Panel established pursuant to Article 6 of the Understanding on Rules and Procedures Governing the Settlement of Disputes

European Communities – Protection of Trademarks and Geographical Indications for Agricultural Products and Foodstuffs - (WT/DS290)

First Written Submission of Australia

Geneva, 23 April 2004

Table of contents

1. OVERVIEW
2. INTRODUCTION
   1. Procedural history
   2. Terminology used in this Submission
3. FACTUAL DESCRIPTION OF THE MEASURE
   1. The measure at issue
   2. The protection afforded to EC-defined GIs by Regulation No. 2081/92
   3. Definition of a designation of origin and a geographical indication (“EC-defined GI”)
   4. Generic names
   5. product specification
   6. Inspection structures
   7. Normal registration process for EC-defined GIs from within the EC
   8. Homonyms of existing registered EC-defined GIs
   9. Right of objection to the proposed registration of an EC-defined GI under the normal registration process
   10. Grounds of objection to the proposed registration of an EC-defined GI under the normal registration process
   11. Simplified registration of EC-defined GIs already legally protected or established by usage within EC Member States
   12. Registration of an EC-defined GI relating to the territory of another WTO Member
   13. Procedure for applications for registration of an EC-defined GI relating to the territory of another WTO Member
   14. Right of objection to the proposed registration of an EC-defined GI relating to the territory of another WTO Member
   15. Grounds of objection to the proposed registration of an EC-defined GI relating to the territory of another WTO Member
   16. Right of objection by non-EC nationals to the proposed registration of an EC-defined GI from within the EC
   17. Grounds of objection by non-EC nationals to the proposed registration of an EC-defined GI from within the EC
   18. Process of objection by other WTO Member nationals to the registration of an EC-defined GI from within the EC or from another WTO Member or third country
   19. The relationship between EC-defined GIs and trademarks
   20. Trademarks of reputation and renown
   21. The Committee of EC Member State representatives
   22. Transitional national protection
4. SUMMARY OF AUSTRALIA’S LEGAL CLAIMS
5. PRELIMINARY ISSUES
   1. An EC-defined GI is generally a TRIPS-defined GI within the meaning of Article 22.1 of the TRIPS Agreement
6. THE EC MEASURE IS INCONSISTENT WITH ARTICLES1.1, 2.1 (INCORPORATING ARTICLES10BIS AND 10TER OF THE PARIS CONVENTION (1967)), 16.1, 20, 24.5, 41 AND/OR 42 OF THE TRIPS AGREEMENT
   1. The relevant requirements of the TRIPS Agreement and of the Paris Convention
      1. Article 16.1 of the TRIPS Agreement
      2. Article 20 of the TRIPS Agreement
      3. Article 24.5 of the TRIPS Agreement
      4. Article 10bis of the Paris Convention
      5. Article 10ter of the Paris Convention
      6. Article 41 of the TRIPS Agreement
      7. Article 42 of the TRIPS Agreement
      8. Articles 1.1 and 2.1 of the TRIPS Agreement
   2. The EC measure prejudices the eligibility of an application for registration of a trademark, contrary to Article24.5 of the TRIPS Agreement
   3. The EC measure does not grant the owner of a registered trademark the rights required to be granted by Article16.1 of the TRIPS Agreement
      1. The EC measure does not provide for an objection from the owner of a registered trademark to be admissible in the event of a likelihood of confusion between a registered trademark and a proposed EC-defined GI, contrary to Article16.1 of the TRIPS Agreement
      2. The EC measure does not provide for a presumption of a likelihood of confusion in the case of use of an identical sign for identical goods, contrary to Article16.1 of the TRIPS Agreement
      3. The EC measure does not ensure – in the event of a likelihood of confusion between a registered trademark and a proposed EC-defined GI – that an objection from the owner of a registered trademark is considered by the Committee of EC Member State representatives, contrary to Article 16.1 of the TRIPS Agreement
      4. The EC measure does not grant to the owner of a registered trademark – in the event of a likelihood of confusion between a registered trademark and a proposed EC-defined GI – the exclusive right required to be granted by Article16.1 of the TRIPS Agreement
   4. The EC measure unjustifiably encumbers the use of a trademark in the course of trade with special requirements, contrary to Article 20 of the TRIPS Agreement
   5. The EC measure does not assure effective protection against unfair competition, contrary to Article2.1 of the TRIPS Agreement incorporating Article10bis(1) of the Paris Convention (1967)
   6. The EC measure does not assure appropriate legal remedies to repress effectively acts referred to in Article10bis of the Paris Convention (1967), contrary to Article2.1 of the TRIPS Agreement incorporating Article10ter(1) of the Paris Convention (1967)
   7. The EC measure does not make available to trademark right holders civil judicial procedures concerning the enforcement of their intellectual property rights, contrary to Article42 of the TRIPS Agreement
   8. The procedures concerning the enforcement of trademark rights made available by the EC measure are inconsistent with Article41.2 of the TRIPS Agreement
      1. The EC measure does not make available fair and equitable procedures for the enforcement of intellectual property rights, contrary to Article41.2 of the TRIPS Agreement
      2. The procedures for the enforcement of trademark rights made available by the EC measure are unnecessarily complicated and entail unwarranted delays, contrary to Article41.2 of the TRIPS Agreement
   9. Decisions on the registration of EC-defined GIs under the EC measure are not based only on evidence in respect of which trademark right holders were offered the opportunity to be heard, contrary to Article41.3 of the TRIPS Agreement
   10. The EC has not ensured the availability under its law of enforcement procedures as specified in Part III of the TRIPS Agreement so as to permit effective action against any act of infringement of trademark rights as required by Article41.1 of that Agreement
   11. The EC measure diminishes the legal protection for trademarks in respect of decisions by EC Member States to grant transitional national protection, contrary to Articles2.1 (incorporating Articles10bis(1) and 10ter(1) of the Paris Convention (1967)), 16.1, 41.1, 41.2, 41.3 and/or 42 of the TRIPS Agreement
   12. The EC has not given effect to the provisions of the TRIPS Agreement or complied with the specified provisions of the paris convention (1967), contrary to Articles1.1 and 2.1 of the TRIPS Agreement
   13. Conclusion
7. THE EC MEASURE IS INCONSISTENT WITH ARTICLES1.1 AND 22.2 OF THE TRIPS AGREEMENT
   1. In respect of EC-defined GIs, the EC measure does not provide the legal means for interested parties to prevent misleading use or use which constitutes unfair competition, contrary to Article22.2 of the TRIPS Agreement
   2. the EC has not given effect to the provisions of the TRIPS Agreement as required by Article1.1 of that Agreement
8. THE EC MEASURE IS INCONSISTENT WITH ARTICLEIII:4 OF GATT 1994 AND ARTICLES1.1 AND 1.3, 2.1 (INCORPORATING ARTICLE 2 OF THE PARIS CONVENTION (1967)) AND 3.1 OF THE TRIPS AGREEMENT
   1. The EC measure accords to the products of another WTO Member treatment less favourable than that it accords to like products of national origin, contrary to ArticleIII:4 of GATT 1994
      1. The relevant requirements of ArticleIII:4 of GATT 1994
      2. The EC measure relates to imported and domestically produced “like products” within the meaning of ArticleIII:4 of GATT 1994
      3. The EC measure is a law affecting the internal sale or offering for sale of imported products which are like products to products of EC origin within the meaning of ArticleIII:4 of GATT 1994
      4. EC-defined GIs for imported products are accorded less favourable treatment than EC-defined GIs for like domestic products, contrary to ArticleIII:4 of GATT 1994
      5. An EC-defined GI from another WTO Member may only be registered in the EC in respect of an imported like product if that other WTO Member deems the requirements of Regulation No. 2081/92#3 to be satisfied, thus according less favourable treatment to imported products contrary to ArticleIII:4 of GATT 1994
      6. The EC measure as a whole accords less favourable treatment to imported products bearing an EC-defined GI than to like domestic products bearing an EC-defined GI, contrary to GATT Article III:4
   2. The EC measure does not accord national treatment in the protection of intellectual property, contrary to Articles1.1 and 1.3, 2.1 (incorporating by reference Article2 of the Paris Convention (1967)) and 3.1of the TRIPS Agreement
      1. The relevant requirements of Articles1.1 and 1.3, 2.1 and 3.1 of the TRIPS Agreement and Article2 of the Paris Convention (1967)
      2. A right of objection was available to persons resident or established in an EC Member State that was not available to other WTO Member nationals in respect of the registration of more than 120 EC-defined GIs under the normal registration process, contrary to Articles1.1 and 1.3, 2.1 (incorporating Article 2 of the Paris Convention (1967)) and 3.1 of the TRIPS Agreement
      3. A right of objection was available to persons resident or established in an EC Member State that was not available to other WTO Member nationals in respect of the registration of more than 480 EC-defined GIs under the simplified registration process, contrary to Articles1.1 and 1.3, 2.1 (incorporating Article2 of the Paris Convention (1967)) and 3.1 of the TRIPS Agreement
      4. The EC measure as a whole does not accord national treatment to non-EC nationals, contrary to Articles1.1 and 1.3, 2.1 (incorporating Article2 of the Paris Convention (1967)) and 3.1 of the TRIPS Agreement
9. ARTICLE 65.1 OF THE TRIPS AGREEMENT DOES NOT EXCUSE INCONSISTENCIES WITH THE EC’S OBLIGATIONS UNDER THAT AGREEMENT
10. THE EC MEASURE IS INCONSISTENT WITH ARTICLE 2.1 AND 2.2 OF THE TBT AGREEMENT
    1. The EC measure is in part a technical regulation within the meaning of Annex 1 to the TBT Agreement
       1. Definition of a “technical regulation”
       2. The EC measure applies to an identifiable product or group of products
       3. The EC measure lays down product characteristics or their related process and production methods, including the applicable administrative provisions
       4. The EC measure mandates compliance with product characteristics or their related process and production methods, including the applicable administrative provisions
    2. The EC measure accords to products imported from the territory of any WTO Member treatment less favourable than that accorded to like products of national origin, contrary to Article 2.1 of the TBT Agreement
       1. The relevant requirements of the TBT Agreement
       2. The EC measure concerns both imported and domestically produced “like products” within the meaning of Article2.1 of the TBT Agreement
       3. The EC measure provides “less favourable” treatment to like imported and domestically produced products within the meaning of Article2.1 of the TBT Agreement
    3. The EC measure has been prepared, adopted and/or applied with the effect of creating unnecessary obstacles to international trade, being more trade-restrictive than necessary to fulfil a legitimate objective, taking account of the risks non-fulfilment would create, contrary to Article 2.2 of the TBT Agreement
       1. The relevant requirements of the TBT Agreement
       2. The EC measure pursues a legitimate objective within the meaning of Article2.2 of the TBT Agreement
       3. The EC measure fulfils, or is capable of fulfilling, its legitimate objective within the meaning of Article2.2 of the TBT Agreement
       4. The EC measure is more trade restrictive than necessary to fulfil its legitimate objective, taking account of the risks non-fulfilment would create, contrary to Article2.2 of the TBT Agreement
    4. Conclusion
11. AS A CONSEQUENCE, THE EC HAS NOT COMPLIED WITH ITS OBLIGATIONS UNDER ARTICLEXVI:4 OF THE WTO AGREEMENT
12. CONCLUSION

