|Short Title||Full Case Title and Citation|
|Argentina – Footwear (EC)||Appellate Body Report, Argentina – Safeguard Measures on Imports of Footwear, WT/DS121/AB/R, adopted 12 January 2000, DSR 2000:I, 515|
|Australia – Salmon||Appellate Body Report, Australia – Measures Affecting Importation of Salmon, WT/DS18/AB/R, adopted 6 November 1998, DSR 1998:VIII, 3327|
|Belgium – Family Allowances||GATT Panel Report, Income Tax Practices Maintained by Belgium, adopted 7 December 1981, BISD 23S/127 and 28S/114|
|Brazil – Aircraft||Appellate Body Report, Brazil – Export Financing Programme for Aircraft, WT/DS46/AB/R, adopted 20 August 1999, DSR 1999:III, 1161|
|Canada – Patent Term||Appellate Body Report, Canada – Term of Patent Protection, WT/DS170/AB/R, adopted 12 October 2000, DSR 2000:X, 5093|
|Canada – Periodicals||Appellate Body Report, Canada – Certain Measures Concerning Periodicals, WT/DS31/AB/R, adopted 30 July 1997, DSR 1997:I, 449|
|Canada – Pharmaceutical Patents||Panel Report, Canada – Patent Protection of Pharmaceutical Products, WT/DS114/R, adopted 7 April 2000, DSR 2000:V, 2289|
|EC – Asbestos||Appellate Body Report, European Communities – Measures Affecting Asbestos and Asbestos-Containing Products, WT/DS135/AB/R, adopted 5 April 2001, DSR 2001:VII, 3243|
|EC – Bananas III||Appellate Body Report, European Communities – Regime for the Importation, Sale and Distribution of Bananas, WT/DS27/AB/R, adopted 25 September 1997, DSR 1997:II, 591|
|EC – Bananas III (US)||Panel Report, European Communities – Regime for the Importation, Sale and Distribution of Bananas – Complaint by the United States, WT/DS27/R/USA, adopted 25 September 1997, as modified by the Appellate Body Report, WT/DS27/AB/R, DSR 1997:II, 943|
|EC – Hormones||Appellate Body Report, EC Measures Concerning Meat and Meat Products (Hormones), WT/DS26/AB/R, WT/DS48/AB/R, adopted 13 February 1998, DSR 1998:I, 135|
|EC – Sardines||Appellate Body Report, European Communities – Trade Description of Sardines, WT/DS231/AB/R, adopted 23 October 2002|
|EC – Tariff Preferences||Appellate Body Report, European Communities – Conditions for the Granting of Tariff Preferences to Developing Countries, WT/DS246/AB/R, adopted 20 April 2004.|
|EEC – Parts and Components||GATT Panel Report, European Economic Community – Regulation on Imports of Parts and Components, adopted 16 May 1990, BISD 37S/132|
|India – Patents (US)||Appellate Body Report, India – Patent Protection for Pharmaceutical and Agricultural Chemical Products, WT/DS50/AB/R, adopted 16 January 1998, DSR 1998:I, 9|
|India – Patents (US)||Panel Report, India – Patent Protection for Pharmaceutical and Agricultural Chemical Products – Complaint by the United States, WT/DS50/R, adopted 16 January 1998, as modified by the Appellate Body Report, WT/DS50/AB/R, DSR 1998:I, 41|
|India – Patents (EC)||Panel Report, India – Patent Protection for Pharmaceutical and Agricultural Chemical Products – Complaint by the European Communities, WT/DS79/R, adopted 22 September 1998, DSR 1998:VI, 2661|
|Indonesia – Autos||Panel Report, Indonesia – Certain Measures Affecting the Automobile Industry, WT/DS54/R, WT/DS55/R, WT/DS59/R, WT/DS64/R and Corr.1, 2, 3, and 4, adopted 23 July 1998, DSR 1998:VI, 2201|
|Japan – Alcoholic Beverages II||Appellate Body Report, Japan – Taxes on Alcoholic Beverages, WT/DS8/AB/R, WT/DS10/AB/R, WT/DS11/AB/R, adopted 1 November 1996, DSR 1996:I, 97|
