WORLD TRADE  
ORGANIZATION  TN/C/W/60 
19 April 2011 
 (11-2028) 
Trade Negotiations Committee Original:   English 
  
 
DRAFT DECISION TO AMEND SECTION 3 OF PART II  
OF THE TRIPS AGREEMENT 
 
Communication from Albania, China, Croatia, Europ ean Union, Georgia, Guinea, Jamaica, Kenya, 
Liechtenstein, Madagascar, Sri Lanka, Thailand, Turkey, and Switzerland   
 
 
 The following communication, dated 15 April 2011,  is being circulated at the request of the 
delegations of Albania, China, Croatia, Europ ean Union, Georgia, Guinea, Jamaica, Kenya, 
Liechtenstein, Madagascar, Sri Lanka, Thailand, Turkey, and Switzerland 
 
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 In order to realize the extension of the prot ection of Article 23 of the TRIPS Agreement to 
geographical indications for all products, Members de cide to amend the TRIPS Agreement as follows: 
 
 
SECTION 3:  GEOGRAPHICAL INDICATIONS 
Article 22 
General  Protection of Geographical Indications 
 
1. Geographical indications are, for the purposes of this Agreement, indications which identify a 
good as originating in the territory of a Member, or a region or locality in that territory, where a given 
quality, reputation or other characteristic of the good is essentially attributable to its geographical 
origin. 
2. In respect of geographical indications, Members shall provide the legal means for interested 
parties to prevent: 
(a) the use of any means in the designation or  presentation of a good that indicates or 
suggests that the good in question originates in a geographical area other than the true 
place of origin in a manner which misleads the public as to the geographical origin of 
the good 
 
(b) any use which constitutes an act of unf air competition within the meaning of 
Article 10 bis of the Paris Convention (1967). 
 
3. A Member shall, ex officio  if its legislation so permits or at the request of an interested party, 
refuse or invalidate the registration of a trademar k which contains or cons ists of a geographical 
indication with respect to goods not or iginating in the territory indicated, if use of the indication in the 
trademark for such goods in that Member is of such  a nature as to mislead the public as to the true 
place of origin. TN/C/W/60 
Page 2  
 
  4. The protection under paragraphs 1, 2 and 3 sh all be applicable against a geographical 
indication which, although literally true as to th e territory, region or locality in which the goods 
originate, falsely represents to the public th at the goods originate in another territory. 
 
Article 23 
 
Additional Protection for Geographical Indications for Wines and Spirits
 
 
1. Each Member shall provide the legal means fo r interested parties to prevent use of a 
geographical indication for goods which are identified by the geographical indication, if such 
goods do not originate  identifying wines for wines not origin ating in the place indicated by the 
geog raphical indication in question or identifying spirits for spirits not originating  in the place 
indicated by the geographical indication in question, even where the true origin of the goods is 
indicated or the geographical indication is used in  translation or accompanied by expressions such as 
"kind", "type", "style", "imitation" or the like.4 
2. The registration of a trademark for wines  goods  which contains or cons ists of a geographical 
indication identifying such goods  wines or for spirits which contains or consists of a geographical 
indication identifying spirits  shall be refused or invalidated, ex officio  if a Member's legislation so 
permits or at the request of an inte rested party, with respect to such goods  wines or spirits  not having 
this origin. 
3. In the case of homonymous geographical indications for wines , protection shall be accorded 
to each indication, subject to the provisions of paragraph 4 of Article 22.  Each Member shall 
determine the practical conditions under which the homonymous indications in question will be 
differentiated from each other, taking into account the need to ensure equ itable treatment of the 
producers concerned and that consumers are not misled. 
4. In order to facilitate the prot ection of geographical indications for wines , negotiati ons shall be 
undertaken in the Council for TRIPS concerning the establishment of  a multilateral system of 
notification and registration of  geographical indications for wines  eligible for protection in those 
Members participating in the system shall be established in accordance with the Annex . 
 