• ANNEX 1
• LIST OF EXHIBITS
  1. A. Common exhibits on behalf of the complaining parties (prefix COMP)
  2. B. Australian exhibits (prefix AUS)

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TABLE OF CASES CITED IN THIS SUBMISSION

Short Title	Full Title
US – Section 211 Appropriations Act	United States – Section 211 Omnibus Appropriations Act of 1998, Report of the Appellate Body, WT/DS176/AB/R, 2 January 2002
US – Section 337	United States – Section 337 of the Tariff Act of 1930, GATT Panel Report, adopted 7 November 1989, BISD 36S/345
Korea – Beef	Korea – Measures Affecting Imports of Fresh, Chilled and Frozen Beef, Report of the Appellate Body, WT/DS161/AB/R, WT/DS169/AB/R, 11 December 2000
EC – Asbestos	European Communities – Measures Affecting Asbestos and Asbestos-Containing Products, Report of the Appellate Body, WT/DS135/AB/R, 12 March 2001
EC – Bananas	European Communities – Regime for the Importation, Sale and Distribution of Bananas, Report of the Appellate Body, WT/DS27/AB/R, 9 September 1997
US – FSC (Article 21.5)	United States – Tax Treatment for “Foreign Sales Corporations”, Recourse to Article 21.5 of the DSU by the European Communities, Report of the Appellate Body, WT/DS108/AB/RW, 14 January 2002
EC – Sardines	European Communities – Trade Description of Sardines, Report of the Appellate Body, WT/DS231/AB/R, 26 September 2002

OTHER SOURCES CITED IN THIS SUBMISSION

Short Title	Full Title
Bodenhausen	Guide to the Application of the Paris Convention for the Protection of Industrial Property as Revised at Stockholm in 1967, Professor, G H C Bodenhausen, BIRPI, 1969, WIPO reprint 1991, Geneva
Gervais	The TRIPS Agreement: Drafting History and Analysis, Daniel Gervais, Sweet & Maxwell, London, 1998
OED	The New Shorter Oxford English Dictionary, Ed. Lesley Brown, Clarendon Press, Oxford, 1993

I. OVERVIEW

1. This dispute concerns the regime established by the European Communities (EC) for the registration and protection of geographical indications – or GIs – for agricultural products and foodstuffs on a Community-wide basis. The dispute does not concern the registration and/or protection of GIs for wines or spirits.

2. Council Regulation (EEC) No. 2081/92 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs (“Regulation No. 2081/92”) established the regulatory framework that governs the complex EC regime. In addition to Council Regulation No. 2081/92, there is a long list of subsidiary regulations at Community level.[1] Regulation No. 2081/92 expressly requires EC Member States to perform some specific activities and authorises the Member States to perform other actions at their discretion. EC Member State national courts and the European Court of Justice enforce the protection of GIs afforded by Regulation No. 2081/92.

3. Since its adoption in 1992, Regulation No. 2081/92 itself has been substantially amended on two occasions: in 1997, relating principally to transitional issues arising from the proposed registration of geographic terms under Regulation No. 2081/92; and more extensively in 2003, in part “to guarantee that the Community registration procedure is available” to WTO Members meeting conditions of reciprocity and equivalence[2]. Further, GIs have been continuously registered under the regime since registrations commenced in 1996.

4. The Agreement on Trade-Related Aspects of Intellectual Property Rights (“the TRIPS Agreement” or “TRIPS”) expressly recognises geographical indications as a category of intellectual property. In this dispute, Australia is not contesting the EC’s right:

• to register and/or protect GIs as intellectual property;
• to implement in its law more extensive protection for GIs than is required to be provided by the TRIPS Agreement;
• to limit that more extensive protection to GIs that meet a more rigorous attributive test than is required by the TRIPS Agreement, while protecting GIs that otherwise conform with the definition at TRIPS Article22.1 through individual EC Member State legislation; or
• not to offer more extensive protection at the Community level to GIs which conform only to the basic definition of a GI at TRIPS Article22.1.

5. However, the EC is providing that more extensive protection for GIs in a way that contravenes other provisions of the TRIPS Agreement, as well as provisions of the General Agreement on Tariffs and Trade 1994 (“the GATT 1994” or “GATT”), of the Agreement on Technical Barriers to Trade (“the TBT Agreement” or “TBT”) and, as a consequence, of the Marrakesh Agreement Establishing the World Trade Organization (“the WTO Agreement”).

6. Specifically, the EC is failing to provide the level of protection of trademarks expressly required to be conferred pursuant to various provisions of the TRIPS Agreement, including because the EC regime:

• denies to the owner of a registered trademark the exclusive right to prevent all third parties not having the owner’s consent from using in the course of trade identical or similar signs for goods which are identical or similar to those in respect of which the trademark is registered where such use would result in a likelihood of confusion, contrary to TRIPS Article16.1;
• denies to the owner of a registered trademark a presumption of a likelihood of confusion in case of use of an identical sign for identical goods, contrary to TRIPS Article16.1;
• denies to nationals of other WTO Members effective protection against unfair competition and appropriate legal remedies to repress effectively all acts of unfair competition, contrary to TRIPS Article2.1 incorporating Articles10bis(1) and 10ter(1) of the Paris Convention for the Protection of Industrial Property (“the Paris Convention (1967)” or “Paris”); and
• denies to nationals of other WTO Members enforcement procedures so as to permit effective action against any act of infringement of a trademark right, and associated procedural and due process rights, contrary to TRIPS Articles41 and 42.

7. Similarly, the EC’s failure to provide at Community level the legal means for interested parties to prevent – in respect of a GI registered, or proposed to be registered, under the EC regime – misleading use or use which constitutes an act of unfair competition is contrary to TRIPS Article22.2.

8. In relation to the registration of GIs under the regime, the EC fails to provide national treatment:

• to the products of other WTO Members, contrary to GATT ArticleIII:4 as well as TBT Article2.1; and
• in the protection of intellectual property, contrary to TRIPS Articles2.1 (incorporating Paris Article2) and 3.1.

9. Further, the EC regime comprises a technical regulation that is more restrictive than necessary to fulfil a legitimate objective, taking account of the risks non-fulfilment would create, contrary to TBT Article2.2.

10. Australia reiterates that it is not contesting the EC’s right to offer more extensive protection to GIs than is required to be offered pursuant to the TRIPS Agreement. However, if this right is to be exercised at the Community level, so too should the interconnected obligations be fulfilled at the Community level. Australia submits that, if the EC is to offer “one-stop” Community level registration of GIs for either EC nationals or products, it must also, for example, offer a “one-stop” Community level means: for interested parties to prevent, in respect of that GI registration, any use which constitutes an act of unfair competition within the meaning of Paris Article10bis, consistent with the requirement of Paris Article10ter; for trademark right holders to exercise their rights in respect of the registration of GIs under the regime; and for the registration of a GI from another WTO Member. Requiring trademark owners to initiate separate legal proceedings in up to 25 national courts to exercise the rights required to be bestowed on them under the TRIPS Agreement as these relate to a GI registered, or proposed to be registered, under the “one-stop” Community level EC regime is, in Australia’s view, fundamentally at odds with the object and purpose of the TRIPS Agreement.

11. For the reasons set out in detail in this Submission, Australia submits that the Panel should find that the EC regime for the registration and protection of GIs is inconsistent with the EC’s obligations pursuant to the TRIPS Agreement, GATT 1994, the TBT Agreement and the WTO Agreement.

II. INTRODUCTION

A. Procedural history

12. On 17April2003, Australia requested consultations with the EC pursuant to Article4 of the Understanding On Rules Governing the Settlement of Disputes (DSU), ArticleXXII of the GATT 1994, Article64 of the TRIPS Agreement, and Article14 of the TBT Agreement relating to the protection of trademarks and to the registration and protection of geographical indications for foodstuffs and agricultural products in the EC.[3] Australia’s request followed an earlier similar request for consultations from the United States to the EC.[4] Argentina, Bulgaria, ChineseTaipei, Colombia, Cyprus, CzechRepublic, Hungary, Malta, Mexico, NewZealand, Romania, SlovakRepublic, Slovenia, Turkey and the UnitedStates requested to be joined in the consultations requested by Australia. [5]

13. Consultations between Australia and the EC, and between the UnitedStates and the EC, were held jointly in Geneva on 27May2003, but failed to resolve the dispute.

