Worldwide Symposium on Geographical Indications Jointly organized by WIPO and the Italian Ministry of Productive Activities Parma (Italy), 27-29 June 2005

The Way Ahead – What Future for Geographical Indications?

Extension of the more effective protection of Article 23 of the TRIPS Agreement to all products

Felix Addor, Switzerland*

In the absence of a consensus in Cancún, the 5th Ministerial Conference of the World Trade Organization (WTO) closed with a six-paragraph Ministerial Statement1. The Statement instructs Member governments’ officials to continue work on outstanding issues with a renewed sense of urgency, taking fully into account the views expressed in the Cancún Ministerial Conference. Following these instructions, the General Council (GC) of the WTO adopted a decision on August 1, 20042, in which it reaffirmed the mandates of the Doha Ministerial Declaration and renewed Members' determination to find appropriate solutions to outstanding implementation- related issues. With regard to the issue of extending the level of protection accorded under Article 23 of the TRIPS Agreement to geographical indications (GIs) for wines and spirits to all products (GI-extension), the GC requested the Director-General (DG) of the WTO to continue the consultative process he launched in 2003. The General Council shall review progress and take appropriate action on GI-extension no later than July 2005.

This paper discusses the issue of the extension of the more effective protection of Article 23 TRIPS Agreement to all products, one of the main issues currently under debate in the field of intellectual property in the WTO.

1. Issue under debate The TRIPS Agreement3 reserves the more effective protection of Article 23 TRIPS to GIs for wines and spirits. Thus, it does not prohibit the usurpation and illegitimate use of GIs such as “Geneva watch made in the United States,” “Pruneaux d’Agen from Argentina,” “Canadian Parma Ham” or “Ceylon Tea made in Malaysia.” According to the present level of protection under Article 22 TRIPS, it is sufficient to simply indicate on a product, even in small print or on its back only, its true origin in order for such illegitimate use of a GI not to be misleading and

* The author is Head of the Swiss Delegation to the WTO/TRIPS Council, Deputy Director General and Chief Legal Officer of the Swiss Federal Institute of Intellectual Property (Ministry of Justice, Berne/Switzerland). The author would cordially like to thank Martin Girsberger, Alexandra Grazioli and Mathias Schäli for their precious input. The views expressed in this paper are, however, solely those of the author. They do not necessarily reflect those of Switzerland. The author is grateful for any comments with regard to the issue of the protection of geographical indications in general or this paper in particular. He may be contacted at [email protected]. 1 WTO Doc WTO/MIN(03)/W/24 of 14 September 2003. 2 WTO Doc WT/L/579 of 2 August 2004. 3 WTO Agreement of 15 April 1994 on Trade-Related Aspects of Intellectual Property Rights. Felix Addor (Switzerland) – ‚The Way Ahead – What Future for GIs: GI-extension’, Parma / Italy, 27-29 June 2005

therefore permissible. In contrast, the label “Chilean Tequila” or “Napa Valley-type Red Wine, produced in Argentina” is – as consequence of Article 23 TRIPS – unlawful. Thus, under the current provisions of the TRIPS Agreement, producers of products such as rice, coffee, tea, cheese, watches, silk, cigars, ceramics and carpets, which are legitimately using the geographical indication of their products, are clearly discriminated against.

The purpose of the extension of the protection of Article 23 TRIPS to products other than wines and spirits is to confer the more effective level of protection to GIs of all products, and thus to put producers of least-developing, developing and developed countries on an equal footing, irrespective of the category of products concerned.

Unlike in many other instances in the WTO, geographical indications are an issue where the dividing line among Members is not congruent with the North – South divide. Instead, it is rather a controversy between ‘emigrant’ countries (Europe, Africa and parts of Asia) and ‘immigrant’ countries (USA, Australia and Latin American countries). The issue of GI-extension is of particular interest to least-developing and developing countries because of the importance of the remunerative marketing of their agricultural, handicraft and artisan production. In addition, GIs have features that respond to the needs of indigenous and local communities and small farmers: GIs are based on collective traditions and a collective decision-making process; they reward traditions while allowing for continued evolution; they emphasize the relationship between human efforts, culture, land, resources and the environment; and they are not freely transferable from one owner to another4.

