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A Critical Appraisal of WTO Negotia-tions to Establish a Multilateral Regis-

ter for Geographical Indications

Evaluacin crtica de las negociaciones de laOMC para establecer un registro multilateral

de indicaciones geogrfcasJos Manuel Corts MartnPablo de Olavide University

Recibido, Noviembre de 2010; Versin nal aceptada, Marzo de 2011.

Key words: TRIPS Agreement, Intellectual property rights, Geographical indications, Multilateral registration system.

Palabras clave: Acuerdo ADPIC, Derechos de propiedad intelectual, Indicaciones geogrcas, Sistema de registromultilateral.

Clasicacin JEL: K33, O19, O24, O34.

ABSTRACT

To what degree should geographical indications (GIs) be protected by international law? Whatis the best way to protect at international level the names o well-known products, such as Rioja wine,which have a great reputation around the world? Do current international rules provide sucient sae-guards, or should governments implement another system o more eective protection? These arethe questions that need to be solved by WTO Members within the scope o the Built-In Agenda o the

TRIPS Agreement. It is true that TRIPS provisions undoubtedly represent a considerable improvement

in the international protection o GIs with respect to that which existed under WIPO. However, this Agre-ement did not create a complete international protection system. Quite the contrary, these provisionscontinue generating considerable legal uncertainty. For these reasons, negotiations between the newand the old world must continue in order to solve outstanding issues with respect to GIs. In particular,the twin negotiating issues o the multilateral register and the additional protection or products otherthan wines and spirits. However, WTO Members remain divided over the nature, reach, eects andscope o this registration system. In the present authors view, the minimalist approach deended bysome o WTO Members presents the great disadvantage o limiting itsel to creating a simple databasewithout consistent legal eects. This approach is not o a multilateral character and hardly will help toacilitate GIs protection. By contrast, the consensualist approach deended by the European Unionas part o a coalition o 108 WTO Members, which includes a huge number o developing countries,could truly contribute to acilitate multilateral protection as Article 23.4 TRIPS Agreement prescribes.

Interestingly enough, it is apparent rom recent debates that developing countries are becoming aware othe importance o GIs as instruments that contribute to the development o their economies. Thereore,the pressure exerted by these countries could bring an end to the deadlock that had continued or somany years. Otherwise, resistance to this negotiation may communicate an unortunate message tothese countries about the reality o WTO international intellectual property rights regime.

REVISTA DE ESTUDIOS REGIONALES N 90, I.S.S.N.: 0213-7585 (2011), PP. 97-127

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98 JOS MANUEL CORTS MARTN


RESUMEN

Qu grado de proteccin debe orecer el Derecho internacional a las indicaciones geogrcas?Cul es el mejor sistema para proteger a nivel internacional las reerencias geogrcas de productoscomo vino de Rioja que poseen una reputacin conocida por los consumidores de todo el mundo?Orecen las normas vigentes sucientes garantas o el sistema internacional debe implementar unsistema de proteccin ms ecaz? stas son las cuestiones que deben resolver los Miembros de laOMC en el marco de la agenda incorporada en el Acuerdo ADPIC. Es cierto que las disposiciones deeste Acuerdo representan una considerable mejora en la proteccin internacional de las indicacionesgeogrcas con respecto a la que exista en el marco de la OMPI. Sin embargo, no logran crear unacompleta proteccin internacional, adems de continuar generando cierta inseguridad jurdica. Porello, el debate entre los pases del nuevo y del viejo mundo debe continuar a n de solucionar lascuestiones pendientes, en particular, el registro multilateral y la proteccin adicional para productos

distintos de los vinos y bebidas espirituosas. Sin embargo, los Miembros de la OMC continan divi-didos en cuanto a la naturaleza, el alcance, los eectos y la cobertura de este registro multilateral. Deun lado, el enoque minimalista deendido por algunos pases se limita a crear un sistema carente deeectos jurdicos a nivel multilateral, por lo que no creemos que sea apto para acilitar la proteccin delas indicaciones geogrcas. De otro, el enoque consensual deendido por la Unin Europea comolder de una coalicin de 108 miembros de la OMC, incluyendo un nutrido grupo de pases en vas dedesarrollo. Desde nuestro punto de vista, sta es la nica propuesta que podra contribuir a acilitar laproteccin internacional de las indicaciones geogrcas como prescribe el artculo 23.4 ADPIC. En losdebates recientes resulta curioso observar cmo los pases en desarrollo estn tomando concienciade la importancia de una adecuada proteccin de las indicaciones geogrcas como instrumentoque puede contribuir al desarrollo de sus economas. Y no cabe duda de que la presin ejercida por

estos pases puede poner n denitivamente a la parlisis que ha existido durante tantos aos en estasnegociaciones. En caso contrario, la resistencia por parte de algunos miembros hara llegar a esospases un lamentable mensaje acerca de la realidad del sistema de la OMC en materia de proteccininternacional de los derechos de propiedad intelectual.

1. INTRODUCTION

The World Trade Organization (WTO) Agreement on Trade-Related Aspects oIntellectual Property Rights (TRIPS Agreement) was the rst multilateral international

treaty (although not the rst international treaty) to dene and protect geographicalindications (GIs) as a specic intellectual property type. According to this Agreement,Geographical indications (GIs) are indications that identiy a good as originating inthe territory o a particular country, or a region or a locality in that country, where agiven quality, reputation or other characteristic o the good is essentially attributableto its geographical origin1.

1 This denition is set out in article 22 o the World Trade Organization (WTO) Agreement on Trade-Related Aspects o Intellectual Property Rights (TRIPS Agreement), Apr. 15, 1994, Marrakesh Agree-ment Establishing the World Trade Organization, Annex 1C, ILM, vol. 33-1994, p. 81.

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99THE STATE-OF-PLAY OF WTO NEGOTIATIONS TO ESTABLISH...


Historically, GIs have received little international protection. Beore the TRIPSAgreement, protection in international ora was limited to three international instru-ments under the auspices o the World Intellectual Property Organization (WIPO): theParis Convention2; the Madrid Agreement;3 and the Lisbon Agreement4. The ParisConvention is a widely-recognized international agreement, compelling membersto seize or prohibit imports with alse indications o source, producer, manuacturer,or merchant5. However, in its original orm, countries prohibited such uses only incases o serious raud6. Due to this insucient protection, in 1891 came into orcethe Madrid Agreement or the Repression o False or Deceptive Indications o Source.This Agreement provided more precise protection or indications o source7.Not only

are members to seize imports bearing a alse or deceptive indication, they also mustprohibit those uses o indications that are capable o deceiving the public8. Howe-ver, it suers rom limited membership and has had a minimal impact 9. This samehappened with the Lisbon Agreement or the Protection o Appellations o Originand their International Registration, which provides or an international registrationsystem limited to appellations o origin. The Lisbon Agreement has ailed to attractsupport rom more than only a ew nations. The main problem was that accessionis conned to those nations which protect appellations o origin as such. Thus,States which protect this orm o intellectual property under unair competition or

consumer protection laws are locked out10.Due to these insuciencies, international community did not provide extensive

protection or GIs prior to the TRIPS Agreement. However, during the Uruguay Roundo GATT trade in intangibles was included, or the rst time, in multilateral tradenegotiations, resulting in, among others, the TRIPS Agreement. It covers a broad

2 Paris Convention or the Protection o Industrial Property, Mar. 20, 1883, U.N.T.S. vol. 828, p. 305,available at http://www.wipo.int/treaties/en/ip/paris/trtdocs_wo020.html (las visited March. 16,

2011).3 Madrid Agreement or the Repression o False and Deceptive Indications o Source, Apr. 14, 1891,

U.N.T.S. vol. 828, p. 168. [hereinater Madrid Agreement], avalaible at http://www.wipo.int/treaties/en/ip/madrid/trtdocs_wo032.html, (las visited March. 16, 2011).

4 Lisbon Agreement or the Protection o Appellations o Origin and their International Registration,Oct. 31, 1958, U.N.T.S. vol. 923, p. 205, as last revised Jan. 1, 1994 at art. 2(1); avalaible at http://www.wipo.int/lisbon/en/(las visited March. 16, 2011).

5 Paris Convention, at arts. 9, 10.6 See Lenzen (1968), 184; Corts Martn (2003), 118.7 See Simon (1983), 134.8 See Madrid Agreement, art. 1, 3 bis.9 See Corts Martn (2003), 125.10 Lastly, some authors are proposing the use o the Lisbon Agreement or the Protection o Appella-proposing the use o the Lisbon Agreement or the Protection o Appella-

tions o Origin as way o eliminate the stumbling block in the TRIPS Negotiations and resolving themain dierences in these negotiations, see Gervais (2010); Geuze (2009).

