Geographical Indications The Case Against the EC

1
Geographical IndicationsThe Case Against the EC

• Ana Martini
• Shelly Michael
• Stephen Kraly

2
Geographic Indicators

• Geographic Indicator (GI)-is a name or sign used
  on certain products or which corresponds to a
  specific geographical location or origin (eg. a
  town, region, or country). The use of a GI may
  act as a certification that the product
  possesses certain qualities, or enjoys a certain
  reputation, due to its geographical origin.
  (Wikipedia 2006)
• For Example Wines and cheese

3
History of GIs

• Protection
• Late nineteenth century
• European legacy
• Tradition of association with food products in
  certain regions.
• European Union Law
• Protected Designation of Origin (PDO)
• Protected Geographical Indication (PGI)
• Traditional Specialty Guaranteed (TSG)

4
International law

• GIs harmonization
• 1883 Paris convention
• 1958 Lisbon agreement
• 1994 TRIPS
• Article 22, 23 and 24

5
Complainants and Respondent

• Complainant United States
• June 1, 1991
• Request for consultation
• Third-Party Complaints
• Argentina Australia Brazil Canada China
  Chinese Taipei Colombia Guatemala India
  Mexico New Zealand Turkey (WTO)
• Respondent European Communities

6
Actions taken

• Request of consultation
• June 1, 1991, April 3, 2003
• EC Regulation 2081/92
• Established July 14, 1992
• Failed consultation
• Request for panel
• August 18, 200

7
Actions Taken by Third Party..

• Australia
• Request for consultation
• April 17, 2003
• EC regulation inconsistent with
• Articles 1, 2,3,4,16,20,22,24,41,42,63 and 65
  TRIPS agreement
• Articles I and III of GATT 1994
• Technical Barriers to Trade (TBT) Article 2
• WTO agreement XVI4
• (WTOEuropean Communities dispute settlement)

8
Dispute Settlement Body

• DSB
• Separate Request for Panel
• August 18, 2003
• Consideration of complaints
• Joint panel
• Third party rights
• Panel February 23, 2004

9
(EEC) No 2081/92

• Within the EU, GIs are governed by EC Regulation
  2081/92 on the protection of geographical
  indications and designations of origin for
  agricultural products and foodstuffs (The GI
  Regulation). 
• This divides GIs into protected geographical
  indications (PGIs) , protected designations of
  origin (PDOs), and (TSGs).
• Article 2 stipulates that, to qualify as a PGI, a
  food or product must
• (a)     originate in a region, specific place or
  country
• (b)     possess characteristics attributable to
  that geographical origin and
• (c)     be either produced, processed or prepared
  in the defined geographical area. 
• PDOs are slightly more prestigious in that the
  food or product must be produced, processed and
  prepared in the defined geographical area. 
• Traditional Specialities Guaranteed (TSGs)
  indicate a traditional production method rather
  than the region in which a product is made.  At
  present there are only nine registrations of TSGs.

10
Agreements and Provisions Involved

• (1) TRIPS Agreement Articles 1.1, 2.1
  (incorporating by reference Article 2 of the
  Paris Convention for the Protection of Industrial
  Property (Paris Convention (1967), 3.1, 4, 16.1,
  20, 22.1, 22.2, 24.5, 41.1, 41.2, 41.4, 42, 44.1,
  63.1, 63.3, 65.1 and
• (2) Articles I and III4 of the GATT 1994.
• __________

11
TRIPS

• AGREEMENT ON TRADE-RELATED ASPECTS OF
  INTELLECTUAL PROPERTY RIGHTS

12
TRIPS - Article 2Intellectual Property
Conventions

• 1. In respect of Parts II, III and IV of this
  Agreement, Members shall comply with Articles 1
  through 12, and Article 19, of the Paris
  Convention (1967).

