RESTRICTED  WORLD TRADE  
ORGANIZATION  TN/IP/M/27 
5 January 2011  
 
(11-0001) 
Council for Trade-Related Aspects of 
Intellectual Property Rights Special Session  
 
  
MINUTES OF MEETING 
 
Held in the Centre William Rappard 
on 28 October 2010 
 
Chairman:  Ambassador D. Mwape (Zambia) 
 
 
Subjects discussed
 Page No.  
 
A. NEGOTIATION ON THE ESTABLISHMENT OF A MULTILATERAL SYSTEM OF 
NOTIFICATION AND REGISTRATION OF GEOGRAPHICAL INDICATIONS FOR WINES AND 
SPIRITS ............................................................................................................................... .........1  
B. OTHER BUSINESS ......................................................................................................................21  
 
_______________ 
 
 
 
1. The twenty-seventh Special Session agreed  to adopt the agenda as set out in WTO/AIR/3633. 
A. NEGOTIATION ON THE ESTABLISHMENT OF A MULTILATERAL SYSTEM OF NOTIFICATION AND 
REGISTRATION OF GEOGRAPHICAL INDICATIONS FOR WINES AND SPIRITS  
2. The Chairman  recalled that in line with the work programme for negotiating groups for the 
period of September to December 2010 he had held  informal consultations on how to organize the 
Special Session's work with delegations sponsorin g TN/IP/W/10/Rev.2 and with those sponsoring the 
modalities proposal in TN/C/W/52, as well as with Hong Kong, China, on 14 October 2010.  On the 
following day, he had informed the whole memb ership about his group consultations at an 
open-ended informal meeting for purposes of transparency and inclusiveness. 
3. He further recalled that the 26th meeting of the Special Session held on 10 June had structured 
its work and discussion around the two s ub-questions he had posed under the chapeau  of the two main 
questions raised by his predecessor, Ambassador  Clarke, on legal effects or consequences of 
registrations.  These two sub-questions had been mo tivated by the following considerations.  There 
was a need for that negotiating group to depart from rh etorical debates.   While several issues were 
important to that negotiation, including inter alia th e other key issue of participation and the important 
area of special and differential treatment, his sense was that the issue of legal effects or consequences of registration was the stumbling block.  In order to depart from rhetorical discussions he believed it 
would be helpful for delegations to first focus on grounds they felt sufficiently comfortable, i.e. 
current rules and practices in their own jurisdictions.  He believed that this would help the negotiating 
group see more clearly differences and areas of commonality. 
 TN/IP/M/27 
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  4. He said that the two sub-questions were in tended to structure and focus the discussion on 
central elements of the discussion on legal effects or consequences of registration, and to better 
understand the concerns expressed by some Members.  The sub-questions were not intended to lead in 
any particular direction or to prejudge any result of  the discussions.  It was they, the delegations, who 
had the say.  The first sub-question concerned how  domestic trademark and GI authorities currently 
operated and how their operating mode might be affected by different ways of taking into account the 
information in the envisaged Register of geographical indications for wines and spirits.  The second sub-question concerned how domestic authorities were  currently dealing with the substantiation of 
claims of genericness of a term in pr ocedures of registra tion and protection. 
5. In his view, the discussion at the meeting of 10 June had been extremely informative as 
delegations had explained the current procedures and practices applied at domestic level.  There 
existed now a wealth of information which he be lieved would grow and merit close examination.  
Since some of the responses at the last meeting had been preliminary and not all delegations had been 
able to give responses due to the short notice of th e sub-questions, he suggested to continue exploring 
the issues at this formal meeting.  Delegati ons which had given preliminary comments would 
therefore have the opportunity to further supplement th e information, to fine tune it or to respond to 
other delegations' observations.  He also urged delegations which had not hitherto taken the floor to 
provide information about current prac tices in their own jurisdictions.   
6. He also wished to make it clear that that any other means by which Members might have 
intended to share information about their systems at  this meeting, such as case studies, scenarios or 
presentations, remained most welcome and that delegation wishing to address any other issues, 
including participation and special and differe ntial treatment, should feel free to do so. 
First sub-question
1 
7. Before addressing the first sub-question, the Chairm an  recalled that, at the June meeting, the 
delegation of the United States had made suggesti ons about "further ela boration of sub-question 
Number 1".  The suggestions had been reflected in  paragraph 68 of the minutes in TN/IP/M/26.  At 
the request of the delegation of the United States,  hard copies of these questions had been made 
available in the room.  He suggested that, when addressing the various elements of his sub-questions, 
the delegation of the United States used their perspe ctive to respond to them, which would help other 
delegations to better understand the cu rrent practices in the United States. 
8. The representative of Hong Kong, China  said that sharing and exchanging technical 
information would deepen Members' understanding of the operation of national trademark and GI 
authorities in practice, particularly on how info rmation was taken into account.  Her delegation had 
already shared with Members information on its domestic system which was recorded in paragraphs 21 to 24 and paragra phs 86 and 87 of the minutes of the meeting (TN/IP/M/26).  She 
believed that such exchanges on domestic systems should, at some point, lead to a discussions on how the prevailing systems could take account of a multila teral register.  In that context, her delegation 
believed Hong Kong, China's room document da ted 28 October 2009 could help to focus the 
discussion. 
9. That room document had illustrated the working of Hong Kong, China's proposal by way of 
four hypothetical case studies, which dealt with: 
                                                     
 
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 availa ble if they fail to do so?  Are additional sources of information 
that become newly available automatically covered by such a legal obligation?"  TN/IP/M/27 
 Page 3 
 
 
   - A non-contentious notification and regist ration of a geographical indication from a 
 participating WTO Member economy at bot h the domestic and international levels; 
  - A contentious geographical indication that is resolved at the domestic level before 
  notification and registration at the inte rnational level from a participating WTO  
  Member economy. 
  - A non-protectable geographical indication that is screened out by a participating    WTO Member economy at the domestic level;  and  
 - A contentious notification and registrati on at both international and domestic level, 
  where the case is finally resolved at th e domestic level in another participating WTO 
  Member economy.  10. She believed this room document could play a useful role in the discussions and her 
delegation would continue to perfo rm a bridging role in the negotiation of a registration system of 
geographical indications for wines and spirits. 
11. The representative of Thailand
 said that, with respect to the Chairman's sub-question 1, when 
making decisions regarding the protection of ge ographical indications, the national agency in 
Thailand was required to take into  account the information mentioned in the Act on Protection of 
Geographical Indications of 2003 and the Ministeria l Regulations of 2004.  However, the Thai GI 
Protection Act and its Ministerial Regulations did not specifically provide sources of information for 
the national agency to take into account when maki ng such decisions.  The competent official could 
therefore also call upon the applicant or other pe rsons concerned to give a statement or produce 
additional evidence.  In cases where an expert opinion is necessary in the field related to the matter 
requiring determination, the Registra r had to refer the matter to the experts for consideration.  If the 
authority failed to do so, the applicant could file a complaint to the national agency for administrative 
measures.  If the applicant was not satisfied with  the administrative decision, the applicant could 
further pursue the case by filing a complaint to the ad ministrative court.  Under this legislation, the 
national agency was not required by law to take in to account the newly available information.  If an 
interested party or competent official made a requ est to the Registrar to consider information newly 
available, then the national agency would consider this information and forward it to the GI Board for 
a decision on whether or not to correct or revoke the GI legislation. 
12. The representative of Turkey  said with respect to the first sub-question that in addition to its 
specific regime for the protection of trademarks Turkey had established a sui generis  system for the 
protection of geographical indications.  Both trad emarks and GIs were currently protected in the 
context of a decree, but two separate draft laws we re pending in parliament in that regard.   
13. With respect to the protection of the geogr aphical indications, following examination and 
acceptance, Article 9 of Decree 555 provided that wh ere necessary, or if there was an objection upon 
publication in accordance with Arti cle 11, the Turkish Patent Institute might require an examination 
of the application by one or more public instituti ons, universities or independent private institutions.  
The names of these institutions were not specifically  mentioned in the legislation itself.  Depending 
on the nature of the application, views from loca l institutions or research institutions could be 
requested.  These institutions only provided advice and did not express any views on whether or not 
the subject matter of the application c onstituted a geographical indication.   
14. With respect to the procedure for trademark app lications the legislation did not itself specify 
any sources of information.  One absolute ground for refusal of a trademark application was that the 
sign was identical or confusingly similar with an earli er trademark in respect of an identical or same 
type of product or service.  In that context exam iners consulted a database that had been established TN/IP/M/27 
Page 4  
 
