WORLD TRADE  
ORGANIZATION  TN/IP/W/12/Add.1 
4 May 2007 
 
 (07-1856) 
Council for Trade-Related Aspects 
of Intellectual Property Rights Special Session  
 
 
SIDE-BY-SIDE PRESENTATION OF PROPOSALS 
 
Note by the Secretariat
 
 
Addendum  
 
  
 
 
COMPILATION OF POINTS RAISED AND VIEWS EXPRESSED 
ON THE PROPOSALS 
Page no.
 
PREAMBLE ............................................................................................................................... ..............2  
PARTICIPATION ............................................................................................................................... ......3  
NOTIFICATIONS ............................................................................................................................... .....7 
REGISTRATION ............................................................................................................................... .....17  
 FORMALITY EXAMINATION ..........................................................................................................18  
 RESERVATIONS ...........................................................................................................................19  
 CONTENT OF REGISTRATIONS .....................................................................................................27  
CONSEQUENCES OF REGISTRATION (PROPOSED "EFFECT OF 
REGISTRATION"/"PARTICIPATION", "PROCEDURES TO BE FOLLOWED BY PARTICIPATING 
MEMBERS"/"ACCESS FOR OTHER MEMBERS" OR "LEGAL EFFECTS IN PARTICIPATING MEMBERS"/"LEGAL EFFECTS IN NON-PARTICIPATING MEMBERS"/"LEGAL EFFECTS IN 
LEAST-DEVELOPED COUNTRY MEMBERS") ..................................................................................28
 
 IN PARTICIPATING MEMBERS ......................................................................................................28  
 IN NON -PARTICIPATING MEMBERS ..............................................................................................39  
 IN LEAST -DEVELOPED COUNTRY MEMBERS .................................................................................39  
DURATION AND RENEWALS OF REGISTRATIONS .........................................................................40  
MODIFICATIONS AND WITHDRAWALS OF NOTIFICATIONS AND REGISTRATIONS - ..............40  
TERMINATION OF PARTICIPATION IN THE SYSTEM .....................................................................40  
FEES AND COSTS ............................................................................................................................... .41 
REVIEW ............................................................................................................................... ..................51  
CONTACT POINT ............................................................................................................................... ..51 
ADMINISTERING BODY/OTHER BODIES .........................................................................................51  
DATE OF ENTRY INTO OPERATION .................................................................................................52  This document has been prepa red under the Secretariat's own 
responsibility and without prejudice to the positions of Members 
and to their ri ghts and obli gations under the WTO.  TN/IP/W/12/Add.1 
Page 2  
 
 In line with the  Chairman's statements at the open-ended consultations held 
on 11 December 2006 and 13 February 2007, the pur pose of this addendum to document TN/IP/W/12 
is to present a factual compilation of the issues ra ised and views expressed in the Special Session's 
discussions of the proposals set out side-by-side in th e main part of that document.  The addendum is 
based on the record of the discussions contained in the minutes of the Special Session, in particular 
documents TN/IP/M/14-18. 
 
 The material is organized under the same headi ngs as used for the side-by-side presentation of 
the proposals.  It should, however, be noted th at, since the notification and registration systems 
proposed in the various proposals are integrated wholes with interdependent elements, Members' 
views on one element of a proposal under a heading frequently involve their views on other elements of the proposal addressed under other headings.  Thus the points made and views expressed on any 
one element have to be seen in the light of poi nts made and views expressed on the overall proposal as 
recorded in the addendum as a whole.  Moreover,  being a summary, the addendum does not purport to 
be a full reflection of all nuances of every statem ent, for which the relevant Council minutes should 
be consulted.   Against each heading, references have been  made to the corresponding provisions of the 
proposals set out in TN/IP/W/12, using the annotation "HKC" for the proposal by Hong Kong, China, 
"JP" for the Joint Proposal by Ar gentina, Australia, Canada, Chile, Costa Rica, Dominican Republic, 
Ecuador, El Salvador, Honduras, Mexico, New Zeal and, Nicaragua, Paraguay, Chinese Taipei and the 
United States, and "EC" for the prop osal by the European Communities. 
 
_______________ 
 
PREAMBLE 
1. The view has been expressed that the preamble to the Joint Proposal  was important in 
providing a context for the proposed decision.
1  In this regard, it has been recalled that Article 31.2 of 
the Vienna Convention on the Law of Treaties stat ed that "the context" for the purpose of the 
interpretation of a treaty shall comprise, in addition to the text, its preamble.2  The preamble was 
intended to provide some useful reminders about the negotiating mandate of Article 23.4 of the 
TRIPS Agreement and paragraph 18 of the Doha Declaration.  First, the aim of the system was to facilitate the protection of geographical indications and not to confer additional rights in relation to 
those notified geographical indications.  Secondly an d related to the previous point was the premise 
that the basic balance of rights and obligations un der the TRIPS Agreement should not be challenged.  
Thirdly, it reminded Members of the fundamental pr inciple in Article 1.1 of the TRIPS Agreement, 
which enabled all Members to determine the a ppropriate method of implementing their TRIPS 
obligations within their own legal system and pract ice. While the preamble did not capture the full 
panoply of principles underlying the Joint Proposal, such as minimal costs and burdens, it set the 
basic terms of reference and guiding principles for the register and embedded it firmly in the TRIPS 
framework.
3  The preamble was important in that it refe rred to the mandate for the negotiations, which 
was to achieve a multilateral system that would be voluntary in nature and would preserve Members' 
rights and obligations under the current TRIPS Agreement, in particular the flexibilities under 
Articles 1.1 and 24 of the Agreement.4 
                                                      
1 Australia, TN/IP/M/14, para. 23;   Chile, TN/IP/M/14, para. 21. 
2 Chile, TN/IP/M/14, para. 21. 
3 Australia, TN/IP/M/14, para. 23;  New Zealand, TN/IP/M/14, para. 22;  United States, TN/IP/M/14, 
para. 24. 
4 Brazil, TN/IP/M/14, para. 29.  TN/IP/W/12/Add.1  
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2. It has been said that it was difficult to consider  the proposed preamble of the Joint Proposal 
independently of the other headings in the vari ous proposals.  The preamble prejudged the choice 
Members might make on participation and other issues.5 
3. Clarifications have been sought regarding th e consequences of the proposed preambular 
references for obligations that are embodied in the operative provisions of the Joint Proposal.  While 
paragraph 5 provided that partic ipating Members shall commit themselves to ensuring that their 
procedures would include the provision to consult th e database, how would this relate to the over-
arching preambular objective that there would be no obligations arising out of the proposed system?  Would a participating Member be compelled to inco rporate the obligation to consult the database in 
its national legislation or could that Member do nothing because the preamble said that the system did 
not add to the existing TRIPS obligations?
6  In response, it has been said that, under the fourth tiret of 
the preamble providing that "the system shall not c onfer any rights with respect to the geographical 
indications registered in the system" there w ould be no additional rights in relation to these 
geographical indications, the decision-making being left to the national authorities.  The system 
would, however, provide a "one-stop shop" for use by those authorities, so that  they could consult the 
register and see what had been notified.  As regard s the fifth tiret, which said that "the system shall 
not prejudice any rights or obligations of a Memb er under the TRIPS Agreement", there would be an 
additional obligation, i.e. to consult the database for those Members that have chosen to participate in 
the system;  but this obligation would not prejudice existing rights and obligations, for example the right under Article 1.1 to choose how to implemen t the obligations under the Agreement and the right 
to exercise any of the exceptions under Article 24 at any time.
7 The Joint Proposal would not, in 
principle, require changes to national legislation.8 
4. It has been said that the EC proposal , which consisted of proposing an annex to the 
TRIPS Agreement, avoided the need for a preamble and thus a discussion thereon.9 
PARTICIPATION  – HKC, E. 1-2, F;  JP, 2.1-2;  EC, 1 
 5. With regard to the Hong Kong, China  proposal, it has been explained that this proposal 
foresaw a voluntary system with no legal effects in non-participating Members
10 and would therefore 
only be binding upon Members choosing to participate in the system.11   
6. The view has been expressed that, while the vol untary nature of the system proposed was to 
be welcomed12, the provision in section F for reviewing the scope of participation in the system 
four years after the introduction was a matter of concern13, in particular as its voluntary nature was a 
fundamental principle of the system.14  Any change in the scope of  participation would go beyond the 
mandate of the Special Session.15   In response, the point has been  made that the proposal was aimed 
at overcoming one of the difficulties that the Special Session was facing, namely the different interpretations of the mandate in regard to the qu estion of participation.  One way to overcome this 
difficulty would be a more incremental approach, namely to set up the system, let it operate for a 
                                                     
 
5 European Communities, TN/IP/M/14, para. 26. 
6 India, TN/IP/M/14, paras. 25 and 30. 
7 New Zealand, TN/IP/M/14, para. 28. 
8 Argentina, TN/IP/M/14, para. 32. 
9 European Communities, TN/IP/M/14, para. 26. 
10 Hong Kong, China, TN/IP/M/12, para. 38. 
11 Hong Kong, China, TN/IP/M/6, para. 15. 
12 Canada, TN/IP/M/6, para. 22;  Uruguay, TN/IP/M/6, para. 20. 
13 Canada, TN/IP/M/16, para. 35;  Colombia, TN/IP/M/14, para. 56;  Malaysia, TN/IP/M/14, para. 54; 
United States, TN/IP/M/14, para. 44, TN/IP/M/16, para. 30.   
14 United States, TN/IP/M/14, para. 44. 
15 United States, TN/IP/M/16, para. 30. TN/IP/W/12/Add.1 
Page 4  
 
certain period of time, and then undertake the review.
16  The proposed review clause related to all 
aspects of the system and not only to participation;  should there be no consensus in the review, then 
the system would remain as it was.17  
7. It has been questioned why it would be necessary to make a distinction with regard to legal 
effects between participa ting and non-participating Members in a system that was truly multilateral, 
whose purpose was to facilitate protection and the le gal effects of which should not hamper recourse 
to the exceptions under Article 24.18  In response, it has been said that there could not be a system 
which was labelled as "voluntary" in terms of pa rticipation, which at the same time provided 
additional substantive legal effects for non-participants.19 
8. With regard to the Joint Proposal , it has been explained that it proposed a strictly voluntary 
system without binding legal effects in non-particip ating Members.  This approach was shared or 
preferred by an overwhelming majority of Members20, including those which did not have any 
geographical indications.21  Participation was a fundamental issue22, in particular for those Members 
that did not produce wines and spirits23 and had no economic interest in the negotiations but only a 
systemic one.24   It would be unfair and simply unaccepta ble to impose substantial obligations and 
costs on a large majority of non-wine and spirit producing Members that would not gain anything 
from the system, nor be able to make practical use of it.25  The Joint Proposal truly respected the 
concept of voluntary participation by leaving them th e choice of whether or not to opt to participate in 
the system.26  For transparency purposes, the proposal pr ovided that Members wishing to participate 
would submit a notification of their intention to participate.27  Such a requirement would also result in 
greater legal certainty for the entire system and avoid any misunderstanding as to whether or not a 
Member had any obligation under the system.28 
9. In response, it has been said that another large group of Members preferred a system with 
binding legal effects in all Members29, and that it was dangerous to argue that, because there might be 
no benefits to be gained by a country from a syst em, that system should automatically have to be 
voluntary.  For example, a country that did not ha ve patents or trademarks did not thereby escape the 
obligation to apply the patent or trademark provisi ons of the TRIPS Agreement with regard to rights 
of other Members.30  By way of reaction to this point, it has been said that drawing a parallel with 
such other IPRs was not appropriate since the TR IPS Agreement did not mandate the negotiation of a 
registration system in these areas.31 
                                                      
16 Hong Kong, China, TN/IP/M/14, para. 59. 
17 Hong Kong, China, TN/IP/M/16, para. 37. 
18 Switzerland, TN/IP/M/14, para. 45. 
19 Hong Kong, China, TN/IP/M/14, para. 51. 
20 Argentina,  TN/IP/M/16, para. 55;  Australia, TN/IP/M/16, para. 61, TN/IP/M/17, para. 25;  
Malaysia, TN/IP/M/16,  para. 58;  New Zealand, TN/IP/M/16, para. 50. 
21 Argentina,  TN/IP/M/16, para. 55. 
22 Australia, TN/IP/M/14, para. 46;  New Zealand, TN/IP/M/14, para. 47;  United States, TN/IP/M/14, 
para. 43. 
23 Australia, TN/IP/M/14, para. 46. 
24 Costa Rica, TN/IP/M/16, para. 13. 
25 Canada, TN/IP/M/16, para. 34. 
26 Canada, TN/IP/M/16, para. 36. 
27 Canada,TN/IP/M/16, para. 36;  Colombia, TN/I P/M/16, para. 59;  United States, TN/IP/M/14, 
para. 43. 
28 Argentina, TN/IP/M/16, para. 55. 
29 European Communities, TN/IP/M/16, para. 65. 
30 European Communities, TN/IP/M/14, para. 50;  India, TN/IP/M/16, para. 52. 
31 Argentina, TN/IP/M/14, para. 52.  TN/IP/W/12/Add.1  
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10. Commenting on the provisions on participation in the Joint Proposal, the view has been 
expressed that a voluntary register would not meet the mandate of Article 23.4 of the 
TRIPS Agreement32, because it denied the basic principle that  any multilateral instrument should, in 
WTO terms, have effects in all Members33 and because such a system would not have added value 
and thus would not facilitate the pr otection of geographical indications.34  Article II:2 of the 
Marrakesh Agreement clearly defined "Multilateral Trade Agreements" as those which were binding 
on all Members.  Moreover, it should be borne in mi nd that the term "multilateral" appeared in the 
Article 23.4 mandate precisely because some negotia tors in the Uruguay Round had sought a system 
that would go beyond the Lisbon Agreem ent with its voluntary participation.35 
11. In response, it has been argued that the words "in those Members participating in the system" 
in Article 23.4 meant that the system had to be voluntary;  in other words, that there could be 
Members not participating in the system.  For this  reason the multilateral system put forward in the 
Joint Proposal would be entirely voluntary and would not impose any legal effects on non-participating Members although it allowed them to have access to the system.  It would fully 
meet the mandate of Article 23.4 and of paragraph 18 of the Doha Declaration.
36  The Joint Proposal 
had a multilateral character as all Members would pa rticipate in the negotiations to establish the 
system, have access to the system onc e it was established, and if they so wished, have the opportunity 
to participate in the system.37  It would be multilateral in the same way as the multilateral Code of 
Good Practice in Annex 3 of the TBT Agreement, which was open to acceptance by the standardizing 
bodies of any WTO Member but was not compulsory for all Members.38  As regards the 
Lisbon Agreement, the real reason for the mandate in  Article 23.4 had rather been the absence of an 
effective dispute settlement system under that Ag reement for resolving differences about national 
determinations on whether or not to  protect a geographical indication.39  See also the views expressed 
the extent to which the Joint Proposal would add any value summarized in paragraphs 111 and 112.  
12. By way of reaction to these points, it has been  argued that the reference to "geographical 
indications eligible for protection in those Members participating in the system" in Article 23.4 meant 
that Members would only have to participate if they wished their indications to enjoy the benefits of 
the multilateral register.  WTO Members would be fr ee to choose whether or not to benefit from the 
multilateral system by notifying and registering thei r geographical indications under it and, in that 
sense, to participate in the system.  However, once a geographical indication was included in the 
system, protection should be facilitated in all Me mbers, because the system was supposed to be 
multilateral.40  "Multilateral Trade Agreements" were, in the WTO context, those which were binding 
on "all Members".  As regards the Code of Good Pr actice in Annex 3 of the TBT Agreement, it was 
quite a different instrument from the one bein g negotiated in the Special Session, namely a 
multilateral system for the notification and regist ration of geographical indications that would 
facilitate the obtaining of the TRIPS protection ava ilable for these indications, but what was clear was 
that all WTO Members were parties to that Annex given that it was an integral part of the TBT 
Agreement, as indicated in its Article 15.5.41 
                                                      
32 European Communities, TN/IP/M/16, para. 42. 
33 European Communities, TN/IP/M/16, para. 25. 
34 Switzerland, TN/IP/M/16, para. 49. 
35 European Communities, TN/IP/M/14, para. 49. 
36 Australia, TN/IP/M/14, para. 39;  Chinese Taipei, TN/IP/M/16, para. 47;  Costa Rica, TN/IP/M/16,  
paras. 13 and 27;  Guatemala, TN/IP/M/16, para. 26;  Jordan, TN/IP/M/16, para. 46;  Korea, TN/IP/M/16, 
para. 19;  Malaysia, TN/IP/M/14, para. 58;  Mexico, TN/IP/M/16, para. 57;  Singapore, TN/IP/M/16, para. 21;  United States, TN/IP/M/16, para. 28. 
37 Australia, TN/IP/M/14, para. 46;   Chile, TN/IP/M/16, para. 31. 
38 Australia, TN/IP/M/14, para. 46 , TN/IP/M/15, para. 16;  New Zealand, TN/IP/M/14, para. 47. 
39 Argentina, TN/IP/M/14, para. 57. 
40 European Communities, TN/IP/M/16, paras. 25 and 42;  Switzerland, TNC/IP/R/16, para. 49. 
41 European Communities, TN/IP/M/16, para. 43;  Switzerland, TN/IP/M/16, para. 49. TN/IP/W/12/Add.1 
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13. With regard to the EC proposal , it has been explained that the difference between 
participating and non-participati ng Members lay in the freedom Members would have to decide 
whether or not to include their geographical indica tions in the system.  Participating Members would 
be those who wanted their geographical indications to  enjoy the benefits of the system by notifying 
them.  However, once a geographical indication was included in the system, protection needed to be 
facilitated in all Members, as they were already bound by the current TRIPS provisions, notably 
Article 23.4
42, and because the system was supposed to be  multilateral and hence cover, and have 
effects in, all the WTO Members.43  Those not wishing to notify a geographical indication into the 
system would be simply renouncing the benefits of the register, but not the benefits they already 
enjoyed under the TRIPS Agreement.44  Such a system would facilitate the implementation of TRIPS 
obligations in all Members and, given that it w ould create a streamlined way for Members to handle 
geographical indications, it would he lp in particular Members that had fewer administrative resources 
to devote to this purpose.45 
14. In commenting on the EC proposal, the view has been expressed that the mandatory system of 
participation foreseen in it would disturb the balance in the TRIPS Agreement.  It would impose 
onerous obligations46 and undue burdens and co sts on developing countries47, many of which would 
have no economic interest in participating in such a system, be it voluntary or mandatory.48  Non-wine 
and spirit producing Members would probably see no be nefit in participating in the system; other 
Members might choose not to participate for costs reasons.49  It has also been said that proposals 
calling for mandatory participation would go beyond the mandate of Article 23.4.  They would 
deprive the clear reference in that provision to "those Members participating in the system" of any 
meaning.50  It also had to be recalled that the Vienna  Convention on the Law of Treaties stipulated 
that a treaty could not create rights or obligations for any third State without its consent.51   
15. In response, it has been argued that the wordi ng of Article 23.4 of the TRIPS Agreement and 
of paragraph 18 of the Doha Declaration contained a certain degree of ambiguity due to the fact that 
treaties like the TRIPS Agreement were difficult to  negotiate.  The ambiguity reflected, to some 
extent, a tension between multilateralism and partic ipation.  The EC proposal reflected a good faith 
effort to unravel that tension by providing for lega l effects in all Members, but more limited ones in 
non-participating Members.  It proposed effects in non-participating Members because the mandate 
clearly called for a multilateral – as opposed to a plurila teral - system of notification and registration.  
In the context of the WTO this meant a system applicable to all WTO Members.52  I n  t h e  W T O ,  
"plurilateral" was understood as referring to a system in which participation was entirely voluntary, as 
in the cases, for example, of the Agreement on Trade in Civil Aircraft and the Agreement on 
Government Procurement.  Conve rsely, multilateral systems were understood as being instruments by 
which all Members were bound or would be bound.  It has also been said that the issue of participation was directly connected to the value of these negotiations:  an instrument that would 
facilitate protection in all WTO Members was not the same as a system that would facilitate 
protection only in those Members which joined the system, particularly when there were no 
assurances of which Member would be joining that system.
53 
                                                      
