TAO II WIPO WORLD GENEVA ORIGINAL DATE French August

TAO/II/2 WIPO WORLD GENEVA ORIGINAL: DATE: French August 25, 1975 INTELLECTUAL PROPERTY ORGANIZATION COMMITTEE OF EXPERTS ON THE INTERNATIONAL PROTECTION OF APPELLATIONS OF ORIGIN AND OTHER INDICATIONS OF SOURCE Second Session Geneva, December 1 to 5, 1975 DRAFT TREATY ON THE PROTECTION OF GEOGRAPHICAL INDICATIONS prepared by the International Bureau Introduction 1. At its first session, held in Geneva from November 4 to 8, 1974, the Committee of Experts On the International Protection of Appellations of Origin and Other Indications of Source (hereinafter called "the Committee") recommended 'that the International Bureau should prepare the draft of an international treaty providing for the future international system as agreed by the Committee (see document TAO/ I/B, paragraph 47). The Committee also recommended that the text should take the form of a new treaty, subject to further examination by the Committee of the question whether the future international system should be set up by means of a revision of the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration (hereinafter called "the Lisbon Agreement") in such a way as to incorporate the substantive provisions of the Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods (hereinafter called lithe Madrid Agreement ") in the revised version of the Lisbon Agreement, or whether the said system should be set up by the conclusion of a new treaty (see document TAO/I/B, paragraphs 46 and 47). 2. The Draft Treaty contained in the present document (hereinafter called "the Draft") was prepared on the basis of the Committee's discussions. The question whether the future system of international protection should be set up by a revision of the Lisbon Agreement or by the conclusion of a new treaty is discussed in document TAO/II/3. 3. No Draft Regulations have been prepared for the second session of the Committee. It seemed necessary that the Committee should first of all take a decision on the principles proposed in Chapter II of the Draft, dealing With international registration, the details of which would sUbsequently be set out in the Regulations. The questions not dealt with in the Draft because they would be governed by the Regulations include the amounts and the collection of fees, the languages that may be used in the implementation of the Treaty and the indication by each Contracting State of a competent authority which alone would be entitled to correspond with the International Bureau. TAO/II/2 page 2 4. One feature of the Draft is that it provides for two ~ of protection. The first type is covered by Chapter I (supplemented by the common provisions in Chapter III) and amounts to a simplification and modernization of the system of the Madrid Agreement. The second type of protection is dealt with in Chapter II (also supplemented by the common provisions in Chapter III), which provides for a system of registration similar to that of the Lisbon Agreement, but with some important changes. There could be a provision to the effect that Chapter II may be subject to reservation. There would thus be two groups of Contracting States: the first group would consist of those which, having made the above-mentioned reservation, would not be bound by Chapter II and, in respect of the substantive provisions, would apply only those of Chapter I and III in their relations with all other Contracting States; the second group would consist of those which, not having made the above-mentioned reservation, would have to apply all the substantive provisions of the Treaty in their relations with the other States in this second group, but would only need to apply Chapters I and III in their relations with States of the first group. A system of this kind would afford the widest possible geographical scope to the Treaty, since it is extremely probable that certain States would have difficulty in acceding to the Treaty without the possibility of reservation. The effect that this reservation would have on certain provisions of the Treaty is described in the comments on Articles 19 to 32. TAO/II/2 page 3 DRAFT TREATY ON THE PROTECTION OF GEOGRAPHICAL INDICATIONS List of Articles INTRODUCTORY PROVISIONS Article 1 Article 2 Establishment of a Union Abbreviated Expressions Principle of Protection Article 3 CHAPTER I Article 4 FALSE OR DECEPTIVE GEOGRAPHICAL INDICATIONS False or Deceptive Geographical Indications CHAPTER II Article 5 Article 6 Article 7 Article 8 INTERNATIONAL REGISTRATION Subject of the International Registration Applications for International Registration and International Registrations Objection Grounds for Objection Article 9 Article 10 Article 11 Article 12 Article 13 Article 14 Article 15 Article 16 Protection Based on the International Registration Exceptions to Protection Based on the International Registration Date of Commencement of Protection Based on the International Registration Fees for the Maintenance of the International Registration National Provisions Relating to Importation and Administrative SuperVision Limitation or Cancellation of the International Registration Communication of Texts of the National Law Prior Rights CHAPTER III Article 17 Article 18 COMMON AND TRANSITIONAL PROVISIONS Sanctions; Channels Right to Bring Actions; Settlement Through Diplomatic Transitional Provisions CHAPTER IV Article 19 ADMINISTRATIVE PROVISIONS Assembly International Bureau Finances Regulations Article 20 Article 21 Article 22 CHAPTER V Article 23 DISPUTES Disputes TAO/II/2 page 4 CHAPTER VI Article 24 Article 25 REVISION AND AMENDMENT Revision of the Treaty Amendment of Certain Provisions of the Treaty CHAPTER VII Article 26 Article 27 Article 28 Article 29 Article 30 Article 31 Article 32 FINAL PROVISIONS Becoming Party to the Treaty Entry Into Force of the Treaty Reservations Denunciation of the Treaty Signature and Languages of the Treaty Depositary Functions Notifications TAO/II/2 page 5 DRAFT TREATY ON THE PROTECTION OF GEOGRAPHICAL INDICATIONS TAO/II/2 page 6 Comments on Article 1 This provision is customary and calls for no special comments. TAO/II/2 page 7 INTRODUCTORY PROVISIONS Article 1 Establishment of a Union The States party to this Treaty (hereinafter called lithe Contracting States") constitu~e a Union for the protection of geographical indications. TAo/n/2 page 8 Comments on Article 2 Ad (1): It is proposed to use the new expression, "geographical indications," because the terminology suggested by the International Bureau for the first session of the Committee of Experts, which tended essentially to treat appellations of origin as a special category of indications of source, did not meet with unanim.ous approval. llGeographical indications covers both indications of source and appellations of origin and the use of this expression avoids the necessity of deciding on a possible hierarchy between the two concepts. The new term also has the advantage of lightening considerably the text of the Draft by eliminating frequent repetitions. It should be noted that the Draft makes no legal distinction between indications of source and appellations of origin, and this is a further argument in favor of the proposed terminology. II Ad (ii): The expression "indication of source" should be understood in its broadest sense. It includes denominations, expressions or signs referring to a region cormnon to several countries (e.g., "Jura") or to a group of countries (e.g., "Scandinavian furniture"). Question: Is the definition wide enough to coyer the cited cases or should the l&tter p&rt of it be modified to read, for example, as follows; " .•. originates in a group of countries, a regIon common to several countries, a country, a region inside a country or a specific place lt? Ad (iii): The first part of this definition of the "appellation of origin" is very similar to Article 2(1) of the Lisbon Agreement, the only difference being that it makes clear that it is not necessary that both natural and human factors should be involved at the sarne time. It seems quite possible in fact that an appellation of origin could designate industrial products, whose characteristic qualities may be due to purely human factors. Questions: (1) If the answer to the question under (ii) above is in the affirmative, would it also be necessary to modify the definition of the appellation of origin to cover expressly the case of regions common to several countries and that of groups of countries? (2) Would it be desirable to extend the concept of appellation of origin to services (see also the comments on Article 5)? (3) Would it be desirable to clarify the text in order to show that it will suffice if the characteris~ic qualities of the product are regarded as being due to the geographical environment even though it is not possible to prove scientifically the existence of this link between the characteristic qualities and the qeographical environment? If ao, would it be desirable to indicate that public opinion in the state to which the denomination refers is decisive? The second part of the definition of the denomination "Reblochon," which delimited territory of the departments although the name "Reblochon" does not under (iii) covers, for instance, the case designates a cheese originating in a of Haute-Savoie and Savoie in France, appear on maps of those departments. Ad (v): A geographical indication refers "indirectly" to the state of origin when it refers to a region or a specific place in that State and not lIdirectly" to the state, or in the cases covered by the second part of item (iii). Question: If items (ii) and/or (iii) were to mention expressly the regions common to several countries or the groups of countries, would it not be necessary to add in item (v) after the words "Contracting state the words "or one of the Contracting States I! ll? TAO/II/2 page 9 Article 2 Abbreviated Expressions For the purposes of this Treaty and the Regulations: (1) the expression "geographical indications" covers indications of source and appellations of origin as defined in items (ii) (i1) and (iii) below; "indication of source" means any denomination, expression or sign indicating, directly or indirectly, that a product or service originates in a country, a region or a specific place; (iii) "appellation of origin l1 means the denomination of a country, a region or a specific place which serves to designate a product originating therein the characteristic qualities of which are due exclusively or essentially to the geographical environment, including natural factors, human factors, or both natural and human factors; any denomination which, while not being that of a country, a region or a specific place, has acquired a geographical sense in relation to a certain product the characteristic qualities of which fulfill the conditions prescribed above shall also be considered an appellation of origin. (iv) "use in the course of t.r ade " means use, in particular, on products, on their get-up or packaging, in invoices, transport documents or other business papers relating to products or services, or in advertising; (v) lIState of origin II means the Contracting State to which a geographical indication directly or indirectly refers; (vi) "State of protection" means the Contracting State in which the pro- tection of a geographical indication is claimed under this Treaty; (vii) "international registration II means the registration effected by the International Bureau, under Chapter II of this Treaty, in the International Register of Geographical Indications; (viii) "application for international registration" means an application filed with a view to international registration; (ix) "registered