13
TRIPS - Article 3National Treatment

• 1. Each Member shall accord to the nationals of
  other Members treatment no less favourable than
  that it accords to its own nationals with regard
  to the protection of intellectual property,
  subject to the exceptions already provided in,
  respectively, the Paris Convention (1967), the
  Berne Convention (1971), the Rome Convention or
  the Treaty on Intellectual Property in Respect of
  Integrated Circuits. In respect of performers,
  producers of phonograms and broadcasting
  organizations, this obligation only applies in
  respect of the rights provided under this
  Agreement. Any Member availing itself of the
  possibilities provided in Article 6 of the Berne
  Convention (1971) or paragraph 1(b) of Article 16
  of the Rome Convention shall make a notification
  as foreseen in those provisions to the Council
  for TRIPS.
• 2. Members may avail themselves of the exceptions
  permitted under paragraph 1 in relation to
  judicial and administrative procedures, including
  the designation of an address for service or the
  appointment of an agent within the jurisdiction
  of a Member, only where such exceptions are
  necessary to secure compliance with laws and
  regulations which are not inconsistent with the
  provisions of this Agreement and where such
  practices are not applied in a manner which would
  constitute a disguised restriction on trade.

14
TRIPS - Article 4Most-Favoured-Nation Treatment

• With regard to the protection of intellectual
  property, any advantage, favour, privilege or
  immunity granted by a Member to the nationals of
  any other country shall be accorded immediately
  and unconditionally to the nationals of all other
  Members. Exempted from this obligation are any
  advantage, favour, privilege or immunity accorded
  by a Member
• (a) deriving from international agreements on
  judicial assistance or law enforcement of a
  general nature and not particularly confined to
  the protection of intellectual property
• (b) granted in accordance with the provisions of
  the Berne Convention (1971) or the Rome
  Convention authorizing that the treatment
  accorded be a function not of national treatment
  but of the treatment accorded in another country
  
• (c) in respect of the rights of performers,
  producers of phonograms and broadcasting
  organizations not provided under this Agreement
• (d) deriving from international agreements
  related to the protection of intellectual
  property which entered into force prior to the
  entry into force of the WTO Agreement, provided
  that such agreements are notified to the Council
  for TRIPS and do not constitute an arbitrary or
  unjustifiable discrimination against nationals of
  other Members.

15
TRIPS - Article 16Rights Conferred

• 1. The owner of a registered trademark shall have
  the exclusive right to prevent all third parties
  not having the owners consent from using in the
  course of trade identical or similar signs for
  goods or services which are identical or similar
  to those in respect of which the trademark is
  registered where such use would result in a
  likelihood of confusion. In case of the use of
  an identical sign for identical goods or
  services, a likelihood of confusion shall be
  presumed. The rights described above shall not
  prejudice any existing prior rights, nor shall
  they affect the possibility of Members making
  rights available on the basis of use.

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TRIPS - Article 22.1 21.2Protection of
Geographical Indications

• 1. Geographical indications are, for the purposes
  of this Agreement, indications which identify a
  good as originating in the territory of a Member,
  or a region or locality in that territory, where
  a given quality, reputation or other
  characteristic of the good is essentially
  attributable to its geographical origin.
• 2. In respect of geographical indications,
  Members shall provide the legal means for
  interested parties to prevent
• (a) the use of any means in the designation or
  presentation of a good that indicates or suggests
  that the good in question originates in a
  geographical area other than the true place of
  origin in a manner which misleads the public as
  to the geographical origin of the good
• (b) any use which constitutes an act of unfair
  competition within the meaning of Article 10bis
  of the Paris Convention (1967).

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TRIPS - Article 24.5International Negotiations
Exceptions

• 5. Where a trademark has been applied for or
  registered in good faith, or where rights to a
  trademark have been acquired through use in good
  faith either
• (a) before the date of application of these
  provisions in that Member as defined in Part VI
  or
• (b) before the geographical indication is
  protected in its country of origin
• measures adopted to implement this Section shall
  not prejudice eligibility for or the validity of
  the registration of a trademark, or the right to
  use a trademark, on the basis that such a
  trademark is identical with, or similar to, a
  geographical indication.

