RESTRICTED  WORLD TRADE  
ORGANIZATION  TN/IP/M/14 
26 October 2005 
 
 (05-4951) 
Council for Trade-Related Aspects 
of Intellectual Property Rights Special Session  
 
  
MINUTES OF MEETING 
 
Held in the Centre William Rappard
 
on 16 September 2005  
 
Chairperson:  Ambassador M anzoor Ahmad (Pakistan) 
 
Subjects discussed          P a g e  n o s .  
A. ADOPTION OF AGENDA ................................................................................................................1  
B. NEGOTIATION ON THE ESTABLISHMENT OF A MULTILATERAL SYSTEM OF 
NOTIFICATION AND REGISTRATION OF GE OGRAPHICAL INDICATIONS FOR WINES AND 
SPIRITS ............................................................................................................................... ..........1  
C. OTHER ISSUES ............................................................................................................................32  
 
_______________ 
   A. 
ADOPTION OF AGENDA  
1. The fourteenth Special Session agreed  to adopt the agenda as set out in WTO/AIR/2637. 
2. The Chairman  suggested that the Special Session invite  the International Bureau of WIPO to 
be represented in an expert capacity, this being wit hout prejudice to the issue of observer status for 
intergovernmental organizations. 
3. It was so agreed . 
B. NEGOTIATION ON THE ESTABLISHMENT OF A MU LTILATERAL SYSTEM OF NOTIFICATION AND 
REGISTRATION OF GEOGRAPHICA L INDICATIONS FOR WINES AND SPIRITS  
4. The Chairman  recalled he had indicated in his written report to the TNC meeting of July, 
contained in TN/IP/13, that he would hold informal  consultations prior to this Special Session on the 
steps that should be taken to assist progress in the ne gotiations.  Accordingly, he had been in contact 
with many Members since the summer break.  As he had reported to the TNC at its last meeting of 
14 September, these consultations had focused on overcoming the problem that had been impeding 
work prior to the summer break.  At its June mee ting, the Special Session had been unable to discuss 
productively all the proposals on the table because of  concerns expressed by some delegations about 
the relationship between one of the three proposals and the mandate of the Special Session.  In his 
consultations, the main question then had been how to find a way of enabling the substance of each of 
the proposals as it related to the mandate of the Sp ecial Session to be discussed in a productive way.  TN/IP/M/14 
Page 2  
 
He was confident that, thanks to the goodwill a nd cooperation of delegati ons, Members had found a 
way forward.  To this end, the Secretariat had i ssued, in document TN/IP/W/12, a note setting out the 
three proposals side-by-side.  This should facilitate  comparison of the proposals as they related to 
those elements that, in the view of the proponents of each proposals, were relevant to the mandate. 
5. With regard to the organization of the Special Session's work under agenda item B, he 
suggested that delegations that so wished be give n the opportunity to make any general statements and 
that the discussion of the proposals on the table, namely the Hong Kong, China proposal contained in TN/IP/W/8, the joint proposal contained in TN/IP/W/10 and the EC proposal contained in TN/IP/W/11, be organized in a systematic way, usin g the main headings of the side-by-side document 
TN/IP/W/12. 
6. It was so agreed
. 
General statements 
7. The representative of New Zealand  said that the Secretariat's side-by-side paper in 
TN/IP/W/12 was a useful means to encourage discu ssion of the various proposals currently on the 
table.  New Zealand had taken a constructive approach to the deve lopment of this paper, while 
maintaining the same view taken at the last June  Special Session, shared by a large number of 
Members, that the EC proposal in document TN/IP/W/11 fell clearly outside the terms of the specific wines and spirits mandate for this negotiation.  New Zealand was nevertheless prepared to see the 
EC proposal included in the Secretariat's table, s ubject to the qualifying language provided in the 
cover note.  While her delegation looked forward to going through the Secretariat's paper heading by 
heading and to providing specific comments on each element of a proposal, it also cautioned that each 
proposal came as a package and its individual elements  were therefore heavily interrelated;  it would 
be only when each proposal was looked at as a whole that it would actually be possible to assess its 
impact on Members.  New Zealand, and probably other Members as well, would ultimately consider 
these proposals holistically. 
8. The representative of Australia
 said that his delegation was looking forward to the 
opportunity to focus the discussion on the specific texts proposed for a register of geographical indications for wines and spirits.  It was his dele gation's understanding that the side-by-side document 
only contained the text of those proposals which the proponents accepted as being within the mandate 
of the Special Session, namely the mandate contai ned in Article 23.4 of the TRIPS Agreement and 
paragraph 18 of the Doha Declaration.  He therefore welcomed the fact that all Members agreed to limit the discussions in this way and recalled that such limitation was clearly set out in the cover note 
of the Secretariat's paper.  Although his delegati on would already be in a position to make some 
specific comments and ask questions about certain asp ects of the various proposals, particularly in 
relation to participation and the consequences of registration, it was still going through the documents, 
and would therefore reserve the right to come back with further questions and points in light of this 
meeting's discussion.  Like New Zealand, his dele gation agreed to go through the document issue by 
issue, but cautioned that, at the end of the day, it would be important to look at the overall shape of 
any outcome since many of these issues were interlinked. 
9. The representative of Canada
 hoped that the Secretariat's paper would be a useful tool in 
advancing this Special Session's work.  He recalled that his delegation had serious concerns regarding 
the EC proposal tabled last June, which had placed th ese negotiations in jeopardy.  In this regard, the 
approach taken by the Chair and Secretariat seemed  to offer Members hope on how to move forward.  
He reminded Members that the co-sponsors of the jo int proposal approached these negotiations in the 
spirit of good faith and in a constructive manner.  They supported a proposal that was truly voluntary 
and cost-effective, had no hidden obligations and f acilitated the protection of geographical indications 
for wines and spirits.  Among the various proposals tabl ed so far, it was the joint proposal that was the TN/IP/M/14 
Page 3 
 
 
most consistent with the mandate and therefore it should be the basis for moving forward in these 
negotiations. 
10. The representative of Costa Rica  said that the EC proposal tabled last June was outside the 
mandate of the Special Session and that his dele gation was showing flexibility by accepting to discuss 
the annex contained in that proposal.  His delegati on hoped that these discussions would be limited to 
the negotiation of a multilateral system of notifica tion and registration of geographical indications for 
wines and spirits, and would oppose any proposal going beyond wines and spirits. 
11. The representative of Japan  reiterated his delegation's pos ition in favour of a multilateral 
system of notification and registration of geographi cal indications for wines and spirits which would 
not be burdensome while facilitating their protection.   As announced at the June meeting, Japan had 
decided to be included in the joint proposal gr oup because, as one of the co-sponsors of the initial 
proposal contained in document TN/IP/W/5, it had co me to the conclusion that the new joint proposal 
was flexible enough to fit various domestic legislat ions that Members might have in their territories 
while allowing for voluntary participation.  For his delegation, it was extremely important that the 
negotiations in this Special Session be undertaken w ithin its mandate as set out in Article 23.4 of the 
TRIPS Agreement and paragraph 18 of  the Doha Declaration.  This poi nt had been clearly stated in 
the cover note of document in TN/IP/W/12.  Japan, therefore, supported this document and believed it 
would function as a catalyst for the substantive negotiations by helping delegations understand the 
differences between the different proposals. 
12. The representative of the United States  said that document TN/IP/W/12 had clarified that the 
mandate of the Special Session was limited to th e negotiation of the establishment of a multilateral 
system of notification and registration of geographical  indications for wines and spirits only, and that 
this document was therefore limited solely to those elements that, in the views of the proponents of 
each proposal, were relevant to this mandate.  W ith that understanding, the side-by-side presentation 
of the proposals was a helpful contribution to mo ve these negotiations forward in a constructive 
manner.  His delegation, like many others, was striving to better understand the proposals tabled, in 
particular what were the intentions of the pr oponents.  This document was helpful in that it 
highlighted the differences among the three proposals, particularly concerning areas such as participation, the consequences of registration, and fees and costs.  It was important that delegations 
look at these differences and assess how each propo sal would impact national systems for the 
protection of geographical indica tions, government resources and the global commercial interests of 
Members' wine and spirit industries.  For his de legation as well as others, the objectives of the Special 
Session should be to establish a multilateral system that was consistent with the TRIPS Agreement 
and satisfied the mandate.  In that light, the sy stem should be one that would be truly voluntary, 
simple and inexpensive, that would preserve the existing balance of rights and obligations in the 
TRIPS Agreement, that would respect the territoria lity of intellectual property rights for geographical 
indications, and that would allow WTO Members to continue to determine for themselves the 
appropriate method of implementing the provisions of  the Agreement within their own legal system 
and practice.  These objectives were all satisfied by  the joint proposal, which was the only option that 
met the mandate by facilitating the protection of geographical indications for wines and spirits without imposing additional burdens on WTO Members. 
13. The representative of Switzerland
 said that the negotiation on the multilateral system, which 
had been conducted for some years, should reach a c onclusion.  In this rega rd, document TN/IP/W/12 
would help the examination of the various proposal s and provide a clearer picture of possible points 
of convergence and those where more work would be required to identify possible solutions and 
options for compromises. TN/IP/M/14 
Page 4  
 
14. The representative of th e European Communities
 said, in response to the interventions 
regarding the issue of mandate, that like othe r proposals the one his delegation had made in 
TN/IP/W/11 was based on a reading of the mandate .  The implementation of Article 23.4 should 
result in an effective instrume nt.  Otherwise, why would have Members decided in the Uruguay 
Round to have had a paragraph 4 in  Article 23 of the TRIPS Agreemen t?  His delegation was of the 
opinion that the other proposals on the table were not sufficient to give effect to Article 23.4. 
15. The representative of Chinese Taipei  recalled his delegation's position that the discussions 
should stick to the Doha mandate. 
16. The representative of India  noted that the Secretariat's paper had been prepared under its own 
responsibility and without prejudice to positions of Members and to their rights and obligations under 
the WTO.  He also noted the reference to the mandate arising both from Article 23.4 of TRIPS and 
paragraph 18 of the Doha Declaration.  All these  involved complex matters.  His delegation hoped to 
learn from all the views that might be expressed during the present meeting, particularly on the implications of each of the proposals and the possibility of synthesising them into an integral approach to fulfil the mandate. 
17. The representative of Hong Kong, China
 said that the Secretariat's document would help 
focus the discussions in the Special Session.  As Hong Kong, China's proposal had been first 
presented in April 2003 and since then there had been  changes in many delegations, he said he would 
give a brief description of the background and main  features of the proposal.  He recalled that 
Hong Kong, China did not have any substantive tr ade interests in the question of geographical 
indications.  It was only attempting, as an honest broker, to come up with some possible middle 
ground option to help Members fulfil their mandate  under Article 23.4 of the TRIPS Agreement and 
the Doha Declaration.  The proposal had received inspiration from other m odels of protection of 
intellectual property rights, like petty patents, utilit y models and industrial d esigns, and followed five 
guiding principles.   The first was that Members had a mandate under Article 23.4 of the TRIPS Agreement and that the purpose of the multilatera l system was to facilitate the protection of 
geographical indications for wines and spirits.  The second was that, under Article 1.1 of the TRIPS 
Agreement, WTO Members were free to determin e the appropriate method of implementing the 
provisions of the Agreement within their own le gal system and practice.  The third was that 
intellectual property rights were essentially territorial in nature.  The fourth was that the system to be 
established should not impose additional substantive le gal obligations or confer additional legal rights 
on Members.  The last principle was that the establishment and maintenance of the system should not 
impose undue financial or administrative burdens  on Members, neither on those choosing to 
participate in the system nor on those opting out of the system. 
18. The representative of Chile
 said that the Secretariat's paper was useful and also served to 
clarify the mandate of the Special Session regarding th e EC proposal tabled last June in TN/IP/W/11.  
He agreed with New Zealand and Au stralia that, while the table would facilitate this body's work, it 
was only when Members had seen the proposals as a w hole that they would be able to assess their 
actual impacts on them.  In this regard, the real im pact of the ambition of the EC proposal could be 
observed comparing its different proposals on the re gistry, on extension and in the context of 
Agriculture.  In contrast, the joint proposal wa s the only one that respected the principle of 
territoriality. 
19. The representative of Korea  said that the multilateral system of notification and registration of 
geographical indications for wines and spirits shoul d be non-binding and that participation in the 
system should be voluntary.  Furthermore, as was indicated in the cover note of TN/IP/W/12, the 
present negotiations should be discussed within the mandate of the TRIPS Agreement and the Doha 
Declaration. TN/IP/M/14 
Page 5 
 