denomination ll means a geographical indication which is the sUbject of an international registration accepted by the State of protection; (x) "filing State" means the Contracting State which files an application for international registration; (xi) " objecting Staten means the Contracting State which deposits a notice of objection under Article 7; (xii) nUnion" means the Union referred to in Article 1; "Assembly" means the Assembly referred to in Article 19; "Organization" means the World Intellectual Property Organization; "International Bureau" means the International Bureau of the Organ- (xiii) (xiv) (xv) ization and, as long as it subsists, the United International Bureaux for the Protection of Intellectual Property (BIRPI); TAO/II/2 page 11 [Article 2, continued] (xvi) "Director General" means the Director General of the Organization; "Regulations" means the Regulations referred to in Article 22. (xvii) TAO/II/2 page 12 Comments on Article 3 General Remark: In view of its place in the Draft, Article 3 governs Chapter I as well as all the other Chapters of the Draft. In other words, the obligation to sanction false or deceptive geographical indications under Article 4(1) does not extend to those referring to States that are not Contracting States. Ad (1): Question: If, in Article 2(ii) and/or (iii), the regions common to several countries or the groups of countries were to be cited, would it not be necessary to add at the end of Article 3(1) the words "or other Contracting states"? Ad (2): The expression "international treaties II covers both bilateral and multilateral treaties. TAO/II/2 page 13 Article 3 Principle of Protection (1) Each Contracting State undertakes, in accordance with the provisions of this Treaty, to ensure the protection of geographical indications referring directly or indirectly to another Contracting State. (2) The provisions of this Treaty shall be without prejudice to any more extensive protection which is or may be afforded under the national law or other international treaties. TAO/II/2 page 14 Comments on Article 4 General Remark: This provision, combined with Article 17, modernizes and expands the substantive provisions of the Madrid Agreement. Ad (1): See the general remark on Article 3. This provision has a wider scope than Article 3bis of the Madrid Agreement in that it does not institute a mere obligation to prohibit but is itself directly applicable and, at the same time, it applies to all indications, even those which are not in the nature of publicity. Ad (2): Under this provision, if, for example, a denomination contains a false or deceptive indication within the meaning of Article 4(1), it does not suffice to add the word "kind" in order to evade the application of Article 4(1). The word "translation" covers the use not only of expressions in modern languages but also of those in Latin or other ancient languages (e.g., "Gallia"). Ad (3): This provision strengthens the prohibition of deception in paragraph (1) by introducing a presumption. If, because of the fact that it is well known, a denomination or a graphic representation or a word evokes a Contract~nq state but is used for products or services that do not originate in that state, the presumption is that it is a false or deceptive geographical indication. The effect of the presumption is that there is no need to prove that the geographical indication is really false or deceptive: it will suffice to establish the fact that the state of origin is evoked whereas the indication is used for products not originating in that State. There is no point in the defendant's objection that interested circles are not deceived as to the source of the products. The only course open to him is to prove that the name or the graphic representation at issue can in the circumstances reasonably be considered only as descriptive or fanciful. However, the presumption continues to take effect if the name or representation is such as to give the impression not only of a descriptive or fanciful sign but also of an indication of source. Ad (4): This provision provides a solution to the delicate problem of the transformation of geographical indications into generic terms. It should be noted first that the solution proposed here is not identical to that of Chapter II. In the latter case, transformation of a registered denomination into a generic term in the State of protection is absolutely excluded. In the case of Article 4, this degeneration is not absolutely excluded but it is possible only in certain conditions, failing which the practical scope of Chapter I would be extremely limited~ indeed, the transformation of a foreign geographical indication into a generic term is very frequent and occurs fairly rapidly, as shown by the numerous "sins of the past." Article 4(4) is an attempt to find a compromise solution intended to prevent II s i n s of the future. 1I The paragraph under consideration applies only to geographical indications referrinq to a Contracting state which are recognized as such, that is to say, as having no generic character, in another Contracting state at the time of the ent~y into fOrce of the Treaty. Those which at that time are already regarded in that other Contract~ng State as having a generic character are not within the scope of parag~aph (4) and Will therefore keep their generic character, unless they are subsequently the subject of an international registration under Chapter II and that registration is accepted, probably after negotiation, by the state concerned (this is the only way to "redeem th.e sins of the past," to some exterrt r • The effect of the provision under consideration is to prevent the possibility of any transformation, after the entry into force of the Treaty, of a geographical indication into a generic term in the State concerned. Legally speaking, this transformation can, however, take place under two conditions bearing on de facto rather than de jure situations. TAO/II/2 page 15 CHAPTER I FALSE OR DECEPTIVE GEOGRAPHICAL INDICATIONS Article 4 False or Deceptive Geographical Indications (1) The use in the course of trade of denominations, expressions or signs, including marks, which constitute or directly or indirectly contain false or deceptive geographical indications as to the source of products or services is prohibited. (2) The mere fact that the denominations, expressions or signs mentioned in paragraph (1) are used in translation, or with an indication of the true source, or with the addition of terms such as "kind, II "type," "make, (1). II "imitation" or the like, or in another grammatical form, or in a modified form, shall not remove the false or deceptive character referred to in paragraph (3) The names or the graphic representations of places, buildings, monuments, rivers, mountains or other similar features of the heritage of the State of origin which, for a substantial proportion of the public or of interested trade circles in another Contracting State, directly or indirectly evoke that State shall be considered false or deceptive geographical indications within the meaning of paragraph (1) if they are used in the course of trade in relation to products or services which do not originate in the State of origin, except where, in the specific case, the name or the graphic representation may reasonably be understood as being of an exclusively descriptive or fanciful character. (4} The effect of the entry into force of this Treaty with respect to any Contracting State shall be that a geographical indication which refers to another Contracting State and is recognized as such in the former Contracting State on the day of such entry into force cannot, sUbsequently, be considered a generic denomination, expression or sign in the former Contracting State unless, in the State of origin, i t is used in the course of trade in relation to goods or services which do not originate in the State of origin, and unless, in the former Contracting State, i t is used in the course of trade as a generic denomination, expression or sign. TAO/II/2 page 16 [Comments on Article 4, continued] The first condition is that the geographical indication must be used in the state of origin for products or services not originating in that state. The fact that the geographical indication has become generic in the state of origin for products or services originating in that state is not sufficient; it must also be possible for it to be used for products or services originating in any part of the world (e.g., llKolnisch Wasser" is a denomination that can be used in the Federal Republic of Germany for products originating in any part of that State and not only from the city of Cologne, but it cannot be used for products originating in another State~. The second condition is that the geographical indication must be used as a generic term in the state of the dispute. This second condition is necessary to prevent the possibility of invoking use as a generic term in the State of origin in order to try to have a geographical indication regarded as a generic term in the other state whereas it is not in fact used as such in that State. The main difficulty about paragraph (4) is the question of proof. After the Treaty has been in force for many years! it will be difficult to prove that a denomination actually used at the time of the dispute as a generic term constituted a geographical indication in the state of the dispute at the time of the entry into force of the Treaty. This difficulty should not, however! constitute sufficient grounds for the elimination of paragraph (4). TAO/II/2 page 18 Comments on Article 5 Th~s provision determines which geographical indications may be the subject of an international registration. Four requirements must be fulfilled the absence of which can justify an objection within the meaning of Article 8 (see the comments on that Article). First, the geographical indication must either be the name of a state or the nam~ of a major circumscription of a State (see the comments on Article 6(2)), or it must be a denomination serving to indicate the origin of a product. In the latter case, geographical indications not consisting of denominations (e.g., graphic representations) and those relating to services are excluded. Question: Should service denominations be included among the denominations eligible for international registration (see also the comments on Article 2(iii))7 Secondl~ the filing State must declare that the denomination refers to that State as the state of origin, in other words, that the State in question is effectively the State of origin (or one of the States of origin) of the denomination. By providing for the filing of such a declaration, it is intended to eliminate the obviously improper claims of denominations referring to States other than the filing state. Such declarations could be contained in a form established by the International Bureau. Thirdly, the denomination must be used in the course of trade in relation to products (or services, if the reply to the question posed above is in the affirmative) originating in the filing State. The intention is to prevent international registrations of unused denominations. Fourthly, the filing state must declare that the denomination is used in the course of trade in relation to products (or possibly services) originating in that state. By providing for such a declaration--which could also be the subject of a form established by the International Bureau--the intention is to strengthen the third requirement mentioned above. TAO/II/2 page 19 CHAPTER II INTERNATIONAL REGISTRATION Article 5 Subject of the International Registration Any Contracting State may, according