RESTRICTED  WORLD TRADE  
ORGANIZATION  TN/IP/M/26 
20 October 2010 
 (10-5434) 
Council for Trade-Related Aspects of  
Intellectual Property Rights Special Session 
  
 
 
 
MINUTES OF MEETING 
 
Held in the Centre William Rappard 
on 10 June 2010 
 
Chairman:  Ambassador D. Mwape (Zambia) 
 
 
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 BUSINESS .......................................................................................................................23  
 
_______________ 
 
A. ADOPTION OF AGENDA  
1. The twenty-sixth Special Session agreed  to adopt the agenda as set out in WTO/AIR/3566. 
B. NEGOTIATION ON THE ESTABLISHMENT OF A MULTILATERAL SYSTEM OF NOTIFICATION AND 
REGISTRATION OF GEOGRAPHICAL INDICATIONS FOR WINES AND SPIRITS  
2. The Chairman  recalled that he had prepared the re port in TN/IP/20 for the purposes of the 
TNC's stocktaking exercise, on his own responsibility,  after having consulted the whole Membership.  
In Part II concerning "Future Work", he had ma de several suggestions, which had largely been 
welcomed by delegations.  In partic ular, he had suggested the so-called "3-4-5 approach":  "three" 
stood for the three clusters of issues identified by  Ambassador Manzoor Ahmad in 2008 and reflected 
in paragraph 6 of TN/IP/20;  "four" stood for the four questions posed in October 2009 by 
Ambassador Trevor Clarke regarding legal effect s/consequences of registration, participation and 
special and differential treatment and reflected in pa ragraph 7 of TN/IP/20;  and "five" stood for the 
so-called "five guiding principles" for future work suggested by Ambassador Clarke and reflected in 
paragraph 8 of TN/IP/20.  The Chairman had indicat ed in paragraph 12 of TN/IP/20 that he did not 
exclude the possibility of putting forward more questions as the Special Session progressed in the 
discussions in order to keep the negotiations on the ri ght track.  It was also his impression that the two 
key issues to tackle were legal effects/consequences of  registration and participa tion, but that the first 
one, legal effects/consequences, was the stumbling bloc k.  He had further suggested in his report that 
in the future Members' technical discussions should build upon the work already done, focusing on 
substantive issues, including in par ticular the question of the implications of a register entry:  how did 
national or domestic trademark and GI authorities operate their systems and how would their way of 
operation be affected by different proposed ways of  "taking account" of information on the register. TN/IP/M/26 
Page 2  
 
  3. Pursuant to the work programme for negotiating groups for the period of April-July 2010, he 
had held a series of informal consultations in early  June, in which delegations  had shared their views 
on how to organize the work of this meeting.  Fo r the purpose of transparency and inclusiveness, he 
had shared the outcome of these consultations with the whole membership in an open-ended informal 
meeting on 9 June.  
4. As discussed in his informal consultations, it w as his intention that wo rk in this formal 
meeting should focus on legal effects/consequences of registration, in particular, how Members' 
authorities dealing with trademarks and geographi cal indications operated and how their way of 
operation might be affected by different proposed ways of "taking account" of the information on the 
register.  To that end, he had circulated on 4 J une two sub-questions on legal effects/consequences of 
registration, i.e. questions under the chapeau of the two Chairman's questions of October 2008 on 
legal effects/consequences.  His two sub-questi ons had been made available in all three WTO 
languages the previous afternoon.
1   
5. With respect to the first sub-question he said th at, while he recalled that some delegations had 
already explained how information was taken into account in domestic or national proceedings, only a 
few had pronounced themselves on whether or not taking information into account was a legal 
obligation, and whether a new source of informatio n would automatically be covered by such an 
obligation in, say, a country's trad emark examiner's guidelines.  
6. With respect to the second sub-question, he said that, in light of previous exchanges on that 
issue, Members might find it useful to discuss how the issue of genericness was currently raised and 
treated in certain procedural situations at the na tional or domestic level.  Responses to that question 
could bring out whether or not genericness claims ha d to be substantiated and who bore the burden of 
proving it in current practice. 
7. He said that those sub-questions  were intended to be a starting point for Members' technical 
discussions about national or domestic practices.   While other additional sub-questions might 
certainly be useful in the future to address further aspects of the three clusters of issues, he invited 
Members at this point to address those two sub-ques tions, in order to focus on the "stumbling block" 
of legal effects/consequences of registration.  He also wished to make clear that any other means by 
which Members might have intended to share informati on about their systems at this meeting, such as 
case studies, scenarios or presentations, remained mo st welcome and that delegations wishing to 
address any other issues, including participation an d special and differential treatment, should feel 
free to do so. 
                                                      
1 The two sub-questions faxed on 4 June read as follows: 
 
1. When making decisions regarding the protection of geographical indications and trademarks, 
what sources of information are the relevant national agencies currently legally obliged to take into account and what sanction is available if they fail to do so?  Are additional sources of 
information that become newly available automatically covered by such a legal obligation? 
2. In national proceedings rega rding the protection of geographi cal indications and trademarks, 
what level of substantiation is currently required to raise the issue of genericness of a term and 
who bears the burden of proving genericness or non-genericness 
a. during an application process for protection of a term? b. if a protected term is challenged? 
  TN/IP/M/26 
 Page 3 
 
 
  First sub-question 
8. The representative of the European Union  said that his delegation was committed to work 
along the lines suggested  in the Chair's report of 22 March, i.e. that "technical work should focus on the substantive issues, including in particular the ques tion of the implications of a register entry, while 
using and building on the foundation established by Ambassador Clarke's work".  He recalled 
Ambassador Clarke's questions 1 and 2, relating firstly to the legal obligations that would be 
acceptable, and secondly, the significance and weight to be given to the information on the register.  
Bearing those two significant questions in mind, his delegation was ready to address the Chair's sub-
questions and supplement the information which it had already shared with Members in previous 
meetings.  However, since those sub-questions had been circulated only recently, his delegation 
reserved the right to provide complementary informat ion on those issues in subsequent meetings.  He 
was hopeful that those questions would advance the issue of the effects of the register, which had 
been identified as a crucial area of the negotiations , and would allow them to make progress on the 
other issues. 
9. In addressing the first sub-question concerning the sources of information that domestic 
authorities were "legally obliged to take in to account" when making decisions regarding the 
registration and protection of geographical indica tions (GI) and trademarks, and whether additional 
sources of information that became newly availabl e were automatically covered by such a legal 
obligation, he explained that the European Union had a dual system for the protection of geographical 
indications on the one hand, and for the protection of  trademarks on the other, and that right holders 
had the freedom to choose one system or the other, or a combination of both systems.  He regarded 
the dual approach as business-friendly, since it did not impose any system on the right holder.  In 
responding to the sub-questions, he said he would th erefore deal with the two systems separately.  
10. Starting with the EU's GI procedure for wines a nd spirits, he addressed the first element of the 
question concerning the sources of information that should be taken into account.  GI applications 
were examined by the European Commission serv ices within the framework established by the EU 
law.  On receipt of a GI application, the Commis sion services carried out an ex officio examination to 
determine whether it met the conditions specified in the relevant EU regulations on geographical 
indications, e.g. whether the application met the constitutive elements of a geographical indication, 
and whether there might be any obstacle to the protection of the geographical indication, in particular whether the name was identical with a common name for a wine or a spirit. 
11. During this overall examination process, the Commission services must take the necessary 
steps to ensure compliance with th e requirements established by EU law in relation to the registration 
and protection of geographical indications.  For that purpose, the Commission services would examine the information included in the GI applicati on file, in particular, the name to be protected, 
information about the applicant, and the product sp ecifications, including, among others, a description 
of the product or its area of production and the deta ils bearing out the link between at least a quality, 
characteristic or reputation of the product and th e area of production.  The Commission services might 
also consult and take into account any other sources of information they deemed appropriate, such as 
relevant publications, encyclopaedias, or informati on on Internet websites.  For instance, they might 
consult the information available with the Organisat ion de la Vigne et du Vin (OIV).  Following the 
ex officio examination, an objection procedure woul d be carried out where third parties might file 
duly substantiated objections.  On the basis of all the information available, the Commission services 
would then decide either to grant protection or to reject the application. 
12. With respect to the second part of the questi on concerning "sanction" for failure to take 
sources of information into account in the context of GI procedure for wines and spirits he said it went 
without saying that the Commission services must act in conformity with EU law, both in terms of 
procedures and in terms of substantive assessment.  Any decision on the protection of a geographical TN/IP/M/26 
Page 4  
 
