RESTRICTED  WORLD TRADE  
ORGANIZATION  TN/IP/M/17 
13 July 2006 
 (06-3394) 
Council for Trade-Related Aspects 
of Intellectual Property Rights Special Session  
 
  
MINUTES OF MEETING 
 
Held in the Centre William Rappard
 
on 12-13 June 2006  
 
Chairman:  Ambassador M anzoor Ahmad (Pakistan) 
 
 Subjects discussed
         P a g e  N o . 
 
A. ADOPTION OF AGENDA ...............................................................................................................1  
B. NEGOTIATION ON THE ESTABLISHMENT OF A MULTILATERAL SYSTEM OF 
NOTIFICATION AND REGISTRATION OF GEOGRAPHICAL INDICATIONS FOR WINES 
AND SPIRITS ............................................................................................................................... .1 
C. OTHER ISSUES ...........................................................................................................................20  
 
_______________ 
  
A. A
DOPTION OF AGENDA  
1. The seventeenth Special Session agreed  to adopt the agenda as set out in WTO/AIR/2829. 
2. The Chairman suggested that the Special Sessi on invite the International Bureau of the 
World International Property Organization (WIPO) to be represented in an expert capacity, this being 
without prejudice to the issue of observer status for intergovernmental organizations. 
3. It was so agreed . 
B. NEGOTIATION ON THE ESTABLISHMENT OF A MULTILATERAL SYSTEM OF NOTIFICATION AND 
REGISTRATION OF GEOGRAPHICAL INDICATIONS FOR WINES AND SPIRITS  
4. The Chairman  recalled that, at the March 2006 meeting, the Special Session had a focused 
and useful discussion on the priority concerns identif ied by delegations and listed in the Chairman's 
note dated 10 March 2006, "List of Priority Concerns for Discussion at the Meeting 
of 16-17 March 2006".  He also recalled that at the end of that meeting, he had concluded that, while 
in some areas, such as legal effe cts/consequences of registration and participation, Members were still 
far apart, on others, such as notification, there seem ed to be more common ground.  On issues such as 
fees and costs, there was a need fo r more work to clarify the issu es and the differences.  In that 
meeting he had also expressed the hope that th e discussions had helped delegations to better 
understand each other's concerns and invited delegations to think furt her on how certain concerns or TN/IP/M/17 
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  fears could be allayed.  He finally recalled that he was encouraged that certain delegations expressed 
some willingness to explore the scope for doing this. 
5. He urged delegations not to repeat themselves, but, given the time available, to seek to limit 
their statements to new points.  He proposed that de legations should first make  general statements and 
then proceed through the various headings that Me mbers had been using, namely participation, 
notification, registration, legal effects/con sequences of registration, and fees and costs. 
6. It was so agreed
. 
General Comments 
7. The representative of th e European Communities  said that his delegation had taken an active 
and constructive role in these nego tiations and expressed hope that ot her Members would also take the 
same approach.  He considered the establishmen t of a meaningful multilateral GI register as an 
essential element in the overall balance of the DDA.   In the course of 2006 his delegation had 
participated in useful Special Session meetings  and consultations on th is matter and had also 
discussed it bilaterally with some Members.   
8. He said that his delegation's objective was to  explore potential convergence and recalled that 
it had been flexible, compared to past proposals on th e GI register, regarding, for example, the issues 
of fees and technical assistance and the avoidance of creating burdens on Members.  He recalled that his delegation had also said that it would be prepared  to commit itself, certainly initially, to annual 
ceilings on geographical indications to be notified an d offer longer transitional periods for developing 
countries.  However, if this Special Session wanted  to move forward, a clear signal was needed from 
others showing that they were prepar ed to reciprocate in flexibility.   
9. He recalled that the Chairman had announced in the Special Session meeting held last March 
that a working document would be on the table by July. Although his delegation had asked for this 
document to be circulated by the Chairman in adva nce of the present meeting, it understood that the 
Chairman wished to have more guidance from the Me mbers before sharing such a paper.  Such basic 
guidance could, in fact, take the form of clear si gnals by Members that they were prepared to be 
flexible.  His delegation believed that this wo rking document should be a compromise proposal from 
the Chairman and therefore he would only encourage the Chairman to explore all possible margins to 
present a meaningful compromise proposal as soon as possible. 
10. The representative of Australia
 took note of the European Communities' statement that a 
meaningful GI register was essential for overall bala nce in the Round, as well as of their statement 
that their objective was to explore possible areas of convergence.  She agreed that this was the task 
that Members had in these negotiations.  However, in doing so, Members should look at the core 
issues and the fact that flexibility, on the margins, be it in relation to extended reservation periods or 
in relation to annual ceilings on a number of notifica tions, would not go to the heart of her and other 
delegations' concerns with the EC proposal.   
11. The representative of the United States  said that her delegation supported the comments made 
by Australia.  With respect to  the comments made by the Eur opean Communities on the working 
paper, while she believed that the paper should i ndeed clarify and reflect divergent views, her 
delegation was not supportive of a Chairman's docum ent.  Instead, her delegation would suggest that 
the side-by-side document could be  updated and the Secretariat coul d provide an annex containing 
points raised by delegations in the Special  Session clarifying those divergent views. 
12. The representative of Argentina  expressed her support for the statements made by Australia 
and the United States regarding the nature of the working document.  Like Australia, her delegation  TN/IP/M/17 
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  also believed that the flexibilities indicated by th e European Communities did not really go to the 
heart of the concerns it had, such as those regard ing the EC system of opposition, legal effects or 
participation.  For this reason, she considered  that the time was not ripe for any compromise 
document.  
13. The representative of Romania  said that her delegation fully supported the proposal made by 
the European Communities on the working document.  The present discussions could be helpful in 
giving the Chairman more substance for such a paper. 
14. The representative of Chile  expressed support for the suggestion made by the United States 
regarding the working document.  Although sever al questions still remained unanswered, his 
delegation could nevertheless agree to update the si de-by-side document.  He recalled that certain 
questions posed to the European Communities and H ong Kong, China had been satisfactorily clarified 
and could serve as elements for updating the text.  Su ch modifications to the text could also include 
the flexibilities mentioned by the European Communities. 
15. The representative of Canada  said that Canada would continue  to engage constructively in 
these negotiations to work actively towards their su ccessful conclusion.  She fully agreed with the 
statements made by Argentina, Au stralia, Chile and the United States and shared their concern that the 
flexibilities that had been shown by the European  Communities did not meet their concerns.  Her 
delegation was therefore still waiting to see some serious flexibility from th e European Communities. 
16. The representative of Japan  associated himself with the statements made by Argentina, 
Australia, Canada and Chile.  There were still f undamental differences between the proposals on the 
table and many questions still had to be clarified.  Japan was convinced that the purpose of the system 
to be established should be to facilitate the protec tion of geographical indica tions and that it should 
not confer any rights regarding geographical indica tions registered under the system nor prejudice any 
rights and obligation under the TRIPS Agreement.  Japan wished to continue to participate 
constructively in this exercise.  
17. The representative of Switzerland  recalled that Members were at a crucial stage in their 
negotiations and that according to the timelines de fined in the Hong Kong Ministerial and the Doha 
work programme they were to produce a working docum ent by July at the latest.  These negotiations 
were part of the single undertaking and his delegati on therefore welcomed the Chairman's active role 
in these negotiations, as well as his proposals on the various formats for these discussions during the present Special Session meeting.  He hoped that these discussions would provide the Chairman with 
the guidance he needed.  However, if Members we re not able to converge, his delegation would 
suggest that the Chairman should consider the op tion of proposing a text himself and strike a 
compromise.  Obviously, such a paper would have  to go beyond a mere comparison of the proposals 
on the table and it would also have to go further than  an options paper produced in 2003 by a previous 
Chair.  Chairs in other negotiating groups we re also proposing text proposals on a bottom-up 
approach.  He believed that the fact that this Sp ecial Session already had three text proposals on the 
table provided an adequate bottom-up approach.  Clearly, while it was up to Members to come to a 
consensus on such a text proposal  once it was on the table, such a compromise text proposal by the 
Chair would put these negotiations on a new basis and would therefore help Members to focus and make progress on the most controversial and core i ssues.  The consensus on some of the key factors 
might have to be found in a broader spectru m of the ongoing negotiations in the Doha Round, 
including agricultural modalities. 
18. The representative of Colombia
 asked whether the European Communities could express with 
more clarity, ideally in written form, exactly what  flexibilities they were proposing for developing 
countries. TN/IP/M/17 
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  19. The representative of Korea
 said that his delegation believed that there was still wide 
divergence on major issues with r espect to the proposed multilateral GI registration system.  Any 
system to be established should be non-binding and voluntary and not impose undue financial and 
administrative burdens on both particip ating and non-participating Members. 
20. The representative of Chinese Taipei  said that, as one of the co-sponsors of the joint proposal, 
his delegation shared the point made by many co-sp onsors of that proposal that the flexibilities shown 
by the European Communities in th e Special Session's meeting last March still did not go to the heart 
of the matter that was the focus of these delegatio ns' concerns.  As for the future work, he believed 
that it was still premature to discuss a Chairman's text. 
21. The representative of New Zealand  associated himself with the comments made by Australia 
and supported by others.  His dele gation did not see any basis at the present juncture for a Chairman's 
compromised text, certainly not one that would be consistent with a bottom-up approach, as 
mentioned by Switzerland.  On the other hand, he ag reed with the suggestions made by Chile and the 
United States in this regard.  Since Members ha d had some positive discussion on the basis of the 
side-by-side document his delegation would be open  to considering ways to amend this document 
further. 
22. The representative of India  said that his delegation respected both the mandate of the 
negotiations in the Special Session as well as the latest timelines given by the ministers at the 
Hong Kong Ministerial.  India was ready to work co nstructively on the basis of any proposed process 
of moving towards a goal of an outcome within t hose timelines.  For India and many developing 
countries the cost and burdens arising from each aspect of the possible solution were of prime 
importance. 
23. The representative of Guatemala , supported by the representative of Mexico , associated 
herself with the interventions made by Arge ntina, Australia, Chile, New Zealand and the 
United States.  She believed that the proposal s made by the European Communities were not 
substantive and did not solve the core problems identified by the Joint Proposal Group.  Including 
transitional periods, as proposed by the European Communities, would not solve the problems of the 
developing countries.  Regarding the working documen t, she believed that the suggestions made by 
the co-sponsors of the joint proposal would be  the best way forward at the present time. 
24. The representative of th e European Communities  said that he was pleased to hear a number of 
delegations saying that they were willing to e ngage constructively in these negotiations.  His 
delegation looked forward to this.  He was, how ever, concerned with the fact that these same 
delegations who were willing to en gage constructively, did not, at the same time, even want a 
compromise proposal to be put on the table, which was not a constructive manner in which to engage. 
Participation 
25. The representative of Australia  said that the issue of participation spoke for itself and 
therefore her delegation would not restate its position in this regard and would instead simply recall 
the strong and broad support in this house for a voluntary system. 
26. The representative of the European Communities  recalled that the mandate called for a 
multilateral system, which in the WTO context mean t a system that was applicable to all WTO 
Members.  As his delegation had demonstrated in the past, it was flexible on this issue, so as to make 
a distinction between participati on and non-participation in the system, while maintaining that all 
Members should be part of the system.  TN/IP/M/17 
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  Notification 
27. The representative of the European Communities  recalled that this was one of the areas where 
there was a positive atmosphere, sin ce Members were perhaps closer than  they had been to identifying 
some convergence.  However, he also recalled that  the EC proposal made notification the way to 
indicate the willingness to become a participating memb er into the system and also the starting-point 
for the period for examination, which was one  of the key elements of this proposal. 
28. He saw some convergence between the joint pr oposal and the EC proposal regarding the 
content of the notification.  Although this was not  one of the core issues under negotiation, it would 
be useful if the proponents of the joint proposal co uld signal readiness to move on this and to "beef 
up" their proposal with regard to the contents of th e notification.  In previous meetings his delegation 
had made the point that some of the information to be contained in the notification was merely optional in the joint proposal system.  This was th e case, for example, of information on the basis of 
which the notified geographical indication was protect ed in the country of origin or the date of 
protection of the geographical indication.  His dele gation believed that this kind of data was quite 
important for it would increase the information within  the system in a meaningful way.  Addressing 
such concerns would be a good signal from the Joint Proposal Group that they were prepared to engage in these negotiations. 
29. The representative of the United States
 agreed that notification was an area where perhaps 
there was some overlap that could be used as a basis for some further discussion.  However, 
notification should not be discussed in isolation fro m the broader consequences of the system because 
with regard to some of the aspects that were in cluded as notification items, particularly in the EC 
proposal, there were those that could have a negativ e impact on, for instance, fundamental principles 
of territoriality as well as those that might lead  to discriminatory treatment of certain notified 
geographical indications or geographical indications  that were protected under various systems that 
were now consistent with the TRIPS Agreement.  For example, both the EC and the Hong Kong, 
China proposals required some reference to a lega l instrument by which the geographical indication 
was protected.  However, such a system would be di fficult, if not impossible, for those Members who 
protect geographical indications through, for ex ample, unfair competition or where rights were 
acquired through use or where geographical indicati ons were protected by common law systems.  
There would therefore be a significant discrimination against Members using such systems.  He said that another issue was the notification of transl ations, which under the EC proposal would have 
specific legal consequences.  He cautioned that wh en addressing this question, Members would have 
to consider the ramifications of all these proposals.   
30. He concluded by saying that his delega tion had indicated a willingness to engage 
constructively on the issue of notification and w ould be happy to discuss it in broader terms.  
However, this would have to be  done in a careful manner so as not to cross a line that would 
negatively impact on fundamental principles of in tellectual property law, as had been the case under 
the existing proposal by the European Communities, including in their section on notifications. 
31. The representative of Chile
 associated himself with the comments made by the United States 
on this issue and said that while the EC and Ho ng Kong, China proposals apparently allowed a 
Member to notify geographical indications from its territory as well as those coming from other countries, the joint proposal only allowed the notifi cation of geographical indications that originated 
in the territory of the notifying Member.  This was one of the examples of an area where changes 
could be made to update the document that Members were working on. 
32. The representative of Australia
 agreed with both the Eu ropean Communities and the 
United States that notification was perhaps an i ssue on which Members could find some convergence 
between the proposals on the table.  Nevertheless, sh e also agreed with the United States' statement TN/IP/M/17 
Page 6  
 
  that such an issue could not be looked at in isolation from the consequences, for the information 
contained in the notifications would be used in a cer tain way.  One important aspect in this regard, as 
mentioned by the United States, was translation, which was an issue that each Member should deal 
with in relation to its own territory.  Her delega tion would not wish to see a situation where GI 
protection was expanded through the notification of cer tain translations that perhaps were not even 
geographical indications at all.  
33. As to the notification of the legal instrument  through which the geographical indication was 
protected, she said that perhaps this was an issue that could find a compromise through language.  She 
agreed with the United States that there were  many Members who did not protect geographical 
indications through registers and that their systems would need to be accommodated.   
34. She said that another issue in relation to inform ation to be provided in the notification related 
to Article 24.9 of the TRIPS Agreement.  She wa s not sure whether the EC proposal was changing 
this provision in such a way as to mean that Me mbers would not be required to implement the legal 
consequences of notified terms wher e they were not protected in the country of origin.  If this were 
the case, then it would be a slightly different s ituation from the current language of Article 24.9, 
which was permissive. 
35. The representative of the European Communities
 thanked other delegations for the 
encouraging comments regarding notifications.  Th is was an area where Members could make some 
progress, given that there was some convergence.  As a general point under this issue, he said that the 
EC proposal was fully consistent with the principl e of territoriality and did not affect fundamental 
principles of IPR systems in other Members.  It  also met the TRIPS mandate to facilitate GI 
protection, which could only be reached  through meaningful legal effects.  
36. He understood the concerns expressed by the Unite d States with regard to systems that did not 
protect geographical indications through registration.  The first point in resp onse to this concern was 
that most geographical indications were protected through registration schemes, which meant that, in 
general, for most geographical indications, it should be possible to indicate the legal basis for their 
protection clearly in the notifications.  Such inform ation would serve to demonstrate that the notified 
geographical indications had cleared the hurdle of  Article 24.9 of the TRIPS Agreement.  Such 
information was relevant for Members, given that  this was what would unlock the TRIPS protection 
even for geographical indications that were not protected on the basis of, for example, sui generis  GI 
registration systems or for those that were protected on the basis of unfair competition laws.  This would not prevent any Member from indicating that in their notifications.  While his delegation 
accepted the fact that geographical indications were protected in different ways, this did not change 
the need to have the ways in which these names were protected stated in the notifications.  
37. He recalled and agreed with a point made that there could not be any agreement on 
notification before the final features of the GI register  were known.  This was, in fact, a point made in 
the report by the Chairman to the TNC in ad vance of the Hong Kong Ministerial, where he 
highlighted that the two core issues were participa tion and legal effects.  It was clear that what 
Members agreed on those two issues would have an im pact on the rest of the issues on the table, and 
that was exactly why the European Communities had consistently asked for these discussions to focus 
on those two core issues. 
38. On the issue mentioned by Chile on the possibility, under the EC system, for a Member to 
notify a geographical indication corresponding to territories outside that of the notifying Member, he 
said that his delegation had already mentioned in the Special Session's last meeting that it would be 
prepared to modify its proposal to clarify that it only referred to geographical indications in the territory of the notifying Member.   TN/IP/M/17 
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  39. As to the issue of translations, he said that what his delegation had inserted in its proposal on 
this matter was with the spirit of compromise based on the text in Job(03)/75, which was a paper that 
allowed some progress to be made by comparing vari ous proposals on the table.  On the question of 
translation this document only offered one single text;  it was a text not to be considered final in any 
way, although it certainly hinted at an area where Members were supposed to be in agreement.  The 
disagreement expressed by some Members to what th e EC proposal was proposing on translations 
was a consequence of the sponsors of the joint propos al having changed their views on this matter.  In 
any event, irrespective of what was in the EC propos al, he stated that for his delegation the principle 
of territoriality also applied to the question of tran slations.  This meant that it remained with national 
authorities to make decisions or determinations w ith regard to translations and that what the 
European Communities was proposing would not bind the authorities of any Member or take such 
responsibility to decide out of their hands.  If Me mbers still had concerns regarding translations, his 
delegation was prepared to consider alternative language that they might propose on this issue. 
40. The representative of Argentina  said that the joint proposal had the merit of establishing a 
simple system which emphasized transparency.  She agreed with the point made by the United States 
that focusing only on supposedly neutral techni cal issues was not appropriate, as the whole system 
was formed by a series of interrelated elements lead ing to a final solution, the issue of notification 
being just one of these elements.  In the EC propo sal, it was only when one looked at the registration 
phase that one would truly understand why all these elem ents were required to be contained in their 
proposed notification phase.  The EC delegate said clearly in his last comments that these elements 
were essential because they were the legal basis fo r protection.  This was where the principle of 
territoriality should be observed, because the granting of protection for notified geographical 
indications should not be the aim of the system to be established.  The aim should be to receive notifications of geographical indications protect ed according to the national legislation of the 
notifying Member and not to inquire as to whether such a name was or was not protected in other WTO countries, a matter to be determined by the vari ous national legislations of these other countries.  
In other words, no element contained in a GI notificat ion should serve as the basis of protection of this 
name in other countries;  otherwise the system woul d not be respecting the principle of territoriality 
for it would be accepting the extraterritorial applica tion of the legislation of certain Members in the 
territories of other Members. 
Registration 
41. The representative of the European Communities
 proposed that rather than restating their 
well-known positions on this matter de legations might agree on the principle that the system to be 
established should contain reliable information.  It w as with this principle in mind that his delegation 
had included the specific elements forming the content of  notifications in its proposal.  Additionally, it 
was through the registration procedures that the EC proposal aimed at ensuring that the information 
contained in the system would be reliable, which wa s particularly important, given the fact that legal 
effects would flow from the register.  Only a regi ster containing reliable information would justify 
meaningful legal effects.  He believed that the join t proposal's automaticity with regard to notification 
and registration would not attain, as the EC propo sal did, the objective of ensuring reliability of 
information.  Under the joint proposal system it would be possible, for example, to notify a geographical indication that did not meet the GI de finition and yet national authorities would need to 
consult the GI register when making decisions even if that name was not a real geographical 
indication.  What would happen, for example, if a judge having the obligation to consult the GI 
register suddenly found out that that name was in fact not a geographical indication?  This kind of situation would not be good for lega l certainty and would create confus ion.  Therefore, his delegation 
believed that Members had to do their utmost to establish a system that contained reliable 
information, which was an objective on which all could agree. TN/IP/M/17 
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  42. The representative of Australia
 asked the European Communitie s whether the sole or main 
purpose of the complex reservation system set up in it s proposal was to ensure the reliability of terms 
on the register.  She failed to understand the rela tionship between these two aspects.  Members should 
recall that the EC proposal basically required Memb ers to lodge substantiated reservations and enter 
into compulsory negotiations on behalf of every privat e interest in its territory that might be affected 
by the registration of a foreign geographical indication.  By failing to follow such a procedure a 
Member would then waive its rights to decline protection on certain grounds, for example that the product was generic in its territory .  She was therefore not certain how such a system would improve 
the reliability of terms on the register.  It seemed to her delegation that the main effect of the reservation system was that some Members would register many geographical indications because 
other Members would be unable to lodge reservations  given the complex and costly nature of the 
system.  Therefore, it appeared that the main purpose of the system was to have as many terms registered in it as possible and not to ensure th e reliability of information contained therein.  
43. The representative of Chile
 recalled that he had already said in the previous meeting that the 
best guarantee that the information would be reliable was the fact that it would come from 
notifications made by governments.  Cases of notifie d terms that were not geographical indications or 
of multiple identical GI notifications would be mini mal.  The joint proposal provided for fairly strong 
legal effects that might have pr actical effects beyond the simple obligation of industrial property 
offices to consult the database.  For example, many  offices and judges, after consulting the database, 
might in fact create an important precedent for the protection of that name by corroborating the 
content of that specific information in their decisions .  No IP office was infallible, and there could be 
deficiencies in the system, but the fact that go vernments would be those making the notifications 
would be a strong and reassuring guarantee of reliabi lity.  Although the notification system Members 
set up at the end of last year as part of their decision on TRIPS and public heath did not provide for the verification of notified information, Members made their decision assuming that governments would make accurate and faithful notifi cations to the paragraph 6 system. 
44. The representative of Chinese Taipei
 supported the approach suggested by the United States 
that the discussions should not focus only on the specific parts of the proposals in isolation from the overall systems they proposed.  As to registration, he  recalled that in the meeting held last March, the 
European Communities said that it wa s prepared to look at some flexibility, such as, for example, the 
possibility of allowing notifications to be ma de directly by producers.  He asked the 
European Communities whether, assuming this would be  the case, these producers would also be able 
to lodge reservations directly with the administrativ e body.  If that were th e case, how would the EC 
proposed system provide more relia ble information?  If that were not to be the case, then the 
responsibility to lodge reservations  would be shifted to government s and would result in extra costs 
and burdens to them. 
45. The representative of New Zealand
 said that his delegation could agree with the principle 
referred to by the European Communities that the in formation on the register should be reliable.  
However, such an objective should be pursued without making the system overly burdensome and undermining the flexibilities of the TRIPS Agreement that Members currently enjoyed.  He agreed 
with the point made by Australia that the EC pro posal's procedures seemed to go much further than 
simply establishing reliable information.  In an y case, there was scope to discuss the issue of 
reliability further, not only under the notificati on and registration headings but also under legal 
effects.  
46. The representative of the European Communities
 clarified that the objective of his suggestion 
was simply to present a generic principle on which all Members agreed, namely making sure that the 
information within the system would be reliable a nd then that Members would look to the appropriate 
consequences of such a principle and consider  modifications of the proposals accordingly.  
Essentially, what his delegation was suggesting was to offer an easier way through which the joint  TN/IP/M/17 
 Page 9 
 
 
  proposal could be adapted in order to improve the reliability of the information under it.  He was not 
in any way suggesting that the sole purpose of the re gistration system would be to ensure reliability.  
The system needed to be reliable because it would be  such reliability that w ould justify that certain 
legal effects would flow from it.  The consequence of agreeing on this principle was that any proposal 
providing for an automaticity between notification and registration, which made both concepts close 
to equivalent, would need to be revised.  For his delegation, the solution to this question could be 
ensured through a challenge procedure in which Members that had a problem with a certain 
geographical indication could simply indicate this in a period of eighteen months.  Through such a challenge procedure the EC proposal ensured that geographical indications would be examined by 
Members with full respect for the principle of terri toriality.  His delegati on was not proposing, as 
suggested by some Members, that the WTO Secretariat take decisions on which Member would be the 
true owner of a geographical indication or the real notifying Member of a certain geographical indication that had been notified by two Member s at the same time.  What it was proposing was 
simply the establishment of a system that would make  sure that territoriality was ensured by the fact 
that decisions would remain in the hands of nati onal authorities, which woul d make their views clear 
through a challenge procedure that would prevent the unfolding of legal effects in the territories of the 
challenging Members.  In sum, such a challenge pr ocedure would certainly ensure reliability of the 
system with perfect consistency with the principle of territoriality.   
47. As to Chinese Taipei's comment regard ing some possible fl exibility that the 
European Communities had offered to consider th at producers could notify geographical indications 
directly, he said that if other Members did not agree with such an idea his delegation would not 
change its proposal in that direction.  The only objective of offering such flexibility was simply to 
make clear that the European Communities were pr epared to compromise in order to establish a 
system that would be acceptable to all Members.  
48. The representative of the United States
 associated herself with the comments made by the 
delegations of Australia, Chile and Chinese Taipei.  As to the point made that the EC proposal 
respected the principle of territoriality, she noted  that this proposal indicated that Articles 24.4 
and 24.5 of the TRIPS Agreement could not form the b asis of a reservation.  She also recalled that the 
different items of the proposals could not be looked at in isolation and that registration, notification 
and cost all needed to be analysed as a whole.  Th e fact that the EC proposed system created a burden 
on Members to challenge notified geographical indications rather than putting the burden on right 
holders and the fact that it also, as a consequence, created certain legal effect s could not be reconciled 
with the notion that IPRs were territorial and th at these rights had to be established and asserted under 
the laws of the country where the protection was sought. 
49. Responding to a point raised by the Un ited States, the representative of the 
European Communities  said that the reference to Articles 24. 4 and 24.5 of the TRIPS Agreement in 
the EC proposal was made ad abundantiam  and only to clarify that the proposal did not foresee 
specific legal effects for those grandfathering excep tions, which could be fully exercised at any time 
at the national level.  His delegation was not, theref ore, proposing a situation similar to that which it 
had proposed, for example, for Article 24.6 of the Agreement, where it said that if Members had a 
problem and considered a notified GI to be gene ric they had to say so within eighteen months, 
otherwise they would not be able to refuse protecti on of the geographical indication on that basis.  
However, even if there had been no opposition based  on 24.6 but if there was prior use by some 
producers in that particular Member, they would still be  able to make use of the GI because this would 
be in principle a grandfather clause under the excepti ons in Articles 24.4 and 24.5 of the Agreement. 
50. The representative of El Salvador  said that, as a co-sponsor of the joint proposal, her 
delegation believed that the flexibilities that motivated  this proposal must be preserved.  She therefore 
agreed with the comments made by the delegations of Argentina, Chile and the United States in this 
regard.  She wished the European Communities to c onfirm that their objective was neither to create a TN/IP/M/17 
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  supranational system nor to charge the WTO Secretariat with the prerogative of making decisions on 
the notifications. 
51. The representative of Australia
 asked the European Communities what was the justification or 
the thinking behind treating Article 24.4 differently  from Article 24.6 in its proposal.  In previous 
meetings of the Special Session the response given to this question was that Articles 24.4 and 24.5 
were mandatory but her reading of the TRIPS Agr eement was that only Article 24.5 was mandatory.  
She was also interested in understanding the re lationship between the re quirement to give a 
presumption of protection for terms notified and the ability to continue to i nvoke Article 24.4 under 
national laws.  She wondered what the relationshi p between those two provisions was in terms of 
burdens of proof and territorialit y.  For her delegation the key point was that the EC reservation 
system itself, regardless of how long the period fo r lodging reservations was, eroded the principle of 
territoriality by forcing Members to be proactive in denying IP rights to GI right holders rather than 
providing, as required by the TRIPS Agreement, th e framework of minimum standards within which 
IP rights could be acquired in relation to that territory. 
52. The representative of Canada  said that her delegation still had many concerns with the 
registration aspects of the EC proposal, particularly with the fact that reservations would have to 
identify the applicable grounds and be duly substa ntiated.  All WTO Members, participating and 
non-participating, would need to determine for themselves whether the geographical indication met 
the Article 22 definition, whether it represented th e origin of the goods and whether it was a generic 
term in their territory.  Canada knew from previous  experience that a substantial amount of work was 
required to determine these factors and that such a process could take some time.  She wondered how 
much additional work would need to be invested in duly substantiating th ese grounds and who would 
determine whether they were sufficient.  Furthermore, the burden of all WTO Members wishing to retain the generic nature of notified terms would fall on the shoulders of those Members' 
governments. 
53. The representative of th e European Communities
 said that the presumption that unchallenged 
geographical indications would enjoy under the EC proposed system was their eligibility for 
protection, which covered the whole of the GI prot ection available under the TRIPS Agreement.  That 
was the key idea that his delegation was proposing fo r participating Members and the main difference 
in relation to the effects foreseen for non-participa ting Members.  This would facilitate GI protection 
and would make the TRIPS protection easier to im plement because it would improve the standing of 
GI right holders before national authorities by putti ng the burden of proof in their favour.  As to the 
effects provided under the EC proposal for all Members,  both participating and n on-participating, they 
only referred to the questions of the defin ition, homonymous geogra phical indications under 
Article 22.4 and generics under Article 24.6.  The reason why his delegation limited itself to these 
aspects was to give meaning to the mandate unde r Article 23.4, which referred to a multilateral 
system and, at the same time, hinted that th ere were differences betw een participating and non-
participating Members.  Therefore, his delegati on wished to be sure that legal effects for non-
participating Members were in some way limited.  Ho wever, he stated that if Members would find it 
useful for the European Communities to include ot her TRIPS exceptions in their proposal as grounds 
for opposition, this c ould be considered. 
54. The representative of India  thanked the European Communities for their clarification on the 
application of the various TRIPS GI exceptions under their proposal.  He asked whether there would 
be an impact on the reliability of such a system if its notification procedures were to contain some of 
the non-mandatory elements of the joint proposal.  Since there appeared to be convergence on the 
need for reliability, he wondered how the basis of  GI protection would be known in cases where GIs 
were protected by common law or through unfair co mpetition systems if such information was not a 
mandatory requirement in the notifications.  TN/IP/M/17 
 Page 11 
 