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range o intellectual property rights and regulates the availability, scope, and use othese intangible assets. One o the eatures o the TRIPS Agreement is that not alldierent categories o intellectual property rights (IPR) regulated therein had either thesame degree o legal or doctrinal development or the same degree o acceptanceamong countries. This is the case o GIs where legal treatment and level o protectionare still debated between the old and the new world11 as a source o internationalcontroversy12. On the one hand, there are European Union (EU) countries, whichhave a long tradition o the protection o this kind o intellectual property right13. Therst European ramework or the registration o geographical indications and desig-nations o origin was created in 199214. This system was enacted with the twoold

objective o increasing the quality o products and promoting the diversication oproduction, so as to better balance supply and demand, improve the incomes oarmers and benet rural areas15. From a more general point o view, the creation othis EU system was especially due to the increasing pressure to reduce subsidies toarmers by reorming the Common Agricultural Policy16. Be that as it may, today this

11 See Corts Martn (2004), 120.12 Goebel (2003), at, 982: Although GIs are recognized as a type o intellectual property pursuant to

Article l(2) o the TRIPS Agreement, it is sometimes argued that GIs cannot be considered as anotherorm o intellectual property right since protection to the individual using a GI is eectuated only as arefex o protecting a certain regional collective goodwill. In my opinion, however, such an interpreta-tion is incompatible with the TRIPS Agreement which clearly denes GIs as intellectual property rightsand as private rights. It is true though that the inclusion o GIs in the TRIPS Agreement as a type ointellectual property was very controversial.

13 GIs have a long and proud tradition. Since antiquity, their existence has served to distinguish productsand to indicate source, serving a similar unction to that o present-day trademarks. See, CortsMartn (2003), Fernndez Novoa (1970), Maroo Gargallo (2002).

14 Council Regulation (EEC) No 2081/92 on the Protection o Geographical Indications and Designationso Origin or Agricultural Products and Foodstus:OJ L 208, 24.7.1992, entered into orce on 25 July1993. Ater, Regulation 2081/92 had been repealed in 2006 and replaced by Regulation 510/2006,

/2006, OJ L 93/12, 31.03.2006; which still applied only to GI products other than wines and spirits.There are also a series o regulations dealing with designations or wines and spirits (e.g. CouncilRegulation (EC) No 479/2008 o 29 April 2008 on the common organisation o the market in wine,amending Regulations (EC) No 1493/1999, (EC) No 1782/2003, (EC) No 1290/2005, (EC) No 3/2008and repealing Regulations (EEC) No 2392/86 and (EC) No 1493/1999, OJ L148, 06.06.2008.

15 Recital 2, Regulation 2081/92 o 14 July 1992 on the Protection o Geographical Indications andDesignations o Origin or Agricultural Products and Foodstus, recognizes that the promotion ohigh quality oods can be o considerable benet to the rural economy by improving the incomes oarmers and by retaining the rural population in more remote areas.

16 See Raustiala, K. and Munzer, S. R. (2007), 350: Faced with an onslaught o inexpensive wine andother agricultural products rom the New World, oten bearing European place names, EU countrieshave sought to use the international intellectual property system to assert quality, segment markets,and protect their national producers rom what they deem unair competition. According to theseauthors, Pascal Lamy, a ormer high EU trade ocial and currently Director-General o the WTO,stated: [T]he uture o European agriculture lies not in quantity o exports but quality () That is whywe are ghting to stop appropriation o the image o our products and improve protection.

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system is a eature o EU policy on agriculture and product quality and has enhancedthe attractiveness o using GIs to gain market share internationally. This is based onthe assumptions o empirical studies, which suggest that the protection o GIs orspecialty agricultural products can potentially benet the rural economy17.

By contrast, the US and other New World producers (Canada, Australia, NewZealand and others) tend to oppose strong GI protection, especially at the WTOlevel. Historically, these countries have not had separate laws to protect GIs, apartrom their systems o trademarks. Although it may be true that GIs are similar totrademarks in that they unction as source indicators18, these two dierent types oIPR are governed by very divergent systems o laws and bodies o belies. While

European countries believe that the names o many products should be protectedbased on their status as GIs, the United States and other countries disregard thevalidity o such protection because such names do not deserve protection undertrademark law and many product names are considered to be generic terms ratherthan reerences to geographic locations that produce property rights.

This introduction will give an idea o how controversial it was to include GIs in theTRIPS Agreement as a type o intellectual property19. Perhaps, the most theoreticallycontested intellectual property right included in the TRIPS Agreement relates to GIs.And these problems remain due possibly to the peculiar type o intellectual property

asset that represent GIs. Among other characteristics, GIs do not coner individualrights (such as in the case o patents and trademarks) but rather collective rights.In such a case, the right over a geographical name does not belong to a single com-pany, but to all producers in a given geographic area that respect a specic codeo conduct. The monopoly over a geographical name is not an exclusive right overa certain category o products, like in the case o patents. The producers o Sherrywine are not entitled, neither wish, to prevent others rom producing wine. The rightconerred by the GI is limited to banning competitors outside the dened geographicarea (or inside the geographic area or those not respecting the code o conduct)

rom using the name Sherry in connection with their products. It is surely due toGIs peculiarities that its inclusion in the TRIPS Agreement caused heated debatesduring the Uruguay Round and continues to generate discussions.

17 See, among others, Rangnekar (2003), 34-35; Rquillart (2007), 17-18; Folkeson (2005), 87.18 See, Hangard (1995), 66.19 See, Lindquist (1999), at 311-312, who wrote: The inclusion o these [protection o GIs] caused

heated debates during the Uruguay GATT Rounds and continues to generate discussion. The Articlethat causes most debate is Article 23 which deals with the protection o Geographical Indications orwines and spirits (...) The current debate surrounding Article 23 is over how much protection shouldbe given to Geographical Indications that have long been used beyond their boundaries and whatobligations TRIPS imposes on its Members.

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Like many aspects o the Uruguay Round negotiations, the disagreement amongcountries impeded the creation o a complete system or the international protectiono GIs and regrettably protection remains inadequate, particularly i compared to otherIPR. In addition to legal uncertainty that TRIPS provisions still generate, many countrieseel that current protection ails to prevent ree-riding on the reputation o genuine GIs.Uruguay Round Negotiators were conscious o these deciencies and, thus, mandatedongoing negotiations20. As a result, there remain a series o outstanding issues withrespect to GIs. In particular, the twin negotiating issues o the multilateral register andthe additional protection or products other than wines and spirits.

Concerning multilateral register, negotiations began in 1997, under Art. 23.4

TRIPS, and were included in the Doha Round when it was launched in 2001. Un-ortunately, they have yet to produce any real results. This same happened withextension issue, which was discussed in the regular session o the TRIPS Councilup to the end o 2002. Thereater, it has become the subject o consultations chairedby the Director General o the WTO. While some countries are in avour o grantingurther GI protection, others wish to maintain the status quo. The purpose o thispaper is, rst, to describe how the WTO strives to secure eective protection orGIs, and, second, to explore the prospects or urther development based uponthese ongoing negotiations. In order to accomplish these objectives, we must rst

review the international protection o GIs under the TRIPS Agreement, ollowed byreviews and critiques o the various proposals or a multilateral register set orthduring negotiations. Lastly, we will address the appropriateness o expanding thesystem to establish additional protection or products other than wines and spirits.The paper then concludes by arguing in avour o urther GI protection and orWTO Members to shoulder their responsibility by providing greater protection orGIs. Doing so, they will ensure that TRIPS remains an eective multinational treatyand sets an example or compliance. This compliance would be particularly helpulor developing countries which are becoming aware that products identied with

their country, or a given region within their country, can contribute mightily to theireconomic development.

2. CURRENT PROTECTION UNDER THE TRIPS AGREEMENT

At the time o the TRIPS Agreement adoption, not all categories o IPR regulatedtherein had the same degree o legal or doctrinal development; neither had they the

20 Seearticles 23.4, 24.1 and 24.2 TRIPS Agreement. SeealsoAbbott (2000), 166; citing negotiationor GI protections as a Built-In Agenda item that remains beore the TRIPS Council.

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same degree o acceptance among countries. In the case o GIs, the appropriatelegal treatment and level o protection continued to be ercely debated betweenWTO Members. Interestingly enough, the debate over GI protection did not ollowthe usual North-South divide21. Instead, the dispute created a dichotomy o states,with emigrant nations on one side and immigrant nations on the other22. Theemigrant nations the European Union, Switzerland and ormer Eastern bloccountries - support extensive GI protection, while countries like Australia, New Zea-land and the United States ally with Latin American nations and other immigrantcountries oppose this protection23.