 
20. The representative of Thailand  said that document TN/IP/W/12 dealt with complex issues and 
would, together with this meeting's discussions, be examined by his authorities in the capital.  His 
delegation reserved its right to make comm ents on the paper at the next meeting. 
Discussion of the proposals set out side-by-side in TN/IP/W/12  
 - Preamble and legal form 
21. The representative of Chile  pointed out that the joint proposal was the only one containing a 
preamble.  While he was aware that the results of  these negotiations might not technically lead to a 
treaty, he stressed the importance of preambles in  the Vienna Convention on the Law of Treaties, 
particularly in its Article 31.2, which stated that "t he context" for the purpose of the interpretation of a 
treaty must comprise, in addition to the text, its pr eamble.  He asked Members to read carefully the 
preamble of the joint proposal and see how it had clarified the mandate as well as the limits and 
framework in which this proposal was put forward. 
22. The representative of New Zealand  said that the reason why the co-sponsors of the joint 
proposal included a preamble in the draft legal text  was to provide some useful reminders about the 
task that Ministers had set for them.  The preamble  set out some of the most basic premises which 
underlay this negotiation.  First of all, the ai m was to facilitate the protection of geographical 
indications and not to confer additional rights in relation to those notified geographical indications.  
Secondly and related to the previous point was th e premise that the basic balance of rights and 
obligations under the TRIPS Agreement should not be  challenged.  Thirdly, the preamble served to 
remind Members of the fundamental principle in Ar ticle 1.1 of the TRIPS Agreement, which enabled 
all Members to determine for themselves how best to implement the obligations in the Agreement 
according to their own domestic legal system and practice.  While the preamble did not capture the 
full panoply of principles underlying the joint propo sal, such as minimal costs and burdens, it set the 
basic terms of reference and guiding principles for the register and bedded it firmly in the TRIPS 
framework. 
23. The representative of Australia  said that the joint proposal was contained in the form of a 
decision of the TRIPS Council with a preamble which provided an important context for the decision.  
The preamble did that by citing the negotiating ma ndate of Article 23.4 of the TRIPS Agreement and 
paragraph 18 of the Doha Declara tion and by outlining some of the key features of the register, 
notably:  that the system would facilitate the pr otection of geographical indications for wines and 
spirits without altering the substantive right s and obligations of Members under the TRIPS 
Agreement;  and that it should allow Members, consis tent with Article 1 of the TRIPS Agreement, to 
continue to determine for themselves the appropria te method for implementing the provisions of the 
Agreement within their own legal system and practice. 
24. The representative of the United States  associated his delegation with the views expressed by 
Chile, New Zealand and Australia on the importan ce of the preambular provisions in the draft 
decision.  It was important to have such a pr eamble to agree on the purpose of the system of 
notification and registration of geographical indica tions for wines and spirits.  The purpose of the 
system was not to impose new substantive obliga tions regarding the protection of geographical 
indications for wines and spirits, but rather to f acilitate the protection based  on existing obligations 
negotiated during the Uruguay Round.  The joint proposal preamble reflected that purpose, by emphasizing that the system would not confer an y additional rights with respect to geographical 
indications and that it would not prejudice any rights  or obligations under the TRIPS Agreement.  It 
further recognized the right of Members under Ar ticle 1.1 of the Agreement to determine the 
appropriate method of implementing their TRIPS ob ligations within their own legal system and 
practice. TN/IP/M/14 
Page 6  
 
25. The representative of India
 asked the co-sponsors of the joint proposal what would be the 
consequence of the preambular references on the ob ligations that were embodied in the operative 
provisions of the draft decision.  For example, while  paragraph 2.2 of the joint proposal provided that 
participation would only be voluntar y, paragraph 5 provided that pa rticipating Members committed to 
ensure that their procedures would include the prov ision to consult the database.  How would this 
reflect the over-arching preambular objective that th ere would be no obligations arising out of the 
system proposed in the joint proposal?  The pr oposal provided consequences for participating 
Members that would not necessarily be limited to wh at was currently the set of rights and obligations 
in the TRIPS Agreement. 
26. The representative of th e European Communities  said that it was difficult to consider the 
preamble of the joint proposal independently of th e other headings in the various proposals.  The 
preamble prejudged completely the choice Members might make on participation and other issues.  
His delegation had used a different approach, whic h consisted in proposing an annex to the TRIPS 
Agreement, thus avoiding the need for a preamble and a discussion thereon. 
27. The representative of Argentina  said that the preamble was a f undamental part of the joint 
proposal in that it contained assurances regarding the principle of territoriality and the balance of 
rights and obligations in the TRIPS Agreement as we ll as other elements such as the format of the 
results of the negotiations, namely a draft decisi on by the TRIPS Council.  With regard to the 
comment made  by the delegation of the Europ ean Communities that the preamble would prejudge 
consideration of the rest of the text, she asked what  kind of format that dele gation had in mind when it 
referred, in paragraph 1 of its proposal, to th e system "established by this [instrument]". 
28. The representative of New Zealand , responding to the comment made by India, said that, 
under the fourth tiret of the preamble of the draft d ecision providing that "the system shall not confer 
any rights with respect to the geographical indications  registered in the system", there would be no 
additional rights in relation to these geographical indications, the decision-making being left to the 
national authorities.  It would, however, provide a "one-stop shop" for use by those authorities, so 
they could consult the register and see what was no tified or not.  The second relevant part of the 
preamble was the fifth tiret, which said that "the sy stem shall not prejudice any rights or obligations of 
a Member under the TRIPS Agreement".  While recognizing that the Indian delegation was correct in saying that for those Members that had chosen to  participate in the system there would be an 
additional obligation, i.e. to consult the database, she said that this obligation of consultation would 
not prejudice existing rights and obligations, for ex ample the right under Article 1.1 to choose how to 
implement the obligations under the Agreement and the right to exercise any of the exceptions under 
Article 24 at any time. 
29. The representative of Brazil
 said that his delegation also unde rstood that the mandate was to 
achieve a multilateral system of notification and re gistration that would be voluntary in nature and 
would preserve Members' rights and obligations under the current TRIPS Agreement, in particular the 
flexibilities under Articles 1.1 and 24 of the Agreement.   In that regard, the preamble of the joint 
proposal was important. 
30. The representative of India  said that the clarification made by New Zealand would be 
communicated to his experts back in capital.  With regard to the point made that Article 1.1 of the 
TRIPS Agreement was the parameter for obligati ons arising in terms of territoriality and 
administration of national IP systems, he raised th e following question:  if one of the participating 
Members of the system proposed by the joint propo sal did not have, at the national level, a legal 
obligation to consult the WTO data base before making the decision re garding a notified  geographical 
indication, how would the fifth tiret of the pream ble and the commitment specified in paragraph 5 
work?  Would this change in national legislation be entailed in order to incorporate this specific 
requirement to consult a WTO database or could th is Member get away with doing nothing because 
the preamble said that the system did not add to the obligations? TN/IP/M/14 
Page 7 
 
 
31. The representative of the European Communities  said that India had made an important point.  
Clearly all the proposals on the table would trigger a number of legal obligations that were not 
currently specifically provided for in the TRIPS Ag reement.  However, so far only one proposal,  the 
one made by his delegation, had been accused of  going beyond the mandate.  In response to Brazil 
and other delegations, he said that the EC proposal al so fully respected the principle of territoriality 
because it provided for a mechanism whereby some of the exceptions currently provided for in 
Article 24 of the TRIPS Agreement, notably the one  provided for in its paragraph 6, could be 
exercised, with the other exceptions left freely invocable under domestic law. 
32. The representative of Argentina  said, in response to the point made by India, that the joint 
proposal would not, in principle, require changes in the national legislation.  With regard to the point 
made by the European Communities that all proposals would produce legal effects not yet provided 
for in the TRIPS Agreement, she said that the key difference between the proposals was the fact that 
under the joint proposal any Member bound by the system, including the obligation to consult the database, would do it voluntarily.  A Member woul d voluntarily notify the WTO that it was ready to 
participate in the system and would, in good faith, accept the commitment under paragraph 5 of the 
draft decision.  By contrast, the EC proposal would impose legal effects on all Members, 
independently of whether they had expressed their willingness to participate or not in the system.  
These legal effects would, for example, deprive natio nal authorities of any flexibility, and reverse the 
burden of proof, which was  provided under the TRIPS provisions on patents but not under those on 
geographical indications. 
33. The representative of the United States
 disagreed with the point made by the European 
Communities that the commitment to consult the database would be of a similar nature to that of other 
proposals, in particular the requirements set forth in the EC proposal.  The joint proposal came up 
with a commitment that fulfilled in good faith the requirements of Article 23.4 of the TRIPS 
Agreement while at the same time preserving the current rights and obligations under the Agreement.  
This was the kind of balance that his de legation and others were looking for. 
34. The representative of Australia  associated his delegation to the view expressed by the United 
States.  The joint proposal group was not saying that there would not be any procedural obligations for participating Members, but as Members would see when entering in more substantive discussion, the differences between the EC and the joint proposal with regard  to substantive pr ovisions were quite 
marked. 
35. The representative of Chile
 said that, whatever legal form an international commitment would 
take, it would only commit the parties which ha d committed themselves to be part of that 
commitment.  They would be bound to comply with it in good faith.  He asked the delegation of India 
to clarify the point made in relation to commitments of Members under the joint proposal. 
36. The representative of India  said that he was not referring to non-violation nullification or 
impairment but to a violation of the obliga tion under paragraph 5 of the joint proposal. 
37. The representative of the European Communities  said that it was unclear to him what was the 
difference between a legal effect that obliged nati onal authorities to look into a database and a legal 
effect that consisted of a reversal of the burden of  proof under national law, or  any other legal effects 
like the ones in the EC proposal.  In his view, these effects might be more or less stringent but were 
all obligations not specifically provided for in the TRIPS Agreement.  He therefore failed to 
understand the argument whereby a "soft" legal eff ect would be acceptable and be within the mandate 
while a more stringent one would not. TN/IP/M/14 
Page 8  
 
 -  Participation 
38. The representative of Hong Kong, China
 said that the side-by-side document TN/IP/W/12 
captured the two elements of his delegation's propo sal in TN/IP/W/8:  in terms of participation 
Members would be free to participate and notify geographical indications, and in terms of legal 
effects there would be a rebuttable presumption regarding certain aspects of the registration.  However, the registration would only be binding upon  Members choosing to participate in the system.  
In this regard, he drew Members' attention to paragraph F of TN/IP/W/8, which proposed a review 
mechanism whereby the notification and registration sy stem would be subject to a review, particularly 
on the question of scope of participation, after a certain number of years from the establishment of the 
system. 
39. The representative of Australia
 said that the words "in those Members participating in the 
system" in Article 23.4 of the TRIPS Agreement mean t that the system must be voluntary, in other 
words there could be Members not participating in the system.  For this reason the multilateral system 
put forward in the joint proposal was entirely vol untary and would not impose any legal effects in 
non-participating Members although it a llowed them to have access to the system.  By contrast, the 
EC proposal did not appear to be voluntary at a ll, given the provision entitled "legal effects in non-
participating Members", which would force those Me mbers to lodge reservations in order to retain 
their rights to rely on certain exceptions that a ll Members were currently entitled to enjoy under 
Article 24 of the TRIPS Agreement.  He further said that paragraph 1 of the EC proposal appeared to 
be misleading in light of its paragraph 5.  For his delegation, there was no genuine choice in that 
proposal to participate or not to participate:  ther e was in fact only a choice to not participate in the 
benefits, but no choice to not participate in the obligations. 
40. The representative of European Communities  said that it was not surprising that the wording 
of Article 23.4 of TRIPS and para graph 18 of the Doha Declarati on contained a certain degree of 
ambiguity given the fact that treaties like TRIPS were  so difficult to negotiate.  Such ambiguities, in a 
way, reflected a certain degree of tension between multilateralism and participation.  The EC proposal 
reflected a good faith effort to unravel this tensi on.  The reason why the EC proposal contained legal 
effects even for non-participating Members related to the fact that the mandate had clearly stated that 
the system should be "multilateral", as opposed to "plurilateral", a term possessing a precise meaning 
in the WTO terminology.  It should also be clar ified that the protection to be "facilitated" was a 
protection that currently applied to all WTO Memb ers with the exception of LDCs.  The issue of 
participation was directly connected to the value th at these negotiations had for the EC delegation:  an 
instrument that would facilitate protection in all WTO Members was not the same as a system that 
would facilitate protection only in those Members wh ich joined the system, particularly when there 
were no assurances of which Member would be join ing that system.  In response to Australia's 
comment on the choice of benefits and obligations under the EC proposal, he pointed out the legal 
effects for non-participating Memb ers were less stringent than those set out for participating 
Members. 
41. The representative of Canada  said that his delegation had seri ous concerns regarding the EC 
proposal with respect to participation.  The Eur opean Communities seemed to have seriously misread 
the last portion of Article 23.4, which provided for voluntary participation.  In fact, the European 
Communities had turned the concept of participati on on its head.  The non-participants would have 
onerous obligations under the EC proposal but no  corresponding enjoyment of benefits.  This was 
absolutely unacceptable.  The jo int proposal, on the other hand, truly respected the concept of 
voluntary participation.  In fact it went further by allowing non-participants to consult the registry if 
they so desired.  In addition, th e joint proposal proposed that ther e be a written notification of an 
intention to participate.  Canada considered th at as a good feature that would eliminate potential 
confusion in the future. TN/IP/M/14 
Page 9 
 