  in 2005.  Under Article 7 on the protection of tradem arks, some basic criteria were applied in Turkey.  
She said there was also an on-going twinning project with the European Union in which the Turkish 
Patent Institute was working towards more exte nsive and detailed guidelin es to be applied which 
would be published after conclusion of the project. 
15. The representative of Australia
 said that her delegation had provided preliminary responses to 
the Chairman's question in June but she was now in a position to elaborate on these more fully.  Her 
delegation considered that the Chair's sub-qu estion allowed Members to further explore the 
information that domestic systems took into account when determining how common names and 
generic names were addressed in their domestic IP  systems.  However, her delegation had found the 
reference to "legally obliged" and "sanctions" to be quite narrow.  Accordingly her delegation had 
constructed its responses based on Australia's system , which included reference to non-legally binding 
aspects as well as those based in law. 
16. With respect to sub-question 1, she said that  when determining a trademark in Australia, 
consistent with Article 15 of TRIPS, trademark ex aminers considered whether a sign was capable of 
distinguishing goods or services in the marketpla ce.  On the basis of legislation and practice 
guidelines, examiners sought to determine how the term  might ordinarily be used or understood in the 
marketplace.  Determining whether a trademark wa s capable of distinguishing the specified goods or 
services required an assessment of whether the term had sufficient inherent adaptation to distinguish the good or service in the marketplace.  A term c ould not be inherently adapted to distinguish 
products if it had a commonly understood meaning.  Australia generally protected geographical 
indications through certification trademarks, which diff ered from ordinary trademarks in that they had 
to be capable of distinguishing certified goods and services from non-certified goods and services.  
Such a mark certified the goods as having a certain  standard of quality or accuracy, a particular 
composition or geographical origin, for example. 
17. In accordance with established practice, ex aminers were trained to assess consumer 
perception in relation to whether the sign or indicati on was one that other traders were likely to need 
in the ordinary course of business to indicate thei r similar products.  An examination decision was an 
administrative decision in Australian law.  Examiner s used a range of standard sources and resources 
to determine whether trademarks, including certifica tion trademarks, were capable of distinguishing 
goods or services.  These resources included, but were  not limited to, dictionary references, gazette 
references, industry information, use by multiple  traders as a descriptive term, Internet searches, 
decisions in other jurisdictions, observations by ap plicants and observations by third parties.   
18. With regard to available sanctions, if an ex aminer failed to take information into account, 
Australia did not apply sanctions to trademark ex aminers but provided possible recourses.  If an 
interested person was not satisfied with the examin er in relation to a trademark, that person might 
pursue action through an administrative hearing pr ocess.  Further review mechanisms were also 
available through the courts, including rejections of  the trademark application.  Hearing decisions 
could be appealed to the prescribed court.  Under these proceedings an application might be found to 
be for a term accepted as a generic term.  
19. Regarding the taking into account of additional s ources of information, such newly available 
information might be taken into account in a num ber of ways.  If additio nal new information was 
provided by way of third party observation, it might  be taken into account.  A third party observation 
could take place by way of a letter to the offi ce attempting to prevent registration and providing 
reasons for that.  The information contained mi ght be taken into account but the office was not 
obliged to act upon it.  In such a case the office did not engage with the third party on the issues but 
provided information that registration of the appli cation might be opposed if it was accepted.  New 
information could also be provided in support of regi strations by way of evidence from third parties.  
If additional new information became available af ter acceptance but before registration of the  TN/IP/M/27 
 Page 5 
 
 
  trademark, it might be taken into account by wa y of revocation proceedi ngs or opposition to 
registration.  Any person might oppose the registrati on of a trademark on a specific range of grounds.  
These grounds included almost all of the grounds for which an application could have been rejected 
during examination and also some additional grounds. 
20. Finally, if additional new information became available after registration, action might be 
taken through the courts.  In Australia, action th rough the courts in relation to new information 
included rectification action to achieve either am endment or cancellation of the trademark.  Action 
might be taken in the courts on any of the prescrib ed grounds on which registration could have been 
opposed in the first place.  If a registered trademar k contained or consisted of a sign that became 
generally accepted within the relevant trade as a sign that described or was the name of an article, 
substance or service, rather than a product or ser vice from one particular trade source, then the 
registered owner lost the exclusive right to use or  authorize other persons to use the trademark in 
relation to the particular article, substance or service. 
21. The representative of New Zealand  said that his delegati on continued to support the 
Chairman's method of work as set out in his introduction.  New Zealand had already responded to the 
sub-questions at the last meeting and he noted that  a good record of that intervention was contained in 
the minutes in TN/IP/M/26.  In relation to the first sub-question he would refer Members to 
paragraphs 29 to 38 of the minutes.  Rather th an repeating those statements again, he said his 
delegation would be happy to elaborate or to e xplain further if Members should have any specific 
questions. 
22. In that same spirit, his delegation would appreciate clarification on some statements made at 
the last meeting.  First, in relation to the statem ent by the European Union on the issue of guidance for 
domestic systems as to the consequences of cons ulting various sources of information.  The 
delegation of the European Union had emphasized, as was reflected in paragraph 20 of the minutes, 
that to simply provide for a consultation of that  information would not be sufficient because for a 
source to be truly relevant the competent aut horities would need to have clear legally binding 
guidelines on the consequences to be derived from such consultation.   
23. The European Union had also referred to the sources of information which the Commission 
consulted when making decisions.  It had stated in paragraph 11 of the minutes that the Commission services would examine the information contained in the GI application file and would also consult 
and take into account any other sources of informat ion they deemed appropriate.  In view of the 
European Union's suggestion that there be le gally binding guidelines on the consequences that 
consultation of the sources of information should entail, he asked the following questions:  firstly, 
what were the clear legally binding guidelines on th e consequences to be derived from consulting the 
application file;  secondly, what were the clear legally binding guidelines on the consequences to be 
derived from examining other sources of informatio n deemed appropriate;  and thirdly, where were 
those legally binding consequences set out, in  the EU regulation or in another text. 
24. His delegation's second question concerned the issue of how GI or trademark examiners 
weighed information from various sources when they  were making the decision.  As his delegation 
had stated last time, New Zealand considered it important that examiners retained discretion regarding how to weigh various pieces of information from different sources on a case-by-case basis and not to have any particular source of information deemed to  be more important than any other source or any 
other evidence that might be presented to the examiner .  In relation to this i ssue, in paragraph 11 of 
the last meeting's minutes the delegation of the European Union had referred to the ex officio  
examination of an application and an objection procedure where third parties could file duly 
substantiated objections.  The EU delegation had stated that on the basis of all of the information 
available the Commission would then decide either to grant protection or to reject the application.  His 
question was how the Commission weighed the vari ous pieces of information referred to in that TN/IP/M/27 
Page 6  
 
  statement, and whether the Commission was required to give greater weight to any of those various 
sources of information or whether the Commission had discretion to weigh that evidence on a case-by-case basis as it saw fit. 
25. The representative of Chinese Taipei
 said with respect to sub-question 1 that her delegation 
would like to elaborate on the preliminary responses given at the last meeting.  As noted before, 
Chinese Taipei protected geographical indications through several mechanisms, and the trademark 
system was one of the principal avenues.  In applications for the registration of trademarks, 
certification marks or collective trademarks, inte llectual property examiners followed the standards 
provided by the Trademark Act and the relevant re gulations or examination guidelines to guide them 
in their processing and substantial determinations.  Based on that legislation, when examining an 
application, an examiner had to consult the prio r trademark database established by the Intellectual 
Property Office and any other available inform ation including any objective evidence from 
dictionaries, governmental bulletins, newspapers, jour nals and magazines.  As additional new sources 
of information became available, for example, if a new database were to be established on the basis of 
the joint proposal on the multilateral system of notification and registration of geographical 
indications for wines and spirits, such informati on would automatically be included as a source of 
information for examination.  She said that, if an applicant was dissatisfied with a rejection by the 
Intellectual Property Office, the applicant could make  an administrative appeal and resort to further 
litigation in order to have established that the d ecision was against the law and should be revoked. 
One reason for an appeal could be that an exam iner had not taken into account some important 
information. 
26. The representative of Japan  said that his delegation welcomed the ongoing technical 
discussion based on the sub-questions elaborated by th e Chairman which he believed could lead to a 
mutual satisfactory solution under the mandate.  Hi s delegation had made a preliminary comment to 
the Chair's question 1 at the previous session and,  based on that, would like to provide further 
comments. 
27. With regard to geographical indications for wines and spirits, he said that Japan had 
introduced administrative measures by a notice fro m the National Tax Agency entitled "A Standard 
for Indication in Relation to Geographical Indi cations," which was based on the Law Concerning 
Liquor Business Association and Measures for S ecuring Revenue from Liquor Tax.  The notice 
provided that in addition to Japanese geographical indications designated by the Commissioner of the 
National Tax Agency, any geographical indication prot ected in a WTO Member was also protected in 
Japan.  When deciding whether or not a claimed ge ographical indication would be protected in Japan, 
it was current practice that information on a relate d geographical indication registered and protected 
in other Members on the Internet and other devices would be consulted and taken into account.  He 
said that under the TN/C/W/52 proposal, the fact th at a geographical indication was listed in the GI 
Register would be treated as prima facie evidence that the said geographical indication met the 
definition in Article 22.1 of the TRIPS Agreement.   His delegation wished to explain how such a 
proposal would impact on the current practice, alt hough it was difficult to do so in the absence of a 
detailed legal text.   
28. When deciding whether or not a specific geographical indication protected in other Members 
would be protected in Japan, Japanese authorities currently examined them selves whether such a 
geographical indication met the definition in Article  22.1 of the TRIPS Agreement based on relevant 
information.  With respect to certain specific ge ographical indications Japan had agreed in several 
Economic Partnership Agreements (EPAs) that these  were indeed geographical indications as defined 
in Article 22.1 of the TRIPS Agreement.  With r espect to other claimed geographical indications it 
was necessary for expert officials to scrutinize numerous documents that Ja pan requested the other 
party to submit in order to prove that the claimed geographical indication met the said definition.  It 
usually required a lot of successive communicati ons to collect the necessary information between  TN/IP/M/27 
 Page 7 
 