to the provisions of this Treaty and the Regulations, file with the International Bureau an application for international reqis- tration in respect of any geographical indication (i) which consists of the official or usual name of that State or of ~ircumscription that of a major of that State. or of a denomination which serves TO indicate the source of a product, (ii) which that State declares to be a reference to itself as 't.he State of origin, (iii) which is used in the courSe of trade in relation to products originating in that state, and (iv) which that State declares to be an indication used in the manner above. indicated under (iii) TAo/n/2 page 20 Comments on Article 6 Ad (1): The question here is whether it is preferable to have a separate application for international registration in the case of each denomination or whether one single application may relate to several denominations. The first alternative has been chosen because the fate of all denominations filed by a single State will not necessarily be the same. For example, the International Bureau may discover defects that will delay the international registration (paragraph (5» or a Contracting state may deposit a notice of objection (Article 7). The Regulations, however, could provide that the filing state would be able to group all its applications in one mailing, which would facilitate the performance of its administrative tasks. The single fee paid for the application for international registration is intended to cover all the International Bureau's expenses in relation to the application: registration, notification and publication, as well as any operations that may be necessary in the case of objections. Question: Would it be possible, for all questions relating to fees, to make a general reference to the Regulations in a provision such as the following (to be added to Article 22, or elsewhere): liThe Regulations shall determine which operations shall be subject to the payment of fees, and shall fix the amounts of such fees."? Ad (2): Questions: Should provision be made for the possibility of absolute protection--that is to say, protection not limited to specific products mentioned in the application for international registration--of the name of a group of States (e. g., lIBenelux")? If so, should such a possibility be lind ted to cases where all the states in the group are Contracting states? Should a distinction be made between groups of States forming political entities and those forming only historical or geographical entities? Another delicate question is what is meant by a "major circumscription" of a State. It should not mean only existinq administrative circumscriptions but should also include historical circumscriptions (e.q., "Burqundy," which is not the name of an administrative entity). The circumscriptions in question should also be of a certain size and importance, as explained by the use of the adjective "major." In the latter connection, some restrictions are called for: the names of communes, for example, should not be able to benefit from absolute protection. For those names to which this provision refers, the filing state may either apply for absolute protection or, alternatively, make a reference to one or more products in the application for international registration (paragraph (3) (ii)). Ad (3): See the comments on paragraph (2). Ad (4): This provision allows the filing State to limit the application for international registration in order to avoid negotiations which it knows in advance will not succeed. As shown by item (iv), the limitations listed in items (i) to (iii) are mere examples. Other limitations are therefore possible, as well as all kinds of combinations. Item (ii) refers to the case where the translation of a denomination in a given language corresponds, for example, to the name of a region situated in another state: thus, the French appellation of origin llFleurie" becomes llFlorida" in Spanish, which is the name of a region in Cuba and of a state in the United States of America. Item (iii) refers, by way of an example, to the case of a denomination which is not only an appellation of origin but which also designates a variety of vine. The limitation in.the latter case could consist in not excluding the use of the denomination to designate a vine variety. Ad (5) (a) and (b): The International Bureau's examination is purely formal. Its purpose is to remove the obvious defects in the application for international registration. Question: Would it be preferable to substitute for the list of requirements a text such as the following: liThe International Bureau shall verify that the application for international registration contains no obvious defect. II? Ad (6): The publication mentioned in this provision is very important in that its date fixes the date of commencement of a series of time limits (see Article 7) . TAO/II/2 page 21 Article 6 Applications for International Registration and International Registrations (1) An application for international registration shall relate to one denomiIt is subject to the payment of a single fee, as provided in the nation only. Regulations. (2) Any denomination which consists of the official or usual name of the filing State or of that of a major circumscription of that State need not be accompanied in the application for international registration by any reference to a product. (3) Any denomination which (1) does not consist of the official or usual name of the filing State or of that of a major circumscription of that State, (ii) consists of the official or usual name of the filing State or of that of a major circumscription of that State, but in respect of which the filing State does not avail itself of the faculty provided for in paragraph (2), shall be accompanied in the application for international registration by a reference to at least one product. (4) The application for international registration may be limited (i) by a reference to one or more Contracting States in which the filing State does not request protection, (ii) by a reference to a translation of the denomination concerned for which the filing State does not request protection, (iii) by a reference to a use of the denomination concerned for which the filing State does not request protection, (iv) in any similar manner. TAO/II/2 page 23 [Article 6, continued] (5) (a) The International Bureau shall verify that the subject of the application for international registration, (i) if it does not consist of the official or usual name of the filing State or of that of a major circumscription of that State, consists of a denomination which serves to indicate the source of a product, (ii) if the subject of the application for international registration consists of a denomination which serves to indicate the source of a product, that the said denomination is accompanied in the application by a reference to at least one product; (iii) (iv) (v) been paid. (b) If the International Bureau finds that the application for interthat the declaration referred to in Article 5(ii) has been filed; that the declaration referred to in Article 5(iv) has been filed; that the fee provided for in paragraph (1) of this Article has national registration does not fulfill the requirements of the foregoing subparagraph, it shall invite the filing State to remedy the defects in the said application. If, on the expiration of the period laid down in the Regulations, it finds that the said defects have not been remedied, it shall reject the application for international registration. (6) If the International Bureau finds that the application for international (5) (a) or that the defects in registration fulfills the requirements of paragraph the application have been remedied in good time, it shall register the said application and publish the international registration as provided in the Regulations. TAo/n/2 page 24 Comments on Article 7 General Remarks on Articles 7 and 8: The purpose of these two provisions is to substitute for the refusal procedure provided for under Article 5 of the Lisbon Agreement, which is excessively rigid, a more flexible system permitting interested states to negotiate in the most favorable conditions while guaranteeing the essential legal security. The proposed system is rather complex because it aims at achieving both objectives. The Draft does not use the term " r efusal ll because of its abruptness, which symbolizes the rigidity it is intended to eliminate; the terrn lI o b j e c t i o n lf has therefore been used since it is less strong. Ad (1): The partial objection provided for in subparagraph (a) corresponds to the provision in Article 8(2). Ad (2): The purpose of this provision is to simplify the procedure in cases where the filing state ~ecognizes at the outset that an objection is well-founded. By refraining from depositing a declaration of interest, the filing State places itself in the the same position as that in which it would find itself if, at the time of filing the application for international registration, it had made one of the limitations listed in Article 6(4). The duration of the period provided for under paragraph 2(a), like those of paragraph (5), is counted from the date of publication of the international registration and not from the date of the event on which it is based (deposit of the notice of objection in the case of subparagraph (2) (a), deposit of the declaration of interest in the case of paragraph (5). Ad (3): The special conditions of protection (e.g., limitation of protection) will normally be fixed. during the negotiations following the notice of objection and before the expiration of the five-year period provided for in paragraph (5). The expression "at any time" shows howev~:r. that it is possible to agree upon special conditions of protection even after the deposit under paragraph (5) of the declaration of maintenance of the objection. Ad (4): This provision is modelled on Article 5(5), second sentence, of the Lisbon Agreement. The judicial or administrative remedies are available at all times, even if negotiations are in progress. Ad (5) (a): The periods mentioned in this provision must be long enough to allow the bilateral negotiations to take place normally. It must not be forgotten in this connection that the filing state may have to carryon negotiations simultaneously with several objecting states. The declaration to the effect that the ftegotiations have not been successful tends morally to force the objecting State to institute negotiations with the filing state and not simply await the expiration of the four-year period to deposit a declaration of maintenance of the objection. Ad (5) (b): The result of having recourse to a jUdicial or administrative remedy to counter an objection is that in certain conditions the expiration of the five-year period, provided for in subparagraph Ca), before which the objecting state may deposit a declaration of maintenance of the objection will be delayed. Three requirements must be met: (1) the remedy must be sought before the deposit of the declaration of maintenance of the objection (if it is sought later, the problem no longer arises); (2) the filing State must notify the International Bureau of the fact that a remedy has been sought (so that the International Bureau will know that the five-year period has been suspended); (3) the final decision on the remedy sought must not have been rendered before the objecting State has the right to deposit a declaration of maintenance of the objection (if the decision has been rendered before that time, the normal period will ppply). If those three requirements are met, the objecting State may not deposit a