 
42. The representative of Brazil  said that his country was among those Members holding the view 
that participation in the system should be of a vol untary nature, meaning that those who would decide 
not to participate would not be bound by the effects of the Agreement.  For that reason his delegation 
had major concerns with the EC approach, which di d not really provide for a differentiation between  
participants and non-participants.  There was no poi nt in discussing a proposal that would provide for 
obligations to non-participants but no rights. 
43. The representative of United States  said that his delegation read Article 23.4 as conceiving of 
a truly voluntary system in which there would be some Members that participated and some Members 
that did not participate.  In that light, contrary  to the comment made by the European Communities, 
he did not believe that the mandate in Article 23.4 was ambiguous.   The last part of that provision, 
regarding Members participating in the system, was actually quite clear.  The joint proposal would 
allow, but would not require, all Members to join  the system.  As noted by Canada, it would be 
flexible, as it would allow all non-participants to ha ve access to the informati on on the database, if 
they so wished, when making their determinati ons for protection of geographical indications, 
trademarks or other related rights.  For tran sparency purposes, the joint proposal included the 
provision that Members submit a written notification of th eir intention to participate.  By contrast, the 
European Communities was actually proposing mandatory participation for all WTO Members:  the effects of a registration would affect rights with respect to the registered term in all WTO Members, with the exception of the current transition period for least-developed country Members.  His delegation failed to understand what would then be the benefits of being a non-participating Member 
under the EC system.  Instead, the result would n ecessarily be substantial costs for examination, 
protection and litigation without any corresponding benefits for those that had chosen not to 
participate.  Proposals that would call for mandatory participation remained of  serious concern to his 
delegation as they would be beyond the mandate and would deprive the reference made at the end of 
Article 23.4 of TRIPS to "Members partic ipating in the system" of any meaning. 
44. While acknowledging Hong Kong, China's comment  regarding voluntary participation, his 
delegation had noted with concern that the scope of participation could be reviewed four years after 
the system had been set up.  This would imply that such a fundamental principle as voluntary participation could be subject to review after the system was established. 
45. The representative of Switzerland
 said that document TN/IP/W/12 clearly showed that all 
three proposals provided for active participation on a purely voluntary basis.  With regard to the 
Hong Kong, China proposal, her delegation had, howev er, difficulty in understanding why it would be 
necessary to make a distinction with regard to legal effects between participating and 
non-participating Members in a system that was truly multilateral, whose purpose was to facilitate 
protection, and whose legal effects were not to hamper recourse to the exceptions under Article 24. 
46. The representative of Australia  said that participation was a f undamental issue, in particular 
for those Members that were not wines and spirits  producers, and that the joint proposal left the 
choice of whether or not to participate to indivi dual Members.  His delegation disagreed with the 
point made by the European Communities that the joint proposal would amount to a plurilateral agreement.  Under the joint proposal approach, all Members would participate in the negotiations to 
establish a system, have access to the system once it w as established and, if they so wished, have the 
opportunity to participate in the system by notifyi ng domestic geographical indications.  As had been 
pointed out by his delegation in previous meetings , the system proposed in the joint proposal would 
be multilateral in the same way as the multilateral Code of Good Practice in  Annex 3 of the TBT 
Agreement, which was open to acceptance by the standardizing bodies of any Member but was not 
compulsory for all Members.  That was precisely what Article 23.4 meant. 
47. The representative of New Zealand
 associated her delegation to the views expressed by 
Australia on the fundamental issue of voluntary participation, including on the comparison with the 
multilateral Code of Good Practice in  Annex 3 of the TBT Agreement.  She recalled what the joint TN/IP/M/14 
Page 10  
 
proposal really meant when it proposed a "voluntary" system:  each Member would make the individual choice of whether or not to participate, and they could do that by notifying their intention 
to participate.  She noted that the Hong Kong, China proposal referred to the system as being 
"voluntary" while the EC proposal referred to "non-pa rticipating Members" and to the right to "elect 
to participate".  In principle he r delegation welcomed the idea of vo luntary participation expressed in 
those two proposals.  However, as had been in dicated by many other delegations, the terms 
"participation" and "voluntary" seemed  to have different meanings to Members.  For her delegation as 
well as others, it seemed misleading that the Eur opean Communities referred to "non-participating 
Members" and then imposed what were clear ly onerous demands and obligations on these non-
participating Members. 
48. The representative of the Philippines
 recalled that his delegation had co-sponsored an earlier 
version of the joint proposal, namely the one cont ained in document TN/IP/W/5, and had held the 
view that participation in any system of notificatio n and registration should be strictly voluntary in 
accordance with the TRIPS Agreement and the Doha D eclaration.  His delegation shared the legal and 
fundamental policy concerns raised by other speakers that a mandatory system would disturb the 
balance in the TRIPS Agreement.  First, it would impose undue burdens and costs on developing 
countries while many of them did no have any econom ic interest in participating in such a system, 
whether it was voluntary or mandatory.  Second, there would be very few, if any, potential geographic 
indications for wines and spirits that  would be of economic interest to the Philippines if a system were 
set up. 
49. The representative of the European Communities  said that there was currently one 
international registration system that had some of  the same features as the ones discussed, the Lisbon 
Agreement administered by WIPO.  The TRIPS Agreem ent had incorporated three treaties by way of 
reference, the Berne, Rome and Paris Conventions , but not the Lisbon Agreement.  If the mandate 
were to set up a register with legal effects and voluntary participation – and the Lisbon Agreement 
was of that kind - why had the TRIPS Agreement not  simply incorporated that Agreement?  The 
answer was that his delegation, one with direct intere st in this matter, had wanted a system that would 
go beyond Lisbon, and that was why the word "multilateral" had appeared in the mandate. 
50. For the supporters of the joint proposal, if there were no benefits to be gained from the 
register, then the mandate would automatically m ean that the register must be voluntary.  He 
wondered whether the delegations making that point c ould adhere to the principle that a Member not 
having for example patents would not need apply the patents section of the TRIPS Agreement.  This 
could be a dangerous line of argument, certainly not one endorsed by the TRIPS Agreement and its 
spirit. 
51. The representative of Hong Kong, China  said, in response to the comment made by 
Switzerland, that the basic consideration of his de legation's proposal was that there could not be a 
system which was labelled as "voluntary" in terms of participation and which at the same time 
provided additional substantive legal effects on non-participants.  For hi s delegation, either the system 
was voluntary both in terms of participation and le gal effects or it was mandatory both in terms of 
participation and legal effects. 
52. The representative of Argentina  expressed support for the point s made by other delegations, 
in particular the concerns expressed by other deve loping countries regarding a complex system that 
would add legal and administrative burdens to countr ies which had no economic interests.  She failed 
to understand the parallel drawn by the EC delega tion regarding the Lisbon Agreement.  That 
agreement had set up a fully voluntary system as was the case for other WIPO registration treaties:  WIPO members had no obligation to adhere to, or ra tify, any of those treaties.  She also failed to 
understand the parallel drawn by the EC delegation regarding patents.  The TRIPS section on patents 
could not be equated to the one on geographical i ndications.  The TRIPS Agreement did not provide 
that there should be negotiations on an internati onal register for patents or any assessment of the TN/IP/M/14 
Page 11 
 
 
patent system.  She further recalled that the princi ple of territoriality under Article 1.1 of the TRIPS 
Agreement also applied to geographical indicati ons.  What the European Communities was proposing 
would generate a precedent, particularly for deve loping countries.  If a system were established with 
legal effects of such a multilateral character that there would not be any reservations possible, then 
any WTO Member would be directly bound by the system.  This would be a serious precedent for 
other areas, including those which were  particularly sensitive like patents. 
53. The representative of Canada  said in response to a point made by the European Communities 
that there was no point in trying to re-write wh at negotiators had written in their wisdom in 
Article 23.4.  The understanding was clea r that the system would be voluntary. 
54. The representative of Malaysia  said that the notification and registration system must be one 
with a strictly voluntary participation and without  any legal effects on non-participating Members.  
Therefore, her delegation would have concerns re garding the review clause of the Hong Kong, China 
proposal, in particular the last sentence, which sai d that "[i]n particular, the question of scope of 
participation should be revis ited as part of the review". 
55. The representative of Chile  recalled that the Vienna Convention on the Law of Treaties 
stipulated that a treaty did not create rights or oblig ations for any third state without its consent.  He 
did not understand the link the European Comm unities was trying to make with the Lisbon 
Agreement, which was a registration treaty and ther efore different from the treaties incorporated in 
the TRIPS Agreement, such as the Berne, Paris Conve ntions, which created substantive rights.  What 
in fact the European Communities was proposing was a system which would go far beyond the 
Lisbon and Madrid systems, which themselves were  treaties with few members.  The EC proposal 
would therefore create a "super category" of inte llectual property, different from the traditional 
categories of IPRs.  He further added that the Li sbon Agreement went much further than the mandate 
under Article 23.4 of the TRIPS Agreement because it covered all kinds of products.  What the 
European Communities was seeking in these negotiati ons was to attain more than what the EC 
negotiators in the Uruguay Round originally wanted, namely to go beyond what was in the Lisbon and 
Madrid Agreements. 
56. The representative of Colombia  associated her delegation with the concerns expressed by 
Malaysia about the review clause in the Hong Kong, China proposal. 
57. The representative of Argentina  said that the reason for not incorporating the Lisbon 
Agreement was simply that the European Communities did not have, at the time of the Uruguay 
Round, any great interest in that agreement.  Sh e thought that Article 23.4 had been included in the 
TRIPS Agreement with the hope of achieving a syst em that would be, as stated by the European 
Communities, more effective in international prot ection because they had not achieved what they 
wanted with the Lisbon Agreement, namely that the right to determine the grounds for rejecting 
protection would not be entirely left to national juri sdictions.  For example, in the Lisbon Agreement, 
and contrary to what the European Communities wa s proposing to the Special Session, there was no 
mandatory body to resolve differences regarding a geographical indication.  Each member State 
would make the determination according to its own  do mestic legislation, whether of not it wanted to 
provide protection.  This was an important differenc e.  She agreed with Chile that the Lisbon system 
had only a few members.  A great number of them were EC member States, and some eighty per cent of the appellations of origin registered came  from the same countries.  Among those developing 
countries that were members of the Lisbon system, only a few ones had notified a small number of 
appellations of origin;  others, in all the years of existence of the agreement, had not notified even one 
appellation.  Even since the TRIPS Agreement had entered into force and countries had been more 
familiar with this category of inte llectual property, there had not been any increase in registrations.  
The Lisbon Agreement was not one of the impor tant international agreements WTO Members, 
particularly developing ones, were interested in joining.  This had been the case during the Uruguay 
Round and was so in the current negotiations. TN/IP/M/14 
Page 12  
 
58. The representative of Mexico
 said that the fact that the Lisbon Agreement had not been 
incorporated did no mean that WTO Members wa nted a system like the one proposed by the 
European Communities. 
59. The representative of Hong Kong, China  said, in response to the comments made regarding 
the review clause, that the proposal made by his delegation was aimed at overcoming one of the 
difficulties that the Special Session was facing, namely  the different interpretations of the mandate.  
Some would interpret the mandate as one entailin g a completely voluntary system with no legal 
obligations for non-participants.  Others would inte rpret it as entailing a more mandatory system with 
some legal effects.  Given that that no consensus would likely emerge in the near future, one way to 
overcome this difficulty was a more incremental approach, namely to set up the system, let it operate 
for a certain period of time, and then to undertake the review.  Under the Hong Kong, China proposal, 
the review would basically deal with the operation of the system, and one of the suggested elements 
for review would be the question of participation. 
60. The representative of th e European Communities  said that the EC proposal went beyond the 
Lisbon system as far as participation was c oncerned because its purpose was to establish a 
"multilateral" system, i.e. one that actually apply to all WTO Members, who were already obligated to 
apply the TRIPS provisions on geographical indications .  The value added of the EC proposal was its 
application to all WTO Members.  However, with re gard to legal effects, the proposal would be less 
ambitious than the Lisbon Agreement, which establis hed a system whereby after twelve months from 
the receipt of the notification of registration members must protect an appellation.  After that period, they could no longer invoke any exception.  By contrast, the EC proposal left, as a minimum, two 
alternatives – paragraphs 4 and 5 of Article 24 of the TRIPS Agreement – so that countries could 
invoke them at any time, and trade activities that  had been carried out using the geographical 
indication before the registration could continue.  Furthermore, Lisbon members had to ex officio 
protect appellations of origin, which the EC propo sal did not require.   While recognizing that the 
Lisbon Agreement did not provide for bilateral negotia tions, he said that the obligation to enter into 
bilateral negotiations already exis ted in Article 24.1 of the TRIPS Agreement, which stated in a 
mandatory way that "Members agree to enter into nego tiations".   In line with Article 24.1, what the 
EC proposal did was to propose, in its paragraph 3.4,  a procedural solution for that obligation to be 
implemented.  Bilateral negotiations to resolve differences would not be automatic, they would only 
occur when a country requested them. 
61. The representative of Chile
 said that the obligation to unde rtake bilateral negotiations was a 
difference between the EC proposal and the Lisbon Ag reement.  He further said that the European 
Communities had for the first time admitted that th ere would be legal effects on non-participating 
Members such as the impossibility of using Articles 22. 1, 22.4 and 24.6 of the TRIPS Agreement.  In 
contrast with Lisbon, the EC proposal provided for another strong obligation, the notification of all 
trademarks involving notified geographical indications. 
 - Notification 
62. The representative of Argentina  said as a general remark that the notification aspects in the 
joint proposal were  simple.  With regard to th e body responsible for receiving notifications, what the 
joint proposal had proposed, namely the WTO, w as more appropriate.  He r delegation had already 
said at previous meetings that it would not be ap propriate to negotiate in the WTO an instrument 
which would then be administered by another or ganization.  The WTO had no authority to impose 
administrative burdens of, or secretariat support to , this system on another organization which was 
absolutely independent of the WTO. 
63. She asked why the EC proposal had proposed two different bodies, the "administering body" 
in its paragraph 2.1, and the "c ommittee responsible for managing the system" in its paragraph 2.5. TN/IP/M/14 
Page 13 
 