 
  55. The representative of Australia  said that the European Communities had indicated that it 
would be willing to include Article 24.4 on prior good faith use as a ground of objection in the reservation system.  This would not, however, alla y her delegation's concer ns;  her delegation was 
interested in understanding why Article 24.6 on th e generic exception could not still be used under 
domestic law.  This question was related to her or iginal question on the justification for treating 
Articles 24.4 and Article 24.6 differently.  It see med to her that the EC proposal was creating a 
hierarchy in relation to the exceptions. 
56. The representative of Argentina
 reaffirmed her delegation's seri ous concerns with regard to 
the issue of registration.  She had trouble unders tanding the relation between establishing a complex 
system of reservations with the goal of ensu ring reliability of the information notified. The 
registration and notification systems under the EC proposal were interrelated with the reservation 
procedure and its legal effects.  He r delegation had serious systemic concerns with the fact that such a 
system, when seen in its entirety, was unprecedente d when compared to other international IPR 
regimes.  What Members were supposed to negotia te was the establishment of a system that would 
facilitate, and not modify, the protection of geograp hical indications.  There was also no mandate to 
renegotiate how the exceptions were to be applied.  The EC proposal would not create a neutral legal 
instrument, but rather a political system with manda tory bilateral negotiations.  Such a system would 
have an impact in terms of legal security and pr edictability, as political pressure would be exercised 
by some countries against others that had less po litical clout and because it would seek to establish a 
supranational system for geographical indications that would have validity in each of the Member 
countries of the WTO.  
57. The representative of Chile  agreed with Australia's concern that the EC proposal created a 
hierarchy between the various exceptions in Article 24  of the TRIPS Agreement.  He said that besides 
the two categories of exceptions that the Europ ean Communities said were expressly mentioned in 
their proposal, he would add a third category of exceptions, namely, those in Articles 24.8 and 24.9 of the Agreement, which had not been expressly referred to in that EC proposal.  He asked whether, 
under the EC proposal, the exceptions could be invoked at a later stage due to factual changes.  Would 
Chile be able to invoke Article 24.9 in the future  in relation to a registered geographical indication 
that was no longer being used in Spain, for example? 
58. The representative of the European Communities
 said that most of the comments made 
expressed a certain lack of confidence in a sy stem of opposition based on challenges lodged by 
Members.  A delegation had even made the point th at this would be contrary to the principle of 
territoriality.  For his delegation, the effect w ould actually be the opposite, for it would be through 
such a reservation system that the possibility of ch allenging the notifications made would be granted 
to Members, hence ensuring that the principle of territoriality was respected.  In fact, the idea of 
oppositions and objections was something that was well known in international registration systems 
for intellectual property. 
59. As to the question of Article 24.6, the exception regarding generic terms,  he recalled that all 
Members agreed that the purpose of the system to be established was to facilitate the protection for 
geographical indications under the TRIPS Agreement.   His delegation had made certain choices, one 
of them being on generic terms, in order to attain such objective.  The idea of what the 
European Communities was proposin g was essentially that, unless a Member had refused the 
notification of a geographical indication into the sy stem by lodging a reservation within 18 months, it 
would no longer be able to refuse registration of th at term on the basis that it was generic.  This 
system would certainly facilitate protection as GI ri ght holders would have a clear picture of which 
countries considered their geographical indications as ge neric.  They could also more safely invest in 
marketing their products in the relevant markets.  Additionally, and thanks precisely to the possibility 
of still invoking the exceptions in Article 24.4 and 24.5, current producers could still use the TN/IP/M/17 
Page 12  
 
