RESTRICTEDWORLD TRADE
ORGANIZATIONIP/C/W/168
13 April 2000
(00-1499)
Council for Trade-Related Aspects
of Intellectual Property RightsOriginal:  English
REVIEW UNDER ARTICLE 24.2 OF THE APPLICATION OF THE
PROVISIONS OF THE SECTION OF THE TRIPS AGREEMENT
ON GEOGRAPHICAL INDICATIONS
Questions posed by the United States to the European Communities
The present document reproduces questions posed by the United States as a follow-up to
some of the responses to the Checklist of Ques tions (IP/C/13 and IP/C/13/Add.1) which the Council
had received from the European Communities and their member States as contained in documentIP/C/W/117/Add.10.  These follow-up questions were communicated to the Secretariat by the
delegation 
 of the United States at the meeting of the Council on 21 March 2000.1
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Checklist Question 1 and Response from the EC
Is protection for geographical indications provided through unfair competition law, e.g.,
passing off, false designation of origin;  through a formal procedure for notification/registration
before protection is available;  or through both?  Does the recognition of a geographical indication
require registration?
Wines […]
At Community level the recognition of a geographical indication for wines requires its
recognition by the Producer Member State as well as registration and publication in the Official
Journal of the European Communities (Article 1, paragraph 3 of Regulation No. 823/87;  Article 72,
paragraph 2 of Regulation (EEC) No. 822/87;  and Article 2, paragraph 3, point (i) of Regulation
(EEC) No. 2392/89).  This system provides protection ex officio.
[…]
Follow-up Questions from the US
(a) How is ex officio protection provided?  Pl ease provide examples of instances where the
geographical indications of non-EC nati onals have been protected ex officio.
(b) We are also aware that Regulation (E C) No. 1493/99 ("Council Regulation (EC)
No. 1493/1999 of 17 May 1999 on the common or ganization of the market in wine"), in
Annex VII(F)(2) explicitly calls  for the cancellation of trademarks, by 31 December, 2002, that
                                                     
1 In the present document, the relevant questions in the Checklist are reproduced in italics, the EC
responses in normal font and the US follow-up questions in bold type.IP/C/W/168
Page 2
incorporate geographical indications for wine.  Fu rther, item (G) of the same Annex states that
third-country geographical indications (with respect to imported wines for human
consumption) will be protected only "by means of agreements with the third countries
concerned, negotiated and concluded in accordan ce with the procedure la id down in Article 133
of the Treaty (of Rome)."  Please explain how the requirements for cancellation of trademarksand bi-lateral negotiations are consistent with the EC's obligations under the TRIPS
Agreement.
Other geographical indications in relation to agricultural products and foodstuffs
Council Regulation (EEC) No. 2081/92 sets out the procedure for the registration of
geographical indications in the Community territory.  The procedure contained in Articles 5, 6 and 7is as follows:
(1) A group of producers must submit a detailed application for registration to the
competent authority of the Member State, in accordance with the conditions specified in the
Regulation.
(2) If the application is considered to be in conformity with the Regulation, it shall be
referred to the Community authorities, who will  verify that the conditions of the Regulation
have been formally satisfied and will publish the application in the Official Journal  to allow
other parties the opportunity to raise objections.
(3) If an objection is raised, the final decision on registration is taken by the Commission
and the Member States.
The Member States are responsible for controlling the application of the Regulation.When a name is registered in conformity with the definitions and the procedure established in
the Regulation, it is protected ex officio (against the uses as referred to in Article 13).
[…]
Follow-up Questions from the US
(a) Regulation (EEC) No. 2081/92 is currentl y the subject of a WTO Dispute Settlement
complaint by the United States (WT/DS174/1).  In this complaint, dated 1 June 1999, the United
States contends that Regulation (EEC) No. 2 081/92, 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 identi cal to a geographical indication.  This situation
appears inconsistent with the EC's obligat ions under the TRIPS Agreement, including
Articles 3, 16, 24, 63 and 65 of the TRIPS Agreement.
