DS 174 – Trademarks & Geographical Indications United States v. European Communities. Asma and I will be presenting the United States-European Community Geographical Indication Case, also known as DS174. We are going to go through some legal definitions to help us better understand the laws involved in the case. Then we will walk you through a timeline of events, the specifics of the case, then finally wrap it up with our thoughts and we’ll take questions if there are any. <Next Slide> Abygail Sunga Asma Testouri

EC — Trademarks and Geographical Indications DS174 At A Glance Short title: EC — Trademarks and Geographical Indications Complainant: United States Respondent: European Communities Third Parties: Argentina; Australia; Brazil; Canada; China; Chinese Taipei; Colombia; Guatemala; India; Mexico; New Zealand; Turkey Request for Consultations received: 1 June 1999 Panel Report circulated: 15 March 2005 DS174 at a glance. This is a trademark and geographical indication case. The complainant is the United States and the European Community as the respondent. There are 12 third parties in this case. For the sake of brevity we will focus mainly on the U.S., and briefly Australia and India. The U.S. submitted a request for consultation in June 1999. Then four years later, requested an establishment of a panel to consider the case. In March 2005 the panel report was circulated to WTO members. <Next Slide> Source: www.wto.org

Complaints by the United States (WT/DS174) In June 1999, The United States challenged the European Communities (EC) Council Regulation (EEC) No. 2081/92 of 14 July 1992 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs, as amended, on two main grounds: Discrimination against foreign nationals and foreign products with respect to geographical indication protection, and Failure to protect foreign trademarks. Source: www.wto.org

Complaint by Australia (WT/DS290) On 17 April 2003, Australia requested consultations with the EC concerning the Regulation No 2081/92 of 14 July 1992 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs and related measures. Australia’s complaint focused on the facts that: The EC measure may diminish the legal protection for trademarks the EC measure seems not to accord immediately and unconditionally to the nationals and/or products of each WTO Member any advantage, favor, privilege of immunity granted to the nationals and/or like products of any other WTO Member Source: www.wto.org

Offending Measure EC Regulation 2081/92 Regulations laying down the basis for the European Union Protected Food Name schemes. Regulation is inconsistent with: National treatment principle Agreement on Trade Related Aspects of Intellectual Property Article 22, Protection of Geographical Indications Article 23, Additional Protection for Geographical Indications for Wines and Spirits Source: www.wto.org World Intellectual Property Organization, http://www.wipo.int/clea/docs_new/en/eu/eu040en.html

What are "geographical indications" or "GIs"? Article 22 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) defines GIs as: “Indications which identify a good as originating in the territory of a Member, or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographic origin.” “Geographical indications are place names (in some countries also words associated with a place) used to identify the origin and quality, reputation or other characteristics of products (for example, “Champagne”, “Tequila” or “Roquefort”).” This says geographical indications have to be protected in order to avoid misleading the public and to prevent unfair competition. Source: http://www.wto.org/English/docs_e/legal_e/27-trips_04b_e.htm

What does TRIPS say about the protection of geographical indications? TRIPS prescribes two levels of protection for geographical indications: a general level of protection which requires Members to provide the legal means for interested parties to prevent the use of GIs which mislead the public as to the true geographic origin of the good, or which constitute an act of unfair competition (Article 22); and a higher level of protection for wines and spirits which requires Members to provide the legal means for interested parties to prevent the use of GIs to identify wines and spirits that do not originate in the place indicated, whether or not the indication is misleading or accompanied by expressions such as ‘kind’, ‘type’ or ‘imitation’ (Article 23) Source: http://www.wto.org/English/docs_e/legal_e/27-trips_04b_e.htm

What is a Trademark? The USPTO (United States Patent and Trademark Office) States that: “A trademark includes any word, name, symbol, or device, or any combination, used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. In short, a trademark is a brand name.” http://www.uspto.gov/main/trademarks.htm

What does TRIPS say about the protection of Trademarks? The agreement defines: What Type of signs that must be eligible for protection as trademarks, and What minimum rights conferred on their owners must be. It also says that service marks must be protected in the same way as trademarks used for goods. Marks that have become well-known in a particular country enjoy additional protection. Source: http://www.wto.org/english/tratop_e/trips_e/intel2_e.htm

Trademark We will be using Anheuser Busch’s Budweiser beer as an example throughout the case. We all know that corporations like Anheuser Busch cannot file complaints at the WTO, but they can ask their governments to pursue a case at the WTO on their behalf. <Next Slide>

