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Current status back to top
Key facts back to top
(as cited in request for consultations)
|Request for Consultations received:
|Panel Report circulated:
||15 March 2005
Summary of the dispute to date back to top
The summary below was up-to-date at
See also: One-page summary of key findings of this dispute
On 1 June 1999, the US requested consultations with the
EC in respect of the alleged lack of protection of trademarks and
geographical indications (GIs) for agricultural products and foodstuffs in
the EC. The US contended that EC Regulation 2081/92, as amended, does not
provide national treatment with respect to geographical indications and
does not provide sufficient protection to pre-existing trademarks that are
similar or identical to a geographical indication. The US considered this
situation to be inconsistent with the EC’s obligations under the TRIPS
Agreement, including but not necessarily limited to Articles 3, 16, 24, 63
and 65 of the TRIPS Agreement.
On 4 April 2003, the US sent an additional request for
consultations concerning the protection of trademarks and GIs for
agricultural products and foodstuffs in the EC. This request does not
replace but rather supplements the 1999 request. The measures concerned
are EC Regulation 2081/92, as amended, and its related implementing and
enforcement measures (the “EC Regulation”). According to the US,
the EC Regulation limits the GIs that the EC will protect and limits the
access of nationals of other Members to the EC GI procedures and
protections provided under the Regulation. The US claims that the EC
Regulation appears to be inconsistent with Articles 2, 3, 4, 16, 22, 24,
63 and 65 of the TRIPS Agreement and Articles I and III:4 of the GATT
On 17 April 2003, Australia requested consultations
with the EC concerning the protection of trademarks and to the
registration and protection of geographical indications for foodstuffs and
agricultural products in the EC. The measures at issue include 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 and related measures (“the EC
According to Australia:
- the EC measure seems not to accord immediately and
unconditionally to the nationals and/or products of each WTO Member any
advantage, favour, privilege of immunity granted to the nationals and/or
like products of any other WTO Member,
- the EC measure seems not to accord to the nationals
and/or products of each WTO Member treatment no less favourable than that
it accords to its own nationals and/or like products of national origin,
- the EC measure may diminish the legal protection for
- the EC measure may not be consistent with the EC’s
obligation to provide the legal means for interested parties to prevent
misleading use of a geographical indication or any use which constitutes
an act of unfair competition within the meaning of Article 10bis of the
Paris Convention (1967),
- the EC may not have met its transparency obligations in
respect of the measure, and
- the EC measure may be more trade-restrictive than
necessary to fulfil a legitimate objective, taking account of the risks
non-fulfilment would create.
Australia claims that the EC measure appears to be
inconsistent with the EC’s obligations pursuant to Articles 1, 2, 3, 4,
16, 20, 22, 24, 41, 42, 63 and 65 of the TRIPS Agreement, Articles I and
III of GATT 1994, Article 2 of the TBT Agreement and Article XVI:4 of the
In dispute WT/DS174, Sri Lanka Australia, Hungary,
India, Argentina, Bulgaria, Cyprus, the Czech Republic, Malta, Slovenia,
Romania, the Slovak Republic and Turkey requested to join the additional
consultations. The EC informed the DSB that it had accepted the requests
of Argentina, Australia, Bulgaria, Cyprus, the Czech Republic, Hungary,
India, Malta, Mexico, New Zealand, Romania, the Slovak Republic, Slovenia,
Sri Lanka and Turkey to join the consultations.
In dispute WT/DS290, Bulgaria, Cyprus, the Czech
Republic, Malta, the United States, Hungary and Slovenia, New Zealand,
Romania, the Slovak Republic, Chinese Taipei and Turkey, Argentina,
Colombia and Mexico requested to join the consultations. The EC informed
the DSB that it has accepted the requests of Argentina, Bulgaria,
Colombia, Cyprus, the Czech Republic, Hungary, Malta, Mexico, New Zealand,
Romania, the Slovak Republic, Slovenia, Chinese Taipei, Turkey
and the United States to join the consultations.
On 18 August 2003, the United States and Australia
requested separately the establishment of a panel. At its meeting on 29
August 2003, the DSB deferred the establishment of the panels.
Panel and Appellate Body proceedings
second requests to establish a panel from the US and Australia, the DSB
established a single panel at its meeting on 2 October 2003. Australia,
Colombia, Guatemala, India, Mexico, New Zealand, Norway, Chinese Taipei
and Turkey reserved their third-party rights. On 6 October, China reserved
its third-party right. On 10 October, Argentina and Canada reserved their
third-party rights. On 13 October, Brazil reserved its third-party rights.
On 13 February 2004, the
United States and Australia requested the
Director-General to determine the composition of the Panel. On 23
February 2004, the Director-General composed the Panel.
On 17 August 2004, the 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.
On 15 March 2005, the Panel report was circulated to
- the Panel agreed with the United States and Australia
that the EC’s GI Regulation does not provide national treatment to other
WTO Members’ right holders and products, because: (i) registration of a GI
from a country outside the European Union is contingent upon the
government of that country adopting a system of GI protection equivalent
to the EC’s system and offering reciprocal protection to EC GIs; and (ii)
the Regulation’s procedures require applications and objections from other
WTO Members to be examined and transmitted by the governments of those
Members, and require those governments to operate systems of product
inspection like EC member States. Therefore, foreign nationals do not have
guaranteed access to the EC’s system for their GIs, unlike EC nationals;
- otherwise, there is no finding that the
substance of the EC system of GI protection, which requires product
inspection, is inconsistent with WTO obligations; and
- the Panel agreed with the EC that, although its GI Regulation allows it
to register GIs even when they conflict with a prior trademark, the
Regulation, as written, is sufficiently constrained to qualify as a “limited exception” to trademark rights. However, the Panel
agreed with the United States and Australia that the TRIPS Agreement does
not allow unqualified coexistence of GIs with prior trademarks.
The DSB adopted the Panel report on 20 April 2005.
Implementation of adopted reports
At the DSB meeting of 19 May 2005, the European Communities stated its intention to implement the DSB’s recommendations and indicated that it would need a reasonable period of time to do so.
On 9 June 2005, the European Communities, Australia and the United States informed the DSB that they had agreed pursuant to Article 21.3(b) of the DSU that the reasonable period of time for implementation shall be 11 months and 2 weeks, expiring on 3 April 2006.
At the DSB meeting on 17 February 2006, the European Communities said that a new regulation on geographical indications which would fully implement the DSB’s recommendations and rulings was being discussed in the Council of the European Union and the European Parliament. It was expected that the Commission’s proposal would be adopted within the agreed reasonable period of time.
At the DSB meeting on 21 April 2006, the European Communities said that they had fully implemented the DSB’s recommendations and rulings by adopting a new regulation which entered into force on 31 March 2006. Australia and the United States disagreed that the European Communities had fully implemented the DSB’s recommendations and rulings and invited the European Communities to take account of their comments and revise the newly promulgated regulation.
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