42 European Communities, TN/IP/M/16, para. 110. 
43 European Communities, TN/IP/M/16, para. 25. 
44 European Communities,  TN/IP/M/16, para. 42. 
45 European Communities, TN/IP/M/16, para. 41.  
46 Canada, TN/IP/M/16, para. 34. 
47 Argentina, TN/IP/M/14, para. 52;  Guatemala, TN/IP/M/16, para. 26. 
48 Philippines, TN/IP/M/14, para. 47. 
49 Canada, TN/IP/M/16, para. 34. 
50 United States, TN/IP/M/14, para. 43. 
51 Chile, TN/IP/M/14, para. 55. 
52 European Communities, TN/IP/M/14,  para. 40, TN/IP/M/17, para. 26. 
53 European Communities, TN/IP/M/14, para. 40.  TN/IP/W/12/Add.1  
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16. In response, it has been said that what was being proposed was that non-participating 
Members would not be able to benefit from the sy stem but would nevertheless have to protect the 
terms of those countries that did participate in it.   Non-participating Memb ers would have onerous 
obligations but no corresponding enjoymen t of benefits.  This was unacceptable.54  Members would 
actually be forced to participate55, because if they did not lodge reservations and entered into 
negotiations, they would not be able to refuse protect ion at the domestic level to a notified GI on the 
grounds of exceptions under Article 24, such as ge nericness or non-compliance with the GI definition 
of Article 22.1.  The concept of par ticipation had been turned on its head.56  The EC proposal would 
not only force Members to participate but undermin e their existing rights to make use of Article 24 
exceptions.57   
NOTIFICATIONS 
17. This section on Notifications is structured around the elements that have been suggested in 
the proposals on the table that the Chairman listed a nd addressed in his statement at the meeting of the 
Special Session of 19 July 2006.  This statement and the possible elements listed in it formed the basis 
for the most recent and fullest discussion of the notif ication provisions of the various proposals.  This 
section also takes account of points made in the earlier discussions of the matter. 
18. With regard to the issue of notifications in gene ral, the Chairman said in his statement that the 
system which the Special Session had been asked to negotiate had to be seen as a whole. The 
requirements of the notification phase would, to some extent, depend on what was entailed by the registration of a geographical indication under the sy stem, including the legal effects or consequences 
of registration, and that there was a limit to how  far the discussion on notifications could be taken 
without greater clarity on these key issues.
58  This point has also been made in the discussions.59 
19. The view has been expressed that the Joint Proposal  envisaged a very simple notification 
process whereby each participating Member would be able to notify any geographical indication if so 
wished.  The Joint Proposal Group had in the past drawn on a number of principles which should guide the consideration of what would be an approp riate notification process.  First of all, it would 
have to be flexible enough to deal with geogr aphical indications from all WTO Members, however 
they were protected, whether through sui generis  legislation, through common law, through collective 
trademarks or through consumer protection legisla tion.  Secondly, they would have to be cost 
effective and not be unduly bureaucratic.  Thirdly,  the system would have to be transparent and 
simple.  Although that had not been expressly spelt out in their proposal, the Joint Proposal Group tended to support that notifications to the WTO Secretariat use existing WTO mechanisms, such as 
the Central Registry of Notifications (CRN).  That  would provide a familiar, simple and transparent 
approach.  With regard to the content of the notifi cation, the Joint Proposal adopted a simple approach 
and kept to the mandatory notification of the essentia l information needed to identify the geographical 
indication.
60 
                                                      
54 Brazil, TN/IP/M/14, para. 42;  Canada, TN/IP/M/14, para. 41.   
55 Argentina, TN/IP/M/14,  para. 52;  Australia, TN/IP/M/14, para. 39;  New Zealand, TN/IP/M/14, 
para. 47. 
56 Canada, TN/IP/M/14, para. 41. 
57 Australia, TN/IP/M/16, para. 62. 
58 Chairman, TN/IP/M/18, paras. 8.1 and 8.14.   
59 Argentina, TN/IP/M/18, para. 14;  Australia, TN/IP/M/17, para. 32, TN/IP/M/18, para. 15;  
Colombia, TN/IP/M/16, para. 76;  European Communities,  TN/IP/M/17, para. 37;  United States, TN/IP/M/16, 
para. 67, TN/IP/M/17, para. 29.   
60 New Zealand, TN/IP/M/14, para. 70.  See also Costa Rica, TN/IP/M/14, para. 82; United States, 
TN/IP/M/16, para. 69. TN/IP/W/12/Add.1 
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20. With regard to the EC proposal,  the view has been expressed  that an underlying key 
consideration was to ensure the reliability and integr ity of the information contained in the register. 
This was essential because the legal effects that would flow from the system would be based on the 
contents of the notifications.
61  In response it has been argued that the principle of territoriality should 
be observed and that the granting of protection for notified geographical indications should not be the 
aim of the system to be established.  The aim s hould be to receive notifications of geographical 
indications protected according to the national legi slation of the notifying Member and not to inquire 
as to whether such a name was or was not protected in other WTO countries, a matter to be determined by the various national legislations of  these other countries.  In other words, no element 
contained in a GI notification should serve as the basi s of protection of this name in other countries; 
otherwise the system would not be respecting the pr inciple of territoriality for it would be accepting 
an extraterritorial application of the legislation of certain Members in the territories of other Members.
62 
(i) The notifying Member - HKC, A.2(c);  JP, 3.2(a) 
21. In his statement, the Chairman  said that there appeared to be a wide measure of common 
thinking that the notifying Member shou ld be identified in each notification.63  No other views were 
expressed. 
22. The EC has indicated a readiness to consider the possibility of producers making notifications 
directly.64 
(ii) The geographical indication itself – HKC, A.2(a);  JP, 3.2(b);  EC, 2.2(b) 
23. In his statement, the Chairman said that ther e seemed to be a wide measure of common 
thinking that the geographical indication in respect of which a notification was being made should be 
specified as it was protected and used in the notifying Member.65 In the discussion, there was no 
disagreement with the concept that the notificati on should identify the geographical indication that 
was being notified.  However, some concern wa s expressed about the formulation used by the 
Chairman when he referred to "as it was protected and used in the notifying Member".  The reasons 
given for this are those set out in sub-section ( iii) below.  A preference  was expressed for the 
formulation used in paragraph 3.2(b) of the Joint Proposal.66 
(iii) Transliteration into Latin characters – JP, 3.2(d);  EC, 2.2(b) 
24. In his statement, the Chairman said that ther e seemed to be a wide measure of common 
thinking that the notification should include translite ration into Latin characters using the phonetics of 
the language in which the notification is made.  He also said that he believed that it was common 
ground that such transliterations would be for in formation purposes and would not in themselves give 
rise to any legal effects or consequences that might flow from registration of a geographical indication.
67  
25. In the discussion, the view was expressed that  the issue of transliteration was linked to the 
question of translation and that, in fact, often the tr ansliteration would coincide with the translation.  
Transliterations and translations could be relevant for the legal effects flowing from the register, 
although it would remain, under the territoriality princi ple, for national authorities to decide what was 
                                                      
61 European Communities, TN/IP/M/18, para. 9. 
62 Argentina, TN/IP/M/17, para. 40. 
63 Chairman, TN/IP/M/18, para. 8.3, 1st tiret. 
64 European Communities, TN/IP/M/14, para. 75. 
65 Chairman, TN/IP/M/18, para. 8.3, 2nd tiret. 
66 United States, TN/IP/M/18, paras. 18 and 20. 
67 Chairman, TN/IP/M/18, para. 8.3, 3rd tiret.  TN/IP/W/12/Add.1  
 Page 9 
 
 
the proper translation or transliteration, within their territories.68  Another view was that it was 
important to specify that any transliteration woul d be "for information purposes only", as provided for 
in paragraph 3.2(d) of the Joint Proposal.  Th ere was a difference between transliterations and 
translations.  While there was no need for notificat ion of translations, because of the link with legal 
effects, providing transliterations was useful fo r the purposes of indicating what information was 
being notified.69 
26. Another point made was that there could be a linkage between tran sliterations and legal 
effects and, consequently, the burdens on countries.   For example, if a geographical indication had 
been notified in Chinese characters with a transliteration, it might still be necessary to transliterate it 
into Latin characters in other Members which used  the same Chinese characters but pronounced them 
differently.70 
27. Further views expressed on the issue of transla tion are summarized in sub-section (ix) below. 
(iv) Only GIs which identify goods originating in the notifying Member's territory – JP, 3.1 and 
3.2(c) 
28. In his statement, the Chairman said that th ere seemed to be common ground that a Member 
should only notify geographical indications which id entified goods originating in its own territory.71  
In the discussion, the only point made was that the reference should be to "wines and spirits" rather 
than to "goods".72  The Chairman confirmed that his statement indeed concerned "wines and spirits".73 
29. In the earlier discussion in the Council on notifi cations, some concern had been expressed that 
the way in which paragraph 2.1(b) of the EC pr oposal and paragraph A.1 of the Hong Kong, China 
proposal were couched would not exclude a Member  notifying a foreign geographical indication that 
was protected in its territory.74 
30. In response, the EC has said th at the words "country of origin" used in Article 24.9 of the 
TRIPS Agreement had been omitted in order to take  account of the fact that some systems of 
geographical indication protection were managed by regional entities.  There should be a way to 
accommodate both the concerns expressed and the sp ecific problem of his delegation with the term 
"country" and his delegation would be prepared to m odify its proposal to clarify that it only referred 
to geographical indications in the territory of the notifying Member.75 
(v) The place in the notifying Member from wh ich the wine or spirit must originate – 
HKC, A.2(a);  JP, 3.2(c);  EC, 2.2(e) 
31. In his statement, the Chairman said that ther e seemed to be a wide measure of common 
thinking that notifications should specify the place in the notifying Member from which the wine or 
spirit must originate in order to use the geographical indication in question.76  In the discussion, no 
disagreement was expressed to the c oncept of such an element, but it was suggested that the language 
used might be aligned more closely with that of Article 22.1 of the TRIPS Agreement, as for example 
used in paragraph 3.2(c) of the Joint Proposal, i.e.  that the notification should "identify the territory, 
                                                      
68 European Communities, TN/IP/M/18, para. 24. 
69 United States, TN/IP/M/18, para. 25. 
70 Japan, TN/IP/M/18, para. 22. 
71 Chairman, TN/IP/M/18, para. 8.3, 4th tiret. 
72 New Zealand, TN/IP/M/18, para. 26. 
73 Chairman,  TN/IP/M/18, para. 27. 
74 Chile, TN/IP/M/14, para. 66, TN/IP/M/17, para. 31;  Costa Rica, TN/IP/M/14, para. 83. 
75 European Communities, TN/IP/M/14, para s. 77 and 102, TN/IP/M/17, para. 38. 
76 Chairman, TN/IP/M/18, para. 8.3, 5th tiret. TN/IP/W/12/Add.1 
Page 10  
 
region or locality of the notifying Member from which the wine or spirit bearing the notified geographical indication is identified as originating".
77 
(vi) The use of a standard format – HKC, A.3;  JP, 3.4;  EC, 2.5 
32. In his statement, the Chairman said that it see med to him that there was a wide measure of 
common thinking that it would be desirable to provide  for a standard format for notifications that 
would be adopted by the Council for TRIPS prior to the entry into operation of the system and that 
this format should provide for notificatio ns to be as simple and brief as possible.78  
(vii) Article 22.1 definition, GI protected in its te rritory and not in disuse – HKC, A.1 and 2(e);  
EC, 2.1 
33. In regard to the provisions of the proposals of Hong Kong, China and of the EC, suggesting 
that a notifying Member should only notify GIs that it considered meet the Article 22.1 definition, 
some concern has been expressed th at the way this requirement had been put might prejudice the right 
of other countries to assess independently whether a notified GI met the Article 22.1 definition in their 
territories.79  In response, it has been said that the proposed requirement would relate only to the 
situation of the notified GI in the notifying Member, th at is to say the country of origin of the GI, and 
that the right of other Members to assess independe ntly whether the definition in Article 22.1 was met 
in their territories would remain in accord ance with the principle of territoriality.80  The EC indicated 
that it would be ready to modify its draft provisi on to dispel concerns on this point, for example by 
adding at the end of paragraph 2. 1(a) the words "in its territory".81  In response, a concern was 
expressed that the right of Members to make thei r own determinations would, under the EC proposal, 
be severely limited by the requirements to lodge any reservations within 18 months and to enter into 
negotiations.82 In response, it was said that, because it w as important to ensure that only reliable 
information would be registered on the GI register, it made sense to have s ubstantive notification and 
registration procedures, including the possibility of lodging reservations.83 
34. In his statement, the Chairman posed the question whether a clarification to the effect that the 
right of Members to assess independently whether the Article 22.1 definition was met in their 
territories and whether the GI was in fact protected in its country of origin and had not fallen into 
disuse would meet the concerns expressed.84  In response, the questi on was raised as to why the 
provision of such information would not be redund ant, given that if a geographical indication was 
protected in a Member's territory, it would pr esumably meet the definition of a geographical 
indication in that Member.  This raised the ques tion as to whether there was not another reason for 
such a requirement, relating, for example, to legal ef fects.  A notification coul d have a de facto effect 
and it would be important to ensure that national au thorities were not misled and did not consequently 
grant protection where it was not due.  It was r ecalled that Article 1.1 of the TRIPS Agreement 
provided that each Member was free to determ ine the appropriate met hod of implementing the 
provisions of the Agreement within its own legal system and practice.85  In response, the view was 
expressed that, while there did not seem to be a ny difference that GIs notified should meet the 
Article 22.1 definition, it would n onetheless be important to retain an explicit requirement to this 
                                                      
77 Canada, TN/IP/M/18, para. 28. 
78 Chairman, TN/IP/M/18, para. 8.3, 6th tiret. 
79 Argentina, TN/IP/M/14, para. 64. 
80 European Communities, TN/IP/M/14, paras. 76  and 99;  Switzerland, TN/IP/M/18, para. 34. 
81 European Communities, TN/IP/M/14, paras. 76 and 99. 
82 Australia, TN/IP/M/14, para. 81. 
83 European Communities, TN/IP/M/16, para s. 84 and 85, TN/IP/M/17, para. 41. 
84 Chairman, TN/IP/M/18, para. 8.4. 
85 Argentina, TN/IP/M/18, para. 35;  Australia, TN/I P/M/18, para. 32;  Chile, TN/IP/M/18, para. 36;  
United States, TN/IP/M/18, para. 33.  TN/IP/W/12/Add.1  
 Page 11 
 
 
effect, especially as one of the grounds for challe nging a notification envisaged was that it did not 
meet that definition.86 
35. The view has been expressed that one of th e concerns with the issues raised under this 
subheading were those that concerned the suggested  requirement in the EC's and Hong Kong, China's 
proposals to specify a legal instrument under whic h the notified GI was protected and the possible 
discriminating impact of this on countries with di ffering systems for the protection of geographical 
indications. 87  These points are summarized under sub-section (viii) below. 
36. It has been pointed out that Article 24.9 of the TRIPS Agreement was optional and not 
mandatory;  that was to say, it did not prevent countries from protecting GIs which were not, or had ceased to be, protected in their country of origin or which had fallen into disuse in that country.  It has 
been asked whether the two proposals on the table th at would preclude the notification of such GIs 
under the register would have the effect of changing this provision.
88  In his statement, the Chairman 
said that it was his understanding that it was not inte nded that this would impair the right of any 
Member to protect such a GI if it so wished, but only that the register would not be available for 
facilitating such protection.  He sa id that it would be useful to know  if such understanding was correct 
and whether this would help address any concerns regarding this matter.89  In response, the delegation 
of the European Communities confirmed the Chairman's understanding.90 
(viii) Legal basis for the protection of the notified GI  – HKC, A.2(c);  JP, 3.3(b);  EC, 2.2(c) 
and 2.3(c) 
37. It has been said that fulfilling the requirement  in the EC and Hong Kong, China proposals for 
a reference to a legal instrument by which a no tified geographical indication is protected in the 
notifying Member or a certification under government seal of a notifying Member would be difficult. 
It would be potentially impossible for Members that protected geographical indications through, for example, an unfair competition system, a system where rights were acquired through use, or a 
common law system.  These requirements would therefore discriminate against Members using such systems.
91 
38. In his statement, the Chairman said that it was his understanding that the second option in the 
Hong Kong, China proposal, namely of the notifying country providing a statement executed under seal by the government of the notifying Member, w as an attempt to take into account the concerns 
about an obligation to specify a particular legal inst rument.  He suggested that Members might wish to 
explore further how to accommodate the concerns th at had been expressed about the different legal 
systems and laws by which GIs were protected, while  at the same time ensuring a sufficient degree of 
integrity and reliability of the information to be notifie d.  In that connection, it might be useful to have 
an exchange of views about the advantages and disadvantages of Hong Kong, China's suggestions on 
this point.
92 
39. In response, the view was expressed that info rmation on the legal instrument by which the 
geographical indication was protected in the notif ying Member was necessary so that examining 
authorities in each Member could ascertain whether the hurdle of Article 24.9 of the TRIPS 
Agreement had been cleared.  This could be done without prejudicing the way in which geographical 
indications were protected across the world, taki ng account of Members' freedom to determine the 
                                                      
86 European Communities,  TN/IP/M/18, para. 37. 
87 United States, TN/IP/M/18, para. 39. 
88 Argentina, TN/IP/M/14, paras. 65 and 89;  Australia, TN/IP/M/17, para. 34. 
89 Chairman, TN/IP/M/18, para. 8.5. 
90 European Communities, TN/IP/M/18, para. 38. 
91 Argentina, TN/IP/M/18, para. 41;  Australia, TN /IP/M/18,  para. 42;  United States, TN/IP/M/14, 
para. 69, TN/IP/M/17, para. 29 , TN/IP/M/18, para. 39.   
92 Chairman, TN/IP/M/18, para. 8.6. TN/IP/W/12/Add.1 
Page 12  
 
most appropriate methods of implementing the TR IPS provisions in accordance with their respective 
legal systems.  Paragraph 2.2(c) of the EC propo sal mentioned certain instruments of protection as 
examples but did not exclude other ways in which ge ographical indications might be protected in their 
countries of origin.
93 
40. Another view expressed was that, since any exam ination should only be made in accordance 
with the national legislation of the Member wher e protection was being sought, it was difficult to see 
the relevance of the information ca lled for under the EC proposal.  This raised questions as to whether 
there was a different agenda relating to legal effects and extraterritoriality.  It could be assumed that 
governments would, in this area as in other areas of the WTO, notify in good faith and therefore only notify GIs that were in existence in their territories.  Therefore, including a "statement executed under 
seal by the government of the notifying Member" would not be necessary.
94 
41. The view was also expressed that taking account of the need for a reliable system that would 
ensure the integrity of the information contained in  it, as well as of the differing systems of protection 
that Members had chosen, based on the flexibility of  Article 1.1 of the Agreement, the Hong Kong, 
China proposal contained interesting and flexible suggestions as to the form such information could 
take.95  In response, concern was expressed that the issue of reliability of information should not be 
used as a cover for including notification elem ents with legal effects into the system.96 
42. A concern has been expressed about the referen ce in paragraph 2.3(c) of the EC proposal to 
bilateral, regional and/or multilate ral agreements under which the geogr aphical indication is protected.  
The view has been expressed that notification of  such information could significantly increase the 
burden on the Member reviewing the information and was not relevant, given that such agreements 
only bound those Members who were parties to them.97  The view has also been expressed that the 
reference in paragraph 2.2(c) of the EC proposal to legal instruments already notified to the TRIPS 
Council, in the context of the notification of national laws, was unnecessary, given that they had 
already been notified.98  In response, it has been said that th e proposal was not necessarily to require 
notifying Members to repeat what had already been notified but rather to identify the particular legal 
instrument in question.  The use of the term "leg al instrument" had the advantage of flexibility and 
could encompass laws, regulations, court decision s and regional agreements - like the Bangui 
Agreement or Decision 486 of the Andean Community.99 
(ix) Translations of the notified GI – EC, 2.2(b) and 2.3(a) 
43. In his statement, the Chairman  said that there would seem to be two aspects that had been 
raised with regard to the question of translations of  notified GIs.  The first was whether translations of 
a notified GI into one of the working languages of  the body administering the system should be 
provided by the notifying country where available;  that is to say, if the system were to be 
administered by the WTO, should there be a requireme nt to make available any translation into one of 
the three WTO languages of a notified GI for which th e language of origin was another language?  As 
he understood it, this would simply be for the pur poses of information and to  facilitate understanding 
in the administering body and in other Members of what was being notified.100 
                                                      
93 European Communities, TN/IP/M/18, para. 40. 
94 Argentina, TN/IP/M/18, para. 41;  Australia, TN/IP/M/18, para. 42;  Canada, TN/IP/M/18, para. 47;  
Chile, TN/IP/M/18, para. 43;  Kenya, TN/IP/M/18, pa ra. 48;  New Zealand, TN/IP/M/18, para. 46.   
95 Switzerland, TN/IP/M/18, para. 44. 
96 Australia, TN/IP/M/18, para.45;  Ne w Zealand, TN/IP/M/18,  para. 46. 
97 Argentina, TN/IP/M/14, para. 90;  Canada, TN/IP/M/14, para. 98. 
98 Argentina, TN/IP/M/14, para. 90. 
99 European Communities, TN/IP/M/14, para. 103. 
100 Chairman, TN/IP/M/18. para. 8.7.  TN/IP/W/12/Add.1  
 Page 13 
 