declaration of maintenance of the objection before the final decision, and i t will have a period of one year after the date of that decision in which to do so. Ad (6): The objection may be withdrawn at any time, either before it becomes possible to deposit a declaration of maintenance of the objection or after depositing such a declaration. Ad (7): Where the objecting state takes no action, it is consequently obliged to protect the denomination in question even if it has not withdrawn its objection in accordance with paragraph (6). TAO/II/2 page 25 Article 7 Objection (1) (a) Within a period of [one year] from the date of publication of the international registration, any Contracting State may deposit with the International Bureau a notice of objection in which it announces that it reserves the right not to giv~ effect, either in whole or in part,to that registration, The notice of objection shall include an indication of the ground or (b) grounds for objection within the meaning of Article 8. (c) The International Bureau shall transmit the notice of objection to the filing State. (2) (a) Within a period of [two years] from the date of publication of the international registration, a filing State wishing, despite the notice of objection, to have the denomination in question protected in the objecting State must deposit a declaration of interest with the International Bureau. (b) The Inte~nationaI Bureau shall transmit the declaration of interest to the objecting State. (c) If, within the period referred to in subparagraph (a), the filing State does not deposit a declaration of interest, it shall be deemed not to have requested protection for the denomination in question in the objecting State. (3) The objecting State and the filing State may at any time agree upon special conditions of protection, which shall be notified to the International Bureau by means of a joint declaration by both States. (4) Any judicial or administrative remedies available to nationals of the objecting State or to persons assimilated to them shall at any time be available, in that State, to any interested party in the filing State and, if the procedures of the objecting State so allow, to the competent authority of the filing State. (5) (a) Within a period of [five years] from the date of publication of the after that date, the international registration, but not sooner than [four years] objecting State may, subject to subparagraph '(b), deposit with the International Bureau a declaration of maintenance of the objection, accompanied by a statement in which the objecting State declares that the negotiations conducted with the filing State have been unsuccessful. (b) If, before the objecting State has deposited a declaration of main- tenance of the objection, resort has been had in that State to a judicial or administrative remedy within the meaning of paragraph (4), if that fact has been notified to the International Bureau by the filing State and if the final decision on the application of the remedy has not been rendered within [four years] from the date of publication of the international registration, the declaration of maintenance of the objection may be deposited only during the year immediately following the date of the said decision. TAO/II/2 page 26 [Comments on Article 7, continued] Ad (8): The Regulations will provide to what extent the various registrations and publications listed in this prQvision should be effected. They may prescribe, for example, that the grounds for objection shall not be published or even registered. It may be worth considering, however, whether some publications are in principle necessary; this is a matter for the Treaty to decide. Question: ,Is it necessary to pUblish everything provided for in paragraph (8), in particular, declarations of interest (item (ii»), notifications of remedies sought (item (v» and statements on the failure of negotiations (item (vi»? Ad (9): This provision deals with the special position of a state ratifying or acceding to the Treaty when the international registration system has already started to function. In the case of such a state, provision has to be made for a longer period in which to deposit a notice of objection, in view of the considerable number of old registrations it may possibly have to examine. This provision should perhaps appear elsewhere in the Treaty, say, in Article 26. TAO/II/2 page 27 [Article 7, continued] (6) (a) The objecting State may at any time withdraw its objection by means of a declaration deposited with the International Bureau. (b) The International Bureau shall transmit the declaration of withdrawal to the filing State. (7) In the absence of a declaration of maintenance of the objection, deposited in accordance with paragraph (5), the objecting State shall be deemed to have withdrawn its objection. (8) The International Bureau shall register and publish, as provided in the Regulations, (1) notices of objection deposited under paragraph (1); declarations of interest deposited under paragraph effects arising under paragraph (2) (e) ; (ii) (iii) (2) (a) ; (iv) (v) (vi) special conditions of protection notified under paragraph notifications of remedies resorted to under paragraph (4); (3); declarations of maintenance of objections and statements on the failure of negotiations deposited under paragraph (5); (vii) graph (6); (viii) withdrawals of objections under paragraph (7). declarations of withdrawal of objections deposited under para- (9) For any Contracting State with respect to which this Treaty enters into force after denominations have been registered, and with regard to those denominations, (i) the date of commencement of the periods mentioned in this Article shall be the date of entry into force of this Treaty with respect to that State; and (ii) the period referred to in paragraph (1) shall be [three years]. TAO/II/2 page 28 Comments on Article 8 Ad (1) (il: Ad (1) (ii): This ground corresponds to Article 5(iJ. This ground corresponds to Article 5(iil. Ad (1) (iii): This ground corresponds to Article 5(iii). It relates to the situation in the filing state and its purpose is to prevent possible abuse. It would indeed be inadmissible that a state should attempt to have protected at the international level a denomination which constitutes on its territory neither an appellation of origin nor an indication of source. The proposed wording deals with the case (already cited in the comments on Article 2(ii» of a denomination referring to a region common to several countries or referring to a group of countries, as well as the case (already cited in the comments on Article 4(4» of a denomination which is generic for products originating in any part of the territory of the filing state but which cannot be used in that state for products originating in another state. Those cases do not constitute grounds for objection (the first case is governed by Article 10(1) (i)). Ad (1) (iv): This ground relates to the situation in the objecting State. Two combined requirements are provided here to prevent excessive recourse to this ground. First, the denomination in question must be regarded by the public at large in the objecting State as a generic term, that is to say, as a denomination designating products from any source whatever; opinion in interested circles and among specialists is not decisive in such cases: what counts is the opinion of the general public on the subject. Secondly, the denomination in question must be used in the objecting State as a generic term; if it is not so used, public opinion will not suffice as a ground for objection. Ad (1) (v): This ground allows the objecting state to rely on a formal defect in the application for international registration. Ad (2): If the objecting State agrees to protect, for example, the denomination "Fleurie" in French but not its Spanish translation "Florida" (see the comments on Article 6(4)), care should be taken that the objection does not concern the denomination in the original language as well, in order to facilitate the negotiations. That is why the Draft provides for the possibility of partial objections. Another possible case of partial objection would be the case where the denomination, appearing in the application for international registration without any reference to a produc~ as the name of a major circumscription of the filing State, consists simply of the name of a commune in that State and ought therefore to be accompanied in the application by a reference to a product. Ad (3): It would be wrong on the part of a state, and at the same time it would be contrary to Article 3(2), to raise any objection to a denomination which that state would be obliged to protect by virtue of a decision by one of its own courts, for example, or under a mulilateral treaty such as the Lisbon Agreement, or a bilateral treaty. TAO/II/2 page 29 Article 8 Grounds for Objection (1) A Contracting State may deposit a notice of objection only on one or more of the following grounds: (i) the subject of the application for international registration con- sists neither of the official or usual name of the filing State or of that of a major Circumscription of that State, nor of a denomination which serves to indicate the source of a product; (ii) the denomination which is the subject of the said application does not refer to the filing State as the State of origin; (iii) in the filing State, the denomination in question is used in the course of trade in relation to products originating in any State, (iv) in the objecting State, the denomination in question is regarded as a generic term by the general public and is used as such in the course of trade; (v) the requirements of Article 6(5) (a) have not been fulfilled. (2) When the ground for objection is partial, relating for instance only to a translation or to one use of the denomination in question, the notice of objection shall be limited accordingly. (3) A Contracting State may not deposit a notice of objection in respect of a denomination to which it has granted protection in relation to the same products under its national law or under another international treaty. TAO!II!2 page 30 Comments on Article 9 General Remarks: This provLsLon poses two basic principles. According to the first, all registered denominations are reserved for products originating in the filing state. According to the second, when the registered denomination is used for products originating in the filing State, such use is governed by the law of the filing state. The latter principle could create difficulties where it is' a question of applyinq the law of a foreiqn country. The first principle, on the other hand, allows the great majority of cases to be solved without difficulty: where the jUdge in the State of protection finds that the products in dispute do not originate in the filing State--which is a straightforward question of fact--it is clear that the provisions of the Treaty have been violated; there is no need in such cases to apply the law of a foreign country. On the other hand, in order to facilitate the work of the judge in the--rare--cases where he will have to apply the law of the filing state, a system is provided in Article 15 for communicating, through the International Bureau, the legislative texts, regulations or other texts which relate to the right to use registered denominations and determine the conditions of such use. "Other texts" means both judicial decisions and the regulations of private associations such as are to be found, for example, in the Federal Republic of Germany. If it should be considered, howeve~ that the prlnciple of the application of the law of the filing state would create