  indication could be challenged before the Europe an Court of Justice, notably on grounds of 
infringement of an essential procedural requirement, of infringement of the European Treaties or of 
violation of any general rule of law relating to their application. 
13. With respect to the third part of the first ques tion, i.e. on whether newly available sources of 
information were automatically covered by such a legal obligation, he said that such additional 
sources of information might be taken into account, but there would be no legal obligation to do so.  
In other words, a newly available source of information would not be automatically covered.  For a consultation of such source of in formation to be compulsory, it would have to be provided for in an 
instrument defining the procedures relating to the gr ant of GI protection, like the EU regulations 
covering geographical indications.  Such provisions should also spell out, crucially, what significance 
any weight had to be given to that information. 
14. Addressing the first question with respect to the EU trademark procedure he recalled that the 
European Union had established a Community trad emark system.  The Community trademark was a 
single title covering the European Union territory as a whole, and trademark applications were 
examined by an European Union agency based in Al icante, Spain, the Office of Harmonization for the 
Internal Market (OHIM).   
15. In terms of what sources of information to take into account, OHIM was guided by the 
requirements established in EU law as complemented by the Examination Guidelines of that office, 
similar to the GI procedures of the European Co mmission.  On receipt of a Community trademark 
application, OHIM started the examination proced ure.  This notably included an examination on 
formalities and on absolute grounds of refusal as set out in the trademark law of the European Union.  
In this context, the applicable legislation did not impose the consultation on any specific source of 
imformation.  However, the examiner was due to ensure compliance with the rules specified in EU 
law or in any other legal instrument which was bi nding or which must be taken into account by the 
Office.  For example, trademark applications which had not been authorized by the competent 
authorities must be refused if they infringed Article 6 ter of the Paris Convention for the Protection of 
Industrial Property.  For that purpose, the exam iner would take into account the "Article 6 ter 
database" available in WIPO.  Likewise, tradem arks consisting of or containing geographical 
indications for wines and spirits could only be regi stered if they covered wines and spirits of the 
specified origin. This should go without saying, but was not the case everywhere.  For geographical 
indications or geographical names protected in th e European Union for win es and spirits, the Office 
took into account the acts legally binding on the Euro pean Union such as the relevant EU regulations 
or international agreements with third countries or regions.  In practice, that information was 
compiled in databases used by examiners.   
16. More generally, when examining an application,  examiners might use any available source of 
information.  For instance, he might rely on inform ation found in dictionaries or on Internet websites, 
or take into account the ordinary understanding of a term.  As previously stated, OHIM had specific 
guidelines for trademark examination and provided fo r continuous training fo r the use of available 
sources of information. 
17. As in the GI procedure, third parties could f ile an opposition procedure on the basis of relative 
grounds for refusal, i.e. in general terms, based on an earlier trademark or on another sign used in the 
course of trade, including a geographical indica tion.  The opposition would be examined by the 
Opposition Division of OHIM on the basis of the elements put forward by the parties.  The decision 
could itself be appealed before the Board of Appe al of OHIM.  Recourse was also possible to the 
General Court of the European Union, formerly k nown as the Court of First Instance, and ultimately 
to the European Court of Justice (ECJ).  TN/IP/M/26 
 Page 5 
 
 
  18. If the trademark office had failed to appropriate ly take into account the relevant legally 
binding European acts during the examination procedur e, then third parties could raise the matter after 
the publication of the Community trademark application.  They might file "third parties observations" based on absolute grounds for refusal.  More ge nerally, if a Community trademark was improperly 
registered, a cancellation action (revocation or invalidi ty) could be initiated, and an appeal might be 
brought before OHIM's Boards of Appeal.  A furthe r appeal could be made to the General Court of 
the European Union and ultimately to the ECJ. 
19. With respect to whether an additional source of information that became newly available 
would automatically be covered by such a legal oblig ation in a trademark examination, he said that a 
new source of information such as a WTO Register w ould not automatically be covered.  This would 
only be the case if taking into account that information was provided for in an instrument that OHIM 
had to implement, like the Community Trademar k Regulation or OHIM's Examination Guidelines. 
20.  As a concluding remark on the first sub-ques tion, he stressed a very important feature 
common to both GI and trademark procedures.  It would not be sufficient to provide for a consultation, because for that source to be truly relevant, the competent authorities would need to 
have clear legally binding guidelines on the conseque nces to be derived from such consultation. As 
delegates were aware, in the majority proposal c ontained in document TN/C/W/52, his delegation and 
the other sponsors attached importance to the fact th at information on the register must be given some 
weight.  That was why in their proposal they had clearly identified which consequences consulting the 
information on the register must have.  The consequences were a fundamental aspect for the 
proponents of TN/C/W/52. 
21. The representative of Hong Kong, China
 said that her delegation welcomed the two 
sub-questions on legal effects and consequences of registration which would facilitate the sharing and 
exchange of technical information among Members.   
22. Recalling that her delegation's proposal (TN/IP/W/8 ) related to a theoretical system, i.e. one 
that had not been implemented in Hong Kong, China, she addressed the Chairman's first sub-question.  
According to TN/IP/W/8, each application to enter a geographical indication on the register would be 
made by the designated representative of a Member.  The information supplied in the application, if 
accepted following a formality examination, would pr ovide prima facie evidence, in cases of alleged 
infringement before Members' c ourts, tribunals or administrative bodies, for ownership of the 
geographical indication, that the term was a geographical indication as defined in the TRIPS 
Agreement, and that it was protected as a geographi cal indication in the applicant's country.  These 
three issues would be deemed to have been pr oved unless evidence to the contrary was produced by 
the other party to the proceedings.  Upon the asserti on that the application was a bona fide application 
made through the representative of the Member, th e Registrar would not enquire further about the 
substance of the claim.  This meant that courts, tribunals or administrative bodies would rely on the 
affirmation of the Member governments.  Accord ing to her delegation's proposal, entries on the 
register would have to be rene wed periodically for a fee, and, upon renewal, Member governments 
would reaffirm the matters attested to in the re gistration and make any necessary factual changes, 
such as those relating to the ownership or qualifica tion for protection under the TRIPS Agreement.  In 
addition, the Members concerned should notify any corr ections to the registrations on the register to 
the body in a timely manner.  
23. However, her delegation did not propose that the Registrar or Members be placed under an 
obligation to supplement information, other than perh aps that of notification if the Member withdrew 
its own recognition or protection of the geographical indication a nd as a consequence of which the 
geographical indication would no longer qua lify under the TRIPS Agreement definition. TN/IP/M/26 
Page 6  
 
  24. The functioning of her delegation's proposal ha d been set out in a room document dated 
28 October  2009.  It contained four hypothetical  case studies dealing with:  firstly, a non-contentious 
notification and registration of a geographical i ndication from a participating WTO Member, at both 
the domestic and international level;  secondly, a co ntentious geographical indication application that 
was resolved at the domestic level before its notifi cation and registration at th e international level;  
thirdly, a non-protectable geographical indication scr eened out by a participating WTO Member at the 
domestic level;  and fourthly, a cont entious notification and registration,  at both the international level 
and domestic level, where the case was finally resolved  at the domestic level in another participating 
WTO Member.  Her delegation hoped that this resp onse to the Chair's first sub-question would assist 
Members in furthering their understanding of the issues involved.  
25. The representative of Canada
 said she would share with Members some preliminary 
responses to the Chairman's questions to supplem ent the information her delegation had already 
provided about how Canada would ta ke into account information cont ained in the register.  Canada 
had two distinct procedures for tradem arks and geographical indications.   
26. With regard to trademarks, applications fo r a trademark registration under the Canadian 
Trade-marks Act were examined by the Canadian Industrial Property Office (CIPO) on both absolute 
and relative grounds, and unless the Registrar of Trad e-marks was satisfied that the application did 
not comply with the Trade-marks Act, the appli cation was published in the Trade-marks Journal, 
following which an opposition proceeding could be initiated before the Trade-marks Opposition 
Board.  The Trade-marks Act did not specify any par ticulars of information to be taken into account 
by the Office during the examination phase.  Howeve r, as a matter of practice, the Office conducted a 
search of the Canadian Trade-marks Database for confusing trademarks that had been previously 
registered or for which protection had been sought .  In the opposition phase, both the opponent and 
the applicant were entitled to submit evidence and make representations, and any such evidence and 
representations had to be taken into account by  the Trade-marks Opposition Board in deciding 
whether to refuse the application or reject the oppos ition.  The failure of the Trade-marks Opposition 
Board to do so would be taken into account by the Federal Court, should the decision of the Board be 
appealed.   
27. With regard to geographical indications, under S ection 11.12(3) of the Trade-marks Act, the 
Minister must be satisfied that the quality, reputat ion or other characteristic of the wine or spirit 
qualified the indication for protection as a geographical indication.  As there was no obligation to take 
into account any particular source of information, an d there was thus no sanction for failure to do so, 
the Minister had the discretion to use any inform ation available to determine whether any quality, 
reputation or other characteristic existed and was esse ntially attributable to the geographical origin of 
the wine or spirit.  The party requesting protection for the geographical indication was free to bring to 
the Minister's attention any sources of information th at might be relevant, including those that became 
newly available.  An interested party, that objected to the protection of the geographical indication, 
could also refer to any source during the objection period. 
28. While there was currently no legally binding oblig ation to use given sources of information, 
her delegation had already indicated that, should the joint proposal be accepted, Canada could accept 
an obligation for domestic decision makers to cons ult the register when making decisions regarding 
the registration or protection of trad emarks and geographical indications. 
29. The representative of New Zealand  welcomed the Chairman's questions which he said were 
useful for focusing their ongoing discussions on practical issues and sharing of Members' national 
procedures.  He said that, having just received t hose questions, he would e ndeavour in good faith to 
provide some preliminary responses.  His delega tion would also refrain from making any judgments 
on the meaning of some of the terms used in the sub-questions, such as "substantiation" or "legally 
obliged".  TN/IP/M/26 
 Page 7 
 
