WORLD TRADE  
ORGANIZATION  WT/GC/W/633 
TN/C/W/61 
21 April 2011  
 
(11-2080) 
General Council Trade Negotiations Committee  
 
  
ISSUES RELATED TO THE EXTENSION OF  THE PROTECTION OF GEOGRAPHICAL 
INDICATIONS PROVIDED FOR IN ARTICLE 23 OF THE TRIPS AGREEMENT TO 
PRODUCTS OTHER THAN WINES AND SPIRITS AND THOSE RELATED TO  
THE RELATIONSHIP BETWEEN TH E TRIPS AGREEMENT AND  
THE CONVENTION ON BIOLOGICAL DIVERSITY 
 
Report by the Director-General
 
  1. Paragraph 39 of the Hong Kong Ministerial Declaration (WT/MIN(05)/DEC) requested "the 
Director-General, without prejudice to the positions of  Members, to intensify his consultative process 
on all outstanding implementation issues under paragr aph 12(b)".  The implementation issues referred 
to are:  (i) those related to the extension of th e protection of geographical indications (GIs) provided 
for in Article 23 of the TRIPS Agreement to products  other than wines and spirits;  and (ii) those 
related to the relationship between the TRIPS Ag reement and the Convention on Biological Diversity 
(CBD).  The Declaration required the Director -General "to report to each regular meeting of the Trade 
Negotiations Committee and the General Council". 
2. A report on this consultative process was made to the General Council and the Trade 
Negotiations Committee in June 2008 (WT/GC/W/ 591-TN/C/W/50);  the present report summarizes 
consultations from the resumption of the process in  March 2009 up to the present date.  This report 
covers the proceedings of the c onsultative process only, and does not address the wider context of 
these issues. 
3. At the request of a large number of delegations, I reactivated the consultation process from 
March 2009, and held consultations in my capac ity as Director-General with a small group of 
delegations representing the various positions.  Th e participating delegations were:  Argentina, 
Australia, Brazil, Canada, Chile, China, the Europ ean Union, India, Japan, New Zealand, Norway, 
Peru, South Africa, Switzerland, the United Stat es, the ACP Group, the African Group and the LDC 
Group.  Eleven rounds of consultations on the subs tance of the issues were convened in this period 
(on 11 March, 8 April, 13 May, 17 July, 8 October,  and 9 December in 2009;  on 5 March 2010;  and 
on 20 January, 4, 17 and 23 February in 2011). 
4. Also in my capacity as Director-General, I have  regularly reported to the Trade Negotiations 
Committee and the General Council on c onsultations held since the resumption of the process.  These 
reports have been supplemented by more detaile d open-ended briefing sessions on 27 July 2009 and 
12 March 2010 for the full WTO membership, with  detailed information from these briefing sessions 
published on the WTO website.
1 
5. Noting that the process is to be undertaken w ithout prejudice to the positions of Members, the 
overall approach has been to address the substanc e of the two issues under consideration, without 
prejudice to the questions of mandate and linkage.  In particular, the consultations have expressly not 
                                                      
1 Report of 27 July 2009:  http://www.wto.org/e nglish/news_e/news09_e/trip_27jul09_e.htm;  and 
Report of 12 March 2010:  http://www.wto.or g/english/news_e/news10_e/trip_12mar10_e.htm. WT/GC/W/633 
TN/C/W/61 Page 2 
 
 
  addressed the broader questions of linkages and the na ture of the Doha mandate.  Accordingly, this 
report does not address these questions.
2 
6. To inform and structure this work, the me thodology used comprised the following processes: 
(a) a structured discussion on a series of questi ons that I posed to clarify the essential 
features of the two issues; 
(b) exchanges on substantive issues on the b asis of clusters of questions posed by 
participating delegations;  and 
(c) input from participating dele gations on experiences and re levant measures in their 
domestic laws, and discussion of these measures. 
7. In line with this methodology, discussions centred  on the technical issues in the two areas and 
on relevant domestic measures, so as to deepen unde rstanding of the technical issues, and the interests 
and concerns that lie behind de legations' various positions.  The discussions did not consider any 
proposals for conclusions or outcomes concerning these issues. 
8. Since the last round of consultations, two gro ups of Members have very recently submitted to 
the TNC documents concerning these issues  (TN/C/W/59 and TN/C/W/60 – both dated 
19 April 2011).  This specific material has not been discussed in the consultative process and is 
accordingly not addressed in this report. 
_______________ 
 
