WASHINGTON – United States Trade Representative Robert B. Zoellick announced today that the United States had prevailed in its WTO case against the European Union regarding geographic food names known as "geographical indications." Geographical indications, or "GIs", are geographic names that have a particular association with a product, such as Idaho potatoes or Florida oranges.
In its report issued today, the WTO panel agreed with the United States that Europe’s regulation discriminates against U.S. products and producers and is therefore contrary to WTO rules. The panel also agreed with the United States that Europe could not, consistent with WTO rules, deny U.S. trademark owners their rights. The panel emphasized that any exceptions to trademark rights for the use of registered GIs were narrow, and limited to the actual GI name as registered.
"This is a big win for American farmers and food processors. We brought this case because we believed that, under WTO rules, U.S. farmers, ranchers, and other food producers should have the same access to protection for ‘geographical indications’ as European food producers. Europe clearly failed to provide this access," said Zoellick. "We also welcome the panel’s findings that protecting GIs need not and should not harm the rights of trademark owners. These findings are important to the rights of U.S. companies protecting their trademarks in Europe."
Zoellick noted the interest in this case by the House Agriculture Chairman Bob Goodlatte (R-VA) and worked closely with him and his staff on this issue. Under WTO rules, both parties will have an opportunity to appeal the panel report to the WTO Appellate Body after the report is circulated to the WTO membership and the public, probably sometime in the next few months.
Protection of Geographical Indications
"Geographical indications" (GIs) indicate the geographic origin of a product, where the product has some attribute or reputation associated with that origin. Examples could include Parma ham, Roquefort cheese, Florida oranges, Vidalia onions, or Idaho potatoes. The WTO TRIPS Agreement (Agreement on Trade-Related Aspects of Intellectual Property Rights) 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."
"Protection" of GIs can take many forms, but generally consists of ensuring that consumers are not misled as to the geographic origin of the good.
The United States has a robust system for protecting geographical indications, primarily through rights provided to private rightholders under the U.S. trademark system. This system gives access to GI protection on a non-discriminatory basis and in a manner that fully protects the rights of trademark owners.
By contrast, the EC has a special regulatory regime for geographical indications, separate and apart from its trademark system, which depends in significant part on government intervention. It is this GI regime that the United States challenged in this dispute.
Separate from this dispute, there are on-going discussions in the context of the Doha round of WTO negotiations. The EC has advocated expanding GI obligations under the TRIPS Agreement. This panel has found, however, that the EC has not complied with its current TRIPS obligations. From the U.S. perspective, current TRIPS Agreement obligations are sufficient, and a priority should be placed instead on Members meeting current obligations.
At issue is an EU regulation on the protection of GIs for agricultural products and foodstuffs (but not included wine or spirits, which are subject to a separate regulatory system). The United States challenged the EU GI Regulation on two primary grounds: (1) discrimination against U.S. GIs (national treatment) and (2) failure to protect U.S. trademarks.
First, with respect to national treatment, although the EU GI Regulation creates a system for the EU-wide registration and protection of GIs, the United States was concerned that the Regulation imposed significant barriers to registration and protection for non-EU persons and non-EU products. Under the EU system of protection, companies are prohibited from using words in connection with their products that even "evoke" the name of a registered GI, unless they are one of the authorized users of the GI. The U.S. concern was that, for instance, while producers of Parma ham in Italy can stop others from using the name Parma or similar names in the EU market, the GI Regulation would not permit U.S. producers to do the same with respect to their products. The United States alleged that this aspect of the GI Regulation was inconsistent with the EU’s national treatment obligations under the TRIPS Agreement (with respect to protection of intellectual property rights of non-EU nationals) and under the GATT 1994 (with respect to treatment of non-EU goods).
Second, the United States was concerned that the EU GI Regulation would not permit trademark owners to enforce their trademarks – that is, they would not be able to stop the confusing uses of similar GIs, which is one of their rights under the WTO TRIPS Agreement. The specific concern was the use of linguistic variations of GIs, where those linguistic variations are confusingly similar to European trademarks of U.S. companies and are used to market the European GI product, causing consumer confusion. The panel agreed with the United States that this would present concerns under the TRIPS Agreement, and found that the GI Regulation could only protect GI names as registered, and not linguistic variations of the GIs. This is an important principle for U.S. trademark owners. With this understanding, the panel found this aspect of the GI Regulation to be consistent with the TRIPS Agreement.
The United States requested WTO dispute consultations on the EU GI Regulation in June 1999. On August 18, 2003, the United States requested the establishment of a panel, and panelists were appointed on February 23, 2004. The panel issued a confidential draft interim report on November 19, 2004, the results of which were widely reported in the press.