  registered geographical indication, even if the re levant Member had not lodged a reservation based on 
the fact that the term was generic. 
60. As to the point raised by Argentina on bilateral negotiations, he said that  under Article 24.1 of 
the TRIPS Agreement, an obligation accepted by all Members, Members had already given their 
"generic agreement" to negotiate on the issues d ealt with under the challenge procedure foreseen in 
the EC proposal.  It was clear from the language of  Article 24.1 that Members could not withdraw 
their agreement to negotiate.  Therefore, even if this possibility had not been mentioned in the EC 
proposal, such an obligation to negotiate would still ex ist for all Members.  He clarified that what his 
delegation was proposing would no t be a departure from what all Members had already agreed, 
namely a simple way of resolving differences with re gard to challenge procedures.  In any case, under 
the EC proposal, if no agreement was reached af ter the bilateral negotiations, the geographical 
indication would then be entered into the regist er with an annotation which would prevent legal 
effects from unfolding in the particular Member that had lodged the reservation. 
61. With regard to the question on the pressure th at some Members could exert on other Members 
during the bilateral negotiations, he said that this could exist irrespectively of the EC proposal.  In 
fact, by clearly stating that the annotation in the GI register would prevent the unfolding of legal 
effects in the challenging Member, the EC proposal  actually strengthened the hand of challenging 
Members because they would have a very clear a nd solid foundation for maintaining their position if 
they believed, for example, that a term was a generic. 
62. As to the issue raised by Chile regarding othe r exceptions, he explained that the reference to 
Articles 24.4 and 24.5 in the EC proposal was not really necessary, because what his delegation was 
simply proposing were the legal effects as described in its proposal.  However, the 
European Communities had felt that it would be useful to clarify in written form in the proposal that 
these two exceptions would remain freely invocable at  the national level precisely to meet concerns 
expressed by some Members, namely:  that some Members might perhaps not make use of the possibility of opposing a GI notification on the basis of Article 24.6 and that domestic producers using 
that term could have a problem. 
63. The representative of Australia
 said that territoriality was a key issue in this debate.  It was an 
example of the divergent views held by Members in this forum and the reason for the lack of 
convergence.  He appreciated the attempt made by the European Commun ities to explain their 
understanding of territoriality and said that if th e European Communities were able to allay his 
delegation's concerns on this i ssue, this would enable some progress to be made towards a 
compromise on an important element.  Some of his delegation's concerns were in relation to the EC 
reservation system, with the presumptions that would flow from it, and its impact on the principle of territoriality.  The EC delegation had said that th e presumptions would put right holders in a better 
standing in the domestic jurisdiction of other Members, but this was a feature that sounded 
suspiciously like extraterritorialit y.  Another concern related to the economic impact th at a reservation 
system would have for developing countries.  Australia was a country surrounded by developing 
countries and had worked very closely with these c ountries, particularly those of the Pacific and 
Southeast Asia.  Australia was therefore aware of  the challenges and limitations they faced in 
implementing a comprehensive and rigorous IP system.  Under the EC reservation system each and every country would have to place a reservation on each and every geographical indication that would 
be registered.  That was a significant burden that even developed countries would find difficult to 
meet and one that would be beyond the means of developing countries. 
64. The representative of Argentina
 said that she failed to understand how the EC proposal would 
not affect the principle of territoriality by making it impossible for a Member which had not lodged a reservation to claim at the national level that a term was generic.  The practical effect of such a system  TN/IP/M/17 
 Page 13 
 
