The multilateral register for geographical indications and the doha mandate

AutorGail E. Evans
The multilateral register for geographical
indications and the Doha mandate
Sumario: Introduction I. The European proposal for a multilateral register 1.1 Noti cation 1.2. Reservations
and bilateral negotiations 1.3. Incorporation of the Lisbon Agreement II. Upsetting the balance of
rights and obligations within trips: the case of generic designations. 2.1. The exception for generic
designations under TRIPS . 2.2. The EC register and the reservation procedure 2.3. Reversal of the
burden of proof 2.4. Presumption of eligibility for protection 2.5. Immunity of protected names from
genericism 2.6. Withdrawal of “feta” from the public domain in Europe 2.7. Erosion of the TRIPS
exception for generic terms 2.8. Incorporating gains from bilateral trade agreements III. Priority of
rights in cases of con icting trademarks and Gis 3.1. The principle of coexistence 3.2. Competing
regulatory models in bilateral trade agreements IV. Convergence in the conceptual foundations
of GI and Trademark systems 4.1. The DOHA mandate as a catalyst for convergence 4.2. The
commercialization of traditional knowledge V. Rationale for a two-tiered multilateral register VI.
In accordance with Article 23 of the Agreement on Trade-Related Aspects of Intel-
lectual Property (TRIPS), Members of the World Trade Organization (WTO) are mandated
to create a multilateral system for notifying and registering geographical indications for
wines and spirits.1 Going beyond the original mandate, a novel proposal by the European
Communities (EC) 2 for a multilateral system of registration seeks to extend the higher
level of protection available exclusively for geographical indications (GIs) relating to wines
and spirits, to all products. The EC model of a multilateral register, one that that is open to
1 WTO Member States agreed to negotiate a multilateral system of noti cation and registration of geographi-
cal indications for wines and spirits: TRIPS Article 23(4); see also Doha Declaration, paragraph 18 which
states that “issues related to the extension of the protection of geographical indications provided for in
Article 23 to products other than wines and spirits are to be addressed in the Council for TRIPS pursuant
to paragraph 12 of this declaration.” See further Doha Declaration, paragraph 12, concerning implementa-
tion-related issues.
2 See World Trade Organization, General Council, Trade Negotiations Committee, Council for Trade-Related
Aspects of Intellectual Property Rights, Special Session on Geographical Indications, Communication
from the European Community 14 June 2005, WT/GC/W/547, TN/C/W/26, TN/IP/W/11 [hereinafter EC
Proposal]. See also submissions of the EC, 22 June 2000, IP/C/W/107/Rev.1 with respect to the register,
and submission of 2002 in respect of the extension, IP/C/W/353 24 June 2002.
Anuario Andino de Derechos Intelectuales.
Año III - N.º 4. Lima, 2008
geographical indications for agricultural products as well as handicrafts, has been identi ed
by a number of developing countries, including India, Kenya, Morocco, Thailand, Turkey
and Venezuela, as potentially bene cial to their economic development.
GIs have the capacity to provide small to medium agricultural producers with a means
to achieve both product differentiation and nancial stability. GIs constitute a possible
means of changing from quantity-based to quality-based exports, by creating a system that
would allow consumers to recognize and pay a premium price for high-quality products
that are produced by traditional raw materials or methods, exclusively within those re-
gions where the products were originally associated.3 Accordingly, a multilateral system
of registration that would give presumptive protection to GIs for all agricultural products
would potentially facilitate market differentiation and premium pricing for a variety of
common commodities produced by developing countries, such as rice, tea and coffee.
Worldwide registration of “Café de Colombia” for example, is part of a larger initiative
by the National Federation of Coffee Growers of Colombia to rely on the protection of
GIs to attract a premium price and increase their global market share.4
Nonetheless, developing countries remain divided not only over the bene ts of ex-
tending multilateral registration to all products, but also over the character and legal effect
of a multilateral register for geographical indications. Opponents of the EC Proposal, led
by the United States, disagree with the creation of a multilateral system of noti cation
and registration of GIs for wines and spirits, or any other products, which is mandatory.
Instead, this “New World Coalition” of WTO Members is advocating a system of voluntary
noti cation and registration without any extension of registerable products or increase in
their existing standard of protection. Developing country supporters of this Joint Proposal
for a Multilateral System of Noti cation and Registration5 including Argentina, Chile,
Colombia, Ecuador, the Dominican Republic and Philippines, claim that registration of an
3 Article 22 of the TRIPS Agreement de nes geographical indications as “indications which
identify a good as originating in the territory of a Member, or a region or locality in that territory,
where a given quality, reputation or other characteristic of the good is essentially attributable
to its geographical origin.”
4 Of cial Journal L 240, 13/09/2007, Regulation (EC) No 1050/2007 of 12 September 2007 registering certain
names in the Register of protected designations of origin and protected geographical indications (Mejillón
de Galicia or Mexillón de Galicia (PDO) — Café de Colombia (PGI) in the form of the green beans. If it
proceeds to registration, only products complying with the PDO’s speci cation may be sold in the EU under
the designation ‘Café de Colombia’. The Coffee Growers of Colombia are seeking to register Café de Co-
lombia as a Protected Designation of Origin (PDO).106 The recently became the rst foreign association of
producers to obtain European-wide protection for ‘Café de Colombia’ as a denomination of origin
5 See “Joint Proposal for a Multilateral System of Noti cation and Registration of Geographical Indications
for Wines and Spirits”, Communication from Argentina, Australia, Canada, Chile, Ecuador, El Salvador,
New Zealand and the United States, TN/IP/W/9, 13 April 2004 [hereinafter “Joint Proposal”]; and “Multi-
lateral System of Noti cation and Registration of Geographical Indications for Wines (and Spirits)”, Com-
munication from Argentina, Australia, Canada, Chile, New Zealand and the United States, TN/IP/W/6, 29
October 2002; and “Proposal for a Multilateral System for Noti cation and Registration of Geographical
Indications for Wines and Spirits based on Article 23.4 of the TRIPS Agreement’, Communication from
Argentina, Australia, Canada, Chile, Colombia, Costa Rica, Dominican Republic, Ecuador, El Salvador,

Para continuar leyendo

Solicita tu prueba

VLEX utiliza cookies de inicio de sesión para aportarte una mejor experiencia de navegación. Si haces click en 'Aceptar' o continúas navegando por esta web consideramos que aceptas nuestra política de cookies. ACEPTAR