WORLD TRADE
ORGANIZATIONIP/C/W/247
29 March 2001
(01-1596)
Council for Trade-Related Aspects
of Intellectual Property RightsOriginal:  English
PROPOSAL FROM BULGARIA, CUBA, THE CZECH REPUBLIC, EGYPT, ICELAND,
INDIA, LIECHTENSTEIN, MAURITIUS, NIGERIA, SRI LANKA,
SWITZERLAND, TURKEY AND VENEZUELA
The Secretariat has received the attached paper, by means of a communication dated
23 March 2001, from Bulgaria, Cuba, the Czech Re public, Egypt, Iceland, India, Liechtenstein,
Mauritius, Nigeria, Sri Lanka, Switzerland, Turkey and Venezuela with the request that it be
circulated to Members.
_______________IP/C/W/247
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WORK ON ISSUES RELEVANT TO THE PROTECTION OF
GEOGRAPHICAL INDICATIONS
EXTENSION OF THE PROTECTION OF GEOGRAPHICAL INDICATIONS FOR WINES
AND SPIRITS TO GEOGRAPHICAL INDICATIONS FOR OTHER PRODUCTS
I. INTRODUCTION AND OBJECTIVE
1. In communication IP/C/W/204/Rev.1, Bulgaria, the Czech Republic, Egypt, Iceland, India,
Kenya, Liechtenstein, Pakistan, Slovenia, Sri Lanka, Switzerland and Turkey presented their view on
why the issue of extending the protection of geographical indications for wines and spirits to
geographical indications for products other than wines and spirits is part of the negotiations in the
TRIPS Council under Section 3 of Part II of the TRIPS Agreement.
2. The purpose of the present communication is to sustain communication IP/C/W/204/Rev.1 by
demonstrating:
- why the level of protection provided by Article 22 of the TRIPS Agreement for
geographical indications for products other than wines and spirits is not sufficient;
- why providing two different levels of protection for geographical indications in the
TRIPS Agreement (one for wines and spirits and another one for products other than
wines and spirits), is not justified;  and
- why the extension of the protection of geographical indications for wines and spirits
to one uniform level of protection for geographical indications is necessary in order to
conform Section 3 of Part II to the goals of the TRIPS Agreement and to general
WTO principles.
II. ARTICLES 22 AND 23 OF THE TRIPS AGREEMENT:  TWO LEVELS OF
PROTECTION FOR ONE AND THE SAME INTELLECTUAL PROPERTY RIGHT
3. Article 22.1 of the TRIPS Agreement defines geographical indications which are protected by
the TRIPS Agreement as "indications which identify a good as originating in the territory of a
Member, or a region or locality in that territory, where a given quality, reputation or other
characteristic of the good is essentially attributable to its geographical origin".  Although, there is oneidentical definition for all geographical indications, Section 3 of Part II of the TRIPS Agreement
provides for two different levels of protection for geographical indications.
4. Article 22 covers geographical indications for products other than wines and spirits.  In
contrast to Article 23, Article 22 limits the protection of geographical indications to cases where the
public is misled by the use of a geographical indication as to the true geographical origin of the
product, or where such use constitutes an act of unfair competition ('misleading test').
5. Article 23 provides for so called "additional" protection of geographical indications in the
field of wines and spirits.  Under Article 23, there is no need to prove that the public is misled or that
there is unfair competition by using a certain geographical indication.  The use of accompanying
expressions such as "style", "type", "kind", "imitation" or the like are prohibited qua lege  and
protection is also provided when the indication is used in translated form.  The burden of proof does
not rest with the plaintiff of the geographical indication.  Under Article 23, competitors not producingwithin the geographical area are simply prevented from using the corresponding denomination, and
they may not use trademarks containing or consisting of geographical indications used to identify
wines or spirits (subject to the exceptions provided for in Article 24).IP/C/W/247
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6. Hence, the protection in Article 23 for geographical indications for wines and spirits is
notably enhanced compared to that provided in Article 22 for geographical indications for other
products, which relies on the 'misleading test'.
III. HISTORICAL BACKGROUND OF THE TRIPS PROVISIONS AND TODAY'S
CRUCIAL SIGNIFICANCE OF GEOGRAPHICAL INDICATIONS IN
INTERNATIONAL TRADE
7. The fact that the TRIPS Agreement provides a different scope of protection for geographical
indications for wines and spirits than for other products has its roots in a time before the Uruguay
Round.  The importance of geographical indications for the purpose of identifying and distinguishing
products, and the essential role human know-how and geographic and climatic factors play in the
end-quality of a product have been recognised for wi nes and spirits for a very long time.  Recognition
for the crucial significance which protected origins can play in the trading value of all sorts of other
goods at an international level also came, but more slowly.  By the time the Uruguay Round began,
some Members still held on to the premise that additional protection for geographical indications was
only truly required for wines and spirits, resulting in a heavy emphasis being placed by those
Members on the protection of geographical indications for these products throughout the negotiations.
