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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).

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Kam Ng and Scott Nelson 7 October 2008

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

  2. 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

  3. 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

  4. 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

  5. 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

  6. 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

  7. 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

  8. 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

  9. 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

  10. 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.

  11. 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.

  12. 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.

  13. 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.

  14. 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

  15. 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

  16. 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

  17. 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

  18. 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

  19. 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

  20. 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

  21. 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

  22. 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

  23. 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

  24. 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.

  25. 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

  26. 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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