RESTRICTED  WORLD TRADE  
ORGANIZATION  TN/IP/M/23 
1 March 2010 
 (10-1139) 
Council for Trade-Related Aspects 
of Intellectual Property Rights Special Session  
 
  
MINUTES OF MEETING 
  
Held in the Centre William Rappard
 
on 23 and 28 October 2009  
 
Chairman:  Ambassador C. Trevor Clarke (Barbados) 
  
Subjects discussed
 Page No . 
 
A. ADOPTION OF AGENDA ...............................................................................................................1  
B. NEGOTIATION ON THE ESTABLISHMENT OF A MULTILATERAL SYSTEM OF 
NOTIFICATION AND REGISTRATION OF GEOGRAPHICAL INDICATIONS FOR WINES AND 
SPIRITS ............................................................................................................................... .........1  
 
_______________ 
 
 
A. ADOPTION OF AGENDA  
1. The twenty-third Special Session agreed  to adopt the agenda as set out in WTO/AIR/3446. 
B. NEGOTIATION ON THE ESTABLISHMENT OF A MULTILATERAL SYSTEM OF NOTIFICATION AND 
REGISTRATION OF GEOGRAPHICAL INDICATIONS FOR WINES AND SPIRITS  
Meeting of 23 October 2009, p.m. 
 
2. The Chairman  recalled that, since the Special Session's last formal meeting of 10 June 2009 
and after the meeting of ministers at New Delhi, senior officials had met in Geneva as the first step of an agreed process of synchronizing the work of ne gotiating groups to coincide with monthly Senior 
Official Meeting (SOM) weeks.  During the SOM we ek of September 2009, he had held consultations 
with a small group of delegations to  give it a brief overview of the state of play and the remaining 
challenges.  As other Chairs had done for th eir respective groups, he had suggested a work 
programme for the rest of the year, including a sy nchronization of the TRIPS Special Session formal 
meetings with SOM weeks, interlaced with inform al and technical meetings or consultations as 
needed.  He said that the present meeting had been  called in accordance with the Structured Work 
Programme circulated at the meeting of the TNC on 22 September 2009 and was available on the 
WTO website.   
3. He recalled that at the Senior Official mee ting of 18 September 2009 he had indicated his 
intention to move from exchanges of views on the different proposals on the table towards a focused TN/IP/M/23 
Page 2  
 
  substantive discussion based on the list of four ques tions which he had suggested and circulated by 
fax on 2 October 2009.  It was his intention to present, on his own responsibility and without 
prejudice to any Member's position, a short hand over report in November, updating the technical 
areas already addressed in his predecessor's repor t in TN/IP/18 of 9 June 2008, and identifying areas 
where there appeared to be some commonality of  views and those where divergences remained, as 
well as some indications as to moving towards so lutions.  In line with the Structured Work 
Programme, he had held an ope n-ended informal meeting on 2 October 2009 to report on the SOM 
process and consult with Members on how to orga nize the work in October and November.   
4. He recalled that, at the last formal meeting of 10 June, discussions had been based on the 
categorization made by his predecessor in paragraph 4 of his report in TN/IP/18.  These clusters were:  
(1)  legal effects of a registration and participation in the system;  (2) notification and registration;  
and (3) other elements such as fees, costs and admi nistrative burdens, particularly for developing and 
least-developed country Members, and special and di fferential treatment.  While there had been good 
exchanges of views, in particular on the conseque nces or legal effects of registration, and some 
delegations had also elaborated on how the con sequences of registration under their respective 
proposals would play out in their respective nationa l implementation, there wa s still a long way to go 
towards a more focused substantiv e discussion with down-to-earth examples and clarifications.  In an 
attempt to encourage a structured substantive discussion, he had circulated a list of four questions by fax on 2 October 2009.   
5. He also drew Members' attention to a r oom document entitled "Response to the Chair’s 
Questions dated 23 October 2009 s ubmitted by:  Argentina, Australia, Canada, Chile, Costa Rica, 
Dominican Republic, Ecuador, El Salvador, Guat emala, Honduras, Japan, Korea, New Zealand, 
Nicaragua, Paraguay, South Africa,  the United States and Uruguay." 
6. The representative of New Zealand
 said he would introduce the room document before 
Members proceeded to a question-by-question examina tion of the substance.  He said that, while the 
group sponsoring this document did not comprise 108 Members, it did consist of Members with 
significant interests in intellectual property issues and represented a broad geographical diversity, as 
well as a substantial proportion of world trade, partic ularly in wines and spirits, the products that were 
the subject of this negotiation.  These Members we re independent and active proponents of a register 
of geographical indications (GIs) for wines and spirits, and had submitted this paper to respond 
constructively to the four questions circulated by the Chair on 2 October.  Before going through the 
questions one by one, he wanted to give  Members a brief overview of the paper. 
7. Regarding the Chair's first two questions con cerning the consequences that should flow from 
notifying a term to the register, the paper simply not ed that there were two general approaches to this 
question.  One proposed that an entry on the regist er should result in better information being made 
available to and used by decision-makers in nati onal systems, while the other approach relied on a 
legal presumption.  The paper set out three reasons  why a legal presumption was not acceptable to the 
group sponsoring the paper, namely because a le gal presumption would increase protection rather 
than facilitate it, because a legal presumption would vi olate the principle of te rritoriality and because 
a legal presumption would alter the balance of rights and obligations in TRIPS.  Therefore, as a legal 
presumption was not acceptable, the paper suggested th at an obligation to consult the register when 
making decisions regarding GIs and trademarks fo r wines and spirits would ensure that better 
information was available to domestic decision-ma kers and would facilitate the protection of GIs 
notified to the register.   
8. Regarding the Chair's second question concerning the significance and weight that domestic 
decision-makers should give to the information on th e register, he said the paper suggested that this 
question could not be answered in a vacuum and th at Members needed to exchange information on 
how decision-makers in domestic systems would impl ement an obligation to consult the register.   TN/IP/M/23 
 Page 3 
 
 
  Once there was greater understanding of different systems, it might be possible to identify some 
common elements that could provide greater specificity to the obligation. 
9. Regarding the Chair's third and fourth questi ons concerning participation and special and 
differential treatment, the paper suggested in pa ragraphs 6-9 that these two issues were closely 
interrelated.  In the view of the sponsors of th e paper mandatory participation was not a credible 
option, as it was plainly contrary to the manda te which made provision for non-participating 
Members.  Seeking to change th e mandate was not a constructive pa th for this negotiating group to 
take, as this negotiation was no diffe rent to any other part of the Doha Development Round.  The only 
logical and equitable mechanism that met the ma ndate's requirement for participating and non-
participating Members was voluntary  participation, which also had the significant advantage of 
providing simple and effective speci al and differential treatment.   
10. The representative of Canada  said her delegation hoped that the Chair's four questions would 
provide Members with another opportunity to compar e and contrast the joint proposal against the few 
elements of TN/C/W/52 that were applicable to the mandate of the TRIPS Special Session, which was 
to establish a GI register for wines and spirits.  Canada was ready to intensify negotiations towards 
such a GI register.  She recalled that, at the end of Canada's presentation at the last formal meeting of 
how the joint proposal could be implemented in prac tice, her delegation had concluded that the joint 
proposal provided real benefits to both consumer s and producers, that it respected the mandate and 
that it was easy to implement.  The room document circulated at this meeting, which Canada co-
sponsored, further illustrated this conclusion and provided a better understanding of the utility of the 
joint proposal.  The co-sponsors of this documen t represented a diverse collection of Members with 
different legal systems and means for the protect ion of GIs for wines and spirits.  Canada was 
prepared to supplement the responses provide d in the written communication with additional 
information pertaining to its domestic system.   
11. The representative of th e European Communities1 said that his delegation was committed to 
making progress in these negotiations and had already s hown a lot of flexibility in  this regard in the 
past.  He recalled that 108 Members were willing to  make progress regarding the three TRIPS issues 
in parallel, i.e. not only regarding the GI register , but also regarding GI extension and TRIPS/CBD.   
12. In response to the Chair's first question about  what legal obligation would be acceptable for 
the register to facilitate protection, he said that  the first important element was that all Members 
agreed that there should be a legal obligation.  He  noted that the opponents to the proposal by the 
alliance of 108 Members, part-sponsored by his dele gation, agreed and had put down in writing that 
there should be an obligation to consult the register  and that that information should be taken into 
account.  However, even in the room document ci rculated by some delegations there was still no 
explanation of how the information on the register  should be taken into account.  As the EC had 
lowered its expectations regarding th e legal obligations that would be linked to this register, there was 
now an agreed position between 108 Members of th e Organization.  While there was a point of 
convergence regarding the consultation of the re gister, and while the alliance supported by his 
delegation was very clear on how this informa tion should be taken into account, there was no 
information on what the proponents of TN/IP/W/10/Rev.2 thought on this issue.  It was therefore unclear whether this was a point of divergence or a point of convergence.  In order to make progress, 
it was essential to understand what were the poi nts of convergence on this fundamental issue. 
                                                     
 
1 On 1 December 2009, the Treaty of Lisbon amending the Treaty on European Union and the Treaty 
establishing the European Community  (done at Lisbon, 13 December 2007) entered into force.  On 
29 November 2009, the WTO received a Verbal Note (WT /L/779) from the Council of  the European Union and 
the Commission of the European Communities stating that, by virtue of the Treaty of Lisbon , as of 
1 December 2009, the European Union replaces and succeeds the European Community.  TN/IP/M/23 
Page 4  
 
  13. The representative of Hong Kong, China
 said that her delegation ha d tendered its proposal in 
document TN/IP/W/8 with a view to facilitating the negotiation on the establishment of a multilateral 
system of notification and registration of geogr aphical indications for wines and spirits.  She 
welcomed this further opportunity to discuss the Chair's list of questions and hoped the discussion 
would clarify the key issues of the GI register to be established.   
14. The representative of Barbados  said that two of the legal obligations that would be acceptable 
to her delegation would be the obligation for de cision-makers to consult the register, and the 
obligation to take the information on the register  into account when making decisions on whether to 
grant a trademark.  The information on the register  would therefore be one of the determinants of 
whether or not to grant a trademark. 
15. The representative of Australia  said that her delegation believe d that a resolution would be in 
reach if Members did not try to reinvent the negotia tions.  In response to the EC's intervention on the 
Chair's first question, she said that Members were  operating in a vacuum of information because it 
was still not apparent how Members would implement an obligation to consult the register.  Canada 
had noted in the last formal meeting of the Special  Session how it could implement this obligation and 
this type of information was required and necessary before Members could discuss what would be the 
status of consultation.  She said that there were even some options built into the joint proposal.  
However, Members had not yet had the opportunity to fully unpack the options that could exist within 
the joint proposal (TN/IP/W/10/Rev.2) because these technical discussions had not been pursued with 
sufficient engagement and detail.  As a co-sponsor  of the room document, her delegation supported 
taking the negotiations on the register forwar d and called for more technical discussions and 
information on how these obligations would be impl emented.  Australia was specifically concerned 
by bilateral measures that had been taken by othe r Members regarding the issue of GIs.  Regarding 
the Chair's first question, Members should consider  in greater detail the extent to which Members 
would implement the register in a manner that facilitated, and did not increase, GI protection in a manner that respected territoriality, respected Article 22.1 and complied with the mandate of 
Article 23.4.   
16. The representative of Argentina
 said that his delegation also co-sponsored the room document 
introduced by New Zealand.  In response to the co mment that the paper did not contain information 
on how the obligation to consult woul d be implemented, he said that on page 2 of the room document, 
the proponents indicated that this would be done  in accordance with their domestic systems and 
regulations. The paper also went further in th at it suggested that Members might exchange 
information regarding how they w ould implement their obligations. 
17. The representative of China  said that his delegation believed that the Chair's first three 
questions were also connected to other issues of c oncern to China and the majority of WTO Members. 
In that regard, his delegation wanted to make two general points.  Firstly, the majority of developing 
countries did not have GIs relating to wines and spir its, but had GIs for other products.  Therefore, his 
delegation believed that the product coverage of the future multilatera l registration system was key to 
these negotiations, i.e. that it should cover GIs for all products.  Secondly, as the proposal in 
TN/C/W/52 had indicated, the majority of Members be lieved that the issues of the multilateral register 
TRIPS/CBD and GI extension were closely linked and that negotiations on all the three subjects 
should move in parallel.  His dele gation hoped that this could be inco rporated and given priority in 
future questions by the Chair.  
18. The representative of Guatemala  said that her delegation co -sponsored the room document 
which had been introduced by New Zealand and was already the first concrete result of the Chair's 
initiative of asking a list of questions.  However, alt hough the Chair's questions were a useful tool, it 
would be helpful to hear the demandeurs ' questions and concerns regarding the joint proposal.  At the 
last meeting, Australia and New Zealand had made e normous efforts to explain in detail how the joint  TN/IP/M/23 
 Page 5 
 