|Korea – Dairy||Appellate Body Report, Korea – Definitive Safeguard Measure on Imports of Certain Dairy Products, WT/DS98/AB/R, adopted 12 January 2000, DSR 2000:I, 3|
|Korea – Various Measures on Beef||Appellate Body Report, Korea – Measures Affecting Imports of Fresh, Chilled and Frozen Beef, WT/DS161/AB/R, WT/DS169/AB/R, adopted 10 January 2001, DSR 2001:I, 5|
|Korea – Various Measures on Beef||Panel Report, Korea – Measures Affecting Imports of Fresh, Chilled and Frozen Beef, WT/DS161/R, WT/DS169/R, adopted 10 January 2001, as modified by the Appellate Body Report, WT/DS161/AB/R, WT/DS169/AB/R, DSR 2001:I, 59|
|Thailand – H-Beams||Appellate Body Report, Thailand – Anti-Dumping Duties on Angles, Shapes and Sections of Iron or Non-Alloy Steel and H-Beams from Poland, WT/DS122/AB/R, adopted 5 April 2001, DSR 2001:VII, 2701|
|Turkey – Textiles||Panel Report, Turkey – Restrictions on Imports of Textile and Clothing Products, WT/DS34/R, adopted 19 November 1999, as modified by the Appellate Body Report, WT/DS34/AB/R, DSR 1999:VI, 2363|
|US – 1916 Act||Appellate Body Report, United States – Anti-Dumping Act of 1916, WT/DS136/AB/R, WT/DS162/AB/R, adopted 26 September 2000, DSR 2000:X, 4793|
|US – Carbon Steel||Appellate Body Report, United States – Countervailing Duties on Certain Corrosion-Resistant Carbon Steel Flat Products from Germany, WT/DS213/AB/R and Corr.1, adopted 19 December 2002|
|US – Certain EC Products||Appellate Body Report, United States – Import Measures on Certain Products from the European Communities, WT/DS165/AB/R, adopted 10 January 2001, DSR 2001:I, 373|
|US – Corrosion-Resistant Steel Sunset Review||Appellate Body Report, United States – Sunset Review of Anti-Dumping Duties on Corrosion-Resistant Carbon Steel Flat Products from Japan, WT/DS244/AB/R, adopted 9 January 2004|
|US – FSC (Article 21.5 – EC)||Appellate Body Report, United States – Tax Treatment for "Foreign Sales Corporations" – Recourse to Article 21.5 of the DSU by the European Communities, WT/DS108/AB/RW, adopted 29 January 2002|
|US – Gasoline||Appellate Body Report, United States – Standards for Reformulated and Conventional Gasoline, WT/DS2/AB/R, adopted 20 May 1996, DSR 1996:I, 3|
|US – Section 110(5) Copyright Act||Panel Report, United States – Section 110(5) of the US Copyright Act, WT/DS160/R, adopted 27 July 2000, DSR 2000:VIII, 3769|
|US – Section 211 Appropriations Act||Appellate Body Report, United States – Section 211 Omnibus Appropriations Act of 1998, WT/DS176/AB/R, adopted 1 February 2002|
|US – Section 301 Trade Act||Panel Report, United States – Sections 301-310 of the Trade Act of 1974, WT/DS152/R, adopted 27 January 2000, DSR 2000:II, 815|
|US – Section 337||GATT Panel Report, United States Section 337 of the Tariff Act of 1930, adopted 7 November 1989, BISD 36S/345|
|US – Tobacco||GATT Panel Report, United States Measures Affecting the Importation, Internal Sale and Use of Tobacco, adopted 4 October 1994, BISD 41S/I/131|
"To examine, in the light of the relevant provisions of the covered agreements cited by the United States in document WT/DS174/20 and Australia in document WT/DS290/18, the matter referred to the DSB by the United States and Australia in those documents, and to make such findings as will assist the DSB in making the recommendations or in giving the rulings provided for in those agreements."