During TRIPS negotiations, GIs was a very sensitive issue. Only at the very end

o the Uruguay Round was an agreement reached. And this was largely due to theparties ability to link GIs with the agricultural negotiations taking place at the time24.According to TRIPS Agreement, GIs are subject to the same general principlesapplicable to all categories o IPR included in the Agreement, primarily the minimum

21 Traditionally, developed and developing countries have tended to be in opposite groups in theGATT-WTO system. With some limited exceptions, this trend o opposition in North-South politicscontinues today. Developing countries have organized themselves into alliances such as the AricanGroup and the Least-Developed Countries Group. But, in other issues, the developing countries donot share common interests and may nd themselves on opposite sides o a negotiation. A numbero dierent coalitions among dierent groups o developing countries have emerged or this reason.The dierences can be ound in subjects o immense importance to developing countries, such asagriculture. SeeWTO, Understanding the WTO: Developing Countries. Some Issues Raised, athttp://www.wto.org/english/thewto_e/whatis_e/ti_e/dev4_e.htm (last visited March. 16, 2011).

22 Emigrant countries include those in Europe, Arica and parts o Asia, whereas immigrant coun-tries include the United States, Australia, and Latin American countries. Past waves o immigration,particularly around the turn o the 19th century, brought millions o armers and artisans rom Europe

to the Americas and elsewhere. These immigrants brought with them their ood products and, moreimportantly, their traditional production methods and recipes. And they oten recreated the productsthey had known at home using the same geographical name. Sometimes, this is the main reasonwhy some names become generics. By contrast, in European countries GIs have a long and proudtradition. Since antiquity, their existence has served to distinguish products and to indicate source,serving a similar unction to that o present day trademarks.

23 SeeAddor and Grazzioli (2002), 883; arming that the suitable protection o GIs has never been aconfict o interests between developed and developing countries, but between the countries o theold world and the new world.

24 The proposals were presented by the European Union, the United States, Switzerland, Japan, and agroup o developing countries consisting o Argentina, Brazil, Chile, China, Colombia, Cuba, Egypt,India, Nigeria, Peru, Tanzania, and Uruguay. See, e.g., WTO Negotiating Group on TRIPS, DratAgreement on Trade-Related Aspects o Intellectual Property Rights, presented by the EuropeanUnion, doc. MTN.GNG/NG11/W/68, Mar. 29, 1990. All WTO ocial documents are available at:http://docsonline.wto.org/gen_search.asp?searchmode=simple.

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standards25, the national treatment26 and the most-avoured-nation clause27. As aresult, one big dierence rom the pre-WTO situation is that GIs are now embeddedin the WTO system, as they comprise one o the categories o intellectual propertythat are the subject o the TRIPS Agreement, which itsel is an integral part o theWTO Agreement. Consequently, non-compliance with TRIPS obligations on GIs canbe challenged under the WTO dispute settlement mechanism, and i a country ailsto implement a ruling, i it is indeed not in compliance28, it could eventually be acedwith sanctions in areas o international trade governed by other parts o the WTOAgreement and lose benets that accrue to it under that agreement or as long asit does not remedy the situation29.

Apart rom these, Section 3 o the TRIPS Agreement regulates the availability,scope, and use o these intangible assets30. The structure o this Section is quite

25 Art. 1 TRIPS Agreement: Members shall give eect to the provisions o this Agreement. Membersmay, but shall not be obligated to implement in their domestic law more extensive protection than isrequired by this Agreement.

26 See id. Art. 3: Each Member shall accord to the nationals o other Members treatment no lessavorable than that it accords to its own nationals with regard to the protection.

27 See id.Art. 4: With regard to the protection o intellectual property, any advantage, avour, privilegeor immunity granted by a Member to the nationals o any other country shall be accorded immediatelyand unconditionally to the nationals o all other Members ().

28 For instance, in the Case European Communities Protection o Trademarks and GeographicalIndications or Agricultural Products and Foodstus, Australia and United States successully chal-lenged in 2005 the US the EUs GIs protection system beore the WTO Dispute Settlement Body.They argued that it impermissibly discriminated against oreign products and persons. Even i theWTO Panel dismissed some o the claims, yet held that EU Regulation 2081/92 ailed to providenational treatment to oreign products, see doc. WT/DS290/R, Add.1, Add.2 y Add.3. On 20 April2005, the Dispute Settlement Body adopted the Panel Reports. As a result, the new Regulationn 510/2006 o 20 March 2006 on the protection o geographical indications and designations o

origin or agricultural products and oodstus was adopted and published in the Ocial Journal othe European Union on 31 March 2006. Thus, the EU complied with the DSB rulings and recom-mendations in this dispute within the reasonable period o time agreed upon between the parties.

29 See Geuze (2009), 51.30 Both the Paris Convention and the Lisbon Agreement had a clear infuence on the provisions o the

TRIPS Agreement in general, but particularly in the case o GIs. Substantive provisions contained inArticles 1 to 12 and 19 o the Paris Convention (1967) were incorporated in the TRIPS Agreementwith respect to the minimum standards concerning: the availability, scope, and use o intellectualproperty; the enorcement o the intellectual property rights; and, the acquisition and maintenance ointellectual property rights and relatedinter partes procedures. This has had at least three importantconsequences: (i) WTO Members are to comply with the substantive provisions o the Paris Conven-tion, mainly Articles 1 through 12 and Article 19, even i they were not signatories o that Convention;

(ii) all WTO Members are bound by the same Act o the Paris Convention (Stockholm Act o 1967);and (iii) the provisions o the Paris Convention incorporated in the TRIPS Agreement became subjectto the WTO dispute settlement mechanism.

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simple and clear. First, Article 22 provides general protection or all GIs31. All GIs mustbe protected against use, which would mislead the public or constitute an act ounair competition. In this respect, WTO Members should provide legal tools so thatinterested parties can prevent the designation or presentation o a good that indicatesthat the good originates in a geographical area other than the true place o origin.They can also prevent any use which constitutes an act o unair competition withinthe meaning o Article 10bis o the Paris Convention32. Another important element oArticle 22 is that inconsistent use o a GI which does not mislead the public as to itstrue origin should not be considered an inringement o TRIPS33. Additionally, Article22 mandates that Members should reuse or invalidate the registration o a trademark

which contains or consists o a GI, but only i such use o the trademark would bemisleading34. However, there is no obligation to protect GIs which are unprotectedin their country o origin or have allen into disuse in that country.35 Thus, protectionabroad is dependent on continuing domestic protection.

WTO Members agreed to provide a higher level o protection or GIs or winesand spirits (oten reerred to as additional or absolute protection), waiving generalprotection conditions (misleading o the public, unair competition) in their regard. As aresult, in addition to the general protection contained in Article 22, Article 23 accordsadditional protection or wines and spirits36. This additional protection encompasses

three main elements. First, it provides the legal means or interested parties to preventthe use o GIs which erroneously identiy wine and spirits not originating in the placeindicated by the GI37. Second, it mandates the reusal or invalidation o the registrationo a trademark or wines or spirits which contains or consists o a GI at the request

31 Article 22.2 requires Members to provide the legal means or interested parties to prevent the useo any means in the designation or presentation o a good that indicates or suggests that the goodin question originates in a geographical area other than the true place o origin in a manner which

misleads the public as to the geographical origin.32 Article 10bis o the Paris Convention was amended to prohibit indications that were liable to mislead

the public as to the nature, the manuacturing process, the characteristics, the suitability or theirpurpose, or the quantity o the goods. Paris Convention,supra note 2, art. 10bis.

33 Misleading the public consists o any act or practice, in the course o industrial or commercial ac-tivities, that misleads, or is likely to mislead, the public with respect to an enterprise or its activities,in particular, the products or services oered by such enterprise, shall constitute an act o unaircompetition. SeeWIPO, Model Provisions on Protection Against Unair Competition, art. 4, Geneva,1996. Also, according to Article 22(b), whether the use o a GI constitutes an act o unair competitionis governed exclusively by Article 10 biso the Paris Convention

34 Art. 22 TRIPS Agreement.35 Id. Art. 24.9.36 Id. Art. 23.37 This is so even where the true origin o the goods is indicated or the geographical indication is used

in translation or accompanied by expressions such as kind, type, style, imitation, or the like.

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o an interested party38. Third, it calls on WTO Members to negotiate or increasedprotections39. These provisions give GIs or wines and spirits stronger protection thanthose provided in Article 22 or other products, under which protection is limited tocases where the public is misled as to the true geographical origin o a product orwhere use o the GI constitutes an act o unair competition. The misleading testis a burdensome requirement tailored to suit laws or the protection against unaircompetition or the protection o consumers, but not or the protection o intellec-tual property. In particular, the condition that existing protection only applies to theextent needed to prevent misleading the public results in wide legal uncertaintybecause judges may reach dierent decisions on whether the public is misled or

not. On the other hand, unlike Article 23 TRIPS Article 22 does not prevent the useo GIs in translation or accompanied by expressions such as style, type, kind,imitation, or the like. It thereore enables ree-riding on renowned GIs by productsnot possessing the qualities which original products displayed due to their origin.Neither does it prevent ree-riding on the eorts and hard work which had beenemployed to make a GI renowned40.