18
TRIPS - Articles 41.1, 41.2,and
41.4 ENFORCEMENT OF INTELLECTUAL PROPERTY RIGHTS

• 1. Members shall ensure that enforcement
  procedures as specified in this Part are
  available under their law so as to permit
  effective action against any act of infringement
  of intellectual property rights covered by this
  Agreement, including expeditious remedies to
  prevent infringements and remedies which
  constitute a deterrent to further infringements.
  These procedures shall be applied in such a
  manner as to avoid the creation of barriers to
  legitimate trade and to provide for safeguards
  against their abuse.
• 2. Procedures concerning the enforcement of
  intellectual property rights shall be fair and
  equitable. They shall not be unnecessarily
  complicated or costly, or entail unreasonable
  time-limits or unwarranted delays.
• 4. Parties to a proceeding shall have an
  opportunity for review by a judicial authority of
  final administrative decisions and, subject to
  jurisdictional provisions in a Member's law
  concerning the importance of a case, of at least
  the legal aspects of initial judicial decisions
  on the merits of a case. However, there shall be
  no obligation to provide an opportunity for
  review of acquittals in criminal cases.

19
TRIPS - Article 42 - Fair and Equitable
Procedures

• Members shall make available to right holders
  civil judicial procedures concerning the
  enforcement of any intellectual property right
  covered by this Agreement. Defendants shall have
  the right to written notice which is timely and
  contains sufficient detail, including the basis
  of the claims. Parties shall be allowed to be
  represented by independent legal counsel, and
  procedures shall not impose overly burdensome
  requirements concerning mandatory personal
  appearances. All parties to such procedures
  shall be duly entitled to substantiate their
  claims and to present all relevant evidence.
  For the purpose of this Part, the term "right
  holder" includes federations and associations
  having legal standing to assert such rights. The
  procedure shall provide a means to identify and
  protect confidential information, unless this
  would be contrary to existing constitutional
  requirements.

20
TRIPS - Article 44.1Injunctions

• 1. The judicial authorities shall have the
  authority to order a party to desist from an
  infringement, inter alia to prevent the entry
  into the channels of commerce in their
  jurisdiction of imported goods that involve the
  infringement of an intellectual property right,
  immediately after customs clearance of such
  goods. Members are not obliged to accord such
  authority in respect of protected subject matter
  acquired or ordered by a person prior to knowing
  or having reasonable grounds to know that dealing
  in such subject matter would entail the
  infringement of an intellectual property right.

21
TRIPS - Article 63.1 63.3Transparency

• 1. Laws and regulations, and final judicial
  decisions and administrative rulings of general
  application, made effective by a Member
  pertaining to the subject matter of this
  Agreement (the availability, scope, acquisition,
  enforcement and prevention of the abuse of
  intellectual property rights) shall be published,
  or where such publication is not practicable made
  publicly available, in a national language, in
  such a manner as to enable governments and right
  holders to become acquainted with them.
  Agreements concerning the subject matter of this
  Agreement which are in force between the
  government or a governmental agency of a Member
  and the government or a governmental agency of
  another Member shall also be published.
• 3. Each Member shall be prepared to supply, in
  response to a written request from another
  Member, information of the sort referred to in
  paragraph 1. A Member, having reason to believe
  that a specific judicial decision or
  administrative ruling or bilateral agreement in
  the area of intellectual property rights affects
  its rights under this Agreement, may also request
  in writing to be given access to or be informed
  in sufficient detail of such specific judicial
  decisions or administrative rulings or bilateral
  agreements.

22
TRIPS - Article 65.1Transitional Arrangements

• 1. Subject to the provisions of paragraphs 2, 3
  and 4, no Member shall be obliged to apply the
  provisions of this Agreement before the expiry of
  a general period of one year following the date
  of entry into force of the WTO Agreement.