 
  30. He recalled that New Zealand did not have a sui generis  system, and therefore geographical 
indications could be protected in New Zealand thr ough different avenues.  The principal avenues of 
protection were through the trademark system or  through the general co mpetition and consumer 
protection law.  In the trademark system, geogra phical indications could be protected, including as 
certification or collective marks, under the Trade Mark s Act 2002, and that avenue had been used by a 
number of foreign GI owners.  In contrast, unde r New Zealand's general competition and consumer 
protection law, protection for unregistered trademar ks and geographical indica tions could be obtained 
through the common law action of "passing off", thr ough consumer protection law or under its Fair 
Trading Act 1986.  That was in fact how "Champa gne" had obtained protection in New Zealand in a 
case that predated the TRIPS Agreement.  With rega rd to the Chairman's first sub-question, he said 
that those two avenues of protection had to be considered separately.   
31. Firstly, under the trademark system, the Intellectual Property Office of New Zealand (IPONZ) 
was required to consider a number of sources of in formation, when determining whether there were 
relative grounds that would prevent the registra tion of a term under New Zealand's Trade Marks 
Act 2002.  Those sources included New Zealand's nati onal trademark register, in order to determine 
whether protection was precluded by an earlier trademar k that was identical or confusingly similar.   
32. A second source of information was New Zeal and's national legislation, particularly 
legislation that would impact on the registration of  the term.  For example, the Flags, Emblems and 
Names Protection Act 1981 provided for the non-registrability of certain names.   
33. A third source of information, which was proba bly unique to New Zealand, was information 
and advice provided to the Intellectual Property Offi ce by the Maori Advisory Committee.  The Maori 
were the indigenous people of New Zealand.  One of the ways that Maori traditional knowledge and 
traditional cultural expressions were respected in the Trade Marks Act was through the prohibition of 
the registration of a term offensive to Maori.  Consequently, in determining whether the use or 
registration of a term would be offensive to the Ma ori, the Intellectual Property Office was obliged to 
take into account the information and advice provided by the Maori Advisory Committee.  
34. A fourth source of information would be intern ational obligations, for example those provided 
by the Paris Convention.  
35. In short, those were some of the sources of information which the Intellectual Property Office 
was obliged to take into account, and failure to take account of those sources of information would 
provide grounds for a successful judicial review of the decision of the Intellectual Property Office.  
36. There was, however, no express legal requirement that obliged the Intellectual Property 
Office to consult specific sources of information when determining whether a trademark had a 
distinctive character.  As a result the sources of info rmation that would be c onsidered were potentially 
infinite and at the discretion of the examiner.  Con sequently, an obligation to consult an international 
register would thus constitute a significant additi onal element in New Zealand's domestic system.  In 
terms of sanctions, failure to consult that regist er would provide grounds for a successful judicial 
review of the decision of the Intellectual Property Office. 
37. Lastly, he said that it should be noted that le gislation in New Zealand did not predetermine 
the weight to be given to any particular source of information.  Rather, it considered it important to 
leave intellectual property examiners with the di scretion to weigh all the evidence on a case-by-case 
basis, and not have their decision biased through legal devices such as presumptions.  Consequently, 
his delegation did not concur with  the delegation of the European Union that the consequences of 
registration on an international regist er should be prescribed in advance. TN/IP/M/26 
Page 8  
 
  38. In relation to unregistered trademarks and ge ographical indications, he briefly noted that 
decisions on the protection of unregistered geogr aphical indications and trademarks under New 
Zealand consumer protection law and competition la w were made by the standard courts, the High 
Court in that case.  Consequently, the usual evid ential requirements of that Court applied.  The 
litigants were entitled to draw on any sources of ev idence that they wished in support of their 
argument.  The Court would consider any eviden ce before it, but had discretion to weigh that 
evidence as it saw fit on a case-by-case basis.  Failure to take account of the relevant evidence to it 
would provide grounds for an appeal of the Court's decision. 
39. The representative of Switzerland
 said that her delegation had appreciated the Chair's 
consultations in the recent days, and welcomed th e sub-questions, which w ould allow more detailed 
discussions on the significant technical issues.  In  response to these sub-questions, her delegation 
would like to share some preliminary information to complement the explanations it had already  provided on the manner in which her delegation e nvisaged setting up a multilateral system at the 
national level.  In line with her delegation's proposal under TN/C/W/52 for the establishment of a 
register applicable to all products, her delegati on's response to his sub-questions would contain 
general information on the Swiss system, a nd would be applicable to all products. 
40. The Swiss authorities, when making decisions on the protection of geographical indications or 
trademarks were compelled to use sources of law, including international treaties.  That obligation 
pertained not only to using those sources of informati on, but also to the legal consequences in taking 
into consideration that information in order to dete rmine whether a third party had to be protected or 
not.  All other sources of information not associat ed with this legal obligation were used on a 
discretionary basis by the authorities in order to take a substantiated decision.  
41. As other delegations had stated, the applicant or a third party could, of course, provide 
information on several occasions.  Such informati on would be duly taken into consideration by the 
relevant authorities in line with the applicable proce dural rules in a specific case.  She reiterated that 
new sources of information, unless based on a legal ob ligation, would not be s ubject to that general 
obligation to use that particular source of info rmation or to take into account any information 
provided.  Such a legal obligation would therefore have  to become applicable.  She noted that the joint 
proposal was not sufficient to facilitate the protec tion of geographical indications because it did not 
contain such a legal obligation and did not provide for the weight to be given to the information 
contained in the register.  The sanctions for fa iling to consult or not taking into consideration 
information in the first category of cases she had en umerated depended on whether the source of the 
obligation was national legislation or an internati onal instrument.  If it was national legislation there 
were remedies available to contest the decision by the national authority.  If the legal obligation came 
from an international, bilateral or indeed multilatera l or plurilateral treaty, a remedy or an appeal 
could be invoked at the national level, provided mech anisms were provided for in such treaties.  Very 
often diplomatic channels could also be used  where an obligation had been violated.   
42. For other sources of information which were not prescribed by a legal obligation, there were 
no sanctions, save under the applicable procedural laws  to take into account information provided by 
the parties to a dispute or by third parties.   
43. On a more general plan, she stressed the im portance, at the multilateral level and in the 
context of these  negotiations, to have an obligation to consult and use that information on the register, 
and to set out the legal effects of information on th e register in line with the proposal contained in 
TN/C/W/52.  It was her delegation's view that if such a legal obligation was not set at the 
multinational level, there was a risk that it would be  left to the national authorities whether or not to 
take the information contained in the register into consideration.  Therefore her delegation considered, 
in line with the TN/C/W/52 proposal, that it was cruc ial to set such obligations at the multinational 
level, otherwise the register would not have the necessary clout to ensure protection at the national 
level.  TN/IP/M/26 
 Page 9 
 
 
  44. The representative of Australia  said her delegation supported th e three-four-five approach 
outlined in the Chair's March report and saw partic ular value in continuing the ongoing technical 
discussions and sharing of national experiences to deepen Members' understanding of how the various 
proposals for a register could be implemented in the various national systems.  Furthermore, her 
delegation regarded the Chairman's sub-questi ons as extremely useful and would welcome any 
additional questions concerning legal effects. While  these questions were still being considered in 
capital, she wished to share with Members a preliminary good faith response to demonstrate 
Australia's welcoming of those questions.   
45. Australia had several systems for the protection of geographical indications:  the Australian 
Wine and Brandy Corporation, on the one ha nd, was responsible for the determination of 
geographical indications for wine and the Trademar ks Act, on the other hand, protected geographical 
indications through certification and collective marks.   She recalled that her delegation had provided a 
fulsome  report in the March Special Session and therefore she would refrain from setting out how 
those systems functioned.  Turning to the trademar k system, she said that the trademark practice in 
Australia had evolved over 120 years, so that Austra lian examiners drew on and relied heavily on that 
practice.  The types of information that were re levant for examiners depended among other things on 
the class covered by the trademark.  If the trad emark was a pharmaceutical-related trademark, then 
certain sources of information would be looked at and if the trademark was registered in class 33, then 
the specific wine register of the Australian Wine a nd Brandy Corporation would be a relevant source 
for trademark examiners to draw upon.  In genera l, however, Internet searches, dictionaries, and 
public sources of information were relevant when making determinations about whether a term could 
be protected as a trademark or a geographical indicat ion.  In addition, trademark examiners relied on 
precedents if there were cases of a similar kind, and gazettes were also a useful sources of information.  She said her delegation would respon d more fully to the Chairman's sub-question in 
future meetings, and further suggested that a si de-by-side comparison of the proposals on the table 
would be useful to engage substantively in mo re detail on the different proposals put forward in 
writing. 
46. The representative of Korea
 said that the establishment of a registry system should be in line 
with the mandate and consistent with the provis ions of the TRIPS Agreement.  Above all, the 
multilateral register should not impos e a heavy burden on developing co untries, including Korea.  In 
that context Korea considered some elements of the TN/C/W/52 proposal, such as mandatory 
participation and the legal effects of registrati on as unduly burdensome for developing countries.  
Nevertheless, his delegation was open to discuss those issues with the proponents to explore possible 
solutions.  The best way to achieve  a convergence in these negotiations was to delve into details.  An 
analytical discussion on the existing positions would not be conducive since the position of each Member was already well known.  In that context, hi s delegation considered that the sub-questions, as 
proposed by the Chair, on various technical issues could be extremely useful and would highlight the 
benefits and shortcomi ngs of each proposal.   
47. In response to the Chairman's sub-questions, he said that his delegation would do its utmost to 
provide some preliminary answers.  On the firs t sub-question regarding the sources of information 
that national agencies were currently legally obl iged to take into account for the protection of 
geographical indications and trademarks he said that  Korea's system for the protection of geographical 
indications was divided into two sub-systems:  geographical indications for industrial goods were 
protected under the relevant trademark rules of the Korean Intellectual Property Office, while 
agricultural geographical indications were protected under the GI protection system of the Ministry of 
Agriculture. 
48. The relevant rules for the protection of geogra phical indications of the Korean Intellectual 
Property Office did not specify any specific sources of information for reference and the relevant 
national authorities were therefore not legally oblig ed to take into account any specific sources of TN/IP/M/26 
Page 10  
 