Last but not least, the Agreement contains three exceptions to the obligationo providing general and additional protection. In other words, Section 3 o TRIPSestablishes a series o exemptions to GI protection in an endeavour to accommodate

past registration and use41. The rst o these exemptions provides that nothing inSection 3 prevents a WTO Member rom continuing to use another Members GI iit has used it continuously in the past with regard to the same goods or services42.Article 24.5 provides the second exemption allowing or continued use o previouslyacquired trademarks43. The third exception reers to generic terms and allows acountry not to protect a GI i the relevant indication is identical to common nameso such goods or services44.

38 Art. 23.2 TRIPS Agreement.39 Id. Art. 24.1. Some countries are o the opinion that this obligation applies to all GIs, and not only to

those concerning wine and spirits.40 See Corts Martn (2004), 165.41 See id. art. 24.42 Id. art. 24.4 (either, (a) or at least 10 years preceding April 15, 1994 or, (b) in good aith preceding

that date).

43 Id. art. 24.5.44 Id. art. 24.6. Also, the right to use a personal name is not to be prejudiced under Section 3 o the

Agreement.

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3. NEGOTIATIONS FOR A MULTILATERAL REGISTER FOR GIS

At the Uruguay Round, proposals by the EU, the United States, and Switzerlandwere indispensable to raming eventual obligations concerning GIs. For example, keyelements like Article 23s additional protection or wines and spirits and or a mul-tilateral register or indications o wines and spirits were present in the EU Proposal.The eventual ramework refects a very sensitive compromise in an area that wasone o the most dicult to negotiate45. However, WTO negotiators did not resolveall issues on the table. Instead WTO Members agreed a Built-In Agenda or uturenegotiations designed to acilitate international protection o this legal category.

This means that under the TRIPS system, WTO Members must negotiate, interalia, the establishment o a multilateral notication and registration system or GIs46.The precise terms o this obligation are in Article 23.4, which states that [i]n orderto acilitate the protection o geographical indications or wines, negotiations shall beundertaken in the Council or TRIPS concerning the establishment o a multilateralgeographical system o notication and registration o geographical indications orwines47 eligible or protection in those Members participating in the system48. In2001, part o this work became part o the work programme o the Doha Develop-ment Agenda, as adopted by the WTOs Ministerial Conerence49. In the Hong Kong

Ministerial Declaration, adopted on 18 December 2005, Ministers took note o a

45 Geuze (1997), 199.46 Art. 68 TRIPS Agreement.47 Art. 23.4 TRIPS Agreement addresses exclusively GIs or wine. However, the WTO Singapore

Ministerial Conerence in 1996 also included spirits: In regard to GIs () the Council will initiate() preliminary work on issues relevant to the negotiations specied in Article 23.4 o the TRIPSAgreement () Issues relevant to the notication and registration system or spirits will be part othis preliminary work. All o the above work would be conducted without prejudice to the rights andobligations o Members under the TRIPS Agreement () WTO Council or TRIPS, doc. IP/C/8, Nov.

6, 1996, para. 34.48 This article was introduced in TRIPS at the request o the European Union, although its Proposalcontemplated coverage applicable to all GIs and not only to those o the wine sector, see WTONegotiating Group on TRIPS, Drat Agreement on Trade-Related Aspects o Intellectual PropertyRights, presented by the European Union, doc. MTN.GNG/NG11/W/68, art. 21(3), Mar. 29, 1990.The Proposal was included in the text that the President o the Negotiations Group presented in July1990, doc. MTN.GNG/NG11/W/76, July 23, 1990. During the autumn o that year, some countrieswere in avor o the creation o this register in the Uruguay Round. They even presented, in an inormalway, some proposals which contemplated, in a detailed and systematic way, the creation o thisregister. These Proposals were debated by the Negotiations Group. However, other countries werecommitted solely to examining this question in the uture. This disagreement was refected in theproject presented by the President o the Negotiations Group to the Ministerial Meeting o Brussels

in December, 1990, doc. MTN.TNC/W/35-1/Rev.1, Dec. 3, 1990.49 The mandate o the Special Session is set out in the rst sentence o paragraph 18 o the Doha

Ministerial Declaration, doc. WT/MIN(01)/DEC/1, Nov. 20, 2001.

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progress report on the negotiations in the Special Session and agreed to intensiy

them in order to complete them within the overall time-rame or the conclusion othe negotiations that were oreseen in the Doha Ministerial Declaration50. Lastly,the Seoul Summit Document, agreed at the G20 Seoul Summit, November 11-12,2010, asks or a broader and more substantive engagement in order to bring theDoha Development Round to a successul, ambitious, comprehensive, and balancedconclusion consistent with the mandate and built on the progress achieved51.

The submissions presented at the TRIPS Council or the establishment o thisregister can be divided into two camps. On the one hand, the minimalist approachdeended by the United States together with a coalition o 19 countries like Canada,

Australia, New Zealand, along with many Latin American nations (Joint ProposalGroup)52. The second proposal advocating a minimalist approach was presentedby Hong Kong, China, in which the inscription o a GI would lack a process o subs-tantive examination or opposition at the multilateral level53.

By contrast, the consensualist approach deended by the European Union aspart o a coalition o 108 WTO Members54 (the so-called W52 sponsors), which in-cludes Switzerland, ormer Eastern bloc countries, and a huge number o developingcountries55. It includes a modied and stripped-down version o the EUs original

50 Doc. WT/MIN(05)/DEC, par. 29.51 Once such an outcome is reached, G20 commit to seek ratication, where necessary, in their respec-Once such an outcome is reached, G20 commit to seek ratication, where necessary, in their respec-

tive systems, TN/C/W/57, 26 November 2010, par. 43.52 Submission by Argentina, Australia, Canada, Chile, Costa Rica, Dominican Republic, Ecuador, El

Salvador, Guatemala, Honduras, Japan, Rep. Korea, Mexico, New Zealand, Nicaragua, Paraguay,Chinese Taipei, South Arica, the US (Joint Proposal Group) in doc. TN/IP/W/10 and Addenda 1,2 and 3. In March, 2011, the Joint-Proposal Group circulated a revision o its proposal, adding asection on special treatment or developing countries, aligning the ormatting with the structure othe drat and using its preerred wording rom the composite drat, doc. TN/IP/W/10/Rev.3.

53 Hong Kong, Chinas proposal is contained in Annex A o doc. TN/IP/W/8.

54 The rst European Union Proposal is contained in doc. IP/C/W/107, Jul. 28, 1998; and ater in doc.TN/IP/W/11, Jun. 14, 2005. The last EU position is contained in doc. TN/C/W/52, Jul. 19, 2008,Drat Modalities or TRIPS Related Issues.

55 This proposal in sponsored Albania, Brazil, China, Colombia, Croatia, Ecuador, the European Union andits 27 Member States, Georgia, Iceland, India, Indonesia, the Kyrgyz Republic, Liechtenstein, Moldova,the Former Yugoslav Republic o Macedonia, Pakistan, Peru, Sri Lanka, Switzerland, Thailand, Turkey,the Arica, Caribbean and Pacic Group (The ACP Group) and the Arican Group. Both groups consistso 61 WTO Members: Angola, Antigua & Barbuda, Barbados, Belize, Benin, Botswana, Burkina Faso,Burundi, Cameroon, Cape Verde, Central Arican Rep., Chad, Congo, Cte dIvoire, Cuba, Congo(Democratic Rep.), Djibouti, Dominica, Dominican Rep., Egypt, Fiji, Gabon, Gambia, Ghana, Grenada,Guinea, Guinea Bissau, Guyana, Haiti, Jamaica, Kenya, Lesotho, Madagascar, Malawi, Mali, Morocco,Mauritania, Mauritius, Mozambique, Namibia, Niger, Nigeria, Papua New Guinea, Rwanda, St Kitts &Nevis, St Lucia, St Vincent & the Grenadines, Senegal, Sierra Leone, Solomon Islands, South Arica,Suriname, Swaziland, Tanzania, Togo, Tonga, Trinidad & Tobago, Tunisia, Uganda, Zambia, Zimbabwe,doc. TN/IP/W/52, Jul. 19, 2008 and Addenda 1, 2 and 3.

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proposal or the multilateral register. Previously the EU had proposed that i a termis registered the assumption the legal phrase was irrebuttable presumption would be that it should be protected in all WTO members except those that havesuccessully challenged the term56. Nowadays, the negotiated compromise amongthe sponsors envisages a system applying to all WTO Members where they haveto take a terms registration into account and treat it as prima acie evidence(rst sight, or preliminary, beore urther investigation) that the term meets TRIPSdenition. As a result, this new proposal refects a meaning movement rom the EUto review its previous position so that it could bring an end to the deadlock that hadcontinued or so many years.

