geographical indications: prospects for the development of the international legal framework tegan...
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Geographical Indications:
Prospects for the development of the International Legal
FrameworkTegan Brink
Australian Permanent Mission to the WTO, Geneva, Switzerland
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Australia’s Interests
• New world country founded on immigration
– inherited many European names and traditions
• Large agricultural exporter
– including dairy products
• Systemic interest in the IP system
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International Context
1. Increasing business interest and use of GIs
2. No agreement on GI proposals in the WTO
3. Little, if any, work on GIs in WIPO
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What Prospects?
1. The current legal framework for GIs is working well
2. There may be scope for further work & cooperation on GIs
3. But rewriting TRIPs neither necessary nor desirable.
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The EC’s proposals in the WTO
1. Extension: to extend the higher level of protection provided to wines and spirits in Art 23 of the TRIPs Agreement to all products (TN/IP/W/11)
2. Register to facilitate the protection of GIs for all products (TN/IP/W/11)
3. “Clawback”: a list of 41 terms submitted in the agriculture negotiations that the EC would like to reserve for the exclusive use of its producers (includes, feta, parmesan and champagne).
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Australia’s position• Oppose negotiations on GI-extension
– no problem with current system; commercial and systemic concerns with EC proposal.
• Support a voluntary register which facilitates the protection of wines and spirits GIs but does not increase that protection.
• Oppose clawback– unjustified, discriminatory, illegal
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GI-extension (1)
Main arguments in favour of extension:
• Current dual level of protection discriminates against products that are not wine and spirits.
• Art 22-level protection is inadequate
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GI-extension (2)Responses:• Discrimination alone does not justify extension
– historical reasons: Art 23 result of a “deal”.• No evidence why current system is inadequate
– problem with current rules or with their enforcement?
– GIs already eligible for higher protection through TM systems
– eg. Parmigiano-Reggiano, Roquefort, Ceylon tea, Jamaica Blue Mountain Coffee all protected as certification marks in Australia.
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GI-extension (3)Development benefits?
• Would specific developing country products be eligible for protection?
• GIs are marketing tools – worth little without investment in the brand.
• GIs do not create quality• GIs do not guarantee access to markets• Numbers: a fair trade?
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Australia’s concerns withGI-extension
• Costs to governments, producers and consumers.
• Wine is not cheese!
• Costs of relabelling and remarketing
• Risks in export markets and new markets
• Links to the register
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Implications in Export Markets
The case of feta
• Current situation
• Extension
• Extension plus register
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Register(1)• In-built agenda - wines and spirits register
negotiations mandated by TRIPs Art 23.4:
– In order to facilitate the protection of GIs for wines [and spirits], negotiations shall be undertaken in the Council for TRIPs concerning the establishment of a multilateral system of notification and registration of GIs for wines eligible for protection in those Members participating in the system”.
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Register (2)• 3 proposals
1. Joint Proposal cosponsored by 17 Members including Australia (TN/IP/W/10)
2. Hong Kong Proposal (TN/IP/W/8)
3. EC proposal (for all products) (TN/IP/W/11)
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Register (2)
• Key Issues:
– Participation: voluntary or mandatory?
– Legal Effects: obligation to consult or obligation to protect?
– Costs and Burdens
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Participation
• Joint Proposal is voluntary
• HK Proposal is voluntary (but with a review clause)
• EC proposal is not voluntary
– If you don’t object to the inclusion of a term (ie participate!) you can’t deny protection to it on such grounds that the term doesn’t meet the definition of a GI in your country or is generic.
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Legal Effects• Purpose of system is to facilitate protection• But what does facilitate mean?
– Joint Proposal: information-based.
– EC proposal: registration = presumption of protection in all Members.
– Hong Kong proposal: registration = (more limited) presumption of protection in all Members.
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Joint Proposal• Searchable database • National offices would commit to consult the database,
allowing them to make more informed decisions.• Key features:
– voluntary–no burdens on non-participating Members. – preserves existing balance of rights & obligations – minimal costs– preserves the territoriality of IP rights. – continues to allow WTO Members to determined for
themselves the appropriate method of implementing the TRIPs Agreement, in line Art I:1.
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EC Register• All terms would be presumed to be protected in all
markets
– Unless you engage in a complex reservations process
• If not, would waive right to decline protection on such grounds as the GI not meeting the definition of a GI, or being generic in its territory
– presumption of protection would be irrebutable
• The burden would then shift to other interested parties to rebut the presumption on such grounds as prior use, if permitted under the national law.
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Australia’s concerns• Inconsistent with negotiating mandate:
– applies to all products– mandatory participation– increases protection does not facilitate it
• Impact on balance of rights & obligations in TRIPs – legal presumptions– limitations on existing exceptions
• Inconsistency with IP principles
• Costly and burdensome
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Implications in Export Markets (2)
The case of feta (continued)• GI-extension + register
– Presumption of protection
– No need to seek protection or meet definition
– Burden would shift to other parties to defend prior use
– No possibility to invoke generics exception unless government in export market has lodged an objection
• RESULT = De facto and near universal protection of feta as a Greek GI (“clawback by stealth”)
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Legal Presumptions• Why should burden of proof fall on existing users of a
generic term, rather than the party seeking exclusive use of the term?
• Why should the existing exception for generic terms be subject to bilateral negotiations?
• Presumptions alter the balance of rights and obligations – does not just facilitate, but increases protection
• Unclear how presumptions could be implemented in systems that use TMs to protect GIs.
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EC RegisterImplications for IP Law (1)
Government-negotiated IPRs?
• Requires active government involvement in asserting and defending private rights
• Inconsistent with the principle that IPRs are private rights
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EC Register Implications for IP Law (2)
Universal IP?
• GI status in country of origin would have legal consequence for its status in other countries.
– Inconsistent with the principle of territoriality in TRIPs
• The term would be presumed to have a certain quality or reputation in all overseas markets that would entitle it to TRIPs-level protection regardless of whether it has ever been sold in those markets.
• Reservations system doesn’t solve this.
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What about the Madrid System?• Not an appropriate model for GI register in TRIPs
• Developed through incremental harmonisation
• No such convergence in national GI systems
• Outstanding questions
– Will registered GIs be published?
– Will there be national opposition procedures?
• Harmonisation well beyond TRIPs – better placed in WIPO.
• And Madrid can currently be used to protect GIs as certification marks… So what’s the problem with the current framework?
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Limitations to a WTO outcome
• Contested mandate• Overreaching proposals
– Inconsistent with goals of Doha round– Lack of widespread support – Inconsistent with TRIPs principles– Link to agriculture negotiations– Presuppose a greater harmonisation than exists
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Starting points for a more constructive debate
• Avoid improper accusations of ‘usurpation’ • Respect consumers choices• Accept that some terms have become generic • Reconcile any TRIPs proposals with the TRIPs
Agreement – recognise & accommodate different GI systems – get the balance right
• Accept that to achieve greater harmonisation, further work is required…in WIPO.