 
44. The Chairman said that the second question related to the issue of whether the notifying 
Member should also have the option of notifying suggested translations of the GI into other 
languages.  This was provided for in one of the pr oposals (that of the EC) on the table.  There had 
been some discussion on this, with some concer n expressed about possible impairment of each 
Member's freedom to determine what was the appr opriate translation of a GI in its territory.101  In 
response, it has been said that such a provision woul d not have such an effect, and that the ultimate 
decision would remain with national authorities.102 
45. The Chairman suggested that some questions wh ich it might be useful to explore further in 
this connection included: 
 - In the proposal that includ ed such a provision (that of the EC), was it intended that the 
legal effects that, under that proposal, would flow from an unopposed registration 
would not apply to the suggested translati ons and that those translations would only 
be provided for information purposes without such legal effects? 
 - How did this matter relate to the provision in Article 23.1 that the protection of GIs 
for wines and spirits should apply where the GI is used in translation? 103 
46. In the discussion that ensued, one view that was expressed was that translations, including 
those into one of the three WTO languages, as well as  transliterations, should carry legal effects, with 
the understanding that the final decision or determ ination of what was the right translation would 
remain in the hands of each examining Member, fully respecting the principle of territoriality.  In this 
regard, it was recalled that Article 23.1 contai ned an express reference to the protection of 
translations.  The EC proposal envisaged that participating Members would enjoy a favourable 
presumption against the use of translations by third parties.  The same would be true in relation to 
Article 22 in regard to the use of transliterations or  translations which misled the public or constituted 
an act of unfair competition.  For these reasons, indi cating that translations would be for information 
purposes only would be misleading, not withstanding the fact that the final decision would remain with 
national authorities.  It should also be appreciated that translations provided by the notifying Member 
would be a useful tool for examining Members.104  Sometimes the geographical indication was used 
with a different spelling in other countries and did not appear in the original language for reasons 
beyond the control of the right holder, such as labelling requirements.105  The idea was to help third 
countries identify the product.  Translations, even if  provided on a voluntary basis, should have a legal 
effect to the degree already provide d for in Article 23.1, but not beyond.106 
47. Another view expressed was that the provision of any sort of translations in the notification 
system gave rise to concerns, particularly in view of the impact it might have at the national level.  
Given that decisions concerning protection based on tran slations had to be made by the courts in the 
light of consumers in the country where protecti on was sought, in accordance with the principle of 
territoriality, there was no need for the publicati on of translations, even into a WTO working 
language.  The Joint Proposal approach was prefer able, namely that the notification be made in 
English, French or Spanish and that the geogr aphical indication itself would be identified as it 
appeared on the wine or spirit good in the territo ry of the notifying Member.  The notification of 
                                                      
101 Argentina, TN/IP/M/14, para. 93;  Australia, TN/I P/M/17, para. 32;  Chile, TN/IP/M/17, para. 31;  
New Zealand, TN/IP/M/14, para. 71;  United States, TN/IP/M/14, para. 68, TN/IP/M/17, para. 29. 
102 European Communities, TN/IP/M/18, para. 52. 
103 Chairman, TN/IP/M/18, para. 8.8. 
104 European Communities,  TN/IP/M/18, para . 52; Switzerland, TN/IP/M/18, para. 57. 
105 European Communities, TN/IP/M/14, para. 109. 
106 Switzerland, TN/IP/M/18, para. 57. TN/IP/W/12/Add.1 
Page 14  
 
translations would only be a useful tool for exam iners if the result being sought was the situation 
where all Members would effectively protect all te rms notified, including the suggested translation.
107 
48. In response, it has been said that, under any con ceivable system, including all those that were 
on the table, a translation would be useful for any Member receiving a copy of the notification.  This would help reduce burdens, especially for small developing countries with limited intellectual 
property office capacity.
108 
(x) The product for which the protection is sought – HKC, A.2(a);  JP, 3.2(e) 
49. In his statement, the Chairman raised the question as to whether the notification should 
specify the product for which protection was sought, na mely whether it was a wine or a spirit.  This 
would seem to be called for by two of the proposals on the table (the Hong Kong, China Proposal and 
the Joint Proposal), with the third seemingly silent on this point.  He posed the question as to whether 
there were any differences on this  question or whether it was agr eed that each notification should 
specify whether the notified geographical indication referred to a wine or a spirit.109 
50. In response, it has been said that knowledge of the type of good in question was certainly 
relevant.  As far as the EC proposal was concerne d, the legal effects would be based on certain 
presumptions which would refer to Articles 22 a nd 23 of the TRIPS Agreement.  Whenever the 
relevant article was Article 23 the presumption woul d be valid within the same category of goods.  
The notification of such information could be consid ered as covered and implicit in the definition of a 
geographical indication itself, given that in Ar ticle 22.1 there was a reference to geographical 
indications identifying a specific good. Without prejudice to positions with regard to the scope of the 
register, consideration could be given to the speci fication of the product for which the protection was 
sought.110 
51. The view has been expressed that the EC propo sal should include a specific indication that it 
related to geographical indicati ons for wines and spirits only.111 
(xi) Information on the "quality, reputation or other characteristics" – HKC, A.2(a) 
52. In response to a question as to what were th e "details of the geographical indication" 
envisaged under paragraph A.2(a) of the Hong Kong,  China proposal and whether their notification 
would be discretionary112, the delegation of Hong Kong, China said that the details of the 
geographical indication to be notified had been placed between brackets and were illustrative in 
nature.  It would be in the interest of the no tifying Member to provide as much information as 
possible because the registration would serve to provide  information, for example in the event that the 
GI was a subject of judicial or other domestic legal proceedings.113 
53. In his statement, the Chairman raised the question as to whether there should be a requirement 
to provide information on the qualit y, reputation or other characteris tics of the good which justified its 
protection as a geographical indication in terms of Ar ticle 22.1 of the TRIPS Agreement.  He recalled 
that one of the proposals (the Hong Kong, Ch ina Proposal) suggested the inclusion of such 
                                                      
107 Australia, TN/IP/M/18, para. 55;  United St ates, TN/IP/M/18, paras. 53 and 54.   
108 European Communities, TN/IP/M/18, para. 56. 
109 Chairman, TN/IP/M/18, paras. 8.9. 
110 European Communities, TN/IP/M/18, para. 58. 
111 Costa Rica, TN/IP/M/14, para. 84. 
112 New Zealand, TN/IP/M/14, para. 72.  
113 Hong Kong, China, TN/IP/M/14,  para. 96.  TN/IP/W/12/Add.1  
 Page 15 
 
 
information in the notification, whereas neither of the other two proposals required this information to 
be provided.114 
54. The view was expressed that information of this  sort was perhaps already implicitly covered 
by paragraph 2.3 of the EC proposal.  As the exam ination and decision as to whether a notified term 
met the definition of a geographical indication were  in the hands of the examining Member it was 
clear that providing them with such information would be useful.115 
55. Another view has been that submitting such in formation would not be relevant or necessary 
and could have systemic consequences.  These elemen ts were connected to the issue of the definition 
under Article 22.1 and could give  rise to similar concerns.116 
(xii) Information on the owner of the GI – HKC, A.2(b);  EC, 2.3(b) 
56. In response to a question, the delegation of Hong Kong, China said that it did not have a rigid 
idea regarding the issue of the name and contact deta ils of the owner of the geographical indication.  
There should be flexibility regarding these elements to  take into account the different systems used by 
Members to protect geographical indications.  The name  could, for example, be that of a commune or 
regional body.117 
57. In his statement, the Chairman raised the question as to whether, and if so how, the 
notification should specify the owner of the geograp hical indication or the persons entitled to use it 
for their production in the notifying Member.  He noted that one proposal (the Hong Kong, China Proposal) required notifications to include the na me and contact details of the owner of the 
geographical indication while another gave each notifying Member the option of including 
information on persons entitled to use the geographi cal indication in its territory.  The third proposal 
was silent on this question.  Th e Chairman asked whether this type of information was necessary or 
desirable for a functioning system and, if so, wh ether it should be optional or mandatory and how it 
would best be phrased.
118 
58. In response, one view has been that such in formation would be useful, particularly for 
examining Members.  Under paragraph 2.3(b) of the EC proposal, this was an optional element.  
Since this proposal, as other proposals, was based on the principle that GI right holders would need to 
go to third country markets to assert their rights and,  when doing so, they would be in touch with 
national authorities and courts, making such informati on available would be a further tool to help the 
good functioning of the system towards its mandated objective, which was to facilitate the protection 
of geographical indications.119 
59. Another view has been that such information was not necessary and should not be mandatory.  
The Joint Proposal was quite flexible in the discre tionary information that could be supplied on how 
the notified geographical indication was protected in  its country of origin, including on ownership.  
Some of the language used to descr ibe this element, particularly th e reference to persons entitled to 
use the geographical indication for production in the notifying Member, gave rise to concerns.  For countries protecting geographical indications through certification marks, it was not clear exactly how 
such persons would be defined.  If it were about identifying specific individuals, or specific groups of 
individuals, this could have im plications for domestic systems.
120 
                                                      
114 Chairman, TN/IP/M/18, paras. 8.10 and 61. 
115 European Communities, TN/IP/M/18, para. 59. 
116 Argentina, TN/IP/M/18, para. 60;  United States,  TN/IP/M/18, para. 62. 
117 Hong Kong, China, TN/IP/M/14, para. 96. 
118 Chairman, TN/IP/M/18, para. 8.11. 
119 European Communities, TN/IP/M/18, para. 63. 
120 United States, TN/IP/M/18, para. 64. TN/IP/W/12/Add.1 
Page 16  
 
(xiii) Date of protection – HKC, A.2(f);  JP, 3.3(a);  EC, 2.2(e) 
60. In his statement, the Chairman noted that the provision of information, where available, on 
the date on which a GI had obtained protection in its  country of origin or on any date on which that 
protection would expire was seen as a mandatory el ement of a notification under two of the proposals 
(the Hong Kong, China Proposal and the EC Proposal ) and an optional element under the third.  He 
understood that it was recognized that such informat ion would not be available in all cases;  it would 
depend on the type of protection applicable in the c ountry of origin.  He posed the question whether a 
requirement drafted in such a way as to recognize this could be generally acceptable.
121 
61. The view was expressed that such information would be useful for the administration of the 
system, as well as for Members when handling ge ographical indications at the national level.122  I t  
was said that the EC proposal would not affect the freedom of every Member to implement the 
obligations under Section 3 of Part II of the TRIPS Agreement in the way that best fitted their legal 
systems.  However, where information on the date w as available, then it should be provided given that 
this information was relevant with regard to TRI PS GI protection for example in Article 24.5 and in 
Article 24.9.123 
62. The view was expressed that this was a point on which there appeared to be some degree of 
convergence among Members.124  The provision of such information should be voluntary and flexible 
enough not to prejudice Members' flexibilities under Ar ticle 1.1 of the TRIPS Agreement.  It was 
noted that the EC and Hong Kong, China proposal s only called for such information where it was 
available.125 
63. The view was also expressed that, while agreem ent was closer on this issue than on some 
others, it would still be a matter of concern if the requirement was mandatory, as in the EC and 
Hong Kong, China proposals, but not the Joint Proposal.  The provision of such information would not be necessary to achieve the goal of facilitating pr otection.  It therefore raised the question as to 
whether the purpose was to use the date as a basis for providing protection in the third party's jurisdiction.
126  It should also be recalled that the TRI PS Agreement did not require the protection of 
any of the subject-matter it dealt with prior to its entry into force some 10 years ago.127  
(xiv) Limitation on number of applications – HKC, A.3 
64. The EC delegation has indicated a readiness to  consider the Hong Kong, China proposal 
whereby the administering body might limit the number of applications to be processed each year, in 
the interests of having an efficient register.128 
(xv) Circulation and publication of notifications – EC, 2.6 
65. The view has been expressed that  the procedure of circulation or publication of notifications 
prior to registration, envisaged in paragraph 2. 6 of the EC proposal, was relevant only to the 
registration model to which the EC aspired.  This  provision was important because it could unleash 
the entire procedure of "reservations", which was rela ted to the issue of legal effects sought by the 
                                                      
121 Chairman, TN/IP/M/18, para. 8.12. 
122 Switzerland, TN/IP/M/18, para. 65. 
123 European Communities, TN/IP/M/18, para. 66. 
124 European Communities, TN/IP/M/18, para. 66 , Chile, TN/IP/M/18, para. 67; Switzerland, 
TN/IP/M/18, para. 65. 
125 Switzerland,  TN/IP/M/18, para. 65. 
126 Argentina, TN/IP/M/18, para. 69;  United States, TN/IP/M/18, para. 68. 
127 Argentina, TN/IP/M/18, para. 69. 
128 European Communities, TN/IP/M/14, para. 74.  TN/IP/W/12/Add.1  
 Page 17 
 
 
EC.  By contrast, the Joint Proposal require d that publication should be done only once after 
registration.129 
REGISTRATION 
66. With regard to the registration provisions in the Joint Proposal , it has been said that the 
registration phase was simple:  the Secretariat w ould simply register all submitted notifications.130 
67. The view has been expressed that  the automaticity of such a registration system, i.e. all 
geographical indications notified would be automati cally registered, was troublesome, for it did not 
foresee any GI screening, nor did it provide any usef ul information, such as the legal basis on which 
the notified geographical indication was protected in its  country of origin, or whether the notified term 
actually met the GI definition.  Since all names notif ied into the system would be registered, the same 
effects would, therefore, flow from the names, irrespective of whether or not they were actually 
geographical indications, or even irrespective of whet her or not they were protected in their countries 
of origin.  As a consequence of the automaticity of registrations and of the absence of sufficient 
information in the notifications, the database woul d be loaded with unreliable information, which 
would not contribute to legal certainty that had to form the basis for facilitating protection.  Because it 
was important to ensure that only reliable informati on would be registered on the GI register, it made 
sense to have substantive notification and registratio n procedures, including the possibility of lodging 
reservations.131 
68. In response, it has been argued that the best guarantee that the information would be reliable 
was the fact that it would come from notifications ma de by governments.  Cases of notified terms that 
were not geographical indications or of multiple identical GI notifications would be minimal.  
Although the notification system which Members ha d agreed upon as part of their decision on TRIPS 
and public health did not provide for the verificati on of notified information,  Members had taken the 
decision assuming that governments would make accurate and faithful notifications.132 
69. With regard to the registration elements of the EC proposal,  it has been said that the EC 
proposal was above all motivated by the principle that the system to be established should contain 
reliable information and that all Me mbers should be able to agree on th is principle.  It was through the 
registration procedures that the EC proposal aimed at ensuring that the information contained in the 
system would be reliable. This was particularly important as only a register containing reliable 
information could justify meaningful legal effects.133 
70. In response, it has been questioned whether the sole or main purpose of the complex 
reservation system set up in the EC proposal was to ensure the reliability of terms on the register.  The 
following points have been made in that regard: 
- While the principle that the information on the register should be reliable could be 
accepted, such an objective should be pursued without making the system overly burdensome and undermining the flexibilities of the TRIPS Agreement that Members 
currently enjoyed.
134   
- Rather than being based on the objective of guaranteeing reliability, the EC proposal 
sought to provide an automatic worldwide protection based solely on one protection 
                                                      
129 Argentina, TN/IP/M/14, para. 95. 
130 Argentina, TN/IP/M/16, para. 78. 
131 European Communities, TN/IP/M/16, para s. 84 and 85, TN/IP/M/17, para. 41. 
132 Chile, TN/IP/M/17, para. 43. 
133 European Communities, TN/IP/M/17, paras. 41 and 46. 
134 Australia, TN/IP/M/17, para. 42;  New Zealand, TN/IP/M/17, para. 45. TN/IP/W/12/Add.1 
Page 18  
 
granted in the country of origin with limited grounds of objection.  Such a system would clearly change the balance of rights and obligations under the TRIPS 
Agreement and would therefore be bey ond the mandate of facilitating protection.
135  
The registration and notification systems under the EC proposal were interrelated 
with the reservation procedure and its legal effects, and there were serious systemic 
concerns that such a system, when seen  in its entirety, was unprecedented when 
compared to other international IPR regi mes.  What Members were supposed to 
negotiate was the establishment of a system that would facilitate, and not modify, the 
protection of geographical indications.136  
71. Some points of clarification have been sought with regard to the EC proposal and responses 
given: 
- Confirmation was requested that the objec tive of the EC proposal was neither to 
create a supranational system nor to charge  the WTO Secretariat with the prerogative 
of making decisions on the notifications.137  In response, it was confirmed that the EC 
proposal was not proposing that the WTO Secretariat take decisions on which 
Member would be the true owner of a ge ographical indication or the real notifying 
Member of a certain geographical indication that had been notified by two Members at the same time.  It was simply proposing the establishment of a system that would ensure that the principle of territoriality  was respected by ensuring that decisions 
would remain in the hands of national aut horities, who would make their views clear 
through a challenge procedure that would pr event the unfolding of legal effects in the 
territories of challenging Members.
138139 
 - In regard to the possibility of allowing notif ications to be made directly by producers 
to the administrative body, the question has been raised as to how the EC's proposed 
system of providing more reliable information would work.140  In response, it was 
said that the only objective of offering such flexibility had been to make it clear that 
the proponents were prepared to compromise in order to establish a system that would 
be acceptable to all Members. If other Members did not agree with such an idea the EC proposal would not be changed in that direction.
141 
 
Formality Examination  – HKC, B.1-2 
 72. With regard to paragraph B.1 and 2 of the proposal by Hong Kong, China , it has been 
argued that a formality examination by the administ ering body would be desirable.  This proposed 
examination would be a pure formality which w ould in no way replace the examination which each 
Member would carry out as to the validity of the geographical indication on its own territory.
142 
                                                      
135 Australia, TN/IP/M/17, para. 42;  New Zealand, TN/IP/M/17, para. 45;  United States, TN/IP/M/17, 
para. 71. 
136 Argentina, TN/IP/M/17, para. 56. 
137 El Salvador, TN/IP/M/17, para. 50.  
138 European Communities, TN/IP/M/17, para. 46. 
139 For further discussion of the relationship between the principle of territoriality and the EC proposal, 
see in the section on Notifications, paragraphs 20, 25, 33, 40, 46, 47; the section on Registration, paragraph 71; 
the section on Reservations, paragraphs 73, 74, 77 -79, 83-83 and the section on Consequences of 
Registration/Legal Effects, paragraphs 94, 97, 101, 103 and 109-112. 
140 Chinese Taipei, TN/IP/M/17, para. 44. 
141 European Communities, TN/IP/M/17, para. 47. 
142 Switzerland, TN/IP/M/14, para. 113.  TN/IP/W/12/Add.1  
 Page 19 
 
 
Reservations  – EC, 3.1-5 
 
73. With regard to the purpose and functioning of the reservation system suggested in the EC 
proposal , the following explanations have been pr ovided by proponents of this approach: 
 - The EC proposal contained a reservation system because it aimed for legal effects and 
presumptions similar to those attached to a trademark registration after its 
examination.  Given the fact that the sy stem to be established should have legal 
effects and presumptions in all Members in order to fulfil the mandate, it also made 
sense to open the challenge procedures to a ll Members and give them the opportunity 
to examine the notifications made within  the 18-month period.  This would allow 
Members to be able to prevent certain lega l effects from unfolding in their territories 
by raising a reservation on the basis:  (i) that the notified geographical indication did not meet the definition in Article 22.1 of the TRIPS Agreement;  (ii) that the geographical indication in question did not meet the requirement in Article 22.4 of 
the Agreement;  and (iii) that the geographical indication was generic in the territory 
of the examining Member.  This would be in accordance with the principle of 
territoriality and would also ensure that the register contained reliable and useful 
information.  In addition to these three gr ounds for reservations, pa ragraph 3.3 gave a 
notifying Member the possibility of requesting other Members to provide information on trademarks consisting of or containing the geographical indications.  In that case, 
the WTO Member which had received the re quest would need to notify the existence 
of such trademarks.
143 
  - There lay substantial benefit in  providing for examination procedures and 
reservations that could be lodged based on va rious elements, such as the definition of 
a geographical indication, genericness or homonymy.  This reservation system would 
call for some substantive examination within the 18-month period following 
notification and would therefore bring clarity to the register at an early stage, namely before there was any litigation at the nationa l level.  This seemed to be a good idea 
because it would enable Members who had made these reservations to examine problems related to geographical indications in their own territories.  The registry 
would therefore show the status of the geographical indications protection in each 
Member, which would be useful information for the right holders, for the authorities 
responsible for geographical indications and for other producers who would like to 
use these names.  Rather than having every interested party carrying out this examination to know whether a geographical  indication fulfilled the criteria of the 
definition or was generic, Members would have the information already on the 
register. In that light, the EC proposal would enable Members to facilitate protection, 
in contrast with the Joint Proposal.
144 
 74. Certain points of clarification with regard to the EC proposal  have been raised and 
responses given: 
 - The question has been raised whethe r Members would be able to invoke the 
Article 24.6 exception on generics at the domestic level after the 18-month period, 
since a geographical indication, just as a trademark, could cease to be protectable and become generic after that period has expired.
145  In response, it has been said that, 
under the proposal, Members would have 1.5 years to examine a GI notification and, if need be, place a reservation.  If a Member did not place such reservation it would 
                                                     
 
143 European Communities, TN/IP/M/14, para. 126, TN/IP/M/16, paras. 80-81. 
144 Switzerland, TN/IP/M/14, para. 114, TN/IP/M/16, para. 146. 
145 Australia, TN/IP/M/17, para. 55;  Chile, TN/IP/M/14, para. 116.   TN/IP/W/12/Add.1 
Page 20  
 
no longer be able to claim that that partic ular term was generic, the reason being the 
assumption that if a term was being protected it should not turn generic.  If a Member 
forgot to place a reservation and found out subsequently that some of its local producers had been using the geographical i ndication, it would still be able to invoke, 
for example, the exception in Article 24.4 of the Agreement.  The latest version of the 
EC proposal had also been made more flexib le in that, compared to the 1998 version, 
Article 24.5 was no longer among the grounds  for reservations which would be 
affected by the 18-month time-period.
146 
  - Referring to the requirement for bilate ral negotiations under the EC proposal the 
question has been raised as to how the r eservation system would allow Members to 
lodge reservations with regard to their interests in third country markets.
147  I n  
response, it has been said that the principle of territoriality would apply, meaning that it would remain with each WTO Member to d ecide whether or not to protect in its 
territory a certain geographical indication.
148 
 
