Exceptions and negotiations about the use of exceptions

Exceptions and negotiations about the use of exceptions

The TRIPS Agreement's obligations to protect GIs, particularly the additional protection for GIs for wines and spirits, were only acceptable to many members if some important exceptions were provided, most notably to cover pre-existing uses in their countries of the GIs of other countries that would be brought under protection. However, the main demandeurs in the GI negotiations were not willing to make such exceptions, to 'grandfather' pre-existing uses, without the possibility of obtaining full rights over their GIs at some point in the future. Thus, Article 24 addresses both exceptions and the possibility of negotiating the continued use of those exceptions.

1. Generic terms (Article 24.6) -This provision specifies that the TRIPS rules on geographical indications do not require a member to protect the GI of another member if that indication is 'identical with the term customary in common language as the common name' for the goods or services in question in that member, i.e. has become the generic term for describing the goods or services in the local language. For example, 'cheddar' for cheese.

2. Prior trademark rights (Article 24.5) - This exception applies to trademarks that were applied for or registered in good faith, or where trademark rights were acquired through use in good faith. The right must have been acquired either before the date of application of the TRIPS Agreement in the member concerned (i.e. at the end of any relevant transition period) or before the date the GI became protected in its country of origin for the exception to apply.

3. Prior use of the geographical indication (Article 24.4) - This provision relates to prior use of a GI and is primarily applicable in situations where prior use of a GI is not covered by the exceptions for generic terms and prior trademark rights. It only applies to GIs for wines and spirits. It is optional in the sense that it allows, but does not obligate, a member to continue the forms of prior use covered by the provision.