A World Trade Organization group tasked with creating a register for highly protected names of wines and spirits associated with geographical locations buckled down Thursday to a technical discussion on what it would look like. The focus on these issues sidestepped some broader political questions that have delayed these talks, but fundamental disagreements also remain over the register’s parameters.

The European Union, the lead demandeur – with support from Switzerland – of a strong registry with legal effects and full-member participation, said it has made significant concessions over the past several years of negotiations. But governments of the so-called joint proposal group – including Argentina, Australia, Canada, Chile, Japan, New Zealand, South Africa, and the United States – which favours a less-binding form of the register, remain concerned over how far the legal effects reach as well as the cost of the system.

The discussions came in the context of a 6 March meeting of the WTO Trade-Related Aspects of Intellectual Property Rights (TRIPS) Special Session, tasked with creating a multilateral register for geographical indications (GIs, or product names associated with a particular place and characteristics).

The European Union circulated printed answers to questions on its proposal at the special session. The EU answers are available here.

The EU document expresses the hope that its contents be used “as clarifications and induce all members to engage in a constructive spirit in a – regrettably – protracted negotiation process which has been going on for more than 14 years.” It answers questions on the consequences and legal effects of registration, including what constitutes evidence of generic-ness; which member states it should apply to; how notification and registration of new GIs should be handled; and “other issues” including special and differential treatment for developing and least developed countries and costs of the register.

The EU said its latest proposal represents serious effort to address the concerns of other member states. But those concerns did not seem to be assuaged yet, as several sources told Intellectual Property Watch they still worried the proposal could end up being a “shortcut for IP rights” – that is, an easy way for countries to gain protection for a GI in other countries, that it “inverted the burden of proof” on whether an item deserves protection, and that it could end up being an expensive endeavour.

Background

The latest proposal on the GI register is contained in a document called W/52 [pdf], which links the register issue to two other intellectual property issues: the possible extension of high-level protection enjoyed by GIs on wines and spirits to GIs on other goods, and an amendment to the TRIPS agreement that would require disclosure of origin on genetic materials used in patent applications.

This document is the result of a strategic pairing of the EU and Switzerland, who were keen to see GI extension, and several developing countries – including India, Brazil, and much of the African Group, among others – who were keen to see disclosure of origin in TRIPS. It is supported by a majority of WTO member states, some 110 countries.

Previous special sessions had included long talks over this linkage, but this was less a focus at this meeting, though several member states did speak up to say that they still considered the register issue to be a part of a group of three. The other issues were the subject of discussion at the 3 March TRIPS Council meeting as well (IPW, WTO/TRIPS, 5 March 2009).

A proposal by Taiwan that a proposal for the GI register alone be submitted could thus not be satisfied, a member of the W/52 group told Intellectual Property Watch, because the concessions made already in the register proposal are contingent on concessions made elsewhere in the W/52 paper.

This week’s special session continued a process begun at the last special session in December, where the EU tried to satisfy members’ questions [pdf] with answers to over 60 questions on their latest proposal (IPW, WTO, 5 December 2008).

They were asked in December to provide a written version of the answers they gave, which they submitted to the WTO last week and presented at the special session on Thursday.

IP Rights Shortcut? Unresolved Questions

A passage in W/52 that has caused some concern in the joint proposal group reads:

“… in the absence of proof to the contrary in the course of these, the register shall be considered as a prima facie evidence that, in that member, the registered geographical indication meets the definition of “geographical indication” laid down in TRIPS Article 22.1. In the framework of these procedures, domestic authorities shall consider assertions on the genericness exception laid down in TRIPS Article 24.6 only if these are substantiated.”

This, said a supporter of the joint proposal, “inverts the burden of proof,” placing it on the generics producer, rather than the rights holder. Normal process, the source added, places the burden of proof on the one who would wish to assert exclusive rights.

This, said a separate source means that the legal decision of one country – to place a GI in the register – can have legal effects on other countries. This so-called “extraterritoriality” is problematic, added the source.

It could, explained the first source, therefore be an essential a shortcut for gaining IP rights in a country where they do not yet exist.

The first source also contested the EU’s assertion that it had reduced legal effects of its register for this proposal. A previous incarnation of the GI register proposal had contained the term “rebuttable presumption,” which many countries had objected to. This proposal contains the term prima facie, which means accepted as correct unless proved otherwise. So “rebuttable presumption” is not there anymore, said the source, but “the meaning is the same so nothing has changed.”

EU: “Google Proposal”?

But the EU addressed questions being raised against its proposal. There is “no such thing as a reversal of the burden of proof,” contended Luc Devigne, who led the EU delegation. Notifications to the GI register are done by states, he said, and the “mere fact of notification does not equal protection.” Instead, a company who owns the GI would have to go to the country in which it wants protection and request it.

But “if someone contests, you enjoy the prima facie evidence,” Devigne said, which he said is the way it should work. Generics in the case of GIs are an “exception to principle,” he said; therefore one who claims such an exception should have to prove it.

As far as legal effects go, Devigne said that after 15 years of negotiation at the WTO, the result should be something more than a database.

A register without legal effects is, he said, “a Google proposal” – that is, all information on where a GI is protected is easily findable online and “we don’t need an international agreement for that.”

Expense also was addressed. The EU claims the “the cost of the register is minimal,” as “in the context of the number of notifications the WTO receives daily” for the secretariat to handle also GI notifications is a negligible added cost, said Devigne. The cost for national administrations is also none, he said, because the register would be online and therefore free to access.

But other nations remain concerned that it will have administrative cost, and that the need to prove generic-ness of terms might also be a burden.