 
  proposal would be implemented in their domestic  systems, and how it would function in specific 
practical terms.  They explained clearly how impl ementing the joint proposal would really improve GI 
protection without imposing additional administra tive burdens.  These had been important steps 
forward, and no opposition to these explanations had b een voiced so far in this Special Session.  Her 
delegation was of the view that implementing the jo int proposal would cover the trade interests of 
those interested in this register.  If this w as not the case, it would be appropriate for the demandeurs  to 
point out the shortcomings they saw in the practical implementation of the joint proposal. 
19. The representative of Switzerland  said that her delegation's position on the register was part 
and parcel of the TN/C/W/52 proposal, and its vi ew on the multilateral register took into account the 
two other components of this proposal, in particular  GI extension.  It was against the background of 
proposing a register that should extend to all pr oducts that Switzerland had become less ambitious 
with regard to the obligations that should be li nked to the register.  She thanked Members supporting 
TN/IP/W/10/Rev.2 for the room document.  However,  she said that after 10 years of negotiations, it 
would have been useful to go further into detail and not to re-explain how Members' systems worked 
at the national level, because Members were already aw are of that.  What were needed at this stage 
were certain guarantees and standards at the interna tional level regarding a register with which all 
could comply. 
20. With respect to the Chair's first question, it w as her delegation's view that the obligation to 
consult the register should be clearly defined as an obligation to take into account such information. 
21. Regarding the Chair's second question, she hoped that in the course of this meeting Members 
would receive more information, including from countries that supported TN/IP/W/10/Rev.2, as to 
how this information could be taken into account.   
22. The representative of Chinese Taipei  said that his delegation supported those Members that 
had provided the written response to the Chair's questions. 
23. With respect to the Chair's first question, hi s delegation believed that  the appropriate legal 
obligation would be for participating Members to c onsult the register.  In order to draw Members' 
different positions closer together it would be help ful to have more exchanges of information on how 
decision-makers would implement an obligation to c onsult the register in their domestic systems. 
24. The Chairman  recalled that his first question suggested a two-way exchange between 
Members.  While asking the other side to explain its views was acceptable, the formulation of the Chair's first question invited Members also to e xplain what legal obligations were or would be 
acceptable to them.  By approaching the problem from both sides, the Chair would then be able to see 
more clearly how close Members could get in positions.  Members knew better what process the 
register was supposed to facilitate and what w ould be the legal implications from taking the 
information into account.  While he was aware that Members' views regarding what legal obligations 
were acceptable ranged from "none" to "a lot", an d that some Members were not wine and spirit 
producers, he called on Members to assess the impl ications for their respective countries and give 
pointed responses regarding what obligations th ey considered acceptable and unacceptable.  
25. The representative of Hong Kong, China
 said that for her delegation the minimum legal effect 
for a GI Register to facilitate the protection of GIs for wines and spirits should be that the GI Register 
be internationally and legally recognized as the in ternational GI Register for wines and spirits under 
the WTO TRIPS framework.  Members could set up a system with minimum legal effects and leave the longer-term arrangement for review after the syst em had been in operation for a certain period of 
time, for example four years.  TN/IP/M/23 
Page 6  
 
  26. The representative of the United States
 said that the room document co-sponsored by her 
delegation set out the basic responses to the Chai r's questions and the suggested way forward.  
27. Regarding the Chair's first question of what legal obligations would be acceptable for the 
register to facilitate the protection of GIs for wi nes and spirits in accordance with the mandate, she 
pointed out that the mandate did not actually refer to a GI register, but rather to a system of 
registration for wine and spirit GIs.  While these te rms had been used interchangeably by all, her 
delegation would like to emphasize that there was no assumption in the Uruguay Round, and now the 
Doha Round, that the mandate required a system si milar to the Lisbon Agreement for the Protection 
of Appellations of Origin and their Internationa l Registration.  In order to see progress in these 
negotiations, Members had to keep the focus within the parameters of the mandate.   
28. To answer the Chair's question, Members ha d to focus discussions on how to facilitate 
protection as noted in the question, which did not m ean increasing protection as some had suggested.  
Her delegation agreed that the system of registrati on could not be so minimal a potential benefit that it 
did not in fact facilitate protection.  However, it would be beyond the object of facilitation to require 
increased substantive protection of GIs, particularly at the expense of other right holders and users of 
generic terms.  The mandate therefore directed Members to find procedural means aimed at the 
protection of GIs in the respective domestic systems.   Accordingly, she could not agree to proposals 
that would require a change in how and to what ex tent the United States decided to protect a claimed 
GI for a wine or spirit, as this would go well be yond the mandate of facilitating protection.  Proposals 
requiring that entry of a term on the register w ould be prima facie evidence that it was a GI under 
TRIPS Article 22.1 would do exactly that, as they s ought to achieve a substantive legal effect in the 
different domestic systems.  Instead, Members should focus efforts on developing a system that would 
assist examining authorities and other officials in their evaluation of whether a designation qualified 
for protection in that Member according to its domestic laws.   
29. She said that keeping within the mandate of Article 23.4 also meant reading this provision in 
the context of Article 1.1 of the TRIPS Agreement, namely that territoriality needed to be respected 
for all IP rights, including for GIs.  Proposals that sought to require a Member to grant deference to a 
foreign authority’s finding of what constituted a GI went well beyond the scope of the mandate, and 
was thus unacceptable to her delegation.   In this r espect the EC appeared to be seeking an IP system 
equivalent of a mutual recognition agreement wh ich would go well beyond inte rnational agreements 
in other IP areas.  As a particular specific point of concern for her delegation, the EC proposal sought 
to require in the WTO that a GI notified to the register served as prima facie  evidence that, in the 
absence of proof to the contrary, it met the defin ition of a GI in all Members where protection was 
sought.  Under this proposal, US examiners would have to defer to the findings of an EC examiner as 
to whether a GI met the definition in an EC territo ry and would then be forced to prove that the 
notified term was not a GI in the United States.  This would effectively mean that the EC's 
interpretation of a key provision in the TRIPS Agre ement, namely Article 22. 1, was the interpretation 
to which all Members had to subscribe or prove why they did not.  Her delegation could not agree to 
this shifting of the burden of proof of whether a Member had met a TRIPS obligation.  If a Member 
was concerned that another Member did not meet it s Article 22.1 obligation, it should then bear the 
burden of proving this, not the other way around.  The mandate in TRIPS Article 23.4 should not be 
used as an excuse to negotiate the scope of the definition of a GI set forth in TRIPS Article 22.1.  It should also be read within the context of other subs tantive provisions in the TRIPS Agreement.  It had 
to be clearly understood that the system for f acilitating protection for GIs could not undermine the 
protection for other IP rights, such as prior existing trademarks under Article 16, and should not adversely affect the legitimate use of generic terms and the other exceptions under Article 24. 
30. The representative of the European Communities
 said that what the US delegate had referred 
to as the EC's position was actually the view of a group of 108 Members.  For this group of sponsors 
of TN/C/W/52 the acceptable legal obligations were twofold.  First, it was proposed that a claim of   TN/IP/M/23 
 Page 7 
 
 
  genericness could not be based on uns ubstantiated allegations, but woul d have to be based on facts 
and be proven.  This did not mean that the substa nce of a decision on genericness would be affected, 
or that it would take on any extraterritorial effe ct.  The final decision regarding genericness would 
always be taken by the country in which protecti on was sought because, as the US representative had 
pointed out, there was no Lisbon-type agreement of automatic recognition in TN/C/W/52 supported 
by 108 Members.  The second aspect of an acceptable legal effect rela ted to the GI definition, which 
all Members would by definition have to have in thei r TRIPS-compatible legislation.  In this respect, 
it was proposed that, in the absence of proof to the contrary, a GI notified to the register constituted 
prima facie evidence that the registered GI met the definition as laid down in Article 22.1 of the 
TRIPS Agreement.  This prima facie  evidence, which could be translated as "definition at first sight", 
again meant that the final decision would remain in the hands of each national authority in a Member.  
His delegation did not believe that this entailed an ex traterritorial effect, as had been alleged by the 
US delegate.  He emphasized that , as this was not only the EC's thinking, but the position of a two-
third majority of Members, this proposal was reasonable and practicable.   
31. The representative of Australia  said that, in response to the Chair's request for further 
information on what consulting the register could look like, her delegation would suggest that the 
joint proposal had within it a built-in flexibility that had not yet been properly discussed.  Without 
prejudice, some elements in the proposal could incl ude an obligation to take the information on the 
register into account in accordance with domestic sy stems as had been discussed .  This could also be 
an obligation to give appropriate weight to that information in accordance with domestic systems, or 
an obligation to consider that information as evid ence of the facts stated therein in accordance with 
domestic systems, i.e. a GI could be evidence of th e fact that it was a GI in the Member seeking the 
protection.  She said that consideration of the third option would require corresponding consideration 
to be given to generic terms as the balance of righ ts and obligations had to be respected.  In that 
regard Australia noted with concern the EC's comment  on genericness.  Given that Article 24.6 of the 
TRIPS Agreement already applied, the EC's comment s that a claim of genericness had to be based on 
facts seemed to suggest an attempt to renegotiate Ar ticle 24.6 itself or to formulate how that provision 
would be used in the context of an international register. 
32. The representative of Brazil  said that, although the situation in the Special Session reminded 
him of the paradox of Achilles and the tortoise - on ce Achilles had moved half the distance to the 
tortoise, the tortoise had already moved further away from the centre, making it impossible to come together - looking at the room document and listeni ng to the EC's answers made it clear to him that 
this gap could eventually be bridged.  It was only that at this moment there was clearly no willingness, 
at least on the part of the tortoise, to allow the rest to proceed.  At this point his delegation just wanted 
to state for the record that, while  Brazil certainly had issues with prior trademarks and genericness, 
both of which Brazil would not be able to negotia te away, his delegation was nevertheless satisfied 
that the proposal in TN/C/W/52 had taken into  account the kind of concerns Brazil had had. 
33. The representative of El Salvador
 said that his delegation considered that a register for GIs for 
wines and spirits should facilitate the level of prot ection of GIs for these types of products, keep the 
costs and burdens for Members to a minimum and r espect the balance of rights and obligations as 
established in the TRIPS Agreement, in particular unde r Article 23.4.  This would be in line with the 
mandate, particularly in paragraph 18  of the Doha Declaration.  El Salvador was of the view that the 
register should not produce anything different from what Members already had in their national 
systems, be it through trademarks or GIs.  Ex isting national procedures should be preserved and 
acquired rights of individuals guaranteed under nationa l legislation should be respected.  The register 
should be public and preserve the rights of the appl icants.  The joint proposal, which El Salvador co-
sponsored, did not in any way question the existing balance of rights and obligations in the TRIPS 
Agreement.  El Salvador could not accept that negoti ations be extended or inte nded to be extended to 
registers of GIs for products other than wines and spirits, as this would be a violation of the 
negotiation mandate. TN/IP/M/23 
Page 8  
 
