     
303 TN/IP/M/3, para. 91.
304 TN/IP/M/1, para. 2.
305 JOB(02)/70, para. 21.
306 TN/IP/M/3, para. 85.
307 JOB(02)/70, para. 26;  TN/IP/M/2, para. 69.
308 TN/IP/M/3, para. 68.
309 TN/IP/M/3, para. 88.
310 TN/IP/M/3, para. 71.
311 TN/IP/M/3, para. 59.
312 TN/IP/M/3, paras. 68, 71, 86.
313 TN/IP/M/4, para. 33.
314 TN/IP/M/2, para. 102;  TN/IP/M/3, paras. 68, 75.TN/IP/W/7/Rev.1
Page 40
multilateral systems.315  It has also been noted that Members would be free to determine at the
national level who would bear the fees, the government or the producers.316
134. The suggestion has been made that, to minimize costs to Members of running the system, the
involvement of the International Bureau of WIPO  could be envisaged.  On the basis of an
arrangement between WIPO and the WTO, the International Bureau of WIPO could be asked tomanage the system.
317
135. In response to questions, the International Bureau of WIPO has provided information on its
experience regarding the inclusion of an a new official language for procedure in the framework of
the Madrid Protocol.  Preliminary explanations have been given regarding various fees under the
Patent Cooperation Treaty, such as translation fees.318
136. This issue of the costs that would be incurred by developing and least-developed countries
has been discussed, including special and differential treatment ("S&D").  In this regard, the followingviews have been expressed:
- If the system were to be based on fees, it might be onerous for developing
countries.
319
- The suggestion has been made that there be a "waiver" or exemption regarding the
payment of fees by such countries and that there be some way of financing theparticipation of these countries in the system through technical assistance.
320
- The system proposed in TN/IP/W/5 would not impose undue burdens and would
satisfy the needs for S&D measures for LDCs and developing countries because it is
entirely voluntary.321
C. POSSIBLE ROLE OF THE SECRETARIAT
137. It has been said that, under the proposal contained in TN/IP/W/5 , the role of the Secretariat
would include the following:  receiving the information notified by each Member and placing it on a
readily accessible and searchable register;  distributing the information to Members concerning
changes either by notifications or withdrawals;  and providing basic information to Members on
procedural aspects of notifications and withdrawals.  However, it would be up to Members to ensurethat the information they have notified to the system has been accurately recorded and is kept up-to-
date.
322
138. Under the approach in IP/C/W/107/Rev.1 , the administering body would have to undertake
the tasks listed in that proposal.  In addition, the suggestions to complement this proposal would entail
the administering body having to carry out a brief examination as to form of notifications and
oppositions323, as well as the task of servicing arbitration panels.324  Regarding notification, this would
mean examining compliance with th e formal requirements of all notifications, publishing the notified
geographical indications and ensuring that Members are informed about those geographical
                                                     
315 TN/IP/M/2, para. 102.
316 TN/IP/M/3, para. 75;  TN/IP/M/4, para. 95.
317 TN/IP/M/3, paras. 82, 113, 114, 115;  TN /IP/M/4, para. 93;  TN/IP/M/5, para. 111.
318 TN/IP/M/3, paras. 97, 98.
319 TN/IP/M/4, para. 91.
320 TN/IP/M/3, para. 75;  TN/IP/M/4, paras. 95, 98.
321 TN/IP/W/5, pages 4-5, section 4;  TN/IP/M/3, para. 9;  TN/IP/M/5, para. 117.
322 TN/IP/W/5;  TN/IP/M/4, paras. 104, 116.
323 TN/IP/M/4, para. 94.
324 TN/IP/M/3, para. 114.TN/IP/W/7/Rev.1
Page 41
indications.  Regarding registration, it would mean administering the register, entering geographical
indications onto the register, publishing registered geographical indications periodically in a
transparent manner, and handling cancellations of registrations under clearly set conditions.  During a
specified time-period, it should take evidence of all challenges made by Members as well as of the
results of such challenges.325
139. The question of whether it would be appropriate for the administering body to conduct
summary examinations as to form  of notifications and challenges has been discussed.  In addition to
the points already set out on this matter in para graphs 81-84 above, the following views have been
expressed:
- Placing the WTO Secretariat in a position of having to take a view as to whether a
notification is consistent with the definition of a geographical indication or falls
within one of the Article 24 exceptions would be inconsistent with its long-standingpractice of not commenting on legal matters.
326
- The proposal would not be feasible since it would require the administering body to
become familiar with the national systems of all WTO Members.327
- In response, it has been said that the administering body's task is not to examine
whether or not each notified geographical indication respects the national legislationof the country which has notified it or the TRIPS Agreement.  It would be a brief
examination as to form to ensure that there was some basis for the notification.
328  If
such a role would be inappropriate for the WTO Secretariat, it could be considered
whether the task of administering the system should be entrusted to a special body set
up for this purpose329 or another organization with technical skill in the area.330
IV. PARTICIPATION
140. In the List of Points and Issues for Discus sion at the June 2002 Meeting circulated by the
Chairman (JOB(02)/49, paragraph 7), he identified the following points and issues on this subject:
What is meant in Article 23.4 by, on the one hand, the requirement to establish a
"multilateral" system and, on the other hand, the provision that it should relate only togeographical indications "eligible for protection in those Members participating in the
system"?  It would be helpful for delegati ons to express their views on whether they
see a tension between these two concepts, a nd, if so, how best it should be resolved.