2. Current state of discussion at the WTO Pursuant to the Doha Declaration5 and the decision of the Trade Negotiation Committee (TNC) of February 2002, issues related to GI-extension were first addressed as a matter of priority in the regular meetings of the TRIPS Council, which, by the end of 2002, should have recommended to the TNC appropriate action6. Given the persistent divergence among WTO Members on whether there exists a mandate to launch negotiations on GI-extension7, it was not possible to reach a consensus on this issue before the Ministerial Conference in Cancún. This in spite of intensive consultations held by the chair of the TNC since January 2003 and, in a second stage, by the Director-General himself. Therefore, the second Draft Ministerial Text submitted to the Ministers in Cancún refers to GI-extension as an implementation issue and simply proposes the continuation of the consultations of the DG on this issue. These consultations, however, did not bring positions closer. Reaffirming the mandate given by the Doha Ministerial Declaration and renewing Members' determination to find appropriate solutions to outstanding issues, the GC decision of August 1, 2004 sets a time-table for the further work: progress of the work done in the consultation process is to be reviewed by the end of May 2005, and appropriate action on the issue of GI-extension is to be taken no later than July 20058. As agreed by the DG and WTO Members participating in the consultations held in November 2004, technical level consultations have been carried out since then, chaired by a Deputy Director-General (DDG) and supervised by the DG9.

4 See FELIX ADDOR/ALEXANDRA GRAZIOLI, Geographical Indications beyond Wines and Spirits – A Roadmap for a Better Protection for Geographical Indications in the WTO TRIPS Agreement, Journal of World Intellectual Property 2002, pp. 893-895, http://www.ige.ch/E/jurinfo/pdf/PDF-doku3.pdf. 5 WTO Doc WT/MIN(01)/DEC/1 of 20 November 2002, paras. 12 and 18. 6 WTO Doc TN/C/M/1 of 14 February 2002, in particular p. 4 and paras. 9-12. 7 Delegations interpret paras.12 and 18 of the Doha Declaration differently: for Switzerland, the EC and its Member States, many Middle and Eastern European countries, India, Kenya, Mauritius, Nigeria, Pakistan, Sri Lanka, Thailand and Turkey, among others, the text of para.18 of the Doha Declaration provides a clear mandate to launch negotiations on extension (see WTO Doc WT/MIN(01)/11 of 14 November 2002). Other WTO Members, such as Argentina or Australia, argue that this issue, like other implementation issues, can only become a subject of negotiation upon a TNC decision to that effect; see also WTO Doc WT/MIN(01)/8 of 12 November 2002. 8 WTO Doc WT/L/579 of 2 August 2004, para. 1d.

2 Felix Addor (Switzerland) – ‚The Way Ahead – What Future for GIs: GI-extension’, Parma / Italy, 27-29 June 2005

WTO Members advocating GI-extension (Friends of GIs)10 have presented in written communications to the TRIPS Council, the TNC and the GC the benefits of GI-extension for both producers and consumers from least-developing, developing and developed countries as well as for sustainable development11. They also proposed wording in draft legal form on how to modify the scope of the additional protection of Article 23 TRIPS, currently limited to geographical indications of wines and spirits, in order to extend it to all products without discrimination12. The proposal on GI-extension is designed to have effects only for the future and shall thus not affect existing uses of names that coincide with protected geographical indications to the extent that such use has been consistent with the TRIPS Agreement according to what is provided for in Article 24 TRIPS. Accordingly, WTO Members advocating GI-extension also proposed to discuss appropriate amendments of Article 24 TRIPS on exceptions of the protection for geographical indications13. The common objective of the Friends of GIs has been – is and will be – the confirmation of GI-extension as part of the Single Undertaking of the Doha Round.

WTO Members opposing GI-extension14 contest that GI-extension is part of the Doha Round mandate15. Their opposition to GI-extension even increased after the European Commission submitted, in September 2003, a list of geographical names to the negotiating group on agriculture. In a parallel strategy to GI-extension, this proposal intends to prohibit the use of specific geographical names currently used by producers other than the right-holders in the country of origin16. The latter was understood by those Members opposed to GI-extension as confirming their concerns that the ultimate goal is to achieve a “roll-back (or claw-back) protection”.

3. Trade relevance of GI-extension In the negotiations of the WTO Doha Round, WTO Members particularly aim at improving market access of products and at creating a fair multilateral framework within which the trade of such products can flow. It is in this perspective that the proposal to extend the level of protection accorded under Article 23 of the TRIPS Agreement to all products is made, since granting a more effective level of protection to geographical indications for all products – and not just for wines and spirits – is a corollary to improving market access and therefore a necessary component of the Doha Single Undertaking.

