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

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 sellers
  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/fi
sher/domain/tm.htm
4
War Between Trademarks GIs

• TorresSpanish trademark for wine
• Torres-VedrasGI for Portuguese wine
• Budweisertrademark for American beer
• Budejovicky BudvarGI 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. III4-- 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/t
rtdocs_wo020.htmlP71_4054
7
Timeline
DS174 / U.S.
EC Adopt New Regulation 31 March 2006
Request for Consultation 1 June 1999
Panel Report Circulated 15 March 2005
Establishment of Panel 18 August 2003
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) its 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 GIs
• 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 WTOs
  Art. 3.1 on national treatment and GATT Art.
  III4 on favorable treatment to imported products
• EC Regulation limits the WTOs Art. 22 on GIs
  protection

Source WTO.org website
15
ECs Rebuttal

• The EC believe that registration of GI is
  contingent upon adopting the ECs 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.international
traderelations.com/WTO.WTO20Cases--Summaries20(W
TO202008).pdf
16
ECs 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.international
traderelations.com/WTO.WTO20Cases--Summaries20(W
TO202008).pdf
17
ECs 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.international
traderelations.com/WTO.WTO20Cases--Summaries20(W
TO202008).pdf
18
Panels 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.international
traderelations.com/WTO.WTO20Cases--Summaries20(W
TO202008).pdf
19
Panels 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. III4

Source WTO Dispute Settlement One-Page Case
Summaries (2008 Edition), http//www.international
traderelations.com/WTO.WTO20Cases--Summaries20(W
TO202008).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.international
traderelations.com/WTO.WTO20Cases--Summaries20(W
TO202008).pdf
21
Panel Decisions Recommendations

• Agreed with U.S. and Australia that ECs 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 WTOs 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
• Theyre 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/d
  omain/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.international
  traderelations.com/WTO.WTO20Cases--Summaries20(W
  TO202008).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.