141. The point has been widely made that the language in Article 23.4 referring to the facilitation
of the protection of geographical indications eligible for protection "in those Members participating in
the system" makes it clear that WTO Members should be free to decide whether or not to
participate in the system and thereby to seek the facilitation of the protection of their
geographical indications under it .  Participation should be truly voluntary.
331
142. Most of the discussion under this heading has concerned the question of whether notifications
and registrations of geographical indications under the system should have any effect in WTO
Members that do not participate in the system.  Differing views have been expressed on this issue.
                                                     
325 TN/IP/M/4, para. 115.
326 TN/IP/M/4, paras. 108, 116;  TN/IP/M/5, para. 119.
327 TN/IP/M/4, para. 110.
328 TN/IP/M/4, paras. 112, 113.
329 TN/IP/M/4, paras. 109, 115.
330 TN/IP/M/4, paras. 22, 109.
331 TN/IP/M/5, para. 120.TN/IP/W/7/Rev.1
Page 42
143. One view is that the fact that Article 23.4 refers to a "multilateral system" makes it
clear that it is intended that notifications and registrations of geographical indications should
have effects in all WTO Members, including those that do not participate in the system .  In
support of this view, the following points have been made:
- It is necessary for the system to have effects for non-participating as well as
participating Members if it is to meet its objective of facilitating the protection of
geographical indications.332  Given that the future system would not create new rights
and obligations even if the notifications entail legal effects, it would be logical that
these legal effects apply in all WTO Members, bearing in mind that the rights that are
being protected already exist in all Members under Article 23 without registration.333
It is not clear how a voluntary system with no legal effect and constituting a mere listof GIs could facilitate the protection of GIs.
334
- Determining the meaning of the term "multilateral" can only be done by contrasting it
with the word "plurilateral".  In the cont ext of the WTO, "plurilateral" is understood
as referring to a system in which participation is entirely voluntary.  Conversely,
"multilateral" systems are understood to be instruments by which all Members are
bound.335
- It would not have been logical for the negotiators of Article 23.4 to have envisaged a
voluntary system in the sense that there would be legal effects only on the
participating countries, since a voluntary system already existed, namely the Lisbon
Agreement, and this had not been a successful instrument due to its voluntary
nature.336
144. Another view is that the system should not give rise to any mandatory effects on WTO
Members not participating in it .  The reference in Article 23.4 to a "multilateral system" should not
be taken to suppress or override the voluntary nature of the system made clear by the words
"Members participating in the system".337  In this regard, the following reasons for the use of the word
"multilateral" have been advanced:
- The word "multilateral" refers to the fact that the negotiation of the system is a
multilateral negotiation, taking place in a multilateral forum and pursuant to a
multilaterally agreed mandate and that the outcome of the negotiations would be a
multilaterally agreed result.  The term does not relate to the scope and character of the
system to be negotiated;  that is a function of the voluntary nature of the participation
in the system.338  The multilateral nature of the negotiating process meant that all
Members would participate in setting up the system, so that their concerns could betaken into account in the system, thus facilitating implementation as and when they
might decide to become part of it and also ensuring that they are familiar with what
the system required.
339  It could in no way be seen to imply compulsory
participation.340
                                                     
332 TN/IP/M/2, para. 120;  TN/IP/M/4, para. 28.
333 TN/IP/M/4, para. 28.
334 TN/IP/M/4, para. 29.
335 JOB(02)/70, para. 34;  TN/IP/M/4, paras. 21, 28.
336 TN/IP/M/4, para. 22.
337 TN/IP/W/6, para. 18;  TN/IP/M/2, para. 122;  TN/IP/M/4, paras. 16, 23, 24, 44.
338 TN/IP/W/6, para. 16;  TN/IP/M/2, paras.  122 and 123;  TN/IP/M/4, paras. 23, 25.
339 TN/IP/M/4, para. 23.
340 TN/IP/M/5, para. 121.TN/IP/W/7/Rev.1
Page 43
- Rather than comparing the word "multilate ral" with the term "plurilateral", the word
"multilateral" should be seen as opposed in meaning to "bilat eral" (between two
countries) and "regional" (among countries of a region).  The term "multilateral"
could cover two or more countries and need not cover all Members.341
- At the time that Article 23.4 was negotiated, it was not possible to know whether or
not all WTO Members would choose to participate in the system to be established
pursuant to that provision and it would not have been appropriate to have prejudged
this question by using the word "plurilateral".342
- The key consideration in determining whether an agreement can be considered
multilateral is whether it is open to all Members.  The fact that participation might be
voluntary does not detract from its multilateral character.  Reference has been made
in this regard to the criteria used for dete rmining what is a multilateral environmental
agreement.343
- In regard to the argument that paragraph 18 of the Doha Declaration means that all
WTO Members have committed themselves or showed willingness to participate in
the system, the point has been made that paragraph 18 of the Doha Declaration still
refers to the implementation of Article 23.4 of the TRIPS Agreement, which is clearon the question of voluntary participation.
344
145. In regard to the argument adva nced relating to the Lisbon Agreement, it has been pointed out
that not all of those Members who advocate a mandatory system were signatories of the Lisbon
Agreement at the time that Article 23.4 was negotiated, thus putting into doubt the argument that the
WTO system should be mandatory.  Moreover, it has to be taken into account that the LisbonAgreement does not have a dispute settlement mechanism and that this might have been a
fundamental consideration to those delegations who advocated Article 23.4.
345
146. In response, it has been said that understanding the term "multilateral" to make it clear that
the negotiations should take place in a multilatera l forum would mean that the word is redundant
given that Article 23.4 states explicitly that negotiations must be undertaken in the Council for TRIPS.Such a method of construing this provision would not be consistent with the approach of the
Appellate Body which has held that agreements should be interpreted in such a way that all terms are
given appropriate meaning, that is without nullifying the meaning of individual terms within any
agreement.  The same consideration applies to the ar gument that the term "multilateral" refers to the
nature of the negotiating mandate.