too many difficulties, it would be possible to link the question of the application of the law to the deposit of the relevant texts. In other words, the judge in the State of protection would have to apply the law of the filing state only in cases where the relevant texts were available as prOVided under Article 15; where such texts have not been deposited with the International Bureau, the judge could choose not to apply the law of the filing State. Question: Should the application of the law of the filing state be linked to the deposit of the relevant texts? Ad (1): This provision applies to denominations registered without any reference to products. In such cases, protection extends to all products. Ad (2): This provision applies to denominations registered with a reference to products. In such cases, protection is limited in principle to the products mentioned. However, protection extends to other products in so far as there is any risk of confusion (subparagraph (c)). If, for example, a denomination is registered for wines, there may be a risk of confusion if it is used for other alcoholic beverages, or for any other drink whether alcoholic or not. The question that might be asked here is whether provisions should not be made, within the framework of paragraph (2), for a rule going beyond the mere application of the law of the filing state to cover the case of a product, in the filing State or elsewhere, which, in accordance with the wish of the producer, is not marked with the registered denomination, although it would be entitled to be used with that denomination in the filing state. It could be provided that such a product could not, unless authorized by the producer, be marked with the registered denomination in the state of protection. A provision of this sort would amount to transposing to the international level the provision at the national level in Section 14(2) of the Model Law for Developing Countries on Appellations of Origin and Indications of Source (see, in particular: the commentary on this subsection). It would allow the producer to limit the use abroad of the registered denomination to products which meet with his entire agreement and to exert some control over the quality of the products sold abroad under the denomination. Question: Should there be a provision to the effect that use of the registered denomination is prohibited except with the authcrization of the producer, even if such use is in conformity with the requirements of the law of the filing state, where the product in question has been put on the market by the producer or with his consent, in the state of origin or elsewhere, without the denomination? Ad (3): This provision is similar to that of Article 4(2). TAO/II/2 page 31 Article 9 Protection Based on the International Registration (1) (a) The use in the course of trade, On the territory of the State of protection, of any denomination referred to in Article 6(2} and registered without any reference to a product, in relation to products of any kind which do not originate in the filing State, is prohibited. (b) Where products of any kind originate in the filing State, the use in the course of trade of the denomination referred to in subparagraph (a) is prohibited if it does not comply with the requirements of the law of the filing State, including requirements relating to quality standards, or, where applicable, with any special conditions of protection agreed upon under Article 7(3). (2) (a) The use in the course of trade, On the territory of the State of protection, of any registered denomination referred to in Article 6(3), in relation to products mentioned in the international registration which do not originate in the filing State, is prohibited. (b) Where the products mentioned in the international registration originate in the filing State, the use in the course of trade of the denomination referred to in subparagraph (a) is prohibited if it does not comply with the requirements of the law of the filing State, including requirements relating to quality standards, or, where applicable, with any special conditions of protection agreed upon under Article 7(3). (c) The prohibitions referred to in subparagraphs (a) and (b) shall extend to other products in so far as there is any risk of confusion. (3) The provisions of this Article shall apply even where the registered denomination is used in translation, or with an indication of the true source of the product, or with the addition of terms such as "kind," "type," "make," "imitation" or the like, or in another grammatical form, or in a modified form in so far as the risk of confusion remains despite the modification. TAO/II/2 page 32 Comments on Article 10 Ad (1): This provision governs the cases of homonyms that justify an exception to protection for an unlimited duration, provided that there is no risk of confusion and that the requirements of good faith are respected. The other cases of homonyms are governed by Article 16. Ad (2): This provision calls for no special comment. TAO/II/2 page 33 Article 10 Exceptions to Protection Based on the International Registration (1) In so far as there is no risk of confusion, the provisions of Article 9 shall not prevent, within the limits of good faith, (i) the use in the course of trade of a geographical indication referring to a country other than the filing State, or to a region or a specific place situated in'such a country, in relation to products originating in that country, region or specific place, as the case may be; (ii) as a mark. the use by a person of his own name in the course of trade, except (2) The provisions of Article 9 shall not apply to products in transit. TAO/II/2 page 34 Comments on Article 11 This prov~s~on fixes the date of commencement of protection based on the international registration. It distinguishes between denominations which have not been the subject of a notice of objection (paragraph (1)) and those which, while they have been the subject of such a notice, have nevertheless finally been granted protection (paragraph (2)). No provision is made in either case for retroactive effect to the date of the international registration; the latter date, however, is very important in the matter of protection since it fixes the time from whlch no prior rights can thereafter arise (see the general remarks on Article 16) . TAO/II/2 page 35 Article 11 Date of Commencement of Protection Based on the International Registration (1) In the case of any registered denomination for which a Contracting State has not deposited a notice of objection, protection based on the international registration may be claimed in that State from the expiration of the period refer red to in Article 7(1). (2) In the case of any registered denomination for which a Contracting State, after having deposited a notice of objection, has agreed with the filing State upon special conditions of protection under Article 7(3) or has withdrawn its objection under Article 7(6) or is deemed to have withdrawn its objection under Article 7(7), protection based on the international registration may be claimed in the first-mentioned State from the date of the publication referred to in Article 7(8) (iv), (vii) or (viii), as the case may be. TAO/II/2 page 36 Comments on Article 12 General Remarks: From the point of view of the International Bureau, it is very important that the Treaty should be self-supporting as far as its administration is concerned. While it can be presumed that shortly after the entry into force of the Treaty there will be enough international registrations to cover its administrative costs for a number of years, it is foreseen that this source will subsequently more or less dry up, whereas the administration of the Treaty will continue to entail expenditure. To avoid, as far as possible, the need to ask the contracting states to pay contributions (see Article 21(3) (a) (v»), the Article under consideration provides for the payment every ten years of fees for the maintenance of the international registration. This system offers another advantage: by prompting the filing state to examine periodically whether all its registered denominations continue effectively to warrant international protection, it permits the International Register of Geographical Indications to be weeded out from time to time, which is in the interests of everyone. Ad (1): This provision demonstrates the fundamentally imprescriptible nature of geographical indications. Ad (2): Bureau. The Regulations could provide for reminders to be sent by the International Ad (3): It might perhaps be useful to consider the possibility of providing that, in addition to publishing cancelled international registrations, the International Bureau should publish periodically--say, every 10 or 20 years--an updated list of all international registrations in force. It would be rather expensive to undertake such a task but it would have the advantage of enabling all concerned to take stock of the situation. This question could perhaps be dealt with in the Regulations. TAO/II/2 page 37 Article 12 Fees for the Maintenance of the International Registration (1) Subject to paragraph (2), the international registration shall remain valid without limitation in time. (2) All registered denominations shall be subject, as provided in the Regu- lations, to maintenance fees which must be paid not earlier than six months prior to the expiration of each successive period of ten years following the date of publication of the international registration and not later than six months after the expiration of each such period. (3) The International Bureau shall cancel any international registration for which a maintenance fee has not been paid in good time, and shall register and publish the cancellation as provided in the Regulations. TAO!II!2 page 38 Comments on Article 13 This provision clarifies matters in order to dispel any doubts that may arise about the scope of the principle of the application of the law of the filing State. As far as importation is concerned, the Draft does not contain any provision such as is found in certain bilateral treaties whereby the filing State may ask other Contracting states to refuse to authorize importation of products covered by a registered denomination unless these products are accompanied by a document showing that they are entitled to the said denomination, products not accompanied by such a document being turned back upon iMportation. Any such provisions would ion fact be contrary to the present tendency to remove as far as possible all barriers to the movement of goods across frontiers. It could also be contrary to the rules governing the transfer of goods inside I1conunon markets." From a practical point of view, a provision of this sort would not appear to be absolutely essential. TAO/II/2 page 39 Article 13 National Provisions Relating to Importation and Administrative Supervision The principle of the application of the law of the filing State provided for in Article 9 shall not affect the provisions regulating the importation of products in the State of protection, nor shall it oblige the latter State to apply the legislative and administrative provisions of the filing State with regard to adrninis'trative supervision, in particular those relating to the maintenance of entry and exit records and the movement of the products covered by registered denominations. TAO/II/2 page 40 Comments on Article 14 Ad (1): As far as limitation of the international registration is concerned, this provision corresponds to those of Article 6(4) (limitation of the application for international registration) and Article 7(3) (special conditions of