  34. The representative of Korea
 recalled that the mandate stipulated in Article 23.4 was to 
facilitate the protection of GIs and not to increase or  create new rights and obligations.  In response to 
the Chair's request for more information, he sai d that his delegation would introduce and explain 
Korea's domestic system in light of the Chair's questions later in the meeting. 
35. The representative of Japan  expressed the hope that the collaborative efforts of the sponsors 
of the room document, including his delegation, woul d facilitate a technical discussion in the Special 
Session.  With respect to the Chair's first qu estion, Japan would accept a system which would 
facilitate, but not increase, the prot ection of GIs of wines and spirit s and which would not change the 
rights and obligations under the current TRIPS Agreemen t.  In this respect his delegation had a major 
concern with regard to the legal presumption in the system proposed in TN/C/W/52.  It believed that 
such a legal presumption was unreasonable since it shifted the burden of proof from the notifying 
Member seeking protection to the Members consulting the register which could otherwise use the information in the Register without rebutting any pr esumption.  In his delegation's view the notifying 
Member was most likely to have sufficient eviden ce to demonstrate that the notified GIs met the 
definition under Article 22.1.  The responsibility to  prove the eligibility of the notified GIs from the 
viewpoint of their definition should therefore be taken on by the notifying Members.   
36. The representative of Guatemala
  said that as a member of the Joint Proposal Group her 
country was committed to negotiations under Article  23.4 of the TRIPS Agreement and supported a 
proposal based on two fundamental pillars contained in  the mandate, namely to facilitate protection of 
GIs of wines and spirits, and to recognize voluntary participation.   
37. In response to the Chair's first question, Guat emala was of the view that to maintain the 
protection the national authorities were providing, participating Members would consult the database 
and take its information into account when taking deci sions on the registration of trademarks and GIs.  
The practical and immediate effect of consulting th e database would be that the authorities would be 
aware of the existence and status of certain GI s of wines and spirits, which would prevent the 
erroneous granting of rights.  Instructions to aut horities to consult the database should be included in 
the handbooks and guidelines for examiners, as had been suggested by Japan.  The details of the 
consultation would of course depend on national legislation.  Her dele gation would be interested to 
hear the experience of other developing countries that  were already in a position to participate in the 
system.  
38. The representative of New Zealand  said that with respect to the Chair's first two questions and 
in response to the EC's question how Members wo uld consult the register, the room document had 
pointed out that the answers were quite specific to domestic systems.  This was why in the past his 
delegation had explained in some  detail how New Zealand would implement such an obligation, 
which, in summary, would involve amending the in ternal procedures of the trademark office to 
require examiners to consult the register when ass essing the registrability of certification and other 
trademarks. In New Zealand, GIs were also pr otected through unfair competition and consumer 
protection law, so an obligation to consult the register would ensure that GI owners could use the 
register as evidence in establishing a case, wh ether it was under unfair competition, consumer 
protection or some other cause of action.   
39. Similarly, the question of the significance or weight which decision-makers would give to this 
evidence was a complex legal question.  It was impl ausible to prescribe exactly how that was done in 
every Member, because it depended on the specifics of particular cases and on the mechanics of 
different national systems of protection.  In New Zealand, for example, various common law 
principles of administrative law would have qu ite a significant impact on what significance and 
weight would be given to this evidence.  This be ing said, it could not be assumed that all intellectual 
property regimes and legal systems of Members opera ted in this way, which was why his delegation 
had proposed to have more exchanges of informa tion on how decision-makers in domestic systems in  TN/IP/M/23 
 Page 9 
 
 
  the myriad of different systems would carry out that  obligation.  His delegation was hopeful that such 
exchanges might yield some common elements that  could be sensibly elaborated.  Australia had 
already mentioned some possibilities in that regard.  Against that background, he did not agree with 
Switzerland's view that Members had a full understa nding of the various domestic systems, and were 
therefore ready to prescribe rules at the internationa l level.  While some Members, including the EC 
and Canada, had given details a bout their domestic systems, others, including Switzerland, had not 
done so recently.  His delegation would be interested  in hearing from those other trading partners.   
40. He said that his delegation was interested in Brazil's comment that it was satisfied that the 
legal presumption in the TN/C/W/52 proposal would not adversely impact on prior trademarks and 
generics in their national system, as this was also one  of New Zealand's principal concerns with legal 
presumption.  In his delegation's view, the system pr oposed in TN/C/W/52 went in fact beyond a legal 
presumption, which could normally be rebutted by evidence , because the prescribed conclusion in 
TN/C/W/52 could only be rebutted by proof to the contrary.  While his delegation took some comfort 
from Brazil's assessment that this would not in fact  impact on the status of generic terms in its 
jurisdiction, it would like to hear the de tail behind Brazil's assessment and exactly which 
considerations had given it that comfort. 
41. The representative of Costa Rica  recalled that his delegation had co-sponsored the room 
document introduced by New Zealand.  With regard to  the Chair's first question, his delegation agreed 
with the statements of the United States, Chinese Taip ei and Guatemala that in order to move forward 
Members needed to focus on the mandate which was to  facilitate, and not to in crease, protection.   To 
achieve this, his delegation could accept an obligation for authorities to consult the database and take 
decisions in accordance with their domestic legisl ation, while respecting the balance of rights and 
obligations and the principle of territoriality.  On  the question of how to consult the register, the 
answer would depend on each national system and legislation.  His delegation could not accept a 
proposal that changed the burden of proof or exte nded the register to GIs for products other than 
wines and spirits, as that went beyond the mandate.   
42. The Chairman  asked Members whether or not there was scope for balancing the legal 
responsibility of presenting the facts to the register  between the notifying and the consulting Member, 
so that the consulting country would have all the facts available to make a proper determination.  
While he could understand the c onsulting country's concern over an imposition of a decision from the 
notifying country, there still seemed to be a r easonable source of information on both sides. The 
notifying country had information and facts which it  presumably could use to help justify its position 
with respect to the notification, and the consulti ng country would have facts regarding genericness of 
the term or whether it met the definition in its terr itory.  Leaving aside the issue of participation for 
the moment and assuming that both the notifying  and the consulting Member had decided to 
participate in the system, there might be scope fo r a shared responsibility regarding the information on 
the register while leaving the consulting country in  the driving seat in terms of making the decisions 
based on its own legal system.  
43. The representative of Argentina  emphasized that a scenario as suggested by the Chair would 
have to be based on the situation that both countri es had agreed to participate, because in a voluntary 
system no action of a notifying country could create any sort of obligation for a country that was not willing to participate in the register.  Assuming that  both countries had indeed agreed to participate, 
the factual information on the register would not, in  his delegation's view, through the mere process of 
consulting, produce a legal effect in the consulting co untry.  From the point of view of the notifying 
country, the more information and detail of a GI w as given to the register, the better were the chances 
for this GI if more and better information was made  available to the consulting country.  This also 
related to the Chair's second qu estion regarding significance and weight to be given to this 
information.  In light of this, his delegation did not see much scope for a shared responsibility given 
that providing detailed information was in the inter est of the notifying Member that was participating TN/IP/M/23 
Page 10  
 
  of its own volition, whereas the consulting Member onl y had the responsibility to consult.  The weight 
was therefore on the other side:  the more and the better information provided by the notifying 
country, the better known would be the characteristics of the notified GI.   
44. The representative of Barbados
 said that there was scope for sharing information, and that 
such sharing of information would be important.  The significance and weight to be attached to the 
information on the register by a consulting c ountry would depend amongst other things on whether 
the consulting country was satisfied that the notified GI was in fact a GI.   
45. The representative of New Zealand  said that he agreed that there were relevant facts in both 
the consulting country and in the notifying country.  The key point was that there should be an equal 
balance between these facts.  His delegation did not want to see the TRIPS Agreement pre-
determining which facts had greater weight than others.  This was the reason why New Zealand had 
concerns regarding the proposed presumption, which in effect asked national decision-makers to pre-
determine, i.e. to presume, that the facts on the in ternational register had greater weight than other 
facts, for example the facts that a domestic objector might present with regard to the generic character 
of a term.  Therefore, while his delegation would agr ee that the register was an opportunity to ensure 
that decision-makers had the best facts available in  order to inform their decisions, it could not accept 
that the register contained the only facts or better facts. It just contained information.  Domestic 
decision-makers had to retain the ability to assess th at information and balance it against any other 
information they received from any other source, to make their decision on a particular issue. 
46. The representative of Hong Kong, China  said that paragraph 2 of Annex A of her delegation's 
proposal set out which details shoul d be submitted to the registrar as a requirement of notification.  
Her delegation believed that  with regard to a registered GI th e notifying Member would have in its 
possession all the details set out in that paragraph 2 an d that that information could be shared between 
the consulting and the notifying Members. 
47. The representative of the European Communities  thanked the Chair for the constructive 
suggestions on what kind of information should acco mpany a notification.  His delegation would a 
priori have no problem providing as much inform ation as possible regarding the determination of a 
term as a GI in the country of origin.  The problem was rather that that might not be sufficient because 
providing information did not per se  facilitate the protection of GIs.  This information might be useful 
for examining authorities, although in the age of inte rnet, in the case of the EC and other countries, all 
this information was already available online.  This  being said, even assuming that it would add value, 
it would only relate to the work of the examining authorities but not facilitate the protection of the 
GIs.  The mandate was not about facilitating th e examination of GIs or about facilitating the 
protection of trademarks, it was about facilitating th e protection of the GIs.  This being said, his 
delegation fully agreed with other Members that  the register should not go as far as having 
extraterritorial effect as the EC had been wrongly accused of proposing.  
48. With respect to the Australian question of wh ether the EC was questioning the exception of 
genericness, he said this had been discussed previous ly and his delegation's answers to this question 
could be found in paragr aphs 35 and 61 of the minutes of the previous meeting of the Special Session 
(TN/IP/M/22).  His delegation was simply saying that, since genericness was an exception, it should 
be substantiated when claimed.  Some Members argu ed that, contrary to information received by the 
EC, this was not an issue, because nowhere were GI  owners asked to actually show that their terms 
were not generic.  In any event, the proposal to require substantiation when  genericness was claimed 
would not change anything in those countries where right holders did not have to prove that their GIs 
were not generic, and would rectify an inadequate si tuation in countries where this was the case.  This 
would not change the principle of genericness:  it remained up to each Member's authorities to 
determine what was generic in their own territory, which, as currently, would continue to result in 
many different situations.   TN/IP/M/23 
 Page 11 
 