 
  parties and a great deal of time to examine it.  In  an effort to maintain a balance between the time 
period for negotiating the EPA and the time needed  for examination of the claimed geographical 
indications, Japan usually requested the other part ies to limit the number of claimed geographical 
indications in the preparatory phase, also taking acc ount of the fact that possible generic names were 
included in the claimed list.  But even such a li mited list imposed a consid erable burden on them to 
complete the process.   
29. If the TN/C/W/52 proposal were to be implemen ted, this considerable burden for collecting 
and examining such information would be imposed on third parties, including from the private sector.  Although the TN/C/W/52 proponents had explained that  the final decision for protection would not be 
determined by the GI Register, such a shift of the considerable burden to third parties from the private 
sector would nevertheless be problematic.  Furthermore, the proposal of prima facie evidence was not 
reasonable in view of the chilling effect caused  by the aforementioned considerable burden and 
considering the balance of cost and benefit betw een the party seeking to benefit from the exclusive 
right of a geographical indication and the rele vant stakeholders, including the private sector. 
30. He said that with respect to trademark pr otection his delegation had already provided a 
detailed explanation at the previous session, an d he would therefore not repeat that here. 
31. The delegation of Canada
 said that delegations' preliminary or complete responses to the 
Chair's sub-question 1 had been very helpful and info rmative, particularly for key export markets in 
that particular sector.  He encouraged delegations  who had not yet had a chance to provide responses 
to do so.  His delegation had given a preliminary r esponse to sub-question 1 at the last meeting which 
was recorded beginning at paragraph 25 of the minu tes and he confirmed that there was no need to 
make any notable changes to that intervention.  
32. The representative of the European Union  said that, as he had recently taken over 
responsibility for intellectual property and procurem ent in DG Trade of the Commission, one of the 
advantages of being new to the negotiations on the establishment of a multilateral system for 
notification and registration of geographical indica tions for wines and spirits was being in a position 
to take a fresh look at the issues and the discussi ons that had taken place so far.  His intervention 
would address three parts.  First, he would like to place the negotiations in the overall negotiating 
context.  Second, he would look at what he saw  as emerging areas of convergence and, third, he 
would try to link some of the answers to the Chairs  questions back to the proposal on the table, in 
particular as his delegation had responded to these questions in detail in June. 
33. First, with respect to the overall negotiating pro cess, the Director-General, in his report to the 
TNC on 19 October stated in view of the G-20 meeti ng in Seoul that they were looking "to Leaders to 
send a clear political signal that [we] are ready to en ter into the end-game of the Doha negotiations".  
Mr Lamy further said that the aim of the Geneva cocktail approach was "to reach a level of ambition 
and balance that [we] can all subscribe to.  This of course requires that all areas are included".  The 
representative of the European Union believed all dele gations could subscribe to that.  If they wanted 
the so-called Geneva cocktail to be good, all ingred ients had to be present.  There was no way that an 
important area and an important ingredient for the cocktail, such as TRIPS, could be missing.  The cocktail would simply not taste the same and would be unacceptable for most of them. 
34. With regard to how other ne gotiating areas had been progressing,  his delegation believed that 
the TRIPS Special Session would not be ready, should the signal come to enter the end-game 
scenario.  It was therefore important to contin ue to make concrete progress towards reaching a 
common understanding, which required an effort from all Members.  This had been the European 
Union's approach from the outset and still remained so.  His delegation had come a long way from its 
original request to the positions that were now refl ected in TN/C/W/52, tabled in 2008 by two-thirds 
of the Members.  He recalled that an important fe ature of that document was an attempt to include TN/IP/M/27 
Page 8  
 
  elements of interest to a wide group of Members,  including developed and de veloping countries.  The 
fact that the document attracted the support of 10 8 Members, both developing and developed, was 
clear evidence that this proposal was the most ser ious attempt to find a possible landing zone in these 
negotiations.  As was well known, this required prog ress on all three TRIPS issues.  He said he would 
also like to note that the countries supporting TN /C/W/52 had all moved from their initial positions to 
find common ground.  If there were to be any progress at  all, the time had come for others to show 
movement as well. 
35. As regards the GI Register, he said that there were three papers on the table:  TN/IP/W/8 from 
Hong Kong, China, TN/IP/W/10/Rev.2, sponsored by less than 20 Members, and TN/C/W/52, 
supported by 108 countries.  The TN/C/W/52 propo sal for draft modalities had been presented in 
July 2008 in great detail since it had been tabled both orally during TRIPS Council Special Sessions 
and in writing.  A large number of detailed questions by Members had been answered, for example, in 
a communication dated 23 February 2009, providing a written version of the elements of the EC 
delegation's oral interventions at the TRIPS Sp ecial Session of 4 and 5 December 2008.  Further 
explanations had been provided  in subsequent meeti ngs.  In sum, a great deal of information had been 
exchanged and his delegation be lieved it had built a better understanding for all Members on the 
technical aspects of the TN/C/W/52 proposal. 
36. His delegation fully supported the Chair's approach  to pursue technical work.  It had therefore 
complemented the information previously provided by detailed answers to the sub-questions on legal 
effects and consequences of the Register at the l ast meeting.  His delegation found it difficult to 
imagine that there were still many questions re maining open as to what TN/C/W/52 contained.  
However, it stood ready to respond again to any ques tions.  He recalled that some Members had also 
promised to provided further information in future meetings.  
37. He would like to highlight the following elemen ts in responses which he believed represented 
interesting points of convergence between Members.  First, in practice if not also in law, trademark 
offices, when taking decisions regarding the protec tion of geographical indications and trademarks, 
did consult various sources of in formation and did take such info rmation into account when forming 
their decisions.  It was his understanding that, for example, in Korea existing databases and Internet 
articles of international literature would be fully taken into account.  In Japan, the Lisbon Agreement 
database and relevant information re lated to GI Registers in foreign countries were consulted.  In the 
United States, the US Patent and Trademark Office used relevant information found in the publicly 
available trademark database, online sources, other da tabases, newspapers, magazine articles, Internet 
websites, dictionaries, gazettes and similar sources were used.   
38. Second, it was also part of the domestic legal or ders to respect international treaties to which 
Members were parties.  As stated by the delegation of Chile at the last meeting, even when there was 
no obligation to consult specific sources of informat ion, all binding standards including international 
treaties signed by Chile which contained provision s on geographical indications were taken into 
consideration in the registration process. 
39. Third, he believed Members could all agree that  some specific weight was attached to such 
information.  It was also reasonable that a cer tain common understanding, mutually agreed at the 
WTO level, would provide some guarantees to ensure a level international playing field and that was 
what international nego tiations were all about. 
40. Fourth, in light of the information provided by  those Members who took the floor at the last 
meeting, it had not been contested that the burden of proving genericness during examination or 
challenge of a protected term was on the one claiming that the term was generic.  Hence, his 
delegation was of the view that if the Special Session aimed to identify a common understanding about how information on the Register would be  taken into account, this was the way Members  TN/IP/M/27 
 Page 9 
 