23
GATT

• GENERAL AGREEMENT ON TARIFFS AND TRADE 1994

24
GATT 1994 - Article III4

• Provides that products of the territory of a
  Member imported into the territory of another
  Member must be afforded treatment no less
  favorable than that accorded to like products of
  national origin in respect of laws, regulations,
  and requirements affecting their internal sale,
  offering for sale, purchase, transportation,
  distribution, or use

25
US AND GI

• The United States protects geographical
  indications through a trademark system because,
  like trademarks, GIs are source-identifiers,
  indicators of quality, and business interests.
  As with trademarks, geographical indications are
  eligible for relief from acts of infringement and
  unfair competition.
• However, while the US is pressing for strong
  intellectual property protections in general, it
  has proposed more limited protections for
  geographical indications.

26
THE US CLAIMS

• The United States challenged the European
  Communities (EC) Council Regulation (EEC)
• No. 2081/92 of 14 July 1992 on the protection
  of geographical indications and designations of
  origin for agricultural products and foodstuffs,
  as amended, on two main grounds
• (1) discrimination against foreign nationals
  and foreign products with respect to
  geographical indication protection, and
• (2) failure to protect foreign trademarks.

27
THE US CLAIMS

• In adopting Article 2 and its predecessors, the
• EC was keenly aware that, as concerns the
  protection of industrial property, a Member
• would have to provide the same advantages to
  nationals of other Members as it provides to its
• own nationals, regardless of the domestic laws
  or regulations in those other Members relating to
• intellectual property.

28
THE US CLAIMS

• the EC will not register and protect the
  home-based GIs of another Members nationals
  unless that Member itself not the national
  claiming the right, but the
• Member satisfies certain requirements.

29
EC CLAIMS

• Even so, the EC argued to the Panel that the
  terms of the Regulation essentially do not allow
  for coexistence of prior trademarks and later GIs
  because
• 1) there are very few if any trademarks that can
  be registered which could conflict with later GIs
  because geographic terms cannot be registered as
  trademarks in the EC if the geographic name is
  currently linked to the product concerned, or
  could be in the futureand
• 2) a GI will not be registered if--by virtue of
  the acquired distinctiveness and reputation of a
  prior trademark--the GI would be misleading to
  consumers as to the true identity of the product,
  i.e., if a geographic term is registered as a
  trademark because the name has become distinctive
  through use and therefore has reputation and
  renown, a confusing GI will not be registered.

30
EC CLAIMS

• As of the date of establishment of the Panel, the
  EC authorities had registered
• more than 600 geographical indications. The
  complainants have never alleged that
• any of those geographical indications has
  resulted in a likelihood of confusion
• with any prior registered trademark, let alone
  with a trademark owned by a US national.

31
EC CLAIMS

• Because of the registrability criteria
• provided under EC trademark law, the risk of
  confusion between trademarks and
• geographical indications is very limited.

32
EC CLAIMS

• The Napa Valley example The Napa Valley
  title is a famous geographical indication for
  wine. Prior to its official recognition by the US
  authorities, the term Napa had been registered
  as part of several trademarks, some of which were
  not used for wine originating in that region. On
  the complainants interpretation, the owners of
  those trademarks should be entitled to prevent
  the winemakers of Napa Valley from using that
  term in order to describe the origin and the
  characteristics of their wine. This result would
  be manifestly inequitable. And, indeed, the US
  authorities seem to agree. The applicable
  regulations reserve the term Napa Valley
  exclusively for the wine originating in that
  region. By way of exception, prior trademarks
  including that name are allowed to co-exist
  with that geographical indication, subject to
  certain labeling requirements. This solution is
  similar to that provided under Regulation
  2081/92. The EC, therefore, fails to understand
  why the United States has considered it necessary
  to bring this claim against Regulation 2081/92.