14. On 21July2003, Australia requested the Dispute Settlement Body (DSB) to establish a panel pursuant to Articles4.7 and 6 of the DSU, ArticleXXIII of GATT 1994, Article64 of the TRIPS Agreement and Article14 of the TBT Agreement.[6] The UnitedStates similarly requested establishment of a panel.[7]

15. On 2October2003, the DSB agreed that a single panel should be established pursuant to Article9.1 of the DSU with standard terms of reference.[8] The terms of reference of the Panel are:

To examine, in the light of the relevant provisions of the covered agreements cited by the UnitedStates in document WT/DS174/20 and by Australia in document WT/DS290/18, the matters referred to the DSB by the UnitedStates 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.

16. Argentina, Brazil, Canada, China, ChineseTaipei, Colombia, Guatemala, India, Mexico, NewZealand, Norway, Turkey and the UnitedStates reserved rights as third parties to the dispute.

B. Terminology used in this Submission

17. Article1.1 of Regulation No. 2081/92 states that the Regulation “lays down rules on the protection of designations of origin and geographical indications” of specified agricultural products and foodstuffs other than wines and spirits. However, the distinction between a designation of origin and a geographical indication within the meaning of the Regulation is not germane to Australia’s claims in this dispute. Thus, throughout this Submission, except where specifically indicated otherwise, Australia will use the expressions:

“GI” to refer to a geographical indication generally;

“EC-defined GI” to refer to both a designation of origin and a geographical indication as these are defined and used in Regulation No. 2081/92;

“TRIPS-defined GI” to refer to a geographical indication as this is defined in TRIPS Article22.1; and

“Indication of source” to refer to an indication of source within the meaning of Paris Article1(2).

While the Paris Convention (1967) does not expressly define an indication of source, “indications of source are generally understood to include all … signs used to indicate that a product … originates in a given country or group of countries, region or locality”.[9] Thus, both an EC-defined GI and a TRIPS-defined GI are categories of indications of source.

18. Regulation No. 2081/92 has been amended on several occasions. Substantive amendments relevant to Australia’s claims and arguments in this dispute were introduced in Council Regulations (EC) No. 535/97 of 17March1997[10] and No. 692/2003 of 8April2003[11]. To identify the appropriate version of Regulation No. 2081/92, throughout this Submission Australia will, except where indicated otherwise, use the terminology:

“Regulation No. 2081/92” to refer to the Regulation in a broad sense or in relation to provisions that have not been amended since the Regulation originally entered into force;

“Regulation No. 2081/92#1” to refer to the Regulation as originally adopted and in force from 24 July1993;

“Regulation No. 2081/92#2” to refer to the Regulation as amended by Council Regulation (EC) No. 535/97 of 17 March 1997 with effect from 28March1997; and

“Regulation No. 2081/92#3” to refer to the Regulation as amended by Council Regulation (EC) No. 692/2003 of 8 April 2003 with effect from 24 April 2003.

19. Other terminology and abbreviations used in this Submission are:

“Commission” to refer to the European Commission;

“Committee of EC Member State representatives” to refer to the decision-making process established by Article15 of Regulation No. 2081/92#1 and amended by Council Regulation (EC) No. 806/2003 of 14April2003 adapting to Decision 1999/468/EC the provisions relating to committees which assist the Commission in the exercise of its implementing powers laid down in Council instruments adopted in accordance with the consultation procedure (qualified majority)[12];

“Official Journal” for the Official Journal of the European Communities; and

“Register” for the Register of protected designations of origin and protected geographical indications provided for by Article6.3 of Regulation No. 2081/92.

III. FACTUAL DESCRIPTION OF THE MEASURE

A. The measure at issue

20. The measure at issue in this dispute (“the EC measure”) is the EC’s regime for the registration and protection of EC-defined GIs on a Community-wide basis, comprising:

• Council Regulation (EEC) No. 2081/92 of 14July1992 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs;
• amendments to that Regulation;[13] and
• actions to implement and enforce that Regulation, including:
  • Commission Regulation (EEC) No. 2037/93 of 27July1993 as amended;[14]
  • Commission Regulation (EC) No. 1107/96 of 12June1996 as amended;[15]
  • Commission Regulation (EC) No. 2400/96 of 17December1996 as amended;[16]
  • by EC Member States to implement Regulation No. 2081/92 at national level, in particular, actions by Member States to grant transitional national protection pursuant to Article5.5 of Regulation No. 2081/92#2; and
  • judicial decisions relating to the enforcement of Regulation No. 2081/92, for example:
• Judgment of the European Court of Justice of 16March1999, Joined Cases C-289/96, C-293/96 and C-299/96, concerning the registration of “Feta” (the “Feta judgment”);[17] and
• Order of the Court of First Instance (Fifth Chamber) of 30January2001, Case T-215/00, concerning the geographical indication “Canard à foie gras du Sud-Ouest (the “Canard judgment”).[18]

21. Regulation No. 2081/92 establishes the regulatory framework for the regime. Since being adopted in 1992, the Regulation has been substantially amended on two occasions. In particular, Regulation No. 2081/92#3 contains several amended and new provisions.

22. Further, under Regulation No. 2081/92#3, natural mineral and spring waters were removed from the list of products for which EC-defined GI registration and protection is available, while other products – including pasta and wool – were added. In addition, the scope of the Regulation was enlarged to include wine vinegars.[19]

23. The following sections describe the principal features of Regulation No. 2081/92 including, where appropriate, as these have been amended.

B. The protection afforded to EC-defined GIs by Regulation No. 2081/92

24. There is no distinction in the protection afforded to a designation of origin and a geographical indication as these are defined in the Regulation. Under Article13.1, a registered EC-defined GI “… shall be protected against:

(a) any direct or indirect commercial use of a name registered in respect of products not covered by the registration insofar as those products are comparable to the products registered under that name or insofar as using the name exploits the reputation of the protected name;

(b) any misuse, imitation or evocation, even if the true origin of the product is indicated or if the protected name is translated or accompanied by an expression such as ‘style’, ‘type’, ‘method’, ‘as produced in’, ‘imitation’ or similar;

(c) any other false or misleading indication as to the provenance, origin, nature or essential qualities of the product, on the inner or outer packaging, advertising material or documents relating to the product concerned, and the packing of the product in a container liable to convey a false impression as to its origin;

(d) any other practice liable to mislead the public as to the true origin of the product.

…”

C. Definition of a designation of origin and a geographical indication (“EC-defined GI”)

25. Article2.2(a) defines a designation of origin as: “… 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”.

26. Article2.2(b) defines a geographical indication as: “… 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”.

D. Generic names

27. Article3.1 provides that “[n]ames that have become generic may not be registered …”.

E. product specification

28. Under Article4, to be eligible to use an EC-defined GI, an agricultural product or foodstuff must comply with a product specification, including: a description of the principal physical, chemical, microbiological and/or organoleptic characteristics of the product or the foodstuff; the details bearing out the link with the geographical environment or the geographical origin within the meaning of an EC-defined GI; and details of the inspection structures to ensure that products bearing an EC-defined GI meet the requirements of the product specification.

F. Inspection structures

29. Under Article10.1, EC Member States are required to ensure that inspection structures are in place, with the function of “ensur[ing] that agricultural products and foodstuffs bearing a protected name meet the requirements laid down in the specifications.”

G. Normal registration process for EC-defined GIs from within the EC

30. Under Article5, a group may apply for registration of an EC-defined GI in respect of agricultural products or foodstuffs which it produces or obtains. The registration application must include the product specification, and be forwarded to the EC Member State in which the geographical area is located. The EC Member State must forward the application, including the product specification, to the Commission if it considers that the application complies with the Regulation.

31. Under paragraphs1-4 of Article6, the Commission has six months to verify whether the application includes all of the particulars required by the product specification. If the Commission concludes the “name” qualifies for protection, it is to publish the application details and, “if necessary, the grounds for its conclusions”, in the Official Journal. “If no statement of objections is notified to the Commission”, the “name” is entered in the Register and the entry notified in the Official Journal. Regulation No. 2081/92#3 amended Article6.1 to require the Commission to “make public any application for registration [of an EC-defined GI], stating the date on which the application was made”.

32. Under Article7, an EC Member State may object to the proposed registration of the “name” within six months of publication of the application in the Official Journal. If a statement of objection is admissible, “… the Commission shall ask the Member States concerned to seek agreement among themselves …”. If the Members States concerned agree, the Commission publishes the entry of the “name” in the Register in the Official Journal. If the Member States concerned do not agree, “the Commission shall take a decision [in the Committee of EC Member State representatives] having regard to traditional fair practice and of the actual likelihood of confusion”. If the Commission decides to enter the “name” in the Register, it is to publish that fact in the Official Journal.

33. More than 140 EC-defined GIs have been registered pursuant to the normal registration process, and registrations are ongoing. The list of EC-defined GIs registered pursuant to this process is published in Commission Regulation (EC) No. 2400/96 as amended.[20]

H. Homonyms of existing registered EC-defined GIs

34. Under Article6.6 of Regulation No. 2081/92#3, if an application is made to register a homonym of an existing registered EC-defined GI, whether from an EC Member State or another WTO Member: “the Commission may request the opinion of the [Committee of EC Member State representatives]”.

I. Right of objection to the proposed registration of an EC-defined GI under the normal registration process

35. Under Article7.3, “[a]ny legitimately concerned natural or legal person may object to the proposed registration [by the Commission] by sending a duly substantiated statement to the competent authority of the [EC] Member State in which he resides or is established”.

J. Grounds of objection to the proposed registration of an EC-defined GI under the normal registration process

36. Under Article7.4 of Regulation No. 2081/92#1, “[a] statement of objection shall be admissible only if it: either shows non-compliance with the [the definition of an EC-defined GI], or shows that the proposed registration of a name would jeopardize the existence of an entirely or partly identical name or trade mark or the existence of products which are legally on the market at the time of publication of this regulation in the [Official Journal], or indicates the features which demonstrate that the name whose registration is applied for is generic in nature” (emphasis added).

37. Article7.4 was amended in Regulation No. 2081/92#2 so that the second ground for admissibility of an objection to a proposed registration of an EC-defined GI became “that the registration of the name proposed would jeopardize the existence of an entirely or partly identical name or of a mark or the existence of products which have been legally on the market for at least five years preceding the date of the publication [of the application for registration in the Official Journal]” (emphasis added).

