. /.  RESTRICTED  WORLD TRADE  
ORGANIZATION  TN/IP/M/23/Corr.1* 
30 April 2010 
 
 (10-2346) 
Council for Trade-Related Aspects of 
Intellectual Property Rights Special Session  
 
  
MINUTES OF MEETING 
 
Held in the Centre William Rappard
 
on 23 and 28 October 2009  
 
Corrigendum  
  
1. The last sentence of paragraph 110 of the minutes contained in document TN/IP/M/23 ("She 
would describe the first three.") is deleted. 
2. At the end of paragraph 111, the following text is added:   "According to the same facts as 
cited in the first case, the plaintiff from Memb er X sought damages for infringement of the GI 
"Ubique" in a court of law in Member Y, which was the fourth hypothetical case.  The respondent in 
the case did not dispute the ownership of the GI, but  chose to bring evidence to rebut the presumption 
that the GI fell within the definition in Article 22. 1 of the TRIPS Agreement as a GI.  The plaintiff 
alleged that none of  the reputation or quality or characteristics of "Ubique" did in fact essentially 
arise from its place of manufacture.  The respondent  adduced evidence to show that for 100 years the 
wine had been manufactured not only in the "Ubiqu e" region but also in other regions of Member X 
and that the reputation or quality or characteristics of "Ubique" did not essentially derive from its 
place of manufacture.  The court decided that th is evidence was sufficient to rebut the presumption 
that 'Ubique' was a GI as defined by TRIPS and the plaintiff's case failed accordingly." 
3. Paragraphs 110 and 111 should read as follows:  
"110. The representative of Hong Kong, China
 recalled that her delegation had 
submitted four hypothetical cases.   
111. The first case would be a non-contenti ous notification and registration of a GI 
from a participating WTO Member, at both th e domestic and international levels.   
WTO Member X had a community which produ ced a wine carrying the name of the 
area, "Ubique", in which it was produced and had achieved repute through its link to 
its area of origin.  Through a domestic sy stem determined entirely by Member X, the 
local production organization controlling th e use of the "Ubique" name (Production 
Organization) had been recognized by Memb er X.  Member X, or the Production 
Organization with the consent of Member X, would request registration of the geographical name "Ubique" in the WTO GI Register for Wines and Spirits (WTO GI 
Register).  In putting forward the request , Member X or the Production Organization 
asserted, amongst other things, (1) that the name "Ubique" was a name capable of 
serving as a GI in accordance with the de finition in Article 22.1 of the TRIPS 
Agreement;  (2) that the Production Organizati on was the sole owner of that GI;  and 
                                                     
 
* In English only. TN/IP/M/23/Corr.1 
Page 2  
 
  (3) that the name "Ubique " was protected by the domestic law of Member X and had 
not fallen into misuse in the territory of Member X.  Member X or the Production Organization, as the case might be, transm itted the request for registration of the 
name "Ubique" by electronic means to the administering body of the WTO GI Register.  Upon receipt of the notification and the requisite registration fee, the 
Register undertook a formality examination only.  No enquiry was made into the 
substance of the claims in terms of ownership or ability to operate as a GI.  A certificate of registration was issued to Member X or the Production Organization and the name "Ubique" was placed on the WTO GI Register, which could be searched through the Internet at any time by any inte rested party. Provided that the required 
renewal fees were paid at the specified ti mes, the name "Ubique" could remain on the 
Register indefinitely.  If there was any change of particulars of the GI, e.g. a change of ownership of the GI, either Member X or the Production Organization was under a duty to notify the administering body of such amendments.  The administering body of the WTO GI Register would then have to update or amend the WTO GI Register 
upon the payment of a specified fee by Member X or the Production Organization.  
Some time later a case of alleged infringe ment of the GI "Ubique" arose in WTO 
Member Y, which had volunteered to join the WTO GI registration system, but did not file any notification of contrary evid ence that (1) Member X or the Production 
Organization was not the owner of the GI right in "Ubique";  or (2) the relevant GI did not satisfy the definition of GI in Artic le 22.1 of the TRIPS Agreement;  or (3) the 
relevant GI was not protected in Member X.  As with any Member that volunteered to 
join, Member Y had enacted legislation to  protect GIs, under which it was specified 
that a court of law in Member Y, in determ ining the nature and/or ownership of a GI, 
would have to accept registration of a GI in the WTO GI Register as evidence and 
treat the following elements as proven: (i) ownership of a GI right;  (ii) the relevant 
GI satisfied the definition of GI in Article 22.1 of the TRIPS Agreement;  (iii) the 
relevant GI was protected in the country of origin, unless suffici ent evidence to the 
contrary was adduced by the relevant respondent WTO Member or the Production 
Organization.  In bringing its legal action for infringement in the court of law in Member Y, the owner of the GI "Ubique" from Member X was therefore able to enjoy the benefit of a presumption that the three elements would be treated as proven.  
If the other party adduced evidence to the contrary, then the court of law would weigh 
the totality of evidence adduced  by both parties, and decide whether the elements in 
question were provided to the standard requi red in the proceedings.  According to the 
same facts as cited in the first case, th e plaintiff from Member X sought damages for 
infringement of the GI "Ubique" in a court of  law in Member Y, which was the fourth 
hypothetical case.  The respondent in the case did not dispute the ownership of the 
GI, but chose to bring evidence to rebut th e presumption that the GI fell within the 
definition in Article 22.1 of the TRIPS Agreement as a GI.  The plaintiff alleged that none of the reputation or quality or character istics of "Ubique" did in fact essentially 
arise from its place of manufacture.  The r espondent adduced evidence to show that 
for 100 years the wine had been manufactured not only in the "Ubique" region but 
also in other regions of Member X and that  the reputation or quality or characteristics 
of "Ubique" did not essentially derive from its place of manufacture.  The court decided that this evidence was sufficient to rebut the presumption that "Ubique" was 
a GI as defined by TRIPS and the plaintiff's case failed accordingly." 
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