 
  needed to structure the discussions.  This was entirely consistent with the Chairman's approach and 
the questions which the Chair had circulated as to how proposals would be absorbed by the Members' 
systems. 
41. To follow up on the objective of making progress, his delegation suggested looking at how 
Members would implement the proposals on the table, focusing for the time being on 
TN/IP/W/10/Rev.2 and TN/C/W/52.  Members shoul d be able to provide explanations not only 
regarding implementation of their own proposals, but also of other proposals on the table and he said his delegation would take this appr oach at this meeting.  As it was important to identify divergences 
and possible convergences it was fundamental that th e exercise went beyond mere explanations but 
was really aimed at reaching a common understanding of  the implications of the Register.  He would 
therefore, without prejudice to the actual implemen tation in the future, present the European Union's 
view on how proposals tabled by other Members as  well as its own proposal  would be implemented 
within the European Union.  Both aspects were im portant and his delegation had endeavoured to do 
their homework in order to facilitate the work of others.   
42. Starting with the joint proposal of TN/IP/W/ 10/Rev.2 and how it woul d be implemented in 
the European Union, he recalled that the joint propos al was rather succinct and had not been modified 
in substance since it was tabled in 2002.  Subseque nt revisions had been made to add co-sponsors but 
no substantive modifications had taken place.  Un der the joint proposal each participating Member 
committed to ensure that its procedures included provi sions to consult the database in accordance with 
domestic law.  As regarded non-pa rticipating Members, paragraph 6 provided that consultation was 
encouraged but not compulsory.  Co-sponsors of the joint proposal had confirmed orally that 
participating Members would take the Register in formation into account and in accordance with their 
domestic laws.  He said, it would be useful if the joint proposal could be updated to provide further 
details on how its proponents would take the Register into account and perhaps also what weight they 
would attach to the information. 
43. He said that, as already explained at the previous meeting, geographical indications protected 
wines and spirits at EU level.  GI applications for wines and spirits were scrutinized by Commission 
services.  They underwent an objection procedure and were registered if the conditions were met.  If 
the European Union were to participate in the da tabase envisaged by the joint proposal, the European 
Union would certainly have to change the regul ation governing the registration of geographical 
indications.  In accordance with the new provisions, when receiving a GI application from a group of 
producers from, using a previous example, "Rurita nia", the Commission would consult the database.  
If Ruritania was not a participant in the Register th en no information would be found.  That meant that 
for a number of groups of producers the Register would be of no help because the public authorities, for whatever reason,  had not used the oppor tunity to participate in the Register.   
44. If, on the other hand, Ruritania did participate in the Register, the Commission services would 
find information about the notifying Member, the name  of the geographical indication, the territory in 
which the wine or spirit originated and whether the name was a wine or spirit.  How would they take 
that information into account?  All the informati on in the Register would correspond to the basic 
elements which already had to be submitted with a GI application in the European Union.  His 
delegation came to the conclusion that in the Europ ean Union the joint proposal Register would, in 
practice, amount to a duplication of the information already provided by the applicants and therefore 
would not add any value for the European Union.  In  that context, his delegation failed to see how the 
joint proposal Register would meet the mandate of facilitating GI protection. 
45. As also explained at the previous meeting, the European Union had established a Community 
trademark system in which trademarks could be re gistered directly at EU level as a single title 
covering the whole EU territory.  Such trademark ap plications were examined by an EU office based 
in Spain.  If the European Union were to particip ate in the joint proposal Register, there would be a TN/IP/M/27 
Page 10  
 
  need to amend the EU trademark regulation, or at  least the trademark examiners guidelines to provide 
for the consultation of the Register.  When receiving an application for a trademark or a collective or a 
certification mark, the trademark office would consult the Register and find information that it would 
treat according to its respective legislation.  That  was why the European Union, together with the 
other co-sponsors of TN/C/W/52, encouraged the adoption of common guidelines as to how the 
Register information would be taken into account.  TN/C/W/52 provided orientations on that matter.  
46. Turning to the issue of how TN/C/W/52 would be implemented in the European Union, he 
recalled that his delegation had al ready explained the TN/C/W/52 propo sal in detail, both orally and 
in writing.  It was, however, ready to develop ad ditional elements in order to bring the technical 
discussions forward.  As already underlined, the merit of TN/C/W/52 was to clearly spell out what the 
consequences of the Register would be, namely that  (i) a name on the Register would be considered 
prima facie  evidence that, in that Member, the notified GI met the definition of "GI" laid down in 
TRIPS Article 22.1, and (ii) domestic authoriti es would consider assertions on the genericness 
exception laid down in TRIPS Article 24 only if these were substantiated. 
47. As regards the registration of geographical indications in the European Union, the 
consultation and taking into account of the Register would be provided for in the EU GI Regulations.  
As a consequence, when examining a GI appli cation, the Commission services would consult the 
Register.  As the TN/C/W/52 Register applied to  all WTO Members, all would have the opportunity 
to notify their geographical indications for wines and spirits to the Register. 
48. When examining a GI application, the Commission services would consider that, prima facie , 
a geographical indication on the Register met the GI definition.  They might, ex officio  or at the 
request of a party, request additional information if  doubt arose.  Likewise, as was already the case in 
EU legislation, they might, ex officio  or at the request of a party, consider that a third country GI 
applied for was identical with a generic term in  the European Union and would substantiate its 
findings.  On the basis of all those elements, consider ing also other requirements of the GI legislation, 
for instance in relation with prior trademarks, th e Commission services would then decide whether or 
not to protect the geographical indication. 
49. Finally, as regards the impact on trademarks, again, after the appropriate legislation or 
trademark examiners guidelines had been modified, the trademark office would consult the Register.  The Register would provide the examiners with clear indications as to the nature of the name to be 
examined, and that would be treated according to EU or Member State domestic law, as appropriate. 
50. He recalled that the European Union had wanted to  engage in an analysis of the implications 
of each proposal's implementation – not only the proposal it was co-sponsoring, but also of the 
proposals supported by other Members.  He was conf ident that the proponents of proposals other than 
TN/C/W/52 would also duly participate in that important work. 
51. The representative of Argentina
 recalled that her delegation did not support the parallelism 
proposed in document TN/C/W/52.  As a co-sponsor , her delegation reiterated its support for the joint 
proposal which complied with the mandate of Artic le 23.4 of the TRIPS Ag reement and paragraph 18 
of the Doha Declaration.  The joint proposal had had a high level of acceptance by the Members of the WTO.  It proposed the establishment of a multilateral system of certification and registration of geographical indications of wines and spirits that  would facilitate the protection of geographical 
indications of wines and spirits.  It preserved the te rritorial nature of inte llectual property rights of 
geographical indications.  In line with Article 23.4 of the TRIPS Agreement the participation in the 
Register was strictly voluntary. This also implie d that the joint proposal took into consideration 
special and differential treatment given that each Member State could decide whether or not to participate.    TN/IP/M/27 
 Page 11 
 
 
  52. She said that the delegation of the European Union had still not explained how special and 
differential treatment would be available under their proposal in document TN/C/W/52.  Furthermore, 
the mandatory participation proposed in that proposal  was not acceptable to her delegation. Under the 
procedures for full participating Members in paragr aph 5 of the joint proposal, each Member would 
guarantee that their procedures provide for cons ultation of the database when making decisions 
relative to the protection of trademarks or geographical  indications of wines and spirits in line with its 
domestic legislation.  Regarding the propo sal in TN/C/W/52, the legal effect of prima facie  evidence, 
the extra-territorial nature of the proposal and the inherent reversal of the burden of proof were not 
acceptable to her delegation. 
53. The representative of Switzerland  said that her delegation believe d the Chair's approach was a 
very good way of improving Member s' understanding of the proposals on the table and of current 
national practices.  Her delegation's response to the two sub-questions at the last meeting was 
recorded in paragraphs 39 and 43 of the minutes so that  there was no need to repeat them.  She would, 
however, like to emphasize the fact that the res ponses recorded there did not only apply to GIs for 
wines and spirits but were applicable to all products in Switzerland.    
54. In clarifying a couple of additional points, she said that currently the different Swiss 
authorities that decided on the protection of geographi cal indications or trademarks were obliged to 
consult instruments that were sources of law, and to implement information and obligations in those 
sources of law.  These included national laws, ordi nances and regulations that were developed on the 
basis of those national laws as well as internationa l treaties.  All of those various sources of law 
contained substantive informati on regarding geographical indicati ons and trademarks that were 
examined.  The obligation to consult did not just refe r to those instruments but also specified the legal 
consequences flowing from the consideration of th e information in those instruments to determine 
whether or not a term deserved protection.  Th e national authorities consulted other sources of 
information such as dictionaries, the Internet, atl ases, and databases if necessary in an individual case 
to form a reasoned decision.  In the proposed pr ocedures there were also opportunities for certain 
bodies to make comments or provide information whic h the authorities would take into consideration 
in accordance with the rules of pr ocedure applicable in each case. 
55. This also meant that if there was a new source of information, that source would not be 
covered by any domestic legal obligation to consult and consider that information.  According to 
information received at this stage this was the situ ation not only in Switzerland but also in many other 
countries.  For those reasons, it was not sufficient for the proposal W/10 to create an obligation to 
consult information contained in the Register  but Members needed to add complementary 
information.  The proposal TN/C/W/52 did remedy this.  It created the obligation to consult and 
consider the information on the Register without ch allenging the principal of territoriality, as the final 
decision on whether or not to protect a GI was left to national authorities.  With regard to sanctions, she referred Members to her delegation's responses  at the last meeting on the various ways of 
appealing decisions in Switzerland.   
56. In concluding, she recalled that the TN/C/W/ 52 proposal also covered the other two TRIPS 
subjects, GI extension and disclosure of the country providing/source of genetic resources which were, as another delegation had pointed out, essential ingredients for a successful cocktail.  She said 
that given the broad support it enjoyed, the flex ibilities it contained and the concessions it represented, 
compared to the original positions on the Register, TN/C/W/52 was an important proposal which 
should be taken into account in the course of this negotiation. 
57. The representative of Brazil
 reaffirmed her delegation's support for the Chairman's proposal 
on how to conduct the work of the Special Session a nd said that her delegation expected soon to be 
able to engage in substantive discussions.  Sh e recalled her delegation's position in favour of 
simultaneous, parallel and joint treatment of th e three TRIPS issues, namely GI Register, TN/IP/M/27 
Page 12  
 