protection agreed between two States), Ad (2): This provision fixes the limits of paragraph (1) in that neither a change in the registered denomination nor any change in the reference to products which does not amount to a reduction of the list of products referred to can constitute a limitation within the meaning of this provision. In both cases, the entire international registration process (Articles 6 to 8) must begin again. TAO/II/2 page 41 Article 14 Limitation or Cancellation of the International Registration (1) The filing State may at any time, by means of a declaration addressed The International Bureau shall to the International Bureau, limit an international registration to certain products or in any other manner, or cancel it. tions. (2) Any change in a registered denomination or, subject to paragraph (1), register and publish such limitations or cancellations as provided in the Regula- in the products mentioned in an international registration shall be treated as a new application for international registration. TAo/rr/2 page 42 Comments on Article 15 General Remark: Should an affirmative reply be given to the question posed in the general remarks on Article 9, where it is suggested that it would be desirable to link the application of the law of the filing State to the deposit of the texts of such law, the wording of Article 15 would have to be modified. Ad (1): For the meaning of the expression "other texts," see the general remarks on Article 9. Ad (2): To obtain copies of texts that have been deposited with the International Bureau, it is not necessary to show a legitimate interest. The only requirement is payment of a fee to cover the costs of making the copy and mailing it. TAO/II/2 page 43 Article 15 Communication of Texts of the National Law (1) When filing an application for international registration or at any time thereafter, the filing State may transmit to the International Bureau the legislative texts, regulations or other texts relating, in that State, to the right to the use of a denomination which is the subject of the said application, or of a registered denomination, and governing the requirements for such use. The International Bureau shall publish, as provided in the Regulations, the fact that it has received the said texts. (2) The Internation Bureau shall send to anyone so requesting, against payment of a fee, as provided in the Regulations, a copy of the texts transmitted to it under ?aragraph (1). TAo/rr/2 page 44 Comments on Article 16 General Remarks: Thls provision offers a possible solution to one of the most delicate problems to be solved in this Draft: the problem of prior rights. The corresponding provision in the Lisbon Agreement is Article 5(6), which simply provides the competent authority of the state of protection with the possibility of granting a maximum period of two years in which to terminate use of the registered denomination, on condition that the International Bureau is informed of the authorization granted. In the absence of any such authorization, the protection will not be subject to exceptions. Article 16 of the Draft attempts to provide a solution which takes better account of the interests involved and whose f"lexibility is all the more necessary since the existence of prior rights is not one of the grounds for objection within the meaning of Article 8. The provision under consideration here does not set up a system of authorization; it applies automatically, but only provided there is no risk of confusion. Article 16 of the Draft distinguishes between a right of disposal of existing stocks (paragraph (1)) and a right of continued use in the case of marks and trade names (paragraph (2)). For both paragraphs, the decisive date--that is to say, the date from which prior rights can no longer arise--is the date of publication of the international registration; as for the date of commencement of the period during which use based on a prior right may be continued, it will differ according to the circumstances, because it is the date as of which the protection based on the international registration may be claimed in the State of protection under Article 11 and that date differs according to whether the State concerned has or has not raised an objection. Ad (1): The right of disposal of existing stocks provided for under this provision is available for a period of two years, which corresponds to the period provided for under Article 5(6) of the Lisbon Agreement. This right is available only if the products, packaging, invoices, transport documents or other business papers and advertising material have lawfully been marked with the denomination concerned before the decisive date. It matters little where the marking has been done; what is important is that it should have been lawfully done. Ad (2): This provision provides for a riqht of continued use for marks and trade names. In the case of the latter, only those not comprisinq the user's own name are involved; Article 10(1) (ii) does in fact authorize the use by a person at any time of his own name, in the course of trade, as a trade name but not as a mark. The right of continued use is available only if the mark or the trade name was used: (i) lawfully, (ii) in the State of protection (use in another State will not suffice), (iii) on the decisive date (no prior right will exist where, for example, a mark which was used for several years before the decisive date ceased to be used for a certain time and was actually no longer in use on that date) . It must not be possible to speculate with respect to the right of continued use and that is why it cannot be assiqned inter vivos or transferred by succession except as part of the enterprise concerned-.---The normal period during which it is proposed that the right of continued use should be available is five years (subparagraph (a)). Longer periods are provided for cases where the use has been made for a longer time (subparagraph (b)): 10 years in the case of use for 20 years, and 20 years in the case of use for 50 years. TAO/II/2 page 45 Article 16 Prior Rights (1) Products, packaging, invoices, transport documents and other business papers and advertising material which, prior to the date of pUblication of the international registration of a denomination whose use in the course of trade is prohibited as a result of the said registration, have lawfully been marked with that denomination may still be disposed of or used in the State of protection for a period of two years after the date from which protection may be claimed in that State under Article 11, in so far as there is no risk of confusion. (2) (a) Furthermore, any p2rson who, on the date of publication of the inter- national registration of a denomination whose use in the course of trade is prohibited as a result of the said registration, has been lawfully using that denomina-tion in the course of trade on the territory of the State of protection as a mark/or a trade name not comprising the user's own nam~ shall be entitled to continue such use in that State for a period of [five years] after the date from which protection may be claimed in the said State under Article 11, in so far as there is no risk of confusion. This right may not be assigned inter vivos or transferred by succession except as part of the enterprise concerned. (b) The period referred to in subparagraph (a) shall be extended to (i) [ten years] where such use has been made for more than [twenty years] prior to the date of publication of the international registration; (ii) [twenty years] where such use has been made for more than [fifty years] prior to the date of publication of the international registration. TAO/U/2 page 46 Comments on Article 17 General Remark: the Draft. This provision applies both to Chapter I and to Chapter II of Ad (1): This provision represents a considerable progress comparE:d with the Madrid Agreement in that it provides for the application not only of adm Ln i s tr a t.Lve sanctions .such as seizure but also of civil and penal sanctions. Ad (2): This provision, which deals with the right to bring actions before the courts'or to take action before the administrative authorities, l~ys down a rule that is of particular importance for groups of consumers. On the assumption that groups of consumers of the state of protection are entitled to bring actions in that State, they may bring an action to defend a registered foreign denomination, but the groups of consumers of the state of origin may also bring an action, provided they are entitled to do so in their own State. If, on the other hand, national groups of consumers are not entitled under the law cf the state (;f protection to bring actions, the groups of consume r s of the state of o ri.qi n cennc \ bring an action in the state of protection even thouyh they dre entitled to do so in their own State. The rule outlined above would also apply to federations, associations, groups and bodies representing the producers, manufacturers, traders or consumers concerned. A special problem arises here: in some states there is an o f fLc La I body whose task it is to defend national denominations abroad; but in other States there is no such body. The requirement according to which the law of the s t at.e of protection has to authorize national bodies to take legal proceedings will prevent existing bodies in foreign countries from taking action in all those states where similar bodies do not exist. This disadvantage could be avoided if the aforementioned requirement were not maintained. In the latter event, however, foreign groups of consumers could take action even in those States which do not permit their own groups of consumers to bring legal actions. The same would apply to federations, associations or groups of producers, manufacturers or consumers of a private nature. Such a consequence might seem unreasonable and therefore provision could be made for an exception in the case of official bodies, by adding, for example, between the word "and" and the expression "in so far as" the words "except in the case of official bodies." Question: Should it be provided that official bodies of the State of origin may take action in the state of protection even if there are no similar bodies in the latter State? Ad (3) and (4): These provisions correspond to Article 15 and their purpose is to facilitate proceedinqs against violations of the Treaty. Ad (5): In so far as paragraphs (3) and (4) provide only for the optional deposit of the provisions.of the national law relating to sanctions and the right to bring actions, they will not suffice to facilitate in all cases the protection abroad of national geographical indications. For that reason paragraph (5) provides that Contracting states must endeavor to settle through diplomatic channels all cases of violation of the Treaty that are brought to their notice. Where a case cannot be entirely settled through d f.p Lorna t.Lc channels, this procedure can nevertheless be used to indicate, for example, to interested persons in the State of origin where and how to proceed in the State of protection in order to defend a geographical indication. TAO/II/2 page 47 CHAPTER III COMMON AND TRANSITIONAL PROVISIONS Article 17 Sanctions; Right to Bring Actions; Settlement Through Diplomatic Channels (1) Action against the unlawful acts referred to in Articles 4 and 9 shall in such action, resort shall be had to be taken by virtue of this Treaty itself; all the judicial or administrative remedies, including seizure, which are provided under the law of the State of protection for the repression of the use of false or deceptive geographical indications or the unlawful use of protected