 
  49.  With regard to New Zealand's view that  the proposed legal effect of prima facie  evidence for 
meeting the definition of Article 22.1 would endanger prior trademark protection, he said that the 
proposed system did not change anything with regard to exceptions.  The fact that a term might meet 
the GI definition did not mean th at it had to be protected.  Such a term might still not receive 
protection because of a prior trademark, because of  prior use, or because it was deemed to be a 
generic term.  Any one of these scenar ios did not contradict the other. 
50. The representative of the United States  recalled that with respect to the Chair's second 
question her delegation agreed that the system of  registration could not be so minimal a potential 
benefit that it did not facilitate protection.  It  would, however, exceed the mandate to insist on 
increasing substantive protection of GIs, particularly at the e xpense of other IP right holders and users 
of generic terms.  The mandate directed Members to find procedural ways aimed at the protection of 
GIs in domestic systems.  Accordingly, any "si gnificance" or  "weight" that a domestic authority 
afforded to a term on the register would have to be consistent with its domest ic laws.  Prescribing how 
a domestic authority should consider a term on th e register and what, if any, weight should be 
afforded to the term, presumed to dictate an  outcome and therefore exceeded the mandate under 
Article 23.4. 
51. She recalled her delegation's position that the sy stem should require participating Members to 
consult the multilateral system.  As New Zeala nd, Guatemala and other Members had indicated, 
Members' discussions should focus on how national au thorities used the information on the register in 
their existing domestic system rather than engaging in a discussion of what kind of substantive weight 
or significance authorities should give a registration.   The United States agreed with the points made 
by New Zealand that the TRIPS Agreement should not  predetermine which facts had greater weight 
than others and that Members had to retain the ab ility to balance information on the register with 
information from any other sources.  In contrast, the EC proposal would require that more evidentiary weight be afforded to findings by authorities in  a notifying Member than to those by another 
Member's domestic authorities making decisions re garding protection and registration under its own 
national law. This was unacceptable to her delegation.  
52. In order to move forward in a way consistent  with the mandate under Article 23.4, Members 
should focus on developing a useful and meaningful mechanism to facilitate protection of GIs.  For 
the United States, this system would provide a usef ul reference that would facilitate the work of 
examining attorneys by providing a central depository for relevant information, a resource that did not 
currently exist.  
53. The representative of Barbados
 said that, with regard to the Chair's second question, her 
delegation's partial preliminary view was that the significance and weight the national authorities of a 
country should give to information on the register  would depend amongst other things on whether, for 
example, a trademark application consisted of a GI  in that country.  If the trademark applied for 
consisted of a GI in the country concerned, then little or no significance should be attached to the 
information on the register.  Where, however, the trademark did not consist of a GI in the country 
concerned, then great significance and weight should be attached to the information on the register, 
assuming, of course, that the notified GI was indeed, a GI.  In other words, if a trademark application 
in country A consisted of a GI in country A, then  little significance and weight should be attached to 
the information on the register.  If the trademark app lication in country A did not consist of a GI in 
country A, but of a GI in country B that had been  notified to the register, then – assuming that the 
notified GI was truly a GI – great significance should be attached to the information on the register. 
54. The representative of Australia  thanked the EC delegation for its explanation of its position 
on genericness in the context of the TN/C/W/52 proposal .  She noted for the record that the text of 
Article 24.6 suggested nowhere that genericness needed to be substantiated, and that she was grateful 
that the EC had put on the record that it was not seeking to introduce a new test but that Article 24.6 TN/IP/M/23 
Page 12  
 
  would remain as it was.  Members could utilize it as an  appropriate exception.  In other words, a term 
could be considered generic in the consulting country.  She said Australia also supported New 
Zealand and the US in their statements opposing any idea of some facts being better than other facts. 
55. She also noted that some othe r Members had made reference to  a GI register for products 
other than wines and spirits, and recalled that th is Special Session only had a mandate to discuss a 
register of GIs for wines and spirits. 
56. The Chairman
 agreed that the Special Session only had a mandate to discuss a register for GIs 
for wines and spirits. 
57. He said that the delegations of the United St ates and of Barbados had raised a couple of 
helpful points between which a solution could be found.  
58. The representative of the European Communities  recalled the United States' statement that the 
mandate directed Members "to find procedural ways ", and that the wording of Article 23.4 did not 
mention "procedural ways", but "to facilitate protec tion".  If procedural ways facilitated protection, 
that would be acceptable to his delegation.  Howe ver, it did not believe that simply providing the 
decision-making authorities with facts that were al ready available on the internet was not facilitating 
protection.  He disagreed with statements by the United States and Australia that his delegation 
privileged some facts over others.  The EC simply preferred that exceptions remained exceptions and 
did not become rules, and that those who claimed that an exception should apply had to substantiate 
their claim.  This was not an extraordinary demand,  and his delegation believed that this was the only 
way to facilitate protection, rather than the examination, of GIs. 
59. The representative of Hong Kong, China  said that, with regard to the Chair's third question, 
her delegation proposed that participation in the sy stem could be voluntary in the beginning and the 
issue could be revisited in the review after the system had been in operation for some years. 
60. Regarding the Chair's fourth question on speci al and differential treatment, her delegation 
kept an open mind for any suggestions by Members in this respect.  
61. The representative of the European Communities  said that he was disappointed that after 
15 years there had been no advancement.  His dele gation believed that the meaning of "multilateral" 
in Article 23.4 was very clear to all Members.  Th ere was no "à la carte" system in the WTO:  the 
issue was clearly part of the negotiations and pa rticipation should therefore be mandatory.  If 
Members were willing to content themselves with a "m ini register", there would not have been a need 
for 15 years of discussions.   
62. The representative of Brazil  recalled that the issues of participation and special and 
differential treatment had been closely linked in th e room document that had been circulated in the 
meeting, and agreed that they should be considered together.  In this context, his delegation's question 
was whether the proponents of this room document we re suggesting that the register be voluntary for 
developing countries, but not  for developed countries. 
63. The representative of Barbados  said that in response to the Ch air's request for more "pointed" 
answers to his third question, her delegation's short an swer was "no" to the first part of the question, 
so there was no need to answer the second part. 
64. With respect to the Chair's fourth question, she said that special and differential treatment 
could take the form of a longer period for certain  countries for implementing the register system.  
However, to state precisely what form of spec ial and differential treatment may be necessary,  TN/IP/M/23 
 Page 13 
 
 
  Members would have to wait to see what disciplines would be agreed.  It might well be the case that 
no special and differential treatment would be required. 
65. The Chairman  said that between the view that the register should be voluntary, i.e. that 
Members were free to join if they wanted to, and ma ndatory, i.e. that Members had to join whether or 
not they wanted to, there might be something in  the middle that would require Members to join 
because they met certain criteria.  In other words, participation would be mandatory for Members that 
met the criteria.  To further explore the space  in between Members' positions on the issue of 
participation, he would invite the Special Session to  consider if there could also be voluntary entry, 
i.e. Members would be allowed to join even if they did not meet some criteria. It would be helpful to 
determine which in-between spaces would be acceptable to Members.  In light of this, he was of the 
view that the answer "no" given by Barbados to  the first part of his third question should be 
reconsidered. 
66. The representative of Canada  recalled the wording of Article 23.4 and said that his delegation 
interpreted the formulation "in those Members par ticipating in the system" as clearly providing for 
voluntary participation. 
67. In response to Brazil's question of how the Join t Proposal Group viewed participation, he said 
that his delegation did not distinguish between developed and developing countries.  All Members 
were free to decide for themselves whether or not they  wanted to participate.  At the same time, his 
delegation realized that there was an interest in greater certainty in trade negotiations and it would 
thus be prepared to consider asking Members to indi cate as part of the negotiations their interest in 
participating.  To that end his delegation woul d be interested to hear from all those Members 
associated with TN/C/W/52 - which was silent on th e specific question of whether there was support 
for mandatory participation - whether they act ually believed that there should be mandatory 
participation. 
68. The representative of China  said that his delegation would like to caution that any possible 
criteria for mandatory or voluntary participation could create the undesirable situation where some 
developing Members would be asked to participat e on a mandatory basis, while other developing 
Members or even developed Members would be free to participate or not. 
69. The representative of Switzerland  said that, in response to the Chair's third question, and in 
particular the idea of developing criteria for soluti ons between voluntary and ma ndatory participation, 
her delegation supported Ba rbados in that the register should apply to all Members, because all 
needed this system for GI protection as a TRIPS ob ligation.  For Switzerland, the obligation of taking 
into account the information contained in the regi ster should apply to all WTO Members, but only 
Members wishing to do so would notify their GIs to the register. 
70. On the Chair's fourth question, her delegation was of the view that Members should wait and 
see the final form of the register in order to deci de what kind of special and differential treatment 
measures should be included.  
71. The representative of India  said that he found it unusual to have special and differential 
treatment provisions in the form of voluntary par ticipation in a system.  It was also difficult to 
understand how a system of registration could be "m ultilateral" and at the same time provide for 
voluntary participation.  In this context, his delegation would like to ask the proponents of 
TN/IP/W/10/Rev.2 what were the special and di fferential treatment provisions for developing 
countries that wished to participate in the multilateral register. 
72. The representative of Brazil  thanked Canada for its clarification, but said he found it difficult 
to understand how voluntary participation for all could be equated with special and differential TN/IP/M/23 
Page 14  
 
  treatment.  If this resulted in a situation where a developing country had expectations of benefiting 
from facilitated protection of GIs by participating in  the register, but developed countries opted out, it 
was not clear how this could be called "special a nd differential treatment".  For his delegation, the 
main development benefit contai ned in proposal TN/C/W/52 was the one related to a mandatory 
disclosure requirement and its relationship with the CBD , and not an opt-out clause, especially if this 
opt-out clause applied also to developed countries. 
73. To reply to the Chair's fourth  question, his delegation did not see the need for any specific 
special and differential treatment provisions at this point, but would like to see the final form of the 
register before giving due consideration to this issue.   At this juncture it felt comfortable with the idea 
of a mandatory register while remaining open to co nsider any requests for special and differential 
treatment, especially if they came from developing countries.  
74. The representative of Guatemala
 said that, in the view of her delegation, voluntary 
participation was a part of the mandate, providing Members with the freedom to decide when it was 
feasible or possible for them to implement the regi ster and incorporate it into the national system.  
Guatemala saw this as an acquired right, and therefor e believed that special and differential treatment 
should crystallize in other ways in addition to volu ntary participation.  She noted Brazil's programme 
to assist developing countries in creating their own GIs, and its successful experiences with 
"Cachaça", with meat and with coffee.  This was a very interesting experience and Guatemala was 
working on some ideas that could perhaps be ta ken into account.  Brazil's ideas should be further 
developed by the TN/C/W/52 proponents and not wa it until after the adoption of the modalities.   
75. The representative of Barbados  said that her delegation saw merit in having a mandatory 
register, as this would be particularly beneficial  to countries whose GIs were not yet well known and 
were still being misappropriated.   
76. The representative of El Salvador  said that, in response to the Chair's third question,  it was 
his delegation's view that there was no option other than voluntary participation, as clearly established 
in paragraph 4 of Article 23. 
77. Regarding the Chair's fourth question, he agr eed with Guatemala that  there was a need for 
discussing special and differential treatment before moving on to other stages of the negotiation.  He 
was surprised by some developing countries' view th at this could be discussed later.  The negotiations 
in this Special Session should not be an excepti on to the procedures that developing countries had 
followed in all other negotiating bodies.  He said that the example given by Guatemala, like seeking 
assistance in developing GIs, was interesting, a lthough he was doubtful about whether a multilateral 
register to avoid usurpa tion of developing c ountry GIs could really add va lue to these negotiations.   
78. He said that, as all Members in principle had to  have TRIPS-compliant domestic legislation to 
provide protection that could be used by developing countries, it might be just a matter of using the 
national legislation for protection as special and diffe rential treatment.  One possibility could be to set 
up a transition period for developi ng countries to take into account the information contained in the 
register.  In any case, any domestic system that a c ountry applied in taking the register into account, 
be it Roman Law or Common Law, should be respected.  
79. The representative of Barbados  said that, while some developing countries had their own 
legislation protecting GIs, the purpose of the regi ster was to facilitate protection and it was her 
delegation's view that mandatory particip ation could facilitate such protection. 
80. In adjourning the meeting, the Chairman  encouraged Members to further engage after the 
resumption of the meeting, not only in posing challe nges and questions to the other side, but also to 
think about what each Member was able to accept in  terms of getting positions closer to solutions.  TN/IP/M/23 
 Page 15 
 