346
147. The point has been made that developing countries that do not produce wines and spirits
would have to be convinced that it is appropriate for them to participate in the system.  Should theydecide not to participate, then they should not be affected by the system in any way.
347
148. The issue of whether the proposals that have been made would establish a proper balance of
rights and obligations between participating Members and non-participating Members  has been
discussed.  In this regard, the following points have been made:
                                                     
341 TN/IP/M/4, paras. 23, 25.
342 TN/IP/M/2, para. 122;  TN/IP/M/4, para. 24.
343 TN/IP/M/2, para. 126;  TN/IP/M/4, paras. 33, 34;  TN/IP/M/5, para. 121.
344 TN/IP/M/4, para. 34.
345 TN/IP/M/4, para. 25;  TN/IP/M/5, para. 121.
346 TN/IP/M/4, para. 22.
347 TN/IP/M/5, para. 122.TN/IP/W/7/Rev.1
Page 44
- The proposals contained in IP/C/W/107/Rev.1 and IP/C/W/255 attempt to strike a
balance by making some of the effects of the system applicable to all WTO Members
and limiting other effects to participating Members only.348  Given that the register
would only facilitate the protection of geographical indications that Members are
already obliged to protect under the TRIPS Agreement, the proposed legal effects onnon-participating Members is not disproportionate since the system would merely
create a presumption of the eligibility for protection of a registered and
non-challenged geographical indication and not create any new rights.
349
- In response, it has been said that it could not be accepted that a balance is achieved
when for those Members participating in the system there are rights and obligations,
but for those Members who chose not to participate in the system there are no rights
but only obligations.350
- The systems proposed in IP/C/W/255 and IP/C/W/107/Rev.1 would impose
mandatory substantive new obligations and costs on Members which do not produce
wine and stand to benefit little from the proposed systems.  This stems from the
foreclosing of the possibility to use exceptions if this is not done within 18 months
following the notification of a GI.351
- On the other hand, the proposal contained in TN/IP/W/5 provides an appropriate
balance.  For those who choose to participate in the system, there are rights and
obligations and, for those who do not, there are none.352
149. In regard to least-developed countries , the view has been expressed that it would be
inappropriate for the obligations flowing from the proposal contained in IP/C/W/107/Rev.1 to applyto such Members.
353  The necessary solutions and flexibilities for these Members should be
explored.354  This could be done through a reference to special and differential treatment.355
150. In regard to special and differential treatment , the view has been expressed that this is
effectively applied by the proposal in TN/IP/W/5 since, as a consequence of participation being
voluntary, Members who do not wish to participate in the system would not find themselves facing
the same obligations as those who do.356  The proposal thus provides a self-regulating mechanism for
special and differential treatment.357
                                                     
348 JOB(02)/70, para. 36.
349 TN/IP/M/4, para. 28.
350 TN/IP/M/2, para. 130.
351 TN/IP/M/4, para. 16.
352 TN/IP/M/2, para. 130.
353 TN/IP/M/2, para. 127;  TN/IP/M/4, para. 20.
354 TN/IP/M/4, para. 20.
355 TN/IP/M/2, para. 133.
356 TN/IP/M/4, para. 15.
357 TN/IP/W/5, page 4;  TN/IP/M/3, para. 9;  TN/IP/M/4, para. 18;  TN/IP/M/5, para. 120.TN/IP/W/7/Rev.1
Page 45
ANNEX 1 – LIST OF DOCUMENTS OF THE COUNCIL FOR TRIPS (1997-2003)
Document
SymbolCommunicated
byTitle Distribution Date
2003
TN/IP/M/5 Secretariat Minutes of the meeting of 21 February
200328 April 2003
TN/IP/W/8 Hong Kong, China Multilateral System of Notification and
Registration of Geographical IndicationsUnder Article 23.4 of the TRIPS
Agreement23 April 2003
JOB(03)/76 European
CommunitiesTraditional Expressions 23 April 2003
JOB(03)/75 Chairman Draft Text of Multilateral System of
Notification and Registration of
Geographical Indications for Wines and
Spirits16 April 2003
JOB(03)/60 Chairman Multilateral System of Notification and
Registration of Geographical Indications
for Wines and Spirits:  PossibleElements/Options20 March 2003
JOB(03)/51 Australia Traditional Expressions 6 March 2003
TN/IP/W/7 Secretariat Discussions on the Establishment of a
Multilateral System of Notification andRegistration of Geographical Indications
for Wines and Spirits:  Compilation of
Issues and Points18 February 2003
TN/IP/M/4 Secretariat Minutes of the Meeting of 28 November
20026 February 2003
2002
TN/IP/W/4/Add.1 Secretariat Multilateral Notification and Registration
Systems – Addendum27 November 2002
TN/IP/W/6 Argentina,
Australia, Canada,
Chile, New Zealand
and the United
StatesMultilateral System of Notification and
Registration of Geographical Indications
for Wines (and Spirits)29 October 2002TN/IP/W/7/Rev.1
Page 46
Document
SymbolCommunicated
byTitle Distribution Date
TN/IP/W/5 Argentina,
Australia, Canada,
Chile, Colombia,
Costa Rica,Dominican
Republic, Ecuador,
El Salvador,
Guatemala,
Honduras, Japan,Namibia, New
Zealand, the
Philippines,
Chinese Taipei and
the United StatesProposal for a Multilateral System for
Notification and Registration of
