World Trade Organization Dispute
EC – Geographical indications (GIs) for foodstuffs and agricultural products
Frequently Asked Questions
Last update: 11 January 2007
Australian exporters should note that they have to comply with all relevant EU regulations when exporting to the EU,.
Australia did not contest the right of the European Union to protect geographical indications within the EU in the dispute. Unless they had prior trademark rights in these terms within the EU, Australian producers are not able to use in the EU:
- terms registered as geographical indications within the EU, for example, "feta", "kalamata" olives; or
- terms considered to be translations of registered geographical indications, for example, "parmesan" (which is considered to be a translation of the registered term "Parmigiano Reggiano").
Which WTO Members were involved in the dispute about the European Communities' regime for the protection of geographical indications?
Australia and the United States each separately challenged the relevant legislation that had been adopted by the European Communities (the “EC”, which is the official name of the European Union in the WTO). The challenges were considered by the same Panel.
Third parties to Australia’s dispute were: Argentina, Brazil, Canada, China, Colombia, Guatemala, India, Mexico, New Zealand, Chinese Taipei, Turkey and the United States. Australia was a third party to the United States’ parallel challenge.
What is a "geographical indication" or "GI"?
Article 22.1 of the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) states that:
Geographical indications are, for the purposes of this Agreement, 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.
What was the dispute about?
The dispute was about the EC's regime for geographical indications (GIs) for foodstuffs and agricultural products. The EC required that another WTO Member agree to protect all of the EC’s GIs for agricultural products and foodstuffs, other than those for wines and spirits, before the EC would agree to protect any GIs from that other WTO Member (“reciprocal” protection). The EC also required the other WTO Member to provide the same high level of protection for GIs from the EC as the EC itself provided before the EC would agree to protect any GIs from that WTO Member (“equivalent” protection). The EC required as well that the government of another WTO Member act as the EC’s agent in matters concerning the registration of GIs. In addition, the EC restricted the rights attached to a trademark that included a term subsequently registered as a GI.
Some media reports suggested Australia and the United States won. Others suggested the EC won. Which party did win?
Any WTO dispute can involve a number of legal claims, some of which may be alternative claims, or contingent upon a particular understanding of the relevant legislation.
In the dispute, Australia focused its arguments particularly on the EC's requirements for reciprocal and equivalent protection of the EC's own GIs before GIs from another WTO Member could be protected in the EC. Australia focused as well on the EC's requirement that another WTO Member act as the EC’s agent. Australia argued that these requirements were inconsistent with the EC’s obligations under the WTO Agreement.
The Panel agreed with Australia on those issues.
Australia also targeted the restrictions imposed by the EC on the rights of a trademark owner where a trademark included a term that is subsequently registered as a GI in the EC.
The Panel agreed with Australia on this issue up to a point, in that it held the EC's regime to be inconsistent with the EC's obligations under Article 16.1 of the TRIPS Agreement. Article 16.1 of the TRIPS Agreement states in relevant part:
The owner of a registered trademark shall have 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.
However, the Panel considered that Article 17 of the TRIPS Agreement allowed the EC to establish some limitations on the rights to be granted to a trademark owner. The Panel accepted a series of undertakings the EC provided with regard to the legislation and considered that the limitations on a trademark owner's rights established by the EC were allowed by Article 17. The Panel's findings nevertheless, and importantly, confirm that the EC can determine any limitations on trademark rights only with respect to the territory of the EC. It cannot do so with respect to the territory of other WTO Members.
Consequently, and notwithstanding that the Panel did not find in favour of some other Australian claims, Australia welcomed the Panel's Report.
How did the dispute benefit Australian producers and exporters?
The Government challenged the EC’s regime to protect both the current and longer term interests of Australian exporters.
It is now possible for Australian producers to apply for the registration of a term as a GI within the EC, or to object to the proposed registration of a term as a GI within the EC, and to do so directly through the European Commission. However, there may also be other reasons, including tariff rates and other market access barriers maintained by the EC, which could prevent exports to markets in the EC of significant quantities of some of the products in respect of which registration of a term as a GI may be possible.
In addition, because of the EC’s reciprocal and equivalent protection requirements, Australian products could gradually have been prevented from being sold in third country markets using product descriptions that consumers knew and understood. Australian producers and exporters could have been forced to start again in those markets using different product descriptions. Potentially affected products include dairy and smallgoods, although a diverse range of other foodstuffs and agricultural products could also have been affected, including beer.
What happened next?
The EC had until 3 April 2006 to bring its legislation into compliance with its WTO obligations. By that date, the EC had adopted new framework legislation and put in place a procedure under which persons, both natural and legal, from other WTO Members could apply for, or object to, the registration of a term as a GI within the EC.
Australia considers some minor aspects of the new framework legislation are likely inconsistent with the EC’s WTO obligations and have raised these with the EC.
Did the dispute relate to the Doha Round agriculture negotiations?
The dispute concerned a set of issues relating to the EC's implementation of its WTO obligations as these were agreed during the Uruguay Round. It did not relate to the Doha Round negotiations.
Did the dispute relate to other Australia – EU disputes?
No. The dispute concerned a discrete package of issues unrelated to any other dispute.
Did the dispute affect wines and spirits and the Australia-EU bilateral wine agreement?
No. Wine and spirit GIs were not at issue in this dispute.
Where can I get more information?
More information is available from the following sources: