In 2005, the EU submitted a proposal under the Doha Round at the World Trade Organization (WTO) on a multilateral register for GIs, introducing a legally binding system requiring member states to report their GIs to the WTO. WTO members would then be required to block any trademark application that contained a registered GI.

But during yesterday’s committee meeting, Luc Pierre Devigne of the European Commission told members that the EU now proposes a register in which GI holders can publish their GIs multilaterally for notification, but would have to go through the national register of each country to obtain legal protection. However, registering through the WTO would provide the GI holder protection against “negative evidence,” such as having to prove that a mark is not generic. “This way, if someone challenges my GI, they have to bring the evidence against me,” said Devigne.

The WTO has been considering a multilateral register covering wines and spirits for some time, but the EC’s 2005 proposal was bundled with plans to extend GI protection beyond wines and spirits. Devigne did not clarify during Tuesday’s meeting whether that would still apply under the new register.

Lynne Beresford, Commissioner for Trademarks at the USPTO, also attended the meeting and outlined the US position on a WTO register for GIs. Beresford said that the US scheme would simply provide notice of GIs with no legal effect. Devigne described this as “a system that’s essentially GOOGLE.”

In an effort to break the deadlock on the issue, which has been pending since 2001, INTA has devised a proposal on a WTO registry for wines and spirits, suggesting a voluntary system for registering GIs (which would be neutrally termed “Domestic Article 23 registers”, after the section of TRIPs which relates to the protection of GIs for wines and spirits) through the WTO or WIPO.

INTA representatives said that the organization should have its proposal in writing soon, at which time it will become subject to comment from the trademark community.