 
64. With regard to paragraph 2.1(a) of the EC pr oposal, she noted that it expressly referred to the 
requirements set out by Article 22.1.  By contrast, the joint proposal simply said that the notification "shall ... identify the geographical indication as it appears on wine and spirit goods ...", which 
corresponded to the definition in Article 22.1.  The joint proposal group did not think that it was 
necessary to add the requirement that the notifie d term satisfy the definition of a geographical 
indication.  It was within the purview of each Member to determine in accordance with its own 
national law whether or not a term was a geogra phical indication in accordance with Article 22.1. 
65. In regard to paragraph 2.1(b), it was not cl ear to her delegation the basis on which the 
European Communities had proposed the requirement that the geographical indication be protected in 
its territory and had not fallen into disuse.  For her delegation, it was optional for Members to grant 
protection or not to geographic indications of ot her Members which did not meet this criteria. 
66. The representative of Chile
, supported by the representative of the United States , said that 
paragraph 2.1(b) of the EC proposal seemed to impl y that one Member might be entitled to notify any 
geographical indication which was protected in its territory even if it was a foreign geographical 
indication.  The same comment applied to paragra ph A.1 of Hong Kong, China proposal.  By contrast, 
the joint proposal clearly proposed in its paragraph 3.1 that a participating Member "may notify to the 
WTO any geographical indication that identifies a wi ne or a spirit in that Member's territory". 
67. The representative of the United States  said that one of the key principles that had been 
mentioned earlier in looking at the information that  would be contained in any notification was to 
ensure that all the various systems for the protection of GIs would equally be ta ken into consideration, 
for example those under common law, unfair competiti on law, trademark law, including certification 
and collective marks, and separate GI registration la w.  In that light, paragraph 3.1 of the joint 
proposal required that the notification contain:  the identification of the notifying Member;  the 
geographical indication as it appeared on the wine or  spirit good in that Member;  the identification of 
the territory, region or locality of the notifying Me mber from which the wine or spirit was identified 
as originating;  potentially a translation, if appli cable, for information purposes only;  and whether the 
indication was for a wine or spirit. 
68. Turning to the EC proposal, his delegation no ted with some concern certain mandatory 
elements of the notification, such as the requireme nt to provide a translation of the geographical 
indication itself into one of the official languages of the WTO when the language in which the GI was 
protected in its country of origin was not one of the WTO official languages.  This requirement did 
not appear to be consistent with the basic prin ciple that it was the country where protection was 
sought that would have the discretion to determ ine the scope of protection of a geographical 
indication in translation.  In existing intellectual property systems, decisions concerning the protection 
of translations were generally made by the receiv ing countries' courts, which would take into account 
the reaction of their consumers.  Yet, in the EC  proposal, the scope of the geographical indication 
rights, including those concerning translations, seeme d to be determined solely by the notifying 
Member.  He asked the EC delegation to explain why it had changed such a basic principle of the 
current intellectual property systems and how this w ould be consistent with the current obligations 
under the TRIPS Agreement. 
69. Another issue that had been highlighted by document TN/IP/W/12 was that both EC and 
Hong Kong, China proposals required reference to the legal instrument by which the geographical 
indication was protected in the notifying Member or potentially a certification under seal from the 
government of the notifying Member.  Fulfilling any of these types of requirements would be difficult 
and potentially impossible for Members that protect geographical indications through, for example, an 
unfair competition system or another system where rights were acquired through use.  These Members could therefore find it difficult or impossible to obtain protection for their geographical indications under either the EC or the Hong Kong systems.  These requirements would therefore discriminate 
against WTO Members' nationals whose governments had not provided a system similar to an EC TN/IP/M/14 
Page 14  
 
style system protecting geographical indications which would include a government-issued certification. 
70. The representative of New Zealand
 recalled her intervention made earlier about the need for a 
holistic approach.  In that light, the desirability of a minimal or a detailed notification procedure did in 
great part depend on the legal effects or conseq uences of the registration.  The joint proposal 
envisaged a very simple notification process whereb y each participating Member would be able to 
notify any geographical indication if so wished.  The joint proposal group had in the past drawn on a number of principles which should guide the cons ideration of what would be an appropriate 
notification process.  First of all, it would have to be flexible enough to  deal with geographical 
indications from all WTO Members, however  they were protected, whether through sui generis  
legislation, through collective trademarks or through consumer protection legislation.  Secondly, they 
would have to be cost effective and not be un duly bureaucratic.  Thirdly, the system must be 
transparent and simple.  Although that had not been  expressly spelt out in their proposal, the joint 
proposal group tended to support that notificati ons to the WTO Secretariat use existing WTO 
mechanisms, such as the Central Registry of Notifi cations (CRN).  That would provide a familiar, 
simple and transparent approach.  By contrast, others had been advocating a more complicated model 
such as the Lisbon Agreement.  With regard to the content of the notification, the joint proposal 
adopted a simple approach and stuck to the mandato ry notification of the essential information needed 
to identify the geographical indication. 
71. With regard to the EC proposal, she said that her delegation shared the concerns expressed by 
Argentina and the United States about certain mandatory  elements of the notification in paragraph 2.2, 
such as translation, notably in terms of the impact  it might have on Members' rights under Article 1.1 
of the TRIPS Agreement. 
72. Turning to paragraph A.2(a) of the Hong Kong, China proposal, she asked what "details of the 
geographical indication" had been envisaged, and whet her that would be entirely discretionary.  With 
regard to paragraph A.2(b) of Hong Kong, Chin a proposal, she asked who would be notified as the 
owner of the geographical indication, given the collective nature of this category of right. 
73. The representative of European Communities
 said that certain provisions submitted by his 
delegation under "notification" were  copied from the draft text that  had been presented by the former 
Chair in 2003 in document JOB(03)/75.  It was in that framework that the idea of an "administering 
body" had been first presented, the reason being th at some delegations, including his, had showed 
willingness to consider whether organizations other than the WTO Secretariat, such as WIPO, with 
experience in this area, could take care of the mana gement of the system.  Paragraph 2.1 of the EC 
proposal accordingly reflected this particular idea.  He noted that footnote 2 of the Hong Kong, China 
proposal suggested that "consideration may be given to whether other suitable international 
organizations should be charged w ith the responsibility of operating the system".  He expressed his 
delegation's willingness to consider, beside the WTO Secretariat, WIPO as one possible body to 
administer the system. 
74. In regard to paragraph A.3 of the Hong K ong, China proposal, whereby the administering 
body might limit the number of applications to be processed each year, he reiterated his delegation's 
willingness to explore that avenue if the issue of the number of notifications continued to be of 
concern to other Members.  His delegation was mostly  interested in having an efficient register and 
not making it collapse by an excess of notifications. 
75. The EC delegation would also be ready to c onsider the possibility of having notifications 
made directly by producers, as had been floated at previous meetings. TN/IP/M/14 
Page 15 
 
 
76. On Argentina's point as to who under paragra ph 2.1(a) of the EC proposal would determine 
whether a given indication met the definition of Artic le 22.1 of the TRIPS Agreement, he agreed that 
it was the national law of Members that would appl y, and that the EC draft paragraph would be 
modified accordingly to  dispel any concerns. 
77. With regard to the questions raised by Argen tina and Chile on paragraph 2.1(b) of the EC 
proposal, he said that this draft provision was the be st attempt to transpose Article 24.9 of the TRIPS 
Agreement without, however, including the words "country of origin".  The omission of those words did not imply any attempt by the European Communities to notify geographical indications of other countries.  On the contrary, it simply reflected th e fact that there were systems of geographical 
indication protection which were being managed by a regional entity, like the European Union, as 
opposed to individual countries such as Spain, France and Italy.  The term "country" would not fit the 
EU system.  He was confident that there would be a way to accommodate both the concerns expressed and the specific problem of his delegation with the term "country". 
78. With regard to the question of translation in paragraph 2.2(b) as one of the mandatory 
elements of the notification, he said that there was no hidden attempt to cover any interest.  The draft 
provision took up an idea put forward in the former Ch air's draft text of 2003 which was to avoid that 
the Secretariat had to undertake the translation from all the languages used  by WTO Members that 
were not the WTO official languages.  In a way, those having as an official language one of the WTO 
languages would have an unfair advantage.  His de legation would be ready to address the concerns 
expressed. 
79. His delegation agreed with the comment made by  the United States on translations of notified 
geographical indications.  Clearly, nothing in paragra ph 2.2(b) of the EC proposal should be read or 
interpreted as binding in any way domestic author ities in determining what would be the proper 
translation of a notified term.  If the language used in that proposed provision, which was the one used 
in the former Chair's paper of 2003, was consid ered by other delegations as ambiguous, his delegation 
would be ready to explore any alternative language. 
80. On the standard form to be adopted, he said that it seemed a bit excessive to provide, as in 
paragraph 3.4 of the joint proposal, that any chang es or adjustments to the form would have to be 
approved by the TRIPS Council.  It would seem to hi s delegation that a more flexible approach could 
be taken on that particular issue. 
81. The representative of Australia
 said, after having heard the European Communities' 
clarifications, that her delegati on's understanding was that a Member would not be required to protect 
terms in translation notified by other Members that it did not consider were the true translations of 
these terms in its territory.  She asked clarification regarding the role of a Member in continuing, in 
accordance with the principle of te rritoriality, to determine for itself whether a geographical indication 
fitted within the Article 22 definition and was theref ore eligible for protection in its territory.  Her 
understanding from the response given by the European Communities on a comment made by 
Argentina was that Members would continue to ha ve the right to determine whether a term was a 
geographical indication with respect to their own terr itories.  In this regard, the EC response appeared 
to relate only to notifications Members would make  of their own geographical terms.  However, as 
indicated by paragraph 3.2 of the EC proposal, the right of Members to make their determinations 
regarding the geographical indications of other Me mbers would actually be severely limited by the 
requirement for lodging reservations within 18 mont hs and for entering into negotiations.  By not 
lodging such reservation within that prescribed ti me a Member would actually, under paragraph 5(a) 
of the EC proposal, lose its right to refuse protection on the ground that the geographical indication did not meet the definition in Article 22 of  the TRIPS Agreement in its own territory. 
82. The representative of Costa Rica
 said that for the joint proposal group the notification should 
be sufficiently simple to avoid unnecessary costs or burdens. TN/IP/M/14 
Page 16  
 
83. His delegation shared the views expressed by Ar gentina and Chile regard ing paragraph 2.1(b) 
of the EC proposal on protection in the country of origin.  Contrary to the explanation given by the EC delegation regarding the regiona l character of the EU, he said that there was no confusion possible 
under the joint proposal because the origin of geog raphical indications for wines and spirits would be 
but that of the geographical indications originating in the territory of the "Members".  The European 
Communities being equally a "Member" of the WTO, he failed to understand the justification given 
by that delegation.  In that regard, he was of the view that the wording in the joint proposal was more 
appropriate. 
84. Finally, he said that there must be a specific indication that the system would relate to 
geographical indications for wines and spirits only.  This specific reference had been made both in the 
Hong Kong, China proposal and the joint proposal, but not in the EC one. 
85. The representative of Chinese Taipei
 asked the EC delegation whether Members would retain 
the right to review the notification of a geographi cal indication in accordance with the principle of 
territoriality or whether the European Communitie s was proposing that anot her body take over that 
right.  For example, under paragraph 2.1(b) of the EC proposal, who would decide that a geographical 
indication had not fallen into disuse in the notifying Member’s territory? 
86. He further asked clarification regarding the term s "suggested translations" in paragraph 2.3(a), 
which his delegation understood as a voluntary provisi on:  would such translations have the same 
effect as the translations under paragra ph 2.2(b), which was a mandatory provision? 
87. The representative of Argentina  recalled that the Chair's draft text mentioned by the EC, 
JOB(03)/75, was a paper submitted in 2003 by th e former Chair under his own responsibility and 
without prejudice to the positions of Members, and that it had never been agreed by the joint proposal 
group as a basis for negotiation. 
88. She said that, unlike the joint proposal, which had clearly proposed the WTO Secretariat as 
the administering body, paragraph 2.1 of the EC  proposal mentioned between square brackets the 
"body administering the system".  It would have helped delegations better understand the EC proposal 
if the administering body were clearly identified.  
89. She said that the clarification given by the EC  delegation regarding pa ragraph 2.1(b) of the 
EC proposal was not satisfactory and that Chinese Taip ei had posed a pertinent question in light of the 
fact that under the EC proposal all the requireme nts for notification and registration would have 
effects on national courts.  The proposed paragrap h 2.1(b) would actually be a limitation to the 
flexibility Members enjoyed under Article 24.9 of the TRIPS Agreement to continue to protect or not 
geographical indications that were no longer protected  or had fallen into disuse in the countries of 
origin. 
90. With regard to paragraph 2.2(c) of the EC  proposal regarding legal instruments, her 
delegation reiterated its concerns.  The proposal made was not acceptable because it included not only 
national legislation but also bilateral, regional or other multilateral agreements.  As to the second part 
of that paragraph dealing with legal instruments al ready notified to the TRIPS Council, she said that it 
was not necessary to include notifications that had already been made by Members in the context of 
the notification of national laws. 
91. She said that the joint proposal foresaw, in its  paragraph 3.3(a), the optional possibility of 
providing information concerning the date of protec tion or expiry of protection whereas under the EC 
proposal that would be mandatory. 
92. She asked the EC delegation clarifications c oncerning the sub-title "substantive conditions" 
and the consequences if the requirements were not fulfilled. TN/IP/M/14 
Page 17 
 