  information.  However, information available fro m existing databases, the Internet and articles of 
international literature would be fully taken into account by the competent officers of the Korean  
Intellectual Property Office. 
49. Regarding the question of sanctions for failure  to take into account a valuable source of 
information, he said that the applicant would always  have the right to bring a case before the Korean 
court, which was the case under the Korean intell ectual property system, once the registration process 
was fully completed.  With respect to new additional sources of information he said that these would automatically be covered by such a legal obligatio n and that the Korean competent officers would 
take into account any new sources of informati on, provided certain criteria were met.   
50. The representative of Japan
 expressed the hope that the negotiations in the Special Session 
would be further enhanced towards significant conver gence. To that end, Japan believed that more 
pragmatic and practical discussion was needed.  Recalling that his delegation had already set out how the joint proposal could be domestically implemented,  he would further elaborate by responding to the 
Chair's sub-questions.  With regard to the firs t sub-question on what sources of information the 
national authority consulted he said that in the ex amination of trademark applications, the examiner 
consulted the database, including the list of appella tions of origin for wines and spirits registered 
internationally under the Lisbon Agreement for the Protection of Appellations of Origin and their 
International Registration.  When an examiner found that a trademark application failed to satisfy at 
least one of the requirements for the registration of a trademark, the application would be rejected.  In 
the course of the examination, the national authorit y was not legally obliged to consult any specific 
source of information.  As for GI protection, the na tional authority also consulted relevant information 
relating to GI registers in foreign countries. 
51. The representative of Mexico
 said that her delegation needed some time to consult with the 
authorities in the capital to respond to the sub-questi ons.  She would, however, attempt to provide an 
overview of the system for geographical indications in  Mexico.  As to the first sub-question, she said 
that the industrial property law in Mexico defined a geographical indication as a name that indicated a 
product originating from a given place, the quality an d characteristics of which were due exclusively 
to the geographical environment, including natural and human factors.  Mexico also used the definition contained in TRIPS Article 22.1.  The in dustrial property law considered that international 
treaties to which Mexico was party were valid rule s throughout the territory.  Those treaties included 
the Lisbon Agreement, the TRIPS Agreement, and the Paris Convention.  Mexico  also had a bilateral 
agreement with the European Union that included chapters on intellectual property rights, including 
protection for geographical indications. 
52. As to the procedures on how to enforce that prot ection, it was stipulated that an application 
complying with the IP office's requirements had to be filed.  The right would be cancelled only if the 
office decided that it was to be cancelled, for example because the trademark holder had let the 
trademark become generic.  In Mexico, the parti es had the burden of proof for their allegations, in 
other words the parties had to provide the basis for their applications or requests.  However, with 
regard to annulments or termination of the protec tion, the burden of proof was reversed and such 
applications had to be substantia ted.  She said that her delegation would provide greater details in 
writing on the system for geographical indications in Mexico. 
53. The representative of Chinese Taipei
 welcomed the Chairman's sub-questions and said that it 
would be helpful for Members to have a better unde rstanding of how Members operate their system at 
the domestic level.  
54.  She gave preliminary responses to the first sub-question regarding domestic practices.  
Firstly, when making decisions regarding the protec tion of geographical indi cations and trademarks, 
the intellectual property examiner consulted the da tabase containing prior registered trademarks and  TN/IP/M/26 
 Page 11 
 
 
  other relevant information, including a special fo lder of names and representations that were not 
allowed to be registered as trademarks.  The special  folder contained the notifications received from 
WIPO under Article 6 ter of the Paris Convention, names and logos of government authorities and 
names of agricultural products.  The intellectual property examiners would consult the database when 
making a decision on whether an application violated  the Trademark Act, for example if the sign was 
identical or similar to a geographical indication for a wine or a spirit of a country or region that 
protected trademarks and that was designated for the protection of a wine or a spirit.   
55. Second, if examiners failed to consult sour ces of information and that had a substantive 
effect, the decision would be regarded by the hi gher level competent authority as violating the 
Trademark Act and the decision would be revoked .  If additional sources of information were 
available, for example a multilateral system of  notification and registration of geographical 
indications for wines and spirits, newly established on  the basis of the joint proposal, those additional 
sources of information would become available for examiners to consult and thus facilitate the GI 
protection of wines and spirits.  This was how the system operated at the domestic level.  
56. The representative of Malaysia  welcomed the Chairman's new sub-questions, and would give 
preliminary responses, pending further input from the capital.  There were two ways to obtain 
recognition of a geographical indication in Malaysia :  through registration and through a judicial 
decision. 
57. With respect to the first sub-question, when an application for registration was filed, the 
Registrar would conduct a formality check on the app lication.  If the formality requirements were met, 
the application would then be published and any party could then oppose the registration.  The 
opponent and the applicant were required to file supporting evidence by way of statutory declaration 
in support of their opposition and app lication.  Based on that process, to answer the first question in 
terms of the sources of information that should be taken into account, the Registrar was required to 
consider the evidence and submissions as submitted by  the applicant and the opponent.  It was up to 
the applicant and the opponent to submit the appropria te evidence and documents as they saw fit.  If 
any evidence became newly availa ble, that information could be  included by both applicant and 
opponent in their submission to the Registrar.  The weight to be attached to the evidence was for the 
Registrar to decide.  Additionally, at the discre tion of the Registrar, any such document, further 
document, information or evidence could be requested.  
58. There was generally no sanction if the sources of information were not taken into account.  
However, failure to take into account relevant in formation could lead to the wrongful inclusion or 
rejection of a geographical indication from the Register .  In that context, if a geographical indication 
was wrongly included in or rejected from the Register, the decision of the Registrar could be appealed to the High Court.  Additionally, the registration of the geographical indication could be cancelled by 
the Registrar upon the request of any interested parties.   
59. The second way of obtaining recognition of a geographical indication in Malaysia was 
through a judicial decision.  In that case, the normal evidential and procedural requirement which 
applied in a civil case would be applicable.  Th e High Court would make its decision based on law 
and parties' submissions.  The parties could subm it any information and evidence to support their case 
for the court's consideration.  Additionally, the court had the power to take judicial notice of any fact in making its decision. 
60. The representative of the United States
 said that the views of his delegation on the proposals 
on the table were well known as was its willingness to engage in a practical, technical discussion that 
might assist in moving the process forward.  His delegation welcomed questions 1 and 2 of the previous Chair's set of four questions that were  intended as an initial step to encourage technical 
discussion of how Members would implement the manda te for a notification and registration system 
for geographical indications for wine and spirits.    TN/IP/M/26 
Page 12  
 
