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Archived updates for Friday, September 16, 2005

Thoughts on the WTO Decision on Geographical Indications

According to Burkhart Goebel, writing for the INTA Bulletin on September 15, 2005, the core questions under the trademark claim in the recent World Trade Organization Panel decision on geographical indications (GIs) were 1) whether a prior trademark continued to enjoy protection if a confusingly similar GI was subsequently registered, and 2) whether the trademark would be enforceable against such later GI:

The language is somewhat convoluted, but the message is clear: A prior
trademark may block a later GI. Once this is accepted, as well as the principle
of territoriality, it may only be a small step to a multilateral system that
more closely reflects the Madrid system. Indeed, such a proposal was made by
INTA. It is a step that still has to be made and sometimes even seemingly small
steps can be difficult to make. However, the Panel has opened the door for such
a step to be possible.

Does that mean that we are only a small step away from a solution to the wider GI agenda? Certainly not. It only means that with the clarification of one key principle the debate can move on to discuss the true impact of, for instance, extension of Article 23 TRIPS protection on the availability of generic terms or trademarks. That debate, which is likely to be more technical in nature, is still ahead of us and necessary. It is an important achievement of the Panel decision that it paved the way for such a debate to become possible at all.

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