 
  Meeting of 28 October 2009, p.m.  
81. The Chairman  recalled that on 23 October the Special Session had started discussions on four 
questions listed in a fax sent to de legations on 2 October.  Towards th e end of that meeting, he asked 
for delegations' views on what he provisionally called "shared responsibility" for both the notifying 
country and the consulting country  to take into account the information on the register.  Some 
delegations had given their preliminary views.  He recalled that the Secretariat had been asked at the 
23 October meeting to provide a brief summary of th e main points made by dele gations under the four 
questions in order to help them better understand the points made, some  of them being very "pointed" 
or technical.  Accordingly, a non-exhaustive su mmary of the main points made under the four 
questions, without attribution to any delegation, was circulated in the morning before this meeting. 
82. The Chairman suggested to addressing the prev ious Friday meeting’s unfinished business 
regarding his questions, including follow-up reflecti ons on the substantive discussions, using a similar 
working method, namely to take the answers and comments relating to each question one by one in 
the order they had been posed.   He invited those delegations which believed that a point related to 
more than one question to identify the relevant qu estions and to elaborate on why a point would be 
acceptable or not.  
83. The representative of Hong Kong, China  noted that the non-exhaustive summary was 
compiled as a practical tool to facilitate th e work of the Special Session and expressed her 
delegation’s appreciation of the efforts made to focus the discussion with a view to finding some 
common ground between Members.  She hoped that the discussion would enhance the understanding of Members' positions and clarify the key issues of the GI Register.  Hong Kong, China was prepared 
to work with other delegations to find a compromise solution. 
84. With this view in mind, her delegation had prep ared a room document to illustrate by way of 
four hypothetical case studies how its proposal would work.  The first hypothetical case study related 
to a non-contentious notification and registration of  a GI from a participating WTO Member, at both 
the domestic and international leve ls.  The second case related to a contentious GI, resolved at the 
domestic level before the notifica tion and registration at the intern ational level from a participating 
WTO Member.  The third one related to a non-prot ectable GI that had been screened out by a 
participating WTO Member at its domestic level.  Th e fourth one related to a contentious notification 
and registration at both the international level and domestic levels, with the case being finally 
resolved at the domestic level in another partic ipating WTO Member.  Her delegation would welcome 
any preliminary views from Members, and be glad to  answer any questions relating to its proposal or 
the four hypothetical case studies and to engage bilateral discussions, as necessary. 
85. The representative of the European Communities
 recalled that his delegation had made 
several proposals, including some where the regist er would have irrebuttable presumptions regarding 
a number of elements, and would be subject to an international objection procedure.  In comparison, 
the current proposal in TN/C/W/52, sponsored by 108 Members, did not go as far as the previous 
ones:  it had taken the concerns expressed by Me mbers into consideration and did not require any 
important effect.  However, there should be some legal obligation with the register, otherwise the 
mandate of facilitating protection would not be fulfille d.  As had been clearly indicated on several 
occasions, the final decision as to the consequences of the register would be left to national 
authorities, not only in respect of the GI definition bu t also in respect of the overall protection of GIs, 
e.g. whether or not the exceptions for prior tr ademark or genericness applied.  One area of 
convergence which could already be identified was th at the national authorities would keep their final 
say.   
86. He said, however, that while the national authorities would keep a final say, they should also 
give significance and weight to the information c ontained in the register, because otherwise it would TN/IP/M/23 
Page 16  
 
  be a useless register.  Document TN/C/W/52 capture d how the information contained in the register 
should be taken into account:  first, by way of pr ima facie evidence regarding the definition, which 
was logical, considering that any GI in the worl d was the result of a government decision based, by 
definition, on a TRIPS-compatible legislation;  seco nd, by proposing that facts regarding assertions of 
genericness would have to be substa ntiated, which was also logical.  In contrast, there had not been 
any alternative proposal for some effect stemming from the registration or for how the information 
should be taken into account.  He hoped that th e Special Session would be able to make progress on 
the basis of the only paper that had made proposals in  that regard, i.e. TN/C/W/52, sponsored by 108 
Members. 
87. The Chairman
 said the point made by the European Communities was a critical part of the 
debate and that there were wide differences of view  on how that should be ha ndled.  He believed that 
taking the information into account could be done  in various ways.  As a first scenario, some 
Members would not want to look at the information, and others would look at it and ignore it, which one group of Members did not like to envisage.  A nother scenario could be that the consulting country 
would look at the information and would – to quote a delegation's comment made on a previous 
occasion – "seriously and honestly consider" the in formation as one of the elements the consulting 
country could bring into its domestic decision-ma king process.  The proposal made in TN/C/W/52 
that there be a prima facie evidence that the no tified geographical name was a GI unless there were 
proof to the contrary had met great resistance.  He asked delegations whether there was any way to 
take the information into account other than to " seriously and honestly consider" it as part of the 
decision-making process at the domestic level, or whether any Member would be inclined towards 
taking the information and using it unless there w as proof to the contrary.  For example, if a 
consulting country had proof to the contrary in its  possession, and hence decided not to protect that 
GI, would that be the "end of the story"?  Would the notifying Member have any recourse, or would it 
be necessary to provide for that Member the possibility of recour se?  Recalling that the Special 
Session was committed to negotiating a register that  was capable of "facilitating" the current TRIPS 
protection, without increasing it, he said that, on on e side of the argument, there would have to be 
some consequences for a consulting Member if it did not take the information into account 
"seriously". 
88. The representative of New Zealand
 recalled that his delegation had previously elaborated in 
great detail how New Zealand's authorities would consult the register.  It would be fair to say that, in 
his country's legal system, an obligation to consu lt the register would require decision-makers to 
seriously and honestly consider the information contained on that register. 
89. Referring to the summary of the elaborations of  what "consult the register" meant, namely 
elaborations which were directed at the deci sion-making process as opposed to elaborations which 
went more towards the substance of the actual de cision, he said that was probably an important 
distinction between the two general approaches.  The elaborations in TN/C/W/52 were directed at the 
substance of the decision rather than the decision-making process only because of the use of 
presumptions or - as the European Communities had put it - of how the information should be taken 
into account, i.e. that it should be considered as pr ima facie evidence.  Patently, TN/C/W/52 did not 
require that information be considered as prima facie evidence only;  it required a presumption which applied unless there was proof to the contrary.  This  was a concept that went well beyond prima facie 
evidence.  It meant that decision-makers must be bi ased to a particular outcome.  For example, when 
faced with conflicting claims as to whether a term was a GI or generic, a party seeking the monopoly 
intellectual property right would be at a significant a dvantage.  This would be a change in the balance 
of rights and obligations:  the balance would significantly tilt towards the party claiming the monopoly intellectual property right.  His delegation agreed with a number of delegations that the 
TRIPS balance between the intellectual property ri ght of the GI and the generics must not be 
undermined.  So, in response to the Chair's questi on, he said that legal ob ligations around consulting 
the register were directed at the decision-making process and not at the substance of the decision, and  TN/IP/M/23 
 Page 17 
 
 
  that they should not predetermine or bias the decisi on itself.  This would also partly respond to the 
Chair's second question. 
90. The representative of Korea  agreed with the Chair that the central issue seemed to be how to 
define the concept of "consulting" the multilateral register.  Recalling that the European Communities 
had argued at previous meetings th at a multilateral register without any effect or legal presumption 
would not be any more than Google, he asked why the register should be more than Google.  His 
delegation was of the view that without the register GIs, in particular the Eu ropean ones, were already 
fully protected under Article 23 of the TRIPS Agreement.  The register could play a useful role in assisting and preventing authorities from rushi ng into hasty decisions, thereby facilitating 
examination, which would eventually l ead to the facilitation of protection. 
91. In reply to the Chair's first question, he sai d that what obligation would be acceptable to 
Korea to facilitate the protection of wine and spirit GIs was very simple, i.e. to consult the multilateral 
register when making a decision on the protection of a wine and spirit GI.    
92. He then explained how the Korean system curre ntly worked.  Wine and spirit GIs could be 
protected as collective certification marks (CCM) for GIs.  The CCM system had incorporated 
Article 23.1-3 of the TRIPS Agreement to prevent the use of a GI identifying a wine or spirit for 
wines or spirits not originating in the place indicated by the GI in question. 
93. Taking the example of a name such as "Saint-Emilion", he said that the Register would offer 
little help.  For example, a Korean wine pr oducer applied for a CCM using the name of 
"Saint-Emilion", which had been noted for original protection, to get protection for his wine product.  The Korean patent officer would not even have to  consult the multilateral Register to check whether 
the requirements under Article 22.1 and Article 23.1-3 we re fulfilled.  It would be too obvious for him 
that "Saint-Emilion" was not in Korea.  What he would have to do would be to check whether or not 
Article 24.6 would apply to the CCM application.   
94. He said that a multilateral register might, howeve r, be useful in the case of GIs originating 
from East Asia, where regional names in Korea, China and Japan were very similar to each other.  For 
example, "Andong" was the name of a region in the s outhern part of the Korean peninsula.  A Korean 
producer applied for the CCM protection of the name of "Andong" for a spirit product.  If the Korean patent officer did not consult the multilateral regi ster, he might make an incomplete and hasty 
decision on granting a CCM to the "Andong" sp irit, without checking the applicability of 
Articles 23.1-3 and 24.4-5.  As there were many si milar or identical regional names in East Asia, it 
would not therefore be enough to check the Korean list of names to make a right decision.  By 
resorting to the multilateral register the Korean patent officer would have a chance to check the 
applicability of Articles 23.1-3 and 24.4-5 and ma ke a more complete and sound decision.  The 
multilateral register could therefore work as a stop barrier to prevent a patent officer in Korea from rushing into a hasty decision.  In that regard, hi s delegation could find a certain usefulness in the 
multilateral register. 
95. As regards the Chair's second question, he said that Korea could not give more significance or 
weight, if any, to the information in the regist er than to the information from applicants in 
administrative procedures or from opponents in judiciary procedures or to the information collected by the patent officer himself.  Giving more weight  or significance to the information in the register 
would bring about distortion and absurdity in the do mestic legal and administrative system.  It fell 
under the internal decision-making process of patent offices or patent judges how much weight or 
significance should be given to information from every source to decide whether or not a name in 
question was a GI under the definition of Article  22.1.  Some Members might object that the 
protection of a wine or spirit GI would not be gua ranteed under the discretionary power of a patent 
office.  However, this was in acco rdance with the principle of territoriality.  The same criticism of TN/IP/M/23 
Page 18  
 