 
  was to make Members renegotiate the current  exceptions under the TRIPS Agreement, an 
unprecedented feature not found in relation to other forms of IPRs, such as patents and trademarks. 
65. As to the issue of bilateral negotiations under the EC proposal, she said that her delegation did 
not share the interpretation of Article 24.1 of the TRIPS Agreement put forward by the 
European Communities.  If the mandate in Artic le 23.4 of the Agreement included bilateral 
negotiations, such a provision would have been included there and not, as was the case, in 
Article 24.1.  Additionally, the provisions in Articles 23.4 and 24.1 could not be combined, as 
intended by the European Communities, to justify the existence of a dis pute settlement mechanism 
within their proposal.  Such a mechanism alrea dy existed in the WTO and applied to all WTO 
disputes, including those related to the TRIPS Agreement. 
66. The representative of New Zealand  associated himself with the comments made by Argentina 
and Australia on the impact that the EC reservations systems would have on the territoriality principle 
and the flexibilities under the TRIPS Agreement.  He w as particularly supportive of the point made by 
Australia that the very existence of a reservation system would, in itself, erode the principle of 
territoriality.  His delegation was particularly conc erned with the impact that such a system would 
have on Members' producers and governments, particul arly in developing countries, when confronted 
with the onerous and burdensome obligation to du ly substantiate their reservations within the 
prescribed period of 18 months. 
67. He recalled and agreed with Australia's point that the EC proposal created a hierarchy among 
the exceptions under Article 24.  The exceptions under Articles 24.4 and 24.6 were very important to 
New Zealand's producers and exporters.  He had listened to the explanations given by the 
European Communities as to why they had differen tiated their treatment of these two exceptions in 
their proposal, but the impression he had was that it was a slightly arbitrary distinction.  While he 
appreciated the European Communities' acknowledge ment that the Article 24.4 exception could be 
exercised even in circumstances wher e it had been decided that Article 24.6 was no longer available, 
he still failed to understand the reason for maki ng a distinction between these those two very 
important exceptions. 
68. The representative of Canada  said that her delegation also had serious concerns with respect 
to the principle of territoriality and shared th e views expressed by Argentina, Australia and 
New Zealand in this respect. 
69. As to the last comments made by the Europ ean Communities with respect to the issue of 
bilateral negotiations under the EC proposal, she e xpressed surprise at the refe rence to 24.1 of the 
Agreement, as this provision refe rred to negotiations with a view to "increasing" the protection of 
geographical indications, while the mandate in Artic le 23.4 only referred to facilitating the protection 
of geographical indications. 
70. She concluded by asking the European Co mmunities what would happen if a notifying 
Member decided not to enter into negotiations w ith all the Members who had lodged reservations.  
For example:  country "A" notified a GI "X" and received reservations from 50 Members;  given the 
time and the costs that would be in volved in trying to enter into  negotiations with 50 Members, 
country "A" decided to only negotiate with ten Me mbers.  Would this mean that country "A" would 
be precluded from seeking protection for GI "X" in the other 40 remaining Members in the future? 
71. The representative of the United States  said that in their comments the 
European Communities had indicated that they respect ed the principle of territoriality.  However, 
under the EC proposal this principle seemed have ta ken a back seat to the presumptions created for 
worldwide GI protection.  Furthermore, the EC  proposal limited the grounds for objection and the 
timing to raise even those limited grounds.  Inst ead, this proposal was not based on the objective of TN/IP/M/17 
Page 14  
 
  guaranteeing reliability, but rather on providing an automatic worldwide protection based solely on 
one protection granted in the country of origin w ith limited grounds of objection.  She failed to see 
how this would lead to a reliable system.  Such a system would clearly change the balance of rights 
and obligations under the TRIPS Ag reement and would therefore be beyond the mandate to facilitate 
protection. 
72. She said that her delegation fully agreed with Australia that to work constructively Members 
had to look to the European Communities to allay their concerns on the presumptions created for 
geographical indications that seemed to create extrat erritorial effects.  In light of the concerns 
expressed in the present meeting, she urged the Euro pean Communities to consid er a system that was 
more similar to that of the joint proposal so as to help resolve differences.  The joint proposal 
contained a workable system that was fair to exis ting GI regimes and was the only one consistent with 
the TRIPS Agreement and the fundamental principle of territoriality.  It was also the only proposal that preserved the existing balance of rights and obligations under the TRIPS Agreement. 
73. The representative of the European Communities
 said that the EC proposal was fully 
consistent with, and respected, the principle of territoriality.  Decisions regarding geographical 
indications would continue to be made at the nati onal level, albeit with the presumption of eligibility 
for protection for participating Members.  The excep tions in Article 24 would continue to apply in 
some cases, such as in the case of generics, wh ich could be exercised within a time-limit 
of 18 months.  Therefore, what his delegati on was proposing could not be termed as imposing 
extraterritorial effects.  Instead, it was simply proposing, as did the joint proposal, certain legal effects.  In fact, the joint proposal's legal effect  of imposing the obligation on Members to consult the 
GI list resulting from the operation of the system was not an obligation that existed under the 
TRIPS Agreement and he did not see this as being extr aterritorial in nature.  The EC proposal was 
simply establishing a way of facilitating the protec tion of geographical indications, which was the 
mandate in Article 23.4.  It was a fact that intern ational and multilateral agreem ents had effects in the 
Members that signed up to those agreements.  Howe ver, this did not mean that by simply accepting 
that certain effects would happen in the territories of the countries signing such agreements that they 
were imposing extraterritorial effects.  He wish ed to underline that all proposals on the table were 
providing for certain obligations for third country Members. 
74. As to the questions on why the European Communities did not include Article 24.4 and, in 
particular, Article 24.5, as the basis of its challenge  procedures, he said that the reason for that was 
related to the nature of these exce ptions themselves.  Article 24.6, if applicable, would imply that the 
geographical indication would not receive any protec tion whatsoever.  It would not be possible to 
register a geographical indication and to claim excl usive use for that geographical indication where a 
term was considered generic.  Ho wever, Article 24.4 dealt with a di fferent situation as it prevented the 
"continued and similar use of a particular geogra phical indication".  This was not a question of 
preventing GI protection altogether, but rather a situ ation in which certain uses of the name on other 
products were allowed when they had existed for a ce rtain period of time.  In this situation, it would 
be possible to allow these previous uses and, at th e same time, register and protect the geographical 
indication.  This geographical indication would then co-exist in the market with the prior uses that 
would qualify under Article 24.4.  Clearly, a challe nge procedure that would prevent any legal effects 
from happening would not fit with the functioni ng and with the nature of the exception in 
Article 24.4.  A similar situation emerged for Ar ticle 24.5.  He recalled that a recent panel had 
established that co-existence between geographical indication and certain prior trademarks was a 
possibility under the TRIPS Agreement.  Members c ould therefore choose to either grant that co-
existence or not.  However, it would not be appropriate to establish in a system, or to include in a challenge procedure, the possibility for trademar ks to impede geographical indications obtaining 
protection when it was a fact that in certain Members the possibility of co-existence between 
geographical indications and certain prior trademarks existed in their respective internal legal orders.   TN/IP/M/17 
 Page 15 
 