 - The question has been raised as to what would happen if a notifying Member decided 
not to enter into negotiations with a ll the Members who had lodged reservations149 or 
if a Member made a reservation without engaging in negotiations.150  In response, it 
has been said that if the notifying country did not ask for bilateral negotiations, or if 
such negotiations did not lead to an agreem ent, there would be no protection for that 
individual geographical indication in the territory of the country placing the 
reservation and this could last forever.151 
  - The question has been rai sed as to why reservations which were not followed by 
bilateral negotiations, and which were simp ly referred to in annotations, would not 
give rise to legal effects similar to t hose pertaining to non-challenged geographical 
indications.
152  In response, it has been said th at, if a Member placed a reservation 
against a notified geographical indication,  such objection, which would be based 
upon grounds such as definition or gene ricness, would take into account the 
prevailing circumstances in that Member's  territory.  Therefore, the geographical 
indication would not be valid in that Member's territory.  What the principle of 
territoriality did not allow was to extend that Member's reservation, reached solely on 
the basis of particular circumstances in th at Member, to other third countries, where 
the term might not be generic and therefore be protectable.  The analysis that led to 
each individual reservation should be market -based.  Concerns in this regard could 
possibly be addressed by giving some sort of publicity to reservations placed by 
Members.153 
 75. The view has been expressed that the reservation system suggested under the EC proposal 
would be burdensome  for developed and developing country Members.
154  The following arguments 
have been put forward in this connection: 
                                                      
146 European Communities, TN/IP/M/14, para. 143. 
147 New Zealand, TN/IP/M/14, para. 122. 
148 European Communities, TN/IP/M/14, para. 128. 
149 Canada, TN/IP/M/17, para. 70. 
150 Chile, TN/IP/M/14, para. 138. 
151 European Communities, TN/IP/M/14, para. 127, TN/IP/M/14, para. 146. 
152 Chile, TN/IP/M/14, para. 116. 
153 European Communities, TN/IP/M/14, para. 146. 
154 Australia, TN/IP/M/14, para. 110, TN/IP/M/16, para. 87;  Canada, TN/IP/M/14, para. 137, 
TN/IP/M/17, para. 52;  Guatemala, TN/IP/M/16, para. 99;  New Zealand, TN/IP/M/14, paras. 121 and 122, 
TN/IP/M/17, para. 66;  Philippines, TN/IP/M/16, paras.  92-93;  United States, TN/IP/M/16, para. 96.    TN/IP/W/12/Add.1  
 Page 21 
 
 
 - Paragraph 3.2 of the EC proposal would require each participating or 
non-participating Member to lodge reser vations and enter into compulsory 
negotiations on behalf of every private interest  in its territory that might be affected 
by the registration of a foreign geographical indication.  If a Member failed to engage 
in this costly and burdensome reservation process, such a Member would not be able 
to decline protection to the term on the register on certain grounds, e.g. that the term 
was not a geographical indication or that it was a generic term in that Member's 
territory.  In other words, that Member w ould be forced to protect the term on the 
register.  This would be burdensome for Me mbers, whether developing or developed, 
and was unwarranted.155  Under the EC proposal, the exceptions of Article 24 of the 
TRIPS Agreement would become cumbersome to exercise.  Concern was expressed 
regarding the administrative costs associated with monitoring GI notifications, engaging in negotiations and, if requested  by a notifying Member, monitoring and 
notifying the existence of any trademark that contained or consisted of a notified geographical indication.
156 
 
 - Further burdens would arise from the requi rement to identify the applicable grounds 
for reservations and to duly su bstantiate them.  This would mean that the burden of 
all WTO Members wishing to retain the gene ric nature of notifie d terms would fall on 
the shoulders of those Members' governments.157 
 
 - While the EC proposal stated that the bul k of the costs generated by the system would 
be covered by those WTO Members that ha d notified geographical indications into 
the system, the question was raised as to how the EC proposal intended to cover the costs incurred in lodging reservations as well as those incurred in bilateral 
negotiations.
158 
 
 - If developed countries had expressed con cerns about the proposed EC system, 
developing countries would have even greater difficulties, for they would not be able to react appropriately to notifications unde r that system.  The only valid alternative 
for developing countries was the Joint Pr oposal system, which was user-friendly, 
accessible, simple, effective, non-costly and non-burdensome.
159 
 
76. In response, it has been argued  that, if Members considered TRIPS obligations to be 
burdensome, such a burden existed not only in relati on to geographical indications but in relation to 
all IPRs.  The obligations under the TRIPS Agreem ent, as under any other WTO Agreement, implied 
burdens.  However, all Members had decided to pa rticipate in these agreements and be bound by the 
obligations under them based on the fact that ther e was an overall favourable balance of results for 
them.160  The 18-month period proposed was one of the longest periods of examination provided 
under similar registration systems.  However, if th ere was concrete evidence that 18 months would be 
too short a period, another time-fr ame could be considered.  Flexibility had also been offered by a 
willingness to consider the possibility of limiting the number of geographical indications to be notified.
161 
                                                      
155 Australia, TN/IP/M/16, para. 87. 
156 New Zealand, TN/IP/M/14, para. 121;  Philippines, TN/IP/M/16, paras. 92-93. 
157 Canada, TN/IP/M/17, para. 52;  New Zealand, TN/IP/M/17, para. 66. 
158 New Zealand, TN/IP/M/14, para. 122. 
159 Guatemala, TN/IP/M/16, para. 99. 
160 European Communities, TN/IP/M/16, para. 107. 
161 European Communities, TN/IP/M/14, paras. 126 and 145. TN/IP/W/12/Add.1 
Page 22  
 
77. In response, it has been argued that the EC proposal, as it stood, would put on all Members, in 
particular developing countries, the burden of preserv ing the principle of territoriality to the extent 
that they themselves would have to make sure that they made reservations within the 18-month period.  The offer made by the EC to give more fl exibility to the proposal by extending this period or 
by limiting the number of annual notifications w ould not be enough to address such concerns.
162 
78. The view has been expressed that the EC proposal would upset the balance of rights and 
obligations  established under the TRIPS Agreement in re gard to the protection of geographical 
indications.  The following arguments have  been put forward in this connection: 
 - Article 23.4 required the implementation of a two-phase system, comprised of a 
notification phase and a registration phase.  However, the EC proposal provided for 
three additional phases, examination, reser vation and bilateral negotiations, which 
would substantially change the existing TR IPS Agreement obligations.  In contrast, 
the voluntary Joint Proposal system did not include any of these additional phases and it did so to keep within the mandate.  Under the Joint Proposal, both examination and opposition procedures would remain at the national level and consequently the 
balance of rights and obligations, as carefu lly negotiated in the TRIPS Agreement, 
would not be disturbed.
163  These new phases, examination, reservations and 
mandatory bilateral negotiati ons, would be fundamentally detrimental to developing 
countries.164 
  - The reservation system would limit Members' rights to use certain exceptions by 
making them conditional on r eservations and negotiations.
165  If a Member failed to 
object to every one of the notified geographical indications within the 18-month period, it would then have waived its abilit y to object to that geographical indication 
later and have removed the ability of its  domestic producers to object in court 
proceedings later.  There was nothing in the TRIPS Agreement or the negotiating 
mandate which placed an expiry date on the rights of Members to access these 
exceptions.
166  It constituted an attempt to renego tiate the text agreed in the Uruguay 
Round, an exercise not part of the present negotiations.167  Furthermore, objecting 
Members would have to duly substantiate  the grounds for their reservations which 
was not a condition of using Article 24 exceptions under the TRIPS Agreement.168  If 
a Member had placed any objections to a notif ication, it would then be forced into 
bilateral negotiations with the notifying Member.  Furt hermore, these negotiations 
would be stacked in favour of increased protection for the notified GI given the link in the EC proposal to Article 24.1 of the TRIPS Agreement.
169  Significant pressure 
would be brought to bear on that objector to work out some sort of deal for the notified geographical indication.  Bilateral negotiations between states dealing with 
what were private property rights would result in less legal certainty and transparency 
in national systems of protection.
170 
 
                                                      
162 Philippines, TN/IP/M/16, paras. 92 and 93. 
163 Canada, TN/IP/M/16, para. 90. 
164 Argentina, TN/IP/M/16, para. 95. 
165 Australia, TN/IP/M/14, para. 148, TN/IP/M/16, paras. 87-89 and 114, TN/IP/M/17, para. 42;  
Canada, TN/IP/M/14, para. 123;  New Zealand, TN/IP/M/14, para. 121;  United States, TN/IP/M/14, para. 118, 
TN/IP/M/16, para. 96. 
166 New Zealand, TN/IP/M/14, para. 121. 
167 Argentina, TN/IP/M/14, para. 115;  Canada, TN/IP/M/14, para. 123.   
168 Australia, TN/IP/M/16, paras. 88 and 114. 
169 Australia, TN/IP/M/14, para. 111; TN/IP/M/16, para. 88. 
170 Argentina, TN/IP/M/14, para. 115, TN/IP/M/16, para. 78;  Canada, TN/IP/M/14, para. 123;  
United States, TN/IP/M/16, para. 96.    TN/IP/W/12/Add.1  
 Page 23 
 
 
 - The reservation system would itself erode the principle of territoriality by forcing 
Members to be proactive in denying IP rights to GI right holders rather than providing the framework of minimum standard s within which IPRs could be acquired 
in relation to their territories, in accord ance with the TRIPS Agreement.  Whether 
other intellectual property treaties in WIPO had a different approach was not relevant 
to these discussions, which were held in th e WTO context.  In any case, while WTO 
Members could choose to sign up to WIPO treaties, under the EC proposal Members would not have this choice.
171 
 79. In response, it has been argued that providing for reservations in international registration 
systems was not something new and that the Madrid Protocol system, of which most of the countries 
that were raising this issue were members, had a system of reservations or oppositions.
172  In response 
to the point that the reservation system would be cont rary to the principle of territoriality, it has been 
argued that the effect would actually be the opposite .  It would be through such a reservation system 
that the possibility of challenging the notificati ons made would be gran ted to Members, hence 
ensuring that the principle of territoriality was r espected.  The idea of oppositions and objections was 
something that was well known in international registration systems for intellectual property.173  In 
response to the comment made that under the WIPO  treaties Members chose to sign up for the effects 
flowing from these treaties, it has been said that, in the case of the TRIPS Agreement, Members had 
chosen to sign up to its Article 23.4, which was clear in stipulating that the system should be 
"multilateral", and hence cover, and ha ve effects in, all the WTO Members.174  For further points 
made on how the EC proposal compares to the Ma drid Agreement and other WIPO treaties see 
paragraphs 108-109. 
80. The question has been raised as to why the reservation system proposed by the European 
Communities differentiated between different types of Article 24 exceptions  when the TRIPS 
Agreement and the negotiating mandate a ppeared to provide no such basis.175  It has been argued that 
this changed the balance of rights and obligati ons by unjustifiably creating a hierarchy between 
different exceptions.176  It has been questioned why, under the proposed reservation system, 
Article 24.4 and 24.5 could only be invoked at the domestic level and why further categories of 
exceptions such as Article 24.8, which were not expressly mentioned in the proposal, did not constitute grounds for a reservation.
177 
81. In response, the following points have been made: 
 - The reference to Articles 24.4 and 24.5 of  the TRIPS Agreement in paragraph 3.2 of 
the EC proposal was only to clarify that the proposal did not foresee specific legal effects for those grandfathering exceptions, which would remain fully exercisable at any time at the national level.  For the same reason, Article 24.8 of the TRIPS 
Agreement would also continue to apply.  If it was felt desirable by Members, the 
proponents would be open to expressly including this in the proposal.
178 
 
                                                      
171 Australia, TN/IP/M/16, para. 89, TN/IP/M/17, paras. 51 and 63;  New Zealand, TN/IP/M/17, 
para. 66. 
172 European Communities, TN/IP/M/14, para. 126. 
173 European Communities, TN/IP/M/17, para. 58. 
174 European Communities, TN/IP/M/16, paras. 110 and 156. 
175 Canada, TN/IP/M/14, para. 123;  New Zealand, TN/IP/M/14, para. 122.   
176 Argentina, TN/IP/M/14, para. 132;  Australia, TN/IP/M/14, para. 134, TN/IP/M/14, para. 137;   
Canada, TN/IP/M/14, para. 123, Chile, TN/IP/M/17, para. 57;  New Zealand, TN/IP/M/14, para. 122, TN/IP/M/17, para. 67;   TN/IP/M/16, para. 88, TN/IP/ M/17, para. 55;  United States, TN/IP/M/17, para. 48. 
177 Chile, TN/IP/M/14, paras. 116 and 138, TN/IP/M/17, para. 57. 
178 European Communities, TN/IP/M/14, para. 144, TN/IP/M/17, para. 49. TN/IP/W/12/Add.1 
Page 24  
 
 - The EC proposal did not propose a reservation system for all exceptions, because not 
all exceptions were "optional" like the ones in  paragraphs 4 and 6 of Article 24 of the 
TRIPS Agreement.
179 
  - Not providing for the possibility of r eservations with respect to, for example, 
paragraphs 4 and 5 of Article 24 of th e Agreement should be seen as a sign of 
flexibility.  It meant that, if a Member ha d failed or forgotten to place a reservation on 
the grounds of genericness and was concer ned that its local producers would thereby 
lose the right to use a geographical indication, it would still be able to use paragraphs 4 and 5 of Article 24 of the Ag reement and thus avoid problems with its 
local industry.  This feature of the EC proposal was not meant to be discriminatory, 
quite the contrary.  However, if Members would feel more comfortable including paragraphs 4 and 5 of Article 24 of the Agreement among the cases of reservation, this possibility could be discussed since it would actually be better from the point of 
view of the proponents of the EC proposal.
180 
 
 - A further reason given for why the EC proposal did not include Article 24.4 and, in 
particular, Article 24.5, as the basis of its  challenge procedures was related to the 
nature of these exceptions themselves.  Artic le 24.6, if applicable, would imply that 
the geographical indication would not receive any protection whatsoever in the Member concerned.  However, Article 24. 4 dealt with a different situation as it 
prevented the "continued and similar use of  a particular geographical indication".  
This was not a question of preventing GI pr otection altogether, but rather a situation 
in which certain uses of the name on other products would be a llowed to continue 
when they had existed for a certain period of time.  The geographical indication would then co-exist in the market w ith the prior uses that would qualify under 
Article 24.4.  Clearly, a challenge proce dure that would prevent any legal effects 
from occurring would not fit with the functioni ng and with the nature of the exception 
in Article 24.4.  A similar situation exis ted for Article 24.5.  A recent panel had 
established that co-existence between ge ographical indication and certain prior 
trademarks was a possibility under the TRI PS Agreement.  Members could therefore 
choose to either grant that co-existence or  not.  However, it would not be appropriate 
to establish in a system or challenge procedure the possibility for trademarks to 
impede geographical indications obtaining protection when it was a fact that in certain Members legal systems there existe d the possibility of co-existence between 
geographical indications and certain prior trademarks.  The European Communities was one of these Members and its co-existence system had been considered 
compatible with WTO rules by the Panel.
181 
 82. The argument that a reason for the difference be tween the exceptions was that the exceptions 
in Article 24.4 and 24.5 were mandatory was challe nged as incorrect.  According to the wording of 
the TRIPS Agreement, only Article 24.5 was mandatory.
182  This did not provide sufficient 
justification for making a distinction between th e two very important exceptions of Article 24.4 
and 24.6, nor why the exception of Article 24.6 coul d not continue to be used under domestic law.183 
83. With regard to the provision for bilateral negotiations  in the EC proposal, the view has been 
expressed that this would be inappr opriate, for the following reasons: 
                                                      
179 European Communities, TN/IP/M/14, para. 130. 
180 European Communities, TN/IP/M/14, para. 130, TN/IP/M/17, para. 49. 
181 European Communities, TN/IP/M/17, para. 74. 
182 Australia, TN/IP/M/17, para. 51 
183 Australia, TN/IP/M/17, para. 55;  New Zealand, TN/IP/M/17, para. 57.  TN/IP/W/12/Add.1  
 Page 25 
 
 
 - Requiring Members' governments to pursue reservations regarding, and negotiations 
on, what had traditionally been private rights to be determined and enforced at the national level in each Members' indi vidual territory would go against the 
well-established norm, expressly recognized in the preamble of the TRIPS Agreement, that intellectual property ri ghts were private rights.  Geographical 
indications, like trademarks, were commercia l rights, so Members needed to provide 
a legal framework in which these rights c ould be sought, contested and defended.  
However, Members should not be required to lodge reservations and enter into negotiations on behalf of every private interest in its territory that could be affected by the registration of foreign geographical indications.
184 
 
 - The question has been rai sed as to how the issue of whether a term was or was not 
generic could be determined through negotiations when such a question was 
market-specific and therefore a territorial  matter.  The language of the proposed 
provision, when it related to resolving disagreements, was misleading, for it was not 
necessarily the case that if a Member made a reservation, it would be disagreeing 
with the notifying Member.  Rather, it could be the case that each Member's rights were legitimate and valid under the TRIPS Agreement.  National courts must remain 
the ultimate arbiters and the principle of te rritoriality must therefore remain the basis 
for the recognition and protection of geographical indications.
185 
 
 - The obligation to negotiate would requi re a Member to negotiate on how it had 
applied in its domestic legisl ation the definition of Article 22.1.  This issue was 
important because it was already possible to predict which WTO Member would be a massive notifier of geographical indicati ons. The question was raised as to what 
would happen when developing countries,  for example, presented reservations and 
would have to engage in bilateral negotiations. The examples of recent bilateral 
agreements on intellectual property showed imbalances in these kinds of negotiations.  
In sum, it seemed that this kind of provis ion was aimed at giving more power to those 
who already had it to exert pressure and determine the course of a negotiation.
186 
  - Members would be expected in negotia tions to be open to trading away legal 
judgements made by their domestic courts or authorities
187 and that such compulsory 
bilateral negotiations therefore constitu ted an attempt to bypass national legal 
systems.188  This would be inconsistent w ith the principle of territoriality.189 
 84. In response, the following arguments have been put forward: 
 - It would remain with each Members' aut horities and courts to decide whether certain 
names were geographical indications or generic.
190 
  - With regard to the question of the press ure that some Members could exert on other 
Members during the bilateral negotiations, this could exist irrespective of the 
proposed mechanism.  The EC proposal was quite clear that the only obligation was 
to enter into negotiations, as stated in Artic le 24.1 of the TRIPS Agreement.  The fact 
                                                     
 
184 Australia, TN/IP/M/14, para. 110;  United States, TN/IP/M/14, para. 118. 
185 Australia, TN/IP/M/14, paras. 111-112;  United States, TN/IP/M/14, para. 117. 
186 Argentina, TN/IP/M/14, para 115, TN/IP/M/17, para. 64;  United States, TN/IP/M/14, para. 117. 
187 New Zealand, TN/IP/M/14, para. 122, TN/IP/M/16, paras. 97-98. 
188 Canada, TP/IP/M/14, para. 123;  United States, TN /IP/M/14, para. 119, TN/IP/M/14, para. 155.   
189 Australia, TN/IP/M/14, para. 136;  Canada, TP /IP/M/17, para. 68; New Zealand, TN/IP/M/16, 
para. 98. 
190 European Communities, TN/IP/M/14, para. 124. TN/IP/W/12/Add.1 
Page 26  
 
that the obligation under that provision would apply even in the absence of the Doha Round showed that the proponents were not forcing any results on Members.
191  In 
fact, by clearly stating that the annotation in the GI register would prevent the unfolding of legal effects in the challengi ng Member, the EC proposal could be seen 
as actually strengthening the hand of challe nging Members because they would have 
a very clear and solid foundation for mainta ining their position if they believed, for 
example, that a term was generic.
192  As regards the subject matter of the bilateral 
negotiations, it was said that this would be up to the parties to the negotiations to 
decide upon.193 
 
 - If bilateral agreements based on Article  24.1 of the TRIPS Agreement were not 
consistent with the principle of territo riality, Members which had bilaterally 
negotiated the protection of generic term s would have violated this principle.194 
 85. With regard to the reference to Article 24. 1 in the paragraph of the EC proposal on 
negotiations, it has been argued that this was illeg itimate since Article 24.1 defined the aim of the 
bilateral negotiations to be that of "increasi ng the protection of the individual geographical 
indications" while Article 23.4 re ferred to "facilitating protection".
195  Article 24.1 of the TRIPS 
Agreement appeared under Article 24 and not under Ar ticle 23, particularly its paragraph 4.  If 
Members had agreed in the Uruguay Round to increase the protection of individual geographical indications through a register of geographical i ndications for wines and sprits, both Articles 23.4 
and 24.1 of the TRIPS Agreement would have been  in the same article, which was not the case.
196  
The customary method to resolve disputes in the WTO was not through bilateral negotiations but through the dispute settlement system, which ha d been created precisely to prevent unilateral 
measures or political pressure.  The provisions in Ar ticles 23.4 and 24.1 could not be combined, as 
intended by the European Communities, to justify re placing this neutral way to resolve disputes with a 
politically oriented dispute mechanism.
197 
86. The point has been made that, if a reservati on was made by a Member based on the grounds 
that the notified GI did not meet the definition of Ar ticle 22.1, then that Member would, under the EC 
proposal, be subject to bilateral negotiations that  the EC proposal had linked to Article 24.1.  
However, if that term did not meet the GI defi nition under the Agreement, Article 24.1 would simply 
be inapplicable as there would not be any geogra phical indication to be ne gotiated about.  This was 
just one clear example showing that the European  Communities were seeking, through their proposal, 
to rebalance the current rights and ob ligations under the TRIPS Agreement.198  In response, it was 
recalled that Article 24.1 mentioned, in its first pa rt, the obligation to enter into negotiations, if so 
requested, to increase the protection of individual geographical indications but that the second part 
only said that Members "shall" not use the exceptions under paragraphs 2 to 8 of Article 24 to refuse 
to conduct negotiations or conclude bilateral or mu ltilateral agreements.  The wording of Article 24.1, 
which did not cover paragraph 9 of Article 24, did not exclude the possibility of discussing a 
reservation for instance, on the ground that the no tified term met the definition of Article 22.1.199 
                                                      