Geographical Indications for Wines and
Spirits Based on Article 23.4 of theTRIPS Agreement23 October 2002
TN/IP/M/3 Secretariat Minutes of the Meeting of
20 September 200221 October 2002
TN/IP/W/4 Secretariat Multilateral Notification and Registration
Systems18 September 2002
TN/IP/M/2 Secretariat Minutes of the Meeting of 28 June 2002 26 August 2002
JOB(02)/94 Australia Intervention Made by the Delegation of
Australia at the Special Session of 28 June200226 July 2002
TN/IP/W/3 Bulgaria, Cyprus,
the Czech
Republic, the
European
Communities and
their memberStates, Georgia,
Hungary, Iceland,
Malta, Mauritius,
Moldova, Nigeria,
Romania, theSlovak Republic,
Slovenia, Sri
Lanka, Switzerland
and Turkey
358Negotiations Relating to the
Establishment of a Multilateral System of
Notification and Registration of
Geographical Indications24 June 2002
JOB(02)/70 The European
Communities and
their member StatesNegotiations Relating to the
Establishment of a Multilateral System of
Notification and Registration ofGeographical Indications – Issues for
Discussion at the Special Session of the
TRIPS Council of 28 June 2002 -
Informal Note24 June 2002
JOB(02)/49 Chairperson List of Poin ts and Issues for Discussion at
the June 2002 Meeting4 June 2002
                                                     
358 For Estonia see document TN/IP/M/2, para. 21.TN/IP/W/7/Rev.1
Page 47
Document
SymbolCommunicated
byTitle Distribution Date
JOB(02)/44 The European
Communities and
their member StatesHow to achieve a Focused and Structured
Agenda to Negotiate the Establishment of
a Multilateral System of Notification and
Registration28 May 2002
TN/IP/W/2 United States Issues for Discussion in the Negotiation
Under Article 23.410 April 2002
TN/IP/W/1 United States Questions and Answers – Comparison of
IP/C/W/107/Rev.1 ("EC Proposal"),
IP/C/W/133/Rev.1 ("Joint Proposal"),
IP/C/W/255 ("Proposal by Hungary")9 April 2002
TN/IP/M/1 Secretariat Minutes of the Meeting of 8 March 2002 22 March 2002
2001
IP/C/M/33 Secretariat Minutes of the Meeting of 19-20
September 20012 November 2001
IP/C/M/32 Secretariat Minutes of the Meeting of 18-22 June
200123 August 2001
IP/C/M/30 Secretariat Minutes of the Meeting of  2-5 April 2001 1 June 2001
IP/C/W/259 The European
Communities and
their member StatesEstablishment of a Multilateral System of
Notification and Registration of
Geographical Indications Under
Article 23.4 of the TRIPS Agreement –
Comparative Table of the Main Proposals
Submitted to Date31 May 2001
IP/C/W/260 The European
Communities andtheir member StatesEstablishment of a Multilateral System of
Notification and Registration ofGeographical Indications under
Article 23.4 of the TRIPS Agreement -
Comments on the Proposal Jointly
Submitted by Canada, Chile, Japan and
the United States (IP/C/W/133/Rev.1)30 May 2001
IP/C/W/255 Hungary Incorporation of Elements Raised by
Hungary in IP/C/W/234 into the Proposalby the European Communities and their
member States on the Establishment of a
Multilateral System of Notification and
Registration of Geographical Indications3 May 2001
IP/C/M/29 Secretariat Minutes of the Meeting of 27-30
November and 6 December 20006 March 2001
2000
IP/C/W/234 Hungary Opposition/Challenge Procedure in the
Multilateral System of Notification and
Registration of Geographical Indications11 December 2000
IP/C/M/28 Secretariat Minutes of the Meeting of 21-22
September 200023 November 2000
IP/C/M/27 Secretariat Minutes of the Meeting of 26-29 June
200014 August 2000TN/IP/W/7/Rev.1
Page 48
Document
SymbolCommunicated
byTitle Distribution Date
IP/C/W/189 New Zealand New Zeala nd's System of Protection for
Geographical Indications and the
Multilateral Notification and Registration
System for Geographical IndicationsUnder Article 23.4 of the TRIPS
Agreement22 June 2000
IP/C/W/107/Rev.1 The European
Communities and
their member StatesImplementation of Article 23.4 of the
TRIPS Agreement Relating to the
Establishment of a Multilateral System of
Notification and Registration ofGeographical Indications - Revision22 June 2000
IP/C/M/26 Secretariat Minutes of the Meeting of 21 March 2000 24 May 2000
1999
IP/C/M/25 Secretariat Minutes of the Meeting of 20-21 October
199922 December 1999
IP/C/M/24 Secretariat Minutes of the Meeting of 7-8 July 1999 17 August 1999
IP/C/W/133/Rev.1 Canada, Chile,
Japan and the
United StatesProposal for a Multilateral System for
Notification and Registration of
Geographical Indications for Wines and
Spirits Based on Article 23.4 of the
TRIPS Agreement26 July 1999
IP/C/M/23 Secretariat Minutes of the Meeting of 21-22 April
19992 June 1999
IP/C/M/22 Secretariat Minutes of the Meeting of 17 February
19999 April 1999
IP/C/W/134 United States Suggested Method for Domestic
Recognition of Geographical Indications
for WTO Members to Produce a List of
Nationally-protected Geographical
Indications11 March 1999
IP/C/W/133 Japan and the
United StatesProposal for a Multilateral System for
Notification and Registration ofGeographical Indications for Wines and
Spirits Based on Article 23.4 of the
TRIPS Agreement11 March 1999
IP/C/M/21 Secretariat Minutes of the Meeting of 1-2 December
199822 January 1999
1998
IP/C/M/20 Secretariat Minutes of the Meeting of 17 September
199815 October 1998
IP/C/M/19 Secretariat Minutes of the Meeting of 16 July 1998   5 August 1998
IP/C/W/107 The European
