DS 174 – Trademarks & Geographical Indications

1. DS 174 – Trademarks & Geographical Indications United States v. European Communities. Abygail Sunga Asma Testouri

2. DS174 At A Glance

3. Complaints by the United States (WT/DS174) In June 1999, 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: • Discrimination against foreign nationals and foreign products with respect to geographical indication protection, and • Failure to protect foreign trademarks.

4. Complaint by Australia (WT/DS290) On 17 April 2003, Australia requested consultations with the EC concerning the Regulation No 2081/92 of 14 July 1992 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs and related measures. Australia’s complaint focused on the facts that: • The EC measure may diminish the legal protection for trademarks • the EC measure seems not to accord immediately and unconditionally to the nationals and/or products of each WTO Member any advantage, favor, privilege of immunity granted to the nationals and/or like products of any other WTO Member

5. Offending Measure • EC Regulation 2081/92 • Regulations laying down the basis for the European Union Protected Food Name schemes. • Regulation is inconsistent with: • National treatment principle • Agreement on Trade Related Aspects of Intellectual Property • Article 22, Protection of Geographical Indications • Article 23, Additional Protection for Geographical Indications for Wines and Spirits

6. What are "geographical indications" or "GIs"? Article 22 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) defines GIs 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 attributable to its geographic origin.”

7. What does TRIPS say about the protection of geographical indications? TRIPS prescribes two levels of protection for geographical indications: • a general level of protection which requires Members to provide the legal means for interested parties to prevent the use of GIs which mislead the public as to the true geographic origin of the good, or which constitute an act of unfair competition (Article 22); and • a higher level of protection for wines and spirits which requires Members to provide the legal means for interested parties to prevent the use of GIs to identify wines and spirits that do not originate in the place indicated, whether or not the indication is misleading or accompanied by expressions such as ‘kind’, ‘type’ or ‘imitation’ (Article 23)

8. What is a Trademark? The USPTO (United States Patent and Trademark Office) States that: “A trademark includes any word, name, symbol, or device, or any combination, used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. In short, a trademark is a brand name.”

9. What does TRIPS say about the protection of Trademarks? The agreement defines: • What Type of signs that must be eligible for protection as trademarks, and • What minimum rights conferred on their owners must be. It also says that service marks must be protected in the same way as trademarks used for goods. Marks that have become well-known in a particular country enjoy additional protection.

10. Trademark

11. DS 174 Timeline

12. Trademark

13. We enjoy trademark protection Roquefort Cheese Roquefort, France Parma Ham Parma, Italy

14. What about us? Florida Oranges Florida, U.S.A. Idaho Potato Idaho, U.S.A. Vidalia Onion Vidalia, GA, U.S.A

15. DS 174 Timeline

16. Arguments of Parties to DS174

17. DS 174 Timeline

18. WTO Panel Recommendation • Panel agreed with the United States, that the European Community’s laws on trademark protection of non-European agricultural goods and foodstuffs are inconsistent with the national treatment principle and the TRIPS Agreement. • Dispute Settlement Body decided that the European Community must bring their domestic laws into conformity with WTO rules and regulations. • The European Community agreed with the DSB recommendations and rulings and asked that they be given 11 months and 2 weeks to fully implement the ruling, expiring in April 2006

19. Implementation • European Community repealed the offending measure, EC Regulation 2081/92 • European Community implement new regulations laying down the basis for the EUs Food Naming schemes

20. Where are they now? • The U.S. disagrees that the European Community has fully implemented the panel’s recommendations and rulings and asks the European Community to revise their newly promulgated regulation • European Community still asserts that they have complied 100% • No formal appeal has been requested at the WTO

21. Conclusion • Agree or Disagree with the Panel’s recommendation? • Questions?