  GI Extension and TRIPS/CBD.  Her delega tion was therefore strongly committed to 
document TN/C/W/52 as an inclusive and balanced position which represented a sincere attempt by 108 Members to deliver on the mandate of the D oha Development Round.  Her delegation supported 
the procedure and substantive pa rameters contained in the modalities proposal.  The proposal 
reflected a positive movement from some Members to  review their previous positions so that they 
could bring an end to the deadlock that had continued for so many years. 
58. The representative of the United States
 said his delegation appreciated that the establishment 
of the multilateral system of notification and registra tion was part of the single undertaking, and it was 
fully committed to fulfilling their mandate.  His de legation was prepared to continue engaging with 
other Members, and to think creatively about how to  best achieve that objective.  The position of his 
delegation in the negotiation and its view of the ingredients in the "Geneva cocktail" were well 
known.  It still believed that their ingredients w ould make the most satisfactory cocktail for all 
Members to consume. 
59. The United States was one of the numerous co-sponsors of the joint proposal of 
TN/IP/W/10/Rev.2, and reaffirmed its continued s upport for the text as the optimal means by which 
the Special Session could fulfil the mandate for the negotiation.  His delegation considered that the 
joint proposal represented the appropriate basis fo r continued work of the Special Session, and the 
best prospects for a rapid and expeditious conclusion of its work. 
60. It remained the firm position of the United St ates that the registration system should convey 
no legal presumptions, but should instead be limited, as the mandate made clear, to the facilitation of 
protection for wine and spirit geographical i ndications through a transparent system of 
information-sharing.   
61. He expressed his appreciation for the new EU delegate's efforts to focus on the positive 
aspects of convergence and sincerely looked forward to working with him and his delegation, as well 
as other delegations, in continuing their work.  While he did not agree with some of the elements the 
EU delegate had described, such as the weight assigned to geographical i ndications placed on the 
Register due to a unilateral determination by one Memb er on facts that existed in their jurisdiction, he 
did agree that a focus on practical implemen tation of the TN/IP/W/10/Rev.2 and TN/C/W/52 
proposals in the context of their respective jurisdicti ons would be helpful in making progress.  In that 
connection, as had been mentioned before, the jo int proposal was the least common denominator for 
the negotiation and therefore should form the basis of  the Special Session's efforts to move forward. 
62. At the last meeting of the Special Session,  the United States had joined several other 
Members in providing responses to the sub-questions  asked by the Chairman.  Its answers were 
reproduced in the minutes in TN/IP/M/26 so he would not  go into them again.  At this meeting he had 
expressed the hope to hear the answers of other Me mbers to the Chairman's sub-questions.  He had 
also noted the constructive suggestion from the de legation of the European Union that Members 
correlate their answers to the two proposals.  His delegation would like to comply with that helpful 
suggestion.  However, in order to explain how th e United States would implement TN/C/W/52, it still 
needed to understand the requirements of the proposal  in practical terms.  He was confident that, once 
the various TN/C/W/52 proponents ha d explained how they would answer the Chairman's questions 
with respect to their own implementation of the proposal, his delegation would be better able to 
answer those questions itself.  TN/IP/M/27 
 Page 13 
 
 
  63. Meanwhile, as suggested by his delegation in J une, to understand the proposals on the table, it 
would be helpful to answer several additional questions: 
(a) When considering whether a geographical indication qualifies for protection as a 
trademark or under another system of protec tion, what sources of information do the 
relevant national authorities take into account? 
 
(b) Is there any record of the information that  was considered or taken into account in 
making a decision? 
 
(c) If so, is the information in the examin ation files available to the public? 
 
(d) When is it possible for a third party to pr ovide information that was not taken into 
account and have the decision changed? 
 
(e) Can this information be the basis for having a decision? 
 
(f) Do Members have measures in place to ensure  that responsible officials or examiners 
take into account relevant information?  What are those measures? 
 64. In its previous answers his delegation had explai ned the sources of information that were used 
by relevant national authorities and that w ould be its answer to question (a).   
65. As for its question (b), his delegation's answer w as in the affirmative.  A complete record of 
the decision that was made would be maintained.  
66.  As to question (c), the answer was that the ex aminer's electronic record of research sources 
would be found along with the records of the search for conflicting marks, official actions and the like 
in the electronic file.  The electronic file records w ould be available to the public via the US Patent 
and Trademark Office's (USPTO) website (http://www. uspto.gov/) and the Trademark Documentation 
Retrieval ("TDR") application ( http://tmportal.uspto.gov/external/portal/tow
.)  His delegation would 
be interested in the extent to which other Memb ers did the same or were prepared to do so in 
connection to the answer he had just given to wh ether the information in the examination files was 
available to the public. 
67. As to question (d),  he said a third party might provide information at any time, but a letter of 
protest filed before publication would only be gran ted where it was determined that the evidence was 
relevant and might support any reasona ble ground for refusal appropriate in ex parte  examination.  
After publication, for the letter of protest to be acce pted, i.e. for the individual to obtain a right to 
reappraisal of the issue, the protestor must submit evidence supporting a refusal of registration, such 
that publication of the mark without consideration of the issue and evidence presented in the letter of 
protest was a clear error by the USPTO. 
68. As to question (e), the answer would be in th e affirmative.  The information provided in a 
protest could be the basis for having a decision.  For example, if the Deputy Commissioner granted a letter of protest filed prior to the mark's publicati on, the examiner would consider the information or 
evidence supplied with the letter of protest but w ould not be required to refuse registration based on 
that letter of protest - see TMEP §1715.02(b);   in the case of a letter of protest filed and granted after 
publication of the mark, an examiner must issu e the refusal or requirement except in unusual 
circumstances - see TMEP §1715.03(d).  Thus, there was no doubt that there were opportunities for 
reconsideration of relevant facts at the initiative of a third party.  His delegation would again be 
interested in understanding whether facts ignored coul d be a basis for decisions in other jurisdictions. TN/IP/M/27 
Page 14  
 
  69.  As to question (f) to supplement the Chair's two sub-questions,  he said that in addition to the 
letter of protest procedure there were two procedur es by which third parties might affect the initial 
registration or continued registration of  a mark in the United States.  These inter partes  proceedings 
fell under the jurisdiction of the USPTO's administ rative court, the Trademark Trial and Appeal 
Board, and are known as opposition and cancellation proceedings. 
70. He concluded by saying that, in light of the a bove clarifications, the US procedures provide a 
robust set of procedures that permitted outcomes to be challenged, including the possibility for appeal 
as well as administrative proceedings, including oppos ition.  Like Australia, the structures he had 
described at this meeting and at the June m eeting provided a strong measure of accountability, 
recourse and public record.   They were also c onsequences – as any judge or examining attorney 
would explain, no one wanted to be overturned.  He  hoped that the explanation of the US system had 
been helpful, and trusted that at the meeting a nd in future discussions they would gain a similar 
understanding of other Members' systems. 
71.  The representative of China
 said he would like to encourage the Chairman to further clarify 
the relevance of the sub-questions with the direc tion of the Special Session's discussion and provide 
guidance for future negotiations based on the answers already furnished by many Members. 
72. As a co-sponsor of TN/C/W/52, China requested that the three TRIPS-related issues, namely 
TRIPS/CBD, GI Extension and the GI Register should be pushed forward in para llel.  In this context 
he would like to encourage DG consultations on GI Extension and TRIPS/CBD to continue at least 
with the same frequency as the Special Sessions.  Furthermore, the GI Register should cover all 
products to avoid further discrimination against ge ographical indications for products other than 
wines and spirits.  His delegation's position on speci al and differential treatment remained unchanged. 
Second sub-question2 
73. The representative of New Zealand  said that he would come to the second question by a 
round-about route, i.e. by responding to the EU stat ement made earlier  and which he thought covered 
both Chairman's sub-questions. 
74. In relation to the first part of the EU statement he said that it was unhelpful in the process of 
advancing negotiations to enter into discussions of broader, rhetorical and political issues.  It was 
precisely to avoid that kind of discussion that the Special Session had been making efforts to focus on 
areas in which it could examine national systems, which in the end would enable more useful dialogue.  He thought that was being achieved.  He considered the last meeting in June to be good 
thanks to the Chairman's sub-questions.  This pro cess should continue.  If issues were brought in that 
were not within the mandate as th e European Union had done, then New Zealand would want to talk 
about for example agricultural mark et access subsidies, which clearl y would not help the process.   
75. The second part of the EU representative's statement was more positive and was a good faith 
effort to identify some emerging areas of convergence.   Whilst he would agree with the first two areas 
identified, and like the representative of the United States, he was not yet convinced that there was 
commonality of views regarding the weight to be att ached to the information on the Register.  As the 
minutes of the June meeting (TN/IP/M/26) had quite clearly shown, the weight of evidence had to be 
                                                     