Request for Consultation DS 174 Timeline Budweiser Request for Consultation Request for Panel Panel Established Extension Panel Report Adoption 1876 1895 1 June 1999 18 August 2003 13 February 2004 17 August 2004 15 March 2005 20 April 2005 Anheuser-Busch registered Budweiser for trademark protection Budejovicky Budvar began officially calling their product “Budweiser” U.S. submitted Request for Consultation to WTO The United States and Australia requested separately the establishment of a panel. 29 August, WTO deferred the establishment of a panel. After a second request to establish a panel from the U.S. and Australia, the panel for DS174 was established Chairman of the Panel informed the DSB that it would not be able to complete its work in six months due to the complexity of the case and that the Panel expected to issue its final report to the parties before the end of year 2004. Panel report circulated to WTO members. Dispute Settlement Body adopted the panel report. Now we’ll go through the succession of events leading up to the case and eventually the WTO panel ruling. In 1876, Anheuser-Busch registered the name Budweiser for trademark protection. In 1895, Budejovicky Budvar, a Czech beer brewing company, began officially calling their product “Budweiser.” At that time, the Czech Republic was under German rule so they would often translate Czech words into German. The name Budejovicky Budvar, which is a town in the Czech Republic, translated in German as Budweiser. Before we forward 100 years later, we will examine a few related examples… Source: http://www.wto.org/english/tratop_e/dispu_e/cases_e/ds174_e.htm Ladas & Parry LLP, http://www.ladas.com/Trademarks/GeographicIndications/Geogra.html http://www.pages.drexel.edu/~msd24/blawpaper.htm <Next slide>

Trademark On the left is Anheuser-busch’s Budweiser, and on the right is Budejovicky Budvar’ Budweiser.

We enjoy trademark protection Roquefort Cheese Roquefort, France Parma Ham Parma, Italy By now we know that Geographical Indication just means the agricultural food product carries the name of its place of origin and that these names can be registered for trademark and therefore protected by law. Prosciutto di Parma and Roquefort Cheese are products Parma, Italy and Roquefort, France respectively. No one else in the world can make parma ham or roquefort cheese. Makers of these products argue that what makes these food unique is that their origin had an impact on the taste of the product. You can maybe acquire the ingredients, and master the techniques of cheesemaking but you cannot recreate the environmental conditions present in roquefort. Roquefort cheese is actually left to age in a cave in Roquefort. The distinct taste of the cheese is derived not only from the cow who ate roquefort grass, but also from the air, bacteria, and everything else that is present in the cave. But in any case these products are protected by law and no one else is allowed to market similar products under the same name, not only in the European Community but also the United States because they are also registered for protection here. Source: Fordham Law School, https://law.fordham.edu/publications/articles/200flspub8031.pdf Congressional Research Service, http://www.nationalaglawcenter.org/assets/crs/RS21569.pdf

What about us? Florida Oranges Florida, U.S.A. Idaho Potato Idaho, U.S.A. Now, lets look at U.S. Agricultural foodstuffs. Idaho Potatoes, Florida Oranges, and Vidalia Onions. Vidalia is a town in Georgia. These goods do not enjoy the same full legal protection in Europe as European geographical indications do here. As in the case of Anheuser-Busch’s Budweiser, Budejovicky Budvar can keep using the name Budweiser. India, on the other hand have trouble registering its geographical indication trademarks in the European Community. For example, Basmati Rice, Darjeeling tea…when India tried to register these names it had to go through complex legal hurdles to do so. The European Community pretty much said, we will approve your application for registration contingent upon you doing this… and this usually meant that India had to revise its laws and systems to make sure the geographical indication from Europe were protected in India. And the EC pretty much expected India and other developing countries to have the kind of trademark system as they do. All these events led up to the request for consultation by the U.S. Source: Fordham Law School, https://law.fordham.edu/publications/articles/200flspub8031.pdf Congressional Research Service, http://www.nationalaglawcenter.org/assets/crs/RS21569.pdf <Next Slide> Vidalia Onion Vidalia, GA, U.S.A