K. Simplified registration of EC-defined GIs already legally protected or established by usage within EC Member States

38. Under Article17 of Regulation No. 2081/92#1, EC Member States had six months to inform the Commission “which of their legally protected names or … which of their names established by usage they wish[ed] to register pursuant to this Regulation. … [T]he Commission shall register the names … which comply with [the definition of an EC-defined GI] and [the product specification requirements]. [There is no objection process]. However, generic names shall not be added”.

39. However, in the Minutes of the Council Meeting that adopted Regulation No. 2081/92#1, the Council and the Commission stated that “where there are agricultural products or foodstuffs already being legally marketed …, it has been provided for any Member States to object to the registration under the provisions of Article7 of the regulation”.[21]

40. More than 480 EC-defined GIs were registered pursuant to this simplified registration process. The list of EC-defined GIs registered under the simplified process is published in Commission Regulation (EC) No. 1107/96 as amended.[22]

41. Article17 was repealed in Regulation No. 2081/92#3. “However, the provisions of [Article17] shall continue to apply to registered names or to names for which a registration application was made by the procedure provided for in Article17 before [Regulation No. 2081/92#3] entered into force”.[23]

L. Registration of an EC-defined GI relating to the territory of another WTO Member

42. Article12 provides:

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 [the product specification requirement],
• the third country concerned has inspection arrangements equivalent to those laid down [in the Regulation],
• the third country concerned is prepared to provide protection equivalent to that available in the Community to corresponding agricultural products for [sic] foodstuffs coming from the Community.

2. If a protected name of a third country is identical to a Community protected name, registration shall be granted with due regard for local and traditional usage and the practical risks of confusion.

Use of such names shall be authorised only if the country of origin of the product is clearly and visibly indicated on the label.

43. Article12.1 was amended in Regulation No. 2081/92#3 to add the requirement that “the third country concerned has … a right to objection equivalent to [that] laid down in this Regulation”.

M. Procedure for applications for registration of an EC-defined GI relating to the territory of another WTO Member

44. An application process for the registration of a “name” from another WTO Member was introduced in Regulation No. 2081/92#3. A new Article12.3 provided: “[t]he Commission shall examine, at the request of the country concerned, and [in the Committee of EC Member State representatives] whether a third country satisfies the equivalence conditions and offers guarantees [of the conditions for registration of third country GIs] as a result of its national legislation. Where the Commission decision is in the affirmative, the procedure set out in Article12a shall apply.”

45. Article12a was inserted in Regulation No. 2081/92#3 to provide:

1. … [I]f a group or a natural or legal person … in a third country wishes to have a name registered under this Regulation it shall send a registration application to the authorities in the country in which the geographical area is located. Applications must be accompanied by [the product specification] for each name. …

2. If the third country … deems the requirements of this Regulation to be satisfied it shall transmit the registration application to the Commission accompanied by:

(a) a description of the legal provisions and the usage on the basis of which the designation of origin or the geographical indication is protected or established in the country,

(b) a declaration that [the inspection structures] are established on its territory, and

(c) other documents on which it has based its assessment.

46. Article12b was inserted in Regulation No. 2081/92#3 to provide:

1. The Commission shall verify within six months whether the registration request sent by the third country contains all the necessary elements and shall inform the country concerned of its conclusion.

If the Commission:

(a) concludes that the name satisfies the conditions for protection, it shall publish the application [for objections] … Prior to publication the Commission may ask the [Committee of EC Member State representatives] for its opinion;

(b) concludes that the name does not satisfy the conditions for protection, it shall decide, after consulting the country having transmitted the application, in [the Committee of EC Member State representatives] not to proceed with publication [for objections].

3. … Where one or more objections are admissible the Commission shall adopt a decision [in the Committee of EC Member State representatives] after consulting the country which transmitted the application, taking account of traditional and fair usage and the actual risk of confusion on Community territory. If the decision is to proceed with registration the name shall be entered in the [Register] and published …

4. If the Commission receives no statement of objection it shall enter the name(s) in question in the [Register] and publish the name(s) …

N. Right of objection to the proposed registration of an EC-defined GI relating to the territory of another WTO Member

47. Article12b.2 was inserted in Regulation No. 2081/92#3 to provide that, within six months of the date of publication of an application for registration of an EC-defined GI relating to a geographical location in the territory of another WTO Member, any natural or legal person from an EC Member State or a WTO Member with a legitimate interest may object to the application. Where the objection comes from another WTO Member, “Article12d … shall apply”.

48. Article12d of Regulation No. 2081/92#3 provides in relevant part: “any natural or legal person that has a legitimate interest and is from a WTO member country or a third country recognised under the procedure provided for in Article 12(3) may object to the proposed registration by sending a duly substantiated statement to the country in which it resides or is established, which shall transmit it … to the Commission”.

O. Grounds of objection to the proposed registration of an EC-defined GI relating to the territory of another WTO Member

49. Under Articles12b and 7.4 of Regulation No. 2081/92#3 read together, the grounds of objection to the registration of an EC-defined GI relating to a geographical location in the territory of another WTO Member are the same whether the objection comes from an EC Member State or another WTO Member: “[a] statement of objection shall be admissible only if it: either shows non-compliance with the definition [of an EC-defined GI], shows that the registration of the name proposed would jeopardize the existence of an entirely or partly identical name or of a mark or the existence of products which are legally on the market for at least five years preceding the date of publication [inviting objections], or indicates the features which demonstrate that the name whose registration is applied for is generic in nature”. The criteria must be demonstrated with regard to EC territory.

P. Right of objection by non-EC nationals to the proposed registration of an EC-defined GI from within the EC

50. Article12d.1 was inserted in Regulation No. 2081/92#3 to provide: “[w]ithin six months of the date of [publication of an application for registration of a “name” from within the EC], any natural or legal person that has a legitimate interest and is from a WTO member country or a third country recognised under the procedure provided for in Article 12(3) may object to the proposed registration …”.

Q. Grounds of objection by non-EC nationals to the proposed registration of an EC-defined GI from within the EC

51. Under Articles12d.2 and 7.4 of Regulation No. 2081/92#3 read together: “[a] statement of objection shall be admissible only if it: either shows non-compliance with the definition [of an EC-defined GI], shows that the registration of the name proposed would jeopardise the existence of an entirely or partly identical name or of a mark or the existence of products which are legally on the market for at least five years preceding the date of publication [inviting objections], or indicates the features which demonstrate that the name whose registration is applied for is generic in nature”. The criteria must be demonstrated with regard to EC territory.

R. Process of objection by other WTO Member nationals to the registration of an EC-defined GI from within the EC or from another WTO Member or third country

52. Under Articles12b.2 and 12d.1 of Regulation No. 2081/92#3 read together, a person “from a WTO Member country or a third country recognised under the procedure provided for in Article12(3)” with a legitimate interest may object to the proposed registration of an EC-defined GI – whether concerning a geographical locality within an EC Member State, another WTO Member or a third country – “by sending a duly substantiated statement to the country in which it resides or is established, which shall transmit it … to the Commission”.

S. The relationship between EC-defined GIs and trademarks

53. Article14 of Regulation No. 2081/92#1 provided in relevant part:

1. Where a designation of origin or geographical indication is registered in accordance with this Regulation, the application for registration of a trade mark corresponding to one of the situations [against which an EC-defined GI is protected][24] and relating to the same type of product shall be refused, provided that the application for registration of the trade mark was submitted after the date of the publication [of the application for registration of the “name”].
   
   Trademarks registered in breach of the first subparagraph shall be declared invalid.
   
   This paragraph shall also apply where the application for registration of a trademark was lodged before the date of publication of the application for registration [of the “name”], provided that that publication occurred before the trademark was registered.
   
2. With due regard for Community law, use of a trade mark corresponding to one of the situations [against which an EC-defined GI is protected] which was registered in good faith before the date on which application for registration of a designation of origin or geographical indication was lodged may continue notwithstanding the registration of a designation of origin or geographical indication, where there are no grounds for invalidity or revocation of the trade mark ….

54. Preambular clause (11) to Regulation No. 692/2003 states:

Article 24(5) of the TRIPS Agreement applies not only to trademarks registered or applied for but also those to which rights have been acquired through use before a specified date, notably that of protection of the name in the country of origin [sic]. Article 14(2) [of the Regulation] should therefore be amended: the reference date now specified should be changed to the date of protection in the country of origin or of submission of the application for registration of the geographical indication or designation of origin, depending on whether the name falls under Article 17 or the [sic] Article 5 …; also, in Article 14(1) … the reference date should become the date of application instead of the date of first publication.

55. Thus, Article14.1 is amended in Regulation No. 2081/92#3 so that, where a proposed trademark corresponds to one of the situations against which an EC-defined GI is protected for the same type of product, the reference date for the determination of whether that trademark may be registered becomes the date of application to the Commission for the registration of an EC-defined GI rather than the date of first publication by the Commission.

56. Article14.2 is amended in Regulation No. 2081/92#3 to provide as follows:

With due regard to Community law, a trademark the use of which engenders one of the situations indicated in Article13 and which has been applied for, registered, or established by use, if that possibility is provided for by the legislation concerned, in good faith within the territory of the Community, before either the date of protection in the country of origin or the date of submission to the Commission of the application for registration of the designation of origin or geographical indication may continue to be used notwithstanding the registration of a designation of origin or geographical indication, provided that no grounds for its invalidity or revocation exist as specified by Council Directive 89/104/EEC of 21December1988 to approximate the laws of the Member States relating to trade marks^[…] and/or Council Regulation (EC) No 40/94 of 20December1993 on the Community trade mark^[…].

T. Trademarks of reputation and renown

57. Under Article14.3, “[an EC-defined GI] shall not be registered where, in the light of a trademark’s reputation and renown and the length of time it has been used, registration is liable to mislead the consumer as to the true identity of the product”.