 
  The European Communities was one of these Memb ers and its co-existence system had been 
considered compatible with WTO rules by the Panel. 
Legal Effects/Consequences of Registration 
75. The representative of Switzerland  said that legal effects was the core issue in these 
negotiations.  There was agreement in the Special S ession that on this element Members could not be 
as ambitious as they could in a plurilateral setting,  like WIPO's Lisbon Agreement.  This was so 
because the Special Session negotiations were inst ead conducted in the multilateral framework of the 
WTO.  Nevertheless, Members should not forget that  the mandate for the multilateral system was to 
facilitate the protection of geographical indications as compared to the situation currently available 
today.  His delegation could not see how a mere da tabase of terms, which might or might not be 
consulted by Members, could actually achieve that mandate. 
76. He recalled that his delegation had proposed that the legal effect of the registration of a 
geographical indication in the multilateral system be  the presumption of validity of the registered 
geographical indication in those Members that had not lodged a reservation after its notification and 
before the geographical indication was registered .  This presumption could be rebuttable at the 
national level at any time and on all applicable gr ounds.  Thus, such a presumption would not create 
new rights and obligations, but simply reinforce th e rights GI right holders were already enjoying 
under the TRIPS Agreement.  He believed that such  a rebuttable presumption was a legal effect that 
fully respected the principle of territoriality b ecause the issue regarding the validity of such 
presumption would still be within the competence of the national courts of Members.  Each Member 
would therefore continue to be able to decide wh ether or not a term was a geographical indication in 
its territory and whether it merited protection. 
77. The representative of Australia  said that legal effects was a core issue for her delegation, 
which had a different view from that expressed by the Swiss delegation on what legal presumptions 
would mean and how they fitted within the manda te for these negotiations.  The legal presumptions, 
both in the EC and Hong Kong, China proposals, woul d alter the balance of rights and obligations in 
the GI provisions of the TRIPS Agreement.  They  did this by increasing the rights of GI owners 
against others, be they trademark owners or gene rics producers.  These proposals would also increase 
the rights of GI owners against these other interest ed parties through the reversal of the burden of 
proof. 
78. The representative of the European Communities  said that the EC proposal would not 
introduce substantive new obligations, as had been sugg ested by Australia, but rather some procedural 
requirements in order to facilitate GI protection, which was in line with the mandate.  Conversely, 
simply publishing a list of geographical indica tions exclusively for information purposes, as 
established in the joint proposal, would not guara ntee that protection would be facilitated.  
Additionally, such information would not necessarily be  reliable.  Had the drafters of Article 23.4 of 
the Agreement the intention of simply establishing a list of geographical indications, they would have 
clearly mandated that.  The fact was that they did not have such an intention and had instead 
mandated the establishment of a multilateral syst em for the notification and registration of 
geographical indications.  Multilateral systems of registration, as all Members knew and agreed on, 
carried certain legal effects.   Therefore, it still remained for Memb ers to ensure that any proposed 
legal effects actually met the mandate of fac ilitating the protection of geographical indications. 
79. Responding to the European Communities, the representative of Canada  said that the joint 
proposal had many positive effects.  For example, th e existence of a term in the database could act as 
a deterrent to others considering making use of  the term.  The protection of the geographical 
indications would be facilitated by virtue of the ob ligation of the participating Members to consult the 
database when making decisions regarding regi stration and protection of trademarks and TN/IP/M/17 
Page 16  
 
  geographical indications in accordance with their domestic laws.  This meant that should another 
participating Member receive a foreign or domestic application for a trademark or a geographical indication for a wine or spirit, it would be obliged to consult the database.  In this case 
the registration by participating WTO Members would be revealed to the examiner.  Examiners would 
be aware that this term was protected in another country, whereas in the cu rrent situation there was 
not a single, unified place to find such information. 
80. The representative of Chile
 said that if the intention of the framers of the TRIPS Agreement 
had been to increase GI protection through these ne gotiations, they would have used the language of 
Article 24.1 and not the language of Article 23.4, wh ich simply referred to facilitating protection.  The 
database proposed by the joint proposal would be unprecedented and would have positive legal and 
de facto  effects. 
81. He disagreed with the European Communities' statement that under their proposal decisions 
would continue to be made at national level.  This  could be true for systems for the facilitation of IP 
protection, such as the Hague system for industrial designs or the Madrid system for trademarks.  Under the EC system, however, an unopposed notification would produce the extraterritorial legal 
effects established in para graphs 4 and 5 of the proposal.  This would therefore be in violation of the 
principle of territoriality.  The qualification of te rms as a trademark or geographical indication was a 
decision that should be left to each respective country  to make.  In fact, different perceptions not only 
varied territorially but also temporally.  Hence, what was a protected term one day would not necessarily be protected in the future.  This w as precisely the reason behind the existence of the 
exceptions under Articles 24.4, 24.5 and 24.6 of the Agreement.  In fact, this was a common 
phenomenon in many Members, including in the Eu ropean Communities, a nd this was why some 
trademarks were no longer protected in some countri es.  The same change in the future could happen 
with geographical indications registered under the proposed EC system.  Would Chile, in such cases, 
still have to protect these geographical indications  just because they were in the register?  
82. The representative of the European Communities
 recalled that about a year ago Members had 
had an interesting discussion about the WIPO regi stration systems based on a very useful paper 
circulated as document TN/IP/W/4, which described  how these systems worked.  It had become clear 
from this discussion that WIPO administered a number of systems which aimed at facilitating the obtention of industrial property protection.  In that  paper for example, it was stated that the Madrid 
system for the protection of trademarks had the obj ective of facilitating the obtention of protection for 
trademarks.  WIPO systems all carried legal effects of admittedly varying degrees.  They also had 
challenge procedures and, for example, under the Madrid system, unless refused following national 
examination, the mark in each party would have the same protection as if it had been the subject of an 
application for registration filed directly with the nati onal office.  This was a very strong legal effect.  
There were also effects under the Lisbon Agreem ent, which stated that, unless opposed, notified 
geographical indications would have the protection established in the Lisbon agreement itself.  The 
conclusion his delegation derived from all this info rmation was that those registrations systems of 
which the objective was to facilitate obtaining IP prot ection all had legally binding effects and carried 
the possibility of challenging notifications.  What  his delegation was proposing in these negotiations 
was different from those systems b ecause it had to take into account the fact that Members were 
negotiating in the WTO, not WIPO.  This was why the European Communities was proposing a 
system of presumptions so there would be some legal effects in all Members so as to ensure that 
meaning was given to the word "multilateral" as wr itten in Article 23.4 of the TRIPS Agreement. 
83. The representative of Argentina
 said that while the WIPO systems had the objective, as the 
EC delegate had said, of facilitating the obtention of  protection, the mandate in Article 23.4 of the 
TRIPS Agreement only required the establishment of a system to simply facilitate protection, not to 
obtain it.  The European Communities were basing their proposal on exactly that difference in the 
language.  Additionally, the European Communities cited the WIPO systems as if they had a broad  TN/IP/M/17 
 Page 17 
 
 
  acceptance by WTO Members, which was not the case, particularly in relation to developing 
countries.  For example, with exception of the PCT, virtually no Latin-American WTO Member had ratified any WIPO system.   
84. The representative of the United States
 said that the joint proposal facilitated protection by 
increasing awareness of a geographical indication notifie d to the register.  It would create a database 
that any examining authorities anywhere could cons ult to determine the existence of a geographical 
indication.  All WTO Members would therefore have at their disposal much more information on the 
status of names used to describe wines and spirits around the world.  This information would enable 
US national offices to make better informed decisi ons with regard to providing protection for both 
trademarks and geographical indications.  This w ould not only be helpful, but unprecedented in IP 
systems today, and would be undertaken while ma intaining the current balance of rights and 
obligations in the TRIPS Agreement.  She urged othe rs to engage more on the joint proposal to help 
resolve issues they had with this system. 
85. The representative of Chile  said that all WIPO systems mentioned by the 
European Communities respected the principle of territoriality.  If they foresaw opposition 
mechanisms, those were to take place at the nationa l level within the respective IP offices of their 
member countries.  In fact, the Madrid system, which the European Communities said was the basis 
of their proposal, provided that "the protection of the mark in each of the Contracting Parties 
concerned shall be the same as if the mark had been deposited direct with the Office of that 
Contracting Party".  In other words, what the Madrid System simply did was to facilitate:  a 
notification would arrive at the international o ffice, which would send it to the designated national 
office, which henceforth would simply process this notification as if it had come from inside that 
country, including with the possibility to lo dge oppositions.  This was different from the 
unprecedented effects proposed by  the European Communities. 
86. The representative of New Zealand  said that his delegation was fully aware that some 
Members might not like the way in which the join t proposal facilitated protection of geographical 
indications, but it did so in an effective way,  as required by the mandate, by linking domestic 
administrative procedures with a global database of geographical indications.  This would be a more appropriate way of achieving the mandate to facilita te protection in the intellectual property context 
than other proposals, which carried more substan tive implications for GI protection.  The joint 
proposal could be implemented by Members wit hout necessarily requiring them to amend their 
legislation.  The fact that this proposal could be adaptable to the different systems operated by 
different Members was indeed an advantage.  For example, if the registrar of trademarks of 
New Zealand were required to consu lt a WTO GI database on receipt of  trademark applications at the 
national level, then this might help it when cons idering some of the criteria for trademark protection 
in New Zealand, such as the ability of the trademark to distinguish a product in trade or the capacity 
to cause consumer confusion.   
87. The representative of Australia
 associated herself with the comments made by Canada, Chile, 
New Zealand and the United States on the way in which the joint proposal actually added value and 
facilitated protection.  In Australia, such a proposal  would provide a transparent mechanism with easy 
access to information through its national patent and trademark office.  The basic principle had always 
been the same:  one would not give trademark rights in  a sign that other traders were likely to need for 
a particular product.  The precise mechanisms for enacting that principle were different but it was a 
fundamental and shared principle.  In Australia, existing practice gave examiners a semi-automated 
tool to search dictionaries and atlases when looking at trademark applications.  In certain circumstances, examiners could elect to search additi onal resources.  So, for example, for a trademark 
application in class 33, which was the class for wine in Australia, they would click on a box to add a 
search on the Wine and Brandy Corporation register of protected names.  Australia could use the same 
system in relation to the GI register.  For exampl e, if the mark was in class 33, the examiner would TN/IP/M/17 
Page 18  
 