Request for Consultation DS 174 Timeline Budweiser Request for Consultation Request for Panel Panel Established Extension Panel Report Adoption 1876 1895 1 June 1999 18 August 2003 13 February 2004 17 August 2004 15 March 2005 20 April 2005 Anheuser-Busch registered Budweiser for trademark protection Budejovicky Budvar began officially calling their product “Budweiser” U.S. submitted Request for Consultation to WTO The United States and Australia requested separately the establishment of a panel. 29 August, WTO deferred the establishment of a panel. After a second request to establish a panel from the U.S. and Australia, the panel for DS174 was established Chairman of the Panel informed the DSB that it would not be able to complete its work in six months due to the complexity of the case and that the Panel expected to issue its final report to the parties before the end of year 2004. Panel report circulated to WTO members. Dispute Settlement Body adopted the panel report. In June 1999, the United States requested a consultation with the European Community what it believes were failure on the EC’s part to keep up with its WTO obligations. Nothing became of these consultations so the U.S. and Australia, under separate occassions requested for the establishment of a panel to consider the case. Two weeks later the WTO responded saying it is deferring the establishment of a panel. Usually this process takes a few weeks, but in this case it too six months from the time the first request was submitted to finally put together a panel. The U.S. actually sent a second request for a panel. The reason it took so long was because the WTO had difficulties appointing a panel of experts to consider this case. Let’s look at the arguments that the panel heard from both parties. Source: http://www.wto.org/english/tratop_e/dispu_e/cases_e/ds174_e.htm Ladas & Parry LLP, http://www.ladas.com/Trademarks/GeographicIndications/Geogra.html http://www.pages.drexel.edu/~msd24/blawpaper.htm <Next Slide>

Arguments of Parties to DS174 United States European Community Budweiser is registered trademark Budejovicky Budvar has geographical indication rights because their brewery is located in Budejovice, whose German translation is Budweise Generic Names Champagne, Dijon, Bologna Idaho Potatoes, Florida Oranges, Vidalia Onion Roquefort Cheese, Parma Ham EC Regulation is inconsistent with the TRIPS Agreement, including but not necessarily limited to Articles 2, 3, 4, 16, 22, 24, 63 and 65, and Articles I and III:4 of the GATT 1994. http://www.wto.org/english/tratop_e/dispu_e/cases_e/ds174_e.htm

Request for Consultation DS 174 Timeline Budweiser Request for Consultation Request for Panel Panel Established Extension Panel Report Adoption 1876 1895 1 June 1999 18 August 2003 13 February 2004 17 August 2004 15 March 2005 20 April 2005 Anheuser-Busch registered Budweiser for trademark protection Budejovicky Budvar began officially calling their product “Budweiser” U.S. submitted Request for Consultation to WTO The United States and Australia requested separately the establishment of a panel. 29 August, WTO deferred the establishment of a panel. After a second request to establish a panel from the U.S. and Australia, the panel for DS174 was established Chairman of the Panel informed the DSB that it would not be able to complete its work in six months due to the complexity of the case and that the Panel expected to issue its final report to the parties before the end of year 2004. Panel report circulated to WTO members. Dispute Settlement Body adopted the panel report. In August 2004, six months after the panel was established. The panel asked for more time to work out the case. They expected to have a recommendation by the end of 2004. But it wasn’t until the next year, in March 2005 that the panel circulated the report to WTO members. Source: http://www.wto.org/english/tratop_e/dispu_e/cases_e/ds174_e.htm Ladas & Parry LLP, http://www.ladas.com/Trademarks/GeographicIndications/Geogra.html http://www.pages.drexel.edu/~msd24/blawpaper.htm

WTO Panel Recommendation Panel agreed with the United States, that the European Community’s laws on trademark protection of non-European agricultural goods and foodstuffs are inconsistent with the national treatment principle and the TRIPS Agreement. Dispute Settlement Body decided that the European Community must bring their domestic laws into conformity with WTO rules and regulations. The European Community agreed with the DSB recommendations and rulings and asked that they be given 11 months and 2 weeks to fully implement the ruling, expiring in April 2006 http://www.wto.org/english/tratop_e/dispu_e/cases_e/ds174_e.htm

Implementation European Community repealed the offending measure, EC Regulation 2081/92 European Community implement new regulations laying down the basis for the EUs Food Naming schemes The European Community must now offer the same sort of protection for US geographical food names as it does same products from EU. The EU however is not expected to protect foreign language translations of geographical food names, only names as registered will be protected. http://www.wto.org/english/tratop_e/dispu_e/cases_e/ds174_e.htm

Where are they now? The U.S. disagrees that the European Community has fully implemented the panel’s recommendations and rulings and asks the European Community to revise their newly promulgated regulation European Community still asserts that they have complied 100% No formal appeal has been requested at the WTO http://www.wto.org/english/tratop_e/dispu_e/cases_e/ds174_e.htm

Conclusion Agree or Disagree with the Panel’s recommendation? Questions?