INTERNATIONAL / GEOGRAPHICAL INDICATIONS / WTO

Geographical Indications and Trade Marks: the Road from Doha

Burkhart Goebel

Trademark Reporter, Vol 93 No.4, July-August 2003

"One type of Intellectual Property," according to the author of this article, "has profited exceptionally from the TRIPs Agreement: geographical indications." But, while most Member States of the World Trade Organisation are still in the process of implementing TRIPs, the "Doha Round" (the new round of negotiations agreed to at the Fourth Ministerial Conference of WTO at Doha) has given geographical indications a new boost. The author describes the present legal position, with particular reference to Article 22 of TRIPs and to the provisions of paragraph 3 of that Article governing the relationship between geographical indications and trade marks. He goes on to describe the specific provisions on trade marks, defined in Article 16 of TRIPs; trade mark protection; trade mark exclusivity as a fundamental right; and the conflict between trade marks and geographical indications. He quotes the Parma Ham case (a protected designation in Italy, with a conflicting registered trade mark in Canada) to illustrate the operation of Article 24 of TRIPs on coexistence; and he refers to the general view held by the European Community authorities about the "superiority" of geographical indications over trade marks. This view leads to the proposition that the WTO rules need to be extended - a decision in the Doha Round following necessarily from the terms of Article 23(4) of TRIPs; in particular, the plan for a multilateral system for the notification and registration of geographical indications. The author reviews the various proposals for the establishment of the system. The United States, Canada, Chile, Japan and a number of like-minded states prefer a non-binding system under which Member States may notify their geographical indications to the World Trade Organisation, which would maintain a data base for the information of other Member States. The European Community and Hungary prefer a system of registration based on the Lisbon Agreement on the Protection of Appellations of Origin and on the EC Regulation EC/2081/92. Hong Kong (China) supports a system of formal notification to the WTO, creating a rebuttable presumption in favour of owners of geographical indications. The author also describes proposals by the International Trademark Association. He continues by noting the second battle ground over geographical indications; namely, the extension of TRIPs protection to a wider range of products, and the third battle ground, chosen by the European Community, on the "clawback" of geographical indications at present considered to be generic. An example is champagne, which is "perceived", according to the European Community, as a generic term for sparkling wine, with the result that a trade barrier is created. As the author says, the European Community's proposal was made in the course of WTO's agricultural negotiations. The author concludes by saying that the Doha Declaration has placed the protection of geographical indications on the agenda for WTO negotiations and that attempts to facilitate that protection, given the widely different national systems, should be welcomed. [20103]