WORLD TRADE
ORGANIZATIONTN/IP/W/1
9 April 2002
(02-1894)
Council for Trade-Related Aspects
of Intellectual Property RightsSpecial SessionOriginal:  English
COMMUNICATION FROM THE UNITED STATES
The Secretariat received a copy of the following document from the United States on
8 March 2002, with the request that it be circulated.
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QUESTIONS AND ANSWERS
Comparison of
IP/C/W/107/Rev.1
1 ("EC Proposal")
IP/C/W/133/Rev.12 ("Joint Proposal")
IP/C/W/2553 ("Proposal by Hungary")
I. EC PROPOSAL
- Members who wish to participate in the Register submit a  declaration  to the Secretariat, then
notify their geographical indications to the Secretariat, which transmits them to all Member
States, not just participating Members.
- Each Member, whether participating or not, has 18 months to examine the notified terms to
determine whether the notified terms meet the TRIPS definitions, the exceptions, or thereceiving country’s own statutory laws, and to file an objection if they find grounds for doing
so.
- If the terms are not examined and challenged by a Member, they must be protected by that
Member whether it is participating in the system or not.
- If the terms are examined and found to fall into one of the exceptions, for example, if a
proposed term is generic in the receiving country, or if there is a pre-existing trademark that
the geographical indications would infringe , the objecting WTO Member must forward its
objections to the Secretariat within 18 months of the notification and then enter into
negotiations with the Member notifying the term.  It is unclear what would happen should the
                                                     
1 "Implementation of Article 23.4 of the TRIPS Agreement Relating to the Establishment of a
Multilateral System of Notification and Registration of Geographical Indications" - Communication from theEuropean Communities and their member States.
2 "Proposal for a Multilateral System for Notification and Registration of Geographical Indications
Based on Article 23.4 of the TRIPS Agreement" – Communication from Canada, Chile, Japan and the United
States.
3 "Incorporation of Elements Raised by Hungary in IP/C/W/234 Into the Proposal by the European
Communities and their Member States on the Establishment of a Multilateral System of Notification andRegistration of Geographical Indications" – Proposal by Hungary.TN/IP/W/1
Page 2
negotiations fail.  Also, it is not clear what would happen if two Members notify the same
geographical indication and there is no objection within 18 months.  Presumably, all other
WTO Members would have to protect both geographical indications.
- It is likely that thousands of terms will be notified, which each WTO Member will have to
examine to determine if there are any terms to which it should object since failure to examineand object results in obligatory protection.
- In examining the terms notified to the Secretariat, each Member would have to make the
complex determination of whether each term meets the Article 22 definition of a geographical
indication and whether the term has become generic in their own country, necessitating
significant research.  If one WTO Member does challenge the term and as a result of the
negotiations, the notifying Member agrees that the objection is valid, only the objecting
Member is excused from protecting the term.  Thus, each WTO Member that has an objectionto any terms notified by another Member must present a formal challenge for each term
within 18 months of the date of notification, even if it is not participating in the system.
Failure to do so means the Member must protect the geographical indications.
- While the burden of this proposal is on all WTO Members, it would be especially noticeable
for those WTO Members who do not have a large number of geographical indications as theywill be required to protect many geographical indications without the possibility of reciprocal
benefits.
II. PROPOSAL BY HUNGARY
- The proposal from Hungary builds onto the EC’s proposal by requiring that, if bilateral
negotiations do not resolve the objection within 18 months after the dispute arose, the matterwould be referred to binding arbitration and the decision of the arbitrator would be final.
- A term that is in the midst of a challenge by one WTO Member would not be registered until
the challenge is settled.  A successful challenge made by one WTO Member on the basis of
Article 22.1 or 22.4 would not be registered  and, therefore, no WTO Member would be
obligated to protect the notified term.
- This "universal" or erga omnes  effect of challenge may have a disproportionate impact.  It is
likely that just a few WTO Members will be forced to carry the collective burden of
challenge, especially since it is unlikely that the vast majority of WTO Members will have the
administrative means to review the thousands of notifications anticipated under this system.
- A successful challenge made by a WTO Member on the basis of Article 24.4, 24.5, or 24.6,
however, would not prevent the term from being registered and only the successful challenger
would not be obliged to protect the term;  all other WTO Members would have to protect it.
III. JOINT PROPOSAL
- The Joint Proposal allows those participating WTO Members to notify their recognized
domestic geographical indications to the Secretariat, which then establishes a database of
these lists.
- Participating WTO Members will use the database in making determinations related to
geographical indications under domestic law, for example, in reviewing trademark
applications, labels on imported goods, or in determining whether someone is claiming rights
in a geographical indication when the goods do not come from that place.TN/IP/W/1
Page 3
- The database of geographical indications would provide a source of information not currently
available that would be used to make decisions under national laws, thereby facilitating
protection for other countries’ geographical indications.
- Members not participating in the system would be encouraged to use the database as a means
of facilitating protection for geographical indications in accordance with the requirements ofthe TRIPS Agreement.
IV. QUESTIONS AND ANSWERS
Is the system binding on all WTO Members?
EC Yes.  "Voluntary participation" refers to those Members that choose to notify
geographical indications to the Secretariat.  WTO Members that choose not to notify
terms to the Secretariat will be required to protect the notified terms of others, as longas they do not successfully challenge those terms.
Joint Only those Members choosing to notify geographical indications would be required to
refer to the database in making decisions regarding geographical indications under
domestic law.
Hungary Yes.  "Voluntary participation" refers to those Members that choose to notify
geographical indications to the Secretariat.  WTO Members that choose not to notify
terms to the Secretariat will be required to protect the notified terms of others, as long
as they do not challenge those terms or so long as a term is not the subject of asuccessful challenge based on Article 22.1 or 22.4.
What happens when a term is challenged?
EC When a term is challenged, negotiations are initiated to resolve the disagreement.  If a
challenger, during negotiations, convinces the notifying Member that it should not
have to protect the challenged term, that term would not have to be protected by the
challenging Member but would have to be protected by all other WTO Members that
do not mount successful challenges on their own.
Joint If a WTO Member wishes to challenge a notified term, it would do so under the
national law of the WTO Member notifying the term.  Decisions regarding protectionof notified terms would be made in the appropriate forum within each WTO Member
in accordance with domestic law.
Hungary When a term is challenged, both parties enter into negotiations to resolve the
disagreement.  If the negotiations are not concluded within 18 months from the date
of initial notification, the parties agree to submit to binding arbitration.  A successfulchallenge by one WTO Member on the basis of Article 22.1 or 22.4 would prevent
registration of that term and no Member would have to protect it.  A successful
challenge based upon Article 24.4, 24.5, or 24.6 would not prevent registration of the
term and, therefore, only the successful challenger would be exempt from the
requirement to protect the term.
.
What happens when a term is not challenged?
EC The term would be registered and all WTO Members must protect all registered
terms.TN/IP/W/1
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Joint No effect. Those Members choosing to participate in the system would have to refer
to the database when making decisions regarding geographical indications under their
domestic law.
Hungary The term would be registered and all WTO Members must protect all registered
terms.
What are the grounds for challenging a term?
EC Any WTO Member may challenge terms that do not meet the definition of a
geographical indication under Article 22.1 or that are subject to challenge under
Article 22.4 or 24.6.
Joint Any Member may challenge a notified term in accordance with the domestic law of
the notifying Member but is not required to do so.
Hungary A WTO Member may challenge a notified term on the basis of Article 22.1, 22.4,
24.4, 24.5, or 24.6.
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