 
93. Turning to the optional elements in the notifi cation phase of the EC proposal, she asked what 
would be the scope of translati ons under paragraph 2.3(a) of th at proposal, and for whom these 
translations would be intended. 
94. With regard to format, she recalled a prev ious comment she had made regarding the 
"committee responsible for managing the system".  What was being proposed by the European 
Communities seemed to be a strong administrative structure, if not some sort of supranational body.  
Who would be the members of this committee?  Ap parently, this committee would not be the TRIPS 
Council, otherwise it would have been mentioned. 
95. Lastly, with regard to the paragraph 2.6 of the EC proposal, she said that the procedure of 
circulation or publication of the notification prior to  registration was relevant only to the registration 
model to which the European Communities aspired.   This provision was important because it would 
unleash the entire procedure of "reservations", which w as related to the issue of legal effects claimed 
by the European Communities.  By contrast, the joint proposal required that publication should be done only once and after registration. 
96. The representative of Hong Kong, China
 said that his delegation did not have any rigid idea in 
mind regarding the issue of name and contact detail s of the owner of the geographical indication in 
paragraph A.2(b) of its proposal.  Basically, ther e should be flexibility regarding these elements to 
take account of the different systems used by Memb ers to protect geographical indications.  The name 
identified could be for example that of a commune or of a regional body.  The details of the geographical indication to be notified as indicated  in paragraph A.2(a) had been placed between 
brackets, and were illustrative in nature.  Basica lly, the onus would be on the notifying Member to 
provide as much information as possible for inform ation purposes because at the end of the day the 
registration would serve to provide information, for example if that particular geographical indication 
was the subject of a judicial proceeding or a disp ute in some other domestic legal proceeding.  It 
would therefore be in the interest of the notifying  Member to include as much information as possible. 
97. The representative of Canada
 said the European Communiti es was proposing a system that 
would require all Members to review each and ev ery wine and spirit geographical indication that 
would be notified.  All Members, including develope d and developing countries, whether or not they 
participate in the registry, would be required to establish expertise and capacities to examine the geographical indications and to file  objections if they wanted to retain their reservation rights.  His 
delegation's concerns about the EC proposal were actually based on Canada's experience with the 
European Communities under a bilateral wine and spirit agreement.  During its wine and spirit 
negotiation with the European Communities, Canada had had to review approxi mately 10,000 names.  
This had been a significant drain of resources, espec ially when only some 1,500 of those names were 
ultimately retained.  If this were to be applied in  the context of the WTO, where countries would be 
required to go through a similar exercise but under tight time constraints, the resource and cost 
implications would be unimaginable. 
98. His delegation had concerns rega rding paragraph 2.3 of the EC proposal on additional or other 
information that the notifying Member might consid er useful.  In some instances the amount of 
information that a notifying Member would consider  useful could increase significantly the burden of 
the WTO Member reviewing information.  Furtherm ore, his delegation failed to see the relevance of 
providing additional information relating to the b ilateral, regional and mu ltilateral agreements under 
which a geographical indication was protected sinc e such agreements only bound the parties.  For 
example, if the European Communities and Canada  had agreed to protect "Champagne", third 
countries had no obligation to take this  type of information into account. 
99. The representative of the European Communities
 said that the EC proposal was fully 
respectful of the principle of territoriality.  Th is was clear from paragraph 2.1(a) and from the 
paragraphs dealing with reservati ons.  He confirmed the understandi ng that under the principle of TN/IP/M/14 
Page 18  
 
territoriality it would be up to each WTO Member to decide whether certain names met the definition 
or not as far as its territory was concerned.  Para graph 2.1(a), whic h provided that each participating 
Member was entitled to notify a geographical indicat ion which met the requirements of Article 22.1, 
implied that it would only be with respect to its ow n territory.  However, if it would help meet those 
concerns that had been expressed, his delegation coul d think of adding at the end of paragraph 2.1(a) 
the words "in its own territory". 
100. His delegation would be also ready to consider adding at the end of paragraph 3.2(a), which 
dealt with reservations, the words "in its own territory". 
101. Turning to Chinese Taipei's question, he said that WTO Members would preserve the 
competence to examine the different applications and neither the WTO Secretariat nor any 
administering body or committee would substitute that  national prerogative.  It would be up to the 
national authorities to decide whether a geographical indication would be protected in their territory 
or not. 
102. As regards the point raised by Costa Rica, he said that his delegation was ready to explore 
ways and means to ensure that it would not be possible for a Member to notify the geographical 
indication of another Member. 
103. With regard to the issue of "legal instrume nt", he said that it would not necessarily be a 
question of repeating what had been notified by WTO Members in the TRIPS review or under 
Article 24.2 of the TRIPS Agreement but more a question of identifying under which precise 
instrument a particular geographical indication ha d been notified.  The use of the terms "legal 
instrument" had the advantage of flexibility and c ould encompass laws, regulations, courts decisions, 
regional agreements like the Bangui Agreement or Decision 486 of the Andean Community.  
However, his delegation was open to any other alternative term that c ould cover all the different ways  
of protecting geographical indications. 
104. As regards the value of "translations" raised by Chinese Taipei in relation to paragraphs 2.2(b) 
and 2.3(a), he said that they would not have legal va lue.  The name to be protected was the name in 
the language of the country of origin, and the fina l decision regarding what the translation was in a 
third country would depend on the authorities of that  third country.  Suggested translations under 
paragraph 2.3(a) were a way of trying to help  au thorities know what they had to protect.  They would 
be free to accept it or not.  The same applied to pa ragraph 2.2(b), which was aimed at helping the 
Secretariat understand what name was being notified. 
105. Finally, he said that the comments made by Ca nada on the number of geographical indications 
it had to review in bilateral nego tiations with the EU were irreleva nt to the Special Session.  He 
recalled the point he had made earlier in relation to the proposal put forward by Hong Kong, China 
regarding limiting the number of notifications per year. 
106. The representative of Canada
 said that the experience of Canada with the number of 
notifications might be helpful to the Special Session .  On the value of translations, he asked whether 
"Parmesan", the English translation of "Parmigiano" , in "Parmigiano Reggiano", would be a name to 
be protected. 
107. The representative of the European Communities  said he would not speculate on a decision 
that would be of the sole competence of the Cana dian authorities in the specific case of Parmigiano 
Reggiano in Canada.  As far as the European Co mmunities was concerned, it was up to the competent 
bodies of the EU to decide so. TN/IP/M/14 
Page 19 
 
 
108. The representative of Argentina  said that, if translations under paragraph 2.3(a) of the EC 
proposal had no value, she then failed to understand why the European Communities had proposed it.  
In particular, what would happen if there was a discrepancy between the ge ographical indication and 
the translated term?  It seemed that reservations  could be made only in relation to the notified 
geographical indication. 
109. The representative of the European Communities  said that many products bearing certain 
protected geographical indications were being traded  openly in many third countries.  He gave the 
example of "Cognac", which might be sold in certa in countries with a different spelling, such as 
"Coñac"  in Latin American countries.  The idea of  providing further information was meant to help 
third countries identify the product and because sometimes the geographical indication did not appear 
in the original language for reasons beyond the control of the right holder, such as labelling 
requirements.  He reiterated that the decision as to  translations of a notified geographical indication 
remained the sole competence of the authorities of  the country where protection was being sought and 
not of the notifying Member. 
 - Registration 
110. The representative of Australia  said that the process of reservations in paragraph 3.1 to 3.5 of 
the EC proposal raised a number of questions:  th e burden this registry would place on Members;  the 
limitations this register would place on Member s’ existing rights under the TRIPS Agreement, 
including in relation to exceptions;  the implications  for IP laws;  and, importantly, the workability of 
the register.  Overall, the EC proposal appeared to  require Members to pursue reservations regarding, 
and negotiations on, what had traditionally been priv ate rights to be determined and enforced at the 
national level in each Members' individual territory .  This would go against the well established norm, 
expressly recognized in the preamble of the TRIPS Agreement, that intellectual property rights were 
private rights.  Geographical indications, like trademarks, were commercial rights, so Members needed to provide a legal framework in which th ese rights could be sought, contested and defended.  
However, Members should not be required to lodge r eservations and enter into negotiations on behalf 
of every private interest in its territory that could be affected by the registration of foreign 
geographical indications, which would be burdensome for Memb ers, whether developing or 
developed. 
111. He further said that the EC proposal limited th e existing rights of Members under Articles 22 
and 24.6 of the TRIPS Agreement.  Currently, a Me mber was required to protect in its territory 
geographical indications meeting th e definition of Article 22.1 of th e Agreement, but was not required 
to protect geographical indications of other Members when these terms were generic in its territory.  
However, under the EC proposal Members would have  to lodge reservations in order to avail 
themselves of this right to decline protection on th e ground that the term had become generic.  To 
duly substantiate that ground,  it would be required to enter into co mpulsory bilateral negotiations with 
the notifying Member, if so requested, aimed at resolving the disagreement.  This would prejudice 
existing rights of Members under the TRIPS Agreement,  which would be inappropriate in the context 
of a negotiation to facilitate the existing level of protection for geographical indications for wines and 
spirits.  Who would determine whethe r a term was or was not generic?  How could this be determined 
through negotiations when such a question was market  specific – in other words a territorial matter?  
This language of the provision on registrations, which talked of resolving disagreements, was 
therefore misleading, for it was not necessarily the case that by making a reservation a Member would 
be disagreeing with the notifying Member.  Rather, it could be the case that each Member’s rights 
were legitimate and valid under th e TRIPS Agreement.  For example, a GI could be protectable, but 
due to the genericness exception of the Agreement,  the Member where the term had fallen into 
common usage could decline to protect it.  National c ourts must remain the ultimate arbiters and the 
principle of territoriality must therefore remain  the basis for the recognition and protection of 
geographical indications.  Despite what the Europ ean Communities had said, his delegation continued 
to fail to understand how the proposed EC system would guarantee that fundamental principle.  What TN/IP/M/14 
Page 20  
 
the EC proposal seemed to do was alter the underlyi ng substantive rights and obligations of Members 
under Section 3, Part II of the TRIPS Agreement by  requiring them to negotiate on their ability to 
make use of existing exceptions for each product, whilst characterizing the negotiations as being in 
favour of increased protection by reference to the lin k made to Article 24.1 of the Agreement, a link 
his delegation had always rejected. 
112. He concluded by asking the European Communitie s for some clarifications.  What was the 
purpose of the negotiations?  Why did Members need to lodge reservations and enter into negotiations 
to exercise certain exceptions, such as the one under Article 24.6 of the Agreement, but not others, 
such as those in Articles 24.4 or 24.5 of the Agreemen t?  What would be the effect of a reservation 
not withdrawn at the end of the 18-month period?  He would assume that a Member could decline to 
protect a foreign geographical indication in respect  of which it had lodged a reservation, but would 
like to have this confirmed. 
113. The representative of Switzerland
, commenting on the Hong Kong, China proposal regarding 
the formality examination that the administering body would carry out under paragraph B.1 and 2 of 
TN/IP/W/8, said this was desirable.  Her delegati on understood that the proposed examination would 
be a pure formality which would in no way replace the examination which each Member would carry 
out as to the validity of the geographical indication on its own territory. 
114. As to the reservation possibilities proposed by  the European Communities in paragraphs 3.2 
to 3.4 of TN/IP/W/11, her delegation was of the view that they would call for some substantive 
examination within the 18-month period following no tification.  This seemed to be a good idea 
because it would enable Members who had made these reservations to examine problems related to 
geographical indications in their own territories.  Th e registry would therefore show the status of the 
geographical indications of each Member, which woul d be a useful information for the right holders, 
for the authorities responsible for geographical indi cations and for other producers who would like to 
use these names.  Rather than having every inter ested party carrying out this examination to know 
whether a geographical indication fulfilled the criteria or was generic, Members would have the 
information already on the register.  In that light , the EC proposal would enable Members to facilitate 
protection, in contrast with the joint proposal. 
115. The representative of Argentina  associated her delegation with the points made by Australia 
on the issue of reservations in the EC proposal.  Th e joint proposal co-sponsors did not see the need to 
provide for any procedures for conflicts, includi ng a mechanism to resolve differences, in the 
registration process because these issues should be so lved by national courts.  The use of the words 
"Any Member" in paragraph 3.2 of the EC proposal seemed to indicate a blurring of the 
differentiation made between par ticipating and non-participating Members and that the same legal 
effects would apply to these two supposedly different categories of Members.  The grounds for reservations in paragraph 3.2(a) and (b) of the EC proposal meant that the use of flexibilities given by 
the TRIPS Agreement and of the sovereign power of States Members within their jurisdictions would 
no longer be possible.  This would therefore im ply a renegotiation of rights already acquired by 
Members during the Uruguay Round.  For example, a ccording to paragraph 3.2(a) of the EC proposal, 
one Member would be able to lodge a reservation to what another Member had domestically defined 
as a geographical indication, which would be akin  to a challenge of that Member's domestic 
legislation.  Furthermore, both would be obliged to enter into negotiations.  On the issue of the 
obligation to negotiate, she asked the European Communities whether the use of the phrase "if so 
requested by the notifying country" in paragraph 3.4 meant that such negotiations would only be 
mandatory when they were requested by the notifying  Member and not when they were requested by 
the Member making a reservation.  If this were  the case, then Members lodging reservations would 
not have any capacity to request for negotiations.  She added that this obligation would require, in 
fact, a negotiation on how a Member had applied in  its domestic legislation the definition of 
Article 22.1 of the Agreement.  This issue was important because it was already possible to predict 
which WTO Member would be a massive notifier of geographical indications. What would happen TN/IP/M/14 
Page 21 
 