  61. While his delegation had a common interest in  understanding the status quo in each Member, 
it did not share any assumption that might underlie th e first sub-question that all Members necessarily 
had a legal obligation to take some action or otherw ise act in some specific manner.  Furthermore, his 
delegation could not agree with any underlying  assumption that protection for geographical 
indications had to be through a " sui generis " system, as the TRIPS Agreement explicitly recognized 
that that might not be the case.  He therefore sugge sted that in future meetings it might be best to 
rephrase that inquiry to be more precise and avoid an y such implication.  As those questions had only 
been circulated the previous week, his delegation needed more time for reflection and consultation 
with capital.  Accordingly, while making a sim ilar disclaimer as that expressed by the New Zealand 
delegation, his delegation was pleased to share some preliminary thoughts.  
62. With respect to the first sub-question he sai d that the phrase "decisions regarding protection 
of geographical indications and trademarks" w as quite a broad concept and could encompass a 
number of situations.  He recalled that in the Un ited States geographical indications were protected 
through several mechanisms, including the trademark system, but at this meeting he would look more 
closely at more basic situations that might be relevant for purposes of the negotiations.   
63. The United States Patent and Trademark Of fice (USPTO) was responsible for issuing 
registrations for trademarks, collective marks and certification marks, including marks containing or 
consisting of a geographic element.  Where a fore ign consortium applied for a registration of its 
foreign geographical indication as a US certification mark at the USPTO, in order for a certification 
mark to be registered it must meet the requirements of US law and the relevant rules of practice.  In making decisions on registrability, an examining a ttorney at the USPTO was guided by the trademark 
statute, the case law interpreting the statute, th e USPTO practice manual, and examination guides.  
With respect to the registrability of a certifica tion mark, the USPTO examiner ultimately had to 
evaluate a number of aspects relating to the mark , including whether the mark was generic, i.e. 
whether it was the customary term for the product, or whether the product originated from the place 
indicated in the certification mark, or whether th e mark or something very similar was already 
registered as a trademark.  
64. In making that evaluation, the examining attorn eys would use various sources of information, 
including the USPTO Trademark Search Database , publicly available online sources, and other 
databases.  Examining attorneys also generally sear ched for what was describ ed in their manual as 
"relevant evidence", that is to say, evidence, or lack thereof, of how the term was or was not used by 
industry as well as how it was perceived by the US  consumer.  Such evidence could be found in 
newspaper or magazine articles, Internet websites,  dictionaries, gazettes, and similar sources.  Any 
relevant evidence provided by the applicant was al so considered when making a determination of 
registrability.  In a manner similar to New Zealand,  the USPTO would weigh all relevant information, 
without ascribing any prescribed or predetermined weight. 
65. The USPTO was required to properly consider ev idence offered by the applicant to rebut a 
refusal to grant registration for a geographic name.  To the extent that an applicant believed the 
examining attorney had failed to properly consider such evidence, the applicant could appeal to the 
USPTO's Trademark Trial and Appeal Board, and then e ither to a US district court or to the Court of 
Appeals for the Federal Circuit.  A third party could also oppose a registration as not having met the appropriate statutory requirements before the Board and appeal that decision to a court. 
66. Addressing the second part of the first sub-qu estion, he said it would make sense for new 
relevant resources to be automatically considered as part of the examining attorney's evidentiary 
search.  Any new, noteworthy resources would be flagged in their examination guides.  It appeared 
that the general outline of the US procedures were not  so different from those that had been described 
by other delegations.  In that context, therefore, the GI register for wines and spirits in the form 
outlined in the joint proposal (TN/IP/W/10/Rev.2)  would be a helpful innovation as it would add a  TN/IP/M/26 
 Page 13 
 
 
  direct, centralized resource in a WTO language that would be updatable, provide a measure of 
reliability and be broadly available to Members.  He added that that was a resource which was not 
currently available. 
67. In concluding, he said that previous interven tions had been extremely useful and that he 
hoped to see the minutes to be able to ascertain the extent of common relevance as well as divergent 
viewpoints.  Finally, having described one of the situations presented in the US legal context, and 
having heard similar narratives from other Members, he  suggested that the sub- questions in the first 
sub-question might be rephrased and further broke n down to elicit more comprehensive and helpful 
information from Members.   
68. For that purpose he suggested the following six sub-questions:   
(a) When considering whether a geographical  indication qualifies for protection as a 
trademark or under another system of protection, what sources of information did the relevant national authorities take into account?  
(b)  Was there any record of the information that was considered or taken into account in 
making a decision?  
(c)  If so, was the information available to the public in the examination files? 
(d) When was it possible for a third party to provide information that was not taken into 
account? 
(e) Could this information be the basis for having a decision changed? (f) Did Members have measures in place to ensure  that responsible officials or examiners 
took into account relevant information? What were those measures? 
69. The representative of Chile
 said his delegation had appreciated the informal consultations 
held prior to this meeting and welcomed the Chai rman's sub-questions, whic h he believed would help 
focus on the technical issues in these negotiations.  For the process to move forward, his delegation 
would give preliminary repli es pending further comments to be received from his capital.  
70. With regard to the first sub-question, the Chilean system had two separate registers under its 
intellectual property law, one for trademarks and one  for geographical indications.  The latter covered 
all types of products, and was open to both local and foreign geographical indications.  The levels of 
protection granted by Chilean law to the various pr oducts identified by geographical indications was 
consistent with the TRIPS Agreement, in other wo rds there was an additional level of protection for 
geographical indications for wines and spirits.   
71. He would not dwell on the specific requirement s for each procedure, but in general terms 
intellectual property law in Chile provided for trad emarks and geographical indications specific and 
different conditions for registrab ility and opposition procedures, where third parties could claim their 
rights and submit to the Institute of Intellectual Prope rty any type of informati on to substantiate their 
rights.  However, as was the case in other countries, Chilean law contained no obligation to consult a specific source of information, but rather establishe d criteria which the examiner of the Institute had 
to follow in order to determine wh at the relevant information was in each case.  Even when there was 
no legal obligation to consult a specific source of info rmation, obviously all of the binding standards, 
including international treaties signed by Chile wh ich contained provisions on GIs, were taken into 
consideration in the register process. TN/IP/M/26 
Page 14  
 
  72. With regard to the sanctions for not consultin g information, he said that a decision on the 
registration or rejection of a trademark GI app lication taken by the national intellectual property 
institute could be appealed before  the intellectual property court and further before the Supreme Court 
of Justice if substantive rights ha d been violated in that process. 
73. The representative of the European Union
 said that New Zealand's remark that the manner in 
which the information of the register was take n into account should not be prescribed was in 
contradiction with an obligation to  take information on the register into account, which was advocated 
by the proponents of the minority proposal.  If the information was not to be taken into account, then 
the exercise would be pointless.  In this connection,  he agreed with the Swiss delegation that it should 
not be up to Members to decide whether or not to take into account information on the register, 
essentially for the following reasons:  firstly, leaving Members to decide would create legal 
uncertainty and discrepancies, and would of course not be in the interest of the right holders or of 
business in general;  and secondly, the European Uni on considered that it did not fulfil the mandate 
which called for a registration system, not a database system.   
74. With respect to the new list of questions pr oposed by the US delegation to amend the 
Chairman's sub-questions, he said that, while his de legation did not wish to leave any stones unturned, 
it considered that the purpose of the discussions was to make progress and not to create further 
questions.  It was his view that the questions circul ated by the Chair after taking into account the work 
of his predecessor were fully sufficient and comprehensive. 
75. In response to the comment by the European  Union, the representative of New Zealand  
reaffirmed his delegation's support for an obligation to consult the register, an obligation that was 
embodied in the joint proposal (TN/IP/W/10/Rev.2) proposal, and said that under New Zealand's 
administrative law an obligation to consult the source of information implied an obligation to take that 
information into account.  His delegation did not co nsider that taking information into account meant 
that the relative weight of that information needed  to be prescribed, or that any particular source of 
information needed to be predetermined as a domina nt source.  Nor did his delegation consider that 
one particular source of information should bias a deci sion maker in a particular direction.  In short, 
his delegation was for consulting the register;  it w as for taking that information into account, but it 
was against predetermining the weight of that evidence.  
76. The representative of the European Union  said that he was pleased to note the confirmation 
by the delegation of New Zealand that the minority  proposal contained an obligation to take the 
register information into account because otherwise it would be without any value.  However, when 
considering the meaning of such an obligation to take into account, no answer was forthcoming 
except that the weight of the information should not be prescribed, which created legal uncertainty 
and failed to answer the question. The affirmation that no dominant source of information should be 
prescribed showed that there was an understanding of what was not meant, but no understanding of 
what was meant.  That lack of understanding of the proposal was a fundamental flaw as without it 
there was uncertainty as to whether the mandate was fulfilled or not.  
77. The representative of Australia  expressed her delegation's s upport for Chile's statement in 
response to the first question and joined Chile in appreciating the Chairman's informal consultations 
and his demonstrated commitment to openness and transparency in conducting these discussions.  As 
to the European Union's question on legal effects, she referred delegates to the minutes of the TRIPS 
meeting of the Special Session held in Marc h 2010 in document TN/IP/M/25, in particular 
paragraphs 56-64, in which her delegation had given its response concerning legal effects.   
78. In addressing the point discussed between New Zealand and the European Union, her 
delegation was in agreement that upon the intro duction of any obligation to consult the register 
Australia would also bear that obligation in line  with her earlier intervention that the trademark  TN/IP/M/26 
 Page 15 
 
