WORLD TRADE
ORGANIZATIONIP/C/W/353
24 June 2002
(02-3484)
Council for Trade-Related Aspects
of Intellectual Property RightsOriginal:  English
COMMUNICATION FROM BULGARIA, CUBA, CYPRUS, THE CZECH REPUBLIC, THE
EUROPEAN COMMUNITIES AND THEIR MEMBER STATES, GEORGIA, HUNGARY,
ICELAND, INDIA, KENYA, LIECHTENSTEIN, MALTA, MAURITIUS, PAKISTAN,
ROMANIA, THE SLOVAK REPUBLIC, SLOVENIA, SRI LANKA, SWITZERLAND,
THAILAND AND TURKEY
By means of a communication dated 19 June 2002, the following text has been received from
the Permanent Mission of Switzerland on behalf of the delegations of Bulgaria, Cuba, Cyprus, the
Czech Republic, the European Communities and their Member States, Georgia, Hungary, Iceland,India, Kenya, Liechtenstein, Malta, Mauritius, Pakistan, Romania, the Slovak Republic, Slovenia, Sri
Lanka, Switzerland, Thailand and Turkey with the request that it be circulated.
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THE EXTENSION OF THE ADDITIONAL PROTECTION FOR GEOGRAPHICAL
INDICATIONS TO PRODUCTS OTHER THAN WINES AND SPIRITS
I. OBJECTIVE
1. According to paragraphs 12 and 18 of the Doha Ministerial Declaration and the decision of
the Trade Negotiation Committee (TNC) of 1 February 2002, the issue of "extension" of the
protection of geographical indications for wines and spirits to geographical indications for other
products (hereinafter referred to as "extension") shall be addressed in the regular meetings of the
TRIPS Council on a priority basis
1, leading to a recommendation to the TNC by the end of 2002 for
appropriate action.
2. This communication discusses various aspects of the "extension" by highlighting how it could
be enshrined in Section 3 of the TRIPS Agreement, and formulates a proposal for appropriate action
to be included in the report of the TRIPS Council to the TNC, by the end of 2002, pursuant toparagraphs 12 and 18 of the Doha Declaration.
3. This proposal is designed to have effects only for the future and would not affect existing uses
of names that coincide with protected geographical indications to the extent that they have been in
conformity with the TRIPS Agreement, along the lines of what is embedded in Article 24 of theTRIPS Agreement.
                                                     
1  See document TN/C/1 dated 4 February 2002, page 3.IP/C/W/353
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II. PROTECTING ALL GEOGRAPHICAL INDICATIONS EQUALLY
4. Communications IP/C/W/247/Rev.12 and IP/C/W/308/Rev.13 set out the rationale of
"extension" and, in particular, why the protection provided by Article 22 of the TRIPS Agreement,
which is the only one available for geographical indications for products other than wines and spirits,is clearly insufficient, and how the protection provided for by Article 23 of the TRIPS Agreement for
wines and spirits, if extended to other products, would solve this situation.  The following reasons
shall be, in particular, recalled here:
- There are today no economic or systemic reasons for protecting geographical
indications for certain products differently from others. The risk of confusion between
products originating in a specific region and having a special quality due to thatorigin, on the one hand, and products using the same denomination but not having the
qualities derived from that specific region, on the other hand, is important and
damaging for any product, not just for wines and spirits.
- The protection currently provided for geographical indications for products other than
wines and spirits is inadequate.  It does not prevent products whose names are
ineligible for the geographical indication from free-riding on the reputation of genuine
geographical indications: this harms legitimate producers and the marketing of theirproducts actually originating from the place indicated by the geographical indication.
"Extension" will provide an adequate level of protection to geographical indications
for all  products.
- In particular, the condition that existing protection only applies to the extent needed to
prevent “misleading the public”, results in wide legal uncertainty.  Judges may reach
different decisions on whether the public is misled or not.
- Extended geographical indications protection facilitates product identification by the
consumer. Consumer choice is enhanced.
- "Extension" will open new market opportunities by preventing trade distortions.  The
benefits resulting  from "extension" wi ll foster development of local rural
communities and encourage a quality agricultural and industrial policy.  As is the case
for products protected via trademarks, those benefiting from adequate geographical
indication protection will be in a better position to benefit from an enhanced access to
third country markets.  As such, a geographical indication regime would bringeconomic benefits to producers worldwide, and not only to producers in countries
where the local protection of geographical indications is already stronger than in the
WTO.
