Geographical Indications: Prospects for the development of the International Legal Framework

1. Geographical Indications: Prospects for the development of the International Legal Framework Tegan BrinkAustralian Permanent Mission to the WTO, Geneva, Switzerland

2. Australia’s Interests • New world country founded on immigration • inherited many European names and traditions • Large agricultural exporter • including dairy products • Systemic interest in the IP system

3. International Context • Increasing business interest and use of GIs • No agreement on GI proposals in the WTO • Little, if any, work on GIs in WIPO

4. What Prospects? • The current legal framework for GIs is working well • There may be scope for further work & cooperation on GIs • But rewriting TRIPs neither necessary nor desirable.

5. The EC’s proposals in the WTO • Extension: to extend the higher level of protection provided to wines and spirits in Art 23 of the TRIPs Agreement to all products (TN/IP/W/11) • Register to facilitate the protection of GIs for all products (TN/IP/W/11) • “Clawback”: a list of 41 terms submitted in the agriculture negotiations that the EC would like to reserve for the exclusive use of its producers (includes, feta, parmesan and champagne).

6. Australia’s position • Oppose negotiations on GI-extension • no problem with current system; commercial and systemic concerns with EC proposal. • Support a voluntary register which facilitates the protection of wines and spirits GIs but does not increase that protection. • Oppose clawback • unjustified, discriminatory, illegal

7. GI-extension (1) Main arguments in favour of extension: • Current dual level of protection discriminates against products that are not wine and spirits. • Art 22-level protection is inadequate

8. GI-extension (2) Responses: • Discrimination alone does not justify extension • historical reasons: Art 23 result of a “deal”. • No evidence why current system is inadequate • problem with current rules or with their enforcement? • GIs already eligible for higher protection through TM systems • eg. Parmigiano-Reggiano, Roquefort, Ceylon tea, Jamaica Blue Mountain Coffee all protected as certification marks in Australia.

9. GI-extension (3) Development benefits? • Would specific developing country products be eligible for protection? • GIs are marketing tools – worth little without investment in the brand. • GIs do not create quality • GIs do not guarantee access to markets • Numbers: a fair trade?

10. Australia’s concerns withGI-extension • Costs to governments, producers and consumers. • Wine is not cheese! • Costs of relabelling and remarketing • Risks in export markets and new markets • Links to the register

11. Implications in Export Markets The case of feta • Current situation • Extension • Extension plus register

12. Register(1) • In-built agenda - wines and spirits register negotiations mandated by TRIPs Art 23.4: • In order to facilitate the protection of GIs for wines [and spirits], negotiations shall be undertaken in the Council for TRIPs concerning the establishment of a multilateral system of notification and registration of GIs for wines eligible for protection in those Members participating in the system”.

13. Register (2) • 3 proposals • Joint Proposal cosponsored by 17 Members including Australia (TN/IP/W/10) • Hong Kong Proposal (TN/IP/W/8) • EC proposal (for all products) (TN/IP/W/11)

14. Register (2) • Key Issues: • Participation: voluntary or mandatory? • Legal Effects: obligation to consult or obligation to protect? • Costs and Burdens

15. Participation • Joint Proposal is voluntary • HK Proposal is voluntary (but with a review clause) • EC proposal is not voluntary • If you don’t object to the inclusion of a term (ie participate!) you can’t deny protection to it on such grounds that the term doesn’t meet the definition of a GI in your country or is generic.

16. Legal Effects • Purpose of system is to facilitate protection • But what does facilitate mean? • Joint Proposal: information-based. • EC proposal: registration = presumption of protection in all Members. • Hong Kong proposal: registration = (more limited) presumption of protection in all Members.

17. Joint Proposal • Searchable database • National offices would commit to consult the database, allowing them to make more informed decisions. • Key features: • voluntary–no burdens on non-participating Members. • preserves existing balance of rights & obligations • minimal costs • preserves the territoriality of IP rights. • continues to allow WTO Members to determined for themselves the appropriate method of implementing the TRIPs Agreement, in line Art I:1.

18. EC Register • All terms would be presumed to be protected in all markets • Unless you engage in a complex reservations process • If not, would waive right to decline protection on such grounds as the GI not meeting the definition of a GI, or being generic in its territory • presumption of protection would be irrebutable • The burden would then shift to other interested parties to rebut the presumption on such grounds as prior use, if permitted under the national law.

19. Australia’s concerns • Inconsistent with negotiating mandate: • applies to all products • mandatory participation • increases protection does not facilitate it • Impact on balance of rights & obligations in TRIPs • legal presumptions • limitations on existing exceptions • Inconsistency with IP principles • Costly and burdensome

20. Implications in Export Markets (2) The case of feta (continued) • GI-extension + register • Presumption of protection • No need to seek protection or meet definition • Burden would shift to other parties to defend prior use • No possibility to invoke generics exception unless government in export market has lodged an objection • RESULT = De facto and near universal protection of feta as a Greek GI (“clawback by stealth”)

21. Legal Presumptions • Why should burden of proof fall on existing users of a generic term, rather than the party seeking exclusive use of the term? • Why should the existing exception for generic terms be subject to bilateral negotiations? • Presumptions alter the balance of rights and obligations – does not just facilitate, but increases protection • Unclear how presumptions could be implemented in systems that use TMs to protect GIs.

22. EC RegisterImplications for IP Law (1) Government-negotiated IPRs? • Requires active government involvement in asserting and defending private rights • Inconsistent with the principle that IPRs are private rights

23. EC Register Implications for IP Law (2) Universal IP? • GI status in country of origin would have legal consequence for its status in other countries. • Inconsistent with the principle of territoriality in TRIPs • The term would be presumed to have a certain quality or reputation in all overseas markets that would entitle it to TRIPs-level protection regardless of whether it has ever been sold in those markets.   • Reservations system doesn’t solve this.

24. What about the Madrid System? • Not an appropriate model for GI register in TRIPs • Developed through incremental harmonisation • No such convergence in national GI systems • Outstanding questions • Will registered GIs be published? • Will there be national opposition procedures? • Harmonisation well beyond TRIPs – better placed in WIPO. • And Madrid can currently be used to protect GIs as certification marks… So what’s the problem with the current framework?

25. Limitations to a WTO outcome • Contested mandate • Overreaching proposals • Inconsistent with goals of Doha round • Lack of widespread support • Inconsistent with TRIPs principles • Link to agriculture negotiations • Presuppose a greater harmonisation than exists

26. Starting points for a more constructive debate • Avoid improper accusations of ‘usurpation’ • Respect consumers choices • Accept that some terms have become generic • Reconcile any TRIPs proposals with the TRIPs Agreement • recognise & accommodate different GI systems • get the balance right • Accept that to achieve greater harmonisation, further work is required…in WIPO.

27. Thank you! Any further questions? tegan.brink@dfat.gov.au