191 European Communities, TN/IP/M/16, para. 111, TN/IP/M/17, para. 60. 
192 European Communities, TN/IP/M/17, para. 61. 
193 European Communities, TN/IP/M/14, para. 129. 
194 European Communities, TN/IP/M/16, para. 105. 
195 Canada, TN/IP/M/17, para. 69;  United States, TN/IP/M/14, paras. 119 and 140.  
196 Argentina, TN/IP/M/16, para. 112;  Australia, TN/IP/M/14, para. 133, TN/IP/M/15, para. 53. 
197 Argentina, TN/IP/M/16, para. 95, TN/IP/M/17, para. 65. 
198 United States, TN/IP/M/16, para. 118, TN/IP/M/15, para. 187. 
199 European Communities, TN/IP/M/16, para. 121.  TN/IP/W/12/Add.1  
 Page 27 
 
 
87. In response, it has been argued that when a Me mber filed a reservation regarding a notified 
geographical indication, this meant that, in principle, that geographical indication was not protected in that Member, but could be the subject of a nego tiation aimed at increasing the protection, as already 
agreed in Article 24.1 of the TRIPS Agreement toda y.  If there were problems with the wording used 
in the EC proposal on this matter, consideration c ould be given to other wording, such as:  "Members 
may invoke at any time Article 24.1 of the TRIPS Agreement".
200  While Articles 23.4 and 24.1 of the 
TRIPS Agreement were not in the same provision, Artic le 23.4 referred to a register that was meant to 
facilitate the protection of geographical indications ;  such protection was certainly the one provided 
for in Articles 22, 23 and 24 of the Agreement.  Since Article 24.1 was part of these three provisions, 
surely there would be a place for that provision within  the register to facilitate its application.  That 
was why the EC proposal had included in its paragr aph 3.4 a reference to Article 24.1 of the TRIPS 
Agreement.201  Bilateral negotiations based on Article 24.1 of the TRIPS Agreement were already an 
obligation accepted by Members.  This would be th e most efficient and the more familiar approach 
within the WTO system to resolve differences.202  Article 24.1 was explicitly applicable to both 
bilateral and multilateral agreements and was simply a tool at Members' disposal with regard to 
geographical indications.  It clearly did not cha nge the balance of rights and obligations, because it 
was already in the TRIPS Agreement and, as such, fo rmed part of the obligations that Members had 
undertaken.203 
Content of Registrations  – HKC, B.4;  JP, 4.2;  EC, 3.7 
88. With regard to the Joint Proposal, it has been argued that because of the automaticity of the 
registration system and the lack of any GI screening, the register would not provide any useful 
information, such as the legal basis on which the notified geographical indica tion was protected in its 
country of origin, or whether the notified term actu ally met the GI definition, as well as the dates on 
which the geographical indication started to be protected or the protection ceased to exist.  The database would therefore be loaded with unreliabl e information, which woul d not be an adequate 
contribution to legal certainty that had to form the basis for facilitating protection.
204 
89. In response, the following points have been made:  
- The notifications that would be s ubmitted by Members' governments under the 
Joint Proposal could be quite detailed a nd reliable.  The Joint Proposal foresaw 
information such as transliterations of the GI and Members would also be free to add any other information they saw fit.
205  The Joint Proposal had the flexibility to allow 
the submission of information if and when it was available and appropriate.206  This 
was important so as to reflect the diversity of systems for protecting GIs and not to 
discriminate against systems that protected GIs through the common law or through unfair competition legislation.
207 
- The information would be notified by gove rnments as in other areas of the WTO and 
would therefore be deemed reliable.208 
                                                      
200 European Communities, TN/IP/M/14, para. 125, TN/IP/M/16, para. 107. 
201 European Communities, TN/IP/M/14, para. 142, TN/IP/M/15, para. 75. 
202 European Communities, TN/IP/M/16, paras. 82 and 119. 
203 European Communities, TN/IP/M/16, para. 120. 
204 European Communities, TN/IP/M/16, para. 84. 
205 Chile, TN/IP/M/16, para 103. 
206 Canada, TN/IP/M/18, para 47. 
207 Australia TN/IP/M/18, para 42;  Chile, TN/IP/M/18, para 43, United States, TN/IP/M/18, paras 39 
and 64, TN/IP/M/18, para 29.  
208 Australia TN/IP/M/18, para. 45; Canada, TN/IP/M/18 para. 47;  Chile, TN/IP/M/16, para. 149, 
TN/IP/M/18, para. 43;  Kenya, TN/IP/M/18, para. 48;  New Zealand,  TN/IP/M/18, para. 46.  TN/IP/W/12/Add.1 
Page 28  
 
- The Joint Proposal system did not require the mention of the date of protection 
because TRIPS obligations applied to Members only as from certain dates, for example 1 January 1996 for developed count ries. The question has been raised of 
what would happen, under the EC proposal, with those EC geographical indications registered many years before that date.
209 
- The issue of the content of notifications  and registrations was linked to the legal 
effects the notified information would have and the issue of reliability should not be 
used to disguise the inclusion of notifica tion elements with legal effects into the 
system.210 
90. By way of reaction, it has been said that the purpose of the register was not to be simply a 
starting-point for GI protection, otherwise the manda te in Article 23.4 of the TRIPS Agreement would 
have stated that Members should establish a GI database for information purposes only.  This was 
clearly not the case because the mandate was, inst ead, to establish a multilateral system for the 
registration and notification of geographical indi cations "in order to facilitate" their protection.211 
91. With regard to the EC proposal , it has been said that, upon expiry of the 18-month period, 
the administering body would register the notifie d geographical indication and include annotations 
related to reservations, if any.  The contents of the registration would therefore not only include the 
various elements of the notification but also tho se annotations.  The relevant annotation meant that 
there would not be legal effects for a challengi ng Member.  That was another example of the 
consistency of the EC proposal w ith the principle of territoriality. 212  The registry would therefore 
show the status of the geographical indications of  each Member, which would be useful information 
for the right holders,  the authorities responsible for geographical indications and other producers who 
would like to use these names.  Rather than having every interested party carry out an examination to 
know whether a geographical indication fulfilled the criteria or was generic, Members would already 
have the information on the register.213 
CONSEQUENCES OF REGISTRATION (PROPOSED "EFFECT OF 
REGISTRATION"/"PARTICIPATION", "PROCEDURES TO BE FOLLOWED BY 
PARTICIPATING MEMBERS"/"ACCESS FOR OTHER MEMBERS" OR "LEGAL EFFECTS IN PARTICIPATING MEMBERS"/"LEGAL EFFECTS IN NON-PARTICIPATING MEMBERS"/"LEGAL EFFECTS IN LEAST-DEVELOPED COUNTRY MEMBERS") 
In participating Members – HKC, D.1-4;  JP, 5;  EC, 4 
92. With regard to the Hong Kong, China proposal , it has been explained that, in contrast to the 
EC proposal, only Members participating in the system  would be required to give legal effect to a 
registration and that the rebuttable presumptions that  a registration would entail related only to three 
specific issues, namely ownership of the geographi cal indication, that the indication satisfied the 
definition under Article 22.1 of the TRIPS Agreem ent in the notifying country, and that it was 
protected in its country of origin.  There was no time limit attached to these rebuttable presumptions, 
nor was there any provision for o ppositions at the multilateral level.
214 
                                                      
209 Argentina, TN/IP/M/16, para. 102. 
210 Australia, TN/IP/M/18, para. 45; TN/IP/M/17, pa ra. 32;  United States, TN/IP/M/18, para. 13; 
TN/IP/M/17, para. 29. 
211 European Communities, TN/IP/M/16, para 104. 
212 European Communities, TN/IP/M/16, para. 83. 
213 Switzerland, TN/IP/M/14, para. 114. 
214 Hong Kong, China, TN/IP/M/14, para. 149, TN/IP/M/16, paras. 127 and 128.  TN/IP/W/12/Add.1  
 Page 29 
 
 
93. The question has been raised whether, under the Hong Kong, China proposal, the burden of 
proof regarding the question of whether or not a geographical indication was generic would be on the 
generics producers or on the GI owners.  Under th e Hong Kong, China proposal, would there still be, 
in such a case, a presumption that the term was a geographical indication?215  In response, it has been 
said that, under the Hong Kong, China proposal, there would be no presumption linked to the 
provision on generic terms and therefore the burde n of proof would not be affected.  This was 
precisely one of the main features distinguish ing the Hong Kong, China proposal from the EC 
proposal.  A Member's domestic court would be in the best position to determine whether a term was 
generic or not in that Member's territory.216 
94. A number of views have been expressed on the presumptions envisaged in the proposals of 
both Hong Kong, China and the European Communities .  In general, it has been said that the 
effect of such presumptions would be to shift the burden of proof and thereby substantively alter the 
balance of rights and obligations under the TRIPS Agreement.217  The following arguments have been 
advanced in this regard: 
- This reversal of the burden of proof wo uld place geographical indications at a higher 
level than any other form of intellect ual property.  Why should geographical 
indications benefit from presumption of prot ection when other forms of intellectual 
property did not?218  Such a reversal would force tr ademark owners and generic users 
to prove their right to continue use of their trademark or of a generic term if a later-in-time geographical indication was notified.
219 
- The presumptions would essentially create a GI right in each WTO Member without 
any national examination as it would allow for a notifying country to use its country 
of origin protection as a basis to receive pr otection in another c ountry without having 
to comply with the statutory requirements of that country.  This ignored the principle 
of territoriality in that intellectual property protection typically had effects only within the territory of the Member that had granted that protection.
220 
- Shifting the burden of proof away from the right holder, where it traditionally and 
logically belonged, would impose higher costs on those producers seeking to avoid disruption of trade.  It was only in Article 34 of the TRIPS Agreement with regard to process patents that the reversal of the burden of proof was expressly provided for.
221 
95. In regard to the Hong Kong, China proposal, the view has been expr essed that under existing 
systems trademarks were granted an evidentiary presumption only after a rigorous examination 
regarding prior rights and statutory requirements as well as after a third party opposition period. In 
contrast, under the Hong Kong, China proposal, regi stered terms would, after a simple formality 
check, enjoy the status of prima facie evidence befo re the domestic courts and authorities of Members 
regarding three crucial elements, namely the owners hip of the geographical indication, whether it met 
the Article 22 definition and whether it was protect ed in the country of origin.  This would 
substantially change the balance of rights and ob ligations under the TRIPS Agreement and, in fact, 
serve to unnecessarily increase rather than fac ilitate protection of geographical indications.222  T h e  
                                                      
215 Australia, TN/IP/M/16, para. 129. 
216 Hong Kong, China, TN/IP/M/16, para. 130. 
217 Argentina, TN/IP/M/14, para. 150;  Australia, TN/IP/M/16, para. 141, TN/IP/M/17, para. 77;  
New Zealand, TN/IP/M/14, para. 157.   
218 New Zealand, TN/IP/M/14, para. 157. 
219 United States, TN/IP/M/14, para. 118, TN/IP/M/14, para. 155, TN/IP/M/16, para. 124. 
220 United States, TN/IP/M/16, para. 124. 
221 Argentina, TN/IP/M/14, para. 150;  New Zealand, TN/IP/M/14, para. 157. 
222 New Zealand, TN/IP/M/14, para. 157;  United States, TN/IP/M/14, para. 118, TN/IP/M/14, 
para. 155, TN/IP/M/16, para. 124;  . TN/IP/W/12/Add.1 
Page 30  
 
existence of the presumptions seemed to be in contra diction with the recognitio n in paragraph 4(a) of 
Section D of the Hong Kong, China proposal that the exceptions under Articles 22 to 24 of the TRIPS Agreement would continue to be full y applicable by domestic courts.
223 
96. In response, the following arguments have b een put forward in relation to the Hong Kong, 
China proposal: 
- The proposed system was voluntary and would, therefore, create certain rebuttable 
legal effects only in those Members participating in the system.  Hence, if a Member took a well-informed policy decision not to participate in the system, there would be no legal effects and, as a consequence, th e question of its consistency with the 
territorial nature of IPRs should not arise.
224 
- Even for those participating Members, there would be a presumption regarding three 
aspects only:  the definition under Article 22.1 of the TRIPS Agreement;  GI ownership;  and the protection of the geographical indication in the notifying 
country.
225 
- All presumptions would be rebuttable and would operate within Members' domestic 
courts, in accordance with their local ju risprudence and proceedings.  Whatever 
decision was taken by a domestic court on a particular geographical indication, it 
would only have effects in that particular jurisdiction, with no consequences for other 
Members.  In this way, the territorial nature of IPRs would be preserved.  Except with regard to Article 24.9 of the TRIPS Agreement, all other exception provisions under Article 24 would stay intact and be govern ed by the rules under Member's domestic 
systems.  Unlike the EC proposal, there would not be any time-limit.
226 
97. Another view expressed in regard to the Hong Ko ng, China proposal has been that, while the 
approach of creating presumptions that would be rebuttable at any time was positive, these 
presumptions should relate not only to definition and protection in the country of origin, as was 
proposed by Hong Kong, China, but also to the gene ric nature of a name or the misleading character 
of a homonymous name, as was proposed by the EC.  The concept of territoriality would be fully 
respected for two reasons:  first, each Member would have the possibility, in a system with reservations, to lodge a reservation;  second, since the presumptions would remain rebuttable, it would 
be possible to challenge the presumption at any time after the registration before the national courts.
227  
Each Member would continue to be able to d ecide whether or not a term was a geographical 
indication in its territory and, as a consequence, wh ether it merited protection.  Since the principle of 
territoriality also applied to determ inations regarding the genericness of terms, it would not be logical 
to give an extraterritorial charact er to such determinations either.228 
98. It was further argued that in view of the fact  that the mandate called for establishing a system 
to "facilitate the protection" of geographical indica tions that was currently available under the TRIPS 
Agreement, it would be necessary to bring in a "p lus" element.  The objective of "facilitation" of 
protection could not be achieved without providing, as the EC and Hong Kong, China proposals did, 
that a registration would have as a legal effect  the presumption of validity of the registered 
geographical indication in all the Members that had not opposed it.  This presumption should be 
rebuttable at any time and on any applicable ground.   It was not aimed at creating new rights or 
                                                      
223 Argentina, TN/IP/M/14, para. 150. 
224 Hong Kong, China, TN/IP/M/16, para. 127. 
225 Hong Kong, China, TN/IP/M/16, para. 127. 
226 Hong Kong, China, TN/IP/M/16, paras. 127-128. 
227 Switzerland, TN/IP/M/14, para. 159. 
228 Chile, TN/IP/M/17, para. 81; Switzerland, TN /IP/M/16, para. 145, TN/IP/M/17, para. 76.  TN/IP/W/12/Add.1  
 Page 31 
 
 
obligations, but rather at putting GI right holders in a better situation than the one existing at the 
present time to defend their rights.  By providing this type of limited or qualified legal effect, 
Members would fulfil the mandate of "facilitating" protection.229   
99. With regard to the EC proposal , it has been confirmed that, where no opposition had been 
lodged in respect of a notified GI on one of th e grounds on which oppositi ons could be made, the 
effect would be that the possibility of invoking  that exception would have been waived and an 
irrebuttable presumption created.  It has been said that this kind of determination was not a novelty since it was common practice for trademark offices to  decide whether or not signs in applications 
were actually distinctive and, therefore, registrabl e as trademarks.  As far as geographical indications 
were concerned, some Members were already ma king this kind of determination as a result of 
bilateral negotiations, in application of the flex ibility Members enjoyed under the TRIPS Agreement 
to decide on the genericness of terms, including on wh ether to protect a term which had formerly been 
considered generic.  While Article 24.6 of the TRIPS Agreement allowed Members not to protect 
geographical indications of other Members they c onsidered as generic, it did not oblige Members to 
do so.  Such a possibility should therefore not creat e a surprise:  it had been a normal practice for 
Members to negotiate on generics on the basis of Ar ticle 24.1 of the TRIPS Agreement.  What the EC 
proposal was doing was simply implementing that provision.
230 
100. In addition to the views set out earlier in re lation to the presumptions envisaged in the 
proposals of both Hong Kong, China and the Europ ean Communities, a number of views have been 
expressed more specifically directed at the legal effects provided for in the proposal of the 
European Communities : 
- The substantive legal effects it applied to participating Members were not foreseen in 
the current standards of the TRIPS Agreement.231 
- Under the TRIPS Agreement there were ca refully negotiated relationships between 
trademarks and geographical indications, with  neither of them having preference over 
the other.  The EC proposal would upset this balance by creating a presumption that a 
notified term should be automatically protect ed in all WTO Members, whether or not 
it was considered a geographical indication in those Members.  This evidentiary presumption that would be granted upon re gistration would call into question the 
validity of prior trademarks and generic term s, forcing trademark owners and users of 
generic terms to prove their right to conti nue to use these terms.  As a hypothetical 
example, assuming the EC proposal applied to all products, which would be strongly 
opposed, if the European Communities notified "feta" as a geographical indication, 
there would be a presumption of eligibility for protection in all the WTO Members.  
The proposal would thus force all those Members where the term "feta" was generic to defend such determination against th e presumption that would flow from the 
register.  An unprecedented substantive le gal obligation would be placed on all WTO 
Members.  The EC proposal wanted to rely on Article 24.1 of the TRIPS Agreement 
to eradicate the generic exception under Ar ticle 24.6, which was a matter to be 
decided by the domestic courts of each Member according to their domestic legislation, taking into account local circumstances.
232 
                                                      
229 Switzerland, TN/IP/M/16, para. 144. 
230 European Communities, TN/IP/M/16, para. 108, TN/IP/M/14, para. 161. 
231 Argentina, TN/IP/M/14, para. 151. 
232 Hong Kong, China, TN/IP/M/14, para. 149, TN/IP/M/16, para. 128;  New Zealand, TN/IP/M/16, 
para. 98;  United States, TN/IP/M/16, para. 123. TN/IP/W/12/Add.1 
Page 32  
 
- The reversal of the burden of proof would transfer directly to national governments 
all the country-by-country costs that currently were the responsibility of individual producers.  This meant that the majority of  countries, particularly developing ones, 
would have to assume all the costs of  examining the notified geographical 
indications.  Those producers, especially those from countries with greater purchasing 
power, would save in litigation costs because they would be able to litigate in other 
countries solely based on the protection given in their own territories.  Producers of third countries would be the ones who woul d have to go to courts to defend their 
rights.  The EC proposed system would grant supranational exclusive rights to some producers who would have an additi onal competitive advantage over other 
competitors in third markets.
233 
- The proposal entailed a supranational approach whereby one single action taken at 
international level would trigger immediate and automatic global effects regardless of 
any intent of the right holder to actively market a term in any particular country, thereby potentially foreclosing markets that  otherwise would not be foreclosed.  By 
contrast, the underlying general approach for existing international IPR systems was 
that a person filing an application in various  countries had an interest in operating in 
those countries.
234  This system would therefore facilitate a type of "automatic 
claiming" of a broad range of terms throughout the WTO membership.235 
- The proposal suggested a type of worldwide extraterritorial system of protection in 
which a notifying country could use its own country of origin protection as the basis 
for receiving protection in another country  without having to comply with the 
statutory requirements of that country.  The presumptions foreseen would essentially create a GI right in each WTO Member without any national examination, thereby bypassing the national systems of other countries.  Such a system could not be reconciled with the notion that intellectual property rights were territorial, that rights 
had to be established and asserted under the laws of the country where protection was 
being sought, and that such rights typically had effects only within the territory of the Member that had granted them.
236 
101. In response, the following argum ents have been advanced: 
- All proposals, including the Joint Proposal, w ould trigger legal obligations that were 
not currently specifically provided for under the TRIPS Agreement.  It was unclear 
what the difference was between the legal e ffect of a legal commitment to consult a 
database and the legal effect of a reversal of the burden of proof, or any other legal 
effects like the ones under the EC proposal.237  The effects envisaged might be more 
or less strict, but all were obligations not specifically provided for in the TRIPS Agreement.  It was questionable why a "sof t" legal effect would be acceptable and 
considered within the mandate while  a more stringent one would not.
238 
- The exceptions in Article 24 of the TRI PS Agreement would continue to apply under 
the EC proposal.  Some of them should be exercised within the 18-month reservation period, while others, which were not mentioned specifically in the original EC 
                                                     