Article 24 
 
International Negotiations; Exceptions 
1. Members agree to enter into negotiations aime d at increasing the protection of individual 
geographical indications under Article 23 .  The provisions of paragra phs 4 through 8 below shall not 
be used by a Member to refuse to conduct negotia tions or to conclude bilateral or multilateral 
agreements.  In the context of such negotiations, Members shall be willing to consider the continued 
applicability of these provisions to individual geographical indications whose use was the subject of 
such negotiations. 
2. The Council for TRIPS shall keep under review the application of the provisions of this 
Section; the first such review shall take place with in two years of the entry into force of the WTO 
Agreement.  Any matter affecting the compliance with the obligations under these provisions may be 
                                                      
4 [TRIPS Agreement note] Notwithstanding the firs t sentence of Article 42, Members may, with 
respect to these obligations, instead provid e for enforcement by administrative action.  TN/C/W/60 
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  drawn to the attention of the Council, which, at the request of a Member, shall consult with any 
Member or Members in respect of such matter in respect of which it has not been possible to find a 
satisfactory solution through bilate ral or plurilateral consultations between the Members concerned.  
The Council shall take such action as may be ag reed to facilitate the operation and further the 
objectives of this Section. 
3. In implementing this Section, a Member sha ll not diminish the protection of geographical 
indications that existed in that Member immediately prior to the date of entry into force of the WTO 
Agreement.  In implementing any amendments to this Section, a Member shall not diminish the 
protection of geographical indications that existed in  that Member immediately prior to the date of 
entry into force of the amendment to the TRIPS Agreement. 
4. Nothing in this Section shall require a Member  to prevent continued and similar use of a 
particular geographical indication of another Member  identifying wines or spirits in connection with 
goods or services by any of its nationals or domicilia ries who have used that geographical indication 
in a continuous manner with regard to the same or  related goods or services in the territory of that 
Member either (a) for at least 10 years preceding 15 April 1994 or (b) in good faith preceding that 
date.   Without prejudice to Article 22 of the TRIPS Agreement, a Member shall not be required 
solely on the basis of Article 23 of the TRIPS Ag reement to prevent continued and similar use of 
a particular geographical indication of another Member identifying goods other than wines or 
spirits in connection with goods or services by an y of its nationals or domiciliaries who have 
used that geographical indication in a continuo us manner with regard to the same or related 
goods or services in the territory of that Member either (a) for at least 10 years preceding [the 
date of signature of the amendment to the TRIPS Agreement] or (b) in good faith preceding 
that date . 
5. Where a trademark has been applied for or re gistered in good faith, or where rights to a 
trademark have been acquired through use in good faith either: 
(a) before the date of application of these provisions in that Member as defined in 
Part VI;  or 
 (b) before the geographical indication is pr otected in its country of origin;   
measures adopted to implement this Section shall not prejudice eligibility for or the validity of the 
registration of a trademark, or the right to use a trademark, on the basis that such a trademark is 
identical with, or similar to, a geographical indication.  The date under (a) above shall be that of 
the application of the entry into force of th e amendment to the TRIPS Agreement, where the 
trademark concerns products other than wines and spirits and its registration, validity or use is 
prejudiced by the application of Article 23.2 of the TRIPS Agreement but not by the application 
of Article 22.3 of the TRIPS Agreement.  
6. Nothing in this Section shall require a Member to apply its provisions in respect of a 
geographical indication of any other Member with respect to goods or services for which the relevant 
indication is identical with the term customar y in common language as the common name for such 
goods or services in the territory of that Member.  No thing in this Section shall require a Member to 
apply its provisions in respect of a geographical indication of any other Member with respect to 
products of the vine for which the relevant indicatio n is identical with the customary name of a grape 
variety existing in the territory of that Member as of the date of entry into force of the WTO 
Agreement.  Nothing in this Section shall require a Member to apply its provisions in respect of 
a geographical indication of any other Member with respect to goods other than products of the 
vine for which the relevant indication is identical with the customary name of such goods TN/C/W/60 
Page 4  
 
  existing in the territory of that Member as of the date of entry into force of the amendment of 
the TRIPS Agreement . 
7. A Member may provide that any request made under this Section in connection with the use 
or registration of a trademark must be presented within five years after the adverse use of the protected indication has become generally known in th at Member or after the date of registration of 
the trademark in that Member provided that the tr ademark has been published by that date, if such 
date is earlier than the date on which the adve rse use became generally known in that Member, 
provided that the geographical indication is  not used or registered in bad faith. 
8. The provisions of this Section shall in no way prejudice the right of any person to use, in the 
course of trade, that person's name or the name of  that person's predecessor in business, except where 
such name is used in such a manner as to mislead the public. 
9. There shall be no obligation under this Agreemen t to protect geographical indications which 
are not or cease to be protected in their country of origin, or which have fallen into disuse in that 
country. 
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