(b) Article 10 of Regulation (EEC) No. 2081/92 requires that, in order to obtain protection
in the EC, third countries must have in plac e an inspection and enforcement system that
mirrors that of the EC. Please explain how the uni lateral imposition of the EC system on third
countries, as a prerequisite for obtaining geograp hical indication protection in the EC, is in
compliance with the EC's TRIPS obligations.
(c) Article 11 of Regulation (EEC) No. 20 81/92 provides for a procedure whereby "any
Member State" may submit that a condition in a product specification has not been met, and
may send a "duly substantiated application" to the Commission, and pursuant to which, the
Commission may cancel the registration. By contrast, if a national of a third country believesIP/C/W/168
Page 3
that a condition of a registration is not being me t, and seeks the cancellation of the registration,
the Regulation appears to provide no recourse . How is this consistent with the National
Treatment requirements of the TRIPS Agreement?
Checklist Question 8 and Response from the EC
How are geographical indications defined?
Wines
Quality wine produced in a specified region (PSR): "specified region" is defined as a wine-
growing area or combination of wine-growing ar eas which produces wine possessing special quality
characteristics (Article 3, paragraph 1).  It is designed by its geographical name (Article 15,
paragraph 3 of Regulation (EEC) No. 823/87).  Some exceptions are permitted and enumerated in this
Article.
Table wine designated with a geographical unit which is defined as a small locality or group
of such localities, a local administrative area or part thereof, a wine-group sub-region or part thereof
or a region other than a specified region which is reserved for table wines meeting certain production
requirements, particularly as regards vine varieties, minimum natural alcoholic strength by volume
and organoleptic characteristics (Article 4, paragraphs 1 and 3 of Regulation (EEC) No. 2392/89).Member States may make the use of a geographical ascription for designating a table wine
conditional, in particular, on the wine having been produced wholly from certain clearly specified
vine varieties and coming exclusively from the territory, precisely demarcated, whose name it bears
(Article 72, paragraph 2 of Regulation (EEC) No. 822/87).
Spirits
On a case-by-case basis as listed in Article 5(3)(b) in conjunction with Annex II of Regulation (EEC)
No. 1576/89.
Other products
Regulation (EEC) No. 2081/92 provides in Article 2 for two definitions:"Geographical indication" means 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.
"Designation of origin" means 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 prep aration of which take place in the defined
geographical area.
Furthermore, Article 
2, paragraph 3 of Regulation (EEC) No. 2081/92 provides for the
protection of certain traditional geographical or non-geographical names designating an agricultural
product or foodstuff originating in a region or a specific place which fulfil the conditions set out fordesignations of origin.IP/C/W/168
Page 4
Geographical indications and designations of  origin are protected in the same way.
Follow-up Question from the US
With respect to Article 2, paragraph 3 of Regulation (EEC) No. 2081/92, how does the
EC provide for protection of prospective geographical indications that are non-geographical
names?
Checklist Question 14 and Response from the EC
Does your legislation contain criteria for homonymous geographical indications for wines?
Wines
Yes, the general principle for the products of the wine sector is that the geographical name
can be used only to designate products of the region to which the name had been assigned according
to national and Community legislation (Article 15, paragraph 4 of Regulation (EEC) No. 823/87).
With respect to imported wines, paragraphs 2 and 3 of Article 29 of Regulation (EEC) No. 2392/89
apply the same general principle and provide for exceptions only in the case where the name is usedin accordance with traditional and consistent usage and on condition that its use is governed by rules
in the country concerned.  Due regard must be given to the practical risk of confusion.
(…)
Follow-up Question from the US:
With respect to imported wines, what is meant by "rules of the country concerned." For
example, if a third country protects geographica l indications via its trademark system, would a
trademark law be considered "rules in th e country concerned"?  If not, why not?
Checklist Question 16 and Response from the EC
Is there any specific prohibition in the legislation/regulations/rules/procedures covering
geographical indications not protected in the country of origin?  If so, please specify the relevantstatutory provision.
The principle of protection of a geographical indication is recognition and protection in the
country of origin.
However, the Directives on labelling and advertising always apply independently of the
recognition of a geographical indication in the country of origin.