33
NATIONAL TREATMENT

• The principle of national treatment embodied in
  the World Trade Organizations (WTO) Agreement on
  Trade Related Aspects of Intellectual Property
  Rights (TRIPS) requires WTO Members to provide
  the same (or better) treatment of foreign
  nationalsregarding intellectual property rights
  as provided to domestic nationals.
• The United States brought the national treatment
  claim against the EC because foreign geographical
  indication (GI) owners do not have the same
  access as EC GI owners to the protections and
  benefits of the EC GI Regulation 2081/92 and thus
  are denied national treatment. This obvious
  feature of the EC GI Regulation is underscored by
  the fact that nearly 700 GIs have been registered
  under the EC Regulation and not one of them is a
  GI from a foreign country.

34
INTERESTS US

• USs international interest is to be able to
  compete, in their view, more fairly with the EC
  which is seen as very protective of their members
  and therefore increase theuir market share in the
  EC
• But the US also needs to protect their own
  domestic market as there are geographic
  indicators not only from country to country but
  within regions

35
INTERESTS EC

• The EC is seen international as probably the most
  protective group of countries that works fiercly
  to protect their industry and their farmers
• So the EC seems to have more of a national
  interest of protecting their industry than an
  International one since they strongly believe in
  strict GIs

36
PANELS DECISION

• WTO has released a dispute-settlement panel
  ruling in Geneva that found that the EU GI
  registry violates WTO agreements on protection of
  intellectual property rights and on trade in
  goods because it discriminates against non-EU
  products.

37
PANELS DECISIONS

• Requirement for Foreign Government Intercession
  is an Unjustified Hurdle for Foreign GI Owners
• Nationals of countries that do not have a system
  in place whereby their government accepts,
  examines, transmits and verifies the GI
  application or opposition for consistency with
  the EC regulations are worse off than EC
  nationals whose governments are required by EC
  Regulations to institute such a system -- in
  getting a GI registration in the EC or in
  opposing a GI application.
• The Panel noted that other sovereign governments
  have no obligation under EC law to establish such
  a system, yet the EC has delegated the task to
  other governments of carrying out specific steps
  on behalf of their nationals for the purposes of
  complying with the EC Regulation.9

38
PANELS DECISION

• The Panel found that the EC never proved that
  cooperation by governments is necessary to ensure
  that the GI meets EC requirements, nor could the
  EC explain why the applicant the entity most
  directly involved and knowledgeable about the GI
  could not provide the evidence required to meet
  EC criteria.

39
PANELS DECISION

• Requirement for Foreign Government Monitored
  Inspection Structures is Not Necessary for
  Compliance with Regulation and is an Unjustified
  Hurdle for Foreign GI owners
• The Panel found that the EC allegation that
  public oversight of inspection structures is
  necessary to ensure compliance with the
  Regulation was not sufficiently proved by the EC.
  Furthermore, the Panel found that the requirement
  for governmentally monitored
• inspection structures for GIs discriminates
  against foreign nationals since foreign
  governments are not required to establish,
  approve and monitor inspection structures for GIs.

40
PANELS DECISION

• But the Panel did not find that the Regulation
  operated as the EC argued and that it did in fact
  provide for coexistence of the trademark and the
  later GI in some circumstances,
• impermissibly impinging on the rights of the
  trademark owner.
• The Panel found that
• 1) for trademarks with reputation, whether
  consumers are mislead as to the true identity of
  the product is a more limited determination than
  as to whether the consumer is likely to be
  confused by the use of the later GI (the TRIPS
  standard for trademark infringement). The EC
  Regulation does not give the trademark owner the
  ability to argue this larger claim granted to
  them under TRIPS to prevent the GI from
  registering and
• 2) for trademarks without reputation, those
  owners are unable to challenge the registration
  of the GI and must coexist with the GI.

