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Protection of Trademarks and Geographical Indications for Agricultural Products and Foodstuffs--DS174 & DS290. Kam Ng and Scott Nelson 7 October 2008. Geographical Indications (GIs).

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Kam Ng and Scott Nelson 7 October 2008

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Kam ng and scott nelson 7 october 2008

Protection of Trademarks and Geographical Indications for Agricultural Products and Foodstuffs--DS174 & DS290

Kam Ng and Scott Nelson

7 October 2008


Geographical indications gis

Geographical Indications (GIs)

Defined at Article 22(1) of the WTO 1995 Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) as:

“indications which identify a good as originating in the territory of a Member, or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attribute to its geographic origin.”

Examples

  • “Florida” for oranges

  • “Idaho” for potatoes

  • “Washington State” for apples

Source: WTO.org website and United States patent and Trademark Office publication


Trademarks

Trademarks

  • A trademark “is a word, symbol, or phrase, used to identify a particular manufacturer or seller’s products and distinguish them from the products of another.” 15 U.S.C. 1127

  • Examples

  • Coca-Cola

  • Pizza Hut

  • McDonalds

Source: http://cyber.law.harvard.edu/metaschool/fisher/domain/tm.htm


War between trademarks gis

War Between Trademarks & GIs

  • Torres—Spanish trademark for wine

  • Torres-Vedras—GI for Portuguese wine

  • Budweiser—trademark for American beer

  • Budejovicky Budvar—GI for Czechoslovakia beer

  • The issue is principles of priority and territoriality

  • Are GIs superior to trademarks? If yes, the war would continue.

e.g. 1

e.g. 2

GI since 1895

Trademark registered 1876

Source: Ohlgart, Dietrich, “Geographical Indications and Trademarks: War or Peace?” 25th Annual ECTA Meeting


Wto agreements provisions

WTO Agreements & Provisions

  • TRIPS Art. 3.1-- National Treatment

  • TRIPS Art. 16.1 & 17– Trademarks Rights and Exceptions

  • TRIPS Art. 22 and 23-- GIs Protection and GIs for Wines & Spirits

  • GATT Art. III:4-- Favorable Treatment to Imported Products

Source: WTO.org website


Paris convention 1967

Paris Convention (1967)

  • Is defined as a “union for the protection of industrial property.”

  • The Paris Convention articles referenced in this dispute include:

  • Article 2 (2) – National Treatment

  • Article 10bis – Unfair Competition

Source: http://www.wipo.int/treaties/en/ip/paris/trtdocs_wo020.html#P71_4054


Timeline

Timeline

DS174 / U.S.

EC

Adopt New

Regulation

31 March 2006

Request for

Consultation

1 June 1999

Establishment

of Panel

18 August 2003

Panel Report

Circulated

15 March 2005

1998

2008

Request for

Consultation

17 April 2003

DS290 / Australia

Source: WTO.org website


Dispute settlement ds174

Dispute Settlement DS174

  • Complainant: United States

  • Respondent: European Communities

  • Third Parties: Argentina, Australia, Brazil, Canada, China, Chinese Taipei, Columbia, Guatemala, India, Mexico, New Zealand, Turkey

  • Summary of Dispute: 1) lack of protection of trademarks & geographical indications for agricultural products & foodstuffs in the EC; 2) EC regulation 2081/92 does not provide national treatment; 3) it’s inconsistent with TRIPS Agreement

Source: WTO.org website


Dispute settlement ds290

Dispute Settlement DS290

  • Complainant: Australia

  • Respondent: European Communities

  • Third Parties: Argentina, Brazil, Canada, China, Chinese Taipei, Columbia, Guatemala, India, Mexico, New Zealand, Turkey, United States

  • Summary of Dispute: Similar to DS174: concerning the protection of trademarks and registration & protection of geographical indications for foodstuffs & agricultural products in the EC.

Source: WTO.org website


Requests of the united states

Requests of the United States

  • On 1 June 1999, the United States requested consultations with the EC.

  • Concerns:

    • Alleged lack of protection of trademarks and geographical indications (GIs)

    • Specifically for agricultural products and food stuffs

  • U.S. contends that EC Regulation 2081/92 did not :

    • Provide national treatment with respect to GI’s

    • Provide protection to pre-existing trademarks

Source: World Trade Organization, “Communities - Protection of Trademarks and Geographical Indications for Agricultural Products and Foodstuffs - Complaint by the United States - Report of the Panel”, WT/DS174/R, March 15, 2005.


Requests of the united states1

Requests of the United States

  • 4 April 2003: U.S. adds an additional request concerning EC Regulation 2081/92

  • Focus of this additional request:

    • Implementation measures

    • Enforcement measures

Source: World Trade Organization, “Communities - Protection of Trademarks and Geographical Indications for Agricultural Products and Foodstuffs - Complaint by the United States - Report of the Panel”, WT/DS174/R, March 15, 2005.


Request of australia

Request of Australia

  • 17 April 2003: consultation requested

  • Measures at issue:

    • Council Regulation (ECC) 2081/92 of 14 July 1992

    • “The EC Measure” as it related to protection of GIs and the designations of origin for agricultural products and foodstuffs

Source: World Trade Organization, “Communities - Protection of Trademarks and Geographical Indications for Agricultural Products and Foodstuffs - Complaint by the United States - Report of the Panel”, WT/DS174/R, March 15, 2005.


Request of australia1

Request of Australia

  • Specific issues related to the “EC Measure” include:

    • National treatment

    • Diminished legal protection for trademarks

    • Unfair competition (Paris Convention 1967)

    • Transparency obligations

    • More trade-restrictive

Source: World Trade Organization, “Communities - Protection of Trademarks and Geographical Indications for Agricultural Products and Foodstuffs - Complaint by the United States - Report of the Panel”, WT/DS174/R, March 15, 2005.