Throughout, an attempt will be made to deepen the interpretation by exhibitingthe dierent negotiating proposals submitted about the notication and registrationsystem o GIs57.

3.1. The Joint Proposal

The register urged in this approach, which can be qualied as the least commondenominator or the negotiation, is characterized solely by its inormative nature. Asa result, a GI inscription would not create legal rights and consequently it would not

require protection by other WTO Members. As well, this system is strictly voluntary,which means that no WTO Member shall be required to participate58.

The joint proposal is succinct and has not been modied in substance since itwas tabled in 2002. Subsequent revisions had been made to add co-sponsors butno substantive modications had taken place. It is based on the assumption thatGIs are territorial rights and, thereore, the conditions or granting and exercisingthem must be established in national ora. This means that under this system, any GIestablished in accordance with national legislation would be entitled or protection,regardless o whether it is registered in the WTO database. Moreover, the proposal

states that, in accordance with Article 23.3, identical or similar GIs may be submit-ted by several WTO Members provided it had been recognized by each o them inaccordance with national systems.

With regard to legal eects under national legislation, participants would belegally bound to consult the database, along with other sources o inormation, while

56 TN/IP/W/3, 24 June 2002.57 At rst, debates developed in the TRIPS Council. More recently, they have been the subject o inormal

consultations chaired by the WTO Director-General or by one o his deputies.58 Supra ootnote 52.

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Non-participants would be encouraged to reer to the database59. Registering itselwould not create protection, but simply it would create a source o inormation. Asa result, multilateral registration would not give rise to any presumption regardingnational protection. Thus, Members participation would be limited to receivingthese lists, among other sources o inormation, when they must make decisionson the protection in their territories o GIs o other Members. With regard to appealsor objections, the proposal sets out that decisions concerning protection or GIs,regardless o whether the WTO is notied, should occur at the national level at therequest o interested parties.

3.2. The Hong Kong, China Proposal.

The second proposal was presented by Hong Kong60 and it attempted to re-concile the minimalist approach o the U.S.-led Group with the initial EU maximalistapproach. Nowadays, it is not truly a middle-ground proposal. Instead, it is muchcloser to the European-led Group except or participation in the system.

Concerning legal eects, the inscription would be put into eect only ater a cur-sory, ormal examination o the GI subject to questions relating to its conormity withthe general denition o Article 22.1. I a term is registered, this would be preliminary

evidence (prima acie) - which could be rebutted - about who owns the term andthat it is protected in the country o origin. But the applicability o TRIPS exceptionswould remain in the local jurisdiction in accordance with domestic law.

As regards participation, protection only embraces those WTO countries cho-osing to participate in the system. In other words, participation would be entirelyvoluntary. However, those participating in the WTO system would be compelled togive legal eects to inscriptions. The proposed multilateral system would involve aormality examination o the notied GIs. A GI would be entered on the register by theadministering authority upon submission o some basic inormation, such as details

o the GI, ownership and the basis on which it was claimed to be protected in thecountry o origin, and payment o the requisite ee. The ormality examination would

59 The proposal asserts that inormation obtained rom WTO Multilateral Systems or Wines and Spiritswould be taken into account in making those decisions in accordance with that national legislation() WTO Members not participating in the system will be encouraged to reer to the WTO MultilateralSystem or Wines and Spirits, along with other sources o inormation, in making decisions undertheir national legislation () in order to ensure that such decisions are based on the most completeinormation available, doc. TN/IP/W/10.

60 Hong Kong, China has no interest in GIs, but it has a systemic interest in ullling the negotiating

mandate under Article 23.4 o the TRIPS Agreement. With this objective in mind Hong Kong, Chinatabled the alternative proposal TN/IP/W/8 at the TRIPS Special Session on 29 April 2003,see doc.TN/IP/W/8.

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only involve checking o the documents submitted by a WTO Member to ensure theymet the minimum ormal requirements. The register would contain the inormationo the registered GIs and would be made available to participating Members, e.g.through the Internet website. Concerning legal eects, the Hong Kong proposalstates that the registration would be accepted by any domestic courts, tribunals oradministrative bodies o the participating WTO Members as prima acie evidence orproving three issues: ownership; conormity with the TRIPS denition; and protectionin the country o origin. These three issues would be deemed to have been provedunless evidence to the contrary was produced by other WTO Members. Thereore,registration would give rise to a rebuttable presumption on these three issues. As

a result, legal eects would only aect the legal burden o proo to the proceedingsin order to assist GIs owners, discharging them about the burden o proo on thesethree relevant issues in domestic proceedings61.

3.3. The EU-led Proposal.

Initially, the European Union proposed a ull registration system, combiningelements rom the Lisbon Agreement62 and EU Regulation63. This ambitious proposaltried to avour legal certainty on GIs protection by advocating or the creation o a

system which would be opened to GIs on all products that would benet rom uncon-ditional protection in all WTO markets upon its inscription in the register64. However,in order to put an end to the deadlock, the EU-led Group has subsequently madea huge eort to reduce the consequences o the register. Accordingly, in 2008 theEU relaxed its position concerning legal eects o the register, although maintainingthat registering should imply protection in all WTO markets.

According to this new proposal, the issue o legal eects is the key area wherethe EU has made major concessions to address the concerns expressed in the past.

61 Consequently, according to the Hong Kong Proposal, this would acilitate GI protection throughMembers domestic legal systems, WTO Council or TRIPS, Special Session, Minutes o Meeting,TN/IP/M/22, Jun. 10, 2009, para. 45.

62 SeeDownes (2000), at p. 273.63 Under the EU Regulation n. 510/2006, the protected designation o origin (PDO) allows agricultural

producers in EU Member States an exclusive right to the name o a particular oodstu that is de-termined to be unique because the production, processing, or preparation takes place in a specicarea using local expertise and resources. The protected geographical indication (PGI) also gives anexclusive right to a name or oodstus, but unlike the PDO, it does not require unique characteristicsassociated with a specic geographical environment, see Regulation (EEC) n 2081/92, July 14, 1992.

Instead, the PGI grants protection or products due to their reputation. SeeCorts Martn (2003),325-451.

64 Supra, ootnote 54.

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In particular, because the proposed register would not be an automatic protectionsystem. Instead, GI right holders would still have to go through the procedures pro-vided by each country, meaning that all exceptions would remain available and thatit would be the national authorities who would decide to grant protection. Conse-quently, the rst concession is related to the consultation o the register by domesticauthorities when making decisions on registration and protection o trademarks andGIs. The entry o a name on the register would trigger two legal eects:

It would be consideredprima acie evidence that, in that WTO Member, thenotied GI met the denition o GI laid down in TRIPS Article 22.1. This means thatthe notiying WTO Member would have checked that there was a product, a place

o origin, and, or example, a characteristic o that product linked to that origin. Thisconsequence is very reasonable, the more so as it would apply in the absence oproo to the contrary. In other words, domestic authorities might decide that theywould consider that a notied GI did not meet a GI denition in their country.

The second consequence o a registration seems even more reasonable: asgenericness is a TRIPS exception, it would be normal that those who claim it had tosubstantiate the alleged genericness65. Thus, domestic authorities would considerassertions on the genericness exception laid down in TRIPS Article 24 only i thesewere substantiated. Beyond that, domestic authorities would have all latitude to

decide or or against protection o a term on the basis o contrary evidence providedby themselves or brought by any third party.

This means that this proposal gives careul consideration to domestic systems: itwould be up to the domestic authorities to act within the ramework o their domesticsystem in accordance with their own law. On the other hand, checks and balanceso the exceptions provided in Article 24 TRIPS would remain unchanged.

3.4. Critical Appraisal

As an overall assessment, although undamental positions have not changed,in the present authors view it seems exist a genuine and sincere desire on thepart o delegations to move orward and resolve the remaining dierences in thesenegotiations, so as to be ready to contribute to any movements in the wider con-text o the Doha Round negotiations. Then, we will try to expose a refection o thestate-o-play and o remaining challenges, in particular in the two key areas o legaleects and participation.

With respect to the question regarding the consequences that should fowrom an entry on the international register, two general approaches are on the table,

65 See, doc. TN/IP/W/52, Jul. 19, 2008.

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namely that (a) an entry should result in better inormation being available to andused by decision makers and national systems, and (b) that an entry should resultin a legal presumption in national systems.

According to minimalist approach group, a legal presumption is not acceptable ora number o reasons: rstly, a legal presumption would increase the legal protection orGIs, and this would be outside the scope o this negotiation, which is only about acilita-ting protection; secondly, a legal presumption would violate the principle o territoriality;and, thirdly, a legal presumption would alter the balance o rights and obligations in theTRIPS Agreement. By contrast, these countries preer a limited inormation system inwhich national GIs would be notied and incorporated automatically. However, WTO

Members sponsoring this system have not yet explained how they would implementthe obligation to consult and take into account the inormation on the register. Aslegal uncertainties or market operators, whether they were GI or non-GI operators,have to be avoided, there is need or urther explanations on this issue.

