WORLD TRADE
ORGANIZATIONIP/C/W/205
18 September 2000
(00-3673)
Council for Trade-Related Aspects
of Intellectual Property RightsOriginal:  English
COMMUNICATION FROM NEW ZEALAND
The following communication, dated 15 September 2000, has been received from the
Permanent Mission of New Zealand with the request that it be circulated to Members.
_______________
GEOGRAPHICAL INDICATIONS AND THE ARTICLE 24.2 REVIEW
Introduction
1. Pursuant to Article 24.2 of the TRIPS Agreement, the TRIPS Council is currently undertaking
a review of Section 3 of the TRIPS Agreement which relates to the protection of geographicalindications.
1  Unfortunately, the Council has only been  able to compile information on how some
Members have implemented their obligations under Section 3 of the TRIPS Agreement and has not
been able to engage in any substantive discussions on each of the provisions of Section 3.
2. With this in mind, New Zealand believes that it is timely to provide a number of observations
on the Article 24.2 review so as to assist the Coun cil and ensure that the review is conducted in a
structured manner so that all Members have an opportunity to consider the effectiveness of each of the
provisions in question.
Geographical Indications and the TRIPS Agreement - An Overview
3. The economic and political significance of geographical indications has been growing in
recent years as the use of distinctive or quality signs has promoted the demand for products of a
specific geographical origin.
4. The coverage of geographical indications in the TRIPS Agreement marked a major step
forward in the multilateral protection  of geographical denominations and the first time  that a truly
international forum  attempted to lay down rules and obligations for geographical indications.2
                                                     
1 Article 24.2 provides that the "Council for TRIPS shall keep under review the application of the
provisions of this Section;  the first such review shall take place within two years of the entry into force of theWTO Agreement.  Any matter affecting the compliance with the obligations under these provisions may be
drawn to the attention of the Council, which, at the request of a Member, shall consult with any Member or
Members in respect of such matter in respect of which it has not been possible to find a satisfactory solutionthrough bilateral or plurilateral consultations between the Members concerned.  The Council shall take suchaction as may be agreed to facilitate the operation and further the objectives of this Section".
2 Section 3 of the TRIPS Agreement refers.IP/C/W/205
Page 2
5. Article 22.1 establishes that "geographical indica tions are, for the purposes of [the TRIPS]
Agreement, indications which identify a good as originating in the territory of a Member, or a region
or locally in that territory, where a given quality, reputation or other characteristic of the good is
essentially attributable to its geographical origin".
6. This wording makes it clear that the provisi ons of the TRIPS Agreement cover geographical
indications for all goods, including industrial goods.  It also makes it clear that under the TRIPS
Agreement quality, reputation and other characteristics of a good can be a sufficient basis for
eligibility as a geographical indication, where they are essentially attributable to the geographical
origin of the good in question.
7. The determination and evaluation of the connection between a good and its geographical
origin will no doubt be one of the more difficult tasks in the application and implementation of the
TRIPS provisions on geographical indications and will be an issue for the domestic courts and/orauthorities of Members in which protection for geographical indications is claimed.
3  This protection,
like the protection of all other intellectual property rights, will be subject to the principle of
territoriality and the rules of the country of protection whereby each Member will decide which
indications meet the conditions for a geographi cal indication within the meaning of the TRIPS
Agreement.
8. Given the groundbreaking nature of the TRIPS provisions on geographical indications, it will
be useful for each Member to fully appreciate how other Members approach the protection of
geographical indications.  In this regard, the Article 24.2 review has an important role to play.
The Article 24.2 Review9. Article 24.2 establishes that the Council shall "review the application of the provisions" of
Section 3 of the TRIPS Agreement and "take such action as may be agreed to facilitate the operation
and further the objectives" of Section 3.  To assist it in such endeavours, the Council agreed at its
meetings of May and July 1998 to invite those Members already under an obligation to apply the
provisions of Section 3 to provide responses to a Checklist of Questions
4 that had been developed.  It
was fully understood at the time that such Members could make any additional points that they would
wish to make regarding the Checklist and that any other Members could also furnish replies on a
voluntary basis.5
10. Given the breadth of material that was provided by Members in response to the Checklist6, the
Council requested the Secretariat at its meeting in July 1999 to prepare a paper summarizing, on the
basis of an agreed outline7, the responses to the Checklist in order to facilitate an understanding of the
more detailed information that had been provided in the responses.8
11. Unfortunately, nothing further has been substantively done in the review since that time with
the Secretariat paper still outstanding.  Notwithstanding the Secretariat paper, Members need to turn
their attention to the substantive details of the review.
                                                     