U. The Committee of EC Member State representatives

58. Under Article15 of Regulation No. 2081/92, the Commission is to be assisted by a committee composed of the representatives of the EC Member States and chaired by the representative of the Commission. The Commission representative is to submit a draft of the measures to be taken. The committee is to deliver its opinion on the draft by weighted majority voting, and the chair may not vote. The Commission shall adopt the measures envisaged if the measures accord with the committee’s opinion. If the measures do not accord with the committee’s opinion, or if the committee does not deliver an opinion, the Commission is to submit a proposal to the Ministerial Council, which shall act by a qualified majority. If the Ministerial Council does not act within three months of the Commission submitting a proposal, the Commission shall adopt the proposed measure.[25]

V. Transitional national protection

59. Under Article5.5 of Regulation No. 2081/92#2, an EC Member State may grant transitional national “protection in the sense of the present Regulation” to a proposed EC-defined GI. “Such transitional national protection shall cease on the date on which a decision on registration under this Regulation is taken.”

IV. SUMMARY OF AUSTRALIA’S LEGAL CLAIMS

60. The EC measure diminishes the legal protection for trademarks under the TRIPS Agreement, as it:

• prejudices the eligibility of an application for registration of a trademark, contrary to TRIPS Article24.5;
• does not grant to the owner of a registered trademark the exclusive right to prevent all third parties not having the owner’s consent from using in the course of trade identical or similar signs for goods which are identical or similar to those in respect of which the trademark is registered where such use would result in a likelihood of confusion, contrary to TRIPS Article16.1;
• does not presume a likelihood of confusion in case of use of an identical sign for identical goods, contrary to TRIPS Article16.1;
• unjustifiably encumbers the use of a trademark in the course of trade with special requirements, contrary to TRIPS Article20;
• does not assure to WTO Member nationals effective protection against unfair competition, contrary to Paris Article 10bis(1);
• does not assure to WTO Member nationals appropriate effective legal remedies to repress acts of unfair competition, contrary to Paris Article 10ter(1);
• does not make available to trademark right holders civil judicial procedures concerning the enforcement of their intellectual property rights, contrary to TRIPS Article42;
• makes available procedures concerning the enforcement of trademark rights which are not fair and equitable, and which are unnecessarily complicated and entail unwarranted delays, contrary to TRIPS Article41.2;
• does not ensure that decisions on the registration of an EC-defined GI are based only on evidence in respect of which trademark right holders were offered the opportunity to be heard, contrary to TRIPS Article41.3; and
• does not ensure the availability under its law of enforcement procedures as specified in Part III of the TRIPS Agreement so as to permit effective action against any act of infringement of trademark rights, contrary to TRIPS Article41.1.

61. The EC measure does not provide at Community level the legal means for interested parties to prevent misleading use of an EC-defined GI or use which constitutes an act of unfair competition in relation to a trademark, contrary to TRIPS Article22.2.

62. The EC measure does not accord national treatment to the products of other WTO Members, contrary to GATT ArticleIII:4 as well as TBT Article2.1, or in the protection of intellectual property, contrary to TRIPS Article2.1, incorporating by reference Paris Article2, and TRIPS Article 3.1.

63. The EC measure is more trade restrictive than necessary to fulfil a legitimate objective, taking account of the risks non-fulfilment would create, contrary to TBT Article2.2.

64. As a consequence, the EC:

• has not complied with Paris Articles10bis and 10ter, contrary to TRIPS Article2.1;
• has not given effect to the provisions of the TRIPS Agreement, contrary to TRIPS Article1.1; and
• has not ensured the conformity of its laws, regulations and administrative procedures with its obligations as provided in the annexed Agreements, contrary to Article XVI:4 of the WTO Agreement.

65. Australia reserves the right to pursue its claim that the EC measure does not accord immediately and unconditionally to the nationals and/or products of each WTO Member any advantage, favour, privilege or immunity granted to the nationals and/or products of any other WTO Member, contrary to TRIPS Article4, GATT ArticleI:1 and/or TBT Article2.1, in the event that:

• the EC is applying Community-wide protection to EC-defined GIs for foodstuffs and agricultural products from another WTO Member; or
• the EC begins to apply Community-wide protection to EC-defined GIs for foodstuffs and agricultural products from another WTO Member.

66. Similarly, Australia reserves the right to pursue its claim that the EC measure is not applied in a transparent manner, contrary to TRIPS Articles63.1 and 63.3, should the EC in fact have in place criteria and/or guidelines for the purposes of making assessments and/or determinations under various provisions of Regulation No. 2081/92.

V. PRELIMINARY ISSUES

A. An EC-defined GI is generally a TRIPS-defined GI within the meaning of Article 22.1 of the TRIPS Agreement

67. Article22.1 of the TRIPS Agreement defines geographical indications for the purposes of the TRIPS Agreement 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 geographical origin”.

68. A “designation of origin” under Regulation No. 2081/92 must be an actual geographic name used to describe an agricultural product or foodstuff, which must originate in the place identified by the geographic name. The quality or characteristics of the agricultural product or foodstuff must be essentially or exclusively due to a particular geographical environment, and the production, processing and preparation of the agricultural product or foodstuff must occur in the place identified by the geographic name.

69. A “geographical indication” under Regulation No. 2081/92 must be an actual geographic name used to describe an agricultural product or foodstuff, which must originate in the place identified by the geographic name. A specific quality, reputation or other characteristics must be attributable to that geographical origin, and production, processing and/or preparation of the agricultural product or foodstuff must occur in the place identified by that geographic name.

70. Thus, both a “designation of origin” and a “geographical indication”, as these are defined by Regulation No. 2081/92, would normally fall within the definition of a “geographical indication” set out in TRIPS Article22.1. Each constitutes at a minimum an indication “which identif[ies] 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 is essentially attributable to its geographical origin”.

VI. THE EC MEASURE IS INCONSISTENT WITH ARTICLES1.1, 2.1 (INCORPORATING ARTICLES10BIS AND 10TER OF THE PARIS CONVENTION (1967)), 16.1, 20, 24.5, 41 AND/OR 42 OF THE TRIPS AGREEMENT

A. The relevant requirements of the TRIPS Agreement and of the Paris Convention

i. Article16.1 of the TRIPS Agreement

71. TRIPS Article16.1[26] expressly affords to the owner of a registered trademark an exclusive right, that is, a right not possessed or enjoyed by anyone else, to stop or impede all third parties not having the owner’s consent from using that sign: (1) in the course of trade; (2) in respect of identical or similar signs for goods or services identical or similar to those in respect of which the trademark is registered; and (3) where such use would likely be confusing. Further, in case of use of an identical sign for identical goods, Article16.1 provides that a likelihood of confusion is to be presumed.

72. The exclusive right to be granted to the owner of a registered trademark is qualified by TRIPS Article17[27], which allows any WTO Member to provide limited[28] exceptions to the rights conferred by a trademark. The provision cites fair use of descriptive terms to illustrate possible exceptions, and also requires that such exceptions take account of the legitimate interests of the trademark owner and of third parties. One commentator has said: “[f]air use of descriptive terms might include indications for the purpose of mere identification or information, such as bona fide use of a person’s name, address or pseudonym, or a geographical name, or an exact indication concerning … origin …”.[29]

ii. Article20 of the TRIPS Agreement

73. TRIPS Article20[30] establishes that no WTO Member may, unjustifiably, impede or restrain use of a trademark in the course of trade by special requirements and provides illustrative examples of such special requirements: use with another trademark; use in a special form; or use in a manner detrimental to the trademark’s capacity to distinguish the goods or services of one undertaking from those of other undertakings. Thus, if any WTO Member imposes special requirements on the use of a trademark in the course of trade, those special requirements must be justifiable.

iii. Article24.5 of the TRIPS Agreement

74. TRIPS Article24.5[31] defines the boundaries of the range of possible actions open to a WTO Member to implement measures relating to TRIPS-defined GIs in relation to trademarks. TRIPS Article24.5 provides in relevant part that:

• measures adopted to implement Section 3 of Part II of the TRIPS Agreement cannot adversely affect the entitlement of an application made in good faith for the registration of a trademark on the basis that the trademark is identical with, or similar to, a TRIPS-defined GI;
• measures adopted to implement Section 3 of Part II of the TRIPS Agreement cannot adversely affect the legality of a trademark registered in good faith on the basis that the trademark is identical with, or similar to, a TRIPS-defined GI; and
• measures adopted to implement Section 3 of Part II of the TRIPS Agreement cannot adversely affect the right to use a trademark to which rights have been acquired through use on the basis that the trademark is identical with, or similar to, a TRIPS-defined GI.

iv. Article10bis of the Paris Convention

75. Under Paris Article10bis(1)[32] as incorporated by TRIPS Article2.1, a WTO Member is obliged “to assure to nationals of [WTO Members] effective protection against unfair competition”. Paris Article10bis(2) defines an act of unfair competition as “[a]ny act of competition contrary to honest practices in industrial or commercial matters”. The reference to “honest practices” includes practices established in international trade.[33]

v. Article10ter of the Paris Convention

76. Under Paris Article10ter[34] as incorporated by TRIPS Article2.1, a WTO Member is required “to assure to nationals of [WTO Members] appropriate legal remedies effectively to repress all the acts referred to in [Paris Article10bis]”.

vi. Article41 of the TRIPS Agreement

77. TRIPS Article41[35] establishes general obligations for WTO Members in matters concerning the enforcement of intellectual property rights “so as to permit effective action against any act of infringement of intellectual property rights covered by this Agreement …”. These general obligations include, pursuant to TRIPS Article41.1, to have available to right holders enforcement procedures as set out in Part III of the TRIPS Agreement, including civil judicial procedures concerning the enforcement of intellectual property rights, expeditious remedies to prevent infringements, and remedies which constitute a deterrent to further infringements. Pursuant to TRIPS Article41.2, such procedures are to be fair and equitable, may not be unnecessarily complicated or costly and may not entail unreasonable time limits or unwarranted delays. Pursuant to TRIPS Article41.3, decisions on the merits of a case are to be based only on evidence in respect of which parties to the proceeding were offered the opportunity to be heard. Pursuant to TRIPS Article41.4, parties to a proceeding are to have an opportunity for review by a judicial authority of at least the legal aspects of initial judicial decisions on the merits of a case.

vii. Article42 of the TRIPS Agreement

78. TRIPS Article42[36] obliges WTO Members to make available to right holders “civil judicial procedures” for matters touching on or relating to the enforcement of any intellectual property right covered by the Agreement. Having regard to the ordinary meaning of the words in context, TRIPS Article42 requires a WTO Member to make available court or other legal processes: in particular, such procedures may not be political.[37] In addition, TRIPS Article42 expressly provides for certain rights which are to be granted to right holders under such judicial procedures, such as representation by independent legal counsel, and to substantiate their claims and to present relevant evidence.

viii. Articles1.1 and 2.1 of the TRIPS Agreement

79. TRIPS Article1.1[38] obliges WTO Members to give effect to the provisions of the Agreement. It provides that Members may introduce more extensive protection for intellectual property than required by the Agreement, but only if that more extensive protection does not otherwise conflict with or infringe any provisions of the Agreement.