 
A. EXTENSION OF GI PROTECTION  
1. Discussions 
9. On extension of GI protection, the first issue mentioned in my mandate, the structured 
discussions covered: 
- Factors for and against expanding the protection of Article 23 of the TRIPS 
Agreement to goods other than wines and sp irits, including the comparative merits of 
the "misleading-the-consumer" and unfair co mpetition tests under Article 22, and the 
Article 23 "correctness" test. 
 
- How the costs and burdens of GI protecti on and its enforcement should be managed, 
so as to balance legal certainty and predictability (which proponents claim for 
Article 23 protection), and case-by-case app lication of the consumer deception and 
unfair competition rule under Article 22. 
 
- The rationale for the current higher level pr otection for wines and spirits - contrasting 
a claim for a non-discriminatory, level playing field for all products and sectors, 
against the view that the current arrangem ent represents a balanced package in the 
                                                      
2 The negotiations on a multilateral system of notification and registration of geographical indications 
for wine and spirits are covered by a separate mandate.  The Chair of the Special Session of the Council for 
TRIPS is reporting on them  separately (TN/IP/21).  WT/GC/W/633 
 TN/C/W/61 
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  Uruguay Round and that wine and spirits were  subject to specific forms of labelling 
regulation in some national systems. 
 
- Broader trade issues, such as the impact of higher protection on continuing market 
access for food exports to third country market s and the relevance of GI protection to 
agricultural trade. 
 
- The development dimension of GI protecti on, some arguing that higher protection for 
wine and spirit GIs principally benefite d industrialized countries, not those 
developing countries whose GI interests con cerned textiles, handicrafts, agricultural 
products or foodstuffs;  others argued that higher GI protection may impede certain 
valuable exports of developing countries. 
 10. The discussions went some way to clarifying some technical issues: 
- The distinction between scope of protection accorded to a GI under Articles 22 
and 23, recognition of a term as a prot ectable GI under Article 22.1, and the 
Article 24.6 exception permitting some generic use. 
 
- Protection of GIs as trademarks, especially certification and collective marks, and 
how the trademark system can or should meet the expectations of the proponents of 
GI extension, and whether stronger GI protection was possible under the trademark 
system or would require sui generis means. 
 
- Difficulties arising when GIs are used in translation, and whether GI significance in 
one country can or should influence the level of protection in another country. 
 
11. The exchanges on the substantive issues raised by Members' questions of one another covered 
a number of general themes grouped into five clusters. 
12. Cluster 1
, on differences between protection under Ar ticles 22 and 23:  whether and how a GI 
could be prevented from becoming generic in third markets without Article 23 protection;  the scope 
of the proposal to extend GI protection, in te rms of products covered, their link with their 
geographical origin, and the role of a GI identifyi ng a product;  whether Article 22 protection is costly 
and burdensome because of the need for evidence to pr ove that use of a GI is misleading or confusing 
to the consumer;  and whether Article 22 or 23 protection was preferable for policy reasons. 
13. Cluster 2 , on the effects of extending higher protec tion to additional products:  effects of 
higher protection being extended to GIs for different  products, including in third country markets;  
whether increased market access had resulted from higher protection;  and the impact of higher 
protection on market access for products with generic descriptions. 
14. Cluster 3 , on Members' experiences with GI protection under the existing standards:  
implications of Article 23 protection in third country markets for trade in wines and spirits;  the nature 
of problems claimed to arise from current levels of protection;  and whether a useful analogy could be 
drawn between wines and spirits and other products. 
15. Cluster 4 , on the contrasts between GI protection and other forms of IP:  whether and if so 
how GIs differed from other forms of IP, whether an y possible trade benefits from GI extension could 
be equally available through altern ative branding and marketing stra tegies, and the relative costs 
involved;  and the complementary character of ma rketing and GI protection;  implications of WT/GC/W/633 
TN/C/W/61 Page 4 
 
