By Peter Ungphakorn
POSTED DECEMBER 4, 2022 | UPDATED DECEMBER 5, 2022
No one noticed when these World Trade Organization negotiations passed their 25th anniversary in early 2022. It was no surprise since WTO members had not even bothered to meet in these talks for a decade, except to appoint a new chair and tidy up other administrative issues.
This is about geographical indications — names associated with specific production areas, such as Champagne wine, Scotch whisky or Caerphilly cheese.
The negotiations are not about protecting the names as such. That was settled in the 1994 intellectual property agreement, although some countries want more.
Rather, these talks are about creating in the WTO a multilateral register for geographical indications for wines and spirits. They are the only officially recognised negotiations on intellectual property in the WTO.
And although they’ve been stuck in limbo since 2012, before that the negotiations did manage to narrow gaps between diametrically opposed positions until they could proceed no further.
The achievement is subtle but significant. The failure of WTO negotiations more broadly prevented members from taking the final steps, although that could not be guaranteed even in a better atmosphere.
Continue reading or jump to:
Mandate | Slow start, even slower ending | ‘Thou shalt protect it’ v ‘FYI’ | Coalition-building | Reference: The WTO website
Mandate
In practice, there have been other WTO intellectual property talks that most people would call “negotiations”, such as waiving countries’ obligation to protect patents on COVID-19 vaccines. On that — and an earlier decision on compulsory licensing to produce medicines for export — members were even able to reach agreement.
They were de facto negotiations.
TRIPS
= “Trade-related aspects of intellectual property rights”.
The name sets the boundaries of the subject within the WTO’s area of responsibility — “trade-related”
The talks on the register for wines and spirits have a more official status.
They have a specific mandate for negotiations.
They take place in a bureaucratic structure set up specifically for negotiations — the “special sessions” of regular committees, in this case special sessions of the intellectual property (or “TRIPS”) Council.
The original mandate comes from Article 23.4 of the intellectual property (TRIPS) agreement. It says:
4. In order to facilitate the protection of geographical indications for wines, negotiations shall be undertaken in the Council for TRIPS concerning the establishment of a multilateral system of notification and registration of geographical indications for wines eligible for protection in those Members participating in the system.
Article 23.4 only mentions wines. Spirits were added when the negotiations were rolled into the Doha Round, launched in 2001, and the mandate “to negotiate” was repeated (see paragraph 18 of the Doha Declaration).
Wines and spirits have a special status under WTO rules for geographical indications.
In general, members have agreed they will protect geographical indications in order to avoid misleading the public and prevent unfair competition (TRIPS Agreement Art.22).
For wines and spirits, the agreement is to protect the names outright, even if there is no risk of confusion or unfair competition, sometimes called a “higher” level of protection (TRIPS Agreement Art.23).
A number of exemptions are made, for example when a name has become generic, such as “cheddar” cheese in many countries (TRIPS Agreement Art.24 paragraphs 4 to 8).
Slow start, even slower ending
The first meeting in the negotiations was in the intellectual property (TRIPS) council on February 27, 1997. The minutes (paragraphs 73 and 74) record a brief statement from the chair proposing that members start with preliminary information gathering. There was no debate.
The negotiations gradually became much more sophisticated and detailed. By 2011, members were working on a draft “composite text” — a single text compiled from various proposals, complete with notes identifying the countries that had proposed alternative wording that was scattered throughout the draft.
The April 2011 draft was only seven and a half pages long. It had 145 pairs of square brackets, on average almost 20 per page, each pair representing contested text.
Pulling the various strands into a single text meant further negotiations ought to be simpler even though the number of alternatives that had to be sorted out was immense.
But by then the Doha Round was fading away. With no opportunity to use trade-offs with other subjects in order to break the deadlock on the register, these talks too ground to a halt.
By late 2022, the talks’ chair (yes there still is one) circulated his annual report. He was going through the motions. His report was yet another statement of the obvious. Members had not met. They did not want to meet. They had better things to do. (Expressed a bit more diplomatically than that.)
But if they ever want to take the subject up again, they do not have to start from scratch.
‘Thou shalt protect it’ v ‘FYI’
One of the controversies at the heart of the deadlock is the question of the legal effect of putting a name — such as Cognac — on the register.
The difference is based on the way the WTO intellectual property agreement does not interfere in how each country’s legal system protects geographical indications, so long as the basic principles are observed.
How a name is protected, and how legal challenges are handled is up to each country. That includes, for example, the procedures and evidence for determining whether a name is a legitimate geographical indication and whether it has become generic.
On one side (the EU and allies) was the argument that once registered, the name (eg, Cognac) should be protected in all other WTO members (with some exceptions).
The other side (US, Australia and allies) said the register should have no legal effect at all: it should simply be a passive database of information. Any other legal effect would be “extra-territorial” — the law of a country that had approved protection for the name and registered it, would have an impact on the laws of the rest of the WTO membership. The WTO deliberately avoids that, they said.
Crudely, the debate was “thou shalt protect it too” versus “FYI only”.