(a) Articles 1.1, 3.1, 4, 16.1, 22.2, 41.1, 41.2, 41.4, 42, 44.1 and 65.1 of the TRIPS Agreement and, through its incorporation by Article 2.1 of the TRIPS Agreement, Article 2 of the Paris Convention (1967); and
(b) Articles I:1 and III:4 of GATT 1994.
(a) find that certain measures not yet adopted at the time the Panel was established, and the United States' claim under Article 2(2) of the Paris Convention (incorporated by Article 2.1 of the TRIPS Agreement), are outside the Panel's terms of reference; and
(b) reject all claims within the Panel's terms of reference.
Incorporation of arguments by co-complainant
Letter from Commissioner Lamy
The phrase "[w]ithout prejudice to international agreements"
Examination of applications for registration
Article XX(d) of GATT 1994
Marks of origin
Right to prevent the use of translations of registered GIs
Exceptions in trademark legislation with respect to the use of GIs
Suggestion by the Panel on a way to implement its recommendation
1. The European Communities is of the view that the requests for establishment of a panel in this matter do not meet the requirements of Article 6.2 of the DSU. It has requested that the Panel issue a preliminary ruling regarding this question.10
2. The United States is of the view that the European Communities' arguments in support of its request for a preliminary ruling that the United States' panel request does not meet the requirements of Article 6.2 of the DSU are without merit. It submits that the Panel should reject that request.11
4. Article 6.2 of the DSU provides as follows:
"2. The request for the establishment of a panel shall be made in writing. It shall indicate whether consultations were held, identify the specific measures at issue and provide a brief summary of the legal basis of the complaint sufficient to present the problem clearly. In case the applicant requests the establishment of a panel with other than standard terms of reference, the written request shall include the proposed text of special terms of reference."
5. The European Communities alleges that the requests for establishment of a panel are inconsistent with the following requirements in Article 6.2:
(a) they fail to identify the specific measure at issue; and
(b) they do not provide a brief summary of the legal basis of the complaint sufficient to present the problem clearly.
6. The Panel will examine each of the requests for establishment of a panel as a whole on its face in the light of the parties' respective communications to the Panel to date and the relevant provisions of the covered agreements to assess its compliance with each of these requirements in the sections below.13
(b) United States' request for establishment of a panel14
(i). Identification of the specific measure at issue
7. The United States' request, in its first paragraph, refers to the following measure:
"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".
8. The United States' request, in its second paragraph, identifies the following measures at issue:
"Regulation 2081/92, as amended, and its related implementing and enforcement measures ('Regulation 2081/92')".
Council Regulation (EEC) No. 2081/92, as amended
9. The United States' request identifies a particular regulation by the name of the authority which adopted it, by its number, by its date of adoption and by its full title. It includes amendments of this regulation. This is a specific measure,15 and the request has identified it. There is no doubt as to which specific measure is in issue, as the European Communities has itself demonstrated by annexing a consolidated text of the regulation to the request for a preliminary ruling.16
10. The European Communities argues that:
"The unspecific reference to Regulation 2081/92 made in the Panel requests does not permit the EC to understand which specific aspects among those covered by Regulation 2081/92 the complainants intend to raise in the context of the present proceedings." (italics added)
11. The Panel considers the ordinary meaning of the terms of the text in Article 6.2 of the DSU, read in their context and in the light of the object and purpose of the provision, to be quite clear. They require that a request for establishment of a panel "identify the specific measures at issue". They do not require the identification of the "specific aspects" of these "specific measures."
"its related implementing and enforcement measures"
12. The United States' request identifies, in addition to the regulation as amended, "its related implementing and enforcement measures". The European Communities asserts that this phrase does not appear in the United States' request.17 The Panel draws the European Communities' attention to the definition of "Regulation 2081/92" in the second paragraph of the request.18 This phrase, as used in the United States' request, expressly refers to measures which implement and enforce Regulation (EEC) No. 2081/92, as amended. The word "related" is not used in isolation in the request.