Follow-up Question from the US:
How is EC recognition of a foreign geographical indication achieved?  For example,
does "protection in the country of origin" requi re that the country of origin have in place
national laws describing a particular geographical region and setting for the quality standardsfor the goods, similar to the provisions detailed in  the regulations notified in the EC's answer to
Question 1, above?IP/C/W/168
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Checklist Question 17 and Response from the EC
With respect to any formal system for reco gnition of geographical indications, must the
applicant be a governmental organization or can a private entity own the rights to a geographical
indication?
Wines
The recognition must be made by a governmental organisation.
The right of using a geographical indication is reserved for the professionals who are
established in the area and who respect the conditions of production already established and
recognised.
Other products
Pursuant to Article 5 of Regulation (EEC) No. 2081/92, only a group of producers and/or
processors working with the product shall be entitled to apply for registration.
Follow-up Question from the US:
The answer is unclear.  May only a governmental organization/entity apply for
recognition of a geographical indication in the EC?  If so, how is this compatible with the TRIPS
Agreement?  How is the limitation on who may use a geographical indication compatible with
the requirements of the TRIPS Agreement?
Checklist Question 18 and Response from the EC
What are the competent authorities where the protection of a geographical indication can be
obtained?
Wines
Each Member State appoints the competent authority to protect geographical indications
(Article 16 of Regulation (EEC) No. 823/87).
Other products
After the entry into force of Regulation (EEC) No. 2081/92, recognition of geographical
indications or designations of origin can be obtained only through a Community procedure.
Follow-up Question from the US:
Where does one find guidance to the referenced "Community procedure"?  If this is not
publicly available, please explain the operati on of the referenced "Community procedure" in
detail sufficient so nationals of third countries understand the steps necessary to obtainprotection of geographical indications in the EC.IP/C/W/168
Page 6
Checklist Question 19 and Response from the EC
Do the procedures which lead to the recognition of a geographical indication take place ex
officio or must they be based on the initiative of an entity or person?
Wines and spirits
It lies in the competence of Member States which must respect Community law for wines
(Regulation (EEC) No. 823/87) and spirits (Regulation (EEC) 1576/89).
Other products
Registration pursuant to Regulation (EEC) No. 2081/92 is only granted upon request. In
accordance with Article 5, a group or a natural or legal person (producers and/or processors working
with the product) shall be entitled to apply for registration.
Follow-up Question from the US:
Please provide examples of Member State laws or procedures that detail how a national
of a third country may obtain recognition of a ge ographical indication for wines and spirits, and
for other products.
Checklist Question 26 and Response from the EC
Who can oppose the recognition of a geographical indication?
Wines and spirits
It is the competence of Member States, but, generally, any legal or natural person who
considers his/her legitimate interests are damaged can oppose the recognition of a geographical
indication.
Other products
Member States or any legitimately concerned natural or legal person.
Follow-up Questions from the US:
See U.S. follow-up questions to the EC's answer to Question 1, above.  In addition,
Article 22.2 of the TRIPS Agreement specifically requires that Members provide the legal
means for interested parties to  prevent misuse, yet Article 17 of Regulation (EEC) No. 2081/92
does not provide for pre-registration opposition procedure with respect to certain geographical
indications.  Please explain how the absence of this procedure is consistent with the EC's
obligations under the TRIPS Agreement.
How may interested parties, as required under Article 22.2 of the TRIPS Agreement,
challenge the validity of a geographical in dication after recognition has been granted?IP/C/W/168
Page 7
Checklist Question 27 and Response from the EC
If your national legislation provides for recognition and protection of geographical
indications or appellations of origin of foreign countries, what is the procedure that has to be
followed in order to obtain such recognition and consequent protection ?
The following answer is based on the understanding that the question refers to the possibility
of "recognition" of a geographical indication or appellation of origin of a third country in the sense of
"participation in existing domestic regimes providing for positive recognition (positive lists)".  It does
not refer to "protection" within the meaning of th e TRIPS Agreement.  With respect to the latter,
please see the replies to questions nos. 4 and 15 above.
Wines and spirits
Inclusion in a positive list is possible by agreement.