Wto rules inconsistency

WTO Rules & Inconsistency

  • EC Regulation 2081/92 is inconsistent with WTO’s Art. 3.1 on national treatment and GATT Art. III:4 on favorable treatment to imported products

  • EC Regulation limits the WTO’s Art. 22 on GIs protection

Source: WTO.org website


Ec s rebuttal

EC’s Rebuttal

  • The EC believe that registration of GI is contingent upon adopting the EC’s system and offering reciprocal protection

  • The EC system of GI protection, which requires product inspection is consistent with WTO obligation

Source: WTO Dispute Settlement: One-Page Case Summaries (2008 Edition), http://www.internationaltraderelations.com/WTO.WTO%20Cases--Summaries%20(WTO%202008).pdf


Ec s rebuttal1

EC’s Rebuttal

  • National Treatment

    • the conditions in Article 12(1) of the Regulation do not apply to geographical areas located in WTO Members

    • the procedure under Article 12a of the Regulation is not limited to the cases covered by Article 12(3) (“third country”)

    • Burden of proof is on the complainant

Source: WTO Dispute Settlement: One-Page Case Summaries (2008 Edition), http://www.internationaltraderelations.com/WTO.WTO%20Cases--Summaries%20(WTO%202008).pdf


Ec s rebuttal2

EC’s Rebuttal

  • National Treatment under the TRIPS Agreement

    • the conditions in Article 12(1) of the Regulation do not depend on nationality.

    • The European Communities is not a "separate customs territory" within the meaning of footnote 1 to the TRIPS Agreement.

Source: WTO Dispute Settlement: One-Page Case Summaries (2008 Edition), http://www.internationaltraderelations.com/WTO.WTO%20Cases--Summaries%20(WTO%202008).pdf


Panel s decisions recommendations

Panel’s Decisions & Recommendations

  • National Treatment

    • Under Availability of Protection:

    • the EC Regulation3 violated the national treatment obligation under TRIPS Art. 3 by according less favourable treatment to non-EC nationals than to EC nationals.

Source: WTO Dispute Settlement: One-Page Case Summaries (2008 Edition), http://www.internationaltraderelations.com/WTO.WTO%20Cases--Summaries%20(WTO%202008).pdf


Panel s decisions recommendations1

Panel’s Decisions & Recommendations

  • Application Procedures

    • provided formally less favourable treatment to other nationals in violation of Art. 3.1.

    • The Regulation was also found to accord less favourable treatment to imported products inconsistently with GATT Art. III:4

Source: WTO Dispute Settlement: One-Page Case Summaries (2008 Edition), http://www.internationaltraderelations.com/WTO.WTO%20Cases--Summaries%20(WTO%202008).pdf


Panel decisions recommendations

Panel Decisions & Recommendations

  • Inspection Structures

    • the "government participation" requirement under the inspection structures violated TRIPS Art. 3.1

    • provided an "extra hurdle" to third-country applicants

Source: WTO Dispute Settlement: One-Page Case Summaries (2008 Edition), http://www.internationaltraderelations.com/WTO.WTO%20Cases--Summaries%20(WTO%202008).pdf


Panel decisions recommendations1

Panel Decisions & Recommendations

  • Agreed with U.S. and Australia that EC’s GI Regulation 2081/92 does not provide national treatment

  • Agreed with the EC that the Registration is sufficiently constrained to qualify as a “limited exception” to trademark rights

  • Recommended that the EC amend its GI regulation in compliance with WTO rules

Panel Members: Mr. Miguel Mendoza (Chair), Mr. Seung Chang

and Mr. Peter Cheung


Implementation

Implementation

  • The EC, U.S. and Australia agreed that the EC would have until 3 April 2006 to implement the recommendations and rulings

  • The EC announced that it had issued a new regulation and be effective on 31 March 2006

  • U.S. and Australia disagreed that the EC has fully implemented the recommendations and rulings

Source: WTO.org website


Observations

Observations

  • The EC Regulation 2081/92 is not consistent with the WTO’s TRIPS Agreement and GATT 1994

  • To date, the EC might not have fully adopt the DSB recommendations and rulings


National international interests

National & International Interests

  • The GIs and trademarks are brand names which provide the protection to the owners’ rights

  • They’re the critical elements of business branding, and considered one of the comparative advantages

  • U.S., Australia, and EC are competing the market shares in wines, spirits, cheese, and ham, etc.


Discussion

Discussion

  • Would the outcome be the same if the dispute was brought by Australia only?

  • Will the EC fully adopt the DSB recommendations and rulings?

  • Protection rights--Trademarks vs Geographical Indications


References

References

1. World Trade Organization website, http://www.wto.org

2. United States Patent and Trademark Office publication

3.http://cyber.law.harvard.edu/metaschool/fisher/domain/tm.htm

4. World Intellectual Property Organization website, http://www.wipo.org.

5. Ohlgart, Dietrich, “Geographical Indications and Trademarks: War or Peace?” 25th Annual ECTA Meeting

6. WTO Dispute Settlement: One-Page Case Summaries (2008 Edition), http://www.internationaltraderelations.com/WTO.WTO%20Cases--Summaries%20(WTO%202008).pdf

7. World Trade Organization, “Communities - Protection of Trademarks and Geographical Indications for Agricultural Products and Foodstuffs - Complaint by the United States - Report of the Panel”, WT/DS174/R, March 15, 2005.


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