The Joint Proposal calls or the establishment o a simple database as a sourceo inormation that Members authorities might or might not consult, and, even i theyconsult, it is unclear which consequences they would attach to it. In this authorsview, it should not be up to WTO Members to decide whether or not to take intoaccount inormation on the register, essentially or the ollowing reasons: rstly, leaving

countries to decide would create legal uncertainty and discrepancies, and wouldo course not be in the interest o the right holders or o business in general; andsecondly, it did not ull the mandate which called or a registration system, not adatabase system, which would amount in practice to a duplication o the inormationalready provided by the applicants and thereore would not add any value.

As regard legal eects, it would seem that an IPR multilateral register clearlymust imply multilateral protection and this should be the key element in establishingsuch a register. However, the U.S.-led Proposal is limited to creating a record ratherthan a true registration. The system does not provide or a mechanism to lter out

names that should not be protected and, thereore, risks creating more conusion thanclarity. The proposal is silent on the need or elements o proo, or the assessmento eligibility, or or an opposition procedure elements which seem indispensablein the ramework o an IPR register. Under this approach, it is impossible to ensurethat terms that do not meet the provisions o Articles 22.1 or 24.9, or which allunder one o the exceptions provided or in Article 24, are denied eligibility. TheU.S.-led Proposal also does not establish procedures to resolve possible litigation,an indispensable procedure or any uture multilateral register. The great uncertaintyregarding legal eects may thus increase litigation and, consequently, administrative

costs. It also does not provide or any monitoring mechanism which requires nationalauthorities to reer to the lists o GIs on the database. As a result, these nationalauthorities will not know whether to rely on the inormation included in the system

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when making a determination on the protection o a GI. For all these reasons, it isdicult to understand how the mandate to acilitate the protection o GIs establishedin Article 23.4 would be ullled through this system.

As to the participation in the system, the minimalist approach group also doesnot provide or a system with a truly multilateral character. In reality, it is unclearwhether non-participating Members would be bound to give protection accordingto Article 23. I non-participating Members were not bound, the mandate to acilitateGIs protection as mandated in Article 23.4 - would be undermined. The literalmeaning o the U.S.-led Proposal seems based on a political commitment withoutlegal orce: authorities would be bound to reer to the register, yet the register gives

rise to no national legal commitment.Assuredly, Article 23.4 calls or more ambitious action than this proposal oers.

The proposal concentrates on the rst part o the job, namely the establishment o anotication system, while the register would simply compile participating Membersinormation. As o this writing it is unclear whether this would satisy the requiremento producing legal eects that registration inherently should entail in the context oIPR66. I transparency alone is the only advantage oered by the proposed U.S.-ledsystem, it might not be sucient to justiy its costs. To acilitate GIs legal protectionunder Article 23.4, a multilateral system should help administering bodies implement,

and producers and consumers avail themselves o, legal protection. To respond tothis mandate, it seems essential ater so many years o negotiations to oresee at leastthat, beyond the simple obligation to consult a source o inormation, WTO Membersshould provide some clear assurances that the national authorities responsible orGIs - judges, trademark examiners or other authorities would have the obligationnot only to consult the inormation in the register but also to take due account o thisinormation when making decisions by giving it all the necessary weight.

By contrast, the proposal sponsored by the EU could in this authors view helpto acilitate GIs protection, as Article 23.4 TRIPS Agreement prescribes. This could

occur even thought it has signicantly reduced their initial claims in order to achievethe desired consensus. This proposal struck a balance between dierent interestsand would be the appropriate tool towards a register which would truly acilitateGI protection, and not duplicate what would already be available on the Internetsystem. The proposal would not entail any automatic protection, would not obligeWTO Members to change their protection system and would not generate excessiveadministrative costs and burdens. Possibly, these are the reasons which make thisproposal to enjoy nowadays the support o two thirds o the WTO Members.

66 This can be deduced rom other sections o TRIPS which employ the word registration, mostnotably in Part II, Section 2, on trademarks. See arts. 15, 18 and 19 TRIPS Agreement.

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4. THE ROAD AHEAD

It seems that early 2011, a drating group o negotiators produced a completetext on the proposed multilateral register or GIs or wines and spirits, which waspresented to a ormal TRIPS Council negotiation meeting on 3 March 201167. Thistext comes entirely rom the WTO members and covers six main areas: Notica-tion - eg, how a term would be notied and which WTO Member would do it (alsorelated to participation); registration - eg, how the system would be run and theWTO Secretariats role; legal eects/consequences o registration, in particular anycommitments or obligations on WTO Members arising rom a terms registration

(also related to participation); ees and costs - including who would bear theseburdens; special treatment or developing countries (ocially, special and dieren-tial treatment) and participation - whether the system will be entirely voluntary, orwhether a terms registration would have some implications or all WTO members.This text represents apparently a swit result as it can be a basis or moving aheadater 13 years o talks that have seen a lot o views exchanged but little movementin positions.

According to the heart o the Doha Development Agenda, which seeks to placedeveloping countries needs and interests at the heart o the Work Programmes,

this text addresses or the rst time special and differential treatment. Indeed,there are details in this new text o proposed special treatment or developing andleast-developed countries. This would include delays in implementing the systemand technical assistance rom developed countries. A key dierence is over thedelays: the transition periods. Some developing countries in the EU-led proposalpropose developing countries be given 10 years ater the system comes into beingbeore they have to consult terms in the register, and 20 years or least-developedcountries. By contrast, the Joint-Proposal group bases its suggested transitionperiods on the totally voluntary orm it is proposing or the system - the delays, at

this stage unspecied numbers o years, would start rom when a developing orleast-developed country volunteers to participate in the system. It is also new in thistext a section on costs and ees, with views diering on whether the cost shouldbe borne by the WTOs budget - meaning all members would und the system - orwhether user ees should be charged to countries registering terms.

However, all the present divergent positions are included in this new text. Asa result, the document contains around 208 pieces o rival text, marked by square

67 Statements will appear in minutes because this was a ormal meeting. Until then, the sole source is

the excerpt rom Chairpersons TRIPS Council Report, Ambassador Mr. Darlington Mwape (Zambia),on March 3, 2011, avalaible at http://www.wto.org/english/news_e/news11_e/trip_ss_03mar11_e.htm#minutes (last visited March. 16, 2011).

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brackets. This means that the real challenge still lies ahead and WTO Members mustcontinue negotiating to narrow down dierences and remove the square brackets.Thus, the ongoing drating seems ragile and delicate and the process is still a workin progress.

This is specially the case about undamental questions, where positions remainmore or less unchanged. This occurs with respect to consequences/legal eects oregistration. All WTO Members seem to accept an obligation to consult the inormationon the Register. They also seem to be willing to take the inormation on the Registerinto account when making decisions regarding registration and protection o tra-demarks and geographical indications68 under their national procedures. However,

views dier signicantly as to how such inormation should be taken into account,what weight and signicance should be given to it, and whether there should bea specic legal obligation to take the inormation into account. While some WTOMembers are o the view that the mere obligation to consult the Register is notenough to ensure meaningul acilitation o protection o wine and spirit GIs, othersare concerned about extra-territorial eects o GI protection.

As a result, the Joint Proposal Group continue rejecting that i a WTO Memberregisters a term, this would be prima acie evidence that the term meets the denitiono a GI under the TRIPS Agreement in other countries, in the absence o proo to the

contrary. The main critic in recent debates is over the weight o this prima acie. Thisterm raises doubts about its real meaning, which could be: on rst sight; preliminary,beore urther investigation, evidence... The Joint Proposal Group objects thatthe EU system would create obligations in other countries legal systems, somethingqualied as extraterritorial. These countries critics that the EU-led Proposal wouldshit the burden o proo away rom the owner on whether a term qualies as a GI.By contrast, EU-led Group denies that its proposal would be extraterritorial becausecountries could still use their own legal systems to decide whether to protect the term.As a result, the rights enshrined in the TRIPS Agreement would be respected, as the

nal decision on whether or not to protect a GI will be let to national authorities.Given these criticisms, we might consider the ollowing question: Is a systemwhich createsprima acie legal eects at international level really necessary to a-cilitate GIs protection? There are several reasons why we think it is necessary. Themost important is that international legal eects would make GI protection easierby providing registered GIs a presumption o eligibility or protection69. However, it

68 This text appears both in TN/IP/W/10/Rev.2, paragraph 5 and in TN/C/W/52, paragraph 2.69 But see, GOEBEL (2003), p. 986; arguing that most o the existing multilateral systems o notica-

tion and registration, such as under Art. 6 tero the Paris Convention, the Hague Agreement in theeld o industrial designs and the Madrid Protocol in the eld o trademarks, all rely ultimately ondeterminations under domestic law to determine eligibility and protection.