41
PANELS DECISION

• The EC Regulation violates Article 16.1 of TRIPS
  by denying the trademark owner the exclusive
  right to prevent confusing uses as to later
  applied for and registered GIs. The Panel agreed,
  with caveats, that the Regulation creates only a
  limited exception under Article 17 but only
  because
• 1) a GI will not be registered if consumers
  would be mislead by the GI as it relates to a
  prior trademark, thus preventing registration of
  a GI if it would cause a high likelihood of
  confusion with the prior trademark
• 2) a GI application is subject to direct
  opposition by interested third parties
• 3) the EC Regulation only authorizes a right to
  use the GI as it appears in the GI registration
  certificate, and therefore, a prior trademark
  owner may prevent the GI from being used in a
  translated form which conflicts with that prior
  trademark and is likely to cause confusion. By
  virtue of this reading of the EC Regulation, the
  WTO Panel was able to find that the EC Regulation
  fit within Article 17s narrow exception.

42
PANELS DECISION

• The Panel agreed, finding that the EC GI
  Regulation is inconsistent with Article 16.1 of
  the TRIPS Agreement.The EC Regulation provides
  that the GI cannot be established if consumers
  would be misled as to the true identity of the
  product due to a conflict with a prior trademark
• Panel Orders EC to Accept Direct Applications and
  Direct Objections

43
The Dispute Settlement Body on 20 April 2005
adopted the panel report on the European
Communities' protection of trademarks and
geographical indications for agricultural
products and foodstuffs. The DSB ruled that the
EC GI Regulation discriminates against foreign
nationals by requiring equivalent systems of
protection in the foreign country, reciprocal
protection for EC GIs in that country,15 and
foreign government intercession in the EC GI
application 16 and objection processes.

• DISPUTE SETLEMENT BODY

44
DISPUTE SETLEMENT BODY

• The DSB recommended that the EC bring its
  regulation into conformity with its obligations.
  Presumably, the EC will have to amend its
  Regulation to allow foreign nationals to apply
  directly and obtain protection for foreign GIs in
  the EC without intervention or action by their
  government in the process, and without any
  requirement that the foreign nationals own
  government has a GI system that is equivalent to
  the ECs.

45
DISPUTE SETLEMENT BODY

• Also, according to the DSBs recommendations and
  rulings, the EC cannot require a foreign
  government to create or monitor inspection
  structures for ensuring GI specifications are met
  as a condition for the foreign national to get GI
  protection in the EC. The EC must also allow
  foreign nationals to file objections to GI
  applications of others directly with the
  Commission.

46
Implementation

• Europe request ample time for implementation
• Agreement on allotted time for Implementation on
  DSB Recommendations
• 11 months and 2 weeks
• April 3, 2006
• EU claimed will implement DSB decision in
  allotted time.
• Regulation 2081/92 No longer in Force

47
Proposals

• Fairly new legislation
• As long as EU follows through with implementation
  then there will be no problem.
• However there are always losers
• Supplier of foodstuff that are protected under
  the GIs.
• May cause further cases the new legislation or
  just another form of protection

48
References

• http//www.wto.org/English/tratop_e/dispu_e/cases_
  e/ds174_e.htm
• http//www.wto.org/english/tratop_e/dispu_e/cases_
  e/ds174_e.htm
• http//www.ictsd.org/html/weekly/story1.26-09-00.h
  tm
• http//www.fas.usda.gov/gainfiles/200308/145985850
  .doc
• http//www.nationalaglawcenter.org/assets/crs/RS21
  569.pdf
• Communities - Protection of Trademarks and
  Geographical Indications for Agricultural
  Products and Foodstuffs (WT/DS174, WT/DS290)
  Comments of the United States on the Reply of the
  World Intellectual Property Organization To the
  Panels Letter of July 9, 2004. September 28,
  2004
• European Communities Protection of Trademarks
  and Geographical Indications for Agricultural
  Products and Foodstuffs Oral Statement of the
  European Communities