13. The Regulation as amended itself expressly provides for the taking of particular types of decisions and actions and the adoption of rules of procedure for applying the Regulation. For example, Article 6 provides for the Commission to verify that registration applications include all the requisite particulars and, if it concludes that the name qualifies for protection, to publish certain details and, if no objection is notified, the name is entered in a register or, if the Commission concludes that the name does not qualify for protection, to decide not to proceed with the publication. Article 11a provides that the Commission may cancel the registration of a name. Article 12 provides for decisions by the Commission as to whether a third country satisfies the equivalence conditions and offers the requisite guarantees. Article 12b provides for the Commission, if it concludes that a name the subject of a registration request sent by a third country satisfies the conditions for protection, to publish certain details or, if it concludes that the name does not satisfy the conditions for protection, to decide not to proceed with publication. Article 16 provides for detailed rules for applying the Regulation to be adopted.19 Those decisions, actions and rules, among others, implement the Regulation. The European Communities has indicated that the competent judicial and executive authorities enforce the Regulation.20 In the Panel's view, this does not imply that there is any uncertainty as to which measures taken by those authorities implement and enforce the Regulation and which do not. All of the Regulation's implementing and enforcement measures form a group of specific measures which, although they may be a large group, are identified by the United States' request for establishment of a panel.21
14. For these reasons, on the basis of the facts available to us, the Panel rules that the United States' request for establishment of a panel did not fail to identify the specific measures at issue in accordance with Article 6.2 of the DSU.
(ii) A brief summary of the legal basis of the complaint sufficient to present the problem clearly
15. The United States' request, in its third paragraph, sets out in narrative form alleged inconsistencies with the covered agreements, by quoting or paraphrasing the text of certain provisions of the covered agreements. The fourth paragraph begins with the words "Regulation 2081/92 appears to be inconsistent with:" and then sets out provisions of the covered agreements by number with which the United States alleges that the measures at issue are inconsistent.
16. It is clear on a plain reading of the request that the series of numbered provisions is not to be limited to what appears in the narrative text. The narrative text quotes or paraphrases some of these provisions which, in the Panel's view, illustrates and clarifies the alleged violations. In this regard, the Panel notes that the European Communities has conceded that it recognizes in the narrative text the treaty language of Articles 3 and 4 of the TRIPS Agreement and Articles I:1 and III:4 of the GATT 1994.22
17. The series of numbered provisions identifies every article of every covered agreement at issue and, where there are paragraphs within an article, it identifies every paragraph by number (with the exception of Article 2 of the Paris Convention, as incorporated by Article 2.1 of the TRIPS Agreement, and Article I of the GATT 1994).
18. The Panel considers that the mere listing of provisions of the relevant covered agreements may not satisfy the standard of Article 6.2 of the DSU, for instance, where the listed provisions establish multiple obligations rather than one single, distinct obligation.23 However, where the multiple obligations are closely related and interlinked, a reference to a common obligation in the specific listed provisions should be sufficient to meet the standard of Article 6.2 of the DSU under certain circumstances in a particular case.24
19. With these considerations in mind, the Panel now examines individual claims related to each provision listed by the United States in its request for establishment of a panel. The Panel notes that Articles 1.1, 2.1 (incorporating by reference Article 2 of the Paris Convention (1967)), 3.1, 4, 16.1, 20, 24.5, 41.4, 44.1, 63.1, 63.3 and 65.1 of the TRIPS Agreement and Article III:4 of the GATT 1994, which were enumerated in the United States' request, each contains either a single obligation or very closely related obligations. In addition, the Panel notes the following:
(a) Article 22.1 of the TRIPS Agreement does not set out an obligation but rather a definition of a term which is used in other provisions set out in the United States' request. The reference to Article 22.1 and the corresponding narrative text in the request actually presents the problem more, rather than less, clearly because they explain that the United States will challenge the measures at issue under the relevant obligations on the basis of an alleged inconsistency with this definition;
