Victory for US GI’s Over Europe

“Geographic Indicators,” that is. The USPTO reports today that:

the World Trade Organization (WTO) has released a panel report affirming the United States’ assertion that European Community (EC) regulations discriminate against foreign owners of geographical indications (GIs), and that the EC cannot deny trademark owners their rights. . . .

The United States objected to the EC’s Agriculture regulation, on several grounds, including the following: . . . The EC Regulation creates a system for registering and protecting geographical indications for agricultural goods sold in the EC market. But while the Regulation allows EC rightholders to apply directly to register and protect their GIs for EC products, non-EC nationals must rely on their government to apply for the protection in the EC on their behalf, as well as to object to GI applications in the EC. . . .

Under the EC’s Regulation, foreign governments must adopt a system of GI protection that mirrors the EC’s and that provides reciprocal protection to EC products in order for their foreign rightholders to be considered for benefits of the EC Regulation’s protections.

The WTO Panel found that these aspects of the GI Regulation – the requirement for government-level intervention as well as the requirement of reciprocal protection for EC products and equivalent systems of protection – discriminate in favor of EC products and EC GI rightholders and against the GI rightholders and products of other WTO Members. . . .

On the trademark claim, the United States argued that the EC GI Regulation would not permit certain trademark owners to enforce their trademarks — that is, they would not be able to stop the confusing uses of similar GIs, which is one of their rights under the WTO TRIPS Agreement. The TRIPS Agreement requires that the owner of a registered trademark be able to prevent all others from using identical or similar marks or signs, which includes GIs, when consumers would be confused by the later uses.

The Panel agreed with the United States but clarified that the EC could provide for a very limited exception to trademark rights for certain trademarks with respect to later-registered GIs. The exception is very narrow in that, according to the Panel, GIs that are likely to create confusion with prior trademarks are unlikely to be registered as GIs in the first place. Further, the Panel noted that only a few people are allowed to use the GI that conflicts with the prior trademark, and the exception only applies to certain trademarks that do not have reputation or renown.

But more importantly, the Panel found that the GI Regulation could only protect GI names as registered, and not translations of the GIs where those translations as they appear on labels in Europe cause confusion with European trademarks owned by U.S. companies. The panel agreed with the United States that this would present concerns under the TRIPS Agreement.

I assume we get reparations.

Ron Coleman