Communities andtheir member StatesProposal for a Multilateral Register of
Geographical Indications for Wines andSpirits Based on Article 23.4 of the
TRIPS Agreement – Establishment of the
Register and Registration Procedure28 July 1998
IP/C/M/18 Secretariat Minutes of the Meeting of 12 May 1998 11 June 1998
IP/C/M/17 Secretariat Minutes of the Meeting of 24 February
199823 March 1998TN/IP/W/7/Rev.1
Page 49
Document
SymbolCommunicated
byTitle Distribution Date
1997
IP/C/M/16 Secretariat Minutes of the meeting of 17-21
November 1997  5 December 1997
IP/C/W/85 Secretariat Overview of Existing International
Notification and Registration systems for
Geographical Indications Relating to
Wines And Spirits17 November 1997
IP/C/M/15 Secretariat Minutes of the Meeting of 19 September
199715 October 1997
IP/C/M/14 Secretariat Minutes of the Meeting of 15 July 1997 15 August 1997TN/IP/W/7/Rev.1
Page 50
ANNEX 2 – PROPOSALS FROM DELEGATIONS
EXCERPT FROM IP/C/W/107/REV.1
(COMMUNICATION FROM THE EUROPEAN COMMUNITIES
AND THEIR MEMBER STATES )
"ATTACHMENT
REVISED PROPOSAL BY THE EUROPEAN COMMUNITIES
AND THEIR MEMBER STATES
ESTABLISHMENT OF A MULTILATERAL SYSTEM OF NOTIFICATION AND
REGISTRATION OF GEOGRAPHICAL INDICATIONS
A. MEMBERS' PARTICIPATION IN THE MULTILATERAL SYSTEM
1. All Members may participate in the multilateral system of notification and registration by
making a voluntary declaration to the Secretariat.
2. Having made such a declaration, Members shall apply the operating rules of the multilateral
system of notification and registration.
3. The participation or non-participation of Members in the multilateral system of notification
and registration shall be without prejudice to their rights and obligations under section 3 of Part II of
the TRIPS Agreement, unless otherwise foreseen in this multilateral system.
B. NOTIFICATION AND PUBLICATION OF GEOGRAPHICAL INDICATIONS
1. A participating Member shall notify, without delay, the Secretariat its declaration of
participation in the system.
2. It shall notify all geographical indications which identify goods as originating in its territory,
corresponding to the definition in Article 22, paragraph 1 of the TRIPS Agreement.
3. Notification to the Secretariat shall be accompanied by copies of national legislative,
administrative or judicial decisions and, if necessary, bilateral, regional or multilateral agreementsindicating the date on which each geographical indication first received protection in the country of
origin.  Any time-limit on that protection and the type of product in question, as well as prima facie
evidence of the geographical indication's conformity with the provisions of the Agreement, should
also be provided.
4. Each participating Member may provide any other information it considers useful for the
Agreement's implementation and for national application of the prohibition on the use of geographical
indications for non-originating products.
5. National provisions implementing the multilateral system of notification and registration shall
also be notified.
6. Each participating Member shall provide a contact point in its administration.TN/IP/W/7/Rev.1
Page 51
7. The geographical indications, notified by participating Members, shall be published as soon
as possible by the WTO Secretariat and notified to Members.
C. MULTILATERAL EXAMINATION OF GEOGRAPHICAL INDICATIONS PUBLISHED
1. Members may examine the published geographical indications.  They may send questions to
and ask for explanations from the participating Member in question within a period of 18 months
following publication by the Secretariat.
2. Where a Member challenges, in a duly justified manner, the protection of an individual
geographical indication notified by another Member, these Members shall enter into negotiations,
within the period of 18 months, aimed at resolving the disagreement.
3. These provisions are without prejudice to the application of the WTO Dispute Settlement
Understanding.
D. REGISTRATION
1. Geographical indications, which have been notified and published, shall be registered within
18 months of publication.  Registration shall refer to any challenge under provision C.2.
2. In the case of homonymous geographical indications, each indication shall be registered
subject to the provisions of Article 22, paragraph 4 of the TRIPS Agreement.
3. Participating Members shall facilitate the protection of an individual registered geographical
indication by providing the legal means for interested parties to use the registration as a presumption
of the eligibility for the protection of the geographical indication.
4. Members who have not challenged, within 18 months, the registration of an individual
geographical indication under provision C.2 shall not refuse its protection on the basis of
Articles 22.1, 22.4 and 24.6 of the TRIPS Agreement.
5. The obligation to protect an individual geographical indication shall be suspended if the
geographical indication is not or ceases to be protected in its country of origin or has fallen into disuse
in that country.
6. The Secretariat shall publish the registered geographical indications and inform Members of
them.
E. UPDATING THE MULTILATERAL SYSTEM
1. Participating Members shall notify the Secretariat of any additions or amendments to or
deletions from their initial notification of geographical indications.