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is doubtul i the last EU proposed system would enable producers to reduce costsas they would have to continue to enorce protection in each WTO market. It is true,however, that at least occasional ree-riding would be discouraged because theywould have to bear the burden o proo and incur litigation costs. This means that incase o litigation, the last EU proposed register would be a tool or these producersto acilitate GIs protection by a reversal o the burden o proo. But it is doubtul ithis could be particularly valuable or producers in developing countries who mightnot have the means to assert their rights in all markets. The notication, examination,and opposition phases should thereore be considered an investment in the systemsviability; the costs involved would be oset by the benets that would be derived

rom eective protection. Without a presumption o eligibility, it would be dicult inmost cases, i not impossible, or the average GI right-holder to enorce his rights,because he would have to build a case rom scratch beore local courts. In certaincases, litigants would be thousands o kilometres rom home and under completelydierent legal systems. This inconvenience would threaten the WTO Members clearintention to acilitate GIs protection. On the other hand, it is doubtul i under thelast EU Proposal, producers with a policy o international expansion would be ableto save costs when deending their names around the world. At least, under EU-led Proposal public administrations would have timely inormation that would allow

them, or instance, not to register trademarks containing such GIs, as prescribedby Article 23.2 TRIPS. As a result, usurpation should diminish and, in turn, litigationand administration costs would decrease. In any case, the last EU-led Proposal isthe only one that would make GI protection easier to implement because registeredGIs would benet rom a presumption o eligibility or protection; moreover, piracywould be discouraged. These two eatures seem benet all parties: producers,consumers, and administrations.

The same dialectic is being still in connection with the issue o whether par-ticipation in the system should be voluntary or mandatory; and whether allowing

countries to opt out o the system entirely conorms to the multilateral descriptionin the mandate. Some WTO Members interpret the reerence in the mandate to amultilateral system to mean that the system should apply to all. By contrast, otherWTO Members interpret the words those Members participating in the systemto mean that not all Members are expected to participate. This raises the issue owhether a system based on voluntary participation could bind WTO Members oncea GI has been registered. The logical answer seems to be that a voluntary systemcould only bind participating WTO Members.

From my point o view, the use o the words those Members participating in

the system does not necessarily mean that participation must be voluntary. Duemainly to eciency reasons, an ideal system would require all WTO Members toparticipate, even i a literal reading o Article 23.4 only establishes a voluntary parti-

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cipatory system.70Otherwise, a system whereby GIs are recognized and protectedin some WTO Member markets, but not in others, would surely create legal andeconomic uncertainty, thus undermining the objective o the TRIPS protection. Wemust not orget that Article 23.4 TRIPS calls or the establishment o a multilateralsystem o notication and registration o GIs. And a multilateral system can only beunderstood as requiring all parties to be bound to protect registered GIs. Unlikeplurilateral trade agreements, which bind only signatories, a multilateral systemshould be understood as including all WTO Members.71 Thereore, in the lexicono the WTO, plurilateral must be understood as reerring to a system in whichparticipation is entirely voluntary, whereas multilateral should be understood to

bind all Members72. Certainly, the phrase Members participating in the system atthe end o Article 23.4 TRIPS Agreement seems to reer to voluntary participation.But, in my opinion, this reerence can be interpreted as meaning no more than tho-se WTO Members who chose to participate by registering their GIs in the system.Under this interpretation, a participating WTO Member would still be obligatedto aord protection to GIs registered by other countries, even though it choosesnot to register its own GIs. Nonetheless, the protection o registered GIs must beobligatory or all by virtue not only o the mandate o Article 23.4, but also via theother provisions o Part II, Section 3, particularly Article 24.1 TRIPS Agreement73.

According to this interpretation, this provisional intersection results in a system oobligatory GI protection or all because Article 24.1 TRIPS Agreement prohibits any

70 Seeart. 23.4 TRIPS Agreement. Indeed, this position is supported by its wording: eligible orprotection in those Members participating in the system, Id.

71 The Agreement establishing the WTO expressly arms that although the our Plurilateral Trade Agree-ments (Agreement on Trade in Civil Aircrat; Agreement on Government Procurement; InternationalDairy Agreement and the International Bovine Meat Agreement) are part o the WTO Agreement,they create neither obligations nor rights or Members that have not accepted them.

72 WTO Council or TRIPS, Special Session, Minutes o Meeting, doc. TN/IP/M/4, Feb. 6, 2003, para.21.73 From a general perspective, it must be recalled that the WTO Agreement has eliminated the imbal-

ances caused by the collateral agreements, also reerred to as Codes, concluded ater the TokyoRound (19731979), which, in most cases, dierentiated the norms and procedures or decision-making and dispute resolution and whose acceptance among the Contracting Parties was limited.However, some ree-rider countries, i.e. countries which have assumed only the minimum level oobligations have tried to benet rom the Most Favored Nation (MFN) clause o Article I o GATT,demanding the advantages resulting rom these Codes, which they themselves have ignored. Toavoid these imbalances, Article II.3 o the WTO Agreement states specically that the MFN Clause isnot applied to the our Plurilateral Agreements. It must be observed, however, that nothing equal hasbeen established in the section o the TRIPS Agreement in relation to GIs protection. Thereore, i weadmitted that the multilateral register o GIs only must bind participant countries, nothing in it wouldprevent the other WTO Members rom demanding the application o the MFN Clause establishedspecically in TRIPS, Article 4.

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country rom reusing to negotiate to improve the protection o individual GIs74. Thus,it would seem that the notication o a GI to the uture register could be equivalentto a request to open negotiations.

Last but not least, it remains the question o the register scope: I the registermust cover only wines and spirits or more. The Joint-Proposal group and someothers say there is no mandate to extend the system to other products and to linkthese talks to this topic in order to extend to other products the higher level oprotection now given to wines and spirits (GI extension). However, other WTOMembers, among them, the EU-led group and China, are insisting that the multilateralregister must not discriminate in avour o wines and spirits. Nowadays, it seems that

interventions on this aspect are keeping relatively low-key on both sides due mainlyto the mandate in this orum, which is limited to negotiations on the establishmento a multilateral system o notication and registration o GIs or wines and spirits.However, the drating group spent considerable time in talking about whether or notthe composite text should be neutral with respect to possible GI extension or not,without any denitive result.

Independently o the register negotiations, the expansion o Article 23 TRIPS-type protection o GIs or products other than wines and spirits is the second battle-ground in the WTO75. Indeed, a large group o countries (GI-Friends Group) continue

requiring the elimination o the existing imbalances in the GIs protection, applying thelevel o protection enjoyed at the present time by wines and spirits (Article 23 TRIPS)to all other products76. Proponents or extension claim that the higher protection oGIs or wines and spirits is a discrimination, which could be corrected by extendingthat protection to GIs or other products. Accordingly, they propose that Article 23should apply to GIs or all products and Article 24 exceptions should applymutatismutandis. Moreover, the multilateral register to be negotiated or GIs or wines and

74 Art. 24.1. TRIPS Agreement.75 The issue o extension was discussed in the regular session o the TRIPS Council up to the end o

2002. Thereater, it has become the subject o consultations chaired by the Director General o theWTO. The Doha Declaration notes in its paragraph 18 that the TRIPS Council will handle work onextension under the declarations paragraph 12 (which deals with implementation issues). Paragraph12 says negotiations on outstanding implementation issues shall be an integral part o the Dohawork programme, and that implementation issues shall be addressed as a matter o priority by therelevant WTO bodies, which shall report to the Trade Negotiations Committee [TNC] by the endo 2002 or appropriate action. Delegations interpret Paragraph 12 dierently. Many developing andEuropean countries argue that the so-called outstanding implementation issues are already part othe negotiation and its package o results (the single undertaking). By contrast, other countriesargue that these issues can only become negotiating subjects i the Trade Negotiations Committeedecides to include them in the talks and so ar it has not explicitly done so.

76 See Joint Statement by the GI-Friends Group, doc. TN/C/4, 13 July 2004.

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spirits should apply to all GIs77. By contrast, the Minimalist Group hold the view thatthis discrimination could as well be corrected through suppressing Article 23 andlimiting the protection o GIs in all sectors to that provided by Article 22.

The merits o extension have been extensively debated78. The divide in the talksis the same as in the negotiations on the multilateral register, namely, the EU, otherEuropean countries and a huge number o developing countries on one side. Theydeend that GIs Register and GIs Extension should be pushed orward in paralleland GIs Register should cover all products to avoid urther discrimination againstGIs or products other than wines and spirits. On the other side, the same countriesthat sponsor - or expressed sympathy - or the Joint Proposal, together with some

other developing countries. The debate revolves around issues such as the possiblebenets o GI extension to GI right holders; the cost or non-GI holders; the costsor consumers; and the impact o extension in third markets.