However, there were also other Members who consistently pointed to the existence of other products
particularly vulnerable to imitation, counterfeiting and usurpation and insisted on the importance ofadditional protection for geographical indications for these other products as well.  Eventually,
Section 3 of Part II of the TRIPS Agreement was agreed upon as a compromise in the Uruguay
Round.  However, a specific provision was included in Article 24 which envisioned further
negotiations on increasing the protection of geographical indications.
1
8. Since the adoption of the TRIPS Agreement, Member awareness of the need for sufficient
protection of geographical indications for all products has continued to grow.  Also, the ongoing
negotiations in the field of industrial and agricultural products, as pursued by the WTO, shows the
growing importance of extending the level of protection for geographical indications for wines and
spirits for geographical indications to all products.  Such protection is an invaluable marketing tool
and an added value for exports because it increases the chances of market access for such goods.  Theextension of the so-called "additional" protection of Article 23 to geographical indications for
products other than wines and spirits must be part of the global vision of a multilateral trade system.
IV. THE TRIPS AGREEMENT DOES NOT PROVIDE SUFFICIENT PROTECTION
FOR GEOGRAPHICAL INDICATIONS OF PRODUCTS OTHER THAN WINES
AND SPIRITS
9. The limited protection granted by Article 22 as compared to Article 23 TRIPS Agreement
entails several deficiencies:
Article 22 enables free-riding on geographical indications
10. In order for the protection of Article 22 TRIPS Agreement to apply, the undue use of a
geographical indication has to mislead the public as to the geographical origin of the product or must
constitute an act of unfair competition.  The same applies for refusing or invalidating the registration
                                                     
1 The relevant legal provisions for this are Articles 23.4, 24.1 and 24.2 of the TRIPS Agreement.
In 1996, the TRIPS Council unanimously agreed “to enter into negotiations aimed at increasing the protection of
individual geographical indications under Article 23 ” (document IP/C/8, paragraph 26).  Moreover, the TRIPS
Council stated “that a review of the application of the provisions of the Section on Geographical Indications as
provided for in Article 24.2...permits inputs from delegations on the issue of scope ” (ibid., paragraph 34).  For
more information on this issue, see document IP/C/W/204/Rev.1, paragraph 9-16.IP/C/W/247
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of a trademark containing or consisting of a geographical indication with respect to goods not
originating in the territory indicated.
11. The requirement of the 'misleading test' in Article 22 is tailored to suit unfair competition or
consumer protection regulations but not intellectual property protection.  Compared to the protection
granted by Article 23 to geographical indications for wines and spirits, it does not provide a sufficient
intellectual property protection for the benefit of the producers entitled to use a geographicalindication.  It enables free-riding by other pr oducers on the renown of a geographical indication.  A
producer may use a geographical indication for his product, even if it does not originate in the
territory purported, as long as the product's true origin is indicated on the label.  Thus, a producer can
profit from the use of a "famous" geographical indication and argue at the same time that it is not
misleading the consumer.  As an example of such a mi s-guidance, let us just think of the case where a
producer uses the geographical indication 'Geneva' on a clock-face, even though the clock does not
originate from Geneva, but engraves the true origin on the back of the clock.
12. Unlike Article 23, Article 22 does not prevent the use of geographical indications in
translation or accompanied by expressions such as "style", "type", "kind", "imitation" or the like.
Such use should be prohibited.  Over time, it puts geographical indications at risk to become generic
terms.  Let us illustrate this by using the example of 'Etivaz', a cheese with a special flavour produced
in a specific area of Switzerland.  Labelling cheese not originating in the area of Etivaz withexpressions such as 'Etivaz-like' should not be allowed.  Otherwise, there is a risk that Etivaz becomes
a generic term for all cheese tasting similar to Etivaz cheese.
Article 22 leads to legal uncertainty
13. The requirement of the 'misleading test' in Arti cle 22 of the TRIPS Agreement results in legal
uncertainty as to the enforcement of protection for an individual geographical indication at the
international level.  It is up to the national courts and the national administrative authorities to decide
whether or not the public is being misled by a particular use of a geographical indication, and to
enforce their decision.  However, whether or not the public is being misled and how the legal and
administrative authorities apply and interpret this discretionary element of 'misleading the public'differs from country to country.  The result are inconsistent decisions and legal uncertainty regarding
the protection granted to geographical indications an d its enforcement at the international level.  Such
legal uncertainty undermines and damages the good functioning of international trade in goods having
the added value of a geographical indication.  It can be avoided by granting the level of protection as
provided by Article 23 of the TRIPS Agreement, which does not require the 'misleading test' orevidence of unfair competition, to all geographical indications.