(b) Article 22.2 of the TRIPS Agreement contains an obligation regarding the use of a geographical indication in two circumstances, but the narrative text paraphrases the first one from Article 22.2(a). This clarifies that the obligation in this circumstance is the subject of a claim;
(c) Article 41.1 of the TRIPS Agreement contains a general obligation which relates, on its face, to "enforcement procedures as specified in [Part III]". Several of those enforcement procedures are raised in the United States' request, namely those under Articles 41.2, 41.4, 42 and 44.1. This clarifies that the general obligation is the subject of a claim in relation to these procedures. The narrative text also states that the regulation at issue "does not provide adequate enforcement procedures";
(d) Article 41.2 of the TRIPS Agreement contains general obligations which relate to the operation of procedures concerning the enforcement of intellectual property rights. The requirements of each sentence of Article 41.2 are distinct but they are all closely related;
(e) Article 42 of the TRIPS Agreement contains closely related obligations concerning fair and equitable procedures. The requirements of each sentence in Article 42 are distinct but they all set out specific features of fair and equitable civil judicial procedures concerning the enforcement of intellectual property rights;
(f) the focus of the claims under Articles 41.1, 41.2 and 42 of the TRIPS Agreement is further clarified by the fact that the measures at issue deal with the subject of the protection of geographical indications and designations of origin, which does not impact all intellectual property rights covered by the Agreement, and the narrative text also refers to the protection of trademarks and geographical indications; and
(g) Article I of the GATT 1994 contains four paragraphs, but the narrative text quotes only the first paragraph. This clarifies that the obligation in Article I:1 is the subject of a claim. The European Communities recognizes this treaty text.25
20. The European Communities further contends that it is entitled to know which provision or aspect of Regulation No. 2081/92 is supposed to violate certain obligations and in which way such a violation is deemed to occur. In the Panel's view, the European Communities is seeking the arguments, rather than just the claims, of the United States.26 That being said, the Panel wishes to assure the European Communities that it is fully entitled to know the arguments of the United States during the course of the proceedings. Those arguments must be set out and may be clarified in the United States' submissions.27 However, Article 6.2 of the DSU does not require those arguments to be set out in the request for establishment of a panel.28
21. The Panel notes that Article 6.2 of the DSU calls for sufficient clarity with respect to the legal basis of the complaint so as to enable a defending party to begin preparing its defence.29 Our examination of the United States' request for establishment of a panel as a whole, in the light of the United States' and the European Communities' respective communications to the Panel to date and the relevant provisions of the covered agreements, leads us to believe that the request for establishment of a panel was sufficiently clear for the European Communities to begin preparing its defence.
22. For these reasons, on the basis of the facts available to us, the Panel rules that the United States' request for establishment of a panel did not fail to provide a brief summary of the legal basis of the complaint sufficient to present the problem clearly in accordance with Article 6.2 of the DSU.
(d) Due process
43. The European Communities is also of the view that the "deficiencies" of the requests for establishment of a panel seriously prejudice its due process rights as a defending party, notably, to know the case it has to answer.31
44. The Panel recalls once again that Article 6.2 of the DSU calls for sufficient clarity with respect to the legal basis of the complaint so as to enable a defending party to begin preparing its defence.32 In this respect, the Panel has found that the complainants' requests for establishment of a panel were sufficiently clear for the European Communities to begin preparing its defence.33 Therefore, the Panel considers that it is not necessary to make a separate ruling on this issue, as presented by the European Communities in its request.34
45. The Panel is mindful of the due process rights of all parties in this proceeding. In this regard, it notes that the European Communities had a period of over four months after the establishment of the Panel prior to its constitution plus a period of over seven weeks prior to receipt of the complainants' first written submissions to begin preparing its case, and will have an additional period of four and a half weeks from receipt of the complainants' first written submissions to continue preparation of its own first written submission, which is in excess of the maximum period proposed in Appendix 3 to the DSU.