denominations. X2) Actions based on this Treaty may be brought before the courts of the State of protection not only by persons and entities entitled under the law of the State of protection to bring such actions, but also by the federations, associations, groups and bodies that represent the producers, manufacturers,traders or consumers concerned and have their registered offices in the State of origin, in so far as the law of the State of origin empowers them to take civil proceedings and in so far as the law of the State of protection permits similar federations, associations, groups and bodies of that State to do so. Subject to the same conditions, and to the same extent, they may claim rights and the application of legal remedies in criminal proceedings and take action before the administrative authorities. (3) Any Contracting State may transmit to the International Bureau the pro(1) and (2). visions of its national law relating to the application of paragraphs The International Bureau shall publish the fact that it has received the said provisions, as provided in the Regulations. (4) The International Bureau shall send to anyone so requesting, against as provided in the Regulations, a copy of the provisions trans- payment of a fee, mitted to it under paragraph (3). (5) The Contracting States shall endeavor to settle through diplomatic channels all cases of violation of this Treaty brought to their notice. TAo/n/2 page 48 Comments on Article 18 General Remark: The purpose of this provision is t.o s u b s t.Lt u te the p rov i sLor.s of the Treaty for those of the Madrid and Lisbon Agreements as r e qa rd s r e La't Lon s between States party both to the Treaty and to one or other cf those Agreements, so that the latter Agreements \"i11 ultimately fall into abeyance. It is not in fact desirable that several treaties having similar objects should coexist indefinitely. Ad (1): This provision, which deals with relations between S't.a t.e s party to both the Madrid Agreement and the Treaty, is self-explanatory. Ad (2): This provision deals with relations between states party to both the Lisbon Agreement and the Treaty. Item (L) concerns the case where a denomination is regis t.e r-e d o n Ly urid e ithe Lisbon Agreement; here, the situation differs according to the time at which registration took place. If the -time of registration was prior to the entry into force of the Treaty with respect to the States concerned, only the Lisbon Agreement is applicable. The Treaty does not therefore apply automatically. If the state of origin wishes the denomination to benefit from the protection afforded by the Treaty, so that in particular its law may be applicable under Article 9 of the Treaty, that state must register the denomination under the Treaty (see item (ii)). If, on the other hand, the registration under the Lisbon Agreement was effected after the entry into force of the Treaty with respect to the states concerned, it will have no effect as regards relations between those states. In other words, it is necessary, after the entry into force of the Treaty, to use the Treaty to obtain protection in those states (registration under the Lisbon Agreement is still useful, however, for obtaining protection in States bound by the Lisbon Agreement but not by the Treaty). Once all the states bound by the Lisbon Agreement have become party to the new Treaty, the "Lisbon route" will be definitely closed. Item (ii) concerns the case where a denomination is registered both under the Lisbon Agreement and under the Treaty; here, the only provisions applicable are those of the Treaty. Where the denomination was the subject of a registration under the Lisbon Agreement before being registered under the Treaty, the provisions of the Treaty are substituted for those of the Lisbon Agreement as soon as p ro t.e c t Lc may be claimed in accordance with Article 11. TAO/II/2 page 49 Article 18 Transitional Provisions (1) As regards relations between Contracting States which are party to the Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods, the provisions of this Treaty shall replace those of the Madrid Agreement. (2) As regards relations between Contracting States which are party to the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration, (i) any denomination registered only under the Lisbon Agreement shall be subject exclusively to the provisions of that Agreement if the registration was effected prior to the entry into force of this Treaty with respect to those States, but the registration shall be without effect if it was effected after the said entry into force; (ii) any denomination registered under both the Lisbon Agreement and this Treaty shall be subject exclusively to the provisions of this Treaty. TAO/LL/2 page 50 Comments on Article 19 to 32 Articles 19 to 32 of the Draft are the customary provisions and in general they call for no comments. In paragraph 4 of the Introduction to this document, mention was made of the possibility of providing for a reservation whereby any state, at the time of signing the Treaty or depositing its instrument of ratification or accession, could declare that it was not bound by the provisions of Chapter II. Contracting states having made such a declaration would not be bound by the provisions of Chapter II and the corresponding provisions of the Regulations. The inclusion in the Treaty of the possibility of such a reservation would imply some changes in other provisions. Thus, Article 19 (Assembly) would have to contain a provision to the effect that only States bound by Chapter II could vote on questions exclusively of interest to them. On the other hand, Article 21 (Finances) could provide that, should contributions be necessary because of expenses arising from the administration of Chapter II, the Assembly could decide to reduce the contributions due by states not bound by Chapter II. Lastly, Article 22 (Regulations) would have to state in paragraph (3) that only states bound by Chapter LL had the right to vote in order to amend the Regulations. TAO/II/2 page 51 CHAPTER IV ADMINISTRATIVE PROVISIONS Article 19 Assembly (1) (a) The Assembly shall consist of the Contracting States. Each Contracting State shall be represented by one delegate, who may (b) be assisted by alternate delegates, advisors, and experts. (2) (a ) The Assembly shall: (i) deal with all matters concerning the maintenance and development of the Union and the implementation of this Treaty, (ii) exercise such rights and perform such tasks as are specially con- ferred upon it or assigned to it under this Treaty; (iii) give directions to the Director General concerning the prepara- tions for revision conferences; (iv) review and approve the reports and activities of the Director General concerning the Union, and give him all necessary instructions concerning matters within the competence of the Union; (v) establish such committees and working groups as it deems appro- priate to facilitate the work of the Union and of its organs; (vi) determine which States other than Contracting States and which intergovernmental and international non-governmental organizations shall be admitted to its meetings as observers; (vii) take any other appropriate action designed to further the objectives of the Union; (viii) (b) perform such other functions as are appropriate under this Treaty. With respect to matters which are of interest also to other Unions administered by the Organization, the Assembly shall make its decisions after having heard the advice of the Coordination Committee of the Organization. (3) (4) A delegate may represent, and vote in the name of, one State only. Each Contracting State shall have one vote. One-half of the Contracting States shall constitute a quorum. In the absence of the quorum, the Assembly may make decisions but, (5) (a) (b) with the exception of decisions concerning its own procedure, all such decisions shall take effect only if the quorum and the required majority are attained through voting by correspondence as provided in the Regulations. "':;; ll> 0 (D H H "''' en <, "'''' TAO/II/2 page 53 [Article 19, continued) (6) (a) Subject to Articles 22(3) and 25(2) (b), the decisions of the Assembly shall require a majority of the votes cast. (b) (7) (a) Abstentions shall not be considered as votes. The Assembly shall meet once every three years in ordinary session upon convocation by the Director General, preferably during the same period and at the same place as the General Assembly of the Organization. (b) The Assembly shall meet in extraordinary session upon convocation by the Director General, either On the Director Generalis own initiative or at the request of one-fourth of the Contracting States. (8) The Assembly shall adopt its own rules of procedure. TAO/II/2 page 55 Article 20 International Bureau (1) The International Bureau shall: Ii) perform the administrative tasks concerning the Union; in parti- cular, it shall perform such tasks as are specially assigned to it under this Treaty or by the Assembly; (ii) provide the secretariat of revision conferences, of the Assembly, of the committees and working groups established by the Assembly, and of any other meeting convened by the Director General and dealing with matters of concern to the Union. (2) The Director General shall be the chief executive of the Union and shall represent the Union. (3) The Director General shall convene all meetings dealing with matters of concern to the Union. (4) (a) The Director General and any staff member designated by him shall participate, without the right to vote, in all meetings of the Assembly, the committees and working groups established by the Assembly, and any other meeting convened by the Director General and dealing with matters of Concern to the Union. (b) The Director General or a staff member designated by him shall be ex officio secretary of the Assembly, and of the committees r working groups and other meetings referred to in subparagraph (al. (5) (a) The Director General shall, in accordance with the directions of the Assembly, make the preparations for revision conferences. (b) The Director General may consult with intergovernmental and inter- national non-governmental organizations concerning the preparations for the said revision conferences. (c) The Director General and persons designated by him shall take part, without the right to vote, in the discussions at revision conferences. (d) The Director General or a staff member designated by him shall be ex o f f Lc.i o: secretary of any revision conference. TAO/II/2 page 57 Article 21 Finances (1) la) The Union shall have a budget. The budget of the Union shall include the income and expenses proper (b) to the Uni9n, its contribution to the budget of expenses common to the Unions administered by the Organization, and any sum made available to the budget of the Conference of the Organization. (c) Expenses not attributable exclusively to the Union but also to one The share of the Union in such common expenses shall be in or more other Unions administered by the Organization shall be considered expenses common to the Unions. proportion to the interest the Union has in them. (2) The budget of the Union shall be established with due regard to the requirements of coordination with the budgets of the other Unions administered by the Organization. (3) (a) The bUdget of the Union shall be financed from the following sources: (i) fees and other charges due for services rendered by the Inter~ national Bureau in relation to the Union; (ii) sale of, or royalties on, the publications of the International Bureau concerning the Union; (iii) gifts, bequests, and subventions; rents, interests, and