 
233 Argentina, TN/IP/M/14, paras. 169 and 170. 
234 United States, TN/IP/M/14, para. 166. 
235 United States, TN/IP/M/14, para. 155. 
236  Argentina, TN/IP/M/17, para. 64;  Australia, TN/IP/M/17, para. 63;  Canada, TP/IP/M/17, para. 68;  
Chile, TN/IP/M/17, para. 81;  New Zealand, TN/IP/M/17, para. 66;  United States, TN/IP/M/14, para. 155, TN/IP/M/16, para. 124, TN/IP/M/17, paras. 48 and 71. 
237 European Communities, TN/IP/M/14, para. 31.  
238 European Communities, TN/IP/M/14, para. 37.  TN/IP/W/12/Add.1  
 Page 33 
 
 
proposal but were later expressly included at the request of certain Members, could be invoked at the national level at any time.  The proposal would not create substantive obligations, but simply procedur al requirements in order to facilitate GI 
protection, which was in line with the mandate.
239 
- The EC proposal did not aim at eradicati ng Article 24.6 of the TRIPS Agreement.  
This provision would be the basis for o pposition if a Member found that a term was 
generic in its territory, in which case the ge ographical indication would be registered 
with an annotation excluding legal e ffects in the opposing Member.  As a 
consequence, not only would Article 24.6 be preserved, but the system would also ensure that the principle of territoriality was respected.  For example, a non-EC 
Member would still be able to export "f eta" under that name  to Members that 
decided, based on the principle of territorialit y, that it was generic in their territories.  
This illustrated that the EC proposal ensu red that the decision on the protection of 
terms remained in the hands of national authorities.
240 
- The EC proposal would not bypass national administrations because it gave Members' 
national authorities a reasonable period of time of 18 months to review an application 
and decide whether a geographical indication could be protected in their territories.  
Decisions regarding geographical indications  would continue to be made at the 
national level and the EC proposal was therefore not trying to impose extraterritorial effects.
241 
- The possibility of seeking global protection on the basis of the protection granted in 
the country of origin was not new to intellectual property systems.  It was based on 
the TRIPS Agreement itself, which introduced the notion of country of origin.  For example, trademarks registered in one c ountry enjoyed certain priority rights in 
others.  It was on the basis of the protection in the "country of origin", i.e., the country of first registration, that priority rights could be obtained in other third 
countries if applications were lodge d within a certain period of time.
242  In that sense 
the TRIPS Agreement already provided for what could be termed as "universal" 
protection.  However, GI protection under the proposed EC system would not actually be that "universal" because the objective of the procedures for opposition was precisely to enable Member s to ensure that their national particularities as far as 
protection was concerned would be reflected by the system.
243 
102. In response to the first point, it has been argued that the commitment to  consult the database 
was not of a similar nature to that of other proposals,  in particular the requirements set forth in the EC 
proposal.  The commitment to consult the database would, in good faith, fulfil the requirements of 
Article 23.4 while at the same time preserving th e current rights and obligations under the TRIPS 
Agreement.  This was the kind of balance the pr oponents of the Joint Proposal were looking for.244 
103. In response to the last point, it has been said that the TRIPS Agreement did not provide for 
"universal" protection, as its provisions were underp inned by the principle of territoriality, not by 
universality.  The EC proposal was suggesting that  the register should facilitate the universal 
protection of geographical indicati ons, which confirmed that their proposal was "TRIPS plus" and, as 
such, would be better placed at WIPO.  It w as "TRIPS plus" because it would give geographical 
                                                      
239 European Communities, TN/IP/M/16, paras.  133-135, TN/IP/M/17, paras. 73 and 78. 
240 European Communities, TN/IP/M/16, para. 136 
241 European Communities, TN/IP/M/14, para. 164, TN/IP/M/17, para. 73. 
242 European Communities, TN/IP/M/14, para. 165. 
243 European Communities, TN/IP/M/16, para. 109. 
244 United States, TN/IP/M/14, para. 33.  S ee also Australia, TN/IP/M/14, para. 34. TN/IP/W/12/Add.1 
Page 34  
 
indications notified to the register a presumption of  protection in all Members, an effect which would 
change the balance of rights and ob ligations under the TRIPS Agreement.
245 
104. A number of points have been made about the possible commercial impact of the proposal 
of the European Communities .  One view has been that: 
- By facilitating the automatic claiming of a broad range of terms throughout the WTO 
membership, the system could eliminate the ability of right owners in one market to 
enter a new market with their trademark or  other rights, and could inhibit the ability 
of small and medium-sized companies to establish new brands that could otherwise 
have incorporated such terms.246 
- Companies that had long sold products in a territory with generic names or as 
trademarks that appeared similar to a no tified geographical indication would have to 
find a new name for their products, the same being true for local geographical 
indications that happened to be similar to  notified geographical indications.  This 
would all happen as a result of Members only having one chance to object to a geographical indication at the internatio nal level and on limited grounds within an 
18-month period.
247 
- Another result would be that there would be nothing to stop the 
European Communities or other Members from simply pre-emptively registering the names of all towns, regions and other do mestic geographical i ndications, regardless 
of any intent to export products therefrom.   For the European Communities alone, this 
could number in the tens of thousands.
248 
105. In response, the following points have been made: 
- In regard to the concern about the restri ction of the ability to use certain terms in 
world trade, the possibility to use many terms had, in a way, been wiped out through trademarks, which covered more  terms than those affected by geographical indication 
systems.  Intellectual property protection wa s a valid aim and it was legitimate for GI 
right holders to seek protection not only in their countries, but also in other countries 
where they wished to operate.  GIs right hol ders who were trying to  gain protection in 
third countries via the register could, if they had the money to do so, also start registering certification marks in these c ountries.  As certification marks would also 
give a monopoly right on the use of these terms, the argument concerning the wiping out of the use of certain terms should also apply in this case.
249 
- GI name users would not be compelled to find new names for their products, 
precisely because, under the EC proposal , exceptions, such as those based on 
genericness, would remain applicable and could be invoked at the national level to 
ensure that prior uses could continue in those markets where these exceptions 
applied.250 
                                                      
245 Australia, TN/IP/M/16, para. 115. 
246 United States, TN/IP/M/14, para. 155, TN/IP/M/16, para. 125. 
247 Australia, TN/IP/M/17, para. 77;  Un ited States, TN/IP/M/16, para. 125. 
248 Australia, TN/IP/M/17, para. 77;  Un ited States, TN/IP/M/16, para. 125. . 
249 European Communities, TN/IP/M/14, para. 163. 
250 European Communities, TN/IP/M/16, para. 137.  TN/IP/W/12/Add.1  
 Page 35 
 
 
- The danger of pre-emptive registration of  names of all towns and regions did not 
exist.  "Geographical indications" were  only those names that referred to a 
geographical origin and where there was a link between the qualities, characteristics and reputation of the product with that ge ographical origin.  This was not an easy 
hurdle to overcome and, therefore, not every geographical name could become a 
geographical indication.
251 
106. Points have been made on paragraph  4(c) of the EC proposal  regarding the requirement on 
Members, if a notifying participa ting Member has so requested, to notify any applications for 
trademark registrations  that contain or consist of a geographi cal indication that had been registered 
or applied for.  One view has been that this requirement would be an additional burden on all 
Members.  Rather, the burden should be on the GI owners themselves to search for conflicting 
trademark registrations and applications in the market they wished to enter.252  T h e  complicated 
structure of costs and fees provided for under paragr aph 9 of the proposal to address these costs would 
be a total novelty in multilateral registration sy stems.  Was the WTO going to act as some taxing 
agency responsible for the redistribution of the f ees to developing countries, who would be, in the 
end, those having to pay for such reports?  Few LDCs  and developing countries would be able to take 
on such costs.253 
107. In response, it has been argued that, because of the fact that prior trademark searching could 
be a burden, the EC proposal foresaw that the right holders themselves should pay for this obligation.  
This was recognized in paragraph 9.5 of the pr oposal, according to which the registration of a 
geographical indication "shall be subject to the advance payment of a multilateral fee which shall 
include:  (i) a basic fee;  and (ii) an individual f ee".  Paragraph 9.7 stated that such individual fees 
"shall cover the costs incurred by WTO Members requ ested to provide", for a given application, the 
information about prior trademarks and about future trademark applications.  This was, in fact, not a 
novelty in terms of international registration systems because many offices had already been 
providing search reports.  In addition, the Madrid Pr otocol had a similar system whereby registration 
fees differed depending on the costs of registration in each member state.  Furthermore, nothing 
prevented Members from delegating this work to spec ialized private companies.  The objective of this 
obligation was the idea of using it as a mechanism to bring information on possible conflicts with 
trademarks to the forefront.  It was meant to help all interested parties, GI and trademark right holders, avoid conflicts in the future.
254 
108. The issue of  how the EC proposal compares to exis ting international registration systems 
managed by WIPO  has been discussed.  One view has be en that all the WIPO-administered 
registration systems aimed at facilitating the obtaining of protection for different IP rights.  All these 
systems had legally binding effects and the possibilit y of challenging notifications.  Under the Madrid 
system, to which Australia and the United States we re party, an international registration of a 
trademark resulted in the granting of protection to a trademark in other member states that did not 
oppose it in the same way as if the trademark had been the subject of a direct application with the 
national office of that member state.  Under the Lisbon Agreement, notified geographical indications, 
unless opposed, would have the protection established in the Lisbon Agreement itself.  These were strong legal effects.  The EC was proposing a differe nt system for the GI register because it was being 
negotiated under the WTO framework and not in WI PO.  The suggested legal effects in the EC 
proposal were less than those of the Madrid or Li sbon systems, and simply aimed at facilitating the 
protection provided for under the TRIPS Agreement.  The EC proposal was also suggesting a system 
with legal effects in all Members, based in this  case on presumptions, so as to ensure that meaning 
                                                     
 
251 European Communities, TN/IP/M/16, para. 138. 
252 Argentina, TN/IP/M/14, para. 151; Hong Kong, China, TN/IP/M/14, para. 149; New Zealand, 
TN/IP/M/14, para. 157.  
253 Argentina, TN/IP/M/14, para. 171. 
254 European Communities, TN/IP/M/14, paras. 160 and 173. TN/IP/W/12/Add.1 
Page 36  
 
was given to the word "multilateral" in Article 23. 4 of the TRIPS Agreement and to thereby fulfil its 
mandate.
255 
109. In response, the following points have been made: 
- While the WIPO systems had the objective of  facilitating the obtaining of protection, 
the mandate in Article 23.4 of the TRI PS Agreement only required the establishment 
of a system to facilitate protection, not to obtain it.256   
- The WIPO systems did not enjoy broad acceptance by WTO Members particularly in 
relation to developing countries.  For exam ple, with the exception of the PCT, 
virtually no Latin American WTO Member had ratified any WIPO system.257  The 
Lisbon Agreement had few members out side the member states of the 
European Communities.258 
- The WIPO systems respected the principle of territoriality as any opposition 
mechanisms took place at the national leve l within the respective IP offices of 
member countries.  The Madrid system, on which the EC proposal was allegedly based, provided that "the prot ection of the mark in each of the Contracting Parties 
concerned shall be the same as if the mark had been deposited direct with the Office 
of that Contracting Party".  In other words, what the Madrid System simply did was to facilitate:  a notification would arrive at  the international office, which would send 
it to the designated national office. The national office would henceforth simply 
process this notification as if it had come from inside that country, including the possibility to lodge oppositions.  This w as different from the unprecedented effects 
proposed by the EC proposal, where a Member refusing to grant protection would 
still have to negotiate within the 18 mont h period. These effects were stronger than 
those under the Madrid or Lisbon systems.
259 
110. With regard to the conseque nces of registration under the Joint Proposal , it has been 
explained that the Joint Proposal would not confer any rights with respect to geographical indications 
registered in the system, nor would it upset the current balance of rights and obligations of WTO 
Members under the TRIPS Agreement or generate burdens for developing countries.260  It involved a 
straightforward process of registration, which wo uld simply ensure that a notified geographical 
indication was duly recorded on the register.  A regi stration itself would have no impact on the legal 
rights and obligations of Members in terms of the status of individual geographical indications.  
Members that had chosen to participate in the system would make a commitment to consult the 
database when making national decisions about protecti ng geographical indications.  It would be up to 
the Member consulting the database to determine, a ccording to the provisions of its domestic laws and 
registration requirements, what evidentiary weight  to give to the registration of a geographical 
indication included in the database when making de terminations on whether or not to protect a 
trademark or a geographical indication.  Nationa ls from Members seeking protection would still be 
able to apply directly to national offices.  There w ould be no legal consequen ces for non-participating 
Members, who would, however, have free access to th e database.  Consistent with the principle of 
territoriality, all decisions about geographical indica tions, including the applicability of the Article 24 
exceptions, would therefore be left with national d ecision-makers in IP offices.  The commitment to 
consult the database was a new, substantive and meaningful obligation that would ensure the 
                                                      
255 European Communities, TN/IP/M/16, para. 132,  TN/IP/M/16, para. 151, TN/IP/M/17, para. 82. 
256 Argentina, TN/IP/M/17, para. 83. 
257 Argentina, TN/IP/M/17, para. 83. 
258 Argentina, TN/IP/M/14, para. 57. 
259 Chile, TN/IP/M/16, para. 155, TN/IP/M/17, para. 85. 
260 Argentina, TN/IP/M/14, para. 172.  TN/IP/W/12/Add.1  
 Page 37 
 
 
facilitation of the protection of geographical indicati ons in a manner consistent with the mandate of 
this Special Session.261 
111. The question of whether the legal effect s suggested by the Joint Proposal would be  sufficient 
to facilitate the protection of geographical indi cations and, therefore, to meet the mandate of 
Article 23.4 of the TRIPS Agreement262 has been discussed.  The follo wing arguments have been 
made in support of the view that it would not be:   
- A database that simply compiled national information would be merely a source of 
information which would not facilitate the protection of GIs in other WTO Members.
263 Had the drafters of Article 23.4 had the intention of simply establishing 
a list of geographical indications, they would have clearly mandated that.  In contrast 
to provisions in the TRIPS Agreement which explicitly indicated that some 
notification obligations were simply for the purposes of exchanging information, 
Article 23.4 went beyond that and manda ted the establishment of a multilateral 
system for the notification and registrati on of geographical indications.  Multilateral 
systems of registration, as all Members knew and agreed on, carried certain legal 
effects.   Therefore, it still remained for Members to ensure that any proposed legal 
effects actually met the mandate of f acilitating the protection of geographical 
indications.264   
 - The database would not contain reliable in formation.  Knowing that the information 
available in this database w ould not be reliable, national au thorities would be likely to 
prefer not to take account of what was in th e database.  In addition, due to the limited 
participation, the database would contain incomplete information.
265   
 
- The obligation to consult the register, wit hout any mechanism to ensure that such an 
obligation would be respected, would not be sufficient to truly "facilitate" the 
protection of geographical indications , as required by Article 23.4 of the 
TRIPS Agreement.266  
 112. In response, the following argum ents have been advanced: 
- The obligation to consult the GI data base was a serious and meaningful new 
commitment that would need to be built into Members' systems and procedures, and 
was one that participating Members would be expected to honour.
267  IP offices 
would probably welcome having access to such a transparent one-stop resource with easy access to information.
268  The register would be an unprecedented source of 
information that would facilitate prot ection by increasing awareness of notified 
geographical indications and would provide a useful tool in helping IP offices 
anywhere in the world avoid possible conf licts between trademarks and geographical 
indications.269  Examiners would be aware that a term was protected in another 
                                                      
261 New Zealand, TN/IP/M/14, para. 156, TN/IP/M/16, para. 97;  United States, TN/IP/M/14, para. 154, 
TN/IP/M/16, para. 126. 
262 European Communities, TN/IP/M/16, para. 131. 
263 Switzerland, TN/IP/M/16, para. 147 
264 European Communities, TN/IP/M/17, para. 78. 
265 European Communities, TN/IP/M/16, para. 139. 
266 European Communities, TN/IP/M/16, paras. 13 1 and 139; Switzerland, TN/IP/M/14, para. 159, 
TN/IP/M/17, para. 75. 
267 Chile, TN/IP/M/16, para. 149;  New Zealand, TN/IP/M/16, para. 148. 
268 Australia, TN/IP/M/17, para. 87;  Ne w Zealand, TN/IP/M/16, para. 148. 
269 Australia, TN/IP/M/17, para. 87;  Canada, TN/I P/M/17, para. 79;  New Zealand, TN/IP/M/16, 
para. 148, TN/IP/M/17, para. 86;  United States, TN/IP/M/17, para. 84. TN/IP/W/12/Add.1 
Page 38  
 
country whereas in the current situation there was not a single unified place to find such information.
270  It could be expected that the number of Members actually 
consulting the database would be higher th an the number of Members obliged to do 
so.271 
- If the intention of the framers of the TRIPS Agreement had been to increase GI 
protection through these negotiations, they  would have used the language of 
Article 24.1 and not the language of Article 23.4, which simply referred to facilitating 
protection.272  A system would have to be regarded as sufficient if it facilitated 
protection, but there seemed to be differe nt interpretations of what "facilitation" 
meant.  One of the major concerns that ha d led to the built-in agenda in Article 23.4 
had been to ensure that trademarks c ontaining, or consisting of, geographical 
indications would not be registered in thir d country markets, thus avoiding that these 
trademarks could prevent GI owners from selling their products in those markets.  
The mandate also reflected some Members'  concern that, because not all Members 
protected geographical indications through a registration system, lack of information 
would put GI right holders at a disadvantage vis-à-vis  trademark owners in protecting 
and enforcing their rights.  Taking into a ccount this background history, "facilitation" 
conveyed the idea of an information-based source which would not be in itself, in contrast to other proposals, the source of protection, nor give rise to a presumption of protection in Members' territories.  Th e database under the Joint Proposal would 
sufficiently address these concerns by providi ng national IP offices with information 
on GI rights claimed by producers in the territory of another WTO Member, without 
increasing the protection of geographical indications at the expense of trademark holders and generics producers.
273 
- The information contained in the database would be reliable because it would be sent 
by WTO Members, who could be presumed to do so in good faith.274 
 - The issue of legal effects could not be simplistically characterized as one of whether 
the system to be established should or shoul d not have legal effects.  The challenge 
was to find a way to facilitate the protecti on of geographical indications under Article 
23 of the TRIPS Agreement without negatively impacting upon the interests of different country's constitue ncies.  The Joint Proposal would achieve that objective.
275  
It contained a workable system that was fair to existing GI systems and could be 
implemented without necessarily requiring Members to adapt their legislation.276  It 
was the only proposal consistent with th e TRIPS Agreement and the principle of 
territoriality which fulfilled in good faith th e requirements of Article 23.4, while at 
the same time preserving the existing ba lance of rights and obligations under the 
TRIPS Agreement.  This was the kind of ba lance the proponents of the Joint Proposal 
were looking for.277   
 
                                                      
270 Canada, TN/IP/M/17, para. 79. 
271 New Zealand, TN/IP/M/16, para. 148. 
272 Chile, TN/IP/M/17, para. 80. 
273 Australia, TN/IP/M/16, para. 141, TN/IP/M/17, para. 88. 
274 Chile, TN/IP/M/16, para. 149. 
275 Australia, TN/IP/M/16, para. 142. 
276 New Zealand, TN/IP/M/16, para. 97;  United States, TN/IP/M/17, para. 72. 
277 Australia, TN/IP/M/14, para. 34,  TN/IP/M/16, para. 142;  United States, TN/IP/M/14, para. 33, 
TN/IP/M/17, para. 72.  TN/IP/W/12/Add.1  
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In non-participating Members –  HKC, E.2;  JP, 6;  EC, 5  
 
113. With regard to the legal effects in non-particip ating Members, it has been said that, while the 
Hong Kong, China proposal and the Joint Proposal would only have legal effects in participating 
Members, the EC proposal would also have legal effects in non-participating Members who had not 
lodged a reservation.278  Therefore, after a certain time, the ri ght to use certain flexibilities within the 
existing TRIPS Agreement would be rem oved even for non-participating Members.279 This would be 
inequitable as a non-participating Member would receive no benefit but would incur additional 
obligations.280   
114. In response,  it has been argued that Article 23.4 clearl y stipulated that the system should be 
"multilateral", and hence cover, and have effects in, all the WTO Members.281  The effects provided 
for under the EC proposal for all Members, both pa rticipating and non-partic ipating, only referred to 
the questions of the definition, homonymous geograp hical indications under Ar ticle 22.4 and generics 
under Article 24.6.  The reason why the EC proposal limited the effects in non-participating Members 
to these aspects was to give meaning to the ma ndate under Article 23.4, which referred to a 
multilateral system and, at the same time hinted th at there were differences between participating and 
non-participating Members.  However, if Member s would find it useful to include other TRIPS 
exceptions in their proposal as grounds for opposition, this coul d be considered.282  It has also been 
argued that there was no reason to make a distinc tion between the legal effects of registration in 
Members who notify and in those wh o did not because the system to be set up would be a multilateral 
one with the sole objective of facilitating the prot ection that all Members, except LDCs, already had 
to offer, and not to increase such protection.283 
In least-developed country Members – EC, 6  
115. With regard to paragraph 6 of the EC proposal , it has been argued that this provision seemed 
superfluous in the light of the transitional period LD Cs were currently enjoying under Article 66.1 of 
the TRIPS Agreement.  The question was raised wh at would happen when LDCs started to apply the 
proposed system at the expiry of their transitional period.  Would they have to protect all the pre-
existing registered geographical indications or woul d there be a special system for LDCs to lodge 
reservations even before the expiration of their tran sitional period?  If that were the case, would that 
mean that during the transitional period LDCs would be able to place reservations but not to notify 
geographical indications?284 
116. In response, it has been said that, because the EC proposal allo wed LDCs to be participating 
or non-participating Members, LDCs were not excluded from placing reservations.  The LDCs 
provision of the EC proposal only related to the is sue of legal effects, but if Members wished to 
address the issue of reservations by them, the est ablishment of a transitional mechanism could be 
discussed whereby LDCs which did not exercise th eir rights to examine the notified geographical 
indications during the 18-month period would have the opportunity to do so in a manner that would be 
not be burdensome to their administrations.  This pr ovision in the EC proposal had only attempted to 
reflect the situation that the protection to be fac ilitated under the mandate given to the Special Session 
                                                      