  discretionary power could equally be applied to the register as being only a collection of discretionary 
decisions by Members to notify their GIs.     
96. To explain how giving more significance or weight to the multilateral register would actually 
distort the notification system and lead to logical ab surdity, he gave an hypothetical case.  A Chinese 
producer filed a challenge before the Korean pate nt administrative committee against the CCM of 
"Andung Soju" for a Korean spirit on the grounds that there was an identical or similar name from 
China which was already registered in the register.  Under the TN/C/W/52 scheme, the Korean government should examine whether or not it should  revoke its own decision regarding whether the 
name fell under Article 22.1.  The example showed th at it would be reasonable to ask the claimant to 
substantiate his claim or to consider competing information on an equal footing without presuming 
the superiority of one piece of information over another one. 
97. The representative of Canada
 said that asking the authorities to consult and to take into 
account the information that was on the Register would be acceptable for Canada.   
98. However, as for New Zealand, it would be un acceptable for Canada to have any binding 
presumption in respect of the information, especially any presumption that the name put on the 
register was actually a GI.  She recalled that her country had had a very challenging experience with 
respect to lists that were presented by the Europ ean Communities to her authorities as being GIs.  
During the bilateral negotiations on wines and spirits with the EC, Canada was faced with 
approximately 10,000 names proposed by the Eur opean Communities to be protected as GIs in 
Canada.  Her authorities went through the analysis of each of those names, which were in different 
languages, to see whether they referred to a ge ographical area and whether they were actually 
protected in their country of origin.  At the end of this difficult and time-c onsuming exercise, Canada 
ended up with only 1,500 names that could qualify as GIs.  She wondered how it would be if, during 
the same process, her authorities would have to  reverse the legal presumption mentioned in 
TN/C/W/52 that, in the absence of proof to the co ntrary, a notified name should be considered as 
prima facie evidence that the term met the definition of a GI in Article 22.1. 
99. The Chairman  said this kind of example pointed to an idea already raised by one of his 
predecessors of some shared responsibility.  There could be some process requiring the EC to put 
these 10,000 names before a WTO body, the TRIPS C ouncil for example, which would then examine 
them and agree on what would clearly meet the definition under the TRIPS Agreement and thereby 
save the burden on other countries, in particular the smaller ones, from having to go through the same list of 10,000 names.  As suggested by his predecesso r, such an exchange or interaction could possibly 
take place before the information was recorded in the register. 
100. The representative of Argentina
 thanked the Chairman for his efforts in trying to help 
delegations understand each other.  There were, however, some lin es that separated the Joint Proposal 
Group from other delegations. 
101. As regards the Chair's idea of some shared responsibility, he believed that, apart from any 
legal issue, the practical example given by the representative of Canada was quite useful.  As a 
hypothetical case, if the European Communities were to notify 20,000 GIs, the suggestion made by 
the Chair to have a multilateral exercise of going th rough clarifying the names before registering them 
would be quite difficult.  First, delegations here in Ge neva would not have th e expertise, and this 
would have to be done by the experts in the capitals .  Second, if it had take n Canada many months, it 
would take Argentina even more time to go through a similar process.  Consequently, the Chair's idea 
would not yield practical results, taking Canada's example. 
102. He further said that the Chair's expression of "shared responsibility" caused his delegation 
concerns because of the voluntary nature of the re gister.  If Argentina did not participate in the  TN/IP/M/23 
 Page 19 
 
 
  register, it would not have any oblig ation or responsibility.  If it decide d to be a participating Member, 
it would have some obligations because it had decided to endorse them.  He had some difficulty in 
seeing what kind of shared responsibility his country could have vis-à-vis  other participating 
Members.  The only shared responsibility of all Memb ers participating in the register that he could 
envisage would be for all participating Members to make the register function appropriately. 
103. As regards the meaning of "to consult", he said that this was quite a simple obligation that 
could be translated in some words, but this ob ligation could not be an elastic one.  While his 
delegation wanted to be cooperative, some ideas explored by the Chair would cause problems because 
the architecture of the register proposed in the join t proposal could not be changed, e.g. this Special 
Session could not go beyond the mandate  of an obligation to consult.  
104. The Chairman  said that in a process of negotiation any compromise would help understand 
that certain elements would not be as problematic as it seemed and could therefore be changed without any harm or injury to Memb ers' domestic situations, or with such minimum disturbance that it 
would amount to no legal consequences.  
105. The representative of Australia
 responded to the question posed by the Chair regarding what 
would be unacceptable or acceptable to Australia.  Her country simply could not agree to a register 
that would have an extra-territorial effect.  Territori ality was not a notion that was subject to a point of 
view.  It was a fact that GIs, being established and protected on the basis of laws and regulations 
applicable in a given territory, were necessarily subject to  the principle of territoriality.  On this issue, 
significant work had been done in this forum as well as in others with great expertise, such as WIPO.  
106. Like New Zealand, Canada, Argentina and othe rs, Australia equally could not agree to a 
register that had legal presumptions that would upset the balance of rights and obligations that 
Members had carefully negotiated. 
107. Regarding what would be acceptable, Australia could agree to an obligation to consult the 
register when examining applications for trademarks  or GIs for wines and spirits.  This was stated 
clearly, without equivocation, in paragraph 5 of th e joint proposal in TN/IP/W/10/Rev.2.  This would 
provide real benefits to the users of GIs by creating a resource that currently did not exist.  As stated 
in paragraphs 4.3 and 4.4 of the joint proposal, the re gister would be searchable online, free of charge, 
accessible to all WTO Members and the public, in all three WTO languages, and would provide a means to access the original notifications.  It could not be denied that such an international central 
resource would facilitate the protection of GIs by  making available information that could be 
consulted by examiners of trademark and GI applications for wines and spirits. 
108. As mentioned by New Zealand, if Australia were to implement such a scheme, it would also 
agree that consultation would have to be honest and serious, and that the register would not simply be 
ignored. 
109. The Chairman
 said that all Members seemed to agree that they were negotiating a register 
capable of facilitating the protection of wine and sp irit GIs but that there were some nuanced views 
regarding how to facilitate that protection.  In his view, there was a wide range of ways of facilitating 
protection.  For example, if one way of facilitating would be proposed but would not be agreeable to 
some Members because they would be unable to apply it, e.g. for legal reasons, what would happen?  
While emphasizing that it was clear that there was no intention to increase protection, he urged delegations to think about the various ways a Me mber might accept to consider how to facilitate 
protection in its domestic environment. 
110. The representative of Hong Kong, China
 recalled that her delegation had submitted four 
hypothetical cases.  She would describe the first three.  TN/IP/M/23 
Page 20  
 
  111. The first case would be a non-contentious no tification and registration of a GI from a 
participating WTO Member, at both the domestic a nd international levels.   WTO Member X had a 
community which produced a wine carrying the name of the area, "Ubique", in which it was produced and had achieved repute through its link to its area of origin.  Through a domestic system determined 
entirely by Member X, the local production organization controlling the use of the "Ubique" name 
(Production Organization) had been recognized by  Member X.  Member X, or the Production 
Organization with the consent of Member X, woul d request registration of the geographical name 
"Ubique" in the WTO GI Register for Wines and Spirits (WTO GI Register).  In putting forward the request, Member X or the Production Organization asser ted, amongst other things, (1) that the name 
"Ubique " was a name capable of serving as a GI in  accordance with the definition in Article 22.1 of 
the TRIPS Agreement;  (2) that the Production Orga nization was the sole owner of that GI;  and 
(3) that the name "Ubique " was protected by the domestic law of Member X and had not fallen into 
misuse in the territory of Member X.  Member  X or the Production Organization, as the case might 
be, transmitted the request for registration of the name "Ubique" by electronic means to the administering body of the WTO GI Register.  Upon  receipt of the notification and the requisite 
registration fee, the Register undertook a formality examination only.  No enquiry was made into the 
substance of the claims in terms of ownership or ability to operate as a GI.  A certificate of registration was issued to Member X or the Pr oduction Organization and the name "Ubique" was 
placed on the WTO GI Register, which could be sear ched through the Internet at any time by any 
interested party. Provided that the required renewa l fees were paid at the specified times, the name 
"Ubique" could remain on the Register indefinitely.  If there was any change of particulars of the GI, 
e.g. a change of ownership of the GI, either Member X or the Production Organization was under a 
duty to notify the administering body of such am endments.  The administering body of the WTO GI 
Register would then have to update or amend th e WTO GI Register upon the payment of a specified 
fee by Member X or the Production Organization.  Some time later a case of alleged infringement of the GI "Ubique" arose in WTO Member Y, which ha d volunteered to join the WTO GI registration 
system, but did not file any notification of cont rary evidence that (1) Me mber X or the Production 
Organization was not the owner of the GI right in "Ubi que";  or (2) the relevant GI did not satisfy the 
definition of GI in Article 22.1 of the TRIPS Agreem ent;  or (3) the relevant GI was not protected in 
Member X.  As with any Member that volunteered  to join, Member Y had enacted legislation to 
protect GIs, under which it was specified that a cour t of law in Member Y, in determining the nature 
and/or ownership of a GI, would have to accept registration of a GI in the WTO GI Register as 
evidence and treat the following elements as proven: (i ) ownership of a GI right;  (ii) the relevant GI 
satisfied the definition of GI in Article 22.1 of the TRIPS Agreement;  (iii) the relevant GI was 
protected in the country of origin, unless suffici ent evidence to the contra ry was adduced by the 
relevant respondent WTO Member or the Production Organization.  In bringing its legal action for 
infringement in the court of law in Member Y, the owner of the GI "Ubique" from Member X was 
therefore able to enjoy the benefit of a presumpti on that the three elements would be treated as 
proven.  If the other party adduced evidence to the contrary, then the court of law would weigh the 
totality of evidence adduced by both parties, a nd decide whether the elements in question were 
provided to the standard required in the proceedings. 
112. The second hypothetical case related to a contentious  GI which was resolv ed at the domestic 
level before notification and registration at the inte rnational level from a Participating WTO Member.  
WTO Member X had a community which produced a wine carrying the name of the area, "Ubique", 
in which it was produced and had achieved repute thr ough its link to its area of origin. However, two 
different groups in Member X had long been in dispute over the ownership of the name "Ubique". 
One of the disputing parties, the Ubique Wine Ma nufacturers' Association, requested Member X to 
register the geographical name, "Ubique", in the WTO GI Register.  However, Member X would not 
agree to put forward the request on the grounds that  the ownership of the na me "Ubique" had not been 
resolved within Member X itself.  After the two di sputing parties had resolved the GI dispute before 
the court of law in Member X and the first party' s ownership was upheld, then on the basis of this 
judicial decision the first party requested Member X to register the geographical name "Ubique" in the  TN/IP/M/23 
 Page 21 
 
