M. Geuze
contained in Section 2 of Part II of the TRIPS Agreement.21 In addition, the agreement
specifies that measures adopted to implement the TRIPS provisions on geographical
indications shall not prejudice the eligibility for or the validity of the registration of a
trademark, or the right to use a trademark, on the basis that such a trademark is
identical with or similar to a geographical indication.22
The third main exception allows, under certain circumstances, continued use of a
geographical indication that has been used in a WTO member prior to the conclusion
of the Uruguay Round,23 even where the indication in question has not become
generic and a pre-existing trademark right does not exist. The scope of this exception,
however, is heavily circumscribed. It only applies to geographical indications which
identify a wine or those which identify a spirit. It can only benefit those nationals or
domiciliaries of the WTO member using the exception who had previously used the
geographical indication in good faith or for at least 10 years prior to the conclusion of
the Uruguay Round, and in any case continuously. Moreover, use of the geographical
indication under the exception must be “similar” to the previous use. “Similar” use
has been taken to mean that the subsequent use must be similar in scale and nature.24
The agreement also provides that the exceptions cannot be used to diminish the
protection of geographical indications that existed immediately prior to the entry into
force of the TRIPS Agreement.25
Built-in Agenda Items26
Three of the TRIPS Agreement’s built-in agenda items relate to the protection of
geographical indications and are based on Articles 23.4, 24.1 and 24.2. In 2001,
part of this work became part of the work programme of the Doha Development
Agenda, as adopted by the WTO’s Ministerial Conference.
Article 24.1
There are situations where a particular geographical indication may not enjoy, or may
not fully enjoy, the protection provided for in Article 22 or 23, in accordance with the
exceptions provisions contained in Article 24 as applied by a country with respect to
that geographical indication. The relevant indication may, in that country, for example,
be a generic term in accordance with Article 24.6, or the subject of prior trademark
rights in accordance with Article 24.5. If the country of origin of the geographical
indication in question would like to change such a situation, it will have to resort to
bilateral or multilateral negotiations. In this regard, reference should be made to the
provisions of Article 24.1 of the TRIPS Agreement, which establish a negotiating right
in this respect for the country of origin.
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Estey Centre Journal of International Law and Trade Policy