2. The same examination and registration as well as publication procedures shall apply."TN/IP/W/7/Rev.1
Page 52
EXCERPT FROM IP/C/W/255
(COMMUNICATION FROM HUNGARY)
INCORPORATION OF ELEMENTS RAISED BY HUNGARY IN IP/C/W/234 INTO THE
PROPOSAL BY THE EUROPEAN COMMUNITIES AND THEIR MEMBER STATES ON
THE ESTABLISHMENT OF A MULTILATERAL SYSTEM OF NOTITIFICATION AND
REGISTRATION OF GEOGRAPHICAL INDICATIONS
"ANNEX
'The following text seeks to incorporate the points raised in Hungary's submission
(IP/C/W/234) into the proposal by the European Communities and their member States(IP/C/W/107/Rev.1) on the establishment of a multilateral system of notification and registration of
geographical indications:
a. The following two sentences would be added at the end of Paragraph C2:
'If such bilateral negotiations do not yield a mutually satisfactory result within the 18 month
period the dispute arising from the challenge shall be settled by multilateral arbitration.  Thedecision of the arbitrator shall be final and binding upon the parties.'
b. Part D would read as follows:
'1. Geographical indications, which have been notified, published and have not been challenged,
shall be registered within 18 months of publication.
'2. Until a challenge made in connection with the multilateral registration of an individual
geographical indication is not settled under the provisions in paragraph C2, the notified
geographical indication shall not be registered.
'3. Geographical indications successfully challenged on the basis of Article 22.1 or Article 22.4
of the Agreement on TRIPS shall not be registered.
'4. Geographical indications successfully challenged on the basis of Article 24.4, Article 24.5 or
Article 24.6 of the Agreement on TRIPS shall be registered and the registration shall refer to
the successful challenge.
'5. Participating Members shall not refuse protection for registered geographical indications. A
successful challenge made on the basis of Article 24.4, Article 24.5 or Article 24.6 of the
Agreement on TRIPS shall justify the refusal of protection only in respect of the Member or
Members which successfully challenged registration.
'6. Participating Members shall facilitate the protection of an individual registered geographical
indication by providing the legal means for parties to use the registration as a presumption of
the eligibility for the protection of the geographical indication.
'7. The obligation to protect an individual geographical indication shall be suspended if the
geographical indication is not or ceases to be protected in its country of origin or has fallen
into disuse in that country.
'8. The Secretariat shall publish the registered geographical indications and inform Members of
them."TN/IP/W/7/Rev.1
Page 53
EXCERPT FROM TN/IP/W/5
(COMMUNICATION FROM ARGENTINA, AUSTRALIA, CANADA, CHILE, COLOMBIA,
COSTA RICA, DOMINICAN REPUBLIC, ECUADOR, EL SALVADOR, GUATEMALA,
HONDURAS, JAPAN, NAMIBIA, NEW ZEALAND, THE PHILIPPINES,
CHINESE TAIPEI AND THE UNITED STATES)
"MULTILATERAL SYSTEM FOR NOTIFICATION AND REGISTRATION OF
GEOGRAPHICAL INDICATIONS ESTABLISHED UNDER ARTICLE 23.4
OF THE TRIPS AGREEMENT
1. Notification
WTO Members wishing to participate in the system will submit4 to the Secretariat a list of
domestic geographical indications for wines and spirits recognized as eligible for protection undertheir national legislation indicating for each indication the date on which recognition was granted by
the notifying Member and the date, if any, on which protection will expire.
In the interests of transparency and to ease use of the information by WTO Members
participating in multilateral agreements for the protection of geographical indications for wines andspirits, those WTO Members participating in such agreements must indicate the agreements under
which each of the notified geographical indications is protected.
Subsequently, Members participating in the system will notify only additional domestic
geographical indications for wines and spirits recognized as eligible for protection under their nationallegislation and will withdraw the notification of any previously notified geographical indication for
wine or spirits no longer recognized as eligible for such protection under their national legislation.
WTO Members may decide to participate or discontinue participation in the system at any
time by withdrawing their notifications.
2. Registration
Following receipt of notifications from participating Members, the Secretariat shall compile a
list on behalf of all WTO Members in the form of a searchable database of all notified geographical
indications for wines and spirits.  This database shall be known as the World Trade Organization
Geographical Indications Multilateral System for Wines and Spirits (the "Multilateral System forWines and Spirits").  The Multilateral System for Wines and Spirits shall include:  the geographical
indication for the wine or the spirit that has been notified, the WTO Member who made the
notification, the date on which the indication was protected by the notifying Member; the expiration
date of this protection, if any, in the notifying Member and any agreement for geographical
indications for wines and spirits under which the indication is protected.  In accordance withArticle 23.3, the same or similar geographical indication for wines and spirits may be submitted by
more than one WTO Member, provided the geographical indication is recognized by each notifying
WTO Member in accordance with its national regime for protecting geographical indications for
wines and spirits.
                                                     
4 The format for submissions shall be established through negotiations or, if the WTO Members so
agree, by the Secretariat.TN/IP/W/7/Rev.1
Page 54
Copies of the registered geographical indications for wines and spirits shall be distributed to
all WTO Members.  To ensure maximum transparency, the Secretariat shall, in addition to distributing
copies of the lists to WTO Members, make the lists accessible, in searchable form, on the WTO's
Internet Web Site ( www.wto.org) .
After the initial notification, the WTO Secretariat shall revise the database of notified
geographical indications for wines and spirits, adding or deleting indications in accordance with WTO
Members' notifications or a request for removal received from the WTO Member who originally
made the notification.
Decisions to grant protection for geographical indications for wines and spirits shall occur at
the national level.  If any WTO Member objects to the registration of a geographical indication forwines or spirits notified by another Member, the former may oppose the recognition of that
geographical indication in accordance with the laws of the notifying Member.
If an opposition is successful, the notifying Member shall request that the Secretariat remove
the registration of the challenged indication from th e Multilateral System for Wines and Spirits.  The
registration for that indication shall be removed from the Multilateral System and shall not be
included in any updated lists circulated to Members.