80. TRIPS Article2.1[39] obliges WTO Members to comply with Articles1 through 12, and Article19, of the Paris Convention (1967).

B. The EC measure prejudices the eligibility of an application for registration of a trademark, contrary to Article24.5 of the TRIPS Agreement

81. Article14.1 of Regulation No. 2081/92#1 required that, where an EC-defined GI was registered, an application for registration of a trademark for the same type of product as that bearing the EC-defined GI corresponding to a situation against which a registered EC-defined GI was protected under the Regulation was to be refused (or a subsequent trademark registration invalidated) if:

• the application for registration of the trademark was lodged after the date of first publication by the Commission of the application for registration of the EC-defined GI; or
• the application for registration of the trademark was lodged before the date of first publication by the Commission of the application for registration of the EC-defined GI but that publication occurred before the trademark was registered.

82. Article14.1 of Regulation No. 2081/92#3 requires that, where an application for registration of a trademark for the same type of product as a registered EC-defined GI corresponds to a situation against which a registered EC-defined GI is protected under the Regulation, that application is to be refused (or a subsequent registration invalidated) if that application is made after an application for registration of an EC-defined GI has been lodged with the Commission. The date an application for registration of an EC-defined GI is lodged with the Commission thus became in all circumstances the decisive date for determining whether a trademark for the same type of product which involves a situation against which a registered EC-defined GI is protected may be registered.

83. Regulation Nos 2081/92#1 and 2081/92#3 are “measures adopted to implement this Section” within the meaning of TRIPS Article24.5, establishing a regime for the protection of GIs as contemplated by Section 3 of Part II of the TRIPS Agreement.

84. Further, Article14.1 of Regulation Nos 2081/92#1 and 2081/92#3 applies to a situation in which an application for registration of a trademark concerns the same type of product for which an EC-defined GI is later registered and use of the trademark will give rise to a situation against which an EC-defined GI is otherwise protected under Article13.1 of the Regulation. Under Article13.1, an EC-defined GI is protected, inter alia, against “any … commercial use of a name registered in respect of products not covered by the registration in so far as those products are comparable to the products registered under that name …”. Thus, the situations against which products bearing a registered EC-defined GI are protected include situations in which the trademark being applied for is identical with, or similar to, a TRIPS-defined GI within the meaning of TRIPS Article24.5.

85. However, Paris Article4, and in particular paragraph B of that provision,[40] incorporated by TRIPS Article2.1, requires that a WTO Member afford a right of priority of six months in respect of an application for registration of a trademark for which an application for registration had previously been filed in another WTO Member. Thus, having regard to the provisions of Paris Article4, where a trademark has been applied for in another WTO Member and an application for registration of that trademark within the EC is made consistently with the provisions of Paris Article4, the later registration by the EC of an EC-defined GI cannot by itself constitute a basis for refusing that application for – or invalidating – the registration of a trademark. Such a trademark application or registration can only be refused or invalidated for other valid reasons consistent with the EC’s domestic legislation and relevant WTO obligations, for example, because use of that trademark in the EC market would be misleading.

86. Article14.1 of Regulation No. 2081/92#1 did not afford the right of priority in respect of an application for registration of a trademark previously filed in another WTO Member required to be granted by Paris Article4 where that trademark is identical with or similar to an EC-defined GI which is later registered. By not doing so, Article14.1 of Regulation No. 2081/92#1 prejudiced, or adversely affected,[41] the eligibility for registration of a trademark for which an application had been made in good faith, contrary to TRIPS Article24.5.

87. Similarly, Article14.1 of Regulation No. 2081/92#3 does not afford the right of priority in respect of an application for registration of a trademark previously filed in another WTO Member required to be granted by Paris Article4 where that trademark is identical with or similar to an EC-defined GI which is later registered. By not doing so, Article14.1 of Regulation No. 2081/92#3 continues to prejudice, or adversely affect, the eligibility for registration of a trademark for which an application has been made in good faith, contrary to TRIPS Article24.5.

C. The EC measure does not grant the owner of a registered trademark the rights required to be granted by Article16.1 of the TRIPS Agreement

i. The EC measure does not provide for an objection from the owner of a registered trademark to be admissible in the event of a likelihood of confusion between a registered trademark and a proposed EC-defined GI, contrary to Article16.1 of the TRIPS Agreement

88. TRIPS Article16.1 sets out the minimum right required to be conferred on the owner of a registered trademark: the exclusive right to prevent all third parties not having the owner’s consent from using in the course of trade identical or similar signs for goods or services which are identical or similar to those in respect of which the trademark is registered where such use would result in a likelihood of confusion. TRIPS Article16.1 also expressly provides a presumption of a likelihood of confusion in case of use of an identical sign for identical goods or services. Yet that right can only be exercised when the owner of a registered trademark has a means through which to pursue it.

89. Under Article7.4 of Regulation No. 2081/92#1, a statement of objection to the proposed registration of an EC-defined GI from within the EC “shall be admissible only if it” shows non-compliance with the definition of an EC-defined GI, “shows that the proposed registration of a name would jeopardize the existence of an entirely or partly identical name or trade mark or the existence of products which are legally on the market at the time of publication of this regulation in the [Official Journal]”, or shows that the proposed name is generic in nature (emphases added).

90. Under Article7.4 of Regulation No. 2081/92#2, which remains in effect, a statement of objection to the proposed registration of an EC-defined GI from within the EC “shall be admissible only if it” shows non-compliance with the definition of an EC-defined GI, “shows that the registration of the name proposed would jeopardize the existence of an entirely or partly identical name or of a mark or the existence of products which have been legally on the market for at least five years preceding the date of publication of [the application for registration of the name]”, or shows that the proposed name is generic in nature (emphases added).

91. In addition, in accordance with Articles12b.3 and 12d.2 of Regulation No. 2081/92#3, the provisions of Article7.4 of Regulation No. 2081/92#2 determine the admissibility of statements of objection:

• in respect of applications for the registration of an EC-defined GI relating to a geographical location in the territory of another WTO Member; and
• from nationals of other WTO Members in respect of applications for the registration of EC-defined GIs from within the EC.

However, requiring that the existence of an entirely or partly identical trademark be jeopardised imposes conditions for the enjoyment of rights required to be conferred by the TRIPS Agreement not contemplated by or otherwise justified under the TRIPS Agreement or any other provision of the WTO Agreement.

92. The EC measure does not ensure the admissibility of an objection from the owner of a registered trademark on the grounds that a proposed EC-defined GI would constitute use of an identical or similar sign for identical or similar goods that would result in a likelihood of confusion. As a consequence, the EC measure did not – and does not – provide a right required to be granted to the owner, contrary to TRIPS Article16.1.

ii. The EC measure does not provide for a presumption of a likelihood of confusion in the case of use of an identical sign for identical goods, contrary to Article16.1 of the TRIPS Agreement

93. As noted above,[42] TRIPS Article16.1 establishes a presumption of a likelihood of confusion in the case of use of an identical sign for identical goods. The EC measure does not implement this presumption, contrary to that provision.

iii. The EC measure does not ensure – in the event of a likelihood of confusion between a registered trademark and a proposed EC-defined GI – that an objection from the owner of a registered trademark is considered by the Committee of EC Member State representatives, contrary to Article 16.1 of the TRIPS Agreement

94. As well as not ensuring the admissibility of an objection from the owner of a registered trademark seeking to enforce rights required to be conferred under TRIPS Article16.1,[43] the EC measure does not ensure that an objection from the owner of a registered trademark will be considered by the ultimate decision-maker, being the Committee of EC Member State representatives.

95. The Court of First Instance of the European Court of Justice has found, in respect of Regulation No. 2081/92#1 and 2081/92#2:

… Article 7(1) of Regulation No 2081/92 grants only to the Member States the right to raise objections to registration before the Commission. … [U]nder Article 7(3) … any legitimately concerned natural or legal person may … object to the proposed registration … by sending a … statement to … the Member State in which he resides or is established. That provision does not require the Member State concerned to forward to the Commission the objection thus stated to it, but merely to take the necessary measures to consider the objection …[44]

96. The Court of First Instance further found that the Commission “may not consider an objection communicated to it by any person other than a Member State”.[45]

97. These provisions were not amended in Regulation No. 2081/92#3, and the Court’s findings concerning the interpretation to be applied to Article7 of the Regulation remain valid. Thus, the owner of a registered trademark resident or established in an EC Member State must send “a duly substantiated statement to the competent authority of the Member State in which he resides or is established” (Article7.3). However, as found by the Court, there is no obligation on the EC Member State concerned to forward the statement of objection to the Commission, and the Commission “may not consider an objection communicated to it by any person other than a Member State”.