46. The European Communities submitted its request for a preliminary ruling two days after the composition of the Panel. It also raised its concerns at the DSB meetings at which the requests for establishment of a panel were considered.35
47. The Panel therefore considers that the European Communities has raised its concerns in a timely manner.36
48. In light of the foregoing, on the basis of the facts available to us, the Panel rules that the measures and claims in Australia's and the United States' respective requests for establishment of a panel did not fail to meet the requirements of Article 6.2 of the DSU that they identify the specific measures at issue and provide a brief summary of the legal basis of the complaint sufficient to present the problem clearly. [End of 5 April 2004 ruling]
"The unspecific reference to Regulation 2081/92 made in the Panel requests does not permit the EC to understand which specific aspects among those covered by Regulation 2081/92 the complainants intend to raise in the context of the present proceedings."39
(a) the United States' claims concerning national treatment (considered in Section VII:B of this report) are based on the differences between the two sets of registration and objection procedures set out in Regulation (EEC) No. 2081/92 (the "Regulation") in Articles 5 through 7 and 12 through 12d, respectively.41 This is one of the principal features of the Regulation. It was clear from the request for establishment of a panel that the complainant intended to raise these aspects of the Regulation; and
(b) the United States' claim concerning the legal protection for trademarks (considered in Section VII:C of this report) is based on Article 14 of the Regulation. This provision is specifically devoted to that issue. It was clear from the request for establishment of a panel that the complainant intended to raise this article of the Regulation, as the European Communities itself confirmed in its request for a preliminary ruling42.
"In the present case, the ambiguity of the Panel request is such that the EC is, to this date, not sure of the case which the United States and Australia are bringing before the Panel. As a consequence, the EC has been seriously hampered in its efforts to prepare its defence."43
"[T]he US claim is limited to a paraphrasing of the treaty language of [Article 3 TRIPS and Article III:4 GATT]. The US claim does not permit to understand which provision or aspect of Regulation 2081/92 is supposed to violate the national treatment principle, and in which way such a violation is deemed to occur."44
"The United States alleges that Regulation 2081/92 'does not provide legal means for interested parties to prevent the misleading use of a geographical indication'. This claim is not comprehensible to the EC. In its Article 13, Regulation 2081/92 contains detailed provisions regarding the protection of geographical indications. These provisions provide interested parties with the legal means to prevent the misleading use of a geographical indication. In the absence of further explanations, the EC fails to comprehend what is the claim that the United States is intending to establish."48
"1. Without prejudice to international agreements, this Regulation may apply to an agricultural product or foodstuff from a third country provided that:
- the third country is able to give guarantees identical or equivalent to those referred to in Article 4,
- the third country concerned has inspection arrangements and a right to objection equivalent to those laid down in this Regulation,
- the third country concerned is prepared to provide protection equivalent to that available in the Community to corresponding agricultural products or foodstuffs coming from the Community."
"3. The Commission shall examine, at the request of the country concerned, and in accordance with the procedure laid down in Article 15 whether a third country satisfies the equivalence conditions and offers guarantees within the meaning of paragraph 1 as a result of its national legislation. Where the Commission decision is in the affirmative, the procedure set out in Article 12a shall apply."
"Whereas provision should be made for trade with third countries offering equivalent guarantees for the issue and inspection of geographical indications or designations of origin granted on their territory;"98
"(8) The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement 1994, contained in Annex 1C to the Agreement establishing the World Trade Organisation contains detailed provisions on the existence, acquisition, scope, maintenance and enforcement of intellectual property rights.
(9) The protection provided by registration under Regulation (EEC) No 2081/92 is open to third countries' names by reciprocity and under equivalence conditions as provided for in Article 12 of that Regulation. That Article should be supplemented so as to guarantee that the Community registration procedure is available to the countries meeting those conditions.
(10) Article 7 of Regulation (EEC) No 2081/92 specifies how objections are to be made and dealt with. To satisfy the obligation resulting from Article 22 of the TRIPS Agreement it should be made clear that in this matter nationals of WTO member countries are covered by these arrangements and that the provisions in question apply without prejudice to international agreements, as provided for in Article 12 of the said Regulation. (...)"99
"[U]nder the current EC regulations, the EC does not appear to provide protection for non‑EC geographical indications (i.e., place names of other WTO Members), except on the basis of bilateral agreements, or if the EC has determined that a country has a system for geographical indications that is equivalent to the detailed system of the EC."103
"(...) I would like to address one issue that is raised regarding the fact that the EU register for GIs on foodstuffs does not allow the registration of foreign GI unless it is determined that a third country has an equivalent or reciprocal system of GI protection."104
"Beyond mere TRIPS consistency, the Commission proposes important amendments designed to promote the EU system of denominations of origin as a model to the rest of the world. The driving idea behind is the wish to improve protection of European quality products also outside the EU. As the EU cannot force non-EU countries to do so, they would be invited to do so on a 'reciprocal basis'. If a non-EU country introduced an 'equivalent system' including the right of objection for the EU and the commitment to protect EU names on their territory, the EU would offer a specific protection to register their products for the EU market."106
The references to a reciprocal basis and an equivalent system are clear references to the conditions in Article 12(1) of the Regulation.107
"While it is true that US GIs cannot be registered in the EU, this does not mean that they are not protected! Any US GI can:
(1) be registered as a certification trademark (...)