- The administrative costs of "extension" are negligible.  Governments already apply
this type of protection to wines and spirits, as required by Article 23 of the TRIPSAgreement.  "Extension" affects how the laws should protect geographical
indications, so it is essentially a norm-setting issue that does not determine the form
                                                     
2 IP/C/W/247/Rev.1, Proposal from Bulgaria, Cu ba, the Czech Republic, Egypt, Iceland, India,
Jamaica, Kenya, Liechtenstein, Mauritius, Nigeria, Pakistan, Slovenia, Sri Lanka, Switzerland, Turkey andVenezuela.
3 IP/C/W/308/Rev.1, Communication from Bangladesh, Bulgaria, Cuba, The Czech Republic, Georgia,
Hungary, Iceland, India, Jamaica, Kenya, the Kyrgyz Republic, Liechtenstein, Moldova, Nigeria, Pakistan,
Slovenia, Sri Lanka, Switzerland and Turkey.IP/C/W/353
Page 3
of implementation, which, according to Article 1.1 of the TRIPS Agreement, is left to
be decided by each WTO Member.  WTO members have the choice to leave
enforcement to the right holders.  Trade-re lated technical assistance will continue to
be instrumental in ensuring adequate implementation of the provisions of the TRIPS
Agreement on geographical indications for developing and, especially, least-developed countries.
- The creation of a comprehensive geographical indication protection is not
incompatible with the smooth future development of business activities which take
place today in one WTO member on the basis of denominations protected in some
other WTO members on an exclusive basis.  The same problem has been satisfactorily
addressed in the context of wines and spirits as the TRIPS Agreement already
provides enough elements of flexibility such as exceptions and transitional periods,ensuring that disruption of trade flows does not occur. Transitional periods and
exceptions can accommodate the interests of producers and make re-labelling
unnecessary. Therefore, "extension" as such will not affect production and
exportation of products.
III. "EXTENSION":  AN ANALYSIS
A. D
EFINITION OF GEOGRAPHICAL INDICATIONS (ARTICLE 22.1 OF THE TRIPS A GREEMENT )
5. Geographical indications are defined in Article 22.1 of 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”.
6. According to this definition, a geographical in dication is an indication or sign borne by any
product:  (1) identified by the geographical indication as originating in a territory, region or locality
(2) where there is a specific quality, reputation or another characteristic inherent in these products,
and (3) this quality, reputation or other characteristic is essentially attributable to the geographical
origin of the products.  This could for example include local geographical factors (such as climate andsoil) or human factors present at the place of origin of the products (such as certain manufacturing
techniques or a traditional production method).
7. The definition of geographical indications is flexible enough as it may protect geographical
names of localities, regions or countries or any name that evokes a geographical origin as long as itmeets the above requirements, in particular, the link between the quality, reputation or other
characteristics of a product and its geographical origin.  At the same time, such definition clearly
excludes rules of origin or indications of source which do not indicate any quality, reputation or other
characteristic of the product but just the geographical origin of such product.  In this vein, rules of
origin are a tool for tariff classification and have to be distinguished from geographical indicationswithin the meaning of the TRIPS Agreement.
8. "Extension" has no implications on the definition of Article 22.1 of the TRIPS Agreement as
this debate only concerns the different level of protection between geographical indications for wines
and spirits and those for other products.  However, it is important to note that the TRIPS definition ofgeographical indications does not distinguish between products and, therefore, constitutes both a
premise and a precedent of harmonious, balanced protection of all geographical indications on all
products alike.IP/C/W/353
Page 4
B. EXTENDING THE SCOPE OF ARTICLE 23.1 OF THE TRIPS A GREEMENT
9. Article 23.1 of the TRIPS Agreement provides that:
"Each Member shall provide the legal means for interested parties to prevent use of a
geographical indication identifying wines for wi nes not originating in the place indicated
by the geographical indication in question or id entifying spirits for spirits not originating
in the place indicated by the geographical indication in question, even where the true
origin of the goods is indicated or the geographical indication is used in translation or
accompanied by expressions such as 'kind', 'type', 'style', 'imitation' or the like."