 
  examiner would have to turn to relevant inform ation sources.  She recalled that, in Australia, the 
Australian Wine and Brandy Cooperation Act alr eady had a register of wines which trademark 
examiners were obliged to consult during a trademar k application for wines.  If a multilateral register 
for GIs for wines and spirits was added that woul d also be something trademark examiners would 
have to take into consideration.  
79. She said that where the difference of views was - and perhaps the confusion – was that the 
multilateral register, as proposed by the delegation of the European Union, would create a burden to 
disprove a geographical indication and would seem to have an extra-territorial effect in that way.  It 
would seem strange that, rather than there being a formal application in a domestic system there 
would be an international presumption that would crea te an obligation to disprove whether a term was 
a geographical indication or not, not on the basis of an application but on the basis of the mere fact 
that it was on a multilateral register.  To have a universal presumption in favor of terms on that 
register would in fact be quite a burdensome requirement. 
Second sub-question 
80. As regards the consideration of genericn ess during the application process and when a 
protected term was challenged, the representative of New Zealand  said that his country had a dual 
system for obtaining protection: firstly through registration of a trademark or a certification mark;  and secondly under the general law on cons umer protection and competition.   
81. With regard to registered certification marks, during the application for protection of a term, 
the burden was on the applicant to satisfy the examin er that there were no grounds that would prevent 
registration, such as genericness.  The applicant had to prove, through written submissions based on 
case law or evidence of use during the application process that the term was non-generic. 
82. The question of genericness could also be raised by the examiner or by interested third parties 
who had an opportunity to oppose the registration.  Th e failure of either of those parties to raise 
genericness would not, however, absolve the GI owner from having to prove that the term was non-generic and deserved protection.  If, during the app lication process, the examiner became aware of a 
possible issue of genericness as a result of his or  her own research, then the examiner would inform 
the applicant and would reference the relevant source  of information.  As stated previously, the onus 
of proof was on the applicant to establish that the trademark was eligible for registration, including 
that it was non-generic. 
83. In the case of third parties, the grounds for oppos ing an application had to be raised in a 
signed notice of opposition, supported by evidence.  The onus of proof remained on the applicant to 
establish eligibility for registration, including non-genericness.   
84. In relation to the protection of unregistered tr ademarks and geographical  indications through 
general consumer protection law and competition law,  the GI owner bore the burden of proving that 
the term was not generic.  The party opposing pr otection could provide evid ence of genericness if it 
wished, but failing to do so would not absolve the GI owner from having to prove that the term 
deserved protection. 
85. Finally, in response to part b of the second sub-question, i.e. where a term was already 
protected, he said that in that case it was still po ssible in New Zealand for that decision to be 
challenged and in that situation the burden of proo f was actually reversed:  the person challenging that 
protection on the grounds of genericness or any other reason had the burden of making out a prima 
facie case that the term was not originally registrable.  TN/IP/M/26 
Page 16  
 
  86. The representative of Hong Kong, China
 said she believed that the second sub-question was 
addressed to Members that operated a GI register .  Hong Kong, China like other common law systems 
protected geographical indications as certification and collective marks and therefore the question of 
whether a mark was distinctive or generic was settle d as a matter of general trademark law.  During 
the application process the level of substantia tion required to prove the genericness or non-
genericness of a geographical indication was that the geographical indication was capable of 
distinguishing goods of members of the association which was the owner of the collective mark from 
those of other undertakings, or in the case of a certification mark, capable of distinguishing certified goods from uncertified goods.  
87. As for the burden of proof during the applicati on process, the general principle was that he 
who asserts must prove, that is to say the applicant for the registration of the geographical indication 
bore the burden of proving non-genericness.  In rela tion to part b of the second sub-question, if a 
geographical indication protected as a collective mark  or a certification mark was challenged in an 
invalidation proceedings, the level of substan tiation required to prove the genericness of a 
geographical indication was that it was not capable of distinguishing goods of members of the 
association owning the collective mark from those of other undertakings or, in the case of a 
certification mark, certified goods from uncertified goods .  As to the burden of proof in invalidation 
proceedings, the general principle was again that he  who asserts must prove, that is to say the 
applicant for the declaration of invalidity of the registration of a geographical indication as a collective mark or certification mark would b ear the burden of proof of non-genericness. 
88. The representative of the European Union
 said, regarding the second sub-question concerning 
the level of substantiation required to raise the i ssue of genericness and of who bore the burden of 
proving it, he said that substantiation was of inter est to all.  It allowed identifying the facts and 
evidence supporting a statement. This was the case among parties to a procedure.  His delegation 
considered that any administrative decision should be motivated.  They should contain not only the 
references to the applicable legislation, but also to  the facts, the arguments, and the evidence that had 
been used to arrive at the decision.  Clear and sufficient demonstration by a party making a claim was 
absolutely essential in order for the other party to  have the possibility to bring counter-arguments 
appropriately.  Motivation of a decision was pivot al to permitting informed choices to be made 
regarding possible legal challenges. 
89. He recalled that the European Union had a dual system, on the one hand, a separate GI system 
of registration and, on the other, a trademark regi stration system, and therefore he would deal with 
each system separately.   
90. On sub-question 2.a relating to geographical indications for wines and spirits and the 
examination procedure, in accordance with EU law,  a term might be refused GI protection if it was 
found that it had become the common name of a wine or spirit in the European Union, even if it 
related to a place or region where the product was orig inally produced or marketed.  That ground of 
refusal might be examined ex officio by the Comm ission services.  When third parties relied on this 
ground, they must submit duly substantiated statemen ts.  GI applicants might file observations and 
evidence to counter claims of gene ricness.  In all cases, the final decision adopted by the Commission 
services must be motivated. 
91. With respect to sub-question 2.b, i.e. in case of  a challenge of a protected term, he said that a 
decision by the Commission services finding genericness or failure to find genericness could be 
challenged in the court within two months after it ha d been issued or published.  It was for the entity 
challenging the decision to bring any fact or law to establish that the Commission services were wrong.  If there was no challenge brought against  the Commission services' decision within these two 
months, the EU Regulations provided that the pr otected name could not become generic.    TN/IP/M/26 
 Page 17 
 
 
  92. A similar distinction should be made between the examination procedure before registration 
and after a protected term was challenged.  Firstly, during the examination procedure, under 
Article 7(1)(b) and (d) of the Community Trademark Regulation, the trademark examiner would notably verify that the mark was not devoid of any distinctive character or did not consist exclusively 
of signs or indications which had become customar y in the current language or in the bona fide and 
established practices of trade.  Likewise, third pa rties could file observations based on those grounds 
and should submit any facts, arguments and  eviden ce in support of their statements.  The examiner 
would consider whether the observations were well founded, and, if so, he would invite comments 
from the trademark applicant, and might subsequently amend his assessment.  In all cases, the examiner was required to provide a motivated  decisi on.  To substantiate his decision, in addition to 
the information provided by the parties, he might also refer to EU legally binding acts or to other 
available tools such as dictionary entries, information found on the Internet, or the ordinary understanding of a term.   
93. In the case of a challenge of the registered trademark, cancellation actions (revocation or 
invalidity) could be initiated on the ground that the trademark had become generic.  In that case the 
burden of proof was on the challenger, which w as also the solution proposed by the TN/C/W/52 
proposal.   
94. In summing up the matter on the sub-question on genericness, he said that in the European 
Union the authorities competent either for geographi cal indications or trademarks adhered to the 
principle contained in the TN/C/W/52 proposal with regard to the substantiation of genericness.  He 
said that the proposal did not touch upon the substance of the decision as those decisions were left to 
domestic authorities.  His delegation understood an d welcomed the fact that some Members might 
have already applied the principle enshrined in  TN/C/W/52.  The objective of TN/C/W/52 was 
however to ensure that this principle, which th e European Union consider ed an essential element of 
consistent application of law and the only manner to fulfil the mandate , would be applied in the legal 
systems of all Members.  He said that if the sy stem of genericness substantiation as proposed in 
TN/C/W/52 was already being applied in some Memb ers, it should facilitate their acceptance of it. 
95. The representative of Korea
 said with regard to the part a of the second sub-question relating 
to the national proceedings and the protection of ge ographical indications and trademarks, one level of 
substantiation was commonly required when genericn ess of a term was claimed.  According to the 
criteria used by the Korean Intellectual Property Offi ce, to substantiate the genericness of a term, the 
following conditions had to be met:  that the te rms were freely and widely used for goods among 
many unspecified people such as producers and su ppliers as a consequence of the geographical 
indication or trademark having lost its function to id entify the origin;  and that the right holder of the 
geographical indication or trademark had failed to ta ke any of the necessary actions for protection.   
96. With regard to part b of the second sub-ques tion on the burden of proving genericness or non-
genericness, both in the process of application fo r protection and in the process of challenging a 
protected term, the burden of proof was on the party claiming genericness, i.e. on the party 
challenging the validity of the GI registration. 
97. The representative of Canada  said that, with respect to the second sub-question, the Canadian 
system made a distinction between trademarks and geographical indications regarding the process for 
the protection of a term. 
98. With regard to trademarks, under Section 12(1 )(c) of the Trade-marks Act, a term was not 
registrable as a trade trademark if it was the name in any language of any of the wares or services in 
connection with which it was used or proposed to be used.  During the examination phase, the burden 
of proof was on the Industrial Property Office to establish, on the balance of probabilities, that an 
application was not registrable for this reason.  In opposition proceedings, the decision whether to TN/IP/M/26 
Page 18  
 