It can be useul to try to investigate the reasons o this dierential treatment.About this, it can only be explained in the light o negotiations o the Uruguay Round.The relevant TRIPS provisions are the result o trade-o which was specic to thecircumstances prevailing at the time o the Uruguay Round negotiations, in particularduring the Brussels Ministerial Conerence in 1990. This was, to some extent, due tothe link at that time between the negotiations on GIs and the negotiations on agri-

culture79. Today, however, there are no economic or systemic reasons or protecting

77 See WTO documents TN/C/W/14/Add.2, JOB(05)61/Add.2 and TN/C/W/26.78 A compilation o issues raised and views expressed is contained in WTO doc. TN/C/W/25-WT/

GC7W/546.79 See, Blakeney (1996), 6.08; Stewart (1999), 1993: these authors state that the additional protection

or wine and spirit GIs is due to an attempt to reconcile during the Uruguay Round, on the one hand,the European position, avourable to establishing an ample protection o GIs and, on the other, theUS position, conning protection exclusively to wine sector. Even, some commentator argues that theabsolute protection standard was granted solely or the political reason o persuading the EC to joinconsensus on the Uruguay Round, Das (2006), 459-495. As o this writing it is unclear whether thiswas to persuade the EU or rather the European Proposal itsellacked ambition, lacking to proposeextension GIs protection or all products. This view is based in the EU rst proposal (1988), whichpresented the enhanced protection only or wine, see, GATT doc. MTN.GNG./NG11/W/26, 7 July1988, Guidelines and Objectives proposed by the European Community or the Negotiations onTrade-Related Aspects - Substantive Standards o Intellectual Property Rights. The same prevalenceor wine GI protection was proposed by the European Proposal presented in 1990, see, GATT doc.MTN.GNG/NG11/W/68, 29 March 1990, Drat Agreement on Trade-Related Aspects o IntellectualProperty Rights. Article 20 o this Proposal established: ... Where appropriate, protection shouldbe accorded to appellations o origin, in particular or products o the vine, to the extent that it isaccorded in the country o origin (emphasis added), while Article 21 established: ... Appropriate

measures shall be taken under national law or interested parties to prevent a geographical indicationrom developing into a designation o generic character as a result o the use in trade or productsrom a dierent origin, it being understood that appellations o origin or products o the vine shallnot be susceptible to develop into generic designations (emphasis added).

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GIs or certain products dierently rom others. As the EU-led Group has stated, therisk o conusion between products originating in a specic region is important anddamaging or any GIs, not just or wines and spirits80. The economic and politicalsignicance o GIs is growing as increasing quality awareness and higher qualityrequirements promote the demand or products o a specic geographical origin. Theadded-value o exported goods increases the chances or such legitimate goods toreach the market, which is part o the global vision or a multilateral trading system.That is why, since the end o the Uruguay Round, the awareness o the need or anextension o additional protection to products other than wines and spirits has con-tinuously increased and spread among WTO Members81. The EU-led Group thinks

that protection currently provided or GIs or products other than wines and spirits isinadequate; it does not prevent products whose names are ineligible or the GI romree-riding on the reputation o genuine GIs, which harms legitimate producers. Inthis authors view, extension would provide an adequate level o protection to GIsor all products. Extended GI protection could acilitate product identication by theconsumer, and consumer choice could be enhanced. Extension would open newmarket opportunities by preventing trade distortions82. The benets resulting romextension would oster the development o local rural communities and encouragea quality agricultural and industrial policy. As is the case or products protected

via trademarks, those beneting rom adequate GI protection would be in a betterposition to benet rom an enhanced access to third-country markets. As such, astrong GI regime would bring economic benets to producers worldwide, and notonly to producers in countries where the local protection o GIs is already strongerthan in the WTO.

Against this background, it is necessary to emphasize that GI extension doesnot aim at requiring that terms and indications which are considered generic todaybe re-appropriated. The exceptions provisions o Article 24.6 would continue to applyto such indications. The goal o the extension would be to prevent GIs, which are

not generic, rom becoming generic. This extension would also seek to solve onceand or all other disadvantages resulting rom the insucient protection provided byArticle 22 TRIPS, such as the burden o proo required under that provision to deend

80 WTO Doc. IP/C/W/353, 24 June 2002.81 The call or extension o additional protection or GIs to products other than wines and spirits has

been required rom time to time, see e.g. WTO Doc. IP/C/W/247/Rev.l. Nowadays, it is one o themain elements o the EU-led Proposal, where this question is asked as an integral part o the SingleUndertaking. These countries require amending the TRIPS Agreement in order to extend the pro-

tection o Article 23 o the TRIPS Agreement to GIs or all products as well as to apply to these theexceptions provided in Article 24 o the TRIPS Agreementmutatis mutandis.

82 WTO Doc. IP/C/W/353, 24June 2002.

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a GI against misuse, unlike under Article 23, with regard to wines and spirits. Theadministrative costs o this extension are negligible, because governments alreadyapply this type o protection to wines and spirits, as required by Article 23. Extensionaects how the laws should protect GIs, so it is essentially a norm-setting issue thatdoes not determine the orm o implementation which, according to Article 1.1 othe TRIPS Agreement is let to each WTO Member.

In summary, the rationale o the extension is that GIs or all products deservethe same level o protection as that which applies currently only to wines and spirits.In order to establish such uniorm protection or all products and extend the addi-tional protection o Article 23.1 o the TRIPS Agreement to other products, some

WTO Members have proposed to remove the reerence in Article 23.1 o the TRIPSAgreement to wines and spirits, and to prevent the use o a GI identiying productso the same category not originating in the place reerred to by it. With extension,existing imbalance in Part II, Section 3, will disappear, providing the same level oeective protection to GIs or all products.

However, the Joint Proposal Group have strongly opposed extension, partlybecause no evidence has been provided in their opinion showing that protectioncurrently available with respect to GIs or products other than wines and spirits isinadequate. The other reason or objection is that the cost o extension would be

considerable and no benets were oered in the Uruguay Round to assume theobligations that the extension would entail.

5. CONCLUSIONS

To what degree shouldGIs be protected by international law? What is thebest way to protect at international level the names o well-known products, suchas Rioja wine or Idaho Potatoes, which have a reputation known by consumers

around the world? Do current international rules provide sucient saeguards, orshould governments implement another system o more eective protection? Theseare the questions that need to be solved by WTO Members in the ramework oTRIPS Agreement Built-In Agenda. The peculiarity o GIs debate being that chiefyexhibits not so much the NorthSouth division, but rather a less common and moreinteresting split: that between the New World and the Old World. And the dicultyis perhaps that GIs stand at the intersection o three increasingly central debatedissues in international law: trade, intellectual property and agricultural policy83. To

83 In act, the EU submitted in 2004 a proposal in the context o WTO agriculture negotiations thatis relevant to GIs debate. It concerns a list o names that, in the EU constitute GIs but that in other

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enhance GIs protection seems to emphasize the importance o local culture and

tradition in the ace o globalization.It is true that TRIPS provisions oers legal instruments or the protection o

uture GIs, while also protecting illegal uses beore it went into eect84. Althoughthese provisions undoubtedly represent a considerable improvement with respectto that which existed under WIPO, TRIPS did not create a complete protectionsystem. Quite the contrary, these provisions continue generating considerable legaluncertainty. This is also true with regard to the existing imbalance between protec-tion levels, leading to an additional protection or wines and spirits, as comparedto other products.

For these reasons, the work on TRIPS is ar rom nished and the debatebetween new and old world continues to be divisive in the urtherance o TRIPSgoal o protecting IPR and global economic interests. By virtue o the programincorporated into the text o the Agreement, provisions relative to GIs protection oGIs must evolve towards a more eective model o protection. However, in spiteo the major concessions and the huge eorts made by some WTO Members andthe positive movement to review their previous positions so that to put an end tothe deadlock that has continued or so many years, the 2010 Report o the TRIPSCouncil President reveals that doubts persist and there remain fundamental differ-

ences about the key issues of participation and the consequences/legal effectsof registrations, even if there has been some movement in the past monthstowards a single document or discussion, identiying elements o convergenceemerging out o the ongoing discussions.

The Register should be an accurate, reliable and authentic source o inormation.However, WTO Members sponsoring the minimalist approach do not consideracceptable the legal presumptionor a number o reasons: rstly, it would increaseGIs legal protection, and this would be outside the scope o this negotiation, which

countries are used generically to indicate a type or kind o product. The proposal aimed to clawback such names by reserving their use or EU producers in the geographical locations. Someother WTO Members argued that the Doh

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