10. The practical effect of this provision is to permit interested parties to prevent, without having
to prove that the public is misled or that there is an act of unfair competition,
- the use of the geographical indication by others, generally, for products not
originating in the place indicated by the geographical indication in question (e.g.,
unqualified use of Napa Valley by French producers in France);
- the use of the geographical indication even in conjunction with an additional
indication in which the true place of origin of the products is indicated (e.g. , Napa
Valley of France);
- the use of the geographical indication even if the geographical indication is used in
translation (e.g., Valle de los Cactus);  and
- the use of the geographical indication if is accompanied by expression such as "kind",
"type", "style", "imitation" or the like (e.g., type of Napa Valley).
11. This protection of Article 23.1 of the TRIPS Agreement is supplemented by that of
Article 22.2(b) of the TRIPS Agreement, which seeks to prevent other illegitimate uses of the terms or
signs that are not contemplated specifically by Article 23.1 of the TRIPS Agreement, covering also
cases where a geographical indication denoting a special kind of products is used in the designation or
presentation of another category of products.
12. The rationale of the "extension" is that geographical indications for all products deserve the
same level of protection, i.e., the one which applies currently only to wines and spirits. In order toestablish such uniform protection for all products and extend the additional protection of Article 23.1
of the TRIPS Agreement to other products, it is proposed to remove the reference in Article 23.1 of
the TRIPS Agreement to wines and spirits, and to prevent the use of a geographical indication
“identifying products of the same category” not originating in the place referred to by the
geographical indication.  With "extension" the existing imbalance of Section 3 will disappear,providing the same level of effective protection to geographical indications for all products.
13. Advantages:
- TRIPS will ensure the same protection for all geographical indications, irrespective of
the product.
- Legitimate producers of a product identified by a geographical indication will be
better protected against illegal use of the geographical indication of such category of
products.  Competitors not producing such product within the indicated geographicalarea will be prevented from illegitimately using the geographical indication of such
products.  Hence all producers will have a clear view of the situations in which use ofIP/C/W/353
Page 5
a geographical indication for products of the same category is lawful or not.
Legitimate users of geographical indications will not have to undergo costly
procedures to demonstrate that the consumer is confused as the applicable test of
Article 23.1 of the TRIPS Agreement (e.g., whether the geographical indication is
used on a product not originating in the place referred by the geographical indication)is easier to ascertain, than the one required by Article 22.2 of the TRIPS Agreement.
The test is therefore made objective and judicial decisions will be uniform and
harmonious as the final decision is not left to the judge's appreciation on whether the
“public” is actually misled.
- Illegitimate use of a geographical indication with a “ délocalisant ” (i.e., so-called
semi-generics) indicating the true origin or use in translation or with expression such
as “kind”, “type”, “style”, “imitation” or the like will be prevented for allgeographical indications alike and will help therewith prevent more geographical
indications from becoming generic, thereby gradually losing all economic value.
C. T
HE RELATIONSHIP BETWEEN TRADEMARKS AND GEOGRAPHICAL INDICATIONS
(ARTICLE 22.3 AND 23.2 OF THE TRIPS A GREEMENT )
14. Geographical indications and trademarks are two distinct categories of intellectual property
rights which may enter into conflict.  The TRIPS Agreement devotes Articles 23.2 and 22.3 to those
conflicts when they concern wines and spirits or other products respectively.
15. Article 23.2 of the TRIPS Agreement establishes that:
"The registration of a trademark for wines wh ich contains or consists of a geographical
indication identifying wines or for spirits wh ich contains or consists of a geographical
indication identifying spirits shall be refu sed or invalidated, ex officio if a Members
legislation so permits or at the request of an interested party, with respect to such wines
or spirits not having this origin."
16. Article 22.3 of the TRIPS Agreement sets out a different rule for "non-wines and spirits"
geographical indications by establishing that:
"A Member shall, ex officio if its legislati on so permits or at the request of an interested
party, refuse or invalidate the registration of a trademark which contains or consists of a
geographical indication with respect to goods no t originating in the territory indicated, if
use of the indication in the trademark for such  goods in that Member is of such a nature
as to mislead the public as to the true place of origin."
17. Article 23.2 of the TRIPS Agreement does not come into play in the case of the registration of
a trademark which contains or consists of a geographical indication identifying another category of
products as the one identified by the geographical indication. In such circumstances, the general
standard protection of Article 22.3 of the TRIPS Agreement applies.