3 It is, of course, fully recognized that any Member s' conformity with its obligations under Section 3
can also be ascertained by recourse to the WTO dispute settlement process.
4 As contained in IP/C/13 and addendum.
5 IP/C/15 at paragraph 24 refers.
6 IP/C/W/117 and addenda refer.
7 Job No 2104 of 13 April refers.
8 IP/C/19 at paragraph 21 refers.IP/C/W/205
Page 3
12. In New Zealand's view, such substantive discussions should be conducted in a structured
manner , working through each  of the provisions of Section 3 and reviewing their operation and
enforcement so that all Members can get a better sense of the various regimes that Members have
developed for the protection of geographical indications.  Until the Council has reviewed Section 3 in
a systematic  and substantive  way, it would be somewhat premature for the Council to seriously
consider any changes to Section 3 of the TRIPS Agreement.
13. In order to help focus our discussions on some of the key provisions of Section 3,
New Zealand sets out below some general observations.
Article 22 - Protection for Geographical Indications
14. Article 22 establishes the general rule  for the protection of geographical indications.  It
covers all products (including non-agricultural products) and, having defined geographical
indications9, it obliges Members to provide the legal means for interested parties to prevent:
(a) the use of any means (not limited to name) in the designation or presentation of a
good that misleads the public  into believing that the good in question originated in a
geographical area other than the true place of origin10;  or
(b) any use which constitutes an act of unfair competition  within the meaning of
Article 10 bis of the Paris Convention.11
Thus, the TRIPS Agreement protects geographical indications by means of a general prohibition  on
deception  concerning geographical origin, as well as any unfair use or competition .
15. A preliminary review of the various responses to the Checklist highlights the fact that
Members have undertaken a number of different ways in which to implement this provision in line
with the fundamental principle  contained in Article 1 of the TRIPS Agreement that "Members shall
be free to determine the appropriate method of impl ementing the provisions of this Agreement within
their own legal system and practice".
16. The Article 24.2 review will therefore need to traverse the various ways in which Members
have implemented the general rule contained in Article 22 so as to help the Council fully appreciate
and understand the scope and application of this provision.
Article 23 - Additional Protection for Geographical Indications for Wines and Spirits
17. In what effectively constitutes a departure from the general rule laid down in Article 22,
Article 23 lays down special protection  for the geographical indications of wines and spirits.  Such
special protection was essentially the result of the demands of a number of wine-producing countries
during the Uruguay Round, notably in the European Union, that wanted a higher level of protection
for wines and spirits than the standard applied to geographical indications in general.
18. Article 23.1 obliges Members to impose a prohibition on the use of geographical indications
identifying wines and spirits that do not originate in the place indicated by the geographical indication
in question.  There is no requirement that the public be misled or that the use constitutes an act of
unfair competition.
                                                     
9 See paragraph 5 above.
10 Article 22.2(a) of the TRIPS Agreement refers.
11 Article 22.2(b) of the TRIPS Agreement refers.  Article 10 bis of the Paris Convention is focused
upon providing effective protection against "unfair competition" which is defined in Article 10 bis(2) as "any act
of competition contrary to honest practices in industrial or commercial matters".IP/C/W/205
Page 4
19. The provisions of Article 23 were themselves a compromise made in the context of the broad
based Uruguay Round negotiations and ultimately reflected the careful balance that was struck in
Section 3, as well as all other aspects of the TRIPS Agreement.
20. As is the case for Article 22, the review will need to traverse the various ways in which
Members have implemented the special rule contained in Article 23 so as to help the Council fullyappreciate and understand the scope and application of this provision.
21. New Zealand recognizes that some Members have called for an extension to the scope of
goods covered by Article 23, but would note that until the Council has fully reviewed each of the
provisions of Section 3 any calls for an extension a ppear to be somewhat premature.  In this regard,
New Zealand would also note that it cannot be assumed that, as the implications of this pioneering
international agreement make themselves felt, th e underlying purposes of the TRIPS Agreement will
be seen to be best served by creating an ever expanding catalogue of additional protection beyond therelatively balanced provisions of Article 22.  As a result, any review under Article 24.2 would need to
contemplate the potential disadvantages of creating property rights to the cost of many WTO
Members - and, indeed, the actual disadvantages of the current Article 23 provisions.
Article 24.1 - Increasing the Protection of Article 23 Geographical Indications22. Article 24.1 confirms that Members have agreed to enter into negotiations aimed at increasing
the protection of individual geographical indications for wines and spirits conferred under Article 23.
Given its narrow focus on those geographical indications already covered by Article 23, it could not
therefore extend to the possibility of extending the scope of products already covered by Article 23.
23. According to one commentator, this provision is focused upon those cases where additional
protection could be explored for the use of such  terms as "Chablis", "Burgundy" and "Champagne"
that fall within the exception of Article 24.4 - which concerns the right to continued use of
geographical indications for wines and spirits.
12
Conclusion
24. Given the groundbreaking nature of the TRIPS provisions on geographical indications, each
Member has to fully appreciate how other Members approach the protection of geographical
indications.  In this regard, the Article 24.2 review has an important role to play.
25. In New Zealand's view, the review has to be conducted in a structured manner, working
through each of the provisions of Section 3 and reviewing their operation and enforcement so that all
Members can get a better sense of the various regimes that Members have developed for the
protection of geographical indications.  Until the Council has reviewed Section 3 in a systematic andsubstantive way, it would be somewhat premature for the Council to seriously consider any changes
to Section 3 of the TRIPS Agreement.
__________
                                                     
12 Roland Knaak, "The Protection of Geographical Indications According to the TRIPS Agreement", as
contained in From GATT to TRIPS - The Agreement on Trade-Related Aspects of Intellectual Property Rights
(Edited by Friedrich-Karl Beier and Gerhard Schricker), Munich, 1996 at pages 135-139.