98. In addition, in accordance with Articles12b.2 and 12d.1 of Regulation No. 2081/92#3, the owner of a registered trademark resident or established in another WTO Member must send “a duly substantiated statement to the country in which it resides or is established, which shall transmit it … to the Commission”. Consistent with the rationale of the findings of the Court of First Instance in the Canard judgment, there is no obligation, nor indeed can there be in such circumstances, on another WTO Member government to forward an objection to the Commission. At the same time, Regulation No. 2081/92#3 does not empower the Commission to consider an objection communicated to it by any person other than an EC Member State, or another WTO Member government or third country meeting the equivalence and reciprocity conditions established by Article12 of Regulation No. 2081/92#3.

99. Whether an objection is from the owner of a registered trademark who is resident or established in either an EC Member State or another WTO Member, however, that objection must be received by the Commission in order to be considered by the Committee of EC Member State representatives. Ensuring that an objection from the owner of a registered trademark is considered by the ultimate decision maker is essential to such an owner being able to exercise the rights required to be conferred by TRIPS Article16.1. Yet the EC measure fails to ensure that an objection from the owner of a registered trademark is considered by the Committee of EC Member State representatives. Thus, the EC measure has not granted – and does not grant – the rights required to be granted to such owners by TRIPS Article16.1, contrary to that provision.

iv. The EC measure does not grant to the owner of a registered trademark – in the event of a likelihood of confusion between a registered trademark and a proposed EC-defined GI – the exclusive right required to be granted by Article16.1 of the TRIPS Agreement

100. Article14.2 of Regulation No. 2081/92#1 provided that a trademark registered in good faith before the date on which an application for registration of an EC-defined GI was lodged and whose use involved one of the situations against which an EC-defined GI was protected under the Regulation could continue to be used “notwithstanding the registration of [an EC-defined GI]”.

101. Article14.2 of Regulation No. 2081/92#3 provides that a trademark which has been applied for, registered, or established by use in good faith within the territory of the Community before either the date of protection in the country of origin or the date an application to the Commission for protection of an EC-defined GI and whose use involves one of the situations against which an EC-defined GI is protected under the Regulation can continue to be used “notwithstanding the registration of [an EC-defined GI]”.

102. The EC measure establishes a presumption of co-existence between an existing trademark and a later registered EC-defined GI. The Regulation presumes co-existence by providing

• for the continued use of a registered trademark (Regulation No. 2081/92#1) or a trademark (Regulation No. 2081/92#3) “notwithstanding the registration of [an EC-defined GI]” (Article 14.2); and
• that the only ground to refuse an application for the registration of an EC-defined GI that otherwise complies with the requirements of the Regulation is where, because of a trademark’s reputation and renown and the length of time it has been used, consumers are likely to be misled as to the true identity of the product (Article 14.3).

103. However, nothing in the TRIPS Agreement – whether in Section 3 of Part II of the Agreement, or elsewhere – justifies a WTO Member’s failure to grant to the owner of a registered trademark the exclusive right required to be granted by TRIPS Article16.1: to prevent all third parties not having that owner’s consent from using in the course of trade identical or similar signs for goods which are identical or similar to those in respect of which the trademark is registered where such use would result in a likelihood of confusion.

104. The Appellate Body has previously found that had the negotiators of a covered agreement intended to permit WTO Members to act inconsistently with a provision of another covered agreement, they would have said so explicitly.[46] Australia submits that such reasoning is even more compelling when considered in the context of a single covered agreement. Had the negotiators of the TRIPS Agreement intended that the exclusive rights required to be conferred on the owner of a registered trademark under TRIPS Article16.1 could be negated or otherwise limited by another provision of that same covered agreement, they would have expressly said so. Indeed, the negotiators did precisely that in TRIPS Article17. It is therefore inconceivable to Australia that the provision of Section 3 of Part II of the TRIPS Agreement – which do not contain any express provisions allowing the exclusive right required to be granted to the owner of a registered trademark under TRIPS Article16.1 to be negated or otherwise limited – could nevertheless be interpreted in such a way as to permit such negation or other limitation.

105. Together with TRIPS Articles22.3 and 23.2, TRIPS Article 24.5 defines the boundary between a WTO Member’s right to implement measures relating to TRIPS-defined GIs and its obligation to afford protection to trademarks. TRIPS Article24.5 expressly provides that where a trademark has been registered in good faith, measures adopted to implement Section 3 of Part II of the TRIPS Agreement “shall not prejudice … the validity of the registration of a trademark … on the basis that such a trademark is identical with, or similar to, a [TRIPS-defined GI]”. Thus, where a trademark is registered in good faith before measures adopted to implement Section 3 of Part II of the TRIPS Agreement that could otherwise have prevented that trademark’s registration are in place, the validity of that registration cannot be prejudiced or adversely affected on the basis that it is identical or similar to a TRIPS-defined GI.

106. Further, TRIPS Article24.5 does not in any way require or permit any negation or other limitation of the exclusive right required to be conferred on the owner of that registered trademark pursuant to TRIPS Article16.1. The owner’s exclusive right to prevent all unauthorised use of identical or similar signs for identical or similar goods that would result in a likelihood of confusion cannot be affected by measures adopted by a WTO Member to implement Section 3 of Part II of the TRIPS Agreement.

107. The regime of co-existence established by Article14.2 of Regulation No. 2081/92 negates or repudiates the exclusive right required to be granted by TRIPS Article16.1 to the owner of a registered trademark to prevent all unauthorised use of an identical or similar sign for identical or similar goods that would result in a likelihood of confusion. The EC measure is therefore contrary to TRIPS Article16.1.

D. The EC measure unjustifiably encumbers the use of a trademark in the course of trade with special requirements, contrary to Article 20 of the TRIPS Agreement

108. Regulation No. 2081/92#1 effectively required co-existence of an existing registered trademark and a later registered EC-defined GI. Similarly, Regulation No. 2081/92#3 effectively requires the co-existence of a trademark – whether registered or established through use – and a later registered EC-defined GI.[47]

109. TRIPS Article20 provides, in part, that the use of a trademark in the course of trade shall not be unjustifiably encumbered – or burdened without good cause – by special requirements, such as use in a manner detrimental to its capability to distinguish the goods or services of one undertaking from those of other undertakings. In today’s world of transboundary markets and marketing, the potential economic value of a trademark which is capable of distinguishing the goods or services of one undertaking from those of other undertakings is greater than ever. Thus, TRIPS Article20 establishes a requirement that a WTO Member may not without good cause impose conditions on the use of a trademark such that there is a risk of the trademark’s distinctiveness, and thus its economic value, being eroded. Further, TRIPS Article20 applies to both registered and unregistered trademarks.[48]

110. By requiring co-existence of a trademark and a later registered EC-defined GI that consists of or contains an identical or similar sign for identical or similar goods notwithstanding a likelihood of confusion,[49] the EC measure has the effect of diminishing the distinctiveness, and hence the economic value, of an affected trademark. Requiring a trademark to be used in a market place where there exists the use of identical or similar signs for identical or similar goods that would result in a likelihood of confusion (such as a co-existent EC-defined GI) encumbers or burdens the use of a trademark “in a manner detrimental to its capability to distinguish the goods … of one undertaking from those of other undertakings” within the meaning of TRIPS Article20.

111. Moreover, encumbering use of a trademark through a requirement of co-existence or concurrent use with an identical or similar EC-defined GI for identical or similar goods is neither required nor permitted by the provisions of Section 3 of Part II of the TRIPS Agreement, and in particular TRIPS Article24.5. It is thus not justified by good cause within the meaning of TRIPS Article20.

112. Accordingly, the EC measure unjustifiably encumbers by special requirements use of a trademark in the course of trade in a manner detrimental to its capability to distinguish the goods of one undertaking from those of other undertakings, contrary to TRIPS Article20.

E. The EC measure does not assure effective protection against unfair competition, contrary to Article2.1 of the TRIPS Agreement incorporating Article10bis(1) of the Paris Convention (1967)

113. Under Paris Article10bis(1) as incorporated by TRIPS Article2.1, a WTO Member is obliged to provide to nationals of WTO Members effective protection against unfair competition. Having regard to the broad scope of Paris Article1(2), the obligation to provide protection against unfair competition under Paris Article10bis(1) must include effective protection of trademarks from acts relating to indications of source as well as effective protection of indications of source from acts relating to trademarks.

114. Regulation No. 2081/92 establishes a Community-wide system of registration and protection of EC-defined GIs that provides effective protection from acts of unfair competition, including in relation to later trademark applications, within the Community. However, the Regulation does not provide a Community-wide system of effective protection of trademarks from acts of unfair competition arising from the later registration of EC-defined GIs under the Regulation.

115. Accordingly, the EC measure is inconsistent with the EC’s obligation pursuant to Paris Article10bis(1), as incorporated by TRIPS Article2.1, to assure to nationals of WTO Members effective protection against unfair competition.

F. The EC measure does not assure appropriate legal remedies to repress effectively acts referred to in Article10bis of the Paris Convention (1967), contrary to Article2.1 of the TRIPS Agreement incorporating Article10ter(1) of the Paris Convention (1967)

116. Paris Article10ter(1) as incorporated by TRIPS Article2.1 requires that a WTO Member assure to nationals of WTO Members appropriate legal remedies to repress effectively all acts of unfair competition referred to in Paris Article10bis. Those legal remedies include legal remedies to repress acts of unfair competition against trademarks arising from acts involving indications of source.

117. Notwithstanding that Regulation No. 2081/92 establishes a system of Community-wide registration and protection of EC-defined GIs, it does not provide for appropriate legal remedies to repress effectively at a Community-wide level acts of unfair competition, including against trademarks, arising from the registration or the proposed registration of an EC-defined GI.

118. Accordingly, the EC measure is inconsistent with the EC’s obligations pursuant to Paris Article10ter(1), as incorporated by TRIPS Article2.1, to assure to nationals of WTO Members appropriate legal remedies to repress effectively acts of unfair competition referred to in Paris Article10bis.