(2) get protection without registration by invoking before any tribunal in the EU Article 2(1) of Directive 2000/13 on labelling (...)
(3) invoke the unfair competition rules of the Member States (...)"108
"(...) Such international agreements include the WTO Agreements. This is made clear by the 8th recital of Regulation 692/2003, which amended the procedures for the registration of non-EC geographical indications, and in this context took specific account of the provisions of the TRIPS.
"WTO Members are obliged to provide protection to geographical indications in accordance with Section 3 of Part II and the general provisions and basic principles of the TRIPS Agreement. For this reason, Article 12 (1) and (3) of Regulation 2081/92 do not apply to WTO Members. (...)"117
"As regards the specific conditions contained in Article 12 (1) of Regulation 2081/92, the EC has already confirmed that it does not apply these to WTO Members. For this reason, the EC considers that the question whether these conditions are inconsistent with the national treatment obligations of the TRIPS Agreement and the GATT does not arise."121
"Community legislation must, so far as possible, be interpreted in a manner that is consistent with international law, in particular where its provisions are intended specifically to give effect to an international agreement concluded by the Community."131
"1. Each Member shall accord to the nationals of other Members treatment no less favourable than that it accords to its own nationals with regard to the protection of intellectual property, subject to the exceptions already provided in, respectively, the Paris Convention (1967), the Berne Convention (1971), the Rome Convention or the Treaty on Intellectual Property in Respect of Integrated Circuits...." [footnote 3 omitted]
Protection of intellectual property
"For the purposes of Articles 3 and 4, 'protection' shall include matters affecting the availability, acquisition, scope, maintenance and enforcement of intellectual property rights as well as those matters affecting the use of intellectual property rights specifically addressed in this Agreement."
Less favourable treatment accorded to the nationals of other Members
Less favourable treatment
"Recognizing, to this end, the need for new rules and disciplines concerning:
(a) the applicability of the basic principles of GATT 1994 and of relevant international intellectual property agreements or conventions;"
"The words 'treatment no less favourable' in paragraph 4 call for effective equality of opportunities for imported products in respect of the application of laws, regulations and requirements affecting the internal sale, offering for sale, purchase, transportation, distribution or use of products. This clearly sets a minimum permissible standard as a basis."169
"The examination of whether a measure involves 'less favourable treatment' of imported products within the meaning of Article III:4 of the GATT 1994 must be grounded in close scrutiny of the 'fundamental thrust and effect of the measure itself'. This examination cannot rest on simple assertion, but must be founded on a careful analysis of the contested measure and of its implications in the marketplace. At the same time, however, the examination need not be based on the actualeffects of the contested measure in the marketplace."171
Nationals of other Members
"3. Members shall accord the treatment provided for in this Agreement to the nationals of other Members. In respect of the relevant intellectual property right, the nationals of other Members shall be understood as those natural or legal persons that would meet the criteria for eligibility for protection provided for in the Paris Convention (1967), the Berne Convention (1971), the Rome Convention and the Treaty on Intellectual Property in Respect of Integrated Circuits, were all Members of the WTO members of those conventions. (...)" [footnote 1 omitted]
"Nationals of countries outside the Union who are domiciled or who have real and effective industrial or commercial establishments in the territory of one of the countries of the Union shall be treated in the same manner as nationals of the countries of the Union."176
"With respect to natural persons, nationality is a quality accorded or withdrawn by the legislation of the State whose nationality is claimed. Therefore, it is only the legislation of that State which can define the said nationality and which must be applied also in other countries where it is invoked.