 
when developing countries presented, for example, r eservations and would have to engage in bilateral 
negotiations?  The examples of recent bilatera l agreements on intellectual property showed 
imbalances in this kind of negotia tions.  In sum, it seemed that this kind of provision was aimed at 
giving more power to those who already had it to determine the course of a negotiation. 
116. The representative of Chile  asked three questions to the European Communities. First, why 
would it be only possible to invoke the exception of  Article 24.6 of the TRIPS Agreement during the 
18-month period while the other exceptions under Ar ticles 24.4 and 24.5 of the Agreement could be 
only invoked at domestic level?  Second, would Members be able to  invoke the Article 24.6 exception 
on generics at the domestic level after the 18-month period, since a geographical indication, as well as 
a trademark, could become a generic after that pe riod?  Third, why would reservations which would 
not be followed by bilateral nego tiations and be simply accompanied by an annotation referring to the 
reservation not also have a similar strong effect  to that given to non-challenged geographical 
indications? 
117. The representative of the United States  said his delegation shared the concerns expressed by 
Australia and Argentina.  As a general remark , he said that the side-by-side presentation in 
TN/IP/W/12 had clearly highlighted one of the main differences between the proposals on the table, 
namely reservations, and  that the joint proposal was fully consistent with the principles his delegation 
had previously outlined.  Expressing support for the comments made by Argentina on reservations, he 
added that the joint proposal co-sponsors saw no need  for a complex system of defining particular 
grounds of reservation and consequential effects of such reser vations.  These consequential effects 
could include intensive bilateral negotiations.  In that light, the EC proposal was somewhat alarming. 
118. He further made specific comments on the EC propo sal for reservations.  First, it appeared to 
give a Member only one chance to object to a geogra phical indication at the international level and on 
limited grounds.  Any other objection would have to be made at the national level by domestic 
producers, trademark owners or others affected that would be taken to the courts by the registered GI 
owner.  It would then be unclear, as had been point ed out by Chile, whether the Member in which the 
geographical indication was being challenged could even entertain such objections at the national 
level.  Certainly, if a Member had not objected to  a geographical indication, it had then waived its 
ability to object to that geographical indication late r and the ability of its domestic producers to object 
in court proceedings later.  The EC proposal's requirement that notified geographical indications 
would receive an evidentiary presumption would make court proceedings complicated and unpredictable.  In such case, the validity of estab lished trademarks, for example, could be suddenly 
called into question and certainly the ability of trad emark owners and other right holders to exercise 
their TRIPS rights would be significantly curtailed. In this light, the presumptions and effects would be similar in the EC and Hong Kong, China proposals.   To illustrate with an example the concerns of 
his delegation on this issue, he said that in th e United States trademark owners were granted an 
evidentiary presumption upon registration from the US Patent and Trademark Office.  This was given 
only after a rigorous examination regarding prior ri ghts and statutory requirements as well as after a 
third party opposition period.  However, the presu mptions that were spelled out under both the 
Hong Kong, China and EC proposals would appear to  grant the same status  to the registered 
geographical indications on the international register , yet with no examination at the national level or 
no examination for national law criteria or any prior ri ghts.  Furthermore, if a Member objected to the 
registration of a geographical indication, that Member  would then be forced into bilateral negotiations 
with the notifying party where significant pressure w ould then be brought to bear for that objecting 
party to work out some kind of deal for this geogr aphical indication.  This would be a government-to-
government negotiation on what were private property rights and, in that way, it could result in less 
legal certainty and less transparen cy than current national systems of protection.  Moreover, such 
negotiations would be resource intensive, with  the European Communities as one of the main 
proponents pressing for protection in the territo ry of Members having made reservations. TN/IP/M/14 
Page 22  
 
119. It was also disturbing to his delegation that the EC delegation had linked its proposal on 
bilateral negotiations with those under Article 24. 1 of the TRIPS Agreement, which would thereby 
identify the aim of the bilateral negotiations to be that of "increasing the protection of the individual 
geographical indications" at issue.  All these pr ocedures would potentially enable one Member to 
mandate protection of a geographical indication in  another Member, or in many other Members, 
curtailing prior valid rights and bypassing Members' national legal regimes. 
120. He concluded by saying that, while the EC pr oposal might provide more protection to EC 
geographical indications, it would appear to do so  at the expense of nati onal trademark and other 
rights systems of Members.  By contrast, the joint proposal continued to focus on, and give deference 
to, domestic systems of participating WTO Member s.  It provided information for those domestic 
systems to make more accurate decisions regardi ng registrations, thereby effectively facilitating the 
protection of geographical indications for wines and spirits and fulfilling the mandate given to 
Members without the need for changing the bala nce of rights and obligations in the TRIPS 
Agreement. 
121. The representative of New Zealand
 said that her delegation shared the concerns expressed by 
Argentina, Australia, Chile and the United States on the issue of reservations.  She recalled the 
features of the joint proposal.  It set up a datab ase which participating Me mbers would consult during 
their own decision-making process in relation to geog raphical indications.  It did not provide for any 
form of reservation as it did not limit the right fo r Members to invoke Article 24 exceptions at any 
time.  By contrast, the EC proposal relied heavily on a reservation system as a means of implementing 
a time-limit on the right to exercise certain fundam ental exceptions.  In doin g so, it upset the balance 
of rights and obligations contained in the TRIPS Agreement by undermining the rights of Members to 
exercise the exceptions contained in Article 24 of  the TRIPS Agreement.  What the EC proposal 
essentially did was to give all Members, participati ng or non-participating, an ultimatum every time a 
geographical indication was notified.  There was nothing in the TRIPS Agreement or the negotiating 
mandate which placed an expiry date on the right s of Members to access these exceptions.  The EC 
proposal would impose a heavy burden on Members:  failure by a participating Member or a 
non-participating Member to lodge reservations w ithin an 18-month time frame would result in 
onerous obligations.  Under the EC proposal the exceptions of Article 24 of the TRIPS Agreement 
would become cumbersome to exercise and therefor e the balance of rights and obligations of the 
Agreement would be heavily tipped in favour of GI rights holders.  She also expressed concerns regarding the administrative costs resulting from su ch a system of reservations.  These would be 
associated with monitoring GI notifications, engaging  in negotiations and, if requested by a notifying 
Member, notifying the existence of any trademar k that contained or consisted of a notified 
geographical indication. 
122. In support of Chile's comment, she first ask ed the European Commun ities the basis on which 
the European Communities distinguished between diffe rent types of Article 24 exceptions when the 
TRIPS Agreement and the negotiati ng mandate appeared to provide no such basis.  Second, after 
noting that the EC proposal provided for bilateral negotiations upon request by the notifying Member, 
she asked clarification as to the precise subject of such negotiations.  Was the European Communities 
proposing that an individual Member’s implementati on of a TRIPS provision, such as Article 24.6, be 
subject to negotiations? What did the European Communities expect would be traded in such 
negotiations?  Would Members be expected to trad e away legal judgements made by their domestic 
courts or authorities for example?  The EC proposal stated that the EC register proposal ensured that 
the bulk of the costs generated by the system would be covered by those WTO Members that had notified geographical indications into the system.  In relation to costs, how had the European 
Communities intended to cover the costs incurred in lodging reservations as well as those incurred in 
bilateral negotiations?  Finally, how did the EC proposal enable legitimately interested parties to 
lodge reservations or submissions in respect  of interests in third country markets? TN/IP/M/14 
Page 23 
 
 
123. The representative of Canada  said that his delegation was concerned with the limited 
18-month period to review a notified geographical in dication and to place a reservation, after which a 
Member would lose certain important TRIPS rights.  This constituted, once again, an attempt to renegotiate the text agreed in th e Uruguay Round, an exercise not part of the present negotiations.  
Why was the European Communities proposing discr imination between exceptions for Members to 
place a reservation?  What would the European Co mmunities consider would happen with respect to 
the bilateral negotiations that were proposed?  What would be there to negotiate if decisions were to 
be taken by national authorities under the rule of law?  He could not find any other instance where 
governments were required to negotiate on intellectua l property.  He recalled again the 10,000 names 
that Canada had been proposed under its bilatera l negotiation with the European Communities, some 
of which were not geographical indi cations or were not protected in their own country of origin and 
others were not even related to wines and spirits.  If Canada were to regulate this matter under the EC 
proposal, it would have had to place approximately 8,500 reservations and be faced with some 8,500 
negotiations.  Needless to say Canada was deeply  concerned about the administrative burdens and 
other similar issues. 
124. The representative of the European Communities
 said, in response to Australia's question of 
who would define or decide as to whether certain names were geographical indications or generic, 
that this was obviously related to the principles of te rritoriality and sovereignty:   in Australia, it would 
be the Australian authorities and courts which would decide upon those questions. 
125. With regard to bilateral negotiations, he said that  this issue was not a new one.  It was already 
stated in Article 24.1 of the TRIPS Agreement that  "Members agree to enter into negotiations aimed 
at increasing the protection of individual geogra phical indications under Article 23".  This sentence 
clearly meant that if one Member made such a request the other had to accept to engage in 
negotiations. When a Member filed a reservation re garding a notified geographical indication, this 
meant that, in principle, that geographical indicati on was not protected in that Member, but that could 
be the subject of a negotiation aimed at increasing th e protection, as agreed today in Article 24.1 of 
the Agreement.  If, however, the wording used in the EC proposal on this matter seemed to be too 
harsh, his delegation could certainly replace it by an other wording, such as:  "Members may invoke at 
any time Article 24.1 of the TRIPS Agreement".  The idea of this provision was to remind Members that they had a choice to always invoke that provi sion and trigger bilateral negotiations.  The reason 
why the European Communities had pr oposed that the negotiations be triggered by the request of the 
notifying Member was because that Member was th e one who had an interest in negotiating more 
protection since it was facing reservations from othe r Members.  This did not mean that other non-
notifying Members could not also invoke Article 24.1 of the TRIPS Agreement, since this was something that stemmed directly from the Agreem ent and had nothing to do with the register.  
Article 24.1 could be invoked at any time. 
126. As to the questions raised on what were the r easons for providing for a reservation system, he 
said that this stemmed from the fact that his delegation proposed a system with certain legal effects 
and presumptions, similar to those attached to a trademark registration after its examination.  Therefore, his delegation believed that Members should be provided an opportunity to examine 
whether the notified geographical indi cations were protected in their territory or not within a period of 
18 months.  To the best of his knowledge this was one of the longest periods of examination provided 
by similar international systems of registration.  He further noted that providing for reservations in 
international registration systems was not somethi ng new and the Madrid Protocol system, to which 
most of the countries that were taking the floor at this meeting were members, had a system of 
reservations or oppositions. 
127. As to the question of what would happen if a c ountry made a reservation, he said that there 
would be no protection for that individual geograp hical indication in the territory of the country 
placing the reservation and that this could last forever, for example if the notifying country did not ask 
for bilateral negotiations, or if such nego tiations did not lead to an agreement. TN/IP/M/14 
Page 24  
 
128. To the point made regarding third country market s, he said that the principle of territoriality 
would apply, meaning that it was up to each WTO Memb er to decide whether to protect or not in its 
territory a certain geographical indication, and the system of reservations clearly expressed and illustrated this very idea.  This, however, was not a ne w idea:  if a Member or a party in that Member 
today hired lawyers to seek advice as to the registra bility of its geographical indication in every other 
WTO Member, the lawyers' responses would probably  be that that Member or party would gain 
protection in some individual countries but not in others.  That was the way the principle of territoriality always worked. 
129. In response to a question about the subject matte r of the bilateral negotiations, he said this 
would be up to the parties to the negotiations to d ecide.  Those Members that had concluded bilateral 
agreements with the European Comm unities in the area of wines and spirits might be able to offer 
some insights. 
130. On the question of why the EC proposal ha d not proposed a reservation system for all 
exceptions, he said that his delegation would be read y to discuss this idea and that the reasons for not 
including all exceptions were manifold.  First, not  all exceptions were "optional" like the ones in 
paragraphs 4 and 6 of Article 24 of the TRI PS Agreement.  These provisions did not carry a 
compulsory implementation requirement.  Indeed, so me Members that had made interventions in the 
present meeting had given up, in the context of bila teral negotiations, their rights to declare under the 
TRIPS Agreement certain geographical indications of Europe as generic in their territory.  The idea of 
not providing for the possibility of reservations with  respect to, for example, paragraphs 4 and 5 of 
Article 24 of the Agreement was a sign of flexibilit y on the part of the European Communities.  If a 
Member had failed or "forgotten" to place a reser vation because it had thought the term was generic 
and was thereafter afraid that its local producers w ould lose the right to use a geographical indication, 
it would still be able to use paragraphs 4 and 5 of Article 24 of the Agreement to deal with all those 
cases and avoid having problems with its local i ndustry.  For example, a producer from a Member 
could at any time invoke that he was using a term  in good faith before 1994;  this Member would 
therefore be able to continue its local production of  a certain wine or spirit which had been using a 
geographical indication.  This feature of the EC proposal was not meant to be a discriminatory measure, quite the contrary.  If Members would f eel more comfortable including paragraphs 4 and 5 
of Article 24 of the Agreement among the cases of reservation, his delegation would be open to discuss this possibility, which would actually be a better alternative for the European Communities. 
131. Responding to a point made about annotations in paragraph 3.5(b) of the EC proposal, he said 
that an annotation meant that there would be no lega l effects from the registration with respect to the 
territories of the Members having made a reservation and not withdrawn it.  If Chile's point was to ask, for example, whether it meant that the Secretaria t would have to issue a certificate saying that the 
geographical indication was the object of an internati onal registration and that x, y and z countries had 
placed reservation, he could agree with this possib ility.  If Chile was actually suggesting, for example, 
that these reservations should exte nd to third countries, he said that that would obviously run against 
the principle of territoriality. 
132. The representative of Argentina
 expressed surprise at the expl anation given by the European 
Communities regarding the non-inclusion of some provisions of the TRIPS Agreement as possible 
basis for reservations, particularly the argument th at these provisions were "optional".  She reminded 
Members that the real issue discussed on this point  was the very existence of exceptions, in other 
words, the margins of flexibility that were negotiated to safeguard rights of interested third parties.  
This was the reason why her delegation wanted to re iterate its concern about this whole procedure of 
reservations, which seemed to be some "engineering project" with the purpose and effect to subtract from national jurisdictions the competences they had in terms of options for implementing the 
existing flexibilities.  Flexibilities in the TRIPS Agreement constituted one of the few gains of 
developing countries.  What was being proposed  by the European Communities was a multilateral TN/IP/M/14 
Page 25 
 