 
  extension of the scope of GI protection for c ontinuing market access for products legitimately 
presented with generic terms or other TRIPS exceptions to GI protection. 
16. Cluster 5
, on how exceptions under Article 24 would apply under an extension system:  for 
instance, whether the existing sector-specific excep tion for the names of grape varieties could be 
adapted and applied for other products, su ch as cheese and other processed foods. 
2. State of play 
17. Delegations continued to voice the divergent view s that have characterized this debate, with 
no convergence evident on the specific question of ex tension of Article 23 c overage:  some Members 
continued to argue for extension of  Article 23 protection to all products ;  others maintained that this 
was undesirable and created unreasonable burdens.  It was clarified that trademark systems were 
legitimate forms of protecting GIs, in line with the general principle that Members are entitled to 
choose their own means of implementing their TR IPS obligations.  Extension proponents sought 
guarantees that the trademark system could and would protect their GIs at the higher level for all goods.  Discussions clarified that GI extension did not mean that existing exceptions under the TRIPS 
Agreement, such as for generic terms and prior trademark rights, would cease to apply.  This 
discussion underscored the benefits of understanding mo re fully the scope of protection that applies at 
a practical level under different national systems. 
 
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B. TRIPS-CBD 
1. Discussions 
18. On TRIPS-CBD, the discussions built on the common ground reported in 2008 - broad 
support for the general principles of prior informed c onsent and equitable sharing of benefits that are 
enshrined in the CBD;  and agreem ent on the need to avoid erroneous patents, on securing compliance 
with national benefit-sharing regimes, and on ensu ring patent offices have av ailable the information 
needed to make proper decisions on patent grants  for inventions linked to genetic resources and 
traditional knowledge (TK).  Members voiced suppor t for the CBD objectives, but remained divided 
as to the best means to fulfil th em within the TRIPS framework. 
19. The structured discussions therefore reviewed the practical implications and comparative 
merits of current proposals - a disclosure requirement, a database system, and national-based 
approaches to enforcing prior info rmed consent and equitable benefit sharing - considering how each 
of these options could effectively help achieve the agreed objectives, while not creating undue 
burdens. 
20. Members considered how databases and disclosure requirements would operate in practice to 
reduce the risk of patents being incorrectly gr anted over genetic resources and associated TK.  
Proponents of disclosure mechanisms stressed that their overall goal was to ensure that the TRIPS 
Agreement positively supported compliance with the essential objectives of the CBD, including prior 
informed consent and equitable sharing of be nefits.  Members debated whether a disclosure 
requirement would be the most effective or desi rable way of supporting compliance with access and 
benefit-sharing obligations in the source country  of genetic resources and associated TK, and the 
prevention of transboundary misappropriation of genetic resources and associated TK;  how a 
disclosure requirement would help avoid the issuan ce of erroneous patents if patent applicants  WT/GC/W/633 
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  identified only the source country;  whether a disclosure requirement would be unreasonably 
burdensome for patent applicants or for patent offi ces;  and whether it would result in uncertainty and 
deter investment in innovation, thus undermining the role of the patent system.  Members also 
discussed whether more precise definitions are need ed for such terms as "g enetic resources" and 
"traditional knowledge" and if so, wh ether or not to wait for these terms to be further defined in other 
forums such as WIPO or the CBD. 
21. Members agreed on the general usefulness for patent examination of TK/genetic resources 
databases, but discussed:  whether such datab ases could serve as the primary way to prevent 
erroneous patents;  the difficulty  of having fully exhaus tive databases of TK, given the oral character 
of much TK and concerns that recording TK in a database could itself lead to its misappropriation;  