Other products
The recognition of geographical indications or designations of origin of foreign countries
pursuant to Regulation (EEC) No. 2081/92 can be obtained in accordance with Article 12:
- by agreement
- by the procedure established in the Regulation as regards application for recognition.
The same conditions as for EC products apply.
Follow-up Question from the US:
Article 22.2 of the TRIPS Agreement requires that Members provide the legal means for
interested parties to prevent acts of unfair competition or the use of any means that indicates or
suggests that the good in question  originates in a geographical area other than the true place of
origin in a manner which misleads the public as to the geographical origin of the goods.
Regulation (EC) No. 1493/99 indicates that ge ographical indications for certain types of wine
will be protected ONLY by means of agreements with the third countries concerned.  Please
explain how this requirement fulfils the EC's obligations under Article 22.2 of the TRIPS
Agreement.
Checklist Question 34 and Response from the EC
Are there means by which interested parties may request termination of a geographical
indication based on non-use or failure to maintain the criteria identified in the application? Describethe procedure.
Wines
This is the competence of Member States.
(…)IP/C/W/168
Page 8
Follow-up Question from the US:
Please reference the relevant law/regulations of each Member State which addresses the
means by which interested parties may request termination of a geographical indication based
on non-use or failure to maintain the criteria identified.  If no relevant laws/regulations are
available, please explain why.
Checklist Question 44 and Response from the EC
What steps are taken to ensure that, in recognizing a geographical indication, the obligations
of Article 16. 1 of the TRIPS Agreement are not nullified and impaired?
The relationship between marks and geographical indications is established at Community
level in the following instruments:
- Council Directive (EEC) No. 104/89 harm onising Member States' legislation
concerning trademarks excludes the registration of a trademark that is made up
exclusively of a geographical indication (Article 3c) or that can, by nature, mislead
the public, e.g., on the geographical origin of the product (Article 3g),
- Regulation (EC) No. 3288/94 amending  Regulation (EC) No. 40/94 on the
Community trademark provides in Article 7 that the Harmonization Office in
Alicante shall refuse to register an application for the registration of a Community
trademark:
(1) which consists exclusively of an indication which may serve, in trade, to
designate the geographical origin of goods, or
(2) for wines, which contains or consists of a geographical indication identifying
wines or for spirits which contains or consists of a geographical identifying spirits
with respect to such wines or spirits not having that origin.
Third parties may initiate an invalidity procedure against a registered Community
trademark before the Harmonization Office on the same grounds, pursuant to
Article 51 of the said Regulation.
- Regulation (EEC) No 2392/89 establishing general rules concerning the
designation and presentation of wines defines more precisely in Article 40,paragraph 2 the corresponding situations from a trademark angle.
Furthermore, there are special provisions for well-known registered brand names.- Article 13 of Regulation (EEC) No. 2333/92 establishing general rules
concerning the designation and presentation of sparkling wines.  There are also
special provisions for well-known registered brand names.
- Article 14 of Regulation (EEC) No 2081/92 concerning the protection of
geographical indications and designations of origin for agricultural products andfoodstuffs.
This provision establishes the following:IP/C/W/168
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(1) a geographical indication is not registered where, in the light of a trademark's
reputation, renown and length of time it has been used, registration is liable to
mislead the consumer as to the true identity of the product.,
(2) when a geographical indication has been registered, a trademark attempting
to evoke or to usurp the geographical indication shall be refused.,
(3) the use of a trademark evoking a geographical indication and registered
before this geographical indication may continue if the trademark was registered in
good faith and if the appropriate provisions of Directive (EEC) No. 89/104 have been
complied with.
Follow-up Question from the US:
In light of the explicit mention of geographical indications and trademarks ("brand
names") in Regulation (EC) No. 1493/99, please explain what steps are taken to ensure that, in
recognizing a geographical indication, the obligations of Article 16.1 of the TRIPS Agreement
are not nullified and/or impaired?
Please explain how the requirement contai ned in Regulation (EC) No. 1493/99 for
cancellation of trademarks containing geog raphical indications, even where the trademarks
were registered in the EC prior to 31 December, 1985 and in continuous use, is consistent with
the EC's obligations under Arti cle 16.1 of the TRIPS Agreement.
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