 
  WTO GI Register.  Member X or the first party tr ansmitted the request for registration of the name 
"Ubique" by electronic means to the WTO GI Register. 
113. The third hypothetical case related to a non-prot ectable GI that had been screened out by a 
Participating WTO Member at the domestic leve l.  Member X had a community which produced a 
wine that carried the name of an area, "Ubique", in Member X.  A single body controlled the use of 
the name "Ubique" within Member X.  The body requested Member X to register the name "Ubique" 
on the WTO GI Register.  However, the competent authority in Member X reached the view that, 
although the name "Ubique" was a geographical name, the wine's  reputation or quality or 
characteristics did not arise from an association with th at geographical area, but rather were a form of 
branding using the name of a famous location.  Me mber X therefore refused to seek registration of 
"Ubique" on the grounds that the name was unable to  serve as a GI as defined in Article 22.1 of the 
TRIPS Agreement. 
114. She expressed the hope that these hypothetical  case studies could help focus the discussion on 
more concrete situations  and get a clear understanding of the working of the proposed GI register. 
115. She further said that these hypothetical case studies would also answer the Chair's question on 
"facilitation" and would clarify how the information would be taken into account, what would be the 
consequence, and how the parties could share responsibilities. 
116. The representative of Switzerland  said, in response to statements made by some delegations 
regarding certain points such as the number of GIs which would be included in the register, that those delegations might be complicating the discussion by  putting emphasis on those points.  She believed 
that TN/C/W/52 was going in the direction of some shared responsibility with a view to facilitating, 
and not increasing, protection.   
117. Under the TN/C/W/52 proposal, when Members notif ied the names they considered to be GIs, 
they would do so in respect of the TRIPS definition in Article 22.1, which currently was applicable to 
all Members.  On the basis of an evaluation done nationally, they would notify a name, which was on 
their responsibility.  The information in the register should not be examined by all Members at the 
beginning of the procedure, so there would not be  any burden, as suggested.  She recalled that the 
proposals for such an examination and challenge at th e multilateral level were no longer on the table.  
In other words the procedural requisites had been re duced.  The information on the register would be 
information which would be at Members' disposal  and would kick in on their territories only once 
they wished to protect a particular GI or a trademark containing such a GI.  It would not be a burden imposed on Members to examine and determine each case at its domestic level immediately, i.e. to 
decide whether or not they must actively protect a GI.  Only when there was a precise indication that 
the information on a notified GI could be pertinent w ould the authorities  have to take action.  For her 
delegation, it was precisely at that moment when it would be necessary to give some "weight" to the 
information.  This weight included prima facie ev idence of whether the name notified was a GI as 
defined in Article 22.1.  It would also relate to  the question of whether and why the name, which was 
recognized as a GI in the notifying country, had b ecome generic in the consulting country.  She 
further said that there was some legitimacy to r ecognize that a geographic name associated with a 
product manufactured in a country or place could not be used in any way in other countries or places, and hence some value should be given to the information. 
118. Referring to the comment made by the Chairman  that the information should be taken into 
account "seriously and honestly", she said that th is would be the ideal working approach for 
authorities.  However, from the legal point of view , it would be necessary to have greater assurance 
than these mere criteria and to formalize what weight  should be given to the information contained on 
the register. TN/IP/M/23 
Page 22  
 
  119.  She reiterated that TN/C/W/52 fully respected the principle of territoriality because decisions 
to give protection to a given name as a GI would be taken only in the country where protection would 
be at issue.  The principle of territoriality s hould also be applied to the issue of genericness. 
120.  The representative of the European Communities
 said that many of the points he wanted to 
address had been eloquently made by the Swiss re presentative.  He would therefore focus on some 
comments made by other delegations. 
121. New Zealand had said that the proposal contained in TN/C/W/52 was "not about prima facie 
evidence".  He could not but read out again the se cond sentence of paragraph 2 of the proposal, which 
said that "In the framework of these procedures, and in the absence of proof to the contrary in the 
course of these, the Register shall be considered as a prima facie evidence that, in that Member, the 
registered geographical indication meets the defini tion of 'geographical indication' laid down in 
TRIPS Article 22.1."  
122. In response to the comment made by Kor ea about why the register as proposed in 
TN/IP/W/10/Rev.2 should be more than Google, he said that Google did not facilitate protection.   
Delegations had not been negotiating for some 15 years to arrive at a Google-type database. 
123. He took note of, and expressed appreciation fo r, the assurances given by Australia. He 
wondered, however, what would happen if a Member  had industry's enshrined interest in following a 
different approach.  This was exactly what was worrying his delegation.  It would therefore be necessary to have a clear legal effect flowing from the consultation of the register. 
124. In response to the comments made by the Canadi an delegation regarding Canada's experience 
with the bilateral negotiations with the EC, he obser ved that Canada had signe d an agreement with the 
EC because it had something to gain.  As regard s the exercise of examining the EC names, he said 
that the Canadian case was different from the register  that was being negotiated:  the bilateral lists 
envisaged protection in both countries whereas a name notified to the register under TN/C/W/52 
would not trigger any protection.  Under the TN/C/W /52 proposal an individual demarche had to be 
made by the GI right holder, despite the fact that the GI was in the register, to seek protection under 
the domestic procedures of the country in which he  was interested in seeking protection and whose 
authorities would take the relevant decision.  Fu rthermore, the register proposed under TN/C/W/52 
would not be an automatic system of protection su ch as the one under the Li sbon Agreement or a one-
stop shop.  He feared that the kind of comment made by Canada might lead to misinformation. 
125. Referring to the comment made by the EC that the proposed system would not be an 
automatic one, the Chairman
 asked what would then be the conse quences if an authority decided, after 
having consulted the register, not to protect the notif ied name.  Would that be the "end of the story"?  
126. The representative of the European Communities  said that TN/C/W/52 proposed only two 
consequences of the name being notified in the re gister.  It would constitute prima facie evidence 
regarding the GI definition, and any genericn ess assertion must be substantiated. For both 
consequences, there would be the following scenarios.   In the first one, the prima facie evidence was 
not upheld by the examiner on the basis of informati on provided by the challenging party;  this would 
be the end of the story as far as the effect of the regi ster was concerned.  This scenario also applied to 
the case of genericness.  Another situation – already occurring in real life – related to litigation in any 
country regarding whether a GI should be protected or  not, regarding genericness or prior trademarks.  
In his view, this might be irrelevant to these negotiati ons in the sense that this type of situation already 
existed and would probabl y continue to exist. 
127. The representative of New Zealand  said that situations were not as simple as described by the 
representative of the European Communities.  He welc omed the clarifications given by the EC that  TN/IP/M/23 
 Page 23 
 
 
  prima facie evidence simply meant prima facie eviden ce, and asked therefore whether the reference in 
TN/C/W/52 to "proof to the contrary" could then be deleted from that proposal.   
128.  In response to the Chair's question of th e consequences of a decision by the domestic 
authorities not to protect a notified name, he said that his assumption, from reading the TN/C/W/52 
proposal, had always been that the presumption of protection could only be rebutted by proof to the 
contrary.  This was a different standard altogeth er.  It was important for New Zealand that its 
domestic decision-makers had the fl exibility to weigh evidence on a case-by-case basis and to make 
their decisions in accordance with their domestic syst em and all legal and other requirements.  If the 
domestic authorities were able to weigh all vari ous sources of evidence, including evidence from the 
register, then it would be important that their decisions would not be biased in any particular 
direction, i.e. without any presumption or predeter mination operating.  That meant that the register 
could be considered evidence, as could any other pieces of information.   
129. In response to the comment made by  the EC, the representative of Canada  clarified that the 
list of 1,500 names did not trigger any protection in Canada.  It was a first step to see if these terms 
could qualify as GIs.  The EC would still have to go  through the procedure in Canada to have their 
terms protected.  The sorting of the names had been done without taking any legal presumption into 
consideration.  Had that been the case, the task of examining the names would have been much more 
difficult.  
130. The representative of the United States  asked whether there had been some suggestion that 
the Special Session discuss the protection of some 10,000 GIs.  For her delegation, this presupposed an international effort to harmonize GI protection, which was at odds with the principle of 
territoriality, and actually even went beyond TN/C/W /52 by removing the determination from national 
authorities in accordance with their own domestic  procedures.  While she believed that some 
Members would like a one-time approval of all in tellectual property rights in the WTO, she was 
convinced that all Members would agree that th is would go well beyond the mandate of the Special 
Session. 
131.  On the Chair's first question, her delegation would appreciate having more clarifications 
regarding on which basis the summary of certain points had been made. 
132. She expressed appreciation for some of the a dditional clarifications given by Hong Kong, 
China.  These would be helpful for her delegation in reviewing Hong Kong, China’s statement.    
133. As her delegation was still unclear about what "duly taking into account", more precisely the 
qualifying term "duly", meant, it would have difficulty in agreeing to note what the obligation would 
be.  Her delegation would be uncom fortable if it were to be said that there was an area of 
convergence.  As already indicated at previous m eetings, the issue of setting up the minimum standard 
at the multilateral level, applicable to all Member s, was not an area of convergence.  Her delegation 
would need to further examine the summary made regarding possible elements of the obligation to 
consult as proposed by the joint proposal.  It was concerned about presupposing some sort of "weight" 
or "significance" and did not want to prejudice the discussion with such wording.  
134. Also under the Chair's first question, the summarized point that Members could set up a 
system with minimum legal effects and leave the l onger-term arrangement for review after the system 
had been in operation for a certain period of time could not be a point of convergence.   
135. Under the Chair's second question, the first two summarized points, which described the 
TN/C/W/52 proposal elements, were clearly not points of convergence for her delegation.   TN/IP/M/23 
Page 24  
 
  136. Furthermore, her delegation found confusing the last summary under the Chair's second 
question, which said that the significance and weight  national authorities should give to information 
on the register would depend, amongst other things , on whether the consulting country was satisfied 
that the notified GI was in fact a GI and on wh ether, for example, a trademark which was being 
applied for consisted of a GI in that country.  If the trademark consisted of a GI in the country 
concerned, then little or no significance should be a ttached to the information on the Register.  Where 
the trademark did not consist of a GI in the count ry concerned, than great significance and weight 
should be attached to the information on the regi ster, assuming that the notified name was indeed a 
GI.   
137. Another point summarized under the Chair's second question actually related to her 
delegation's statement that "Discussion should fo cus on how national authorities use the information 
on the Register in their existing domestic system rather than how the WTO should require national 
authorities to use the information, i.e., what kind of  substantive weight or significance we should give 
a registration.  It is not the role of the Speci al Session to evaluate and restructure substantive 
examination practices of each WTO Member."  As it  was a full statement, it should not be separated 
into two parts. 
138. The representative of Switzerland 
said that the term "duly", referred to in one of the summary 
points under the first question, had been used by he r delegation during the previous Friday’s meeting.  
She had left open what her delegation at least unders tood by "duly take into account", meaning that it 
referred to the effects mentioned in TN/C/W/52, i. e. prima facie evidence for meeting the definition as 
well as providing evidence on genericness.   
139. The Chairman  recalled that at the 23 October meeting he  had tried to clarify his thinking in 
respect of this question.  He aske d delegations if they had given so me thought to any option other than 
voluntary or mandatory participation.  He said that it was his responsibility to seek whether or not there was any possibility for a compromise.  He felt that both views – mandatory vs. voluntary – could 
be accommodated by having criteria determining which Members would respond to the mandatory or 
voluntary requirements.  
140.  The representative of the European Communities
 said that his delegation would fully agree to 
have both voluntary and mandatory participation.  As proposed under TN/C/W/52, the notification of 
a GI would be voluntary and the consultation mandato ry.  The proposal took account of the fact there 
was a Doha Development Agenda, that negotiations  were taking place in the WTO, and that the 
register must therefore be multilateral.  The simplest criterion would be to have a register open to all 
Members, but where those Members which had GIs but did not wish to protect them would be free not 
to notify under the proposal. 
141. The Chairman  said that he understood well the options for a Member to notify or not.  The 
issue at stake was whether a Member should protect a GI notified by another Member.  TRIPS Article 23.4 mentioned the establishment of a "multila teral" system of notification and registration, 
which led to one side saying that "multilateral" me ant all Members.  The mandate went on to say "in 
those Members participating in the system", which made the other side point out that Members which 
so wished would have the option not to participate.   So, the debate between mandatory and voluntary 
arose out of this conundrum.  While recognizing that in international negotiations wording had to be 
found to satisfy all delegations and leave subsequent negotiations to r esolve the issues, he was of the 
view that it was not possible to have both, volunt ary and mandatory participation, and that some 
compromise should be found.  The arguments on the two sides seemed sound.  However, this 
negotiating group could not leave the matter to be reso lved by Ministers.  Therefore, it would still be 
the responsibility of this group to put some scope  on the possibilities of criteria that could help 
Ministers to make a determination.  There should be some criteria that helped to identify which  TN/IP/M/23 
 Page 25 
 