"With respect to legal persons, the question is more complicated because generally no 'nationality' as such is granted to legal persons by existing legislations. Where these legal persons are the State themselves, or State enterprises, or other bodies of public status, it would be logical to accord to them the nationality of their country. With regard to corporate bodies of private status, such as companies and associations, the authorities of the countries where application of the Convention is sought will have to decide on the criterion of 'nationality' which they will employ. This 'nationality' can be made dependent upon the law according to which these legal persons have been constituted, or upon the law of their actual headquarters, or even on other criteria. Such law will also decide whether a legal person or entity really exists." [original footnote omitted]178
Specific definitions of "nationals"
|EC national with GI located in the EC||EC national with GI located outside the EC|
|Non-EC national with GI located in the EC||Non-EC national with GI located outside the EC|
"Footnote 1: When 'nationals' are referred to in this Agreement, they shall be deemed, in the case of a separate customs territory Member of the WTO, to mean persons, natural or legal, who are domiciled or who have a real and effective industrial or commercial establishment in that customs territory."185
"Put apart, disunite, part, (two or more persons or things, or one from another); detach, disconnect, treat as distinct, (one thing); make a division between (two things)." [emphasis added]190
Formally identical provisions
"On the one hand, contracting parties may apply to imported products different formal legal requirements if doing so would accord imported products more favourable treatment. On the other hand, it also has to be recognised that there may be cases where application of formally identical legal provisions would in practice accord less favourable treatment to imported products and a contracting party might thus have to apply different legal provisions to imported products to ensure that the treatment accorded them is in fact no less favourable."197
Which nationals to compare?
Comparison of treatment accorded to the nationals of other Members and that accorded to the European Communities' own nationals
1. Only a group or, subject to certain conditions to be laid down in accordance with the procedure provided for in Article 15205, a natural or legal person, shall be entitled to apply for registration.
For the purposes of this Article, 'Group' means any association, irrespective of its legal form or composition, of producers and/or processors working with the same agricultural product or foodstuff. Other interested parties may participate in the group.
2. A group or a natural or legal person may apply for registration only in respect of agricultural products or foodstuffs which it produces or obtains within the meaning of Article 2(2)(a) or (b).
"2. For the purposes of this Regulation:
(a) designation of origin: means the name of a region, a specific place or, in exceptional cases, a country, used to describe an agricultural product or a foodstuff:
– originating in that region, specific place or country, and
– the quality or characteristics of which are essentially or exclusively due to a particular geographical environment with its inherent natural and human factors, and the production, processing and preparation of which take place in the defined geographical area;
(b) geographical indication: means the name of a region, a specific place or, in exceptional cases, a country, used to describe an agricultural product or a foodstuff:
– originating in that region, specific place or country, and
– which possesses a specific quality, reputation or other characteristics attributable to that geographical origin and the production and/or processing and/or preparation of which take place in the defined geographical area."
Defences based on systemic considerations
"1. Members may, in formulating or amending their laws and regulations, adopt measures necessary to protect public health and nutrition, and to promote the public interest in sectors of vital importance to their socio-economic and technological development, provided that such measures are consistent with the provisions of this Agreement."
Article 2 of the Paris Convention (1967)
(1) Nationals of any country of the Union shall, as regards the protection of industrial property, enjoy in all the other countries of the Union the advantages that their respective laws now grant, or may hereafter grant, to nationals; all without prejudice to the rights specially provided for by this Convention. Consequently, they shall have the same protection as the latter, and the same legal remedy against any infringement of their rights, provided that the conditions and formalities imposed upon nationals are complied with.
(2) However, no requirement as to domicile or establishment in the country where protection is claimed may be imposed upon nationals of countries of the Union for the enjoyment of any industrial property rights.
"Whereas, moreover, it has been observed in recent years that consumers are tending to attach greater importance to the quality of foodstuffs rather than to quantity; whereas this quest for specific products generates a growing demand for agricultural products or foodstuffs with an identifiable geographical origin;"