EU Addresses Concerns Over GI Register As Rival Plan Gains Support

By William New and Tove Iren S. Gerhardsen

The European Union on Friday continued its fight at the World Trade Organization for a binding register of traded products that are protected because their names and character derive from places, often in Europe. But it may be headed for an eventual compromise as support appears to be rising for a distinctly different approach.

The debate played out at the 16-17 March WTO Council on Trade-Related Aspects of Intellectual Property Rights (TRIPS) special session on a register for geographical indications (GIs).

There were no breakthroughs, but the meeting chair Manzoor Ahmad of Pakistan suggested consultations be held among members and with him until the next TRIPS Council meeting in June.

The European Union, supported by Switzerland and several potential EU members, continues to try to address legal and cost concerns raised by a group of countries comprised mainly of former European colonies.

The debate continues to have colonial overtones, with participants privately throwing churlish epithets denouncing attempts to regain – or resist the regaining – of lost lands and the transferred place names and products types that went with them.

It is mandated that a multilateral register must be established. Europe’s proposal would make it legally binding and mandatory for all WTO members. Some members are concerned about the impact of such a plan.

The chief opponents, who have put forward what they call the “joint proposal,” would prefer to make the register voluntary and non-binding, a database to be consulted before deciding to protect a product. This group includes Argentina, Australia, Canada, Chile, New Zealand and the United States.

Officials from the joint proposal group said Friday they have gained as many as 10 more countries in signed support, including several from Central America. In addition, they cited oral concerns about the EU proposal raised by the Philippines, Jordan, Malaysia and Singapore as adding to their side. The European Union sees this joint proposal as insubstantial, sources said.

A third proposal by Hong Kong is seen by some as a compromise, as it would be voluntary but with a review of that status, and would have legally binding aspects. According to sources, members of the joint proposal group are suspicious of this proposal as they see it as an interim step toward the EU proposal. Europe has shown some interest in the Hong Kong proposal but has not embraced it yet.

Burdens and Costs

According to sources, significant discussion in the meeting centred on gauging the potential impact of registering products, especially if it were made mandatory. One concern about the EU proposal is that it would potentially shift the burden of proof to other countries using the same GIs if one country notifies a product to be registered. Several officials said notified countries could be “dragged into disputes” – as one put it – and put on the defense, forced to lodge reservations for each product they use. They said the fear is that the EU proposal implies “extra-territoriality,” the imposition of protection on other countries when one country protects a term and registers it in the system. The European Union argues this is not the case, one source said.

In addition, there is concern that registering a product that has an exception in another country could lead to a “clawback” of the product that was under exception, removing it from the exceptions, one Geneva source said. Under TRIPS Article 24, exceptions may be made for generic products and grandfathered trademarks, sources said.

Costs and administrative burdens of disputes as well as of registration systems also continued to be of concern, particularly to developing countries.

GIs in the Negotiating Context

Discussions were based on a note from the chair, listing participation, notification, registration, legal effects/consequences of registration, and fees and costs as the main items. The impact of the proposals on developing countries and administrative burden were also among the agenda items, according to the note.

Wines and spirits GIs enjoy higher level protection under TRIPS Article 23, meaning that products with distinct qualities deriving from a specific geographic place or source such as Champagne normally cannot be copied by producers elsewhere.

There is a mandate to discuss the setting up of a multilateral register for wines and spirits in the Doha Declaration from the 2001 WTO ministerial in Doha, Qatar. It is thus part of the current Doha round of negotiations at the WTO, which are set to end in 2006 and which have a “single undertaking” model, meaning that nothing is decided until everything is decided.

The register is being discussed in TRIPS Council special sessions but is part of the single undertaking. The European Union also has tied it to consultations on a proposed extension of GI protection beyond wines and spirits, which took place on 16 March under Doha round “implementation” issues (IPW, TRIPS/WTO, 16 March 2006).

The EU has also tied the talks to a proposal for a “clawback” for dozens of GIs, meaning that they should be protected retrospectively regardless of their use elsewhere, one developing country source said. The discussions on the GI register “will depend on the move in agriculture” in the Doha talks, the source said.

He added that he does not believe an agreement on the register will be reached in the special sessions as the parties are “not at a point” of agreement, but would rather be a political trade-off in the larger round.

Officials said that the European Union has indicated a willingness to show some flexibility on registration, letting countries have 18 months to complain about a registration. A Swiss delegate also said that the EU had suggested that the number of GI registrations could be limited per year.

Turkey supports the register as well as extension but said the costs should be controlled, a participant said. Bulgaria, which has been active before in support of the register, was absent, sources said.

Costa Rica indicated during the special session on 16 March that it supported the joint proposal, but it said it does not support extending GI protection beyond wines and spirits. The EU does not think a register makes sense if GI protection is not extended, an official from an EU country said.

Separately, consultations on GI extension and biodiversity issues with WTO Deputy Director General Rufus Yerxa are set to continue on 23 March.