Questions Arise On Value Of GIs For Poor Countries; Register Stuck At WTO

While World Trade Organization members met with their usual stasis last week on a mandated register for geographical indications, industry proponents of GIs continued lobbying to raise the awareness of delegates of countries not historically concerned with this form of intellectual property protection.

The Council on Trade-Related Aspects of Intellectual Property Rights (TRIPS) Special Session was held on 10 June. The TRIPS Council devotes a “special session” each time it convenes to further negotiations on the creation of a multilateral system for notifying and registering geographical indications for wines and spirits. The work, which started in 1997 under TRIPS Article 23.4, was brought in 2001 into the Doha Development Agenda (paragraph 18), according to the WTO website.

In order to raise awareness and protection of rights over GIs, the Geneva-based Organization for an International Geographical Indications Network (OriGIn) is organising a series of meetings in collaboration with the International Organisation of La Francophonie and the French Permanent Mission to the WTO. France has been a strong proponent of GIs, with over 600 GIs registered in the country, 500 for wine and spirits, and 100 other products.

On 4 May the first of those meetings was held at the French mission in Geneva with the participation of numerous delegates from French-speaking African countries in an effort to promote GIs in those countries.

Delegates had several questions, mainly about the costs involved in setting up a GI, and who was going to support them, whether there was a project to get some assistance from the European Union to elaborate specifications.

A delegate asked how to evaluate the cost of protection of a GI against its profitability. On costs, OriGIn Secretary General Massimo Vittori said that there are costs involved in setting up a GI, notably to define specifications, and that would represent a cost for developing or least developed countries, which would need financial assistance, for example, to create producers associations.

Delegates also asked about technical assistance and cooperation projects. It was answered that no project is currently underway at the European Union-wide level.

Another question was on the costs involved to protect GIs once registered and how to manage the protection. AGRIDEA, a Swiss association working in local rural development, answered that it is most important to protect GIs nationally as international protection is very expensive.

Vittori said international protection seems weak, and at the national level it depends on the existing legislation.

Four other meetings will be organised in the context of this cooperation project: in July, September, October and November. These meetings will focus on the following countries: Côte d’Ivoire, Morocco, China, and the bilateral agreement between the EU and Korea.

On 11 June, the UN Food and Agriculture Organization, OriGIn and AGRIDEA organised an expert meeting on technical cooperation programs related to origin-linked products and geographical indications.

TRIPS Council Unable to Fulfil Mandate

During the 10 June TRIPS Council Special Session, two “sub-questions” (see below) from Chair Darlington Mwape of Zambia were presented to member countries on legal effects and the consequences of registration of GIs but delegates told Intellectual Property Watch that the discussions did not advance the debate on the issue of the register.

Key questions in the debate between WTO members are mainly the legal effect of a register and the effect it could have on countries choosing not to participate in the system, and the costs that would have to be borne by countries participating in the system, according to the WTO.

Under TRIPS Art. 22, geographical indications, which are place names used to identify products that come from particular places and possess specific characteristics, have to be protected. Under TRIPS Art.23, wines and spirits are given a higher level of protection.

Three proposals have been put forward: one by the EU in 2005 calling for the TRIPS agreement to be amended; a joint proposal document submitted also in 2005 and revised in 2008 by Argentina, Australia, Canada, Chile, Costa Rica, Dominican Republic, Ecuador, El Salvador, Guatemala, Honduras, Japan, Korea, Mexico, New Zealand, Nicaragua, Paraguay, South Africa, Taiwan, the United States, proposing to set up a voluntary system where notified GIs would be registered in a database; and a Hong Kong “compromise” proposal less ambitious than the EU proposal, according to the WTO.

SPECIAL SESSION OF THE COUNCIL FOR TRIPS
Legal Effects/Consequences of Registration
Sub-questions from the Chair
1. When making decisions regarding the protection of geographical indications and trademarks, what sources of information are the relevant national agencies currently legally obliged to take into account and what sanction is available if they fail to do so? Are additional sources of information that become newly available automatically covered by such a legal obligation?
2. In national proceedings regarding the protection of geographical indications and trademarks, what level of substantiation is currently required to raise the issue of genericness of a term and who bears the burden of proving genericness or non-genericness
    a. during an application process for protection of a term?
    b. if a protected term is challenged?