Attendees heading to Napa Valley or Sonoma after the end of this year’s Annual Meeting may be hoping to leave thoughts of trademarks far behind, as they enjoy a glass or two of wine and take in some of the region’s beautiful scenery.
Unfortunately it may not be that easy, as the issue of how trademarks should interact with the rights given to geographical indications (GIs) for wines and spirits remains contentious. The WTO’s TRIPs Agreement provides for a heightened level of protection for wines and spirits but, despite plans for a register being included in the 2001 Doha Declaration, little progress has been made. The debate, unlike a good wine, has not really improved with age. But in March this year a single draft text of how the register might work was finally produced and there seems to be renewed momentum behind the negotiations.
That draft text, however, contains 208 sets of square brackets, rending it almost unreadable and highlighting that there is a long way to go before a deal is struck. In a session today INTA has assembled speakers representing the main groups in the debate to try and explain the debate and discuss a way forward.
The main camps
The WTO has split into two groups on the issue of GIs (see box). During today’s session Michael Arblaster of IP Australia and Amy Cotton of the USPTO will be explaining the Joint Proposal. This suggests that the GI register should be only a voluntary database that participating countries could consult when considering other GI and trademark applications.
These fears are misplaced, according to Pedro Velasco-Martins, who works at the Directorate General for Trade at the EU and will be putting the case for the so-called W-52 group. He is clear that the registry must have “some kind of legal effect” and is aiming to allay fears that brand owners may have over how such a system should operate. “A GI is a way of adding value to a product—there is nothing diabolical about it,” he says.
Further complicating the issue is the question of expansion. The W-52 group is also proposing to consider the issue at the same time as a proposal to widen the register to cover other agricultural products and to incorporate aspects of the UN Convention on Biological Diversity relating to disclosure of genetic resources into TRIPs. Both these proposals are strongly backed by some developing countries, but fiercely opposed by other interest groups, especially in the US.
The compromise proposals
“There is a huge philosophical difference between the two sides,” says Scott Gerien of Dickenson, Peatman & Fogarty. Gerien will be moderating a session that he views as an opportunity to share ideas and positions more openly than at the WTO. Gerien has helped Napa Valley Vintners to obtain GIs in India and the EU as well as certification marks in the US, China, Taiwan and Canada. He is a proponent of a solution proposed by INTA, which involves a system similar to the Madrid Protocol and allows GI applications to be opposed on the basis of prior trademark rights.
No country has adopted INTA’s position before the WTO, but Hong Kong has put forward a compromise proposal that will be explained by Peter Cheung, director of the Hong Kong IP Department. “Hong Kong China has no vested interest in this GI registry—we are merely trying to provide good offices,” says Cheung.
Negotiations at the WTO are never simple. Thu-Lang Tran Wasecha, a counselor in the IP Division at the WTO, will explain the latest status of the negotiations and outline some of the hurdles that need to be overcome. In the meantime, trademark owners at the Annual Meeting would be well advised to attend this session so that they can enjoy that post-Meeting glass of wine confident that they are up to date with a complex issue that is likely to be negotiated for years to come.
The GI debate at a glance
Article 22 of TRIPs states that GIs have to be protected and Article 23 gives enhanced protection to wines and spirits. These have to be protected, even if misuse would not mislead the public. Article 24 lays out exceptions to GI protection, including when a name has become common or generic and, in certain circumstances, when a term has already been registered as a trademark.
Paragraph 18 of the Doha Declaration of 2001 states that members agree “to negotiate the establishment of a multilateral system of notification and registration of geographical indications for wines and spirits.”
The contentious areas
Notification—how a GI term would be notified
Registration—how the register would be run and what would be the role of the WTO Secretariat
Legal effects—what are the obligations on members if a term is registered?
Fees and costs—should the user pay, or should the WTO contribute?
Developing countries—what special treatment should be given?
Participation—should the system be voluntary, or would a GI registration affect all WTO members?
The Joint Proposal group (including Australia, Canada, US, Mexico, Japan and South Africa) is for a database system that members could choose whether or not to participate in. Countries that do take part would then consult this database when considering protection of trademarks or GIs in their jurisdictions.
The W/52 group (including the EU, Switzerland, India, Brazil and China) has a proposal in the form of a blueprint. This envisages a system that applies to all members, although they could choose whether to register their own GIs. All members would have to use a registration as prima facie evidence that the term meets the definition of a GI.
Hong Kong has proposed a compromise in which a registration would be preliminary prima facie evidence, but only in those countries that choose to take part in the system. The voluntary basis of the system would be reviewed after four years.
On March 3 this year Darlington Mwape of Zambia, who is chairing the negotiations, presented a complete text on the proposed register that included 208 sets of square brackets indicating disagreements. He described the drafting as “fragile” and a “work in progress.”
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