 
2  "In national proceedings regarding the protection of geographical indications  and trademarks, what 
level of substantiation is currently required to raise the issue of ge nericness 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/27 
 Page 15 
 
 
  assessed on a case-by-case basis in New Zealand's sy stem.  His delegation would be cautious about 
predetermining the weight of evidence and hence bias such evidence, particularly if it came from a 
unilateral decision of another jurisdiction.   
76. The fourth possible area of convergence related to genericness.  He thought the representative 
of the European Union had stated that it was not contested that the burden of proving genericness was 
on the person claiming that the term was generic.  Th is was true to an extent.  As the minutes of the 
June meeting would show, his de legation had explained how the system in New Zealand would 
operate when a third party objected to an applica tion or sought to have a trademark overturned on the 
grounds of genericness.  In that situation, that third party bore the burden of proof.  However, his 
delegation had also said, as refl ected in  paragraph 81 on TN/IP/M/ 26, that "basically" an applicant 
had to satisfy the examiner that there were no grounds, e.g. genericness, that would prevent 
registration of a trademark.  In New Zealand's sy stem,  the applicant would have to prove, through 
evidence, that a term was non-generic.  This also  seemed to be the case in Switzerland:  as indicated 
in paragraph 108 of TN/IP/M/26, the Swiss represen tative had said that the proof of genericness or 
non-genericness of a geographical indication had to be provided by the GI applicant.  He actually took 
comfort from that statement, which was suggestive of a good balance in Switzerland at least between 
geographical indications and generi cs.  Having said that, it was not clear to him that the current 
burden of proof was actually reflected in the propos al that Switzerland supported as its representative 
had said in paragraph 109 of the minutes that the ob ligation to substantiate the genericness of a term 
should be included in the future Register.  He asked  the delegation of Switzerland to further clarify its 
position. 
77. Finally, he said that the suggestion made by  the delegation of the European Union that 
Members examine how the two proposals on the table might be implemented was potentially constructive and doubtless resulting from the fact-ba sed discussion arising from the Chairman's sub-
questions.  In that context, he acknowledged that  Members had previously engaged in a reasonable 
process of questions and answers relating to the proposals supported by the European Union, 
Switzerland and some others.  However, he did not consider that such a dialogue based on questions 
and answers was truly a replacement for a properly elaborated legal proposal.   Should his delegation 
have to examine how that proposal might be impl emented, then it would be helpful to have an 
elaborated version of the TN/C/W/52 proposal, or at  least to hear from a wide variety of Members 
who supported that proposal on how they would im plement it.  Whilst there had been a few more 
delegations explaining how they would implement th e so-called "majority proposal", he would wish 
to hear more from other co-sponsors.   
78. The representative of Chile
 recalled that, at the June mee ting his delegation had addressed the 
first question and would therefore simply refer to its statements made then, and focus on 
sub-question 2.   
79. The Chilean Industrial Property Law 19.039  provided that generic terms could not be 
registered as trademarks or as geographical indicati ons.  With regard to trademarks, Article 20.e) of 
the Law stipulated that expressions or signs used to indicate the type ("género") of products or 
services, and those generally used in trade to d escribe certain goods or classes of goods, or certain 
services or types of services could not be registered as trademarks.  As regards geographical 
indications, Article 95 of the same Law estab lished that signs or expressions that were common or 
generic indications, i.e. considered as such by th ose familiar with such matters or by the public in 
general could not be recognized as geographical indications.  The procedure of registering trademarks 
and geographical indications was administered by the Industrial Property Institute, and the issue of 
genericness of a term was determined by the Ins titute.  The genericness of a term could also be 
challenged in opposition proceedings by any interest ed party.  In that case, whoever presented an 
opposition must substantiate the cause of action or  provide other background information concerning TN/IP/M/27 
Page 16  
 
  the generic nature of the term, to enable the Industr ial Property Institute to car ry out a more thorough 
analysis. 
80. With regard to the burden of proof of generi cness under sub-question 2, he said that when it 
related to trademark applications , which were of the competence of the Industrial Property Institute, 
the issue of registrability of a term was to be dete rmined by the Institute.  The applicants must, in 
principle, comply with the requirements to ensure th at the term was eligible for registration.  One of 
the requirements was that the term for which prot ection was sought was not a generic term.   The 
situation differed when the trademark or the geogra phical indication had already been registered, i.e. 
was protected.  In that case, the burden of proof th at the term registered was generic would be on the 
alleging party.  Appeals could be made to the Ins titute against the registrati on or another action could 
be initiated. 
81. The representative of Thailand
 stated that with regard to sub-question 2, Thailand defined a 
generic name as  a name commonly known as referring to a particular kind of goods that was defined 
in the inventory of the Act on Protection of Geographi cal Indications of  2003.   During the application 
process for GI protection, applicants would bear the burden of proving genericness or 
non-genericness.  If a protected term was challenged, the person who challenged that term would bear 
the burden of proving genericness or non-genericness. 
82. The representative of Japan  recalling that his delegation had made a brief comment regarding 
the Chairman's sub-question 2 at the previous session,  wished to complement the information given. 
In order to take the negotiation forward, Japan's comment to sub-question 2 should be provided with 
the proposals to the Special Session in mind.  In particular, TN/C/W/52 moda lity proposal should be 
borne in mind because it included a relevant part:  it proposed that "domestic authorities shall consider 
assertions on the genericness exception laid down in TRIPS Article 24.6 only if these are substantiated."  That sentence demonstrated th at the burden of proof of a person who sought 
protection of a geographical indication was a relevant issue.  For that reason, he wished to explain the Japanese system from the perspective of a person seeking protection of a geographical indication as 
well as a person seeking to prevent that protection. 
83. Geographical indications for wines and spirits were protected under "Standard for Indication 
in Relation to Geographical Indications," which was based on the Law Concerning Liquor Business 
Association and Measures for Securing Revenue from Liquor Tax.  Under that  system, a person who 
sought protection of a geographical indication was not first required to show that it was not identical 
with the term customary in common language as th e common name for goods or service at issue in 
Japan.  That did not signify that the legal system  in Japan hindered a person who sought to prevent 
protection to provide information that the geogra phical indication sought for protection was likely to 
be identical with the term customary in comm on language as the common name for goods or service 
at issue in Japan. 
84. Japanese Trademark Law did not first require a person who sought rejection, invalidation or 
cancellation of a trademark with a GI for the purpo se of protection of the geographical indication to 
show that the GI sought for protection was not generic.   At the stage of trademark examination, a third 
party might provide information about genericness of the trademark as such applied for registration.  
After registration, a third party might initiate an  opposition or invalidation tr ial and might refer the 
issue of genericness of registered trademarks to a board of appeal. 
85. The representative of Chinese Taipei
 said that, as a co-sponsor of the joint proposal it had 
been pursuing a multilateral system that was within  the mandate of the Doha Declaration and the 
TRIPS Agreement.  As stated in previous session s, her delegation firmly believed that the joint 
proposal was the most appropriate solution within the mandate because of its voluntary participation 
and a lesser degree of burden placed on the participating Members.  TN/IP/M/27 
 Page 17 
 