These two extreme positions softened.
One side was now arguing that registering a name should create a “rebuttable presumption” or “prima facie” evidence that the name is potentially a valid geographical indication.
The other side would accept a text that distinguished between countries that were voluntary participants in the register and those that chose not to participate. Participants would have to “consult” the register. Non-participants would be encouraged — but not obliged — to do so. Consulting the register would not create legal obligations.
The evolution was partly the result of attempts to mediate, particularly by Hong Kong.
Coalition-building
In 2008, a group of countries proposed that the negotiations on the register be conducted in parallel with talks on two other intellectual property subjects:
- Extending to all products the “higher” level of protection currently given only to wines and spirits (“extension”). This would also extend the register beyond wines and spirits. Not only do members’ opinions differ on this, they also disagree on whether it is what was intended in the provisions on “international negotiations” under TRIPS Art.24.
- Requiring patent applicants to disclose the origin of any genetic material or traditional knowledge used in their inventions, and any consent agreement reached with the communities owning the material on its use (“disclosure”)
The proposal to negotiate these two subjects in parallel with the register allowed the EU, India, Brazil and others to form a large coalition in all three subjects.
But there was still no consensus among the whole membership to add them to the negotiations. The coalition’s greater weight could not change that.
Reference: The WTO website
The WTO website’s coverage of geographical indications is here. Its page listing all documents circulated in the negotiations is here, up-to-date at least to 2015.
Meanwhile, this is how the WTO website describes the debate (accessed December 2022, hyperlinks modified):
Three sets of proposals have been submitted over the years, representing the two main lines of argument in the negotiations and some proposed compromises. The latest are (documents downloadable from Documents Online on the WTO website):
- The EU’s detailed proposal (TN/IP/W/11) circulated in June 2005 calls for the TRIPS Agreement to be amended (by adding an annex to Article 23.4).
The paper proposes that when a geographical indication is registered, this would establish a “rebuttable presumption” that the term is to be protected in other WTO members — except in a country that has lodged a reservation within a specified period (for example, 18 months). A reservation would have to be on permitted grounds. These include when a term has become generic or when it does not fit the definition of a geographical indication. If it does not make a reservation, a country would not be able to refuse protection on these grounds after the term has been registered.
- A “joint proposal”, document TN/IP/W/10/Rev.4, was first submitted in 2005 and revised several times. Its sponsors are: Argentina, Australia, Canada, Chile, Costa Rica, Dominican Republic, Ecuador, El Salvador, Guatemala, Honduras, Israel, Japan, Republic of Korea, Mexico, New Zealand, Nicaragua, Paraguay, Chinese Taipei, South Africa, the US.
This group does not want to amend the TRIPS Agreement. Instead, it proposes a decision by the TRIPS Council to set up a voluntary system where notified geographical indications would be registered in a database. Those governments choosing to participate in the system would have to consult the database when taking decisions on protection in their own countries. Non-participating members would be “encouraged” but “not obliged” to consult the database.
- Hong Kong, China has proposed a compromise (document TN/IP/W/8). Here, a registered term would enjoy a more limited “presumption” than under the EU proposal, and only in those countries choosing to participate in the system.
These three proposals have been laid out side by side so that they can be compared easily, in a Secretariat paper (document TN/IP/W/12 of 14 September 2005 with additions in May 2007). An earlier compilation is in various versions of the 2003 document TN/IP/W/7. All of these are available on Documents Online.
At the heart of the debate are a number of key questions. When a geographical indication is registered in the system, what legal effect, if any, would that need to have within member countries, if the register is to serve the purpose of “facilitating protection” (the phrase used in Article 23.4)? And to what extent, if at all, should the effect apply to countries choosing not to participate in the system. There is also the question of the administrative and financial costs for individual governments and whether they would outweigh the possible benefits.
Opinions are strongly held on both sides of the debate, with some highly detailed arguments presented by each side.
As an idea of the issues under negotiation, the main headings of the latest [2005–07] Secretariat compilation (TN/IP/W/12) are:
- Preamble
- Legal form
- Participation
- Notification (mandatory elements, optional elements, format and other aspects)
- Registration (“formality examination”, reservations, content of registrations, form of register)
- Consequences of registration (in participating members, in non-participating members, in least-developed country members)
- Duration and renewal of registrations
- Modifications and withdrawals of notifications and registrations
- Fees and costs
In July 2008, a group of WTO members called for a “procedural decision” to negotiate three intellectual property issues in parallel: these two geographical indications issues, and a proposal to require patent applicants to disclose the origin of genetic resources or traditional knowledge used in their inventions (see document TN/C/W/52 of 19 July 2008). But members remain divided over this idea, opponents arguing particularly that the only mandate is to negotiate the multilateral register.
Updates:
December 5, 2022 — editing, including clarifying that the group with the US etc envisaged voluntary participation in the register with slightly different implications
Image credits:
Main photo (archive filing cabinets) | Ula Kuźma, Unspalsh licence
Girl reading between wooden cabinets | Tima Miroshnichenko, Pexels licence
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