. /.RESTRICTEDWORLD TRADE
ORGANIZATIONIP/C/W/134
11 March 1999
(99-0979)
Council for Trade-Related Aspects of
Intellectual Property RightsOriginal:  English
SUGGESTED METHOD FOR DOMESTIC RECOGNITION OF GEOGRAPHICAL
INDICATIONS FOR WTO MEMBERS TO PRODUCE A LIST OF NATIONALLY-
PROTECTED GEOGRAPHICAL INDICATIONS
Communication from the United States
The following suggested method for domestic recognition of geographical indications for
WTO Members to produce a list of nationally-protected geographical indications has been received
from the delegation of the United States, on 17 February 1999.
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REGISTRATION OF GEOGRAPHICAL INDICATIONS UNDER TRADEMARK
REGIMES AS COLLECTIVE OR CERTIFICATION MARKS
There are many acceptable means of protecting geographical indications ("GIs") that meet the
requirements of the TRIPS Agreement.  For example, some Members protect GIs under their unfair
competition regimes, or as trademarks, or in other ways.  However, in order to produce a list of GIs
for notification under Article 23.4 of the TRIPS Agreement, it may be desirable to employ a method
which results in an easily-identifiable list of nationally-protected geographical indications.  One such
method of both protecting geographical indications producing a list of protected GIs is to use thetrademark regime for registering GIs as collective or certification marks.
1. "Geographical Indications" are defined, at Article 22.1 of the TRIPS Agreement, as " …
indications which identify a good as originating in the territory of a Member, or a region or
locality in that territory, where a given quality, reputation or other characteristic of the good isessentially attributable to its geographic origin."
2. Article 22.2 of the TRIPS Agreement requires that Members provide the legal means for
interested parties to prevent use of geographical indications in connection with goods in a
way that implies the goods originate somewhere other than where they actually originate, or
that otherwise constitute unfair competition as defined by Article 10 bis of the Paris
Convention for the Protection of Industrial Property.
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1 Article 22.2 is as follows:  "In respect of geographical indications, Members shall provide the legal
means for interested parties to prevent:
(a) The use of any means in the designation or presentation of a good that indicates or suggests
that the good in question originates in a geograph ical area other than the true place of origin in
a manner which misleads the public as to the geographical origin of the good;
(b) any use which constitutes an act of unfair competition within the meaning of Article 10 bis of
the Paris Convention (1967).IP/C/W/134
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3. Article 23.1 of the TRIPS Agreement further requires, with respect to geographical
indications identifying wines and spirits, that Members provide protection against use of
geographical indications in connection with wines or spirits that, even when identifying the
true origin of those wines or spirits, imply that they originated from another place and againstuse of a geographical indication in translation or in conjunction with words like "kind",
"type", "style", "imitation", etc.
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4. Nothing in either Article 22 or Article 23 requires that Members establish any particular
system for protection of geographical indications.  In fact, there exist many ways to protect
geographical indications in a manner consistent with the requirements of Articles 22 and 23.
One way to protect geographical indications which may be accomplished easily, adequately,and in a completely TRIPS-consistent manner is through registration of geographical
indications under trademark regimes as collective or certification marks.
5. Using the trademark system to protect geographical indications has the following advantages:
• It employs the existing trademark regime.  No additional commitment of resources
(e.g., personnel, money) is required.  A government's use of its existing trademarkregime to protect geographical indications will involve the use only of government
resources already committed to the trademark system for applications, registrations,
oppositions, cancellations, adjudication, and enforcement.  The existing trademark
system is a known quantity to the business community and provides a transparent,tested system for notification and adjudication of rights.
• It is fully TRIPS compliant.  In addition to fulfilling all of the requirements of Section
3 of Part II of the TRIPS Agreement, the use of the national trademark system meetsthe TRIPS requirement for national treatment and the obligations in Part III of the
TRIPS Agreement regarding enforcement.
• It is self-policing.  Stakeholders, (i.e., competitors, businesses in the geographic area,
the mark owner) would raise issues of infringement, failure to comply with
certification standards, among other things.  Members would not have to commit
additional enforcement resources to ensure compliance.
• Finally,  Article 7 bis of the Paris Convention requires that Paris Union Members
provide protection for collective marks.  That obligation is incorporated into theTRIPS Agreement by Article 2.1 thereof.  Protecting geographical indications
through registration as collective marks will use a system that is already required to
exist.
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2 Article 23.1 is as follows:  "Each Member shall provide the legal means for interested parties to
prevent use of a geographical indication identifying wine s for wines not originating in the place indicated by the
geographical indication in question or identifying spirits for spirits not originating in the place indicated by the
geographical indication in question, even where the true origin of the goods is indicated or the geographicalindication is used in translation or acco mpanied by expressions such as "kind", "type", "style", "imitation" or the
like.