 
  86. In response to sub-question 2.a, she said th at the examiner who rejected a trademark 
application was required to provide reasons and suff icient evidence, which meant that the examiner 
should bear the burden of proof.  In terms of th e level of substantiation currently required, the 
examiner must support his decision with clear and convincing evidence.  In response to sub-question 
2.b, a challenger of a registered trademark should bear the burden of proving his or her claims.  A 
written document containing the grounds for the challenge and supporting evidence must be 
forwarded to the right holder of the trademark for consideration in defence and counter-evidence.  
Again, the grounds and evidence put forward in suppor t of the challenge must be capable of proving 
the claims clearly and sufficiently. 
87. The representative of Australia  said that her delegation shared the views of the European 
Union that it was unfortunate that the Special Session was not yet in a position to enter an end-game 
scenario.  For her delegation, the Special Session's ability to engage in the crucial technical work 
necessary to reach that end-game point had b een unfortunately hamstrung by some Members' 
insistence on linking the issue of the register to  other unrelated issues which were not mandated 
aspects of the Doha Development Agenda. 
88. Moreover, progress in the Special Session was lim ited by the absence of negotiating texts on 
the table.  It had long expressed frustration with the unwillingness of some Members to submit formal proposals to the Special Session which were both cons istent with the mandate and at a comparable 
level to the joint proposal.  Such a submission would provide clarity on the status of the various ideas 
and documents circulated and would allow a genui ne technical dialogue on a text, enabling this 
negotiating group to fulfil their mandate most effectively. 
89. Her delegation considered that active engageme nt in technical discussions by all Members 
would be the most useful way to identify areas of convergence that were fundamental to advance their 
work in this Session.  It welcomed the efforts by  the European Union in that context but did not 
necessarily share their views on the content of possi ble areas of convergence.  She wondered whether 
a more fulsome technical discussion would allow th em to find those areas of convergence in the 
future. 
90. With that in mind, she would provide an ela boration on the response to the Chairman's second 
sub-question.  On the question of substantiation of genericness, in Australia, rather than characterizing 
the genericness of a term as something that required  substantiation, the fact that the term was a 
common name for a good or a service was viewed as a gr ound for that term's inab ility to be capable of 
distinguishing the good or service, i.e. its inability to  be registered as a trademark.  In Australia, 
genericness was generally determined by the court, fo r example with respect to a registered trademark 
which was being challenged by anot her party who had considered it as having lost its significance as a 
trademark or that it had become generally accepted w ithin the relevant trade as a generic.  There was 
no explicit provision in the trademark legislation re lating to the particular level of substantiation 
required to raise the issue of genericness.  During an application for a process for a protection of a 
term, if a trademark examiner found that grounds  for rejection existed because the indication was 
common or generic, the applicant could attempt to overcome the ground for rejection by providing 
information sufficient to persuade the examiner that  the sign was not generic, i.e. similarly to the 
process in New Zealand and, as she had understood,  in Switzerland, the burden would be on the 
applicant.  In a practical sense, once the ground had been identified, the burden was on the applicant 
to show that the sign was not generic.  In circ umstances where a trademark had been accepted, third 
parties might challenge the acceptance of the trad emark.  In Australia the burden was with the 
opponent to persuade the officer that the mark was common or generic. 
91. In circumstances where a protected term w as challenged under the trademark system in 
Australia, a challenge to a geographical indication registered under the trademark system must be 
taken to court and the burden of proof in that circ umstance was for the challenging party to prove that TN/IP/M/27 
Page 18  
 
  a term was generic, as initially there would be a presumption of validity in favour of the registered 
trademark.  Only a court could make a definitive fi nding of genericism for tr ademarks and that would 
normally be as the result of what was known as a cancellation action.  An agreed person or the registrar of trademarks might make an application 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. 
92. In concluding, she said that her delegation was looking forward to hearing from all its trading 
partners similar levels of detail on their practices with respect to the Chairman's sub-questions and 
with respect to the proposals that they supported. 
93. The representative of the European Union
 said that the representative of New Zealand, who 
did not wish to respond on the first part of his initial statement, had actually well responded.  The 
point he was trying to make, which was slightly mi scharacterized, was not to draw other issues into 
that context but merely to usefully remind delegatio ns that they were not negotiating in a vacuum, but 
in a broader context.  
94. On sub-question 2, he would refrain from repea ting what his delegation had said in June, but 
would simply refer Members to paragraphs 88–93 of the minutes of the June meeting with a few 
additional comments.   
95. On the supplementary questions raised by the de legation of the United States, he said that his 
delegation had responded to most of them in June and would refer th e delegation of the United States 
to sub-paragraphs 9–15 of the minutes of that m eeting.  His delegation would check again with 
colleagues and see if they had additional el ements to share for the next meeting. 
96. In response to Australia's statement, he sai d he understood that the initial burden was on the 
trademark examiner.  It was only when the tradem ark examiner had made a determination that the 
burden shifted to whoever was cont esting the determination.  He w ould appreciate clarification from 
Australia.  If his initial understanding was correct, then he believed that there was convergence as 
stated in his previous statement. 
97. The representative of Canada  expressed his delegation's support for the comments made by 
the delegations of New Zealand, the United States , Australia and others concerning the utility of 
having a substantive technical proposal from th e TN/C/W/52 co-sponsors.  His delegation had 
demonstrated in past TRIPS Council meetings  how the joint proposal would be implemented 
domestically in Canada.  His dele gation had taken up the call to see if it could seek to do the same 
with the TN/C/W/52 proposal but it simply could not do so because its being a modality proposal and 
as such was technically incomplete.  A proposal s hould include all relevant elements and not leave 
them for future discussions, for example, the notif ication elements.  He reiterated the need for a 
substantive technical proposal from the TN/C/W/52 co-sponsors in conjunction with further technical 
information that could emerge from the types of questions that the Chairman had put before the 
Special Session.  
98. Referring to paragraph 88 of the minutes of TN/IP/N/26, where the European Union had 
indicated that, under its proposal on genericness, a party making a claim must do so through a clear and sufficient demonstration of their case so that the other party could repl y, he asked regarding 
sub-question 2 whether or not there were criteria or guidelines regarding what constituted a clear and 
sufficient demonstration.  
99. Referring to paragraph 90 of the same minutes, where it was reflected that under the EU 
submission third parties might file "duly substant iated" objections, he asked the delegation of the 
European Union what would constitu te a duly substantiated objection.  TN/IP/M/27 
 Page 19 
 
 
  100. The representative of the United States  said that with respect to the second sub-question that 
the Chairman had elaborated, he w ould refer other delegations to hi s delegation's intervention at the 
June meeting of the Special Session, reflected in paragraph 110 of the minutes of that meeting.   
101. In response to the comment made by the re presentative of the European Union that his 
delegation had mostly answered the questions put  by the United States, asked whether the EU 
delegation could provide the inform ation in response to each sub-question in a more specified form.  
This would be helpful for other dele gations, particularly regarding the issue of availability of a record 
and the availability of that record to the public and in  what format that would be made available.  He 
also thought that answers to the questions posed by the representative of New Zealand would be 
helpful in that regard. 
102. The representative of Peru  said that, under Peruvian law, ge neric terms were not eligible for 
registration, either as GIs or as trademarks.  At the time of assessing the application for registration 
the examiner would take into consideration all the various sources of inform ation.  Determinations 
could be challenged on administrative and judiciary levels.  Moreover, if the application was opposed, 
the opponent had to substantiate the genericness claims.  As regards oppositions, decisions thereon 
could also be challenged on admi nistrative and judiciary levels. 
103. The representative of Switzerland  said she  would not repeat the responses that she had given 
in June on the second question, but would instead refer to paragraphs 108-109 of the minutes in 
TN/IP/M/26. 
104. With regard to comments made by previous sp eakers, she recalled that under the TN/C/W/52 
proposal the proponents had submitted a text with  draft modalities and principles because in the 
course of detailed discussions based on previous proposal s they had realized that they were unable to 
make progress because they could not agree on issues of principle.  Should the Special Session come 
back to discussing details, she failed to see how they  could make progress before agreeing to certain 
general principles for the multilateral system. Th at was why it would be necessary to continue 
working on the issues of principle in TN/C/W/52 in order to get more clarity for the Special Session. 
105. Turning to the comments made by the re presentative of New Zealand regarding her 
intervention at the June meeting, she said that at national level, in carrying out an examination of 
geographical indications, the competent authorities du ly took genericness into consideration before 
registering the indications.  She expressed her satisfaction that the New Zealand delegation had 
recognized that the Swiss authorities carried out su ch examination, and that there was a balancing 
between geographical indications and generics at national level.   This was also a recognition that the 
information that would be provided subsequently as well as the geographical indications that would 
be sent to the multilateral Register would be based  on work carried out at national level, taking 
account of various elements, notably genericness.  
106. With regard to the manner in which consider ation would be given to the work done at 
national level and what Switzerland was seeki ng to obtain through the negotiation on the 
establishment of a multilateral Register, she said that  it was necessary to make a distinction between 
the objectives of the two registers.  On a national level, when a geographical indication was examined 
and then registered, the register created protection of the geographical indication at national level.  
Once granted, the registration was very strong.  She noted that, in many jurisdictions, including the Swiss one, the trademark applicant would not be required to prove that the trademark was not 
descriptive or generic.  It was for the examiner to determine during the examination process whether 
or not the term was generic or descriptive and then  the right holder could object to the assessment 
made by the examiner.  In that regard the tradem ark examiner clearly played an important role.  TN/IP/M/27 
Page 20  
 