278 Argentina, TN/IP/M/14, para. 152; Canada, TN/IP/M/16, para. 91;  Hong Kong, China, 
TN/IP/M/14, para. 149;  New Zealand, TN/IP/M/14, para. 157. 
279 New Zealand, TN/IP/M/14, para. 157. 
280 Canada, TN/IP/M/16, para. 91. 
281 European Communities, TN/IP/M/16, paras. 110 and 156. 
282 European Communities, TN/IP/M/17, para. 53. 
283 Switzerland, TN/IP/M/14, para. 158. 
284 Argentina, TN/IP/M/14, para. 153. TN/IP/W/12/Add.1 
Page 40  
 
was the one that applied to wines and spirits unde r Articles 22, 23 and 24 of the TRIPS Agreement, 
and that these provisions currently a pplied to all Members except LDCs.
285 
DURATION AND RENEWALS OF REGISTRATIONS  - HKC, C.1-2 
 117. The question has been raised as to whether or not the ten-year renewable period of protection 
foreseen in the Hong Kong, China proposal  would be in conformity with the TRIPS Agreement, 
since the TRIPS Agreement was silent on this matter.   Contrary to other IPRs for which negotiators 
had expressly provided a term of protection, this silence had some meaning.
286  The ten-year term of 
protection would be a limitation to protection th at is not foreseen in the TRIPS Agreement.287  
Another view was that, while the TRIPS Agreemen t had no provisions on duration as was the case for 
other IPRs, there was no objection to the approach taken by Hong Kong, China.288  In response, it has 
been said that the proposal was aimed at keeping th e register up to date.  If details concerning a 
geographical indication had not changed, the renewa l would be automatic, subject to payment of the 
required fees.  The proposal did not impose any limitation on the number of renewals.289 
MODIFICATIONS AND WITHDRAWALS OF NOTIFICATIONS AND REGISTRATIONS  -
HKC, B.5 and C.3-6;  JP, 7-8;  EC, 7-8  
118. As regards the EC proposal , clarifications have been sought regarding withdrawals that were 
not notified to the system.  While the second sente nce of paragraph 8.1 of the EC proposal provided 
that, if the geographical indication ceased to fulfil the conditions for protection, the notifying Member 
should withdraw the relevant notification, there w as no provision in the EC proposal to cover the case 
where a notifying Member did not make a notification of withdrawal.  If, for example, a geographical 
indication had fallen into disuse or was no longer pr otected in its country of origin, what would 
happen in such a case, including in regard to any losses that producers in third countries might have 
incurred due to the legal effects produced by that notification?
290  In response, it has been said that, 
under the EC proposal, which was for an annex to th e TRIPS Agreement, there would be a violation 
of the TRIPS Agreement if a Member did not make a notification of withdrawal of the registered 
geographical indication.  There would be an obliga tion on each Member to notify, for example, that a 
geographical indication had ceased to be protected in th at Member.  The effects of this withdrawal for 
producers from third countries would depend on each c ountry.  In particular, it would depend on how 
Members had implemented Article 24.9 of the TRIPS Agreement, which allowed, but did not oblige, 
them to protect a geographical indication that was no longer protected in its country of origin.  
Members were therefore still free to continue protectin g that particular geographical indication even if 
it was no longer protected in the country of origin.291  
TERMINATION OF PARTICIPATION IN THE SYSTEM  - JP, 9;  EC, 13 
 
119. The view has been expressed that the provision in the Joint Proposal  allowing a Member to 
terminate, at any time, its participation in th e system through a written notification to the WTO 
Secretariat, and further stipulating that all geogra phical indications notified by that Member must be 
removed from the database, was clear and transparent292, and respected the voluntary character of the 
proposed system in accordance with its fundamental principles and the mandate of Article 23.4.293 
                                                      
285 European Communities, TN/IP/M/14, para. 162. 
286 European Communities, TN/IP/M/15, paras. 8 and 14. 
287 Argentina, TN/IP/M/15, para. 19. 
288 Chile, TN/IP/M/15, para. 13. 
289 Hong Kong, China, TN/IP/M/15, para. 12. 
290 Argentina, TN/IP/M/15, para. 6. 
291 European Communities, TN/IP/M/15, para. 10. 
292 Argentina, TN/IP/M/15, para. 7. 
293 United States, TN/IP/M/15, para. 15.  TN/IP/W/12/Add.1  
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120. With regard to the absence of a specific text in the EC proposal  the point has been made that, 
given the legal effects of the EC system on partic ipating and non-participating Members, it would be 
important for Members to know exactly what the re gime would be for termin ation of participation.294  
In response, it has been said that, since non-pa rticipating Members would have some legal 
obligations, providing for the "termination" would no t fit into the concept of a multilateral system as 
understood under the proposal.295  Withdrawal from the system would only mean changing from the 
status of participating Member to that of a non-participating Member.296 
FEES AND COSTS  – HKC, A-2 and footnote 3;  EC, 9  
 
121. The view has been expressed that the system should be simple and uncomplicated297, that it 
should not be unduly costly298, that it should not impose undue costs or administrative burdens299 on 
the WTO Secretariat300 or the administering body301 and on Members302, in particular 
non-participating countries303 and developing countries304;  and that costs generated by it should be 
supported largely by those participating Members th at had notified geographical indications into it.305  
The system should be efficient for developing countries, keeping in mind the burdens they were 
already bearing and the fact that the Doha Round was a round for them.306  The issues of costs and 
burdens were essential to many Members, in partic ular for those developing countries that were not 
wine or spirit producers.307  It would be essential to take into account, in a horizontal way, the impact 
that every element of the system could have in terms of costs and burdens for developing countries.308 
122. It has been said that the Hong Kong, China proposal was based on the user-pays principle;  
the system would be run on a full-cost recovery basis.  The initial notification of a geographical 
indication would include "the requisite fee".  Annex B309 of the proposal gave, as an illustration, an 
approximate costing of a system based on form ality examination only, i.e. without opposition 
procedures.  One of the guiding principles of the proposal was that the establishment of the system 
should not impose undue financial or administrative burdens on Members, neit her on those choosing 
to participate in the system nor on those opting out of the system.310 
                                                      
294 Argentina, TN/IP/M/15, para. 7. 
295 European Communities, TN/IP/M/15, para. 9. 
296 European Communities,  TN/IP/M/15, para. 11. 
297 Singapore, TN/IP/M/16, para. 168;  United States, TN/IP/M/14, para. 12. 
298 Costa Rica, TN/IP/M/16, para. 13;  Guatemala, TN/IP/M/16, para. 9;  India, TN/IP/M/16, para. 9;  
Korea, TN/IP/M/17, para. 19;  Malaysia, TN/IP/M/16, para. 22;  Philippines, TN/IP/M/16, para. 9;  Singapore, 
TN/IP/M/16, paras. 21 and 168;  United States, TN/IP/M/14, para. 12, TN/IP/M/16, para. 18. 
299 Hong Kong, China, TN/IP/M/14, para. 17;  Japan, TN/IP/M/14, para. 11;  Singapore, TN/IP/M/16, 
para. 168;  Chinese Taipei, TN/IP/M/15, para. 36. 
300 Japan, TN/IP/M/15, para. 35.  
301 Costa Rica, TN/IP/M/16, para. 13;  Guatemala, TN/IP/M/15, pa ra. 17;  Nicaragua, TN/IP/M/16, 
para. 20. 
302 Brazil, TN/IP/M/16, para. 16;  Costa Rica, TN /IP/M/16, para. 13;  Gu atemala, TN/IP/M/16, 
para. 17;  Hong Kong, China, TN/IP/M14, para. 17;  Japan, TN/IP/M/14, para. 11, TN/IP/M/15, para. 35;  
Nicaragua, TN/IP/M/16, para. 20;  United States, TN/IP/M/16, para. 18. 
303 Hong Kong, China, TN/IP/M/14, para. 17;  Korea, TN/IP/M/17, para. 19;  Singapore, TN/IP/M/16, 
para. 21. 
304 Malaysia, TN/IP/M/16, para. 22;  Philippines, TN/IP/M/16, para. 159. 
305 Chinese Taipei, TN/IP/M/15, para. 36;  New Zealand, TN/IP/M/15, para. 22. 
306 Jordan,  TN/IP/M/16, para. 46. 
307 Costa Rica, TN/IP/M/16, para. 169. 
308 Guatemala, TN/IP/M/16, para. 17. 
309 Annex B is not reproduced in TN/IP/W/12;  see TN/IP/W/8. 
310 Hong Kong, China, TN/IP/M/14, para. 17. TN/IP/W/12/Add.1 
Page 42  
 
123. The following points have been made on this part of the Hong Kong, China proposal: 
 - The proposal, which was less complex than  the EC proposal, would be more costly 
than the Joint Proposal.
311  
 - What would be the administrative cost involved for domestic registration offices as a 
result of notifications?312 
 - Annex B only dealt with a small portion of the real costs discussed, and did not 
address the costs that were causing concer ns, such as additional costs to national 
systems, consumers and producers.313   
124. In response, it has been said that there would not be any direct costs for non-participating 
Members because there would be no legal effects on them .  With regard to indirect costs related to the 
monitoring of third markets, the situation would not be different from the present situation where 
geographical indications were protected as certification marks.314  
125. It has been said that the Joint Proposal  was based on the guiding pr inciple that the system 
should be simple,  transparent and cost effective and not be unduly bureaucratic.315  It did not contain 
any provisions on fees and costs because the system proposed was simple and inexpensive316 and 
there was thus no need to establish fees.317  It was the lowest cost opti on on the table:  it would entail 
minimal cost for participa ting Members and no costs for non-participating Members.318  The system 
would not place any additional319 or significant administrative and legal burdens on participating 
Members, let alone on non-participating on es, for whom there would be no costs,320 therefore 
reflecting the truly voluntary character of the system.321  Costs would be borne by the WTO in the 
same way as for other notification procedures.322  It would, in fact, only carry nominal costs for the 
administering body to cover the maintenance of the system.  Most importantly, there is no cost to 
non-participating Members.  The Joint Proposal woul d not require a systematic and costly reviewing 
of all notified geographical indications.323  There would be no need to review the register, lodge 
reservations or enter into bilateral negotia tions on behalf of every interested party.324  It would be 
beneficial for the majority of WTO Members, which are developing and least-developed countries 
and especially those who were not wine or spirit pr oducers or do not have anything to gain from the 
system.325  
                                                      
311 United States, TN/IP/M/16, para. 181. 
312 Colombia, TN/IP/M/15, para. 37. 
313 New Zealand, TN/IP/M/15, para. 69. 
314 Hong Kong, China, TN/IP/M/15, para. 49. 
315 New Zealand, TN/IP/M/14, para. 70, TN/IP/M/15, para. 70. 
316 Chinese Taipei, TN/IP/M/16, para. 163;  United States, TN/IP/M/16, para. 181. 
317 Argentina, TN/IP/M/16, para. 157. 
318 Canada, TN/IP/M/15, para. 34;  New Zealand, TN/IP/M/15, para. 22.  
319 United States, TN/IP/M/16, para. 18. 
320 Australia, TN/IP/M/15, para. 21; Costa Rica, TN/IP/M/16, para. 169;  United States, TN/IP/M16, 
para. 18.   
321 New Zealand, TN/IP/M/15, para. 70. 
322 Argentina, TN/IP/M15, para. 27. 
323 Canada, TN/IP/M/15, para. 34. 
324 Australia, TN/IP/M/15, para. 85. 
325 Argentina, TN/IP/M/14, para. 172;  Australia, TN/IP/M/15, para. 85.  TN/IP/W/12/Add.1  
 Page 43 
 
 
126. In commenting on the Joint Proposal and the above explanations, the following points have 
been made: 
 - The Joint Proposal would also involve co sts, such as the obligation for courts and 
administrations at the national level to c onsult the database when making decisions 
regarding the protection of trademarks a nd geographical indications for wines and 
sprits.  What would be the cost for a nationa l administration or court to look into the 
database for every decision on GIs and trademarks?326  This would be particularly 
relevant to developing countries, which mi ght not have the equipment for consulting 
the database that would be available on the Internet.327   
 - Unlike the EC proposal, the Joint Propo sal did not address the question of cost 
recovery.328 
127. The following responses have been provided: 
 - Members had been mandated to negotiate a system that would facilitate the protection 
of geographical indications for wines and spirits.329  The aim of the Joint Proposal 
was only to facilitate protection in an effec tive manner while at the same time being 
neutral as to rights and obliga tions under the TRIPS Agreement.330  It was precisely to 
give effect to that mandate that the Joint Proposal had provided for a simple 
examination process in which national offi ces would have to consult a database of 
geographical indications.  The proposed system stood in contrast to the complex and multifaceted approach proposed by the EC.
331 
 - There would truly not be any additional costs in setting up a system because it would 
be sufficient to use existing systems, with  the current ordinary costs of applying 
relevant information in accordance with the domestic laws of participating Members.  
The Joint Proposal would carry some minimal costs in establishing the database at the 
international level.332   
128. As regards the EC proposal , the following explanations have been provided. The issue of 
costs and fees would depend on what was agreed on ot her issues, such as legal effects, participation or 
the number of notified geographical indications, ta king into account the flexibility that the EC 
delegation had offered in this re gard. Originally the proposal had not included provisions related to 
costs and fees.  They had been later included in or der to meet the concerns of other Members, under 
the principle that it should be the beneficiarie s of the system who would mainly pay for its 
functioning.  The EC was open to addressing furthe r concerns Members might have under this item.333 
Under the EC proposal there were two different sets of  costs:  the costs for administering the system 
and the costs for Members.  The first costs were basically those incurred by the administering body 
and would be minimal.  They would derive from the reception, processing and circulation to Members 
of the notifications, annotations of challenges a nd updating the system, and would essentially be the 
same as those deriving from the other proposals on the table.  The other set of costs were those that 
Members would incur and were related to the examin ation of the notifications.  Such examinations 
would take place under the existing administrative and legislative structures that Members had already 
put in place as a result of their implementation of th e TRIPS Agreement.  This meant that most of 
                                                      
326 European Communities, TN/IP/M/15, para. 71. 
327 European Communities, TN/IP/M/15, para. 38.  
328 European Communities, TN/IP/M/15, paras. 38 and 40. 
329 New Zealand, TN/IP/M/15, para. 65. 
330 United States, TN/IP/M/15, para. 88. 
331 New Zealand, TN/IP/M/15, para. 65. 
332 United States, TN/IP/M/15, para. 88. 
333 European Communities, TN/IP/M/16, para. 171. TN/IP/W/12/Add.1 
Page 44  
 
those administrative costs had already been borne by Members.
 334  It was based on the principle that 
the cost of the system should be borne by countries in proportion to the benefits that they derived from it.
335  The mechanism proposed was largely inspir ed by the existing system embodied in the 
Madrid Protocol, which had proved to be a manageable one.  It divided th e fees into:  (i) a basic fee to 
cover the administrative and functioning costs of th e system including its setting-up costs, and (ii) an 
individual fee to cover the costs incurred by Me mbers in monitoring past and future trademarks. 
Members would notify to the WTO the costs associated  with the functioning of this system. The WTO 
Secretariat, the International Bureau of WIPO, or whichever body the WTO membership would agree 
upon as the managing body would be in charge of calculating the fees, collecting them from the notifying Members and redistributing them to the re levant WTO Members, following the model of the 
Madrid Protocol.  This proposed system was aimed at  responding to concerns that had been voiced on 
the issue of costs, thus permitting all WTO Member s to be involved, either as participant or non-
participant Members, without burdening their admi nistrations.  Many administrations would see the 
system as an opportunity to optimize existing GI regi stration systems that had been little used to date 
and to recoup costs which they had already incurred in putting such systems into place.
336  The EC 
proposal would entail cost savings for right holders in enforcing their rights in different jurisdictions:  
a Member would be able to lodge one single application that would then become a bundle of applications sent to national offices in other WTO Members.
337 
129. In commenting on the EC proposal, the following general points have been made: 
 - All the elements for a system, including  costs, need to be analysed as a whole.338  It 
was important to analyse and better underst and the broad range of costs and burdens 
implied in the proposal.339 
  - There was a direct relationship between th e structure of the system and the fees and 
costs involved.  The more complex the system, the higher the costs would be.  The EC system was more complex than the one proposed by Hong Kong, China but they 
were both more costly than the Joint Proposal.
340   
  - The EC system would be complex
341, costly, burdensome and overreaching342 and 
would create uncertainties.343  The experience of other international IP instruments 
that had detailed proposals on fee systems indicated that these issues tended to make negotiations much more difficult and lengthy.
344 
130. As regards the mechanics of the  system of fees  proposed by the EC , the following points 
have been made: 
 - The EC proposal contained elements that gave rise to uncertainties.  For example, in 
paragraphs 9.2 and 9.3 there was no estim ate of how much the core budget of the 
administering body would be.  However, such a body would have to start its work on 
the basis of a credit which would only be paid  back later.  In order to dispel this 
                                                      
334 European Communities, TN/IP/M/16, para. 172. 
335 European Communities, TN/IP/M/16, para. 14. 
336 European Communities, TN/IP/M/15, paras. 20 and  38. 
337 European Communities, TN/IP/M/15, para. 39. 
338 United States, TN/IP/M/17, para. 48. 
339 Jordan, TN/IP/M/16, para. 166. 
340 United States, TN/IP/M/16, para. 181. 
341 Jordan, TN/IP/M/16, para. 166. 
342 United States, TN/IP/M/15, para. 56.  
343 Argentina, TN/IP/M/16, para. 157. 
 344 United States,  TN/IP/M/15, para. 56.  TN/IP/W/12/Add.1  
 Page 45 
 
 
uncertainty, an estimate of the initial budge t for such a system would be necessary 
before it started its work.345  
 - As regards the proposal contained in para graph 9.8 that the national component of the 
individual fee which a Member wishes to  receive may not be higher than the 
equivalent of the amount which the rele vant administration of the WTO Member 
would be entitled to receive from a national applicant in the framework of a domestic 
procedure where such an individual fee is payable, clarification has been sought as to 
how Members could decide which domestic  procedure to use as a reference in 
deciding the individual fee, given that not all WTO Members were signatories to the Lisbon Agreement or to the Madrid Protocol.  If another Member complained that the 
individual fee was too high, how would the system manage to resolve the matter?
346 
 - While in the first few years of the system there would be a high number of 
notifications in a short period of time and thus the administrative costs per registration, referred to under paragraph 9. 2 of the EC proposal, could be relatively 
low, countries currently without a developed geographical indication system and that 
might thus only be interested in registeri ng some geographical indications in five to 
ten years would then have to bear the ex tensive fixed administrative costs of the 
system at that time, making the unit cost for a single registration quite high.  This would create an imbalance between those Members who had a developed GI system 
and those who did not have such a system.
347 
 - With regard to the part of the individua l fee relating to the monitoring of trademarks, 
the system appeared to create obligations th at were not part of those foreseen in 
relation to notifications.  As regards the adva nce payment of the fee at the time of the 
notification, the question has been rai sed as to how the WTO Secretariat would 
calculate the individual fees without knowing the costs incurred by Members in the monitoring and searching of trademarks.
348  Doubts have been expressed about 
whether developing countries would be able to afford to have search reports made.349 
 - Doubts have been expressed about the rele vance of the Madrid Protocol and its fee 
structure.  The Madrid Protocol was voluntary, whereas the EC proposal would be mandatory for all WTO Members
350, and the dynamics of trademarks were 
completely different from those of GIs.351  Moreover, much of the Madrid budget 
came from other WIPO sources, raising the question of how long the system proposed 
by the EC would be sustainable.352 
131. The questions of the  range of costs and burdens that could be entailed by the EC 
proposal and the extent to which they  would be covered by the fees proposed  and could be 
handled using existing administrative arrangements  has been discussed.  On e view has been that 
there were grounds for concern on these counts and, in this connection, the following points have 
been made: 
                                                      
345 Argentina, TN/IP/M/15, para. 28;  Chinese Taipei, TN/IP/M/15, para. 36. 
346 Chinese Taipei, TN/IP/M/16, para. 161. 
347 Colombia, TN/IP/M/15, para. 37. 
348 Argentina,  TN/IP/M/15, para. 32; Chinese Taipei, TN/IP/M/15, para. 36. 
349 Argentina, TN/IP/M/14, para. 171, TN/IP/M/15, para. 60. 
350 Argentina, TN/IP/M/15, para. 60;  Japan, TN/IP/M/15, para. 64. 
351 Argentina, TN/IP/M/15, para. 60. 
352 Argentina, TN/IP/M/15, para. 60. TN/IP/W/12/Add.1 
Page 46  
 