other miscellaneous income; the contributions of Contracting States, in so far as income (i) to (iv) is not sufficient to cover (iv) (v) deriving from the sources mentioned under the expenses of the Union. (b) The amounts of fees and charges due to the International Bureau (a) (i) and the prices of its publications shall be so fixed under s u bpa r aq r aph that they should, under normal circumstances, be sufficient to COver the expenses of the International Bureau connected with the administration of this Treaty. (c) If the income exceeds the expenses, the difference shall be credited to a reserVe fund. (d) If the budget is not adopted before the beginning of a new financial period, i t shall be at the same level as the budget of the previous year, as provided in the financial regulations. TAO/II/2 page 59 [Article 21, continued] (4) (a) paragraph For the purpose of establishing its contribution as provided in (3) (a) (v ) , each Contracting State shall belong to a class, and shall pay its contribution on the basis of a number of units fixed as follows: Class I Class II Class III Class IV Class V Class VI 25 20 15 10 5 3 Class VII (b) 1 Unless it has already done so, each contracting State shall indicate, concurrently with depositing its instrument of ratification or accession, the class to which it wishes to belong. Any country may change class. If i t chooses a lower class, it must announce such change to the Assembly at one of its ordinary sessions. Any such change shall take effect at the beginning of the calendar year following the said session. (c) The contribution of each Contracting State shall be an amount in the same proportion to the total sum to be contributed as the number of its units is to the total of the units of all the Contracting States. (d) Contributions shall be payable on the first of January of the year for which they are due. (5) (a) The Union shall have a working capital fund which shall be constituted If the fund becomes ·insufIf part of the fund is no by a single payment made by each Contracting State. ficient, the Assembly shall arrange to increase it. longer needed, it shall be reimbursed. (b) The amount of the initial payment of each Contracting State to the said fund or of its participation in the increase thereof shall be a proportion of the contribution which that State may be required to pay under paragraph (3) (a) (v) for the year in which the fund is established or the decision to in- crease it is made. (c) The proportion and the terms of payment shall be fixed by the Assembly on the proposal of the Director General and after it has heard the advice of the Coordination Committee of the Organization. (d) Any reimbursement under subparagraph (a) shall be proportionate to the amounts paid by each Contracting State, taking into account the dates on which they were paid. (e) If a working capital fund of sufficient amount can be constituted by borrowing from the reserve fund, the Assembly may suspend the application of SUbparagraphs (a) to (d). TAO/II/2 page 61 [Article 21, continued] (6) (a) In the headquarters agreement concluded with the State on the terri- tory of which the Organization has its headquarters, it shall be provided that, whenever the working capital fund is insufficient, such State shall grant advances. The amount of those advances and the conditions on which they are granted shall be the subject of separate agreements, in each case, between such State and the Organization. State. (b) fication. As long as it remains under the obligation to grant advances, such State shall have an ex officio seat in the Assembly if it is not a Contracting The State referred to in sUbparagraph (a) and the Organization shall Denunciation shall take effect three years after the end of the year in each have the right to denounce the obligation to grant advances, by written notiwhich it has been notified. (7) tions. The auditing of the accounts shall be effected by one or more of the They shall be designated, with their agreement, by the Assembly. Contracting States or by external auditors, as prOVided in the financial regula- TAO!II!2 page 63 Article 22 Regulations (1) The Regulations provide rules: (i) concerning matters in respect of which this Treaty expressly refers to the Regulations or expressly provides that they are or shall be prescribed; (ii) (iii) (2) concerning any administrative requirements, matters or procedures; concerning any details useful in the implementation of this Treaty. The Regulations adopted at the same time as this Treaty are annexed to this Treaty. (3) The Assembly may amend the Regulations, and such amendments shall require two-thirds of the votes cast. (4) In the case of conflict between the provisions of this Treaty and those of the Regulations, the provisions of this Treaty shall prevail. TAO/II/2 page 65 CHAPTER V DISPUTES Article 23 Disputes Subject to Article 28(1) any dispute between two or more Contracting States I concerning the interpretation or application of this Treaty or the Regulations, not settled by negotiation, may, by any of the Contracting States concerned, be brought before the International Court of Justice by application in conformity with the Statute of the Court, unless the Contracting States concerned agree on some other method of settlement. The Contracting State bringing the dispute the International Bureau before the Court shall inform the International Bureau; shall bring the matter to the attention of the other Contracting States. TAO/II/2 page 67 CHAPTER VI REVISION AND AMENDMENT Article 24 Revision of the Treaty (1) This Treaty may be revised from time to time by a special conference of the Contracting States. (2) The convocation of any revision conference shall be decided by the Assembly. (3) Articles 19, 20, 21 and 25 may be amended either by a revision confer- ence or according to the provisions of Article 25. TAO/II/2 page 69 Article 25 Amendment of Certain Provisions of the Treaty (1) (e ) Proposals for the amendment of Articles 19, 20, 21 and the present Article may be initiated by any Contracting State or by the Director General. (b) Assembly. Such proposals shall be communicated by the Director General to the Contracting States at least six months in advance of their consideration by the 121 (a) Amendments to the Articles referred to in paragraph (1) shall be adopted by the Assembly. (b) Adoption shall require three-fourths of the votes cast, provided that adoption of any amendment to Article 19 and to the present subparagraph shall require four-fifths of the votes cast. (3) (3) Any amendment to the Articles referred to in paragraph (1) shall enter into force one month after written notifications of acceptance, effected in accordance with their respective constitutional processes, have been received by the Director General from three-fourths of the Contracting States members of the Assembly at the time the Assembly adopted the amendment. (b) Any amendment to the said Articles thus accepted shall bind all the Contracting States which were Contracting States at the time the amendment was adopted by the Assembly, provided that any amendment increasing the financial obligations of the said Contracting States shall bind only those States which have notified their acceptance of (c) ~uch amendment. Any amendment which has been accepted and which has entered into shall bind all States which become force in accordance with subparagraph (a) Contracting States after the date on which the amendment was adopted by the Assembly. TAO/II/2 page 71 CHAPTER VII FINAL PROVISIONS Article 26 Becoming Party to the Treaty (1) Any State member of the International Union for the Protection of Industrial Property may become party to this Treaty by: (i) signature followed by the deposit of an instrument of ratification, or (ii) (2) deposit of an instrument of accession. Instruments of ratification or accession shall be deposited with the Director General. TAO/II/2 page 73 Article 27 Entry Into Force of the Treaty (1) With respect to the first five States which have deposited their instru- ments of ratification or accession, this Treaty shall enter into force six months after the date on which the fifth instrument of ratification or accession has been deposited. (2) With respect to any other State, this Treaty shall enter into force three months after the date on which that State has deposited its instrument of ratification or accession, unless a subsequent date has been indicated in the instrument of ratification or accession. In the latter case, this Treaty shall enter into force with respect to that State on the date thus indicated. TAO/II/2 page 75 Article 28 Reservations (1) consider Any Contracting state may, at the time of signing this Treaty or of i~self depositing its instrument of ratification or accession, declare that it does not bound by the provisions of Article 23. With regard to any dispute between any contracting State having made such a declaration and any other Contracting State, the provisions of Article 23 shall not apply. (2) Any Contracting State having made a declaration under paragraph (1) may, at any time, withdraw it by notification addressed to the Director General. (3) No reservations to this Treaty are permitted other than the reservation under paragraph (1). TAO/II/2 page 77 Article 29 Denunciation of the Treaty (1) Any Contracting State may denounce this Treaty by notification addressed to the Director General. (2) benunciation shall take effect one year after the day on which the Director General has received the notification. (3) The right of denunciation provided for in paragraph (1) shall not be exercised by any Contracting State before the expiration of five years from the date on which it becomes party to this Treaty. TAO/II/2 page 79 Article 30 Signature and Languages of the Treaty (1) (a) This Treaty shall be signed in a single original in the English and French languages, both texts being equally authentic. (b) Official texts shall be established by the Director General, after consultation with the interested Governments, in the German, Italian, Japanese, Portuguese, Russian and Spanish languages, and such other languages as the Assembly may designate. (2) This Treaty shall remain open for signature at .. , until .. , 8 'C " ~ 0 <.0. ......... (1) H CD ~ ~, c: [".,) TAO/II/2 page 81 Article 31 Depositary Functions (1) The original of this Treaty, when no longer open for signature, shall be deposited with the Director General. (2) The Director General shall transmit two copies, certified by him, of this Treaty and the Regulations to the Governments of all the States members of the International Union for the Protection of Industrial Property and, on request, to the Government of any other State. (3) the United (4) The Director General shall register this Treaty with'the Secretariat of Nat~ons. The Director General shall transmit two copies, certified by him, of any amendment to this Treaty and to the Regulations to the Governments of the Contracting States and, on request, to the Government of any other State. '0 ;;: "''" H co '<, N N ~ 0 H TAO/II/2 page 83 Article 32 Notifications The Director General shall notify the Governments of Contracting States of: (i) signatures under Article 3D, (ii) Article 26 (2) ; (iii) deposits of instruments of ratification or accession under the date of entry into force of this Treaty under Article 27(1) (iv) (v) (vi) (vii) (viii) declarations made under Article 28(1); withdrawals of declarations made under Article 28(2); acceptances of amendments to this Treaty under Article 25(3) the dates on which such amendments enter into force; denunciations notified under Article 29. [End of document]