G. The EC measure does not make available to trademark right holders civil judicial procedures concerning the enforcement of their intellectual property rights, contrary to Article42 of the TRIPS Agreement

119. The obligation established by TRIPS Article42 is straightforward. A WTO Member is required to “make available to right holders civil judicial procedures concerning the enforcement of any intellectual property right covered by this Agreement”. Having regard to the ordinary meaning of the words, civil judicial procedures are court or other legal processes normally presided over by a judge: they may not be political or administrative processes.[50] Such an interpretation is supported as well by the provisions of TRIPS Articles43-48, which refer to authorities to be granted to the “judicial authorities”.

120. That civil judicial procedures for the enforcement of an intellectual property right covered by the TRIPS Agreement are required to be court or other legal processes presided over by a judge is confirmed when considered in light of footnote4 to TRIPS Article23.1 concerning TRIPS-defined GIs for wines and spirits. Footnote4 provides that “[n]otwithstanding the first sentence of Article42, WTO Members may, with respect to these obligations, instead provide for enforcement by administrative action”. Thus, in accordance with footnote4, WTO Members may enforce intellectual property rights relating to TRIPS-defined GIs for wines and spirits by administrative action. However, by the absence of a qualifying reference in TRIPS Article42 in the same terms as footnote4, it is clear that TRIPS Article42 requires WTO Members to provide for the enforcement of other covered intellectual property rights only through a court or other legal process.

121. In addition, TRIPS Article42 expressly provides for certain rights to be granted to parties under the civil judicial procedures, such as the right to be represented by independent legal counsel, and to substantiate claims and to present relevant evidence.

122. Regulation No. 2081/92 does not provide to trademark right holders civil judicial procedures at the Community level for the enforcement of their intellectual property rights vis-à-vis the registration of EC-defined GIs. The Committee of EC Member State representatives – which decides both applications for the registration of an EC-defined GI and the enforcement of the rights of a trademark owner in relation to a proposed EC-defined GI – consists of officials from EC Member State agencies responsible for implementing Regulation No. 2081/92 at national level. And, if necessary, the enforcement of the rights of a trademark owner in relation to the proposed registration of an EC-defined GI is ultimately decided by EC Member State Ministers responsible for domestic agriculture policies and programs or the Commission’s Directorate-General for Agriculture. Further, Article7.5 of Regulation No. 2081/92 expressly provides that where an objection is admissible, “the Commission shall ask the Member States concerned to seek agreement among themselves …”. None of these processes are civil judicial procedures.

123. That Regulation No. 2081/92 does not provide civil judicial procedures as required was essentially confirmed in the Canard judgment when the Court of First Instance of the European Court of Justice found that “Article 7(1) … grants only to the Member States the right to raise objections to registration before the Commission” and that the Commission “may not consider an objection communicated to it by any person other than a Member State”.[51]

124. Further, even if a trademark right holder is successful in having its objection considered by the Committee of EC Member State representatives,[52] Regulation No. 2081/92 does not provide a right to be represented by independent legal counsel before that Committee, or a right to substantiate claims or to present relevant evidence.

125. Accordingly, Regulation No. 2081/92 does not make available to trademark right holders civil judicial procedures concerning the enforcement of a covered intellectual property right, or the right to be presented by independent legal counsel, or the right to substantiate their claims or to present relevant evidence, contrary to TRIPS Article42.

H. The procedures concerning the enforcement of trademark rights made available by the EC measure are inconsistent with Article41.2 of the TRIPS Agreement

i. The EC measure does not make available fair and equitable procedures for the enforcement of intellectual property rights, contrary to Article41.2 of the TRIPS Agreement

126. TRIPS Article41.2 requires in relevant part that “[p]rocedures concerning the enforcement of intellectual property rights shall be fair and equitable”. Even if the Panel does not accept Australia’s claim that the EC measure is inconsistent with TRIPS Article42 (and instead finds that the EC measure does make available to trademark right holders civil judicial procedures for the enforcement of their rights), Australia submits that the enforcement procedures made available are not fair and equitable.

127. An objection by a trademark right holder resident or established in an EC Member State is first dealt with by the EC Member State agencies responsible for implementing Regulation No. 2081/92 at a national level.[53]

128. Many of those EC Member State agencies are also responsible for making the initial assessment of applications for the proposed registration of an EC-defined GI and for implementing domestic agricultural policies and programs within the EC Member States, of which Regulation No. 2081/92 forms an integral part. Australia submits that EC Member State agencies with either or both such roles are likely to have an interest in supporting and promoting the proposed registration of a geographic term from within that EC Member State as an EC-defined GI.

129. Yet it is with those very EC Member State agencies that a statement of objection from a trademark right holder resident or established in an EC Member State may have to be lodged. Further, the EC measure does not require an EC Member State to forward that statement of objection to the Commission for consideration by the Committee of EC Member State representatives, “but merely to take the necessary measures to consider the objection”.[54]

130. Australia submits that requiring or permitting an objection that aims to protect the interests of a trademark right holder to be lodged with an agency that is likely to have an interest in supporting and promoting the registration of an EC-defined GI is a procedure that is neither fair nor equitable.

131. If an EC Member State agency does forward a statement of objection from a trademark right holder to the Commission, it is then considered by the Committee of EC Member State representatives. Yet that Committee comprises delegates of the same EC Member State agencies which are likely to have an interest in supporting and promoting the proposed registration of EC Member State geographic terms as EC defined GIs.

132. Thus, a situation exists in which the enforcement of the rights of a trademark owner in relation to the proposed registration of an EC-defined GI is decided – whether at officials or Ministerial level, or ultimately by the Commission’s Directorate-General for Agriculture – by the very Member States and their agencies which: (1) considered that a proposed geographical name meets the requirements of Regulation No. 2081/92; and (2) must presumably therefore support the application in the Committee of EC Member State representatives. Australia submits that this is a procedure that is neither fair nor equitable within the meaning of TRIPS Article41.2 insofar as trademark right holders are concerned.

133. In addition, Article7.5 of Regulation No. 2081/92 expressly provides that where an objection is admissible, “the Commission shall ask the Member States concerned to seek agreement among themselves …” in the first instance. Australia submits that, at the very least, the possibility of “deal-making” between EC Member States irrespective of the interests of a trademark right holder cannot be excluded in such circumstances. Once again, such process is neither fair nor equitable within the meaning of TRIPS Article41.2 insofar as trademark right holders are concerned.

134. A trademark right holder who is not resident or established in an EC Member State is in no better situation. Such a trademark right holder must rely upon the goodwill of another WTO Member government, which has no obligation or incentive in the matter, to forward its statement of objection to the Commission. Even if such a trademark right holder’s statement of objection is forwarded to the Commission, it faces the generally deficient situation already outlined in respect of statements of objection from trademark right holders resident or established in an EC Member State. In addition, a trademark right holder not resident or established in an EC Member State faces the additional hurdle of not having a national representative on the Committee of EC Member State representatives to speak for its interests.

135. Australia submits that the process for enforcement of a trademark right provided by the EC measure for a right holder not resident or established in an EC Member State is not a fair and equitable procedure. The EC measure requires any objection to be considered by a group of representatives that are likely to have an interest in the registration of the proposed EC-defined GI at issue as well as interests corresponding to the national interests of the EC Member States. In such circumstances, the possibility of bias in favour of both the proposed EC-defined GI and the interests of EC Member States cannot be seen to be excluded. Australia further submits that the possibility of bias against the interests of a trademark right holder is even stronger where an objection concerns a proposed EC-defined GI relating to a geographical location within an EC Member State and the trademark right holder is not an EC national.

136. The process provided by the EC measure for the consideration of the rights of trademark holders resident or established in the EC gives rise to real and significant questions concerning the potential for conflicts of interest in the Committee of EC Member State representatives. The EC measure thus does not provide fair and equitable procedures for the enforcement of trademark right as required by TRIPS Article41.2.

ii. The procedures for the enforcement of trademark rights made available by the EC measure are unnecessarily complicated and entail unwarranted delays, contrary to Article41.2 of the TRIPS Agreement

137. TRIPS Article41.2 requires in relevant part that procedures for the enforcement of intellectual property right not be unnecessarily complicated or entail unwarranted delays.

138. Even if the EC measure is not considered to be inconsistent with TRIPS Article42, requiring that statements of objection from trademark right holders be lodged through the competent authority of an EC Member State or through another WTO Member government adds unjustifiable complexity and delay to the process of exercising the rights required to be granted to trademark right holders under the TRIPS Agreement. If a trademark has been registered or rights to a trademark have been acquired through use within the territory of the EC, the owner of that trademark has rights within the EC that do not directly concern either an EC Member State government or any other WTO Member government. There is no good reason why another government need be involved, but by doing so the EC measure adds complexity and delay to the process of exercising trademark rights within the EC. Further, in the case of a non-EC national not resident or established in an EC Member State, the very fact of having to make a request to another WTO Member government exacerbates the complexity and delay associated with exercising a trademark right, even if that government is willing and able to act on behalf of that trademark owner.

139. The preambular provisions of the TRIPS Agreement expressly recognise that intellectual property rights are private rights. As such, making the ability of a right holder to exercise or enforce such rights dependent on the willingness and/or ability of an otherwise unconcerned government to act is not supported by good cause and thus cannot be justified.

140. Accordingly, Regulation No. 2081/92 does not make available to trademark right holders procedures for the enforcement of intellectual property rights which are not unnecessarily complicated or entail unwarranted delays, contrary to TRIPS Article41.2.

I. Decisions on the registration of EC-defined GIs under the EC measure are not based only on evidence in respect of which trademark right holders were offered the opportunity to be heard, contrary to Article41.3 of the TRIPS Agreement

141. TRIPS Article41.3 requires that decisions on the merits of a case “be based only on evidence in respect of which parties were offered the opportunity to be heard”.

142. The Court of First Instance of the European Court of Justice has found that, under Regulation No. 2081/92#1 and 2081/92#2, only EC Member States have the right to raise objections to registration before the Commission, and that the Commission “ma