 - The EC system would entail various costs and burdens:  examination costs
353;  costs 
for monitoring GIs354;  costs for lodging reservations355;  costs for the government to 
enter into bilateral negotiations356;  costs for monitoring trademarks357 and fees for 
trademark searches for purposes of notification of trademarks, which were normally carried out by lawyers or trademark practitioners
358 and costs for notifying such 
trademarks359;  costs for governments to set up systems to deal with a flood of 
applications, including those associated w ith the additional human resources required 
and their capacity building360 and equipment361;  and costs relating to enforcement362, 
including border controls.363  Members would also have the obligation to set up 
efficient processes for the purpose of collati ng the representations of their traders so 
as to lodge reservations within the short pe riod of 18-month period.  There would also 
be costs associated with liaising closel y with traders and businesses so as to 
competently negotiate bilaterally on their behalf.364  
 - Many of the costs mentioned above were hidden costs365 that would be borne by 
national administrations and would not be recoverable by the proposed fee 
mechanism, such as those stemming from th e establishment of new regimes for the 
protection of geographical indications, whic h would not be a simple task for many 
Members that were currently protecting geographical indications through unfair competition or trademark systems
366, or costs stemming from the reservations 
process367 or from compulsory negotiations.368  
 -  The user-pays principle should apply to the overall administration of the system, 
including the handling of oppositions.  Would the notifying Member be prepared to 
take on any costs arising at the national level for other Members?  In fact, the EC proposal required Members' governments to essentially sign a blank cheque for both participating and non-participating Members,  which would be required to monitor all 
registered geographical indications and decide  whether or not to lodge a reservation.  
They would have two alternatives:  to  accept a geographical indication without 
reservation, thus committing themselves to new obligations such as the constant 
monitoring of all geographical indications registered against nationally registered 
trademarks and, at the same time, losi ng certain existing rights and flexibilities 
                                                     
 
353 Argentina, TN/IP/M/16, para.179; Canada, TN/IP/M/15, paras. 33 and 62; Chinese Taipei, 
TN/IP/M/15, para. 36. 
354 Canada, TN/IP/M/15, para. 33;  Chinese Taipei, TN/IP/M/15, para. 36;  New Zealand, TN/IP/M/14, 
para. 121.   
355 Australia, TN/IP/M/16, para. 87;  Canada, TN/IP/M/14, paras. 123 and 137, TN/IP/M/15, para. 33;  
Chinese Taipei, TN/IP/M/15, para. 36, TN/IP/M/16, para. 162;  Costa Rica, TN/IP/M/16, para. 169;  
Philippines, TN/IP/M/16, para. 158;  Singapore, TN/IP/M/16, para. 168.   
356 Argentina, TN/IP/M/16, para. 179;  Australia , TN/IP/M/16, para. 87;  Canada, TN/IP/M/15, 
para. 33;  Chinese Taipei, TN/IP/M/15, para. 36, TN/IP/M/16, para. 16Costa Rica, TN/IP/M/16, para. 169;  New Zealand, TN/IP/M/14, para. 121;  Philippines, TN/IP/ M/16, para. 158;  Singapore, TN/IP/M/16, para. 168. 
357 Philippines, TN/IP/M/16, para. 158. 
358 Canada, TN/IP/M/15, para. 33;  Chinese Taipei, TN/IP/M/15, para. 36. 
359 New Zealand, TN/IP/M/14, para. 121. 
360 Canada, TN/IP/M/15, para. 33;  Philippines, TN/IP/M/16, para. 158. 
361 Canada, TN/IP/M/15, para. 33. 
362 Argentina, TN/IP/M/16, para. 179;  Canada,  TN/IP/M/15, para. 33. 
363 Philippines, TN/IP/M/16, 158. 
364 Singapore, TN/IP/M/16, para.168. 
365 Argentina, TN/IP/M/15, para. 27;  Chinese Taipei, TN/IP/M/16, para. 162;  Colombia, TN/IP/M/15, 
para. 37. 
366 Australia, TN/IP/M/15, para. 21. 
367 Australia, TN/IP/M/16, pa ra. 177;  Chinese Taipei, TN/IP/M/16, para. 162. 
368 Chinese Taipei, TN/IP/M/16, para. 162.  TN/IP/W/12/Add.1  
 Page 47 
 
 
embodied in Article 24 of the TRIPS Agreem ent;  or, to lodge a reservation, thus 
committing themselves to a series of bilateral negotiations.369 
-  Perhaps the highest cost associated with the EC proposal was that it would seriously 
tilt the balance of rights and obligations c ontained in the TRIPS Agreement in favour 
of GI right holders by placing new obligations on all Members and at the same time 
taking away some of their existing rights.  This would occur at a time when many 
Members were still struggling to implement the existing level of obligations in the 
TRIPS Agreement.370  Most of the flexibilities under Article 24 would entirely 
evaporate after 18 months, unless the Member had the resources and capacity to monitor and make reservations.
371 
 - The TRIPS Agreement did not oblige Member s to establish structures to examine GIs, 
and the majority of WTO Members did not have  such costly structures or the financial 
resources to create them.  If some member  States of the European Communities had 
such systems, it was not because of the TRIPS Agreement but because they had had 
them in place for many years.372  The point made that EC proposal would give other 
Members the possibility to optimize their ex isting GI registration systems was based 
upon the assumption that all those other Members had adopted registration systems similar to those of the EC, despite the fact  that Article 1.1 of the TRIPS Agreement 
specifically allowed Members to decide how  to best implement their obligations.
373  
The system proposed would require changes with significant implications for how a 
country administered its system.374  It would entail costs for adopting new regimes, 
which would not be a simple task for those Members currently using unfair 
competition or trademark laws.375 
 - As regards Members that currently had st ructures to deal with GIs for wines and 
spirits, the question was not whether these structures would have the capacity to take up the obligations, but whether they shoul d have to do so, and whether Members' 
existing rights to use the exceptions in Article 24 of the TRIPS Agreement should be 
limited in the way proposed by the EC.
376 
132. In response to the views expressed in the two preceding paragraphs, the following points have 
been made: 
 - The EC proposal contained procedural oblig ations that did not change the substantive 
level of protection set out in Articles 22 and 23 of the TRIPS Agreement.  The EC 
proposal could therefore be implemented appropriately by existing systems as already 
provided by the Agreement.377  The notification of a GI would produce a bundle of 
national applications.  The procedure at the national level would be the same as if the 
geographical indication had been notified direct ly in those Members.  The costs to the 
national administration of a Member would be identical to those that it was already 
incurring on the basis of its national system, which allowed for the domestic 
registration of geographical indications.  The examination of the notification could 
take place under the existing administrative and legislative structures that Members 
                                                      
369 Australia, TN/IP/M/15, para. 50;  Ne w Zealand, TN/IP/M/15, para. 23.   
370 New Zealand,  TN/IP/M/15, para. 26. 
371 New Zealand, TN/IP/M/15, para. 66. 
372 Argentina, TN/IP/M/16, para. 180. 
373 New Zealand, TN/IP/M/15, para. 25. 
374 Philippines, TN/IP/M/16, para. 183. 
375 Australia, TN/IP/M/15, para. 21. 
376 Australia, TN/IP/M/15, para. 52. 
377 European Communities, TN/IP/M/15, para. 40, TN/IP/M/16, para. 178. TN/IP/W/12/Add.1 
Page 48  
 
had already put in place as a result of their implementation of the TRIPS Agreement.  There should be no significant additional co sts of setting up structures or different 
systems.
 378   
 - With regard to costs associated with  bilateral negotiations , Article 24.1 of the 
TRIPS Agreement already contained the obliga tion to be ready to negotiate a bilateral 
or multilateral agreement aimed at increasing the protection of individual 
geographical indications.  This obligation rela ted to a "protection" to be facilitated by 
the system.  Since Members were already unde r this obligation, the fact that the EC 
proposal included a mechanism that would trigger these existing obligations would 
not necessarily add any extra costs to those already incurred by Members.379  
 - The reason behind the obligation to monito r trademarks was to bring to the fore 
information about possible conflicts with trademarks, in other words to have a 
mechanism that would help the functioning of the system as a whole.  While searches for prior trademarks and monitoring trademar k applications could entail a burden, this 
would be against the payment of a fee, the cost of which could be passed on to the 
right holders, something which already existe d in international registration systems.  
One possible way to meet such requirements would be to entrust private firms with 
the task.
380  
 - The system proposed would have some implications in terms of administrative 
workload regarding the examination of notifie d GIs, in particular with the number of 
notifications and the time-limit for examinati on and challenges.  It would require the 
use by a Member of some resources for the determination of whether the notified 
geographical indications were, for example, generic, in accordance with the interpretation in that Member and on the basis of the information provided through the multilateral register.  Ways to allay c oncerns about administrative burdens linked 
to the examination process could be explored, for example to limit the number of 
geographical indications to be notified annua lly into the system, to extend the period 
for examination
381, or to provide for longer transition periods for developing 
countries.382  The aim was to establish a well functioning register, not one bound to 
collapse due to a high number of notified geographical indications.383  In any event, 
there would probably not be as many geogr aphical indications as the number of 
trademarks that entered the Madrid system every year, which was in the magnitude of 
many thousands.384    
 - It should also be recalled that in a cost -recovery system it did not really matter how 
many notifications of GIs a Member received because it would be able to make applicants pay for them and with that paym ent finance the costs of its IP office and 
even enlarge its personnel.
385    
 - As to further costs that might emerge, the EC proposal only referred explicitly to the 
individual fee covering those obligations to  monitor past or future trademarks.  
                                                      
378 European Communities, TN/IP/M/15, para. 48, TN/IP/M/16, paras. 40 and 172. 
379 European Communities,  TN/IP/M/15, paras. 41 and 73. 
380 European Communities, TN/IP/M/14, para. 160, TN/IP/M/15, para. 44. 
381 European Communities, TN/IP/M/16, para 39,  TN/IP/M/17, para. 8. 
382 European Communities, TN/IP/M/15,  para. 42, TN/IP/M/17, para. 8. 
383 European Communities, TN/IP/M/16, para. 39,  TN/IP/M/17, para. 8. 
384 European Communities, TN/IP/M/16, para. 39. 
385 European Communities, TN/IP/M/15, para. 82.  TN/IP/W/12/Add.1  
 Page 49 
 
 
However, if there were fu rther costs that Members be lieve should be covered, 
flexibility could be exercised in that respect.386  
133. The consequences of the EC proposal for producers and exporters of other countries  that 
have been using a term notified by a Member unde r the proposed system have  been discussed.  One 
view has been that such producers and exporters w ould have to bear costs in re-branding and re-
labelling their products387, which would negatively affect product prices.388  It has been said that, 
while the reversal of the burden of proof in favour of GI right holders would mean that they would save in litigation costs, because they would be able to litigate in those countries solely based on the 
protection given in their own territories, producers of third countries would be the ones who would have to go to courts to defend their rights.
389   
134. The question of the extent to which the EC proposal would save costs for GI right holders  
has been discussed.  One vi ew has been that it was a misunderstanding to believe that the EC proposal 
would, as a "one-stop shop", be less costly than us ing existing domestic systems.  It was not clear 
what the cost-saving element would actually be as compared, for example, to applying for a certification mark in a Member under existing systems, given that fees could not be more than, but 
could at least be the same as, existing fees under cu rrent domestic procedures.  In fact, the costs 
incurred under the EC proposed fee system could be higher because of the obligation to pay an 
individual fee in addition to the basic fee.  At  least under current domestic  systems Members would 
only seek protection in markets where they actually sold their products.
390 As to individual fees, while 
the amount of each fee might not be high, the a ggregate amount of these fees could be high, making 
the system an expensive one.391   
135. In response, it has been said that, as regards co st savings for GI right holders, the greatest 
current difficulty was that, if they wanted to obtain protection in all WTO Members, they would have to hire lawyers to file applications in each Memb er.  This made it very difficult to achieve general 
protection and, more importantly, a genuine glob al trade strategy for their exports, because right 
holders did not know where they were going to be protected and where they were not.  Therefore, the 
very fact that a Member would be able to lodge one single application that would become a bundle of 
applications sent to national offices in other WTO Members would add value.
392  As regards the 
concern that the aggregate amount of individual fees would be high, the Madrid system of registration 
of marks was based on a similar mechanism and had proved quite successful.393 
136. The question of whether the EC proposal would shift the burdens from private parties onto 
governments  has been discussed.  One view  has been that the EC proposal would transfer directly to 
national governments all the country-by-country co sts that currently were the responsibility of 
individual producers.  Th is would mean that Members would have to assume all the costs of 
examining the notified GIs.394  Given that geographical indications were private395 and commercial 
rights396, right holders should bear the burden.397  Members should not be required to lodge 
reservations and enter into bilate ral negotiations on beha lf of private rights.  This would be 
                                                      
386 European Communities, TN/IP/M/16, para. 178. 
387 Jordan, TN/IP/M/16, para. 166;  Philippines, TN/IP/M/16, para. 158.   
388 Jordan, TN/IP/M/16, para. 166. 
389 Argentina, TN/IP/M/14, para. 170. 
390 Australia, TN/IP/M/15, para. 21.   
391 Japan, TN/IP/M/15, para. 35. 
392 European Communities, TN/IP/M/15, para. 39. 
393 European Communities, TN/IP/M/15, para. 47. 
394 Argentina, TN/IP/M/14, para. 169. 
395 Australia, TN/IP/M/14, para. 110;  Chinese Taipei, TN/IP/M/16, paras. 161 and 163;  United States, 
TN/IP/M/14, para. 118. 
396 Australia, TN/IP/M/14, para. 110, TN/IP/M/16, para. 87. 
397 Chinese Taipei, TN/IP/M/16, para. 161. TN/IP/W/12/Add.1 
Page 50  
 
burdensome for Members, develope d and developing countries alike.
398  If registered geographical 
indications were to produce legal effects in all Memb ers, the burden of enforcing GI rights would shift 
from their right holders to governments.  As a resu lt, there would be an increase in administrative 
costs and a change in the current balance of rights and obligations in the TRIPS Agreement.399 This 
would pose problem for the governments of many developing countries in terms of funding and 
budgetary priorities.400  In response, it has been said that it w as to meet the concern about costs being 
shifted to governments that the EC proposal had incl uded the possibility for Members to pass on these 
costs to GI right holders, by collecting fees from them.401 
137. The question of the costs and benefits of the EC proposal for developing country 
Members and non-participating Members has been discussed.  One view has been that there were 
considerable grounds for concern in th is connection, for the following reasons: 
 - The proposal would entail additional co sts and burdens for non-wine producing 
countries, and for those opting not to participate in the system.402  It would only 
provide for obligations and costs and burdens, with no corresponding rights and 
benefits to non-participants403, and that would impose undue burdens and costs on 
developing countries, many of which woul d not have any economic interest in 
participating in the system because they had few or no wine or spirit geographical 
indications to protect.404   
 - In countries working on a cost-recovery basi s, most of the costs of the system would 
necessarily be passed on to the applicants.  However, if a country did not participate 
in the system, it would then not be able to fix or collect a fee, even though it would 
still have costs involved.405  
 - The EC proposal to have a system of double fees would create serious administrative 
and financial costs for developing countries.  The individual fee would imply a continuous monitoring of GIs.  While a ssurances have been given on reimbursement, 
it was not clear how the system would work in practice.
406  
 - The EC proposal would require a high level of monitoring and administration, 
including to lodge reservations.  Non-par ticipating Members would have to lodge 
reservations and enter into compulsory negotia tions in order to retain their rights to 
use existing exceptions.  Who would pay for the costs associated with these 
obligations?  This was a significant burden that even developed countries would find 
difficult to bear and one that would be beyond the means of developing countries.407 
                                                      
398 Australia, TN/IP/M/14, para. 110. 
399 Chinese Taipei, TN/IP/M/15, para. 36. 
400 Philippines, TN/IP/M/16, para. 158. 
401 European Communities, TN/IP/M/15, para. 86, TN/IP/M/16, para. 175. 
402 Australia, TN/IP/M/15, para. 50;  Costa Rica, TN/IP/M/16, para. 169;  Philippines, TN/IP/M/16, 
para. 158;  Singapore, TN/IP/M/16, para. 167. 
403 United States, TN/IP/M/14, para. 43. 
404 Philippines, TN/IP/M/14, para. 48. 
405 Canada, TN/IP/M/15, para. 33;  Chinese Taipei, TN/IP/M/15, para. 36. 
406 Argentina, TN/IP/M/16, para. 157. 
407 Australia, TN/IP/M/15, para. 50;  Costa Rica, TN/IP/M/16, para. 169;  Philippines, TN/IP/M/16, 
para. 158;  Singapore, TN/IP/M/16, para. 167.  TN/IP/W/12/Add.1  
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 - The elaborate and complicated system proposed would impose fees that would 
become prohibitive for a developing country  even if it had some interest in 
participating in the system.408  
 - Other obligations such as those relating to  the monitoring of trademarks and the need 
for capacity building of examiners and personnel in IP offices for purposes of lodging 
reservations within the 18 month period would entail burdens and cost to non-
participating Members, in particular developing countries.409 
 - Many developing countries were already finding it difficult to implement many of 
their obligations under the different WTO Agre ements.  It would therefore be difficult 
for them to explain and justify to thei r constituencies and stakeholders why they 
should undertake to implement a mandatory system that would put additional costs 
and burdens on governments while they had no economic interest in it.410  
138. In response, it has been argued that: 
 - The proposed system would be particularly beneficial to producers without resources 
in seeking protection of their geographical indications who were more likely to be 
located in developing than in developed countries.  There were not many producers 
that could go on a country-by-country basis to seek for the protection of their geographical indications.  The reason for this was that most GI users were 
cooperatives or small producers with lim ited resources, and not multinational 
companies which could invest huge amounts of money in national litigation procedures.  The system should serve to ma terialize the protection that Members were 
currently bound to provide under the TRIPS Agreement and that all countries were 
supposed to put at the disposal of right holders.
411 
 - As regards the possibility for non-participating countries to claim fees, paragraph 9.8 
of the EC proposal clearly referred to "W TO Members", meaning both participating 
and non-participating Members.412  Non-participating Members would actually bear 
no costs because these would be fully recoverable.413 
REVIEW  - HKC, F  
139. See section on Participation for discussion of the Hong Kong, China proposal on this point. 
CONTACT POINT  - JP, 10;  EC, 10 
 
140. This issue has not been discussed. 
ADMINISTERING BODY/OTHER BODIES  - HKC, A.1, C.4;  EC, 11-12 
 
141. With regard to the administering body under the Joint Proposal , it has been said that, while 
there was no strong preference as to which body – the TRIPS Council or any other international organization, such as WIPO – should be the administ ering body, it would be premature to decide on 
this issue at this stage of the negotiations.
414  However, implementation could be carried out in a 
                                                      
408 Philippines, TN/IP/M/16, para. 158. 
409 Philippines, TN/IP/M/16, para. 158. 
410 Philippines, TN/IP/M/16, para. 184. 
411 European Communities, TN/IP/M/15, para. 43. 
412 European Communities, TN/IP/M/15, para. 46. 
413 European Communities, TN/IP/M/15, para. 86. 
414 Australia, TN/IP/M/15, para. 93;  Un ited States, TN/IP/M/15, para. 100. TN/IP/W/12/Add.1 
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manner similar to how it was currently done by th e WTO Secretariat in administering the Central 
Registry of Notifications.  Therefore, there was more inclination to have the WTO Secretariat do this work because of the low overh eads of the system proposed.
415 
142. With regard to the EC proposal , the following explanations have been provided.  The 
functioning of the system would entail two ki nds of tasks, namely norm-setting tasks and 
administrative tasks.  The multilateral register s hould be a WTO instrument and therefore the body 
setting the different administrative rules that would allow the system to function would probably be the TRIPS Council.  All the administrative rules that  would be required should be agreed by all WTO 
Members.  As for the day-to-day management of the system, such as receiving the applications and 
translating them, it could be the WTO Secretariat or any other body that had expertise in the area of 
intellectual property, in particular WIPO.
416  The administering body had been left undefined to avoid 
prejudging the decision on this matter.  Some dele gations had showed willingness to consider whether 
organizations other than the WTO Secretariat, such as WIPO, with experience in this area, could take 
care of the management of the system.417 
143. In response, it has been said that it would no t be appropriate to negotiate in the WTO an 
instrument which would then be administered by an other organization.  The WTO had no authority to 
impose administrative burdens on other organizations.418  It would be helpful if the "administering 
body" were identified.419   
144. The view has been expressed that  the administering body should be an intermediary between 
Members in the administration of the system.  Its t asks should therefore be to receive notifications and 
reservations by a Member, send them to all other Members or publish them online or in any other 
form that was decided.  Another important task of  the administering body should be, as suggested by 
Hong Kong, China, to carry out a formality examina tion of notifications to ensure that the formal 
requirements defined by Members would be fulfilled.  The formality examination to be carried out by 
the administering body would serve to alleviate the workload of Members.  The administering body should manage the system on a daily basis and regularly update the information contained in the 
register to take account of new notifications, modifications and withdrawals or removals of 
geographical indications, and communicate this inform ation to Members.  It was important to decide 
who would serve as the administering body.  It coul d be the WTO Secretariat or another international 
organization with the capacity and expertise to carry  out such work, such as the International Bureau 
of WIPO, which had the expertise of administeri ng the Madrid Protocol and the Lisbon Agreement.
420   
DATE OF ENTRY INTO OPERATION  - JP, 11;  EC, 15 
 
145. This issue has not been discussed. 
__________ 
                                                      
415 United States, TN/IP/M/15, para. 100. 
416 European Communities, TN/IP/M15, para. 90. 
417 European Communities, TN/IP/M/14, para. 73. 
418 Argentina, TN/IP/M/14, para. 62. 
419 Argentina, TN/IP/M/14, para. 88. 
420 Switzerland, TN/IP/M/15, para. 94.