3. Legal Effects under National Legislation
WTO Members choosing to participate in the system will commit to consult, along with other
sources of information, the WTO Geographical Indications Multilateral System for Wines and Spirits
when making decisions regarding recognition and protection of geographical indications for wines
and spirits in accordance with their national le gislation.  Information obtained from the WTO
Multilateral System for Wines and Spirits would be taken into account in making those decisions inaccordance with that national legislation.  This proposal does not affect the applicability of Article 24
of the TRIPS Agreement;  all Article 24 exceptions to protection would remain in force under national
law.
WTO Members not participating in the system will be encouraged to refer to the WTO
Multilateral System for Wines and Spirits, along with other sources of information, in making
decisions under their national legislation involving recognition or protection of geographicalindications for wines and spirits in order to ensure that such decisions are based on the most complete
information available.  However, this system would not give rise to specific obligations for Members
that decide not to participate.  Members are therefore free to consider their own capacity to take on
obligations emanating from particip ating in the proposed system.
Any geographical indication for wines or spirits established in accordance with national
legislation is entitled to protection under Section 3 of Part II of the TRIPS Agreement, whether or not
it is registered in the WTO database.
4. Voluntary Participation
Participation in this system is voluntary.  Furthermore, the system will not prejudice or affect
the protection already contained in Section 3 of Part II of the TRIPS Agreement for geographical
indications for those Members choosing not to participate.  Requiring participation would increase
TRIPS obligations for WTO Members outside a full trade round and would be contrary to Article 23.4of the TRIPS Agreement.  A voluntary participation system fully adheres to the mandate in
paragraph 18 of the Ministerial Declaration.
This system satisfies the need for special or differential treatment measures for
least-developed and developing countries because it is entirely voluntary.TN/IP/W/7/Rev.1
Page 55
5. Monitoring the System
The TRIPS Council shall examine the operation of the multilateral system for notification and
registration of geographical indications for wines and spirits four years after its establishment to
evaluate its effectiveness in facilitating protection of Members' geographical indications for wines andspirits in accordance with Section 3 of Part II of the TRIPS Agreement.  This examination shall not
constitute a re-negotiation of the system."TN/IP/W/7/Rev.1
Page 56
EXCERPT FROM TN/IP/W/8
(COMMUNICATION FROM HONG KONG, CHINA)
MULTILATERAL SYSTEM OF NOTIFICATION AND REGISTRATION OF
GEOGRAPHICAL INDICATIONS UNDER ARTICLE 23.4
OF THE TRIPS AGREEMENT
"ANNEX A
ALTERNATIVE MODEL FOR A MULTILATERAL SYSTEM OF NOTIFICATION AND
REGISTRATION OF GEOGRAPHICAL INDICATIONS ESTABLISHED UNDER
ARTICLE 23.4 OF THE TRIPS AGREEMENT
A. NOTIFICATION
1. Members wishing to participate in the system ("Participating Members")1 may notify the
administering body2 of any domestic geographical indications for wines and spirits which are
protected under their domestic legislation, judicial decisions or administrative measures.
2. Notifications submitted shall include the following:
(a) Details of the geographical indication (e.g. the name, the place or area, quality,
reputation or other characteristics, and goods indicated by the geographical
indication).
(b) The name and contact details of the owner of the geographical indication.(c) The Participating Member making the notification.(d) Details of the office competent to receive correspondence from the administering
body.
(e) Either:
A statement executed under seal by the government of the notifying Member to the
effect that the geographical indication:
(i) conforms with the definition in Article 22.1 of the TRIPS Agreement;(ii) is protected by law and has not fallen into disuse in the territory of the 
notifying Participating Member;  and
                                                     
1 It is assumed that the Participating Members will be making the notifications.  It may become
necessary to address the issue whether individual owners of geographical indications should be allowed to make
notifications directly.
2 So far the proposals from Members appear to be suggesting that the WTO Secretariat should be
responsible for the operation of the system.  Consideration may be given to whether other suitable internationalorganizations should be charged with the responsibility of operating the system.TN/IP/W/7/Rev.1
Page 57
(iii) a statement by the government of the notifying Participating Member that the
geographical indication is for wines and/or spirits.
Or:
The relevant domestic legislation or judicial decisions protecting the geographical
indication in the territory of the notifying Participating Member.
(f) Any commencement or expiry date of protection under the relevant domestic
legislation, administrative measures or judicial decisions of the notifying Member.
(g) The requisite fee.3
3. Notifications may be made at any time.  However, the administering body may fix the
maximum number of applications to be processed each year, having regard to the administrative
capacity and resources constraints of the administering body.
B. REGISTRATION
1. After receiving notifications from Participating Members, the administering body shall
undertake formality examination of the notifications and ensure that documents submitted are in
order.  The examination process does not involve substantive examination.
2. The administering body may require the notifying Participating Member to rectify any
deficiency if it considers the documentation submit ted fails to meet the stipulated minimum formal
requirements.
3. Once the administering body is satisfied that the formalities and documents submitted are in
order and the requisite fee has been paid, the geographical indications shall be recorded in the
Register of Geographical Indications.  For each geographical indication recorded on the Register, the
administering body shall, as soon as practicable, issue an official copy of the Certificate ofRegistration to the relevant Participating Member.  Certificates of Registration may be issued in
electronic form.
4. The Register of Geographical Indications shall contain the following information in respect of
each registered geographical indication:
(a) The name of the geographical indication.
(b) The place or area, other quality, reputation or characteristics, and the goods indicated
by the geographical indication.