Article 22 puts the burden of proof on the producer entitled to use a geographical indication
14. The 'misleading test' required in Article 22 carries another disadvantage for enforcing
protection of a geographical indication, namely, in order to defend a geographical indication for a
product under this Article, a plaintiff must prove to judicial or administrative authorities that the
public has been misled, or that there has been an act of unfair competition.  This is complicated andexpensive.  There is no such burden of proof put on the producer in the domain of geographical
indications for wines and spirits.  In contrast, Article 23 specifically prohibits per se  the use of
geographical indications for wines and spirits not originating in the place indicated by the
geographical indication.  This standard of protection should not only apply to geographical indications
for wines and spirits but for other products as well.IP/C/W/247
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V. NO JUSTIFICATION FOR TWO LEVELS OF PROTECTION FOR
GEOGRAPHICAL INDICATIONS
The difference in treatment according to products  concerned is an anomaly in the intellectual
property system of the TRIPS Agreement
15. Geographical indications stand on an equal footing with other intellectual property rights such
as trademarks or copyright.  In none of the other fields of intellectual property rights is a difference
made in the level of protection of those rights according product categories.  A uniform level of
protection applies.  There are no logical or legal reasons which could justify two different levels of
protection in the field of geographical indications.
There is no substantive justification for a discriminatory treatment between geographical
indications for wines or spirits and those for other products
16. To treat geographical indications for wines and spirits differently from those for other
products is substantively unjustified.  The geographical origin confers, whether due to natural or
human factors, intrinsic qualities to a good which a similar product without this origin will not have.
The geographical origin, from a commercial point of view, has the same importance for all products.
Often, the trade value of geographical indications for products other than wines and spirits is evenhigher than a specific geographical indication for a wine or a spirit.  Let us just think of famous
geographical indications such as 'Darjeeling tea', 'Carolina rice', 'Maine Lobster' or 'Bukhara' for
carpets, which possess great trade value.
VI. GOALS OF THE TRIPS AGREEMENT, GENERAL WTO PRINCIPLES
Avoiding trade distortions
17. The draft summary paper of the WTO-Secretariat on the responses to the checklist of
questions
2 shows that Members fulfil their obligation to protect geographical indications by a variety
of protection systems.  The level of protection granted varies:  Some Members seem to have adopted a
minimalist approach, implementing the TRIPS Articles 22 and 23 narrowly, while others provideadditional protection for geographical indications for all products.  The diversity of protection systems
and the differences in level of protection create a situation of unbalance and contribute to legal
uncertainty.  The result of this is trade distortions at the multilateral level.
Transparent and coherent legal framework at the multilateral level18. A horizontal goal of the WTO Agreements and a common interest of WTO Members is to
establish and ensure a fair and predictable legal framework within which international trade can
flourish.  The TRIPS Agreement, like other WTO agreements, aims to reduce trade distortions and
impediments to international trade.
3  Granting the level of protection of Article 23 of the TRIPS
Agreement not only to wines and spirits but to geographical indications for all products establishes a
uniform level of protection for geographical indications at the multilateral level and remedies the legal
uncertainty regarding the level of protection granted by WTO Members to a specific geographicalindication.  It also allows the TRIPS Agreement to provide a single benchmark for protection, which
would be implemented by Members at the national level, irrespective of the individual protection
system they choose to apply.  Predictability, transparency and legal security for the protection of
geographical indications within the WTO framework would be enhanced and the risk of trade
distortions minimized .
                                                     
2 JOB(00)/5619;  the draft summary paper covers the information delivered so far by 36 Members.
3 Cpr. TRIPS Agreement, Preamble, 1st paragraph.IP/C/W/247
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VII. CONCLUSION
19. The current differentiation regarding the level of protection for geographical indications made
by the TRIPS Agreement in Article 23 for wines and spirits and in Article 22 for all other products is
reminiscent of the perception of the relevance of geographical indications in the pre-TRIPS era.  It is
the result of a compromise agreed upon at the time of the Uruguay Round, which mandated further
work to improve protection for geographical indications.
20. The extension of the level of protection of geographical indications for wines and spirits to
geographical indications for all other products is in the best interest and to the benefit of all WTO
Members:  It is not a North-South issue.  Ev ery country – whether developed, developing or in
transition – has products which are the fruits of its culture and know-how, and its unique blend of soil,
water or climate, and which, therefore, deserve effective protection.  At a time when further trade
liberalisation is being striven for, it seems, particularly in relation to the negotiations going on in the
field of agriculture, a natural corollary that Member s should be able to fully reap the advantages of
their geographical indications when competing with their products on the liberalized world market.
This can only be done effectively by granting them additional protection against erosion of their
geographical indications.
21. In conclusion, Bulgaria, Cuba, the Czech Repu blic, Egypt, Iceland, India, Liechtenstein,
Mauritius, Nigeria, Sri Lanka, Switzerland, Tu rkey and Venezuela propose that the TRIPS Council
continues its negotiations and starts without any further delay to work out the legal modalities
necessary to eliminate the existing deficiencies in the TRIPS Agreement in the field of the protection
of geographical indications with a view to reach a mutually agreeable solution.
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