U.S. claims victory in WTO geographic indications case

Food & Drink Weekly, Dec 27, 2004

The United States has won a case in the World Trade Organization (WTO) against the European Union (EU) system for protecting certain geographical food names--called geographical indications (GIs)--as trademarks. According to a December 21 press release from the Office of the U.S. Trade Representative (USTR), a WTO dispute-settlement panel in Geneva has ruled that the EU GI registry violates the WTO intellectual property rights agreement (TRIPs) because it discriminates against non-EU products.

A U.S. trade official said in a teleconference that the EU would have to change its system to let U.S. and other non-EU producers submit applications for GI protection to the EU registry. At issue was national treatment, the WTO principle of giving others the same treatment as one's own nationals. As the EU already protects products such as Parma ham and Roquefort cheese, USTR said, now it would have to offer the same sort of protection for U.S. GIs such as Florida oranges, Idaho potatoes and Vidalia onions.

In a second aspect of the case, USTR said, the WTO panel ruled that the EU registry could protect GI names only as registered and not foreign language translations of the registered name. U.S. brewer Anheuser-Busch issued a statement asserting that the ruling prevents a rival Czech brewer from using the name Budweiser along with its registered name Budvar (Budweiser is the German for the Czech place name Budvar).

"This is a big win for American farmers and food processors," U.S. Trade Representative Robert Zoellick said. "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." The EU could appeal the panel ruling after it is circulated among all WTO members, probably in March.

A Commission spokeswoman responded angrily to the assertion made Zoellick. "We regret the fact that the confidentiality rule which applies to these panel reports has been infringed...contrary to what Mr. Zoellick said, we do not see in the conclusions of the panel any questioning of the European system of protection of geographical names," she said.

Zoellick again rattled the European Commission when he said: "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."

The Commission spokeswoman contested this, countering that: "The European system of GIs does not deny access to GIs from third countries. In fact, we welcome and are looking forward to requests for registration from U.S. companies for their products." She also declared "the panel vindicates the European GI system and recognizes co-existence between prior registered trademarks and GIs. In fact, the panel found that the European system of co-existence between trademarks and GIs is fully consistent with WTO rules".

On the other hand, the EC spokeswoman left a veil of obscurity over the position by refusing to comment on the detail of the final report--which follows an interim report issued in mid-November this year. The earlier document did not state baldly that the EU GI system prevented the registration of third-country GIs, but rather suggested that it made such registration difficult by demanding that EU goods receive nondiscriminatory material on third-country markets. It also found that an EU GI could co-exist with a similar pre-existing trademark under WTO rules, but stipulated that in such cases only the original-language version of the GI could be protected, not translations.