18. To sum up, the protection currently granted by Articles 22.3 and 23.2 of the TRIPS
Agreement makes that registration and validity of registered trademarks containing or consisting of
geographical indications be precluded when they are borne by wines and spirits and permitted when
they are borne by other products, if they do not mislead the public.
19. "Extension" would make Article 23.2 of the TRIPS Agreement apply to all products.
Consequently, the reference in Article 23.2 of the TRIPS Agreement to wines and spirits would be noIP/C/W/353
Page 6
longer necessary and should be replaced by a reference to the “products of the same category not
having that origin”.
20. Advantages:
- It facilitates the examination of the trademarks by administrative authorities,
trademark registrars or judges. They will refer to a simple, objective criterion (i.e., dothe products identified by a trademark, which contains or consists of a geographical
indication, really have the geographical origin referred by the geographical
indication?) when deciding whether or not to refuse the registration of a trademark, if
their legislation so permits, or to invalidate the trademark for products not originating
in the indicated region.
- The legitimate producers and other interested parties (e.g., legitimate producers from
the geographical location, representative associations from those areas, or evenassociations of consumers) will obtain a more effective and less costly protection of
their geographical indications against trademarks.  Trademark holders and applicants
will also have a clearer vision of whether a trademark containing a geographical
indication can be used or not.  This would also be instrumental in clarifying the
relationship between trademarks and geographical indications.
D. H
OMONYMOUS GEOGRAPHICAL INDICATIONS (ARTICLE 22.4 AND 23.3 OF THE TRIPS
AGREEMENT )
21. Article 23.3 of the TRIPS Agreement sets out a specific rule for homonymous geographical
indications for wines by establishing that:
“In the case of homonymous geographical i ndications for wines, protection shall be
accorded to each indication, subject to the provisions of paragraph 4 of Article 22.  Each
Member shall determine the practica l conditions under which the homonymous
indications in question will be differentiated from each other, taking into account the need
to ensure equitable treatment of the pr oducers concerned and that consumers are not
misled.”
22. Indeed, Article 23.3 of the TRIPS Agreement specifically covers the cases of homonymous
geographical indications for wines, whose use does not falsely represent to the public that the goodoriginate in another territory as provided in Article 22.4 of the TRIPS Agreement.  In such cases, both
indications must be protected and WTO Members concerned must determine the conditions necessary
to differentiate homonymous indications for wines.  In  doing so, they must ensure that consumers are
not misled and that the producers concerned are treated equitably.
23. The practical effect of this provision is that it prompts WTO Members to keep their markets
open in cases of homonymous geographical indications and mandates that adequate solutions arefound for the coexistence of products bearing the homonymous geographical indications.
24. Yet, this trade fostering solution is currently lim ited to wines, where it is clear that the same
solution could benefit to other products including spirits and certainly to all other products benefiting
from geographical indication protection.
25. With "extension", the reference to wines of Article 23.3 of the TRIPS Agreement should
simply be removed. This provision will apply to homonymous geographical indications for all
products.IP/C/W/353
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26. Article 22.4 TRIPS establishes a general rule for geographical indications for all products
which, although literally true as to the territory in wh ich the product originates, falsely represents to the
public that this product originates in another territory:
“The protection under paragraphs 1, 2 and 3 shall be applicable against a geographical
indication which, although literally true as to the territory, region or locality in which the
goods originate, falsely represents to th e public that the goods originate in another
territory.”
27. Article 22.4 of the TRIPS Agreement envisages cases where the name of a territory, region or
locality of a country or any name that evokes a geographical origin protected as a geographicalindication is the same or similar to a known territory, region or locality of another country.  This
provision forbids the use of a geographical indication to designate a product, notwithstanding the
legitimacy of the reference, should it give the public the impression that the products originate
elsewhere.  Currently homonymous geographical indications for products other than wines (i.e.,
where the name of two identical locations in different countries are both protected as geographicalindications) only benefit from this provision and not from Article 23.3 of the TRIPS Agreement.
28. With "extension", Article 22.4 of the TRIPS Agreement will also continue to apply in cases
where two geographical indications of two WTO Members are similar but not identical, if one of
these indications falsely represent to the public that the good which it designates originates in theterritory of the other Member.  Article 22.4 of the TRIPS Agreement would also apply where the
name of a territory, region or locality of a country, protected as a geographical indication, enters into
conflict with the same or a similar name that evokes a geographical origin in another country but does
not correspond to an existing location within its territory.