  refuse an application on that ground would be b ased upon the evidence supplied.  Typically there 
would be an initial burden upon the opponent to fill some pertinent evidence but once that was 
satisfied the legal burden would lie on the applicant to establish on the balance of probabilities that the 
trademark was registrable.   
99. With regard to geographical indications, to obt ain protection for GIs for wines or spirits, the 
burden was on the person seeking GI protection to  establish that the term in question was a 
geographical indication within the meaning of Secti on 2 of the Trade-marks Act to the satisfaction of 
the Minister, as required under Section 11.12(3).  Th e definition under Section 2 required that the 
term fit the definition under Article 22 of the TRIPS Agreement and that the term be protected in the 
country of origin.  Arguably, a term that was gene ric would not fulfil the requirements of Section 2 
and would therefore not qualify as a geographical indi cation.  If the issue was raised, the person 
seeking GI protection would have to show that the te rm was in fact not generic.  If the Minister was 
satisfied that the term was a geographical indication and published the term together with the required 
information in the Canada Gazette, a three-month objection period started during which any interested 
person could file a statement of objection on the sole ground that the term was not a geographical 
indication.  In that case, the burden to show that a geographical indication was generic shifted to the 
person who raised the objection. 
100. With respect to challenging a protected term , under the Trade-marks Act, once the trademark 
was registered in Canada, its validity might be ch allenged under Section 18 of the Trade-marks Act.  
That might occur as a counter claim to an infringeme nt action or as an originating notice of motion.  
The validity of a registered trademark could be challenged on four possible grounds, two of which 
touched on the issue of genericness.  Those grounds  might be invoked by any interested person that 
was defined in Section 2 of the Trade-marks Act as including any person who was affected or reasonably apprehended that he might be affected by any entry in the register or by any act or 
omission or contemplated act or omission under th e Trade-marks Act.  That included the Attorney-
General of Canada.  A registered trademark was presumed to be valid, thus the onus was on the 
interested person to prove that the trademark was i nvalid on the predominance of evidence basis.  The 
first ground stated that the registered trademark was invalid if it was not registrable at the date of 
registration.  Section 12(1) listed the relative groun ds of refusal that determined when a trademark 
was not registrable, which included the name in any language of any of the wares or services in 
connection with which it was used or proposed to be  used.  If a trademark was found to be the name 
of the ware itself or generic, then the mark was not registrable at the time it was registered and could 
be declared invalid.  The second ground was that the trademark was not distinctive at the time of the 
court proceedings.  Thus, even if the trademark w as registerable at the time it was examined and 
registered, that ground allowed for the possibility for the trademark over time to become no longer 
distinctive of the wares and services listed in the regi stration.  Arguably, a trademark that had become 
generic would have lost its distinctiveness.  The gr ounds on which a mark could be challenged under 
Section 18 of the Trade-marks Act also applied to certification marks.    
101. Turning to geographical indications, she said th at Section 11.18(2) of the Trade-marks Act  
gave an exception for the use of customary names.  If a protected geographical indication was in fact 
identical with a term customary in common language  in Canada, as a common name for the wine or 
spirit or a customary name of a grape variety existi ng in Canada, then the adoption, use or registration 
of that geographical indication as a trademark or ot herwise in connection with the business in respect 
of a wine or spirit would be allowed.  If the a doption, use or registration was challenged it was up to 
the person alleging that the protected geographical indication was a customary name to prove that. 
102. The representative of Australia
 said she was grateful to the de legation of the European Union 
for its explanations, but she would also be interested  in the full system in that region.  She was unsure 
as to the status of EU Regulation 2081/92, in partic ular its Article 3, which contained a requirement 
for the establishment of a register for generic terms and she would welcome any more information 
about whether or not that was still an obligation and how it operated.  TN/IP/M/26 
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  103. Regarding part a of the second sub-question,  i.e. the issue of genericness during the 
application process for the protection of a term, sh e said that examiners had to consider whether a 
trademark term was capable of distinguishing a pa rticular good or service in the market place and 
whether the term was descriptive.  They had to asce rtain how the term might ordinarily be used or 
understood in the market place.  Therefore, resear ch might include dictionary references, industry 
information used by multiple traders or from multip le geographic sources to ascertain whether or not a 
term was descriptive in the market place, informa tion about geographic significance and also links to 
other entries in the Australian trademarks register .  The decision of a trademark examiner was an 
administrative decision.  An adverse decision could be challenged by the applicant through a hearing 
process  A hearing decision could be appealed to a pr escribed court.  In those proceedings a term for 
which protection was applied could be f ound to be descriptive of an article.  
104. Turning to part b of the second sub-question, i.e.  the issue of genericness in the context of the 
challenge of a protected term, she said that in Aust ralia this would be a judicial process.  A court 
could make a definitive finding of genericness, normally as a result of a cancellation action.  An 
agreed person on the register might make an appli cation to a prescribed court to amend or cancel a 
registered trademark if it became generally accepted within the relevant trade as a sign or term that 
described, or was the name of, an article, substance or service.  The prescribed court might determine the day on which a sign first became generally accepted within the relevant trade as a sign that 
described or was the name of a certain article, substance or service.  The burden of proof, as she had stated previously, was for the challenging party to prove a term was generic, as initially there would 
be a presumption of validity in favour of the registered trademark in her country. 
105. The representative of Japan
 said that, as a co-sponsor of the joint proposal 
(TN/IP/W/10/Rev.2), his delegation wished to st ress that the object of their discussions was a 
multilateral system that was within the mandate of  the Doha Declaration and the TRIPS Agreement 
itself.  As his delegation had stated at the previous  meeting of the Special Session, the joint proposal 
was the most appropriate solution to the mandate, notably because of its voluntary participation and 
the level of the burden placed on the participating Members.   
106. On the Chair's second sub-question, it was Japan's understanding that it concerned the 
substantiation of genericness of a term in nationa l proceedings for the protection of geographical 
indications and trademarks.  Generally, in Japan in a procedure for trademark examination or GI protection, a person seeking GI protection was not  initially required to substantiate that the 
geographical indication was not a generic term.  
107. The representative of the European Union
 said, in response to the question of the delegation 
of Australia on EU law, that Regulation 2081/92 ap plied not to wines and spirits, but to other food 
products, unless of course Australia envisaged a re gister for all food products.  He added that 
Regulation 2081/92 had been repealed in 2006 and replaced by Regulation 510/2006, which still 
applied only to GI products other than wines a nd spirits and did not include that provision on a 
generic register. 
108. The representative of Switzerland  noted that the level of substantiation to prove that a term 
was generic was very high for geographical indicati ons in Switzerland.  In an examination of the 
application for the registration of a geographical  indication, the proof of genericness or non-
genericness of a term for which protection as a geographical indication was being sought, was a 
collective endeavor.  Proof of genericness or non-ge nericness of a geographical indication had to be 
provided by the GI applicant.  When filing the applic ation, the applicant had to prove that the term to 
be protected was not generic.  Following examinat ion and acceptance of the application it was then 
published, and during the period of public consu ltation third parties could challenge the term, 
including on the ground of genericness.  Apart from th e procedure involving third parties, the issue of 
genericness could also be determined by administrati ve authorities in the context of an examination TN/IP/M/26 
Page 20  
 
  procedure or by judges in the context of a judicial  procedure, including in appeals.  In the system 
without registration, the issue of genericness w ould be dealt with only in a court procedure. 
109. As the delegation of the European Union had poi nted out, from the Swiss point of view it was 
important that a decision on the genericness of a term  be substantiated and motivated.  That was why 
the TN/C/W/52 proposal included a provision for the substantiation of a claim of genericness of a 
term.  The obligation to substantia te the genericness of a term shoul d be included in the multilateral 
system aimed at facilitating the protection of geog raphical indications.  Her delegation had not yet 
found any equivalent to that in the joint proposal a nd therefore continued to consider that it lacked 
elements that would facilitate the pr otection of geographical indications. 
110. The representative of the United States
 said that with respect to the second sub-question he 
would again refer to the situation of a foreign consortium applying for registration of a foreign 
geographical indication as a US certification mark, with the reminder that his answers were based on an initial review and might be supplemented at a later stage. 
111. With respect to part a of the second sub-question,  i.e. the issue of genericness raised during 
the application process, and as noted in his respons e to the first sub-question, the USPTO examined 
relevant evidence in making its determination.  With respect to genericness, the USPTO bore the 
burden of demonstrating that a mark was generic by "clear evidence", which was a standard used by 
the courts under the US system.  Such eviden ce would now include relying on dictionaries and 
Internet resources.  However, the applicant did not ha ve to demonstrate that the mark was not generic;  
it was the examining attorney that had the burden of  demonstrating that it was indeed generic.  A 1979 
US court decision was instructive on the definition of a "generic term".  "Generic terms, by definition, 
are incapable of indicating source, are the antithesi s of trademarks and can never attain trademark 
status".  The court's explanation was helpful and sh ed light on policy reasons against registrations of 
generic terms as trademarks.  In its view, "the r eason is plain:  to allow trademark protection for 
generic terms, i.e. names which describe the genus of goods being sold, even when these have become 
identified with a first user, would grant the owner of the mark a monopoly, since a competitor could 
not describe his goods as what they are". 
112. With respect to the issue of genericness and extr aterritoriality, his delegation agreed with the 
views expressed by the Australian delegation. 
113. With respect to the US system, he said that, while the USPTO had to demonstrate 
genericness, there was no starting presumption that a term was or was not generic. As he had previously noted, all relevant evidence was ex amined on a case-by-case basis and depended on the 
factual circumstances of each situation.  In that connection, his delegation fully agreed with the New 
Zealand delegation, and would only add that, while the USPTO  took information into account, that 
did not necessarily mean that such information was always relevant, probative , or dispositive in each 
and every legal and factual context.   
114. With regard to part b of the second sub-question, i.e. the issue of genericness in the context of 
a challenge of a protected term, he said that the party claiming genericness, that is the party 
challenging the mark, bore the burden of proving genericness.  That could be only as a ground for cancellation of the registration or as a counter-cla im by the respondent. In proceedings between 
private parties, evidence of the public's understanding of the term might be obtained from any competent source, such as purchasers' testimony, c onsumer surveys, listings in dictionaries, trade 
journals, newspapers, a nd other publications. 
115. The representative of the European Union
 said his delegation agreed that genericness had to 
be decided on a case-by-case and country-by-country basis and therefore there was no extraterritorial effect in the TN/C/W/52 proposal.  Moreover, he was pleased to note an apparent convergence that  TN/IP/M/26 
 Page 21 
 