 
system with new rights and obligations.  The Sp ecial Session was not negotiating a harmonization 
treaty on geographical indications.  That was an important point for developing countries. 
133. The representative of Australia  said, in response to the co mment made by the European 
Communities that the commitment to enter into bilateral negotiations was not new because it was 
already agreed in Article 24.1, that, if Memb ers had agreed in the Uruguay Round to increase the 
protection of individual geographical indications th rough a register of geographical indications for 
wines and sprits, then both Artic les 23.4 and 24.1 of the TRIPS Agreement would had been in the 
same article, which was not the case. 
134. As to the EC response to the question regard ing the justification for the difference in 
treatment between the various exceptions, she sai d that it was still unclear how a Member could 
negotiate on whether or not a term  was generic in another market. 
135. As to the subject matter of the negotiations, sh e said that the comment made by the European 
Communities that New Zealand could get some insights from those Members who had concluded bilateral agreements in the area of wines and spir its with the EU was not appropriate because those 
agreements involved subject matter that went be yond the protection of geographical indications for 
wines and spirits. 
136. Finally, on the point that Members would retain the right to determine what was and was not a 
geographical indication in their territories, her de legation failed to understand how the principle of 
territoriality had been upheld in the EC proposal if it provided that Members w ould have to engage in 
negotiations in order to avail themselves of these exceptions. 
137. The representative of Canada
 said that the EC proposed system could impose heavy costs on 
national administrations and asked the EC delegation to address that issue.  He further asked why the 
EC proposal had not included certain exceptions. 
138. The representative of Chile  said that, if the European Communities notified a geographical 
indication and no Member challenged it during the 18-m onth period, there would be a strong effect in 
every WTO Member because all of them would have  to accept that geographical indication.  What 
would happen if the European Communities had notified a geographical indication and Chile had 
made a reservation without engaging in negotia tions?  Would countries be able to invoke the 
exception of Article 24.6 of the TRIPS Agreement af ter the 18-month period in domestic procedures.  
Finally, he asked why the exception on personal na mes of Article 24.8 of the TRIPS Agreement was 
also not a ground for reservations in that proposal? 
139. The representative of the United States  drew Members' attention to two points.  First, the 
comment made by the European Communities that the type of presumption they were proposing was 
similar in effect to the presumptions that would be granted post-examination by the United States 
Patent and Trademark Office in trademark examin ation proceedings only c onfirmed his delegation's 
concern that the EC proposal, through its registra tion and complex reservation system, would indeed 
grant rights that would essentially bypass national systems.  This would potentially have negative 
effects on existing rights holders.  That was also  linked to his delegation's concerns about preserving 
the principle of territoriality. 
140. Secondly, like Australia, his delegation rejected  the European Communities' attempt to make 
a linkage between Articles 23.4 and 24.1 of the Agreement, since these two provisions had two 
distinct objectives.  For example, while Article 24.1 of the Agreement refe rred to "increasing the 
protection", Article 23.4 referre d to "facilitating protection". TN/IP/M/14 
Page 26  
 
141. The representative of the European Communities
 said that he wanted to make sure that all 
Members understood that his delegation was not tr ying to remove or annul the exceptions under 
Article 24 of the TRIPS Agreement.  In fact, Ar ticle 24.1 did not allow this.  However, what 
Article 24.1 said was that the  provisions of paragraphs 4 through 8 of  Article 24, which were the core 
of the exceptions to the TRIPS Agreement, "shall not be used by a Member to refuse to conduct 
negotiations or to conclude bilate ral or multilateral agreements".  This certainly meant that what was 
at issue were individual exceptions and the appli cability of these exceptions to individual instances, 
not the elimination of x, y or z provisions from the TRIPS Agreement. 
142. He recognized that Articles 23.4 and 24.1 of the TRIPS Agreement were not in the same 
provision.  Article 23.4 referred to a register that wa s meant to facilitate the protection of geographical 
indications;  such protection was certainly the one  provided for in Articles 22, 23 and 24 of the 
Agreement.  Since Article 24.1 was part of these three provisions, surely there would be a place for that provision within the register to facilitate its application, which was this Special Session's 
mandate.  That was why the EC proposal had included  in its paragraph 3.4 a reference to Article 24.1 
of the Agreement. 
143. As to Chile's question regarding the time lim it for reservations, he said that Members would 
have 1.5 year to examine a GI notification and, if need be, place a reservation.  If a Member did not place such reservation it could no longer claim that particular name to be generic, the reason being the assumption that if a term was being protected it should  not turn generic.  The EC paper proposed that 
such effect should only apply to Article 24.6 of the Agreement in order to address concerns raised by 
some Members in the past on what would happen if a Member forgot to place a reservation and found 
out subsequently that some of its local producers ha d been using that geographical indication. In such 
a case, Members would still be able to invoke, for example, the grandfathering clause exception of 
Article 24.4 of the Agreement.  On this issue, he  recalled that in the EC first proposal in 1998, 
Article 24.5 of the Agreement had b een among the grounds for reservations. 
144. As to the issue of personal names, he said that the point made by some speakers was a good 
one.  Actually, the reference to paragraphs 4 and 5 of Article 24 of the Agreement was not necessary, 
but was made ex abuntantia .  Clearly, paragraphs 4 and 5 of Article 24 of the Agreement would 
continue to apply, even if this was not spelt out in the EC proposal.  So, for the same reason, 
Article 24.8 of the Agreement continued to apply.   His delegation was, however, open to expressly 
including that into its proposal to  reassure that any person had the right to use his or her name in the 
course of trade even if it conflicted with a geographical indication. 
145. As to the points made on legal effects, he sa id that his delegation perceived the 18-month 
period as an opportunity for Members to examine app lications.  It would also be an opportunity to 
give some legal effects to a geographical indicati on which truly deserved protection.  His delegation 
would be ready to study another timeframe if Memb ers could come up with some concrete evidence 
that 18 months was too short of a period.  That w as, in fact, why the European Communities was also 
offering flexibility when it had proposed at prev ious meetings for the possibility of limiting the 
number of geographical indications to be notified.  It was in his delegation's interest to make sure that 
notified geographical indications only got registered after a proper and in-depth examination.  That 
was also in line with what his delegation was ai ming at, namely to develop a system that would 
produce accurate information which would help Member s' economic operators have  a clear view as to 
whether, for example, to start exporting or inves ting in other countries.  He added that the EC 
proposal did not seek a register with legal effects of a supranational nature;  on the contrary, his 
delegation understood that these le gal effects would not stem directly from the WTO multilateral 
register treaty but would need to be transposed in to national law, unless the constitution of a country 
already provided for the possibility of direct application of international law. TN/IP/M/14 
Page 27 
 
 
146. Finally, on a point raised on annotations, he said that if the European Communities notified a 
certain geographical indication and Chile, for exam ple, placed a reservation, such objection, which 
would be based upon questions such as definition or genericness, would take into account the 
prevailing circumstances in Chile’s territory.  Th erefore, the geographical indication would not be 
valid as regards the Chilean territory.  What the prin ciple of territoriality did not allow was to extend 
Chile's reservation, reached solely  on the basis of particular circ umstances in Chile, to other third 
countries, where the term might not be generic and ther efore be protectable.   The analysis that led to 
each individual reservation, should be market-based .   He said that it might be possible to address 
Chile's concerns by giving some sort of publicity to reservations placed by Members. 
147. The representative of Chile  took issue with the point made by the European Communities that 
if a term was protected then it should not become  generic.  He thought that the purpose of the 
exception in Article 24.6 of the TRIPS Agreemen t was precisely to tackle instances when a 
geographical indication had become generic.  Such  genericness could happen because the  right holder 
of the geographical indication had been neglig ent in protecting it against infringers.  Unlike 
paragraphs 4 and 5 of Article 24, the exception un der paragraph 6 was not limited in time.  The 
importance of this exception would be easier to co mprehend when looking at systems that protect 
geographical indications through trademarks, since in  such systems trademarks could become diluted 
and generic.  Therefore, Members should be able  to invoke the genericness exception in domestic 
procedures after the suggested 18-month period, wh ich was the same as the one in the PCT and 
Madrid systems. 
 - Consequences of registration (proposed "effect of registration"/"participation", 
"procedures to be followed by participatin g Members"/"access for other Members" 
or "legal effects in participating Members"/"legal effects in non-participating Members"/"legal effects in least-developed country Members") 
 
148. The representative of Australia
 recalled that the European Communities had acknowledged in 
one of its previous responses that, if a Member had not lodged a reservation, it would have waived its 
right to claim that a geographical indication was generi c in its territory.  For example, if Australia had 
chosen not to participate in the system and for this reason decided not to  lodge any reservations, 
would it still be able to decline to protect a regi stered geographical indication on the grounds that it 
was generic in its market?  If the answer to this question was negative, then it was clear that the EC 
proposal would not only force Members to particip ate in it but it would also limit the exceptions to 
which all Members were currently entitled to ava il themselves when determining the eligibility for 
protection of geographical indications in their territories. 
149. The representative of Hong Kong, China  said that "consequences of registration" was 
certainly one of the most important elements of the system being negotiated in the Special Session.  While it would be relatively easy for Members to see the differences in terms of consequences 
between the Hong Kong, China proposal and the join t proposal, it might be more difficult to see the 
differences between his delegation's proposal and th e EC one, because both proposals provided for a  
"rebuttable presumption".   Firstly, under the Hong Kong, China proposal, and unlike the EC proposal, only Members participating in the system would be required to give legal effect to a 
registration.  Secondly, under the Hong Kong, China proposal the rebuttable presumption that a registration would entail related to three specific  issues, namely ownership of the geographical 
indication, that the indication satisfied the defi nition under Article 22.1 of the TRIPS Agreement in 
the notifying country, and that it was protected in its country of origin.  There was no time limit attached to these rebuttable presumptions.  On th e other hand, the presumption under the EC proposal 
seemed to extend to other elements, and for those Members who had not lodged a reservation within 
the 18-month period, presumptions relating to paragr aphs 1 and 4 of Article  22 and paragraph 6 of 
Article 24 of the TRIPS Agreement would become i rrebuttable.  His delegation believed that issues 
like genericness under Article 24.6 of the Agreement should be decided by domestic courts of each 
Member according to their domestic legislation, ta king into account local circumstances.  In contrast, TN/IP/M/14 
Page 28  
 
under the EC proposal a registration would create an  irrebuttable presumption with regard to the 
exception under Article 24.6 if, for example, a Me mber had not lodged a reservation within the 18-
month period.  Finally, he noted that paragraphs 3.3, 4(c) and 5(b) of the EC proposal provided a 
procedural requirement, whereby a WTO Member  would have to notify conflicting trademark 
registrations and applications at the request of the notifying Member;  this would enable GI owners to 
extend the scope of their rights in different jurisdic tions in view of existing trademark rights and to 
take action to protect their rights.  His delegation believed that on this particular issue it would be 
more reasonable to provide that the burden should be on the GI owners themselves to search for 
conflicting trademark registrations and applications in the market they wished to enter.  This was the 
case for existing trademark owners in places like Hong Kong, China, where geographical indications 
were protected as trademarks. 
150. The representative of Argentina
 said that the Hong Kong, China proposal to shift the burden 
of proof would substantially alter the balance of rights and obligations under the TRIPS Agreement.  
In fact, it was only in Article 34 of the Agreemen t that the reversal of the burden of proof was 
expressly provided for process patents.  The exis tence of these presumptions seemed to be in 
contradiction with the recognition in paragraph 4( a) of Section D of the Hong Kong, China proposal 
that the exceptions under Articles 22 to 24 of the TR IPS Agreement continued to be fully applicable 
by domestic courts. 
151. With regard to the EC proposal, she said that  the substantive legal effects it applied to 
participating Members were not foreseen in the current standards of the TRIPS Agreement.  The 
requirement set out in paragraph 4(c) of the EC pr oposal for both participating and non-participating 
Members to notify all trademark registrations a nd applications containi ng or consisting of a 
geographical indication, if so required by the notif ying participating Member, would be an additional 
burden to all Members.  Her de legation failed to understand the ra tionale of such a requirement. 
152. She recalled that under the EC proposal there would be effects on non- participating Members 
which had not lodged a reservation. 
153. As to paragraph 6 of the EC proposal regardi ng LDCs, she said that the joint proposal did not 
have any similar provision precisely because, unlike the EC proposal, it would result in minimum costs to the participating Members.  In fact, the EC provision seemed superfluous in light of the 
transitional period LDCs were currently enjoying  under Article 66.1 of the TRIPS Agreement.  
Hence, she wondered what would happen when these LDCs  started to apply this system at the expiry 
of their transitional period?  Would they have to protect all the pre-existing registered geographical 
indications?  Or would there be a special system for LDCs to lodge reservations even before the 
expiration of their transitional periods?  If that were the case, would that mean that during the 
transitional period LDCs would be able to pl ace reservations but not to notify geographical 
indications? 
154. The representative of the United States
 recalled that the joint proposal only required that each 
Member participating in the system commit to ensu ring that its domestic procedures would include a 
provision to consult the database when making deci sions in accordance with its domestic law.  In 
contrast with the other two proposals, this w ould ensure the facilitation of the protection of 
geographical indications in a manner consistent w ith the mandate of this Special Session and would 
not prejudice rights and obligations under the TRIPS Agreement. 
155. His delegation had serious concerns with the presumptions foreshadowed both in the EC and 
Hong Kong, China proposals for a number of reasons.  These presumptions would create a right in 
favour of a foreign right holder of a geographical indication registered under the system and any prior 
use or prior trademark could be significantly curtailed.  Moreover, these two proposals seemed to facilitate a type of "automatic claiming" of a br oad range of terms through out the WTO membership, 
which was problematic because that co uld eliminate the ability of right owners in one market to enter TN/IP/M/14 
Page 29 
 