29. Advantages:
- It offers a balanced solution granting protection for geographical indications of
different countries for all products.
- The interests of producers lawfully using the same geographical indication in different
WTO Members will be taken into consideration.
- The consumers will be protected as is currently the case against any misleading use of
names of existing geographical locations protected as geographical indications.
- It promotes trade and keeps markets open.
E. ESTABLISHMENT OF A MULTILATERAL SYSTEM OF NOTIFICATION AND REGISTRATION OF
GEOGRAPHICAL INDICATIONS  (ARTICLE 23.4 OF THE TRIPS A GREEMENT )
30. Article 23.4 of the TRIPS Agreement provides for the establishment of a multilateral system
of notification and registration of geographical indications for wines and spirits4.  Such a system is
destined to facilitate the protection of geographical indications for wines and spirits.
                                                     
4  See Singapore Ministerial Declaration (document IP/C/8, para. 34), which extended the negotiations
to spirits .IP/C/W/353
Page 8
31. The aim of "extension" is to provide a level playing field of protection for geographical
indications of all products by enlarging the more effective protection of Article 23 of the TRIPS
Agreement to geographical indications for other products.
32. The multilateral system of notification and registration of geographical indications will
contribute to the implementation of a more effective protection generally for geographical indications.
A coherent approach to the protection of the geographical indications would suggest that the systems
be open to all geographical indications alike.
33. Therefore, it seems necessary that nothing in Article 23.4 of the TRIPS Agreement prevents
such a system of notification and registration of geographical indications from being open to any
geographical indication which meets the definition of Article 22.1 of the TRIPS Agreement .
34. Advantages:
- A multilateral system will facilitate the  protection of all geographical indications in
international trade.
- It will ensure more predictability for the protection of geographical indications in
WTO Members.
- It will facilitate the burden of proof of the plaintiffs and the workload of the judges
when having to decide on the legitimacy of the use of a geographical indication.  Such
a register will provide helpful reference to civil and administrative authorities in that
respect.
F. FLEXIBILITY , EXCEPTIONS  (ARTICLE 24 OF THE TRIPS A GREEMENT )
35. Article 24 paragraphs 4 to 9 of the TRIPS Agreement contain a number of exceptions
destined to provide flexibility in implementing the level of protection contained in Articles 22 and 23
of the TRIPS Agreement.
36. These provisions generally apply to all products (i.e., including wines and spirits) alike, with
the exception of Article 24.4 and, to a certain extent, that of Article 24.6 which may need to beadapted.
37. Extending the additional protection of Article 23 of the TRIPS Agreement to geographical
indications also for products other than wines and spirits will therefore not have direct implications on
these exceptions.  They will continue to apply.
38. Article 24 of the TRIPS Agreement takes account of a number of pre-TRIPS instances that
would have been prohibited subsequent to the entry into force of the TRIPS Agreement.  If agreement
is reached on the "extension" of additional protection to all products, similar adjustments, along the
lines of the existing provisions of Article 24 may be needed.
39. Whatever adjustments to Article 24 of the TRIPS Agreement may be necessary, if adequately
justified, they should be guided by the following principles:
- They should not go to the detriment of the principle of "extension" of additional
protection to all products.IP/C/W/353
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- They should be crafted restrictively and allow only for restrictive interpretations as
inherent in the nature of exceptions.
- They should enable a flexible solution taking into account the interest of the various
market participants.  Use in good faith, uses for a long period of time, not misleading
the consumer should be key criteria when looking at the use of geographical
indications qualifying for exceptions.
- They should not diminish the level of protection previously available to geographical
indications.
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40. The above attempts to describe the main elements for addressing the "extension" of the
additional protection to geographical indications for products other than wines and spirits.
IV. PROPOSAL
41. It is proposed that the TRIPS Council recommend to the TNC to adopt the following
guidelines for the negotiations on "extension":
(a) the protection of Article 23 of the TRIPS Agreement shall apply to geographical
indications for all products;
(b) the exceptions contained in Article 24 of the TRIPS Agreement shall apply mutatis
mutandis ;
(c) the multilateral register to be established shall be open for geographical indications
for all products.
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