WTO GI Discussions Gather Speed, Parties Watchful Until Negotiations

The international protection of wines and spirits named after geographical locations has seen renewed attention at the World Trade Organization since the beginning of the year as part of a push to conclude the Doha Round of trade liberalisation. Legal effects and costs of a register for such wines and spirits were addressed last week.

On 11 February, the draft text so far [pdf] was presented to an open-ended group of WTO member states. The focal points were the legal effects and consequences of a register, and the fees and costs of such a register. According to a source, the draft text is being constructed by a small drafting group representing the different sides of the discussion. The group met on 8 February, according to sources.

Darlington Mwape of Zambia, chair of the working group on multilateral system of notification and registration of geographical indications (GIs) for wines and spirits, recently identified six focal points to be discussed in order to produce a first draft text by the end of March. The first two points on notification and registration were discussed on 14 January (IPW, Burble/IP Live, 11 January 2011), and 27 January (IPW, WTO, 28 January 2011).

Two points remain to be compiled into the draft document: special treatment for developing countries, and participation. The next round of drafting group sessions is tentatively scheduled for 24 and 25 February, and a formal meeting of the TRIPS Special Session is scheduled for 3 March, and there will be informal consultations on 4 March, according to a source.

At issue is a mandate to negotiate a register for GIs as designated in the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). Geographical indications are product names associated with a particular place and characteristic, and protected under TRIPS, such as Darjeeling (India).

There are three proposals on the table since 2008: the so-called Joint Proposal, supported by 19 countries, would be strictly voluntary and proposes the setting up of a database rather than a register, only for wines and spirits.

A second proposal, which is an amended version of an earlier proposal submitted by the European Union, is backed by 109 countries, together referred to as the W/52 proposal group for the proposal number. It envisions a register that every WTO member would have to take into consideration and calls for an amendment to TRIPS to include mandatory requirements for the disclosure of origin of genetic resources and traditional knowledge in patent applications, as well as an extension of the higher level of protection to geographical indications for all products.

A third proposal was submitted by Hong Kong, presented at the time as a compromise. In this proposal, the system would be entirely voluntary and the scope of participation would be revisited after four years of operation of the system.

The new draft text is a compilation of all the proposals, in mostly bracketed text, reflecting a lack of agreement. In the draft document released by the chair on 11 February, compiling the notification and registration sections, as well as the legal effects/consequences and costs of registration, specific references on wine or spirit were bracketed everywhere.

Historic proponents of the GI register, such as the European Union and Switzerland, followed by a number of other countries, have advocated the extension of the higher-level protection given to wines and spirits in Article 23 of the TRIPS agreement to other products. Other products benefit from Article 22, with lesser protection. This extension has been fought by some countries with little interest in protecting GIs, or relying on other systems of protection, such as trademarks.

Overcoming Resistance to a GI Register

Under legal effect, the EU proposed when one country registers a term, this would be considered “prima facie” evidence – in the absence of proof to the contrary – that the term meets the definition of a GI in other countries, according to some sources. This position on “prima facie” evidence is meeting resistance, even among some W/52 members, according to sources. W/52 describes a coalition of over 100 countries which issued a proposal based on an EU proposal.

In 2008, those countries released draft modalities that included a “modified and stripped-down version of the EU’s original proposal for the multilateral register.” The W/52 proposal includes the disclosure of origin and another one about GI extension, and the modalities aim at the “adoption of a procedural decision that would open up the way for negotiations on the three issues.”

In the proposal, all members would have to treat a product registration as preliminary evidence “that the term meets the definition of a geographical indication.” Furthermore, domestic authorities would have to handle challenges and exceptions, such as cases where it is considered by a country that a term is generic.

The main problem pointed out by disagreeing members is the high cost of the legal effects of a GI register. The burden of proof would rest on the countries rather than on the owner of the GI and would entail high legal costs, sources told Intellectual Property Watch. It would be very difficult to prove that a term is generic in a country for example, a source said.

Some W/52 members are reluctant to follow the EU in the legal effects perspective as they feel it would come with high costs and would create obligations in other countries’ legal systems, a source said. There are also questions on the financing of the register in the WTO.

The GI register extension has been linked to mandated analysis of TRIPS and the UN Convention on Biological Diversity, which includes a proposal to require the disclosure of origin of genetic resources or traditional knowledge in patent applications. Some members have said that the extension of the high-level of protection to other products or the disclosure requirement were not part of the Doha Round negotiating mandate.

The composite draft text should emerge before the end of March, after all six points of discussion covered are incremented after each session, according to sources. The composite texts are drawn from three earlier proposals submitted by parties. The third edition of the composite draft text is heavily bracketed, especially around areas of disagreement between the three current proposals (W/52 proposal, the so-called joint proposal, and the Hong Kong proposal).

The creation of a single text raises the profile of GI talks within the Doha Round, making it more similar to some of bigger negotiating areas like non-agricultural market access, a source noted.

GIs as Development Tool

In November 2010, the International Centre for Trade and Sustainable Development issued a policy brief [pdf] on Geographical Indications, in Situ Conservation and Traditional Knowledge, written by Jorge Larson Guerra, a biologist at the Mexico National University.

The brief called GIs “a neglected area in the various fora addressing biodiversity and intellectual property,” in particular because GIs “were long viewed as a protectionist strategy and an issue of interest mainly to Mediterranean Europe.”

However, legislative changes, registration and commercial interests in GIs can be noticed in most biologically diverse countries like Brazil, India, and China, said the brief. GI and informative labelling could help in situ conservation of genetic resources and rural development by raising small farmers’ income and avoid “the type of competition that is based on volume, low prices and marketing,” it said.

“The GI product represents a public good because its intrinsic characteristics have patrimonial values that belong to no one in particular: a reputation built collectively over generations,” wrote Guerra. He called for the creation of an enabling institutional environment and “the implementation of legal and institutional frameworks in intellectual property and GI governance.”