(c) The name and contact details of the owner of the geographical indication.
(d) The Participating Member making the notification.
(e) Details of the office competent to receive correspondence from the administering
body.
                                                     
3 The user-pays principle applies.  The system will be  run on a full-cost recovery basis.  Consideration
might be given to special and differential treatment in  this regard for least-developed country Members and
developing country Members.TN/IP/W/7/Rev.1
Page 58
(f) The relevant statement executed under seal by the government of the notifying
Participating Member (as in A.2.(e) above) or the relevant domestic legislation,
judicial decisions or administrative measures protecting the geographical indication.
(g) Any commencement or expiry date of protection under the domestic legislation,
administrative measures or judicial decisions of the notifying Participating Member.
(h) A statement to the effect that the date of notification and registration shall not be
taken as providing evidence of priority between conflicting claims in respect of
identical or similar geographical indications.
(i) The date of registration.
(j) The serial number of registration.
5. The administering body shall notify the Participating Members of any new or amended
registrations.  This may be done by electronic means.
6. The Register (which should be kept up-to-date by the administering body) shall be made
available on the WTO Internet website for access and search by the public.  The administering body
shall distribute a copy of the Register to every Participating Member on an annual basis.
C. UPDATING OF THE MULTILATERAL REGISTER
1. Initial registrations shall be valid for a period of 10 years.  Subject to the payment of a
specified fee, Participating Members may submit a request to the administering body for the renewal
of registrations.  Each renewed term shall be a further period of 10 years, and there shall be no limit
on the number of times renewals can be made.
2. Participating Members requesting renewal of a geographical indication on the Register shall
submit the information set out in paragraph A.2 a bove, subject to any factual changes that have
occurred since the original registration or subsequent amendment.  Such applications shall be subject
to a formality examination as described in Part B of this Annex.
3. The relevant Participating Members shall, as soon as possible, notify the administering body
of any amendments or corrections to the registrations on the Register.  The administering body shall
allow such amendments or corrections to the registrations if it is satisfied that the notification is inorder and a specified fee has been paid.
4. The administering body shall be responsible for the compilation, maintenance and updating of
the Register.
5. If any registered geographical indications are no longer protected or have fallen into disuse in
the country of origin, the Participating Member who submitted the original application shall notify the
administering body and such geographical indications shall be removed from the Register
accordingly.
6. Any Participating Member may notify the administering body that a registered geographical
indication is refused protection by the courts, tribunal or administrative bodies in its country or
territory on grounds permitted under Articles 22 to 24 of the TRIPS Agreement.  The administering
body shall, as soon as possible, upon receipt of such a notice, transmit it to the Participating MemberTN/IP/W/7/Rev.1
Page 59
who submitted the original application and, at the same time, record the refusal in the Register
together with the reasons for refusal.4
D. EFFECT OF REGISTRATION
1. The Certificate of Registration (or such copies of the Certification as domestic laws may
permit) shall be proof of inclusion of the relevant geographical indication in the Register ofGeographical Indications in any domestic courts, tribunals or administrative bodies of the
Participating Members in any judicial, quasi-judicial or administrative proceedings related to the
geographical indication.
2. Registration of an indication on the Register shall be admitted as prima facie evidence to
prove:
(a) ownership of the indication;
(b) that the indication satisfies the definition in Article 22.1 of the TRIPS Agreement as a
geographical indication;  and
(c) that the indication is protected in the country of origin (i.e. Article 24.9 of the TRIPS
Agreement does not apply)
in any domestic courts, tribunals or administrative bodies of the Participating Members in any
judicial, quasi-judicial or administrative proceedings related to the geographical indication.  Theissues will be deemed to have been proved unless evidence to the contrary is produced by the other
party to the proceedings.  In effect, a rebuttable presumption is created in relation to the above three
issues.
5
3. Any of the facts intended to be proved by the prima facie evidence in paragraph D.2 abovemay be rebutted by evidence to the contrary.  Members may further provide, if their legal system so
permits, that costs may be awarded against the pa rty who has unsuccessfully challenged the prima
facie evidence.
6
4. For the avoidance of doubt:
(a) A Participating Member may refuse protection of a geographical indication in
accordance with its domestic laws, if any of the grounds or exceptions under
Articles 22 to 24 of the TRIPS Agreement is found to be applicable by its domestic
courts, tribunals or administrative bodies having regard to the relevant local
circumstances.
(b) Decisions of the domestic courts, tribunals or administrative bodies of Participating
Members shall only have territorial effect.
(c) The admittance of the prima facie evidence is not intended to affect the operation of
other presumptions which may be applicable under domestic laws.
                                                     
4 The recordal procedure is aimed at enhancing tran sparency.  The decision of the domestic courts,
tribunals or administrative bodies to refuse protection of a registered geographical indication shall only havebinding effect within its territory.
5 For jurisdictions where there is a distinction betw een legal burden and evidential burden of proof, the
proposed legal tool will shift the evidential burden of proof on issues (a)-(c) mentioned in this paragraph.
6 Such a provision may help to deter potential abuse of the right to challenge the prima facie evidence
on the basis of a Certificate Registration.TN/IP/W/7/Rev.1
Page 60
E. PARTICIPATION
Participation in the system is voluntary which means that:
1. Members should be free to participate and notify GIs protected in their territories.
2. The obligation to give legal effect to registrations under the system will only be
binding upon Members choosing to participate in the system.
F. REVIEW
The notification and registration system shall be subject to review after [four] years from
establishment of the system.  In particular, the question of scope of participation should be re-visited
as part of the review."
__________