Doha's Impact on TRIPS: Balancing Geographical Indications Protection Clark W. Lackert Chair, INTA International Amicus Committee and Partner, King & Spalding New York 1 May 2002

INTA: International Trademark Association INTA is a 124 year-old not-for-profit organization dedicated to the support and advancement of trademarks and related intellectual property concepts as essential elements of trade and commerce. INTA has over 4000 members in 145 countries. The association is global and crosses all industry lines, including manufacturers and retailers in industries ranging from aerospace to consumer goods.

INTA Panel Participants Clark Lackert Moderator, Partner, King & Spalding, New York Anne Richard Secretary General, Confédération Générale des Producteurs de Lait de Brebis et des Industriels de Roquefort,France Hans Bender President, Danish Dairy Board, Brussels Luis de Javier Director Legal Department, Miguel Torres SA, Barcelona Dominic Keating US Mission to the WTO, Geneva Antonio Berenguer DG Trade, European Commission, Brussels

Doha Declaration With a view to completing the work started in the Council for Trade-Related Aspects of Intellectual Property Rights (Council for TRIPS) on the implementation of Article 23.4, we agree to negotiate the establishment of a multilateral system of notification and registration of geographical indications for wines and spirits by the Fifth Session of the Ministerial Conference. We note that issues related to the extension of the protection of geographical indications provided for in Article 23 to products other than wines and spirits will be addressed in the Council for TRIPS pursuant to paragraph 12 of this declaration. 18. With a view to completing the work started in the Council for Trade-Related Aspects of Intellectual Property Rights (Council for TRIPS) on the implementation of Article 23.4, we agree to negotiate the establishment of a multilateral system of notification and registration of geographical indications for wines and spirits by the Fifth Session of the Ministerial Conference. We note that issues related to the extension of the protection of geographical indications provided for in Article 23 to products other than wines and spirits will be addressed in the Council for TRIPS pursuant to paragraph 12 of this declaration.

10 Different Issues on the GI-Trademark Balance

1. What are GIs? SWISS watches (GI) SWISS watches (GI) SWISS cheese (Generic) SWISS cheese (Generic) SWISS airlines ( Trademark) SWISS airlines ( Trademark)

2. What are types of GIs? Indications of Source Indications of Source Appellations of Origin Appellations of Origin Semi-generic Semi-generic

3. How are GIs Protected? Unfair Competition Unfair Competition Trademark Law Trademark Law Certification Mark Law Certification Mark Law Local Registration Local Registration International Registration (Treaties) International Registration (Treaties)

4. What Treaties Protect GIs? Paris Convention (1883) Paris Convention (1883) Madrid Agreement (1891) Madrid Agreement (1891) Lisbon Agreement (1958) Lisbon Agreement (1958) TRIPs Agreement (1994) TRIPs Agreement (1994) Regional (e.g., EU 1992) Regional (e.g., EU 1992)

5. What Paris Convention Articles are Relevant? Article 1 (2): Indications of Source and Appellations of Origin Article 1 (2): Indications of Source and Appellations of Origin Articles 9, 10 (2), 10 bis, and 10 ter: Unfair Competition Articles 9, 10 (2), 10 bis, and 10 ter: Unfair Competition

6. Which Madrid Agreement? There are two Madrid Agreements, one on trademarks and one on false designations of origin

7. Why is the Lisbon Agreement Important? Principal GI Treaty Principal GI Treaty International Registration International Registration Mandatory Phase Out of conflicting marks Mandatory Phase Out of conflicting marks TRIPs Issues TRIPs Issues Algeria Algeria Bulgaria Bulgaria Burkina Faso Burkina Faso Congo Congo Costa Rica Costa Rica Cuba Cuba Czech Republic Czech Republic France France Gabon Gabon Haiti Haiti Hungary Hungary Israel Israel Italy Italy Mexico Mexico Moldova Moldova Portugal Portugal Slovakia Slovakia Togo Togo Tunisia Tunisia Yugoslavia Yugoslavia

8. How Does TRIPs Change the Landscape? Articles 22, 23, and 24 Articles 22, 23, and 24 Articles 2(2) and 16(1) Articles 2(2) and 16(1) First in Time, First in Right First in Time, First in Right

9. What is the INTA Position on Trademark/GI Conflicts? Board of Directors Resolution (1997): First in Time, First in Right Board of Directors Resolution (1997): First in Time, First in Right Critical Analysis of EU Foodstuffs Regulation (now in TRIPs Council) Critical Analysis of EU Foodstuffs Regulation (now in TRIPs Council) Concerned about international or national GI registers (other than registration of certification marks) Concerned about international or national GI registers (other than registration of certification marks)

10. What is the Future of the GI-Trademark Balance? Global questions on the meaning of the TRIPs Agreement Global questions on the meaning of the TRIPs Agreement Proliferation of national GI registration statutes Proliferation of national GI registration statutes Need to address legitimate concerns of developing world indications Need to address legitimate concerns of developing world indications Ultimate balance between trademarks and GIs Ultimate balance between trademarks and GIs