 
  Member could opt in and which Member could opt out .  He urged delegations to shed some light and 
help resolve the matter, otherwise he would ha ve to come up with a proposal on his own. 
142. Recalling the intervention made by Brazil cautioni ng that any possible criteria for mandatory 
or voluntary participation could create the undesi rable situation where some developing Members 
would be asked to participate on a mandatory basis while other developing Members or even 
developed Members would be free to participate on a voluntary basis, he said that was clearly one of 
the issues that would have to be considered if, pr esumably, and when, this group reached the stage of 
looking at criteria. 
143. The representative of Canada  said that the Brazilian delegation had made a valid point, which 
could be turned upside down as well.  Getting into  these kind of semantics or examples might take 
away from the central question that the TRIPS Ag reement presented an alternative whereby Members 
had the ability to decide whether they wished to participate or not.  
144. The representative of Barbados  suggested that the Special S ession first agree on what rules 
would be acceptable to all Members, and then look at the issue of participation.  If Members could 
work together to agree on discip lines acceptable to them, they might th en be able to agree to all sign 
up to it.  
145. She said that in some instances it might mean  lowering the ambitions.  For example, the 
obligation to consult was acceptable to all, and it  would appear that an obligation to take the 
information could also be acceptable.  Otherwise what would be the purpose of consulting if the 
information would not impact in any way?  The ques tion then was what to do with the information.  
That was the sticking point because some Members wanted the "multilateral" register to have a 
multilateral effect and others wanted it to just have a territorial effect .  There was currently a 
multilateral register where there were no internat ional examiners verifying whether GIs actually 
satisfied the criteria for protection, unlike in the national system where an examiner would examine 
whether the criteria had been satisfied before grantin g or refusing the application.  She believed that 
some progress was being made towards some consensu s on certain points.  She thought it would be 
possible to have some agreement on the obligations to consult and to take into account. There would 
remain the issue of finding some rule to determin e for what purpose this information would serve or 
how the information should be treated.    
146. The representative of Chinese Taipei , referring to the point made about how voluntary 
participation could equate with speci al and differential treatment, i.e. what sort of system would there 
be where a developing country wanting to benef it from the system could join it and a developed 
country could opt out, asked whether or not th ere would be special and differential treatment 
provisions for developing countries wishing to par ticipate in the multilateral register.  For his 
delegation, there was a difference between special an d differential treatment and technical assistance.  
If the register required mandatory participation, an d if some Members qualified for certain criteria, 
they could opt out.  In other words, these opt-out Members would enjoy special and differential 
treatment.  If the register provided for voluntary participation, then Members which would like to 
participate would need capacity bui lding, which was part of technical assistance, and not special and 
differential treatment. 
147. The representative of the United States  expressed concerns about the Chair's idea of "shared 
responsibility".  Firstly, would this mean that ther e would be some type of discussion occurring within 
or outside the context of the register?  Secondly, it was unclear to her delegation what the Chair had in 
mind when he mentioned at the 23 October me eting that the notifying country certainly had 
information and facts which presumably could help to justify the position in respect of the notification 
regarding genericness.  Did that mean that facts about genericness should be placed on the register before the registration?  If that were the c ase, her delegation would have concerns.     TN/IP/M/23 
Page 26  
 
  148. On the summary point that "Rel evant facts exist in both the consulting country and notifying 
country, and they should be treated equally", he r delegation was of the view that there was no 
convergence on that point and there should not be any attempt to describe what weight should be 
given to the relevant facts in the consulting count ry, but only state that they should not be treated 
differently.  She further suggested that the firs t four points be placed under the Chair's second 
question.   
149. The Chairman
 responded to the comments made about "shared responsibility" in respect of 
information and facts placed on the register.  As  regards a point he had made on 23 October on  
whether or not there would be a possibility to bala nce the legal responsibility for taking the register 
information into account, he said that, if the inform ation was placed on the register by the notifying 
country, the consulting country might also have inform ation, particularly relevant to genericness in its 
domestic market, that would be helpful to a discussi on between the two parties.  Under the notion of 
shared responsibility, parties would seek agreement on the facts.  He said that a fact needed not be 
proven.  If a person claimed some presumption or assu mption of a fact, which turned out not to be the 
case, the "shared responsibility" suggested by one  of his predecessors would be an option for 
examining and clarifying facts, so the consulting coun try would be able to trust that the information or 
facts were correct and balance this against its ow n domestic situation.  There might be a situation 
where the notifying country possessed more solid information on certain aspects while the consulting 
country might have a better grasp of the facts in resp ect of other elements.  This would be the kind of 
situation where he thought there could be some collaboration. 
150. The representative of Argentina  said that the term "responsibility" would imply a legal 
responsibility.  If the Chairman was thinking of some  sort of cooperation, this shed another light.  
Cooperation was a principle that did not create probl ems for his delegation.  Cooperation could take 
place between countries with or without the regist er.  However, if the notifying and consulting 
countries were to jointly examine the facts, it would then be a matter of "shared responsibility".  In the 
case of cooperation, he could imagine that, if the authorities of the consulting country did not 
understand some information notified by the notifyi ng country to the register, they would ask the 
latter.  What bothered him was this idea of having to have joint consultatio ns, which raised many 
problems.  For example, what would happen if one of the two countries did not agree during the consultations? 
151. The representative of Barbados
 said that in paragraph 10 of the joint proposal it was stated 
that "Each participating Member shall notify to the WTO a contact point from which further 
information on GIs notified by that Member could be obtained".  She asked whether that could be an 
idea falling under "shared responsibility". 
152. The Chairman  said that Argentina's comments as well as the joint proposal were similarly 
right, in that there should be avenues for that consultation in the normal process or with contact 
points, and suggested that the Special Session leave the discussion at that point. 
153. Turning to Hong Kong, China’s five principles enunciated in paragraph 42 of the minutes of 
the last session (TN/IP/M/22), he said some of them  captured many points raised at this 23rd Special 
Session.  He therefore asked delegations whether there were any objections to these five ideas being 
broadly acceptable as "guiding principles" for future work. 
154. The representative of Hong Kong, China  said that the five "guiding principles" could also be 
found in paragraph 3 of her delega tion's proposal in TN/IP/W/8:  (1 ) the purpose of the multilateral 
system under Article 23.4 of the TRIPS Agreement w as to facilitate the prot ection of GIs for wines 
and spirits in accordance with Articles 22 to 24 of the TRIPS Agreement;  (2) according to Article 1.1 
of the TRIPS Agreement, WTO Members should be  free to determine the appropriate method of 
implementing the provisions of the Agreement within their own legal system and practice;  (3)  TN/IP/M/23 
 Page 27 
 
 
  intellectual property rights were essentially territori al in nature;  (4) the system to be established 
should not impose additional substa ntive legal obligations or conf er additional legal rights on 
Members which are beyond the TRIPS Agreement;  and (5) the establishment and maintenance of the 
system should not impose undue financial and ad ministrative burdens on Members choosing to 
participate in this system. 
155. The representative of the European Communities  said the five principles in the Hong Kong, 
China proposal corresponded to one minimalist approach  to the register, which his delegation did not 
share.  As regards the fourth principle, he said that  if it would result in a minimalist interpretation and 
a Google proposal, then it would not be acceptable to the European Communities. 
156. In the same vein, his delegation disagreed  with the equally minimalist or reductive 
interpretation of the mandate by the United States at the previous Friday’s meeting that "to facilitate 
protection" meant facilitating procedural arrangement s.  For his delegation, facilitating protection was 
a result-oriented, not procedural-oriented, manda te.  If by changing only the procedures Members 
could reach that objective, it would be fine.  Unfortunately this was not the case.  Therefore his delegation believed that the minimum effect wa s the one contained in the TN/C/W/52 proposal, 
supported by two thirds of the Membership. 
157. The representative of Australia
 said that her delegation would welcome hearing comments 
from other TN/C/W/52 proponents. 
158. The representative of Hong Kong, China  said that the fourth principle set out in TN/IP/W/8 
aimed at establishing a system that must not impose additional substantive lega l obligations or confer 
additional legal rights on Members.  In other wo rds, it should not go beyond the TRIPS Agreement. 
159. The Chairman  asked the European Comm unities to clarify its position with regard to the 
fourth principle set out in the Hong Kong, China proposal. 
160. The representative of the European Communities  said that his delegation considered the 
mandate to be part of the TRIPS Agreement.  If  the mandate was fulfilled, then it would not be 
necessary to go beyond the TRIPS Agreement.  If th e TRIPS Agreement were to be as it currently 
was, with an unfulfilled mandate, then his dele gation would want to go beyond the current TRIPS 
Agreement.  
161. As regards the Australian delegation's interven tion, he said that the other supporters of 
TN/C/W/52 did not take the floor in order to save tim e and that there was no change in their positions.  
Furthermore, should there be any counting, then th e European Communities alone would be closer to 
one quarter of the Membership, compared to th e totality of sponsors of the TN/IP/W/10/Rev.2 
proposal. 
162. The representative of Argentina  recalled that the mandate that was originally written in 
TRIPS Article 23.4 referred to wines and not spirits.  Spirits were added subsequently in a political 
declaration. 
163. The representative of India  said that the TN/C/W/52 proposal was the result of a long and 
constructive engagement by 108 Members.  For the sake of time, it was not necessary for all the 
proponents to repeat the points. 
164. The representative of Turkey  said the word "facilitate" should not be narrowly construed to 
mean non-binding consultation obliga tions.  Her delegation agreed with the view that "facilitate" 
could also be interpreted to include legally bindi ng procedures as well as legally binding results.  That TN/IP/M/23 
Page 28  
 
  was why the mandate was about the notion of "facilita ting" protection, as "protection" was in itself a 
legal notion. 
165. As regards the nature of the obligation under the Chair's first two questions, her delegation 
did not want to have different leve ls of obligation for Members if ther e were to be one legal system of 
registration and notification.  The question of whet her or not there should be different levels of 
obligation would be a matter to be considered at th e end of the day.  Even in that case, the minimum 
obligations should have a legal nature. 
166. The Chairman
 agreed with the delegation of Barbados that there was good engagement from 
delegations and that the group had made some progress.  He thought, however, that the main 
challenge continued to be how to find a way to meet  the expectations of the mandate of "facilitating" 
the protection of GIs for wines and spirits without  "imposing" undue burden on Members.  He had 
some difficulty in understanding how there could be  any meaningful and useful facilitation of the 
protection without Members doing something.  Some  Members might have to do more within their 
domestic environments, while others  might have to do less or even nothing.  It seemed inconceivable 
to come to a situation where there would be a m eaningful result without some degree of commitment 
beyond the obligation to consult the register.  Unle ss there was some agreement on what a Member 
should do with the information in the register and how to balance that information against its own 
domestic information, this negotia ting group would continue to have  a challenge.  There had to be 
some meeting of minds between doing nothing and at the same time giving effect to the mandate to "facilitate".  While there was no intention to incr ease current protection, Members were committed to 
"facilitate" that protection.  It would be necessary to  find some additional language to put that into a 
workable and meaningful context.  He said, howev er, that, as pointed out by one delegation, this 
exercise was not aimed at creating a harmonization system. 
167. On the question of participation, he said that  the Special Session should be looking for some 
way to reconcile the two approaches on the table. 
168. On the question of special and differential treat ment, he took the point that the matter could 
best be addressed when the broader picture of co nsequences/legal effects and participation were 
known.  However, he thought that some Members, in particular developing country ones, would 
already have some ideas as to what they would lik e to have, irrespective of the legal consequences, 
and as to what measures would be appropriate.  T hose Members which had a better experience of the 
TRIPS negotiations might have a better feel for what  could be appropriate for developing countries. 
169. To the extent he thought appropriate, he woul d take into account the information he had 
received during the Special Session meetings in the draft report that he would prepare on his own 
responsibility.  
170. The Special Session took note
 of the statements made. 
__________