With decreasing tariffs and market support instruments, tools like GIs and their effective protection become increasingly important and even vital in view of the competition with mass production. The need for a useful marketing and trading tool to compete with bulk products in

9 As requested by Members in these consultations, the Secretariat prepared a compilation of the issues raised and the views expressed on issues related to GI-extension since the matter was put on the Doha Work Programme (see WTO Doc WT/GC/W/546 - TN/C/W/25 of 18 May 2005). 10 These include, in particular, Bulgaria, Cuba, the European Communities and their 25 Member States, Georgia, Guinea, India, Jamaica, Liechtenstein, Kenya, Kyrgyz Republic, the Former Yugoslav Republic of Macedonia, Madagascar, Nigeria, Pakistan, Romania, Sri Lanka, Switzerland, Thailand, Tunisia and Turkey. 11 Among the more recent and important communications submitted to the WTO are the following: IP/C/W/204/Rev.1 of 2 October 2000; IP/C/W/247/Rev.1 of 17 May 2001; IP/C/W/308/Rev.1 of 17 September 2001; IP/C/W/353 of 24 June 2002; TN/C/W/7 of 29 November 20002; TN/C/W/14/Add.2 of 15 July 2003; TN/C/4 of 13 July 2003; TN/C/W/21/Rev.1/Add.1 – WT/GC/W/540/Rev.1/Add.1 of 17 May 2005; JOB(05)/61/Add.2 of 17 May 2005. 12 WTO Doc TN/C/W/14/Add.2 and JOB(05)/61/Add.2. 13 WTO Doc JOB(05)/61/Add.2 of 17 May 2005, para.12; moreover, see the concrete proposals made in a submission of the EC and its Member States in TN/IP/W/11 of 14 June 2005. 14 These include, in particular, Argentina, Australia, Canada, Chile, Chinese Taipei, Colombia, the Dominican Republic, El Salvador, Ecuador, Guatemala, Honduras, New Zealand, Panama and the United States. 15 Among the more recent and important communications submitted to the WTO are the following: IP/C/W/289 of 29 June 2001; IP/C/W/360 & 386 of 8 November 2002; IP/C/W/395 of 10 December 2002; Job(05)/8 of 4 February 2005 from Australia. 16 WTO Doc JOB(03)/12/Add.1 of 5 September 2003.

3 Felix Addor (Switzerland) – ‚The Way Ahead – What Future for GIs: GI-extension’, Parma / Italy, 27-29 June 2005

the global market is identical for all the producers of traditional quality products with a specific geographical origin: Let us just think e.g. of Parmigiano-Reggiano cheese from Italy; Darjeeling tea from India, Ceylon tea from Sri Lanka or Long Jin tea from China; Antigua coffee from Guatemala, Veracruz coffee from Mexico or Mocha coffee from Yemen; Chuao cacao from Venezuela; Basmati rice from India and Pakistan and Jasmine rice from Thailand; Phu Quoc fish sauce from Vietnam; Havana cigars from Cuba; and non-agricultural products such as Thai silk from Thailand, Hereke carpets from Turkey, Swiss watches from Switzerland, Talavera ceramics from Mexico or Arita ceramics from Japan, Limoges porcelain from France, and Bobo masks from Burkina Faso.

Only by granting the additional level of protection currently foreseen in the TRIPS Agreement for GIs of wines and spirits, will the WTO system provide these producers with a useful and effective tool that will help them to adequately protect their investment and assist them in competing in the global market. The benefits of GI-extension - a better protection of GIs - will foster sustainable development of local rural communities by encouraging a quality agricultural and industrial policy; it will also foster employment in decentralised regions, support the establishment of other economic activities such as tourism, and contribute to preserving traditional knowledge and biodiversity. It is therefore crucial that in the Doha round the WTO protection of GIs is enhanced through GI-extension.

4. Possible way forward

Since the start of the Doha Round, there has been a thorough examination and an exhaustive discussion on GI-extension. In 2005, this work has taken place in technical level consultations carried out under the supervision of the WTO DG.

Following the GC decision of August 2004 - and if WTO Members are truly willing to reach a fair overall balance in the results of the Doha Round - time is now ripe for the GC to decide appropriate action on GI-extension by the end of July 2005 and to adopt guidelines for the negotiations on GI-extension in order to reach a positive result by the end of the Doha Round. These guidelines should be drafted along the following lines17:

(a) the protection of Article 23 TRIPS shall apply to geographical indications for all products; (b) the exceptions contained in Article 24 TRIPS for wines and spirits shall apply mutatis mutandis to all products; (c) the multilateral register to be established under Article 23 para. 4 TRIPS shall be open for geographical indications for all products.

At the national level, Members should establish national inventories for GIs. Furthermore, they must carefully reflect whether their own level of protection is sufficient in order to claim international protection for geographical indications. Last but not least, usurpation of GIs for products not originating from where indicated by the GI must be actively combated and geographical indications, like other intellectual property rights, consistently enforced in order to prevent more GIs from becoming generic or grandfathered. For this to be done, however, governments and producers need to have an effective level of protection for geographical indications at their hand at the international level as soon as possible – GI-extension is the answer to this quest!

17 WTO Doc JOB(05)/61/Add.2 of 17 May 2005 as well as TN/C/W/14/Add.2 of 15 July 2003, TN/C/W/7 of 29 November 2002, and WTO Doc IP/C/W/353 of 24 June 2002.

4