  107. The TN/C/W/52 proposal sought to create a source of information that all of the WTO 
Members had to take into account whenever they exam ined a GI or trademark application.  As pointed 
out, registering a geographical indication in the multila teral Register would not create protection in all 
WTO Members.  However, it would create a source of information that each and every Member would have to take into account whenever its au thorities considered a trademark application.  
Thereafter, they would decide at national level whether or not that information would be fully 
implemented to reject the trademark because it contai ned a GI application, or  based on the evaluation 
of the situation at national level they would decide  not to take that information into account because 
the term was generic. 
108. Switzerland's concerns and the reasons for its support of the TN/C/W/52 proposal and its 
various elements was to provide a mandatory source of information for all WTO Members to facilitate 
protection of geographical indications in third c ountries and to provide information that only the 
country of origin was in a position to provide on geographical indications that it had already acknowledged at a national le vel within its territory. 
109. The aim pursued and the mandate received we re to facilitate protection of geographical 
indications in third countries.  In  this regard, she said that in many cases geographical indications 
were the property of local communities who did not of ten have the resources to monitor third markets 
and all the WTO Members as far as trademark registrations were concerned.  Hence, a mechanism had to be found, obliging trademark examiners to give careful attention to geographical indications 
when examining trademarks to prevent trademar k registrations of geographical indications for 
products that were not linked to those GIs.  Once  a trademark had been registered in good faith, it 
would prevent, at least in many domestic systems, the GI product of the country of origin from being 
marketed in a third country on grounds of prior tr ademarks.  In that regard, this was one of the 
important elements of TN/C/W/5, which definitely needed to be considered in creating a multilateral 
system that facilitated the protection of geographical indications. 
110. The Chairman
 recalled that the second sub-question di d differentiate two elements:  on the 
one hand, the level of substantiati on required to raise the issue of genericness, and on the other, the 
burden of proof, i.e. who would bear the burden of proof.   
111. The representative of the European Union  first referred to his dele gation’s initial invitation to 
all Members, and to the Joint Proposal Group in pa rticular, to describe how they would implement the 
TN/C/W/52 proposal.   The representative of Sw itzerland had said that TN/C/W/52 was never aimed 
at being a legal text, but a draft modalities text.  He  did not think that that in itself should prevent  
delegations from describing how, for example, the concept of "prime facie" would work in their 
system.  He said that even if the European Union di d not like the joint proposal it had made the effort 
to examine how it could be implemented.   He would ask the Joint Proposal Group to do the same 
with TN/C/W/52 even if it was not a full legal draft.   He hoped in that spirit they could approach the 
question as well and endeavour to make a good faith e ffort to describe how it would be implemented. 
112. As regards the questions raised by New Zeala nd and Canada, he said that his delegation had 
the beginning of a response, but would need some veri fication.  He would come back to it at the next 
meeting.   
113. On the US questions, he asked the delegation of  the United States to clarify the context of 
their questions (d) and (e) as that of an administrative procedure or that of a legal challenge subsequent to the administrative procedure.  Furthe r clarifications would help his delegation look at a 
possible answer.  TN/IP/M/27 
 Page 21 
 
 
  114. The representative of the United States  responded to the preceding intervention by saying that 
with respect to sub-questions (d)  and (e), his de legation would be interested in both aspects to the 
extent that they were relevant. 
115. With regard to the second sub-question on th e genericness, the representative of Turkey  said 
that under the relevant Turkish legislation, ge nericness was specified as one of the reasons for 
absolute refusal.  When an application was made, the examiner had to carry out the necessary research 
and, if there was a claim of non-genericness, the burden of proof was on the applicant.  Genericness 
was defined under Turkish law as the name that had become the common or generic name for the 
product, even where it related to a region or an area associated with the production or marketing 
origin thereof.  Use by the public in the area of orig in and use by consumers in  general had to be taken 
into consideration in order to de termine whether or not a name was generic.  After registration was 
completed, any dispute had to be resolved in a judicial procedure. 
116. Her delegation was in agreement with the de legation of Switzerland that the TN/C/W/52 
proposal contained some key elements that must be  first agreed.  The Special Session should continue 
discussing these key issues.  
117. Furthermore, like China and Switzerland, he r delegation believed that a register of 
geographical indications for all products would be an  ideal solution in the context of a comprehensive 
approach.  The three issues under discussion in re lation to the TRIPS Agreement should be taken up 
in parallel for a successful c onclusion of the negotiations. 
118. The Chairman  expressed his thanks to all delegations th at had contributed to the discussion, in 
particular those delegations that had made new contributions.  He would not attempt to make a 
summary of what he had found to be a rich, instruc tive and structured discussion.  As he had indicated 
at the outset of the meeting, he intended his sub-ques tions to be a starting point, and help the group to 
structure and focus the work on certain elements to see where the differences laid and where there 
could be commonalities. 
B. OTHER BUSINESS  
119. Regarding the Special Session's work in the coming weeks, he recalled the TNC Chairman's 
remarks at the 19 October meeting that "small group  activities will continue until mid-November, at 
which point I think we will need to evaluate again and take stock of where the process has got to as 
well as next steps, benefiting also from the discuss ions at the G-20 and APEC Leaders' meeting".  
Keeping in mind that background, as well as what might be envisaged by the whole Membership, he said he would consult delegations, as appropriate, on how to proceed with their work to ensure staying 
in step with the overall process. 
120. Regarding future meetings for 2011, he recal led that, at the regular session of the TRIPS 
Council of 26-27 October, the dates for meetings in 2011 had been set for 1-2 March, 7-8 June and 
25-26 October 2011.  He suggested that, as in the past, a formal meeting of the Special Session be 
held back to back with the regular session meetings at these dates, i.e. on 3 March, 9 June and 
27 October. 
121. With regard to the work of the small brains torming group on TRIPS, he briefly recalled that, 
at the informal TNC meeting of 19 October, the TNC Chairman had reported on the work and 
consultations guided by the so-calle d "cocktail approach" – a combina tion of variable geometry, small 
groups, bilateral contacts, Negotiati ng Groups and the Director-General 's own consultations.  It had 
been agreed that all of those processes had to feed into the Negotiating Groups and the TNC, 
preserving the centrality and primacy of the multilateral process and its transparency and 
inclusiveness.  In the so-called "small group" pro cess at ambassadorial level, brainstorming sessions TN/IP/M/27 
Page 22  
 
  had taken place in various sectors, including TRI PS.  For more details on the TNC's Chairman's 
remarks on that process and on the various groups, he  referred to document JOB/TNC/5.  He recalled 
that the TNC Chairman had also urged delegations to  continue to reach out to ensure inclusiveness 
and participation.  He trusted that the active pa rticipants in the small brainstorming group would 
communicate any significant developments in their small group discussions to the wider Membership 
when appropriate, in order for such developmen ts to feed into the multilateral process.   
122. He then invited delegations that had particip ated in the small brainstorming group to make 
any reports on any developments therefrom. 
123. The representatives of Chile
 and Switzerland  thanked the Chairman for his remarks on the 
small group meetings and for the opportunity to provide information.  They said that, following the 
discussions on TRIPS issues in the small group, their delegations had sent a request addressed to the 
Director-General seeking a factual paper to better understand the use of certain expressions in the 
WTO dispute settlement procedures.  The emphasis was placed on three expressions:  prime facie 
evidence , burden of proof  and due diligence .   
124. The representative of Ecuador  asked whether or not the factua l paper would be provided to all 
WTO Members for purposes of transparency and inclusiv eness.  Such a paper could be of interest to 
all Members. 
125. The representative of Bolivia  supported Ecuador's observations.  His delegation was not 
against that type of work being done but was stru ck by the procedure.  Whilst acknowledging that the 
small informal groups had been set up to facilita te negotiations, he wondere d whether they had the 
authority to ask the Secretariat to provide documents, in particular on issues of interest to them only.  
He wanted clarity on the right of those groups to make that kind of request and whether all of the 
parties interested in the negotiations might be entitl ed to make similar requests in the interests of 
inclusiveness and transparency. 
126. The representative of Switzerland  said that her delegation had taken note of the statement 
made by the representative of Ec uador and would ensure that tran sparency was respected on that 
issue.  
127. The representative of the United States  said that he assumed that the paper requested would 
not be an official TRIPS document.  As regards ca lls for transparency, he also assumed that the paper 
would be made available to all Members.   
128. The Chairman  thanked the delegations of Chile an d Switzerland for the information which 
provided the Special Session with some transparency  and fed into the multilateral process as agreed at 
the last TNC meeting.  His understanding was that  the request had come from the Members who were 
participating in the small group.  It was a request  made specifically by Chile and Switzerland to 
facilitate the discussion in the small group.  The re porting had been done by the delegations of Chile 
and Switzerland in order to bring awareness as to what  was being done in that small group.  What he 
anticipated was that, once the docu ment had been prepared at the request of two delegations, the 
document would go to the Members that had reque sted it and this negotiating group would rely on 
those Members to make the paper av ailable to ensure transparency.  
129. The Special Session took note  of the statements made.  
 
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