 
  had emerged in the course of the meeting, namely that nothing in the US or Canadian system would 
have to be changed to implement the TN/C/W/52 proposal.  It was his understanding that there was 
already a point of convergence on the issue of gene ricness assertion and that the system his delegation 
had co-sponsored was in line with existing legislation. 
116. The representative of Chinese Taipei  suggested that in their responses to sub-question 2.a 
Members make the distinction between an ex officio  action by competent authorities and a third party 
action because the answers might be different.  He said that the European Union's observation that 
elements of the TN/C/W/52 proposal were already practiced by many Members might be true with 
respect to sub-question 2.b, i.e. when a protected  term was challenged.  As a normal practice under 
civil law, when examiners had already decided th at a term could be protected and a third party 
challenged such protection by opposition or before a court, then the burden of proof was on the third 
party.  This said, the substance of the Special S ession's discussions and the point challenged in the 
TN/C/W/52 proposal mostly concerned the situation under sub-question 2.a.  He was convinced that 
the ongoing discussions would further clarify those questions. 
117. The representative of Canada  said, in response to the comment by the delegation of the 
European Union, that she wished to refer Member s to the minutes of the previous TRIPS Special 
Session, where her delegation had indicated that it was unable to see how the TN/C/W/52 proposal could be implemented in Canada's regime for lack of information.  Furthe rmore, her delegation had 
indicated that the proposal contained in TN/C/W /52 unfortunately raised more questions than 
answers.  Therefore, to state that Canada would no t be obliged to change its regime was not accurate, 
as her delegation did not actually know  what the proposal contained. 
118. The representative of the European Union
 said he was surprised to hear that a proposal as 
short and concise as TN/C/W/52 was seen as raising questions.  He had referred specifically to the 
questions being discussed at this meeting, and in pa rticular to sub-question 2 on genericness.  He had 
understood that under both the US and Canadian syst ems, when it came to examination and in the 
situation mentioned in sub-question 2.b, a challenge  of an existing protected term did not put the 
burden of proof on the geographical indication owner,  but on those claiming th at the name for which 
protection was sought or which was already protected w as generic.  While he stood to be corrected on 
this understanding, he believed th at Members should be happy rather than worried about this 
convergence.  
119. The delegation of New Zealand  said that for his delegation the European Union's question of 
what was the specific meaning of taking informati on into account was legitimate.  Members had now 
adopted a practical approach to the problem by examining the various systems and practices of 
Members on how decisions about geographical indi cations and trademarks were made.  He was 
hopeful that through such an approach they would deepen their understanding of how an obligation to 
consult the register would actually be implemente d in national systems.  He had explained in a 
practical manner how examiners in New Zealand took various sources of information into account.  
He thought that this practical exchange was much more useful than an abstract debate about the 
meaning of "presumption", "prima facie  evidence" and "proof to the contrary".  His delegation looked 
forward to hearing from many more Members about how their systems dealt in practice with those 
issues.   
120. His delegation considered that the purpose of this process was to obtain a greater 
understanding of each other's systems in confidence and how information was taken into account in 
those systems.  New Zealand was not at that stage co nvinced that it was necessary to attempt to codify 
an international instrument on exactly how a regist er should be consulted.  He understood that the 
delegation of the European Union felt different ly and in its proposal it had prescribed how 
information should be taken into account.  Howe ver, as he had previously explained, those 
prescriptions or commandments would not work in New Zealand, including for reasons of TN/IP/M/26 
Page 22  
 
  territoriality.  For his delegation, the issue was not  about taking the register into account, but about 
being dictated to by the register.  However, his delegation did not wish to exclude the possibility of codifying how the register should be taken into acc ount.  If Members wished to pursue that, then New 
Zealand looked forward to a proposal that ind eed had the support of all WTO Members.  His 
delegation was convinced that these discussion, which would have to continue with more detail and 
involve many more Members, might help draw on this helpful discussion of practical experiences in 
formulating a more suitable description that worked for all.  
121. The representative of the United States
 said that his delegation agreed with the European 
Union that genericness was established in a case-by-case examination and would not have any extraterritorial effect in other countries.  However,  he also agreed with Canada's comments that the 
TN/C/W/52 proposal was lacking clarity.  In their proposal the proponents needed to lay out specific 
legal requests.  It was not appropriate for the Special  Session to simply refer to a particular country's 
law for how the proposal would be implemented.  His delegation was in agreement with the path 
ahead.  
122. The representative of Australia
 said her delegation agreed fully with New Zealand and 
believed that convergence was indeed good. Howeve r, with respect to extraterritoriality, her 
delegation  would refer Members to the European Union's comments in paragraph 20 of the minutes 
of the March 2010 meeting, saying that under the TN/C/W/52 proposal the entry of a name on the register would trigger two legal effects:  "first , the name entered in the register would merely 
represent prima facie evidence that it was a geographi cal indication, that the goods originated from a 
specific place and owed at least one of their character istics, its quality or its re putation to this origin.  
He said that beyond that, domestic authorities woul d have all latitude to decide for or against 
protection of a term on the basis of contrary evid ence provided by themselves or brought by any third 
party".  Therefore it was her understanding that ther e was all latitude in the domestic systems and 
Members were not forced to protect a term as a geographical indication on the basis of the register.  That point of clarity was useful.  However, it seemingly created a burden to disprove a geographical 
indication on an international basis that was on the re gister and this was the point of distinction.  It 
would be an additional burden that did not currently exist. 
123. In concluding she reiterated her point that a side-by-side comparison of the TN/C/W/52 
proposal with the joint proposal in TN/IP/W/10/Rev.2 might provide further clarity. 
124. The representative of Canada
 said she wondered whether the European Union's comment had 
been made only with respect to the part of TN/C /W/52 which referred to genericness.   One of the 
main problems was that it was difficult to define the terms "genericness" and "substantiation" without 
the overall context on how they were used and, mo reover, Canada's legislation did not provide for 
such contexts.  Her delegation considered that tho se terms would be defined differently in different 
Members and that would create uncertainties.  Th is was why her delegation preferred the joint 
proposal as more precise than the one envisaged in TN/C/W/52.  
125. The representative of the European Union  said that the representative of Australia had 
seemingly confused two different issues, one being the effect of the register per se , which indeed was 
addressed in paragraph 20 of the minutes of the prev ious meeting.  However, Australia seemed to 
have overlooked the comment further on, which r ead "beyond that domestic authorities would have 
all latitude to decide for or against protection of the term on the basis of contrary evidence provided by themselves or brought by any third party".  He emphasized the words "domestic authorities", 
which, in his view, was the opposite of extraterritoriality.  
126. As the discussion was on the question of who ha d the burden of proving genericness, he said 
he failed to see any extraterritorial effects in the W/52 proposal.  It proposed that those who claimed 
that a term was generic had to prove it and he ha d not heard that contested at this meeting.   TN/IP/M/26 
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  127. The Chairman  said he would not endeavour to summarize the substance of their discussion, 
which he believed had been extremely useful.  As  he had indicated at the outset, his questions had 
been intended as a starting point and he had taken good note of the comments made and the issues raised by delegations.  Given that some delegati ons had been unable to provide responses and as most 
of the statements had been preceded by disclaime rs or indications that these were preliminary 
contributions, he suggested that Members further e xplore those questions and come back with further 
responses and clarifications, while also building on what had been presented on a preliminary basis.   
C. O
THER BUSINESS  
128. Regarding future meetings, he informed the de legations that a meeting of the regular session 
of the TRIPS Council was scheduled for 26-27 October.  He suggested that, as in the past, a formal 
meeting of the Special Session be held back to b ack with the regular session meeting, namely on 28 
October 2010.   
129. The Special Session took note  of the statements made.  
 
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