 
a new market with, for example, their trademark or other rights, and could also inhibit the ability of 
small and medium-sized companies to establish new brands that could otherwise have incorporated 
such terms.  Another general point was the fact that these two proposals would allow for a notifying 
country to use its own country of origin protection as the basis for receiving protection elsewhere, which again would bypass national systems of other countries.  All these features seemed to suggest 
an intention to set up a type of worldwide extraterritorial system of protection.  His delegation failed 
to understand how such a philosophy could be rec onciled with the notion that intellectual property 
rights were territorial and that rights had to be established and asserted under the laws of the country 
where protection was being sought. 
156. The representative of New Zealand
 recalled that under the joint proposal Members that had 
chosen to participate would make a commitmen t to consult the database when making national 
decisions about registering geographical indications  for wines and spirits.  This was indeed a new 
substantive and meaningful obligation that woul d apply to all participating Members without 
prejudicing existing rights and obligations under the TRIPS Agreement.  Under the joint proposal 
there were no legal consequences for non-particip ating Members, who would, however, have free 
access to the database. 
157. In contrast, the EC proposal was putting forward significant substantive obligations both on 
participating and non-participating Members.  For participating Members, the registrations would 
enable GI holders to exercise a presumption of protec tion in the territory of participating Members, a 
presumption which would be irrebuttable as far as  the exceptions under pa ragraphs 4 and 6 of 
Article 24 of the TRIPS Agreement were con cerned.  Under the EC proposal, even for non-
participating Members, the effect was the removal, after a certain time, of their right to use certain 
flexibilities within the existing TRIPS Agreement.  If those were indeed the impacts of the EC 
proposal, then her delegation would perceive such an  erosion of rights as being inappropriate in the 
context of the negotiation on a register of geographi cal indications for wines and spirits.  Similarly, 
the Hong Kong, China proposal envisaged that as a r esult of the performance of a simple formality 
check, registered terms would enjoy the status of pr ima facie evidence before the domestic courts and 
authorities of Members regarding three crucial elem ents, namely the ownership of the geographical 
indication, whether it met the Article 22 definition and whether it was protected in the country of 
origin.  Therefore, her delegation believed that both the EC and Hong Kong, China proposals would 
substantially changed the balance of rights and obligations under the TRIPS Agreement and they 
would, in fact, serve to enhance rather than fac ilitate protection of geographical indications.  Shifting 
the burden of proof away from the right holder, wh ere it traditionally and logically belonged, would 
impose higher costs on those producers seeking to avoid disruption of trade.  This reversal of the 
burden of proof woul d also place geographical indications at a higher level than any other form of 
intellectual property.  Why should geographical in dications benefit from presumption of protection 
when other forms of intellectual property did not? 
158. The representative of Switzerland  said that there was no reason to make a distinction between 
the legal effects of registration in Members who no tify and in those who did not because the system to 
be set up would be a multilateral one with the sole  objective to facilitate the protection that all 
Members, except LDCs, had already to offer, and no t to increase such protection.  If, as far as legal 
effects were concerned, the objective was not to in crease the current protection and to enable all WTO 
Members to continue to have recourse at any tim e to the exceptions under Article 24 of the TRIPS 
Agreement, then this seemed to i ndicate that this Special Session would be fully within its mandate 
and was perhaps going in the direction of finding some solution to the issue of legal effects. 
159. The proposal made by Hong Kong, China to creat e a presumption that would be rebuttable at 
any time with regard to all points seemed to be the approach to follow.  As far as the basis on which 
this presumption would relate, her delegation considered that it shoul d not only relate to definition 
and protection in the country of origin, as was proposed by Hong Kong, China, but also to the generic 
nature of a name or the misleading character of a homonymous name, as was proposed by the TN/IP/M/14 
Page 30  
 
European Communities.  The concept of territoriality would be fully respected for two reasons:  first, 
each Member would have the possibility, in a syst em with reservations, to lodge a reservation;  
second, since the presumption was rebuttable, it woul d be possible to challenge the presumption at 
any time after the registration before the national cour ts.  By contrast, the joint proposal provision that 
the legal effect of a registration would be limite d to an encouragement of Members to consult a 
database would not fulfil the mandate to facilitate protection. 
160. The representative of the European Communities
 agreed with the point made by the 
representative of Argentina that the EC proposal regarding prior trademark searching could be a 
burden.  That was the reason why the EC proposal  foresaw this as an obligation for which right 
holders should pay themselves.  This was recognized in paragraph 9.5 of the proposal, according to 
which the registration of a geographical indication "shall be subject to the advance payment of a 
multilateral fee which shall include:  (i) a basic fee;  and (ii) an individual fee".  Paragraph 9.7 stated 
that such individual fees "shall cover the costs in curred by WTO Members requested to provide", for 
a given application:  (a) the information about  prior trademarks;  and (b) future trademark 
applications.  This was, in fact, not a novelty in terms of international registration systems for many 
offices had already been providing for search reports .  Furthermore, nothing prevented Members from 
delegating this work to specialized private compan ies.  The reason behind this obligation was the idea 
to use it as a mechanism to bring to  the fore information about possible conflicts with trademarks.  It 
was meant to help all interested parties, GI and trad emark right holders, avoid conflicts in the future.  
In other words, it was meant to be a mechanism that would help the functioning of the system as a whole. 
161. As to the questions raised on irrebuttable presumptions, he confirmed that, under the EC 
proposal, if a Member did not place a reservation after 18 months, it would waive its right to declare a 
term generic.  However, this kind of determina tion was not a novelty since it was common practice 
for trademark offices to decide whether or not signs in applications were actually distinctive and, 
therefore, registrable as trademarks.  As far as ge ographical indications were concerned, there were 
Members that were already making this kind of determination.  For example, as a result of bilateral 
negotiations, Canada had engaged in a process whereby around 20 names that were initially 
considered generics on its territory were no longer trea ted as such.  That was the sort of determination 
made in application of the flexibility Members we re enjoying under the TRIPS Agreement to decide 
on the genericness of terms, including on whethe r to protect a term which had formerly been 
considered generic.  While Article 24.6 of the TRIPS Agreement allowed Members not to protect 
geographical indications of other Members they c onsidered as generic, it did not oblige Members to 
do so.  It was just their choice. 
162. After noting that Argentina had made a fair point  regarding the treatment of LDCs in the EC 
proposal, he said that because the proposal allowed LDCs to be participa ting or non-participating 
Members there were no exclusion of the possibility for LDCs to place reservations.  He recalled that 
the LDCs provision of the EC proposal only related to  the issue of legal effects, but if Members still 
wished to address this issue they  should perhaps discuss the establis hment of a transitional mechanism 
whereby LDCs which did not exercise their rights to examine the notified geographical indications 
during the 18-month period would have the opportunity  to do so in a manner that would be not be 
burdensome to their administrations.  The only r eason for the European Co mmunities to provide for 
this exception for LDCs was simply based on the fact  that the mandate given to this Special Session 
said that the protection to be facilitated was the one that applied to wines and spirits, in other words 
Articles 22, 23 and 24 of the TRIPS Agreement, a nd that these provisions currently applied to all 
Members, except LDCs.  The proposal attempted to reflect that situation. 
163. He expressed surprise at the point made by th e United States that the EC proposed register 
would result in the wiping out of the use of certain terms in world trade.  Intellectual property, and 
certainly trademarks and geographical indications, s ought to monopolize the use of certain terms.  The 
delegation of the United States should be aware of th is since the United States were the first holder of TN/IP/M/14 
Page 31 
 
 
trademarks in the world;  the use of many terms had, in a way, been wiped out through trademarks, which certainly covered more terms than those affected by geographical indication systems.  
Intellectual protection was a valid aim and it was leg itimate for GI right holders to seek protection not 
only in their countries, but also in other countries wh ere they wished to operate.  Clearly, and this is 
something the United States had also repeated, all GIs right holders that were trying to gain protection 
in third countries via this register could, if they had the money to do so, start registering certification 
marks in these countries.  As certification marks woul d also give a monopoly right on the use of these 
terms, he was not sure whether the argument of wiping out the use of certain terms should not also 
apply in this case. 
164. He disagreed with the point made that the EC proposal was somehow trying to bypass 
national administrations, particularly because the pr oposed system gave Members' national authorities 
a period of time of 18 months – which was a reasona ble one - to review an application and decide 
whether a geographical indication could be protected in their territories. 
165. As to the point made that the EC proposal  was providing the possibility of seeking global 
protection on the basis of the protection of a geogra phical indication in the country of origin, he said 
that this possibility was based on the TRIPS Agreemen t itself, which introduced the notion of country 
of origin.  In fact, this was not a new feature in intellectual property systems.  For example, trademarks registered in one country enjoyed certain priority rights in others.  It was on the basis of 
the protection in the "country of origin", i.e., the country of first registration, that priority rights could be obtained in other third countries if registrati ons were lodged within a certain period of time. 
166. The representative of the United States
 said that, while his delegation was aware that the 
effects of a registration under the EC proposal would be conditioned on certain actions such as 
reservations, it continued having serious concerns about the proposal.  The type of system being 
envisioned by the European Communities entailed a supranational approach whereby one single action taken at international le vel would have immediate and automatic effects in a global 
membership.  It would trigger global effects regardl ess of any intent of the right holder to actively 
market a term in any particular country, thereby potentially foreclosing markets that otherwise would 
not be foreclosed.  By contrast, the underlying gene ral approach for existing international IPR systems 
was that a person filing an application in variou s countries had an interest in operating in those 
countries 
167. He agreed with the European Communities that GI right holders could file certification marks 
in various countries throughout the world.  Certif ication marks were a good system that should be 
used to protect geographical indications. 
168. On the issue of bypassing national systems, he said that the language used in the EC proposal 
was based on the concept of protection in the c ountry of origin, justifying, on that basis alone, 
protection in third country markets.  By contrast, und er current systems of IP protection, it was in the 
country where protection was sought that the dete rminations should be ma de.  His delegation was 
concerned with these supranational systems that w ould only take into account the protectability of a 
term in the notifying country and, on that basis, tri gger all types of rights globally.  This point actually 
was raising major concerns for his delegation as fa r as the territoriality principle was concerned. 
169. The representative of Argentina
 said that the EC proposal would transfer directly to national 
governments all the country-by-country costs that currently were the responsibility of individual 
producers.  This meant that the majority of countr ies, particularly developing ones, would have to 
assume all the costs of examining the notified geographical indications. 
170. She further said that the reversal of the burden of proof would mean that all those producers,  
especially from countries with greater purchasing powe r, would save in litigation costs, because they 
would be able to litigate in those countries sole ly based on the protection given in their own TN/IP/M/14 
Page 32  
 
territories.  Producers of third countries would be th e ones who would have to go to courts to defend 
their rights.  The EC proposed system would gran t supranational exclusive rights to some producers 
who would have an additional co mpetition advantage over other competitors in third markets. 
171. As to the submission of trademark search re ports mandated in paragraph 9.7 of the EC 
proposal, she said that that paragraph foresaw a co mplicated structure of costs and fees, with two 
kinds of fees, namely a basic fee and an individual f ee.  The individual fee seemed to aim at covering 
the costs incurred by Members who had to produce the reports.  Such a system would be a total 
novelty in multilateral registration systems.  She failed  to understand the rationale of that obligation.  
Was the WTO going to act as some taxing agency r esponsible for the redistribution of the fees to 
developing countries, who would be, in the end, t hose having to pay for such reports?  She did not 
know how many LDCs and developing  countries would be able to take on such costs.  She wondered 
how much it would cost for developing countries to request a search report from the Swiss authorities 
dealing with geographical indications.  While this mi ght cost them thousands of Swiss francs, it would 
be much cheaper for Switzerland to ask Argentina, Jamaica or Brazil for a search report. 
172. Finally, she said that the comparison between paragraph 6 of the joint proposal and 
paragraphs 4 to 6 of the EC proposal clearly s howed that the former had many advantages over the 
latter in that it neither altered the balance of rights and obligations under the TRIPS Agreement nor 
generated burdens, in particular as far as  developing countries were concerned. 
173. The representative of the European Communities
 expressed surprise at the points made by 
Argentina because he had heard for many years that the EC proposal was, among other things, 
burdensome, costly and unclear as to who would pay for the costs.  He pointed out that the Madrid 
Protocol had a system based on a similar appro ach whereby registration fees differed depending on 
the various costs related to registration in each member State. 
174. The Chairman  thanked delegations for all their comm ents and said that the headings from 
page 17 to 23 of TN/IP/W/12 remained to be discussed .  The Special Session would be able to address 
them and revert to those already discussed at its ne xt meeting in October.  He said that the present 
discussion had been quite productive, but as regards the two key issues, participa tion and legal effects, 
there had been no narrowing of views. 
C. OTHER ISSUES  
175. The Chairman  invited Members to share any thoughts on the contribution that the Special 
Session might make to the preparations of the Hong Kong Ministerial Conference. 
176. The representative of the European Communities  said that in his delegation's view the Hong 
Kong Ministerial should give an opportunity to provide useful guidance and direction to these 
negotiations. 
177. The representative of Argentina  said that Members should not have great expectations that 
some single issues, solely based on their own merits , would be able to move  forward independently 
from the context of the whole negotiations.  All Memb ers were aware of the current stagnation of the 
negotiations on important issues such as market access.  Therefore, it would only be Members 
altogether, with an overall vision, who would be in a position to assess what could to be done in Hong Kong. 
178. The representative of Switzerland
 said that, given the discussions in this meeting and the fact 
that the positions were not getting closer, it woul d be important to obtain at the Ministerial 
Conference clear guidelines on the direction of the negotiations that would follow it. TN/IP/M/14 
Page 33 
 
 
179. The representative of the United States  noted that the work the Sp ecial Session was currently 
undertaking was an important one and that the prese nt meeting had been conducted in a constructive 
manner.  Since Members were still digesting the propo sals on the table, he believed that there was still 
a need to continue with such discussions.  He hope d Members would be able to come together with 
some form of constructive approach within the mandate in time for the Ministerial Conference. 
180. The representative of Australia  said that the discussions at this meeting had been useful 
because his delegation had been able to get a be tter understanding of all proposals.  However, as 
Members had not been able to finish making thei r comments on all aspects of the proposals, his 
delegation would like to be able to cont inue the discussions in the next meeting. 
181. The Chairman  agreed that the discussions were fruitful.  He said that the next meeting of the 
Special Session would take place on 27-28 October, and that he would hold consultations prior to that 
meeting. 
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