  then look at the link to the WTO database and be ab le to gain additional in formation on geographical 
indications protected by other Members. 
88. One of the reasons her delegation believed that  the joint proposal facilitated protection was 
because it actually addressed one of the major concerns that led to the in-built mandate on this issue in 
the TRIPS Agreement.  Australia's understanding was that one of the major concerns of GI 
proponents was to ensure that trademarks were not  registered containing or consisting of earlier 
geographical indications, which would then prevent GI owners from selling their products in other 
markets.  This was a concern that had been ra ised at the most senior levels, including by 
Commissioner Mandelson.  The mandate in Article 23 .4 reflected concerns that because not all WTO 
Members protected geographical indications through a registration system, lack of information would 
put GI right holders, as opposed to other IP right holders, at a disadvantage vis-à-vis  trademark 
holders in protecting and enforcing their rights.  Australia believed that the joint proposal would 
address this concern by providing information to IP officers when making decisions regarding the 
registration and protection of trademarks and ge ographical indications for wines and spirits in 
accordance with their national legislation.  Despite all this, the only concern that the 
European Communities and Switzerland had raised in relation to the joint proposal, besides the 
question of reliability of information, was that this proposal would not be effective or sufficient.  Her 
delegation was therefore willing to look at ways to improve the joint proposal and welcomed any 
suggestions to this effect, taking into account the fundamental concerns that many delegations had 
raised with respect to presumptions and their legal effects. 
Final remarks by delegations 
89. The representative of the European Communities
 said that despite the indication by other 
Members that they were engaging constructivel y in these discussions, he was in fact under the 
impression that his delegation was the only one bei ng flexible.  This was so because his delegation 
was the one who had entrusted the Chairman with the task of proposing a compromise, an attitude 
which, by definition, indicated that it was not looking for a solution involving the incorporation of the 
totality of its proposal.  This was different from the approach taken by the proponents of the joint 
proposal, who had decided to adopt a "take-it-or-l eave-it" attitude in relation to their proposal. 
90. The representative of the United States  said that characterizing the comments made by 
Members of the joint proposal as a "take-it-or-leave-it" approach was not in itself a very constructive 
attitude on the part of the EC delegation.  In fact, such a comment missed the point of many 
statements that had been made by the Joint Propo sal Group, which had never said "take it or leave it" 
but rather that it would prefer a bottom-up approach to the future working document.  A number of proposals had been made to either update pre-ex isting documents or take into account suggestions 
made, for example, by the European Communities fo r the proponents of the joint proposal to look at 
different ways of indicating further flexibilities.  It seemed therefore that the European Communities 
was in fact the one Member who had said that it had one single approach it would like others to 
follow.  He said that the United States would be  happy to work with the Chairman in any 
consultations that he might hold and to work acro ss the board, not only with the fellow supporters of 
the joint proposal, which included a broad number of Members, but also with the 
European Communities. 
Chairman's report on consultations held on 12 June  
91. The Chairman
 said that he had held consultations on the afternoon of 12 June with a group of 
delegations on two issues.  One was to see whethe r it would be possible to make headway on the key 
issues in a somewhat smaller setting, in particul ar that of legal effects or consequences of a 
registration.  The second issue was that of the natu re of the working paper which the Special Session  TN/IP/M/17 
 Page 19 
 
 
  should produce by the end of July, and how the Spec ial Session might best organize its work over the 
coming weeks in order to be in a position to produce this paper.  
92. In regard to the key points of difference, the discussion focused larg ely on three questions:  
what was meant in the group's mandate by "facilitate  protection", including whether this should or 
should not entail legal presumptions;  territoriality;  and the integrity or reliability of data in the 
register.  He believed that it was fair to say that the discussion covered much the same ground on 
these points as had been formally discussed in the pr esent meeting.  He was afraid that, both in the 
consultations of 12 June and in the consultations that  he had held in a number of formats since the last 
meeting of the Special Session, he had not been ab le to identify new points of convergence.  Positions 
on key issues clearly remained far apart and it remain ed difficult to identify where the "landing zone" 
for these negotiations might lie.  Some Members had indicated a readiness to consider, at least to 
some extent, ways of taking account of the concerns  of other delegations, but often with the proviso 
that this would depend on reciprocal movement by those other delegations and/or on the overall 
progress of the Round.  It was also not clear to hi m how far the flexibility to which some delegations 
had alluded would, if realized, go in  bridging the gaps that existed. 
93. With regard to the second issue on which he ha d held consultations on 12 June, namely the 
nature of the working paper which the Special Sess ion should produce by the end of July and how the 
Special Session might go about this, he recalled that the "Timelines for 2006" paper in JOB(06)/13 
provided for a working document of the Special Sessi on to be on the table by July 2006.  He believed 
that it remained the expectation that this group s hould be in a position to produce such a paper by the 
end of July.  He also recalled that, at the Special Session meeting in March, he had said that, bearing 
in mind the end-of-year deadline for the Doha negotia tions as a whole, he considered that it would be 
necessary to have, before the summer break, a worki ng document which could be used as a basis for 
the final product and in respect of which ther e would be a good degree of understanding among 
delegations as to where the main outstanding difficulti es to be resolved lay.  He had further said that, 
in order to achieve this by July, it would be d esirable to have made progress in unblocking, well in 
advance of that time, the key difficulties that had impeded the work so far. 
94. He said that during the present Special Session' s formal discussions a range of views had been 
expressed on the nature of the working document th at should be produced.  These included the idea 
that the Chairman might produce a compromise proposal and the notion that the side-by-side 
document might be annotated, for example throug h an annex setting out the points raised by 
delegations in regard to its various elements.  The situation remained ess entially unchanged following 
the consultations of 12 June cons ultations.  One new element was the possibility of a Chairman's 
reflections paper. 
95. He believed that, in the interests of this negotiation and in the Round as a whole, it was 
important that the working document that could be produced by the end of July would be more than 
an options paper which set out the different proposal s on the table.  He was looking to delegations 
over the weeks following the present meeting to be creative in finding new flexibility so that this 
negotiating group could be in a position to play it s part in contributing to the progress that was 
necessary in the Round as a whole by that time.  He  did not believe it would be possible to find a 
solution unless all delegations  were willing to move. 
96. With regard to process, he believed that there was a general willingness to intensify 
consultations over the coming weeks and it would be his proposal that the Special Session schedule 
another formal meeting for 19-20 July.  He would ho ld consultations in a range of formats, including 
with individual delegations, in small groups and in  open-ended format.  However, perhaps even more 
important was an intensification of consultations between delegations holding different views in order 
to make progress on the key issues a nd to identify the "landing zone". TN/IP/M/17 
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  C. O
THER ISSUES  
97. The Chairman  said that he believed that there was ag reement with the proposal that he had 
made to hold an additional meeting of the Special  Session on 19-20 July and that consultations be 
intensified in the meantime.   
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