the difficulty of fully mapping out all the genetic  resources potentially available in a mega-diverse 
country;  and whether a mandatory disclosure requi rement would help direct patent examiners 
towards the relevant databases. 
22. The exchanges on substantive issues raised by Members' questions covered a number of 
general themes grouped into four clusters. 
23. Cluster 1 , on the legal character of misappropriation:  whether access to genetic resources 
through channels that are consis tent with national laws should be  considered misappropriation in 
particular cases;  whether access to a genetic or biological resource can give rise to a claim of misappropriation based on the laws of the country of  origin if the resource was obtained from another 
country;  whether "misappropriation" could refer to  illegal or illegitimate acts with respect to the 
acquisition and use of genetic resources and associ ated TK;  whether defining "misappropriation" 
should be a precondition for establishing a disclosure obligation;  and the role of national access and 
benefit-sharing (ABS) legislation in enabling Member s to exercise their sovereign rights over genetic 
resources and authorize access and benefit sharing, including through the use of contracts. 
24. Cluster 2
, on costs and benefits of measures, other than the disclosure requirement, to address 
misappropriation and benefit sharing:  whether, and how, other measures could ensure that patents are 
not issued in cases where inventions are based on ge netic resources or associated TK which have been 
obtained without proper and legitimat e authorization and without equita ble benefit sharing;  whether 
mechanisms to prevent misappropriation of gene tic resources should differ depending on whether 
commercialized products are patented;  whether TK /genetic resources databases would contribute to 
preventing misappropriation and ensuring  equitable sharing of benefits. 
25. Cluster 3 , on the legal character and enforcement possibilities of national-based approaches, 
including a contract-based system, especially co vering multiple jurisdictions:  how to address 
transboundary aspects of access, benefit sharing, and prior informed consent;  how a contract-based 
approach would address the principles of ABS and prior informed consent, along with appropriate domestic legislation;  issues relating to transboundary enforcement of contracts. 
26. Cluster 4
, on administrative costs and burdens, and th e legal certainty and predictability, of a 
mandatory disclosure requirement within the patent system:  relative additional costs and burden of 
incorporating the mandatory disclosure requireme nt as compared to existing obligations under 
Article 29.1 of the TRIPS Agreement;  how these costs could be offset against benefits of improving 
patent examination, facilitating prior art search, promoting transparency, contributing to preventing 
misappropriation of genetic resources and associated TK, and ensuring equitable benefit sharing and 
prior informed consent;  whether, given the continuing relevant work in the WIPO and the CBD 
(including on definitions of key terms and elements of benefit sh aring), a disclosure requirement 
could be implemented in a consistent ma nner which would provide legal certainty. WT/GC/W/633 
TN/C/W/61 Page 6 
 
 
   
2. State of play 
27. Members have consistently voiced support fo r the principles and objectives of the CBD, 
including the principle of prior informed consent a nd the principle of equitable sharing of benefits.  
They have agreed on the need to take steps to a void erroneous patents, including through the use of 
databases, as appropriate, to avoid patents being granted on existing traditio nal knowledge or genetic 
resources subject-matter.  None of the proposals discu ssed - disclosure requirements, databases, or the 
use of contracts - was argued to be a stand-alone  response or complete solution to all problems 
outlined.  Members continue to differ on whether the formulation and application of a specific, 
tailored disclosure mechanism relating in particular to genetic resources and associated TK would be 
useful and effective in ensuring that the patent system promoted CBD objectives, or whether other 
mechanisms should be preferred.  This discussi on underscored the benefits  of understanding more 
fully the practical and operational context of the existing disclosure mechanisms that have been 
implemented in national systems. 
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